Tesla Inc. v. Intellectual Ventures II LLC

Tesla Inc., a leading American multinational automotive and clean energy company, is known for designing, manufacturing, and selling electric vehicles (EVs), battery energy storage, and solar products. The plaintiff in this action, Tesla is an operating company in the highly competitive automotive and technology industries. The defendant, Intellectual Ventures II LLC, is a privately-held "invention capital company" widely recognized as a patent assertion entity (PAE) or "patent troll." Intellectual Ventures' business model centers on acquiring vast patent portfolios and then monetizing these assets through licensing agreements or litigation, rather than producing goods or services.

The underlying dispute involves Intellectual Ventures II LLC asserting U.S. Patent No. 8,898,395, among others, against Tesla. While the Inter Partes Review (IPR) itself directly challenges the patent's validity, it is understood to be in response to a parallel patent infringement lawsuit filed by Intellectual Ventures against Tesla in the United States District Court for the Western District of Texas (C.A. No. 1:24-cv-00884-ADA). The technology allegedly infringed by Tesla broadly relates to its electric vehicles, particularly aspects concerning connectivity and advanced driver-assistance systems. U.S. Patent No. 8,898,395 is titled "Memory management for cache consistency" and generally pertains to systems and methods for managing memory to maintain consistency across multiple caches in a computing environment.

This case, IPR2025-00638, was initiated by Tesla Inc. at the Patent Trial and Appeal Board (PTAB) on March 7, 2025, to challenge the validity of US Patent No. 8,898,395. The case is currently marked as "Procedural Termination." While specific details for IPR2025-00638's termination are not publicly detailed in general news, related IPRs between Tesla and Intellectual Ventures (such as IPR2025-00340) have seen "procedural termination" due to discretionary denials by the PTAB Director. These denials often stem from petitioners advancing inconsistent claim construction positions between parallel district court litigation and IPR proceedings without sufficient explanation. The PTAB serves as a critical venue for challenging patent validity and is often utilized by defendants in infringement lawsuits to efficiently address patentability issues, thereby influencing the broader litigation landscape.

The case is notable for several reasons. It pits a prominent, prolific patent assertion entity, Intellectual Ventures, against an innovative operating company, Tesla, in the high-profile electric vehicle and technology sectors. Furthermore, the procedural termination highlights the PTAB's increasing use of discretionary denial, particularly concerning strategic considerations like inconsistent claim constructions or multiple parallel proceedings. This trend from the PTAB Director impacts IPR petitioner strategies and the overall predictability of patent validity challenges, making it a closely watched development within patent litigation.

Key Legal Developments and Outcome in Tesla Inc. v. Intellectual Ventures II LLC (IPR2025-00638)

This case involves an Inter Partes Review (IPR) initiated by Tesla Inc. against Intellectual Ventures II LLC concerning US Patent 8,898,395 at the Patent Trial and Appeal Board (PTAB), which ultimately resulted in a procedural termination. This IPR is part of a larger patent dispute between the two entities, including a significant district court litigation.

Parallel District Court Litigation

Filing of Infringement Complaint (2024-04-12): Intellectual Ventures II LLC filed a patent infringement complaint against Tesla Inc. in the United States District Court for the Western District of Texas. This complaint asserted a dozen patents, including U.S. Patent No. 8,898,395, which is the subject of IPR2025-00638. The case was expected to be assigned to Judge Alan D. Albright. The patents-in-suit covered a diverse range of subject matter.

Claim Construction Phase: As of April 15, 2024, the parties in a related case against Volvo and others, which also involved some of the same patents asserted against Tesla (including potentially the '138 and '158 patents), were briefing claim construction in anticipation of a Markman hearing set for May 24, 2024. A joint claim construction statement for the patents, including U.S. Patent No. 8,898,395, was filed in the district court litigation.

Parallel PTAB IPR Proceedings

Tesla initiated multiple IPR proceedings challenging six patents asserted by Intellectual Ventures II LLC in the district court litigation.

Filing of IPR2025-00638 (2025-03-07): Tesla Inc. filed IPR2025-00638 challenging US Patent 8,898,395.

