Filed on behalf of: Robert Bosch LLC and Daimler AG
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Robert Bosch LLC and Daimler AG,
`Petitioner
`
`v.
`
`Orbital Engine Company Pty Limited,
`Patent Owner
`
`
`Patent No. 5,655,365
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`
`
`DECLARATION OF DR. RON MATTHEWS
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`Page 1 of 131
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`BOSCH-DAIMLER EXHIBIT 1006
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 5
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`GUIDING LEGAL PRINCIPLES .................................................................. 5
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`I.
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`II.
`
`A.
`
`
`B.
`
`
`C.
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`Person of Ordinary Skill in the Art ....................................................... 5
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`Anticipation Invalidity .......................................................................... 6
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`Obviousness Invalidity .......................................................................... 7
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`III. BACKGROUND AND EXPERIENCE .......................................................... 8
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`IV. MATERIALS REVIEWED .......................................................................... 11
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`V. OVERVIEW OF THE ‘365 PATENT .......................................................... 12
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`VI. CLAIM CONSTRUCTION .......................................................................... 16
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`VII. ANTICIPATION AND OBVIOUSNESS COMBINATIONS ..................... 21
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`A.
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`Bernhardt Discloses All Elements of Claims 1, 2, 5, 10, 12, 13,
`and 18 .................................................................................................. 21
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`Claim 1 ................................................................................................ 23
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`Claim 2 ................................................................................................ 28
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`Claim 5 ................................................................................................ 31
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`Claim 10 .............................................................................................. 32
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`Claim 12 .............................................................................................. 33
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`Claim 13 .............................................................................................. 35
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`Claim 18 .............................................................................................. 35
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`Obviousness of Claim 9 over Bernhardt and Onishi .......................... 36
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`Obviousness of Claim 14 over Bernhardt and Griese ........................ 41
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`ii
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`B.
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`C.
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`D. Obviousness of Claims 1, 2, 5, 10, 12-14, and 18 over
`Eichler ’791 and Bernhardt ................................................................. 44
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`Claim 1 ................................................................................................ 45
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`Claim 2 ................................................................................................ 50
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`Claim 5 ................................................................................................ 53
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`Claim 10 .............................................................................................. 54
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`Claim 12 .............................................................................................. 54
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`Claim 13 .............................................................................................. 55
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`Claim 14 .............................................................................................. 56
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`Claim 18 .............................................................................................. 56
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`E.
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`F.
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`Obviousness of Claim 9 over Eichler ’791, Bernhardt, and
`Onishi .................................................................................................. 57
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`Obviousness of Claim 12 over Onishi and Bernhardt ........................ 62
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`G. Obviousness of claims 1, 2, 5, 9, 10, 12, 13, and 18 over Ahern
`and Bernhardt ...................................................................................... 69
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`Claim 1 ................................................................................................ 75
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`Claim 2 ................................................................................................ 79
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`Claim 5 ................................................................................................ 82
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`Claim 9 ................................................................................................ 84
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`Claim 10 .............................................................................................. 85
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`Claim 12 .............................................................................................. 86
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`Claim 13 .............................................................................................. 87
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`Claim 18 .............................................................................................. 88
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`iii
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`H. Obviousness of claim 14 over Ahern, Bernhardt, and Griese ............ 89
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`VIII. SECONDARY CONSIDERATIONS OF OBVIOUSNESS ........................ 91
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`IX. EVIDENCE OF PUBLICATION OF THE BERNHARDT
`TECHNICAL PAPER ................................................................................... 91
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`X.
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`CONCLUSION .............................................................................................. 92
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`iv
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`I, Dr. Ron Matthews, declare as follows:
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`I.
`
`1.
`
`INTRODUCTION
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`I have been retained by Robert Bosch GmbH. (“Bosch” or
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`“Petitioner”) as an independent expert consultant in this proceeding before the
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`United States Patent and Trademark Office. Although I am being compensated at
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`my usual rate of $500.00 per hour for the time I spend on this matter, no part of my
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`compensation depends on the outcome of this proceeding, and I have no other
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`interest in this proceeding.
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`2.
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`I understand that this proceeding involves U.S. Patent No. 5,655,365
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`(“the ‘365 patent”) (Ex. 1001). I understand that the ‘365 patent is a National Stage
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`entry of PCT/AU94/00028, which was filed on January 24, 1994. I have also been
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`informed that the ‘365 patent claims priority to Australian Application No. PL6972,
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`filed January 25, 1993.
