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 and
`BMW OF NORTH AMERICA, LLC,
`Petitioners,
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`v.
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`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owners.
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`Case IPR2020-01299
`Patent 8,630,761
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`PATENT OWNERS’ IDENTIFICATION OF NEW EVIDENCE AND
`ARGUMENTS BEYOND THE PROPER SCOPE OF PETITIONERS’
`REPLY
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT and
`BMW OF NORTH AMERICA, LLC,
`Petitioners,
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`v.
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`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owners.
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`Case IPR2020-01299
`Patent 8,630,761
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`PATENT OWNERS’ IDENTIFICATION OF NEW EVIDENCE AND
`ARGUMENTS BEYOND THE PROPER SCOPE OF PETITIONERS’
`REPLY
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`EXHIBIT LIST
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`2001
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`2002
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`Exhibit Number Description
`BMW’s Opening Claim Construction Brief from Paice LLC
`and the Abell Foundation v. Bayerische Motoren Werke
`Aktiengesellschaft and BMW of North AmericA, LLC, Civil
`Action No. 19-CV-3348-SAG, filed August 7, 2020
`Docket Navigator Statistics – Top Patents by Number of
`IPRs
`Printout of http://www.paicehybrid.com/licensing-
`agreements/
`Scheduling Order [Docket No. 36] from Paice LLC and the
`Abell Foundation v. Bayerische Motoren Werke
`Aktiengesellschaft and BMW of North America, LLC, Civil
`Action No. 1:19-cv-03348-SAG (USDC-DMD) dated
`February 25, 2020
`Ex. P to BMW Invalidity Contentions dated June 8, 2020
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008-2015
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`2016
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`2017
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`BMW’s Responsive Claim Construction Statement from
`Paice LLC and the Abell Foundation v. Bayerische Motoren
`Werke Aktiengesellschaft and BMW of North America, LLC,
`Civil Action No. 19-CV-3348-SAG, served August 7, 2020
`Markman Order from Paice LLC and the Abell Foundation
`v. Bayerische Motoren Werke Aktiengesellschaft and BMW
`of North America, LLC, Civil Action No. 19-CV-3348-
`SAG, filed October 26, 2020
`Reserved
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`Declaration of Mahdi Shahbakhti, Ph.D.
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`Curriculum Vitae of Mahdi Shahbakhti, Ph.D.
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`2018-2019
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`Reserved
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`2020
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`2021
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`Selected Pages From Merhdad Ehsani et al, Modern
`Electric, Hybrid Electric, and Fuel Cell Vehicles
`Reserved
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`ii
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`Attorney Docket: 36351-0004IP1
`Case IPR2020-00994
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`2022-2028
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`Reserved
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`2029
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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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`Oxford Dictionary
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`The Illustrated Dictionary of Electronics
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`Encarta World English Dictionary
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`Handbook of Air Pollution From Internal Combustion
`Engines
`Guzzella et al., Vehicle Propulsion Systems
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`Deposition Transcript of Gregory Davis, Ph.D.
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`BMW’s Reply Claim Construction Brief from Paice LLC
`and the Abell Foundation v. Bayerische Motoren Werke
`Aktiengesellschaft and BMW of North AmericA, LLC, Civil
`Action No. 19-CV-3348-SAG, filed August 7, 2020
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`iii
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`I.
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`Introduction
`Pursuant to the Board’s authorization of July 14, 2021, Patent Owners
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`identify the following arguments and/or evidence filed with the Petitioner Reply
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`that is beyond the proper scope of the Reply.1
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`A. New Arguments and Evidence Regarding Graf (Ground 3)
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`Ex. 1090 is new evidence not presented in BMW’s Petition. BMW’s reply
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`relies on Ex. 1090 (a translation of foreign patent EP 0,576,703) to argue that Graf
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`discloses “wherein said controller derives a predicted near-term pattern of
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`operation of said hybrid vehicle by monitoring operation of said hybrid vehicle.”
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`Reply, 26-28. Graf explicitly references Ex. 1090 in its specification, but BMW
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`did not submit Ex. 1090 or make any arguments concerning its disclosure or
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`relevance to Graf in its Petition.
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`BMW’s arguments at Section III.C of its reply focus primarily on the
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`disclosure of Ex. 1090, which was not included in BMW’s Petition. BMW’s
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`reliance on Ex. 1090 to supplement the disclosure of Graf included in the Petition
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`is new argument. Likewise, paragraphs 82-87 of Dr. Davis’s reply declaration (Ex.
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`1 Patent Owners reserve the right to address in their Sur-reply other new/improper
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`arguments and evidence contained in BMW’s Reply.
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`1
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`1088) consist of new opinions relying on Ex. 1090 to supplement his opinions
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`Attorney Docket: 36351-0004IP1
`Case IPR2020-00994
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`about Graf’s disclosure.
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`Date: July 21, 2021
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`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (877) 769-7945
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`Respectfully submitted,
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`/Brian J. Livedalen/
`Ruffin B. Cordell, Reg. No. 33,487
`Timothy W. Riffe, Reg. No. 43,881
`Brian J. Livedalen, Reg. No. 67,450
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`Counsel for Patent Owners
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`2
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on July 21,
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`2021, a complete and entire copy of this Patent Owners’ Identification of New
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`Arguments and Evidence Beyond the Proper Scope of Petitioners’ Reply was
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`provided via email, to the Petitioner by serving the correspondence address of
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`record as follows:
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`Jeffrey D. Sanok
`Vincent J. Galluzzo
`Crowell & Moring LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
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`Scott L. Bittman
`Jacob Z. Zambrzycki
`Crowell & Moring LLP
`Intellectual Property Group
`590 Madison Avenue, 20th Floor
`New York, NY 10022-2544
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`Email: jsanok@crowell.com
`Email: vgalluzzo@crowell.com
`Email: sbittman@crowell.com
`Email: jzambrzycki@crowell.com
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`3
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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