Citations
- 829 F. Supp. 2d 11
Full opinion text
RULING AND ORDER
ROBERT N. CHATIGNY, District Judge.
I. BACKGROUND............................................................15
A. Parties.................................................................15
B. Technology.............................................................16
1. Diesel Engines......................................................16
2. Engine Brakes......................................................16
3. Exhaust Brakes.....................................................18
C. Combination Brakes.....................................................19
1. Jacobs’ Testing of Combinations.......................................19
2. Williams’Combination................................................20
3. Mitsubishi’s Research and Development................................20
D. The '289 Patent.........................................................21
1. Development of the P-37.............................................21
2. The Patent .........................................................23
E. Jacobs’ Response To The P-37............................................23
F. The Accused Products...................................................24
1. Jacobs Models 864 and 882 for Mitsubishi...............................24
2. Jacobs Model 122 for Volvo...........................................26
3. Jacobs Stealth Retarder For Mack.....................................26
4. Summary of Accused Products........................................26
G. Reexamination Proceeding...............................................27
II. LEGAL ANALYSIS ........................................................28
A. Validity................................................................28
1. Anticipation.........................................................29
Section 102(a).......................................................29
Section 102(b).......................................................29
2. Obviousness.........................................................34
Claim 1.............................................................35
Claim 3.............................................................38
Claim 5.............................................................38
Claim 6.............................................................38
Claims 7 & 8........................................................39
Claim 11............................................................39
Claims 12 & 13......................................................40
Claims 2, 4, 9 & 14...................................................40
Claims 10 & 15......................................................42
3. Conclusion on Validity................................................43
B. Infringement...........................................................43
1. Relevant Claims.....................................................43
III. SUMMARY 43
IV. CONCLUSION..................... ......................................44
This is a declaratory judgment action brought by Jacobs Vehicle Systems, Inc. (“Jacobs”), for a determination that U.S. Patent No. 4,848,289 (“the '289 Patent”), issued to Vincent A. Meneely and assigned to Pacific Diesel Brake Co. (“Pacbrake”) for a combination of an engine brake and exhaust brake is invalid and not infringed. Pacbrake has filed a counterclaim alleging that Jacobs has infringed the '289 Patent by selling engine brakes to Mitsubishi Motors Corp. (“Mitsubishi”) in Japan and AB Volvo (“Volvo”) in Sweden, and a combination of an engine brake and exhaust brake to Mack Trucks, Inc. (“Mack”) in the United States. A bench trial has been held. After careful review of the voluminous testimony and exhibits presented by the parties, I conclude that under the claim construction previously adopted by the Court most of the claims in the patent are invalid due to obviousness and the remaining claims are not infringed. This ruling contains my findings of fact and conclusions of law.
I. BACKGROUND
This case centers on the '289 patent, which claims methods and apparatuses for retarding diesel engines. Diesel trucks carry heavy loads and have significant braking problems when descending roadway grades. Conventional wheel brakes undergo stress during these runs and require frequent, expensive repairs and replacement. Automotive engineers have developed two kinds of brakes — engine brakes and exhaust brakes — that use the engine itself to supplement the power of conventional wheel brakes, reducing brake maintenance costs and adding to the safety of diesel trucks. Exhaust brakes and engine brakes are designed in such a way that, when they are activated, the fuel supply to the engine is cut off while the engine continues to run. The “work” done by the pistons moving upward against additional air pressure inside the engine slows the rotation of the crankshaft, which helps slow the truck. The braking effect produced by an engine retarding device is measured in terms of “braking horsepower” (“BHP”). The '289 patent discloses a way to combine an engine brake and an exhaust brake to achieve better braking performance than can be obtained with either brake alone.
A. Parties
Jacobs, a wholly owned subsidiary of Danaher Corporation, is a manufacturer of engine brakes and exhaust brakes located in Bloomfield, Connecticut. Jacobs successfully commercialized the engine brake beginning in the 1960s and remains the dominant supplier of engine brakes in the United States. Jacobs’ success is attributable to its ownership of the basic engine brake patent, No. 3,220,392, which was issued to Clessie Cummins in 1965 and expired in 1982. Jacobs’ products are sold under the brand name “Jake Brake,” which is sometimes used as a generic term to refer to engine brakes. Prior to Jacobs’ introduction of the engine brake, exhaust brakes were the principal supplemental brake for diesel trucks in the United States.
Pacbrake is a manufacturer of engine brakes and exhaust brakes located in British Columbia, Canada. Pacbrake is a corporate partnership owned by Jenara Enterprises Ltd., a corporation of British Columbia. Mr. Meneely, the inventor of the '289 patent, is the president of Pacbrake. His father was a Jacobs distributor headquartered in Vancouver until the early 1980s. In 1986, after Jacobs’ patent for the basic engine brake expired, Pacbrake began manufacturing engine brakes in competition with Jacobs.
B. Technology
1. Diesel Engines
Diesel engines in heavy-duty trucks have six or more cylinders that move through four sequential “strokes”: intake, compression, expansion and exhaust. The four-stroke cycle is controlled by a camshaft and delivers power to a crankshaft, both of which rotate in unison twice during each cycle. The first 180° of rotation is the intake stroke, the second 180° degree the compression stroke, the third 180° the expansion stroke, and the last 180° the exhaust stroke. The entire cycle makes up 720° rotation and the degree mark is used to define when various events occur.
The engine is equipped with an intake manifold and an exhaust manifold leading to each of the cylinders. The size and configuration of these manifolds differ from engine tó engine. Each cylinder has intake and exhaust valves communicating with the intake and exhaust manifolds, respectively. The valves are typically located at the top of each cylinder. Each valve has a stem that extends directly above the cylinder. The valves are kept closed by a valve spring, which holds the valve in its “seat.” In the past, cylinders typically had one intake valve and one exhaust valve. Most diesel engines for heavy-duty trucks now have two intake valves and two exhaust valves per cylinder.
During the intake stroke, a piston moves to the bottom of the cylinder while air and fuel are brought into the cylinder from the intake manifold. Some engines are equipped with turbochargers, which increase the amount of air supplied to the cylinder and “supercharge” the engine. During the compression stroke, the valve to the intake manifold closes, and the piston moves upward, compressing the air/ fuel mixture. When sufficiently compressed, the air/fuel mixture combusts, pushing the piston down on the expansion stroke, and moving the truck forward. The piston then moves upward on the exhaust stroke, expelling the hot exhaust gases from the cylinder into the exhaust manifold.
