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`Paper No. __
`Date: April 4, 2017
`
` Cary Kappel, Lead Counsel
`William Gehris, Backup Counsel
`David Petroff, Backup Counsel
`Davidson, Davidson & Kappel, LLC
`589 8th Avenue, 16th Floor
`New York, NY 10018
`Telephone: (212) 736-1257
`
` (212) 736-2015
` (212) 736-1940
`Facsimile: (212) 736-2427
`Email: ckappel@ddkpatent.com
` wgehris@ddkpatent.com
` dpetroff@ddkpatent.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _______________
`
`VALEO NORTH AMERICA, INC. and VALEO EMBRAYAGES,
`
`Petitioner,
`v.
`
`SCHAEFFLER TECHNOLOGIES AG & CO. KG,
`
`Patent Owner.
`_______________
`
`Case: IPR2017-00441
`Patent 8,573,374 B2
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
`
`By:
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`TABLE OF CONTENTS
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`I.
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`II.
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`A.
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`B.
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`Introduction .................................................................................................. 1
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`Claim Construction ...................................................................................... 2
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`"Torsional Vibration Absorber" ............................................................. 3
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`Torsional Vibration Absorber "Is Parallel To" Both Damper Stages .... 6
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`1.
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`2.
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`3.
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`4.
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`Petitioner Improperly Ignores The Claim Language "Both
`
`Damper Stages" ..................................................................... 7
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`Petitioner Improperly Imports The Language "Power Path"
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`And "Torque Generated" Into The Claims .........................11
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`Petitioner Improperly Relies On Alleged Prior Art Haller To
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`Support Their Construction .................................................13
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`Patent Owner's Construction "the Torsional Vibration
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`Absorber is Connected Via a Single Piece Connection to the
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`Input of the Second Stage and to the Output of the First
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`Stage" is Supported by the Claim Language and the
`
`Specification ........................................................................15
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`III.
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`Petitioner Cannot Demonstrate A Reasonable Likelihood Of Prevailing
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`On Any Asserted Ground Because Their Construction Of "Is Parallel
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`To" Is Improper And Required For Every Claim ...................................... 17
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`
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`IV.
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`Petitioner's Expert Report Is Conclusory And Not Entitled To Any
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`Weight ........................................................................................................ 18
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`V.
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`Ground 1: Claims 1 And 3 Are Not Anticipated By Haller ...................... 19
`
`A.
`
` Claim 1: Haller Fails To Disclose A Torsional Absorber That Is
`
`Parallel To Both Damper Stages ...................................................19
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`1.
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`2.
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`3.
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`Petitioner Fails To Identify Sufficient Evidence To
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`Anticipate Claim 1 ..............................................................19
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`Petitioner Relies On Inapplicable Passages Of Haller To
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`Support Their Analysis .......................................................25
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`Haller Figure 8, At The Very Least, Fails To Disclose A
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`Torsional Absorber That Is "Parallel To Both Damper
`
`Stages" .................................................................................28
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`VI.
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`Ground 3: Claims 1-3, 8-10 And 14-16 Are Not Obvious Over Sasse
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`And Haller .................................................................................................. 32
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`A.
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` Claim 1: Neither Sasse Nor Haller Discloses The Limitation: "The
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`Torsional Vibration Absorber Is Parallel To Both Damper Stages"
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` .......................................................................................................32
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`1.
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`2.
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`Sasse Does Not Disclose A Torsional Vibration Absorber
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` .............................................................................................33
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`Haller Does Not Disclose a Torsional Vibration Absorber
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`
`
`ii
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`
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`That is Parallel to Both Damper Stages" .............................35
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`B.
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`C.
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`Petitioner's Proposed Modification of Sasse in View of Haller is
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`Improper Because it Changes the Principle Operation of Sasse ...36
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`Petitioner's Allegation of Invalidity under Ground 3 for Dependent
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`Claims 2, 3, 8-10 And 14-16 Fail For the Same Reasons as Claim
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`1 From Which They Depend .........................................................38
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`VII.
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`Ground 7: Claims 1-3, 10 And 14-16 Are Not Obvious Over Heuler And
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`Haller .......................................................................................................... 38
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`VIII.
