FCA US LLCv.JACOBS VEHICLE SYSTEMS, INC.

Patent Trial and Appeal Board

Dec 18, 2015

14139308 (P.T.A.B. Dec. 18, 2015)

Trials@uspto.gov Paper 8
571-272-7822 Entered: December 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FCA US LLC,
Petitioner,

v.

JACOBS VEHICLE SYSTEMS, INC.,
Patent Owner.
____________

Case IPR2015-01337
Patent 8,776,738 B2
____________

Before RICHARD E. RICE, SCOTT A. DANIELS, and
JAMES A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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Petitioner, FCA US LLC, filed a Petition requesting an inter partes
review of claims 1, 3, 5–7, 13–22, 31, 35–50, and 53–56 of U.S. Patent No.
8,776,738 B2 (“the ’738 patent”). Paper 2 (“Pet.”). Patent Owner, Jacobs
Vehicle Systems, Inc., filed a Preliminary Response. Paper 6 (“Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
an inter partes review may not be instituted “unless . . . the information
presented in the petition . . . shows that there is a reasonable likelihood that
the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.”
Upon consideration of the Petition and the Preliminary Response, we
conclude the information presented does not show there is a reasonable
likelihood that Petitioner would prevail in showing the unpatentability of the
challenged claims. Accordingly, we do not authorize an inter partes review
to be instituted as to the ’738 patent.
I. BACKGROUND
A. The ’738 Patent (Ex. 1001)
The ’738 patent, titled “Variable Lost Motion Valve Actuator and
Method,” issued July 15, 2014, from U.S. Application No. 14/139,308, filed
December 23, 2013. Ex. 1001. The ’738 patent is directed to a variable
valve actuation system for an internal combustion engine, and associated
control strategies. Ex. 1001, Abstract.
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Figure 53 of the ’738 patent is reproduced below.

Figure 53 shows an “embodiment of a multiple accumulator piston low
pressure accumulator system which provides acceptable fluid receipt and
refill.” Id. at 32:62–64. The accumulator system includes low pressure
hydraulic fluid (oil) supply 380, including pump 381, fluid reservoir 382,
and optional check valve 350. Id. at 32:65–67. Output from pump 381 is
connected to a shared accumulator system supply gallery 384. Id. at 33:1–2.
The supply gallery 384 is connected to passage 348 associated with each
individual accumulator piston 341 in the system. Id. at 33:2–4. Trigger
valve 330 controls the flow of fluid in accumulator 340 to and from control
piston bore 324. (Id. at 33:4–6). According to Patent Owner, Figure 53
shows the manner in which “a plurality of solenoid trigger valves are
coupled to the shared supply gallery.” Prelim. Resp. 7.

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B. Illustrative Claim
Claim 1 of the ’738 patent is independent and claims 3, 5–7, 13–22,
31, 35–50, and 53–56 ultimately depend from claim 1. Claim 1 of the ’738
patent is illustrative of the claims at issue:
1. A valve actuation system for controlling at least one
engine valve, comprising:
a) a hydraulic lost motion system having:
(i) a first piston disposed in a first piston chamber,
being moveable by an engine cam shaft,
(ii) a second piston disposed in a second piston
chamber;
(iii) at least one engine valve being moveable by the
second piston; and
(iv) a hydraulic circuit configured to permit hydraulic
communication between the first piston chamber
and the second piston chamber;
b) a plurality of solenoid valves in hydraulic communication
with the hydraulic circuit; and
c) a plurality of accumulators, each holding a supply of fluid
under pressure, each of the plurality of solenoid valves
having at least one dedicated accumulator disposed
proximate thereto.

Id. at 49:7–17.
C. Related Proceedings
Petitioner states that the ’738 patent is a subject of Civil Action
Number 3:15cv350, filed March 9, 2015, in the United States District Court,
District of Connecticut, and is also a subject of Investigation No. 337-TA-
954, filed March 10, 2015, in the United States International Trade
Commission. Pet. 55.

