Ford Motor Companyv.TMC Fuel Injection System, LLC

Patent Trial and Appeal Board

Jun 22, 2015

10143657 (P.T.A.B. Jun. 22, 2015)

Trial@uspto.gov Paper 36
571-272-7822 Date Entered: June 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

FORD MOTOR COMPANY
Petitioner

v.

TMC FUEL INJECTION SYSTEM, LLC
Patent Owner
____________________

Case IPR2014-00272
Case IPR2014-00273
Patent 7,318,414 B2
____________________

Before BRIAN J. McNAMARA, TINA E. HULSE, and
JAMES A. WORTH, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
JAMES A. WORTH.

Opinion Concurring filed by Administrative Patent Judge
BRIAN J. McNAMARA.

WORTH, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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INTRODUCTION I.
Ford Motor Company (“Petitioner”) filed two Petitions for inter
partes review of claims 38 and 40 of U.S. Patent No. 7,318,414 B2 (“the
’414 Patent”). Corrected Petition, Paper 5 (IPR2014-00272) (“272 Pet.” or
“Pet.”);1 Corrected Petition, Paper 6 (IPR2014-00273) (“273 Pet.”). TMC
Fuel Injection System, LLC (“Patent Owner”) did not file a Patent Owner
Preliminary Response. We determined that the information presented in
both Petitions demonstrated a reasonable likelihood that Petitioner would
prevail with respect to claims 38 and 40. Pursuant to 35 U.S.C. § 314, we
instituted trial as to those claims. Paper 10 (IPR2014-00272) (“272 Dec.
Inst.”); Paper 12 (IPR2014-00273) (“273 Dec. Inst.”). Given the overlap in
challenged claims and prior art, we consolidated IPR2014-00273 with
IPR2014-00272. Paper 12 (IPR2014-00272); Paper 13 (IPR2014-00273).
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 20, “PO Resp.”) and a Contingent Motion to Amend (Paper 21, “Mot.
Amend”). Petitioner filed a Reply to Patent Owner’s Response (Paper 23,
“Pet. Reply”) and an Opposition to Patent Owner’s Contingent Motion to
Amend (Paper 24). Patent Owner filed a Reply in Support of its Motion to
Amend (Paper 25).
Patent Owner filed a Motion to Exclude (Paper 27, “PO Mot. Exc.”),
to which Petitioner filed an Opposition (Paper 29, “Pet. Oppn Mot. Exc.”)
and Patent Owner filed a Reply thereto (Paper 32, “PO Reply Mot. Exc.”).

1 Unless otherwise noted, citations refer to papers and exhibits docketed
under IPR2014-00272. Papers and exhibits originally docketed under
IPR2014-00273 (i.e., prior to consolidation), will be notated with “IPR2014-
00273” or “273” with the paper and exhibit designation.
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An oral hearing was held on April 13, 2015, a transcript of which has
been entered in the record. Paper 35 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has not
shown by a preponderance of the evidence that claims 38 and 40 of the ’414
patent are unpatentable.
A. Related Proceedings
Patent Owner has asserted the ’414 patent against Petitioner in the co-
pending case, TMC Fuel Injection System, LLC v. Ford Motor Co., No.
2:12-cv-04971-NS (E.D. Pa.). Pet. 1; Ex. 1002.
B. The ʼ414 patent (Ex. 1001)
The ʼ414 Patent relates to a system for supplying fuel to an assembly
of fuel injectors (which in turn supply fuel to an engine). See Ex. 1001, 1:7–
8. Fuel is generally supplied from a fuel tank to the fuel injectors along a
main fuel line by the action of a fuel pump. Id. at 2:12–16. The ’414 patent
discloses two possible additional fuel lines, i.e., a first additional fuel line
and a second additional fuel line, both collateral to the main fuel line, that
can return fuel to the fuel pump. See id. at 5:41–45, Fig. 1, Fig. 2.
The first additional fuel line, which the Specification refers to as a
“fuel by-pass” line, can be opened and closed to create a dual-pressure
system. See id. at 6:17–8:33 (“A. Basic Fluid System that Creates Dual-
Pressure Instantly”), Fig. 1. Figure 1 of the ’414 patent is reproduced below:
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Figure 1 depicts the fuel-bypass line, which includes at least line 35,
by-pass control 30, and line 37. Id. at 8:41–45. The fuel-bypass line is
intended to be closed during most driving conditions in order to create a high
pressure fuel system to optimize the injection of fuel to the engine. Id. at
6:36–37, 6:59–62. However, when certain flow conditions are met, e.g.,
when the car is idling and engine demand falls, the fuel-bypass line can be
opened to create a lower pressure fuel system. Id. at 7:13–16, 7:43–55, Fig.
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5. In this manner, the fuel by-pass can increase fuel efficiency. Id. at 1:28–
32, 2:7–10, 4:3–5, 4:15–17. The ’414 patent discloses the use of a
“constraint on the fuel-by-pass line to obtain the lowest fuel pressure PL
which accomplishes the fuel spraying properly and allows the engine still to
run smoothly.” Id. at 7:20–23. “For example, one may choose the size of
the fuel by-pass lines 35, 37, 38 so that they provide proper flow resistance
or introduce a restriction by other means. For those familiar with fluid
control, the means include, but are not limited to, using a needle valve or a
diaphragm-like plate with a hole that has a proper diameter for fuel
restriction.” Id. at 6:43–48. The by-pass line is opened or closed “manually
by flipping a control switch” or “using an embedded controller where an
electronic signal is sent to activate a control circuit which activates the
actuator of the fuel by-pass control switch,” according to a logic decision
illustrated by the flow charts of Figures 5 and 6. Id. at 7:26–30.
The second additional fuel line, which the Specification refers to as a
“fuel-return” line, stabilizes the pressure in the system “using the same
principle” as for the fuel by-pass line. See id. at 8:35–9:19 (“B. Fuel-Return
Line for Fuel Pump Stabilization, Temperature Stability in Fuel Tank, and
Delivering an Instant Excess Power On-Demand”).2 The fuel-return
includes at least line 31, fuel-return-control 32, and line 33. Id. at 8:41–45.
The fuel-return line is intended to be open during most driving conditions.
Id. at 8:41–43, Fig. 2. The Specification discloses that the fuel-return line
can also be closed for a momentary pressure boost. Id. at 8:42–43; 9:1–12.
Thus, the amount of fuel through fuel-return may be adjusted to obtain

2 The Specification does not contain a drawing with the fuel-return line as
the only additional fuel line.
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different high pressure PH as shown in FIG. 3 where two linear lines
represent two different pressures. Id. at 8:49–51. Fuel-return-control 32 can
be an electromechanical valve, which may be controlled manually or
electronically by using a microprocessor or an embedded controller to exert
an “Off/On” action. Id. at 8:46–48, 9:13–14.
Figure 2 of the ʼ414 patent is reproduced below:

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Figure 2 depicts a preferred embodiment that uses both a first
additional fuel line and a second additional fuel line. See id. at 9:35–53 (“C.
Fuel Injection System that Incorporates Both Inventive Features”).
C. Claims 38 and 40
Claims 38 and 40 are independent claims. Claim 38 is illustrative and
is reproduced below:
38. A fuel injection system for delivering pressurized
fuel from a fuel supply to fuel injectors of an engine which uses
a fuel recirculation loop to minimize or eliminate the need of a
hot fuel return line and a low pressure regulator comprising:
a fuel supply,
a fuel rail in fluid communication with at least one fuel
injector,
a fuel pump having an outlet and an inlet, the inlet being
connected to the fuel supply and driven at a substantially
constant speed,
a main fuel supply line connected from the outlet of the
fuel pump to the fuel rail in fluid communication with the at
least one fuel injector,
a fuel return path with flow constraint, connected from
some location in the main fuel supply line, including the outlet
of the fuel pump, avoiding fuel rail to some location in the fuel
supply including the inlet of the fuel pump, allowing fuel
recirculation to stabilize the pump operation, and creating stable
fuel pressure.
Claim 40 is substantially similar to claim 38, but further recites
a flow constraint “provided by an orifice of predetermined diameter.”
D. Grounds of Unpatentability Instituted for Trial
We instituted a consolidated trial based on the following grounds of
unpatentability, each challenging claims 38 and 40:

