Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 38
`February 26, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOYOTA MOTOR CORP., AISIN SEIKI CO., LTD., and
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-014941
`Patent 7,683,509 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, JOHN A. HUDALLA, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`DECISION
`
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`1 Case IPR2018-00440 has been joined with this proceeding.
`
`
`571.272.7822
`
`
`Paper No. 38
`February 26, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOYOTA MOTOR CORP., AISIN SEIKI CO., LTD., and
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-014941
`Patent 7,683,509 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, JOHN A. HUDALLA, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`DECISION
`
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`1 Case IPR2018-00440 has been joined with this proceeding.
`
`
`
`IPR2017-01494
`Patent 7,683,509 B2
`
`I. INTRODUCTION
`Patent Owner filed a Request for Rehearing (Paper 37, “Req. Reh’g”)
`of our Final Written Decision, dated December 12, 2018 (Paper 36, “Final
`Written Decision” or “Final Dec.”), finding challenged claims 1, 2, 14, and
`15 of U.S. Patent 7,683,509 B2 (Ex. 1001, “’509 Patent”) unpatentable.
`Patent Owner contends that the Board misapprehended the ’509 Patent’s
`“pump embodiment,” causing the Board to misconstrue “fluid pathway in
`the monolithic body” and find erroneously that Stephan discloses, teaches,
`or suggests this claim limitation. See Req. Reh’g 2–13. For the reasons
`explained below, Patent Owner’s Request for Rehearing is denied.
`
`II. ANALYSIS
`The applicable standard for a request for rehearing of a Final Written
`Decision is set forth in 37 C.F.R. § 42.71(d), which provides that a request
`for rehearing “must specifically identify all matters the party believes the
`Board misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” The party
`challenging a decision bears the burden of showing the decision should be
`modified. Id.
`Patent Owner contends that the Board’s rejection of Patent Owner’s
`claim construction in the Final Written Decision relied on the Board’s
`understanding that the “pump embodiment” disclosed in U.S Patent
`6,659,737 (“’737 Patent”) is an embodiment of the claims of the ’509 Patent.
`See Req. Reh’g 3 (citing Final Dec. 17–18). Patent Owner asserts that it
`“addressed the true nature of the ‘pump embodiment’ at the oral hearing.”
`Id. at 4–5 (reproducing Paper 35 (“Tr.”), 31:1–32:7; citing Ex. 2007, slide
`16). According to Patent Owner, “Patent Owner made it clear that the
`2
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`IPR2017-01494
`Patent 7,683,509 B2
`modification of the ’737 pump disclosed by the ’509 Patent shows that the
`‘fluid pathway in the monolithic body’ limitation requires the pathway to be
`formed into the monolithic body, not just a void bounded by the inner walls
`of a pump housing.” Id. at 5. Patent Owner further asserts that it applied
`this argument to both the Stephan grounds in this IPR and the Umeda
`grounds in the 1539 IPR. See id. (quoting Tr. 32:8–33:3).
`Patent Owner also contends that it “explained the same thing––that
`the ‘pump embodiment’ disclosed in the ’509 Patent is a modification of the
`’737 Patent’s pump, in which the pump ‘has a channel, formed into the
`monolithic body’––in its Sur-Reply in this IPR.” Req. Reh’g 5 (quoting
`Sur-Reply 4). In support of its argument Patent Owner reproduces the
`following passage from the ’509 Patent:
`The fluid transported by the pump can circulate through
`apertures formed in the encapsulant. . . . The flow path through
`the plastic could be formed by either injecting gas into the
`molten plastic in the mold so as to produce channels, or by
`molding around a plurality of conduits filled with ice or wax
`which could later be removed to leave an integrated flow path
`through the body. In either manner, a fluid inlet port and a fluid
`outlet port could be formed in the body of injection molded
`thermoplastic, and the pathway through the body would be
`confined within the body. Thus the pathway is a defined
`pathway through a housing that is formed, at least in part, out
`of the same monolithic body that encapsulates the conductor.
`Req. Reh’g 5–6 (reproducing Ex. 1001, 20:13–53 (Patent Owner’s
`emphasis)). According to Patent Owner, this passage of the ’509 Patent was
`also reproduced in the oral hearing slides and in the Sur-Reply. See id. at 5
`(citing Ex. 2007, slide 16; Sur-Reply 4–5).
