UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DENSO CORPORATION, DENSO INTERNATIONAL AMERICA, INC.,
`ASMO CO. LTD., AND TOYOTA MOTOR CORPORATION
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`
`____________________
`
`CASE IPR: Unassigned
`____________________
`
`
`
`DECLARATION OF DR. THOMAS R. BRINNER
`
`
`
`
`
`
`Petitioners Exhibit 1013
`Page 1
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`

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`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`A.
`
`B.
`
`Background and Qualifications ............................................................ 1
`
`Information Considered ........................................................................ 2
`
`II.
`
`LEGAL STANDARDS .................................................................................. 3
`
`A.
`
`B.
`
`C.
`
`Legal Standards for Prior Art ............................................................... 3
`
`Legal Standards for Anticipation ......................................................... 4
`
`Legal Standards for Obviousness ......................................................... 4
`
`III. OVERVIEW OF THE ’952 PATENT ........................................................... 8
`
`A.
`
`B.
`
`Summary of the ’952 Patent ................................................................. 8
`
`The ’952 Patent Prosecution History ................................................. 14
`
`C. No Claim of the ’952 Patent is Entitled to the Effective Filing
`Date of the ’207 Patent ....................................................................... 15
`
`D.
`
`E.
`
`F.
`
`Person of Ordinary Skill in the Art .................................................... 17
`
`Claim Construction............................................................................. 18
`
`The ’952 Patent Claims ...................................................................... 20
`
`IV. THE PRIOR ART ......................................................................................... 21
`
`A.
`
`Japanese Patent Application Publication No. 2000-184635 to
`Calsonic Kansei Corp. (“Calsonic”) .................................................. 21
`
`B. Detailed Analysis ............................................................................... 23
`
`1.
`
`2.
`
`3.
`
`4.
`
`Limitation 10.a : “A stator assembly, comprising:” ................ 23
`
`Limitation 10.b: “a) a plurality of discrete stator
`segments each at least partially encased with a phase
`change material” ...................................................................... 23
`
`Limitation 10.c: “wherein the phase change material also
`comprises a bridge between adjacent segments to link
`adjacent segments into a continuous strip” .............................. 26
`
`Limitation 10.d: “wherein the bridge is formed by
`interconnecting two mating sections formed from the
`phase change material; and” .................................................... 28
`
`
`
`
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`-i-
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`Petitioners Exhibit 1013
`Page 2
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`

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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Limitation 10.e: “b) the linked stator segments being
`arranged and secured together to form the stator
`assembly.” ................................................................................ 29
`
`Limitation 14.a: “A combination of stator arc segments
`and a flexible carrier used to link said stator arc segments
`during a winding operation comprising:” ................................ 31
`
`Limitation 14.b: “a) a plurality of stator arc segments;
`and” .......................................................................................... 35
`
`Limitation 14.c: “b) a phase change material constituting
`said flexible carrier adhered to the stator arc segments
`which links said segments in a uniform and
`predetermined position with respect to one another;” ............. 35
`
`Limitation 14.d: “wherein the flexible carrier links said
`segments by connecting two mating sections formed in
`said carrier.” ............................................................................. 37
`
`C.
`
`Japanese Patent Application Publication H11-341717 to
`Matsushita (“Matsushita”) .................................................................. 37
`
`D. Detailed Analysis ............................................................................... 38
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Limitation 1.a: “A stator assembly, comprising:” .................. 38
`
`Limitation 1.b: “a) a plurality of discrete stator segments
`each at least partially encased with a phase change
`material,” .................................................................................. 38
`
`Limitation 1.c: “wherein the phase change material also
`comprises a bridge between adjacent segments to link
`adjacent segments into a continuous strip; and” ...................... 41
`
`Limitation 1.d: “b) the linked stator segments being
`arranged and secured together to form the stator
`assembly,” ................................................................................ 41
`
`Limitation 1.e: “wherein the stator segments are held in
`a toroidal shape by a retaining member which comprises
`a metal band.” .......................................................................... 41
`
`-ii-
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`Petitioners Exhibit 1013
`Page 3
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`

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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`9.
