Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`Paper 8
`Date: June 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`VALEO NORTH AMERICA, INC. and VALEO EMBRAYAGES,
`Petitioner,
`
`v.
`
`SCHAEFFLER TECHNOLOGIES AG & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00441
`Patent 8,573,374 B2
`____________
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and
`JAMES J. MAYBERRY Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108(a)
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`Paper 8
`Date: June 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`VALEO NORTH AMERICA, INC. and VALEO EMBRAYAGES,
`Petitioner,
`
`v.
`
`SCHAEFFLER TECHNOLOGIES AG & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00441
`Patent 8,573,374 B2
`____________
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and
`JAMES J. MAYBERRY Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108(a)
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`
`I. INTRODUCTION
`
`A. Summary
`
`
`
`Valeo North America, Inc. and Valeo Embrayages (“Petitioner”) filed
`
`a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–16
`
`of U.S. Patent No. 8,573,374 B2 (Ex. 1001, “the ’374 patent”). Schaeffler
`
`Technologies, AG & Co. KG (“Patent Owner”) filed a Preliminary
`
`Response. Paper 7, “Prelim. Resp.”
`
`An inter partes review may not be instituted unless the information
`
`presented in the Petition shows “there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we
`
`conclude that the information presented in the Petition and Patent Owner
`
`Preliminary Response establishes a reasonable likelihood that Petitioner will
`
`prevail in showing the unpatentability of claims 1–16. Accordingly,
`
`pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we institute an inter
`
`partes review as to those claims.
`
`B. Related Matters
`
`The ’374 patent is the subject of another petition seeking institution of
`
`an inter partes review: IPR2017-00442. Pet. 1; Paper 3, 2.1
`
`C. The ’374 patent
`
`The ’374 patent is titled “Hydrodynamic Torque Converter.” Ex.
`
`1001, (54). The ’374 patent describes the invention as relating “to a
`
`hydrodynamic torque converter having an impeller wheel, a turbine wheel
`
`
`1 A Decision on Institution in IPR2017-00442 is entered concurrently with
`the present Decision.
`
`2
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`and an oscillation damper which is accommodated in the converter housing,
`
`
`
`and a converter lockup clutch.” Id. at (57). “Such torque converters are
`
`particularly used in vehicle drivetrains, between an internal combustion
`
`engine and transmission.” Id. at 1:23–25.
`
`The figure of the ’374 patent is reproduced below:
`
`
`
`The figure above “shows a hydrodynamic torque converter disposed
`
`about a rotation axis in a half-sectional view.” Id. at 3:52–55. Torque
`
`converter 1 includes torsional vibration absorber 17, torsional vibration
`
`damper 16, damper stage 14, and damper stage 15. Id. at 4:37–38; 5:3–5.
`
`
`
`3
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`The ’374 patent characterizes damper stages 14, 15 as components of a
`
`
`
`“multi-function damper” that are connected with one another by “single-
`
`piece disk part 25.” Id. at 4:37–42. The ’374 patent also describes the
`
`following: “[t]hrough the single-piece connection of the mounting part 37
`
`with the input part 35 of the damper stage 15 and the output part 34 of the
`
`damper stage [14]2 by means of the rivets 33 is the centrifugal force
`
`pendulum 38 assigned parallel to both damper stages.” Id. at 5:11–16.
`
`D. Claims
`
`Claim 1 is independent. Claims 2–16 ultimately depend from claim 1.
`
`Claim 1 is reproduced below:
`
`A hydrodynamic torque converter (1) with a turbine (7)
`1.
`driven by an impeller (6) as well as housing (3) in which a
`torsional vibration damper (16) with multiple of damper stages
`(14, 15), a torsional vibration absorber (17) and a lock-up clutch
`(13) are additionally installed, wherein a first damper stage (14)
`and a second damper stage (15) are disposed between the lock-
`up clutch (13) and an output hub (12), the second damper stage
`(15) is disposed between the turbine (7) and the output hub (12)
`and the torsional vibration absorber (17) is parallel to both
`damper stages (14, 15).
