UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`AISIN SEIKI CO., LTD. and TOYOTA MOTOR CORP.,
`
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`
`Patent Owner.
`__________________________________
`
`Case No. IPR2017-01539
`U.S. Patent No. 7,683,509
`__________________________________
`
`DECLARATION OF DR. CHARLES A. GARRIS, JR.
`
`
`INTELLECTUAL VENTURES II EX. 2008
`Aisin Seiko Co. v. Intellectual Ventures II
`IPR2017-01539
`
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`AISIN SEIKI CO., LTD. and TOYOTA MOTOR CORP.,
`
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`
`Patent Owner.
`__________________________________
`
`Case No. IPR2017-01539
`U.S. Patent No. 7,683,509
`__________________________________
`
`DECLARATION OF DR. CHARLES A. GARRIS, JR.
`
`
`INTELLECTUAL VENTURES II EX. 2008
`Aisin Seiko Co. v. Intellectual Ventures II
`IPR2017-01539
`
`
`
`IPR2017-01539
`Aisin Seiki v. Intellectual Ventures II
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`1.
`
`I, Charles A. Garris, Jr., Ph.D., make this declaration in connection
`
`with the petition for inter partes review (“IPR”) regarding U.S. Patent No.
`
`7,683,509 (“the ’509 patent,” Exhibit 1001) having reference number IPR2017-
`
`01539. I understand that my opinions as expressed in this declaration will be relied
`
`upon to support positions taken by Patent Owner Intellectual Ventures II in
`
`defending the patentability of the challenged claims of the ’509 patent.
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate for consulting services. My compensation in no way depends on the
`
`outcome of this proceeding or the content of my testimony.
`
`I. QUALIFICATIONS
`
`3.
`
`I am currently a tenured Professor of Mechanical & Aerospace
`
`Engineering at the George Washington University. I am also a licensed
`
`Professional Engineer in the state of Virginia. I have previously testified as a
`
`technical expert in a number of patent infringement actions and reexamination and
`
`inter partes review proceedings.
`
`4.
`
`I received a Bachelor’s Degree in Marine Engineering in 1965 from
`
`the State University of New York, Maritime College. I received an M.S. Degree in
`
`Mechanical Engineering in 1968 and a Ph.D. Degree in Mechanical Engineering in
`
`1971, both from the State University of New York at Stony Brook. I understand
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`that my current curriculum vitae (CV) is being submitted in this proceeding as
`
`Exhibit 2009.
`
`5.
`
`I joined the faculty at the George Washington University in 1978,
`
`where I served as an Associate Professor of Engineering until 1984. From 1984 to
`
`the present I have held my current title of Professor of Mechanical & Aerospace
`
`Engineering. From 2003 to 2004 I served as Interim Department Chairman.
`
`6.
`
`I have also worked for the National Science Foundation in its Division
`
`of Chemical and Thermal System. In this regard, from 1988 through 1989 I served
`
`as Program Director of Heat Transfer & Energy Systems. From 1990 through
`
`2002, I served on a part-time basis as Program Director of Interfacial, Transport,
`
`and Thermodynamics. In 2009 and 2010, I served as Expert, Division of Chemical,
`
`Bioengineering, Environmental, and Transport Systems (CBET), Engineering
`
`Directorate.
`
`7.
`
`I have also worked for the Instituto Venezolano de Investigaciones
`
`Cientificas (IVIC) in its Centro de Ingenieria. In this regard, from 1971 to 1973
`
`and 1976 to 1978 I served as Chief of Mechanical Engineering, Scientist. During
`
`these same time periods, I worked as an Adjunct Associate Professor in the
`
`Escuela de Ingenieria of the Universidad Central de Venezuela. From 1976 to
`
`1978, I also served as an Adjunct Associate Professor at the Universidad Simon
`
`Bolivar.
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`8.
