UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD.;
`BROAD OCEAN MOTOR LLC; and
`BROAD OCEAN TECHNOLOGIES, LLC
`
`Petitioners
`
`v.
`
`NIDEC MOTOR CORPORATION
`
`Patent Owner
`
`U.S. Patent No. 7,626,349
`Issue Date: December 1, 2009
`Title: LOW NOISE HEATING, VENTILATING AND/OR
`AIR CONDITIONING (HVAC) SYSTEMS
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`Case No. IPR2014-01121
`
`HOU 1805131v.2
`
`ATTORNEY EYES ONLY
`REDACTED VERSION
`
`

`
`TABLE OF CONTENTS
`
`B.
`
`C.
`
`D.
`
`I.
`
`II.
`
`V.
`
`THE RESPONSE, OTHER THAN ON THE SECONDARY
`CONSIDERATIONS ISSUE, IS MOSTLY ATTORNEY
`ARGUMENT THAT SHOULD BE GIVEN LITTLE WEIGHT ..................1
`PATENT OWNER’S REPEATED ARGUMENT ABOUT
`THE PREAMBLE IS IRRELEVANT ............................................................2
`III. BESSLER AND KOCYBIK ARE PROPERLY
`COMBINABLE...............................................................................................3
`A.
`Petitioners Have Provided A Rational Basis With
`A Reasoned Underpinning For The Combination
`Of Bessler And Kocybik.............................................................6
`Patent Owner’s Repeated Economic Infeasibility
`Argument Is Irrelevant As A Matter Of Law .............................8
`Patent Owner’s Argument That Bessler Teaches
`Away Is Predicated On An Incorrect Construction
`of the “System Controller” Claim Term...................................11
`Chen Does Not Teach Away From Combining
`Bessler And Kocybik ................................................................16
`IV. NIDEC’S PROFERRED “SECONDARY
`CONSIDERATIONS” DO NOT OVERCOME THE PRIMA
`FACIE CASE OF OBVIOUSNESS..............................................................19
`CONCLUSION..............................................................................................25
`
`HOU 1805131v.2
`
`- i -
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.3d 1289 (Fed. Cir. 2012)............................................................................19
`Galderma Labs., L.P. v. Tolmar,
`737 F.3d 731 (Fed. Cir. 2013).............................................................................16
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Final Written Decision (Paper 59) (PTAB Nov. 13, 2013), aff’d
`sub nom, In re Cuozzo Speed Techs. LLC, 778 F.3d 1271 (Fed. Cir. 2015)........17
`Gemtron Corp. v. Saint-Gobain Corp.,
`572 F.3d 1371 (Fed. Cir. 2009).............................................................................2
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004)...........................................................................20
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012)...........................................................................19
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992)...............................................................................3
`In re Farrenkopf,
`713 F.2d 714 (Fed. Cir. 1983)...................................................................... 10, 18
`In re Futton,
`391 F.3d 1195 (Fed. Cir. 2004)...........................................................................18
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) ...............................................................................18
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996).............................................................................20
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ..........................................................................................6, 7
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, Final Written Decision (Paper 68) (PTAB Feb. 11, 2014)......18
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006)...........................................................................22
`Orthopedic Equip. Co. v. U.S.,
`702 F.2d 1005 (Fed. Cir. 1983)...........................................................................10
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009)..............................................................................1
`Therasense, Inc. v. Becton, Dickinson and Co.,
`593 F.3d 1289 (Fed. Cir. 2010), aff’d in relevant part, overruled on other
`grounds, 649 F.3d 1276 (Fed. Cir. 2011).............................................................21
`
`HOU 1805131v.2
`
`- ii -
`
`

`
`Tokai Corp. v. Easton Enters., Inc.,
`632 F.3d 1358 (Fed. Cir. 2011).................................................................... 20, 24
`
`Other Authorities
`MPEP §2111.01 (IV) ...............................................................................................12
`MPEP §2143 ..............................................................................................................8
`MPEP §2145 (I) .........................................................................................................2
`MPEP §2145 (VII)...................................................................................................10
`
`HOU 1805131v.2
`
`- iii -
`
`

