UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`TOYOTA MOTOR CORP. and AISIN SEIKI CO., LTD.,
`
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`
`Patent Owner.
`__________________________________
`
`Case No. IPR2017-01494
`U.S. Patent No. 7,683,509
`__________________________________
`
`DECLARATION OF JOSEPH J. BEAMAN, JR., Sc.D.
`
`
`INTELLECTUAL VENTURES II EX. 2004
`Toyota Motor v. Intellectual Ventures II
`IPR2017-01494
`
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`TOYOTA MOTOR CORP. and AISIN SEIKI CO., LTD.,
`
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`
`Patent Owner.
`__________________________________
`
`Case No. IPR2017-01494
`U.S. Patent No. 7,683,509
`__________________________________
`
`DECLARATION OF JOSEPH J. BEAMAN, JR., Sc.D.
`
`
`INTELLECTUAL VENTURES II EX. 2004
`Toyota Motor v. Intellectual Ventures II
`IPR2017-01494
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`1.
`
`I, Joseph J. Beaman, Jr., Sc.D., am making this declaration at the
`
`request of Patent Owner Intellectual Ventures II LLC (“IV”) in the matter of the
`
`Inter Partes Review (IPR2017-01494) of U.S. Patent No. 7,683,509 (“the ’509
`
`Patent”). I understand that this declaration is being submitted in the IPR as Exhibit
`
`2004.
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate of $475 for consulting services. My compensation in no way depends
`
`on the outcome of this proceeding.
`
`3.
`
`In forming my opinions, I considered, in addition to my own
`
`knowledge and experience in the relevant field from the perspective of a person of
`
`ordinary skill in the art at the relevant time, the following written materials:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 1001 (the ’509 Patent);
`
`Petitioners’ Petition in this IPR (Paper 3);
`
`Exhibit 1114 (Dr. David L. Trumper’s declaration);
`
`Exhibit 1102 (Stephan);
`
`IV’s Patent Owner Preliminary Response (Paper 7);
`
`Decision Instituting Inter Partes Review (Paper 10);
`
`Exhibit 2005 (My curriculum vitae); and
`
`Exhibit 2006 (Transcript of cross examination of Dr. David L.
`
`Trumper).
`
`-1-
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`4.
`
`Exhibit 2005 is a copy of my current curriculum vitae (“CV”).
`
`PROFESSIONAL BACKGROUND
`
`5.
`
`I have extensive education, research, and work experience in the field
`
`of cooling systems for electromagnetic devices. I received a B.S. degree in
`
`Mechanical Engineering from The University of Texas at Austin in 1972, then
`
`received an M.S. degree in Mechanical Engineering from The University of Texas
`
`at Austin in 1975, then received an Sc.D. degree in Mechanical Engineering from
`
`Massachusetts Institute of Technology in 1975.
`
`6.
`
`I have conducted significant research and published significant papers
`
`in the field of temperature control in electromechanical systems and advanced
`
`manufacturing. For example, I have published over 100 papers and I have received
`
`approximately 15 US patents in this field. My specific manufacturing
`
`research interest is in Additive Manufacturing (AM). I was the first academic
`
`researcher in the field. One of the most successful AM approaches, Selective Laser
`
`Sintering, was a thermal process that was developed in my laboratory. I was one of
`
`the founders of DTM Corporation (now merged with 3D Systems), which markets
`
`Selective Laser Sintering (SLS). While at DTM, I was CTO and responsible for the
`
`first machine design, which included the cooling systems for the galvanometer
`
`driven laser scanning systems. I am a Fellow of both the American Society of
`
`-2-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`Mechanical Engineers and the Society of Manufacturing Engineers. I was elected
`
`to the National Academy of Engineers in 2013.
`
`7.
`
`Since 1979, I have continuously worked as an assistant professor,
`
`associate professor, or professor of Mechanical Engineering at The University of
`
`Texas at Austin. In these positions, I have continually taught the types of courses
`
`relevant to temperature control in electromechanical systems and advanced
`
`manufacturing, including dynamic systems and control, which includes
`
`electromechanical devices. Further, I have conducted my own research, and
`
`supervised Ph.D. candidates, in research related to temperature control in
`
`electromechanical systems and advanced manufacturing. For example, my research
`
`team has just completed the design and construction of a new high temperature
`
`SLS machine with unparalleled temperature control of the processing temperature
`
`environment.
