Free Redacted Document - District Court of Delaware - Delaware

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TABLE OF CONTENTS Page I. II. INTRODUCTION................................................................................................................1 AN OVERVIEW OF VCT TECHNOLOGY AND THE `738 PATENT......................2 A. Variable Camshaft Timing Systems ......................................................................2 1. 2. B. The Basic OPA Design..............................................................................4 The Basic CTA Design..............................................................................5

The `738 Patent........................................................................................................7 1. 2. The Developmental Background ..............................................................7 The Disclosure And Claims Of The `738 Patent ....................................8 a) b) c) The Disclosure ..............................................................................8 Claims 10 and 11 ....................................................................... 12 The Prosecution of the `738 Patent........................................... 13

III. IV.

THE LAW OF CLAIM CONSTRUCTION....................................................................16 HITACHI'S PROPOSED CLAIM CONSTRUCTION.................................................18 A. B. The Claim Terms...................................................................................................18 The Evidence Supporting the Proposed Construction ........................................20 1. The Preamble Terms (1a-1d)...................................................................20 a) b) c) d) Term 1a: "variable camshaft timing system"........................... 21 Term 1b: "regulating the flow of hydraulic fluid"................... 22 Term 1c: "a source"................................................................... 24 Term 1d: "means for transmitting rotary movement [from said crankshaft to a housing]"......................................... 25

2.

The Calculating and Electrical Signal Terms.........................................26 a) b) Term 2a: "calculating a relative phase angle between said camshaft and said crankshaft"........................................... 26 Term 2b: "electrical signal corresponding to said phase angle".......................................................................................... 28

3.

The Spool Valve Terms...........................................................................28 a) Term 3a: "vented spool"............................................................ 28

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Page b) c) d) Term 3b: "valve body" .............................................................. 31 Term 4a: "supplying hydraulic fluid from said source through said spool valve" [to a means for transmitting rotary movement...] .................................................................. 31 Term 4c: "said spool valve selectively allowing and blocking flow of hydraulic fluid through an inlet line and through return lines" ........................................................... 32

4.

The "Transmitting" Terms ......................................................................35 a) b) Term 4b: "means for transmitting rotary movement to said camshaft" ............................................................................ 35 Term 5: "transmitting rotary movement to said camshaft in such a manner as to vary the phase angle of said camshaft with respect to said crankshaft, said rotary movement being transmitted through a housing, said housing being mounted on said camshaft, said housing further being rotatable with said camshaft and being oscillatable with respect to said camshaft" .................... 36

5.

The "Solenoid" Terms .............................................................................37 a) b) c) d) Term 3c: "utilizing an electromechanical actuator to vary the position of said vented spool"..................................... 37 Term 3d: "variable force solenoid" .......................................... 37 Term 11: [a coil] "adapted to receive said electrical signal from said engine control unit"........................................ 38 Term 12b: "said armature to exert a force upon said spool and induce movement in said spool, said movement corresponding to said signal from said engine control unit".................................................................... 39 Term 13: "said air gap separating said coil from said armature" .................................................................................... 40

e)

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TABLE OF AUTHORITIES Page(s)

CASES AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374 (Fed. Cir. 2005)................................................................................................17 Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006)..................................................................................................16 Bell Comm. Research, Inc. v. Vitalink Comm., 55 F.3d 615 (Fed. Cir. 1995) ...................................................................................................17 Bicon, Inc. v. Diro, Inc., 441 F.3d 945 (Fed. Cir. 2006)..................................................................................................17 Day, Int'l, Inc. v. Reeves Bros, Inc., 260 F.3d 1343 (Fed. Cir. 2001)..........................................................................................17, 24 Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291 (Fed. Cir. 2005) ...............................................................................................36 Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332 (Fed. Cir. 2003) ...............................................................................................20 Globetrotter Software, Inc. v. Elan Computer Group, Inc., 236 F.3d 1363 (Fed. Cir. 2001) ...............................................................................................36 Honeywell Int'l Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006) ...............................................................................................21 In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994)..................................................................................................17 Terlep v. Brinkmann Corp., 418 F.3d 1379 (Fed. Cir. 2005).......................................................................................... 16-17 Kinik Co. v. ITC, 362 F.3d 1359 (Fed. Cir. 2004)................................................................................................16 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) ...............................................................................................1, 16 Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353 (Fed. Cir. 2005) ...............................................................................................35

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Page(s) Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346 (Fed. Cir. 2003) ...............................................................................................26 Nystrom v. TREX Co., 424 F.3d 1136 (Fed. Cir. 2005).................................................................................... 16-17, 38 O.I. Corp. v. Tekmar Co., 115 F.3d 1576 (Fed. Cir. 1997) ...............................................................................................26 Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003)..........................................................................................17, 23 On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331 (Fed. Cir. 2006)....................................................................................16, 20, 22 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).......................................................................................... 16-17 Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) .........................................................................................18, 20 Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320 (Fed. Cir. 2000)................................................................................................35 Rhodia Chimie v. PPG Indus., Inc., 402 F.3d 1371 (Fed. Cir. 2005) .........................................................................................17, 25 SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001) ...............................................................................................37 Seachange Int'l Inc. v. C-Cor Inc., 413 F.3d 1361 (Fed. Cir. 2005)..........................................................................................17, 24 Storage Tech. Corp. v. Cisco Sys., 329 F.3d 823 (Fed. Cir. 2003) .................................................................................................18 Strattec Security Corporation v. General Automotive Specialty Co., 126 F.3d 1411 (Fed. Cir. 1997) ...............................................................................................18 TurboCare Div. Of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (Fed. Cir. 2001) ...............................................................................................35 V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1301 (Fed. Cir. 2005) ...............................................................................................38 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)............................................................................................16, 21

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Page(s)

STATUTES 35 U.S.C. § 103........................................................................................................................ 14-15 35 U.S.C. § 112, ¶ 1........................................................................................................... 21-22, 34 35 U.S.C. § 112, § 6.......................................................................................................................35

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I.

