`
`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
`____________________
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,067,952
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.1-.80 & 42.100-.123
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`COMPLIANCE WITH FORMAL REQUIREMENTS ................................. 1
`
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ....................... 1
`
`1.
`
`2.
`
`3.
`
`4.
`
`Real Party-In-Interest ................................................................. 1
`
`Related Matters .......................................................................... 1
`
`Lead and Back-Up Counsel ....................................................... 2
`
`Service Information.................................................................... 4
`
`Proof of Service on the Patent Owner .................................................. 4
`
`Power of Attorney ................................................................................ 4
`
`Standing ................................................................................................ 4
`
`Fees ....................................................................................................... 5
`
`B.
`
`C.
`
`D.
`
`E.
`
`III. STATEMENT OF PRECISE RELIEF REQUESTED .................................. 5
`
`IV. FULL STATEMENT OF REASONS FOR REQUESTED RELIEF ............ 6
`
`A.
`
`B.
`
`Summary of the ’952 Patent ................................................................. 6
`
`The ’952 Patent Prosecution History ................................................. 11
`
`C. No Claim of the ’952 Patent is Entitled to the Effective Filing
`Date of the ’207 Patent ....................................................................... 12
`
`D.
`
`E.
`
`Person of Ordinary Skill in the Art .................................................... 14
`
`Claim Construction............................................................................. 14
`
`1.
`
`2.
`
`“a phase change material” (claims 1, 10, and 14) .................... 15
`
`“the bridge is formed by interconnecting two mating
`sections formed from the phase change material” (claims
`9 and 10) ................................................................................... 16
`
`F.
`
`Ground 1: Claims 10 and 14 are anticipated under 35 U.S.C.
`§ 102 (b) (pre-AIA) by Calsonic ........................................................ 17
`
`1.
`
`Calsonic is § 102(b) (pre-AIA) Prior Art ................................. 17
`
`-i-
`
`
`
`
`
`

`

`
`
`2.
`
`Detailed Analysis ..................................................................... 19
`
`G. Ground 2: Claims 1, 2, 4, 6, 8, 9, 12, and 13 are rendered
`obvious under 35 U.S.C. § 103(a) (pre-AIA) by Calsonic in
`view of Matsushita ............................................................................. 33
`
`1.
`
`Calsonic is § 102(b) (pre-AIA) Prior Art ................................. 33
`
`2. Matsushita is § 102(b) (pre-AIA) Prior Art ............................. 33
`
`3.
`
`Detailed Analysis ..................................................................... 34
`
`H. Ground 3: Claims 10, 12, and 14 are rendered obvious under 35
`U.S.C. § 103(a) (pre-AIA) by DENSO in view of Calsonic .............. 53
`
`1.
`
`2.
`
`3.
`
`DENSO is § 102(b) (pre-AIA) Prior Art ................................. 53
`
`Calsonic is § 102(b) Prior Art .................................................. 54
`
`Detailed Analysis ..................................................................... 54
`
`I.
`
`Ground 4: Claim 11 is rendered obvious under 35 U.S.C. §
`103(a) (pre-AIA) by Calsonic in view of Dunfield ............................ 70
`
`1.
`
`2.
`
`3.
`
`Calsonic is § 102(b) (pre-AIA) Prior Art ................................. 70
`
`Dunfield is § 102(b) (pre-AIA) Prior Art ................................ 70
`
`Detailed Analysis ..................................................................... 71
`
`J.
`
`Ground 5: Claims 3 and 5 are rendered obvious under 35
`U.S.C. § 103(a) (pre-AIA) by Calsonic and Matsushita in view
`of the Knowledge of a Person of Ordinary Skill in the Art ............... 74
`
`V.
`
`CONCLUSION ............................................................................................. 78
`
`
`
`
`
`-ii-
`
`
`
`

