Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 26
`
`Entered: December 22, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2015-01259
`Patent 5,655,365
`____________
`
`
`
`Before KEN B. BARRETT, JEREMY M. PLENZLER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`571-272-7822
`
`
`
`Paper No. 26
`
`Entered: December 22, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2015-01259
`Patent 5,655,365
`____________
`
`
`
`Before KEN B. BARRETT, JEREMY M. PLENZLER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`
`INTRODUCTION
`I.
`Robert Bosch LLC and Daimler AG (collectively, “Petitioner”) filed a
`
`request for an inter partes review of claims 1, 2, 5, 9, 10, 12–14, and 18 of
`U.S. Patent No. 5,655,365 (“the ’365 patent,” Ex. 1001). Paper 3 (“Pet.”).
`Orbital Australia Pty Ltd (“Patent Owner”) filed a Patent Owner Preliminary
`Response. Paper 8 (“Prelim. Resp.”). The Board instituted a trial for claims
`1, 2, 5, 9, 10, 12–14, and 18. Paper 9 (“Dec. on Inst.”). Although Petitioner
`proposed seven grounds of unpatentability, we instituted trial on only five
`asserted grounds of unpatentability for obviousness. Dec. on Inst. 18.
`
`After institution of trial, Patent Owner filed a Request for Rehearing,
`arguing, inter alia, that our preliminary claim construction was in error.
`Paper 11, 7. We denied the Request, noting that “Patent Owner’s arguments
`regarding the constructions of the claim terms can be submitted in its patent
`owner response, but are not appropriate subject matter for a request on
`rehearing.” Paper 14, 5; see id. at 7. We also notified Patent Owner that a
`certain aspect of Patent Owner’s proposed claim construction remained
`unclear to us. Id. at 4.
`
`In due course, Patent Owner filed a Patent Owner Response (“PO
`Resp.”) to the Petition. Paper 17. Petitioner filed a Reply (“Reply”) to
`Patent Owner’s Response. Paper 21.
`
`Oral hearing was conducted on August 29, 2016. The record contains
`a transcript of the hearing. Paper 25 (“Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a).
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`For the reasons discussed herein, we determine Petitioner has shown
`
`by a preponderance of the evidence that claims 1, 2, 5, 9, 10, 12–14, and 18
`are unpatentable.
`
`A. Related Proceedings
`Both parties identify, as matters involving the ’365 patent, a district
`
`court case, Orbital Australia Pty Ltd. and Orbital Fluid Technologies, Inc.,
`v. Daimler AG, Mercedes-Benz USA LLC, Mercedes-Benz US International
`Inc., Robert Bosch GmbH, and Robert Bosch LLC, Case No. 3:14-cv-808-
`REP (E.D. Va.), and Patent Trial and Appeal Board case IPR2015-01258.
`Pet. 58–59; Paper 6. Additionally, we note that Petitioner filed a Petition in
`IPR2016-00083 (institution denied) challenging claims of the ’365 patent.
`See, e.g., Paper 18.
`
`B. The’365 Patent
`The ’365 patent pertains to “a method of operating an internal
`
`combustion engine in order to produce high exhaust gas temperatures” in the
`context of catalytic treatment of exhaust gases to reduce contaminants.
`Ex. 1001, col. 1, ll. 4–9. The patent explains that the catalyst, to effectively
`reduce contamination levels, must attain a minimum operating temperature,
`the “light-off” temperature. Id. at col. 1, ll. 10–17. The patent is directed to
`a method to reduce the time required to raise the catalyst to a light-off
`temperature condition, for example, upon engine start-up after a period of
`non-operation, and to maintain that condition. Id. at col. 1, ll. 19–25, 49–55.
`
`The ’365 patent describes a method where the ignition of the air/fuel
`mixture within at least one engine cylinder is retarded to a point when the
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`crankangle is After Top Dead Centre1 (ATDC) and, while the ignition is so
`retarded, increasing the fueling rate to that cylinder to a level higher than
`required when operating normally. Id. at col. 1, ll. 56–64. The combination
`of the retarded ignition and the high fuelling rate results in a high amount of
`thermal energy available to heat the catalyst. Id. at col. 3, ll. 48–54. The
`specification, explaining why there is a need to increase the fueling rate
`during the disclosed method of operation, states:
`[A]t startup the engine typically will operate at a relatively low
`load and speed, such as is termed “engine idle”, and therefore the
`amount of fuel being delivered to the engine is comparatively
`small and hence, only a relatively small amount of heat is
`available for raising the temperature of the exhaust gases and
`hence the temperature of the catalytic material to its “light-off”
`temperature.
