Michigan Motor Technologies LLC

Patent Trials and Appeals Board

Jun 2, 2020

IPR2020-00161 (P.T.A.B. Jun. 2, 2020)

Trials@uspto.gov Paper 8
571-272-7822 Date: June 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VOLKSWAGEN GROUP OF AMERICA, INC.,
Petitioner,

v.

MICHIGAN MOTOR TECHNOLOGIES LLC,
Patent Owner.
____________

IPR2020-00161
Patent 6,347,680 B1
____________

Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
SEAN P. O’HANLON, Administrative Patent Judges.

O’HANLON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
A. Background
Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition for
inter partes review of claims 1–18 (“the challenged claims”) of U.S. Patent
No. 6,347,680 B1 (Ex. 1001, “the ’680 patent”). Paper 2 (“Pet.”), 1. On the
same day that Petitioner filed the Petition in this proceeding, Petitioner also
filed a petition in IPR2020-00169 (“the ’169 IPR”) challenging claims 1–18
of the ’680 patent. Volkswagen Grp. of Am. v. Mich. Motor Techs. LLC,
IPR2020-00169, Paper 2 at 1. Michigan Motor Technologies LLC (“Patent
Owner”) filed a Preliminary Response. Paper 7.
We have authority, acting on the designation of the Director, to
determine whether to institute an inter partes review under 35 U.S.C. § 314
and 37 C.F.R. § 42.4(a). For the reasons that follow, we exercise our
delegated discretion to deny institution of inter partes review. See 35 U.S.C.
§ 314(a) (2018); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018)
(explaining that Ҥ 314(a) invests the Director with discretion on the
question whether to institute review”); Cuozzo Speed Techs., LLC v. Lee,
136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is
a matter committed to the Patent Office’s discretion.”).
B. Real Parties-in-Interest
The statute governing inter partes review proceedings sets forth
certain requirements for a petition, including that “the petition identif[y] all
real parties in interest.” 35 U.S.C. § 312(a)(2); see also 37 C.F.R.
§ 42.8(b)(1) (2019) (requiring identification of real parties-in-interest in
mandatory notices). The Petition identifies Volkswagen Group of America,
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Inc. and its parent company, Volkswagen Aktiengesellschaft, as real parties-
in-interest. Pet. 3. Patent Owner identifies itself as the only real party-in-
interest. Paper 5, 2.
C. Related Matters
The parties indicate that the ’680 patent is the subject of the following
district court proceeding:
Michigan Motor Technologies LLC v. Volkswagen AG,
No. 2:19-cv-10485 (E.D. Mich. filed Feb. 18, 2019).
Pet. 3; Paper 5, 2. We note that the ’680 patent was also the subject of the
following district court proceeding:
Michigan Motor Technologies LLC v. Hyundai Motor
Company, No. 2:17-cv-12901 (E.D. Mich. filed Sept. 1, 2017).
As noted above, the ’680 patent is the subject of a petition for inter partes
review filed by Petitioner in IPR2020-00169.
D. The Challenged Patent
The ’680 patent discloses a powertrain controller for drive by wire
vehicles—vehicles in which the position of the accelerator pedal is detected
without mechanically connecting the accelerator pedal to the throttle valve.
Ex. 1001, 1:4–6; see also Ex. 1009, 1:21–25 (describing drive by wire
systems as being “of the type that the depressed position of an accelerator
pedal (the amount of operation of the accelerator pedal) is detected without
mechanically connecting the accelerator pedal to a throttle valve, a target
drive shaft torque is determined from the position thus detected, and the
throttle valve is driven by a motor so as to obtain such a target drive shaft
torque”). The ’680 patent acknowledges that known drive by wire control
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systems choose between multiple powertrain output requests to regulate
engine output, but purports to improve upon such known control systems by
considering also limitations imposed by other vehicle subsystems. Ex. 1001,
1:7–35. Figure 2 shows a block diagram of an exemplary control system
process and is reproduced below:

