Filed: January 25, 2018
`
`
`Filed on behalf of:
`
`Patent Owner Intellectual Ventures II LLC
`By:
`John R. King
`
`Ted M. Cannon
`
`Bridget A. Smith
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: (949) 760-0404
`Facsimile:
`(949) 760-9502
`Email: BoxPGL53@knobbe.com
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`MITSUBA CORPORATION AND
`AMERICAN MITSUBA CORPORATION
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`
`Patent Owner.
`__________________________________
`
`Case No. IPR2018-00071
`U.S. Patent No. 7,067,952
`__________________________________
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`Filed on behalf of:
`
`Patent Owner Intellectual Ventures II LLC
`By:
`John R. King
`
`Ted M. Cannon
`
`Bridget A. Smith
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: (949) 760-0404
`Facsimile:
`(949) 760-9502
`Email: BoxPGL53@knobbe.com
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`MITSUBA CORPORATION AND
`AMERICAN MITSUBA CORPORATION
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`
`Patent Owner.
`__________________________________
`
`Case No. IPR2018-00071
`U.S. Patent No. 7,067,952
`__________________________________
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. CLAIM CONSTRUCTION ............................................................................ 7
`
`A.
`
`“discrete stator segments each at least partially encased
`with a phase change material” ............................................................... 8
`
`B.
`
`Reservation of rights ............................................................................. 9
`
`III. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS
`TO SET FORTH AN ADEQUATE CLAIM
`CONSTRUCTION ........................................................................................ 10
`
`IV. GROUND 2 SHOULD BE DENIED UNDER
`35 U.S.C. § 325(D) ........................................................................................ 12
`
`A.
`
`This Petition’s challenge of claim 10 relies on
`substantially the same prior art and arguments as the
`-01497 petition. ................................................................................... 14
`
`1.
`
`2.
`
`3.
`
`4.
`
`Both petitions rely on Ishihara as allegedly
`disclosing key limitations of claim 10. ..................................... 14
`
`The petitions rely on the cumulative references
`Ishihara and Nakahara as allegedly disclosing a
`“stator assembly.” ..................................................................... 15
`
`The petitions rely on the cumulative references
`Ishihara and Nakahara as allegedly disclosing “a
`plurality of discrete stator segments each at least
`partially encased with a phase change material.” ..................... 16
`
`Ground 2 should be denied with respect to
`claim 10. .................................................................................... 18
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`B.
`
`This Petition’s challenge of claim 11 relies on
`substantially the same prior art and arguments as the
`-01497 petition. ................................................................................... 19
`
`1.
`
`2.
`
`3.
`
`4.
`
`Ground 2 of this Petition presents substantially the
`same prior art and arguments against claim 10 as
`presented by ground 1 of the -01497 petition. .......................... 19
`
`The petitions rely on the cumulative references
`Nakatsuka and Lieu as allegedly disclosing the
`“held in a toroidal shape by an overmolded
`thermoplastic material” limitation of claim 11. ........................ 19
`
`The Board already determined in IPR2017-01497
`that the petitioners likely would not show that
`claim 11 would have been obvious in view of
`Nakahara, Ishihara, and Lieu. ................................................... 20
`
`Ground 2 should be denied with respect to
`claim 11. .................................................................................... 20
`
`C.
`
`This Petition’s challenge of claim 12 relies on
`substantially the same prior art and arguments as the
`-01497 petition. ................................................................................... 21
`
`1.
`
`2.
`
`Ground 2 of this Petition presents substantially the
`same prior art and arguments against claim 10 as
`presented by ground 1 of the -01497 petition. .......................... 21
`
`The petitions rely on the cumulative references
`Nakatsuka and Ishihara as allegedly disclosing the
`“held in a toroidal shape by a retaining member”
`limitation of claim 12. ............................................................... 21
`
`
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`3.
`
`4.
