UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TESLA, INC.,
`Petitioner
`
`V.
`
`GRANITE VEHICLE VENTURES LLC,
`Patent Owner
`
`Inter Partes Review Case No. [PR2025-01034
`U.S. Patent No. 12,037,004
`(Claims 1-9, 29-39)
`
`PETITIONER’S SUR-REPLY IN SUPPORT OF ITS OPPOSITION TO
`PATENT OWNER’S
`REQUEST FOR DISCRETIONARY DENIAL
`
`
`
`
`
`
`
`
`IPR2025-01034
`U.S. Patent No. 12,037,004
`
`Patent Owner’s Reply provides no basis to grant Patent Owner’s Request for
`Discretionary Denial.
`
`First, regarding Fintiv Factors 1 and 2, Tesla submitted relevant metrics,
`demonstrating that Judge Gilstrap’s recent patent trials are regularly rescheduled.
`Paper 9, 11-12. Tesla provided the recent patent cases’ docket sheets to illustrate
`this. Id. Tesla did not then “switch[]” to the median time to trial. Paper 11, 1. Instead,
`Tesla demonstrated that the average time-to-trial for Judge Gilstrap’s recent patent
`cases aligns with the median time-to-trial statistics for the Eastern District. Paper 9,
`11-12. Tesla also justified limiting its analysis to Judge Gilstrap’s recent patent trials
`that were rescheduled. /d., 13—14. Judge Gilstrap currently has seven other cases
`scheduled for trial on the same day as the Parallel Litigation. /d. Judge Gilstrap
`cannot hold all these trials as scheduled. Consequently, the Director should credit
`Tesla’s statistics, which align with that reality. Regardless, whether trial occurs
`shortly after the Board’s final decision, as Tesla showed is likely, or slightly before,
`as Patent Owner contends, Fintiv Factor 2 is, at worst, neutral. Moreover, the
`Director should determine that Tesla’s Broadened Sotera+ stipulation, ignored by
`Patent Owner, eliminates the risk of any overlap between this IPR and the Parallel
`
`Litigation and outweighs any timing concerns. The Director’s prior decisions did not
`
`account for these considerations and, consequently, should not control here.
`1
`
`
`
`
`
`
`
`
`IPR2025-01034
`U.S. Patent No. 12,037,004
`Second, Patent Owner’s reliance on Ecto World is inapposite. Paper 11, 2
`(citing Ecto World LLC v. RAI Strategic Hold gs Inc., IPR2024-01280, Paper 13 at
`5 (PTAB May 19, 2025) (Acting Dir. C.M. Stewart) (precedential)). There, the
`Director held only that “a petitioner must provide an [Advanced Bionics part two]
`analysis even when the asserted prior art is on an IDS[.]” Ecto World, Paper 13 at 5.
`But Advanced Bionics is not relevant to this proceeding because, as Patent Owner
`acknowledges, Tesla’s IPR art was not before the Examiner during examination.
`Paper 11, 2. Nor is it a prerequisite to showing material error that the [PR art was
`cited during examination. See W. Digital Techs., Inc. v. Godo Kaisha IP Bridge 1,
`IPR2025-00701, Paper 9 at 2 (PTAB Aug. 14, 2025) (material error was the
`erroneous identification of the allowable subject matter); see also id., Paper 1 at 6
`(presenting grounds not including the reference underlying the material error).
`Next, Patent Owner claims there 1s nothing wrong with the Examiner reusing
`previously drafted summaries of the prior art identified during the examination of
`both the 004 Patent’s parent (the 765 Patent) and grandparent applications in the
`’004 Patent’s Notice of Allowance. Paper 11, 2. But that is not the material error
`Tesla 1dentified and demonstrated. The error Tesla demonstrated was that the
`
`Examiner, in the notice of allowance for the 004 Patent, cited the same prior art he
`
`had cited in the notices of allowance of both the 765 Patent and its parent, despite
`2
`
`
`
`
`
`
`
`
`IPR2025-01034
`
`U.S. Patent No. 12,037,004
`
`the 004 Patent’s claims differing in scope from those of the *765 Patent and its
`
`parent Paper 9, 6-7. Tesla supported its conclusion by showing that prior art cited
`
`on the face of the 004 Patent itself, though not cited by the Examiner, disclosed key
`
`limitations of the Challenged Claims and that the prior art in the Petition rendered
`
`the Challenged Claims obvious. /d., 7-8. Patent Owner disputes neither showing.