`
`PETITIONER’S LISTING OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`1001
`1002
`
`1003
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`1015
`
`1016
`
`1017
`1018
`1019
`1020
`1022
`
`U.S. Patent No. 7,626,349
`Excerpts from the Prosecution History of Application
`11/701,350, which issued as the ‘349 Patent
`Japanese Patent Publication JP 2003-348885 (“Hideji”)
`English Abstract of Hideji
`English Translation of Hideji
`U.S. Patent No. 5,410,230 to Bessler, et al. (“Bessler”)
`“Electronic Control of Torque Ripple in Brushless Motors” by
`Peter Franz Kocybik (“Kocybik”)
`Excerpts from Paul C. Krause et al, Analysis of Electric
`Machinery and Drive Systems (2nd ed. 2002) (“Krause”)
`Expert Declaration of Dr. Mark Ehsani
`Complaint filed in Nidec Motor Corporation v. Broad Ocean
`Motor LLC et al., Civil Action No. 4:13-CV-01895-JCH (E.D.
`Mo.).
`Declaration of Charles S. Baker in Support of Motion for
`Admission Pro Hac Vice
`Declaration of Nathan J. Rees in Support of Motion to Submit a
`Corrected Exhibit and Maintain Filing Date Pursuant to
`37 C.F.R. §42.104(c)
`Excerpts from the Deposition Transcript of Mark Ehsani, Ph.D.,
`taken April 24, 2015
`Rebuttal Declaration of Ivan T. Hoffman, CPA/CFF, CLP
`Deposition Testimony of Dr. Mark Ehsani, Ph. D., taken April
`24, 2015 (relied upon by Ivan T. Hoffman)
`Deposition Testimony of Christopher J. Bokhart , taken July 21,
`2015
`Energy.Gov Office of Energy Efficiency and Renewable Energy
`Chapter 3
`USPTO Patent Assignments for U.S. Patent 7,626,349
`Curriculum vitae and testimony of Ivan T. Hofmann, CPA/CFF,
`CLP
`Declaration of Ge Hu
`Deposition Testimony of John Filla, taken August 7, 2015
`(Rough Draft) (relied upon by Ivan T. Hoffman)
`
`HOU 1805131v.2
`
`- iv -
`
`

`
`Exhibit No.
`1023
`
`1024
`1025
`
`1026
`
`1027
`
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`1037
`
`1038
`
`Description
`Deposition Testimony of Mark Carrier, taken August 6, 2015
`(Rough Draft) (relied upon by Ivan T. Hoffman)
`AHRI Shipments for Central Air Conditioners and Air-Source
`Heat Pumps
`AHRI Shipments for Gas Furnaces
`Comparison of Nidec HVAC Market Share and Nidec Share of
`ECM Sales to Nidec’s Shares Claimed in the Bokhart
`Declaration
`Complaint filed in Nidec Motor Corporation v. Broad Ocean
`Motor, LLC et al., Civil Action No. 2:15-cv-00443-JRG-RSP
`(E.D. TX.).
`Declaration of Alan F. Kessler
`Resume of Alan F. Kessler
`List of Documents Reviewed By Alan F. Kessler
`ECM Motor Versions/nomenclature
`Article by Acoustics By Design, Perception vs. Reality: What
`Our Ears Hear, Dec. 12, 2008
`Declaration of Charles S. Baker
`Project Authorization Request
`Project Authorization Request
`Motor Comparison Chart
`List of Nidec Patents that Cover Certain Motors
`Excerpts of Deposition Testimony of Mark Carrier, taken
`August 6, 2015 (Rough Draft) (cited to in Declaration of Charles
`S. Baker)
`
`HOU 1805131v.2
`
`- v -
`
`

