Inter Partes Review
`United States Patent No. 5,655,365
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`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
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`) FILED ELECTRONICALLY
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`PER 37 C.F.R. § 42.6(b)(1)
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`In re Inter Partes Review of:
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` U.S. Patent No. 5,655,365
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`Issued: August 12, 1997
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`Inventor: David Richard Worth et al.
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`Application No. 446,739
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`Filed: June 6, 1995
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`For: METHOD OF OPERATING AN
`INTERNAL COMBUSTION ENGINE
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S.P.T.O.
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,655,365
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`I.
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`II.
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`Inter Partes Review
`United States Patent No. 5,655,365
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`TABLE OF CONTENTS
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`PRELIMINARY STATEMENT ................................................................... 1
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED .............................................................................. 3
`
`A.
`
`B.
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`C.
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`Claims for Which Review is Requested ................................................ 3
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`Statutory Grounds of Challenge ............................................................ 3
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`Claim Construction ............................................................................... 3
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`III. THE ’365 PATENT ........................................................................................ 9
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`A. Overview of the Disclosure ................................................................... 9
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`IV. CLAIMS 1, 2, 5, 9, 10, 12-14, and 18 OF THE ’365 PATENT ARE
`UNPATENTABLE ...................................................................................... 12
`Bernhardt anticipates claims 1, 2, 5, 10, 12, 13, and 18 ..................... 12
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Bernhardt in combination with Onishi render claim 9 obvious ......... 24
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`Bernhardt in combination with Griese render claim 14 obvious ....... 28
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`Eichler ’791 in combination with Bernhardt render obvious
`claims 1, 2, 5, 10, 12-14, and 18 ......................................................... 31
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`Eichler ’791 in combination with Bernhardt and Onishi render
`claim 9 obvious ................................................................................... 41
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`Onishi anticipates claims 1, 2, and 9 ................................................... 44
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`G. Onishi in combination with Eichler ’791 render claim 5 obvious ...... 49
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`H. Onishi in combination with Griese render claims 10, 13, 14,
`and 18 obvious ..................................................................................... 51
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`I.
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`Onishi in combination with Bernhardt renders claim 12 obvious ...... 56
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`V. GROUNDS FOR STANDING .................................................................... 57
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`VI. MANDATORY NOTICES .......................................................................... 58
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`United States Patent No. 5,655,365
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`A.
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`B.
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`C.
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`Real Party-in-Interest .......................................................................... 58
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`Related Matters .................................................................................... 58
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`Lead and Back-Up Counsel, and Service Information ....................... 59
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`VII. CONCLUSION ............................................................................................ 60
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`Inter Partes Review
`United States Patent No. 5,655,365
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Ex Parte Ronald A. Katz Tech. Licensing L.P., No. 2008-005127,
`2010 WL 1003878 (B.P.A.I. Mar. 15, 2010) ................................................... 3-4
`
`
`In re Aller,
`220 F.2d 454, 456, (C.C.P.A. 1955) ...................................................... 27, 43, 50
`
`
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012) ............................................................. 27, 43, 50
`
`
`In re Peterson,
`315 F.3d 1325 (Fed. Cir. 2003) ......................................................................... 50
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................ 3-4
`
`
`Statutes
`35 U.S.C. § 102 .................................................................................................passim
`
`35 U.S.C § 103. .................................................................................................passim
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`35 U.S.C. § 112 .......................................................................................................... 4
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`35 U.S.C. § 311 .......................................................................................................... 3
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`35 U.S.C. §§ 311-319 ............................................................................................ 1-4
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`Regulations
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`37 C.F.R. § 42.100 et seq. ) ....................................................................................... 1
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`37 C.F.R. § 42.15(a) ................................................................................................. 60
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`LIST OF EXHIBITS
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`Inter Partes Review
`United States Patent No. 5,655,365
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`Petition Exhibit 1001: U.S. Patent No. 5,655,365 to David Richard Worth et al.
`(“Worth”).
