UNITED STATES PATENT AND TRADEMARK OFFICE
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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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`Case IPR2020-01386
`Patent 7,237,634
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`PATENT OWNERS’ IDENTIFICATION OF NEW EVIDENCE AND
`ARGUMENTS BEYOND THE PROPER SCOPE OF PETITIONERS’
`REPLY
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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,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owners.
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`Case IPR2020-01386
`Patent 7,237,634
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`PATENT OWNERS’ IDENTIFICATION OF NEW EVIDENCE AND
`ARGUMENTS BEYOND THE PROPER SCOPE OF PETITIONERS’
`REPLY
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`Attorney Docket: 36351-0018IP1
`Case IPR2020-01386
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`EXHIBIT LIST
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`Exhibit No.
`PAICE 2001
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`PAICE 2002
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`PAICE 2003
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`PAICE 2004
`PAICE 2005
`PAICE 2006
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`PAICE 2007
`PAICE 2008
`PAICE 2009
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`PAICE 2010
`PAICE 2011
`PAICE 2012
`PAICE 2013
`PAICE 2014
`PAICE 2015
`PAICE 2016
`PAICE 2017
`PAICE 2018
`PAICE 2019
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`PAICE 2020
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`Description
`Patent Owners’ Preliminary Response to Petition for IPR in
`IPR2015-0722 Dated August 10, 2015
`Patent Owner’s Preliminary Response to Petition in IPR2015-
`00787 dated August 10, 2015
`Patent Owner’s Preliminary Response to Petition in IPR2015-
`00791 dated August 10, 2015
`Statutory Disclaimer
`Reserved
`Response to Interrogatory 27, BMW Responses to PAICE 1st
`Set of Interrogatories [1-28] dated May 6, 2020
`Paice/Toyota Complaint dated June 8, 2004
`Paice/Toyota Amended Complaint dated July 3, 2007
`Scheduling Order [Docket No. 36] from 1:19-cv-03348-SAG
`(USDC-DMD) dated February 25, 2020
`Docket Navigator Statistics – Top Patents by Number of IPRs
`Ex. J to BMW Invalidity Contentions dated June 8, 2020
`Reserved
`IPR2017-00232 Petition dated November 14, 2016
`UK Patent Application GB 2,318,105 Cover Page
`Printout of http://www.paicehybrid.com/licensing-agreements/
`Declaration of Mahdi Shahbakhti, Ph.D.
`Curriculum Vitae of Mahdi Shahbakhti, Ph.D.
`Bosch Gasoline-engine Management
`Selected Pages From John Heywood, Internal Combustion
`Engines Fundamentals
`Selected Pages From Merhdad Ehsani et al, Modern Electric,
`Hybrid Electric, and Fuel Cell Vehicles
`PAICE 2021 Matthew Cuddy et al., Analysis of the Fuel Economy Benefit
`of Drivetrain Hybridization
`Selected Pages From Draft Technical Assessment Report:
`Midterm Evaluation of Light-Duty Vehicle Greenhouse Gas
`Emission Standards and Corporate Average Fuel Economy
`Standards for Model Years 2022-2025
`Selected Pages From Assessment of Fuel Economy of Fuel
`Economy Technologies for Light Duty Vehicles
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`PAICE 2022
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`PAICE 2023
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`ii
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`PAICE 2024
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`PAICE 2025
`PAICE 2026
`PAICE 2027
`PAICE 2028
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`PAICE 2029
`PAICE 2030
`PAICE 2031
`PAICE 2032
`PAICE 2033
`PAICE 2034
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`Attorney Docket: 36351-0004IP1
`Case IPR2020-00994
`
`Selected Pages From Richard Stone, Introduction to Internal
`Combustion Engines
`Reserved
`Reserved
`Reserved
`Guzzella et al., Introduction to Modeling Control of Internal
`Combustion Engine Systems
`Reserved
`Reserved
`Reserved
`Reserved
`Guzzella et al., Vehicle Propulsion Systems
`Bumby, J.R. et al., “Optimisation and control of a hybrid
`electric car,” IEE PROCEEDINGS, Vol. 134, Pt. D, No. 6
`(Nov. 1987), 373-87 (“Bumby II”)
`
`iii
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`Attorney Docket: 36351-0018IP1
`Case IPR2020-01386
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`I.
