Paper 8
`Trials@uspto.gov
`571-272-7822 Entered: May 13, 2016
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2016-00083
`Patent 5,655,365
`____________
`
`
`
`Before KEN B. BARRETT, JEREMY M. PLENZLER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`and Dismissing Motion for Joinder
`35 U.S.C. §§ 315(c), 325(d); 37 C.F.R. §§ 42.122, 42.108
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 13, 2016
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2016-00083
`Patent 5,655,365
`____________
`
`
`
`Before KEN B. BARRETT, JEREMY M. PLENZLER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`and Dismissing Motion for Joinder
`35 U.S.C. §§ 315(c), 325(d); 37 C.F.R. §§ 42.122, 42.108
`
`
`
`IPR2016-00083
`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
`anticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C. § 103.
`Concurrently with the filing of the Petition, Petitioner filed a Motion for
`Joinder requesting joinder with one of two inter partes review trials
`currently pending before the Patent Trial and Appeal Board, Robert Bosch
`LLC and Daimler AG v. Orbital Australia Pty Ltd, Cases IPR2015-01258
`and IPR2015-01259. Paper 4 (“Joinder Motion”). Specifically, Petitioner
`requests that the instant proceeding be joined with IPR2015-01258 or,
`alternatively, IPR2015-01259 should there be no institution in
`IPR2015-01258. Id. at 1. Orbital Australia Pty Ltd, the owner of the ’365
`patent, did not file a Preliminary Response to the Petition or an Opposition
`to the Joinder Motion. We have jurisdiction under 35 U.S.C. § 314(a).
`
`Upon consideration of the Petition, Motion for Joinder, and the
`specific facts of this case, we exercise our discretion to deny review under
`35 U.S.C. § 325(d). Because we determine that the Petition does not warrant
`institution, we are prohibited from granting, and thus dismiss as moot, the
`Motion for Joinder under 35 U.S.C. § 315(c).
`
`A. Related Proceedings
`Both parties identify, as matters involving the ’365 patent, a district
`
`court case Orbital Australia Pty Ltd. & Orbital Fluid Techs., Inc., v.
`Daimler AG, Mercedes-Benz USA LLC, Mercedes-Benz US Int’l Inc., Robert
`
`2
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`Bosch GmbH, & Robert Bosch LLC, Case No. 3:14-cv-808-REP (E.D. Va.),
`later transferred to the Eastern District of Michigan, Case No. 2:15-cv-
`12398, and Patent Trial and Appeal Board cases IPR2015-01258 and
`IPR2015-01259. Pet. 57–58; Paper 7.
`
`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
`
`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
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`
`of heat is available for raising the temperature of the exhaust
`gases and hence the temperature of the catalytic material to its
`“light-off” temperature.
`Id., 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
`
`4
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`engine and for such an engine operated according to the method of the ’365
`patent, respectively. Id., col. 2, ll. 46–52.
`
`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.
`
`Ex. 1002
`
`D. Applied References
`W E. Bernhardt and E. Hoffman, Methods for Fast
`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. 1003
`(“Eichler ’791”)
`Griese
`Onishi
`Ahern
`
`US 3,799,134 Mar. 26, 1974 Ex. 1004
`US 3,572,298 Mar. 23, 1971 Ex. 1005
`US 4,926,806 May 22, 1990 Ex. 1011
`
`5
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`Petitioner relies also on the Declaration of Dr. Ron Matthews dated
`
`November 10, 2015 (Ex. 1006), the Declaration of Alana Bevan dated
`November 6, 2015 (Ex. 1015), and the Declaration of Catherine
`Alexandrovna Vassilkova dated November 6, 2015 (Ex. 1016), in support of
`Petitioner’s arguments.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`Claims
`Basis
`Reference(s)
`§ 102(b) 1, 2, 5, 10, 12, 13, and 18
`Bernhardt
`§ 103(a) 9
`Bernhardt and Onishi
`§ 103(a) 14
`Bernhardt and Griese
`§ 103(a) 1, 2, 5, 10, 12–14, and 18
`Eichler ’791 and Bernhardt
`Eichler ’791, Bernhardt, and Onishi § 103(a) 9
`Onishi and Bernhardt
`§ 103(a) 12
`Ahern and Bernhardt
`§ 103(a) 1, 2, 5, 9, 10, 12, 13, and
`18
`§ 103(a) 14
`
`Ahern, Bernhardt, and Griese
`
`II. PROCEDURAL POSTURE
`
`Petitioner filed Petitions challenging claims of the ’365 patent in
`
`related cases IPR2015-01258 (Paper 3) and IPR2015-01259 (Paper 3). In its
`preliminary responses in the related cases, Patent Owner argued that
`Petitioner failed to establish Bernhardt as prior art. E.g., IPR2015-01258,
`Prelim. Resp. 29. Prior to the issuance of decisions on the two Petitions,
`Petitioner, through an email to the Board, “request[ed] permission, under 37
`C.F.R. § 42.5(b), to submit additional documents relating to the publication
`
`6
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`of the Bernhardt paper in the 1970s.” IPR2016-00083, Ex. 1017. In that
`email, Petitioner represented “Patent Owner has had the opportunity to
`review the three documents.” Id.