`

`
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`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”)
`
`Declaration of Dr. Thomas R. Brinner
`
`
`
`
`
`
`
`-iii-
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`I.
`
`INTRODUCTION
`
`Petitioners DENSO Corporation, DENSO International America, Inc.,
`
`ASMO Co. Ltd., and Toyota Motor Corporation (“Petitioners” ) respectfully
`
`request inter partes review under 35 U.S.C. § 311 and 37 C.F.R. § 42.100 of
`
`claims 1-6 and 8-14 of U.S. Patent No. 7,067,952 (“the ’952 Patent”), titled “Stator
`
`Assembly Made From A Molded Web Of Core Segments And Motor Using Same”
`
`(Ex. 1001).
`
`II. COMPLIANCE WITH FORMAL REQUIREMENTS
`
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4)
`
`1.
`
`Real Party-In-Interest
`
`
`
`The following is a list of Petitioners (and additional real parties-in-interest):
`
`DENSO CORPORATION, DENSO INTERNATIONAL AMERICA, Inc., ASMO
`
`Co. Ltd., and Toyota Motor Corp., which is the sole owner of Toyota Motor Sales,
`
`U.S.A., Inc., and the ultimate corporate parent for Toyota Motor Engineering &
`
`Manufacturing North America, Inc., Toyota Motor North America, Inc., Toyota
`
`Motor Manufacturing, Indiana, Inc., and Toyota Motor Manufacturing, Kentucky,
`
`Inc.
`
`2.
`
`Related Matters
`
`
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that the ’952 Patent is
`
`the subject of a series of patent infringement lawsuits brought by the alleged
`
`
`
`1
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`assignee, Intellectual Ventures II LLC ("IV II"), each of which may affect, or be
`
`affected by, a decision in this proceeding: In the Matter of CERTAIN
`
`THERMOPLASTIC- ENCAPSULATED ELECTRIC MOTORS, Inv. No. 337-TA-
`
`1052 (U.S. I.T.C.) IV II v. Honda Motor Co., Case No. 1:17-cv-00294 (D. Del.); IV
`
`II v. Aisin Seiki Co., Case No. 1:17-cv-00295 (D. Del.); IV II v. Bayerische
`
`Motoren Werke AG, Case No. 1:17-cv-00296 (D. Del.); IV II v. DENSO Corp.,
`
`Case No. 1:17-cv-00297 (D. Del.); IV II v. Mitsuba Corporation, Case No. 1:17-
`
`cv-00298; IV II v. Nidec Corporation, 1:17-cv-00299 (D. Del.); and IV II v. Toyota
`
`Motor Corporation, Case No. 1:17-cv-00300 (D. Del.). A request for inter partes
`
`review of claims 10-12 of the ’952 Patent was recently filed (Case No. IPR2017-
`
`01497).
`
`3.
`
`Lead and Back-Up Counsel
`
`
`
`Pursuant to 37 C.F.R. § 42.8(b)(3) and 42.10(a), Lead counsel for DENSO
`
`CORPORATION, DENSO INTERNATIONAL AMERICA, Inc., and ASMO Co.
`
`Ltd. is Paul R. Steadman, Reg. No. 43,932, of DLA Piper LLP (US), 444 West
`
`Lake Street, Suite 900, Chicago, Illinois 60606-0089;
`
`paul.steadman@dlapiper.com, 312-368-2135 (phone), 312-251-2850 (fax).
`
`
`
`Backup counsel for DENSO CORPORATION, DENSO
`
`INTERNATIONAL AMERICA, Inc., and ASMO Co. Ltd. is Matthew D.
`
`Satchwell, Reg. No. 58,870, of DLA Piper LLP (US), 444 West Lake Street, Suite
`
`
`
`2
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`900, Chicago, Illinois 60606-0089; matthew.satchwell@dlapiper.com, 312-368-
`
`4000 (phone), 312-236-7516 (fax); Gianni Minutoli, Reg. No. 41,198, of DLA
`
`Piper LLP (US), 11911 Freedom Drive, Suite 300; Reston, VA 20190;
`
`gianni.minutoli@dlapiper.com, 703-773-4045 (phone), 703-773-5200 (fax); and
`
`Harpreet Singh, Reg. No. 71,842, of DLA Piper LLP (US), 2000 University Ave,
`
`East Palo Alto, CA 94303; harpreet.singh@dlapiper.com, 650-833-2191 (phone),
`
`650-687-1191 (fax).
`
`
`
`Lead Counsel for Toyota is Joshua L. Goldberg (Reg. No. 59,369; Tel. (202)
`
`408-6092; joshua.goldberg@finnegan.com), attorney at Finnegan, Henderson,
`
`Farabow, Garrett & Dunner, L.L.P., 901 New York Avenue, N.W., Washington,
`
`DC 20001-4413.
`
`
`
`Backup Counsel for Toyota is James R. Barney (Reg. No. 46,539; Tel. (202)
`
`408-4412; james.barney@finnegan.com), attorney at Finnegan, Henderson,
`
`Farabow, Garrett & Dunner, LLP, 901 New York Avenue, NW, Washington, DC
`
`20001-4413; Thomas W. Winland (Reg. No. 27,605; Tel. (202) 408-4085;
`
`tom.winland@finnegan.com), attorney at Finnegan, Henderson, Farabow, Garrett
`
`& Dunner, LLP, 901 New York Avenue, NW, Washington, DC 20001-4413; and
`
`Tyler M. Akagi (Reg. No. 74,264; Tel. (202) 408-4385;
`
`tyler.akagi@finnegan.com), attorney at Finnegan, Henderson, Farabow, Garrett &
`
`Dunner, LLP, 901 New York Avenue, NW, Washington, DC 20001-4413.
`
`
`
`3
`
`

