Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 36
`Entered: December 12, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AISIN SEIKI CO., LTD, TOYOTA MOTOR CORP. and
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2017-015371
`Patent 7,154,200 B2
`____________
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, JOHN A. HUDALLA, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Aisin Seiki Co., Ltd. and Toyota Motor Corporation (collectively,
`“Lead Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting an inter partes
`
`
`1 Case IPR2018-00442 has been joined with this proceeding. All citations to
`the record are made with reference to IPR2017-01537 unless otherwise
`specified.
`
`
`Tel: 571-272-7822
`
`Paper No. 36
`Entered: December 12, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AISIN SEIKI CO., LTD, TOYOTA MOTOR CORP. and
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2017-015371
`Patent 7,154,200 B2
`____________
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, JOHN A. HUDALLA, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Aisin Seiki Co., Ltd. and Toyota Motor Corporation (collectively,
`“Lead Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting an inter partes
`
`
`1 Case IPR2018-00442 has been joined with this proceeding. All citations to
`the record are made with reference to IPR2017-01537 unless otherwise
`specified.
`
`
`
`IPR2017-01537
`Patent 7,154,200 B2
`review of claims 1, 2, and 4–7 of U.S. Patent No. 7,154,200 B2 (Ex. 1001,
`“the ’200 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner,
`Intellectual Ventures II LLC (“Patent Owner”), filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”) to the Petition. We determined that the
`information presented in the Petition established that there was a reasonable
`likelihood that Lead Petitioner would prevail in challenging claims 1, 2, and
`4–7 of the ’200 patent under 35 U.S.C. § 103(a) on certain grounds of
`unpatentability presented. Pursuant to 35 U.S.C. § 314, we instituted this
`proceeding on November 1, 2017, as to claims 1, 2, and 4–7 of the
`’200 patent. Paper 10 (“Dec. on Inst.”).
`American Honda Motor Co., Inc. (“Honda”) subsequently filed a
`similar petition and motion for joinder in Case IPR2018-00442, to which
`Patent Owner filed a Preliminary Response. See IPR2018-00442, Papers 1,
`3, 7 (also consenting to joinder). We instituted an inter partes review and
`joined Honda as a party to this proceeding with certain provisions for its
`participation (substantially as proposed by Honda). See IPR2018-00442,
`Paper 8. Henceforth, we refer collectively to Lead Petitioner and Honda as
`“Petitioner.”
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 16, “PO Resp.”). Then, in light of the U.S. Supreme
`Court’s decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), we
`modified the Institution Decision to institute on all of the grounds presented
`in the Petition. Paper 18. As authorized by the panel, Patent Owner filed a
`Supplemental Patent Owner Response (Paper 25, “Supp. PO Resp.”)
`covering the newly instituted grounds. Petitioner filed a consolidated Reply
`
`2
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`IPR2017-01537
`Patent 7,154,200 B2
`to both the Patent Owner Response and the Supplemental Patent Owner
`Response (Paper 27, “Pet. Reply”).
`Petitioner filed a Declaration of Gerald John Micklow, Ph.D.
`(Ex. 1004) with its Petition. Patent Owner filed a Declaration of
`Dr. Hamid A. Toliyat (Ex. 2005) with its Patent Owner Response. Patent
`Owner also filed transcripts of the depositions of Dr. Micklow (Exs. 2007,
`2010).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 1, 2, and 4–7 of the ’200 patent. For the reasons discussed below,
`Petitioner has demonstrated by a preponderance of the evidence that claims
`1, 2, and 4–7 of the ’200 patent are unpatentable.