`Id. at col. 1, ll. 26–32. The specification provides the following example
`regarding the increased fueling rate:
`In a two-stroke three cylinder 1.2 liter direct injected engine, the
`anticipated fuel per cycle at normal engine
`idle
`is 3
`mg/cylinder/cycle whereas when retarded ignition and a high
`fuelling rate is enabled in accordance with the method of the
`present invention, the increased fuelling rate may be as high as
`18 to 25 mg/cylinder/cycle, i.e[.,] 85% to 115% of the fuelling
`rate at maximum engine load.
`Id. at col. 5, ll. 50–57. In the claimed method, the timing of the introduction
`of fuel is maintained at before top dead centre (BTDC). Id. at col. 6, ll. 16–
`18 (claim 1).
`
`
`1 The ’365 patent uses Australian spelling for certain words such as “centre”
`and “fuelling.” We use in this decision both the Australian and American
`spellings interchangeably.
`
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`Figures 1 and 2 of the ’365 patent are reproduced below.
`
`
`
`
`Figures 1 and 2 depict graphs showing the cylinder pressure-crankangle
`characteristics for a typical direct injected two-stroke internal combustion
`engine and for such an engine operated according to the method of the ’365
`patent, respectively. Id. at col. 2, ll. 46–52.
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`C. Illustrative Claim
`Claim 1 is an independent claim. Claims 2, 5, 9, 10, 12–14, and 18
`
`depend directly or indirectly from independent claim 1. Claim 1, reproduced
`below with paragraphing added, is illustrative:
`1. A method of operating an internal combustion engine
`comprising
`
`retarding the ignition of a gas/fuel mixture within at least
`one cylinder of the engine to after top dead centre (ATDC) in
`respect of the combustion cycle of said at least one cylinder of
`the engine and,
`
`while said ignition is so retarded, increasing the fuelling
`rate of said at least one cylinder to a level higher than that
`required when the engine is operating normally to thereby assist
`in increasing the exhaust gas temperature of the engine,
`
`the timing of the introduction of fuel into the at least one
`cylinder being maintained at before top dead centre (BTDC).
`Ex. 1001, col. 6, ll. 7–18.
`
`D. Applied References
`US 5,233,831 Aug. 10, 1993 Ex. 1002
`US 3,865,089
`Feb. 11, 1975 Ex. 1003
`
`Hitomi
`Eichler et al.
`(“Eichler ’089”)
`Onishi et al. (“Onishi”) US 3,572,298 Mar. 23, 1971 Ex. 1004
`Takada et al. (“Takada”) US 4,276,745
`July 7, 1981
`Ex. 1005
`Griese
`US 3,799,134 Mar. 26, 1974 Ex. 1006
`Eichler et al.
`GB 1 447 791
`Sept. 2, 1976
`Ex. 1010
`(“Eichler ’791”)
`
`Petitioner relies also on the Declaration of Dr. Ron Matthews, dated
`
`June 15, 2015, (Ex. 1008) in support of Petitioner’s arguments. Patent
`Owner does not proffer an expert declaration in support of its arguments.
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`E. Grounds of Unpatentability Instituted
`We instituted inter partes review of claims 1, 2, 5, 9, 10, 12–14,
`
`and 18 on the following grounds of unpatentability under 35 U.S.C. § 103
`(Dec. on Inst. 18):
`
`Claim[s]
`Basis
`References
`§ 103(a) 1, 9, 10, 13, 14, and 18
`Hitomi and Onishi
`Hitomi, Onishi, and Eichler ’089 § 103(a) 5
`Hitomi, Onishi, and Takada
`§ 103(a) 12
`Griese, Eichler ’791, and Onishi § 103(a) 1, 2, 5, 9, 10, 13, 14, and 18
`Griese, Eichler ’791, Onishi, and
`§ 103(a) 12
`Takada
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner maintains that a person of ordinary skill in the art “would
`
`have at least an undergraduate degree in mechanical engineering or a similar
`technical field and at least two (2) years of relevant work experience or
`equivalent advanced education in a field related to engine control
`technology.” IPR2015-01258 (related case), Paper 3, 3 n.1.2 Patent Owner
`adopts, for purposes of this proceeding, Petitioner’s proposed definition of
`the ordinary artisan. PO Resp. 12 n.2. Based on our review of the record,
`we too adopt Petitioner’s assessment of the level of ordinary skill in the art.
