Am General LLC v. Uusi LLC

1. Case Identification

• Case #: IPR2016-01048
• Patent #: 6,009,369
• Filed: May 18, 2016
• Petitioner(s): AM General LLC
• Patent Owner(s): Uusi, LLC
• Challenged Claims: 1, 3, 6, 8-9, 11-13, 17-18, 21-22, 26-27, 30-31, 33

2. Patent Overview

• Title: Voltage Monitoring Glow Plug Controller
• Brief Description: The ’369 patent discloses a controller for diesel engine glow plugs. The system features an adaptive control program that adjusts the duration of the preglow energization cycle based on voltage measurements from monitor circuitry, allowing the controller to optimize preheating time in response to the power source’s output.

3. Grounds for Unpatentability

Ground 1: Obviousness over Masaka and Auth - Claims 1, 3, 6, 11-12, 17-18, 21-22, 26-27, 30-31 are obvious over Masaka in view of Auth.

• Prior Art Relied Upon: Masaka (Patent 4,939,347) and Auth (Patent 4,658,772).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Masaka and Auth taught every limitation of the challenged independent claims. Masaka disclosed a comprehensive glow plug control system that, contrary to arguments made during prosecution, taught adjusting a preglow cycle time based on monitored glow plug voltage. Auth supplemented this by explicitly teaching a microcomputer-based controller that uses an engine battery voltmeter as an input to vary the preglow time duration. The controller in Auth adjusts the timing based on pre-programmed "dependency characteristics" stored in memory, directly corresponding to the ’369 patent’s adaptive control program.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references as both are directed to the same field—diesel engine glow plug control—and address the same objective of achieving efficient and reliable engine startup. Petitioner asserted a POSITA would find it obvious to incorporate Auth’s well-defined, voltage-based adjustment method into Masaka’s system to create a more robust and predictable controller.
  • Expectation of Success: The combination involved applying a known control strategy (voltage-based time adjustment from Auth) to a known system (the glow plug controller of Masaka), which would have resulted in a predictable improvement in performance.

Ground 2: Obviousness over Masaka, Auth, and Erdman - Claims 8-9 are obvious over Masaka in view of Auth and Erdman.

• Prior Art Relied Upon: Masaka (Patent 4,939,347), Auth (Patent 4,658,772), and Erdman (Patent 5,023,527).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Masaka/Auth combination to address the additional limitations of claims 8 and 9, which recite a "means for preventing damage to the switching device" from overvoltage. Erdman disclosed a "load dump transient (LDT) protection circuit" specifically designed to protect electronic components in automotive power systems from harmful voltage spikes. This LDT circuit directly taught the structure and function of the claimed damage prevention means.
  • Motivation to Combine: A POSITA designing an automotive electronic system would have been well aware of the potential for damaging voltage transients, such as load dumps from the alternator. Erdman presented an advantageous and economical solution to this known problem. Therefore, a POSITA would be motivated to integrate Erdman’s LDT protection circuit into the Masaka/Auth controller to enhance its durability and reliability.
  • Expectation of Success: Adding a standard protective circuit to an automotive electronic device was a routine design practice, and a POSITA would have had a high expectation of success in protecting the controller from known electrical hazards.

Ground 3: Obviousness over Masaka, Auth, and Arnault - Claims 13, 33 are obvious over Masaka in view of Auth and Arnault.

• Prior Art Relied Upon: Masaka (Patent 4,939,347), Auth (Patent 4,658,772), and Arnault (Patent 4,331,109).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims 13 and 33, which add the feature of disabling the preglow cycle if the engine was recently running or if another start attempt occurs within a specified time. Arnault taught a control system for a preheating device that explicitly prevented glow plug damage by disabling activation under these exact conditions, such as after a recent engine stop or an aborted start attempt, to avoid overheating the already-hot plugs.
  • Motivation to Combine: A POSITA would recognize the shared goal of all three references: ensuring proper and safe operation of a diesel preheating system. Preventing glow plug overheating is a critical aspect of system longevity. A POSITA would have been motivated to incorporate Arnault's protective control logic into the Masaka/Auth system to prevent thermal damage to the glow plugs, thereby improving the overall system's lifespan and safety.
  • Expectation of Success: Integrating this known safety logic into a glow plug controller was a straightforward and predictable design modification that would have been expected to work as intended.

4. Key Claim Construction Positions

• "a monitor" (claims 1, 27): Petitioner proposed this term be construed to mean "a sensing device," consistent with its use in the specification.
• "means for preventing damage..." (claim 9): Petitioner argued this was a means-plus-function term subject to 35 U.S.C. §112(6). The stated function was preventing damage from an overvoltage signal. The corresponding structure was identified in the specification as either a microprocessor programmed to keep a switching device closed until an alternator slows down or as the disclosed "load dump control circuitry."

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical argument underpinning all grounds was that the Patent Owner mischaracterized Masaka during the original prosecution of the ’369 patent. Petitioner contended that the applicant incorrectly argued to the Examiner that Masaka taught a constant preglow cycle time. Petitioner, supported by expert testimony, asserted that Masaka explicitly disclosed that its preglow cycle timer was "set to be variable in accordance with the glow voltage monitored by the voltage detector," directly contradicting the applicant's prior argument and teaching a key feature of the challenged claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. While the primary references Masaka and Auth had been before the Examiner, Petitioner contended they were being presented in a "new light." This was based on the new combinations with Erdman and Arnault and, crucially, on new expert testimony intended to correct the alleged mischaracterization of Masaka’s teachings that led to the patent’s allowance.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3, 6, 8-9, 11-13, 17-18, 21-22, 26-27, 30-31, and 33 of Patent 6,009,369 as unpatentable.