Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 45
`February 26, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AISIN SEIKI CO., LTD., TOYOTA MOTOR CORP. and
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-015391
`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 IPR2018-00444 has been joined with this proceeding.
`
`
`571.272.7822
`
`
`Paper No. 45
`February 26, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AISIN SEIKI CO., LTD., TOYOTA MOTOR CORP. and
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-015391
`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 IPR2018-00444 has been joined with this proceeding.
`
`
`
`IPR2017-01539
`Patent 7,683,509 B2
`
`I. INTRODUCTION
`Patent Owner filed a Request for Rehearing (Paper 44, “Req. Reh’g”)
`of our Final Written Decision, dated December 12, 2018 (Paper 43, “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 the Board: (1) misapprehended the ’509 Patent’s
`“pump embodiment,” causing the Board to misconstrue “fluid pathway in
`the monolithic body” and find erroneously that Umeda discloses, teaches, or
`suggests this claim limitation; (2) misapprehended Patent Owner’s argument
`addressing Umeda’s support frame 16; and (3) overlooked evidence that the
`motor being “fluid-cooled” is an important part of the invention. See Req.
`Reh’g 2–15. 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.
`
`
`
`2
`
`
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`IPR2017-01539
`Patent 7,683,509 B2
`
`Pump Embodiment
`Patent Owner contends that the Board’s rejection of Patent Owner’s
`claim construction in the Final Written Decision of IPR2017-014942 (“1494
`IPR”) 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 1494 IPR, Paper 36
`(“1494 IPR Final Dec.”), 17–18). Patent Owner asserts that the Board
`construed “pathway” identically in both the Final Written Decision for this
`IPR and the Final Written Decision for the 1494 IPR. See id. (citing Final
`Dec. 16; 1494 IPR Final Dec. 17–18). Patent Owner notes the Board’s Final
`Written Decision in this IPR does not include the entire discussion of the
`“pump embodiment” that is included in the Final Written Decision of the
`1494 IPR. See id. at 4. Notwithstanding, Patent Owner asserts the Board’s
`understanding of the “pump embodiment” necessarily formed a part of the
`claim construction analysis in both decisions, because that understanding
`informed the Board’s understanding of what “pathway” means in view of the
`’509 Patent Specification. See id.
`Patent Owner asserts that it “addressed the true nature of the ‘pump
`embodiment’ at the oral hearing.” Req. Reh’g 4–5 (reproducing Paper 42
`(“Tr.”), 31:1–32:7; citing Ex. 2019, slide 16). According to Patent Owner,
`“Patent Owner made it clear that the 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,
`
`
`2 IPR2017-01494 also challenged the ’509 Patent. The Final Written
`Decision for IPR2017-01494 also was entered on December 12, 2018.
`3
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`IPR2017-01539
`Patent 7,683,509 B2
`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 Umeda
`grounds in this IPR and the Stephan grounds in the 1494 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 the -01494 IPR.” Req. Reh’g 5–6
`(quoting 1494 IPR, Paper 29 (“1494 IPR 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 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 1494 IPR Sur-Reply. See id.
`(citing Ex. 2019, slide 16; 1494 IPR Sur-Reply 4–5).
`Patent Owner argues that, despite Patent Owner’s explanation, the
`Board misapprehended the nature of the “pump embodiment” because the
`“pump embodiment” of the ’737 Patent is not an embodiment of the claims
`4
`
`
`
`
`
`IPR2017-01539
`Patent 7,683,509 B2
`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 6–7 (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 8–9 (reproducing Ex. 1001,
`20:13–53, Fig 20 with annotations; citing Ex. 2019, slide 16; 1494 IPR 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:
`
`
`
`5
`
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`IPR2017-01539
`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 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. 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. at 10.
`
`Patent Owner does not direct us to any location in the Response or
`Sur-Reply filed in this IPR where Patent Owner addressed the “pump
`embodiment.” For this reason alone, we are not persuaded that we
`misapprehended or overlooked arguments or evidence previously addressed
`in the Patent Owner Response or Sur-Reply. For this same reason, we also
`are not persuaded by Patent Owner’s arguments that we erroneously
`6
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`IPR2017-01539
`Patent 7,683,509 B2
`construed “fluid pathway in the monolithic body,” and erroneously found
`that Umeda discloses, teaches, or suggests that claim limitation. See Req.
`Reh’g 10–12.
`
`Umeda’s Support Frame
`Patent Owner argues that the Board misapprehended Patent Owner’s
`argument that Umeda’s support frame 16 is not covered by a monolithic
`body. See Req. Reh’g 12 (citing Final Dec. 45); see also PO Resp. 36–37
`(Patent Owner’s argument). Patent Owner asserts that the Board accepted
`Petitioner’s argument that Patent Owner acknowledged that Umeda’s
`support frame 16 is part of resin pump casing cover 11. See id. (citing Final
`Dec. 46); see also Reply 16–17 (Petitioner’s argument). Patent Owner
`contends that it never admitted that support frame 16 is part of casing cover
`11, and asserts that Patent Owner argued the opposite. See id.
`Patent Owner contends that support frame 16 and casing cover 11
`have different reference numbers because they are different components.
