9317345.2
` UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`TESLA, INC.
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC
`Patent Owner.
`Case No. IPR2025-00340
`U.S. Patent No. 6,894,639
`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
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`ii
`TABLE OF CONTENTS
`PATENT OWNER’S EXHIBIT LIST .................................................................... iii
`I. INTRODUCTION ............................................................................................ 1
`II. STATEMENT OF FACTS ............................................................................... 2
`A. The Petition And The Patent Owner Preliminary Response .................. 2
`B. Petitioner’s Pre-Institution Reply ........................................................... 3
`C. The Institution Decision ......................................................................... 6
`III. THE OFFICE HAS EMPHASIZED THE IMPORTANCE OF
`CONSISTENCY BETWEEN THE CLAIM CONTRUCTION APPLIED IN
`THE PTAB AND THE FEDERAL COURT, AND THE NEED TO
`PREVENT CHALLENGERS FROM TAKING INCONSISTENT CLAIM
`CONSTRUCTION POSTIONS BEFORE THE PTAB AND THE
`FEDERAL COURT .......................................................................................... 9
`IV. EXCEPT IN LIMITED CIRCUMSTANCES NOT PRESENT HERE, THE
`BOARD MUST DENY INSTITUTION IF IT CANNOT ASCERTAIN THE
`SCOPE OF THE CHALLENGED CLAIMS WITH REASONABLE
`CERTAINTY ..................................................................................................11
`V. THE HOLDING IN CAMBRIDGE IS CONTRARY TO THE
`INSTITUTION DECISION ............................................................................13
`VI. CONCLUSION ...............................................................................................15
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`iii
`9317345.2
`PATENT OWNER’S EXHIBIT LIST
`EX2001 Petitioner’s Answer to Complaint and Counterclaim, dated June 20,
`2024, in Intellectual Ventures II LLC v. Tesla, Inc ., C.A. 1:24-cv-
`00884-ADA (W.D. Tex.)
`EX2002 Docket from District Court Litigation, Intellectual Ventures II LLC v.
`Tesla, Inc., C.A. 1:24-cv-00884-ADA (W.D. Tex.)
`EX2003 Scheduling Order from District Court Litigation, Intellectual
`Ventures II LLC v. Tesla, Inc., C.A. 1:24-cv-00884-ADA (W.D. Tex.)
`EX2004 Defendant’s Second Supplemental Preliminary Invalidity
`Contentions, dated January 9, 2025, in District Court Litigation,
`Intellectual Ventures II LLC v. Tesla, Inc., C.A. 1:24-cv-00884-ADA
`(W.D. Tex.)
`EX2005 Letter from Patent Owner to Associate General Counsel for
`Petitioner, dated August 20, 2020, enclosing copy of U.S. Pat. No.
`7,181,143 and Claim Chart Presentation
`EX2006 Sanger, T. D. “Optimal Unsupervised Learning.” Neural Networks
`vol. 2, pp. 459-473 (1989)
`EX2007 Declaration of Dr. Majumder In Support Of
`Patent Owner’s Preliminary Response.
`EX2008 CV of Dr. Majumder
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`I. INTRODUCTION
`Patent Owner hereby requests Director Review of the Board’s Decision
`Granting Institution of Inter Partes Review (Paper #13) (“the Institution Decision”)
`because the Board failed to follow Cambridge Mobile Telematics, v. Sfara,
`IPR2024-00952, Paper 12 (designated informative Mar. 20, 2025), or Samsung Elecs.
`Am. Inc. v. Priusa Eng’g Corp., 948 F.3d 1342, 1355 (Fed. Cir. 2020) and Intel
`Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021).
`In the district court, Petitioner contends that a POSITA would not be able to
`ascertain the meaning of the claims, while Petitioner posits to the Board that a
`POSITA would understand the ordinary and customary meaning of the claims.
`Neither Petitioner, nor the Institution Decision, provided any explanation why
`inconsistent claim positions are warranted here, as required by Cambridge.
