Trials@uspto.gov
`571-272-7822
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`Paper 86
`Entered: May 9, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES,
`BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`1 Case IPR2015-00762 has been joined with this proceeding.
`
`
`
`
`
`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD.,
`BROAD OCEAN MOTOR LLC, and
`BROAD OCEAN TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`NIDEC MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2014-011211
`Patent 7,626,349 B2
`____________
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 86
`Entered: May 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES,
`BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`1 Case IPR2015-00762 has been joined with this proceeding.
`
`
`
`
`
`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD.,
`BROAD OCEAN MOTOR LLC, and
`BROAD OCEAN TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`NIDEC MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2014-011211
`Patent 7,626,349 B2
`____________
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`IPR2014-01121
`Patent 7,626,349 B2
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`I. INTRODUCTION
`A. Background
`The trial in this proceeding resulted from the filing of two petitions by
`Zhongshan Broad Ocean Motor Co., Ltd., Broad Ocean Motor LLC, and
`Broad Ocean Technologies, LLC (collectively, “Petitioner”). First, in
`response to a corrected petition (Paper 72, “Pet. 1121”) filed in IPR2014-
`01121, the Board instituted trial with respect to the following ground of
`unpatentability: claims 1–3, 8, 9, 12, 16, and 19 as unpatentable under
`35 U.S.C. § 103(a) over U.S. Patent No. 5,410,230 (Ex. 1006, “Bessler”)
`and Peter Franz Kocybik, Electronic Control of Torque Ripple in Brushless
`Motors (University of Plymouth, July 2000) (Ex. 1007, “Kocybik”). Paper
`20, 17. Second, in response to the concurrent filing in IPR2015-00762 of a
`petition (IPR2015-00762, Paper 3, “Pet. 762”) and a Motion for Joinder
`(IPR2015-00762, Paper 4), the Board instituted trial with respect to the
`following ground of unpatentability, and joined IPR2015-00762 with
`IPR2014-01121: claims 1–3, 8, 9, 12, 16, and 19 as anticipated under
`
`
`2 Unless otherwise indicated, citations are to IPR2014-01121. In some
`instances, the parties filed papers under seal with concurrently filed public
`redacted versions; unless otherwise indicated, citations are to public versions
`of the papers.
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`35 U.S.C. § 102(b) by JP 2003-348885 (Ex. 10033, “Hideji”). Paper 67, 9–
`10. Patent Owner timely filed Patent Owner Responses. Papers 30, 72.
`Petitioner timely filed Replies to the Patent Owner Responses. Papers 36,
`78. An oral hearing was held on February 23, 2016. Paper 85 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 1–3, 8, 9, 12, 16,
`and 19 are unpatentable.4
`
`
`B. The ’349 Patent (Ex. 1001)
`The ’349 patent relates to heating, ventilating, and/or air conditioning
`(“HVAC”) systems that use air-moving components, such as a blower.
`Ex. 1001, col. 1, ll. 8–11. Figure 4 of the ’349 patent is reproduced below.
`
`
`3An unattested English translation of Hideji was filed as Ex. 1005 in
`IPR2014-01121. An attested English translation of Hideji was filed as
`Ex. 1005 in IPR2015-00762. Except for the attestation, the translations are
`identical. Accordingly, to simplify citation to the record, we subsequently
`cite to Ex. 1005 of IPR2014-01121 for citations to Hideji.
`4 Judges Wood and Boucher disagree with Judges Medley, Arbes, and Tartal
`that 35 U.S.C. § 315(c) permits issues presented in IPR2015-00762 to have
`been joined to IPR2014-01121. Paper 67 (Boucher, APJ, dissenting).
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`Figure 4 is a block diagram of HVAC system 400, which includes system
`controller 402, motor controller 404, permanent magnet motor 406, and air-
`moving component 410. Id. at col. 3, ll. 50–52. Permanent magnet motor
`406 includes shaft 408, stationary assembly 412, and rotatable assembly 414.
`Id. at col. 3, ll. 52–54. The rotatable and stationary assemblies are
`magnetically coupled, and the rotatable assembly is coupled to the air-
`moving component via the shaft to drive rotation of the air-moving
`component. Id. at col. 3, ll. 54–58. The motor controller is configured to
`perform sinewave commutation in response to one or more control signals
`received from the system controller to produce continuous-phase currents in
`the permanent magnet motor for driving the air-moving component. Id. at
`col. 3, ll. 59–63.