`

`
`
`Pursuant to 37 C.F.R. § 42.10(b), Powers of Attorney accompany this
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`Petition.
`
`4.
`
`Service Information
`
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above. Service of any documents via
`
`hand-delivery may be made at the postal mailing addresses listed above.
`
`Petitioners consent to service by e-mail at DENSO-IV-DLA-IPR-
`
`Team@dlapiper.com.
`
`B.
`
`Proof of Service on the Patent Owner
`
`As identified in the attached Certificate of Service, a copy of this Petition in
`
`its entirety is being served to the Patent Owner’s attorney of record at the address
`
`listed in the USPTO’s records by overnight courier pursuant to 37 C.F.R. § 42.6.
`
`C.
`
`Power of Attorney
`
`Powers of attorney are being filed with designation of counsel in accordance
`
`with 37 C.F.R. § 41.10(b).
`
`D.
`
`Standing
`
`The ’952 Patent is available for inter partes review, and Petitioners are not
`
`barred or estopped from requesting inter partes review challenging claims 1-6 and
`
`8-14 of the ’952 Patent on the grounds identified in this Petition. Petitioners certify
`
`that (1) no Petitioner is an owner of the ’952 Patent; (2) no Petitioner has filed a
`
`
`
`4
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`civil action challenging the validity of a claim of the ’952 Patent; (3) this Petition
`
`is filed less than one year after the earliest date on which the Petitioners, any of the
`
`Petitioners’ real party-in-interest, and/or any privy of any Petitioners was served
`
`with a complaint alleging infringement of the ’952 Patent; (4) the estoppel
`
`provisions of 35 U.S.C. § 315(e)(1) do not prohibit this inter partes review; and (5)
`
`this Petition is filed after the later of (a) the date that is nine months after the date
`
`of the grant of the ’952 Patent or (b) the date of termination of any post-grant
`
`review of the ’952 Patent.
`
`E.
`
`Fees
`
`The undersigned authorizes the Director to charge the fee specified by 37
`
`C.F.R. § 42.15(a) and any additional fees that might be due in connection with this
`
`Petition to Deposit Account No. 503266.
`
`III. STATEMENT OF PRECISE RELIEF REQUESTED
`
`In accordance with 35 U.S.C. § 311, Petitioners request cancelation of
`
`claims 1-6 and 8-14 of the ’952 patent in view of the following grounds:
`
`A. Ground 1: Claims 10 and 14 are anticipated under 35 U.S.C. § 102(b)
`(pre-AIA) by Japanese Patent Application Publication No. 2000-
`184635 (Ex. 1003, certified English translation Ex. 1004
`(“Calsonic”)).
`
`
`B. Ground 2: Claims 1, 2, 4, 6, 8, 9, 12, and 13 are rendered obvious
`under 35 U.S.C. § 103(a) (pre-AIA) by Calsonic in view of Japanese
`Patent Application Publication No. H11-341717 (Ex. 1008, certified
`English translation Ex. 1009 (“Matsushita”)).
`
`
`
`
`
`5
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`C. Ground 3: Claims 10, 12, and 14 are rendered obvious under 35
`U.S.C. § 103(a) (pre-AIA) by Japanese Patent Application Publication
`S62-138031 (Ex. 1005, certified English translation Ex. 1006
`(“DENSO”)) in view of Calsonic.
`
`
`D. Ground 4: Claim 11 is rendered obvious under 35 U.S.C. § 103(a)
`(pre-AIA) by Calsonic in view of U.S. Patent No. 5,694,268 (Ex.
`1010, “Dunfield”).
`
`
`E.
`
`Ground 5: Claims 3 and 5 are rendered obvious under 35 U.S.C. §
`103(a) (pre-AIA) by Calsonic and Matsushita in view of the
`Knowledge of a Person of Ordinary Skill in the Art.
`
`
`IV. FULL STATEMENT OF REASONS FOR REQUESTED RELIEF
`
`A.
`
`Summary of the ’952 Patent
`
`The ’952 patent is directed to a stator assembly used in a dynamoelectric
`
`machine such as a motor. Ex. 1001 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 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; Ex. 1013 ¶ 33.
`
`The ’952 patent identifies potential drawbacks to conventional motor
`
`designs (Ex. 1001 at 2:6-63) but also describes various existing prior art
`
`improvements. Ex. 1013 ¶ 34. Specifically, the ’952 patent describes the following
`
`prior art improvements:
`
`
`
`6
`
`

