Inter Partes Review
`U.S. Patent No. 7,067,952
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`TOYOTA MOTOR CORPORATION AND
`DENSO CORPORATION
`Petitioners
`v.
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`______________
`
`Case No.: IPR2017-01497
`Patent No. 7,067,952
`Title: Stator Assembly Made from a Molded
`Web of Core Segments and Motor Using Same
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,067,952
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`I.
`II.
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`C.
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`PRELIMINARY STATEMENT ..................................................................... 1
`THE ’952 PATENT ......................................................................................... 1
`A.
`The ’952 Patent Specification ............................................................... 2
`B.
`The ’952 Patent’s Challenged Claims ................................................... 6
`C.
`The ’952 Patent Prosecution History .................................................... 7
`D.
`Priority Date .......................................................................................... 9
`III. LEVEL OF ORDINARY SKILL .................................................................. 10
`IV. CLAIM CONSTRUCTION .......................................................................... 11
`A.
`“phase change material” ...................................................................... 11
`B.
`“a bridge between adjacent segments to link adjacent segments
`into a continuous strip” ....................................................................... 12
`“the bridge is formed by interconnecting two mating sections
`formed from the phase change material” ............................................ 15
`CLAIMS 10-12 OF THE ’952 PATENT ARE UNPATENTABLE
`OVER THE PRIOR ART .............................................................................. 16
`A. Overview of the Prior Art .................................................................... 17
`B.
`Prior Art Status of the Asserted References ........................................ 20
`1.
`Nakahara (1995) ........................................................................ 20
`2.
`Ishihara (1999) .......................................................................... 20
`3.
`Lieu (2001) ................................................................................ 20
`4.
`Iikuma (1997) ............................................................................ 21
`5.
`Stridsberg (1995) ....................................................................... 21
`6.
`Sheeran (priority to 2002) ......................................................... 21
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`V.
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`Inter Partes Review
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`c.
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`d.
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`C. Ground 1: Claims 10-12 are invalid as obvious over Nakahara
`in view of Ishihara and/or Lieu ........................................................... 23
`1.
`Claim 10: Obvious over Nakahara in view of Ishihara ............ 24
`a.
`“A stator assembly” ........................................................ 24
`b.
`“a plurality of discrete stator segments each at least
`partially encased with a phase change material” ............ 25
`“wherein the phase change material also comprises
`a bridge between adjacent segments to link
`adjacent segments into a continuous strip, wherein
`the bridge is formed by interconnecting two
`mating sections formed from the phase change
`material” ......................................................................... 26
`“the linked stator segments being arranged and
`secured together to form the stator assembly” ............... 33
`Claim 11: Obvious over Nakahara in view of Ishihara
`and Lieu ..................................................................................... 35
`a.
`“The stator assembly of claim 10” ................................. 35
`b.
`“wherein the stator segments are held in a toroidal
`shape by an overmolded thermoplastic material” .......... 35
`Claim 12: Obvious over Nakahara in view of Ishihara ............ 40
`a.
`“The stator assembly of claim 10” ................................. 40
`b.
`“wherein the stator segments are held in a toroidal
`shape by a retaining member” ........................................ 40
`D. Ground 2: Claims 10-12 are invalid as obvious over Iikuma in
`view of Nakahara, Lieu, and/or Stridsberg ......................................... 41
`1.
`Claim 10: Obvious over Iikuma in view of Nakahara .............. 42
`a.
`“A stator assembly” ........................................................ 42
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`2.
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`3.
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`E.
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`Inter Partes Review
`U.S. Patent No. 7,067,952
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`b.
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`c.
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`d.
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`2.
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`3.
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`“a plurality of discrete stator segments each at least
`partially encased with a phase change material” ............ 42
`“wherein the phase change material also comprises
`a bridge between adjacent segments to link
`adjacent segments into a continuous strip, wherein
`the bridge is formed by interconnecting two
`mating sections formed from the phase change
`material” ......................................................................... 47
`“the linked stator segments being arranged and
`secured together to form the stator assembly” ............... 49
`Claim 11: Obvious over Iikuma in view of Nakahara and
`Lieu ........................................................................................... 50
`a.
`“The stator assembly of claim 10” ................................. 50
`b.
`“wherein the stator segments are held in a toroidal
`shape by an overmolded thermoplastic material” .......... 50
`Claim 12: Obvious over Iikuma in view of Nakahara and
`Stridsberg .................................................................................. 54
`a.
