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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’ REPLY IN SUPPORT
`OF THEIR MOTION TO EXCLUDE
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`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`Here and in IPR2020-00994, it is not possible to discern whether the
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`opinions contained in Dr. Shahbakhti’s declaration are from the perspective of a
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`skilled artisan in 1998 (which they are required to be) or from such a person much
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`later in time. Although PO defends Dr. Shahbakhti’s present qualifications,1 it is
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`unable
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`to provide any cogent explanation for his
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`inability
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`to
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`identify
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`contemporaneous art or any other evidence to support that his opinions are from
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`the relevant time period regarding which he lacks any personal expertise, and about
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`which he had difficulty answering questions at his depositions. His unqualified
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`opinions, and the post-priority date documents with which he seeks to bootstrap
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`them, should be excluded.
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`I.
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`Dr. Shahbakhti’s Opinions Should Be Excluded
`Contrary to PO’s attempts at distraction (Opp., 1-10), Petitioners are not
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`challenging Dr. Shahbakhti’s qualifications to opine regarding the present state of
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`the art, or disputing the general authority that an expert need not necessarily have
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`qualified as a POSA at the time of the invention to be qualified as an expert in the
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`1 While PO cites three IPRs decisions in which Dr. Shahbakhti’s opinions were
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`credited (Opp., 1 n.1), none of those IPRs concerned the period at issue here.
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`IPR2019-00011 (May 7, 2007 priority date); IPR2019-00014 and IPR2019-00012
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`(both Feb. 16, 2009 priority date).
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`1
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`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`relevant field. Rather, Petitioners dispute the basis for Dr. Shahbakhti’s opinions as
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`to the perspective of a POSA prior to the September 14, 1998 date of the alleged
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`inventions. Namely, Dr. Shahbakhti indisputably lacked experience rising to the
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`level of a POSA at the relevant time (or for several years thereafter), and was
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`unable to provide evidence contemporaneous to the filing date of the ’634 Patent
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`that would bolster his otherwise unsupported testimony regarding the state of the
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`art at that time.2
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`2 As Petitioners set forth in IPR2020-00994, Dr. Shahbakhti further demonstrated
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`his lack of qualifications regarding the relevant time period during his depositions.
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`E.g., IPR2020-00994, Paper 42, 1-4. As his videotaped deposition makes clear, Dr.
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`Shahbakhti’s repeated prolonged pauses were not reflective of his being “careful”
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`or “thoughtful” in his answers, as PO contends (Opp., 10 n.2), but rather of his
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`using the computer’s search tool to word-search for certain words he chose from
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`counsel’s question, then reading what was written for him in his Declaration to try
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`to make sense of it all. (IPR2020-00994, Paper 42, 1-4). See Roper v. Kawasaki
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`Heavy Indus., Ltd., No. 13-cv-03661, 2015 WL 11236553 (N.D. Ga. June 29,
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`2015) (excluding testimony of expert who was unable to give precise answers);
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`Chico’s Fas, Inc. v. Clair, No. 13-cv-792, 2015 WL 3496003, at *3 (M.D. Fla.
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` (continued…)
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`2
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`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`While PO attempts to defend Dr. Shahbakhti by arguing that his list of
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`“materials considered identifies 37 references, the vast majority of which predate
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`the critical date” (Opp., 9), those references were mostly the ones cited by
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`Petitioners, and in large part related to challenged claims and limitations whose
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`unpatentability neither PO nor Dr. Shahbakhti disputes. As for the 10 references
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`that Dr. Shahbakhti cited and actually relied on for his opinions regarding the
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`relevant time period, only 3 did, in fact, predate the ’634 Patent’s alleged priority
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`date, with the others coming nowhere close (Mot., 4-5), notwithstanding PO’s half-
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`hearted protestations to the contrary (Opp., 9).
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`Petitioners have no “vendetta” (Opp., 2) against Dr. Shahbakhti nor take
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`umbrage with his present qualifications. Instead, Petitioners take issue with his
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`opining as to matters viewed from the perspective of a POSA at the time of the
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`alleged inventions because Dr. Shahbakhti lacks contemporaneous experience
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`regarding that period and has failed to tether his corresponding opinions to any
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`other contemporaneous evidence. As such, it is impossible to distinguish which of
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`his opinions, if any, can be properly ascribed to how a POSA would have viewed
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`June 3, 2015) (warning that “evasive answers may result in the witness being
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`disallowed as an expert”).
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`3
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`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`the issues in dispute prior to the date of the alleged inventions. Accordingly,
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`Exhibit 2016 should be excluded as unreliable.
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`II. Exhibits 2018, 2020, 2022-2024, 2028 and 2033 Should Be Excluded
`Petitioners acknowledge (Mot., 4) that it can be appropriate to use post-
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`filing evidence “in a supportive role.” (Opp., 14 (quoting Yeda Research v. Mylan
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`Pharms., Inc., 906 F.3d 1031, 1041 (Fed. Cir. 2018)).) But the post-filing Exhibits
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`here constitute the majority of PO’s evidence and are not corroborated with any
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`evidence that would show that the supposed “typical structure of a turbocharged
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`engine control system” (Opp., 13 (citing Ex. 2028)), “packaging limitations for
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`turbochargers” (id. (citing Ex. 2023)), or myriad other components, systems, etc.
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`existing at the time of these post-filing Exhibits are representative of those known
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`at the relevant time.3 It is PO’s burden to come forward with such corroboration,
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`and not BMW’s to provide evidence rebutting it in the first instance, as PO
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`erroneously suggests (Opp., 14), in the absence of such corroboration. These
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`3 PO also cites to Exhibit 2025 in its Opposition as supposedly providing an
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`“example of mechanics of a common free wheel unit” (Opp., 13) but—apart from
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`that too-late-in-time Exhibit also not being corroborated with any other evidence to
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`show that it is representative of what was known at the relevant time—issues
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`related to a free wheel unit were only in dispute in IPR2020-00994, not here.
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`4
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`Petitioners’ Reply ISO Motion To Exclude, IPR2020-01386
`U.S. Patent No. 7,237,634 K2
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`Exhibits should therefore be excluded, and Dr. Shahbakhti prevented from relying
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`on them, which would only compound the unreliability of his unqualified opinions.
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`Dated: November 2, 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
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`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
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`Counsel for Petitioners
`Bayerische Motoren Werke Aktiengesellschaft
`and BMW of North America, LLC
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`5
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`Petitioners’ Reply ISO 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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`Reply in Support of Their Motion To Exclude was served on November 2, 2021
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`via electronic mail on the 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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`6
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