IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD

Transcription

1 IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD In re Inter Partes Review of: ) ) U.S. Patent No. 5,655,365 ) ) Issued: August 12, 1997 ) ) Inventor: David Richard Worth et al. ) ) Application No. 446,739 ) ) Filed: June 6, 1995 ) ) FILED ELECTRONICALLY For: METHOD OF OPERATING AN ) PER 37 C.F.R. 42.6(b)(1) INTERNAL COMBUSTION ENGINE ) Mail Stop Patent Board Patent Trial and Appeal Board U.S.P.T.O. P.O. Box 1450 Alexandria, VA PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 5,655,365

2 TABLE OF CONTENTS Inter Partes Review I. PRELIMINARY STATEMENT... 1 II. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED... 3 A. Claims for Which Review is Requested... 3 B. Statutory Grounds of Challenge... 3 C. Claim Construction... 3 III. THE 365 PATENT... 9 A. Overview of the Disclosure... 9 IV. CLAIMS 1, 2, 5, 9, 10, 12-14, and 18 OF THE 365 PATENT ARE UNPATENTABLE A. Bernhardt anticipates claims 1, 2, 5, 10, 12, 13, and B. Bernhardt in combination with Onishi render claim 9 obvious C. Bernhardt in combination with Griese render claim 14 obvious D. Eichler 791 in combination with Bernhardt render obvious claims 1, 2, 5, 10, 12-14, and E. Eichler 791 in combination with Bernhardt and Onishi render claim 9 obvious F. Onishi anticipates claims 1, 2, and G. Onishi in combination with Eichler 791 render claim 5 obvious H. Onishi in combination with Griese render claims 10, 13, 14, and 18 obvious I. Onishi in combination with Bernhardt renders claim 12 obvious V. GROUNDS FOR STANDING VI. MANDATORY NOTICES ii

3 A. Real Party-in-Interest B. Related Matters C. Lead and Back-Up Counsel, and Service Information VII. CONCLUSION iii

4 TABLE OF AUTHORITIES Inter Partes Review Page(s) Cases Ex Parte Ronald A. Katz Tech. Licensing L.P., No , 2010 WL (B.P.A.I. Mar. 15, 2010) In re Aller, 220 F.2d 454, 456, (C.C.P.A. 1955)... 27, 43, 50 In re Applied Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012)... 27, 43, 50 In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003) Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) Statutes 35 U.S.C passim 35 U.S.C passim 35 U.S.C U.S.C U.S.C Regulations 37 C.F.R et seq. ) C.F.R (a) iv

5 LIST OF EXHIBITS Petition Exhibit 1001: Petition Exhibit 1002: U.S. Patent No. 5,655,365 to David Richard Worth et al. ( Worth ). Bernhardt, W E., Methods for Fast Catalytic System Warm-Up During Vehicle Cold Starts, Society of Automotive Engineers, 400 Commonwealth Dr., Warrendale, PA, 15096, USA, ( Bernhardt ). Petition Exhibit 1003: GB Patent No to Eichler et al. ( Eichler 791 ). Petition Exhibit 1004: Petition Exhibit 1005: Petition Exhibit 1006: Petition Exhibit 1007: U.S. Patent No. 3,799,134 to Griese ( Griese ) U.S. Patent No. 3,572,298 to Onishi ( Onishi ). Declaration of Dr. Ron Matthews. Amended Complaint filed in Orbital Australia Pty Ltd. and Orbital Fluid Technologies, Inc., v. Daimler AG, Mercedes-Benz USA LLC, Mercedes-Benz US International Inc., Robert Bosch GMBH, and Robert Bosch LLC, Case No. 3:14-cv-808-REP (E.D.Va.). Petition Exhibit 1008: Patent Prosecution History of U.S. Patent No. 5,655,365 (U.S. App. Ser. No. 08/446,739). Petition Exhibit 1009: Petition Exhibit 1010: Petition Exhibit 1011: Orbital s Proposed Claim Constructions filed in Orbital Australia Pty Ltd. and Orbital Fluid Technologies, Inc., v. Daimler AG, Mercedes-Benz USA LLC, Mercedes- Benz US International Inc., Robert Bosch GMBH, and Robert Bosch LLC, Case No. 3:14-cv-808-REP (E.D.Va.). U.S. Patent No. 6,581,572 to Hurley. United States Patent No. 5,050,551 to Morikawa. v

6 Robert Bosch LLC and Daimler AG (collectively, Petitioner ) requests inter partes review of claims 1, 2, 5, 9, 10, 12-14, and 18 of the 365 patent (Ex. 1001), now purportedly assigned to Orbital Engine Company Pty Limited ( Orbital or Patent Owner ), in accordance with 35 U.S.C and 37 C.F.R et seq. I. PRELIMINARY STATEMENT Claims 1, 2, 5, 9, 10, 12-14, and 18 of the 365 patent are directed to a method of operating an internal combustion engine in order to produce high exhaust gas temperatures to reduce undesirable contaminants from exhaust in engines incorporating exhaust systems having a catalytic treatment means. Ex at 1:4-9. The patent s specification acknowledges that heating catalytic material using an afterburner device placed upstream of the catalytic treatment means, in order to heat the exhaust gases and reduce contaminants, is well known in the art. Id. at 1: The patent also concedes that it was well-known in the art to introduce a gas/fuel mixture into an engine before top dead center (BTDC). Id.at Fig. 1. The only purported new feature in claims 1, 2, 5, 9, 10, 12-14, and 18 is thus heating exhaust gases by retarding the ignition of a gas/fuel mixture to after top dead center (ATDC) and, while the ignition is retarded, increasing the fuelling rate and maintaining the timing of fuel introduction at BTDC. Id.at 1:49-64.