INTRODUCTION Declaratory judgment Plaintiffs Hitachi, Ltd. and Hitachi Automotive Products (USA),

Inc. (collectively, "Hitachi") set forth herein their Markman contentions relative to Claims 10 and 11 of U.S. Patent 5,497,738 ("the `738 patent") (Ex. 1). Defendants BorgWarner Inc. and BorgWarner Morse TEC Inc. (collectively, "BW") have counterclaimed for infringement of these claims. The `738 patent concerns automotive engine technology and, in particular, a specific improvement to a Variable Camshaft Timing ("VCT") system. VCT systems change the position or phase of a camshaft relative to a crankshaft. Such a change modifies the timing of the opening and closing of the intake and/or exhaust valves relative to the pistons, which are connected to the crankshaft, to modify engine performance, fuel efficiency, and/or emissions. VCT systems, and even the specific components shown in the `738 patent, existed long before the filing of the application for the `738 patent. The `738 patent was directed to a narrow modification to the control system of one of BW's prior art VCT systems. That modification involved using a "variable force solenoid," a type of solenoid already known in the automotive field, and a vented spool in the spool valve that controlled the actuator portion of the system. An overarching issue for the claim construction of Claims 10 and 11 is the energy source needed to move the camshaft relative to the crankshaft, which is done "hydraulically" (i.e., via oil). Such energy has to come from somewhere in the engine, and there are two basic choices: "externally" via the oil pump; or, "internally" via camshaft torque. VCT systems fall into two major groups based on the energy source, as BW's own publications confirm: Oil Pressure Activated ("OPA") and Cam Torque Activated ("CTA").1 BW's own patents describe its system as a CTA system with the camshaft torque acting as the internal energy source. The claims of the `738 patent should be construed accordingly. As recently stated in BW's U.S. Patent publication US2006/0086332 (Ex. 2): "Two types of phasers are Cam Torque Actuated (CTA) and Oil Pressure Activated (OPA). In OPA ... the engine oil pressure is applied to one side of the vane or the other ... to move the vane. ... In a CTA phaser, the variable cam timing system uses torque reversals in the camshaft ... to move the vane. ... The CTA phaser has oil input to make up for losses due to leakage, but does not use engine oil pressure to move the phaser." (¶¶ 0006-0007; emphasis added.)
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II.

AN OVERVIEW OF VCT TECHNOLOGY AND THE `738 PATENT A. Variable Camshaft Timing Systems

The figures below depict one cylinder of a typical internal combustion engine. A piston connected to a rotating crankshaft moves up and down in the cylinder as part of the combustion cycle. The crankshaft, usually via a chain connection, rotates a camshaft. The camshaft has lobes that contact intake and exhaust valves to open and close these valves, timed according to the combustion Valve timing

cycle.

systems can be used to control the timing of opening and closing the intake or exhaust valves based on different engine conditions. One form of valve timing system is VCT, which adjusts the rotational phase angle of the camshaft relative to the crankshaft. VCT makes this adjustment by either advancing the camshaft or retarding the camshaft relative to the crankshaft. VCT systems existed for decades prior to BW entering the field in the early 1990's. One commonly known approach uses an actuator mechanism mounted on the camshaft. A chain or belt connects the actuator mechanism and the crankshaft so that they rotate in tandem. The actuator can be angularly shifted relative to the camshaft, thereby changing the phase of the camshaft relative to the crankshaft. One such system is shown in U.S. Patent 2,861,557 (Ex. 3): In this system, the camshaft 24 has an actuator housing 14 on the end that is connected to the crankshaft via a belt engaging a gear 10 such that the housing rotates with the crankshaft. Inside the housing 14 are a series of "driver" vane lobes 26 and 28 that move a set of "driven" vane lobes 42 and 44 when oil is forced into chambers

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78 and 80. Driven lobes 42 and 44 are connected to a hub 38 attached to the camshaft 24. The amount of oil forced into the cavities 78 and 80 determines the amount of rotation of the driven lobes 42 and 44 and thus the change in the phase of the camshaft 24 relative to the crankshaft. In most VCT systems, and in the kinds of VCT systems at issue in this case, oil is pressurized to push vane lobes or pistons apart to rotate the camshaft relative to the crankshaft. The difference in the systems has to do with the source of energy to pressurize the oil. Two starkly different approaches exist for the energy source to pressurize the oil: (1) "oil pressure actuated" or "OPA" systems that use an "external" energy source such as the engine oil pump to force oil between the vane lobes or pistons, and (2) "cam torque actuated" or "CTA" systems that use an "internal" energy source such as internal camshaft torque pulsations (sometimes referred to as camshaft torque reversals) to force oil between the vane lobes or pistons. Because the energy source is different in each approach, they use essentially opposite principles of oil flow to effect the phase change, as explained below. BW's technology used the CTA "internal energy" approach. Indeed, as stated in BW U.S. Patent No. 5,107,804 (Ex. 4), which shows in Fig. 29 (left) the same basic vane-based CTA system as shown in the `738 patent: "The present invention is designed to overcome these problems associated with prior art variable camshaft timing arrangements by providing a self-actuating, variable camshaft timing arrangement which does not require external energy for the operation thereof..." (1:57-62) "The vane 460 is alternatingly urged in clockwise and counter clockwise directions by the torque pulsations in the camshaft 426 and these torque pulsations tend to oscillate the vane 460 and, thus, the camshaft 426, relative to the sprocket 432." (13:27-31)

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The details of each type of VCT system are illustrated below. 1. The Basic OPA Design

Oil pressure actuated (OPA) VCT systems use engine oil from the main engine oil circuit that is pressurized by the engine oil pump to rotate the camshaft relative to the crankshaft. In an OPA system, as in a CTA system, a valve is used to direct pressurized oil against vane lobes or pistons. This valve is usually called a "spool" valve because it has a part that looks like an empty thread spool sliding inside a cylinder. The sliding part is the "spool" and the cylinder in which it slides is the "body." The diagram from U.S. Patent No. 4,858,572 (Ex. 5) illustrates the basic OPA design, with the usual vane lobe-based actuator and the spool valve 62: In this system, the engine oil flows from the external engine oil pump 80 to the spool valve 61. A solenoid 68 under direction of a control system 82 moves the internal spool 63 back and forth to route oil into the actuator housing into the

chambers 21-25 to push against and move vane lobes 31-35, thereby rotating the hub 18 and the camshaft (see generally col. 3). At the same time, engine oil also drains from the opposite side of the vane lobes back to the oil pump "sump," e.g., the oil pan. Depending on which direction of cam rotation is desired, the spool valve directs pressure from the oil pump against one side of the vane lobes or the other to make them and thus the cam rotate clockwise or counter-clockwise. "Oil pressure actuated" refers to this reliance on engine oil pump pressure to rotate the camshaft. The source of energy to pressurize the oil in an OPA system is the oil pump. OPA systems represent the traditional approach for VCT, and still remains the approach used by nearly every company selling VCTs. Since the late 1980s, BW rejected OPA style VCT systems, and instead adopted the cam-torque actuated approach.