Figure 2 is a block diagram of a controller process for a vehicle having an
internal combustion engine. Id. at 2:28–29. In block 100, a driver
demanded engine acceleration value is generated in known manner, such as
by determining the position of the acceleration pedal. Id. at 3:52–54. This
value is converted into a desired engine speed value at block 102. Id. at
3:57–59. The desired engine speed value is compared to a desired engine
idle speed, and the larger value is selected as the target engine speed value at
block 106. Id. at 3:59–67. If a speed control system is active, a desired
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speed control system value is generated (block 108), converted into a desired
engine speed (block 110), and compared to the driver demanded target speed
value to choose the greater value as the engine speed request value
(block 112). Id. at 4:4–13. The ’680 patent refers to this comparison and
selection as “arbitrating.” See, e.g., id. at 4:7–10, 7:37–39.
The resulting engine speed request value is compared to the vehicle
speed limit value, the engine speed limit value, and, optionally, the
transmission speed limit value to choose the least of these values as the
desired engine speed value, thereby constraining the engine speed request
value (block 116). Ex. 1001, 4:14–26. The ’680 patent refers to this
comparison and selection as “limiting” the request value. See, e.g., id. at
4:14–26, 7:40–43. The engine speed controller uses the desired engine
speed value to control the engine speed (block 122). Id. at 4:27–33. The
engine speed controller may also consider other system constraints, such as
torque restraints to prevent wheel slip, to limit further the engine output. Id.
at 4:33–46.
In other embodiments, the desired engine response can be based on
engine speed rather than engine acceleration (see, e.g., Ex. 1001, 4:42–46),
and the number of criteria considered in the arbitrating and limiting steps
can be varied (see, e.g., id. at 6:39–56).
E. The Challenged Claims
Petitioner challenges claims 1–18 of the ’680 patent. Pet. 1, 6.
Claims 1, 8, 13, and 17 are independent. Claim 1 is illustrative of the
challenged claims and is reproduced below:
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1. An engine output control method for a vehicle having a
drive by wire engine system responsive to a desired engine
speed signal, the method comprising the steps of:
generating a driver demanded engine speed value
corresponding to an operator input;
generating a speed control system engine speed value
corresponding to a predetermined speed value to permit vehicle
operation at a constant speed by a speed control system;
arbitrating between said driver demanded engine speed
value and said speed control system engine speed value to
derive a first desired engine speed value;
limiting said first desired engine speed value by a vehicle
speed limit value, engine speed limit value, and transmission
speed limit value to generate a second desired engine speed
value; and
controlling said engine output as a function of said
second desired engine speed value and an actual engine speed
value.
Ex. 1001, 7:28–46. Independent claims 8, 13, and 17 contain similar
recitations as claim 1, with the main differences being whether the claim is
directed to a desired engine speed or engine acceleration and the number of
criteria used for the arbitrating and limiting steps. These differences are
summarized in the table presented below:
Claim Directed to Speed or Acceleration
Number of
Arbitrating Criteria
Number of
Limiting Criteria
1 Speed 2 3
8 Speed 3 2
13 Acceleration 2 4
17 Acceleration 4 2
F. Asserted Grounds of Unpatentability
The Petition relies on the following prior art references:
Name Reference Exhibit
Heslop US 5,961,566, issued Oct. 5, 1999 1005
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Name Reference Exhibit
Youngblood US 4,472,777, issued Sept. 18, 1984 1006
Letang US 6,067,489, issued May 23, 2000 1007
Rees US 5,265,693, issued Nov. 30, 1993 1008
Bellinger US 6,021,370, issued Feb. 1, 2000 1010
Jones EP 0 323 070 A2, published July 5, 1989 1011
Petitioner asserts the following grounds of unpatentability:
Claim(s) Challenged 35 U.S.C. § References
1, 4, 6–8 103(a)1 Heslop, Youngblood, Letang
2, 3, 9, 10 103(a) Heslop, Youngblood, Letang,
Rees
5, 12 103(a) Heslop, Youngblood, Letang,
Bellinger
13–18 103(a) Heslop, Youngblood, Letang,
Bellinger, Rees
11 103(a) Heslop, Youngblood, Letang,
Jones
Pet. 6. Petitioner submits a declaration of Mark Ehsani, Ph.D. (Ex. 1003) in
support of its contentions.
II. DISCRETIONARY DENIAL
Under § 314(a), we have discretion to deny institution of an inter
partes review. Cuozzo, 136 S. Ct. at 2140; SAS, 138 S. Ct. at 1356;
Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)

1 The application resulting in the ’680 patent was filed prior to the date when
the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), took effect. Thus, we refer to the pre-AIA version of
section 103.
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(“[T]he PTO is permitted, but never compelled, to institute an IPR
proceeding.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial
on behalf of the Director.”).
In deciding whether to institute an inter partes review, we consider
the guidance in the Consolidated Trial Practice Guide, which states
Based on the Board’s prior experience, one petition
should be sufficient to challenge the claims of a patent in most
situations. Two or more petitions filed against the same patent
at or about the same time . . . may place a substantial and
unnecessary burden on the Board and the patent owner and
could raise fairness, timing, and efficiency concerns.
Consolidated Trial Practice Guide (“CTPG”) 59 (Nov. 2019).2 However,
more than one petition may be necessary, for example, “when the patent
owner has asserted a large number of claims in litigation or when there is a
dispute about priority date requiring arguments under multiple prior art
references.” Id.
The Consolidated Trial Practice Guide explains that although “there
may be circumstances in which more than one petition may be necessary,
. . . this should be rare.” CTPG 59. The Consolidated Trial Practice Guide
instructs petitioners that file multiple petitions challenging the same patent
to submit (1) a ranking of the petitions in the order that the petitioner wishes
the Board to consider the merits, and (2) a succinct explanation of the
differences between the petitions, why the issues addressed by the
differences are material, and why the Board should exercise its discretion to
institute an additional petition(s). Id. at 59–60. Pursuant to this guidance,
Petitioner filed, in each proceeding challenging the ’680 patent, a notice

