`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`NIDEC CORPORATION AND
`AMERICAN HONDA MOTOR CO., INC.
`
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`
`Patent Owner
`
`________________
`
`Case No. IPR2018-00597
`U.S. Patent No. 7,067,952
`Title: Stator Assembly Made from a Molded
`Web of Core Segments and Motor Using Same
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,067,952
`
`
`
`TABLE OF CONTENTS
`
`I. PRELIMINARY STATEMENT ......................................................................... 1
`II. THE ’952 PATENT ............................................................................................. 1
`A. The ’952 Patent Specification .......................................................................... 2
`B. The ’952 Patent’s Challenged Claims .............................................................. 6
`C. The ’952 Patent Prosecution History ................................................................ 7
`D. Priority Date ..................................................................................................... 9
`III. LEVEL OF ORDINARY SKILL ...................................................................10
`IV. CLAIM CONSTRUCTION ...........................................................................11
`A. “phase change material” .................................................................................11
`B. “a bridge between adjacent segments to link adjacent segments into a
`continuous strip” .............................................................................................12
`C. “the bridge is formed by interconnecting two mating sections formed from
`the phase change material” .............................................................................15
`V. CLAIMS 10-12 OF THE ’952 PATENT ARE UNPATENTABLE OVER THE
`PRIOR ART .......................................................................................................16
`A. Overview of the Prior Art ...............................................................................17
`B. Prior Art Status of the Asserted References ...................................................19
`1. Nakahara (1995) ..........................................................................................19
`2. Ishihara (1999) ............................................................................................20
`3. Lieu (2001) ..................................................................................................20
`4. Iikuma (1997) ..............................................................................................20
`5. Stridsberg (1995) .........................................................................................21
`6. Sheeran (priority to 2002) ...........................................................................21
`C. Ground 1: Claims 10-12 are invalid as obvious over Nakahara in view of
`Ishihara and/or Lieu ........................................................................................23
`1. Claim 10: Obvious over Nakahara in view of Ishihara ...............................24
`a. “A stator assembly” ..................................................................................24
`
`
`
`ii
`
`
`
`b. “a plurality of discrete stator segments each at least partially encased
`with a phase change material” ..................................................................25
`c. “wherein the phase change material also comprises a bridge between
`adjacent segments to link adjacent segments into a continuous strip,
`wherein the bridge is formed by interconnecting two mating sections
`formed from the phase change material” .................................................26
`d. “the linked stator segments being arranged and secured together to form
`the stator assembly” .................................................................................33
`2. Claim 11: Obvious over Nakahara in view of Ishihara and Lieu ...............35
`a. “The stator assembly of claim 10” ...........................................................35
`b. “wherein the stator segments are held in a toroidal shape by an
`overmolded thermoplastic material” ........................................................35
`3. Claim 12: Obvious over Nakahara in view of Ishihara ...............................40
`a. “The stator assembly of claim 10” ...........................................................40
`b. “wherein the stator segments are held in a toroidal shape by a retaining
`member” ...................................................................................................40
`D. Ground 2: Claims 10-12 are invalid as obvious over Iikuma in view of
`Nakahara, Lieu, and/or Stridsberg ..................................................................41
`1. Claim 10: Obvious over Iikuma in view of Nakahara ................................42
`a. “A stator assembly” ..................................................................................42
`b. “a plurality of discrete stator segments each at least partially encased
`with a phase change material” ..................................................................42
`c. “wherein the phase change material also comprises a bridge between
`adjacent segments to link adjacent segments into a continuous strip,
`wherein the bridge is formed by interconnecting two mating sections
