Michigan Motor Technologies LLC

Patent Trials and Appeals Board

Dec 21, 2020

IPR2019-01274 (P.T.A.B. Dec. 21, 2020)

Trials@uspto.gov Paper 47
571-272-7822 Date: December 21, 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.
____________

IPR2019-01274
Patent 6,988,031 B2
____________

Before MITCHELL G. WEATHERLY, BARBARA A. PARVIS, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying Patent Owner’s Corrected Revised Contingent Motion to Amend
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Case Posture
Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition
(Paper 3, “Pet.”) to institute an inter partes review of claims 1–17 (“the
challenged claims”) of U.S. Patent No. 6,988,031 B2 (Ex. 1001, “the
’031 patent”). Michigan Motor Technologies LLC (“Patent Owner”) filed a
Preliminary Response to the Petition (Paper 7, “Prelim. Resp.”; see Paper 5).
We instituted an inter partes review of claims 1–17 of the ’031 patent on all
grounds of unpatentability alleged in the Petition. Paper 13 (“Institution
Decision” or “Dec.”).
After institution, Patent Owner filed a Response. Paper 19
(“PO Resp.”). Petitioner filed a Reply. Paper 26 (“Pet. Reply”). Patent
Owner filed a Contingent Motion to Amend. Paper 20. Petitioner filed an
Opposition to the Contingent Motion to Amend. Paper 27. Patent Owner
filed a Corrected Revised Contingent Motion to Amend, in which Patent
Owner proposed a single substitute claim, namely, proposed substitute
claim 18, to replace original claim 1 of the ’031 patent. Paper 32, 1
(“RMTA”). Petitioner filed an Opposition to the RMTA. Paper 33
(“RMTA Opp.”). Patent Owner filed a Reply to the RMTA Opposition.
Paper 38 (“RMTA Reply”). Petitioner filed a Sur-Reply to the RMTA
Reply. Paper 41 (“RMTA Sur-Reply”). We held a hearing on October 20,
2020, and a transcript of the hearing appears in the record. Paper 46 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R.
§ 42.1(d). This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73.
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For the reasons discussed below, we determine Petitioner has
established by a preponderance of the evidence that claims 1–17 of the
’031 patent are unpatentable. We also determine that Petitioner has
established by a preponderance of the evidence that Patent Owner’s
proposed substitute claim 18 is unpatentable, and, therefore, we deny Patent
Owner’s RMTA.
B. Related Proceeding
The parties identify the following active matter as related to the
’031 patent (Pet. 7; Paper 5, 2):
Michigan Motor Technologies LLC v. Volkswagen Aktiengesellschaft
& Volkswagen Group of America, Inc., No. 2:19-cv-10485 (E.D.
Mich.).
C. The ’031 Patent
The ’031 patent is titled “System and Method for Determining Engine
Stop Position,” and issued on January 17, 2006, from U.S. Application
No. 10/752,996, filed January 7, 2004. Ex. 1001, codes (10), (21), (22),
(45), (54).
The ’031 patent “generally relates to a system and method for tracking
the angular position of an engine’s crankshaft.” Id. at 1:7–9. Figure 1 of the
’031 patent is reproduced below.
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Figure 1 is a diagrammatic view of engine 10
including a system for determining an engine stop position.
Id. at 2:31–33.
Figure 1 shows internal combustion engine 10 having throttle 30
coupled to intake manifold 28, piston 22, and cylinder 20, which couples
with intake manifold 28 and houses piston 22 for reciprocal movement
therein. Id. at 2:49–62. Air entering cylinder 20 from intake manifold 28 is
controlled by throttle 30 and is combined with fuel, injected from fuel
injector 26, to form a gas/air mixture in cylinder 20. Id. at 2:59–62.
Combustion of the gas/air mixture in cylinder 20 causes movement of
piston 22 that results in a rotation of a crankshaft and flywheel 52. Id.
at 2:54–58, 3:6–7. Sensor 54, located proximate to flywheel 52, produces a
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signal as each tooth 50 rotates past sensor 54. Id. at 3:10–11. By counting
the signals, microprocessor 40 in controller 12 keeps track of the engine
position or angle. Id. at 3:14–16. However, according to the ’031 patent,
“known sensors have difficulty identifying engine reversals as the engine
slows to a stop,” and such reversal may cause such sensors to report
erroneous engine positions or angle values. Id. at 1:36–38.
According to the ’031 patent, to remedy the engine reversal issue
during engine shutdown, “throttle [30] is controlled to lower the air
pressure in the intake manifold [28] of the engine [10].” Id. at 1:56–58
(emphasis added). More specifically, “[t]o lower the air pressure, the
throttle is closed and remains closed until the engine is stopped.” Id.
at 1:62–64. By doing so, “[t]he air pressure is lowered such that the
resulting reversal torque caused by compression of air in the cylinders [20]
is smaller than the friction torque of the engine [10] thereby minimizing or
eliminating engine reversal.” Id. at 1:58–62 (emphasis added), 4:50–52
(“[T]he lowering of the air pressure in the intake manifold 28 is instrumental
in preventing engine reversals.”). The ’031 patent also discloses that,
alternatively, “the throttle is closed immediately upon key-off.” Id.
at 2:13–14. After engine 10 has stopped, “throttle [30] is slightly opened
increasing the air pressure in the engine [10] to avoid the drawing of exhaust
fumes back into the intake manifold [28].” Id. at 1:64–66. Also, “the last
engine position is stored in a memory 46 of the controller 12 for use in the
next engine startup.” Id. at 3:35–37.
According to the ’031 patent, “reduced engine reversal provides an
accurate engine position that can be used to optimize engine startup thereby
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reducing hydrocarbon emission, minimizing crank time, and reducing crank
time variability.” Id. at 5:20–23.
D. Illustrative Claim
The ’031 patent includes 17 claims, all of which are challenged.
Claim 1 is the sole independent claim. Claim 1 is illustrative and
reproduced below.
1. A system for determining a stop position of an engine, the
system comprising:
a sensor configured to generate a signal corresponding to the
angle of the engine;
a controller coupled to the sensor and configured to receive
the signal; and
an air flow control device coupled to the engine to control air
intake, the controller being configured to control the air
flow control device to lower air pressure in the engine
based on an engine shutdown signal.
Ex. 1001, 5:32–41.
E. Applied References
Petitioner relies upon the following references:
Miyamoto et al., Japanese Unexamined Patent
Application Publication No. JP2000-257458 (Ex. 1003),
published September 19, 2000. Petitioner filed a certified
translation of JP2000-257458 (Ex. 1004, “Miyamoto”).
References herein to “Miyamoto” are to the certified
translation.
Suda, Japanese Unexamined Patent Application
Publication No. JP11-82076 (Ex. 1006), published March 26,
1999. Petitioner filed a certified translation of JP11-82076 (Ex.
1007, “Suda”). References herein to “Suda” are to the certified
translation.
Garrard et al., U.S. Patent No. 6,253,145 (Ex. 1009,
“Garrard”), issued June 26, 2001.
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Yamada et al., U.S. Patent No. 5,975,051 (Ex. 1011,
“Yamada”), issued November 2, 1999.
Walker, U.S. Patent No. 3,251,352 (Ex. 1012, “Walker”),
issued May 17, 1966.
Pet. 9–10.
F. Asserted Grounds of Unpatentability
We instituted inter partes review of claims 1–17 of the ’031 patent on
the following grounds. Dec. 2–3, 7, 34.
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 4–6, 13, 15, 16 1031 Miyamoto, Suda
2, 3, 14 103 Miyamoto, Suda, Garrard
7–12 103 Miyamoto, Suda, Yamada
17 103 Miyamoto, Suda, Walker
Petitioner relies on the Declarations of Ron Matthews, Ph.D.
Exs. 1002, 1026, 1039. Patent Owner relies on the Declarations of Russell
Leonard, Ph.D. Exs. 2001, 2003.
II. ANALYSIS: ORIGINAL CLAIMS 1–17
A. Applicable Law
Petitioner challenges the patentability of claims 1–17 of the
’031 patent on the grounds that the claims are obvious under 35 U.S.C.
§ 103 in light of various references including: Miyamoto, Suda, Garrard,
Yamada, and Walker. To prevail in its challenges to the patentability of the
claims, Petitioner must establish unpatentability by a preponderance of the

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
’031 patent was filed before March 16, 2013, the effective date of the
relevant amendment, the pre-AIA version of § 103 applies.
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evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
review], the petitioner has the burden from the onset to show with
particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
§ 312(a)(3) (2012) (requiring inter partes review petitions to identify “with
particularity . . . the evidence that supports the grounds for the challenge to
each claim”)). This burden never shifts to Patent Owner. See Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes
review).
A claim is unpatentable under 35 U.S.C. § 103 if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) when of record, objective evidence of
non-obviousness, i.e., secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966). Secondary considerations may include the
following: “commercial success, long felt but unsolved needs, failure of
others, etc.”2 Id. The totality of the evidence submitted may show that the

2 Patent Owner did not present any evidence or arguments directed to
secondary considerations during this proceeding.
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challenged claims would not have been obvious to one of ordinary skill in
the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). When
evaluating a combination of teachings, we must also “determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The Supreme Court has made clear that we apply “an expansive and
flexible approach” to the question of obviousness. Id. at 415. Whether a
patent claiming a combination of prior art elements would have been
obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id. at 417. To reach this conclusion, however, requires more than a mere
showing that the prior art includes separate references covering each
separate limitation in a claim under examination. Unigene Labs., Inc. v.
Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
requires the additional showing that a person of ordinary skill at the time of
the invention would have selected and combined those prior art elements in
the normal course of research and development to yield the claimed
invention. Id. “To satisfy its burden of proving obviousness, a petitioner
cannot employ mere conclusory statements. The petitioner must instead
articulate specific reasoning, based on evidence of record, to support the
legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
829 F.3d 1364, 1380 (Fed. Cir. 2016).
We analyze the challenges presented in the Petition and to the RMTA
(see section III, infra) in accordance with the above-stated principles.
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B. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art, at the time
of the effective filing date of the ’031 patent, “would have had a bachelor’s
degree in mechanical engineering or a related field, plus at least two years of
experience designing or developing internal combustion engines or
components of internal combustion engines.” Pet. 34–35 (citing Ex. 1002
¶ 25). Patent Owner contends that the skilled artisan would have been
“a person with (1) a B.S. in mechanical engineering or a closely related field
with three or more years of experience in either engine systems or engine
control systems or (2) at least a M.S. in mechanical engineering.” PO
Resp. 9–10 (citing Ex. 2003 ¶ 14). We note that Patent Owner’s proposed
level of ordinary skill in the relevant art is slightly higher than Petitioner’s
(“three or more years’ experience” versus “at least two years”). See Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir.
2012) (“[I]t is generally easier to establish obviousness under a higher level
of ordinary skill in the art.”).
Neither party argues that the outcome of this case would differ based
on our adoption of any particular definition of the level of ordinary skill in
the art. Although slight differences exist in the formulation of such skill
level between the parties, we discern no meaningful differences because
none of those differences would affect the outcome of our analysis.
Accordingly, we apply the level of skill set forth in the preceding paragraph,
which also is consistent with the prior art before us. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need for
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testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995) (finding that the Board of Patent Appeals and Interferences did not err
in concluding that the level of ordinary skill in the art was best determined
by the references of record).
C. Claim Construction: Original Claims 1–17
We apply the claim construction standard articulated in Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See Changes to the
Claim Construction Standard for Interpreting Claims in Trial Proceedings
Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358
(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Under Phillips, claim
terms are afforded “their ordinary and customary meaning.” Phillips,
415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term
is the meaning that the term would have to a person of ordinary skill in the
art in question at the time of the invention.” Id. at 1313. “In determining the
meaning of the disputed claim limitation, we look principally to the intrinsic
evidence of record, examining the claim language itself, the written
description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
(citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant
than the intrinsic record in determining ‘the legally operative meaning of
claim language.’” Phillips, 415 F.3d at 1317. Only terms that are in
controversy need to be construed, and only to the extent necessary to resolve
the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
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Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the
context of an inter partes review).
The parties dispute the meaning of five claim limitations in this case,
namely: (1) “engine”; (2) “engine shutdown signal”; (3) “lower air pressure
in the engine based on an engine shutdown signal”; and (4) “air flow control
device” (all as recited in challenged independent claim 1); and (5) “engine
tracking system” as recited in challenged dependent claim 10. We construe
these limitations below seriatim, and further address claim interpretation to
the extent necessary in our unpatentability analysis infra.
1. “engine”
Claim 1 recites “[a] system for determining a stop position of an
engine,” and comprises limitations referring to “the engine.” Ex. 1001,
5:32–41 (emphasis added). Patent Owner contends that “engine” should be
construed to mean “an internal combustion engine having a camshaft and a
crankshaft.” PO Resp. 17 (emphases added).3 Patent Owner argues that the
Specification of the ’031 patent supports its proposed construction because
Figure 1 depicts engine 10 as an internal combustion engine having
crankshaft 48 (not marked in Figure 1) and camshafts 66. PO Resp. 16–17.
Petitioner argues that “Patent Owner attempts to unduly narrow the claim
scope [of ‘engine’] by importing limitations from the specification into the
claims, based solely on attorney argument without any support by Patent

