Petitioners’
`Oral Argument Demonstratives
`
`Bayerische Motoren Werke Aktiengesellschaft &
`BMW of North America, LLC,
`Petitioners
`v.
`Paice LLC & The Abell Foundation, Inc.,
`Patent Owners
`
`IPR2020-01299
`U.S. Patent No. 8,630,761
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`BMW1111
`BMW v. Paice, IPR2020-01299
`11
`
`
`Oral Argument Demonstratives
`
`Bayerische Motoren Werke Aktiengesellschaft &
`BMW of North America, LLC,
`Petitioners
`v.
`Paice LLC & The Abell Foundation, Inc.,
`Patent Owners
`
`IPR2020-01299
`U.S. Patent No. 8,630,761
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`BMW1111
`BMW v. Paice, IPR2020-01299
`11
`
`
`
`Only Purported Inventive Aspect of Challenged Claims
`Concerns “Pattern”-Related Limitations
`
`Independent Claim 1:
`
`Well known
`hybrid control
`strategy
`[a]-[d]
`
`Incorporating
`pattern into
`control strategy
`[e]-[f]
`
`PO does not contend that there are any patentable distinctions between claims 1 and 7
`with respect to Petitioners’ grounds
`Source: Petition, 5-6, 77; BMW1001 (’761 Patent), claim 1
`
`2
`
`
`
`Only Purported Inventive Aspect of Challenged Claims
`Concerns “Pattern”-Related Limitations
`
`No dispute that limitations [a]-[d] are disclosed by
`Severinsky’s controller:
`
`[a] storing and supplying electrical
`power from a battery bank;
`[b] applying torque to road wheels
`from an engine or a motor;
`[c] controlling flow of torque
`between the engine, motor, and
`wheels;
`[d] controlling flow of electrical
`power between the battery bank
`and motor employing a controller;
`
`Wheels
`
`Battery
`
`Source: Petition, 17, 20-24, 77-78; Reply, 1; BMW1001, claim 1; BMW1013 (Severinsky), Fig. 3
`
`3
`
`
`
`Only Purported Inventive Aspect of Challenged Claims
`Concerns “Pattern”-Related Limitations
`
`[e] wherein said controller derives a predicted near-term pattern of
`operation of said hybrid vehicle by monitoring operation of said
`hybrid vehicle; and
`
`Board’s Construction:
`“predicted near-term pattern
`of operation”
`
`“an expected pattern of
`operation”
`
`[f] controls operation of said at least one traction motor and said
`internal combustion engine for propulsion of said hybrid vehicle
`responsive to said derived near-term predicted pattern of operation
`of said hybrid vehicle.
`Control merely “responsive to” expected pattern
`
`Source: Petition, 77-78; Reply 1-3; BMW1001, claim 1; Institution Decision, 12
`
`4
`
`
`
`Only Purported Inventive Aspect of Challenged Claims
`Concerns the “Pattern”-Related Limitations
`
`Applicant amended claims and argued around
`Severinsky (‘970 Patent) during prosecution:
`
`*
`
`*
`
`*
`
`Dr. Shahbakhti
`Admits Didn’t
`Consider “Details” of
`File History
`
`Petition, 7-8; Reply, 3; BMW1052 (FH), 58; BMW1103 (Shahbakhti dep. tr.), 26:11-28:12
`
`5
`
`
`
`Purported “Pattern”-Related Novelty
`Was Described by Quigley
`
`Quigley
`
`Source: Petition, 7-8, 25, 29; Reply 3-4; BMW1052, 58; BMW1054 (Quigley), 129, 131
`
`6
`
`
`
`Purported “Pattern”-Related Novelty
`Was Also Described by Nii
`
`Nii
`
`Nii
`
`Source: Petition, 51-52; Reply, 18-19; BMW1052, 58; BMW1022 (Nii), 2:4-5, 2:39-42
`
`7
`
`
`
`It Would Have Been Obvious to Modify Severinsky’s Controller
`to be “Responsive to” an Expected Pattern of Operation
`
`Overview of the 3 Grounds:
`● Quigley/Nii/Graf describe deriving expected pattern of operation
`and controlling operation “responsive to” expected pattern
`● A POSA would have been motivated to optimize Severinsky’s
`controller strategy to be “responsive to” expected pattern
`
`Dr. Shahbakhti
`Source: Petition, 1, 5-6, 17; Reply, 1-2; BMW1088, ¶ 55; BMW1103, 13:20-24; 14:21-25
`
`8
`
`
`
`GROUND 1
`
`Claims 1-12 are Obvious:
`SEVERINSKY in view of QUIGLEY
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`
`