`formed from the phase change material” .................................................47
`d. “the linked stator segments being arranged and secured together to form
`the stator assembly” .................................................................................49
`2. Claim 11: Obvious over Iikuma in view of Nakahara and Lieu .................50
`a. “The stator assembly of claim 10” ...........................................................50
`
`
`
`iii
`
`
`
`b. “wherein the stator segments are held in a toroidal shape by an
`overmolded thermoplastic material” ........................................................50
`3. Claim 12: Obvious over Iikuma in view of Nakahara and Stridsberg ........54
`a. “The stator assembly of claim 10” ...........................................................54
`b. “wherein the stator segments are held in a toroidal shape by a retaining
`member” ...................................................................................................54
`E. Ground 3: Claims 10-12 are invalid as obvious over Sheeran in view of
`Nakahara and/or Lieu .....................................................................................60
`1. Claim 10: Obvious over Sheeran in view of Nakahara ...............................61
`a. “A stator assembly” ..................................................................................61
`b. “a plurality of discrete stator segments each at least partially encased
`with a phase change material” ..................................................................61
`c. “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” .................................................65
`d. “the linked stator segments being arranged and secured together to form
`the stator assembly” .................................................................................67
`2. Claim 11: Obvious over Sheeran in view of Nakahara and Lieu ...............68
`a. “The stator assembly of claim 10” ...........................................................68
`b. “wherein the stator segments are held in a toroidal shape by an
`overmolded thermoplastic material” ........................................................68
`3. Claim 12: Obvious over Sheeran in view of Nakahara ...............................70
`a. “The stator assembly of claim 10” ...........................................................70
`b. “wherein the stator segments are held in a toroidal shape by a retaining
`member” ...................................................................................................70
`VI. MANDATORY NOTICES ...........................................................................71
`A. Real Party in Interest ......................................................................................71
`B. Related Matters ...............................................................................................71
`C. Lead and Backup Counsel, and Service Information .....................................72
`
`
`
`iv
`
`
`
`VII. CERTIFICATION UNDER 37 C.F.R. § 42.24(d) .........................................73
`VIII. GROUNDS FOR STANDING.......................................................................73
`IX. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED .............................................................................................74
`X. CONCLUSION ..................................................................................................74
`
`
`
`
`
`
`v
`
`
`
`Exhibit List
`
`Exhibit
`
`Description
`
`1001
`
`U.S. Patent No. 7,067,952 to Neal (“the ’952 patent”)
`
`1002
`
`File History of U.S. Patent Application No. 10/383,219, as retrieved
`from PAIR (“’952 File History”)
`
`1003
`
`U.S. Patent No. 6,265,804 to Nitta et al. (“Nitta”)
`
`1004
`
`U.S. Patent No. 6,167,610 to Nakahara et al. (“Nakahara-610”)
`
`1005
`
`U.S. Patent No. 6,121,351 to Weaver et al. (“Weaver”)
`
`1006
`
`1007
`
`Japanese Patent No. 07-245895A with certified translation
`(“Nakahara”)
`
`Japanese Patent No. 11-089128A with certified translation
`(“Ishihara”)
`
`1008 WO Publication No. 01/45233 (“Lieu et al.”)
`
`1009
`
`Japanese Patent No. 1997-308163 with certified translation
`(“Iikuma”)
`
`1010
`
`U.S. Patent No. 7,471,025 to Sheeran et al. (“Sheeran”)
`
`1011
`
`U.S. Patent No. 6,049,153 to Nishiyama et al. (“Nishiyama”)
`
`1012
`
`U.S. Patent No. 5,729,072 to Hirano et al. (“Hirano”)
`
`1013
`
`U.S. Patent No. 5,694,268 to Dunfield et al. (“Dunfield”)
`
`1014
`
`U.S. Patent No. 5,672,927 to Viskochil et al. (“Viskochil”)
`
`
`
`vi
`
`
`
`Exhibit
`
`Description
`
`1015
`
`U.S. Patent No. 5,806,169 to Trago et al. (“Trago”)
`
`1016
`
`U.S. Patent No. 5,672,972 to McCoy et al. (“McCoy”)
`
`1017 WO Publication No. 95/12912 (“Stridsberg”)
`
`1018
`
`U.S. Provisional Application No. 60/422676 (“Sheeran Provisional
`Application”)
`
`1019
`
`U.S. Patent No. 4,965,318 to Taubitz et al. (“Taubitz”)
`
`1020
`
`1021
`
`Hassink et al. “Molded Parts Speed Motor Assembly” Assembly, Vol.
`37, No. 5 (May 1994). Pp. 34-36 (“Hassink”)
`
`File History of U.S. Patent Application No. 09/798,511, as retrieved
`from PAIR
`
`1022
`
`U.S. Patent No. 6,081,059 (“Hsu”)
`
`1023
`
`Declaration of C. Gresalfi, attaching Library of Congress Online
`Catalog record no. LCCN 90658027 (last visited February 7, 2018)
`
`1024
`
`Declaration of Gerald R. Micklow (“Micklow Decl.”)
