UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`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
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,067,952
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................. 5
`I.
`II. COMPLIANCE WITH FORMAL REQUIREMENTS ........................................ 5
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ..................................... 5
`1. Real Party-In-Interest ...................................................................................... 5
`2. Related Matters ................................................................................................ 5
`3. Lead and Back-Up Counsel and Service Information..................................... 6
`B. Proof of Service on the Patent Owner ................................................................ 7
`C. Power of Attorney .............................................................................................. 8
`D. Standing .............................................................................................................. 8
`III. STATEMENT OF PRECISE RELIEF REQUESTED ...................................... 8
`IV. FULL STATEMENT OF REASONS FOR REQUESTED RELIEF ................ 9
`A. Summary of the ’952 Patent ............................................................................... 9
`B. The ’952 Patent Prosecution History ................................................................ 14
`C. No Claim of the ’952 Patent is Entitled to the Effective Filing Date of the
`’207 Patent ....................................................................................................... 15
`D. Person of Ordinary Skill in the Art .................................................................. 17
`E. Claim Construction ........................................................................................... 17
`1. “a phase change material” (claims 1, 10, and 14) ......................................... 18
`2. “the bridge is formed by interconnecting two mating sections formed from
`the phase change material” (claims 9 and 10) ..................................................... 19
`F. Ground 1: Claims 10 and 14 are anticipated under 35 U.S.C. § 102 (b) (pre-
`AIA) by Calsonic ............................................................................................. 20
`1. Calsonic is § 102(b) (pre-AIA) Prior Art ...................................................... 20
`2. Detailed Analysis .......................................................................................... 22
`G. Ground 2: Claims 1, 2, 4, 6, 8, 9, 12, and 13 are rendered obvious under 35
`
`
`ii
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`

`

`
`
`U.S.C. § 103(a) (pre-AIA) by Calsonic in view of Matsushita ....................... 36
`1. Calsonic is § 102(b) (pre-AIA) Prior Art ...................................................... 36
`2. Matsushita is § 102(b) (pre-AIA) Prior Art .................................................. 36
`3. Detailed Analysis .......................................................................................... 37
`H. Ground 3: Claims 10, 12, and 14 are rendered obvious under 35 U.S.C. §
`103(a) (pre-AIA) by DENSO in view of Calsonic .......................................... 56
`1. DENSO is § 102(b) (pre-AIA) Prior Art ....................................................... 56
`2. Calsonic is § 102(b) Prior Art ....................................................................... 57
`3. Detailed Analysis .......................................................................................... 57
`I. Ground 4: Claim 11 is rendered obvious under 35 U.S.C. § 103(a) (pre-AIA)
`by Calsonic in view of Dunfield ...................................................................... 73
`1. Calsonic is § 102(b) (pre-AIA) Prior Art ...................................................... 73
`2. Dunfield is § 102(b) (pre-AIA) Prior Ar ....................................................... 73
`3. Detailed Analysis .......................................................................................... 74
`J. Ground 5: Claims 3 and 5 are rendered obvious under 35 U.S.C. § 103(a)
`(pre-AIA) by Calsonic and Matsushita in view of the Knowledge of a
`POSITA ........................................................................................................... 77
`V. CONCLUSION .................................................................................................... 81
`
`
`
`iii
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`