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2.

The Basic CTA Design

Cam torque actuated (CTA) systems work contrary to the OPA system to effectuate a phase change. As reflected in the quoted portion of BW's `804 patent, CTA systems expressly avoid using engine oil pump pressure to effectuate the phase change, using instead camshaft torque pulsations as the energy source. Camshaft torque pulsations naturally occur when lobes on the camshaft rotate and bear down against the intake/exhaust valves, which are biased upwardly by the valve springs. This periodic torque creates a pressure on the oil that exists inside the chambers containing the vane lobes. A spool valve is used to control movement of the pressurized oil from one chamber to another chamber. Shown below is Fig. 29 from BW's own prior art `804 patent (Ex. 4), together with two other diagrams reflecting the flow paths under for clockwise and counter-clockwise cam rotation, as shown in the right and middle diagrams, respectively:

The camshaft torque pulsations change in direction with the opening and closing of the engine valves. In a VCT system such as shown, oil fills chambers on either side of vane 460 lobes 460a/b and the cam torque pressurizes the oil on each side of the lobes. A spool valve is

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used to release the oil pressure on one side of one lobe 460a/b to allow the cam torque pulsations to turn that lobe against the oil in the chamber 432a/b and force the oil into the opposing chamber 432b/a and bear against the lobe 460b/a in that chamber to rotate vane 460 to change the cam phase. Thus, relative to the figures, the left figure shows the spool valve in the "closed" position, with no oil flowing2 between the chambers. Each lobe has an active side (e.g., recesses 432a,b) that has check valves in the flow path that cooperate with the spool valve to allow the cam torque pulsations to move the vane by shifting the oil shown in yellow against the lobes. Each lobe also has a passive side with no check valves that merely shifts the oil shown in blue back and forth to follow the movement of the active side of the lobe. (The green parts of the flow path indicate "static" oil with no place to flow.) The basic "mechanism" to shift the camshaft is the vane lobe/check valve assembly or actuator and flow path between chambers through the spool valve. Operation of the CTA system is simple. To rotate the camshaft counter-clockwise (middle picture), the spool is moved to the right. This releases the oil pressure in the top yellow chamber, allowing the cam torque to push the oil from that chamber to the lower yellow chamber via the spool valve and the left check valve which is pushed open. (The right check valve has balanced pressure across it and remains closed.) Oil is thus "supplied" from the top yellow chamber to the bottom yellow chamber until the desired rotation is achieved,3 whereupon the spool moves again to the middle position, stopping the flow. Similarly, to rotate the camshaft clockwise (right picture), the spool is moved to the left. This releases the oil pressure on the lower yellow chamber, allowing the cam torque to push the oil from that chamber to the top yellow chamber via the spool valve and the right check valve which is pushed open. (The left check valve has balanced pressure across it and remains closed.) Oil is thus "supplied" from the bottom yellow chamber to the top yellow chamber until the desired rotation is achieved, whereupon the spool moves again to the middle position, stopping the flow.
2

The flow arrows are misleading in the figure, as they depict potential flow patterns, rather than actual flow with the spool valve as shown. 3 Many early CTA systems were on/off systems that moved the cam between two positions. 6

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Importantly, the energy source for the phase change in a CTA system is internal because the pressurization of the oil to move the vane is done by the cam torque internally in the CTA actuator. In carrying out the phase change, in a CTA system, the engine oil pump pressure is not needed and the oil does not have to flow to or from the main engine oil circuit, just as BW has described (see n.1, and `804 patent at 2:40-51). The CTA system, by its source of energy to pressurize the oil and oil flow, directly contrasts with the OPA approach. B. The `738 Patent 1. The Developmental Background

Starting in the late 1980s, in an effort to win business from Ford, BW tried to develop a VCT system. BW needed to differentiate itself from the VCT market leaders, including a predecessor company to Hitachi Ltd., Atsugi Unisia. BW developed its version of a CTA system, while the competition generally used OPA VCT systems. All of the basic components were well known, such as an actuator housing driven by a chain connected to a crankshaft, internal vane lobes or pistons moved by oil pressure to rotate the camshaft, spool valves, etc., as reflected in the prior art mentioned in this brief. Tracking its developmental effort, BW began to file VCT patent applications directed to its version of CTA VCT, starting with a patent application that issued as U.S. 5,002,023 ("the '023 patent;" Ex. 6). As indicated in the quote from the `804 patent supra, BW's approach emphasized the advantage that its CTA approach had over the prior art OPA approach that used engine oil pump pressure as the energy source. This emphasis naturally began with the `023 patent, which squarely rejected using engine oil pump pressure to create the phase change, and instead adopted internal camshaft torque pulsations pressurizing internal oil flow (2:20-35): Because the flow of hydraulic oil between the cylinders results from changes in torque experienced by one of the camshafts, no separate pump or other actuating device is required. Further, because the camshaft which is advanced or retarded is advanced or retarded by moving hydraulic fluid which is already within one or another of the oppositely acting cylinders to the other, this hydraulic fluid, engine oil in the preferred embodiment, does not have to flow through the main lubricating pump during the short time interval in which the phase adjustment must take place. Thus, the variable 7

