`
`Inter Partes Review
`United States Patent No. 5,655,365
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`)
`)
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`) FILED ELECTRONICALLY
`)
`
`PER 37 C.F.R. § 42.6(b)(1)
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`
`
`In re Inter Partes Review of:
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` U.S. Patent No. 5,655,365
`
`Issued: August 12, 1997
`
`
`Inventor: David Richard Worth et al.
`
`
`Application No. 446,739
`
`
`Filed: June 6, 1995
`
`
`For: METHOD OF OPERATING AN
`INTERNAL COMBUSTION ENGINE
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`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S.P.T.O.
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,655,365
`
`
`
`
`
`

`

`
`
`I.
`
`II.
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`Inter Partes Review
`United States Patent No. 5,655,365
`
`TABLE OF CONTENTS
`
`PRELIMINARY STATEMENT ................................................................... 1
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED .............................................................................. 2
`
`A.
`
`B.
`
`C.
`
`Claims for Which Review is Requested ................................................ 2
`
`Statutory Grounds of Challenge ............................................................ 3
`
`Claim Construction ............................................................................... 3
`
`III. THE ’365 PATENT ........................................................................................ 9
`
`A. Overview of the Disclosure ................................................................... 9
`
`IV. CLAIMS 1, 2, 9, 10, 13, 14, AND 18 OF THE ’365 PATENT ARE
`UNPATENTABLE ...................................................................................... 11
`A. Hitomi in combination with Onishi render obvious claims 1, 2,
`9, 10, 13, 14, and 18 ............................................................................ 11
`
`B. Hitomi in combination with Onishi and Eichler ’089 renders
`claim 5 obvious ................................................................................... 24
`
`C. Hitomi in combination with Onishi and Takada render claim 12
`obvious ................................................................................................ 26
`
`D. Griese in combination with Eichler ’791 and Onishi renders
`obvious claims 1, 2, 5, 9, 10, 13, 14, and 18 ....................................... 27
`
`E.
`
`F.
`
`G.
`
`Griese in combination with Eichler ’791, Onishi, and Takada
`renders obvious claim 12 ..................................................................... 39
`
`Ahern in combination with Bernhardt renders obvious claims 1,
`2, 5, 9, 10, 12, 13, and 18 .................................................................... 40
`
`Ahern in combination with Bernhardt and Griese renders
`obvious claim 14 ................................................................................. 56
`
`V. GROUNDS FOR STANDING .................................................................... 57
`
`VI. MANDATORY NOTICES .......................................................................... 58
`
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`Inter Partes Review
`United States Patent No. 5,655,365
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`A.
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`B.
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`C.
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`Real Party-in-Interest .......................................................................... 58
`
`Related Matters .................................................................................... 58
`
`Lead and Back-Up Counsel, and Service Information ....................... 59
`
`VII. CONCLUSION ............................................................................................ 60
`
`
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`iii
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`Inter Partes Review
`United States Patent No. 5,655,365
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Ex Parte Ronald A. Katz Tech. Licensing L.P., No. 2008-005127,
`2010 WL 1003878 (B.P.A.I. Mar. 15, 2010) ....................................................... 3
`
`
`In re Aller,
`220 F.2d 454 (C.C.P.A. 1955) ..................................................................... 15, 25
`
`
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012) .......................................... 15, 25, 28, 29, 30, 51
`
`
`In re Peterson,
`315 F.3d 1325 (Fed. Cir. 2003) ....................................................... 25, 29, 51, 52
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 3
`
`
`Statutes
`35 U.S.C. § 102 .................................................................................................passim
`
`35 U.S.C § 103. .................................................................................................passim
`
`35 U.S.C. § 112 .......................................................................................................... 3
`
`35 U.S.C. § 311 .......................................................................................................... 2
`
`35 U.S.C. §§ 311-319 ................................................................................................ 1
`
`Regulations
`
`37 C.F.R. § 42.100 et seq. ......................................................................................... 1
`
`37 C.F.R. § 42.15(a) ................................................................................................... 1
`
`iv
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`Inter Partes Review
`United States Patent No. 5,655,365
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`LIST OF EXHIBITS
`
`Petition Exhibit 1001: U.S. Patent No. 5,655,365 to David Richard Worth et al.
