`571-272-7822
`
`Paper 43
`Entered: August 16, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAYERISCHE MOTOREN WERKE, AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`v.
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`
`IPR2020-00994
`Patent 7,104,347 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2020-00994
`Patent 7,104,347 B2
`
`A conference call was held on August 16, 2021 between Judges
`Peslak, Medley, and Deshpande and counsel for Petitioner and Patent Owner
`to discuss Petitioner’s request to submit the video recording of the
`deposition of Patent Owner’s expert, Dr. Shahbakhti, and to play portions of
`the video during the oral hearing in this case. Petitioner argued we should
`review the video recording of the deposition, in addition to reviewing the
`transcript itself, in order to assess the credibility of Dr. Shahbakhti. Patent
`Owner opposed the request.
`After hearing argument from counsel, we determine that Petitioner has
`not shown good cause to support the request. The transcript of
`Dr. Shahbakhti’s deposition and other exhibits in the record, including the
`documents on which Dr. Shahbakhti relied in forming his opinions, are
`sufficient to resolve the credibility issues raised by Petitioner during the
`telephone conference.
`
`It is:
`
`ORDERED that Petitioner’s request to submit the video recording of
`the deposition of Dr. Shahbakhti and to play portions of the video at the oral
`hearing is denied.
`
`
`
`
`
`
`
`2
`
`
`
`IPR2020-00994
`Patent 7,104,347 B2
`FOR PETITIONER:
`Jeffrey D. Sanok
`Vincent J. Galluzzo
`Scott L. Bittman
`CROWELL & MORING LLP
`jsanok@crowell.com
`vgalluzzo@crowell.com
`sbittman@crowell.com
`
`FOR PATENT OWNER:
`Ruffin B. Cordell
`Brian J. Livedalen
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`cordell@fr.com
`bvl@fr.com
`riffe@fr.com
`
`3
`
`