trials@uspto.gov
`571-272-7822
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`IPR2015-00465, Paper No. 31
`April 13, 2016
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`
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`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`ZHONGSHAN BROAD-OCEAN MOTOR CO., LTD.
`Petitioner
`vs.
`NIDEC MOTOR CORPORATION
`Patent Owner
`- - - - - -
`Appeal IPR2015-00465
`Application 12/206062
`Technology Center 2800
`Patent 8,049,459 B2
`- - - - - -
`Oral Hearing Held: March 22, 2016
`
`
`Before: JAMES A. TARTAL, BENJAMIN D. M., WOOD,
`and PATRICK M. BOUCHER (via video), Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Tuesday,
`March 22, 2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia in Courtroom D at 1:30 p.m.
`REPORTED BY: Karen Brynteson, RMR, CRR, FAPR
`
`
`571-272-7822
`
`IPR2015-00465, Paper No. 31
`April 13, 2016
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`ZHONGSHAN BROAD-OCEAN MOTOR CO., LTD.
`Petitioner
`vs.
`NIDEC MOTOR CORPORATION
`Patent Owner
`- - - - - -
`Appeal IPR2015-00465
`Application 12/206062
`Technology Center 2800
`Patent 8,049,459 B2
`- - - - - -
`Oral Hearing Held: March 22, 2016
`
`
`Before: JAMES A. TARTAL, BENJAMIN D. M., WOOD,
`and PATRICK M. BOUCHER (via video), Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Tuesday,
`March 22, 2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia in Courtroom D at 1:30 p.m.
`REPORTED BY: Karen Brynteson, RMR, CRR, FAPR
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`
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`PETER T. EWALD, ESQ.
`W. SCOTT STRICKLAND, ESQ.
`GANG LUO, ESQ.
`Oliff LLP
`277 S. Washington Street, Suite 500
`Alexandria, VA 33214
`703-836-6400
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`ON BEHALF OF THE PATENT OWNER:
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`SCOTT R. BROWN, ESQ.
`Hovey Williams LLP
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`10801 Mastin Boulevard, Suite 1000
`84 Corporate Woods
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`Overland Park, KS 66210
`913-647-9050
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`Appeal No. 2015-00465
`Application No. 12/206062
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`
`P R O C E E D I N G S
`
`(1:30 p.m.)
`JUDGE TARTAL: Good afternoon. Please be
`
`seated.
`
`Good afternoon and welcome. We are here for a
`final hearing in an inter partes review captioned Zhongshan
`Broad-Ocean Motor Company Limited versus Nidec Motor
`Corporation, IPR 2015- 00465, U.S. patent 8,049,459 B2.
`First, let me begin by introducing the panel. I am
`joined by Judge Wood and Judge Boucher. And I am Judge
`Tartal.
`
`Let's get the parties' appearances first, please.
`Who do we have appearing today on behalf of Petitioner?
`MR. EWALD: Good afternoon, Your Honor. I am
`Peter Ewald on behalf of the Petitioner. And I am joined by
`my colleagues, Scott Strickland and Gang Luo.
`JUDGE TARTAL: Welcome, counsel. And now
`for Patent Owner, who do we have appearing today?
`MR. BROWN: Good afternoon, Your Honor, Scott
`Brown appearing on behalf of Patent Owner.
`JUDGE TARTAL: Okay. Welcome.
`We set forth the procedures for today's hearing in
`our trial order. And as a reminder, each party will have --
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`Appeal No. 2015-00465
`Application No. 12/206062
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`JUDGE BOUCHER: Judge Tartal, could you make
`sure your microphone is on, please? I am having difficulty
`hearing you, but I heard the parties fine.
`JUDGE TARTAL: I will try that.
`JUDGE BOUCHER: That helps. Thank you.
`JUDGE TARTAL: Each party will have 60 minutes
`of total time to present arguments concerning both the grounds
`of unpatentability, as well as the motion to amend.
