Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: December 30, 2015
`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
`____________
`
`
`
`Before KEN B. BARRETT, HYUN J. JUNG, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Trials@uspto.gov
`571-272-7822 Entered: December 30, 2015
`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
`____________
`
`
`
`Before KEN B. BARRETT, HYUN J. JUNG, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-01258
`Patent 5,655,365
`
`
`I.
`
`INTRODUCTION
`
`Robert Bosch LLC and Daimler AG (collectively “Petitioner”) filed a
`
`Petition requesting inter partes review of U.S. Patent No. 5,655,365 (“the
`’365 patent”). Paper 3 (“Pet.”). The Petition challenges the patentability of
`claims 1, 2, 5, 9, 10, 12–14, and 18 of the ’365 patent on the grounds of
`anticipation under 35 U.S.C. § 102(b) and obviousness under 35 U.S.C.
`§ 103. Orbital Australia Pty Ltd, the owner of the ’365 patent, filed a
`Preliminary Response to the Petition. Paper 10 (“Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314(a).
`
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to patentability of claims for which inter partes review is
`instituted. Any final decision would be based on the record as fully
`developed during trial.
`
`After considering the information presented in the Petition and Patent
`Owner’s Preliminary Response, we are persuaded there is a reasonable
`likelihood Petitioner would prevail with respect to at least one of the claims
`challenged in the Petition. We institute an inter partes review of all of the
`challenged claims, claims 1, 2, 5, 9, 10, 12–14, and 18, of the ’365 patent.
`
`A. Related Proceedings
`Both parties identify, as matters involving the ’365 patent, a district
`
`court case 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.), and Patent Trial and Appeal Board case IPR2015-01259.
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`Pet. 58–59; Paper 5. Additionally, we note that Petitioner filed a Petition in
`IPR2016-00083 challenging claims of the ’365 patent.
`
`B. The’365 Patent
`The ’365 patent pertains to “a method of operating an internal
`
`combustion engine in order to produce high exhaust gas temperatures” in the
`context of catalytic treatment of exhaust gases to reduce contaminants.
`Ex. 1001, col. 1, ll. 4–9. The patent explains that the catalyst, to effectively
`reduce contamination levels, must attain a minimum operating temperature,
`the “light-off” temperature. Id., col. 1, ll. 10–17. The patent is directed to a
`method to reduce the time required to raise the catalyst to a light-off
`temperature condition, for example, upon engine start-up after a period of
`non-operation, and to maintain that condition. Id., col. 1, ll. 19–25, 49–55.
`
`The ’365 patent describes a method where the ignition of the air/fuel
`mixture within at least one engine cylinder is retarded to after top dead
`centre1 (ATDC) and, while the ignition is retarded, increasing the fueling
`rate to that cylinder to a level higher than required when operating normally.
`Id., col. 1, ll. 56–64. The Specification, explaining why there is a need to
`increase the fueling rate during the disclosed method of operation, states:
`[A]t startup the engine typically will operate at a relatively low
`load and speed, such as is termed “engine idle”, and therefore
`the amount of fuel being delivered to the engine is
`comparatively small and hence, only a relatively small amount
`of heat is available for raising the temperature of the exhaust
`gases and hence the temperature of the catalytic material to its
`“light-off”' temperature.
`
`1 The ’365 patent uses Australian spelling for certain words such as “centre”
`and “fuelling.” We use in this decision both the Australian and American
`spellings interchangeably.
`
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`Id., col. 1, ll. 26–32. The timing of the introduction of fuel is maintained at
`before top dead centre (BTDC). Id., col. 6, ll. 16–18 (claim 1).
`
`Figures 1 and 2 of the ’365 patent are reproduced below:
`
`
`
`
`
`Figures 1 and 2 depict graphs showing the cylinder pressure-crankangle
`characteristics for a typical direct injected two-stroke internal combustion
`engine and for such an engine operated according to the method of the ’365
`patent, respectively. Id., col. 2, ll. 46–52.
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`C. Illustrative Claim
`Claim 1 is an independent claim. Claims 2, 5, 9, 10, 12–14, and 18
`
`depend directly or indirectly from independent claim 1. Claim 1, reproduced
`below with paragraphing added, is illustrative:
`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,
`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).
`Ex. 1001, col. 6, ll. 7–18.
`
`D. Applied References
`W E. Bernhardt and E. Hoffman, Methods for Fast
`Catalytic System Warm-Up During Vehicle Cold Starts,
`Society of Automotive Engineers (1972) (“Bernhardt”)
`Eichler et al.