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`Grounds 2, 4, 5, 6, 8 and 9 Each Fail For the Same Reasons as Grounds
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` 1 and 3 ....................................................................................................... 39
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`Conclusion ................................................................................................. 40
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`
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`iii
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`IX.
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`TABLE OF AUTHORITIES
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`CASES
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`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir.
`
`1985) ....................................................................................................................12
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) ....................................... 3
`
`Ex parte Habashi et al, Appeal 2011-008847, 2013 Pat. App. LEXIS 8057 (Pat.
`
`App. 2013) ...........................................................................................................18
`
`Ex parte Vanscoyoc, Appeal 2011-011717, 2013 Pat. App. LEXIS 7627 (Pat.
`
`App. 2013) ...........................................................................................................18
`
`Ex parte Yasuhisa Ito, Appeal 2009-001701, 2009 Pat. App. Lexis 8758, 5-6
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`(Pat. App. 2009) ...................................................................................................37
`
`In re Abbott Diabetes Care, Inc., 696 F.3d 1142 (Fed. Cir. 2012) ..........................10
`
`In re American Academy Of Science Tech Center, 367 F.3d 1359 (Fed. Cir.
`
`2004) ...................................................................................................................... 9
`
`In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) ..........................................................14
`
`In re Ratti, 270 F.2d 810 (CCPA 1959) ...................................................................37
`
`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) ....................................... 3
`
`Medtronic, Inc. And Medtronic Vascular, Inc. v. Lifeport Sciences LLC,
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`IPR2014-00288, Final Written Decision, Paper 34, 2015 ...................................18
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) ...................... 3
`iv
`
`
`
`
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`PPC Broadband, Inc., v Corning Optical Communications RF, LLC, 815 F.3d
`
`747 (Fed. Cir. 2016) .................................................................................... 3, 7, 15
`
`Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015) ... 3
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`Trivascular, Inc. v. Shaun L.W. Samuels, 812 F.3d 1056 (Fed. Cir. 2016) .... 3, 9, 10
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`Velander v. Garner, 348 F.3d 1359 (Fed. Cir. 2003) ..............................................18
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`STATUTES
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`35 U.S.C. § 314(a) .................................................................................. 2, 17, 32, 40
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`35 U.S.C. §312(a)(3) ................................................................................................24
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`35 U.S.C. §313 ........................................................................................................... 1
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`RULES
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`37 C.F.R. § 42.65(a) .......................................................................................... 18, 24
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`37 C.F.R. §42.100(b) ...........................................................................................2, 14
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`37 C.F.R. §42.107 ...................................................................................................... 1
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`37 C.F.R. §42.108(c) .................................................................................................. 2
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` OTHER AUTHORITIES
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`J.P. Den Hartog, MECHANICAL VIBRATIONS, Sections 3.2, 3.3, 5.9 (1985),
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`Ex. 2001 ...........................................................................................................6, 34
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`MPEP 2143.01 (VI) (9th Ed. March 2014) .............................................................37
`
`
`
`v
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`Case IPR2017-00441
`Patent 8,573,374
`
`
`I.
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`Introduction
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107, Schaeffler Technologies
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`AG & Co. KG ("Patent Owner"), submits the following Patent Owner's
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`Preliminary Response in response to a Petition for inter partes review filed by
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`Valeo North America, Inc. and Valeo Embrayages ("Petitioner") concerning claims
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`1-16 of U.S. Patent No. 8,573,374 ("the '374 patent"). (Ex. 1001).
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`Petitioner asserts the following Grounds: claims 1 and 3 are anticipated by
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`Haller, WO 2004/18897 ("Haller") (Ex. 1004) (Ground 1); claims 1-3, 8-10 and
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`14-16 are obvious over Sasse, U.S. 7,073,646 ("Sasse") (Ex. 1003) and Haller
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`(Ground 3); claims 1-3, 10 and 14-16 are obvious over Heuler, U.S. 2007/0235277
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`("Heuler") (Ex.1018) and Haller (Ground 7); claims 2 and 10 are obvious over
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`Sasse, Haller and Heuler (Ground 6); claim 4 is obvious over Haller and Eckel,
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`U.S. 5,884,735 ("Eckel") (Ex.1010) (Ground 2); claims 4-7 are obvious over Sasse,
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`Haller and Eckel (Ground 4); claim 4 is obvious over Heuler, Haller and Eckel
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`(Ground 8); claims 11-13 are obvious over Sasse, Haller and MacDonald, U.S.
