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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT & BMW
`OF NORTH AMERICA, LLC,
`Petitioners
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
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`Inter Partes Review No.: IPR2020-00994
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`U.S. Patent No. 7,104,347 K2
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`___________________
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`PETITIONERS’ MOTION TO EXCLUDE
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Petitioners move to exclude
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`Exhibits 2016, 2018, 2020, 2022-2025, and 2028.
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`Exhibit 2016, the Declaration of Mahdi Shahbakhti, Ph.D. (“Shahbakhti
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`Declaration” or “Shahbakhti Decl.”), is inadmissible under Federal Rules 402 and
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`702. Shahbakhti’s testimony is not reliable because he lacks the requisite technical
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`expertise to provide what he purports to be his opinions in Exhibit 2016.
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`Shahbakhti showcased his lack of expertise at his deposition, where he was unable
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`to answer straightforward questions without first spending several minutes—
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`sometimes as much as 8 - 10 minutes—word-searching what was written for him
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`in his declaration only to read that back as his answer.
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`Shahbakhti’s opinions are also not reliable because they are not based on
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`sufficient facts or data that are relevant to this case, including Exhibits 2018, 2020,
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`2022-2025, and 2028. Those exhibits post-date the ’347 Patent’s earliest priority
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`date by anywhere from a few years to two decades, are not relevant to any ground
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`upon which this trial was instituted, and do not pass the admissibility threshold of
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`Federal Rule 402.
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`I.
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`FACTUAL BACKGROUND
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`A.
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`Petitioners’ Timely Objections
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`On February 11, 2021, Patent Owners (“PO”) filed their Patent Owner
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`Response (Paper 22, “POR”), along with Exhibits 2016, 2018, 2020, 2022-2025
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`1
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`and 2028. Petitioners timely filed their objections to these exhibits on February 19,
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`2021. (See Paper 24.) There, Petitioners objected to Exhibit 2016 because
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`Shahbakhti
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`(a) lacks the knowledge, skill, experience, training, or education to
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`testify as an expert in a manner that is helpful to the Board;
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`(b) provides opinions that are not based on sufficient facts or data, or
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`ones that he has been made aware of or personally observed; (c) has
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`not applied reliable principles and methods; and (d) has not reliably
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`applied such principles and methods to the facts of the case,
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`all of which violates Federal Rules 402 and 702, and because Shahbakhti “fails to
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`identify with particularity the underlying facts or data on which his opinions are
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`based” in violation of 37 C.F.R. § 42.65(a). (Paper 24 at 1.) Exhibit 2016 was also
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`objectionable “to the extent it relies on or incorporates inadmissible exhibits to
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`which the Petitioners object herein,” such as Exhibits 2018, 2020, 2022-2025 and
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`2028. Id.
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`Petitioners objected to each of Exhibits 2018, 2020, 2022-2025 and 2028 as
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`not being relevant under Federal Rule of Evidence 402 because each exhibit was
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`dated “significantly after the September 14, 1998 priority date of the ’347 Patent,
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`which is the date that Shahbakhti states that he is using for gauging the skill of the
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`art.” (Id. at 2-4 (citing Ex. 2016, ¶ 29).)
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`2
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`Petitioners now move to exclude Exhibits 2016, 2018, 2020, 2022-2025, and
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`2028 consistent with those objections.
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`B.
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`Shahbakhti’s Opinions and the Irrelevant Documents on Which
`He Relied
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`The ’347 Patent claims priority to provisional application No. 60/100,095,
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`filed on September 14, 1998. (BMW1001 at (60).) Shahbakhti relies on that date as
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`the earliest priority date of the ’347 Patent. (Ex. 2016, ¶¶ 29-30.) Yet Shahbakhti
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`admitted that he had no industry experience whatsoever in September of 1998.
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`(BMW1109 at 13:17-19.)1 In fact, he had not even obtained a bachelor’s degree at
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`that time. (Id. at 13:6-12.) He would not get one until two years later, in 2000. (Id.
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`at 13:13-16.) Therefore, contemporaneously, Shahbakhti was not close to meeting
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`his own definition of a person of ordinary skill at that time, which requires “at
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`least a Bachelor’s of Science degree in electrical engineering or mechanical
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`engineering and at least three years of technical experience…” (Ex. 2016, ¶ 29.)
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`(emphasis added.) While he has since achieved that threshold degree and
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`1 BMW1109, which is being submitted with this Motion, is identical to previously
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`submitted BMW1089, the May 6, 2021 Deposition Transcript of Shahbakhti in this
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`case, except that BMW1109 additionally contains time-stamps corresponding to
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`the testimony contained therein.
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`3
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`experience, his testimony in this case makes clear that he is unable to testify
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`accurately from the perspective of a POSITA back then.
