Filed on behalf of Nidec Motor Corporation
`By:
`Scott R. Brown
`Matthew B. Walters
`HOVEY WILLIAMS LLP
`10801 Mastin Blvd., Suite 1000
`Overland Park, Kansas 66210
`Tel: (913) 647-9050
`Fax: (913) 647-9057
`
`
`
`IPR2014-01121
`
`
`
`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
`
`
`
`Case No. IPR2014-01121
`U.S. Patent No. 7,626,349
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTSTABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................ 1
`
`INTRODUCTION .......................................................................................... .. 1INTRODUCTION .......................................................................................... .. 1
`
`I.
`
`II. LEGAL STANDARDS FOR INSTITUTION OF INTER PARTES
`
`LEGAL STANDARDS FOR INSTITUTION OF INTER PARTESLEGAL STANDARDS FOR INSTITUTION OF INTER PARTES
`REVIEW ........................................................................................................... 4
`
`REVIEW ......................................................................................................... ..4REVIEW ......................................................................................................... ..4
`
`
`III. THE BOARD SHOULD GIVE NO WEIGHT TO ARGUMENT AND
`
`III.III.
`
`THE BOARD SHOULD GIVE NO WEIGHT TO ARGUMENT ANDTHE BOARD SHOULD GIVE NO WEIGHT TO ARGUMENT AND
`EVIDENCE RELATING TO HIDEJI (EXS. 1003, 1005). ............................. 5
`
`EVIDENCE RELATING TO HIDEJI (EXS. 1003, 1005) ............................ ..5EVIDENCE RELATING TO HIDEJI (EXS. 1003, 1005) ............................ ..5
`
`
`
`
`
`A. THE TRANSLATION OF JAPANESE REFERENCE HIDEJI IS
`
`A. THE TRANSLATION OF JAPANESE REFERENCE HIDEJI ISA. THE TRANSLATION OF JAPANESE REFERENCE HIDEJI IS
` UNCERTIFIED, PROHIBITING THE BOARD’S CONSIDERATION
`
`UNCERTIFIED, PROHIBITING THE BOARD’S CONSIDERATIONUNCERTIFIED, PROHIBITING THE BOARD’S CONSIDERATION
` OF ANY ARGUMENT OR EVIDENCE RELYING THEREON. ......... 5
`
`OF ANY ARGUMENT OR EVIDENCE RELYING TI-IEREON. ....... ..5OF ANY ARGUMENT OR EVIDENCE RELYING TI-IEREON. ....... ..5
`
` B. PETITIONER CANNOT CURE THE DEFECTIVE TRANSLATION
`
`B. PETITIONER CANNOT CURE THE DEFECTIVE TRANSLATIONB. PETITIONER CANNOT CURE THE DEFECTIVE TRANSLATION
` BEFORE THE BOARD DECIDES WHETHER TO INSTITUTE
`
`BEFORE THE BOARD DECIDES WHETHER TO INSTITUTEBEFORE THE BOARD DECIDES WHETHER TO INSTITUTE
` INTER PARTES REVIEW. ....................................................................... 6
`
`INTER PARTES REVIEW. ..................................................................... ..6INTER PARTES REVIEW. ..................................................................... ..6
`
`
`IV. GROUND 1 FAILS TO DEMONSTRATE A REASONABLE
`
`IV.IV.
`
`GROUND 1 FAILS TO DEMONSTRATE A REASONABLEGROUND 1 FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY CLAIM,
`
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY CLAIM,LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY CLAIM,
`EVEN IF HIDEJI IS CONSIDERED. ............................................................. 8
`
`EVEN IF HIDEJI IS CONSIDERED. ........................................................... ..8EVEN IF HIDEJI IS CONSIDERED. ........................................................... ..8
`
`
`V. GROUND 2 FAILS TO DEMONSTRATE A REASONABLE
`
`GROUND 2 FAILS TO DEMONSTRATE A REASONABLEGROUND 2 FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY CLAIM. ....11
`
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY CLAIM.LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY CLAIM.
`
`1111
`
`
`
`
`
`
`
` A. PRIOR ART HVAC MOTOR DRIVES WERE CONTROLLED
`
`A. PRIOR ART HVAC MOTOR DRIVES WERE CONTROLLEDA. PRIOR ART HVAC MOTOR DRIVES WERE CONTROLLED
` USING 6-STEP OR SQUARE WAVE COMMUTATION AND