`Petitioner emphasized in the district court that the claim language was
`indefinite because it has “multiple, equally plausible” interpretations, while before
`the Board, the Petitioner adopts only one of those “equally plausible” interpretations.
`Neither Petitioner nor the Board explained how it is logically possible for the Board
`to assess patentability over the prior art based on only one of “multiple, equally
`plausible” interpretations of the claim language, as required by Samsung and Intel.
`For these reasons, the Institution Decision erred as a matter of law and should
`be vacated.
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`II. STATEMENT OF FACTS
`A. The Petition And The Patent Owner Preliminary Response
`Independent claim 1 of the ‘639 Patent recites “generating said target feature
`information from said data statistics” (hereinafter, the “Generating Limitation”). As
`explained in the Patent Owner Preliminary Response (Paper #8) (“POPR”), in the
`district court, Petitioner took the position that the Generating Limitation is indefinite
`because a POSITA would not be able to determine the “meaning and scope” of this
`limitation “with reasonable certainty.” EX2004, 227-228; POPR, 9-10.
`By contrast, in this IPR, Petitioner stated “no claim term requires express
`construction” (Petition, 10), and Petitioner’s expert stated that each claim term
`should be given its ordinary and customary meaning in light of the specification and
`prosecution history:
` 38. It is my understanding that in order to properly
`evaluate the ‘639 Patent, the terms of the claims must first be
`interpreted. It is my understanding that for the purposes of this
`inter partes review, the claims are to be given their ordinary
`and customary meaning as would be understood by one of
`ordinary skill in the art at the time of invention in light of the
`specification and prosecution history, unless the inventor has
`set forth a special meaning for a term.
` 39. It is my opinion that none of the claim terms require a
`specific construction for the purposes of my analysis in this
`declaration, and all will be given their ordinary and customary
`meaning in light of the specification and prosecution history of
`the ‘639 Patent. EX1003, ¶¶38-39 (emphasis added).
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`See, POPR, 10-11. Petitioner’s inconsistent claim construction positions in the
`district court and this IPR cannot be reconciled. POPR, 11. In the district court,
`Petitioner contends that a POSITA would not be able to ascertain the meaning of the
`claim language, while in this IPR, the Petition posits that such a person would
`understand the ordinary and customary meaning of the same claim language.
`The Petition lacked any explanation why inconsistent positions were
`warranted in this case, or how the Board could assess the patentability of the
`challenged claims over the prior art if a POSITA would be unable to ascertain the
`meaning of the claim language with reasonable certainty.
`B. Petitioner’s Pre-Institution Reply
`Petitioner filed a Pre-Institution Reply (Paper #11) (“Reply”), where
`Petitioner, once again, failed to address its contention in the district court that a
`POSITA would not be able to determine the “meaning and scope” of the Generating
`Limitation “with reasonable certainty.” EX2004, 227-228. Instead, the Reply
`pivoted to another argument that Petitioner advanced in the district court, namely,
`that “said target feature information” in claim 1 was indefinite because “it lacks
`antecedent basis and can potentially be interpreted in multiple ways .” Reply, 6;
`EX1070, 8-11. With respect to indefiniteness based on “lack of antecedent basis,”
`Petitioner emphasized to the district court:
`The term “said target feature information” is indefinite because
`it lacks antecedent basis and can potentially be interpreted in multiple
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`ways. The claim language and specification provide multiple, equally
`plausible, ways to address the lack of antecedent basis, and the
`prosecution history only adds confusion. ...
`There can be no dispute the term “said target feature information”
`lacks antecedent basis. The term refers to “said target feature
`information” even though the claims do not previously introduce
`“target feature information.” Thus, the term must be construed to
`correct the absence of an antecedent basis. But it is unclear how that
`can be accomplished because there are at least two ways to remedy the
`absence of antecedent basis and neither is more likely correct than the
`other. First, “said target feature information” could refer to “a target
`feature information,” which means the word “said” was drafted
`erroneously. This rewrite would introduce a concept (“target feature
`information”) to the claim that is not found in any of the other
`limitations. Second, “said target feature information” could refer to
`“said target specific feature information,” which would mean “specific”
`was omitted erroneously. This second rewrite would make all the
`“feature information” the same throughout the claim, but it would
`change the meaning of the term entirely. Neither option is more likely
`correct than the other in view of the intrinsic record and, thus, neither
`is appropriate. ...
