Trials@uspto.gov Paper 9
`571-272-7822 Entered: December 30, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2015-01259
`Patent 5,655,365
`____________
`
`
`
`Before KEN B. BARRETT, HYUN J. JUNG, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822 Entered: December 30, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2015-01259
`Patent 5,655,365
`____________
`
`
`
`Before KEN B. BARRETT, HYUN J. JUNG, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`
`I.
`
`INTRODUCTION
`
`Robert Bosch LLC and Daimler AG (collectively “Petitioner”) filed a
`
`Petition requesting inter partes review of U.S. Patent No. 5,655,365 (“the
`’365 patent”). Paper 3 (“Pet.”). The Petition challenges the patentability of
`claims 1, 2, 5, 9, 10, 12–14, and 18 of the ’365 patent on the grounds of
`obviousness under 35 U.S.C. § 103. Orbital Australia Pty Ltd, the owner of
`the ’365 patent, filed a Preliminary Response to the Petition. Paper 8
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a).
`
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to patentability of claims for which inter partes review is
`instituted. Any final decision would be based on the record as fully
`developed during trial.
`
`After considering the information presented in the Petition and Patent
`Owner’s Preliminary Response, we are persuaded there is a reasonable
`likelihood Petitioner would prevail with respect to at least one of the claims
`challenged in the Petition. We institute an inter partes review of all of the
`challenged claims, claims 1, 2, 5, 9, 10, 12–14, and 18, of the ’365 patent.
`
`A. Related Proceedings
`Both parties identify, as matters matter 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
`
`2
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`IPR2015-01258. Pet. 58–59; Paper 6. Additionally, we note that Petitioner
`filed a Petition in IPR2016-00083 challenging claims of the ’365 patent.
`
`B. The’365 Patent
`The ’365 patent pertains to “a method of operating an internal
`
`combustion engine in order to produce high exhaust gas temperatures” in the
`context of catalytic treatment of exhaust gases to reduce contaminants.
`Ex. 1001, col. 1, ll. 4–9. The patent explains that the catalyst, to effectively
`reduce contamination levels, must attain a minimum operating temperature,
`the “light-off” temperature. Id., col. 1, ll. 10–17. The patent is directed to a
`method to reduce the time required to raise the catalyst to a light-off
`temperature condition, for example, upon engine start-up after a period of
`non-operation, and to maintain that condition. Id., col. 1, ll. 19–25, 49–55.
`
`The ’365 patent describes a method where the ignition of the air/fuel
`mixture within at least one engine cylinder is retarded to after top dead
`centre1 (ATDC) and, while the ignition is retarded, increasing the fueling
`rate to that cylinder to a level higher than required when operating normally.
`Id., col. 1, ll. 56–64. The Specification, explaining why there is a need to
`increase the fueling rate during the disclosed method of operation, states:
`[A]t startup the engine typically will operate at a relatively low
`load and speed, such as is termed “engine idle”, and therefore
`the amount of fuel being delivered to the engine is
`comparatively small and hence, only a relatively small amount
`of heat is available for raising the temperature of the exhaust
`gases and hence the temperature of the catalytic material to its
`“light-off”' temperature.
`
`1 The ’365 patent uses Australian spelling for certain words such as “centre”
`and “fuelling.” We use in this decision both the Australian and American
`spellings interchangeably.
`
`3
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`Id., col. 1, ll. 26–32. The timing of the introduction of fuel is maintained at
`before top dead centre (BTDC). Id., col. 6, ll. 16–18 (claim 1).
`
`Figures 1 and 2 of the ’365 patent are reproduced below:
`
`
`
`
`
`Figures 1 and 2 depict graphs showing the cylinder pressure-crankangle
`characteristics for a typical direct injected two-stroke internal combustion
`engine and for such an engine operated according to the method of the ’365
`patent, respectively. Id., col. 2, ll. 46–52.
`
`4
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`
`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”)
`US 3,572,298 Mar. 23, 1971 Ex. 1004
`Onishi
`US 4,276,745
`Jul. 7, 1981
`Ex. 1005
`Takada et al.
`US 3,799,134 Mar. 26, 1974 Ex. 1006
`Griese
`W E. Bernhardt and E. Hoffman, Methods for Fast
`Ex. 1007
`Catalytic System Warm-Up During Vehicle Cold Starts,
`Society of Automotive Engineers (1972) (“Bernhardt”)
`Eichler et al.