`
`
`
`I. BACKGROUND
`
`
`
`Related Proceedings
`The parties identify the following matters related to the ’200 patent
`
`(Pet. 2–3; Paper 6, 1–2; Paper 13, 1–2):
`Intellectual Ventures II LLC v. Honda Motor Co., No. 1:17-cv-00294-
`LPS-CJB (D. Del. filed Mar. 20, 2017);
`Intellectual Ventures II LLC v. Aisin Seiki Co., No. 1:17-cv-00295-
`LPS-CJB (D. Del. filed Mar. 20, 2017);
`Intellectual Ventures II LLC v. Bayerische Motoren Werke AG,
`No. 1:17-cv-00296-LPS-CJB (D. Del. filed Mar. 20, 2017);
`Intellectual Ventures II LLC v. Toyota Motor Corp., No. 1:17-cv-
`00300-LPS-CJB (D. Del. filed Mar. 20, 2017);
`
`3
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`IPR2017-01537
`Patent 7,154,200 B2
`Intellectual Ventures II LLC v. Honda Motor Co., No. 2:17-cv-07680-
`GW-PJW (C.D. Cal. filed Oct. 20, 2017);
`Intellectual Ventures II LLC v. Toyota Motor Corp., No. 2:17-cv-
`07681-GW-JC (C.D. Cal. filed Oct. 20, 2017);
`Intellectual Ventures II LLC v. Bayerische Motoren Werke AG,
`No. 2:17-cv-08870-CCC-JBC (D.N.J. filed Oct. 20, 2017);
`Intellectual Ventures II LLC v. Aisin Seiki Co., No. 2:17-cv-13551-
`PDB-EAS (E.D. Mich. filed Oct. 31, 2017);
`Certain Thermoplastic-Encapsulated Elec. Motors, Components
`Thereof, and Prods. & Vehicles Containing Same, USITC Inv. No. 337-TA-
`1052 (filed Mar. 21, 2017); and
`Certain Thermoplastic-Encapsulated Elec. Motors, Components
`Thereof, and Prods. & Vehicles Containing Same II, USITC Inv. No. 337-
`TA-1073 (filed Sept. 5, 2017) (“the -1073 ITC investigation”).
`BMW challenged the ’200 patent in Case IPR2017-01558. Paper 6, 2;
`Paper 13, 1. We instituted an inter partes review in that case, but the case
`was terminated before issuance of a Final Written Decision.
`Honda also challenged the ’200 patent in Case IPR2018-00347.
`Paper 13, 2. We denied institution of an inter partes review in that case.
`
`The ’200 patent
`The ’200 patent is directed to a high-speed motor. Ex. 1001, 1:17–18.
`Figures 2 and 3 of the ’200 patent are reproduced below.
`
`
`
`4
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`IPR2017-01537
`Patent 7,154,200 B2
`
`
`
`Figure 2 depicts a stator and Figure 3 depicts a high speed motor in
`accordance with the ’200 patent. Id. at 4:6–10. Referring to Figure 2,
`stator 20 has conventional steel laminations 11 that form magnetically
`inducible core 17 having a plurality of poles 21. Id. at 5:6–9. Wire
`windings 15 on core 17 serve as conductors, which induce or otherwise
`create magnetic fields in core 17 when electrical current is conducted
`through the conductors. Id. at 5:6–12.
`Stator 20 is used to construct spindle motor 10, as depicted in
`Figure 3. Id. at 5:14–15. Spindle motor 10 includes hub 12, stator 20, and
`body 14. Id. at 5:15–17. Body 14 substantially encapsulates stator 20 and
`preferably is formed of phase change materials such as thermoplastics. Id. at
`5:20–49. Body 14 and stator 20 together make up stator assembly 13. Id. at
`
`5
`
`
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`IPR2017-01537
`Patent 7,154,200 B2
`5:17–18. Shaft 16 is connected to hub 12 and is surrounded by bearings 18,
`which are adjacent body 14. Id. at 5:50–52. Rotor/magnet 28 is fixed to the
`inside of hub 12 on a flange so as to be in operable proximity to stator 20.
`Id. at 5:52–54.
`The phase change materials in body 14 have a coefficient of linear
`thermal expansion (CLTE) such that the phase change material contracts and
`expands at approximately the same rate as the solid parts (such as bearings,
`inserts, disc support members, and hard disc drive bases) in motor 10. Id. at
`16:27–37.
