480573US
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`Valeo North America, Inc. and Valeo Embrayages,
`Petitioners,
`
`v.
`
`Schaeffler Technologies AG & Co. KG,
`Patent Owner.
`
`__________________
`
`Case IPR2017-00442
`
`U.S. Patent No. 8,573,374
`
`__________________
`
`PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 1, 3–5, 8, 10, and 14–16 OF U.S. PATENT NO.
`8,573,374 UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`Valeo North America, Inc. and Valeo Embrayages,
`Petitioners,
`
`v.
`
`Schaeffler Technologies AG & Co. KG,
`Patent Owner.
`
`__________________
`
`Case IPR2017-00442
`
`U.S. Patent No. 8,573,374
`
`__________________
`
`PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 1, 3–5, 8, 10, and 14–16 OF U.S. PATENT NO.
`8,573,374 UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`I. Mandatory Notices—Rule 42.8(a)(1) ................................................ 1
`II. Certification of Grounds for Standing—Rule 42.104(a)................... 2
`III. Overview of Challenge and Relief Requested—Rule
`42.104(b) ............................................................................................. 2
`A. Prior Art Patents and Printed Publications ............................ 3
`B. Grounds for Challenge ............................................................. 3
`IV. Overview of the ’374 Patent and the Prior Art ................................ 4
`A. The ’374 Patent ......................................................................... 4
`B.
`Summary of Select Prior Art ................................................... 7
`1. Degler ............................................................................... 7
`2.
`Reik .................................................................................. 8
`V. Claim Construction .......................................................................... 10
`VI. Level of Ordinary Skill in the Art ................................................... 11
`VII. Identification of How the Challenged Claims Are
`Unpatentable ................................................................................... 13
`A. Ground 1: Claims 1, 3–5, 8, 10, and 14–16 are
`anticipated by Degler. ............................................................ 13
`1.
`35 U.S.C. § 119(c) precludes any foreign priority
`claim for subject matter disclosed in Degler’s priority
`document. ................................................................................ 13
`2.
`Failure to comply with 35 U.S.C. § 119(c)
`precludes Patent Owner from relying on a foreign
`application to establish a constructive reduction to
`practice. ................................................................................... 16
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`i
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`3. Degler’s anticipation of Claims 1, 3–5, 8, 10, and
`14–16. ...................................................................................... 17
`B. Ground 2: Claims 1, 3–5, 8, 10, and 14–16 are
`anticipated by Reik ................................................................. 28
`VIII. CONCLUSION ................................................................................ 40
`CERTIFICATE OF SERVICE .................................................................. 41
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`ii
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`TABLE OF AUTHORITIES
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`Cases
`
`Ex parte Saito,
` Appeal No. 2008-5777, 2008 Pat. App. LEXIS 7932
` (BPAI Dec. 28, 2008) ...................................................................... 16
`
`In re Gosteli,
` 872 F.2d 1008 (Fed. Cir. 1989) ...................................................... 16
`
`In re GPAC Inc.,
` 57 F.3d 1573 (Fed. Cir. 1995) ........................................................ 11
`
`Statutes
`
`35 U.S.C. § 102(a) ....................................................................... 17, 28
`
`35 U.S.C. § 119(a) ............................................................................. 16
`
`35 U.S.C. § 119(c) ...................................................................... passim
`
`35 U.S.C. § 314(a) ............................................................................... 4
`
`Rules
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`37 C.F.R. § 42.100(b) ......................................................................... 10
`
`37 C.F.R. § 42.104(b)(4) .................................................................... 13
`
`37 C.F.R. § 42.104(b)(5) .................................................................... 13
`
`37 C.F.R. § 42.15(a) ............................................................................. 2
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`37 C.F.R. § 42.8(a)(1) .......................................................................... 1
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`iii
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
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`EXHIBIT LIST
`U.S. Patent No. 8,573,374 to Magerkurth et al.
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`Declaration of Professor Steven Shaw
`
`PCT Publication No. WO 2009/067987 to Degler et al.