`
`
`
`
`
`
`2 Although the ’374 patent lists reference character “15” with respect to this
`damper stage, it is evident from the figure that such is a typographical error
`and that reference character “14” was intended.
`
`4
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`
`E. The Prior Art
`
`Petitioner relies on the following prior art references:
`
`Reference
`
`Date
`
`
`
`Exhibit
`No.
`
`PCT Publication No. WO 2004/018897
`to Haller et al. (“Haller”)
`
`U.S. Patent No. 5,884,735 to
`Eckel et al. (“Eckel”)
`
`U.S. Patent No. 7,073,646 B2 to Sasse et
`al. (“Sasse”)
`
`U.S. Patent No. 6,053,292 to Macdonald
`(“Macdonald”)
`
`U.S. Patent Application Publication No.
`US 2007/0235277 A1 to
` Heuler et al. (“Heuler”)
`
`German Published Patent Application
`Nos. DE 196 54 894 and DE 196 54 915;
`and German internal priority document
`No. DE 196 09 553
`(collectively “Schierling”)
`
`
`
`
`
`
`
`Mar. 2004
`
`
`
`10043
`
`Mar. 1999
`
`July 2006
`
`Apr. 2000
`
`
`Oct. 2007
`
`
`Mar. 1996
`
`
`1011
`
`
`1003
`
`
`1026
`
`
`1018
`
`
`
`1022–
`10244
`
`
`3 Exhibit 1004 also includes a certified English translation of the underlying
`German document. In this Decision, citations to Exhibit 1004 are to the
`English translation.
`
`4 Exhibits 1022–1024 also include a certified English translation of the
`underlying German document.
`
`5
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`
`F. Asserted Grounds of Unpatentability
`
`
`
`Petitioner challenges claims 1–16 under 35 U.S.C. based on the
`
`following grounds:
`
`Reference(s)
`
`Basis
`
`
`Challenged Claims
`
`Haller
`
`102(b)
`
`1 and 3
`
`Haller and Eckel
`
`103
`
`4
`
`Sasse and Haller
`
`103
`
`1–3, 8–10, and 14–16
`
`Sasse, Haller, and Eckel
`
`103
`
`4–7
`
`Sasse, Haller, and Macdonald
`
`103
`
`11–13
`
`Sasse, Haller, and Heuler
`
`103
`
`2 and 10
`
`Heuler and Haller
`
`103
`
`1–3, 10, and 14–16
`
`Heuler, Haller, and Eckel
`
`103
`
`4
`
`Heuler, Haller, Macdonald, and
`Schierling
`
`103
`
`11–13
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, a claim in an unexpired patent shall be given
`
`its broadest reasonable construction in light of the specification of the patent
`
`6
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`in which it appears. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v.
`
`
`
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`reasonable interpretation standard). Consistent with the broadest reasonable
`
`construction, claim terms are presumed to have their ordinary and customary
`
`meaning as understood by a person of ordinary skill in the art in the context
`
`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Nevertheless, a “claim term will not receive its
`
`ordinary meaning if the patentee acted as his own lexicographer and clearly
`
`set forth a definition of the disputed claim term in either the specification or
`
`prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`
`1366 (Fed. Cir. 2002).
`
`
`
`Here, Petitioner offers express claim constructions for several claim
`
`terms of the ’374 patent. Pet. 12–13. For purpose of this Decision, we only
`
`consider expressly (1) the construction of “torsional vibration absorber,” and
`
`(2) the requirement of a torsional vibration absorber that “is parallel to both
`
`damper stages.”