`
`Petition Exhibit 1002: Bernhardt, W E., Methods for Fast Catalytic System
`Warm-Up During Vehicle Cold Starts, Society of
`Automotive Engineers, 400 Commonwealth Dr.,
`Warrendale, PA, 15096, USA, 1972. (“Bernhardt”).
`
`
`Petition Exhibit 1003: GB Patent No. 1447791 to Eichler et al. (“Eichler ’791”).
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`Petition Exhibit 1004: U.S. Patent No. 3,799,134 to Griese (“Griese”)
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`Petition Exhibit 1005: U.S. Patent No. 3,572,298 to Onishi (“Onishi”).
`
`Petition Exhibit 1006: Declaration of Dr. Ron Matthews.
`
`Petition Exhibit 1007: Amended Complaint filed in Orbital Australia Pty Ltd.
`and Orbital Fluid Technologies, Inc., v. Daimler AG,
`Mercedes-Benz USA LLC, Mercedes-Benz US
`International Inc., Robert Bosch GMBH, and Robert
`Bosch LLC, Case No. 3:14-cv-808-REP (E.D.Va.).
`
`Petition Exhibit 1008:
`
`Patent Prosecution History of U.S. Patent No. 5,655,365
`(U.S. App. Ser. No. 08/446,739).
`
`Petition Exhibit 1009: Orbital’s Proposed Claim Constructions filed in Orbital
`Australia Pty Ltd. and Orbital Fluid Technologies, Inc.,
`v. Daimler AG, Mercedes-Benz USA LLC, Mercedes-
`Benz US International Inc., Robert Bosch GMBH, and
`Robert Bosch LLC, Case No. 3:14-cv-808-REP
`(E.D.Va.).
`
`Petition Exhibit 1010: U.S. Patent No. 6,581,572 to Hurley.
`
`Petition Exhibit 1011: United States Patent No. 5,050,551 to Morikawa.
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`Inter Partes Review
`United States Patent No. 5,655,365
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`Robert Bosch LLC and Daimler AG (collectively, “Petitioner”) requests
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`inter partes review of claims 1, 2, 5, 9, 10, 12-14, and 18 of the ’365 patent (Ex.
`
`1001), now purportedly assigned to Orbital Engine Company Pty Limited
`
`(“Orbital” or “Patent Owner”), in accordance with 35 U.S.C. §§ 311-319 and 37
`
`C.F.R. § 42.100 et seq.
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`I.
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`PRELIMINARY STATEMENT
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`Claims 1, 2, 5, 9, 10, 12-14, and 18 of the ’365 patent are directed to a
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`method of operating an internal combustion engine in order to produce high
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`exhaust gas temperatures to reduce undesirable contaminants from exhaust in
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`engines incorporating exhaust systems having a catalytic treatment means. Ex.
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`1001 at 1:4-9. The patent’s specification acknowledges that heating catalytic
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`material using an afterburner device placed upstream of the catalytic treatment
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`means, in order to heat the exhaust gases and reduce contaminants, is well known
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`in the art. Id. at 1:41-48. The patent also concedes that it was well-known in the art
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`to introduce a gas/fuel mixture into an engine before top dead center (BTDC).
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`Id.at Fig. 1. The only purported new feature in claims 1, 2, 5, 9, 10, 12-14, and 18
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`is thus heating exhaust gases by retarding the ignition of a gas/fuel mixture to after
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`top dead center (ATDC) and, while the ignition is retarded, increasing the fuelling
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`rate and maintaining the timing of fuel introduction at BTDC. Id.at 1:49-64.
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`Inter Partes Review
`United States Patent No. 5,655,365
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`A number of prior art references not considered by the PTO during
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`prosecution of the ’365 patent, however, disclosed the method of operating an
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`internal combustion engine of claim 1, involving retarding ignition to ATDC,
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`increasing fueling rate, and timing fuel injection BTDC, in order to heat up
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`catalytic treatment means to the light-off temperature of the catalytic material to
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`reduce the amount of harmful contaminants in the exhaust gases, including
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`Bernhardt (Ex. 1002), Eichler ’791 (Ex. 1003), and Onishi (Ex. 1005).
