IPR2017-01497
`U.S. Patent No. 7,067,952
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`TOYOTA MOTOR CORP. AND DENSO CORPORATION,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`________________
`
`Case IPR2017-01497
`U.S. Patent No. 7,067,952
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`

`

`I.
`II.
`
`PAGE
`INTRODUCTION ...........................................................................................1
`BACKGROUND OF THE INVENTION.......................................................2
`The ’952 Patent .....................................................................................2
`A.
`Claim Construction................................................................................5
`B.
`1.
`“A Phase Change Material”........................................................6
`2.
`“A Bridge between Adjacent Segments to Link Adjacent
`Segments into a Continuous Strip”.............................................8
`“The Bridge is Formed by Interconnecting Two Mating
`Sections Formed from the Phase Change Material”.................10
`III. GROUNDS 1-3 FAIL TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY OF CLAIMS 10-12 WILL BE PROVED
`UNPATENTABLE........................................................................................11
`Ground 1 Fails for Claims 10-12 ........................................................12
`A.
`1.
`Nakahara Does Not Disclose Using the Same Phase
`Change Material to Partially Encase and Link the Stator
`Segments ...................................................................................12
`Nakahara and Ishihara do not Disclose “Linked Stator
`Segments being Arranged and Secured Together to Form
`the Stator Assembly” ................................................................16
`Ground 1 Fails for Claim 12: Nakahara and Ishihara do not
`Disclose Holding the Stator Segments in a Toroidal Shape ...............20
`C.
`Grounds 2 and 3 Fail for the Same Reasons as Ground 1...................21
`IF ANY GROUNDS ARE INSTITUTED, THE BOARD SHOULD
`DENY REDUNDANT GROUNDS..............................................................22
`Congress Empowered the Board with Discretion to Manage
`A.
`Duplicative Proceedings......................................................................22
`The Board’s Practice of Rejecting Redundant Grounds Supports
`Exercising its Discretion .....................................................................24
`
`3.
`
`2.
`
`IV.
`
`B.
`
`B.
`
`IPR2017-01497
`U.S. Patent No. 7,067,952
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`TABLE OF CONTENTS
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`ii
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`

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`IPR2017-01497
`U.S. Patent No. 7,067,952
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`2.
`
`3.
`
`1.
`
`Redundancy Occurs Where, as Here, Petitioners Assert
`Multiple Alternative Grounds without Differentiating
`Them .........................................................................................25
`Petitioners’ Assertions Against the ’952 Patent Claims
`are Horizontally Redundant ......................................................26
`The Three Grounds Presented in this Petition are
`Horizontally Redundant............................................................27
`Redundancy Exists Between the Instant Petition and the
`1631 Petition .............................................................................28
`Petitioners’ Assertions across Two Petitions Effectively
`Circumvent the Word Limit of 37 C.F.R. § 42.24(a) ...............29
`CONCLUSION..............................................................................................31
`
`4.
`
`5.
`
`V.
`
`iii
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`

`

`TABLE OF AUTHORITIES
`
`IPR2017-01497
`U.S. Patent No. 7,067,952
`
`Page(s)
`
`Cases
`Apple, Inc. v. Memory Integrity, LLC,
`IPR2015-00161 (PTAB May 8, 2015)................................................................15
`
`Jack Henry & Assocs. v. DataTreasury Corp.,
`CBM2014-00056 (PTAB Jul. 10, 2014)...............................................................5
`
`Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003 (PTAB Oct. 25, 2012) ....................................................passim
`
`NXP USA, Inc. v. Inside Secure,
`IPR2016-00683 (PTAB Aug. 30, 2017).........................................................5, 11
`
`Oracle Corp. v. Clouding IP, LLC,
`IPR2013-00075 (PTAB June 13, 2013) .............................................................25
`
`In re: Smith Int’l, Inc.,
`No. 2016-2303 (Fed. Cir. Sept. 26, 2017) ............................................................5
`
`Statutes
`
`35 U.S.C. § 315(d) ...................................................................................................22
`
`35 U.S.C. § 325(d) ...................................................................................................22
`
`Other Authorities
`
`37 C.F.R. § 42.100(b) (2017).....................................................................................5
`
`37 C.F.R. § 42.107 .....................................................................................................1
`
`iv
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`

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`IPR2017-01497
`U.S. Patent No. 7,067,952
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`TABLE OF EXHIBITS
`
`Description
`
`Webster’s II New College Dictionary 377 (1999)
`
`H.R. Rep. No. 112-98 (2011)
`
`Petition for Inter Partes Review, IPR2017-01631, Paper 1 (PTAB
`June 16, 2017)
`
`Exhibit
`
`2001
`
`2002
`
`2003
`
`v
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`

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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
`
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Intellectual Ventures II LLC
`
`submits this Preliminary Response to the above-captioned Petition for Inter Partes
`
`Review of U.S. Patent No. 7,067,952.
