·1· · · · · · · · · ·Dr. M. Shahbakhti
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`·2· · ·UNITED STATES PATENT AND TRADEMARK OFFICE
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`Page 1
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`·3· · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`·4· ·BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT & BMW OF
`· · ·NORTH AMERICA, LLC,
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`· · · · · · · · · · Petitioner,· · ·Case No. IPR2020-01299
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`· · · · · · · · vs.· · · · · · · · ·Patent No. 8,630-761
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`· · ·PAICE LLC & THE ABELL FOUNDATION, INC.,
`·8
`· · · · · · · · · · Patent Owner.
`·9· ·------------------------------------------------------x
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`16· · · · · REMOTE VIDEOTAPED DEPOSITION OF
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`17· · · · · · · · DR. MAHDI SHAHBAKHTI
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`18· · · · · · · · ·New York, New York
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`19· · · · · · · Thursday, June 17, 2021
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`23· ·Reported by:
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`24· ·THOMAS A. FERNICOLA, RPR
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`25· ·JOB NO. 195008
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`BMW v. Paice, IPR2020-01386
`BMW1103
`Page 1 of 49
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`·1· · · · · · · · ·Dr. M. Shahbakhti
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`·1· · · · · · · · · ·Dr. M. Shahbakhti
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`·2· ·A P P E A R A N C E S
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`·3· ·(All Attendees Appearing Via Videoconference and/or
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`·4· ·Telephonically):
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`·5· · · · · · Thursday, June 17, 2021
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`·6· · · · · · · · · ·9:00 a.m.
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`·6· ·ON BEHALF OF PETITIONER:
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`·7· · · · · · BY: SCOTT BITTMAN, ESQ.
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`·8· · · · · · CROWELL & MORING
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`·9· · · · · · REMOTE VIDEOTAPED DEPOSITION of DR. MAHDI
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`·9· · · · · · 1001 Pennsylvania Avenue NW
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`10· ·SHAHBAKHTI, held before Thomas A. Fernicola, a
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`10· · · · · · Washington, DC 20004
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`11· ·Registered Professional Reporter and Notary Public of
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`12· ·the State of New York.
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`13· ·ON BEHALF OF PATENT OWNER and THE WITNESS:
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`14· · · · · · BY: BRIAN LIVEDALEN, ESQ.
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`15· · · · · · FISH & RICHARDSON
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`16· · · · · · 1000 Maine Avenue, SW
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`17· · · · · · Washington, DC 20004
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`22· ·ALSO PRESENT:
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`23· · · · · · · RODOLFO DURAN, Videographer.
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`·1· · · · · · ·Dr. M. Shahbakhti
`·2· · · · ·THE VIDEOGRAPHER:· Good morning,
`·3· ·Counselors.· My name is Rodolfo Duran.
`·4· ·I am the legal videographer in
`·5· ·association with TSG Reporting, Inc.
`·6· · · · ·Due to the severity of the
`·7· ·COVID-19 pandemic and following the
`·8· ·practice of social distancing, I will
`·9· ·not be in the same room as the witness.
`10· ·Instead, I will be recording this
`11· ·videotaped deposition remotely.
`12· · · · ·The reporter, Tom Fernicola, also
`13· ·will not be in the same room and will
`14· ·swear the witness remotely.
`15· · · · ·Do all parties stipulate to the
`16· ·validity of this video recording and
`17· ·remote swearing, and that it will be
`18· ·admissible in the courtroom following
`19· ·Rule 30 of the Federal Rules of Civil
`20· ·Procedures and the state's rules where
`21· ·this case is pending?
`22· · · · ·MR. BITTMAN:· Yes, agreed for
`23· ·Petitioner.
`24· · · · ·MR. LIVEDALEN:· Agreed for Patent
`25· ·Owners.
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`·1· · · · · · ·Dr. M. Shahbakhti
`·2· · · · ·THE VIDEOGRAPHER:· This is the
`·3· ·start of Media Labeled No. 1 of the
`·4· ·remote Video Recorded Deposition of Dr.
`·5· ·Mahdi Shahbakhti, in the matter of
`·6· ·Bayerische Motoren Werke
`·7· ·Aktiengesellschaft and BMW of North
`·8· ·America, LLC, versus Paice, et al.
`·9· · · · ·Today is June 17, 2021.· The time
`10· ·is 9:06 a.m. Mountain Daylight Time, and
`11· ·we're on the record.
`12· · · · ·Will counsel please introduce
`13· ·yourselves.
