FCA US LLC v. Jacobs Vehicle

1. Case Identification

• Case #: IPR2015-01370
• Patent #: 6,474,277
• Filed: June 10, 2015
• Petitioner(s): FCA US LLC
• Patent Owner(s): Jacobs Vehicle Systems, Inc.
• Challenged Claims: 36

2. Patent Overview

• Title: METHOD AND APPARATUS FOR VALVE SEATING VELOCITY CONTROL
• Brief Description: The ’277 patent discloses methods and systems for controlling the seating velocity of an engine valve within a hydraulic lost motion system. The technology aims to solve the problem of a valve "free falling" and impacting its seat with excessive force, which can cause erosion and damage. The invention achieves this by providing a mechanism that progressively throttles or restricts the expulsion of hydraulic fluid from a fluid chamber as the valve approaches its closed position, thereby decelerating the valve for a soft seating.

3. Grounds for Unpatentability

Ground 1: Anticipation under 35 U.S.C. §102 - Claim 36 is anticipated by Fujiyoshi.

• Prior Art Relied Upon: Fujiyoshi (European Patent Application No. 0317364).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fujiyoshi, a reference not considered during the original prosecution of the ’277 patent, discloses each and every limitation of independent claim 36. The petition presented a detailed, element-by-element mapping of Fujiyoshi’s disclosed hydraulically operated valve system to the claimed engine valve seating system.
    • Preamble and Basic Components: Petitioner contended that Fujiyoshi’s system inherently meets the preamble by disclosing a valve seating system with a "valve-driving piston (13)" that functions as the claimed "outer tappet." This piston is "bi-directionally displaced" (moving up and down) in response to the filling and draining of hydraulic fluid from a "damper chamber (39)," which corresponds to the claimed "hydraulic chamber."
    • Structural Elements: Petitioner mapped Fujiyoshi’s "cylinder body (12)" to the claimed "housing," with the "lower cylinder bore (33)" serving as the bore for the tappet. The "partition wall (32)" within the cylinder body was identified as the claimed "bore end wall." Fujiyoshi’s piston (13) was shown to be disposed within this bore, adapted to contact an "intake valve (5)" (the "valve train element"), and positioned with an end proximate to the partition wall, fulfilling further claim limitations. The "damper chamber (39)" in Fujiyoshi was argued to be explicitly formed between the piston and the partition wall, directly corresponding to the location of the claimed "hydraulic chamber."
    • Selective Occlusion Mechanism: The central argument focused on the final and most critical limitation: "a hydraulic fill and drain passage... being adapted to be selectively occluded by displacement of the outer tappet." Petitioner asserted that Fujiyoshi’s combination of an "annular recess (52)" and an "oil passage (53)" constitutes this claimed passage. The key disclosure relied upon was Fujiyoshi’s teaching of a "notch (78)" on the piston that cooperates with the upper edge of the annular recess to form a "variable orifice (79)." Petitioner argued that as the piston moves upward during valve closing, this orifice is progressively reduced in size, thereby throttling the flow of hydraulic fluid from the chamber. This progressive restriction, caused by the displacement of the tappet, directly teaches the claimed selective occlusion to moderate the valve closing speed. Petitioner noted Fujiyoshi explains this mechanism is for "moderating any shock during seating to prevent any damage."

4. Key Claim Construction Positions

• Petitioner argued that, for the purpose of the inter partes review (IPR) proceeding, specific constructions for two claim terms under the broadest reasonable interpretation standard were necessary to properly evaluate the anticipation ground.
• "Bi-Directionally Directionally Displaced": Petitioner proposed this term should be construed to mean "moveable in two opposite directions." This construction was based on the ’277 patent’s own description of a piston's downward (valve opening) and upward (valve closing) movement. The construction was important to establish that the reciprocal motion of Fujiyoshi's "valve-driving piston" met this limitation.
• "Hydraulic Fill and Drain Passage": Petitioner proposed this term be construed as "a fluid line through which hydraulic fluid is provided to and from a chamber." This broader construction was presented as necessary to encompass the structure disclosed in Fujiyoshi, where an annular recess and a separate oil passage work in concert to function as the passage. Petitioner argued this functional interpretation was consistent with the specification and crucial for mapping Fujiyoshi's components onto the claim language.

5. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claim 36 of Patent 6,474,277 as unpatentable under 35 U.S.C. §102(b).