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`Filed on behalf of: Robert Bosch LLC and Daimler AG
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`Robert Bosch LLC and Daimler AG,
`Petitioner
`
`v.
`
`Orbital Engine Company Pty Limited,
`Patent Owner
`
`
`Patent No. 5,655,365
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`
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`
`
`DECLARATION OF DR. RON MATTHEWS
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`BOSCH-DAIMLER EXHIBIT 1008
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`Page 1 of 117
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 5 
`
`GUIDING LEGAL PRINCIPLES................................................................... 5 
`
`Person of Ordinary Skill in the Art .................................................................. 5 
`
`Anticipation Invalidity ..................................................................................... 6 
`
`Obviousness Invalidity .................................................................................... 7 
`
`I. 
`
`II. 
`
`A. 
`
`B. 
`
`C. 
`
`III.  BACKGROUND AND EXPERIENCE .......................................................... 8 
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`IV.  MATERIALS REVIEWED .......................................................................... 11 
`
`V.  OVERVIEW OF THE ‘365 PATENT .......................................................... 12 
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`VI.  CLAIM CONSTRUCTION .......................................................................... 16 
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`VII.  ANTICIPATION AND OBVIOUSNESS COMBINATIONS ..................... 21 
`
`A.  Hitomi in combination with Onishi render obvious claims 1, 2,
`9, 10, 13, 14, and 18 ............................................................................ 21 
`
`Claim 1 ................................................................................................ 27 
`
`Claim 2 ................................................................................................ 31 
`
`Claim 9 ................................................................................................ 32 
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`Claim 10 .............................................................................................. 32 
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`Claim 13 .............................................................................................. 33 
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`Claim 14 .............................................................................................. 34 
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`Claim 18 .............................................................................................. 35 
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`Obviousness of Claim 5 over Hitomi, Onishi, and Eichler ’089 ........ 36 
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`Obviousness of Claim 12 over Hitomi, Onishi, and Takada .............. 38 
`
`ii
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`B. 
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`C. 
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`D.  Obviousness of Claims 1, 2, 5, 9, 10, 12-14, and 18 over Griese,
`Eichler ’791, and Onishi ..................................................................... 39 
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`Claim 1 ................................................................................................ 42 
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`Claim 2 ................................................................................................ 47 
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`Claim 5 ................................................................................................ 47 
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`Claim 9 ................................................................................................ 49 
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`Claim 10 .............................................................................................. 52 
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`Claim 13 .............................................................................................. 53 
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`Claim 14 .............................................................................................. 54 
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`Claim 18 .............................................................................................. 54 
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`Obviousness of Claim 12 over Griese, Eichler ’791, Onishi,
`and Takada .......................................................................................... 55 
`
`Ahern in combination with Bernhardt renders obvious claims 1,
`2, 5, 9, 10, 12, 13, and 18 .................................................................... 56 
`
`E. 
`
`F. 
`
`Claim 1 ................................................................................................ 62 
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`Claim 2 ................................................................................................ 66 
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`Claim 5 ................................................................................................ 69 
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`Claim 9 ................................................................................................ 71 
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`Claim 10 .............................................................................................. 72 
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`Claim 12 .............................................................................................. 73 
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`Claim 13 .............................................................................................. 74 
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`Claim 18 .............................................................................................. 75 
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`iii
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`G. 
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`Ahern in combination with Bernhardt and Griese renders
`obvious claim 14 ................................................................................. 76 
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`VIII.  SECONDARY CONSIDERATIONS OF OBVIOUSNESS ........................ 78 
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`IX.  CONCLUSION ............................................................................................. 78 
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`iv
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`I, Dr. Ron Matthews, declare as follows:
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`I.
`
`1.
`
`INTRODUCTION
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`I have been retained by Robert Bosch LLC and Daimler AG
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`(“Petitioner”) as an independent expert consultant in this proceeding before the
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`United States Patent and Trademark Office. Although I am being compensated at
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`my usual rate of $500.00 per hour for the time I spend on this matter, no part of my
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`compensation depends on the outcome of this proceeding, and I have no other
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`interest in this proceeding.
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`2.
`
`I understand that this proceeding involves U.S. Patent No. 5,655,365
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`(“the ’365 patent”) (Ex. 1001). I understand that the ‘365 patent is a National Stage
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`entry of PCT/AU94/00028, which was filed on January 24, 1994. I have also been
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`informed that the ‘365 patent claims priority to Australian Application No. PL6972,
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`filed January 25, 1993.