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Originating Case Basis References
IPR2014-00273 § 102 Tuckey3
IPR2014-00273 § 103 Tuckey and Ford ’4794
IPR2014-00272 § 103 Tuckey and Chih5
IPR2014-00272 § 103 Tuckey and Coleman6

ANALYSIS II.
A. Claim Construction
In an inter partes review, the Board interprets claim terms in an
unexpired patent according to the broadest reasonable construction in light
of the specification of the patent in which they appear. See In re Cuozzo
Speed Techs., LLC, 778 F.3d 1271, 1279–81 (Fed. Cir. 2015); 37 C.F.R.
§ 42.100(b). Under that standard, and absent any special definitions, we
give claim terms their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art at the time of the invention.
See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any
special definitions for claim terms must be set forth with reasonable clarity,
deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994).
Prior Constructions 1.
In its two separate Petitions in IPR2014-00272 and IPR2014-00273,
Petitioner argued alternative claim constructions for various terms under
both the broadest reasonable interpretation and Philips standards (as asserted
by Patent Owner in the copending district court litigation), respectively. See

3 Tuckey et al., US 5,579,739, issued Dec. 3, 1996 (Ex. 1005).
4 Ford et al., US 5,692,479, issued Dec. 2, 1997 (Ex. 1106).
5 Chih et al., US 5,341,842, issued Aug. 30, 1994 (Ex. 1006).
6 Coleman et al., US 5,765,537, issued June 16, 1998 (Ex. 1004).
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272 Pet. 5; 273 Pet. 17. In our Decisions to Institute, we determined that all
terms of the involved claims should be accorded a uniform claim
construction (273 Dec. Inst. 9–10) and then consolidated the proceedings
(272 Paper 12).
We gave certain terms the following preliminary claim constructions
in the Decision on Institution:
Claim Term or Phrase Claim Construction
“A fuel injection system . . .
which uses a fuel
recirculation loop to
minimize or eliminate the
need of a hot fuel return line
and a low pressure
regulator”
Even according the claim terms their
ordinary meaning, the preamble
recites an intended use. 272 Dec. Inst.
13.
“a fuel pump . . . driven at a
substantially constant speed”
“a fuel pump that is controlled to
operate at a substantially fixed speed”
Id. at 16–17.
“fuel return path with flow
constraint”
“a path which presents resistance that
restricts the flow of fuel in the return
path” Id. at 18.
“allowing fuel recirculation
to . . . creat[e] stable fuel
pressure”
“adapted to allow fuel recirculation to
stabilize pump operation and to create
stable fuel pressure” Id. at 19.

Neither party challenges our prior constructions expressly.
Patent Owner, however, requests further construction of two terms
included within two previously construed phrases: (1) “flow constraint” and
(2) “fuel recirculation.” PO Resp. 23–30. As noted above, claims 38 and 40
both recite a fuel recirculation loop, related to and including, a fuel return
path with flow constraint.

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We address the construction of each limitation in the following
sections. The patentability of claims 38 and 40 turns, in particular, on the
construction of “fuel return path with flow constraint.”
“fuel return path with flow constraint” 2.
In the Decision on Institution, we construed a “fuel return path with
flow constraint” to mean “a path which presents resistance that restricts the
flow of fuel in the return path.” 272 Dec. Inst. 18. In so doing, we rejected
Petitioner’s argument that the claims were limited to a valve, noting that the
Specification taught the use of a “needle valve” as a means of constraining
flow. Id. at 17–18 (citing Ex. 1001, 6:32–54). Accordingly, we stated that
“our construction is not limited to a valve, nor does our construction exclude
a valve.” Id. at 28.
In its Response, Patent Owner argues that the term “flow constraint”
should be further limited to a “fixed flow resistance.” PO Resp. 23–24.
Patent Owner relies, inter alia, on the prosecution history and the
Specification. Id. Petitioner disputes Patent Owner’s limiting construction
in its Reply, relying on the example of a “needle valve” in the Specification
as a means to constrain flow. Pet. Reply 4. Alternatively, Petitioner persists
in arguing that variable resistance regulator valves are excluded from the
scope of the claims. See, e.g., Tr. 59:15–60:10, 16:5–21, 66:18–20, 13:22–
14:19 (arguing in the alternative whether pressure regulators are part of the
claimed system); see also 272 Pet. 11–18 (relying on prosecution history to
exclude regulators). After considering the parties’ arguments and evidence,
we revisit our prior construction for this term.

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a. The ’414 Patent Specification
We begin our analysis with the ’414 patent Specification, including
the language of the claims. Both claim 38 and claim 40 recite “a fuel return
path with flow constraint.” Although claim 40 further recites that the flow
constraint is “provided by an orifice of predetermined diameter,” this
additional limitation does not change the meaning of the claim term that
appears in both claims.7 See In re Rambus Inc., 694 F.3d 42, 48 (Fed. Cir.
2012) (“[U]nless otherwise compelled . . . the same claim term in the same
patent . . . carries the same construed meaning.”) (citing Omega Eng’g Inc.
v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003)). In other words, we
determine the meaning of “a fuel return path with flow constraint” to be the
same in claim 38 and claim 40.
The phrase “flow constraint” appears only in the claims. As we noted
in the Decision to Institute, however, the Specification describes “proper
restrictions on the bypass fuel flow.” 272 Dec. Inst. 17. (citing Ex. 1001,
6:42–43). In particular, the Specification states as an example that “one may
choose the size of the fuel by-pass lines 35, 37, 38 so that they provide
proper flow resistance or introduce a restriction by other means.” Ex. 1001,
6:43–45. The Specification then explains that those means “include, but are
not limited to, using a needle valve or a diaphragm-like plate with a hole that
has a proper diameter for fuel restriction.” Id. at 6:45–48.
With respect to fuel-return line 31, the Specification states: “Using
the same principle as described in the previous section, we can further
improve the fuel injection fluid system by adding an extra fuel-return as

7 Indeed, as seen in the prosecution history, the Applicant and Examiner did
not treat claim 40 differently than claim 38 for purposes of the disclaimer
discussed below. See Ex. 1008, 334.
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shown in FIG. 2.” See id. at 8:38–40. Thus, the fuel-return line operates
according to the same principle as the fuel-bypass line, except the fuel-
bypass line is normally closed and the fuel-return line is normally open. See
id. at Fig. 2.
Given the Specification’s example of a needle valve as a type of flow
constraint, we are not persuaded that “flow constraint” should be construed
to mean “fixed flow resistance,” as proposed by Patent Owner. Although a
needle valve may not be adjusted while in use, Patent Owner’s declarant
admits that a needle valve is adjustable. See Ex. 2001 ¶ 49. Accordingly,
because a “needle valve” is adjustable under certain circumstances (e.g.,
when designing a system, see id. ¶¶ 49–50), we do not construe “flow
constraint” to be a “fixed flow resistance,” as asserted by Patent Owner.
Our analysis, however, does not stop there. Upon reconsidering the
arguments and evidence, we amend our construction of “a fuel return path
with flow constraint” to exclude the use of a pressure regulator or
incremental resistance valve, because, as explained in further detail below,
both were disclaimed during prosecution.
b. Prosecution history
Issued claim 38 was not part of the application as originally filed.8
Rather, issued claim 38 was submitted as claim 42 of the application through
an amendment process:
42. (New) A fuel injection system for delivering fuel
from a fuel supply to fuel injectors of an engine comprising:
a fuel supply,
at least one fuel injector,