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`6,053,292 ("MacDonald") (Ex. 1026) (Ground 5); claims 11-13 are obvious over
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`Heuler, Haller, MacDonald and Schierling, DE 196 54 894, DE 19654,915, and
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`DE 196 09 553 (collectively "Schierling") (Ex. 1022, 1023, 1024) (Ground 9).
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`
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`1
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`(Petition, pp. 15-91).
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`
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`Case IPR2017-00441
`Patent 8,573,374
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`The Petition should be denied because Petitioner fails to demonstrate a
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`reasonable likelihood that at least one of the challenged claims is unpatentable, as
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`required by 37 C.F.R. §42.108(c). Petitioner’s positions are based on clearly
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`erroneous claim constructions. For example, the Petitioner astonishingly bases its
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`key claim construction not on the ‘374 patent specification and the actual claim
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`language, but rather on language found in the Haller prior art reference. This claim
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`construction violates clear Federal Circuit precedent, as will be detailed below.
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`Patent Owner argues in its preliminary response that the Petitioner has not
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`met the threshold standard of 35 U.S.C. §314(a) with respect to independent claim
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`1, and that the Petition fails with respect to claims 2-16 for at least the same
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`reasons. The fact that this Preliminary Response does not address other aspects of
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`the Petition is not an indication that the Patent Owner concedes any fact or issue.
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`To the contrary, the Patent Owner expressly reserves its rights to contest any
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`ground of patentability for which review is instituted.
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`II. Claim Construction
`37 C.F.R. §42.100(b) specifies that in an inter partes review a patent claim
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`"shall be given its broadest reasonable construction in light of the specification of
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`the patent in which it appears" as it would be interpreted by one of ordinary skill in
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`2
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`
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`the art. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016). This
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`
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`Case IPR2017-00441
`Patent 8,573,374
`
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`requires consideration of how the claims themselves, as well as the specification,
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`inform a person of ordinary skill in the art. See PPC Broadband, Inc., v Corning
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`Optical Communications RF, LLC, 815 F.3d 747, 752 (Fed. Cir. 2016) ("The
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`Board's approach in this case fails to account for how the claims themselves and
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`the specification inform the ordinarily skilled artisan"). "Under a broadest
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`reasonable interpretation, words of the claim must be given their plain meaning,
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`unless such meaning is inconsistent with the specification and prosecution history."
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`Trivascular, Inc. v. Shaun L.W. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016),
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`citing Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed.
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`Cir. 2015). For a construction to be reasonable it must reasonably reflect the plain
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`language and disclosure. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
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`1298 (Fed. Cir. 2015), citing In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed.
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`Cir. 2010) ("A construction that is 'unreasonably broad' and which does not
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`'reasonably reflect the plain language and disclosure' will not pass muster").
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`Petitioner provides proposed constructions for two terms in claim 1:
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`"torsional vibration absorber" and "is parallel to." Each is addressed below.
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`A.
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`"Torsional Vibration Absorber"
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`Petitioner alleges that "'Torsional vibration absorber' (claims 1–16)
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`3
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`
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`means a component or device designed to absorb torsional vibrations. As
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`Case IPR2017-00441
`Patent 8,573,374
`
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`described in the '374 patent, this includes movable masses disposed on
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`mounting parts. (Ex. 1001, 1:43–45.) Some examples of movable masses
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`disposed on mounting parts are compensation flywheels, frequency tuned mass-
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`spring devices, and centrifugal force pendulums. (Id.; Ex. 1002 ¶ 22.)."
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`(Petition, p. 12).
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`Patent Owner disagrees. Petitioner’s definition is unreasonably broad, as
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`is clear from the present specification. Rather, when considered in view of the
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`specification, the broadest reasonable interpretation of the term "torsional
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`vibration absorber" is "masses disposed movably on mounting parts to
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`absorb torsional vibrations." This construction flows directly from the
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`specification which draws a clear distinction between torsional dampers and
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`torsional absorbers in the Background of the Invention section:
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`To damp torsional vibrations of an internal combustion engine, the so-
`called torsional vibration dampers are used, which are driven via an
`input part, whereby the torque is transmitted to an output part that is
`relatively and limitedly rotatable with respect to said part, and through
`compression of energy accumulators, the energy is temporarily stored
`at torque peaks and released to the output part at torque troughs.
