Trials@uspto.gov
`571-272-7822
`
`Paper8
`Entered: December 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FCA US LLC,
`Petitioner,
`
`V.
`
`JACOBS VEHICLE SYSTEMS,INC.,
`Patent Owner.
`
`Case IPR2015-01337
`Patent 8,776,738 B2
`
`Before RICHARD E. RICE, SCOTT A. DANIELS,and
`JAMESA. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper8
`Entered: December 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FCA US LLC,
`Petitioner,
`
`V.
`
`JACOBS VEHICLE SYSTEMS,INC.,
`Patent Owner.
`
`Case IPR2015-01337
`Patent 8,776,738 B2
`
`Before RICHARD E. RICE, SCOTT A. DANIELS,and
`JAMESA. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`Petitioner, FCA US LLC,filed a Petition requesting an inter partes
`n
`a
`:
`5
`1299
`1, 35-50, aiid 53-56 of U.S. Paient No.
`Q@umiS
`5, J—/, LI7Z2,
`
`Qa
`
`1,
`
`8,776,738 B2 (“the ’738 patent”). Paper 2 (“Pet.”). Patent Owner, Jacobs
`
`Vehicle Systems,Inc., filed a Preliminary Response. Paper 6 (“Prelim.
`
`Resp.”). We havejurisdiction under 35 U.S.C. § 314(a), which provides that
`
`an inter partes review maynotbeinstituted “unless .
`
`.
`
`. the information
`
`presentedin the petition .
`
`.
`
`. shows that there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims
`
`challengedin the petition.”
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`conclude the information presented does not show there is a reasonable
`
`likelihood that Petitioner would prevail in showing the unpatentability of the
`
`challenged claims. Accordingly, we do not authorize an inter partes review
`
`to be instituted as to the ’738 patent.
`
`I.
`
`BACKGROUND
`
`A.
`
`The ’738 Patent (Ex. 1001)
`
`The ’738 patent, titled “Variable Lost Motion Valve Actuator and
`
`Method,”issued July 15, 2014, from U.S. Application No. 14/139,308, filed
`
`December23, 2013. Ex. 1001. The ’738 patentis directed to a variable
`
`valve actuation system for an internal combustion engine, and associated
`control strategies. Ex. 1001, Abstract.
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`Figure 53 of the ’738 patent is reproduced below.
`
`FIG. 53
`
`Figure 53 shows an “embodiment of a multiple accumulator piston low
`
`pressure accumulator system whichprovides acceptable fluid receipt and
`
`refill.” Id. at 32:62-64. The accumulator system includes low pressure
`
`hydraulic fluid (oil) supply 380, including pump381, fluid reservoir 382,
`
`and optional check valve 350. Jd. at 32:65-67. Output from pump381 is
`
`connected to a shared accumulator system supply gallery 384. /d. at 33:1—2.
`
`The supply gallery 384 is connected to passage 348 associated with each
`
`individual accumulator piston 341 in the system. /d. at 33:24. Trigger
`
`valve 330 controls the flow of fluid in accumulator 340 to and from control
`piston bore 324. (/d. at 33:46). According to Patent Owner, Figure 53
`showsthe mannerin which “a plurality of solenoid trigger valves are
`
`coupled to the shared supply gallery.” Prelim. Resp.7.
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`B.
`
`Illustrative Claim
`
`Claim | of the ’738 patent is independent and claims 3, 5—7, 13-22,
`
`31, 35-50, and 53-56 ultimately depend from claim 1. Claim 1 of the ’738
`
`patentis illustrative of the claimsat issue:
`
`1. A valve actuation system for controlling at least one
`engine valve, comprising:
`a) a hydraulic lost motion system having:
`(i)
`a first piston disposed in a first piston chamber,
`being moveable by an engine cam shaft,
`(ii) asecond piston disposed in a second piston
`chamber;
`(iii) at least one engine valve being moveable by the
`secondpiston; and
`(iv) a hydraulic circuit configured to permit hydraulic
`communication between thefirst piston chamber
`and the second piston chamber;
`b) a plurality of solenoid valves in hydraulic communication
`with the hydraulic circuit; and
`c) a plurality of accumulators, each holding a supply offluid
`underpressure, each ofthe plurality of solenoid valves
`having at least one dedicated accumulator disposed
`proximate thereto.
`
`Id. at 49:7-17.
`
`C.
`
`‘Related Proceedings
`
`Petitioner states that the ’738 patent is a subject of Civil Action
`
`Number 3:15cv350, filed March 9, 2015, in the United States District Court,
`
`District of Connecticut, and is also a subject of Investigation No. 337-TA-
`
`954, filed March 10, 2015, in the United States International Trade
`
`Commission. Pet. 55.