`
`1. “torsional vibration absorber”
`
`
`
`Petitioner contends that “torsional vibration absorber” means “a
`
`component or device designed to absorb torsional vibrations,” which
`
`“includes movable masses disposed on mounting parts.” Pet. 12. In support
`
`of that meaning, Petition points in part to content of the ’374 patent at
`
`column 1, lines 43–45 and the declaration testimony of Dr. Steven Shaw
`
`(Ex. 1002). Id. Patent Owner expresses disagreement with Petitioner’s
`
`proposed construction. Prelim. Resp. 3–6. According to Patent Owner, the
`
`term instead means “masses disposed movably on mounting parts to absorb
`
`torsional vibrations.” Id. at 4.
`
`7
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`
`
`Although, on its face, the constructions offered by the parties are
`
`
`
`similar, Patent Owner takes issue with Petitioner’s proffered meaning on the
`
`theory that generally designating a “component” that absorbs torsional
`
`vibrations is too broad, as it may encompass a damper, which, according to
`
`Patent Owner, is recognized as something distinct from an absorber. Id. at
`
`3–6. Patent Owner, thus, proposes to limit a torsional vibration absorber to
`
`particular structures regarded as “masses disposed movably on mounting
`
`parts,” which, presumably in Patent Owner’s view, excludes dampers.
`
`We are persuaded that the Specification of the ’374 patent discloses
`
`that Patent Owner’s “masses” are an example of a torsional vibration
`
`absorber. See, e.g., Ex. 1001, 1:43–45 (“[a]nother form of reducing
`
`torsional vibrations is the absorber principle by which movable masses are
`
`disposed on mounting parts . . . .”) We are unpersuaded, however, that the
`
`Specification discloses that torsional vibrations absorbers are limited to
`
`those masses. In that respect, the noted “masses” are seemingly presented as
`
`simply one example embodying the absorber principle.
`
`We also are cognizant of the Patent Owner’s position that such
`
`absorbers exclude damper structures. Patent Owner bases that position on:
`
`(1) portions of the Specification that refer to “torsional vibration dampers”
`
`and “[a]nother form of reducing torsional vibrations” being the “absorber
`
`principle” (Prelim. Resp. 4–5); and (2) general citations to Ex. 2001
`
`describing vibration damping and absorbing structures. See Prelim. Resp. 5–
`
`6 (citing Ex. 1001 1:37–50 and Ex. 2001, pp. 213–16, 219–22, 87–93, and
`
`93–105). With respect to item (1), we are unpersuaded that description of an
`
`absorber principle as “another form” of torsional vibration reduction
`
`compels a conclusion that a damper is fundamentally distinct from an
`
`8
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`absorber. With respect to item (2), Patent Owner does not adequately
`
`
`
`explain why the general citations to Exhibit 2001 mandate the conclusion
`
`advanced, i.e., that “it is manifestly improper” to equate dampers and
`
`absorbers. Prelim. Resp. 5. Indeed, one section of Ex. 2001 identified by
`
`Patent Owner is titled “The Damped Vibration Absorber” (Ex. 2001, 93-
`
`105), which seemingly does not support Patent Owner’s proposition that
`
`absorbing and damping are somehow mutually exclusive. Id. at 6.
`
`Although the record does generally suggest that, in some cases,
`
`“absorbers” and “dampers” are identified separately, it is not apparent, at
`
`this time, that the use, in some cases, of separate terms compels a conclusion
`
`that a device identified as an “absorber” excludes a damper structure. On
`
`the present record, Patent Owner has not persuaded us that “torsional
`
`vibration absorbers” are limited only to moveable masses disposed on
`
`mounting parts, or that a structure regarded as a “damper” is necessarily
`
`precluded from being incorporated in a torsional vibration absorber.
`
`Accordingly, for purpose of this Decision only, we construe a
`
`“torsional vibration absorber” as a component or device designed to absorb
`
`torsional vibrations, which includes movable masses disposed on mounting
`
`parts.