`

`
`
`
`
`
`
`EXHIBIT LIST
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`
`Description
`U.S. Patent No. 7,067,952 to Neal
`Prosecution File History of U.S. Patent No. 7,067,952
`JP P2000-184635 to Calsonic Kansei Corp. (“Calsonic”)
`Certified English Translation of JP 2000-184635 to Calsonic
`JP S62-138031 to Nippondenso (“DENSO”)
`Certified English Translation of JP S62-138031 to DENSO
`U.S. Patent No. 7,036,207 to Neal
`JP H11-341717 to Matsushita (“Matsushita”)
`Certified English Translation of JP H11-341717 to Matsushita
`U.S. Patent No. 5,694,268 to Dunfield (“Dunfield”)
`Polymer Data Handbook
`U.S. Patent No. 6,265,804 (“Nitta”)
`Declaration of Dr. Thomas R. Brinner
`
`
`iv
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`Petitioners Nidec Corporation and American Honda Motor Co., Inc.
`
`(“Petitioners”) respectfully request inter partes review under 35 U.S.C. § 311 and
`
`37 C.F.R. § 42.100 of claims 1-6 and 8-14 of U.S. Patent No. 7,067,952 (“the ’952
`
`Patent”), titled “Stator Assembly Made From A Molded Web Of Core Segments
`
`And Motor Using Same” (Ex. 1001).
`
`II. COMPLIANCE WITH FORMAL REQUIREMENTS
`
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4)
`
`Real Party-In-Interest
`
`1.
`The real parties in interest are Nidec Corporation and its indirect subsidiary,
`
`Nidec Automotive Motor Americas, LLC. American Honda Motor Co., Inc.,
`
`Honda Motor Co., Ltd., Honda North America, Inc., Honda of America Mfg. Inc.,
`
`Honda Manufacturing of Alabama, LLC, and Honda R&D Americas, Inc. are also
`
`the real parties in interest.
`
`Related Matters
`
`2.
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that the ’952 patent is
`
`the subject of the following cases involving the Petitioners: Intellectual Ventures II
`
`LLC v. Nidec Corporation et al, No. 1:17 -cv-13564 (E.D. Mich.) filed October 31,
`
`2017; Intellectual Ventures II LLC v. Honda Motor Co., Ltd. et al., Case No. 2:17-
`
`
`
` 5
`
`

`

`
`
`cv-07680 (C.D. Cal.) filed Oct. 20, 2017; Certain Thermoplastic-Encapsulated
`
`Electric Motors, Components Thereof, and Products and Vehicles Containing
`
`Same, Inv. No. 337-TA-1073 (Int’l Trade Comm’n), instituted October 11, 2017.
`
`The ’952 patent is the subject of the following Inter Partes Review
`
`proceedings: IPR2017-01497, IPR2017-01631, and IPR2018-00071. This petition
`
`presents the same claims and same grounds as those instituted in IPR2017-01631.
`
`Petitioners seek to join IPR2017-01631, and are filing concurrently with this
`
`Petition a Motion for Joinder with IPR2017-01631.
`
`To the best of Petitioners’ knowledge, the ’952 patent is also involved in the
`
`following litigations:
`
`Name
`
`Number
`
`District
`
`Filed
`
`Intellectual Ventures II LLC v.
`Toyota Motor Corporation, et
`al.al.
`
`1:17-cv-07681
`
`C.D. Cal. October 20,
`2017
`
`Intellectual Ventures II LLC v.
`Mitsuba Corporation, et al.
`
`1:17-cv-13562
`
`E.D. Mich October 31,
`2017
`
`Intellectual Ventures II LLC v.
`Denso Corporation, et al.
`
`1:17-cv-13563
`
`E.D. Mich October 31,
`2017
`
`Lead and Back-Up Counsel and Service Information
`
`3.
`Pursuant to 37 C.F.R. §§ 42.8(b)(3), (b)(4), and 42.10(a), Petitioners
`
`designate the following lead and backup counsel, and agree to electronic service at
`
`
`
` 6
`
`

`

`
`
`the below email addresses:
`
`Lead Counsel for Nidec
`John Flock (Reg. No. 39,670)
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: (212) 425-7200
`Fax: (212) 425-5288
`jflock@andrewskurthkenyon.com
`
`
`Backup Counsel for Nidec
`Michael Turner (Reg. No. 60,314)
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: (212) 425-7200
`Fax: (212) 425-5288
`mturner@andrewskurthkenyon.com
`
`Lead Counsel for Honda
`
`Backup Counsel for Honda
`
`John Caracappa
`Registration No. 43,532
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036-1795
`Tel: (202) 429-6267
`Fax: (202) 429-3902
`jcaracap@steptoe.com
`
`James R. Nuttall
`Registration No. 44,978
`STEPTOE & JOHNSON LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Tel: (312) 577-1260
`Fax: (312) 577-1370
`jnuttall@steptoe.com
`
`Li Guo
`Registration No. 67,887
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036
`Tel: (202) 429-1322
`Fax: (202) 429-3902
`lguo@steptoe.com
`
`
`
`B.
`
`Proof of Service on the Patent Owner
`
`As identified in the attached Certificate of Service, a copy of this Petition in
`
`its entirety is being served to the Patent Owner’s attorney of record at the address
`
`
`
` 7
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`