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`3.
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`I have been asked to consider whether certain references disclose or
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`suggest certain features in the claims of the ‘365 patent. I have done so and set
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`forth my opinions below:
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`II. GUIDING LEGAL PRINCIPLES
`
`A.
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`
`Person of Ordinary Skill in the Art
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`4.
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`I am informed that a “person of ordinary skill in the art” (“POSITA”)
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`refers to a hypothetical person who is presumed to have known the relevant art at
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`5
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`the time of the invention. Many factors may determine the level of ordinary skill in
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`the art, including: (1) the type of problems encountered in the art, (2) prior art
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`solutions to those problems, (3) the rapidity with which innovations are made, (4)
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`the sophistication of the technology, and (5) the educational level of active workers
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`in the field. I understand that a POSITA is a person of ordinary creativity, not an
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`automaton, meaning that a POSITA may employ inferences and creative steps in
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`their work. I am informed that the relevant timeframe is prior to January 25, 1993,
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`which is the earliest priority filing date for the ‘365 patent, and the opinions below
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`pertain to that timeframe.
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`5.
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`A POSITA in the art for this patent would have at least an
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`undergraduate degree in mechanical engineering or a similar technical field, and at
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`least two (2) years of relevant work experience or equivalent advanced education
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`in a field related to engine technology. Accordingly, I have used this definition in
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`my analysis below.
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`6.
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`In my opinion, under the definition provided above, I was at least a
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`POSITA at the relevant time of the invention. In my opinion, I also supervised
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`others who were a POSITA at the relevant time of the invention.
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` Anticipation Invalidity
`B.
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`7.
`
`I understand that a patent claim is “anticipated,” and, therefore,
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`invalid, if a single prior art reference discloses (expressly or inherently) each and
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`
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`6
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`every element of the claimed invention in a manner sufficient to enable a POSITA
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`to practice the invention, thus placing the invention in possession of the public.
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`8.
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`I also understand that under certain circumstances, multiple references
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`may be used to prove anticipation, specifically to: (a) prove that the primary
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`reference contains an enabled disclosure, (b) explain the meaning of a term used in
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`the primary reference, or (c) show that a characteristic not disclosed in the
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`reference is inherent.
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` Obviousness Invalidity
`C.
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`9.
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`I understand that even if a prior art reference fails to anticipate a
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`patent claim, the claim may nonetheless be invalid as “obvious,” if the differences
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`between the subject matter claimed and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was made to a
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`POSITA. I understand that several factual inquiries underlie a determination of
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`obviousness. These inquiries include the scope and content of the prior art, the
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`level of ordinary skill in the art, the differences between the claimed invention and
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`the prior art, and any objective “secondary considerations,” discussed below. I
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`understand that a combination of familiar elements according to known methods
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`may be obvious when it does no more than yield predictable results. I also
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`understand that common sense and ordinary creativity of one skilled in the art can
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`be relevant to obviousness.
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`7
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`10.
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`I have been informed that certain objective secondary considerations
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`may be relevant to a determination of whether an invention was obvious. Such
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`secondary considerations may include, e.g., (a) whether there was a long-felt and
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`long-unmet need for the invention, (b) whether the invention achieved unexpected
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`results, (c) the commercial success of the invention, and (d) whether the invention
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`was copied or praised within the industry.
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`11. My opinions are set forth below.
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`III. BACKGROUND AND EXPERIENCE
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`12. My curriculum vitae, which includes a more detailed summary of my
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`background, experience, and publications, is attached as Appendix A.
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`13.
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`In 1971, I received a Bachelor’s degree in mechanical Engineering
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`from the University of Texas. In 1972 I received a Master of Science degree in
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`Mechanical Engineering from the University of California at Berkeley
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`(“Berkeley”) and in 1977 I received a Master of Public Health also from Berkeley.
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`Also in 1977 I obtained a PhD in Mechanical Engineering from Berkeley with a
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`specialization in combustion.