`***
`Another form of reducing torsional vibrations is the absorber
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`4
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`Case IPR2017-00441
`Patent 8,573,374
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`principle by which movable masses are disposed on mounting parts
`to counteract the effect of energy accumulators or in the case of
`centrifugal force pendulums, absorber masses are disposed tiltably
`on raceways extending in circumferential- and radially direction
`and hence the inertial moment of the mounting part is varied
`depending on vibration influences.
`(Ex. 1001, '374 patent, 1:37-50)
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`As is known in the art, a torsional vibration absorber absorbs vibrations by
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`providing masses disposed movably on mounting parts. Petitioner appears to
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`concede this in the last two sentences of their construction.
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`Further, when applying the prior art to the claims of the '374 patent,
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`Petitioner appears to treat "damper" as a synonym for "absorber". (Petition, p. 30
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`("[b]ecause the supplemental mass … dampens vibrations, it is an example of a
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`torsional vibration absorber")). This is improper in view of the clear distinction
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`between "torsional vibration damper" and "torsional vibration absorber" made both
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`in the claims of the '374 patent and in the passage of the specification outlined
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`above.
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`Further, the distinction between torsional vibrational dampers and torsional
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`vibration absorbers is also well known in the art, and it is manifestly improper for
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`Petitioner to treat one as a synonym for the other. For example, in Ex. 2001, J.P.
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`5
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`Case IPR2017-00441
`Patent 8,573,374
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`Den Hartog, MECHANICAL VIBRATIONS, pp. 87-105, 210-224 (1985), section
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`
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`5.9, entitled "Dampers and Other Means of Mitigating Torsional Vibrations"
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`contrasts torsional dampers such as the damper flywheel (pp. 213-16) with
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`torsional absorbers such as centrifugal pendulum absorbers (pp. 219-222).
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`Further, Section 3.2 (pp. 87-93) is entitled "The Undamped Dynamic Vibration
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`Absorber" and discusses a Frahm Dynamic Vibration Absorber as well as
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`centrifugal pendulums. Finally, Section 3.3 (pp. 93-105) is entitled "The Damped
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`Vibration Absorber" and discusses still other arrangements.
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`B.
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`Torsional Vibration Absorber "Is Parallel To" Both Damper
`Stages
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`Petitioner’s key claim construction proposes that "'Is parallel to' (claims 1–
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`16) means 'does not transfer torque generated by the engine along the power path
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`but rotates with' the other components in the power path." (Petition, p. 12). This
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`proposed construction ignores the words of the claim in which "is parallel to" is
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`found, which clearly states that torsional vibration absorber is "parallel to both
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`damper stages", as well as passage in the specification of the '374 patent that
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`specifically discusses what is meant by "parallel to both damper stages." ('374
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`6
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`patent, 5:11-161).
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`Case IPR2017-00441
`Patent 8,573,374
`
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`Petitioner's construction is unreasonable and vastly inconsistent with both
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`the claim language and the specification.
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`When properly considered in view of the claim language and specification,
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`the phrase "torsional vibration absorber (17) is parallel to both damper stages (14,
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`15)" means "the torsional vibration absorber is connected via a single piece
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`connection to the input of the second stage and to the output of the first stage."
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`1.
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`Petitioner Improperly Ignores The Claim Language "Both
`Damper Stages"
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`Petitioner's proposed claim construction of "is parallel to" reflects a failure
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`by Petitioner and its Expert Dr. Shaw to consider the express language "is parallel
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`to both damper stages." This is significant because Petitioner's construction
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`improperly seeks to excise this language from the claim in order to arrive at an
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`unreasonably broad construction. See PPC Broadband, 815 F.3d at 752 ("The
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`Board's approach in this case fails to account for how the claims themselves and
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`
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`1 In this paper, the nomenclature xx:yy will be used to refer to page:line or
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`column:line. For consistency with the Petition, the page numbers in the Exhibits
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`refer to the page number in the underlying document that makes up the Exhibit.
