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` DR. MAHDI SHAHBAKHTI
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________________________
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
` BMW OF NORTH AMERICA, LLC,
` Petitioner
` v.
` PAICE LLC & THE ABELL FOUNDATION, INC.
` Patent Owner
` _____________________________
` Case No. IPR2020-00994
` Patent No. 7,104,347
` _____________________________
`
` DEPOSITION OF DR. MAHDI SHAHBAKHTI
` TAKEN REMOTELY BY VIDEOCONFERENCE
` May 6, 2021
`
` Reported by: Mary Ann Payonk
` Job No. 193241
`
`TSG Reporting - Worldwide 877-702-9580
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`BMW v. Paice, IPR2020-01386
`BMW1089
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` DR. MAHDI SHAHBAKHTI
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________________________
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
` BMW OF NORTH AMERICA, LLC,
` Petitioner
` v.
` PAICE LLC & THE ABELL FOUNDATION, INC.
` Patent Owner
` _____________________________
` Case No. IPR2020-00994
` Patent No. 7,104,347
` _____________________________
`
` DEPOSITION OF DR. MAHDI SHAHBAKHTI
` TAKEN REMOTELY BY VIDEOCONFERENCE
` May 6, 2021
`
` Reported by: Mary Ann Payonk
` Job No. 193241
`
`TSG Reporting - Worldwide 877-702-9580
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` DR. MAHDI SHAHBAKHTI
`
`Page 2
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` May 6, 2021
` 9:00 a.m. (Mountain)
`
` Deposition of DR. MAHDI SHAHBAKHTI taken
` remotely by videoconference pursuant to Notice
` and agreement of counsel, stenographically
` reported by Mary Ann Payonk, Shorthand Reporter
` and Notary Public, California CSR No. 13431.
` All attorneys participating in this
` deposition acknowledge that in compliance with
` public health orders, the reporter is not
` physically present in the deposition room and
` will be reporting remotely; further, that in
` lieu of an oath administered in person, the
` witness will verbally declare their testimony
` in this matter under penalty of perjury.
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` DR. MAHDI SHAHBAKHTI
` APPEARANCES:
` ON BEHALF OF PETITIONER:
` BY: VINCENT GALLUZZO, ESQ.
` SCOTT BITTMAN, ESQ
` CROWELL & MORING
` 1001 Pennsylvania Avenue NW
` Washington, DC 20004
`
` ON BEHALF OF PATENT OWNER and THE WITNESS:
` BY: BRIAN LIVEDALEN, ESQ.
` FISH & RICHARDSON
` 1000 Maine Avenue, SW
` Washington, DC 20004
`
` ALSO ATTENDING:
` Rodolfo Duran, Legal Video Specialist
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` DR. MAHDI SHAHBAKHTI
` THE VIDEOGRAPHER: Good morning, 08:59
` counselors. My name is Rodolfo Duran. 09:00
` I'm the legal videographer in 09:00
` association with TSG Reporting, Inc. 09:00
` Due to the severity of COVID-19 and 09:00
` following the practices of social 09:00
` distancing, I will not be in the same 09:00
` room with the witness; instead, I will 09:00
` record this remotely. 09:00
` The court reporter, Mary Ann 09:00
` Payonk, also will not be in the same 09:00
` room and will swear in the witness 09:00
` remotely. 09:00
` Do all parties stipulate to the 09:00
` validity of this video recording, the 09:00
` swearing in of the witness, and that it 09:00
` will be admissible in the courtroom as 09:00
` if it had been taken following Rule 30 09:00
` of the Federal Rules of Civil Procedures 09:00
` and the state's rules where this case is 09:00
` pending? 09:00
` MR. GALLUZZO: Yes. 09:00
` MR. LIVEDALEN: Yes, I agree for 09:00
` patent owners. 09:00
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` DR. MAHDI SHAHBAKHTI
` MR. GALLUZZO: And agree for 09:01
` petitioners. 09:01
` THE VIDEOGRAPHER: Thank you. 09:01
` This is the start of media labeled 09:01
` number 1 of the remote video-recorded 09:01
` deposition of Dr. Mahdi Shahbakhti in 09:01
` the matter of Bayerische Motoren Werke 09:01
` Aktiengesellschaft and BMW of North 09:01
` America LLC versus Paice LLC, et al. 09:01
` Today is May 6, 2021. The time is 09:01
` 9:01 Mountain Daylight Time, and we're 09:01
` on the record. 09:01
` Will counsel please introduce 09:01
` yourselves. 09:01
` MR. GALLUZZO: Vince Galluzzo from 09:01
` the law firm of Crowell & Moring, and I 09:01
` am here on behalf of petitioners, BMW. 09:01
` With me is my colleague, Scott Bittman. 09:01
` MR. LIVEDALEN: Brian Livedalen 09:01
` from the law firm of Fish & Richardson 09:01