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`14. From 1977 to 1979, I acted as an Assistant Professor of Mechanical
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`Engineering at the University of Illinois at Urbana-Champaign. Then, in 1980, I
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`joined the faculty of the Department of Mechanical Engineering at the University
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`of Texas (“UT”), as an Assistant Professor until 1985, upon which I became an
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`Associate Professor. In 1993 I became a Professor at UT, which is my current title.
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`15. While at UT, I established UT’s combustion and engine research
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`program. I founded UT’s student branch of the Society of Automotive Engineers in
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`1980 and have since served as its Faculty Advisor. Currently, I am also the Head of
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`the General Motors Foundation Combustion Sciences and Automotive Research
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`Laboratories on the UT campus.
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`16.
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`I have been involved in research in the area of combustion, engines,
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`emissions, and alternative fuels for over 30 years. For example, my research has
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`and continues to include both experimental work and numerical modeling of both
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`fundamental combustion processes and combustion within engines. My present
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`research is focused primarily on the spark ignition process, 2-stroke diesel engine
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`failures when operating on ultra-low sulfur diesel fuel when using re-refined
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`engine oil, development of an electronic particulate matter sensor for diesels,
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`effects of wide-single truck tires on emissions from heavy-duty diesel vehicles, and
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`prediction of the fuel economy of both light-duty and heavy-duty on-road vehicles.
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`17.
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`In 1992, I received the Arch T. Colwell Merit Award from the Society
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`of Automotive Engineers for my work on the first use of fractal geometry to model
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`the combustion process within a spark ignition engine. This award is given to
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`recognize outstanding contributions to knowledge. In 1996 and again in 1998, UT's
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`body of work on fractal engine modeling was nominated for the ComputerWorld
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`Award and selected for inclusion in the Smithsonian's National Museum of
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`American History Permanent Research Collection on Information, Technology,
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`and Society. I received four awards from the Society of Automotive Engineers in
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`2002. The national President of SAE, Dr. Syed Shahed (Vice President of
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`Honeywell Turbocharger Systems), nominated me to be an SAE Fellow, to which I
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`was subsequently elected. Notably, of the more than 100,000 SAE members, only
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`10-20 are selected as Fellows each year.
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`18.
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`In 2002, I received the SAE’s Excellence in Engineering Education
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`(Triple E) Award, of which there is only one recipient of this award annually, and
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`which is often given to engineers in industry who have exhibited leadership is
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`SAE’s educational mission. Additionally, along with two of my former PhD
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`students and Prof. Janet Ellzey, I received the Myers Award from SAE in 2002.
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`This award recognizes the most outstanding student-authored SAE technical paper.
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`I was a recipient of the SAE Faculty Advisor Award for 2001-2002. Each year, six
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`SAE Faculty Advisors (of more than 350 student branches in North America) are
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`selected for this award. I was a member of the Board of Directors of SAE-
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`International during 2009-2011.
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`19. As noted in my attached CV, I have further received a substantial
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`number of honors and awards, and professional highlights; and have served and/or
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`been appointed to memberships in professional and honorary societies,
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`professional society and major governmental committees; and have helped
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`organize and/or chair various conferences, university committees, college
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`committees, department committees.
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`20. As also noted in my attached CV, I have been involved in an
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`overwhelming number of relevant publications (related to the areas of engines,
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`combustion method and apparatuses, engine igniters, fuel systems and methods),
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`such as for example, referred archival journals; refereed conference proceedings,
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`non-referred conference papers and reports, as well as other books and/or chapters
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`authored, co-authored, edited, or co-edited. I have also performed a substantial
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`number of speaking engagements and oral presentations (invited or keynote
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`speeches, presentations at technical meetings) and have completed a number of
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`PhD supervisions.
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`21.
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`I am a named inventor and/or applicant on a substantial number of
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`patents and patent applications related to the areas of engines, combustion method
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`and apparatuses, engine igniters, fuel systems and methods. My curriculum vitae
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`also include a more detailed summary of my background and experience.
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`IV. MATERIALS REVIEWED
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`22.
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`In forming my opinions, I have reviewed the ‘365 patent and the
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`following documents:
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`11
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`•
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`“Methods for Fast Catalytic System Warm-Up During Vehicle Cold
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`Starts,” to Bernhardt et al., published on February 1, 1972. (“Bernhardt”) (Ex.
