DCT

2:17-cv-07681

Intellectual Ventures II LLC v. Toyota Motor Corp

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-07681, C.D. Cal., 10/20/2017
  • Venue Allegations: Venue is alleged to be proper as Defendants maintain a regular and established place of business in the district and have committed alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that various Toyota automotive components, including power steering units, water pumps, and hybrid transaxles, infringe five patents related to the construction, encapsulation, and cooling of electric motors.
  • Technical Context: The technology concerns methods for manufacturing and cooling electric motors, particularly through the use of injection-molded thermoplastics to encapsulate components, which can improve performance, reduce manufacturing costs, and enhance thermal management.
  • Key Procedural History: Subsequent to the complaint's filing, Inter Partes Review (IPR) proceedings were initiated against all five patents-in-suit. These proceedings resulted in the cancellation or disclaimer of all asserted claims for four of the five patents (’944, ’952, ’200, ’348) and all but one of the asserted claims for the fifth patent (’509). This post-filing history suggests the scope of the dispute has been substantially narrowed to a single surviving asserted claim.

Case Timeline

Date Event
1999-07-29 U.S. Patent No. 7,154,200 Priority Date
1999-12-17 U.S. Patent No. 7,067,944 Priority Date
2001-03-02 U.S. Patent No. 7,067,952 Priority Date
2006-06-27 U.S. Patent No. 7,067,944 Issued
2006-06-27 U.S. Patent No. 7,067,952 Issued
2006-07-19 U.S. Patent No. 7,683,509 Application Filed
2006-07-19 U.S. Patent No. 7,928,348 Application Filed
2006-12-26 U.S. Patent No. 7,154,200 Issued
2010-03-23 U.S. Patent No. 7,683,509 Issued
2011-04-19 U.S. Patent No. 7,928,348 Issued
2016-01-01 Earliest Alleged Product Launch (2016 Lexus ES)
2017-10-20 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,067,944 - “Motor with encapsulated stator and method of making same,” issued June 27, 2006

The Invention Explained

  • Problem Addressed: The patent’s background describes conventional high-speed spindle motors (e.g., for computer disc drives) as being composed of numerous separate, precisely machined parts. This construction leads to "stack up tolerances" which reduce performance, increases manufacturing costs, and makes heat dissipation difficult ('944 Patent, col. 1:57-2:18, col. 3:1-4).
  • The Patented Solution: The invention proposes encapsulating the stator windings with an injection-molded thermoplastic material. This process creates a single, rigid assembly that can also lock the stator directly to the motor's baseplate, reducing the number of components, improving dimensional stability, and allowing for the use of materials with enhanced thermal conductivity to improve cooling ('944 Patent, Abstract; col. 4:11-23).
  • Technical Importance: This manufacturing approach was intended to enable the production of smaller, cheaper, and higher-performance electric motors, particularly for applications like hard drives where precise alignment and vibration control are critical ('944 Patent, col. 2:50-54).

Key Claims at a Glance

  • The complaint asserts independent claims 3, 9, and 11 ('944 Patent, Claims 3, 9, 11; Compl. ¶26). An Inter Partes Review Certificate disclaimed all three asserted claims subsequent to the filing of the complaint (US 7,067,944 K1).
  • The essential elements of asserted independent claim 3 include:
    • A core having poles and windings forming a pole assembly.
    • A shaft that is spaced from the pole assembly and not in direct contact.
    • A thermoplastic material that is secured to the shaft and substantially encapsulates the pole assembly.
    • The thermoplastic material joins the pole assembly to the shaft in the space between them, filling that space so that the windings, core, and shaft are rigidly fixed together.
  • The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶26).

U.S. Patent No. 7,067,952 - “Stator assembly made from a molded web of core segments and motor using same,” issued June 27, 2006

The Invention Explained

  • Problem Addressed: The patent identifies drawbacks in conventional stator manufacturing, including the difficulty of tightly winding wire on inwardly facing poles in a cramped circular space, and the significant material waste from stamping circular laminations from rolled steel sheets ('952 Patent, col. 2:19-28, col. 2:42-45).
  • The Patented Solution: The invention discloses a method where a stator is built from discrete arc-shaped segments. These segments are linked together by a molded material (a "phase change material" such as thermoplastic) into a continuous, flexible strip. This linear strip can be easily and densely wound with wire and then formed into a final circular stator assembly, which is then typically encapsulated in a monolithic body ('952 Patent, Abstract; col. 4:1-24).
  • Technical Importance: This manufacturing method sought to greatly increase the packing density of wire windings, which increases motor power and efficiency, while also reducing the amount of wasted steel compared to conventional stamping methods ('952 Patent, col. 11:1-8, col. 11:21-31).