`

` Assembling stators using discrete segments: “Some of these problems
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`have been addressed by motor manufacturing methods in which
`
`individual stator arc segments are made … and … [later] assembled to
`
`form a complete stator.” Ex. 1001 at 3:34-37. See also id. at 3:46-58
`
`(summarizing prior art patents that form a complete stator from
`
`segments).
`
` 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.
`
` Providing stator segments in a continuous strip: As taught by U.S. Pat.
`
`No. 6,167,610. Ex. 1001 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
`
`
`
`7
`
`

`

`discloses a spindle motor having an overmolded stator.” Ex. 1001 at
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`3:12-19.
`
`The only feature not admitted as prior art by the ’952 patent was “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; Ex. 1013 ¶ 35.
`
`Figure 5 of the ’952 patent depicts a series of such stator segments linked together
`
`by a phase changing thermoplastic webbing 23:
`
`
`
`Ex. 1001, Fig. 5.
`
`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
`
`
`
`8
`
`

`

`and thus providing more clearance to wind the wire around the poles. Id. at 6:61-
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`65; Ex. 1013 ¶ 36.
`
`
`
`Ex. 1001, Fig. 6.
`
`The webbing 23 is formed of phase change material, which 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 others. Id. at 8:57-9:19; Ex. 1013 ¶ 37. In
`
`one embodiment, the stator segments 20 are held in a toroidal shape by a band:
`
`
`
`9
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`Ex. 1001 at Fig. 10 and 10:40-50; Ex. 1013 ¶ 37.
`
`In another embodiment, the segments 20 are held in a toroidal shape by
`
`being encapsulated in a body 42 of phase change material:
`
`
`
`Ex. 1001 at Fig. 7, 7:23-36; Ex. 1013 ¶ 38.
`
`
`
`
`
`10
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`B.
`
`The ’952 Patent Prosecution History
`
`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 to overcome
`
`various rejections. See, e.g., Ex. 1002 at 09/19/2005 Claims 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; Ex. 1013 ¶ 39.
`
`
`
`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; Ex. 1014 n. 1.
`
`
`
`11
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`C. No Claim of the ’952 Patent is Entitled to the Effective Filing Date
`of the ’207 Patent
`
`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 Ex. 1013 ¶ 40.
`
`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, of 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; Ex. 1013 ¶ 41. Thus, 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. See New Railhead Mfg., L.L.C v. Vermeer
`
`Mfg. Co., 298 F.3d 1290, 1295 (Fed. Cir. 2002). It is well established that “a
`
`
`
`2
`
` This inquiry is relevant to establish that Calsonic is 102(b) prior art rather than
`102(a) prior art.
`
`
`
`12
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`continuing application is entitled to rely on the filing date of an earlier application
`
`only with respect to subject matter common to both applications.” Transco Prods.
`
`v. Performance Contr., Inc., 38 F.3d 551, 557 n.6 (Fed. Cir. 1994). Further, where
`
`independent claims of a continuation-in-part application are not entitled to priority
`
`of an earlier effective filing date of the parent application, claims depending upon
`
`such claims also are not entitled to the earlier effective filing date. Augustine
`
`Medical, Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1303 (Fed. Cir. 1999);
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008).
`
`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. Ex. 1013 ¶ 42. 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;; 3:41-43; 3: 51-52; 3:61-63; 5:43-46; Ex.
`
`1013 ¶ 42.
`
`The concepts of connecting links between the stator segments via a bridge or
`
`flexible carrier were newly introduced in the ’219 application. Accordingly, no
`
`claim of the’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.
`
`Ex. 1013 ¶ 43.
`
`
`
`13
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`D.
`
`Person of Ordinary Skill in the Art
`
`The level of skill in the art is apparent from the cited art. See In re GPAC
`
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioners submit that 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. Ex. 1013 ¶ 44.