Procedural Termination of IPR2025-00638 (2025-06-24): IPR2025-00638 was procedurally terminated on June 24, 2025. While the exact reason for the termination of this specific IPR (IPR2025-00638) is not explicitly detailed as a Director Review decision in the provided search results, "procedural termination" in IPRs can occur for various reasons, including settlement between the parties, or the petitioner electing to terminate the proceeding.

Discretionary Denial Context in Other Tesla IPRs: It is noteworthy that around this period, the USPTO Director began issuing discretionary denial decisions, sometimes due to inconsistent claim construction positions taken by petitioners in IPRs and parallel district court litigation. For instance, in IPR2025-00340, the Director vacated an institution decision and denied institution on November 5, 2025, because Tesla argued a claim term was indefinite in district court but sought plain and ordinary meaning at the PTAB without sufficient explanation for the differing positions. This decision was designated as informative. Tesla had also filed a broad "Sotera+" stipulation in district court, agreeing not to assert certain arguments, which played a role in the Director's decisions regarding discretionary denials in other IPRs filed by Tesla against Intellectual Ventures, such as IPR2025-00217 and IPR2025-00341, where institution was not discretionarily denied despite factors favoring denial. However, the procedural termination of IPR2025-00638 predates the November 2025 informative decision regarding inconsistent claim constructions.

USPTO Policy Changes on IPR Institution (2025): Throughout 2025, the USPTO implemented and refined procedures regarding discretionary denial of IPRs. In March 2025, a bifurcated approach to institution decisions was introduced, allowing patent owners to submit briefs solely on discretionary denial. Effective October 20, 2025, the USPTO Director assumed responsibility for all IPR and PGR institution decisions, in consultation with PTAB judges, often issuing summary decisions. These policy shifts aimed to enhance consistency and transparency in institution decisions. A proposed rule to require petitioners to stipulate not to pursue certain invalidity challenges in other forums and to bar review of previously adjudicated claims was also issued in October 2025, withdrawing an earlier April 2024 notice.

Outcome

IPR2025-00638 concluded with a "Procedural Termination" on June 24, 2025. This type of termination often indicates a resolution between the parties, such as a settlement, leading to the withdrawal of the petition before a final decision on the merits. The broader patent infringement litigation between Intellectual Ventures II LLC and Tesla Inc. in the Western District of Texas, which involved U.S. Patent 8,898,395, was ongoing during and after this IPR, with claim construction briefing underway for the asserted patents. Other IPRs filed by Tesla against Intellectual Ventures faced scrutiny under the USPTO's evolving discretionary denial policies, particularly concerning inconsistent claim construction positions. While IPR2025-00638 itself was terminated procedurally, these parallel developments highlight the complex interplay between district court litigation and PTAB proceedings in this dispute.

I'll research the press coverage of this case and the listed articles.

Sources

• Petition analysis | IPR2025-00638 | Tesla Inc v. Intellectual Ventures II LLC | Ex Parte
• US-8898395-B1 - Memory Management for Cache Consistency
• Tesla, Inc. v. Intellectual Ventures II LLC - IPR2025-00638
• Tesla, Inc. vs Intellectual Ventures II LLC (2025) | US PTAB | Patent | Arctic Invent Case Law Database
• IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS AUSTIN DIVISION
• Litigation Case List - Applied Filters: Patents in Case: 8898395Clear All
• Memory management for cache consistency - US8898395B1 - Memory management for cache consistency - Google Patents
• 专利权利要求解释一致性与多方复审裁量权之重塑：USPTO 三大新判决重击「两头下注」!
• IV Files Against Tesla In Austin . . . And In Waco - ARTICLE
• Transportation : Law360 : Legal News & Analysis - - June 24, 2026
• ‘Informative’ Director Review Decision Expands on Approach to Petitioner’s Inconsistent Claim Constructions - ‘Informative’ Director Review Decision Expands on Approach to Petitioner’s Inconsistent Claim Constructions
• In the Revvo Technologies decisions, the Director explained that "when a petitioner takes alternative positions before the Board...

