DCT

1:17-cv-00300

Intellectual Ventures II LLC v. Toyota Motor Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

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 Nos. 7,683,509 & 7,928,348 Application Filing Date
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 (approx.) Launch of 2016 Lexus ES, containing an accused power steering unit
2017-03-20 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 challenges with conventional high-speed motors, particularly those used in computer disc drives, including manufacturing costs associated with precisely machined parts, limited heat dissipation, and performance degradation from component vibrations and "stack up tolerances" (the accumulation of dimensional variations in an assembly) ('944 Patent, col. 2:1-29, 2:50-54).
  • The Patented Solution: The invention proposes encapsulating the motor's stator windings in an injection-molded thermoplastic material. This material not only protects the windings but can also be molded to structurally join the stator assembly to the motor's baseplate, thereby increasing rigidity, improving thermal transfer, and simplifying assembly ('944 Patent, Abstract; col. 6:20-44). The thermoplastic can be specifically selected for properties like thermal conductivity or vibration dampening ('944 Patent, col. 8:46-54).
  • Technical Importance: This approach sought to create a more robust, integrated, and thermally efficient motor by replacing multi-part machined assemblies with a monolithic structure, potentially reducing manufacturing costs and improving performance in high-rpm applications ('944 Patent, col. 2:50-65).

Key Claims at a Glance

  • The complaint asserts independent claims 3, 9, and 11 (Compl. ¶26). (Note: All three claims were subsequently disclaimed during inter partes review).
  • Claim 3 (disclaimed): A motor comprising a pole assembly (core and windings), a shaft, and a thermoplastic material that is secured to the shaft and substantially encapsulates the pole assembly, joining the two together.
  • Claim 9 (disclaimed): A motor comprising a core, at least one magnet spaced from the core, and a thermoplastic material that substantially encapsulates the magnet and fills the space between the magnet and the core, rigidly fixing them together.
  • Claim 11 (disclaimed): A motor comprising at least one conductor, at least one magnet forming a pole, and a thermoplastic material that substantially encapsulates the magnet and positions it with respect to the conductor during operation.

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: Traditional stators formed from laminating circular stamped steel pieces suffer from several drawbacks. The grain orientation of the steel is inconsistent around the circle, leading to non-uniform magnetic flux and torque. Further, winding wires tightly onto the poles of a completed circular stator is difficult, limiting wire packing density and thus motor power and efficiency ('952 Patent, col. 2:6-28).
  • The Patented Solution: The invention discloses a manufacturing method where discrete arc-shaped stator segments are first created. These segments are then linked together by a "molded web" of a phase change material, such as a thermoplastic, to form a continuous, flexible strip. This linear strip configuration allows for easier and denser winding of the conductor wires onto the poles. After winding, the strip is formed into its final circular (toroidal) shape to create the stator assembly ('952 Patent, Abstract; col. 6:49-67).
  • Technical Importance: This manufacturing process was designed to improve motor performance by achieving higher wire packing densities and to enhance manufacturing efficiency by simplifying the winding process compared to conventional methods ('952 Patent, col. 11:21-34).

Key Claims at a Glance

  • The complaint asserts claims 10 and 12 (Compl. ¶33). (Note: Both claims were subsequently disclaimed during inter partes review).
  • Claim 10 (independent, disclaimed): A stator assembly comprising a plurality of discrete stator segments encased with a phase change material, where the material also forms a bridge between adjacent segments to link them into a continuous strip, and where the bridge is formed by interconnecting two mating sections of the material.
  • The complaint also asserts dependent claim 12, which depends on claim 10.

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

  • Technology Synopsis: The patent describes a motor where a thermoplastic material encapsulates the stator and is specifically chosen to have a coefficient of linear thermal expansion (CLTE) that closely matches the CLTE of other solid motor components, such as the steel core or bearings. This matching of thermal expansion properties is intended to reduce mechanical stress and maintain precise dimensional tolerances as the motor heats and cools during operation, which is critical for high-speed applications ('200 Patent, Abstract).
  • Asserted Claims: 1, 2, 4, 6, and 7 (Compl. ¶40). (Note: All asserted claims were subsequently canceled during inter partes review).
  • Accused Features: The complaint accuses the "Exemplary Toyota Products" of practicing the claimed technology (Compl. ¶41).

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, such as a motor, where a monolithic body of injection-molded thermoplastic encapsulates the electrical conductors. A "non-linear" heat transfer fluid pathway, such as a winding coolant channel, is integrated directly within this encapsulating body to allow a liquid coolant to pass through and actively remove heat from the device (’509 Patent, Abstract).
  • Asserted Claims: 1, 2, 14, and 15 (Compl. ¶47). (Note: Asserted claims 1, 2, and 14 were subsequently canceled during inter partes review).
  • Accused Features: The complaint accuses the "Exemplary Toyota Products" of practicing the claimed technology (Compl. ¶48).

