UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`American Honda Motor Co., Inc.
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`Petitioner,
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`v.
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`Intellectual Ventures II LLC,
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`
`
`Patent Owner.
`
`__________________
`
`Case IPR2018-00443
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`U.S. Patent No. 7,928,348
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`
`
`
`
`DECLARATION OF DR. DAVID L. TRUMPER, Ph.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,928,348
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`Am. Honda v. IV II - IPR2018-00443
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`TABLE OF CONTENTS
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`Page
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`QUALIFICATIONS ........................................................................................ 1 
`I. 
`EXAMPLES OF RELEVANT EXPERIENCE .............................................. 7 
`II. 
`III.  MATERIALS CONSIDERED ...................................................................... 11 
`IV.  LEGAL PRINCIPLES ................................................................................... 11 
`A.  A Person Having Ordinary Skill in the Art ......................................... 11 
`B. 
`Claim Construction ............................................................................. 12 
`C.  Obviousness ......................................................................................... 15 
`V.  OVERVIEW OF THE ’348 PATENT .......................................................... 17 
`VI.  SUMMARY OF SELECT PRIOR ART ....................................................... 20 
`A.  Konishi (JP H10-238491) .................................................................... 20 
`B.  Umeda (JP H11-166500) ..................................................................... 23 
`C. 
`Raible (U.S. Patent No. 5,368,438) ..................................................... 24 
`D.  Neal (U.S. Patent No. 6,362,554) ........................................................ 25 
`E. 
`Bramm (U.S. Patent No. 4,944,748) ................................................... 26 
`F.  Watterson (U.S. Patent No. 6,227,797) ............................................... 27 
`G. 
`Stephan (DE 103 07 696) .................................................................... 28 
`VII.  ANALYSIS .................................................................................................... 29 
`A. 
`Claims 24–27 Are Obvious Over Konishi .......................................... 29 
`Claim [24.0]: “A fluid conveying mechanism comprising:” .............. 30 
`Claim [24.1]: “ an electromagnetic field-functioning device
`having a magnetically inducible core and at least one
`electrical conductor that creates a magnetic field in the
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`core when electrical current is conducted through the
`conductor;” ................................................................................ 30 
`Claim [24.2]: “a monolithic body of injection molded
`thermoplastic material substantially encapsulating the at
`least one conductor;” ................................................................. 31 
`Claim [24.3]: “a fluid pathway at least partially embedded in
`and integral with the monolithic body,” ................................... 34 
`Claim [24.4]: “with at least one of a fluid inlet into the pathway
`and a fluid outlet from the pathway being formed in the
`body of injection molded thermoplastic,” ................................. 34 
`Claim [24.5]: “and the pathway through the body being confined
`within the body.” ....................................................................... 36 
`Claim 25: “The fluid conveying mechanism of claim 24 wherein
`the device is operable to power fluid conveyance through
`the mechanism and at least a portion of the fluid conveyed
`by the mechanism passes through the fluid pathway in the
`monolithic body.”...................................................................... 36 
`Claim 26: “The fluid conveying mechanism of claim 24 wherein
`the mechanism is selected from the group consisting of
`valves, pumps and blowers.” .................................................... 37 
`Claim 27: “The fluid conveying mechanism of claim 24 wherein
`said at least one of a fluid inlet and a fluid outlet is in the
`form of a plumbing fitting.” ...................................................... 37 
`Claims 24–27 Are Obvious Over Umeda in view of Raible and
`Neal ...................................................................................................... 39 
`Claim [24.0]: “A fluid conveying mechanism comprising:” .............. 39 
`Claim [24.1]: “an electromagnetic field-functioning device
`having a magnetically inducible core and at least one
`electrical conductor that creates a magnetic field in the
`core when electrical current is conducted through the
`conductor;” ................................................................................ 39 
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`B. 