In the Inter Partes Review (IPR) case IPR2025-00638, Tesla Inc. v. Intellectual Ventures II LLC, the petitioner Tesla Inc. was represented by counsel from Haynes and Boone, LLP, as well as in-house counsel. This representation is evident from related IPR proceedings between the same parties, such as IPR2025-00340, which lists specific attorneys from Haynes and Boone and Tesla's in-house counsel.

Here is a breakdown of the identified counsel:

From Haynes and Boone, LLP:

• Jonathan Bowser (Counsel)

  • Firm: Haynes and Boone, LLP. While a specific office location for this representation isn't explicitly stated in the search results, Haynes and Boone has multiple offices with significant IP practices.
  • Relevant Experience: Jonathan Bowser is involved in IPR proceedings on behalf of Tesla.

• Greg Webb (Counsel)

  • Firm: Haynes and Boone, LLP.
  • Relevant Experience: Greg Webb is involved in IPR proceedings on behalf of Tesla.

• Scott Jarratt (Counsel)

  • Firm: Haynes and Boone, LLP.
  • Relevant Experience: Scott Jarratt is involved in IPR proceedings on behalf of Tesla.

• Matthew Beck (Counsel)

  • Firm: Haynes and Boone, LLP.
  • Relevant Experience: Matthew Beck is involved in IPR proceedings on behalf of Tesla.

From Tesla Inc. (In-house Counsel):

• P. Margulies (In-house Counsel)
  • Firm: Tesla Inc.
  • Relevant Experience: P. Margulies is identified as in-house counsel for Tesla, involved in the IPR proceedings against Intellectual Ventures II LLC.

It is common for companies like Tesla to utilize both outside law firms specializing in patent litigation and their in-house legal teams to manage their intellectual property matters, including IPRs. While the specific docket for IPR2025-00638 was not individually searched to confirm specific appearances due to the "Procedural Termination" status, the consistency in counsel across related IPRs with the same parties strongly indicates these attorneys' involvement.

I'll research counsel on both sides of this dispute, since the "defendant" designation differs between the IPR (patent owner Intellectual Ventures II) and the underlying W.D. Tex. infringement suits (Tesla).

Now let me pin down counsel specific to IPR2025-00638 and the district court defense team.

I have the core data. Let me verify attorney backgrounds and the district court docket appearances.

Counsel of record — defendant(s) in this dispute

Scope caveat (important): "Defendant" is ambiguous across this case's two parallel dockets, and the two point in opposite directions:

• In IPR2025-00638 (the docket for this case), the respondent/patent owner — i.e., the party defending the patent — is Intellectual Ventures II LLC. Tesla is the petitioner.
• In the underlying infringement case, Intellectual Ventures II LLC v. Tesla, Inc., No. 1:24-cv-00884-ADA (W.D. Tex.), Tesla is the defendant and IV is the plaintiff.

The prior "Plaintiff representatives" section covered Tesla's IPR-side counsel (Haynes and Boone). Because the metadata lists Intellectual Ventures II LLC as the defendant, I lead with IV's counsel of record in the IPR and then give the district-court defense team for completeness.

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1. Respondent / Patent Owner — Intellectual Ventures II LLC (defense side in IPR2025-00638)

The Board's dismissal decision terminating IPR2025-00638 identifies the following as counsel for Patent Owner (Paper 8, Decision – Dismissal Prior to Institution, June 24, 2025, PTAB P-TACTS):

This is the identical roster IV used in its mandatory notices and powers of attorney across the sibling Tesla IPRs (e.g., IPR2025-00220, IPR2025-00221, IPR2025-00340, IPR2025-00341), which reflects a single, coordinated defense team. See, e.g., IPR2025-00221 Patent Owner Mandatory Notices (Dec. 5, 2024).

Caveat on Theiss's firm: the address of record in IPR2025-00638 and the other 2025 Tesla IPRs is Volpe Koenig. Firm/industry sources indicate Theiss later joined AddyHart P.C. (AddyHart; AddyHart bio PDF; a Law360 piece hosted by AddyHart lists him as representing IV, alongside in-house Rigby, in IPR2025-00339/00342). That change post-dates the June 2025 termination of this IPR, so Volpe Koenig is the correct firm of record for IPR2025-00638.

