Untitled case

Case Overview: Ford Motor Company Challenges MIT's Engine Knock Patents at PTAB

This Inter Partes Review (IPR) case, IPR2021-00340, involves a challenge by Ford Motor Company (Petitioner), a major automotive manufacturer, against U.S. Patent 10,781,760, owned by the Massachusetts Institute of Technology (MIT) (Patent Owner) and exclusively licensed to Ethanol Boosting Systems, LLC (EBS). The patent at issue, 10,781,760, is titled "Optimized Fuel Management System for Direct Injection Ethanol Enhancement of Gasoline Engines." It technically describes a system for internal combustion engines designed to mitigate "engine knock" and improve efficiency by injecting an "anti-knock agent," such as ethanol, directly into the engine cylinder to facilitate "evaporative cooling," utilizing both direct and port injection mechanisms.

The dispute originated from a patent infringement lawsuit filed by EBS against Ford in October 2020, alleging that Ford's internal combustion engines infringed the asserted patents. In response, Ford petitioned the Patent Trial and Appeal Board (PTAB) for IPRs, challenging the validity of patent 10,781,760 along with two related patents (10,619,580 and 9,708,965). The procedural posture of this case is significant, as the PTAB initially denied Ford's petitions for IPR. However, after Ford requested a rehearing, and following a Federal Circuit decision in a related district court claim construction appeal, the PTAB reconsidered and instituted the IPRs. Ultimately, the PTAB issued Final Written Decisions finding all challenged claims in patent 10,781,760 (and its related patents) unpatentable as obvious. This decision was subsequently affirmed by the U.S. Court of Appeals for the Federal Circuit on December 23, 2025.

This case is notable due to the prominent parties involved – a major automotive manufacturer challenging a foundational academic institution and its licensee – and the critical technology concerning fuel efficiency and emissions reduction in internal combustion engines, an area of substantial industry and regulatory interest. Furthermore, the procedural journey through the PTAB and the Federal Circuit highlights the complex interplay between district court litigation and IPR proceedings, particularly concerning claim construction and the PTAB's discretionary authority. The Federal Circuit's affirmance reinforced that challenges to the PTAB's institution decisions are largely insulated from appellate review under 35 U.S.C. § 314(d). The outcome effectively extinguished the enforceability of patent 10,781,760 and its companion patents against Ford and other parties.

This case, IPR2021-00340, has a complex procedural history involving both district court litigation and Inter Partes Review (IPR) proceedings.

Filing & Initial Pleadings (District Court)

• October 2020: Ethanol Boosting Systems, LLC (EBS) and the Massachusetts Institute of Technology (MIT) (collectively, EBS) sued Ford Motor Company (Ford) for patent infringement in district court, alleging that Ford's internal combustion engines infringed U.S. Patent Nos. 10,619,580, 10,781,760, and 9,708,965. The patents relate to optimized fuel management systems for direct injection ethanol enhancement of gasoline engines.

Parallel PTAB IPR Proceedings and Their Effect

• December 24, 2020: While the district court litigation was pending, Ford filed IPR petitions challenging the validity of all three asserted patents, including 10,781,760, with the Patent Trial and Appeal Board (PTAB).

Claim Construction (Markman) Outcomes

• March 25, 2021: The district court issued its claim construction ruling. The court adopted Ford's proposed construction for "direct injection fuel" (DI Fuel) terms, requiring (1) different fuel for direct injection and port injection and (2) an anti-knock agent other than gasoline.
• July 2, 2021: The PTAB, relying on the district court's narrow claim construction requiring different fuels, initially denied institution of Ford's IPR petitions.
• August 2, 2021: Ford requested a rehearing of the PTAB's decision to deny institution, asking the Board to delay reconsideration until the Federal Circuit ruled on EBS's appeal of the district court's claim construction.

Appeal of Claim Construction & PTAB Reconsideration

• December 11, 2020: In a separate appeal (likely related to an earlier phase or preliminary injunction), the Federal Circuit affirmed a district court's decision in Ethanol Boosting Systems, LLC v. Ford Motor Company, Case No. 20-1472.
• July 18, 2022: The Federal Circuit, in Ethanol Boosting Systems, LLC v. Ford Motor Company (EBS I), Case No. 21-1949, vacated the district court's judgment of non-infringement. The Federal Circuit found that the "direct" and "port" injection systems did not require different fuels, thereby rejecting a key aspect of the district court's claim construction. This decision effectively broadened the scope of the claims, encompassing single-fuel embodiments.
• November 21, 2022: A few months after the Federal Circuit's decision, the PTAB granted Ford's rehearing request and instituted IPRs against the challenged patents, including 10,781,760, based on the broader claim construction from the Federal Circuit's EBS I ruling.

Final Disposition of IPRs and Federal Circuit Appeal

• November 20, 2023: The PTAB issued Final Written Decisions for IPR2021-00340 (and its companion IPRs), finding all challenged claims in Patent No. 10,781,760 (and 10,619,580 and 9,708,965) unpatentable as obvious under 35 U.S.C. § 103.
• January 24, 2024: EBS and MIT jointly appealed the PTAB's unpatentability determination to the U.S. Court of Appeals for the Federal Circuit (Case No. 24-1382 for IPR2021-00340, and 24-1381, 24-1383 for the companion IPRs).
• December 23, 2025: The Federal Circuit affirmed the PTAB's Final Written Decisions, upholding the finding that all challenged claims in U.S. Patent Nos. 10,619,580, 10,781,760, and 9,708,965 were unpatentable as obvious. The Federal Circuit rejected EBS's arguments, including the challenge that the PTAB impermissibly "stayed" its rehearing decision for 15 months, finding such arguments to be unappealable challenges to the institution decision under 35 U.S.C. § 314(d). The Federal Circuit also found no reversible error in the PTAB's claim construction or its factual findings regarding prior art and motivation to combine. The outcome effectively extinguished the enforceability of these patents against Ford and other parties.

