Am General LLC v. Uusi LLC

1. Case Identification

• Case #: IPR2016-01050
• Patent #: 6,148,258
• Filed: May 18, 2016
• Petitioner(s): AM General LLC
• Patent Owner(s): Uusi, LLC
• Challenged Claims: 1, 9, 11, 12, 17, 18, 29-31

2. Patent Overview

• Title: Electrical Starting System for Diesel Engines
• Brief Description: The ’258 patent describes an electronic control system for diesel engines that integrates glow plug control, monitoring, diagnostics, and protection features into a single housing. The system uses a programmable controller to manage glow plug energization based on various sensor inputs.

3. Grounds for Unpatentability

Ground 1: Obviousness over Auth and Hansen - Claims 1, 9, 11, 12, 17, 18, and 29-31 are obvious over Auth in view of Hansen.

• Prior Art Relied Upon: Auth (Patent 4,658,772), Hansen (Patent 4,209,816).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Auth taught the core functionalities of the ’258 patent, including a glow plug temperature control system with a programmable controller (a "computing unit"), monitor circuitry to measure voltage applied to the glow plugs, and a switching device ("current control unit") to energize them. However, Auth’s components were not explicitly disclosed within a single housing. Hansen was cited for teaching a compact, modular protective control unit for a vehicle’s electrical system, which includes a housing, connectors, and load protection circuitry to prevent battery disconnection while the engine is running. Petitioner contended that combining Auth’s control system within Hansen’s protective housing would result in the apparatus claimed in the ’258 patent.
  • Motivation to Combine: A POSITA would combine Auth and Hansen to gain the known benefits of packaging electronic components into a single, protected module, as taught by Hansen. This would improve the robustness and serviceability of Auth’s glow plug control system. Both references address vehicle electrical systems, making their combination straightforward for a skilled artisan seeking to create a more integrated and reliable product.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involved implementing Auth’s control logic within Hansen’s well-understood modular housing and protective circuit design, with each component performing its predictable function.

Ground 2: Obviousness over Auth, Hansen, and Erdman - Claims 1, 9, 11, 12, 17, 18, and 29-31 are obvious over Auth in view of Hansen, further in view of Erdman.

• Prior Art Relied Upon: Auth (Patent 4,658,772), Hansen (Patent 4,209,816), and Erdman (Patent 5,023,527).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Auth and Hansen from Ground 1. Petitioner introduced Erdman as an alternative or supplementary teaching for the "load protection circuitry" limitation of claim 1. Erdman disclosed advanced circuitry for protecting vehicular electrical components from overcurrents and transient voltages, such as a "load dump transient (LDT) protection circuit" and an "autoprotective driver circuit" that limits current based on motor speed. This provided an additional, robust way to satisfy the load protection requirement.
  • Motivation to Combine: A POSITA would be motivated to incorporate Erdman's teachings into the Auth/Hansen system to provide superior protection against damaging voltage spikes and overcurrent conditions, which are known hazards in automotive environments. Erdman expressly taught that its protection circuits were advantageous and economical, providing a clear rationale for their inclusion to enhance the reliability and cost-effectiveness of the integrated controller.
  • Expectation of Success: A POSITA would have expected success in integrating Erdman’s protection circuits, as they were specifically designed for vehicular systems and would predictably protect the electronic components taught by Auth from common electrical faults.

4. Key Claim Construction Positions

• Petitioner argued that several terms in the claims contained typographical errors and proposed construing them consistent with the patent owner's positions in a related district court case to preemptively address these issues.
• "power correction after removal or an ignition signal" (claim 1): Petitioner proposed this should be corrected to mean "power connection after removal of an ignition signal." This correction was critical to mapping the load protection teachings of Hansen and Erdman.
• "means based upon various sensed conditions..." (claim 29): Petitioner argued this was a means-plus-function term governed by §112(6). The stated function was adjusting preglow and afterglow times to limit glow plug temperature, and the corresponding structure was identified as a microprocessor programmed with specific algorithms disclosed in the specification.
• "during an/or after" (claim 1): Petitioner proposed correcting this typo to read "during and/or after."

5. Arguments Regarding Discretionary Denial

• The petition was filed more than one year after a complaint involving the ’258 patent was filed against the U.S. government in the Court of Federal Claims (CoFC), a case in which Petitioner was a noticed third party.
• Petitioner argued that the one-year time bar of 35 U.S.C. §315(b) did not apply. It contended that the bar is triggered only by a "complaint alleging infringement of the patent" in a "civil action." Petitioner argued that the CoFC case, brought under 28 U.S.C. §1498, was a claim for just compensation against the government for an eminent domain "taking," not a traditional patent infringement action. Therefore, it did not constitute a civil action that would trigger the §315(b) time bar.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 9, 11, 12, 17, 18, and 29-31 of the ’258 patent as unpatentable.