`

`
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`listed in the USPTO’s records by overnight courier pursuant to 37 C.F.R. § 42.6.
`
`C.
`
`Power of Attorney
`
`A power of attorney is being filed with designation of counsel in accordance
`
`with 37 C.F.R. § 41.10(b).
`
`D.
`
`Standing
`
`Petitioners certify that the ’952 patent is available for inter partes review
`
`and that Petitioners are not barred or estopped from requesting inter partes review
`
`of the ’952 patent challenging the patent claims on the grounds identified in this
`
`petition.
`
`III. STATEMENT OF PRECISE RELIEF REQUESTED
`
`In accordance with 35 U.S.C. § 311, Petitioners request cancelation of
`
`claims 1-6 and 8-14 of the ’952 patent in view of the following grounds:
`
`A. Ground 1: Claims 10 and 14 are anticipated under 35 U.S.C. § 102(b)
`(pre-AIA) by Japanese Patent Application Publication No. 2000-
`184635 (Ex. 1003, certified English translation Ex. 1004
`(“Calsonic”)).
`
`
`B. Ground 2: Claims 1, 2, 4, 6, 8, 9, 12, and 13 are rendered obvious
`under 35 U.S.C. § 103(a) (pre-AIA) by Calsonic in view of Japanese
`Patent Application Publication No. H11-341717 (Ex. 1008, certified
`English translation Ex. 1009 (“Matsushita”)).
`
`
`C. Ground 3: Claims 10, 12, and 14 are rendered obvious under 35
`U.S.C. § 103(a) (pre-AIA) by Japanese Patent Application Publication
`S62-138031 (Ex. 1005, certified English translation Ex. 1006
`
`
`
` 8
`
`

`

`
`
`
`E.
`
`(“DENSO”)) in view of Calsonic.
`
`
`D. Ground 4: Claim 11 is rendered obvious under 35 U.S.C. § 103(a)
`(pre-AIA) by Calsonic in view of U.S. Patent No. 5,694,268 (Ex.
`1010, “Dunfield”).
`
`Ground 5: Claims 3 and 5 are rendered obvious under 35 U.S.C. §
`103(a) (pre-AIA) by Calsonic and Matsushita in view of the
`Knowledge of a Person of Ordinary Skill in the Art.
`
`IV. FULL STATEMENT OF REASONS FOR REQUESTED RELIEF
`
`A.
`
`Summary of the ’952 Patent
`
`The ’952 patent is directed to a stator assembly used in a dynamoelectric
`
`machine such as a motor. Ex. 1001 at 1:16-20. The ’952 patent states that in
`
`“conventional” motors, “stators have been made by laminating together stamped
`
`pieces of steel. These stamped pieces of steel are generally circular in nature, but
`
`also have ‘poles’ extending either inwardly or outwardly, depending on whether
`
`the rotor is on the inside or surrounds the stator. The stamped pieces are laminated
`
`together and then coated with insulation. Wire is then wound around the poles to
`
`form stator windings.” Id. at 1:30-37; Ex. 1013 ¶ 33.
`
`The ’952 patent identifies potential drawbacks to conventional motor
`
`designs (Ex. 1001 at 2:6-63) but also describes various existing prior art
`
`improvements. Ex. 1013 ¶ 34. Specifically, the ’952 patent describes the following
`
`prior art improvements:
`
`• Assembling stators using discrete segments: “Some of these problems
`
`
`
` 9
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`