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`Bernhardt discloses a method for operating an internal combustion engine
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`during vehicle cold starts in which the catalytic system is warmed up at vehicle
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`start-up to improve efficiency of the catalytic system and reduce harmful exhaust
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`gas emissions. Ex. 1002 at 1, introduction. This method involves retarding the
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`ignition of the fuel/air mixture until ATDC while increasing the fuelling rate while
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`ignition is being retarded. Id. at p. 8, col. 2, ¶1, ¶3; p. 10, col. 2, ¶2.
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`Similarly, Eichler ’791 discloses a method for operating a fuel injected
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`internal combustion engine in which the ignition of the fuel/gas mixture is retarded
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`to ATDC during engine overrun or idling, and fuel is introduced into the cylinder
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`of the engine BTDC. Ex. 1003 at p. 1:9-11, 1:86-89; 2:13-17, Fig. 1.
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`As discussed in more detail below, the disclosures of Bernhardt, Eichler
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`’791, and Onishi, as well as Griese, teach every feature of at least claims 1, 2, 5, 9,
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`United States Patent No. 5,655,365
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`10, 12-14, and 18 and warrant the cancellation of those claims. Accordingly, the
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`Board should institute trial and cancel these claims.
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`II.
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`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`A. Claims for Which Review is Requested
`Petitioner requests review under 35 U.S.C. § 311 of claims 1, 2, 5, 9, 10, 12-
`
`14, and 18 of the ’365 patent, and the cancellation of these claims as unpatentable.
`
`Statutory Grounds of Challenge
`
`B.
`Claims 1, 2, 5, 9, 10, 12-14, and 18 are unpatentable under 35 U.S.C. §§ 102
`
`and 103. The claim construction, reasons for unpatentability, and specific evidence
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`supporting this request are detailed below.
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`C. Claim Construction
`Claim terms in an expired patent are given their ordinary and accustomed
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`meaning as understood by one of ordinary skill in the art,1 consistent with the
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`standard expressed in Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.
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`1 Petitioner submits that a person of ordinary skill in the art (“POSITA”) would
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`have at least an undergraduate degree in mechanical engineering or a similar
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`technical field and at least two (2) years of relevant work experience or equivalent
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`advanced education in a field related to engine control technology. Petitioner
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`applies this level of ordinary skill in this petition.
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`United States Patent No. 5,655,365
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`2005) (en banc); Ex Parte Ronald A. Katz Tech. Licensing L.P., No. 2008-005127,
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`2010 WL 1003878, at *3-4 (B.P.A.I. Mar. 15, 2010).
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`The following terms from the claims of the ’365 patent require construction
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`for this proceeding.2 All other terms should be given their ordinary meanings.
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`“up to about 30° ATDC” (Claim 5)
`
`Independent claim 1 recites “up to about 30° ATDC.” Ex. 1001 at 6:25-26.
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`In light of the specification, this phrase should be construed to mean “between 15°
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`and about 30° ATDC.” See e.g., Ex. 1001 at 1:65-2:3, 3:1-9, 3:20-27, 3:41-47, Fig.
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`2. The patent’s specification does not disclose an engine in which retarded ignition
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`occurs between TDC and 15° ATDC. Rather, all that is supported is engine
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`operation in which ignition is delayed to between 15° and about 30° ATDC.
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`Further, there is no disclosure in the specification explaining if, or how, retarding
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`ignition to between TDC and 15° ATDC meets the objective of the invention of
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`increasing exhaust gas temperature to achieve light-off in a sufficiently reduced
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`amount of time. See, e.g., id. at 1:65-2:3, 3:1-9, 3:20-47.
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`“fuelling rate” (Claims 1 and 2)
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`2 Because the IPR procedure does not permit challenges under 35 U.S.C. § 112,
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`Petitioner has not included any indefiniteness arguments herein. Petitioner will,
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`however, raise such arguments in other proceedings.
