PTAB

IPR2015-01258

1) Robert Bosch LLC and 2) Daimler AG v. Orbital Australia Pty Ltd

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1. Case Identification

  • Patent #: 5,655,365
  • Filed: June 16, 2015
  • Petitioner(s): Robert Bosch LLC and Daimler AG
  • Patent Owner(s): Orbital Engine Company Pty Limited
  • Challenged Claims: 1, 2, 5, 9, 10, 12-14, and 18

2. Patent Overview

  • Title: Method of Operating an Internal Combustion Engine
  • Brief Description: The ’365 patent discloses a method for rapidly heating an engine’s catalytic converter during cold starts to reduce harmful emissions. The core of the claimed invention is a method that retards ignition timing to after top dead center (ATDC) while simultaneously increasing the fueling rate above normal levels, but maintaining the timing of fuel introduction to before top dead center (BTDC).

3. Grounds for Unpatentability

Ground 1: Anticipation by Bernhardt - Claims 1, 2, 5, 10, 12, 13, and 18 are anticipated by Bernhardt under 35 U.S.C. §102.

  • Prior Art Relied Upon: Bernhardt (“Methods for Fast Catalytic System Warm-Up During Vehicle Cold Starts,” a 1972 SAE paper).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bernhardt, which describes methods for rapidly heating catalysts during vehicle cold starts, teaches every element of the challenged claims. Bernhardt explicitly discloses retarding ignition to ATDC and increasing the fueling rate (described as "increased idling speed" and operating with a "fully opened throttle") to raise exhaust gas temperature. Petitioner contended that Bernhardt’s implementation in a conventional port-injected engine inherently discloses the limitation of "maintaining" fuel introduction BTDC, as this is the standard operating mode for such engines. Bernhardt was also argued to disclose the dependent claim limitations, including a fueling rate greater than 50% of maximum load, ignition retard up to 30° ATDC, operating during a cold start, and reverting to normal operation once the catalyst is warm.

Ground 2: Obviousness over Eichler '791 and Bernhardt - Claims 1, 2, 5, 10, 12-14, and 18 are obvious over Eichler '791 in view of Bernhardt.

  • Prior Art Relied Upon: Eichler '791 (GB Patent No. 1447791) and Bernhardt.
  • Core Argument for this Ground:
    • Prior Art Mapping: Eichler '791 was asserted to teach a method of heating a catalyst by retarding ignition to between 15° and 25° ATDC during slow idle. Petitioner argued that to the extent Eichler '791 does not explicitly teach increasing the fueling rate while ignition is retarded, this feature is directly supplied by Bernhardt, which teaches increasing fuel to heat the catalyst.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would understand that retarding ignition during slow idle, as taught by Eichler '791, reduces engine torque and can cause instability. To solve this known problem, a POSITA would combine Eichler '791's method with Bernhardt's teaching of increasing the fueling rate. This would counteract the torque loss, maintain stable engine operation, and still achieve the desired catalyst heating effect.
    • Expectation of Success: The combination was presented as a predictable application of a known solution (increasing fuel rate for torque) to a known problem (torque loss from retarded ignition). Therefore, a POSITA would have had a high expectation of success in achieving a stable, catalyst-heating idle mode.

Ground 3: Obviousness over Onishi and Griese - Claims 10, 13, 14, and 18 are obvious over Onishi in view of Griese.

  • Prior Art Relied Upon: Onishi (Patent 3,572,298) and Griese (Patent 3,799,134).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Onishi teaches the fundamental method of claim 1, including retarding ignition past TDC, injecting fuel BTDC, and increasing the fueling rate. However, Onishi does not disclose the specific catalyst-related features of claims 10, 13, 14, and 18. Griese was argued to supply these missing elements, as it discloses an exhaust system with a catalyst, a method for heating it during a cold start, a thermostat to sense temperature, and a control scheme to revert to normal operation after warm-up.
    • Motivation to Combine: A POSITA seeking to apply Onishi's engine control strategy for modern emissions compliance would be motivated to integrate it with a standard catalyst system like that in Griese. The motivation is to use Onishi's engine heating method to quickly bring Griese's catalyst to its light-off temperature, thereby efficiently managing emissions during a cold start.
    • Expectation of Success: Petitioner contended that combining a known engine control strategy (Onishi) with a standard catalyst and sensor arrangement (Griese) was a straightforward integration of known elements for their intended purposes with predictable results.

  • Additional Grounds: Petitioner asserted numerous other grounds for unpatentability. These included an argument that Onishi anticipates claims 1, 2, and 9. Further obviousness challenges were based on various other combinations of Bernhardt, Onishi, Eichler '791, and Griese to address specific claim limitations, such as combining Bernhardt with Onishi to teach a specific fuel injection timing window for claim 9.

4. Key Claim Construction Positions

  • "the timing of introduction of fuel... being maintained at before top dead centre (BTDC)" (Claim 1): Petitioner argued this phrase, added during prosecution to overcome prior art, must be construed to mean that all fuel for a given combustion cycle is introduced BTDC. This construction was asserted to be necessary to give full effect to the term "maintained" and is supported by the prosecution history, where it was used to distinguish a reference that did not require fuel injection to be complete before the piston reached top dead center.
  • "up to about 30° ATDC" (Claim 5): Petitioner proposed construing this term to mean "between 15° and about 30° ATDC." This construction was based on the ’365 patent's specification, which exclusively describes and depicts examples of retarded ignition occurring within this narrower range. Petitioner argued there is no enabling disclosure for ignition retardation between 0° and 15° ATDC that achieves the patent's stated objective.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 5, 9, 10, 12-14, and 18 of Patent 5,655,365 as unpatentable.