`
`From 1973 through 1976 I worked as a Research Associate in the
`
`Department of Mechanical Engineering of the Massachusetts Institute of
`
`Technology. From 1974 through 1976 I also worked part-time as a Senior Scientist
`
`at the Naval Plant Representative Office, United Technologies.
`
`9.
`
`At the George Washington University, I teach or have taught many
`
`courses in areas that are relevant to the technology disclosed in the ’509 patent.
`
`These include undergraduate and graduate courses in fluid mechanics, thermal
`
`systems design, heat transfer, vibrations analysis, thermodynamics, mechanical
`
`engineering laboratory, convective heat and mass transfer, compressible flow, and
`
`energy systems and analysis. The courses I teach address topics including the flow
`
`of fluids and the design of products that control and manipulate the flow of fluids,
`
`such as pumps and valves. The courses I teach also address topics including
`
`heating and cooling, and the design of heat-generating products that require the
`
`dissipation of heat such as electric motors.
`
`10.
`
`In the course of my research at The George Washington University, I
`
`have supervised more than thirty students engaged in thesis research projects in
`
`support of Master of Science and Doctor of Philosophy degrees.
`
`11.
`
`I am a Fellow in the American Society of Mechanical Engineers
`
`(ASME) and served as Elected Chairman of the ASME Propulsion Technical
`
`Committee in 1989 and a member of the ASME Heat Transfer Technical
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`Committee from 1988 through 1994. I am also an Associate Fellow in the
`
`American Institute of Aeronautics and Astronautics. I am also a member of the
`
`American Society of Engineering Education and a member of Pi Tau Sigma, an
`
`international honor society for Mechanical Engineers.
`
`12.
`
`I have been recognized for my research and other professional
`
`endeavors. These honors include:
`
` Faculty Senate Resolution 17/5: A RESOLUTION OF
`APPRECIATION FOR PROFESSOR CHARLES A. GARRIS, voted
`on and approved unanimously by the Faculty Senate of the George
`Washington University, April 7, 2017.
`
` RESOLUTION TO RECOGNIZE PROFESSOR CHARLES
`GARRIS: “Resolved that the Board of Trustees of The George
`Washington University expressed to Professor Charles Garris its
`deepest appreciation and gratitude for his long and distinguished
`service . . .” Voted on and approved unanimously by the Board of
`Trustees, May 19, 2017.
`
` Elected Fellow of the American Society of Mechanical Engineers.
`
` Elected Associate Fellow of the American Institute of Aeronautics
`and Astronautics.
`
` Thomas Edison Patent Award of the American Society of Mechanical
`Engineers, 2006.
`
` Best Paper Award (with K. Bulusu & D. Gould); ASME Symposium
`on Advanced Energy Systems; IMECE2008; “Evaluation of
`Efficiency in Compressible Flow Ejectors.” Boston, Massachusetts,
`2008.
`
` 2011 George Washington University Trachtenberg Prize for
`University Service.
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`13. My professional activities further include serving as a panelist for the
`
`National Science Foundation for proposals, Presidential Young Investigator
`
`Awards, Research Initiation Grants, and Equipment Grants. From 1987 through the
`
`present I have also served as a panelist for the United States Agency for
`
`International Development. I have also served as a panelist for the U.S.
`
`Department of Energy, the U.S. Environmental Protection Agency, and the U.S.
`
`Air Force Office of Scientific Research. I served on the Scientific Advisory
`
`Committee of the XXII International Symposium on Manufacturing and Materials
`
`Processing.
`
`14.
`
`I have published numerous papers in refereed journals and
`
`conferences. I have also frequently been engaged as a reviewer of technical papers
`
`in peer reviewed journals. Details on this are provided in my curriculum vitae.
`
`15.
`
`I have served in numerous academic leadership roles, including
`
`positions for the George Washington University, for the School of Engineering and
`
`Applied Sciences, for the Department of Mechanical Engineering and Aerospace
`
`Engineering, and for the Department of Civil and Environmental Engineering. in
`
`refereed journals and conferences. Details on this are provided in my curriculum
`
`vitae.
