`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
`
`