`
`8.
`
`The foregoing experience and education, a large portion of which was
`
`completed before the relevant time for assessing the patentability of the ’509
`
`Patent, more than qualify me as a person of ordinary skill in the art of the ’509
`
`Patent at the relevant time. In addition, I worked with people that were persons of
`
`ordinary skill in the art. From my personal experience working on temperature
`
`control in electromechanical systems and advanced manufacturing myself and with
`
`others, I understand the types of problems and the knowledge that a person of
`
`-3-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`ordinary skill in the art would have confronted and known at the relevant time.
`
`Further, in view of my education and experience both before and after the relevant
`
`time, I am an expert in temperature control in electromechanical systems and
`
`advanced manufacturing, with knowledge and skill of the art of the ’509 Patent
`
`that is well beyond the level of knowledge and skill of a person of ordinary skill in
`
`the art of the ’509 Patent
`
`SCOPE OF TESTIMONY
`
`9.
`
`I understand that this IPR involves a number of subjects related to the
`
`patentability of certain claims of the ’509 Patent. For example, I understand that
`
`the ultimate questions of whether the ’509 Patent is anticipated by, or would have
`
`been obvious in view of, the prior art at the relevant time, are at issue in this IPR.
`
`However, I understand that my testimony in this IPR is limited in scope, and that I
`
`have been asked to testify regarding a limited set of subjects relevant to this IPR.
`
`The specific topics that I have been asked to address are listed in the numbered,
`
`bold headings of the section of this declaration labeled “SUBSTANTIVE
`
`TESTIMONY.” I have spent a significant amount of time, over multiple days, to
`
`analyze and express opinions about the specific topics addressed in this
`
`declaration.
`
`10. With respect to this IPR, I have not analyzed nor expressed any
`
`opinion, nor endeavored to analyze or express an opinion, about any subject that is
`
`-4-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`not expressly included in the section labeled “SUBSTANTIVE TESTIMONY.”
`
`While I could, if given sufficient time, analyze and express an opinion concerning
`
`additional subjects related to data caching that are not expressly included in this
`
`declaration, doing so would require a significant investment of time, over multiple
`
`days, similar to the significant amount of time I devoted to the issues addressed in
`
`this declaration.
`
`RELEVANT LEGAL STANDARDS
`
`11.
`
`I am a mechanical engineer by training and profession. The opinions I
`
`am expressing in this declaration involve the application of my knowledge and
`
`experience to the evaluation of the ’509 Patent and certain prior art with respect to
`
`the ’509 Patent. My knowledge of patent law is that of a lay person, albeit one who
`
`has had some experience relevant to patent law. Therefore, the attorneys from
`
`Knobbe, Martens, Olson & Bear, LLP, who represent IV, have provided me with
`
`guidance as to the applicable patent law in this matter. The paragraphs below
`
`express my understanding of how I must apply current principles related to
`
`patentability to my analysis.
`
`12.
`
`I understand that, in assessing the patentability of a patent claim, the
`
`Patent Office must construe the claim by giving the claim its broadest reasonable
`
`interpretation consistent with the specification. I understand that, under the
`
`broadest reasonable interpretation standard (sometimes abbreviated as the “BRI”
`
`-5-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`standard), a claim phrase is generally given its plain and ordinary meaning within
`
`the relevant art if the specification is consistent with the plain and ordinary
`
`meaning.
`
`13.
`
`It is my understanding that a claim is unpatentable as “anticipated”
`
`under 35 U.S.C. § 102 if a single prior art reference discloses every limitation of
`
`the claim, arranged as in the claim. I understand that a prior art reference does not
`
`anticipate a claim, however, when it discloses multiple, distinct teachings that a
`
`person of ordinary skill in the art might somehow combine to achieve the claimed
`
`invention.
`
`14.
`
`I understand that a claim is unpatentable under 35 U.S.C. § 103 if the
`
`claimed subject matter as a whole would have been obvious to a person of ordinary
`
`skill in the art at the time of the alleged invention. I also understand that an
`
`obviousness analysis takes into account the scope and content of the prior art, the
`
`differences between the claimed subject matter and the prior art, and the level of
`
`ordinary skill in the art at the time of the invention.
