UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT & BMW
`OF NORTH AMERICA, LLC,
`Petitioners
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
`
`
`
`
`
`
`
`
`
`
`
`Inter Partes Review No.: IPR2020-00994
`
`U.S. Patent No. 7,104,347 K2
`
`___________________
`
`
`PETITIONERS’ MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT & BMW
`OF NORTH AMERICA, LLC,
`Petitioners
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
`
`
`
`
`
`
`
`
`
`
`
`Inter Partes Review No.: IPR2020-00994
`
`U.S. Patent No. 7,104,347 K2
`
`___________________
`
`
`PETITIONERS’ MOTION TO EXCLUDE
`
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Petitioners move to exclude
`
`Exhibits 2016, 2018, 2020, 2022-2025, and 2028.
`
`Exhibit 2016, the Declaration of Mahdi Shahbakhti, Ph.D. (“Shahbakhti
`
`Declaration” or “Shahbakhti Decl.”), is inadmissible under Federal Rules 402 and
`
`702. Shahbakhti’s testimony is not reliable because he lacks the requisite technical
`
`expertise to provide what he purports to be his opinions in Exhibit 2016.
`
`Shahbakhti showcased his lack of expertise at his deposition, where he was unable
`
`to answer straightforward questions without first spending several minutes—
`
`sometimes as much as 8 - 10 minutes—word-searching what was written for him
`
`in his declaration only to read that back as his answer.
`
`Shahbakhti’s opinions are also not reliable because they are not based on
`
`sufficient facts or data that are relevant to this case, including Exhibits 2018, 2020,
`
`2022-2025, and 2028. Those exhibits post-date the ’347 Patent’s earliest priority
`
`date by anywhere from a few years to two decades, are not relevant to any ground
`
`upon which this trial was instituted, and do not pass the admissibility threshold of
`
`Federal Rule 402.
`
`I.
`
`FACTUAL BACKGROUND
`
`A.
`
`Petitioners’ Timely Objections
`
`On February 11, 2021, Patent Owners (“PO”) filed their Patent Owner
`
`Response (Paper 22, “POR”), along with Exhibits 2016, 2018, 2020, 2022-2025
`
`1
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`and 2028. Petitioners timely filed their objections to these exhibits on February 19,
`
`2021. (See Paper 24.) There, Petitioners objected to Exhibit 2016 because
`
`Shahbakhti
`
`(a) lacks the knowledge, skill, experience, training, or education to
`
`testify as an expert in a manner that is helpful to the Board;
`
`(b) provides opinions that are not based on sufficient facts or data, or
`
`ones that he has been made aware of or personally observed; (c) has
`
`not applied reliable principles and methods; and (d) has not reliably
`
`applied such principles and methods to the facts of the case,
`
`all of which violates Federal Rules 402 and 702, and because Shahbakhti “fails to
`
`identify with particularity the underlying facts or data on which his opinions are
`
`based” in violation of 37 C.F.R. § 42.65(a). (Paper 24 at 1.) Exhibit 2016 was also
`
`objectionable “to the extent it relies on or incorporates inadmissible exhibits to
`
`which the Petitioners object herein,” such as Exhibits 2018, 2020, 2022-2025 and
`
`2028. Id.
`
`Petitioners objected to each of Exhibits 2018, 2020, 2022-2025 and 2028 as
`
`not being relevant under Federal Rule of Evidence 402 because each exhibit was
`
`dated “significantly after the September 14, 1998 priority date of the ’347 Patent,
`
`which is the date that Shahbakhti states that he is using for gauging the skill of the
`
`art.” (Id. at 2-4 (citing Ex. 2016, ¶ 29).)
`
`2
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`Petitioners now move to exclude Exhibits 2016, 2018, 2020, 2022-2025, and
`
`2028 consistent with those objections.
`
`B.
`
`Shahbakhti’s Opinions and the Irrelevant Documents on Which
`He Relied
`
`The ’347 Patent claims priority to provisional application No. 60/100,095,
`
`filed on September 14, 1998. (BMW1001 at (60).) Shahbakhti relies on that date as
`
`the earliest priority date of the ’347 Patent. (Ex. 2016, ¶¶ 29-30.) Yet Shahbakhti
`
`admitted that he had no industry experience whatsoever in September of 1998.
