`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT and
`BMW OF NORTH AMERICA, LLC,
`Petitioners,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owners.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-01299
`Patent 8,630,761
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNERS’ NOTICE OF APPEAL
`
`
`
`Proceeding No.: IPR2020-01299
`Attorney Docket: 36351-0017IP1
`Pursuant to 35 U.S.C. §§ 142 and 37 C.F.R. § 90.2(a), Patent Owner, Paice
`
`
`
`LLC and the Abell Foundation, Inc., hereby appeal to the United States Court of
`
`Appeals for the Federal Circuit from the Patent Trial and Appeal Board’s
`
`(“Board”) Final Written Decision entered on January 3, 2022 (Paper 35), and from
`
`all other underlying orders, decisions, rulings and opinions that are adverse to
`
`Patent Owner including, without limitation, those within the Decision on
`
`Institution of Inter Partes Review entered on January 15, 2021 (Paper 10).
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner indicates that
`
`the issues on appeal include, but are not limited to:
`
`(1) the Board’s decision that challenged claims 1-12 were unpatentable
`
`under 35 U.S.C. §103(a) as being obvious in view of the cited prior art;
`
`(2) the Board’s interpretation of the limitation “pattern of operation of said
`
`hybrid vehicle” and “a predicted near-term pattern of operation of said
`
`hybrid vehicle” found in claim 1 and “pattern of operation of said hybrid
`
`vehicle” and “predicts a near-term pattern of operation of said hybrid
`
`vehicle” found in claim 7.
`
`(3) the Board’s reliance on conclusory and insufficient expert testimony;
`
`(4) the Board’s interpretation of the prior art;
`
`(5) the Board’s legal errors in undertaking the aforementioned obviousness
`
`analyses;
`
`1
`
`
`
`Proceeding No.: IPR2020-01299
`Attorney Docket: 36351-0017IP1
`(6) the Board’s findings that conflict with the evidence of record or are that
`
`
`
`are otherwise not supported by substantial evidence;
`
`(7) the Board’s failure to consider the evidence of record fully and properly;
`
`and
`
`(8) any findings or determinations supporting or related to the
`
`aforementioned issues as well as other issues decided adversely to Patent
`
`Owner in any order, decisions, rulings, or opinions.
`
`Simultaneous with this submission, a copy of the Notice of Appeal is being
`
`filed electronically with the Patent Trial and Appeal Board. In addition, a copy of
`
`this Notice of Appeal, along with the required docketing fees, are being
`
`electronically filed with the Clerk’s Office for the United States Court of Appeals
`
`for the Federal Circuit.
`
`
`
`
`
`
`Date: March 4, 2022
`
`
`
`Respectfully submitted,
`
`
`
`/Brian J. Livedalen/
`Brian J. Livedalen, Reg. No. 67,450
`
`
`
`Attorney for Patent Owner
`
`
`
`2
`
`
`
`
`
`Proceeding No.: IPR2020-01299
`Attorney Docket: 36351-0017IP1
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4), the undersigned certifies that on March 4,
`
`2022, a complete and entire copy of this Patent Owner’s Notice of Appeal was
`
`provided via email to the Petitioner by serving the correspondence email addresses
`
`of record as follows:
`
`Jeffrey D. Sanok
`Vincent J. Galluzzo
`Crowell & Moring LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`
`Scott L. Bittman
`Jacob Z. Zambrzycki
`Crowell & Moring LLP
`Intellectual Property Group
`590 Madison Avenue, 20th Floor
`New York, NY 10022-2544
`
`Email: jsanok@crowell.com
`Email: vgalluzzo@crowell.com
`Email: sbittman@crowell.com
`Email: jzambrzycki@crowell.com
`
` /Kristyn Waldhauser/
`Kristyn Waldhauser
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis MN 55402
`(612) 638-5731
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Proceeding No.: IPR2020-01299
`Attorney Docket: 36351-0017IP1
`I hereby certify that, in addition to being filed electronically through the
`
`
`
`Board’s E2E System, the original version of the foregoing Notice of Appeal, was
`
`filed by hand on March 4, 2022, with the Director of the United States Patent and
`
`Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 1 OB20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`I hereby certify that on March 4, 2022, a true and correct copy of the
`
`foregoing Notice of Appeal, along with a copy of the Final Written Decision, was
`
`filed electronically with the Clerk’s Office of the United States Court of Appeals
`
`for the Federal Circuit, at the following address:
`
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Brian J. Livedalen/
`Brian J. Livedalen, Reg. No. 67,450
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 638-6557
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`