`GB 1 447 791
`Sept. 2, 1976 Ex. 1010
`(“Eichler ’791”)
`
`5
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`Petitioner relies also on the Declaration of Dr. Ron Matthews, dated
`
`June 15, 2015, (Ex. 1008) in support of Petitioner’s arguments.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`Claims
`Basis
`Reference[s]
`§ 103(a) 1, 2, 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
`Ahern and Bernhardt
`Ahern, Bernhardt, and Griese
`
`§ 103(a) 1, 2, 5, 9, 10, 12, 13, and 18
`§ 103(a) 14
`
`II. ANALYSIS
`
`A. Claim Construction
`Both parties maintain that the ’365 patent has expired. Prelim.
`
`Resp. 3; see Pet. 3. “[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
`
`6
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`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).
`
`On this record and for purposes of this Decision, we determine that
`only the claim phrases addressed below require express construction.
`“while said ignition is so retarded” and
`“the timing of the introduction of fuel . . . maintained at . . .BTDC”
`Claim 1 calls for: 1) retarding the ignition to ATDC; 2) increasing the
`
`fueling rate, while the “ignition is so retarded,” to a level higher than that
`during normal operation; and 3) maintaining fuel introduction timing at
`BTDC.
`
`As to the fuel-introduction timing limitation, the parties agree that the
`claim requires at least the initiation of fuel addition to the cylinder begin
`before top dead center. Prelim. Resp. 10; see Pet. 5. Specifically, Patent
`Owner argues that the term “introduction” refers to the start of injection and,
`thus, the limitation requires merely that fuel injection begin BTDC but does
`not require that the addition of fuel end in the BTDC range. See Prelim.
`Resp. 12, 14–15. Petitioner, on the other hand, argues that the “maintained”
`language requires that all fuel be injected at BTDC. Pet. 5. For purposes of
`this decision, we agree with the parties that claim 1 requires the start of the
`injection2 of fuel begins at BTDC. We need not and do not reach at this time
`the issue of whether the claims require all fuel to be injected BTDC.
`
`
`2 We, like the parties, assume for purposes of this decision that fuel
`introduction in the claimed invention involves fuel injection. See Pet. 2;
`Prelim. Resp. 6.
`
`7
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`As to the limitation regarding increasing the fueling rate, Patent
`
`Owner argues that:
`[w]hen viewed as a whole, claim 1 not only requires that fuel
`injection during a combustion cycle starts BTDC (as both
`parties agree), but also requires an active increase in the
`fuelling rate while the ignition of a gas/fuel mixture within at
`least one cylinder of the engine is retarded to after top dead
`centre (ATDC).
`Prelim. Resp. 14. Thus, argues Patent Owner, claim 1 has a “clear
`requirement that fuel is injected ATDC.” Id. at 15; see also id. at 27 (“claim
`1 also requires that fuel injection occurs after TDC”). For the following
`reasons, we are not persuaded of the correctness of Patent Owner’s proposed
`construction.
`
`We recognize that the timing of ignition and fuel introduction of the
`claimed invention are expressed in terms of whether they occur at a
`crankangle before or after top dead center. However, the timing limitations
`of claim 1, in general, refer to engine operating conditions—the operating
`conditions of the claimed invention and normal operating conditions—not
`with reference to the crankangle during a given cycle as implied by Patent
`Owner’s proposed constructions.
`
`The Specification refers to “ignition retard” and “high fuelling rate” as
`“conditions” and as distinct from normal conditions. For example, the
`Specification states:
`When the appropriate sensor or sensors detect that the engine
`parameter, for example the exhaust system temperature, is again
`above the acceptable value, the engine management system
`may then cease to effect the ignition retard and high fuelling
`rate conditions and return the cylinder to normal ignition timing
`and fuelling rates.
`
`8
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`Ex. 1001, col. 5, ll. 24–29 (emphasis added); see also id., col. 3, ll. 26–27
`(“the cylinder(s) operating under ignition retard/high fuelling rate
`conditions”); id., col. 4, ll. 17–18 (“maintaining the retarded ignition and
`high fuelling rate conditions for a ‘light-off’ period only”). These are
`conditions that may be enabled. Id., col. 5, ll. 50–54 (distinguishing fuel-
`per-cycle at normal idle from “when retarded ignition and a high fuelling
`rate is enabled in accordance with the method of the present invention”).
