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’ SUR-REPLY
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................... 1 
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` 
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`
`
`I. 
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`II.  BMW’S GROUNDS FAIL TO DEMONSTRATE OBVIOUSNESS ............... 2 
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`A.  Ground 1 Based on Severinsky in View of Quigley (“Severinsky-Quigley”)
`Is Deficient (Claims 1-12) ...................................................................................... 2 
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`1.  Severinsky-Quigley fails to teach or suggest “deriv[ing] a predicted near-
`term pattern of operation of said hybrid vehicle” (Claims 1 and 7) .............. 2 
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`2.  No reason to combine Severinsky and Quigley ........................................... 11 
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`3.  Severinsky-Quigley fails to teach or suggest Claims 2 and 8 ...................... 15 
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`4.  Severinsky-Quigley fails to teach or suggest the limitations of Claims 4 and
`10 .................................................................................................................. 16 
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`B.  Ground 2 Based on Severinsky in View of Nii (“Severinsky-Nii”) Is
`Deficient (Claims 1-12) ........................................................................................ 17 
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`1.  Severinsky-Nii fails to teach or suggest “deriv[ing] a predicted near-term
`pattern of operation” (claims 1 and 7) .......................................................... 17 
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`2.  No reason to combine Severinsky and Nii ................................................... 20 
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`3.  Severinsky-Nii fails to teach or suggest Claims 2 and 8 .............................. 23 
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`4.  Severinsky-Nii fails to teach or suggest the limitations of Claims 4 and 10
` 24 
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`C.  Ground 3 Based on Severinsky in View of Graf Is Deficient (Claims 1-2, 5-
`8, 11-12) ................................................................................................................ 24 
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`1.  Severinsky in view of Graf fails to teach or suggest “deriv[ing] a predicted
`near-term pattern of operation” .................................................................... 24 
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`III.  CONCLUSION .................................................................................................. 26 
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`i
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`EXHIBIT LIST
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`2001
`
`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
`
`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
`
`Declaration of Mahdi Shahbakhti, Ph.D.
`
`Curriculum Vitae of Mahdi Shahbakhti, Ph.D.
`
`2018-2019
`
`Reserved
`
`2020
`
`2021
`
`Selected Pages From Merhdad Ehsani et al, Modern
`Electric, Hybrid Electric, and Fuel Cell Vehicles
`Reserved
`
`ii
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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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
`
`The Illustrated Dictionary of Electronics
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`Encarta World English Dictionary
`
`Handbook of Air Pollution From Internal Combustion
`Engines
`Guzzella et al., Vehicle Propulsion Systems
`
`Deposition Transcript of Gregory Davis, Ph.D.
`
`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
`In lieu of addressing the salient issues that go to patentability of the
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`Challenged Claims of the ’761 patent, BMW’s reply improperly shifts the goal
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`posts by ignoring key claim limitations and the obviousness framework.
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`First, it is undisputed that the Challenged Claims derive an expected pattern
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`of operation, i.e., a pattern of operation that the vehicle is going to follow in the
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`future (as opposed to past vehicle behavior). BMW admits “the Challenged
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`Claims require that the vehicle’s controller monitor operation of the particular
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`vehicle and use that data to predict future operational patterns and alter vehicle
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`operation accordingly.” Reply, 3 None of the prior art, however, derives an
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`expected pattern of vehicle operation. At best, they derive a single data point such
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`as average distance or average power. BMW cannot remedy the prior art’s
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`shortcomings by stripping the word “pattern” of its meaning. The word “pattern”
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`is not a generic placeholder, or nonce term as BMW submits.
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`Second, BMW remains unable to explain how or why a POSA could
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`combine the prior art. BMW assumes that its combinations miraculously result in
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`“the optimization of the controller settings to be reflective of actual driving
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`conditions and the increase in fuel efficiency.” Reply, 1. Yet, BMW remains
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`unable to explain how the teachings of any of the secondary references would
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`actually improve Severinsky. To the contrary, BMW admits that using patterns of
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`1
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`road load—as only the ’761 patent teaches—is the single way to efficiently control
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`Severinsky. Reply, 17 (“Quigley’s pattern data would include patterns of road
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`load because, inter alia, that would be required to manage the energy flow through
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`the hybrid drive train …”).