`
`Claim 8: “A motor made from the stator assembly of
`claim 1.” ................................................................................... 52
`
`E.
`
`Japanese Patent Application Publication S62-138031 to
`Nippondenso (“DENSO”) .................................................................. 57
`
`G. U.S. Patent No. 5,694,268 .................................................................. 74
`
`H. Detailed Analysis ............................................................................... 74
`
`I.
`
`The Knowledge of One of Ordinary Skill in the Art ......................... 77
`
`V.
`
`CONCLUSION ............................................................................................. 81
`
`
`
`
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`-iii-
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`Petitioners Exhibit 1013
`Page 4
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`
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`U.S. Patent No. 7,067,952 to Neal
`
`Prosecution File History of U.S. Patent No. 7,067,952
`
`JP P2000-184635 to Calsonic Kansei Corp. (“Calsonic”)
`
`Certified English Translation of JP 2000-184635 to Calsonic
`
`JP S62-138031 to Nippondenso (“DENSO”)
`
`Certified English Translation of JP S62-138031 to DENSO
`
`U.S. Patent No. 7,036,207 to Neal
`
`JP H11-341717 to Matsushita (“Matsushita”)
`
`Certified English Translation of JP H11-341717 to Matsushita
`
`U.S. Patent No. 5,694,268 to Dunfield (“Dunfield”)
`
`Polymer Data Handbook
`
`U.S. Patent No. 6,265,804 (“Nitta”)
`
`
`
`i
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`Petitioners Exhibit 1013
`Page 5
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`

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`
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by counsel for DENSO Corporation, DENSO
`
`International America, Inc., ASMO Co. Ltd., and Toyota Motor Corporation
`
`(“Petitioners”) as an expert witness in the above-captioned proceeding. I have
`
`been asked to provide my opinion about the patentability of claims 1-6 and 8-14 of
`
`U.S. Patent No. 7,067,952 (the “’952 patent”).
`
`2.
`
`I have been retained at my normal hourly rate of $250 per hour to
`
`prepare this declaration and $400 per hour for any testimony required to support
`
`this declaration. No part of my compensation is dependent upon the outcome of
`
`this proceeding or the specifics of my testimony.
`
`A. Background and Qualifications
`
`3.
`
`A copy of my current curriculum vitae (“CV”) is attached as
`
`Appendix A.
`
`4.
`
`I received a Bachelor of Science degree in Electrical Engineering
`
`from Washington University in 1963, a Master’s degree in Electrical Engineering
`
`from Syracuse University in 1969, and a Ph.D. in Electrical Engineering from Ohio
`
`State University in 1973.
`
`5.
`
`After completion of my Bachelor’s degree, I began my engineering
`
`career at IBM where I designed test equipment for integrated electronic circuits. In
`
`1973, I joined General Electric where I designed a high-power SCR DC to DC
`
`1
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`Petitioners Exhibit 1013
`Page 6
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`

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`
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`controller to operate from 600 VDC and provide variable DC voltage to motors.
`
`Later, as a Manager of electrical engineering at Reda Pump, I assisted with design
`
`of high-power variable speed drives, motor starting/protection and instrument
`
`development for pressure and temperature measurement. I also designed a
`
`brushless DC motor, drive, and controller.
`
`6. My areas of expertise are power systems, power electronics, and
`
`electric motor design including sensorless permanent-magnet motor drive design,
`
`construction, and testing.
`
`7.
`
`Additional details regarding my qualifications and background can be
`
`found in my CV.
`
`B.
`
`Information Considered
`
`8. My opinions are based on my years of education, research, and
`
`experience, as well as my study of relevant materials. In forming my opinions, I
`
`have considered the materials identified in this declaration and in the Petition.
`
`9.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by Intellectual Ventures. I may also consider additional
`
`documents and information in forming any necessary opinions, including
`
`documents that may have not yet been provided to me.
