David Magee
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioners,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner
`___________________
`
`Case No. IPR2015-01258
`U.S. Patent 5,655,365
`___________________
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`By:
`
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`IPR2015-01258
`Patent 5,655,365
`
`Page
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`TABLE OF EXHIBITS ............................................................................................ v
`
`I.
`
`II.
`
`V.
`
`INTRODUCTION .......................................................................................... 1
`A. Grounds in Petition ............................................................................... 1
`THE ‘365 PATENT ........................................................................................ 3
`A. Overview .............................................................................................. 3
`III. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART ........ 8
`A.
`Person Having Ordinary Skill In The Art ............................................ 9
`B.
`Claim Construction .............................................................................. 9
`“the timing of introduction of fuel into the at least one
`1.
`cylinder being maintained at before top dead centre
`(BTDC)” ................................................................................... 10
`“up to about 30○ ATDC” (claim 5) .......................................... 18
`“fuel is introduced at between 60○ to 80○ BTDC” (claim
`9) .............................................................................................. 20
`IV. THE CHALLENGED CLAIMS ARE NOT ANTICIPATED OR
`RENDERED OBVIOUS BY BERNHARDT .............................................. 21
`A.
`Summary Of Bernhardt ...................................................................... 21
`B.
`Bernhardt Does Not Disclose “While Said Ignition Is So
`Retarded, Increasing The Fuelling Rate Of Said At Least One
`Cylinder” ............................................................................................ 26
`The Petition Fails To Establish Bernhardt As Prior Art .................... 29
`Petitioner’s Reliance On Onishi And Griese Does Not Cure The
`Deficiencies Of Bernhardt .................................................................. 32
`THE CHALLENGED CLAIMS ARE NOT OBVIOUS OVER
`EICHLER ‘791 IN VIEW OF BERNHARDT ............................................. 33
`A.
`Summary Of Eichler ‘791 .................................................................. 33
`B.
`Eichler ‘791 And Bernhardt Do Not Disclose “While Said
`Ignition Is So Retarded, Increasing The Fuelling Rate Of Said
`At Least One Cylinder” ...................................................................... 36
`Petitioner’s Reliance On Onishi Does Not Cure The
`Deficiencies Of Eichler ‘791 And Bernhardt ..................................... 39
`
`2.
`3.
`
`C.
`D.
`
`C.
`
`i
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`

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`IPR2015-01258
`Patent 5,655,365
`
`VI. THE CHALLENGED CLAIMS ARE NOT ANTICIPATED OR
`RENDERED OBVIOUS BY ONISHI ......................................................... 40
`A.
`Summary Of Onishi ........................................................................... 40
`B. Onishi Does Not Disclose “While Said Ignition Is So Retarded,
`Increasing The Fuelling Rate Of Said At Least One Cylinder” ......... 41
`Petitioner’s Reliance On Griese, Eichler ‘791, And Bernhardt
`Does Not Cure The Deficiencies Of Onishi ....................................... 43
`VII. CONCLUSION ............................................................................................. 43
`
`
`C.