`
`The phrase “while said ignition is so retarded” is not, as Patent Owner
`suggests, limited to the period of time when the crankangle position during a
`given cycle is after top dead center. The engine is in a period “while said
`ignition is so retarded [to ATDC]” at all crankangle positions when the
`retarded-ignition condition is enabled, including those times during the cycle
`when the crankangle is before top dead center. Thus, when the engine is
`operated in a condition where ignition is at a retarded angle after top dead
`center and all fuel is injected before the crankangle reaches top dead center,
`it still would be true that the fuel was injected while the ignition was “so
`retarded.”
`
`Patent Owner impliedly argues that fueling rate refers to quantity per
`unit-time (i.e. milligrams per second) and that that rate must be increased
`during each cycle. See Prelim. Resp. 29. However, claim 1 refers to
`“fuelling rate” as the quantity of fuel injected in a cylinder during a single
`cycle not the change in the quantity injected within a given cycle. See
`Ex. 1001, col. 2, ll. 3–4 (“the fuelling rate (measured in
`mg/cylinder/cycle)”). The language of independent claim 1 defines the
`fueling rate level relative to that “when the engine is operating normally.”
`Ex. 1001, col. 6, ll. 11–14.
`
`9
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`Accordingly, for purposes of this decision, the phrase “while said
`
`ignition is so retarded, increasing the fuelling rate of said at least one
`cylinder to a level higher than that required when the engine is operating
`normally” means increasing the quantity of fuel delivered to a cylinder,
`while the cylinder is in an ignition-retarded condition, to a level higher than
`the quantity of fuel that would be delivered in a normal operating condition.
`
`B. Obviousness over Hitomi and Onishi
`Petitioner argues that claims 1, 2, 9, 10, 13, 14, and 18 would have
`
`been obvious over Hitomi and Onishi. Pet. 11–23. We are persuaded that
`Petitioner has demonstrated a reasonable likelihood of prevailing at trial on
`its challenge as to claims 1, 9, 10, 13, 14, and 18, but not as to claim 2.
`
`Hitomi discloses an “exhaust control system for an internal
`combustion engine which promotes the activation of a catalytic device
`sufficiently to purify exhaust gases, even when the engine is operating at a
`low temperature.” Ex. 1002, col. 1, ll. 62–66. The parties agree that fuel is
`injected BTDC. Pet. 12; Prelim. Resp. 22 (Patent Owner characterizing
`Hitomi as disclosing that “injection of the mixture of air and fuel occurs
`before the top dead center position corresponding to the beginning of the
`power/combustion stroke.”). Hitomi discloses that:
`Ignition takes place at a time Tw, represented by a crank angle,
`before a top dead center position TDC when the engine has
`warmed up, and at a time Tc, also represented by a crank angle,
`after the top dead center position TDC when the engine has not
`yet warmed up.
`Ex. 1002, col. 11, ll. 6–11.
`When the engine temperature is still low, the control unit 50
`controls the idle speed control valve 29 so that it opens wide
`and increases a rate of fuel injection in order to compensate for
`
`10
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`
`increased work required of the engine for discharging exhaust
`gases together with closing the shutter valve 40.
`Id., col. 7, ll. 28–33.
`
`Petitioner acknowledges that Hitomi “does not explicitly disclose that
`all fuel is injected BTDC” or “all fuel within at least one cylinder during a
`combustion cycle at between 60° to 80° BTDC.” Pet. 12–13 (referring to
`claims 1 and 9). Petitioner turns to Onishi (Ex. 1004) for this feature and
`reasons that it would have been obvious to utilize the claimed fuel
`introduction range in Hitomi’s method. Id. at 13–16.
`Onishi is directed to a stratified charge engine3 with reduced noxious
`
`components in the engine emissions and where performance and durability
`in full load operation are improved. Ex. 1004, col. 1, ll. 15–21. Onishi
`explains that “the higher the air-fuel ratio the slower the combustion
`rate and the higher the exhaust temperature [and] [t]his tends to invite
`troubles in the exhaust valve system, increased unsmoothness of combustion
`process, engine roughness, and frequent occurrence of misfire, which in turn
`results in difficulty of starting and drop of acceleration.” Id., col. 2, ll. 44–
`51. Onishi discloses that “fuel injection and ignition may be controlled
`independently of each other to a considerable extent.” Id., col. 10, ll. 1–2.
