DCT

2:17-cv-08870

Intellectual Ventures II LLC v. Bayerische Motoren Werke AG

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-08870, D.N.J., 10/20/2017
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants maintain a regular and established place of business in the District of New Jersey and have committed infringing acts within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s BMW Turbo Actuator infringes two patents related to the construction of electric motors using encapsulated stators.
  • Technical Context: The technology concerns methods for manufacturing high-speed electric motors, such as those used in computer hard drives or automotive components, to improve dimensional stability, thermal performance, and vibration resistance.
  • Key Procedural History: The complaint notes that the patents-in-suit are related to other litigation, including an investigation before the U.S. International Trade Commission and suits against other automotive manufacturers. Public records for the patents-in-suit indicate that Inter Partes Review (IPR) proceedings were initiated against both patents. These proceedings, concluded after the filing of this complaint, resulted in the cancellation or disclaimer of all claims asserted in this case.

Case Timeline

Date Event
1999-07-29 ’200 Patent Priority Date
1999-12-17 ’944 Patent Priority Date
2006-06-27 ’944 Patent Issue Date
2006-12-26 ’200 Patent Issue Date
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 describes conventional high-speed spindle motors, particularly for computer disc drives, as suffering from performance limitations due to the "stack up tolerances" of their many separate parts, poor heat dissipation, and vibrations from energized windings (’944 Patent, col. 1:52-2:54). These issues can reduce motor speed, precision, and bearing life (’944 Patent, col. 2:55-65).
  • The Patented Solution: The invention proposes using an injection-molded thermoplastic material to encapsulate the stator windings and, in certain embodiments, to physically lock the stator assembly to the motor's baseplate (’944 Patent, Abstract). This creates a single, monolithic structure that is claimed to improve dimensional consistency, provide a pathway for heat dissipation, and dampen vibrations, as illustrated in the embodiment of Figure 2 where thermoplastic material (36) encapsulates the core (24) and windings (31) (’944 Patent, col. 6:33-38).
  • Technical Importance: This manufacturing approach sought to create more robust, reliable, and less expensive high-speed motors by replacing multiple mechanical fasteners and components with a single, molded encapsulant (’944 Patent, col. 4:58-6:16).

Key Claims at a Glance

  • The complaint asserts independent claims 9 and 11, and method claim 3 (Compl. ¶20).
  • Independent Claim 9 (Apparatus):
    • a core;
    • at least one magnet spaced from the core; and
    • a thermoplastic material substantially encapsulating the at least one magnet and filling 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.
  • Independent Claim 11 (Apparatus):
    • at least one conductor;
    • at least one magnet forming at least one pole; and
    • a thermoplastic material substantially encapsulating the at least one magnet and locating and precisely positioning the at least one magnet with respect to the at least one conductor during motor operation.

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

The Invention Explained

  • Problem Addressed: The patent identifies the mismatch in the coefficient of linear thermal expansion (CLTE) between different materials in a motor (e.g., metal bearings versus an aluminum housing) as a key problem (’200 Patent, col. 2:15-21). As the motor heats up, this mismatch can cause components to expand at different rates, degrading tolerances, increasing stress on bearings, and ultimately limiting performance and lifespan (’200 Patent, col. 2:35-45).
  • 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 is approximately the same as the CLTE of other "solid parts" in the motor, such as the bearings or stator core (’200 Patent, Abstract; col. 14:30-34). This matching of thermal properties is intended to ensure that the entire assembly expands and contracts uniformly, maintaining critical alignments and tolerances across a range of operating temperatures (’200 Patent, col. 7:30-40).
  • Technical Importance: By focusing on thermal expansion matching, the invention provided a method for building high-precision motors that could maintain their structural integrity and performance under the thermal stresses of high-speed operation (’200 Patent, col. 7:51-8:2).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2, 4, 6, and 7 (Compl. ¶27).
  • Independent Claim 1 (Apparatus):
    • a stator substantially encapsulated within a body of thermoplastic material;
    • one or more solid parts used in the motor either within or near the body;
    • wherein the thermoplastic material has a coefficient of linear thermal expansion such that the thermoplastic material contracts and expands at approximately the same rate as the one or more solid parts.

III. The Accused Instrumentality

Product Identification

The "BMW Turbo Actuator," referred to in the complaint as the "Exemplary BMW Product" (Compl. ¶13).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the BMW Turbo Actuator's specific functionality, construction, or operation. The infringement allegations rely entirely on incorporating by reference external claim chart exhibits that were not filed with the complaint (Compl. ¶14-16, ¶22, ¶29).