`Petitioner has the burden of proof regarding the
`challenged claims for which we instituted trial and will
`present argument first. Petitioner may reserve time to respond
`to arguments presented by Patent Owner.
`Patent Owner will follow Petitioner and may
`respond to Petitioner's arguments and also argue its motion to
`amend, if it so chooses.
`To the extent Petitioner has reserved rebuttal time,
`Petitioner may respond to Patent Owner's presentation on all
`matters.
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`To the extent Patent Owner then reserves rebuttal
`time, it may only respond to the Petitioner's arguments
`opposing the motion to amend.
`For clarity in the transcript, when you refer to an
`exhibit in your demonstratives or on the screen, please state
`for the record the exhibit and page number or for
`demonstratives, the slide number, to which you are referring.
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`Appeal No. 2015-00465
`Application No. 12/206062
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`Both parties are reminded that demonstrative slides
`are not evidence and will not be relied upon for final decision.
`Moreover, arguments raised for the first time during this
`hearing or in a demonstrative will not be given weight in our
`final written decision.
`Are there any questions on behalf of Patent Owner?
`MR. BROWN: No.
`JUDGE TARTAL: Any questions on behalf of
`Petitioner?
`MR. EWALD: No.
`JUDGE TARTAL: Petitioner, you may begin.
`Would you like to reserve a certain amount of time for your
`reply?
`
`MR. EWALD: Your Honor, I think we would like
`to reserve approximately 45 minutes for our rebuttal.
`JUDGE TARTAL: 45 minutes for the rebuttal?
`MR. EWALD: Yes.
`JUDGE TARTAL: Counsel, you can begin.
`MR. EWALD: Good afternoon, Your Honors.
`With the Board's permission, I will present Petitioner's
`arguments with respect to the challenged claims, and then my
`colleague, Mr. Strickland, will present our arguments with
`respect to the motion to amend.
`JUDGE TARTAL: That's fine.
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`Appeal No. 2015-00465
`Application No. 12/206062
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`MR. EWALD: With respect to the challenged
`claims, it is our position that the patentability of the
`challenged claims really rises or falls on the construction of
`what is a power input. The parties both argued this
`construction in the pretrial phase, in the petition, and in the
`preliminary response.
`And, in particular, we argued whether or not the
`power input, the broadest reasonable interpretation of power
`input in the context of this patent included common lines or
`neutral lines.
`In the instituting decision, the Board agreed with
`the Petitioner that the broadest reasonable interpretation of
`that term did include common or neutral lines. The Patent
`Owner has not offered any further arguments or evidence with
`respect to that claim term. In fact, in their response, they
`have actually conceded to that construction for purposes of the
`IPR.
`
`So it is our position that once we have established
`that the broadest reasonable interpretation of the claims and of
`the claimed power input is construed to include a common
`line, then the rest of the limitations really fall as a result of
`that.
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`And we will walk through our position on those
`limitations and each of the claims. Briefly, just to set the
`stage, we're really focused here on only really two limitations.
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`Appeal No. 2015-00465
`Application No. 12/206062
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`The Patent Owner has only disputed two -- the teachings in the
`prior art with respect to two limitations in the original claims.
`And that is with respect to the Pant reference,
`whether the Pant reference teaches a variable speed motor, a
`motor controller. We think it did us, and we will explain why.
`Importantly, we note that the Patent Owner does
`not dispute that Mullin teaches the claimed variable speed
`motor and motor controller. With respect to Mullin, as well as
`Pant, the other issue is whether or not Pant and Mullin teach
`the limitation. We will refer to it as the power applied to
`limitation, which requires, for example, in claim 1, "wherein
`the first one of said sensing circuits senses power applied to
`the first and second inputs and a second one of said sensing
`circuits senses power applied to the second and third inputs."
`So given that we have a concession that the Mullin
`reference does, in fact, teach the variable speed motor and
`motor controller, I would actually like to start with a
`discussion of the power applied to limitation.
