BorgWarner Ithaca LLC v. Schaeffler Group USA Inc

1. Case Identification

• Case #: IPR2022-00321
• Patent #: 7,389,756
• Filed: December 23, 2021
• Petitioner(s): BorgWarner Ithaca LLC
• Patent Owner(s): Schaeffler Group USA Inc.
• Challenged Claims: 1, 3-5, 7-20

2. Patent Overview

• Title: Control Valve for Variable Valve Timing
• Brief Description: The ’756 patent discloses a control valve for variably setting the timing of gas exchange valves in an internal combustion engine. The technology focuses on a camshaft adjusting apparatus that uses a control plunger within a pressure medium guide insert to hydraulically control the phase position of a camshaft relative to a crankshaft.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Lehmann - Claims 1, 3, 9-18 are anticipated by or obvious over Lehmann

• Prior Art Relied Upon: Lehmann (German Application # DE 103 46 448 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lehmann, which discloses a camshaft displacement device, teaches every element of the challenged claims. Lehmann's "camshaft 2" was mapped to the claimed "valve housing," its "control piston 5" to the "control plunger," and its "guide sleeve 6" to the "pressure medium guide insert." Petitioner contended that Lehmann’s figures and description disclose the required inflow, outflow, and working connections, as well as the channels formed at the interface between the housing and the insert.
  • Motivation to Combine (for §103 grounds): As a fallback to its anticipation argument under 35 U.S.C. §102, Petitioner asserted that Lehmann is presented under 35 U.S.C. §103 as an abundance of caution. It argued that to the extent different embodiments within Lehmann must be combined to meet all limitations, a POSITA would have been motivated to do so because Lehmann presents them as closely related variations of the same control valve, making their combination predictable.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining features from Lehmann's different embodiments as they were directed to the same purpose of camshaft phase adjustment.

Ground 2: Obviousness over Lehmann in view of Bolz - Claims 4 and 7 are obvious over Lehmann in view of Bolz

• Prior Art Relied Upon: Lehmann (German Application # DE 103 46 448 A1) and Bolz (Application # 2005/0109298).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims 4 and 7, which require the pressure medium guide insert to be constructed from at least one inner and one outer sleeve-shaped component. Petitioner asserted that while Lehmann teaches the overall control valve structure, Bolz teaches fabricating similar inserts for camshaft adjusters from multiple sleeve-shaped parts, such as concentric pipes produced from sheet metal. Bolz explicitly discloses that these parts can be connected via welding, gluing, or crimping.
  • Motivation to Combine: A POSITA would combine Lehmann’s valve design with Bolz’s multi-piece insert construction to achieve manufacturing flexibility and potentially lower costs. Bolz demonstrates that using multi-part constructions for such inserts was a known and viable manufacturing technique in the art.
  • Expectation of Success: Combining these known techniques was argued to be predictable, as it involved applying a known manufacturing method (multi-piece construction from Bolz) to a known device (the control valve of Lehmann).

Ground 3: Obviousness over Lehmann in view of Schafer and Walsh - Claim 5 is obvious over Lehmann in view of Schafer and Walsh

• Prior Art Relied Upon: Lehmann (German Application # DE 103 46 448 A1), Schafer (German Application # DE 103 40 932 A1), and Walsh (Patent 5,325,762).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targeted claim 5, which requires the guide insert to be configured in one piece and made from steel. Petitioner argued Lehmann discloses a one-piece insert. Schafer was cited for its teaching of manufacturing similar valve inserts from bent metal sheets to achieve low cost, long life, and ease of assembly. Walsh was cited for its teaching of manufacturing valve spools and sleeves from stainless steel for its high tolerances and non-magnetic properties.
  • Motivation to Combine: A POSITA would combine these teachings to improve Lehmann's device. The motivation was to fabricate Lehmann's one-piece insert using the cost-effective sheet metal techniques of Schafer and the advantageous material properties (non-magnetic stainless steel) taught by Walsh, resulting in a predictable improvement.
  • Expectation of Success: The application of well-known materials (stainless steel) and manufacturing techniques (rolling, stamping) to a known component would have yielded a predictable result with a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 8 is obvious over Lehmann, Bolz, and Schafer based on using injection molding techniques taught by Schafer; claim 19 is obvious over Lehmann and Winkelmann (Patent 6,526,868) for adding known tongue-and-groove connections; and claim 20 is obvious over Lehmann and Speier (Patent 6,523,513) for using a central screw integral with the valve housing for fastening, as taught by Speier.

4. Key Claim Construction Positions

• "form-fitting means" (Claim 19): Petitioner argued this term should be construed as a means-plus-function term under pre-AIA §112, ¶6. The recited function is "to fix the pressure medium guide insert axially with respect to the valve housing and/or to fix it in a stationary manner in the circumferential direction." Based on the specification, Petitioner contended the corresponding structure is "tongues and grooves" and their equivalents. This construction was central to the argument that Winkelmann's teaching of tongue-and-groove joints renders claim 19 obvious.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. The petition asserted that the parallel district court litigation was in its earliest stages, with no trial date scheduled and minimal work completed. Therefore, an IPR would resolve invalidity issues efficiently and simplify the court case, and a stay of the litigation was likely.
• Petitioner also argued against discretionary denial under 35 U.S.C. §325(d), contending that the primary prior art references relied upon in the petition (Lehmann, Bolz, Schafer, Winkelmann, Speier) were never presented to or considered by the Examiner during the original prosecution of the ’756 patent. Thus, the arguments and art are not the same or substantially the same as what was previously before the Office.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-5, and 7-20 of the ’756 patent as unpatentable.