Ethanol Boosting Systems, LLC v. Ford Motor Company

This case, Ethanol Boosting Systems, LLC v. Ford Motor Company, involved a dispute over patents related to fuel management systems in internal combustion engines. Plaintiff Ethanol Boosting Systems, LLC (EBS) is an exclusive licensee of patents owned by the Massachusetts Institute of Technology (MIT), operating as a patent assertion entity (PAE). Defendant Ford Motor Company is a multinational American automobile manufacturer that produces a wide range of vehicles, including those with internal combustion engines. EBS accused Ford's internal combustion engines, particularly those utilizing dual fuel injection systems, of infringing its patents.

The core of the dispute centered on U.S. Patent No. 9,708,965, along with related U.S. Patent Nos. 10,619,580 and 10,781,760, which describe advanced fuel management systems for spark-ignition engines. These patents claim dual-injection engine architectures that combine direct injection and port fuel injection to mitigate "engine knock" through evaporative cooling from the directly injected fuel, particularly an anti-knock agent, and aim to improve efficiency and reduce emissions.

The procedural posture of this case began with EBS suing Ford for patent infringement in district court in October 2020, prompting Ford to petition the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of the asserted patents. After an initial denial of institution by the PTAB, Ford successfully petitioned for rehearing following an earlier Federal Circuit decision (EBS I) that vacated a district court's claim construction in the parallel infringement suit. The PTAB subsequently instituted IPRs and found the challenged claims of all three patents unpatentable as obvious under 35 U.S.C. § 103. This case (Appeal No. 24-1383, consolidated with 24-1381 and 24-1382) was an appeal by EBS and MIT to the U.S. Court of Appeals for the Federal Circuit, which affirmed the PTAB's decisions on December 23, 2025. The Federal Circuit, with Judge Chen authoring the opinion, joined by Judges Clevenger and Hughes, found no reversible error in the PTAB's findings. This venue, the Federal Circuit, is the exclusive appellate court for patent matters, making its decisions final on patent validity absent Supreme Court review.

This case is notable due to its complex procedural history, illustrating the intricate interplay between district court litigation and PTAB inter partes review proceedings, particularly regarding claim construction and the timing of IPR institution decisions. The Federal Circuit's decision also reinforced the high bar for challenging PTAB institution decisions under 35 U.S.C. § 314(d). For the automotive industry, the affirmation of unpatentability for these fuel management system patents eliminates them as an enforcement threat, impacting technology related to high-efficiency internal combustion engine design and emissions reduction strategies.

The case "Ethanol Boosting Systems, LLC v. Ford Motor Company" at the Federal Circuit (24-1383) is an appeal of a Patent Trial and Appeal Board (PTAB) decision. The core dispute involves the unpatentability of US Patent No. 9,708,965, along with two other related patents (10,619,580 and 10,781,760) owned by the Massachusetts Institute of Technology (MIT) and exclusively licensed to Ethanol Boosting Systems, LLC (EBS).

Here's a chronological breakdown of the key legal developments and outcome:

I. Underlying District Court Litigation (October 2020 - July 2022)

• October 2020: Complaint Filed. EBS and MIT sued Ford Motor Company for patent infringement in a district court.
• December 24, 2020: Ford Files IPR Petitions. While the district court claim construction was pending, Ford petitioned the PTAB for inter partes review (IPR) of the patents, including US Patent No. 9,708,965. Ford's petitions initially proposed construing the "DI Fuel" terms under their plain and ordinary meaning, mirroring EBS's stance in the district court.
• March 25, 2021: District Court Claim Construction. The district court issued its claim construction, agreeing with Ford's proposed interpretation that the claims required: (1) different fuels for direct injection and port injection, and (2) an anti-knock agent other than gasoline.
• March 2021: Stipulated Non-Infringement & Appeal. Following the district court's claim construction, EBS and MIT stipulated to non-infringement, allowing them to appeal the claim construction ruling.
• July 2021: PTAB Denies IPR Institution. The PTAB initially denied institution of Ford's IPR petitions, relying on the narrow claim construction adopted by the district court, which required "different fuels."
• August 2021: Ford Requests Rehearing of IPR Denials. Ford requested a rehearing of the PTAB's decision denying institution, asking the Board to delay reconsideration until the Federal Circuit ruled on the district court's claim construction appeal.
• July 18, 2022: Federal Circuit Vacates District Court Claim Construction (EBS I). The Federal Circuit (in Ethanol Boosting Systems, LLC v. Ford Motor Co., No. 21-1949, 2022 WL 2798395) vacated the district court's non-infringement judgment, finding that the direct and port injection systems did not require "different fuels." This ruling by the Federal Circuit allowed for a broader interpretation of the "DI Fuel" terms.

