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’ MOTION TO EXCLUDE
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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’ MOTION TO EXCLUDE
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`Petitioners’ Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), and consistent with their
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`motion to exclude largely the same evidence in IPR2020-00994, Petitioners move
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`to exclude Exhibits 2016, 2018, 2020, 2022-2024, 2028, and 2033.1 Each of
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`Exhibits 2018, 2020, 2022-2024, 2028 and 2033 post-dates the ’634 Patent’s
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`alleged priority date by several years, some by decades. As such, each should be
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`excluded as irrelevant under Federal Rule of Evidence 402. Any opinions in Dr.
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`Shahbakhti’s declaration (Exhibit 2016) that rely on these Exhibits should likewise
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`be excluded because they are not based on sufficient facts or data that are relevant
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`to this case, are not relevant to any ground upon which this trial was instituted, and
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`do not pass the admissibility threshold of Federal Rule 402.
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`Furthermore, the opinions in Dr. Shahbakhti’s declaration (Ex. 2016)
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`regarding what a POSITA would have known or how a POSITA would have
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`viewed the prior art at the time of the purported inventions are substantially
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`identical to the ones he offered regarding those respective subjects in IPR2020-
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`00994. Accordingly, should the Board exclude Dr. Shahbakhti’s opinions in
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`IPR2020-00994, including because he was unable to answer straightforward
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`questions without first spending several minutes—sometimes as many as 8-10
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`1 Petitioners’ Motion in IPR2020-00994 did not move to exclude Ex. 2033 and
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`additionally moved to exclude Ex. 2025, not included here.
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`1
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`Petitioners’ Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`minutes—word-searching what was written for him in his declaration only to read
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`that back as his answer, the Board should likewise exclude those same opinions
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`here. See IPR2020-00994, Paper 39 at 3-9.
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`Regardless of the amount of time he took to answer deposition questions,
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`though, Dr. Shahbakhti is not qualified, and has not otherwise become qualified, to
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`testify regarding issues viewed from the perspective of a POSITA prior to the
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`September 14, 1998 critical date. It is undisputed that Dr. Shahbakhti did not have
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`the necessary qualifications in 1998 (and did not gain those qualifications until
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`several years later). While an expert need not necessarily have qualified as a
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`POSITA at the time of the invention to be qualified as an expert to testify in an
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`IPR, proper expert testimony must be supported by something from the critical
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`period to back-fill the expert’s lack of personal knowledge and experience. Rather
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`than study up on contemporaneous literature, talk to persons who were industry
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`experts at the time, or do anything else to substantiate his opinions regarding the
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`knowledge and perspective of a POSITA in 1998, Dr. Shahbakhti simply cites to
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`documents that post-date the critical date by as much as two decades. Having
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`nothing to link the propriety of his opinions to the critical date, Dr. Shahbakhti
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`cannot competently testify in this case, and his opinion should be excluded.
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`2
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`Petitioners’ Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`PETITIONERS’ TIMELY OBJECTIONS
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`I.
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`On May 3, 2021, Patent Owners (“PO”) filed their Patent Owner Response
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`(Paper 20, “POR”), along with Exhibits 2016, 2018, 2020, 2022-2024, 2028, and
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`2033. Petitioners timely filed their objections to these exhibits on May 10, 2021.
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`(See Paper 21.) There, Petitioners objected to Exhibit 2016 because Dr. Shahbakhti
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`(a) lacks the knowledge, skill, experience, training, or education to
`testify as an expert in a manner that is helpful to the Board;
`(b) provides opinions that are not based on sufficient facts or data, or
`ones that he has been made aware of or personally observed; (c) has
`not applied reliable principles and methods; and (d) has not reliably
`applied such principles and methods to the facts of the case,
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`all of which violates Federal Rules 402 and 702, and because Dr. Shahbakhti “fails
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`to identify with particularity the underlying facts or data on which his opinions are
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`based” in violation of 37 C.F.R. § 42.65(a). (Paper 21 at 1.) Exhibit 2016 was also
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`objectionable “to the extent it relies on or incorporates inadmissible exhibits,” such
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`as Exhibits 2018, 2020, 2022-2024, 2028, and 2033. Id.
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`Petitioners objected to each of Exhibits 2018, 2020, 2022-2024, 2028, and
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`2033 as not being relevant under Federal Rule of Evidence 402 because each
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`exhibit was dated “significantly after the September 14, 1998 priority date of the
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`’634 Patent, which is the date that Dr. Shahbakhti states that he is using for
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`gauging the skill of the art.” (Id. at 2-4 (citing Ex. 2016, ¶ 29).)
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`3
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`Petitioners’ Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`Petitioners now move to exclude Exhibits 2016, 2018, 2020, 2022-2024,
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`2028, and 2033 consistent with those objections.
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`II. Non-Prior Art Exhibits 2018, 2020, 2022-2024, 2028, and 2033, and Dr.
`Shahbakhti’s Opinions in Exhibit 2016 that Rely on These Exhibits,
`Should Be Excluded Under Federal Rule of Evidence 402
`Federal Rule of Evidence 402 bluntly proscribes “[i]rrelevant evidence” as
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`“not admissible.” Fed. R. Evid. 402. It is well established that one “must look at
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`the state of the art at the time the invention was made to find a motivation” to
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`combine prior art references. Daiichi Sankyo Co. v. Matrix Labs., Ltd., 619 F.3d
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`1346, 1354 (Fed. Cir. 2010) (emphasis added). Thus, evidence “issued after the
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`invention date” is “of limited relevance” to the question of motivation to combine,
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`for example. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d
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`1293, 1324 (Fed. Cir. 2005).
