Am General LLC v. Uusi LLC

1. Case Identification

• Case #: IPR2016-01051
• Patent #: 5,729,456
• Filed: May 18, 2016
• Petitioner(s): AM General LLC
• Patent Owner(s): Uusi, LLC
• Challenged Claims: 1-3, 5, 8-9

2. Patent Overview

• Title: Glow Plug Controller
• Brief Description: The ’456 patent relates to a controller for diesel engine glow plugs that uses a microprocessor or programmable logic device and an analog temperature sensor to analyze operating parameters and control glow plug activation before, during, and after the engine is started.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5, 8, and 9 are obvious over Yasuhara

• Prior Art Relied Upon: Yasuhara (Patent 4,491,100).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yasuhara discloses every element of the challenged claims. Yasuhara teaches a "control system for a glow plug" using a microcomputer-based "control unit 15" that functions as the claimed "glow plug controller circuitry." This unit is coupled to a "temperature sensor 25" to control glow plug operation based on engine temperature. Petitioner asserted that the claimed components of the controller circuitry were all present in Yasuhara's microcomputer system. The "oscillator means" is inherently disclosed, as a POSITA would understand any microcomputer requires a clock signal. The "digital logic means" is the system's central processing unit (CPU), and the "output circuitry" is the input/output (I/O) circuit that operates a control switch to activate the glow plugs before and after starting the engine (i.e., preglow and afterglow).
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument is that Yasuhara alone renders the claims obvious. Petitioner contended that implementing Yasuhara's disclosed microcomputer with standard components, such as an oscillator, was a matter of obvious design choice for a POSITA.
  • Expectation of Success (for §103 grounds): A POSITA would have a clear expectation of success in implementing the well-understood components of a microcomputer system as described in Yasuhara to achieve the claimed controller.

Ground 2: Claims 8 and 9 are obvious over Demizu in view of Yasuhara

• Prior Art Relied Upon: Demizu (Patent 4,566,410) and Yasuhara (Patent 4,491,100).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Demizu teaches the base glow plug controller of claim 1. Demizu discloses a "one-chip computer" based controller that uses a temperature sensor, an arithmetic and logic unit ("digital logic means"), an "oscillation circuit" ("oscillator means"), and output circuitry to apply current to glow plugs before starting the engine. Yasuhara was cited to supply the specific features of claims 8 and 9. Claim 8 adds applying current for a controlled duration after the engine starts (afterglow), and claim 9 adds an "indicator device" to report operating modes. Petitioner asserted Yasuhara explicitly teaches both an afterglow heating period and an indicator light that informs the operator of the system's status (e.g., "ready to start").
  • Motivation to Combine (for §103 grounds): A POSITA would combine the references because they are in the same field of computer-based glow plug controllers and address the same fundamental problems. A POSITA would be motivated to improve the basic controller of Demizu by incorporating the known and advantageous afterglow and operator feedback features from Yasuhara to enhance engine performance and usability.
  • Expectation of Success (for §103 grounds): There would be a high expectation of success, as modifying the control program stored in Demizu's one-chip computer to implement the afterglow timing and indicator light logic taught by Yasuhara was a straightforward and predictable integration for a POSITA.

• Additional Grounds: Petitioner asserted an additional ground that claims 1-3 and 5 are obvious over Demizu alone, arguing its "one-chip computer" system discloses all necessary elements of the controller circuitry.

4. Key Claim Construction Positions

• Petitioner dedicated significant argument to construing "means" terms to avoid invocation of 35 U.S.C. §112, para. 6. For the purposes of the IPR, Petitioner adopted the constructions Patent Owner advocated for in co-pending district court litigation.
• "oscillator means to provide a clock signal...": Petitioner agreed this term connotes sufficiently definite structure to a POSITA and should be construed as an "oscillator clock." This construction is supported by the specification and prosecution history, which describe an oscillator providing clock signals.
• "digital logic means": Petitioner argued this term should be construed as a "digital circuit that performs Boolean algebra," again asserting it recites sufficiently definite structure. This avoids a means-plus-function analysis and broadens the scope of available prior art structures that meet the limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the one-year time bar under §315(b) did not apply, despite a related complaint being filed in the Court of Federal Claims (CoFC) more than one year prior to the petition.
• The argument centered on the nature of the CoFC action, asserting it was a claim against the U.S. government for just compensation under 28 U.S.C. § 1498, akin to an eminent domain "taking," not a "civil action for patent infringement" as required to trigger the §315(b) bar. Petitioner further argued that it was merely a "noticed party" in that action and was never served with a complaint alleging infringement, nor did privity exist between it and the U.S. government that would subject it to the time bar.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-3, 5, and 8-9 of Patent 5,729,456 as unpatentable under §103.