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`3.
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`I have been asked to consider whether certain references disclose or
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`suggest certain features in the claims of the ‘365 patent. I have done so and set
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`forth my opinions below:
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`II. GUIDING LEGAL PRINCIPLES
`
`A.
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`4.
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`Person of Ordinary Skill in the Art
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`I am informed that a “person of ordinary skill in the art” (“POSITA”)
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`refers to a hypothetical person who is presumed to have known the relevant art at
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`5
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`the time of the invention. Many factors may determine the level of ordinary skill in
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`the art, including: (1) the type of problems encountered in the art, (2) prior art
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`solutions to those problems, (3) the rapidity with which innovations are made, (4)
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`the sophistication of the technology, and (5) the educational level of active workers
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`in the field. I understand that a POSITA is a person of ordinary creativity, not an
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`automaton, meaning that a POSITA may employ inferences and creative steps in
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`their work. I am informed that the relevant timeframe is prior to January 25, 1993,
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`which is the earliest priority filing date for the ‘365 patent, and the opinions below
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`pertain to that timeframe.
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`5.
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`A POSITA in the art for this patent would have at least an
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`undergraduate degree in mechanical engineering or a similar technical field, and at
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`least two (2) years of relevant work experience or equivalent advanced education
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`in a field related to engine technology. Accordingly, I have used this definition in
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`my analysis below.
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`6.
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`In my opinion, under the definition provided above, I was at least a
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`POSITA at the relevant time of the invention. In my opinion, I also supervised
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`others who were a POSITA at the relevant time of the invention.
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`B. Anticipation Invalidity
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`7.
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`I understand that a patent claim is “anticipated,” and, therefore,
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`invalid, if a single prior art reference discloses (expressly or inherently) each and
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`
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`6
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`every element of the claimed invention in a manner sufficient to enable a POSITA
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`to practice the invention, thus placing the invention in possession of the public.
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`8.
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`I also understand that under certain circumstances, multiple references
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`may be used to prove anticipation, specifically to: (a) prove that the primary
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`reference contains an enabled disclosure, (b) explain the meaning of a term used in
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`the primary reference, or (c) show that a characteristic not disclosed in the
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`reference is inherent.
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`C. Obviousness Invalidity
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`9.
`
`I understand that even if a prior art reference fails to anticipate a
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`patent claim, the claim may nonetheless be invalid as “obvious,” if the differences
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`between the subject matter claimed and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was made to a
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`POSITA. I understand that several factual inquiries underlie a determination of
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`obviousness. These inquiries include the scope and content of the prior art, the
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`level of ordinary skill in the art, the differences between the claimed invention and
`
`the prior art, and any objective “secondary considerations,” discussed below. I
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`understand that a combination of familiar elements according to known methods
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`may be obvious when it does no more than yield predictable results. I also
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`understand that common sense and ordinary creativity of one skilled in the art can
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`be relevant to obviousness.
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`7
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`10.
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`I have been informed that certain objective secondary considerations
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`may be relevant to a determination of whether an invention was obvious. Such
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`secondary considerations may include, e.g., (a) whether there was a long-felt and
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`long-unmet need for the invention, (b) whether the invention achieved unexpected
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`results, (c) the commercial success of the invention, and (d) whether the invention
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`was copied or praised within the industry.
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`11. My opinions are set forth below.
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`III. BACKGROUND AND EXPERIENCE
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`12. My curriculum vitae, which includes a more detailed summary of my
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`background, experience, and publications, is attached as Appendix A.
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`13.
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`In 1971, I received a Bachelor’s degree in Mechanical Engineering
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`from the University of Texas. In 1972 I received a Master of Science degree in
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`Mechanical Engineering from the University of California at Berkeley
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`(“Berkeley”) and in 1977 I received a Master of Public Health also from Berkeley.
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`Also in 1977 I obtained a PhD in Mechanical Engineering from Berkeley with a
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`specialization in combustion.
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`14. From 1977 to 1979, I acted as an Assistant Professor of Mechanical
`
`Engineering at the University of Illinois at Urbana-Champaign. Then, in 1980, I
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`joined the faculty of the Department of Mechanical Engineering at the University
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`of Texas (“UT”), as an Assistant Professor until 1985, upon which I became an
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`Associate Professor. In 1993 I became a Professor at UT, which is my current title.