`
`15.
`
`In determining the scope and content of the prior art, it is my
`
`understanding that a reference is considered appropriate prior art if it falls within
`
`the field of the inventor’s endeavor. In addition, a reference is appropriate prior art
`
`if it is reasonably pertinent to the particular problem with which the inventor was
`
`involved. A reference is reasonably pertinent if it logically would have
`
`-6-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`commended itself to an inventor’s attention in considering his problem. If a
`
`reference relates to the same problem as the claimed invention, that supports use of
`
`the reference as prior art in an obviousness analysis.
`
`16. To assess the differences between prior art and the claimed subject
`
`matter, it is my understanding that 35 U.S.C. § 103 requires the claimed invention
`
`to be considered as a whole. This “as a whole” assessment requires showing that
`
`one of ordinary skill in the art at the time of invention, confronted by the same
`
`problems as the inventor and with no knowledge of the claimed invention, would
`
`have selected the elements from the prior art and combined them in the claimed
`
`manner.
`
`17.
`
`It is my further understanding that the Supreme Court has recognized
`
`several rationales for combining references or modifying a reference to show
`
`obviousness of claimed subject matter. Some of these rationales include:
`
`combining prior art elements according to known methods to yield predictable
`
`results; simple substitution of one known element for another to obtain predictable
`
`results; a predictable use of prior art elements according to their established
`
`functions; applying a known technique to a known device (method or product)
`
`ready for improvement to yield predictable results; choosing from a finite number
`
`of identified, predictable solutions, with a reasonable expectation of success; and
`
`some teaching, suggestion, or motivation that would have led one of ordinary skill
`
`-7-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`to modify the prior art reference or to combine prior art reference teachings to
`
`arrive at the claimed invention.
`
`18.
`
`I understand that an assessment of what a reference discloses or
`
`teaches—for purposes of an anticipation analysis or an obviousness analysis—
`
`must be conducted from the perspective of a person of ordinary skill in the art at
`
`the time of the invention. In other words, a reference discloses or teaches a claim
`
`limitation if a person of ordinary skill in the art would, at the relevant time,
`
`interpret the reference as expressly, implicitly, or inherently disclosing the claim
`
`limitation. I further understand that a reference does not need to use the exact
`
`language of the claim to disclose a claim limitation.
`
`19.
`
`I understand that a patent owner may attempt to establish a date of
`
`invention that is earlier than the filing date printed on the face of the patent.
`
`However, I understand that IV is not attempting to establish an earlier invention
`
`date for the purpose of this IPR, and, thus, for the purpose of this IPR, the time of
`
`the invention (also called the “relevant time” herein) is July 9, 2006.
`
`SUBSTANTIVE TESTIMONY
`
`1.
`
`The field of the invention and the level of ordinary skill in the art.
`
`20.
`
`I was asked by counsel to assess the field of the invention of the ’509
`
`Patent and the level of ordinary skill in the art. In making this assessment, I have
`
`-8-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`considered the ’509 Patent, my experience, and the testimony of Petitioners’
`
`expert, Dr. Trumper.
`
`21.
`
`In my opinion, the field of the invention of the ’509 Patent is “cooling
`
`systems for electromagnetic devices.” This emphasis on cooling systems is
`
`supported by both the “FIELD OF THE INVENTION” section and the claims of
`
`the ’509 Patent. Specifically, the “FIELD OF THE INVENTION” section states:
`
`The present invention relates generally to electromagnetic devices that
`include heat exchange mechanisms. It relates particularly to motors,
`generators, transformers, relays and solenoids that are cooled by a
`fluid coolant.
`Ex. 1001 at 1:6–9 (emphases added). Further, every independent claim of the ’509
`
`Patent recites a “fluid-cooled electromagnetic field-functioning device” or “fluid-
`
`cooled motor,” along with “a non-linear heat transfer fluid pathway in the
`
`monolithic body.” Ex. 1001, claims 1, 3, 4, 5, and 14 (emphases added).
`
`22. Dr. Trumper did not specify the field of the invention of the ’509
`
`Patent. Instead, he opined generally that:
`
`a POSITA would be familiar with the fundamentals of electric motor
`design and operation, the concept of encapsulating various
`components in an electric motor, the types of materials that could be
`used for encapsulation and their thermal and dimensional properties
`(e.g., CLTE), and thermofluid concepts. A POSITA would further be
`
`-9-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`aware of the existence of various techniques for manufacturing
`encapsulated motors, including by the use of injection molding.