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`Claim [24.2]: “a monolithic body of injection molded
`thermoplastic material substantially encapsulating the at
`least one conductor; and” .......................................................... 40 
`Claim [24.3]: “a fluid pathway at least partially embedded in
`and integral with the monolithic body,” ................................... 43 
`Claim [24.4]: “with at least one of a fluid inlet into the pathway
`and a fluid outlet from the pathway being formed in the
`body of injection molded thermoplastic,” ................................. 46 
`Claim [24.5]: “and the pathway through the body being confined
`within the body.” ....................................................................... 46 
`Claim 25: “The fluid conveying mechanism of claim 24 wherein
`the device is operable to power fluid conveyance through
`the mechanism and at least a portion of the fluid conveyed
`by the mechanism passes through the fluid pathway in the
`monolithic body.”...................................................................... 47 
`Claim 26: “The fluid conveying mechanism of claim 24 wherein
`the mechanism is selected from the group consisting of
`valves, pumps and blowers.” .................................................... 47 
`Claim 27: “The fluid conveying mechanism of claim 24 wherein
`said at least one of a fluid inlet and a fluid outlet is in the
`form of a plumbing fitting.” ...................................................... 47 
`[Omitted] ............................................................................................. 48 
`Claims 24–27 Are Obvious Over Bramm in View of Watterson ....... 48 
`Claim [24.0]: “A fluid conveying mechanism comprising:” .............. 49 
`Claim [24.1]: “an electromagnetic field-functioning device
`having a magnetically inducible core and at least one
`electrical conductor that creates a magnetic field in the
`core when electrical current is conducted through the
`conductor;” ................................................................................ 49 
`Claim [24.2]: “a monolithic body of injection molded
`thermoplastic material substantially encapsulating the at
`least one conductor;” ................................................................. 49 
`iv
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`C. 
`D. 
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`Claim [24.3]: “a fluid pathway at least partially embedded in
`and integral with the monolithic body,” ................................... 52 
`Claim [24.4]: “with at least one of a fluid inlet into the pathway
`and a fluid outlet from the pathway being formed in the
`body of injection molded thermoplastic,” ................................. 52 
`Claim [24.5]: “and the pathway through the body being confined
`within the body.” ....................................................................... 52 
`Claim 25: “The fluid conveying mechanism of claim 24 wherein
`the device is operable to power fluid conveyance through
`the mechanism and at least a portion of the fluid conveyed
`by the mechanism passes through the fluid pathway in the
`monolithic body.”...................................................................... 53 
`Claim 26: “The fluid conveying mechanism of claim 24 wherein
`the mechanism is selected from the group consisting of
`valves, pumps and blowers.” .................................................... 53 
`Claim 27: “The fluid conveying mechanism of claim 24 wherein
`said at least one of a fluid inlet and a fluid outlet is in the
`form of a plumbing fitting.” ...................................................... 53 
`VIII.  CONCLUDING STATEMENTS .................................................................. 55 
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`1.
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`I, Dr. David L. Trumper, Ph.D., make this declaration in
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`connection with the petition for inter partes review of U.S. Patent No.
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`7,928,348 (“the ’348 patent,” Exhibit 1001). I am over 21 years of age and
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`otherwise competent to make this declaration. Although I am being
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`compensated for my time in preparing this declaration, the opinions herein are
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`my own, and I have no stake in the outcome of the inter partes review
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`proceeding. Paragraphs 140-168 in my earlier declaration filed in IPR2017-
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`01538 relate to a ground of unpatentability not being asserted by the present
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`Petitioner. In order to maintain consistency of the paragraph numbering of the
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`present Declaration with my earlier Declaration, paragraphs 140-168 have been
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`intentionally omitted in their entirety.
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`I.
`
`QUALIFICATIONS
`2.
`
`I am currently a Professor of Mechanical Engineering at the
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`Massachusetts Institute of Technology (“MIT”). I have previously testified as a
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`technical expert in a number of patent infringement actions and reexamination
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`and inter partes review proceedings.
`
`3.
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`I received a Bachelor of Science degree in Electrical Engineering
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`and Computer Science in 1980, a Master of Science degree in Electrical
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`Engineering and Computer Science in 1984, and a Ph.D. in Electrical
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`Engineering and Computer Science in 1990, all from MIT. I attach my current
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`curriculum vitae (CV) as Appendix A to this report.
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`4.
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`Prior to joining the MIT faculty, I was for three years an Assistant
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`Professor in the Electrical Engineering Department at the University of North
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`Carolina at Charlotte, working with the precision engineering group.
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`5.