3 Patent Owner relies on “the broadest reasonable interpretation standard” to
proffer constructions for certain claim limitations (see PO Resp. 15–16),
which is the wrong measure in this proceeding. The claim construction
standard as set forth in Phillips applies to petitions filed on or after
November 13, 2018. 37 C.F.R. § 42.100(b) (2019); see also Phillips,
415 F.3d 1303. Petitioner filed its Petition on July 2, 2019. Paper 3.
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Owner’s declarant Dr. Leonard.” Pet. Reply 6–7. Petitioner contends that
“engine” should be construed to have its ordinary and customary meaning,
and as such, includes engines having “any suitable means for controlling
valve timing, which encompasses both camshafts/crankshafts and electronic
actuators.” Pet. Reply 7 (citing Ex. 1026 ¶¶ 27–29). We agree with
Petitioner.
First, as argued by Petitioner (Pet. Reply 7), claim 1 broadly recites
“an engine,” and, notably, not “an internal combustion engine having a
camshaft and a crankshaft.” Indeed, neither independent claim 1 nor any of
dependent claims 2–17 of the ’031 patent recites or otherwise necessitates
that an “engine” be an “internal combustion” engine, let alone one having
both a camshaft and crankshaft. Thus, the claim language itself does not
support Patent Owner’s proffered construction.
Second, claims must be interpreted “‘in view of the specification’
without unnecessarily importing limitations from the specification into the
claims.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003) (citing Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193,
1203–04 (Fed. Cir. 2002)) (emphasis added). Here, the Specification,
referring to Figure 1 of the ’031 patent, states that system 8 “generally
includes an engine 10 and a controller 12,” and “engine 10 is shown as an
internal combustion engine having a throttle 30, a piston 22, and a
cylinder 20.” Ex. 1001, 2:46–50 (emphasis added). The Specification
concludes “[a]s a person skilled in the art will readily appreciate, the above
description is meant as an illustration of implementation of the principles
this invention,” and that “[t]his description is not intended to limit the scope
or application of this invention in that the invention is susceptible to
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modification, variation and change, without departing from [the] spirit of
this invention, as defined in the following claims.” Ex. 1001, 5:24–30. This
written description (1) shows that “engine” is used broadly in the
Specification, and although Figure 1 depicts an “engine” as an “internal
combustion engine,” it is not necessarily so limited; and (2) acknowledges a
distinction between the broader term “engine” and the more narrow term
“internal combustion engine,” yet the patentee chose to define the invention
in claim 1 using only “engine.”
Furthermore, the Specification, referring to Figure 1, describes
engine 10 as including many components in addition to crankshaft 48 and
camshafts 66 (see Ex. 1001, 2:46–3:29), yet Patent Owner selects only the
crankshaft and camshaft to be subsumed within its proposed construction of
“engine,” without citing any supporting evidence that the patentee acted as
its own lexicographer or disavowed claim scope to do so. See Thorner v.
Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)
(To act as its own lexicographer, a patentee must “clearly set forth a
definition of the disputed claim term,” and “‘clearly express an intent’ to
redefine the term.”); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
(holding that an inventor may define specific terms used to describe an
invention, but must do so “with reasonable clarity, deliberateness, and
precision” and, if done, “‘must set out his uncommon definition in some
manner within the patent disclosure’ so as to give one of ordinary skill in the
art notice of the change” in meaning) (quoting Intellicall, Inc. v.
Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)); SciMed Life
Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.
Cir. 2001) (Disavowal requires that “the specification [or prosecution
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history] makes clear that the invention does not include a particular
feature.”).
To the contrary, as argued by Petitioner (Pet. Reply 7), the
Specification expressly discloses that an engine alternatively may use
electronically-actuated valves, rather than camshaft(s), in practicing the
claimed invention. See Ex. 1026 ¶ 28 (“[T]he ’031 patent acknowledges,
and a POSA would have known, that other means were possible (and used)
for controlling valve timing.”); Ex. 1001, 2:3–7 (“Alternatively, if valve
actuation is available (Variable Cam Timing, or Electrically Actuated
Valves) a cylinder’s compression torque can be reduced by altering the valve
timing, (for example: late closing of the intake valve).”), 6:1–2 (Claim 4)
(“The system [for determining a stop position of an engine], wherein the air
flow control device [coupled to the engine to control air intake] is an intake
valve.” (emphasis added)). Thus, the written description of the ’031 patent
does not support Patent Owner’s proffered construction, which we find
improperly imports limitations from the Specification into claim 1.
Although neither party proffers an ordinary and customary meaning
that explains what the term “engine” would have meant to a person of
ordinary skill in the art in question at the time of the invention, to resolve the
controversy before us, we need only decide whether an “engine,” as recited
in claim 1, for example, must be an internal combustion engine having a
camshaft and a crankshaft. See Vivid Techs., 200 F.3d at 803. Based on the
foregoing, we conclude that it does not, and more specifically, conclude that
the scope of “engine” includes engines with camshafts and engines without
camshafts.
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2. “engine shutdown signal”
Claim 1 recites “the controller being configured to control the air flow
control device to lower air pressure in the engine based on an engine
shutdown signal.” Ex. 1001, 5:32–41 (emphasis added). In our Institution
Decision, we construed “engine shutdown signal” to have its ordinary and
customary meaning, which need not refer to a signal requested by an
operator. Dec. 17–18. Patent Owner contends that “engine shutdown
signal” should be construed as “one that is based upon an operator or driver
request, not necessarily just the ignition key-off example,” and alleges the
Board erred by construing “engine shutdown signal” “to encompass an
engine shutdown signal generated in response to anything other than an
operator or driver requested or commanded engine shutdown.” PO
Resp. 17–18 (emphasis added). Petitioner argues “[t]he Board’s Institution
Decision correctly found that an ‘engine shutdown signal’ does not narrowly
require ‘an operator requested’ shutdown signal,” and “Patent Owner’s
construction is unsupported by the claim language or specification, and thus,
should be rejected.” Pet. Reply 4 (emphasis omitted). We agree with
Petitioner.
First, as argued by Petitioner (Pet. Reply 4), claim 1 broadly recites
“an engine shutdown signal,” and, notably, not an “operator requested”
engine shutdown signal. Neither independent claim 1 nor any of dependent
claims 2–17 of the ’031 patent recites or otherwise necessitates that an
“engine shutdown signal” be “operator requested.” Thus, the claim
language itself does not support Patent Owner’s proffered construction.
Second, the Specification, referring to block 81 of Figure 2 of the
’031 patent, expressly states that an “operator requested” signal is only an
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“example” of an “engine shutdown signal.” See, e.g., Ex. 1001, 3:61–64
(“[C]ontroller 12 determines if an engine shutdown signal has been received,
for example, by key switch 62 being moved to its ‘off’ position.” (emphasis
added)); see also Ex. 1026 ¶¶ 22–23. The Specification also repeatedly
refers broadly to an “engine shutdown signal” without clearly setting forth a
definition of this term or clearly expressing any intent to redefine such a
signal to include only operator requested ones. See, e.g., Ex. 1001, 1:53,
1:56–57, 3:61–4:2, 4:24–27.
Nevertheless, Patent Owner argues that block 81 of Figure 2 (and
similarly, block 101 of Figure 3), which recites “Has the operator requested
engine off?”, and references in the Specification to “key switch” or “key-
off” (Ex. 1001, 2:13–16, 3:30–33) show that “it is clearly evident that
‘engine shutdown signal’ is a signal generated in response to an operator
request or command to shut down the engine, for example, an ignition key-
off command.” PO Resp. 18. But Patent Owner’s argument here lacks
supporting evidence that the patentee acted as its own lexicographer or
disavowed claim scope to specifically limit “engine shutdown signal” only
to “operator requested” engine shutdown signals. See Thorner, 669 F.3d at
1365; Paulsen, 30 F.3d at 1480; SciMed, 242 F.3d at 1341. Moreover,
absent a clear intention by the patentee to limit the scope of “engine
shutdown signal” to operator requested signals, we do not read the
exemplary embodiments cited by Patent Owner restrictively. See Cont’l
Circuits LLC v. Intel Corp., 915 F.3d 788, 797 (Fed. Cir. 2019) (“Even when
the specification describes only a single embodiment, the claims of the
patent will not be read restrictively unless the patentee has demonstrated a
clear intention to limit the claim scope using ‘words or expressions of
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manifest exclusion or restriction.’”). The foregoing written description
(1) shows that “engine shutdown signal” is used broadly in the Specification,
and although Figures 2 and 3, for example, use an “operator requested
engine off” as such a signal, the limitation “engine shutdown signal” is not
necessarily so limited; and (2) acknowledges a distinction between the
broader term “engine shutdown signal” and the more narrow term “operator
requested” engine shutdown signal, yet the patentee chose to define the
invention in claim 1 using only “engine shutdown signal.” Thus, the written
description of the ’031 patent does not support Patent Owner’s proffered
construction, which we find improperly imports limitations from the
Specification into claim 1.
Although neither party proffers an ordinary and customary meaning
that explains what the term “engine shutdown signal” would have meant to a
person of ordinary skill in the art in question at the time of the invention, to
resolve the controversy before us, we need only decide whether an “engine
shutdown signal,” as recited in claim 1, for example, must be an “operator
requested” engine shutdown signal. See Vivid Techs., 200 F.3d at 803.
Based on the foregoing, we conclude that it does not, and more specifically,
conclude that the scope of “engine shutdown signal” includes signals to shut
down an engine whether requested or initiated by an operator or not.
3. “lower air pressure in the engine based on an engine
shutdown signal”
Claim 1 recites “the controller being configured to control the air flow
control device to lower air pressure in the engine based on an engine
shutdown signal.” Ex. 1001, 5:32–41 (emphasis added). Patent Owner
contends “‘lower air pressure in the engine based on an engine shutdown
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signal’ should be construed to mean lowering air pressure based on an
engine shutdown signal, without first raising the air pressure.”
PO Resp. 21–22 (emphasis added); but see PO Resp. 2 (Patent Owner
introducing a different construction for this limitation, which we also do not
adopt for the same reasons discussed below). Petitioner argues “the claims
do not require these temporal or sequential limitations specifying when the
air pressure is lowered with respect to the receipt of the shutdown signal.”
Pet. Reply 5–6 (emphasis omitted). We agree with Petitioner.
In our Institution Decision (and as argued by Petitioner (Pet.
Reply 5–6)), we explained that claim 1 broadly recites “to lower air
pressure,” not to “immediately” lower air pressure, based on an engine
shutdown signal. Dec. 20. Neither independent claim 1—a system claim—
nor any of dependent claims 2–17 of the ’031 patent recite or otherwise
necessitate that the function of “lower[ing] air pressure” in an engine must
be done without first raising air pressure in the engine. Thus, the claim
language itself does not support Patent Owner’s proffered construction.
Patent Owner argues that embodiments disclosed in the Specification
lower air pressure based on an engine shutdown signal without first raising
the air pressure, and, therefore, the limitation “lower air pressure” must
mean doing so “without first raising the air pressure.” PO Resp. 19–21
(citing, e.g., Ex. 1001, 1:56–58, 1:59–62, 2:17–22, Figs. 2, 3) (emphasis
omitted). We disagree, and turn first to the claim limitation itself. Although
neither party proffers an ordinary and customary meaning that explains what
the phrase “lower air pressure in the engine based on an engine shutdown
signal” would have meant to a person of ordinary skill in the art in question
at the time of the invention, we find the limitation means simply what it
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says—that is, we find the ordinary and customary meaning of “lower air
pressure in the engine based on an engine shutdown signal” is “lower air
pressure in the engine based on or in response to a signal to shut down the
engine.” See Ex. 1001, 3:66–4:2 (“If an engine shutdown signal has been
received, the sequence flows along line 84 and the air pressure in the intake
manifold 28 is decreased by fully closing the throttle 30 to prevent engine
reversals, as denoted by block 86.”), 1:56–58 (“As the engine controller
receives an engine shutdown signal, the throttle is controlled to lower the air
pressure in the intake manifold of the engine.”).
Contrary to Patent Owner’s argument here, the Specification (and
prosecution history) only compels departure from the plain meaning of this
claim limitation in two instances: lexicography and disavowal. See Thorner,
669 F.3d at 1365. But Patent Owner presents no supporting evidence that
the patentee acted as its own lexicographer or disavowed claim scope to
specifically define “lower air pressure in the engine based on an engine
shutdown signal” only as doing so “without first raising the air pressure.”
See generally PO Resp. 19–22 (emphasis omitted). Indeed, the Specification
is silent (the antithesis of a clear intention) as to the negative limitation of
“without first raising air pressure.” Absent a clear intention by the patentee
to limit the scope of “lower air pressure in the engine based on an engine
shutdown signal” only as doing so “without first raising the air pressure,” we
do not interpret the exemplary embodiments cited by Patent Owner
restrictively. See Cont’l Circuits, 915 F.3d at 797. Thus, the written
description of the ’031 patent does not support Patent Owner’s proffered
construction.
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Patent Owner also argues the Institution Decision “made a claim
construction error in construing ‘lower air pressure in the engine based on an
engine shutdown signal’ to encompass first raising the air pressure before
lowering the air pressure.” PO Resp. 19–20 (emphasis added); see PO
Resp. 11, 21–22. But Patent Owner misunderstands the Institution Decision
in which we explained that claim 1 broadly recites “to lower air pressure,”
not to “immediately” lower air pressure, based on an engine shutdown
signal, as argued by Patent Owner in a patentability context. Dec. 20. We
did not, and do not now, construe the subject limitation itself “to encompass
first raising the air pressure before lowering the air pressure.” Instead, in the
patentability context, we determined that “the use of ‘comprising’ in the
preamble of claim 1 allows the claim to encompass systems including
additional features (such as increasing engine speed before closing a throttle
based on an engine shutdown signal).” Dec. 20 (emphasis added); see
Amgen Inc. v. Amneal Pharm. LLC, 945 F.3d 1368, 1378–79 (Fed. Cir.
2020) (“The term ‘comprising’ is the standard transition term used to make
clear that the claim does not preclude the presence of components or steps
that are in addition to, though not inconsistent with, those recited in the
limitations that follow.”).
Based on the foregoing, we construe “lower air pressure in the engine
based on an engine shutdown signal” to mean “lower air pressure in the
engine based on or in response to a signal to shut down the engine.”
4. “air flow control device . . . to control air intake . . . [and]
to lower air pressure in the engine based on an engine
shutdown signal”
Claim 1 recites “an air flow control device coupled to the engine to
control air intake, the controller being configured to control the air flow
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control device to lower air pressure in the engine based on an engine
shutdown signal.” Ex. 1001, 5:38–41 (emphases added). Petitioner
contends the term “air flow control device” is a means-plus-function term
and should be interpreted under 35 U.S.C. § 112(6), and as such, includes a
“throttle.” Pet. 30–33 (emphasis added). Although Patent Owner did not
construe this limitation in its Response, in its Preliminary Response, Patent
Owner contends this term should be given its plain and ordinary meaning,
and that “a throttle is a straightforward example of an air flow control
device.”4 Prelim. Resp. 18–19 (emphasis added). Both parties agree a
“throttle” (like throttle 30 discussed above) is an “air flow control device,”
as recited in independent claim 1. The Specification of the ’031 patent
supports this understanding of the claim language. See Ex. 1001, 3:20–22
(“The position of the throttle 30 controls the amount of air allowed to flow
through the intake manifold plenum 31 to the intake manifold 28 and into
the cylinder 20.”). Accordingly, we interpret “air flow control device,” as
recited in claim 1, to encompass at least a “throttle.” Because this issue of
claim scope is sufficient to resolve the controversy before us, we need not
further construe this term for purposes of this Decision. See Vivid Techs.,
200 F.3d at 803.

