Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`Paper No. _______
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________
`
`
`HYUNDAI MOTOR COMPANY,
`
`Petitioner
`
`v.
`
`MICHIGAN MOTOR TECHNOLOGIES LLC,
`
`Patent Owner
`
`
`
`Patent No. 7,143,501
`
`Issue Date: December 5, 2006
`
`Title: METHOD FOR ASSEMBLY OF AN AUTOMOTIVE ALTERNATOR
`STATOR ASSEMBLY WITH RECTANGULAR CONTINUOUS WIRE
`
`
`Inter Partes Review No. IPR2018-01077
`
`____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 1-8, 10, 11, 14-20, 22 and 23 OF U.S. PATENT NO. 7,143,501
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET. SEQ.
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`V.
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................ 1
`I.
`II. MANDATORY NOTICES .......................................................................... 1
`A.
`Real Party-In-Interest ........................................................................... 1
`B.
`Related Matters ..................................................................................... 1
`C.
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................. 2
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) .............................. 2
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 41.103 ................................... 2
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. §§ 42.104 AND 42.108 ...................................................................... 3
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 3
`B.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................ 3
`TECHNICAL OVERVIEW ........................................................................ 4
`A.
`The ’501 Patent .................................................................................... 4
`B.
`Sadier .................................................................................................... 5
`C.
`Rosler .................................................................................................... 6
`D. Kusase................................................................................................... 8
`E.
`Nakamura ............................................................................................. 9
`VI. LEVEL OF ORDINARY SKILL IN THE ART ....................................... 9
`VII. CONSTRUCTION OF THE CLAIMS .................................................... 10
`A.
`Construction of “the wire pack being flat” ........................................ 11
`VIII. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY ............................................................................... 13
`A. Ground 1: Claims 1-8, 10, 11, 14-20, 22 and 23 are
`unpatentable under pre-AIA 35 U.S.C. § 103 as obvious over
`Sadier in view of Rosler. .................................................................... 15
`1.
`Claim 1 ..................................................................................... 16
`2.
`Claim 2 ..................................................................................... 25
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`Claim 3 ..................................................................................... 27
`3.
`Claim 4 ..................................................................................... 28
`4.
`Claim 5 ..................................................................................... 34
`5.
`Claim 6 ..................................................................................... 35
`6.
`Claim 7 ..................................................................................... 37
`7.
`Claim 8 ..................................................................................... 39
`8.
`Claim 10 ................................................................................... 40
`9.
`10. Claim 11 ................................................................................... 40
`11. Claim 14 ................................................................................... 41
`12. Claim 15 ................................................................................... 41
`13. Claim 16 ................................................................................... 42
`14. Claim 17 ................................................................................... 42
`15. Claim 18 ................................................................................... 43
`16. Claim 19 ................................................................................... 43
`17. Claim 20 ................................................................................... 43
`18. Claim 22 ................................................................................... 43
`19. Claim 23 ................................................................................... 44
`Ground 2: Claims 3, 5, 17 and 18 are unpatentable under pre-
`AIA 35 U.S.C. § 103 as obvious over Sadier in view of Rosler
`and Kusase. ......................................................................................... 44
`1.
`Claim 3 ..................................................................................... 44
`2.
`Claim 5 ..................................................................................... 47
`3.
`Claim 17 ................................................................................... 47
`4.
`Claim 18 ................................................................................... 48
`Ground 3: Claims 1-3 are unpatentable under pre-AIA 35
`U.S.C. § 103 as obvious over Nakamura in view of Sadier. .............. 48
`1.
`Claim 1 ..................................................................................... 49
`2.
`Claim 2 ..................................................................................... 54
`3.
`Claim 3 ..................................................................................... 55
`D. Ground 4: Claim 3 is unpatentable under pre-AIA 35 U.S.C. §
`103 as obvious over Nakamura in view of Sadier and Kusase. ......... 56
`1.