`

`
`
`have been addressed by motor manufacturing methods in which
`
`individual stator arc segments are made … and … [later] assembled to
`
`form a complete stator.” Ex. 1001 at 3:34-37. See also id. at 3:46-58
`
`(summarizing prior art patents that form a complete stator from
`
`segments).
`
`• Partially encasing stator segments with insulating materials: “U.S. Patent
`
`No. 6,265, 804 to Nitta describes the use of plastic insulation in
`
`combination with segmented stators.” Ex. 1001 at 3:53-54. Nitta teaches
`
`that known stator insulating materials include “polyester” and
`
`“polyethylene terephthalate,” two thermoplastics. Ex. 1012 at 11:5-7.
`
`• Providing stator segments in a continuous strip: As taught by U.S. Pat.
`
`No. 6,167,610. Ex. 1001 at 3:64-4:4.
`
`• Overmolding stator assemblies with thermoplastics: “An example of a
`
`spindle motor is shown in U.S. Pat. No. 5,694,268 (Dunfield et al.)
`
`(incorporated herein by reference). Referring to FIG. 5 of this patent, a
`
`stator of the spindle motor is encapsulated with an overmold 42. The
`
`overmolded stator 40 contains openings through which mounting pins 44
`
`may be inserted for attaching the stator 200 to a base. U.S. Pat. No.
`
`,672,972 (Viskochil) (incorporated herein by reference) also discloses a
`
`spindle motor having an overmolded stator.” Ex. 1001 ay 3:12-19.
`
`
`10
`
`

`

`
`
`The only feature not admitted as prior art by the ’952 patent was “the phase
`
`change material also comprises a bridge between adjacent segments to link
`
`adjacent segments into a continuous strip.” Ex. 1001 at 4:18-19; Ex. 1013 ¶ 35.
`
`Figure 5 of the ’952 patent depicts a series of such stator segments linked together
`
`by a phase changing thermoplastic webbing 23:
`
`Ex. 1001, Fig. 5.
`
`
`
`
`
`The “stator arc segments 20 are preferably molded into a continuous strip
`
`where the webbing acts as a carrier to link the segments together.” Ex. 1001 at
`
`6:48-50. Figure 6 of the ’952 patent depicts deflection of the webbing 23 to allow
`
`the gap between adjoining poles 21A, 21B, 21C of the segments 20 to be increased
`
`and thus providing more clearance to wind the wire around the poles. Id. at 6:61-
`
`65; Ex. 1013 ¶ 36.
`
`
`11
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`

`

`
`
`
`
`Ex. 1001, Fig. 6.
`
`
`
`The webbing 23 is formed of phase change material, which is “a material
`
`that can be used in a liquid phase to envelope the stator, but which later changes to
`
`a solid phase.” Ex. 1001 at 6:1-9. Further, the ’952 patent describes the phase
`
`change material as being “preferably a thermally conductive but non-electrically
`
`conductive plastic” including resins such as “… polybutylene terephthalate,
`
`polyethylene terephthalate…” among others. Id. at 8:57-9:19; Ex. 1013 ¶ 37. In
`
`one embodiment, the stator segments 20 are held in a toroidal shape by a band:
`
`
`12
`
`

`

`
`
`
`
`Ex. 1001 at Fig. 10 and 10:40-50; Ex. 1013 ¶ 37.
`
`In another embodiment, the segments 20 are held in a toroidal shape by
`
`being encapsulated in a body 42 of phase change material:
`
`Ex. 1001 at Fig. 7, 7:23-36; Ex. 1013 ¶ 38.
`
`
`
`
`13
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`