To open the exhaust valve of a cylinder, sufficient pressure must be exerted to overcome the closing force of the valve spring and the pressure inside the cylinder. When the pressure is sufficient, the valve leaves its seat in the direction of the interior of the cylinder. Regardless of whether an engine retarding device is operating, the exhaust valve is mechanically opened on the cylinder’s exhaust stroke by means of a cam.
2. Engine Brakes
The engine brake was invented by Clessie Cummins in the 1950s. The basic operating principle of all engine brakes is the same. The truck driver engages the engine brake and the fuel supply to the engine is stopped. The engine brake mechanically opens the exhaust valve of the cylinder during the compression stroke, after the piston has compressed the air in the cylinder, but before the piston reaches “top dead center” of its upward movement (i.e., the point beyond which it starts to move down)(“TDC”). Braking horsepower is provided in two ways. Initially, the piston’s upward movement is resisted by the compressed air in the cylinder, which causes the piston to work. Then, when the exhaust valve is opened by the engine brake, some of the compressed air is released from the cylinder into the exhaust manifold. In the absence of this compression release, the compressed air would remain in the cylinder and have a spring-like effect on the piston, pushing it down on the ensuing expansion stroke (“rebound effect”). In that event, the energy expended by the piston on its upward movement would be returned to the piston and there would be insignificant net gain in braking. With a compression release engine brake, little energy is returned to the piston.
Engine brakes are complex devices that can be used only with the engine for which they are designed. The Jake Brake is an add-on brake that fits on top of the engine. Some engine brakes are built into the engine.
When an engine brake is operating, the exhaust valve is opened twice during each 720° cycle: the engine brake opens the valve during the compression stroke near top dead center; and the cam opens the valve during the normal exhaust stroke. The size of the opening of the exhaust valve by the engine brake is typically 40/1000s of an inch at its widest; the size of the opening of the valve during the normal exhaust stroke is typically 500/ 1000s of an inch at its widest. As these openings take place, air is transferred from the cylinder into the exhaust manifold. The transfer of air changes the pressure within the exhaust manifold continuously as the engine rotates, which can be up to 2,300 revolutions per minute (“RPM”) or more for some engines.
The engine brake opens the exhaust valve on the compression stroke by means of a rod located above the cylinder (“push tube”), which pushes against the top of the valve stem. The push tube must be strong enough to overcome both the closing force of the valve spring and also the substantial force of the pressure in the cylinder created by the piston’s upward movement on the compression stroke (“push tube load”). Excessive push tube load can damage the engine. Engine manufacturers set acceptable push tube limits.
The braking horsepower provided by an engine brake can be increased by adjusting the time when the engine brake opens the exhaust valve. If the valve opens too early, less pressure is built up in the cylinder before release and the braking effect is weakened. If the valve opens too late, too much pressure is built up, preventing the valve from opening at all, or allowing too little air to escape. Late opening of the valve also risks valve-piston contact, which can destroy an engine. The optimal adjustment depends on the particular engine, but generally corresponds to a time when the piston is near top dead center.
The timing of the engine brake’s opening of the exhaust valve can be optimized by turning a screw on the engine brake housing. Adjusting the timing by means of the screw is referred to as “adjusting the lash.” The lash is the distance or “gap” between the slave piston of the engine brake and the component of the engine that is contacted by the slave piston to actuate the opening of the exhaust valve. When the size of the gap is increased, the piston must travel a greater distance and the timing of the opening of the valve is therefore delayed resulting in more work for the piston. When the size of the gap is decreased, the piston travels through less space and the timing of the opening is advanced. Adjusting the timing to delay the opening of the exhaust valve is called “retarding the lash.”
The braking horsepower provided by an engine brake also can be increased by injecting more air into the cylinder on its intake stroke than otherwise would be present. This additional air or “charge” enhances braking by increasing the pressure in the cylinder on the ensuing compression stroke creating more work for the piston on its upward movement. Adding air to the cylinder on the intake stroke is referred to as “supercharging.” When an engine brake is installed on a turbocharged diesel engine, the turbocharger can provide a boost in retarding horsepower by injecting air into the cylinder through the cylinder’s intake valve. To obtain the benefit of supercharging, it is necessary that the additional air injected into the cylinder during the intake stroke remain in the cylinder until the beginning of the compression stroke (“trapped charge”).
At first, engine makers were skeptical about putting engine brakes on their engines and refused to factory-install engine brakes. To allay manufacturers’ concerns, Jacobs offered a broad warranty covering both the engine and the engine brake. Jacobs also made engine brakes for the “after market” for truckers to install on their engines after they bought their trucks. Jacobs’ engine brakes gained popularity because they usually provided more braking horsepower than exhaust brakes.
3. Exhaust Brahes
Exhaust brakes are relatively simple devices compared to engine brakes. They operate by means of a gate or valve placed at the end of the exhaust manifold to restrict the flow of air from the manifold. Braking horsepower is generated by building high pressure within the exhaust manifold (“back pressure”) to resist the upward movement of the piston in the cylinder during the normal exhaust stroke. Back pressure builds up as gas is released into the exhaust manifold during the exhaust stroke. Prior to Jacobs’ introduction of the engine brake in the 1960s, exhaust brakes were the principal engine retarding system in the United States.
The braking horsepower provided by an exhaust brake depends on the degree to which the flow of air is restricted. Generally, the greater the restriction, the higher the back pressure against which the piston must work. Some exhaust brakes have a fixed setting, others an adjustable setting. With an adjustable brake, the amount of back pressure can be increased or decreased by adjusting the amount the gate or valve is closed or opened.
Back pressure is measured in terms of pounds per square inch (“psi”). The higher the psi, the greater the amount of work the piston must do. Thus, an exhaust brake set to produce back pressure of 50 psi can be expected to produce more braking horsepower than one set at 30 psi. Back pressure can be increased to a point that makes it counterproductive due to “valve float,” which is discussed below.
The exhaust brake was first developed in Europe, where it was installed as standard equipment on heavy-duty diesel trucks. Williams Air Controls (‘Williams”), a manufacturer of exhaust brakes located in Tigard, Oregon, developed the exhaust brake market in the United States. Because the braking horsepower of an exhaust brake is directly dependent on the back pressure in the exhaust manifold, exhaust brake manufacturers, such as Williams, encouraged engine manufactures to permit higher back pressure in the exhaust manifold.