4 Once a trial is instituted, the Board may decline to consider arguments set
forth in a preliminary response unless they are raised in the patent owner
response. See In re NuVasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016)
(explaining that a patent owner waives an issue presented in its preliminary
response if it fails to renew the issue in its response after trial is instituted);
see also Consolidated Trial Practice Guide (“Consolidated Practice Guide”)
at 52 (84 Fed. Reg. 64,280 (Nov. 21, 2019)).
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5. “engine tracking system”
Dependent claim 10 recites “the controller is configured to open the
throttle when the engine tracking system determines the engine is stopped.”
Ex. 1001, 6:18–20 (emphasis added). Petitioner contends the term “engine
tracking system” is a means-plus-function term and should be interpreted
under 35 U.S.C. § 112(6), and as such, includes a “controller and sensor.”
Pet. 33–34. Although Patent Owner did not address construction of this
limitation in its Response, in its Preliminary Response, Patent Owner
contends this term should be given its plain and ordinary meaning, but
notably proffers no such meaning. Prelim. Resp. 21. However, Patent
Owner does submit that “the engine tracking system [determines] that the
engine has fully stopped” (Prelim. Resp. 3; see Ex. 1001, Abstract), and in
the ’031 patent, it is sensor 54 and controller 12 that determine whether the
engine has fully stopped (see, e.g., Ex. 1001, 3:12–16, 3:33–37). The
Specification of the ’031 patent also discloses that “[t]he engine tracking
subsystem is coupled to the engine and determines the angle of the engine by
sensing rotation of the crankshaft” (Ex. 1001, 1:54–56), and explains that
engine angle is determined by microprocessor 40 of controller 12 counting
signals from sensor 54 (see id. at 3:6–16). The Specification of the
’031 patent further discloses that “[w]hen the engine is stopped, the engine
tracking system stores the engine angle for use during engine startup” (id.
at 1:66–2:1), and explains that engine angle is “stored in a memory 46 of the
controller 12 (id. at 3:35–37).
Accordingly, we interpret “engine tracking system,” as recited in
claim 10, to encompass a “controller” and “sensor.” Because this issue of
claim scope is sufficient to resolve the unpatentability issues raised in the
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proceeding, we need not further construe this term for purposes of this
Decision. See Vivid Techs., 200 F.3d at 803.
D. Obviousness of Claims 1, 4–6, 13, 15, and 16 over Miyamoto and
Suda
Petitioner contends claims 1, 4–6, 13, 15, and 16 are unpatentable
under 35 U.S.C. § 103 as obvious over the combination of Miyamoto and
Suda. Pet. 10, 19–30, 35–52. Claim 1 is the only independent claim among
the challenged claims. Ex. 1001, 5:32–6:43. Patent Owner argues that the
combination of Miyamoto and Suda fails to render independent claim 1, and
thus dependent claims 4–6, 13, 15, and 16, unpatentable as obvious.
PO Resp. 1–26. For the reasons expressed below, we determine that
Petitioner has demonstrated by a preponderance of evidence that the
combined teachings of Miyamoto and Suda render claims 1, 4–6, 13, 15,
and 16 unpatentable as obvious.
1. Overview of Miyamoto (Ex. 1004)
Miyamoto generally is directed to “a device for controlling stopping
of an internal combustion engine,” and in particular, to such a device “which
is advantageously used in an internal combustion engine which is
started/stopped by a means other than a driver starting/stopping operation,
such as a hybrid electric vehicle or an automatic idle stop vehicle in
particular,” as shown, for example, in Figure 1, reproduced below. Ex. 1004
¶ 1, codes (54 (title)) and (57 (abstract)), 5:2–17 (claim 1), Fig. 1.
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Figure 1 depicts a schematic diagram of a hybrid vehicle configuration
incorporating the device for controlling stopping of an engine.
Id. at 17:12–15, Fig. 1.
According to Miyamoto, an exemplary embodiment of the device for
controlling stopping of internal combustion engine 1, as shown in Figure 1
above, includes determination means 22, stopping means 23, intake pressure
control means 24, electronic control unit (ECU) 20, crank angle sensor 12,
and throttle valve 11. Id. at 3:11–14, 17:28–18:3. “[W]hen it is determined
by the determination means 22 that a stopping condition other than a driver
operation has been established, an intake pressure of an internal combustion
engine 1 is reduced by the intake pressure control means 24 prior to
stopping of the internal combustion engine 1 by the stopping means 23.” Id.
at 3:14–20 (emphasis added). After engine 1 has been stopped by stopping
means 23, which is informed by “a signal from a crank angle sensor 12,”
“the intake pressure is once again increased by the intake pressure control
means 24.” Id. at 3:20–23, ¶ 19.
More specifically, when a stopping condition has been established,
first “throttle valve 11 is operated to open by the intake pressure control
means 24 to increase the amount of intake air, and the rotation speed of the
engine 1 is increased.” Id. ¶ 21. Then, once the rotation speed has risen to a
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predetermined rotation speed, “the throttle valve 11 is operated in a closure
direction to throttle the intake air amount,” such that “the amount of intake
air in one cycle is reduced and the intake pressure decreases (in other words,
negative pressure increases).” Id. (emphases added). At this time, according
to Miyamoto, “the intake pressure is a strongly negative pressure, so
a change in work in a compression stroke and an expansion stroke of the
engine 1 is lessened, and vibration of the engine 1 produced along with a
fluctuation in rotation is suppressed.” Id. ¶ 22 (emphasis added).
According to Miyamoto, reducing intake pressure by closing the throttle
valve “mak[es] it possible to reduce a shock when an engine is stopped,” and
“mak[es] it possible to prevent a deterioration in start-up performance when
the engine is restarted.” Id. at 3:5–10.
2. Overview of Suda (Ex. 1007)
Suda generally is directed to an “[i]ntake and exhaust valve control
device for [an] internal combustion engine” that “improve[s] start-up
performance of an internal combustion engine.” Ex. 1007, 2:1–6.
According to Suda, fixing intake and exhaust valves in the engine in
an open state for a certain time period during an engine stoppage operation
can improve “start-up performance” and can “prevent [crankshaft] rotation
swing-back, because a compressive reaction force and a cam lifting reaction
force are not exerted.” Id. at 2:8–23 (emphasis added); see id. ¶ 23
(“[I]ntake and exhaust valves are fixed in an open state when operation of
the engine is stopped . . . to reliably prevent rotation swing-back.”). Suda
explains that “by storing a crank angle position at the time of stoppage, then
at the time of start-up, cylinders can therefore be individually controlled
immediately after the start-up and the start-up performance can be
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improved.” Id. at 2:23–27 (emphasis added); see id. ¶ 23 (explaining that a
crank angle position is detected by a crank angle sensor and is stored to
improve start-up performance).
We further discuss below the disclosures of Miyamoto and Suda in
connection with the parties’ arguments.
3. Analysis
The parties dispute (i) whether Miyamoto or Suda constitute
analogous art (see, e.g., PO Resp. 2 (arguing proper classification of
Miyamoto), 3–4 (arguing Miyamoto concerns a different problem), 5,
18–19, 22 (arguing “[p]roper classification of the field of the invention” for
cited references); (ii) whether Miyamoto (or Suda or Miyamoto and Suda)
discloses “the controller being configured to control the air flow control
device to lower air pressure in the engine based on an engine shutdown
signal,” as recited in independent claim 1 (emphasis added) (see, e.g.,
PO Resp. 1–2, 5, 19–22); (iii) whether Miyamoto or Suda “teach away”
“from one another” or from the ’031 patent (see, e.g., PO Resp. 5 (asserting
“teach[] away” in a variety of contexts), 19, 22); and (iv) whether the skilled
artisan at the relevant time would have had a reason with rational
underpinning to combine elements of Miyamoto and Suda to arrive at the
invention of claim 1 (see, e.g., PO Resp. 5 (asserting “no motivation to
combine the references”)). See Pet. 2–6, 19–29, 35–52. We address these
disputes seriatim.
a) Analogous Art
Patent Owner in its Patent Owner Response intermingles assertions
throughout concerning “[p]roper classification of the field of the invention”
(see, e.g., PO Resp. 22), “teach[ing] away” (see, e.g., PO Resp. 22), and the
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“purpose” of prior art systems versus that of the ’031 patent (see, e.g., PO
Resp. 19), without doing so under the framework of or with citation to
relevant case law. Patent Owner does not use the term “analogous art” in its
Response, and it is not clear whether Patent Owner actually is contesting
whether Miyamoto or Suda properly fall within the scope of the “prior art.”
Nevertheless, for sake of completeness, we address below whether
Miyamoto or Suda constitute analogous art.
The scope of the prior art includes all analogous art. See, e.g.,
Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1339
(Fed. Cir. 2005); In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995).
“Two separate tests define the scope of analogous prior art: (1) whether the
art is from the same field of endeavor, regardless of the problem addressed
and, (2) if the reference is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). “A reference is reasonably pertinent if, even though it may
be in a different field from that of the inventor’s endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” In re Clay,
966 F.2d 656, 659 (Fed. Cir. 1992). Whether a reference is analogous art is
an issue of fact. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1378
(Fed. Cir. 2007).
(1) Field of Endeavor
We determine the appropriate field of endeavor “by reference to
explanations of the invention’s subject matter in the patent application,
including the embodiments, function, and structure of the claimed
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invention.” Bigio, 381 F.3d at 1325–26. As to the function of the claimed
invention, the ’031 patent states: “The present invention generally relates to
a system and method for tracking the angular position of an engine’s
crankshaft.” Ex. 1001, 1:7–9 (emphasis added). But the ’031 patent also
discloses that “[v]arious systems for tracking the angle of an engine are
known,” and such “[k]nown systems determine the engine position from a
sensor.” Ex. 1001, 1:11–42. Contrary to Patent Owner’s assertions (PO
Resp. 10, 12), the claimed invention does not function to improve such
sensors or the controllers coupled to them. Instead, the function of the
claimed invention more accurately relates to minimizing or eliminating
unintentional crankshaft movement (namely, engine reversal) during engine
shutdown, and the claimed invention does so by lowering air pressure in the
engine during shutdown. See Ex. 1001, 1:58–62 (lowering air pressure to
“minimiz[e] or eliminat[e] engine reversal”), 2:1–3 (“engine reversal has
been eliminated”), 5:20–23 (“[R]educed engine reversal provides an
accurate engine position that can be used to optimize engine startup.”).
As to the structure of the claimed invention for minimizing or
eliminating unintentional crankshaft movement during engine shutdown, the
’031 patent discloses engine 10, such as an internal combustion engine,
having an air flow control device, such as throttle 30 or valves (e.g., variable
cam timing or, in an engine without a camshaft, electrically actuated valves),
under the control of engine controller 12. Ex. 1001, 1:62–64 (“To lower the
air pressure, the throttle is closed and remains closed until the engine is
stopped.”), 2:3–7, 2:49–50 (“The engine is shown as an internal combustion
engine having a throttle 30, a piston 22, and a cylinder 20.”), 3:24–25 (“The
air flow into the cylinder 20 can also be controlled through cam timing.”),
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5:38–39, 6:1–2 (“[T]he air flow control device is an intake valve.”). The air
flow control device is coupled to engine 10 to control air intake, and
controller 12 is configured to control the air flow control device to lower air
pressure in engine 10 based on an engine shutdown signal. Ex. 1001, 5:38–
41 (Claim 1). That is, the claimed invention controls throttle 30, for
example, to lower air pressure in engine 10, and in turn minimize or
eliminate unintentional crankshaft movement during engine shutdown, by
configuring and using engine controller 12 to do so. Thus, based on the
foregoing, we find the patentee’s claimed invention in the ’031 patent relates
to the field of engine control systems, and more conservatively, to the field
of engine control systems for controlling air flow control devices. See
Ex. 1002 ¶ 80 (Petitioner’s expert characterizing field of invention as
“[engine] systems that control engine valves . . . [to] lower[] air pressure . . .
during engine shutdown.”). To be clear, given our construction of the term
“engine” (see supra, Section II.C.1), such engine control systems include
control systems for engines with camshafts and engines without camshafts.
Miyamoto and Suda not only relate to, but both disclose, engine
control systems for controlling air flow control devices. See Ex. 1002 ¶ 80
(Petitioner’s expert testifying that “[b]oth Miyamoto and Suda are in the
field of engine control systems and describe systems that control engine
valves.”). In particular, Miyamoto discloses “an intake pressure of an
internal combustion engine 1 is reduced by the intake pressure control
means 24 prior to stopping of the internal combustion engine 1 by the
stopping means 23” (Ex. 1004, 3:5–23), and that “[t]he intake pressure
control means 24 controls the intake pressure by controlling the degree of
opening of the throttle valve 11” (id. ¶ 17). Similarly, Suda discloses an
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internal combustion engine system having electronically controlled intake
and exhaust valves controlled to minimize compressive reaction forces in
engine cylinders. Ex. 1007, 2:1–27.
Patent Owner argues “Miyamoto is properly classified under the field
of hybrid electric vehicle control systems,” and “[c]lassification of
Miyamoto under the field of engine control systems, solely, is much too
broad.” PO Resp. 2 (citations and emphasis omitted); see PO Resp. 21–22.
However, Patent Owner’s assertions here are belied by express disclosures
in Miyamoto and the ’031 patent. Indeed, Miyamoto is titled, “Device for
controlling stopping of internal combustion engine,” and its “claim 1” is to
“[a] device for controlling stopping of an internal combustion engine,”
without limiting its application to only hybrid electric vehicles. Ex. 1004,
code (54), 5:2–17 (emphases added).
Based on the foregoing, we find Miyamoto and Suda both are in the
same field of endeavor as the patentee’s claimed invention in the
’031 patent. Also, although we disagree that defining the field of the
claimed invention in the ’031 patent to be engine control systems is “much
too broad,” for purposes of this Decision, we conservatively define such
field to be engine control systems for controlling air flow control devices
(see supra). Regardless, we also find Miyamoto and Suda both are
reasonably pertinent to the particular problem facing the patentee, as
discussed below.
(2) Reasonably Pertinent
The ’031 patent explains that “known sensors have difficulty
identifying engine reversals as the engine slows to a stop,” and “methods to
detect the reversals are complex and can become unreliable in the presence
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of missing teeth on [a] position encoder wheel.” Ex. 1001, 1:36–40
(emphases added). The problem facing the patentee was how to minimize or
eliminate engine reversal during engine shutdown, so as not to confuse
known sensors for tracking the angular position of an engine’s crankshaft.
See Ex. 1001, 1:58–62 (“The air pressure is lowered such that the resulting
reversal torque caused by compression of air in the cylinders is smaller than
the friction torque of the engine thereby minimizing or eliminating engine
reversal.” (emphasis added)), 5:20–23 (“[R]educed engine reversal provides
an accurate engine position that can be used to optimize engine startup.”
(emphasis added)). As noted above, the claimed invention does not purport
to improve such sensors or the controllers coupled to them. The ’031 patent
also explains that “[b]ecause engine reversal has been eliminated [or
minimized], the stored engine angle [from known sensors] remains the
correct engine position for the next startup.” Id., 2:1–3. According to the
’031 patent, “reduced engine reversal provides an accurate engine position
that can be used to optimize engine startup thereby reducing hydrocarbon
emission, minimizing crank time, and reducing crank time variability.” Id.,
5:20–23 (emphasis added). Based on the foregoing, we find that the ’031
patent relates to the problem of minimizing or eliminating unintentional
crankshaft movement (namely, engine reversal) in an engine during engine
shutdown, and that the disclosed purpose of minimizing engine reversal is to
optimize engine startup.
Miyamoto and Suda both relate to the problem of minimizing or
eliminating unintentional crankshaft movement in an engine during engine
shutdown, and to the purpose of optimizing engine startup. See, e.g.,
Ex. 1004 ¶ 22 (Miyamoto disclosing lowering air pressure in an engine so
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that “vibration of the engine 1 produced along with a fluctuation in rotation
[i.e., engine reversal] is suppressed”), 3:5–10 (“[Problem] The present
invention relates to a device for controlling stopping of an internal
combustion engine, said device making it possible to reduce a shock when
an engine is stopped, while also making it possible to prevent a deterioration
in start-up performance when the engine is restarted.” (emphasis added)),
¶ 9 (“[V]ibration when the internal combustion engine is stopped is
suppressed, while a variation in the intake air amount at the time of a restart
