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` Paper No. ___
`Filed: June 29, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Toyota Motor Corp. and Aisin Seiki Co. Ltd.,
`Petitioners
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`v.
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`Intellectual Ventures II LLC,
`Patent Owner
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`Case No. IPR2017-01495
`Patent 7,928,348
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`PETITIONERS’ REPLY TO PATENT OWNER RESPONSE
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`Case No. IPR2017-01495
`Patent 7,928,348
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`2.
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`2.
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`B.
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`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 1
`I.
`II. LEVEL OF ORDINARY SKILL ................................................................. 2
`III. CLAIMS 24-27 OF THE ʼ348 PATENT ARE UNPATENTABLE
`OVER ZIMMERMANN IN VIEW OF STEPHAN AND NEAL
`’554 .................................................................................................................. 4
`A.
`It Would Have Been Obvious to a POSITA to Modify
`Zimmermann to Be Made of Injection Molded Thermoplastic,
`Despite IV’s Conclusory Arguments to the Contrary. .......................... 4
`1.
`Zimmermann Does Not Teach Away From Using
`Injection Molding. ....................................................................... 4
`IV’s Alleged “Thick Parts” Do Not Render
`Zimmermann’s Sheath Unformable by Injection Molding. ........ 8
`Zimmermann Either Discloses a Fluid Inlet and a Fluid Outlet
`Formed in the Monolithic Body Or It Would Have Been
`Obvious to a POSITA to Modify Zimmermann to Have a Fluid
`Inlet and a Fluid Outlet Formed in the Monolithic Body in
`View of Stephan. ................................................................................. 11
`1.
`Zimmermann Discloses a Fluid Inlet and a Fluid Outlet
`Formed in the Monolithic Body. ............................................... 12
`Alternatively, It Would Have Been Obvious to a POSITA
`to Modify Zimmermann to Have a Fluid Inlet and a Fluid
`Outlet Formed in the Monolithic Body in View of
`Stephan. ..................................................................................... 13
`IV. CLAIMS 24-27 OF THE ʼ348 PATENT ARE UNPATENTABLE
`OVER GOULD IN VIEW OF NEAL ’554 ................................................ 15
`A.
`The Lower Housing of Gould “Substantially Encapsulates” the
`Conductor. ........................................................................................... 15
`B. Gould’s Fluid Pathway is Embedded in the Lower Housing. ............. 18
`C. Gould’s Fluid Pathway is Confined in its Monolithic Body. .............. 22
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`Case No. IPR2017-01495
`Patent 7,928,348
`D. Gould’s Device is Operable to Power Fluid Conveyance
`Through the Mechanism. (Claim 25) .................................................. 24
`Gould Discloses a Pump. (Claim 26) .................................................. 26
`E.
`CONCLUSION ............................................................................................ 27
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`ii
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`V.
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`Case No. IPR2017-01495
`Patent 7,928,348
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l., Inc.,
`222 F.3d 951 (Fed. Cir. 2000) .............................................................................. 8
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) ................................................................................ 5
`In re Magna Elecs., Inc.,
`611 F. App’x 969 (Fed. Cir. 2015) ....................................................................... 6
`Nystrom v. TREX Co.,
`424 F.3d 1136 (Fed. Cir. 2005) ............................................................................ 8
`Orthopedic Equip. Co. v. United States,
`702 F.2d 1005 (Fed. Cir. 1983) ............................................................................ 6
`Other Authorities
`MPEP § 2125 ............................................................................................................. 8
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`iii
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`I.
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`INTRODUCTION
`The Board was correct to institute inter partes review of claims 24-27 on all
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`grounds. See Paper 12, 20-21. Claims 24-27 describe nothing new.
