ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY

Authored by: Jeremy J. Gustrowsky

The Federal Circuit recently affirmed three Patent Trial and Appeal Board (PTAB) decisions that found several engine-related patents owned by the Massachusetts Institute of Technology (MIT) and exclusively licensed to Ethanol Boosting Systems, LLC (EBS) to be unpatentable as obvious. The patents in question—U.S. Patent Nos. 10,619,580, 10,791,760, and 9,708,965—describe advanced fuel management systems for internal combustion engines aimed at reducing engine knock and improving efficiency by using both direct and port fuel injection, along with a three-way catalyst to reduce emissions.

The case revolved around whether the PTAB properly instituted inter partes review (IPR) proceedings and whether it correctly interpreted key claim terms, particularly those relating to the type of fuel used in the patented systems. EBS argued that the PTAB lacked authority to delay its institution decision while awaiting a related Federal Circuit ruling, and that the Board was bound by a district court’s earlier, unappealed claim construction that excluded gasoline as a possible anti-knock agent. The Federal Circuit rejected these arguments, holding that the PTAB’s decision to wait for guidance from the appellate court was reasonable and that the law did not require the Board to adopt the district court’s construction, especially since neither party had appealed that specific aspect.

On the substantive patentability issues, the Federal Circuit agreed with the PTAB’s interpretation of the claim language, finding no clear disclaimer in the patents that would exclude gasoline as an anti-knock agent. The court also found that the PTAB had substantial evidence to support its findings that the prior art combinations disclosed all the challenged claim limitations and that a person of ordinary skill in the art would have been motivated to combine the references as proposed by Ford.

EBS also challenged the PTAB’s factual findings regarding the motivation to combine and the teachings of the prior art, but the Federal Circuit found no reversible error. The court emphasized that the PTAB’s explanations were sufficient and that EBS’s arguments either mischaracterized the Board’s reasoning or failed to address the actual bases for the Board’s conclusions.

This decision highlights the high bar for overturning PTAB decisions on both procedural and substantive grounds, especially when it comes to claim construction and the Board’s discretion in managing its own proceedings. It also underscores the importance of clearly raising and preserving arguments at every stage of the process.