7 A number of prior art references not considered by the PTO during prosecution of the 365 patent, however, disclosed the method of operating an internal combustion engine of claim 1, involving retarding ignition to ATDC, increasing fueling rate, and timing fuel injection BTDC, in order to heat up catalytic treatment means to the light-off temperature of the catalytic material to reduce the amount of harmful contaminants in the exhaust gases, including Bernhardt (Ex. 1002), Eichler 791 (Ex. 1003), and Onishi (Ex. 1005). Bernhardt discloses a method for operating an internal combustion engine during vehicle cold starts in which the catalytic system is warmed up at vehicle start-up to improve efficiency of the catalytic system and reduce harmful exhaust gas emissions. Ex at 1, introduction. This method involves retarding the ignition of the fuel/air mixture until ATDC while increasing the fuelling rate while ignition is being retarded. Id. at p. 8, col. 2, 1, 3; p. 10, col. 2, 2. Similarly, Eichler 791 discloses a method for operating a fuel injected internal combustion engine in which the ignition of the fuel/gas mixture is retarded to ATDC during engine overrun or idling, and fuel is introduced into the cylinder of the engine BTDC. Ex at p. 1:9-11, 1:86-89; 2:13-17, Fig. 1. As discussed in more detail below, the disclosures of Bernhardt, Eichler 791, and Onishi, as well as Griese, teach every feature of at least claims 1, 2, 5, 9, 2

8 10, 12-14, and 18 and warrant the cancellation of those claims. Accordingly, the Board should institute trial and cancel these claims. II. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED A. Claims for Which Review is Requested Petitioner requests review under 35 U.S.C. 311 of claims 1, 2, 5, 9, 10, 12-14, and 18 of the 365 patent, and the cancellation of these claims as unpatentable. B. Statutory Grounds of Challenge Claims 1, 2, 5, 9, 10, 12-14, and 18 are unpatentable under 35 U.S.C. 102 and 103. The claim construction, reasons for unpatentability, and specific evidence supporting this request are detailed below. C. Claim Construction Claim terms in an expired patent are given their ordinary and accustomed meaning as understood by one of ordinary skill in the art, 1 consistent with the standard expressed in Phillips v. AWH Corp., 415 F.3d 1303, (Fed. Cir. 1 Petitioner submits that a person of ordinary skill in the art ( POSITA ) would have at least an undergraduate degree in mechanical engineering or a similar technical field and at least two (2) years of relevant work experience or equivalent advanced education in a field related to engine control technology. Petitioner applies this level of ordinary skill in this petition. 3

9 2005) (en banc); Ex Parte Ronald A. Katz Tech. Licensing L.P., No , 2010 WL , at *3-4 (B.P.A.I. Mar. 15, 2010). The following terms from the claims of the 365 patent require construction for this proceeding. 2 All other terms should be given their ordinary meanings. up to about 30 ATDC (Claim 5) Independent claim 1 recites up to about 30 ATDC. Ex at 6: In light of the specification, this phrase should be construed to mean between 15 and about 30 ATDC. See e.g., Ex at 1:65-2:3, 3:1-9, 3:20-27, 3:41-47, Fig. 2. The patent s specification does not disclose an engine in which retarded ignition occurs between TDC and 15 ATDC. Rather, all that is supported is engine operation in which ignition is delayed to between 15 and about 30 ATDC. Further, there is no disclosure in the specification explaining if, or how, retarding ignition to between TDC and 15 ATDC meets the objective of the invention of increasing exhaust gas temperature to achieve light-off in a sufficiently reduced amount of time. See, e.g., id. at 1:65-2:3, 3:1-9, 3: fuelling rate (Claims 1 and 2) 2 Because the IPR procedure does not permit challenges under 35 U.S.C. 112, Petitioner has not included any indefiniteness arguments herein. Petitioner will, however, raise such arguments in other proceedings. 4

10 5 Inter Partes Review Independent claim 1 and dependent claim 2 recite fuelling rate. Ex at 6: In light of the specification, this phrase should be construed to mean the amount of fuel introduced into a cylinder during a combustion cycle. See e.g., Ex at 2:3-10, 2:59-3:12, Figs. 1, 2; Ex at 1:8-14. the timing of introduction of fuel into the at least one cylinder being maintained at before top dead centre (BTDC) (Claim 1) Independent claim 1 recites the timing of introduction of fuel into the at least one cylinder being maintained at before top dead centre (BTDC). Ex at 6: In light of the specification and prosecution history, this phrase should be construed to mean all fuel introduced into the at least one cylinder during a combustion cycle is controlled to occur BTDC. See, e.g., Ex at 2:9-14, 2:59-63, 3:1-9, Figs. 1, 2; Ex at (11/13/1995 Office Action), (03/08/1996 Response), (04/25/1996 Office Action), (07/25/1996 Amendment). In the pending litigation, the Patent Owner ( PO ) has construed this term to mean start of injection for at least one cylinder is before top-dead center. Under such a construction, however, the terms being maintained are rendered superfluous, improper. Ex at 2. The 365 patent describes that, in typical engines fuel is introduced at approximately 60 BTDC with ignition occurring at approximately 30 BTDC. Ex at 2: It then describes the method according to the invention where fuel is still introduced BTDC (at between 60 and 80 BTDC), while the ignition is retarded at up to about 30 ATDC. Id. at 3:1-