`

`
`
`B.
`
`The ’952 Patent Prosecution History
`
`The application for the ’952 patent was filed on March 5, 2003 and assigned
`
`serial number 10/383,219 (the “’219 application”). Ex. 1002 at Bibliographic Data
`
`Sheet. The ’219 application is a continuation-in-part of application number
`
`09/798,511 (the “’511 application”) filed on March 2, 2001, which issued as U.S.
`
`Patent No. 7,036,207 (the “’207 patent”, Ex. 1007). Ex. 1001 at cover. During the
`
`prosecution of the ’219 application, the applicant amended the claims to overcome
`
`various rejections. See, e.g., Ex. 1002 at 09/19/2005 Claims and 01/24/2006
`
`Claims. Ultimately, the Examiner allowed the claims of the ’219 application
`
`stating that the prior art “does not teach or suggest that the bridge is formed by
`
`interconnecting two mating sections formed from the phase change material” and
`
`“[t]he prior art does not teach, inter alia, the claimed stator arc segments and
`
`flexible carrier of phase change material ‘wherein the flexible carrier links said
`
`segments by connecting two mating sections formed in said carrier.’” Ex. 1002 at
`
`10/19/2005 Non-Final Rejection at 5. These limitations appear in independent
`
`claims 10 and 14, respectively, of the ’952 patent.1 Ex. 1001 at 14:7-9 and 14:29-
`
`31; Ex. 1013 ¶ 39.
`
`1 Independent claim 1 contains a similar limitation that “… the phase change
`
`material also comprises a bridge between adjacent segments to link adjacent
`
`segments into a continuous strip...” Ex. 1001 at 13:4-7; Ex. 1014 n. 1.
`
`
`14
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`

`

`
`
`C. No Claim of the ’952 Patent is Entitled to the Effective Filing
`Date of the ’207 Patent
`
`The ’952 patent is a continuation-in-part of the ’207 patent. But the ’952
`
`patent should not have an effective filing date based on the priority date of the ’207
`
`patent (i.e., March 2, 2001). Instead, it should be its actual filing date (i.e., March
`5, 2003).2 Ex. 1013 ¶ 40.
`
`The claims of the ’952 patent were allowed based on the limitations that “the
`
`bridge is formed by interconnecting two mating sections formed from the phase
`
`change material” and “the flexible carrier links said segments by connecting two
`
`mating sections formed in said carrier.” Ex. 1002 at 10/19/2005 Non-Final
`
`Rejection at 5. These limitations correspond to independent claims 10 and 14,
`
`respectively, of the ’952 patent; and independent claim 1 also contains a similar
`
`limitation that “… the phase change material also comprises a bridge between
`
`adjacent segments to link adjacent segments into a continuous strip...” Ex. 1001 at
`
`13:4-7; Ex. 1013 ¶ 41. Thus, for any claim of the ’952 patent to claim priority to
`
`the ’207 patent’s earlier-filed application, that earlier-filed application must
`
`provide 35 U.S.C. § 112 written description support for the limitations regarding
`
`connecting stator segments together. See New Railhead Mfg., L.L.C v.
`
`
`2 This inquiry is relevant to establish that Calsonic is 102(b) prior art rather than
`
`102(a) prior art.
`
`
`15
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`

`

`
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`VermeerMfg. Co., 298 F.3d 1290, 1295 (Fed. Cir. 2002). It is well established that
`
`“a continuing application is entitled to rely on the filing date of an earlier
`
`application only with respect to subject matter common to both applications.”
`
`Transco Prods. v. Performance Contr., Inc., 38 F.3d 551, 557 n.6 (Fed. Cir. 1994).
`
`Further, where independent claims of a continuation-in-part application are not
`
`entitled to priority of an earlier effective filing date of the parent application,
`
`claims depending upon such claims also are not entitled to the earlier effective
`
`filing date. Augustine Medical, Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1303
`
`(Fed. Cir. 1999); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir.
`
`2008).
`
`Here, the ’207 patent does not disclose any interconnection between the
`
`stator segments, let alone a bridge interconnecting stator segments. Noticeably, the
`
`’207 patent does not contain the terms “bridge,” “interconnect,” “link,” or
`
`“connect” in regards to stator segments. Ex. 1013 ¶ 42. The closest disclosure in
`
`the ’207 patent regarding the stator segments is that they are “in contact” with each
`
`other. See, e.g., Ex. 1007 at Abstract;; 3:41-43; 3: 51-52; 3:61-63; 5:43-46; Ex.
`
`1013 ¶ 42.
`
`The concepts of connecting links between the stator segments via a bridge or
`
`flexible carrier were newly introduced in the ’219 application. Accordingly, no
`
`claim of the’952 patent is entitled to the earlier priority date of the ’207 patent.
`
`
`16
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`