Key Claims at a Glance

  • The complaint asserts independent claims 10 and 12 ('952 Patent, Claims 10, 12; Compl. ¶33). An Inter Partes Review Certificate disclaimed both asserted claims subsequent to the filing of the complaint (US 7,067,952 K1).
  • The essential elements of asserted independent claim 10 include:
    • A plurality of discrete stator segments, each at least partially encased with a phase change material.
    • The phase change material also comprises a bridge between adjacent segments to link them into a continuous strip.
    • The bridge is formed by interconnecting two mating sections formed from the phase change material.
    • The linked stator segments are arranged and secured together to form the stator assembly.
  • The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶33).

U.S. Patent No. 7,154,200 - “Motor,” issued December 26, 2006

  • Technology Synopsis: This patent describes a motor, particularly for hard disk drives, constructed with a monolithic body of thermoplastic material that substantially encapsulates components such as the stator and at least one bearing. This design aims to improve shock resistance and ensure precise alignment of motor components by creating a single, integrated structure ('200 Patent, Abstract; Compl. ¶15).
  • Asserted Claims: 1, 2, 4, 6, and 7. All asserted claims were cancelled in a subsequent Inter Partes Review (US 7,154,200 K1; Compl. ¶40).
  • Accused Features: The complaint accuses the general construction of the Exemplary Toyota Products' electric motors (Compl. ¶42).

U.S. Patent No. 7,683,509 - “Electromagnetic device with open, non-linear heat transfer system,” issued March 23, 2010

  • Technology Synopsis: This patent discloses an electromagnetic device with an integrated cooling system. The invention involves encapsulating the electrical conductors within a monolithic body of phase change material that also substantially encapsulates a liquid-tight coolant channel, such as a heat pipe, to create an open, non-linear system for transferring heat away from the device ('509 Patent, Abstract; Compl. ¶16).
  • Asserted Claims: 1, 2, 14, and 15. Claims 1, 2, and 14 were cancelled in a subsequent Inter Partes Review; claim 15 was not cancelled (US 7,683,509 K1; Compl. ¶47).
  • Accused Features: The complaint accuses the integrated cooling systems within the electric motors of the Exemplary Toyota Products (Compl. ¶49).

U.S. Patent No. 7,928,348 - “Electromagnetic device with integrated fluid flow path,” issued April 19, 2011

  • Technology Synopsis: This patent describes an electromagnetic device with an integrated fluid path for cooling. The invention involves a monolithic body that encapsulates the electrical conductors and also defines an integrated pathway through which a heat transfer fluid can flow, allowing for direct cooling of the device ('348 Patent, Abstract; Compl. ¶17).
  • Asserted Claims: 24, 25, 26, and 27. All asserted claims were cancelled in a subsequent Inter Partes Review (US 7,928,348 K1; Compl. ¶54).
  • Accused Features: The complaint accuses the fluid cooling paths integrated into the electric motors of the Exemplary Toyota Products (Compl. ¶56).

III. The Accused Instrumentality

Product Identification

The accused products are identified as the "Exemplary Toyota Products," which include, without limitation, the 2016 Lexus ES power steering unit, various Toyota water pumps identified by part number (e.g., 161A0-39025), and the Toyota Hybrid Transaxle Assembly (Compl. ¶19).

Functionality and Market Context

These products are components used in Toyota and Lexus vehicles that rely on electric motors for their primary function. For example, the power steering unit uses an electric motor to provide steering assistance, the water pumps use electric motors to circulate engine coolant, and the hybrid transaxle assembly incorporates electric motors for propulsion. The complaint alleges that these commercially significant products contain electric motors that incorporate the patented technologies related to stator encapsulation and integrated cooling (Compl. ¶19, ¶22).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references but does not attach Exhibits 6-31, which are described as claim charts comparing the patents-in-suit to the accused products (Compl. ¶20-21). As these exhibits are not provided, the infringement theory is summarized below in prose based on the complaint's narrative allegations.

'944 Patent Infringement Allegations

  • Narrative Summary: The complaint alleges that Toyota's design, manufacture, and sale of the Exemplary Toyota Products directly infringes at least claims 3, 9, and 11 of the ’944 Patent (Compl. ¶26-27). The core of this allegation is that the electric motors within these products practice the claimed technology of using an injection-molded material to encapsulate and structurally integrate the stator assembly (Compl. ¶28). The complaint does not provide specific factual allegations mapping individual product features to the elements of the asserted claims.
  • Identified Points of Contention:
    • Scope Questions: A central question would have been whether the scope of the claims, developed in the context of small hard drive motors, could read on the structure and scale of larger automotive motors. For example, does the specific method of "joining the pole assembly to the shaft" via thermoplastic in claim 3 map onto the construction of an automotive water pump motor?
    • Technical Questions: The analysis would have required a factual determination of how the accused Toyota motors are constructed. A key question is what evidence exists that they use a thermoplastic material as the primary structural element fixing the stator, core, and shaft together as a rigid unit, as required by claim 3.

