Petitioners’
`Oral Argument Demonstratives
`
`Bayerische Motoren Werke Aktiengesellschaft &
`BMW of North America, LLC,
`Petitioners
`v.
`Paice LLC & The Abell Foundation, Inc.,
`Patent Owners
`
`IPR2020‐00994
`U.S. Patent No. 7,104,347 K2
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`BMW1110
`BMW v. Paice, IPR2020‐00994
`11
`
`
`Oral Argument Demonstratives
`
`Bayerische Motoren Werke Aktiengesellschaft &
`BMW of North America, LLC,
`Petitioners
`v.
`Paice LLC & The Abell Foundation, Inc.,
`Patent Owners
`
`IPR2020‐00994
`U.S. Patent No. 7,104,347 K2
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`BMW1110
`BMW v. Paice, IPR2020‐00994
`11
`
`
`
`The Challenged Claims (2, 11, 17, 24, 33, 38) All
`Depend from Previously Canceled Claims
`
`Petition
`
`Source: E.g., Pet. at 3‐5; BMW1003; BMW1004; BMW1005; BMW1006.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`Canceled Claims 1 and 23 Claimed the Supposedly Novel
`Control Strategies to Which the ’347 Patent Is Directed
`
`’347 Patent
`
`Source: E.g., Pet. at 1‐5, 15; BMW1001 at Claims 1, 23.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`
`
`Paice Is Precluded from Departing from the Board’s Previous
`Determinations on Its Claims and Constructions
`
`Papst Licensing v. Samsung Electronics, 924 F.3d
`1243 (Fed. Cir. 2019)
`
`“The Supreme Court has made clear that, under specified
`conditions, a tribunal’s resolution of an issue that is only one part
`of an ultimate legal claim can preclude the loser on that issue
`from later contesting, or continuing to contest, the same issue in
`a separate case.” (1250)
`
`“[T]he same is true of an IPR proceeding before the Patent Trial
`and Appeal Board, so that the issue preclusion doctrine can apply
`in this court to the Patent Trial and Appeal Board’s decision in an
`IPR once it becomes final.” (1250‐51)
`
`Source: Pet. at 6, 15; Reply at 11; Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1250‐51 (Fed.
`Cir. 2019).
`
`4
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Paice’s Bodily Incorporation Arguments Are Irrelevant to
`BMW’s Obviousness Grounds
`
`In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012)
`
`“It is well‐established that a determination of obviousness based
`on teachings from multiple references does not require an actual,
`physical substitution of elements.” (1332)
`
`“[I]t is not necessary that the inventions of the references be
`physically combinable to render obvious the invention under
`review.” (1332)
`
`Source: Reply at 4, 20; In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`
`
`‘347 Patent Didn’t Invent Tacked‐on Features—Well‐Known
`Features Merely Added To the Control Strategy
`
`(Monitoring
`Patterns)
`
`(Four‐Wheel
`Drive)
`
`(Turbocharger)
`
`(Monitoring
`Patterns)
`
`(Sync Output
`Shaft Speeds)
`
`(Turbocharger)
`
`powering both sets of wheels;
`i.e., four‐wheel drive
`(claim 17)
`
`controlling engine and motor so
`output shafts are substantially
`equal when clutch is engaged
`(claim 38)
`
`varying the setpoint based on
`monitored patterns of driver
`operation over time
`(claims 2 and 24)
`
`turbocharging an engine in a
`hybrid vehicle to increase its MTO
`(claims 11 and 33)
`
`1 2 3 4
`
`Source: E.g., Pet. at 1‐4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`
`
`FOUR‐WHEEL DRIVE
`
`CLAIM 17 IS OBVIOUS OVER
`FOUR-WHEEL DRIVE
`SEVERINSKY + EHSANI (GROUND 2C)
`
`CLAIM 17 IS OBVIOUS OVER
`SEVERINSKY + EHSANI (GROUND 2C)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`