`Claim 3 ..................................................................................... 57
`Ground 5: Claims 4-8, 10, 11, 14-20, 22 and 23 are
`unpatentable under pre-AIA 35 U.S.C. § 103 as obvious over
`Nakamura in view of Sadier and Rosler. ........................................... 59
`1.
`Claim 4 ..................................................................................... 59
`
`B.
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`C.
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`E.
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`F.
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`Claim 5 ..................................................................................... 62
`2.
`Claim 6 ..................................................................................... 62
`3.
`Claim 7 ..................................................................................... 62
`4.
`Claim 8 ..................................................................................... 63
`5.
`Claim 10 ................................................................................... 63
`6.
`Claim 11 ................................................................................... 63
`7.
`Claim 14 ................................................................................... 64
`8.
`Claim 15 ................................................................................... 65
`9.
`10. Claim 16 ................................................................................... 65
`11. Claim 17 ................................................................................... 65
`12. Claim 18 ................................................................................... 66
`13. Claim 19 ................................................................................... 66
`14. Claim 20 ................................................................................... 67
`15. Claim 22 ................................................................................... 67
`16. Claim 23 ................................................................................... 67
`Ground 6: Claim 17 is unpatentable under pre-AIA 35 U.S.C. §
`103 as obvious over Nakamura in view of Sadier, Rosler and
`Kusase................................................................................................. 67
`IX. CONCLUSION ........................................................................................... 69
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`
`EXHIBIT LIST
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`EXHIBIT NUMBER DESCRIPTION
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
`
`U.S. Patent No. 7,143,501 to Moran (“the ’501 patent”)
`
`Declaration of Dr. Gerald Micklow
`
`Curriculum Vitae of Dr. Gerald Micklow
`
`U.S. Patent No. 4,864,715 to Sadier
`
`U.S. Patent No. 3,369,575 to Rosler
`
`U.S. Patent No. 6,313,559 to Kusase
`
`U.S. Pub. No. 2001/0038251 to Nakamura
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`Prosecution History of U.S. Patent No. 7,143,501
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`U.S. Patent No. 4,750,258 to Anderson
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`iv
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`I.
`
`INTRODUCTION
`
`Petitioner, Hyundai Motor Company, (“Hyundai” or “Petitioner”), hereby
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`petitions for inter partes review and cancellation of claims 1-8, 10, 11, 14-20, 22
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`and 23 of U.S. Patent No. 7,143,501 (“the ’501 patent”) (Ex. 1001). The
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`challenged claims generally relate to methods for forming a stator core assembly.
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`As detailed in this Petition, the claimed methods were well-known in the relevant
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`art prior to the ’501 patent.
`
`II. MANDATORY NOTICES
`Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the following
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`mandatory disclosures.
`
`Real Party-In-Interest
`
`A.
`Hyundai Motor Company and Hyundai America Technical Center, Inc. are
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`the real parties-in-interest.
`
`Related Matters
`
`B.
`Michigan Motor Technologies LLC (“MMT” or “Patent Owner”) sued
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`Hyundai Motor Company and Hyundai America Technical Center, Inc. in
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`Michigan Motor Technologies LLC v. Hyundai Motor Company et al, No. 2:17-
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`cv-12901 (E.D. Mich), alleging infringement of the ’501 patent. Hyundai is not
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`aware of any other pending judicial or administrative matter that would affect, or
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`be affected by, a decision in this proceeding.
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`1
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`C.
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`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
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`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Brian McCormack
`Registration No. 36,601
`BAKER & McKENZIE LLP
`1900 North Pearl Street, Suite 1500
`Dallas, Texas 75201
`Tel: (214) 978-3007
`Fax: (214) 978-5991
`brian.mccormack@bakermckenzie.com
`
`Matt Dushek
`Registration No. 61,921
`BAKER & McKENZIE LLP
`815 Connecticut Avenue, N.W.