`The ’200 patent issued from U.S. Patent Application No. 11/439,733
`(filed May 23, 2006), which is a continuation of U.S. Patent Application
`No. 10/874,142 (filed Jun. 21, 2004; now U.S. Patent No. 7,049,715 B2
`(Ex. 1025)), which in turn is a continuation of U.S. Patent Application
`No. 09/470,428 (filed Dec. 22, 1999; now U.S. Patent No. 6,753,628 B1
`(Ex. 1024)). Ex. 1001, [22], [63]. The ’200 patent and its ancestors all
`claim priority to Provisional U.S. Patent Application No. 60/146,446 (filed
`July 29, 1999).2 Ex. 1001, [60]; Ex. 1024, [60]; Ex. 1025, [60]. Petitioner
`argues that, at a minimum, its asserted references qualify as prior art relative
`to the July 29, 1999, filing date of the provisional application. See Pet. 5–6.
`
`
`
`2 Petitioner has included in the record another patent (U.S. Patent No.
`6,362,552 B1) that is outside of the chain of continuation applications but
`nonetheless claims priority to the same provisional application. See
`Ex. 1023, [60].
`
`6
`
`
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`IPR2017-01537
`Patent 7,154,200 B2
`Illustrative Claim
`Of the challenged claims of the ’200 patent, only claim 1 is
`independent. Claims 2 and 4–7 depend directly or indirectly from claim 1.
`Claim 1 is illustrative of the challenged claims and recites:
`1.
`A motor comprising:
`a) a stator substantially encapsulated within a body of
`thermoplastic material; and
`b) one or more solid parts used in the motor either within
`or near the body;
`c) the thermoplastic material having a coefficient of
`linear thermal expansion such that the thermoplastic material
`contracts and expands at approximately the same rate as the one
`or more solid parts.
`Ex. 1001, 21:44–52.3
`
`
`
`
`The Prior Art
`Petitioner relies on the following prior art:
`WIPO
`International Patent Application Publication
`No. WO97/33359, published Sept. 12, 1997
`(Ex. 1002,
`“Takagi”);4
`International Patent Application Publication
`WIPO
`No. WO96/31936, published Oct. 10, 1996 (Ex. 1003, “Trago”);
`and
`
`
`3 We refer to part c) of claim 1 as the “CLTE limitation” herein.
`4 Takagi is a Japanese-language publication that was filed with a Certificate
`of Translation (Ex. 1002, 1), an English-language translation (id. at 2–34),
`and the original Japanese-language publication (id. at 35–103).
`
`7
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`IPR2017-01537
`Patent 7,154,200 B2
`Japanese Patent Application Publication No. H04-105538,
`published Apr. 7, 1992 (Ex. 1005, “Koizumi”).5
`
`Instituted Grounds
`We instituted inter partes review of claims 1, 2, and 4–7 of the
`’200 patent on the following grounds (Papers 10, 18):
`Reference(s)
`Basis
`Claims Challenged
`
`
`
`Koizumi
`
`Takagi
`
`Trago
`
`35 U.S.C. § 103(a) 1, 2, and 4–7
`
`35 U.S.C. § 103(a) 1, 2, and 4–7
`
`35 U.S.C. § 103(a) 1, 2, and 4–7
`
`
`
`35 U.S.C. § 103(a) 1, 2, and 4–7
`
`Takagi or Trago and
`Koizumi
`
`Claim Interpretation
`Because this inter partes review is based on a petition filed before
`November 13, 2018, we construe the claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b)
`(2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016). Under the broadest reasonable interpretation standard, and absent
`any special definitions, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
`
`
`5 Koizumi is a Japanese-language publication that was filed with a
`Certificate of Translation (Ex. 1005, 1), an English-language translation (id.
`at 2–13), and the original Japanese-language publication (id. at 14–21).
`
`8
`
`
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`IPR2017-01537
`Patent 7,154,200 B2
`phrases must be set forth “with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`
`“substantially encapsulated”
`1.