`
`The Board already determined in IPR2017-01497
`that the petitioners likely would not show that
`claim 12 would have been obvious in view of
`Nakahara and Ishihara. .............................................................. 23
`
`Ground 2 should be denied with respect to
`claim 12. .................................................................................... 23
`
`D. Mitsuba does not provide any legitimate reason that the
`Board should expend resources adjudicating a ground
`that presents substantially the same prior art and
`arguments as ground 1 of the -01497 petition. .................................... 24
`
`V. GROUND 3 SHOULD BE DENIED UNDER
`35 U.S.C. § 325(D) ........................................................................................ 26
`
`A.
`
`This Petition’s challenge of claim 10 relies on
`substantially the same prior art and arguments as the
`-01497 petition. ................................................................................... 26
`
`1.
`
`2.
`
`Both petitions rely primarily on Iikuma as
`allegedly disclosing the limitations of claim 10. ...................... 26
`
`The only difference between the petitions is that
`this Petition relies on Scherzinger, while the
`-01497 relies on the cumulative reference
`Nakahara, as allegedly disclosing the “phase
`change material.” ...................................................................... 27
`
`3.
`
`Ground 3 should be denied with respect to claim
`10. .............................................................................................. 29
`
`B.
`
`This Petition’s challenge of claim 11 relies on
`substantially the same prior art and arguments as the
`-01497 petition. ................................................................................... 29
`
`-iii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`1.
`
`2.
`
`3.
`
`Ground 3 of this Petition presents substantially the
`same prior art and arguments against claim 10 as
`presented by ground 1 of the -01497 petition. .......................... 29
`
`The petitions rely on the cumulative references
`Nakatsuka and Lieu as allegedly disclosing the
`“held in a toroidal shape by an overmolded
`thermoplastic material” limitation of claim 11. ........................ 30
`
`Ground 3 should be denied with respect to claim
`11. .............................................................................................. 30
`
`C.
`
`This Petition’s challenge of claim 12 relies on
`substantially the same prior art and arguments as the
`-01497 petition. ................................................................................... 31
`
`1.
`
`2.
`
`3.
`
`Ground 3 of this Petition presents substantially the
`same prior art and arguments against claim 10 as
`presented by ground 2 of the -01497 petition. .......................... 31
`
`Both petitions rely on Iikuma as allegedly
`disclosing the “held in a toroidal shape by a
`retaining member” limitation of claim 12. ................................ 31
`
`Ground 3 should be denied with respect to claim
`12. .............................................................................................. 32
`
`D. Mitsuba does not provide any legitimate reason that the
`Board should expend resources adjudicating a ground
`that presents substantially the same prior art and
`arguments as ground 3 of the -01497 petition. .................................... 32
`
`
`
`
`
`-iv-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`VI. THE BOARD SHOULD DENY GROUNDS FOR WHICH
`THE PETITION FAILED TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE
`UNPATENTABLE ........................................................................................ 34
`
`VII. IF ANY GROUNDS ARE INSTITUTED, THE BOARD
`SHOULD DENY REDUNDANT GROUNDS ............................................ 38
`
`VIII. CONCLUSION .............................................................................................. 41
`
`
`
`
`
`-v-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Cultec, Inc. v. Stormtech LLC,
`IPR2017-00777, Paper 7 (P.T.A.B. Aug. 22, 2017) ........................................... 13
`
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper No. 19 (P.T.A.B. Sept. 6, 2017) .................................... 13
`
`Hospira, Inc. v. Genentech, Inc.,
`IPR2017-00739, Paper 16 (P.T.A.B. July 27, 2017) .......................................... 13
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2013-00003, 2012 WL 9494791 (P.T.A.B. Oct. 25, 2012) ................. 38, 39
`
`Oracle Corp. v. Clouding IP, LLC,
`IPR2013-00075, Paper 15 (P.T.A.B. June 13, 2013) ......................................... 39
`
`Unified Patents, Inc. v. Berman,
`IPR2016-01571, Paper 10 (P.T.A.B. Dec. 14, 2016) ......................................... 13
`
`Unified Patents, Inc. v. PersonalWeb Techs., LLC,
`IPR2014-00702, Paper 13 (P.T.A.B. July 24, 2014) .................................... 25, 33
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 312 ........................................................................................................ 10
`
`35 U.S.C. § 314 .................................................................................................. 12, 35
`
`35 U.S.C. § 315 .................................................................................................. 25, 34
`
`35 U.S.C. § 316 .......................................................................................................... 1
`
`35 U.S.C. § 325 .................................................................................................passim
`
`37 C.F.R. § 42.104 ............................................................................................. 10, 37
`
`37 C.F.R. § 42.108 ................................................................................................... 35
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`(Cont’d)
`
`Page No(s).
