`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`Valeo North America, Inc. and Valeo Embrayages,
`Petitioners,
`
`v.
`
`Schaeffler Technologies AG & Co. KG,
`Patent Owner.
`
`__________________
`
`Case IPR2017-00441
`
`U.S. Patent No. 8,573,374
`
`__________________
`
`PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 1-16 OF U.S. PATENT NO. 8,573,374
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I. Mandatory Notices—Rule 42.8(a)(1) ................................................ 1
`II. Certification of Grounds for Standing—Rule 42.104(a)................... 2
`III. Overview of Challenge and Relief Requested—Rule
`42.104(b) ............................................................................................. 2
`A. Prior Art Patents and Printed Publications ............................ 2
`B. Grounds for Challenge ............................................................. 4
`IV. Overview of the ’374 Patent and the Prior Art ................................ 6
`A. The ’374 Patent ......................................................................... 6
`B.
`Summary of Select Prior Art ................................................... 8
`1. Haller ............................................................................... 9
`2.
`Sasse .............................................................................. 10
`3. Heuler ............................................................................ 11
`V. Claim Construction .......................................................................... 12
`VI. Level of Ordinary Skill in the Art ................................................... 13
`VII. Identification of How the Challenged Claims Are
`Unpatentable ................................................................................... 15
`A. Ground 1: Claims 1 and 3 Are Anticipated by Haller .......... 15
`B. Ground 2: Claim 4 Is Obvious Over Haller and Eckel ......... 24
`C. Ground 3: Claims 1–3, 8–10, and 14–16 Are Obvious
`Over Sasse and Haller ............................................................ 26
`D. Ground 4: Claims 4–7 Are Obvious Over Sasse,
`Haller, and Eckel .................................................................... 47
`
`i
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`E. Ground 5: Claims 11–13 Are Obvious Over Sasse,
`Haller, and MacDonald .......................................................... 55
`F. Ground 6: Claims 2 and 10 Are Obvious Over Sasse,
`Haller, and Heuler.................................................................. 64
`G. Ground 7: Claims 1–3, 10, and 14–16 Are Obvious
`Over Heuler and Haller ......................................................... 68
`H. Ground 8: Claim 4 Is Obvious Over Heuler, Haller
`and Eckel ................................................................................ 81
`Ground 9: Claims 11–13 Are Obvious Over Heuler,
`Haller, MacDonald and Schierling ........................................ 83
`VIII. CONCLUSION ................................................................................ 91
`CERTIFICATE OF SERVICE .................................................................. 92
`
`I.
`
`
`
`
`
`ii
`
`
`
`
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`TABLE OF AUTHORITIES
`
`
`Cases
`
`In re GPAC Inc.,
` 57 F.3d 1573 (Fed. Cir. 1995) ........................................................ 13
`
`In re Larson,
` 340 F.2d 965 (CCPA 1965) ............................................................ 50
`
`Statutes
`
`35 U.S.C. § 119(c) ................................................................................ 1
`
`35 U.S.C. § 314(a) ............................................................................... 5
`
`Rules
`
`37 C.F.R. § 42.100(b) ......................................................................... 11
`
`37 C.F.R. § 42.104(b)(4) .................................................................... 14
`
`37 C.F.R. § 42.104(b)(5) .................................................................... 14
`
`37 C.F.R. § 42.15(a) ............................................................................. 2
`
`37 C.F.R. § 42.8(a)(1) .......................................................................... 1
`
`
`
`
`
`
`
`iii
`
`
`
`
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`EXHIBIT LIST
`U.S. Patent No. 8,573,374 to Magerkurth et al.
`
`Declaration of Professor Steven Shaw
`
`U.S. Patent No. 7,073,646 to Sasse et al.
`
`PCT Publication No. WO 2004/018897 to Haller et al.
`and certified translation
`
`U.S. Patent No. 6,026,940 to Sudau
`
`PCT Publication No. WO 2009/067987 to Degler et al.
`and certified translation
`
`Declaration of Jochen Sties
`
`File History for U.S. Patent No. 8,573,374 to
`Magerkurth et al.
`
`DE 199 14 871 A1 to Röhrig et al. and certified
`translation
`
`DE 196 04 160 C1 to Eckel et al. and certified
`translation
`
`U.S. Patent No. 5,884,735 to Eckel et al.
