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 & BMW
`OF NORTH AMERICA, LLC,
`Petitioners
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
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`Inter Partes Review No.: IPR2020-01386
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`U.S. Patent No. 7,237,634 K2
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`___________________
`
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`PETITIONERS’ RESPONSE IDENTIFYING ISSUES RAISED IN THE
`PATENT OWNER RESPONSE OR THE INSTITUTION DECISION TO
`WHICH THE EVIDENCE AND/OR ARGUMENTS IDENTIFIED BY
`PATENT OWNERS RESPONDS
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
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`
`
`
`
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT & BMW
`OF NORTH AMERICA, LLC,
`Petitioners
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
`
`
`
`
`
`
`
`
`
`
`
`Inter Partes Review No.: IPR2020-01386
`
`U.S. Patent No. 7,237,634 K2
`
`___________________
`
`
`PETITIONERS’ RESPONSE IDENTIFYING ISSUES RAISED IN THE
`PATENT OWNER RESPONSE OR THE INSTITUTION DECISION TO
`WHICH THE EVIDENCE AND/OR ARGUMENTS IDENTIFIED BY
`PATENT OWNERS RESPONDS
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`Petitioners’ Response re Identification of Responsive Evidence, IPR2020-01386
`U.S. Patent 7,237,634
`
`I.
`
`Graf (Grounds 3, 4-9)
`
`Section IV of BMW’s Reply, Ex. 1090, and Dr. Davis’s reply declaration
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`(BMW1088) at ¶¶99-103 directly rebut and respond to PO’s arguments that: (i) Graf
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`“merely discloses a block (2) that calculates the ‘driving style of the driver’” as “a
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`choice between ‘emissions’ or ‘performance;’” (ii) Graf’s disclosure is a “black box”
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`with “no evidence that Graf ‘monitors[s] a driver’s repeated driving operations over
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`time;’” (iii) “[t]he examples provided in Graf speak to whether someone prefers a
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`sports car to an economy car; (iv) “rather than provide a mechanism to monitor these
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`preferences, Graf simply assumes that the driver has expressed a choice;” and (v)
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`“[n]one of Graf’s disclosures suggest that there is any pattern at issue, or that it is
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`being monitored.” POR at 52-54 & n.22. They also directly respond to the issue
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`raised in the ID of whether Graf’s “characterizing the driver style of the driver”
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`requires “monitoring a driver’s repeated driving operations over time.” ID at 46.
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`Dr. Davis originally opined what a POSA would understand about Graf—
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`citing to Graf’s disclosure that incorporates Exhibit 1090. See Ex. 1008 at ¶¶201,
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`301 (citing BMW1020, 5:36-42). BMW’s Petition relied on this portion of Graf and
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`its reference to Ex. 1090 as well. See Pet. at 30-32 (citing BMW1020, 5:36-42). The
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`inclusion of Exhibit 1090 and related arguments and opinions in reply are in direct
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`rebuttal to the POR arguments listed in (i) through (v) above and in direct response
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`to the issues raised in the ID indicated above.
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`1
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`
`
`Petitioners’ Response re Identification of Responsive Evidence, IPR2020-01386
`U.S. Patent 7,237,634
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`II.
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`Severinsky (Grounds 1-9)
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`PO did not previously object with any specificity or request the Board’s
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`permission to file a motion to strike on these Grounds, arguments, or evidence.
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`Pages 10-11 of BMW’s Reply and Dr. Davis’s reply declaration (BMW1088)
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`at ¶¶8-26 directly rebut and respond to (i) the POR argument that Severinsky’s
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`hysteresis is only speed-based while the “setpoint” claimed in the ’634 Patent is “a
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`torque value;” and (ii) the POR’s acknowledgement of a “physical relationship
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`between speed and torque,” but argument that it “does not bridge the chasm between
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`Severinsky’s separate speed and torque-based algorithms.” POR at 18-23.
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`BMW’s reply argument and evidence (i) confirms PO’s admission of a
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`“physical relationship between torque and speed” because “Severinsky’s so-called
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`‘speed-based hysteresis’ must take torque into account,” and (ii) responds that while
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`“[o]ther, secondary parameters can also be taken into account, [] the road load
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`request of the operator is paramount,” with various examples of that concept being
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`known in the art, including from Exhibits 1015, 1091, and 1092. E.g., Ex. 1088,
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`¶¶12-13, et seq.; Reply at 10-11.
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`Regarding PO’s complaints about Exhibits 1015 and 1092, Exhibit 1015 is
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`Bumby II, which has been part of the record since the Petition. Exhibit 1092 contains
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`omitted excerpts from a 2005 textbook that PO submitted with its POR as Exhibit
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`2020, which undercut PO’s and Shahbakhti’s reliance on Exhibit 2020.
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`2
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`
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`Petitioners’ Response re Identification of Responsive Evidence, IPR2020-01386
`U.S. Patent 7,237,634
`
`
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`
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`Dated: August 24, 2021
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`
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`
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`Respectfully submitted,
`
`/Vincent J. Galluzzo/
`
`Jeffrey D. Sanok (Reg. No. 32,169)
`Vincent J. Galluzzo (Reg. No. 67,830)
`Crowell & Moring LLP
`1001 Pennsylvania Avenue NW
`Washington, DC 20004-2595
`Tel.: (202) 624-2500
`Fax.: (202) 628-8844
`jsanok@crowell.com
`vgalluzzo@crowell.com
`
`Scott L. Bittman (Reg. No. 55,007)
`Jacob Z. Zambrzycki (pro hac vice)
`Crowell & Moring LLP
`590 Madison Avenue, 20th Floor
`New York, NY 10022-2544
`Telephone No.: (212) 223-4000
`Facsimile No.: (212) 223-4134
`sbittman@crowell.com
`jzambrzycki@crowell.com
`
`Counsel for Petitioners
`Bayerische Motoren Werke
`Aktiengesellschaft and BMW of North
`America, LLC
`
`
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`
`
`3
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`
`
`Petitioners’ Response re Identification of Responsive Evidence, IPR2020-01386
`U.S. Patent 7,237,634
`
`Certificate of Service
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`Pursuant to 37 C.F.R. § 42.6(e)(4), I certify that the foregoing Petitioners’
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`PETITIONERS’ RESPONSE IDENTIFYING ISSUES RAISED IN THE PATENT
`
`OWNER RESPONSE OR THE INSTITUTION DECISION TO WHICH THE
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`EVIDENCE AND/OR ARGUMENTS IDENTIFIED BY PATENT OWNERS
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`RESPONDS was served on August 24, 2021 via electronic mail on the following
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`counsel of record for Patent Owners:
`
`Ruffin B. Cordell
`Indranil Mukerji
`Brian J. Livedalen
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`IPR36351-0018IP1@fr.com
`PTABInbound@fr.com
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`
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`Dated: August 24, 2021
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`
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`Respectfully submitted,
`
`/Vincent J. Galluzzo/
`Vincent J. Galluzzo
`
`
`
`4
`
`
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