IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`
`PAICE LLC and THE ABELL FOUNDATION,
`INC.,
`
`Plaintiffs,
`
`v.
`
`BAYERISCHE MOTOREN WERKE A.G., and
`BMW OF NORTH AMERICA, LLC,
`
`Defendants.
`
`C.A. No. 19-CV-3348-SAG
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS BAYERISCHE MOTOREN WERKE, AG AND BMW OF NORTH
`AMERICA, LLC’S RESPONSIVE CLAIM CONSTRUCTION STATEMENT
`
`EAST\175056276.2
`
`1
`
`PAICE 2006
`BMW v. Paice
`IPR2020-01299
`
`

`

`I.
`
`INTRODUCTION
`
`Pursuant to the Court’s Scheduling Order (ECF No. 51) and Local Rule 805.1(d),
`
`Defendants Bayerische Motoren Werke, AG (“BMWAG”) and BMW of North America, LLC
`
`(“BMWNA”) (collectively, “BMW” or “Defendants”) hereby provide the following Responsive
`
`Claim Construction Statement. BMW’s proposed constructions reflect its current knowledge and
`
`understanding as of this date in this Action. BMW’s proposed constructions are based in whole or
`
`in part on its present understanding of Paice’s apparent positions as to the construction of certain
`
`terms of the Asserted Claims of U.S. Patent Nos. 7,104,347 (“the ’347 patent”); 7,237,634 (“the
`
`’634 patent”); and 8,630,761 (“the ’761 patent”) (collectively, the “Asserted Patents”). BMW
`
`reserves the right to seek leave to revise, amend, modify and/or supplement its proposed
`
`constructions based on additional discovery or other positions raised by Paice in this Action or any
`
`related action.
`
`II.
`
`IDENTIFICATION OF CLAIM TERMS, PROPOSED CONSTRUCTIONS, AND
`SUPPORTING EVIDENCE
`
`BMW identifies the following claim terms, proposed constructions, and supporting
`
`exemplary intrinsic and extrinsic evidence in the charts below. The charts include the claim terms
`
`being construed, the Asserted Claims in which the terms appear, BMW’s proposed construction
`
`for each of the term, and both intrinsic and extrinsic evidence in support of the proposed
`
`constructions.
`
`For all other claim terms not included herein, BMW submits that no construction is
`
`required and/or that the term should be given its plain and ordinary meaning. In its Proposed Claim
`
`Construction Statement, Paice has provided two terms that require construction. BMW agrees with
`
`the following constructions proposed by Paice:
`
`EAST\175056276.2
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`2
`
`

`

`Claim Term
`
`“road load” or
`“RL”
`
`“setpoint” or
`“SP”
`
`Asserted Claim(s)
`’347 patent, claims 11 and 33; ’634
`patent, claims 33, 37, 39, 40, 41, 43,
`50, 188, 202, 204, 206, and 208; ’761
`patent, claims 4, 5, 6, 10, 11, and 12
`’347 patent, claims 2 and 24; ’634
`patent, claims 33, 34, 35, 37, 39, 40,
`43, 55, 188, 202, 205, 206, and 213
`
`Proposed Construction
`“the amount of instantaneous
`torque required to propel the
`vehicle, be it positive or negative”
`
`“a predetermined torque value that
`may or may not be reset”
`
`In addition to these agreed-upon terms and constructions, BMW hereby identifies the
`
`following terms, constructions, and evidence in support of its constructions:
`
`A.
`
`The ’347 Patent
`
`Claim Term
`
`Proposed Construction
`“monitor[] a driver’s repeated
`driving operations over time”
`
`“monitor[]
`patterns of
`vehicle
`operation over
`time” (claims 2
`and 24)
`
`“shafts are connected by a
`non-slipping clutch, a non-
`conventional automotive
`friction clutch that does not
`allow for extensive relative
`slipping before the shafts are
`fully engaged”
`
`“shafts may be
`connected by a
`non-slipping
`clutch” (claim
`38)
`
`EAST\175056276.2
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`3
`
`Intrinsic and Extrinsic Evidence
`’347 patent at 40:56-41:9; 44:23-39.
`
`Final Written Decision in IPR2014-00884.
`
`Claim Construction Order (No. 21) in ITC
`Inv. No. 337-TA-1042.
`
`BMW may offer expert testimony
`regarding the proposed construction of
`“monitor[] patterns of vehicle operation
`over time” as would be understood by a
`POSA, including in view of the well-
`understood meaning in the relevant fields
`of art, as well as in view of the claims,
`specification, prosecution histories, and
`cited references.
`’347 patent at 26:25-50; Fig. 4, clutch 51
`
`BMW may offer expert testimony
`regarding the proposed construction of
`“shafts may be connected by a non-
`slipping clutch” as would be understood by
`a POSA, including in view of the well-
`understood meaning in the relevant fields
`of art, as well as in view of the claims,
`specification, prosecution histories, and
`cited references.
`
`