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`1002);
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`•
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`•
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`•
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`•
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`•
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`GB Patent No. 1447791 to Eichler et al. (“Eichler ’791”) (Ex. 1003);
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`U.S. Patent No. 3,799,134 to Griese (“Griese”) (Ex. 1004);
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`U.S. Patent No. 3,572,298 to Onishi (“Onishi”) (Ex. 1005);
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`U.S. Patent No. 6,581,572 to Hurley (“Hurley”) (Ex. 1010);
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`Excerpts from the Patent Prosecution History of U.S. Patent No.
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`5,655,365 (Ex. 1008);
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`V. OVERVIEW OF THE ‘365 PATENT
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`23.
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` The ’365 patent is directed to a method of operating an internal
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`combustion engine in order to produce high exhaust gas temperatures to reduce
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`undesirable contaminants from exhaust in engines incorporating exhaust systems
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`having a catalytic treatment means. Ex. 1001 at 1:4-9. I agree with statements in
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`the ’365 patent acknowledging that “[n]ormally, at engine startup, particularly after
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`a period of non-operation, the catalytic material is below its light-off temperature
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`and in order to reduce the time, and therefore the amount of emission output until
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`light-off of the catalyst, it may be desirable to raise the temperature of the exhaust
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`gases delivered from the combustion chamber(s) of the engine to the exhaust
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`system.” Id. at 1:19-25.
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`24.
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`I also agree with statements in the ’365 patent acknowledging that “at
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`startup the engine typically will operate at a relatively low load and speed, such as
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`is termed “engine idle,” and therefore the amount of fuel being delivered to the
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`engine is comparatively small and hence, only a relatively small amount of heat is
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`available for raising the temperature of the exhaust gases and hence the
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`temperature of the catalytic material to its “light-off” temperature.” Id. at 1:26-32.
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`25. The ’365 disclosure describes how catalytic material only effectively
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`reduces undesirable emissions contaminants above a minimum operating
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`temperature, or “light-off temperature.” Typically, however, at engine startup, the
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`catalytic material is below its light-off temperature, resulting in increased levels of
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`undesirable emissions issuing from the engine’s exhaust system.
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`26. The ’365 patent acknowledges
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`that methods for raising
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`the
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`temperature of the catalyst were known in the art, including using afterburner
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`devices. Id. at 1:41-48.
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`27. To improve the effectiveness of catalytic material during vehicle
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`startup due to a low temperature during warmup from a “cold start” (starting when
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`the coolant and intake air temperature are approximately the same), the ’365
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`disclosure describes a method for assisting in maintaining high exhaust gas
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`temperatures, and thus, achieving rapid light-off of the catalytic material in the
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`exhaust system and maintaining the light-off condition during engine operation.
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`Id. at 1:49-55.
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`28. This method comprises retarding the ignition of a gas/fuel mixture
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`within at least one cylinder of the engine to after top dead center (ATDC) and
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`increasing the fuelling rate while ignition is being retarded. Id. at Abstract.
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`29.
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`In particular, the ’365 disclosure describes that ignition can be
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`retarded up to about 30° ATDC and is preferably retarded to about 20° ATDC. Id.
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`at 1:65-67. Alternatively, the patent discloses that ignition retardation can be
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`variable, preferably between 15° to 30° ATDC. Id. at 1:67-2:2.
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`30. The ’365 patent also discloses that while ignition is retarded, the
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`fuelling rate (mg/cylinder/cycle) can be varied and may be greater than 50% of the
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`fuelling rate at maximum load, up to about 80% of the fuelling rate at maximum
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`load, or even in excess of 100% of the fuelling rate at maximum engine load. Id. at
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`2:3-8, 3:10-12.
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`31. The ’365 patent further discloses that fuel is introduced to the
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`combustion chamber at approximately 60° BTDC, and acknowledges that the
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`timing of the introduction in that range is typical in direct injection engines. In
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`fact, fuel is introduced most preferably at between 60° and 80° BTDC. Id. at 2:10-
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`13, 2:59-62, 3:2-4, Fig. 1, Fig. 2.
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`32.
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`I agree with statements in the ’365 patent acknowledging the cylinder
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`pressure versus crank angle characteristics for a typical direct injected two-stroke
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`internal combustion engine were well known in the art, as depicted in Fig. (below
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`left). Fig. 2 (below right), on the other hand, shows similar characteristics for a
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`direct injected two-stroke internal combustion engine operated according to the
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`method of the invention.
