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`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
`
`
`
`Patent No. 7,683,509
`
`
`
`Case No. IPR2017-01539
`
`
`
`DECLARATION OF DR. DAVID L. TRUMPER, Ph.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,683,509
`
`
`
`Petitioners' Exhibit 1002, pg. 1
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`QUALIFICATIONS ........................................................................................ 1
`
`EXAMPLES OF RELEVANT EXPERIENCE .............................................. 6
`
`III. MATERIALS CONSIDERED ...................................................................... 10
`
`IV. LEGAL PRINCIPLES ................................................................................... 10
`
`A. A Person Having Ordinary Skill in the Art .............................................. 10
`
`B.
`
`Claim Construction ................................................................................... 11
`
`C. Obviousness .............................................................................................. 12
`
`V.
`
`THE ’509 PATENT ....................................................................................... 15
`
`VI. SUMMARY OF SELECT PRIOR ART ....................................................... 17
`
`A. Umeda (JP H11-166500) .......................................................................... 17
`
`B.
`
`Raible (U.S. Patent No. 5,368,438) .......................................................... 19
`
`C. Neal (U.S. Patent No. 6,362,554) ............................................................. 20
`
`D.
`
`Bramm (U.S. Patent No. 4,944,748) ........................................................ 21
`
`E. Watterson (U.S. Patent No. 6,227,797) .................................................... 22
`
`F.
`
`Stephan (DE 103 07 696) ......................................................................... 23
`
`VII. ANALYSIS .................................................................................................... 24
`
`A.
`
`Claims 1–3, 7, and 14–15 Are Obvious Over Umeda in
`view of Raible and Neal ........................................................................... 24
`
`Claim [1.0]: “A fluid-cooled electromagnetic field-functioning device
`comprising:” .................................................................................................. 24
`
`Claim [1.1]: “at least one electrical conductor;” ........................................... 25
`
`Claim [1.2]: “a monolithic body of injection molded thermoplastic
`material substantially encapsulating the at least one conductor; and” .......... 25
`
`i
`
`
`Petitioners' Exhibit 1002, pg. 2
`
`

`

`
`
`Claim [1.3]: “a non-linear heat transfer fluid pathway in the
`monolithic body, with at least one fluid inlet and at least one fluid
`outlet to said pathway to allow for passage of heat transfer fluid
`through the pathway, and” ............................................................................. 29
`
`Claim [1.4]: “ … wherein the monolithic body completely covers
`the exterior of the device except for the at least one fluid inlet and
`the at least one fluid outlet.” .......................................................................... 32
`
`Claim 2: “The electromagnetic field-functioning device of claim 1
`wherein the device comprises a pump.” ........................................................ 33
`
`Claim [3.0]: “A fluid-cooled electromagnetic field-functioning device
`comprising:” .................................................................................................. 33
`
`Claim [3.1]: “at least one electrical conductor;” ........................................... 33
`
`Claim [3.2]: “a monolithic body of injection molded thermoplastic
`material substantially encapsulating the at least one conductor; and” .......... 33
`
`Claim [3.3]: “a non-linear heat transfer fluid pathway provided by
`a separate conduit formed from thermoplastic which is substantially
`encapsulated in the monolithic body, with at least one fluid inlet
`and at least one fluid outlet to said pathway to allow for passage of
`heat transfer fluid through the pathway.” ...................................................... 33
`
`Claim 7: “The electromagnetic field-functioning device of claim 1
`wherein the heat transfer fluid pathway comprises a plurality of
`channels in the monolithic body.” ................................................................. 35
`
`Claim [14.0]: “A fluid-cooled motor comprising:” ....................................... 35
`
`Claim [14.1]: “at least one electrical conductor;” ......................................... 35
`
`Claim [14.2]: “a monolithic body of injection molded thermoplastic
`material substantially encapsulating the at least one conductor; and” .......... 35
`
`Claim [14.3]: “a non-linear heat transfer fluid pathway in the
`monolithic body, with at least one fluid inlet and at least one fluid
`outlet to said pathway to allow for passage of heat transfer fluid
`through the pathway,” .................................................................................... 36
`
`ii
`
`
`Petitioners' Exhibit 1002, pg. 3
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`