`
`(BMW1109 at 13:17-19.)1 In fact, he had not even obtained a bachelor’s degree at
`
`that time. (Id. at 13:6-12.) He would not get one until two years later, in 2000. (Id.
`
`at 13:13-16.) Therefore, contemporaneously, Shahbakhti was not close to meeting
`
`his own definition of a person of ordinary skill at that time, which requires “at
`
`least a Bachelor’s of Science degree in electrical engineering or mechanical
`
`engineering and at least three years of technical experience…” (Ex. 2016, ¶ 29.)
`
`(emphasis added.) While he has since achieved that threshold degree and
`
`
`1 BMW1109, which is being submitted with this Motion, is identical to previously
`
`submitted BMW1089, the May 6, 2021 Deposition Transcript of Shahbakhti in this
`
`case, except that BMW1109 additionally contains time-stamps corresponding to
`
`the testimony contained therein.
`
`3
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`experience, his testimony in this case makes clear that he is unable to testify
`
`accurately from the perspective of a POSITA back then.
`
`Shahbakhti struggled to answer straightforward questions posed to him
`
`during his depositions without repeatedly taking lengthy delays—including delays
`
`of 8, 9, and 10 minutes before answering—to first search if something was written
`
`for him on the point in his declaration. (E.g., BMW1109 at 22:4-19 (5-minute
`
`pause before answering a question about the scope of the Board’s claim
`
`construction); id. at 31:15-21 (4-minute pause before answering whether speed is a
`
`variable that can help adjust a setpoint); id. at 98:12-23 (9-minute pause before
`
`answering a question about the requirements of Claim 11); id. at 101:24-102:18 (9-
`
`minute pause before answering whether he analyzed Claims 11 and 33 to require
`
`certain details not recited in those claims); id. at 105:6-12 (6-minute pause before
`
`answering whether Claim 38 requires a two-way clutch); id. at 114:15-115:5 (5-
`
`minute pause before answering whether a one-way clutch is a particular type of
`
`non-slipping clutch); id. at 131:5-13 (3-minute pause before answering whether
`
`Severinsky ’970 alters the control scheme of prior art hybrid vehicles); id. at
`
`137:8-138:23 (3-minute pause before answering whether Nii is concerned with
`
`enhancing the efficiency of a hybrid vehicle); id. at 145:15-25 (10-minute pause
`
`before answering whether Nii is monitoring patters of vehicle operation over time
`
`as required by the claims).
`
`4
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`His subsequent answers were usually off topic and failed to answer the
`
`question posed in any meaningful way. For example:
`
` In response to a question about the scope of the Board’s construction
`
`of “monitoring patterns of vehicle operation over time,” Shahbakhti
`
`responded (after 5 minutes) with his opinion that a POSITA would not
`
`have found that limitation obvious. (Id. at 22:4-19.)
`
` In response to a question whether Claim 11 requires that its control
`
`system eliminate turbo lag, Shahbakhti responded (after 9 minutes)
`
`that a POSITA “will consider that whatever the turbocharger is going
`
`to be called to be used, then turbo lag as part of its principle should be
`
`part of it, part of its nature.” (Id. at 98:12-100:14.)
`
` In response to a question whether Claim 38 requires a two-way clutch,
`
`Shahbakhti responded (after 6 minutes) by giving a 4-minute
`
`historical overview of clutches and other irrelevant details. (Id. at
`
`105:6-108:6.)
`
`In perhaps the best example of Shahbakhti not understanding his own
`
`opinions, it took 26 minutes of questioning (from 2:46 p.m. to 3:12 p.m.) for
`
`Shahbakhti to confirm that he does not contest BMW’s position that Nii discloses
`
`“monitoring a driver’s repeated driving operations over time.” (See BMW1109 at
`
`140:15-148:7.) This should have taken all of 30 seconds, since Shahbakhti does not
`
`5
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`have any opinion to the contrary in his Declaration. (See generally Exhibit 2016.)
`
`The unreasonable delay can only be attributable to Shahbakhti’s unfamiliarity with
`
`the subject matter, the perspective of a POSITA in 1998, and what is in his
`
`Declaration.
