Ethanol Boosting Systems LLC v. Ford Motor Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ethanol Boosting Systems, LLC (Delaware) and Massachusetts Institute of Technology (Massachusetts)
  • Defendant: Ford Motor Company (Delaware)
  • Plaintiff’s Counsel: Farnan LLP
• Case Identification: 1:19-cv-00196, D. Del., 01/30/2019
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant, Ford Motor Company, is a Delaware corporation.
• Core Dispute: Plaintiffs allege that Defendant’s EcoBoost and other V8 engines, which feature dual port and direct fuel injection, infringe four patents related to dual-injection fuel management systems designed to improve engine efficiency and control knock.
• Technical Context: The technology concerns the use of both port fuel injection and direct fuel injection in a single engine, allowing for dynamic control over the combustion process to increase power and efficiency while managing engine knock, a critical challenge in modern turbocharged and high-compression engines.
• Key Procedural History: The complaint alleges extensive pre-suit licensing discussions between October 2014 and November 2015, during which Plaintiffs notified Ford of its patent portfolio. It is alleged that Ford, after reviewing the technology, stated it had no plans for its use before subsequently launching the accused products. Subsequent to the filing of this complaint, the asserted claims of three of the four patents-in-suit (the ’519, ’166, and ’826 patents) were cancelled in Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office.

Case Timeline

Date	Event
2004-11-18	Earliest Priority Date for all Asserted Patents
2011-12-06	U.S. Patent No. 8,069,839 Issues
2014-10-30	Ford allegedly receives first notice of the ’839 Patent
2015-11-01	Alleged final licensing discussion where Ford disclaimed interest
2016-02-09	U.S. Patent No. 9,255,519 Issues
2016-05-03	First alleged public announcement of accused Ford dual-fuel engines
2017-11-07	U.S. Patent No. 9,810,166 Issues
2018-11-27	U.S. Patent No. 10,138,826 Issues
2019-01-30	Complaint Filed
2019-08-13	IPRs filed against the ’519, ’166, and ’826 patents
2021-09-03	IPR Certificate issues cancelling asserted claims of ’166 Patent
2021-09-07	IPR Certificate issues cancelling asserted claims of ’826 Patent
2021-09-08	IPR Certificate issues cancelling asserted claims of ’519 Patent

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,069,839 - Fuel Management System for Variable Ethanol Octane Enhancement of Gasoline Engines, issued December 6, 2011.

The Invention Explained

• Problem Addressed: The patent’s background section states that while engine efficiency can be improved by techniques like downsizing and turbocharging, these methods are fundamentally limited by the onset of engine "knock," an undesirable fuel detonation that can cause engine damage (’839 Patent, col. 1:24-34).
• The Patented Solution: The invention proposes a dual-fuel system that uses a primary fuel (e.g., gasoline) and supplements it with on-demand injection of a secondary, high-octane "antiknock agent," such as ethanol, to prevent knock during high-load conditions (’839 Patent, Abstract). The system achieves superior knock suppression by directly injecting the ethanol into the cylinder, leveraging the significant cooling effect from its high heat of vaporization in addition to its inherent high octane rating (’839 Patent, col. 2:54-65).
• Technical Importance: This approach provided a method to gain the benefits of high-compression or turbocharged engine designs without requiring the use of expensive, high-octane fuel across the entire operating range of the engine (’839 Patent, col. 1:19-40).

Key Claims at a Glance

• The complaint asserts independent Claim 1 as illustrative (Compl. ¶ 65).
• Essential elements of Claim 1 include:
  • A spark ignition engine that is fueled both by direct injection and by port injection;
  • wherein above a selected torque value the ratio of fuel that is directly injected to fuel that is port injected increases;
  • and wherein the engine is operated at a substantially stoichiometric fuel/air ratio.
• The complaint notes that its infringement description is illustrative and not exhaustive (Compl. ¶ 66, n.1).

U.S. Patent No. 9,255,519 - Fuel Management System for Variable Ethanol Octane Enhancement of Gasoline Engines, issued February 9, 2016.