`
`2. “is parallel to both damper stages”
`
`Claim 1 sets forth that “the torsional vibration absorber (17) is parallel
`
`to both damper stages (14, 15).” Petitioner contends that the “parallel to”
`
`aspect of that feature means “does not transfer torque generated by the
`
`engine along the power path but rotates with.” Pet. 12. In support of that
`
`construction, Petitioner points in-part to a portion of the ’374 patent and the
`
`declaration testimony of Dr. Shaw (Ex. 1002). The referenced portion of the
`
`9
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`’374 patent reads: “[t]hrough the single-piece connection of the mounting
`
`
`
`part 37 with the input part 35 of the damper stage 15 and the output part 34
`
`of the damper stage [14] by means of the rivets 33 is the centrifugal force
`
`pendulum 38 assigned parallel to both damper stages.” Ex. 1001, 5:11–16.
`
`We disagree with Petitioner. Notably, the above-noted quotation does
`
`not refer to the transfer of torque in connection with an engine, nor does it
`
`relate torque with the rotation of any components. Dr. Shaw also does not
`
`offer any further illumination for his testimony (Ex. 1002 ¶ 23) that the
`
`identified quotation supports the claim construction advocated by Petitioner.
`
`Patent Owner proposes a different construction of the claim phrase at
`
`issue based on the very same passage of the Specification of the ’374 patent
`
`relied upon by Petitioner. Patent Owner contends that, in light of that
`
`passage, the claims require a torsional vibration absorber that “is connected
`
`via a single piece connection to the input of the second stage and to the
`
`output of the first stage.” Prelim. Resp. 6–7.
`
`Patent Owner’s proposed construction is largely consistent with the
`
`cited portion of the Specification. In that respect, based on that portion, a
`
`vibrational torsional absorber is regarded as “parallel” to a pair of damper
`
`stages when the input of one of the stages is connected to the output of the
`
`other stage. We say “largely” consistent, however, because although the
`
`noted section of the Specification does refer to an exemplary “single piece”
`
`connection, we are unpersuaded that such reference alone mandates that all
`
`parallel connection must be “single piece” in every instance. Accordingly,
`
`in considering the record presently before us, and for purpose of this
`
`Decision, we construe the limitation of a torsional vibrational absorber that
`
`10
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`“is parallel to both damper stages” as requiring that the input of one damper
`
`
`
`stage is connected to the output of a second damper stage.
`
`3. Remaining claim terms
`
`We have given all remaining claim terms their ordinary and
`
`customary meaning, and determine that it is not necessary, at this time, to
`
`make that meaning explicit for any other term. See Vivid Techs., Inc. v. Am.
`
`Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed.Cir.1999) (“[O]nly those terms
`
`need be construed that are in controversy, and only to the extent necessary to
`
`resolve the controversy.”).
`
`B. The Grounds Based on Sasse
`
`Petitioner proposes four grounds of unpatentability, for the claims of
`
`the ’374 patent, based on Sasse taken with one or more of Haller, Eckel,
`
`Macdonald, and Heuler.
`
`1. Overview of Sasse
`
`
`
`Sasse is titled “Torsional Vibration Damper.” Ex. 1003, (54). Sasse
`
`characterizes its invention as addressing “the task of designing a torsional
`
`vibration damper in a bridging clutch of a hydrodynamic clutch arrangement
`
`in such a way that the undesirable noises are no longer perceptible.” Id. at
`
`3:17–20. Sasse’s Abstract sets forth the following:
`
`A torsional vibration damper on the bridging clutch of a
`
`hydrodynamic clutch arrange has a first connecting device,
`which can be brought into working connection with the clutch
`housing and with a drive-side transmission element. The drive-
`side transmission element is connected via first energy-storage
`devices to an intermediate transmission element. The torsional
`vibration damper also has a second connecting device for
`establishing a working connection via second energy-storage
`devices between the intermediate transmission element and a
`
`11
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`
`takeoff-side transmission element, which is connected to a
`takeoff-side
`component of
`the hydrodynamic
`clutch
`arrangement. The intermediate transmission element accepts a
`mass element, located operatively between the two connecting
`devices.
`
`
`
`Id. at (57).
