On October 26, 2015, ALJ Theodore R. Essex issued the public version of Order No. 9 (dated October 8, 2015) construing terms of the asserted patent claims in Certain Variable Valve Actuation Devices and Automobiles Containing the Same (Inv. No. 337-TA-954).
By way of background, this investigation is based on a March 10, 2015 complaint filed by Jacobs Vehicle Systems Inc. (“JVS”) naming as respondents FCA US LLC, FCA Mexico, S.A. de C.V., FCA Melfi S.p.A., FCA Serbia d.o.o. Kragujevac, and Fiat Chrysler Automobiles N.C. (collectively, “FCA”). The complaint alleges violations of Section 337 in the importation into the U.S. and sale of variable valve actuation devices and automobiles containing the same that infringe one or more claims of U.S. Patent Nos. 5,829,397; 6,474,277 (the ’277 patent); 6,883,492; 7,059,282 (the ’282 patent); 8,776,738; and 8,820,276 (the ’276 patent). See our March 16, 2015 and April 13, 2015 posts for more details on the complaint and notice of investigation, respectively. AMarkman hearing was held on August 25, 2015 regarding the interpretation of certain claim terms of the ’277 patent, ’282 patent, and ’276 patent.
The ‘277 Patent
The ‘277 patent is directed to valve seating velocity control, and the disputed claim terms describe an engine valve seating system. The parties disputed the meaning of the term “outer tappet,” which appears in Claim 36. JVS proposed the construction “[a] slidable component that transmits motion that originates from the cam to the engine valve,” arguing that its proposed construction is supported by the claim language itself, the preferred embodiments illustrated in certain figures and the corresponding specification. On the other hand, FCA contended that “outer tappet” means “[a]n external component configured to receive an inner tappet.” FCA argued that support for its interpretation is found in the specification, the plain and ordinary meaning of the word “outer,” and extrinsic evidence in the form of contemporaneous patents using the term “outer” to describe a spatial relationship between components. ALJ Essex rejected both parties’ proposed constructions, finding JVS’s functional interpretation “gives no meaning to the modifier ‘outer’” and FCA refers to an inner tappet which is not part of the disputed claim’s language. Consequently, relying primarily on the specification for guidance, ALJ Essex defined “outer tapper” to mean “an external slidable component that transmits motion that originates from the cam to the engine valve.”
The parties also disputed the meaning of the terms “bore end wall” and “having an end proximate to the bore end wall” of Claim 36. JVS respectively proposed the constructions “[a] wall that defines an end boundary of a hydraulic chamber in a bore” and “having an end that defines an end boundary of a hydraulic chamber in a bore.” FCA argued that neither term required construction. The ALJ agreed with FCA, holding that the language of the claims made clear what these terms would mean to one of ordinary skill in the art. The ALJ further dismissed JVS’s argument that Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), necessitated its proposed construction because the disputed terms were not “plain meanings of one of ordinary skill in the art.” ALJ Essex noted that JVS’s citation merely advanced a “conclusory statement” and failed to “show why construction is necessary, especially since the plain meaning of the terms is readily apparent.” Furthermore, he found that JVS’s proposed definitions were circular. Accordingly, ALJ Essex found that these disputed claim terms need not be construed and should be given their plain and ordinary meaning.
The parties also disputed the meaning of Claim 36’s term “selectively occluded.” While agreeing that “occluded” meant “blocked,” JVS argued “selectively” means “progressively,” based on the specification’s description of the action and the language of related dependent claims. FCA instead contended that “progressively occluded” is narrower than “selectively occluded” and that the specification uses the words distinctly with two separate, non-interchangeable meanings. ALJ Essex construed the term in favor of JVS, finding that “the repeated descriptions in the specification coupled with the additional limitations of the dependent claims (which is limited to what each respective means is ‘comprised of’ and not the actual occluding action) supports the ALJ’s construction that ‘progressively’ and ‘selectively,’ as read in light of the ’277 Patent, are synonymous.”
The parties also disputed whether the “means for automatically taking up lash between said system and an engine valve component” in Claim 11 is a function for which the specification discloses the requisite structure. While JVS argued that the specification links various components to the function, FCA countered that the function can be performed by many different structures and thus was indefinite. The ALJ agreed that the claimed function is indefinite because “[t]he specification repeatedly describes automatic lash adjustment through the act of leaking oil, but it fails to identify a specific structure that performs that function . . . .” Nothing in the specification “clearly links or associates” those structures identified by JVS to the automatic lash adjustment.
The ‘282 Patent
The ’282 patent is directed to a valve actuating system for controlling the operation of an engine valve. The parties disputed whether the “trigger valve,” appearing in several claims, requires an electronic activating signal and whether the activating signal directly moves a “blocking/unblocking member” that controls the flow of hydraulic fluid. JVS contended that the movement of the blocking/unblocking member must be controlled electronically because the specification references energizing the member to open it. JVS further supported this position by referencing the prosecution history of the ’282 patent and other patents in the art. FCA, on the other hand, contended that the “trigger valve” could also be hydraulically or mechanically activated and that the specification requires the blocking/unblocking member to be responsive to a signal but does not require direct movement of the member. ALJ Essex found the term “trigger valve” to mean “a valve configured to block and unblock hydraulic fluid responsive to an activating signal.” He rejected JVS’s position that the trigger valve had to be electronically-actuated because such a reading would render the other claim term “solenoid activated” superfluous. Furthermore, the ALJ rejected JVS’s argument that all but the electronically-actuated trigger valves were disclaimed during prosecution. Instead, the ALJ found that only mechanical valves with fixed timing were disclaimed, not hydraulic or other non-fixed timing activated triggers. The ALJ also dismissed JVS’s claim construction that a “blocking/unblocking member” must be “directly move[d]” as a result of activation.