`In our Decision on Institution, we construed “substantially
`encapsulated” to mean
`the body of thermoplastic material either entirely surrounds the
`stator, or surrounds almost all of it except for minor areas of the
`stator that may be exposed, and the body of thermoplastic
`material and the stator are rigidly fixed together and behave as a
`single component with respect to harmonic oscillation
`vibration.
`Dec. 9–10. The parties have not disputed this construction, and we discern
`no reason to change it. Accordingly, we adopt our analysis from the
`Decision on Institution and apply the same construction in this Decision.
`
`The CLTE Limitation
`2.
`We did not construe the CLTE limitation in our Decision on
`Institution. See Dec. 10. Patent Owner contends we should construe the
`CLTE limitation exactly as it is worded in claim 1, but with the addition of
`“throughout the expected operating temperature of the motor.”6 PO
`Resp. 17. Although Patent Owner acknowledges that claim 1 “does not
`expressly state” that the CLTE limitation “applies to the operating
`
`
`6 Petitioner notes that the Staff of the U.S. International Trade Commission’s
`Office of Unfair Import Investigations proposed the same construction in the
`-1073 ITC investigation. PO Resp. 18–19 (citing Ex. 2006, 22). The record
`does not indicate, however, that an ITC administrative law judge, or the
`Commission itself, or any other tribunal, ever adopted this construction.
`
`9
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`IPR2017-01537
`Patent 7,154,200 B2
`temperatures of the claimed motor,” Patent Owner contends the specification
`of the ’200 patent “clearly disavows and disparages motors lacking this
`particular feature.” Id. at 17–18. Specifically, Patent Owner cites alleged
`“clear and unequivocal statements that the inventor intended for the claimed
`invention to solve performance issues in the prior art caused by divergent
`expansion and contraction rates of components in the motors existing at the
`time during operation of those motors.” Id. at 18–20 (citing Ex. 1001, 2:8–
`19, 2:40–45, 3:14–17, 8:35–41, 16:32–37, 16:62–64). Patent Owner also
`cites statements about the motor of the “present invention” having matching
`CLTE values for the body and the solid parts “throughout the temperature
`range of the motor during its operation.” Id. at 20–21 (citing Ex. 1001, 2:8–
`19, 8:28–65, 16:22–17:43). Petitioner additionally cites examples from the
`specification of various CLTE values and operating temperature ranges. Id.
`at 21–22 (citing Ex. 1001, 16:60–66, 17:6–13, 17:20–36).
`Petitioner argues that the portions of the specification cited by Patent
`Owner do not rise to the level of disavowal or disclaimer. Pet. Reply 3, 5–6.
`Petitioner also contends the references to “the present invention” do not
`require that the CLTE limitation must be met throughout the expected
`operating temperature range of the motor. Id. at 3–4. Petitioner contends it
`is improper to read a limitation into the claims from the specification. Id. at
`5 (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir.
`2004)). Petitioner additionally argues that the patentee included express
`limitations directed to operating temperature range in patents related to the
`’200 patent, but the patentee chose not to do so here. Id. at 4–5 (citing
`Exs. 1023–1025 (each including claims reciting “throughout the range of 0–
`250° F”)).
`
`10
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`
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`IPR2017-01537
`Patent 7,154,200 B2
`We agree with Petitioner. We have reviewed the sections of the
`specification cited by Patent Owner as purported disavowal or disclaimer,
`but none of them is “clear and unmistakable.” See Unwired Planet, LLC v.
`Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016). These sections indicate
`exemplary embodiments rather than express restrictions. See, e.g., Ex. 1001,
`16:42–44 (“[T]he CLTE’s of the body and solid part(s) should match
`throughout the temperature range of the motor during its operation.”
`(emphasis added)). We also agree with Petitioner that certain other patents
`related to the ’200 patent7 include express recitations about operating
`temperature range (see Exs. 1023–1025), which indicates the patentee could
`have, but did not, include such recitations here. See AIP Acquisition LLC v.