`
`10. My analysis of the materials produced in this proceeding is ongoing
`
`and I will continue to review any new material as it is provided. This declaration
`
`2
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`Petitioners Exhibit 1013
`Page 7
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`

`

`
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, or amend my opinions stated herein based on new information and on
`
`my continuing analysis of the materials already provided.
`
`II. LEGAL STANDARDS
`
`A. Legal Standards for Prior Art
`
`11.
`
`I understand that a patent or other publication must first qualify as
`
`prior art before it can be used to invalidate a patent claim.
`
`12.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`asserted patent if the date of issuance of the patent is prior to the invention of the
`
`asserted patent. I further understand that a printed publication, such as an article
`
`published in a magazine or trade publication, qualifies as prior art to an asserted
`
`patent if the date of publication is prior to the invention of the asserted patent.
`
`13.
`
`I understand that a U.S. or foreign patent also qualifies as prior art to
`
`an asserted patent if the date of issuance of the patent is more than one year before
`
`the filing date of the asserted patent. I further understand that a printed
`
`publication, such as an article published in a magazine or trade publication,
`
`constitutes prior art to an asserted patent if the publication occurs more than one
`
`year before the filing date of the asserted patent.
`
`3
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`Petitioners Exhibit 1013
`Page 8
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`
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`14.
`
`I understand that a U.S. patent qualifies as prior art to the asserted
`
`patent if the application for that patent was filed in the United Stated before the
`
`invention of the asserted patent.
`
`B.
`
`15.
`
`Legal Standards for Anticipation
`
`I understand that documents and materials that qualify as prior art can
`
`be used to invalidate a patent claim via anticipation or obviousness.
`
`16.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation of a patent claim requires a
`
`comparison of the properly construed claim language to the prior art on a
`
`limitation-by-limitation basis.
`
`17.
`
`I understand that a prior art reference “anticipates” an asserted claim,
`
`and thus renders the claim invalid, if all elements of the claim are disclosed in that
`
`prior art reference, either explicitly or inherently (i.e., necessarily present).
`
`18.
`
`I understand that anticipation in an inter partes review must be shown
`
`by a preponderance of the evidence.
`
`C. Legal Standards for Obviousness
`
`19.
`
`I understand that even if a patent is not anticipated, it is still invalid if
`
`the differences between the claimed subject matter and the prior art are such that
`
`the subject matter as a whole would have been obvious at the time the invention
`
`was made to a person of ordinary skill in the pertinent art.
`
`4
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`Petitioners Exhibit 1013
`Page 9
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`20.
`
`I understand that a person of ordinary skill in the art provides a
`
`reference point from which the prior art and claimed invention should be viewed.
`
`This reference point prevents one from using his or her own insight or hindsight in
`
`deciding whether a claim is obvious.
`
`21.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors such as (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the asserted claims, (3) the level of
`
`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
`
`such as commercial success, long-felt but unresolved needs, failure of others, etc.
`
`22.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand that the prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
`
`but other times the nexus linking two or more prior art references is simple
`
`common sense. I further understand that obviousness analysis recognizes that
`
`market demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`23.
`
`I understand that if a technique has been used to improve one device,
`
`and a person of ordinary skill in the art would recognize that it would improve
`
`5
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`Petitioners Exhibit 1013
`Page 10
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`
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`similar devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill.
`
`24.
`
`I also understand that practical and common sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a person of
`
`ordinary skill in the art looking to overcome a problem will often be able to fit
`
`together the teachings of multiple publications. I understand that obviousness
`
`analysis therefore takes into account the inferences and creative steps that a person
`
`of ordinary skill in the art would employ under the circumstances.
`
`25.
`
`I understand that a particular combination may be proven obvious
`
`merely by showing that it was obvious to try the combination. For example, when
`
`there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a person of ordinary skill has good
`
`reason to pursue the known options within his or her technical grasp because the
`
`result is likely the product not of innovation but of ordinary skill and common
`
`sense.