`
`
`
`Sasse’s Figure 1 is reproduced below:
`
`
`
`
`
`Sasse’s Figure 1 above “shows the upper half of a longitudinal cross
`
`section through a hydrodynamic clutch arrangement with a bridging clutch
`
`and a torsional vibration damper, in which a turbine wheel, serving as a mass
`
`element, acts effectively between two connecting devices arranged with a
`
`radial offset from each other.” Id. at 6:52–57. As shown, clutch
`
`arrangement 1 includes clutch housing 5 with housing cover 7 connected to
`
`pump wheel shell 9. Id. at 7:21–27. Pump wheel shell 9, along with pump
`
`12
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`wheel vanes 18, form pump wheel 17, which cooperates with turbine wheel
`
`
`
`19. Id. at 7:43–46. Sasse also discloses that drive-side transmission element
`
`78 is associated with torsional damper 80, first energy-storage devices 86,
`
`and second energy storage devices 100. Sasse explains the following:
`
`It should also be noted that the drive-side transmission
`
`element 78, the first energy-storage devices 86, and the
`intermediate transmission element 94 together from the drive-
`side connecting device 96 of the torsional vibration damper 80,
`whereas the intermediate transmission element 94, the second
`energy-storage devices 100, and the takeoff-side transmission
`element 106 together form a takeoff-side connecting device 108.
`
`Id. at 9:13–20.
`
`
`
`Sasse further describes that “turbine wheel 19 forms at least part of a
`
`mass element 112, which is connected operatively to the intermediate
`
`transmission element 94 between the two connecting devices 96 and 108.”
`
`Id. at 9:27–31. In addition, Sasse explains that it is “the action of the mass
`
`element 112 between two connecting devices 96, 108 which is responsible
`
`for the extremely effective damping effect of the two independently acting
`
`connecting devices.” Id. at 10:18–21.
`
`2. Overview of Haller
`
`
`
`Haller is titled “Drive Train of a Motor Vehicle.” Ex. 1004, 1.5
`
`Haller describes that, in a preferred embodiment of its invention, a startup
`
`element of a drive train is “embodied as a hydrodynamic torque converter.”
`
`Id. at 3. Haller also describes that in connection with its invention:
`
`A vibration-capable spring-mass system is not connected in
`series with the drive train, but instead is located in a parallel
`
`
`5 Here, we refer to the original pagination of the document rather than the
`exhibit pagination.
`
`13
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`
`configuration with respect to it. This has the advantage that the
`elasticity of the drive train is not modified by the action
`according to the present invention, so that direct influence on the
`agility of the vehicle is preluded.
`
`
`
`Id.
`
`
`
`Haller further explains that: “[a]ccording to a refinement of the
`
`invention, a torsional damper having two torsional damper stages is placed
`
`after the startup element,” and a “spring-mass system is arranged between
`
`the first torsional damper stage and the second torsional damper. This
`
`results in particularly good dynamic transfer behavior.” Id. at 3–4.
`
`3. Discussion—Sasse and Haller
`
`Petitioner contends that claims 1–3, 8–10, and 14–16 are unpatentable
`
`based on Sasse and Haller. Pet. 26–47. In making that contention,
`
`Petitioner is generally of the view that Sasse discloses all the features of
`
`those claims, but, alternatively, points to Haller’s teachings in the event that:
`
`(1) Sasse’s system employing mass elements to reduce torsional vibrations is
`
`not considered a torsional vibration absorber (Pet. 27–28); and (2) Sasse
`
`lacks disclosure of a torsional vibration absorber that “is parallel to” damper
`
`stages (id. at 34–35).
`
`With respect to item (1), we observe that although Sasse characterizes
`
`its invention as a “torsional vibration damper,” which Patent Owner urges is
`
`distinguished from a torsional vibration absorber, Sasse describes its
`
`assembly as employing mass element 112, which forms part of turbine
`
`wheel 19, and action of mass element 112 accomplishes a damping effect.
