UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`MITSUBA CORPORATION AND AMERICAN MITSUBA CORPORATION
`
`Petitioners
`v.
`
`INTELLECTUAL VENTURES II LLC
`
`Patent Owner
`______________
`
`Case No.: IPR2017-_____
`Patent No. 7,067,952
`Title: Stator Assembly Made from a Molded
`Web of Core Segments and Motor Using Same
`
`DECLARATION OF DR. ITZHAK GREEN UNDER 37 C.F.R. § 1.68 IN
`SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,067,952
`
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
`
`Table of Contents
`Introduction ...................................................................................................... 1
`I.
`Background and Qualifications ....................................................................... 3
`II.
`III. Understanding of Patent Law .......................................................................... 6
`IV. Background ...................................................................................................... 9
`Background of the Field Relevant to the ’952 Patent ........................... 9
`A.
`Summary of the ’952 Patent ................................................................ 10
`B.
`Summary of the Prosecution History .................................................. 16
`C.
`Priority Date ........................................................................................ 22
`D.
`Level of Ordinary Skill in the Pertinent Art .................................................. 24
`V.
`VI. Broadest Reasonable Interpretation ............................................................... 26
`VII. Detailed Invalidity Analysis .......................................................................... 26
`Overview Of The Prior Art ................................................................. 26
`A.
`Claims 10 and 12 are Anticipated by Suzuki. ..................................... 29
`B.
`Claim 10: Anticipated by Suzuki .............................................. 29
`1.
`Claim 12: Anticipated By Suzuki ............................................. 45
`2.
`Claim 11 is Rendered Obvious by Suzuki in Combination with
`Nakatsuka ............................................................................................ 48
`1.
`Claim 11: Obvious over Suzuki in view of Nakatsuka ............. 48
`Claims 10 and 12 are Anticipated by Ishihara. ................................... 53
`Claim 10: Anticipated by Ishihara ............................................ 53
`1.
`Claim 12: Anticipated by Ishihara ............................................ 64
`2.
`Claim 11 is Rendered Obvious by Ishihara in Combination with
`Nakatsuka ............................................................................................ 67
`
`D.
`
`C.
`
`E.
`
`i
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
`
`
`2.
`
`F.
`
`G.
`
`1.
`Claim 11: Obvious over Ishihara in view of Nakatsuka. .......... 67
`Claims 10 and 12 are Rendered Obvious by Iikuma and/or
`Iikuma in view of Scherzinger. ........................................................... 71
`1.
`Claim 10: Obvious over Iikuma and/or Iikuma in view of
`Scherzinger. ............................................................................... 72
`Claim 12: Obvious over Iikuma and/or Iikuma in view of
`Scherzinger. ............................................................................... 84
`Claim 11 is Rendered Obvious by Iikuma in Combination with
`Nakatsuka and/or Iikuma in Combination with Nakatsuka and
`Scherzinger. ......................................................................................... 86
`1.
`Claim 11: Obvious over Iikuma in view of Nakatsuka
`and/or Iikuma in view of Nakatsuka and Scherzinger. ............. 87
`VIII. Secondary Considerations of Non-Obviousness ........................................... 89
`IX. Conclusion ..................................................................................................... 96
`
`
`
`ii
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
`
`I, Dr. Itzhak Green, do hereby declare as follows:
`
`I.
`1.
`
`INTRODUCTION
`I have been retained as an expert witness on behalf of Mitsuba Corporation
`
`and American Mitsuba Corporation (collectively, “Mitsuba”) with respect to
`
`the above-captioned Petition for Inter Partes Review (“IPR”) of U.S. Patent
`
`No. 7,067,952, the (“’952 Patent”). I am being compensated for my time in
`
`connection with this IPR at my standard consulting rate of $400 per hour.
`
`My compensation is not dependent on the substance of my opinions, my
`
`testimony, or the outcome of this IPR.
`
`2.