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`Before the filing date of the ’348 patent, skilled artisans knew how to
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`encapsulate—and were encapsulating—motors in a monolithic body of injection
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`molded thermoplastic material. Skilled artisans also knew how to include fluid
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`pathways through such monolithic bodies. Even the listed inventor of the ’348
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`patent, Griffith Neal, recognized at least six years before the filing date of the ’348
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`patent that it was known and beneficial to encapsulate stators, including their
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`conductors and cooling “inserts,” in a monolithic body of injection molded
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`thermoplastic material. Ex. 1104, 7:43-57, 9:5-20, 10:27-61. Indeed, decades
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`before Mr. Neal’s recognition, skilled artisans were encapsulating a motor’s stator
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`in a monolithic body of resin, or a “sheath,” with a “serpentine type copper cooling
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`coil embedded within the resin sheathed coating,” as in the ’348 patent. Ex. 1103,
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`1:11-13, 1:22-29, 1:39-42, Fig. 7. The cooling coil provided a fluid pathway and
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`the motor pumped fluids through the pathway. Id.
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`Neither IV’s Patent Owner Response nor the conclusory and unsupported
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`arguments of IV’s technical expert, Dr. Charles A. Garris, Jr., calls into question
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`Petitioners’ explanation of why claims 24-27 are unpatentable. Accordingly, for
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`the reasons explained below and in the Petition, the Board should issue a Final
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`Written Decision canceling the challenged claims.
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`Case No. IPR2017-01495
`Patent 7,928,348
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`II. LEVEL OF ORDINARY SKILL
`IV’s new proposed definition of a POSITA conflicts with the definition it
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`previously proffered to another tribunal. In this proceeding, IV selectively
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`proposes that a POSITA would have a Bachelor’s degree in “mechanical or
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`chemical engineering, or an equivalent degree,” leaving out any suggestion that a
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`skilled artisan with an “electrical engineering” degree could meet the definition of
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`a POSITA. But in a parallel action before the U.S. International Trade Commission
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`(ITC) addressing both validity and infringement, IV and its expert in that
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`proceeding, Dr. Hamid Toliyat, broadly propose that a skilled artisan “would have
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`a degree in electrical engineering, mechanical engineering, materials engineering,
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`manufacturing engineering and/or a related field.” Ex. 1136, ¶¶ 26-27 (emphasis
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`added). As one might expect, Dr. Toliyat has an electrical engineering degree
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`instead of mechanical or chemical engineering degrees. Ex. 1136, ¶ 5.
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`In deposition, counsel for Petitioners confronted Dr. Garris, IV’s expert in
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`this proceeding, with IV’s clearly inconsistent positions on the level of ordinary
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`skill. When reviewing Dr. Toliyat’s definition (IV’s definition in the ITC) of a
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`POSITA for the ’348 patent, Dr. Garris admitted that a person with only “an
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`electrical engineering degree along with the relevant experience” would meet the
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`definition of a POSITA. Ex. 1138, 23:14-21 (emphasis added), 22:12-17 (“I
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`Case No. IPR2017-01495
`Patent 7,928,348
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`wouldn’t disagree with what [Dr. Toliyat] says.”). Dr. Garris further admitted that
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`a person without a mechanical engineering degree would meet the definition of a
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`POSITA. Id., 24:18-22 (emphasis added). Accordingly, the correct definition of a
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`POSITA, as IV’s expert admits here and as IV has admitted to another tribunal,
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`includes a person having an electrical engineering degree. Paper 7, 14-15; Ex.
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`1132, ¶¶ 30-31; Ex. 1138, 22:12-17, 23:14-21, 24:18-22; Ex. 1136, ¶¶ 26-27.
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`Under the either party’s definition, Petitioners’ expert, Dr. Trumper, can
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`readily apply the viewpoint of a POSITA because he has a Ph.D. in electrical
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`engineering, has been a professor in the department of mechanical engineering at
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`MIT for 25 years, and has extensive experience in, for example, the “use and
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`design of electromagnetic devices that include heat exchange mechanisms,
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`including devices for the control of fluids.” Ex. 1132, ¶¶ 5, 21 (identifying seven
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`years as a consultant to Anorad Corp., from 1993-2000). This experience could not
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`be more on point, as it included designing an encapsulated motor having cooling
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`pathways for cooling the motor coils. Id.; see id., ¶ 22. Many other relevant
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`experiences are detailed in Dr. Trumper’s Declaration, as well as Dr. Trumper’s
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`CV attached to his Declaration. See id., ¶¶ 2-27, pp. 75-121. Thus, Dr. Trumper’s
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`knowledge and experience plainly exceeds the definition of a POSITA proposed by
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`IV’s expert that includes those with electrical engineering degrees, as well as the
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`definition of a POSITA proposed by Petitioners.
