Trials@uspto.gov
`571-272-7822
`
`
`Paper 19
`Date: February 3, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`MICHIGAN MOTOR TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2020-00455
`Patent 7,116,081 B2
`____________
`
`Before NEIL T. POWELL, BARBARA A. PARVIS, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`PRELIMINARY GUIDANCE
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`

`

`
`
`IPR2020-00455
`Patent 7,116,081 B2
`
`I. INTRODUCTION
`
`On July 30, 2020, we instituted trial as to claims 1–20 (“the
`
`challenged claims”) of U.S. Patent No. 7,116,081 B2 (Ex. 1001, “the ’081
`patent”). Paper 10 (“Decision on Institution” or “Inst. Dec.”). After
`institution, Patent Owner, Michigan Motor Technologies LLC, filed a
`Motion to Amend. Paper 16 (“Motion” or “Mot.”). In the Motion, Patent
`Owner proposes substitute claims 21, 22, and 23 for challenged claims 1, 10,
`and 17 of the ’081 patent. Mot. 1–2; see also id. at 1 (stating that the Motion
`is “contingent on the outcome of this trial”). Petitioner, Volkswagen Group
`of America, Inc., filed an Opposition to the Motion. Paper 18 (“Opposition”
`or “Opp.”).
`In the Motion, Patent Owner requests that we provide Preliminary
`Guidance concerning the Motion in accordance with the Board’s pilot
`program regarding motion to amend practice and procedures. Mot. 1; see
`also Notice Regarding a New Pilot Program Concerning Motion to Amend
`Practice and Procedures in Trial Proceedings Under the America Invents Act
`Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9,497 (Mar. 15,
`2019) (providing a patent owner with the option to receive preliminary
`guidance from the Board on its motion to amend) (“Notice”). We have
`considered Patent Owner’s Motion and Petitioner’s Opposition.
`In this Preliminary Guidance, we provide information indicating our
`preliminary, non-binding views on whether Patent Owner has shown a
`reasonable likelihood that it has satisfied the statutory and regulatory
`requirements associated with filing a motion to amend in a post-grant review
`and whether Petitioner (or the record) establishes a reasonable likelihood
`that the substitute claim is unpatentable. See 35 U.S.C. § 316(d); 37 C.F.R.
`
`2
`
`

`

`IPR2020-00455
`Patent 7,116,081 B2
`
`§ 42.121; Lectrosonics, Inc. v Zaxcom, Inc., IPR2018-01129, Paper 15
`(PTAB Feb. 25, 2019) (precedential); see also Notice, 84 Fed. Reg. at 9,497
`(“The preliminary guidance . . . provides preliminary, non binding guidance
`from the Board to the parties about the [motion to amend].”).
`For purposes of this Preliminary Guidance, we focus on the proposed
`substitute claims, and specifically on the amendments proposed in the
`Motion. See Notice, 84 Fed. Reg. at 9,497. We do not address the
`patentability of the originally challenged claims. Id. Moreover, in
`formulating our preliminary views on the Motion and Opposition, we have
`not considered the parties’ other substantive papers on the underlying merits
`of Petitioner’s challenges. We have considered, however, our Decision on
`Institution in determining whether the amendments “respond to a ground of
`unpatentability involved in the trial.” Lectrosonics, Paper 15 at 5. We
`emphasize that the views expressed in this Preliminary Guidance are subject
`to change upon consideration of the complete record, including any revision
`to the Motion filed by Patent Owner. Thus, this Preliminary Guidance is not
`binding on the Board when rendering a final written decision. See Notice, 84
`Fed. Reg. at 9,500.
`
`II. PRELIMINARY GUIDANCE
`
`A. Statutory and Regulatory Requirements
`For the reasons discussed below, at this stage of the proceeding, and
`based on the current record, it appears that Patent Owner has shown a
`reasonable likelihood that it has satisfied the statutory and regulatory
`requirements associated with filing a motion to amend.
`
`3
`
`