`
`USING 6—STEP OR SQUARE WAVE COMMUTATION ANDUSING 6—STEP OR SQUARE WAVE COMMUTATION AND
` SUFFERED FROM TORQUE COGGING AND TORQUE RIPPLE
`
`SUFFERED FROM TORQUE COGGING AND TORQUE RIPPLESUFFERED FROM TORQUE COGGING AND TORQUE RIPPLE
` THAT CREATED UNWANTED VIBRATIONS IN THE DUCT
`
`THAT CREATED UNWANTED VIBRATIONS IN THE DUCTTHAT CREATED UNWANTED VIBRATIONS IN THE DUCT
` SYSTEM. ................................................................................................11
`
`SYSTEM. .............................................................................................. .. 1 1SYSTEM. .............................................................................................. .. 1 1
`
` B. THE PREAMBLE RECITATION COMMON TO ALL CLAIMS OF
`
`B. THE PREAMBLE RECITATION COMMON TO ALL CLAIMS OFB. THE PREAMBLE RECITATION COMMON TO ALL CLAIMS OF
` “A HEATING, VENTILATING AND/OR AIR CONDITIONING
`
`“A HEATING, VENTILATING AND/OR AIR CONDITIONING“A HEATING, VENTILATING AND/OR AIR CONDITIONING
` (HVAC) SYSTEM” IS LIMITING. .........................................................12
`
`(HVAC) SYSTEM” IS LIMITING........................................................ ..12(HVAC) SYSTEM” IS LIMITING........................................................ ..12
`
` C. THERE IS NO REASONING WITH A RATIONAL UNDERPINNING
`
`C. THERE IS NO REASONING WITH A RATIONAL UNDERPINNINGC. THERE IS NO REASONING WITH A RATIONAL UNDERPINNING
` PROVIDED TO COMBINE BESSLER WITH KOCYBIK. ..................17
`
`PROVIDED TO COMBINE BESSLER WITH KOCYBIK. ................ .. 17PROVIDED TO COMBINE BESSLER WITH KOCYBIK. ................ .. 17
`
`
`VI. CONCLUSION ..............................................................................................19
`
`VI.VI.
`
`CONCLUSION ............................................................................................ .. 19CONCLUSION ............................................................................................ .. 19
`
`
`
`
`
`i
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Arthrex, Inc. v. Bonutti Skeletal Innovations, LLC
` IPR2013-00631, Paper No. 15 (PTAB Mar. 3, 2014) ........................................7, 8
`
`Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp.
` 55 F.3d 615 (Fed. Cir. 1995) ................................................................................13
`
`Bumble Bee Foods, LLC v. Kowalski
` IPR2014-00224, Paper No. 18 (PTAB June 5, 2014) ........................................5, 6
`
`Catalina Marketing International, Inc. v. Coolsavings.com, Inc.
` 289 F.3d 801 (Fed. Cir. 2002) ..............................................................................13
`
`Deere & Co. v. Bush Hog, LLC
` 703 F.3d 1349 (Fed. Cir. 2012) ..................................................................... 15, 16
`
`KSR Int’l Co. v. Teleflex, Inc.
` 550 U.S. 398 (2007) ............................................................................................... 4
`
`Medtronic, Inc. v. Nuvasive, Inc.
` IPR2014-00073, Paper No. 11 (PTAB Feb. 28, 2014) .......................................... 7
`
`Net Moneyin, Inc. v. Verisign, Inc.
` 545 F.3d 1359 (Fed. Cir. 2008) ............................................................................11
`
`St. Jude Medical, Inc. v. Access Closure, Inc.
` 729 F.3d 1369 (Fed. Cir. 2013) ............................................................................19
`
`
`
`Statutes
`
`
`35 U.S.C. § 102(b) ..................................................................................................... 8
`
`35 U.S.C. § 314(a) ..................................................................................................... 4
`
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`
`
`
`ii
`
`