`(“Worth”).
`
`Petition Exhibit 1002: U.S. Patent No. 5,233,831 to Hitomi (“Hitomi”).
`
`Petition Exhibit 1003: U.S. Patent No. 3,865,089 to Eichler et al. (“Eichler
`’089”).
`
`Petition Exhibit 1004: U.S. Patent No. 3,572,298 to Onishi (“Onishi”).
`
`Petition Exhibit 1005: U.S. Patent No. 4,276,745 to Takada et al. (“Takada”).
`
`Petition Exhibit 1006: U.S. Patent No. 3,799,134 to Griese (“Griese”).
`
`Petition Exhibit 1007: Bernhardt, W E., Methods for Fast Catalytic System
`Warm-Up During Vehicle Cold Starts, Society of
`Automotive Engineers, 400 Commonwealth Dr.,
`Warrendale, PA, 15096, USA, 1972. (“Bernhardt”).
`
`Petition Exhibit 1008: Declaration of Dr. Ron Matthews.
`
`Petition Exhibit 1009: Amended Complaint filed in Orbital Australia Pty Ltd.
`and Orbital Fluid Technologies, Inc., v. Daimler AG,
`Mercedes-Benz USA LLC, Mercedes-Benz US
`International Inc., Robert Bosch GMBH, and Robert
`Bosch LLC, Case No. 3:14-cv-808-REP (E.D.Va.).
`
`Petition Exhibit 1010: GB Patent No. 1447791 to Eichler et al. (“Eichler ’791”).
`
`Petition Exhibit 1011: U.S. Patent No. 4,926,806 to Ahern (“Ahern”).
`
`Petition Exhibit 1012:
`
`Patent Prosecution History of U.S. Patent No. 5,655,365
`(U.S. App. Ser. No. 08/446,739).
`
`Petition Exhibit 1013: U.S. Patent No. 6,581,572 to Hurley (“Hurley”).
`
`Petition Exhibit 1014: Orbital’s Proposed Claim Constructions filed in Orbital
`Australia Pty Ltd. and Orbital Fluid Technologies, Inc.,
`v. Daimler AG, Mercedes-Benz USA LLC, Mercedes-
`
`
`
`v
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`Inter Partes Review
`United States Patent No. 5,655,365
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`Benz US International Inc., Robert Bosch GMBH, and
`Robert Bosch LLC, Case No. 3:14-cv-808-REP
`(E.D.Va.).
`
`Petition Exhibit 1015: United States Patent No. 5,050,551 to Morikawa
`(“Morikawa”).
`
`
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`Inter Partes Review
`United States Patent No. 5,655,365
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`Robert Bosch LLC and Daimler AG (collectively, “Petitioner”) request inter
`
`
`
`partes review of claims 1, 2, 5, 9, 10, 12-14, and 18 of the ’365 patent (Ex. 1001),
`
`now purportedly assigned to Orbital Engine Company Pty Limited (“Orbital” or
`
`“Patent Owner”), in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100
`
`et seq.
`
`I.
`
`PRELIMINARY STATEMENT
`
`Claims 1, 2, 5, 9, 10, 12-14, and 18 of the ’365 patent are directed to a
`
`method of operating an internal combustion engine in order to produce high
`
`exhaust gas temperatures to reduce undesirable contaminants from exhaust in
`
`engines incorporating exhaust systems having a catalytic treatment means. Ex.
`
`1001 at 1:4-9. The patent’s specification acknowledges that heating catalytic
`
`material using an afterburner device placed upstream of the catalytic treatment
`
`means, in order to heat the exhaust gases and reduce contaminants, is well known
`
`in the art. Id. at 1:41-48. The patent also concedes that it was well-known in the art
`
`to introduce a gas/fuel mixture into an engine before top dead center (BTDC). Id.at
`
`Fig.1. The only purported new feature in claims 1, 2, 5, 9, 10, 12-14, and 18 is thus
`
`heating exhaust gases by retarding the ignition of a gas/fuel mixture to after top
`
`dead centre (ATDC) and, while the ignition is retarded, increasing the fuelling rate
`
`and maintaining the timing of fuel introduction at BTDC. Id. at 1:49-64.