`
`77 Fed. Reg. 48,756 at 48,764 (Aug. 14, 2012) ....................................................... 11
`
`
`
`
`
`-iii-
`
`
`
`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`
`Patent Owner Intellectual Ventures II LLC (“IV”) submits this Preliminary
`
`Response in opposition to the Petition to institute an inter partes review of U.S.
`
`Patent No. 7,067,952 (“the ’952 Patent”).
`
`I. INTRODUCTION
`
`The USPTO, in its publication of its final rule implementing IPR
`
`proceedings, asserted:
`
`The purpose of the AIA and this final rule is to establish a more
`efficient and streamlined patent system that will improve patent
`quality and limit unnecessary and counterproductive litigation costs.
`Ex. 2001 at 48680 (emphases added). The Board should conduct IPR proceedings
`
`in a manner that ensures that both goals are met. IPRs allow the Board to meet the
`
`first goal—improved patent quality—by finding claims unpatentable when, but
`
`only when, the petitioner in an IPR meets its burden to prove the claims
`
`unpatentable. See 35 U.S.C. § 316(e).
`
`The second goal—limiting “unnecessary and counterproductive litigation
`
`costs”—is as important as the first. Congress did not intend for the Board to
`
`achieve only marginal improvements to patent quality by repeatedly reevaluating
`
`the patentability of the same patent claims—thereby multiplying rather than
`
`reducing the cost of litigation—based on prior art that varies only slightly from the
`
`art already considered by the USPTO during examination or an earlier IPR. In fact,
`
`Congress recognized that the use of IPRs for “repeated . . . administrative attacks
`
`-1-
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`
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`on the validity of a patent” would “frustrate the purpose” of IPRs “as providing
`
`quick and cost effective alternatives to litigation” and “would divert resources from
`
`the research and development of inventions.” Ex. 2002 at 48. In other words,
`
`Congress did not want IPRs to foster serial attacks on the same patent because such
`
`serial patent attacks are too expensive and actually harm innovation.
`
`Fortunately, Congress gave the Board powerful procedural tools to prevent
`
`serial attacks on the same patent claims based on similar prior art. And Congress
`
`intended the Board to use its “expanded procedural authority” to “address potential
`
`abuses and current inefficiencies.” Id. One of the tools Congress gave the Board,
`
`with the expectation that the Board would use it to prevent serial patent attacks, is
`
`35 U.S.C. § 325(d). That section of the statute says the Board may deny IPR
`
`petitions that present “the same or substantially the same prior art or arguments
`
`[that] previously were presented to the Office.” 35 U.S.C. § 325(d) (emphasis
`
`added).
`
`Congress did not expect the Board to use 35 U.S.C. § 325(d) merely to deny
`
`serial IPR challenges based on identical prior art or arguments. If Congress
`
`intended to so narrowly define the Board’s discretion, Congress would have
`
`included the “same . . . prior art” phrase in the statute but omitted the broader
`
`“substantially the same” phrase. The inclusion of the broader phrase expressly
`
`allows the Board to deny petitions that present prior art and arguments that are
`
`-2-
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`
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`nominally different from, but similar to, the prior art and arguments previously
`
`presented to the USPTO. Therefore, a conclusory observation that some prior art
`
`references presented in the Petition were not previously considered by the USPTO
`
`is not a sufficient or complete § 325(d) analysis.
`
`Although Congress did not want IPRs to be used by petitioners to mount
`
`serial patent attacks, this tactic is still quite common. A study commissioned by the
`
`USPTO found that about a third of patents challenged in IPRs face multiple
`
`petitions. Ex. 2003 at 14. The majority of these patents face only 2 petitions, but
`
`about 13 percent of patents challenged in IPRs face 3 or more petitions. Id.