`
`
`37 C.F.R. § 42.104(c) ................................................................................................. 7
`
`37 C.F.R. § 42.108 ..................................................................................................... 4
`
`37 C.F.R. § 42.123(a) ................................................................................................. 6
`
`37 C.F.R. § 42.63(a) ................................................................................................... 5
`
`37 C.F.R. § 42.63(b) ..............................................................................................5, 6
`
`37 C.F.R. § 42.64(b)(1)-(2) ........................................................................................ 6
`
`
`
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) ............... 4
`
`Other Authorities
`
`
`
`iii
`
`

`
`Nidec Motor Corporation (“Nidec”) submits this Preliminary Response in
`
`opposition to the Revised Petition for Inter Partes Review (the "Petition") filed by
`
`Zhongshan Broad Ocean Motor Co., Ltd. ("Broad Ocean") regarding certain claims
`
`of U.S. Patent No. 7,626,349 (the "’349 patent"). Broad Ocean's Petition should be
`
`denied in its entirety for the reasons set forth below.
`
`INTRODUCTION
`
`I.
`
`
`The invention of the ’349 patent relates to improvements in an HVAC
`
`electric motor controller that provide a motor that operates with reduced torque
`
`cogging and torque ripple resulting in quieter operation, reduced cost, and
`
`improved performance in the HVAC system. Each challenged claim requires an
`
`HVAC system motor controller that performs sine wave commutation on the motor
`
`resulting in smooth motor operations. Sine wave commutation results in reduction
`
`in torque cogging and ripple, which in turn reduces vibrations in the HVAC system
`
`that can otherwise be amplified through a duct system. The prior art, which uses 6-
`
`step commutation, attempted to address these unwanted vibrations and noise by
`
`employing mechanical dampers to the rotating parts of the system. Such
`
`dampening can now be avoided and the vibrations prevented in the first instance as
`
`a result of the invention.
`
`According to Broad Ocean, both of the ’349 patent's challenged independent
`
`claims and 7 of the dependent claims are anticipated by Japanese Patent
`
`
`
`1
`
`

`
`Publication JP 2003-348885 to Hideji (“Hideji”)(Ex. 1003). Broad Ocean alleges
`
`that Hideji anticipates because it purportedly discloses sine wave commutation in
`
`an HVAC motor. But Broad Ocean has failed to properly translate and provide an
`
`affidavit of the translation for this reference. Lacking any affidavit at all, the
`
`purported translation falls short of the evidentiary standards the Board requires to
`
`institute a proceeding. Broad Ocean and its expert rely on Hideji alone for its first
`
`asserted ground of invalidity, and thus Ground 1 lacks any evidence to support it.
`
`Thus, Broad Ocean has failed to provide evidence to support Ground 1 and the
`
`Board cannot institute inter partes review on this basis.
`
`Even if the purported translation is fully considered, Broad Ocean
`
`incorrectly asserts that the reference discloses the claim limitation “wherein the
`
`motor controller is configured for performing sinewave commutation, using
`
`independent values of Q and d axis currents.” In fact, Hideji discloses that it
`
`employs calculations in the rotating frame of reference in which Q and d axis
`
`currents depend on each other. By failing to acknowledge this critical missing
`
`limitation in the reference, Ground 1 also fails. Broad Ocean makes no argument
`
`that Hideji renders the claims obvious. Accordingly, there is no basis to institute
`
`on Ground 1.
`
`Broad Ocean admits proposed Ground 2 is based solely upon obviousness.
`
`In Ground 2, Broad Ocean attempts to combine U.S. Patent No. 5,410,230 (Ex.
`
`
`
`2
`
`