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camshaft timing arrangement does not require the use of a significantly larger engine oil lubricating pump than would otherwise be required, and the actuation rate of the variable camshaft timing arrangement is not limited by the capacity of the engine oil pump. Building upon its base system of the '023 patent, between 1990-1993, BW filed many other VCT patent applications, all directed to a CTA system, but with specific features such as different control systems, modifications to the spool valve and its solenoid. Four of these patents are listed in the background of the `738 patent. The `738 patent discloses the same base CTA system as all these other patents, as the basic mechanical structure remained the same.4 BW ultimately failed to produce a commercially viable system and essentially abandoned its CTA efforts in the mid-1990s, in large part due to technical problems with its approach. Late in its development efforts, BW filed a patent application for a "new" solution that reverted to a system using engine oil pump activation as one method for effecting the phase change. That application was filed in late 1994 and eventually led to U.S. Patent No. 5,657,725 (Ex. 7). Reflecting the change in approach, the `725 patent stated: "The current invention addresses the problems previously discussed by using the engine oil pump pressure as one source of energy for actuating the VCT mechanism" (2:15-17). The '725 patent also confirmed that the prior systems, of the same kind as the `738 patent, used the cam torque reversals as the energy source for movement of the cam (see 2:1-3: "In all the systems described above, timing control is achieved in response to torque reversals, or pulses, from the camshaft generated during normal operation of the engine.) 2. The Disclosure And Claims Of The `738 Patent a) The Disclosure As stated, the `738 patent is directed to a CTA-type VCT system having particular features. The `738 patent discloses two alternative mechanical arrangements attached to the end of the camshaft to move it: (a) opposing hydraulic cylinders, and (b) a vane lobes in chambers.

4

Not unexpectedly, the `738 patent criticized (see 2:34-36) systems that relied on engine oil pressure ("A new engine at high speed and low temperature can have a drastically different oil pressure than a worn engine at hot idle."). 8

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Both alternatives exist in the prior art, including BW's own prior art.5 Fig. 19 of the `738 patent illustrates the vane version of CTA system. As is immediately evident, the new aspects were details of the spool valve 198 and its solenoid 201. The basic vane lobe/check valve

mechanism to move the camshaft was old and was the same as in other BW patents of that era, such as the `804 patent discussed above in connection with the explanation of CTA systems. Even the same drawing figures for that mechanism were used. The operation of the structure6 has been explained previously. Movement of the spool7 from its center position left or right releases the pressure on the oil on one of the active sides of the vane lobes 160a/b caused by the cam torque pulsations. Oil flows between the spool valve and the check valve/vane lobe assembly via an inlet line 182 and two return lines immediately adjacent the inlet line. By moving the spool, oil is supplied from one cavity 132a/b to the other through the spool valve and one of the check valves 186b/184b. Rotation of the cam results, as per the previous colored diagrams. The piston version of the invention, as shown in Fig. 1, wherein pressurized oil is transferred between piston cylinders 54 and 56, worked the same.

See, e.g., U.S. Patents No. 5,002,023 (Ex. 6) (disclosing the hydraulic cylinder approach) and No. 5,107,804 (Ex. 4) (disclosing the vane approach). 6 Basically, the VCT includes a housing, in the form of a sprocket 132. The crankshaft (not shown) is connected to the housing 132 through a chain or belt (not shown). Vanes 160a/b extend in the housing 132. The vanes are fixed to a camshaft 126 (not shown). Recesses 132a/b are formed between the vanes 160a/160b and the housing 132 and are filled with oil. The spool valve 192 includes a spool valve body 198, and a vented spool 200 that is slidably disposed in the spool valve body 198. The vented spool 200 has a vent 198d in the spool, and an annular recess 198b that is positioned to connect the passage connected to the inlet line 182 with either of the two return passages to release the oil pressure to allow the cam torque to move the cam. The purpose of the vent 198d was to vent pressure in the spool valve "to the atmosphere" (8:24-25) such that the only force on the spool was that applied by the solenoid 201 and the spring 202 (8:28-31). 9
7

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The `738 patent confirmed, just as did other patents filed by BW in the early 1990s, that the energy source for the rotation was camshaft torque.8 In carrying out a phase change, oil does not drain back to the main engine oil circuit that includes the main oil gallery with an oil pump that pressurizes the oil. Any oil provided by the main oil gallery to the vane mechanism is limited to make-up oil, i.e., making up oil that has leaked from that mechanism.9 With the CTA system of the `738 patent, engine oil pump pressure does not make the phase change occur. As noted, what was described as novel in the `738 patent was not the vane lobe/check valve mechanism, but instead the control system in the CTA system. Indeed, as stated at 1:2427: "More specifically, the present invention relates to a control system which utilizes a variable force solenoid to directly control the position of a fully vented spool valve which is an useful part of the hydraulic system10" (emphasis added). Notwithstanding this assertion, most of the patent deals with the details of the vane lobe(or piston)/check valve mechanism, which was old. The patent gives no details of the electronic control system. The patent did no more than direct the reader to another BW patent at 3:13-16: "The preferred embodiment employs a closed-loop feedback system, such as the one disclosed in U.S. Pat. No. 5,184,578, which corrects for any phase angle error." Nothing was new about the "variable force solenoid" ("VFS") either, as it also was in the automotive art. Solenoids are, of course, very well known and consist of a coil of wire through which electric current is applied to create a magnetic field and thus cause movement of a piece of metal or "armature" inside the coil. U.S. Patent No. 3,754,482 states for example, concerning a See 9:7-15: "The vane 160 is alternatingly urged in clockwise and counterclockwise directions by the torque pulsations in the camshaft 126 and these torque pulsations tend to oscillate vane 160, and, thus, camshaft 126, relative to sprocket 132. However, in the spool position shown in FIGS. 19 and 20, such oscillation is prevented by the hydraulic fluid within recesses 132a, 132b of sprocket 132 on opposite sides of lobes 160a, 160b, respectively, of vane 160, because no hydraulic fluid can leave either recesses 132a or 132b." See 7:10-13: "Check valves 184, 186, thus, permit the initial filling of recesses 132a, 132b and provide for a continuous supply of make-up hydraulic fluid to compensate for leakage therefrom." 10 That hydraulic system was described as one "of the type in which the position of the camshaft is ... varied ... in reaction to torque reversals experienced by the camshaft," i.e., a CTA system (1:15-18). 10
9 8

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VFS in an automotive application, that "The variable force solenoid valve functions such that as the current applied to the solenoid increases the output force of the solenoid valve increases so that the solenoid valve progressively moves toward [the] closed position with increasing current" (4:67-5:4; emphasis added). The `482 patent references U.S. Patent No. 3,225,619 (Ex. 8) for the technical details of the solenoid. A comparison of Fig. 1 from the `619 patent (left) and the solenoid portion of Fig. 19 (middle) shows the similarity. All that was disclosed structurally in the `738 patent was that the VFS was a "cylindrical armature, or variable area, solenoid" (8:37-38) in which a "Main air gap 201c extends radially around armature 201b and may contain nonmagnetic bearing material" (8:38-40). Even the spool venting was old, as seen from Fig. 1 of U.S. Patent 4,524,947 (Ex. 9) (right; vent is passage 38).