Exhaust brakes are less expensive than engine brakes (exhaust brakes costs hundreds of dollars; engine brakes cost thousands of dollars). They do not create the loud popping noise that can accompany the “engine brake event” (i.e., the engine brake’s release of compressed air into the exhaust manifold). But the back pressure generated by an exhaust brake increases engine temperature and can also cause “valve float.”
“Valve float” refers to the non-mechanical opening of an exhaust valve of a cylinder due to the pressure differential between the exhaust manifold and the cylinder. The pressure within the cylinder reaches its lowest points during the intake and expansion strokes when the piston is at the bottom of its downward travel. An exhaust brake set in a commercially reasonable manner operating near the rated speed of the engine (e.g., 2,200 RPM) increases the pressure of gases in the exhaust manifold to a level sufficient to float open the exhaust valve of a cylinder on its intake stroke.
Prior to the invention of the '289 Patent, valve float caused by an exhaust brake was well known in the field and in the published literature. See Meyer, “Manifold Braking for Heavy ‘Over the Road’ Trucks, A Review of European Practices and Experience,” SAE Paper No. 571 (1955); Meyer, “Compression Retarder,” SAE Paper No. 786 (1956); and Akiba, et al., “The Optimized Design of the Exhaust Brake of the Automotive Diesel Engine,” SAE Paper No. 810344 (1981).
Excessive valve float can lead to engine damage. If the valve stays open too much of the time, the constant flow of hot exhaust gases can damage the valve through overheating. In addition, the valve and its seat can be damaged if the valve closes with sufficient velocity. Valve float can be reduced by installing heavier valve springs.
In the 1960s and 1970s, engine manufacturers, such as Caterpillar, were concerned that excessive valve float could cause engine damage. But Williams and others successfully urged engine manufacturers to allow increasing back pressure and valve float was kept within manageable levels.
C. Combination Brakes
Before Mr. Meneely applied for what became the '289 patent, others had experimented with combination braking.
1. Jacobs’ Testing of Combinations
In the 1970s, Jacobs tested various combinations of engine brakes and exhaust brakes in conjunction with its efforts to sell engine brakes to European engine manufacturers, including Berliet and Saviem, whose engines already had exhaust brakes.
In November 1976, Jacobs tested a Jake Brake with a standard lash setting in combination with an exhaust brake on a Berliet engine and obtained 276 BHP at 2,400 RPM. Jacobs tried different lash settings for the combination and found that retarding the lash produced increased braking horsepower: a lash setting of 0.024" produced 286.5 BHP at 2,400 RPM; a lash setting of 0.030" produced 290.2 BHP at 2,400 RPM; and a lash setting of .036" produced 303 BHP at 2,400 RPM. Jacobs did not retard the lash any further.
In May 1977, Jacobs tested a combination of a Jake Brake and exhaust brake on a Saviem 798 diesel engine. The combination produced approximately 50 BHP more than the Jake Brake alone. Jacobs adjusted the setting of the exhaust brake. With the exhaust brake set at 40 psi, the combination produced 163 BHP. With the exhaust brake set at 60 psi, the combination produced 192 BHP. Jacobs engineers observed the presence of valve float but noted that it did not have any detrimental effect on the engine and recommended that “[cjonsideration should be given to a prolonged valve float test if any of the above retarding configurations are proposed for a retarding concept for marketing.” PI. Ex. 3, at J000532.
In November 1977, Jacobs conducted similar testing of an engine brake and exhaust brake on a Mack 676 diesel engine (PL Ex. 1, 4). With a lash setting of .041", the combination produced gains in braking horsepower over the Jake Brake alone especially at higher engine speeds.
In 1982, a Jacobs’ engineer, Zdenek Meistrick, analyzed the likely performance of an engine brake and exhaust brake used in combination on a Volvo TD 120A engine. Mr. Meistrick estimated that the combination would produce 290 BHP at 2,200 RPM. Volvo wanted 300 BHP. Mr. Meistrick estimated that the combination would produce 310 BHP if Volvo allowed an increase in back pressure from 37 psi to 47 psi. Volvo decided against developing the combination due to cost considerations.
In 1984 and 1985, Jacobs tested a Jake Brake and a Williams exhaust brake on a Caterpillar 3406 turbocharged diesel engine. By that time, Caterpillar had approved use of an exhaust brake on the engine with allowable back pressure of 50 psi. At the 50 psi setting, the exhaust brake alone outperformed the engine brake alone (the Jacobs engine brake did not work well with the 3406 engine due to the design of the engine — the engine brake had to work off an exhaust cam, rather than an injector cam). Jacobs observed that the exhaust brake alone caused pronounced valve float. When the exhaust brake was set to minimize valve float, braking horsepower provided by the exhaust brake was reduced to 60% of the braking horsepower provided by the engine brake. With the exhaust brake set at 50 psi, the combination produced more braking horsepower than the engine brake or exhaust brake alone. The engineers did not recommend the combination, however, because of valve float (“three added valve bounces [were] introduced per cycle”) and “the questionable affect back pressure has on turbocharger life.” Pl. Ex. 6, at J000659.
None of the foregoing tests performed by Jacobs on combinations prior to the '289 Patent was made available to the public and no combination brakes were sold by Jacobs at the time. Jacobs wanted its customers to use engine brakes for their engine retarding needs rather than exhaust brakes and therefore did not promote adding exhaust brakes to engines.
2. Williams’ Combination
In 1973, Williams installed a combination brake on a Freightliner truck with an engine made by Cummins Inc. Williams informally tested the performance of the combination brake and displayed the truck with the combination brake at trade shows in San Francisco and Anaheim and to customers at Williams’s headquarters between 1974 and 1975. Williams took no steps to market a combination.
3. Mitsubishi’s Research and Development
Mitsubishi researched combination brakes and published its results in a series of patent applications and articles between 1982 and 1986. In 1982, Mitsubishi filed Unexamined Japanese Patent Application No. 57-171011, entitled “Braking Device for Multi-cylinder 4-stroke-cycle Internal Combustion Engine,” by Okamura, et al. (“Okamura”). Okamura discloses using a combination brake to supercharge cylinders on intake, thereby increasing braking horsepower. Okamura describes a release of pressurized air on compression, which causes a pressure wave in the exhaust manifold sufficient to open an exhaust valve of a cylinder on its intake stroke. When this valve opens on intake, pressurized gas flows from the exhaust manifold into the cylinder. Okamura discloses that this increased volume of gas increases the retarding horsepower of the combination brake by increasing the work required during the compression stroke. While the Okamura specification discloses a “third valve,” or dedicated compression-release valve, being opened when the piston nears top dead center of the compression stroke, it also discloses using an exhaust valve for the same function. Okamura depicts an example of how an exhaust valve could perform the compression release function in Figure 10. This figure shows a valve controlled by a rotating two-lobe cam, shaped to push open the exhaust valve both on compression and exhaust.