`
`U.S. Patent No. 5,295,411 to Speckhart
`
`UK Patent Application No. 2 271 411 to Seebacher et al.
`
`U.S. Patent No. 5,080,215 to Förster et al.
`
`U.S. Patent No. 6,244,401 to Maienschein et al.
`
`
`1001
`
`1002
`
`1003
`
`1004
`
`
`1005
`
`1006
`
`
`1007
`
`1008
`
`
`1009
`
`
`1010
`
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`
`
`
`
`
`iv
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`U.S. Patent Application Publication No. 2007/0205067
`to Frey et al.
`
`U.S. Patent Application Publication No. 2008/0121483
`to Sasse et al.
`
`U.S. Patent Application Publication No. 2007/0235277
`to Heuler et al.
`
`U.S. Patent No. 8,161,739 to Degler et al.
`
`U.S. Patent No. 8,161,740 to Krause et al.
`
`DE 196 188 64 to Sudau and certified translation
`
`DE 196 54 894 A1 to Schierling et al. and certified
`translation
`
`DE 196 54 915 A1 to Schierling et al. and certified
`translation
`
`DE 196 09 553 to Schierling et al. and certified
`translation
`
`GB 2231123 to Graton et al.
`
`U.S. Patent No. 6,053,292 to MacDonald
`
`U.S. Publication No. 2005/0039998 to Zuehl et al.
`
`U.S. Publication No. 2006/0201765 to Arhab
`
`U.S. Publication No. 2007/0284206 to Davis
`
`1016
`
`
`1017
`
`
`1018
`
`
`1019
`
`1020
`
`1021
`
`1022
`
`
`1023
`
`
`1024
`
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`
`
`
`
`v
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`I.
`
`Mandatory Notices—Rule 42.8(a)(1)
`Valeo North America, Inc. and Valeo Embrayages (collectively,
`
`“Valeo” or “Petitioner”) provide notice of the following:
`
`Real Party-In-Interest: Valeo is the real party-in-interest.
`
`Related Matters: Petitioner is unaware of any matters related
`
`to U.S. Patent No. 8,573,374 other than Patent Owner is filing a
`
`separate petition directed against the same patent, IPR2017-00442,
`
`directed against different prior art. The other petition is based on a
`
`35 U.S.C. § 119(c) bar to priority and therefore is not redundant with
`
`this petition, which does not raise this issue.
`
`For efficiency, Petitioner requests that the two petitions be
`
`handled by the same panel. And, if these petitions are not merged,
`
`Petitioner requests that the Final Written Decisions issue on the
`
`same day.
`
`Lead counsel: Robert C. Mattson (Reg. No. 42,850)
`
`Back-up counsel: Philippe J.C. Signore (Reg. No. 43,922) and
`
`Lisa M. Mandrusiak (Reg. No. 72,653).
`
`Service Information: Petitioner consents to email service.
`
`Email:
`
`cpdocketmattson@oblon.com
`
`
`
`
`
`1
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`
`
`
`
`
`
`
`
`cpdocketsignore@oblon.com
`
`cpdocketmandrusiak@oblon.com
`
`Post: Oblon LLP
`
`
`
`
`
`
`
`
`
`1940 Duke Street
`
`Alexandria, VA 22314
`
`Telephone: (703) 412-6466
`
`
`
`Fax: (703) 413-2220
`
`The Office is authorized to charge the fee required by 37 C.F.R.
`
`§ 42.15(a) for this Petition to Deposit Account No. 15-0030. Any
`
`additional fees that might be due are also authorized.
`
`II. Certification of Grounds for Standing—Rule 42.104(a)
`Petitioner certifies that the ’374 patent is available for inter
`
`partes review and that Petitioner is not barred or estopped from
`
`requesting review on the grounds identified in this Petition.
`
`III. Overview of Challenge and Relief Requested—Rule
`42.104(b)
`Petitioner requests inter partes review and cancelation of claims
`
`1–16 of the ’374 patent. The ’374 patent is subject to pre-AIA 35
`
`U.S.C. §§ 102 and 103.
`
`A. Prior Art Patents and Printed Publications
`Review of the ’374 patent is requested in view of the following:
`
`
`
`
`
`2
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`Ex. 1003 – U.S. Patent No. 7,073,646 (“Sasse”), issued July 11,
`
`2006, is available as prior art under § 102(b). Sasse was cited during
`
`original prosecution (Ex. 1008, 226) but was not substantively relied
`
`upon by the Examiner. This Petition presents expert witness
`
`testimony (Ex. 1002) and prior art that was never considered by the
`
`Office in combination with Sasse.