`So I have on the board here our slide 5 for Judge
`Boucher's reference. And it is our position that given the
`construction of power input and the fact that a common line
`does, in fact -- does, in fact, come under the proper
`construction of what a power input is, that this limitation, the
`plain reading and the plain understanding of this limitation is
`met.
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`Application No. 12/206062
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`The Patent Owner has consistently argued that this
`limitation requires sensing power at a specific input. In
`particular, at -- they required that it identify a specific
`location where the power is being sensed.
`And we would argue and we have submitted expert
`testimony in support of this that really what this limitation is
`requiring is an identification of what the power is. It is
`sensing what the power is, not where the power is at.
`And a plain reading of this claim term is simply
`wherein a first one of said sensing circuits senses power
`applied to the first and second inputs. And that's describing
`the power, not where the power is being sensed.
`There is no requirement that the sensor be sensed
`at a particular input or even sensed at a particular sensor. It is
`just sensing power applied to a first and second input.
`And if we could look quickly, we can use the Pant
`reference as an example. There is no dispute that Pant teaches
`a high- speed power input at 270 and a low- speed power input
`at 278. And then there is a common input at 274.
`The sensor 290 and the sensor 294 sense power
`applied to the first and second input. So the high- speed 270 is
`the first input. The common line 274 is the second input. And
`278 is the third input.
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`Appeal No. 2015-00465
`Application No. 12/206062
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`And sensor 290 senses power applied to both 270
`and 274. Sensor 294 senses power applied to both 274 and
`278. That's the plain reading of this claim limitation.
`JUDGE BOUCHER: So, can I just get a
`clarification?
`MR. EWALD: Yes, Your Honor.
`JUDGE BOUCHER: What does Pant actually sense
`at 270 and 278? It is not the power directly, is it? Isn't it
`some kind of surrogate like a voltage difference?
`MR. EWALD: It is sensing a voltage difference,
`that's correct, Your Honor. But the '459 patent is clear that
`you can use voltage or current sensors.
`And, in fact, while it discloses a particular
`embodiment of a current sensor and claims it in claim 4, for
`example, which is not a challenged claim, that particular
`embodiment of the current sensor is not required in any of the
`challenged claims, but it is clear that voltage or current
`sensors could be used.
`JUDGE BOUCHER: So if it is sensing the voltage
`difference and the scale at which the voltage differences are
`defined is arbitrary, using a ground voltage, for example, how
`is it, in fact, sensing power at 274? Because the voltage, you
`know, the voltage scale is arbitrary. We set ground to zero.
`So if it is only detecting a potential difference
`there, how is it actually sensing power at 274?
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`MR. EWALD: Well, I think, Your Honor, that's
`what we would dispute, that the claim doesn't require that it
`has to sense power at 274. It is -- the claim -- the language of
`the claim says "sensed power applied to the first and second
`input," not at the first or the second input. It is power applied
`to both.
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`And it is a circuit. And you are sensing voltage
`across that circuit. Power is applied to both the high- speed
`input at 274 and the common line input at 274.
`JUDGE BOUCHER: Okay. So if I have a potential
`difference between 270 and 274, for example, of 100 volts,
`what is the power applied to 274?
`MR. EWALD: Well, it is -- it is power applied to
`both. The claim -- it is a circuit that has to be completed, and
`we would also note that it is an alternating current. And so
`the current is going to at some points flow from 270 to 274
`and other times it is going to flow from 274 to 270.
`So it is going to sense that applied voltage of 100
`volts in either -- in either direction.
`JUDGE BOUCHER: Okay. Thank you.
`MR. EWALD: And I think that gets to the crux of
`our position on this limitation. The limitation, we feel, was
`broadly written. It was broadly written that to use the
`language "sensed power applied to," not sensed power at. Not
`even sense a particular type of power.
