Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NAVISTAR, INC.,
`Petitioner,
`
`v.
`
`FATIGUE FRACTURE TECHNOLOGY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00853
`Patent 7,143,915 B2
`____________
`
`Before LINDA E. HORNER, BENJAMIN D. M. WOOD, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`Paper: 58
`Date: August 29, 2019
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
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`
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`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NAVISTAR, INC.,
`Petitioner,
`
`v.
`
`FATIGUE FRACTURE TECHNOLOGY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00853
`Patent 7,143,915 B2
`____________
`
`Before LINDA E. HORNER, BENJAMIN D. M. WOOD, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`Paper: 58
`Date: August 29, 2019
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
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`IPR2018-00853
`Patent 7,143,915 B2
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`INTRODUCTION
`I.
`Navistar, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1, 7, 9, and 10 of U.S. Patent No. 7,143,915 B2 (Ex. 1001,
`“the ’915 patent”). Paper 1 (“Pet.”). Fatigue Fracture Technology LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`Upon consideration of the Petition and Preliminary Response, we instituted
`an inter partes review pursuant to 35 U.S.C. § 314, as to all of the
`challenged claims and on all grounds raised in the Petition. Paper 13 (“Inst.
`Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 19, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 29, “Reply”), and Patent Owner filed a Patent Owner
`Sur-Reply (Paper 32, “Sur-Reply”).
`Petitioner filed a Motion to Strike portions of Patent Owner’s
`Sur-Reply and the accompanying Exhibits (Paper 35, “Mot. to Strike”) and
`Patent Owner filed an Opposition to Petitioner’s Motion (Paper 38, “Opp.
`Mot. to Strike”).
`Petitioner also filed a Motion to Exclude (Paper 40, “Pet. Mot.
`Exclude”), Patent Owner filed an Opposition to Petitioner’s Motion
`(Paper 48, “PO Opp. Mot. Exclude”), and Petitioner filed a Reply (Paper 50,
`“Pet. Reply Mot. Exclude”).
`Patent Owner filed a Motion to Exclude (Paper 45, “PO Mot.
`Exclude”), Petitioner filed an Opposition to Patent Owner’s Motion
`(Paper 46, “Pet. Opp. Mot. Exclude”), and Patent Owner filed a Reply
`(Paper 51, “PO Reply Mot. Exclude”).
`On June 11, 2019, we held an oral hearing. Paper 57 (“Tr.”).
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`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we determine that Petitioner has shown, by a
`preponderance of the evidence, that claims 1, 7, 9, and 10 of the ’915 patent
`are unpatentable. We also grant, in part, Petitioner’s Motion to Strike and
`Petitioner’s Motion to Exclude. We deny Patent Owner’s Motion to
`Exclude.
`
`A. Related Matters
`The parties indicate that the ’915 patent is asserted in the United
`States District Court for the Northern District of Illinois, in a case captioned
`Fatigue Fracture Technology, LLC v. Navistar, Inc., Case No. 1:15-cv-5667
`(N.D. Ill.). Paper 7 (Petitioner’s Second Updated Mandatory Notices);
`Paper 5 (Patent Owner’s Mandatory Notices). The parties also indicate that
`related U.S. Patent No. 7,497,361, which is a divisional of the ’915 patent, is
`the subject of a reexamination proceeding (Appl. No. 90/014,120) before
`this Office. Id.
`
`B. Real Parties in Interest
`Petitioner identifies only itself as a real party in interest. Pet. 83;
`Paper 7. Patent Owner identifies only itself as a real party in interest.
`Paper 5.
`
`C. The ’915 Patent
`The ’915 patent relates to a method to fracture connecting rods.
`Ex. 1001, 3:3‒4. The patent describes that most known methods for
`fracturing connecting rods apply an outward pressure to the crank bore until
`the generated stresses are high enough to fracture the connecting rod. Id. at
`1:30‒33. The patent teaches that the large magnitude forces required to
`fracture connecting rods made of high strength materials have a negative
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`effect on quality of the fractured connecting rod. Id. at 1:39‒43. The patent
`also teaches that such forces cause disadvantages, such as plastic
`deformation, lack of flexibility in adapting the same technique to different
`sizes of connecting rods, repeated breakage of force exertion elements of the
`machine, and poor quality of the fractured connecting rod. Id. at 1:43‒48.