`
`Patent Owner ‘s Response (“Resp.”) (Paper 29) is largely repetitious of its
`
`Preliminary Response (Paper 14), except
`
`for
`
`its newly raised secondary
`
`considerations argument.
`
`Patent Owner Nidec’s secondary considerations
`
`argument must fail because the motors at issue were not commercially successful.
`
`In addition, Nidec has failed to prove any nexus between the claimed invention and
`
`the alleged success of the motors.
`
`I.
`
`THE RESPONSE, OTHER THAN ON THE SECONDARY
`CONSIDERATIONS ISSUE, IS MOSTLY ATTORNEY ARGUMENT
`THAT SHOULD BE GIVEN LITTLE WEIGHT
`
`While Patent Owner has submitted an extensive 27-page, 50-paragraph
`
`declaration of co-inventor Mark E. Carrier
`
`(Ex. 2003), and a 25-page, 48-
`
`paragraph declaration of its purported “expert in the field of accounting, financial,
`
`and economic matters related to intellectual property valuation,” Christopher J.
`
`Bokhart (Ex. 2010), those declarations are cited in the Response relative to the
`
`development costs for, and the commercialization of, the so-called “Practicing
`
`Nidec Motors.” Patent Owner has not cited to either declaration as support for
`
`statements made in the Response about the teachings of Bessler or Kocybik, nor do
`
`those declarations even mention either Bessler or Kocybik. Any of Patent Owner’s
`
`arguments which are not supported by declaration or other evidentiary exhibits
`
`should be considered attorney argument and be given little or no weight. See
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332 (Fed. Cir. 2009);
`
`HOU 1805131v.2
`
`- 1 -
`
`

`
`Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)
`
`(noting that “unsworn attorney argument … is not evidence”); MPEP §2145 (I)
`
`(“Attorney argument is not evidence…”) (March 2014).
`
`“The arguments of
`
`counsel cannot take the place of evidence of record.” MPEP§2145 (I).
`
`More importantly, Patent Owner has not submitted any declaration from a
`
`technical expert that contradicts or rebuts the direct testimony of Petitioners’
`
`technical expert, Dr. Mark Ehsani (Ex. 1009), nor has Patent Owner challenged the
`
`qualifications of Dr. Ehsani as a technical expert. Neither Dr. Ehsani nor his
`
`invalidity opinions are even mentioned in the Carrier Declaration (Ex. 2003) or the
`
`Bokhart Declaration (Ex. 2010).
`
`II.
`
`PATENT OWNER’S REPEATED ARGUMENT ABOUT THE
`PREAMBLE IS IRRELEVANT
`repeats virtually verbatim the same claim construction
`
`Patent Owner
`
`argument for the claim preamble that was made in the Preliminary Response.
`
`Compare Resp. at pp. 8-13 with Preliminary Response at pp. 12-17. However, the
`
`Board previously deemed it unnecessary to address this claim construction issue.
`
`For purposes of this Decision, we need not decide
`whether recitation of an HVAC system in the preambles
`of the claims is limiting because Petitioners rely on
`Bessler for such a teaching, not on Kocybik, and there is
`no requirement
`that all
`references applied in an
`obviousness challenge be drawn precisely from the same
`
`HOU 1805131v.2
`
`- 2 -
`
`

`
`art. Rather, the determination of the scope and content of
`the prior art for an obviousness challenge considers
`whether references are “analogous.” In re Clay, 966 F.2d
`656, 658 (Fed. Cir. 1992)….
`For purposes of this
`Decision, Petitioners’ identification of the disclosure of
`an ECM by Kocybik, in light of Bessler’s discussions of
`ECMs, provides a sufficient showing under the Clay test.
`
`Decision (Paper 20) at pp. 14-15. In its Response, Patent Owner does not dispute
`
`that Kocybik is analogous prior art. Therefore, the issue of whether the preamble
`
`is a limitation is of no consequence.
`
`Nevertheless, Petitioners have shown that the combination of Bessler and
`
`Kocybik discloses and/or suggests the subject matter stated in the preambles of
`
`independent claims 1, 16 and 19. See Revised Petition (Paper 7) at pp. 37, 53-54,
`
`and 55-57.
`
`III.
`
`BESSLER AND KOCYBIK ARE PROPERLY COMBINABLE
`
`As it must, Patent Owner acknowledges that:
`
`(1) prior art HVAC systems
`
`used variable speed electric motors (such as brushless permanent magnet motors
`
`[“BPM”]) driven by the so-called “six-step” or square-wave commutation; and
`
`(2) that prior art variable speed electric motors used in other types of systems were
`
`driven by the sine-wave commutation, as summarized in Kocybik. See Ex. 1001 at
`
`col. 1,
`
`ln. 30 - col. 2,
`
`ln. 3; Ex. 2003, Carrier Decl. at ¶¶14-18, & 36-37;
`
`HOU 1805131v.2
`
`- 3 -
`
`

