`
`
`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. IPR2018-00598
`U.S. Patent No. 7,067,952
`Title: Stator Assembly Made from a Molded
`Web of Core Segments and Motor Using Same
`
`
`
`DECLARATION OF DR. THOMAS R. BRINNER
`
`NIDEC and HONDA - Ex. 1013
`Nidec Corporation and American Honda
`Motor Co., Inc. - Petitioners
`
`1
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ....................................................................................... 8
`
`A.
`
`B.
`
`Background and Qualifications ......................................................... 8
`
`Information Considered ..................................................................... 9
`
`II.
`
`LEGAL STANDARDS ............................................................................. 10
`
`A.
`
`B.
`
`C.
`
`Legal Standards for Prior Art .......................................................... 10
`
`Legal Standards for Anticipation .................................................... 11
`
`Legal Standards for Obviousness .................................................... 11
`
`III. OVERVIEW OF THE ’952 PATENT ...................................................... 15
`
`A.
`
`B.
`
`Summary of the ’952 Patent ............................................................ 15
`
`The ’952 Patent Prosecution History .............................................. 21
`
`C. No Claim of the ’952 Patent is Entitled to the Effective Filing
`Date of the ’207 Patent .................................................................... 22
`
`D.
`
`E.
`
`Person of Ordinary Skill in the Art ................................................. 24
`
`Claim Construction.......................................................................... 25
`
`“a phase change material” ............................................................... 25
`
`“the bridge is formed by interconnecting two mating sections
`formed from the phase change material” (claims 9 and 10) . 26
`
`F.
`
`The ’952 Patent Claims ................................................................... 27
`
`IV. THE PRIOR ART ...................................................................................... 28
`
`A.
`
`Japanese Patent Application Publication No. 2000-184635 to
`Calsonic Kansei Corp. (“Calsonic”) ............................................... 28
`
`B. Detailed Analysis ............................................................................ 30
`
`1.
`
`Limitation 10.a: “A stator assembly, comprising:” ............. 30
`ii
`
`2
`
`
`
`
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Limitation 10.b: “a) a plurality of discrete stator
`segments each at least partially encased with a phase
`change material” ................................................................... 30
`
`Limitation 10.c: “wherein the phase change material also
`comprises a bridge between adjacent segments to link
`adjacent segments into a continuous strip” ........................... 33
`
`Limitation 10.d: “wherein the bridge is formed by
`interconnecting two mating sections formed from the
`phase change material; and” ................................................. 35
`
`Limitation 10.e: “b) the linked stator segments being
`arranged and secured together to form the stator
`assembly.” ............................................................................. 36
`
`Limitation 14.a: “A combination of stator arc segments
`and a flexible carrier used to link said stator arc segments
`during a winding operation comprising:” ............................. 38
`
`Limitation 14.b: “a) a plurality of stator arc segments;
`and” ....................................................................................... 42
`
`Limitation 14.c: “b) a phase change material constituting
`said flexible carrier adhered to the stator arc segments
`which links said segments in a uniform and predetermined
`position with respect to one another;” .................................. 42
`
`Limitation 14.d: “wherein the flexible carrier links said
`segments by connecting two mating sections formed in
`said carrier.” .......................................................................... 44
`
`C.
`
`Japanese Patent Application Publication H11-341717 to
`Matsushita (“Matsushita”) ............................................................... 44
`
`D. Detailed Analysis ............................................................................ 45
`
`1.
`
`2.