11 9. In other words, ignition is retarded to ATDC, but the timing of introduction of fuel is left unchanged as compared to the timing of fuel introduction in typical engines i.e., it is "maintained at" BTDC. Compare id. Fig. 1 with Fig. 2. In this context, the timing of introduction of fuel into the at least one cylinder being maintained at before top dead centre means that all fuel is introduced into the cylinder BTDC, as in typical engines. This is consistent with the prosecution history for the 365 patent. In order to overcome a prior art rejection, PO amended claim 1 of the 365 patent to include the requirement that the timing of the introduction of fuel into the at least one cylinder being maintained at before top dead center. Ex at (07/25/1996 Amendment). This limitation was added to overcome Morikawa (U.S. Pat. No. 5,050,551) (Ex. 1011), which the Patent Examiner described as retard[ing] ignition timing and increas[ing] fuel injection amount until exhaust or catalyst temperature reaches a predetermined minimum. Ex at 91 (4/25/96 Final Rejection). At no point was Morikawa distinguished by the PO based on the 365 patent merely requiring fuel injection to begin BTDC; rather, the claims were amended to require that fuel injection be "maintained at" BTDC. maximum load (Claim 2) Dependent claim 2 recites maximum load. Ex at 6: In light of the specification, this term should be construed to mean maximum load of the 6

12 engine, which equates to the peak torque output of the engine. See, e.g., Ex at 1:26-40, 2:3-8, 3:10-12, 5:50-57; See also, Ex at 2: additional air is introduced upstream (Claim 12) Dependent claim 12 recites additional air is introduced upstream. Ex at 6: In light of the specification, this term should be construed to mean additional air is introduced into the exhaust system between the exhaust ports of the engine and the catalytic treatment means. See, e.g., Ex at 3:13-19, 4:1-16, 4:32-35, Fig. 3. required operating temperature (Claim 14) Dependent claim 14 recites required operating temperature. Ex at 6: In light of the specification, this term should be construed to mean the temperature at which the catalytic material within the catalytic treatment means is 50% efficient. See, e.g., Ex at 1:10-19, 4:62-5:46. sensed or determined (Claim 14) Dependent claim 14 recites sensed or determined. Ex at 6: In light of the specification, this term should be construed to mean measured by a sensor. See, e.g., Ex at 4:62-5:46. predetermined operating condition (Claim 18) 7

13 Dependent claim 18 recites predetermined operating condition. Ex at 6: In light of the specification, this term should be construed to mean a threshold value, set in advance. See, e.g., Ex at 4:62-5:12, 5: catalytic treatment means (Claims 10 and 14) Claim 10 recites catalytic treatment means. Ex at 6:37-39, 6: This term should be construed as a mean-plus-function claim. In light of the specification, the function recited by the claim is supporting a catalytic material, while the corresponding structure is a structure within the exhaust system that includes catalytic material having a minimum operating temperature for effective treatment of exhaust gases. See, e.g., Ex at 1:10-25, 3:13-19, Fig. 3. fuel is introduced at between 60 to 80 BTDC (Claim 9) Claim 9 recites that fuel is introduced at between 60 to 80 BTDC. Ex at 6: In light of the specification, this phrase should be construed to mean all fuel for a combustion cycle is introduced into a cylinder between 80 and 60 BTDC. See, e.g., Ex at 2:9-14, 2:59-63, 3:1-9, Figs. 1, 2; Ex at (11/13/1995 Office Action), (03/08/1996 Response), (04/25/1996 Final Office Action), (07/25/1996 Amendment). In the pending litigation, the PO has construed this term to mean the start of injection occurs in the window between 80 to 60 degrees before top dead center. Ex at 2. As described above, the 365 patent describes, and claim 1 requires, that all 8

14 fuel is introduced into the cylinder BTDC. Because claim 9 depends from, and cannot be broader than, claim 1, a POSITA would construe fuel is introduced at between 60 to 80 BTDC to require all fuel to be injected at between 80 and 60 BTDC. There is no fair reading of this language, or support in the specification, for a construction that provides for fuel to be injected after 60 as long as injection began between 80 and 60, as allowed for in the PO's proposed construction. III. THE 365 PATENT A. Overview of the Disclosure The 365 patent is directed to a method of operating an internal combustion engine in order to produce high exhaust gas temperatures to reduce undesirable contaminants from exhaust in engines incorporating exhaust systems having a catalytic treatment means. Ex at 1:4-9. The 365 disclosure describes how catalytic material only effectively reduces undesirable emissions contaminants above a minimum operating temperature, known in the art as a light-off temperature. Typically, however, the catalytic material is below its light-off temperature at engine startup, resulting in increased levels of undesirable emissions issuing from the engine s exhaust system. Thus, it is desirable to raise the temperature of the exhaust gas at start-up to reduce the time until the catalytic material reaches the light-off temperature. But at start-up, the engine typically operates at a low load and speed, known as engine idle, where the amount of fuel 9

15 delivered to the engine is small and thus little heat is generated. Id. at 1: The 365 patent acknowledges that methods for raising the temperature of the catalyst were known in the art, including using afterburner devices. Id. at 1: To improve the effectiveness of catalytic material during vehicle startup, the 365 patent describes a method for assisting in maintaining high exhaust gas temperatures, and thus, achieving rapid light-off of the catalytic material in the exhaust system and maintaining the light-off condition during engine operation. Id. at 1: This method comprises retarding the ignition of a gas/fuel mixture within at least one cylinder of the engine to after top dead center (ATDC) and increasing the fuelling rate while ignition is being retarded. Id. at Abstract. In particular, the 365 patent describes that ignition can be retarded up to about 30 ATDC and is preferably retarded to about 20 ATDC. Id. at 1: Alternatively, the patent discloses that ignition retardation can be variable, preferably between 15 to 30 ATDC. Id. at 1:67-2:2. The 365 patent also discloses that while ignition is retarded, the fuelling rate (mg/cylinder/cycle) can be varied and may be greater than 50% of the fuelling rate at maximum load. Id. at 2:3-8. The 365 patent further discloses that fuel is introduced to the combustion chamber at approximately 60 BTDC, and acknowledges that the timing of the introduction in that range is typical in direct injection engines. In fact, fuel is 10

