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. IPR2015-01259
`U.S. Patent 5,655,365
`___________________
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`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. IPR2015-01259
`U.S. Patent 5,655,365
`___________________
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2015-01259
`Patent 5,655,365
`
`Page
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`INTRODUCTION .......................................................................................... 1
`I.
`LEGAL STANDARDS .................................................................................. 2
`II.
`III. ARGUMENT .................................................................................................. 2
`
`
`A.
`
`Patent Owner Did Not Argue That “The Fuelling Rate” Refers
`To A Quantity Per Unit-Time Or That “Increasing The Fuelling
`Rate” Refers To Changing The Quantity Per-Unit Time Within
`A Given Cycle ...................................................................................... 3
`
`
`
`
`
`B.
`
`C.
`
`The Step Of “While So Retarded, Increasing The Fuelling
`Rate . . .” Refers To Crankangle Timing .............................................. 7
`
`The Decision Overlooks Patent Owner’s Arguments Regarding
`Petitioner’s Previous Statements To The USPTO ............................. 12
`
`
`
`D.
`
`Instituted Grounds Should Be Denied In View Of The Proper
`Claim Construction ............................................................................ 14
`IV. CONCLUSION ............................................................................................. 15
`
`
`i
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`IPR2015-01259
`Patent 5,655,365
`
`TABLE OF AUTHORITIES
`
`
`CASES
`ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082 (Fed. Cir. 2003) .............................. 8
`
`Page(s)
`
`In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) ......................................................... 2
`
`Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323
`(Fed. Cir. 2001) ................................................................................................... 11
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ....................... 1, 8
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ......... 11
`
`
`
`STATUTES
`
`35 U.S.C. § 312(a) ..................................................................................................... 2
`
`
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.71(c) ................................................................................................... 2
`
`37 C.F.R. § 42.71(d) .............................................................................................. 1, 2
`
`37 C.F.R. § 42.104(b)(3) .......................................................................................... 10
`
`
`
`ii
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`IPR2015-01259
`Patent 5,655,365
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`PATENT OWNER’S REQUEST FOR REHEARING
`
`Pursuant to 37 C.F.R. § 42.71(d), Orbital Australia Pty Ltd f/k/a/ Orbital
`
`Engine Company (Australia) Pty. Ltd. (“Patent Owner”) hereby submits this
`
`Request for Rehearing in response to the Decision, Institution of Inter Partes
`
`Review dated December 30, 2015 (Paper No. 9, “Decision”).
`
`I.
`
`INTRODUCTION
`
`In the Decision, the Board grants review of claims 1, 2, 5, 9, 10, 12-14, and
`
`18 of U.S. Patent No. 5,655,365 (the ‘365 Patent) on various grounds following the
`
`Decision’s construction of independent claim 1’s recitation of “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.” See Paper 9 at 7-
`
`10. The Decision construes this phrase to mean “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.” Id. at 10.
`
`In construing this phrase under the standard set forth in Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Board misapprehends and
`
`overlooks Patent Owner’s arguments regarding the meaning of critical terms,
`
`overlooks the challenged claims’ plain language, and places undue emphasis on the
`
`specification of the ‘365 Patent in a manner inconsistent with the plain language.
`
`1
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`
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`IPR2015-01259
`Patent 5,655,365
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`The Decision’s improper claim construction results in an erroneous decision with
`
`respect to the grounds for which trial was instituted. Patent Owner respectfully
`
`requests that the Board reconsider its decision with regard to claim construction, as
`
`well as deny the Petition with respect to all instituted grounds.
`
`II. LEGAL STANDARDS
`Under 37 C.F.R. § 42.71(d), “[a] party dissatisfied with a decision may file a
`
`single request for rehearing without prior authorization from the Board.” “The
`
`request must specifically identify all matters the party believes the Board
`
`misapprehended or overlooked, and the place where each matter was previously
`
`addressed.” Id. “When rehearing a decision on petition, a panel will review the
`
`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion
`
`occurs where the decision is based on an erroneous interpretation of the law, on
`
`factual findings that are not supported by substantial evidence, or represents an
`
`unreasonable judgment in weighing relevant factors.” In re Gartside, 203 F.3d
`
`1305, 1315-16 (Fed. Cir. 2000).