`
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`Inter Partes Review
`United States Patent No. 5,655,365
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`A number of prior art references not considered by the PTO during
`
`prosecution of the ’365 patent, however, disclose the method of operating an
`
`internal combustion engine of claim 1, involving retarding ignition to ATDC,
`
`increasing fueling rate, and timing fuel injection BTDC, in order to heat up
`
`catalytic treatment means to the light-off temperature of the catalytic material to
`
`reduce the amount of harmful contaminants in the exhaust gases. Thus, all of the
`
`features of the invention disclosed and claimed in the ’365 patent were well known
`
`in the art.
`
`As discussed in more detail below, the disclosures of Hitomi, Onishi, Eichler
`
`’089, Griese, Eichler ’791, Bernhardt, and Ahern, teach every feature of at least
`
`claims 1, 2, 5, 9, 10, 12-14, and 18 and warrant the cancellation of those claims.
`
`Accordingly, the Board should institute trial and cancel these claims.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`A. Claims for Which Review is Requested
`Petitioner respectfully requests review under 35 U.S.C. § 311 of claims 1, 2,
`
`5, 9, 10, 12-14, and 18 of the ’365 patent, and the cancellation of these claims as
`
`unpatentable.
`
`
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`2
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`Inter Partes Review
`United States Patent No. 5,655,365
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`Statutory Grounds of Challenge
`
`B.
`Claims 1, 2, 5, 9, 10, 12-14, and 18 are unpatentable under 35 U.S.C. §§ 102
`
`and 103. The claim construction, reasons for unpatentability, and specific evidence
`
`supporting this request are detailed below.
`
`C. Claim Construction
`Claim terms in an expired patent are given their ordinary and accustomed
`
`meaning as understood by one of ordinary skill in the art,1 consistent with the
`
`standard expressed in Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.
`
`2005) (en banc). Ex Parte Ronald A. Katz Tech. Licensing L.P., No. 2008-005127,
`
`2010 WL 1003878, at *3-4 (B.P.A.I. Mar. 15, 2010).
`
`
`1 Petitioner submits that a person of ordinary skill in the art (“POSITA”) would
`
`have at least an undergraduate degree in a science or engineering discipline and a
`
`few years of work experience in a field related to engine control technology, a
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`graduate degree in a field related to engine control technology, or a few years of
`
`continuing education toward a graduate degree in a field related to engine control
`
`technology. Petitioner applies this level of ordinary skill in this petition.
`
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`Inter Partes Review
`United States Patent No. 5,655,365
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`The following terms from the claims of the ’365 patent require construction
`
`for this proceeding.2 All other terms should be given their ordinary meanings.
`
`“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
`
`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.
`
`“fuelling rate” (Claims 1 and 2)
`
`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
`
`
`2 Because the IPR procedure does not permit challenges under 35 U.S.C. § 112,
`
`Petitioner has not included any indefiniteness arguments herein. Petitioner will,
`
`however, raise such arguments in other proceedings.
`
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`United States Patent No. 5,655,365
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`“the amount of fuel introduced into a cylinder during a combustion cycle.” See e.g.,
`
`Ex. 1001 at 2:3-10, 2:59-3:12, Figs. 1, 2; Ex. 1013 at 1:8-14.
`
`“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 74-76 (11/13/1995 Office Action), 83-85
`
`(03/08/1996 Response), 91-93 (04/25/1996 Office Action), 106-07 (07/25/1996
`
`Amendment). In the pending litigation, the Patent Owner (“PO”) has construed this
`
`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, improper. Ex. 1014 at 2. 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
`
`“according to the invention” where fuel is still introduced BTDC (at between 60°
`
`and 80° BTDC), while the ignition is retarded at up to about 30° ATDC. Id. at 3:1-
`
`9. In other words, ignition is retarded to ATDC, but the timing of introduction of
`
`fuel is left unchanged as compared to the timing of fuel introduction in “typical
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`United States Patent No. 5,655,365
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`engines”— i.e., it is "maintained at" BTDC. Compare id. Fig. 1 with Fig. 2. In this
`
`context, “the timing of introduction of fuel into the at least one cylinder being
`
`maintained at before top dead centre means that all fuel is introduced into the
`
`cylinder BTDC, as in typical engines.
