Uusi, LLC v. United States, 12-216C

• Decision Date: 17 April 2017
• Docket Number: No. 12-216C,12-216C
• Parties: UUSI, LLC, and OLDNAR CORP., Plaintiffs, v. THE UNITED STATES, Defendant and AM GENERAL, LLC., Third-Party Defendant.
• Court: U.S. Claims Court

UUSI, LLC, and OLDNAR CORP., Plaintiffs,
v.
THE UNITED STATES, Defendant
and
AM GENERAL, LLC., Third-Party Defendant.

No. 12-216C

United States Court of Federal Claims

April 17, 2017

28 U.S.C. § 1498(a); Patent Infringement; Claim Construction; Indefiniteness; 35 U.S.C. § 112, ¶ 2; Means Plus Function Claim; 35 U.S.C. § 112, ¶ 6.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP, 901 New York Avenue NW, Washington, D.C. 20001, for Plaintiffs.

Benjamin C. Mizer, John Fargo, and Conrad J. DeWitte, Jr., U.S. Department of Justice, Civil Division, Commercial Litigation Branch, P.O. Box 480, Benjamin Franklin Station, Washington, D.C. 20044, for Defendant. Gary L. Hausken and Michel E. Souaya, U.S. Department of Justice, Civil Division, Commercial Litigation Branch, P.O. Box 480, Benjamin Franklin Station, Washington, D.C. 20044, Of Counsel.

Nicole M. Jantzi, McDermott Will & Emery LLP, 500 North Capitol Street NW, Washington, D.C. 20001, for Third-Party Defendant. Paul M. Schoenhard and Ian B. Brooks, McDermott Will & Emery LLP, 500 North Capitol Street NW, Washington, D.C. 20001, Of Counsel. Robert K. Huffman, Thomas P. McLish, and Karen D. Williams, Akin Gump Strauss Hauer & Feld LLP, 1333 New Hampshire Avenue NW, Washington, D.C. 20036, Of Counsel.

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CLAIM CONSTRUCTION OPINION AND ORDER

WILLIAMS, Judge.

In this action, Plaintiffs UUSI, LLC and OLDNAR Corporation allege infringement of United States Patent Nos. 5,327,870; 5,729,456; 6,009,369; 6,148,258; 5,413,072; 5,507,255; and 5,570,666 through Third-Party Defendant AM General LLC's ("AM General") use and manufacture of starting systems for High Mobility Multipurpose Wheeled Vehicles for Defendant, the United States.¹ The patents-in-suit are directed to glow plugs - - the heating elements used to assist diesel engine start-up - - and glow plug controllers that cycle power to the glow plugs. The parties dispute the construction of claim terms in two of the seven asserted patents-in-suit - - U.S. Patent Nos. 5,327,870 ("the '870 Patent") and 6,148,258 ("the '258 Patent").

Background²

The patents-in-suit implicate various aspects of operating glow plugs - - heating devices used in diesel engines that aid in the combustion of fuel particularly during engine start-up. '258 Patent 1:29-31, 63-67. Diesel engines function by compressing air in a combustion chamber which causes the air to heat up to a temperature where fuel, when injected into the combustion chamber, will spontaneously ignite and continue to burn. '258 Patent 1:44-52. This fuel-air mixture "will not ignite" or "run efficiently" if the engine is cold. '258 Patent 1:52-54. Glow plugs are employed to help heat diesel engine compression chambers when ignition and combustion are impaired by "varying conditions" and thus are not able to reach "minimal operational temperature."

The '258 Patent explains:

Varying conditions (some widely varying) including: Engine temperature, ambient air temperature, ambient air absolute density, mass air flow, engine compression ratio, and fuel flash point temperature (being also some interrelated function of the above variable conditions) require various amounts of supplemental heat to be added to the combustion chamber prior to and during engine cranking and warmup to enable fuel ignition with sufficient combustion for engine operation during engine cranking conditions and cold engine warm up operation. To assist in bringing the combustion chambers above the necessary minimal operational

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temperature and/or to supply a source of combustion chamber ignition temperature, diesel engine glow plug heaters, otherwise called glow plugs, are employed.

'258 Patent 1:54-67.

The following image depicts a diesel engine combustion chamber with a glow plug just above the chamber:

Image materials not available for display.

DDX 4 at 22.

The following image shows a hot glow plug:

Image materials not available for display.

PDX 1 at 9.