`
`Serial attacks on patents are both extremely expensive and almost always
`
`unnecessary. The parties typically spend, collectively, more than half a million
`
`dollars, and, depending on the complexity of the issues involved, sometimes more
`
`than a million dollars, litigating a single IPR. These costs quickly multiply when
`
`the Board institutes 2, 3, or more IPRs against the same patent claims, such that the
`
`IPR process turns into multi-million-dollar litigation to assess the patentability of
`
`the claims. These litigation costs can rival or even exceed the costs of invalidity
`
`litigation in district court, which is completely contrary to Congress’s intent.
`
`Further, authorizing serial patent attacks, and, thereby, requiring the parties
`
`to incur extremely large litigation costs, is almost always unnecessary because the
`
`additional litigation costs and Board resources spent adjudicating multiple IPRs do
`
`-3-
`
`
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`not buy significantly better patent quality. When the claims are found unpatentable
`
`in an earlier-filed IPR, it is an utter waste of time and resources to litigate another
`
`IPR involving similar prior art and arguments. And when the claims are found
`
`patentable in an earlier-filed IPR, the claims are likely also patentable over similar
`
`prior art and arguments presented in a later-filed IPR. Therefore, it is a poor use of
`
`both the Board’s and the parties’ resources to serially reevaluate the same patent
`
`claims over similar prior art and arguments.
`
`This is an ideal case for the Board to deny the Petition in order to deter serial
`
`IPR attacks of the same patent claims based on similar prior art and arguments. On
`
`June 9, 2017 and June 16, 2017, Toyota Motor Corporation and several other
`
`petitioners (“Toyota”) already filed two pending IPR petitions against several
`
`claims of the ’952 patent, including the petition in IPR2017-01497 (“the -01497
`
`petition” or “-01497 Pet.”) and the petition in IPR2017-01631 (“the -01631
`
`petition” or “-01631 Pet.”).
`
`More than four months later, on October 13, 2017, Mitsuba Corporation
`
`(“Mitsuba”) filed this Petition. This Petition, the third filed against the ’952 patent,
`
`puts the ’952 patent in the small minority of patents that face 3 or more IPR
`
`challenges. The Petition does not explain why this is one of the rare cases in which
`
`the Board and the parties should expend their resources adjudicating a third serial
`
`attack against the ’952 patent. Indeed, because the Petition has many deficiencies,
`
`-4-
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`
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`the Board should reject this Petition in its entirety. For example, the Petition fails
`
`to set forth a claim construction for any of the relevant claim terms, even though
`
`Mitsuba’s application of the prior art to the claims necessarily relies on an
`
`unusually broad—but unexplained—construction of the claim phrase “at least
`
`partially encased.” Because offering a claim construction of relevant claim terms is
`
`a mandatory requirement of any IPR petition, the Board can deny the Petition for
`
`that reason alone, especially given that this Petition is the third petition filed
`
`against the ’952 patent.
`
`Further, rather than relying on unique prior art or arguments to justify the
`
`imposition on the Board or the parties the excessive burden of evaluating the
`
`patentability of the ’952 patent a third time, much of the Petition merely
`
`repackages substantially the same prior art and arguments presented in Toyota’s
`
`-01497 petition. For example, ground 2 of this Petition is a repackaged version of
`
`ground 1 of the -01497 petition. Both of these grounds rely heavily on Ishihara as
`
`allegedly disclosing key claim limitations. And although ground 2 of this Petition
`
`also relies on secondary references that are nominally different from ground 1 of
`
`the -01497 petition, the references disclose structures that are in all material
`
`respects identical to each other. Therefore, ground 2 of this Petition presents
`
`“substantially the same prior art or arguments” as previously presented to the
`
`Office in ground 1 of the -01497 petition.
`
`-5-
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`
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`
`Similarly, ground 3 of this Petition is a repackaged version of ground 2 of
`
`the -01497 petition. Both petitions rely primarily on Iikuma as allegedly disclosing
`
`key limitation. As with ground 2 of this Petition, ground 3 of this Petition relies on
`
`secondary references that are, in all material respects, identical to the art relied on
`
`in the -01497 petition. Therefore, ground 3 of this Petition presents “substantially
`
`the same prior art or arguments” as previously presented to the Office in ground 2
`
`of the -01497 petition.