`Onishi states:
`[W]hile the initiation angle of fuel injection is varied from 140
`deg. ahead of the top dead center to 80 deg. ahead of the same
`center, i.e., over a range of 60 deg. in terms of the crank angle,
`the ignition timing may be varied independently thereof and the
`ignition and operation are made possible without any
`
`3 A stratified charge engine is one where a relatively rich fuel mixture is
`maintained around the spark plug while a lean overall mixture is maintained
`in the cylinder. See Ex. 1004, col. 2, ll. 12–24.
`
`11
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`
`undesirable outcome, over a range from about 40 deg. ahead of
`the top dead center to a point past the said center.
`Id., col. 9, ll. 65–73. Onishi explains that “[a]mple allowance for ignition
`timing brings about a stable and practically useful stratified charge, and
`permits operation at a lean overall air-fuel ratio.” Id., col. 7, ll. 67–69.
`
`Patent Owner argues that Hitomi and Onishi fail to disclose “while
`said ignition is so retarded, increasing the fuelling rate of said at least one
`cylinder.” Prelim. Resp. 26–29. Petitioner relies on Hitomi for this feature.
`Pet. 18. Patent Owner’s argument is premised on its position that the
`claim 1 “requires that fuel injection occurs after TDC (i.e., ‘while said
`ignition is so retarded’).” Prelim. Resp. at 27. As discussed above, we have
`rejected that proposed claim construction, and therefore do not find
`persuasive Patent Owner’s argument regarding Hitomi’s disclosure. Patent
`Owner, in its Preliminary Response, does not otherwise dispute Petitioner’s
`contentions regarding this ground.
`
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail at trial in showing
`that the combination of Hitomi and Onishi renders obvious claims 1, 9, 10,
`12, 13, 14, and 18.
`
`Dependent claim 2 recites “[a] method according to claim 1 wherein
`the fuelling rate is greater than 50% of the fuelling rate at maximum load.”
`Ex. 1001, col. 6, ll. 19–20. The fueling rate during operation of the method
`of claim 1 is increased relative to the rate “required when the engine is
`operating normally.” Id., col. 6, ll. 11–14. Petitioner relies on Onishi for
`this feature. Pet. 16–17, 20–21 (claim chart), 21 n.5.
`
`12
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`We have reviewed the cited portion of Onishi (Ex. 1004, col. 11, ll. 1–
`
`12) and have considered Petitioner’s arguments and evidence. We
`determine that Petitioner has not explained adequately how the cited portion
`of Onishi discloses that any increase in fueling rate is relative to normal
`operations of Onishi’s engine or why the recited increase would have been
`obvious. Accordingly, Petitioner has not demonstrated a likelihood of
`proving Onishi renders obvious dependent claim 2.
`
`C. Obviousness over Hitomi, Onishi, and Eichler ’089
`Dependent claim 5 recites “the ignition is retarded up to about 30°
`
`ATDC.” Ex. 1001, col. 6, ll. 25–26. Petitioner maintains that Eichler ’089
`(Ex. 1003) teaches that feature and that the combination of the teachings of
`Hitomi, Onishi, and Eichler ’089 render obvious claim 5. Pet. 24–26.
`
`Eichler ’089 pertains to reducing noxious components in internal
`combustion engine emissions. Ex. 1003, col. 1, ll. 7–11. Eichler ’089
`discloses:
`After the engine has started, and while it is still cold and before
`it has warmed up, the ignition is delayed in addition to the
`normal delay to such an extent that combustion of fuel will
`persist during the exhaust stroke of the engine to accelerate the
`warm-up time of the exhaust system of the engine; this delay
`may be set in the range of from 10° to 25° after deadcenter of
`the piston during the power stroke.
`Id., Abstr.; see also id., col. 3, ll. 34–36 (“[t]he ignition timing is delayed to
`about 10° to 25° after the upper dead-center position of the piston in the
`cylinder.”).