`
`This is consistent with the prosecution history for the '365 patent. In order
`
`to overcome a prior art rejection, PO amended claim 1 of the '365 patent to include
`
`the requirement that "the timing of the introduction of fuel into the at least one
`
`cylinder being maintained at before top dead center." Ex. 1012 at 106-07
`
`(07/25/1996 Amendment). This limitation was added to overcome Morikawa (U.S.
`
`Pat. No. 5,050,551) (Ex. 1015), which the Patent Examiner described as
`
`“retard[ing] ignition timing and increas[ing] fuel injection amount until exhaust or
`
`catalyst temperature reaches a predetermined minimum.” Ex. 1012 at 91 (4/25/96
`
`Final Rejection). At no point was Morikawa distinguished by the PO based on the
`
`’365 patent merely requiring fuel injection to begin BTDC; rather, the claims were
`
`amended to require that fuel injection be "maintained at" BTDC.
`
`“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. 1013 at 2:19-22.
`
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`United States Patent No. 5,655,365
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`“additional air is introduced upstream” (Claim 12)
`
`Dependent claim 12 recites “additional air is introduced upstream.” Ex.
`
`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
`
`ports of the engine and the catalytic treatment means.” See, e.g., Ex. 1001 at 3:13-
`
`19, 4:1-16, 4:32-35, Fig. 3.
`
`“required operating temperature” (Claim 14)
`
`Dependent claim 14 recites “required operating temperature.” Ex. 1001 at
`
`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
`
`50% efficient.” See e.g., Ex. 1001 at 1:10-19, 4:62-5:46.
`
`“sensed or determined” (Claim 14)
`
`Dependent claim 14 recites “sensed or determined.” Ex. 1001 at 6:48-51. In
`
`light of the specification, this term should be construed to mean “measured by a
`
`sensor.” See e.g., Ex. 1001 at 4:62-5:46.
`
`“predetermined operating condition” (Claim 18)
`
`Dependent claim 18 recites “predetermined operating condition.” Ex. 1001
`
`at 6:60-62. In light of the specification, this term should be construed to mean “a
`
`threshold value, set in advance.” See e.g., Ex. 1001 at 4:62-5:12, 5:24-29.
`
`“catalytic treatment means” (Claims 10 and 14)
`
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`7
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`Inter Partes Review
`United States Patent No. 5,655,365
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`Claim 10 recites “catalytic treatment means.” Ex. 1001 at 6:37-39, 48-51.
`
`This term should be construed as a mean-plus-function claim. In light of the
`
`specification, the function recited by the claim is “supporting a catalytic material,”
`
`while the corresponding structure is “a structure within the exhaust system that
`
`includes catalytic material having a minimum operating temperature for effective
`
`treatment of exhaust gases.” See e.g., Ex. 1001 at 1:10-25, 3:13-19, Fig. 3.
`
`“fuel is introduced at between 60° to 80° BTDC” (Claim 9)
`
`Claim 9 recites that “fuel is introduced at between 60° to 80° BTDC.” Ex.
`
`1001 at 6:35-36. In light of the specification, this phrase should be construed to
`
`mean “all fuel for a combustion cycle is introduced into a cylinder between 80°
`
`and 60° BTDC.” See, e.g., Ex. 1001 at 2:9-14, 2:59-63, 3:1-9, Figs. 1, 2. Ex. 1012
`
`at 74-76 (11/13/1995 Office Action), 83-85 (03/08/1996 Response), 91-93
`
`(04/25/1996 Final Office Action), 106-07 (07/25/1996 Amendment). In the
`
`pending litigation, the PO has construed this term to mean “the start of injection
`
`occurs in the window between 80 to 60 degrees before top dead center.” Ex. 1014
`
`at 2. As described above, the ’365 patent describes, and claim 1 requires, that all
`
`fuel is introduced into the cylinder BTDC. Because claim 9 depends from, and
`
`cannot be broader than, claim 1, a POSITA would construe “fuel is introduced at
`
`between 60° to 80° BTDC” to require all fuel to be injected at between 80° and 60°
`
`BTDC. There is no fair reading of this language, or support in the specification,
`
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`Inter Partes Review
`United States Patent No. 5,655,365
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`for a construction that provides for fuel to be injected after 60° as long as injection
`
`began between 80° and 60°, as allowed for in the PO's proposed construction.