`

`IPR2020-00455
`Patent 7,116,081 B2
`
`
`1. Reasonable Number of Substitute Claims
`
`Does Patent Owner propose a reasonable number of substitute
`claims? (35 U.S.C. § 316(d)(1)(B))
`Yes. Patent Owner proposes no more than one substitute claim for each of
`challenged claims 1, 10, and 17 of the ’081 patent. Mot. 1–2. Petitioner
`does not argue otherwise. See generally Opp.
`
`2. Respond to Ground of Unpatentability
`
`Does the Motion respond to a ground of unpatentability involved in
`the trial? (37 C.F.R. § 42.121(a)(2)(i))
`Yes. Patent Owner responds to the grounds of unpatentability at pages 22–
`23 of the Motion, asserting that proposed substitute claims 21, 22, and 23
`add features to distinguish the claims over the prior art asserted in the
`instituted grounds. Petitioner does not argue otherwise. See generally Opp.
`
`3. Scope of Amended Claims
`
`Does the amendment seek to enlarge the scope of the claims?
`(35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`
`No. Proposed substitute claims 21, 22, and 23 include all of the language
`of corresponding original claims 1, 10, and 17, as well as additional
`narrowing limitations. See Mot. 24–25 (Claims App.). Petitioner does not
`argue otherwise. See generally Opp.
`
`4. New Matter
`
`Does the amendment seek to add new subject matter? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`No. On this record, it appears that Patent Owner has identified adequate
`written description support for proposed substitute claims 21, 22, and 23 in
`the original disclosure of U.S. Application No. 10/427,828, filed May 1,
`2003 (“the ’828 application”). See Mot. 3–21.
`
`4
`
`

`

`IPR2020-00455
`Patent 7,116,081 B2
`
`
`Proposed substitute claim 21 recites, in relevant part, “wherein said at least
`one rotor speed limit includes at least a first rotor speed limit that is set to
`limit generation of excess heat by the alternator before the alternator
`temperature exceeds the temperature limit.” Id. at 24 (Claims App.).
`Proposed substitute claims 22 and 23 recite similar limitations. Id. at 25.
`Patent Owner asserts that there is written description support for these
`limitations in paragraphs 8, 9, 14–16, and 20–33 of the ’828 application.
`Id. at 11–13, 17, 21 (citing Ex. 1002, 8–16 (¶¶ 8, 9, 14–16, 20–33)).
`Petitioner does not argue otherwise. See generally Opp.
`The Specification of the ’828 application describes, in relevant part, that
`“a first rotor speed limit may be set to limit generation of excess heat
`production by the alternator before the alternator temperature exceeds the
`maximum temperature limit 116.” Ex. 1002, 15 (¶ 29). Accordingly, at
`this stage in the proceeding, based on the current record, it appears that
`Patent Owner has identified adequate written description support for the
`new limitation in proposed substitute claims 21, 22, and 23 such that the
`amendment does not add new subject matter.
`
`
`B. Patentability
`For the reasons discussed below, at this stage of the proceeding, and
`based on the current record,1 it appears that Petitioner (or the record) has
`shown a reasonable likelihood that proposed substitute claims 21, 22, and 23
`are unpatentable.
`
`Does the record establish a reasonable likelihood that the proposed
`substitute claims are unpatentable?
`Yes. For purposes of this Preliminary Guidance and based on the
`current record, Petitioner (or the record) appears to have shown a
`reasonable likelihood that (1) proposed substitute claims 21 and 22
`would have been obvious over Yamashita (Ex. 1005), and (2) proposed
`
`
`1 We express no view on the patentability of original claims 1–20 in this
`Preliminary Guidance. Instead, we focus on limitations of proposed
`substitute claims 21, 22, and 23 in Patent Owner’s Motion to Amend.
`
`5
`
`