`
`Ex. 1003, 9:27–29; 10:15–21. Such disclosure seemingly constitutes the
`
`type of structure that employs moveable masses disposed on mounting parts
`
`for reducing torsional vibrations that, according to the ’374 patent, is
`
`14
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`recognized as a torsional vibration absorber. See Ex. 1001, 1:43–50; see
`
`
`
`also Ex 1002 ¶ 108 (“Sasse teachings using mass elements to absorb
`
`additional vibrations, which are torsional vibration absorbers under the
`
`[Broadest Reasonable Interpretation].”).
`
`Even assuming, however, that Sasse is not understood as disclosing a
`
`torsional vibration absorber, we are persuaded, at this time, that Haller
`
`discloses such an absorber. Pet. 27. We also are persuaded, on the present
`
`record, that there is a reasonable basis for concluding that it would have
`
`been obvious to a skilled artisan to incorporate Haller’s absorber into a
`
`torque converter, such as that of Sasse, to “yield the predictable result of
`
`reducing rotational vibrations.” Id.; Ex. 1002 ¶ 109.
`
`With respect to item (2), we share Patent Owner’s view that it is not
`
`evident that Sasse discloses a torsional vibrational absorber that is in parallel
`
`to two damper stages. See Prelim. Resp. 32–33. We are of that view based
`
`on our understanding of the meaning of the “is parallel to both damper
`
`stages” requirement, as discussed above in connection with our construction
`
`of the phrase. We do not reach the same conclusion, however, when it
`
`comes to Haller’s disclosure, at least at this stage of the proceeding, for the
`
`reasons set forth below.
`
`Haller describes that its invention constitutes a hydrodynamic torque
`
`converter that incorporates a vibration-capable spring mass system arranged
`
`in a parallel configuration with respect to a drive train incorporating two
`
`damper stages. Ex. 1004, 3. Haller also expresses that the “the spring-mass
`
`system is arranged between the first torsional damper stage and the second
`
`torsional damper stage” so as to effect “particularly good dynamic transfer
`
`behavior.” Id. at 4:4–6. Although Sasse seemingly contemplates a pair of
`
`15
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`dampers arranged in “series with each other” (Ex. 1003, 10:15–18),
`
`
`
`Petitioner reasons that, in light of Haller’s teachings, one of ordinary skill in
`
`the art would have recognized a parallel configuration as a known option. In
`
`that regard, Petition contends that one of ordinary skill in the art would have
`
`implemented a parallel configuration to harness the stated benefit in Haller
`
`of obtaining “particular good dynamic transfer behavior.” Pet. 27 (citing Ex.
`
`1004, 4:4–6). Petitioner also reasons that a skilled artisan would have
`
`appreciated such a configuration as a matter of design choice. Pet. 35 (citing
`
`Ex. 1004, 8:24–26; Ex. 1002 ¶ 133).
`
`
`
`Patent Owner challenges Petitioner’s position that Haller discloses a
`
`torsional vibration absorber that “is parallel to” both damper stages. Prelim.
`
`Resp. 35–36. Haller, however, appears to disclose a spring-mass system in a
`
`“parallel configuration with respect to a drive train” and arranged “between
`
`the first torsional stage and the second torsional damper stage.” Ex. 1004;
`
`3:1–3; 4:4–6. For purpose of this Decision, we regard that disclosure as
`
`reasonably being directed to a torsional vibrational absorber that is parallel
`
`to two damper stages, i.e., the input of one stage is connected to the output
`
`of another stage. In reaching that initial conclusion here, we also credit Dr.
`
`Shaw’s testimony to that effect. See, e.g., Ex. 1002 ¶¶ 93–96. We,
`
`however, are cognizant that Patent Owner has not yet had opportunity to
`
`cross-examine Dr. Shaw and has not provided the countervailing testimony
`
`of its own declarant.