`

`
`
`Claim [14.4]: “wherein the monolithic body of injection molded
`thermoplastic material substantially encapsulates a stator of the
`motor.” ........................................................................................................... 36
`
`Claim 15: “A pump comprising the motor of claim 14.” .............................. 36
`
`B.
`
`Claims 1–3, 7, and 14–15 Are Obvious Over Umeda in view
`of Stephan ................................................................................................. 37
`
`Claim [1.0]: “A fluid-cooled electromagnetic field-functioning device
`comprising:” .................................................................................................. 37
`
`Claim [1.1]: “at least one electrical conductor;” ........................................... 37
`
`Claim [1.2]: “a monolithic body of injection molded thermoplastic
`material substantially encapsulating the at least one conductor; and” .......... 38
`
`Claim [1.3]: “a non-linear heat transfer fluid pathway in the
`monolithic body, with at least one fluid inlet and at least one fluid
`outlet to said pathway to allow for passage of heat transfer fluid
`through the pathway, and” ............................................................................. 42
`
`Claim [1.4]: “… wherein the monolithic body completely covers
`the exterior of the device except for the at least one fluid inlet and
`the at least one fluid outlet.” .......................................................................... 44
`
`Claim 2: “The electromagnetic field-functioning device of claim 1
`wherein the device comprises a pump.” ........................................................ 44
`
`Claim [3.0]: “A fluid-cooled electromagnetic field-functioning device
`comprising:” .................................................................................................. 44
`
`Claim [3.1]: “at least one electrical conductor;” ........................................... 45
`
`Claim [3.2]: “a monolithic body of injection molded thermoplastic
`material substantially encapsulating the at least one conductor; and” .......... 45
`
`Claim [3.3]: “a non-linear heat transfer fluid pathway provided by
`a separate conduit formed from thermoplastic which is substantially
`encapsulated in the monolithic body, with at least one fluid inlet and
`at least one fluid outlet to said pathway to allow for passage of heat
`transfer fluid through the pathway.” .............................................................. 45
`
`iii
`
`
`Petitioners' Exhibit 1002, pg. 4
`
`

`

`
`
`Claim 7: “The electromagnetic field-functioning device of claim 1
`wherein the heat transfer fluid pathway comprises a plurality of
`channels in the monolithic body.” ................................................................. 47
`
`Claim [14.0]: “A fluid-cooled motor comprising:” ....................................... 47
`
`Claim [14.1]: “at least one electrical conductor;” ......................................... 47
`
`Claim [14.2]: “a monolithic body of injection molded thermoplastic
`material substantially encapsulating the at least one conductor; and” .......... 47
`
`Claim [14.3]: “a non-linear heat transfer fluid pathway in the
`monolithic body, with at least one fluid inlet and at least one fluid
`outlet to said pathway to allow for passage of heat transfer fluid
`through the pathway,” .................................................................................... 47
`
`Claim [14.04]: “wherein the monolithic body of injection molded
`thermoplastic material substantially encapsulates a stator of the motor.” .... 48
`
`C.
`
`Claims 1–3 and 14–15 Are Obvious Over Bramm in view of
`Watterson .................................................................................................. 48
`
`Claim [1.0]: “A fluid-cooled electromagnetic field-functioning device
`comprising:” .................................................................................................. 49
`
`Claim [1.1]: “at least one electrical conductor;” ........................................... 49
`
`Claim [1.2]: “a monolithic body of injection molded thermoplastic
`material substantially encapsulating the at least one conductor; and” .......... 49
`
`Claim [1.3]: “a non-linear heat transfer fluid pathway in the
`monolithic body, with at least one fluid inlet and at least one fluid
`outlet to said pathway to allow for passage of heat transfer fluid
`through the pathway, and” ............................................................................. 52
`
`Claim [1.4]: “… wherein the monolithic body completely covers
`the exterior of the device except for the at least one fluid inlet and
`the at least one fluid outlet.” .......................................................................... 53
`
`Claim 2: “The electromagnetic field-functioning device of claim 1
`wherein the device comprises a pump.” ........................................................ 53
`
`iv
`
`
`Petitioners' Exhibit 1002, pg. 5
`
`