`Patent Owner argues that, despite Patent Owner’s explanation, the
`Board misapprehended the nature of the “pump embodiment” because the
`3
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`IPR2017-01494
`Patent 7,683,509 B2
`“pump embodiment” of the ’737 Patent is not an embodiment of the claims
`of the ’509 Patent. See Req. Reh’g 6. According to Patent Owner, “the
`specification of the ’509 Patent makes it abundantly clear to a person of
`ordinary skill in the art that the ‘pump embodiment’ of the ’737 Patent is
`actually a prior art pump that is not covered by the claims of the ’509
`Patent.” Id. at 6 (quoting Ex. 1001, 20:29–31). Patent Owner contends,
`“the Board’s determination that the unmodified prior art pump of the ’737
`Patent is an embodiment of the claims of the ’509 Patent was erroneous.”
`Id. at 7. According to Patent Owner, “a correct understanding of both the
`unmodified prior art pump of the ’737 Patent and the modified and
`inventive ‘pump embodiment’ of the ’509 Patent compels the conclusion
`that ‘the present invention’ includes a fluid pathway or structural channel,
`that is formed into the monolithic body.” Id. at 7–8 (reproducing Ex. 1001,
`20:13–53, Fig. 20 with annotations; citing Ex. 2007, slide 16; Sur-Reply 4–
`5). Patent Owner argues that the “pump embodiment” is consistent with the
`’509 Patent’s disclosure of its other embodiments, including Figure 20. Id.
`at 8–9.
`Patent Owner’s annotated Figure 20 of the ’509 Patent is reproduced
`below:
`
`
`
`4
`
`
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`IPR2017-01494
`Patent 7,683,509 B2
`
`
`
`According to Patent Owner,
`Figure 20 illustrates in a picture the exact same thing that the
`’509 Patent describes in words with respect to the modified and
`inventive “pump embodiment.”
` Specifically, Figure 20
`illustrates a channel that is made of “apertures formed in the
`encapsulant” or by “molding around a plurality of conduits filled
`with ice or wax which could later be removed to leave an
`integrated flow path through the body.”
`Req. Reh’g 8–9 (quoting Ex. 1001, 20:13–53). Patent Owner contends,
`“Figure 20 illustrates a structural channel formed into the monolithic body,
`not a mere void bounded by the inner walls of the monolithic body.” Id. at
`9. Patent Owner also asserts that “the pathway formed into the monolithic
`body depicted by Figure 20 is representative of every example of a pathway
`disclosed in the figures or text of the ’509 Patent.” Id.
`
`As an initial matter, we acknowledge that Patent Owner, in the Sur-
`Reply, made the following assertion: “the specification of the ’509 Patent
`confirms that the pump embodiment has a channel formed into the
`monolithic body, that confines fluid flow to a specific route.” Sur-Reply
`4–5. We also acknowledge that in the Sur-Reply, Patent Owner reproduced
`the same above identified passage of the ’509 Patent. See id. Patent Owner,
`5
`
`
`
`
`
`IPR2017-01494
`Patent 7,683,509 B2
`however, followed the aforementioned assertion and reproduced passage of
`the ’509 Patent with the following argument: “[b]y contrast to the pump
`embodiment and the other embodiments disclosed in the ’509 Patent, the
`fluid in Stephan fills the gap in between the walls of the chamber and is not
`structurally confined to a specific route in the monolithic body.” Id. at 5.
`In sum, Patent Owner’s arguments in the Sur-Reply focus on Patent Owner’s
`contentions that the ’509 Patent allegedly discloses a channel formed into
`the monolithic body that confines fluid flow to a specific route, contrasted
`with Patent Owner’s assertion that the applied prior art
`reference––Stephan––allegedly does not disclose fluid that is structurally
`confined to a specific route in the monolithic body. Patent Owner makes no
`specific argument in the Sur-Reply further addressing “formed into the
`monolithic body.” See id. at 4–5. Moreover, Patent Owner’s Sur-Reply did
`not include arguments that the pathway must not be “just a void bounded by
`the inner walls of a pump housing.” Req. Reh’g 5.
`
`Patent Owner does not direct us to any location in the Response or
`Sur-Reply where Patent Owner addressed any distinctions between an
`“unmodified prior art pump embodiment” and a “modified and inventive
`“pump embodiment,” now argued in the Request for Rehearing. Moreover,
`Patent Owner’s contention that it made this distinction at oral argument is
`insufficient because arguments raised for the first time at oral argument do
`not form a proper basis for a request for rehearing. See 37 C.F.R. § 42.71
`(“The request must specifically identify . . . the place where each matter was
`previously addressed in a motion, an opposition, or a reply.”); Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,768 (Aug. 14, 2012) (“No new
`evidence or arguments may be presented at the oral argument.”); Trial
`
`
`
`6
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`IPR2017-01494
`Patent 7,683,509 B2
`Practice Guide Update August 2018 (“During an oral hearing, a party . . .
