UNITED STATES PATENT AND TRADEMARK OFFICE
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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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`PETITIONERS’ REPLY IN SUPPORT OF MOTION TO EXCLUDE
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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’ REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`Petitioners’ Reply in Support of Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`Dr. Shahbakhti has demonstrated himself unqualified to testify regarding
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`any issues viewed from the perspective of a POSA at the time of the alleged
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`invention in the ’347 Patent. Although PO defends Dr. Shahbakhti’s present
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`qualifications,1 it is unable to provide any cogent explanation for the numerous
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`examples of his inability to answer basic questions without first pausing and
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`searching through his report for several minutes, and even then, often answering in
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`a nonresponsive manner. His unqualified opinions, and the post-priority date
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`documents with which he seeks to bootstrap them, should be excluded.
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`I.
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`Dr. Shahbakhti’s Opinions Should Be Excluded
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`Dr. Shahbakhti most readily demonstrated his lack of qualifications to testify
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`regarding the relevant time period during his depositions. (Mot., 4-6.) PO seeks to
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`defend Dr. Shahbakhti’s repeated prolonged pauses, often
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`followed by
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`nonresponsive answers, by arguing that “[o]ne would think that it would be
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`desirable for an expert to be careful and thoughtful before providing an answer.”
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`(Opp., 9.) But the videotaped deposition—which Petitioners encourage the Board
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`to watch (see BMW1101)—makes clear that Dr. Shahbakhti was not being
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`1 While PO cites three IPRs decisions in which Dr. Shahbakhti’s opinions were
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`credited, none of those IPRs concerned the period at issue here. IPR2019-00011
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`(May 7, 2007 priority date); IPR2019-00014 and IPR2019-00012 (Feb. 16, 2009).
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`1
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`Petitioners’ Reply in Support of Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`“careful” and “thoughtful;” he was using the computer’s search tool to word-search
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`for certain words he chose from counsel’s question, then reading what was written
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`for him in his Declaration to try to make sense of it all, due to his lack of relevant
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`knowledge and qualifications. While PO argues “it is neither surprising nor
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`unusual that an expert would take their time to answer,” Petitioners are confident
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`that if the Board views the video, it will find Dr. Shahbakhti’s behavior both
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`surprising and unusual.
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`Tellingly, PO barely attempts to defend Dr. Shahbakhti’s behavior,
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`suggesting instead that Petitioners’ questions were somehow tricky, unexpected, or
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`otherwise called for a legal conclusion. For example, PO complains that Dr.
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`Shahbakhti was asked his opinion regarding what was covered within the scope of
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`the challenged claims (Opp., 9-12), but the scope of the claims and whether the
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`prior art’s disclosures falls within it is not an attempt at a “gotcha moment[]” (id.,
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`12), but rather the central issue in this, and most any, IPR. And many of
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`Petitioners’ questions were even more straight-forward than that. Indeed, even PO
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`does not attempt to explain why it took Dr. Shahbakhti over 20 minutes to confirm
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`he does not contest that Nii discloses “monitoring a driver’s repeated driving
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`operations over time” (see BMW1109, 140:15-148:7),
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`2
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`Petitioners’ Reply in Support of Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`9 minutes before answering if claim 11 requires eliminating turbo lag (98:12-23),
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`8 minutes before answering how he analyzed two claims (101:24-102:18),
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`5 minutes to say if a one-way clutch is a type of non-slipping clutch (114:15-115:5),
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`3
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`Petitioners’ Reply in Support of Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`or 6 minutes before answering if claim 38 requires a two-way clutch (105:6-12),
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`PO has no cogent explanation for these or the numerous other examples of
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`Dr. Shahbakhti’s inability to answer Petitioners’ straight-forward questioning
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`about his “own” analysis as stated in “his” Declaration in a responsive manner
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`(or sometimes at all), even after his abnormal delays. (Mot., 4-6.) His opinions
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`should therefore be excluded. See Roper v. Kawasaki Heavy Indus., Ltd., No. 13-
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`cv-03661, 2015 WL 11236553 (N.D. Ga. June 29, 2015) (excluding testimony of
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`expert who was unable to give precise answers); Chico’s Fas, Inc. v. Clair, No. 13-
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`cv-792, 2015 WL 3496003, at *3 (M.D. Fla. June 3, 2015) (warning that “evasive
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`answers may result in the witness being disallowed as an expert”).
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`Contrary to PO’s attempts at distraction (Opp., 1-9), Petitioners are not
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`challenging Dr. Shahbakhti’s qualifications to opine regarding the present state of
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`the art, or disputing the general authority that an expert need not necessarily have
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`qualified as a POSA at the time of the invention to be qualified as an expert in the
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`relevant field. Rather, Petitioners dispute Dr. Shahbakhti’s qualifications to opine
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`regarding issues viewed from the perspective of a POSA prior to the September 14,
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`4
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`Petitioners’ Reply in Support of Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`1998 date of the alleged inventions based on his demonstrated lack of
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`qualifications to testify regarding that time period, which was shown at his
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`deposition, as discussed above. When combined with his undisputed lack of
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`experience rising to the level of a POSA at the relevant time (or for several years
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`thereafter), and his inability to provide evidence contemporaneous to the filing date
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`of the ’347 Patent that would bolster his otherwise unsupported testimony
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`regarding the state of the art at that time, his lack of knowledge regarding the
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`period at issue becomes clear, and his testimony should be excluded.
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`II. Exhibits 2018, 2020, 2022-2025 and 2028 Should Be Excluded
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`Petitioners acknowledge (Mot., 9) that it can be appropriate to use post-
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`filing evidence “in a supportive role.” (Opp., 14 (quoting Yeda Research v. Mylan
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`Pharms., Inc., 906 F.3d 1031, 1041 (Fed. Cir. 2018)).) But the post-filing Exhibits
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`here constitute the majority of PO’s evidence and are not corroborated with any
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`evidence that would show that the supposed “typical structure of a turbocharged
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`engine control system” (Opp., 13 (citing Ex. 2028)), “packaging limitations for
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`turbochargers” (citing Ex. 2023),“mechanics of a common free wheel unit” (citing
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`Ex. 2025), or myriad other components, systems, etc. existing at the time of these
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`post-filing Exhibits are representative of those known at the relevant time. These
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`Exhibits should be excluded, and Dr. Shahbakhti prevented from relying on them,
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`which would only compound the unreliability of his unqualified opinions.
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`5
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`Petitioners’ Reply in Support of Motion To Exclude, IPR2020-00994
`U.S. Patent No. 7,104,347
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`Dated: August 12, 2021
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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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`6
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`Petitioners’ Reply in Support of 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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`Reply in Support of Motion To Exclude was served on August 12, 2021 via
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`electronic mail on the 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: August 12, 2021
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`Respectfully submitted,
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`/Vincent J. Galluzzo/
`Vincent J. Galluzzo
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`7
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