8 Application No. 10/143,657, which became the ‘414 patent, was originally
filed on May 10, 2002.
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a fuel pump having an outlet and an inlet connected to
the fuel supply and driven at a substantially constant speed,
a main fuel supply line from the outlet of the fuel pump
in fluid communication with at the least one fuel injector,
a fuel by-pass line with flow constraint connected from
some location in the main fuel supply line, including the outlet
of the fuel pump to some location in the fuel supply,
including the inlet of the fuel pump, allowing fuel
recirculation to stabilize the pump operation, and creating stable
fuel pressure.
Ex. 1008, 147–48 (Amendment, filed August 11, 2004).
Claim 42 was subsequently amended multiple times in an attempt to
overcome a series of prior art rejections.
For example, in a Final Office Action (mailed Feb. 1, 2006), the
Examiner rejected claim 42, inter alia, because the prior art had flow
constraints that used a valve. Id. at 246 (finding “valve 1 [of the prior art]
constrains flow, as does any valve”). In fact, the Examiner noted that the
claims were “very broad and read on the prior art” with various pressure
control structures:
Applicant’s claims are very broad and read on the prior art and
they include many various embodiments which make the
application quite confusing. The subject area is very crowded
with various fuel pressure control structures and methods-most
commonly valves are used to spill fuel back to the tank to lower
the pressure during certain operating conditions. These valves
are usually closed at times of high fuel pressure demand.
Id. at 242. However, the Examiner also stated that the claims might be
allowable if they were limited to an orifice plate:
Examiner felt that much of the claimed invention was shown
and taught in the prior art, perhaps except for multiple return
lines having a normally open valve therein and another having a
normally closed valve therein, upstream of the fuel rail.
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Previously such claims containing these elements were
indicated allowable on the record and during interviews. Claims
which recite only an orifice plate may not be anticipated or
obvious–but there are no such claims–the orifice plate is recited
in a list of alternative other devices which are shown in the art.
Id. at 242–43 (emphasis in original).
In response to the final rejection, claim 42 was amended to read:
42. (Currently amended): A fuel injection system for
delivering pressurized fuel from a fuel supply to fuel injectors
of an engine which uses a fuel recirculation loop to minimize
or eliminate the need of a hot fuel return line and a low pressure
regulator comprising:
a fuel supply,
a fuel rail in fluid communication with at least one fuel
injector,
a fuel pump having an outlet and an inlet, the inlet being
connected to the fuel supply and driven at a substantially
constant speed,
a main fuel supply line connected from the outlet of the
fuel pump to the fuel rail in fluid communication with the at
least one fuel injector,
a fuel return path line with flow constraint, connected
from some location in the main fuel supply line, including the
outlet of the fuel pump, avoiding fuel rail to some location in
the fuel supply[[,]] including the inlet of the fuel pump,
allowing fuel recirculation to stabilize the pump operation, and
creating stable fuel pressure.
Id. at 273.9 In accompanying Remarks, the Applicant stated that its system
“eliminates most of the expensive, elaborate, and often slow acting and non-

9 Application claim 49 (which later became issued claim 40) was also added
at this time:
49. (New): A fuel injection system for delivering fuel from a
fuel supply to fuel injectors of an engine which uses a fuel
recirculation loop to minimize the need of a hot fuel return line
and a low pressure regulator, comprising:
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linear pressure control elements and their related elaborate systems shown in
the references cited, and relied upon [by] the Examiner.” Id. at 279
(emphasis added). The Applicant further explained that by eliminating a
pressure regulator, its system was simpler and less expensive:
Eliminating a relatively expensive regulator and use of
simpler less expensive system of binary controllers (on/off
valves) can save automobile manufacturers huge sums of
money. It is essential to the concept to create a stable multi-
pressure system where the pressure can be instantaneously
changed between pressure levels which can be reliably and
repeatedly varied so that within those pressure levels much
higher and much lower fluid pressures than that of the single
pressure system can be used directly at injector nozzles.
Id. (emphasis added).
To distinguish its system from the prior art, Applicant then argued that
the use of a pressure regulator or a pressure relief valve was disadvantageous

a fuel supply,
a fuel rail in fluid communication with at least one fuel
injector,
a fuel pump having an outlet and an inlet, the inlet being
connected to the fuel supply and driven at a substantially
constant speed,
a main fuel supply line connected from the outlet of the
fuel pump to the fuel rail in fluid communication with at least
one fuel injector,
a fuel return path with flow constraint, provided by an
orifice of predetermined diameter in the return path connected
from some location in the main fuel supply line, including the
outlet of the fuel pump avoiding fuel rail, to some location in
the fuel supply indicating the inlet of the fuel pump, allowing
fuel recirculation to stabilize the pump operation creating stable
fuel pressure.

Ex. 1008 at 273.
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because “[t]he response time of a regulator in the regulating region is
delayed, because time is needed to physically move the pressure-regulating
element.” Id. at 287. As such, Applicant stated that its use of a “binary
electromagnetic valve and flow restraint (a linear element) has a quick
response time to pressure changes.” Id. Applicant then stated definitively:
“The Application does not use pressure regulator or pressure relief valve.”
Id. (emphasis added).
Applicant repeatedly argued that its system differed from the prior art
because it does not use pressure regulators or pressure relief valves. For
example, the Examiner rejected claim 42 as anticipated by U.S. Patent No.
5,425,342 (“Ariga,” Ex. 1010), identifying Ariga’s valve 24 as the flow
constraint. Ex. 1008, 252–54. Figure 1 of Ariga is reproduced below:

Figure 1 of Ariga depicts a fuel supply system that includes fuel tank 12,
fuel pump 14, and pressure regulator 16 that returns fuel to fuel tank 12
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through return passage 22, which includes flow control valve 24. Ex. 1010,
2:65–3:23.
According to Applicant, the Ariga system “is well accepted in the
industry that uses pressure regulators.” Ex. 1008, 290. Applicant explains
that as pressure builds up in the Ariga system, fuel is fed through low-
pressure regulator 16 to fuel injectors at a pressure pre-set by regulator 16.
Id. Applicant then explains that no excess fuel will flow through return
passage 22 until the pump has built up pressure exceeded by the low
pressure set by regulator 16. Id. But Applicant states that accurately
presetting a pressure value for the pressure relief valve or pressure regulator
“may be time consuming and expensive.” Id. Accordingly, Applicant states
definitively, again, that its “Application does not use pressure regulators.”
Id. (emphasis added).
The latter Amendment did not result in allowance, and Applicant
appealed to the Board, repeating many of its prior arguments that its system
does not use pressure regulators or pressure release valves. In its Appeal
Brief, Applicant argued:
The present invention modifies the standard system by
eliminating pressure regulators and incremental regulation
means of any type from the system, as well as valves of any
type in the main fuel line from fuel pump to fuel rail.