`
`The Board Was Initially Skeptical of BMW’s Arguments on
`Claim 17 (Four‐Wheel Drive) at Institution
`
`Institution Decision
`
`Source: ID at 51‐53.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`
`
`‘347 Patent Didn’t Invent Four‐Wheel Drive Hybrid Using Two
`Electric Motors—Just Adopted from Ehsani
`
`’347 Patent
`
`Source: Pet. at 1‐5, 15; BMW1001 at Claims 1, 17.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`
`
`‘347 Patent Didn’t Invent Four‐Wheel Drive Hybrid Using Two
`Electric Motors—Just Adopted from Ehsani
`
`’347 Patent
`
`Source: Pet. at 13, 41, 43; BMW1001 at 10:14‐36; BMW1008 at ¶¶262‐264, 596.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`
`
`‘347 Patent Didn’t Invent Four‐Wheel Drive Hybrid Using Two
`Electric Motors—Just Adopted from Ehsani
`
`Ehsani
`
`Source: Pet. at 13, 41; BMW1008 at ¶¶262, 596; BMW1019 at Fig. 7.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`11
`
`
`
`Board Has Already Found a POSA Would Have Been Motivated
`to Combine Severinsky and Ehsani
`
`IPR2014‐00571 FWD
`
`Source: Pet. at 11, 15, 37; BMW1003 at 22‐23.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`
`
`Adding Second Independent Motor‐Driven Components from
`Ehsani into Severinsky Is Trivial
`
`Severinsky
`
`Ehsani
`
`Source: Pet. at 41‐44; Reply at 21‐23; BMW1008 at ¶¶598‐602; BMW1088 at ¶188; BMW1013 at Fig. 3; BMW1019 at Fig. 7.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`13
`
`
`
`The Severinsky + Ehsani Combination Already Has Two Motors,
`Ehsani Provides Further Motivation to a POSA for Independent
`Drive of Front and Rear Wheels
`
`● A POSA Would Be Motivated to Make the Modification
`1. Four‐wheel drives are advantageous over two‐wheel drive
`in certain driving and weather conditions.
`2. Using two motors tied to different road wheels can lead to
`better handling and increased use cases.
`3. Driver would have a choice whether to select two‐wheel or
`four‐wheel drive
`4. Ehsani teaches that electric motors could operate with
`“dual functionality.”
`5. Ehsani has a similar architecture and goals.
`
`Source: Pet. at 42; Reply at 24‐25; BMW1008 at ¶¶599, 854‐61; BMW1088 at ¶118.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`
`
`BMW’s Arguments Are Grounded in the Petition
`
`Petition
`
`Source: Pet. at 42‐43.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`15
`
`
`
`Severinsky’s Torque Transfer Unit Cannot Control All Four
`Wheels Without Additional Design and Componentry
`
`Severinsky
`
`Severinsky References “Four
`Wheel” Drive in Passing
`
`A POSA understands
`implementation would
`requires more components
`
`Dr. Davis
`
`Source: Pet. at 42; Reply at 24; BMW1013, 11:53‐64, Fig. 11; BMW1088 at ¶¶110‐114.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`
`
`Severinsky’s Torque Transfer Unit Cannot Control All Four
`Wheels Without Additional Design and Componentry
`
`Bosch Automotive
`Handbook
`
`Dr. Davis
`Dr. Davis explains:
`A four‐wheel drive system
`“increases the number of
`differentials from one to
`three: front, rear, and
`center (transfer case).”
`
`Source: Reply at 24; BMW1088 at ¶113; BMW1095 at 573.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`
`
`Severinsky’s Torque Transfer Unit Cannot Control All Four
`Wheels Without Additional Design and Componentry
`
`Goodsell
`
`Dr. Davis
`
`Dr. Davis explains:
`A four‐wheel drive system must allow
`the wheels of the vehicle “to rotate at
`different speeds during cornering.”