`
`Paper 11, 2-3. Thus, having established prior material error, the grounds presented
`
`in the Petition rectify that error by demonstrating the obviousness of the Challenged
`Claims.
`
`Third, Patent Owner’s attempt to minimize Tesla’s authority supporting its
`“number of references” argument because those cases did not involve IPRs lacks
`merit. Paper 11, 3. The legal standard for obviousness does not change between
`examination, reexam, and IPR. Critically, the Board has affirmed Tesla’s very
`argument. See Silicon Lab’ys, Inc. v. Cresta Tech. Corp., [IPR2015-00626, Paper 65
`at 55 n42 (PTAB Aug. 11, 2016) (“The proper criterion is not the number of
`references; rather, the proper criterion is what the references would have meant to a
`[POSITA.]”) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991). Moreover,
`Patent Owner does not substantively challenge Tesla’s reliance on Gorman, where
`
`the Federal Circuit collected cases affirming obviousness findings based on
`
`combinations of between six and eight prior art references. Paper 9, 21-22 (citing
`3
`
`
`
`
`
`
`
`
`IPR2025-01034
`U.S. Patent No. 12,037,004
`Gorman, 933 F.2d at 986). Biogen, relied on by Patent Owner, supports Tesla’s
`argument, not Patent Owner’s. Paper 11, 4 (citing Biogen, Inc. v. lancu, No. 19-
`1364). There, the Federal Circuit summarily affirmed the Board’s decision finding
`the challenged claims obvious over a five-reference combination. Biogen, Inc. v.
`lancu, 831 F. App’x 506, 507 (Fed. Cir. 2020); Pfizer, Inc. v. Biogen, Inc., IPR2017-
`01168, Paper 59 (PTAB Oct. 31, 2018) (final decision on appeal).
`Finally, Patent Owner’s claim that Tesla “misstates the holding of Tesla, Inc.
`v. Intellectual Ventures I1 LLC, IPR2025-00217, Paper 9 at 3 (PTAB June 13,2025)”
`is meritless. Paper 11, 4. First, Tesla quoted the Director’s own language in its
`Response Brief. Paper 9, 23. Second, Tesla argued only that the convoluted
`permutations of the 004 Patent’s claimed invention are comparable to the assertion
`of a “large number and vast scope” of patents. Paper 9, 23. So just as the Board is
`“better suited to review” validity challenges to a larger number of patents having a
`vast scope, the Board is better suited to review the large number of convoluted
`permutations of the 004 Patent’s claimed invention. /d. Moreover, the 004 Patent’s
`Challenged Claims are even more complex than the Challenged Claims in Tesla’s
`’402 and *765 1PR proceedings, making Board review even more appropriate.
`
`Regardless, Tesla demonstrated in its Petition and Response Brief that
`
`Hampiholi alone “teach[es] the majority of the independent claims’ limitations.”
`4
`
`
`
`
`
`
`
`
`IPR2025-01034
`
`U.S. Patent No. 12,037,004
`
`Paper 9, 22 (citing Paper 1). The recitation of extraneous, well-known limitations
`
`throughout the Challenged Claims does not, in and of itself, render the Claims non-
`
`obvious. 1d., 23; see, e.g. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
`
`1356, 136667 (Fed. Cir. 2008) (explaining that often a [POSITA] can fit prior art
`
`teachings together like puzzle pieces, and the resulting combination will more likely
`
`be obvious where the combination arranges known elements to perform their same
`functions).