`
`Preliminary Response at pp. 3, 17-18 & 19 (“The prior art, though long aware of
`
`exotic uses of sine wave commutation …”); Resp. at p. 3 (“When canvassing the
`
`uses of BPM motors utilizing sine-wave commutation, Kocybik describes high end
`
`applications at
`
`the time of its publication, including hybrid car engines, the
`
`aerospace industry, and high accuracy machine tooling applications.”). Just to be
`
`crystal clear, Patent Owner admittedly did not invent sine-wave commutation, nor
`
`was Patent Owner the first to employ sine-wave commutation in a variable speed
`
`electric motor, such as a BPM.
`
`Bessler discloses an HVAC system that uses an electronically commutated
`
`motor (“ECM”).
`
`See, e.g., Ex. 1006 at col. 4,
`
`ln. 11-13. Bessler does not
`
`explicitly disclose the shape of the commutation wave used to drive its ECM,
`
`whether sine-wave, square-wave, or trapezoidal-wave, but the ECM must be driven
`
`by some type of commutation wave.
`
`See Ex. 1006; Ex. 2008, Ehsani Dep.
`
`Tr. 107-08; see also Ex. 2004 at p. 102 (trapezoidal-wave); Ex. 2005 at p. 9
`
`(trapezoidal-wave).
`
`Bessler also does not explicitly disclose the use of
`
`independent Q- and d-axis currents. For the limitations recited in the challenged
`
`claims that are not explicitly disclosed in Bessler, Petitioner relies upon Kocybik as
`
`the secondary reference. See Revised Petition at p. 36 (“Although Bessler does not
`
`explicitly disclose the use of sine wave commutation and independent q- and
`
`HOU 1805131v.2
`
`- 4 -
`
`

`
`d-axis currents, such motor control methods are well known, as evidenced by
`
`Kocybik.”).
`
`Petitioners have shown that the combination of Bessler (Ex. 1006) and
`
`Kocybik (Ex. 1007) discloses and/or suggests all of
`
`the limitations of
`
`the
`
`challenged claims. See Revised Petition (Paper 7) at pp. 37-58. The Board has
`
`found that Kocybik discloses the limitations recited in the challenged claims that
`
`are not explicitly disclosed in Bessler.
`
`Kocybik is a doctoral thesis that includes a survey of
`electric motor control schemes for permanent magnet
`motors.
`Ex. 1007,
`iii. Among Kocybik’s various
`teachings are disclosures of sine wave commutation and
`the use of a d-Q reference frame. Id. at 11-12, 17, 37, 40.
`Of particular relevance, equation 4.3 on page 39 of
`Kocybik provides an expression of the torque equation
`that Petitioners contend uses independent values of Q-
`and d-axis currents.
`
`Decision (Paper 20) at pp. 13-14.
`
`Patent Owner fails to seriously argue, much less present any evidence, that
`
`the combination of Bessler and Kocybik does not satisfy all of the recited
`
`limitations. Cf. Resp. at p. 8.
`
`Instead, Patent Owner argues that Bessler and
`
`Kocybik should not be combined. See Resp. at pp. 13-27. Patent Owner’s
`
`arguments are meritless attorney argument without any evidentiary support.
`
`HOU 1805131v.2
`
`- 5 -
`
`

`
`A.
`
`Petitioners Have Provided A Rational Basis With A Reasoned
`Underpinning For The Combination Of Bessler And Kocybik
`
`In their Petition, the Petitioners explained the motivation to combine Bessler
`
`and Kocybik as follows:
`
`Although Bessler does not explicitly disclose the use of
`sine wave commutation and independent q- and d-axis
`currents, such motor control methods were well known,
`See also Ex. 1007, 19.
`as evidenced by Kocybik.
`Furthermore,
`it would have been obvious to one of
`ordinary skill in the art to combine the teachings of
`Bessler and Kocybik because, as disclosed by Kocybik
`itself and supported by Dr. Ehsani’s declaration, the use
`of sine wave commutation and independent q- and d-axis
`currents would have provided predictable results to
`known problems associated with other types of motors.
`See Id.; See also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 415-421 (2007). Namely, using rectangular currents
`(e.g., 6-step commutation with an ECM)
`creates
`unwanted torque, and the use of sinusoidal currents can
`reduce unwanted torque and create smoother and quieter
`motor operation. See Ex. 1007, 25; Ex. 1009, ¶52.
`
`Revised Petition at pp. 36-37.
`
`In turn, the cited direct declaration testimony of
`
`Dr. Ehsani states:
`
`52. A person of ordinary skill in the art would know
`that
`the teachings of Kocybik,
`including the use of
`
`HOU 1805131v.2
`
`- 6 -
`
`

