Ford Motor Co v. Massachusetts Institute Of Technology

1. Case Identification

• Case #: IPR2021-00341
• Patent #: 9,708,965
• Filed: December 24, 2020
• Petitioner(s): Ford Motor Company
• Patent Owner(s): Ethanol Boosting Systems, LLC, and Massachusetts Institute of Technology
• Challenged Claims: 1, 3-5, 11-17, 19, and 21

2. Patent Overview

• Title: Fuel Management System for Spark Ignition Engines
• Brief Description: The ’965 patent relates to a fuel management system for a spark-ignition engine that uses a first fueling system (direct injection) and a second fueling system (port injection) to control engine knock. The system uses the evaporative cooling effect of directly injected fuel, such as ethanol, to improve engine efficiency and suppress knock, particularly during periods of high engine load.

3. Grounds for Unpatentability

Ground 1: Obviousness over Schray and Miura - Claims 1, 3-4, and 11-13 are obvious over Schray in view of Miura.

• Prior Art Relied Upon: Schray (Patent 6,505,603) and Miura (Japanese Application # JPA2003013785).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schray taught a fuel management strategy using two direct injections (an early "induction stroke" injection and a late "compression stroke" injection) from a single injector to control knock. Miura was cited for disclosing a dual-injector engine with both port injection (PI) and direct injection (DI). Petitioner asserted that Miura taught that an early direct injection is functionally equivalent and interchangeable with port injection for creating a homogenous fuel mixture. Therefore, the combination of Schray’s dual-injection timing strategy with Miura’s dual-injector hardware disclosed the claimed system.
  • Motivation to Combine: A POSITA would combine the references to gain the well-known benefits of port injection, such as improved fuel-air mixing and more stable combustion at low loads, which were advantages not fully realized by Schray's single-injector system. The modification was presented as a simple substitution of one known element (Schray's early DI) for another (Miura's PI) to achieve a predictable improvement.
  • Expectation of Success: Petitioner contended a POSITA would have had a reasonable expectation of success because both references address knock suppression in spark-ignition engines. Miura’s explicit teaching that an engine can operate with either two separate injectors or a single direct injector performing two injection events confirmed that combining the systems was a straightforward design choice.

Ground 2: Obviousness over Rubbert, Yuushiro, and Bosch - Claims 1, 3-5, 11-17, 19, and 21 are obvious over Rubbert in view of Yuushiro and Bosch.

• Prior Art Relied Upon: Rubbert (German Application # DE19853799), Yuushiro (Japanese Application # JPH10252512), and Bosch (Bosch Automotive Handbook).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Rubbert disclosed the foundational concept of a dual-injection (PI and DI) system where fuel delivery is load-dependent. However, Rubbert lacked specific implementation details. Yuushiro was alleged to provide these details, teaching a specific fuel map where the fraction of DI fuel increases with engine load to prevent knock. The combination of Rubbert and Yuushiro allegedly taught the claimed open-loop control system. Bosch, a standard industry handbook, was introduced to supply the rationale for adding a closed-loop control system using a knock sensor, a ubiquitous feature in modern engines.
  • Motivation to Combine: A POSITA, starting with Rubbert's load-dependent concept, would have been motivated to consult a reference like Yuushiro to find a known, functional fuel map to implement the strategy. The motivation to further add the teachings of Bosch was to incorporate standard closed-loop knock control to improve fuel economy and reduce emissions, which was a common design goal.
  • Expectation of Success: Success was expected because the combination involved implementing Rubbert's general strategy using Yuushiro's specific fuel map and then adding a standard, well-understood control feature from Bosch. This represented a combination of known elements to achieve the predictable result of knock reduction.

Ground 3: Obviousness over Ohtani and Zhao - Claims 5, 19, and 21 are obvious over Ohtani in view of Zhao.

• Prior Art Relied Upon: Ohtani (Application # 2005/0098156) and Zhao (Automotive Gasoline Direct-Injection Engines, SAE R-315 (2002)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ohtani alone taught most elements of the challenged claims, including a dual-injection engine using both open-loop (maps) and closed-loop (knock sensor) control to manage knock by varying the PI/DI ratio based on engine load. Zhao, a foundational textbook on DI engines, was added to provide explicit teachings for dependent claims. Specifically, Zhao was cited for teaching the use of variable valve timing (VVT) to decrease the engine's octane requirement (claim 5), minimizing wall wetting via late injection (claim 19), and injecting fuel after the inlet valve has closed (claim 21).
  • Motivation to Combine: A POSITA reviewing Ohtani’s system would have been motivated to consult a text like Zhao to implement further well-known optimizations. The motivation was to improve upon Ohtani's design by incorporating established DI techniques (like VVT and late injection) to further enhance efficiency, increase torque, and reduce emissions, all of which are detailed in Zhao.
  • Expectation of Success: Petitioner argued for a high expectation of success, as Zhao provides detailed, data-backed guidance for implementing these optimization techniques in the exact type of DI engine disclosed by Ohtani.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 5, 14-17, 19, and 21 are obvious over Schray, Miura, and Zhao, and that claims 1, 3-4, and 11-17 are obvious over Ohtani alone.

4. Key Claim Construction Positions

• Petitioner argued that several terms should be given their plain and ordinary meaning. For the "DI Terms" (phrases across multiple claims reciting the use of direct injection "to prevent knock" or provide "knock resistance"), Petitioner contended they are functional statements of a desired result, rather than recitations of a specific structure or action. Accordingly, Petitioner argued these functional statements should not be afforded patentable weight in the obviousness analysis.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors. It contended that the co-pending district court case was in an early stage, with minimal discovery exchanged and a Markman hearing not yet scheduled. Petitioner asserted that a stay of the district court case was likely if the IPR were instituted. Furthermore, it argued that the petition raised strong validity challenges based on prior art not considered during prosecution and that Petitioner would stipulate not to pursue any instituted grounds in the district court, thus avoiding duplicative efforts.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3-5, 11-17, 19, and 21 of the ’965 patent as unpatentable.