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`Application No. 12/206062
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`The patentee certainly to make it clear could have
`said sense a first power at a first input and sense a second
`power at a second input, but it didn't. It chose to broadly
`claim this feature of sensing power applied to a first and
`second inputs.
`And, as I said, once -- we have agreed that a
`common line is a power input. The prior art teaches sensing
`power applied to both inputs.
`JUDGE BOUCHER: I thought during your opening
`remarks you said that the Patent Owner had conceded and
`agreed with your construction of power input? I just want to
`make sure I understood that correctly.
`MR. EWALD: I'm sorry, I did say that. And I'm
`sorry if I confused that issue. They have conceded that.
`There is no dispute over that.
`JUDGE BOUCHER: They have?
`MR. EWALD: That is our position. Because their
`footnote 3 of their response says that they have accepted the
`Board's construction of that term for purposes of the IPR.
`JUDGE BOUCHER: Okay. Thank you.
`MR. EWALD: So I will briefly, I would like to
`briefly then address some of the other claims and limitations.
`In particular, I will start with claim 18.
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`Appeal No. 2015-00465
`Application No. 12/206062
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`As we argued in our reply brief, it is our position
`that the Patent Owner has conceded the unpatentability of
`claim 18.
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`They argued for the unpatentability, excuse me, of
`claim 18. They argued for the patentability of claim 18 in
`their preliminary response, and that argument relied primarily
`on the fact that the common line was not an input.
`The Board construed power input to include
`common lines, and the Patent Owner hasn't offered any new
`arguments with respect to claim 18. There is a very brief
`reference to claim 18 in their response. It is in a conclusory
`sentence at the beginning of their brief with respect to the
`Pant reference, arguably, I suppose, because they argue that
`Pant doesn't teach a variable speed motor and motor controller,
`but as I said in my opening, they have conceded that Mullin
`does teach the claimed variable speed motor and motor
`controller, so there is really no argument that claim 18 is, in
`fact, unpatentable as anticipated by Pant and Mullin.
`And --
`JUDGE BOUCHER: Would you concede, would
`the Petitioner concede that neither Pant nor Mullin detects
`power at that neutral input?
`MR. EWALD: In terms of detecting power at a
`location, i.e., the second input, yes, we would agree that Pant
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`Appeal No. 2015-00465
`Application No. 12/206062
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`and Mullin do not detect power at the second input. Yes, Your
`Honor.
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`JUDGE BOUCHER: Okay. Thank you.
`MR. EWALD: With respect to claim 1, as I
`mentioned, so there is no dispute that Mullin teaches the
`claimed motor and motor controller. I have discussed the
`power applied to limitation.
`So we will briefly just go through, the Patent
`Owner has spent quite a bit of time arguing that Pant does not
`teach the claimed variable speed motor and motor controller.
`We feel like as an initial matter, frankly, that's an
`ancillary issue that really doesn't even go to the patentability
`of the claim. The patent does not claim to have invented
`anything or provided anything novel with respect to motor or
`motor controller.
`And, in fact, the '459 patent at column 17, lines 23
`through 26, actually says that all of the above described
`embodiments of the invention are independent of motor
`technology and induction or brushless permanent magnets,
`switched reluctance, brush DC, and other types of motors may
`be used.
`
`So there is -- they are not, they are not disclosing
`or claiming anything new or novel with respect to the motor
`and the motor controller. As I said, the patent makes it clear
`that voltage or current sensors can be used. And while they
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`Application No. 12/206062
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`disclose and in other claims claim a particular embodiment of
`a current sensor, that particular embodiment is not at issue in
`any of the challenged claims.
`Moreover, we feel like the Patent Owner's reading
`of the claim limitation variable speed motor and motor
`controller is overly narrow. The claim language is clear. It
`requires a variable speed motor, and it requires a motor
`controller.