`
`
`2 Petitioner, in this case, utilizes a slightly different articulation of the level
`of ordinary skill in the art. See Pet. 3 n.1. The differences do not affect the
`outcome.
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`B. Claim Construction
`The ’365 patent has expired. Prelim. Resp. 3; see Pet. 3–4; PO
`
`Resp. 11–12. “[T]he Board’s review of the claims of an expired patent is
`similar to that of a district court’s review.” In re Rambus, Inc., 694 F.3d 42,
`46 (Fed. Cir. 2012). Accordingly, we apply the principle set forth in Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (quoting
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)),
`that the “words of a claim ‘are generally given their ordinary and customary
`meaning’” as understood by a person of ordinary skill in the art in question
`at the time of the invention. “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). “[C]laims ‘must be read in view of the specification,
`of which they are a part.’” Phillips, 415 F.3d at 1315 (quoting Markman v.
`Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he
`specification ‘is always highly relevant to the claim construction analysis.
`Usually, it is dispositive; it is the single best guide to the meaning of a
`disputed term.’” Id. (quoting Vitronics, 90 F.3d at 1582). Extrinsic
`evidence is “less significant than the intrinsic record in determining the
`legally operative meaning of claim language.” Id. at 1317 (citations and
`internal quotation marks omitted).
`
`Method claim 1 calls for: 1) retarding the ignition to ATDC;
`2) increasing the fueling rate, while the “ignition is so retarded,” to a level
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`higher than that during normal operation; and 3) maintaining fuel
`introduction timing at BTDC.
`
`Patent Owner concedes that the challenged claims are unpatentable if
`the Board maintains its claim constructions as set forth in the Decision on
`Institution. Tr. 28:24–29:16.
`1. the timing of the introduction of fuel
`Claim 1 recites “the timing of the introduction of fuel into the at least
`
`one cylinder being maintained at before top dead centre (BTDC).”
`Ex. 1001, col. 6, ll. 16–18. The parties agree that this recitation requires at
`least that the initiation of fuel addition to the cylinder begin before top dead
`center. See Pet. 5; PO Resp. 13–14. Specifically, Patent Owner argues that
`the term “introduction” refers to the start of injection and, thus, the
`limitation requires merely that fuel injection begin BTDC but does not
`require that the addition of fuel end in the BTDC range. See PO Resp. 13–
`14. Petitioner, on the other hand, argues that the “maintained” language
`requires that all fuel be injected at BTDC. Pet. 5; Reply 3. As we did in the
`Decision on Institution, we, for purposes of this Final Decision, agree with
`the parties that claim 1 requires that the start of the injection3 of fuel begins
`at BTDC. In construing this phrase, we need not and do not reach
`Petitioner’s argument that the claims require all fuel to be injected BTDC.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`3 We, like the parties, assume for purposes of this decision that fuel
`introduction in the claimed invention involves fuel injection. See, e.g.,
`Pet. 2; PO Resp. 2; but see Reply 4 n.1 (Petitioner clarifying that it does not
`“concede that ‘introduction of fuel’ necessarily implies, or is limited to, a
`particular type of fuel injection system.”). We do not reach the issue of
`whether the claimed “introduction of fuel” is limited to fuel injection.
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`1999). Whether injection of some fuel must occur ATDC is discussed
`further below, with respect to the construction of “while said ignition is so
`retarded, increasing the fuelling rate.”
`2. fuelling rate
`In the Decision on Institution, we preliminarily construed “fuelling
`
`rate” as the quantity of fuel injected in a cylinder during a single cycle. Dec.
`on Inst. 9–10; see Ex. 1001, col. 2, ll. 3–4 (“the fuelling rate (measured in
`mg/cylinder/cycle)”). The parties agree that this is the proper construction
`of that phrase. PO Resp. 13; Pet. 4–5 (“this phrase should be construed to
`mean ‘the amount of fuel introduced into a cylinder during a combustion
`cycle’”); Tr. 31:12–18. Accordingly, we adopt that construction in this Final
`Decision.