`
`III. THE ’365 PATENT
`A. Overview of the Disclosure
`The ’365 patent is directed to a method of operating an internal combustion
`
`engine in order to produce high exhaust gas temperatures to reduce undesirable
`
`contaminants from exhaust in engines incorporating exhaust systems having a
`
`catalytic treatment means. Id. at 1:4-9. The ’365 disclosure describes how
`
`catalytic material only effectively reduces undesirable emission contaminants
`
`above a minimum operating temperature, known in the art as a “light-off
`
`temperature.” Typically, however, the catalytic material is below its light-off
`
`temperature at engine startup, resulting in increased levels of undesirable emissions
`
`issuing from the engine’s exhaust system. Thus, it is desirable to raise the
`
`temperature of the exhaust gas at start-up to reduce the time until the catalytic
`
`material reaches the light-off temperature. But at start-up, the engine typically
`
`operates at a low load and speed, known in the art as “idle,” where the amount of
`
`fuel delivered to the engine is small, and thus, little heat is generated to raise the
`
`temperature of the exhaust gas and the catalytic material. Id. at 1:10-32. The ’365
`
`patent acknowledges that methods for raising the temperature of the catalyst were
`
`known in the art, including using afterburner devices. Id. at 41-48.
`
`
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`Inter Partes Review
`United States Patent No. 5,655,365
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`To improve the effectiveness of catalytic material during vehicle startup, the
`
`’365 patent describes a method for assisting in maintaining high exhaust gas
`
`temperatures, and thus, achieving rapid light-off of the catalytic material in the
`
`exhaust system and maintaining the light-off condition during engine operation.
`
`Id. at 1:49-55. This method comprises retarding the ignition of a gas/fuel mixture
`
`within at least one cylinder of the engine to after top dead center (ATDC) and
`
`increasing the fuelling rate while ignition is being retarded. Id. at Abstract.
`
`In particular, the ’365 patent describes that ignition can be 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 variable,
`
`preferably between 15° to 30° ATDC. Id. at 1:67-2:2.
`
`The ’365 patent also discloses that while ignition is retarded, the fuelling
`
`rate (mg/cylinder/cycle) can be varied and may be greater than 50% of the fuelling
`
`rate at maximum load. Id. at 2:3-8.
`
`The ’365 patent further discloses that fuel is introduced to the combustion
`
`chamber at approximately 60° BTDC, and acknowledges that the timing of the
`
`introduction in that range is typical in direct injection engines. In fact, fuel is
`
`introduced most preferably at between 60° and 80° BTDC. Id. at 2:10-13; 2:59-62;
`
`3:2-4; Fig. 1; Fig. 2.
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`Inter Partes Review
`United States Patent No. 5,655,365
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`Fig. 1 (below left) discloses the cylinder pressure versus crank angle
`
`characteristics for a typical direct injected two-stroke internal combustion engine,
`
`as was known in the art, while Fig. 2 (below right) shows similar characteristics for
`
`a direct injected two-stroke internal combustion engine operated according to the
`
`method of the invention.
`
`
`
`The ’365 patent further discloses that combustion preferably occurs under
`
`rich conditions with the overall air/fuel ratio being close to the stoichiometric ratio.
`
`Id. at 3:60-62. Additional oxygen containing gas, such as air, may be introduced
`
`upstream of the catalytic treatment means provided in the exhaust system of the
`
`engine. This excess air may be introduced to the exhaust system to promote the
`
`catalytic oxidation of the exhaust gases in order to further reduce undesirable
`
`contaminants therein. Id. at 4:1-3; 4:33-35.