`“The stator assembly of claim 10” ................................. 54
`b.
`“wherein the stator segments are held in a toroidal
`shape by a retaining member” ........................................ 54
`Ground 3: Claims 10-12 are invalid as obvious over Sheeran in
`view of Nakahara and/or Lieu ............................................................. 60
`1.
`Claim 10: Obvious over Sheeran in view of Nakahara ............ 61
`a.
`“A stator assembly” ........................................................ 61
`b.
`“a plurality of discrete stator segments each at least
`partially encased with a phase change material” ............ 61
`“wherein the phase change material also comprises
`a bridge between adjacent segments to link
`adjacent segments into a continuous strip, wherein
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`c.
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`the bridge is formed by interconnecting two
`mating sections formed from the phase change
`material” ......................................................................... 65
`“the linked stator segments being arranged and
`secured together to form the stator assembly” ............... 67
`Claim 11: Obvious over Sheeran in view of Nakahara
`and Lieu ..................................................................................... 68
`a.
`“The stator assembly of claim 10” ................................. 68
`b.
`“wherein the stator segments are held in a toroidal
`shape by an overmolded thermoplastic material” .......... 68
`Claim 12: Obvious over Sheeran in view of Nakahara ............ 70
`a.
`“The stator assembly of claim 10” ................................. 70
`b.
`“wherein the stator segments are held in a toroidal
`shape by a retaining member” ........................................ 70
`VI. MANDATORY NOTICES ........................................................................... 71
`A.
`Real Party in Interest ........................................................................... 71
`B.
`Related Matters .................................................................................... 71
`C.
`Lead and Backup Counsel, and Service Information .......................... 72
`VII. CERTIFICATION UNDER 37 C.F.R. § 42.24(d) ........................................ 73
`VIII. GROUNDS FOR STANDING ...................................................................... 73
`IX. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED .............................................................................. 74
`CONCLUSION .............................................................................................. 74
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`d.
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`2.
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`3.
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`X.
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`iv
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`Inter Partes Review
`U.S. Patent No. 7,067,952
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`Exhibit List
`Description
`Exhibit
`1001 U.S. Patent No. 7,067,952 to Neal (“the ’952 patent”)
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`1002 File History of U.S. Patent Application No. 10/383,219, as retrieved from
`PAIR (“’952 File History”)
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`1003 U.S. Patent No. 6,265,804 to Nitta et al. (“Nitta”)
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`1004 U.S. Patent No. 6,167,610 to Nakahara et al. (“Nakahara-610”)
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`1005 U.S. Patent No. 6,121,351 to Weaver et al. (“Weaver”)
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`1006
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`Japanese Patent No. 07-245895A with certified translation (“Nakahara”)
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`1007
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`Japanese Patent No. 11-089128A with certified translation (“Ishihara”)
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`1008 WO Publication No. 01/45233 (“Lieu et al.”)
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`1009
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`Japanese Patent No. 1997-308163 with certified translation (“Iikuma”)
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`1010 U.S. Patent No. 7,471,025 to Sheeran et al. (“Sheeran”)
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`1011 U.S. Patent No. 6,049,153 to Nishiyama et al. (“Nishiyama”)
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`1012 U.S. Patent No. 5,729,072 to Hirano et al. (“Hirano”)
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`1013 U.S. Patent No. 5,694,268 to Dunfield et al. (“Dunfield”)
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`1014 U.S. Patent No. 5,672,927 to Viskochil et al. (“Viskochil”)
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`1015 U.S. Patent No. 5,806,169 to Trago et al. (“Trago”)
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`1016 U.S. Patent No. 5,672,972 to McCoy et al. (“McCoy”)
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`1017 WO Publication No. 95/12912 (“Stridsberg”)
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`1018 U.S. Provisional Application No. 60/422676 (“Sheeran Provisional
`Application”)
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`1019 U.S. Patent No. 4,965,318 to Taubitz et al. (“Taubitz”)
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`Description
`Exhibit
`1020 Hassink et al. “Molded Parts Speed Motor Assembly” Assembly, Vol. 37,
`No. 5 (May 1994). Pp. 34-36 (“Hassink”)
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`Inter Partes Review
`U.S. Patent No. 7,067,952
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`1021 File History of U.S. Patent Application No. 09/798,511, as retrieved from
`PAIR
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`1022 U.S. Patent No. 6,081,059 (“Hsu”)
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`1023 Declaration of T. Akagi, attaching Library of Congress Online Catalog
`record no. LCCN 90658027 (last visited June 8, 2017)
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`1024 Declaration of Gerald R. Micklow (“Micklow Decl.”)