`
`16.
`
`I have worked as an engineering consultant in industry for a variety of
`
`different companies, including Advanced Technology Corp., Afros Corp., Bendix
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`Corp., Heat Vehicle Corp., Memry Metals, Inc., Pacific Instruments, Solara Corp.,
`
`Speakman Corp., United Technologies, and Utility Consultants Corp.
`
`17.
`
`In my education, research, and consulting work, I have used and
`
`designed many systems that control the flow of fluids, such as pumps and valves. I
`
`have also used and designed electromagnetic field functioning devices, such as
`
`electric motors. I have also used and developed injection molded products, and I
`
`have served previously as a technical expert on technologies involving injection
`
`molding and processes for designing products formed with injection molding. My
`
`marine engineering background and work as a ship’s engineer provided me with
`
`abundant instruction in the use and design of electric motors and generators,
`
`including their assembly, disassembly, repairs, and maintenance. In my capacity as
`
`a Program Director of Heat Transfer at the National Science Foundation, I was
`
`charged with making funding decisions and monitoring grants in the area of heat
`
`and mass transfer. Research projects under my direction included heat transfer by
`
`conduction, convection, and radiation, and the development of cutting edge energy
`
`systems which include fluid control devices and electric motors of many types.
`
`18.
`
`I am the sole named inventor of seven issued patents, including U.S.
`
`Patent Nos. 4,875,623; 4,969,598; 5,647,221; 6,138,456; 6,434,943; 6,663,991;
`
`and 7,497,666. I am also registered as a Patent Agent with the U.S. Patent and
`
`Trademark Office.
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`IPR2017-01539
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`19.
`
`I have used my education and experience working in the mechanical
`
`engineering field, and my understanding of the knowledge, creativity, and
`
`experience of a person having ordinary skill in the art in forming the opinions
`
`expressed in this declaration, as well as any other materials discussed herein.
`
`II. MATERIALS CONSIDERED
`
`20.
`
`In forming my opinions, I read and considered the documents
`
`referenced in this declaration, including the ’509 patent and its prosecution history,
`
`the portions of Petitioners’ IPR Petition setting forth Petitioners’ assertion that the
`
`claims of the ’509 Patent would have been obvious in view of Umeda, Raible, and
`
`Neal, and the exhibits referenced in those portions, paragraphs 20–25 of the
`
`declaration of Joseph J. Beaman, Jr., Sc.D. (Ex. 2007), and the Board’s Decision
`
`Instituting Inter Partes Review.
`
`III. LEGAL PRINCIPLES
`
`21.
`
`In connection with the preparation of this declaration, I have been
`
`informed about certain principles of patent law that are relevant to the issues
`
`addressed by my opinions. This section presents those legal principles.
`
`A. The Person Of Ordinary Skill In The Art
`
`22.
`
`I have been informed that the disclosure and claims of the ’509 patent
`
`are to be interpreted from the perspective of a person having ordinary skill in the
`
`art at the time of the invention (“POSITA”). I have been informed that, for the
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`purposes of this IPR, I should assume that the time of the invention is the filing
`
`date of the patent application that issued as the ’509 patent, namely, July 19, 2006.
`
`I further understand that the disclosures in the prior art references are to be
`
`interpreted from the perspective of a POSITA at the time of the invention.
`
`23.
`
`I have reviewed Paragraphs 20–25 of the declaration of Joseph J.
`
`Beaman, Jr., Sc.D., which I understand is being submitted as Exhibit 200* in this
`
`IPR. I agree with Dr. Beaman’s analysis and conclusions in those paragraphs of his
`
`declaration. In summary, I agree that the field of the invention of the ’509 Patent is
`
`“cooling systems for electromagnetic devices” and that a POSITA 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.
`
`24. The analysis and opinions I provide herein are from the viewpoint of a
`
`POSITA as defined above, as of July 19, 2006.
`
`B. Claim Construction
`
`25.