The parties further disputed whether the specification of the ’282 patent disclosed a master-slave piston arrangement claimed by Claim 1’s means-plus-function language: “means for hydraulically varying the amount of engine valve actuation,” as proposed by JVS. FCA contended that “the specification does not clearly link the master/slave piston arrangement described in the background section to the means-plus-function limitation because the specification’s background section describes the prior art master/slave piston arrangement and the problems associated with it.” The ALJ agreed with FCA that the master/slave piston arrangement is not clearly linked to the claim function. The ALJ further held that “a person of ordinary skill in the art . . . would have understood the structure for the claimed function to be the pivoting bridge and piston arrangement as opposed to the master/slave arrangement” and that the “specification as a whole described the invention as the pivoting bridge and piston arrangement with only one mention of the master/slave arrangement in the background section.”
Similarly, JVS and FCA disputed whether the structure for a “means for actuating the engine valve responsive to the operation of the trigger valve” of Claim 13 is associated with the control piston or the master-slave arrangement. For the same reasoning applied to the aforementioned means-plus-function language of Claim 1, the ALJ found Claim 13 discloses a pivoting bridge, piston arrangement and a motion means disclosed in one of the figures.
Also disputed in Claim 13 was the proper construction for “means for modifying the operation of the trigger valve in response to the determined temperature.” JVS contended that such a structure must provide that an electronic valve controller “directly controls the position of the moveable portion of the trigger valve” and the electronic valve controller communicates valve timing information directly to the electro-hydraulic trigger valve. FCA argued that this construction is incorrect because “directly controls” is neither required to perform nor clearly linked to the claimed function within the specification. Instead, FCA contended “the structure associated with the means for modifying is a controller programmed with the control algorithm [which] the specification discloses to perform the claimed function and it cannot be parts of the other separate claimed elements.” ALJ Essex rejected both proposed structures for the claimed function. Instead, to construe all the limitations of Claim 13 coherently, the ALJ found the requisite structure to be “an electronic valve controller including a microprocessor and a nonvolatile member programmed to receive temperature information and communicate valve timing information to an operating assembly to control the moveable portion of the trigger valve.” The ALJ rejected JVS contention that the specification discloses the “directly controls” limitation for the structure of the means-plus-function claim element and found FCA’s proposed construction incomplete because it omitted the structure necessary to communicate the valve timing information to control the moveable portion of the trigger valve.
The parties dispute the validity of the claim language “means for determining the present temperature of an engine fluid.” JVS contended the specification discloses sufficient structure by “any conventional means for measuring temperature of hydraulic fluid in a VVA” and that a person of ordinary skill in the art would know that such means refers to conventional temperature sensors. However, FCA argued that this term is indefinite because JVS was defining the means-plus-function term with another means-plus-function and thus failed to disclose “any structure for the claimed means for determining temperature.” ALJ Essex also found that JVS failed to link the means-plus-function to a specific structure in the specification and thus found the claim indefinite. Addressing JVS’s person of ordinary skill in the art argument, the ALJ also held that “consideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the [specification].” (quoting Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 952 (Fed. Cir. 2007)) (internal citations omitted). Additionally, JVS could not rely on disclosures from another patent to provide structure for a means-plus-function term in the patent as issue, and the term “conventional means” violates the definiteness requirement by covering every means unbounded.
JVS and FCA also disputed the meaning of “engine fluid” in claims 10, 13, 25 and 26. JVS’s proposed construction was “hydraulic fluid which is used in the VVA,” submitting that the term “engine fluid” indicates only the place for measuring temperature. However, the ALJ agreed with FCA that “engine fluid” should be given its plain and ordinary meaning of “a fluid in or used by an engine, including oil and coolant.” The ALJ further found that the patentee JVS “did not disclose a clear intent to define the term ‘engine fluid’ to mean ‘hydraulic fluid’ because to use the two terms interchangeably “in view of their usages within the specification would cause confusion.” JVS’s proposed construction was thus found to lack support within the specification to redefine the broad term ‘engine fluid’ to be the narrow term ‘hydraulic fluid.’”
The ‘276 Patent
The ‘276 patent is directed to a variable lost motion valve actuation system. The parties disputed the term “normal mode” used in Claims 6 and 17. While the parties agreed on the meaning of this term, the argument centered on whether the additional limitation “above a warm-up mode temperature or engine speed threshold,” proposed by JVS, was necessary. The ALJ accepted this limitation, finding this consistent with the specification’s explicit description of “normal mode.” Thus, ALJ Essex construed the term “normal mode” to mean “an engine mode selected and implemented for steady state positive power operation of the engine above a warm-up mode temperature and/or engine speed threshold.”
Similarly, the parties disputed whether the term “transient mode” requires an additional limitation “changes in engine load above a preset threshold” also proposed by JVS. However, unlike for “normal mode,” the ALJ did not find that the specification’s description for “transient mode” calls out for one parameter over another. Thus, the ALJ found that “transient mode” simply means “an engine mode selected and implemented for positive power accelerations.”