`

`B.
`
`The ’634 Patent
`
`Claim Term
`
`Proposed Construction
`“monitor[] a driver’s repeated
`driving operations over time”
`
`“monitor[]
`patterns of
`vehicle
`operation over
`time” (claim
`33)
`
`“monitor[] the
`RL over time”
`(claims 39, 40,
`and 80)
`
`“abnormal and
`transient
`conditions”
`(claim 55)
`
`Plain meaning or no
`construction necessary
`
`abnormal and transient
`conditions “include starting
`and stopping the engine”
`
`“turbocharger
`operated . . .
`when desired”
`(claims 49)
`
`“operating the turbocharger
`when the road load has
`exceeded the engine’s
`maximum torque output for a
`specified period of time”
`
`EAST\175056276.2
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`4
`
`Intrinsic and Extrinsic Evidence
`’634 patent at 40:50-41:3; 44:15-31.
`
`See also Section A.
`
`BMW may offer expert testimony
`regarding the proposed construction of
`“monitor[] patterns of vehicle operation
`over time” as would be understood by a
`POSA, including in view of the well-
`understood meaning in the relevant fields
`of art, as well as in view of the claims,
`specification, prosecution histories, and
`cited references.
`BMW may offer expert testimony
`regarding the proposed construction of
`“monitor[] the RL over time” as would be
`understood by a POSA, including in view
`of the well-understood meaning in the
`relevant fields of art, as well as in view of
`the claims, specification, prosecution
`histories, and cited references.
`U.S. Patent Application 10/382,577.
`
`’347 patent at 60:17-21.
`
`Final Written Decisions in IPR2015-
`00722; IPR2015-00785; IPR2015-00787;
`IPR2015-00790; IPR2015-00801.
`
`BMW may offer expert testimony
`regarding the proposed construction of
`“abnormal and transient conditions” as
`would be understood by a POSA, including
`in view of the well-understood meaning in
`the relevant fields of art, as well as in view
`of the claims, specification, prosecution
`histories, and cited references.
`’634 patent at 21:12-17; 44:52-50:11.
`
`BMW may offer expert testimony
`regarding the proposed construction of
`“turbocharger operated . . . when desired”
`as would be understood by a POSA,
`
`