`
`Ex. 1004 – PCT Publication No. WO 2004/018897 (“Haller”),
`
`published March 4, 2004, is available as prior art under § 102(b).
`
`Ex. 1011 – U.S. Patent No. 5,884,735 (“Eckel”), issued March
`
`23, 1999, is available as prior art under § 102(b).
`
`Ex. 1018 – U.S. Patent Application Publication No.
`
`2007/0235277 (“Heuler”), published October 11, 2007, is available as
`
`prior art under § 102(b).
`
`Exs. 1022, 1023, 1024 – German Published Patent Application
`
`No. DE 196 54 894 (“Schierling ’894”), published December 4, 1997, is
`
`available as prior art under § 102(b). German Published Patent
`
`Application No. DE 196 54 915 A1 (“Schierling ’915”), published
`
`February 5, 1998, is available as prior art under § 102(b). German
`
`internal priority document No. DE 196 09 553 (“Schierling ’553”), was
`
`
`
`
`
`3
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`the priority document on which the Schierling ’894 and ’915
`
`applications were based, and is available as prior art under § 102(b).
`
`(Ex. 1007, Sties Declaration.) Collectively, Schierling ’894, ’915, and
`
`’553 are referred to as “Schierling.”
`
`Ex. 1026 – U.S. Patent No. 6,053,292 (“MacDonald”), issued
`
`April 25, 2000, is available as prior art under § 102(b).
`
`B. Grounds for Challenge
`
`Petitioner requests cancelation of the challenged claims under
`
`the following statutory grounds, which fall into three categories.
`
`First, grounds based on Haller (applicable if the claims are
`
`interpreted very broadly); second, grounds with Sasse as primary
`
`reference; and third, alternative grounds with Heuler as primary
`
`reference. Various secondary references are used in each group.
`
`1.
`
`Claims 1 and 3 are anticipated by Haller under 35 U.S.C.
`
`§ 102(b).
`
`2.
`
`Claim 4 is unpatentable under 35 U.S.C. § 103 as obvious
`
`over Haller and Eckel.
`
`3.
`
`Claims 1–3, 8–10, and 14–16 are unpatentable under 35
`
`U.S.C. § 103 as obvious over Sasse and Haller.
`
`
`
`
`
`4
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`Claims 4–7 are unpatentable under 35 U.S.C. § 103 as
`
`4.
`
`obvious over Sasse, Haller, and Eckel.
`
`5.
`
`Claims 11–13 are unpatentable under 35 U.S.C. § 103 as
`
`obvious over Sasse, Haller, and MacDonald.
`
`6.
`
`Claims 2 and 10 are unpatentable under 35 U.S.C. § 103
`
`as obvious over Sasse, Haller, and Heuler.
`
`7.
`
`Claims 1–3, 10, and 14–16 are unpatentable under 35
`
`U.S.C. § 103 as obvious over Heuler and Haller.
`
`8.
`
`Claim 4 is unpatentable under 35 U.S.C. § 103 as obvious
`
`over Heuler, Haller, and Eckel.
`
`9.
`
`Claims 11–13 are unpatentable under 35 U.S.C. § 103 as
`
`obvious over Heuler, Haller, MacDonald, and Schierling.
`
`Section VII demonstrates that there is a reasonable likelihood
`
`that Petitioner will prevail for each of the statutory grounds. See 35
`
`U.S.C. § 314(a). Support for each ground of unpatentability is also
`
`provided in the Declaration of Professor Steven Shaw (Ex. 1002).
`
`
`
`
`
`5
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`IV. Overview of the ’374 Patent and the Prior Art
`A.
` The ’374 Patent
`The ’374 patent describes a torque converter that purportedly
`
`dampens vibrations well while taking up little assembly space. The
`
`torque converter has multiple damper stages disposed in series
`
`between a lock-up clutch and an output hub. A torsional vibration
`
`damper is arranged between the damper stages. (Ex. 1001, 1:63–2:5;
`
`Ex. 1002 ¶ 33.) The ’374 patent touts that this configuration permits
`
`components of the damper stages to be shared, providing a lighter
`
`and narrower torque converter. (Ex. 1001, 2:5–18; Ex. 1002 ¶ 34.)