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`Introduction
`Pursuant to the Board’s Authorization of August 10, 2021, Patent Owners
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`identify the following arguments and/or evidence filed with the Petitioner Reply
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`that is beyond the proper scope of the Reply.1
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`A. New Arguments and Evidence Regarding Graf (Grounds 3, 4-9)
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`Ex. 1090 is new evidence not presented in BMW’s Petition. BMW’s reply
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`relies on Ex. 1090 (a translation of foreign patent EP 0,576,703) to argue that Graf
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`discloses “monitoring patterns of vehicle operation over time.” Reply, 22-24.
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`Graf explicitly references Ex. 1090 in its specification, but BMW did not submit
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`Ex. 1090 or make any arguments concerning its disclosure or relevance to Graf in
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`its Petition.
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`BMW’s arguments at Section IV of its reply focus primarily on the
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`disclosure of Ex. 1090, which was not included in BMW’s Petition. BMW’s
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`reliance on Ex. 1090 to supplement the disclosure of Graf included in the Petition
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`is new argument. Likewise, paragraphs 99-103 of Dr. Davis’s reply declaration
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`(Ex. 1088) consist of new opinions relying on Ex. 1090 to supplement his opinions
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`about Graf’s disclosure.
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`1 Patent Owners reserve the right to address in their Sur-reply other new/improper
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`arguments and evidence contained in BMW’s Reply.
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`1
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`Attorney Docket: 36351-0004IP1
`Case IPR2020-00994
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`B. New Arguments and Evidence Regarding Severinsky (Grounds
`1-9)
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`BMW’s assertions that “Severinsky’s speed-based thresholds correlate to
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`torque-based thresholds” and “‘speed thresholds’ are also torque thresholds by
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`their very nature” (Reply, 11) are new arguments. BMW’s Petition relied on speed
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`thresholds (Petition, 22), but did not explain any relationship between “speed
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`thresholds” and “torque thresholds.” Likewise, paragraphs 7-26 of Dr. Davis’s
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`reply declaration (Ex. 1088) consist of new opinions making the same argument
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`about the purported relationship between “speed thresholds” and “torque
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`thresholds.” In addition, Dr. Davis relies on Bumby II (Ex. 1015), an SAE paper
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`(Ex. 1091), and the Ehsani textbook (Ex. 1092) in attempt to support this
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`argument. Ex. 1088, ¶¶ 14-22. Neither BMW nor Dr. Davis reference or discuss
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`Ex. 1015, Ex. 1091, or Ex. 1092 in support of these grounds in BMW’s Petition.
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`Date: August 17, 2021
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`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (877) 769-7945
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`Respectfully submitted,
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`/Brian J. Livedalen/
`Ruffin B. Cordell, Reg. No. 33,487
`Timothy W. Riffe, Reg. No. 43,881
`Brian J. Livedalen, Reg. No. 67,450
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`
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`Counsel for Patent Owners
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`2
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`Attorney Docket: 36351-0018IP1
`Case IPR2020-01386
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on August 17,
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`2021, a complete and entire copy of this Patent Owners’ Identification of New
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`Arguments and Evidence Beyond the Proper Scope of Petitioners’ Reply was
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`provided via email, to the Petitioners by serving the correspondence address of
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`record as follows:
`
`Jeffrey D. Sanok
`Vincent J. Galluzzo
`Crowell & Moring LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`
`Scott L. Bittman
`Jacob Z. Zambrzycki
`Crowell & Moring LLP
`Intellectual Property Group
`590 Madison Avenue, 20th Floor
`New York, NY 10022-2544
`
`Email: jsanok@crowell.com
`Email: vgalluzzo@crowell.com
`Email: sbittman@crowell.com
`Email: jzambrzycki@crowell.com
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`3
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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