`14· · · · ·MR. BITTMAN:· This is Scott
`15· ·Bittman for Crowell & Moring for
`16· ·Petitioner BMW.
`17· · · · ·MR. LIVEDALEN:· Brian Livedalen
`18· ·from Fish & Richardson representing
`19· ·Patent Owners.
`20· · · · ·THE VIDEOGRAPHER:· Will the court
`21· ·reporter please swear in or affirm the
`22· ·witness.
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`BMW v. Paice, IPR2020-01386
`BMW1103
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`Page 7
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`·1· · · · · · · · · ·Dr. M. Shahbakhti
`·2· ·DR. MAHDI SHAHBAKHTI,
`·3· ·called as a witness, having been duly sworn by a
`·4· ·Notary Public, was examined and testified as
`·5· ·follows:
`·6· ·BY THE REPORTER:
`·7· · · · ·Q· · ·Please state your full name and
`·8· · ·address for the record.
`·9· · · · ·A· · ·Mahdi Shahbakhti.
`10· ·BY MR. BITTMAN:
`11· · · · ·Q· · ·Good morning, Dr. Shahbakhti.
`12· · · · ·A· · ·Good morning.
`13· · · · · · · ·MR. BITTMAN:· Just because I think
`14· · · · ·this was missed in the opening remarks
`15· · · · ·for the record, this is for Case No.
`16· · · · ·IPR2020-1299, which is directed towards
`17· · · · ·Patent No. 8,630-761.
`18· · · · ·Q· · ·Is that consistent with your
`19· · ·understanding, Dr. Shahbakhti?
`20· · · · ·A· · ·Yes.· I don't memorize all the
`21· · ·numbers so that's why I don't exactly if it
`22· · ·was.· But I assume yes.
`23· · · · ·Q· · ·I know you've given your
`24· · ·deposition before, including remote ones in
`25· · ·a related matter to this case, but I just
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·want to go over some ground rules, just to
`·3· ·make sure we're on the same page, if that's
`·4· ·okay with you?
`·5· · · ·A· · ·Yes, go ahead, please.
`·6· · · ·Q· · ·Even though we are on a video
`·7· ·conference, you're giving testimony today as
`·8· ·if we were in court.
`·9· · · · · · ·Do you understand that?
`10· · · ·A· · ·Yes, I do.
`11· · · ·Q· · ·Since we are remote, can you let
`12· ·us know where you are?
`13· · · ·A· · ·I'm in my office located in
`14· ·Edmonton, Alberta, Canada.
`15· · · ·Q· · ·Is anyone in the room with you?
`16· · · ·A· · ·No.
`17· · · ·Q· · ·Did you bring anything with you to
`18· ·the deposition today?
`19· · · ·A· · ·No, I did not bring anything.
`20· · · ·Q· · ·Aside from a laptop or computer
`21· ·that you're currently using, do you have any
`22· ·other laptops, tablets, or phones with you?
`23· · · ·A· · ·No.· This is the only laptop in
`24· ·this room.
`25· · · ·Q· · ·Okay.
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · · · · ·And you understand that you cannot
`·3· ·be in communication with anyone else while
`·4· ·you are testifying; is that right?
`·5· · · ·A· · ·Yes, I do.
`·6· · · ·Q· · ·If I ask you a question that you
`·7· ·do not understand, please let me know, and
`·8· ·I'll do my best to clarify.
`·9· · · · · · ·Okay?
`10· · · ·A· · ·Sure, I will do.
`11· · · ·Q· · ·If you do not ask me to clarify, I
`12· ·will assume that you understood the question
`13· ·as asked.· Okay?
`14· · · ·A· · ·I will ask a question if I don't
`15· ·understand the question.
`16· · · ·Q· · ·If you need to take a break,
`17· ·please let me know.· I'll just ask that if
`18· ·there's a question pending, please answer
`19· ·the question, and then we will take a break.
`20· · · · · · ·Okay?
`21· · · ·A· · ·Sure, will do.
`22· · · ·Q· · ·Is there any reason why you cannot
`23· ·give your full, truthful, and accurate
`24· ·testimony today?
`25· · · ·A· · ·No.
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · ·Q· · ·Do you have a copy of your
`·3· ·declaration for this IPR with you?
`·4· · · ·A· · ·I do have.
`·5· · · ·Q· · ·Just for the record, can you
`·6· ·confirm just on the cover page which IPR it
`·7· ·is and what patent number it refers to, just
`·8· ·to make sure we're all looking at the same
`·9· ·document?
`10· · · ·A· · ·Case IPR 2020-01299, Patent
`11· ·8,630,761.