` representing patent owners Paice and 09:01
` Abell and the witness. 09:01
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` DR. MAHDI SHAHBAKHTI
` DR. MAHDI SHAHBAKHTI, 09:01
` called as a witness, having been duly 09:01
` sworn, was examined and testified as 09:01
` follows: 09:01
` EXAMINATION 09:02
` BY MR. GALLUZZO: 09:02
` Q. Good morning, Dr. Shahbakhti. 09:02
` A. Good morning. 09:02
` Q. Could you please state your full name 09:02
` for the record. 09:02
` A. Mahdi Shahbakhti. 09:02
` Q. Have you given a deposition before? 09:02
` A. Yes. 09:02
` Q. Roughly how many times? 09:02
` A. Oh, several times. Do you need the 09:02
` exact number? 09:02
` Q. No, no, that's fine. Have you given 09:02
` a remote deposition before? 09:02
` A. Yes. 09:02
` Q. Okay. So even though you do have 09:02
` some experience with depositions and with 09:02
` remote depositions, I'm still going to go over 09:02
` some of the ground rules, if that's okay. 09:03
` A. Sure. Go ahead, please. 09:03
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` DR. MAHDI SHAHBAKHTI
` Q. So even though we are on a 09:03
` videoconference, you understand that you're 09:03
` giving testimony here today as if we were in 09:03
` court. Correct? 09:03
` A. That is correct. 09:03
` Q. And since we are remote as opposed to 09:03
` in the same room as normal, where are you right 09:03
` now? 09:03
` A. I'm in my office in the basement of 09:03
` my house. 09:03
` Q. And that's where exactly? 09:03
` A. Edmonton, Alberta. 09:03
` Q. Is anyone in the room with you? 09:03
` A. No. 09:03
` Q. Did you bring anything with you to 09:03
` the deposition today? 09:03
` A. No, I don't have anything. 09:03
` Q. What applications do you currently 09:03
` have open on your computer? 09:03
` A. Zoom is open. 09:03
` Q. Can you confirm that Zoom is the only 09:03
` application you have open? 09:03
` A. I have the Internet Explorer, the one 09:03
` that I opened the Zoom. I can close the 09:04
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` DR. MAHDI SHAHBAKHTI
` Internet Explorer if you want and -- 09:04
` Q. If you wouldn't mind, that would be 09:04
` fine. 09:04
` A. Sure. I closed it just now. Other 09:04
` than this, yeah, that's all I have. Nothing 09:04
` other than the things related to the Zoom, 09:04
` that's all. 09:04
` Q. Do you have any other laptops, 09:04
` tablets, or phones with you? 09:04
` A. I don't have any other laptop here. 09:04
` My phone is next to me, but I made it to 09:04
` silent. 09:04
` Q. Just to confirm, you do not plan on 09:04
` using that phone while you testify, right? 09:04
` A. Correct. No, I will not use it. 09:04
` Q. And you understand that you can't be 09:04
` in communication with anyone else while you're 09:04
` testifying. Is that right? 09:04
` A. That is correct. 09:04
` Q. So back to some of the more normal 09:04
` ground rules. If I ask you a question that you 09:04
` don't understand, please do let me know and I 09:04
` will try to clarify. Does that make sense? 09:05
` A. Sure. I appreciate that. 09:05
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` DR. MAHDI SHAHBAKHTI
` Q. And if you do not ask me to clarify, 09:05
` I will assume you understand the question as 09:05
` asked. Is that okay with you? 09:05
` A. I will clarify if I don't understand 09:05
` a question, sure. 09:05
` Q. So if you don't ask me to clarify, 09:05
` can I assume that you understood the question 09:05
` as asked? 09:05
` A. That is fair, sure. 09:05
` Q. If you need to take a break, please 09:05
` let me know. We can take a break any time you 09:05
` would like. The only thing I ask is if there's 09:05
` a question pending that you answer the question 09:05
` before we go on break. Is that fair? 09:05
` A. Yes, that's fair. 09:05
` Q. Is there any reason that you can't 09:05
` give full truthful and accurate testimony here 09:05
` today? 09:05
` A. No. 09:05
` Q. What did you do to prepare for 09:05
` today's deposition? 09:05
` MR. LIVEDALEN: I'd like to caution 09:05
` the witness not to reveal the substance 09:05
` of any attorney-client privileged 09:06
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` DR. MAHDI SHAHBAKHTI
` communications. 09:06
` A. I reviewed my declaration, and then I 09:06
` could also get enough time to briefly look at 09:06
` some of the key patent items. 09:06
` Q. Did you do that on your own? 09:06