`
`Source: Reply at 24; BMW1088 at ¶¶111‐112; BMW1096 at 239; BMW1095 at 571.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`18
`
`
`
`FOUR‐WHEEL DRIVE
`
`CLAIM 17 IS OBVIOUS OVER
`FOUR-WHEEL DRIVE
`BUMBY + EHSANI (GROUND 4C)
`
`CLAIM 17 IS OBVIOUS OVER
`BUMBY+ EHSANI (GROUND 4C)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`
`
`Bumby Already Has Two Motors, Ehsani Provides the Motivation to
`a POSA for Independent Drive of Front and Rear Wheels
`
`Bumby Project
`
`IPR2014‐00579 FWD
`
`Source: Pet. at 49‐51, 57‐58; BMW1015 at 1; BMW1017 at 1; BMW1004 at 25.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`
`
`Bumby Already Has Two Motors, Ehsani Provides the Motivation to
`a POSA for Independent Drive of Front and Rear Wheels
`
`● A POSA Would Be Motivated to Make the Modification
`1. Four‐wheel drives are advantageous over two‐wheel drive
`in certain driving and weather conditions.
`2. Using two motors tied to different road wheels can lead to
`better handling and increased use cases.
`3. Driver would have a choice whether to select two‐wheel or
`four‐wheel drive
`4. Ehsani teaches that electric motors could operate with
`“dual functionality.”
`5. Ehsani has a similar architecture and goals.
`
`Source: Pet. at 71‐72; BMW1008 at ¶¶854‐61; see also Pet. at 42 (referenced by Pet. at 71).
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`
`
`SYNC OUTPUT SHAFT SPEEDS
`
`CLAIM 38 IS OBVIOUS OVER
`SYNC OUTPUT SHAFT SPEEDS
`BUMBY + EHSANI (GROUND 4C)
`
`CLAIM 38 IS OBVIOUS OVER
`BUMBY + EHSANI (GROUND 4C)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`
`
`Controlling the Output Shafts to Be Substantially Equal at the
`Time of Engaging the Clutch Was Well Known
`
`’347 Patent
`
`“the speeds of said engine
`and/or first motor and of
`said second motor are
`controlled”
`
`“when said clutch is
`engaged the speeds of the
`first and second output
`shafts are substantially
`equal”
`
`Source: Pet. at 1‐5, 15; BMW1001 at Claims 23, 38; Reply at 28.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`
`
`Paice’s Arguments Are Unsupported Because
`Paice Failed to Propose Claim Constructions
`
`Reply
`
`Sur‐Reply
`
`24
`
`Source: Reply at 27; Sur‐Reply at 26.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Bumby Discloses Everything and Suggests Using a “Non‐Slipping
`Clutch;” Ehsani Provides a POSA Further Motivation to Use the Same
`
`Bumby Project
`
`Source: Pet. at 67; BMW1015, Fig. 2; BMW1008 at ¶¶864‐67.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`
`
`Bumby Controls the Output Shafts to Be Substantially Equal in
`Less Than One Second
`
`Bumby Project
`
`“Synchronization is deemed
`complete when the engine
`speed is within 45 rev/min of
`the drive‐train speed.”
`
`Source: Reply at 27; BMW1018 at 6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`
`
`Bumby Explicitly “Synchronizes” the Drive Shafts with “Fast
`Response” and Precision to “Avoid a Shock Torque”
`
`Bumby Project
`
`Bumby repeatedly emphasizes the precision
`needed in synchronization to avoid shock
`torque and other unwanted effects
`
`Source: Reply at 27‐28; BMW1017 at 3; BMW1018 at 3, 5, 6.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`
`
`Bumby Was Written by POSAs, Who Believed 45 rpm Was
`“Substantially Equal”
`
`The Bumby authors have sufficient
`qualifications to be POSAs
`
`Bumby Project
`
`Shahbakhti agrees that 45rpm
`was good enough for them
`
`Dr. Shahbakhti
`
`Source: E.g., Reply at 27; BMW1018 at 1; BMW1109 at 112:11‐21.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`
`
`Contemporary Publications About Clutch Management
`Systems Confirms that 45rpm Is Substantially Equal
`
`“A precise Clutch Management System” can
`control relative slip “between 50 and 100 RPM.”
`
`Nordgard
`
`Source: Reply at 27‐28; BMW1088 at ¶140; BMW1097 at 138.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Dr. Davis
`
`29
`
`
`
`Dr. Shahbakhti’s “Support” Is Irrelevant to the Dispute
`
`● Inoue (Ex. 2026) and Watanabe (Ex. 2027):
`1. Relate to idle engine control, not control of
`engines under load.