`

`
`
`Therefore, the effective date of the ’952 patent is its filing date of March 5, 2003.
`
`Ex. 1013 ¶ 43.
`
`D.
`
`Person of Ordinary Skill in the Art
`
`The level of skill in the art is apparent from the cited art. See In re GPAC
`
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioners submit that a person of
`
`ordinary skill in the art (“POSITA”) for the ’952 patent would have a bachelor’s
`
`degree in mechanical or electrical engineering, or an equivalent degree, and at least
`
`two years of experience in the design of electric motors. In particular, a POSITA
`
`would be familiar with the fundamentals of electric motor design and operation,
`
`the concept of encapsulating various components in an electric motor, the types of
`
`materials that could be used for encapsulation and their thermal and dimensional
`
`properties (e.g., CLTE), and thermofluid concepts. A POSITA would further be
`
`familiar with techniques for manufacturing encapsulated motors, including
`
`injection molding. Ex. 1013 ¶ 44.
`
`E. Claim Construction
`
`A claim subject to inter partes review receives the “broadest reasonable
`
`interpretation” (“BRI”) in light of the specification. 37 C.F.R. § 42.100(b).
`
`Because the BRI standard is different from that used in district court litigation,
`
`PPC Broadband, Inc., v. Corning Optical Comms. RF, LLC, 815 F.3d 747, 756
`
`
`17
`
`

`

`
`
`(Fed. Cir. 2016), the interpretation of the claims presented either implicitly or
`
`explicitly herein should not be viewed as constituting Petitioners’ own
`
`interpretation and/or construction of such claims for the purposes of the underlying
`
`litigation. Instead, such constructions in this petition should be viewed only as
`
`constituting an interpretation of the claims under the “broadest reasonable
`
`construction” standard and for the purpose of this petition.
`
`For purposes of this IPR petition only, Petitioners accept that the remaining
`
`claim terms of the ’952 patent assume their ordinary and customary meaning,
`
`consistent with the specification, that they would have to a POSITA at the time of
`
`the alleged invention, and Petitioners do not contend that any remaining claim term
`
`requires specific construction.
`
`“a phase change material” (claims 1, 10, and 14)
`
`1.
`Independent claims 1, 10 and 14 recite a “phase change material.”
`
`According to the ’952 patent’s specification, a “phase change material” means “a
`
`material that can be used in a liquid phase to envelop[] the stator, but which later
`
`changes to a solid phase.” Ex. 1001, 6:6-9. Two types of phase change materials
`
`are identified as “most useful in practicing the invention”: “temperature activated
`
`and chemically activated.” Id., 6:9-11; Ex. 1013 ¶ 47.
`
`“The most preferred temperature activated phase change materials,”
`
`according to the patent, “are thermoplastics,” especially thermoplastics that “will
`
`
`18
`
`