`Petitioner’s expert, Dr. Mark Ehsani, provides an explanation of
`“vector control” of permanent-magnet synchronous motors, which we accept
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`as an accurate description of the understanding of one of ordinary skill in the
`art. Dr. Ehsani explains that “[t]he concept of vector control, which
`typically uses d and [Q] current components, arises from [a] principle [in
`which] torque arrives from the interaction of two magnetic fields, one
`originating from the stator and one originating from the rotor.” Ex. 1009
`¶ 13. The drawing from page 6 of Dr. Ehsani’s Declaration is reproduced
`below.
`
`
`The drawing from Dr. Ehsani’s Declaration illustrates a rotor, which has a
`permanent magnet having north and south poles Nr and Sr, respectively, and
`illustrates a stator, which includes electromagnets that result in a virtual
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`stator magnet having north and south poles Ns and Ss, respectively. Id. ¶ 15.
`The d axis is aligned with the rotor and the Q axis5 is offset 90° from the d
`axis. The motor commutates the winding currents to maintain orthogonality
`of the d and Q axes as the rotor turns. Id. ¶ 16.
`The Specification of the ’349 patent provides sparse details of how
`vector control is achieved in the context of the claimed invention. Figure 8
`of the ’349 patent is reproduced below, with reference numbers in red added
`by the Board.
`
`
`5 Dr. Ehsani uses a lower-case letter q in referring to this axis. We use an
`upper-case letter Q for consistency with the claims that are before us.
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`Figure 8 is a block diagram of a sensorless vector control scheme. Ex. 1001,
`col. 3, ll. 16–17. Although the Specification of the ’349 patent does not
`explain the drawing, very similar drawings are provided as Figures 2 and 3
`in U.S. Patent No. 7,342,379 B2 (Ex. 3001, “the ’379 patent”), the
`disclosure of which is incorporated by reference into the ’349 patent. Id. at
`col. 4, ll. 23–29. In addition, Patent Owner’s expert, Dr. Gary Blank, was
`questioned extensively by Petitioner’s counsel at his deposition regarding
`Figure 8. See Ex. 1043, 24:3–51:4. With respect to the following
`observations, we find Dr. Blank’s testimony consistent with the explanation
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`of Figures 2 and 3 of the ’379 patent provided by the Specification of the
`’379 patent, and accept Dr. Blank’s testimony as an accurate description of
`what one of ordinary skill in the art would understand from Figure 8.
`Demand 801 provides a speed demand as a source of power for the
`motor drive, which is filtered by input filter 802 to provide filtered speed
`demand 803. Ex. 1043, 24:23–25:25. The power to drive the motor
`originates from dc-supply 804 and is supplied to pulse width modulation
`engine 805, which converts a direct-current signal into alternating current
`voltages, and controls the magnitude of those voltages by varying the width
`of the pulse. Id. at 26:24–27:18. Such control is effected by using an α-β
`voltage demand generated by frame of reference transform 806 using VQr
`and Vdr signals, as well as an estimated electrical angle. Id. at 27:19–29:8.
`The VQr and Vdr signals are supplied respectively by IQr current controller
`807 and Idr current controller 808, which receive “IQdr actual” signal 809,
`“IQdr demand” signal 810, and estimated electrical speed 811 derived from
`filtered speed demand 803. Id. at 30:20–31:3, 32:10–18. The “IQdr actual”
`signal is a combination of signals along the Q and d axes, and the “IQdr
`demand” signal results from a conversion performed by torque to IQdr map
`812 using demanded torque 813 (provided by speed loop controller 815,
`which is part of the motor controller) and Idr demand 814. Id. at 31:4–24,
`26:18–23. The “IQdr actual” signal 809 is determined by frame of reference
`transform 816 from measured current and applied voltage 817, as well as
`estimated electrical angle 818. Id. at 65:6–66:11.
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`C. Illustrative Claim
`Claim 1 of the ’349 patent is illustrative of the claims at issue:
`1. A heating, venting and/or air conditioning (HVAC) system
`comprising a system controller, a motor controller, an air-
`moving component, and a permanent magnet motor having a
`stationary assembly, a rotatable assembly in magnetic coupling
`relation to the stationary assembly, and a shaft coupled to the air-
`moving component, wherein the motor controller is configured
`for performing sinewave commutation, using independent values
`of Q and d axis currents, in response to one or more signals
`received from the system controller to produce continuous phase
`currents in the permanent magnet motor for driving the air-
`moving component.