Id. at 451 (emphasis added).
With respect to claim 42 in particular (which Applicant refers to as
“Configuration 1”), the Appeal Brief explains that, rather than use
unpredictable pressure regulators, Configuration 1 relies on keeping a
predetermined constant speed and a recirculation flow to provide reliable
pressure:
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Every configuration of the invention includes this
recirculation like configuration 1 through a fuel return path or
its equivalent structure which is necessary to achieve the
constant flow needed to stabilize pump output so that it is
predictable, unlike fluid pressure by prior art regulators and
varying fuel pump speed, that are always sending pressure
and making adjustments. Instead, this invention in all
configurations except Configuration 2 provides a pump running
at a predetermined constant speed and a recirculation flow to
provide reliable pressure. No such stabilized constant speed fuel
pump system has been known in the prior art of fuel delivery
systems for fuel injection in automobiles and other uses. This
normally open “fuel return line” for dominating the fuel
pump flow and keeping the pump at constant speed for a
steady constant pressure is present in all configurations of the
invention. It is, in fact, the very basis for permitting the
invention’s far simpler pressure modification system than has
been available in the prior art.
Id. at 455 (emphasis added).
Finally, regarding the rejection over Ariga, Applicant again,
distinguished Ariga, stating that “no matter what the similar superficial
appearances may be in a drawing, it still remains true that output of Ariga’s
pump 14 passes through a pressure regulator . . . . No fuel flow exists if
pressure is less than the pressure set by the pressure regulator.” Id. at 495.
Applicant than reemphasizes that its “system does not use pressure
regulator[s], but depends on the recirculation loop and flow constraint
element to obtain pressure at the pre-set level.” Id. (emphasis added).
Claim 42 was allowed on April 5, 2007. Id. at 555 (Notice of
Allowance).
c. Analysis of Prosecution History Disclaimer
“Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
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those sources expressly disclaim the broader definition.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). Thus, for purposes of the broadest
reasonable construction, claim terms are interpreted according to their
ordinary meaning in light of, and to be consistent with, the intrinsic
evidence, which consists of the language of the claims as a whole, the
Specification, and the prosecution history. See Tempo Lighting, Inc. v.
Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (“In claim construction, this
court gives primacy to the language of the claims, followed by the
specification. Additionally, the prosecution history, while not literally
within the patent document, serves as intrinsic evidence for purposes of
claim construction. This remains true in construing patent claims before the
PTO.”) (citing In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)). See
also Microsoft Corporation v. Proxyconn, Inc., No. 2014-1542, -43 (Fed.
Cir. June 16, 2015) (“The PTO should also consult the patent’s prosecution
history in proceedings in which the patent has been brought back to the
agency for a second review.”). In light of Applicant’s unequivocal
statements during prosecution, we determine that there is an express
disclaimer of pressure regulators and other forms of incremental regulation
as a flow constraint for issued claims 38 and 40.
The disclaimer of pressure regulators in the introduction section of the
Appeal Brief is particularly express, i.e., “eliminating pressure regulators
and incremental regulation means of any type from the system,” and is
applied in the Brief to Configuration 1 (application claim 42). It is clear
from the above prosecution history that the stabilization of pressure (e.g., at
a high pressure) is based on fuel recirculation through the flow constraint of
an open fuel-return line (or fuel by-pass). This fuel-return line may use a
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binary valve to open and close the fuel-return line and to instantaneously
switch between high and low pressure states. However, pressure regulators
and incremental regulation devices are incompatible with the invention
because they do not allow for instantaneous pressure stabilization in the
same manner as binary valves.
Further, the amendments and disclaimers made throughout
prosecution were clear and essential to allowance. For example, Applicant
repeatedly distinguished its invention over prior art like Ariga by stating that
its system “does not use pressure regulator[s].” Ex. 1008, 290, 495
(emphasis added).
Moreover, the Specification is consistent with limiting the
construction of “fuel return path with flow constraint” to exclude pressure
regulators or incremental valves. The Specification criticizes the prior art’s
use of regulators and spring-loaded ball valves as interfering with pressure
stabilization and instantaneous changes in the pressure (which allows for
finely-controlled fuel injection). For example, the Specification states that
the use of pressure regulators and pressure release valves “have had mixed
results at best.” Ex. 1001, 3:45–60. The Specification further states that its
system “reduces the critical dependence to a fuel regulator, which contains
numerous high-precision mechanical parts.” Id. at 8:55–67. Similarly, the
Specification discourages the use of variable valves like spring-loaded ball
valves because they can cause “erratic engine performance”:
In the mean time, just “opening” and “closing” a
spring-loaded ball valve physically takes more than one
millisecond. This sets the minimum pulse width for fuel
injection during idling to no less than 2 milliseconds. The fuel
injection pulse width is thus limited by the time needed for
operating a spring loaded ball valve and, as a result, may have
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an unpredictable amount of fuel injection and cause erratic
engine performance.
Id. at 2:66–3:7 (emphasis added).
Of note, our construction is not inconsistent with the Specification’s
example of a needle valve as a flow constraint. The Applicant disclaimed
incremental regulation valves (like spring-ball pressure relief valves) during
prosecution. Although needle valves are able to be finely adjusted when not
in use, they are not used to open and close the fuel return line, as the binary
valves described in the Specification are. See Ex. 1001, 6:32–54.
Thus, the “needle valve” example is not functioning as an incremental
regulation valve during operation of the invention. Rather, the “needle
valve” operates like the Specification’s other example of a flow constraint, a
diaphragm plate with a hole in it. Ex. 1001, 6:32–54. Indeed, during
prosecution, the Applicant explained that the needle valve and diaphragm
plate with an orifice were interchangeable. Ex. 1008, 287–88 (“To choose a
proper orifice diameter, one may first install a needle valve in the path of
fuel by-pass, adjust the setting of restraint to determine fuel flow . . . . [t]hen
replace the needle valve by an orifice that lets the same amount of fuel flow
for the said model of fuel system.”). The Applicant explained that a needle
valve could be used during the design of the system to determine the proper
orifice size, and then, once the orifice size has been determined, the needle
valve could be replaced with the diaphragm plate. Id.
The Federal Circuit’s decision in Tempo Lighting is instructive here.
In Tempo Lighting, the Court affirmed the Board’s application of
prosecution history disclaimer. 742 F.3d at 978. The court stated that “the
PTO is under no obligation to accept a claim construction proffered as a
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prosecution history disclaimer….” Id. But the court stated that it was
appropriate in that case because “in this instance, the PTO itself requested
Tivoli rewrite the ‘non-photoluminescent’ limitation in positive terms.
Tivoli complied, and then supplied clarification about the meaning of the
“inert to light” limitation.” Id.
Here, Applicant amended the claims and then supplied clarification
about the meaning of “fuel return path with flow constraint” during
prosecution. Thus, we determine that, even under the broadest reasonable
interpretation standard that we apply to inter partes proceedings, prosecution
history disclaimer applies to the term “fuel return path with flow constraint,”
in light of Applicant’s clear statements disclaiming pressure regulators and
incremental valves during prosecution.10
d. Conclusion
We conclude that the prosecution history states an express disclaimer
of “pressure regulators and incremental regulation means of any type from
the system, as well as valves of any type in the main fuel line from fuel
pump to fuel rail.” Ex. 1008, 338. This is the broadest reasonable
construction that would be consistent with the intrinsic evidence read as a
whole, i.e., the claim language, the Specification, and prosecution history.
This disclaimer applies to the “fuel return path with flow constraint” of
issued claim 38, and applies, a fortiori, to the “fuel return path with flow