`Ex. 1114 ¶ 31. In my view, Dr.Trumper’s general opinion does not adequately
`
`identify the field of the invention of the ’509 Patent. For example, the only
`
`reference to heat transfer in Dr. Trumper’s testimony regarding the relevant art is a
`
`vague reference to “thermal . . . properties.” Id.
`
`23.
`
`In my opinion, Dr. Trumper exaggerates the level of ordinary skill in
`
`the art. For example, I disagree with Dr. Trumper’s opinion that a person of
`
`ordinary skill in the art may have a Bachelor’s degree in electrical engineering. Id.
`
`Because the emphasis of the ’509 Patent is on heat transfer, not the electrical
`
`components of a motor or other electromagnetic device, a person of ordinary skill
`
`in the art would have a Bachelor’s degree in mechanical engineering. I also
`
`disagree with Dr. Trumper’s opinion that a person of ordinary skill in the art would
`
`have “at least two years of experience in the design of electric motors.” Id. In my
`
`view, a person of ordinary skill in the art would have at least one year of
`
`experience, but no more than two years, in the application of heat transfer for
`
`electromechanical devices.
`
`24. Dr. Trumper’s testimony that a person of ordinary skill in the art
`
`“would be familiar with” or would “be aware” of various subject matters, including
`
`“the types of materials that could be used for encapsulation and their thermal and
`
`-10-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`dimensional properties (e.g., CLTE)” and “various techniques for manufacturing
`
`encapsulated motors, including by the use of injection molding,” (id.), is
`
`ambiguous. Specifically, the precise amount of knowledge about those subject
`
`matters—from very minimal knowledge to expert-level knowledge—that Dr.
`
`Trumper attributes to a person of ordinary skill in the art, is unclear. However, in
`
`my opinion, a person of ordinary skill in the art would have no more than very
`
`limited knowledge about “the types of materials that could be used for
`
`encapsulation and their thermal and dimensional properties (e.g., CLTE)” and
`
`“various techniques for manufacturing encapsulated motors, including by the use
`
`of injection molding.” Therefore, to the extent Dr. Trumper suggests that a person
`
`of ordinary skill in the art would have anything more than very limited knowledge
`
`about these subject matters, I disagree with Dr. Trumper.
`
`25.
`
`In summary, in my opinion, a person of ordinary skill in the art of the
`
`’509 Patent would have a Bachelor’s degree in mechanical engineering and at least
`
`one year or experience, but no more than two years, in the application of heat
`
`transfer for electromechanical devices. The person of ordinary skill in the art
`
`would have no more than very limited knowledge about “the types of materials that
`
`could be used for encapsulation and their thermal and dimensional properties (e.g.,
`
`CLTE)” and “various techniques for manufacturing encapsulated motors, including
`
`by the use of injection molding.”
`
`-11-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`26. All of my analysis and opinions set forth herein are from the
`
`perspective of a person of ordinary skill in the art, set forth above in Paragraph 25,
`
`at the relevant time. While, in the interest of conciseness, some portions of this
`
`declaration do not expressly include language indicating that the testimony is from
`
`the perspective of a person of ordinary skill in the art at the relevant time, it should
`
`be understood that my analysis and opinions are from the perspective of a person
`
`of ordinary skill in the art at the relevant time. For example, my opinion that a
`
`reference does not disclose a claim limitation should be understood to mean that, in
`
`my opinion, a person of ordinary skill in the art at the relevant time would interpret
`
`the reference as not disclosing the limitation.
`
`2.
`
`The broadest reasonable interpretation of the claim phrase “fluid-
`cooled.”
`27.
`
`I was asked by counsel to analyze and answer the question: “What is
`
`the broadest reasonable interpretation of the claim phrase “fluid-cooled” as used in
`
`the claims of the ’509 Patent?” This section of my declaration is limited to
`
`answering that question and setting forth my underlying analysis that I found
`
`necessary to answer that question.