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`7
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`Case IPR2017-00441
`Patent 8,573,374
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`the specification inform the ordinarily skilled artisan"). In fact, Petitioner's Expert
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`Dr. Shaw does not reference the claim language "is parallel to both damper stages"
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`in his Declaration nor indicate that he even considered it in his analysis, and this is
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`reflected in the stark contrast between the claim language and Petitioner's proposed
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`construction. (Ex. 1002, ¶23).
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`In particular, the claim language recites that the "torsional vibration absorber
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`(17) is parallel to both damper stages (14, 15)", and the specification contains the
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`following description of what is meant: "[t]hrough the single-piece connection of
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`the mounting part 37 with the input part 35 of the damper stage 15 and the output
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`part 34 of the damper stage 15 by means of the rivets 33 is the centrifugal force
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`pendulum 382 assigned parallel to both damper stages." ('374 patent, 5:11-16).
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`Indeed, this is the only use of the word "parallel" in the specification of the
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`'374 patent. Notably absent from this passage is reference to anything resembling
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`Petitioner's proposed construction of "'does not transfer torque generated by the
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`engine along the power path but rotates with' the other components in the power
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`path." (Petition, p. 12).
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`2 In Figure 1, torsional vibration absorber 17 "forms a centrifugal pendulum 38."
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`('374 patent, 5:4-5).
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`8
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`This failure to consider the claim language is not only contrary to well
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`Case IPR2017-00441
`Patent 8,573,374
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`established law, but significant in this case because the proposed construction is
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`vastly different from the claim language and the specification.
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`Without providing any analysis or support showing, at the very least,
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`consistency between the proposed claim construction and the claims themselves,
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`Petitioner simply creates a claim construction that removes features from the claim
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`so that they can allege that the claim is either anticipated or obvious. Petitioner's
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`Expert Dr. Shaw provides no evidence to support how a skilled artisan would find
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`their construction reasonable in view of the claims and the specification (Ex. 1002,
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`¶23), and thus, his opinion should be given no weight. See In re American
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`Academy Of Science Tech Center, 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
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`Board is entitled to weigh the declarations and conclude that the lack of factual
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`corroboration warrants discounting the opinions expressed in the declarations”).
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`Petitioner's Expert offers nothing in support of their construction other than simply
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`repeating the attorney arguments put forth in the petition, which themselves are
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`nothing more than conclusory statements. (Petition, p.12, Ex. 1002 ¶23).
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`Ignoring the claim language "both damper stages" in their analysis is
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`nothing more than an attempt to seek a construction broad enough to read on
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`their alleged prior art references. Trivascular, 812 F.3d at 1062 ("While the
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`9
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`broadest reasonable interpretation standard is broad, it does not give [one] an
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`Patent 8,573,374
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`unfettered license to interpret the words in a claim without regard for the full
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`claim language and the written description.") (citations omitted).
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`Petitioner and its Expert Dr. Shaw fail to explain how the claims
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`themselves or the specification inform an ordinary skilled artisan to reach their
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`proposed claim construction "'does not transfer torque generated by the engine
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`along the power path but rotates with' the other components in the power path."
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`(Petition, p.12, Ex. 1002 ¶23). Nor does the Petitioner or its Expert explain how
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`their proposed construction reflect the claim requirement that the torsional
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`absorber is "parallel to both damper stages", or how their proposed construction
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`flows from the only passage of the specification that even contains the word
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`parallel. ('374 patent, 5:11-16).
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` Petitioner’s interpretation is unreasonably broad and not supported by the
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`claims or the specification, while their expert declaration fails to consider, at the
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`very least, the claim language. See Trivascular, 812 F.3d at1063
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`("[C]onstruction [was] unreasonably broad because it was [] 'inconsistent with
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`the language of the claims and the specification'"), quoting In re Abbott
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`Diabetes Care, Inc., 696 F.3d 1142, 1148-50 (Fed. Cir. 2012). The failure to
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`consider the claim language "both damper stages" is fatal to their proposed
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`
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`10
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`construction.
