Case: 21-1949 Document: 36 Page: 1 Filed: 07/18/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ETHANOL BOOSTING SYSTEMS, LLC,
MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
Plaintiffs-Appellants
v.
FORD MOTOR COMPANY,
Defendant-Appellee
______________________
2021-1949
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:20-cv-00706-CFC-JLH, Judge
Colm F. Connolly.
______________________
Decided: July 18, 2022
______________________
STEVEN M. SEIGEL, Susman Godfrey LLP, Seattle, WA,
argued for plaintiffs-appellants. Also represented by
MATTHEW ROBERT BERRY, ANDRES HEALY.
MICHAEL S. CONNOR, Alston & Bird LLP, Charlotte,
NC, argued for defendant-appellee. Also represented by
KIRK T. BRADLEY; NATALIE CHRISTINE CLAYTON, ANDREW
JAMES LIGOTTI, New York, NY.
______________________
Case: 21-1949 Document: 36 Page: 2 Filed: 07/18/2022
2 ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY
Before MOORE, Chief Judge, NEWMAN and HUGHES,
Circuit Judges.
Opinion for the court filed by Chief Judge MOORE
Dissenting opinion filed by Circuit Judge NEWMAN
MOORE, Chief Judge
Ethanol Boosting Systems, LLC and Massachusetts In-
stitute of Technology (collectively, EBS) appeal an order of
the United States District Court for the District of Dela-
ware granting judgment of non-infringement of the as-
serted patents in favor of Ford Motor Co. (Ford). Because
the district court’s judgment is based on erroneous claim
construction, we vacate and remand.
BACKGROUND
The asserted patents disclose a fuel management sys-
tem for enhanced operation of a spark ignition gasoline en-
gine. 1 ’580 patent at Abstract. The fuel management
system controls engine knocking by injecting an anti-knock
agent, which is a fuel, directly into a combustion cylinder.
Id.; see id. at 1:61–65. In one embodiment, the system in-
cludes (1) a direct-injection system for directly injecting a
mixture of an anti-knock agent and fuel and (2) a port-in-
jection system for port injecting part of the fuel, which is
gasoline. Id. at 2:9–12, claim 1. Preferably, the anti-knock
agent is ethanol. Id. at 2:8–11. Critical to this appeal, how-
ever, the asserted patents also state, “[i]n order to obtain
the highest possible octane enhancement while still main-
taining combustion stability, it may be useful for 100% of
the fuel to come from ethanol with a portion being port in-
jected, as an alternative to a small fraction of the port-
1 The asserted patents are U.S. Patent Nos.
9,708,965; 10,619,580; and 10,781,760. We cite the ’580 pa-
tent as representative of the asserted patents.
Case: 21-1949 Document: 36 Page: 3 Filed: 07/18/2022
ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY 3
fueled gasoline.” Id. at 3:34–38 (emphasis added). Claim
1 recites in relevant part:
A fuel management system for a spark ignition en-
gine, comprising:
a first fueling system that uses direct injec-
tion; [and]
a second fueling system that uses port fuel
injection . . . .
EBS filed this action in the District of Delaware, alleg-
ing Ford infringes several claims of the asserted patents.
During claim construction proceedings, EBS argued fuel
used in the direct-injection system does not need construc-
tion. Ford argued that 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.” J.A. 23–25, 44–46.
The district court adopted Ford’s construction from the
bench. J.A. 44–46. It reasoned “the specification . . . makes
clear that what is invented is a dual fuel engine.” J.A. 44
at 21:16–17 (emphasis added). The district court relied on
the asserted patents’ titles, which are an “[o]ptimized fuel
management system for direct injection ethanol enhance-
ment of gasoline engines,” ’580 patent at [54], their back-
ground sections, their figures, which the district court
noted do not “depict the use of a single fuel engine,” J.A. 45
at 22:7–10, and their “repeated[] refer[ences] to the inven-
tion as directly injecting ethanol or another second fuel
that is not gasoline,” J.A. 45 at 22:11–16. Regarding the
embodiment that uses 100% ethanol, the district court ex-
plained it is in the context of a dual-fuel engine and, thus,
“is far different from teaching a single fuel engine.” J.A. 45
at 24:2–25.
