`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC
`Petitioners
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
`
`____________________
`
`Inter Partes Review No.: IPR2020-01299
`
`U.S. Patent No. 8,630,761
`____________________
`
`PETITIONERS’ RESPONSE IDENTIFYING ISSUES RAISED IN THE
`PATENT OWNER RESPONSE OR THE INSTITUTION DECISION TO
`WHICH THE EVIDENCE AND/OR ARGUMENTS IDENTIFIED BY
`PATENT OWNERS RESPONDS
`
`
`
`Petitioners’ Response re Identification of Responsive Evidence, IPR2020-01299
`U.S. Patent No. 8,630,761
`
`Pursuant to the Board’s authorization of July 14, 2021, Petitioners hereby
`
`respond to PO’s identification of arguments and/or evidence that it believes are
`
`beyond the proper scope of the Reply.
`
`As already detailed in Section III.C of BMW’s Reply, Petitioner’s Reply
`
`arguments, “Graf ’703” (BMW1090) and Dr. Davis’s reply declaration
`
`(BMW1088) at ¶¶82-87 directly respond to the issues raised in the Institution
`
`Decision whether Graf provides any “explicit disclosure as to how the driving style
`
`of performance or economy modes is determined in Figure 2,” and whether “any
`
`monitoring of a driver’s operation [] result[s] in an input to block 2, where the
`
`determination of the driving style is made, or that Graf derives an expected pattern
`
`of operation by monitoring operation of the vehicle.” ID, 35.1 Petitioner’s Reply
`
`specifically responded to those issues, including by specifying where the Petition
`
`and Dr. Davis originally cited to Graf’s disclosure identifying EP 0,576,703 (Graf
`
`’703 / BMW1090) as a known implementation example of how the “driver type”
`
`classification—used by block 2—is made. Reply, 27, citing BMW1020, 5:36-42;
`
`Pet., 64; BMW1008, ¶350.
`
`1 The Trial Practice Guide, (p. 73) states: “[I]n response to issues arising from the
`Supreme Court’s decision in SAS (138 S. Ct. at 1358), the Board will permit the
`petitioner, in its reply brief, to address issues discussed in the institution
`decision.… A party also may submit rebuttal evidence in support of its reply.”
`
`1
`
`
`
`Petitioners’ Response re Identification of Responsive Evidence, IPR2020-01299
`U.S. Patent No. 8,630,761
`
`Petitioner’s Reply, Ex. 1090, and Dr. Davis’s reply declaration at ¶¶82-87,
`
`are thus in direct response to the issues raised in the ID indicated above.2
`
`Dated: July 28, 2021
`
`
`
`
`
`Respectfully submitted,
`
`/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
`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
`sbittman@crowell.com
`jzambrzycki@crowell.com
`
`Counsel for Petitioners Bayerische
`Motoren Werke Aktiengesellschaft
`and BMW of North America, LLC
`
`2 PO’s statement indicates that it will be filing a Sur-Reply. PO will be able to
`respond to the substance of Petitioners’ arguments and evidence in that document.
`
`2
`
`
`
`Petitioners’ Response re Identification of Responsive Evidence, IPR2020-01299
`U.S. Patent No. 8,630,761
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), I certify that the foregoing
`
`PETITIONERS’ RESPONSE IDENTIFYING ISSUES RAISED IN THE
`
`PATENT OWNER RESPONSE OR THE INSTITUTION DECISION TO
`
`WHICH THE EVIDENCE AND/OR ARGUMENTS IDENTIFIED BY PATENT
`
`OWNERS RESPONDS was served electronically by filing this document through
`
`the PTAB E2E system, as well as by e-mailing copies to the following address for
`
`counsel of record for Patent Owners:
`
`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
`
`Dated: July 28, 2021
`
` /Jeffrey D. Sanok/
`Jeffrey D. Sanok
`
`
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