10 See also In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149–50 (Fed.
Cir. 2012) (where Specification criticizes prior art structures, none of the
embodiments of the Specification contain those structures, and the claim
language does not contain those structures, the Specification may be
inconsistent with the prior art structures).
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constraint” of issued claim 40, which has a flow constraint provided by “an
orifice of predetermined diameter.”
Thus, a “flow constraint” is a narrowing of the fuel-return line that
restrains flow. In order not to read out preferred embodiments, we
understand that binary valves may be used to open and close the fuel-return
line. Nor do we read out the embodiment of a needle valve, with the
understanding that such a valve does not change while in use. In this
connection, we decline to adopt Patent Owner’s proposed construction that
the resistance is per se “fixed.” However, we construe the “fuel return path
with flow constraint” with the understanding that variable valves and
incremental pressure regulation are disclaimed.
“fuel recirculation” 3.
Patent Owner proposes that the term “fuel recirculation” should be
construed as “continuous flow fuel return.” PO Resp. 25. Patent Owner
asserts that fuel is always circulating through the fuel return path, arguing
that an objective of the invention is to maintain constant pressure, Ex. 1001,
5:16–19, and that the resistance of the flow constraint is fixed. PO Resp.
25–26 (citing Ex. 2001 (Muller Decl.) ¶ 50). Patent Owner further relies on
statements in the prosecution history by the patentee that there is a
“continuous fuel flow recirculation loop.” PO Resp. 27–28 (citing Ex. 1008,
100, 105, 154, 206, 279, 283, 296, 450, 452, 464, 483, 512).
Petitioner does not believe that “fuel recirculation” requires a
construction. Pet. Reply at 5. Petitioner argues that Patent Owner’s
proposed construction of “continuous” recirculation “would exclude the
preferred embodiments in the ‘414 patent specification.” Id. at 5–6 (citing
N. Am. Container v. Plastipak Pack, 415 F.3d 1335, 1345 (Fed. Cir. 2005))
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(holding that claim interpretations “that do not read on the preferred
embodiments are rarely, if ever, correct”). Petitioner asserts that in every
embodiment described in the ’414 patent Specification, the fuel-return path
includes a closeable control valve. Pet. Reply 5 (citing Ex. 1001, Figs. 1 and
2).
We find Petitioner’s argument persuasive and decline to adopt Patent
Owner’s construction. While the prosecution history disclaimed the use of
variable valves, the prosecution history and Specification are consistent with
the notion that a binary valve may be used to close, instantaneously, the fuel-
return line in order to give a brief power boost in one mode of operation.
Ex. 1001, 4:11–16, 41–44, 9:7–14, Fig. 6. We do not consider such a mode
of operation to be inconsistent with the recirculation of fuel set forth in the
preamble, which is the “normal” mode of operation. See Fig. 2.
B. Principles of Law
To prevail in its challenges to the patentability of the claims,
Petitioner must prove unpatentability by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
To establish anticipation, each limitation in a claim must be found in a
single prior art reference, arranged as recited in the claim. Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). While the
limitations must be arranged or combined in the same way as in the claim,
identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover,
a reference anticipates a claim “if it discloses the claimed invention such that
a skilled artisan could take its teachings in combination with his own
knowledge of the particular art and be in possession of the invention.” In re
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Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (emphasis omitted). Thus, “it
is proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter 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) objective evidence of nonobviousness.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
In that regard, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). A prima facie
case of obviousness is established when the prior art itself would appear to
have suggested the claimed subject matter to a person of ordinary skill in the
art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The level of
ordinary skill in the art may be reflected by the prior art of record. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC
Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91
(CCPA 1978).
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We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.
C. Anticipation of Claims 38 and 40 over Tuckey
Petitioner contends that Tuckey anticipates claims 38 and 40. 273
Pet. 26–30. We have reviewed Petitioner’s detailed explanation identifying
where each limitation allegedly appears in Tuckey, along with the testimony
of Petitioner’s declarant, Dr. Gregory W. Davis. Id.; 273 Ex. 1112 ¶¶ 23–
40. We have also reviewed Patent Owner’s assertions and evidence as to
why Petitioner’s explanations and evidence are deficient. PO Resp. 32–37;
Ex. 2001 ¶¶ 20–61.
1. Tuckey (Ex. 1005)
Tuckey relates to a fuel system with a pressure demand regulator for
an internal combustion engine with fuel injectors, and, in particular,
discloses a “returnless” system. Ex. 1005, Title; 2:2–10. The “returnless” or
“no return” system means that there is no hot return of fuel from the engine
back to the fuel tank. See id.
Figure 9 of Tuckey is reproduced below:
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Figure 9 depicts fuel supply line from a fuel tank, with fuel pump 240,
continuing through demand regulator 12 to fuel rail 20, which has parallel
fuel injectors 22. Ex. 1005, 7:67; Ex. 1007 ¶ 42. In connection with the
Figure 9 embodiment, Tuckey states that the fuel pump is “preferably driven
at a substantially constant speed to deliver fuel . . . [to] demand regulator
12.” Ex. 1005, 8:4–7; Ex. 1007 ¶ 50.
According to Tuckey, “[t]o deliver the fuel at a substantially constant
pressure, . . . a portion of [the] fuel supplied by the pump is by-passed
through line 246 and the pressure control relief valve 250 into the reservoir
234 or the [fuel] tank 232” Ex. 1005, 8:7–11. Pressure control relief valve
250 makes use of “a ball valve element 251 urged towards its closed position
by a backing spring 252.” Id. at 7:61–62. Tuckey explains that “[t]he force
produced by the spring 252 is set so that the valve opens at a pressure (such
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as 55 psig) which is higher . . . than the pressure (such as 50 psig) at which
the demand regulator 12 supplies fuel through line 264 to the rail 20 and fuel
injectors 22 of the engine 24.” Id. at 7:62–67.
2. Analysis
In the Petition, Petitioner alleges how each limitation of claims 38 and
40 would be understood to be disclosed by Tuckey. 273 Pet. 26–29. For
example, Petitioner argues that fuel return path 246 with pressure control
relief valve 250 meets “a fuel return path with flow constraint, connected
from some location in the main fuel supply line, including the outlet of the
fuel pump, avoiding fuel rail to some location in the fuel supply including
the inlet of the fuel pump, allowing fuel recirculation to stabilize the pump
operation, and creating stable fuel pressure.” 273 Pet. 28–29. As to claim
40, Petitioner states that pressure control relief valve 250 is a spring biased
ball valve, and asserts that the seat in which the ball element sits is an
“orifice of [a] predetermined diameter.” Id. at 29–30 (citing 273 Ex. 1112
¶¶ 36–40).
Patent Owner also argues that Tuckey does not disclose “a fuel return
path with flow constraint, … allowing fuel recirculation to stabilize the
pump operation, and creating stable fuel pressure” because pressure relief
valve 250 does not create the type of flow and pressure conditions required
by Patent Owner’s asserted claim constructions of “flow constraint” and
“fuel recirculation.” PO Resp. 33–37. Petitioner argues that Tuckey
discloses fuel recirculation, which, according to the ’414 Specification, is all
that is required to stabilize fuel pump and pressure. Pet. Reply 7–8.
In light of our revised construction of “a fuel return path with flow
constraint,” we agree with Patent Owner that Tuckey does not anticipate
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claims 38 and 40. Applicant expressly disclaimed pressure regulators and
incremental regulation “of any type from the system.” Ex. 1008, 451. Thus,
because Tuckey’s system includes demand regulator 12 and pressure relief
valve 250 (a ball-spring valve), Tuckey does not meet the limitation “a fuel
return path with flow constraint . . . allowing fuel recirculation to stabilize
the pump operation, and creating stable fuel pressure,” as recited by claims
38 and 40.
We, therefore, conclude that Petitioner has not shown by a
preponderance of the evidence that Tuckey anticipates claims 38 and 40.
D. Obviousness of Claims 38 and 40 over Tuckey and Ford ’479
1. Ford ’479 (Ex. 1106)11
Ford ’479 relates to a returnless fuel delivery system for an internal
combustion engine, with a jet pump that supplies the fuel pump. Ex. 1106,
Title, 1:4–6. Upon demand from the engine, fuel pump 24 pumps fuel from
fuel tank 20 through fuel line 16, and into high pressure fuel rail 12 for
distribution to the fuel injectors (not shown). Id. at 3:16–27. As a returnless
system, there is no hot fuel return. Figure 1 of Ford ʼ479 is reproduced
below.