In 1983, Mitsubishi filed Unexamined Japanese Patent Application No. 59-186440, by Okamura, et al. The application discloses a combination brake that uses an exhaust valve, a third valve or an intake valve to release compressed air during the compression stroke. Approximately six months later, Mitsubishi published an article entitled: “Development of the New Auxiliary Braking System ‘Powertard’ Engine Brake” (“Sato”). The Sato article discloses the combination of an engine brake and exhaust brake on a turbocharged diesel engine. In its discussion of compression engine brakes, leading up to its section on “dual braking systems,” Sato specifically refers to a “Jacobs-type engine brake” and discloses that either the intake valve, exhaust valve, or third valve may be used to release compressed gas during the compression stroke. Sato § 2.2.2 & figs. 7-8. In its section on exhaust brakes, Sato notes that valve float occurs when the pressure inside the exhaust manifold exceeds the pressure in the cylinder by more than the valve’s spring can withstand. Sato § 2.2.1. Sato discloses Mitsubishi’s proprietary combination brake, the Powertard brake, which uses a small-diameter third valve, not the exhaust valve, for the compression release event.
In 1985, Mitsubishi published another article entitled: “Development of Powertard for the 8 DC 9T Engine” (“Powertard”), the English version of which was published in June 1986 in Mitsubishi Heavy Industries Technical Review, Vol. 23, No. 2, 5. 1-7. In the Powertard article, Mitsubishi elaborated on its combination brake, reporting its testing and experience with an engine brake and an exhaust brake on an eight cylinder, two valve diesel engine. The article describes the occurrence of valve float and a synergistic effect arising from the combination of the two brakes. Figure 13 of Powertard shows the timing of valve openings in each of four cylinders, as well as the exhaust port and cylinder pressure changes in one cylinder.
D. The '289 Patent
1. Development of the P-37
The '289 patent resulted from Mr. Meneely’s development of a combination brake that became known as Pacbrake’s Model P-37. By the late 1980s, Pacbrake was competing with Jacobs for Caterpillar’s business and Mr. Meneely focused on designing an engine brake for the Caterpillar 3406 turbocharged diesel engine. Engine brakes designed by Jacobs for other engine manufacturers, such as Cummins and Detroit Diesel Corporation, produced approximately 325-350 BHP. In contrast, Jacobs’ engine brake for the Caterpillar engine provided only 275-280 BHP. Caterpillar wanted a more effective retarding system for the engine and had increased the allowable back pressure in the exhaust manifold to 50 psi, which made the exhaust brake more effective and therefore more competitive with Jacobs’ engine brake.
Mr. Meneely combined Pacbrake’s existing engine brake for the Caterpillar 3406 engine, Pacbrake’s Model P-36, with an exhaust brake set at 50 psi, on a Caterpillar test engine. When he ran the combination, he obtained no increase in braking horsepower initially. He recognized that the exhaust brake reduced the benefit of the engine brake by cutting off the turbocharger’s ability to inject air into the engine. He also observed that the 50 psi setting caused the engine to heat up to over 1000° Fahrenheit.
Mr. Meneely thought the counteracting effect of the exhaust brake in the combination could be reduced if air from the exhaust manifold could be forced into the cylinder on its intake stroke by another means. He developed and patented an apparatus that mechanically opened the exhaust valve of a cylinder on the intake stroke, allowing air to flow into the cylinder (U.S. Patent No. 4,741,307, issued May 3, 1988). His experience with this apparatus gave him the idea that the exhaust valve could be made to float open by delaying the timing of the engine brake and he therefore worked to develop an engine brake that could operate at a delayed timing. He noticed that push tube load was lighter in a combination brake, so the exhaust valve could be opened closer to top dead center, against greater cylinder pressure, than could be done safely using an engine brake alone. After experimenting with the effects of delaying the timing of the engine brake, he ultimately retarded the lash for the P-36 engine brake from 0.070" (the optimal setting when the engine brake was used alone) to 0.100".
Mr. Meneely appears to have been the first to retard a lash setting to this extent in optimizing a combination brake. The evidence suggests that others involved in engine brake design, including Jacobs’ engineers, stopped retarding the lash before reaching a comparable setting due to concerns about valve float and push tube load. After Mr. Meneely set the lash at 0.100", he observed a significant boost in braking horsepower, leading to the subject patent application.
Mr. Meneely did not have equipment one would need to determine what was actually happening inside the engine during his tests of the combination brake. He concluded, however, that by retarding the lash to an unprecedented extent, he capitalized on valve float to add charge to the cylinder at the end of the intake stroke. His conclusion was based on the following inferences: the substantial delay in compression release created a pressure pulse; the pulse propagated through the exhaust manifold and opened another cylinder’s exhaust valve near bottom dead center of the intake stroke; air traveled through the open exhaust valve into the cylinder as the intake valve was closing; and air got trapped in the cylinder when the intake valve closed.
Mr. Meneely believed that he had achieved a significant breakthrough. Jacobs and others discouraged combining an engine brake with an exhaust brake and the industry generally discouraged valve float. Mr. Meneely was unaware that Jacobs and others had tested or used engine brake/exhaust brake combinations and did not know about the Mitsubishi patent applications and articles discussed above.
After testing the combination in the laboratory and the field, Pacbrake approached Caterpillar and offered to provide it with a combination retarder. Caterpillar agreed to try it. Pacbrake supplied Caterpillar with Pacbrake’s Model P-37, which combined an engine brake and exhaust brake for use on the Caterpillar 3406 engine. Pacbrake conducted an advertising campaign for the P-37, which it sold under the brand name “SuperPae.” Pacbrake advertised that the combination produced 400 BHP. The P-37 helped establish Pacbrake as a manufacturer of engine brakes in competition with Jacobs.