`The ’915 patent recognizes that some fracture methods attempted to
`overcome these difficulties by reducing or weakening the cracking area
`using techniques such as cryogenic cooling and electronic beam hardening.
`Id. at 1:34‒38. According to the patent, however, these techniques have “a
`deleterious effect on material performance.” Id. at 1:38.
`The process of the ’915 patent uses several small magnitude forces to
`raise the stress intensity factor in the connecting rod up to the fracture point
`to avoid the use of a single large force to fracture the rod. Id. at 3:4‒8. The
`’915 patent describes that this approach eliminates many problems
`associated with the use of large forces and provides better control over the
`fracturing process, because the contribution of each factor is optimized to
`achieve the best results. Id. at 3:8‒11.
`In the method described in the ’915 patent, time-varying forces, such
`as harmonic forces, are applied to a pre-notched connecting rod to cause the
`pre-existing crack to grow incrementally depending on the range of
`fluctuation in the stress intensity factor. Id. at 3:16‒20. “[A]s the crack
`grows, the absolute value of the stress intensity factor will increase.” Id. at
`3:22‒24. The ’915 patent describes that the time-varying forces are applied
`simultaneously to two sides of the connecting rod and act along a straight
`line parallel to the predetermined fracture plane and perpendicular to the axis
`of the bore cylindrical surface. Id. at 3:54‒58. “The crack extends, and
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`fracture may occur, depending on the relative magnitude of stress intensity
`factor and material fracture toughness.” Id. at 3:49‒52. Alternatively, the
`time-varying force can be applied in a direction perpendicular to the
`predetermined fracture plane. Id. at 6:41‒44.
`In addition, a primary pre-stressing force can be applied in a direction
`perpendicular to, and away from, the predetermined fracture plane by
`moving an upper jaw of a clamping arrangement away from the fracture
`plane. Id. at 4:3‒7. A secondary pre-stressing force can be applied by two
`static forces equal in magnitude and acting on the same straight line in
`opposite directions, using the same mechanism used to apply the
`time-varying forces. Id. at 4:14‒18. Specifically, two contacts advance until
`they slightly press the part applying the secondary pre-stressing forces, and
`then they move forward and backward applying the time-varying forces. Id.
`at 4:18‒21. The ’915 patent describes that application of these pre-stressing
`forces is optional and elimination of these pre-stressing forces is not a
`departure from the scope of the invention. Id. at 6:45‒48.
`The ’915 patent describes that in the process a dynamic force is
`applied at a time instant Tf by increasing the primary pre-stressing force
`suddenly as an impulsive force at Tf, or at a slower rate within a period
`centered on Tf. Id. at 4:35‒38. “The time instant Tf, to be determined by
`performing several simple tests, by applying the fracturing force during
`different cycles at different time instants such as T0 (minimum deformation)
`or Tmax (maximum KI) and comparing the quality of the fractured connecting
`rods.” Id. at 4:38‒43. “[A] longer period before applying the dynamic
`force, increases the fatigue effect [imparted by the time varying force].” Id.
`at 4:55‒56.
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`The ’915 patent describes one implementation of the process as
`follows, with reference to Figure 3 reproduced below.
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`Figure 3 shows the external force system used to fracture the connecting rod,
`wherein F1 is the primary pre-stressing force, F2L and F2R are the secondary
`pre-stressing forces, F3L and F3R are the harmonic forces, and F4I and F4D are
`the impulsive and the slow rate dynamic forces, respectively. Id. at 5:15‒19.
`In the exemplary method, first, the connecting rod is clamped in
`position on upper jaw 2 and lower jaw 3, and other elements 6, 7, 8, and 9
`press the connecting rod surface against jaws 2 and 3. Id. at 6:12‒18. The
`rod also is supported at points 10 and 11. Id. at 6:18. Second, pre-stressing
`force F1 is applied by moving upper jaw 2 away from the predetermined
`fracture plane 1E. Id. at 6:22‒23; see Fig. 1. Third, two contacts 4L and 4R
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`advance, in opposite directions, to contact sides 1DL and 1DR to apply
`secondary pre-stressing forces F2L and F2R. Id. at 6:24‒26; see Fig. 1.