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`15. While at UT, I established UT’s combustion and engine research
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`program. I founded UT’s student branch of the Society of Automotive Engineers in
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`1980 and have since served as its Faculty Advisor. Currently, I am also the Head of
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`the General Motors Foundation Combustion Sciences and Automotive Research
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`Laboratories on the UT campus.
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`16.
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`I have been involved in research in the area of combustion, engines,
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`emissions, and alternative fuels for over 30 years. For example, my research has
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`and continues to include both experimental work and numerical modeling of both
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`fundamental combustion processes and combustion within engines. My present
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`research is focused primarily on the spark ignition process, 2-stroke diesel engine
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`failures when operating on ultra-low sulfur diesel fuel when using re-refined
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`engine oil, development of an electronic particulate matter sensor for diesels,
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`effects of wide-single truck tires on emissions from heavy-duty diesel vehicles, and
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`prediction of the fuel economy of both light-duty and heavy-duty on-road vehicles.
`
`17.
`
`In 1992, I received the Arch T. Colwell Merit Award from the Society
`
`of Automotive Engineers for my work on the first use of fractal geometry to model
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`the combustion process within a spark ignition engine. This award is given to
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`recognize outstanding contributions to knowledge. In 1996 and again in 1998, UT's
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`
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`body of work on fractal engine modeling was nominated for the ComputerWorld
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`Award and selected for inclusion in the Smithsonian's National Museum of
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`American History Permanent Research Collection on Information, Technology,
`
`and Society. I received four awards from the Society of Automotive Engineers in
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`2002. The national President of SAE, Dr. Syed Shahed (Vice President of
`
`Honeywell Turbocharger Systems), nominated me to be an SAE Fellow, to which I
`
`was subsequently elected. Notably, of the more than 100,000 SAE members, only
`
`10-20 are selected as Fellows each year.
`
`18.
`
`In 2002, I received the SAE’s Excellence in Engineering Education
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`(Triple E) Award, of which there is only one recipient of this award annually, and
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`which is often given to engineers in industry who have exhibited leadership is
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`SAE’s educational mission. Additionally, along with two of my former PhD
`
`students and Prof. Janet Ellzey, I received the Myers Award from SAE in 2002.
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`This award recognizes the most outstanding student-authored SAE technical paper.
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`I was a recipient of the SAE Faculty Advisor Award for 2001-2002. Each year, six
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`SAE Faculty Advisors (of more than 350 student branches in North America) are
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`selected for this award. I was a member of the Board of Directors of SAE-
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`International during 2009-2011.
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`19. As noted in my attached CV, I have further received a substantial
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`number of honors and awards, and professional highlights; and have served and/or
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`been appointed to memberships in professional and honorary societies,
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`professional society and major governmental committees; and have helped
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`organize and/or chair various conferences, university committees, college
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`committees, department committees.
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`20. As also noted in my attached CV, I have been involved in an
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`overwhelming number of relevant publications (related to the areas of engines,
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`combustion method and apparatuses, engine igniters, fuel systems and methods),
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`such as for example, referred archival journals; refereed conference proceedings,
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`non-referred conference papers and reports, as well as other books and/or chapters
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`authored, co-authored, edited, or co-edited. I have also performed a substantial
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`number of speaking engagements and oral presentations (invited or keynote
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`speeches, presentations at technical meetings) and have completed a number of
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`PhD supervisions.
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`21.
`
` I am a named inventor and/or applicant on a substantial number of
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`patents and patent applications related to the areas of engines, combustion method
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`and apparatuses, engine igniters, fuel systems and methods. My curriculum vitae
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`also include a more detailed summary of my background and experience.
`
`IV. MATERIALS REVIEWED
`
`22.
`
`In forming my opinions, I have reviewed the ‘365 patent, the
`
`prosecution history of the ‘365 patent, and the following documents:
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`
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`
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`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 5,233,831 to Hitomi (“Hitomi”) (Ex. 1002)
`
`U.S. Patent No. 3,865,089 to Eichler et al. (“Eichler ’089”) (Ex. 1003)
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`U.S. Patent No. 3,572,298 to Onishi (“Onishi”) (Ex. 1004)
`
`U.S. Patent No. 4,276,745 to Takada et al. (“Takada”) (Ex. 1005)
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`U.S. Patent No. 3,799,134 to Griese (“Griese”) (Ex. 1006)
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`“Methods for Fast Catalytic System Warm-Up During Vehicle Cold
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`Starts,” to Bernhardt et al., published on February 1, 1972. (“Bernhardt”) (Ex.