`Quigley Describes Purportedly Novel Features
`
`Quigley determines an expected pattern of
`operation to improve hybrid control
`
`Quigley
`
`Source: Petition, 25; Reply, 4-5; BMW1054, 129
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`
`
`Quigley Determines Expected Pattern of Operation “by
`Monitoring Operation of the Vehicle”
`
`Quigley looks for “habitual” usage characteristics to
`predict journey and its associated characteristics
`
`Quigley
`
`Quigley’s disclosure is not limited to predicting “single data points”
`Source: Petition, 25-26, 29, 34; Reply, 6-7; BMW1054, 130
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`11
`
`
`
`Quigley Discloses Monitoring Operation and Deriving
`Expected Patterns of Operation for a Commute
`
`Quigley
`
`expected travel distance =
`an expected pattern of operation
`
`Dr. Shahbakhti
`Source: Petition, 26-28; BMW1054, 132-133; Reply, 7-8; BMW1103, 75:7-12
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`
`
`Quigley’s Commuting Pattern Prediction and Control
`Matches ’761 Patent Example
`
`‘761 Patent
`
`Quigley commute = ‘761 Patent commute
`
`Source: Petition, 11, 28; Reply, 7-8; BMW1001, 39:48-61, 43:15-22
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`13
`
`
`
`Quigley Implements Claimed Controller Strategy
`“Responsive to” the Expected Journey
`
`Quigley
`
`Claim 1[f]: “controls operation of said at least one traction motor and said
`internal combustion engine for propulsion of said hybrid vehicle responsive to
`said derived near-term predicted pattern of operation”
`Source: Petition, 28-30; Reply, 3-4; BMW1054, 131
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`
`
`A POSA Would Have Been Motivated to Modify
`Severinsky’s Controller in view of Quigley
`
`● No dispute that Severinsky discloses a
`control strategy, including:
`– controlling flow of torque amongst an
`engine, motor, and road wheels, and
`– controlling the flow of electrical power
`(claim elements [1a]-[1d])
`
`● That controller strategy would be
`modified to be “responsive to” expected
`patterns of operation.
`
`Source: Petition, 29-32; Reply, 5; BMW1054, 131; BMW1013, Fig. 3; BMW1008, ¶¶197-198
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`15
`
`
`
`Case Presents Textbook Application of KSR
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
`
`“[I]f a technique has been used to improve one
`device, and a person of ordinary skill in the art
`would recognize that it would improve similar
`devices in the same way, using the technique is
`obvious unless its actual application is beyond his
`or her skill.”
`
`Source: Petition, 32, 53; Reply, 2, 4
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`
`
`A POSA Would Have Been Motivated to Modify
`Severinsky’s Controller in view of Quigley
`
`Severinsky
`
`Quigley
`
`Dr. Davis
`Source: Petition, 30-34; Reply 13-14; BMW1013, 21:21-38; BMW1054, 129, 130; BMW1008, ¶198
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`
`
`A POSA Would Have Had an Expectation of Success
`
`Quigley
`
`Dr. Davis
`
`Source: Petition, 33-34; BMW1001, 39:58-61; BMW1008, ¶200; Reply 15; BMW1103, 56:14-23
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`18
`
`
`
`Attacks on Quigley in Isolation (in addition to being factually
`wrong) Disregard the Proposed Combination
`
`In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
`1986)
`
`“Non-obviousness cannot be established by
`attacking references individually where the rejection
`is based upon the teachings of a combination of
`references.”
`
`Source: Reply, 5
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`
`
`Quigley Implements Controller Strategy
`“Responsive to” the Expected Journey
`
`PO argues that
`Quigley’s “intelligent
`controller” is only used
`for balancing engine
`and motor in “mode 3.”