`12· · · ·Q· · ·If we referred to '761 Patent
`13· ·today, you'll understand that we'll be
`14· ·referring to Patent No. 8,630,761; is that
`15· ·okay?
`16· · · ·A· · ·Sure.
`17· · · ·Q· · ·Turning to page 93, can you
`18· ·confirm that that's your signature?
`19· · · ·A· · ·It is.
`20· · · ·Q· · ·Did you write this declaration?
`21· · · ·A· · ·Counsel prepared it for me, and I
`22· ·go and I modified it, and then at the end it
`23· ·is representing my own ideas.
`24· · · ·Q· · ·Do you recall how much time you
`25· ·spent working on your declaration?
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`BMW v. Paice, IPR2020-01386
`BMW1103
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · ·A· · ·Because this IPR and the previous
`·3· ·IPR, they were kind of related.· Then when I
`·4· ·looked at the numbers for these two IPRs
`·5· ·together, I have to spend more than 100
`·6· ·hours to prepare these two declarations.
`·7· · · ·Q· · ·I believe you've actually prepared
`·8· ·three declarations; is that correct?
`·9· · · ·A· · ·The time I told you doesn't
`10· ·include the third one.
`11· · · ·Q· · ·I see, okay.· Thank you.
`12· · · · · · ·You said more than -- I'm sorry,
`13· ·go ahead.· Were you finished answering?
`14· · · ·A· · ·No, I just said "you're welcome."
`15· · · ·Q· · ·Okay.
`16· · · · · · ·So you said more than 100, is that
`17· ·the best estimate?· Was it less than 150,
`18· ·for example?
`19· · · ·A· · ·It should be less than 150 hours
`20· ·for the time I put together for preparing
`21· ·the first declaration and this declaration
`22· ·together, so between 100 and 150 hours.
`23· · · ·Q· · ·What did you do to prepare for
`24· ·today's deposition?
`25· · · · · · ·MR. LIVEDALEN:· I have to counsel
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · ·the witness not to reveal the substance
`·3· · · ·of any privileged communications.
`·4· · · ·A· · ·So I looked at my declaration that
`·5· ·goes through the parts to review my
`·6· ·opinions, and then look at the supporting
`·7· ·documents, to the extent that my time
`·8· ·allows, and I also met with the counsel in
`·9· ·preparation for this meeting.
`10· · · ·Q· · ·You met with Counsel Brian
`11· ·Livedalen, is that right, or was there
`12· ·anyone else?
`13· · · ·A· · ·No, it was only Brian Livedalen.
`14· · · ·Q· · ·Did Counsel tell you or show you
`15· ·anything that refreshed your recollection
`16· ·about some of the subject matter in your
`17· ·declaration?
`18· · · ·A· · ·No, it was mainly related to the
`19· ·declarations, the items that we have in the
`20· ·declaration.
`21· · · ·Q· · ·Have you spoken to anyone other
`22· ·than counsel about either your declaration
`23· ·preparation or preparing for today's
`24· ·deposition?
`25· · · ·A· · ·No.
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · ·Q· · ·Are all the opinions in response
`·3· ·to BMW's petitions set forth in this
`·4· ·declaration?
`·5· · · ·A· · ·These are my opinions in regard to
`·6· ·the specific claims on the basis of the two
`·7· ·grounds and also in response to Dr. Davis'
`·8· ·declaration.
`·9· · · ·Q· · ·Have any of your opinions changed
`10· ·since you submitted your declaration?
`11· · · ·A· · ·No.
`12· · · ·Q· · ·I just want to ask you a question
`13· ·about some of your background.
`14· · · · · · ·I notice that you describe
`15· ·qualifications and experience starting on
`16· ·page 6.
`17· · · · · · ·Have you ever done any research on
`18· ·increasing the efficiency of energy systems
`19· ·through utilization of advanced control
`20· ·techniques focusing on the transportation
`21· ·and building sectors?
`22· · · ·A· · ·So my research is related to the
`23· ·topic that you just mentioned trying to
`24· ·utilize the controls and understanding of
`25· ·the systems and the design of the system in
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·order to improve the efficiency of the
`·3· ·systems, and all systems could be vehicles
`·4· ·that are used in transportation systems, and
`·5· ·also can be a system that is being used in
`·6· ·the buildings.
`·7· · · ·Q· · ·Why is increasing the efficiency
`·8· ·of energy systems important?
`·9· · · ·A· · ·Because we are talking in the
`10· ·context of the energy, so improving the
`11· ·efficiency will save energy; and then that's
`12· ·important because resources for energy is
`13· ·limited, so then we are trying to save the
`14· ·energy resources.
