IPR2015-01370
`U.S. Patent No. 6,474,277
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FCA US LLC, Petitioner,
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`v.
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`JACOBS VEHICLE SYSTEMS, INC., Patent Owner.
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`Case IPR2015-01370
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`U.S. Patent No. 6,474,277
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO.
`6,474,277
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`92114439.6
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`U.S. Patent No. 6,474,277
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FCA US LLC, Petitioner,
`
`v.
`
`JACOBS VEHICLE SYSTEMS, INC., Patent Owner.
`
`Case IPR2015-01370
`
`U.S. Patent No. 6,474,277
`
`
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO.
`6,474,277
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`92114439.6
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`IPR2015-01370
`U.S. Patent No. 6,474,277
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`Introduction ........................................................................................... 1
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`The Petition for Inter Partes Review Should be Denied ........................ 1
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`III. The ‘277 Patent ..................................................................................... 2
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`a.
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`b.
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`c.
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`Relevant Teachings of the ‘277 Patent ......................................... 2
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`Claim 36 of the ‘277 Patent ......................................................... 5
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`The Prosecution History of the Claim 36 ..................................... 5
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`V.
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`EP Patent Application No. 0317364 to Fujiyoshi ................................... 6
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`VI. Claim 36 of the ‘277 Patent Is Not Anticipated by Fujiyoshi ................. 9
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`a.
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`b.
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`Applicable Law on Anticipation .................................................. 9
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`Claim 36 Is Not Anticipated by Fujiyoshi .................................. 10
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`VII. Conclusion ........................................................................................... 12
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`IPR2015-01370
`U.S. Patent No. 6,474,277
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
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`In re Arkley,
`455 F.2d 586 (C.C.P.A. 1972) .................................................................. 10
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`Kloster Speedsteel AB v. Crucible, Inc.,
`793 F.2d 1565 (Fed. Cir. 1986) ................................................................... 9
`
`Metabolite Labs, Inc. v. Lab. Corp. of Am.,
`370 F.3d 1354 (Fed. Cir. 2004) ................................................................... 9
`
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989) ................................................................. 10
`
`In re Turlay,
`304 F.2d 893 (C.C.P.A. 1962) .................................................................. 10
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`Verdegaal Bros. v. Union Oil Co. of Cal.,
`814 F.2d 628 (Fed. Cir. 1987) ..................................................................... 9
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`Statutes & Regulations
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`37 C.F.R. § 42.22 ............................................................................................. 2
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`35 U.S.C. § 314(a) ........................................................................................... 1
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`Other Authorities
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`MPEP § 2131................................................................................................... 9
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`IPR2015-01370
`U.S. Patent No. 6,474,277
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`I.
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`Introduction
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`
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`Patent Owner Jacobs Vehicle Systems, Inc. (“JVS”) requests that the
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`Board deny the Petition requesting an inter partes review of U.S. Patent No.
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`6,474,277 (“the ‘277 Patent”) submitted by FCA US LLC (“Petitioner” or
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`“FCA”). FCA’s Petition fails to establish a reasonable likelihood of
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`prevailing on any claim under 35 U.S.C. § 314(a). FCA’s invalidity
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`arguments are fundamentally flawed and its Petition fails to comply with the
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`requirements for instituting an inter partes review. The Petition for Inter
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`Partes Review should be denied for the reasons set forth in detail below.
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`II. The Petition for Inter Partes Review Should be Denied
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`FCA asserts that Claim 36 of the ‘277 Patent is invalid for being
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`anticipated by European Patent Application No. 0317364 to Fujiyoshi et al.
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`(“Fujiyoshi”). FCA’s argument fails because Fujiyoshi, the only reference
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`relied on by FCA, does not teach each and every element of Claim 36.
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`FCA’s anticipation argument is flawed as it misstates the disclosure in
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`the prior art reference and glosses over critical details which show that the
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`prior art reference does not teach the limitations recited in Claim 36. The
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`‘277 Patent discloses a system for controlling the seating of an engine valve.