`
`The Board responded to the request, stating: “The Board, having
`considered Petitioner’s email of October 20, 2015, denies Petitioner’s
`request to submit additional documents at this time, and declines to schedule
`a telephone conference to discuss the matter.” Id. Although not explicit in
`the Board’s response to Petitioner’s email, the request was denied as
`premature because trial had not been instituted, yet. See id. (denying the
`request to submit additional documents “at this time”); see also 37 C.F.R.
`§ 42.123(a) (“Once a trial has been instituted, a party may file a motion to
`submit supplemental information in accordance with [certain]
`requirements.”) (emphasis added).
`
`Petitioner then filed a third Petition, the Petition in the case at bar,
`again requesting inter partes review of ’365 patent. IPR2016-00083,
`Paper 3. As mentioned, Petitioner filed, concurrently with the Petition, a
`Motion for Joinder requesting joinder of the proceeding with one of the two
`related cases. See IPR2016-00083, Paper 4 (Motion for Joinder), 1.
`According to Petitioner:
`Out of an abundance of caution and in view of the approaching
`time bar under 35 U.S.C. § 315(b), Petitioner has filed the Third
`’365 IPR consolidating the existing Bernhardt-related grounds
`with additional evidence showing the publication and public
`accessibility of Bernhardt well before the critical date.
`Id. at 5. Petitioner filed the instant Petition “only to add additional evidence
`of publication.” Id. at 11.
`
`7
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`In due course, the Board instituted an inter partes review in each of
`
`the two earlier, related cases. IPR2015-01258, Paper 11; IPR2015-01259,
`Paper 9. Subsequently, Patent Owner filed authenticity and hearsay
`objections to the Bernhardt Exhibits in those related cases. IPR2015-01258,
`Paper 14; IPR2015-01259, Paper 12.
`
`We ordered the parties to meet and confer in good faith to discuss
`Patent Owner’s objections to the Bernhardt Exhibits in light of the
`supplemental evidence provided by Petitioner to Patent Owner, and to
`discuss any potential resolution of the issue of admissibility of the Bernhardt
`Exhibits. IPR2015-01258, Paper 20, 3–4; IPR2015-01259, Paper 18, 3–4.
`We further authorized Petitioner to file a motion to submit supplemental
`information pursuant to 37 C.F.R. § 42.123 in the event that the parties could
`not reach agreement. IPR2015-01258, Paper 20, 4; IPR2015-01259,
`Paper 18, 4.
`
`The parties filed, in the related cases, a joint notice indicating that
`they had reached agreement on the admissibility of the Bernhardt exhibits.
`IPR2015-01258, Paper 22, 2; IPR2015-01259, Paper 20, 2. In that notice,
`the agreement is described as follows:
`Patent Owner agrees to withdraw its authenticity objections to
`the Bernhardt Exhibit under FRE 901 and 902 and its hearsay
`objections to the Bernhardt Exhibit under FRE 801-807, as
`asserted in Patent Owner’s First Objections to Evidence
`Pursuant to 37 C.F.R. § 42.64, dated January 13, 2016
`(Paper 14). Patent Owner also agrees that it will not submit in
`the IPR2015-01258 proceeding any arguments challenging the
`admissibility of the Bernhardt Exhibit in a motion to exclude, at
`the Oral Hearing, or at any other time in the IPR2015-01258
`proceeding, including in any appeal of a final written decision.
`
`8
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`IPR2015-01258, Paper 22, 2–3; see also IPR2015-01259, Paper 20, 2–3
`(substantively similar agreement to not challenge the admissibility of the
`Bernhardt exhibit in IPR2015-01259).
`
`III. ANALYSIS
`
`Our statutory authority to institute inter partes review derives from 35
`
`U.S.C. § 314(a), which provides that a review may not “be instituted unless
`the Director2 determines that the information presented in the petition . . .
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” As we
`have recognized, “Congress did not mandate that an inter partes review
`must be instituted under certain conditions. Rather, by stating that the
`Director—and by extension, the Board—may not institute review unless
`certain conditions are met, Congress made institution discretionary.”
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case
`IPR2013-00324, slip op. at 4 (PTAB Nov. 21, 2013) (Paper 19). In
`determining whether to institute an inter partes review, the Board may
`“deny some or all grounds for unpatentability for some or all of the
`challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).
`
`Our discretion is further guided by 35 U.S.C. § 325(d), which states,
`in relevant part, that “[i]n determining whether to institute or order a
`
`
`2 “The Board institutes the trial on behalf of the Director.” 37 C.F.R.