` A. I did these on my own. I also had 09:06
` preparation also meeting with the counsel. 09:06
` Q. Mr. Livedalen? 09:06
` A. Yes. 09:06
` Q. Anybody else? 09:06
` A. And also Mr. Tim. I don't know his 09:06
` last name. 09:06
` Q. I believe it's Riffe. 09:06
` A. Yes, that should be correct. 09:06
` MR. LIVEDALEN: Just for the record 09:06
` Tim Riffe is the name. 09:06
` MR. GALLUZZO: Apologies. Tim 09:06
` Riffe. 09:06
` BY MR. GALLUZZO: 09:06
` Q. And when you refer to having reviewed 09:07
` your declaration, did you review just one 09:07
` declaration or was it more than one? 09:07
` A. Just one declaration. 09:07
` (Exhibit No. 2016, previously marked, was 09:07
`
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` DR. MAHDI SHAHBAKHTI
` referenced and indexed.) 09:07
` BY MR. GALLUZZO: 09:07
` Q. And is that the declaration that you 09:07
` submitted as Exhibit 2016 in this case, 09:07
` IPR2020-00994? 09:07
` A. Just to be accurate, not knowing the 09:07
` number, so previously they told me I can have 09:07
` the PDF of the declaration. Should I open it 09:07
` and then see the number? 09:07
` Q. Yeah, so -- well, let's just talk 09:07
` about that. I'm okay with you having a PDF of 09:07
` your declaration. I can also send you a 09:07
` version of your declaration. Which do you 09:07
` prefer? 09:07
` A. I have the PDF of the declaration in 09:07
` a folder. I can open it. 09:07
` Q. Okay. So if you could, open that 09:08
` declaration and state for the record what the 09:08
` exhibit number at the bottom and the case 09:08
` number are so we make sure we're looking at the 09:08
` same thing please. 09:08
` A. Sure. I just opened it. When you 09:08
` said exhibit number, I see says Case 09:08
` IPR2020-00994, Patent 7,104,347. And then on 09:08
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` DR. MAHDI SHAHBAKHTI
` the bottom right corner says PAICE2016. 09:08
` Q. Okay, thank you. 09:08
` A. Yeah. 09:08
` Q. Are there any other PDFs that you 09:08
` plan on accessing or opening during today's 09:08
` deposition? 09:08
` A. I have not put any other PDF in this 09:08
` folder. My understanding was that when you are 09:08
` asking me questions related to the patent, you 09:08
` might share the PDFs through the Zoom link. 09:08
` Q. Yeah. And again, since we are all 09:09
` remote, while I would normally hand you 09:09
` something, I can send you things through Zoom. 09:09
` I will ask that if there is anything that you 09:09
` would like to refer to, please just ask me and 09:09
` I'll send it to you. Likewise, if there's 09:09
` anything else that you open other than this one 09:09
` PDF, I'd ask that you tell me that as well. Is 09:09
` that okay? 09:09
` A. Sure. I will do that. 09:09
` Q. During your preparation with counsel, 09:09
` did counsel show you anything that refreshed 09:09
` your recollection? 09:09
` A. Nothing new. It was pretty much what 09:09
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` DR. MAHDI SHAHBAKHTI
` we had when we prepared the declaration. 09:09
` Q. Did you speak to anyone other than 09:09
` counsel in preparing for today's deposition? 09:09
` A. No. 09:09
` Q. I'd like to talk about your 09:10
` experience a bit. In September 1998 you were 09:10
` in your third year at KNT. Is that right? 09:10
` A. That is correct. 09:10
` Q. So at that point you didn't have a 09:10
` bachelor's of science, right? 09:10
` A. I did not have. 09:10
` Q. In fact, you didn't get your 09:10
` bachelor's degree until two years later in the 09:10
` year 2000? 09:10
` A. That is correct. 09:10
` Q. And in September of 1998 you also 09:10
` didn't have any industry experience. Correct? 09:10
` A. That is correct. 09:10
` Q. Dr. Shahbakhti, if you could pull up 09:10
` that Exhibit 2016, your declaration, for me, 09:10
` I'd like to -- let me know when you're there. 09:10
` A. So Exhibit 2016 is the declaration 09:10
` filed. Is that correct? 09:11
` Q. Yes. That's the same PDF we were 09:11
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` DR. MAHDI SHAHBAKHTI
` referring to earlier. 09:11
` A. Okay, yeah. Yeah, I have it in front 09:11
` of me. 09:11
` Q. Okay. Are all of your opinions in 09:11
` this case in response to BMW's petition set 09:11
` forth in this declaration? 09:11
` A. Yes. 09:11
` Q. If you could turn to paragraph 2 for 09:11
` me, let me know when you're there. 09:11
` A. I'm there. 09:11