`
`26. The combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results. When a
`
`work is available in one field of endeavor, design incentives and other market
`
`forces can prompt variations of it, either in the same field or a different one. If a
`
`6
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`Petitioners Exhibit 1013
`Page 11
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`
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`person of ordinary skill can implement a predictable variation, the patent claim is
`
`likely obvious.
`
`27.
`
`It is further my understanding that a proper obviousness analysis
`
`focuses on what was known or obvious to a person of ordinary skill in the art, not
`
`just the patentee. Accordingly, I understand that any need or problem known in
`
`the field of endeavor at the time of invention and addressed by the patent can
`
`provide a reason for combining the elements in the manner claimed.
`
`28.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference can be supplied by the common
`
`sense of one of skill in the art.
`
`29.
`
`I understand that secondary indicia of non-obviousness may include
`
`(1) a long felt but unmet need in the prior art that was satisfied by the invention of
`
`the patent; (2) commercial success of processes covered by the patent; (3)
`
`unexpected results achieved by the invention; (4) praise of the invention by others
`
`skilled in the art; (5) taking of licenses under the patent by others; (6) deliberate
`
`copying of the invention; (7) failure of others to find a solution to the long felt
`
`need; and (8) skepticism by experts.
`
`30.
`
`I also understand that there must be a relationship between any such
`
`secondary considerations and the invention. I further understand that
`
`7
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`Petitioners Exhibit 1013
`Page 12
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`
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`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determination.
`
`31.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where a person of ordinary skill in the art having the understanding and
`
`knowledge reflected in the prior art and motivated by the general problem facing
`
`the inventor, would have been led to make the combination of elements recited in
`
`the claims. Under this analysis, the prior art references themselves, or any need or
`
`problem known in the field of endeavor at the time of the invention, can provide a
`
`reason for combining the elements of multiple prior art references in the claimed
`
`manner.
`
`32.
`
`I understand that obviousness in an inter partes review must be shown
`
`by a preponderance of the evidence.
`
`III. OVERVIEW OF THE ’952 PATENT
`
`A.
`
`Summary of the ’952 Patent
`
`33. The ’952 patent is titled “Stator Assembly Made from a Molded Web
`
`of Core Segments and Motor Using Same.” Ex. 1001 at Cover. The ’952 patent is
`
`directed to a stator assembly used in a dynamoelectric machine such as a motor.
`
`Id. at 1:16-20. The ’952 patent states that in “conventional” motors, “stators have
`
`been made by laminating together stamped pieces of steel. These stamped pieces
`
`of steel are generally circular in nature, but also have ‘poles’ extending either
`
`8
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`Petitioners Exhibit 1013
`Page 13
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`
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`inwardly or outwardly, depending on whether the rotor is on the inside or
`
`surrounds the stator. The stamped pieces are laminated together and then coated
`
`with insulation. Wire is then wound around the poles to form stator windings.” Id.
`
`at 1:30-37.
`
`34. The ’952 patent identifies potential drawbacks to these conventional
`
`motor designs (Ex. 1001 at 2:6-63), but also describes various existing prior art
`
`improvements made to the conventional motor designs. Specifically, the ’952
`
`patent describes the following prior art improvements:
`
` Assembling stators using discrete segments: “Some of these problems
`
`have been addressed by motor manufacturing methods in which
`
`individual stator arc segments are made . . . and . . . [later] assembled
`
`to form a complete stator.” Id. at 3:34-37. The ’952 patent further
`
`summarizes prior art patents that teach forming a complete stator from
`
`individual segments. See id. at 3:46-58.
`
` Partially encasing stator segments with insulating materials: “U.S.
`
`Patent No. 6,265, 804 to Nitta describes the use of plastic insulation in
`
`combination with segmented stators.” Ex. 1001 at 3:53-54. Nitta
`
`teaches that known stator insulating materials include “polyester” and
`
`“polyethylene terephthalate,” two thermoplastics. Ex. 1012 at 11:5-7.
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`9
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` Providing stator segments in a continuous strip: As taught by U.S. Pat.
