PTAB

IPR2018-00440

American Honda Motor Co Inc v. Intellectual Ventures II LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Fluid-Cooled Electromagnetic Device
  • Brief Description: The ’509 patent discloses electromagnetic devices, such as electric motors, that are cooled by an integrated fluid pathway. The key feature is a "monolithic body" of injection-molded thermoplastic material that encapsulates electrical conductors (e.g., stator windings) and contains a non-linear pathway for a heat transfer fluid.

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 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 all elements of the challenged claims, including a fluid-cooled pump motor with conductors encapsulated in an injection-molded thermoplastic housing that defines a non-linear fluid pathway with an inlet and outlet. However, Stephan's housing is formed from two separate halves that are welded together, not as a single "monolithic body." Petitioner asserted that Raible teaches forming a pump housing from a single, monolithic injection-molded piece. Neal ’554 further teaches the known benefits of using a monolithic body for electric motors, such as reducing part count, improving alignment, eliminating "stack up tolerances," and lowering manufacturing costs.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) reviewing Stephan's two-piece design would have been motivated to modify it into a single-piece, monolithic housing as taught by Raible. The motivation would be to achieve the well-understood advantages of monolithic construction expressly described in Neal ’554, such as improved reliability and reduced manufacturing costs, which were common goals in mechanical design.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in forming the Stephan device with a single monolithic housing using the known injection molding techniques disclosed in Raible. This modification was presented as a predictable design choice to solve a known problem (complexity and cost of multi-part assemblies) using known solutions from the prior art.

Ground 2: Anticipation by Stephan - Claims 1, 2, 14, and 15 are anticipated by Stephan under the Patent Owner's alleged broad claim construction.

  • Prior Art Relied Upon: Stephan (German Patent Specification DE10307696A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative based on a broad construction of the term "monolithic body." Petitioner alleged that in a co-pending ITC litigation, the Patent Owner had advanced a construction where "monolithic" could encompass multiple pieces that are "fused" together. Petitioner argued that Stephan's disclosure of welding two thermoplastic housing halves together to form a composite motor casing meets this broad definition of a "fused," and therefore "monolithic," body. Under this construction, Stephan was argued to disclose every element of the independent claims, including a "monolithic body" that encapsulates conductors and contains a non-linear fluid pathway.
    • Key Aspects: This argument is contingent on the adoption of a claim construction that Petitioner itself disputes. It is a defensive argument intended to invalidate the claims even if the Patent Trial and Appeal Board (PTAB) adopts the Patent Owner's allegedly broader interpretation of the key claim term from related litigation.

4. Key Claim Construction Positions

  • "monolithic body" (Claims 1 and 14): The construction of this term was central to the petition's arguments.
    • Petitioner's Proposed Construction: Petitioner argued that the broadest reasonable construction, consistent with the patent's own specification, is "a body formed as a single piece." The ’509 patent expressly defines "Monolithic" as "being formed as a single piece" and contrasts this with prior art devices that use "multiple parts" joined together, which results in "stack up tolerances and increased manufacturing costs."
    • Contested Construction: Petitioner's second ground of unpatentability relies on a broader construction allegedly advanced by the Patent Owner in a related ITC proceeding, where "monolithic body" could be interpreted to include multiple pieces that are "fused" or "welded" together. The petition argued that under its own proposed "single piece" construction, Stephan does not anticipate but renders the claims obvious, whereas under the Patent Owner's alleged broader "fused together" construction, Stephan anticipates the claims outright.

5. Relief Requested

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