`
`
`
`The ’374 patent admits that prior art torque converters also had
`
`dampers arranged between the lock-up clutch and the output hub and
`
`between the turbine and the output hub. (Ex. 1001, 1:23–42; Ex. 1002
`
`¶ 35.) The ’374 patent also acknowledges that it was known to use
`
`vibration absorbers such as centrifugal force pendulums to reduce
`
`torsional vibrations. (Ex. 1001, 1:43–50; Ex. 1002 ¶ 36.)
`
`
`
`The only drawing figure in the ’374 patent, reproduced below
`
`with colored annotations, depicts a hydrodynamic torque converter 1
`
`having a housing 3, an impeller 6, and a turbine 7 inside the housing
`
`
`
`
`
`6
`
`
`
`3. (Ex. 1001, 3:56–4:8; Ex. 1002 ¶ 38.)
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`
`
`’374 Patent
`
`A lock-up clutch 13 (including piston 18 in blue) is mounted to
`
`the housing 3. When the lock-up clutch is closed, it transmits torque
`
`from an internal combustion engine to the output hub 12 (purple) via
`
`
`
`
`
`7
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`first and second damper stages 14, 15, as follows: The input 41
`
`(yellow) to the first damper stage receives torque from the lock-up
`
`clutch. The output of the first damper stage is a disk part 25 (green)
`
`that also forms a portion of the input of the second damper stage. (Ex.
`
`1001, 4:38–40; Ex. 1002 ¶ 40.) The input of the second damper stage
`
`is completed by disk part 31 (red), which also forms the mounting
`
`part for the torsional vibration absorber 17. (Ex. 1001, 5:3–5; Ex.
`
`1002 ¶ 41.) The output (purple) of the second damper stage is part of
`
`the output hub (purple). When the lock-up clutch is open, torque flows
`
`via impeller 6 to the turbine 7 which is fastened to disk part 25
`
`(green). Because disk part 25 is the input of the second damper stage,
`
`torque is transmitted through the second damper stage 15 to the
`
`output hub (purple). (Ex. 1001, 4:8–16; Ex. 1002 ¶ 43.)
`
`B. Summary of Select Prior Art
`All claim elements of the ’374 patent were known in the prior
`
`art and used to perform the same functions. The subsections below
`
`briefly discuss prior art references and highlight the components
`
`corresponding to the ’374 patent in the same colors.
`
`
`
`
`
`8
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`1. Haller
`Haller describes alternative arrangements for components of a
`
`torque converter, including (a) two damper stages disposed in series
`
`between a lock-up clutch and an output hub and (b) a torsional
`
`vibration absorber arranged in parallel with the damper stages. (Ex.
`
`1004, 3:29–4:18; Ex. 1002 ¶¶ 47–52.) Fig. 8 shows a piston (blue) for
`
`the lock-up clutch, an input (yellow) for the first damper stage, a
`
`shared output/input for the first/second damper stage, an output
`
`(purple) of the second damper stage, and a torsional vibration
`
`absorber (red).
`
`
`
`Haller Fig. 8 (excerpt)
`
`
`
`
`
`9
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`2. Sasse
`Sasse also describes alternative arrangements for components
`
`of torque converters, including two damper stages in series between a
`
`lock-up clutch and an output hub. (Ex. 1003, Figs. 1–2; Ex. 1002 ¶¶
`
`53–63.)
`
`Sasse Fig. 1
`
`
`
`
`
`
`
`10
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`3. Heuler
`Heuler describes a torque converter having two damper stages
`
`
`
`in series between a lock-up clutch and an output hub. (Ex. 1018, Fig.
`
`11; Ex. 1002 ¶¶ 64–66.)
`
`Heuler Fig. 11
`
`
`
`
`
`
`
`11
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`V. Claim Construction
`This Petition shows that the challenged claims are
`
`unpatentable when given their broadest reasonable interpretation in
`
`light of the specification. See Rule 42.100(b).
`
`“Torsional vibration absorber” (claims 1–16) means a component
`
`or device designed to absorb torsional vibrations. As described in the
`
`’374 patent, this includes movable masses disposed on mounting
`
`parts. (Ex. 1001, 1:43–45.) Some examples of movable masses
`
`disposed on mounting parts are compensation flywheels, frequency-
`
`tuned mass-spring devices, and centrifugal force pendulums. (Id.; Ex.
