Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 16
`Entered: February 3, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2015-01258 (Patent 5,655,365)
`Case IPR2015-01259 (Patent 5,655,365)1
`____________
`
`Before KEN B. BARRETT, HYUN J. JUNG, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Requests for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`1 The parties are not authorized to use a joint caption.
`
`
`
`
`Tel: 571-272-7822
`
`Paper 16
`Entered: February 3, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2015-01258 (Patent 5,655,365)
`Case IPR2015-01259 (Patent 5,655,365)1
`____________
`
`Before KEN B. BARRETT, HYUN J. JUNG, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Requests for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`1 The parties are not authorized to use a joint caption.
`
`
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`I. INTRODUCTION
`On January 13, 2016, Orbital Australia Pty Ltd f/k/a/ Orbital Engine
`Company (Australia) Pty. Ltd. (“Patent Owner”) filed, in IPR2015-01258, a
`Request for Rehearing (Paper 13) of our Decision (Paper 11, “Dec.”) and, in
`IPR2015-01259, a Request for Rehearing (Paper 11) of our Decision
`(Paper 9) granting inter partes review of U.S. Patent No. 5,655,365
`(Ex. 1001 in both cases, “the ’365 patent”). Our Decisions granted inter
`partes review of some of Petitioner’s challenges to claims 1, 2, 5, 9, 10, 12–
`14, and 18. The two Requests for Rehearing (collectively, “Request” or
`“Req. Reh’g”) are substantively similar. Unless otherwise indicated,
`citations herein are to the papers filed in IPR2015-01258.
`Patent Owner’s Request alleges that the Board misapprehended or
`overlooked certain matters set forth in Patent Owner’s Preliminary Response
`(Paper 10), and “requests that the Board reconsider its decision with regard
`to claim construction, as well as deny the Petition with respect to all
`instituted grounds.” Req. Reh’g 1–2. Specifically, Patent Owner’s Request
`alleges that our Decision is based on a misapprehension of Patent Owner’s
`proposed claim construction regarding the “fuelling rate” (Req. Reh’g 3–6),
`that the Board construes “while said ignition is so retarded” erroneously (id.
`at 6–12), that the Board overlooked Patent Owner’s claim construction
`arguments regarding Petitioner’s previous statements concerning the ’365
`patent (id. at 12–13), and that the Decision to instituite a trial is based on an
`erroneous claim construction “and a misapprehension of or a failure to
`consider Patent Owner’s arguments (id. at 14–15).
`
`2
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`specifically all matters we misapprehended or overlooked, and the place
`where each matter was addressed previously in the record. Id. When
`rehearing a decision on a petition, we review the decision for an abuse of
`discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if
`a decision is based on an erroneous interpretation of law, if a factual finding
`is not supported by substantial evidence, or if the decision represents an
`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v.
`United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d
`1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the
`arguments presented by Patent Owner in turn.
`III. ANALYSIS
`Patent Owner argues that “[t]he Decision’s claim construction
`analysis misapprehends Patent Owner’s arguments with respect to the
`meaning of ‘fuelling rate’ (and thus, ‘increasing the fuelling rate’).” Req.
`Reh’g 3.
`
`In the Decisions, we stated:
`Patent Owner impliedly argues that fueling rate refers to
`quantity per unit-time (i.e. milligrams per second) and that that
`rate must be increased during each cycle. See Prelim.
`Resp. 28–29. However, claim 1 refers to “fuelling rate” as the
`quantity of fuel injected in a cylinder during a single cycle not
`the change in the quantity injected within a given cycle. See
`Ex. 1001, col. 2, ll. 3–4 (“the fuelling rate (measured in
`mg/cylinder/cycle)”). The language of independent claim 1
`
`3
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`defines the fueling rate level relative to that “when the engine is
`operating normally.” Ex. 1001, col. 6, ll. 11–14.
`Dec. 9. In the Requests, Patent Owner clarifies that it is not arguing that
`“fuelling rate” refers to quanity per unit-time. Req. Reh’g 3. Rather, Patent
`Owner maintains that its proposed construction of the term “fuelling rate” is
`consistent with the Board’s preliminary construction for that term and is
`“confirmed in the Decision.” See id. at 3–4 (“the term ‘fuelling rate’ is used
`in the challenged claims and defined by the ‘365 Patent to refer to the total
`quantity of fuel injected into a cylinder during a given cycle of the engine
`(i.e., ‘measured in mg/cylinder/cycle’), as confirmed in the Decision.”)
`Where Patent Owner’s position concerning “fuelling rate” was “confirmed
`in the Decision,” we are not persuaded that any misapprehension in that
`regard resulted in an abuse of discretion in our decisions to institute inter
`partes reviews.
`As to the “increasing” portion of the claim phrase “increasing the
`fuelling rate,” Patent Owner, in the Preliminary Response and the Request,
`does not adequately explain its claim construction position. We understand
`Patent Owner’s position to be that there must be some introduction of fuel to
`the cylinder when the crankshaft is in a position after top dead center.