`3. while said ignition is so retarded, increasing the fuelling rate
`The dispositive issue in this case is the proper construction of the
`
`limitation of claim 1 pertaining to when “increasing the fuelling rate”
`occurs. That limitation recites:
`[W]hile said ignition is so retarded, increasing the fuelling rate
`of said at least one cylinder to a level higher than that required
`when the engine is operating normally[.]
`Ex. 1001, col. 6, ll. 11–15. In the Decision on Institution, we preliminarily
`construed this phrase as meaning “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.” Dec. on Inst. 10. Petitioner agrees with our
`preliminary construction (Reply 14), and Patent Owner contends that this
`phrase instead should be construed to require “the quantity of fuel injected
`into the cylinder during a given cycle must increase ATDC . . . and further,
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`IPR2015-01259
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`that the quantity of fuel injected into the cylinder during a given cycle must
`be greater than the quantity of fuel injected into the cylinder during a cycle
`of normal operation” (PO Resp. 19). We now revisit our preliminary
`construction in light of the fully developed record and after considering all
`the arguments of the parties.
`Claim Language
`The phrase “so retarded” in this limitation refers back to the first step
`
`of the method, which recites “retarding the ignition . . . to after top dead
`centre (ATDC).” Accordingly, claim 1 requires increasing the fuelling
`rate—while the ignition is retarded to ATDC—to a level higher than that
`when operating normally. There is no dispute that “increasing the fuelling
`rate . . . to a level higher than that required when the engine is operating
`normally” means that the total quantity of fuel injected into a cylinder during
`a single cycle is greater than the total quantity added during normal
`operation. PO Resp. 19; see Reply 14; see supra Section II(B)(2)
`(construing “fuelling rate”).
`The parties’ dispute relates to timing of the end of the fuel injection
`
`and specifically whether the claims require that at least some fuel be added
`to the pertinent cylinder while the crankshaft is in a position ATDC. As
`discussed above, the parties do not dispute that the start of fuel injection
`must occur BTDC. See supra Section II(B)(1) (construing “the timing of the
`introduction of fuel . . . maintained at . . . BTDC”).
`
`As mentioned above, Petitioner argues that the claims require all fuel
`to be introduced BTDC, thereby precluding any fuel from being added
`ATDC. See Pet. 5–6; Reply 3. Patent Owner argues that the pertinent claim
`phrase means “that there is at least some fuel injection ATDC to increase the
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`total quantity of fuel injected during the combustion cycle.” PO Resp. 29;
`see also id. at 19 (arguing that the “phrase should be construed to require
`that the quantity of fuel injected into the cylinder during a given cycle must
`increase ATDC”). In other words, Patent Owner “maintains that the overall
`timing requirements of claim 1 provide that fuel injection begin BTDC and
`end ATDC.” Id. at 20. As to when the step of “increasing the fuelling rate”
`occurs, Patent Owner argues that the claim phrase “retarding the ignition . . .
`to after top dead centre (ATDC)” defines “ATDC [as] the time period under
`which ignition is considered to be ‘so retarded.’” PO Resp. 23. Thus, Patent
`Owner impliedly argues that a particular engine cylinder is in a “so retarded”
`ignition state only during the portion of a cycle when the crankangle is in the
`ATDC range. See id. at 23–24; see also id. at 27–28 (Patent Owner referring
`to “‘retarded ignition’ state” and “‘non-retarded ignition’ state”).
`
`Petitioner replies that “[n]othing in the claim language or specification
`justifies [Patent Owner] Orbital’s attempt to require that the fuel injection
`end ATDC,” and agrees with the Board’s preliminary construction of the
`pertinent phrase. Reply 13, 14. Petitioner argues that “this phrase relates to
`the amount of fuel being introduced into the cylinder in combustion cycles
`in which ignition is retarded to ATDC, it does not specify the particular time
`during the combustion cycle in which fuel must be injected.” Id. at 14.