`
`ii
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`

`
`IPR2015-01258
`Patent 5,655,365
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Apple Inc., v. ZiiLabs, Ltd., IPR2015-00963, Paper 8 (PTAB, Oct. 1, 2015) ......... 20
`
`Page(s)
`
`CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333 (Fed. Cir. 2003) ....................... 36
`
`Cisco Systems, Inc. v. AIP Acquisition, LLC, IPR2014-00247, Paper 20
`(PTAB, July 10, 2014) .......................................................................................... 9
`
`Cisco Systems, Inc. v. Constellation Techs., IPR2014-01085, Paper 11
`(PTAB, Jan. 9, 2015) .......................................................................................... 30
`
`In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) ......................................................... 30
`
`Dell et al. v. Selene Commc’n, IPR2014-01411, Paper 23
`(PTAB, Feb. 26, 2015) ........................................................................................ 30
`
`EMC Corp. v. Personalweb Techs., LLC, IPR2013-00084, Paper 64
`(PTAB, May 15, 2014) ....................................................................................... 31
`
`Endo Pharmaceuticals v. Depomed, IPR2014-00652, Paper 12
`(PTAB, Sep. 29, 2014) ........................................................................................ 36
`
`In re Hall, 781 F.2d 897 (Fed. Cir. 1986) ................................................................ 31
`
`Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323
`(Fed. Cir. 2001) ................................................................................................... 14
`
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376 (Fed. Cir. 2001) .......... 26
`
`In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) ................................................ 30
`
`KSR Int’l Co v. Teleflex Inc., 550 U.S. 398 (2007) ................................................. 37
`
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) ................... 19
`
`In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) ........................................................... 30
`
`Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 17
`(PTAB, Dec. 21, 2012) ....................................................................................... 37
`
`iii
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`IPR2015-01258
`Patent 5,655,365
`
`NetMoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ....................... 26
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................... 8, 18
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir.1999) .......... 14
`
`In re Rambus, Inc., 694 F.3d 42 (Fed. Cir. 2012) ...................................................... 8
`
`Richardson v. Suzuki Motor Co., 868 F.2d 1226 (Fed. Cir. 1989) .......................... 26
`
`In re Royka, 490 F.2d 981 (CCPA 1974) ................................................................ 36
`
`Samsung Elecs. Co. v. Rembrandt Wireless Techs., IPR2014-00514,
`Paper 18 (PTAB, Sept. 9, 2014) ......................................................................... 31
`
`Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565
`(Fed. Cir. 1991) ................................................................................................... 26
`
`Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, Paper 11
`(PTAB, Dec. 24, 2014) ....................................................................................... 30
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795 (Fed. Cir. 1999) .......... 20
`
`ZTE v. ContentGuard, IPR2013-00134, Paper 12 (PTAB, June 19, 2013) ............ 26
`
`STATUTES
`
`35 U.S.C. § 102(b) ................................................................................................... 32
`
`35 U.S.C. § 311(b) ............................................................................................. 29, 32
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 ............................................................................................ 26, 29, 36
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`M.P.E.P. § 2131 ....................................................................................................... 26
`
`M.P.E.P. § 2701 ......................................................................................................... 3
`
`
`
`iv
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`IPR2015-01258
`Patent 5,655,365
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`TABLE OF EXHIBITS
`
`
`
`
`
`Exhibit No.
`
`Exhibit Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`U.S. Patent No. 6,725,835 of Klaus Joos et al.
`
`Patent Prosecution History of U.S. Patent No. 6,725,835
`(U.S. App. No. 10/169,333)
`
`reserved
`
`reserved
`
`Declaration of Dr. Ron Matthews, Robert Bosch LLC and
`Daimler AG v. Orbital Australia Pty Ltd, IPR2015-01259
`(Exhibit 1008, June 16, 2015)
`
`v
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`

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`IPR2015-01258
`Patent 5,655,365
`
`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`I.
`
`INTRODUCTION
`
`Orbital Australia Pty Ltd f/k/a/ Orbital Engine Company (Australia) Pty.
`
`Ltd. (“Patent Owner”) hereby submits its preliminary response (“Preliminary
`
`Response”) to the Petition for Inter Partes Review of U.S. Patent No. 5,655,365
`
`(the “Petition”) (Paper 3) in IPR2015-01258 filed by Robert Bosch LLC and
`
`Daimler AG (collectively, “Petitioner”).
`
`The PTAB should deny the Petition’s request to institute an inter partes
`
`review (“IPR”) of U.S. Patent No. 5,655,365 (the “‘365 Patent”) because the
`
`grounds in the petition do not demonstrate a reasonable likelihood of any of the
`
`challenged claims being invalid.
`
`This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is
`
`filed within three months of the July 8, 2015, date of the Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary Response
`
`(Paper 8). Patent Owner has limited its identification of the Petition’s deficiencies
`
`in this Preliminary Response, but does not waive any additional arguments by not
`
`addressing them herein.
`
`A. Grounds in Petition
`The Petition challenges independent claim 1 and dependent claims 2, 5, 9,
`
`10, 12-14, and 18 of the ‘365 Patent on the following grounds:
`
`1
`
`

`
`IPR2015-01258
`Patent 5,655,365
`
`1.