`Fourth, contacts 4L and 4R move forward and backward, simultaneously,
`applying two harmonic forces F3L and F3R. Id. at 6:27‒29. Fifth, an
`impulsive fracturing force F4I is applied at the time instant Tf, causing a
`sudden increase of F1 and, thus, fracturing the connecting rod. Id. at 6:32‒
`34.
`
`
`
`D. Illustrative Claim
`Of the challenged claims, claim 1 is the sole independent claim. Each
`of claims 7, 9, and 10 depends directly from challenged claim 1. Claim 1 is
`reproduced below.
`A process for the fracture separation of a part having a
`1.
`cylindrical bore passing therethrough into a first portion and a
`second portion, the cylindrical bore having a central axis, the
`part having two opposed sides proximate to the intersection of a
`predetermined fracture plane passing through the cylindrical
`bore and the part, the process including the steps of:
`a)
`optionally applying at least one pre-stressing force
`to at least one of the first portion, the second portion and said
`sides of said part, said at least one pre-stressing force selected
`from the group compromising [sic]:
`i) a longitudinal pre-stressing force applied to one
`of the first portion and the second portion relative to the
`other of the portion and the second portion, said
`longitudinal pre-stressing force being applied in a
`direction substantially perpendicular to said
`predetermined fracture plane, and
`ii) a lateral pre-stressing force applied to each of
`the opposed sides of the part, each of said lateral
`pre-stressing forces being applied along substantially
`straight line that is substantially parallel to the
`predetermined fracture plane and substantially
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`perpendicular to the central axis, where at any time
`instant, each of the lateral pre-stressing forces being
`substantially equal in magnitude and acting opposite in
`direction to one another,
`b)
`applying at least one fatigue force to at least one of
`the first portion and the second portion, said at least one fatigue
`force being selected from the group comprising:
`i) a longitudinal cyclic force applied to one of the
`first portion and the second portion relative to the other
`of the first portion and the second portion, said
`longitudinal cyclic force being applied in a direction
`substantially perpendicular to said predetermined fracture
`plane, and
`ii) a lateral cyclic force applied to each of the
`opposed sides of the part, each of the said lateral cyclic
`forces being applied along a substantially straight line
`that is substantially parallel to the predetermined fracture
`plane and substantially perpendicular to the central axis,
`where at any time instant, each of said lateral cyclic
`forces being substantially equal in magnitude and acting
`opposite in direction to one another;
`c)
`applying at least one dynamic force to one of the
`first portion and the second portion relative to the other of the
`first portion and the second portion, said at least one dynamic
`force being applied in a direction substantially perpendicular to
`said predetermined fracture plane, said dynamic force being
`applied to fracture the part into the first portion and the second
`portion so as to separate the first portion from the second
`portion substantially along said predetermined plane.
`Ex. 1001, 6:61‒7:45.
`E. Asserted Prior Art and Grounds of Unpatentability
`Petitioner relies on the following prior art references in the presented
`grounds of unpatentability:
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`a) Brovold: U.S. Patent No. 4,754,906, issued July 5, 1988, filed in
`the record as Exhibit 1003.
`b) Cavallo: U.S. Patent No. 5,699,947, issued December 23, 1997,
`filed in the record as Exhibit 1004.
`c) Becker: U.S. Patent No. 5,320,265, issued June 14, 1994, filed in
`the record as Exhibit 1005.
`d) Bayliss: U.S. Patent No. 3,155,300, issued November 3, 1964,
`filed in the record as Exhibit 1006.
`Petitioner challenges the patentability of claims 1, 7, 9, and 10 of the
`’915 patent on each of the following grounds (Pet. 2):
`
`Ground
`1
`2
`3
`4
`5
`6
`
`7
`8
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`Reference(s)
`
`Statutory Basis
`§ 102(b) or § 103(a) Brovold
`§ 102(b) or § 103(a) Cavallo
`§ 103(a)
`Brovold in view of Cavallo
`§ 103(a)
`Cavallo in view of Brovold
`§ 103(a)
`Brovold in view of Bayliss and/or Becker
`§ 103(a)
`Brovold in view of Cavallo and further in
`view of Bayliss and/or Becker
`Cavallo in view of Bayliss
`Cavallo in view of Brovold and further in
`view of Bayliss
`
`§ 103(a)
`§ 103(a)
`
`Petitioner supports its challenge with a Declaration of Thomas E.