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`Case IPR2017-00441
`Patent 8,573,374
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`2.
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`Petitioner Improperly Imports The Language "Power Path"
`And "Torque Generated" Into The Claims
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`Petitioner's inclusion of the terms "power path" and "torque generated" in
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`their claim construction is inconsistent with the claim language and the
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`specification of the '374 patent. Here, Petitioner improperly seeks to import
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`additional language that is supported by neither the claims, nor the specification
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`nor the prosecution history. In fact the terms "power paths" and "torque generated"
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`are not even mentioned in the claims or the specification and Petitioner and their
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`Expert provide no explanation as to how these terms are supported. (Ex. 1002, ¶23;
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`Petition p. 12). Petitioner simply states that their broadest reasonable construction
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`is "consistent with the description of parallel components in the '374 specification
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`and in [alleged prior art] Haller" while asserting that "[b]oth documents describe
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`absorbers with mounting parts that are parallel to the drivetrain such that they don't
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`transfer engine torque, but they do rotate with the other components in the
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`drivetrain." (Petition, p. 12) However, this is plainly inconsistent with the
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`language of the claim which recites that the torsional absorber be parallel to the
`
`damper stages, not parallel to the drive-train.
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`Citing to the '374 patent specification at column 5, lines 12-16, Petitioner
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`
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`11
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`
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`allegedly finds support for their construction, yet the cited support does not
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`Case IPR2017-00441
`Patent 8,573,374
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`mention the terms "power path" or "torque generated." Rather, that passage
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`supports Patent Owner's proposed construction:
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`Through the single-piece connection of the mounting part 37 with
`the input part 35 of the damper stage 15 and the output part 34 of
`the damper stage 15 [sic 14] by means of the rivets 33 is the
`centrifugal force pendulum 38 assigned parallel to both damper
`stages. (Emphasis added).
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`This passage provides no support for Petitioner's construction and Petitioner
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`does not identify any portion of the '374 patent's prosecution history that would
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`support reading in these limitations. Dr. Shaw's declaration offers nothing more in
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`support of Petitioner's construction other than simply restating the conclusory
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`attorney arguments in the Petition. (Petition, p.12; Ex. 1002 ¶23) Dr. Shaw's
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`opinion should be afforded no weight. See Ashland Oil, Inc. v. Delta Resins &
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`Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) ("Lack of factual support for
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`expert opinion going to factual determinations, however, may render the testimony
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`of little probative value in a validity determination.”) (citations omitted).
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`Neither Petitioner nor its Expert has identified any evidence that justifies
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`using the arbitrary terms "power paths" and "torque generated." (Petition, p. 12;
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`Ex. 1002, ¶23) There is no corresponding disclosure to support a construction with
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`12
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`these terms and Petitioner points to no evidence of any special definitions in the
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`specification or prosecution history. Use of the terms "power paths" and "torque
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`generated" in their construction is inconsistent with the intrinsic record and does
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`not reasonably reflect the plain language and disclosure. Petitioner cannot
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`construe the claim language to be something that it is not. Petitioner provides no
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`reasoning or evidence in support of why the phrase should not be interpreted in
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`accordance with its ordinary meaning. Accordingly, the Board should not adopt
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`Petitioner's construction for the claim phrase "is parallel to".
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`3.
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`Petitioner Improperly Relies On Alleged Prior Art Haller To
`Support Their Construction
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`To support its construction, Petitioner improperly relies on the asserted prior
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`art reference Haller, which allegedly describes "absorbers with mounting parts that
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`are parallel to the drivetrain such that they don’t transfer engine torque, but they do
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`rotate with the other components in the drivetrain." (Petition, p. 12; Ex. 1002, ¶23)
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`Relying on Haller to define a claim term in the '374 patent fails on numerous
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`grounds.
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`First, it is manifestly improper for the Petitioner to attempt to define a term
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`in a challenged patent based on the structure of an allegedly anticipatory prior art
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`reference. Claims are construed in light of the specification and prosecution
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`13
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`history of the '374 patent, not based on the prior art asserted by a challenger. See
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`Patent 8,573,374
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`37 C.F.R. §42.100(b) a patent claim "shall be given its broadest reasonable
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`construction in light of the specification of the patent in which it
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`appears."(Emphasis added).