`and certified translation
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`DE 10 2007 057 448.9 to Degler et al. and certified
`translation
`
`Wolfgang Reik, The Centrifugal Pendulum Absorber
`Calming Down the Drivetrain, CTI Symposium, May
`2009
`
`Excerpt from book provided to delegates at the 7th
`International CTI Symposium, Innovative Automotive
`Transmissions, Vol. 2, Dec. 3, 2008
`
`Declaration of Pascal Hervet
`
`File History for U.S. Patent No. 8,573,374 to
`Magerkurth et al.
`
`U.S. Patent No. 7,073,646 to Sasse et al.
`
`PCT Publication No. WO 2004/018897 to Haller et al.
`and certified translation
`
`U.S. Patent No. 6,026,940 to Sudau
`
`U.S. Patent No. 5,884,735 to Eckel et al.
`
`DE 196 54 894 to Schierling et al. and certified
`translation
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`
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`iv
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`1101
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`1102
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`1103
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`1104
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`1105
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`1106
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`1107
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`1108
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`1109
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`1110
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`1111
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`1112
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`1113
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`1114
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`1115
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`U.S. Patent No. 8,161,739 to Degler et al.
`
`Wolfgang Reik, The Centrifugal Pendulum Absorber
`Calming Down the Drivetrain, CTI Symposium,
`December 2008
`
`
`
`
`
`v
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`
`I.
`
`Mandatory Notices—Rule 42.8(a)(1)
`Valeo North America, Inc. and Valeo Embrayages (collectively,
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`“Valeo” or “Petitioner”) provide notice of the following:
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`Real Party-In-Interest: Valeo is the real party-in-interest.
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`Related Matters: Petitioner is unaware of any matters related
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`to U.S. Patent No. 8,573,374 other than Patent Owner is filing a
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`separate petition directed against the same patent, IPR2017-00441,
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`directed against different prior art. The subject petition is based on a
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`35 U.S.C. § 119(c) bar to priority and therefore is not redundant with
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`the other petition, which does not raise this issue.
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`For efficiency, Petitioner requests that the two petitions be
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`handled by the same panel. And, if these petitions are not merged,
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`Petitioner requests that the Final Written Decisions issue on the
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`same day.
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`Lead counsel: Robert C. Mattson (Reg. No. 42,850)
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`Back-up counsel: Philippe J.C. Signore (Reg. No. 43,922) and
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`Lisa M. Mandrusiak (Reg. No. 72,653).
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`Service Information: Petitioner consents to email service.
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`Email:
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`cpdocketmattson@oblon.com
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`1
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
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`cpdocketsignore@oblon.com
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`cpdocketmandrusiak@oblon.com
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`Post: Oblon LLP
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`1940 Duke Street
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`Alexandria, VA 22314
`Fax: (703) 413-2220
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`Telephone: (703) 412-6466
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`The undersigned authorizes the Office to charge the fee
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`required by 37 C.F.R. § 42.15(a) for this Petition for inter partes
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`review to Deposit Account No. 15-0030. Any additional fees that
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`might be due are also authorized.
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`II. Certification of Grounds for Standing—Rule 42.104(a)
`Petitioner certifies that the ’374 patent is available for inter
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`partes review and that Petitioner is not barred or estopped from
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`requesting inter partes review of the ’374 patent on the grounds
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`identified in this Petition.
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`III. Overview of Challenge and Relief Requested—Rule
`42.104(b)
`Petitioner requests inter partes review and cancelation of claims
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`1, 3–5, 8, 10, and 14–16 of the ’374 patent. The ’374 patent is subject
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`to pre-AIA 35 U.S.C. §§ 102 and 103.
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`2
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`A. Prior Art Patents and Printed Publications
`Review of the ’374 patent is requested in view of the following:
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`Ex. 1103 – PCT Pub. No. WO 2009/067987 (“Degler”), published
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`June 4, 2009, is available as prior art under § 102(a) because the ’374
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`patent is not entitled to the benefit of foreign priority in view of 35
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`U.S.C. § 119(c) as explained below.