`
`Quigley
`
`Dr. Shahbakhti
`
`BUT: Quigley’s “journey” not
`limited to “mode 3”.
`
`YET: Even if it was; claim
`limitations still satisfied.
`
`Source: Petition, 28-30; Reply, 4, 11-13; BMW1054, 130, 131; BMW1103, 107:15-21
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`
`
`PO’s Improper “Implied” Construction
`to Alter Express Construction
`
`● PO’s Proposed Construction (Adopted):
`
`● Dr. Shahbakhti’s (and PO’s) understanding of “pattern” in related
`IPR on ’347 Patent:
`
`Dr. Shahbakhti
`
`● Dr. Shahbakhti’s (and PO’s) understanding of “pattern” in this IPR:
`
`Source: Reply, 9-10; POR, 21; BMW1102 (‘347 Patent decl.), ¶42; PAICE2016 (‘761 Patent decl.), ¶52
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`
`
`PO’s “Supplemental” Claim Construction is
`Unwarranted and Does Not Save Claims
`
`● A POSA would understand Quigley’s pattern information to include
`“an order or sequence of driving operations.”
`
`Source: Reply, 10-11; BMW1088, ¶17; Petition 37-39; BMW1008 ¶¶217-218
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`Dr. Davis
`
`
`
`PO’s Irrelevant Arguments About Required “Pattern” Are Not
`Supported by Claims or ’761 Patent Specification
`
`PO’s demonstrative
`slide from related IPR
`
`● Contrary to PO’s argument that a “pattern” cannot be represented by a
`“singular value,” there is no disclosure in the ‘761 patent about how
`many values are saved for any expected pattern or how the controller
`represents its determined pattern.
`*PO’s argument is a red herring because Quigley’s expected pattern
`consists of more than a “singular value”.
`
`Source: Reply, 8-9
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`
`
`PO’s Irrelevant Arguments About Required “Pattern” Are Not
`Supported by Claims or ’761 Patent Specification
`
`● A POSA would understand that a “pattern” can be represented in
`different ways:
`
`Dr. Davis
`
`● PO’s Exhibits show that a single value can be used to represent a
`pattern:
`
`Source: Reply, 9; BMW1088, ¶21; BMW1104 (Handbook), 338
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`24
`
`
`
`Dependent Claims 2-3, 5-6, 8-9, 11-12 Are Also Obvious
`
`● Claims 3, 5, 6, 9, 11, and 12
`– No additional dispute by PO
`● Claims 2 and 8
`
`Quigley
`
`Dr. Shahbakhti
`
`Source: Petition, 35; Reply 16, 18; BMW1001, claim 2; BMW1054, 130; BMW1103, 56:7-9
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`
`
`Dependent Claims 4 and 10 Are Also Obvious
`
`● Claims 4 and 10
`
`Source: BMW1001, claim 4
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`
`
`Dependent Claims 4 and 10 Are Also Obvious
`
`● Severinsky discloses a road load based control strategy (determines RL
`at all times)
`
`Severinsky
`
`Source: Petition, 36-37; BMW1013, 17:11-15; BMW1003, 16
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`
`
`Dependent Claims 4 and 10 Are Also Obvious
`
`● It would have been obvious to a POSA to modify Severinsky’s road
`load based control strategy to make the system more “intelligent” by
`analyzing the patterns of the variations of road load.
`
`Quigley
`
`Dr. Davis
`Source: Petition, 38; Reply, 17; BMW1054, 129; BMW1008, ¶219
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`
`
`What is a Hybrid Control Strategy and How Would
`Severinsky’s be Modified?
`
`● Purpose of control strategy determines
`when to switch modes:
`– Motor only
`– Engine only
`– Electric + Motor
`
`● Severinsky’s control strategy switches
`modes based on road load (RL)
`
`● Quigley optimizes controller strategy for
`expected pattern
`
`● Applying Quigley’s teachings would have
`Severinsky monitor road loads for patterns
`
`Source: Petition, 3-4, 16, 21, 32, 36-39; BMW1008, ¶¶110-115, 219; BMW1054, 129; BMW1013, 17:11-15; BMW1001, 24:30-40; 34:10-15
`
`29
`
`
`
`Dependent Claims 4 and 10 Are Also Obvious
`
`● Moreover, Quigley discloses to a POSA basing its pattern data on
`road load.
