DCT

2:17-cv-13551

Intellectual Ventures II LLC v. Aisin Seiki Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-13551, E.D. Mich., 10/31/2017
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Michigan because Defendants maintain a regular and established place of business and have committed alleged infringing acts within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s automotive water and coolant pumps infringe four patents related to the construction, encapsulation, and thermal management of electric motors.
  • Technical Context: The technology concerns methods for improving the performance and manufacturability of electric motors by encapsulating components in thermoplastic materials to enhance structural rigidity and manage heat.
  • Key Procedural History: Subsequent to the complaint's filing, all four patents-in-suit were subject to inter partes review (IPR) proceedings before the Patent Trial and Appeal Board. These proceedings resulted in the cancellation or disclaimer of every claim asserted in the original complaint against U.S. Patent Nos. 7,067,944; 7,154,200; and 7,928,348, and the cancellation of most claims asserted against U.S. Patent No. 7,683,509. These post-filing events are dispositive for the majority of the original infringement allegations.

Case Timeline

Date Event
1999-07-29 ’200 Patent Earliest Priority Date
1999-12-17 ’944 Patent Earliest Priority Date
2006-06-27 ’944 Patent Issue Date
2006-07-19 ’509 & ’348 Patents Earliest Priority Date
2006-12-26 ’200 Patent Issue Date
2010-03-23 ’509 Patent Issue Date
2011-04-19 ’348 Patent Issue Date
2017-10-31 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"

The Invention Explained

  • Problem Addressed: The patent's background describes challenges in conventional high-speed motors, such as those in computer disc drives, including dimensional inconsistencies from "stack up tolerances," high manufacturing costs, inefficient heat dissipation, and particulate contamination, all of which limit performance and reliability (Compl. Ex. 1, '944 Patent, col. 2:12-29, 2:50-54).
  • The Patented Solution: The invention proposes encapsulating the motor's stator windings with an injection-molded thermoplastic material. This material can also secure the stator assembly to the motor's baseplate, filling the space between them to create a rigid, monolithic structure that reduces the number of parts, improves dimensional stability, and creates a pathway for heat dissipation (’944 Patent, col. 4:17-34; Abstract).
  • Technical Importance: This manufacturing approach was intended to produce more precise, robust, and thermally efficient electric motors at a lower cost, enabling higher operational speeds and greater data density in applications like hard disk drives (’944 Patent, col. 8:52-57).

Key Claims at a Glance

  • The complaint asserts independent claims 9 and 11, and dependent claim 3 (Compl. ¶23). However, an inter partes review certificate issued on September 26, 2019, confirms that claims 3, 9, 10, and 11 have been disclaimed. The allegations in the complaint concerning these claims are therefore moot.
  • The essential elements of the asserted (but now disclaimed) independent claim 9 include:
    • a core;
    • at least one magnet spaced from the core; and
    • a thermoplastic material substantially encapsulating the at least one magnet and filling in the space between the at least one magnet and the core such that the at least one magnet and the core are rigidly fixed together.

U.S. Patent No. 7,154,200 - "Motor"

The Invention Explained

  • Problem Addressed: The patent addresses performance limitations in high-speed motors caused by the mismatch in thermal expansion properties between different materials. When a motor heats up, metal components and plastic encapsulants expand at different rates, inducing stress, dimensional changes, and potential failure (’200 Patent, col. 3:12-21).
  • The Patented Solution: The invention discloses a motor construction where the stator is encapsulated in a body of thermoplastic material that has a coefficient of linear thermal expansion (CLTE) specifically selected to be "approximately the same" as the CLTE of one or more solid parts of the motor, such as steel bearings or shafts (’200 Patent, col. 15:30-47; Abstract).
  • Technical Importance: By matching the thermal expansion rates of the encapsulant and critical metal components, the design aims to maintain dimensional consistency across the motor's operating temperature range, thereby reducing thermally-induced stress and improving the precision and lifespan of high-speed motors (’200 Patent, col. 21:5-13).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2, 4, 6, and 7 (Compl. ¶30). An inter partes review certificate issued on July 12, 2019, confirms that claims 1, 2, and 4-7 have been cancelled. The allegations in the complaint concerning this patent are therefore moot.
  • The essential elements of the asserted (but now cancelled) independent claim 1 include:
    • a stator substantially encapsulated within a body of thermoplastic material; and
    • one or more solid parts used in the motor either within or near the body;
    • wherein the thermoplastic material has a CLTE such that it "contracts and expands at approximately the same rate as the one or more solid parts."