`
`
`
`vii
`
`
`
`
`
`I.
`
`PRELIMINARY STATEMENT
`
`Petitioners Nidec Corporation and American Honda Motor Co., Inc.
`
`(“Petitioners”) request Inter Partes Review (“IPR”) of claims 10-12 (collectively,
`
`the “Challenged Claims”) of the ’952 patent (Ex. 1001), purportedly currently
`
`assigned to Intellectual Ventures II LLC (“Patent Owner”).
`
`The Challenged Claims are directed to a segmented stator assembly, for use
`
`in a motor, of a type that the ’952 patent acknowledges to be known. Ex. 1001,
`
`3:34-37. Against the backdrop of the admitted prior art (id., 3:34-4:1), the
`
`distinguishing feature of the Challenged Claims during prosecution was “a bridge
`
`formed by interconnecting two mating sections formed from the phase change
`
`material.” That feature, however, was taught by the prior art years before the ’952
`
`patent was filed, and was known from publications across the world. As
`
`demonstrated in this Petition, the combination of that feature with the other
`
`limitations of the Challenged Claims would have been obvious, and the Challenged
`
`Claims are therefore invalid on the Grounds presented herein.
`
`II. THE ’952 PATENT
`
`The ’952 patent, titled “Stator Assembly Made from a Molded Web of Core
`
`Segments and Motor Using Same,” was filed on March 5, 2003, as U.S.
`
`Application No. 10/383,219 (Ex. 1002), a continuation-in-part of Application No.
`
`
`
`1
`
`
`
`
`
`09/798,511 (filed March 2, 2001) (Ex. 1021), now U.S. Patent No 7,036,207.
`
`A. The ’952 Patent Specification
`
`The ’952 patent “relates generally to a stator assembly used in a
`
`dynamoelectric machine such as a motor or a generator,” and particularly to “a
`
`spindle motor such as used in a hard disc drive, and to the construction and
`
`arrangement of a stator assembly made from a plurality of arc segments.” Ex.
`
`1001, 1:16-21. An example of a spindle motor, which the ’952 patent admits to be
`
`prior art, is illustrated in Fig. 1, reproduced below.
`
`’952 Patent, Fig. 1
`
`
`
`As shown in Fig. 1, a conventional spindle motor includes a stator 4 made
`
`from a laminated steel core wrapped with wire windings. Although not illustrated
`
`in Fig. 1, the ’952 patent acknowledges that the prior art taught to encapsulate the
`
`stator with an “overmold.” Id., 3:12-33.
`
`
`
`2
`
`
`
`
`
`The ’952 patent also acknowledges that the prior art had improved upon
`
`conventional stators by assembling them from discrete segments. Id., 3:34-37
`
`(“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.”). The ’952 patent admits that several aspects of segmented
`
`stator design were known, including insulating the segments with plastic and
`
`providing the segments in a “strip.” Id., 3:59-4:1 (citing U.S. Pat. No. 6,265,804
`
`(Ex. 1003, “Nitta”) and U.S. Patent No. 6,167,610 (Ex. 1004, “Nakahara-610”)).
`
`As the acknowledged prior art teaches, known stator segment insulating materials
`
`included “polyester” and “polyethylene terephthalate,” two thermoplastics. Ex.
`
`1003 [Nitta], 11:5-7; compare with Ex. 1001 [’952 patent], 9:3-19.
`
`According to the ’952 patent, known segmented stators suffered from
`
`several problems, particularly when they are assembled together. Ex. 1001, 3:38-
`
`63. The ’952 patent purports to solve those problems. Id., 4:12-13.
`
`The ’952 patent describes a stator core made up of stamp-formed laminated
`
`steel arc segments 20 (highlighted in blue below). Id., 5:61-66. Those segments are
`
`“coated with encapsulating material 22 [highlighted in orange below] 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., 6:1-5; Ex. 1024 ¶ 37.