`
`IV. CLAIMS 1, 2, 9, 10, 13, 14, AND 18 OF THE ’365 PATENT ARE
`UNPATENTABLE
`A. Hitomi in combination with Onishi render obvious claims 1, 2, 9,
`10, 13, 14, and 18
`
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`Inter Partes Review
`United States Patent No. 5,655,365
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`U.S. Patent No. 5,233,831 to Hitomi et al. (“Hitomi”) issued on August 10,
`
`1993, but was filed on June 29, 1992. Ex. 1002. Because the earliest effective
`
`priority date of claims 1, 2, 9, 10, 13, 14, and 18 is January 25, 1993, Hitomi is
`
`prior art under 35 U.S.C. § 102(e).
`
`Hitomi discloses a method for operating an internal combustion engine
`
`incorporating an exhaust control system containing catalytic devices to treat
`
`exhaust gases exiting the combustion chamber. Id. at Abstract. The exhaust control
`
`system promotes the activation of a catalytic device sufficiently to purify exhaust
`
`gases, even when the engine is operating at a low temperature and also eliminates
`
`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 load). Id. at 7:28-33; 11:21-28; 12:15-19. Ex. 1008 ¶39. Hitomi
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`also discloses the introduction of fuel in a combustion cycle being BTDC, (Ex.
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`1002 at 12:59-63), although Hitomi does not explicitly disclose that all fuel is
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`injected BTDC in a combustion cycle. Hitomi also does not disclose introducing all
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`fuel within at least one cylinder during a combustion cycle at between 60° to 80°
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`BTDC. It would have been obvious to a POSITA, however, to inject all fuel
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`BTDC, as recited in claim 1, and in particular, at between 60° to 80° BTDC, as
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`recited in claim 9. Ex. 1008 ¶40.
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`Injecting all fuel at between 80° and 60° BTDC during operation of a
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`combustion engine comprising fuel injection and catalytic systems was well known
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`in the art. For example, U.S. Patent No. 3,572,298 to Onishi (“Onishi”), Ex. 1004,
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`which issued on March 23, 1971, and is thus prior art under 35 U.S.C. § 102(b),
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`discloses injecting all fuel in a combustion cycle in at least one cylinder between
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`about 80° and 60° BTDC. Onishi discloses that the inventive fuel injection method
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`may be carried out over a range from idling (no load) to full-load conditions, id. at
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`4:6-8, and when the engine is cold. Id. at 9:46-52. Ex. 1008 ¶41.
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`Onishi discloses that ignition timing can be independent of fuel injection
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`timing and further discloses that the start of fuel injection may occur at about 80°
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`BTDC. Ex. 1004 at 9:65-10:2. In particular, Onishi discloses that “while the
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`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.” Id. at 9:65-74.
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`Onishi also discloses that the fuel injection initiation timing may vary “over
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`extensive ranges,” and thus a POSITA would have understood that fuel injection in
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`a cylinder of the Onishi engine could begin at a crank angle slightly after 80°
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`BTDC. Ex. 1008 ¶42. Moreover, under certain conditions, such as idle, in which
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`the engine of Onishi is operating at a no load, or in a low load condition, and is
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`also operating at low speed, the length of injection time, and in turn, the change in
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`the crank shaft angle during injection will be minimal during a combustion cycle.
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`Id. ¶43. It was well known in the art at the time of the ’365 patent invention, for
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`example, that typical port fuel injectors have a minimum pulse width (i.e., the
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`length of time the fuel injector is open in a cycle) as short as approximately 2.0 ms
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`and a direct injector could have a minimum pulse width of approximately 1.5 ms.
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`Id. ¶43. The calculation below shows that at an engine speed of 600 rpm, which a
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`POSITA would understand is typical for port injected engines at idle (low end of
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`the idle speed range), and for a crank shaft angle change of 20° (i.e., from 80° to
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`60° BTDC), there would be 5.56 ms to inject all fuel. Id. ¶44.
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`[(20 crank angle deg)*(1 revolution/360 deg)*(1 min/600
`revolutions)*(60 s/min)*(1000 ms/s)] = 5.56 ms
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`A similar calculation made at an engine speed of 800 rpm, which a POSITA would
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`understand is typical for port injected engines at idle (high end of the idle speed
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`range), shows that there would be 4.17 ms to inject all fuel under such conditions.