16 introduced most preferably at between 60 and 80 BTDC. Id. at 2:10-13, 2:59-62, 3:2-4, Fig. 1, Fig. 2. Fig. 1 (below left) discloses the cylinder pressure versus crankangle characteristics for a typical direct injected two-stroke internal combustion engine, as was known in the art, while Fig. 2 (below right) shows similar characteristics for a direct injected two-stroke internal combustion engine operated according to the method of the invention. The 365 patent further discloses that combustion preferably occurs under rich conditions with the overall air/fuel ratio being close to the stoichiometric ratio. Id. at 3: Additional oxygen containing gas, such as air, may be introduced upstream of the catalytic treatment means provided in the exhaust system of the engine. This excess air may be introduced to the exhaust system to promote the catalytic oxidation of the exhaust gases in order to further reduce undesirable contaminants therein. Id. at 4:1-3, 4:

17 IV. CLAIMS 1, 2, 5, 9, 10, 12-14, and 18 OF THE 365 PATENT ARE UNPATENTABLE A. Bernhardt anticipates claims 1, 2, 5, 10, 12, 13, and 18 Methods for Fast Catalytic System Warm-Up During Vehicle Cold Starts, to Bernhardt et al. ( Bernhardt ) was published on February 1, Ex Because the earliest effective priority date of claims 1, 2, 5, 9,10, 12-14, and 18, is January 25, 1993, Bernhardt is prior art under 35 U.S.C. 102(b). Bernhardt discloses a method for operating an internal combustion engine incorporating a catalytic system for treating exhaust gases exiting the combustion chamber. The method uses the engine as a preheater for the catalytic system by retarding ignition of the air and fuel mixture in at least one cylinder of the engine until ATDC. Id. at p. 8, col. 2, 1; p. 10, col. 2, 2. Bernhardt also discloses that while the ignition is being retarded to ATDC, an increase in fuel flow raises the exhaust gas enthalpy (i.e., the amount of heat content used or released in a system at constant pressure). In particular, Bernhardt discloses that during spark retard, while the engine is in its idling phase, there is an increased idling speed of the engine, the engine may operate with a fully opened throttle, and may operate with a reciprocal equivalence ratio of 1.0. Id. at p. 12, col. 1, 2, 5; p. 12, col. 2, 3; p. 8, col. 2, 1. Thus, based on this disclosure, a POSITA would understand that Bernhardt also discloses increasing the fuelling rate of said at least one cylinder to a level higher than that required when the engine is operating normally 12

18 Ex , and increasing the fueling rate to greater than 50% of the fueling rate at maximum load, wherein maximum load refers to wide open throttle operation of the engine. Id In particular, based on the engine operation conditions and data disclosed in Bernhardt, a POSITA would have understood Bernhardt to disclose that when ignition is retarded and the engine is operating at a wide open throttle, no load condition for rapidly warming up the catalyst, the necessary fuelling rate is actually 100*2.67/3.2 ~ 83% of the fuelling rate at maximum load, wherein 2.67 is the ratio of the wide open throttle fuelling rate to the no load fuelling rate and 3.2 is the increase in fuelling rate from no load to full load conditions at 1500 rpm under normal operating conditions, as disclosed in Bernhardt. Ex Because Bernhardt discloses implementing conventional internal combustion engines 3, such as a VW 1.6 liter single cylinder engine with a production type combustion chamber, in which fuel and air are mixed prior to ignition, a POSITA would recognize that Bernhardt discloses an engine which operates in a manner in which the timing of the introduction of fuel into the at least one cylinder [is] maintained at BTDC, and in which all fuel in a combustion 3 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:

19 cycle is injected while the cylinder is at BTDC. Ex (emphasis in original). In conventional port fuel injected engines, such as the engine disclosed in Bernhardt, all fuel is introduced before the start of the compression stroke 4, which is typically at about 180 BTDC. Ex , 58. Moreover, in describing several embodiments of the invention in which ignition timing is retarded, including two embodiments in which ignition occurs BTDC, Bernhardt discloses that the only difference between the combustion cycles in those embodiments is the ignition timing. Bernhardt further discloses that other engine parameters such as air/fuel ratio and volumetric efficiency remained equal. Ex at 8 col A POSITA would understand that those other engine parameters disclosed in Bernhardt also refer to fuel injection timing and would recognize that in the embodiments in which ignition occurs BTDC, all fuel must be injected BTDC. Ex , 58. For similar reasons, a POSITA would have understood that all fuel also would have been injected BTDC in the embodiments in which ignition was retarded until ATDC. Id. Thus, a POSITA 4 The engine disclosed in Bernhardt employed a port fuel injection system where fuel is mixed with air in the intake port and introduced into the combustion chamber when the intake valve is opened and the fresh charge is drawn in during the intake stroke. Ex

20 would have understood that Bernhardt discloses that all fuel must be injected into a cylinder while the engine is BTDC. Id. As further detailed in the claim chart below, Bernhardt discloses all elements of claims 1, 2, 5, 10, 12, 13, and 18 of the 365 patent. Claims 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, Exemplary Disclosure of Bernhardt Bernhardt discloses a method of operating an internal combustion engine. Ex at 1 introduction, at 8 col It has been found that under appropriate operating conditions the engine itself is able to act as a preheater for the catalytic system. Warm-up spark retard and an increased idling speed of the engine with full open throttle lead to higher exhaust temperatures and thereby to a greater enthalpy of the exhaust gases, so that the after burning system could be brought rapidly up to its operating temperature. Id. at 8 col To achieve the emission targets... a number of emission concepts with conventional internal combustion engines and emission control systems have been examined. Id. at introduction. Bernhardt discloses retarding the ignition of a gas/fuel mixture within at least one cylinder of the engine to ATDC in respect of the combustion cycle of said at least one cylinder of the engine. Ex at 8 col. 2 1, 3, 4, at 10 col It has been found that under appropriate operating conditions the engine itself is able to act as a preheater for the catalytic system. Warm-up spark 15