`However, it remains unclear what, if anything, Patent Owner contends is
`required by the “increasing” aspect of the limitation because Patent Owner
`does not adequately explain how that feature relates to the “operating
`normally” aspect of that same limitaton. It is not clear, for example, whether
`Patent Owner’s position is that the total fuel introduced in a given cycle
`must be more than when operating normally, that the amount of fuel in a
`cylinder must increase during a particular portion of a single cycle but the
`total fuel introduced during the cycle need not be more than when operating
`
`4
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`normally,2 a combination of these, or something else altogether. We could
`not have misapprehended or overlooked something not explained adequately
`in the Preliminary Response. In order to avoid any further allegations of
`misapprehension and to narrow the issues, we strongly suggest the parties
`meet and confer regarding the meaning of the pertinent claim phrase—
`“while said ignition is so retarded, increasing the fuelling rate of said at least
`one cylinder to a level higher than that required when the engine is operating
`normally”—and stipulate to the aspects that are not in dispute.
`Patent Owner next argues that the Board’s preliminary construction of
`the phrase “while said ignition is so retarded” is erroneous. Req. Reh’g 6–
`12. Patent Owner does not direct our attention to an argument or evidence
`that was overlooked or misapprehended for this particular phrase, but instead
`reargues its construction from its Preliminary Response in discussing the
`Decision’s analysis. See id. Mere disagreement with the Board’s analysis or
`conclusion is not a proper basis for rehearing. It is not an abuse of discretion
`to have made an analysis or conclusion with which a party disagrees. Patent
`Owner’s arguments regarding the constructions of the claim terms can be
`submitted in its patent owner response, but are not appropriate subject matter
`for a request on rehearing.
`
`
`2 See, e.g., Prelim. Resp. 28 (“the step of increasing fuel occurs ‘while said
`ignition is so retarded’”) (emphasis added); Req. Reh’g 5 (“the total quantity
`of fuel injected into the cylinder during that cycle (i.e., “fuelling rate” in
`mg/cylinder/cycle) nonetheless increases at each and every time point due to
`the continuous addition of fuel.”); id. (“Thus, a person of ordinary skill in
`the art would understand that the ‘fuelling rate’ is not ‘increasing’ within the
`meaning of the ‘365 Patent only when fuel injection into the cylinder has
`completed during a given cycle.”).
`
`5
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`Next, Patent Owner argues that we overlooked arguments and
`evidence “regarding the Bosch-Petitioner’s prior recognition that the ‘365
`Patent discloses that the timing of increasing the fuelling rate is described
`with reference to crankangle.” Req. Reh’g 12. The contention is misplaced.
`The Board did not overlook Patent Owner’s argument and evidence. Rather,
`the argument and evidence were unpersuasive. The subject argument is
`that—during the prosecution of another patent (“the Bosch Patent”)—the
`parent corporation of one of the Petitioners made a statement characterizing
`the disclosure in the specification of the ’365 patent, and that that statement
`is consistent with Patent Owner’s claim construction position. Prelim.
`Resp. 15–16 (quoting Ex. 2002, 160); id. at 15 n.3; see Req. Reh’g 12–13.
`Patent Owner further argues, “Bosch cannot have it both ways” and “Bosch
`should be held to their representations to the U.S. Patent and Trademark
`Office.” Prelim. Resp. 16. Thus, Patent Owner’s argument is based on
`extrinsic evidence—the prosecution history of another patent—and possibly
`on a theory of estoppel. Having considered the arguments and the cited
`portion of the evidence, we did not find them persuasive and determined that
`the evidence contributed little, if anything, to the proper preliminary claim
`construction.
`
`Lastly, Patent Owner argues that the Board’s “determination [that
`Petitioner demonstrated a reasonable likelihood of prevailing] was based on
`an erroneous claim construction and a misapprehension of or a failure to
`consider Patent Owner’s arguments.” Req. Reh’g 14. Specifically, Patent
`Owner quotes from our Decision where we indicated that we were not
`persuaded by Patent Owner’s argument that claim 1 requires that fuel
`injection occur after top dead center. Id. (quoting Dec. 11–12). In so
`
`6
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`indicating, we quoted Patent Owner’s argument leaving no doubt that we
`considered the particular argument. Id. Patent Owner does not allege that
`we misapprehended this argument that claim 1 requires fuel injection to
`occur after top dead center. Thus, Patent Owner merely disagrees with our
`analysis and conclusion, and does not persuade us of an abuse of discretion.
`Again, Patent Owner’s arguments regarding the constructions of the claim
`terms can be submitted by in its patent owner response.
`IV. ORDER
`For the reasons given, it is
`ORDERED that Patent Owner’s Request is denied.
`
`
`
`
`
`
`
`7
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`
`PETITIONER:
`
`Lionel M. Lavenue
`Aaron L. Parker
`Joshua L. Goldberg
`David C. Reese
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`aaron.parker@finnegan.com
`joshua.goldberg@finnegan.com
`david.reese@finnegan.com
`
`Edward DeFranco
`Brett Watkins
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`eddefranco@quinnemanuel.com
`brettwatkins@quinnemanuel.com
`
`PATENT OWNER:
`
`David Magee
`Andrew Schultz
`PEPPER HAMILTON LLP
`mageed@pepperlaw.com
`schultza@pepperlaw.com
`
`
`8
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