`2. Do not mention a “clutch” and are thus irrelevant
`to clutches.
`3. Are not concerned with synchronizing the engine’s
`output shaft with another output shaft.
`4. Control the engine at a much lower speed than
`Bumby (700 rpm vs. ~1600 rpm)
`5. Concern conventional, not hybrid electric systems
`
`Source: Reply at 28; BMW1088 at ¶141; Ex. 2026 at 1; Ex. 2027 at 1; see also generally Ex. 2026, Ex. 2027.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`
`
`Bumby Teaches Away from Using Slipping Clutches
`
`Bumby Project
`
`Source: Pet. at 68‐69; BMW1015 at 4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`
`
`SYNC OUTPUT SHAFT SPEEDS
`
`CLAIM 38 IS OBVIOUS OVER
`SYNC OUTPUT SHAFT SPEEDS
`SEVERINSKY + EHSANI (GROUND 1C)
`
`CLAIM 38 IS OBVIOUS OVER
`SEVERINSKY + EHSANI (GROUND 1C)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`
`
`A POSA Would Be Motivated to Control the Engine and Motor Speed
`of Severinsky Because it Was Known to Reduce Clutch Wear
`
`● The Board has already found a POSA would be motivated to
`combine Severinsky and Ehsani.
`● A POSA would be further motivated to substitute the two‐way
`clutch of Severinsky with the non‐slip clutch of Ehsani
`because:
`1. Non‐slip clutches improve driveline efficiency.
`2. Non‐slip clutch would simplify control.
`3. Severinsky’s “two‐way” clutch is merely
`“exemplary.”
`4. Non‐slip clutch could be used in conjunction with
`all four modes of Severinsky’s torque transfer unit.
`
`Source: Pet. at 34‐36; Reply at 29‐30; BMW1003 at 22‐23; BMW1088, pp. 129‐30, 132‐33; BMW1013, 15:11‐19; BMW1019,
`8:44‐57, Fig. 6.
`
`33
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`MONITORING PATTERNS
`
`CLAIMS 2 AND 24 ARE OBVIOUS OVER
`MONITORING PATTERNS
`SEVERINSKY + NII (GROUND 3A) AND
`SEVERINSKY + EHSANI + NII (GROUND 3B)
`CLAIMS 2 AND 24 ARE OBVIOUS OVER
`SEVERINSKY+ NII (GROUND 3A) AND
`SEVERINSKY + EHSANI + NII (GROUND 3B)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`
`
`Claims 2 and 24 Merely Add That the Unpatentable Setpoint‐Based
`Control Strategy Can Be Modified Based on Monitored Patterns
`
`’347 Patent
`
`Source: E.g., Pet. at 1‐5, 15; BMW1001 at Claims 1, 2, 23, 24; Reply at 1‐12; BMW1008 at ¶¶605‐18; BMW1088 at ¶¶7‐63.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`
`
`“Monitoring Patterns of Vehicle Operation over Time” Is
`Broad and Straightforward
`
`IPR2014‐00885 FWD
`
`Source: Pet. at 8; BMW1011 at 11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`
`
`Nii Teaches “Monitor[ing]” the Same “Patterns of Vehicle
`Operation Over Time” as Taught in the ’347 Patent
`
`’347 Patent
`
`Nii
`
`Source: E.g., Pet. at 44‐45; Reply at 2; BMW1001 at 40:56‐41:9; BMW1022 at 2:21‐24; BMW1008 at ¶¶608‐09; BMW1088 at
`¶32.
`
`37
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Severinsky Discloses “Vary[ing] Said Setpoint”; Hysteresis Is
`One Example of That
`
`Severinsky
`
`Institution Decision
`
`Source: E.g., Pet. at 20, 45‐47; Reply at 8‐10; BMW1008 at ¶¶404, 611; BMW1088 at ¶¶9‐10; BMW1013 at 8:27‐30; 20:63‐
`67; 18:23‐42; ID at 31‐32.