`
`28. Every challenged claim of the ’509 Patent uses the adjective “fluid-
`
`cooled” to modify the claimed device. Independent claims 1 recites a “fluid-cooled
`
`electromagnetic field-functioning device, while independent claim 14 recites a
`
`-12-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`“fluid-cooled motor.” The dependent claims challenged in this IPR—claims 2, 7,
`
`and 15—recite the same limitation by virtue of their dependency from claim 1 or
`
`claim 14.
`
`29.
`
`I understand that the claim phrase “fluid-cooled” appears in the
`
`preamble of each of the claims in which it appears. I understand that a preamble
`
`phrase is not always considered to be a claim limitation, but that a preamble phrase
`
`is a claim limitation if it is “necessary to give life, meaning, and vitality” to the
`
`claim. In my opinion, the claim phrase “fluid-cooled” is a claim limitation, for two
`
`reasons.
`
`30. First, in my view the preamble phrase including the adjective “fluid-
`
`cooled” is a claim limitation in both challenged independent claims 1 and 14
`
`because the preamble phrase is necessary to understand the meaning of a limitation
`
`set forth in the body of the claims. With respect to claim 1, “the device” referenced
`
`in the “wherein the monolithic body completely covers the exterior of the device”
`
`limitation is the “fluid-cooled electromagnetic field-functioning device” recited in
`
`the preamble. Similarly, with respect to claim 14, “the motor” referenced in the
`
`“wherein the monolithic body of injection molded thermoplastic material
`
`substantially encapsulates a stator of the motor” limitation is the “fluid-cooled
`
`motor” recited in the preamble. Therefore, I believe that the preamble phrase
`
`-13-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`provides important context to define what “the device” and “the motor” are in the
`
`claims.
`
`31. Second, the specification of the ’509 Patent repeatedly and
`
`consistently indicates that cooling of the motor is an important part of the
`
`invention disclosed and claimed in the ’509 Patent. The Abstract refers multiple
`
`times to cooling the motor:
`
`Electromagnetic components are provided with a heat exchange
`mechanism. For example, a fluid-cooled electromagnetic field-
`functioning device, such as a motor, generator, transformer, solenoid
`or relay, comprises one or more electrical conductors. A monolithic
`body of phase change material substantially encapsulates the
`conductors or an inductor. At least one liquid-tight coolant channel is
`also substantially encapsulated within the body of phase change
`material. The coolant channel may be part of a heat pipe or cold plate.
`The coolant channel may be made by molding a conduit into the
`body, using a “lost wax” molding process, or injecting gas into the
`molten phase change material while it is in the mold. The coolant
`channel may also be formed at the juncture between the body and a
`cover over the body.
`Ex. 1001, Abstract (emphases added). In addition, the Field of the Invention
`
`section of the specification states that “[t]he present invention . . . relates
`
`particularly to motors, generators, transformers, relays and solenoids that are
`
`cooled by a fluid coolant.” Ex. 1001 at 1:6–9 (emphases added).
`
`-14-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`32. The Background of the Invention section makes it very clear that one
`
`of the problems in the prior art that the disclosed invention is intended to solve is
`
`heat, which has significant harmful effects on performance of a motor or other
`
`device.
`
`An important factor in motor design is the lowering of the operating
`temperature of the motor. Increased operating temperature affects
`the electrical efficiency of the motor and bearing life. As temperature
`increases, resistive loses [sic] in wire increase, thereby reducing total
`motor power. Further, the Arrhenius equation predicts that the failure
`rate of an electrical device is exponentially related to its operating
`temperature. The frictional heat generated by bearings increases with
`speed. Also, as bearings get hot they expand, and the bearing cages
`get stressed and may deflect, causing non-uniform rotation and the
`resultant further heat increase. One drawback with existing motor
`designs is their limited effective dissipation of the heat, and difficulty
`in incorporating heat sinks to aid in heat dissipation. In addition, in
`current motors the operating temperatures generally increase as the
`size of the motor is decreased.
`Id. at 1:43–57 (emphases added).
`
`33. The specification further emphasizes that the disclosed invention
`
`meets a need “for an improved motor that includes an effective and practical way
`
`of using a liquid to carry heat away from the motor.” Id. at 2:6–9 (emphasis
`
`added). The specification also states that it is a great benefit to ensure that “liquids
`
`-15-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`or gasses could be channeled in such a way that they picked up heat from an
`
`electromagnetic device without damaging the device, and then carried that heat to
`
`a place where the heat was desired.” Id. at 2:15–19 (emphases added).