`
`
`
`3
`
`
`
`
`
`
`
`’952 Patent, Figs. 3 and 5 (highlighted and annotated)
`
`According to the ’952 patent, a “multi-cavity mold 28” can be used to coat
`
`the steel arc segments with encapsulating material. Id., 6:29-30. In the “preferred”
`
`molding operation, “a continuous strip of segments is formed by linking the
`
`webbing from successive molding operation[s]”:
`
`This is done by designing the tool to insert a section of
`the plastic webbing of the outermost segment molded in
`the prior cycle with the new laminations to be molded.
`When the plastic encapsulates the new segments it can
`mechanically lock with or, depending on design, re-melt,
`the webbing from the prior cycle, thus making a
`continuous strip, as shown in FIG. 5.
`Id., 6:36-47.
`
`To form a strip of stator segments into a circular/toroidal stator shape,
`
`
`
`4
`
`
`
`
`
`the’952 patent describes cutting a stator segment strip of desired length, which “is
`
`then rolled into a magnetically inducible toroidal core.” Id., 7:6-14. Two
`
`mechanisms are described to hold the stator segments in the desired shape.
`
`First, as illustrated in Figure 7, below at left, “the toroidal core [may be]
`
`encapsulated in a body 42” (highlighted in green) by injection molding. Id., 7:23-
`
`25; Ex. 1024 [Micklow Decl.] ¶ 39. Second, as illustrated in FIG. 10, below at
`
`right, the stator segments may be held in place by “the use of a steel collar 200
`
`[highlighted in purple] to fixture [sic] the discrete stator segments 220.” Id., 10:43-
`
`47; Ex. 1024 ¶ 39.
`
`’952 Patent, Figs. 7 and 10 (highlighted)
`
`
`
`
`
`5
`
`
`
`
`
`B.
`
`The ’952 Patent’s Challenged Claims
`
`Independent claim 10, reproduced below, recites a segmented stator
`
`including some of the features from the specification described above.
`
`10. A stator assembly, comprising:
`a) a plurality of discrete stator segments each at least
`partially encased with a phase change material, wherein
`the phase change material also comprises a bridge
`between adjacent segments to link adjacent segments into
`a continuous strip, wherein the bridge is formed by
`interconnecting two mating sections formed from the
`phase change material; and
`b) the linked stator segments being arranged and secured
`together to form the stator assembly.
`
`Claim 10 departs from the terminology used in the ’952 patent specification in that
`
`it refers to “a bridge between adjacent segments,” whereas the specification
`
`describes the links between stator segments as “webbing 23.” See Ex. 1001, 6:48-
`
`50.
`
`Claims 11 and 12 depend from claim 10, and recite that the stator segments
`
`are held in a toroidal shape by “an overmolded thermoplastic material” (claim 11)
`
`or by “a retaining member” (claim 12).
`
`
`
`6
`
`
`
`
`
`C. The ’952 Patent Prosecution History
`
`As filed, the application for the ’952 patent included independent claim 1,
`
`which recited every feature of issued claim 10, except “wherein the bridge is
`
`formed by interconnecting two mating sections formed from the phase change
`
`material.” Ex. 1002 at 393 [3/5/2003 Application at 21]. That feature appeared in
`
`none of the originally filed claims. See id. at 393-396. The “interconnecting”
`
`feature appeared for the first time in new dependent claim 33, which the applicant
`
`added to depend from claim 1 in a response to a restriction requirement. Id. at 344
`
`[5/3/2005 Response at 6].
`
`In the first office action on the merits, the Examiner initially allowed claims
`
`1 and 33, stating that the prior art then of record failed to teach a bridge that linked
`
`adjacent stator segments “into a continuous strip,” as claimed. Id. at 321
`
`[6/15/2005 Office Action at 4]. In the next office action, however, the Examiner
`
`withdrew his allowance of claim 1, and rejected the claim under 35 U.S.C. §
`
`102(b) as anticipated by U.S. Patent No. 6,081,059 (Ex. 1022, “Hsu”). Id. at 42
`
`[10/19/2005 Office Action at 2]. As illustrated below, Hsu disclosed stator core fin
`
`arrays (110, blue) designed to fit into an “insulating coil bobbin assembly 14A”
`
`(orange). Ex. 1022, 3:9-15, 3:44-4:7. Hsu’s bobbin assembly included “a hinge
`
`portion 144 as shown in FIG. 4.” Id., 4:8-15.