is reduced and start-up performance is improved.”), ¶¶ 24–25, 29; Ex. 1007,
2:8–27 (Suda disclosing using electronically controlled intake and exhaust
valves to change pressure within an internal combustion engine cylinder so
that “start-up performance can be improved” and to “prevent rotation swing-
back [i.e., engine reversal]”), ¶ 23 (“reliably prevent rotation swing-back”;
“start-up performance is improved”), ¶ 28; see also Ex. 1002 ¶ 80
(Petitioner’s expert testifying that “Miyamoto and Suda . . . describe
lowering air pressure to reduce unintentional movement of the crankshaft
during engine shutdown, and are directed to the same goal of improving
performance when the engine restarts.”); Ex. 1026 ¶ 38. Based on the
foregoing, we find Miyamoto and Suda both are reasonably pertinent to the
particular problem facing the patentee in the ’031 patent.
Accordingly, we find Miyamoto and Suda both constitute analogous
art in this case.
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b) Disputed Limitation: “the controller being
configured to control the air flow control device to
lower air pressure in the engine based on an engine
shutdown signal”
Patent Owner argues that Miyamoto (or Suda or Miyamoto and Suda)
does not teach or suggest “the controller being configured to control the air
flow control device to lower air pressure in the engine based on an engine
shutdown signal,” as recited in independent claim 1 (emphasis added), and
therefore, “all of Petitioner’s assertions that Claims 1-17 are obvious fail.”
PO Resp. 5; see also PO Resp. 1–2, 19–22. We disagree, and find
Miyamoto teaches this limitation, as discussed below.
Miyamoto discloses:
[T]he determination means 22 is a means for determining
whether a stopping condition of the engine 1 other than a driver
stopping operation (e.g., an operation to turn the ignition key off)
has been established. Establishment of a stopping condition is
adapted to the travel mode selected in accordance with the travel
state, and when there has been a command to stop the engine 1
from the ECU [electronic control unit] 20, the determination
means 22 determines establishment of a stopping condition.
Ex. 1004 ¶ 15 (emphases added). Petitioner argues, inter alia, this
disclosure in Miyamoto teaches an “engine shutdown signal,” as recited in
claim 1. See Pet. 40 (“Miyamoto explains that when a ‘stopping condition’
has been established, the ECU sends a ‘command.’”), 42 (citing Ex. 1002
¶ 122 (“[T]he controller in Miyamoto controls the throttle to lower air
pressure based on an engine shutdown signal.”)). Patent Owner does not
dispute that at least the foregoing disclosure in Miyamoto teaches an “engine
shutdown signal” under our construction for this term (see supra,
Section II.C.2). Instead, Patent Owner argues patentability based on a
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construction of this term that we decline to adopt, namely, that Miyamoto
does not disclose “an operator requested engine shutdown signal.” See
PO Resp. 2, 10, 12, 14, 17–20; Prelim. Resp. 2.
Miyamoto also discloses:
When a stopping condition has been established, the
throttle valve 11 is operated to open by the intake pressure
control means 24 to increase the amount of intake air, and the
rotation speed of the engine 1 is increased (step S110). Once the
rotation speed has risen to a predetermined rotation speed, the
throttle valve 11 is operated in a closure direction to throttle the
intake air amount (step S120). As a result, the amount of intake
air in one cycle is reduced and the intake pressure decreases (in
other words, negative pressure increases).
Ex. 1004 ¶ 21 (emphases added); see also, e.g., id. ¶¶ 9, 17, 22, 3:11–23.
Petitioner argues, inter alia, this disclosure in Miyamoto teaches “lower[ing]
air pressure in the engine,” as recited in claim 1. See Pet. 42 (“[T]he
controller of Miyamoto controls the throttle to lower air pressure.”) (citing
Ex. 1002 ¶ 121); see also Ex. 1002 ¶ 122 (“[T]he controller in Miyamoto
controls the throttle to lower air pressure based on an engine shutdown
signal.”)). Patent Owner does not dispute that at least the foregoing
disclosure in Miyamoto teaches “lower[ing] air pressure” in an engine under
our construction for this term (see supra, Section II.C.3). See Prelim.
Resp. 4 (Patent Owner admitting that in Miyamoto “the throttle is closed to
increase negative pressure [(i.e., lower intake air pressure)] to lessen the
work in a compression and expansion stroke of the engine and the vibration
of the engine” (emphasis omitted)). Instead, Patent Owner argues
patentability based on a construction of this term that we decline to adopt,
namely, that Miyamoto does not disclose to immediately reduce or
immediately lower air pressure in the engine based on an engine shutdown
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signal without first raising air pressure. See PO Resp. 10 (“immediately
lower the air pressure upon shutdown, without first raising the air pressure”);
PO Resp. 2, 12, 20, 22 (“without first raising the air pressure” or “without
first being raised”); see also Prelim. Resp. 3–4, 26–27.
Based on the foregoing, we find that Miyamoto teaches or at least
fairly suggests “the controller being configured to control the air flow
control device to lower air pressure in the engine based on an engine
shutdown signal,” as recited in independent claim 1.
c) Teaching Away
Patent Owner contends that Miyamoto or Suda “teach away” in a
variety of contexts, but without doing so under the framework of or with
citation to relevant case law. See, e.g., PO Resp. 5, 19, 22. We find all of
Patent Owner’s “teaching away” contentions concerning Miyamoto and
Suda unpersuasive, as discussed below.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting Ricoh
Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)).
Moreover, a reference “must [be] considered for all it taught, disclosures that
diverged and taught away from the invention at hand as well as disclosures
that pointed towards and taught the invention at hand.” Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 296 (Fed. Cir. 1985)
(citation omitted). A reference does not teach away “if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
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discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy, 567 F.3d at 1327 (quoting In re Fulton, 391 F.3d 1195, 1201–02
(Fed. Cir. 2004)). But even if a reference is not found to teach away, its
statements regarding preferences are relevant to a finding regarding whether
a skilled artisan would be motivated to combine that reference with another
reference. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15
(Fed. Cir. 2016) (en banc) (noting that, even if a reference “does not teach
away, its statements regarding users preferring other forms of switches are
relevant to a finding regarding whether a skilled artisan would be motivated
to combine the slider toggle in” that reference with the invention of a second
reference).
Patent Owner first contends that “Miyamoto (hybrid electric vehicle
control system) teaches away from Suda (camless engine).” PO Resp. 5; see
id. at 22 (“[T]hese references actually teach away from each other.”). Patent
Owner argues “Miyamoto is directed to hybrid electric vehicle control
systems and makes clear that it is concerned only with engine stopping
operations other than those requested by a driver” (we address this latter
engine stopping argument further below). PO Resp. 22. Patent Owner also
argues “Suda makes clear that it is concerned with literally the opposite of
Miyamoto and directed to a completely different type of engine.”
PO Resp. 24.
Contrary to Patent Owner’s argument, Miyamoto explicitly discloses
application to internal combustion engines, and not solely hybrid electric
vehicles (HEVs) or HEVs that use internal combustion engines. For
example, Miyamoto discloses “a device for controlling stopping of an
internal combustion engine,” and in particular, to such a device “which is
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advantageously used in an internal combustion engine which is
started/stopped by a means other than a driver starting/stopping operation,
such as a hybrid electric vehicle or an automatic idle stop vehicle in
particular.” Ex. 1004 ¶ 1 (emphases added), Fig. 1; see Pet. Reply 12
(“A POSA would have understood that ‘an automatic idle stop vehicle’ may
be (and often is) implemented in a traditional internal combustion engine
without a hybrid power train.” (citing Ex. 1026 ¶ 37)), 13 (“[A]s [Patent
Owner’s expert] acknowledged in his deposition, even Miyamoto’s Title and
Claim 1 refer to an internal combustion engine generally, not to HEVs.”
(citing Ex. 1027, 102:19–103:16, 106:9–17; Ex. 1004, 5:2–4)). Suda
likewise explicitly discloses application to internal combustion engines,
specifically “camless” internal combustion engines that use electronically-
controlled intake and exhaust valves rather than camshafts to operate such
valves. See Ex. 1007, code (54) (“[Title of the Invention] Intake and exhaust
valve control device for internal combustion engine”), code (57), 4:2–5
(“[Claim 1] An intake and exhaust valve control device for an internal
combustion engine comprising electronically-controlled intake and exhaust
valves which are electronically controlled to open/close . . . .”). As noted by
Petitioner, the ’031 patent itself characterizes the claimed invention as
applicable to internal combustion engines with camshafts (like Miyamoto)
and without camshafts (like Suda). See Pet. Reply 15 (citing Ex. 1001,
3:43–47 (“valve timing is a way to either augment or substitute for closing
the throttle 30”)), 19–22; Ex. 1001, 2:3–8 (“[I]f valve actuation is available
(Variable Cam Timing, or Electrically Actuated Valves) a cylinder’s
compression torque can be reduced by altering the valve timing, (for
example: late closing of the intake valve).”). Thus, we are unpersuaded by
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Patent Owner’s argument that the type of engines (internal combustion
engines) disclosed in Miyamoto and Suda teach away from each other.
Importantly, Petitioner relies on Suda (in the combination of
Miyamoto and Suda) for its teachings relating to determining a stop position
of an engine. See Pet. 27–28 (“Miyamoto determines when the crankshaft
stops in order to lower air pressure and prevent unintentional movement of
the crankshaft at shutdown. Suda states that it is advantageous to also
determine where the crankshaft is when the engine stops. Suda states that
this allows the system to better monitor movement of the crankshaft and, in
turn, improve engine start up speed and performance.” (citations omitted)).
Patent Owner does not direct us to (and we do not find) any portion of
Miyamoto that criticizes, discredits, or otherwise discourages investigation
into Suda’s systems and methods for determining a stop position of an
engine. See Pet. Reply 22 (“Miyamoto’s disclosure of a hybrid engine does
not criticize, discredit, or otherwise discourage a skilled artisan from
combining Suda’s technique for determining an engine stop position.”
(citing Ex. 1026 ¶ 56)). Based on the foregoing, we are unpersuaded by
Patent Owner’s argument that “Miyamoto (hybrid electric vehicle control
system) teaches away from Suda (camless engine).”
Second, Patent Owner contends that “Miyamoto (hybrid electric
vehicle control system) teaches away from the ’031 patent (traditional
engine with camshaft and crankshaft).” PO Resp. 5; see PO Resp. 21.
Petitioner argues, and we agree, that “Patent Owner’s critique of Miyamoto
relies on the mischaracterization that Miyamoto is directed solely to HEV
control systems.” Pet. Reply 12 (citing Ex. 1026 ¶¶ 36–37). As discussed
above, Miyamoto discloses “a device for controlling stopping of an internal
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combustion engine,” and in particular, to such a device “which is
advantageously used in an internal combustion engine which is
started/stopped by a means other than a driver starting/stopping operation,
such as a hybrid electric vehicle or an automatic idle stop vehicle in
particular.” Ex. 1004 ¶ 1 (emphases added), Fig. 1; see Pet. Reply 12
(“A POSA would have understood that ‘an automatic idle stop vehicle’ may
be (and often is) implemented in a traditional internal combustion engine
without a hybrid power train.” (citing Ex. 1026 ¶ 37)), 13 (“[A]s [Patent
Owner’s expert] acknowledged in his deposition, even Miyamoto’s Title and
Claim 1 refer to an internal combustion engine generally, not to HEVs.”
(citing Ex. 1027, 102:19–103:16, 106:9–17; Ex. 1004, 5:2–4)).
Thus, contrary to Patent Owner’s contention, Miyamoto explicitly
describes and even claims application to internal combustion engines, which
includes the “traditional engine with camshaft and crankshaft” embodiment
in the ’031 patent (we note under our construction of “engine” as used in
sole independent claim 1 that it includes engines with camshafts and engines
without camshafts (see supra, Section II.C.1)). Regardless, Patent Owner
does not direct us to (and we do not find) any portion of Miyamoto that
criticizes, discredits, or otherwise discourages investigation into the
invention claimed in the ’031 patent. Based on the foregoing, we are
unpersuaded that Miyamoto’s “advantageous[] use[]” (Ex. 1004 ¶ 1) in
hybrid electric vehicles teaches away from the invention claimed in the
’031 patent. Moreover, even if we were to find that Miyamoto and the
’031 patent resolve different problems or serve different intended purposes
as urged by Patent Owner, this alone does not establish that Miyamoto
teaches away from the subject invention as recited in, for example,
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independent claim 1. See Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd.,
357 F.3d 1319, 1339 (Fed. Cir. 2004) (“A finding that two inventions were
designed to resolve different problems . . . is insufficient to demonstrate that
one invention teaches away from another.”).
Third, Patent Owner contends that “Suda (camless engine) teaches
away from the ’031 patent (traditional engine with camshaft and
crankshaft).” PO Resp. 5. Petitioner argues, and we agree, that “Patent
Owner’s critique of Suda relies on the mischaracterization that Suda’s
technique for controlling air pressure [in an engine] is not encompassed by
the ’031 patent.” Pet. Reply 14 (citing Ex. 1026 ¶ 40); see Ex. 1026
¶¶ 41–44. Petitioner also argues, and we agree, that “the ’031 patent
expressly describes that controlling air pressure through the intake/exhaust
valves—Suda’s technique—may be used in complement with or in substitute
of a throttle valve.” Pet. Reply 15 (citing Ex. 1001, 3:43–47 (“valve timing
is a way to either augment or substitute for closing the throttle 30”));
Ex. 1001, 2:3–8 (“[I]f valve actuation is available (Variable Cam Timing, or
Electrically Actuated Valves) a cylinder’s compression torque can be
reduced by altering the valve timing, (for example: late closing of the intake
valve).”). Regardless, Patent Owner does not direct us to (and we do not
find) any portion of Suda that criticizes, discredits, or otherwise discourages
investigation into the invention claimed in the ’031 patent. Based on the
foregoing, we are unpersuaded that Suda’s “camless engine” system teaches
away from the invention claimed in the ’031 patent.
Fourth, Patent Owner contends that “Miyamoto and Suda directly
‘teach away from one another’ because Miyamoto is directed to stopping
operations not intended by a driver and Suda is directed to stopping
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operations intended by a driver.” PO Resp. 5; see PO Resp. 18–19
(“Miyamoto clearly ‘teaches away from’ a system in which the driver
intends to stop the engine.” (emphases omitted)), 26. Petitioner argues, and
we agree, “this distinction between the actuation of shutdown signals is
irrelevant,” because “the challenged claims encompass both operator
requested and non-operator requested shutdown signals.” Pet. Reply 22; see
supra, Section II.C.2 (the scope of “engine shutdown signal” as recited in
sole independent claim 1 includes signals to shut down an engine whether
requested or initiated by an operator or not). Petitioner also argues, and we
agree, Suda’s technique for determining an engine stop position “is agnostic
to the origin of the shutdown signal,” and that the skilled artisan “would
have understood that the engine undergoes the same process of the
crankshaft slowing to a standstill after receiving a shutdown signal, whether
generated automatically by a controller or requested by an operator.” Pet.
Reply 22–23 (citing, e.g., Ex. 1026 ¶¶ 59 (Petitioner’s expert testifying that
“the origin of the signal would not have been pertinent to [the skilled artisan]
in applying the technique disclosed in Suda in Miyamoto’s system,” and
“[the skilled artisan] would have understood that Suda’s crank angle sensor
would not determine the engine stop position any differently whether
implemented in Miyamoto’s or Suda’s engine.”)). Regardless, Patent Owner
does not direct us to (and we do not find) any portion of Miyamoto’s
disclosure of automatically generating a shutdown signal that criticizes,
discredits, or otherwise discourages application of either Suda’s technique
for determining an engine stop position or the invention claimed in the
’031 patent. Based on the foregoing, we are unpersuaded that Miyamoto
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and Suda teach away from one another, or more particularly, that Miyamoto
or Suda teach away from the invention claimed in the ’031 patent.
Accordingly, we find neither Miyamoto nor Suda teaches away from
the invention claimed in the ’031 patent (see Fulton, 391 F.3d at 1201
(“Teaching away” requires a reference to “criticize, discredit, or otherwise
discourage the solution claimed.”)), and to mirror Patent Owner’s variety of
“teaching away” contentions (see PO Resp. 5), we also find, as relevant to
this case: (1) Miyamoto’s engine disclosures do not teach away from Suda’s
engine disclosures; (2) Miyamoto’s engine disclosures do not teach away
from the invention claimed in the ’031 patent; (3) Suda’s engine disclosures
do not teach away from the invention claimed in the ’031 patent; and
(4) Miyamoto and Suda do not teach away from one another.
d) Reason to Combine Miyamoto and Suda
To support the legal conclusion of obviousness, “there must be some