21 retard and an increased idling speed of the engine with full open throttle lead to higher exhaust temperatures and thereby to a greater enthalpy of the exhaust gases, so that the after burning system could be brought rapidly up to its operating temperature. Id. at 8 col [T]he total chemical energy of the exhaust gases can be used to increase the exhaust gas enthalpy if the shaft work is zero (W 12 = 0).... In an engine the condition W 12 = 0 can be attained by altering the ignition timing to retard. In this case the energy release rises very late so that the work done on the piston becomes less. Id. at 8 col [1.1] 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 As expected the exhaust gas temperature increased very rapidly when the ignition timing was retarded to a region after T.D.C. 5 Id. at 10 col Bernhardt discloses that 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. Ex at 22 col. 2 2, at 10 col. 2 2, 5 All emphasis in chart added unless otherwise noted. 16

22 increasing the exhaust gas temperature of the engine, at 12 col. 1 2, 5, at 8 col. 2 1, Fig A very elegant method to achieve a rapid warmup is the use of extreme spark retard from the moment of engine start-up by which an increased exhaust gas flow rate with high exhaust enthalpy is secured when the engine operates with stoichiometric mixtures (1/ = ) and fully opened throttle. Id. at 22 col In order to keep the engine running the cylinder charge was repeatedly increased as the timing became more retarded until finally the throttle was fully open. Id. at 10 col The increase in fuel flow corresponding to the increase in volumetric efficiency with spark retard raises the exhaust gas enthalpy. Id. at 12 col The exhaust gas temperature diagram in Figure 11 illustrates the influence of the air/fuel ratio and 6 Bernhardt discloses that the increase in fuel flow corresponding to the increase in volumetric efficiency with spark retard raises the exhaust gas enthalpy and further discloses that this increase in fuel flow occurs during spark retard, while there is increased idling speed of the engine, fully opened throttle, and a reciprocal equivalence ratio equals 1.0 (which occurs at a maximum exhaust gas temperature). Thus, a POSITA would recognize that Bernhardt discloses increasing the fuelling rate of said at least one cylinder to a level higher than that required when the engine is operating normally. Ex

23 the ignition timing on the exhaust gas temperature. The exhaust gas temperature reaches its maximum at a reciprocal equivalence ratio of 1/Φ = 1.0 because the combustion temperature is highest at stoichiometric mixtures. Id. at 12 col [1.2] the timing of the introduction of fuel into the at least one cylinder being maintained at before top It has been found that under appropriate operating conditions the engine itself is able to act as a preheater for the catalytic system. Warm-up spark retard and an increased idling speed of the engine 7 with full open throttle lead to higher exhaust temperatures and thereby to a greater enthalpy of the exhaust gases, so that the after burning system could be brought rapidly up to its operating temperature. Id. at 8 col Bernhardt discloses that the timing of the introduction of fuel into the at least one cylinder is maintained at BTDC. 8 9 Ex at 10 col. 1 2, at 7 Moreover, in a related district court litigation, the PO relied on a similar correlation asserting increasing the fueling rate of said at least one cylinder to a level higher than that required when the engine is operating normally. See Ex at 42 ( data plots above show an increased speed of the engine which requires a higher fueling rate. ). 8 As discussed supra, because Bernhardt discloses implementing conventional internal combustion engines, in which fuel and air are mixed prior to ignition, a POSITA would recognize that Bernhardt discloses an engine which operates such that the timing of the introduction of fuel into the at least one cylinder being 18

24 dead centre (BTDC). 2. A method according to claim 1 wherein the fuelling rate is greater than 50% of the fuelling rate at maximum load. 10 col. 2 2, at introduction. [A] VW 1.6 liter single cylinder engine with a production type combustion chamber was used. A mechanical fuel injection system was chosen with which optimum fuel/air ratio, good mixture preparation, and an independence from the distributor setting was available. Id. at 10 col To achieve the emission targets... a number of emission concepts with conventional internal combustion engines and emission control systems have been examined. Id. at introduction. Bernhardt discloses that the engine may operate at full throttle (which is the equivalent of the fuelling rate at maximum load at the instantaneous engine speed) during ignition retard. Ex 1002 at 22 col. 2 2, at 10 col. 2 2, at 12 col. 1 2, 5, at 12, Fig. maintained at BTDC, and in which all fuel in a combustion cycle is injected while the cylinder is at BTDC. Ex If, however, the Board adopts the PO s construction, advanced during the pending litigation, i.e., start of injection for at least one cylinder is before topdead center, Bernhardt clearly discloses this claim feature. Ex

25 Inter Partes Review A very elegant method to achieve a rapid warmup is the use of extreme spark retard from the moment of engine start-up by which an increased exhaust gas flow rate with high exhaust enthalpy is secured when the engine operates with stoichiometric mixtures (1/ = ) and fully opened throttle. Id. at 22 col The increase in fuel flow corresponding to the increase in volumetric efficiency with spark retard raises the exhaust gas enthalpy. Id. at 12 col In order to keep the engine running the cylinder charge was repeatedly increased as the timing became more retarded until finally the throttle was fully open. Id. at 10 col The exhaust gas temperature reaches its maximum at a reciprocal equivalence ratio of 1/Φ = 1.0 because the combustion temperature is highest at stoichiometric mixtures. Id. at 12 col Because Bernhardt discloses that during spark retard, there is increased idling speed of the engine, fully opened throttle, and a reciprocal equivalence ratio of 1.0, a POSITA would recognize that Bernhardt discloses increasing the fuelling rate to greater than 50% of the fueling rate at maximum load, wherein maximum load refers to that of an engine operating at wide open throttle. Ex In particular, Bernhardt discloses increasing the fueling rate to ~ 83% of the fuelling rate at maximum load. Ex