`
`I.
`
`INTRODUCTION
`
`The Petition fails to establish the required likelihood that it will prove that
`
`the challenged claims of U.S. Patent No. 7,067,952 (“the ’952 Patent”) are
`
`unpatentable.
`
`Petitioners concede that no prior art cited against claims 10-12 during
`
`prosecution disclosed a “bridge [] formed by interconnecting two mating sections
`
`formed from the phase change material.” (Pet., 8). Petitioners also failed to cite
`
`any prior art that discloses this “bridge” limitation in their petition. Indeed, none of
`
`the references relied upon with respect to Grounds 1-3 in the Petition disclose the
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`bridge limitation.
`
`Ground 1 also fails because the Nakahara and Ishihara references do not
`
`disclose “the linked stator segments being arranged and secured together to form
`
`the stator assembly.” Grounds 2 and 3 suffer at least the same deficiency.
`
`Petitioners’ strategy of asserting multiple redundant grounds across two
`
`petitions also does not remedy the substantive shortcomings of the Petition. Should
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`trial be instituted, this IPR should be limited to one ground.
`
`1
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`II.
`
`BACKGROUND OF THE INVENTION
`
`A.
`
`The ’952 Patent
`
`The ’952 Patent describes and claims the construction and arrangement of a
`
`stator assembly made of a plurality of arc segments. (Ex. 1001, 1:16-21.) Each
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`segment is at least partially encased in a phase change material. (Id., 4:12-22,
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`4:52-55, 6:6-28.) This phase change material also forms a bridge that links the
`
`adjacent segments together to be arranged to form the stator.
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`Stators were historically made by stacking circular pieces of stamped steel
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`and laminating them together. (Id., 1:29-30.) The conventional method of forming
`
`stators using circular steel pieces has a number of drawbacks. This is especially
`
`true for stators with inward facing poles, as the cramped space to work inside of
`
`the laminated stator core poses difficulties in winding the wire windings tightly
`
`and with a high packing density and creates a lower limit on the size of the stator
`
`and thus the motor. The packing density of wire coiled around the poles affects the
`
`amount of power generated by the motor. Increasing packing density increases the
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`power and thus the efficiency of the spindle motor. (Id., 2:19-28.)
`
`The ’952 Patent explains that, at the time of the invention, motor
`
`manufacturers addressed the problem of limited working space and low packing
`
`density by using individual stator arc segments wound with wire to form poles.
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`2
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`(Id., 3:34-37.) Segmented stator constructions made it easier to wind each pole
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`with conductive wire (Id., 4:56-62, 2:19:-28) and also reduced material waste
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`because the outlines of an individual stator pole could be more efficiently and
`
`densely cut out from a sheet of electrical steel than stamped steel circles. (Id. at
`
`5:54-60.)
`
`Conventional segmented stator designs, however, were not without
`
`drawbacks. The individual segments had to be assembled and held in place to
`
`form the stator and the individual wires on each individual pole had to be
`
`connected to other individual wires on other individual poles of the same phase,
`
`leading to manufacturing complexity and inefficiency. (Id., 3:38-45.)
`
`The ’952 Patent discloses a method (and structures produced thereby) of
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`encasing the stator segments in a phase change material to assist with the assembly
`
`of the segments into a completed stator, by claiming the at least partial encasement
`
`of each stator segment with a phase change material, “wherein the phase change
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`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.” (Id., 14:4-9.) With
`
`the unique linked-but-discrete segment assemblies, wire can be wound around the
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`poles with a high packing density, yet at the same time the segments can be
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`3
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`maintained in their proper order so that one continuous piece of wire can be used to
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`wind all poles in the same series or phase, making it unnecessary to later connect
`
`wires from individual windings to one another. (Id., 4:56-62.) The ’952 Patent
`
`also uses arc segments to ensure that, when the stator is assembled from the
`
`segments, the wiring is aligned with the proper phase relationships and it results in
`
`a toroidal shape. (Id., 14:12-17.)
