Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: March 26, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FORD MOTOR CO.,
`Petitioner,
`v.
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`IPR2020-00012
`Patent 10,138,826 B2
`
`
`
`
`
`
`
`
`
`Before KEN B. BARRETT, LYNNE H. BROWNE, and JAMES J.
`MAYBERRY, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I.
`INTRODUCTION
`A. Background and Summary
`Petitioner, Ford Motor Company, filed a Petition (“Pet.”) requesting
`inter partes review of claims 1–8, 10–24, 26, 27, and 31–33 (the
`“Challenged Claims”) of U.S. Patent No. 10,138,826 B2 (Ex. 1101, the
`“’826 patent”). Paper 2. Patent Owner, Massachusetts Institute of
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`IPR2020-00012
`Patent 10,138,826 B2
`Technology, filed a Preliminary Response (“Prelim. Resp.”) to the Petition.
`Paper 7. We have authority under 35 U.S.C. § 314 to determine whether to
`institute review.
`To institute an inter partes review, we must determine that the
`information presented in the Petition shows “a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below,
`upon considering the Petition, Preliminary Response, and evidence of
`record, we deny the Petition and do not institute an inter partes review.
`B. Real Parties in Interest
`Petitioner identifies itself as the sole real party-in-interest. Pet. 81.
`Patent Owner identifies itself and Ethanol Boosting Systems, LLC, the
`exclusive licensee of the ’826 patent, as real parties-in-interest. Paper 9, 2.
`C. Related Matters
`Petitioner and Patent Owner indicate that the ’826 patent is the subject
`of litigation in the U.S. District Court for the District of Delaware in a case
`styled Ethanol Boosting Systems, LLC v. Ford Motor Company, LLC, Case
`No. 1:19-cv-00196-CFC (D. Del.). Pet. 8; Paper 6, 2. Patent Owner
`identifies an appeal to the Federal Circuit, Appeal Number 2020-1472, from
`a final judgment in that case. Paper 9, 2; see also Ex. 3001 (providing Final
`Judgment for case No. 1:19-cv-00196-CFC); Ex. 3002 (providing Notice of
`Appeal for the case).
`Petitioner also filed an earlier petition challenging the ’826 patent
`(case IPR2019-01402) and petitions for inter partes review of three related
`patents, in cases numbered IPR2019-01399 and IPR2020-00010
`(challenging US 9,810,166 B2), IPR2019-01400 and IPR2020-00013
`(challenging US 8,069,839 B2), and IPR2019-01401 and IPR2020-00011
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`IPR2020-00012
`Patent 10,138,826 B2
`(challenging US 9,255,519 B2). Pet. 81; Paper 9, 2–3. Petitioner filed the
`petitions in IPR2020-00010, IPR2020-00011, and IPR2020-00013
`concurrent to the present Petition. We instituted trial in IPR2019-01399,
`IPR2019-01401, and IPR2019-01402 and denied institution in IPR2019-
`01400. We, concurrently with the instant decision, are denying institution in
`IPR2020-00010, IPR2020-00011, and IPR2020-00013.
`The parties indicate that the ’826 patent is related to the following
`additional patents and pending patent applications: US 10,344,689; US
`10,221,783; US 9,708,965; US 9,695,784; US 9,255,519; US 8,857,410; US
`8,733,321; US 8,707,913; US 8,522,746; US 8,468,983; US 8,353,269; US
`8,302,580; US 8,276,565; US 8,171,915; US 8,146,568; US 7,971,572; US
`7,841,325; US 7,762,233; US 7,740,004; US 7,640,915; US 7,444,987; US
`7,314,033; US 7,225,787; US App. 16/251,658; US App. 16/424,471. Pet.
`81–83; Paper 9, 3–6.
`D. The ’826 Patent
`The ’826 patent, titled “Fuel Management System for Variable
`Ethanol Octane Enhancement of Gasoline Engines,” issued November 27,
`2018, from an application filed September 27, 2017, and ultimately claims
`priority, through several continuation applications, to an application filed
`November 18, 2004. Ex. 1101, codes (54), (45), (22), (63). The ’826 patent
`is directed “to spark ignition gasoline engines utilizing an antiknock agent
`which is a liquid fuel with a higher octane number than gasoline such as
`ethanol to improve engine efficiency.” Id. at 1:38–41. We reproduce Figure
`1 from the ’826 patent below.