`There is, if we can -- there is --
`JUDGE BOUCHER: Why is that reasonable,
`though? Why would it be reasonable to have a variable speed
`motor with a motor controller that was not a variable motor
`controller? Why doesn't variable speed apply to the entire
`claim limitation? It wasn't written as two limitations. It is
`written as a single limitation in the claim.
`MR. EWALD: Well, we would argue that the way
`-- that the motor controller just needs to be capable of
`operating the variable speed motor. This is a drop- in
`replacement motor.
`There is only going to be a certain number of -- it
`is designed to replace a PSC motor, which is going to have
`some finite number of inputs. And so the Patent Owner's
`arguments and their experts seem to say that for a variable
`speed motor to really be a variable speed motor, it has to be
`able to operate at some infinite number of speeds; like as if
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`Application No. 12/206062
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`there is some sort of potentiometer that allows it to operate at
`some infinite number of speeds. And that's certainly not what
`is described in the '459 patent or what is claimed.
`It is a drop- in replacement that operates with the
`same inputs that would come into the PSC motor. And
`certainly the Pant reference discloses a variable speed motor, a
`brushless permanent magnet motor, and the Board agreed with
`our position on that in the Institution decision.
`And it discloses a controller that controls that
`motor and allows that motor to operate using the same inputs
`that go into the PSC motor.
`Our position is that the claims don't require
`anything more. Certainly not the challenged claims of 1
`through 3, 7 and 18.
`JUDGE TARTAL: Counsel, just to be clear, if -- if
`we interpret the provision of variable speed motor and motor
`controller to mean a variable speed motor and a variable speed
`motor controller, you would agree that the Pant reference is
`not anticipatory?
`MR. EWALD: Well, I think there would have to be
`some construction of what a variable speed motor is. There is
`certainly nothing in the claim that requires that the variable
`speed -- excuse me, some construction of what the variable
`speed motor controller would be.
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`There is nothing in the claim that would give us
`any guidance as to what would meet a variable speed motor
`controller. And there is certainly really nothing in the
`specification that would give us any guidance as to what
`would or would not meet that limitation of a variable speed
`motor controller.
`In fact, it is only discussed once early in the patent
`in a discussion of prior art, and the fact that it was known to
`replace PSC motors with variable speed motors.
`So I can't really conced e that, because I don't think
`there is any real clear guidance on then what would or
`wouldn't meet that limitation. To me the claim requires a
`motor and a controller, a variable speed motor and a
`controller.
`The Pant reference has a variable speed motor. It
`has a controller that's capable of controlling that variable
`speed motor using the inputs that are provided to the PSC
`motor. That's all the '459 patent describes.
`JUDGE TARTAL: You have used your 15 minutes.
`MR. EWALD: Thank you, Your Honor. We will
`reserve the rest of our time.
`JUDGE TARTAL: Thank you.
`Counsel for Patent Owner, would you like to
`specify a particular amount of time to begin with?
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`Application No. 12/206062
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`MR. BROWN: I don't actually think so, Your
`Honor. I am just going to argue. And if I have time left over
`to have reply on the motion to amend, I will reserve whatever
`time is left over.
`If I may have just a moment. If I can approach, I
`have printouts of the slides we submitted on Friday just for
`reference.
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`JUDGE TARTAL: Yes, please. Thank you.
`MR. BROWN: May it please the Board, I am going
`to first address the anticipation arguments, probably in the
`order of Pant and then Mullin. And then I will turn to
`discussion of our proposed motion to amend claim 18.
`JUDGE TARTAL: Counsel, can I just ask you to
`begin, what is your position on the status of claim 18?
`MR. BROWN: I believe we have conceded that
`claim 18 is unpatentable without an amendment.
`JUDGE TARTAL: Thank you.
`MR. BROWN: Turning then to claim 1 and the
`issue that was most recently being discussed by Petitioner, and
`that is the question of whether claim 1 requires a variable
`speed motor controller in its phrase "a variable speed motor
`and motor controller."