All that was said functionally about the VFS was that it had advantages over a "PWM [pulse-width modulated] solenoid" (3:37) and that "the position of spool 200 [was] readily ascertainable based on solenoid current alone" (8:33-35), just like the statement in the `482 patent. A PWM signal looks as follows: The `738 patent also stated that an ECU 208 sends a current control signal to the variable force solenoid 201, whose magnitude is increased or decreased, such that the solenoid 201 moves the spool 200 against the bias of spring 202. Taking the concept of avoiding engine oil pressure one step further, the spool position was "completely independent" of oil pressure (8:9-11; 60-66).

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It should be noted that while Fig. 19 showed a functional view of the solenoid and spool, Fig. 13 depicted the actual construction of the VCT system, where the spool valve 192 is incorporated in the camshaft 126, i.e., the housing 132 exists around the spool valve 192. b) Claims 10 and 11 Claim 10 of the `738 patent is set forth below, with the terms really needing construction in bold. As a whole, Claim 10 recites, along with the preamble, method steps to effectuate a phase change using a variable camshaft timing system in an internal combustion engine, and is not just about a control system for moving a vented spool, which is how the patent described the invention, as discussed supra. 10. In an internal combustion engine having a variable camshaft timing system for varying the phase angle of a camshaft relative to a crankshaft, a method of regulating the flow of hydraulic fluid from a source to a means for transmitting rotary movement from said crankshaft to a housing, comprising the steps of: sensing the positions of said camshaft and said crankshaft; calculating a relative phase angle between said camshaft and said crankshaft, said calculating step using an engine control unit for processing information obtained from said sensing step, said engine control unit further issuing a electrical signal corresponding to said phase angle; controlling the position of a vented spool slidably positioned within a spool valve body, said controlling step being in response to said signal received from said engine control unit, said controlling step utilizing an electromechanical actuator to vary the position of said vented spool, said electromechanical actuator comprising a variable force solenoid; supplying hydraulic fluid from said source through said spool valve to a means for transmitting rotary movement to said camshaft, said spool valve selectively allowing and blocking flow of hydraulic fluid through an inlet line and through return lines; and, transmitting rotary movement to said camshaft in such a manner as to vary the phase angle of said camshaft with respect to said crankshaft said rotary movement being 12

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transmitted through a housing said housing being mounted on said camshaft, said housing further being rotatable with said camshaft and being oscillatable with respect to said camshaft. Claim 11 depends from claim 10 and recites the VFS in more detail: 11. The method of claim 10 wherein said variable force solenoid comprises: a coil, said coil being adapted to receive said electrical signal from said engine control unit; an armature, said armature being substantially surrounded by said coil, said armature being connected to said spool, said coil, when energized, creating a magnetic field sufficient to cause said armature to exert a force upon said spool and induce movement in said spool, said movement corresponding to said signal from said engine control unit; an air gap, said air gap separating said coil from said armature; and, a housing, said housing providing an enclosure for said coil, said armature, and said air gap. c) The Prosecution of the `738 Patent Given the nature of the invention of the `738 patent and the large amount of VCT prior art, the claims were rejected on various bases, with the more significant ones being as follows. (1) BW's Preamble Amendments and Statements

During prosecution, BW extensively amended the preamble of application claim 11 (which became patent claim 10) in response to obviousness concerns raised by the examiner, as follows (Ex. 10; Prelim. Amd., 11/23/93, p. 2). BW's amendments show that it intimately meshed the preamble with the body, so that together they defined the claimed method: In an internal combustion engine having a variable camshaft timing system for varying the phase angle of a camshaft relative to a crankshaft, a method of regulating the flow of hydraulic fluid from a source to a means for transmitting rotary movement from said crankshaft to a housing, the method comprising the steps of: sensing the positions of [a] said camshaft and [a] said crankshaft; .. supplying hydraulic fluid from said source through said spool valve . . . . BW's accompanying remarks stated: "[d]uring [Examiner] conversations the Examiner 13

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expressed his concern that the present invention was obvious over prior art, but suggested that a continuation-in-part would be considered for allowance if the proper formalities were observed." Id., p. 4. As BW explained, the examiner stated that "method Claims 11-15 needed more detail before they would be allowed." BW stated that "[c]laims 11 and 13-15 are amended to add the detail required by the Examiner; Claim 12 is cancelled." Id. (2) BW's Repeated Statements Confirming The "Internal" Aspect of the Oil Flow Consistent with the nature of a CTA system, with its use of the internal energy source of camshaft torque to force the oil between chambers adjacent the active sides of the lobes in the VCT actuator, BW repeatedly asserted throughout the prosecution that its invention "controls the flow of oil internal to the VCT mechanism only" and distinguished the prior art applied by the PTO on this basis. These arguments directly track the preamble phrase "regulating the flow of hydraulic fluid . . . ." and the supplying step, as the claimed method manipulates the recited structure to control the flow of oil between the internal parts of the actuator. The first instance of the assertion was in response to a January 4, 1994 Office Action rejecting all pending claims in the '738 application (application claims 1-11 and 13-15), under 35 U.S.C. § 103, as being unpatentable over Linder et al. (U.S. Patent No. 5,056,477), Butterfield et al. (U.S. Patent No. 5,172,659) and Strauber et al. (U.S. Patent No. 5,012,774) (Ex. 11), shown below. In Strauber, the external engine oil pressure from the oil pump (colorized version including engine oil circuit) is used to rotate the camshaft relative to the crankshaft, with oil from another part of the VCT mechanism draining back to the oil pan.