`
`1002 ¶ 22.)
`
`“Is parallel to” (claims 1–16) means “does not transfer torque
`
`generated by the engine along the power path but rotates with” the
`
`other components in the power path. This is consistent with the
`
`description of parallel components in the ’374 specification and in
`
`Haller. (Ex. 1001, 5:12–16; Ex. 1004, 3:1–3; Ex. 1002 ¶ 23.) Both
`
`documents describe absorbers with mounting parts that are parallel
`
`to the drivetrain such that they don’t transfer engine torque, but they
`
`do rotate with the other components in the drivetrain.
`
`
`
`
`
`12
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`“Centered” (claims 2 and 11) means “circumferentially
`
`mounted.” Column 2, lines 2:24–28, of the ’374 patent describe the
`
`centered relationship between the input part of first damper stage
`
`and output part of second damper stage. Similarly, column 3, lines
`
`30–33, describes the centered relationship between the piston and the
`
`output hub. (Ex. 1002 ¶ 24.)
`
`“In a pocket” (claim 10) means “partially in a pocket.” The ’374
`
`specification describes that the lock-up clutch is axially mounted in a
`
`pocket, but claim 11 specifies that the lock-up clutch is formed out of
`
`a piston. In Fig. 1, the piston extends out of the pocket such that it is
`
`only partially in the pocket. (Ex. 1002 ¶ 25.)
`
`VI. Level of Ordinary Skill in the Art
`The level of ordinary skill in the art is evidenced by the prior
`
`art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (the
`
`Board did not err in adopting the approach that the level of skill in
`
`the art was best determined by the references of record).
`
`Before the earliest priority date of the ’374 patent, various
`
`components were used to dampen and absorb vibrations in torque
`
`converters. (Ex. 1002 ¶ 15.) The ’374 patent itself acknowledges that
`
`
`
`
`
`13
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`prior art torque converters utilized dampers and torsional vibration
`
`absorbers to reduce the effect of torsional vibrations caused by
`
`internal combustion engines. (Ex. 1001, 1:23–42; Ex. 1002 ¶ 16.)
`
`The prior art also demonstrates that companies such as
`
`DaimlerChrysler, Mannesmann Sachs/ZF Sachs, and Carl
`
`Freudenberg were already seeking patent protection on compact
`
`torque converter designs with different damper and absorber
`
`arrangements. (Ex. 1004, Figs. 1–8, 2:15–20; Ex. 1005; Ex. 1011; Ex.
`
`1022; Ex. 1002 ¶ 17.)
`
`The prior art also evidences that a person having ordinary skill
`
`in the art (“PHOSITA”) knew to arrange torque converter components
`
`to minimize assembly space. (Ex. 1002 ¶ 18.) For example, Sasse
`
`shares components to reduce space (Ex. 1003, 5:3–34), and Haller
`
`uses existing space within the torque converter to decrease assembly
`
`space. (Ex. 1004, 3:9–16.)
`
`As demonstrated by the prior art discussed below, the claims of
`
`the ’374 patent simply recite a combination of prior art elements that
`
`function predictably in their known manner.
`
`
`
`
`
`
`
`14
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`VII. Identification of How the Challenged Claims Are
`Unpatentable
`Pursuant to Rule 42.104(b), this section demonstrates that the
`
`challenged claims are unpatentable. Certain claim elements are
`
`annotated [a], [b], etc. for cross-referencing ease.
`
`A. Ground 1: Claims 1 and 3 Are Anticipated by Haller
`The ’374 patent describes two torque paths: (1) when the lock-
`
`up clutch is closed, torque is introduced mechanically through the
`
`lock-up clutch and transmitted via first 14 and second 15 damper
`
`stages into the output hub 12; and (2) when the lock-up clutch is
`
`open, torque flows from the turbine to the second damper stage 15
`
`into the output hub 12. (Ex. 1001, 4:8–14; Ex. 1002 ¶ 68.) If claim 1
`
`encompasses torque converters having more than one damper stage
`
`arranged between the turbine and the output hub when the lock-up
`
`clutch is open, it is anticipated by Haller.