In view of the district court’s construction, the parties
stipulated to judgment of non-infringement of the asserted
Case: 21-1949 Document: 36 Page: 4 Filed: 07/18/2022
4 ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY
patents. EBS appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
DISCUSSION
EBS contends that the district court erred in constru-
ing the first fueling system to be limited to using fuels dif-
ferent than the fuel in the second system because there is
no clear disclaimer of a single-fuel invention. We agree.
We review claim construction based solely upon the in-
trinsic record de novo. Intell. Ventures I LLC v. T-Mobile
USA, Inc., 902 F.3d 1372, 1377 (Fed. Cir. 2018). Claim
terms are generally given their ordinary and customary
meaning, i.e., the meaning that the terms would have to a
person of ordinary skill in the art when read in the context
of the specification and prosecution history. Phillips v.
AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en
banc). We depart from the ordinary and customary mean-
ing in only two instances: lexicography and disavowal. GE
Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304,
1309 (Fed. Cir. 2014). Only disavowal is relevant to this
appeal. The standard for disavowal is exacting. Id. Disa-
vowal requires that “the specification [or prosecution his-
tory] make[] clear that the invention does not include a
particular feature.” Id.
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.
Respondent’s Br. 44 (“Although the claims themselves may
be silent as to the specific ‘fuel that is to be injected . . . .’”);
Oral Arg. 23:40–23:53. 2 Ford, instead, argues that the
specification and prosecution history compel such a result.
2 Available at https://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=21-1949_0407202
2.mp3.
Case: 21-1949 Document: 36 Page: 5 Filed: 07/18/2022
ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY 5
The asserted patents’ specifications do not impose a
single-fuel requirement either. To the contrary, they dis-
close an embodiment in which “100% of the fuel . . . come[s]
from ethanol with a small fraction being port injected.”
’580 patent at 3:34–38. The district court’s construction re-
quiring two different fuels would exclude this disclosed em-
bodiment. Moreover, even if Ford and the district court
were correct that the specification discloses only dual-fuel
systems, “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 em-
bodiment.” Phillips, 415 F.3d at 1323.
Ford argues that the specification disavows single-fuel
systems because it describes “the invention” as requiring a
direct-injection fuel different than a port-injection fuel.
Appellee’s Br. 33 (citing ’580 patent at 1:31–34, 2:9–11,
13:26–28, 16:26–28). None of the cited passages, however,
amount to a clear and unmistakable disavowal of single-
fuel systems. For example, Ford cites the statement, relied
on by the district court, that “[t]his invention relates to an
optimized fuel management system for use with spark ig-
nition gasoline engines in which an anti-knock agent which
is a fuel is directly injected.” ’580 patent at 1:31–34. At
best, this background statement merely contemplates us-
ing the invention with a gasoline engine to directly inject
an anti-knock agent, which the parties agree is not gasoline
for purposes of this appeal. Critically, the statement does
not require using gasoline in either fueling system or disa-
vow systems that use other fuels. Such a requirement
would be inconsistent with the 100% ethanol embodiment,
id. at 3:34–38, and the specification’s disclosure that the
“port injected fuel can be either gasoline or ethanol,” id. at
7:27–28 (emphasis added). See Cont’l Cirs. LLC v. Intel
Corp., 915 F.3d 788, 798 (Fed. Cir. 2019) (holding descrip-
tions of the “present invention” were not limiting “where
other portions of the intrinsic evidence do not support ap-
plying the limitation to the entire patent”). Because these
Case: 21-1949 Document: 36 Page: 6 Filed: 07/18/2022
6 ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY
statements do not describe all embodiments, they do not
describe the invention as a whole. See Regents of Univ. of
Minnesota v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir.
2013) (“When a patent thus describes the features of the
‘present invention’ as a whole, this description limits the
scope of the invention.” (quoting Verizon Servs. Corp. v.
Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir.
2007))). We conclude that Ford has not established that
the specification disavows single-fuel systems in the as-
serted patents.
Ford also cites, as the district court did, the asserted
patents’ titles. Appellee’s Br. 35; J.A. 44 at 21:17–21. “[I]f
we do not read limitations into the claims from the specifi-
cation that are not found in the claims themselves, then we
certainly will not read limitations into the claims from the
patent title.” Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1312 (Fed. Cir. 1999). In any event, the ti-
tles’ reference to “ethanol enhancement of gasoline en-
gines” is not a clear and unmistakable disavowal of single-
fuel systems, particularly in view of the disclosed 100% eth-
anol embodiment. Accordingly, the patents’ titles do not
support the district court’s imported claim requirement of
two different fuels.
Our construction of the claims is not inconsistent with
our decision in Ethanol Boosting Systems, LLC v. Ford Mo-
tor Co., 831 F. App’x 505 (Fed. Cir. 2020) (non-precedential)
(EBS I). There, we summarily affirmed the district court’s
claim construction requiring dual fuels for the EBS I pa-
tents, which derive from the parent application of the as-
serted patents. 3 Id. at 505. Ford argues EBS I compels the
same claim construction here. See Appellee’s Br. 52–57.
The EBS I patents, however, are different from the pa-
tents-in-suit. For example, the EBS I patents, e.g., ’519
3 The EBS I patents are U.S. Patent Nos. 8,069,839;
9,255,519; 9,810,166; and 10,138,826.
Case: 21-1949 Document: 36 Page: 7 Filed: 07/18/2022
ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY 7
patent at 5:46–57 (describing direct injection of ethanol),
do not disclose 100% ethanol being port injected and direct
injected as an alternative to port-injected gasoline. When
related patents have different specifications, and as in this
case different disclosures which are directly relevant to the
claim term at issue, different claim constructions can re-
sult.
Likewise, statements made during the prosecution of a
different EBS patent do not require importing a limitation
into the district court’s construction in this case. See Ap-
pellee’s Br. 47–48 (citing U.S. Patent App. No. 11/758,157).
That patent, like the EBS I patents, is different from the
asserted patents. For example, its claims explicitly recite
different fuel types in each fueling system. See J.A. 4015.
There is no inconsistency between our holding today and
the prosecution history of a different patent with different
claim language.
CONCLUSION
The district court erred in construing the claims to re-
quire a dual-fuel system. We therefore vacate the district
court’s non-infringement judgment premised on that erro-
neous construction and remand for further proceedings.
VACATED AND REMANDED
COSTS
Costs are awarded to EBS.
Case: 21-1949 Document: 36 Page: 8 Filed: 07/18/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ETHANOL BOOSTING SYSTEMS, LLC,
MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
Plaintiffs-Appellants
v.
FORD MOTOR COMPANY,
Defendant-Appellee
______________________
2021-1949
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:20-cv-00706-CFC-JLH, Judge
Colm F. Connolly.
______________________
NEWMAN, Circuit Judge, dissenting.
I respectfully dissent. The panel majority departs from
the rule that patent claims are construed in accordance
with the invention described in the specification. Claims
cannot be construed to cover subject matter different from
what the patentee described as the invention. “Ultimately,
‘[t]he only meaning that matters in claim construction is
the meaning in the context of the patent.’” Ruckus Wire-
less, Inc. v. Innovative Wireless Sols., LLC, 824 F.3d 999,
1003 (Fed. Cir. 2016) (quoting Trs. of Columbia Univ. v.
Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016)); see
Case: 21-1949 Document: 36 Page: 9 Filed: 07/18/2022
2 ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY
also Trs. of Columbia, 811 F.3d at 1363 (“claims must be
read in view of the specification, of which they are a
part” (quoting Markman v. Westview Instruments, Inc., 52
F.3d 967, 978 (1995) (en banc))). The district court so con-
strued the claims.