`
`
`
`7
`
`
`
`
`
`
`
`Hsu, Figs. 3 and 4 (highlighted and annotated excerpts)
`
`Citing to figures 3 and 4 (depicted above), the Examiner stated that Hsu
`
`taught all of the limitations of claim 1, including “a bridge (hinge) 144 between
`
`adjacent segments to link adjacent segments [of the stator] into a continuous strip.”
`
`Ex. 1002 at 42 [10/19/2005 Office Action at 2]. As illustrated in Figure 3, Hsu
`
`forms a strip of stator segments that is “continuous” in the direction of the line of
`
`stator segments. The Examiner deemed dependent claim 33 to contain allowable
`
`subject matter because, unlike the bridge of claim 10, Hsu’s bridges were formed
`
`integrally as a single piece—i.e., “Hsu’s bridges 144 do not comprise two mating
`
`sections interconnected.” Id. at 45 [10/19/2005 Office Action at 5].
`
`In reply, the applicant amended claim 33 to be independent, including all
`
`features formerly recited in claim 1. Id. at 35 [1/24/2006 Amendment at 2]. The
`
`amended claim ultimately issued as patent claim 10.
`
`Thus, during prosecution, patentability of claim 10 boiled down to the
`
`
`
`8
`
`
`
`
`
`particular claimed “bridge.” The Examiner failed to identify a bridge “formed by
`
`interconnecting two mating sections”—i.e., a bridge that comprised two mating
`
`sections interconnected. That feature, however, was well known. As demonstrated
`
`in this Petition, at least four years before the ’952 patent was filed, the prior art
`
`taught to form “bridges” out of mating sections and explained the benefits of such
`
`a design. Numerous other references taught that feature as well.
`
`D.
`
`Priority Date
`
`The ’952 patent claims priority to May 2, 2001. The Challenged Claims,
`
`however, are not entitled to that date. They contain subject matter that was not
`
`added until a continuation-in-part application (“CIP”) was filed on March 5, 2003.
`
`See Ex. 1024 [Micklow Decl.] ¶¶ 60-61. Accordingly, because “[n]ew subject
`
`matter [in a CIP] does not receive the benefit of the earlier priority date,” the
`
`Challenged Claims are entitled to priority no earlier than March 5, 2003. Go Med.
`
`Indus. Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1270 (Fed. Cir. 2006).
`
`Specifically, each of the Challenged Claims requires “a bridge between
`
`adjacent [stator] segments to link adjacent segments into a continuous strip,
`
`wherein the bridge is formed by interconnecting two mating sections.” Ex. 1001,
`
`claim 10. The ’952 patent generally describes the design of a “continuous strip” of
`
`stator segments “linked” together via “webbing,” which is understood to be the
`
`claimed “bridge.” See, generally, id., 5:61-7:5, Figs. 2-7.
`
`
`
`9
`
`
`
`
`
`The ’952 patent’s parent application, to which priority is claimed, included
`
`no such description. Ex. 1024 [Micklow Decl.] ¶ 61. The earlier application omits
`
`any mention of a strip of stator segments linked together, whether by “webbing,” a
`
`“bridge,” or any other mechanism. Compare id., 5:61-7:5 generally with Ex. 1021
`
`at 266-297 [3/2/2001 Application]. Nor does the earlier application include any of
`
`the figures that the ’952 patent uses to depict those features. See Ex. 1001 [’952
`
`patent], Figs. 2-7. Those features were described and illustrated, for the first time,
`
`in the March 5, 2003, continuation-in-part application. See Ex. 1002 at 381, 399-
`
`404 [3/5/2003 Application at 9:3-11:2, Figs. 2-7].
`
`III. LEVEL OF ORDINARY SKILL
`
`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); Ex. 1024 ¶ 25. 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. Ex. 1024 ¶ 25.
`
`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, and thermofluid concepts. Id. A POSITA
`
`would further be aware of various techniques for manufacturing encapsulated
`
`
`
`10
`
`
`
`
`
`motors, including by the use of injection molding. Id.