`
`Haller Fig. 8 describes a torque converter with a turbine driven
`
`by an impeller, a torsional vibration absorber, and a multi-stage
`
`torsional vibration damper disposed between a lock-up clutch and the
`
`output hub. (Ex. 1004, Fig. 8; Ex. 1002 ¶ 72.) Both of Haller’s damper
`
`
`
`
`
`15
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`stages are disposed between the turbine and the output hub, relative
`
`to the torque path. (Ex. 1004, Fig. 8; Ex. 1002 ¶¶ 73-75.)
`
`In addition, Haller discloses a spring-mass system 22 that forms
`
`a torsional vibration absorber that can be connected in parallel to
`
`both dampers. (Ex. 1004, 8:24–26 and 11:22–24; Ex. 1002 ¶ 76.)
`
`Claim 1[a]: A hydrodynamic torque converter (1):
`The preamble is not limiting, but nonetheless, Haller discloses
`
`hydrodynamic torque converters. (Ex. 1004, 3:19–20.) Thus, Haller
`
`teaches element 1[a]. (Ex. 1002 ¶ 77.)
`
`Claim 1[b]: with a turbine (7) driven by an impeller (6) as
`well as housing (3)
`The hydrodynamic torque converters in Haller include a turbine
`
`driven by an impeller in a housing. (Ex. 1004, 10:1–2.) Thus, Haller
`
`teaches element 1[b]. (Ex. 1002 ¶ 78.)
`
`Claim 1[c]: in which a torsional vibration damper (16)
`with multiple of damper stages (14, 15)
`The ’374 patent’s first damper stage 14 (green) and second
`
`damper stage 15 (red) are highlighted below, along with the first
`
`(green) and second (red) damper stages of Haller Fig. 8.
`
`
`
`
`
`16
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`
`
`
`
`’374 Patent
`
`
`
`
`
`Haller Fig. 8
`
`Haller’s two damper stages in Fig. 8 are examples of the claimed first
`
`and second damper stages. (Ex. 1002 ¶ 79.) Thus, Haller teaches
`
`element 1[c]. (Id. ¶ 80.)
`
`Claim 1[d]: a torsional vibration absorber (17)
`The ’374 patent and Haller depict torque converters with
`
`torsional vibration absorbers, highlighted in red below.
`
`
`
`
`
`17
`
`
`
`U.S. Pate
`
`nt No. 8,573,,374
`
`
`
`Pettition for Inteer Partes Revview
`
`
`
`Hall
`
`
`
`er Fig. 88
`
`
`
`
`
`’3774 Patentt
`
`
`
`
`
`
`
`m ass systemspring-mais formedd by the s
`
`
`
`
`
`in Fig. 8
`Haller’s aabsorber
`
`
`
`
`22. (EEx. 1002 ¶¶ 85.) Pattent Owner’s U.S.
`
`
`
`
`
`
`
`
`
`Patent NNos. 8,1611,739 andd
`
`
`
`
`
`
`
`8,161,740 discuuss Halleer’s prioriity applicaation andd acknowlledge thaat
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`a spriing-mass device fuunctions aas a vibraation absoorber. (Exx. 1019,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1:47–48; Ex. 10020, 1:47–48.)
`
`
`
`
`
`
`
`Moreoverr, Haller teaches ccentrifugaal pendullum vibraation
`
`
`
`
`
`
`
`
`
`
`
`
`
`absorbers. By referring to the sppring-masss systemm as a vibrration
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`canceeller that possessess “a variaable naturral frequeency” andd is
`
`
`
`
`
`
`
`
`
`18
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`effective “over a wider frequency band,” Haller invokes centrifugal
`
`force pendulums. (Ex. 1004, 5:17–19; Ex. 1002 ¶ 83.) Haller also
`
`refers to the centrifugal force pendulums in the prior art as
`
`“cancellers,” which is the same term that Haller uses to describe its
`
`spring-mass system. (Ex. 1004, 2:15–20; Ex. 1002 ¶ 84.) The
`
`“cancellers” in at least two of those documents (DE 199 14 871 A1,1
`
`Ex. 1009 and DE 196 04 160 C1,2 Ex. 1010) are centrifugal force
`
`pendulums of the same type disclosed in the ’374 patent’s preferred
`
`embodiments, as can be seen from the figures. (Ex. 1001, 2:48–49; Ex.
`
`1009; Ex. 1010.)
`
`Thus, Haller teaches element 1[d]. (Id.¶ 86.)