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`Second, the passage of Haller cited by Petitioner (ex. 1004, 3:1-3) states that
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`the alleged torsional absorber (spring mass system) is parallel to the drivetrain, but
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`does not state that the spring mass system is in a hydrodynamic torque converter
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`and contains no mention whatsoever of the first and second damper stages.
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`Third, even if the '374 patent and Haller "describe absorbers with mounting
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`parts that are parallel to the drivetrain," this is entirely irrelevant to the claim term
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`at issue. The claim does not recite that the torsional absorber is parallel to the
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`drivetrain, it recites that the torsional absorber is "parallel to both damper stages."
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`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) ([W]ords of the claim are
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`generally given their ordinary and accustomed meaning, unless it appears from the
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`specification or the file history that they were used differently by the inventor.")
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`Petitioner's alleged support for their proposed claim construction ("'does not
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`transfer torque generated by the engine along the power path but rotates with' the
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`other components in the power path") ignores both the plain language of the claims
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`and the specification of the '374 patent. (Petition, p. 12). While claims are given
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`14
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`their broadest reasonable construction, Petitioner cannot simply ignore the intrinsic
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`record. See PPC Broadband, 815 F.3d at 755 ("Above all, the broadest reasonable
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`interpretation must be reasonable in light of the claims and specification.")
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`(Emphasis in original).
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`Relying on structure from an allegedly anticipatory prior art reference to
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`define claim language, while ignoring the intrinsic record of the '374 patent, is
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`erroneous and contrary to well established law. Petitioner's alleged support for
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`their construction is inconsistent with the specification and the claims of the '374
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`patent. Accordingly, an ordinary skilled artisan reviewing the '374 patent would
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`not find Petitioner's construction reasonable, and thus, it should not be adopted by
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`the Board.
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`As each and every ground of unpatentability alleged by Petitioner is
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`predicated on this erroneous construction, the Petition should be denied.
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`4.
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`Patent Owner's Construction "the Torsional Vibration
`Absorber is Connected Via a Single Piece Connection to the
`Input of the Second Stage and to the Output of the First Stage"
`is Supported by the Claim Language and the Specification
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`Applying the broadest reasonable construction of the claim language in light
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`of the specification, the term "torsional vibration absorber (17) is parallel to both
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`damper stages (14, 15)" means "the torsional vibration absorber is connected via a
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`15
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`single piece connection to the input of the second stage and to the output of the
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`Patent 8,573,374
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`first stage." This construction is consistent with the plain and ordinary meaning as
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`interpreted by the specification and claims. The specification of the '374 patent
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`describes to an ordinarily skilled artisan precisely what is meant by "parallel to
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`both damper stages":
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`[T]orsional vibration absorber 17 . . . forms a centrifugal force
`pendulum . . .. Through the single-piece connection of the mounting
`part 37 with the input part 35 of the damper stage 15 and the output
`part 34 of the damper stage 15 (sic 14) by means of the rivets 33 is
`the centrifugal force pendulum 38 assigned parallel to both damper
`stages.
`(Ex. 1001, 5:4-6, 12-16)
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`
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`Although Petitioner cites to those lines, neither Petitioner nor its Expert
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`provides any analysis whatsoever of this passage, which not only uses the exact
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`words "parallel to both damper stages," but is the only passage in the specification
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`that even contains the word "parallel." Patent Owner looks to the specification
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`for guidance and does not disregard the express language of the claims and the
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`specification.
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`The meaning of the term “torsional vibration absorber is parallel to both
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`damper stages" is drawn directly from the above-referenced passage, and is
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`properly construed to mean "the torsional vibration absorber is connected via a
`16
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`single piece connection to the input of the second stage and to the output of the
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`first stage." The Board should adopt Patent Owner's claim construction because a
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`person of ordinary skill in the art at the time of the invention would find that it is
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`the broadest reasonable construction in view of the intrinsic record of the '374
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`patent.
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`III. Petitioner Cannot Demonstrate A Reasonable Likelihood Of
`Prevailing On Any Asserted Ground Because Their Construction Of
`"Is Parallel To" Is Improper And Required For Every Claim
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`All of the claims in the '374 pa
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