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`IPR2020-00012
`Patent 10,138,826 B2
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`
`Figure 1 depicts “a block diagram of one embodiment of the invention
`disclosed” in the ’826 patent. Ex. 1101, 3:7–8. Spark ignition gasoline
`engine 10 includes knock sensor 12, fuel management microprocessor
`system 14, engine manifold 20, and turbocharger 22. Id. at 3:24–32.
`Ethanol tank 16 contains an anti-knock agent, such as ethanol, and gasoline
`tank 18 contains the primary fuel, such as gasoline. Id. at 3:26–31. Fuel
`management microprocessor system 14 controls the direct injection of the
`anti-knock agent into engine 10 and the injection of gasoline into engine
`manifold 20. Id.
`The amount of ethanol injection is dictated either by a
`predetermined correlation between octane number enhancement
`and fraction of fuel that is provided by ethanol in an open loop
`system or by a closed loop control system that uses a signal
`from the knock sensor 12 as an input to the fuel management
`microprocessor 14.
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`IPR2020-00012
`Patent 10,138,826 B2
`Id. at 3:32–38. The fuel management system minimizes the amount of
`ethanol directly injected into the cylinder while still preventing engine
`knock. Id. at 3:38–40.
`“Direct injection [into the cylinder] substantially increases the benefits
`of ethanol addition and decreases the required amount of ethanol. . . .
`Because ethanol has a high heat of vaporization there will be substantial
`cooling when it is directly injected into the engine 10,” which “further
`increases knock resistance.” Ex. 1101, 3:44–52. The amount of octane
`enhancement needed from the ethanol to prevent knocking is a function of
`the torque level. Id. at 6:6–10. “[P]ort fuel injection of the gasoline in
`which the gasoline is injected into the manifold rather than directly injected
`into the cylinder is preferred because it is advantageous in obtaining good
`air/fuel mixing and combustion stability that are difficult to obtain with
`direct injection.” Id. at 3:53–57.
`
`E. Illustrative Claims
`Of the Challenged Claims, claims 1, 12, 21, and 31 are independent
`claims. Claim 1, reproduced below, is representative.
`1. A fuel management system for a spark ignition engine
`that has
`a first fueling system that uses direct injection and also has
`a second fueling system that uses port fuel injection; and
`where the fueling is such that there is a first torque range
`where both the first and second fueling system are used
`throughout the range; and
`where the fraction of fueling provided by the first fueling
`system is higher at the highest value of torque in the first torque
`range than in the lowest value of torque in the first torque range;
`and
`
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`35 U.S.C. §
`103(a)
`103(a)
`
`Bromberg1
`Lewis2
`
`References
`
`IPR2020-00012
`Patent 10,138,826 B2
`where there is a second torque range where only the
`second fueling system is used;
`where when the torque is higher than the highest value of
`torque in the second torque range the engine is operated in the
`first torque range; and
`where the second torque range extends from zero torque
`to the highest torque in the second torque range.
`Ex. 1101, 7:39–55.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that the Challenged Claims are unpatentable on the
`following grounds:
`Claims Challenged
`1–8, 10–13, 21–24
`1–8, 10–24, 26, 27,
`31–33
`1–4, 10–24, 26, 27,
`31–33.
`The following subsections provide a brief description of the asserted
`prior art references.
`1. Bromberg
`Bromberg, titled “Optimized Fuel Management System for Direct
`Injection Ethanol Enhancement of Gasoline Engines,” issued June 5, 2007,
`from an application filed April 6, 2005. Ex. 1140, codes (54), (45), (22).
`Bromberg purports to be a continuation-in-part of U.S. Application No.
`
`102(b)
`
`Kaneko3
`
`
`1 Bromberg, US 7,225,787 B2, issued June 5, 2007 (Ex. 1140).
`2 Lewis, US 7,694,666 B2, issued April 13, 2010 (Ex. 1141).
`3 Kaneko, JP 2009-215908 A, published September 24, 2009 (Ex. 1142).
`Exhibit 1142 includes an English translation of Kaneko (pp. 1–22), a
`certificate of translation (pg. 23), and the original Japanese version of the
`publication, with English abstract (pp. 24–38).
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`IPR2020-00012
`Patent 10,138,826 B2
`10/991,774, to which the ’826 patent claims priority. Id., code (63);
`Ex. 1101, code (63).