`
`38
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`A POSA Would Have Been Generally Motivated to Further
`Enhance the Efficiency of Severinsky’s Vehicle
`
`Dr. Shahbakhti
`
`* * *
`
`Source: E.g., Pet. at 45‐48; Reply at 1‐2; BMW1008 at ¶¶610‐14; BMW1088 at ¶36; BMW1109 at 77:9‐18, 130:11‐131:21.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`
`
`A POSA Would Have Known That Severinsky’s Factory‐Defined
`Setpoint Could Be Further Refined To Increase Efficiency
`
`Dr. Davis
`
`Dr. Shahbakhti
`Source: E.g., Pet. at 24‐26, 46‐47; Reply at 2‐3; BMW1008 at ¶¶415‐416, 612‐614; BMW1088 at ¶¶34‐36; BMW1109 at
`80:3‐81:16.
`
`40
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Severinsky’s Speed Values Correspond
`to Torque Values and Vice Versa (Just as in the ’347 Patent)
`
`Dr. Davis
`
`Institution Decision
`
`Recognized “the Board’s
`prior finding that speed
`plays a role in the road load
`responsive control strategy
`of the ‘347 Patent”
`
`Source: E.g., Reply at 8‐10; Pet. at 20; BMW1008 at ¶¶386, 396; BMW1088 at ¶¶9‐10; ID at 31‐32; BMW1003 at 15‐17.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`
`
`Severinsky’s Hysteresis Must
`Take Instantaneous Torque Into Account
`
`Severinsky
`
`Dr. Davis
`
`Source: E.g., Reply at 8‐9; Pet. at 20, 25‐26, 46; BMW1008 at ¶¶404, 414‐17; BMW1088 at ¶12; BMW1013 at 17:11‐15.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`
`
`POSA Would Have Known
`How To Implement Nii’s Pattern‐Monitoring Functionality
`Into Severinsky’s Controller To Vary the Setpoint
`
`’347 Patent
`
`Nii
`
`Source: E.g., Pet. at 47‐48; Reply at 3‐4; BMW1001 at 40:56‐41:9; BMW1022 at 2:14‐24; BMW1008 at ¶614; BMW1088 at
`¶63.
`
`43
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Board Rejected Years Ago Paice’s Argument That Severinsky’s
`Control System Only Takes Speed Into Account
`
`BMW1003
`
`Severinsky
`
`Source: E.g., Reply at 8‐9, 11‐12; ID at 31‐32; BMW1003 at 15‐17; BMW1013 at 18:23‐42, 20:63‐67.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`Severinsky’s Speed Values Correspond
`to Torque Values and Vice Versa (Just as in the ’347 Patent)
`
`’347 Patent
`
`Severinsky
`
`Source: E.g., Pet. at 20, 25‐26, 46; Reply at 9‐10; BMW1008 at ¶¶404, 414‐17; BMW1088 at ¶¶8‐26; BMW1001 at 17:34‐37;
`BMW1013 at 20:63‐67; 18:23‐42; 7:8‐16.
`
`45
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Severinsky Does Not “Disregard” the Setpoint During Hysteresis; It
`Varies It in the Same Way as Described in ’347 Patent
`
`’347 Patent
`
`Source: E.g., Pet. at 20; Reply at 10; BMW1008 at ¶404; BMW1088 at ¶¶27‐29; BMW1001 at 41:10‐54.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`
`
`BMW’s Arguments in This IPR Are Consistent with Its Arguments in
`the IPR Regarding the ’634 Patent, Which the Board Previously
`Credited
`
`‘634 BMW Petition
`
`IPR2014‐01416 FWD
`
`Source: E.g., Sur‐Reply at 9, n.7; IPR2020‐01386, Paper 1 at 48, 50; IPR2020‐01386, BMW1059 (IPR2014‐01416 FWD) at 21‐
`22.