`

`including in view of the well-understood
`meaning in the relevant fields of art, as
`well as in view of the claims, specification,
`prosecution histories, and cited references.
`
`Intrinsic and Extrinsic Evidence
`’761 patent at 39:47-40:43.
`
`BMW may offer expert testimony
`regarding the proposed construction of “a
`predicted near-term pattern of operation”
`and “anticipated patterns of vehicle
`operation” as would be understood by a
`POSA, including in view of the well-
`understood meaning in the relevant fields
`of art, as well as in view of the claims,
`specification, prosecution histories, and
`cited references.
`’761 patent at 39:47-40:46.
`
`See also Section A.
`
`BMW may offer expert testimony
`regarding the proposed construction of
`“monitoring operation of said hybrid
`vehicle” as would be understood by a
`POSA, including in view of the well-
`understood meaning in the relevant fields
`of art, as well as in view of the claims,
`specification, prosecution histories, and
`cited references.
`’761 patent at 39:48-51; 43:15-22.
`
`BMW may offer expert testimony
`regarding the proposed construction of
`“repetitive pattern of operation of said
`hybrid vehicle” as would be understood by
`a POSA, including in view of the well-
`understood meaning in the relevant fields
`of art, as well as in view of the claims,
`specification, prosecution histories, and
`cited references.
`
`C.
`
`The ’761 Patent
`
`Proposed Construction
`“a pattern of operation of the
`vehicle expected based on
`monitoring the driver’s
`repeated driving operations
`over time”
`
`“monitoring a driver’s
`repeated driving operations
`over time”
`
`“a pattern of operation of the
`hybrid vehicle derived from
`monitoring the vehicle’s
`operation over a period of
`days or weeks”
`
`Claim Term
`
`“a predicted
`near-term
`pattern of
`operation”
`(claims 1 and 7)
`and “anticipated
`patterns of
`vehicle
`operation”
`(claims 6 and
`12)
`
`“monitoring
`operation of
`said hybrid
`vehicle” (claims
`1 and 7)
`
`“repetitive
`pattern of
`operation of
`said hybrid
`vehicle” (claims
`2, 3, 4, 8, 9, and
`10)
`
`EAST\175056276.2
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`

`

`Dated: July 9, 2020
`
`DLA PIPER LLP (US)
`
`Of Counsel:
`
`Joseph P. Lavelle (admitted pro hac vice)
`DLA PIPER LLP (US)
`500 Eighth Street, NW
`Washington, DC 20004
`Telephone: (202) 799-4000
`Facsimile: (202) 799-5000
`joe.lavelle@us.dlapiper.com
`
`Stephanie Lim (admitted pro hac vice)
`DLA PIPER LLP (US)
`444 West Lake Street, Suite 900
`Chicago, IL 60606-0089
`Phone: (312) 368-4000
`Fax: (312) 236-7516
`stephanie.lim@us.dlapiper.com
`
`/s/ Joseph P. Lavelle
`Joel A. Dewey
`The Marbury Building
`6225 Smith Avenue
`Baltimore, MD 21209-3600
`Telephone: (410) 580-4135
`Facsimile: (410) 580-3135
`joel.dewey@us.dlapiper.com
`
`David Knudson (admitted pro hac vice)
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Phone: (619) 699-2700
`Fax: (619) 699-2701
`david.knudson@us.dlapiper.com
`
`Attorneys for Defendants
`BAYERISCHE MOTOREN WERKE AG and
`BMW OF NORTH AMERICA, LLC
`
`EAST\175056276.2
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`6
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`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 9th day of July 2020, I caused a true and correct copy of the
`
`foregoing Defendant Bayerische Motoren Werke, AG and BMW of North America, LLC’s
`
`Responsive Claim Construction Statement to be served by electronic mail on the counsel of
`
`record listed below.
`
`James P Ulwick
`Kramon and Graham PA
`One South St Ste 2600
`Baltimore, MD 21202
`14107526030
`Fax: 14105391269
`Email: julwick@kg-law.com
`
`Attorneys for Plaintiffs Paice LLC &
`The Abell Foundation, Inc.
`
`Brian Livedalen
`Indranil Mukerji
`Ruffin B. Cordell
`Fish and Richardson PC
`1000 Maine Ave. SW Ste. 1000
`Washington, DC 20024
`2027835070
`Fax: 2027832331
`Email:
`livedalen@fr.com
`mukerji@fr.com
`cordell@fr.com
`
`/s/ Joseph P. Lavelle
`Joseph P. Lavelle
`
`EAST\175056276.2
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`7
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