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

1. Case Identification

• Case #: IPR2015-01258
• 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 startup to reduce harmful emissions. The method involves retarding the ignition timing to after top dead center (ATDC) while simultaneously increasing the fueling rate and maintaining the fuel introduction timing 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 (W.E. Bernhardt, "Methods for Fast Catalytic System Warm-Up During Vehicle Cold Starts," Society of Automotive Engineers, 1972).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Bernhardt, a 1972 technical paper, discloses every element of the challenged claims. Bernhardt explicitly teaches using "extreme spark retard" to a region "after T.D.C." to act as a preheater for a catalytic system during cold starts. While retarding the spark, Bernhardt discloses operating with a "fully opened throttle" and increasing the cylinder charge, which Petitioner asserted corresponds to the claimed "increasing the fuelling rate." Petitioner contended that because Bernhardt describes using conventional port fuel injected engines, a POSITA would understand that fuel introduction is necessarily "maintained at BTDC." Bernhardt also discloses features of the dependent claims, including retarding ignition up to 35° ATDC (meeting claim 5), introducing secondary air upstream of the catalyst (claim 12), and reverting to normal operation once the catalyst is warm (claim 18).

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 under 35 U.S.C. §103.

• Prior Art Relied Upon: Eichler ’791 (GB Patent # 1447791) and Bernhardt (1972 SAE paper).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Eichler ’791 discloses an engine control method that retards ignition to between 15° and 25° ATDC during engine overrun or slow idle to prevent cooling of the combustion chamber and exhaust system. To the extent Eichler ’791 does not explicitly teach increasing the fueling rate or maintaining all fuel injection BTDC, Petitioner argued these features are supplied by Bernhardt. Bernhardt teaches increasing fuel flow during spark retard to raise exhaust gas enthalpy for catalyst warm-up.
  • Motivation to Combine: A POSITA would combine these references to solve a known problem. Eichler ’791 is concerned with preventing the exhaust from cooling during idle, and Bernhardt provides an express solution for actively heating the exhaust and catalyst system. A POSITA would have been motivated to incorporate Bernhardt’s strategy of increasing the fueling rate into the Eichler ’791 system to counteract torque loss from ignition retard and more effectively and quickly heat the catalytic reactor during slow idle, a condition addressed by both references.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as both references address engine operation at idle and employ ignition retard as a core mechanism. Combining Bernhardt's fuel increase with Eichler's control system was presented as a straightforward application of known principles to improve performance.

Ground 3: Obviousness over Onishi and Griese - Claims 10, 13, 14, and 18 are obvious over Onishi in view of Griese under §103.

• Prior Art Relied Upon: Onishi (Patent 3,572,298) and Griese (Patent 3,799,134).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Onishi anticipates the base method of independent claim 1, disclosing an engine where fuel injection and ignition timing are controlled independently, allowing for ignition retard past TDC while increasing the fueling rate and injecting fuel BTDC. However, Onishi does not disclose the catalytic converter system limitations of dependent claims 10, 13, 14, and 18. Griese was cited as supplying these missing elements. Griese discloses a fuel-injected engine with a catalytic converter ("exhaust gas cleaning catalyzator"), a method for operating during cold start, and a thermostat sensor to determine when the catalyst is below its required operating temperature, triggering a specific operating mode and reverting to normal operation once the temperature is reached.
  • Motivation to Combine: A POSITA would have been motivated to combine Griese’s catalytic treatment and control system with Onishi’s engine operation method to ensure Onishi's engine met modern emissions standards. The goal would be to efficiently manage exhaust emissions by adding a temperature-controlled catalyst warm-up strategy (from Griese) to the flexible engine control parameters (from Onishi).
  • Expectation of Success: The combination was portrayed as predictable, as Griese provides a well-understood, sensor-based control system for catalytic converters that could be readily integrated with the engine operation method described in Onishi to improve its emission control performance.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Bernhardt/Onishi and Eichler/Bernhardt/Onishi, and an anticipation challenge based on Onishi alone for claims 1, 2, and 9.

4. Key Claim Construction Positions

• "up to about 30° ATDC" (Claim 5): Petitioner argued this term should be construed to mean "between 15° and about 30° ATDC." This construction is based on the ’365 patent’s specification, which only provides examples and descriptions of ignition retard within that specific range and does not disclose or enable operation between TDC and 15° ATDC.
• "the timing of introduction of fuel... being maintained at before top dead centre (BTDC)" (Claim 1): Petitioner asserted this phrase requires that "all fuel introduced into the at least one cylinder during a combustion cycle is controlled to occur BTDC." This position is based on the prosecution history, where this limitation was added to overcome a rejection over the Morikawa prior art. Petitioner argued that construing it to mean merely the "start of injection" occurs BTDC would render the term "being maintained" superfluous and ignore the clear distinction made during prosecution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 5, 9, 10, 12-14, and 18 of the ’365 patent as unpatentable.