`may only present arguments relied upon in the papers previously
`submitted.”); Apple Inc. v. e-Watch, Inc., Case IPR2015-00412, slip op. at
`40–41 (PTAB May 6, 2016) (Paper 50) (declining to consider arguments
`raised for the first time at oral argument). Nonetheless, upon reviewing the
`cited portion of the oral hearing transcript (Tr. 31:1–33:3), we do not find
`that Patent Owner presented well-developed arguments asserting a
`distinction between an unmodified prior art pump embodiment and a
`modified and inventive pump embodiment. See Tr. 31:3–6 (“[I]t says it
`discloses a pump that can be modified according to the present invention so
`that the thermoplastic encapsulating the stator is also used to form the
`housing for the device.”).
`Patent Owner also does not direct us to any location in the Response
`or Sur-Reply where Patent Owner argued: (1) the pump embodiment of the
`’737 Patent is a prior art pump embodiment not covered by the claims of the
`’509 Patent; (2) the “pump embodiment” is consistent with the Figure 20 of
`the ’509 Patent; or (3) “the pathway formed into the monolithic body
`depicted by Figure 20 is representative of every example of a pathway
`disclosed in the figures or text of the ’509 Patent.” To the contrary, in the
`Sur-Reply, Patent Owner reproduced Figure 1 of the ’737 Patent, with added
`annotations, alongside Figure 20 of the ’509 Patent, with added annotations,
`and asserted “[t]he following annotated figures (with the “pump embodiment
`on the left and Figure 20 on the right) show that both embodiments have a
`structural channel in the monolithic body that confines fluid flow to a
`specific route.” Sur-Reply 4.
`
`
`
`7
`
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`IPR2017-01494
`Patent 7,683,509 B2
`Patent Owner’s reproduced and annotated Figure 1 of the ’737 Patent
`and Patent Owner’s reproduced and annotated Figure 20 of the ’509 Patent
`from the Sur-Reply are reproduced below:
`
`
`
`Figure 1 of the ’737 Patent with Patent Owner’s annotations depicts a
`monolithic body shaded in green, an annular fluid pathway shaded in purple,
`copper windings shaded in blue, and a red circle pointing out part of the
`annular fluid pathway; Figure 20 of the ’509 Patent with Patent Owner’s
`annotations depicts monolithic body 458 shaded in green, and inlet 470,
`outlet 472, and conduit 452 shaded in purple, and red circles pointing out
`part of the fluid pathway. See Sur-Reply 4; Ex. 1001, 19:1–18. In contrast
`to the arguments now presented in the Request for Rehearing, i.e., that the
`pathway must be “formed into the walls of the monolithic body, not just a
`void bounded by the inner walls of a pump housing,” Patent Owner’s
`annotated Figure 1 of the ’737 Patent draws attention to an “Annular fluid
`pathway” that is, indeed, “just a void bounded by the inner walls of a pump
`housing.”
`
`
`
`8
`
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`IPR2017-01494
`Patent 7,683,509 B2
`Because Patent Owner’s arguments are presented for the first time in
`the Request for Rehearing, we are not persuaded that we misapprehended or
`overlooked arguments and evidence previously addressed in the Patent
`Owner Response and Sur-Reply. For this same reason, we also are not
`persuaded by Patent Owner’s arguments that the Board erroneously
`construed “fluid pathway in the monolithic body,” and erroneously found
`that Stephan discloses, teaches, or suggests that claim limitation. See Req.
`Reh’g 10–13.
`
`III. DECISION ON REHEARING
`Accordingly, Patent Owner’s request for rehearing is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
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`
`
`IPR2017-01494
`Patent 7,683,509 B2
`For PETITIONER:
`
`Joshua Goldberg
`Thomas Winland
`Alyssa Holtslander
`James Barney
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`Joshua.goldberg@finnegan.com
`Tom.winland@finnegan.com
`Alyssa.holtslander@finnegan.com
`James.barney@finnegan.com
`
`Robert Mattson
`John Kern
`Lisa Mandrusiak
`OBLON, MCLELLAND, MAIER & NEUSTADT LLP
`cpdocketmattson@oblon.com
`cpdocketkern@oblon.com
`cpdocketmandrusiak@oblon.com
`
`For PATENT OWNER:
`
`John R. King
`Ted M. Cannon
`Bridget Smith
`KNOBBE MARTENS OLSON & BEAR
`2jrk@knobbe.com
`2tmc@knobbe.com
`2bzs@knobbe.com
`
`Tim Seeley
`James Hietala
`INTELLECTUAL VENTURES
`tims@intven.com
`jhietala@intven.com
`
`
`
`10
`
`
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