`
`Shahbakhti failed to make up for his lack of contemporaneous experience or
`
`understanding of the topics at issue in this case by a review of literature available
`
`to a POSITA at the critical date, since he relied almost exclusively on exhibits that
`
`post-date the ’347 Patent’s earliest priority date by several years (Exhibits 2018,
`
`2020, 2022-2025, and 2028). He even relied on documents that are dated
`
`somewhere between one and two decades after the ’347 Patent’s 1998 priority
`
`date: Exhibit 2022 is dated July 2016, Exhibit 2023 carries a 2011 copyright, and
`
`Exhibit 2028 is from 2010. (Ex. 2022 at 2; Ex. 2023 at 2; Ex. 2028 at 4.) The other
`
`exhibits still come too late to provide any relevant information about the state of
`
`the art in 1998. (See Ex. 2018 at 2 (copyright 2001); Ex. 2020 at 5 (copyright
`
`2005); Ex. 2024 at 2 (1999 date); Ex. 2025 at 2 (2002 copyright).) Only four of the
`
`eleven exhibits on which Shahbakhti relies predate the ’347 Patent’s alleged
`
`priority date (Exs. 2019, 2021, 2026, 2027).
`
`Exclusion is the only appropriate remedy because it is not possible to discern
`
`how Shahbakhti may have mentally parsed those references from years and
`
`decades after the critical date when providing his opinions from the perspective of
`
`6
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`a POSITA at the critical date. He certainly did not shed any light on that in his
`
`deposition as noted above.
`
`II.
`
`Shahbakhti’s Declaration (Exhibit 2016) Should Be Excluded Under
`Federal Rules of Evidence 402, 602, and 702
`
`Petitioners recognize that the Board routinely denies motions to exclude
`
`expert witnesses under Rule 702 because the Board can give appropriate weight to
`
`testimony based on its credibility determinations rather than resort to exclusion.
`
`But here, the witness is not only unqualified to provide the opinions he did, he did
`
`not demonstrate any facility with them during his deposition.2
`
`Exhibit 2016 contains Shahbahkti’s opinions regarding the state of the art
`
`prior to September 14, 1998, the knowledge of a POSITA at that time, and how a
`
`POSITA would have interpreted the teachings of the ’347 Patent or the prior art,
`
`and whether a POSITA would have been motivated and able to combine those
`
`teachings, at the time of the ’347 Patent’s alleged inventions. Yet Shahbakhti was
`
`only halfway to his bachelor’s degree at the relevant time, and now, more than
`
`
`2 This is a case where the credibility of Shahbakhti is squarely at issue and
`
`Petitioners will request the Board’s authorization to submit the video of his
`
`deposition in short order. In the meantime, BMW1109, which is his deposition
`
`transcript with time-stamps corresponding to the testimony, will suffice.
`
`7
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`twenty years later, demonstrated in his deposition that he still cannot provide
`
`reliable testimony from the perspective of a POSITA in 1998. If he was able to do
`
`so, he would have cited contemporaneous evidence to support his opinions rather
`
`than documents dated years—some decades—after the critical date. Or he would
`
`have been able to answer straightforward deposition questions without resorting to
`
`an electronic word search of his declaration and several minutes of reading first. Or
`
`he would have been able to respond to straightforward questions posed to him in
`
`his deposition, rather than read irrelevant parts of his declaration back as his
`
`answer. Since he did not do any of these things, it is clear that Shahbakhti is
`
`incapable of providing reliable and credible testimony from the perspective of a
`
`POSITA in this case, and his testimony should be excluded.
`
`“[W]here an issue calls for consideration of evidence from the perspective of
`
`one of ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to
`
`testify on the issue who is not qualified as a technical expert in that art.” Sundance,
`
`Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008). Since
`
`Shahbakhti has no perspective of a skilled artisan as of 1998, he should be
`
`prohibited from “testify[ing] as an expert on obviousness, or any of the underlying
`
`technical questions, such as the nature of the claimed invention, the scope and
`
`content of prior art, the differences between the claimed invention and the prior art,
`
`8
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`or the motivation of one of ordinary skill in the art to combine these references to
`
`achieve the claimed invention.” Id. at 1364.