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`Case No. IPR2017-01495
`Patent 7,928,348
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`III. CLAIMS 24-27 OF THE ʼ348 PATENT ARE UNPATENTABLE
`OVER ZIMMERMANN IN VIEW OF STEPHAN AND NEAL ’554
`IV offers a number of incorrect and unsupported arguments in its response.
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`Most importantly, however, IV does not rebut Petitioners’ prima facie case of
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`obviousness. IV fails to articulate a plausible argument that every claim limitation
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`of the challenged claims is not rendered obvious by Zimmermann in combination
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`with Stephan and Neal ’554. As a result, IV’s arguments fail, and the Board should
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`cancel each of the challenged claims.
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`IV only asserts that Zimmermann in combination with Stephan and Neal
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`’554 fails to include “a monolithic body of injection molded thermoplastic
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`material” and “at least one fluid inlet . . . and at least one fluid outlet . . . being
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`formed in the body of injection molded thermoplastic.” IV does not contend that
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`any other element of claims 24-27 is missing from the combination of
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`Zimmermann, Stephan, and Neal ’554.
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`A.
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`It Would Have Been Obvious to a POSITA to Modify
`Zimmermann to Be Made of Injection Molded Thermoplastic,
`Despite IV’s Conclusory Arguments to the Contrary.
`Zimmermann Does Not Teach Away From Using Injection
`1.
`Molding.
`Despite IV’s allegations to the contrary, Zimmermann does not teach away
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`from using injection molding. IV provides no credible reason that a POSITA
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`would have been dissuaded from using Neal ’554’s thermoplastic injection
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`Patent 7,928,348
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`molding method in combination with Zimmermann’s motor sheath. In re Gurley,
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`27 F.3d 551, 553 (Fed. Cir. 1994) (“teaching away” requires a POSITA to be
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`discouraged from pursuing the solution in question). Rather, Zimmermann merely
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`describes potentially using a casting process. Ex. 1103, 4:11-21; see also, Paper 7,
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`32; Ex. 1132, ¶ 74.
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`Based on Dr. Garris’s deposition testimony, it is clear that he has a
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`misunderstanding of the requirements necessary to show that a reference “teaches
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`away” from injection molding. During his deposition, Dr. Garris acknowledged
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`that Zimmermann does not state that injection molding should be avoided. Ex.
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`1138, 31:22-32:3. Dr. Garris also acknowledged that Zimmermann does not state
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`that only low pressure methods are required to form its housing. Ex. 1138, 32:14-
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`19.
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`Furthermore, IV and its expert’s conclusory statements alleging that because
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`injection molding is more expensive than casting, it would not be obvious for a
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`POSITA to use injection molding are unpersuasive and contradicted by the
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`Materials and Processing textbook on which IV’s expert relies. Ex. 2005, 419.
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`Indeed, the textbook cited by IV’s expert touts the benefits of injection molding
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`and notes that due to these benefits, more injection molding machines are used for
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`plastics processing than any other type of molding equipment. Ex. 2005, 419.
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`Patent 7,928,348
`Moreover, IV’s “teaching away” arguments are contrary to Federal Circuit
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`precedent. The Federal Circuit has held “the fact that the two disclosed apparatus
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`would not be combined by businessmen for economic reasons is not the same as
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`saying that it could not be done because skilled persons in the art felt that there was
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`some technological incompatibility that prevented their combination. Only the
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`latter fact is telling on the issue of nonobviousness.” Orthopedic Equip. Co. v.
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`United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); see also In re Magna Elecs.,
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`Inc., 611 F. App'x 969, 973 (Fed. Cir. 2015) (holding that high costs and other
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`companies’ purported preferences are not sufficient to show non-obviousness).