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`Independent claim 1 and dependent claim 2 recite “fuelling rate.” Ex. 1001
`
`at 6:12-14. In light of the specification, this phrase should be construed to mean
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`“the amount of fuel introduced into a cylinder during a combustion cycle.” See e.g.,
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`Ex. 1001 at 2:3-10, 2:59-3:12, Figs. 1, 2; Ex. 1010 at 1:8-14.
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`“the timing of introduction of fuel into the at least one cylinder
`being maintained at before top dead centre (BTDC)” (Claim 1)
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`Independent claim 1 recites “the timing of introduction of fuel into the at
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`least one cylinder being maintained at before top dead centre (BTDC).” Ex. 1001
`
`at 6:15-17. In light of the specification and prosecution history, this phrase should
`
`be construed to mean “all fuel introduced into the at least one cylinder during a
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`combustion cycle is controlled to occur BTDC.” See, e.g., Ex. 1001 at 2:9-14, 2:59-
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`63, 3:1-9, Figs. 1, 2; Ex. 1008 at 74-76 (11/13/1995 Office Action), 83-85
`
`(03/08/1996 Response), 91-93 (04/25/1996 Office Action), 106-07 (07/25/1996
`
`Amendment). In the pending litigation, the Patent Owner (“PO”) has construed this
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`term to mean “start of injection for at least one cylinder is before top-dead center.”
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`Under such a construction, however, the terms “being maintained” are rendered
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`superfluous, improper. Ex. 1009 at 2. The ’365 patent describes that, in typical
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`engines fuel is introduced at approximately 60° BTDC with ignition occurring at
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`approximately 30° BTDC. Ex. 1001 at 2:59-63. It then describes the method
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`“according to the invention” where fuel is still introduced BTDC (at between 60°
`
`and 80° BTDC), while the ignition is retarded at up to about 30° ATDC. Id. at 3:1-
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`9. In other words, ignition is retarded to ATDC, but the timing of introduction of
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`fuel is left unchanged as compared to the timing of fuel introduction in “typical
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`engines”— i.e., it is "maintained at" BTDC. Compare id. Fig. 1 with Fig. 2. In this
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`context, “the timing of introduction of fuel into the at least one cylinder being
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`maintained at before top dead centre means that all fuel is introduced into the
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`cylinder BTDC, as in typical engines.
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`This is consistent with the prosecution history for the ’365 patent. In order to
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`overcome a prior art rejection, PO amended claim 1 of the ’365 patent to include
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`the requirement that “the timing of the introduction of fuel into the at least one
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`cylinder being maintained at before top dead center.” Ex. 1008 at 106-07
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`(07/25/1996 Amendment). This limitation was added to overcome Morikawa (U.S.
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`Pat. No. 5,050,551) (Ex. 1011), which the Patent Examiner described as
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`“retard[ing] ignition timing and increas[ing] fuel injection amount until exhaust or
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`catalyst temperature reaches a predetermined minimum.” Ex. 1008 at 91 (4/25/96
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`Final Rejection). At no point was Morikawa distinguished by the PO based on the
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`’365 patent merely requiring fuel injection to begin BTDC; rather, the claims were
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`amended to require that fuel injection be "maintained at" BTDC.
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`“maximum load” (Claim 2)
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`Dependent claim 2 recites “maximum load.” Ex. 1001 at 6:19-20. In light of
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`the specification, this term should be construed to mean “maximum load of the
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`engine,” which equates to the peak torque output of the engine. See, e.g., Ex. 1001
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`at 1:26-40, 2:3-8, 3:10-12, 5:50-57; See also, Ex. 1010 at 2:19-22.
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`“additional air is introduced upstream” (Claim 12)
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`Dependent claim 12 recites “additional air is introduced upstream.” Ex.
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`1001 at 6:43-44. In light of the specification, this term should be construed to
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`mean “additional air is introduced into the exhaust system between the exhaust
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`ports of the engine and the catalytic treatment means.” See, e.g., Ex. 1001 at 3:13-
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`19, 4:1-16, 4:32-35, Fig. 3.