`
`Fourth, Patent Owner’s characterization of Tesla’s typical document
`production evidence as “extraordinary” fails. Paper 11, 5. As Tesla explained in its
`Response Brief, even the Federal Circuit has agreed with Tesla’s position. Paper 9,
`15 (citing Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1327 (Fed. Cir. 2011).
`Patent Owner tries to side-step the Federal Circuit’s decision by claiming its
`language was taken “out-of-context” because the Federal Circuit was addressing
`sanctions. Paper 11, 5. But the Federal Circuit’s observation was general in nature
`and not tied to the sanctions issue before it. Eon-Net, 653 F.3d at 1327.
`
`Fifth, Tesla maintains its constitutional and policy arguments (Paper 14, 30—
`
`37) and disputes Patent Owner’s contention that SAS empowers the Director to deny
`
`institution for any reason. Paper 15, 5.
`
`
`
`
`
`
`
`
`IPR2025-01034
`U.S. Patent No. 12,037,004
`Respectfully submitted,
`
`BY: /s/ Jennifer C. Bailey
`Jennifer C. Bailey, Reg. No. 52,583
`
`COUNSEL FOR PETITIONER
`
`
`
`
`
`
`
`
`IPR2025-01034
`U.S. Patent No. 12,037,004
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on October 6,
`2025, the foregoing Petitioner’s Sur-Reply In Support Of Its Opposition To Patent
`Owner’s Request For Discretionary Denial were served via electronic filing with
`the Board and via Electronic Mail on the following counsel of record for Patent
`
`Owner:
`
`Kyle E. Friesen (kfriesen@hpcllp.com)
`Kyle S. Ruvolo (kruvolo@hpcllp.com)
`Lily R. Glick (Iglick@hpcllp.com)
`GVVTSLA-IPR@hpcllp.com
`
`BY: /s/ Jennifer C. Bailey
`Jennifer C. Bailey, Reg. No. 52,583
`
`COUNSEL FOR PETITIONER
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TESLA, INC.,
`Petitioner
`
`V.
`
`GRANITE VEHICLE VENTURES LLC,
`Patent Owner
`
`Inter Partes Review Case No. [PR2025-01034
`U.S. Patent No. 12,037,004
`(Claims 1-9, 29-39)
`
`PETITIONER’S SUR-REPLY IN SUPPORT OF ITS OPPOSITION TO
`PATENT OWNER’S
`REQUEST FOR DISCRETIONARY DENIAL
`
`
`
`
`
`
`
`
`IPR2025-01034
`U.S. Patent No. 12,037,004
`
`Patent Owner’s Reply provides no basis to grant Patent Owner’s Request for
`Discretionary Denial.
`
`First, regarding Fintiv Factors 1 and 2, Tesla submitted relevant metrics,
`demonstrating that Judge Gilstrap’s recent patent trials are regularly rescheduled.
`Paper 9, 11-12. Tesla provided the recent patent cases’ docket sheets to illustrate
`this. Id. Tesla did not then “switch[]” to the median time to trial. Paper 11, 1. Instead,
`Tesla demonstrated that the average time-to-trial for Judge Gilstrap’s recent patent
`cases aligns with the median time-to-trial statistics for the Eastern District. Paper 9,
`11-12. Tesla also justified limiting its analysis to Judge Gilstrap’s recent patent trials
`that were rescheduled. /d., 13—14. Judge Gilstrap currently has seven other cases
`scheduled for trial on the same day as the Parallel Litigation. /d. Judge Gilstrap
`cannot hold all these trials as scheduled. Consequently, the Director should credit
`Tesla’s statistics, which align with that reality. Regardless, whether trial occurs
`shortly after the Board’s final decision, as Tesla showed is likely, or slightly before,
`as Patent Owner contends, Fintiv Factor 2 is, at worst, neutral. Moreover, the
`Director should determine that Tesla’s Broadened Sotera+ stipulation, ignored by
`Patent Owner, eliminates the risk of any overlap between this IPR and the Parallel
`
`Litigation and outweighs any timing concerns. The Director’s prior decisions did not
`
`account for these considerations and, consequently, should not control here.