`

`
`
`Claim [3.0]: “A fluid-cooled electromagnetic field-functioning device
`comprising:” .................................................................................................. 53
`
`Claim [3.1]: “at least one electrical conductor;” ........................................... 53
`
`Claim [3.2]: “a monolithic body of injection molded thermoplastic
`material substantially encapsulating the at least one conductor; and” .......... 53
`
`Claim [3.3]: “a non-linear heat transfer fluid pathway provided by
`a separate conduit formed from thermoplastic which is substantially
`encapsulated in the monolithic body, with at least one fluid inlet and
`at least one fluid outlet to said pathway to allow for passage of heat
`transfer fluid through the pathway.” .............................................................. 54
`
`Claim 14[0]: “A fluid-cooled motor comprising:” ........................................ 55
`
`Claim [14.1]: “at least one electrical conductor;” ......................................... 55
`
`Claim [14.2]: “a monolithic body of injection molded thermoplastic
`material substantially encapsulating the at least one conductor; and” .......... 55
`
`Claim [14.3]: “a non-linear heat transfer fluid pathway in the
`monolithic body, with at least one fluid inlet and at least one fluid
`outlet to said pathway to allow for passage of heat transfer fluid
`through the pathway,” .................................................................................... 55
`
`Claim [14.04]: “wherein the monolithic body of injection molded
`thermoplastic material substantially encapsulates a stator of the motor.” .... 56
`
`Claim 15: “A pump comprising the motor of claim 14.” .............................. 56
`
`VIII. CONCLUDING STATEMENTS .................................................................. 56
`
`v
`
`
`Petitioners' Exhibit 1002, pg. 6
`
`

`

`
`
`1.
`
`I, Dr. David L. Trumper, Ph.D. make this declaration in connection
`
`with the petition for inter partes review of U.S. Patent No. 7,683,509 (“the ’509
`
`patent,” Exhibit 1001.) I am over 21 years of age and otherwise competent to make
`
`this declaration. Although I am being compensated for my time in preparing this
`
`declaration, the opinions herein are my own, and I have no stake in the outcome of
`
`the inter partes review proceeding.
`
`I. QUALIFICATIONS
`2.
`I am currently a Professor of Mechanical Engineering at the
`
`Massachusetts Institute of Technology (“MIT”). I have previously testified as a
`
`technical expert in a number of patent infringement actions and reexamination and
`
`inter partes review proceedings.
`
`3.
`
`I received a Bachelor of Science degree in Electrical Engineering and
`
`Computer Science in 1980, a Master of Science degree in Electrical Engineering
`
`and Computer Science in 1984, and a Ph.D. in Electrical Engineering and
`
`Computer Science in 1990, all from MIT. I attach my current curriculum vitae
`
`(CV) as Appendix A to this report.
`
`4.
`
`Prior to joining the MIT faculty, I was for three years an Assistant
`
`Professor in the Electrical Engineering Department at the University of North
`
`Carolina at Charlotte, working with the precision engineering pump.
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`
`
`1
`
`Petitioners' Exhibit 1002, pg. 7
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`

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`5.
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`I joined the faculty of MIT in 1993 and since that time have consulted
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`for and advised a wide variety of clients concerning electrical and mechanical
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`engineering topics, including many types of electromechanical motion control
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`systems, including novel electromagnetic devices, including motors and other
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`actuators. My work in this area encompasses the design, development, manufacture
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`and testing of many types of electromechanical systems and devices, including
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`devices with electromechanical and servo control functionality of a complexity
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`equal to or exceeding that of the electromagnetic devices discussed in this
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`declaration.
`
`6.
`
`I have directly participated in research on the topic of electromagnetic
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`devices, including electromagnetically-driven pumps, including pumps for high
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`pressure liquid chromatography, and pumps for circulating blood in life support. I
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`have also worked on pneumatically-driven pumps for circulating culture media in a
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`novel human organs on chip experiment. More details are given below in the
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`section on examples of relevant experience.
`
`7. My university research centers on the design of precision
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`electromechanical systems with a specialization in mechatronics, precision motion
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`control, precision optomechanical systems, high performance manufacturing
`
`equipment, bio-medical and bio-instrumentation systems, semiconductor
`
`lithography machine motion systems and control, novel motors and other
`
`
`
`2
`
`Petitioners' Exhibit 1002, pg. 8
`
`