`Therefore, a POSITA would not know if “said target feature
`information” is intended to (i) introduce “target feature information”
`(another type of information distinct from and broader than the
`previously introduced “target specific feature information”), or (ii)
`refer back to the previously introduced “target specific feature
`information.” EX1070, 8-11 (citations omitted) (emphasis added).
`Thus, with respect to “said target feature information,” Petitioner represented
`to the district court that the “claim language and specification provide multiple,
`equally plausible, ways to address the lack of antecedent basis, and the prosecution
`history only adds confusion.” EX2004, 227-228; EX1070, 8-11. While before the
`Board, the Petitioner adopts only one of those “equally plausible” interpretations.
`Compare, EX1070, 8-11 (Petitioner’s claim construction in the district court alleging
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`that it is equally plausible that “said target feature information” could refer to (i) “a
`target feature information” which would introduce a new concept (“target feature
`information”) into the claim, or (ii) “said target specific feature information”) with
`Institution Decision, at 11 (“the Petition assumes, for purposes of the unpatentability
`grounds presented herein, that ‘said target feature information’ recited in [1.3] is the
`‘target specific feature information’ recited in [1.2], as well as [1.4] and [1.5]”)
`In the Reply, Petitioner argued that its assertion that the claim language was
`indefinite in the district court was not inconsistent with its position that the same
`claim language be interpreted according to its plain and ordinary meaning in this
`IPR, “because Petitioner cannot raise indefiniteness challenges in this IPR.” Reply,
`6. However, one does not follow from the other: the fact that Petitioner cannot raise
`indefiniteness in this IPR does not make Petitioner’s claim construction positions
`here and in the district court any less inconsistent.
`In the Reply, Petitioner went on to argue:
`... [E]ven if Petitioner’s claim construction positions are viewed as
`“inconsistent,” the Board has made clear that its “rules do not
`necessarily prohibit petitioners from taking inconsistent claim
`construction positions before the Board and a district court.”
`Cambridge Mobile Telematics, Inc. v. Sfara, Inc ., IPR2024-00952,
`Paper 12 at 8 (Dec. 13, 2024) (designated informative Mar. 20, 2025).
`Rather, Cambridge provides that if a petitioner is taking different claim
`construction positions in the IPR and parallel litigation, the petitioner
`should explain “why the inconsistent positions are warranted.” Id.
`Petitioner did that here, explicitly explaining how the claim terms of
`[1.3] and claim 7 were being interpreted “for purposes of the
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`unpatentability grounds presented [in the Petition]. ” Pet., 23 n.3; 36
`n.4. Reply, 6-7 (emphasis added).
`Focusing on the language underlined above, Petitioner's assertions that the
`claim language can be interpreted one way “for purposes of the unpatentability
`grounds presented [in the Petition],” and the opposite way in district court,
`demonstrate only the existence of Petitioner’s inconsistent positions. Absent is an
`explanation why inconsistent positions are warranted here. Also missing is an
`explanation how the Board could assess the patentability over the prior art based on
`only one interpretation of the claim language if, as Petitioner emphasized to the
`district court, “[t]he claim language and specification provide multiple, equally
`plausible” interpretations.” EX1070, 8.
`C. The Institution Decision
`In the Institution Decision, the Board reasoned:
`In the Petition, Petitioner contends that “no claim term requires
`express construction” for the purposes of this proceeding. Pet. 10.
`In response, Patent Owner argues the Board should deny
`institution because “the Petition fails to satisfy the requirement to
`provide a clear and consistent articulation of how the challenged claims
`are to be construed” as “Petitioner’s claim construction theory in this
`proceeding rests on a meaning it disputes elsewhere.” Prelim. Resp. 11.
