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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT and
`BMW OF NORTH AMERICA, LLC,
`Petitioners,
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`v.
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`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owners.
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`Case IPR2020-00994
`Patent 7,104,347
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`PATENT OWNERS’ NOTICE OF APPEAL
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`Proceeding No.: IPR2020-00994
`Attorney Docket: 36351-0004IP1
`Pursuant to 35 U.S.C. §§ 142 and 37 C.F.R. § 90.2(a), Patent Owner, Paice
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`LLC and the Abell Foundation, Inc., hereby appeal to the United States Court of
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`Appeals for the Federal Circuit from the Patent Trial and Appeal Board’s
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`(“Board”) Final Written Decision entered on November 10, 2021 (Paper 48), and
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`from all other underlying orders, decisions, rulings and opinions that are adverse to
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`Patent Owner including, without limitation, those within the Decision on
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`Institution of Inter Partes Review entered on November 19, 2020 (Paper 19).
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner indicates that
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`the issues on appeal include, but are not limited to:
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`(1) the Board’s decision that challenged claims 2, 11, 17, 24, 33, and 38 were
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`unpatentable under 35 U.S.C. §103(a) as being obvious in view of the
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`cited prior art;
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`(2) the Board’s interpretation of the limitation “monitor[s] patterns of vehicle
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`operation over time and varies said setpoint SP accordingly” found in
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`claims 2 and 24.
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`(3) the Board’s reliance on conclusory and insufficient expert testimony;
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`(4) the Board’s interpretation of the prior art;
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`(5) the Board’s legal errors in undertaking the aforementioned obviousness
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`analyses;
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`(6) the Board’s findings that conflict with the evidence of record or are that
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`are otherwise not supported by substantial evidence;
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`Proceeding No.: IPR2020-00994
`Attorney Docket: 36351-0004IP1
`(7) the Board’s failure to consider the evidence of record fully and properly;
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`and
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`(8) any findings or determinations supporting or related to the
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`aforementioned issues as well as other issues decided adversely to Patent
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`Owner in any order, decisions, rulings, or opinions.
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`Simultaneous with this submission, a copy of the Notice of Appeal is being
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`filed electronically with the Patent Trial and Appeal Board. In addition, a copy of
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`this Notice of Appeal, along with the required docketing fees, are being
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`electronically filed with the Clerk’s Office for the United States Court of Appeals
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`for the Federal Circuit.
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`Date: January 10, 2022
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`Respectfully submitted,
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`/Brian J. Livedalen/
`Brian J. Livedalen, Reg. No. 67,450
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`Attorney for Patent Owner
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`Proceeding No.: IPR2020-00994
`Attorney Docket: 36351-0004IP1
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4), the undersigned certifies that on January
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`10, 2022, a complete and entire copy of this Patent Owner’s Notice of Appeal was
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`provided via email to the Petitioner by serving the correspondence email addresses
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`of record as follows:
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`Jeffrey D. Sanok
`Vincent J. Galluzzo
`Crowell & Moring LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
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`Scott L. Bittman
`Jacob Z. Zambrzycki
`Crowell & Moring LLP
`Intellectual Property Group
`590 Madison Avenue, 20th Floor
`New York, NY 10022-2544
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`Email: jsanok@crowell.com
`Email: vgalluzzo@crowell.com
`Email: sbittman@crowell.com
`Email: jzambrzycki@crowell.com
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` /Kristyn Waldhauser/
`Kristyn Waldhauser
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis MN 55402
`(612) 638-5731
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`Proceeding No.: IPR2020-00994
`Attorney Docket: 36351-0004IP1
`I hereby certify that, in addition to being filed electronically through the
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`Board’s E2E System, the original version of the foregoing Notice of Appeal, was
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`filed by hand on January 10, 2022, with the Director of the United States Patent
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`and Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 1 OB20
`600 Dulany Street
`Alexandria, VA 22314-5793
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`I hereby certify that on January 10, 2022, a true and correct copy of the
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`foregoing Notice of Appeal, along with a copy of the Final Written Decision, was
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`filed electronically with the Clerk’s Office of the United States Court of Appeals
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`for the Federal Circuit, at the following address:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005
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`/Brian J. Livedalen/
`Brian J. Livedalen, Reg. No. 67,450
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 335-5070
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