`
`III. ARGUMENT
`Patent Owner respectfully submits that the Decision misapprehends and
`
`overlooks Patent Owner’s arguments regarding the meaning of critical terms of the
`
`challenged claims, and additionally applies an erroneous legal standard in
`
`overlooking the challenged claims’ plain language, while placing undue emphasis
`
`2
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`IPR2015-01259
`Patent 5,655,365
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`on the ‘365 Patent specification in construing the phrase “while said ignition is so
`
`retarded, increasing the fuelling rate of said at least one cylinder to a level higher
`
`than that required when the engine is operating normally.”
`
`A.
`
`Patent Owner Did Not Argue That “The Fuelling Rate”
`Refers To A Quantity Per Unit-Time Or That “Increasing
`The Fuelling Rate” Refers To Changing The Quantity Per-
`Unit Time Within A Given Cycle
`
`The Decision’s claim construction analysis misapprehends Patent Owner’s
`
`arguments with respect to the meaning of “fuelling rate” (and thus, “increasing the
`
`fuelling rate”) as recited in the challenged claims. In its claim construction
`
`analysis, the Decision states at page 9:
`
`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. 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.
`
`Patent Owner submits that any perceived argument “that fuelling rate refers
`
`to quantity per unit-time (i.e. milligrams per second) and that that rate must be
`
`increased during each cycle” is based on an incorrect understanding of the
`
`Preliminary Response. Patent Owner consistently affirmed throughout its
`
`3
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`IPR2015-01259
`Patent 5,655,365
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`Preliminary Response that the term “fuelling rate” is used in the challenged claims
`
`and defined by the ‘365 Patent to refer to the total quantity of fuel injected into a
`
`cylinder during a given cycle of the engine (i.e., “measured in mg/cylinder/cycle”),
`
`as confirmed in the Board’s Decision. See, e.g., Paper 8 at 6, 15, and 27.1
`
`A simple example shows how the Decision misapprehends Patent Owner’s
`
`arguments regarding “increasing the fueling rate.” Consider a hypothetical
`
`situation in which fuel is continuously injected during a given cylinder cycle at a
`
`“quantity per unit-time” (in the parlance of the Board) of 10 milligrams/second.
`
`1 Paper 8 at 6 (“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 . . . .” Id. at 2:3-6; see also
`
`3:10-12. In addition to varying the fuelling rate (i.e., mg/cylinder/cycle) . . . ,”
`
`bold and underline added); Id. at 15 (“That is, though the start of fuel injection is
`
`maintained at BTDC, claim 1 requires that fuel injection nonetheless continues at
`
`ATDC so as to increase the fuelling rate (mg/cylinder/cycle) ,” bold and
`
`underline added); Id. at 27 (“That is, though the start of fuel injection in a
`
`combustion cycle must occur before TDC, claim 1 also requires that fuel injection
`
`occurs after TDC (i.e., “while said ignition is so retarded”) so as to increase the
`
`fuelling rate (mg/cylinder/cycle) . . . ,” bold and underline added).
`
`4
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`IPR2015-01259
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`Though the quantity of fuel injected “per unit-time” remains constant throughout
`
`the cylinder cycle, it will be appreciated that the total quantity of fuel injected into
`
`the cylinder during that cycle (i.e., “fuelling rate” in mg/cylinder/cycle)
`
`nonetheless increases at each and every time point due to the continuous addition
`
`of fuel. Moreover, it will be appreciated that to increase the quantity of fuel per
`
`cylinder per cycle (i.e., “fuelling rate”), the injector can remain open for a longer
`
`period of time, including, for example, the period ATDC.