II. PTAB IPR Proceedings (November 2022 - 2023)

• November 2022: PTAB Reconsiders and Institutes IPR. Following the Federal Circuit's claim construction decision, the PTAB reconsidered its earlier denial and instituted IPRs, based in part on the broader claim construction that permitted like fuels.
• 2023: PTAB Final Written Decisions. The PTAB ultimately found all challenged claims across the three patents, including US Patent No. 9,708,965, to be unpatentable as obvious over the prior art.

III. Federal Circuit Appeal (2024-1383) (January 2024 - December 2025)

• January 24, 2024: Appeal Filed. Ethanol Boosting Systems, LLC and MIT (as co-appellants) appealed the PTAB's final written decisions to the U.S. Court of Appeals for the Federal Circuit. This appeal was docketed as 24-1383 (and related appeals 24-1381, 24-1382).
• Appellant's Arguments: EBS and MIT argued that the PTAB had impermissibly "stayed" its rehearing decision for over a year while awaiting the Federal Circuit's ruling on the district court appeal, thereby exceeding its statutory authority and requiring vacating the IPR proceedings. They also argued the PTAB was bound by the district court's initial, unappealed claim construction regarding gasoline as an anti-knock agent.
• December 23, 2025: Federal Circuit Affirms PTAB. The Federal Circuit issued a precedential opinion affirming the PTAB's decisions that found claims of US Patent No. 9,708,965 (and the other two patents) unpatentable as obvious under 35 U.S.C. § 103.
  • The Federal Circuit rejected EBS's arguments regarding the PTAB's delay, finding that there is no statutory deadline for rehearing petitions and therefore nothing for the Board to "stay." The court viewed this argument as an impermissible challenge to the institution decision under 35 U.S.C. § 314(d).
  • The court also affirmed the PTAB's claim construction, agreeing that there was no clear disclaimer in the patents to exclude gasoline as an anti-knock agent.
  • On the merits, the Federal Circuit found that the PTAB had substantial evidence to support its findings that the prior art combinations disclosed all challenged claim limitations and that a person of ordinary skill in the art would have been motivated to combine the references.
• Outcome: The affirmance by the Federal Circuit means the PTAB's unpatentability ruling stands, and US Patent No. 9,708,965 (along with the other related patents) is no longer enforceable.

News and analysis coverage of Ethanol Boosting Systems, LLC v. Ford Motor Company (Federal Circuit Case No. 24-1383) primarily focuses on the Federal Circuit's affirmation of the PTAB's unpatentability decisions regarding the MIT-owned fuel management system patents. Publications like Patently-O and IPWatchdog highlighted the December 23, 2025, precedential opinion, noting that it found all challenged claims across three patents (US 9,708,965, US 10,619,580, and US 10,781,760) to be unpatentable as obvious under 35 U.S.C. § 103. These outlets emphasized the procedural complexities, particularly the PTAB's initial denial of IPR institution, followed by a 15-month delay in reconsidering Ford's rehearing petition while awaiting a Federal Circuit decision on a parallel district court claim construction. Patently-O characterized this as an "unusual procedural history," but the Federal Circuit ultimately rejected EBS's argument that this delay was an ultra vires agency action, deeming it an impermissible challenge to the institution decision under 35 U.S.C. § 314(d).

The reporting also covered the substantive claim construction issues. The Federal Circuit affirmed the PTAB's construction, which did not require "different fuels" for direct and port injection or an anti-knock agent other than gasoline. This broader construction, contrary to the initial district court ruling, enabled the PTAB to find the claims obvious. For instance, IPWatchdog cited the Federal Circuit's reasoning that "we normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification," in reference to the patent's disclosure of a "gasoline only" embodiment. PatSnap also noted that the appeal ran for 699 days, longer than the median Federal Circuit patent appeal, and confirmed that the unpatentability finding effectively extinguishes the patent as an enforceable asset for EBS and MIT, and eliminates Ford's licensing risk for the technology covered by the invalidated claims.

