Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 30
`Entered: March 1, 2017
`
`
`
`
`
`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, JEREMY M. PLENZLER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`ORDER
`Denying Patent Owner’s Requests for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 The parties are not authorized to use a joint caption.
`
`
`Tel: 571-272-7822
`
`Paper 30
`Entered: March 1, 2017
`
`
`
`
`
`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, JEREMY M. PLENZLER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`ORDER
`Denying Patent Owner’s Requests for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 The parties are not authorized to use a joint caption.
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`INTRODUCTION
`I.
`Patent Owner Orbital Australia Pty Ltd (“Patent Owner”) filed, in
`
`IPR2015-01258, a Request for Rehearing (Paper 29, “Request” or “Req.”) of
`our Final Written Decision (Paper 28, “Final Written Decision” or “Dec.”)
`holding claims 1, 2, 5, 9, 10, 12–14, and 18 of U.S. Patent 5,655,365 (Ex.
`1001, “the ’365 patent”) unpatentable. Patent Owner filed, in
`IPR2015-01259, a similar Request for Rehearing (Paper 27) of our Final
`Written Decision (Paper 26) also holding claims 1, 2, 5, 9, 10, 12–14, and 18
`of the ’365 patent unpatentable2. For the reasons that follow, Patent
`Owner’s Requests are denied.
`
`
`
`II. REHEARING STANDARD
`In pertinent part, 37 C.F.R. § 42.71(d) states:
`The burden of showing a decision should be modified lies with
`the party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`Thus, a request for rehearing is not an opportunity merely to disagree with
`the Board’s assessment of the arguments or weighing of the evidence or to
`present new arguments or evidence.
`
`
`
`III. DISCUSSION
`Patent Owner argues:
`the Petitioner’s prosecution history
`
`In approving
`arguments regarding the “while said ignition is so retarded . . .”
`phrase, the Board misapprehends that Petitioner’s arguments are
`
`2 Unless otherwise indicated, citations herein to Papers and Exhibits are to
`those filed in IPR2015-01258.
`
`2
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`premised on Petitioner’s proposed definition of “introduction” as
`“all fuel introduced into the at least one cylinder during a
`combustion cycle is controlled to occur BTDC [Before Top Dead
`Center].” See Reply at 2.
`Req. 1. Patent Owner also argues that we contradictorily stated we do not
`reach Petitioner’s argument regarding the claim term “maintained” in the
`“timing of the introduction of fuel” limitation while implicitly adopting
`Petitioner’s proposed construction in this regard.
`
`As noted in the Final Written Decision, “[t]he dispositive issue in this
`case is the proper construction of the limitation of claim 1 pertaining to
`when ‘increasing the fuelling rate’ occurs.” Dec. 10. We further explained:
`The parties’ dispute relates to timing of the end of the fuel
`injection and specifically whether the claims require that at least
`some fuel be added to the pertinent cylinder while the crankshaft
`is in a position ATDC [After Top Dead Center]. As discussed
`above, the parties do not dispute that the start of fuel injection
`must occur BTDC. See supra Section II(B)(1) (construing “the
`timing of the introduction of fuel . . . maintained at . . . BTDC”).
`Id. at 11. Because it was not necessary to the disposition of the case, we
`expressly stated: “[i]n construing this [timing of the introduction of fuel]
`phrase, we need not and do not reach Petitioner’s argument that the claims
`require all fuel to be injected BTDC.” Id. at 9–10 (citation omitted). In
`other words, we did not reach Petitioner’s argument, offered in the
`alternative, that the claim required fuel introduction to end in the BTDC
`range.
`
`During this proceeding, Patent Owner argued that the prosecution
`history supports its proposed construction, which would require injection to
`end in the ATDC range. See PO Resp. 32–39. Petitioner, in reply, argued
`that the prosecution history does not support Patent Owner’s position. Reply
`
`3
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`19–20. Those are the arguments we addressed in our discussion of the
`prosecution history. Dec. 18–20. Specifically, we stated:
`We agree with Petitioner’s argument (Reply 19) that the
`prosecution history does not support Patent Owner’s argument
`that claim 1 requires fuel injection to end ATDC . . .
`[and]
`[w]e find persuasive Petitioner’s argument ([Reply 20]) that “at
`no point during prosecution did [Patent Owner] Orbital
`distinguish [the prior art to] Morikawa based on the requirement
`that the quantity of fuel injected into the cylinder during a given
`cycle must increase, and thus end, at ATDC.”
`Dec. 18, 19. In order to determine that the prosecution history did not
`support Patent Owner’s position, we did not need to adopt, and we did not
`adopt, Petitioner’s proposed construction concerning fuel introduction
`ending BTDC. Contra Req. 4, 5 (Patent Owner arguing that the Board
`adopted Petitioner’s argument and that Petitioner’s analysis is premised on
`Petitioner’s definition of “introduction.”). Accordingly, we are not
`persuaded by Patent Owner’s assertion (Req. 1) that we misapprehended that
`Petitioner’s prosecution history position purportedly was based on that claim
`construction argument.