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`I.
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`Inter Partes Review
`U.S. Patent No. 7,067,952
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`PRELIMINARY STATEMENT
`Petitioners Toyota Motor Corporation and Denso Corporation request Inter
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`Partes Review (“IPR”) of claims 10-12 (collectively, the “Challenged Claims”) of
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`the ’952 patent (Ex. 1001), purportedly currently assigned to Intellectual Ventures
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`II LLC (“Patent Owner”).
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`The Challenged Claims are directed to a segmented stator assembly, for use
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`in a motor, of a type that the ’952 patent acknowledges to be known. Ex. 1001,
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`3:34-37. Against the backdrop of the admitted prior art (id., 3:34-4:1), the
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`distinguishing feature of the Challenged Claims during prosecution was “a bridge
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`formed by interconnecting two mating sections formed from the phase change
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`material.” That feature, however, was taught by the prior art years before the ’952
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`patent was filed, and was known from publications across the world. As
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`demonstrated in this Petition, the combination of that feature with the other
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`limitations of the Challenged Claims would have been obvious, and the Challenged
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`Claims are therefore invalid on the Grounds presented herein.
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`II. THE ’952 PATENT
`The ’952 patent, titled “Stator Assembly Made from a Molded Web of Core
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`Segments and Motor Using Same,” was filed on March 5, 2003, as U.S.
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`Application No. 10/383,219 (Ex. 1002), a continuation-in-part of Application
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`No. 09/798,511 (filed March 2, 2001) (Ex. 1021), now U.S. Patent No 7,036,207.
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`Inter Partes Review
`U.S. Patent No. 7,067,952
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`A. The ’952 Patent Specification
`The ’952 patent “relates generally to a stator assembly used in a
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`dynamoelectric machine such as a motor or a generator,” and particularly to “a
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`spindle motor such as used in a hard disc drive, and to the construction and
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`arrangement of a stator assembly made from a plurality of arc segments.”
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`Ex. 1001, 1:16-21. An example of a spindle motor, which the ’952 patent admits to
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`be prior art, is illustrated in Fig. 1, reproduced below.
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`’952 Patent, Fig. 1
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`As shown in Fig. 1, a conventional spindle motor includes a stator 4 made
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`from a laminated steel core wrapped with wire windings. Although not illustrated
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`in Fig. 1, the ’952 patent acknowledges that the prior art taught to encapsulate the
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`stator with an “overmold.” Id., 3:12-33.
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`The ’952 patent also acknowledges that the prior art had improved upon
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`Inter Partes Review
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`conventional stators by assembling them from discrete segments. Id., 3:34-37
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`(“Some of these problems have been addressed by motor manufacturing methods
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`in which individual stator arc segments are made . . . and . . . [later] assembled to
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`form a complete stator.”). The ’952 patent admits that several aspects of segmented
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`stator design were known, including insulating the segments with plastic and
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`providing the segments in a “strip.” Id., 3:59-4:1 (citing U.S. Pat. No. 6,265,804
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`(Ex. 1003, “Nitta”) and U.S. Patent No. 6,167,610 (Ex. 1004, “Nakahara-610”)).
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`As the acknowledged prior art teaches, known stator segment insulating materials
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`included “polyester” and “polyethylene terephthalate,” two thermoplastics.
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`Ex. 1003 [Nitta], 11:5-7; compare with Ex. 1001 [’952 patent], 9:3-19.
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`According to the ’952 patent, known segmented stators suffered from
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`several problems, particularly when they are assembled together. Ex. 1001, 3:38-
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`63. The ’952 patent purports to solve those problems. Id., 4:12-13.
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`The ’952 patent describes a stator core made up of stamp-formed laminated
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`steel arc segments 20 (highlighted in blue below). Id., 5:61-66. Those segments are
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`“coated with encapsulating material 22 [highlighted in orange below] which
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`provides electrical insulation and laminates the pieces together to form a stator arc
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`segment 20, and links other arc segments into a continuous strip via webbing 23.”
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`Id., 6:1-5; Ex. 1024 ¶ 37.
