DCT

1:17-cv-00296

Intellectual Ventures II LLC v. Bayerische Motoren Werke AG

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00296, D. Del., 03/20/2017
  • Venue Allegations: Venue is alleged to be proper based on Defendant BMW Manufacturing Co., LLC being a Delaware corporation and on all Defendants allegedly committing infringing acts, regularly conducting business, and deriving substantial revenue within the District of Delaware.
  • Core Dispute: Plaintiff alleges that Defendant’s BMW Turbo Actuator infringes two patents related to the design and manufacture of electric motors using encapsulated stators.
  • Technical Context: The technology concerns methods for manufacturing high-speed electric spindle motors, such as those used in computer hard drives, by encapsulating motor components in thermoplastic to improve performance, cost, and reliability.
  • Key Procedural History: The complaint asserts claims from two patents. Subsequent to the filing of the complaint, all asserted claims of both patents have been either cancelled in Inter Partes Review (IPR) proceedings or statutorily disclaimed by the patent owner. Specifically, an IPR certificate for the ’944 patent confirms that asserted claims 3, 9, and 11 have been disclaimed. An IPR certificate for the ’200 patent confirms that asserted claims 1, 2, 4, 6, and 7 have been cancelled. These post-filing events are dispositive of the claims as originally pleaded.

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
2006-06-27 U.S. Patent No. 7,067,944 Issues
2006-12-26 U.S. Patent No. 7,154,200 Issues
2017-03-20 Complaint Filed
2019-07-12 IPR Certificate issues for '200 Patent, cancelling all asserted claims
2019-09-26 IPR Certificate issues for '944 Patent, confirming disclaimer of all asserted claims

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 section describes challenges with conventional high-speed spindle motors, including performance degradation from "stack up tolerances" between multiple components, high manufacturing costs, acoustic noise, and inefficient heat dissipation (’944 Patent, col. 1:52-col. 3:9).
  • The Patented Solution: The invention uses an injection-molded thermoplastic to encapsulate the stator windings. This plastic material is also used to form the motor's baseplate, thereby creating a single, rigid "monolithic body" that locks the components together, simplifies assembly, and improves dimensional stability (’944 Patent, Abstract; col. 4:22-30; Fig. 14). This unified construction is intended to enhance rigidity and provide a superior path for heat dissipation away from the motor windings (’944 Patent, col. 11:55-65).
  • Technical Importance: This manufacturing approach sought to create lower-cost, quieter, and more reliable high-speed motors by replacing complex, multi-part metal assemblies with a single, precisely molded structure that possesses improved thermal and vibration-dampening characteristics (’944 Patent, col. 8:37-57).

Key Claims at a Glance

  • The complaint asserts claims 3, 9, and 11, which depend on independent claims 1 and 10 (Compl. ¶20).
  • Independent Claim 1:
    • A motor comprising a baseplate and a stator assembly (with a core and windings).
    • An injection molded thermoplastic material encapsulates the windings and locks the stator assembly to the baseplate, with a space between them filled by the thermoplastic.
    • The baseplate itself is made of a thermoplastic material with a specified modulus of elasticity.
    • The baseplate and the winding encapsulation are formed as "one monolithic body" from the same thermoplastic material.
  • Independent Claim 10:
    • A motor comprising at least one conductor and at least one magnet.
    • A thermoplastic material substantially encapsulates the conductor.
    • The thermoplastic material also serves to locate and precisely position the conductor with respect to the magnet during motor operation.
  • The complaint reserves the right to assert additional claims (Compl. ¶20).

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

The Invention Explained

  • Problem Addressed: The patent identifies problems in high-speed motors related to differing coefficients of thermal expansion (CLTE) between metal components (like bearings) and other parts, which can cause stress, dimensional instability, and imprecise rotation at high operating temperatures (’200 Patent, col. 2:15-21). Other noted problems include vibration, outgassing, and the manufacturing complexities of multi-part assemblies (’200 Patent, col. 2:1-10).
  • The Patented Solution: The invention describes a motor where the stator is encapsulated in a body of thermoplastic material specifically chosen to have a CLTE that "contracts and expands at approximately the same rate as the one or more solid parts" it is in contact with, such as metal bearings or the stator core (’200 Patent, Abstract; col. 3:35-42). This matching of thermal properties is intended to maintain precise alignments and tolerances across the motor's operating temperature range, improving performance and longevity (’200 Patent, col. 8:31-41).
  • Technical Importance: By engineering the thermoplastic encapsulant to mimic the thermal behavior of the motor's metal components, the invention aimed to overcome a fundamental barrier to achieving higher speeds and greater data density in devices like hard drives, which are highly sensitive to thermal-induced mechanical variations (’200 Patent, col. 8:42-50).