The Invention Explained

• Problem Addressed: The patent addresses the need for a sophisticated control system to manage engine knock in turbocharged or supercharged engines that utilize dual-injection strategies (’519 Patent, col. 1:33-41).
• The Patented Solution: The patent describes a fuel management system for a forced-induction engine that combines a "first fueling system" (direct injection for knock suppression) with a "second fueling system" (port injection) (’519 Patent, Abstract). The system dynamically adjusts the fraction of directly injected fuel based on torque, using a closed-loop control system with a knock sensor. It further claims the use of spark retard as an additional tool to reduce the amount of directly injected fuel needed to prevent knock (’519 Patent, col. 7:36-47).
• Technical Importance: The invention describes an integrated control strategy that allows an engine to operate closer to its performance limits by precisely and efficiently deploying multiple knock-suppression techniques (direct injection cooling, spark retard) in real time (’519 Patent, col. 1:41-50).

Key Claims at a Glance

• The complaint asserts independent Claim 1 as illustrative (Compl. ¶ 76).
• Essential elements of Claim 1 include:
  • A fuel management system for a turbocharged or supercharged spark ignition engine controlling fueling from a direct injection system and a port injection system;
  • where there is a range of torque where both systems are used simultaneously;
  • where the fraction of directly injected fuel decreases with decreasing torque;
  • where the system uses a closed-loop control with a knock sensor to control the fuel fraction;
  • and where the system also employs spark retard to reduce the amount of directly injected fuel.
• The complaint notes its infringement description is illustrative and not exhaustive (Compl. ¶ 77, n.2).

U.S. Patent No. 9,810,166 - Fuel Management System for Variable Ethanol Octane Enhancement of Gasoline Engines, issued November 7, 2017 (Compl. ¶ 85).

• Technology Synopsis: The ’166 Patent describes a fuel management system for a turbocharged engine that defines two distinct operational modes based on torque. A "first range of torque" uses both direct and port injection, while a "second range of torque" uses only port injection. The system is designed to switch from the second range to the first as torque increases beyond a certain threshold, increasing the fraction of directly injected fuel to prevent knock (’166 Patent, Abstract; col. 8:39-51).
• Asserted Claims: Independent Claim 19 is asserted as illustrative (Compl. ¶ 88).
• Accused Features: Ford’s EcoBoost fuel management systems are accused of infringing by allegedly operating with these distinct port-only and dual-injection torque ranges (Compl. ¶¶ 89, 93).

U.S. Patent No. 10,138,826 - Fuel Management System for Variable Ethanol Octane Enhancement of Gasoline Engines, issued November 27, 2018 (Compl. ¶ 96).

• Technology Synopsis: The ’826 Patent claims a fuel management system with both direct and port fueling systems. It specifies a "first torque range" where both are used and a "second torque range," extending from zero torque upwards, where only the second (port) system is used. When torque exceeds the highest value in the second range, the engine operates in the first (dual-injection) range (’826 Patent, Abstract; col. 8:37-55).
• Asserted Claims: Independent Claim 12 is asserted as illustrative (Compl. ¶ 99).
• Accused Features: Ford’s EcoBoost fuel management systems are accused of meeting these limitations by allegedly using port-only injection at low torque and transitioning to dual injection at higher torque levels (Compl. ¶¶ 100, 103-105).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Ford’s "second generation" EcoBoost engines and fuel management systems, including the 2.7L, 3.5L, and High Output 3.5L versions, as well as its 3.3L Ti-VCT and 5.0L Ti-VCT V8 engines (Compl. ¶¶ 64, 75, 87, 98). These engines are incorporated into vehicles including the Ford F-150, Ford Expedition, and Lincoln Navigator (Compl. ¶¶ 45, 48-49).