`
`That Mitsuba is a different petitioner from the Toyota petitioners is not a
`
`reason to allow this third serial attack on the ’952 Patent to proceed. Congress
`
`carefully chose the language of 35 U.S.C. § 325(d) to give the Board discretion to
`
`deny petitions that present prior art similar to that already presented to the USPTO
`
`without regard to the identities of the current petitioner or any past petitioners.
`
`Congress did not intend the IPR statute to give every defendant in district court
`
`litigation a due process or statutory right to its own separate “day in court” to
`
`present an independent patentability challenge to the Board. Instead, the IPR
`
`statute is intended to give the Board the discretion, but not the obligation, to
`
`reevaluate a patent when a petitioner presents prior art that is better than the art
`
`previously presented to the USPTO.
`
`In the circumstances of this case, there is no reason for the Board to expend
`
`additional resources adjudicating yet another essentially duplicative attack on the
`
`-6-
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`’952 Patent. If the challenged claims of the ’952 Patent were unpatentable—which
`
`they are not—the Board would reach that conclusion through its adjudication of
`
`the two Toyota petitions previously filed against the ’952 Patent. And if the Board
`
`determines, as it should, that the Toyota petitions do not show that the claims are
`
`unpatentable, the similar prior art and arguments that Mitsuba relies on in this third
`
`attempt will also fail to establish the unpatentability of the claims. Thus, while
`
`instituting this IPR would serve no useful purpose, it would waste significant
`
`resources of both the Board and the parties. The Board should deny this Petition.
`
`II. CLAIM CONSTRUCTION
`
`The Board does not need to construe every claim phrase to decide the
`
`preliminary question whether to institute this IPR. Indeed, IV submits that the
`
`Board should not, at this preliminary phase, construe claim phrases that neither
`
`party has put in dispute in the Petition or Preliminary Response.
`
`Mitsuba asserts that, “[f]or purposes of this Petition, the claims of the ’952
`
`patent do not require construction and should be given their plain and ordinary
`
`meaning to one having ordinary skill in the art.” Pet. at 14. IV does not agree with
`
`this broad statement because at least one claim term—namely, “encased”—should
`
`be construed at this preliminary phase to resolve a dispute between the parties.
`
`-7-
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`A.
`
`“discrete stator segments each at least partially encased with a phase
`change material”
`
`Claim 10 of the ’952 Patent requires “a plurality of discrete stator segments
`
`each at least partially encased with a phase change material.” Ex. 1001, cl. 10
`
`(emphasis added). The broadest reasonable construction of this claim limitation
`
`should confirm or clarify what is meant by “each” and “partially encased.” The
`
`claim term “each” is a common, ordinary English word indicating, in the context of
`
`the claim language, that each individual stator segment—not the stator segments
`
`collectively—must be “at least partially encased with a phase change material.”
`
`The specification of the ’952 Patent shows that the “at least partially
`
`encased” phrasing of this limitation means that at least a portion of each stator
`
`segment must be enclosed in or as if in a case by a phase change material. The
`
`specification conveys this meaning by consistently using “encased” or words that
`
`are either synonymous or have very similar meanings—such as “coated,”
`
`“encapsulating,” or “envelop”—to describe the relationship between the stator
`
`segments and the phase change material. See, e.g., Ex. 1001 at 6:1–2 (“stamped
`
`pieces are then coated with encapsulating material”); 6:8 (“envelope [sic] the
`
`stator”) (emphases added).
