PTAB

IPR2015-01234

FCA US LLC v. JACOBS VEHICLE SYSTEMS, INC.

Log In

1. Case Identification

2. Patent Overview

  • Title: Compact Lost Motion System for Variable Valve Actuation
  • Brief Description: The ’492 patent discloses a “lost motion” system for providing variable valve actuation in an internal combustion engine. The system employs a master piston and a slave piston in a hydraulic circuit, controlled by a trigger valve, to modify engine valve motion from that prescribed by a cam profile, with a key feature being the orthogonal or perpendicular orientation of the master and slave pistons to achieve a compact design.

3. Grounds for Unpatentability

Ground I: Anticipation of Claims 38-42 under 35 U.S.C. §102

  • Prior Art Relied Upon: Vattaneo (European Application # 0803642).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Vattaneo discloses every element of independent claim 38 and dependent claims 39-42. The core of the argument centered on claim 38’s limitation of a housing with master and slave piston bores that are “substantially perpendicular.” Petitioner argued Vattaneo explicitly teaches a lost motion system where a master piston (tappet 16) is arranged with its axis at 90° to the axis of the slave piston (piston 21) to achieve design flexibility. Petitioner contended this disclosure directly contradicted the Patent Owner’s arguments during prosecution that such an orientation was non-obvious. For the dependent claims, Petitioner argued Vattaneo also disclosed the required trigger valve (solenoid valve 24), its capability for high-speed actuation ("rapidly" closing the valve), its operation in an energized state (as a known solenoid type), and a communicating fluid accumulator (accumulator 27).
    • Key Aspects: Petitioner emphasized that Vattaneo’s express teaching of a 90-degree piston orientation anticipates the very feature that the Examiner previously found to be a matter of design choice, but which the Applicant successfully argued was non-obvious to secure the patent.

Ground II: Claims 40, 41, and 44 are obvious over Vattaneo in view of Urata

  • Prior Art Relied Upon: Vattaneo (European Application # 0803642) and Urata (a 1993 SAE Technical Paper, No. 930820).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that while Vattaneo provides the foundational system, Urata supplies specific teachings for implementing certain components that Vattaneo describes in general terms. For claim 40 (“high speed actuation”), Urata was cited to show a known solenoid valve capable of completing a lift change within one cycle at high engine speeds (6000 rpm), fulfilling the function required by Vattaneo. For claim 41 (“closed… in an energized state”), Urata disclosed a normally open solenoid that is energized to close the oil path—a known configuration. For claim 44 (“means for supplying low pressure hydraulic fluid”), Urata disclosed a complete system with a dedicated oil pump and check valve supplying an accumulator, which Petitioner argued is a known and obvious way to implement the fluid supply for Vattaneo’s accumulator.
    • Motivation to Combine: A POSITA would combine Urata’s teachings with Vattaneo’s system because Vattaneo explicitly states that its solenoid valve can be of “any known type suitable for the function.” Urata described a well-known, suitable solenoid valve for the precise application of variable valve actuation. The combination was presented as a simple substitution of a known element (Urata’s specific solenoid) into a known system (Vattaneo’s) to achieve predictable results.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved using conventional, well-understood components like high-speed solenoids and oil pumps for their intended and known functions within a variable valve train system.

Ground III: Claim 45 is obvious over Vattaneo in view of Sakamoto

  • Prior Art Relied Upon: Vattaneo (European Application # 0803642) and Sakamoto (Japanese Publication # JPH0913926).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claim 45, which adds a “dedicated rocker arm” and a biasing master piston spring to the system of claim 38. Vattaneo teaches the base system but actuates its master piston directly with a cam. Sakamoto was cited for its disclosure of a similar hydraulic variable valve system that explicitly uses a rocker arm (17) and a spring (9) to transfer motion from the cam to the master piston (cam side plunger 8).
    • Motivation to Combine: Petitioner argued that incorporating a rocker arm into Vattaneo’s direct-acting system would have been an obvious design choice. A POSITA would combine the features to gain known advantages, such as increased flexibility in camshaft placement and potential for increased leverage and displacement. Petitioner further argued, using Urata as evidence (which discloses the same system with and without a rocker arm), that the use of a rocker arm is a functionally equivalent and interchangeable alternative to a direct-acting cam follower in such systems. The ’492 patent itself allegedly failed to identify any unique advantage for using the rocker arm.
    • Expectation of Success: The use of rocker arms as cam followers is a fundamental and ubiquitous technology in internal combustion engines. A POSITA would have a very high expectation of success in substituting a well-understood rocker arm linkage for a direct-acting cam mechanism.

4. Key Claim Construction Positions

  • "Adapted to Provide High Speed Actuation" (Claim 40): Petitioner proposed this term be construed as “capable of operating one or more times per engine cycle.” This construction was based on the specification’s description of a controller adapted to operate the system at high speed, defined as “one or more times per engine cycle.”
  • "Means for Supplying Low Pressure Hydraulic Fluid" (Claim 42/44): Petitioner argued this term should be construed under the means-plus-function doctrine as a “fluid communication path from a source of hydraulic fluid.” Petitioner asserted the term lacks sufficient structure to overcome the means-plus-function presumption, and the corresponding structure in the specification is a path from a fluid source.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 38-42, 44, and 45 of Patent 6,883,492 as unpatentable.