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`’952 Patent, Figs. 3 and 5 (highlighted and annotated)
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`According to the ’952 patent, a “multi-cavity mold 28” can be used to coat
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`the steel arc segments with encapsulating material. Id., 6:29-30. In the “preferred”
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`molding operation, “a continuous strip of segments is formed by linking the
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`webbing from successive molding operation[s]”:
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`This is done by designing the tool to insert a section of
`the plastic webbing of the outermost segment molded in
`the prior cycle with the new laminations to be molded.
`When the plastic encapsulates the new segments it can
`mechanically lock with or, depending on design, re-melt,
`the webbing from the prior cycle, thus making a
`continuous strip, as shown in FIG. 5
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`Id., 6:36-47.
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`To form a strip of stator segments into a circular/toroidal stator shape, the
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`’952 patent describes cutting a stator segment strip of desired length, which “is
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`then rolled into a magnetically inducible toroidal core.” Id., 7:6-14. Two
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`mechanisms are described to hold the stator segments in the desired shape.
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`First, as illustrated in Figure 7, below at left, “the toroidal core [may be]
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`encapsulated in a body 42” (highlighted in green) by injection molding. Id., 7:23-
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`25; Ex. 1024 [Micklow Decl.] ¶ 39. Second, as illustrated in FIG. 10, below at
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`right, the stator segments may be held in place by “the use of a steel collar 200
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`[highlighted in purple] to fixture [sic] the discrete stator segments 220.” Id., 10:43-
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`47; Ex. 1024 ¶ 39.
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`’952 Patent, Figs. 7 and 10 (highlighted)
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`U.S. Patent No. 7,067,952
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`The ’952 Patent’s Challenged Claims
`B.
`Independent claim 10, reproduced below, recites a segmented stator
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`including some of the features from the specification described above.
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`10. A stator assembly, comprising:
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`a) a plurality of discrete stator segments each at least
`partially encased with a phase change material, wherein
`the phase change material also comprises a bridge
`between adjacent segments to link adjacent segments into
`a continuous strip, wherein the bridge is formed by
`interconnecting two mating sections formed from the
`phase change material; and
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`b) the linked stator segments being arranged and secured
`together to form the stator assembly.
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`Claim 10 departs from the terminology used in the ’952 patent specification in that
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`it refers to “a bridge between adjacent segments,” whereas the specification
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`describes the links between stator segments as “webbing 23.” See Ex. 1001, 6:48-
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`50.
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`Claims 11 and 12 depend from claim 10, and recite that the stator segments
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`are held in a toroidal shape by “an overmolded thermoplastic material” (claim 11)
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`or by “a retaining member” (claim 12).
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`U.S. Patent No. 7,067,952
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`C. The ’952 Patent Prosecution History
`As filed, the application for the ’952 patent included independent claim 1,
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`which recited every feature of issued claim 10, except “wherein the bridge is
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`formed by interconnecting two mating sections formed from the phase change
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`material.” Ex. 1002 at 393 [3/5/2003 Application at 21]. That feature appeared in
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`none of the originally filed claims. See id. at 393-396. The “interconnecting”
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`feature appeared for the first time in new dependent claim 33, which the applicant
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`added to depend from claim 1 in a response to a restriction requirement. Id. at 344
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`[5/3/2005 Response at 6].
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`In the first office action on the merits, the Examiner initially allowed
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`claims 1 and 33, stating that the prior art then of record failed to teach a bridge that
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`linked adjacent stator segments “into a continuous strip,” as claimed. Id. at 321
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`[6/15/2005 Office Action at 4]. In the next office action, however, the Examiner
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`withdrew his allowance of claim 1, and rejected the claim under 35 U.S.C.
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`§ 102(b) as anticipated by U.S. Patent No. 6,081,059 (Ex. 1022, “Hsu”). Id. at 42
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`[10/19/2005 Office Action at 2]. As illustrated below, Hsu disclosed stator core fin
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`arrays (110, blue) designed to fit into an “insulating coil bobbin assembly 14A”
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`(orange). Ex. 1022, 3:9-15, 3:44-4:7. Hsu’s bobbin assembly included “a hinge
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`portion 144 as shown in FIG. 4.” Id., 4:8-15.
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`Hsu, Figs. 3 and 4 (highlighted and annotated excerpts)
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`Citing to figures 3 and 4 (depicted above), the Examiner stated that Hsu
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`taught all of the limitations of claim 1, including “a bridge (hinge) 144 between
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`adjacent segments to link adjacent segments [of the stator] into a continuous strip.”