`1
`
`
`
`
`
`
`
`
`IPR2025-01034
`U.S. Patent No. 12,037,004
`Second, Patent Owner’s reliance on Ecto World is inapposite. Paper 11, 2
`(citing Ecto World LLC v. RAI Strategic Hold gs Inc., IPR2024-01280, Paper 13 at
`5 (PTAB May 19, 2025) (Acting Dir. C.M. Stewart) (precedential)). There, the
`Director held only that “a petitioner must provide an [Advanced Bionics part two]
`analysis even when the asserted prior art is on an IDS[.]” Ecto World, Paper 13 at 5.
`But Advanced Bionics is not relevant to this proceeding because, as Patent Owner
`acknowledges, Tesla’s IPR art was not before the Examiner during examination.
`Paper 11, 2. Nor is it a prerequisite to showing material error that the [PR art was
`cited during examination. See W. Digital Techs., Inc. v. Godo Kaisha IP Bridge 1,
`IPR2025-00701, Paper 9 at 2 (PTAB Aug. 14, 2025) (material error was the
`erroneous identification of the allowable subject matter); see also id., Paper 1 at 6
`(presenting grounds not including the reference underlying the material error).
`Next, Patent Owner claims there 1s nothing wrong with the Examiner reusing
`previously drafted summaries of the prior art identified during the examination of
`both the 004 Patent’s parent (the 765 Patent) and grandparent applications in the
`’004 Patent’s Notice of Allowance. Paper 11, 2. But that is not the material error
`Tesla 1dentified and demonstrated. The error Tesla demonstrated was that the
`
`Examiner, in the notice of allowance for the 004 Patent, cited the same prior art he
`
`had cited in the notices of allowance of both the 765 Patent and its parent, despite
`2
`
`
`
`
`
`
`
`
`IPR2025-01034
`
`U.S. Patent No. 12,037,004
`
`the 004 Patent’s claims differing in scope from those of the *765 Patent and its
`
`parent Paper 9, 6-7. Tesla supported its conclusion by showing that prior art cited
`
`on the face of the 004 Patent itself, though not cited by the Examiner, disclosed key
`
`limitations of the Challenged Claims and that the prior art in the Petition rendered
`
`the Challenged Claims obvious. /d., 7-8. Patent Owner disputes neither showing.
`
`Paper 11, 2-3. Thus, having established prior material error, the grounds presented
`
`in the Petition rectify that error by demonstrating the obviousness of the Challenged
`Claims.
`
`Third, Patent Owner’s attempt to minimize Tesla’s authority supporting its
`“number of references” argument because those cases did not involve IPRs lacks
`merit. Paper 11, 3. The legal standard for obviousness does not change between
`examination, reexam, and IPR. Critically, the Board has affirmed Tesla’s very
`argument. See Silicon Lab’ys, Inc. v. Cresta Tech. Corp., [IPR2015-00626, Paper 65
`at 55 n42 (PTAB Aug. 11, 2016) (“The proper criterion is not the number of
`references; rather, the proper criterion is what the references would have meant to a
`[POSITA.]”) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991). Moreover,
`Patent Owner does not substantively challenge Tesla’s reliance on Gorman, where
`
`the Federal Circuit collected cases affirming obviousness findings based on
`
`combinations of between six and eight prior art references. Paper 9, 21-22 (citing
`3
`
`
`
`
`
`
`
`
`IPR2025-01034
`U.S. Patent No. 12,037,004
`Gorman, 933 F.2d at 986). Biogen, relied on by Patent Owner, supports Tesla’s
`argument, not Patent Owner’s. Paper 11, 4 (citing Biogen, Inc. v. lancu, No. 19-
`1364). There, the Federal Circuit summarily affirmed the Board’s decision finding
`the challenged claims obvious over a five-reference combination. Biogen, Inc. v.