`15· · · ·Q· · ·Has the increasing of efficiency
`16· ·of systems been an industry need for a long
`17· ·time?
`18· · · ·A· · ·What specific industry are you
`19· ·speaking about?
`20· · · ·Q· · ·Let's go with automotive.
`21· · · ·A· · ·The efficiency of improving the
`22· ·efficiency of the vehicles has been the goal
`23· ·in automotive industry, I would say, very
`24· ·much from the beginning.
`25· · · ·Q· · ·How about fuel economy?
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`BMW v. Paice, IPR2020-01386
`BMW1103
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · · · · ·First of all, has that ever been
`·3· ·part of your research?
`·4· · · ·A· · ·So when we talk in the context of
`·5· ·vehicle to improve energy efficiency for the
`·6· ·vehicles that they run with IC engines, so
`·7· ·we are talking about saving fuel, and saving
`·8· ·fuel is directly linked to fuel economy.
`·9· · · ·Q· · ·And then has that been an industry
`10· ·goal for a long time?
`11· · · ·A· · ·When it comes to the industry,
`12· ·there are different objectives that they
`13· ·will pursue.· For example, sometimes the
`14· ·emission regulations become an important
`15· ·factor, so then it will become many times
`16· ·the compromise.
`17· · · · · · ·So for some cases, that industry
`18· ·might try to suffice fuel economy in order
`19· ·to make sure that it is meeting the emission
`20· ·regulations.
`21· · · · · · ·But on a very high level and the
`22· ·general picture, the industry will always
`23· ·try to improve fuel economy while meeting
`24· ·the constraints, the legislative constraints
`25· ·that is imposed on the vehicles.
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · ·Q· · ·When did you first become aware of
`·3· ·the Paice patents?
`·4· · · ·A· · ·Basically when the company door
`·5· ·[ph] who hired me for this case sent me
`·6· ·these patents.
`·7· · · ·Q· · ·In paragraph 10 of your
`·8· ·declaration, you refer to performing
`·9· ·controls-related research sponsored by
`10· ·various automotive companies such as Ford
`11· ·Motor Company, Toyota Motor Corporation,
`12· ·General Motors Corporation, Hitachi, and
`13· ·Denso.
`14· · · · · · ·Do you see that?
`15· · · ·A· · ·Yes, I see that.
`16· · · ·Q· · ·Have any of those companies ever
`17· ·asked you to look at Paice's patents?
`18· · · ·A· · ·No.
`19· · · ·Q· · ·Are you aware of any of those
`20· ·companies ever challenging Paice's patents?
`21· · · ·A· · ·When I was reading basically the
`22· ·documents for this, I noticed the name of
`23· ·Ford was there, too.· But before this IPR, I
`24· ·didn't know about this patent.· And I also
`25· ·didn't know the involvement of any other
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·companies in that patent.
`·3· · · ·Q· · ·Do you recall whether you've
`·4· ·reviewed any of the IPRs filed on Paice's
`·5· ·patents by any of those companies?
`·6· · · ·A· · ·I even didn't know the company
`·7· ·Paice before the IPR.· I did not know even
`·8· ·the company, there is a company called Paice
`·9· ·exists.
`10· · · ·Q· · ·I guess since you started work on
`11· ·these various IPRs, have you reviewed any
`12· ·IPRs filed by any of those companies?
`13· · · ·A· · ·No.· Currently, the only IPRs that
`14· ·I'm working on are the ones with Paice.· And
`15· ·then I had -- one IPR got finished in 2020.
`16· ·That was not for these companies, but then
`17· ·when that one finished, I started with this
`18· ·IPR.· And this is the only IPRs I'm working
`19· ·on now.
`20· · · ·Q· · ·I understand.
`21· · · · · · ·I'm just wondering if you've,
`22· ·during your review, considered the materials
`23· ·that were submitted by any of those other
`24· ·companies for other IPRs?
`25· · · ·A· · ·No, none.
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · ·Q· · ·Can you tell me what your
`·3· ·understanding is of what the obviousness
`·4· ·inquiry requires for combining prior art
`·5· ·references?
`·6· · · · · · ·MR. LIVEDALEN:· Objection to the
`·7· · · ·extent it calls for a legal conclusion.
`·8· · · ·Q· · ·Dr. Shahbakhti, I'll just try
`·9· ·again, because it's taking, I guess, a few
`10· ·minutes while you've considered the
`11· ·question.· Maybe I should just start with
`12· ·the question of -- okay, I'll let you
`13· ·answer.· Go ahead.