`
`1007)
`
`
`
`
`
`
`
`GB Patent No. 1447791 to Eichler et al. (“Eichler ’791”) (Ex. 1010)
`
`U.S. Patent No. 4,926,806 to Ahern (“Ahern”) (Ex. 1111)
`
`Excerpts from the Prosecution History of U.S. Patent No. 5,655,365
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`(U.S. App. Ser. No. 08/446,739) (Ex. 1012)
`
`
`
`U.S. Patent No. 6,581,572 to Hurley (“Hurley”) (Ex. 1013)
`
`V. OVERVIEW OF THE ‘365 PATENT
`
`23.
`
` The ’365 patent is directed to a method of operating an internal
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`combustion engine in order to produce high exhaust gas temperatures to reduce
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`undesirable contaminants from exhaust in engines incorporating exhaust systems
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`having a catalytic treatment means. Ex. 1001 at 1:4-9. I agree with statements in
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`the ’365 patent acknowledging that “[n]ormally, at engine startup, particularly after
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`a period of non-operation, the catalytic material is below its light-off temperature
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`and in order to reduce the time, and therefore the amount of emission output until
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`light-off of the catalyst, it may be desirable to raise the temperature of the exhaust
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`gases delivered from the combustion chamber(s) of the engine to the exhaust
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`system.” Id. at 1:19-25.
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`24.
`
`I also agree with statements in the ’365 patent acknowledging that “at
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`startup the engine typically will operate at a relatively low load and speed, such as
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`is termed “engine idle,” and therefore the amount of fuel being delivered to the
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`engine is comparatively small and hence, only a relatively small amount of heat is
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`available for raising the temperature of the exhaust gases and hence the
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`temperature of the catalytic material to its “light-off” temperature.” Id. at 1:26-32.
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`25. The ’365 disclosure describes how catalytic material only effectively
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`reduces undesirable emissions contaminants above a minimum operating
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`temperature, or “light-off temperature.” Typically, however, at engine startup, the
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`catalytic material is below its light-off temperature, resulting in increased levels of
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`undesirable emissions issuing from the engine’s exhaust system.
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`26. The ’365 patent acknowledges
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`that methods for raising
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`the
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`temperature of the catalyst were known in the art, including using afterburner
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`devices. Id. at 41-48.
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`27. To improve the effectiveness of catalytic material during vehicle
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`startup due to a low temperature during starting and warm-up, the ’365 disclosure
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`describes a method for assisting in maintaining high exhaust gas temperatures, and
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`thus, achieving rapid light-off of the catalytic material in the exhaust system and
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`maintaining the light-off condition during engine operation. Id. at 1:49-55.
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`28. This method comprises retarding the ignition of a gas/fuel mixture
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`within at least one cylinder of the engine to after top dead center (ATDC) and
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`increasing the fuelling rate while ignition is being retarded. Id. at Abstract.
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`29.
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`In particular, the ’365 disclosure describes that ignition can be
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`retarded up to about 30° ATDC and is preferably retarded to about 20° ATDC. Id.
`
`at 1:65-67. Alternatively, the patent discloses that ignition retardation can be
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`variable, preferably between 15° to 30° ATDC. Id. at 1:67-2:2.
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`30. The ’365 patent also discloses that while ignition is retarded, the
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`fuelling rate (mg/cylinder/cycle) can be varied and may be greater than 50% of the
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`fuelling rate at maximum load, up to about 80% of the fuelling rate at maximum
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`load, or even in excess of 100% of the fuelling rate at maximum engine load. Id. at
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`2:3-8; 3:10-12.
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`31. The ’365 patent further discloses that fuel is introduced to the
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`combustion chamber at approximately 60° BTDC, and acknowledges that the
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`timing of the introduction in that range is typical in direct injection engines. In
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`fact, fuel is introduced most preferably at between 60° and 80° BTDC. Id. at 2:10-
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`13; 2:59-62; 3:2-4; Fig. 1; Fig. 2.
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`32.