`
`permanent magnet motors and the particular motor drive
`methods disclosed therein, could be predictably used
`with the teachings of Bessler.
`In particular, Kocybik
`discloses that using rectangular currents, such as would
`be seen with 6-step commutation, creates unwanted
`alignment torque, which in turn would create vibrations.
`A person of ordinary skill
`in the art would have
`recognized that a permanent magnet motor using
`sinusoidal commutation, such as is disclosed in Kocybik,
`could result in a motor that exhibits less unwanted ripple
`torque and, in turn, smoother output torque. See e.g.
`Kocybik at 25.
`
`Ex. 1009, Ehsani Decl. at ¶52. Patent Owner has not presented any technical
`
`expert declaration that contradicts or rebuts this direct testimony of Dr. Ehsani.
`
`The Board has found that Petitioners have provided a rational basis with a
`
`reasoned underpinning for the combination of Bessler and Kocybik.
`
`In particular, the suggestion that one of ordinary skill in
`the art would substitute a sinusoidally commutated ECM,
`as
`disclosed
`by Kocybik,
`for
`the
`square-wave
`commutated ECM disclosed by Bessler is supported at
`this stage of
`the proceeding by sufficient
`rational
`See KSR Int’l Co. v. Teleflex Inc.,
`underpinnings.
`550 U.S. 398, 418 (2007).
`
`HOU 1805131v.2
`
`- 7 -
`
`

`
`Decision (Paper 20) at p. 15.
`
`Indeed, Petitioners’ showing of the motivation to
`
`combine Bessler and Kocybik comports with Exemplary Rationale C (“Use of
`
`Known Technique to Improve Similar Devices (Methods, or Products) in the Same
`
`Way”) and Exemplary Rationale D (“Applying a Known Technique to a Known
`
`Device (Method, or Product) Ready for
`
`Improvement
`
`to Yield Predictable
`
`Results”) set forth in MPEP §2143.
`
`B.
`
`Patent Owner’s Repeated Economic Infeasibility Argument Is
`Irrelevant As A Matter Of Law
`
`In its Preliminary Response, Patent Owner argued that “Kocybik teaches
`
`away from the use of an ac BPM motor and sine wave commutation in the highly
`
`price sensitive application of an HVAC system.” See Preliminary Response
`
`(Paper 14) at p. 18. This argument was rejected by the Board, finding that “Patent
`
`Owner’s partial quotation of a statement by Kocybik … is misleading.”. See
`
`Decision (Paper 20) at pp. 15-16.
`
`Nevertheless, Patent Owner persists in arguing that market forces in the
`
`HVAC field teach away from the combination of Bessler and Kocybik. See Resp.
`
`at pp. 25-27.
`
`In support of this argument, Patent Owner now cites to the costs
`
`incurred in converting its HVAC motor from square-wave commutation to
`
`sine-wave commutation. See Resp. at pp. 3, 7 & 21 (“adopting vector control and
`
`sine wave commutation necessarily requires the addition of more expensive and
`
`higher functioning DSPs to the system”; citing Ex. 2003, ¶¶40, 42). The cited
`
`HOU 1805131v.2
`
`- 8 -
`
`

`
`declaration testimony of co-inventor Mark Carrier reveals that the upgrade of the
`
`Magellan-model HVAC motor using square-wave commutation to sine-wave
`
`computation involved the substitution of a $4.25 processor for the $1.00 processor,
`
`for an increased cost of just $3.25 per motor.
`
`37. At the same time Nidec barely had a foothold in
`the market when it was
`selling a product called
`“Magellan,” which was a variable speed electric motor
`and control. The Magellan used square wave control and
`functioned similarly to Regal Beloit’s line of variable
`speed electric motors and controls.
`
`*
`
`*
`
`*
`
`40. Also at that time, the prices for various electrical
`components required to build variable speed electric
`motor controls with enhanced technological capabilities
`were
`relatively
`expensive.
`Generally
`speaking,
`processors to implement square wave control of variable
`speed electric motors like that of the Magellan cost
`approximately
`$1.00.
`Digital Signal Processors
`(“DSPs”) capable of more computationally intensive
`tasks
`cost
`approximately $4.00 to $4.25.
`This
`represented a significant increase in the cost structure of
`the products.
`
`*
`
`*
`
`*
`
`HOU 1805131v.2
`
`- 9 -
`
`