2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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explaining the differences between the petitions and ranking the petitions in
the order that Petitioner wishes the Board to consider the merits. Paper 3
(“Notice”). Patent Owner did not file a response to the Notice in either
proceeding.
In the Notice, Petitioner requests that we first consider the petition in
the ’169 IPR. Notice 1. For the reasons provided in our concurrent decision
on institution in the ’169 IPR, we conclude that Petitioner establishes a
reasonable likelihood of prevailing in showing that at least one of the
challenged claims of the ’680 patent is unpatentable, and, thus, we institute
on all the challenged claims in that case. Therefore, all of the claims
challenged in this proceeding are subject to inter partes review in the
’169 IPR.
Here, Petitioner contends, all of the factors set forth in General
Plastic favor institution of two petitions. Notice 2–5 (citing Gen. Plastic
Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 5
(PTAB Sept. 6, 2017) (designated precedential in part)).3 Petitioner argues
that a second petition is necessary because “the relatively lengthy claims are
compounded by convoluted claim language . . . requiring [Petitioner] to
expend significant effort—and valuable space—distilling these simple
concepts” and “[Petitioner]’s refusal to identify the claims it will ultimately
proceed with in the related district court proceeding.” Id. at 4. Petitioner
argues that “a single petition including grounds based on the two primary
references is not feasible here.” Id.

3 Although Petitioner cites to page 5, we note that the factors are identified
on page 16 of General Plastic.
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Petitioner has not sufficiently shown that institution of two petitions is
warranted in accordance with the Consolidated Trial Practice Guide. In its
explanation of the differences in the petitions, Petitioner identifies the
different references it uses in each petition but does not explain why the use
of different references is material. Indeed, Petitioner confirms that it filed
the instant Petition to challenge the claims under two bases. See Notice 4
(“a single petition including grounds based on the two primary references is
not feasible here”). However, Petitioner does not sufficiently clarify why
these differences warrant two proceedings in accordance with the
Consolidated Trial Practice Guide. A petition that presents alternative
arguments directed to the same claims is not sufficient to show, in
accordance with the Consolidated Trial Practice Guide, that the differences
between the petitions warrant institution of both proceedings.
Nor does Petitioner explain sufficiently how the claims are so
“lengthy” and “compounded by convoluted claim language” so as to warrant
institution of multiple petitions in accordance with the Consolidated Trial
Practice Guide. See Notice 4. We note that Petitioner is able to explain such
“convoluted” language in a concise manner. The only claim recitation
Petitioner explicitly asserts to be convoluted is the “generating a speed
control system engine speed value corresponding to a predetermined speed
value to permit vehicle operation at a constant speed by a speed control
system” recitation of claim 1. Pet. 26. Petitioner addresses this recitation as
follows: “This convoluted element recites a simple step: ‘generating’ an
engine speed value that ‘corresponds’ to the cruise control vehicle speed
setting.” Id. Moreover, in each petition Petitioner maps this recitation to the
cited references in a single paragraph spanning less than one page. See id.;
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’169 IPR, Paper 2 at 28. Such ease in interpreting alleged “convoluted”
claim language undercuts Petitioner’s assertion of the claims’ complexity
and belies Petitioner’s assertion of its need to use “significant effort” and
“valuable [Petition] space” to address the recitation. See Notice 4.
In summary, per Petitioner’s request, we first considered Petitioner’s
arguments and Patent Owner’s preliminary responses in IPR2020-00169.
As set forth in the decision on institution in that case, we instituted, on all
grounds set forth in that petition, inter partes review of claims 1–18 of the
’680 patent. We subsequently reviewed the parties’ submissions in this
proceeding. Petitioner does not show in accordance with the Consolidated
Trial Practice Guide that the Petition addressed here contains sufficiently
material differences to support instituting inter partes review of the ’680
patent in this proceeding. Accordingly, in accordance with the Consolidated
Trial Practice Guide, we exercise our discretion under 35 U.S.C. § 314(a) to
deny institution of review.
III. CONCLUSION
For the reasons provided above, considering all the circumstances in
this case, and in accordance with the Consolidated Trial Practice Guide, we
exercise our delegated discretion under § 314(a) and deny institution.
IV. ORDER
In consideration of the foregoing, it is hereby ordered that the Petition
is denied.
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For PETITIONER:
Michael D. Specht
Jason A. Fitzsimmons
Danny E. Yonan
Trevor M. O’Neill
Sterne, Kessler, Goldstein & Fox P.L.L.C.
mspecht-PTAB@sternekessler.com
jfitzsimmons-PTAB@sternekessler.com
dyonan-PTAB@sternekessler.com
toneill-PTAB@sternekessler.com
PTAB@sternekessler.com
For PATENT OWNER:
Timothy Devlin
Devlin Law Firm LLC
TD-PTAB@devlinlawfirm.com
tdevlin@devlinlawfirm.com
mmcclain@devlinlawfirm.com
fxu@devlinlawfirm.com