`More particularly, Patent Owner argues Dr. Rodriguez’s statement that
`the claims “are to be given their ordinary and customary meaning as
`would be understood by one of ordinary skill in the art” cannot be
`reconciled with Petitioner’s district court claim construction position,
`namely that the limitation reciting “generating said target feature
`information from said data statistics” in claim 1 is indefinite. Id. at 9–
`11 (quoting Ex. 1003 ¶¶ 38–39; Ex. 2004, 227–28).
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`Petitioner responds that its claim construction positions in the
`district court litigation are not inconsistent with the plain and ordinary
`meaning it applies here. Reply 5–6. Petitioner contends that in the
`district court litigation, it argued that “the term ‘said target feature
`information’ in claim 1 and the term ‘said feature information’ in
`dependent claim 7 are indefinite for lack of antecedent basis”—an
`argument Petitioner cannot raise in an inter partes review. Id. at 6.
`We decline to deny institution based on Petitioner’s claim
`construction positions. The issue before us under 37 C.F.R. § 42.104(b)
`is whether the Petition provides Patent Owner sufficient notice of its
`claim construction and how Petitioner applies the asserted prior art in
`light of that construction. 10X Genomics, Inc. v. Bio-Rad Laboratories,
`IPR2020-00086 Paper 8 at 18–19, 21 (PTAB Apr. 27, 2020). The
`Petition includes an analysis of each claim limitation of the challenged
`claims that shows how Petitioner is applying the prior art. See, e.g., Pet.
`23 n. 3 (citing Ex. 1003 ¶ 79) (explaining that “the Petition assumes,
`for purposes of the unpatentability grounds presented herein, that ‘said
`target feature information’ recited in [1.3] is the ‘target specific feature
`information’ recited in [1.2], as well as [1.4] and [1.5]”). The difference
`in Petitioner’s construction in one forum versus another is not
`necessarily inconsistent, and the Board’s rules “do not necessarily
`prohibit petitioners from taking inconsistent claim construction
`positions before the Board and a district court.” Cambridge Mobile
`Telematics, Inc. v. Sfara, Inc., IPR2024-00952, Paper 12 at 8 (Dec. 13,
`2024) (designated informative Mar. 20, 2025). As Petitioner notes
`(Reply 6), indefiniteness challenges cannot be raised in an inter partes
`review. See 35 U.S.C. § 311(b). Moreover, indefiniteness “does not
`necessarily preclude the Board from addressing the patentability of the
`claims on section 102 and 103 grounds. ” Samsung Elecs. Am. Inc. v.
`Priusa Eng’g Corp., 948 F.3d 1342, 1355 (Fed. Cir. 2020); see also
`Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (“The
`indefiniteness of a limitation . . . precludes a patentability determination
`only when the indefiniteness renders it logically impossible for the
`Board to reach such a decision.”) Institution Decision, 10-12 (emphasis
`added).
`The Board erred in its analysis of Petitioner’s inconsistent claim construction
`positions, and its application of Cambridge, Samsung Elecs., and Intel to the present
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`facts. Missing from the Board’s analysis was an acceptable rationale (as required by
`Cambridge) as to why inconsistent positions are warranted here. Cambridge held
`that where, as here, a Petitioner emphasized to the district court that the claim
`language was indefinite, the mere fact that a Petitioner cannot raise indefiniteness in
`an IPR (without more) is not an explanation why inconsistent positions are warranted.
