Free Redacted Document - District Court of Delaware - Delaware

Case 1:05-cv-00048-SLR

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flow of oil in prior art differential pressure control systems ("DPCS") where the oil traveled down an "internal" passage in the center of the spool. ('738 patent, col. 8, lines 18-19). As in these systems, Strauber has oil traveling down an internal passage in the center of the spool. (See, e.g., Strauber '774 patent (Suppl. Matterer Decl. Ex. 26) at Fig. 1). Oil flow in the '738 patent is different, as the applicants explained. But "by-passing" a central passage in the spool does not mean, as Hitachi seems to suggest, that the '738 patent lacks oil passing through the spool valve. Rather, in the '738 patent, oil passes through the internal lands of the spool valve, and oil from the main oil gallery is "controlled" by the internal lands on the spool. The flow of oil in Figure 19 of the '738 patent is shown in yellow in the drawing below:

3.

The Prosecution History Statements and Figures of the '738 Patent Cannot Add Additional Limitations to the Asserted Claims.

As explained in BorgWarner's Opening Claim Construction Brief, prosecution history statements can only limit a claim if an applicant has clearly and unambiguously 19

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As can be seen from this drawing, the only manner in which the square area behind the spool (identified by 198a) can be vented is by a passage down the central axis of the spool, unless a passage were extended through the spool valve body in another direction. Thus, a passage down the center of the spool is the most efficient manner to vent the preferred embodiment, but that does not mean the claim should be limited to only the specific configuration of the preferred embodiment. Indeed, Hitachi's proposed construction ignores that Figure 13 of the '738 patent shows a portion of the "vent" that is not connected to the spool. In the following reproduction of Figure 13 of the '738 patent, the vented areas are again colored orange. The retainer on the back of the spring (202) includes an opening, which is necessary to allow "venting" of the spool to atmosphere. Hitachi's construction would read out this embodiment of the patent, which Hitachi itself refers to as the "actual construction of the VCT system" (Hitachi Br. at p. 12), because under Hitachi's construction the vent cannot be separate from the spool.

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vent

When reduced to its essence, Hitachi's argument regarding "vented spool" is really a red herring. Hitachi argues that "vented" modifies "spool" and not "spool valve body." (Hitachi Br. at pp. 28-29). BorgWarner agrees. However, a spool can be vented without meeting Hitachi's arbitrary physical requirement that it must have an "internal passage passing through each end of the spool." (Hitachi Br. at pp. 19, 28 (emphasis added)). By way of analogy, in order to "vent" a kitchen range or stove, it is not necessary that the stove have an "internal passage passing through each end" of it. Rather, one would regard the stove as "vented" if it has a vent or opening that leads out of the kitchen. Kitchen stoves are commonly vented by a hood that sits above the stove and is not directly connected to the stove. The key purpose of such a vent is to prevent build-up of gas and odors in the kitchen. Similarly, here, the key purpose of the "vented spool" is to prevent the build-up of pressure or fluid inside the valve body where it can act against the end of the spool. Hitachi's additional proposed requirement that the "vented spool" "eliminate any influence on spool movement due to oil pressure" (Hitachi Br. at pp. 19, 28 (emphasis added)) goes well beyond anything required by the disclosure or prosecution of the '738 patent. Such

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