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`‘277 Patent at Abstract. Specifically, controlling of valve seating is achieved
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`via the draining of fluid from a hydraulic chamber. See, e.g., ‘277 Patent at
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`7:35-60; 9:60-35; 14:7-19; Figs. 3, 4, and 17. As discussed in further detail
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`below, Claim 36 recites that the hydraulic chamber is between a bore end wall
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`and an “end” of a piston proximate to the bore end wall. See id. What FCA
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`alleges to be a hydraulic chamber in Fujiyoshi, moreover, extends well
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`beyond the “end” of the piston that is “proximate to the bore end wall”, and
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`extends into a substantial cavity inside of the piston, well beyond the “end” of
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`the piston “proximate to the bore end wall”. This is amply clear from the
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`specification and drawings of Fujiyoshi.
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`FCA’s Petition is also flawed as it fails to provide a “detailed
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`explanation of … the governing laws, rules, and precedent” as required by
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`37 C.F.R. § 42.22(a)(2). The Petition lacks any explanation of the governing
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`law on anticipation and the corresponding legal standards that FCA proposes
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`the Board to use to evaluate its grounds, therefore it is defective.
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`For purposes of this response, JVS does not believe that any claim
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`construction is needed, and that the terms at issue can be given their ordinary
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`meaning.
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`III. The ‘277 Patent
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`a. Relevant Teachings of the ‘277 Patent
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`The ‘277 Patent is directed to a system for controlling valve seating
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`velocity. ‘277 Patent at 1:15-16. The claimed engine valve seating system
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`comprises a piston adapted to be displaced in response to the filling and
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`draining of hydraulic fluid from an hydraulic chamber in communication with
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`the piston. Id. at 6:66-7:2. Figure 17, shown below as originally annotated in
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`red by FCA in its Petition with additional annotations by Respondent in blue,
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`illustrates that the lower boundary of hydraulic chamber 870 is the annularly
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`shaped “end” surface of the outer tappet (i.e., piston) bore that is proximate
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`to, and faces the “bore end wall”:
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`Figure 17 of the ‘277 Patent (Annotated)
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`The hydraulic chamber (illustrated in yellow above), is thus between the end
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`wall of the bore, and the “end” of the outer tappet.
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`The specification of the ‘277 Patent describes that “[d]uring engine
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`valve opening, both the inner tappet 810 and the outer tappet 820 may move
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`downward following the engine valve. ‘277 Patent at 13:65-14:1. During
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`this time the valve seating plenum 870 may be filled with hydraulic fluid
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`through the check valve 840 and the orifice 850. The flow through the check
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`valve 840 may be required to prevent cavitation in the valve seating plenum
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`870 because the orifice 850 is designed to be partially occluded at this point.
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`Id. at 14:1-6. As the engine valve closes (i.e., element 600 moves upward),
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`the check valve 840 closes and hydraulic fluid is forced through the partially
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`occluded orifice 850 from the valve catch plenum 870 back to the low
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`pressure reservoir 880. Id. at 14:7-11. The partially occluded orifice 850,
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`formed by the upper edge of the outer tappet 820 and the hole in the side wall
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`of the plenum 870, is designed to progressively restrict the flow of hydraulic
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`fluid from the plenum 870 as the engine valve approaches its seat. Id. at
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`14:11-15.
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`The ‘277 Patent further teaches that the system 100 shown in Figure 17
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`may be used to provide variable valve actuation (or VVA). Id. at 14:20-21.
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`The specification explains that in a VVA embodiment, the inner tappet 810 is
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`displaced by a valve train element such as a cam, and the outer tappet 820
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`follows the engine valve/contact stem 600. Id. at 14:21-24. Variable valve
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`timing may be achieved by opening the trigger valve 890, which permits the
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`flow of oil from inter-tappet plenum 860. Id. at 25-27.
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`b. Claim 36 of the ‘277 Patent
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`The ‘277 Patent contains 43 claims of which claims 1, 15, 22, 23, 24,
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`25, 32, 34, 36, and 37 are independent claims. The challenged claim, Claim
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`36, which relates to the embodiment disclosed in Figure 17 of the ‘277 Patent
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`as follows:
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`An engine valve seating system having an outer tappet
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`adapted to be bi-directionally directionally displaced in
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`response to the filling and draining of hydraulic fluid
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`from an hydraulic chamber in communication with said
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`outer tappet, said system comprising:
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`a housing having a bore formed therein for receipt of the
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`outer tappet, said bore having an end wall;
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`an outer tappet disposed in the bore, said outer tappet
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`being adapted to contact a valve train element, and
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`having an end proximate to the bore end wall;
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`a [sic] hydraulic chamber formed between the bore end
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`wall and the end of the outer tappet proximate to the bore
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`end wall;
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`a hydraulic fill and drain passage communicating with
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`the hydraulic chamber, said passage being adapted to be
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`selectively occluded by displacement of the outer tappet
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`in the bore.