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`I agree with statements in the ’365 patent acknowledging the cylinder
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`pressure versus crank angle characteristics for a typical direct injected two-stroke
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`internal combustion engine were well known in the art, as depicted in Fig. (below
`
`left). Fig. 2 (below right), on the other hand, shows similar characteristics for a
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`direct injected two-stroke internal combustion engine operated according to the
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`method of the invention.
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`
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`33. The ’365 patent further discloses that combustion preferably occurs
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`under rich conditions with the overall air/fuel ratio being close to the
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`stoichiometric ratio. Id. at 3:60-62.
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`34. Additional oxygen containing gas, such as air, may be introduced
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`upstream of the catalytic treatment means provided in the exhaust system of the
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`engine. This excess air may be introduced to the exhaust system to promote the
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`catalytic oxidation of the exhaust gases in order to further reduce undesirable
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`contaminants therein. Id. at 4:1-3; 4:33-35.
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`VI. CLAIM CONSTRUCTION
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`35.
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`I have been advised that the first step of assessing the validity of a
`
`patent claim is to interpret or construe the meaning of the claim.
`
`36.
`
`I have been advised that in inter partes review proceedings before the
`
`U.S. Patent and Trademark Office, claim terms of an expired patent are given their
`
`ordinary and accustomed meaning as understood by one of ordinary skill in the art.
`
`37.
`
`I discuss below what I understand to be Petitioner’s proposed
`
`construction of certain claim terms of the ’365 patent.
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`“up to about 30° ATDC” (Claim 5)
`
`Independent claim 1 recites “up to about 30° ATDC.” Ex. 1001 at 6:25-26.
`
`In light of the specification, this phrase should be construed to mean “between 15°
`
`and about 30° ATDC.” See e.g., Ex. 1001 at 1:65-2:3, 3:1-9, 3:20-27, 3:41-47, Fig.
`
`2. The patent’s specification does not disclose an engine in which retarded ignition
`
`occurs between TDC and 15 ATDC. Rather, all that is supported is engine
`
`operation in which ignition is delayed to between 15° and about 30° ATDC.
`
`Further, there is no disclosure in the specification explaining if, or how, retarding
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`ignition to between TDC and 15° ATDC meets the object of the invention of
`
`increasing exhaust gas temperature to achieve light-off in a sufficiently reduced
`
`amount of time. See, e.g., id. at 1:65-2:3, 3:1-9, 3:20-47.
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`
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`16
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`“fuelling rate” (Claims 1 and 2)
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`Independent claim 1 and dependent claim 2 recite “fuelling rate.” Ex. 1001
`
`at 6:12-14. In light of the specification, this phrase should be construed to mean
`
`“the amount of fuel introduced into a cylinder during a combustion cycle.” See e.g.,
`
`Ex. 1001, at 2:3-6, 2:7-10, 2:59-3:12, Figs. 1, 2. U.S. Patent No. 6,581,572.
`
`“the timing of introduction of fuel into the at least one cylinder being
`maintained at before top dead centre (BTDC)” (Claim 1)
`
`Independent claim 1 recites “the timing of introduction of fuel into the at
`
`least one cylinder being maintained at before top dead centre (BTDC).” Ex. 1001
`
`at 6:15-17. In light of the specification and prosecution history, this phrase should
`
`be construed to mean “all fuel introduced into the at least one cylinder during a
`
`combustion cycle is controlled to occur BTDC.” See e.g., Ex. 1001 at 2:9-14, 2:59-
`
`63, 3:1-9, Figs. 1, 2. Ex. 1012 at p. 2-4 of 11/13/1995 Office Action; p. 2-4 of
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`03/08/1996 Response; p. 2-4 of 04/25/1996 Office Action; p. 1-3 of 07/25/1996
`
`Amendment. I have been informed that in the pending litigation, the PO has
`
`construed this term to mean “start of injection for at least one cylinder is before
`
`top-dead center.” Under such a construction, however, the terms “being
`
`maintained” are rendered superfluous. The ’365 patent describes that, in typical
`
`engines fuel is introduced at approximately 60° BTDC with ignition occurring at
`
`approximately 30° BTDC. Ex. 1001 at 2:59-63. It then describes the method
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`“according to the invention” where fuel is still introduced BTDC (at between 60°
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`and 80° BTDC), while the ignition is retarded at up to about 30° ATDC. Id. at 3:1-
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`9. In other words, ignition is retarded to ATDC, but the timing of introduction of
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`fuel is left unchanged as compared to the timing of fuel introduction in “typical
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`engines”—i.e., it is "maintained at" BTDC. Compare id. at Fig. 1 with Fig. 2. In
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`this context, “the timing of introduction of fuel into the at least one cylinder being
`
`maintained at before top dead centre (BTDC)” means that all fuel is introduced
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`into the cylinder BTDC, as in typical engines.