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`Ex. 1002 at 42 [10/19/2005 Office Action at 2]. As illustrated in Figure 3, Hsu
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`forms a strip of stator segments that is “continuous” in the direction of the line of
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`stator segments. The Examiner deemed dependent claim 33 to contain allowable
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`subject matter because, unlike the bridge of claim 10, Hsu’s bridges were formed
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`integrally as a single piece—i.e., “Hsu’s bridges 144 do not comprise two mating
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`sections interconnected.” Id. at 45 [10/19/2005 Office Action at 5].
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`In reply, the applicant amended claim 33 to be independent, including all
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`features formerly recited in claim 1. Id. at 35 [1/24/2006 Amendment at 2]. The
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`amended claim ultimately issued as patent claim 10.
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`Thus, during prosecution, patentability of claim 10 boiled down to the
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`particular claimed “bridge.” The Examiner failed to identify a bridge “formed by
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`interconnecting two mating sections”—i.e., a bridge that comprised two mating
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`sections interconnected. That feature, however, was well known. As demonstrated
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`in this Petition, at least four years before the ’952 patent was filed, the prior art
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`taught to form “bridges” out of mating sections and explained the benefits of such
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`a design. Numerous other references taught that feature as well.
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`Priority Date
`D.
`The ’952 patent claims priority to May 2, 2001. The Challenged Claims,
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`however, are not entitled to that date. They contain subject matter that was not
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`added until a continuation-in-part application (“CIP”) was filed on March 5, 2003.
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`See Ex. 1024 [Micklow Decl.] ¶¶ 60-61. Accordingly, because “[n]ew subject
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`matter [in a CIP] does not receive the benefit of the earlier priority date,” the
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`Challenged Claims are entitled to priority no earlier than March 5, 2003. Go Med.
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`Indus. Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1270 (Fed. Cir. 2006).
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`Specifically, each of the Challenged Claims requires “a bridge between
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`adjacent [stator] segments to link adjacent segments into a continuous strip,
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`wherein the bridge is formed by interconnecting two mating sections.” Ex. 1001,
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`claim 10. The ’952 patent generally describes the design of a “continuous strip” of
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`stator segments “linked” together via “webbing,” which is understood to be the
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`claimed “bridge.” See, generally, id., 5:61-7:5, Figs. 2-7.
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`The ’952 patent’s parent application, to which priority is claimed, included
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`no such description. Ex. 1024 [Micklow Decl.] ¶ 61. The earlier application omits
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`any mention of a strip of stator segments linked together, whether by “webbing,” a
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`“bridge,” or any other mechanism. Compare id., 5:61-7:5 generally with Ex. 1021
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`at 266-297 [3/2/2001 Application]. Nor does the earlier application include any of
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`the figures that the ’952 patent uses to depict those features. See Ex. 1001 [’952
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`patent], Figs. 2-7. Those features were described and illustrated, for the first time,
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`in the March 5, 2003, continuation-in-part application. See Ex. 1002 at 381, 399-
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`404 [3/5/2003 Application at 9:3-11:2, Figs. 2-7].
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`III. LEVEL OF ORDINARY SKILL
`The level of skill in the art is apparent from the cited art. See In re GPAC
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`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Ex. 1024 ¶ 25. Petitioners submit that a
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`person of ordinary skill in the art (POSITA) for the ’952 patent would have a
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`bachelor’s degree in mechanical or electrical engineering, or an equivalent degree,
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`and at least two years of experience in the design of electric motors. Ex. 1024 ¶ 25.
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`In particular, a POSITA would be familiar with the fundamentals of electric motor
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`design and operation, the concept of encapsulating various components in an
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`electric motor, the types of materials that could be used for encapsulation and their
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`thermal and dimensional properties, and thermofluid concepts. Id. A POSITA
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`would further be aware of various techniques for manufacturing encapsulated
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`motors, including by the use of injection molding. Id.
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`IV. CLAIM CONSTRUCTION
`A claim subject to IPR receives the “broadest reasonable construction in
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`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
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`The broadest reasonable construction should be applied to all claim terms in the
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`’952 patent. For the purposes of this Petition, no explicit construction is needed for
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`any claim term not addressed below.
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`“phase change material”
`A.
`Claim 10 recites a “phase change material.” According to the ’952 patent’s
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`specification, a “phase change material” means “a material that can be used in a
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`liquid phase to envelop[] the stator, but which later changes to a solid phase.”