`
`I have been asked to provide my opinions regarding whether Claims 10-12
`
`(the “Challenged Claims”) of the ’952 Patent would have been anticipated or
`
`obvious to a person having ordinary skill in the art prior to the priority date
`
`of the ’952 Patent.
`
`3.
`
`In preparing this Declaration, I have reviewed the ’952 Patent, the file
`
`history of the ’952 Patent, numerous prior art references, and other technical
`
`references from the time of the alleged invention.
`
`4.
`
`I understand that claims in an IPR are given their broadest reasonable
`
`interpretation in view of the patent specification and the understandings of
`
`one having ordinary skill in the relevant art at the time of the alleged
`
`invention.
`
`1
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
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`5.
`
`The ’952 Patent states that it issued on June 27, 2006 from U.S. Patent Appl.
`
`No. 10/383,219 the (“’219 Application”), filed on March 5, 2003. Ex. 1009
`
`at 1. The ’952 Patent states that it claims priority to U.S. Appl. No.
`
`09/798,511, the (“’511 Application”) filed on March 2, 2001. (Ex. 1008 at
`
`1.) As described in ¶¶ 41-43, it is my opinion that the Challenged Claims of
`
`the ’952 Patent are not entitled to this March 2, 2001 priority date because
`
`the specification filed on March 2, 2001 does not provide support for the
`
`Challenged Claims. I understand that Intellectual Ventures II LLC (“IV”)
`
`may claim that the priority date of the ’952 Patent should be as early as
`
`March 2, 2001. The prior art I have based my opinions on predates March 2,
`
`2001, and my opinions do not change should IV prove a March 2, 2001
`
`priority date.
`
`6.
`
`In forming the opinions expressed in this Declaration, I relied upon my
`
`education and experience in the relevant field of the art, and have considered
`
`the viewpoint of a person having ordinary skill in the relevant art as of
`
`March 5, 2003. I have also considered the viewpoint of a person having
`
`ordinary skill in the relevant art as of March 2, 2001. Should IV prove an
`
`earlier priority date of March 2, 2001, my opinions do not change.
`
`7. My opinions are based, at least in part, on the following patents and printed
`
`publications, which I understand qualify as prior art:
`
`2
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
`
`Reference
`US 6,177,751 (“Suzuki”) (Ex. 1002)
`
`JP11-89128 (“Ishihara”) (Ex. 1003)
`
`JP H9-308163 (“Iikuma”) (Ex. 1004)
`
`Date
`Suzuki states that it issued on
`January 23, 2001.
`
`Ishihara states that it issued on
`March 30, 1999.
`
`Iikuma states that it issued on
`November 28, 1997.
`
`US 5,698,923 (“Scherzinger”) (Ex. 1005) Scherzinger states that it issued
`on December 16, 1997.
`
`US 6,075,304 (“Nakatsuka”) (Ex. 1006) Nakatsuka states that it issued
`on June 13, 2000.
`
`
`II. BACKGROUND AND QUALIFICATIONS
`8.
`I am an expert in the field of mechanical engineering, including the design
`
`of rotating machinery.
`
`9.
`
`I am currently a professor of Mechanical Engineering in the George W.
`
`Woodruff School of Mechanical Engineering at the Georgia Institute of
`
`Technology (“Georgia Tech”).
`
`10.
`
`I received a B.Sc. degree in Mechanical Engineering in 1977, a M.Sc. degree
`
`in Mechanical Engineering in 1980, and a D.Sc. degree in Mechanical
`
`Engineering in 1984. Each of my degrees is from Technion – Israel Institute
`
`of Technology. My dissertation was related to the dynamics of mechanical
`
`face seals.
`
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
`
`11.
`
`I have been on the faculty at Georgia Tech since 1985, first as an assistant
`
`professor, then as an associate professor, and finally as a full professor.
