Newman Says CAFC Majority Departed from Claim Construction Law in Blow to Ford Over Fuel System Patents
“The majority’s construction… is erroneous and an ‘incorrect departure from the law of claim construction,’ Newman wrote.”
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday vacated and remanded a decision of the U.S. District Court for the District of Delaware, which had granted judgment of non-infringement for Ford Motor Company on three patents owned by Ethanol Boosting Systems, LLC and the Massachusetts Institute of Technology (EBS). The CAFC, with Chief Judge Moore writing, said the district court’s ruling was based on an erroneous claim construction. Judge Pauline Newman dissented, accusing the majority of departing “from the rule that patent claims are construed in accordance with the invention described in the specification.”
The patents at issue are U.S. Patent Nos. 9,708,965; 10,619,580; and 10,781,760. They disclose “a fuel management system for enhanced operation of a spark ignition gasoline engine.” Representative claim 1 states in part:
A fuel management system for a spark ignition engine, comprising:
a first fueling system that uses direct injection; [and]
a second fueling system that uses port fuel injection . . . .
Claim Construction
As described by the CAFC, one embodiment of the claims explains that the system includes “(1) a direct-injection system for directly injecting a mixture of an anti-knock agent and fuel and (2) a port-injection system for port injecting part of the fuel, which is gasoline…. Preferably, the anti-knock agent is ethanol.”
However, the patents also state that “[i]n order to obtain the highest possible octane enhancement while still maintaining combustion stability, it may be useful for 100% of the fuel to come from ethanol with a portion being port injected, as an alternative to a small fraction of the port- fueled gasoline.”
Ford argued in the district court for a construction that indicated 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 district court adopted this construction, explaining that “the specification . . . makes clear that what is invented is a dual fuel engine.” The patents’ titles (“Optimized fuel management system for direct injection ethanol enhancement of gasoline engines”), their background sections, their figures, which the district court noted do not “depict the use of a single fuel engine,” and their “repeated[] refer[ences] to the invention as directly injecting ethanol or another second fuel that is not gasoline,” all contributed to the court’s reasoning. Based on this construction, the parties stipulated to the judgment of non- infringement and EBS appealed.
Majority: No Clear Disclaimer of a Single-Fuel Invention
In its discussion, the CAFC majority agreed with EBS that there is no clear disclaimer in the claims of a single-fuel invention. The CAFC said: “There is nothing in the claim language that requires the use of different fuels in the direct-injection system and the port-injection system. Ford does not argue otherwise.” Ford’s arguments on appeal relied on the specification and prosecution history, which it said “compel such a result.” Ford’s arguments that the specification discloses only dual-fuel systems fall flat because, even if true, the CAFC explained that “we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment,” citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005). But the court also rejected this reading of the specification, arguing that “[t]o the contrary, they disclose an embodiment in which “100% of the fuel . . . come[s] from ethanol with a small fraction being port injected…. The district court’s construction requiring two different fuels would exclude this disclosed embodiment.”
While Ford argued the specification describes the invention as requiring a direct-injection fuel different than a port-injection fuel, the CAFC said none of the passages “amount to a clear and unmistakable disavowal of single-fuel systems.” The statements Ford pointed to did not amount to a description of all embodiments and thus “do not describe the invention as a whole,” said the CAFC. As for the patents’ titles, which Ford argued cite two different fuels, they do not amount to “a clear and unmistakable disavowal of single-fuel systems, particularly in view of the disclosed 100% ethanol embodiment.”
Newman: Specification Starts with the Title
Judge Newman dissented, since she said the “specification describes a system using both directly-injected fuel and port-injected fuel, where the directly-injected fuel includes an anti-knock agent such as ethanol, and the port-injected fuel is different from the directly-injected fuel.” The majority’s construction, which includes a system in which the fuels are not different, is erroneous and an “incorrect departure from the law of claim construction,” Newman wrote.
Newman said that the majority’s claim construction departs from the specification and contradicts the prosecution history. The passage relied upon by the majority to support its construction was simply a recognition “that the engine has an ethanol system and that when ethanol has been exhausted, the engine can operate in a lower performance gasoline-only mode, but it gives specific strategies for avoiding this lower performance mode . . . .” Newman added:
The district court was reciting how the dual-fuel engine operates; the court was not changing the claims to include 100 percent ethanol in both the direct injection and the port injection systems.
Newman also rejected the majority’s dismissal of the patent’s title, citing Supreme Court precedent that has held title is a factor in construction. Corning v. Burden. While the majority cited Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) to justify its refusal to read limitations into the claims from the patent title, Newman said the citation from that case “cannot change the law that claims are construed in light of the specification, and the specification starts with the title.”
Eileen McDermott
Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at […see more]