`
`Claims 1, 2, 5, 10, 12, 13, and 18 as being anticipated by Bernhardt,
`
`W. and Hoffman, E., Methods for Fast Catalytic System Warm-Up
`
`During Vehicle Cold Starts, SAE Technical Paper 720481, 1972 (Ex.
`
`1002, “Bernhardt”).
`
`2.
`
`Claim 9 as being obvious over Bernhardt in view of US Patent No.
`
`3,572,298 to Onishi (Ex. 1005, “Onishi”).
`
`3.
`
`Claim 14 as being obvious over Bernhardt in view of US Patent No.
`
`3,799,134 to Griese (Ex. 1004, “Griese”).
`
`4.
`
`Claims 1, 2, 5, 10, 12-14, and 18 as being obvious over GB Patent No.
`
`1 447 791 to Eichler (Ex. 1003, “Eichler ‘791”) in view of Bernhardt.
`
`5.
`
`Claim 9 as being obvious over Eichler ‘791 and Bernhardt and further
`
`in view of Onishi.
`
`6.
`
`7.
`
`8.
`
`Claims 1, 2, and 9 as being anticipated by Onishi.
`
`Claim 5 as being obvious over Onishi in view of Eichler ‘791.
`
`Claims 10, 13, 14, and 18 as being obvious over Onishi in view of
`
`Griese.
`
`9.
`
`Claim 12 as being obvious over Onishi in view of Bernhardt.
`
`2
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`

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`IPR2015-01258
`Patent 5,655,365
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`II. THE ‘365 PATENT
`A. Overview
`The ‘365 Patent, entitled “Method of Operating an Internal Combustion
`
`Engine,” issued to David Richard Worth et al. on August 12, 1997, and is assigned
`
`on its face to Orbital Engine Company (Australia) Pty Limited. The ‘365 Patent
`
`issued from U.S. App. No. 08/446,739, which was accorded a § 371 date of June 6,
`
`1995, and was the national stage entry of PCT App. No. PCT/AU94/00028 (filed
`
`January 24, 1994), which in turn claims priority to Australian App. No. PL6972
`
`(filed January 25, 1993). Because the ‘365 Patent issued on an international
`
`application filed prior to June 8, 1995, the ‘365 Patent expired on August 12, 2014,
`
`17 years from its issue date. See M.P.E.P. § 2701.
`
`The ‘365 Patent is generally directed to a method of operating an internal
`
`combustion engine “in order to produce high exhaust gas temperatures and is
`
`particularly useful for internal combustion engines incorporating a catalytic
`
`treatment means in the exhaust system for treatment of the exhaust gases to reduce
`
`undesirable contaminants therein.” Ex. 1001 at 1:4-9. Because the catalyst in a
`
`catalytic treatment means (e.g., a catalytic converter) must reach a minimum
`
`operating or “light off” temperature to effectively reduce emissions, catalysts are
`
`relatively ineffective when an engine starts in a cold state below the light off
`
`temperature. See Ex. 1001 at 1:10-25. The ‘365 Patent thus provides a method
`
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`IPR2015-01258
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`that rapidly increases the exhaust gas temperature of the internal combustion
`
`engine, thereby heating the catalyst and rendering it effective more quickly during
`
`a cold start:
`
`It is therefore the object of the present invention to provide a method
`of operating an internal combustion engine which will assist in
`maintaining high exhaust gas
`temperatures and
`thus, where
`appropriate, achieve rapid light-off of the catalytic material in the
`exhaust system and maintain such a light-off condition whilst the
`engine is operating.
`
`With this object in view, there is provided 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. While said ignition is so retarded, the
`fuelling rate of said at least one cylinder is preferably increased to a
`level higher than that required when the engine is operating normally.
`
`Ex. 1001 at 1:49-64.
`
`FIG. 2 of the ‘365 Patent (annotated and reproduced below) depicts cylinder
`
`pressure as a function of the crankangle during an exemplary compression stroke
`
`and expansion stroke of a combustion cycle in accordance with several aspects of
`
`the methods disclosed in the ‘365 Patent. As shown in FIG. 2, the vertical dashed
`
`line corresponds to top dead center (“TDC”) (i.e., the position of the piston furthest
`
`from the crankshaft at which the combustion chamber has the smallest volume),
`
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`while the region to the left of the dashed line corresponds to before top dead center
`
`(“BTDC”) (i.e., during the compression stroke) and the region to the right
`
`corresponds to after top dead center (“ATDC”) (i.e., during the expansion stroke).