`Cisco Sys., Inc., 714 F. App’x 1010, 1016 (Fed. Cir. 2017) (noting that the
`Court was “particularly reluctant to import a limitation from the
`specification into the claim language” when the parent application expressly
`claimed the more narrow limitation). For these reasons, we decline to
`construe the CLTE limitation as including “throughout the expected
`operating temperature of the motor.”
`In its Supplemental Response, Patent Owner puts forth a new
`argument that the CLTE limitation is “directed to the lowest CLTE of the
`thermoplastic material (i.e., the CLTE in the direction in which CLTE is
`lowest).” Supp. PO Resp. 8; see also id. at 1–2, 13 (same argument). In
`support of this argument, Patent Owner cites the following statement from
`the ’200 patent specification: “When the measured CLTE of a material
`depends on the direction of measurement, the relevant CLTE for purposes of
`
`
`7 The relationship between these other patents and the ’200 patent is
`discussed above. See supra § I.B.
`
`11
`
`
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`IPR2017-01537
`Patent 7,154,200 B2
`defining the present invention is the CLTE in the direction in which the
`CLTE is lowest.” Id. at 11 (quoting Ex. 1001, 16:66–17:3).
`Correspondingly, Patent Owner contends that Petitioner’s unpatentability
`analysis does not account for “differences in directionally dependent
`CLTE.” Id. at 1–2, 9–13.
`Petitioner calls Patent Owner’s argument “belated” and argues that
`“[n]either the claim language, the specification, nor the prosecution history
`provide explicit definition or disclaimer for injecting a directionality
`requirement into the claims.” Pet. Reply 28.
`We do not agree with Patent Owner’s arguments, which amount to a
`proposal to add a directionality requirement to the CLTE limitation. First,
`the specification’s mere mention of a directional aspect to thermal expansion
`does not substantiate that the CLTE limitation should be construed as
`proposed by Patent Owner. We note that the specification includes
`conditional language to describe directionality effects on CLTE. Ex. 1001,
`16:66–17:3 (“When the measured CLTE of a material depends on the
`direction of measurement” (emphasis added)). The conditional language
`indicates that directionality does not apply for all materials, so it cannot
`support a finding that the patentee was acting as his own lexicographer or
`disavowing features from the scope of his invention. See Hill-Rom Servs.,
`Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“We depart
`from the plain and ordinary meaning of claim terms based on the
`specification in only two instances: lexicography and disavowal.”).
`Second, we discount Patent Owner’s late bid to add a directionality
`requirement for the CLTE limitation because Patent Owner’s initial
`Response is silent on such a requirement. Patent Owner expressly addresses
`
`12
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`IPR2017-01537
`Patent 7,154,200 B2
`its proposed construction of the CLTE limitation in that paper, but the paper
`contains no mention of directionality. See PO Resp. 17–24. In that respect,
`Patent Owner’s bid to interject a directionality requirement in its
`Supplemental Response is inconsistent with Patent Owner’s initial position
`and is beyond the scope of briefing authorized in the wake of SAS Institute.
`See Paper 21, 2 (authorizing Patent Owner to file a supplemental paper
`“address[ing] only the newly instituted grounds”). Accordingly, we decline
`to impose a directionality requirement on the CLTE limitation.
`For these reasons, we apply the plain and ordinary meaning of the
`CLTE limitation.
`
`
`“body”
`3.
`Neither party previously requested construction of the term “body.”
`In our Decision on Institution, we did not construe expressly the word
`“body,” but we did reject Patent Owner’s argument from the Preliminary
`Response that the body must provide “support structure for the motor.”