`Brovold, filed as Exhibit 1007 (“Brovold Declaration”).
`In its Response, Patent Owner relies on a Declaration of Sameh
`Guirgis, filed as Exhibit 2001 (“Guirgis Declaration”), a Declaration of
`Sheldon Mostovoy, filed as Exhibit 2036 (“Mostovoy Declaration”), and a
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`Supplemental Declaration of Sheldon Mostovoy, filed as Exhibit 2042
`(“Supp. Mostovoy Declaration”).1
`F. Incorporation by Reference
`Patent Owner attempts to incorporate certain arguments made in its
`Preliminary Response (Paper 9) into the Patent Owner’s Response. PO
`Resp. 33 (“FFT therefore relies on its Patent Owner’s Preliminary Response
`with respect to [grounds 1, 2, and 5].”). Our Rules prohibit incorporating
`arguments by reference. As stated in 37 C.F.R. § 42.6(a)(3): “[a]rguments
`must not be incorporated by reference from one document into another
`document.” Incorporation by reference circumvents our Rule limiting the
`word count in the Patent Owner response to 14,000 words. See 37 C.F.R.
`§ 42.24(b)(2). Arguments that are not developed and presented in the Patent
`Owner Response, itself, are not entitled to consideration. See Paper 14
`(Scheduling Order), 5 (cautioning Patent Owner “that any arguments for
`patentability not raised in the response may be deemed waived”).
`II. ANALYSIS
`A. Legal Principles
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). To establish anticipation, “all of the elements and
`limitations of the claim must be shown in a single prior reference, arranged
`
`
`1 Patent Owner also cites to a document signed by Honghui Yu (Exhibit
`2040) that was filed in the reexamination proceeding of the related ’361
`patent. This exhibit is excluded as containing inadmissible hearsay as
`explained below in Section VI.A. addressing Petitioner’s Motion to Exclude.
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`as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
`1383 (Fed. Cir. 2001).
`The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A
`patent can be obvious in light of a single prior art reference if it would have
`been obvious to modify that reference to arrive at the patented invention.
`See, e.g., Takeda Chem. Indus., Ltd. v. Alphapharm Pty, Ltd., 492 F.3d 1350,
`1357 (Fed. Cir. 2007); SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp.,
`225 F.3d 1349, 1356 (Fed. Cir. 2000).
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation marks and citation omitted). Petitioner defines the
`relevant field of the invention as “manufacturing techniques for mechanical
`components, including fracturing connecting rods or similar parts.” Pet. 15
`(citing Ex. 1007 ¶ 45). Petitioner proffers, via its declarant Mr. Brovold that
`a person having ordinary skill in this art would have:
`a bachelor’s degree in mechanical engineering or an equivalent
`field, and approximately 1‒2 years of practical experience
`fracturing connecting rods or similar parts; an associate’s
`degree in mechanical engineering or an equivalent field, and
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`approximately 2‒3 years of practical experience fracturing
`connecting rods or similar parts; or equivalent knowledge and
`experience.
`Pet. 15 (citing Ex. 1007 ¶¶ 46‒49, 51, 66). In the Response, Patent Owner
`does not address Petitioner’s proffered assessment of the level of ordinary
`skill in the art.2 Petitioner’s proposal is consistent with the problems and
`solutions in the ’915 patent and prior art of record. We adopt the definition
`of a person of ordinary skill in the art as proposed by Petitioner.
`C. Claim Construction
`In an inter partes review filed before November 13, 2018, claim terms
`in an unexpired patent are given their broadest reasonable construction in
`light of the specification of the patent in which they appear.3 37 C.F.R.
