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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
`
`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
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`___________________
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`PETITIONERS’ REQUEST FOR ORAL ARGUMENT
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`Petitioners’ Request for Oral Argument, IPR2020-01386
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`U.S. Patent No. 7,237,634
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`Pursuant to the Board’s Scheduling Order dated February 5, 2021 (Paper
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`14), Petitioners Bayerische Motoren Werke Aktiengesellschaft & BMW of North
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`America, LLC (“BMW”) respectfully request oral argument in the above-identified
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`proceeding, currently scheduled for November 9, 2021.
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`In view of the essentially identical claim limitations, and the substantially
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`similar arguments concerning those limitations, at issue in the Nii-based Grounds
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`(Grounds 1, 4-9), Graf-based Grounds (Grounds 3, 4-9), and Ma-based Grounds
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`(Grounds 7, 10-14) in this IPR that were in IPR2020-00994 concerning U.S. Patent
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`No. 7,104,347 (Nii: Grounds 3a and 3b; Graf: Grounds 1a and 2a; Ma: Grounds 1b
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`and 2b), in which oral argument has already taken place, BMW proposes limiting
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`each side to 30 minutes for oral argument. See PTAB Consolidated Trial Practice
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`Guide (November 2019), at 81-82 (Though the “Board expects to ordinarily
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`provide for an hour of argument per side for a single proceeding,” a party “may
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`request…less time depending on the circumstances.”). This provides the parties
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`sufficient time to address the remaining Quigley-based Grounds 2 and 4-9 that
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`were not at issue in IPR2020-00994, as well as to make any additional points and
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`answer any remaining questions the Board may have regarding the Nii-, Graf-, and
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`Ma-based Grounds.
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`1
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`Petitioners’ Request for Oral Argument, IPR2020-01386
`U.S. Patent No. 7,237,634
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`Pursuant to 37 C.F.R. § 42.70(a), and without waiving the right to raise any
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`additional issues not listed below, BMW requests that the oral hearing be on the
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`following issues:
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`1. Any issues raised in BMW’s Petition and Reply, including whether any
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`of the challenged claims of U.S. Patent No. 7,237,634 are unpatentable over one or
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`more of the asserted Grounds;
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`2. Any issues raised in the Board’s Institution Decision (Paper 13);
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`3. Any issues raised by Patent Owners Paice, LLC and The Abell
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`Foundation, Inc. (“Paice”) in these proceedings, including the Patent Owner
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`Response and Patent Owner Sur-Reply in this proceeding;
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`4. Any other issues raised by BMW, Paice, or the Board during these
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`proceedings;
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`5. Any Motions to Exclude Evidence filed by BMW or Paice;
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`6. Any other motions or filings pending before this Board;
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`7. Any additional issues raised by Paice in its Request for Oral Argument;
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`and
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`8. Any additional issues raised by this Board or Paice at Oral Argument.
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`2
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`Petitioners’ Request for Oral Argument, IPR2020-01386
`U.S. Patent No. 7,237,634
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`Dated: September 28, 2021
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`Respectfully submitted,
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`/Jeffrey D. Sanok/
`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’ Request for Oral Argument, IPR2020-01386
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`U.S. Patent No. 7,237,634
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`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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`Request for Oral Argument was served on September 28, 2021 via electronic mail
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`on the following counsel of record for Patent Owners:
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`Ruffin B. Cordell
`Brian J. Livedalen
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR36351-0018IP1@fr.com
`PTABInbound@fr.com
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`
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`Dated: September 28, 2021
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`/Jeffrey D. Sanok/
`Jeffrey D. Sanok
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`4
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