`Bromberg “relates to an optimized fuel management system for use
`with spark ignition gasoline engines in which an anti-knock agent which is a
`fuel is directly injected into a cylinder of the engine.” Ex. 1140, 1:13–16.
`We reproduce Bromberg’s Figure 3, below.
`
`
`
`Figure 3 depicts “schematic diagram of an embodiment of
`[Bromberg’s] fuel management system . . . for maintaining stoichiometric
`conditions with metering/control of ethanol, gasoline, and air flows into an
`engine.” Ex. 1140, 2:30–33. The depicted image shows electronic control
`unit (ECU) 14 controlling an ethanol injector and gasoline injector for
`engine 18. See id. at 8:43–57. Relevant to Petitioner’s contentions,
`Bromberg discloses that gasoline is injected into engine 18 through a
`manifold or port and ethanol is directly injected into engine 18. See, e.g., id.
`at 1:27–34, 1:38–65; Pet. 20–21. Bromberg discloses that “evaporative
`cooling of the cylinder air/fuel charge can be very large with appropriate
`direct injection of” ethanol. Id. at 2:46–48.
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`Patent 10,138,826 B2
`2. Lewis
`Lewis, titled “System and Method for Tip-In Knock Compensation,”
`issued April 13, 2010, from an application filed July 21, 2008. Ex. 1141,
`codes (54), (45), (22). Lewis claims priority to an application filed
`November 30, 2005. Id. at 1:7–11.
`We reproduce Lewis’s Figure 2, below.
`
`
`
`Figure 2 depicts “one cylinder of a multi-cylinder engine, as well as
`the intake and exhaust path connected to that cylinder.” Ex. 1141, 3:20–21.
`Relevant to Petitioner’s contentions, Lewis discloses fuel injector 66A,
`“directly coupled to combustion chamber 30” and fuel injector 66B “coupled
`to intake manifold 44, rather than directly to cylinder 30.” Id. at 4:23–24,
`4:42–43. “Controller 12 can control the amount of fuel delivered by fuel
`injectors 66A and 66B so that the homogeneous, stratified, or combined
`homogenous/stratified air/fuel mixture in chamber 30 can be selected to beat
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`IPR2020-00012
`Patent 10,138,826 B2
`stoichiometry, a value rich of stoichiometry, or a value lean of
`stoichiometry.” Id. at 5:35–39.
`Lewis discloses that, in the embodiment of Figure 2,
`engine 10 is capable of using two different fuels, and/or two
`different injectors in one example. For example, engine 10 may
`use gasoline and an alcohol containing fuel such as ethanol . . .
`[or] two fuel systems are used, but each uses the same fuel,
`such as gasoline. . . . In still another example, two different
`injectors for each cylinder are used, such as port and direct
`injectors.
`Ex. 1141, 3:22–39. Lewis discloses that, “when using both gasoline and a
`fuel having alcohol (e.g., ethanol), it may be possible to adjust the relative
`amounts of the fuels to take advantage of the increased charge cooling of
`alcohol fuels (e.g., via direct injection) to reduce the tendency of knock.” Id.
`at 3:42–46.
`3. Kaneko
`Kaneko, titled “Control Device of Internal Combustion Engine,”
`published September 24, 2009. Ex. 1142, codes (54), (43). Kaneko “relates
`to a control device of an internal combustion engine provided with a port
`injection valve for injecting fuel into an intake port, and an intracylindrical
`injection valve for injecting fuel directly into a combustion chamber.” Id.
`¶ 1. Kaneko’s Figure 1 is reproduced below.
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`IPR2020-00012
`Patent 10,138,826 B2
`
`
`Figure 1 depicts “schematic diagram illustrating a schematic configuration
`of the internal combustion engine according to one embodiment of”
`Kaneko’s invention. Id. ¶ 65. As seen in Figure 1 above, engine 10 includes
`spark plug 16, port injection valve 19, direct injection valve
`(“intracylindrical injection valve”) 20. Id. at ¶¶ 24–25.
`
`
`II. ANALYSIS
`A. Analysis of Petitioner’s Grounds
`1. Procedural Posture
`On January 30, 2019, Patent Owner filed a complaint in the United
`States District Court for the District of Delaware (the “District Court”)
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`IPR2020-00012
`Patent 10,138,826 B2
`accusing Petitioner of infringing certain patents, including the ’826 patent.