`
`Limitation 1.a: “A stator assembly, comprising:” .............. 45
`
`Limitation 1.b: “a) a plurality of discrete stator segments
`each at least partially encased with a phase change
`material,” ............................................................................... 45
`
`iii
`
`3
`
`
`
`
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Limitation 1.c: “wherein the phase change material also
`comprises a bridge between adjacent segments to link
`adjacent segments into a continuous strip; and” ................... 48
`
`Limitation 1.d: “b) the linked stator segments being
`arranged and secured together to form the stator
`assembly,” ............................................................................. 48
`
`Limitation 1.e: “wherein the stator segments are held in
`a toroidal shape by a retaining member which comprises a
`metal band.” .......................................................................... 49
`
`Claim 2: “The stator assembly of claim 1 wherein the
`bridges produce such a continuous linkage between
`segments that the bridges may be used to orient and
`manipulate the segments during wire winding.” .................. 54
`
`Claim 4: “The stator assembly of claim 1 wherein the
`bridges between adjoining segments can be used to orient
`and position wire relative to the poles.” ............................... 57
`
`Claim 6: “The stator assembly of claim 1 wherein the
`discrete stator segments are each made from a plurality of
`steel laminations.” ................................................................. 58
`
`Claim 8: “A motor made from the stator assembly of
`claim 1.” ................................................................................ 59
`
`10. Claim 9: “The stator assembly of claim 1 wherein the
`bridge is formed by interconnecting two mating sections
`formed from the phase change material.” ............................. 60
`
`11. Claim 12: “The stator assembly of claim 10 wherein the
`stator segments are held in a toroidal shape by a retaining
`member.” ............................................................................... 61
`
`12. Claim 13: “The stator assembly of claim 12 wherein
`retaining member comprises a metal band.” ......................... 64
`
`E.
`
`F.
`
`Japanese Patent Application Publication S62-138031 to
`Nippondenso (“DENSO”) ............................................................... 65
`
`Detailed Analysis ............................................................................ 65
`iv
`
`4
`
`
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Limitation 10.a: “A stator assembly, comprising:” .............. 65
`
`Limitation 10.b: “a) a plurality of discrete stator
`segments each at least partially encased with a phase
`change material” ................................................................... 66
`
`Limitation 10.c: “wherein the phase change material also
`comprises a bridge between adjacent segments to link
`adjacent segments into a continuous strip” ........................... 70
`
`Limitation 10.d: “wherein the bridge is formed by
`interconnecting two mating sections formed from the
`phase change material; and” ................................................. 72
`
`Limitation 10.e: “b) the linked stator segments being
`arranged and secured together to form the stator
`assembly.” ............................................................................. 74
`
`Claim 12: “The stator assembly of claim 10 wherein the
`stator segments are held in a toroidal shape by a retaining
`member.” ............................................................................... 74
`
`Limitation 14.a “A combination of stator arc segments
`and a flexible carrier used to link said stator arc segments
`during a winding operation comprising:” ............................. 76
`
`Limitation 14.b: “a) a plurality of stator arc segments;
`and” ....................................................................................... 77
`
`Limitation 14.c: “b) a phase change material constituting
`said flexible carrier adhered to the stator arc segments
`which links said segments in a uniform and predetermined
`position with respect to one another;” .................................. 79
`
`10. Limitation 14.d: “wherein the flexible carrier links said
`segments by connecting two mating sections formed in
`said carrier.” .......................................................................... 81
`
`G. U.S. Patent No. 5,694,268 ............................................................... 82
`
`H. Detailed Analysis ............................................................................ 83
`
`v
`
`5
`
`
`
`
`
`1.
`
`Claim 11: “The stator assembly of claim 10 wherein the
`stator segments are held in a toroidal shape by an
`overmolded thermoplastic material.” .................................... 83
`
`I.
`
`The Knowledge of One of Ordinary Skill in the Art ...................... 86
`
`1.
`
`2.
`
`Claim 3: “The stator assembly of claim 1 wherein wire
`having a packing density of greater than 80 percent is
`wound around the poles.” ..................................................... 86
`
`Claim 5: “The stator assembly of claim 1 wherein the
`phase change material has a thermal conductivity of at
`least 0.4 watts/meter° K at 23° C.” ....................................... 88
`
`V.
