DCT

1:22-cv-00370

Robert Bosch GmbH v. Westport Fuel Systems Canada Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-00370, E.D. Va., 04/04/2022
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant, a foreign patentee, is subject to personal jurisdiction in the district under 35 U.S.C. § 293, and there is no other district where the action could have been brought.
  • Core Dispute: Plaintiff Robert Bosch seeks a declaratory judgment that its fuel injectors do not infringe two of Defendant Westport's expired patents related to directly actuated fuel injection valves.
  • Technical Context: The technology concerns high-pressure direct fuel injection systems, which are critical for improving fuel efficiency and reducing emissions in modern internal combustion engines.
  • Key Procedural History: Both patents-in-suit have expired. This declaratory judgment action was filed after Defendant Westport sued several of Plaintiff Bosch's major automotive customers (including Ford, GM, and Mercedes-Benz) in the Eastern District of Texas, alleging that vehicles incorporating the accused Bosch products infringe the patents-in-suit. Defendant served Infringement Contentions in those underlying lawsuits.

Case Timeline

Date Event
1999-10-15 Priority Date for '829 and '138 Patents
2001-10-09 U.S. Patent 6,298,829 Issues
2003-06-10 U.S. Patent 6,575,138 Issues
2021-12-15 Westport files lawsuits against Bosch's customers in Texas
2022-03-02 Westport serves Infringement Contentions in Texas lawsuits
2022-04-04 Bosch files this Declaratory Judgment Complaint

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,298,829 - "Directly Actuated Injection Valve," issued October 9, 2001

The Invention Explained

  • Problem Addressed: The patent describes challenges with prior art fuel injectors. Hydraulically-actuated systems were complex and had response delays, while simpler solenoid-based actuators were often too slow and lacked the force required for high-pressure, high-speed engines. A key challenge was maintaining precise valve movement (or "lift") despite dimensional changes from thermal expansion and component wear. (Compl. ¶10; ’829 Patent, col. 1:49-col. 2:23).
  • The Patented Solution: The invention is a fuel injection valve directly actuated by a fast-acting material (like a piezoelectric stack) coupled with a "passive hydraulic link." This link is a small, sealed hydraulic assembly that transmits the actuator's force to the valve needle. Unlike an active hydraulic system, it does not generate the actuation force itself. Its primary role is to transmit force while also automatically compensating for small dimensional changes, as the fluid within it can slowly redistribute between injection events, effectively "re-zeroing" the valve's position. (’829 Patent, Abstract; col. 7:42-51).
  • Technical Importance: This design sought to combine the speed and precision of direct electronic actuation with a self-correcting mechanism to ensure reliable operation under the demanding temperature and pressure conditions inside an engine. (’829 Patent, col. 4:20-29).

Key Claims at a Glance

  • The complaint identifies independent claim 1 as representative. (Compl. ¶25).
  • Claim 1 of the ’829 Patent requires:
    • A valve housing with a fuel inlet and a nozzle.
    • A valve needle movable between a closed and open position to control fuel flow.
    • A needle spring to bias the valve needle into the closed position.
    • An actuator assembly to apply an opening force stronger than the spring's closing force.
    • A "hydraulic link assembly" comprising a "passive hydraulic link" with a "hydraulic fluid thickness through which said opening and closing forces are transmitted," where the thickness is "substantially constant" during actuation but "adjustable" when not activated to maintain a desired valve lift.
  • The complaint notes that Westport has asserted claims 1-3, 6, 11, 12, 14, 15, and 18-20. (Compl. ¶15).

U.S. Patent No. 6,575,138 - "Directly Actuated Injection Valve," issued June 10, 2003

The Invention Explained

  • Problem Addressed: As a continuation-in-part of the '829 Patent, the '138 Patent addresses the same technical problems of providing fast, reliable, and precise fuel injection in high-pressure environments. (’138 Patent, col. 1:22-col. 2:51).
  • The Patented Solution: The '138 Patent also discloses a directly actuated injector with a passive hydraulic link to transmit force and compensate for wear and thermal expansion. The claims of the '138 Patent are directed toward a different physical configuration, describing an "outward opening" valve member rather than the "valve needle" terminology used in the '829 Patent. The core inventive concept of combining direct actuation with a self-adjusting passive hydraulic link remains central. (’138 Patent, Abstract; col. 3:40-54).
  • Technical Importance: This patent expands the proprietary protection around the core concept to cover alternative mechanical embodiments of the fuel valve itself. (’138 Patent, col. 7:5-14).

Key Claims at a Glance

  • The complaint identifies independent claim 1 as representative. (Compl. ¶33).
  • Claim 1 of the ’138 Patent requires:
    • A valve housing with a fuel inlet and a valve seat.
    • A "valve member" with a sealing surface that is "liftable away from said valve seat" to open the valve.
    • A biasing mechanism applying a closing force to the valve member.
    • An actuator assembly to apply an opening force to move the valve member.
    • A "hydraulic link assembly" with a "passive hydraulic link" and "hydraulic fluid thickness" that transmits opening and closing forces, with the thickness being "substantially constant" during actuation but "adjustable" when not actuated.
  • The complaint notes that Westport has asserted claims 1-3, 6, 13, 14, 17-21, and 26-28. (Compl. ¶15).