`§ 42.100(b) (2017); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2142 (2016) (affirming that the USPTO has statutory authority to
`construe claims according to 37 C.F.R. § 42.100(b)). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those claim terms
`that are in controversy need to be construed, and only to the extent necessary
`
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`2 In a Joint Claim Construction Chart filed in the related litigation, Petitioner
`and Patent Owner agreed on this same definition of a person of ordinary skill
`in the art. Ex. 1037, 2.
`3 This Petition was filed before the effective date of the amendment to
`37 C.F.R. § 42.100 that changed the claim construction standard applied in
`inter partes reviews. Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 FR 51,340 (Oct. 11, 2018) (37 C.F.R. § 42.100(b) (Nov. 2018)).
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`to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`In our Institution Decision, we interpreted the claim terms as set forth
`in the table below:
`Claim Term
`Fatigue force
`
`Interpretation
`a time-varying force that causes fluctuations of
`stresses that weaken the part
`a force that regularly repeats between a maximum
`value and a minimum value
`a force that changes with time
`
`Cyclic force
`
`Dynamic force
`Inst. Dec. 10‒15.
`Neither Patent Owner nor Petitioner disputes the claim constructions
`set forth in our Institution Decision. PO Resp. 9; Reply 3‒4. Thus, we
`employ the same interpretations of these claim terms in this Final Written
`Decision.
`Despite Patent Owner stating that it “does not dispute the claim
`constructions set forth in the original institution Decision,” Patent Owner
`attempts to add additional narrowing aspects to each claim term. PO
`Resp. 9‒11. We address Patent Owner’s arguments here to make clear that
`we are not changing our interpretations.
`For instance, Patent Owner argues that “fatigue force,” as interpreted
`in the institution decision, should be further limited to elastic forces (as
`opposed to ductile forces) and should not encompass forces that can be used
`to break the part. Id. at 9‒10. We decline to further limit “fatigue force” to
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`only elastic forces. Patent Owner’s expert admits that “[t]here is no such
`thing as a purely linear elastic fatigue failure . . . because there is a certain
`amount of plastic deformation ahead of the crack tip.” Ex. 1068 (Mostovoy
`Depo.), 281:23‒282:2. This understanding is confirmed by the description
`in the ’915 patent, which states, “[i]n the presence of a V-notch or a crack,
`fracture occurs under essentially elastic conditions with a limited plasticity
`zone at the tip of the crack.” Ex. 1001, 2:4‒7; see also id. at 4:58‒60
`(describing that the external forces applied to the rod “generally, stress the
`connecting rod within the linear elastic regime”). We understand the ’915
`patent to describe applying forces that are not exclusively or purely in the
`elastic regime. Further, Patent Owner’s expert admits that the claims do not
`require application of forces in the elastic regime or that the fracture be
`“non-ductile.” Ex. 1068, 28:4‒30:12.
`We also decline to limit fatigue force only to forces applied to
`weaken, but not break, the part. For instance, an elastic force used to
`weaken the part will eventually break the part if applied for a sufficient
`number of cycles. Ex. 1031 (Rules of Thumb for Mechanical Engineers), 79
`(describing the stages of fatigue failure including crack initiation, stable
`crack growth, and unstable crack growth that leads to fracture). Further,
`Patent Owner’s expert admits that the claim does not require stopping the
`application of a fatigue force prior to application of a dynamic force or prior
`to separation of the part. Ex. 1068, 35:11‒18.
`In sum, the language employed in claim 1 is broad. It does not limit
`the “fatigue force” to an elastic force and it does not recite a time period for
`application of the fatigue force. We see no reason based on the description
`of “fatigue force” provided in the ’915 patent to further limit the
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`interpretation set forth in the Institution Decision and agreed to by the
`parties.