`In addition, the Samsung and Intel decisions relied on in the Institution
`Decision stand for the general rule that a claim cannot be both indefinite and invalid
`over the prior art. While the Samsung and Intel decisions identified two limited
`exceptions to that rule (neither of which even arguably applies here) and therefore
`found in those cases that indefiniteness does not necessarily preclude the Board from
`addressing patentability based on prior art, those decisions make clear that if the
`claim language is indefinite, the Board cannot proceed unless the circumstances
`logically permit application of the prior art to the claims. The Institution Decision
`fails to explain how it would be logically possible to apply the prior art to the claims
`if, as Petitioner contends in the district court: (i) a POSITA would not be able to
`determine the “meaning and scope” of the Generating Limitation “with reasonable
`certainty,” and (ii) with respect to “said target feature information,” the “claim
`language and specification provide multiple, equally plausible, ways to address the
`lack of antecedent basis, and the prosecution history only adds confusion.” EX2004,
`227-228; EX1070, 8-11.
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`III. THE OFFICE HAS EMPHASIZED THE IMPORTANCE OF
`CONSISTENCY BETWEEN THE CLAIM CONTRUCTION APPLIED
`IN THE PTAB AND THE FEDERAL COURT, AND THE NEED TO
`PREVENT CHALLENGERS FROM TAKING INCONSISTENT
`CLAIM CONSTRUCTION POSTIONS BEFORE THE PTAB AND
`THE FEDERAL COURT
`On October 11, 2018, the Office issued a Final Rule directed to “Changes to
`the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before
`The Patent Trial and Appeal Board.” 83 FR 51340, Docket No. PTO-P-2018-0036.
`Document No. 2018-22006 (“the Final Rule”). Prior to that time, “the PTAB
`construed unexpired patent claims and proposed substitute claims in AIA
`proceedings using the BRI standard.” Id. The Final Rule changed that practice by
`requiring the PTAB to “apply the same standard applied in federal courts to construe
`patent claims,” i.e., the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc), and its progeny. Id. In making the change, the Office
`found that “[m]inimizing differences between claim construction standards used in
`the various fora will lead to greater uniformity and predictability of the patent grant,
`improving the integrity of the patent system.” Id. (emphasis added). In the Final Rule,
`the Office found that “the possibility of differing constructions for the same claim
`term is troubling, especially when claim construction takes place at the same time in
`parallel district court proceedings and USPTO proceedings.” Id. (emphasis added).
`In issuing the Final Rule, the Office stressed the importance that there be
`consistency between what occurs in the Federal Courts and the PTAB. For example,
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`the Final Rule explained that “[b]y maintaining consistency among the various
`proceedings, the integrity, predictability and reliability of the patent system is thus
`enhanced.” Id. at 51345 , see also , 51346 (“applying the federal court claim
`construction standard in AIA proceedings” will “lead to greater consistency with the
`federal courts and the ITC, where such consistency will lead to greater certainty as
`to the scope of issued patent claims, but it will also help achieve the goal of
`increasing judicial efficiency”) (emphasis added).
`In the Final Rule, the Office agreed “that harmonizing the claim construction
`standards would prevent parties from taking inconsistent positions .” Id. at 51347,
`(Comment 8 and Response) (emphasis added). In keeping with this goal, the Final
`Rule explained:
` ... With a uniform application of the Phillips standard, patent
`challengers will have less flexibility to advance inconsistent arguments
`about claim scope, and will instead be required to choose a single claim
`construction that best captures the true meaning of the patent claim,
`because they will not be able to justify different constructions as being
`the mere result of different claim construction standards.” Id. at 51350
`(emphasis added).
`* * *
`.. This will increase the likelihood that claims are not argued one way
`in order to maintain their patentability (or to show that the claims are
`unpatentable) and in a different way against an opposing party in an
`infringement case, ... Id. at 51350, (emphasis added).
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`IV. EXCEPT IN LIMITED CIRCUMSTANCES NOT PRESENT HERE,
`THE BOARD MUST DENY INSTITUTION IF IT CANNOT
`ASCERTAIN THE SCOPE OF THE CHALLENGED CLAIMS WITH
`REASONABLE CERTAINTY
`As a general rule, a claim cannot be both indefinite and invalid over the prior
`art. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“a
`claim cannot be both indefinite and anticipated”). In Samsung, the Court reiterated
`this general rule by stating that if the Board “cannot ascertain the scope of a claim
`with reasonable certainty for purposes of assessing patentability,” the “proper
`course for the Board to follow ... is to decline to institute the IPR.” Samsung, 942 F.