`So as Petitioner mentioned in his argument, this
`patent is about drop- in replacement motors. And, in fact,
`trying to get the advantages of drop- in replacement motors
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`Appeal No. 2015-00465
`Application No. 12/206062
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`when you are dropping into a system that previously contained
`PSC or permanent split capacitor motors. And this is what the
`specification talks about.
`If you would look at slide P04, we have set forth
`some of the specification on this issue. On the left -hand side
`we have a quote from column 2 of the '459 patent, which is
`just discussing the prior art PSC system, the PSC-based
`systems. And the on the right- hand side we have from column
`3 some of the patent's discussion about variable speed motors.
`And, in particular, it says, "the speed of a BPM can
`be electronically controlled and set specifically to match the
`air flow requirements for each application, thus permitting
`more efficient operation. Also, BPM motors use power
`approximately proportional to the cube of motor speed,
`whereas PSC motors use power approximately proportional to
`motor speed, therefore, as motor speed drops, BPM motors use
`less power than PSC motors over a wide range of motor
`speeds."
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`And then finally, the highlighted language below
`that, "it would therefore be desirable to provide an improved
`drop- in replacement for a PSC motor in an HVAC system to
`realize the advantages of a variable speed blower motor
`without requiring significant changes to the HVAC system."
`And it is that first advantage that you are surely
`not going to get if you don't have a variable speed motor
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`Appeal No. 2015-00465
`Application No. 12/206062
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`controller. Specifically, if you don't have a controller that can
`run the motor in a wide range of speeds, you cannot
`electronically control it and set it specifically to match the air
`flow requirements for each application.
`So clearly what is being contemplated in the '459
`specification's description is that you are going to be able to
`utilize the advantages of dropping in this variable speed
`motor. And the only way you can get all those advantages is if
`you have a variable speed motor controller.
`And we believe given the context, even though, of
`course, the Board needs to apply the broadest reasonable
`interpretation, you still do that in light of reading the
`specification of the '459 patent.
`And in this context, variable speed -- variable
`speed must modify both motor and motor controller in that
`claim phrase, if you are going to be obtaining the advantages
`that the '459 is teaching one of skill that they are going to get
`by employing the invention.
`JUDGE TARTAL: Counsel, can you just address
`the argument that even if we were to apply variable speed to
`the motor controller, there is insufficient explanation of the
`specification to, to provide any meaning as to -- as to what
`that controller entails?
`And I would also note in the portion that you just
`referenced, for example, it talks about a motor where the speed
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`of BPM can be electronically controlled, it isn't definitive in
`requiring electronic control.
`Is there anything more in the specification that,
`that directs our attention to what is encompassed by the
`variable speed motor controller?
`MR. BROWN: I don't know if the specification
`certainly speaks to that, but we certainly have the testimony
`from Dr. Horenstein who says what one of ordinary skill who
`has read the specification would have understood by reading
`the specification.
`And the construction that we proposed was first for
`the variable speed motor that it is a motor that is capable of
`being operated in a wide range of speeds, as distinct from a
`multiple speed motor, which just would have a few discrete
`speeds.
`
`And, likewise, a variable speed motor controller is
`simply going to be a controller that is capable of operating the
`variable speed motor in such a wide range of speeds.
`Now, the Board, although it did not expressly
`construe variable speed motor, it clearly inferred that there
`was a construction being applied. And we note at P05, we
`have set forth some of the language from the Board's
`Institution order in the top box.
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`The Board said we agree with Patent Owner that
`the '459 patent distinguishes between variable speed motors
`and fixed or multiple speed motors.
`And then later the Board refused institution on the
`Rowlette reference on the basis that it did not disclose a
`variable speed motor. So, therefore, the Board must have been
`interpreting variable speed motor to be a limitation that has
`meaning that differentiates it from the multiple speed motor.
`And we would say that the variable speed motor
`controller, likewise, has to have sufficient functionality to be
`able to run the motor in this wide range of speeds, such that it
`distinguishes over a permanent split capacitor or multiple
`speed motor.