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`I joined the faculty of MIT in 1993 and since that time have
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`consulted for and advised a wide variety of clients concerning electrical and
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`mechanical engineering topics, including many types of electromechanical
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`motion control systems, including novel electromagnetic devices, including
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`motors and other actuators. My work in this area encompasses the design,
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`development, manufacture and testing of many types of electromechanical
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`systems and devices, including devices with electromechanical and servo
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`control functionality of a complexity equal to or exceeding that of the
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`electromagnetic devices discussed in this declaration.
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`6.
`
`I have directly participated in research on the topic of
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`electromagnetic devices, including electromagnetically-driven pumps,
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`including pumps for high pressure liquid chromatography, and pumps for
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`circulating blood in life support. I have also worked on pneumatically-driven
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`pumps for circulating culture media in novel human organs on chip experiment.
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`More details are given below in the section on examples of relevant experience.
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`7. My university research centers on the design of precision
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`electromechanical systems with a specialization in mechatronics, precision
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`motion control, precision optomechanical systems, high performance
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`manufacturing equipment, bio-medical and bio-instrumentation systems,
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`semiconductor lithography machine motion systems and control, novel motors
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`and other electromagnetic actuators, and magnetic suspensions and bearings. I
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`have also consulted for industry in these areas.
`
`8.
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`I have worked extensively with industry both as a staff engineer
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`and as a consultant. My first employment after receiving my Bachelor’s degree
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`was with the Hewlett-Packard Co., where I worked from 1980-82. I also
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`worked fulltime for the Waters Division of Millipore during the period 1986-
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`87. I worked part-time (about 15 hours/week on average) for the ASML
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`company during my sabbatical from MIT in 2007-8, and taught a 2-week
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`control systems course for the ASML engineers during that time. The ASML
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`company designs and manufactures photolithographic wafer scanners, which
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`are complex electro-opto-mechanical systems used to print very fine-scale
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`patterns in the manufacturing of integrated circuits such as computer and
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`memory chips. Such scanners use very high performance motors, including
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`motors with liquid cooling. At present, I continue to interact with the ASML
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`company in a funded research project at MIT, focused on precision motion
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`systems for next-generation photolithographic scanners, including very high
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`performance linear motors.
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`9.
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`At MIT, I teach or have taught courses in the areas of design,
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`dynamics, mechatronics, and computer control. These courses include 2.003
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`Modeling, Dynamics, and Control I, which is a sophomore-level course
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`introducing techniques for modeling electrical and mechanical system, analysis
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`of time- and frequency-responses, and basic control of such systems; 2.007
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`Design and Manufacturing I, which is a sophomore course focused on the
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`principles of design; 2.737 Mechatronics, which covers more advanced issues
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`of modeling, design, and control of electromechanical systems; 2.14/2.140
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`Analysis and Design of Feedback Control Systems, which is a combined
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`undergraduate- and graduate-level introduction to feedback control; and 3)
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`2.171 Computer Controlled Systems, which presents theory and practice for
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`using digital computers for control. I have also taught a significant number of
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`day-long and week-long courses for industry, centering on the topics of the
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`design and control of electromechanical systems, including issues of force and
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`thermal limits in electromagnetic motors.
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`10.
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`In my research at MIT, I have supervised a total of 67 Master of
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`Science students engaged in thesis research projects, with 0 M.S. projects
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`currently in progress. I have supervised a total of 18 Doctor of Philosophy
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`students engaged in thesis research projects, with 4 Ph.D. projects currently in
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`progress. The detailed topics of these projects are listed in my CV in Appendix
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`A.
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`11.
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`I am a member of the Institute of Electrical and Electronics
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`Engineers (IEEE), the American Society of Mechanical Engineers (ASME),
`
`and the American Society for Precision Engineering (ASPE). I have served on
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`the board of ASPE, and was Vice-President, President, and past-President of
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`this society during 2004-6. I have also served as an Associate Editor for the
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`journal Precision Engineering. I have served on the Editorial, Steering, or
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`Organizing committees of a number of international conferences. I have also
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`published and/or presented numerous technical papers. These organizations,
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`committee memberships and technical papers are listed in my CV. I have also
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`presented numerous seminars covering a wide range of topics, a list of which is
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`also set forth in Appendix A.
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`12.
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`I have served as the conference co-chair for the International
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`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,
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`and at MIT in 2004, 2010, 2013, and 2016.
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`13.