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`“required operating temperature” (Claim 14)
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`Dependent claim 14 recites “required operating temperature.” Ex. 1001 at
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`6:48-51. In light of the specification, this term should be construed to mean “the
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`temperature at which the catalytic material within the catalytic treatment means is
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`50% efficient.” See, e.g., Ex. 1001 at 1:10-19, 4:62-5:46.
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`“sensed or determined” (Claim 14)
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`Dependent claim 14 recites “sensed or determined.” Ex. 1001 at 6:48-51. In
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`light of the specification, this term should be construed to mean “measured by a
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`sensor.” See, e.g., Ex. 1001 at 4:62-5:46.
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`“predetermined operating condition” (Claim 18)
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`United States Patent No. 5,655,365
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`Dependent claim 18 recites “predetermined operating condition.” Ex. 1001
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`at 6:60-62. In light of the specification, this term should be construed to mean “a
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`threshold value, set in advance.” See, e.g., Ex. 1001 at 4:62-5:12, 5:24-29.
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`“catalytic treatment means” (Claims 10 and 14)
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`Claim 10 recites “catalytic treatment means.” Ex. 1001 at 6:37-39, 6:48-51.
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`This term should be construed as a mean-plus-function claim. In light of the
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`specification, the function recited by the claim is “supporting a catalytic material,”
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`while the corresponding structure is “a structure within the exhaust system that
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`includes catalytic material having a minimum operating temperature for effective
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`treatment of exhaust gases.” See, e.g., Ex. 1001 at 1:10-25, 3:13-19, Fig. 3.
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`“fuel is introduced at between 60° to 80° BTDC” (Claim 9)
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`Claim 9 recites that “fuel is introduced at between 60° to 80° BTDC.” Ex.
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`1001 at 6:35-36. In light of the specification, this phrase should be construed to
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`mean “all fuel for a combustion cycle is introduced into a cylinder between 80°
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`and 60° BTDC.” See, e.g., Ex. 1001 at 2:9-14, 2:59-63, 3:1-9, Figs. 1, 2; Ex. 1008
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`at 74-76 (11/13/1995 Office Action), 83-85 (03/08/1996 Response), 91-93
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`(04/25/1996 Final Office Action), 106-07 (07/25/1996 Amendment). In the
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`pending litigation, the PO has construed this term to mean “the start of injection
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`occurs in the window between 80 to 60 degrees before top dead center.” Ex. 1009
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`at 2. As described above, the ’365 patent describes, and claim 1 requires, that all
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`United States Patent No. 5,655,365
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`fuel is introduced into the cylinder BTDC. Because claim 9 depends from, and
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`cannot be broader than, claim 1, a POSITA would construe “fuel is introduced at
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`between 60° to 80° BTDC” to require all fuel to be injected at between 80° and 60°
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`BTDC. There is no fair reading of this language, or support in the specification, for
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`a construction that provides for fuel to be injected after 60° as long as injection
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`began between 80° and 60°, as allowed for in the PO's proposed construction.
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`III. THE ’365 PATENT
`A. Overview of the Disclosure
`The ’365 patent is directed to a method of operating an internal combustion
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`engine in order to produce high exhaust gas temperatures to reduce undesirable
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`contaminants from exhaust in engines incorporating exhaust systems having a
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`catalytic treatment means. Ex. 1001 at 1:4-9. The ’365 disclosure describes how
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`catalytic material only effectively reduces undesirable emissions contaminants
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`above a minimum operating temperature, known in the art as a “light-off
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`temperature.” Typically, however, the catalytic material is below its light-off
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`temperature at engine startup, resulting in increased levels of undesirable emissions
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`issuing from the engine’s exhaust system. Thus, it is desirable to raise the
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`temperature of the exhaust gas at start-up to reduce the time until the catalytic
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`material reaches the light-off temperature. But at start-up, the engine typically
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`operates at a low load and speed, known as “engine idle,” where the amount of fuel
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`delivered to the engine is small and thus little heat is generated. Id. at 1:10-32. The
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`’365 patent acknowledges that methods for raising the temperature of the catalyst
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`were known in the art, including using afterburner devices. Id. at 1:41-48.
