Illinois Tool Works Inc v. Eisenmann Stephen

1. Case Identification

• Case #: IPR2020-01734
• Patent #: 6,302,169
• Filed: October 1, 2020
• Petitioner(s): Illinois Tool Works Inc.
• Patent Owner(s): Stephen Eisenmann
• Challenged Claims: 1-16

2. Patent Overview

• Title: Diesel Fuel Nozzle Restrictor
• Brief Description: The ’169 patent describes a mechanical restrictor for a vehicle's fuel filler neck. The device is designed to prevent the insertion of a smaller-diameter unleaded gasoline nozzle into a larger-diameter diesel fuel tank, thereby preventing misfuelling.

3. Grounds for Unpatentability

Ground 1: Anticipation over Arnett - Claims 1-3 and 5 are anticipated by Arnett under 35 U.S.C. §102.

• Prior Art Relied Upon: Arnett (Patent 3,730,216).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Arnett, which also discloses a fuel nozzle restrictor to prevent misfuelling, teaches every element of independent claim 1. Arnett allegedly discloses a device with an attachment flange, a nozzle tube extending from the flange, a closure cap (gate 58) pivotally attached to the bottom of the nozzle tube, and a release arm (latch 60). This release arm has a projection extending through the nozzle tube wall and a ledge (catch 70) that holds the closure cap shut until the projection is displaced by a correctly sized fuel nozzle. Petitioner asserted that Arnett also discloses the limitations of dependent claims 2 (spring-biased door), 3 (lead-in bore), and 5 (attachment groove).

Ground 2: Obviousness over Arnett in view of Foernbacher - Claims 1-3, 5-8, 10-13, and 15-16 are obvious over Arnett in view of Foernbacher.

• Prior Art Relied Upon: Arnett (Patent 3,730,216) and Foernbacher (German Patent DE4039269).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Arnett discloses nearly all limitations of the challenged claims but only teaches a single release arm. Foernbacher, another fuel restrictor device, explicitly teaches using multiple release arms (locking members 36, 38, 40) that must be simultaneously depressed by a correctly sized nozzle to open the closure cap. The combination of Arnett’s design with Foernbacher’s teaching of multiple release arms would allegedly render claims requiring "at least two release arms" (claims 6 and 11) and "at least two actuation projections" (claim 16) obvious.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the references for two primary reasons. First, a POSITA would add multiple release arms from Foernbacher to Arnett’s single-arm design to provide redundancy and ensure the closure cap remains securely closed, as a single arm would be prone to wear. Second, using multiple arms would make the device more effective at preventing misfuelling by requiring the entire diameter of the correct nozzle to engage all arms simultaneously, thus preventing a smaller nozzle from "tricking" the device open.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the modification involved merely duplicating an existing, well-understood mechanical component (Arnett’s release arm) as taught by Foernbacher, a predictable design improvement.

Ground 3: Obviousness over Vandiere in view of Arnett or Foernbacher - Claims 1-3, 5-8, 10-13, and 15-16 are obvious over Vandiere in view of Arnett or Foernbacher.

• Prior Art Relied Upon: Vandiere (French Publication No. 2,741,014), Arnett (Patent 3,730,216), and Foernbacher (German Patent DE4039269).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Vandiere discloses a fuel restrictor with multiple release arms and projections that extend through the nozzle wall. However, Vandiere has two key differences from the ’169 patent: it uses "sliding doors" instead of a single pivoting closure cap, and its release arms are integrated into the fuel filler neck rather than being part of a separate, insertable nozzle tube assembly. Arnett and Foernbacher both teach the use of a pivoting closure cap and a separate nozzle tube assembly.
  • Motivation to Combine: A POSITA would have been motivated to modify Vandiere’s design by incorporating the pivoting cap and separate nozzle tube taught by Arnett and Foernbacher to solve critical flaws in Vandiere. First, a pivoting cap would provide a more fluid-tight seal than Vandiere's sliding doors, which leave a gap that could allow fuel to be dispensed even with an incorrect nozzle. Second, Vandiere's integrated design requires cutting slots in the vehicle’s filler neck for the release arms, creating a risk of fuel spillage between the vehicle’s body panels. Adopting the separate, self-contained nozzle tube assembly from Arnett or Foernbacher would eliminate this dangerous flaw.
  • Expectation of Success: The combination was presented as a predictable substitution of known components to solve known problems, yielding a predictable result with a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including reversing the primary and secondary references (e.g., Foernbacher in view of Arnett). Further grounds argued that fabricating the release arms from "spring steel" (claims 4, 9, 14) would have been an obvious material choice to a POSITA in view of the known requirements for such components to be resilient and wear-resistant.

4. Key Claim Construction Positions

• Petitioner argued that several claim terms must be construed broadly to be consistent with the specification and drawings of the ’169 patent, which would otherwise be read out of the claims.
• “a closure cap being pivotally attached to a bottom of said nozzle tube”: Petitioner contended this requires only that the cap is positioned at the bottom of the tube; the attachment point itself can be on the side of the tube near the bottom, as shown in the patent’s own figures.
• “at least [one/two] release arm[s] being attached to a top of said nozzle tube”: Similarly, Petitioner argued this means the arms are attached in an area towards the top (proximal) end of the nozzle tube, not literally on the top surface. This construction is necessary to cover the patent's disclosed embodiments.
• “a projection extending through a wall of said nozzle tube”: Petitioner proposed this means the projection starts on one side of the nozzle tube’s physical wall, passes through an opening, and terminates on the other side, consistent with the specification and dictionary definitions.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. It was asserted that the U.S. Patent and Trademark Office had never previously considered these specific unpatentability grounds. The primary references Foernbacher and Vandiere were never cited during prosecution. While Arnett was cited, Petitioner contended the Examiner did not comment on it or use it as a basis for any rejection, and the patent was allowed in a first-action allowance without substantive examination of the most relevant art.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of the ’169 patent as unpatentable.