U.S. Patent No. 7,683,509 - "Electromagnetic device with open, non-linear heat transfer system"

  • Technology Synopsis: This patent describes an electromagnetic device, such as a motor, with an integrated cooling system. The invention involves encapsulating the electrical conductors in a monolithic body of thermoplastic material that also contains a "non-linear heat transfer fluid pathway" (e.g., a molded channel for coolant to flow through) to efficiently remove heat from the device's core components (Compl. Ex. 3, '509 Patent, Abstract).
  • Asserted Claims: Claims 1, 2, 14, and 15 (Compl. ¶37). An inter partes review certificate issued February 17, 2021, confirms that claims 1, 2, and 14 are cancelled.
  • Accused Features: The complaint alleges that Defendants' water pumps, which by nature integrate a fluid flow path, infringe by having motor conductors encapsulated within a body that contains the pathway for the pumped coolant, thereby using the pumped fluid to cool the motor (Compl. ¶16, ¶39).

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

  • Technology Synopsis: This patent discloses an electromagnetic device for heating a fluid. The device features conductors encapsulated in a monolithic thermoplastic body that includes an integrated fluid flow path. Heat generated by the conductors is transferred to the fluid, and the outlet directs the now-heated fluid to "a place of usage wherein heat picked up by the fluid... is put to functional use" (Compl. Ex. 4, '348 Patent, Abstract).
  • Asserted Claims: Claims 24, 25, 26, and 27 (Compl. ¶44). An inter partes review certificate issued February 22, 2021, confirms that all asserted claims (24-27) are cancelled.
  • Accused Features: The complaint accuses Defendants' coolant pumps, alleging that the heat generated by the motor is transferred to the engine coolant, which is then circulated through the vehicle's cooling and heating systems, thereby putting the heat to a "functional use" (Compl. ¶16, ¶46).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies a list of "Exemplary Aisin Products," including the Aisin WPT-190 and WPT-191 Water Pumps, as well as other automotive water and coolant pumps identified by Toyota and Honda part numbers (Compl. ¶16).

Functionality and Market Context

  • The accused products are identified as electric pumps for automotive applications, which function to circulate liquid coolant through a vehicle's engine and climate control systems (Compl. ¶16). The complaint does not provide detailed technical descriptions of the accused products' internal construction or the specific materials used. Instead, it alleges that the products practice the claimed technology and incorporates by reference a series of claim-chart exhibits that were not attached to the publicly filed complaint (Compl. ¶17-19).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

’944 Patent Infringement Allegations

The complaint alleges that the Accused Products directly infringe claims 3, 9, and 11 of the ’944 Patent (Compl. ¶23-24). It supports this allegation by incorporating by reference "Exhibits 5-16," which are described as claim charts but were not provided with the complaint (Compl. ¶25). The narrative infringement theory suggests that the accused pumps contain motor components, such as a core and magnet, that are "rigidly fixed together" by being substantially encapsulated in a thermoplastic material. However, as noted in Section II, all asserted claims of the ’944 Patent have been disclaimed post-filing as a result of inter partes review.

  • Identified Points of Contention:
    • Claim Viability: The primary issue is that the asserted claims no longer exist, rendering the infringement allegations moot.
    • Technical Questions: Had the claims remained valid, a key technical question would concern the physical construction of the accused pumps. The analysis would require evidence detailing the degree of encapsulation of the motor components and whether that encapsulation is the mechanism that "rigidly fixed" them together as required by the claims.