`Dec. 17 (citing Prelim. Resp. 21–22). In its Response, Patent Owner now
`contends we should construe “body” to mean “supporting structure.” PO
`Resp. 24. Specifically, Patent Owner contends the ’200 patent “depicts the
`body 14 as the supporting structure for the stator.” Id. at 24–25 (citing
`Ex. 1001, 5:17–18, Fig. 3). Patent Owner likewise cites the specification for
`teaching that the body “provides a single structure that aligns the stator,
`bearings, shaft and disc support members relative to one another” and
`“provides a support for the bearings and a base 22.” Id. at 25 (quoting
`Ex. 1001, 8:11–27). Patent Owner further argues that the disclosed
`thermoplastic body is meant to “replace and make unnecessary the metal
`
`13
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`IPR2017-01537
`Patent 7,154,200 B2
`assembly support bodies of the prior art conventional motors.” Id. at 26
`(citing Ex. 1001, 8:11–27). Patent Owner also argues that not requiring
`supporting structure for the term “body” is inconsistent with the claims
`themselves because the “claimed body is the body of the stator assembly.”
`Id. at 26–27 (citing Ex. 1001, claim 1).
`Petitioner argues that the specification of the ’200 patent does not
`require a “body” to be supporting structure of the stator assembly. Pet.
`Reply 2. Petitioner further contends Patent Owner’s arguments merely
`establish that “supporting structure” is consistent with the specification,
`which is not sufficient for importing a limitation into the claims. Id.
`We agree with Petitioner. We have reviewed the sections cited by
`Patent Owner, but they do not indicate “words or expressions of manifest
`exclusion or restriction, representing a clear disavowal of claim scope.”
`Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002).
`The fact that the body described in the specification of the ’200 patent may
`support the motor (see, e.g., Ex. 1001, 8:11–27) does not mean that a “body”
`must be limited to “supporting structure.” Nor do the claims themselves
`indicate such a restriction. For this reason, we decline to limit the
`construction of “body” in the manner suggested by Patent Owner.
`
`Other Terms
`4.
`On the current record, we determine that no other terms require
`explicit construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”).
`
`14
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`Patent 7,154,200 B2
`
`II. ANALYSIS
` Obviousness Ground Based on Koizumi
`Petitioner contends claims 1, 2, and 4–7 would have been obvious
`over Koizumi. Pet. 17–28. Patent Owner disputes Petitioner’s contentions.
`PO Resp. 27–44.
`
`Principles of Law
`1.
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations.8 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We also recognize that prior art references must be “considered together
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA
`1978)). We analyze Petitioner’s obviousness grounds with the principles
`identified above in mind.
`
`
`
`8 Patent Owner did not put forth any evidence of secondary considerations of
`nonobviousness.
`
`15
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`Patent 7,154,200 B2
`Level of Skill in the Art
`2.
`Citing testimony from Dr. Micklow, Petitioner contends:
`[A] person of ordinary skill in the art (POSITA) for the
`’200 patent would have a bachelor’s degree in mechanical or
`electrical engineering, or an equivalent degree, and at least two
`years of experience in the design of electric motors. In particular,
`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. POSITA
`would further be aware of various techniques for manufacturing
`encapsulated motors, including by the use of injection molding.
`Pet. 8–9 (citing Ex. 1004 ¶ 39). Patent Owner does not address the ordinary
`level of skill in the art. We apply Petitioner’s proposed level of ordinary
`skill without the qualifier “at least,” which introduces ambiguity. We are
`satisfied that Petitioner’s proposal (as modified) comports with the
`qualifications a person would have needed to understand and implement the
`teachings of the ’200 patent and the prior art of record.
`
`Koizumi
`3.
`Koizumi is a Japanese patent application publication directed to a
`salient pole core coil used in motors. Ex. 1005, 3. Figure 6 of Koizumi is
`reproduced below.