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`
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`33. The ’365 patent further discloses that combustion preferably occurs
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`under rich conditions with the overall air/fuel ratio being close to the
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`stoichiometric ratio. Id. at 3:60-62.
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`34. Additional oxygen containing gas, such as air, may be introduced
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`upstream of the catalytic treatment means provided in the exhaust system of the
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`engine. This excess air may be introduced to the exhaust system to promote the
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`catalytic oxidation of the exhaust gases in order to further reduce undesirable
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`contaminants therein. Id. at 4:1-3; 4:33-35.
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`VI. CLAIM CONSTRUCTION
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`35.
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`I have been advised that the first step of assessing the validity of a
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`patent claim is to interpret or construe the meaning of the claim.
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`36.
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`I have been advised that in inter partes review proceedings before the
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`U.S. Patent and Trademark Office, claim terms of an expired patent are given their
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`ordinary and accustomed meaning as understood by one of ordinary skill in the art.
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`37.
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`I discuss below what I understand to be Bosch’s proposed
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`construction of certain claim terms of the ’365 patent.
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`“up to about 30° ATDC” (Claim 5)
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`Independent claim 1 recites “up to about 30° ATDC.” Ex. 1001 at 6:25-26.
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`In light of the specification, this phrase should be construed to mean “between 15°
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`and about 30° ATDC.” See, e.g., Ex. 1001 at 1:65-2:3, 3:1-9, 3:20-27, 3:41-47, Fig.
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`2. The patent’s specification does not disclose an engine in which retarded ignition
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`occurs between TDC and 15 ATDC. Rather, all that is supported is engine
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`operation in which ignition is delayed to between 15° and about 30° ATDC.
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`Further, there is no disclosure in the specification explaining if, or how, retarding
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`ignition to between TDC and 15° ATDC meets the object of the invention of
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`increasing exhaust gas temperature to achieve light-off in a sufficiently reduced
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`amount of time. See, e.g., id. at 1:65-2:3, 3:1-9, 3:20-47.
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`16
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`“fuelling rate” (Claims 1 and 2)
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`Independent claim 1 and dependent claim 2 recite “fuelling rate.” Ex. 1001
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`at 6:12-14. In light of the specification, this phrase should be construed to mean
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`“the amount of fuel introduced into a cylinder during a combustion cycle.” See e.g.,
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`Id. at 2:3-6, 2:7-10, 2:59-3:12, Figs. 1, 2. Ex. 1010 at 1:8-14.
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`“the timing of introduction of fuel into the at least one cylinder being
`maintained at before top dead centre (BTDC)” (Claim 1)
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`Independent claim 1 recites “the timing of introduction of fuel into the at
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`least one cylinder being maintained at before top dead centre (BTDC).” Ex. 1001
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`at 6:15-17. In light of the specification and prosecution history, this phrase should
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`be construed to mean “all fuel introduced into the at least one cylinder during a
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`combustion cycle is controlled to occur BTDC.” See e.g., Ex. 1001 at 2:9-14, 2:59-
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`63, 3:1-9, Figs. 1, 2. Ex. 1008 at 74-76 (11/13/1995 Office Action), 83-85
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`(03/08/1996 Response), 91-93 (04/25/1996 Office Action), 106-07 (07/25/1996
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`Amendment). I have been informed that in the pending litigation, the PO has
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`construed this term to mean “the start of injection occurs in the window between
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`80 to 60 degrees before top dead center.” Under such a construction, however, the
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`terms “being maintained” are rendered superfluous. The ’365 patent describes that,
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`in typical engines fuel is introduced at approximately 60° BTDC with ignition
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`occurring at approximately 30° BTDC. Ex. 1001 at 2:59-63. It then describes the
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`method “according to the invention” where fuel is still introduced BTDC (at
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`between 60° and 80° BTDC), while the ignition is retarded at up to about 30°
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`ATDC. Id. at 3:1-9. In other words, ignition is retarded to ATDC, but the timing
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`of introduction of fuel is left unchanged as compared to the timing of fuel
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`introduction in “typical engines”—i.e., it is "maintained at" BTDC. Compare id. at
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`Fig. 1 with Fig. 2. In this context, “the timing of introduction of fuel into the at
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`least one cylinder being maintained at before top dead centre (BTDC)” means that
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`all fuel is introduced into the cylinder BTDC, as in typical engines.