`

`
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`electromagnetic actuators, and magnetic suspensions and bearings. I have also
`
`consulted for industry in these areas.
`
`8.
`
`I have worked extensively with industry both as a staff engineer and
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`as a consultant. My first employment after receiving my Bachelor’s degree was
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`with the Hewlett-Packard Co., where I worked from 1980-82. I also worked full-
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`time for the Waters Division of Millipore during the period 1986-87. I worked
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`part-time (about 15 hours/week on average) for the ASML company during my
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`sabbatical from MIT in 2007-8, and taught a 2-week control systems course for the
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`ASML engineers during that time. The ASML company designs and manufactures
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`photolithographic wafer scanners, which are complex electro-opto-mechanical
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`systems used to print very fine-scale patterns in the manufacturing of integrated
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`circuits such as computer and memory chips. Such scanners use very high
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`performance motors, including motors with liquid cooling. At present, I continue
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`to interact with the ASML company in a funded research project at MIT, focused
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`on precision motion systems for next-generation photolithographic scanners,
`
`including very high performance linear motors..
`
`9.
`
`At MIT, I teach or have taught courses in the areas of design,
`
`dynamics, mechatronics, and computer control. These courses include 2.003
`
`Modeling, Dynamics, and Control I, which is a sophomore-level course
`
`introducing techniques for modeling electrical and mechanical system, analysis of
`
`
`
`3
`
`Petitioners' Exhibit 1002, pg. 9
`
`

`

`
`
`time- and frequency-responses, and basic control of such systems; 2.007 Design
`
`and Manufacturing I, which is a sophomore course focused on the principles of
`
`design; 2.737 Mechatronics, which covers more advanced issues of modeling,
`
`design, and control of electromechanical systems; 2.14/2.140 Analysis and Design
`
`of Feedback Control Systems, which is a combined undergraduate- and graduate-
`
`level introduction to feedback control; and 3) 2.171 Computer Controlled Systems,
`
`which presents theory and practice for using digital computers for control. I have
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`also taught a significant number of day-long and week-long courses for industry,
`
`centering on the topics of the design and control of electromechanical systems,
`
`including issues of force and thermal limits in electromagnetic motors.
`
`10.
`
`In my research at MIT, I have supervised a total of 67 Master of
`
`Science students engaged in thesis research projects, with 4 M.S. projects currently
`
`in progress. I have supervised a total of 17 Doctor of Philosophy students engaged
`
`in thesis research projects, with 3 Ph.D. projects currently in progress. The detailed
`
`topics of these projects are listed in my CV in Appendix A.
`
`11.
`
`I am a member of the Institute of Electrical and Electronics Engineers
`
`(IEEE), the American Society of Mechanical Engineers (ASME), and the
`
`American Society for Precision Engineering (ASPE). I have served on the board of
`
`ASPE, and was Vice-President, President, and past-President of this society during
`
`2004-6. I have also served as an Associate Editor for the journal Precision
`
`
`
`4
`
`Petitioners' Exhibit 1002, pg. 10
`
`

