UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`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’ REPLY IN SUPPORT
`OF THEIR MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`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’ REPLY IN SUPPORT
`OF THEIR MOTION TO EXCLUDE
`
`
`
`
`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
`
`Here and in IPR2020-00994, it is not possible to discern whether the
`
`opinions contained in Dr. Shahbakhti’s declaration are from the perspective of a
`
`skilled artisan in 1998 (which they are required to be) or from such a person much
`
`later in time. Although PO defends Dr. Shahbakhti’s present qualifications,1 it is
`
`unable
`
`to provide any cogent explanation for his
`
`inability
`
`to
`
`identify
`
`contemporaneous art or any other evidence to support that his opinions are from
`
`the relevant time period regarding which he lacks any personal expertise, and about
`
`which he had difficulty answering questions at his depositions. His unqualified
`
`opinions, and the post-priority date documents with which he seeks to bootstrap
`
`them, should be excluded.
`
`I.
`
`Dr. Shahbakhti’s Opinions Should Be Excluded
`Contrary to PO’s attempts at distraction (Opp., 1-10), Petitioners are not
`
`challenging Dr. Shahbakhti’s qualifications to opine regarding the present state of
`
`the art, or disputing the general authority that an expert need not necessarily have
`
`qualified as a POSA at the time of the invention to be qualified as an expert in the
`
`
`1 While PO cites three IPRs decisions in which Dr. Shahbakhti’s opinions were
`
`credited (Opp., 1 n.1), none of those IPRs concerned the period at issue here.
`
`IPR2019-00011 (May 7, 2007 priority date); IPR2019-00014 and IPR2019-00012
`
`(both Feb. 16, 2009 priority date).
`
`1
`
`
`
`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
`
`relevant field. Rather, Petitioners dispute the basis for Dr. Shahbakhti’s opinions as
`
`to the perspective of a POSA prior to the September 14, 1998 date of the alleged
`
`inventions. Namely, Dr. Shahbakhti indisputably lacked experience rising to the
`
`level of a POSA at the relevant time (or for several years thereafter), and was
`
`unable to provide evidence contemporaneous to the filing date of the ’634 Patent
`
`that would bolster his otherwise unsupported testimony regarding the state of the
`
`art at that time.2
`
`
`2 As Petitioners set forth in IPR2020-00994, Dr. Shahbakhti further demonstrated
`
`his lack of qualifications regarding the relevant time period during his depositions.
`
`E.g., IPR2020-00994, Paper 42, 1-4. As his videotaped deposition makes clear, Dr.
`
`Shahbakhti’s repeated prolonged pauses were not reflective of his being “careful”
`
`or “thoughtful” in his answers, as PO contends (Opp., 10 n.2), but rather of his
`
`using the computer’s search tool to word-search for certain words he chose from
`
`counsel’s question, then reading what was written for him in his Declaration to try
`
`to make sense of it all. (IPR2020-00994, Paper 42, 1-4). See Roper v. Kawasaki
`
`Heavy Indus., Ltd., No. 13-cv-03661, 2015 WL 11236553 (N.D. Ga. June 29,
`
`2015) (excluding testimony of expert who was unable to give precise answers);
`
`Chico’s Fas, Inc. v. Clair, No. 13-cv-792, 2015 WL 3496003, at *3 (M.D. Fla.
`
` (continued…)
`
`2
`
`
`
`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
`
`While PO attempts to defend Dr. Shahbakhti by arguing that his list of
`
`“materials considered identifies 37 references, the vast majority of which predate
`
`the critical date” (Opp., 9), those references were mostly the ones cited by
`
`Petitioners, and in large part related to challenged claims and limitations whose
`
`unpatentability neither PO nor Dr. Shahbakhti disputes. As for the 10 references
`
`that Dr. Shahbakhti cited and actually relied on for his opinions regarding the
`
`relevant time period, only 3 did, in fact, predate the ’634 Patent’s alleged priority
`
`date, with the others coming nowhere close (Mot., 4-5), notwithstanding PO’s half-
`
`hearted protestations to the contrary (Opp., 9).
`
`Petitioners have no “vendetta” (Opp., 2) against Dr. Shahbakhti nor take
`
`umbrage with his present qualifications. Instead, Petitioners take issue with his
`
`opining as to matters viewed from the perspective of a POSA at the time of the
`
`alleged inventions because Dr. Shahbakhti lacks contemporaneous experience
`
`regarding that period and has failed to tether his corresponding opinions to any
`
`other contemporaneous evidence. As such, it is impossible to distinguish which of
`
`his opinions, if any, can be properly ascribed to how a POSA would have viewed
`
`
`June 3, 2015) (warning that “evasive answers may result in the witness being
`
`disallowed as an expert”).
`
`3
`
`
`
`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
`
`the issues in dispute prior to the date of the alleged inventions. Accordingly,
`
`Exhibit 2016 should be excluded as unreliable.
`
`II. Exhibits 2018, 2020, 2022-2024, 2028 and 2033 Should Be Excluded
`Petitioners acknowledge (Mot., 4) that it can be appropriate to use post-
`
`filing evidence “in a supportive role.” (Opp., 14 (quoting Yeda Research v. Mylan
`
`Pharms., Inc., 906 F.3d 1031, 1041 (Fed. Cir. 2018)).) But the post-filing Exhibits
`
`here constitute the majority of PO’s evidence and are not corroborated with any
`
`evidence that would show that the supposed “typical structure of a turbocharged
`
`engine control system” (Opp., 13 (citing Ex. 2028)), “packaging limitations for
`
`turbochargers” (id. (citing Ex. 2023)), or myriad other components, systems, etc.
`
`existing at the time of these post-filing Exhibits are representative of those known
`
`at the relevant time.3 It is PO’s burden to come forward with such corroboration,
`
`and not BMW’s to provide evidence rebutting it in the first instance, as PO
`
`erroneously suggests (Opp., 14), in the absence of such corroboration. These
`
`
`3 PO also cites to Exhibit 2025 in its Opposition as supposedly providing an
`
`“example of mechanics of a common free wheel unit” (Opp., 13) but—apart from
`
`that too-late-in-time Exhibit also not being corroborated with any other evidence to
`
`show that it is representative of what was known at the relevant time—issues
`
`related to a free wheel unit were only in dispute in IPR2020-00994, not here.
`
`4
`
`
`
`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
`
`Exhibits should therefore be excluded, and Dr. Shahbakhti prevented from relying
`
`on them, which would only compound the unreliability of his unqualified opinions.
`
`
`
`
`Dated: November 2, 2021
`
`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
`
`
`
`
`
`
`5
`
`
`
`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), I certify that the foregoing Petitioners’
`
`Reply in Support of Their Motion To Exclude was served on November 2, 2021
`
`via electronic mail on the following counsel of record for Patent Owners:
`
`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
`
`Respectfully submitted,
`
`/Vincent J. Galluzzo/
`Vincent J. Galluzzo
`
`
`
`
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