articulated reasoning with some rational underpinning” for combining
elements in the manner claimed. KSR, 550 U.S. at 418 (quoting In re Kahn,
441 F.3d at 988). The test for obviousness is not whether the claimed
invention is expressly suggested in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Burckel,
592 F.2d 1175, 1179 (CCPA 1979) (“[A] reference must be considered not
only for what it expressly teaches, but also for what it fairly suggests.”).
Petitioner contends the skilled artisan would have combined
Miyamoto and Suda to arrive at the invention of claim 1:
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Miyamoto and Suda are in the same field (vehicle engine
technology), describe the same purported problem (inadequate
control over the position of the crankshaft as the engine stops),
address this problem in similar ways (by controlling the amount
of air in the engine), and identify the same purported benefits
(better control over the position of the crankshaft as the engine
stops in order to improve engine restart). Indeed, Suda
specifically discloses the benefits of using its features to
determine a stop position in a system like Miyamoto in order to
further improve control over the crankshaft and make startup
more efficient. Ex. 1007-Suda, ¶0023 (“if the crank angle
position at the time of engine stoppage detected in accordance
with a signal from the crank angle sensor 10 is stored, then at the
time of a restart, it is possible to start fuel injection and ignition
timing control for individual cylinders from the beginning, in
accordance with the crank angle position stored, and the startup
performance is improved”); Ex. 1002-Decl. ¶¶79-82.
A POSITA therefore would have been motivated to
combine the teachings of the two references to improve control
over the crankshaft in order to make engine startup more
efficient.
Pet. 5–6 (footnote omitted); see Pet. 26–30; Ex. 1002 ¶¶ 79–89.
In particular, Petitioner contends “[b]oth [Miyamoto and Suda] are in
the field of engine control systems and describe systems that control engine
valves”; “[b]oth references are directed to lowering air pressure to reduce
unintentional movement of the crankshaft”; and “[b]oth references are
directed to improving performance at engine restart.” Pet. 26–27; see
Ex. 1002 ¶¶ 66–67, 79–82; Ex. 1026 ¶ 48. Petitioner also contends “Suda
specifically describes the benefits of determining an engine stop position in
an engine like the one described in Miyamoto,” arguing on the one hand,
“Miyamoto determines when the crankshaft stops in order to lower air
pressure and prevent unintentional movement of the crankshaft at
shutdown,” and on the other hand, “Suda states that it is advantageous to
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also determine where the crankshaft is when the engine stops.” Pet. 27–28;
see Ex. 1002 ¶¶ 81–83; Ex. 1026 ¶ 49. Petitioner further contends “Suda
states that this allows the system to better monitor movement of the
crankshaft and, in turn, improve engine start up speed and performance,”
and “[c]ombining the teachings of Miyamoto and Suda would have therefore
yielded predictable benefits and results: improved control over the position
of the crankshaft and improved performance when the engine restarts.”
Pet. 28–30; see Ex. 1002 ¶¶ 79–83, 86; Ex. 1026 ¶ 47, 49–51. Other than
unpersuasively arguing “teaching away” (see supra, Section II.D.3.c) and
that neither Miyamoto nor Suda constitutes analogous art (see supra, Section
II.D.3.a), and unpersuasively relying upon claim constructions that we do
not adopt (see supra, Section II.C.1–5), Patent Owner does not address
Petitioner’s obviousness contentions, which are based on claim constructions
that we do adopt (see supra, Section II.C.1–5; Dec. 8–11, 17–21). See
generally PO Resp. 1–6, 10–26. Based on the foregoing, and on the
complete record before us, we are persuaded by Petitioner’s cited evidence
and explanation of the reasons for combining the teachings of Miyamoto and
Suda to arrive at the invention of claim 1.
Furthermore, to the extent that Patent Owner attempts to refute
Petitioner’s obviousness showing based on allegedly different objectives or
purposes of the engine systems of Miyamoto, Suda, and the ’031 patent (see,
e.g., PO Resp. 2–5, 12 (“thrust and purpose” of claimed invention), 19
(“purpose of Miyamoto’s invention”); Prelim. Resp. 1–5), we are not
persuaded. It is sufficient that the skilled artisan would have had a rational
reason to combine Miyamoto and Suda to arrive at the invention of claim 1,
even if the particular purpose of the invention of claim 1 is different from
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that of the references. See In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983)
(citing In re Gershon, 372 F.2d 535, 538–39 (CCPA 1967)); In re Graf, 343
F.2d 774, 777 (CCPA 1965) (“Obviousness is not to be determined on the
basis of purpose alone.”).
Similarly, to the extent that Patent Owner attempts to refute
Petitioner’s obviousness showing on the basis that Suda’s electronically
actuated valves in a camless engine cannot be directly incorporated into
Miyamoto’s HEV control system (see, e.g., PO Resp. 4–5, 24–25), we also
are not persuaded. First, Patent Owner does not direct us to any portion of
the Petition where Petitioner relies upon a bodily incorporation of hardware
from Suda to Miyamoto to establish obviousness. See Pet. Reply 23–24
(“The Petition does not contend that [the skilled artisan] would bodily
incorporate Suda’s electronically-actuated intake/exhaust valves into
Miyamoto’s engine to control air pressure during shutdown. Rather, the
Petition explains that [the skilled artisan] would have combined Suda’s
technique for determining the engine stop position with Miyamoto’s system
to maintain control of crankshaft position and improve startup performance.”
(citations omitted)). Second, “[i]t is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012); see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985)
(en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio
are basically irrelevant, the criterion being not whether the references could
be physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.”); Keller, 642 F.2d
at 425 (“The test for obviousness is not whether the features of a secondary
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reference may be bodily incorporated into the structure of the primary
reference.”).
Patent Owner also mentions “hindsight” in the Response, but without
meaningful analysis. See PO Resp. 26. “Any judgment on obviousness is in
a sense necessarily a reconstruction based upon hindsight reasoning, but so
long as it takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1313–14
(CCPA 1971). Here, Patent Owner does not direct us to any knowledge
gleaned only from applicant’s disclosure that Petitioner allegedly relies upon
to support its obviousness rationale. See PO Resp. 26; see also Pet.
Reply 26 (“Contrary to Patent Owner’s ‘hindsight’ position, Petitioner’s
rationales for combining Miyamoto and Suda are based on facts gleaned
from the prior art, not the ’031 patent.” (citing Pet. 26–29; Ex. 1002
¶¶ 79–89; Ex. 1026 ¶ 64)). Indeed, contrary to Patent Owner’s bare
“hindsight” assertion, Petitioner cites explicit motivation from Suda, for
example, for combining Suda’s technique for determining the engine stop
position with Miyamoto’s system, namely, improving startup performance.
See Pet. Reply 26 (citing Pet. 26–28). Thus, we find Patent Owner’s
“hindsight” assertion unpersuasive.
Accordingly, based on the foregoing and the complete record before
us, we find Petitioner persuasively shows that the skilled artisan would have
had a rational reason to combine Miyamoto and Suda to arrive at the
invention of claim 1.
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e) Undisputed Limitations
Petitioner argues that the combination of Miyamoto and Suda teaches:
“A system for determining a stop position of an engine, the
system comprising:” (Pet. 35–36 (citing, e.g., Ex. 1002 ¶¶ 106–109;
Ex. 1004 ¶ 19, Fig. 1; Ex. 1007 ¶¶ 12, 23);
“a sensor configured to generate a signal corresponding to the
angle of the engine;” (Pet. 36–37 (citing, e.g., Ex. 1002 ¶¶ 110–111;
Ex. 1004 ¶ 19, Fig. 1; Ex. 1007 ¶ 12);
“a controller coupled to the sensor and configured to receive the
signal;” (Pet. 37–38 (citing, e.g., Ex. 1002 ¶¶ 112–113; Ex. 1004
¶¶ 13–15, 19, Fig. 1); and
“an air flow control device coupled to the engine to control air
intake, the controller being configured to control the air flow control
device to lower air pressure in the engine based on an engine
shutdown signal” (Pet. 39–42 (citing, e.g., Ex. 1002 ¶¶ 114–122;
Ex. 1004 ¶¶ 15–18, 21–22, 26, Fig. 1).
Other than unpersuasively arguing that the combination of Miyamoto
and Suda does not teach the limitation “lower air pressure in the engine
based on an engine shutdown signal,” based on claim constructions that we
do not adopt (see supra, Sections II.C.3, II.D.3.b), Patent Owner does not
contend that any other limitations in claim 1 are absent in Miyamoto or
Suda. See PO Resp. 1–6, 10–26. Any such arguments have been waived.
See Paper 14, 7 (“Patent Owner is cautioned that any arguments for
patentability not raised in the response may be deemed waived.”). We have
considered the entirety of the record in light of Petitioner’s contentions in
this ground of unpatentability (Pet. 19–30, 35–42), and we are persuaded by
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Petitioner’s mapping of the foregoing elements of claim 1 to the teachings of
Miyamoto and Suda, and by Petitioner’s arguments supporting reasons to
combine these two references with a reasonable expectation of success.
Accordingly, having reviewed the complete record before us, we
conclude that Petitioner has proven by a preponderance of evidence that the
combined teachings of Miyamoto and Suda render independent claim 1
unpatentable as obvious.
f) Dependent Claims 4–6, 13, 15, and 16
Petitioner contends that dependent claims 4–6, 13, 15, and 16 would
have been obvious in view of the combination of Miyamoto and Suda.
Pet. 42–52. Patent Owner does not challenge Petitioner’s contentions that
the combination of Miyamoto and Suda teaches the additional elements in
dependent claims 4–6, 13, 15, and 16. See PO Resp. 1–6, 10–26. Any such
arguments have been waived. See Paper 14, 7. We have considered the
entirety of the record in light of Petitioner’s contentions in this ground of
unpatentability (Pet. 42–52), and we are persuaded by Petitioner’s
contentions. In particular, we find Petitioner persuasively explains how the
combination of Miyamoto and Suda teaches the additional limitations in
dependent claims 4–6, 13, 15, and 16, as discussed below.
(1) Claim 4
Claim 4 depends from claim 1, and further recites “the air flow
control device is an intake valve.” Ex. 1001, 6:1–2. Suda discloses an
intake valve as an air flow control device used in an engine to “reliably
prevent [crankshaft] rotation swing-back.” Ex. 1007 ¶ 23; see Ex. 1002
¶¶ 123–127. Petitioner argues that Suda discloses claim 4’s additional
limitations, and that the combination of Miyamoto and Suda renders obvious
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claim 4. See Pet. 42–45 (citing, e.g., Ex. 1007 ¶¶ 15, 20–23, Fig. 1,
code (57); Ex. 1002 ¶¶ 123–127).
(2) Claim 5
Claim 5 depends from claim 1, and further recites “the air flow
control device is a throttle flow bypass valve.” Ex. 1001, 6:3–4. Miyamoto
discloses “when the engine 1 is provided with a bypass valve for bypassing
the throttle valve 11, . . . then the amount of intake air per cycle can be
further reduced by operating those valves to close . . . and vibration when the
engine 1 is stopped can be further reduced.” Ex. 1004 ¶ 26; see Ex. 1002
¶¶ 128–129. Petitioner argues that Miyamoto discloses claim 5’s additional
limitations, and that the combination of Miyamoto and Suda renders obvious
claim 5. See Pet. 45 (citing, e.g., Ex. 1004 ¶ 26; Ex. 1002 ¶¶ 128–129).
(3) Claim 6
Claim 6 depends from claim 1, and further recites “the air flow
control device is configured to lower the air pressure such that a resulting
reversal torque is smaller than a friction torque of the engine.” Ex. 1001,
6:5–8. Suda discloses lowering air pressure in an engine such that “the
[engine] stoppage is produced with only a friction force, thereby making it
possible to reliably prevent [crankshaft] rotation swing-back.” Ex. 1007
¶ 23; see Ex. 1002 ¶¶ 130–138. Petitioner argues that Suda discloses
claim 6’s additional limitations, and that the combination of Miyamoto and
Suda renders obvious claim 6. See Pet. 45–48 (citing, e.g., Ex. 1007 ¶ 23;
Ex. 1002 ¶¶ 130–138).
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(4) Claim 13
Claim 13 depends from claim 1, and further recites “the controller is
configured to increase intake manifold pressure after the engine has
stopped.” Ex. 1001, 6:25–27. Miyamoto discloses, after an engine has
stopped, “an operation to open the throttle valve 11 to a predetermined
degree of opening for a predetermined time is performed by the intake
pressure control means 24,” which causes “air at atmospheric pressure to be
introduced into the intake pipe and for the intake pressure to be restored [i.e.,
increased] to atmospheric pressure.” Ex. 1004 ¶ 23; see Ex. 1002 ¶¶ 139–
141. Petitioner argues that Miyamoto discloses claim 13’s additional
limitations, and that the combination of Miyamoto and Suda renders obvious
claim 13. See Pet. 48–49 (citing, e.g., Ex. 1004 ¶¶ 14, 15, 21–23; Ex. 1002
¶¶ 139–141).
(5) Claim 15
Claim 15 depends from claim 1, and recites that the system of claim 1
further comprises “a fuel injection system configured to continue injecting
fuel for a predetermined time after the engine shut down signal and before
the engine has stopped.” Ex. 1001, 6:32–35. Miyamoto discloses that
“when a predetermined time has elapsed” from the point in time of the
engine shutdown signal, “the supply of fuel is stopped.” Ex. 1004 ¶ 22,
Fig. 2; see Ex. 1002 ¶¶ 142–150. Petitioner argues that Miyamoto discloses
claim 15’s additional limitations, and that the combination of Miyamoto and
Suda renders obvious claim 15. See Pet. 49–51 (citing, e.g., Ex. 1004 ¶¶ 16,
21–22, Figs. 2, 4; Ex. 1002 ¶¶ 142–150).
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(6) Claim 16
Claim 16 depends from claim 1, and further recites “the fuel injection
system is configured to stop injecting fuel a predetermined time after the air
flow control device has lowered the manifold pressure.” Ex. 1001, 6:37–40.
As noted above, Miyamoto discloses that “when a predetermined time has
elapsed” from the point in time of the engine shutdown signal, “the supply
of fuel is stopped,” and this point in time also is the time at which the
throttle (i.e., air flow control device) has lowered the intake or manifold
pressure. Ex. 1004 ¶ 22, Fig. 2; see Ex. 1002 ¶¶ 151–160. Petitioner argues
that Miyamoto discloses claim 16’s additional limitations, and that the
combination of Miyamoto and Suda renders obvious claim 16. See
Pet. 51–52 (citing, e.g., Ex. 1004 ¶¶ 18, 22, Fig. 2; Ex. 1002 ¶¶ 151–160).
For the same reasons provided above for independent claim 1, as well
as the foregoing arguments and evidence submitted by Petitioner concerning
dependent claims 4–6, 13, 15, and 16, which we adopt as our own, we
conclude that Petitioner has proven by a preponderance of evidence that the
combined teachings of Miyamoto and Suda render dependent claims 4–6,
13, 15, and 16 unpatentable as obvious.
g) Conclusion
For the reasons expressed above, we conclude that Petitioner has
demonstrated by a preponderance of evidence that the combined teachings
of Miyamoto and Suda render claims 1, 4–6, 13, 15, and 16 unpatentable as
obvious.
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E. Obviousness of Claims 2, 3, and 14 Over Miyamoto, Suda, and
Garrard
Petitioner contends that dependent claims 2, 3, and 14 are
unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Miyamoto, Suda, and Garrard. Pet. 53–61. Petitioner relies upon Garrard in
this combination to teach certain types of sensors as the “sensor” recited in
independent claim 1, and to teach “memory” for storing sensor data. Patent
Owner makes no arguments unique to this ground and thus has waived any
such challenge. See PO Resp. 1–6, 10–26; Paper 14, 7. We have considered
the entirety of the record in light of Petitioner’s contentions in this ground of
unpatentability (Pet. 53–61), and we are persuaded by Petitioner’s
contentions. In particular, we find Petitioner persuasively explains how the
combination of Miyamoto, Suda, and Garrard teaches the additional
limitations in dependent claims 2, 3, and 14, as discussed below.
1. Claim 2
Claim 2 depends from claim 1, and further recites “the sensor is a
variable reluctance sensor.” Ex. 1001, 5:42–43. Garrard discloses a variable
reluctance sensor (“VRS”), as recited in claim 2, and explains that a VRS is
a sensor that “senses the passage of teeth 33 spaced circumferentially around
the periphery of a flywheel 34 on an engine crankshaft 36.” Ex. 1009,
4:17–21; see Ex. 1002 ¶¶ 161–168. Petitioner argues that Garrard discloses
claim 2’s additional limitations, and that the combination of Miyamoto,
Suda, and Garrard renders claim 2 unpatentable as obvious. See Pet. 53–56
(citing, e.g., Ex. 1009, 1:5–6, 2:8–10, 2:23–26, 2:34–37, 3:36–38, 4:13–26,
7:21–24, Fig. 1; Ex. 1002 ¶¶ 161–168).
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2. Claim 3
Claim 3 depends from claim 1, and further recites “the sensor is a Hall
Effect sensor.” Ex. 1001, 5:44–45. Garrard discloses a Hall Effect sensor,
as recited in claim 3, and explains that a Hall Effect sensor is a “non-contact
type of sensor” (meaning that it does not touch the flywheel) and “has the
benefit of producing an output, even as the speed of the crankshaft reaches
zero.” Ex. 1009, 2:19–29; see Ex. 1002 ¶¶ 169–173. Petitioner argues that
Garrard discloses claim 3’s additional limitations, and that the combination
of Miyamoto, Suda, and Garrard renders claim 3 unpatentable as obvious.
See Pet. 56–58 (citing, e.g., Ex. 1009, 1:5–6, 2:15–29, 2:51–54, 7:21–24;
Ex. 1002 ¶¶ 169–173).
3. Claim 14
Claim 14 depends from claim 1, and recites that the system of claim 1
further comprises “a memory, wherein the controller is configured to store
an angular engine stop position in the memory, for use during a subsequent
engine startup.” Ex. 1001, 6:28–31. Garrard discloses that “[o]nce the