`
`Independent claim 10 at issue here recites an embodiment of the ’952 Patent
`
`invention:
`
`10. A stator assembly, comprising:
`
`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
`
`b) the linked stator segments being arranged and secured
`together to form the stator assembly.
`
`(Ex. 1001, 14:1-11.) Claims 11 and 12 add limitations regarding how the stator
`
`segments are held in a toroidal shape. (Id., 14:12-15.)
`
`4
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`B.
`Claim Construction
`Claims of an unexpired patent in an inter partes review are given their
`
`broadest reasonable interpretation consistent with the specification in which they
`
`appear. 37 C.F.R. § 42.100(b) (2017). The broadest reasonable interpretation is
`
`the one “that corresponds with what and how the inventor describes his invention
`
`in the specification, i.e., an interpretation that is ‘consistent with the
`
`specification.’” In re: Smith Int’l, Inc., No. 2016-2303, at *13 (Fed. Cir. Sept. 26,
`
`2017) (citation omitted). Under this standard, terms are given their ordinary
`
`meaning as would have been understood by a skilled artisan at the time of the
`
`invention in the context of the entire intrinsic record. Jack Henry & Assocs. v.
`
`DataTreasury Corp., CBM2014-00056, at *8-9 (PTAB Jul. 10, 2014) (Paper 17).
`
`A term may be construed differently from its ordinary meaning when the patentee,
`
`as lexicographer, provides a special definition for the term or otherwise disclaims
`
`the full scope of the term in the specification and/or during prosecution. NXP
`
`USA, Inc. v. Inside Secure, IPR2016-00683, at *13 (PTAB Aug. 30, 2017) (Paper
`
`27).
`
`The Petition proffers a construction for “a phase change material,” “a bridge
`
`between adjacent segments to link adjacent segments into a continuous strip” and
`
`“the bridge is formed by interconnecting two mating sections formed from the
`
`5
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`U.S. Patent No. 7,067,952
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`phase change material” as recited in claim 10 of the ’952 Patent, and contends that
`
`no other terms in claims 10-12 need construing. (Pet., 11.) Petitioners’ three
`
`constructions contradict the plain language of the claims and/or unnecessarily
`
`restrict the scope of each term. Otherwise, Patent Owner agrees that the broadest
`
`reasonable interpretation of all other terms in claims 10-12 is that which accords
`
`with each term’s plain and ordinary meaning.1
`
`1.
`
`“A Phase Change Material”
`
`Claim 10 recites a stator assembly having “a plurality of discrete stator
`
`segments each at least partially encased with a phase change material.” (Ex. 1001,
`
`14:1-3.) The broadest reasonable interpretation of the “phase change material”
`
`term is simply its plain and ordinary meaning, e.g., a material that is capable of
`
`changing phases. Neither the ’952 Patent claims nor the specification explicitly
`
`restrict the scope of this term to a particular material or configuration using a
`
`special definition or disclaimer language.
`
`The Petition nonetheless contends that the broadest reasonable interpretation
`
`of “a phase change material” must be “a material that can be used in a liquid phase
`
`to envelop[] the stator, but which later changes to a solid phase.” (Pet., 11.)
`
`1 Patent Owner reserves the right to present additional proposed claim
`
`constructions and supporting evidence to the Board in its Response as necessary.
`
`6
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`U.S. Patent No. 7,067,952
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`Petitioners’ construction is based on mistaking the following excerpt in the
`
`specification for inventor lexicography:
`
`“The encapsulating material 22 is preferably formed of a
`phase change material, meaning a material that can be
`used in a liquid phase to envelope [sic] the stator, but
`which later changes to a solid phase.”
`
`(Ex. 1001, 6:6-9) (emphasis added). This sentence in the ’952 Patent relates to a
`
`preferred embodiment and merely indicates that a phase change material can be
`
`used in a liquid phase to envelop a stator, but doesn’t say that the phase change
`
`material must envelop the stator. In other words, this disclosure describes one
`
`example of how the “phase change material” of the ’952 Patent is used and does
`
`not limit, or otherwise define, the term.