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`“maximum load” (Claim 2)
`
`Dependent claim 2 recites “maximum load.” Ex. 1001 at 6:19-20. In light of
`
`the specification, this term should be construed to mean “maximum load of the
`
`engine,” which equates to the peak torque output of the engine. See e.g., Ex. 1001
`
`at 1:26-40, 2:3-8, 3:10-12, 5:50-57. See also, ex. 1010.
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`“additional air is introduced upstream” (Claim 12)
`
`Dependent claim 12 recites “additional air is introduced upstream.” Ex.
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`1001 at 6:43-44. In light of the specification, this term should be construed to
`
`mean “additional air is introduced into the exhaust system between the exhaust
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`ports of the engine and the catalytic treatment means.” See e.g., Ex. 1001 at 3:13-
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`19, 4:1-16, 4:32-35, Fig. 3.
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`“required operating temperature” (Claim 14)
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`Dependent claim 14 recites “required operating temperature.” Ex. 1001 at
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`6:48-51. In light of the specification, this term should be construed to mean “the
`
`temperature at which the catalytic material within the catalytic treatment means is
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`50% efficient.” See e.g., Ex. 1001 at 1:10-19, 4:62-5:46.
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`“sensed or determined” (Claim 14)
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`Dependent claim 14 recites “sensed or determined.” Ex. 1001 at 6:48-51. In
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`light of the specification, this term should be construed to mean “measured by a
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`sensor.” See e.g., Ex. 1001 at 4:62-5:46.
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` “predetermined operating condition” (Claim 18)
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`Dependent claim 18 recites “predetermined operating condition.” Ex. 1001
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`at 6:60-62. In light of the specification, this term should be construed to mean “a
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`threshold value, set in advance.” See e.g., Ex. 1001 at 4:62-5:12, 5:24-29.
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`“catalytic treatment means” (Claims 10 and 14)
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`Claim 10 recites “catalytic treatment means.” Ex. 1001 at 6:37-39, 48-51.
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`This term should be construed as a mean-plus-function claim. In light of the
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`specification, the function recited by the claim is “supporting a catalytic material,”
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`while the corresponding structure is “a structure within the exhaust system that
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`includes catalytic material having a minimum operating temperature for effective
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`treatment of exhaust gases.” See e.g., Ex. 1001 at 1:10-25, 3:13-19, Fig. 3.
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`“fuel is introduced at between 60° to 80° BTDC” (Claim 9)
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`Claim 9 recites that “fuel is introduced at between 60° to 80° BTDC.” Ex.
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`1001 at 6:35-36. In light of the specification, this term should be construed to
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`mean “all fuel for a combustion cycle is introduced into a cylinder between 80°
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`and 60° BTDC.” See e.g., Ex. 1001 at 2:9-14, 2:59-63, 3:1-9, Figs. 1, 2. Ex. 1012
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`at p. 2-4 of 11/13/1995 Office Action; p. 2-4 of 03/08/1996 Response; p. 2-4 of
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`04/25/1996 Office Action; p. 1-3 of 07/25/1996 Amendment. I have been
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`informed that in the pending litigation, the PO has construed this term to mean “the
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`start of injection occurs in the window between 80 to 60 degrees before top dead
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`center.” As described above in relation to the “the timing of introduction of fuel”
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`limitation of claim 1, the ’365 patent describes, and claim 1 requires, that all fuel is
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`introduced into the cylinder BTDC. Because claim 9 depends from, and cannot be
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`broader than, claim 1, in my opinion, a POSITA would construe “fuel is introduced
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`at between 60° to 80° BTDC” to require all fuel to be injected at between 80° and
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`60° BTDC. There is no fair reading of this language, or support in the
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`specification, for a construction that provides for fuel to be injected after 60° as
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`long as injection began between 80° and 60°, as allowed for in PO's proposed
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`construction.