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`Ex. 1106 – W. Reik, The Centrifugal Pendulum Absorber
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`Calming Down the Drivetrain (“Reik”), CTI Symposium, distributed
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`December 2008, is available as prior art under § 102(a), also because
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`the ’374 patent is not entitled to the benefit of foreign priority in view
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`of 35 U.S.C. § 119(c). Reference is made to the color figure in Ex. 1115
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`(identical to the black and white figure in Ex. 1106) for ease.
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`B. Grounds for Challenge
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`Petitioner requests cancelation of the challenged claims under
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`the following statutory grounds:
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`1.
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`Claims 1, 3–5, 8, 10, and 14–16 are unpatentable under 35
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`U.S.C. § 102 as anticipated by Degler.
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`2.
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`Claims 1, 3–5, 8, 10, and 14–16 are unpatentable under 35
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`U.S.C. § 102 as anticipated by Reik.
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`3
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`Section VII demonstrates that there is a reasonable likelihood
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`that Petitioner will prevail for each of the statutory grounds. See 35
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`U.S.C. § 314(a). Support for each ground of unpatentability is also
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`provided in the Declaration of Professor Steven Shaw (Ex. 1102).
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`IV. Overview of the ’374 Patent and the Prior Art
`A.
` The ’374 Patent
`The ’374 patent describes a torque converter that purportedly
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`dampens vibrations well while taking up little assembly space. The
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`torque converter has multiple damper stages disposed in series
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`between a lock-up clutch and an output hub. A torsional vibration
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`damper is arranged between the damper stages. (Ex. 1101, 1:63–2:5;
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`Ex. 1102 ¶ 27.) The ’374 patent touts that this configuration permits
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`components of the damper stages to be shared, providing a lighter
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`and narrower torque converter. (Ex. 1101, 2:5–18; Ex. 1102 ¶ 28.)
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`
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`The ’374 patent admits that prior art torque converters also had
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`dampers arranged between the lock-up clutch and the output hub and
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`between the turbine and the output hub. (Ex. 1101, 1:23–42; Ex. 1102
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`¶ 29.) The ’374 patent also acknowledges that it was known to use
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`vibration absorbers such as centrifugal force pendulums to reduce
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`4
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`torsional vibrations. (Ex. 1101, 1:43–50; Ex. 1102 ¶ 30.)
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`
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`The only drawing figure in the ’374 patent, reproduced below
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`with colored annotations, depicts a hydrodynamic torque converter 1
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`having a housing 3, an impeller 6, and a turbine 7 inside the housing
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`3. (Ex. 1101, 3:56–4:8; Ex. 1102 ¶ 32.)
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`’374 Patent
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`A lock-up clutch 13 (including piston 18 in blue) is mounted to
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`5
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`the housing 3. When the lock-up clutch is closed, it transmits torque
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`from an internal combustion engine to the output hub 12 (purple) via
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`first and second damper stages 14, 15, as follows: The input 41
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`(yellow) to the first damper stage receives torque from the lock-up
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`clutch. The output of the first damper stage is a disk part 25 (green)
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`that also forms a portion of the input of the second damper stage. (Ex.
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`1101, 4:38–40; Ex. 1102 ¶ 34.) The input of the second damper stage
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`is completed by disk part 31 (red), which also forms the mounting
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`part for the torsional vibration absorber 17. (Ex. 1101, 5:3–5; Ex.
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`1102 ¶ 35.) The output (purple) of the second damper stage is part of
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`the output hub (purple).
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`When the lock-up clutch is open, torque flows via impeller 6 to
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`the turbine 7 which is fastened to disk part 25 (green). Because disk
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`part 25 is the input of the second damper stage, torque is transmitted
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`through the second damper stage 15 to the output hub (purple). (Ex.
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`1101, 4:8–16; Ex. 1102 ¶ 36.)
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`6
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
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`B. Summary of Select Prior Art
`All the components of the claims were well-known in the art, as
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`detailed below. Moreover, these components were arranged in the
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`prior art in the same space-saving fashion taught by the ’374 patent.
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`1. Degler
`Degler describes a force transmission device optimized to reduce
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`
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`rotational irregularities over the engine’s full operating range. (Ex.