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`Shahbakhti struggled to answer straightforward questions posed to him
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`during his depositions without repeatedly taking lengthy delays—including delays
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`of 8, 9, and 10 minutes before answering—to first search if something was written
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`for him on the point in his declaration. (E.g., BMW1109 at 22:4-19 (5-minute
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`pause before answering a question about the scope of the Board’s claim
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`construction); id. at 31:15-21 (4-minute pause before answering whether speed is a
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`variable that can help adjust a setpoint); id. at 98:12-23 (9-minute pause before
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`answering a question about the requirements of Claim 11); id. at 101:24-102:18 (9-
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`minute pause before answering whether he analyzed Claims 11 and 33 to require
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`certain details not recited in those claims); id. at 105:6-12 (6-minute pause before
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`answering whether Claim 38 requires a two-way clutch); id. at 114:15-115:5 (5-
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`minute pause before answering whether a one-way clutch is a particular type of
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`non-slipping clutch); id. at 131:5-13 (3-minute pause before answering whether
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`Severinsky ’970 alters the control scheme of prior art hybrid vehicles); id. at
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`137:8-138:23 (3-minute pause before answering whether Nii is concerned with
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`enhancing the efficiency of a hybrid vehicle); id. at 145:15-25 (10-minute pause
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`before answering whether Nii is monitoring patters of vehicle operation over time
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`as required by the claims).
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`4
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`His subsequent answers were usually off topic and failed to answer the
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`question posed in any meaningful way. For example:
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` In response to a question about the scope of the Board’s construction
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`of “monitoring patterns of vehicle operation over time,” Shahbakhti
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`responded (after 5 minutes) with his opinion that a POSITA would not
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`have found that limitation obvious. (Id. at 22:4-19.)
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` In response to a question whether Claim 11 requires that its control
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`system eliminate turbo lag, Shahbakhti responded (after 9 minutes)
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`that a POSITA “will consider that whatever the turbocharger is going
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`to be called to be used, then turbo lag as part of its principle should be
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`part of it, part of its nature.” (Id. at 98:12-100:14.)
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` In response to a question whether Claim 38 requires a two-way clutch,
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`Shahbakhti responded (after 6 minutes) by giving a 4-minute
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`historical overview of clutches and other irrelevant details. (Id. at
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`105:6-108:6.)
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`In perhaps the best example of Shahbakhti not understanding his own
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`opinions, it took 26 minutes of questioning (from 2:46 p.m. to 3:12 p.m.) for
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`Shahbakhti to confirm that he does not contest BMW’s position that Nii discloses
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`“monitoring a driver’s repeated driving operations over time.” (See BMW1109 at
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`140:15-148:7.) This should have taken all of 30 seconds, since Shahbakhti does not
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`5
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`have any opinion to the contrary in his Declaration. (See generally Exhibit 2016.)
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`The unreasonable delay can only be attributable to Shahbakhti’s unfamiliarity with
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`the subject matter, the perspective of a POSITA in 1998, and what is in his
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`Declaration.
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`Shahbakhti failed to make up for his lack of contemporaneous experience or
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`understanding of the topics at issue in this case by a review of literature available
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`to a POSITA at the critical date, since he relied almost exclusively on exhibits that
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`post-date the ’347 Patent’s earliest priority date by several years (Exhibits 2018,
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`2020, 2022-2025, and 2028). He even relied on documents that are dated
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`somewhere between one and two decades after the ’347 Patent’s 1998 priority
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`date: Exhibit 2022 is dated July 2016, Exhibit 2023 carries a 2011 copyright, and
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`Exhibit 2028 is from 2010. (Ex. 2022 at 2; Ex. 2023 at 2; Ex. 2028 at 4.) The other
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`exhibits still come too late to provide any relevant information about the state of
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`the art in 1998. (See Ex. 2018 at 2 (copyright 2001); Ex. 2020 at 5 (copyright
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`2005); Ex. 2024 at 2 (1999 date); Ex. 2025 at 2 (2002 copyright).) Only four of the
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`eleven exhibits on which Shahbakhti relies predate the ’347 Patent’s alleged
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`priority date (Exs. 2019, 2021, 2026, 2027).
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`Exclusion is the only appropriate remedy because it is not possible to discern
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`how Shahbakhti may have mentally parsed those references from years and
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`decades after the critical date when providing his opinions from the perspective of
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`6
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`a POSITA at the critical date. He certainly did not shed any light on that in his
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`deposition as noted above.
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`II.
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`Shahbakhti’s Declaration (Exhibit 2016) Should Be Excluded Under
`Federal Rules of Evidence 402, 602, and 702
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`Petitioners recognize that the Board routinely denies motions to exclude
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`expert witnesses under Rule 702 because the Board can give appropriate weight to
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`testimony based on its credibility determinations rather than resort to exclusion.