Alston & Bird, representing Ford, issued a press release highlighting their success in securing the precedential win, affirming the PTAB's invalidation of 60 claims across the three patents related to fuel management systems. This victory allows Ford to develop, manufacture, and market direct injection ethanol enhancement systems within the scope of the invalidated claims without licensing risk and raises the bar for future assertions of similar technology by the plaintiffs. The news coverage primarily summarized the court's findings and the implications of the affirmed unpatentability for the parties involved, with no specific reporting on damages sought or awarded, or settlement terms, as the case concerned patent validity.

Sources

• schwabe.com
• patentlyo.com
• patentlyo.com
• ipupdate.com
• patentdocs.org
• klarquist.com
• ipwatchdog.com
• uspatent.com
• uscourts.gov
• patsnap.com
• patsnap.com
• patsnap.com

Counsel of Record for Ethanol Boosting Systems, LLC

In the appeal before the U.S. Court of Appeals for the Federal Circuit (Case No. 24-1383), Ethanol Boosting Systems, LLC (co-appellant with Massachusetts Institute of Technology) was represented by attorneys from Susman Godfrey LLP.

The following counsel appeared for the appellants:

• Steven M. Seigel

  • Role: Lead Counsel (argued for appellants)
  • Firm: Susman Godfrey LLP, Seattle, WA
  • Experience Note: Steven Seigel is a partner at Susman Godfrey and has significant experience in high-stakes intellectual property litigation, including patent cases.

• Matthew Robert Berry

  • Role: Co-Counsel
  • Firm: Susman Godfrey LLP
  • Experience Note: Matthew Berry is a partner at Susman Godfrey with a focus on complex commercial litigation, including intellectual property disputes.

• Andres Healy

  • Role: Co-Counsel
  • Firm: Susman Godfrey LLP
  • Experience Note: Andres Healy is an associate at Susman Godfrey whose practice includes a range of complex commercial litigation matters, often involving intellectual property.

Here is the counsel of record representing Ford Motor Company in Ethanol Boosting Systems, LLC v. Ford Motor Company, Federal Circuit Case No. 24-1383:

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

• Michael J. Flibbert

  • Role: Partner (likely lead counsel for the appeal, given his extensive experience in Federal Circuit appeals and PTAB proceedings).
  • Firm & Office Location: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC.
  • Relevant Patent Litigation Experience: Mr. Flibbert has over 20 years of patent litigation experience, serving as lead counsel in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) and appeals at the U.S. Court of Appeals for the Federal Circuit. He represents clients in patent cases involving pharmaceuticals, biotechnology, chemistry, chemical engineering, agriculture, and materials science. He has successfully served as lead counsel in Federal Circuit appeals from Board decisions, including those relating to transgenic soybean technology and 2,5-furan dicarboxylic acid production.

• Bryan C. Diner

  • Role: Partner (likely involved counsel, given his recognition in IP and PTAB proceedings).
  • Firm & Office Location: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC.
  • Relevant Patent Litigation Experience: Mr. Diner practices all aspects of intellectual property law, including district court litigation and PTAB proceedings. He is recognized for his work in "Patent Strategy & Management" and "Hatch-Waxman Patent Litigation" and has extensive experience in IP due diligence investigations.

• Jonathan M. Strang

  • Role: Counsel (likely involved counsel, with a focus on PTAB expertise).
  • Firm & Office Location: While he has been associated with Finnegan in the past, current information indicates he is counsel at Latham & Watkins LLP in Washington, D.C. However, given the consistent appearance of Finnegan attorneys for Ford in this matter, it's highly probable he was with Finnegan during the critical phases of this case. Note: His specific firm at the time of this Federal Circuit case (2024-2025) would need to be confirmed from the official docket, if available.
  • Relevant Patent Litigation Experience: Mr. Strang's practice focuses on patent litigation, particularly proceedings before the Patent Trial and Appeal Board (PTAB). He is also the Editor-in-Chief of the PTAB Bar Association's PTAB Roundup newsletter.

In-House Counsel for Ford Motor Company:

While numerous attorneys from Finnegan represented Ford in the Federal Circuit appeal, the specific in-house counsel involved in this particular appellate case (24-1383) are not explicitly named in the publicly available summaries of the Federal Circuit decision or related IPR discussions. Ford Motor Company does have an Office of General Counsel and various in-house legal professionals specializing in intellectual property, including roles like Chief IP Counsel historically held by individuals such as Joe Benz. However, for this specific Federal Circuit appeal, the records primarily highlight external counsel. Bradley Gayton is noted as the General Counsel for Ford Motor Company.