`
`1006) to Bessler (“Bessler”), which is cited on the face of the ’349 patent and
`
`formed a basis for rejection during prosecution, in view of a doctoral thesis that
`
`canvasses electric motor control schemes authored by Kocybik. (Ex. 1007).
`
`Bessler is nothing more than a typical representation of the prior art, an HVAC
`
`system that employs electronic commutation thereby introducing the cogging and
`
`torque ripple vibrations for which the invention is a solution. It was exactly such
`
`systems that the inventors improved upon. Bessler makes no mention of the
`
`problem introduced by 6-step commutation and, as the office previously found,
`
`does not lead one to the solution provided by the inventors.
`
`Kocybik discusses motor control schemes including mentioning that sine
`
`wave commutation may be used with an ac brushless permanent magnet motor
`
`(“BPM”), but Kocybik does not discuss HVAC systems or the motors used in them.
`
`In fact, when canvassing the uses of a BPM motor, Kocybik references relatively
`
`exotic applications at the time of its publication, including hybrid car engines, the
`
`aerospace industry, and high accuracy machine tooling applications. Kocybik ends
`
`with a caution that use of a BPM motor is more costly. Thus, Kocybik teaches
`
`away from the use of a BPM motor and sine wave commutation in the highly price
`
`sensitive application of an HVAC system. Such systems, as evidenced by Bessler,
`
`were not considered to require the performance of a sine wave commutated BPM
`
`motor, just as Kocybik cautions. In short, Broad Ocean and its expert provide no
`
`
`
`3
`
`

`
`motivation or rational basis with a reasoned underpinning to make the proposed
`
`combination prior to the inventor’s contribution. They engage in impermissible
`
`hindsight reconstruction as the prior art—though long aware of exotic uses of sine
`
`wave commutation and BPM motors—never conceived of utilizing such
`
`techniques in HVAC systems. The “common sense” in the context of KSR Int’l Co.
`
`v. Teleflex, Inc., 550 U.S. 398, 415-421 (2007) was not to make this combination,
`
`and Broad Ocean has failed to demonstrate otherwise.
`
`For these reasons, Broad Ocean cannot, as a matter of law, show that any of
`
`the challenged claims are unpatentable as obvious. Thus, Broad Ocean has not
`
`shown a reasonable likelihood of prevailing with respect to any of the challenged
`
`claims, and this Board should deny inter partes review.
`
`II. LEGAL STANDARDS FOR INSTITUTION OF INTER PARTES
`REVIEW
`
`Under 35 U.S.C. § 314(a), Congress limited the Board’s authority to
`
`institute inter partes review to those circumstances where “the information
`
`presented in the petition . . . and any response . . . shows that there is a reasonable
`
`likelihood that Petitioner would prevail with respect to at least one of the claims
`
`challenged in the petition.” See also 37 C.F.R. § 42.108. The Petitioner, here
`
`Broad Ocean, has the burden of showing that this statutory threshold has been met.
`
`See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14,
`
`
`
`4
`
`

`
`2012) (“the Board . . . may institute a trial where the petitioner establishes that the
`
`standards for instituting the requested trial are met”).
`
`III. THE BOARD SHOULD GIVE NO WEIGHT TO ARGUMENT AND
`EVIDENCE RELATING TO HIDEJI (EXS. 1003, 1005).
`
`A. THE TRANSLATION OF JAPANESE REFERENCE HIDEJI IS
`UNCERTIFIED,
`PROHIBITING
`THE
`BOARD’S
`CONSIDERATION OF ANY ARGUMENT OR EVIDENCE
`RELYING THEREON.
`
`
`As a preliminary matter, Ground 1 asserted by Broad Ocean relies on a
`
`Japanese reference, for which Broad Ocean has failed to provide an affidavit of
`
`translation, thereby removing it as evidence for this proceeding. In inter partes
`
`review proceedings, evidence consists of affidavits, transcripts of depositions,
`
`documents, and things. 37 C.F.R. § 42.63(a). Importantly, “[w]hen a party relies
`
`on a document or is required to produce a document in a language other than
`
`English, a translation of the document into English and an affidavit attesting to the
`
`accuracy of the translation must be filed with the document.” 37 C.F.R. § 42.63(b)
`
`(emphasis provided). Material that fails to meet the requirements for evidence
`
`under these rules is given no weight in the Board’s decision whether to institute
`
`inter partes review. Bumble Bee Foods, LLC v. Kowalski, IPR2014-00224, Paper
`
`No. 18, at 14-15 (PTAB June 5, 2014). In Bumble Bee, the Board refused to rely on
`
`a declaration because it was not signed under penalty of perjury, thereby removing
`
`it from consideration because it failed to meet the requirements of an affidavit.
`
`
`
`5
`
`