`
`Patent Owner relies on its arguments concerning the underlying
`Hitomi and Onishi obviousness ground and does not challenge otherwise
`
`13
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`Petitioner’s contentions regarding this ground at this time. Prelim.
`Resp. 29–30.
`
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail at trial in showing
`that the combination of Hitomi, Onishi, and Eichler ’089 renders obvious
`claim 5.
`
`D. Obviousness over Hitomi, Onishi, and Takada
`Dependent claim 12 recites “additional air is introduced upstream of
`
`the catalytic treatment means.” Ex. 1001, col. 6, ll. 44–45. Petitioner
`maintains that Takada (Ex. 1005) teaches that feature and that the
`combination of the teachings of Hitomi, Onishi, and Takada render obvious
`claim 12. Pet. 26–27.
`
`Takada pertains to controlling exhaust gas from an internal
`combustion engine (Ex. 1005, col. 1, ll. 5–7) and discloses that “secondary
`air is supplied, depending on the idling signal and the water temperature
`signal, to the upstream side of the 3-way catalyst” (id., col. 3, ll. 29–31).
`
`Patent Owner relies on its arguments concerning the underlying
`Hitomi and Onishi obviousness ground and does not challenge otherwise
`Petitioner’s contentions regarding this ground at this time. Prelim.
`Resp. 29–30.
`
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail at trial in showing
`that the combination of Hitomi, Onishi, and Takada renders obvious
`claim 12.
`
`14
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`
`E. Obviousness over Griese, Eichler ’791, and Onishi
`Petitioner argues that claims 1, 2, 5, 9, 10, 13, 14, and 18 would have
`
`been obvious over Griese (Ex. 1006), Eichler ’791 (Ex. 1010), and Onishi
`(Ex. 1004). Pet. 27–39. We are persuaded that Petitioner has demonstrated
`a reasonable likelihood of prevailing at trial on its challenge as to these
`claims.
`
`Griese pertains to the operation of an engine to bring an exhaust gas
`cleaning catalyzator quickly to its operating temperature during a cold start
`of the engine via the burning of an abnormally high quantity of fuel-air
`mixture to generate a high enthalpy exhaust gas. Ex. 1006, col. 4, ll. 34–49.
`This is done by “the adjusting of the fuel supply and of the timing of a
`combustion engine during its idle run as a function of the temperature
`thereof, in order to attain the production of exhaust gases having high
`temperature.” Id., col. 1, ll. 8–11. Griese discloses that “[i]t is generally
`known that when the ignition delay of the air-fuel mixture of the combustion
`within the operating cylinder is increased, the temperature of the exhaust
`gases increases, however, the power delivered by the combustion engine will
`decrease.” Id., col. 1, ll. 59–64. When the ignition is delayed, it is
`“provide[d] for a maximum possible fuel supply during the idle run or cold
`start of the combustion engine.” Id., col. 2, ll. 13–19. Griese also teaches
`the use of a thermostat to control the system such that the heating method is
`used until the exhaust cleaning arrangement reaches the required
`temperature. Id., col. 5, ll. 30–34, 62–66.
`
`Petitioner acknowledges that Griese “does not explicitly disclose
`retarding ignition ‘up to 30 ATDC’” and turns to Eichler ’791 for this
`feature. Pet. 28. Eichler ’791 discloses that “[w]hen the exhaust gases of
`
`15
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`the internal combustion engine are passed through a thermal and/or catalytic
`reactor, . . . it is often desired to heat such a reactor quickly during the
`warming-up phase of the internal combustion engine and thereby cause it to
`operate.” Ex. 1010 at 3, l. 130–4, l.7. When the engine is cold, the spark
`may be retarded and an auxiliary air valve may be opened. Id. at 4, ll. 7–23.
`“The ignition processes are then triggered at a crankshaft angle of 20° to 25°
`A.T.D.C.” Id. at 4, ll. 110–112. Petitioner reasons that it would have been
`obvious to retard the ignition of Griese to the range taught by Eichler ’791.
`Pet. 28–29.
`
`Petitioner acknowledges that Griese also “does not explicitly disclose
`that all fuel is introduced BTDC.” Pet. 29. Petitioner turns to Onishi (Ex.