`
`No. 6,167,610 cited in the ’952 patent at 3:64-4:4.
`
` Overmolding stator assemblies with thermoplastics: “An example of a
`
`spindle motor is shown in U.S. Pat. No. 5,694,268 (Dunfield et al.)
`
`(incorporated herein by reference). Referring to FIG. 5 of this patent,
`
`a stator of the spindle motor is encapsulated with an overmold 42.
`
`The overmolded stator 40 contains openings through which mounting
`
`pins 44 may be inserted for attaching the stator 200 to a base. U.S.
`
`Pat. No. 5,672,972 (Viskochil) (incorporated herein by reference) also
`
`discloses a spindle motor having an overmolded stator.” Ex. 1001 at
`
`3:12-19.
`
`35. The only feature not admitted as appearing in the prior art by the ’952
`
`patent was the limitation that “the phase change material also comprises a bridge
`
`between adjacent segments to link adjacent segments into a continuous strip.” Ex.
`
`1001 at 4:18-19. Figure 5 of the ’952 patent depicts a series of such stator
`
`segments linked together by a phase changing thermoplastic webbing 23:
`
`10
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`
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`Ex. 1001, Fig. 5.
`
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`36. According to the ’952 patent, the “stator arc segments 20 are
`
`preferably molded into a continuous strip where the webbing acts as a carrier to
`
`link the segments together.” Ex. 1001 at 6:48-50. Figure 6 of the ’952 patent
`
`depicts deflection of the webbing 23 to allow the gap between adjoining poles
`
`21A, 21B, 21C of the segments 20 to be increased and thus providing more
`
`clearance to wind the wire around the poles. Id. at 6:61-65.
`
`11
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`
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`Ex. 1001, Fig. 6.
`
`
`
`
`37. The webbing 23 is formed of phase change material, which according
`
`to the ’952 patent is “a material that can be used in a liquid phase to envelope the
`
`stator, but which later changes to a solid phase.” Ex. 1001 at 6:1-9. Further, the
`
`’952 patent describes the phase change material as being “preferably a thermally
`
`conductive but non-electrically conductive plastic” including resins such as
`
`“…polybutylene terephthalate, polyethylene terephthalate…” among many others.
`
`Id. at 8:57-9:19. In one relevant embodiment, the stator segments 20 are held in a
`
`toroidal shape by a band:
`
`12
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`Petitioners Exhibit 1013
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`
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`Ex. 1001 at Fig. 10 and 10:40-50.
`
`38.
`
`In another relevant embodiment, the stator segments 20 are held in a
`
`
`
`toroidal shape by being encapsulated in a body 42 of phase change material:
`
`Ex. 1001 at Fig. 7 and 7:23-36.
`
`
`
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`13
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`B.
`
`The ’952 Patent Prosecution History
`
`39. The application for the ’952 patent was filed on March 5, 2003 and
`
`assigned serial number 10/383,219 (the “’219 application”). Ex. 1002 at
`
`Bibliographic Data Sheet. The ’219 application is a continuation-in-part of
`
`application number 09/798,511 (the “’511 application”) filed on March 2, 2001,
`
`which issued as U.S. Patent No. 7,036,207 (the “’207 patent”, Ex. 1007). Ex. 1001
`
`at cover. During the prosecution of the ’219 application, the applicant amended
`
`the claims from their original form to overcome various rejections. See, e.g., Ex.
`
`1002 at 09/19/2005 and 01/24/2006 Claims. Ultimately, the Examiner allowed the
`
`claims of the ’219 application stating that the prior art “does not teach or suggest
`
`that the bridge is formed by interconnecting two mating sections formed from the
`
`phase change material” and “[t]he prior art does not teach, inter alia, the claimed
`
`stator arc segments and flexible carrier of phase change material ‘wherein the
`
`flexible carrier links said segments by connecting two mating sections formed in
`
`said carrier.’” Ex. 1002 at 10/19/2005 Non-Final Rejection at 5. These limitations
`
`appear in independent claims 10 and 14, respectively, of the ’952 patent.1 Ex.