`GB 1 447 791
`Sept. 2, 1976 Ex. 1003
`(“Eichler ’791”)
`Griese
`Onishi
`
`US 3,799,134 Mar. 26, 1974 Ex. 1004
`US 3,572,298 Mar. 23, 1971 Ex. 1005
`
`Ex. 1002
`
`Petitioner relies also on the Declaration of Dr. Ron Matthews, dated
`
`June 15, 2015, (Ex. 1006) in support of Petitioner’s arguments.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
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`Claims
`Basis
`Reference[s]
`§ 102(b) 1, 2, 5, 10, 12, 13, and 18
`Bernhardt
`§ 103(a) 9
`Bernhardt and Onishi
`§ 103(a) 14
`Bernhardt and Griese
`§ 103(a) 1, 2, 5, 10, 12–14, and 18
`Eichler ’791 and Bernhardt
`Eichler ’791, Bernhardt, and Onishi § 103(a) 9
`Onishi
`§ 102(b) 1, 2, and 9
`Onishi and Eichler ’791
`§ 103(a) 5
`Onishi and Griese
`§ 103(a) 10, 13, 14, and 18
`Onishi and Bernhardt
`§ 103(a) 12
`
`II. ANALYSIS
`
`A. Claim Construction
`Both parties maintain that the ’365 patent has expired. Prelim.
`
`Resp. 3; see Pet. 3–4. “[T]he Board’s review of the claims of an expired
`patent is similar to that of a district court’s review.” In re Rambus, Inc., 694
`F.3d 42, 46 (Fed. Cir. 2012). Accordingly, we apply the principle set forth
`in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
`(en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996)), that the “words of a claim ‘are generally given their
`ordinary and customary meaning’” as understood by a person of ordinary
`skill in the art in question at the time of the invention. “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
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`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`
`On this record and for purposes of this Decision, we determine that
`only the claim phrases addressed below require express construction.
`“while said ignition is so retarded” and
`“the timing of the introduction of fuel . . . maintained at . . . BTDC”
`Claim 1 calls for: 1) retarding the ignition to ATDC; 2) increasing the
`
`fueling rate, while the “ignition is so retarded,” to a level higher than that
`during normal operation; and 3) maintaining fuel introduction timing at
`BTDC.
`
`As to the fuel-introduction timing limitation, the parties agree that the
`claim requires at least the initiation of fuel addition to the cylinder begin
`before top dead center. Prelim. Resp. 10; see Pet. 5. Specifically, Patent
`Owner argues that the term “introduction” refers to the start of injection and,
`thus, the limitation requires merely that fuel injection begin BTDC but does
`not require that the addition of fuel end in the BTDC range. See Prelim.
`Resp. 12, 14. Petitioner, on the other hand, argues that the “maintained”
`language requires that all fuel be injected at BTDC. Pet. 5. For purposes of
`this decision, we agree with the parties that claim 1 requires the start of the
`injection2 of fuel begins at BTDC. We need not and do not reach at this time
`the issue of whether the claims require all fuel to be injected BTDC.
`
`As to the limitation regarding increasing the fueling rate, Patent
`Owner argues that:
`
`
`2 We, like the parties, assume for purposes of this decision that fuel
`introduction in the claimed invention involves fuel injection. See Pet. 2;
`Prelim. Resp. 6.
`
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`
`[w]hen viewed as a whole, claim 1 not only requires that fuel
`injection during a combustion cycle starts BTDC (as both
`parties agree), but also requires an active increase in the
`fuelling rate while the ignition of a gas/fuel mixture within at
`least one cylinder of the engine is retarded to after top dead
`centre (ATDC).
`Prelim. Resp. 14. Thus, argues Patent Owner, claim 1 has a “clear
`requirement that fuel is injected ATDC.” Id. at 15; see also id. at 27 (“claim
`1 also requires that fuel injection occurs after TDC”). For the following
`reasons, we are not persuaded of the correctness of Patent Owner’s proposed
`construction.
`
`We recognize that the timing of ignition and fuel introduction of the
`claimed invention are expressed in terms of whether they occur at a
`crankangle before or after top dead center. However, the timing limitations
`of claim 1, in general, refer to engine operating conditions—the operating
`conditions of the claimed invention and normal operating conditions—not
`with reference to the crankangle during a given cycle as implied by Patent
`Owner’s proposed constructions.