`
`This sentence also refers to using the phase change material to “envelop[]
`
`the stator.” The ’952 Patent, however, discloses and claims a phase change
`
`material that partially encases stator segments – as opposed to enveloping2 the
`
`complete stator. (Id., 5:61-6:4, 7:6-11, 13:4-5, 14:2-3.) In other words, the
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`disclosure relied upon by Petitioners describes one example configuration of the
`
`structure of the phase change material within the stator assembly but, again, does
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`2 The ordinary meaning of “envelop” is “[t]o enclose or encase entirely with or as
`
`if with a covering.” (Ex. 2001.)
`
`7
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`not limit or meaningfully define the term. Construction of “a phase change
`
`material” to require “envelopment” of the complete stator as proposed in the
`
`Petition contradicts the very claim language in which the term appears.
`
`For at least these reasons, Petitioners’ construction of “phase change
`
`material” based on an example description in the specification – not inventor
`
`lexicography – is not the proper broadest reasonable interpretation of this term. A
`
`“phase change material” should instead be accorded its plain and ordinary
`
`meaning.
`
`2.
`
`“A Bridge between Adjacent Segments to Link
`Adjacent Segments into a Continuous Strip”
`
`The broadest reasonable interpretation of this claim term is its plain and
`
`ordinary meaning. A “bridge between adjacent segments to link adjacent segments
`
`into a continuous strip” means just that—a bridge that is positioned between two
`
`adjacent discrete stator segments and that links those segments together into a
`
`continuous strip. Neither the claims nor the ’952 Patent specification impose any
`
`explicit limitations on this language and, thus, no explicit construction is required.
`
`The Petition contends that a skilled artisan would have understood this term
`
`to mean:
`
`a configuration in which a bridge links two adjacent
`stator segments into a strip that is continuous in a
`
`8
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`lengthwise direction (i.e., peripherally around the stator
`in the direction of the stator segments), in contrast to a
`width direction (i.e., in the direction of the motor axis).
`
`(Pet., 12-13.) This interpretation injects needless complexity and ambiguity into
`
`otherwise straightforward claim language, and is incorrect.
`
`First, the phrases “lengthwise direction” and “width direction” used in the
`
`Petition are vague and confusing. Petitioners initially assert that “lengthwise
`
`direction” means “peripherally around the stator in the direction of the stator
`
`segments” (Pet. 13), but then later state that it means “in the direction of the line of
`
`adjacent stator segments.” (Pet. 15.) The term “lengthwise direction” is also not
`
`used in the ’952 Patent. It is thus unclear what the phrase means, particularly in
`
`the context of “a bridge between adjacent segments to link adjacent segments into
`
`a continuous strip.” The “width direction” term in Petitioners’ construction is also
`
`ambiguous. For example, the Petition depicts a version of Figure 5 of the ’952
`
`Patent confusingly annotated with a “w” and an arrow extending in the height
`
`direction of a stator segment.
`
`Petitioners’ concern that “continuous strip” cannot be construed to exclude a
`
`strip that is continuous in the “lengthwise direction” is also misplaced, as the plain
`
`and ordinary meaning of the term imposes no such restriction.
`
`9
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`U.S. Patent No. 7,067,952
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`Lastly, Petitioners’ proffered construction includes a negative limitation,
`
`namely that the “bridge between adjacent stator segments” cannot include a strip
`
`that is continuous in the so-called “width direction.” Notwithstanding that
`
`negative limitations are rarely appropriate in a claim construction, there is no
`
`support in the specification for this limitation, nor does the Petition identify any.
`
`3.
`
`“The Bridge is Formed by Interconnecting Two
`Mating Sections Formed from the Phase Change
`Material”
`
`The Petition construes “the bridge is formed by interconnecting two mating
`
`sections formed from the phase change material” recited in claims 9 and 10 of the
`
`’952 Patent as a product-by-process limitation and interprets “bridge” as
`
`“compris[ing] two mating sections, interconnected, formed form phase change
`
`material.” (Pet., 16-17.) Patent Owner does not dispute the product-by-process
`
`nature of this term, but notes that Petitioners’ construction of “bridge” is
`
`inconsistent with the claim language.
`
`Claim 10 refers to “the phase change material,” not just “phase change
`
`material”:
`
`A stator assembly comprising:
`a)
`a plurality of discrete stator segments each at least
`partially encased with a phase change material,
`wherein the phase change material also comprises
`
`10
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`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 ….
`(Ex. 1001, 14:1-9) (emphasis added). In other words, the phase change material
`
`forming the two mating sections is the same phase change material that partially
`
`encases the plurality of discrete stator segments. This is what the claim language
`
`explicitly states. Petitioners’ construction omitting the word “the” from before the
`
`term “phase change material” is therefore incorrect.