14

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Strauber discloses a VCT in which the energy source energy for the phase change was the engine oil pump (see 3:38-40: "Lubricating oil passes under pressure from the engine oil circuit into ... the control piston" to rotate the cam). BW responded on June 30, 1994 (Ex. 12) and argued as follows to distinguish Strauber's VCT (Ex. 12 at p. 4 ; emphasis added): Further, the Strauber et al. system controls the flow of oil both internal and external to the VCT mechanism. The present invention, however, controls the flow of oil internal to the VCT mechanism only. BW's statement matches exactly what the specification depicts ­ oil is controlled, by the spool valve, to flow "internally" back and forth from chamber or piston cylinder to the other through the check valve assembly. BW repeated this same statement two more times during prosecution,11 further underscoring precisely how the invention worked.12 Thus, all of BW's statements during prosecution demonstrate a clear rejection of VCT systems that depend on engine oil pressure, including where oil pressure may be present on the spool during operation.

An August 1, 1994 Office Action again rejected all pending claims under Section 103 as being obvious based upon a combination of the Linder, Butterfield and Strauber patents, as well as a patent to Hendrixon et al. (U.S. Patent No. 5,000,420). BW responded on November 7, 1994, in which it "reassert [its] position that Strauber et al. does not teach what the Examiner suggests" because, inter alia, this reference "controls the flow of oil both internal and external to the VCT mechanism," while "[t]he present invention, however, controls the flow of oil internal to the VCT mechanism only." (Ex. 13, at p. 3; emphasis added). Likewise, an December 15, 1994 Office Action, again rejected all claims under Section 103, based upon the same prior art, including Strauber. This time, BW appealed the Examiner's decision to the PTO Board of Patent Appeals and Interferences. In its Appeal Brief, filed May 24, 1995, BW argued for the third time that its invention "controls the flow of oil internal to the VCT mechanism only," as opposed to Strauber, which "controls the flow of oil both internal and external to the VCT mechanism." (Ex. 14, at p. 8; emphasis added.) 12 BW also emphasized entirely avoiding engine oil pressure in arguing patentability over a prior art reference to Hendrixon (U.S. Patent No. 5,000,420). BW stated that "Appellant submits that problems caused by the VCT system dependency on engine oil pressure were not known at the time of the Hendrixon et al. patent." These remarks confirm BW's rejection of "VCT systems" that use engine oil pressure. BW described that engine oil at control pressure acts on the spool to counteract the force of the solenoid on the spool. BW stated that "Given the presence of engine oil [on the face of the spool], the Hendrixon et al. invention could not have expected the problems caused by a VCT system dependent upon engine oil pressure." (Ex. 14; Appeal Brief, p. 10). BW stressed that its invention addressed problems such as lack of engine oil pressure at start-up. Id. (emphasis added). 15

11

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III.

THE LAW OF CLAIM CONSTRUCTION While, this Court is obviously quite familiar with the basic claim construction precedent,

a few points deserve mention in the context of the instant claim construction debate. First, the "primary focus" in determining the meaning of a claim limitation is to "consider the intrinsic evidence of record, viz., the patent itself, including the claims, the specification, and, if in evidence, the prosecution history, from the perspective of one of ordinary skill in the art." Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005)).13 Claim construction analysis begins with the words of the claim. See Nystrom v. TREX Co., 424 F.3d 1136, 1142 (Fed. Cir. 2005); Vitronics, 90 F.3d at 1582. "The words of patent claims have the meaning and scope with which they are used in the specification and the prosecution history." Kinik Co. v. ITC, 362 F.3d 1359, 1365 (Fed. Cir. 2004), quoted in Phillips, 415 F.3d at 1315. Extrinsic evidence may be helpful.14 Second, even aside from disclaimers of claim scope, it is "improper to read [a claim] term to encompass a broader definition" than the "ordinary and customary meaning revealed by the context of the intrinsic record." Nystrom, 424 F.3d at 1145 (emphasis added). "[W]hen the scope of the invention is clearly stated in the specification, and is described as the advantage and distinction of the invention, it is not necessary to disavow explicitly a different scope." On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331 (Fed. Cir. 2006). Indeed, "[c]laims cannot be of broader scope than the invention set forth in the specification" Id.15 "[I]ntrinsic evidence is the most significant source of the legally operative meaning of disputed claim language" because it "constitute[s] the public record of the patentee's claim, a record on which the public is entitled to rely." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996). 14 Extrinsic evidence, which is accorded less weight than intrinsic evidence, can shed useful light on the relevant art. Phillips, 415 F.3d at 1317. Therefore, extrinsic evidence, such as expert testimony, dictionaries, and treatises, "may be considered if the court deems it helpful" as long as the court "attach[es] the appropriate weight" to extrinsic sources "in light of the statutes and policies that inform patent law." Phillips, 415 F.3d at 1317-18, 1324; see also Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005). The specification is "always highly relevant to the claim construction analysis," because one of ordinary skill in the art reads the claim term "not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313, 1315 (internal quotation marks omitted); see Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (stating that claims 16
15 13

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Third, the prosecution history "inform[s] the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317, quoted in Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005).16 When the patentee makes repeated statements differentiating the invention over prior art, this demonstrates that the patentee has "unequivocally disavowed a certain meaning to obtain his patent," and the definition from the prosecution history must be applied.17 Thus, the court examines "the entire prosecution history, which includes amendments to claims and all arguments to overcome and distinguish references." Seachange Int'l Inc. v. C-Cor Inc., 413 F.3d 1361, 1372 (Fed. Cir. 2005). Fourth, preambles are claim limitations when they give meaning to the claim and properly define the invention. In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994). Recently, in analyzing a claim preamble, the Federal Circuit strongly indicated that each word in the claim should be a limitation: "claims are interpreted with an eye toward giving effect to all terms in the claim." Bicon, Inc. v. Diro, Inc., 441 F.3d 945, 950 (Fed. Cir. 2006). The preamble is a limitation under various circumstances. First, "when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects."18 "must be read in view of the specification, of which they are a part"). The specification provides a key context for the claim words and the invention itself, specifically preventing unduly broad interpretations that might otherwise stem from considering the ordinary meaning itself. See, e.g., AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374, 1380-81 (Fed. Cir. 2005), discussed in Nystrom, 424 F.3d at 1145. 16 "The purpose of consulting the prosecution history in construing a claim is to exclude any interpretation that was disclaimed during prosecution." Rhodia Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (internal quotation marks omitted). "The prosecution history constitutes a public record of the patentee's representations concerning the scope and meaning of the claims, and competitors are entitled to rely on those representations . . . ." Seachange International v. C-Cor, 413 F.3d 1361, 1372 (Fed. Cir. 2005) (quoting Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 957 (Fed. Cir. 2000)). See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324, 1327 (Fed. Cir. 2003); Day, Int'l, Inc. v. Reeves Bros, Inc., 260 F.3d 1343, 1348 (Fed. Cir. 2001). 18 Bell Comm. Research, Inc. v. Vitalink Comm., 55 F.3d 615, 620 (Fed. Cir. 1995) (finding that reference to "said packet" in body of claim expressly incorporated by reference the preamble 17
17