`
`IV. CLAIM CONSTRUCTION
`
`A claim subject to IPR receives the “broadest reasonable construction in
`
`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
`
`The broadest reasonable construction should be applied to all claim terms in the
`
`’952 patent. For the purposes of this Petition, no explicit construction is needed for
`
`any claim term not addressed below.
`
`A.
`
`“phase change material”
`
`Claim 10 recites 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.
`
`“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.” Id., 6:20-24. The ’952
`
`patent specifically identifies numerous “suitable thermoplastic resins,” including
`
`
`
`11
`
`
`
`
`
`plastics such as “6,6-polyamide,1 . . . 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.
`
`The ’952 patent also identifies “epoxy” as a chemically activated phase
`
`change material, and states that “[o]ther suitable phase change materials may be
`
`classified as thermosetting materials.” Id., 6:24-28.
`
`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. 1024 ¶ 49. A “phase change material” broadly encompasses at
`
`least thermosetting materials, epoxies, thermoplastics, polypropylene, polybutylene
`
`terephthalate, and polyethylene terephthalate. Id.
`
`B.
`
`“a bridge between adjacent segments to link adjacent segments
`into a continuous strip”
`
`Claim 10 recites “a bridge between adjacent segments to link adjacent
`
`segments into a continuous strip.” A POSITA would understand this phrase to
`
`encompass a configuration in which a bridge links two adjacent stator segments
`
`into a strip that is continuous in a lengthwise direction (i.e., peripherally around the
`
`1 “6,6-polyamide” is a type of nylon. Ex. 1005 [Weaver], 30:66
`
`
`
`12
`
`
`
`
`
`stator in the direction of the stator segments), in contrast to a width direction (i.e.,
`
`in the direction of the motor axis). Ex. 1024 ¶ 50. The difference between the
`
`lengthwise direction (“L”) and width direction (“W”) is illustrated below in
`
`annotated Figure 5 of the ’952 patent.
`
`’952 patent, Fig. 5 (annotated)
`
`
`
`This interpretation of the “continuous strip” follows directly from the
`
`context of the surrounding claim language, which is “highly instructive” in
`
`discerning the meaning of the claim terms. See Phillips v. AWH Corp., 415 F.3d
`
`1303, 1314 (Fed. Cir. 2005). In context, the claim recites that “adjacent segments”
`
`of the stator are “link[ed] . . . into [the] continuous strip.” A POSITA would
`
`understand from that language that the claimed strip may be “continuous” in the
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`same direction as the line of stator segments, i.e., in direction “L.” Ex. 1024 ¶ 51.
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`This interpretation also is confirmed by the description in the specification
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`and drawings of the ’952 patent, which consistently describe the “preferred”
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`13
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`embodiment as including a strip that is continuous in the lengthwise direction. See
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`Phillips, 415 F.3d at 1313 (POSITA is “deemed to read the claim term . . . in the
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`context of the entire patent, including the specification”). According to the patent,
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`a “preferred embodiment” is illustrated in Figures 2-7 and 9. Ex. 1001, 5:43-45. As
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`shown in those figures, “[t]he stator arc segments 20 are preferably molded into a
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`continuous strip where the webbing acts as a carrier to link the segments together.”
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`Id., 6:48-50 (emphases added); accord 6:1-5, 6:37, 7:6-8. Moreover, every drawing
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`that depicts the links (i.e., webbing or bridges) between adjacent stator segments
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`shows them forming a strip that is continuous in the lengthwise direction. See id.,
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`Figs. 3-6. In contrast, the webbing 23 is consistently illustrated as being
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`discontinuous in the width direction, with a gap “G” between the webbing
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`elements, as illustrated below. Ex. 1024 ¶¶ 52-53.
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`’952 patent, Fig. 5 (annotated excerpt)
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`In any event, the claimed “continuous strip” cannot be construed in a manner
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`14
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`that would exclude a strip that is continuous in the lengthwise direction, because a
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`construction of a patent claim in which the preferred and only embodiment of the
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`invention is outside of the proposed construction “is rarely, if ever, correct and
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`would require highly persuasive evidentiary support” to be sustained. Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
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`Accordingly, under the proper construction for purposes of this IPR, the
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`prior art will satisfy the “continuous strip” limitation of claim 10 so long as the
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`strip is continuous in a lengthwise direction, i.e., in the direction of the line of
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`adjacent stator segments. Ex. 1024 ¶ 55.