`14· · · ·A· · ·If you look at my declaration
`15· ·paragraphs 24 to 28, those explain what I
`16· ·have considered for the obviousness.
`17· · · · · · ·Looking at the paragraph 27, it
`18· ·includes a good summary for the factors that
`19· ·I have considered to decide if the topic is
`20· ·obvious or not.· One of them is the scope
`21· ·and the content of the prior art; No. 2, the
`22· ·differences between the claims and the prior
`23· ·art; 3, the level of orders built in the
`24· ·pertaining art; and then 4, any objective
`25· ·indicia of the nonobviousness, such as
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`BMW v. Paice, IPR2020-01386
`BMW1103
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·commercial success -- unresolved need,
`·3· ·failure for others, industrial recognition,
`·4· ·copying, and unexpected results.
`·5· · · · · · ·And I should also add that one
`·6· ·important sentence from my paragraph 26 that
`·7· ·I mentioned that I'm informed by counsel for
`·8· ·the patent owner and understand that it's
`·9· ·improper to use insight in an obviousness
`10· ·analysis, and that patent claims should not
`11· ·be used as a roadmap.
`12· · · · · · ·So these paragraph, and
`13· ·specifically these two items that I
`14· ·mentioned, reflect the way I used it in
`15· ·order to come up with obviousness analysis.
`16· · · ·Q· · ·Well, so in your declaration, you
`17· ·have some opinions that sort of references
`18· ·would not be combined with each other; is
`19· ·that correct?
`20· · · ·A· · ·For instance, if you look at my
`21· ·declaration, like Section 4 of Part A, I'm
`22· ·talking about why a person of ordinary skill
`23· ·in the art would not combine Severnisky and
`24· ·Quigley's patent.· So this is an example
`25· ·that you will not combine them.
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · ·Q· · ·Right, yes, okay.
`·3· · · · · · ·Just to be clear, so the factors
`·4· ·that you just described in your last answer,
`·5· ·you referred to paragraphs 26 or 27, that is
`·6· ·what you -- am I correct in saying that's
`·7· ·what you considered when making that
`·8· ·analysis?
`·9· · · ·A· · ·Yes, I used those items that I
`10· ·mentioned.· This is part of my declaration
`11· ·in order to do obviousness analysis.
`12· · · ·Q· · ·So when looking at references,
`13· ·what is your understanding of, I guess, when
`14· ·elements from different prior art references
`15· ·cannot properly be combined?
`16· · · ·A· · ·I believe my previous answer
`17· ·already answered that question, right,
`18· ·because when I mentioned those factors -- so
`19· ·when those factors are not there, that means
`20· ·you cannot consider obvious.· You don't want
`21· ·me to repeat those items?
`22· · · ·Q· · ·No, it's okay.· If you're just
`23· ·referring back to that answer, we have those
`24· ·written down, so that's okay.
`25· · · · · · ·If we could, turn to the '761
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·patent itself.
`·3· · · · · · ·First of all, do you have a copy
`·4· ·of that?
`·5· · · ·A· · ·I only kept here my declaration.
`·6· ·But if you don't mind, maybe send it through
`·7· ·Zoom.
`·8· · · ·Q· · ·Yes, I will do that.
`·9· · · · · · ·MR. BITTMAN:· For the record, this
`10· · · ·has been a previously marked exhibit,
`11· · · ·BMW 1001.
`12· · · ·Q· · ·And let me send that to you.· Let
`13· ·me know when you have received it.
`14· · · ·A· · ·It hasn't arrived yet.· It is
`15· ·usually fast.· I don't know why it's not in
`16· ·chat.
`17· · · · · · ·MR. LIVEDALEN:· Brian, do you see
`18· · · ·it in your chat, or has it not made it
`19· · · ·over to you?
`20· · · · · · ·MR. BITTMAN:· I don't see it
`21· · · ·either.
`22· · · ·Q· · ·Do you see it now?
`23· · · ·A· · ·Yes.
`24· · · ·Q· · ·Let me know when you're ready.
`25· · · ·A· · ·Sure, it's downloading.· Now I
`
`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·have Patent '761 open.
`·3· · · ·Q· · ·At a high level, what is your
`·4· ·understanding of the invention claimed in
`·5· ·the '761 patent?
`·6· · · ·A· · ·At the high level, I considered
`·7· ·the Patent '761 is talking about a specific
`·8· ·type of hybrid electric vehicle.