`
`The Specification refers to “ignition retard” and “high fuelling rate” as
`“conditions” and as distinct from normal conditions. For example, the
`Specification states:
`When the appropriate sensor or sensors detect that the engine
`parameter, for example the exhaust system temperature, is again
`above the acceptable value, the engine management system
`may then cease to effect the ignition retard and high fuelling
`rate conditions and return the cylinder to normal ignition timing
`and fuelling rates.
`Ex. 1001, col. 5, ll. 24–29 (emphasis added); see also id., col. 3, ll. 26–27
`(“the cylinder(s) operating under ignition retard/high fuelling rate
`
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`conditions”); id., col. 4, ll. 17–18 (“maintaining the retarded ignition and
`high fuelling rate conditions for a ‘light-off’ period only”). These are
`conditions that may be enabled. Id., col. 5, ll. 50–54 (distinguishing fuel-
`per-cycle at normal idle from “when retarded ignition and a high fuelling
`rate is enabled in accordance with the method of the present invention”).
`
`The phrase “while said ignition is so retarded” is not, as Patent Owner
`suggests, limited to the period of time when the crankangle position during a
`given cycle is after top dead center. The engine is in a period “while said
`ignition is so retarded [to ATDC]” at all crankangle positions when the
`retarded-ignition condition is enabled, including those times during the cycle
`when the crankangle is before top dead center. Thus, when the engine is
`operated in a condition where ignition is at a retarded angle after top dead
`center and all fuel is injected before the crankangle reaches top dead center,
`it still would be true that the fuel was injected while the ignition was “so
`retarded.”
`
`Patent Owner impliedly argues that fueling rate refers to quantity per
`unit-time (i.e. milligrams per second) and that that rate must be increased
`during each cycle. See Prelim. Resp. 28–29. However, claim 1 refers to
`“fuelling rate” as the quantity of fuel injected in a cylinder during a single
`cycle not the change in the quantity injected within a given cycle. See
`Ex. 1001, col. 2, ll. 3–4 (“the fuelling rate (measured in
`mg/cylinder/cycle)”). The language of independent claim 1 defines the
`fueling rate level relative to that “when the engine is operating normally.”
`Ex. 1001, col. 6, ll. 11–14.
`
`Accordingly, for purposes of this decision, the phrase “while said
`ignition is so retarded, 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” means increasing the quantity of fuel delivered to a cylinder,
`while the cylinder is in an ignition-retarded condition, to a level higher than
`the quantity of fuel that would be delivered in a normal operating condition.
`
`B. Anticipation by Bernhardt
`Petitioner asserts that claims 1, 2, 5, 10, 12, 13, and 18 are anticipated
`
`by Bernhardt (Ex. 1002). Pet. 12–24. In support of this assertion, Petitioner
`provides an analysis of Bernhardt’s disclosure and includes claim charts
`explaining how each limitation of the challenged claims is disclosed in
`Bernhardt. We are persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing at trial on its challenge as to claims 1, 2, 5, 10, 12,
`13, and 18.
`
`Bernhardt pertains to studies regarding the rapid warm-up of a
`catalytic converter during engine cold starts. Ex. 1002, 1. Bernhardt
`discloses:
`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. Bernhardt explains that “[a]s expected the exhaust gas temperature
`increased very rapidly when the ignition timing was retarded to a region
`after T.D.C.” Id. at 10. Bernhardt also discloses the introduction of
`secondary air upstream of a catalyst bed during the initial period after a cold
`engine start-up. Id. at 2.
`
`Patent Owner argues that Petitioner has failed to meet its burden of
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`establishing Bernhardt as a prior art printed publication. Prelim.
`Resp. 29, 32. Specifically, Patent Owner maintains that Petitioner has not
`provided sufficient evidence to establish the publication date or accessibility
`of Bernhardt. Id. at 31.
`
`Petitioner’s Exhibit 1002 is a cover page with an article attached. The
`cover page appears to be from an SAE International website describing and
`offering for the purchase of a technical paper titled “Methods for Fast
`Catalytic System Warm-Up During Vehicle Cold Starts” by
`Volkswagonwerk AG’s W. Bernhardt and E. Hoffmann. The cover page
`identifies the paper number as 720481 and as “Published: 1972-02-01.”
`Ex. 1002, cover page. On the second page of the exhibit begins what
`appears to be a technical article bearing the same title, authors, and paper
`number (the latter handwritten under the title).
`
`On the current record and at this stage of the case, we are persuaded
`that Petitioner has provided sufficient evidence to establish the publication
`date and accessibility of Bernhardt.3 Our rules provide procedures for Patent
`Owner to further challenge and, if appropriate, move to exclude an exhibit.