`Pet. 81; see also Ex. 1122 (identified by Petitioner as the subject complaint).
`On August 13, 2019, Petitioner filed a petition challenging claims 1–
`8, 10–24, 26, 27, and 31–33 of the ’826 patent. IPR2019-01402, Paper 2, 1.
`In that petition, Petitioner presented three grounds against those challenged
`claims. See id. at 1–2. On February 19, 2020, we instituted a trial on all
`challenged claims and grounds set forth in that petition. IPR2019-01402,
`Paper 10.
`In September 2019, the parties filed in the District Court their
`proposed construction of certain claim terms. Ex. 1144 (providing the
`parties’ “Joint Claim Construction Chart”). In the Joint Claim Construction
`Chart, each party set forth its respective proposed construction for the claim
`terms reciting fuel for a first fueling system with respect to the ’826 patent.
`Id. at 6–7. For claim terms reciting a fuel for the first fueling system,
`Petitioner asserted that the District Court should construe the terms to mean,
`“a fuel that contains an anti-knock agent that is not gasoline, and that is
`different from the fuel used for port injection/in the second fueling system.”
`Id. at 6. Patent Owner asserted that the terms should be afforded their plain
`and ordinary meaning or, alternatively, that the Court should construe the
`terms to require the first fueling system to use direct injection. Id. at 6–7.
`Each party identified intrinsic support for their proposed constructions. Id.
`at 7.
`
`On October 16, 2019, Petitioner filed the instant Petition. Pet. 1. This
`Petition presents challenges based on references dated after the date of the
`earliest filed priority application referenced in the ’826 patent and before the
`filing date of the application that issued as the ’826 patent. Compare Pet.
`17–19 (discussing prior art status of Bromberg, Lewis, and Kaneko), with
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`IPR2020-00012
`Patent 10,138,826 B2
`Ex. 1101, codes (63), (22) (showing earliest and latest filing dates of priority
`applications, November 18, 2004, and September 27, 2017, respectively).
`As discussed below, Petitioner argues that the parent applications in the
`priority chain of the ’826 patent do not provide written description support,
`under Petitioner’s adopted claim construction, for the subject matter of the
`Challenged Claims. See Pet. 6–17. Thus, according to Petitioner, its relied-
`upon references are prior art to the ’826 patent because that challenged
`patent is not entitled to a priority date earlier than the dates of Petitioner’s
`references. See id. at 17–19.
`On January 8, 2020, the District Court conducted a claim construction
`(“Markman”) hearing in the parallel litigation. Ex. 2001. On January 28,
`2020, the District Court issued a claim construction order. Ex. 1147. The
`Court’s reasoning is set forth in the transcript of the claim construction
`hearing (Ex. 2001). See Ex. 1147, 1 (“For the reasons articulated during the
`Markman hearing held on January 8, 2020, the Court adopts the following
`constructions.”). In that Order, the court construed the claim terms reciting a
`fuel for the first fueling system with respect to the ’826 patent to mean “a
`fuel that contains an anti-knock agent that is not gasoline, and that is
`different from the fuel used for port injection/in the second fueling system,”
`as asserted by Petitioner. See id.
`On February 11, 2020, the District Court entered final judgment in
`favor of Ford Motor Company (the Petitioner here) based on Patent Owner’s
`stipulation of non-infringement in light of the District Court’s Claim
`Construction Order. Ex. 3001, 1. The District Court dismissed without
`prejudice Petitioner Ford’s invalidity defenses. Id. at 2. Also on February
`11, 2020, Patent Owner filed a Notice of Appeal to the United States Court
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`IPR2020-00012
`Patent 10,138,826 B2
`of Appeals for the Federal Circuit, appealing the District Court’s Claim
`Construction Order. Ex. 3002.
`On January 22, 2020, Patent Owner filed a Preliminary Response in
`the instant case. Patent Owner asserts that, for claim terms reciting fuel for
`the first fueling system, Petitioner advocated for and convinced the District
`Court to adopt a construction that is directly contrary to Petitioner’s position
`in the present Petition. Prelim. Resp. 15–18.
`B. Principles of Law
`Petitioner bears the burden of persuasion to prove unpatentability of
`the claims challenged in the Petition, and that burden never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015).