`§ 42.4(a).
`
`9
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`proceeding under this chapter, chapter 30, or chapter 31,3 the Director may
`take into account whether, and reject the petition or request because, the
`same or substantially the same prior art or arguments previously were
`presented to the Office.”
`
`The Board, acting on behalf of the Director, also has broad discretion
`whether to join a party to an inter partes review under 35 U.S.C. § 315(c):
`JOINDER.–If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`Thus, joinder in an inter partes review may be warranted in certain
`
`circumstances, but is not required in any. See Sony Corp. v. Network-1 Sec.
`Solutions, Inc., Case IPR2013-00386, slip. op. at 3 (PTAB July 29, 2013)
`(Paper 16) (“[t]he Board will determine whether to grant joinder on a case-
`by-case basis, taking into account the particular facts of each case,
`substantive and procedural issues, and other considerations”). The statute
`does, however, set forth at least one circumstance in which we do not have
`the discretion to join a party: if the Board determines that a later (in this
`case third) petition does not warrant institution. 35 U.S.C. § 315(c) (“the
`Director . . . may join as a party . . . any person who properly files a petition
`. . . that the Director . . . determines warrants the institution of an inter partes
`review under section 314”).
`
`3 Chapter 31 of the Patent Act covers inter partes review proceedings. Thus,
`although § 325(d) appears in Chapter 32, which is directed to post-grant
`reviews, it is applicable to inter partes reviews.
`
`10
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`With these statutory provisions in mind, we turn to the question of
`
`whether, in our discretion, the Petition in this case warrants inter partes
`review. Petitioner states in the Joinder Motion that its third Petition “raises
`the same grounds of unpatentability as the First and Second ’365 IPRs, with
`the same support from the same expert, the only change being the additional
`evidence supporting Bernhardt’s publication.” Motion for Joinder 1; see
`also id. at 6–7 (same). Petitioner also represents “[t]he Third ’365 IPR
`Petition is identical to the First and Second ’365 IPR petitions on the
`grounds related to Bernhardt.” Id. at 5 (citing IPR2016-00083, Paper 3
`(Petition), 58). Petitioner states:
`If the Board elects not to institute trial on any grounds in
`IPR2015-01258 and IPR2015-01259, based on insufficient
`evidence being presented in those petitions to prove that
`Bernhardt is prior art under 35 U.S.C. § 102(b), the Board
`should grant this petition and institute trial on all grounds
`because this petition provides additional evidence sufficient to
`prove that Bernhardt was published and sufficiently accessible
`to the public interested in the art prior to the ’365 patent’s
`earliest priority date.
`Pet. 57–58. We understand that Petitioner filed this third Petition “[o]ut of
`an abundance of caution and in view of the approaching time bar” in the
`event that we denied institution in the earlier two Petitions. Motion for
`Joinder 5.
`The Board instituted inter partes review in both IPR2015-01258
`
`(Paper 11) and IPR2015-01259 (Paper 9) and on all the challenged claims.
`Additionally, it appears that there no longer is an issue as to the admissibility
`of the Bernhardt exhibits. Nor does there appear to be any other challenge to
`Bernhardt’s status as prior art. See, e.g, IPR2015-01258, Paper 19 (Patent
`Owner’s Response), 51–52. Accordingly, we determine this third petition is
`
`11
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`moot because, as stated by Petitioner, it “is identical to the First and Second
`’365 IPR petitions on the grounds related to Bernhardt” and Petitioner’s
`stated need for the Petition is not present. Motion for Joinder 5.
`
`IV. SUMMARY
`
`For the foregoing reasons, we determine that the Petition presents
`
`substantially the same art and arguments as in the first two Petitions and
`taking into the account the parties’ agreement concerning the admissibility
`of Bernhardt, we exercise our discretion to deny institution of review under
`35 U.S.C. § 325(d). Consequently, we are prohibited from granting, and
`thus dismiss as moot, Petitioner’s Motion for Joinder.
`
`V. ORDER
`
`For the foregoing reasons, it is
`
`ORDERED that Petition is denied as to all challenged claims of the
`
`’365 patent; and
`
`FURTHER ORDERED that the Motion for Joinder with
`IPR2015-01258 or alternatively IPR2015-01259 is dismissed.
`
`12
`
`
`
`
`
`IPR2016-00083
`Patent 5,655,365
`
`For PETITIONER:
`Lionel Lavenue
`lionel.lavenue@finnegan.com
`
`Edward DeFranco
`eddefranco@quinnemanuel.com
`
`Aaron Parker
`aaron.parker@finnegan.com
`
`
`
`
`
`
`For PATENT OWNER:
`
`David Magee
`mageed@pepperlaw.com
`
`Andrew Schultz
`schultza@pepperlaw.com
`
`
`13
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