`
`
`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278 (Fed. Cir. 2015) (“We conclude that Congress
`implicitly approved the broadest reasonable interpretation standard in
`enacting the AIA”), cert. granted sub nom. Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 890 (mem.) (2016).
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`1. Preambles
`Patent Owner contends that “[t]he preambles of the challenged claims,
`requiring an ‘HVAC system,’ are limiting.” Paper 30, 8. We disagree that
`the “HVAC system” portions of the preambles are limiting.6
`“Generally, . . . the preamble does not limit the claims.” DeGeorge v.
`Bernier, 768 F.2d 1318, 1322 n.3 (Fed. Cir. 1985). In particular, “[t]he
`preamble of a claim does not limit the scope of the claim when it merely
`states a purpose or intended use of the invention.” In re Paulsen, 30 F.3d
`1475, 1479 (Fed. Cir. 1994) (citing DeGeorge, 768 F.2d at 1322 n.3). In
`this instance, the “HVAC system” portions of the preambles of the
`challenged claims provide no antecedents for ensuing claim terms, with the
`bodies of the claims neither repeating nor referencing HVAC systems.
`Because the language in the bodies of the claims, standing alone, is
`sufficient to set forth the invention, the “HVAC system” portions merely
`provide a stated purpose for the invention. Accordingly, we find no
`
`
`6 Independent claim 1 recites a “heating, ventilating and/or air conditioning
`(HVAC) system.” Independent claim 16 recites a “blower assembly for a
`heating, ventilating and/or air conditioning (HVAC) system.” Independent
`claim 19 recites a “method for driving an air-moving component of a
`heating, ventilating and/or air conditioning (HVAC) system in response to a
`control signal, the HVAC system including a permanent magnet motor
`having a stationary assembly and a rotatable assembly in magnetic coupling
`relation to the stationary assembly, said rotatable assembly coupled in
`driving relation to the air-moving component.”
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`compelling reason to afford weight to the “HVAC system” language in the
`preambles.
`
`
`2. “using independent values of Q and d axis currents”
`In the Institution Decisions, the Board construed “using independent
`values of Q and d axis currents,” which is recited in independent claims 1,
`16, and 19, as requiring the use of Q and d axis current values that are
`developed independently of each other, without relying on one to derive the
`other. Paper 20, 7–8; IPR2015-00762, Paper 12, 6–7. Patent Owner does
`not explicitly contest this construction, and advocated for this construction in
`its Preliminary Responses. Paper 14, 9–10; IPR2015-00762, Paper 10, 19.
`But Patent Owner presents arguments that implicitly construe the phrase as
`requiring the use of independent demand Q and d axis currents, rather than
`the use of independent actual Q and d axis currents. See Paper 72, 6, 8.
`The phrase was added to the claims during prosecution, and Petitioner
`contends that it refers to the actual Q and d axis currents, noting the
`patentee’s representation that support for the limitation “can be found,
`among other places, in Fig. 8 of the instant application as filed.” Paper 78,
`8–9 (quoting Ex. 1002, 16). Petitioner observes that, in Figure 8 of the ’349
`patent (reproduced above), “[t]he ‘estimated electrical angle’ and ‘measured
`current and applied voltage’ signals [818 and 817] are input to the ‘Frame of
`Reference transform, abc to Qdr’ [816], which outputs the ‘IQdr actual’
`signal [809].” Id. at 10. The ’379 patent, incorporated by reference into the
`
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`’349 patent, addresses decoupling of the IQdr components in producing
`torque:
`The decoupling of IQdr components in the production of torque
`can be applied within either a sensorless control system or a
`sensor-controlled system. If a given motor does not show any
`discernible hybrid behavior, the control technique can default to
`that classically used with a [permanent-magnet] motor (i.e., Idr
`torque contribution assumed to be zero) where the torque
`contribution comes from IQr.