`3d 1342, 1353. In Samsung, the Court identified a potential exception to the general
`rule that a claim cannot be both indefinite and invalid over the prior art. There, the
`challenger asserted that the claim in question was indefinite because the claim
`combined two statutory classes, namely, an apparatus and a method. Id., 1349,
`1353.1 The Court explained that the mere fact that the claim combined two statutory
`classes “does not speak to whether the claim is also invalid for obviousness,
`regardless of whether it is treated as being directed to an apparatus or a method.”
`Id., 1355. Based on those facts, the Court held that the indefiniteness “does not
`necessarily” preclude the Board for addressing patentability based on anticipation
`1 In IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1883-1384 (Fed.
`Cir. 2005), the Court held that “a single claim covering both an apparatus and a
`method of use of that apparatus is invalid” based on indefiniteness.
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`or obviousness, and remanded the case to the Board to address whether it was
`possible to assess invalidity based on prior art in that limited situation. Significantly,
`the Court in Samsung explained that its decision was “limited to IPXL-type
`indefiniteness and does not affect claims that are indefinite for other reasons .” Id.,
`1356, note 5. In so doing, the Court cited its decision in Enzo Biochem stating that
`“a claim cannot be both indefinite and anticipated.” Id., citing, Enzo Biochem, 599
`F.3d 1325, 1332.
`In Intel, the Court reiterated that the statutory obligation to issue a final written
`decision “does not mean that the Board must reach a determination of the
`patentability of a claim on the presented prior-art grounds if such a determination is
`rendered impossible because of the indefiniteness of an essential claim limitation.”
`Intel, 21 F. 4th 801, 812. Citing the narrow exception addressed in Samsung, the
`Court noted that “it is not always impossible to adjudicate a prior-art challenge, one
`way or the other, just because some aspect of a claim renders the claim indefinite.
`Id. Then, the Court articulated further situations where indefiniteness “does not
`necessarily preclude the Board from addressing the patentability of the claims on
`section 102 and 103 grounds”:
`... For example, the indefiniteness of one limitation may not preclude
`the Board from rejecting a challenge by finding that another limitation
`is missing from the argued prior art and its argued combinations and
`modifications. In the other direction, if a claim limitation requires
`alternative limitations A or B, and A is indefinite, but B is not, the
`Board may well be able to determine that the argued prior art and its
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`argued combinations or modifications cover the B option, thus
`satisfying the A or B limitation. Id. (emphasis added).
`The Court’s decisions in Samsung and Qualcomm do not diminish the general
`proposition that a claim cannot be both indefinite and invalid over the prior art. Enzo
`Biochem, 599 F.3d 1325, 1332. Rather, those cases articulate limited exceptions to
`that general rule, none of which are present here.
`Neither Samsung nor Qualcomm even remotely suggest that where, as here, a
`Petitioner emphasized to the district court that there are “multiple, equally plausible”
`interpretations” of the claim language, it would be logically possible for the Board
`to assess patentability by applying the prior art to only one of such “multiple, equally
`plausible” interpretations. That is because it is not logically possible to assess
`patentability by applying the prior art to only one of “multiple, equally plausible ”
`interpretations. Neither the Petition nor the Institution Decision provide any
`explanation to the contrary.
`V. THE HOLDING IN CAMBRIDGE IS CONTRARY TO THE
`INSTITUTION DECISION
`In Cambridge, the Petitioner argued in parallel district court proceedings that
`several terms in the challenged claims “should be means-plus-function terms
`governed by §112(f) and that such terms are indefinite for failure to identify
`corresponding structure to perform the recited functions.” Cambridge, IPR2024-
`00952, Paper #12 , at 7 (emphasis added). However, in the IPR the Petitioner took a
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`contrary position that the claim terms should be given their “plain and ordinary
`meaning ... consistent with Patent Owner’s litigation position.” Id., at 7 (emphasis
`added). In denying institution, the Board reasoned:
`Under these facts we determine that 37 C.F.R. § 42.104(b)(3)
`mandates that the Petition “identify the specific portions of the
`specification that describe the structure, material, or acts corresponding
`to each claimed function.” The Petition failed to do so. At a minimum,
`the Petition should have explained why the plain and ordinary meaning
`of the “component” terms should apply in this proceeding (why the
`inconsistent positions are warranted) or set forth an alternative means-
`plus-function claim construction. CTPG 45.