`·9· · · · · · ·And then in this patent, what it
`10· ·does, it mentioned different strategies; and
`11· ·it aims to improve the performance of the
`12· ·hybrid electric vehicle and, specifically,
`13· ·the patent of hybrid electric vehicles.
`14· · · ·Q· · ·That is your understanding of what
`15· ·the claimed invention of the '761 Patent is?
`16· · · ·A· · ·You are asking me at a very high
`17· ·level, so to go specific, it's talking about
`18· ·using the near-term pattern of the vehicle
`19· ·operation, and then how to utilize them.
`20· · · · · · ·In order to improve the basic
`21· ·performance, it has three elements:· It
`22· ·monitors, derives, and then predicts, and
`23· ·then controls based on the near-term
`24· ·predictive pattern of the vehicle operation.
`25· · · ·Q· · ·Based on that answer, I guess, in
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·your view -- let me start again.
`·3· · · · · · ·So, in your view, is any aspect in
`·4· ·what you've just recited the key inventive
`·5· ·feature claimed, or would you say all of
`·6· ·that is what is the inventive feature?
`·7· · · · · · ·MR. LIVEDALEN:· Objection.
`·8· · · ·Compound.
`·9· · · ·A· · ·I would say that it should all
`10· ·need to be taken into account together; that
`11· ·it's talking from that hybrid electric
`12· ·vehicle, that is cost, and then specifically
`13· ·going to the claim language that has been
`14· ·used.
`15· · · ·Q· · ·As far as, I guess, the other
`16· ·portions of the claims, you're not
`17· ·contending that there's anything new or
`18· ·inventive in those aspects; is that right?
`19· · · ·A· · ·Can you be specific?· What do you
`20· ·mean by "other portions of the claim"?
`21· · · ·Q· · ·I guess if you could turn to
`22· ·Claim 1, for example, I believe the features
`23· ·that you recited are located in the section
`24· ·starting with the "wherein clause" and the
`25· ·"controls operation clause."· And you could
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·confirm that or not.
`·3· · · ·A· · ·To be accurate, I'm reading based
`·4· ·on the portion of the claim that you are
`·5· ·referring to.
`·6· · · · · · ·We're talking about Claim 1, and
`·7· ·therein, said controller derives a
`·8· ·predictive near-term pattern of operation of
`·9· ·said hybrid vehicle by monitoring operation
`10· ·of said hybrid vehicle and controls
`11· ·operation of said at least one traction
`12· ·motor, and said internal combustion engine
`13· ·for propulsion of said hybrid vehicle
`14· ·responsive to said derive near-term
`15· ·predictive pattern of operation of said
`16· ·hybrid vehicle.
`17· · · · · · ·But as I mentioned before, it
`18· ·needs to be taken into account, because we
`19· ·see there's an "and" between what I read and
`20· ·the previous parts of the claim.
`21· · · ·Q· · ·But are you contending that
`22· ·there's anything new in those earlier
`23· ·limitations, which, again, starting with
`24· ·"storing and supplying electrical power from
`25· ·a battery bank, applying torque to road
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·wheels of said hybrid vehicle from one or
`·3· ·both of an internal combustion engine, and
`·4· ·at least one traction motor, and controlling
`·5· ·flow of torque between said internal
`·6· ·combustion engine so at least one traction
`·7· ·motor and said road wheels and controlling
`·8· ·flow of electric power between said battery
`·9· ·bank into at least one traction motor
`10· ·employing a controller?
`11· · · ·A· · ·So the ones you just read is more
`12· ·referring to the architecture of that
`13· ·system.· And that architecture of that
`14· ·system, the one we just discussed, don't
`15· ·expect that to be new.
`16· · · · · · ·The part that it's building upon,
`17· ·the one we mentioned -- because now we're
`18· ·talking about the items that we discussed
`19· ·earlier related to the pattern, that is
`20· ·linked with that architecture which is
`21· ·describing a parallel hybrid architecture.
`22· · · ·Q· · ·If you could turn back to your
`23· ·declaration for a moment, paragraph 2 --
`24· · · ·A· · ·Yes, I'm seeing paragraph 2.
`25· · · ·Q· · ·-- so in that paragraph, you state
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·that you were asked to analyze arguments
`·3· ·related to Grounds 1 and 2; is that right?
`·4· · · ·A· · ·That is correct.
`·5· · · ·Q· · ·Does that mean you did not analyze
`·6· ·Ground 3?
`·7· · · ·A· · ·No, it means 1 all the way to 12.
`·8· · · ·Q· · ·Just, I guess, stepping back, you
`·9· ·may recall that the petition and Dr. Davis'
`10· ·declaration also had a third ground which
`11· ·composed of Severnisky and Graf.