26 5. A method according claim 1 wherein the ignition is retarded up to about 30 ATDC. 10. A method according to claim 1 wherein the engine includes in an exhaust system thereof a catalytic treatment means supporting a catalytic material therein. 2, Fig. 11. Bernhardt discloses retarding ignition up to about 30 ATDC, and in particular, between 15 and 30. Ex at 8 col Bernhardt characterizes the entire operating regime at 1500 rpm which includes ignition timing events from ~25 BTDC to ~35 ATDC with airfuel ratios (in terms of the reciprocal equivalence ratio) from 0.7 to 1.2. Id. at Figs. 11 and 12. In Fig. 12, Bernhardt shows the relationship between exhaust gas enthalpy and ignition timing from 25 BTDC to 35 ATDC. Ex Bernhardt discloses that the engine includes in an exhaust system thereof a catalyst (the claimed catalytic treatment means ) supporting a catalytic material therein. Ex at Abstract, at 2 col. 1 1, at 22 col During vehicle cold start, emissions, mass flow rates, and catalytic converter space velocities vary by orders of magnitude. Therefore, catalytic exhaust control systems must be designed to operate at high efficiency almost from the moment of engine start-up. Catalysts must reach their operating temperature as quickly as possible. Therefore, the utility of different methods of improving the warm-up characteristics of catalytic systems is illustrated. Id. at Abstract. [M]ethods for improving the warm-up characteristics of catalytic systems was illustrated and the necessity of concurrent and stringent control of NOx and HC/CO emissions, particularly during the first two minutes after vehicle start-up 21

27 12. A method according to claim 10 wherein additional air is introduced upstream of the catalytic treatment means. was discussed. Id. at 22 col Catalytic emission control systems described in this paper operate mainly with the dual-bed catalytic process. The first bed contains the reduction catalyst which reduces the oxides of nitrogen (NO x ) by carbon monoxide (CO), hydrogen (H 2 ), and hydrocarbons (HC) which are present in the exhaust gases. Id. at 2 col Bernhardt discloses introduction of additional air upstream of the catalyst in the exhaust system between the exhaust ports and the catalytic treatment means. Ex at 2 col. 2 bullet 4, at 3 col col. 1 1, at 12 col. 1 6, at 3 Fig. 2, at 2 Fig. 1. One method which promises success is a thermal reactor acting as a preheater for improving catalytic converter performance. The thermal reactor is located at the cylinder heads... secondary air is introduced in front of the thermal reactor at the cylinder head, and the reduction catalyst works as an oxidation catalyst in the starting phase. Due to the burning of high HC and CO emission levels directly after start-up a rapid warmup of the after burning system and therefore a rapid attainment of operating temperature is ensured. Id. at 3 col col [C]hemical energy still contained in the exhaust gas, particularly when there is a shortage of air... [b]y the use of appropriate devices (i.e., thermal reactor with secondary air injection) this energy can be used to warm-up the converters in the startup phase. Id. at 12 col Bernhardt also discloses a specific example 22

28 13. A method according to claim 10 wherein the engine is operated according to said method during cold start of the engine. 18. A method according to claim 1 wherein after a predetermined operating condition has been sensed or determined, said engine involving introducing secondary air upstream of a first bed in a dual bed catalytic converter without using a thermal reactor. Introduce secondary air in front of the first bed during the initial 120 seconds after cold engine start-up; then switch the secondary air to the connecting pipe between NO x and HC/CO beds (staged secondary air). See Fig. 1. Id. at 2 col. 2 bullet 4, Fig. 2. Bernhardt discloses that the engine is operated according to the method during cold start of the engine. Id. at 22 col. 2 1, at 22 col. 2 2, at title, at 6 col [M]ethods for improving the warm-up characteristics of catalytic systems [were] illustrated [as was] the necessity of concurrent and stringent control of NO x and HC/CO emissions, particularly during the first two minutes after vehicle start-up. Id. at 22 col A very elegant method to achieve a rapid warmup is the use of extreme spark retard from the moment of engine start-up by which an increased exhaust gas flow rate with high exhaust enthalpy can be obtained. Id. at 22 col In place of the thermal reactors, monolithic noble metal catalysts could be employed as warm-up elements because the majority of the HC and CO emissions produced by an engine are emitted in the first two minutes of the 42-min. CVS cold-hot test Id. at 6 col Bernhardt discloses that after a predetermined operation condition has been sensed or determined, the engine reverts back to normal operation. Ex at 22 col