`“To be entitled to a parent’s effective filing date, a continuation must
`comply with the written description requirement of 35 U.S.C. § 112, ¶ 1.”
`In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013) (citations omitted).
`The test for sufficiency of the written description “is whether the
`disclosure of the application relied upon reasonably conveys to those skilled
`in the art that the inventor had possession of the claimed subject matter as of
`the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`(Fed. Cir. 2010) (en banc).
`The written description analysis is a two-step process. We must first
`ascertain the scope of the claimed subject matter, by performing a proper
`claim construction, and then compare that claimed subject matter to the
`relied-upon disclosure. See In re Katz Interactive Call Processing Patent
`Litig., 639 F.3d 1303, 1319 (Fed. Cir. 2011) (“[C]laim construction is
`inherent in any written description analysis.”); Koninklijke Philips Elecs.
`N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1336 (Fed. Cir. 2010)
`
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`IPR2020-00012
`Patent 10,138,826 B2
`(“A district court must base its analysis of written description under § 112,
`¶ 1 on proper claim construction.”); id. (“On remand, the district court must
`construe the term ‘impedance-compensated defibrillation pulse’ in light of
`the ’751 patent written description and then determine whether the Owen
`application’s written description satisfies § 112, ¶ 1.”).
`In an inter partes review requested in a petition filed on or after
`November 13, 2018—like the instant Petition—we apply the same claim
`construction standard used in district courts, namely that articulated in
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See
`37 C.F.R. § 42.100(b) (2019). In applying that standard, claim terms
`generally are given their ordinary and customary meaning as would have
`been understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. Phillips, 415
`F.3d at 1312–13. “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17).
`The claim construction rule for inter partes reviews provides that
`“[a]ny prior claim construction determination concerning a term of the claim
`in a civil action . . . that is timely made of record in the inter partes review
`proceeding will be considered.” 37 C.F.R. § 42.100(b).
`C. Petitioner’s Challenges
`The Petition frames the dispositive issue in this case as whether the
`Challenged Claims have written description support in the parent
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`IPR2020-00012
`Patent 10,138,826 B2
`applications of the ’826 patent.4 See Pet. 7 (“Because the ’826 [p]atent’s
`parent applications do not provide written description support for Patent
`Owner’s overbroad claims to a single fuel system, the ’826 [p]atent is not
`entitled to its earliest claimed priority date.”). Specifically, Petitioner
`contends that the Challenged Claims of the ’826 patent are not entitled to an
`effective filing date earlier than that of Petitioner’s relied-upon references of
`its present challenges. See Pet. 1–2, 7. This contention serves as the
`foundation of Petitioner’s unpatentability contentions, as the prior art status
`of Bromberg, Lewis, and Kaneko depends on this contention. In advancing
`this contention, Petitioner “adopts” a particular construction for purposes of
`this inter partes review and then argues that the Challenged Claims under
`that construction lack written description support in the parent applications
`of the ’826 patent. Id. at 5–6. Those parent applications consist of a string
`of continuations dating back to November 18, 2004. Ex. 1101, 1:5–34; see
`Pet. 7; Prelim Resp. 10–12.
`As mentioned above, a written description determination requires two
`steps; first, we must ascertain the proper construction of the claims and,
`second, we must compare the properly construed claims to the written
`description of the relevant application. Accordingly and under the particular
`circumstances of this case, we would need to arrive at the proper claim
`
`4 Although Petitioner purports to argue that it is the parent applications that
`lack written description support, Petitioner’s arguments refer to what it
`labels the “common specification,” which includes the specification of the
`challenged ’826 patent, and Petitioner repeatedly cites to the challenged
`patent in its analysis. See, e.g., Pet. 8 n.7 (“For convenience, citations to the
`common specification will be made to the specification of the ’836 [p]atent
`(Ex. 1101).”). To the extent that Petitioner seeks a ruling from us as to
`whether the ’826 patent itself provides written description support for the
`Challenged Claims, we need not and do not reach that issue.
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`IPR2020-00012
`Patent 10,138,826 B2
`construction before turning to the written description of the parent
`applications. We look to the Petitioner—the party that, at this stage, bears
`the burden of demonstrating a reasonable likelihood of prevailing—to assist
`us in our claim construction analysis by showing us why its proposed
`construction should be applied in the second step. Petitioner, however, skips
`the first step of the written description determination, that of a proper claim
`construction analysis, and leaps immediately to the second step.