`

`
`
`become molten at a temperature at which it is injection-moldable, and then will be
`
`solid at normal operating temperatures for the motor.” Ex. 1001 at 6:20-24. The
`
`’952 patent specifically identifies numerous “suitable thermoplastic resins,”
`
`including plastics such as “6,6-polyamide, … polybutylene terephthalate,
`
`polyethylene terephthalate, … aromatic polyesters, … polypropylene,
`
`polyethylene, … polystyrene, styrene copolymer, mixtures and graft copolymers of
`
`styrene and rubber,” and several other examples. Id. at 9:2-19; Ex. 1013 ¶ 48.
`
`In view of the foregoing disclosures, a POSITA would understand a “phase
`
`change material,” under the broadest reasonable interpretation, to mean “a material
`
`that can be used in a liquid phase to envelop[] the stator, but which later changes to
`
`a solid phase.” Ex. 1013 ¶ 49. A “phase change material” broadly encompasses at
`
`least thermosetting materials, thermoplastics, polypropylene, polybutylene
`
`terephthalate, and polyethylene terephthalate. Id.
`
`2.
`
`“the bridge is formed by interconnecting two mating
`sections formed from the phase change material” (claims
`9 and 10)
`
`The ’952 patent’s written description does not define “interconnecting two
`
`mating sections” or “mating sections.” These terms only appear in the claims.
`
`Moreover, this limitation includes a product-by-process limitation due to the term
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`“formed by.” As a matter of law, “even though product-by-process claims are
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`limited by and defined by the process, determination of patentability is based on
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`19
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`the product itself. The patentability of a product does not depend on its method of
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`production. If the product in the product-by-process claim is the same as or
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`obvious from a product of the prior art, the claim is unpatentable even though the
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`prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698
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`(Fed. Cir. 1985).
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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. Ex. 1013 ¶ 50. This construction is
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`consistent with the construction applied by the Examiner during prosecution. Ex.
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`1002 at 45 [10/19/2005 Office Action at 5] (allowing the claim because “Hsu’s
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`bridges 144 do not comprise two mating sections interconnected.”).
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`F. Ground 1: Claims 10 and 14 are anticipated under 35 U.S.C. §
`102 (b) (pre-AIA) by Calsonic
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`Calsonic is § 102(b) (pre-AIA) Prior Art
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`1.
`Calsonic was filed on December 18, 1998 and published on June 30, 2000.
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`Ex. 1004 at cover; Ex. 1013 ¶ 52. Calsonic is prior art to the ’952 Patent under 35
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`U.S.C. § 102 (b) (pre-AIA).
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`Calsonic discloses a motor having a stator which is divided into core blocks.
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`Ex. 1004 at cover. These divided core blocks are held together by “a divided core
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`holding member 12 in a form with a plurality of holding portions 13, holding the
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`divided core blocks 10 in an arranged form, sequentially coupled to each other via
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`deformable portions 12a that are deformable.” Id.; Ex. 1013 ¶ 53. Figures 4 and 5
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`of Calsonic depict the stator core blocks 10 being connected via the deformable
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`portions 12a:
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`Ex. 1004, Fig. 4.
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`Ex. 1004, Fig. 5.
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`
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`The motor disclosed in Calsonic overcomes the known problem of limited
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`wire winding space between the stator core blocks, which is the same as a problem
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`the ’952 patent sought to overcome. Id. at [0004]; cf. Ex. 1001 at 2:19-28. As
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`depicted in Calsonic’s Figures 4 and 5, by using the deformable portion 12a the
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`“operation of attaching the wound coil is less likely to be hindered…” Ex. 1004 at
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`[0013]; Ex. 1013 ¶ 54.
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`
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`As detailed below, Calsonic discloses or teaches all of the challenged
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`claims’ limitations. Ex. 1013 ¶ 55.
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`2.
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`Detailed Analysis
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`Claim 10
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`10.a “A stator assembly, comprising:”
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`The preamble is not a claim limitation because the body of the claim defines
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`a complete and operative system, and nothing in the body of the claim relies on the
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`preamble for antecedent basis. Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc.,
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`289 F.3d 801, 809 (Fed.Cir.2002). Nevertheless, Calsonic discloses the preamble.
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`Ex. 1013 ¶ 56.
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`For example, Calsonic discloses that its invention “relates to a motor, and
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`particularly relates to a structure of a stator of an inner rotor type motor.” Ex.
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`1004 at [0001] (emphasis added); Ex. 1013 ¶ 57.
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`10.b “a) a plurality of discrete stator segments each at least partially
`encased with a phase change material”
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`Calsonic discloses a plurality of discrete stator segments, each at least
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`partially encased with a phase change material. For example, Calsonic describes
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`that its “stator core 6 includes: a plurality of (eight in Fig. 2) divided core blocks
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`10 each formed by stacking and integrating a plurality of divided core plates 11;
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`and a pair of divided core holding members 12 that integrally holds a divided core
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`block 10 in an annular arrangement.” Ex. 1004 at [0023]; Ex. 1013 ¶ 58.
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`
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`Ex. 1004, Fig. 2.
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`
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`Further, Calsonic’s divided core blocks correspond to a plurality of discrete