`
`Petitioner relies on Japanese Patent Publication 2003-348885 to Hideji (Exs.
`
`1003, 1005; “Hideji”) in Ground 1of its Petition. (See Paper No. 5, pp. 3). But
`
`Petitioner has not filed any certification attesting to the accuracy of the translation.
`
`The original Japanese publications (Ex. 1003) cannot be considered because it is in
`
`a foreign language and the English translation (Ex. 1005) is unaccompanied by a
`
`certificate of translation. Likewise, Petitioner’s declarant, Dr. Ehsani, also relies on
`
`the translation of Hideji, (Ex. 1009, ¶¶ 33-46), but does not testify that he
`
`conducted the translations. (See Id.). Just as in Bumble Bee, the failure to provide a
`
`sworn statement regarding the translation of the Japanese reference under the rules
`
`means that the translation does not satisfy the requirements to be considered as
`
`evidence. Consequently, the Board cannot rely on Hideji or any opinions of Dr.
`
`Ehsani relying thereon. 37 C.F.R. § 42.63(b); Bumble Bee Foods, LLC v. Kowalski,
`
`IPR2014-00224, Paper No. 18, at 14-15 (PTAB June 5, 2014).
`
`B. PETITIONER
`DEFECTIVE
`THE
`CURE
`CANNOT
`TRANSLATION BEFORE THE BOARD DECIDES WHETHER
`TO INSTITUTE INTER PARTES REVIEW.
`
`Petitioner cannot cure its failure to provide the required translation
`
`
`
`certification for Hideji. Supplemental evidence can only be served—not filed as
`
`part of the record—after the Board has ordered inter partes review. 37 C.F.R. §
`
`42.64(b)(1)-(2). Similarly, Petitioner cannot file supplemental information unless
`
`authorized by the Board after the institution of a trial. 37 C.F.R. § 42.123(a).
`
`
`
`6
`
`

`
`
`
`Moreover, while the Board has previously permitted the correction of
`
`defective translation certificates before the institution of trial under the auspices of
`
`37 C.F.R. § 42.104(c), See Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00073,
`
`Paper No. 11, at 2 (PTAB Feb. 28, 2014), that circumstance is not present here.
`
`Indeed, in Medtronic the Board found that defective certificates of translation had
`
`been filed but were argued to be defective because they omitted perjury warnings.
`
`However, the defective certificates were deemed a bona fide attempt to comply
`
`with the rule. IPR2014-00073, Paper No. 11, at 2. In this proceeding, no
`
`translation certificates are on the record for putative correction. No bona fide
`
`attempt to comply with the rule has been made, and thus, cases like Medtronic are
`
`inapposite.
`
`
`
`Similarly, this case is not like Arthrex, Inc. v. Bonutti Skeletal Innovations,
`
`LLC, IPR2013-00631, Paper No. 15 (PTAB Mar. 3, 2014), in which the Board
`
`excused the failure to include the original prior art reference along with its English
`
`language translation as a clerical error. In Arthrex, petitioner submitted a
`
`declaration asserting that the failure to include the original reference was purely a
`
`clerical error. Here, the same evidence has been submitted twice in the same
`
`format with no certification of translation. (See original Exs 1003 and 1005).
`
`Indeed, Petitioner filed three petitions on the same date, and was required to
`
`correct all three for other reasons, but in each corrected submission has failed to
`
`
`
`7
`
`