IV. Analysis of Infringement Allegations

The complaint bases its infringement allegations on claim chart Exhibits 3-5, which are referenced but not provided with the public filing (Compl. ¶15). The complaint alleges that these exhibits compare the asserted claims to the "Exemplary BMW Product" (Compl. ¶15). Without these exhibits, the complaint’s narrative theory is that the BMW Turbo Actuator "practices, in whole or in material part, the technology claimed by the Patents-in-Suit" (Compl. ¶16). No specific facts describing how the accused product meets any particular claim limitation are included in the body of the complaint.

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Scope Questions: Both patents-in-suit heavily emphasize applications in computer hard disk drive "spindle motors" throughout their specifications (’944 Patent, col. 1:24-28; ’200 Patent, col. 1:19-24). A central question for the court will be one of claim scope: whether the term "motor" should be construed broadly to cover an automotive component like a "Turbo Actuator," or whether its meaning is implicitly narrowed by the specification's near-exclusive focus on the disc drive context.
    • Technical Questions: The infringement case raises key evidentiary questions. For the ’944 Patent, Plaintiff must prove that the accused actuator contains an "injection molded thermoplastic material" performing the specific encapsulating and locking functions as claimed (Compl. ¶22). For the ’200 Patent, a critical factual issue will be whether the materials in the actuator meet the CLTE matching limitation of claim 1, which requires showing that the thermoplastic material "contracts and expands at approximately the same rate" as other solid components (Compl. ¶29). The complaint itself provides no factual support for these technical requirements.

V. Key Claim Terms for Construction

  • The Term: "substantially encapsulating" (’944 Patent, Claim 9; ’200 Patent, Claim 1)

  • Context and Importance: This term appears in the independent claims of both patents. Its construction is critical because it defines the required degree of integration between the thermoplastic material and the motor components. Practitioners may focus on this term to dispute whether a partial coating or potting in the accused device meets the "substantial" encapsulation taught in the patents.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term "substantially" itself implies something less than total or complete encapsulation, allowing for some parts of the underlying component to remain exposed.
    • Evidence for a Narrower Interpretation: The ’944 Patent specification defines "Substantial encapsulation" as meaning the material "either entirely surrounds the core 24 or surrounds almost all of it except for minor areas... that may be exposed, such as the face of the poles" (’944 Patent, col. 6:38-42). This definition suggests a very high degree of coverage is required.

  • The Term: "approximately the same rate" (’200 Patent, Claim 1)

  • Context and Importance: This phrase is the central functional limitation of the ’200 Patent's main independent claim. The outcome of the infringement analysis for this patent will likely depend on how much variance is permitted by "approximately."

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification provides a numerical example, suggesting a CLTE for the thermoplastic that is "between 70% and 130% of the CLTE of the core of the stator," which could support a relatively broad definition of "approximately the same" (’200 Patent, col. 14:32-34).
    • Evidence for a Narrower Interpretation: The patent’s background section frames the invention as a solution to problems caused by even small differences in thermal expansion (’200 Patent, col. 2:15-21). A defendant could argue that to achieve the patent’s stated objective, "approximately the same" must mean a much closer match than the 70-130% range, which is presented as just one possible embodiment.

VI. Other Allegations

  • Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. While the prayer for relief requests a finding that the case is "exceptional" for the purpose of attorneys' fees under 35 U.S.C. § 285, it does not plead facts supporting pre- or post-suit knowledge of infringement that would typically underpin a claim for enhanced damages (Compl. p. 5).

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

  • Threshold Viability: A threshold and likely dispositive issue for this case is its fundamental viability. Public records show that all claims asserted in the complaint were subsequently cancelled or disclaimed as a result of IPR proceedings concluded after the complaint was filed. The primary question is how the court will proceed with a case where the entire legal basis for the infringement claims appears to have been invalidated.
  • Claim Scope and Context: Should the case proceed, a core legal issue will be one of definitional scope: can the term "motor", which is described in the patents almost exclusively in the context of computer hard drive spindle motors, be construed to cover a functionally distinct automotive part like a "Turbo Actuator"?
  • Evidentiary Sufficiency: A key factual question will be one of technical proof: given that the complaint relies on unfiled exhibits and lacks specific factual allegations, can the plaintiff produce sufficient evidence to demonstrate that the accused actuator's materials and construction meet the detailed encapsulation and thermal expansion properties required by the asserted claims?