`
`Claim 1[e]: and a lock-up clutch (13) are additionally
`installed
`The torque converter in Haller includes a lock-up clutch, which
`
`is visible in Fig. 8 and labeled with reference numeral 46 elsewhere.
`
`
`1 This German patent has no U.S. equivalent, but the translation is
`
`included in the exhibit.
`
`2 The translation is included, and the U.S. equivalent is U.S. Patent
`
`No. 5,884,735, Ex. 1011.
`
`
`
`
`
`19
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`(Ex. 1004, 10:25; Ex. 1002 ¶ 87.) Thus, Haller teaches element 1[e].
`
`(Ex. 1002 ¶ 87.)
`
`Claim 1[f]: wherein a first damper stage (14) and a
`second damper stage (15) are disposed between the lock-
`up clutch (14) and an output hub (12),
`Claim 1[f] describes a first torque path where torque is
`
`transferred from the lock-up clutch through both dampers to the
`
`output hub. (Ex. 1002 ¶ 88.)
`
`Haller’s Fig. 8 depicts the same torque path. The first and
`
`second dampers are connected in series between the lock-up clutch
`
`and the output hub so that when the lock-up clutch is closed, torque
`
`is transferred from the lock-up clutch, serially through both damper
`
`stages, and then to the output hub. Thus, Haller teaches element 1[f].
`
`(Ex. 1002 ¶ 89.)
`
`Claim 1[g]: the second damper stage (15) is disposed
`between the turbine (7) and the output hub (12) and
`Claim 1[g] describes a second torque path where torque passes
`
`from the turbine through the second damper stage to the output hub.
`
`(Ex. 1002 ¶ 90.) The broadest reasonable interpretation of claim 1[g]
`
`does not exclude arrangements where additional damper stages are
`
`disposed between the turbine and the output hub.
`
`
`
`
`
`20
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`Haller Fig. 8 describes such an arrangement, where both the
`
`first and second dampers stages are disposed between the turbine
`
`and the output hub. (Ex. 1002 ¶ 92.) Both the lock-up clutch and the
`
`turbine provide input to the first damper stage, so both damper
`
`stages remain disposed between the turbine and the output hub when
`
`the lock-up clutch is open. Thus, Haller teaches element 1[g]. (Ex.
`
`1002 ¶ 92.)
`
`Claim 1[h]: the torsional vibration absorber (17) is
`parallel to both damper stages (14, 15).
`Haller describes two variations, each of which places the
`
`torsional vibration damper parallel to both damper stages.
`
`In the first variation, the mount for the absorber 22 passes
`
`through windows in the input of the second damper stage and is
`
`connected directly to support ring 45 that forms the output of the
`
`second damper stage. (Ex. 1004, 12:5–6.) Thus, the absorber 22 is
`
`connected to the same torque flow path as the first and second
`
`damper stages, but it does not itself transfer the engine’s torque along
`
`the torque flow path. Accordingly, the absorber 22 is parallel to both
`
`damper stages. (Ex. 1002 ¶ 93.)
`
`In the second variation, Haller states that the absorber 22 “is
`
`
`
`
`
`21
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`connected nonrotatably to transfer element 42.” (Ex. 1004, 12:5–6.)
`
`The transfer element 42 corresponds to the disk 25 of the ’374 patent
`
`because it forms the output for the first damper stage and the input
`
`for the second damper stage: “power flows from … springs 41,
`
`transfer element 42, springs 44 … in the aforementioned sequence.”
`
`(Ex. 1004, 11:7–10.) Haller notes that this arrangement of the
`
`absorber “between the first torsional damper stage and the second
`
`torsional damper stage … results in particularly good dynamic
`
`transfer behavior.” (Id., 4:4–6.)
`
`When Haller’s absorber “is connected nonrotatably to transfer
`
`element 42,” the absorber is parallel to both damper stages. This is
`
`precisely the configuration of the ’374 patent, with the absorber
`
`connected via rivet 33 to the disk part 25 between the damper stages.
`
`(Ex. 1001, 5:12–16.) The disk part 25 and transfer element 42 are
`
`highlighted in green below. Accordingly, the second variation of the
`
`torque converter—described in the text of Haller—has an absorber
`
`that is parallel to both damper stages. (Ex. 1002 ¶ 95.)