`Washington, D.C. 20006
`Tel: (202) 835-6165
`Fax: (202) 416-7165
`matt.dushek@bakermckenzie.com
`
`Thomas Pease 
`Registration No. 35,317
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7223
`hmcmmtqe@quinnemanuel.com
`
`
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Petitioner consents to electronic service by email at:
`
`HMC-MMT-IPR@BakerMcKenzie.com.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 41.103
`Petitioner authorizes the United States Patent and Trademark Office
`
`(USPTO) to charge the fees set forth in 37 C.F.R. § 42.158(a) for this Petition, and
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`any additional fees that might be due, to Deposit Account No. 13-0480 (Attorney
`
`Docket No. 10035108-50391355). This Petition meets the fee requirements of 35
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`U.S.C. § 312(a)(1).
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104 AND 42.108
`A.
`Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’501 patent is available for inter partes review
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`and that Petitioner is not barred or estopped from requesting an inter partes review
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`challenging the claims of the ’501 patent on the grounds identified in this Petition.
`
`B.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`Petitioner respectfully requests the Board initiate inter partes review of
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`claims 1-8, 10, 11, 14-20, 22 and 23 of the ’501 patent based on the following
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`grounds:
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`Ground Claims
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`Basis for Challenge
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`1
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`2
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`3
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`4
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`5
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`
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`1-8, 10, 11, 14-
`20, 22, 23
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`3, 5, 17, 18
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`1-3
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`3
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`4-8, 10, 11, 14-
`20, 22, 23
`
`Unpatentable under 35 U.S.C. § 103 as obvious over
`U.S. Patent No. 4,864,715 to Sadier (Ex. 1004) in
`view of U.S. Patent No. 3,369,575 to Rosler (Ex.
`1005).
`Unpatentable under 35 U.S.C. § 103 as obvious over
`Sadier (Ex. 1004) in view of Rosler (1005) and U.S.
`Patent No. 6,313,559 to Kusase (Ex. 1006).
`Unpatentable under 35 U.S.C. § 103 as obvious over
`U.S. Patent No. 6,703,750 to Nakamura (Ex. 1007) in
`view of Sadier (Ex. 1004).
`Unpatentable under 35 U.S.C. § 103 as obvious over
`U.S. Patent No. 6,703,750 to Nakamura (Ex. 1007) in
`view of Sadier (Ex. 1004) and Kusase (Ex. 1006).
`Unpatentable under 35 U.S.C. § 103 as obvious over
`Nakamura (Ex. 1007) in view of Sadier (Ex. 1004),
`and Rosler (Ex. 1005).
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`Ground Claims
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`Basis for Challenge
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`6
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`
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`17
`
`Unpatentable under 35 U.S.C. § 103 as obvious over
`U.S. Patent No. 6,703,750 to Nakamura (Ex. 1007) in
`view of Sadier (Ex. 1004), Rosler (Ex. 1005) and
`Kusase (Ex. 1006).
`
`Section VIII below demonstrates that there is a reasonable likelihood that
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`Petitioner will prevail. See 35 U.S.C. § 314(a).
`
`V. TECHNICAL OVERVIEW
`A.
`The ’501 Patent
`The ’501 patent is directed to a method of forming an armature for an
`
`electrical machine – in particular for an automotive electrical alternator. Ex. 1001,
`
`1:8-10. Automotive alternators have been available for decades and have been
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`standard equipment on production automobiles since the 1960s. Ex. 1002, ¶¶36-
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`38. The ’501 patent includes admitted prior art that “manufacturers of automobile
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`alternators have developed alternator stators having interlaced continuous electrical
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`conductors.” Ex. 1001, 1:48-50. Importantly, the ’501 patent does not purport to
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`disclose a new alternator design. Ex. 1002, ¶39. Rather, the ’501 patent suggests
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`that “conductors are typically wound by hand, making the process time consuming
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`and expensive.” Ex. 1001, 1:50-52. The ’501 patent purports to disclose “a
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`method of automatically winding the electrical conductors of the armature of an
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`electrical alternator that will reduce the manufacturing time of the armatures,
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`thereby reducing the manufacturing cost of the armatures.” Id., 1:53-57.