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`1103, 3; Ex. 1102 ¶ 40.) Degler describes torque converters with at
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`least two dampers connectable in series and a rotational-speed-
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`adaptive vibration absorber, arranged between the damper stages.
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`(Ex. 1103, 3; Ex. 1102 ¶ 40.) Degler’s torque converter includes many
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`of the same components as the ’374 patent, highlighted below:
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`7
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
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`Degler Fig. 3
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`2. Reik
`Reik is a paper and presentation distributed at the CTI
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`
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`Symposium in Berlin, Germany in December, 2008. (Ex. 1106 ; Ex.
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`1107.) The paper includes a schematic drawing of a hydrodynamic
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`torque converter including the same components and orientations
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`discussed and claimed in the ’374 patent. (Ex. 1102 ¶ 42.)
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`U.S. Pate
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`nt No. 8,573,,374
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`Pettition for Inteer Partes Revview
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`entation
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`m the presgure fromversion oof this fig(Ex. 11106, 512.) A color
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`(Ex. 11115) rathher than tthe blackk and whiite versionn from thhe book (EEx.
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`1106) is providded for eaase:
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`9
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`As is apparent, the figures in Ex. 1106 and 1115 are identical.
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`
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`References in the petition and in Dr. Shaw’s declaration are to the
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`color figure from Ex. 1115 for visual ease.
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`V. Claim Construction
`This Petition shows that the challenged claims are
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`unpatentable when given their broadest reasonable interpretation in
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`light of the specification. See Rule 42.100(b).
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`“Torsional vibration absorber” (claims 1–16) means a component
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`or device designed to absorb torsional vibrations. As described in the
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`’374 patent, this includes movable masses disposed on mounting
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`parts. (Ex. 1101, 1:43–45.) Some examples of movable masses
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`disposed on mounting parts are compensation flywheels, frequency-
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`tuned mass-spring devices, and centrifugal-force pendulums. (Id.; Ex.
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`1102 ¶ 22.)
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`“Is parallel to” (claims 1–16) means “does not transfer torque
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`generated by the engine along the power path but rotates with” the
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`other components in the power path. This is consistent with the
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`description of parallel components in the ’374 specification and in
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`Haller. (Ex. 1101, 5:12–16; Ex. 1110, 3:1–3; Ex. 1102 ¶ 23.) Both
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`10
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`documents describe absorbers that are parallel to the drivetrain such
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`that they don’t transfer engine torque, but they do rotate with the
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`other components in the drivetrain.
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`“In a pocket” (claim 10) means “partially in a pocket.” The ’374
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`specification describes that the lock-up clutch is axially mounted in a
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`pocket, but claim 11 specifies that the lock-up clutch is formed out of
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`a piston. In Fig. 1, the piston extends out of the pocket such that it is
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`only partially in the pocket. (Ex. 1102 ¶ 24.)
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`VI. Level of Ordinary Skill in the Art
`The level of ordinary skill in the art is evidenced by the prior
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`art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(determining that the Board did not err in adopting the approach that
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`the level of skill in the art was best determined by the references of
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`record).
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`Before the earliest priority date of the ’374 patent, various
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`components were used to dampen and absorb vibrations in torque
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`converters. (Ex. 1102 ¶ 15.) The ’374 patent itself acknowledges that
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`prior art torque converters utilized dampers and torsional vibration
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`absorbers to reduce the effect of torsional vibrations caused by
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`11
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`internal combustion engines. (Ex. 1101, 1:23–42; Ex. 1102 ¶ 16.)
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`The prior art also demonstrates that companies such as
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`DaimlerChrysler, Mannesmann Sachs/ZF Sachs, and Carl
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`Freudenberg, were already seeking patent protection on compact
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`torque converter designs with different damper and absorber
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`arrangements. (Ex. 1110, Figs. 1–8, 2:15–20; Ex. 1111; Ex. 1112; Ex.
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`1113; Ex. 1102 ¶ 17.)