2. The Patent
On May 2, 1988, Mr. Meneely filed the application that led to the '289 patent. The application encompassed sixteen claims, including three independent claims. Claim 1 was to a method for retarding an engine. Claim 6 was to an apparatus for retarding a multi-cylinder, four-stroke engine having intake valves and exhaust valves communicating with a common exhaust manifold. Claim 11 was to a combination.
The PTO allowed claims 1-9 and 11-14 as filed, and rejected claims 10 and 15-16. Claim 16, drawn solely to the combination of an engine brake and exhaust brake, was rejected under 35 U.S.C. § 102(b) as being anticipated by Jacobs U.S. Patent 4,572,-114 (issued to Sickler, Feb. 25, 1986). Claims 10 and 15 were rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. The PTO stated that claims 10 and 15 “would be allowable” by overcoming the indefiniteness rejection.
In addition to the Sickler patent, the PTO cited other prior art, specifically, U.S. Patents No. 4,662,332 (“Bergmann”); 3,330,263 (“Weglage”); 1,637,118 (“Kirchensteiner”); and Japanese published patent application 0,003,437 (“Shimoda”).
In response to the PTO’s action, Mr. Meneely made certain clarifying amendments, amended claims 10 and 15 and can-celled claim 16. In addition, he filed an Information Disclosure Statement citing U.S. Patents Nos. 4,395,884 4,474,006, both listing Robert B. Price as inventor and each assigned to Jacobs, and German patent application 2,820,941.
The PTO subsequently allowed claims 1-15 and the patent issued July 18, 1989. Claims 1-5 are directed to a method for retarding an engine; claims 6-10 are directed to an apparatus for retarding a multi-cylinder, four-stroke engine having intake valves, and exhaust valves communicating with a common exhaust manifold; and claims 11-15 are directed to a combination of an engine with the retarder.
Claim 1 is an independent claim, with claims 2-5 dependent upon claim 1. Claim 6 is an independent claim, with claims 7 and 9 dependent upon claim 6, claim 8 dependent upon claim 7, and claim 10 dependent upon claim 9. Claim 11 is an independent claim, with claims 12 and 14 dependent upon claim 11, claim 13 dependent upon claim 12, and claim 15 dependent upon claim 14.
Each of the independent claims of the '289 Patent recites an engine brake opening a first exhaust valve in a compression release event, increasing the pressure of gases in the exhaust manifold sufficiently to open an exhaust valve of another cylinder on intake, after the compression release event. The specification discusses elements of the invention Mr. Meneely believes he made: (1) substantially delayed compression release, (2) generating a high pressure pulse, (3) to open an exhaust valve on intake and (4) supercharge the cylinder (5) through increased trapped charge. But these elements of his invention are not recited in the claims of the patent.
E. Jacobs’ Response To The P-37
Beginning in 1989, Jacobs conducted testing of the P-37 in its laboratory and the field. The results of the tests showed a level of braking performance that was unexpected for a combination brake. Jacobs’ engineers believed that the P-37 supercharged the cylinder on intake due to substantially delayed compression release and increased back pressure. Jacobs regarded the P-37 as a competitive threat.
In January 1990, Mr. Meistrick prepared a memorandum analyzing potential applications of the teachings of the '289 Patent. At the time, he was the development manager working on the new Jacobs Model 8360 engine brake for the Caterpillar 3406 engine, the same engine Mr. Meneely had tested in developing Pacbrake’s Model P-37. The target for the Jacobs Model 8360 was 400 BHP, the same BHP advertised by Pacbrake for its P-37. Mr. Meistrick was asked to consider alternatives to deal with the competitive threat presented by the P-37 until the new Jacobs Model 8360 was ready.
In his memo, Mr. Meistrick outlined a number of potential combination brakes that could be used with the Caterpillar 3406. Among them was a combination of a “Jake Brake and exhaust brake adjusted to create maximum “supercharging’ effect by means of exhaust valve float (cylinder on intake), same or similar to P37.” As an “example” of such a combination, he cited an exhaust brake with a lash setting of .102” “or optimum” and an exhaust brake with a setting of 50-55 psi. This combination would create “intentional valve float” and had the “potential” to produce greater braking horsepower than other combinations outlined in the memo (which created no valve float beyond the float inherent in the use of an exhaust brake set at 50 psi or more). Mr. Meistrick observed that this combination would be in “direct conflict” with the '289 patent, making it necessary to “evaluate patent strength.”
F. The Accused Products
After Jacobs tested the P-37, it sold a number of products for use in combination braking. Pacbrake has accused Jacobs of violating 35 U.S.C. § 271 by making and selling the following four products: (1) Jacobs Model 864 engine brake for Mitsubishi’s 6D40 engine; (2) Jacobs Model 882 engine brake for Mitsubishi’s 8M20 engine; (3) Jacobs’ engine brake for the Volvo TD 122 engine; and (4) Jacobs’ Stealth Retarder, a combination engine brake/exhaust brake for Mack’s E7 engine.
1. Jacobs Models 86k and 882 for Mitsubishi
In the 1980s, Mitsubishi developed a new six cylinder turbocharged diesel engine, the 6D40, and a new eight cylinder naturally aspirated engine, the 8M20. Unlike its earlier heavy diesel engines, these engines had four valves per cylinder, rather than two. Mitsubishi’s Powertard combination brake, which employed an engine brake opening a dedicated compression release valve, could not be used on either of its new 4-valve engines because there was not enough space to put a fifth valve.
In late 1989, Mitsubishi approached Jacobs and requested a patent license for a single-valve engine brake for the 6D40 engine. Concerned that Mitsubishi might compete with Jacobs using Jacobs’ own patented invention, Jacobs declined Mitsubishi’s request for a license. Instead, Jacobs sought to manufacture the engine brake for Mitsubishi.
By letter of February 5, 1990, Mitsubishi proposed to enter into an agreement with Jacobs for manufacture of what became the Model 864 engine brake for the 6D40 engine. In April 1990, Mitsubishi sent Jacobs detailed engineering drawings for, along with a prototype of, the engine brake for the 6D40 engine. At a meeting in June 1990, Mitsubishi reached agreement with Jacobs for manufacture of what became the Model 882 engine brake for the 8M20 engine.