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`As noted in the Petition and Dr. Trumper’s Declaration, a POSITA would
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`have been motivated to modify Zimmermann’s sheath to be made of injection
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`molded thermoplastic because, for example, Neal ’554 discloses that a preferred
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`method for forming a monolithic body that encapsulates a stator is injection
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`molding. Paper 7, 33-34; Ex. 1132, ¶¶ 77-78; Ex. 1104, 5:27-48, 6:26-59, 14:27-
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`30, 17:53-58, 21:24-46. Contrary to IV’s allegations, Neal ’554 discloses its
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`manufacturing process (i.e., injection molding) has reduced costs. Ex. 1104,
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`21:28-29; see also, Paper 7, 33; Ex. 1132, ¶ 77. Specifically, “[t]ools used to
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`injection mold thermoplastics have a longer tool life than those used in die casting.
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`There are lower costs because plastic molding tools produce more parts per hour
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`than aluminum die casting tools.” Ex. 1104, 21:29-32. Neal ’554 further discloses
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`that injection molding is a preferred and cost-effective method because “injection
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`molding tools are modular in nature,” which “allows tooling to be easily
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`customized without requiring a redesign of the whole tool.” Id., 21:39-42. As Dr.
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`Trumper noted during his deposition, injection molding would have been preferred
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`for producing large quantities because the tooling cost for the mold may be readily
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`absorbed. Ex. 2007, 38:13-39:3. Dr. Garris also confirmed this fact during his
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`deposition. Ex. 1138, 33:11-19.
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`Dr. Garris expressed concern with using injection molding to make the
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`housing taught in Zimmermann because “plastic [used in injection molding] is not
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`really in a liquid state,” making it more difficult to use when there are inserts in the
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`body. Ex. 1138, 29:18-30:15. However, Neal ’554 flatly contradicts this. Neal ’554
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`expressly discloses encapsulating inserts and doing so with a thermoplastic
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`material. Neal ’554 describes that “heat sinks [or inserts] may be conveniently
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`encapsulated with the housing during the molding process. These heat sinks may
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`consist of metal inserts . . . . The fact that these inserts are encapsulated within the
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`body, as opposed to being separately attached, simplifies the manufacturing
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`process . . . .” Ex. 1104, 9:12-20 (emphasis added). Neal ’554 further teaches that
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`the material used to encapsulate the stator and inserts should be a phase change
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`material that can be used in a liquid phase but later changes to a solid phase, and
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`that the preferred phase change materials are thermoplastics. Id., 5:27-49.
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`Specifically, the “preferred thermoplastic will become molten at a temperature at
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`which it is injection-moldable, and then will be a solid at normal operating
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`temperatures for the motor.” Id. at 5:42-45. And Dr. Garris even acknowledged
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`that devices with inserts can be injection molded. Ex. 1138, 35:11-20.
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`Thus, Zimmermann does not teach away from using injection molded
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`thermoplastic. Instead, it would have been obvious to a POSITA to form
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`Zimmermann’s sheath from injection molded thermoplastic based on the teachings
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`in Neal ’554.
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`2.
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`IV’s Alleged “Thick Parts” Do Not Render Zimmermann’s
`Sheath Unformable by Injection Molding.
`IV and its expert’s arguments that the Zimmermann sheath couldn’t be
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`injection molded because it has “thick parts” are conclusory and unsupported.
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`Notably, they plainly conflict with the evidence. Paper 19, 35; Ex. 2009, ¶ 103.
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`IV identifies nothing other than a circled portion of Figure 6 as support for
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`its argument that Zimmermann teaches a device that has “thick parts.” But it is well
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`established “that ‘patent drawings do not define the precise proportions of the
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`elements and may not be relied on to show particular sizes if the specification
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`is completely silent on the issue.’” Nystrom v. TREX Co., 424 F.3d 1136, 1149
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`(Fed. Cir. 2005) (emphasis added) (quoting Hockerson-Halberstadt, Inc. v. Avia
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`Grp. Int’l., Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)); see also MPEP § 2125
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`(“When the reference does not disclose that the drawings are to scale and is silent
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`Patent 7,928,348
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`as to dimensions, arguments based on measurement of the drawing features are of
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`little value.”). Accordingly, the silence of Zimmermann’s specification on the
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`dimensions of Figure 6 by itself dooms IV’s argument.
