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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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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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`____________
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`Case IPR2020-01386
`Patent No. 7,237,634
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`___________
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`PATENT OWNER’S NOTICE OF APPEAL
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`Case IPR2020-01386
`Attorney Docket No. 36351-0018IP1
`Pursuant to 35 U.S.C. §§ 142 and 319, and 37 C.F.R. § 90.2(a), Patent
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`owners, Paice LLC and The Abell Foundation, Inc., hereby appeals to the United
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`States Court of Appeals for the Federal Circuit from the Final Written Decision in
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`Case No. IPR2020-01386 entered on January 31, 2022 (Paper 37) (“Final Written
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`Decision”) by the Patent Trial and Appeal Board (“the Board”), and from all other
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`underlying orders, decisions, rulings and opinions that are adverse to Patent
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`Owners including, without limitation, those within the Decision on Institution of
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`Inter Partes Review entered February 5, 2021, 2021 (Paper 13).
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owners indicate that
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`the issues on appeal include, but are not limited to:
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`(1) the Board’s decision that challenged claims 33–44, 46, 49, 50, 52–55, 68,
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`105, 188, 189, 199–206, 208, and 211–214 were unpatentable under 35
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`U.S.C. §103(a) as being obvious in view of the cited prior art;
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`(2) the Board’s interpretation of the limitation “monitoring patterns of
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`vehicle operation over time and varies said setpoint SP accordingly”
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`found in claim 33.
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`(3) the Board’s reliance on conclusory and insufficient expert testimony;
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`(4) the Board’s interpretation of the prior art;
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`(5) the Board’s legal errors in undertaking the aforementioned obviousness
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`analyses;
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`1
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`Case IPR2020-01386
`Attorney Docket No. 36351-0018IP1
`(6) the Board’s findings that conflict with the evidence of record or are that
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`are otherwise not supported by substantial evidence;
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`(7) the Board’s failure to consider the evidence of record fully and properly;
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`and
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`(8) any findings or determinations supporting or related to the
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`aforementioned issues as well as other issues decided adversely to Patent
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`Owner in any order, decisions, rulings, or opinions.
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`Simultaneous with this submission, a copy of the Notice of Appeal is being
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`filed electronically with the Patent Trial and Appeal Board. In addition, a copy of
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`this Notice of Appeal, along with the required docketing fees, are being
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`electronically filed with the Clerk’s Office for the United States Court of Appeals
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`for the Federal Circuit.
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`Dated: March 25, 2022
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`Respectfully submitted,
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`
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`/Brian J. Livedalen/
`Brian J. Livedalen, Reg. No. 67,450
`Fish & Richardson, P.C.
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`Attorney for Patent Owner
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`2
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`Case IPR2020-01386
`Attorney Docket No. 36351-0018IP1
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on March 25, 2022, a complete and entire copy of this Patent Owner’s Notice
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`of Appeal was provided via email to Petitioner by serving the correspondence
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`address of 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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`E-mail:
`jsanok@crowell.com
`vgalluzzo@crowell.com
`sbittman@crowell.com
`jzambrzycki@crowell.com
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`Case IPR2020-01386
`Attorney Docket No. 36351-0018IP1
`I hereby certify that, in addition to being filed electronically through the
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`Board’s E2E System, the original version of the foregoing Notice of Appeal, was
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`filed by hand on March 25, 2022, with the Director of the United States Patent and
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`Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 1 OB20
`600 Dulany Street
`Alexandria, VA 22314-5793
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`I hereby certify that on March 25, 2022, a true and correct copy of the
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`foregoing Notice of Appeal, along with a copy of the Final Written Decision, was
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`filed electronically with the Clerk’s Office of the United States Court of Appeals
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`for the Federal Circuit, at the following address:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005
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`/Brian J. Livedalen/
`Brian J. Livedalen, Reg. No. 67,450
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 638-6557
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