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`“maximum load” (Claim 2)
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`Dependent claim 2 recites “maximum load.” Ex. 1001 at 6:19-20. In light of
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`the specification, this term should be construed to mean “maximum load of the
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`engine,” which equates to the peak torque output of the engine. See e.g., Ex. 1001
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`at 1:26-40, 2:3-8, 3:10-12, 5:50-57. See also, Ex. 1010 at 2:19-22.
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`“additional air is introduced upstream” (Claim 12)
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`Dependent claim 12 recites “additional air is introduced upstream.” Ex.
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`1001 at 6:43-44. In light of the specification, this term should be construed to
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`mean “additional air is introduced into the exhaust system between the exhaust
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`ports of the engine and the catalytic treatment means.” See e.g., Ex. 1001 at 3:13-
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`19, 4:1-16, 4:32-35, Fig. 3.
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`“required operating temperature” (Claim 14)
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`18
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`Dependent claim 14 recites “required operating temperature.” Ex. 1001 at
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`6:48-51. In light of the specification, this term should be construed to mean “the
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`temperature at which the catalytic material within the catalytic treatment means is
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`50% efficient.” See e.g., Ex. 1001 at 1:10-19, 4:62-5:46.
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`“sensed or determined” (Claim 14)
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`Dependent claim 14 recites “sensed or determined.” Ex. 1001 at 6:48-51. In
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`light of the specification, this term should be construed to mean “measured by a
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`sensor.” See e.g., Ex. 1001 at 4:62-5:46.
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` “predetermined operating condition” (Claim 18)
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`Dependent claim 18 recites “predetermined operating condition.” Ex. 1001
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`at 6:60-62. In light of the specification, this term should be construed to mean “a
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`threshold value, set in advance.” See e.g., Ex. 1001 at 4:62-5:12, 5:24-29.
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`“catalytic treatment means” (Claims 10 and 14)
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`Claim 10 recites “catalytic treatment means.” Ex. 1001 at 6:37-39, 48-51.
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`This term should be construed as a mean-plus-function claim. In light of the
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`specification, the function recited by the claim is “supporting a catalytic material,”
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`while the corresponding structure is “a structure within the exhaust system that
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`includes catalytic material having a minimum operating temperature for effective
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`treatment of exhaust gases.” See e.g., Ex. 1001 at 1:10-25, 3:13-19, Fig. 3.
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`“fuel is introduced at between 60° to 80° BTDC” (Claim 9)
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`Claim 9 recites that “fuel is introduced at between 60° to 80° BTDC.” Ex.
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`1001 at 6:35-36. In light of the specification, this term should be construed to
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`mean “all fuel for a combustion cycle is introduced into a cylinder between 80°
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`and 60° BTDC.” See e.g., Ex. 1001 at 2:9-14, 2:59-63, 3:1-9, Figs. 1, 2. Ex. 1008
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`at 74-76 (11/13/1995 Office Action), 83-85 (03/08/1996 Response), 91-93
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`(04/25/1996 Office Action), 106-07 (07/25/1996 Amendment). I have been
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`informed that in the pending litigation, the PO has construed this term to mean “the
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`start of injection occurs in the window between 80 to 60 degrees before top dead
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`center.” As described above in relation to the “the timing of introduction of fuel”
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`limitation of claim 1, the ’365 patent describes, and claim 1 requires, that all fuel is
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`introduced into the cylinder BTDC. Because claim 9 depends from, and cannot be
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`broader than, claim 1, in my opinion, a POSITA would construe “fuel is introduced
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`at between 60° to 80° BTDC” to require all fuel to be injected at between 80° and
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`60° BTDC. There is no fair reading of this language, or support in the
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`specification, for a construction that provides for fuel to be injected after 60° as
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`long as injection began between 80° and 60°, as allowed for in PO's proposed
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`construction.
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`VII. ANTICIPATION AND OBVIOUSNESS COMBINATIONS
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`A.
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`Bernhardt Discloses All Elements of Claims 1, 2, 5, 10, 12, 13, and
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`18
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`38.
