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`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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`____________________
`
`IPR2020-01299
`U.S. Patent No. 8,630,761
`____________________
`
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`PETITIONERS’ OBJECTIONS UNDER 37 C.F.R. § 42.64
`TO EVIDENCE SUBMITTED WITH PATENT OWNERS’ RESPONSE
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`Petitioners’ Objections to Patent Owners’ Evidence
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioners Bayerische Motoren Werke
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`Aktiengesellschaft & BMW of North America, LLC object to the following
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`exhibits filed with the Patent Owners’ Response as follows:1
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`Exhibit
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`2016
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`2020
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`Objections
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`Petitioners object to this exhibit to the extent it relies on or
`incorporates inadmissible exhibits to which the Petitioners
`object herein.
`Fed. R. Evid. 901. Dr. Shahbakhti does not properly
`authenticate or identify, and does not established the
`publication date, of certain evidence upon which he relies.
`(See, e.g., ¶¶ 52, 54, 67, 82-83, 91, 95-96, 114, 139, 141-142.)
`
`Fed. R. Evid. 402. This exhibit is not relevant to any ground
`upon which this trial was instituted. For example, the
`copyright date listed on the document is significantly after the
`September 14, 1998 priority date of the ’761 Patent, which is
`the date that Dr. Shahbakhti states that he is using for gauging
`the skill of the art. (See, e.g., Ex. 2016, ¶29).
`Fed. R. Evid. 901. Patent Owners’ have not properly
`authenticated or identified this document, and have not
`established the publication date.
`Fed. R. Evid. 106. This document is incomplete and includes
`only a select portion of a larger document.
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`2029
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`Fed. R. Evid. 402. This exhibit is not relevant to any ground
`upon which this trial was instituted.
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`1 Petitioners’ objections apply equally to Patent Owners’ reliance on these exhibits,
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`including in any documents filed in this proceeding.
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`1
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`
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`Petitioners’ Objections to Patent Owners’ Evidence
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`Fed. R. Evid. 901. Patent Owners’ have not properly
`authenticated or identified this document, and have not
`established the publication date.
`
`Fed. R. Evid. 402. This exhibit is not relevant to any ground
`upon which this trial was instituted.
`Fed. R. Evid. 901. Patent Owners’ have not properly
`authenticated or identified this document, and have not
`established the publication date.
`
`Fed. R. Evid. 402. This exhibit is not relevant to any ground
`upon which this trial was instituted.
`Fed. R. Evid. 901. Patent Owners’ have not properly
`authenticated or identified this document, and have not
`established the publication date.
`
`Fed. R. Evid. 901. Patent Owners’ have not properly
`authenticated or identified this document, and have not
`established the publication date.
`Fed. R. Evid. 106. This document is incomplete and includes
`only a select portion of a larger document.
`
`Fed. R. Evid. 901. Patent Owners’ have not properly
`authenticated or identified this document, and have not
`established the publication date.
`Fed. R. Evid. 106. This document is incomplete and includes
`only a select portion of a larger document.
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`Petitioners maintain the objections stated in the record at the
`deposition. Petitioners further object to the misquoting and
`mischaracterizations of Dr. Davis’s deposition testimony
`throughout the Patent Owner Response.
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`Fed. R. Evid. 106. This document is incomplete and includes
`only a select portion of a larger document.
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`2
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`2030
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`2031
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`2032
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`2033
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`2034
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`2035
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`
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`Petitioners’ Objections to Patent Owners’ Evidence
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`
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`Dated: April 27, 2021
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`Respectfully submitted,
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`
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`
`
`/Jeffrey D. Sanok/
`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 Ave., 20th Floor
`New York, NY 10022-2544
`Tel.: (212) 223-4000
`Fax: (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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`3
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`
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`Petitioners’ Objections to Patent Owners’ Evidence
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
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`Certificate of Service
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`Pursuant
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`to 37 C.F.R. § 42.6(e)(4), I certify
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`that
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`the foregoing
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`PETITIONERS’ OBJECTIONS UNDER § 42.64 TO EVIDENCE SUBMITTED
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`WITH PATENT OWNERS’ RESPONSE was served electronically by filing this
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`document through the PTAB E2E system, as well as by e-mailing copies to the
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`following address for counsel of record for Patent Owners:
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`Ruffin B. Cordell
`Indranil Mukerji
`Brian J. Livedalen
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR36351-0017IP1@fr.com
`PTABInbound@fr.com
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`
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`Dated: April 27, 2021
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`
`
`/Jeffrey D. Sanok/
`Jeffrey D. Sanok
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`