`
`During that time I have authored and co-authored than 150 papers and
`
`reports in tribology and design. Tribology is the science, engineering, and
`
`technology of interacting surfaces in relative motion, and includes areas such
`
`as contact mechanics and rotordynamics. At Georgia Tech, I currently chair
`
`the Tribology Research Area Group and the Rotordynamics Research
`
`Laboratory.
`
`12. My work in the field of tribology includes a number of publications that are
`
`specifically related to the design of electric motors, including rotor-stator
`
`alignment and contact systems. Some exemplary publications include the
`
`following:
`
`• Varney, P., and Green, I., “Nonlinear Phenomena, Bifurcations, and
`
`Routes to Chaos in an Asymmetrically Supported Rotor-Stator Contact
`
`System,” Journal of Sound and Vibration, Elsevier, Vol. 336, No. 3
`
`(February 2015), 207-226.
`
`• Varney, P., and Green, I., “Rotordynamic Analysis of Rotor-Stator Rub
`
`Using Rough Surface Contact,” ASME Trans., Journal of Acoustics and
`
`Vibrations, Vol. 138, No. 2 (April 2016), 021015-1 to 021015-9.
`
`4
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
`• Smyth, P., Varney, P., and Green, I., “A Fractional Calculus Model of
`
`Viscoelastic Stator Supports Coupled with Elastic Rotor-stator Rub,”
`
`ASME Trans., Journal of Tribology, Vol. 138, (October 2016), 041101-1
`
`to 041101-8.
`
`• Varney, P., and Green, I., “Rough Surface Contact of Curved Conformal
`
`Surfaces: An Application to Rotor-Stator Rub,” ASME Trans., Journal of
`
`Tribology, Vol. 138, (October 2016), 041401-1 to 041401-7.
`
`13.
`
`I have received numerous awards and professional honors, including being
`
`appointed as a Georgia Tech Woodruff Faculty Fellow, an American Society
`
`of Mechanical Engineers (“ASME”) Fellow, and a Society of Tribologists
`
`and Lubrication Engineers (“STLE”) fellow. Other awards and honors
`
`include
`
`the ASME 2006 Machine Design Award “for outstanding
`
`achievements and dedication to excellence in design education, innovation,
`
`service and research,” the STLE Frank P. Bussick Best Paper Award (2004),
`
`the STLE Walter D. Hodson Award (2001), and the Best Sealing
`
`Technology Paper by STLE-STC (1988). I also recieved the ASME Burt L.
`
`Newkirk Award “in recognition of excellent technical papers published in
`
`ASME Transactions.”
`
`14. Currently I serve on the ASME Design Engineering Division Leonardo da
`
`Vinci Award Committee, I chaired the ASME Tribology Division Awards
`
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
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`Committee, and now I chair the STLE Fellows Committee. I previously
`
`served two terms as the Chair of the Executive Committee of the ASME
`
`Tribology Division (2003-2008), served and chaired the ASME Tribology
`
`Division Nominations and Oversight Committee, chaired the Contact
`
`Mechanics Technical Committee of ASME Tribology Division (2005-2007),
`
`served as a Director on the STLE Board (2004-2007), served and chaired the
`
`2005 STLE Annual Meeting Program Committee (1995-2005), and served
`
`and chaired the STLE Awards Committee (1998-2002). I also served as an
`
`associate editor for STLE, Tribology Transactions (2000-2007) and ASME
`
`Transactions, Journal of Tribology (1988-1994).
`
`15.
`
`In formulating my opinions, I have relied upon my training, knowledge, and
`
`experience in the relevant art. A copy of my curriculum vitae is provided as
`
`Appendix A to this Declaration and provides a description of my relevant
`
`experience, including academic and employment history, publications,
`
`conference participation, and speaking engagements.
`
`III. UNDERSTANDING OF PATENT LAW
`16.
`I understand that prior art for the ’952 Patent for purposes of an IPR is
`
`limited to patents and printed publications in the relevant art that predate the
`
`priority date of the ’952 Patent.