`
`The piston achieves bottom dead center (“BDC”) (i.e., the position of the piston
`
`closest to the crankshaft at which the combustion chamber has the greatest volume)
`
`at the beginning of the compression stroke and at the end of the expansion stroke.
`
`
`
`As schematically illustrated above, FIG. 2 depicts an exemplary ignition of
`
`the fuel within the cylinder at -20° BTDC (i.e., at 20° ATDC). Id. at 3:5-9.
`
`Whereas in a typical direct injected internal combustion engine “ignition within the
`
`cylinder occur[s] prior to top dead centre at approximately 35° BTDC” (i.e., during
`
`the compression stroke as indicated in the red line above, id. at 2:59-63; see also
`
`FIG. 1), the ‘365 Patent discloses that “ignition can be retarded up to about -30°
`
`BTDC (i.e 30° ATDC) and is preferably of the order of -20° BTDC (i.e 20°
`
`ATDC).” Id. at 1:65-67; see also id. at 3:1-9. In further embodiments of the
`
`5
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`IPR2015-01258
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`disclosed methods in a multi-cylinder engine, the ‘365 Patent provides that the
`
`degree of ignition retard can be varied (“typically between 15° ATDC to 30°
`
`ATDC”) from cycle to cycle and from cylinder to cylinder. Id. at 3:41-44.
`
`Additionally, the ‘365 Patent discloses that “[w]hile said ignition is so
`
`retarded, the fuelling rate of said at least one cylinder is preferably increased to a
`
`level higher than that required when the engine is operating normally.” Id. at 1:61-
`
`64. Over the course of the exemplary combustion cycle depicted in FIG. 2, for
`
`example, the ‘365 Patent discloses that the fuelling rate can be varied such that
`
`“[p]referably, the fuelling rate (measured in mg/cylinder/cycle) is greater than 50%
`
`of the fuelling rate at maximum load, and more preferably is up to about 80% of
`
`the fuelling rate at maximum load.” Id. at 2:3-6; see also 3:10-12. In addition to
`
`varying the fuelling rate (i.e., mg/cylinder/cycle), the ‘365 Patent discloses that the
`
`timing of the introduction of fuel into the combustion chamber can also be varied
`
`from the exemplary start of injection at 60° BTDC depicted in FIG. 2 above: “The
`
`fuel may be introduced to the combustion chamber before top dead centre (BTDC)
`
`and most preferably at 60° to 80° BTDC in the case of a direct injected engine. It
`
`is however also envisaged that the fuel be introduced to the cylinder after top dead
`
`centre (ATDC) under certain conditions or situations.” Id. at 2:10-14.
`
`“By virtue primarily of the retarded ignition and also to a lesser extent the
`
`high fuelling rate, the overall thermal efficiency (i.e the efficiency of conversion of
`
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`IPR2015-01258
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`energy provided by combustion of the fuel into useful work) is quite low. Thus
`
`there is a high level of thermal energy available to heat the catalytic treatment
`
`means provided for treatment of the exhaust gases.” Id. at 3:48-52. In addition,
`
`“[b]ecause of the inefficient combustion conditions, gases with lower oxidation
`
`temperatures such as H and CO will be produced. These gases can react with the
`
`catalytic material to increase its temperature and therefore aid the catalytic material
`
`in achieving its light-off temperature.” Id. at 3:62-67. Indeed, due to the retarded
`
`ignition ATDC and “high fuelling rate conditions” (i.e., injection of additional fuel
`
`during the expansion stroke), the ‘365 Patent discloses that “there may be
`
`insufficient time between the commencement of ignition and the opening of the
`
`exhaust port for all of the fuel to be combusted within the combustion chamber”
`
`such that the “combustion may continue as the combustion gases flow from the
`
`combustion chamber into the exhaust system. In such a case, it may be beneficial
`
`to place a flameshield upstream of the catalytic treatment means to protect it from
`
`contact with any flames,” as shown for example by element 5 in FIG. 3. Id. at
`
`4:24-32.