`
`It is likewise apparent that each “injection” in a fuel injection pattern
`
`characterized by a continuously decreasing quantity per unit-time would still
`
`increase the “fuelling rate” until the point in time during a given cycle when no
`
`additional fuel is injected into the cylinder. Thus, a person of ordinary skill in the
`
`art would understand that the “fuelling rate” is not “increasing” within the meaning
`
`of the ‘365 Patent only when fuel injection into the cylinder has completed during
`
`a given cycle. It is in this light that Patent Owner argued in the Preliminary
`
`Response at page 29 as follows (emphasis original):
`
`Ultimately, Petitioner concludes that all fuel will be injected BTDC in
`Onishi because the length of time a fuel injector is open in a particular
`cycle is less than the length of time corresponding to a 20 degree
`change in crankangle. See Paper 3 at 15. It will be appreciated that
`Petitioner’s contention that all fuel is injected in BTDC in Onishi
`likewise precludes Petitioner from establishing that Onishi discloses
`
`5
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`IPR2015-01259
`Patent 5,655,365
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`increasing the fuelling rate at ATDC while ignition is retarded to
`ATDC.
`
`This passage of the Preliminary Response, to which the Decision
`
`presumably refers as implying that “fueling rate refers to quantity per unit-time
`
`(i.e. milligrams per second) and that that rate must be increased during each cycle,”
`
`was not premised on any change in quantity of fuel injected per unit-time ATDC,
`
`but instead demonstrated the compulsory conclusion of Petitioner’s allegation that
`
`“all fuel must be injected BTDC.” Consistent with Patent Owner’s arguments in
`
`the Preliminary Response and as demonstrated in the hypothetical above, if there
`
`were not any additional fuel injected ATDC as alleged by Petitioner (i.e., “all fuel
`
`must be injected BTDC”), the total quantity of fuel delivered to the cylinder over
`
`the cycle (i.e., mg/cylinder/cycle) would necessarily remain constant ATDC (and
`
`equivalent to the total quantity of fuel at the end of the last injection BTDC).
`
`In light of the Decision’s misapprehension of the meaning attributed to the
`
`phrase “increasing the fuelling rate” by the Patent Owner, Patent Owner
`
`respectfully requests that the Board reconsider its decision with regard to
`
`construction of the challenged claims’ phrase “while said ignition is so retarded,
`
`increasing the fuelling rate of said at least one cylinder to a level higher than that
`
`required when the engine is operating normally.”
`
`6
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`B.
`
`The Step Of “While So Retarded, Increasing The Fuelling
`Rate . . .” Refers To Crankangle Timing
`
`Patent Owner submits that the Decision erred in determining that the timing
`
`aspects of claim 1’s affirmative step of “increasing the fuelling rate” (i.e.,
`
`providing an additional fuel injection) are without reference to crankangle, as
`
`alleged in the following passage of the Decision (Paper 9 at 8):
`
`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.
`
`Just as the Petition’s claim construction analysis was deficient for failing to
`
`consider the effect of claim 1’s recitation of “while so retarded” with respect to the
`
`“timing of introduction” limitation (see generally Paper 8 at 13-17), so is the
`
`Decision’s analysis denigrating the explicit language of the claims by decoupling
`
`the step of “while so retarded, increasing the fuelling rate” from the remainder of
`
`the claim’s recitations, while unduly emphasizing the specification to attribute an
`
`improper meaning that is contrary to the explicit recitations of the claims.
`
`Though the Decision concedes that both the “timing of ignition and fuel
`
`introduction of the claimed invention are expressed in terms of whether they occur
`
`7
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`IPR2015-01259
`Patent 5,655,365
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`at a crankangle before or after top dead center,” the Decision’s analysis divorces
`
`consideration of the step of “increasing the fuelling rate” from the remainder of the
`
`claim language by concluding that “the timing limitations of claim 1, in general,
`
`refer to engine operating conditions—the operating conditions of the claimed
`
`invention and normal operating conditions. . . .” See Paper 9 at 8 (emphasis
`
`added).