`
`E. Claim Construction
`
`A claim subject to inter partes review receives the “broadest reasonable
`
`interpretation” (“BRI”) in light of the specification. 37 C.F.R. § 42.100(b).
`
`Because the BRI standard is different from that used in district court litigation,
`
`PPC Broadband, Inc., v. Corning Optical Comms. RF, LLC, 815 F.3d 747, 756
`
`(Fed. Cir. 2016), the interpretation of the claims presented either implicitly or
`
`explicitly herein should not be viewed as constituting Petitioners’ own
`
`interpretation and/or construction of such claims for the purposes of the underlying
`
`
`
`14
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`litigation. Instead, such constructions in this petition should be viewed only as
`
`constituting an interpretation of the claims under the “broadest reasonable
`
`construction” standard and for the purpose of this petition.
`
`For purposes of this IPR petition only, Petitioners accept that the remaining
`
`claim terms of the ’952 patent assume their ordinary and customary meaning,
`
`consistent with the specification, that they would have to a POSITA at the time of
`
`the alleged invention, and Petitioners do not contend that any remaining claim term
`
`requires specific construction.
`
`1.
`
`“a phase change material” (claims 1, 10, and 14)
`
`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; Ex. 1013 ¶ 47.
`
`“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
`
`solid at normal operating temperatures for the motor.” Ex. 1001 at 6:20-24. The
`
`’952 patent specifically identifies numerous “suitable thermoplastic resins,”
`
`
`
`15
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`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. at 9:2-19; Ex. 1013 ¶ 48.
`
`In view of the foregoing disclosures, a POSITA 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.” Ex. 1013 ¶ 49. A “phase change material” broadly encompasses at
`
`least thermosetting materials, thermoplastics, polypropylene, polybutylene
`
`terephthalate, and polyethylene terephthalate. Id.
`
`2.
`
`“the bridge is formed by interconnecting two mating
`sections formed from the phase change material” (claims 9
`and 10)
`
`The ’952 patent’s written description does not define “interconnecting two
`
`mating sections” or “mating sections.” These terms only appear in the claims.
`
`Moreover, this limitation includes a product-by-process limitation due to the term
`
`“formed by.” As a matter of law, “even though product-by-process claims are
`
`limited by and defined by the process, determination of patentability is based on
`
`the product itself. The patentability of a product does not depend on its method of
`
`production. If the product in the product-by-process claim is the same as or
`
`obvious from a product of the prior art, the claim is unpatentable even though the
`
`
`
`16
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`

`prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`(Fed. Cir. 1985).
`
`Accordingly, for purposes of IPR, 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 comprises two mating sections,
`
`interconnected, formed from phase change material. No particular step of
`
`“form[ing] by interconnecting” is required. Ex. 1013 ¶ 50. This construction is
`
`consistent with the construction applied by the Examiner during prosecution.
`
`Ex. 1002 at 45 [10/19/2005 Office Action at 5] (allowing the claim because “Hsu’s
`
`bridges 144 do not comprise two mating sections interconnected.”).
`
`F. Ground 1: Claims 10 and 14 are anticipated under 35 U.S.C.
`§ 102 (b) (pre-AIA) by Calsonic
`
`1.
`
`Calsonic is § 102(b) (pre-AIA) Prior Art
`
`Calsonic was filed on December 18, 1998 and published on June 30, 2000.
`
`Ex. 1004 at cover; Ex. 1013 ¶ 52. Calsonic is prior art to the ’952 Patent under 35
`
`U.S.C. § 102 (b) (pre-AIA).
`
`Calsonic discloses a motor having a stator which is divided into core blocks.
`
`Ex. 1004 at cover. These divided core blocks are held together by “a divided core
`
`holding member 12 in a form with a plurality of holding portions 13, holding the
`
`divided core blocks 10 in an arranged form, sequentially coupled to each other via
`
`deformable portions 12a that are deformable.” Id.; Ex. 1013 ¶ 53. Figures 4 and 5
`
`
`
`17
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`

