PTAB

IPR2023-01234

BMW Of North America LLC v. Michigan Motor Technologies LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Electronic Throttle Disable Control Test System
  • Brief Description: The ’260 patent discloses methods and systems for testing the integrity of a motor drive electronics disable feature in an automobile's electronic throttle control system. The claimed invention involves disabling the throttle drive electronics, checking throttle positions under different conditions, and engaging a failure mode if a discrepancy is found.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-5 and 8 over McQueen, Terazawa, and Husselbee

  • Prior Art Relied Upon: McQueen (Patent 5,303,581), Terazawa (Patent 5,048,485), and Husselbee (an automotive textbook).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that McQueen disclosed all elements of independent claims 1 and 8, teaching an electronic throttle control apparatus with a powertrain control module (PCM), drive electronics, and logic to test for faults. McQueen's test involved disabling a driver, measuring a default throttle position (A), commanding a full closing voltage to get a second position (B), and comparing them. Husselbee was cited to establish that a person of ordinary skill in the art (POSITA) would have known that a throttle position sensor, like McQueen’s, provides a corresponding voltage output, thereby teaching the "output voltage" limitation in the claims.
    • Motivation to Combine: Petitioner contended that a POSITA would recognize a significant flaw in McQueen’s fault detection method: it would fail to detect a fault if the return spring failed or if the driver failed to turn off correctly. Terazawa, which addresses an analogous throttle control system, was argued to provide the solution by teaching a method to specifically test the functionality of the return spring and the disengagement of the motor (via a clutch, which is analogous to McQueen's driver). A POSITA would combine Terazawa’s superior testing technique with McQueen’s system to create a more robust and safer fault-detection process, which was McQueen’s stated goal.
    • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involved applying a known testing technique from Terazawa to a similar known system in McQueen to achieve the predictable result of improved fault detection.

Ground 2: Obviousness of Claims 11-13 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: This ground challenged method claims 11-13, which Petitioner argued were substantially similar to apparatus claims 1-3 from Ground 1. The key difference noted was that these claims recite determining a "throttle position value" rather than an "output voltage," thus obviating the need for the Husselbee reference. Petitioner mapped the steps of claim 11—disabling the driver, determining a first position, commanding a full closing voltage, determining a second position, comparing them, and engaging a failure mode—to the combined teachings of McQueen and Terazawa.
    • Motivation to Combine: The rationale for combining McQueen and Terazawa was argued to be identical to that presented in Ground 1. A POSITA would modify McQueen's testing method by incorporating the diagnostic steps from Terazawa to improve the system's ability to detect latent faults in the throttle return mechanism, thereby enhancing safety.
    • Expectation of Success: The expectation of success was argued to be high for the same reasons as in Ground 1: applying a known solution to a known problem to achieve a predictable outcome.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 3 (claims 14-15 over McQueen, Terazawa, and Husselbee) which parallels dependent claims from Ground 1, and Ground 4 (claims 6-7, 9-10, and 16-17 over McQueen, Terazawa, Husselbee, and Mauser). Ground 4 added Mauser (a 1999 case study) to provide further motivation for testing safety-critical systems and to teach performing tests at specific times, such as before learning a default value.

4. Arguments Regarding Discretionary Denial

  • Fintiv Factors: Petitioner argued that discretionary denial under Fintiv is unwarranted. It contended that the parallel district court litigation is in its early stages, with no trial date set, and that the median time-to-trial in the district would place a trial in early 2027, long after a Final Written Decision (FWD) would issue. Furthermore, Petitioner stipulated that, if the IPR is instituted, it will not pursue in district court any invalidity ground that was raised or could have been reasonably raised in the IPR.
  • §325(d) Factors: Petitioner argued that denial under 35 U.S.C. §325(d) is inappropriate because the primary prior art references (McQueen, Terazawa, Husselbee, and Mauser) were not considered by the USPTO during the original prosecution of the ’260 patent. Petitioner also noted that while a previous IPR (IPR2020-00451) on the ’260 patent was instituted on similar grounds, it was terminated due to a settlement before an FWD was reached, meaning the Board never made a final determination on the merits.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of Patent 6,588,260 as unpatentable under 35 U.S.C. §103.