`Patent Owner also argues that dynamic force, as interpreted in the
`Institution Decision, should be further limited to a force “that is much lower
`than load bearing capacity of the part before it is weakened due to the
`application of fatigue.” PO Resp. 11. We decline to further limit dynamic
`force to a force of a particular magnitude. Patent Owner’s expert
`acknowledged that the claim language does not limit the dynamic force to a
`force of a particular magnitude, and Patent Owner conceded this point
`during oral argument. Ex. 1068, 34:24‒35:5; Tr. 38:21‒23 (Patent Owner’s
`counsel stating that the claim language does not contain values for fatigue
`force or dynamic force). The ’915 patent is silent as to the magnitude of the
`dynamic force as compared to the load bearing capacity of the part prior to
`weakening. The ’915 patent provides no context or measure by which to
`evaluate how much lower the dynamic force must be as compared to the
`original load bearing capacity of the part so as to inform us of what Patent
`Owner intends in its description of a “much lower” force. See also Tr.,
`37:13‒18 (Patent Owner’s counsel describing that the difference between
`“fatigue force” and “dynamic force” is that “the fatigue force is a cyclic
`force that weakens the part. And the dynamic force doesn’t have to be.”).
`For these reasons, we render this Final Written Decision using the
`claim interpretations as set forth in our Institution Decision.
`D. Anticipation by, or Obviousness over, Brovold (Ground 1)
`1. Overview of Brovold
`Brovold discloses a tool that uses servo controls for a pressure
`intensifier system and load and stroke feedback signals to control breaking
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`of connecting rods. Ex. 1003, 1:49‒53, 2:20‒24. Brovold discloses that
`“[t]he tool system is adaptable for either brittle fractures using one load
`cycle or for cycling the members to cause fatigue breaks, generally under a
`low number of cycles.” Id. at 2:29‒32. Brovold’s tool system 10 is shown
`in Figures 1 and 2, reproduced below.
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`Figure 1 is a sectional schematic view and Figure 2 is a top plan view
`of tool system 10 acting on connecting rod 11. Id. at 2:36‒41. Tool system
`10 comprises support base 30 with two tool portions 33 and 34, where tool
`portion 33 is slidably mounted, and tool portion 34 is fixedly mounted, on
`support base 30. Id. at 3:9‒26. Pressure intensifier system 63 acting on
`hydraulic piston-cylinder actuator arrangement 45 provides the separating
`force required for breaking or cracking the part. Id. at 3:36‒40. Hydraulic
`piston-cylinder arrangement 45 acts between tool portions 33 and 34. Id. at
`3:40. The force generated by piston-cylinder arrangement 45 acts along
`bisecting plane 65 of the connecting rod “so that there are no bending
`moments or overturning moments exerted on the connecting rod 11 during
`the breaking operation.” Id. at 4:18‒23.
`Servovalve 71 controls pressure in pressure intensifier system 63 and
`can be energized by servo controls 83 in accordance with a predetermined
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`program. Id. at 4:24‒33, 5:11‒12, 5:34‒35. When servovalve 71 is
`energized, it directs pressure to pressure intensifier system 63, which creates
`pressure in piston-cylinder arrangement 45, to force first tool portion 33
`away from second tool portion 34 and elongate bearing 13 and “cause the
`cracks or breaks 22.” Id. at 5:11‒24. Brovold discloses, “[i]n some
`instances, the controls 83 can be programmed to fatigue fail the bearing
`housing 13. The part may be cyclically loaded two or three times before
`fracture by controlling the pressure displacement or time cycle and having
`the servo-valve programmed to repeat the needed cycle.” Id. at 6:19‒24.
`2. Analysis of Claim 1
`Claim 1 recites in its preamble:
`A process for the fracture separation of a part having a
`cylindrical bore passing therethrough into a first portion and a
`second portion, the cylindrical bore having a central axis, the
`part having two opposed sides proximate to the intersection of a
`predetermined fracture plane passing through the cylindrical
`bore and the part.
`Ex. 1001, 6:61‒67. Brovold discloses a process for the fracture separation
`of bearing housing 13 of connecting rod 11 into bearing cap 15 and yoke 14
`along a fracture plane that is predetermined by notches 20.4 Ex. 1003,
`Abstract, 1:7‒11, 2:58‒3:4. Petitioner has shown how this disclosure in
`Brovold anticipates the preamble of claim 1. Pet. 40‒42 (citing Ex. 1003,
`2:63, 2:66‒3:4, Fig. 2; Ex. 1007 ¶¶ 147‒150). Patent Owner does not offer
`evidence or argument in the Patent Owner Response to dispute Petitioner’s
`showing. PO Resp. 33.