`
`Various features of the methods disclosed in the ‘365 Patent are captured by
`
`independent claim 1, which recites as follows (emphasis added):
`
`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
`
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`IPR2015-01258
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`
`combustion cycle of said at least one cylinder of the engine and, 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, the timing of the introduction of fuel into
`the at least one cylinder being maintained at before top dead centre
`(BTDC).
`
`Challenged claims 2, 5, 9, 10, 12-14, and 18 depend from independent claim
`
`1 and include additional limitations. For example, claim 2 further recites that “the
`
`fuelling rate is greater than 50% of the fuelling rate at maximum load.” Claim 5
`
`further recites “wherein the ignition is retarded up to about 30○ ATDC.” Claim 11,
`
`which is not challenged in this proceeding but depends on claim 1 via challenged
`
`claim 10, further recites that “a flame arrester is inserted between an engine
`
`exhaust port and the catalytic treatment means.”
`
`III. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART
`Claims of an expired patent, as is the present case, are construed in a manner
`
`similar to that of a district court’s review. In re Rambus, Inc., 694 F.3d 42, 46
`
`(Fed. Cir. 2012). Specifically, claim terms are given their ordinary and customary
`
`meanings, as would be understood by a person of ordinary skill in the art, at the
`
`time of the invention, having taken into consideration the language of the claims,
`
`the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) (en banc). In rendering its construction under Phillips, the
`
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`
`Board does not apply a presumption of validity and does not apply a rule of
`
`construction with an aim to preserve the validity of claims. Cisco Systems, Inc. v.
`
`AIP Acquisition, LLC, IPR2014-00247, Paper 20 at 2-3 (July 10, 2014).
`
`Person Having Ordinary Skill In The Art
`
`A.
`Petitioner alleges that a hypothetical person of ordinary skill in the field of
`
`the ‘365 Patent “would have at least an undergraduate degree in mechanical
`
`engineering or a similar technical field and at least two (2) years of relevant work
`
`experience or equivalent advanced education in a field related to engine control
`
`technology.” Paper 3 at 3 (footnote 1). For purposes of its Preliminary Response,
`
`Patent Owner applies Petitioner’s proposed standard without prejudice.
`
`B. Claim Construction
`Though the Petition’s claim construction section includes the proposed
`
`construction of ten separate terms, Patent Owner submits that a construction for a
`
`majority of these terms need not be performed at this preliminary stage of the
`
`proceedings. Rather, as discussed in detail below, the Board need only determine
`
`that the Petitioner’s proffered construction of “the timing of introduction of fuel
`
`into the at least one cylinder being maintained at before top dead centre (BTDC)”
`
`fails to reflect the customary meaning of the term in light of the challenged claims’
`
`9
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`IPR2015-01258
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`plain language, the specification as a whole, and the prosecution history of the ‘365
`
`Patent.1
`
`1.
`
`“the timing of introduction of fuel into the at least one
`cylinder being maintained at before top dead centre
`(BTDC)”
`
`Claim 1, in pertinent part, recites “the timing of introduction of fuel into the
`
`at least one cylinder being maintained at before top dead centre (BTDC).” In view
`
`of the plain and ordinary meaning of the words of this limitation itself (as well as
`
`when viewed in the context of the remainder of claim 1, the specification of the
`
`‘365 Patent, and the prosecution history), a person of ordinary skill in the art would
`
`understand that this term means that “the start of fuel injection for at least one
`
`cylinder is before top dead center.”
`
`Petitioner, on the other hand, alleges that the term should be construed to
`
`mean “all fuel introduced into the at least one cylinder during a combustion cycle
`
`is controlled to occur BTDC.” Paper 3 at 5 (emphasis added). The Petition’s
`
`proffered reasoning that the ‘365 Patent requires that all fuel is introduced BTDC
`
`is found at pages 5-6 of the Petition and consists exclusively of an outcome-
`
`1 In addition, Patent Owner briefly addresses Petitioner’s proposed constructions
`
`for two additional terms present in the challenged dependent claims. Patent Owner
`
`reserves its right to submit expert testimony and additional argument as to the
`
`proper construction of any term should a trial be instituted.