`
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
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`17.
`
`I understand that a claim is invalid if it is anticipated by or rendered obvious
`
`by the prior art. I understand that anticipation of a claim requires that every
`
`element of a claim be disclosed expressly or inherently in a single prior art
`
`reference, arranged in the prior art reference as arranged in the claim. I
`
`understand that obviousness of a claim requires that the claim would have
`
`been obvious from the perspective of a person having ordinary skill in the
`
`relevant art at the time the alleged invention was made. I understand that a
`
`claim may be obvious based on a single reference in view of the abilities of a
`
`person having ordinary skill in the art. I also understand that a claim may be
`
`obvious based on the combination of multiple prior art references.
`
`18.
`
`I understand that an obviousness analysis requires an understanding of the
`
`scope and content of the prior art, any differences between the claims of the
`
`patent in question, here the ’952 Patent, and the prior art, and the level of
`
`ordinary skill in evaluating the pertinent art.
`
`19.
`
`I further understand that certain factors, referred to as “secondary
`
`considerations,” may support or rebut the obviousness of a claim. I
`
`understand that such secondary considerations include, among other things,
`
`commercial success of the patented invention, skepticism of those having
`
`ordinary skill in the art at the time of invention, unexpected results of the
`
`invention, any long-felt but unsolved need in the art that was satisfied by the
`
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`invention, the failure of others to make the invention, praise of the invention
`
`by those having ordinary skill in the art, and copying of the invention by
`
`others in the field. I understand that there must be a nexus—a connection—
`
`between any such secondary considerations and the claimed invention. I
`
`also understand that contemporaneous and independent invention by others
`
`is a secondary consideration tending to show obviousness.
`
`20.
`
`I further understand that a claim is obvious if it unites old elements with no
`
`change to their respective functions, or alters prior art by mere substitution
`
`of one element for another known in the field and that combination yields
`
`predictable results. I understand that while it may be helpful to identify a
`
`reason for this combination, common sense should guide and no rigid
`
`requirement of finding a teaching, suggestion or motivation to combine is
`
`required. I understand that when a product is available, design incentives
`
`and other market forces can prompt variations of it, either in the same field
`
`or different one. I understand that if a person having ordinary skill in the
`
`relevant art can implement a predictable variation, obviousness likely bars
`
`its patentability. For the same reason, I understand that if a technique has
`
`been used to improve one device and a person having ordinary skill in the art
`
`recognizes that it would improve similar devices in the same way, using the
`
`technique is obvious. I understand that a claim may be obvious if common
`
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`sense directs one of ordinary skill in the art to combine multiple prior art
`
`references or add missing features to reproduce the alleged invention recited
`
`in the claims.
`
`IV. BACKGROUND
`21. As part of my analysis, I reviewed the ’952 Patent and the prosecution
`
`history of the ’219 Application from which the ’952 Patent issued. I have
`
`also reviewed the ’511 Application to which the ’952 claims priority, and its
`
`prosecution history.
`
`A. Background of the Field Relevant to the ’952 Patent
`22. The ’952 Patent provides a “Field of the Invention” section that describes
`
`the field of the invention as relating “generally to a stator assembly used in a
`
`dynamoelectric machine such as a motor or a generator.” Ex. 1001 at 1:16–
`
`18. A person having ordinary skill in the art would therefore understand that
`
`the field of invention of the ’952 Patent would include electric motors and
`
`generators and their stator assemblies. Electric motors convert electrical
`
`energy into mechanical energy, while electric generators convert mechanical
`
`energy into electrical energy. In one electric motor design, electrical energy
`
`is converted to mechanical energy by running electricity through wires
`
`wound on the poles of a “stator,” a stationary portion of the motor, to
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
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`generate a rotating magnetic field. The rotating magnetic field causes
`
`rotation of a rotor that drives a shaft to deliver mechanical power.
`
`B.