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`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
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`the IFAC Mechatronics Paper Prize Award in 2014, and again in 2016.
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`14.
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`I am frequently engaged as a reviewer of technical papers in
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`journals such as Precision Engineering, IFAC Mechatronics, IEEE Industry
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`Applications, IEEE Transactions on Magnetics, and other journals. I have also
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`served as a guest editor of IFAC Mechatronics for a special issue focused on
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`Control of Precision Systems in 2014.
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`15.
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`I am a named inventor on 26 U.S. Patents, and have several patent
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`applications in progress. The topics of these patents include novel
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`electromechanical motion control systems such as magnetic bearings, new types
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`of motors for high-performance motion control, and other precision
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`manufacturing and motion-control equipment.
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`16.
`
`I have used my education and experience working in the
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`mechanical engineering field, and my understanding of the knowledge,
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`creativity, and experience of a person having ordinary skill in the art in forming
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`the opinions expressed in this report, as well as any other materials discussed
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`herein.
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`II. EXAMPLES OF RELEVANT EXPERIENCE
`17. My first employment after finishing my Bachelor’s degree was at
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`the Hewlett-Packard Company (HP), in Avondale, PA, where I was in the R&D
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`department. This division of HP designed and manufactured chemical analytical
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`instruments, primarily gas and liquid chromatographs. My main project at HP
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`was to design the control system for a new type of pump for supercritical
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`carbon dioxide extraction and chromatography. For this pumping system, I
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`designed a microprocessor-based controller board that was used to drive the
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`pumping system through a stepper motor.
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`18.
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`In 1982, I returned to MIT and began my Master’s thesis research,
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`in which I designed, modeled, and experimentally demonstrated an
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`electronically-controlled pressure regulator. This project was funded by HP,
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`which needed this pressure regulator as part of the pumping system I had
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`worked with earlier. This pressure regulator used an analog servo system to
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`regulate pressures in the range of 0 to 10,000 psi.
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`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
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`various liquid solvents in the flow system of a liquid chromatograph, which is
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`used for chemical constituent analysis. The goal of this project was to create a
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`control system design and servo algorithms that would achieve extremely low
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`pumping flow ripple. This parameter calibrating algorithm reduced the flow
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`ripple of the pumping system by a factor of 50, thereby allowing direct
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`interfacing with advanced instruments such as mass spectrometers. My first
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`issued patent grew out of this research activity at Millipore.
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`20. During 1987-1990 I returned to MIT for my Doctoral thesis work.
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`In this research I designed novel electromagnetic linear motors capable of
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`controlling force in two axes simultaneously so as to enable new types of long-
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`stroke magnetic levitation systems for precision positioning of objects such as
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`semiconductor wafers.
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`21. During 1993-2000 I was a consultant to Anorad Corp., which
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`designed and manufactured motion systems, rotary motors and linear motors.
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`As part of this consulting, I designed a new type of linear motor which included
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`plastic or epoxy encapsulation of the motor coils, and which included cooling
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`passages for carrying air or liquid for cooling the motor coils.
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`22. This consulting work lead to Anorad funding a research project at
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`MIT to study novel designs for motor cooling. This project became the
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`Master’s thesis of Michael Liebman, who started working on this project during
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`the fall semester of 1997, and completed his thesis in January 1998. This thesis,
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`entitled “Thermally Efficient Linear Motor Analysis and Design,” created a
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`novel motor cooling technique which circulated liquid past the end turns of a
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`high-force linear motor in which the coils were potted in epoxy with openings
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`in the end turns to allow fluid to remove heat from the motor coils. This thesis
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`research led to the application and granting of US patent 6262503, which was
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`filed on Oct. 15, 1998, and on which Michael Liebman and I are the inventors.
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`23. As a key component of my research in precision magnetically-
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`levitated positioners, I have been actively engaged in designing novel
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`electromagnetic motors, including the fabrication of such motors using
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`encapsulating epoxy, and including the issues of cooling such motors. In an
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`early research project, my student Michael Holmes and I designed, built and
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`tested an ultra-high-resolution magnetically levitated positioner, which was
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`magnetically suspended in a fluid bath so as to provide damping and thermal
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`conduction. This research was reported in the Master’s thesis entitled “Analysis
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`and Design of a Magnetically-Suspended Precision Motion Control Stage”,
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`which was completed in May, 1994. This work was continued in the Master’s
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`thesis of Stephen Ludwick, entitled “Modeling and Control of a Six Degree of
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`Freedom Magnetic/Fluidic Motion Control Stage,” which was completed in
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`February, 1996.