`
`Patent Owner argues:
`the only way that the Board could have concluded that the
`prosecution history
`is somehow
`inconsistent with PO’s
`construction (i.e., that there is only one “third option”) is by first
`assuming the conclusion that “introduction” refers to the total
`duration of fuel injection as proposed by Petitioner, which the
`Board refused to do.
`Req. 5. Patent Owner, thus, impliedly argues that we found the prosecution
`history to be inconsistent with Patent Owner’s proposed construction. We,
`however, simply found unpersuasive Patent Owner’s argument that the
`
`4
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`prosecution history supported Patent Owner’s proposed reading of the claim
`language. In that regard, we stated:
`Patent Owner also discusses amendments to claim 1 made during
`prosecution and compares various engine states through a
`document
`listing several “[c]onditions” (the “conditions
`document”). PO Resp. 33–39 (citing, inter alia, the conditions
`document, Ex. 2008). Patent Owner’s arguments are not
`persuasive as the analysis is circular in that it is premised on the
`correctness of Patent Owner’s construction and relies heavily on
`the conditions document, which, apparently, was created by
`Patent Owner’s counsel as a deposition exhibit.
`Dec. 20 (citations omitted). Patent Owner’s disagreement with our
`determination that the argument was unpersuasive is not a proper basis for
`reconsideration. We did not, as Patent Owner argues (Req. 7),
`misapprehend Patent Owner’s arguments regarding the prosecution history.
`Similarly, Patent Owner’s related argument that we “improperly weighed a
`key part of intrinsic evidence” (id.) is a statement of disagreement with our
`decision, not an indication that we misapprehended or overlooked an
`argument, and is not a persuasive argument that a finding fails to be
`supported by substantial evidence or that the decision “represents an
`unreasonable judgment in weighing the intrinsic evidence” (see id. at 1–2).
`
`Patent Owner asserts that the decision contains a finding that there
`was “only one ‘third option’” in addition to the two situations depicted in
`Figure 4 of the Morikawa reference. Req. 5. Based on this assertion, Patent
`Owner argues we overlooked the possibility of the “green box” depiction on
`page 6 of the Request. Id. at 5–6. That “green box”—which appears to
`contain a modified version of Morikawa’s Figure 4 with a lengthy injection
`period superimposed on the original figure—was not presented earlier and is
`not, as might be implied by Patent Owner’s citation, the same as the
`
`5
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`depiction of “Condition 3B” found on page 36 of Patent Owner’s Response.
`To the extent this “green box” depiction constitutes new argument, it is
`inappropriate for a request for reconsideration and we will not consider it in
`the first instance now. As discussed above, we were not persuaded by Patent
`Owner’s arguments based on “the conditions document.”
`
`Patent Owner’s “red box” depiction (Req. 6) is a mischaracterization
`of the Final Written Decision, again based upon the erroneous assertion that
`we adopted Petitioner’s proposed claim construction regarding the end of
`fuel introduction3.
`
`Patent Owner requests that we “expressly construe the term
`‘introduction’” and offers a proposed construction. Req. 8. In that regard,
`we stated in the Final Written Decision, under the heading “the timing of the
`introduction of fuel,” the following: “As we did in the Decision on
`Institution, we, for purposes of this Final Decision, agree with the parties
`that claim 1 requires that the start of the injection of fuel begins at BTDC.”
`Dec. 9 (footnote omitted). In light of this, Patent Owner does not persuade
`us that the Decision lacks an explicit construction or that there is a need to
`change or rephrase our construction concerning the timing of the
`introduction of fuel.
`
`Lastly, Patent Owner:
`requests rehearing of the Decision’s determination that Petitioner
`demonstrated by a preponderance of evidence that the challenged
`claims were unpatentable on every instituted ground as the
`
`
`3 Our discussion of a third option, and particularly our use of the word
`“introduction,” quotes from Applicant’s use of the term “introduction” in a
`claim amendment during prosecution and is based on Applicant’s statements
`related thereto. See Dec. 19 (citing Ex. 1008, 83, 107 (claim amendment
`and response to office action)).
`
`6
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`determination was based on an erroneous claim construction for
`“while said ignition is so retarded . . .” and a misapprehension of
`or a failure to consider Patent Owner’s arguments.
`Req. 8. For the reasons set forth above, we are not persuaded that we
`applied an erroneous claim construction or misapprehended or failed to
`consider Patent Owner’s arguments, and we, therefore, decline to reconsider
`the determination regarding unpatentability.
`
`IV. ORDER
`
`
`
`
`Accordingly, 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
`Bosch-Orbital-IPR@finnegan.com
`
`Edward DeFranco
`Brett Watkins
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`eddefranco@quinnemanuel.com
`brettwatkins@quinnemanuel.com
`MB_Orbital_IPR@quinnemanuel.com
`
`PATENT OWNER:
`
`David Magee
`Andrew Schultz
`PEPPER HAMILTON LLP
`mageed@pepperlaw.com
`schultza@pepperlaw.com
`
`
`8
`
`
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