`

`
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`Engineering. I have served on the Editorial, Steering, or Organizing committees of
`
`a number of international conferences. I have also published and/or presented
`
`numerous technical papers. These organizations, committee memberships and
`
`technical papers are listed in my CV. I have also presented numerous seminars
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`covering a wide range of topics, a list of which is also set forth in Appendix A.
`
`12.
`
`I have served as the conference co-chair for the International
`
`Symposia on Magnetic Bearings, held at MIT in 1998, and in Lexington, KY in
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`2004. I have also served as the conference co-chair for a series of ASPE
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`conferences on the Control of Precision Systems, held in Philadelphia in 2001, and
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`at MIT in 2004, 2010, 2013, and 2016.
`
`13.
`
`I have published numerous papers in refereed journals and
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`conferences. Papers I have coauthored with my students have been selected for the
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`IFAC Mechatronics Paper Prize Award in 2014, and again in 2016.
`
`14.
`
`I am frequently engaged as a reviewer of technical papers in journals
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`such as Precision Engineering, IFAC Mechatronics, IEEE Industry Applications,
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`IEEE Transactions on Magnetics, and other journals. I have also served as a guest
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`editor of IFAC Mechatronics for a special issue focused on Control of Precision
`
`Systems in 2014.
`
`15.
`
`I am a named inventor on 26 U.S. Patents, and have several patent
`
`applications in progress. The topics of these patents include novel
`
`
`
`5
`
`Petitioners' Exhibit 1002, pg. 11
`
`

`

`
`
`electromechanical motion control systems such as magnetic bearings, new types of
`
`motors for high-performance motion control, and other precision manufacturing
`
`and motion-control equipment.
`
`16.
`
`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 report, as well as any other materials discussed herein.
`
`II. EXAMPLES OF RELEVANT EXPERIENCE
`17. My first employment after finishing my Bachelor’s degree was at the
`
`Hewlett-Packard Company (HP), in Avondale, PA, where I was in the R&D
`
`department. This division of HP designed and manufactured chemical analytical
`
`instruments, primarily gas and liquid chromatographs. My main project at HP was
`
`to design the control system for a new type of pump for supercritical carbon
`
`dioxide extraction and chromatography. For this pumping system, I designed a
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`microprocessor-based controller board that was used to drive the pumping system
`
`through a stepper motor.
`
`18.
`
`In 1982, I returned to MIT and began my Master’s thesis research, in
`
`which I designed, modeled, and experimentally demonstrated an electronically-
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`controlled pressure regulator. This project was funded by HP, which needed this
`
`pressure regulator as part of the pumping system I had worked with earlier. This
`
`
`
`6
`
`Petitioners' Exhibit 1002, pg. 12
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`

`

`
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`pressure regulator used an analog servo system to regulate pressures in the range of
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`0 to 10,000 psi.
`
`19.
`
`In 1986-87 I worked full time for the Waters Chromatography
`
`division of Millipore. My work there centered on the digital control of a liquid
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`chromatograph pumping system. This pumping system was used for pumping
`
`various liquid solvents in the flow system of a liquid chromatograph, which is used
`
`for chemical constituent analysis. The goal of this project was to create a control
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`system design and servo algorithms that would achieve extremely low pumping
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`flow ripple. This parameter calibrating algorithm reduced the flow ripple of the
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`pumping system by a factor of 50, thereby allowing direct interfacing with
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`advanced instruments such as mass spectrometers. My first issued patent grew out
`
`of this research activity at Millipore.
`
`20. During 1987-1990 I returned to MIT for my Doctoral thesis work. In
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`this research I designed novel electromagnetic linear motors capable of controlling
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`force in two axes simultaneously so as to enable new types of long-stroke magnetic
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`levitation systems for precision positioning of objects such as semiconductor
`
`wafers.
`
`21. During 1993-2000 I was a consultant to Anorad Corp., which
`
`designed and manufactured motion systems, including rotary motors and linear
`
`motors. As part of this consulting, I designed a new type of linear motor which
`
`
`
`7
`
`Petitioners' Exhibit 1002, pg. 13
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`