`Summary of the ’952 Patent
`23. The ’952 Patent is titled “Stator Assembly Made from a Molded Web of
`
`Core Segments and Motor Using Same” and relates to “a stator assembly
`
`used in a dynamoelectric machine such as a motor.” Ex. 1001 at 1:1-3, 1:16-
`
`21. The ’952 Patent depicts an example of a prior art motor, including its
`
`stator (labelled “4”) at Figure 1:
`
`
`
`Id. at Fig. 1.
`
`24. The ’952 Patent states that “[i]n conventional spindle motors, stators have
`
`been made by laminating together stamped pieces of steel,” which “are
`
`generally circular in nature, but also have ‘poles’ extending either inwardly
`
`or outwardly.” Id. at 1:30-34. Once laminated together, “[w]ire is then
`
`wound around the poles to form stator windings.” Id. at 1:35-37. After the
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`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
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`stator is assembled and incorporated into a motor, “the stator windings are
`
`selectively energized and interact with the permanent magnet to cause a
`
`defined rotation of the hub.” Id. at 1:54-56.
`
`25. The ’952 Patent states that prior art stators had “a number of drawbacks,”
`
`caused by designs using “circular steel pieces,” but states that “[s]ome of
`
`these problems have been addressed by motor manufacturing methods in
`
`which individual stator arc segments are made and wound with wire to form
`
`poles.” Id. at 3:34-36. The ’952 Patent also states that stators made from
`
`individual stator arc segments have a host of drawbacks, including complex
`
`assembly, difficulty winding and connecting wires, reduced magnetic flux,
`
`large amounts of scrap, and cost. Id. at 3:39-4:8.
`
`26. The ’952 Patent states that it solves these problems with “a stator assembly
`
`comprising 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 the linked stator segments being
`
`arranged and secured together to form the stator assembly.” Id. at 4:17-22.
`
`27. The ’952 Patent states that a “preferred embodiment” is “shown in Figures
`
`2-7 and 9.” Id. at 5:43-45. In this preferred embodiment, Figures 2 and 3
`
`depict a single stator arc segment pole where “the pole 21 is shown
`
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
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`extending inwardly. The stamped pieces are then coated with encapsulating
`
`material 22 which provides electrical insulation and laminates the pieces
`
`together to form a stator arc segment 20, and links other arc segments into a
`
`continuous strip via webbing 23”:
`
`
`
`
`
`Id. at 5:67-6:5, Figs. 2, 3. Figure 5 of the “preferred embodiment” depicts
`
`how “encapsulating material 22 . . . links other arc segments into a
`
`continuous strip via webbing 23”:
`
`Id. at 6:2-5, Fig. 5.
`
`12
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`28. Using the mold in Figure 2 results in a strip of three segments, as shown in
`
`Figure 5. The ’952 Patent states that longer strips are formed using
`
`“successive molding operation[s].” The ’952 Patent states that in a
`
`successive molding operation, one end of the webbing 23 of an existing strip
`
`can be reinserted into the mold during the formation of the next strip. Id. at
`
`6:36-45. The webbing from the first strip re-melts with the molded webbing
`
`of the second strip to form a single strip of six stator segments:
`
`In the preferred embodiment, a continuous strip of
`segments is formed by linking the webbing from
`successive molding operation. This is done by designing
`the tool to insert a section of the plastic webbing of the
`outermost segment molded in the prior cycle with the
`new laminations to be molded. When the plastic
`encapsulates the new segments it can mechanically lock
`with or, depending upon design, re-melt, the webbing
`from the prior cycle, thus making a continuous strip, as
`shown in FIG. 5.
`
`Id.