` Q. In this paragraph you list out the 09:11
` grounds that you are responding to. Am I 09:11
` correct in stating that you are only responding 09:11
` to grounds 1B, 2B, 3A, 3B, 4B, and 4C of BMW's 09:11
` petition? 09:11
` A. That is correct. 09:11
` Q. So you don't contest BMW's ground 1A, 09:12
` for example, right? 09:12
` A. No, I'm not contesting any other 09:12
` grounds other than those listed here. 09:12
` Q. Okay. Just to confirm so we're all 09:12
` clear, you're not contesting ground 1A, 1C, 2A, 09:12
` 2C, or 4A. Correct? 09:12
` A. That is correct. 09:12
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` DR. MAHDI SHAHBAKHTI
` Q. You also don't contest any of the 09:12
` arguments that BMW makes in those five grounds. 09:12
` Is that right? 09:12
` A. That is correct. 09:12
` Q. So, for example, you do not contest 09:12
` whether a person of skill in the art would have 09:12
` been motivated to modify the one-motor hybrid 09:12
` vehicle of Severinsky '970 to include a second 09:12
` motor such as disclosed in Ehsani. Is that 09:12
` right? 09:12
` A. I did not form any opinions on those 09:12
` topics. 09:13
` Q. Now let's talk about the opinions 09:13
` that you did form. And I'd like to talk 09:13
` structurally about the way you presented them. 09:13
` Specifically, you combine your analysis or your 09:13
` opinions on grounds 1B and 2B. Is that right? 09:13
` A. Correct, yeah. So when I was trying 09:13
` to address the grounds 1B and 2B, then that was 09:13
` referring to the Claims 33 and 11. Then for 09:13
` that I look at the materials that were relevant 09:13
` to those claims. 09:13
` Q. And you don't provide a substantively 09:13
` different opinion on ground 2B than you do on 09:13
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` DR. MAHDI SHAHBAKHTI
` ground 1B. Is that right? 09:13
` A. That is correct. 09:13
` Q. The same is true also for grounds 3A 09:14
` and 3B. Is that right? 09:14
` A. That is correct. 09:14
` Q. And also, your opinions relating to 09:14
` ground 4B are not substantively different than 09:14
` your opinions relating to grounds 1B and 2B. 09:14
` Is that right? 09:14
` A. There were also some other paragraphs 09:14
` that I also added in addition. So if you look 09:14
` at the declaration on page 114, there are also 09:14
` a couple of other paragraphs that I added. 09:14
` Q. You will agree with me, though, that 09:15
` your opinions related to ground 4B on pages 114 09:15
` to 117 refer back a number of times to your 09:15
` Section VII(a). Correct? 09:15
` A. That is correct. 09:15
` Q. So does that mean your opinions on 09:15
` ground 4B rely at least in substantial part on 09:15
` your opinions related to grounds 1B and 2B? 09:15
` A. That is correct. 09:16
` Q. And while we're at the back of the 09:16
` declaration, if you could just flip to page 128 09:16
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` DR. MAHDI SHAHBAKHTI
` for me. It's the signature page. 09:16
` A. I am there. 09:16
` Q. And just can you confirm for me that 09:16
` that is your signature that you applied on 09:16
` February 11 of this year? 09:16
` A. Yes, I confirm it. 09:16
` Q. Let's talk about claim construction 09:16
` in this case. You're not opining on the 09:16
` construction of any claim term, are you? 09:16
` A. Not in this declaration. 09:16
` Q. In this case, IPR2020-00994, you're 09:17
` not opining on the construction of any claim 09:17
` term, are you? 09:17
` A. No. I used the declaration -- I used 09:17
` the claim -- what is that correct word? Let's 09:17
` see. I used the claim construction that is 09:17
` included in the table on page 34. 09:17
` Q. Just to confirm, when I originally 09:17
` asked you about whether you were opining on 09:18
` claim construction, I asked about this case, 09:18
` and you responded "not in the declaration." 09:18
` Are you drawing a distinction between this case 09:18
` and your declaration? 09:18
` A. No. So the claim construction, I use 09:18
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` DR. MAHDI SHAHBAKHTI
` the one that board has utilized. And those are 09:18
` reflected in the table on page 34. 09:18
` Q. So just to confirm, you're not 09:18
` opining that those constructions should be 09:18
` changed or supplemented in any way, right? 09:18
` A. No, I did not propose any of that. 09:18
` Q. Looking at your table on page 34 of 09:18