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Second, the preamble is a limitation when a patentee relies on it for reasons related to patentability during prosecution.19 IV. HITACHI'S PROPOSED CLAIM CONSTRUCTION A. The Claim Terms

Hitachi sets forth below its proposed claim construction, which mirrors both what BW actually invented in view of the extensive prior art and what BW said to the Patent Office about that invention. The discussion of the evidence that supports the construction follows the table. The various parts of the preamble and of each method step have been numbered for reference.
Term No. 1a Claims 10 and 11 with terms to be construed in bold Claim 10 In an internal combustion engine having a variable camshaft timing system for varying the phase angle of a camshaft relative to a crankshaft, a method of regulating the flow of hydraulic fluid Proposed Construction

A system in which the angular position of a camshaft relative to a crankshaft is varied in reaction to camshaft torque reversals. A method of directing the flow of oil "internal to the VCT mechanism only" i.e., internal to the VCT actuator, in order to change the phase angle of a camshaft relative to a crankshaft. A supply volume of oil located in a recess on one side of certain of the lobes of a vane in a housing (or pistoncylinder) and pressurized primarily by camshaft torque. § 112 ¶ 6 function is transmitting rotary movement from said crankshaft to a housing. § 112 ¶ 6 "means" structure is, according to the specification: A sprocket attached to the housing (vane or piston cylinder) and a chain or belt attaching the sprocket to a crankshaft, or the equivalents under § 112 ¶ 6.

1b

1c

from a source

1d

to a means for transmitting rotary movement from said crankshaft to a housing, comprising the steps of:

2a

sensing the relative positions of said camshaft and said crankshaft; calculating a relative phase angle between said camshaft and said crankshaft, said calculating step using an engine control unit for processing information obtained from said

Calculating, using an ECU, the desired relative phase angle between the camshaft and crankshaft using the sensed positions of the camshaft and crankshaft.

phrase `said packet including a source address and a destination address.'"); see Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) (finding preamble reciting "producing on a photoreceptor an image of generated shapes made up of spots" was intimately meshed with the ensuing language in the claim which recited "the generated shapes" and the term "spots" recited twice in the body). 19 See Strattec Security Corporation v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997) (finding that amendment to preamble and arguments associated therewith made preamble phrase a limitation); Storage Tech. Corp. v. Cisco Sys., 329 F.3d 823, 834-35 (Fed. Cir. 2003) (finding that the term "forwarding device" in the preamble was a limitation based on prosecution arguments differentiating the prior art on this basis). 18

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2b

3a

sensing step, said engine control unit further issuing a electrical signal corresponding to said phase angle; controlling the position of a vented spool slidably positioned within

3b 3c

3d

a spool valve body said controlling step being in response to said signal received from said engine control unit, said controlling step utilizing an electromechanical actuator to vary the position of said vented spool," said electromechanical actuator comprising a variable force solenoid;

A current control signal issued by the ECU corresponding to the desired relative phase angle between the camshaft and crankshaft. A spool having: (a) an internal passage passing through each end of the spool and leading to atmosphere to eliminate any influence on spool movement due to oil pressure, and (b) an annular recess allowing the flow of oil. A housing in which the vented spool axially moves. Using an electromechanical device to change the position of the vented spool, in response to the current control signal from the ECU.

4a

supplying hydraulic fluid from said source through said spool valve to a

4b

means for transmitting rotary movement to said camshaft

The electromechanical device includes a solenoid driven by a non-PWM, current control signal from the ECU with the force applied by the solenoid proportionally varying with the magnitude of the current control signal. Directing the flow of oil "internal to the VCT mechanism only" from the "source" to the "means for transmitting" to allow cam torque pulsations to rotate the vanes (or shift the piston-cylinder), [§ 112 ¶ 6 function is transmitting rotary movement to the camshaft. § 112 ¶ 6 "means" structure is:] (a) the sides of the lobes in the vane (or pistoncylinder) and the corresponding adjacent areas of the housing opposite to the supply volume sides of other lobes in the vane (or pistoncylinder); and (b) check valves that upon the axial movement of the annular recess, permit oil from the supply volumes to flow unidirectionally into (a) such that cam torque pulsations may rotate the vanes to change the phase angle of the camshaft relative to the crankshaft, or the equivalents under § 112 ¶ 6.

4c

said spool valve selectively allowing and blocking flow of hydraulic fluid through an inlet line and through return lines; and

5

transmitting rotary movement to said camshaft in such a manner as to vary the phase angle of said camshaft with respect to said crankshaft, said rotary movement being transmitted through a housing, said housing

The oil is supplied as defined in Term 4a, with: (a) the oil from the "source" to the "means for transmitting" flowing via an inlet line and one of two return lines opened and closed responsively to selective axial movement of the annular recess in the spool, and (b) the inlet and return lines being attached between the spool valve body and the "means for transmitting." Transmitting rotary movement to the camshaft to vary the phase angle of the camshaft relative to the crankshaft. The rotary movement is transmitted through a housing mounted on the camshaft. The housing can rotate with and oscillate relative to the

19

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being mounted on said camshaft, said housing further being rotatable with said camshaft and being oscillatable with respect to said camshaft.

camshaft.

11

12a

12b

13

Claim 11 The method of claim 10, wherein said variable force solenoid comprises: a coil, said coil being adapted to receive said electrical signal from said engine control unit; an armature, said armature being substantially surrounded by said coil, said armature being connected to said spool, said coil, when energized, creating a magnetic field sufficient to cause said armature to exert a force upon said spool and induce movement in said spool, said movement corresponding to said signal from said engine control unit; an air gap, said air gap separating said coil from said armature; and,

A coil that receives the current control signal from the ECU. Physically attached.