`lancu, 831 F. App’x 506, 507 (Fed. Cir. 2020); Pfizer, Inc. v. Biogen, Inc., IPR2017-
`01168, Paper 59 (PTAB Oct. 31, 2018) (final decision on appeal).
`Finally, Patent Owner’s claim that Tesla “misstates the holding of Tesla, Inc.
`v. Intellectual Ventures I1 LLC, IPR2025-00217, Paper 9 at 3 (PTAB June 13,2025)”
`is meritless. Paper 11, 4. First, Tesla quoted the Director’s own language in its
`Response Brief. Paper 9, 23. Second, Tesla argued only that the convoluted
`permutations of the 004 Patent’s claimed invention are comparable to the assertion
`of a “large number and vast scope” of patents. Paper 9, 23. So just as the Board is
`“better suited to review” validity challenges to a larger number of patents having a
`vast scope, the Board is better suited to review the large number of convoluted
`permutations of the 004 Patent’s claimed invention. /d. Moreover, the 004 Patent’s
`Challenged Claims are even more complex than the Challenged Claims in Tesla’s
`’402 and *765 1PR proceedings, making Board review even more appropriate.
`
`Regardless, Tesla demonstrated in its Petition and Response Brief that
`
`Hampiholi alone “teach[es] the majority of the independent claims’ limitations.”
`4
`
`
`
`
`
`
`
`
`IPR2025-01034
`
`U.S. Patent No. 12,037,004
`
`Paper 9, 22 (citing Paper 1). The recitation of extraneous, well-known limitations
`
`throughout the Challenged Claims does not, in and of itself, render the Claims non-
`
`obvious. 1d., 23; see, e.g. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
`
`1356, 136667 (Fed. Cir. 2008) (explaining that often a [POSITA] can fit prior art
`
`teachings together like puzzle pieces, and the resulting combination will more likely
`
`be obvious where the combination arranges known elements to perform their same
`functions).
`
`Fourth, Patent Owner’s characterization of Tesla’s typical document
`production evidence as “extraordinary” fails. Paper 11, 5. As Tesla explained in its
`Response Brief, even the Federal Circuit has agreed with Tesla’s position. Paper 9,
`15 (citing Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1327 (Fed. Cir. 2011).
`Patent Owner tries to side-step the Federal Circuit’s decision by claiming its
`language was taken “out-of-context” because the Federal Circuit was addressing
`sanctions. Paper 11, 5. But the Federal Circuit’s observation was general in nature
`and not tied to the sanctions issue before it. Eon-Net, 653 F.3d at 1327.
`
`Fifth, Tesla maintains its constitutional and policy arguments (Paper 14, 30—
`
`37) and disputes Patent Owner’s contention that SAS empowers the Director to deny
`
`institution for any reason. Paper 15, 5.
`
`
`
`
`
`
`
`
`IPR2025-01034
`U.S. Patent No. 12,037,004
`Respectfully submitted,
`
`BY: /s/ Jennifer C. Bailey
`Jennifer C. Bailey, Reg. No. 52,583
`
`COUNSEL FOR PETITIONER
`
`
`
`
`
`
`
`
`IPR2025-01034
`U.S. Patent No. 12,037,004
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on October 6,
`2025, the foregoing Petitioner’s Sur-Reply In Support Of Its Opposition To Patent
`Owner’s Request For Discretionary Denial were served via electronic filing with
`the Board and via Electronic Mail on the following counsel of record for Patent
`
`Owner:
`
`Kyle E. Friesen (kfriesen@hpcllp.com)
`Kyle S. Ruvolo (kruvolo@hpcllp.com)
`Lily R. Glick (Iglick@hpcllp.com)
`GVVTSLA-IPR@hpcllp.com
`
`BY: /s/ Jennifer C. Bailey
`Jennifer C. Bailey, Reg. No. 52,583
`
`COUNSEL FOR PETITIONER
`
`
`
`
`
`
`
`
`
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