`
`We do not find Patent Owner’s arguments persuasive. As Petitioner
`notes (Reply 16), in claim 1, the fuelling rate of at least one cylinder during
`the period “while said ignition is so retarded” is compared to the fuelling
`rate during the period “when the engine is operating normally,” a phrase
`appearing later in the same limitation. This suggests that the retarded
`ignition state, like the operating normally state, is a condition of the engine’s
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`pertinent cylinder, not a period within a single cycle, e.g., ATDC. See
`Ex. 1001, col. 3, ll. 22–33 (distinguishing “cylinder(s) operating under
`ignition retard/high fuelling rate conditions” with other cylinder(s) operating
`under “normal conditions”). In other words, a particular cylinder during a
`given cycle is operating either normally or is “so retarded,” according to the
`claimed method. Patent Owner offers no persuasive argument or evidence
`that one of ordinary skill in the art would understand the state of being
`ignition-retarded applies to only the portion of a cycle occurring ATDC, or
`would understand the claim to require a cylinder, during the same cycle, to
`be in both a normal operating state (in the BTDC range) and in an
`ignition-retarded state (in the ATDC range). Cf. Tr. 32:1–23 (counsel for
`Patent Owner confirming that, before the start of a cycle, the status of being
`ignition-retarded or operating normally is known).
`
`Patent Owner argues that the Board’s preliminary construction renders
`redundant and superfluous the phrase “while said ignition is so retarded.”
`PO Resp. 27–29. Patent Owner reasons that the phrase “when the engine is
`operating normally” already contrasts the fueling rate of the “‘retarded
`ignition’ state” with the normally operating (“non-retarded ignition”) state
`thereby rendering redundant and superfluous the phrase “while said ignition
`is so retarded” if we do not adopt Patent Owner’s proposed construction. Id.
`We do not find this argument persuasive. That phrase does not, as Patent
`Owner argues, limit the timing of the “increasing the fuelling rate” step to a
`period that is a subset of a given cycle, e.g., ATDC. Rather, the “while said
`ignition is so retarded” phrase requires the “increasing the fuelling rate” step
`to be performed at the same time as, i.e., “while,” the ignition is retarded
`pursuant to the “retarding the ignition” step, i.e., in an ignition-retarding
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`condition or state. This is confirmed by the specification, which discusses
`performing the first two steps of the claim at the same time, explaining that,
`upon attainment of the desired exhaust temperature, “the engine
`management system may then cease to effect the ignition retard and high
`fuelling rate conditions and return the cylinder to normal ignition timing and
`fuelling rates.” Ex. 1001, col. 5, ll. 24–29. Were the “while said ignition is
`so retarded” absent from the claim, consistent with Patent Owner’s
`argument, the method would be practiced in a situation where the ignition
`was retarded then returned to normal, and thereafter the fueling rate
`increased relative to that of the normal operating conditions. By contrast,
`requiring the increasing of the fuelling rate to occur “while said ignition is so
`retarded” serves the claimed method’s purpose of increasing downstream
`gas temperatures. See Ex. 1012, 84 (Applicant, during prosecution,
`attempting to distinguish Morikawa by arguing that the reference “contains
`no disclosure of increasing the fuelling rate while the ignition is retarded for
`the purpose of assisting in increasing the exhaust gas temperature, as in the
`present invention”); id. at 85 (similarly attempting to distinguish two other
`references because they allegedly “lack disclosure which would have made
`it obvious to increase the fuelling rate while the ignition is retarded for the
`purpose of assisting in increasing the exhaust gas temperature”). The phrase
`“while said ignition is so retarded” is not redundant or superfluous under our
`preliminary construction.
`
`Patent Owner’s argument that “[t]he claimed method thus requires an
`action in which the quantity of fuel injected into the cylinder during a given
`cycle must increase after top dead center” (PO Resp. 29–30) is not
`commensurate with the language of the claim. The pertinent limitation calls
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`for “increasing the fuelling rate.” As the parties agree, “fuelling rate” refers
`to the total amount of fuel added to a cylinder in a single cycle. “Fuelling
`rate” does not refer to the cumulative amount of fuel in the cylinder at a
`particular point during a cycle, e.g., ATDC. See supra Section II(B)(2).