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`Furthermore, IV attempts to distinguish the housing of Zimmermann from
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`the housing of Stephan by arguing that “Stephan’s housings are designed with thin
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`walls that avoid thick portions, lending them to fabrication by injection molding.”
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`Paper 19, 35; Ex. 2009, ¶ 103. This argument is unsupported and wrongly ignores
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`the shutoff segments 40 of Stephan. As shown in IV’s annotated Fig. 6 of
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`Zimmermann and annotated Fig. 2 of Stephan below, to the extent Zimmermann
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`includes “thick” portions, Stephan, which expressly discloses using injection
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`molding, does as well.
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`IV’s Annotated Fig. 6 of Zimmermann
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` Annotated Fig. 2 of Stephan
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`IV similarly alleges that “Neal ’554’s stator bodies are designed with thin
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`walls that avoid thick portions, lending themselves to fabrication by injection
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`Case No. IPR2017-01495
`Patent 7,928,348
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`molding.” This statement is also incorrect. As with Stephan, to the extent
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`Zimmermann includes “thick” portions, Neal ’554, which explicitly discloses using
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`injection molding, does as well. A comparison of Fig. 6 of Zimmermann and Fig. 7
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`of Neal ’554 is shown below.
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`IV’s Annotated Fig. 6 of Zimmermann
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` Annotated Fig. 7 of Neal ’554
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`Furthermore, to the extent Zimmermann includes “thick” portions, the
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`embodiments of the ’348 patent do as well. A comparison of Fig. 6 of
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`Zimmermann and Fig. 7 of the ’348 patent is shown below.
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`10
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`Case No. IPR2017-01495
`Patent 7,928,348
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`IV’s Annotated Fig. 6 of Zimmermann
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` Annotated Fig. 7 of ’348 Patent
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`Therefore, Zimmermann’s alleged “thick” parts would not preclude it from
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`being injection molded out of thermoplastic. In fact, to the contrary, the figures of
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`Stephan, Neal ’554, and the ’348 patent indicate that parts with both so-called
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`“thin” and “thick” parts can be injection molded out of thermoplastic material. See,
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`e.g., Ex. 1109, Fig. 2; Ex. 1104, Figs. 4-8, 10, 14; Ex. 1001, Fig. 7.
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`Thus, none of IV’s arguments call into question that a POSITA would have
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`been motivated to form and could have formed Zimmermann’s sheath from
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`injection molded thermoplastic for the reasons stated in the Petition.
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`B.
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`Zimmermann Either Discloses a Fluid Inlet and a Fluid Outlet
`Formed in the Monolithic Body Or It Would Have Been Obvious
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`11
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`Case No. IPR2017-01495
`Patent 7,928,348
`to a POSITA to Modify Zimmermann to Have a Fluid Inlet and a
`Fluid Outlet Formed in the Monolithic Body in View of Stephan.
`Zimmermann Discloses a Fluid Inlet and a Fluid Outlet
`1.
`Formed in the Monolithic Body.
`As discussed in the Petition and Dr. Trumper’s expert report, the sheath in
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`Zimmermann has openings for an inlet and an outlet of cooling coil 80. Paper 7,
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`36; Ex. 1132, ¶ 84. Specifically, the ends of the cooling coil extend through the
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`two openings of Zimmermann’s sheath. Ex. 2007, 45:10-13. Annotated Figs. 1 and
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`7 show the monolithic body (lime green), the cooling coil 80 (purple), and the inlet
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`and outlet (red).
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`Thus, the openings in the sheath correspond to the claimed inlet and outlet
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`“formed in the monolithic body.”
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`12
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`2.
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`Case No. IPR2017-01495
`Patent 7,928,348
`Alternatively, It Would Have Been Obvious to a POSITA to
`Modify Zimmermann to Have a Fluid Inlet and a Fluid
`Outlet Formed in the Monolithic Body in View of Stephan.