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`“Methods for Fast Catalytic System Warm-Up During Vehicle Cold
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`Starts,” to Bernhardt et al. (“Bernhardt”) (Ex. 1002), was published on February 1,
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`1972, and I understand it is prior art under 35 U.S.C. § 102(b).
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`39. Bernhardt discloses a method for operating an internal combustion
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`engine incorporating a catalytic system for treating exhaust gases exiting the
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`combustion chamber. The method uses the engine as a preheater for the catalytic
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`system by retarding ignition of the air and fuel mixture in at least one cylinder of
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`the engine until ATDC. Id. at p. 8, col. 2, ¶1; p. 10, col. 2, ¶2. Bernhardt also
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`discloses that while the ignition is being retarded to ATDC, an increase in fuel
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`flow raises the exhaust gas enthalpy (i.e., the amount of heat content of the exhaust
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`gas in a system at constant pressure). In particular, Bernhardt discloses that during
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`spark retard there is an “increased idling speed of the engine,” the engine may
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`operate with a “fully opened throttle,” and may operate with a “reciprocal
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`equivalence ratio of 1.0.” Id. at p. 12, col. 1, ¶¶ 2, 5; Id. at p. 8, col. 2, ¶1.
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`40. Bernhardt discloses implementing conventional internal combustion
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`engines1, such as a VW 1.6 liter single cylinder engine with a production type
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`combustion chamber, in which fuel and air are mixed prior to ignition, a POSITA
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`would recognize that Bernhardt discloses an engine which operates in a manner in
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`which “the timing of the introduction of fuel into the at least one cylinder [is]
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`maintained at BTDC.”
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`41.
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`In conventional port fuel injected engines, such as the engine
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`disclosed in Bernhardt, all fuel is introduced before the start of the compression
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`stroke, which is typically at about 180° BTDC.
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`42.
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`In describing several embodiments of the invention in which ignition
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`timing is retarded, including two embodiments in which ignition occurs BTDC,
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`Bernhardt discloses that the only difference between the combustion cycles in
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`those embodiments is the ignition timing. Bernhardt further discloses that “other
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`engine parameters such as air/fuel ratio and volumetric efficiency remained equal.”
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`Ex. 1002 at p. 8, col. 2, ¶4. Thus, in those embodiments, all fuel also would have
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`been injected BTDC in the embodiments in which ignition was retarded until
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`ATDC.
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`1 Moreover, the ’365 patent discloses, in Fig. 1 for example, that fuel in a typical
`internal combustion engine is introduced at BTDC, and at 60 degrees BTDC, in
`particular. Id. at Fig. 1; 2:59-63.
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`43.
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`In my opinion, Orbital’s ‘365 patent is nothing more than the
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`application of direct injection to the fast catalyst light-off strategy discussed in
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`Bernhardt’s 1972 SAE paper. As explained below, Bernhardt discloses all the
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`elements of claims 1-2, 5, 10, 12-13, and 18 of the ‘365 patent.
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`Claim 1
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`“A method of operating an internal combustion engine”
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`43. Bernhardt discloses a method of operating an internal combustion
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`engine. Ex. 1002 at page 1 Introduction; p. 8, col. 2, ¶1.
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`44. Bernhardt discloses that “[i]t has been found that under appropriate
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`operating conditions the engine itself is able to act as a preheater for the catalytic
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`system. Warm-up spark retard and an increased idling speed of the engine with full
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`open throttle lead to higher exhaust temperatures and thereby to a greater enthalpy
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`of the exhaust gases, so that the after burning system could be brought rapidly up
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`to its operating temperature.” Id. at p. 8, col. 2, ¶1. Bernhardt refers to exhaust
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`catalysts in disclosing “after burning systems” Id. at p. 1, col. 2, ¶1.
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`45. Bernhardt also discloses that “[t]o achieve the emission targets . . . a
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`number of emission concepts with conventional internal combustion engines and
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`emission control systems have been examined.” Id. at introduction.
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`“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”
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`46. Bernhardt discloses retarding the ignition of a gas/fuel mixture within
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`at least one cylinder of the engine to ATDC in respect of the combustion cycle of
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`said at least one cylinder of the engine. Ex. 1002 at page 8, col. 2, ¶1, ¶3; p. 10,
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`col. 2, ¶2.
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`47. Bernhardt discloses that “the total chemical energy of the exhaust
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`gases can be