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`‘277 Patent at 19:39-20:14.
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`c. The Prosecution History of the Claim 36
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`The ‘277 Patent issued on November 5, 2002 from U.S. Patent
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`IPR2015-01370
`U.S. Patent No. 6,474,277
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`Application Serial No. 09/663,415 (“the ‘415 Application”) filed on
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`September 15, 2000, which claims priority to U.S. Provisional Application
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`No. 60/154,035 filed on September 16, 1999, and U.S. Provisional
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`Application No. 60/154,472 filed on September 17, 1999. The ‘277 Patent
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`names Richard Vanderpoel and John A. Schwoerer as the inventors.
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`Claim 36, as filed, was added in the ‘415 Application on March 20,
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`2002 as a new independent claim (claim 41) in a response to an Office Action
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`from the PTO dated December 19, 2001. The PTO allowed the newly added
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`independent claim as written in a notice mailed on April 8, 2002.
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`IV. EP Patent Application No. 0317364 to Fujiyoshi
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`Fujiyoshi teaches a valve operating system for an internal combustion
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`engine where a valve driving piston is slidably received in a cylinder body and
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`the piston is operatively connected on one end to an engine valve spring-
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`biased in a closing direction. Ex. 1003 at 2:4-6. A damper chamber 39 is
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`disclosed for controlling the velocity of the piston. Id. at 2:21-29. Figures 4
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`and 7, which are longitudinal sectional views of two embodiments of the
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`invention disclosed in Fujiyoshi, illustrate the damper chamber 39. Below are
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`annotated portions of Figures 4 and 7 from Fujiyoshi.
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`Annotated Lower Portion of Figure 4 of Fujiyoshi
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`Annotated Lower Portion of Figure 7 of Fujiyoshi
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`As shown in both Figures 4 and 7, partition wall 32 (in green) in the
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`cylinder body 12 is provided with a check valve 60 (in red) which permits the
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`flow of working oil from the working oil chamber 40 into damper chamber
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`39. Fujiyoshi at 5:1-2. Check valve 60 comprises a valve bore 62 made in the
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`partition wall 32 between the working oil chamber 40 and damper chamber
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`39, a valve ball 63 (in red) capable of closing the valve bore 62 from the side
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`of the damper chamber 39, and a hat-like retainer 64 (in red) fixed to the side
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`of the partition wall 32 closer to the damper chamber 39 to retain valve ball 63
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`for opening and closing operation. Id. at 5:6-9. The retainer 64 is clamped
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`between the partition wall 32 and a retaining ring 66 (in red) fitted over the
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`lower cylinder bore portion 33 of the cylinder body 12 and is provided with a
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`plurality of communication holes 67 permitting the communication between
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`the interior of the retainer 64 and the damper chamber 39. Id. at 5:11-14.
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`Valve-driving piston 13 (in yellow) is formed into a bottom cylinder and has a
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`thin-wall portion 13a (in yellow) provided in an upper portion thereof. Id. at
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`5:18-19. As illustrated, the damper chamber 39 extends into the hollow body
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`of the piston 13.
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`V. Claim 36 of the ‘277 Patent Is Not Anticipated by Fujiyoshi
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`a. Applicable Law on Anticipation
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`A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described in a single prior art
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`reference. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.
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`Cir. 1987); see Metabolite Labs, Inc. v. Lab. Corp. of Am., 370 F.3d 1354,
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`1367 (Fed. Cir. 2004) (“a prior art reference anticipates a patent claim if the
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`reference discloses, either expressly or inherently, all of the limitations of the
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`claim”) (citation omitted); MPEP § 2131. In other words, absence from the
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`reference of any claimed element negates anticipation. Kloster Speedsteel AB
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`v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).