11 Ex. 1106 is docketed under IPR2014-00273.
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Figure 1 of Ford ’479 depicts a collateral fuel line that returns fuel from the
main fuel line to the fuel reservoir through a jet pump. The collateral fuel
line branches off of a pressure regulator on the main fuel line. Specifically,
“[p]ressure regulator 22 has a second outlet port 38 such that excess fuel not
required by fuel rail 12 is routed to jet pump 26 at low pressure via fuel line
40.” Id. at 3:45–47, Fig. 2. Jet pump 26 returns fuel to the fuel reservoir
and fuel pump 24 to promote the availability of fuel supply for the fuel
pump. Id. at 3:50–65. Figure 4 of Ford ʼ479 is also reproduced below:

Figure 4 illustrates how fuel in a collateral fuel line flows through orifice 41
into jet pump 26.
2 Analysis
In the Petition, Petitioner alleges how each limitation of claims 38 and
40 would be understood to be disclosed by the combination of Ford and
Tuckey, and why such a combination would have been obvious. 273 Pet.
31–37. For example, Petitioner asserts that Ford discloses fuel return path
40 with jet pump 26 and its opening 42 meet “a fuel return path with flow
constraint, connected from some location in the main fuel supply line,
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including the outlet of the fuel pump, avoiding fuel rail to some location in
the fuel supply including the inlet of the fuel pump, allowing fuel
recirculation to stabilize the pump operation, and creating stable fuel
pressure.” Id. at 35–36.
Patent Owner argues that Ford ’479 does not disclose
a fuel return path with flow constraint, connected from some location
in the main fuel supply line, including the outlet of the fuel pump,
avoiding fuel rail to some location in the fuel supply including the
inlet of the fuel pump, allowing fuel recirculation to stabilize the
pump operation, and creating stable fuel pressure.

PO Resp. at 38–40. Specifically, Patent Owner states that Dr. Davis admits
that the portion of the jet pump orifice he identified as the “orifice” in the
fuel return path does not create stable fuel pressure, and that, in any event,
the presence of the pressure regulator between the fuel return path and the
fuel rail prevents the functionality required of the claimed structures. Id.
Petitioner argues that Ford ’479 discloses continuous fuel recirculation and
stable fuel pressure. Pet. Reply 11–12.
We agree with Patent Owner that Ford ’479 does not teach a “fuel
return path with flow constraint” in light of the express disclaimer of
pressure regulators and incremental regulation “of any type from the
system.” Ex. 1008, 451. Ford ’479’s pressure regulator 22 is therefore
inconsistent with this disclaimer. On cross-examination, Petitioner’s
declarant, Dr. Davis, affirmed Ford ’479’s need for a pressure regulator,
explaining that the orifice does not stabilize the pressure without the
assistance of the pressure regulator: “In this system, again, because it’s a
real system applied to a vehicle where the demands are changing all the
time, fuel flow demands, you need the pressure regulator in order to provide
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a stable fuel pressure to the system.” Ex. 2002, 283:18–25. Moreover, as
we found above, Tuckey’s use of demand regulator 12 and pressure relief
valve 250 do not constitute “flow constraints” within the proper construction
of the term, either. We, therefore, find that Petitioner has not shown by a
preponderance of the evidence that Ford ’479 and Tuckey render obvious
claims 38 and 40.

E. Obviousness of Claims 38 and 40 over Tuckey and Chih
1. Chih (Ex. 1006)
Chih discloses a bottom mount fuel tank module for an automobile
with a jet pump for maintaining a minimum level of fuel in a fuel reservoir
for maintaining a minimum level of fuel in the reservoir, e.g., when the fuel
tank is low or when conditions such as cornering or slope parking cause the
fuel level in the tank to fall below the fuel pump inlet. Ex. 1006, Title and
Abstract. Figure 1 of Chih is depicted below:
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Figure 1 of Chih depicts fuel pump 14 and fuel line 130, which
branches into (1) first stream 140, which travels towards the engine, and (2)
second stream 150, which flows back through venturi opening 84, with the
assistance of a jet pump, to fuel reservoir 12. Id. at 4:17–45. Notably,
Chih’s system also contains a hot return from the engine that flows through
item 40 back to the reservoir. Id. at 4:49–51.
2. Analysis
In the Petition, Petitioner alleges how each limitation of claims 38 and
40 would be understood to be disclosed by the combination of Chih and
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Tuckey, and why such a combination would have been obvious. Pet. 55–60.
For example, Petitioner asserts that Chih discloses reservoir 12, which meets
“a fuel supply”; engine fuel delivery conduit 22, which meets “a main fuel
supply line connected from the outlet of the fuel pump to the fuel rail in fluid
communication with the at least one fuel injector”; second stream 150
through a jet pump with narrowed portion 82a meets “a fuel return path with
flow constraint, connected from some location in the main fuel supply line,
including the outlet of the fuel pump, avoiding fuel rail to some location in
the fuel supply including the inlet of the fuel pump, allowing fuel
recirculation to stabilize the pump operation, and creating stable fuel
pressure.” Id. Petitioner notes that Chih does not disclose a pressure
regulator. Id. at 56.
With respect to “a fuel pump having an outlet and an inlet, the inlet
being connected to the fuel supply and driven at a substantially constant
speed,” Petitioner relies on fuel pump 14 of Chih, as modified in view of
Tuckey. Id. at 57–58. Petitioner contends that it would have been obvious
to “combine a constant speed pump of Tuckey with the disclosure of Chih”
based on a “design need,” as one of a “finite number of identified,
predictable solutions,” and because Tuckey teaches that it is preferable to
use a constant speed pump. Id. at 58 (citing Ex. 1007 (Davis Decl.) ¶¶ 62–
67)). Petitioner contends that, to the extent that Chih does not disclose the
details of the engine in satisfaction of “a fuel rail in fluid communication
with at least one fuel injector,” it would have been obvious to combine the
system of Chih with Tuckey’s fuel rail 20 in communication with fuel
injectors 22. Id. at 57. Petitioner argues that such a combination would
have been obvious as the application of a known technique to a known
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device to yield predictable results, and as the predictable use of prior art
elements according to known functions. Id. (citing KSR, 550 U.S. at 417;
Ex. 1007 (Davis Decl.) ¶ 61).
As to claim 40, Petitioner “relies on its presentation with respect to
claim 38 to satisfy all of the limitations of claim 40 as construed in this
Petition.” Id. at 60.
Patent Owner argues it would not have been obvious to a person of
ordinary skill in the art to combine the teachings of Tuckey with Chih, i.e.,
to combine the structures and to drive the pump at a constant speed. PO
Resp. 44–46. Specifically, Patent Owner asserts that the fuel rail disclosed
in Tuckey physically could not be combined with the pump module
disclosed in Chih because the fuel rail of Tuckey does not accommodate the
fuel return system of Chih. See id. Patent Owner also asserts that there are
different approaches to pressure control used in a “return” system as
opposed to a “returnless” system. Id. Relatedly, Patent Owner argues that
Chih does not disclose “a fuel return path with a flow constraint . . . allowing
fuel recirculation to stabilize the pump operation [and] creating stable fuel
pressure,” as recited by claims 38 and 40, because Dr. Davis admitted that
such a jet pump configuration alone does not create stable pressure, and he
does not know whether it dampens pressure pulsations. Id. at 46–49 (citing
Ex. 2002, 283:18–284:18). Patent Owner suggests that hot return lines are
further inconsistent with the preamble of claims 38 and 40. See PO Resp. 44
(citing Ex. 2001 (Muller Decl.) ¶ 74).
In response, Petitioner argues that Patent Owner’s complaint is
irrelevant because Tuckey was combined for the details regarding the
injectors and the driving speed of the pump. Pet. Reply 13. Petitioner also
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argues that both systems use a pressure regulator, and therefore do not have
“different approaches to pressure control,” as Patent Owner asserts. Id.
Petitioner further argues that Patent Owner’s declarant admitted that “going
from a Return to Returnless System is a simple relocation of the pressure
regulator that was common and well-known prior to the ‘414 patent.” Id. at
13–14. And finally, Petitioner argues that the preamble is not limiting,
thereby making any distinction between return and returnless systems
meaningless. Id.
We agree with Patent Owner that Petitioner has provided insufficient
reasoning as to why it would have been obvious to a person of ordinary skill
in the art to modify the system of Chih to drive the pump at a constant speed.
Petitioner has not identified the design need to modify Chih in this manner,
other than by reference to the Specification of the ’414 patent.
Further, even if Petitioner may characterize the options of variable
speed and constant speed as a “finite number of options,” Petitioner does not
address whether the result would be predictable upon substitution. Tuckey
describes in context a “no-return fuel system 230 embodying this invention
with a demand fuel regulator 12 to which fuel is supplied at a substantially
constant pressure by an electric fuel pump 240 with a by-pass pressure relief
valve 250.” Ex. 1005, 7:45–49; see also id. at 7:49–67 (with further detail).
Tuckey is thus a “returnless” system, whereas Chih has a return from the
engine and uses a different approach to controlling pressure for the fuel
supplied to the fuel injectors. See Ex. 2001 (Muller Decl.) ¶ 74. Petitioner
has not explained why it would have been obvious to make the speed of
Chih’s pump constant without the accompanying features of Tuckey, which,
according to Tuckey, are also used “[t]o control the pressure of fuel,” inter
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alia, in view of changing engine fuel demand. Id. at 1:21–28; 7:56. Further,
Petitioner has not explained how eliminating the hot return from the engine
of Chih would not affect pressure control.
We conclude that Petitioner has provided an insufficient basis for the
conclusion that it would have been obvious to combine the teaching of Chih
and Tuckey as asserted. Therefore, on this record, we conclude that
Petitioner has not shown by a preponderance of the evidence that claims 38
and 40 have been obvious over Chih and Tuckey.