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D. Asserted Grounds of Unpatentability
Petitioner contends that claims 1, 3, 5–7, 13–22, 31, 35–50, and 53–56
are unpatentable based on the following grounds:
Reference[s] Basis Challenged Claim(s)
Bowman
1
§ 102(b) 1, 3, and 5–7
Bowman, Wunning,
2
and Sono
3
§ 103(a)
13–22, 31, 35–50, and
53–56
Bowman, Wunning, Sono, and
Stevenson
4

§ 103(a) 18–22

II. ANALYSIS
A. Claim Construction
The Board interprets claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs.,
LLC, 793 F.3d 1268, 1277–79 (Fed. Cir. 2015) (“We conclude that Congress
implicitly approved the broadest reasonable interpretation standard in
enacting the AIA.”), reh’g en banc denied, 793 F.3d 1297 (Fed. Cir. 2015),
petition for cert. filed, No. 15-446 (U.S. Oct. 6, 2015).
1. “plurality of solenoid valves in hydraulic communication with
the hydraulic circuit”
Petitioner contends that “plurality of solenoid valves in hydraulic
communication with the hydraulic circuit,” means a “plurality of solenoids
valves connected to the hydraulic circuit by fluid paths and/or a supply

1
US 5,127,375, issued July 7, 1992 (Ex. 1004, “Bowman”)
2
US 5,201,296, issued April 13, 1993 (Ex. 1005, “Wunning”)
3
US 5,140,955, issued August 25, 1992 (Ex. 1006, “Sono”)
4
US 4,368,705, issued January 18, 1983 (Ex. 1007, “Stevenson”)
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gallery.” Pet. 14. Patent Owner states that it disagrees, and instead proposes
a meaning of “more than one solenoid valve connected to permit fluid flow
into and out of the hydraulic circuit.” Prelim. Resp. 11. Patent Owner does
not explain how its proposed construction differs substantively from
Petitioner’s proposed construction. We determine no express construction is
necessary for purposes of this Decision.
2. “normal mode”and “transient mode”
Patent Owner also proposes constructions for both “normal mode”
and “transient mode.” Prelim. Resp. 12–13. We determine no express
construction is necessary for purposes of this Decision.
B. Asserted Anticipation by Bowman
Petitioner asserts independent claim 1, and dependent claims 3 and 5–
7 are anticipated by Bowman. Pet. 15–25. Petitioner provides a claim chart
showing how it contends each limitation of claims 1, 3, and 5–7 is disclosed
by Bowman.
1. Summary of Bowman (Ex. 1004)
Bowman, titled “Hydraulic Valve Control System for Internal
Combustion Engine,” concerns “a modular hydraulic valve actuating
assembly for use in association with a single combustion chamber in a
multicylinder internal combustion engine cylinder head.” Ex. 1004,
Abstract.
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Figure 1 of Bowman is reproduced below.

Figure 1 is a “generally schematic and exploded representation of the
hydraulic controlled valve lifter assembly for an engine valve,” as disclosed
by Bowman. Id. at 3:27–30. Figure 1 depicts the general hydraulic system
of the valve lifter cartridge module 10, including valve actuator assembly 14,
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solenoid valve assembly 16, and accumulator 18. Id. at 3:61–68.
Cylindrical sleeve member 96 constitutes a master piston. Id. at 5:36–38.
Within the actuator housing there is an actuator piston assembly 28, which
functions as a slave piston. Id. at 4:9–11. Hydraulic fluid may be pumped
through hydraulic passage 102 from hydraulic cavity 100 to the actuator
assembly. Id. at 5:49–51. “A one-way acting check valve 125 is located
between an oil gallery generally designated by the numeral 126 and the
cavity 120 of the solenoid check valve.” Id. at 6:9–11.
Figures 3 and 4 of Bowman are reproduced below.