`
`Determining the meaning of the “increasing the fuelling rate” step cannot,
`
`however, be separated from claim 1’s other crankangle timing limitations for
`
`ignition or introduction of fuel, as suggested by the Decision. See Phillips, 415
`
`F.3d at 1314 (citing ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
`
`2003) (“the context of the surrounding words of the claim also must be considered
`
`in determining the ordinary and customary meaning of those terms”). Rather,
`
`crankangle timing considerations for the step of “increasing the fuelling rate” are
`
`explicitly provided by claim 1’s linkage of the requirement that the “increasing the
`
`fuelling rate” step occurs “while said ignition is so retarded,” with clear reference
`
`to claim 1’s antecedent recitation of “retarding the ignition . . . to after top dead
`
`centre (ATDC) in respect of the combustion cycle.” See, e.g., Paper 8 at 27
`
`(“Petitioner’s analysis, however, obfuscates claim 1’s other requirement regarding
`
`the timing of fuel injection. That is, though the start of fuel injection in a
`
`combustion cycle must occur before TDC, claim 1 also requires that fuel injection
`
`8
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`IPR2015-01259
`Patent 5,655,365
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`occurs after TDC (i.e., ‘while said ignition is so retarded’) so as to increase the
`
`fuelling rate (mg/cylinder/cycle) to a level higher than that required when the
`
`engine is operating normally.”).
`
`Claim 1’s additional explicit recitation regarding “the timing of introduction
`
`of fuel of fuel into the at least one cylinder being maintained at before top dead
`
`centre (BTDC),” which the Decision also concedes is “expressed in terms of
`
`whether [it occurs] at a crankangle before . . . top dead center,” likewise implores a
`
`construction for “increasing the fuelling rate” that takes into account the
`
`crankangle timing. As asserted in the Preliminary Response:
`
`When 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) in respect of the combustion
`cycle of said at least one cylinder of the engine. In light of claim 1’s
`recitation of “while ignition is so retarded, increasing the fuelling
`rate…,” the use of the language “being maintained at” in the phrase
`“the timing of the introduction of fuel into the at least one cylinder
`being maintained at before top dead centre (BTDC)” plainly serves to
`contrast the timing of the start of injection with the timing of
`increasing the fuelling rate. That is, though the start of fuel injection
`is maintained at BTDC, claim 1 requires that fuel injection
`nonetheless continues at ATDC so as to increase the fuelling rate
`(mg/cylinder/cycle).
`
`9
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`IPR2015-01259
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`Paper 8 at 14-15 (italics original, underlining added).
`
`Rather than focus on the explicit recitations of claim 1’s method steps that,
`
`on their face, connect the crankangle timing of “increasing the fuelling rate” with
`
`that of the “retarding” and “maintaining” recitations, the Decision instead
`
`introduces an analysis that relies on portions of the specification of the ‘365 Patent
`
`that generally refer to an “ignition retard condition” and a “high fuelling rate
`
`condition” capable of being enabled. See Paper 9 at 8-9.2
`
`It is, however, an applicant’s prerogative how best to claim what he regards
`
`as his invention, and it is not up to the Board to change that which has been set
`
`forth in the claims through reference to the specification. Rather, as noted in
`
`Patent Owner’s Preliminary Response (see Paper 8 at 13-14), “[i]n construing
`
`2 The Decision “introduces” such an analysis as Petitioner did not set forth any
`
`argument regarding the meaning of “while said ignition is so retarded, increasing
`
`the fuelling rate” in its Petition, much less characterize any portion of the claims or
`
`specification as referring to “conditions.” It should be noted that it is Petitioner’s
`
`burden under 35 U.S.C. § 312(a) to file a petition that identifies with particularity
`
`the statutory grounds on which the challenge to each claim is based, evidence that
`
`supports the grounds, and “such other information as the Director may require by
`
`regulation,” including a statement that identifies how a challenged claim is to be
`
`construed pursuant to 37 C.F.R. § 42.104(b)(3).