Jacobs was directly involved in the final design of both models supplied to Mitsubishi. In an interoffice communication of June 25, 1990, Adish Jain, Vice President of Engineering for Jacobs, summarized for other Jacobs employees the results of two days of meetings at Mitsubishi. Mr. Jain stated, “We now have design control of Jake Brakes for both ... engines and will be developing them on a highly accelerated schedule.” The final agreement between Jacobs and Mitsubishi, signed in February 1991, shows that Mitsubishi “entrust[ed] Jacobs with the design and development of separate Jake Brake compression release engine retarder models for the MMC 6D40 and [8M20] engines respectively.”
The Jacobs’ engine brakes for the Mitsubishi engines were introduced in the fourth quarter of 1991. The Model 864 is standard equipment on the 6D40 engine; the Model 882 is a standard option on the 8M20 engine. Neither model can be used on any other engine.
The engine brakes supplied by Jacobs to Mitsubishi were designed to be operated by the truck driver in combination with an exhaust brake. A single switch in the cab causes both the engine brake and exhaust brake to operate. When activated in this manner, the engine brake opens an exhaust valve of a cylinder on its compression stroke near top dead center. The exhaust brake maintains a high back pressure in the exhaust manifold. Release of cylinder pressure by the engine brake adds to the manifold pressure. An exhaust valve of a cylinder on its intake stroke subsequently opens permitting pressurized gases from the exhaust manifold to enter the cylinder.
As of 1996, Mitsubishi changed the operating controls to allow the engine brake to be used alone. Shop manuals published by Mitsubishi in 1996 and 1997 for the 6-cylinder and 8-cylinder engines show that both are configured to enable a truck driver to use the engine brake only.
At the June 1990 meeting, Mitsubishi provided Jacobs with valve traces showing that the combination caused valve float on intake.
In a fax of August 17, 1990, Mr. Meistrick stated:
We expect that during the retarding mode (720° crank) each cylinder will generate one pressure pulse near to the TDC compression due to the cylinder pressure blow down by the Jake Brake and one pressure pulse near to the TDC exhaust due to the back pressure generated by the exhaust brake. Both pressure pulses will affect the retarding conditions of the neighboring cylinders. The effect of the exhaust brake pressure on the exhaust valve float of a cylinder on intake stroke is obvious from the 6D40 engine test. The effect of the Jake Brake pressure pulse, however, did not reflect on the exhaust valve float on this particular test. If the duration and magnitude of the Jake Brake pressure pulse is sufficient, we suspect, it may also cause an additional exhaust valve float.... The exhaust valve float will result in the additional mass flow to the cylinder on intake. (DX 74)
Jacobs subsequently conducted testing of an engine brake/exhaust brake combination for the 6D40 engine using various lash settings. The tests were conducted in Connecticut with the aid of a dynamometer. In a fax to Mitsubishi in January 1991, Jacobs stated that its dynamometer optimization suggested use of a lash setting of 1.25 mm for the 6D40 combination. (DX 79) The lash setting ultimately chosen for both Mitsubishi products is 1.2 mm. (DX 84, DX 85) This setting delays the engine brake’s opening of the exhaust valve until late in the compression stroke.
2. Jacobs Model 122 for Volvo
In 1990, Jacobs undertook to supply Volvo with an engine brake for the Volvo TD 122 engine, a six cylinder engine that had an exhaust brake as standard equipment. The product was introduced in the third quarter of 1991. The Jacobs engine brake was not factory-installed but instead sold in the “after-market” to truck owners who wanted to add an engine brake to the exhaust brake that was already on the Volvo engine. The engine brake could be operated either alone or in combination with the exhaust brake.
As with the Models 864 and 882 supplied to Mitsubishi, the engine brake supplied to Volvo opens an exhaust valve of each cylinder near top dead center of the compression stroke. Volvo’s exhaust brake, like Mitsubishi’s, serves to produce high back pressure in the exhaust manifold. The exhaust valve of the cylinder on intake opens after the engine break event.
3. Jacobs Stealth Retarder For Mack
In 1991, Mack released a new engine, the E7. Jacobs designed and manufactured an engine brake for this engine, Jacobs Model 680B. Mack received complaints that the Model 680B was not providing sufficient braking horsepower. In 1994, Jacobs and Mack began exploring alternative ways to improve the retarding horsepower of the Jacobs engine brake for this engine. Ultimately, they decided to add a Jacobs exhaust brake, the Model EX-ME7, to the Jacobs Model 680B engine brake. This combination came to be called the “Mack Stealth.”
The Stealth included an engine brake that opened the exhaust valve near top dead center on the compression stroke and an exhaust brake set to produce high back pressure. Jacobs advertised that the Stealth increased the E7 engine’s retarding power by up to 40 per cent compared to a Jake Brake alone.
By the time Jacobs undertook to supply Mack with what became the Stealth retarder, Pacbrake had already brought this suit, alleging that the Jacobs’ engine brakes sold to Mitsubishi and Volvo infringed the '289 Patent. Jacobs had previously received two opinions of counsel that the '289 Patent was invalid. Before supplying the Stealth to Mack, Jacobs sought a third opinion, this time from Bradford Kile of the law firm of Baker & McKenzie. On August 11, 1995, Mr. Kile rendered his opinion that the Stealth combination did not infringe the '289 Patent. Jacobs began selling the combination to Mack in April 1996.
4. Summary of Accused Products
Jacobs’ accused products do appear to apply the teachings of the '289 patent. The timing of the compression release event is optimized for the combination by means of a lash setting that results in substantially delaying compression release. Moreover, the exhaust brake is set to create sufficient back pressure to cause valve float on intake. And while Jacobs did not test the combination brakes to determine whether they actually achieved supercharging, Mr. Meistrick’s writings show that Jacobs had supercharging in mind.
It must also be recognized, however, that the '289 patent did not teach Jacobs how to float a valve. It was known before the '289 patent that an exhaust brake operating at a commercially reasonable setting in a combination causes valve float independent of the timing of the compression release event. It is possible that the exhaust valve might have opened closer to bottom dead center of the cylinder on intake in the accused products than in earlier combination brakes. But the valve did open in those earlier brakes. The evidence does not support a finding that Jacobs’ use of the '289 patent’s teachings caused valve float after compression release that otherwise would not have occurred.
G. Reexamination Proceeding
In August 2003, Jacobs filed with the PTO a request for reexamination of the '289 patent. In conjunction with this request, Jacobs submitted prior art not previously considered by the PTO: the Okamura patent, the Powertard article and three other publications: J.M. Rife & G.M. Bloom, Performance Analysis and Design of the Jake Brake (May 1976) (“Rife”); Okamura, “Trends in Auxiliary Engine Braking System ”; and a patent by Mayne et al., U.S. Patent No. 4,423,712 (filed Apr. 28,1982) (“Mayne”).