` the claim constructions, I'd like to focus on 09:18
` the last one, monitoring patterns of vehicle 09:18
` operation over time. 09:18
` Do you see that claim term? 09:18
` A. Yes, I see the term. 09:18
` Q. And the board's construction next to 09:18
` it is monitoring a driver's repeated driving 09:18
` operations over time. 09:19
` Do you see that? 09:19
` A. Yes, I see that. 09:19
` Q. You'd agree with me that the board's 09:19
` construction of monitoring patterns of vehicle 09:19
` operation over time does not specify an amount 09:19
` of time to be considered over time, right? 09:19
` A. It does not mention the amount of the 09:19
` time. It just uses the term "over time." 09:19
` Q. So it could be two weeks? 09:19
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` DR. MAHDI SHAHBAKHTI
` A. In this term, because the time is not 09:19
` specified, it can be a day, it can be a week, 09:19
` it can be a month. 09:19
` Q. Could it be a second? 09:19
` MR. LIVEDALEN: Objection, 09:20
` incomplete hypothetical. 09:20
` A. Considering the dynamics that we have 09:20
` in the vehicles and the driving, it's hard to 09:20
` accept like a one second. But everything need 09:20
` to be put into the context of what claims in 09:20
` what context of the patent that we are exactly 09:20
` talking about. 09:20
` Q. So the phrase "over time," you agree 09:20
` with me that it doesn't specify the amount of 09:20
` time necessary. Are you saying now that there 09:20
` is some minimum amount of time necessary to 09:20
` qualify? 09:20
` MR. LIVEDALEN: Objection, 09:21
` misstates previous testimony. 09:21
` A. As I mentioned earlier in here, the 09:21
` word "time" has not been specified. But that 09:21
` is my understanding, that when we are looking 09:21
` at the term, it needs to be put into the 09:21
` context of the -- what claim or what part of 09:21
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` DR. MAHDI SHAHBAKHTI
` the patents you are talking about. Then the 09:21
` term "time" will become more clear. 09:21
` Q. And is there a context that you would 09:21
` put it in that would make it not satisfied by a 09:21
` one-second period of time? 09:21
` A. It needs to be specific and then 09:21
` going to exactly the context of the patent, and 09:21
` then which claim is specifically. And then a 09:21
` person of ordinary skill in the art is going to 09:21
` look at it, that context, and to see if pattern 09:21
` for that specific item will make sense or not. 09:22
` Q. Are you proposing that "over time" be 09:22
` construed to mean a certain period of time, 09:22
` such that there are upper or lower limits on 09:22
` it? 09:22
` MR. LIVEDALEN: Objection, 09:22
` misstates previous testimony, to the 09:22
` extent it calls for a legal conclusion. 09:22
` A. I'm not. What all I'm saying is that 09:22
` the term need to be put into the context of the 09:22
` claim, and then the context of the patent that 09:22
` we are talking, and then we interpret it at 09:22
` that situation. 09:22
` Q. Okay. So let's flip to -- do you 09:22
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` DR. MAHDI SHAHBAKHTI
` have the '347 patent with you or do you need me 09:22
` to send that to you? 09:22
` A. Please send it to me. 09:22
` Q. Okay. I've sent it to you in the 09:23
` chat function. Let me know when you've 09:23
` received it and had a chance to review. 09:23
` A. Sure. I received it. I'm just 09:23
` downloading it now. And I have it now open in 09:23
` front of myself. 09:23
` MR. GALLUZZO: Okay. If you could 09:23
` flip to Claim 2 of the '347 patent. For 09:23
` the record, this is Exhibit 1001. 09:23
` (Exhibit No. 1001, previously marked, was 09:23
` referenced and indexed.) 09:23
` THE WITNESS: I am there, Claim 2. 09:24
` BY MR. GALLUZZO: 09:24
` Q. Claim 2 states "the vehicle of 09:24
` Claim 1 wherein said controller monitors 09:24
` patterns of vehicle operation over time and 09:24
` varies said setpoint SP accordingly." 09:24
` Did I read that correctly? 09:24
` A. Yes. 09:24
` Q. And the phrase that we were 09:24
` discussing in the board's construction appears 09:24
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` DR. MAHDI SHAHBAKHTI
` in this Claim 2. Is that right? 09:24
` A. That is correct. 09:24
` Q. Now, in the context of Claim 2 in the 09:24
` context of the board's construction, can the 09:25
`
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