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`4 Because Brovold discloses the process recited in the preamble, we need not
`reach the issue of whether the preamble is limiting in this case.
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`Claim 1 also recites applying a longitudinal, cyclic fatigue force to at
`least one of the first portion and the second portion of the part in a direction
`substantially perpendicular to the predetermined fracture plane. Ex. 1001,
`7:20‒28 (limitation (b), option (i)).5 Petitioner asserts that Brovold teaches
`applying longitudinal cyclic fatigue forces to the rod in the manner claimed.
`Pet. 44‒46 (citing Ex. 1003, 2:20‒24, 2:29‒32, 5:11‒12; 6:19‒24, Figs. 1, 2;
`Ex. 1007 ¶¶ 156‒159).
`As discussed above in Section II.D.1., Brovold discloses applying a
`longitudinal force, via servo controls 83, servovalve 71, pressure intensifier
`system 63, piston-cylinder arrangement 65, and first and second tool
`portions 33, 34, to bearing cap 15 and yoke 14 portions of bearing housing
`13 in a direction substantially perpendicular to predetermined bisecting
`fracture plane 65. Ex. 1003, 1:49‒58, 4:18‒23, Figs. 1, 2. Further, because
`Brovold discloses that tool system 10 can be used to cycle the members to
`cause fatigue breaks, and discloses specifically that this longitudinal force
`can be “cyclically loaded two or three times before fracture,” Brovold
`discloses a longitudinal cyclic fatigue force. Id. at 6:19‒24.
`Patent Owner argues that Brovold “does not teach or suggest the
`claimed cyclic fatigue force, which (1) is in the elastic regime, or (2) is
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`5 We do not address limitation (a) of claim 1 because the parties filed a joint
`stipulation in this proceeding agreeing that “the optional, pre-stressing
`language in the Challenged Claims of the ’915 Patent is non-limiting.”
`Paper 11. We also do not address option (ii) of limitation (b) in claim 1,
`because the claim language requires only one of options (i) and (ii) to be
`present, and the Petition relies on the disclosure of option (i) in the prior art.
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`completed before failure or break of the part.” PO Resp. 34.6 As noted
`above in Section II.C., claim 1 does not limit the fatigue force to a force only
`in the elastic regime and does not require that application of the cyclic
`fatigue force stop before a dynamic force is applied to break the part.
`Patent Owner’s expert conceded that Brovold’s disclosure to apply
`two to three cycles to fatigue fail the part is a disclosure of a cyclic force that
`regularly repeats between a maximum and a minimum value and that this
`force causes fluctuation of stresses in the part. Ex. 1068, 143:22‒145:4.
`Based on the breadth of the claim language, Brovold’s disclosure of
`cyclically loading the part two or three times to fatigue fail the part
`anticipates step (b)(i) of claim 1. Ex. 1003, 6:19‒24.
`Claim 1 also recites applying at least one dynamic force to one of the
`first portion and the second portion of the part in a direction substantially
`perpendicular to the predetermined fracture plane so as to separate the first
`portion from the second portion substantially along this predetermined
`fracture plane. Ex. 1001, 7:37‒45 (limitation (c)). Petitioner asserts that
`Brovold teaches applying a dynamic force to the rod in a direction
`substantially perpendicular to a predetermined fracture plane to cause
`separation of the bearing housing into the bearing cap and yoke. Pet. 46‒49
`(citing Ex. 1007 ¶¶ 162‒168).
`In the Institution Decision, we disagreed with one reading of Brovold
`set forth in the Petition that asserts that Brovold discloses using feedback
`from transducer 42 to apply “an increased hydraulic force” or otherwise
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`6 Although Patent Owner raised this argument in rebuttal to the challenge
`based on Brovold in view of Cavallo, we address it here to the extent this
`argument also applies to the challenge based on Brovold alone.
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`adjust the applied hydraulic force, when the connecting rod is nearing
`complete fracture. Inst. Dec. 21‒24. In the Institution Decision, we
`explained, however, that we understood, under an alternate theory,
`Petitioner’s declarant determined the first few cycles of Brovold’s cyclic
`force to be the claimed fatigue force, and the final cycle of Brovold’s cyclic
`force to be the dynamic force used to break th
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