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`C.
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`“the bridge is formed by interconnecting two mating sections
`formed from the phase change material”
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`Claim 10 recites that “the bridge is formed by interconnecting two mating
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`sections formed from the phase change material.” On its face, this limitation is a
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`product-by-process limitation, requiring that the bridge be formed by the step of
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`interconnecting two mated sections. As a matter of law, “even though product-by-
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`process claims are limited by and defined by the process, determination of
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`patentability is based on the product itself. The patentability of a product does not
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`depend on its method of production. If the product in the product-by-process claim
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`is the same as or obvious from a product of the prior art, the claim is unpatentable
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`even though the prior product was made by a different process.” In re Thorpe, 777
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`15
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`
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`F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).
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`Accordingly, for purposes of IPR, the prior art will satisfy the limitation of a
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`“bridge [that] is formed by interconnecting two mating sections formed from the
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`phase change material” so long as the bridge comprises two mating sections,
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`interconnected, formed from phase change material. No particular step of
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`“form[ing] by interconnecting” is required. This construction is consistent with the
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`construction applied by the Examiner during prosecution. Ex. 1002 at 45
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`[10/19/2005 Office Action at 5] (allowing the claim because “Hsu’s bridges 144 do
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`not comprise two mating sections interconnected.”).
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`V. CLAIMS 10-12 OF THE ’952 PATENT ARE UNPATENTABLE
`OVER THE PRIOR ART
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`Claims 10-12 are unpatentable under 35 U.S.C. § 103. Claims 10-12 are
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`invalid as obvious over JP7-245895 (Ex. 1006, “Nakahara”) in view of JP11-
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`89128 (Ex. 1007, “Ishihara”) and WO 01/45233 (Ex. 1008, “Lieu”). Claims 10-
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`12 also are invalid as obvious over JP1997-308163 (Ex. 1009, “Iikuma”) in view
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`of Nakahara, Lieu, and WO Publication No. 95/12912 (“Stridsberg”). Claims 10-
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`12 also are invalid as obvious over U.S. Patent No. 7,471,025 (Ex. 1010,
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`“Sheeran”) in view of Nakahara and Lieu.
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`16
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`A. Overview of the Prior Art
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`As the ’952 patent admits, the art had sought to address the challenges posed
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`in constructing spindle motor stators since before the patent was filed. Ex. 1001,
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`1:25-4:7. For example, the patent acknowledges:
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`—
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`Spindle motors’ stators had been provided in the form of “discrete
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`stator segments” (recited in claim 10), as taught by U.S. Patent No. 6,049,153 (Ex.
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`1011) and U.S. Patent No. 5,729,072 (Ex. 1012). ’952 patent. Ex. 1001, 3:46-58.
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`—
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`Stator segments had been at least partially encased (claim 10), as
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`taught by Nitta. Ex. 1001, 31:59-63. Moreover, Nitta taught that known stator
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`segment insulating materials included “polyester” and “polyethylene
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`terephthalate,” two thermoplastics. Ex. 1003, 11:5-7; see Ex. 1001, 9:3-19.
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`—
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`Stator segments had been provided in a continuous strip (claim 10),
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`as taught by Nakahara-610 (Ex. 1004). Ex. 1001, 3:64-4:1.
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`—
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`Stator assemblies had been overmolded with thermoplastic (claim
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`11), as taught by U.S. Patent No. 5,694,268 (Ex. 1013, “Dunfield”), U.S. Patent
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`No. 5,672,927 (Ex. 1014, “Viskochil”)2 , and U.S. Patent No. 5,806,169 (Ex. 1015,
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`2 The ’952 patent erroneously refers to Viskochil as U.S. Patent No. 5,672,972,
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`with the final two digits transposed. The proper patent number appears in the ’952
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`patent’s list of references cited. U.S. Patent No. 5,672,972 (Ex. 1016) lists different
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`17
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`“Trago”), which the ’952 patent incorporates by reference. Ex. 1001, 3:12-33.
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`Thus, the only feature recited in claim 10 that the ’