`
`Ex. 3001, col. 6, ll. 1–7. Petitioner’s position that these IQdr components
`refer to the actual Q and d axis currents, rather than the demand Q and d axis
`currents, is supported by the above disclosure as well as by Dr. Ehsani’s
`testimony that, in an ideal permanent-magnet, it is the actual d axis current
`value that is assumed to be zero. See Ex. 1009 ¶¶ 18–19.
`We clarify our construction of “using independent values of Q and d
`axis currents” as requiring the use of actual Q and d axis current values that
`are developed independently of each other, without relying on one to derive
`the other.
`
`
`3. “back-emf . . . motor”
`In the Institution Decisions, the Board construed “back-emf . . .
`motor,” which is recited in claim 9, as coterminous with “permanent magnet
`motor.” Paper 20, 7–8; IPR2015-00762, Paper 12, 6–7. Neither party
`contests that construction and we adopt it for this Final Written Decision.
`
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`B. Petitioner’s Motion to Exclude
`Petitioner filed a Motion to Exclude portions of Exhibit 2003 and the
`entirety of Exhibits 2010, 2011, and 2018–2025. Paper 50. But as Patent
`Owner contends, Petitioner’s Motion does not address Patent Owner’s
`timely supplementation of the challenged evidence pursuant to 37 C.F.R.
`§ 42.64(b)(2). Paper 54, 1. Patent Owner contends that the supplemental
`evidence is curative and that “[b]ecause Petitioners do not argue in their
`motion that [Patent Owner’s] supplemental evidence failed to cure the
`deficiencies they identify (or is deficient in any other way), Petitioners have
`waived any argument regarding the sufficiency of the supplemental
`evidence.” Id. (citing 37 C.F.R. § 42.23(b)). Petitioner counters that Patent
`Owner failed to seek authorization to file its supplemental evidence or its
`Opposition: “The Board should therefore ignore both Patent Owner’s
`supplemental evidence and its Opposition because it failed to seek
`authorization from the Board beforehand.” Paper 68, 1–2 (citing Gnosis
`S.P.A. v. South Alabama Med. Sci. Found., Case IPR2013-00116, Paper 29,
`3 (October 9, 2013)).
`Petitioner’s argument does not accurately reflect the requirements of
`the Board’s rules governing inter partes review proceedings. Once a trial
`has been instituted, any objection to evidence must be filed within five
`business days of service of the evidence and must identify the grounds for
`the objection “with sufficient particularity to allow correction in the form of
`supplemental evidence.” 37 C.F.R. § 42.64(b)(1). The party relying on the
`
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`evidence to which an objection is timely served is then provided an
`opportunity to correct, by serving supplemental evidence within ten business
`days of service of the objection. See 37 C.F.R. §§ 42.64(b)(1), 42.64(b)(2).
`If, upon receiving the supplemental evidence, the opposing party is still of
`the opinion that the evidence is inadmissible, the opposing party may file a
`motion to exclude such evidence. Service of such supplemental evidence
`does not require Board authorization, nor does filing of an opposition to a
`motion to exclude. 37 C.F.R. §§ 42.23, 42.64(b)(2), 42.64(c). Nothing in
`the Gnosis order cited by Petitioner stands for any contrary proposition.
`Indeed, the Scheduling Orders for this proceeding explicitly set forth
`deadlines for filing oppositions to motions to exclude. Paper 21, 4; Paper
`70, 4.
`
`We have considered the parties’ arguments, but need not reach the
`merits of Petitioner’s Motion to Exclude because, as explained below, even
`if the disputed evidence is considered, Patent Owner has not shown proof of
`secondary considerations that would support a conclusion of nonobviousness
`of the challenged claims. Accordingly, Petitioner’s Motion to Exclude is
`dismissed as moot.
`
`
`C. Patent Owner’s Motion to Exclude
`Patent Owner filed a Motion to Exclude portions of Exhibit 1020 and
`the entirety of Exhibits 1034 and 1035. Paper 53. As Petitioner points out,
`Patent Owner failed to follow the correct procedure to preserve its objections
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`to Petitioner’s evidence. See Paper 58, 1–2. On May 19, 2015, the Office
`amended 37 C.F.R. § 42.64(b)(1) in a final rule-making notice to require that
`objections be “filed” rather than “served” within five business days of
`service of evidence to which the objections are directed. 80 Fed. Reg.