Figure 3 is “a side elevation view of the cartridge-type hydraulically
actuated valve control system in combination with an actuating camshaft and
cylinder head assembly,” and figure 4 is “a perspective view of a cylinder
block showing a plurality of cartridge-type hydraulically actuated valve
control systems mounted serially, in combination with each respective
cylinder within the block,” as disclosed by Bowman. Id. at 3:35–43. As
with figure 1, figures 3 and 4 depict solenoid valve assembly 16 and
accumulator 18. In addition to valve lift cartridge module 10, figure 4
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includes engine valve lift cams 22. With respect to figure 4, Bowman states
“[e]ach cartridge module is separately bolted to the cylinder head and
comprises, as described above, a complete unit in and of itself.” Id. at 6:54–
56.
2. Claim 1
Petitioner contends that each element of claim 1 is disclosed by
Bowman, as summarized in the table below.
Claim 1 Bowman
a first piston disposed in a first piston
chamber, being moveable by an
engine cam shaft
master piston 96 moveable by cam
22
a second piston disposed in a second
piston chamber
slave piston 28
at least one engine valve being
moveable by the second piston
engine valve 200 moveable by slave
piston 28
a hydraulic circuit configured to
permit hydraulic communication
between the first piston chamber and
the second piston chamber;
hydraulic passage 102 between
master piston 96 and slave piston 28
a plurality of solenoid valves in
hydraulic communication with the
hydraulic circuit
a plurality of solenoid valve
assemblies 16 as shown in figures 3
and 4
a plurality of accumulators, each
holding a supply of fluid under
pressure, each of the plurality of
solenoid valves having at least one
dedicated accumulator disposed
proximate thereto
a plurality of accumulators 18, as
shown in figures 3 and 4, proximate
to solenoid valve assemblies 16

Although the Petition includes a claim chart purporting to map each
element of claim 1 to Bowman, the claim chart is accompanied by virtually
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no explanation beyond the information contained in the summary table and
labels on Bowman figures 3 and 4 pointing to “Solenoid” and
“Accumulator.”
Although Petitioner does not direct us to any supporting expert
testimony, we have also reviewed the Declaration of John J. Moskwa
submitted along with the Petition, and find that it provides virtually no
support for Petitioner’s contention that claim 1 is anticipated by Bowman
beyond the statement that the declarant agrees “that the claim chart shows
where every element of claim 1 of the ’738 Patent is disclosed in Bowman.”
Ex. 1002, ¶ 28. We afford such conclusory testimony little weight.
Of particular concern is the limitation requiring “a plurality of
solenoid valves in hydraulic communication with the hydraulic circuit.”
There is no dispute that the claim requires more than one solenoid valve
connected to a single hydraulic circuit. Petitioner identifies hydraulic
passage 102 of Bowman as corresponding to the claimed “hydraulic circuit.”
Pet. 15. Petitioner, however, fails to explain how passage 102 of Bowman
(or any other passage) is connected to a plurality of solenoid valves, as
further required by claim 1.
A petition must identify how the construed claim is unpatenable, as
well as the relevance of the evidence to the challenge raised. 37 C.F.R.
§ 42.104 (b). Although Petitioner provides a string citation in its claim chart
to various statements in Bowman purportedly corresponding to the claimed
“plurality of solenoid valves in hydraulic communication with the hydraulic
circuit,” Petitioner offers no explanation relating the citations to the claimed
language, and none is readily apparent. See Pet. 19–20. “A claim is
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anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987) (citation omitted). Although figure 4 of Bowman shows a plurality of
cartridge-type hydraulically actuated valve control systems mounted serially,
Bowman expressly states that each cartridge module is “a complete unit in
and of itself.” Petitioner has not shown that Bowman discloses “a plurality
of solenoid valves in hydraulic communication with the hydraulic circuit,”
as required by claim 1.
Additionally, challenged claims 3, 5–7, 13–22, 31, 35–50, and 53–56
all depend from claim 1. Each of the grounds of unpatentability asserted by
Petitioner against these dependent claims relies upon Petitioner’s contention
that Bowman discloses the features of claim 1. Accordingly, we determine
that the information presented does not establish a reasonable likelihood that
Petitioner would prevail in showing that at least one challenged claim of the
’738 patent is unpatentable based on the asserted grounds.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition to institute inter partes review of the
’738 patent is DENIED, and no trial is instituted.

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PETITIONER:
Frank Cimino
FCA-JVS@venable.com

Jonathan Falkler
JLFalkler@venable.com

PATENT OWNERS:

Andrew Riddles
DP-IPR-JVS@DAYPITNEY.COM

Brian Pollack
bpollack@daypitney.com

Cecilia Zhang Stiber
cstiber@daypitney.com