The design of circuitry systems can improve glow plug operation by tailoring the temperature and duration of supplying power, or "energization" to the glow plug prior to engine start-up - - called preglow - - and then cycling power to pulse heat to the glow plugs so that a

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combustion chamber maintains a steady temperature - - called afterglow. '258 Patent 2:1-10; 2:22-41. Poorly regulated glow plug energization times lead to undesirable effects on engine start-up and efficiency:

Excessive glow plug power energization time causes higher than desired glow plug temperatures which can result in significantly shortened life of the glow plugs, in addition to wasting of energy and unnecessary long time before the engine can be started. Insufficient glow plug power ON time will cause lower than desired glow plug temperatures and reduced supplemental heat which can result in: Inability to start engine, excessive cranking time, starter motor wear, undesirable hydrocarbon exhaust emissions, white smoke of completely combusted fuel, increased fuel consumption[.]

'258 Patent 2:1-10.

Overview of U.S. Patent No. 5,327,870

The '870 Patent titled "Glow Plug Controller" was filed on August 26, 1993, and issued on July 12, 1994. The '870 Patent is a continuation in part of U.S. Patent Application No. 07/785,462 filed October 31, 1991, now abandoned.

The '870 Patent is directed to the housing and circuitry of a glow plug controller with a "packaging means for facilitating rapid and inexpensive assembly." '870 Patent Abstract.³ The described packaging is a "two-chamber tubular housing" with a smaller first chamber and a larger second chamber. '870 Patent Abstract. The "general object" of the '870 Patent is to "provide improved glow plug controller circuitry, and mounting and housing structure for such a glow plug controller, to enhance the efficacy of control of operation of the glow plugs . . . and to enhance the durability, reliability and ease of assembly of the glow plug controller." '870 Patent 3:11-17. Only one term is at issue in this patent - - the term "remote" that appears in Claim 9, which depends on Claim 1.

Independent Claim 1 is illustrative of the '870 Patent:

1. A glow plug controller comprising:

a) a generally tubular housing having a wall defining a first chamber and a second chamber and a second chamber communicating with said first chamber, the portion of the outer surface of the wall which defines said first chamber being a threaded portion for threaded engagement in hole;
b) glow plug controller circuitry⁴ including a temperature sensor located within said threaded portion and circuitry for controlling glow plug operation as a function of sensed temperature, said temperature sensor being located within said

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first chamber and wherein glow plug controller circuitry is located within said second chamber of said housing; and
c) means for conductively coupling said glow plug controller circuitry to other circuitry external to said housing.

'870 Patent 10:43-60 (as amended by a Certificate of Correction dated September 20, 1994).

Claim 9 depends on Claim 1 and contains the disputed term "remote," and states:

9. The glow plug controller of Claim 1, wherein:
a) said glow plug controller circuitry comprises power supply circuitry, and
b) said power supply circuitry is located within said housing at a location remote from said temperature sensor.

'870 Patent 11:23-28 (emphasis added).

Overview of U.S. Patent No. 6,148,258

The '258 Patent titled "Electrical Starting System for Diesel Engines" issued on November 14, 2000, from U.S. Application No. 09/076,291 ("the '291 Application") filed May 12, 1998. The '291 Application is a continuation-in-part of U.S. Application No. 08/931,470, which is a continuation-in-part of Application No. 08/508,063, which is a continuation of Application No. 08/042,239, which is a continuation of Application No. 07/785,462, filed on October 31, 1991, now abandoned. The claims of the '258 Patent expired on November 14, 2012, due to nonpayment of maintenance fees. Institution Decision, AM Gen., LLC v. UUSI, LLC, No. IPR 2016-01050 (P.T.A.B. Nov. 14, 2016) ("Institution Decision").⁵

The '258 Patent is directed to an "integrated electronic starting control system module for diesel engines." '258 Patent Abstract. This "integrated" modular device improves "control, performance, diagnostics, monitoring, adaptability, and compensation pertaining to glow plugs, starter motor actuation, and battery power application for diesel engine applications." '258 Patent 1:17-22. By integrating and incorporating this improved circuitry "into a single engine electronic starting system," or EESS, the claimed invention of the '258 Patent produces "a multiplicity of desirable characteristics for implementing the safe, reliable and efficient operation of the components of a diesel engine electrical control system." '258 Patent 3:26-31.

Independent Claim 1 is illustrative of the invention:

1. For use with a motor vehicle diesel engine having one or more glowplugs for maintaining temperature control of one or more diesel engine combustion chambers, apparatus comprising:

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a) a starter control housing supported by the motor vehicle and including a cable connector for routing energization signals into a housing interior from a vehicle mounted power source for use in energizing the glow-plugs;
b) monitor circuitry supported within a housing interior for providing an indicator signal corresponding to a voltage applied to the one or more glowplugs;
c) a programmable controller supported within the housing interior that is coupled to the monitor circuitry and produces a control output for supplying energy to the glowplugs;
d) at least one switching device supported within the housing interior that is coupled to the control output from the programmable controller for energizing the one or more glow plugs in a controlled time sequence prior to, during an/or after engine cranking by selectively coupling the energization signals to the glowplugs; and

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