F. Obviousness of Claims 38 and 40 over Tuckey and Coleman
1. Coleman (Ex. 1004)
Coleman discloses a fuel recirculation system for an internal
combustion engine with a fuel pump that is adapted to prevent separation of
an aqueous fuel emulsion. Ex. 1004, Title; 1:1–5.
Figure 1 of Coleman is reproduced below:

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Figure 1 of Coleman depicts main fuel line 16 and fuel return path 20
that branches off of the main fuel line back to the fuel tank. Id. at 2:53–56.
Fuel return path 20 contains check valve 22. Coleman’s system also
includes fuel line 25 (a hot return) from the engine to the fuel tank. Id. at
2:67–3:1. Coleman discloses check valve 22 in fuel return path 20. Id.at
3:1–7, Fig. 1.
2. Analysis
In the Petition, Petitioner alleges how each limitation of claims 38 and
40 would be understood to be disclosed by the combination of Coleman and
Tuckey, and why such a combination would have been obvious. 272 Pet.
48–55. For example, Petitioner asserts that Coleman discloses fuel supply
26 in fuel tank 14, which meets “a fuel supply.” Id. at 50
With respect to “a fuel return path with flow constraint, connected
from some location in the main fuel supply line, including the outlet of the
fuel pump, avoiding fuel rail to some location in the fuel supply including
the inlet of the fuel pump, allowing fuel recirculation to stabilize the pump
operation, and creating stable fuel pressure,” Petitioner relies on both fuel
recirculation bypass conduit 20 with fuel recirculation check valve 22 of
Coleman and on pressure control relief valve 250 of Tuckey. Id. at 53–54.
In this connection, Petitioner cites Tuckey’s disclosure that a portion of the
fuel flows through the fuel return path to “deliver the fuel at a substantially
constant pressure.” Id. (citing Ex. 1005, 8:4–11; Ex. 1007 (Davis Decl.) ¶
54).
Petitioner notes that Coleman does not disclose a pressure regulator
(as consistent with the preamble). Id. at 50.
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With respect to “a fuel pump having an outlet and an inlet, the inlet
being connected to the fuel supply and driven at a substantially constant
speed,” Petitioner contends that it would have been obvious to combine a
constant speed pump of Tuckey with the disclosure of Coleman based on a
“design need,” as one of a “finite number of identified, predictable
solutions,” and because Tuckey teaches that it is preferable to use a constant
speed pump. Id. at 51–52 (citing Ex. 1007 (Davis Decl.) ¶¶ 44–52).
Petitioner relies on main fuel supply line 16 of Coleman, from the
outlet of the fuel pump 18 to the fuel rail which is in fluid communication
with fuel injectors 30 to meet “main fuel supply line 16 from the outlet of
the fuel pump 18 to the fuel rail, which is in fluid communication with the
fuel injectors 30.” Id. at 53. Petitioner contends that, to the extent that
Coleman does not disclose “a fuel rail” in satisfaction of “a fuel rail in fluid
communication with at least one fuel injector,” it would have been obvious
to combine the system of Coleman with the fuel rail of Tuckey’s fuel rail as
the predictable use of the prior art according to its established function. Id.
at 50 (citing KSR Int’l, 550 U.S. at 417).
As to claim 40, Petitioner relies on the spring biased ball valve 250 of
Tuckey as disclosing a flow constraint “provided by an orifice of
predetermined diameter.” Id. at 55.
Petitioner further contends that it would have been obvious to
combine the fuel system of Coleman with the constant speed pump of
Tuckey. Id. at 51–55. Petitioner asserts that the combination would have
been obvious because of a design need, because there are a finite number of
identified, predictable solutions, and because Tuckey teaches that, it is
preferable to use a constant speed pump. Id. at 51–52.
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40

Patent Owner argues that Coleman’s fuel rail is not a “fuel rail,” as
recited by claims 38 and 40, because Coleman’s fuel injectors are arrayed in
series instead of in parallel. PO Resp. 41–42. However, read in context,
claims 38 and 40 require “at least one fuel injector,” at which point the
distinction between fuel injectors in series and parallel collapses. Therefore,
we find that Coleman’s fuel rail is within the broadest reasonable
interpretation of “fuel rail,” as recited by claims 38 and 40.
Patent Owner also argues Coleman’s check valve 22, which is a ball
pressed against a valve by a spring, is not a “flow constraint” and does not
allow “fuel recirculation” under the constructions proposed by Patent
Owner. PO Resp. 40–43. Specifically, Patent Owner argues that the check
valve varies the flow resistance and does not allow continuous flow. PO
Resp. 43 (citing Ex. 2001 (Muller Decl.) ¶¶ 72–73; Ex. 2002 (Davis Tr.),
305:10–17). Relatedly, Patent Owner argues that it would not have been
obvious to combine Coleman with Tuckey because the inclusion of a return
line in Tuckey would substantially alter the design of the fuel system.
We agree with Patent Owner that check valve 22 of Coleman, and
pressure relief valve 250 of Tuckey are both spring-ball valves, Ex. 2001
¶¶ 56, 72, which is inconsistent with the express disclaimer of pressure
regulators and incremental regulation “of any type from the system.” Ex.
1008, 451. Thus, these structures do not meet a “fuel return path with flow
constraint,” as recited by claims 38 and 40. Further, for similar reasons as
above with respect to the combination of Chih and Tuckey, Petitioner has
not provided sufficient reasoning as to why it would have been obvious to a
person of ordinary skill in the art to combine return and returnless systems in
the asserted manner. We, therefore, find that, on this record, Petitioner has
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Patent 7,318,414 B2

41

not shown by a preponderance of the evidence that Coleman and Tuckey
render obvious claims 38 and 40.