`
`1001at 14:7-9 and 14:29-31.
`
`
`1 Independent claim 1 contains a similar limitation that “… the phase change
`material also comprises a bridge between adjacent segments to link adjacent
`segments into a continuous strip...” Ex. 1001 at 13:4-7.
`
`14
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`Petitioners Exhibit 1013
`Page 19
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`
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`C. No Claim of the ’952 Patent is Entitled to the Effective Filing Date
`of the ’207 Patent
`
`40. As discussed above, the ’952 patent is a continuation-in-part of the
`
`’207 patent. But the ’952 patent should not have an effective filing date based on
`
`the priority date of the ’207 patent (i.e., March 2, 2001). Instead, it should be its
`
`actual filing date (i.e., March 5, 2003).2
`
`41. As discussed above, the claims of the ’952 patent were allowed based
`
`on the limitations that “the bridge is formed by interconnecting two mating
`
`sections formed from the phase change material” and “the flexible carrier links
`
`said segments by connecting two mating sections formed in said carrier.” Ex. 1002
`
`at 10/19/2005 Non-Final Rejection at 5. These limitations correspond to
`
`independent claims 10 and 14, respectively, as disclosed in the ’952 patent; and
`
`independent claim 1 also contains a similar limitation that “… the phase change
`
`material also comprises a bridge between adjacent segments to link adjacent
`
`segments into a continuous strip...” Ex. 1001 at 13:4-7. I have been informed by
`
`Petitioner’s counsel that for any claim of the ’952 patent to claim priority to the
`
`’207 patent’s earlier-filed application, that earlier-filed application must provide 35
`
`U.S.C. § 112 written description support for the limitations regarding connecting
`
`stator segments together. I have also been informed by Petitioner’s counsel that it
`
`
`2 I have been informed by Petitioners’ counsel that this inquiry is relevant to
`establish that Calsonic is 102(b) prior art rather than 102(a) prior art.
`
`15
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`is well established that a continuing application is entitled to rely on the filing date
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`of an earlier application only with respect to subject matter common to both
`
`applications. Further, where independent claims of a continuation-in-part
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`application are not entitled to priority based on an earlier effective filing date of the
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`parent application, claims depending upon such claims also are not entitled to the
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`earlier effective filing date.
`
`42. Here, the ’207 patent does not disclose any interconnection between
`
`the stator segments, let alone a bridge interconnecting stator segments. Noticeably,
`
`the ’207 patent does not contain the terms “bridge,” “interconnect,” “link,” or
`
`“connect” in regards to stator segments. The closest disclosure in the ’207 patent
`
`regarding the stator segments is that they are “in contact” with each other. See,
`
`e.g., Ex. 1007 at Abstract (“A monolithic body of phase change material
`
`substantially encapsulates the conductors and holds the stator arc segments in
`
`contact with each other in the toroidal core”); 3:41-43 (“wherein each said stator
`
`arc segment has two end surfaces that are each in contact with an end surface of
`
`another stator arc segment to form a toroidal core”); 3: 51-52 (“wherein each said
`
`end surface of one segment is in contact with an opposing end surface of another
`
`segment”); 3:61-63 (“wherein each said end surface of one segment is in contact
`
`with an opposing end surface of another segment”); 5:43-46 (“To form the toroidal
`
`16
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`core 17, an end surface 16 of each stator arc segment 20 is aligned and brought into
`
`contact with a corresponding end surface 19 of another stator arc segment 20”).
`
`43. The concepts of connecting links between the stator segments via a
`
`bridge or flexible carrier were newly introduced in the ’219 application. For this
`
`reason, no claim of the resulting ’952 patent is entitled to the earlier priority date of
`
`the ’207 patent. Therefore, the effective date of the ’952 patent is its filing date of
`
`March 5, 2003.
`
`D.