'952 Patent Infringement Allegations

  • Narrative Summary: The complaint alleges that Toyota infringes at least claims 10 and 12 of the ’952 Patent by making and selling the Exemplary Toyota Products (Compl. ¶33-34). The infringement theory suggests that the stators within the accused motors are manufactured using the patented process of linking discrete, pre-encased segments into a strip before forming the final assembly (Compl. ¶35).
  • Identified Points of Contention:
    • Factual Questions: The core of the dispute would have been a factual inquiry into Toyota's manufacturing processes. What evidence could be presented to demonstrate that Toyota's stators are made from "discrete stator segments" linked by a "bridge" of molded material, as required by claim 10, rather than by more conventional methods like winding a monolithic stamped core?
    • Scope Questions: A key legal question would concern the interpretation of the phrase "bridge is formed by interconnecting two mating sections." This language suggests a specific multi-stage molding process, and infringement would depend on whether Toyota's manufacturing method, if discovered, falls within the scope of that claim limitation.

V. Key Claim Terms for Construction

For the ’944 Patent (based on asserted claim 3):

  • The Term: "a thermoplastic material... joining the pole assembly to the shaft"
  • Context and Importance: This phrase is critical as it defines the core structural innovation of claim 3: using the encapsulant itself as the mechanical link between the stationary electromagnetic components (pole assembly/core) and the rotating mechanical component (shaft). The infringement analysis would turn on whether the accused motors utilize the thermoplastic in this specific structural, load-bearing manner.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification's broader goal is to create a rigid, monolithic structure, stating the thermoplastic material "lock[s] the stator assembly to the baseplate" ('944 Patent, col. 4:26-28), which might support an argument for a less direct form of joining.
    • Evidence for a Narrower Interpretation: The claim language is highly specific, requiring the material to join the components "in the space between the pole assembly and the shaft, filling in the space between them such that the windings, core and shaft are rigidly fixed together" ('944 Patent, Claim 3). This language, along with figures like FIG. 19 showing a direct encapsulation of both stator and shaft, suggests a narrow interpretation where the thermoplastic is the primary and direct joining agent.

For the ’952 Patent (based on asserted claim 10):

  • The Term: "bridge is formed by interconnecting two mating sections"
  • Context and Importance: This term defines the specific manufacturing technique for linking the discrete stator segments. Infringement of claim 10 requires not just any link, but one formed in this particular manner. Practitioners may focus on this term because it points to a very specific multi-shot injection molding process, which would be a key factual question for discovery.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The abstract describes the invention more generally as "stator arc segments... linked together by a phase change material" ('952 Patent, Abstract), which could be argued to encompass any form of molded linkage.
    • Evidence for a Narrower Interpretation: The detailed description specifies a process for creating a "continuous strip of segments... by linking the webbing from successive molding operation[s]," where plastic from one cycle can "mechanically lock with or... re-melt, the webbing from the prior cycle" ('952 Patent, col. 5:36-44). This provides strong support for a narrower construction requiring a multi-step molding process that creates interconnected "mating sections."

VI. Other Allegations

Indirect Infringement

The complaint does not plead any specific facts to support a claim for indirect infringement, such as knowledge of the patents or acts intended to encourage infringement by others.

Willful Infringement

The complaint does not allege that Defendants had pre-suit knowledge of the patents-in-suit or engaged in conduct that was objectively reckless, which are typically foundational elements for a willfulness claim. The prayer for relief requests a finding of an "exceptional case" for attorney's fees but pleads no supporting facts (Compl. p. 10).

VII. Analyst’s Conclusion: Key Questions for the Case

Given the extensive cancellation of asserted claims in post-filing IPR proceedings, the central questions for the litigation are fundamentally altered from those presented at the time of filing.

  • A primary issue is one of case viability: With all asserted claims from four patents and most from the fifth now invalid, the core question is whether the infringement allegation for the single surviving claim—claim 15 of U.S. Patent No. 7,683,509—is sufficiently strong to sustain the remainder of the litigation.
  • A key evidentiary question will be one of technical proof: For the sole surviving claim, which relates to an integrated cooling system, what specific evidence can Plaintiff adduce to show that the accused Toyota components contain a "liquid-tight coolant channel... substantially encapsulated within the body of phase change material" that meets all limitations of the claim?
  • A final question will be one of damages scope: Assuming infringement of the single surviving claim could be proven, a central issue would be how to apportion damages. The court would have to determine what portion, if any, of the value of complex automotive components like a hybrid transaxle is attributable to the specific integrated cooling feature recited in one claim of one patent.