’200 Patent Infringement Allegations

The complaint alleges direct infringement of claims 1, 2, 4, 6, and 7 of the ’200 Patent, again relying on unseen claim-chart exhibits ("Exhibits 17-24") (Compl. ¶30, ¶32). The infringement theory centers on the material properties of the accused pumps, alleging that the thermoplastic material used for encapsulation has a coefficient of linear thermal expansion (CLTE) that is approximately the same as that of other solid motor parts, thereby minimizing thermal stress. As noted in Section II, all asserted claims of the ’200 Patent have been cancelled post-filing as a result of inter partes review.

  • Identified Points of Contention:
    • Claim Viability: As with the ’944 Patent, the cancellation of all asserted claims makes the infringement allegations moot.
    • Evidentiary Questions: If the claims were valid, the central dispute would be evidentiary. Plaintiff would need to provide material science evidence demonstrating the CLTE values for both the thermoplastic encapsulant and the relevant solid parts (e.g., bearings, shaft) in the accused pumps and show that these values are "approximately the same."

V. Key Claim Terms for Construction

The Term: "substantially encapsulating" (from ’944 Patent, disclaimed claim 9)

  • Context and Importance: This term defines the required degree of physical integration between the thermoplastic material and the motor components. Its construction would be central to determining whether an accused device that leaves significant portions of its components exposed could still infringe.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests less-than-total coverage is acceptable, defining the term to mean 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).
    • Evidence for a Narrower Interpretation: A defendant could point to embodiments where components appear almost completely encased (e.g., ’944 Patent, FIG. 3) to argue that "substantial" requires near-total envelopment to achieve the patent's goal of creating a rigid, monolithic body.

The Term: "contracts and expands at approximately the same rate" (from ’200 Patent, cancelled claim 1)

  • Context and Importance: This phrase is the central limitation of the invention, requiring a match in thermal properties. Its definition is critical, as a loose interpretation could cover a wide range of conventional material pairings, while a narrow one would limit the claim to specifically engineered combinations.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not provide a numerical range for "approximately," suggesting a functional definition might be appropriate (i.e., whether the matching is sufficient to achieve the desired reduction in thermal stress).
    • Evidence for a Narrower Interpretation: The specification provides a specific numerical range that could be used to define the term, stating that "the preferred thermoplastic material should have a CLTE between 70% and 130% of the CLTE of the core of the stator" (’200 Patent, col. 14:32-34).

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain allegations of indirect infringement; each count pleads only direct infringement (Compl. ¶24, ¶31, ¶38, ¶45).
  • Willful Infringement: The complaint does not explicitly allege willful infringement or plead facts related to pre-suit knowledge of the patents. However, the prayer for relief requests a judgment that the case be declared "exceptional within the meaning of 35 U.S.C. § 285," which is a basis for awarding attorneys' fees (Compl. Prayer for Relief ¶f.i).

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

The post-filing cancellation of nearly all asserted claims in inter partes review proceedings has fundamentally reshaped this litigation. The central questions are no longer focused on technical infringement but on the procedural viability of the case itself.

  • A core issue is one of case viability: given that every claim asserted against three of the four patents-in-suit (and the majority of claims against the fourth) has been invalidated, what legal basis, if any, remains for the lawsuit to proceed on the basis of the original complaint?
  • A key procedural question is one of amendment: will the Plaintiff seek to amend its complaint to assert any remaining, un-asserted claims that survived IPR (such as claim 15 of the ’509 patent), and would such an amendment be permitted at this stage?
  • An underlying question concerns the pre-suit investigation: the complaint's reliance on incorporating by reference unseen exhibits, without providing substantive technical facts in the pleading itself, raises the question of whether the initial infringement allegations met the plausibility standards required for federal pleading, particularly for technical elements like the matching CLTE values of the ’200 patent.