`See Req. Reh’g 12. Patent Owner argues that Patent Owner has always
`asserted that support frame 16 is separate from, and not covered by, casing
`cover 11. See id. at 12–13 (quoting PO Resp. 20, 33, 36–37; citing PO
`Resp. 19–24). Patent Owner asserts that Petitioner used the color-coding in
`the figure on page 30 of the Patent Owner Response to support its assertion
`that Patent Owner admitted that support frame 16 is part of casing cover 11,
`but that this is a “manufacture[d] . . . spurious assertion.” Id. at 13 (citing
`PO Resp. 30); see also Reply 17 (reproducing annotated Umeda Figure 1
`from PO Resp. 30).
`Patent Owner’s reproduction of Umeda’s Figure 1 with annotations
`from page 30 of the Patent Owner Response is reproduced below:
`7
`
`
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`IPR2017-01539
`Patent 7,683,509 B2
`
`
`
`Patent Owner’s annotated reproduction of Umeda’s Figure 1 depicts casing
`cover 11 and support frame 16 shaded in green, and a label “Resin pump
`casing” also in the same green color, and molded stator A shaded in lime
`green and a label “Resin stator with high thermal conductivity” also in the
`same lime green color.3 According to Patent Owner, the text of Patent
`Owner’s Response refutes Petitioner’s assertion that the color-coding
`constitutes an admission. See Req. Reh’g 13–14. Patent Owner asserts “the
`figure Patent Owner used to show that support frame 16 is separate from and
`not covered by casing cover 11 does not include color-coding even remotely
`supporting Petitioner’s assertion.” Id. at 14 (citing PO Resp. 35). Finally,
`Patent Owner contends that the Board’s citation to paragraph 17 of Umeda
`does not show that support frame 16 is part of casing cover, but merely
`discloses the relative location of support frame 16 within intake port 12 of
`
`
`3 A similar annotated reproduction of Umeda’s Figure 1 with identical green
`shading for casing cover 11 and support frame 16 is included on page 27 of
`the Patent Owner Response.
`
`
`
`8
`
`
`
`IPR2017-01539
`Patent 7,683,509 B2
`casing cover 11. See Req. Reh’g 14; see also Reply 16 (Petitioner citing Ex.
`1004 ¶ 17 in support of its argument that Umeda’s support frame is part of
`casing cover 11).
`We are not persuaded by Patent Owner’s arguments, which are
`responsive to Petitioner’s Reply arguments. Patent Owner had an
`opportunity to address Petitioner’s Reply arguments in its Sur-Reply.
`Instead of addressing Petitioner’s Reply arguments in its Sur-Reply, Patent
`Owner now attempts to rebut Petitioner’s Reply arguments in its Request for
`Rehearing. A request for rehearing is not an opportunity to respond
`belatedly to Petitioner’s Reply arguments. For these reasons, we are not
`persuaded that we misapprehended or overlooked arguments and evidence in
`the Patent Owner Response or Sur-Reply.
`
`“Fluid-Cooled”
`Patent Owner contends “[t]he Board overlooks pages 8–10 of the
`Patent Owner Response, which establish in exhausting detail that the
`specification discloses that the motor or device being ‘fluid-cooled’ is a
`fundamental part of the invention that distinguishes the invention from
`‘existing motor designs’ with ‘limited effective dissipation of the heat.’”
`Req. Reh’g 14–15. Patent Owner asserts that the Board should consider this
`overlooked specification evidence and find that “fluid-cooled” is a claim
`limitation and find that the challenged claims are not unpatentable over
`Bramm. See id. at 15.
`We are not persuaded that we misapprehended or overlooked Patent
`Owner’s arguments at pages 8–10 of the Patent Owner Response. As
`addressed on page 11 of the Final Written Decision, we considered Patent
`Owner’s argument that the ’509 Patent Specification “repeatedly and
`9
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`IPR2017-01539
`Patent 7,683,509 B2
`consistently indicates that cooling of the motor is an important part of the
`invention disclosed and claimed in the ’509 Patent,” and considered Patent
`Owner’s numerous citations to the ’509 Patent in support of its arguments.
`See Final Dec. 11. Specifically, the Final Written Decision at page 11 cites
`the numerous passages of the ’509 Patent quoted by Patent Owner on pages
`8 through 10 of the Patent Owner Response (i.e., Ex. 1001, Abstract, 1:6–9,
`1:43–58, 2:6–9, 2:15–19). Thus, in rendering the Final Written Decision, we
`did not overlook Patent Owner’s arguments on pages 8–10 of the Response
`and the disclosures of the ’509 Patent (Ex. 1001, Abstract, 1:6–9, 1:43–58,
`2:6–9, 2:15–19) cited therein by Patent Owner in support of its arguments.
`Accordingly, we are not persuaded that we overlooked arguments or
`evidence at pages 8–10 of the Patent Owner’s Response addressing “fluid
`cooled.”
`
`III. DECISION ON REHEARING
`
`Accordingly, Patent Owner’s request for rehearing is denied.
`
`
`
`
`
`
`
`
`
`
`10
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`
`
`IPR2017-01539
`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
`
`
`
`
`11
`
`
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