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`BMW cannot demonstrate obviousness.
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`II. BMW’S GROUNDS FAIL TO DEMONSTRATE OBVIOUSNESS
`A. Ground 1 Based on Severinsky in View of Quigley (“Severinsky-
`Quigley”) Is Deficient (Claims 1-12)
`Severinsky-Quigley does not render the Challenged Claims obvious.
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`Neither Severinsky nor Quigley discloses a controller that derives a “predicted
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`near-term pattern of operation of said hybrid vehicle,” and BMW fails to explain
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`how or why these references could be combined.
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`1.
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`Severinsky-Quigley fails to teach or suggest “deriv[ing] a
`predicted near-term pattern of operation of said hybrid
`vehicle” (Claims 1 and 7)
`BMW’s Reply fails to show any evidence of a “controller [that] derives a
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`predicted near-term pattern of operation of said hybrid vehicle by monitoring
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`operation of said hybrid vehicle” as claim 1 requires.1 Severinsky remains silent
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`on this feature, and BMW’s reply fails to show this feature in Quigley.
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`                                                            
`1 Independent claim 7 recites a similar limitation.
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`2
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`Quigley only predicts parameters, not a “pattern of operation.” As the
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`POR explains, Quigley only predicts parameters such as “[j]ourney duration” and
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`“journey distance.” (Ex. 1054, 2; Ex. 2016, ¶ 50.) These parameters are single
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`data points, not a pattern of operation. POR, 22-24. BMW’s assertion that
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`Quigley predicts an entire “journey” (as opposed to “journey parameters”) (Reply,
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`3-4) is belied by its previous admission that Quigley “predicts certain
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`‘parameters….’” (Petition, 25 (quoting Ex. 1054, 1.)
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`BMW’s assertion is also unsupported by evidence. BMW relies on a generic
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`diagram in Quigley’s Figure 2 that uses the word “Journey.” Id. But Quigley’s
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`description of Figure 2 states “[i]f the controller decides a journey is expected it
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`can make an estimation of the expected journey parameters.” (Ex. 1054, 3
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`(emphasis added).) If there were any doubt, Quigley describes the journey as the
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`total duration and distance: “If it is a weekday, and the time is between 07.00-
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`08.00 am, then there is a high expectation of a journey of 1000 to 1300 seconds
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`duration, with a distance of around 14 km.” Petition, 27 (quoting Ex. 1054, 6.)
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`Thus, even if Quigley were to predict a “journey,” it is simply predicting single
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`3
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`data points, i.e., the total duration (in seconds) and distance (in km).2 BMW fails
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`Attorney Docket No: 36351-0017IP1
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`to explain what else Quigley’s “journey” would consist of or why the “journey”
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`would constitute a “pattern of operation.”
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`The remainder of Quigley makes clear that its controller simply predicts
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`“parameters” and nothing more. (Ex. 1054, Abstract “This paper presents work to
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`attempt to predict these parameters at the start of the journey …”); id., 2 (“the
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`proposed controller will allow journey parameters to be reliably estimated …”; see
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`also Ex. 2016, ¶ 50.)3
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`                                                            
`2 BMW also relies on Quigley’s disclosure that the paper is based on the “idea that
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`many cars will have habitual usage characteristics for a high percentage of their
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`journeys, and hence the ability to predict the occurrence of a journey and its
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`associated characteristics will be quite high.” (Ex. 1054, 2; Reply 5-6.) This
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`argument also ignores Quigley’s explicit disclosure that a journey is defined by
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`total distance and total duration. (Ex. 1054, 6.)