`
`Patent owner also conceded in Degler (Ex. 1006, PCT
`
`application resulting in Ex. 1019) that Haller’s absorber is
`
`
`
`
`
`22
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`advantageously parallel to the drivetrain—which includes both
`
`damper stages:
`
`Such an arrangement is already known, for example, from the
`publication DE 10236752 A1 [Haller’s priority document].
`Therein the drive machine is connected via at least one
`starting element, especially a … torque converter, with one or
`more gear-mechanism parts. This means that a spring-and-
`mass system … is not connected in series with the drivetrain
`but instead is disposed in parallel connection relative thereto,
`whereby the elasticity of the drivetrain is not impaired.
`(Ex. 1006, 1, emphasis added; see also Ex. 1019, 1:39–47 (similar
`
`recitation).)
`
`Thus, Haller teaches element 1[h]. (Ex. 1002 ¶ 98.)
`
`Claim 3: The hydrodynamic torque converter (1)
`according to claim 1, wherein a disk part (25) is allocated
`to two damper stages (14, 15) as one piece.
`Claim 3 requires that a single disk part is shared between the
`
`first and second damper stages. (Ex. 1002 ¶ 99.) As shown in the ’374
`
`patent, disk part 25 (green) is a single component shared between
`
`both damper stages, and the same relationship is shown in Haller
`
`Fig. 8:
`
`
`
`
`
`23
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`
`
`’374 Patent
`
`
`
`
`
`
`
`Haller Fig. 8
`
`
`
`In Haller Fig. 8 above, plates (green) form the output of the first
`
`damper stage and the input of the second damper stage. (Ex. 1004,
`
`10, lines 13-14.) Thus, Haller anticipates claim 3. (Ex. 1002 ¶ 100.)
`
`B. Ground 2: Claim 4 Is Obvious Over Haller and Eckel
`As explained above for claim 1[d], Haller teaches a torque
`
`converter with a torsional vibration absorber, but does not expressly
`
`teach that the torsional vibration absorbers in the figures have
`
`
`
`
`
`24
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`multiple masses. (Ex. 1004; Ex. 1002 ¶ 101.) Although, Haller refers
`
`to prior-art absorbers formed by centrifugal force pendulums, Haller
`
`does not state that the spring-mass system 22 can be a centrifugal
`
`force pendulum with multiple masses. (Ex. 1004, 2:15–20.) But,
`
`Haller specifically refers to DE 196 04 160 as a prior-art absorber,
`
`and the U.S. equivalent, Eckel, teaches centrifugal force pendulums
`
`with multiple masses. (Ex. 1011, Fig. 1.)
`
`It would have been obvious to a PHOSITA to apply Eckel’s
`
`centrifugal force pendulum to a torque converter with multi-stage
`
`damper as in Haller Fig. 8 because the benefits of Eckel’s centrifugal
`
`force pendulum could be predictably applied to any rotating machine
`
`with order excitation, such as a torque converter. (Ex. 1002 ¶ 103.)
`
`Particularly, incorporating Eckel’s centrifugal force pendulum into a
`
`torque converter would yield the predictable result of attenuating
`
`rotational vibration, as observed by Haller. (Id. ¶ 103.) And, a
`
`PHOSITA would have a reasonable expectation of success in making
`
`that modification because it merely involves using Eckel’s pendulum
`
`absorber for its intended purpose. (Id.)
`
`Claim 4[a]: The hydrodynamic torque converter (1)
`according to claim 1, wherein the torsional vibration
`
`
`
`
`
`25
`
`
`
`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`absorber (17) comprises a plurality of absorber masses
`(39), and
`Eckel’s drawings show a centrifugal force pendulum including a
`
`plurality of absorber masses 2. (Ex. 1011, Figs. 1–3.) Thus, the
`
`Haller/Eckel combination renders obvious element 4[a]. (Ex. 1002 ¶
`
`105.)
`
`Claim 4[b]: a mounting part (37) of the torsional
`vibration absorber (17) forms a disk part (31) of an input
`part (35) of the second damper stage (15).
`As noted above in the discussion of claim 1[h], Haller teaches
`
`that the absorber can be “connected nonrotatably to transfer element
`
`42” and that the transfer element forms the input of the second
`
`damper stage (Ex. 1004, 4:4–5, 10:13–14, 12:5–6.) In all
`
`embodiments, Haller’s transfer element includes a disk part that
`
`forms the input of the second damper stage. (Id. Figs. 6–8.) Thus, the
`
`Haller/Eckel combi