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`The prior art also evidences that a person having ordinary skill
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`in the art (“PHOSITA”) knew to arrange torque converter components
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`to minimize assembly space. (Ex. 1102 ¶ 18.) For example, Sasse
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`shares components to reduce space (Ex. 1109, 5:3–34), and Haller
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`uses existing space within the torque converter to decrease assembly
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`space. (Ex. 1110, 3:9–16.)
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`As demonstrated by the prior art discussed below, the claims of
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`the ’374 patent simply recite a combination of prior art elements that
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`function predictably in their known manner.
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`12
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`VII. Identification of How the Challenged Claims Are
`Unpatentable
`Pursuant to Rule 42.104(b), this section demonstrates that the
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`challenged claims are unpatentable. Certain claim elements are
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`annotated [a], [b], etc. for ease of cross-reference.
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`A. Ground 1: Claims 1, 3–5, 8, 10, and 14–16 are
`anticipated by Degler.
`Degler, a PCT application filed by Patent Owner, was published
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`on June 4, 2009, eight days before the PCT filing date of the ’374
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`patent. Because Patent Owner is precluded by 35 U.S.C. § 119(c) from
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`claiming priority to subject matter also disclosed in Degler’s priority
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`reference, Degler is prior art under 35 U.S.C. § 102(a) and anticipates
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`claims 1, 3–5, 8, 10, and 14–16.
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`1. 35 U.S.C. § 119(c) precludes any foreign priority
`claim for subject matter disclosed in Degler’s
`priority document.
`Although the ’374 patent claims the benefit of the July 4, 2008
`
`and August 14, 2008 filing dates of German applications DE 10 2008
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`031 431 and DE 10 2008 037 808, Patent Owner is precluded from
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`claiming priority for subject matter that is also disclosed in Degler’s
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`November 29, 2007 priority document (German application DE 10
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`13
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`2007 057 448) under 35 U.S.C. § 119(c). The relationship between
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`these applications is shown in the following timeline:
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`
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`Section 119(c) states:
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`(c) In like manner and subject to the same conditions
`and requirements, the right provided in this section may
`be based upon a subsequent regularly filed application
`[’374 priority applications] in the same foreign
`country instead of the first filed foreign application
`[Degler priority application], provided that any
`foreign application filed prior [Degler priority
`application] to such subsequent application [’374
`priority applications] has been withdrawn,
`abandoned, or otherwise disposed of, without having
`been laid open to public inspection and without leaving
`any rights outstanding, and has not served, nor
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`14
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`thereafter shall serve, as a basis for claiming a
`right of priority.
`35 U.S.C. § 119(c) (interpolations and emphasis added).
`
`Because Degler’s priority document was the basis of Degler’s
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`priority claim, it has “served…as a basis for claiming a right of
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`priority” and thus Section 119(c) applies. Notably, a U.S. national
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`stage application was filed from Degler that claims priority to the
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`Degler priority document, resulting in U.S. Patent No. U.S. Patent
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`No. 8,161,739. (Ex. 1114.) As such, there can be no priority rights in
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`the ’374 priority applications for any subject matter that was also
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`disclosed in the Degler priority application. Significantly, the body of
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`the specification, figures, and claims of Degler’s priority document
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`(Ex. 1104) are identical to Degler (Ex. 1103).1 Accordingly, claims 1,
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`3–5, 8, 10, and 14–16 (which are anticipated by Degler as explained
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`below) are disclosed in the Degler priority application and are not
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`entitled to priority.
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`1 The only difference between the documents is that Degler’s list of
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`reference numerals (Ex. 1103, 20) includes four letters that are not
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`included in the German priority application (Ex. 1104, 20).
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`15
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`2. Failure to comply with 35 U.S.C. § 119(c) precludes
`Patent Owner from relying on a foreign application
`to establish a constructive reduction to practice.