`
`A person of ordinary skill in the art would understand that the ordinary
`
`meaning of the verb “encase” is “to enclose in or as if in a case.” The skilled
`
`-8-
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`
`
`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`artisan would understand that the specification uses the term “encased” in
`
`accordance with this ordinary meaning. And while the skilled artisan would not
`
`need to consult a dictionary to understand the ordinary meaning of “encased,”
`
`Webster’s definition of the verb “encase,” meaning “to enclose in or as if in a
`
`case” (Ex. 2004)—confirms the reasonableness of the skilled artisan’s
`
`understanding of the ordinary meaning in view of the specification. Although the
`
`ordinary meaning may normally imply that the entire object encased in another
`
`object is enclosed in or as if in a case, the plain claim language “at least partially
`
`encased” means that only a portion of each claimed stator segments needs to be
`
`enclosed in or as if in a case by the phase change material. Accordingly, the
`
`broadest reasonable interpretation of “a plurality of discrete stator segments each at
`
`least partially encased with a phase change material” is “a plurality of discrete
`
`stator segments in which at least a portion of each of the individual stator segments
`
`is enclosed in or as if in a case by a phase change material.”
`
`B. Reservation of rights
`
`The need for claim construction is heavily dependent on the particular issues
`
`in dispute at a particular stage of a particular case. Accordingly, a claim
`
`construction that is sufficient to resolve the parties’ disputes at this preliminary
`
`stage of this IPR may not be sufficient to resolve any disputes that may arise if this
`
`IPR is instituted or to resolve disputes that may arise in a different judicial or
`
`-9-
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`administrative proceeding. Further, a different claim construction standard—such
`
`as the Phillips claim construction standard applicable in district court litigation—
`
`may be applicable in different proceedings.
`
`IV proposes the preliminary claim constructions set forth in this Preliminary
`
`Response only for the purpose of assessing the preliminary question whether to
`
`institute this IPR. IV reserves the right to propose different or additional claim
`
`constructions, and submit additional evidence relating to claim construction, in its
`
`Patent Owner Response, if the Board institutes trial. IV also reserves the right to
`
`propose different or additional claim constructions in different judicial or
`
`administrative proceedings.
`
`III. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO SET
`FORTH AN ADEQUATE CLAIM CONSTRUCTION
`
`35 U.S.C. § 312(a)(4) provides that a “petition filed under section 311 may
`
`be considered only if . . . the petition provides such other information as the
`
`Director may require by regulation.” 37 C.F.R. § 42.104(b)(3) provides some of
`
`the “other information as the Director may require by regulation,” including
`
`“[h]ow the challenged claim is to be construed.” Accordingly, the Board should
`
`not consider the Petition unless it includes an adequate claim construction.
`
`Here, the Petition includes the following claim construction section:
`
`Claim terms in an IPR are given the broadest reasonable interpretation
`in light of the specification. 37 C.F.R. § 42.100(b). For purposes of
`
`-10-
`
`
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`
`this Petition, the claims of the ’952 patent do not require construction
`and should be given their plain and ordinary meaning to one having
`ordinary skill in the art.
`Pet. at 14.
`
`The Office Patent Trial Practice Guide states:
`
`Regarding the need for a claim construction, where appropriate, it
`may be sufficient for a party to provide a simple statement that the
`claim terms are to be given their broadest reasonable interpretation, as
`understood by one of ordinary skill in the art and consistent with the
`disclosure.
`77 Fed. Reg. 48,756 at 48,764 (Aug. 14, 2012) (emphases added). This guidance
`
`suggests that it may be appropriate, in certain circumstances, for a petition to
`
`include nothing more than the claim construction statement included in the Petition
`
`here. The guidance, however, does not say that the Petition’s vague claim
`
`construction statement is always appropriate, or that the Board should excuse a
`
`petitioner that fails to propose a claim construction for a claim term in need of
`
`construction. Accordingly, the Board should assess whether Mitsuba made a
`
`reasonable attempt to propose constructions for the claim terms in need of a
`
`construction. And if Mitsuba did not do so, the Board should deny the Petition.
`
`Here, Mitsuba’s claim construction section is inadequate because Mitsuba
`
`reasonably should have proposed a claim construction of “a plurality of discrete
`
`stator segments each at least partially encased with a phase change material,” but
`
`-11-
`
`
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`failed to do so. As will become apparent from Section VI of this Preliminary
`
`Response, a construction of the “partially encased” claim limitation is reasonably
`
`necessary to allow the Board to determine whether the Iikuma reference—upon
`
`which Mitsuba relies heavily in Ground 3 of this Petition—discloses stator
`
`segments that are “at least partially encased with a phase change material.”