`
`10
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`claims, the analytical focus must begin and remain centered on the language of the
`
`claims themselves, for it is that language that the patentee chose to use to
`
`‘particularly point[ ] out and distinctly claim[ ] the subject matter which the
`
`patentee regards as his invention.’” Interactive Gift Express, Inc. v. Compuserve
`
`Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001); see also Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
`
`It is clear that claim 1 does not recite any of the terms “high fuelling rate,”
`
`“ignition retard,” and “condition” (alone or in combination) that are referred to in
`
`the Decision. See Paper 9 at 8-9. Nor does claim 1 recite as follows, as the
`
`Decision would suggest re-writing (amendments in underline and strike-through):
`
`• “enabling an ignition-retard condition, wherein retarding the ignition . . .
`
`is retarded to after top dead centre (ATDC)
`
`• “while said ignition-retard condition is enabled so retarded, increasing
`
`the enabling a high-fuelling rate condition, wherein the fuelling rate . . .
`
`is increased to a level higher than that required when the engine is in a
`
`normal operating condition operating normally. . . ”
`
`Despite the Patent Owner’s apparent ability to describe various aspects of
`
`the ‘365 Patent disclosure in the specification as an “ignition retard condition,” a
`
`“high fuelling rate condition,” or a “normal operating condition” capable of being
`
`“enabled,” Patent Owner chose not to use such language in the challenged claims.
`
`11
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`Rather, Patent Owner presented and prosecuted a method claim that recites a
`
`process requiring affirmative actions (i.e., retarding, increasing, maintaining) to be
`
`performed with particular timing referenced to crankangle. The Decision’s undue
`
`emphasis on the specification’s discussion of “conditions” does not merely
`
`interpret the claims, but instead overlooks the Patent Owner’s choice of express
`
`claim language in what amounts to an impermissible re-working of the challenged
`
`claims. In light of the Decision’s correct recognition 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,” there is no proper basis
`
`to support the Decision’s incongruous conclusion through reliance on the
`
`specification that the timing limitations of claim 1 “in general, refer to engine
`
`operating conditions.” Paper 9 at 8 (emphasis added).
`
`In view of the above, Patent Owner respectfully requests that the Board
`
`reconsider its decision with regard to construction of the phrase “while said
`
`ignition is so retarded, increasing the fuelling rate of said at least one cylinder to a
`
`level higher than that required when the engine is operating normally.”
`
`C. The Decision Overlooks Patent Owner’s Arguments
`Regarding Petitioner’s Previous Statements To The USPTO
`
`Patent Owner respectfully requests rehearing because the Decision appears
`
`to overlook the arguments and evidence described at pages 15-16 of the
`
`Preliminary Response regarding the Bosch-Petitioner’s prior recognition that the
`
`12
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`‘365 Patent discloses that the timing of increasing the fuelling rate is described
`
`with reference to crankangle:
`
`In attempting to distinguish over the ‘365 Patent, Bosch’s response
`acknowledged that “[i]n column 5, line 38, Worth [i.e., the ‘365
`Patent] further refers to the injection quantity being increased in a
`retarded ignition3 angle.” Ex. 2002 at 160/176 (emphasis added).
`
`Paper 8 at 16 (emphasis original).
`
`The statement made by Bosch-Petitioner during prosecution of its own U.S.
`
`Patent No. 6,725,835 evidences the meaning of the ‘365 Patent’s phrase “while so
`
`retarded, increasing the fuelling rate” proffered by Patent Owner (i.e., an additional
`
`injection of fuel ATDC or at a “retarded ignition angle”), is inconsistent with the
`
`Decision’s interpretation of the ‘365 Patent specification references to
`
`“conditions,” and is contrary to the Decision’s determination that “the timing
`
`limitations of claim 1, in general, refer to engine operating conditions . . . not with
`
`reference to the crankangle during a given cycle as implied by Patent Owner’s
`
`proposed constructions.” Paper 9 at 8 (emphasis added).