`Petitioner merely “adopts,” for the Challenged Claims’ recited first
`fueling system terms, what it characterizes as Patent Owner’s construction in
`the related district court litigation. Pet. 6. Specifically, Petitioner asserts
`that the claim construction to be applied in this inter partes review is broad
`enough to encompass the accused engines of the related litigation,
`contending that “the challenged claims should be construed to be broad
`enough to include a system using [direct injection] and [port injection] of the
`same fuel from the same fuel source.” Id. (citing Ex. 1103 ¶ 152; Ex. 1145
`(providing “Plaintiffs’ Opening Claim Construction Brief” in the parallel
`litigation), 16–19). The cited portion of Dr. Clark’s testimony merely adopts
`a construction. See Ex. 1103 ¶ 152 (“For the purposes of my report, I adopt
`what I understand to be Patent Owner’s construction . . . . I also adopt
`Patent Owner’s implicit construction . . . .”).
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`Petitioner does not direct our attention to any intrinsic evidence in
`support of the correctness of its proposed construction.5 See Pet. 5–6
`(providing the Petition’s claim construction section for what Petitioner
`defines as the “direct injection” claim terms). To the contrary, much of the
`Petition is dedicated to arguments as to why the “common specification,”
`with several citations to the Specification of the challenged patent, does not
`support such a broad single-fuel construction. See, e.g., id. at 11–17 (citing,
`inter alia, Ex. 1101, the ’826 patent); id. at 12 (“The ‘Detailed Description’
`also demonstrates that the common specification does not encompass a
`single fuel system.”). Petitioner argues that there is a “lack of disclosure in
`the specification and the ’033 [p]atent prosecution history”6 for its adopted
`construction. Id. at 6 (citing Ex. 1121, 88–90, 129; Ex. 1103 ¶¶ 148–51).
`Petitioner appears to go so far as to assert that its proposed construction is
`inconsistent with the specification of the challenged patent. See id. at 14
`(arguing that “[t]he common specification disparages the use of a single
`fuel” and citing Ex. 1101 (the ’826 patent)); see also, e.g., Ex. 1103 ¶ 151
`(“It is my opinion that there is no support in the specification of the ’826
`
`
`5 The Board’s Trial Practice Guide, as of the filing date of the Petition,
`states: “If a petitioner believes that a claim term requires an express
`construction, the petitioner must include a statement identifying a proposed
`construction of the particular term and where the intrinsic and/or extrinsic
`evidence supports that meaning.” Trial Practice Guide Update (July 2019),
`13, available at https://www.uspto.gov/sites/default/files/documents/trial-
`practice-guide-update3.pdf; see also Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (Nov. 2019) 44–45, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated (same).
`6 The “’033 [p]atent” is a reference to U.S. Patent No. 7,314,033 B2, which
`issued from the earliest filed application cited in the priority chain for the
`’826 patent. See Pet. 7 (referring to “the ultimate parent of the ’826
`[p]atent”); Ex. 1101, 1:26–27.
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`Patent 10,138,826 B2
`[p]atent for the direct injection of gasoline. . . . On the contrary, the ’826
`[p]atent specifically disparages gasoline as not having the requisite octane
`number.”).
`Further complicating matters is that Petitioner argued to the District
`Court that the broad construction it now asks us to adopt is incorrect, and the
`District Court, subsequent to the filing of the Petition in this case, agreed
`with Petitioner. Ex. 2001, 5 (providing Markman hearing transcript page 16
`containing Petitioner Ford’s argument), 6 (providing transcript pages 19–20,
`with the District Court agreeing with and adopting Ford’s litigation
`construction), Ex. 1147, 2; see also Ex. 1144, 6 (providing Petitioner’s
`proposed litigation construction where the direct injection and port injection
`fuels must be different). The District Court rejected the single-fuel
`construction and ruled that the proper construction is narrower, holding that
`the claims require that the directly injected fuel be different from that of the
`port injected fuel. See Ex. 1147, 2; see also Ex. 2001, 4 (providing
`Markman hearing transcript, 12:14–15 (Patent Owner referring to “a single
`gasoline embodiment as we’re contemplating here.”)). Thus, in order for us
`to rule in Petitioner’s favor in this inter partes review, we would have to
`issue a preliminary claim construction ruling contrary to that of the District
`Court. Petitioner, by opting to avoid advocating before us that its adopted
`construction is the proper one and in not pointing to evidence supporting that
`construction, gives us nothing upon which to base such a contrary claim
`construction. In order for Petitioner to prevail at this stage, we would have
`to draft a claim construction analysis without any help from Petitioner, the
`party asking us to rule favorably on its challenges using that construction,
`and we would have to apply a construction at odds with that arrived at by the
`District Court and for which Petitioner successfully advocated.