`
`the time, Nidec
`43. Despite contrary wisdom at
`adopted the contrarian approach and selected a motor
`control method
`that
`required
`a DSP that was
`approximately four times the cost of standard square-
`wave-capable processors so that Nidec could release its
`Practicing Nidec Motors and controls to achieve the
`benefits discussed above.
`
`Ex. 2003, Carrier Decl. at ¶¶37-43.
`
`As a matter of law, the purported cost increase of $3.25 per motor to
`
`upgrade from square-wave commutation to sine-wave commutation is irrelevant to
`
`the combinability of Bessler and Kocybik.
`
`That a given combination would not be made by
`businessmen for economic reasons does not mean that
`persons
`skilled in the
`art would not make
`the
`combination
`because
`of
`some
`technological
`incompatibility. Only the latter fact would be relevant.
`
`In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983); see also Orthopedic Equip.
`
`Co. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir. 1983); MPEP §2145 (VII) (“Arguing
`
`Economic Infeasibility”). Patent Owner Nidec has not identified any technological
`
`incompatibility that would have discouraged the upgrade from square-wave
`
`commutation to sine-wave commutation. See Ex. 2003, Carrier Decl. at ¶¶37-44.
`
`Moreover, Patent Owner’s claim that its “processor cost more than quadrupled”
`
`HOU 1805131v.2
`
`- 10 -
`
`

`
`(see Response (Paper 29) at p. 21 n. 1) is irrelevant and misleading because claim 1
`
`is directed to the HVAC system, not just the motor controller, and the incremental
`
`cost is just $3.25. The purported cost increase of $3.25 per motor to upgrade from
`
`square-wave commutation to sine-wave commutation is negligible in the context of
`
`the total cost for the HVAC system recited in claim 1. See Ex. 1013, Ehsani Dep.
`
`Tr. 65-69.
`
`C.
`
`Patent Owner’s Argument That Bessler Teaches Away Is
`Predicated On An Incorrect Construction of the “System
`Controller” Claim Term
`
`Patent Owner also argues that Bessler teaches away from combining Bessler
`
`and Kocybik because Bessler’s objective is to eliminate the prior art structure that
`
`Bessler labels as the system controller 104, which Patent Owner solely and
`
`exclusively equates with the “system controller” recited in the challenged claims.
`
`See Resp. at pp. 2, & 13-21. However, Patent Owner’s argument is fatally flawed
`
`because Bessler’s system controller 104 is not the only structure that can be
`
`correlated with the “system controller” recited in the challenged claims as
`
`expressly defined by the ‘349 patent specification.
`
`Patent Owner Nidec’s claim construction analysis, see Response (Paper 29)
`
`at pp. 14-15, studiously ignores the sentence in the ‘349 patent specification stating
`
`that “the system controller 402 may be a thermostat, an additional control module
`
`in communication with a thermostat, or a standalone controller for the HVAC
`
`HOU 1805131v.2
`
`- 11 -
`
`

