DC grant of SJ to Ford vacated and remanded for erroneous claim construction

Ethanol Boosting System, LLC (MIT) v. Ford Motor Company

Docket No. 2021-1949 (https://cafc.uscourts.gov/opinions-orders/21-1949.OPINION.7-18-2022_1979137.pdf) (Non-precedential)


July 18, 2022

Brief Summary:   DC grant of SJ vacated and remanded due faulty claim construction. Summary: EBS appealed DC order granting summary judgment (SJ) of non-infringement of the asserted patents (US 9,708,965; 10,619,580; and 10,781,760) related to fuel management systems to Ford.  That patents related to controlling engine knock by injecting an anti-knock agent (a fuel) directly into a combustion chamber.  Representative claim 1 recites a “fuel management system…comprising:  a first fueling system that uses direct injection; [and] a second fueling system that uses port fuel injection”.  EBS argued the direct injection system did not need construction while “Ford argued that the first fueling system requires “a fuel that contains an anti-knock agent . . . that is different from the fuel used for port injection/in the second fueling system”.  The DC agreed with Ford, reasoning that “the specification . . . makes clear that what is invented is a dual fuel engine”, “the asserted patents’ titles”, and an “embodiment that uses 100% ethanol… in the context of a dual-fuel engine and, thus, “is far different from teaching a single fuel engine.”  Based on this construction, the parties stipulated to the non-infringement judgment.  EBS argued to the FC panel that the DC “erred in construing the first fueling system to be limited to using fuels different than the fuel in the second system because there is no clear disclaimer of a single-fuel invention” and the FC panel agreed.  The FC panel explained that it “depart[s] from the ordinary and customary meaning in only two instances: lexicography and disavowal” (Phillips, FC 2005; GE Lighting, FC 2014), of which “[o]nly disavowel is relevant” here and “requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature’” (GE Lighting).  Ford argued the specification and prosecution history required the DC’s conclusion (e.g., “the specification disavows single-fuel systems because it describes “the invention” as requiring a direct-injection fuel different than a port-injection fuel”) but the FC panel found no such requirements.  The FC panel found the specification statement to be a “background statement [that] merely contemplates using the invention with a gasoline engine” but “does not require using gasoline in either fueling system or disavow systems that use other fuels” as it “would be inconsistent with the 100% ethanol embodiment” (Cont’l Cirs., FC 2019; Regents Univ. Minn., FC 2013; Verizon, FC 2007)).  The FC panel also explained that it “will not read limitations into the claims from the patent title” (Pitney Bowes, FC 1999).  It also explained differences from earlier decisions regarding other EBS patents.  The DC decision was therefore vacated and remanded.  Judge Newman dissented, arguing that the DC correctly concluded Ford’s interpretation is correct in view of the specification (e.g., “the port-injected fuel is different from the directly-injected fuel”).

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