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`However, as will be discussed in more detail below, the state of the art at the time
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`of the purported invention was not to wind conductors by hand. Ex. 1002, ¶40. To
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`the contrary, machines that automatically wound the electrical conductors of an
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`alternator were very well known at that time.
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`In the method described in the ’501 patent, a flat wire pack is formed by a
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`device 10 that includes a plurality of spools 12 of electrical wire 14. Id., 1:63-66.
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`To form the flat wire pack of electrical wire 14, the wire 14 is fed from the spools
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`12 to the springs 22, 24, which are rotated in an auger like fashion. Id., 2:21-31.
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`The device 10 is illustrated in Figure 1:
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`
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`Sadier
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`B.
`Sadier issued in the U.S. on September 12, 1989. Sadier is prior art under at
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`least pre-AIA 35 U.S.C. § 102(b). It was not cited during the original prosecution.
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`Sadier is directed “to a wound stator of an electric rotating machine, the
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`process of winding the stator, and a device for using the winding process.” Ex.
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`1004, 1:7-10. Sadier discloses a device that shapes wire 17 in a zig zag pattern to
`5
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`form wire sections 8 on an endless chain 18. Id., 7:24-42. The wire section 8 is
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`transferred to and stacked in slots 48 of a receiving wheel 21. Id., 9:18-26. The
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`wire sections are then transferred to the stator using expelling elements 62 that are
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`moved radially to extract the wire parts housed in the “slots 48 of the receiving
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`wheel 21 and to cause the wire parts to penetrate into the correspondingly placed
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`stator slots.” Id. 10:7-13. Sadier’s device is illustrated in Figure 9:
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`
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`Rosler
`
`C.
`Rosler issued in the U.S. on February 20, 1968. Rosler is prior art under at
`
`least pre-AIA 35 U.S.C. § 102(b). It was not cited during the original prosecution.
`
`Rosler discloses an apparatus for manufacturing a rhombic mesh from wire.
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`Ex. 1005, 4:15-18. Supply spools 68a, 68b, 68c supply transverse wires 6a, 6b, 6c
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`through a hollow shaft 11. Id., 4:19-23. Transverse wires 6a, 6b, 6c are supplied
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`6
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`over guide rollers 70a, 70b, 70c, 71a, 71b, 71c, 72a, 72b, 72c and guide eyes 73a,
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`73b, 73c. Id., 4:24-26. From the guide eyes the transverse wires pass to coils 24a
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`and 25a. Id., 4:26-27. The transverse wires discharge in succession from the guide
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`eyes 73a, 73b, 73c and pass to the coils 24a and 25a so that upon each complete
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`revolution of the plate 14b and the corresponding forward movement of the
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`transverse wires through the coils a net is produced which has wires intersecting
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`one another in a diagonal relationship. Id.at 4:28-33. Rosler’s apparatus is
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`illustrated in Figure 3:
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`7
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`
`Kusase
`
`D.
`Kusase issued in the U.S. on November 6, 2001. Kusase is prior art under at
`
`least pre-AIA 35 U.S.C. § 102(b). It was not cited during the original prosecution.
`
`Kusase is directed to a rotary electric machine and in particular a generator
`
`for a vehicle. Ex. 1006, 1:14-15. Kusase further discloses that “a main object of
`
`the invention is to provide a high-power rotary electric machine without further
`
`increasing the space factor” and “to provide a high-power electric machine which
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`has a high energy-conversion-space volume D2L.” Id., 1:27-33.
`
`
`
`In Kusase, the stator 2 includes a stator core 22, which includes a slot
`
`member 22a and an outer ring member 22b. Id., 2:32-34. In the example
`
`described, the stator core 22 has a diameter ratio inside diameter (Di) / outside
`
`diameter (Do) of 102 mm / 121 mm = 83%. Id., 2:34-37. Kusase discloses that
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`“the output power can be increased because the output power is proportional to
`
`Di2L.” Id., 2:37-39.
