FCA US LLC v. Jacobs Vehicle Systems Inc

1. Case Identification

• Case #: IPR2015-01234
• Patent #: 6,883,492
• Filed: May 20, 2015
• Petitioner(s): FCA US LLC
• Patent Owner(s): Jacobs Vehicle Systems, Inc.
• Challenged Claims: 38-42, 44, and 45

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 uses a master and slave piston circuit in hydraulic communication, where a high-speed trigger valve selectively connects the circuit to an accumulator to absorb hydraulic pressure and create "lost motion," thereby varying the engine valve lift.

3. Grounds for Unpatentability

Ground 1: Anticipation by Vattaneo - Claims 38-42 are anticipated by Vattaneo under 35 U.S.C. §102.

• Prior Art Relied Upon: Vattaneo (European Patent Application No. 0803642).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Vattaneo discloses every element of independent claim 38 and dependent claims 39-42. Specifically, Vattaneo was alleged to teach a lost motion valve actuation system with a housing, a master piston ("tappet 16"), and a slave piston ("piston 21"). Critically, Petitioner asserted that Vattaneo expressly discloses the master and slave piston bores are arranged "substantially perpendicular to each other," teaching that the tappet axis is arranged at 90° with respect to the valve stem axis. For the dependent claims, Petitioner argued Vattaneo discloses a trigger valve ("solenoid valve 24") communicating with the piston bores (claim 39) and an accumulator ("accumulator 27") communicating with the trigger valve (claim 42).
  • Key Aspects: For claims 40 and 41, Petitioner contended that although Vattaneo broadly discloses its solenoid can be of "any known type," a person of ordinary skill in the art (POSITA) would have understood this to include solenoids capable of high-speed actuation (claim 40) and those that are energized to close (claim 41), as these were known types suitable for the described function. Petitioner cited the Urata reference as evidence of what was known to a POSITA at the time regarding such solenoids.

Ground 2: Obviousness over Vattaneo and Urata - Claims 40, 41, and 44 are obvious over Vattaneo in view of Urata.

• Prior Art Relied Upon: Vattaneo (European Patent Application No. 0803642) and Urata (SAE Technical Paper No. 930820, 1993).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Vattaneo discloses the base system as described in Ground 1. Urata, which describes a hydraulic variable-valve train, was asserted to supply teachings that render claims 40, 41, and 44 obvious. Urata allegedly discloses a solenoid valve with "first response characteristics" capable of completing a lift change in one cycle even at 6000 rpm, thus teaching the "high speed actuation" of claim 40. Urata was also said to teach a solenoid that is "activated to close" the oil path, meeting the "closed...in an energized state" limitation of claim 41. Finally, Urata's disclosure of a dedicated oil pump supplying hydraulic fluid to an accumulator via a check valve was argued to teach the "means for supplying low pressure hydraulic fluid to the accumulator" recited in claim 44.
  • Motivation to Combine: A POSITA would combine Urata's well-known solenoid and hydraulic supply components with Vattaneo's system to achieve improved performance. Vattaneo's own disclosure that its solenoid can be of "any known type" suitable for the function would have prompted a POSITA to look to a reference like Urata, which details a known, high-performance solenoid for the exact same purpose. The combination was presented as a simple substitution of one known element for another to obtain predictable results.
  • Expectation of Success: A POSITA would have had a high expectation of success because incorporating a known high-speed solenoid (Urata) into a variable valve actuation system (Vattaneo) would predictably result in a system capable of high-speed operation.

Ground 3: Obviousness over Vattaneo and Sakamoto - Claim 45 is obvious over Vattaneo in view of Sakamoto.

• Prior Art Relied Upon: Vattaneo (European Patent Application No. 0803642) and Sakamoto (Japanese Patent Publication No. H09-013926).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 45 depends from claim 38 and adds a "dedicated rocker arm" and a "master piston spring adapted to bias the master piston towards the rocker arm." While Vattaneo's system is directly actuated by a cam, Sakamoto discloses a variable valve actuator that explicitly uses a rocker arm (17) to transfer motion from a cam to a master piston ("cam side plunger 8") and a spring (9) to bias that plunger toward the rocker arm.
  • Motivation to Combine: A POSITA would combine Sakamoto's rocker arm assembly with Vattaneo's system as a matter of simple and obvious design choice. Using a rocker arm is a well-known technique for transferring cam motion that provides additional design flexibility in engine geometry, such as camshaft placement. Petitioner further argued that the use or non-use of a rocker arm was a known design choice, evidenced by the Urata reference which shows the same variable valve system implemented in two different configurations—one with a rocker arm and one without.
  • Expectation of Success: Incorporating a standard rocker arm assembly into Vattaneo's system would predictably and successfully transfer cam motion to the master piston while allowing for more flexible engine architecture.

4. Key Claim Construction Positions

• "Adapted to Provide High Speed Actuation" (claim 40): Petitioner proposed this term should be construed as "capable of operating one or more times per engine cycle." This construction was based on language in the ’492 patent specification and was central to the argument that the prior art's known solenoids met the claim limitation.
• "Means for Supplying Low Pressure Hydraulic Fluid" (claim 42): Petitioner argued this term should be construed under the means-plus-function doctrine as a "fluid communication path from a source of hydraulic fluid." This construction was used to map Urata's disclosure of an oil pump and fluid path with a check valve onto the claimed "means" in claim 44.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 38-42, 44, and 45 of the ’492 patent as unpatentable.