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`24. During 2001-2002, I worked with Master’s student Christian
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`Garcia on a co-op project funded by Schlumberger to study designs of
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`magnetically-levitated motor/impellers for down-hole submersible pumps for
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`oil extraction. This resulted in the thesis entitled “Magnetic Levitation for
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`Down-Hole Submersible Pumps,” which was completed in June, 2002.
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`25. My students and I have designed many new types of linear and
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`rotary motors, including the Doctoral thesis of Kim, Williams, Holmes,
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`Liebman, Byl, Ludwick, Montesanti, Lu, and Imani-Nejad, for example. These
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`theses are cited in my curriculum vitae, attached as Exhibit A to this report.
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`26. Most recently, the doctoral thesis of Jun-Young Yoon created the
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`design of an extremely high force density linear motor with very low acoustic
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`noise output. In this thesis, the linear motor magnetic design is optimized for
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`the creation of force with very low vibration. This thesis entitled “Linear Iron-
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`core Permanent Magnet Motor with High Force and Low Acoustic Noise” was
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`completed in January, 2017.
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`27.
`
`I am also currently working with my Doctoral student Minkyun
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`Noh on the design of a novel magnetically-levitated motor/impeller for
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`pediatric blood pump applications, for example in an extracorporeal life support
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`system. This motor/impeller levitates a rotary impeller in the flowing liquid to
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`provide pumping of liquid with no mechanical contact from outside. Our paper
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`on this topic, entitled “Magnetically Levitated Blood Pump Impeller for Life
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`Support,” was recently awarded the NI Engineering Impact Award in the
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`Advanced Research category.
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`III. MATERIALS CONSIDERED
`28.
`In forming my opinions, I read and considered the ’348 patent and
`
`its prosecution history, the exhibits listed in the Exhibit List filed with the
`
`petition for inter partes review of the ’348 patent, as well as any other material
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`referenced herein.
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`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.
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`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 opinion herein from the viewpoint of a POSITA at the earliest
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`alleged priority date for the ’348 patent, which I have been informed is July 19,
`
`2006.
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`31. The ’348 patent relates to electromagnetic devices. The various
`
`references that I discuss below are informative of the level of skill of a POSITA
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`and are of the type that are reasonably relied upon by experts in my field to
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`form opinions on the subject of electromagnetic devices.
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`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
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`dimensional properties (e.g., CLTE), and thermofluid concepts. A POSITA
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`would further be aware of various techniques for manufacturing encapsulated
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`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.
`
`34.
`
`I understand that claims in inter partes review proceedings are to
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`be given their broadest reasonable interpretation in light of the specification,
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`which is what I have done when performing my analysis in this declaration.
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`35.
`
`In comparing the claims of the ’348 patent to the prior art, I have
`
`carefully considered the ’348 patent and its file history based upon my
`
`experience and knowledge in the relevant field. In my opinion, the broadest
`
`reasonable interpretation of the claim terms of the ’348 patent are generally
`
`consistent with the terms’ ordinary and customary meaning, as a POSITA
`
`would have understood them. That said, for purposes of this proceeding, I have
`
`applied the following constructions when analyzing the prior art and the claims:
`
`36.
`
`“Monolithic body” (claims 24) is defined in the patent as “being
`
`formed as a single piece.” (Ex. 1001, 6:5–6.) Thus, in my opinion, a
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`“monolithic body” is a body formed as a single piece, as opposed to multiple
`
`pieces joined together with fasteners, glue, or welding.
`
`37.
`
`“A fluid pathway at least partially embedded in and integral with
`
`the monolithic body” (claims 24–27) should be construed as “a monolithic body
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`either forms at least part of a length of a fluid pathway itself or encapsulates at
`
`least part of a length of a conduit that forms a fluid pathway.”