`Patent Owner is also precluded from using the ’374 patent’s
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`priority documents to establish constructive reduction to practice to
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`swear behind Degler via 37 C.F.R. § 1.131. First, the Federal Circuit
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`has expressed skepticism about the use of a foreign filing to establish
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`constructive reduction to practice. See In re Gosteli, 872 F.2d 1008,
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`1012 (Fed. Cir. 1989) (“The requirements and operation of section 119
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`differ from those of Rule 131. . . . Rule 131 provides a mechanism for
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`removing specific prior art references, whereas section 119 is
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`concerned only with an applicant’s effective filing date.”).
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`Furthermore, the Office has held that while foreign patent
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`applications may sometimes enjoy the benefit of constructive
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`reduction to practice, they must first satisfy the requirements of 35
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`U.S.C. § 119(a). See Ex parte Saito, Appeal 2008-5777, 2008 Pat. App.
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`LEXIS 7932, at 10 n.3 (BPAI Dec. 28, 2008) (appellant failed to meet
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`the requirements of Section 119 by waiting over a year prior to file in
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`the U.S. after filing in a foreign country).
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`Patent Owner has failed to meet the requirements of Section
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`119 by waiting over a year after filing the Degler priority document in
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`Germany to file an application (PCT application resulting in the ’374
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`patent) claiming the same subject matter in the U.S. Accordingly,
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`Patent Owner cannot establish reduction to practice on the basis of
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`its foreign filings to swear behind Degler.
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`3. Degler’s anticipation of Claims 1, 3–5, 8, 10, and 14–
`16.
`Because Patent Owner is precluded by 35 U.S.C. § 119(c) from
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`claiming priority to subject matter also disclosed in Degler’s priority
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`reference, Degler is prior art under 35 U.S.C. § 102(a) and anticipates
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`claims 1, 3–5, 8, 10, and 14–16.
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`Claim 1[a]: A hydrodynamic torque converter (1):
`The preamble is not limiting, but nonetheless, Degler discloses
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`hydrodynamic torque converters. (Ex. 1103, 9 (“Hydrodynamic
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`component 6 can be constructed as a hydrodynamic clutch…in a
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`particularly advantageous embodiment, as a hydrodynamic
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`rotational-speed/torque converter…”).) Thus, Degler teaches element
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`1[a]. (Ex. 1102 ¶ 45.)
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`Claim 1[b]: with a turbine (7) driven by an impeller (6) as
`well as housing (3)
`The hydrodynamic torque converter in Degler includes a turbine
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`driven by an impeller in a housing. (Ex. 1103, 9 (“Hydrodynamic
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`component 6 comprises at least one primary wheel functioning as
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`pump impeller P…and one secondary wheel functioning as turbine
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`wheel T…”).) The housing is visible in the figures. (Ex. 1103, Fig. 2.)
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`Thus, Degler teaches element1[b]. (Ex. 1102 ¶ 46.)
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`Claim 1[c]: in which a torsional vibration damper (16)
`with multiple of damper stages (14, 15)
`Degler discloses several examples of torsional vibration
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`
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`dampers with multiple damper stages. Degler’s two damper stages
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`(first damper 3 (green) and second damper 4 (red) in Fig. 2
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`correspond with the first 14 and second 15 damper stages of the ’374
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`patent:
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
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`’374 Patent
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`Degler Fig. 2
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`(Ex. 1102 ¶ 47.) Thus, Degler teaches element 1[c]. (Id. ¶ 48.)
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`Claim 1[d]: a torsional vibration absorber (17)
`Degler teaches rotational-speed-adaptive vibration absorbers
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`such as the centrifugal pendulum absorber shown in Fig. 4. (Ex. 1103,
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`3 (“A force-transmission device constructed according to the
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`invention…comprising…a rotational-speed-adaptive vibration
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`absorber”); Fig. 4.) Thus, Degler teaches element 1[d]. (Ex. 1102 ¶
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`49.)
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`Claim 1[e]: and a lock-up clutch (13) are additionally
`installed
`Degler’s torque converters include a lock-up clutch. (Ex. 1103, 9
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`(“Device 7 for bypassing hydrodynamic component 6 preferably has
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`the form of a so-called lockup clutch…”).) Thus, Degler teaches
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`element 1[e]. (Ex. 1102 ¶ 50.)