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`IPR2020-00012
`Patent 10,138,826 B2
`In light of the above and in the particular circumstances of this case,
`we determine that Petitioner has not explained adequately why its adopted
`construction is proper and, thus, has not demonstrated a reasonable
`likelihood of prevailing on its assertion that claims having such scope lack
`written description support in the parent applications or its related assertion
`that the challenged patent is not entitled to a priority date earlier than the
`relied-upon references. By extension, Petitioner has not demonstrated a
`reasonable likelihood of prevailing on its challenges based on Bromberg,
`Lewis, and Kaneko as Petitioner has not so demonstrated that these
`references are prior art to the ’826 patent. We need not and do not reach the
`issue of whether the Challenged Claims have written description support in
`earlier filed applications.
`
`
`III. OUR DISCRETION UNDER 35 U.S.C. § 314(A)
`The Board has discretion not to institute an inter partes review. See
`35 U.S.C. § 314(a) (authorizing institution of an inter partes review under
`particular circumstances, but not requiring institution under any
`circumstances); 37 C.F.R. § 42.108(a) (stating “the Board may authorize the
`review to proceed”) (emphasis added); Harmonic Inc. v. Avid Tech, Inc., 815
`F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO
`is permitted, but never compelled, to institute an IPR proceeding”); see also
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion. See [5 U.S.C.] § 701(a)(2); 35 U.S.C. § 314(a) (no
`mandate to institute review).”) (additional citation omitted). In determining
`whether to exercise our discretion not to institute a trial, we consider “[t]he
`purpose of the ‘America Invents Act,’ as reported by the Committee on the
`
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`Patent 10,138,826 B2
`Judiciary, [which] is to . . . establish a more efficient and streamlined patent
`system that will improve patent quality and limit unnecessary and
`counterproductive litigation costs.” H.R. REP. 112-98, pt. 1 at 40 (2011).
`The state of any parallel district court litigation can weigh on whether
`we exercise our discretion under § 314(a) to not institute trial. See, e.g.,
`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20
`(PTAB Sept. 12, 2018) (precedential) (“Accordingly, we find that the
`advanced state of the district court proceeding is an additional factor that
`weighs in favor of denying the Petition under § 314(a).”). Also, any
`potential conflict between a proceeding at the Board and the Federal Circuit
`may weigh against our instituting trial in that proceeding. See, e.g., Comtech
`Mobile Datacom Corp. v. Vehicle IP, LLC, IPR2018-00531, Paper 9 at 12
`(PTAB July 20, 2018) (exercising discretion not to institute trial for a
`proceeding with the parallel litigation on appeal to the Federal Circuit over
`claim construction, stating “Were we to construe the term ‘dispatch,’ we
`would be deciding a disputed legal issue that is already currently before our
`reviewing court for resolution.”). For the reasons presented below, we
`determine that the facts in this proceeding weigh in favor of us exercising
`our discretion under § 314(a) to deny the Petition.
`Our precedential decision in NHK Spring Co. also informs our
`discretion here, as the facts in that proceeding are similar to the facts here.
`In NHK Spring Co., the Board determined that the petition in that
`proceeding should be denied under 35 U.S.C. § 325(d). NHK Spring Co.,
`Paper 8 at 11–18. The Board then considered whether § 314(a) provides an
`additional, independent, reason for not instituting trial. NHK Spring Co.,
`Paper 8 at 19–20; see, e.g., id. at 20 (“Thus, simply because we . . . deny the
`Petition under § 325(d) does not mean that we cannot consider and weigh
`
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`Patent 10,138,826 B2
`additional factors that favor denying institution under § 314(a)”). The Board
`then found that the advanced state of the litigation provided an additional
`basis for not instituting trial. Id. at 20.
`In this case, the parallel district court litigation involving