`IV argues the fluid must be able to contact the inlet and the outlet as it enters
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`and exits. Paper 19, 43. It would have been obvious to a POSITA to modify
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`Zimmermann in view of Stephan to include this feature. Paper 7, 36-37; Ex. 1132,
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`¶ 85. This is consistent with Dr. Trumper’s deposition testimony noting that “it
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`would have been obvious to manufacture the inlet and outlet of the monolithic
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`body material.” Ex. 2009, 45:14-17. As discussed above, it would have been
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`obvious to make the Zimmermann housing out of injection molded thermoplastic.
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`During that injection molding process, it would have been obvious to form the inlet
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`and outlet out of the injection molded thermoplastic based on the teachings of
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`Stephan. Paper 7, 36-37; Ex. 1132, ¶ 85.
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`Stephan teaches line connections 24 formed out of the same material that
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`forms the monolithic body. Paper 7, 36-37; Ex. 1132, ¶ 85; Ex. 1109, [0023], Fig.
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`2. Stephan describes that examples of these line connections 24 may be in the form
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`of a connecting flange or a hose connection or the like. Paper 7, 36-37; Ex. 1132,
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`¶ 85; Ex. 1109, [0023], Fig. 2.
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`Notwithstanding IV’s conclusory allegations to the contrary, a POSITA
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`would have been motivated to modify the inlets and outlets of Zimmermann to be
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`formed from the injection molded thermoplastic material. Paper 7, 36-37, 41-42;
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`Case No. IPR2017-01495
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`Ex. 1132, ¶¶ 85, 99. For example, hose connections may be formed out of the
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`injection molded thermoplastic material to connect to tube fittings 78 and 81. Paper
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`7, 36-37, 41-42; Ex. 1132, ¶¶ 85, 99. This combination would allow for the conduit
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`to be covered entirely in the housing material, and then the fluid would contact the
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`housing material on entrance and exit. Ex. 2007, 46:16-47:18.
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`Specifically, IV merely repeats the same arguments discussed above that it
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`wouldn’t be obvious to form the sheath of Zimmermann by injection molding.
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`Paper 19, 43-44; Ex. 2009, ¶¶ 117-18. In addition, IV further argues that the
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`proposed modification would make the Zimmermann housing more complex.
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`Paper 19, 44-45; Ex. 2009, ¶ 119. However, this argument is a rehash of the
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`argument that a POSITA would not use injection molding to form the
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`Zimmermann sheath. As discussed above, these arguments lack merit.
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`Furthermore, a textbook that IV’s expert relies on teaches that injection
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`molding lends itself to the creation of complex shapes. Ex. 2005, 419 (“injection
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`molding makes discrete parts that can have a complex and variable cross section as
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`well as a range of surface textures and characteristics. The wide variety in the types
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`of parts that can be made by injection molding is a key reason that injection
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`molding machines are used for plastics processing than any other type of molding
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`equipment.”). As discussed in Stephan, using injection molding, the inlet and outlet
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`can be made of different shapes to accommodate the necessary connections. Ex.
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`14
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`Case No. IPR2017-01495
`Patent 7,928,348
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`1109, [0023], Fig. 2. A POSITA would understand that the injection molded
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`thermoplastic connections of Zimmermann could be made the appropriate shape to
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`mate with tube fittings 78 and 81. Therefore, as noted by Dr. Trumper, such a
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`substitution of one known element for another would have been obvious to a
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`POSITA. Ex. 1132, ¶ 85.
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`IV. CLAIMS 24-27 OF THE ʼ348 PATENT ARE UNPATENTABLE
`OVER GOULD IN VIEW OF NEAL ’554
`IV fails to articulate a plausible argument that every claim limitation of the
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`challenged claims is not rendered obvious by Gould in combination with Neal
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`’554. IV only asserts that Gould in combination with Neal ’554 fails to render
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`obvious (1) “substantially encapsulating the at least one conductor,” (2) “a fluid
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`pathway at least partially embedded in and integral with the monolithic body,” (3)
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`“the pathway . . . being confined within the body,” (4) “the device [being] operable
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`to power fluid conveyance,” and (5) “the mechanism [being] . . . [a] pump[].” But
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`these assertions are demonstrably false. As a result, IV’s arguments fail, and the
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`Board should cancel each of the challenged claims.