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`To improve the effectiveness of catalytic material during vehicle startup, the
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`’365 patent describes a method for assisting in maintaining high exhaust gas
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`temperatures, and thus, achieving rapid light-off of the catalytic material in the
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`exhaust system and maintaining the light-off condition during engine operation.
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`Id. at 1:49-55. This method comprises retarding the ignition of a gas/fuel mixture
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`within at least one cylinder of the engine to after top dead center (ATDC) and
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`increasing the fuelling rate while ignition is being retarded. Id. at Abstract.
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`In particular, the ’365 patent describes that ignition can be retarded up to
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`about 30° ATDC and is preferably retarded to about 20° ATDC. Id. at 1:65-67.
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`Alternatively, the patent discloses that ignition retardation can be variable,
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`preferably between 15° to 30° ATDC. Id. at 1:67-2:2.
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`The ’365 patent also discloses that while ignition is retarded, the fuelling
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`rate (mg/cylinder/cycle) can be varied and may be greater than 50% of the fuelling
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`rate at maximum load. Id. at 2:3-8.
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`The ’365 patent further discloses that fuel is introduced to the combustion
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`chamber at approximately 60° BTDC, and acknowledges that the timing of the
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`introduction in that range is typical in direct injection engines. In fact, fuel is
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`introduced most preferably at between 60° and 80° BTDC. Id. at 2:10-13, 2:59-62,
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`3:2-4, Fig. 1, Fig. 2.
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`Fig. 1 (below left) discloses the cylinder pressure versus crankangle
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`characteristics for a typical direct injected two-stroke internal combustion engine,
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`as was known in the art, while Fig. 2 (below right) shows similar characteristics for
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`a direct injected two-stroke internal combustion engine operated according to the
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`method of the invention.
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`The ’365 patent further discloses that combustion preferably occurs under
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`rich conditions with the overall air/fuel ratio being close to the stoichiometric ratio.
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`Id. at 3:60-62. Additional oxygen containing gas, such as air, may be introduced
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`upstream of the catalytic treatment means provided in the exhaust system of the
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`engine. This excess air may be introduced to the exhaust system to promote the
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`catalytic oxidation of the exhaust gases in order to further reduce undesirable
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`contaminants therein. Id. at 4:1-3, 4:33-35.
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`Inter Partes Review
`United States Patent No. 5,655,365
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`IV. CLAIMS 1, 2, 5, 9, 10, 12-14, and 18 OF THE ’365 PATENT ARE
`UNPATENTABLE
`A. Bernhardt anticipates claims 1, 2, 5, 10, 12, 13, and 18
`“Methods for Fast Catalytic System Warm-Up During Vehicle Cold Starts,”
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`to Bernhardt et al. (“Bernhardt”) was published on February 1, 1972. Ex. 1002.
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`Because the earliest effective priority date of claims 1, 2, 5, 9,10, 12-14, and 18, is
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`January 25, 1993, Bernhardt is prior art under 35 U.S.C. § 102(b).
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`Bernhardt discloses a method for operating an internal combustion engine
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`incorporating a catalytic system for treating exhaust gases exiting the combustion
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`chamber. The method uses the engine as a preheater for the catalytic system by
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`retarding ignition of the air and fuel mixture in at least one cylinder of the engine
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`until ATDC. Id. at p. 8, col. 2, ¶1; p. 10, col. 2, ¶2. Bernhardt also discloses that
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`while the ignition is being retarded to ATDC, an increase in fuel flow raises the
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`exhaust gas enthalpy (i.e., the amount of heat content used or released in a system
`
`at constant pressure). In particular, Bernhardt discloses that during spark retard,
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`while the engine is in its idling phase, there is an “increased idling speed of the
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`engine,” the engine may operate with a “fully opened throttle,” and may operate
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`with a “reciprocal equivalence ratio of 1.0.” Id. at p. 12, col. 1, ¶¶ 2, 5; p. 12, col.