`See 37 CFR § 42.64. Our determination to institute an inter partes review
`on a not fully developed record is not dispositive of the ultimate conclusion
`as to whether Bernhardt qualifies as prior art.
`
`Patent Owner also argues that Bernhardt fails to disclose “while said
`ignition is so retarded, increasing the fuelling rate of said at least one
`
`
`3 Patent Owner points out that the indicated download dates for the cover
`page and the underlying article are different, and one day apart. Prelim.
`Resp. 31. Although odd, this is not fatal to the sufficiency of the threshold
`showing of public accessibility of the reference before the critical date.
`
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`cylinder.” Prelim. Resp. 26–29. This argument is premised on Patent
`Owner’s position that the claim 1 “requires that fuel injection occurs after
`TDC (i.e., ‘while said ignition is so retarded’).” Id. at 27. As discussed
`above, we have rejected that proposed claim construction, and therefore do
`not find persuasive Patent Owner’s argument regarding Bernhardt’s
`disclosure of the fueling rate feature. Patent Owner, in its Preliminary
`Response, does not otherwise dispute Petitioner’s contentions regarding the
`disclosures of Bernhardt.
`
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail at trial in showing
`that Bernhardt anticipates claims 1, 2, 5, 10, 12, 13, and 18.
`
`C. Obviousness over Bernhardt and Onishi
`Claim 9 depends from claim 1 and recites “the fuel is introduced at
`
`between 60° to 80° BTDC.” Ex. 1001, col. 6, ll. 35–36. Petitioner
`acknowledges that Bernhardt “does not explicitly disclose introducing all
`fuel . . . between 60° to 80° BTDC.” Pet. 24. Petitioner turns to Onishi (Ex.
`1005) for this feature and reasons that it would have been obvious to utilize
`the claimed fuel introduction range in Bernhardt’s method. Id. at 24–28.
`Onishi is directed to a stratified charge engine4 with reduced noxious
`
`components in the engine emissions and where performance and durability
`in full load operation are improved. Ex. 1005, col. 1, ll. 15–21. Onishi
`explains that “the higher the air-fuel ratio the slower the combustion
`rate and the higher the exhaust temperature [and] [t]his tends to invite
`
`4 A stratified charge engine is one where a relatively rich fuel mixture is
`maintained around the spark plug while a lean overall mixture is maintained
`in the cylinder. See Ex. 1005, col. 2, ll. 12–24.
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`troubles in the exhaust valve system, increased unsmoothness of combustion
`process, engine roughness, and frequent occurrence of misfire, which in turn
`results in difficulty of starting and drop of acceleration.” Id., col. 2, ll. 44–
`51. Onishi discloses that “fuel injection and ignition may be controlled
`independently of each other to a considerable extent.” Id., col. 10, ll. 1–2.
`Onishi states:
`[W]hile the initiation angle of fuel injection is varied from 140
`deg. ahead of the top dead center to 80 deg. ahead of the same
`center, i.e., over a range of 60 deg. in terms of the crank angle,
`the ignition timing may be varied independently thereof and the
`ignition and operation are made possible without any
`undesirable outcome, over a range from about 40 deg. ahead of
`the top dead center to a point past the said center.
`Id., col. 9, ll. 65–73. Onishi explains that “[a]mple allowance for ignition
`timing brings about a stable and practically useful stratified charge, and
`permits operation at a lean overall air-fuel ratio.” Id., col. 7, ll. 67–69.
`
`Patent Owner relies on its arguments concerning the Bernhardt
`anticipation ground and does not challenge otherwise Petitioner’s
`contentions regarding this ground at this time. Prelim. Resp. 32.
`
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail at trial in showing
`that the combination of Bernhardt and Onishi renders obvious claim 9.
`
`D. Obviousness over Bernhardt and Griese
`Claim 14 depends from claim 1 and recites “wherein the engine is
`
`operated according to said method [of claim 1] when the temperature of the
`catalytic material is sensed or determined to be below a required operating
`temperature.” Ex. 1001, col. 6, ll. 49–52. Petitioner acknowledges that
`Bernhardt “does not explicitly disclose that the [catalytic material]
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`temperature is measured by a sensor.” Pet. 29. Petitioner relies on Griese
`(Ex. 1004) for the disclosure of a sensor for sensing the temperature of a
`catalytic material and contends claim 14 would have been obvious over
`Bernhardt and Griese. Pet. 28–31.