`
`system 400.” Ex. 1001 at col. 4, ln. 35-38 (emphasis added). “Where an explicit
`
`definition is provided by the applicant for a term, that definition will control
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`interpretation of the term as it is used in the claim.” MPEP §2111.01 (IV) (March
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`2014). Every embodiment depicted in Bessler includes a system controller, which
`
`as expressly defined by the ‘349 patent specification can be just a thermostat,
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`which fatally contradicts the predicate of Patent Owner’s newest teaching away
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`argument.
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`In the prior art HVAC system depicted in Figure 1 of Bessler, the thermostat
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`102 and/or the system controller 104 corresponds to the “system controller” recited
`
`in the challenged claims. See Revised Petition (Paper 7) at pp. 38-39; Ex. 1009,
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`Ehsani Decl. at ¶48. This prior art HVAC system depicted in Figure 1 of Bessler
`
`also discloses an electronically commutated motor (“ECM”) drive system.
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`Tile electrical indoor unit 110 includes a blower ECM
`128 and heater relays 130 for operating an auxiliary
`heater(s). Alternatively, a gas furnace indoor unit 112
`includes an igniter 132 for igniting gas, a gas valve 134
`for selectively providing gas, a blower ECM 136 and an
`optional draft inducer ECM 138, all operating in response
`to the system controller 104 which provides signals via
`bus 106.
`
`Ex. 1006 at col. 4, ln. 23-30; Revised Petition (Paper 7) at pp. 39-40. “A person of
`
`ordinary skill in the art would know that the ECM of Bessler was an electronically
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`commutated permanent magnet motor with a motor controller because of the date
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`of Bessler (1993) and the application (HVAC). The ECMs were well known in
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`1993 and the term was in common use.” Ex. 1009, Ehsani Decl. at ¶49.
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`Patent Owner’s teaching away argument is based on the elimination of the
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`system controller 104 from Bessler’s inventive HVAC system depicted in
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`Figures 2 and 3 of Bessler. See Resp. at pp. 18-21. Challenged claim 1 of the
`
`‘349 patent
`
`recites “a system controller” and that “the motor controller
`
`is
`
`configured for performing sinewave commutation, using independent values of Q
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`and d axis currents, in response to one or more control signals received from the
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`system controller”. See Ex. 1001 at col. 5, ln. 34-45 (emphasis added). Bessler
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`discloses that the thermostat 202 depicted in Figures 2 and 3 sends one or more
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`control signals to the motor controller via bus 204, as required of the “system
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`controller” recited in the challenged claims:
`
`The conventional thermostat 202, such as a mechanical
`switch generating a two state (on/off) signal, includes a
`function select feature which permits the user to select
`heating, cooling or fan only operation…Thermostat 202
`also includes a device for measuring the temperature of
`the air surrounding the thermostat and generating a
`temperature signal such as an on/off signal provided
`via bus 204 to the indoor air moving and the
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`compressor and condenser or evaporator outdoor units
`(in FIG. 3).
`
`Ex. 1006 at col. 4, ln. 35-57 (emphasis added).
`
`Figure 3 of Bessler, which is reproduced below, is a block diagram of the
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`electronically commutated motor (“ECM”) drive system.
`
`Ex. 1006. Bessler’s microprocessor 302 controls the speed or torque of the ECM
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`in response to one or more control signals generated by the thermostat 202.
`
`FIG. 3 is a block diagram of an ECM drive system 300
`that may be used for driving a compressor motor, fan
`motor, blower motor, or draft
`inducer fan motor as
`employed in the system illustrated in FIG. 2. Referring
`to FIG. 3, system 300 includes a microprocessor 302 for
`receiving the on/off temperature signal. A read only
`memory (ROM) 304, having software such as illustrated
`in FIG. 4, may be used to control the operation of the
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`microprocessor 302. Microprocessor 302 provides a
`speed or torque control signal via line 308 to an
`electronically commutated motor 310 to control
`the
`speed or torque of the motor.
`
`See Ex. 1006 at col. 5, ln. 19-48 (emphasis added).
`
`As recognized even by Patent Owner, Bessler’s microprocessor 302 is the
`
`motor controller generating the commutation waves that drive the electronically
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`commutated motor, in response to signals from the thermostat 202. See Response
`
`(Paper 29) at pp. 19-20. Therefore, Bessler’s thermostat 202 corresponds to the