`28,561, 28,563 (May 19, 2015). Patent Owner acknowledges that it served
`its objections on Petitioner on August 28, 2015, but did not file them until
`September 21, 2015 “in accordance with established practice under the
`former version of 37 C.F.R. § 42.[64](b)(1).” Paper 65, 1.
`Patent Owner requests that, in view of the rule change, we exercise
`our discretion under 37 C.F.R. § 42.5(b) to waive or suspend the
`requirement of the version of 37 C.F.R. § 42.64(b)(1) in effect at the relevant
`time. Id. at 2. We do not question the sincerity of Patent Owner’s
`representations that it “was admittedly unaware” of the rule change and that
`its errors “were honest mistakes on its part.” Paper 65, 1–2. Those
`representations are relevant. Nevertheless, in considering Patent Owner’s
`request, we are mindful of the history of this proceeding and guided by
`considerations of fairness. Patent Owner has benefited from our previous
`strict enforcement of 37 C.F.R. § 42.63(b) over strenuous efforts by
`Petitioner—including a request that we exercise our discretion under 37
`C.F.R. § 42.5—to correct Petitioner’s failure to include an affidavit attesting
`to the accuracy of the English translation of Hideji with its original filing in
`IPR2014-01121. See Paper 25. In this context, we decline to use our
`discretionary authority to excuse Patent Owner’s error.
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`Accordingly, we dismiss Patent Owner’s Motion to Exclude.7
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`D. Obviousness Over Bessler and Kocybik
`Petitioner contends that claims 1–3, 8, 9, 12, 16, and 19 are
`unpatentable over Bessler and Kocybik under 35 U.S.C. § 103(a). Pet. 1121,
`4. Bessler discloses an HVAC system that uses an electronically
`commutated motor (“ECM”). Ex. 1006, col. 4, ll. 11–13. In challenging
`independent claim 1, Petitioner contends that Bessler discloses all
`limitations but one, acknowledging that “Bessler does not explicitly disclose
`the use of sine wave commutation and independent [Q]- and d- axis
`currents.” Pet. 1121, 36. For the limitation that recites such features,
`Petitioner relies on Kocybik, noting that, like Bessler, Kocybik discloses an
`ECM. Id. at 41–46.
`Figure 1 of Bessler is reproduced below.
`
`
`7 Alternatively, the Motion would be dismissed because we do not rely on
`the evidence sought to be excluded in this Decision.
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`Figure 1 illustrates a central heating and air-conditioning variable speed
`control system. Ex. 1006, col. 3, ll. 8–11. Petitioner draws a
`correspondence between (1) structural elements shown in Figure 1 and a
`related embodiment shown in Figure 2; and (2) the “system controller,”
`“motor controller,” “blower” or “air-moving component,” and “permanent
`magnet motor” recited in different combinations in independent claims 1,
`16, and 19. Pet. 1121, 37–41, 53–56.
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`Petitioner relies on Kocybik, which is a doctoral thesis that includes a
`survey of electric motor control schemes for permanent magnet motors,8 for
`disclosure of sinewave commutation using vector control with independent
`Q and d axes to produce continuous phase currents. Id. at 43–46 (citing Ex.
`1007, 11–12, 17, 37, 40, 80, 86, 140, 144, Fig. 6.3, Fig. 6.10, Figs. 7.13–
`7.14, Fig. 9.1). We agree with Petitioner’s analysis as to how Bessler and
`Kocybik teach the limitations of claims 1, 16, and 19, which is supported by
`the testimony of Dr. Ehsani. See Ex. 1009 ¶¶ 47–55. Indeed, Patent Owner
`does not dispute that Kocybik teaches sinewave commutation using vector
`control with independent Q and d axes to produce continuous phase currents.
`Furthermore, Petitioner has provided adequate reasoning why a person of
`ordinary skill in the art would have effected the combination proposed (i.e.,
`configuring the system of Bessler to perform sinewave commutation in the
`manner described in Kocybik), namely that the use of sinewave
`commutation and independent Q and d axis currents would have provided
`predictable results to address known problems associated with other types of
`motors. Pet. 1121, 36–37 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`415–421 (2007)). In particular, Petitioner reasons persuasively that “using
`
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`8 Patent Owner does not dispute Petitioner’s assertion that Kocybik qualifies
`as a prior art printed publication under 35 U.S.C. § 102(b). See Pet. 1121, 4;
`Paper 30, 3 (“Kocybik describes high end applications at the time of its
`publication”), 25 (“Kocybik references higher end applications at the time of
`its publication”); Paper 21, 3 (“The patent owner is cautioned that any
`arguments for patentability not raised in the response will be deemed
`waived.”); Paper 70, 3 (same).