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`Moreover, anticipation cannot be predicated on an ambiguous
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`U.S. Patent No. 6,474,277
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`reference. Rather, disclosures in a reference relied on to prove anticipation
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`must be so clear and explicit that those skilled in the art will have no difficulty
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`in ascertaining their meaning. In re Turlay, 304 F.2d 893, 899 (CCPA 1962).
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`“‘The identical invention must be shown in as complete detail as is contained
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`in the ... claim.’ Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed.
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`Cir. 1989) (emphasis added); see also In re Arkley, 455 F.2d 586, 587 (CCPA
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`1972) (holding that to anticipate a claimed invention, a reference must lead
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`one of ordinary skill in the art to a product which falls within the scope of the
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`claim “without any need for picking, choosing, and combining various
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`disclosures not directly related to each other by the teachings of the cited
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`reference.”).
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`b. Claim 36 Is Not Anticipated by Fujiyoshi
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`Fujiyoshi does not anticipate Claim 36 because it fails to disclose the
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`claimed element of “an hydraulic chamber formed between the bore end wall
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`and the end of the outer tappet proximate to the bore end wall.” ‘277 Patent
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`at 20:7-9 (emphasis added). This FCA has failed to show because Fujiyoshi
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`clearly teaches that damping chamber 39 extends into the hollow body of
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`piston 13, and thus is not “formed” between the bore end wall and the “end”
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`of “the outer tappet proximate to the bore end wall.”
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`Figure 12 of the ‘277 Patent, reproduced below at right, is a perspective
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`view of a valve-driving piston 13 showing the upper hollow body of piston
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`13. A portion of Fig. 13 is also presented below, illustrating that the cavity in
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`piston 13 has an upper portion of a larger diameter, and a lower portion of a
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`smaller diameter that appears to extend toward the lower end of piston 13.
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`They cooperate to form a continuous cavity in piston 13 having a “T”-shaped
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`cross section:
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`As is evident, the chamber 39 extends well down into the piston 13. The
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`below
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`illustrative graphic compares
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`the different structures of
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`the
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`embodiment of Fujiyoshi, at left, with Figure 17 of the ‘277 Patent, at right:
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`IPR2015-01370
`U.S. Patent No. 6,474,277
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`The extent of each hydraulic chamber is illustrated by cross-hatching. The
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`upper horizontal line crossing both embodiments represents the approximate
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`location of the bore end wall, while the lower horizontal line represents the
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`location of the “end” of “the outer tappet proximate to the bore end wall” –
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`the point beyond which the hydraulic chamber is not “formed” in the
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`embodiment of Claim 36. Since Fujiyoshi’s chamber extends well into the
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`outer tappet, it is “formed” beyond the “end” of “the outer tappet proximate to
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`the bore end wall”, and thus can not anticipate Claim 36. FCA’s anticipation
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`argument thus fails.
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`VI. Conclusion
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`For the reasons set forth above, FCA has failed to establish a
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`reasonable likelihood that it will prevail with respect to the one claim
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`challenged in the Petition, and the Board should deny the Petition for inter
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`Respectfully submitted,
`DAY PITNEY LLP
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`
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`By:/Andrew M. Riddles/
`Andrew M. Riddles
`(Registration No. 31,657)
`7 Times Square
`New York, NY 10036
`Telephone: (212)297-5800
`Facsimile: (203)202-3896
`
`Brian R. Pollack
`(Registration No.: 47,001)
`Cecilia Zhang Stiber
`(Registration No. 57,818)
`One Canterbury Green
`Stamford, CT 06901
`Telephone: (203)977-7300
`Facsimile: (203)977-7301
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`IPR2015-01370
`U.S. Patent No. 6,474,277
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`partes review on all grounds.
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`Dated: September 18, 2015
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`IPR2015-01370
`U.S. Patent No. 6,474,277
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §42.6(e)(4)(i) et seq., the undersigned certifies that
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`a completed and entire copy of the above notice was served on the following
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`counsel of record via UPS Overnight on September 18, 2015.
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`By:/Andrew M. Riddles/
`Andrew M. Riddles
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`Frank C. Cimino
`Venable LLP
`575 7th Street, N.W.
`Washington, DC 20004
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`Kelley Drye & Warren LLP
`3050 K Street, N.W.
`Suite 400
`Washington, DC 20007
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`92114439.6
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