BMW OF NORTH AMERICA, LLC v. Michigan Motor Technologies LLC

1. Case Identification

• Case #: IPR2023-01234
• Patent #: 6,588,260
• Filed: July 21, 2023
• Petitioner(s): BMW of North America, LLC; Mercedes-Benz USA, LLC
• Patent Owner(s): Michigan Motor Technologies LLC
• Challenged Claims: 1-17

2. Patent Overview

• Title: Electronic Throttle Disable Control Test System
• Brief Description: The ’260 patent relates to methods and systems for testing the integrity of a motor drive electronics disable feature in an automotive electronic throttle control system. The patent acknowledges that the underlying throttle control system components and the disable function itself were previously known.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 and 8 are obvious over McQueen, Terazawa, and Husselbee.

• Prior Art Relied Upon: McQueen (Patent 5,303,581), Terazawa (Patent 5,048,485), and Husselbee (an automotive textbook from 1998).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that McQueen disclosed a complete electronic throttle control apparatus with all the major components recited in independent claims 1 and 8, including a powertrain control module (PCM), motor, and throttle position sensor (TPS). McQueen further taught a method for testing this system by disabling the motor driver and checking the throttle position. However, Petitioner contended that McQueen’s test was flawed, as it would fail to detect certain known failure modes, such as a failed return spring or a driver that remains powered on when it should be disabled. Terazawa allegedly cured this deficiency by disclosing a more robust diagnostic test for an analogous throttle system, which specifically checks the return spring and clutch (analogous to McQueen's driver) by confirming the throttle returns to an initial, unpowered position. Husselbee, a textbook, was cited to confirm the common knowledge of a person of ordinary skill in the art (POSITA) that a potentiometer TPS, as used in McQueen, would output a specific voltage corresponding to the throttle's angular position.
  • Motivation to Combine: A POSITA would combine Terazawa's superior testing technique with McQueen’s system to remedy the known deficiencies in McQueen's fault detection. Because both references described analogous throttle control systems, incorporating Terazawa's more thorough check for return-to-default failures into McQueen's process would have been a logical and straightforward modification to improve system safety and reliability.
  • Expectation of Success: A POSITA would have had a high expectation of success because it involved applying a known testing technique from Terazawa to the similar, known system of McQueen to achieve the predictable result of more comprehensive fault detection, likely through a routine software modification.

Ground 2: Claims 11-13 are obvious over McQueen and Terazawa.

• Prior Art Relied Upon: McQueen (Patent 5,303,581) and Terazawa (Patent 5,048,485).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that these method claims were analogous to the apparatus claims in Ground 1. The combination of McQueen and Terazawa was argued to teach all steps of method claim 11. This ground omits Husselbee because the claims recite determining a "throttle position value" rather than a specific "TPS output voltage," a distinction Petitioner argued was covered by McQueen and Terazawa alone. The core logic follows that of Ground 1, mapping McQueen's flawed test and Terazawa's corrective test to the claimed method steps.
  • Motivation to Combine: The motivation was identical to Ground 1: to improve the known, but flawed, fault detection method in McQueen by incorporating the more robust testing logic disclosed by Terazawa.
  • Expectation of Success: The expectation of success was identical to Ground 1.

Ground 3: Claims 6-7, 9-10, and 16-17 are obvious over McQueen, Terazawa, Mauser, and Husselbee.

• Prior Art Relied Upon: McQueen (Patent 5,303,581), Terazawa (Patent 5,048,485), Husselbee (1998 textbook), and Mauser (a 1999 case study).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claims requiring the diagnostic test to occur at a specific time, such as "before learning said default throttle position sensor output voltage" (claim 6) or "before checking PCM memory" (claim 7). Petitioner argued that while the McQueen/Terazawa/Husselbee combination taught the core test, Mauser provided the motivation to perform such tests at various times. Mauser allegedly taught that safety-critical systems like electronic throttles require comprehensive testing strategies, including continuous monitoring and performing checks before, during, or after other system routines. Petitioner also noted that the ’260 patent itself admits it would be obvious to a POSITA that testing could occur before learning the default voltage.
  • Motivation to Combine: A POSITA designing a safety-critical system would be motivated by Mauser to implement a variety of known fault checks at multiple points in the system's operation to "scrutinize safety and availability." Combining Mauser’s teaching of continuous and strategically timed checks with the base test from McQueen/Terazawa was presented as an obvious way to create a more robust and safe system.
  • Expectation of Success: A POSITA would have expected success in scheduling the known test from the primary combination at different points in the control logic, as taught by Mauser, because it was a conventional design practice for safety-critical systems.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 14 and 15 based on the combination of McQueen, Terazawa, and Husselbee, which relied on the same rationale as Ground 1 applied to method claims.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §314(a) (Fintiv) or 35 U.S.C. §325(d).
• Fintiv Factors: Petitioner contended the factors weigh against discretionary denial because the parallel district court litigation is in its early stages, with no trial date set and an estimated trial not occurring until 2027. Petitioners also stated their intent to seek a stay of the litigation and stipulated not to pursue the same invalidity grounds in district court, thereby reducing any overlap and conserving judicial resources.
• §325(d) Factors: Petitioner argued against denial because the primary prior art references (McQueen, Terazawa, Husselbee, Mauser) were not considered during the original prosecution. While a previous inter partes review (IPR) on the ’260 patent was instituted on similar grounds, it was terminated due to settlement before a final written decision was rendered. Petitioner also asserted that the present petition introduces a new ground of unpatentability not raised in the prior IPR or during prosecution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of Patent 6,588,260 as unpatentable.