`
`CONCLUSION .......................................................................................... 89
`
`
`
`
`
`
`
`vi
`
`6
`
`
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`U.S. Patent No. 7,067,952 to Neal
`
`Prosecution File History of U.S. Patent No. 7,067,952
`
`JP P2000-184635 to Calsonic Kansei Corp. (“Calsonic”)
`
`Certified English Translation of JP 2000-184635 to Calsonic
`
`JP S62-138031 to Nippondenso (“DENSO”)
`
`Certified English Translation of JP S62-138031 to DENSO
`
`U.S. Patent No. 7,036,207 to Neal
`
`JP H11-341717 to Matsushita (“Matsushita”)
`
`Certified English Translation of JP H11-341717 to Matsushita
`
`U.S. Patent No. 5,694,268 to Dunfield (“Dunfield”)
`
`Polymer Data Handbook
`
`U.S. Patent No. 6,265,804 (“Nitta”)
`
`
`
`
`
`
`
`
`
`vii
`
`7
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by counsel for Nidec Corporation and American
`
`Honda Motor Co., Inc. (“Petitioners”) as an expert witness in the above-captioned
`
`proceeding. I have been asked to provide my opinion about the patentability of
`
`claims 1-6 and 8-14 of U.S. Patent No. 7,067,952 (the “’952 patent”).
`
`2.
`
`I have been retained at my normal hourly rate of $250 per hour to
`
`prepare this declaration and $400 per hour for any testimony required to support
`
`this declaration. No part of my compensation is dependent upon the outcome of
`
`this proceeding or the specifics of my testimony.
`
`A. Background and Qualifications
`A copy of my current curriculum vitae (“CV”) is attached as
`3.
`
`Appendix A.
`
`4.
`
`I received a Bachelor of Science degree in Electrical Engineering
`
`from Washington University in 1963, a Master’s degree in Electrical Engineering
`
`from Syracuse University in 1969, and a Ph.D. in Electrical Engineering from Ohio
`
`State University in 1973.
`
`5.
`
`After completion of my Bachelor’s degree, I began my engineering
`
`career at IBM where I designed test equipment for integrated electronic circuits. In
`
`1973, I joined General Electric where I designed a high-power SCR DC to DC
`
`controller to operate from 600 VDC and provide variable DC voltage to motors.
`
`8
`
`8
`
`
`
`
`
`Later, as a Manager of electrical engineering at Reda Pump, I assisted with design
`
`of high-power variable speed drives, motor starting/protection and instrument
`
`development for pressure and temperature measurement. I also designed a
`
`brushless DC motor, drive, and controller.
`
`6. My areas of expertise are power systems, power electronics, and
`
`electric motor design including sensorless permanent-magnet motor drive design,
`
`construction, and testing.
`
`7.
`
`Additional details regarding my qualifications and background can be
`
`found in my CV.
`
`Information Considered
`
`B.
`8. My opinions are based on my years of education, research, and
`
`experience, as well as my study of relevant materials. In forming my opinions, I
`
`have considered the materials identified in this declaration and in the Petition.
`
`9.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by Intellectual Ventures. I may also consider additional
`
`documents and information in forming any necessary opinions, including
`
`documents that may have not yet been provided to me.
`
`10. My analysis of the materials produced in this proceeding is ongoing
`
`and I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`9
`
`9
`
`
`
`
`
`supplement, or amend my opinions stated herein based on new information and on
`
`my continuing analysis of the materials already provided.
`
`II. LEGAL STANDARDS
`A. Legal Standards for Prior Art
`I understand that a patent or other publication must first qualify as
`11.
`
`prior art before it can be used to invalidate a patent claim.
`
`12.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`asserted patent if the date of issuance of the patent is prior to the invention of the
`
`asserted patent. I further understand that a printed publication, such as an article
`
`published in a magazine or trade publication, qualifies as prior art to an asserted
`
`patent if the date of publication is prior to the invention of the asserted patent.
`
`13.