`JUDGE BOUCHER: Could we look at the claim
`for a second? Claim 1, for example, such as on PO 2, and I am
`having trouble understanding how the -- you know, I
`understand the context of the specification sets up for the
`drop- in replacement. But how does the variable speed of the
`motor or of the motor controller relate to everything else that
`is going on in the claim?
`MR. BROWN: Well it relates to it, Your Honor,
`because the rest of the claim is setting forth the way that the
`sort of drop- in replacement system is going to determine at
`what speed should I run this variable speed motor.
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`So it is being dropped into an existing system,
`which has some plurality of power inputs. And then it is using
`the sensors to determine which of those power inputs is
`actually receiving power.
`And based on which of those three inputs as
`claimed here in claim 1 is receiving power, it then makes a
`determination about what parameters should I run this variable
`speed motor at.
`And then the variable speed motor controller is
`going to operate the variable speed motor based on that
`parameter information. So that's the way it ties together. You
`are dropping in this variable speed motor into a preexisting
`system that had a discrete number of inputs, and you have
`programmed your variable speed motor controller so that it can
`operate the variable speed motor at these different values,
`depending on which power input, because the system it is
`going into, if it is permanent split capacitor motor, that is just
`going to have -- that would have just had different taps.
`And so depending on which input was receiving
`power, a different tap would receive the power, which would
`automatically operate that motor. But if your variable speed
`motor isn't carefully designed and operated by your variable
`speed controller, it is not going to be able to mimic the control
`parameters represented by the different taps that are receiving
`power.
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`JUDGE BOUCHER: Right. So if I dropped in a
`variable speed motor into a system that existed, I could not
`operate it with the motor controller, that previously existed for
`a fixed speed motor?
`MR. BROWN: There is no evidence that you
`could. I mean, it would be catch- as-catch can. Maybe it
`would work; maybe it wouldn't.
`But this system is designed to adjust this variable
`speed motor so that it is going to mimic the system that is
`being dropped into, but yet get the advantages of the variable
`speed motor.
`Turning then to --
`JUDGE TARTAL: Can I just ask counsel, in the
`same vein of claim 1, do any of the additional limitations
`correspond to, what I think you described as a wide range of
`speeds?
`
`So, in other words, if it is only utilizing two
`sensing circuits and identifying two or three operating
`situations, how is that encompassed by a wide range of speeds
`that a variable motor would correspond to?
`MR. BROWN: It is not encompassed by that
`particular language, Your Honor. It is the concept that the
`system is going to be dropped into different systems.
`So for any one system, there is going to be three,
`five, six speeds that it needs to operate at. But because it can
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`chameleon-like be substituted in the different systems, it will
`have different variable speeds depending on which system it is
`put into, but there is not, within the body of claim 1, there is
`not a direct further reference to the variable range of speeds.
`Turning then to what is disclosed in Pant, on PO 6,
`we have set forth the disclosure that is relied on by Petitioner.
`On the left- hand side from Pant, and it comes out of paragraph
`34, there is exactly one sentence, I believe, that they are
`relying on.
`So after discussing PSC motors, there is the
`sentence, "in other constructions, the electric machine 218 can
`comprise other types of electric motors, e.g., other types of
`induction motors, brushless, permanent, magnet motors,
`switched reluctance motors, direct current motors and the like
`and/or other types of electric machines having a motor and a
`stater."
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`That is the entirety of the discussion in Pant on
`this subject. And it is our submission that along with the
`testimony from, from Dr. Horenstein, that certainly does not
`disclose to one of ordinary skill a variable speed motor. And,
`of course, the allegation is anticipation here.
`And so lacking a variable speed motor, Pant lacks
`one of the claim limitations.
`JUDGE BOUCHER: If we disagreed with that and
`found that disclosure to be sufficient to disclose using a
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