`

`
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`included plastic or epoxy encapsulation of the motor coils, and which included
`
`cooling passages for carrying air or liquid for cooling the motor coils.
`
`22. This consulting work lead to Anorad funding a research project at
`
`MIT to study novel designs for motor cooling. This project became the Master’s
`
`thesis of Michael Liebman, who started working on this project during the fall
`
`semester of 1997, and completed his thesis in January 1998. This thesis, entitled
`
`“Thermally Efficient Linear Motor Analysis and Design,” created a novel motor
`
`cooling technique which circulated liquid past the end turns of a high-force linear
`
`motor in which the coils were potted in epoxy with openings in the end turns to
`
`allow fluid to remove heat from the motor coils. This thesis research led to the
`
`application and granting of US patent 6262503, which was filed on Oct. 15, 1998,
`
`and on which Michael Liebman and I are the inventors.
`
`23. As a key component of my research in precision magnetically-
`
`levitated positioners, I have been actively engaged in designing novel
`
`electromagnetic motors, including the fabrication of such motors using
`
`encapsulating epoxy, and including the issues of cooling such motors. In an early
`
`research project, my student Michael Holmes and I designed, built and tested an
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`ultra-high-resolution magnetically levitated positioner, which was magnetically
`
`suspended in a fluid bath so as to provide damping and thermal conduction. This
`
`research was reported in the Master’s thesis entitled “Analysis and Design of a
`
`
`
`8
`
`Petitioners' Exhibit 1002, pg. 14
`
`

`

`
`
`Magnetically-Suspended Precision Motion Control Stage”, which was completed
`
`in May, 1994. This work was continued in the Master’s thesis of Stephen Ludwick,
`
`entitled “Modeling and Control of a Six Degree of Freedom Magnetic/Fluidic
`
`Motion Control Stage,” which was completed in February, 1996.
`
`24. During 2001-2002, I worked with Master’s student Christian Garcia
`
`on a co-op project funded by Schlumberger to study designs of magnetically-
`
`levitated motor/impellers for down-hole submersible pumps for oil extraction. This
`
`resulted in the thesis entitled “Magnetic Levitation for Down-Hole Submersible
`
`Pumps,” which was completed in June, 2002.
`
`25. My students and I have designed many new types of linear and rotary
`
`motors, including the Doctoral thesis of Kim, Williams, Holmes, Liebman, Byl,
`
`Ludwick, Montesanti, Lu, and Imani-Nejad, for example. These theses are cited in
`
`my curriculum vitae, attached as Exhibit A to this report.
`
`26. Most recently, the doctoral thesis of Jun-Young Yoon created the
`
`design of an extremely high force density linear motor with very low acoustic
`
`noise output. In this thesis, the linear motor magnetic design is optimized for the
`
`creation of force with very low vibration. This thesis entitled “Linear Iron-core
`
`Permanent Magnet Motor with High Force and Low Acoustic Noise” was
`
`completed in January, 2017.
`
`
`
`9
`
`Petitioners' Exhibit 1002, pg. 15
`
`

`

`
`
`27.
`
`I am also currently working with my Doctoral student Minkyun Noh
`
`on the design of a novel magnetically-levitated motor/impeller for pediatric blood
`
`pump applications, for example in an extracorporeal life support system. This
`
`motor/impeller levitates a rotary impeller in the flowing liquid to provide pumping
`
`of liquid with no mechanical contact from outside. Our paper on this topic, entitled
`
`“Magnetically Levitated Blood Pump Impeller for Life Support,” was recently
`
`awarded the NI Engineering Impact Award in the Advanced Research category.
`
`III. MATERIALS CONSIDERED
`28.
`In forming my opinions, I read and considered the ’509 patent and its
`
`prosecution history, the exhibits listed in the Exhibit List filed with the petition for
`
`inter partes review of the ’509 patent, as well as any other material referenced
`
`herein.
`
`IV. LEGAL PRINCIPLES
`29.
` For the purposes of this declaration, I have been informed about
`
`certain aspects of patent law that are relevant to my analysis and opinions, as set
`
`forth in this section of my declaration.
`
`A. A Person Having Ordinary Skill in the Art
`30.
`I understand that the disclosure of patents and prior art references are
`
`to be viewed from the perspective of a person having ordinary skill in the art at the
`
`time of the alleged invention (“POSITA”). Unless I state otherwise, I provide my
`
`
`
`10
`
`Petitioners' Exhibit 1002, pg. 16
`
`