No local counsel appears for IV in the IPR. Because IPR2025-00638 was terminated before institution (joint motion, all '395 claims dismissed with prejudice in district court), the only counsel-of-record entries are the notices above; there is no substantive merits filing to cite. I found no separate appearance paper for this docket.

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2. Defendant in the underlying infringement suit — Tesla, Inc. (1:24-cv-00884-ADA, W.D. Tex., Austin Div., Judge Alan D. Albright)

The '395 patent was one of twelve patents IV asserted against Tesla in W.D. Tex. Tesla's district-court defense team of record (per the docket snapshot and the May 27, 2025 Sotera-Plus stipulation filed at ECF No. 59) is:

In-house:

• Paul Margulies — Tesla, Inc., 800 Connecticut Ave. NW, Washington, DC — listed on the docket as lead attorney for Tesla.

Fish & Richardson P.C. (primary outside defense counsel):

• Aamir A. Kazi — Atlanta, GA
• Daniel R. Gopenko — Washington, DC
• David M. Hoffman (TX Bar No. 24046084) — Austin, TX
• Matt Colvin (TX Bar No. 24087331) — Dallas, TX
• Michael R. Ellis (TX Bar No. 24102726) — Dallas, TX
• Kathryn A. Quisenberry (TX Bar No. 24105639) — Houston, TX (also appears as Fish's Texas-footprint counsel on other Tesla matters)

Source: ECF No. 59, Notice of Sotera Plus Stipulation (May 27, 2025) and the district-court docket exhibit.

Note the overlap and separation from the Tesla IPR team: the IPR petitions were handled by Haynes and Boone (Bowser, Jarratt, Webb, Beck, Bostrom, Wilkins, O'Brien, Smith) plus in-house Paul Margulies and Ashraf Fawzy, while the district-court defense was handled by Fish & Richardson. Margulies is the common in-house link across both.

Status of the '395 in that case: the '395 patent dropped out of the litigation — all '395 claims were dismissed with prejudice (ECF No. 55, May 16, 2025), which prompted the joint motion to dismiss the IPR.

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3. The same entity (IV) as plaintiff in the district court

Because the metadata's "defendant," IV, is the plaintiff in the infringement action, its litigation counsel there is also relevant:

• Kasowitz Benson Torres LLP — Darcy L. Jones, Heather S. Kim, Jeceaca An, John W. Downing, Jonathan K. Waldrop, Marcus A. Barber, ThucMinh Nguyen (Redwood Shores, CA and New York, NY).
• Cherry Johnson Siegmund James, PLLC (local counsel) — William D. Ellerman (Dallas, TX) and Mark D. Siegmund (Waco, TX).

Source: docket exhibit, 1:24-cv-00884. The same Kasowitz group appears for IV in a related S.D. Cal. action, Intellectual Ventures II LLC v. Tesla, Inc., No. 3:25-cv-03197 (PacerMonitor).

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Sourcing limitations

• The IPR counsel roster is taken directly from the Board's own decision text and IV's mandatory notices/powers of attorney — reliable, primary sources.
• The district-court attorney list is from a PACER docket extract retrieved ~March 25, 2025, plus the May 2025 stipulation signature block; additional appearances may have been filed after that snapshot that I could not verify.
• I could not obtain the IPR2025-00638 docket sheet as a native PACER/PTAB docket page beyond the P-TACTS decision documents; no counsel has been invented, and no appearance is asserted beyond what those documents show.

One flag: the earlier "Case overview" section refers to the W.D. Tex. case as "C.A. No. 1:24-cv-00884-ADA" in the Austin Division. The docket confirms it was assigned to Judge Alan D. Albright — not Judge Robert Pitman, whose Austin docket handled the separate 1:24-cv-00390 case. Treat the "before Judge Pitman" reference in the press section as applying to the sibling suit, not to 00884.