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`stator segments: “divided core blocks 54 as illustrated in Fig. 9 are formed with a
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`plurality of divided pieces (divided core plates) 53, formed by dividing (splitting)
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`the core plate 52 illustrated in Fig. 8 at portions of the yoke portion 52a each being
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`at approximately the middle of a section between each two adjacent salient poles
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`52b, stacked and integrated.” Ex. 1004 at [0005]; Ex. 1013 ¶ 59.
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`
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`Ex. 1004, Figs. 8 and 9.
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`
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`Calsonic also discloses that the divided core blocks are each at least partially
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`encased with a phase change material. For example, “[a]s illustrated in Fig. 4 to
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`Fig. 7, the divided core holding member 12 includes a plurality of holding portions
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`13 for holding the divided core block 10 that are arranged on a single line and are
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`coupled to each other in series via thin deformable portions 12a. The adjacent
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`holding portions 13 can pivot with each other with the deformable portion 12a
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`deformed.” Id. at [0027]. “The holding portions 13 of the divided core holding
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`member 12 each include … and is integrally formed by molding using an
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`insulating thermoset resin material. Examples of the resin material that can be
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`used for the divided core holding member 12 include polybutylene terephthalate
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`24
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`(PBT) and polyethylene terephthalate (PET).” Id. at [0028] (emphasis added).
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`Polybutylene terephthalate and polyethylene terephthalate are thermoplastic resins
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`identified in the ’952 patent as being phase change materials. Ex. 1001 at 9:3-19;
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`Ex. 1013 ¶ 60.
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`
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`Furthermore, assembling stators from discrete segments and partially
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`encasing with insulating material was acknowledged as known in the art. See §
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`IV.A; Ex. 1013 ¶ 61.
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`10.c “wherein the phase change material also comprises a bridge
`between adjacent segments to link adjacent segments into a
`continuous strip”
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`Calsonic discloses that the phase change material also comprises a bridge
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`
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`between adjacent segments to link adjacent segments into a continuous strip. For
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`example, “the plurality of divided core blocks are prepared, and are held by the
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`divided core holding member with the deformable portions deformed as
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`appropriate to achieve an easier operation.” Ex. 1001 at [0010]. Calsonic discloses
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`that the holding member holds the “divided core blocks in an arranged form,
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`sequentially coupled to each other via deformable portions that are deformable.”
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`Id. at [0009] (emphasis added). “As illustrated in Fig. 4 to Fig. 7, the divided core
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`holding member 12 includes a plurality of holding portions 13 for holding the
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`divided core block 10 that are arranged on a single line and are coupled to each
`
`other in series via thin deformable portions 12a. The adjacent holding portions 13
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`25
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`can pivot with each other with the deformable portion 12a deformed.” Id. at
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`[0027] (emphasis added). The deformable portions are made from a resin material:
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`“[t]he holding portions 13 of the divided core holding member 12 each include …
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`and is integrally formed by molding using an insulating thermoset resin material.
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`Examples of the resin material that can be used for the divided core holding
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`member 12 include polybutylene terephthalate (PBT) and polyethylene
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`terephthalate (PET).” Id. at [0028] (emphasis added). Ex. 1013 ¶ 62. As discussed
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`for limitation 10.b, the materials disclosed in Calsonic are phase change materials.
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`Id.
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`
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`Calsonic’s Figure 4 depicts the divided core holding member 12 with
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`deformable portions 12a, which correspond to a bridge linking mating sections of
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`adjacent divided cores into a continuous strip:
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`Ex. 1004, Fig. 4; Ex. 1013 ¶ 63.
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`
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`“The plurality of divided core blocks 10 are held by being clamped between
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`the pair of divided core holding member 12 in an upper and lower direction, and
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`are in the state where the holding portions 13 are, for example, substantially
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`arranged on a single line by being pivoted with the deformable portions 12a
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`deformed as illustrated in Fig. 4 for the sake of workability. In this state, the coil is
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`wound around the salient pole 11b (9), covered by the covering portions 13b and
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`13e of the divided core block 10 to be insulated, with a dedicated or a general
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`purpose winder or manually.” Ex. 1004 at [0030] (emphasis added); Ex. 1013 ¶ 64.
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`
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`Furthermore, providing stator segments in a strip configuration was
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`acknowledged as known in the art. See § IV.A; Ex. 1013 ¶ 65.
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`10.d “wherein the bridge is formed by interconnecting two mating
`sections formed from the phase change