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`3 BMW rewrites Quigley to assert that the journey “parameters” or
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`“characteristics” are something other than single data points (Reply, 6) but never
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`explains what these other “characteristics” would be. It simply relies on Quigley’s
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`disclosure that its controller could monitor “Drivers Operation Inputs” (including
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`4
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`Attorney Docket No: 36351-0017IP1
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`The ’761 patent specification does not help BMW. Having failed to find
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`evidence of predicted or expected “patterns of operation” in Quigley, BMW tries to
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`draw parallels between Quigley and the ’761 patent’s disclosure. But that too fails.
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`The fact that both Quigley and the ’761 patent look at historical vehicle activity
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`does not mean that both derive a “predicted near-term” or “expected pattern of
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`operation.” Instead, Quigley looks at previous commutes to merely predict single
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`data points, i.e., “a journey of 1000 to 1300 seconds duration, with a distance of
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`around 14 km.” (Ex. 1054, 6.) While the ’761 patent predicts a pattern consisting
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`of road load remaining under 20% MTO followed by road load varying between 0
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`and 50% MTO followed by road load increasing to 150% MTO. (Ex. 1001, 39:51-
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`58.) In other words, the ’761 patent predicts a sequence of vehicle operations.
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`This discrepancy is not surprising because Quigley merely collects total distance,
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`total duration, and average speed from previous journeys while the ’761 patent
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`monitors instantaneous road load values to determine how those values change
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`over time to create a pattern. (Ex. 2016, ¶¶ 50-53.)
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`the throttle and brake). (Ex. 1054, 2.) These inputs are not characteristics of a
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`journey. Moreover, Quigley does not monitor these inputs and instead uses a
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`“GPS data logger” to predict total journey time and duration as BMW’s expert
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`admitted. (Ex. 2034, 44:5-18; see also Ex. 1054, 2; Ex. 2016, ¶ 64.)
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`5
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`A “parameter” is not a “pattern of operation.” BMW’s fallback
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`position—that the total distance is a “pattern of operation”—defies common sense
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`and the record evidence. BMW alleges that the ’761 patent discloses that “total
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`distance” is a “pattern of operation” and within the scope of the Challenged
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`Claims, but this is false. Reply, 7-8 (quoting, in part, Ex. 1001, 39:61-67). The
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`’761 patent clearly differentiates between a pattern and a total distance.
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`… in response to recognition of a regular pattern as above, the
`transition point might be adjusted to 60% of MTO; this would prevent
`repetitive engine starts as the road load exceeded 30% of MTO for a
`few hundred yards at a time, as might often occur in suburban traffic.
`Similarly, the engine starting routine might be initiated after the same
`total distance had been covered each day.
`(Ex. 1001, 39:61-67.)
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`Critically, the ’761 patent never states that total distance is a pattern. The ’761
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`patent initiates the engine start routine after a total distance has been covered as an
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`alternative way to eliminate repetitive engine starts (i.e., instead of adjusting the
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`setpoint). The delay of the engine start routine is the action the controller takes to
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`eliminate repetitive engine starts. It is not a pattern.
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`Next, BMW relies on Dr. Davis to argue that predicting a distance of “XX”
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`is a pattern because it is based on a previous recognition of a similar travel
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`distance. Reply, 8. But Dr. Davis confirmed at his deposition that he interprets a
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`6
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`predicted or expected “pattern of operation” to be any expected vehicle operation,
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`not some previous recognition as BMW asserts.
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`Q Okay. So having reviewed the Board's institution decision, what’s -
`- how do you understand the word “pattern of operation” as to one of
`skill in the art?
`A I think it’s an expected pattern of operation. It’s a recognition of the
`operation of the vehicle and predicting that -- what that operation’s
`going to be.
`Q So any predicted operation is a predicted pattern, is that right?
`A It’s an expected operation of the vehicle.
` (Ex. 2034, 47:11-24 (emphasis added); see also Ex. 1088, ¶ 13.