`
`Quigley
`
`Dr. Davis
`
`Source: Petition, 38-39; BMW1054, 129-130; BMW1008, ¶217
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`
`
`Dependent Claims 4 and 10 Are Also Obvious
`
`Dr. Davis
`
`● A POSA applying Quigley’s pattern related teachings would
`look for patterns of variations of road load.
`– Severinsky discloses that road load is determined “at all
`times.”
`– Severinsky discloses determining road load experienced
`by the vehicle during, e.g., uphill and downhill driving
`conditions.
`– Those driving situations involve variations in road load.
`● A POSA optimizing Severinsky’s controller strategy to include
`expected pattern information as taught by Quigley would
`thus include variations in road load.
`
`Source: Petition, 37-38; Reply, 16-18; BMW1008, ¶¶ 213-216, 219
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`
`
`PO’s Attack Fails When Own Disclosure Lacking
`
`Lockwood v. Am. Airlines, 107 F.3d 1565, 1570
`(Fed. Cir. 1997)
`
`Rejecting invalidity argument where the challenged
`patent “itself does not disclose the level of detail
`that [the challenger] would have us require of the
`prior art.”
`
`Source: Reply, 18, 20
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`
`
`GROUND 2
`
`Claims 1-12 are Obvious:
`SEVERINSKY in view of NII
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`33
`
`
`
`Nii Also Teaches Deriving Pattern of Expected Operation
`“by Monitoring Operation of the Vehicle”
`
`Source: Petition 51-52; Reply 19-21; Institution Decision, 23, 27-28; BMW1022, 2:4-5; 2:21-24; 1:44-48; 3:7-12
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`
`
`Nii Teaches “Monitor[ing]” the Same “Patterns of Vehicle
`Operation” as Taught in the ’761 Patent
`
`Nii
`
`Source: Petition, 4, 51; BMW1001, 39:49-61; BMW1022, 2:21-24
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`
`
`Nii Uses Pattern Information to set Target Outputs:
`Controlling Operation “Responsive to” the Expected Pattern
`
`*
`
`*
`
`*
`
`Dr. Davis
`
`Source: Petition, 52; Reply 19-20; BMW1022, 2:13-47; BMW1008, ¶289
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`
`
`Nii’s Pattern Prediction and Control Matches
`’761 Patent Example
`
`● Recognize pattern (blue)
`● Adjust single output value (in green)
`
`Source: Reply, 19-20; BMW1088, ¶42
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`
`
`A POSA Would Have Been Motivated to Modify
`Severinsky’s Controller in view of Nii
`
`● No dispute that Severinsky discloses a
`control strategy, including:
`– controlling flow of torque amongst an
`engine, motor, and road wheels, and
`– controlling the flow of electrical power
`(claim elements [1a]-[1d])
`
`● That controller strategy would be
`modified to be “responsive to”
`expected patterns of operation.
`
`Source: Petition, 51-53; Reply, 22-23; BMW1022, 2:4-5, 2:39-42; BMW1008, ¶290
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`
`
`A POSA Would Have Been Motivated to Modify
`Severinsky’s Controller in view of Nii
`
`Severinsky
`
`Dr. Davis
`Source: Petition, 52-54; BMW1013, 21:21-38, BMW1022, 2:13-24; BMW1008, ¶290
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`
`
`A POSA Would Have also Improved
`Severinsky’s Hysteresis in view of Nii
`
`Severinsky
`
`Dr. Davis
`
`Source: Petition, 53-55; BMW1013, 18:23-42; BMW1008, ¶295
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`
`
`A POSA Would Have Had an Expectation of Success
`
`Dr. Davis
`
`‘761 Patent
`
`Source: Petition, 55; Reply 15, 24; BMW1001, 39:58-61; BMW1008, ¶297; BMW1103, 56:14-23
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`
`
`PO’s Bodily Incorporation Arguments
`Are Irrelevant Obviousness
`
`In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012)
`
`“It is well-established that a determination of obviousness based
`on teachings from multiple references does not require an actual,
`physical substitution of elements.”