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`[(20 crank angle deg)*(1 revolution/360 deg)*(1 min/800
`revolutions)*(60 s/min)*(1000 ms/s)] = 4.17 ms
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`Finally, at an engine speed of 1200 rpm there would be 2.78 ms to inject all fuel.
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`[(20 crank angle deg)*(1 revolution/360 deg)*(1 min/1200
`revolutions)*(60 s/min)*(1000 ms/s)] = 2.78 ms
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`Thus, a POSITA would understand that at each of these exemplary engine
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`speeds all fuel would be injected during the 20° crank shaft angle change under
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`low load or no load conditions, because the minimum pulse width (approximately
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`2.0 ms) is less than the time available to inject all fuel (based on a crank shaft
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`angle range of 20°). Id. ¶ 45. Therefore, under such circumstances in the engine
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`disclosed in Onishi, if fuel injection started at about 80° BTDC, a POSITA would
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`have understood that all fuel would have been injected by 60° BTDC over at least a
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`portion of the engine operating range. Id. ¶45.
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`It would have been obvious to a POSITA to implement the fuel injection
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`range of Hitomi with the fuel injection range of Onishi (which includes introducing
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`all fuel in a cycle at BTDC, and in particular, between about 80° and 60° BTDC)
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`so as to provide a more homogeneous mixture leading to more efficient
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`combustion, in part, because Hitomi discloses a method for operating an engine
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`exhibiting low load and low engine speed characteristics using ignition timing
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`retard, (Ex. 1002 at Fig. 7, 11:13-18), while Onishi discloses a method for
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`operating an engine exhibiting no-load conditions, such as engine idle, (Ex. 1004 at
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`4:6-8), and after cold start, (id. at 9:46-52). Ex. 1008 ¶49. Moreover, “where the
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`general conditions of a claim are disclosed in the prior art, it is not inventive to
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`discover the optimum or workable ranges by routine experimentation.” In re
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`Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012); (quoting In re Aller,
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`220 F.2d 454, 456, (CCPA 1955); see also Ex. 1008 ¶46. Further, a POSITA
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`would understand Onishi to disclose embodiments in which all fuel is introduced
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`to a cylinder at BTDC and within the claimed introduction range of between 80°
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`and 60° BTDC. Ex. 1008 ¶46.
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`In addition, while Hitomi discloses a method for operating an internal
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`combustion engine involving the retardation of ignition to ATDC and wherein the
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`fuelling rate is increased to a level higher than that required when the engine is
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`operating normally to thereby assist in increasing the exhaust gas temperature of
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`the engine, Hitomi does not explicitly disclose that the fuelling rate is greater than
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`50% of the fuelling rate at maximum load, as recited in claim 2 of the ’365 patent.
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`It was well known in the art, however, to operate an internal combustion engine in
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`such a manner. In fact, as discussed supra, Onishi discloses this claim feature.
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`Moreover, it would have been obvious to a POSITA to implement the increased
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`fuelling rate explicitly disclosed in Onishi into the engine of Hitomi in order to
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`increase the amount of energy created by the combustion of the fuel/air mixture in
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`the operating cylinder of the combustion engine. A POSITA would have
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`understood that an increase in the fuelling rate, and thus, amount of fuel/air
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`mixture in the cylinder would aid in heating up the exhaust gases during idle or
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`cold start. Ex. 1008 ¶48. As discussed above, a POSITA would have been
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`motivated to combine these teachings of Hitomi and Onishi.
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`As further detailed in the claim chart below, the teachings of Hitomi
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`combined with Onishi disclose all elements of claims 1, 2, 9, 10, 13, 14, and 18 of
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`the ’365 patent.
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`Claims
`1. A method of operating an
`internal combustion engine
`comprising
`
`
`Exemplary Disclosure of the Prior Art
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`U.S. Patent No. 5,233,831 to Hitomi et al.
`(“Hitomi”) discloses a method of operating an
`internal combustion engine. Ex 1002 at title.
`“Exhaust control system for internal combustion
`engine.” Id.
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`retarding the ignition of a
`gas/fuel mixture within at
`least one cylinder of the
`engine to after