`
`47
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`MONITORING PATTERNS
`
`CLAIMS 2 AND 24 ARE OBVIOUS OVER
`MONITORING PATTERNS
`SEVERINSKY + GRAF (GROUND 1A),
`SEVERINSKY + EHSANI + GRAF (GROUND 2A), AND
`BUMBY + GRAF (GROUND 4A)
`CLAIMS 2 AND 24 ARE OBVIOUS OVER
`SEVERINSKY + GRAF (GROUND 1A),
`SEVERINSKY + EHSANI + GRAF (GROUND 2A), AND
`BUMBY + GRAF (GROUND 4A)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`
`
`Graf Teaches
`“Monitor[ing] Patterns of Vehicle Operation Over Time”
`
`Graf
`
`Dr. Davis
`
`* * *
`
`Source: E.g., Pet. at 21‐24; Reply at 12‐14; BMW1020 at 5:36‐42; BMW1008 at ¶¶138‐42, 402‐11; BMW1088 at ¶¶64‐68.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`
`
`Graf Teaches
`“Monitor[ing] Patterns of Vehicle Operation Over Time”
`
`Graf
`
`Graf ’703
`
`Source: E.g., Pet. at 21‐24; Reply at 12‐14; BMW1020 at 5:36‐42; BMW1008 at ¶¶138‐42, 402‐11; BMW1088 at ¶¶64‐68
`BMW1090 at 6:13‐26, 8:32‐9:10, 10:3‐9, 13:14‐15, Figs. 6, 7.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`
`
`Graf Explicitly Describes a Hybrid Vehicle, Contrary to Patent Owners’
`Arguments Denying a Motivation to Combine Its Teachings With
`Severinsky or Bumby
`
`Graf
`
`Source: E.g., Pet. at 23‐24; Reply at 14‐15; BMW1020 at 2:20‐24, 4:41‐49, Claim 5; BMW1008 at ¶¶410‐11.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`
`
`BMW Never Argued That Graf’s “Operating Points” Represent “Actual Output
`of the Engine and Motor,” Rather than the Claimed “Setpoint,” Eliminating
`PO’s Only Other Argument Against Combining Bumby + Graf
`
`Graf
`
`Dr. Davis
`
`Source: E.g., Pet. at 23‐24; Reply at 14‐15; BMW1020 at 2:20‐24, 4:41‐49, Claim 5; BMW1008 at ¶¶410‐11.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`52
`
`
`
`TURBOCHARGER
`
`CLAIMS 11 AND 33 ARE OBVIOUS OVER
`TURBOCHARGER
`SEVERINSKY + MA (GROUND 1B),
`SEVERINSKY + EHSANI + MA (GROUND 2B), AND
`BUMBY + MA (GROUND 4B)
`CLAIMS 11 AND 33 ARE OBVIOUS OVER
`SEVERINSKY + MA (GROUND 18),
`SEVERINSKY + EHSANI + MA (GROUND 28), AND
`BUMBY + MA (GROUND 4B)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`53
`
`
`
`Claims 11 and 33 Merely Add That a Turbocharger Can Be Used
`with the Claimed Setpoint‐Based Control Strategy Already Found
`Unpatentable
`
`’347 Patent
`
`Source: E.g., Pet. at 26‐33, 39‐40, 59‐66; BMW1001 at Claims 1, 7, 33, 23, 28, 33; Reply at 15‐21; BMW1008 at ¶¶419‐87,
`583‐94, 779‐850; BMW1088 at ¶¶69‐107.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`
`
`Patent Owners No Longer Dispute That the Supposedly Novel
`Feature of Claims 11 and 33 Was Well‐Known
`
`’347 Patent
`
`Institution Decision
`
`* * *
`
`POR
`
`* * *
`
`* * *
`
`Source: E.g., BMW1001 at Claims 1, 7, 33, 23, 28, 33; Pet. at 29‐31; Reply at 15; ID at 38‐39; POR at 48‐55, 69‐70.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`55
`
`
`
`Ma Expressly Contradicts Patent Owners’ Argument That a POSA
`Would Not Combine a Turbocharger with an Electric Motor To
`Supplement an Engine’s MTO
`
`Ma
`
`Source: E.g., BMW1021 at Fig. 1, 5:10‐29, 7:11‐37; Pet. at 29‐33; Reply at 16‐17; ID at 38; BMW1008 at ¶¶473‐87;
`BMW1088 at ¶69.