`

`of Calsonic depict the stator core blocks 10 being connected via the deformable
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`portions 12a:
`
`Ex. 1004, Fig. 4.
`
`
`
`
`
`Ex. 1004, Fig. 5.
`
`The motor disclosed in Calsonic overcomes the known problem of limited
`
`wire winding space between the stator core blocks, which is the same as a problem
`
`the ’952 patent sought to overcome. Id. at [0004]; cf. Ex. 1001 at 2:19-28. As
`
`
`
`18
`
`

`

`depicted in Calsonic’s Figures 4 and 5, by using the deformable portion 12a the
`
`“operation of attaching the wound coil is less likely to be hindered…” Ex. 1004 at
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`[0013]; Ex. 1013 ¶ 54.
`
`As detailed below, Calsonic discloses or teaches all of the challenged
`
`claims’ limitations. Ex. 1013 ¶ 55.
`
`2.
`
`Detailed Analysis
`
`Claim 10
`
`10.a “A stator assembly, comprising:”
`
`
`
`The preamble is not a claim limitation because the body of the claim defines
`
`a complete and operative system, and nothing in the body of the claim relies on the
`
`preamble for antecedent basis. Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc.,
`
`289 F.3d 801, 809 (Fed.Cir.2002). Nevertheless, Calsonic discloses the preamble.
`
`Ex. 1013 ¶ 56.
`
`
`
`For example, Calsonic discloses that its invention “relates to a motor, and
`
`particularly relates to a structure of a stator of an inner rotor type motor.” Ex.
`
`1004 at [0001] (emphasis added); Ex. 1013 ¶ 57.
`
`10.b “a) a plurality of discrete stator segments each at least partially
`encased with a phase change material”
`
`Calsonic discloses a plurality of discrete stator segments, each at least
`
`
`
`partially encased with a phase change material. For example, Calsonic describes
`
`that its “stator core 6 includes: a plurality of (eight in Fig. 2) divided core blocks
`
`
`
`19
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`10 each formed by stacking and integrating a plurality of divided core plates 11;
`
`and a pair of divided core holding members 12 that integrally holds a divided core
`
`block 10 in an annular arrangement.” Ex. 1004 at [0023]; Ex. 1013 ¶ 58.
`
`Ex. 1004, Fig. 2.
`
`
`
`Further, Calsonic’s divided core blocks correspond to a plurality of discrete
`
`stator segments: “divided core blocks 54 as illustrated in Fig. 9 are formed with a
`
`plurality of divided pieces (divided core plates) 53, formed by dividing (splitting)
`
`the core plate 52 illustrated in Fig. 8 at portions of the yoke portion 52a each being
`
`at approximately the middle of a section between each two adjacent salient poles
`
`52b, stacked and integrated.” Ex. 1004 at [0005]; Ex. 1013 ¶ 59.
`
`
`
`20
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,067,952
`
`
`
`Ex. 1004, Figs. 8 and 9.
`
`
`
`Calsonic also discloses that the divided core blocks are each at least partially
`
`encased with a phase change material. For example, “[a]s illustrated in Fig. 4 to
`
`Fig. 7, the divided core holding member 12 includes a plurality of holding portions
`
`13 for holding the divided core block 10 that are arranged on a single line and are
`
`coupled to each other in series via thin deformable portions 12a. The adjacent
`
`holding portions 13 can pivot with each other with the deformable portion 12a
`
`deformed.” Id. at [0027]. “The holding portions 13 of the divided core holding
`
`member 12 each include … and is integrally formed by molding using an
`
`insulating thermoset resin material. Examples of the resin material that can be
`
`used for the divided core holding member 12 include polybutylene terephthalate
`
`(PBT) and polyethylene terephthalate (PET).” Id. at [0028] (emphasis added).
`
`Polybutylene terephthalate and polyethylene terephthalate are thermoplastic resins
`
`
`
`21
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`

`identified in the ’952 patent as being phase change materia