`
`It is also not clear what the terms “interconnected” and “formed from [the]
`
`phase change material” in Petitioners’ construction refer back to, i.e., the bridge
`
`itself or the two mating sections.
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`Patent Owner thus proposes construing “bridge” to mean two mating
`
`sections that are interconnected and formed from the phase change material.
`
`III. GROUNDS 1-3 FAIL TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY OF CLAIMS 10-12 WILL BE
`PROVED UNPATENTABLE
`
`IPR petitioners have “the burden from the onset to show with particularity
`
`why the patent it challenges is unpatentable.” NXP, at 13 (Paper 27) (quoting
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)). “This
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`burden of persuasion never shifts to the patent owner.” Id. (citing Dynamic
`
`11
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)).
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`The Petition itself must demonstrate the required reasonable likelihood that
`
`Petitioner will prevail in showing that at least one claim of the challenged patent is
`
`not patentable. See 35 U.S.C. § 314(a) (2015). Petitioner bears the burden of
`
`meeting this threshold by a preponderance of the evidence, with any vagueness and
`
`ambiguity in its arguments resolved against Petitioner. Liberty Mut., at 10 (Paper
`
`8).
`
`The Petition fails to establish the required reasonable likelihood of showing
`
`that any of the prior art combinations at least disclose a stator assembly having a
`
`phase change material that (i) partially encases a plurality of discrete stator
`
`segments, (ii) forms a bridge that links adjacent discrete stator segments into a
`
`continuous strip and also (iii) forms the two mating sections that comprise the
`
`bridge. Petitioners’ primary reference, Nakahara, also fails to teach a stator
`
`assembly formed solely by discrete stator segments.
`
`A.
`
`Ground 1 Fails for Claims 10-12
`
`1.
`
`Nakahara Does Not Disclose Using the Same Phase
`Change Material to Partially Encase and Link the
`Stator Segments
`
`Nakahara fails to disclose that the phase change material that at least
`
`partially encases the plurality of discrete stator segments “also comprises a bridge
`
`12
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`between adjacent segments to link adjacent segments into a continuous strip” and
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`that the “bridge is formed by interconnecting two mating sections [also] formed
`
`from the phase change material.” (Ex. 1001, 14:2-9) (emphasis added). For this
`
`claimed feature, the Petition relies only on conclusory expert testimony, rather than
`
`specify where this element of claim 10 is found in Nakahara. (Pet., 27; Ex. 1024 ¶
`
`71.)
`
`The Petition asserts that coil bobbins 5 of Nakahara constitute the “phase
`
`change material” that “at least partially encase[s]” the “plurality of discrete stator
`
`segments” recited in claim 10. (Pet., 25-26.) Petitioners equate a different
`
`component – coil bobbin coupling body 15 of Nakahara – with the claimed
`
`“bridge between adjacent segments to link adjacent segments into a continuous
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`strip.” (Pet., 26-28.) Nakahara does not disclose, however, that coil bobbin
`
`coupling body 15 is comprised of the same phase change material as coil bobbins
`
`5. The Petition admits as much by resorting to the testimony of Dr. Gerald
`
`Micklow, who simply concludes that “thin parts 15a” of Nakahara are “formed
`
`from the same thermoplastic materials as the bobbins, as illustrated in Figures 3(b)
`
`and 6.” (Ex. 1024, ¶ 71.)
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`13
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`But Figures 3(b) and 6 are simple black and white figures that do not
`
`disclose any information about material type, let alone that the same phase change
`
`material is used for both coil bobbins 5 and coil bobbin coupling body 15:
`
`Figure 3(b)
`
`Figure 6
`
`(Ex. 1006, Figs. 3(b), 6.) Figure 3(b) and its accompanying description in
`
`Nakahara are silent as to whether coil bobbins 5 and coil bobbin coupling body 15
`
`are the same material. And Figure 6 does not even show coil bobbin 5.
`
`In fact, while Nakahara discloses that “coil bobbin coupling body 15” is
`
`“formed from resin,” the Petition plainly admits that Nakahara discloses that “coil
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`14
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`bobbins 5 … need not be made of resin.” (Pet., 25) (emphasis added). While
`
`Nakahara also describes coil bobbins 5 as being part of the coil bobbin coupling
`
`body 15, they are not necessarily made of resin and thus coil bobbins 5 and coil
`
`bobbin coupling body 15 need not be the same material.