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`Claim 1[f]: wherein a first damper stage (14) and a
`second damper stage (15) are disposed between the lock-
`up clutch (14) and an output hub (12),
`The ’374 patent describes two torque paths. Claim 1[f] describes
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`the first torque path, i.e., where torque passes through both damper
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`stages when transferred from the lock-up clutch 14 to the output hub
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`12. (Ex. 1102 ¶ 51.)
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`Degler Figs. 1c and 2 embody torque paths similar to those
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`described in the ’374 patent. In Figs. 1c and 2, the first damper 3 acts
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`as a standard damper and the second damper 4 acts as a turbine
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`damper, as in the ’374 patent. (Ex. 1103, 10 (“According to figure 1c,
`
`this arrangement of the two dampers 3 and 4 connected in series in
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`the force flow in the force flow direction as viewed between input E
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`and output A is always connected downstream from mechanical
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`power branch II”; Figs. 1c and 2); Ex. 1102,¶ 52.) Thus, Degler
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`teaches element 1[f]. (Ex. 1102 ¶ 53.)
`
`Claim 1[g]: the second damper stage (15) is disposed
`between the turbine (7) and the output hub (12) and
`As noted above, the ’374 patent describes two torque paths.
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`Claim 1[g] describes the second torque path, i.e., where torque passes
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`through the second damper stage 15 when transferred from the
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`turbine 7 to the output hub 12. (Ex. 1102 ¶ 54.)
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`Degler Figs. 1c and 2 embody torque paths similar to those
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`described in the ’374 patent. In Figs. 1c and 2, the second damper is
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`active when the torque path is through the impeller/turbine, as in the
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`’374 patent. (Ex. 1103, 10 (“The tie-in of hydrodynamic component 6,
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`especially with turbine wheel T, takes place here between the two
`
`dampers 3 and 4”; Figs. 1c and 2); Ex. 1102 ¶ 55.) Thus, Degler
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`teaches element 1[g]. (Ex. 1102 ¶ 55.)
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`Claim 1[h]: the torsional vibration absorber (17) is
`parallel to both damper stages (14, 15).
`In Degler Figs. 1c and 2, the vibration absorber 5 is parallel to
`
`both damper stages because it is connected to second damper stage 4
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`and does not transmit torque. (Ex. 1103, Fig. 2.) Thus, Degler teaches
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`element 1[h]. (Ex. 1102 ¶ 56.)
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`Claim 3: The hydrodynamic torque converter (1)
`according to claim 1, wherein a disk part (25) is allocated
`to two damper stages (14, 15) as one piece.
`Claim 3 requires that a single disk part is shared between the
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`first and second damper stages. (Ex. 1102 ¶ 57.) As shown in the ’374
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`patent, disk part 25 (green) is a single component shared between
`
`both damper stages. The same relationship exists in Degler Fig. 2:
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`’374 Patent
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`Degler Fig. 2
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`(Ex. 1102 ¶ 57.) Moreover, Degler specifically teaches that “integral
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`22
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`construction between primary part 21 and secondary part 16 is also
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`possible.” (Ex. 1103, 13.) Thus, Degler anticipates claim 3. (Id. ¶ 58.)
`
`Claim 4[a]: The hydrodynamic torque converter (1)
`according to claim 1, wherein the torsional vibration
`absorber (17) comprises a plurality of absorber masses
`(39), and
`Degler describes torsional vibration absorbers with a plurality
`
`of absorber masses. (Ex. 1103, 6 (“inertial masses are pendulum-
`
`mounted on the inertial-mass support device”); Fig. 4.) Thus, Degler
`
`anticipates element 4[a]. (Ex. 1102 ¶ 59.)
`
`Claim 4[b]: a mounting part (37) of the torsional
`vibration absorber (17) forms a disk part (31) of an input
`part (35) of the second damper stage (15).
`Claim 4[b] specifies that the mounting part of the torsional
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`vibration absorber forms an input part of the second damper stage.