PATENT OWNER’S CONTINGENT MOTION TO AMEND III.
Because we do not find that Petitioner has met its burden of proving
claims 38 and 40 unpatentable, we do not reach Petitioner’s contingent
motion to amend. See Mot. Amend at 1 (Patent Owner moves to replace
claims 38 and 40 only if claims 38 and 40 are found to be unpatentable).

PATENT OWNER’S MOTION TO EXCLUDE IV.
Patent Owner moves to exclude Exhibit Nos. 1024, 1026, 1027, 1030,
1032, and 1033 filed by Petitioner. Mot. Exclude 1. Specifically, Patent
Owner argues that Exhibit No. 1024 is untimely and substantively
inadmissible as containing requests for admission; Exhibit No. 1027 violates
the pages limits and the rule against incorporation by reference; and
Petitioner’s Opposition to Patent Owner’s Motion to Amend circumvented
allotted page limits by reference to claim charts in Exhibits 1026, 1030,
1032, and 1033. Id. at 2–6; Paper 32, 3 (citing Fed. R. Civ. P. 36).
Petitioner responds that Patent Owner failed to timely object to the
evidence offered by Petitioner as required by 37 C.F.R. § 42.64(b). Paper
29, 2. Petitioner also argues that Exhibits 1024 and 1027 are admissible for
certain limited purposes. Id. at 3–8.
We agree with Petitioner that Patent Owner failed to timely object
within five business days to the proffer of evidence, as required by 37 C.F.R.
§ 42.64(b) (“Once a trial has been instituted, any objection must be served
within five business days of service of evidence to which the objection is
directed.”). Patent Owner does not disagree with Petitioner’s representation
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Patent 7,318,414 B2

42

that no objection was served, nor does Patent Owner make any contrary
representation. We, therefore, deny the motion to exclude for lack of timely
service of a predicate objection. In any event, this opinion does not rely on
any of the exhibits that were the subject of the motion. Accordingly, Patent
Owner’s Motion to Exclude is denied.

CONCLUSION V.
We conclude that Petitioner has not shown by a preponderance of the
evidence that claims 38 and 40 are unpatentable as anticipated by Tuckey, or
as obvious over any of the combinations of Tuckey and Ford ’479, Tuckey
and Chih, or Tuckey and Coleman.

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Patent 7,318,414 B2

43

ORDER VI.
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has not shown by a preponderance of the
evidence that claims 38 and 40 are unpatentable;
FURTHER ORDERED that Patent Owner’s Contingent Motion to
Amend (Paper 21) is dismissed;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
(Paper 27) is denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the 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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Patent 7,318,414 B2

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

FORD MOTOR COMPANY
Petitioner

v.

TMC FUEL INJECTION SYSTEM, LLC
Patent Owner
____________________

Case IPR2014-00272
Case IPR2014-00273
Patent 7,318,414 B2
____________________

Before BRIAN J. McNAMARA, TINA E. HULSE, and
JAMES A. WORTH, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge, concurring.

I concur with my fellow judges on this case, but write separately to
address issues raised during the oral hearing.
The Petition noted that “the preambles of the IPR claims confirm the
claims cover only fuel systems that do not use a pressure regulator.” Pet.
20 (emphasis in original). The Petition also identified many of the same
statements in the prosecution history noted in the panel’s decision. Pet. 19–
26. Our Decision to Institute focused on the language of the claims in
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Patent 7,318,414 B2

2

reciting a goal (to minimize the need for a hot fuel return line and a low
pressure regulator), as opposed to the claimed structure. Dec. to Inst. 11.
We also noted that the specification of the ’414 Patent stated that the
structure “eliminates the need to return the unused excess fuel from fuel rail
17 (hot fuel) to fuel tank 10 to avoid pressure built-up. The structure also
reduces the critical dependence . . . [on] a fuel regulator, which contains
numerous high-precision mechanical parts.” Id. at 12 (quoting Ex. 1001,
col. 8, ll. 55–67). During the hearing, in response to a question about the
construction of minimizing or eliminating the need for a pressure regulator
in the preamble of claims 38 and 40, Petitioner’s counsel argued:
If you look through the prosecution history, there’s only one
answer and that’s it has to be eliminated. It has to be gone.
That’s the only way to construe the phrase . . . . I think you’ll be
hard pressed in finding any true definition for that phrase other
that what was in the prosecution history, and that was
elimination of it completely.
Tr. 16:10–21.
Patent Owner’s counsel argued that
There is no bypass control required in claims 38 and 40. And it
does require a constant speed pump, Your Honor, and that
affects the pressure in the system. The claims 38 and 40 do not,
as petitioner's counsel argued, exclude a pressure regulator. It
excludes a low pressure regulator at the end of the rail like we
talked about in the preamble. It doesn't exclude using a
pressure regulator in addition to stabilize the pressure. It just
can't be here like in the Ford and Tuckey patent, it can't be
between the pump and the rail interrupting the stabilization of
the pressure at the rail.
Tr. 33:12–20.
Patent Owner has not identified any limitation on the statements in the
prosecution history that would confine the disclaimer to precluding the use
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Patent 7,318,414 B2

3

of pressure regulators just “between the pump and the rail” as Patent Owner
argued during the hearing. The prosecution history indicates just the
opposite. As the panel decision indicates, in response to a final rejection,
Patent Owner submitted an Appendix12 written by the inventor that
specifically states, “The Application does not use pressure regulator or
pressure relief valve.” Ex. 1008, 287 (emphasis added).
As the panel decision points out, in an Appeal Brief that resulted in
the Examiner withdrawing the rejections, Id. at 558–559, Patent Owner
argued:
The present invention modifies the standard system by
eliminating pressure regulators and incremental regulation
means of any type from the system, as well as valves of any
type in the main fuel line from the fuel pump to the fuel rail.
Id. at 451.
Thus, Patent Owner obtained allowance by arguing that the claims
preclude valves of any type between the fuel pump and the fuel rail, and
pressure regulators and incremental regulation means of any type from the
system.
Arguments during the hearing notwithstanding, Patent Owner cannot
now retreat from the explicit disclaimer made in the prosecution that led to
allowance of the claims.

12 Appendix 1 was prepared by the inventor, Dr. Hou, provided to the
Examiner informally during an interview, and submitted formally as an
Appendix to the response to the final rejection filed by counsel. Ex. 1008,
276. Appendix 1 includes remarks by Dr. Hou distinguishing the invention
and discussing advantages and broad differences from the prior art. Id.
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4

PETITIONER:
Marc Lorelli
Frank Angileri
BROOKS KUSHMAN P.C.
mlorelli@brookskushman.com
fangileri@brookskushman.com

PATENT OWNER:
John F. Ward
David G. Lindenbaum
Francis Morris
WARD & ZINNA, LLC
jward@wardzinna.com
dlindenbaum@wardzinna.com
fmorris@wardzinna.com