`
`I have been informed that in this IPR, the Patent Office must construe
`
`claim terms in the challenged claims of the ’509 patent by giving those terms their
`
`broadest reasonable interpretation consistent with the specification. I understand
`
`that under this standard (sometimes abbreviated as the “BRI” standard), a claim
`
`term is generally given its plain and ordinary meaning as understood by the
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`POSITA if the specification is consistent with that plain and ordinary meaning. I
`
`have applied the BRI standard to the challenged claims when performing my
`
`analysis in this declaration.
`
`26. Below I address certain claim constructions that are relevant to my
`
`analysis.
`
`
`
`1.
`
` “Substantially encapsulating”
`
`27. The broadest reasonable interpretation of “substantially
`
`encapsulating,” as used in all claims of the ’509 Patent, includes at least “either
`
`entirely surrounding or surrounding almost all except for minor areas that may be
`
`exposed.”
`
`28. The specification teaches a monolithic body formed of a phase change
`
`material that “substantially encapsulates” components of the disclosed devices. For
`
`example, the specification teaches substantially encapsulating a stator 20, noting
`
`that “[s]ubstantial encapsulation means that the body 14 either entirely surrounds
`
`the stator 20, or surrounds significant areas of the stator that may be exposed.”
`
`(Ex. 1001 at 6:5–10.) The specification also teaches encapsulation of a heat pipe
`
`62, noting that “[t]he heat pipe 62 is substantially encapsulated in the body 14, as
`
`the body 14 surrounds almost all of the heat pipe 62 except for the minor exposed
`
`face[.]” (Ex. 1001 at 6:53–55.)
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`29. Figure 4 of the ’509 patent, reproduced below, provides a visual
`
`presentation of the substantial encapsulation of stator 20 (gray) and heat pipe 62
`
`(purple) within the monolithic body 14 (green).
`
`FIG. 4 (Annotated)
`
`
`
`30. As shown in the figure, the heat pipe 62 is surrounded by the
`
`monolithic body on all sides except the minor exposed area at the top of the pipe.
`
`Likewise, the stator 20 is surrounded by the monolithic body on all sides except for
`
`the minor exposed areas at the outer edges of the stator. These teachings are
`
`consistent with “substantially encapsulating” meaning at least “either entirely
`
`surrounding or surrounding almost all except for minor areas that may be
`
`exposed.” I apply that meaning in my analysis.
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`C. Obviousness
`
`31.
`
`I have been informed that a claim is unpatentable for obviousness
`
`under 35 U.S.C. § 103 if the claimed subject matter as a whole would have been
`
`obvious to a POSITA at the time of the alleged invention. I 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.
`
`32.
`
`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
`
`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.
`
`33. 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
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`have selected the elements from the prior art and combined them in the claimed
`
`manner.
`
`34.
`
`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
`
`to modify the prior art reference or to combine prior art reference teachings to
`
`arrive at the claimed invention.
`
`35.
`
`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 POSITA at the time of the invention.
`
`In other words, a reference discloses or teaches a claim limitation if a POSITA
`
`would, at the relevant time, interpret the reference as expressly, implicitly, or
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`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.
`
`IV. BACKGROUND OF RELEVANT TECHNOLOGY
`
`A.
`
`Synthetic Materials
`
`36. The classes of synthetic materials used in manufacturing component
`
`parts include thermoplastics; thermosets; and elastomeric (rubber) materials. Each
`
`class has different physical and mechanical properties, which leads to the materials
`
`being suitable or unsuitable depending upon the engineering application.
`
`1.
`
`Thermoplastics
`
`37. Thermoplastics are solids at room temperature that are melted or
`
`softened by heating, placed in a mold or other shaping device, and then cooled to
`
`give the desired shape. When reheated to a sufficiently high temperature, a
`
`thermoplastic material will lose its mechanical strength and soften, or even melt
`
`back into a liquid state.