`
`I understand that a U.S. or foreign patent also qualifies as prior art to
`
`an asserted patent if the date of issuance of the patent is more than one year before
`
`the filing date of the asserted patent. I further understand that a printed publication,
`
`such as an article published in a magazine or trade publication, constitutes prior art
`
`to an asserted patent if the publication occurs more than one year before the filing
`
`date of the asserted patent.
`
`14.
`
`I understand that a U.S. patent qualifies as prior art to the asserted
`
`patent if the application for that patent was filed in the United Stated before the
`
`invention of the asserted patent.
`
`10
`
`10
`
`
`
`
`
`B.
`15.
`
`Legal Standards for Anticipation
`
`I understand that documents and materials that qualify as prior art can
`
`be used to invalidate a patent claim via anticipation or obviousness.
`
`16.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation of a patent claim requires a
`
`comparison of the properly construed claim language to the prior art on a
`
`limitation-by-limitation basis.
`
`17.
`
`I understand that a prior art reference “anticipates” an asserted claim,
`
`and thus renders the claim invalid, if all elements of the claim are disclosed in that
`
`prior art reference, either explicitly or inherently (i.e., necessarily present).
`
`18.
`
`I understand that anticipation in an inter partes review must be shown
`
`by a preponderance of the evidence.
`
`C. Legal Standards for Obviousness
`I understand that even if a patent is not anticipated, it is still invalid if
`19.
`
`the differences between the claimed subject matter and the prior art are such that
`
`the subject matter as a whole would have been obvious at the time the invention
`
`was made to a person of ordinary skill in the pertinent art.
`
`20.
`
`I understand that a person of ordinary skill in the art provides a
`
`reference point from which the prior art and claimed invention should be viewed.
`
`11
`
`11
`
`
`
`
`
`This reference point prevents one from using his or her own insight or hindsight in
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`deciding whether a claim is obvious.
`
`21.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors such as (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the asserted claims, (3) the level of
`
`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
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`such as commercial success, long-felt but unresolved needs, failure of others, etc.
`
`22.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand that the prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
`
`but other times the nexus linking two or more prior art references is simple
`
`common sense. I further understand that obviousness analysis recognizes that
`
`market demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`23.
`
`I understand that if a technique has been used to improve one device,
`
`and a person of ordinary skill in the art would recognize that it would improve
`
`similar devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill.
`
`12
`
`12
`
`
`
`
`
`24.
`
`I also understand that practical and common sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a person of
`
`ordinary skill in the art looking to overcome a problem will often be able to fit
`
`together the teachings of multiple publications. I understand that obviousness
`
`analysis therefore takes into account the inferences and creative steps that a person
`
`of ordinary skill in the art would employ under the circumstances.
`
`25.
`
`I understand that a particular combination may be proven obvious
`
`merely by showing that it was obvious to try the combination. For example, when
`
`there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a person of ordinary skill has good
`
`reason to pursue the known options within his or her technical grasp because the
`
`result is likely the product not of innovation but of ordinary skill and common
`
`sense.
`
`26. The combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results. When a
`
`work is available in one field of endeavor, design incentives and other market
`
`forces can prompt variations of it, either in the same field or a different one. If a
`
`person of ordinary skill can implement a predictable variation, the patent claim is
`
`likely obvious.
`
`13
`
`13
`
`
`
`
`
`27.
`
`It is further my understanding that a proper obviousness analysis
`
`focuses on what was known or obvious to a person of ordinary skill in the art, not
`
`just the patentee. Accordingly, I understand that any need or problem known in the
`
`field of endeavor at the time of invention and addressed by the patent can provide a
`
`reason for combining the elements in the manner claimed.
`
`28.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference can be supplied by the common
`
`sense of one of skill in the art.
`
`29.
`
`I understand that secondary indicia of non-obviousness may include
`
`(1) a long felt but unmet need in the prior art that was satisfied by the invention of
`
`the patent; (2) commercial success of processes covered by the patent; (3)
`
`unexpected results achieved by the invention; (4) praise of the invention by others
`
`skilled in the art; (5) taking of licenses under the patent by others; (6) deliberate
`
`copying of the invention; (7) failure of others to find a solution to the long felt
`
`need; and (8) skepticism by experts.