The specification describes a system using both di-
rectly-injected fuel and port-injected fuel, where the di-
rectly-injected fuel includes an anti-knock agent such as
ethanol, and the port-injected fuel is different from the di-
rectly-injected fuel. The panel majority errs in construing
the claims to include a system in which the fuels are not
different. The district court correctly rejected that con-
struction. 1 I respectfully dissent from my colleagues’ erro-
neous claim construction, and their incorrect departure
from the law of claim construction.
DISCUSSION
Ethanol Boosting Systems and MIT (collectively
“EBS”) own United States Patents No. 9,708,965;
10,619,580; and 10,781,760. The three patents are titled
“Optimized Fuel Management System for Direct Injection
Ethanol Enhancement of Gasoline Engines,” and the spec-
ifications are substantially the same. The patents describe
and claim a fuel system having both direct injection and
port injection systems, where the direct injection fuel con-
tains both gasoline and an anti-knock agent such as etha-
nol, and is different from the fuel in the port-injection
1 Ethanol Boosting Systems, LLC v. Ford Motor Co.,
No. 1:20-cv-00706-CFC-JLH, ECF 71 (D. Del. Mar. 25,
2021) Reasoning for the district court’s claim construction
is articulated in the transcript of the court’s March 16,
2021 Markman hearing (“Claim Construction”), Appx39–
84.
Case: 21-1949 Document: 36 Page: 10 Filed: 07/18/2022
ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY 3
system. See, e.g., ’580 patent; Claim Construction at 21:18;
(Appx44).
EBS sued Ford Motor Company for infringement, and
the district court construed the term “fuel” in the claim
clause “directly injected/first fueling system,” as “a fuel
that contains an anti-knock agent that is not gasoline and
that is different from the fuel used for port injection in the
second fueling system.” Claim Construction at 29:2–4;
(Appx46). After the district court adopted this construc-
tion, the parties stipulated to non-infringement.
My colleagues now hold that the claims should be con-
strued to include systems where the same fuel is used for
both direct injection and port injection. The panel major-
ity’s claim construction departs from the specification and
contradicts the prosecution history.
The district court observed that the specification “rec-
ognizes 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 . . . .” Claim Construction at 25:6–9; (Appx45). The
district court referred to an example in the specification
that used 100% ethanol in both the port- and direct-injec-
tion systems, stating:
from this we can discern that taken in context, this
first passage is merely discussing how this dual
fuel engine can adjust the relative amounts of eth-
anol and gasoline used and contemplating the fact
that under certain conditions, the use of ethanol
may go up to 100 percent.
Claim Construction at 24:7–11; (Appx45). 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.
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4 ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY
The district court construed the claims in light of the
specification and the prosecution history, to require that
the direct injection system uses a mixture of gasoline and
ethanol. Claim Construction at 24–29; (Appx45–46). The
district court took into account the title of the patents, in
construing the claims. Id. at 21:18–21; (Appx44).
The title is a factor in the construction of claims. In
Corning v. Burden, the Supreme Court determined that the
case turned on the question: “Is the plaintiff’s patent for a
process or a machine?” 56 U.S. 252, 267 (1853). The Court
explained that since the title was for a machine, it would
constitute error “to construe his claim as for the function,
effect, or result of his machine.” Id. at 269. See In re Fong,
288 F.2d 932, 936 (CCPA 1961) (reading the specification
“from its title to its end . . . .”).
The panel majority holds that the claims are not lim-
ited by the title, citing Pitney Bowes, Inc. v. Hewlett-Pack-
ard Co., 182 F.3d 1298 (Fed. Cir. 1999) for its statement
that “if we do not read limitations into the claims from the
specification that are not found in the claims themselves,
then we certainly will not read limitations into the claims
from the patent title.” Id. at 1312. This statement, what-
ever its applicability on the facts of Pitney Bowes, cannot
change the law that claims are construed in light of the
specification, and the specification starts with the title.