`
`
`
`16
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`IPR2017-01537
`Patent 7,154,200 B2
`Figure 6 depicts a vertical cross-section of a brushless circumferentially
`opposed motor with a salient pole core coil. Id. at 9, 11–12. Bearing
`housing 2 is joined to support member 1. Id. at 5. Salient pole core coil 11,
`which consists of salient pole core 6 and coils 10, is fitted onto the outer
`circumference of bearing housing 2 by boss portion 7. Id. Coils 10 are
`wound on each arm portion 8 of salient pole core 6. Id. Ball bearing 4 and
`slip bearing 5 support motor shaft 3 on the inside diameter portion of bearing
`housing 2 so that it may rotate freely. Id. Fastening screws 12 affix bearing
`housing 2 and boss portion 7 to support member 1. Id. Circuit board 16 also
`is affixed to support member 1. Id.
`After support member 1 is mounted on circuit board 16, coil 10 is
`molding-encapsulated as an integral piece with circuit board 16 using
`molding material 23. Id. at 9. Koizumi states the following about molding
`material 23:
`[B]y selecting a molding material such as plastic with a thermal
`expansion coefficient approximately midway between that of the
`core 6 material iron and the coil 10 material copper as the
`molding material 23 used for molding encapsulation (one-piece
`molding), thermal deformation caused by heat generated when
`driving the motor or by environmental temperature differences
`can be kept to a minimum, and motor durability can be greatly
`improved.
`Id. at 10.
`
`Claim 1
`4.
`In its obviousness analysis, Petitioner maps the recitations in claim 1
`to various elements of Koizumi’s electric motor. In support of its analysis,
`Petitioner presents an annotated version of Figure 6 from Koizumi, which is
`reproduced below.
`
`17
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`IPR2017-01537
`Patent 7,154,200 B2
`
`
`See Pet. 12, 17, 19, 25, 26. In this annotated version of Figure 6, molding
`material 23 is shown in green, core 6 is shown in gray, flattened copper
`coil 10 is shown in blue, bearings 4 and 5 are shown in yellow, and
`screws 12 are shown in purple. See id. at 11–12.
`Petitioner maps the recited stator to Koizumi’s coil 10. Id. at 17
`(citing Ex. 1005, 9). Petitioner likens Koizumi’s molding material 23 to the
`recited “body of thermoplastic material” and contends it “fixes in place, and
`encapsulates, a flattened copper coil 10 . . . , which prevents loosening of the
`coil and ensures reliability.” Id. at 17–18 (citing Ex. 1004 ¶ 71; Ex. 1005, 4,
`9). Petitioner cites Koizumi’s teaching that “polyamide (nylon) plastics or
`polycarbonate, or PBT, AS-ABS, or other engineering plastics” can be used
`as the molding material, and Petitioner contends an ordinarily skilled artisan
`would have known these to be thermoplastic materials. Id. at 18 (citing
`Ex. 1004 ¶ 72; Ex. 1005, 4). Petitioner further contends an ordinarily skilled
`artisan would have understood “that the molding material and stator were
`rigidly fixed together and behaved as a single component with respect to
`harmonic oscillation vibration.” Id. (citing Ex. 1004 ¶ 73; Ex. 1005, 4).
`For the recited “one or more solid parts used in the motor either
`within or near the body,” Petitioner cites Koizumi’s circuit board 16 that is
`
`18
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`IPR2017-01537
`Patent 7,154,200 B2
`“molding-encapsulated as an integral piece with” coil 11 using molding
`material 23. Id. at 18–19 (citing Ex. 1005, 9). Petitioner also cites
`Koizumi’s ball bearings 4, sliding bearing 5, and screws 12 as solid parts
`within or near the motor body. Id. at 20 (citing Ex. 1005, 5).
`For the CLTE limitation, Petitioner contends an ordinarily skilled
`artisan “would understand that it would be obvious to make Koizumi’s
`bearings 4, 5, and screws 12, out of steel, because steel is durable and
`commonly used to make bearings and screws.” Id. (citing Ex. 1004 ¶ 80;
`Ex. 1005, 5). Petitioner further contends an ordinarily skilled artisan would
`have understood that Koizumi’s circuit board included metal parts made out
`of copper “because copper would be an obvious choice of material for
`connecting two copper parts – the windings in the core and the wiring in the
`circuit board.” Id. (citing Ex. 1004 ¶ 81). Petitioner cites Koizumi’s
`teaching that
`“a molding material such as plastic with a thermal expansion
`coefficient approximately midway between that of the core 6
`material [] and the coil 10 material copper” should be selected as
`molding material 23 to keep “thermal deformation caused by
`heat generated when driving the motor or by environmental
`temperature differences” to a minimum and to improve motor
`durability.