`
`30.
`
`I also understand that there must be a relationship between any such
`
`secondary considerations and the invention. I further understand that
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`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determination.
`
`14
`
`14
`
`
`
`
`
`31.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where a person of ordinary skill in the art having the understanding and
`
`knowledge reflected in the prior art and motivated by the general problem facing
`
`the inventor, would have been led to make the combination of elements recited in
`
`the claims. Under this analysis, the prior art references themselves, or any need or
`
`problem known in the field of endeavor at the time of the invention, can provide a
`
`reason for combining the elements of multiple prior art references in the claimed
`
`manner.
`
`32.
`
`I understand that obviousness in an inter partes review must be shown
`
`by a preponderance of the evidence.
`
`III. OVERVIEW OF THE ’952 PATENT
`Summary of the ’952 Patent
`A.
`33. The ’952 patent is titled “Stator Assembly Made from a Molded Web
`
`of Core Segments and Motor Using Same.” Ex. 1001 at Cover. The ’952 patent is
`
`directed to a stator assembly used in a dynamoelectric machine such as a motor. Id.
`
`at 1:16-20. The ’952 patent states that in “conventional” motors, “stators have been
`
`made by laminating together stamped pieces of steel. These stamped pieces of steel
`
`are generally circular in nature, but also have ‘poles’ extending either inwardly or
`
`outwardly, depending on whether the rotor is on the inside or surrounds the stator.
`
`15
`
`15
`
`
`
`
`
`The stamped pieces are laminated together and then coated with insulation. Wire is
`
`then wound around the poles to form stator windings.” Id. at 1:30-37.
`
`34. The ’952 patent identifies potential drawbacks to these conventional
`
`motor designs (Ex. 1001 at 2:6-63), but also describes various existing prior art
`
`improvements made to the conventional motor designs. Specifically, the ’952
`
`patent describes the following prior art improvements:
`
`• Assembling stators using discrete segments: “Some of these
`
`problems have been addressed by motor manufacturing methods in
`
`which individual stator arc segments are made . . . and . . . [later]
`
`assembled to form a complete stator.” Id. at 3:34-37. The ’952
`
`patent further summarizes prior art patents that teach forming a
`
`complete stator from individual segments. See Id. at 3:46-58.
`
`• Partially encasing stator segments with insulating materials: “U.S.
`
`Patent No. 6,265, 804 to Nitta describes the use of plastic
`
`insulation in combination with segmented stators.” Ex. 1001 at
`
`3:53-54. Nitta teaches that known stator insulating materials
`
`include “polyester” and “polyethylene terephthalate,” two
`
`thermoplastics. Ex. 1012 at 11:5-7.
`
`• Providing stator segments in a continuous strip: As taught by U.S.
`
`Pat. No. 6,167,610 cited in the ’952 patent at 3:64-4:4.
`
`16
`
`16
`
`
`
`
`
`• Overmolding stator assemblies with thermoplastics: “An example
`
`of a spindle motor is shown in U.S. Pat. No. 5,694,268 (Dunfield et
`
`al.) (incorporated herein by reference). Referring to FIG. 5 of this
`
`patent, a stator of the spindle motor is encapsulated with an
`
`overmold 42. The overmolded stator 40 contains openings through
`
`which mounting pins 44 may be inserted for attaching the stator
`
`200 to a base. U.S. Pat. No. 5,672,972 (Viskochil) (incorporated
`
`herein by reference) also discloses a spindle motor having an
`
`overmolded stator.” Ex. 1001 at 3:12-19.
`
`35. The only feature not admitted as appearing in the prior art by the ’952
`
`patent was the limitation that “the phase change material also comprises a bridge
`
`between adjacent segments to link adjacent segments into a continuous strip.” Ex.