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`Moreover, BMW’s argument is based on its own claim construction that the
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`Board rejected. Recall that BMW argued that the claims should be construed to
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`simply require “expected upcoming vehicle operation based on past repetitive
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`driver behavior” consistent with Dr. Davis’s improper interpretation of the claims
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`noted above. Petition, 10. But as the Board correctly concluded, the claims
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`require that the claimed controller derive a “predicted near-term” or “expected
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`pattern of operation,” not any single value like the total distance of a trip.4
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`                                                            
`4 In reply, BMW once again attempts to recast the claims by removing the word
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`“predicted” or “expected” altogether. Reply, 8 (“the claims … only require that
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`7
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`BMW cannot succeed by ignoring the word “pattern.” BMW provides
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`no explanation as to how a single data point like “total distance” is a “pattern,”
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`much less a “pattern of operation.” BMW, like Dr. Davis, remains intent on
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`treating the term “pattern of operation” like a nonce term or the proverbial “nose of
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`wax” to suit its needs. BMW’s result oriented and baseless assertion that “a POSA
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`would understand that a pattern need only contain sufficient information to allow
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`the system to recognize characteristics concerning operation that would allow it to
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`operate more efficiently” shows that BMW is treating the word “pattern” as a
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`nonce term governed by 35 U.S.C. § 112, ¶ 6, i.e., a means for “allow[ing] the
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`system to recognize characteristics concerning operation that would allow it to
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`operate more efficiently.”
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`When confronted with Dr. Shahbakhti’s explanation that a pattern of
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`operation must, at the very least, require an order or sequence of driving
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`operations, BMW fails to explain why Dr. Shahbakhti is wrong. BMW instead
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`resorts to criticizing his opinions as “improper” and “stealthy” merely because
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`Patent Owners did not define the plain meaning in the “Claim Construction”
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`the controller “derive a pattern of operation…” and “controls operation” of the
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`motor or engine “responsive” to that pattern.”).
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`8
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`portion of their brief. Reply, 9-10.5 But the term must have some meaning, and
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`BMW cannot succeed by reading the words out of the claim.6
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`5 There is nothing stealthy or improper about explaining the plain meaning of a
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`term. See, e.g., SanDisk Corp. v. Netlist, Inc., IPR2014-00971, Paper 37 (April 27,
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`2016) (relying on expert testimony and dictionary definitions to confirm a term’s
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`plain and ordinary meaning); LEGEND3D, Inc. v. Prime Focus Creative Services
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`Canada, Inc., IPR2016-00806, Paper 73 (September 18, 2017) (finding that the
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`expert was free to “provide his understanding of the plain and ordinary meaning of
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`a contested claim term.”) 
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`6 BMW’s suggestion that Patent Owners’ arguments about the plain meaning of the
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`term “pattern of operation” should be “disregarded” because Patent Owners did not
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`present these arguments as an explicit claim construction is borderline frivolous.
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`Reply, 9-10. Patent Owners properly presented its argument in its Patent Owner
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`Response. There is no impropriety or prejudice to speak of, and it is of no moment
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`that Patent Owners arguments about the plain meaning of a commonly understood
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`term are not part of an explicit claim construction. Patent Owners should be free to
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`explain (using words other than the literal words in the claim) why the prior art
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`does not disclose a “pattern of operation” under the plain meaning of the term.     
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`9
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`Case IPR2020-01299
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`There is nothing “narrowed” or “improper” about Dr. Shahbakhti’s
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`explanation as to the plain meaning of the term “pattern of operation.” BMW
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`offers no rebuttal to Dr. Shahbakhti’s opinion that a single data point is not a
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`“pattern of operation” because a “pattern of operation” must include an order or
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`sequence of driving operations. (Ex. 2016, ¶¶ 52-53.)7 And BMW’s suggestion
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`that Dr. Shahbakhti’s opinion is inconsistent with the construction of the term
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`“monitoring patterns of vehicle operation over time” in the ’347 patent IPR is
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`superficial at best. That construction requires “monitoring a drivers repeated
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`driving operations over time.” IPR2020-00994, Paper No. 19 at 9. Dr.