`
`38. Because thermoplastics lose their strength upon reheating, a POSITA
`
`will generally avoid using a thermoplastic material for a component in an
`
`engineering application that will expose the component to significant heating.
`
`2.
`
`Thermosets
`
`39. Thermosets can be either liquid or solid at room temperature that are
`
`placed into a mold and then “cured” (hardened) by adding a chemical or heating,
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`thus giving the desired shape and solid properties. When reheated, a thermoset
`
`material will not lose its mechanical strength. It will remain rigid.
`
`40. Because thermosets maintain their strength upon reheating, a POSITA
`
`will consider using a thermoset material for a component in an engineering
`
`application even if that application will expose the component to significant
`
`heating.
`
`3.
`
`Elastomeric (rubber) materials
`
`41. Elastomeric materials are a special class of materials, which may be a
`
`thermoplastic or thermoset, that can be repeatedly stretched to over twice their
`
`normal length and then immediately return to their original length when released.
`
`Synthetic rubbers are one such example.
`
`42. The ability of an elastomeric material to bend and stretch makes it
`
`well suited for certain engineering applications. A POSITA, for example, would
`
`recognize the advantage of making gaskets and seals from elastomeric materials.
`
`B.
`
`Fabricating Parts From Synthetic Materials
`
`43. Several different processes exist for fabricating shaped component
`
`parts from synthetic materials. These include mold casting, injection molding, and
`
`extrusion molding. Each process has different demands, which leads to the process
`
`being suitable or unsuitable depending upon the engineering application.
`
`1. Mold casting
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`44. Mold casting is a fabrication process that uses liquid or powder
`
`starting material that is shaped without the application of significant pressure.
`
`Because casting does not require significant pressure, the molds and support
`
`equipment need not be as strong as is required for high-pressure molding like
`
`injection molding (discussed below).
`
`Illustration of mold casting (Ex. 2010 at FIG. 16.1.)
`
`
`
`45. A POSITA would have been aware that two common forms of mold
`
`casting are “potting” and “embedding.” These processes encase an article in resin,
`
`such as an electrical part. The part is placed in a mold and resin is poured into the
`
`mold until the resin submerges the article. An illustration is shown below.
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`Illustration of embedding and potting via mold casting
`(Ex. 2010 at FIG. 16.2.)
`
`46. The term potting is used when the mold remains with the embedded
`
`part. (Ex. 2010 at 572.) Embedding and potting are generally done using a liquid
`
`thermoset material, which avoids the need for high pressures and high
`
`temperatures.
`
`2.
`
`47.
`
`Injection molding
`
`Injection molding is a fabrication process that uses liquid starting
`
`material that is injected into a shaped mold under very high pressure. Because
`
`injection molding requires very high pressure, the molds and support equipment
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`must be very strong, and the process requires a sophisticated feedback and control
`
`system. In particular, encapsulating parts requires very special attention so as to
`
`enable the parts to be positioned during the high pressure injection molding
`
`process where there are large forces place on bodies within the mold cavity. This
`
`makes the molding equipment expensive compared to cast molding. An illustration
`
`of an injection molding machine is shown below.
`
`
`Injection molding machine showing three major functional units
`
`(Ex. 2010 at FIG. 12.1.)
`
`48. A POSITA is aware that great care is needed in designing the shape of
`
`a part formed using injection molding of a thermoplastic. This is because injection
`
`molding is performed at high pressure and temperature, with hardening occurring
`
`as heat is transferred away from the molten thermoplastic. The shape of the
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`component has a major effect on the heat transfers out of the component, and on
`
`the amount of thermal shrinkage.
`
`49. For this reason, a POSITA avoids using injection molding of a
`
`thermoplastic to form components with thick portions. The interior portions of the
`
`component would cool more slowly than the exterior portions, leading to the center
`
`of thick portions thermally shrinking more than the surrounding areas. This results
`
`in dimples or sink marks, or even internal voids. To avoid this, a POSITA designs
`
`components with ribs that avoid thick portions, and that have walls as thin as
`
`possible that are approximately the same thickness.