`
`
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`The slot member 22a of the stator core 22 includes a plurality of teeth 22c
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`and rectangular slots between the teeth 22c. Id., 2:43-44. “Because the slots open
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`radially outward, [the] stator winding can be inserted into the slots easily. As a
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`result, the space factor of the stator winding 23 that is, the ratio of the cross-
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`sectional area of the stator winding in each slot to the cross-sectional area of the
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`slot can be set equal to or more than 50% if stator winding 23 uses a magnet wire
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`having a rectangular cross-section to be fitted to the slot.” Id., 2:48-54. As shown
`
`in Kusase’s Figure 8, “the output power of the AC generator increases as the
`
`diameter ratio Di/Do becomes higher than 78% and the space factor α become
`
`higher than 50%.” Id., 3:50-53.
`
`Nakamura
`
`E.
`Nakamura published in the U.S. on November 8, 2001. Nakamura is prior
`
`art under at least pre-AIA 35 U.S.C. § 102(b). It was not cited during the original
`
`prosecution.
`
`Nakamura is directed to a stator of a rotary machine such as an alternator for
`
`a vehicle and a method for making the same. Ex. 1007, Title, ¶62. The stator core
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`32 has slots 35 that open radially inside the stator core 32. Id., ¶31. “In a
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`manufacturing process, each of the phase windings are individually formed and
`
`arranged into a cylindrical arrangement as the first sub-winding subset.” Id., ¶42.
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`The winding subset is shrunken to reduce a diameter by compression, inserted into
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`a center cavity of the stator core 32, and then expanded to insert straight portions
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`311a into the slots 35. Id.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner submits that a person of ordinary skill in the art at the time of the
`
`alleged invention of the ’501 patent would have had a bachelors degree in
`
`mechanical or electrical engineering and at least two years of work experience in
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`the design of electric motors. Ex. 1002, ¶33. In particular, a person of ordinary
`
`skill in the art would be familiar with the fundamentals of electric motor design
`
`and operation, the concept of winding stators in the manufacturing of an electric
`
`motor. Id.
`
`VII. CONSTRUCTION OF THE CLAIMS
`In an inter partes review (“IPR”) proceeding, claims in an unexpired patent
`
`should be interpreted using the broadest reasonable interpretation in light of the
`
`claim language and specification of the patent. 37 C.F.R. § 42.100(b); Cuozzo
`
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016). The Federal Circuit
`
`recently provided guidance on the proper application of the “broadest reasonable
`
`interpretation” standard. In re Smith Int’l, Inc., No. 16-2303, 871 F.3d 1375, 1382
`
`(Fed. Cir. Sept. 26, 2017). As articulated in Smith, the “broadest reasonable
`
`interpretation” is one that “corresponds with what and how the inventor describes
`
`his invention in the specification, i.e., an interpretation that is ‘consistent with the
`
`specification.’” Id., 1382-1383. Accordingly, the correct interpretation under the
`
`broadest reasonable interpretation should be an interpretation that is consistent
`
`with the specification. Id., 1383.
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`Other than the term specifically discussed below, Petitioner does not at this
`
`time contend that any other term requires explicit construction by the Board.
`
`Instead, Petitioner proposes, for purposes of this proceeding only, that the claim
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`terms of the ’501 patent take on their broadest reasonable construction. This claim
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`construction analysis is not, and should not, be viewed as a concession by
`
`Petitioner as to the proper scope of any claim term in any litigation. In addition,
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`these assumptions are not a waiver of any argument in any litigation that claim
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`terms in the ’501 patent are indefinite or otherwise invalid.
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`Construction of “the wire pack being flat”
`
`A.
`A wire pack is a three dimensional object. Ex. 1002, ¶48. Thus, whether a
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`wire pack is “flat” is a subjective inquiry. Id. The ’501 patent does not provide a
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`definition for the term “flat.” Id., ¶¶48-49. During the prosecution of the ’501
`
`patent, the claim language “the wire pack being flat,” as presented in the issued
`
`claims, was argued to the examiner.
`
`As originally presented, claim 1 of the application leading to the ’501 patent
`
`recited “forming a flat wire pack having a plurality of continuous electrical wires.”