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`While Petitioners recognize that it can be appropriate to use post-filing
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`evidence to show the state of the art existing around the time of the patent’s filing
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`date, an expert should not rely solely—or even mostly—on such post-filing
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`evidence; there must be something that ties an expert’s testimony to the critical
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`date, whether it be personal knowledge or citation to contemporaneous industry
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`publications. Yet only three of the ten (just 30%) exhibits on which Dr. Shahbakhti
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`relies predate the ’634 Patent’s alleged priority date. (Exs. 2019, 2021, 2033.) The
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`4
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`Petitioners’ Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`remaining exhibits all post-date that priority date, some by as long as 7, 10, 13, and
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`20 years. (Exs. 2018, 2020, 2022-2024, 2028, 2033.)
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`This is not a case where Dr. Shahbakhti is relying on one or two exhibits,
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`close to the challenged patent’s priority date, to further prove up a POSITA’s
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`knowledge or motivations at the relevant time, as may have been expressed in
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`another time-appropriate document. Instead, Dr. Shahbakhti attempts to fill in gaps
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`regarding a POSITA’s knowledge or motivations for which he has no evidence
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`contemporaneous to or predating the ’634 Patent filing date by citing references
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`that concern hybrid vehicle technology as it existed one-to-two decades after the
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`time of the alleged invention. Without any evidence contemporaneous to the ’634
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`Patent to support these much-too-modern exhibits, and because Dr. Shahbakhti has
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`demonstrated his inability to provide reliable testimony on the knowledge or
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`motivations of a POSITA at the relevant time (see infra), Exhibits 2018, 2020,
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`2022-2024, 2028, and 2033 should be excluded as irrelevant under Federal Rule of
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`Evidence 402.
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`III. Dr. Shahbakhti’s Opinions Ostensibly from the Perspective of a
`POSITA at the Time of the Purported Inventions Should Be Excluded
`Under Federal Rules of Evidence 402, 602, and 702
`Petitioners recognize that the Board routinely denies motions to exclude
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`expert witnesses because the Board can give appropriate weight to testimony based
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`on its credibility determinations rather than resort to exclusion. But “where an
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`5
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`Petitioners’ Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`issue calls for consideration of evidence from the perspective of one of ordinary
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`skill in the art, it is contradictory to Rule 702 to allow a witness to testify on the
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`issue who is not qualified as a technical expert in that art.” Sundance, Inc. v.
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`DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008). Dr. Shahbakhti
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`has no perspective of a skilled artisan as of 1998, and should therefore be
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`prohibited from “testify[ing] as an expert on obviousness, or any of the underlying
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`technical questions, such as the nature of the claimed invention, the scope and
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`content of prior art, the differences between the claimed invention and the prior art,
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`or the motivation of one of ordinary skill in the art to combine these references to
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`achieve the claimed invention.” Id. at 1364.
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` Like the ’347 Patent in IPR2020-00994, the ’634 Patent claims priority to
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`provisional application No. 60/100,095, filed on September 14, 1998. (BMW1001
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`at (60).) Dr. Shahbakhti relies on that date as the earliest priority date of the ’634
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`Patent. (Ex. 2016, ¶¶ 29-30.) Yet Dr. Shahbakhti admitted that he had no industry
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`experience whatsoever in September of 1998. (BMW1089 at 13:17-19.) In fact, he
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`had not even obtained a bachelor’s degree at that time. (Id. at 13:6-12.) He would
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`not get one until two years later, in 2000. (Id. at 13:13-16.) Therefore,
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`contemporaneously, Dr. Shahbakhti was not close to meeting his own definition of
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`a person of ordinary skill at that time, which requires “at least a Bachelor’s of
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`Science degree in electrical engineering or mechanical engineering and at least
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`6
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`Petitioners’ Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`three years of technical experience…” (Ex. 2016, ¶ 29, emphasis added.) While he
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`has since achieved that threshold degree and experience, his testimony and
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`inability to identify contemporaneous evidence to support it makes clear that he is
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`unable to testify accurately from the perspective of a POSITA back then.
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`Dr. Shahbakhti failed to make up for his lack of contemporaneous
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`experience or understanding of the topics at issue by a review of literature
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`available to a POSITA at the critical date (or by any other means), since he relied
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`almost exclusively on exhibits that post-date the ’634 Patent’s earliest priority date
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`by several years and some by one and two decades, as described above. (Exhibits
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`2018, 2020, 2022-2024, 2028, and 2033.) While Dr. Shahbakhti may claim to be
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`opining from the perspective of a POSITA at the critical date, it’s unclear how Dr.
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`Shahbakhti can do so without any information actually from that time period
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`(whether from his own experience, research, or otherwise). Exclusion is therefore
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`the only appropriate remedy because it is not possible to discern how Dr.
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`Shahbakhti may have mentally parsed those references from years and decades
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`after the critical date when providing his opinions from the perspective of a
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`POSITA at the critical date. He certainly did not shed any light on that in his
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`depositions as noted above.
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`7
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`IV. CONCLUSION
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`Petitioners’ Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`For the reasons set forth above, and consistent with their motion to exclude
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`in IPR2020-00994, Petitioners respectfully request exclusion of Exhibits 2016,
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`2018, 2020, 2022-2024, 2028, and 2033.
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`Dated: October 19, 2021
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`Respectfully submitted,
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`/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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`8
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`Petitioners’ Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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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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`Motion To Exclude was served on October 19, 2021 via electronic mail on the
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`following counsel of record for Patent Owners:
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`Ruffin B. Cordell (Reg. No. 33,487)
`Brian J. Livedalen (Reg. No. 67,450)
`Timothy W. Riffe (Reg. No. 43,881)
`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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`Respectfully submitted,
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`/Vincent J. Galluzzo/
`Vincent J. Galluzzo
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`9
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