`
`29. While in the preferred embodiment the stator segments are encased by
`
`encapsulating them with injection-molded phase change material, the
`
`specification makes clear that “the segments 20 could be encased in other
`
`ways with a bridging material.” Id. at 12:51-54. Similarly, while the
`
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`preferred embodiment in Figure 5 depicts bridging the stator segments using
`
`a “re-melt[ed]” strip of webbing to form “a continuous strip,” the ’952
`
`Patent also states that the bridge can also be formed by material that “can
`
`mechanically lock” to make “a continuous strip.” Id. at 6:41-45.
`
`30. The ’952 Patent also states that the stator segments may be arranged into a
`
`toroidal shape. Id. at 7:11-14. Specifically, the ’952 Patent states that “[t]o
`
`form the toroidal core 17, a side surface 16 of each stator arc segment 20 is
`
`aligned and brought into contact with a corresponding side surface of
`
`another stator arc segment 20.” Id.
`
`31. The ’952 Patent states that the toroidal core of stator segments may be
`
`further encapsulated in a phase change material such as plastic. Specifically,
`
`the ’952 Patent states that “[a]s shown in FIG. 7, the toroidal core 17 is then
`
`encapsulated in a body 42” and that “[i]n the present embodiment, the phase
`
`change material used to make the body 42 is preferably a thermally
`
`conductive but non-electrically conductive plastic.” Id. at 7:23-24, 8:57-59.
`
`The ’952 Patent depicts this encapsulation in Figure 7:
`
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
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`
`
`Id. at Fig. 7.
`
`32. The ’952 Patent further states that the stator assembly may be unitized using
`
`a steel band. Specifically, the ’952 Patent states that “Fig. 10 is a
`
`perspective view of a stator assembly of a second embodiment of the present
`
`invention using a steel band to unitize the webbed stator arc segments.” Id.
`
`at 5:35-37. Figure 10 depicts this steel band, also referred to as “steel collar
`
`200”:
`
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
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`
`
`Id. at Fig. 10, 10:44.
`
`C.
`Summary of the Prosecution History
`33. The application that issued as the ’952 Patent was filed on March 5, 2003,
`
`and the application to which the ’952 Patent claims priority was filed on
`
`March 2, 2001. Ex. 1001 at 1. In the interest of brevity, the summary below
`
`provides an overview of certain portions of the file history.
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`34. On March 5, 2003, the Applicant submitted claims for a stator assembly that
`
`included “a bridge between adjacent segments,” including then-pending
`
`Claim 1:
`
`1. 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
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
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`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.
`
`Ex. 1009 at 23 (3/5/2003 Application).
`
`35. On May 3, 2005, the Applicant submitted then-pending Claim 33:
`
`33. The stator assembly of claim 1 wherein the bridge is
`formed by interconnecting two mating sections formed
`from the phase change material.
`
`Id. at 68 (5/3/2005 Amendment).
`
`36. On June 15, 2005, the Examiner initially allowed then-pending claim 1,
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`along with then-pending claims 9-10, 25, and 33. With respect to claim 1,
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`the Examiner found that “the prior art does not teach the claimed stator
`
`assembly including plural 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, as shown in Fig. 5 of applicant’s drawings
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`and described on p.10, lines 13-14.” Id. at 76 (6/15/2005 Office Action).
`
`37. After the Applicant submitted additional references to the Examiner in an
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`Information Disclosure Statement (Id. at 101 (9/26/2005 IDS)), the
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`Examiner rejected then-pending claims 1-8, 10, and 25, and objected to
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
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`then-pending claims 9 and 33, finding that “[t]he indicated allowability of
`
`claim 1 is withdrawn in view of the newly discovered reference to Hsu (US
`
`6,081,059).” Id. at 359 (10/19/2005 Office Action). Specifically, the
`
`examiner found that:
`
`“Claims 1-4, 6, 8, 25 and 29 are rejected under 35 U.S.C.