`
`10
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`
`oriented analysis that twists the phrase “being maintained at” in a manner that is
`
`unsubstantiated by the portions of the specification of the ‘365 Patent and
`
`prosecution history upon which Petitioner purportedly relies. For example, the
`
`Petition alleges as follows:
`
`The ’365 patent describes that, in typical engines fuel is introduced at
`approximately 60° BTDC with ignition occurring at approximately
`30° BTDC. It then describes the method “according to the invention”
`where fuel is still introduced BTDC (as between 60° and 80° BTDC),
`while the ignition is retarded at up to about 30° ATDC. In other
`words, ignition is retarded to ATDC, but the timing of introduction of
`fuel is left unchanged as compared to the timing of fuel introduction
`in “typical engines”— i.e., it is “maintained at” BTDC. In this
`context, “the timing of introduction of fuel into the at least one
`cylinder being maintained at before top dead centre means that all
`fuel is introduced into the cylinder BTDC, as in typical engines.
`
`Paper 3 at 5 (emphasis original, internal cites omitted).
`
`Petitioner’s above attempt to explain the meaning of “introduced” or
`
`“introduction” cannot be sustained. Most blatantly, Petitioner’s circular reasoning
`
`relies on the assumption that the “timing of introduction” refers to both the start of
`
`injection (commonly referred to as SOI by those skilled in the art) and the end of
`
`injection (commonly referred to as EOI), which is the very notion that Petitioner is
`
`attempting to prove. That is, under Petitioner’s assumption, the Petitioner
`
`fallaciously concludes that if the “timing of introduction” is “maintained at”
`
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`IPR2015-01258
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`
`BTDC, then both the SOI and EOI must also occur BTDC such that “all fuel is
`
`introduced into the cylinder BTDC.” However, it is readily apparent based on
`
`similarly circular logic that if it is instead assumed that the “timing of
`
`introduction” only refers to the start of injection (as would be understood by a
`
`person skilled in the art), then if the “timing of introduction” is “maintained at”
`
`BTDC, then the SOI must occur BTDC.
`
`Equally unavailing is Petitioner’s implication that the ‘365 Patent’s
`
`reference to introducing fuel “between 60° and 80° BTDC” indicates an interval
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`within which all fuel is “introduced.” That 60° BTDC and 80° BTDC do not
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`represent the start and stop endpoints of fuel injection, respectively, becomes clear
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`when one realizes that 60° before top dead centre (BTDC) actually occurs after 80°
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`BTDC in the crankangle space. A POSITA would therefore not believe that this
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`disclosure outwardly represents a range describing the interval in time between
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`SOI and EOI, as implied by Petitioner.
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`Moreover, there is no support for Petitioner’s construction that can be
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`derived from the schematic depiction of crankangle timing in FIGS. 1 and 2 of the
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`‘365 Patent. To the contrary, a person of ordinary skill in the art would recognize
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`that the indication of “Fuel Introduced” at a single point on the crankangle timing
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`diagram merely refers to the crankangle at the start of injection (SOI). To be sure,
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`a person of ordinary skill in the art would recognize that the delivery of fuel into a
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`cylinder is not an instantaneous event that occurs at a single point in time. Rather,
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`fuel injection undoubtedly takes a finite amount of time such that the total delivery
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`of fuel could not be accomplished at the instantaneous point labelled in FIG. 2.
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`Indeed, one skilled in the art would recognize that even with the same SOI, two
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`fuel injection patterns could be drastically different, for example, in their duration,
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`number of pulses of fuel, pulse duration, etc., a fact which is not addressed in
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`Petitioner’s simplistic analysis.
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`Tellingly, the Petition’s analysis exclusively focuses on the phrase
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`“maintained at,” but does not even attempt to address the plain and ordinary
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`meaning of the phrase “timing of introduction,” which would readily be
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`appreciated by a person skilled in the art to represent a “start of injection” or SOI.