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`2, ¶3; p. 8, col. 2, ¶1. Thus, based on this disclosure, a POSITA would understand
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`that Bernhardt also discloses “increasing the fuelling rate of said at least one
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`cylinder to a level higher than that required when the engine is operating normally”
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`United States Patent No. 5,655,365
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`Ex. 1006 ¶¶39-40, and increasing the fueling rate to greater than 50% of the
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`fueling rate at maximum load, wherein maximum load refers to wide open throttle
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`operation of the engine. Id. ¶¶59-63. In particular, based on the engine operation
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`conditions and data disclosed in Bernhardt, a POSITA would have understood
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`Bernhardt to disclose that when ignition is retarded and the engine is operating at a
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`wide open throttle, no load condition for rapidly warming up the catalyst, the
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`necessary fuelling rate is actually 100*2.67/3.2 ~ 83% of the fuelling rate at
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`maximum load, wherein 2.67 is the ratio of the wide open throttle fuelling rate to
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`the no load fuelling rate and 3.2 is the increase in fuelling rate from no load to full
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`load conditions at 1500 rpm under normal operating conditions, as disclosed in
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`Bernhardt. Ex. 1006 ¶63.
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`Because Bernhardt discloses implementing conventional internal
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`combustion engines3, such as a VW 1.6 liter single cylinder engine with a
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`production type combustion chamber, in which fuel and air are mixed prior to
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`ignition, a POSITA would recognize that Bernhardt discloses an engine which
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`operates in a manner in which “the timing of the introduction of fuel into the at
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`least one cylinder [is] maintained at BTDC,” and in which all fuel in a combustion
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`3 Moreover, the ’365 patent discloses, in Fig. 1 for example, that fuel in a typical
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`internal combustion engine is introduced at BTDC, and at 60 degrees BTDC, in
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`particular. Id. at Fig. 1, 2:59-63.
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`United States Patent No. 5,655,365
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`cycle is injected while the cylinder is at BTDC.” Ex. 1006 ¶¶56-58 (emphasis in
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`original). In conventional port fuel injected engines, such as the engine disclosed in
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`Bernhardt, all fuel is introduced before the start of the compression stroke4, which
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`is typically at about 180° BTDC. Ex. 1006 ¶¶41, 58.
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`Moreover, in describing several embodiments of the invention in which
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`ignition timing is retarded, including two embodiments in which ignition occurs
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`BTDC, Bernhardt discloses that the only difference between the combustion cycles
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`in those embodiments is the ignition timing. Bernhardt further discloses that
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`“other engine parameters such as air/fuel ratio and volumetric efficiency remained
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`equal.” Ex. 1002 at 8 col. 2 ¶4. A POSITA would understand that “those other
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`engine parameters” disclosed in Bernhardt also refer to fuel injection timing and
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`would recognize that in the embodiments in which ignition occurs BTDC, all fuel
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`must be injected BTDC. Ex. 1006 ¶¶42, 58. For similar reasons, a POSITA would
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`have understood that all fuel also would have been injected BTDC in the
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`embodiments in which ignition was retarded until ATDC. Id. Thus, a POSITA
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`4 The engine disclosed in Bernhardt employed a port fuel injection system where
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`fuel is mixed with air in the intake port and introduced into the combustion
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`chamber when the intake valve is opened and the fresh charge is drawn in during
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`the intake stroke. Ex. 1006 ¶58.
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`would have understood that Bernhardt discloses that all fuel must be injected into a
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`cylinder while the engine is BTDC. Id.
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`As further detailed in the claim chart below, Bernhardt discloses all
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`elements of claims 1, 2, 5, 10, 12, 13, and 18 of the ’365 patent.