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`D._—Asserted Grounds of Unpatentability
`
`Petitioner contendsthat claims 1, 3, 5—7, 13-22, 31, 35-50, and 53-56
`
`are unpatentable based on the following grounds:
`Levis
`
` c
`
`
`ChallengedClaim(s)=
`Reference[s]2 88
`
`10206) [1 3, and 5-7
`
`
`Bowman, Wunning,’ and Sono’_|§ 103(a) eyes 31, 35-50, and
`
`
`
`
`
`Bowman, Wunning, Sono, and
`Stevenson’
`°
`§ 103(a)
`18-22
`
`
`
`
`Il. ANALYSIS
`
`A.
`
`Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`reasonableconstruction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs.,
`LLC, 793 F.3d 1268, 1277-79 (Fed. Cir. 2015) (“We conclude that Congress
`implicitly approved the broadest reasonable interpretation standard in
`enacting the AIA.”), reh’g en banc denied, 793 F.3d 1297 (Fed. Cir. 2015),
`
`petition for cert. filed, No. 15-446 (U.S. Oct. 6, 2015).
`
`1.
`
`“plurality ofsolenoid valves in hydraulic communication with
`the hydraulic circuit”
`Petitioner contendsthat “plurality of solenoid valves in hydraulic
`communication with the hydraulic circuit,’ means a “plurality of solenoids
`valves connected to the hydraulic circuit by fluid paths and/or a supply
`
`' US 5,127,375, issued July 7, 1992 (Ex. 1004, “Bowman”)
`7 US 5,201,296, issued April 13, 1993 (Ex. 1005, “Wunning”)
`3 US 5,140,955, issued August 25, 1992 (Ex. 1006, “Sono”)
`* US 4,368,705, issued January 18, 1983 (Ex. 1007, “Stevenson’’)
`5
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`gallery.” Pet. 14. Patent Ownerstates that it disagrees, and instead proposes
`
`a meaning of “more than one solenoid valve connected to permit fluid flow
`
`into and out of the hydraulic circuit.” Prelim. Resp. 11. Patent Owner does
`
`not explain how its proposed construction differs substantively from
`
`Petitioner’s proposed construction. .We determine no express construction is
`
`necessary for purposes of this Decision.
`
`2.
`
`“normal mode”and “transient mode”
`
`Patent Owneralso proposesconstructions for both “normal mode”
`
`and “transient mode.” Prelim. Resp. 12-13. We determine no express
`
`construction is necessary for purposesofthis Decision.
`
`B._Asserted Anticipation by Bowman
`
`Petitioner asserts independent claim 1, and dependent claims 3 and 5—
`
`7 are anticipated by Bowman. Pet. 15—25. Petitioner provides a claim chart
`
`showing howit contends each limitation of claims 1, 3, and 5—7 is disclosed
`
`by Bowman.
`
`1.
`
`Summary ofBowman (Ex. 1004)
`
`Bowman,titled “Hydraulic Valve Control System for Internal
`Combustion Engine,” concerns“a modular hydraulic valve actuating
`assembly for use in association with a single combustion chamberin a
`
`multicylinder internal combustion engine cylinder head.” Ex. 1004,
`
`Abstract.
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`Figure 1 of Bowmanis reproduced below.
`
`Sexier
` eZ) Q
`.ye SyTe
`
`
`Figure 1 is a “generally schematic and explodedrepresentation of the
`
`hydraulic controlled valvelifter assembly for an engine valve,” as disclosed
`
`by Bowman. /d. at 3:27-30. Figure 1 depicts the general hydraulic system
`
`of the valve lifter cartridge module 10, including valve actuator assembly 14,
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`solenoid valve assembly 16, and accumulator 18. /d. at 3:61-68.
`
`Cylindrical sleeve member 96 constitutes a master piston. id. at 5:36—38.
`
`Within the actuator housing there is an actuator piston assembly 28, which
`
`functions as a slave piston. Jd. at 4:9-11. Hydraulic fluid may be pumped
`
`through hydraulic passage 102 from hydraulic cavity 100 to the actuator
`
`assembly. Jd. at 5:49-51. “A one-way acting check valve 125 is located
`
`between anoil gallery generally designated by the numeral 126 and the
`
`cavity 120 of the solenoid check valve.” Jd. at 6:9-11.
`Figures 3 and 4 of Bowmanare reproducedbelow.
`
`A
`
`Aa
`Jel
`
`NJ
`
`Figure 3 is “a side elevation view of the cartridge-type hydraulically
`
`actuated valve control system in combination with an actuating camshaft and
`cylinder head assembly,”andfigure4 is “a perspective view ofa cylinder
`
`block showing a plurality of cartridge-type hydraulically actuated valve
`
`control systems mountedserially, in combination with each respective
`
`cylinder within the block,” as disclosed by Bowman. /d. at 3:35—43. As
`with figure 1, figures 3 and 4 depict solenoid valve assembly 16 and
`accumulator 18. In addition to valve lift cartridge module 10, figure 4
`8
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`includes engine valve lift cams 22. With respect to figure 4, Bowmanstates
`
`“Tejach cartridge module is separately bolted to the cylinder head and
`
`comprises, as described above, a complete unit in and ofitself.” /d. at 6:54—
`
`56.