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`rectangular currents creates unwanted torque, and the use of sinusoidal
`currents can reduce unwanted torque and create smoother and quieter motor
`operation.” Id. at 37 (citing Ex. 1007, 25; Ex. 1009 ¶ 52).
`We are not persuaded by Patent Owner’s counterarguments. First,
`Patent Owner contends that Bessler teaches away from the claimed
`combinations because “one of the principal objects of Bessler is to eliminate
`the need for a system controller in an HVAC system,” and that a benefit of
`such elimination is a reduction in the number of microprocessors used.
`Paper 30, 15–16 (citing Ex. 1006, col. 1, ll. 22–34, col. 2, ll. 3–5). Patent
`Owner observes that Bessler “provides an integral microprocessor in its
`motor controller that can interpret, for example, the cycling of the on/off
`signal of the thermostat and directly create motor control signals without the
`need of a system controller developing interim system demand signals.” Id.
`at 19–20 (citing Ex. 1006, col. 5, l. 66–col. 6, l. 22). Like Bessler, the
`Specification of the ’349 patent describes that the “system controller” may
`be a thermostat or a separate controller : “the system controller 402 may be
`a thermostat, an additional control module in communication with a
`thermostat, or a standalone controller for the HVAC system 400.” Ex. 1001,
`col. 4, ll. 35–38 (emphasis added). Thus, the claims do not require a
`separate standalone system controller. For these reasons, Patent Owner’s
`teaching away arguments are not commensurate in scope with the claim
`language.
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`Second, Patent Owner contends that Kocybik is applied too
`expansively by Petitioner because Kocybik limits its disclosure to “higher
`end applications” like hybrid car engines, the aerospace industry, and high-
`accuracy machine tooling applications: “To be sure, Kocybik discusses
`motor control schemes including that sine wave commutation may be used
`with a [brushless permanent magnet] motor, but Kocybik does not discuss
`HVAC systems or the motors used in them.” Paper 30, 25–27. Patent
`Owner argues that only through hindsight reconstruction would one apply
`the teachings of Kocybik to Bessler because common sense in the industry
`cautioned against using more complex technology in HVAC systems.9 Id. at
`27. But Patent Owner’s argument does not effectively rebut the testimony of
`Dr. Ehsani that a person of ordinary skill in the art “would have recognized
`that a permanent magnet motor using sinusoidal commutation, such as is
`disclosed in Kocybik, could result in a motor that exhibits less unwanted
`ripple torque and, in turn, smoother output torque.” Ex. 1009 ¶ 52 (citing
`Ex. 1007, 25.
`Third, Patent Owner argues that the claims are nonobvious in light of
`certain objective indicia of nonobviousness. Paper 30, 27–35. When
`considering evidence of secondary considerations, we are mindful that the
`objective evidence of nonobviousness in any given case may be entitled to
`
`
`9 Patent Owner also argued that economic infeasibility suggested against the
`proposed combination, but withdrew that argument at the oral hearing.
`Tr. 57:20–23.
`
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`more or less weight, depending on its nature and its relationship with the
`merits of the claimed invention. See Stratoflex Inc. v. Aeroquip, 713 F.2d
`1530, 1538 (Fed. Cir. 1983). To be given substantial weight, evidence of
`secondary considerations must be relevant to the subject matter as claimed,
`and there must be a nexus between the merits of the claimed invention and
`the evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins
`& Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985).
`Patent Owner provides a narrative describing its attempts “to break
`into the market for variable speed electronically commutated motors for
`HVAC applications” by designing and selling a square-wave commutated
`brushless permanent magnet motor and controller called “Magellan.” Paper
`30, 29. Dissatisfied with its market share, Patent Owner “decided it needed
`a different approach,” developing “a more highly functional motor even if
`the resulting product would cost more.” Id. at 30. Patent Owner contends
`that the quiet operation, a beneficial consequence of sinewave commutation,
`“was a key feature that led to sales and gained market share,” and supports
`that contention with testimony by Mark E. Carrier, one of the inventors of
`the ’349 patent and the Vice President of New Product Development for
`Patent Owner. Id. at 30–31 (citing Ex. 2003 ¶¶ 12(b), 29–32, 34, 44–48).