`
`provide a certificate of translation. [See IPR 2014-01123 at Paper No. 7; IPR201-
`
`01122 at Paper No. 7; and IPR 2014-01121 at Paper No. 7]. It is difficult indeed to
`
`believe that the same clerical error could be made six times in a row spread over
`
`four weeks of time.
`
`
`
`Accordingly Petitioner cannot cure its failure to provide the translation
`
`certificate for Hideji.
`
`IV. GROUND 1 FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY CLAIM,
`EVEN IF HIDEJI IS CONSIDERED.
`
`
`
`Hideji is asserted solely as a reference under 35 U.S.C. § 102(b). (Petition, p.
`
`11). Broad Ocean’s argument incorrectly asserts that the reference discloses the
`
`claim limitation “wherein the motor controller is configured for performing sine
`
`wave commutation, using independent values of Q and d axis currents.” In fact,
`
`Hideji discloses that it employs calculations in the rotating frame of reference in
`
`which Q and d axis currents depend on each other. By failing to acknowledge this
`
`critical missing limitation, Ground 1 also fails. Broad Ocean makes no argument
`
`that Hideji renders the claims obvious. Accordingly, there is no basis to institute on
`
`Ground 1.
`
`The limitation that the “motor controller is configured for performing sine
`
`wave commutation using independent values of Q and d axis currents” appears in
`
`both independent claims 1 and 16. A claim subject to inter partes review receives
`
`
`
`8
`
`

`
`the “broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.100(b).1
`
`Broad Ocean asserts that only the term “back-emf motor” requires
`
`construction, and all remaining terms and phrases “should be given their broadest
`
`reasonable interpretation consistent with their plain and ordinary meaning.”
`
`(Petition, p. 10). Nidec agrees that “independent Q and d axis currents” should be
`
`given its ordinary meaning. But Broad Ocean fails to analyze or take into account
`
`the necessary result of this interpretation.
`
`If Q and d axis currents are “independent” then the control function that
`
`derives them will not express one in terms of the other. The Oxford Dictionaries
`
`define “independent” in mathematics as: “(Of one of a set of axioms, equations, or
`
`quantities) incapable of being expressed in terms of, or derived or deduced from,
`
`the others.”
`
`(http://www.oxforddictionaries.com/us/definition/american_english/independent#i
`
`ndependent).
`
`
`1 Nidec notes that this Board applies a different claim construction standard than
`
`does a district court. Accordingly, Nidec’s claim construction here may not be
`
`applicable in the parallel lawsuit and Nidec’s arguments here are made solely for
`
`the purpose of this proceeding and without waiving any arguments it may make in
`
`the district court action.
`
`
`
`9
`
`

`
`To one of ordinary skill with knowledge of control equations for sine wave
`
`commutation in the rotating frame of reference, this would be the ordinary
`
`meaning of the term.
`
`The specification supports this understanding of the ordinary meaning.
`
`The ’349 patent incorporates the specification of U.S. Patent 7,342,379 (the “’379
`
`patent”) in its entirety. (’349 patent, Col. 4:23-29). The ’379 patent describes an
`
`embodiment in which the IQdr components can be decoupled. That is, the torque
`
`contribution from the rotating frame of reference relies on Q axis current that is
`
`independent of d axis current. (’379 Patent, Col. 6:1-7). Accordingly, the claim
`
`phrase “using independent values of Q and d axis currents” should be given its
`
`ordinary meaning, in which the values of Q axis current and d axis current are
`
`developed independently of each other, without relying on one to derive the other.
`
`Given this ordinary meaning to the claim phrase, Hideji fails to disclose the
`
`limitation. Hideji describes its control scheme with respect to Q axis and d axis
`
`current in the rotating frame at paragaraph [0038] and [0039]. (Ex. 1005, [0038-
`
`0039]). In this description, Hideji makes it clear that the Q axis current and d axis
`
`current are dependent upon one another. Hideji states that “by introducing the
`
`torque current Iq in direct proportion to the increase of the load acting on the
`
`brushless DC motor 30A, the flux current Id target value is reduced on the basis of
`
`the following formula . . . The flux current Id target value is equal to K x Iq
`
` 2.” (Id.)
`
`
`
`10
`
`