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`Shahbakhti’s opinion that a “pattern of operation” must include an order or
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`sequence of driving operations is notably broader because it does not include the
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`                                                            
`7 BMW takes one sentence from Ex. 1104 out of context to assert that an average
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`value can be a “pattern.” The cited portion of Ex. 1104 is about calibrating engines
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`to make sure they comply with emissions requirements for a drive cycle, stating
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`that the vehicle calibrators can identify an average steady state engine value for
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`testing purposes rather than using the entire drive cycle and that doing so will
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`allow “some confidence” that the vehicle may pass the actual drive cycle. (Ex.
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`1104, 338.)
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`10
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`“repeated” requirement. A “repeated driving operation” is a species of the genus
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`“order or sequence driving operations.” Thus, there is no inconsistency, especially
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`given dependent claim 2, which adds the “repetitive” requirement to “pattern of
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`operation.” (Ex. 1001, claim 2 (“said derived predicted pattern … comprises at
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`least one repetitive pattern ….”).
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`Finally, BMW’s argument that Quigley inherently knows “the order and
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`sequence of such information as throttle operation, braking operation, engine
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`speed, road speed, etc.” and “pattern information on road load” has no basis in
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`reality, much less Quigley. Reply, 10-11. Nevertheless, BMW does not assert that
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`Quigley predicts any of this information. Even if Quigley were to collect this
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`historical information, that is no evidence of deriving a “predicted near-term” or
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`“expected pattern of operation.”
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`In sum, Quigley’s “parameters” are not a pattern of operation. “Pattern” is
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`not so broad as to capture single parameters, and BMW has presented no evidence
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`to the contrary. Thus, claims 1-12 are not obvious over Severinsky and Quigley.
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`2.
`No reason to combine Severinsky and Quigley
`BMW’s Reply repeats the same generic obviousness analysis that cannot
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`sustain an unpatentability finding. BMW argues a POSA would incorporate
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`Quigley’s “intelligent controller” in Severinsky to make a “more intelligent
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`‘control strategy’” determined “based on the controller’s past experiences” to
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`11
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`increase “the vehicle’s efficiency.” Reply, 13-14. But the claims are not so broad.
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`The claims require deriving a “predicted near-term” or “expected pattern of
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`operation,” not using “past experiences.” And all patents would be doomed if the
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`ultimate question is whether it would be obvious to make computers more
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`intelligent and systems more efficient. BMW discusses obviousness in these
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`metaphysical concepts because it remains unable to sufficiently explain how or
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`why a POSA could combine Severinsky and Quigley to arrive at the claimed
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`invention or derive any benefit in terms of emissions or fuel economy.
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`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016).
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`First, BMW fails to identify a single “predicted near-term” or “expected
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`pattern of operation” in Quigley that would be useful for improving Severinsky. In
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`making its hollow “bodily incorporation” argument, BMW criticizes Patent
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`Owners for focusing on the predicted “parameters” disclosed in Quigley (i.e., total
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`distance and duration). But BMW’s Petition first asserted that Quigley’s
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`“estimation of upcoming journey parameters can allow ‘optimal operation with
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`respect to exhaust emissions and fuel consumption.’” Petition 32 (quoting Ex.
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`1054, 1). Patent Owners can only respond to BMW’s arguments.
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`12
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`In Reply, BMW argues for the first time that Quigley “would have tracked
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`information such as speed, engine speed, road speed and road load.” Reply, 14.8
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`Yet, BMW fails to explain what would constitute the “expected pattern of
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`operation” under BMW’s interpretation of Quigley and how Severinsky would use
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`this information to optimize its controller. BMW answers the question of “how
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`would a POSA combine Severinsky and Quigley?” by simply stating that a POSA
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`would use Quigley’s “‘intelligent’ control” to make Severinsky more intelligent.
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`Reply, 14. This oversimplified analysis does not pass muster.9
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`Relatedly, BMW’s reply presents no evidence that Severinsky could
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`improve its control strategy using Quigley’s predicted parameters. As the POR
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`explains, duration and distance could only be used to calculate average vehicle
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`speed. POR, 33-34. And BMW does not dispute that average speed does not
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`provide any information about instantaneous vehicle operation, including the
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`instantaneous torque required to propel the vehicle. Nor does BMW dispute clear
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`evidence that averages are not useful for “energy management” in “complex
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`propulsion systems” such as Severinsky’s parallel hybrid vehicles. (Ex. 2033
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`                                                            
`8 As explained in Section II.A.1, Quigley actually chose not to track these inputs
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`and instead used a GPS logger.