III. The Accused Instrumentality

Product Identification

The complaint identifies the "Accused Bosch Products" as including at least the Bosch CRI 3.0 Piezo Injector, part number 0445117010. (Compl. ¶5, 15).

Functionality and Market Context

The complaint describes the accused product as a fuel injection valve. (Compl. ¶11). According to the complaint, Westport has alleged in separate lawsuits that these Bosch injectors are incorporated into vehicles sold by major automotive manufacturers, including Ford, Mercedes-Benz, Nissan, General Motors, and FCA. (Compl. ¶9). Westport’s infringement theory, as characterized by Bosch, contends that these injectors contain a "passive hydraulic link that provides a load path between an actuator and valve." (Compl. ¶10).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint does not contain claim charts but references charts attached as exhibits to complaints in the separate Texas Lawsuits, which were not provided. (Compl. ¶¶12-13). The complaint presents a narrative summary of Bosch's non-infringement position.

For both the '829 and '138 Patents, Bosch's complaint asserts non-infringement based on the contention that the Accused Bosch Products lack a key element of the representative claims. (Compl. ¶¶26, 34). Specifically, Bosch alleges that its products do not include "a hydraulic link assembly comprising a passive hydraulic link having a hydraulic fluid thickness through which said opening and closing forces are transmitted." (Compl. ¶¶26, 34). The core of Bosch's stated non-infringement theory is a factual dispute over the mechanism of action: "In the Accused Bosch Products, opening and closing forces are not transmitted through what Westport Fuel has alleged to be the 'hydraulic fluid thickness.'" (Compl. ¶¶26, 34).

  • Identified Points of Contention:
    • Technical Question: The central dispute appears to be the mechanism by which the Accused Bosch Products transmit force from the piezo actuator to the valve. The case raises the factual question of whether this transmission occurs through a layer of hydraulic fluid in a manner that aligns with the patent's description.
    • Scope Question: The dispute raises the legal question of how broadly the claim term "passive hydraulic link" can be interpreted. The court will need to determine if the term covers any fluid-based force transmission system or if it is limited to the specific self-adjusting, piston-in-cylinder embodiments detailed in the patent specifications.

V. Key Claim Terms for Construction

  • The Term: "a hydraulic link assembly comprising a passive hydraulic link having a hydraulic fluid thickness through which said opening and closing forces are transmitted"
  • Context and Importance: This limitation appears in the independent claims of both patents-in-suit and is the explicit basis for Bosch's non-infringement argument in its complaint. (Compl. ¶¶26, 34). The construction of this term is therefore critical. Practitioners may focus on this term because its interpretation will likely determine whether the force transmission mechanism in the Accused Bosch Products falls within the scope of the claims.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification distinguishes the invention from "active hydraulic operators" by stating the purpose of the link is to "provide a load path" and "merely transmit[] the actuating forces but is not employed to generate an actuating force." (’829 Patent, col. 7:15-20). A party could argue that any component that uses a fluid to passively transmit, rather than actively generate, force meets this definition.
    • Evidence for a Narrower Interpretation: The patent's detailed description discloses a specific embodiment where the link is a sealed hydraulic cylinder containing a piston, and where auto-adjustment occurs via the slow migration of hydraulic fluid through a "diametrical clearance gap" between the piston and cylinder wall "between injection events." (’829 Patent, col. 11:1-11, 46-51). A party could argue that these features are essential to the claimed "passive hydraulic link" and that the term should be limited to structures capable of such "re-zeroing" functionality.

VI. Other Allegations

  • Indirect Infringement: This being a declaratory judgment action by a component supplier, the complaint does not allege indirect infringement. However, the procedural context—Westport's lawsuits against Bosch's downstream customers who incorporate the accused injectors—suggests that any future claim by Westport against Bosch itself would likely involve allegations of induced or contributory infringement. (Compl. ¶¶8-9).
  • Willful Infringement: The complaint does not allege willful infringement. In its prayer for relief, Bosch asks the court for a finding that the case is "exceptional under 35 U.S.C. § 285" and an award of attorneys' fees. (Compl. p. 9). The complaint does not specify the basis for this request.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: How will the court construe the term "passive hydraulic link...through which said opening and closing forces are transmitted"? Will the definition be broad enough to read on the specific force-transfer mechanism used in the accused Bosch injector, or will it be limited to the self-adjusting, piston-in-cylinder embodiments described in the patents?
  • A key evidentiary question will be one of technical operation: What are the specific structures and principles of operation within the Bosch CRI 3.0 Piezo Injector? Does its design, in fact, transmit force through a "hydraulic fluid thickness" that functions as the patents describe, or does it employ a fundamentally different mechanical or physical principle for force transmission and wear compensation?