`
`1001 at 4:18-19. Figure 5 of the ’952 patent depicts a series of such stator
`
`segments linked together by a phase changing thermoplastic webbing 23:
`
`17
`
`17
`
`
`
`
`
`
`
`Ex. 1001, Fig. 5.
`
`36. According to the ’952 patent, the “stator arc segments 20 are
`
`preferably molded into a continuous strip where the webbing acts as a carrier to
`
`link the segments together.” Ex. 1001 at 6:48-50. Figure 6 of the ’952 patent
`
`depicts deflection of the webbing 23 to allow the gap between adjoining poles
`
`21A, 21B, 21C of the segments 20 to be increased and thus providing more
`
`clearance to wind the wire around the poles. Id. at 6:61-65.
`
`18
`
`18
`
`
`
`
`
`
`
`Ex. 1001, Fig. 6.
`
`37. The webbing 23 is formed of phase change material, which according
`
`to the ’952 patent is “a material that can be used in a liquid phase to envelope the
`
`stator, but which later changes to a solid phase.” Ex. 1001 at 6:1-9. Further, the
`
`’952 patent describes the phase change material as being “preferably a thermally
`
`conductive but non-electrically conductive plastic” including resins such as
`
`“…polybutylene terephthalate, polyethylene terephthalate…” among many others.
`
`Id. at 8:57-9:19. In one relevant embodiment, the stator segments 20 are held in a
`
`toroidal shape by a band:
`
`19
`
`19
`
`
`
`
`
`Ex. 1001 at Fig. 10 and 10:40-50.
`
`38.
`
`In another relevant embodiment, the stator segments 20 are held in a
`
`toroidal shape by being encapsulated in a body 42 of phase change material:
`
`
`
`Ex. 1001 at Fig. 7 and 7:23-36.
`
`
`
`20
`
`20
`
`
`
`
`
`The ’952 Patent Prosecution History
`
`B.
`39. The application for the ’952 patent was filed on March 5, 2003 and
`
`assigned serial number 10/383,219 (the “’219 application”). Ex. 1002 at
`
`Bibliographic Data Sheet. The ’219 application is a continuation-in-part of
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`application number 09/798,511 (the “’511 application”) filed on March 2, 2001,
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`which issued as U.S. Patent No. 7,036,207 (the “’207 patent”, Ex. 1007). Ex. 1001
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`at cover. During the prosecution of the ’219 application, the applicant amended the
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`claims from their original form to overcome various rejections. See, e.g., Ex. 1002
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`at 09/19/2005 and 01/24/2006 Claims. Ultimately, the Examiner allowed the
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`claims of the ’219 application stating that the prior art “does not teach or suggest
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`that the bridge is formed by interconnecting two mating sections formed from the
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`phase change material” and “[t]he prior art does not teach, inter alia, the claimed
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`stator arc segments and flexible carrier of phase change material ‘wherein the
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`flexible carrier links said segments by connecting two mating sections formed in
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`said carrier.’” Ex. 1002 at 10/19/2005 Non-Final Rejection at 5. These limitations
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`appear in independent claims 10 and 14, respectively, of the ’952 patent.1 Ex.
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`1001at 14:7-9 and 14:29-31.
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`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.
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`C. No Claim of the ’952 Patent is Entitled to the Effective Filing Date
`of the ’207 Patent
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`40. As discussed above, the ’952 patent is a continuation-in-part of the
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`’207 patent. But the ’952 patent should not have an effective filing date based on
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`the priority date of the ’207 patent (i.e., March 2, 2001). Instead, it should be its
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`actual filing date (i.e., March 5, 2003).2
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`41. As discussed above, the claims of the ’952 patent were allowed based
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`on the limitations that “the bridge is formed by interconnecting two mating
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`sections formed from the phase change material” and “the flexible carrier links
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`said segments by connecting two mating sections formed in said carrier.” Ex.