`

`
`
`opinion herein from the viewpoint of a POSITA at the earliest alleged priority date
`
`for the ’509 patent, which I have been informed is July 19, 2006.
`
`31. The ’509 patent relates to electromagnetic devices. The various
`
`references that I discuss below are informative of the level of skill of a POSITA
`
`and are of the type that are reasonably relied upon by experts in my field to form
`
`opinions on the subject of electromagnetic devices.
`
`32.
`
`In my opinion, a POSITA 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, a POSITA would
`
`be familiar with the fundamentals of electric motor design and operation, the
`
`concept of encapsulating various components in an electric motor, the types of
`
`materials that could be used for encapsulation and their thermal and dimensional
`
`properties (e.g., CLTE), and thermofluid concepts. A POSITA would further be
`
`aware of various techniques for manufacturing encapsulated motors, including by
`
`the use of injection molding.
`
`B. Claim Construction
`33.
`I understand that “claim construction” is the process of determining a
`
`patent claim’s meaning. I also have been informed and understand that the proper
`
`construction of a claim term is the meaning that a POSITA would have given to
`
`that term.
`
`
`
`11
`
`Petitioners' Exhibit 1002, pg. 17
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`

`

`
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`34.
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`I understand that claims in inter partes review proceedings are to be
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`given their broadest reasonable interpretation in light of the specification, which is
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`what I have done when performing my analysis in this declaration.
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`35.
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` In comparing the claims of the ’509 patent to the prior art, I have
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`carefully considered the ’509 patent and its file history based upon my experience
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`and knowledge in the relevant field. In my opinion, the broadest reasonable
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`interpretation of the claim terms of the ’509 patent are generally consistent with the
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`terms’ ordinary and customary meaning, as a POSITA would have understood
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`them. That said, for purposes of this proceeding, I have applied the following
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`constructions when analyzing the prior art and the claims:
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`36.
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`“Monolithic body” (claims 1–3, 7, 14–15) is defined in the patent as
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`“being formed as a single piece.” (Ex. 1001, 5:62–63.) Thus, a “monolithic body”
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`is a body formed as a single piece, as opposed to multiple pieces joined together
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`with fasteners, glue, or welding. Accordingly, the broadest reasonable construction
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`of “monolithic body” in this proceeding should be “a body formed as a single
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`piece,” as opposed to multiple pieces joined together.
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`C. Obviousness
`37.
`I understand that a patent claim is invalid if the differences between
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`the patented subject matter and the prior art are such that the subject matter as a
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`
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`12
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`Petitioners' Exhibit 1002, pg. 18
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`

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`whole would have been obvious at the time the invention was made to a person of
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`ordinary skill in the art.
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`38. When considering the issues of obviousness, I understand that I am to
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`do the following: (i) determine the scope and content of the prior art; (ii) ascertain
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`the differences between the prior art and the claims at issue; (iii) resolve the level
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`of ordinary skill in the pertinent art; and (iv) consider objective evidence of non-
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`obviousness. Moreover, I have been informed and I understand that so-called
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`objective indicia of non-obviousness (also known as “secondary considerations”)
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`like the following are also to be considered when assessing obviousness: (1)
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`commercial success; (2) long-felt but unresolved needs; (3) copying of the
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`invention by others in the field; (4) initial expressions of disbelief by experts in the
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`field; (5) failure of others to solve the problem that the inventor solved; and (6)
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`unexpected results. I also understand that evidence of objective indicia of non-
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`obviousness must be commensurate in scope with the claimed subject matter. I am
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`not aware of any objective indicia of non-obviousness relevant to the claims of the
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`’509 patent.
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`39. Put another way, my understanding is that not all innovations are
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`patentable. Even if a claimed product or method is not disclosed in its entirety in a
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`single prior art reference, the patent claim is invalid if the invention would have
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`been obvious to a person of ordinary skill in the art at the time of the invention.