`
`34. Accordingly, the ’509 Patent discloses a motor or device that uses
`
`fluid for the purpose of cooling the motor or device. In my opinion, a person of
`
`ordinary skill in the art would understand that the ’509 Patent does not disclose a
`
`motor or device that merely moves heat transfer fluid around, without using the
`
`heat transfer fluid for the purpose of cooling the motor or device. In view of the
`
`Board’s broad construction of “heat transfer fluid,” I do not believe that the claims
`
`of the ’509 Patent would correctly define the scope of the invention, unless the
`
`preamble term “fluid-cooled” is given meaning to require the device or motor to
`
`use the heat transfer fluid for the purpose of cooling. Further, because the
`
`specification so consistently shows that the purpose of the heat transfer fluid is
`
`cooling of the device, I believe that the preamble term “fluid-cooled” must be
`
`given meaning so that the claims adequately capture the scope of the invention.
`
`35.
`
`In my view, the ordinary meaning of “fluid-cooled” would be
`
`apparent to a person of ordinary skill in the art in view of the specification of the
`
`’509 Patent. The same portions of the specification that I discuss above
`
`consistently show that “fluid-cooled” means that the claimed motor or device uses
`
`fluid for the purpose of cooling the motor or device. Therefore, in my opinion, the
`
`-16-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`broadest reasonable interpretation of “fluid-cooled motor” or “fluid-cooled . . .
`
`device” is “a motor [or device] that uses fluid for the purpose of cooling the motor
`
`[or device].”
`
`36.
`
`I do not believe that it would be reasonable to construe the claim
`
`terms “fluid-cooled motor” or “fluid-cooled . . . device” so broadly that these terms
`
`cover every motor or device in which a fluid merely causes a minor and purely
`
`incidental effect of cooling the motor or device. Such a construction would be
`
`unreasonable at least because it would cover all motors and all devices simply
`
`because environmental air that is cooler than a heated motor or device is a fluid
`
`that has a minor and purely incidental effect of cooling the motor or device.
`
`Accordingly, the practical result of construing “fluid-cooled” so broadly as to
`
`cover any minor and purely incidental cooling effect is to write “fluid-cooled” out
`
`of the claims entirely. I do not believe that a person of ordinary skill in the art
`
`would consider the resulting construction to be reasonable because a person of
`
`ordinary skill in the art would understand that the term “fluid-cooled” limits the
`
`claimed motors or devices to the subset of motors or devices that use a fluid for the
`
`purpose of cooling the motor or device.
`
`3.
`
`The broadest reasonable interpretation of the claim phrase “pathway.”
`37.
`
`I was asked by counsel to analyze and answer the question: “What is
`
`the broadest reasonable interpretation of the claim phrase “pathway” as used in the
`
`-17-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`claims of the ’509 Patent?” This section of my declaration is limited to answering
`
`that question and setting forth my underlying analysis that I found necessary to
`
`answer that question.
`
`38.
`
`I first note that the Board, in its Institution Decision, agreed with IV’s
`
`proposed construction of “pathway” to mean a structural “channel.” Specifically,
`
`the Board stated:
`
`Patent Owner contends that a person of ordinary skill in the art would
`understand that “pathway” is a structural element because the claims
`recite additional fluid inlet and fluid outlet structures of the pathway.
`See id. at 8. Patent Owner asserts that the ’509 Patent Specification
`consistently discloses the pathway structure as a channel. See id. at 8
`(quoting Ex. 1001, Abstract, 3:47–56, 8:34–35).
`For purposes of this Decision, we adopt Patent Owner’s construction
`of “pathway” as “channel,” because it is consistent with the ’509
`Patent Specification.
`Inst. Dec. at 9.
`
`39. As indicated above, I reviewed IV’s Patent Owner Preliminary
`
`Response. As part of this review, I reviewed the portion of IV’s Patent Owner
`
`Preliminary Response in which IV proposed a construction for “heat transfer fluid
`
`pathway.” I understand that the Board agreed with IV’s proposed construction of
`
`“pathway” but not IV’s proposed construction of “heat transfer fluid.”