`
`Person of Ordinary Skill in the Art
`
`44. A person of ordinary skill in the art (POSITA) for the ’952 patent
`
`would have a bachelor’s degree in mechanical or electrical engineering, or an
`
`equivalent degree, and at least two years of experience in the design of electric
`
`motors. In particular, a POSITA would be familiar with the fundamentals of
`
`electric motor design and operation, the concept of encapsulating various
`
`components in an electric motor, the types of materials that could be used for
`
`encapsulation and their thermal and dimensional properties (e.g., CLTE), and
`
`thermofluid concepts. A POSITA would further be familiar with techniques for
`
`manufacturing encapsulated motors, including injection molding.
`
`17
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`E. Claim Construction
`
`45.
`
`I understand from Petitioner’s counsel that in an inter partes review,
`
`claims are to be given their broadest reasonable interpretation in view of the
`
`specification.
`
`46.
`
`I understand that the standards used in a district court to interpret
`
`patent claims are different than those used by the PTO in this IPR proceeding. I
`
`understand that the main difference is that in this proceeding, the claims are to be
`
`read as broad as is reasonable based on the specification. I understand that this
`
`may cause the claims to cover certain things in this proceeding that a court might
`
`find are not within the scope of the claims in the court proceeding.
`
`"a phase change material"
`
`47.
`
`Independent claims 1, 10 and 14 recite a “phase change material.”
`
`According to the ’952 patent’s specification, a “phase change material” means “a
`
`material that can be used in a liquid phase to envelop[] the stator, but which later
`
`changes to a solid phase.” Ex. 1001, 6:6-9. Two types of phase change materials
`
`are identified as “most useful in practicing the invention”: “temperature activated
`
`and chemically activated.” Id., 6:9-11.
`
`48.
`
`“The most preferred temperature activated phase change materials,”
`
`according to the patent, “are thermoplastics,” especially thermoplastics that “will
`
`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
`
`plastics such as “6,6-polyamide, . . . polybutylene terephthalate, polyethylene
`
`terephthalate, . . . aromatic polyesters, . . . polypropylene, polyethylene, . . .
`
`polystyrene, styrene copolymer, mixtures and graft copolymers of styrene and
`
`rubber,” and several other examples. Id., 9:2-19.
`
`49.
`
`In my opinion, a person of ordinary skill in the art would understand a
`
`“phase change material,” under the broadest reasonable interpretation, to mean “a
`
`material that can be used in a liquid phase to envelop[] the stator, but which later
`
`changes to a solid phase.” A “phase change material” broadly encompasses at
`
`least thermosetting materials, thermoplastics, polypropylene, polybutylene
`
`terephthalate, and polyethylene terephthalate.
`
`“the bridge is formed by interconnecting two mating sections formed from the
`phase change material” (claims 9 and 10)
`
`
`50.
`
`I have been instructed to assume that this limitation is a so-called
`
`“product-by-process limitation.” I have been informed that if the product in a
`
`“product-by-process” claim limitation is the same as or obvious from a product of
`
`the prior art, the claim is unpatentable even though the prior product was made by
`
`a different process. Based on these instructions, for purposes of my analysis, the
`
`prior art will satisfy the limitation of a “bridge [that] is formed by interconnecting
`
`two mating sections formed from the phase change material” so long as the bridge
`
`19
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`
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`comprises two mating sections, interconnected, formed from phase change
`
`material. No particular step of “form[ing] by interconnecting” is required.
`
`F.
`
`The ’952 Patent Claims
`
`51. For reference, claims 1-6 and 8-14 of the ’952 patent are recreated
`
`below.
`
`
`
`1.a
`1.b
`
`1.c
`
`1.d
`
`1.e
`
`2
`
`3
`
`4
`
`5
`
`6
`
`8
`9
`
`10.a
`10.b
`
`Claim Language
`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;
`and
`b) the linked stator segments being arranged and secured together to
`form the stator assembly,
`wherein the stator segments are held in a toroidal shape by a retaining
`member which comprises a metal band.
`The stator assembly of claim 1 wherein the bridges produce such a
`continuous linkage between segments that the bridges may be use