`
`In view of the above, Patent Owner respectfully requests that the Board
`
`consider the arguments regarding Bosch-Petitioner’s prior statements to the
`
`3 Patent Owner notes a typographical error contained within the Preliminary
`
`Response, which inadvertently replaced “ignition” with “injection” in the quotation
`
`from Exhibit 2002. The corrected phrase is quoted here.
`
`13
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`USPTO in construing the phrase “while so retarded, increasing the fuelling rate.”
`
`D.
`
`Instituted Grounds Should Be Denied In View Of The
`Proper Claim Construction
`
`Patent Owner respectfully requests rehearing of the Decision’s
`
`determination that Petitioner demonstrated a reasonable likelihood with respect to
`
`every instituted ground as the determination was based on an erroneous claim
`
`construction and a misapprehension of or a failure to consider Patent Owner’s
`
`arguments. For example, with reference to obviousness of claims 1, 2, 9, 10, 13,
`
`14, and 18 over Hitomi in view of Onishi, the Decision indicates:
`
`Patent Owner argues that Hitomi and Onishi fail to disclose “while
`said ignition is so retarded, increasing the fuelling rate of said at least
`one cylinder.” Prelim. Resp. 26–29. Petitioner relies on Hitomi for
`this feature. Pet. 18. Patent Owner’s argument is premised on its
`position that the claim 1 “requires that fuel injection occurs after TDC
`(i.e., ‘while said ignition is so retarded’).” Prelim. Resp. at 27. As
`discussed above, we have rejected that proposed claim construction,
`and therefore do not find persuasive Patent Owner’s argument
`regarding Hitomi’s disclosure.
`
`Paper 9 at 12 (emphasis original). See also Paper 9 at 15 with respect to grounds
`
`based on obviousness over Griese, Eichler ‘791, and Onishi (“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. 35-38.”).
`
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`Patent 5,655,365
`
`In light of the proper claim construction, the Board should deny the Petition
`
`with respect to the grounds based on obviousness of independent claim 1 over the
`
`combination of Hitomi in view of Onishi or the combination of Griese, Eichler
`
`‘791, and Onishi for the reasons stated in the Preliminary Response. Additionally,
`
`the Petition should be denied with respect to any claims dependent on independent
`
`claim 1 that were challenged on the grounds of obviousness over any combination
`
`of Hitomi, Onishi, Griese, and Eichler ‘791 or further in view of Takada.
`
`IV. CONCLUSION
`For the reasons set forth above, Patent Owner respectfully requests that the
`
`Board reconsider its decision with regard to the construction of the phrase “while
`
`said ignition is so retarded, increasing the fuelling rate of said at least one cylinder
`
`to a level higher than that required when the engine is operating normally,” as well
`
`as reconsider the Petition with respect to all instituted grounds in light of the
`
`proper claim construction.
`
`Dated: January 13, 2016
`
`
`
`Respectfully submitted,
`
`By: /David Magee/
`David Magee, Reg. No. 51,892
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`15
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2015-01259
`Patent 5,655,365
`
` I
`
` hereby certify that on January 13, 2016, a true and accurate copy of this paper,
`PATENT OWNER’S REQUEST FOR REHEARING, was served on the Petitioners at the
`following e-mail addresses, pursuant to Petitioner’s consent to e-mail service:
`
`
`Bosch-Orbital-IPR@finnegan.com
`MB_Orbital_IPR@quinnemanuel.com
`
`
`
`
`By: /David Magee/
`David Magee, Reg. No. 51,892
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`16
`
`
`
`
`
`Dated: January 13, 2016
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