`Patent Owner also contends that the selection of independent Q and d axis
`current control “benefited” the resulting product “because it directly
`contributed to making torque control easier and more accurate.” Id. at 31.
`Tellingly, Patent Owner cites to no testimony or documentation that
`
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`establishes such a connection between the independence of Q and d axis
`current control and the increase in sales for its new product. For this reason
`alone, Patent Owner fails to establish the necessary nexus between the
`merits of the claimed invention and its evidence of secondary considerations.
`See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (unsupported attorney
`argument in a brief cannot take the place of evidence). We also note our
`agreement with Petitioner that the evidence of record suggests a number of
`other features of Patent Owner’s products that may have contributed to
`commercial success so that we cannot conclude that there is an established
`nexus between that commercial success and the features recited in the
`claims. See Paper 36, 22–23 (citing Exs. 2005, 2006, 2014) (other
`advantages include “segmented stator benefits,” “processor boards are
`separated,” “use of a power module and DSP chip for enhanced performance
`and reliability,” “Includes Innovative Twist Lock”).
`Having considered all of the evidence of record, including Patent
`Owner’s evidence of alleged secondary considerations of nonobviousness,
`we conclude that Petitioner has demonstrated, by a preponderance of the
`
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`evidence, that independent claims 1, 16, and 19 of the ’349 patent are
`unpatentable.10
`With respect to dependent claims 2, 3, 8, 9, and 12, we also conclude
`that Petitioner has demonstrated that they are unpatentable. Claims 2, 3, 8,
`and 9 recite specific features that Petitioner identifies as disclosed in
`Kocybik, and we agree with those identifications. Pet. 11–21, 46–52. Claim
`12 recites that “at least one control signal from the system controller
`represents a desired torque or speed of the permanent magnet motor,” which
`Petitioner identifies as disclosed by Bessler. Id. at 52–53 (citing Ex. 1006,
`col. 2, ll. 47–50, col. 6, ll. 7–20). We agree with that identification. The
`rationale expressed by Petitioner for combining Bessler and Kocybik for the
`limitations of the dependent claims remains unchanged, and we determine
`that that rationale sufficiently supports a conclusion that the subject matter
`
`
`10 Our conclusion would be unaffected by a determination that the preambles
`of the claims reciting an HVAC system are limiting. Although Kocybik is
`not directed explicitly to HVAC systems, Petitioner relies on Bessler for
`such a teaching. We are persuaded that a person of ordinary skill in the art
`would have combined the teachings of the references in the manner
`articulated by Petitioner, particularly given Petitioner’s identification of the
`disclosure of an ECM by Kocybik and Bessler’s discussion of ECMs. See
`Pet. 1121, 36–37, 41–42. In particular, the suggestion that one of ordinary
`skill in the art would substitute a sinusoidally commutated ECM, as
`disclosed by Kocybik, for the square-wave commutated ECM disclosed by
`Bessler is supported by sufficient rational underpinnings. See KSR, 550 U.S.
`at 418.
`
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`of the dependent claims would have been obvious to one of ordinary skill in
`the art at the time of the invention. See Pet. 1121, 36–37.
`
`
`E. Anticipation by Hideji
`Hideji discloses a refrigerant circuit of an air conditioning device with
`a compressor driven by a permanent magnet synchronous motor.11 Ex. 1005
`¶ 22. Figure 2 of Hideji is reproduced below.
`
`
`
`
`11 Hideji uses the terms “permanent magnet synchronous motor” and
`“brushless DC motor” synonymously. Ex. 1005 ¶ 22.
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`Figure 2 is a block diagram of a driving device for a permanent magnet
`synchronous motor. Id. ¶ 28. Driving device 50 includes three-phase pulse-
`width modulation (“PWM”) inverter 31, alternating-current power supply
`32, rectifier circuit 33, and control device 34. Id. ¶ 30. The control device
`includes power input part 35, three-phase/two-phase coordinate conversion
`part 36, rotor speed and position calculating part 37, speed control part 38,
`phase control part 39, current control part 40, two-phase/three-phase
`coordinate conversion part 41, and induced voltage detecting part 42. Id.
`¶ 32
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