`Patent Owner, is, in effect, arguing that the claim language “while said
`ignition is so retarded, increasing the fuelling rate of said at least one
`cylinder” should be rewritten to read “while said ignition is so retarded,
`increasing the fuel in said at least one cylinder.” We recognize that adding
`fuel to a cylinder at any point during a cycle (including while BTDC and
`ATDC) will contribute to the overall quantity of fuel introduced during that
`cycle, but it does not follow necessarily that the adding of fuel during a cycle
`results in a fuelling rate increase relative to that of normal operation. For
`example,4 where the normal fuelling rate is 3 mg/cylinder/cycle, a total of 3
`milligrams of fuel will be introduced over the course of one cycle, and
`adding some of the fuel in the ATDC range would not result in an increase
`of that fuelling rate. Similarly, where the increased fuelling rate is 18
`mg/cylinder/cycle, injecting all 18 milligrams of the fuel in the BTDC range
`would still result in the engine operating with an increased fuelling rate, as
`compared to the normal fuelling rate of 3 mg. Patent Owner’s
`acknowledgement (Tr. 37:16–38:11) that the fuelling rate is established prior
`to the start of a cycle further highlights the flaw in Patent Owner’s argument
`that the claim should be read to require an increase in that rate during the
`cycle.
`
`
`4 The fuelling rate values in this example are those of an embodiment of the
`invention disclosed in the specification. See Ex. 1001, col. 5, ll. 47–57.
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`
`The Specification
`In the Patent Owner Response, Patent Owner points to a particular
`
`portion of the specification as purportedly supporting its proposed claim
`construction (PO Resp. 16, 31–32) and argues that “the ‘365 Patent
`unmistakably describes an embodiment in which fuel is injected ATDC” (id.
`at 16). Specifically, Patent Owner points to the specification’s statement
`that “[i]t is however also envisaged that the fuel be introduced to the
`cylinder after top dead centre (ATDC) under certain conditions or
`situations.” Id. (quoting Ex. 1001, col. 2, ll. 13–15) (emphasis added); id.
`at 32. However, as Petitioner notes (Reply 8, 19) and Patent Owner admits
`(Tr. 41:5–42:21; see PO Resp. 38–39), this is an unclaimed embodiment—
`or, in Patent Owner’s terms (Tr. 42:10–12), “a disclaimed embodiment”—as
`it is excluded by the explicit language of claim 1, which requires that the
`timing of the introduction of fuel be maintained at BTDC.5 Patent Owner
`does not direct our attention to the disclosure in the specification of any
`other embodiment where fuel is added ATDC. Because the only disclosure
`of fuel injection ATDC is admittedly not covered by the claims, the
`specification not only fails to support Patent Owner’s proposed construction
`but also further suggests that Patent Owner’s proposed construction is
`incorrect. Patent Owner does not offer any persuasive argument that the
`Board’s preliminary construction is inconsistent with the specification’s
`description of the claimed invention.
`
`
`5 As discussed below, the fuel introduction timing limitation was added by
`amendment during prosecution to overcome the Morikawa reference. See
`also Tr. 42:8–21; PO Resp. 38–39.
`
`16
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`The specification refers to “ignition retard” and “high fuelling rate” as
`
`“conditions” distinct from normal conditions or normal settings. For
`example, the specification states:
`
`When the appropriate sensor or sensors detect that the
`engine parameter, for example the exhaust system temperature,
`is again above the acceptable value, the engine management
`system may then cease to effect the ignition retard and high
`fuelling rate conditions and return the cylinder to normal ignition
`timing and fuelling rates.
`Ex. 1001, col. 5, ll. 24–29 (emphasis added); see also id. at col. 3, ll. 26–27
`(“the cylinder(s) operating under ignition retard/high fuelling rate
`conditions”); id. at col. 4, ll. 17–18 (“maintaining the retarded ignition and
`high fuelling rate conditions for a ‘light-off’ period only”); id. at col. 5,
`ll. 58–65 (distinguishing cylinders running under “normal settings” with
`those operating with retarded ignition and increased fuelling rate). These are
`conditions that may be enabled. Id. at col. 5, ll. 50–54 (distinguishing fuel-
`per-cycle at normal idle from that “when retarded ignition and a high
`fuelling rate is enabled in accordance with the method of the present
`invention”).
`
`The phrase “while said ignition is so retarded” is not, as Patent Owner
`suggests, limited to the period of time when the crankangle position during a
`given cycle is ATDC. The engine is in a period “while said ignition is so
`retarded [to ATDC]” at all crankangle positions when the retarded-ignition
`condition is enabled, including those times during the cycle when the
`crankangle is BTDC. Thus, when the cylinder is operated in a condition
`where ignition occurs at a retarded angle that is ATDC and where all fuel is
`injected before the crankangle reaches top dead center, it still would be true
`that the fuel was injected while the ignition was “so retarded.”