`

`IPR2020-00455
`Patent 7,116,081 B2
`
`
`substitute claim 23 would have been obvious over Yamashita and
`Mlakar (Ex. 1008).
`We note that Patent Owner will have the opportunity to respond to the
`evidence cited in Petitioner’s Opposition and this Preliminary Guidance
`in a reply or in a revised motion in this proceeding. We also note that
`Petitioner will have an opportunity to address, in a sur-reply or further
`briefing on a Revised Motion, our comments in this Preliminary
`Guidance.
`Proposed substitute claim 21
`a) Limitations in Common with Original Claim 1
`Proposed substitute claim 21 includes all of the limitations recited in
`original claim 1. See Mot. 24 (Claims App.). Petitioner argues that
`Yamashita discloses or suggests these limitations. See Opp. 7–14.2
`Petitioner argued substantially similar teachings and reasoning in the
`Petition against original claim 1. Compare id., with Pet. 19–28. At this
`stage in the proceeding, and for similar reasons to those set forth in the
`Decision on Institution, Petitioner’s contentions appear sufficient to
`show a reasonable likelihood that Yamashita discloses or suggests the
`limitations recited in proposed substitute claim 21 that are in common
`with limitations recited in original claim 1. See Inst. Dec. 16–26.
`b) New Limitation
`Proposed substitute claim 21 recites, in relevant part, “wherein said at
`least one rotor speed limit includes at least a first rotor speed limit that
`is set to limit generation of excess heat by the alternator before the
`alternator temperature exceeds the temperature limit.” Mot. 24 (Claims
`App.). Petitioner argues that Yamashita discloses or suggests this
`limitation. Opp. 14 (citing Ex. 1019 ¶ 81). Petitioner asserts that
`Yamashita discloses “limit[ing] the field current to the alternator based
`
`2 We note that Petitioner provides claim construction arguments on pages 3–
`7 of the Opposition. These arguments pertain to limitations recited in
`original claims 1, 10, and 17, and do not address the new limitations recited
`in proposed substitute claims 21, 22, and 23. Opp. 3–7. These arguments,
`which appear to rehash the claim construction arguments set forth in the
`Petition (compare id. with Pet. 8–16), were already addressed in the
`Decision on Institution (see Inst. Dec. 9–15), and our analysis will not be
`repeated here.
`
`6
`
`

`

`IPR2020-00455
`Patent 7,116,081 B2
`
`
`on a specific, preset alternator speed range (e.g., ‘greater than 1000 rpm
`and less than 2000 rpm’) that ‘prevent[s] the occurrence of thermal
`damage due to an increase in temperature.’” Id. (quoting Ex. 1005
`¶¶ 25, 32 and citing Pet. 27; Ex. 1003, ¶¶ 104–105; Ex. 1019 ¶ 82).
`Petitioner asserts that a person of ordinary skill in the art (POSA)
`“would have understood that the lower bound of this range (1000 rpm)
`is a first rotor speed limit, and that this lower bound is set before the
`alternator reaches a critical temperature limit.” Id. at 14–15 (citing
`Ex. 1019 ¶ 82). Petitioner asserts that, “[t]o prevent the occurrence of
`thermal damage, a POSA would have understood that this rotor speed
`range, including the lower 1000 rpm boundary (i.e., a first rotor speed
`limit), is set before the alternator temperature exceeds a temperature
`limit.” Id. at 15 (citing Ex. 1019 ¶¶ 82–83).
`Petitioner argues that “it would have been obvious to preemptively set
`the first rotor speed limit to a value that results in a reduction in the
`alternator field current that prevents thermal damage, as taught in
`Yamashita.” Id. at 16 (citing Ex. 1005 ¶ 32; Ex. 1019 ¶ 84). Petitioner
`asserts that, “if the preset rotor speed limit is not set before the
`alternator’s maximum temperature limit is exceeded, then the rotor
`speed limit becomes superfluous and has no function because thermal
`damage would occur.” Id. (citing Ex. 1019 ¶ 84).
`Yamashita states “the amount of heating of the field coil 16, and the
`like, is reduced accompanying the limiting of the duty ratio Fduty,
`reducing the maximum value of the temperature of the alternator 11.”
`Ex. 1005 ¶ 32. Yamashita further states, therefore, “it is possible to
`prevent the occurrence of thermal damage due to an increase in
`temperature.” Id.
`At this stage in the proceeding, based on the current record, it appears
`that Petitioner’s contentions are sufficient to show a reasonable
`likelihood that Yamashita discloses or suggests the new limitation
`recited in proposed substitute claim 21. Patent Owner’s assertion that
`Yamashita does not disclose or suggest the new limitation (Mot. 22)
`does not persuade us otherwise. We find no evidence or argument on the
`present record with respect to the new limitation that persuasively rebuts
`Petitioner’s arguments. We reiterate that Patent Owner will have the
`opportunity to respond to the evidence cited in Petitioner’s Opposition
`in a reply or in a revised motion in this proceeding.
`
`7
`
`