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`1002 at 10/19/2005 Non-Final Rejection at 5. These limitations correspond to
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`independent claims 10 and 14, respectively, as disclosed in the ’952 patent; and
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`independent claim 1 also contains a similar limitation that “… the phase change
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`material also comprises a bridge between adjacent segments to link adjacent
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`segments into a continuous strip...” Ex. 1001 at 13:4-7. I have been informed by
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`Petitioner’s counsel that for any claim of the ’952 patent to claim priority to the
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`’207 patent’s earlier-filed application, that earlier-filed application must provide 35
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`U.S.C. § 112 written description support for the limitations regarding connecting
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`stator segments together. I have also been informed by Petitioner’s counsel that it
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`2 I have been informed by Petitioners’ counsel that this inquiry is relevant to establish that
`Calsonic is 102(b) prior art rather than 102(a) prior art.
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`22
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`is well established that a continuing application is entitled to rely on the filing date
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`of an earlier application only with respect to subject matter common to both
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`applications. Further, where independent claims of a continuation-in-part
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`application are not entitled to priority based on an earlier effective filing date of the
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`parent application, claims depending upon such claims also are not entitled to the
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`earlier effective filing date.
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`42. Here, the ’207 patent does not disclose any interconnection between
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`the stator segments, let alone a bridge interconnecting stator segments. Noticeably,
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`the ’207 patent does not contain the terms “bridge,” “interconnect,” “link,” or
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`“connect” in regards to stator segments. The closest disclosure in the ’207 patent
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`regarding the stator segments is that they are “in contact” with each other. See, e.g.,
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`Ex. 1007 at Abstract (“A monolithic body of phase change material substantially
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`encapsulates the conductors and holds the stator arc segments in contact with each
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`other in the toroidal core”); 3:41-43 (“wherein each said stator arc segment has two
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`end surfaces that are each in contact with an end surface of another stator arc
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`segment to form a toroidal core”); 3: 51-52 (“wherein each said end surface of one
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`segment is in contact with an opposing end surface of another segment”); 3:61-63
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`(“wherein each said end surface of one segment is in contact with an opposing end
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`surface of another segment”); 5:43-46 (“To form the toroidal core 17, an end
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`23
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`23
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`surface 16 of each stator arc segment 20 is aligned and brought into contact with a
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`corresponding end surface 19 of another stator arc segment 20”).
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`43. The concepts of connecting links between the stator segments via a
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`bridge or flexible carrier were newly introduced in the ’219 application. For this
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`reason, no claim of the resulting ’952 patent is entitled to the earlier priority date of
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`the ’207 patent. Therefore, the effective date of the ’952 patent is its filing date of
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`March 5, 2003.
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`Person of Ordinary Skill in the Art
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`D.
`44. A person of ordinary skill in the art (POSITA) for the ’952 patent
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`would have a bachelor’s degree in mechanical or electrical engineering, or an
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`equivalent degree, and at least two years of experience in the design of electric
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`motors. In particular, a POSITA would be familiar with the fundamentals of
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`electric motor design and operation, the concept of encapsulating various
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`components in an electric motor, the types of materials that could be used for
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`encapsulation and their thermal and dimensional properties (e.g., CLTE), and
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`thermofluid concepts. A POSITA would further be familiar with techniques for
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`manufacturing encapsulated motors, including injection molding.
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`E. Claim Construction
`I understand from Petitioner’s counsel that in an inter partes review,
`45.
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`claims are to be given their broadest reasonable interpretation in view of the
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`specification.
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`46.
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`I understand that the standards used in a district court to interpret
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`patent claims are different than those used by the PTO in this IPR proceeding. I
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`understand that the main difference is that in this proceeding, the claims are to be
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`read as broad as is reasonable based on the specification. I understand that this may
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`cause the claims to cover certain things in this proceeding that a court might find
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`are not within the scope of the claims in the court proceeding.
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`“a phase change material”
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`47.
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`Independent claims 1, 10 and 14 recite a “phase change material.”
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`According to the ’952 patent’s specification, a “phase change material” means “a
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`material that can be used