`
`Ribs shown as a design modification to eliminate voids in thick parts
`
`
`
`(Ex. 2010 at FIG. 12.19.)
`
`3.
`
`Extrusion molding
`
`50. Extrusion is a fabrication process that supplies a continuous stream of
`
`material to a shaping tool or to some other subsequent shaping process. Extruded
`
`parts generally have a constant cross-section along an extended length. A POSITA
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`is aware that extrusion molding is generally the most advantageous way to
`
`fabricate parts in the shape of elongated rods or tubes.
`
`V. ANALYSIS
`
`1.
`
`
`A. Ground 2: Claims 1, 2, 7, 14, and 15 Are Not Rendered Obvious By
`Umeda In View Of Raible And Neal
`
`It would not have been obvious to modify Umeda to use injection
`molded thermoplastic.
`
`
`
`51. Claims 1, 2, 7, 14, and 15 require “a monolithic body of injection
`
`molded thermoplastic material.” Dr. Trumper concedes that Umeda does not
`
`expressly disclose using a thermoplastic or using injection molding. (Ex. 1002 at ¶
`
`75.) He is correct on that point.
`
`52. A POSITA reading Umeda would understand that the molded stator A
`
`is fabricated using simple mold casting with liquid resin. First, while Umeda does
`
`teach using molded resin, it includes no teaching of using injection molded resin.
`
`The simplest and most economical manner in which to fabricate a resin component
`
`is to use mold casting. This is particularly so when the casting involves very thick
`
`components, as does Umeda, where there is no advantage to apply pressure to
`
`force molten plastic into narrow passages as is done in thermoplastic injection
`
`molding. In the absence of a possible advantage or direction to use injection
`
`molding a POSITA would consider a thick molded component to be formed using
`
`a casting process. A POSITA would know that injection molding also avoided
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`IPR2017-01539
`Aisin Seiki v. Intellectual Ventures II
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`when there are substantial variations of material thickness in the part, as is seen in
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`Umeda.
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`53. Second, Umeda teaches using molded resin 5 to surround printed
`
`wiring board 20, control circuit E, electronic components 21, including high heat-
`
`emitting electronic components such as power ICs 21a. (Ex. 1004 at [0020].) A
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`POSITA would have recognized this as teaching the conventional practice of
`
`embedding electronic components in liquid resin via mold casting.
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`Illustration of embedding and potting via mold casting
`
`
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`(Ex. 2010 at FIG. 16.2.)
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`54. Third, injection molding would work poorly for the geometry of
`
`Umeda’s molded stator B, because the molded stator includes thick walls that
`
`would result in fabrication defects due to uneven cooling, such as dimples and
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`IPR2017-01539
`Aisin Seiki v. Intellectual Ventures II
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`internal voids. This is shown in the figure below from a treatise on plastics and
`
`plastics processing.
`
`Ribs shown as a design modification to eliminate voids in thick parts
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`
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`(Ex. 2010 at FIG. 12.19.)
`
`55. Shown below are examples of thick annular resin walls in Umeda that
`
`would result in fabrication defects if formed via injection molding.
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`
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`Umeda FIG. 1
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`IPR2017-01539
`Aisin Seiki v. Intellectual Ventures II
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`56. Dr. Trumper asserts it would have been obvious to use injection
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`molding for Umeda based on the secondary reference Neal. This assertion is
`
`incorrect, as it overlooks that a POSITA would recognize that Neal has thin walls
`
`that are well-suited for injection molding:
`
`Neal (Ex. 1014) at FIG. 7
`
`
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`Because of these fundamentally different shapes, the use of injection molded
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`thermoplastic for certain components of Neal would not motivate a POSITA to use
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`injection molding for Umeda’s thick-walled stator body.
`
`57.
`
`It is my opinion that a POSITA would not find it obvious based on
`
`Neal to replace Umeda’s mold casted resin body with an injection molded
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`thermoplastic body.