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`Indeed, the Petitioner fails to proffer any evidence from Petitioner’s declarant or
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`otherwise as to the plain meaning of this recitation to a person of ordinary skill in
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`the art.2
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`Petitioner’s claim construction analysis is also deficient in that it attempts to
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`divorce the meaning of the recitation “the timing of introduction of fuel into the at
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`least one cylinder being maintained at before top dead centre (BTDC)” from the
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`remainder of the claim language, thus ignoring the proper starting point for any
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`2 The Petition’s claim construction arguments at pages 3-9 do not once refer to or
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`rely on the testimony of Dr. Ron Matthews submitted as Exhibit 1006.
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`claim construction analysis—the language of the claims themselves. See Pitney
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`Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); see
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`also Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.
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`Cir. 2001) (“In construing claims, the analytical focus must begin and remain
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`centered on the language of the claims themselves, for it is that language that the
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`patentee chose to use to ‘particularly point[ ] out and distinctly claim[ ] the subject
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`matter which the patentee regards as his invention.’”).
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`With regard to the instant Petition and that of Petitioner’s parallel
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`proceedings against the ‘365 Patent (captioned IPR2015-01259), it appears that the
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`Petitioner has ignored this fundamental tenet of claim construction in an attempt to
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`avoid addressing an explicit recitation of claim 1 that is both highly relevant to the
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`proper meaning of the “timing of introduction” and to the Petitioner’s invalidity
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`analysis, as discussed below. When viewed as a whole, claim 1 not only requires
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`that fuel injection during a combustion cycle starts BTDC (as both parties agree),
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`but also requires an active increase in the fuelling rate while the ignition of a
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`gas/fuel mixture within at least one cylinder of the engine is retarded to after top
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`dead centre (ATDC) in respect of the combustion cycle of said at least one cylinder
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`of the engine. In light of claim 1’s recitation of “while ignition is so retarded,
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`increasing the fuelling rate…,” the use of the language “being maintained at” in the
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`phrase “the timing of the introduction of fuel into the at least one cylinder being
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`maintained at before top dead centre (BTDC)” plainly serves to contrast the timing
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`of the start of injection with the timing of increasing the fuelling rate. That is,
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`though the start of fuel injection is maintained at BTDC, claim 1 requires that fuel
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`injection nonetheless continues at ATDC so as to increase the fuelling rate
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`(mg/cylinder/cycle).
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`In fact, when the recitations of claim 1 are properly viewed as a whole,
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`Petitioner’s allegation that Patent Owner’s construction renders superfluous the
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`term “being maintained” appear meritless. Rather, it is Petitioner’s proposed
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`construction that renders meaningless claim 1’s clear requirement that fuel is
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`injected ATDC. Though the Petition avoids attributing any definitive meaning as
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`to claim 1’s affirmative step of “increasing” the fuelling rate “while said ignition is
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`so retarded,” there is no doubt that Bosch3 previously recognized this clear
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`teaching of the ‘365 Patent during prosecution of Robert Bosch GmbH’s U.S.
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`Patent No. 6,725,835 (“the Bosch Patent”), which is submitted herewith as Exhibit
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`2001.4 Also submitted herewith as Exhibit 2002 is a copy of the file wrapper of
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`3 The Petition identifies Robert Bosch LLC and Daimler AG as Petitioner. Robert
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`Bosch GmbH is a named as a real party-in-interest, and is identified as “the
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`ultimate corporate parent for Robert Bosch LLC.” Paper 3 at 58.
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`4 The Bosch Patent is assigned on its face to Robert Bosch GmbH and represents
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`the § 371 national phase entry of PCT App. No. PCT/DE00/0463, filed on
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`the Bosch Patent in which the Examiner issued an Office Action rejecting Bosch’s
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`claims as being anticipated by the ‘365 Patent. See Ex. 2002 at 146-151/176. In
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`attempting to distinguish over the ‘365 Patent, Bosch’s response acknowledged
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`that “[i]n column 5, line 38, Worth [i.e., the ‘365 Patent] further refers to the
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`injection quantity being increased in a retarded injection angle.” Ex. 2002 at
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`160/176 (emphasis added). Bosch cannot have it both ways. When it suited its
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`need to obtain patent rights, Bosch argued over the ‘365 Patent on the basis of the
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`‘365 Patent’s disclosure of fuelling ATDC (i.e., in a retarded injection angle). In
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`now petition