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`9 The Board should disregard this new, improper argument. See TPG, 73.
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`13
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`(Guzzella) at 38 (pg. 33 in original); Ex. 2016, ¶¶ 82-83.) In desperation, BMW
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`argues that average speed must provide “some information.” Reply, 15.
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`Ultimately, BMW does not explain how Severinsky would use average speed to
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`improve emissions or fuel economy. Moreover, BMW does not argue that speed is
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`a “pattern of operation” in the first place (likely because Dr. Davis was not even
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`sure if average speed is a pattern of operation). (Ex. 2034, 43:13-23.)
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`A POSA would not modify Severinsky using Quigley’s journey parameters.
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`Dr. Davis admitted “the only way you can intelligently modify the controller is
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`based on an understanding of the load requirements of the vehicle” (Ex. 2034,
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`18:1-5; see also Ex. 1088, ¶ 17), and Quigley is completely silent on that point.
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`(Ex. 2016, ¶ 80.).
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`Second, BMW complains that Patent Owners are interpreting the claims too
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`narrowly by addressing whether a POSA would use Quigley to improve
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`Severinsky’s mode switching. Reply, 11. But it was BMW that originally argued
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`that Severinsky would use Quigley’s “intelligent” controller to improve mode
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`switching. Petition, 32. And while BMW protests that Quigley must use its
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`“intelligent controller” for mode selection, Quigley expressly says that “[u]sing the
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`electric motor or heat engine exclusively (modes 1 and 2) present a manageable
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`control problem for the driver of the vehicle.” (BMW1054, 1-2. Quigley only
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`uses the “intelligent controller” for determining how to balance use of the engine
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`and electric motor (when both the engine and motor are already on) in what
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`Quigley calls “mode 3.” (Id.; Ex. 2016, ¶¶ 78-79.) Regardless, BMW fails to
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`explain how Severinsky could use Quigley’s parameters (or any other information)
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`for any purpose (even beyond mode selection).
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`Finally, BMW’s “reasonable expectation of success” argument ignores the
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`fact that BMW’s Petition relies on Quigley’s “journey parameters,” which BMW
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`now appears to distance itself from. Petition, 34 (“[a] POSA would only need to
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`modify Severinsky’s controller logic to use the information reflecting the estimated
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`journey parameters as taught by Quigley.”). BMW fails to explain how
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`Severinsky’s controller could be modified with any “journey parameter” to
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`improve Severinsky (POR, 35-36), and BMW is not off the hook simply because
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`controllers can be programmed.
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`There is no reason to combine Severinsky and Quigley.
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`3.
`Severinsky-Quigley fails to teach or suggest Claims 2 and 8
`In reply, BMW admits it only argued that Quigley’s derived predicted
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`pattern is based on at least one repetitive pattern rather than demonstrating that the
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`alleged pattern is a “repetitive pattern of operation” as claims 2 and 8 require.
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`BMW concedes that there is nothing repetitive about Quigley’s parameters. Reply,
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`16; Ex. 2016, ¶¶ 57-59. BMW argues “an expected (future) pattern of operation
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`would be based on the recognition of past patterns.” Reply, 16. But the claims
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`require that the “derived predicted pattern of operation comprises at least one
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`Case IPR2020-01299
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`repetitive pattern of operation,” and BMW presents no evidence related to such a
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`pattern.
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`4.
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`Severinsky-Quigley fails to teach or suggest the limitations
`of Claims 4 and 10
`BMW admits that there is no disclosure in either Severinsky or Quigley
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`related to “compar[ing] patterns of variation in road load experienced from day to
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`day in order to identify said repetitive patterns …” as claims 4 and 10 require.
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`BMW also acknowledges that neither reference actually monitors any variation in
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`road load experienced over time. Nonetheless, it urges that a POSA would divine
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`these teachings out of thin air and would further compare patterns of variation in
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`road load.