`
`Ex. 1008, 179. The examiner rejected this claim as being anticipated by Anderson
`
`(Ex. 1009). Ex. 1008, 115-120. In particular, the examiner asserted that
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`Anderson’s coil group G2 illustrated in Figure 12 discloses forming a flat wire
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`pack. Id., 118. The applicant argued in response that Anderson “teaches the
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`simultaneous axial insertion/formation of the stator winding. No flat wire pack,
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`formed prior to insertion within the stator core, is described or taught in
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`Anderson.” Id., 112. The rejection was maintained with additional citations
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`provided for certain claim elements. Id., 93-99. The applicant then amended the
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`claim to recite “the wire pack being flat” and argued:
`
`Claim 1 has been amended to more clearly describe the claimed
`invention. Particularly, claim 1 has been amended to clarify that the
`word “flat” modifies the term “wire pack”. In other words, it is the
`“wire pack” itself that is flat in shape and it is this flat, wire pack that
`is thereafter shaped so as to form a cylinder. It is believed that the
`lack of a comma between the words “flat” and “wire” may have led to
`an alternative interpretation on the part of the examiner as to what was
`originally intended. As noted in paragraph [0011], an end view of the
`machine illustrated in Figure 2. As seen therein, the shape of the wire
`pack, which extends between the two coil springs (22) and (24), is
`flat. As a result of the machine, each individual wire is generally in
`the shape of a helix that has been flattened.
`Id.at 89-90. The Examiner was not persuaded that the amendment was sufficient
`
`and stated in an Advisory Action that “Anderson teaches that the pack wire (Fig. 2,
`
`G1A or G1B) needs to be flattened in order to accommodate the fingers (Fig. 1,
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`7).” Id.at 75- 77. The applicant responded by further amending the claim to recite
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`“shaping the flat wire pack into a hollow cylindrical shape” and arguing that “it is
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`the ‘wire pack’ itself that is flat in shape and it is this flat form, generally
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`analogous to a sheet, that is thereafter shaped into a hollow cylinder.” Id.at 62,
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`71-72. The application was then allowed following a Request for Continued
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`Examination to obtain entry of the amendment. Id., 44, 54.
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`In view of the foregoing, Petitioner submits that, under the broadest
`
`reasonable interpretation used in this proceeding, the ordinary meaning of “the
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`wire pack being flat” does not require the wire pack to be perfectly flat. As noted
`
`by the applicant during prosecution, the ’501 patent describes a helix that has been
`
`flattened, and that a flat form is like a sheet. A flattened helix is not perfectly flat
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`and it is further noted that the wire has a three dimensional shape with a cross-
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`sectional thickness that overlaps in places in the helical shape. Ex. 1002, ¶53.
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`While “flat” is believed to be a subjective term not well defined by the ’501
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`patent, Petitioner respectfully submits that one of ordinary skill in the art would
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`understand the broadest reasonable interpretation of a “flat form, generally
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`analogous to a sheet” (which is the construction argues by the applicant as
`
`described above) includes a shape that has a thickness less than a width dimension.
`
`See also id., ¶¶52-53.
`
`VIII. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY
`
`Pre-AIA Section 103(a) of the United States patent laws provides that a
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`“patent may not be obtained though the invention is not identically disclosed or
`
`described as set forth in section 102, if the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person having
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`ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a).
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`The Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
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`(2007) (hereinafter “KSR”) sets forth the standard for determining obviousness
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`under 35 U.S.C. § 103. The obviousness inquiry is resolved based on an analysis
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`of several factual inquiries, as set forth in Graham v. John Deere Co. of Kansas
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`City, 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2)
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`differences between the prior art and the claims at issue; (3) the level of ordinary
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`skill in the pertinent art; and (4) evaluation of any relevant secondary
`
`considerations. The Court found that a rigid application of the “teaching,
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`suggestion, and motivation” test was “incompatible with [Supreme Court]
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`precedents.” KSR, 550 U.S. at 405.