`
`2.
`
`Claim 1
`
`Petitioner contends that each element of claim 1 is disclosed by
`
`Bowman, as summarizedin the table below.
`
`proximate thereto
`
`chamber, being moveable by an
`ine cam shaft
`a second piston disposed in a second|slave piston 28
`piston chamber
`at least one engine valve being
`moveable by
`the second piston
`a hydraulic circuit configured to
`permit hydraulic communication
`betweenthe first piston chamber and
`the second piston chamber;
`a plurality of solenoid valves in
`hydraulic communication with the
`hydraulic circuit
`a plurality of accumulators, each
`holding a supply of fluid under
`pressure, each ofthe plurality of
`solenoid valves having at least one
`dedicated accumulator disposed
`
`a plurality of solenoid valve
`assemblies 16 as shownin figures 3
`and 4
`a plurality of accumulators 18, as
`shownin figures 3 and 4, proximate
`to solenoid valve assemblies 16
`
`engine valve 200 moveable by slave
`piston 28
`hydraulic passage 102 between
`master piston 96 andslave piston 28
`
`Althoughthe Petition includes a claim chart purporting to map each
`
`element of claim 1 to Bowman,the claim chart is accompanied byvirtually
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`no explanation beyond the information contained in the summary table and
`cee
`els on Bowmanfigures 3 and 4 pointing to “Solenoid” and
`
`“Accumulator.”
`
`AlthoughPetitioner does not direct us to any supporting expert
`
`testimony, we have also reviewed the Declaration of John J. Moskwa
`
`submitted along with the Petition, and find that it provides virtually no
`
`support for Petitioner’s contention that claim 1 is anticipated by Bowman
`
`beyond the statementthat the declarant agrees “that the claim chart shows
`
`where every element of claim 1 of the ’738 Patent is disclosed in Bowman.”
`
`Ex. 1002, § 28. We afford such conclusory testimony little weight.
`
`Ofparticular concern is the limitation requiring “a plurality of
`
`solenoid valves in hydraulic communication with the hydraulic circuit.”
`
`There is no dispute that the claim requires more than one solenoid valve
`
`connected to a single hydraulic circuit. Petitioner identifies hydraulic
`
`passage 102 of Bowmanascorrespondingto the claimed “hydrauliccircuit.”
`
`Pet. 15. Petitioner, however,fails to explain how passage 102 of Bowman
`
`(or any other passage) is connected to a plurality of solenoid valves, as
`
`further required by claim 1.
`
`A petition must identify how the construed claim is unpatenable, as
`
`well as the relevance of the evidence to the challenge raised. 37 C.F.R.
`
`§ 42.104 (b). Although Petitioner providesa string citation in its claim chart
`
`to various statements in Bowman purportedly correspondingto the claimed
`
`“plurality of solenoid valves in hydraulic communication with the hydraulic
`
`circuit,” Petitioner offers no explanation relating the citations to the claimed
`
`language, and noneis readily apparent. See Pet. 19-20. “A claim is
`
`10
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`anticipated only if each and every elementasset forth in the claim is found,
`either expresslyor inherently described, in a single prior ari reference.”
`
`Verdegaal Bros., Inc. v. Union Oil Co. ofCal., 814 F.2d 628, 631 (Fed. Cir.
`
`1987) (citation omitted). Although figure 4 of Bowman showsa plurality of
`cartridge-type hydraulically actuated valve control systems mountedserially,
`Bowmanexpressly states that each cartridge module is “a complete unit in
`
`and ofitself.” Petitioner has not shown that Bowmandiscloses“a plurality
`
`of solenoid valves in hydraulic communication with the hydraulic circuit,”
`
`as required by claim 1.
`
`.
`
`Additionally, challenged claims 3, 5—7, 13-22, 31, 35-50, and 53-56
`
`all depend from claim 1. Each of the groundsof unpatentability asserted by
`Petitioner against these dependent claimsrelies upon Petitioner’s contention
`
`that Bowmandiscloses the features of claim 1. Accordingly, we determine
`
`that the information presented doesnot establish a reasonable likelihood that
`
`Petitioner would prevail in showing that at least one challenged claim of the
`
`’738 patent is unpatentable based on the asserted grounds.
`
`Ill. ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthatthe Petition to institute inter partes review of the
`
`°738 patent is DENIED,and notrial is instituted.
`
`11
`
`
`
`IPR2015-01337
`Patent 8,776,738 B2
`
`PETITIONER:
`
`Tenenb iwi ~
`DLIGQUN WiLNO
`
`FCA-JVS@venable.com
`
`Jonathan Falkler
`JLFalkler@venable.com
`
`PATENT OWNERS:
`
`Andrew Riddles
`DP-IPR-JVS@DAYPITNEY.COM
`
`Brian Pollack
`bpollack@daypitney.com
`
`Cecilia Zhang Stiber
`cestiber@daypitney.com
`
`
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