Fresh From the Bench: Latest Precedential Patent Case

CASE OF THE WEEK

Ethanol Boosting Systems, LLC v. Ford Motor Company, Appeal Nos. 2024-1381, -1382, -1383 (Fed. Cir. Dec. 23, 2025)

In its only precedential patent opinion last week, the Federal Circuit affirmed inter partes review decisions invalidating all challenged claims of three automotive patents owned by the Massachusetts Institute of Technology.  The Patent Trial and Appeal Board had initially declined to institute review, but on petitioner Ford’s request, waited over 15 months to reconsider that decision while the parties appealed a co-pending infringement case against Ford by MIT and its licensee.  Among other things, the Court in this appeal rejected appellants’ argument that the Board had impermissibly “stayed” rehearing of Ford’s petition, finding their arguments amounted to little more than a challenge to the propriety of the Board’s institution decision, and thus barred under 35 U.S.C. § 314(d) (providing institution decisions are not subject to appeal).  The Court also affirmed the invalidating decisions on the merits.

MIT’s U.S. Patent Nos. 10,619,580, 10,781,760, and 9,708,965 are directed to methods of mitigating “engine knock” in internal combustion engines, and are administered through MIT’s exclusive licensee Ethanol Boosting Systems (EBS).  As relevant to this write-up, the patents describe “direct injection” and “port injection” fuel management systems that work in tandem to provide beneficial ratios of fuel to an anti-knock agent at various torque and pressure levels.  EBS and MIT sued Ford in October 2020, and Ford responded by filing the IPRs at issue in this appeal.  In March 2021, the district court issued its claim construction ruling, agreeing with Ford that the claims require different fuels for the direct and port injection systems.  A few months later in July 2021, the PTAB denied institution of Ford’s petitioned IPRs, relying on this narrow, “different fuels” aspect of the district court’s construction.

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Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe

Jason A. Wrubleski, Shareholder