A title is required by statute. 35 U.S.C. § 154(a)(1)
(“Every patent shall contain a short title of the inven-
tion . . .”). In Exxon Chem. Patents, Inc. v. Lubrizol Corp.,
64 F.3d 1553, 1557 (Fed. Cir. 1995), the court looked first
to the title and specification “as [an] interpretive aid,” (cit-
ing Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775,
780 (Fed. Cir. 1985)). In UltimatePointer, L.L.C. v. Nin-
tendo Co., 816 F.3d 816 (Fed. Cir. 2016), the court ad-
dressed a patent titled “Easily–Deployable Interactive
Direct Pointing System,” and observed that the title
Case: 21-1949 Document: 36 Page: 12 Filed: 07/18/2022
ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY 5
showed that the claimed invention was limited to a direct
pointing system. Id at 823. The court stated:
The specification repeatedly emphasizes that the
invention is directed to a direct-pointing system.
The title of the invention explicitly states that the
invention is an “Easily–Deployable Interactive Di-
rect Pointing System . . .”.
Id. (citing Exxon, 64 F.3d at 1557 (emphasis original)). In
Ruckus Wireless, 824 F.3d at 1003, the court applied the
title, “Communicating Information Packets Via Telephone
Lines,” to construe the claims as excluding wireless com-
munication. See also, e.g., Endo Pharms. Inc. v. Teva
Pharms. USA, Inc., 919 F.3d 1347, 1353 (Fed. Cir. 2019)
(“Consistent with the claims, the abstract, patent title, and
summary of the invention all describe the invention as a
‘method of treating pain’ in patients with renal impair-
ment.”); Bondyopadhyay v. United States, 748 F. App’x 301,
306 (Fed. Cir. 2018) (“The title of the patent and its speci-
fication further support the notion that the only phased ar-
ray antenna structure claimed is in the shape of a geodesic
sphere.”).
The panel majority errs in discarding the title and
adopting a claim construction that departs from the de-
scription in the specification. The panel majority states
that the specification discloses systems where the same
fuel is used for both direct injection and port injection sys-
tems, requiring that the claims be construed to cover such
systems. However, as Ford explains, the comparative data
are included in the specification for purpose of comparison,
to demonstrate the advantages of the claimed dual fuel sys-
tem. Ford states:
Thus, far from describing a single-fuel embodiment
where only ethanol is both direct injected and port
injected, as EBS posits, Table 2 merely provides
data for port injection of ethanol in order to com-
pare those results to the results achieved by
Case: 21-1949 Document: 36 Page: 13 Filed: 07/18/2022
6 ETHANOL BOOSTING SYSTEMS, LLC v. FORD MOTOR COMPANY
directly injecting ethanol at different times (late
versus early). [’580 patent], 5:44–6:41. In fact, Ta-
ble 2 confirms the “negligible impact” of port injec-
tion of ethanol over the “[c]onventional gasoline
engines” of the prior art. [’580 patent], 5:41–44,
6:18–21 (1.05 bar for port injection of ethanol),
6:31–37 (1 bar for “[c]onventional gasoline en-
gines”).
Ford Br. 14. As Ford observes, where a specification “re-
peated[ly] disparages” prior art devices, the skilled artisan
would not “read the claims of the patents-in-suit to cover
such devices. . . .” Openwave Sys. v. Apple Inc., 808 F.3d
509, 517 (Fed. Cir. 2015)).
The prosecution history conforms to the district court’s
construction. In prosecuting a parent application with the
same specification, EBS distinguished a reference on the
ground that the reference used only a single fuel.
Appx4022. “Beyond the notice function and reliance-based
aspects of a patent’s prosecution history, it ‘provides evi-
dence of how the [PTO] and the inventor understood the
patent.’” Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713
F.3d 1090, 1095 (Fed. Cir. 2013). While the parties in Bio-
gen focused on the question of disclaimer, the prosecution
history here shows how the patentee viewed the dual fuel
system as a distinction from the prior art.
Construing the claims to include a single-fuel engine
disregards both the specification and the prosecution his-
tory. The majority errs in applying a claim construction
that is not supported by the record. The district court cor-
rectly construed the claims, whereas the panel majority’s
claim construction contravenes the rules of claim construc-
tion. I respectfully dissent.