engine is stopped, data representative of the engine cycle, and optionally
also the engine angle, are stored in a memory . . . . When the engine is to be
restarted, this data is recalled by the microprocessor 9, which . . . allows the
microprocessor to fire the engine with correct scheduling of fuel and spark
events.” Ex. 1009, 5:7–15, 2:38–42; see Ex. 1002 ¶¶ 174–178. Petitioner
argues that Garrard discloses claim 14’s additional limitations, and that the
combination of Miyamoto, Suda, and Garrard renders claim 14 unpatentable
as obvious. See Pet. 58–61 (citing, e.g., Ex. 1009, 5:4–15, 2:13–14,
2:38–54; Ex. 1002 ¶¶ 174–178).
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For the same reasons provided above for independent claim 1, as well
as the foregoing arguments and evidence submitted by Petitioner concerning
dependent claims 2, 3, and 14, which we adopt as our own, we conclude that
Petitioner has proven by a preponderance of evidence that the combined
teachings of Miyamoto, Suda, and Garrard render dependent claims 2, 3,
and 14 unpatentable as obvious.
F. Obviousness of Claims 7–12 Over Miyamoto, Suda, and Yamada
Petitioner contends that dependent claims 7–12 are unpatentable under
35 U.S.C. § 103 as obvious over the combination of Miyamoto, Suda, and
Yamada. Pet. 61–68. Petitioner relies upon additional reference Yamada in
this combination to teach a motorized throttle as the “air flow control
device” recited in independent claim 1. Patent Owner makes no arguments
unique to this ground and thus has waived any such challenge. See PO
Resp. 1–6, 10–26; Paper 14, 7. We have considered the entirety of the
record in light of Petitioner’s contentions in this ground of unpatentability
(Pet. 61–68), and we are persuaded by Petitioner’s contentions. In
particular, we find Petitioner persuasively explains how the combination of
Miyamoto, Suda, and Yamada teaches the additional limitations in
dependent claims 7–12, as discussed below.
1. Claim 7
Claim 7 depends from claim 1, and further recites “the air flow
control device is a motorized throttle.” Ex. 1001, 6:9–10. Yamada discloses
a “throttle valve 1” powered by a “throttle valve motor 4,” and explains
“[r]otating torque of the throttle valve motor 4 is transmitted to the throttle
valve 1 through the gears 3, whereby the opening of the throttle valve 1 can
be adjusted.” Ex. 1011, 5:41–44; see Ex. 1002 ¶¶ 179–184. Petitioner
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argues that Yamada discloses claim 7’s additional limitations, and that the
combination of Miyamoto, Suda, and Yamada renders claim 7 unpatentable
as obvious. See Pet. 61–63 (citing, e.g., Ex. 1011, 5:40–44, 12:64–67; Ex.
1002 ¶¶ 179–184).
2. Claim 8
Claim 8 depends from claim 7, and further recites “the controller is
configured to fully close the throttle based on the engine shutdown signal.”
Ex. 1001, 6:11–13. Miyamoto discloses that “it is first of all determined by
the determination means 22 whether a stopping condition of the engine 1 . . .
has been established, . . . [a]fter this . . . the throttle valve 11 is also fully
closed, whereby the engine 1 is stopped.” Ex. 1004 ¶¶ 21–22; see Ex. 1002
¶¶ 185–186. Petitioner argues that Miyamoto discloses claim 8’s additional
limitations, and that the combination of Miyamoto, Suda, and Yamada
renders claim 8 unpatentable as obvious. See Pet. 63 (citing, e.g., Ex. 1004
¶¶ 21–22; Ex. 1002 ¶¶ 185–186).
3. Claim 9
Claim 9 depends from claim 8, and further recites “the controller
closes the throttle until the controller determines the engine has stopped.”
Ex. 1001, 6:14–16. As explained above, Miyamoto discloses that “it is first
of all determined by the determination means 22 whether a stopping
condition of the engine 1 . . . has been established, . . . [a]fter this . . . the
throttle valve 11 is also fully closed, whereby the engine 1 is stopped.”
Ex. 1004 ¶¶ 21–22; see Ex. 1002 ¶¶ 187–188. Petitioner argues that
Miyamoto discloses claim 9’s additional limitations, and that the
combination of Miyamoto, Suda, and Yamada renders claim 9 unpatentable
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as obvious. See Pet. 63–64 (citing, e.g., Ex. 1004 ¶¶ 18–19; Ex. 1002
¶¶ 187–188).
4. Claim 10
Claim 10 depends from claim 8, and further recites “the controller is
configured to open the throttle when the engine tracking system determines
the engine is stopped.” Ex. 1001, 6:18–20. Miyamoto discloses that “when
the engine 1 is stopped by a stopping operation of the stopping means 23, the
intake pressure control means 24 performs an operation to open the throttle
valve 11 to a predetermined degree of opening.” Ex. 1004 ¶¶ 18–19;
see Ex. 1002 ¶¶ 189–192. Petitioner argues that Miyamoto discloses
claim 10’s additional limitations, and that the combination of Miyamoto,
Suda, and Yamada renders claim 10 unpatentable as obvious. See
Pet. 64–66 (citing, e.g., Ex. 1004 ¶¶ 14, 18–19, 23, Fig. 1; Ex. 1002
¶¶ 189–192).
5. Claim 11
Claim 11 depends from claim 7, and further recites “the default
throttle position is open.” Ex. 1001, 6:21–22. Yamada discloses “the
throttle valve 1 is opened at a default opening (4°~13°, for example).”
Ex. 1011, 5:55–59; see Ex. 1002 ¶¶ 193–196. Petitioner argues that Yamada
discloses claim 11’s additional limitations, and that the combination of
Miyamoto, Suda, and Yamada renders claim 11 unpatentable as obvious.
See Pet. 66–67 (citing, e.g., Ex. 1011, 5:55–61, 6:17–19; Ex. 1004 ¶¶ 23, 25;
Ex. 1002 ¶¶ 193–196).
6. Claim 12
Claim 12 depends from claim 7, and further recites “the default
throttle position is open between 3 and 8°.” Ex. 1001, 6:23–24. As noted
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above, Yamada discloses “the throttle valve 1 is opened at a default opening
(4°~13°, for example),” which includes open positions “between 3 and 8°.”
Ex. 1011, 5:55–59; see Ex. 1002 ¶¶ 197–199. Petitioner argues that Yamada
discloses claim 12’s additional limitations, and that the combination of
Miyamoto, Suda, and Yamada renders claim 12 unpatentable as obvious.
See Pet. 67–68 (citing, e.g., Ex. 1011, 5:56–59; Ex. 1002 ¶¶ 197–199).
For the same reasons provided above for independent claim 1, as well
as the foregoing arguments and evidence submitted by Petitioner concerning
dependent claims 7–12, which we adopt as our own, we conclude that
Petitioner has proven by a preponderance of evidence that the combined
teachings of Miyamoto, Suda, and Yamada render dependent claims 7–12
unpatentable as obvious.
G. Obviousness of Claim 17 Over Miyamoto, Suda, and Walker
Petitioner contends that dependent claim 17 is unpatentable under
35 U.S.C. § 103 as obvious over Miyamoto, Suda, and Walker. Pet. 68–70.
Petitioner relies upon additional reference Walker in this combination to
teach an engine ignition system that is configured to stop spark ignition after
the engine has stopped. Patent Owner makes no arguments unique to this
ground and thus has waived any such challenge. See PO Resp. 1–6, 10–26;
Paper 14, 7. We have considered the entirety of the record in light of
Petitioner’s contentions in this ground of unpatentability (Pet. 68–70), and
we are persuaded by Petitioner’s contentions. In particular, we find
Petitioner persuasively explains how the combination of Miyamoto, Suda,
and Walker teaches the additional limitations in dependent claim 17, as
discussed below.
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Claim 17 depends from claim 1, and recites that the system of claim 1
further comprises “an ignition system wherein the ignition system is
configured to stop spark ignition after the engine has stopped.” Ex. 1001,
6:41–43. Walker discloses a “parallel circuit operated with a delay to keep
the ignition on after the key switch is turned off until after the engine is
stopped.” Ex. 1012, 1:51–56; see Ex. 1012, 3:29–35; Ex. 1002 ¶¶ 200–204.
Petitioner argues that Walker discloses claim 17’s additional limitations, and
that the combination of Miyamoto, Suda, and Walker renders claim 17
unpatentable as obvious. See Pet. 68–70 (citing, e.g., Ex. 1012, 1:9–10,
1:51–56, 3:16–35; Ex. 1004 ¶¶ 14–16; Ex. 1002 ¶¶ 200–204).
For the same reasons provided above for independent claim 1, as well
as the foregoing arguments and evidence submitted by Petitioner concerning
dependent claim 17, which we adopt as our own, we conclude that Petitioner
has proven by a preponderance of evidence that the combined teachings of
Miyamoto, Suda, and Walker render dependent claim 17 unpatentable as
obvious.
III. REVISED CONTINGENT MOTION TO AMEND
Patent Owner requests that we grant entry of proposed substitute
claim 18, which corresponds to original independent claim 1. RMTA 1–2.
A. Applicable Law
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d). The Board must assess the patentability of proposed
substitute claims “without placing the burden of persuasion on the patent
owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)
(en banc); see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129,
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Paper 15 at 3‒4 (PTAB Feb. 25, 2019) (precedential). Subsequent to the
issuance of Aqua Products, the Federal Circuit issued a decision in Bosch
Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)
(“Bosch”), as well as a follow-up order amending that decision on rehearing.
See Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar.
15, 2018) (Order on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing);
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the proposed substitute claims, the Board focuses
on “arguments and theories raised by the petitioner in its petition or
opposition to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45,
51 (Fed. Cir. 2020). Ultimately, the Board determines whether the proposed
substitute claims are unpatentable by a preponderance of the evidence based
on the entirety of the record, including any opposition made by the
Petitioner. See Lectrosonics, Paper 15 at 4.
Notwithstanding the foregoing, Patent Owner’s proposed substitute
claim 18 must meet the statutory requirements of 35 U.S.C. § 316(d) and the
procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper 15
at 4–8. Accordingly, Patent Owner must demonstrate: (1) the amendment
proposes a reasonable number of substitute claims; (2) the amendment
responds to a ground of unpatentability involved in the trial, (3) the proposed
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claims are supported in the original disclosure (and any earlier filed
disclosure for which the benefit of filing date is sought); and (4) the
amendment does not seek to enlarge the scope of the claims of the patent or
introduce new subject matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121.
B. Proposed Substitute Claim
Proposed substitute claim 18 would replace independent claim 1, and
is reproduced below with underlining indicating text added to claim 1.
18. A system for determining a stop position of an engine
having a crankshaft and a camshaft, the system comprising:
a sensor configured to generate a signal corresponding to
the angle of the engine;
a controller coupled to the sensor and configured to
receive the signal; and
an air flow control device coupled to the engine to control
air intake, the controller being configured to control the air flow
control device to immediately lower air pressure in the engine
based on an operator requested engine shutdown signal by
immediately fully closing the air flow control device in response
to the engine shutdown signal, the controller being further
configured to keep the air flow control device fully closed until
the controller determines that the engine has fully stopped, and
the controller being further configured to record the angle of the
engine when the controller has determined that the engine has
fully stopped for use upon a subsequent engine startup.
RMTA 3.
C. Statutory and Regulatory Requirements
1. Reasonable Number of Claims (35 U.S.C. § 316(d)(1)(B);
37 C.F.R. § 42.121(a)(3))
“There is a rebuttable presumption that a reasonable number of
substitute claims per challenged claim is one (1) substitute claim.”
Lectrosonics, Paper 15 at 4–5 (citing 37 C.F.R. § 42.121(a)(3)). Patent
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Owner proposes one substitute claim for challenged independent claim 1
(see RMTA 1), and thus proposes a reasonable number of substitute claims.
2. Respond to a Ground of Unpatentability (37 C.F.R.
§ 42.121(a)(2)(i))
Patent Owner contends that proposed substitute claim 18 is responsive
to the grounds in this trial because “[n]one of the prior art references relied
upon by Petitioner throughout this proceeding, including those newly-cited
in Petitioner’s Opposition to the Motion to Amend, whether considered
individually or in any combination thereof, meet the [amended] claim
limitations set forth in . . . ‘Substitute Claim 18,’ which is thus patentable
over all prior art relied upon by the Petitioner.” RMTA 4. We agree that
proposed substitute claim 18 adequately asserts additional limitations
relevant to the issues in the instituted grounds. Thus, the proposed claim
satisfies the requirement.
3. Scope of Amended Claims (35 U.S.C. § 316(d)(3);
37 C.F.R. § 42.121(a)(2)(ii))
“A substitute claim will meet the requirements of § 42.121(a)(2)(i)
and (ii) if it narrows the scope of at least one claim of the patent, for
example, the challenged claim it replaces, in a way that is responsive to a
ground of unpatentability involved in the trial.” Lectrosonics, Paper 15
at 6–7. Patent Owner argues proposed substitute claim 18 “simply expressly
recites the limitations that the Board and the Petitioner found lacking in the
challenged claims” (RMTA 4), and concludes that it narrows the scope of
challenged claim 1 (RMTA 1). We note that proposed substitute claim 18
includes additional limitations not recited in challenged claim 1, and does
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not strike any original limitations. We agree with Patent Owner that
proposed substitute claim 18 is of narrower scope than challenged claim 1.
4. New Matter or Written Description (35 U.S.C. § 316(d)(3);
37 C.F.R. § 41.121(b)(1))
An amendment cannot introduce new matter. 35 U.S.C. § 316(d)(3).
Thus, the motion to amend must set forth the support in the original
disclosure of the patent for each claim that is added or amended. 37 C.F.R.
§ 41.121(b)(1); Lectrosonics, Paper 15 at 7.
Under 35 U.S.C. § 112(a), a patent specification shall contain a
“written description” of the invention. The purpose of the written
description requirement is to “‘ensure that the scope of the right to exclude,
as set forth in the claims, does not overreach the scope of the inventor’s
contribution to the field of art as described in the patent specification.’”
Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004)
(quoting Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)).
This requirement protects the quid pro quo between inventors and the
public, whereby the public receives “meaningful disclosure in exchange for
being excluded from practicing the invention for a limited period of time.”
Enzo Biochem, Inc. v. Gen–Probe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002)
(emphasis added).
Patent Owner’s proposed substitute claim 18 amends, inter alia, the
limitation “to lower air pressure in the engine” in challenged claim 1 to
recite “to immediately lower air pressure in the engine,” adding the
limitation “immediately.” RMTA 3. Petitioner contends that Patent Owner
fails to show sufficient written description for this newly added limitation of
“immediately” lowering the air pressure in the engine. RMTA Opp. 1–2.
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This contention raises two intertwined issues: (1) what is the meaning of
“immediately” in “to immediately lower air pressure in the engine” (claim
construction issue); and (2) given that meaning, whether the Specification
contains written description for “immediately” lowering air pressure in the
engine (written description issue). We address these two issues in turn.
a) Claim Construction — Meaning of “immediately”
Petitioner contends that the skilled artisan would understand the term
“immediately” to encompass “alternative meanings,” namely,
“[1] responding instantaneously to a shutdown signal, [2] responding within
a certain amount of time from the shutdown signal, [3] responding without
an intervening step, [4] responding as rapidly as physically possible, or
[5] responding before the occurrence of a particular event after receiving the
shutdown signal.” Ex. 1039 ¶ 42 (emphases added); see RMTA Opp. 3
(citing Ex. 1039 ¶ 42). Patent Owner contends that “immediately” means
“as soon as possible” (RMTA Reply 1–2), which mirrors Petitioner’s
alternative meaning of “[4] responding as rapidly as physically possible.”
Patent Owner also contends, “[a]ccording to the Merriam-Webster
dictionary” (without submitting any evidence of this), the word
“immediately” means (a) “without interval of time,” which mirrors
Petitioner’s alternative meaning of “[1] responding instantaneously to a
shutdown signal” (but during the oral hearing, counsel for Patent Owner
stated to the contrary that in “immediately” lowering air pressure, “there’s
not going to be instantaneousness there” (Tr. 41:21–23 (emphasis added)));
and (b) “as soon as,” which again mirrors Petitioner’s alternative meaning of
“[4] responding as rapidly as physically possible.” RMTA Reply 2, n.1.
Patent Owner contends these dictionary definitions “are consistent with the
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use of this term in the ’031 patent.” RMTA Reply 2, n.1. Although Patent
Owner proffers the above meanings for “immediately” that align with two of
Petitioner’s five alternative meanings, Patent Owner does not direct us to
any evidence, such as expert testimony, negating Petitioner’s three other
alternative meanings.
Based on the foregoing, and for purposes of our analysis herein of
“immediately,” we group the parties’ alternative meanings into two
categories: (A) quantitative meanings, i.e., meanings based on the passage
of time, including above alternative meanings “[1] responding
instantaneously to a shutdown signal”; “[2] responding within a certain
amount of time from the shutdown signal”; and “[4] responding as rapidly as
physically possible”; and (B) qualitative meanings, i.e., meanings based on
relation or adjacency-in-time regardless of the passage of time, including
above alternative meanings “[3] responding without an intervening step;”