`
`
`
`Having reviewed the Petition, its underlying evidence, and the
`
`Preliminary Response, we are persuaded that Petitioner has shown a
`
`reasonable likelihood of success in its challenge to claims 1–3, 8–10, and
`
`14–16 as unpatentable over Sasse and Haller.
`
`16
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`
`4. Sasse and Haller taken with Eckel, Macdonald, or Heuler
`
`
`
`Petitioner also proposes that: (1) claims 4–7 are unpatentable over
`
`Sasse, Haller, and Eckel; (2) claims 11–13 are unpatentable over Sasse,
`
`Haller, and Macdonald; and (3) claims 2 and 10 are unpatentable over Sasse,
`
`Haller, and Heuler. Each of Eckel, Macdonald, and Heuler is relied upon to
`
`account for features added by those dependent claims.6
`
`Patent Owner does not challenge the above-noted grounds beyond the
`
`challenges it advanced with respect to the combination of Sasse and Haller.
`
`As discussed above, at this stage of the proceeding, we conclude that the
`
`Petitioner has shown a reasonable likelihood of success for its proposed
`
`ground based on Sasse and Haller. Having reviewed the record, we reach
`
`that conclusion in conjunction with the additions of Eckel, Macdonald and
`
`Heuler to that ground. In particular, Petitioner discusses where the features
`
`added by claims 2, 4–7, and 10–13 are found in the prior art, and sets forth
`
`credible reasons why one of ordinary skill in the art would have combined
`
`the teachings of the references. See Pet. 47–67. We conclude that trial
`
`should also commence based on the grounds that add Eckel, Macdonald, or
`
`Heuler to the combination of Sasse and Haller.
`
`C. The Grounds Based on Haller
`
`Petitioner proposes that claims 1 and 3 are anticipated by Haller, and
`
`claim 4 would have been obvious based on Haller and Eckel. Petitioner lays
`
`out in detail where it believes all the features of claims 1, 3 and 4 are found
`
`in Haller and Eckel. Pet. 15–26. Petitioner also offers credible reasons why
`
`
`6 Heuler is applied to claim 10 based on an alternative theory of
`unpatentability for that claims. See Pet. 64–65.
`
`17
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`one of ordinary skill in the art would have combined the teachings of Haller
`
`
`
`and Eckel. Id. at 25–26.
`
`Patent Owner challenges the propriety of the above-noted grounds.
`
`Prelim Resp. 19–32. In essence, Patent Owner bases its challenges on the
`
`theory that Haller does not disclose a torsional vibration absorber that “is
`
`parallel to both damper stages” as required by claim 1. Id. at 19–20.
`
`We are cognizant that, as set forth above with respect to claim
`
`construction, we are not persuaded on the record before us that Petitioner’s
`
`proffered meaning of the claim phrase “the torsional vibration absorber (17)
`
`is parallel to both damper stages (14, 15)” is correct. Nevertheless, we note
`
`that elsewhere in the Petition, Petitioner contends that even if that phrase “is
`
`interpreted more narrowly,” it is disclosed in Haller. See Pet. 34. As
`
`discussed above, Haller conveys that its hydrodynamic torque converter
`
`includes a vibration-capable spring-mass system connected “in a parallel
`
`configuration” with respect to a drive train that incorporates two damper
`
`stages (Ex. 1004, 3:1–3, 19–20, 29–30), and that in such an arrangement the
`
`spring-mass system is “arranged between the first torsional damper stage
`
`and the second torsional damper stage” (id. at 4:4–6). Given that disclosure,
`
`we are satisfied, at this time, that Petitioner demonstrates adequately that
`
`Haller discloses a torsional vibration absorber that is parallel to two damper
`
`stages.
`
`Accordingly, having considered the entirety of the record currently
`
`before us, we conclude that the Petitioner has established a reasonable
`
`likelihood of success in its challenge to claims 1 and 3 as anticipated by
`
`Haller, and its challenge to claim 4 based on obviousness over Haller and
`
`Eckel.