`

`IPR2020-00455
`Patent 7,116,081 B2
`
`
`Additionally, Petitioner’s rationale for the selection, “it would have
`been obvious to a POSA to preemptively set the first rotor speed limit to
`a value that results in a reduction in the alternator field current that
`prevents thermal damage” (Opp. 16), appears to be sufficient to support
`the asserted selection. As Petitioner’s expert explains, [i]ndeed, if the
`pre-set first rotor speed limit is not set before the alternator’s maximum
`temperature limit is exceeded, then the first rotor speed limit becomes
`superfluous and has no function because thermal damage would occur.”
`Ex. 1019 ¶ 84.
`Accordingly, on this record, it appears that Petitioner (or the record) has
`established a reasonable likelihood that proposed substitute claim 21
`would have been obvious over Yamashita.
`For proposed substitute claim 22:
`a) Limitations in Common with Original Claim 10
`Proposed substitute claim 22 includes all of the limitations recited in
`original claim 10. See Mot. 24–25 (Claims App.). Petitioner argues that
`Yamashita discloses or suggests these limitations, and relies on
`teachings and reasoning similar to that asserted in the Petition against
`original claim 10. Compare Opp. 17–19, with Pet. 28–31. At this stage
`in the proceeding, and for similar reasons to those set forth in the
`Decision on Institution, Petitioner’s contentions appear sufficient to
`show a reasonable likelihood that Yamashita discloses or suggests the
`limitations recited in proposed substitute claim 22 that are in common
`with limitations recited original claim 10. See Inst. Dec. 26–27.
`b) New Limitation
`Proposed substitute claim 22 recites, in relevant part, “wherein said
`pre-determined rotor speed limit is set to limit
`generation of excess heat by the alternator before the
`alternator temperature exceeds the pre-determined
`alternator temperature limit.” Mot. 25 (Claims App.). Petitioner
`argues that Yamashita discloses or suggests this limitation for the same
`reasons argued with respect to the similar limitation recited in proposed
`substitute claim 21. See Opp. 19. At this stage in the proceeding, and for
`reasons similar to those discussed above with respect to proposed
`substitute claim 21, Petitioner’s contentions appear sufficient to show a
`
`8
`
`

`

`IPR2020-00455
`Patent 7,116,081 B2
`
`
`reasonable likelihood that Yamashita discloses or suggests the new
`limitation recited in proposed substitute claim 22.
`Accordingly, based on the current record, it appears that Petitioner (or
`the record) has established a reasonable likelihood that proposed
`substitute claim 22 would have been obvious over Yamashita.
`For proposed substitute claim 23:
`a) Limitations in Common with Original Claim 17
`Proposed substitute claim 23 includes all of the limitations recited in
`original claim 17. See Mot. 25 (Claims App.). Petitioner argues that the
`combination of Yamashita and Mlakar discloses or suggests these
`limitations. See Opp. 19–25. Petitioner argued substantially similar
`teachings and reasoning against original claim 17 in the Petition.
`Compare id., with Pet. 50–58. At this stage in the proceeding, and for
`reasons similar to those set forth in the Decision on Institution,
`Petitioner’s contentions appear sufficient to show a reasonable
`likelihood that Yamashita discloses or suggests the limitations recited in
`proposed substitute claim 21 that are in common with limitations recited
`original claim 17. See Inst. Dec. 36–38.
`b) New Limitation
`Proposed substitute claim 23 recites, in relevant part, “wherein said
`pre-determined rotor speed limit is set to limit
`generation of excess heat by the alternator before the
`alternator temperature exceeds the pre-determined
`alternator temperature limit.” Mot. 25 (Claims App.). Petitioner
`argues that Yamashita discloses or suggests this limitation for the same
`reasons argued with respect to the similar limitation in proposed
`substitute claim 21. See Opp. 25. At this stage in the proceeding, and for
`reasons similar to those discussed above with respect to proposed
`substitute claim 21, Petitioner’s contentions appear sufficient to show a
`reasonable likelihood that Yamashita discloses or suggests the new
`limitation recited in proposed substitute claim 23.
`Accordingly, based on the current record, it appears that Petitioner (or
`the record) has established a reasonable likelihood that proposed
`substitute claim 23 would have been obvious over Yamashita and
`Mlakar.
`
`
`
`
`
`9
`
`

`

`IPR2020-00455
`Patent 7,116,081 B2
`
`For PETITIONER:
`Michael Specht
`Jason Fitzsimmons
`Kyle Conklin
`Daniel Yonan
`Trevor O’Neill
`STERNE KESSLER GOLDSTEIN & FOX PLLC
`mspecht-ptab@sternekessler.com
`jfitzsimmons-ptab@sternekessler.com
`kconklin-ptab@sternekessler.com
`dyonan-ptab@sternekessler.com
`toneill-ptab@sternekessler.com
`
`For PATENT OWNER:
`Timothy Devlin
`DEVLIN LAW FIRM
`Td-ptab@devlinlawfirm.com
`
`
`10
`
`