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`Ex. 1001, 6:6-9. Two types of phase change materials are identified as “most
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`useful in practicing the invention”: “temperature activated and chemically
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`activated.” Id., 6:9-11.
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`“The most preferred temperature activated phase change materials,”
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`according to the patent, “are thermoplastics,” especially thermoplastics that “will
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`become molten at a temperature at which it is injection-moldable, and then will be
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`solid at normal operating temperatures for the motor.” Id., 6:20-24. The ’952
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`patent specifically identifies numerous “suitable thermoplastic resins,” including
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`plastics such as “6,6-polyamide,[1] . . . polybutylene terephthalate, polyethylene
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`terephthalate, . . . aromatic polyesters, . . . polypropylene, polyethylene, . . .
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`polystyrene, styrene copolymer, mixtures and graft copolymers of styrene and
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`rubber,” and several other examples. Id., 9:2-19.
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`The ’952 patent also identifies “epoxy” as a chemically activated phase
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`change material, and states that “[o]ther suitable phase change materials may be
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`classified as thermosetting materials.” Id., 6:24-28.
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`In view of the foregoing disclosures, a POSITA would understand a “phase
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`change material,” under the broadest reasonable interpretation, to mean “a material
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`that can be used in a liquid phase to envelop[] the stator, but which later changes to
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`a solid phase.” Ex. 1024 ¶ 49. A “phase change material” broadly encompasses at
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`least thermosetting materials, epoxies, thermoplastics, polypropylene, polybutylene
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`terephthalate, and polyethylene terephthalate. Id.
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`B.
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`“a bridge between adjacent segments to link adjacent segments
`into a continuous strip”
`Claim 10 recites “a bridge between adjacent segments to link adjacent
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`segments into a continuous strip.” A POSITA would understand this phrase to
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`1 “6,6-polyamide” is a type of nylon. Ex. 1005 [Weaver], 30:66.
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`encompass a configuration in which a bridge links two adjacent stator segments
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`U.S. Patent No. 7,067,952
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`into a strip that is continuous in a lengthwise direction (i.e., peripherally around the
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`stator in the direction of the stator segments), in contrast to a width direction (i.e.,
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`in the direction of the motor axis). Ex. 1024 ¶ 50. The difference between the
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`lengthwise direction (“L”) and width direction (“W”) is illustrated below in
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`annotated Figure 5 of the ’952 patent.
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`’952 patent, Fig. 5 (annotated)
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`This interpretation of the “continuous strip” follows directly from the
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`context of the surrounding claim language, which is “highly instructive” in
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`discerning the meaning of the claim terms. See Phillips v. AWH Corp., 415 F.3d
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`1303, 1314 (Fed. Cir. 2005). In context, the claim recites that “adjacent segments”
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`of the stator are “link[ed] . . . into [the] continuous strip.” A POSITA would
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`understand from that language that the claimed strip may be “continuous” in the
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`same direction as the line of stator segments, i.e., in direction “L.” Ex. 1024 ¶ 51.
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`This interpretation also is confirmed by the description in the specification
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`U.S. Patent No. 7,067,952
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`and drawings of the ’952 patent, which consistently describe the “preferred”
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`embodiment as including a strip that is continuous in the lengthwise direction. See
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`Phillips, 415 F.3d at 1313 (POSITA is “deemed to read the claim term . . . in the
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`context of the entire patent, including the specification”). According to the patent,
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`a “preferred embodiment” is illustrated in Figures 2-7 and 9. Ex. 1001, 5:43-45. As
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`shown in those figures, “[t]he stator arc segments 20 are preferably molded into a
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`continuous strip where the webbing acts as a carrier to link the segments together.”
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`Id., 6:48-50 (emphases added); accord 6:1-5, 6:37, 7:6-8. Moreover, every drawing
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`that depicts the links (i.e., webbing or bridges) between adjacent stator segments
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`shows them forming a strip that is continuous in the lengthwise direction. See id.,
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`Figs. 3-6. In contrast, the webbing 23 is consistently illustrated as being
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`discontinuous in the width direction, with a gap “G” between the webbing
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`elements, as illustrated below. Ex. 1024 ¶¶ 52-53.