In addition to citing the prior art identified above, Jacobs submitted (1) a claim chart listing the claims of the '289 patent and applying what it contended were the teachings of the prior art, (2) a Pre-Hearing Memorandum Of Law In Support Of Jacobs’ Claim Construction of the '289 Patent, (3) the Declaration of Zdenek S. Meistrick, (4) a copy of U.S. Patent No. 1,637,118, (5) a copy of U.S. Patent No. 3,330,263, (6) a copy of U.S. Patent No. 4,395,884, (7)a copy of U.S. Patent No. 4,474,006, (8) a copy of U.S. Patent No. 4,572,114, (9) a copy of U.S. Patent No. 4,662,332, (10) a copy of German patent application no. 28 20 941, (11) a copy of Japanese patent application no. 60-3437, (12) a memorandum submitted by Pacbrake in connection with the Markman proceeding in this case, and (13) excerpts from this Court’s claim construction.
The reexamination was assigned Control No. 90/006,764. By communication of November 12, 2003, Primary Patent Examiner Gimie granted reexamination; determined that Okamura raised a new question of patentability as to claims 1, 3 and 6-8, and that Rife in combination with Okamura raised a new question of patentability as to claims 1-4 and 6-15. The examiner also determined that Powertard in combination with Okamura did not raise a new question of patentability as to claims 1-15, “because there is no motivation to combine the two references.” Pacbrake did not respond to the order granting reexamination.
An Office Action issued December 21, 2004, in which the examiner initially rejected claims 1, 3 and 6-8 as being anticipated by Okamura. Claims 2, 4 and 9-15 were rejected as being obvious over Okamura in view of Rife. And claim 5 was rejected as being obvious over Okamura in view of the 8 DC 9T publication.
Thereafter, Pacbrake petitioned for an extension of time through and including May 1, 2005 to respond to the Office Action. The Petition was granted. An interview was held April 19, 2005, with Primary Examiner Gimie. Present on behalf of Pacbrake were Mr. Meneely; Pacbrake’s Chief Engineer, Robert Price; Pacbrake’s expert witness, Frank Pekar; and Pacbrake’s counsel, Joseph Berenato.
At the conclusion of the interview, the examiner issued an Interview Summary showing that agreement had been reached as to all claims. “Applicant, attorney, expert witness, and chief engineer explained how the third valve (34) of Okamura is not an exhaust valve. Independent clams 1, 6, and 11 of the patent require, inter alia, an exhaust valve.” Other claim language that was patentable over Okamura is “increasing the pressure of gases in the exhaust manifold sufficiently to open a second exhaust valve” or means to do so. Id. The examiner noted that he had been shown a “power point presentation of the function of the third valve (84) of Okamura (Jp5717011) versus a conventional exhaust valve as claimed by patentee.”
On April 28, 2005, Pacbrake submitted a request for reconsideration of the rejection and served a copy upon counsel for Jacobs. Included with the request were copies of the materials shown to the examiner during the interview, copies of which also were served upon counsel for Jacobs. In the request for reconsideration, Pacbrake pointed to the “fourth embodiment of Okamura as illustrated in Figure 10” and commented that the fourth embodiment and Figure 10 were “discussed” during the interview. In addition to submitting the request for reconsideration, Pacbrake submitted additional prior art for consideration by the examiner.
On May 31, 2005, the PTO issued a Notice Of Intent To Issue Ex Parte Reexamination Certificate, a copy of which was served upon Jacobs’ counsel. The Notice was signed by Primary Examiner Gimie, who had been present at the interview, and by Primary Examiner Andrew M. Dolinar, Primary Examiner Tony M. Argenbright, and Supervisory Patent Examiner Henry C. Yuen, none of whom had been present at the interview.
The Notice confirmed the patentability of claims 1-15 "without requiring any change in the claims, specification or drawings. The Notice states that claims 1 and 6 are not anticipated by Okamura because the third valve of Okamura is not an exhaust valve. Claim 11 is patentable, the Notice states, because the third valve “is too small, does not close during [the] expansion stroke, has slow opening and closing and the intake and exhaust valve overlap minimizes/prevents exhaust manifold pressure increase.” The Notice also states, “[w]ith regard to ... obviousness over Okamura et al in view of the other references of record, none of the references in combination of Okamura makes it obvious to one of ordinary skill in the art at the time [the] invention was made to combine the references to achieve the patented invention.” Finally, the Notice states that the remarks in the request for reconsideration “are persuasive and may further clarify the differences between the patented claims and the prior art, particularly the Japanese reference of Okamura et al (JP-57171011).”
On July 15, 2005, Jacobs filed a petition with the PTO seeking to reopen the reexamination. By communication of August 16, 2005, the petition was dismissed. The Ex Parte Reexamination Certificate issued on October 18, 2005.
II. LEGAL ANALYSIS
A. Validity
Jacobs contends that the '289 patent is invalid as anticipated under 35 U.S.C. § 102(a), (b) and obvious under 35 U.S.C. § 103(a). Each claim of a patent is presumed valid, and a challenger must prove invalidity by clear and convincing evidence. Tokai Corp. v. Easton Enters., 632 F.3d 1358, 1367 (Fed.Cir.2011) (citing Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed.Cir.2004)). Pacbrake maintains that Jacobs has not sustained its burden, and the '289 patent should be upheld. I find that Claims 1, 3, 5, 6, 7, 8, 11, 12, and 13 are invalid as obvious, but Claims 2, 4, 9,10,14 and 15 are neither anticipated nor obvious and are therefore valid.
1. Anticipation
An invention must be new to be patentable. If the invention was disclosed in the prior art, then it is anticipated and may not be patented. Section 102(a) of the Patent Act of 1952 provides that a patent is invalid if the invention was known or used in this country or described in a printed publication before the date of invention. Section 102(b) provides that the patent is invalid if it was described in a printed publication more than one year prior to the date of the patent application. Jacobs argues that the '289 patent is invalid under both sections.
Section 102(a)
Jacobs contends its combination brake testing for Berliet, Saviem and Volvo in the 1970s and early 1980s as well as Williams’ 1974-75 trade show demonstration of the Freightliner truck containing a combination brake constitute knowledge or use of the invention under § 102(a).
