ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY
Before Chen, Clevenger, and Hughes. Appeal from the Patent Trial and Appeal Board.
Summary: The Federal Circuit confirmed that the Board may delay a decision on rehearing while waiting for a Federal Circuit claim-construction decision in a parallel litigation and adopt the plain and ordinary meaning of claim terms even when a district court previously applied a narrower construction.
MIT and Ethanol Boosting Systems (collectively EBS) appealed three Board decisions finding various claims of three related patents unpatentable as obvious. The patents claim fuel‑management strategies for spark‑ignition engines using coordinated direct and port injection to mitigate engine knock.
Ford petitioned for inter partes review, which the Board initially denied in view of a prior, narrow claim construction of “fuel” from a parallel litigation. In the district court litigation, EBS appealed a portion of that narrow construction. In response, Ford sought rehearing of the Board’s denial of institution. Fifteen months later, after the Federal Circuit modified the appealed portion of the district court’s construction, the Board granted rehearing. After institution, the Board held the claims unpatentable, applying a plain meaning construction. EBS appealed. The Federal Circuit affirmed.
The Federal Circuit rejected EBS’s argument that the Board exceeded its authority by effectively “staying” the proceeding until the Federal Circuit’s decision on claim construction. Though EBS argued its challenge was not to the underlying institution decision, the Federal Circuit disagreed and held EBS’s challenge to the “stay” effectively challenged the Board’s authority to make the institution decision. The court explained that the Board’s institution decision was final and unappealable, and that the delay in rehearing was not an ultra vires “stay” because there was no deadline to stay in the first place. The court also rejected EBS’s challenge to the Board’s plain-meaning claim construction, explaining that the Federal Circuit’s previous decision only addressed part of the district court’s construction. Accordingly, the Board was not bound by the unappealed portion of the district court’s construction not addressed in the Federal Circuit’s prior decision, and could properly apply a plain-meaning construction.
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