`102(b) as being anticipated by Hsu (US 6,081,059). Hsu
`teaches a stator assembly, comprising: a) a plurality of
`discrete stator segments (fin arrays) 110 each at least
`partially encased with a phase change material (bobbin
`14 made of insulating material, i.e., plastic, c.5, lines 51-
`53), wherein the phase change material also comprises a
`bridge (hinge) 144 between adjacent segments to link
`adjacent segments into a continuous strip (Figs. 3 & 4);
`and b) the linked stator segments being arranged and
`secured together to form the stator assembly 11 (c.4 lines
`13-29; Fig. 6).”
`
`Id.
`
`38. The following chart illustrates the claimed features of the ’219 Application
`
`compared to the features of Hsu cited by the Examiner:
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
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`’219 Application
`A plurality of discrete
`stator segments
`
`Hsu (US 6,081,059)
` “fin arrays 110”
`
`Ex. 1014 at Fig. 2 (excerpted)
`“bobbin 14 made of insulating material”
`
`each at least partially
`encased with a phase
`change material
`
`Ex. 1014 at Fig. 2 (excerpted).
`
`19
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
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`Hsu (US 6,081,059)
`
` “hinge 144”
`
`
`’219 Application
`wherein the phase
`change material also
`comprises a bridge
`between adjacent
`segments to link
`adjacent segments into
`a continuous strip
`
`Ex. 1014 at Fig. 2 (excerpted).
`
`
`
`Ex. 1014 at Fig. 3.
`
`
`Ex. 1014 at Fig. 4.
`
`20
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
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`’219 Application
`the linked stator
`segments being
`arranged and secured
`together to form the
`stator assembly
`
`Hsu (US 6,081,059)
`
`
`Ex. 1014 at Fig. 6.
`
`
`
`
`39. The Examiner also stated that then-pending claim 33 was “objected to as
`
`being dependent upon a rejected base claim, but would be allowable if
`
`rewritten in independent form including all of the limitations of the base
`
`claim and any intervening claims.” Ex. 1009 at 362. The Examiner’s reason
`
`for allowability was that “[r]egarding claim 33, the prior art does not teach
`
`or suggest that the bridge is formed by interconnecting two mating sections
`
`formed from the phase change material. In particular, Hsu’s bridges 144 do
`
`not comprise two mating sections interconnected.” Id.
`
`40.
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`In response, the Applicant redrafted claim 33 in independent form:
`
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
`
`33. 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.
`
`Id. at 375 (1/24/2006 Amendment). On March 21, 2006, the Examiner
`
`issued a Notice of Allowance. Id. at 381 (3/21/2006 Notice of Allowance).
`
`D.
`Priority Date
`41. The ’952 Patent states that it claims priority to U.S. Appl. No. 09/798,511,
`
`(the “’511 Application”) filed on March 2, 2001. Ex. 1001 at 1. I
`
`understand that one of the requirements for a patent to claim priority to an
`
`earlier-filed application is that the written description in the earlier-filed
`
`application must support the claims of the issued patent. It is my opinion
`
`that the written description of the ’511 Application does not support the
`
`Challenged Claims of the ’952 Patent, and therefore the Challenged Claims
`
`of the ’952 Patent are not entitled to a March 2, 2001 priority date.
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`Declaration of Itzhak Green Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,067,952
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`42. The Challenged Claims of the ’952 Patent each recite a “bridge” that is
`
`“formed by interconnecting two mating sections formed from the phase
`
`change material” and links adjacent stator segments into a continuous strip.
`
`Ex. 1001 at claims 10-12. In support of this claimed feature, the ’952 Patent
`
`specification, which was filed on March 5, 2003, states that “webbing” is
`
`used to “link[] other arc segments into a continuous strip”:
`
`The stamped pieces are then coated with encapsulating
`material 22 which provides electrical insulation and
`laminates the pieces together to form a stator arc segment
`20, and links other arc segments into a continuous strip
`via webbing 23.
`
`Id. at 6:1-5. The ’952 Patent depicts this webbing, labelled number 23, at
`
`Figure 5:
`
`Id. at Fig. 5.
`
`
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`Declara