`
`“[I]t is not necessary that the inventions of the references be
`physically combinable to render obvious the invention under
`review.”
`
`Source: Institution Decision, 26; Reply 21-23
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`
`
`PO’s Expert’s Opinions on Motivation
`Contradicted By Prior Opinions
`
`● Dr. Shahbakhti and PO argue that a POSA would not be
`motivated to combine parallel / series references:
`
`● Dr. Shahbakhti previously testified that a POSA would be
`motivated to combine such references:
`
`Dr. Shahbakhti
`
`Source: POR, 11, 48; Reply 22-23; BMW1098, ¶74; BMW1099; BMW1100
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`
`
`Dependent Claims 2-3, 5-6, 8-9, 11-12 Are Also Obvious
`
`● Claims 3, 5, 6, 9, 11, and 12
`– No additional dispute by PO
`● Claims 2 and 8
`
`Dr. Shahbakhti
`
`Source: Petition 56; Reply 16, 24-25; BMW1001, claim 2; BMW1022, 3:7-9; BMW1103, 56:7-9
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`Dependent Claims 4 and 10 Are Also Obvious
`
`● Claims 4 and 10
`
`● Severinsky discloses a road load based control strategy (determines
`RL at all times)
`
`Severinsky
`
`Source: Petition, 57, 36-37; BMW1001, claim 4; BMW1013, 17:11-15; BMW1003, 16
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`
`
`Dependent Claims 4 and 10 Are Also Obvious
`
`● Nii discloses to a POSA basing its pattern data on variations of
`road load.
`
`Dr. Davis
`
`Source: Petition, 57; BMW1022, 3:14-29; BMW 1008, ¶308
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`
`
`Dependent Claims 4 and 10 Are Also Obvious
`
`Dr. Davis
`
`● A POSA applying Nii’s pattern related
`teachings would look for patterns of
`variations of road load.
`– Severinsky discloses that road load is
`determined “at all times.”
`– Severinsky discloses determining road
`load experienced by the vehicle during,
`e.g., uphill and downhill driving
`conditions.
`– Those driving situations involve
`variations in road load.
`● A POSA optimizing Severinsky’s controller
`strategy to include expected pattern
`information as taught by Nii would thus
`include variations in road load.
`
`Source: Petition, 36-38, 57; BMW1008, ¶¶ 308, 290-292, 297; Reply, 25-26; BMW1088, ¶48
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`
`
`GROUND 3
`
`Claims 1-2, 5-8, 11-12 are Obvious:
`SEVERINSKY in view of GRAF
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`
`
`The Institution Decision Misinterpreted Graf
`
`Institution Decision
`
`Graf
`
`Graf ’703
`
`Source: Institution Decision, 35; Reply 26-28; BMW1020, 5:36-42; BMW1090, 13:14-15
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`
`
`Graf’s Determination of Driver Type/Style is
`Expected Pattern of Operation
`
`Graf
`
`Source: Petition, 64; BMW1020, Fig. 2
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`
`
`Graf’s Determination of Driver Type/Style is
`Expected Pattern of Operation
`
`Graf
`
`Dr. Davis
`
`* * *
`
`Source: Petition, 63-65; BMW1020, 5:36-42; BMW1008, ¶¶ 350, 353
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`
`
`Graf Adjust the Control Parameters “Responsive to” Driver
`Type/Style “Pattern” Information
`
`Graf
`
`Source: Petition, 66; BMW1020, Fig. 3
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`52
`
`
`
`A POSA Would Have Been Motivated to Modify
`Severinsky’s Controller in view of Graf
`
`Severinsky
`
`Graf
`
`Source: Petition, 68; BMW1013, 21:21-38; BMW1020, 1:45-52; BMW1008, ¶358
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Dr. Davis
`
`53
`
`
`
`Dependent Claims 2, 5-6, 8, 11-12 Are Also Obvious
`
`● Claims 2, 5-6, 8, 11-12
`– No additional dispute by PO
`
`Source: POR
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`
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