29 reverts back to normal operation. [F]rom the standpoint of fuel consumption it is necessary to change the warm-up spark retard as soon as possible to normal operation. Id. 11 B. Bernhardt in combination with Onishi render claim 9 obvious Claim 9 depends from claim 1 and requires that the fuel is introduced at between 60 to 80 BTDC. Ex at 6: As discussed supra, Bernhardt discloses all features of independent claim 1, including introducing fuel BTDC. Bernhardt does not explicitly disclose introducing all fuel within at least one cylinder during a combustion cycle at between 60 to 80 BTDC. To the extent the Board finds Bernhardt does not anticipate claim 9, it would have been obvious to a POSITA to introduce all fuel at between 60 to 80 BTDC. Introducing all fuel at between 60 to 80 BTDC during operation of an internal combustion engine comprising a fuel injection system and catalytic system was well known in the art. For example, U.S. Patent No. 3,572,298 to Onishi ( Onishi ) (Ex. 1005), which issued on March 23, 1971, and is thus prior art under 35 U.S.C. 102(b), discloses injecting all fuel in a combustion cycle in at least one 11 While ignition is being retarded, fuel efficiency and fuel consumption are suffering within an engine, as is the torque. In order to improve fuel efficiency and consumption and to recover torque, it is important for the engine to revert to normal operation as quickly as possible after the predetermined condition, e.g., catalyst light-off temperature, is met. Ex

30 cylinder between about 80 and 60 BTDC. Onishi discloses that the inventive fuel injection method may be carried out over a range from idling (no load) to fullload conditions, ex at 4:6-8, and when the engine is cold. Id. at 9: Ex Onishi discloses that ignition timing can be independent of fuel injection timing and further discloses that the start of fuel injection may occur at about 80 BTDC. Ex at 9:65-10:2. Onishi also discloses that the fuel injection initiation timing may vary over extensive ranges, and thus a POSITA would have understood that fuel injection in a cylinder of the Onishi engine could begin at a crank angle slightly after 80 BTDC. Ex Moreover, under certain conditions, such as idle, in which the engine of Onishi is operating at a no load, or in a low load condition, and is also operating at low speed, the length of injection time, and in turn, the change in the crank shaft angle during injection will be minimal during a combustion cycle. Id. 75. It was well known in the art at the time of the 365 patent invention, for example, that a port fuel injector could have a minimum pulse width (i.e., the length of time the fuel injector is open in a particular cycle) as short as approximately 2.0 ms and a direct injector could have a minimum pulse width of approximately 1.5 ms. Id. 75. The following calculation shows that at an engine speed of 600 rpm, which a POSITA would understand is typical for port injected engines at idle (low end of the idle speed range), and for a 25

31 crank shaft angle change of 20 (i.e., from 80 to 60 BTDC), there would be 5.56 ms to inject all fuel. [(20 crank angle deg)*(1 revolution/360 deg)*(1 min/600 revolutions)*(60 s/min)*(1000 ms/s)] = 5.56 ms A similar calculation made at an engine speed of 800 rpm, which a POSITA would understand is typical for port injected engines at idle (high end of the idle speed range), shows that there would be 4.17 ms to inject all fuel under such conditions. [(20 crank angle deg)*(1 revolution/360 deg)*(1 min/800 revolutions)*(60 s/min)*(1000 ms/s)] = 4.17 ms Finally, at an engine speed of 1200 rpm there would be 2.78 ms to inject all fuel. [(20 crank angle deg)*(1 revolution/360 deg)*(1 min/1200 revolutions)*(60 s/min)*(1000 ms/s)] = 2.78 ms Thus, a POSITA would understand that at each of these exemplary engine speeds all fuel would be injected during the 20 crank shaft angle change under low load or no load conditions, because the minimum pulse width is less than the time available to inject all fuel (based on a crank shaft angle range of 20 ). Id. 75. Therefore, under such circumstances in the engine disclosed in Onishi, if fuel injection started at about 80 BTDC, a POSITA would have understood that all fuel could have been injected by 60 BTDC over at least a portion of the engine operating range. Id. 75. Even in the case of 1500 rpm, as explicitly disclosed in 26

32 Bernhardt and a 2.0 ms minimum injection pulse width, the injection event can be accomplished within the 20 window. It would have been obvious to a POSITA to implement the fuel injection range of Bernhardt with the fuel introduction range of Onishi (which includes introducing all fuel in a cycle between about 80 and 60 BTDC) so as to provide a more optimal air/fuel mixture leading to more assured and stable combustion (Ex at 4:50-73), in part, because Bernhardt discloses heating the catalytic converter using variations in ignition timing and Onishi discloses that ignition and fuel injection may be varied independently during engine idle after cold start. Ex at 9:65-10:2. Moreover, as discussed supra, [w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012); (quoting In re Aller, 220 F.2d 454, 456, (CCPA 1955); see also Ex Further, a POSITA would understand Onishi to disclose some embodiments in which all fuel is introduced to a cylinder within the claimed introduction range of between 60 to 80 BTDC. Id. 76. Claim 9. A method according to claim 1 wherein the fuel is introduced at between 60 to 80 BTDC. Exemplary Disclosure of the Prior Art As discussed above, Bernhardt discloses injecting all fuel BTDC. To the extent that Bernhardt does not disclose or suggest this feature, Onishi discloses injecting all fuel at between 60 to 80 BTDC. Ex at 9:63-10:9. 27

33 [W]hile the initiation angle of fuel injection is varied from 140 deg. ahead of the top dead center to 80 deg. ahead of the same center, i.e., over a range of 60 deg. in terms of the crank angle, the ignition timing may be varied independently thereof and the ignition and operation are made possible without any undesirable outcome, over a range from about 40 deg. ahead of the top dead center to a point past the said center, though it is accompanied by some fluctuations of the maximum pressure and mean effective pressure... fuel injection and ignition may be controlled independently Id. at 9:65-10:2. [T]he engine may be handled almost like an internal combustion engine of electric ignition type and, in addition, can be operated rationally by varying the above factors over extensive ranges. Id. at 10:6-9. C. Bernhardt in combination with Griese render claim 14 obvious Claim 14, which depends from claims 1 and 10, requires that the engine is operated according to said method when the temperature of the catalytic material is sensed or determined to be below a required operating temperature. Ex at 6: As discussed supra, this claim term should be construed to require temperature measurement by a sensor. Bernhardt discloses all features of claim 10 and independent claim 1, including a combustion engine having a fuel injection system and a catalytic treatment means comprising a catalytic material. Bernhardt further discloses that [a]fter the exhaust gas has attained the operating temperature 28