`
`Griese pertains to the operation of an engine to bring an exhaust gas
`cleaning catalyzator quickly to its operating temperature during a cold start
`of the engine via the burning of an abnormally high quantity of fuel-air
`mixture to generate a high enthalpy exhaust gas. Ex. 1004, col. 4, ll. 34–49.
`Griese teaches the use of a thermostat to control the system such that the
`heating method is used until the exhaust cleaning arrangement reaches the
`required temperature. Id., col. 5, ll. 30–34, 62–66.
`
`Patent Owner relies on its arguments concerning the Bernhardt
`anticipation ground and does not challenge otherwise Petitioner’s
`contentions regarding this ground at this time. Prelim. Resp. 32.
`
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail at trial in showing
`that the combination of Bernhardt and Griese renders obvious claim 14.
`
`E. Obviousness over Eichler ’791 and Bernhardt
`Petitioner argues that claims 1, 2, 5, 10, 12–14, and 18 would have
`
`been obvious over Eichler ’791 and Bernhardt. Pet. 31–41.
`
`Bernhardt has been discussed above. Eichler ’791 pertains to an
`internal combustion engine having an electrically controlled inlet manifold
`injection system. Ex. 1003, 1, ll. 86–89, 2, ll. 21–23. Eichler ’791 discloses
`that “[w]hen the exhaust gases of the internal combustion engine are passed
`through a thermal and/or catalytic reactor, . . . it is often desired to heat such
`a reactor quickly during the warming-up phase of the internal combustion
`
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`engine and thereby cause it to operate.” Id. at 3, l. 130–4, l.7. When the
`engine is cold, the spark may be retarded and an auxiliary air valve may be
`opened. Id. at 4, ll. 7–23. Eichler ’791 discloses that a temperature sensor
`in the exhaust system “operates in parallel with the engine speed transducer
`and at low exhaust gas temperatures retards the spark timing device and
`opens the auxiliary air valve during slow idling.” Id. at 5, ll. 69–76. “The
`ignition processes are then triggered at a crankshaft angle of 20° to 25°
`A.T.D.C.” Id. at 4, ll. 110–112.
`Petitioner relies on Bernhardt, inter alia, for claim 1’s recitation of
`
`“while said ignition is so retarded, increasing the fuelling rate” and
`maintaining fuel introduction at BTDC. See Pet. 31, 33–37.
`
`Patent Owner again unpersuasively argues, based on a proposed claim
`construction that we have rejected, that the references fail to disclose “while
`said ignition is so retarded, increasing the fuelling rate of said at least one
`cylinder.” Prelim. Resp. 37–39.
`
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail at trial in showing
`that the combination of Eichler ’791 and Bernhardt renders obvious claims
`1, 2, 5, 10, 12–14, and 18.
`
`F. Obviousness over Eichler ’791, Bernhardt, and Onishi
`Petitioner acknowledges that Eichler ’791 and Bernhardt “do not
`
`explicitly disclose introducing fuel between at 60° to 80° BTDC” as called
`for by dependent claim 9. Pet. 41. Petitioner turns to Onishi for this feature
`and reasons that it would have been obvious to utilize the claimed fuel
`introduction range with the ignition timing retard of Eichler ’791 and the
`increased fueling rate of Bernhardt. Id. at 41–44.
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`Patent Owner relies on its arguments concerning the underlying
`
`Eichler ’791 and Bernhardt obviousness ground and does not challenge
`otherwise Petitioner’s contentions regarding this ground at this time. Prelim.
`Resp. 39.
`
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail at trial in showing
`that the combination of Eichler ’791, Bernhardt, and Onishi renders obvious
`claim 9.
`
`G. Anticipation by Onishi and Obviousness over Onishi and
`Eichler ’791, over Onishi and Griese, and over Onishi and Bernhardt
`Petitioner asserts that claims 1, 2, and 9 are anticipated by Onishi
`
`(Ex. 1005). Pet. 44–48. We are not persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing at trial on its challenge as
`to claims 1, 2, and 9.
`
`As mentioned above, Onishi is directed to a stratified charge engine
`with reduced noxious components in the engine emissions and where
`performance and durability in full load operation are improved. Ex. 1005,
`col. 1, ll. 15–21.
`
`Independent claim 1 recites “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.” Ex. 1001, col. 6, ll.
`11–14. As discussed above in the context of claim construction, this
`limitation requires increasing the quantity of fuel delivered to a cylinder,
`while the cylinder is in an ignition-retarded condition, to a level higher than
`the quantity of fuel that would be delivered in a normal operating condition.