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

  • Technology Synopsis: This invention describes an electromagnetic device designed for heating a fluid. A conductor that generates heat is encapsulated within a monolithic thermoplastic body. An integrated fluid flow path is formed within this body, allowing a fluid to pass through and absorb the heat for a subsequent functional use, such as pre-heating fuel in a fuel injector ('348 Patent, Abstract).
  • Asserted Claims: 24, 25, 26, and 27 (Compl. ¶54). (Note: All asserted claims were subsequently canceled during inter partes review).
  • Accused Features: The complaint accuses the "Exemplary Toyota Products" of practicing the claimed technology (Compl. ¶55).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused instrumentalities as the "Exemplary Toyota Products." These include, without limitation, the "2016 Lexus ES power steering unit," various "Toyota water pump[s]" identified by part number, and the "Toyota Hybrid Transaxle Assembly" (Compl. ¶19).

Functionality and Market Context

  • The accused products are components used in Toyota and Lexus vehicles that rely on electric motors for their operation (Compl. ¶19). The complaint alleges these components perform functions such as providing power steering assist, circulating engine coolant, and forming part of a hybrid vehicle's powertrain (Compl. ¶19). The complaint does not provide further technical detail regarding the specific design or operation of these components.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint alleges direct infringement for each of the five patents-in-suit but does not contain detailed infringement theories in its narrative sections (Compl. ¶27, 34, 41, 48, 55). Instead, it incorporates by reference a series of exhibits (Exhibits 6-31) described as "exemplary charts comparing claims of the Patents-in-Suit to the Exemplary Toyota Products" (Compl. ¶21). As these exhibits were not attached to the publicly filed complaint, a detailed analysis of the infringement allegations is not possible from the provided documents.

  • Identified Points of Contention:
    • Scope Questions: The specifications of the ’944 and ’200 patents focus heavily on applications in computer hard disc drive spindle motors ('944 Patent, col. 1:24-29; '200 Patent, col. 1:18-21). A potential dispute may center on whether the claim terms, which are not explicitly limited to that field, should be interpreted in light of the problems and solutions described for that specific context, or if they apply more broadly to the distinct operational environment of high-power automotive components.
    • Technical Questions: The ’952 Patent claims a specific manufacturing method involving a "molded web of core segments" formed into a "continuous strip" ('952 Patent, Claim 10). A central factual question for the court would be whether Toyota's proprietary manufacturing processes for its motor stators utilize this specific linked-segment methodology.

V. Key Claim Terms for Construction

  • The Term: "substantially encapsulating" (from '944 Patent, Claim 3)

    • Context and Importance: This term appears in claims across multiple asserted patents and is central to defining the scope of protection. Its construction will determine how much of a component must be covered by the thermoplastic material to infringe. Practitioners may focus on this term because its breadth could distinguish between a complete overmolding and a more selective application of plastic for structural or protective purposes.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification suggests the encapsulation can vary, stating that the material "either entirely surrounds the core 24 or surrounds almost all of it except for minor areas... that may be exposed" ('944 Patent, col. 6:38-42). This language may support an interpretation that does not require 100% coverage.
      • Evidence for a Narrower Interpretation: Figures 2 and 3 of the '944 patent show the thermoplastic material (36) thoroughly encasing the windings (31) and filling the spaces around the core (24), suggesting a very comprehensive and intimate form of encapsulation. A defendant might argue that "substantially" requires this degree of integration, not just a simple coating.

  • The Term: "a bridge between adjacent segments to link adjacent segments into a continuous strip" (from '952 Patent, Claim 10)

    • Context and Importance: This phrase defines the novel manufacturing intermediate claimed in the '952 patent. The infringement analysis for this patent depends entirely on whether Toyota's process creates this specific structure.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term "bridge" is not explicitly defined, which could support an argument that it covers any form of temporary connection used to hold stator segments in a linear series for winding, not just the specific molded webbing shown.
      • Evidence for a Narrower Interpretation: Figure 5 of the '952 patent depicts a distinct, flexible "webbing" (23) that physically links the discrete stator segments (20). A party could argue the claim term must be construed as being limited to this specific structure shown in the preferred embodiment, which facilitates both winding and subsequent formation into a toroidal core.

VI. Other Allegations

  • Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. However, the Prayer for Relief requests a judgment that the "case be declared exceptional within the meaning of 35 U.S.C. § 285" and that Plaintiff be awarded its attorneys' fees (Compl. p. 9, ¶i). The complaint does not plead specific facts concerning pre- or post-suit knowledge by the Defendant that would typically support a willfulness claim.

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

  • Procedural Viability: The primary issue in this case is the legal status of the infringement claims following the cancellation or disclaimer of nearly all asserted claims during inter partes review. A threshold question for the court will be to determine which, if any, of the original allegations remain justiciable.
  • Definitional Scope: For any remaining claims, a core issue will be one of technological applicability: can claim terms rooted in the patent specifications' context of small, high-precision computer disc drive motors be construed to cover the fundamentally different scale, power, and operating conditions of automotive power steering units, water pumps, and hybrid transaxles?
  • Evidentiary Proof of Process: The infringement allegation for the '952 patent hinges on a specific manufacturing method. A key evidentiary question will be one of process mapping: what factual evidence can be presented to demonstrate that Toyota’s internal, proprietary motor manufacturing process creates the "molded web of core segments" intermediate structure as required by the claims?