`
`18
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`
`D. The Grounds Based on Heuler
`
`
`
`Petitioner alternatively challenges claims 1–4 and 10–16 based on
`
`Heuler taken with one or more of Haller, Eckel, and Macdonald and
`
`Schierling. Petitioner does not explain why it offers additional grounds of
`
`unpatentability to claims 1–4 and 10–16 premised on Heuler. We also
`
`observe that Petitioner admits that Heuler is not directed to a torsional
`
`vibration absorbers, which is recited in each of claims 1–4 and 10–16. Pet.
`
`68. That is a potential deficiency, which, at this stage of the proceeding,
`
`complicates the ground beyond the other grounds on which Petitioner relies.
`
`There is no requirement that an inter partes review proceeding must
`
`proceed on all grounds of unpatentability asserted by a petition. See 37
`
`C.F.R. § 42.108(a) (“When instituting inter partes review, the Board may
`
`authorize the review to proceed on all or some of the challenged claims and
`
`on all or some of the grounds of unpatentability asserted for each claim”).
`
`Further, in proceedings arising under the Leahy-Smith America Invents Act,
`
`we construe our rules “to secure the just, speedy, and inexpensive resolution
`
`of every proceeding.” 37 C.F.R. § 42.1(b); see also 35 U.S.C. § 316(b)
`
`(requiring regulations for post-grant proceedings take into account “the
`
`efficient administration of the Office” and “the ability of the Office to timely
`
`complete [instituted] proceedings”).
`
`
`
`Thus, whether to institute trial on a particular ground of
`
`unpatentability proposed is our discretion. Here, we have determined that
`
`Petitioner has shown a reasonable likelihood of success in its challenge to all
`
`of claims 1–16 of the ’374 patent based on other proposed grounds of
`
`unpatentability. In the interest of securing a just, speedy, and inexpensive
`
`19
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`resolution to this proceeding, we exercise our discretion and deny institution
`
`
`
`in connection with the grounds presented based on Heuler.
`
`III. CONCLUSION
`
`
`
`Having evaluated the Petition, its underlying supporting evidence, and
`
`Patent Owner’s Preliminary Response, we determine that Petitioner has
`
`shown a reasonable likelihood that claims 1–16 are unpatentable over the
`
`prior art.
`
`It is
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review
`
`is hereby instituted to determine whether:
`
`(a) claims 1–3, 8–10, and 14–16 are unpatentable under 35 U.S.C.
`
`§ 103 based on Sasse and Haller;
`
`(b) claims 4–7 are unpatentable under 35 U.S.C. § 103 based on Sasse,
`
`Haller, and Eckel;
`
`(c) claim 11–13 are unpatentable 35 U.S.C. § 103 based on Sasse,
`
`Haller, and Macdonald;
`
`(d) claims 2 and 10 are unpatentable 35 U.S.C. § 103 based on Sasse,
`
`Haller, and Heuler;
`
`(e) claims 1 and 3 are anticipated under 35 U.S.C. § 102(b) by Haller;
`
`and
`
`(f) claim 4 is unpatentable under 35 U.S.C. § 103 based on Haller and
`
`Eckel;
`
`FURTHER ORDERED that inter partes review is not instituted in this
`
`proceeding on any other grounds; and
`
`20
`
`
`
`
`IPR2017-00441
`Patent 8,573,374 B2
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`
`
`
`C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
`
`will commence on the entry date of this decision.
`
`
`
`
`
`For PETITIONER:
`
`Robert Mattson
`cpdocketmattson@oblon.com
`
`Phillippe Signore
`cpdocketsignore@oblon.com
`
`Lisa Mandrusiak
`cpdocketmandrusiak@oblon.com
`
`
`For PATENT OWNER:
`
`Cary Kappel
`ckappel@ddkpatent.com
`
`William Gehris
`wgehris@ddkpatent.com
`
`David Petroff
`dpetroff@ddkpatent.com
`
`
`
`
`
`21
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