`
`Clearly then, in Hideji, Id is expressed in terms of or derived from the value of Iq
`
`and the values of Q and d axis currents are dependant rather than independent. The
`
`failure to disclose the claimed limitation means Hideji cannot anticipate. See Net
`
`Moneyin, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)(“in order to demonstrate
`
`anticipation, the proponent must show ‘that the four corners of a single, prior art
`
`document describe every element of the claimed invention’”).
`
`Broad Ocean and its expert do not acknowledge this deficiency in Hideji.
`
`Consequently, their anticipation argument fails, and they have provided no basis
`
`upon which to conclude that Hideji can or should be modified to arrive at the
`
`claimed invention. This failure is fatal to institution on Ground 1.
`
`V. GROUND 2 FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY CLAIM.
`
`A. PRIOR ART HVAC MOTOR DRIVES WERE CONTROLLED
`USING 6-STEP OR SQUARE WAVE COMMUTATION AND
`SUFFERED FROM TORQUE COGGING AND TORQUE
`RIPPLE THAT CREATED UNWANTED VIBRATIONS IN THE
`DUCT SYSTEM.
`
`
`
`The invention of the ’349 patent relates to improvements in an HVAC
`
`electric motor controller that provides a motor that operates with reduced torque
`
`cogging, reduced torque ripple, and higher efficiency. The invention provides
`
`quieter operation, reduced cost, and improved performance in the HVAC system.
`
`The invention provides these benefits by utilizing sine wave commutation in an
`
`HVAC motor controller. This complex addition into the cost sensitive
`
`
`
`11
`
`

`
`environment of HVAC motors allows for the reduction in torque cogging, an
`
`artifact of prior art square wave commutation. The inventor’s use of sine wave
`
`commutation also reduces torque ripple and improves efficiency in the motor.
`
`(’349 patent, Col. 4:66 – 5:19). By reducing these negative effects of a 6-step
`
`commutation scheme, the invention reduces unwanted vibrations emanating from
`
`the motor and along the shaft of an air moving component, thereby greatly
`
`reducing unwanted vibrations that can be amplified by the ductwork system. (Id.)
`
`The prior art asserted in Ground 2 fails to disclose the use of sine wave
`
`commutation in an HVAC system. The prior art 6-step commutation technique
`
`addressed unwanted vibrations and noise by employing mechanical dampers to the
`
`rotating parts of the system. (’349 patent, Col. 1:57-67). Such dampening can
`
`now be avoided and the vibrations prevented in the first instance as a result of the
`
`invention. (’349 patent, Col. 5:6-13).
`
`B. THE PREAMBLE RECITATION COMMON TO ALL CLAIMS
`OF
`“A HEATING, VENTILATING AND/OR AIR
`CONDITIONING (HVAC) SYSTEM” IS LIMITING.
`
`
`The preambles of the challenged claims, requiring an “HVAC system” are
`
`limiting, and Broad Ocean does not contend otherwise. Indeed, in both asserted
`
`grounds, Broad Ocean begins by stating it will set forth on a “limitation-by-
`
`limitation basis” where the prior art purportedly discloses the invention, and
`
`includes the preamble in each such discussion. (See e.g., Petition pp. 11, 37).
`
`
`
`12
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`