`12· · · · · · ·I just want to confirm with you
`13· ·that you're not offering any opinions in
`14· ·this declaration on that ground?
`15· · · ·A· · ·I'm not offering any opinion on
`16· ·the ground you just mentioned.
`17· · · ·Q· · ·I guess, did you skip over that
`18· ·portion of Dr. Davis' declaration?
`19· · · ·A· · ·Yes, because I was asked by the
`20· ·counsel to focus more on the ones that they
`21· ·are looking for.
`22· · · · · · ·But even if you look at what we
`23· ·discussed here, when we talk about the road
`24· ·load, the items in my declaration, that's
`25· ·more related to the -- I believe that's
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·Claim 4, for example, when we talk about
`·3· ·road load.· So 1-12 means 1 to 12.
`·4· · · ·Q· · ·Right, okay.
`·5· · · · · · ·If you could turn to page 94 of
`·6· ·your declaration -- this is Exhibit A, it's
`·7· ·entitled "materials considered."· I guess it
`·8· ·spans from pages 94 to 95.
`·9· · · · · · ·Let me know when you're there.
`10· · · ·A· · ·Yes, I'm there.
`11· · · ·Q· · ·So does this Exhibit A constitute
`12· ·all of the materials you've considered in
`13· ·connection with your work on your
`14· ·declaration in this matter?
`15· · · ·A· · ·So the way I did it, I look at
`16· ·Dr. Davis' declaration, the ones that was
`17· ·related to those grounds.· And when I see
`18· ·these ones are cited, then I went and I look
`19· ·at these documents in connection with
`20· ·Dr. Davis' declaration.
`21· · · · · · ·I did not go into reading every
`22· ·single page of some of these documents that
`23· ·are very long documents.· I mostly focused
`24· ·at what Dr. Davis is relying upon, and I
`25· ·went and I checked those pages.
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · ·Q· · ·But if an exhibit is not listed
`·3· ·here, can we assume that you did not review
`·4· ·or consider it as part of this case?
`·5· · · ·A· · ·That is my understanding, yes,
`·6· ·that if I don't list it here, then unless
`·7· ·there is a mistake -- but if it's not listed
`·8· ·here, then I should have not used it.
`·9· · · ·Q· · ·Just, you know, one exhibit on the
`10· ·list that I noticed is not there is Exhibit
`11· ·BMW 1052, which for the record, is the file
`12· ·history of the '761 patent.
`13· · · · · · ·Can we confirm, since it was not
`14· ·included in this Exhibit A, you did not
`15· ·review or consider that as part of this
`16· ·case?
`17· · · ·A· · ·What you just mentioned -- because
`18· ·the history of the patents is also reflected
`19· ·in Dr. Davis' declaration and also as part
`20· ·of the judge's institution decision -- so I
`21· ·remember I looked at it briefly but not
`22· ·going too much spending on the details.
`23· · · · · · ·But what you just mentioned,
`24· ·because it's also mentioned in, like, the
`25· ·judge's decisions and that response.· So I
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·looked at it briefly, but I did not go
`·3· ·through the very details of it.
`·4· · · ·Q· · ·I don't believe that you've cited
`·5· ·to the file history anywhere in your
`·6· ·declaration.
`·7· · · · · · ·So based on that, is it fair to
`·8· ·say that you do not have any opinions
`·9· ·concerning the file history?
`10· · · ·A· · ·Since I did not look at them into
`11· ·the details, no, I did not provide any
`12· ·opinion on the history.
`13· · · ·Q· · ·Turning back to that Exhibit A, I
`14· ·don't see Exhibit 2034 listed, which, for
`15· ·the record, was Dr. Davis' deposition
`16· ·transcript.
`17· · · · · · ·Again, can we confirm that you did
`18· ·not consider that document in connection
`19· ·with your declaration?
`20· · · ·A· · ·Can you repeat?· You said because
`21· ·there is here Exhibit 1008, and that's the
`22· ·declaration of Dr. Davis in support of IPR.
`23· · · · · · ·So that one is listed in exhibit
`24· ·list.· It looks like you are referring to
`25· ·another document; is that correct?
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · ·Q· · ·Yes.· Thank you, for asking for
`·3· ·the clarification.· I was referring to his
`·4· ·deposition transcript.
`·5· · · · · · ·You obviously reviewed his
`·6· ·declaration.· I was referring to his
`·7· ·deposition transcript.
`·8· · · ·A· · ·I have not seen his deposition
`·9· ·transcript.