`
`-18-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`40. After reviewing the ’509 Patent as a whole, IV’s Patent Owner
`
`Preliminary Response, and the Board’s Institution Decision, I agree with the
`
`Board’s construction of “pathway” to mean a structural “channel,” which I
`
`understand to be IV’s proposed construction.
`
`41.
`
` I understand that IV’s Patent Owner Preliminary Response was
`
`submitted to the Board before I conducted my analysis. However, after reviewing
`
`the ’509 Patent as a whole, I concur with the reasons IV provided in the Patent
`
`Owner Preliminary response why the claimed “pathway” should be construed to be
`
`a structural “channel.”
`
`42. The plain language of the claims shows, to a person of ordinary skill
`
`in the art, that the claim term “pathway” is a structural element by reciting specific
`
`structure—namely, a “fluid inlet” and a “fluid outlet”—of the pathway. In
`
`addition, the specification of the ’509 Patent consistently calls the pathway
`
`structure a “channel.” See, e.g., Ex. 1001 at Abstract (“At least one liquid-tight
`
`coolant channel is also substantially encapsulated within the body of phase change
`
`material. The coolant channel may be part of a heat pipe or cold plate. The coolant
`
`channel may be made by molding a conduit into the body, using a ‘lost wax’
`
`molding process, or injecting gas into the molten phase change material while it is
`
`in the mold. The coolant channel may also be formed at the juncture between the
`
`body and a cover over the body.”); 3:47–56 (“a motor can be cooled by passing
`
`-19-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`liquid through a coolant channel . . . . The flow path or chamber for the coolant . .
`
`.”); 8:34–35 (“The coolant is captive to the system and continuously recirculates
`
`through the hollow structure of the heat pipe 62.”).
`
`43.
`
`In view of the foregoing, in my opinion, a person of ordinary skill in
`
`the art would understand that the claim term “pathway” means a structural
`
`“channel.” Therefore, in my view, the broadest reasonable interpretation of
`
`“pathway” is a structural “channel.”
`
`4.
`
`Application, for purposes of this IPR, of the Board’s construction of
`“monolithic body,” “heat transfer fluid,” and “non-linear . . . pathway.”
`44.
`
`I understand that the Board, in its Institution Decision, construed
`
`“monolithic body” to mean “a body formed as a single piece.” Inst. Dec. at 8. I
`
`also understand that the Board’s construction of “monolithic body” does not
`
`exclude “a body formed by multiple pieces joined together with fasteners, glue, or
`
`welding.” Id. at 7. I have been informed that, for purposes of this IPR, IV agrees
`
`with the Board’s construction of “monolithic body.” Accordingly, while I have not
`
`conducted an independent analysis of, and express no opinion concerning, the
`
`broadest reasonable interpretation of “monolithic body,” I have, for the purposes of
`
`my analysis set forth in this declaration, applied the Board’s construction of
`
`“monolithic body” to mean “a body formed as a single piece.”
`
`-20-
`
`
`
`
`IPR2017-01494
`Toyota Motor v. Intellectual Ventures II
`
`45.
`
`I understand that the Board, in its Institution Decision, construed
`
`“non-linear . . . pathway” to mean a “channel that cannot be formed by a simple
`
`core pin in an injection mold tool.” Id. at 10. I have been informed that, for
`
`purposes of this IPR, IV does not contest the Board’s construction of “non-linear
`
`. . . pathway.” Accordingly, while I have not conducted an independent analysis of,
`
`and express no opinion concerning, the broadest reasonable interpretation of “non-
`
`linear . . . pathway,” I have, for the purposes of my analysis set forth in this
`
`declaration, applied the Board’s construction of “non-linear . . . pathway” to mean
`
`“channel that cannot be formed by a simple core pin in an injection mold tool.”
`
`46.
`
`I understand that the Board, in its Institution Decision, construed “heat
`
`transfer fluid” to mean “liquids or gases, or combinations thereof, that are capable
`
`of heat transfer.” Id. at 9. I have been informed that, for purposes of this IPR, IV
`
`does not contest the Board’s construction of the claim phrase “heat transfer fluid,”
`
`standing alone, to mean “liquids or gases, or combinations thereof, that are capable
`
`of heat transfer.” Accordingly, while I have not conducted an independent analysis
`
`of, and express no opinion concerning, the broadest reasonable inte
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