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`But here, the witness is not only unqualified to provide the opinions he did, he did
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`not demonstrate any facility with them during his deposition.2
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`Exhibit 2016 contains Shahbahkti’s opinions regarding the state of the art
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`prior to September 14, 1998, the knowledge of a POSITA at that time, and how a
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`POSITA would have interpreted the teachings of the ’347 Patent or the prior art,
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`and whether a POSITA would have been motivated and able to combine those
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`teachings, at the time of the ’347 Patent’s alleged inventions. Yet Shahbakhti was
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`only halfway to his bachelor’s degree at the relevant time, and now, more than
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`2 This is a case where the credibility of Shahbakhti is squarely at issue and
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`Petitioners will request the Board’s authorization to submit the video of his
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`deposition in short order. In the meantime, BMW1109, which is his deposition
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`transcript with time-stamps corresponding to the testimony, will suffice.
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`7
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`twenty years later, demonstrated in his deposition that he still cannot provide
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`reliable testimony from the perspective of a POSITA in 1998. If he was able to do
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`so, he would have cited contemporaneous evidence to support his opinions rather
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`than documents dated years—some decades—after the critical date. Or he would
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`have been able to answer straightforward deposition questions without resorting to
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`an electronic word search of his declaration and several minutes of reading first. Or
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`he would have been able to respond to straightforward questions posed to him in
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`his deposition, rather than read irrelevant parts of his declaration back as his
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`answer. Since he did not do any of these things, it is clear that Shahbakhti is
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`incapable of providing reliable and credible testimony from the perspective of a
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`POSITA in this case, and his testimony should be excluded.
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`“[W]here an issue calls for consideration of evidence from the perspective of
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`one of ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to
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`testify on the issue who is not qualified as a technical expert in that art.” Sundance,
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`Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008). Since
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`Shahbakhti has no perspective of a skilled artisan as of 1998, he should be
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`prohibited from “testify[ing] as an expert on obviousness, or any of the underlying
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`technical questions, such as the nature of the claimed invention, the scope and
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`content of prior art, the differences between the claimed invention and the prior art,
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`8
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`or the motivation of one of ordinary skill in the art to combine these references to
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`achieve the claimed invention.” Id. at 1364.
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`III. Non-Prior Art Exhibits 2018, 2020, 2022-2025 and 2028 Should Be
`Excluded Under Federal Rule of Evidence 402
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`Federal Rule of Evidence 402 bluntly proscribes “[i]rrelevant evidence” as
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`“not admissible.” Fed. R. Evid. 402. It is well established that one “must look at
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`the state of the art at the time the invention was made to find a motivation” to
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`combine prior art references. Daiichi Sankyo Co. v. Matrix Labs., Ltd., 619 F.3d
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`1346, 1354 (Fed. Cir. 2010) (emphasis added). Thus, evidence “issued after the
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`invention date” is “of limited relevance” to the question of motivation to combine,
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`for example. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d
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`1293, 1324 (Fed. Cir. 2005).
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`While Petitioners recognize that it can be appropriate to use post-filing
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`evidence to show the state of the art existing around the time of the patent’s filing
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`date, doing so was inappropriate here. Only four of the eleven (just barely over
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`30%) exhibits on which Shahbakhti relies predate the ’347 Patent’s alleged priority
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`date. (Exs. 2019, 2021, 2026, 2027.) The remaining exhibits all post-date that
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`priority date, some by as long as 7, 10, 13, and 20 years. (Exs. 2018, 2020, 2022-
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`2025, 2028.)
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`9
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`This is not a case where Shahbakhti is relying on one or two exhibits, close
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`to the challenged patent’s priority date, to further prove up a POSITA’s knowledge
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`or motivations at the relevant time, as may have been expressed in another time-
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`appropriate document. Instead, Shahbakhti attempts to fill in gaps regarding a
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`POSITA’s knowledge or motivations
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`for which he has no evidence
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`contemporaneous to or predating the ’347 Patent filing date by citing references
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`that concern hybrid vehicle technology as it existed one-to-two decades after the
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`time of the alleged invention. Without any evidence contemporaneous to the ’347
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`Patent to support these much-too-modern exhibits, and because Shahbakhti has
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`demonstrated his inability to provide reliable testimony on the knowledge or
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`motivations of a POSITA at the relevant time, Exhibits 2018, 2020, 2022-2025 and
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`2028 should be excluded as irrelevant under Federal Rule of Evidence 402.
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`IV. CONCLUSION
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`For the reasons set forth above, Petitioners respectfully request exclusion of
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`Exhibits 2016, 2018, 2020, 2022-2025 and 2028.
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`10
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`Dated: July 29, 2021
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`
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`Respectfully submitted,
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`/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
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`Counsel for Petitioners
`Bayerische Motoren Werke Aktiengesellschaft
`and BMW of North America, LLC
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`11
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`Petitioners’ Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`Certificate of Service
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`Pursuant to 37 C.F.R. § 42.6(e)(4), I certify that the foregoing Petitioners’
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`Motion To Exclude was served on July 29, 2021 via electronic mail on the
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`following counsel of record for Patent Owners:
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`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
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`Dated: July 29, 2021
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`Respectfully submitted,
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`/Vincent J. Galluzzo/
`Vincent J. Galluzzo
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`12
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