Functionality and Market Context

The complaint alleges these engines use a "new dual injection system" that "features both direct injection and port fuel injection" (Compl. ¶ 54). Ford marketing materials, cited in the complaint, describe a system with two injectors per cylinder—one in the intake port and another inside the cylinder—that "work together to improve power output and efficiency" (Compl. ¶ 54). A Ford marketing image of the 3.5L EcoBoost engine describes its "port-fuel and direct-injection (PFDI) system with two injectors per cylinder" (Compl. ¶ 67). The complaint alleges these engines and the vehicles they power are of substantial commercial importance, citing reports that the F-Series truck franchise is expected to generate revenues of $42 billion (Compl. ¶ 58).

IV. Analysis of Infringement Allegations

’839 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A spark ignition engine that is fueled both by direct injection and by port injection	Ford’s accused EcoBoost engines are marketed as having a “new dual injection system” with two injectors per cylinder: one for port fuel injection and one for direct injection. A Ford marketing image shows the 3.5L EcoBoost engine with a "port-fuel and direct-injection (PFDI) system" (Compl. ¶ 67).	¶¶ 54, 67	col. 2:54-65
wherein above a selected torque value the ratio of fuel that is directly injected to fuel that is port injected increases	A technical chart from a National Highway Traffic Safety Administration report maps the blend of port and direct fuel injection against engine speed and load for the accused 3.5L EcoBoost engine (Compl. ¶ 68). The chart allegedly shows that above a torque value of approximately 40% engine load, the proportion of directly injected fuel increases as load increases.	¶¶ 68-69	col. 2:7-12
and wherein the engine is operated at a substantially stoichiometric fuel/air ratio.	The complaint alleges that the Ford F-150 is equipped with "three way" catalytic converters, which are known in the industry to require operation at a substantially stoichiometric fuel/air ratio to function properly.	¶70	col. 3:9-12

’519 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A fuel management system for a turbocharged or supercharged spark ignition engine where the fuel management system controls fueling from a first fueling system that directly injects fuel ... and from a second fueling system that injects fuel into a region outside of the cylinder	The accused 3.5L EcoBoost engine is a turbocharged spark ignition engine that uses a fuel management system to control both a direct injection system ("first fueling system") and a port injection system ("second fueling system") (Compl. ¶ 78).	¶¶ 78-79	col. 7:22-30
and where there is a range of torque where both fueling systems are used at the same value of torque	The NHTSA report chart allegedly demonstrates an operating range above approximately 40% absolute engine load where both port and direct fuel injection are used concurrently (Compl. ¶ 80).	¶80	col. 7:31-33
and where the fraction of fuel in the cylinder that is introduced by the first fueling system decreases with decreasing torque	The same NHTSA chart allegedly shows that as torque (engine load) decreases from its peak, the percentage of fuel from direct injection also decreases, eventually reaching zero below approximately 40% load (Compl. ¶ 81).	¶81	col. 7:36-39
and the fuel management system controls the change in the fraction of fuel introduced by the first fueling system using closed loop control that utilizes a sensor that detects knock	On "information and belief," the complaint alleges that Ford's fuel management system uses a knock sensor in a closed-loop control scheme to manage the fraction of directly injected fuel (Compl. ¶ 82).	¶82	col. 7:40-43
and where the fuel management system also employs spark retard so as to reduce the amount of fuel that is introduced into the cylinder by the first fueling system.	On "information and belief," the complaint alleges the system employs spark retard for this purpose. This is supported by another NHTSA chart showing spark advance varies with engine load, which Plaintiffs link to changes in the DI/PFI ratio (Compl. ¶ 82).	¶82	col. 7:43-47

Identified Points of Contention

• Scope Questions: For the ’839 Patent, a primary question for claim construction may be whether the claim term "fueled both by direct injection and by port injection" is limited to systems using two different fuels (e.g., gasoline and ethanol), as the specification extensively describes, or if it can read on a system like Ford's that allegedly uses the same fuel (gasoline) for both injectors.
• Technical Questions: For the ’519 Patent, the complaint alleges the "closed loop control" and "spark retard" elements on "information and belief." An evidentiary question will be whether discovery can establish that the accused system's control logic uses a knock sensor and spark retard for the specific purpose of reducing the amount of directly injected fuel, as required by the claim's "so as to" language, or if these are merely general engine control functions with an incidental effect on the fuel blend.