There is no evidence that the Berliet, Saviem and Volvo testing were ever made available to the public. Mr. Stawski, a former Jacobs employee, testified that the testing was confidential. Other evidence also suggests the testing was kept secret. The purpose of the testing was not to develop or sell a combination brake, but rather to persuade the manufacturers to install Jacobs’ engine brakes in lieu of or in addition to exhaust brakes manufactured by other companies. As Jacobs did not market exhaust brakes or combination brakes, it had no incentive to credit the value proposition of combination braking. Prior use of an invention by someone other than the applicant, when conducted in secret, does not invalidate a patent under either § 102(a) or § 102(b). Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370-71 (Fed.Cir.1998). Accordingly, the Berliet, Saviem and Volvo testing does not anticipate the '289 patent.
While the evidence suggests Williams’ trade show demonstrations of a combination brake were sufficiently public, Jacobs has not met its burden of proving that the combination brake featured each element of the disputed claims. See In re Omeprazole Patent Litig., 483 F.3d 1364, 1371 (Fed.Cir.2007) (anticipation analysis requires that the anticipating prior art disclose each and every element of the disputed claim). Jacobs relies on the deposition testimony of Chester Lundberg, Williams’ former Chief Engineer. Mr. Lundberg testified that the truck installed with the combination brake was road-tested, exhibited at several trade shows and shown to customers at Williams’ headquarters. However, Mr. Lundberg’s testimony does not clearly establish that, at the trade shows, the exhaust brake was set at a high enough back pressure to produce valve float, an element of each of the '289 patent’s claims. Further, this deposition testimony fails to establish that if valve float occurred, it happened on each intake stroke. Therefore, the evidence in the record does not clearly support a finding that the Williams demonstrations anticipated the '289 patent.
Section 102(b)
An invention is also anticipated if it was “patented or described in a printed publication ... more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b). Jacobs contends that Okamura, Powertard and Sato each anticipate several claims of the '289 Patent. I disagree.
Anticipation analysis requires two steps: first, the court construes the claim at issue; second, the court compares the construed claim to the prior art. Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed.Cir.2000). A single prior art reference must disclose every element of a claim for that claim to be anticipated. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed.Cir.1988) (citing Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771 (Fed.Cir.1983), cert. denied, 465 U.S. 1026, 104 S.Ct. 1284, 79 L.Ed.2d 687 (1984)). In addition, an anticipatory prior art reference must enable one of skill in the art to practice an embodiment of the claimed invention without “undue experimentation.” American Calcar, Inc. v. American Honda Motor Co., Inc., 651 F.3d 1318, 1341 (Fed.Cir.2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed.Cir.2009)). See also In re Donohue, 766 F.2d 531, 533 (Fed.Cir.1985) (“Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his own knowledge to make the claimed invention.”) While I find that Okamura discloses every element of claim 1, Jacobs has presented insufficient evidence that Okamura is enabling. Neither Powertard nor Sato discloses every element of claim 1; therefore, neither anticipates the claim.
First, I construe the claim. Claim 1 is the broadest claim of the '289 patent and provides:
A method for retarding an engine, comprising the steps of:
opening a first exhaust valve of a first cylinder of the engine near top dead centre of each compression stroke of the first cylinder; and
increasing the pressure of gases in the exhaust manifold sufficiently to open a second exhaust valve of a second cylinder of the engine on each intake stroke of the second cylinder after said first exhaust valve so opens.
'289 patent col. 711. 46-55.
The preamble states that claim 1 is a method for retarding an engine. The claim has four elements: (1) opening a first exhaust valve of a first cylinder of the engine near top dead center of each compression stroke of the first cylinder (“compression release”); (2) increasing the pressure of gases in the exhaust manifold; (3) sufficiently to open a second exhaust valve of a second cylinder on each intake stroke of the second cylinder (“valve float”); and (4) valve float occurring after compression release occurs.
The first and third elements both use the term “open.” During Markman proceedings, Pacbrake argued that the term “open” should be construed in light of the patent’s specifications to encompass supercharging: trapping air in a cylinder on intake, so the cylinder performs more work on compression. The exhaust valve should be considered “open,” Pacbrake argued, “when air is being diverted from the exhaust manifold in order to increase the pressure charge in the cylinder.” D.’s Mem. in Support of the Markman Hearing (Doc. 184) 23. Jacobs argued that “open” should be given its ordinary meaning: “affording unobstructed entrance and exit; not shut or closed.” Pre-Hearing Mem. of Law in Support of Pi’s Claim Construction (Doc. 186) 2. More in line with Jacobs than with Pacbrake, I construed “open” to mean “open enough to permit the passage of gas in or out of a cylinder.” Tr. 11/20/01 32.
When I gave the parties this claim construction, both sides stated it was acceptable to them. In the absence of objection, it provided the basis for further proceedings, including motions for summary judgment and preparation for trial. On the eve of trial, Jacobs asked the Court to confirm its prior ruling that “supercharging” resulting from “trapped charge” is not part of the claims. Jacobs argued that Pacbrake’s recently filed proposed conclusions of law revealed an intention to rely on such a claim construction. Addressing that possibility, I reaffirmed my original construction.
By construing “open” to mean “open enough to permit the passage of gas in or out of a cylinder,” I gave the term its “ordinary and accustomed meaning[ ].” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002); see also Retractable Techs., Inc. v. Becton, Dickinson and Co., 659 F.3d 1369, 1371 (Fed.Cir.2011) (“It is not for the court to tailor the claim language to the invention disclosed. The language is the language, and the same rules that apply to the construction of other legal instruments should apply to the construction of a patent claim.”) (Moore, J., dissenting from denial of the petition for rehearing en banc). While patent claims should be construed in light of the specification, Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.Cir.2005), a court should not give a claim term a meaning it cannot bear. See Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed.Cir.1996) (rejecting a construction because “the plain meaning of the claim will not bear [such] a reading”). The simple word “open” cannot carry the weight of “supercharging” or “trapped charge,” even read in light of the patent’s specification. It is a “bedrock principle of patent law” that the words of the claims define the scope of a patented invention. See Phillips, 415 F.3d at 1312; Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed.Cir.2008). By construing “open” as I did, I limited the '289 patent to its terms, instead of expanding its terms to meet its specifications. The '289 patent does not claim supercharging; it claims valve float sufficient “to permit the passage of gas in or out of a cylinder.”
Second, after construing the claim, I compare it to the prior art. The Okamura p