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`A. The Lower Housing of Gould “Substantially Encapsulates” the
`Conductor.
`As discussed in the Petition and Dr. Trumper’s Declaration, windings 55 of
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`Gould are substantially encapsulated in lower housing 12. Paper 7, 46-47; Ex. 1132,
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`¶¶ 108-110; Ex. 1105, 2:43-46, Fig. 1. Annotated Figure 1 shows a lower housing
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`12 (a monolithic body formed of molded thermoplastic) (lime green), a stator core
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`(gray), and windings 55 (dark blue).
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`IV alleges that windings 55 are not substantially encapsulated because the
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`“only disclosure in Gould providing information on the geometry of the windings
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`and stator core is FIG. 1, which shows only a portion of the windings in contact
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`with the material of the lower housing. Much of the area of the windings is within
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`the hollow interior of stator core 54.” Paper 19, 47; Ex. 2009, ¶ 125. This argument
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`ignores Gould’s disclosure that windings 55 are “embedded in the moldable plastic
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`material of lower housing 12.” Ex. 1105, 2:43-46.
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`As explained in the Petition, the moldable thermoplastic would be injection
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`molded using the process of Neal ’554. Paper 7, 48-49. According to Neal ’554,
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`injection molding would result in the conductors being encapsulated along the
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`length of the stator core. Ex. 1104, 1:43-51, 5:13-26, Figs. 2-10, 14-16. For
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`example, Figs. 2 and 3 of Neal ’554 show how injection molding the monolithic
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`body results in the conductors (wire windings 15) being encapsulated along the
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`length of the stator core because the moldable thermoplastic has space to flow
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`through the slots and further encapsulate the windings.
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`IV’s expert’s figure of an alleged induction motor from an unknown date
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`and an unknown source is irrelevant. Ex. 2009, ¶ 126; Paper 19, 48. Dr. Garris has
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`provided no evidence that the picture of the alleged induction motor is even one
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`that is designed to be encapsulated in plastic.
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`Finally, there is no indication that the air that passes through air passages 52
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`contacts the conductors, as alleged by IV. Ex. 2009, ¶128; Paper 19, 48-49. Again,
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`IV ignores the fact that Gould describes windings 55 as being embedded in the
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`material of lower housing 12. Ex. 1105, 2:43-46. In addition, Fig. 1 of Gould
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`shows that the material of lower housing 12 creates a barrier between windings 55
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`and air passage 52. Contrary to IV’s position, Gould’s description that air passages
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`52 serve to cool the windings 55 merely indicates that a material that allows for
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`heat transfer should be used. Ex. 1104, 6:26-27, 9:5-12. And Neal ’554 describes
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`that polyethylene, the thermoplastic used in Gould to form lower housing 12, is
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`such a suitable material. Id., 6:26-49.
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`Therefore, Gould’s windings 55 are “substantially encapsulated” by housing
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`12.
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`B. Gould’s Fluid Pathway is Embedded in the Lower Housing.
`As noted above, the Board construed “a fluid pathway at least partially
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`embedded in and integral with the monolithic body” to mean “a fluid pathway that
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`is at least partially (i) fixed within and formed by the material of the monolithic
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`body, or (ii) a conduit fixed within, and integrally surrounded by, the material of
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`the monolithic body.” Paper 12, 8. Petitioners agree with this construction. When
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`applying this construction to Gould, the fluid pathway is at least partially fixed
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`within and formed by the material of the monolithic body. This is shown in
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`annotated Fig. 1 of Gould below, which indicates the inlet to the pathway (blue)
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`and the outlet from the pathway (red). Paper 7, 50; Ex. 1132, ¶ 117. The pathway
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`itself is highlighted in purple.