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`BMW again resorts to inherency, this time arguing that Severinsky/Quigley
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`“would maintain such a history as would be required for the controller to analyze
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`the patterns of the road load and to adjust the controller strategy accordingly.”
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`Reply, 16. BMW uses one missing limitation (“patterns of variation in road load”)
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`to argue for inherency for another missing limitation (“day-to-day” history of road
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`load). This argument rises to a whole new level of improper hindsight.
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`BMW doubles down on hindsight by making the incredible, unsupported
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`assertion that “a POSA would have recognized that Quigley’s pattern data would
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`include patterns of road load because … that would be required to manage the
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`energy flow through the hybrid drive train …” Reply, 17. BMW admits that
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`Quigley’s actual disclosure (using “journey parameters”) would not work such that
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`a POSA would necessarily have to use the ’761 patent’s “patterns of road load.”
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`These conclusory statements fall short of the exacting inherency standard. See
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`POR, 38-39.
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`BMW’s final argument—that “the subject matter as a whole would have
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`been obvious”—acknowledges that the requirements of claim 4 and 10 are entirely
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`missing in Severinsky and Quigley. Reply, 17. BMW, however, must point to
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`evidence other than the conclusory testimony of its expert to support such an
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`assertion. POR, 49.
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`B. Ground 2 Based on Severinsky in View of Nii (“Severinsky-Nii”)
`Is Deficient (Claims 1-12)
`As with Ground 1, the secondary reference (Nii) does not derive a “predicted
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`near-term” or “expected” “pattern of operation.” ID, 12. Nii derives a constant
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`power value (not a pattern of vehicle operation), and BMW fails to explain how
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`these references could be combined in a beneficial way.
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`1.
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`Severinsky-Nii fails to teach or suggest “deriv[ing] a
`predicted near-term pattern of operation” (claims 1 and 7)
`BMW’s Reply confirms that neither Severinsky nor Nii teach or suggest a
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`“controller [that] derives a predicted near-term pattern of operation of said hybrid
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`vehicle by monitoring operation of said hybrid vehicle” as claim 1 requires.10
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`BMW relies on Nii’s disclosure of a “travel-pattern recognition means” for
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`evidence of deriving “predicted near-term” or “expected pattern of operation.” But
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`Nii’s “travel-pattern recognition means [is] for recognizing a travel pattern when a
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`travelling under the same condition is repeated ….” (Ex. 1022, 3:7-9 (emphasis
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`added).) In other words, it collects historical information about a single travel
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`condition (“accumulated motor output”) having the same value over multiple trips
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`and naturally predicts a single value (“a target generator output”). Nii states:
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`… when a travel with almost the same starting time and travel
`condition (accumulated motor output) is performed “n” times (e.g. 5
`times) or more, the controller automatically regards the travel as a
`travel pattern and stores the starting time at the target generator output
`of the travel pattern…. a generator output is automatically set to the
`target generator output.
`(Ex. 1022, 7:28-35.)
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`Nii predicts a single data point, not a “pattern of operation.” BMW admits
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`that “the Challenged Claims require that the vehicle’s controller monitor operation
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`of the particular vehicle and use that data to predict future operational patterns
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`and alter vehicle operation accordingly.” Reply, 3.
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`                                                            
`10 Independent claim 7 recites a similar limitation.
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`Unable to satisfy the Challenged Claims, BMW again unsuccessfully
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`attempts to compare the prior art to the ’761 patent specification. Reply 20. In
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`contrast to Nii—which identifies repetition in a single value—the ’761 patent looks
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`for repetition in a pattern of variations of road load. The ’761 patent recognizes
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`and predicts a pattern consisting of road load remaining under 20% MTO followed
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`by road load varying between 0 and 50% MTO followed by road load increasing to
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`150% MTO. (Ex. 1001, 39:51-58.) The ’761 patent does not predict a single value
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`(or condition) like a generator output value.
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`BMW cannot disown its Petition,