`
`Even were the Board to ignore this binding admission, the Federal Circuit’s
`
`guidelines for when a preamble is to be considered a limitation are met.
`
`While a preamble is not always limiting, in Catalina Marketing
`
`International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002), the
`
`Federal Circuit identified several guideposts to determine whether a preamble
`
`limits claim scope. Relevant here, “when reciting additional structure ...
`
`underscored as important by the specification, the preamble may operate as a claim
`
`limitation.” 289 F.3d at 808. Additionally, a preamble phrase that provides
`
`antecedent basis for a claim limitation generally limits the scope of the claim. Id.;
`
`Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed.
`
`Cir. 1995).
`
`Here, the specification makes clear the importance of the HVAC system
`
`limitation of the preamble. Indeed, “the background of the invention” section is
`
`devoted to the issues presented by incorporating square wave commutation control
`
`of a motor into an HVAC system:
`
`Variable speed motors for driving air-moving components in
`
`HVAC systems commonly employ square wave excitation and
`
`control
`
`techniques
`
`(sometimes
`
`referred
`
`to
`
`as
`
`"6-step"
`
`commutation). Typically, such variable speed motors use square
`
`wave control signals to control the application of positive and
`
`
`
`13
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`

`
`negative [dc] voltages to the motor's three phase windings. At any
`
`given time, a positive dc voltage is applied to one of the phase
`
`windings, a negative dc voltage is applied to another one of the
`
`phase windings, and the third phase winding is unenergized or
`
`"open" (the unenergized phase winding is usually not truly left
`
`open, but rather "flies" into a catch diode or other device for
`
`dissipating residual winding current). By sequentially (and
`
`abruptly) rotating the application of positive and negative dc
`
`voltages among the three phase windings, a rotating magnetic field
`
`is created which causes rotation of the rotor for driving the air-
`
`moving component.
`
`* * * * * *
`
`The known square wave commutation techniques and resulting
`
`discontinuous phase currents produce relatively high cogging
`
`torque, as illustrated in FIG. 2, as well as relatively high operating
`
`torque ripple and torque harmonics. This, in turn, produces
`
`undesirable acoustic noise and vibration in the motor and thus any
`
`HVAC system in which the motor is used.
`
`(’349 patent, Col. 1:19-65). Indeed, the problem to be solved is set entirely in the
`
`context of eliminating unwanted vibrations and motor inefficiencies—and the
`
`
`
`14
`
`

`
`associated unwanted acoustics amplified through ductwork—that resulted from the
`
`prior art usage of 6-step commutated motors in HVAC systems. (See generally, id.
`
`and Col. 5:14-18).
`
`
`
`In the Summary, every paragraph describes an embodiment of the invention
`
`including “a heating, ventilating and/or air conditioning (HVAC) system.”
`
`(See ’349 patent, Col. 2:5-55). In the detailed description, every embodiment of
`
`the sine wave commuted motor is in an HVAC system. (’349 patent, Col. 3:22-Col
`
`5:25).
`
`Accordingly, this is a case like Deere & Co. v. Bush Hog, LLC, 703 F.3d
`
`1349 (Fed. Cir. 2012), in which the Federal Circuit found a preamble limiting
`
`where “[t]he specification explains that the invention addresses a concern specific
`
`to [a limiting phrase found in the preamble]” and indeed, “underscores the
`
`importance of [the limiting phrase in the preamble].” 703 F.3d at 1358.
`
`Furthermore, for each of the claims the preamble of the claims breathes life
`
`and meaning into, and provides a required basis for understanding the claim terms.
`
`For example, claims 1, 4-7, 10, 11, 16, 19 and 20 all recite structure specifically
`
`found in an HVAC system, such as air moving components, blowers, condenser
`
`fans, etc. Thus, this is a case in which a recitation in the preamble was “necessary
`
`to understand the subject matter encompassed by the claim” and in which the
`
`preamble “describes a fundamental characteristic of the claimed invention that
`
`
`
`15
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`

`
`informs one of skill in the art as to the structure required by the claim.” Deere, 703
`
`F.3d at 1358. Like in Deere, the preamble term “HVAC system” provides
`
`necessary definition to understand what is meant by “an air-moving component”, a
`
`“blower,” or a “condenser fan.” Id.
`
`Moreover, during prosecution of the patent, the applicant relied on the
`
`preamble to distinguish the prior art: “Additionally, when the instant invention was
`
`made there was no motivation to repl