`While the Board clarified that Petitioners are “not necessarily” prohibited
`from taking inconsistent claim constructions, the Board made clear that the Petition
`must explain why inconsistent positions are warranted. The holding of Cambridge
`makes clear that where a Petitioner asserts in district court that a claim term is
`indefinite, the Petition is deficient if it merely argues that the Board in the IPR should
`apply the “plain and ordinary meaning” of the term. The present Petition is on all
`fours with Cambridge, because the present Petitioner asserts in district court that
`claim terms are indefinite, and merely argues that the Board in the IPR should apply
`the “plain and ordinary meaning” of the term because a Petitioner cannot allege
`indefiniteness in an IPR (a constraint also present in Cambridge and every other
`IPR). Under Cambridge, the fact that a Petitioner cannot allege indefiniteness in an
`IPR standing alone does not suffice for explaining why inconsistent positions are
`warranted.
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`VI. CONCLUSION
`In rule making, the Office has stressed the need for consistency between what
`occurs in the Federal Courts and the PTAB, and the importance of requiring
`challengers to choose a single claim construction. Consistent with those policies, the
`Board in Cambridge declined to institute and stated that when a Petition presents
`inconsistent positions, an IPR can only go forward if the Petition presents an
`explanation why the circumstances warrant doing so. No such explanation was
`present here, and the Institution Decision therefore erred as a matter of law in
`allowing this IPR to proceed.
`Moreover, as a general matter, a claim cannot be both indefinite and invalid
`over the prior art. While there may be limited exceptions to this rule, Samsung and
`Qualcomm explain that those exceptions are limited to situations where, despite the
`indefiniteness, it is still logically possible for the Board to assess patentability over
`the prior art. The Institution Decision here failed to provide any explanation how it
`is logically possible for the Board to assess patentability by applying the prior art to
`only one of “multiple, equally plausible” interpretations, and as a practical matter it
`is not logically possible to do so. For this additional reason, the Institution Decision
`erred as a matter of law in allowing this IPR to proceed.
`For these reasons, the Institution Decision should be vacated and institution
`of the IPR should be denied.
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`Respectfully submitted,
`Dated: September 5, 2025 By: /Brandon R. Theiss/
`Brandon R. Theiss
`Registration No. 70,507
`Counsel for Patent Owner
`Intellectual Ventures II LLC
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`CERTIFICATE OF SERVICE
`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a copy of the
`foregoing PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW was
`served via email (as consented to by counsel) on September 5, 2025 to lead and
`backup counsel of record for Petitioner as follows:
`Jonathan R. Bowser
`jon.bowser.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2801 N. Harwood Street, Suite 2300
`Dallas, TX 75201
`Gregory P. Webb
`greg.webb.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2801 N. Harwood Street, Suite 2300
`Dallas, TX 75201
`Scott T. Jarratt
`scott.jarratt.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2801 N. Harwood Street, Suite 2300
`Dallas, TX 75201
`Matthew Beck
`matthew.beck.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2801 N. Harwood Street, Suite 2300
`Dallas, TX 75201
`Paul Margulies
`pmargulies@tesla.com
`TESLA, INC.
`1 Tesla Road
` Austin, Texas 78725
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`9317345.2
`Dated: September 5, 2025 By: /Brandon R. Theiss/
`Brandon R. Theiss
`Registration No. 70,507
`Counsel for Patent Owner
`Intellectual Ventures II LLC
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