`
`17
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`IPR2015-01259
`Patent 5,655,365
`
`
`The Prosecution History
`We agree with Petitioner’s argument (Reply 19) that the prosecution
`
`history does not support Patent Owner’s argument that claim 1 requires fuel
`injection to end ATDC. At various stages of the prosecution, each of the
`three limitations of the issued claim 1 were in separate claims, which were
`eventually combined into one independent claim to gain allowance.
`Initially, the sole independent claim 1 recited merely the ignition retarding
`step, while dependent claim 2 called for increasing fuelling rate “while said
`ignition is so retarded.” Ex. 1012, 15. The Examiner rejected the claims as,
`inter alia, anticipated by the Morikawa reference. Id. at 74. Applicant
`responded by amending independent claim 1 to also include the increasing
`fuelling rate limitation, and by adding new dependent claim 20 directed to
`the fuel introduction timing being maintained at BTDC. Id. at 83. Applicant
`attempted to distinguish amended claim 1 (having the first two limitations of
`the eventually issued claim 1) by arguing that the increased fueling rate of
`Morikawa’s method was performed for a purpose different than Applicant’s
`purpose of increasing the exhaust temperature. Id. at 84. The Examiner
`maintained the rejection of claim 1, finding that Morikawa’s method
`inherently raised the exhaust temperature. Id. at 91. The Examiner,
`however, indicated that claim 20—pertaining to maintaining the fuel
`introduction timing at BTDC—would be allowable if rewritten to include
`the limitations of claim 1. Id. at 93. Applicant amended claim 1 to include
`the limitation of dependent claim 20 (id. at 106, 108), and a Notice of
`Allowability issued (id. at 110).
`
`18
`
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`IPR2015-01259
`Patent 5,655,365
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`
`
`Figure 4 of Morikawa (Ex. 1015) is shown below.
`
`
`Morikawa’s Figure 4 is a time chart showing fuel injection timing (shaded
`bar) and ignition timing (arrow). Ex. 1015, col. 2, ll. 27–28. Morikawa’s
`Figure 4 shows normal engine operation (top) and retarded engine operation
`(bottom), with both injection and ignition timings being BTDC in normal
`engine operation, and both injection and ignition timings being ATDC in
`retarded operation. See id. at col. 4, ll. 18–27. Accordingly, Applicant
`overcame Morikawa by limiting the claim to a third option—where ignition
`timing was retarded to ATDC and “the timing of the introduction of fuel . . .
`being maintained at before top dead centre (BTDC).” See Ex. 1012, 83, 107;
`Reply 20 (Petitioner arguing that Applicant overcame Morikawa by claiming
`a condition where “the timing of introduction of fuel is left unchanged—i.e.,
`maintained at BTDC”). We find persuasive Petitioner’s argument (id.) that
`“at no point during prosecution did [Patent Owner] Orbital distinguish
`Morikawa based on the requirement that the quantity of fuel injected into the
`cylinder during a given cycle must increase, and thus end, at ATDC.”
`
`19
`
`
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`IPR2015-01259
`Patent 5,655,365
`
`Patent Owner impliedly argues that the Examiner’s stated conclusion
`
`regarding art of record not relied upon in the Final Office Action, coupled
`with the Examiner’s failure to reject the claims as obvious over a
`hypothetical combination of references (Morikawa, Hunt, and Griese),
`supports Patent Owner’s proposed construction. PO Resp. 36–37 (citing
`Ex. 1012, 91, 93; Ex. 1006; Ex. 2016). Patent Owner, however, does not
`explain adequately and persuasively how that statement sheds light on the
`meaning of the disputed claim language. Further, to the extent the
`Examiner’s unexpressed understanding of the claim meaning is relevant for
`our purposes, we are not willing to engage in speculation as to what that
`understanding might have been or why the Examiner did not enter an
`obviousness rejection over Patent Owner’s currently proposed hypothetical
`prior art combination.
`
`Patent Owner also discusses amendments to claim 1 made during
`prosecution and compares various engine states through a document listing
`several “[c]onditions” (the “conditions document”). PO Resp. 33–39 (citing,
`inter alia, the conditions document, Ex. 2008). Patent Owner’s arguments
`are not persuasive as the analysis is circular in that it is premised on the
`correctness of
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