34 required by the catalyst the ignition system will revert to normal. Ex at p. 4, col. 2, 3. Thus, while Bernhardt discloses the measurement or determination of the catalytic material temperature, it does not explicitly disclose that the temperature is measured by a sensor. 12 If the Board finds Bernhardt does not anticipate claim 14, it would have been obvious to a POSITA to measure the temperature of catalytic material for this purpose using a sensor. Using a sensor to measure the temperature of the catalytic material in an exhaust system to determine whether a required operating temperature has been met was well known in the art. For example, Griese, which issued on March 26, 1974, and is thus prior art under 35 U.S.C. 102(b), discloses a thermostat for measuring the temperature of a catalytic material to determine whether it is below a required operating temperature. Ex at 4:34-38; 5:23-29; 5:33-35, It would have been obvious to a POSITA to combine the thermostat of Griese, which measures the temperature of the catalytic material and controls the operation of a switch relating to the same, with the internal combustion engine disclosed in Bernhardt in order to control the operation of the engine to increase the exhaust gas temperature and improve efficiency the exhaust system. Ex Is discussed supra, however, under the PO s proposed construction of this claim term, i.e., that the temperature is measured or identified, Bernhardt clearly meets this claim element and anticipates claim

35 The motivation to implement the thermostat of Griese into the engine and fuel injection system disclosed in Bernhardt would have been to efficiently manage the emission of exhaust gases in a fuel injection system by increasing the temperature of the exhaust gases. The use of automatic temperature sensing would increase the reliability and consistency of fuel injected engine operation and would control and avoid the release of hazardous substances into the atmosphere via exhaust gases. Id Claim 14. A method according to claim 10 wherein the engine is operated according to said method when the temperature of the catalytic material is sensed or determined to be below a required operating temperature. Exemplary Disclosure of the Prior Art Bernhardt discloses sensing the temperature of a catalytic material. Ex at p. 4, col. 2, 3. To the extent that Bernhardt does not explicitly disclose that the temperature is measured by a sensor, U.S. Patent No. 3,799,134 to Griese discloses operating an engine when the temperature of the catalytic material is sensed or determined to be below a required operating temperature. Ex at 4:34-38; 5:23-29; 5:33-35, 5: The cylinder has an input valve 13 and an exhaust valve 14 which passes the exhaust gases into an exhaust gas conduit 15, into which an exhaust gas cleaning arrangement 16, such as an exhaust gas cleaning catalyzator is coupled. Id. at 4:34-38; The thermostat 27 measures the temperature at a location indicated by 26 which, for example, can be in the form of a thermo-element placed, as indicated, into the exhaust gas conduit 15, directly before the exhaust gas cleaning arrangement 16. The thermostat 27 operates then the switching 30

36 means 1 as described in connection with FIG. 1. Id. at 5: During a cold start of the combustion engine, at which the exhaust gas cleaning arrangement 16 is also cold, the thermostat 27 will keep the switch 1 closed. Id. at 5: As soon as the required temperature has been attained, by the cleaning arrangement 16, the thermostat 26, 27 will open the switch 1. Id. at 5: D. Eichler 791 in combination with Bernhardt render obvious claims 1, 2, 5, 10, 12-14, and 18 Eichler 791, identified supra, discloses an internal combustion engine having an electrically controlled fuel injection system. Id. at 1: As discussed supra, Eichler 791 also discloses retarding ignition until ATDC, and in particular, to between 15 to 25 ATDC. Id. at 4: , 5:3-12. To the extent the Board finds claim 1 patentable over Eichler 791 based on claim 1 s fuelling rate increase during ignition retardation feature or all fuel being introduced BTDC feature, it would have been obvious to a POSITA to increase the fuelling rate in the engine disclosed in Eichler 791 in order to increase the amount of torque generated and to introduce all fuel BTDC in order to provide time to sufficiently mix the air/fuel mixture. Increasing fuelling rate and injecting all fuel in such a manner were well known in the art. In particular, Bernhardt, as discussed supra, discloses these claim features. Ex at 22 col. 2 2, at 10 col. 31

37 2 2, at 12 col. 1 2, 5, at 8 col. 2 1, at Fig. 11; see also, supra fn. 6 and Ex , 103. Eichler 791 discloses the concern over the cooling down of the combustion chamber and exhaust system during overrun due to the substantial power drop and increase in noxious hydrocarbon content of the exhaust gases that can be expected on the next acceleration operation. Ex at 1: Moreover, Eichler 791 also discloses that it is desirable to heat [a catalytic] reactor quickly... during slow idle, (id. at 4:4-11), as disclosed in Bernhardt. A POSITA would realize that decreasing the amount of torque generated during slow idle would adversely affect the operation of the engine. Thus, a POSITA would have been motivated to increase fuelling rate, as taught by Bernhardt, during engine retard, because during ignition retard the amount of torque generated by a cylinder in the engine is reduced. Increasing the fuelling rate in turn increases the amount of torque generated, because the cylinder is able to operate at a higher than normal equivalence ratio. Ex As further detailed below, the teachings of Eichler 791 combined with Bernhardt disclose all elements of claims 1, 2, 5, 10, 12-14, and 18 of the 365 patent and render these claims obvious to a POSITA. Ex Claims 1. A method of operating an internal combustion engine comprising Exemplary Disclosure of the Prior Art Eichler 791 discloses a method of operating a combustion engine. Ex 1003 at 1:9-11, In accordance with the present invention there is 32