`10· · · ·Q· · ·If we could turn back to the '761
`11· ·Patent, and if I can direct you to Claim 1
`12· ·again?
`13· · · ·A· · ·Yes, I am there.· Go ahead,
`14· ·please.
`15· · · ·Q· · ·If you could look at the last
`16· ·clause which starts with "controls
`17· ·operation," and I'll just read it in full
`18· ·here for the record.· It says:
`19· · · · · · ·"Controls operation of said at
`20· ·least one traction motor and said internal
`21· ·combustion engine for compulsion of said
`22· ·hybrid vehicle responsive to said derived
`23· ·near-term predicted pattern of operation of
`24· ·said hybrid vehicle."
`25· · · · · · ·Do you see that?
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· · · ·A· · ·Yes, I see that.
`·3· · · ·Q· · ·Did you understand the
`·4· ·requirements of this clause when you
`·5· ·reviewed the patent claims in Dr. Davis'
`·6· ·declaration?
`·7· · · ·A· · ·Yes, I understood this clause, to
`·8· ·the best of my knowledge, and then I used
`·9· ·that one in order to form my opinions.
`10· · · ·Q· · ·Can you tell us what your
`11· ·understanding is of what this clause
`12· ·requires?
`13· · · ·A· · ·First of all, one thing that we
`14· ·need to keep in mind all the time is that
`15· ·it's building from the previous statement,
`16· ·because we see the previous one.
`17· · · · · · ·And so that should be always in
`18· ·mind specifically what we are talking about,
`19· ·because that's a critical point there.
`20· · · · · · ·And here, the part that you read
`21· ·is talking about, we would like to control
`22· ·operation of the traction motor, at least
`23· ·one of the traction motors because you can
`24· ·have two traction motors.
`25· · · · · · ·So here it's saying that you can
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·control the traction motor and internal
`·3· ·combustion engine in order to provide cover
`·4· ·to propel the vehicle.
`·5· · · · · · ·But then "these controls need to
`·6· ·be responsive" means based on what you have
`·7· ·observed in the derived near-term predicted
`·8· ·pattern.· So there is a pattern, that
`·9· ·near-term pattern that you have predicted
`10· ·for the vehicle operation.
`11· · · · · · ·And then based on the near-term
`12· ·predicted pattern that you have come up with
`13· ·in the controller strategy, now you go and
`14· ·then you control the electric motor and IC
`15· ·engine.
`16· · · ·Q· · ·So is it your understanding that
`17· ·this clause requires the alteration of
`18· ·setpoints?
`19· · · ·A· · ·In this clause, we see the words
`20· ·alteration of the setpoints.
`21· · · · · · ·The reason in my declaration there
`22· ·are some parts related I mentioned for
`23· ·setpoints, those were in response to the
`24· ·items that was raised by Dr. Davis.· So
`25· ·those were specifically in answering his
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·comments.
`·3· · · ·Q· · ·Then are there other ways, aside
`·4· ·from altering setpoints, to control the
`·5· ·operation of a traction motor or internal
`·6· ·combustion engine for propulsion?
`·7· · · · · · ·MR. LIVEDALEN:· Objection to the
`·8· · · ·extent it misstates the document.
`·9· · · ·A· · ·Do you mind to repeat your
`10· ·question?
`11· · · ·Q· · ·Sure.
`12· · · · · · ·So I guess based on your prior
`13· ·answer -- let me step back for a second.
`14· · · · · · ·Is one of the ways to control
`15· ·operation as required by this clause the
`16· ·alteration of setpoints?
`17· · · ·A· · ·So I previously answered, the
`18· ·claim here doesn't speak about setpoints.
`19· ·So then you asked, if I understood
`20· ·correctly, is that, is there other ways that
`21· ·doesn't include setpoints?· Is that your
`22· ·question?
`23· · · ·Q· · ·Well, I guess, is the alteration
`24· ·of setpoints, is that one way that would
`25· ·satisfy this limitation of controlling
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`·1· · · · · · · · ·Dr. M. Shahbakhti
`·2· ·operation?
`·3· · · · · · ·MR. LIVEDALEN:· Objection.· Calls
`·4· · · ·for a legal conclusion.
`·5· · · ·A· · ·So the language of the claim here
`·6· ·is broad.· It's talking about the controls
`·7· ·of operation of electric motor and IC
`·8· ·engine.· So when it's involving these two,
`·9· ·then this claim will apply.
`10· · · · · · ·And then if an example of the
`11· ·conditions would be that you will be using
`12·