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`IPR2017-01539
`Aisin Seiki v. Intellectual Ventures II
`2.
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`
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`Umeda does not disclose electrical conductors that are
`substantially encapsulated by the alleged monolithic body.
`
`58. The claims of the ’509 Patent also require “a monolithic body of
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`injection molded thermoplastic material substantially encapsulating the at least one
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`conductor” Dr. Trumper reads the monolithic body onto the resin 5 of Umeda’s
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`molded stator A. (Ex. 1002 at ¶ 69.) He reads the conductor onto Umeda’s coils 4.
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`(Id.) Umeda fails to disclose this claim element because the coils 4 are not
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`substantially encapsulated by the resin 5 of the molded stator A.
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`59. The term “substantially encapsulating” at least includes “either
`
`entirely surrounding or surrounding almost all except for minor areas that may be
`
`exposed.” Umeda does not disclose precisely how much of the coils 4 are covered
`
`by the material of the molded stator A, but what is disclosed shows that significant
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`portions of the windings are uncovered by the material of the molded stator.
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`60. FIG. 1 below shows only a portion of the coil 4 (blue) in contact with
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`the material of the molded stator A (light green). Much of the surface area of the
`
`coil 4 disappears within the hollow interior of stator core 3 (gray). Umeda does not
`
`teach that the resin 5 forming molded stator A extends within the interior of the
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`stator core.
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`IPR2017-01539
`Aisin Seiki v. Intellectual Ventures II
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`61. A POSITA would recognize that the stator core 3 is a hollow annular
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`structure that includes tooth projections oriented radially inward toward the rotor.
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`An example of this stator core geometry is shown below, from U.S. Patent No.
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`4,287,446 to Lill, et al. (Ex. 2011 at FIG. 2.)
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`62. The windings are coiled around the tooth projections of the core,
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`which creates a radially inward magnetic flux that is directed by the teeth towards
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`IPR2017-01539
`Aisin Seiki v. Intellectual Ventures II
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`the magnets on the axially-located rotor. This wiring configuration is shown below,
`
`with coils 88 coiled around the individual teeth. (Id. at FIG. 1.)
`
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`63. Umeda provides an example illustration of the coil 4 coiled around a
`
`tooth 3a of the stator core 3.
`
`(Ex. 1004 at FIG. 17.)
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`IPR2017-01539
`Aisin Seiki v. Intellectual Ventures II
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`64.
`
`In Umeda, the only portions of the coil 4 that are shown to be in
`
`contact with the resin 5 of the molded stator A are the portions of the coil
`
`extending above and below the edges of the stator core 3. Umeda teaches that
`
`liquid flowing through internal space C that serves to cool the heat generating
`
`components of the device, which includes the coil 4. (Ex. 1004 at [0016], [0022],
`
`[0026].) To facilitate this cooling, Umeda teaches that the portions of the coil 4
`
`within the stator core 3 is exposed to the internal space C rather than covered by
`
`the resin 5. “The coil [4] of the stator preferably would be fitted to the stator core
`
`[3] so as to leave gaps and the resin [5] that molded the stator would be molded so
`
`as not to block the gaps between the coils.” (Id. at [0011].)
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`65. Based on the above, to a POSITA the portion of the coils 4 in Umeda
`
`that are not in contact with the resin 5 of the molded stator A are not minor areas.
`
`Accordingly, this claim element is not met.
`
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`-26-
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`IPR2017-01539
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`IPR2017-01539
`Aisin Seiki v. Intellectual Ventures II
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`Aisin Seiki V. Intellectual Ventures II
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`VI. DECLARATION
`
`66.
`
`I declare that all statements made herein on my own knowledge are
`
`true and that all statements made on information and belief are believed to be true,
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`and further, that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
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`Dated: é? rc‘Zfi 247% By:
`
`.-
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`
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`Charles A arris, Jr., Ph.D.
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`-27-
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