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`VII. ANTICIPATION AND OBVIOUSNESS COMBINATIONS
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`A. Hitomi in combination with Onishi render obvious claims 1, 2, 9,
`10, 13, 14, and 18
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`38. U.S. Patent No. 5,233,831 to Hitomi et al. (“Hitomi”) issued on
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`August 10, 1993, but was filed on June 29, 1992. (Ex. 1002). I have been informed
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`that Hitomi is prior art under 35 U.S.C. § 102(e).
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`39. Hitomi discloses a method for operating an internal combustion
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`engine incorporating an exhaust control system containing catalytic devices to treat
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`exhaust gases exiting the combustion chamber. Id. at Abstract. The exhaust control
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`system promotes the activation of a catalytic device sufficiently to purify exhaust
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`gases, even when the engine is operating at a low temperature and also eliminates
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`harmful emissions in exhaust gas even before the activation of a catalytic device.
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`Id. at 1:62-2:2. The method disclosed in Hitomi further involves retarding ignition
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`to ATDC, and doing so when the engine is operating at low load and a low engine
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`speed, for example, during engine warm up. Id. at 7:3-9; 11:6-118; Fig. 7. During
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`ignition retard, Hitomi discloses that the rate of fuel injection is increased to
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`compensate for the increased work due, in part, to the discharge of exhaust gases
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`(increased exhaust back pressure due to a “shutter valve” in the exhaust stream in
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`Hitomi’s invention). Id. at 7:28-33; 11:21-28; 12:15-19.
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`40. Hitomi also discloses the introduction of fuel in a combustion cycle
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`being BTDC, id. 12:59-63, and in particular, injection of all fuel within a
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`combustion cycle occurring at BTDC. See, e.g. Fig. 1, in which Hitomi discloses a
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`port fuel injected engine. A POSITA would have understood that all fuel is
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`injected BTDC in a typical port fuel injected engine. Hitomi does not, however,
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`disclose introducing all fuel within at least one cylinder during a combustion cycle
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`at between 60° to 80° BTDC. It would have been obvious to a POSITA, however,
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`to inject all fuel BTDC, as recited in claim 1, and in particular for a direct injected
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`engine, at between 80° and 60° BTDC, as recited in claim 9 for some low speed,
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`low load operating conditions.
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`41.
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`In my opinion, injecting all fuel at between 80° and 60° BTDC during
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`operation of a combustion engine comprising direct injected fuel injection and
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`catalytic systems was well known in the art. For example, U.S. Patent No.
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`3,572,298 to Onishi (“Onishi”), Ex. 1005, which issued on March 23, 1971, and is
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`thus prior art under 35 U.S.C. § 102(b), discloses, as discussed in detail below,
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`injecting all fuel in a combustion cycle in at least one cylinder between about 80°
`
`and 60° BTDC. Onishi discloses that the inventive fuel injection method may be
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`carried out over a range from idling (no load) to full-load conditions, id. at 4:6-8,
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`and when the engine is cold. Id. at 9:46-52.
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`42. Onishi discloses that ignition timing can be independent of fuel
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`injection timing and further discloses that the start of fuel injection may occur at
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`about 80° BTDC. Ex. 1005 at 9:65-10:2. In particular, Onishi discloses that “while
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`the initiation angle of fuel injection is varied from 140 deg. ahead of the top dead
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`center to 80 deg. ahead of the same center, i.e., over a range of 60 deg. in terms of
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`the crank angle, the ignition timing may be varied independently thereof and the
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`ignition and operation are made possible without any undesirable outcome, over a
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`range from about 40 deg. ahead of the top dead center to a point past the said
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`center, though it is accompanied by some fluctuations of the maximum pressure
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`and mean effective pressure.” Ex. 1005 at 9:65-74. Onishi also discloses that the
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`fuel injection initiation timing may vary “over extensive ranges,” and thus, in my
`
`opinion, a POSITA would have understood that fuel injection in a cylinder of the
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`Onishi engine could begin at a crank angle slightly after 80° BTDC.
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`43. Moreover, a POSITA would recognize that under certain conditions,
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`such as idle, in which the engine of Onishi is operating at a no load, or in a low
`
`load condition, and is also operating at low speed, the length of injection time, and
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`in turn, the change in the crank shaft angle during injection will be minimal during
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`a combustion cycle. It was well known in the art at the time of the ’365 patent
`
`invention, for example, tha