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`U.S. Patent No. 7,067,952
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`’952 patent, Fig. 5 (annotated excerpt)
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`In any event, the claimed “continuous strip” cannot be construed in a manner
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`that would exclude a strip that is continuous in the lengthwise direction, because a
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`construction of a patent claim in which the preferred and only embodiment of the
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`invention is outside of the proposed construction “is rarely, if ever, correct and
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`would require highly persuasive evidentiary support” to be sustained. Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
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`Accordingly, under the proper construction for purposes of this IPR, the
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`prior art will satisfy the “continuous strip” limitation of claim 10 so long as the
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`strip is continuous in a lengthwise direction, i.e., in the direction of the line of
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`adjacent stator segments. Ex. 1024 ¶ 55.
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`C.
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`“the bridge is formed by interconnecting two mating sections
`formed from the phase change material”
`Claim 10 recites that “the bridge is formed by interconnecting two mating
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`sections formed from the phase change material.” On its face, this limitation is a
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`product-by-process limitation, requiring that the bridge be formed by the step of
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`U.S. Patent No. 7,067,952
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`interconnecting two mated sections. As a matter of law, “even though product-by-
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`process claims are limited by and defined by the process, determination of
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`patentability is based on the product itself. The patentability of a product does not
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`depend on its method of production. If the product in the product-by-process claim
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`is the same as or obvious from a product of the prior art, the claim is unpatentable
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`even though the prior product was made by a different process.” In re Thorpe, 777
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`F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).
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`Accordingly, for purposes of IPR, the prior art will satisfy the limitation of a
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`“bridge [that] is formed by interconnecting two mating sections formed from the
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`phase change material” so long as the bridge comprises two mating sections,
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`interconnected, formed from phase change material. No particular step of
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`“form[ing] by interconnecting” is required. This construction is consistent with the
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`construction applied by the Examiner during prosecution. Ex. 1002 at 45
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`[10/19/2005 Office Action at 5] (allowing the claim because “Hsu’s bridges 144 do
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`not comprise two mating sections interconnected.”).
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`V. CLAIMS 10-12 OF THE ’952 PATENT ARE UNPATENTABLE
`OVER THE PRIOR ART
`Claims 10-12 are unpatentable under 35 U.S.C. § 103. Claims 10-12 are
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`invalid as obvious over JP7-245895 (Ex. 1006, “Nakahara”) in view of JP11-89128
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`(Ex. 1007, “Ishihara”) and WO 01/45233 (Ex. 1008, “Lieu”). Claims 10-12 also
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`U.S. Patent No. 7,067,952
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`are invalid as obvious over JP1997-308163 (Ex. 1009, “Iikuma”) in view of
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`Nakahara, Lieu, and WO Publication No. 95/12912 (“Stridsberg”). Claims 10-12
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`also are invalid as obvious over U.S. Patent No. 7,471,025 (Ex. 1010, “Sheeran”)
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`in view of Nakahara and Lieu.
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`A. Overview of the Prior Art
`As the ’952 patent admits, the art had sought to address the challenges posed
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`in constructing spindle motor stators since before the patent was filed. Ex. 1001,
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`1:25-4:7. For example, the patent acknowledges:
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`—
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`Spindle motors’ stators had been provided in the form of “discrete
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`stator segments” (recited in claim 10), as taught by U.S. Patent No. 6,049,153 (Ex.
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`1011) and U.S. Patent No. 5,729,072 (Ex. 1012). ’952 patent. Ex. 1001, 3:46-58.
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`—
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`Stator segments had been at least partially encased (claim 10), as
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`taught by Nitta. Ex. 1001, 31:59-63. Moreover, Nitta taught that known stator
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`segment insulating materials included “polyester” and “polyethylene
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`terephthalate,” two thermoplastics. Ex. 1003, 11:5-7; see Ex. 1001, 9:3-19.
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`—
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`Stator segments had been provided in a continuous strip (claim 10), as
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`taught by Nakahara-610 (Ex. 1004). Ex. 1001, 3:64-4:1.
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`—
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`Stator assemblies had been overmolded with thermoplastic (claim 11),
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`as taught by U.S. Patent No. 5,694,268 (Ex. 1013, “Dunfield”), U.S. Patent
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`No. 5,672,927 (Ex. 1014, “Viskochil”)2 , and U.S. Patent No. 5,806,169 (Ex. 1015,
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`U.S. Patent No. 7,067,952
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`“Trago”), which the ’952 patent incorporates by reference. Ex. 1001, 3:12-33.
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`Thus, the only feature recited in claim 10 that the ’952 patent did not admit
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`to be in the prior art was that “the bridge is formed by interconnecting two mating
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`sections formed from the phase change material.”