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`“system controller” recited in the challenged claims, as expressly defined by the
`
`‘349 patent specification (see Ex. 1001 at col. 4,
`
`ln. 35-38).
`
`There is no
`
`requirement in the challenged claims, or even any mention in the ‘349 patent
`
`specification, that the system controller 402 must include a microprocessor. See
`
`Ex. 1001 at col. 3, ln. 50 - col. 4, ln. 38. Because Bessler’s invention, in fact, does
`
`not eliminate the “system controller” recited in the challenged claims, which as
`
`expressly defined in the ‘349 patent specification (see Ex. 1001 at col. 4, ln. 35-38)
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`can be just a thermostat, Patent Owner Nidec’s teaching away argument must fail.
`
`Moreover, Patent Owner has failed to provide any evidentiary support for
`
`the proposition that the elimination of the prior art system controller 104 from
`
`Bessler’s inventive HVAC system depicted in Figures 2 and 3 would teach away
`
`from either reprogramming Bessler’s still-remaining microprocessor 302 (see
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`Ex. 1006 at Fig. 3) to use sine-wave commutation or replacing microprocessor 302
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`with an improved digital signal processor (“DSP”) that can implement sine-wave
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`commutation. Cf. Resp. at pp. 21-22. Patent Owner’s citations to the Carrier
`
`Declaration in support of this argument merely refer to the $3.25 cost increase
`
`incurred when Nidec actually upgraded from the microprocessor in the Magellan
`
`motor that performed square-wave commutation to a DSP capable of performing
`
`sine-wave commutation. See Ex. 2003, Carrier Decl. at ¶¶37-43. If anything, the
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`Carrier Declaration suggests that it was within the ability of a person of ordinary
`
`skill to upgrade from square-wave commutation to sine-wave commutation, by
`
`failing to identify any technical incompatibilities encountered during that actual
`
`upgrade. See Ex. 2003, Carrier Decl. at ¶¶37-43.
`
`Furthermore, “the burden of production falls upon the patentee to come
`
`forward with evidence that … the prior art
`
`taught away from the claimed
`
`invention”. Galderma Labs., L.P. v. Tolmar, 737 F.3d 731, 738 (Fed. Cir. 2013)
`
`(emphasis added). The Carrier Declaration makes no mention of Bessler or how a
`
`person of ordinary skill would understand Bessler to be teaching away from a
`
`combination of Bessler and Kocybik. Cf. Ex. 2003.
`
`D.
`
`Chen Does Not Teach Away From Combining Bessler And
`Kocybik
`
`Patent Owner also contends that Chen (Ex. 2009) teaches away from
`
`sine-wave commutation. See Resp. at p. 22 (“Chen expresses the common wisdom
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`teaching from using vector control and sine wave commutation….”). Patent
`
`Owner is simply wrong.
`
`Chen, in fact, discloses a motor that uses sine-wave commutation.
`
`Referring now to FIGS. 1 and 2, a system for controlling
`torque is generally shown at 10. The system 10 controls
`the torque of a sinusoidally excited permanent magnet
`motor 12.
`
`Ex. 2009 at col. 2, ln. 62-64. However, Chen does disclose a purportedly cheaper
`
`alternative controller for sine-wave commutation.
`
`The controller of the invention features a low cost
`implementation that not only eliminates the hardware of
`current sensors and A/D converters of the prior art, but
`also considerably reduces the software computation
`needs, e.g., no d-q transformations and P-I loops are
`necessary. A low cost microprocessor may be used with
`the invention instead of the DSPs of the prior art.
`
`Ex. 2009 at col. 2, ln. 2-8.
`
`“[I]t is not a ‘teaching away’ of significance unless one with ordinary skill in
`
`the art would have understood the teaching as conveying that the method or
`
`structural configuration at issue reasonably cannot be expected to achieve what is
`
`required to achieve according to the claimed invention.” Garmin Int’l, Inc. v.
`
`Cuozzo Speed Techs. LLC, IPR2012-00001, Final Written Decision (Paper 59) at
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`p. 17 (PTAB Nov. 13, 2013), aff’d sub nom, In re Cuozzo Speed Techs. LLC,
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`778 F.3d 1271 (Fed. Cir. 2015).
`
`Here, however, Chen suggests
`
`that
`
`the
`
`combination of Bessler and Kocybik would achieve the benefits of the challenged
`
`claims. See Ex. 2009 at col. 1, ln. 22-26 (“It is known in the art relating to electric
`
`motors that polyphase permanent magnet (PM) brushless motors with a sinusoidal
`
`field offer the capability of providing low torque ripple, noise, and vibration in
`
`comparison with those of a trapezoidal field.”).
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`“A reference does not teach away, however, if it merely expresses a general
`
`preference for an alternative invention but does not ‘criticize, discredit, or
`
`otherwise discourage’ investigation into the invention claimed.” Nichia Corp. v.
`
`Emcore Corp., IPR2012-00005, Final Written Decision (Paper 68) at p. 28 (PTAB
`
`Feb. 11, 2014) (quoting In re Futton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see
`
`also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A known or obvious
`
`composition does not become patentable simply because it has been described as
`
`somewhat
`
`inferior to some other product for the same use.”). That
`
`is, the
`
`challenged claims do not become patentable over the combination of Bessler and
`
`Ko