`Id. at 21 (quoting Ex. 1005, 10 and citing Ex. 1004 ¶ 82) (alteration by
`Petitioner). Petitioner further cites Koizumi’s teaching that its core is
`formed by laminating a silicon steel plate. Id. (citing Ex. 1005, 5). As such,
`Petitioner contends an ordinarily skilled artisan “would understand Koizumi
`to teach that the plastic material should be selected on the bases of the CLTE
`of the core and winding materials to reduce strain.” Id. (citing Ex. 1004
`¶ 83). Thus, citing a table of CLTE values created by Dr. Micklow (see
`
`19
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`IPR2017-01537
`Patent 7,154,200 B2
`Ex. 1004 ¶¶ 83–84) and reproduced in the Petition, Petitioner contends “the
`plastic material would contract and expand at approximately the same rate as
`the copper coil, the steel core, the steel bearings, the steel screws, and the
`copper portions of the circuit board.” Id. at 21–24 (citing Ex. 1004 ¶ 83;
`Ex. 1012, 10–15; Ex. 1013, 17, 28, 43, 59, 68, 72, 88; Ex. 1014, 7).
`Relative to the CLTE limitation, Patent Owner notes Petitioner has
`identified only Koizumi’s bearings, screws, and circuit board wire as “solid
`parts.” PO Resp. 39 (citing Pet. 19–20). Patent Owner argues that Koizumi
`does not identify materials for these purported solid parts, and Patent Owner
`disputes Petitioner’s choice of materials for these items in its obviousness
`theory. Id. Regarding the bearings and screws, Patent Owner criticizes
`Petitioner’s stated basis for choosing steel—durability (see Pet. 20 (citing
`Ex. 1004 ¶ 80))—and contends “the Petition does not address all of the
`factors that would be considered when choosing materials for these
`components in a small consumer electronic (such as a camera or printer).”
`Id. at 39–40 (citing Ex. 2005 ¶ 21). Regarding the circuit board wire, Patent
`Owner contends Petitioner’s rationale for using copper is insufficient and
`conclusory. Id. at 41. Patent Owner also contends Koizumi teaches away
`from using copper insofar as Koizumi teaches that “coil solder terminals on
`the circuit board can be eliminated, and the coil can be securely connected to
`a circuit board without terminal work.” Id. (quoting Ex. 1005, 4 and citing
`Ex. 2005 ¶ 24). Patent Owner further disputes that wire is a “solid part”
`commensurate with claim 1. Id. at 41–42 (citing Ex. 2005 ¶ 25). Patent
`Owner also contends Petitioner’s choice of copper is based on conclusory
`reasoning by Dr. Micklow and that other materials, such as aluminum,
`would be preferred. Id. at 42 (citing Ex. 2005 ¶ 26).
`
`20
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`IPR2017-01537
`Patent 7,154,200 B2
`In its Reply, Petitioner argues that “Koizumi inherently discloses the
`claimed CLTE matching.” Pet. Reply 10. Petitioner also contends it
`“identified Koizumi’s coil mounting seat 18, silicon steel or iron core 6 and
`copper coil 10 as solid parts.” Id. at 16 (citing Pet. 18–24); see also Tr. 98:5
`(“So the core could be one of the solid parts here.”).
`We agree with Patent Owner’s arguments. First, contrary to
`Petitioner’s reply arguments (Pet. Reply 16), Petitioner does not identify
`Koizumi’s coil mounting seat 18, core 6, or coil 10 as “solid parts.” At
`pages 18–20 of the Petition, Petitioner mentions these items in a description
`of an annota
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