`
`56
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Dr. Shahbakhti Conceded as Much, Despite Having Trouble
`Understanding Ma
`
`Ma
`
`Dr. Shahbakhti
`
`* * *
`
`* * *
`
`* * *
`
`Source: E.g., BMW1021 at Fig. 1; Pet. at 29‐31; Reply at 16‐17; ID at 38; BMW1109 at 148:23‐149:24.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`57
`
`
`
`Severinsky, Bumby, and Ma All Interrelatedly Concern Hybrid
`Vehicle Control To Maximize Engine Efficiency Through
`Supplemental Torque Sources, Providing a Motivation To Combine
`
`Dr. Davis
`
`Source: E.g., Pet. at 29‐33, 62‐65; Reply at 16; BMW1008 at ¶¶473‐86, 824‐42; BMW1088 at ¶¶72‐88.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`58
`
`
`
`A POSA Would Have Been Motivated to Add a Turbocharger To
`Improve the Engine’s Efficiency
`
`Dr. Davis
`
`Source: E.g., Pet. at 31‐32; Reply at 18‐19; BMW1008 at ¶¶146‐48, 480‐82; BMW1088 at ¶¶72‐89.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`59
`
`
`
`Benefits of Adding a Turbocharger Would Not Have Been
`Redundant of Severinsky’s or Bumby’s Electric Motors
`
`Institution Decision
`
`Reply
`
`* * *
`
`Source: E.g., ID at 37‐40; Pet. at 32‐33; Reply at 17‐19; BMW1008 at ¶¶481‐82; BMW1088 at ¶¶85‐86, 89‐93.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`60
`
`
`
`POSA Would Have Been Motivated To Add a Turbocharger and Use
`It During Sustained Periods of High‐Power Use To Preserve Battery
`Charge
`
`Severinsky
`
`Dr. Davis
`
`Source: E.g., BMW1013 at 6:19‐26, 11:27‐34, 18:9‐33; Pet. at 32, 63; Reply at 19‐20; BMW1008 at ¶¶481‐87; BMW1088 at
`¶¶89, 91‐93.
`
`61
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`MOTION TO EXCLUDE
`
`DR. SHAHBAKHTI’S OPINIONS AND HIS TOO‐RECENT
`MOTION TO EXCLUDE
`EXHIBITS SHOULD BE EXCLUDED
`
`DR. SHAHBAKHTI’S OPINIONS AND HIS TOO-RECENT
`EXHIBITS SHOULD BE EXCLUDED
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`62
`
`
`
`Dr. Shahbakhti’s Delayed, Non‐Responsive Answers Demonstrate
`His Lack of Knowledge and Familiarity with the Subject Matter
`
`Dr. Shahbakhti
`
`. . .
`
`. . .
`
`. . .
`
`Source: Motion to Exclude at 4‐8; Reply on MTE at 2‐5; BMW1109 at 105:6‐109:15.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`63
`
`
`
`Dr. Shahbakhti Cannot Make Up for His Lack of
`Contemporaneous Knowledge With Anachronistic Documents
`
`Ex. 2018 – 3 years too late (ca. 2001)
`Ex. 2020 – 7 years too late (ca. 2005)
`Ex. 2022 – 18 years too late (ca. 2016)
`Ex. 2023 – 13 years too late (ca. 2011)
`Ex. 2024 – 1 year too late (ca. 1999)
`Ex. 2025 – 4 years too late (ca. 2002)
`Ex. 2028 – 12 years too late (ca. 2010)
`
`= 63% of Exhibits Relied
`Upon by Shahbakhti
`
`Source: Motion to Exclude at 6, 9‐10; Reply on MTE at 5; BMW1001 at (60).
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`64
`
`
`
`Petitioners’
`Oral Argument Demonstratives
`
`Bayerische Motoren Werke Aktiengesellschaft &
`BMW of North America, LLC,
`Petitioners
`v.
`Paice LLC & The Abell Foundation, Inc.,
`Patent Owners
`
`IPR2020‐00994
`U.S. Patent No. 7,104,347 K2
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6565
`
`
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
