PTAB

IPR2017-01494

Toyota Motor Corp. v. Intellectual Ventures II LLC

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1. Case Identification

2. Patent Overview

  • Title: Electromagnetic Device with Open Non-Linear Heat Transfer System
  • Brief Description: The ’509 patent discloses electromagnetic devices, such as fluid-cooled motors or pumps, constructed with a "monolithic body" of injection-molded thermoplastic. This single-piece body substantially encapsulates the electrical conductors and stator and integrates a "non-linear heat transfer fluid pathway" to improve cooling, reduce component count, minimize "stack-up tolerances," and lower manufacturing costs compared to traditional multi-part assemblies.

3. Grounds for Unpatentability

Ground 1: Obviousness over Stephan, Raible, and Neal ’554 - Claims 1, 2, 14, and 15 are obvious over Stephan in view of Raible and Neal ’554.

  • Prior Art Relied Upon: Stephan (German Unexamined Patent Specification DE10307696A1), Raible (Patent 5,368,438), and Neal ’554 (Patent 6,362,554).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Stephan discloses nearly every element of the challenged claims. Specifically, Stephan teaches a fluid-cooled pump (an electromagnetic device) with drive coils (conductors) encapsulated within a two-part, injection-molded thermoplastic housing. This housing, formed by welding two halves together, contains a complex, non-linear fluid pathway for coolant. However, under Petitioner’s proposed construction, Stephan’s two-piece welded housing is not a "monolithic body." To bridge this gap, Petitioner cited Raible and Neal ’554. Raible was cited for teaching a pump with a housing injection-molded as a single piece, and Neal ’554 was cited for teaching the benefits of a monolithic body for a motor, including encapsulating conductors and reducing manufacturing costs and stack-up tolerances.
    • Motivation to Combine: A POSITA would combine Stephan's pump design with the teachings of Raible and Neal ’554 to achieve predictable improvements. Neal ’554 explicitly motivated forming a motor housing as a single monolithic piece to reduce the number of parts, avoid stack-up tolerances, improve component alignment, and lower manufacturing costs—all well-understood engineering goals that address the drawbacks of a multi-part assembly like Stephan's.
    • Expectation of Success: Petitioner asserted that modifying Stephan's two-part housing into a single monolithic body using the known injection molding techniques taught by Raible and Neal ’554 would have been a simple and predictable design choice for a POSITA seeking to improve manufacturing efficiency and device robustness.
    • Key Aspects: This ground’s success hinges on Petitioner’s proposed claim construction of "monolithic body" as being strictly a single piece, thereby rendering Stephan's welded assembly as a non-monolithic prior art structure that a POSITA would be motivated to improve.

Ground 2: Anticipation by Stephan - Claims 1, 2, 14, and 15 are anticipated by Stephan under the Patent Owner’s broad construction of “monolithic body.”

  • Prior Art Relied Upon: Stephan (German Unexamined Patent Specification DE10307696A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to Ground 1. Petitioner contended that in co-pending litigation, the Patent Owner asserted a broad construction of "monolithic body" that encompasses multiple pieces "fused" together. Petitioner argued that Stephan discloses a housing made of two thermoplastic halves that are permanently attached by welding. If the Board were to adopt the Patent Owner's alleged broad construction, then Stephan’s welded, two-part housing would satisfy the "monolithic body" limitation. Because Stephan already discloses all other claim limitations—a fluid-cooled electromagnetic device, encapsulated conductors, a non-linear fluid path with an inlet/outlet, and a body covering the exterior—it would anticipate all challenged claims under this broader construction.
    • Key Aspects: This argument strategically used the Patent Owner's alleged litigation position against it. It posits that if the term "monolithic" is stretched to include welded parts, the invention was not novel over prior art like Stephan, which already used that exact assembly method for the same type of device.

4. Key Claim Construction Positions

  • “monolithic body” (Claims 1 and 14): Petitioner argued this term is central to the patentability of the challenged claims and proposed it be construed as "a body formed as a single piece." This construction was based on the specification’s express definition (“Monolithic is defined as being formed as a single piece”) and its repeated emphasis on the benefits of a "single unitized body" over prior art devices made of "multiple parts" that suffer from "stack up tolerances and increased manufacturing costs." Petitioner explicitly contrasted its narrow construction with the Patent Owner's alleged broader construction from related litigation, where "fused" or welded parts were considered to form a monolithic body. This distinction forms the foundation for Petitioner's alternative obviousness and anticipation arguments.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 14, and 15 of Patent 7,683,509 as unpatentable under 35 U.S.C. §§ 102 and 103.