V. Key Claim Terms for Construction

Term: "fueled both by direct injection and by port injection" (’839 Patent, Claim 1)

• Context and Importance: This term's construction is critical because the accused Ford systems use a single fuel (gasoline) for both injectors, whereas the specification of the ’839 patent family is heavily focused on a dual-fuel concept using gasoline for port injection and a separate "antiknock agent" like ethanol for direct injection. Practitioners may focus on this term because its construction could determine whether the patent applies at all to single-fuel dual-injection systems.
• Intrinsic Evidence for a Broader Interpretation: The plain language of Claim 1 itself does not explicitly require two different fuel compositions. It only specifies two different methods of injection. A party could argue that if the inventors intended to limit the claim to a two-fuel system, they would have used more specific language to do so.
• Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly and consistently describes the invention in the context of two different liquids, referring to "gasoline" for the primary fuel and an "antiknock agent" or "ethanol" for the directly injected fluid (’839 Patent, Abstract; col. 2:25-30). A party could argue that the claims must be interpreted in light of this consistent disclosure, limiting them to dual-fuel systems.

Term: "employs spark retard so as to reduce the amount of fuel that is introduced ... by the first fueling system" (’519 Patent, Claim 1)

• Context and Importance: The "so as to" phrase introduces a functional or purposeful requirement. The infringement analysis depends on whether Ford's system employs spark retard for the purpose of substituting for direct injection fuel. Practitioners may focus on this term because it links two distinct engine control actions (spark timing and fuel blending), and proving this specific causal link in a complex engine control unit may be challenging.
• Intrinsic Evidence for a Broader Interpretation: A party might argue that if the system's operation results in spark retard being used and the amount of direct injection fuel being reduced concurrently under the same operating conditions, the functional requirement is met, regardless of the specific lines of code in the controller.
• Intrinsic Evidence for a Narrower Interpretation: The specification describes spark retard as a tool to "decrease the amount of fuel that would otherwise be provided by the first fueling system" (’519 Patent, col. 7:17-19, 43-47). A party could argue this requires evidence of a direct control relationship, where the engine controller is programmed to treat spark retard as a substitute for direct injection, rather than merely using both as independent tools for overall engine management that happen to be active simultaneously.

VI. Other Allegations

Indirect Infringement

The complaint does not contain counts for indirect infringement under 35 U.S.C. § 271(b) or (c). The infringement allegations are limited to direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶ 63, 74, 86, 97).

Willful Infringement

The complaint alleges that Ford's infringement was and continues to be willful (Compl. ¶ 108). The allegations are based on pre-suit knowledge, asserting that Ford was notified of the ’839 Patent and related technology as early as October 2014 during extensive licensing discussions (Compl. ¶¶ 109-110). The complaint further alleges that in November 2015, Ford stated it had "no plans to utilize the MIT/EBS dual port and direct fuel injection technology," a representation Plaintiffs allege was false when made, as Ford subsequently launched the accused products (Compl. ¶¶ 112-113). Willfulness is also alleged based on the filing of the lawsuit providing notice for any continuing infringement (Compl. ¶ 115).

VII. Analyst’s Conclusion: Key Questions for the Case

• A key procedural question will be one of case viability: as the asserted claims of the ’519, ’166, and ’826 patents were cancelled in IPRs filed after this complaint, can Plaintiffs' case proceed effectively on the sole remaining ’839 patent, and how will the invalidation of three-quarters of the asserted portfolio impact the scope of discovery, damages models, and overall litigation strategy?
• A central legal issue will be one of claim scope: can the claims of the ’839 patent, which arise from a specification describing a two-fuel system (gasoline plus a separate "antiknock agent"), be permissibly construed to cover the accused single-fuel (gasoline-only) dual-injection engines, or is the patent's scope limited by its detailed embodiments?
• A key factual dispute will be one of intent: does the documented pre-suit communication, in which Ford allegedly reviewed the patented technology, disclaimed interest, and subsequently launched the accused products, constitute the type of egregious conduct necessary to support a finding of willful infringement and potential enhancement of damages?