The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board (PTAB or Board) invalidating three patents owned by the Massachusetts Institute of Technology (MIT).
The case is Ethanol Boosting Systems, LLC v. Ford Motor Company.
MIT owns US Patent Nos. 10,619,580 (’580 patent), 10,781,760 (’760 patent), and 9,708,965 (’965 patent) and exclusively licensed all three to Ethanol Boosting Systems, LLC (EBS).
As the court describes it,
The ’580 patent, representative of the three challenged patents, proposes an optimized fuel management system for internal combustion engines. … Standard internal combustion engines suffer from “engine knock.” This phenomenon occurs when the fuel/air mixture in the engine cylinder unintentionally detonates, which reduces efficiency and damages the engine. The ’580 patent, seeking to mitigate engine knock, proposes a fuel management system which injects an “anti-knock agent” directly into the engine cylinder….. Doing so, according to the patent, causes “evaporative cooling” in the cylinder, which drops the cylinder temperature further from the mixture’s ignition point.
The claimed fuel management system contains two injection mechanisms:
(1) direct injection and
(2) port injection.
In the former, a valve sprays the fuel directly into the cylinder, whereas in the latter, a valve sprays the fuel into a passageway adjacent to the cylinder, which then mixes with air before it is introduced into the cylinder.
As the court explains,
At lower values of engine torque, only the port injector operates. … But for higher values of torque, both injection mechanisms kick in, and in this regime, as the torque increases, the direct injector supplies an increasingly greater percentage of the fuel (as compared to the port injector). … Finally, the claimed fuel management system also includes a “three-way catalyst” for reducing emissions.
In 2020, EBS sued Ford for allegedly infringing these three patents. A few months later, Ford petitioned for inter partes review (IPR) of all three patents.
EBS and Ford disputed the meaning of terms recited in the limitations involving the direct injection mechanism, e.g., “directly inject[ed] fuel” in claim 1 of the ’965 patent, and “fueling system that uses direct injection” in claim 1 of the ’580 and ’760 patents. The parties referred to these disputed terms as the “DI Fuel terms.”
In the district court case, EBS opted for the plain and ordinary meaning of the terms.
Ford understood the DI Fuel terms to require a fuel that
- is different from the fuel used in the port injection system and
- contains an anti-knock agent other than gasoline.
The PTAB initially denied Ford’s IPR petitions because it construed the disputed terms to require a fuel different from that used in the port injector. Under that construction, noted the court, “Ford’s prior art challenge fell short.”
Ford then petitioned for rehearing. In its final written decision, the PTAB found the challenged claims of patents ‘580, ‘760, and ‘965 unpatentable as obvious.
In its decision on the appeal, the Federal Circuit stated:
Nothing in the claims suggests that the DI Fuel terms disavow gasoline as the anti-knock agent. …Indeed, the specification counsels against adopting EBS’s constraint on the anti-knock agent because it teaches a gasoline-only embodiment. …EBS’s position would read out this embodiment from the claim scope. And “[w]e normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification”—we only do so amidst clear disclaimer or disavowal.
Also, the court noted that “other disclosures in these same patents contemplate gasoline as a permissible anti-knock agent.”
The Federal Circuit found the rest of EBS’s arguments unpersuasive and thus affirmed the PTAB’s decisions.
Just like the haiku above, we like to keep our posts short and sweet. Hopefully, you found this bite-sized information helpful. If you would like more information, please do not hesitate to contact us here: https://aeonlaw.com/contact-us/.