The armature applies a force on the spool in an amount that is proportionally related to the magnitude of the current control signal sent by the ECU.

A fixed space or gap in the structure between the coil and the armature, extending the length of the armature, without magnetic bearing material between the coil and the armature, and with air in the gap during operation.

a housing, said housing providing an enclosure for said coil, said armature, and said air gap.

B.

The Evidence Supporting the Proposed Construction 1. The Preamble Terms (1a-1d)

As discussed supra, preambles are claim limitations when they give meaning to the claim and properly define the invention. This is plainly the case for Claim 10 for the following reasons. First, the body of the claim recites "said camshaft," "said crankshaft," and "said source," where the preamble contains the antecedent basis for these terms. 20 Second, BW chose to use both the preamble and the body to define the claimed method, alone demonstrating that the preamble is a claim limitation.21 Third, the prosecution history placed significant emphasis See Bell Communications and Pitney Bowes; see also Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332 (Fed. Cir. 2003) (determining that preamble was limitation because method steps required manipulation of particular structures that are identified and described only the preamble). 21 See On Demand Mach. Corp., 442 F.3d at 1343-44 (finding that preamble phrase "high speed manufacture of a single copy of a book" limited claim scope because it provided a framework and focused the reader on the invention). 20
20

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on the preamble, as BW's amendments tightly wove the preamble into the body of the claim to seamlessly define the claimed method. BW obviously regarded the preamble as significant. a) Term 1a: "variable camshaft timing system" Proposed Construction: a system in which the angular position of a camshaft relative to a crankshaft is varied in reaction to camshaft torque reversals. The intrinsic evidence compels this construction. First, the `738 patent specification uniformly and unambiguously defined (at 1:13-18) the "Field of the Invention" as a variable camshaft timing ("VCT") system that used camshaft torque reversals to vary the relative position of the camshaft relative to the crankshaft, i.e., a CTA VCT system: This invention relates to an hydraulic control system for controlling the operation of a variable camshaft timing (VCT) system of the type in which the position of the camshaft is circumferentially varied relative to the position of a crankshaft in reaction to torque reversals experienced by the camshaft during its normal operation. (emphasis added). Second, both of the two alternative VCT embodiments are CTA. In the first

embodiment (Figs. 1-9), hydraulic fluid is pushed by cam torque from one cylinder 54/56 to the other to change the camshaft phase. In the second embodiment (Figs. 10-20), hydraulic fluid is pushed by cam torque from one recess 132a/132b to the other to effectuate the camshaft phase change. No other VCT system is described or suggested and nothing is provided as to how to adapt what was disclosed in the patent to other types of VCT systems.22 Indeed, any broader interpretation of "variable camshaft timing system" beyond CTA systems would run afoul of 35 U.S.C. § 112, ¶ 1. The specification has no explanation of how to make and use anything but a CTA system. Indeed, the system as disclosed in the `738 patent could not operate using engine oil pump pressure to create the phase change. Very significant structural and operational changes must be made compared to the disclosed system, as demonstrated by BW's own later

22

See Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582, 1584, n. 6 (Fed. Cir. 1996); Honeywell Int'l Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006) (interpreting "fuel injection system component" to be a fuel filter, including because written description repeatedly described the invention as a fuel filter and no other fuel injection components were described as having the inventive properties). 21

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pressure, as discussed supra. When a camshaft phase change is desired, pressure in one of the chambers is released, allowing the energy of the cam torque to push the oil into the other chamber. This results in the vane lobes or pistons in the two disclosed embodiments moving and the cam rotating, just as shown in the color diagrams supra. No oil flow external to the vane lobe/check valve mechanism (the "VCT actuator") ­ and especially from the main engine oil circuit/engine oil pump pressure - is used in carrying out the phase change in the disclosed embodiments. The mechanical operation of the BW's CTA system was trivially simple, just like the fact that that system operates by controlling the flow "internal to the VCT mechanism only," as BW repeatedly argued to the Patent Office to obtain issuance of the `738 patent, as discussed supra. The disclosure of the `738 patent was thus consistent with BW's other patents, many of which showed the same "mechanism." The prior art OPA systems (e.g., Strauber), by contrast, used the oil pump energy and flow from the main engine oil circuit to move the vanes. As such, the goal of the `738 patent was to avoid engine oil pressure to effect the phase change. In fact, the `738 patent limits the use of external engine oil to initially filling up the system and to provide make-up oil. The specification specifically stresses that the make-up oil "does not affect, and is not affected by, the operation of the electromechanical actuator 201" (9:47-50). The `738 patent teaches that make-up oil flow entirely bypasses the spool 200 to keep oil from the oil pump or "main oil gallery" ("MOG") circuit independent of operation of the actuator 201 (7:35-38, 8:15-23; 9:42-50). As such, the MOG oil is not regulated by the spool valve. Each disclosed embodiment involves moving the spool to allow oil to flow from a given recess/cylinder, through an associated return line, through the spool valve, through the inlet line and to the other recess. The system does not flow oil from the return line to the MOG; if it did, the phase change operation would fail for lack of oil to push the piston or vane lobe. Engine oil pressure energy does not change the phase. Thus, the disclosure of the `738 patent, particularly when combined with BW's repeated statements28 to the Patent Office regarding the "internal only" flow compel the construction Repeated statements to the PTO about the "invention," and especially to differentiate over prior art, limit the scope of the claims. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 23
28

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proposed by Hitachi. c) Term 1c: "a source" Proposed Construction: a supply volume of oil located in a recess on one side of certain of the lobes of a vane in a housing (or piston-cylinder) and pressurized primarily by camshaft torque. As with the other terms, the intrinsic evidence compels the construction proffered by Hitachi. As discussed herein, to move the camshaft relative to the crankshaft, the starting point of the oil flow is the supply volume of oil in one of the recesses between vane lobes and the housing, or within the piston-cylinder. To effect a camshaft phase change, the spool is moved to position the annular recess 198b to establish oil flow between the inlet line 182 and one of the oil-filled chambers 132a/b through return lines. That flow forces one of the check valves 184b/186b open and oil flows into the other chamber.29 The oil flow is always unidirectional from one chamber 132a/b through the