`
`The Court emphasized that an “expansive and flexible approach” should be
`
`used when determining obviousness. Id., 415. The Court set forth several
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`rationales and principles, including the following: (1) if a work is available in one
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`field of endeavor, and design incentives and other market forces can prompt
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`variations of it (either in the same field or a different one), and a person of ordinary
`
`skill can implement a predictable variation, the variation is obvious; (2) if a
`
`technique has been used to improve one device, and a person of ordinary skill in
`
`the art would recognize that it would improve similar devices in the same way,
`
`using the technique is obvious unless its application is beyond his or her skill; (3)
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`the combination of familiar elements according to known methods is likely to be
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`
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`obvious when it does no more than yield predictable results; (4) if the improvement
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`is nothing more than the predictable use of prior art elements according to their
`
`established functions, it is likely obvious, among others. Id., 416-17.
`
`The Court in KSR also recognized that “[o]ften, it will be necessary for a
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`court to look to interrelated teachings of multiple patents; the effects of demands
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`known to the design community or present in the marketplace; and the background
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`knowledge possessed by a person having ordinary skill in the art, all in order to
`
`determine whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” Id., 418. And the Court cautioned that
`
`“the analysis need not seek out precise teachings directed to the specific subject
`
`matter of the challenged claim, for a court can take account of the inferences and
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`creative steps that a person of ordinary skill in the art would employ.” Id. The
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`Court also recognized that “[c]ommon sense teaches . . . that familiar items may
`
`have obvious uses beyond their primary purposes, and in many cases a person of
`
`ordinary skill will be able to fit the teachings of multiple patents together like
`
`pieces of a puzzle.” Id., 420. And the Court further recognized that “[a] person of
`
`ordinary skill is also a person of ordinary creativity, not an automaton.” Id., 421.
`
`A.
`Ground 1: Claims 1-8, 10, 11, 14-20, 22 and 23 are unpatentable
`under pre-AIA 35 U.S.C. § 103 as obvious over Sadier in view of Rosler.
`
`Claims 1-8, 10, 11, 14-20, 22 and 23 are unpatentable under pre-AIA 35
`
`U.S.C. § 103 as obvious over Sadier in view of Rosler.
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`The following discussion is fully supported by the Declaration of Dr. Gerald
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`Micklow. Ex. 1002, ¶¶63-98.
`
`1.
`
`Claim 1
`
`Claim 1[a]
`
`A method of forming a stator core assembly for an electric
`machine comprising:
`
`Sadier discloses a method of forming a stator core assembly for an electric
`
`
`
`machine. For example, Sadier is titled: “Process for winding a wound stator of an
`
`electric rotating machine.” See also, Ex. 1004, Abstract (“A wound stator of an
`
`electric rotating machine”), 2:4-5 (“the object of the present invention is a wound
`
`stator of an electric rotating machine.”), Figure 3 (illustrating a stator core
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`assembly); and Ex. 1002, ¶63.
`
`Claim 1[b]
`
`providing a stator core having a plurality of radially extending
`slots;
`
`Sadier discloses “a three-phase alternator stator, formed by a stack of
`
`
`
`annular sheets 4 with slots 5 opened toward the axis and toward end faces 6 which
`
`receive the three-phase windings[.]” Ex. 1004, 5:62-65. As supported by Dr.
`
`Micklow’s Declaration, the stack of annular sheets 4 is a stator core. Ex. 1002, ¶64
`
`The stator core 4 with plurality of radially extending slots is illustrated in Sadier’s
`
`Figure 4:
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`
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`Petition for Inter Partes Review of U.S. Patent No. 7,143,501
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`
`
`
`Claim 1[c]
`
`forming a wire pack having a plurality of continuous electrical
`wires, the wire pack being flat;
`
`Sadier discloses a continuous wire 17 fed by the feeding means 16 from an
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`
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`unwinding means. Ex. 1004, 7:24-26. The wire 17 is shaped into a zig zag pattern
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`on the endless chain 18 using the shaping rollers 31 to provide the wire sections