`
`The uniform orange coloring of these figures in the Petition are merely
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`conclusory annotations created by Petitioners, their legal counsel and/or
`
`Petitioners’ expert. Skilled artisans at the time of the invention would have taken
`
`into account different considerations when selecting a material for encasing the
`
`stator segments in Nakahara (e.g., thermal conductivity and thermal expansion
`
`properties) and selecting a material that links the stator segments (flexibility and
`
`durability). Simply annotating parts 5, 15, and 15a with the same color by using
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`the challenged claims as a blueprint does not render the material of these parts the
`
`same.
`
`Accordingly, because the Petition does not demonstrate that Nakahara
`
`teaches that coil bobbins 5 and coil bobbin coupling body 15 are comprised of the
`
`same material, and the expert testimony of Dr. Micklow simply mirrors the
`
`Petition with no further evidence, Petitioners have not met their burden of showing
`
`that “the phase change material also comprises the bridge [and the] two mating
`
`sections.” (Ex. 1001, 14:1-11); see also Apple, Inc. v. Memory Integrity, LLC,
`
`15
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`IPR2015-00161, at 13 (PTAB May 8, 2015) (Paper 18) (rejecting expert testimony
`
`that “merely restates … statements and conclusions from the Petition, without any
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`supporting citations or discussion of the knowledge and understanding of a person
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`of ordinary skill in the art”). For at least this reason, Ground 1 should be rejected.
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`2.
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`Nakahara and Ishihara do not Disclose “Linked Stator
`Segments being Arranged and Secured Together to Form
`the Stator Assembly”
`
`Claim 10 indicates that the “stator assembly” is formed upon arranging and
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`securing the discrete stator segments together: “the linked stator segments being
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`arranged and secured together to form the stator assembly.” (Ex. 1001, 14:10-11.)
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`That is, the “stator assembly” results from arranging and securing together the
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`recited “plurality of discrete stator segments.” (Id., 4:34-37, 14:1-11.) This is
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`shown, for example, in Figures 5, 7 and 8a:
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`FIG. 5
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`Figure 5 depicts a series of “at least partially encased” stator segments linked
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`together by thermoplastic webbing. (Id., 5:17-19.) Figure 8a discloses a toroidal
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`core 17 made from the linked stator segments positioned in an injection mold
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`assembly prior to molding. (Id., 5:25-28.) Figure 7 shows the injection molded
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`stator assembly. (Id., 5:22-24.)
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`U.S. Patent No. 7,067,952
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`The stator assemblies in Nakahara and Ishihara are not formed by the stator
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`segments. The stator configurations described in these references require an
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`additional component – a yoke element 3 in Nakahara and a stator iron core 29 in
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`Ishihara – to form the stator assembly:
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`Nakahara Figure 1
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`Ishihara Figure 2
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`ring-shaped outer yoke 3
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`magnetic pole tooth 2
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`stator iron core 29
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`magnetic pole tooth 26
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`Nakahara does not teach forming the stator assembly by arranging and
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`securing together the magnetic pole teeth 2. It instead repeatedly discloses that
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`stator core l (shown above) is formed by ring-shaped outer yoke 3 and a plurality
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`of magnetic pole teeth 2 fastened to the inner-diameter side of yoke 3. (Ex. 1006, ¶
`
`38 (“The outer edges of the magnetic pole teeth 2 arc mated and fixed to the outer
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`yoke 3 so as to be housed in the hexagonal hole 3a of the outer yoke 3. They are
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`held in place by the magnetic pole teeth 2 to thereby complete the stator 8.”), ¶ 41
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`(“Once each coil 4 has been wound, the coil bobbin connector 15 is reversed,
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`rounded to the normal state, and each of the magnetic pole teeth 2 is mated and
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`fixed to the outer yoke 3 to complete the structure of the stator 8.”), ¶50 (“[E]ach
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`of the magnetic pole teeth 2 and the coil bobbin connector 15 are housed in the
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`hexagonal hole 3a of the outer yoke 3, after which each of the magnetic pole teeth
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`2 is mated to the mating hexagonal hole 3a of the outer yoke J. By so doing, the
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`stator 8 shown in Figure l or Figure 10 is completed.”).) The Petition readily
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`admits that magnetic pole teeth 2 alone do not form the stator in Nakahara. (Pet.,
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`24 (“The foregoing structure in Nakahara [including yoke 3] is a ‘stator assembly,’
`
`as claimed.”).)