`
`Further, Mitsuba reasonably should have known that its “plain and ordinary
`
`meaning” boilerplate claim construction was inadequate to prove its assertion that
`
`Iikuma discloses “partially encased” stator segments, because that assertion
`
`implicitly and necessarily relies on an unusual construction of “partially encased.”
`
`Because Mitsuba did not make a reasonable attempt to propose a
`
`construction for at least one of the claim limitations in need of a construction, the
`
`Board should deny the Petition.
`
`IV. GROUND 2 SHOULD BE DENIED UNDER 35 U.S.C. § 325(D)
`
`The Board’s authority to institute an IPR is discretionary, not mandatory.
`
`Congress expressly granted the USPTO discretion to reject a ground when “the
`
`same or substantially the same prior art or arguments previously were presented to
`
`the Office.” 35 U.S.C. § 325(d).1 This grant of discretion is supported by the sound
`
`
`1 More broadly, the Board has discretion to deny a petition under 35 U.S.C. §
`
`314(a). The Board typically invokes its discretion under 35 U.S.C. § 314(a), and
`
`-12-
`
`
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`legal principle that the Patent Office’s first examination or adjudication of a
`
`proposition of patentability should, subject to appeal, be presumed to be correct.
`
`Neither the Board nor the parties should be required to waste their time and
`
`resources adjudicating substantially the same prior art and arguments more than
`
`once. Therefore, the Board should generally exercise its discretion in favor of
`
`assessing patentability in view of prior art and arguments never previously
`
`presented to the Patent Office rather than using IPRs to second-guess the Patent
`
`Office’s prior determinations of patentability.
`
`
`applies the NVIDIA factors, in assessing “follow-on” petitions filed by the same
`
`petitioner. See, e.g., Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357, Paper No. 19 (P.T.A.B. Sept. 6, 2017) (precedential). The Board
`
`conducts a different analysis, not involving the NVIDIA factors, in cases
`
`implicating 35 U.S.C. § 325(d). See Cultec, Inc. v. Stormtech LLC, IPR2017-
`
`00777, Paper 7 (P.T.A.B. Aug. 22, 2017) (informative); Hospira, Inc. v.
`
`Genentech, Inc., IPR2017-00739, Paper 16 (P.T.A.B. July 27, 2017) (informative);
`
`Unified Patents, Inc. v. Berman, IPR2016-01571, Paper 10 (P.T.A.B. Dec. 14,
`
`2016) (informative). The 35 U.S.C. § 325(d) analysis, not the follow-on petition
`
`analysis, applies to this case.
`
`-13-
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`
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`IPR2018-00071
`Mitsuba Corp., et al. v. Intellectual Ventures II
`
`
`Here, ground 2 of this Petition presents substantially the same prior art and
`
`arguments as ground 1 of the -01497 petition. As shown below, a limitation-by-
`
`limitation analysis shows that this Petition and the -01497 petition rely on identical
`
`references or substantially the same reference as allegedly disclosing every claim
`
`limitation.
`
`A. This Petition’s challenge of claim 10 relies on substantially the same
`prior art and arguments as the -01497 petition.
`
`1.
`
`Both petitions rely on Ishihara as allegedly disclosing key
`limitations of claim 10.
`
`Significantly, both ground 2 of this Petition and ground 1 of the -01497
`
`petition rely on Ishihara as allegedly disclosing the following key limitations of
`
`claim 10:
`
`Limitation
`
`“wherein the phase change material also
`comprises a bridge . . .”
`“the linked stator segments being
`arranged and secured together to form
`the stator assembly”
`
`Pages in this
`Petition relying
`on Ishihara
`33–35
`
`Pages in -01497
`petition relying on
`Ishihara
`29–33
`
`35–37
`
`34
`
`It is already apparent at this preliminary stage that the parties dispute whether
`
`Ishihara discloses the “linked stator segments being arranged and secured together
`
`to form the stator assembly” limitation. As indicated in the table above, both this
`
`Petition and the -01497 petition assert that Ishihara discl
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