and “[5] responding before the occurrence of a particular event after
receiving the shutdown signal.” Turning first to the claim language itself,
see DePuy Spine, 469 F.3d at 1014, we find that “immediately” in “to
immediately lower air pressure in the engine” in proposed substitute
claim 18 permits (and encompasses) both its qualitative and quantitative
meanings. Indeed, Petitioner’s expert testifies that “[i]t would not be clear
to [the skilled artisan] which one of these interpretations of the term
‘immediately’ is intended here [in proposed substitute claim 18]” (Ex. 1039
¶ 42); and Patent Owner does not direct us to (and we do not find) any
aspect of claim 18 that precludes “immediately” from encompassing both its
quantitative and qualitative meanings.
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Turning next to the Specification, the term “immediately” is used only
one time in the ’031 patent, and only concerning the closing of a throttle, not
concerning lowering of air pressure in an engine. See Ex. 1001, 2:13–14
(“In another aspect of the invention, the throttle is closed immediately upon
key-off.”). Although not used in the proper context of lowering air pressure
in an engine, we find this one-time use of “immediately” in the Specification
does not preclude “immediately” in “to immediately lower air pressure in the
engine” from encompassing both its qualitative and quantitative meanings.
Patent Owner argues:
It is apparent from FIGs. 2 and 3 that there is no lag or
intervening step between receiving the engine shutdown signal
and decreasing the air pressure in the intake manifold 28 by fully
closing the throttle 30. Action block 108 in FIG. 3 recites “Wait
0.1 seconds.” If the inventor had intended to convey that there
was any lag between the decision block 101 and the action
block 106, the inventor would have stated such, as he did with
respect to block 108.
RMTA Reply 2 (emphasis altered). We find Patent Owner’s argument here
acknowledges that “immediately” in “to immediately lower air pressure in
the engine” in proposed substitute claim 18 encompasses both its qualitative
meanings (e.g., “no . . . intervening step”) and quantitative meanings (e.g.,
“no lag”). Moreover, contrary to Patent Owner’s argument, Figures 2 and 3,
which depict representative embodiments, are silent as to “immediately”
lowering air pressure in an engine, let alone defining or limiting the meaning
of “immediately.” See Ex. 1001, Figs. 1, 2, 3:66–4:2 (referring to Figure 2:
“If an engine shutdown signal has been received, the sequence flows along
line 84 and the air pressure in the intake manifold 28 is decreased by fully
closing the throttle 30 to prevent engine reversals, as denoted by block 86.”).
Based on the foregoing, we find the Specification does not preclude
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“immediately” in “to immediately lower air pressure in the engine” from
encompassing both the qualitative and quantitative meanings identified
above.
Turning next to the prosecution history, this is of no help in
construing “immediately,” as the term was not in the original claims (now
the challenged claims), which were allowed in a first action. See generally
Ex. 2004.
Accordingly, based on the complete record before us, we find the term
“immediately” in “to immediately lower air pressure in the engine” in
proposed substitute claim 18 encompasses both its qualitative and
quantitative meanings (see supra). We next turn to whether the inventor
sufficiently described “immediately” lowering air pressure in an engine to
indicate that the inventor was in possession of the claimed invention.
b) New Matter — “immediately lower air pressure in
the engine”
To satisfy the “new matter” or written description requirement, the
disclosure must reasonably convey to skilled artisans that the inventor
possessed the claimed invention as of the filing date. See Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
“One does that by such descriptive means as words, structures, figures,
diagrams, formulas, etc., that fully set forth the claimed invention.”
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “The
invention is, for purposes of the ‘written description’ inquiry, whatever is
now claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.
Cir. 1991) (emphasis omitted). Such description need not recite the claimed
invention in haec verba but must do more than merely disclose that which
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would render the claimed invention obvious. Univ. of Rochester, 358 F.3d
at 923; Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566–
67 (Fed. Cir. 1997); see also PowerOasis, Inc. v. T-Mobile USA, Inc.,
522 F.3d 1299, 1306–07 (Fed. Cir. 2008) (explaining that § 112, ¶ 1
“requires that the written description actually or inherently disclose the
claim element”).
As noted above, the invention for which the inventor must provide
written description is whatever is now claimed. Because the ’031 patent
(1) does not recite or otherwise mention “to immediately lower air pressure
in the engine,” (2) does not clearly define or express an intent to redefine the
term “immediately,” and (3) does not describe sufficient objective
boundaries to aid the skilled artisan in understanding the scope of the term
“immediately” for reasons discussed further below, we find that the
disclosure of the ’031 patent would not have reasonably conveyed to skilled
artisans that the inventor possessed the invention of proposed substitute
claim 18 as of the filing date, as further discussed below.
Petitioner argues the ’031 patent “never mentions immediately
lowering air pressure.” RMTA Opp. 2 (citing Ex. 1039 ¶¶ 36–39).
Petitioner notes that Patent Owner’s alleged written description support
states, “the throttle is closed immediately upon key-off” (RMTA Opp. 2
(citing RMTA 22–23 (quoting Ex. 2004 ¶ 9))), and contends that “[b]ecause
there is a lag between throttle movement and intended effect on air pressure,
this does not support immediately lowering air pressure” (RMTA Opp. 2
(citing Ex. 1039 ¶¶ 38–39)). Petitioner’s expert, Dr. Matthews, provides
extensive testimony on lag or time delay between a controller receiving an
engine shutdown signal and an intended effect of lowering air pressure in an
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engine. Ex. 1039 ¶ 38. Patent Owner responds, “negligible lag between
throttle movement and intended effect on air pressure is inconsequential.”
RMTA Reply 1–2. Petitioner argues, and we agree, that “[Patent Owner’s]
rebuttal is based solely on attorney argument without any support by [Patent
Owner’s] own declarant Dr. Leonard.” RMTA Sur-Reply 2 (emphasis
added). In this regard, we credit Dr. Matthews’s testimony. Ex. 1039 ¶ 38.
Petitioner also argues “[Patent Owner] cannot refute that there is a lag
between throttle valve actuation and the intended effect on air pressure,” and
“[Patent Owner’s] arguments do not address the lag between throttle
movement and lowering air pressure, but rather only address the lag between
key-off and activating the throttle movement.” RMTA Sur-Reply 2. Based
on the foregoing and the complete record before us, we are persuaded that
Patent Owner has not satisfied its burden of proving that the ’031 patent
adequately supports the term “immediately” in “to immediately lower air
pressure in the engine” in proposed substitute claim 18.
Accordingly, we find that the term “immediately” in “to immediately
lower air pressure in the engine” in proposed substitute claim 18 introduces
new matter, which runs afoul of the requirements of 35 U.S.C. § 316(d)(3)
and 37 C.F.R. § 42.121(a)(2)(ii). For this reason, we deny Patent Owner’s
Revised Contingent Motion to Amend.
D. Unpatentability of Proposed Substitute Claim 18
Petitioner argues that proposed substitute claim 18 is unpatentable
because it (1) includes limitations that render the claim scope indefinite
(RMTA Opp. 2–4; RMTA Sur-Reply 2–4) and (2) is rendered obvious by
the prior art (RMTA Opp. 4–25; RMTA Sur-Reply 4–12).
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1. Indefiniteness
We evaluate indefiniteness in AIA proceedings of proposed substitute
claims in a motion to amend using the same indefiniteness standard as used
in federal courts and the ITC under Nautilus, Inc. v. Biosig Instruments, Inc.,
572 U.S. 898 (2014) and its progeny. See Simpson Strong-Tie Company Inc.
v. Columbia Ins. Co., PGR2019-00063, Paper 14 at 13–16 (PTAB Mar. 12,
2020) (Institution Decision). Under Nautilus, “[a] patent is invalid for
indefiniteness if its claims, read in light of the patent’s specification and
prosecution history, fail to inform, with reasonable certainty, those skilled in
the art about the scope of the invention.” Nautilus, 572 U.S. at 898–99.
“The definiteness requirement, so understood, mandates clarity, while
recognizing that absolute precision is unattainable.” Id. at 910; see Minerals
Separation v. Hyde, 242 U.S. 261, 270 (1916) (“[T]he certainty which the
law requires in patents is not greater than is reasonable, having regard to
their subject matter.”). Nevertheless, Nautilus mandates that a “patent must
be precise enough to afford clear notice of what is claimed,” so as to avoid a
“zone of uncertainty which enterprise and experimentation may enter only at
the risk of infringement claims.” Nautilus, 572 U.S. at 909–910.
Petitioner argues that the term “immediately” in “to immediately
lower air pressure in the engine” in proposed substitute claim 18 is a term of
degree as it “necessarily calls for a comparison against some baseline.”
RMTA Opp. 2 (quoting Liberty Ammunition, Inc. v. U.S., 835 F.3d 1388,
1395 (Fed. Cir. 2016)). “Terms of degree are problematic if their baseline is
unclear to those of ordinary skill in the art.” Liberty, 835 F.3d at 1395.
Although not “inherently indefinite,” “claims having terms of degree will
fail for indefiniteness unless they ‘provide objective boundaries for those of
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skill in the art’ when read in light of the specification and the prosecution
history.” Id. at 1396. Here, the term “immediately” encompasses certain
meanings that make it a term of degree and other meanings that do not. In
particular, the qualitative meanings of “immediately” do not require a
comparison against some baseline, as these meanings are based on relation
or adjacency-in-time regardless of how much time passes. However, we
agree with Petitioner that the quantitative meanings of “immediately” of
“[1] responding instantaneously to a shutdown signal”; “[2] responding
within a certain amount of time from the shutdown signal”; and
“[4] responding as rapidly as physically possible” do require a quantitative
comparison against a baseline permissible time interval, namely, how much
time may pass before “immediately” is no longer “immediately,” but rather
“non-immediately.” See RMTA Opp. 3–4.
Petitioner argues “neither the substitute claim itself nor the
’031 patent provides a baseline for comparison for ‘immediately’ to inform
[the skilled artisan] about the claim scope with reasonable certainty.”
RMTA Opp. 3 (citing Ex. 1039 ¶¶ 40–43). Petitioner further argues:
[T]he ’031 patent merely discloses “the throttle is closed
immediately upon key-off” without any other context. EX1001,
2:13–14. The ’031 patent does not use “immediately” anywhere
else in the specification, thereby leaving a POSA without a
comparative reference, such as a time range for responding to a
shutdown signal, to ascertain the meaning of “immediately” in
the claim. EX1039, ¶43. And there is no standard in the art
defining “immediately lower air pressure” or “immediately fully
closing the air flow control device.” Id. Without additional
information, a POSA cannot differentiate between a throttle
valve that closes “immediately” and “non-immediately” in
response to a shutdown signal. Id.
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RMTA Opp. 3–4 (emphasis added). We find Petitioner’s argument
persuasive.
Patent Owner argues “[the skilled artisan] would understand that what
is meant by this limitation [‘immediately’] is that air pressure is lowered as
soon as possible as a natural consequence of immediately closing the
throttle, and that negligible lag between throttle movement and intended
effect on air pressure is inconsequential.” RMTA Reply 2. But Patent
Owner does not submit evidence supporting this alleged “understanding” of
the skilled artisan, let alone that the skilled artisan would understand this to
be the sole meaning encompassed by “immediately” as used in proposed
substitute claim 18. Patent Owner also ignores the other qualitative and
quantitative meanings of “immediately” proffered by Petitioner (discussed
above), and in particular, does not direct us to any disclosure in the
’031 patent that provides objective boundaries to the quantitative meanings
encompassed by “immediately,” such as how much time may pass before
“immediately” is no longer “immediately.” See Interval Licensing LLC v.
AOL, Inc., 766 F.3d 1364, 1370–71 (Fed. Cir. 2014) (“Although absolute or
mathematical precision is not required, it is not enough . . . to identify ‘some
standard for measuring the scope of the phrase,’” rather the claims, when
read in light of the specification and the prosecution history, “must provide
objective boundaries for those of skill in the art.”).
Patent Owner also argues that it is “disingenuous” for Petitioner to
contend that there is “no standard in the art defining ‘immediately lower air
pressure’” in an engine (RMTA Opp. 3–4). RMTA Reply 3. But notably,
Patent Owner does not direct us to evidence of such a “standard” definition
of the term “immediately” as used in “to immediately lower air pressure in
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the engine” in proposed substitute claim 18. Patent Owner argues
“Dr. Matthews’s [i.e., Petitioner’s expert’s] use of the term ‘immediately’
and the use of that term in the art are inconsistent with him (or a [skilled
artisan]) not understanding its meaning.” RMTA Reply 3. But Patent
Owner does not direct us to evidence explaining that “meaning.” Contrary
to Patent Owner’s argument, Petitioner’s expert does testify that the skilled
artisan would understand “immediately” to encompass the qualitative and
quantitative meanings discussed above. See Ex. 1039 ¶ 42. But Petitioner’s
expert also testifies that “[i]t would not be clear to a [skilled artisan] which
one of these interpretations of the term ‘immediately’ is intended [in
proposed substitute claim 18].” Ex. 1039 ¶ 42; see Ex. 2005, 28:5–8 (“So
there are a bunch of possibilities for what that term [i.e., ‘immediately’]
might mean and the ’031 patent doesn’t inform me of what it means by
‘immediately.’”), 26:9–11 (“Well, that’s my problem with the term
‘immediately,’ is it could mean a variety of things.”); see Interval Licensing,
766 F.3d at 1371 (interpreting Nautilus, 572 U.S. at 911, n.8, as “indicating
that there is an indefiniteness problem if the claim language might mean
several different things and no informed and confident choice is available
among the contending definitions” (internal quotations omitted)).
Based on the foregoing, we find that the quantitative meanings
encompassed by the term “immediately” in “to immediately lower air
pressure in the engine” in proposed substitute claim 18 render
“immediately” a term of degree, at least in part. We also find that the
’031 patent does not disclose sufficient objective boundaries to aid the
skilled artisan in understanding the scope of the term “immediately” given
such quantitative meanings. Moreover, we agree with Petitioner that the
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term “immediately” in “to immediately lower air pressure in the engine” in
proposed substitute claim 18 introduces a “zone of uncertainty which
enterprise and experimentation may enter only at the risk of infringement
claims,” as cautioned against in Nautilus (572 U.S. at 909–910). See
Ex. 1039 ¶ 43 (Petitioner’s expert testifying that “without additional
information, a [skilled artisan] cannot differentiate between a throttle valve
that closes “immediately” and “non-immediately” in response to a shutdown
signal.”); see also Tr. 55:14–18 (“We don’t know what is non-immediately.
And that is critical, because it instructs a party in terms of infringement,
whether or not this claim is infringed.”). Thus, based on the complete record
before us, we conclude that the term “immediately” in “to immediately
lower air pressure in the engine” in proposed substitute claim 18 fails to
inform, with reasonable certainty, the skilled artisan as to the scope of the
claimed invention, and, therefore, proposed substitute claim 18 is indefinite
and thus unpatentable.
Petitioner also argues the limitation “immediately fully closing the air
flow control device” in proposed substitute claim 18 renders the claim
indefinite. RMTA Opp. 2 (emphasis altered). The parties rely on the same
arguments here as for the limitation “immediately lower air pressure in the
engine,” discussed above. For the same reasons provided in Section
III.C.4.a, supra, we construe the term “immediately” in “immediately fully
closing the air flow control device” in the same manner as in “immediately
lower air pressure in the engine.” We also evaluate indefiniteness based on
the term “immediately” in the same manner and reach the same conclusion
here as we do in the context of “immediately lower air pressure in the
engine.” See supra. Thus, based on the complete record before us, we
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conclude that the term “immediately” in “immediately fully closing the air
flow control device” renders proposed substitute claim 18 indefinite and,
therefore, unpatentable.
Accordingly, we deny Patent Owner’s Revised Contingent Motion to
Amend.
2. Obviousness
Petitioner also contends proposed substitute claim 18 is unpatentable
under 35 U.S.C. § 103 as obvious over the combinations of (1) Iwasaki5 and
Beitler6, (2) Iwasaki, Beitler, Kizaki7, and Garrard8, and (3) Kerns9,
Slopsema10, and Suda11. RMTA Opp. 4–25; RMTA Sur-Reply 4–12.
Although we conclude that the term “immediately” renders proposed
substitute claim 18 indefinite (see supra, Section III.D.1), the indefiniteness
of the term does not impede our ability to analyze the obviousness of
claim 18 over Petitioner’s proffered art combinations in this case, because
(1) as discussed below in Section III.D.2.b, we understand Patent Owner to