`1004, discussed above) for this feature and reasons that it would have been
`obvious to utilize the claimed fuel introduction range in Griese’s method.
`Id. at 29–30.
`
`Patent Owner again unpersuasively argues, based on a proposed claim
`construction that we have rejected, that the references fail to disclose “while
`said ignition is so retarded, increasing the fuelling rate of said at least one
`cylinder.” Prelim. Resp. 35–38.
`
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail at trial in showing
`that the combination of Griese, Eichler ’791, and Onishi renders obvious
`claims 1, 2, 5, 9, 10, 13, 14, and 18.
`
`F. Obviousness over Griese, Eichler ’791, Onishi, and Takada
`In a manner similar to the Hitomi-Onishi-Takada ground discussed
`
`above, Petitioner maintains that Takada (Ex. 1005) teaches the “additional
`
`16
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`air” feature of claim 12 and that the combination of the teachings of Griese,
`Eichler ’791, Onishi, and Takada render obvious claim 12. Pet. 39–40.
`
`Patent Owner relies on its arguments concerning the underlying
`Griese-Eichler ’791-Onishi obviousness ground and does not challenge
`otherwise Petitioner’s contentions regarding this ground at this time. Prelim.
`Resp. 39.
`
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail at trial in showing
`that the combination of Griese, Eichler ’791, Onishi, and Takada renders
`obvious claim 12.
`
`G. Remaining Challenges
`Petitioner also challenges claims 1, 2, 5, 9, 10, 12, 13, and 18 as
`
`obvious over Ahern and Bernhardt and claim 14 as obvious over Ahern,
`Bernhardt, and Griese. Pet. 40–57.
`
`In light of our determination, discussed above, that there is a
`reasonable likelihood that Petitioner would prevail in showing that claims 1,
`2, 5, 9, 10, 12–14, and 18 are unpatentable as obvious over combinations
`based on Hitomi and Onishi (Grounds A–C) and over the combinations
`based on Griese and Eichler ’791 (Grounds D and E), we exercise our
`discretion under 37 C.F.R. § 42.108(a) and decline to institute trial as to
`those same claims based on the remaining asserted grounds based on the
`combination of Ahern and Bernhardt (Grounds F and G).
`
`III. CONCLUSION
`
`We determine Petitioner has demonstrated there is a reasonable
`
`likelihood of establishing the unpatentability of claims 1, 2, 5, 9, 10, 12–14,
`
`17
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`and 18 of the ’365 patent. At this stage of the proceeding, the Board has not
`made a final determination as to the patentability of any challenged claims.
`
`IV. ORDER
`
`For the foregoing reasons, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`
`instituted as to claims 1, 2, 5, 9, 10, 12–14, and 18 of the ’365 Patent on the
`following grounds:
`
`Claims 1, 9, 10, 13, 14, and 18 under 35 U.S.C. § 103(a) as obvious
`over Hitomi and Onishi;
`
`Claim 5 under 35 U.S.C. § 103(a) as obvious over Hitomi, Onishi, and
`Eichler ’089;
`
`Claim 12 under 35 U.S.C. § 103(a) as obvious over Hitomi, Onishi,
`and Takada;
`
`Claims 1, 2, 5, 9, 10, 13, 14, and 18 under 35 U.S.C. § 103(a) as
`obvious over Griese, Eichler ’791, and Onishi; and
`
`Claim 12 under 35 U.S.C. § 103(a) as obvious over Griese,
`Eichler ’791, Onishi, and Takada;
`FURTHER ORDERED that inter partes review is commenced on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`
`FURTHER ORDERED that the trial is limited to the grounds of
`unpatentability listed above, and no other grounds of unpatentability are
`authorized for inter partes review.
`
`18
`
`
`
`
`
`IPR2015-01259
`Patent 5,655,365
`
`For PETITIONER:
`Lionel M. Lavenue
`David C. Reese
`Joshua L. Goldberg
`Aaron L. Parker
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Bosch-Orbital-IPR@finnegan.com
`
`
`Edward DeFranco
`Brett Watkins
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`MB_Orbital_IPR@quinnemanuel.com
`
`For PATENT OWNER:
`
`David Magee
`Andrew Schultz
`PEPPER HAMILTON LLP
`mageed@pepperlaw.com
`schultza@pepperlaw.com
`
`
`19
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