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`Claims
`1. A method of operating an
`internal combustion engine
`comprising
`
`
`retarding the ignition of a
`gas/fuel mixture within at
`least one cylinder of the
`engine to after top dead
`centre (ATDC) in respect of
`the combustion cycle of said
`at least one cylinder of the
`engine and,
`
`Exemplary Disclosure of Bernhardt
`Bernhardt discloses a method of operating an
`internal combustion engine. Ex. 1002 at 1
`introduction, at 8 col. 2 ¶1.
`“It has been found that under appropriate operating
`conditions the engine itself is able to act as a
`preheater for the catalytic system. Warm-up spark
`retard and an increased idling speed of the engine
`with full open throttle lead to higher exhaust
`temperatures and thereby to a greater enthalpy of
`the exhaust gases, so that the after burning system
`could be brought rapidly up to its operating
`temperature.” Id. at 8 col. 2 ¶1.
`
`“To achieve the emission targets . . . a number of
`emission concepts with conventional internal
`combustion engines and emission control systems
`have been examined.” Id. at introduction.
`Bernhardt discloses retarding the ignition of a
`gas/fuel mixture within at least one cylinder of the
`engine to ATDC in respect of the combustion cycle
`of said at least one cylinder of the engine. Ex. 1002
`at 8 col. 2 ¶¶ 1, 3, 4, at 10 col. 2 ¶ 2.
`“It has been found that under appropriate operating
`conditions the engine itself is able to act as a
`preheater for the catalytic system. Warm-up spark
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`United States Patent No. 5,655,365
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`retard and an increased idling speed of the engine
`with full open throttle lead to higher exhaust
`temperatures and thereby to a greater enthalpy of
`the exhaust gases, so that the after burning system
`could be brought rapidly up to its operating
`temperature.” Id. at 8 col. 2 ¶1.
`
`“[T]he total chemical energy of the exhaust gases
`can be used to increase the exhaust gas enthalpy if
`the shaft work is zero (W12 = 0). . . . In an engine
`the condition W12 = 0 can be attained by altering
`the ignition timing to ‘retard’. In this case the
`energy release rises very late so that the work done
`on the piston becomes less.” Id. at 8 col. 2 ¶3.
`
`“As expected the exhaust gas temperature
`increased very rapidly when the ignition timing
`was retarded to a region after T.D.C.5” Id. at 10
`col. 2 ¶2.
`
`[1.1] 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 to thereby assist in
`
`Bernhardt discloses that 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 to thereby
`assist in increasing the exhaust gas temperature of
`the engine. Ex. 1002 at 22 col. 2 ¶2, at 10 col. 2 ¶2,
`
`
`5 All emphasis in chart added unless otherwise noted.
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`increasing the exhaust gas
`temperature of the engine,
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`Inter Partes Review
`United States Patent No. 5,655,365
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`at 12 col. 1 ¶2, ¶5, at 8 col. 2 ¶1, Fig. 11.6
`“A very elegant method to achieve a rapid warm-
`up is the use of extreme spark retard from the
`moment of engine start-up by which an increased
`exhaust gas flow rate with high exhaust enthalpy is
`secured when the engine operates with
`stoichiometric mixtures (1/= 0.95-1.05) and fully
`opened throttle.” Id. at 22 col. 2 ¶2.
`
` “In order to keep the engine running the cylinder
`charge was repeatedly increased as the timing
`became more retarded until finally the throttle was
`fully open.” Id. at 10 col. 2 ¶2.
`
`“The increase in fuel flow corresponding to the
`increase in volumetric efficiency with spark retard
`raises the exhaust gas enthalpy.” Id. at 12 col. 1 ¶5.
`
`“The exhaust gas temperature diagram in Figure
`11 illustrates the influence of the air/fuel ratio and
`
`
`6 Bernhardt discloses that “the increase in fuel flow corresponding to the increase
`
`in volumetric efficiency with spark retard raises the exhaust gas enthalpy” and
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`further discloses that this increase in fuel flow occurs during “spark retard,” while
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`there is “i