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`Ishihara describes a similar stator assembly formed by an iron core and pole
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`teeth (shown above). (Ex. 1007, 7 (“Each coil bobbin 23 is wound by wire 22 after
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`which the coil bobbin unit 20 is formed into annular shape, mated to annular
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`shaped stator core 29 and fixed in place to complete assembly of the stator 24.”))
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`(emphasis added).
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`U.S. Patent No. 7,067,952
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`Accordingly, Nakahara and Ishihara do not disclose “linked stator segments
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`being arranged and secured together to form the stator assembly” as recited in
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`claim 10. For at least this reason, Ground 1 fails.
`
`B.
`
`Ground 1 Fails for Claim 12: Nakahara and Ishihara do not
`Disclose Holding the Stator Segments in a Toroidal Shape
`
`Claim 12 requires that “the stator segments are held in a toroidal shape by a
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`retaining member.” Petitioners allege that Nakahara discloses this claimed feature.
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`(Pet., 40-41.) The Petition relies on Figure 1 of Nakahara, expert testimony from
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`Dr. Micklow comparing this Figure 1 to Figure 10 of the ’952 Patent, and the
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`statement in Nakahara that “outer edges of the magnetic pole teeth 2 are mated and
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`fixed to the outer yoke 3 so as to be housed in the hexagonal hole 3a of the outer
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`yoke 3 ….” (Ex. 1024, ¶ 98; Ex. 1006, ¶ 38.)
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`Figure 1 of Nakahara and Figure 10 of the ’952 Patent as annotated in the
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`Petition are reproduced below.
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`(Pet., 41.) A side-by-side comparison of these figures clearly illustrates that
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`Nakahara’s hexagonal hole 3a housed in outer yoke 3 holds stator segments in a
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`hexagonal shape, not “a toroidal shape” as claim 12 requires. Throughout
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`Nakahara, outer yoke 3 is disclosed only as having a hexagonal hole 3a and only a
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`hexagonal shaped stator assembly is described.
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`For at least this additional reason, the Board should deny Ground 1 as to
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`claim 12.
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`C.
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`Grounds 2 and 3 Fail for the Same Reasons as Ground 1
`
`The Board should deny instituting IPR on Grounds 2 and 3 because these
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`grounds rely on Iikuma and Sheeran, respectively, which Petitioners admit do not
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`disclose the claimed “phase change material.” (Pet., 47-48, 65-66.) The Petition
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`instead relies on Nakahara for this claimed feature; however, as discussed above in
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`section III.A, the Petition fails to demonstrate that Nakahara teaches that the same
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`“phase change material” (i) partially encases the plurality of discrete stator
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`segments, (ii) forms a bridge that links adjacent discrete stator segments into a
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`continuous strip and (iii) forms the two mating sections that comprise the bridge.
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`Grounds 2 and 3 should therefore be denied.
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`Case IPR2017-01497
`U.S. Patent No. 7,067,952
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`IV.
`
`IF ANY GROUNDS ARE INSTITUTED, THE BOARD
`SHOULD DENY REDUNDANT GROUNDS
`
`The Board’s authority to institute an IPR is discretionary. If trial is
`
`instituted, the Board may limit the issues considered by denying duplicative or
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`redundant grounds in the interest of a “just, speedy, and inexpensive resolution.”
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`Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003, at 1
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`(PTAB Oct. 25, 2012) (Paper 7).
`
`Petitioners challenge claim 10 of the ’952 Patent on five grounds across two
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`petitions and claims 11 and 12 on four grounds across two petitions with
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`overlapping and similar references. Congress did not contemplate such parallel
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`attacks on a patent. The Board has appropriately disfavored such redundant attacks
`
`as a poor use of resources. Under these circumstances, the Board should prevent
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`duplicative proceedings by rejecting one or both petitions or, at a minimum,
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`narrowing the instituted grounds in one or both petitions.
`
`A.
`
`Congress Empowered the Board with Discretion to Manage
`Duplicative Proceedings
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`The Board has broad discretion to manage duplicative proceedings within
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`the USPTO under 35 U.S.C. § 315(d). The patent statute also clarifies that the
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`Board may reject an IPR petition because the same, or substantially the same, prior
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`art or arguments were already presented to the