5 Iwasaki, U.S. Patent Appln. Pub. No. US 2002/0189595 A1 (Ex. 1023,
“Iwasaki”), published December 19, 2002.
6 Beitler, German Patent Pub. No. DE 10055112 A1 (Ex. 1024, “Beitler”),
published May 8, 2002.
7 Kizaki et al., European Patent Pub. No. EP 0887534 A2 (Ex. 1037,
“Kizaki”), published December 30, 1998.
8 Garrard et al., U.S. Patent No. 6,253,145 B1 (Ex. 1009, “Garrard”), issued
June 26, 2001.
9 Kerns et al., U.S. Patent No. 6,257,194 B1 (Ex. 1028, “Kerns”), issued
July 10, 2001.
10 Slopsema et al., U.S. Patent Appln. Pub. No. US 2002/017903 A1
(Ex. 1025, “Slopsema”), published December 5, 2002.
11 See supra, Section I.E (Suda).
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concede (or at least not dispute with evidence) that Petitioner’s prior art
combinations teach, inter alia, the “immediately” limitation (see, e.g.,
Tr. 26:16–26 (“[I]s Patent Owner of the view that Kizaki teaches the
Element 18.D [the “immediately amendment”]? . . . So Patent Owner
acknowledges that Kizaki teaches Element 18.D. Is that correct? I think
that’s correct, Your Honor. [Patent Owner] wouldn’t contest that Kizaki
says that.”)); and (2) the parties’ obviousness dispute centers not on whether
Petitioner’s prior art combinations teach all required claim limitations, but
rather on whether the skilled artisan would have had a rational reason to
make such prior art combinations, absent hindsight (see Tr. 27:14–16 (“The
issue is the motivation to combine, and would someone of ordinary skill in
the art really come up with this invention at the time.”)).
a) Hindsight
For the reasons discussed below, we determine that Petitioner has met
its burden of showing that a person of ordinary skill in the art would have
combined the teachings of Petitioner’s proffered art combinations to arrive
at proposed substitute claim 18. See, e.g., RMTA Opp. 7–8, 14–16, 18–21;
RMTA Sur-Reply 4–12. Patent Owner contends that Petitioner relies on
impermissible hindsight to select and argue obviousness over the
combinations of (1) Iwasaki and Beitler, (2) Iwasaki, Beitler, Kizaki, and
Garrard, and (3) Kerns, Slopsema, and Suda. RMTA Reply 1, 3–12. In
particular, Patent Owner contends that the skilled artisan “would not have
found” certain applied references, namely Beitler, Kizaki, Kerns, and
Slopsema, “in the normal course of research and development,” because
such references are not directed to solving the problem of “determining
engine stop angle.” RMTA Reply 5 (emphasis omitted). Patent Owner also
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contends that Petitioner “used the disclosure and claims of the ’031 [patent]
as a blueprint or roadmap to combine teachings from unrelated prior art
references to reconstruct the claimed invention.” RMTA Reply 4. In other
words, Patent Owner argues that Beitler, Kizaki, Kerns, and Slopsema
constitute non-analogous art, and regardless, Petitioner derived its rationale
for its combinations of teachings from the art based on knowledge gleaned
only from the ’031 patent’s disclosure. We find Patent Owner’s arguments
unpersuasive.
(1) Analogous Art
The scope of the prior art includes all analogous art, which includes
art from the same field of the inventor’s endeavor, regardless of the problem
addressed, and art reasonably pertinent to the particular problem with which
the inventor was involved, even if not within the field of the inventor’s
endeavor. See supra, Section II.D.3.a; Princeton, 411 F.3d at 1339; Bigio,
381 F.3d at 1325. As explained above (see supra, Section II.D.3.a.(1)),
we find the patentee’s claimed invention in the ’031 patent relates to the
field of engine control systems, and more conservatively, to the field of
engine control systems for controlling air flow control devices. Also as
explained above (see supra, Section II.D.3.a.(2)), we find the patentee’s
claimed invention relates to the problem of minimizing or eliminating
unintentional crankshaft movement (namely, engine reversal) in an engine
during engine shutdown, and that the disclosed purpose of minimizing
engine reversal is to optimize engine startup.
Petitioner argues:
All applied references—Iwasaki, Beitler, Kizaki, Garrard,
Kerns, Slopsema, and Suda—relate to internal combustion
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engine control systems that execute shutdown procedures to
control or track crankshaft movement. EX1039, ¶¶63, 94, 108.
And all applied references stem from established automobile
manufacturers—DaimlerChrysler, Ford, General Motors,
Nissan, and Toyota. Thus, contrary to [Patent Owner’s] notion,
these references would be readily applicable to a [skilled artisan]
tasked at the time of the alleged invention in the normal course
of research and development.
While Beitler, Kizaki, Slopsema, and Kerns are not
explicitly directed to tracking the engine stop position, each of
these references are directed to the purpose of reducing
unintentional crankshaft movement during shutdown. EX1039,
¶¶ 63–73, 94–102, 108–15. This purpose—reducing
unintentional crankshaft movement—relates directly with the
problem of “minimizing or eliminating engine reversal” in the
’031 patent. EX1001, 1:56–62. Thus, each of the references is
also analogous to the ’031 patent.
RMTA Sur-Reply 5; see, e.g., RMTA Opp. 7 (“Iwasaki and Beitler are from
the same field—control systems for internal combustion engines. . . . And
both recognize the problem of unintentional crankshaft movement during
engine shutdown.” (citing, e.g., Ex. 1039 ¶¶ 62–63)), 14–16 (“Iwasaki,
Beitler, Kizaki, and Garrard are from the same field—control systems for an
internal combustion engine. . . . Kizaki executes engine shutdown
procedures and recognizes the problem of unintentional crankshaft
movement during engine shutdown. . . . Garrard[] [relates to] detecting an
engine stop position during shutdown.” (citing, e.g., Ex. 1039 ¶¶ 93–95,
100)), 18 (“Kerns, Slopsema, and Suda are from the same field—control
systems for internal combustion engines. . . .” (citing, e.g., Ex. 1039
¶¶ 107–108)). Petitioner’s expert, Dr. Matthews, offers substantial expert
testimony that the skilled artisan would have considered these references
analogous art (i.e., to be from the same field of the inventor’s endeavor, or
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reasonably pertinent to the particular problem at hand). See Ex. 1039
¶¶ 63–73, 94–102, 108–115; ICON Health & Fitness, 496 F.3d at 1378
(“Whether a reference is analogous art is an issue of fact.”). Notably, Patent
Owner offers no evidence to rebut Dr. Matthews’s testimony in this regard.
See generally RMTA; RMTA Reply.
Based on the foregoing, and on the complete record before us,
including the unrebutted testimony of Petitioner’s expert cited above, we are
persuaded that Petitioner has sufficiently shown that its applied references,
Iwasaki, Beitler, Kizaki, Garrard, Kerns, Slopsema, and Suda, constitute
analogous art relative to the ’031 patent.
(2) Reason to Combine
Patent Owner argues Petitioner derived its rationale for its art
combinations based on knowledge gleaned only from the ’031 patent’s
disclosure. See RMTA Reply 5 (“The only motivation for Petitioner to find
and select these secondary references was to reconstruct the claimed
invention using Substitute Claim 18 as a blueprint or roadmap to do so.”).
It is improper to base a conclusion of obviousness upon facts gleaned
only through hindsight. “To draw on hindsight knowledge of the patented
invention, when the prior art does not contain or suggest that knowledge, is
to use the invention as a template for its own reconstruction—an illogical
and inappropriate process by which to determine patentability.” Sensonics,
Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L.
Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)).
“Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
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claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure, such a reconstruction is proper.” McLaughlin,
443 F.2d at 1313–14.
In this case, Petitioner argues, and we agree, that “[its] rationales for
combining the [applied] references are based on facts gleaned from the prior
art, not the ’031 patent,” as discussed below. RMTA Sur-Reply 6.
(a) Iwasaki and Beitler
Patent Owner contends that the skilled artisan would not have
combined the teachings of Iwasaki and Beitler because “[n]either Iwasaki
nor Beitler is directed to determining engine stop angle.” RMTA Reply 6–7.
Petitioner argues “the motivation for combining Beitler-Iwasaki does not
have to be for the same purpose as the ’031 patent.” RMTA Sur-Reply 7
(citing In re Conrad, 759 F. App’x 982, 985 (Fed. Cir. 2019); see KSR, 550
U.S. at 420 (“[A]ny need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” (alteration in original));
Kahn, 441 F.3d at 989 (“[T]he skilled artisan need not be motivated to
combine [a prior art reference] for the same reason contemplated by the
[inventor]”). Petitioner contends that “Beitler expressly provides a
motivation—eliminating engine reversal and reducing engine vibration—for
combining its technique for closing the throttle valve immediately with
Iwasaki’s system,” and that the skilled artisan “would have combined
Beitler’s throttle control technique with Iwasaki to calculate the air mass
quantity more accurately.” RMTA Sur-Reply 7 (citing Ex. 1039 ¶¶ 70, 85).
Petitioner’s expert, Dr. Matthews, offers detailed analysis of Iwasaki
and Beitler and reasons that the skilled artisan would possess knowledge and
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motivation to combine the pertinent teachings thereof. See Ex. 1039 ¶¶ 62–
73, 85. Patent Owner offers no evidence to rebut Dr. Matthews’s testimony
in this regard, and we credit that testimony. See generally RMTA; RMTA
Reply.
Based on the foregoing, and on the complete record before us,
including the unrebutted testimony of Petitioner’s expert cited above, we are
persuaded that Petitioner shows sufficient rational reasons to combine
Iwasaki and Beitler to arrive at the invention of proposed substitute
claim 18.
(b) Iwasaki, Beitler, Kizaki, and Garrard
Patent Owner contends that the skilled artisan would not have
combined the teachings of Iwasaki, Beitler, Kizaki, and Garrard, because
combining Kizaki’s immediate closure of a throttle valve with Iwasaki-
Beitler would “frustrate a basic operating principle of Beitler (i.e., to wait
5–15 seconds until the engine has reached a ‘standstill’) in favor of ‘quickly
stopping’ the engine, as taught by Kizaki.” RMTA Reply 8–9.
Petitioner argues that Patent Owner’s contention here “relies on the
mischaracterization that the purpose of Beitler is to stop engine rotation
slowly.” RMTA Sur-Reply 7. Petitioner argues “[t]he purpose of Beitler’s
throttle valve technique is to eliminate unintentional crankshaft movement as
the engine reaches a standstill,” and “[t]o eliminate engine reversal, Beitler
keeps the throttle valve closed for a period of time during which the engine
reaches a standstill.” RMTA Sur-Reply 7–8 (citing Ex. 1024 ¶ 6; Ex. 1039
¶¶ 28–30, 69, 87). Petitioner argues “Beitler is devoid of any disclosure
discouraging a controller from ceasing engine rotation quickly.” RMTA
Sur-Reply 8. Petitioner contends that the skilled artisan “would have been
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motivated to combine Beitler-Kizaki with Iwasaki to reduce engine
vibration,” and although not disputed by Patent Owner, that “Garrard
expressly provides motivation—improving startup performance—for
combining its technique for using the engine stop position upon subsequent
startup with Iwasaki’s system.” RMTA Sur-Reply 8 (citing, e.g., Ex. 1039
¶¶ 94–99, 101).
Petitioner’s expert, Dr. Matthews, offers detailed analysis of Iwasaki,
Beitler, Kizaki, and Garrard and reasons that the skilled artisan would
possess knowledge and motivation to combine the pertinent teachings
thereof. See Ex. 1039 ¶¶ 28–30, 62–73, 85, 87, 94–102. Patent Owner
offers no evidence to rebut Dr. Matthews’s testimony in this regard, and we
credit that testimony. See generally RMTA; RMTA Reply.
Based on the foregoing, and on the complete record before us,
including the unrebutted testimony of Petitioner’s expert cited above, we are
persuaded that Petitioner shows sufficient rational reasons to combine
Iwasaki, Beitler, Kizaki, and Garrard to arrive at the invention of proposed
substitute claim 18.
(c) Kerns, Slopsema, and Suda
Patent Owner contends that the skilled artisan would not have
combined the teachings of Kerns, Slopsema, and Suda, because neither
Kerns nor Slopsema is “directed to solving the problem of accurate
determination of engine stop angle.” RMTA Reply 9.
Petitioner argues “the motivation for combining Kerns with Slopsema
does not have to be for the same purpose as the ’031 patent.” RMTA Sur-
Reply 7 (citing Conrad, 759 F. App’x at 985). Petitioner contends that
“Slopsema expressly provides a motivation—eliminating engine shudder
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during shutdown—for combining its technique for keeping the throttle valve
closed until engine speed reaches zero with Kerns’s system,” and that the
skilled artisan “would have recognized that combining Slopsema’s throttle
control technique with Kerns’s system would allow Kerns’s controller to
cease engine rotation quickly during shutdown.” RMTA Sur-Reply 7–9
(citing Ex. 1039 ¶ 111).
Patent Owner also contends that the skilled artisan would not have
combined Suda with Kerns and Slopsema, because Suda is directed to “a
camless engine.” RMTA Reply 11. Petitioner argues “[t]his argument is
irrelevant to [Petitioner’s] rationales for combining Suda with Kerns-
Slopsema,” as Petitioner “does not contend that [the skilled artisan] would
bodily incorporate Suda’s intake/exhaust valves into Kerns’s engine to
control air pressure.” RMTA Sur-Reply 9; see Mouttet, 686 F.3d at 1332
(“It is well-established that a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements.”). Rather, Petitioner argues that the skilled artisan
“would have combined Suda’s technique for determining the engine stop
position with Kerns’s system to improve startup performance.” RMTA Sur-
Reply 9 (citing, e.g., Ex. 1039 ¶¶ 113–115).
Petitioner’s expert, Dr. Matthews, offers detailed analysis of Kerns,
Slopsema, and Suda and reasons that the skilled artisan would possess
knowledge and motivation to combine the pertinent teachings thereof. See
Ex. 1039 ¶¶ 108–115. Patent Owner offers no evidence to rebut
Dr. Matthews’s testimony in this regard, and we credit that testimony. See
generally RMTA; RMTA Reply.
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Based on the foregoing, and on the complete record before us,
including the unrebutted testimony of Petitioner’s expert cited above, we are
persuaded that Petitioner shows sufficient rational reasons to combine
Kerns, Slopsema, and Suda to arrive at the invention of proposed substitute
claim 18.
b) Disputed Limitations
Petitioner argues that each of the prior art combinations of (1) Iwasaki
and Beitler, (2) Iwasaki, Beitler, Kizaki, and Garrard, and (3) Kerns,
Slopsema, and Suda teach or at least fairly suggest every limitation in
proposed substitute claim 18. RMTA Opp. 4–25; RMTA Sur-Reply 4–12.
Petitioner’s expert, Dr. Matthews, offers detailed analysis of these prior art
combinations of references, maps the elements of proposed substitute
claim 18 to teachings of each prior art combination, and testifies that the
skilled artisan would have had a reasonable expectation of success in making
each such prior art combination. See Ex. 1039 ¶¶ 44–131. Patent Owner
offers no evidence to rebut Dr. Matthews’s testimony in this regard, and we
credit that testimony. See generally RMTA; RMTA Reply. Having
considered the entirety of the record, including the unrebutted testimony of
Petitioner’s expert cited above, we are persuaded by Petitioner’s mapping of
the elements of proposed substitute claim 18 to teachings of each of the
foregoing prior art combinations, and determine that Petitioner has met its
burden of showing that each such prior art combination teaches or at least
fairly suggests every limitation in proposed substitute claim 18.
Moreover, we understand Patent Owner to concede (or at least not
dispute with evidence) that, but for any reason to combine elements already
present in the prior art, Petitioner’s prior art combinations, namely each of
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(1) Iwasaki and Beitler, (2) Iwasaki, Beitler, Kizaki, and Garrard, and
(3) Kerns, Slopsema, and Suda, teach all of the limitations of proposed
substitute claim 18. During the oral hearing, Patent Owner’s counsel stated:
“We do think this is a clear case of hindsight reconstruction.” Tr. 25:14–15;
see RMTA Reply 4 (“In short, [Petitioner] used the disclosure and claims of
the ’031 [patent] as a blueprint or roadmap to combine teachings from
unrelated prior art references to reconstruct the claimed invention.”). Patent
Owner’s counsel also stated, “The real problem we have is not that the
collection of references as a whole fails to disclose this or that element of
these claims.” Tr. 27:1–2. “I don’t think [Patent Owner is] contesting the
fact that [Petitioner] did find them [i.e., the claim limitations of proposed
substitute claim 18] at some level here.” Tr. 27:5–6. Patent Owner’s
counsel further stated: “Are all of the elements there somewhere in the art?
Now we’d agree with that. The issue is the motivation to combine, and
would someone of ordinary skill in the art really come up with this invention
at the time?” Tr. 27:14–16 (emphasis added).
Although Patent Owner previously argued in its RMTA Reply that
Petitioner’s “improper combination” of references does not meet certain
limitations of proposed substitute claim 18 (RMTA Reply 7–12), Patent
Owner offers no evidence (e.g., expert testimony) to support such attorney-
arguments (see generally RMTA; RMTA Reply). To the contrary, as noted
above, Petitioner’s expert, Dr. Matthews, offers detailed analysis showing
how each of Petitioner’s prior art combinations, namely (1) Iwasaki and
Beitler, (2) Iwasaki, Beitler, Kizaki, and Garrard, and (3) Kerns, Slopsema,
and Suda, teach or at least fairly suggest every limitation in proposed
substitute claim 18. See, e.g., Ex. 1039 ¶¶ 74–92, 103–106, 116–131.
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Nevertheless, for sake of completeness, we address below Patent Owner’s
arguments that certain elements in proposed substitute claim 18 are allegedly
missing from Petitioner’s prior art combinations.
First, Patent Owner contends that Beitler fails to disclose
“immediately fully closing the throttle valve,” because Beitler does not
mention the term “immediately.” RMTA Reply 7. But, as argued by
Petitioner, “[a] reference need not satisfy an ipsissimis verbis test” to
sufficiently disclose a claim element. In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009). Petitioner argues that “[w]hile Beitler does not explicitly
disclose immediately closing the throttle valve, Beitler’s system operates in
the same manner as the ’031 patent, moving the throttle valve to the closed
position after receiving a shutdown signal without any intervening step.”
RMTA Sur-Reply 9–10 (citing Ex. 1039 ¶ 84) (emphasis added). Therefore,
Petitioner submits that the skilled artisan “would have understood that
Beitler’s throttle valve technique is closed immediately at least to the same
extent as the ’031 patent.” RMTA Sur-Reply 9–10 (citing Ex. 1039 ¶ 84)
(emphasis altered); see RMTA Opp. 10–11 (“[I]f supported by the
’031 patent, Beitler discloses ‘immediately’ lowering air pressure by
‘immediately’ fully closing the air flow control device at least to the same
extent as the ’031 patent.”).
Second, Patent Owner contends that “Beitler’s systems’ controller
doesn’t determine that the engine is fully stopped - it closes the throttle valve
for a predetermined period of time (e.g., 5-15 seconds).” RMTA Reply 7.
But, as argued by Petitioner, proposed substitute claim 18 does not specify
or limit “how” the controller “determines that the engine has fully stopped.”
RMTA Sur-Reply 10. Petitioner’s expert, Dr. Matthews, testifies that the
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skilled artisan “would have understood that Beitler’s controller determines
that the engine has fully stopped by waiting an adequate amount of time
after initiating the shutdown protocol so that the engine reaches a standstill
before releasing the throttle.” Ex. 1039 ¶ 87. Dr. Matthews also testifies
that “[s]ince Iwasaki’s ECU 29 determines when the engine has stopped and
Beitler keeps the throttle valve closed until the engine reaches a standstill,
[the skilled artisan] would have been motivated to keep Iwasaki’s throttle
valve 4 closed until at least determining when the engine has stopped based
on the crank angle sensor signal to eliminate engine reversal.” Ex. 1039
¶ 88.
Third, Patent Owner contends that the skilled artisan “would not have
been motivated to discard Beitler’s teachings of waiting 5-15 seconds until
the engine has presumably reached a ‘standstill’ – this is central to Beitler’s
invention – in favor of Iwasaki’s teaching of determining when the engine is
stopped.” RMTA Reply 8; see RMTA Reply 9 (“[I]t would frustrate a basic
operating principle of Beitler (i.e., to wait 5-15 seconds until the engine has
reached a ‘standstill’) in favor of ‘quickly stopping’ the engine, as taught by
Kizaki.”). But, as argued by Petitioner, Beitler discloses keeping the throttle
valve fully closed for a period of time as an option, not as a necessity (see
Ex. 1024 ¶ 6), which also is reflected in Beitler’s claims 1 and 3, for
example, because claim 1 does not require waiting 5–15 seconds, whereas
dependent claim 3 introduces this waiting period (see Ex. 1024, 6:67–75,
6:85–7:2). Petitioner also argues the combination of Iwasaki and Beitler
teaches the limitation of “the controller determines that the engine has fully
stopped” even if Iwasaki’s ECU keeps the throttle valve closed for a period
of time beyond when the crankshaft sensor indicates engine stoppage,
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because “[proposed] substitute claim 18 does not require that the controller
release the throttle when determining that the engine has stopped.” RMTA
Sur-Reply 11 (emphasis altered).
Fourth, Patent Owner contends that the combination of Kerns,
Slopsema, and Suda does not disclose “the controller being [further]
configured to keep the air flow control device fully closed until the
controller determines that the engine [has] fully stopped.” RMTA Reply
10–11 (emphasis omitted). But contrary to Patent Owner’s unsupported
attorney argument here, Petitioner’s expert, Dr. Matthews, testifies:
(1) “Suda’s control unit 11 ‘determine[s] whether the engine has completely
stopped.’”; (2) “At the same time, Slopsema discloses keeping the throttle
valve fully closed until the engine speed reaches zero to reduce engine
shuddering.”; and (3) “Given that Suda’s control unit determines when the
engine has stopped and Slopsema keeps the throttle valve closed until the
engine reaches a speed of zero, [the skilled artisan] would have understood
and been motivated to keep Kerns’s throttle closed until at least determining
when the engine has stopped ‘such that engine shudder is minimized during
an engine shutdown.’” Ex. 1039 ¶ 127 (alteration in original); see Ex. 1039
¶¶ 111–115.
Based on the foregoing, and on the complete record before us,
including the unrebutted testimony of Petitioner’s expert cited above, we are
persuaded that Petitioner has sufficiently shown that each of the prior art
combinations of (1) Iwasaki and Beitler, (2) Iwasaki, Beitler, Kizaki, and
Garrard, and (3) Kerns, Slopsema, and Suda teach or at least fairly suggest
every limitation in proposed substitute claim 18.
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c) Conclusion
For the reasons expressed above, we conclude that Petitioner has
demonstrated by a preponderance of evidence that the combined teachings
of each of (1) Iwasaki and Beitler, (2) Iwasaki, Beitler, Kizaki, and Garrard,
and (3) Kerns, Slopsema, and Suda render proposed substitute claim 18
unpatentable as obvious.
Accordingly, we also deny Patent Owner’s Revised Contingent
Motion to Amend on the basis that proposed substitute claim 18 is
unpatentable under 35 U.S.C. § 103.
E. Summary
For the reasons stated above, we deny Patent Owner’s Revised
Contingent Motion to Amend.
IV. CONCLUSION12
Claims
35
U.S.C. § References
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 4–6, 13,
15, 16 103 Miyamoto, Suda
1, 4–6, 13, 15,
16
2, 3, 14 103 Miyamoto, Suda, Garrard 2, 3, 14

12 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
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Claims
35
U.S.C. § References
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
7–12 103 Miyamoto, Suda, Yamada 7–12
17 103 Miyamoto, Suda, Walker 17
Overall Outcome 1–17

Revised Motion to Amend Outcome Claims
Original Claims Cancelled by Amendment
Substitute Claims Proposed in the Amendment 18
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 18
Substitute Claims: Not Reached

V. ORDER
Upon consideration of the record, it is:
ORDERED that claims 1–17 of U.S. Patent No. 6,988,031 B2 are
unpatentable;
FURTHER ORDERED that Patent Owner’s Corrected Revised
Contingent Motion to Amend is denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:
Michael Specht
Jason Fitzsimmons
Daniel Yonan
John Higgins
STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
mspecht-ptab@sternekessler.com
jfitzsimmons-ptab@sternekessler.com
dyonan-ptab@sternekessler.com
jhiggins-ptab@sternekessler.com

For PATENT OWNER:
Timothy Devlin
DEVLIN LAW FIRM LLC
td-ptab@devlinlawfirm.com