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`(Ex. 1102 ¶ 60.) In Degler Fig. 3 the torsional vibration absorber is
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`mounted on the disk input 21 of the second damper stage. (Ex. 1103,
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`Fig. 3.) Thus, Degler anticipates element 4[b]. (Ex. 1102 ¶ 60.)
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`Claim 5: The hydrodynamic torque converter (1)
`according to claim 4, wherein absorber masses (39) of the
`torsional vibration absorber (17) and energy
`accumulators (29) of the first damper stage (14) disposed
`over the circumference are radially at the same height
`but axially spaced apart.
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`Claim 5 specifies that the absorber masses and the springs of
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`the first damper stage be axially spaced apart but radially at the
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`same height, as illustrated in Fig. 1 of the ’374 patent. (Ex. 1102 ¶
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`61.) Under the broadest reasonable interpretation, this includes
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`instances where there is overlap between the radial height of the
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`absorber masses and the springs of the first damper stage, as shown
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`in the ’374 patent and Degler Fig. 2:
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`’374 Patent
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`Degler Fig. 2
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`(Ex. 1102 ¶ 62.) Thus, Degler anticipates claim 5. (Id. ¶ 63.)
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`Claim 8: The hydrodynamic torque converter (1)
`according to claim 1, wherein energy accumulators (27)
`are distributed over the circumference of the second
`damper stage (15) based on a middle mounting diameter
`radially within turbine blades (8) of the turbine (7).
`Claim 8 requires that the middle mounting diameter, i.e., center
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`of the springs of the second damper, be radially within (below) the
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`turbine. (Ex. 1102 ¶ 64.)
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`As shown in the ’374 patent, the central portion of the springs of
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`the second damper are mounted below the turbine. The same
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`relationship can be seen in Degler (although the turbine is largely not
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`shown), annotated with red arrows illustrating the center of the
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`springs of the second damper located below the turbine:
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`’374 Patent
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`Degler Fig. 2
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`(Ex. 1102 ¶ 65.) Thus, Degler anticipates element 8. (Id. ¶ 66.)
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`Claim 10: The hydrodynamic torque converter (1)
`according to claim 1, wherein the lock-up clutch (13) in a
`closed state is axially mounted in a pocket (24) formed in
`a housing wall (23) radially inward of fastening means
`(9) provided on external part of the torque converter (1).
`Claim 10 specifies that, when closed, at least the mounting
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`portion of the lock-up clutch is axially mounted in a pocket in the
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`housing wall below fastening means on the housing. (Ex. 1102 ¶ 67.)
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`The hydrodynamic torque converter in Degler Fig. 2 has a fastening
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`bracket on the housing of the torque converter for attaching the
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`housing to a drive. (Ex. 1103, Fig. 2; Ex. 1102 ¶ 68.) And, as shown in
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`Fig. 2, when closed, the clutch 7 is axially mounted in a pocket formed
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`in the housing wall radially inside of the fastening bracket. Thus,
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`Degler anticipates claim 10. (Ex. 1102 ¶ 68.)
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`Claim 14: The hydrodynamic torque converter (1)
`according to claim 1, wherein in the closed state of the
`lock-up clutch (13) the torsional vibration absorber (17)
`acts between both damper stages (14, 15).
`Claim 14 requires that the torsional vibration absorber act
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`between both damper stages when the lock-up clutch is closed. (Ex.
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`1102 ¶ 69.) Degler states that its embodiments are “characterized in
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`that the rotational-speed-adaptive vibration absorber is disposed
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`U.S. Patent No. 8,573,374
`Petition for Inter Partes Review
`between the dampers at least in one force-flow direction over the
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`damper arrangement.” (Ex. 1103, 3.) Thus, Degler anticipates claim
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`14. (Ex. 1102 ¶ 70.)
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`Claim 15: The hydrodynamic torque converter (1)
`according to claim 1, wherein the torsional vibration
`absorber (17) is connected non-rotatably with the
`turbine (7).
`In Degler Fig. 2 the mounting part of the rotational-speed-
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`adaptive vibration absorber is connected indirectly to rotate with the
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`turbine. (Ex. 1103, Fig. 6, see also 4 (“rotational-speed-a
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