`
`III. Non-Prior Art Exhibits 2018, 2020, 2022-2025 and 2028 Should Be
`Excluded Under Federal Rule of Evidence 402
`
`Federal Rule of Evidence 402 bluntly proscribes “[i]rrelevant evidence” as
`
`“not admissible.” Fed. R. Evid. 402. It is well established that one “must look at
`
`the state of the art at the time the invention was made to find a motivation” to
`
`combine prior art references. Daiichi Sankyo Co. v. Matrix Labs., Ltd., 619 F.3d
`
`1346, 1354 (Fed. Cir. 2010) (emphasis added). Thus, evidence “issued after the
`
`invention date” is “of limited relevance” to the question of motivation to combine,
`
`for example. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d
`
`1293, 1324 (Fed. Cir. 2005).
`
`While Petitioners recognize that it can be appropriate to use post-filing
`
`evidence to show the state of the art existing around the time of the patent’s filing
`
`date, doing so was inappropriate here. Only four of the eleven (just barely over
`
`30%) exhibits on which Shahbakhti relies predate the ’347 Patent’s alleged priority
`
`date. (Exs. 2019, 2021, 2026, 2027.) The remaining exhibits all post-date that
`
`priority date, some by as long as 7, 10, 13, and 20 years. (Exs. 2018, 2020, 2022-
`
`2025, 2028.)
`
`9
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`This is not a case where Shahbakhti is relying on one or two exhibits, close
`
`to the challenged patent’s priority date, to further prove up a POSITA’s knowledge
`
`or motivations at the relevant time, as may have been expressed in another time-
`
`appropriate document. Instead, Shahbakhti attempts to fill in gaps regarding a
`
`POSITA’s knowledge or motivations
`
`for which he has no evidence
`
`contemporaneous to or predating the ’347 Patent filing date by citing references
`
`that concern hybrid vehicle technology as it existed one-to-two decades after the
`
`time of the alleged invention. Without any evidence contemporaneous to the ’347
`
`Patent to support these much-too-modern exhibits, and because Shahbakhti has
`
`demonstrated his inability to provide reliable testimony on the knowledge or
`
`motivations of a POSITA at the relevant time, Exhibits 2018, 2020, 2022-2025 and
`
`2028 should be excluded as irrelevant under Federal Rule of Evidence 402.
`
`IV. CONCLUSION
`
`For the reasons set forth above, Petitioners respectfully request exclusion of
`
`Exhibits 2016, 2018, 2020, 2022-2025 and 2028.
`
`
`
`
`
`
`
`
`10
`
`
`
`
`
`Dated: July 29, 2021
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`
`Respectfully submitted,
`
`/Vincent J. Galluzzo/
`Jeffrey D. Sanok (Reg. No. 32,169)
`Vincent J. Galluzzo (Reg. No. 67,830)
`Crowell & Moring LLP
`1001 Pennsylvania Avenue NW
`Washington, DC 20004-2595
`Tel.: (202) 624-2500
`Fax.: (202) 628-8844
`jsanok@crowell.com
`vgalluzzo@crowell.com
`
`Scott L. Bittman (Reg. No. 55,007)
`Jacob Z. Zambrzycki (pro hac vice)
`Crowell & Moring LLP
`590 Madison Avenue, 20th Floor
`New York, NY 10022-2544
`Telephone No.: (212) 223-4000
`Facsimile No.: (212) 223-4134
`sbittman@crowell.com
`jzambrzycki@crowell.com
`
`Counsel for Petitioners
`Bayerische Motoren Werke Aktiengesellschaft
`and BMW of North America, LLC
`
`
`
`
`
`
`11
`
`
`
`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), I certify that the foregoing Petitioners’
`
`Motion To Exclude was served on July 29, 2021 via electronic mail on the
`
`following counsel of record for Patent Owners:
`
`Ruffin B. Cordell (Reg. No. 33,487)
`Brian J. Livedalen (Reg. No. 67,450)
`Timothy W. Riffe (Reg. No. 43,881)
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR36351-0004IP1@fr.com
`PTABInbound@fr.com
`
`
`
`
`
`Dated: July 29, 2021
`
`
`
`Respectfully submitted,
`
`/Vincent J. Galluzzo/
`Vincent J. Galluzzo
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