`
`38. The phrase “at least partially embedded in and integral with” was
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`added during prosecution. (Ex. 1005, 148.) The Applicant stated that “Figures
`
`12–15, 16, 18–19, and 20–21 all depict embodiments where a fluid pathway is
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`at least partially embedded in and integral with the monolithic body of injection
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`molded thermoplastic.” (Id., 153.) With respect to Figs. 12–15, the ’348 patent
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`describes:
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`Two
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`liquid-tight coolant channels 286 are also
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`substantially encapsulated in the body 284 of phase
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`change material. The channels 286 may be molded into
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`the body 284 when it is formed. A preferred method of
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`forming the channels is to use a conduit that is put in
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`place before the body 284 is solidified. The conduit
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`may be metal or thermoplastic. In one embodiment
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`that conduit is made out of the same thermoplastic
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`material that is used to injection mold the body 284.
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`(Ex. 1001, 16:27–34 (emphasis added).) Alternatively, Figure 16 describes that
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`channels 326 are machined into aluminum body 322. (Id., 17:3–8.) Either of
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`these techniques can be used to create the claimed “fluid pathway.”
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`39. Accordingly, in my opinion, the broadest reasonable construction
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`of “a fluid pathway at least partially embedded in and integral with the
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`monolithic body” in this proceeding should be a “a monolithic body either
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`forms at least part of a length of a fluid pathway itself or encapsulates at least
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`part of a length of a conduit that forms a fluid pathway.”
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`C. Obviousness
`40.
`I understand that a patent claim is invalid if the differences
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`between the patented subject matter and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was made
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`to a person of ordinary skill in the art.
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`41. When considering the issues of obviousness, I understand that I am
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`to do the following: (i) determine the scope and content of the prior art; (ii)
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`ascertain the differences between the prior art and the claims at issue; (iii)
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`resolve the level of ordinary skill in the pertinent art; and (iv) consider objective
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`evidence of non-obviousness. Moreover, I have been informed and I understand
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`that so-called objective indicia of non-obviousness (also known as “secondary
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`considerations”) like the following are also to be considered when assessing
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`obviousness: (1) commercial success; (2) long-felt but unresolved needs; (3)
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`copying of the invention by others in the field; (4) initial expressions of
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`disbelief by experts in the field; (5) failure of others to solve the problem that
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`the inventor solved; and (6) unexpected results. I also understand that evidence
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`of objective indicia of non-obviousness must be commensurate in scope with
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`the claimed subject matter. I am not aware of any objective indicia of non-
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`obviousness relevant to the claims of the ’348 patent.
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`42. 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 single prior art reference, the patent claim is invalid if the invention would
`
`have been obvious to a person of ordinary skill in the art at the time of the
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`invention. In particular, I understand that a patent claim is normally invalid if it
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`would have been a matter of “ordinary innovation” within the relevant field to
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`create the claimed product at the time of the invention.
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`43.
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`In determining whether the subject matter as a whole would have
`
`been obvious at the time that the invention was made to a person having
`
`ordinary skill in the art, I have been informed of several principles regarding the
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`combination of elements of the prior art:
`
`a.
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`First, a combination of familiar elements according to known
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`methods is likely to be obvious when it yields predictable results.
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`b.
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`Second, if a person of ordinary skill in the art can implement a
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`“predictable variation” in a prior art device, and would see the
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`benefit from doing so, such a variation would be obvious. In
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`particular, when there is pressure to solve a problem and there are a
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`finite number of identifiable, predictable solutions, it would be
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`reasonable for a person of ordinary skill to pursue those options that
`
`fall within his or her technical grasp. If such a process leads to the
`
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`claimed invention, then the latter is not an innovation, but more the
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`result of ordinary skill and common sense.
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`44.
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`I understand that the “teaching, suggestion, or motivation” test is a
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`useful guide in establishing a rationale for combining elements of the prior art.
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`This test poses the question as to whether there is an explicit teaching,
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`suggestion, or motivation in the prior art to combine prior art elements in a way
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`that realizes the claimed invention. Though useful to the obviousness inquiry, I
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`understand that this test should not be treated as a rigid rule. It is not necessary
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`to seek out precise teachings; it is permissible to consider the inferences and
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`creative steps that a person of ordinary skill in the art (who is considered to
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`have an ordinary level of creativity and is not an “automaton”) would employ.
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`V. OVERVIEW OF THE ’348 PATENT
`45. The ’348 patent describes various electromagnetic devices where
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`components are substantially encapsulated in a monolithic body of a phase-
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`change material such as a therm