PTAB
IPR2015-01229
FCA US LLC v. JACOBS VEHICLE SYSTEMS, INC.
1. Case Identification
- Case #: IPR 2015-01229
- Patent #: 5,829,397
- Filed: May 20, 2015
- Petitioner(s): FCA US LLC
- Patent Owner(s): Jacobs Vehicle Systems, Inc.
- Challenged Claims: 32, 33
2. Patent Overview
- Title: System and Method for Controlling the Amount of Lost Motion Between an Engine Valve and a Valve Actuation Means
- Brief Description: The ’397 patent relates to systems and methods for controlling "lost motion" in an internal combustion engine's valve actuation system. The technology uses a variable-length hydraulic linkage interposed between the cam and the engine valve to modify valve motion, aiming to achieve more precise control over valve timing and lift across a wide range of engine operating conditions.
3. Grounds for Unpatentability
Ground 1: Claims 32 and 33 are anticipated under 35 U.S.C. §102(b) by Nohira.
- Prior Art Relied Upon: Nohira (Patent 4,696,265).
- Core Argument:
- Prior Art Mapping: Petitioner argued that Nohira, a reference not before the USPTO during prosecution, discloses each and every limitation of the challenged claims. Independent claim 32 recites a method of controlling lost motion by providing hydraulic fluid to a variable-length tappet and then selectively bleeding that fluid to increase lost motion. The critical limitation, which was added during prosecution to overcome a rejection, requires that the step of selectively bleeding is controlled "independently of the position of the means for opening an engine cylinder valve" (i.e., the cam).
- Petitioner contended that Nohira discloses a lost motion system comprising a first and second valve lifter that define an "oil pressure chamber," which corresponds to the claimed "variable length tappet" with an "internal expansible chamber."
- Crucially, Petitioner argued that Nohira’s system meets the "independently controlled" limitation. Nohira teaches a high-speed, electronically actuated control valve that "continuously and steplessly" controls the bleeding of oil from the pressure chamber. This electronic control, governed by an ECU, allows valve timing and lift to be "freely...controlled" at any point in the engine cycle, untethered from the fixed mechanical profile of the cam. Petitioner asserted this constitutes control that is "independent" of the cam's position.
- For dependent claim 33, which adds the limitation that the tappet is capable of assuming "one of three or more different lengths," Petitioner pointed to figures and text in Nohira. Specifically, Petitioner argued that Nohira’s Figure 6 shows the actuator being energized four separate times during a single cam revolution, thereby creating at least four different valve lift profiles and, consequently, four different effective tappet lengths.
- Key Aspects: The central thrust of the petition was that the specific limitation added by the patentee to secure allowance—independent control—was explicitly taught by the Nohira reference that the examiner did not consider. To bolster this point, Petitioner cited Babitzka (Patent 4,696,265) as evidence that a person of ordinary skill in the art (POSITA) would have understood Nohira’s disclosure of "continuous and free control" to be synonymous with control that is "independent" of the cam follower's position, as Babitzka uses that exact terminology for a similar system.
- Prior Art Mapping: Petitioner argued that Nohira, a reference not before the USPTO during prosecution, discloses each and every limitation of the challenged claims. Independent claim 32 recites a method of controlling lost motion by providing hydraulic fluid to a variable-length tappet and then selectively bleeding that fluid to increase lost motion. The critical limitation, which was added during prosecution to overcome a rejection, requires that the step of selectively bleeding is controlled "independently of the position of the means for opening an engine cylinder valve" (i.e., the cam).
4. Key Claim Construction Positions
- "Means for Opening an Engine Cylinder Valve": Petitioner argued this term from claim 32 is a means-plus-function limitation under §112, paragraph 6. It proposed the construction "any engine or vehicle component from which a force may be derived to open an engine cylinder valve, including a cam." This construction was asserted to be critical for framing the analysis of whether the bleeding control is truly "independent" of the cam's position.
- "Internal Expansible Chamber of a Variable Length Tappet": Petitioner proposed this term should be construed as "a variable volume of space defined between two pistons slidable within one another." This construction was based on the disclosure in the ’397 patent’s specification and was supported with extrinsic evidence from a later patent assigned to the Patent Owner. The proposed construction was essential for mapping Nohira's structure, which features two sliding lifters defining an oil pressure chamber, onto the language of the challenged claims.
5. Key Technical Contentions (Beyond Claim Construction)
- A central technical contention was that the electronic control of a high-speed hydraulic valve inherently decouples valve actuation from the fixed mechanical profile of a cam. Petitioner argued that by controlling the hydraulic bleed via electronic pulses, such as through pulse width modulation as taught by Nohira, a POSITA would understand that the timing and amount of bleed are dictated by an electronic controller, not the cam's rotational position. Therefore, the resulting valve lift and timing are functionally independent of the cam's mechanical motion, even though the cam provides the initial actuating force.
6. Relief Requested
- Petitioner requested the institution of an inter partes review and the cancellation of claims 32 and 33 of Patent 5,829,397 as unpatentable under 35 U.S.C. § 102(b).