Key Claims at a Glance

  • The complaint asserts claims 1, 2, 4, 6, and 7 (Compl. ¶27).
  • Independent Claim 1:
    • A motor comprising a stator substantially encapsulated within a body of thermoplastic material.
    • The motor includes one or more "solid parts" used within or near the body.
    • The thermoplastic material has a CLTE such that it "contracts and expands at approximately the same rate as the one or more solid parts."
  • The complaint reserves the right to assert additional claims (Compl. ¶27).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused product as the "BMW Turbo Actuator" (Compl. ¶13).

Functionality and Market Context

  • The complaint alleges that the BMW Turbo Actuator is an electric motor but provides no specific technical details about its construction, materials, or operation (Compl. ¶13). The complaint also makes no allegations regarding the product's commercial importance or market positioning.

IV. Analysis of Infringement Allegations

The complaint does not contain substantive infringement allegations in its main body. Instead, it states that the infringement theory is detailed in claim chart exhibits, which are incorporated by reference (Compl. ¶¶14-16, 22, 29). However, these exhibits (Exhibits 3-5) were not filed with the complaint. The narrative allegations are limited to conclusory statements that the accused product "practices, in whole or in material part, the technology claimed" by the patents-in-suit (Compl. ¶16).

Without the referenced claim charts, a detailed analysis of the infringement allegations is not possible. The primary technical questions would have centered on whether the BMW Turbo Actuator is constructed in a manner that meets the core limitations of the asserted claims.

  • For the ’944 Patent: The key question would be evidentiary: what proof exists that the accused actuator is built with a baseplate and stator encapsulation made from the same thermoplastic material and formed as "one monolithic body" as required by claim 1?
  • For the ’200 Patent: The key question would be both technical and definitional: what is the CLTE of the thermoplastic material used in the accused actuator, what are the "solid parts" it contacts, and is the expansion rate "approximately the same" as required by claim 1?

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

Term from ’944 Patent, Claim 1: "one monolithic body"

  • Context and Importance: This term is central to the structural identity of the claimed invention. Whether the accused product infringes claim 1 would depend on whether its baseplate and winding encapsulation are constructed as a single, structurally integrated unit, rather than as separate components merely joined together.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes a process where the baseplate is formed "at the same time the stator core and winding are encapsulated," suggesting a single, continuous manufacturing step creates the unified body (’944 Patent, col. 11:25-27). This could support an interpretation covering any structure formed in a single molding process.
  • Intrinsic Evidence for a Narrower Interpretation: Embodiments like Figure 14, where material 116 seamlessly forms both the baseplate 102 and the encapsulation for windings 111, could be used to argue for a narrower construction requiring a physically seamless and homogenous structure, as opposed to a mere joining of otherwise distinct parts with plastic.

Term from ’200 Patent, Claim 1: "contracts and expands at approximately the same rate"

  • Context and Importance: This functional language is the core of the invention claimed in the ’200 Patent. The infringement analysis hinges on the degree of similarity required between the thermal expansion rates of the thermoplastic and the relevant "solid parts." The term "approximately" is inherently imprecise and would likely be a primary focus of claim construction.
  • Intrinsic Evidence for a Broader Interpretation: The specification discloses a preferred range for the thermoplastic's CLTE of between "70% and 130% of the CLTE of the core of the stator" (’200 Patent, col. 14:33-35). A plaintiff could argue this disclosure defines the scope of "approximately," allowing for a relatively wide tolerance.
  • Intrinsic Evidence for a Narrower Interpretation: The patent also provides specific CLTE data for a preferred commercial material ("Konduit OTF 212-11") tested under standard ASTM methods (’200 Patent, col. 17:20-33). A defendant could argue that "approximately" should be construed more narrowly in light of these specific, real-world examples, requiring a much closer match than the 70-130% range might imply.

VI. Other Allegations

  • Willful Infringement: The complaint does not contain an explicit count for willful infringement or allege pre-suit knowledge by the Defendant. The prayer for relief requests that the case be declared "exceptional" for the purpose of recovering attorneys' fees under 35 U.S.C. § 285, but does not explicitly request enhanced damages for willful infringement under § 284 (Compl. p. 5, ¶(g)(i)).

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

This case presents a dispositive procedural question and, separately, a fundamental evidentiary challenge based on the complaint as filed.

  1. A central procedural question is determinative of the entire case: what is the legal effect of the post-filing IPR proceedings and statutory disclaimers that resulted in the cancellation or disclaimer of all patent claims asserted in the original complaint? As the plaintiff no longer has valid claims to assert as pleaded, this issue would likely resolve the matter entirely.
  2. A key evidentiary question, now moot, would have been: in the absence of the referenced claim chart exhibits, what factual evidence could the Plaintiff have marshaled to demonstrate that the accused BMW Turbo Actuator practices the specific material science and structural limitations at the heart of the patents—namely, the "one monolithic body" construction of the ’944 Patent and the "approximately the same" thermal expansion rate of the ’200 Patent?