`
`Petitioner contends that Onishi “discloses that while ignition is
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`
`retarded, the fuelling rate is increased, the ‘air-fuel ratio increased to
`excess,’ and the engine is operated under ‘full-load conditions.’” Pet. 44
`(citing Ex. 1005, col. 11, ll. 1–12); see also Ex. 1006 ¶ 119 (Petitioner’s
`expert stating the same). Petitioner also asserts that:
`[b]ecause Onishi discloses that operations (i.e., fuel injection
`BTDC and ignition timing ATDC) are made possible with the
`“utilization rate of air inside the cylinder under full-load
`conditions enhanced up to the extremity and with the air-fuel
`ratio increased to excess,” a POSITA would further recognize
`that Onishi discloses “increasing the fuelling rate of said at least
`one cylinder to a level higher than that required when the
`engine is operating normally.”
`Pet. 46–47 n.19 (citing Ex. 1006 ¶¶ 126–128 (expert declaration)); see also
`Pet. 46–47 (claim chart).
`
`We have reviewed the cited portion of Onishi (Ex. 1005, col. 11, ll. 1–
`12) and have considered Petitioner’s arguments and paragraphs 126–128 and
`133 of the Matthews Declaration. We determine that Petitioner has not
`explained adequately how the cited portion of Onishi discloses that any
`increase in fueling rate is relative to normal operations of Onishi’s engine.
`Accordingly, Petitioner has not demonstrated a likelihood of proving Onishi
`anticipates independent claim 1 or claims 2 and 9, depending from claim 1.
`
`Petitioner contends that claim 5 would have been obvious over Onishi
`and Eichler ’791, that claims 10, 13, 14, and 18 would have been obvious
`over Onishi and Griese, and that claim 12 would have been obvious over
`Onishi and Bernhardt. Pet. 49–57 (Grounds G, H, and I). These challenged
`claims depend from independent claim 1. In articulating these obviousness
`grounds, Petitioner does not rely on Eichler ’791, Griese, or Bernhardt in
`any manner that cures the underlying defect of the Onishi anticipation
`
`17
`
`
`
`IPR2015-01258
`Patent 5,655,365
`
`ground. As such, Petitioner has not demonstrated a likelihood of prevailing
`with regard to its Onishi-based obviousness challenges of claims 5, 10, 12–
`14, and 18.
`
`III. CONCLUSION
`
`We determine Petitioner has demonstrated there is a reasonable
`
`likelihood of establishing the unpatentability of claims 1, 2, 5, 9, 10, 12–14,
`and 18 of the ’365 patent. At this stage of the proceeding, the Board has not
`made a final determination as to the patentability of any challenged claims.
`
`IV. ORDER
`
`For the foregoing reasons, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`
`instituted as to claims 1, 2, 5, 9, 10, 12–14, and 18 of the ’365 Patent on the
`following grounds:
`
`Claims 1, 2, 5, 10, 12, 13, and 18 under 35 U.S.C. § 102(b) as
`anticipated by Bernhardt;
`
`Claim 9 under 35 U.S.C. § 103(a) as obvious over Bernhardt and
`Onishi;
`
`Claim 14 under 35 U.S.C. § 103(a) as obvious over Bernhardt and
`Griese;
`
`Claims 1, 2, 5, 10, 12–14, and 18 under 35 U.S.C. § 103(a) as obvious
`over Eichler ’791 and Bernhardt; and
`
`Claim 9 under 35 U.S.C. § 103(a) as obvious over Eichler ’791,
`Bernhardt, and Onishi.
`FURTHER ORDERED that inter partes review is commenced on the
`
`
`18
`
`
`
`IPR2015-01258
`Patent 5,655,365
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`
`FURTHER ORDERED that the trial is limited to the grounds of
`unpatentability listed above, and no other grounds of unpatentability are
`authorized for inter partes review.
`
`
`
`For PETITIONER:
`Lionel M. Lavenue
`David C. Reese
`Joshua L. Goldberg
`Aaron L. Parker
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Bosch-Orbital-IPR@finnegan.com
`
`
`Edward DeFranco
`Brett Watkins
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`MB_Orbital_IPR@quinnemanuel.com
`
`For PATENT OWNER:
`
`David Magee
`Andrew Schultz
`PEPPER HAMILTON LLP
`mageed@pepperlaw.com
`schultza@pepperlaw.com
`
`19
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