The petitioner in this IPR case is Ford Motor Company. The counsel of record representing Ford Motor Company include:

• Aaron B. Rabinowitz - Partner at BakerHostetler (Philadelphia, PA office).
  • Experience: Co-leader of BakerHostetler's IP Technology team, with over 15 years of experience building and maintaining patent and trade secret portfolios. He has a favorable track record in patent office examination and appeal procedures. He has also handled patent portfolio management for a leading automotive manufacturer, including counseling related to patent prosecution of various automobile technologies.
• Michael J. Flibbert - Partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, D.C. office).
  • Experience: Lead counsel in IPR proceedings before the PTAB, district court litigations, and appeals at the U.S. Court of Appeals for the Federal Circuit. He has over 20 years of patent litigation experience, representing clients in cases involving pharmaceuticals, biotechnology, chemistry, and chemical engineering.
• Scott Border - Attorney at Sidley Austin LLP (Washington, D.C. office).
  • Experience: Practiced intellectual property litigation and appellate issues. He was previously an attorney at Winston & Strawn LLP.
• William Millard - While a specific role (e.g., lead counsel) is not explicitly stated for this IPR, William B. Millard is an attorney admitted to practice in Michigan, where Ford Motor Company is based. He is a member at DeMent and Marquardt, P.L.C. (Kalamazoo, MI). His practice areas include estate planning and administration, and he has been recognized as a Michigan Leading Lawyer in Trust, Will, and Estate Planning Law. His general litigation experience may be relevant, though his specific role in this patent infringement case is not detailed in the provided information.
• Steven P. Croley - Chief Policy Officer and General Counsel for Ford Motor Company.
  • Role: In-house counsel.
  • Experience: Former General Counsel of the U.S. Department of Energy, where his responsibilities included all litigation, regulation, intellectual property, and government contracts. He also served in the Office of White House Counsel.
• Joe Benz - Former President and Chief Operating Officer for Ford Global Technologies and Chief IP Counsel to the Ford Motor Company.
  • Role: Likely in-house counsel during at least part of the relevant period.
  • Experience: Over 20 years of experience in intellectual property law, the automotive industry, and international technology licensing. He has represented clients in numerous Federal District Courts and before the International Trade Commission. He is currently the Chief Legal Officer at WiTricity.
• Jonathan B. Roses - Shareholder in Wolf Greenfield's Pharmaceutical Practice Group (Boston, MA office).
  • Experience: Manages large U.S. and international patent portfolios, advises clients on IP strategy, and represents life sciences companies in contested matters, including post-grant and federal district court proceedings.
• Brooks Kushman Attorneys - In other IPR proceedings for Ford, specifically IPR2025-01342, -01383, and -01524, attorneys from Brooks Kushman, including Andrew Turner, John LeRoy, Christopher Smith, Kyle Konz, and Yasmeen Moradshahi, represented Ford. While this is for different IPRs, it indicates Brooks Kushman's involvement with Ford on PTAB matters. John LeRoy and Christopher Smith also represented Ford in a separate patent infringement lawsuit.

The defendant in this IPR case is Ford Motor Company, the petitioner who challenged the patent at the PTAB. Ethanol Boosting Systems, LLC (EBS) and the Massachusetts Institute of Technology (MIT) are the Patent Owners.

Based on the publicly available information, the following counsel represented Ford Motor Company (Petitioner/Defendant-Appellee) in the IPR proceedings and the subsequent Federal Circuit appeal:

• Scott A. McKeown - Lead Counsel.
  • Firm: Wolf, Greenfield & Sacks, P.C. (Washington, D.C. office).
  • Experience: Mr. McKeown is a prominent PTAB trial attorney, recognized for handling over 500 PTAB matters since 2012, including those involving over $500 million. He is a Professorial Lecturer in Law at The George Washington University Law School and a Founding Director of the PTAB Bar Association. He also maintains the award-winning blog, PatentsPostGrant.com. He previously chaired the PTAB group at an Am Law 10 law firm.

While the IPR proceeding itself is administrative, the "defendant" in the underlying patent infringement context (from which the IPR arose) would be Ford Motor Company. In the Federal Circuit appeal regarding the IPRs, Ford Motor Company was the appellee.

It's worth noting that in the earlier district court litigation and the first Federal Circuit appeal (EBS I) concerning claim construction, Michael S. Connor of Alston & Bird LLP argued for Ford Motor Company. However, for the IPR and the subsequent Federal Circuit affirmance of the PTAB's unpatentability decision, Scott McKeown of Wolf Greenfield is identified as key counsel for Ford.

Counsel for Ethanol Boosting Systems, LLC and Massachusetts Institute of Technology (Patent Owner/Plaintiffs-Appellants):

• Jonathan E. Singer - Lead Counsel.
  • Firm: Fish & Richardson P.C. (San Diego, CA office).
  • Experience: Mr. Singer is a renowned trial attorney with over three decades of experience in life sciences patent litigation. He founded Fish & Richardson's Life Sciences Industry Team and has successfully handled significant pharmaceutical disputes, including twice achieving reversal of a Federal Circuit decision at the U.S. Supreme Court in Prometheus Laboratories v. Mayo Collaborative Services. He also argued post-trial motions that led to the vacatur of a $2.5 billion jury verdict against Gilead in Idenix Pharms, LLC v. Gilead Sciences, Inc.

In the Federal Circuit appeals, Andres Healy of Susman Godfrey LLP also argued for the plaintiffs-appellants (Ethanol Boosting Systems, LLC and Massachusetts Institute of Technology).