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`IV and its expert attempt to allege that “no part of the alleged pathway in
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`Gould is fixed within the material that forms the walls of the alleged monolithic
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`body.” Paper 19, 52; Ex. 2009, ¶ 134. This is both incorrect and counter to the
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`construction IV stated it applied. Paper 19, 31; Ex. 2009, at ¶ 33. IV and its expert
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`seem to be attempting to add a requirement to the claims that the pathway be
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`“near” the encapsulated conductors. Paper 19, 50-52; Ex. 2009, ¶¶ 131-35.
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`The claims only require that the pathway be formed by the material of the
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`monolithic body. They do not require that the pathway be positioned at any
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`specific location within the monolithic body, let alone near the encapsulated
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`conductors. IV’s expert admitted that the claims do not include these additional
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`limitations during his deposition. Ex. 1138, 41:3-9.
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`However, in IV’s and its expert’s annotated version of Fig. 1 of Gould
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`shown below, they circle only a portion of the monolithic housing when alleging
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`that there are no fluid pathways. Paper 19, 52; Ex. 2009, ¶ 134. They completely
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`ignore the remaining portions of the monolithic body.
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`But the upper walls of the monolithic body that they ignore form the fluid
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`pathway. Specifically, as shown below, the walls of the monolithic body (lime
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`green) form the elbow-shaped fluid pathway (purple) from the inlet (blue) to the
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`outlet (red).
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`Furthermore, during his deposition, Dr. Garris provided annotations to Fig. 1
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`of Gould in which he indicated that fluid enters and exits the lower housing 12 at
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`the same positions that Petitioner has indicated correspond to the inlet and outlet of
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`the fluid pathway. Ex. 1138, 44:12-45:17. Specifically, Dr. Garris annotated the
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`entrance and exit to the fluid pathway as 3 and 4, respectively, in the below
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`annotated version of Fig. 1 of Gould. Id; Ex. 1137.
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`Thus, Gould discloses that its fluid pathway is at least partially fixed within
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`and formed by the material of the monolithic body.
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`C. Gould’s Fluid Pathway is Confined in its Monolithic Body.
`Gould’s fluid pathway is confined entirely within its lower housing 12. IV
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`and its expert argue that the “open top” renders the fluid pathway “unconfined.”
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`Paper 19, 53-54; Ex. 1132, ¶ 136. This argument ignores the fact that the “open
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`top” is the inlet to the fluid pathway and that the claims require the fluid pathway
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`to include an inlet.
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`The walls of Gould’s monolithic body confine and completely surround the
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`elbow-shaped pathway from the inlet through to the outlet as shown in annotated
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`Fig. 1 below.
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`The fact that the impeller fits through the opening does not render the
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`pathway “unconfined.” Indeed, the “pump embodiment” of the ’348 patent (as
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`characterized by IV in its Patent Owner Response and IV’s expert in his
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`Declaration) likewise has an enlarged inlet such that the impeller can fit through it.
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`Paper 19, 11-13; Ex. 2009, ¶¶ 55-58; Ex. 1001, 20:54-57. Specifically, the ’348
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`patent describes that “[t]he housing would have a larger inlet than depicted in the
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`’737 patent, one that would allow the motor shaft and impeller to be added to the
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`stator after the molding operation.” Ex. 1001, 20:54-57. Therefore, a large inlet
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`does not render the pathway unconfined.
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`Furthermore, IV’s argument that the pathway is unconfined because some
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`fluid particles or droplets may splash out of the inlet due to motion from the
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`impeller is nonsensical. Paper 19, 53-54. Notably, IV’s expert did not also set forth
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`the same argument. As Dr. Trumper testified, “if you are running the water from
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`the sink as you are supposed to, the majority of the flow is down and then the
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`impeller acts as a centrifugal pump and drives fluid out and down from the
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`system.” Ex. 2007, at 52:17-21. Furthermore, as discussed above, the pathway in
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`Gould is completely surrounded, and thus confined, on all sides by lower housing
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`12 with the only openings being for the required inlet and outlet.
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`Thus, the fluid pathway in Gou