Petitioners’
`Oral Argument Demonstratives
`
`Bayerische Motoren Werke Aktiengesellschaft &
`BMW of North America, LLC,
`Petitioners
`v.
`Paice LLC & The Abell Foundation, Inc.,
`Patent Owners
`
`IPR2020‐01386
`U.S. Patent No. 7,237,634 K2
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`BMW1111
`BMW v. Paice, IPR2020‐01386
`11
`
`
`Oral Argument Demonstratives
`
`Bayerische Motoren Werke Aktiengesellschaft &
`BMW of North America, LLC,
`Petitioners
`v.
`Paice LLC & The Abell Foundation, Inc.,
`Patent Owners
`
`IPR2020‐01386
`U.S. Patent No. 7,237,634 K2
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`BMW1111
`BMW v. Paice, IPR2020‐01386
`11
`
`
`
`Challenged Claims Mostly Consist of Limitations in
`156 Claims Previously Found Unpatentable
`
`Petition
`
`Source: E.g., Pet. at 1‐16; Reply at 1‐2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`Patent Owners Only Dispute Well‐Known Nature of Two
`Hybrid Vehicle Features
`
`(1) varying the setpoint based on
`monitored patterns of driver
`operation over time
`
`Petition
`
`(2) turbocharging an
`engine in a hybrid vehicle
`to increase its MTO
`
`Source: E.g., Pet. at 1‐7; Reply at 1‐2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`
`
`Board Has Already Found ’634 Patent’s Supposedly Novel
`Control Strategies Unpatentable
`
`‘634 Patent
`
`Source: E.g., Pet. at 2; e.g., BMW1001 at 35:3‐9, 25:11‐24.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`
`
`Claim 33 Tacks On Same Well‐Known “Monitoring”
`Functionality As in ’347 Patent
`
`‘634 Patent
`
`’347 Patent
`
`Source: E.g., Pet. at 2‐3, 9‐11; BMW1001 at Claims 33, 188; U.S. Patent No. 7,104,347 at Claims 2, 24.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`
`
`Claims 49, 105, and 188 Tack On Well‐Known “Turbocharger”
`Functionality Even Broader Than in ’347 Patent
`
`‘634 Patent
`
`’347 Patent
`
`Source: E.g., Pet. at 2‐3, 9‐11; ID at 28‐29; e.g., BMW1001 at Claims 49, 105, 188; U.S. Patent No. 7,104,347 at Claims 11, 33.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`
`
`Additional Evidence Confirms
`These Tacked On Limitations Were Well‐Known
`
`’634 Patent
`
`Dr. Shahbakhti
`
`* * *
`
`* * *
`
`Source: E.g., Reply at 11‐12; BMW1088 at ¶¶27‐30; BMW1001 at 41:4‐47; BMW1105 at 29:14‐32:6.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`
`
`MONITORING PATTERNS
`
`CLAIM 33 IS OBVIOUS OVER
`MONITORING PATTERNS
`SEVERINSKY + NII (GROUNDS 1, 4‐9)
`SEVERINSKY + QUIGLEY (GROUNDS 2, 4‐9)
`CLAIM 33 IS OBVIOUS OVER
`SEVERINSKY + GRAF (GROUNDS 3, 4‐9)
`SEVERINSKY + NII (GROUNDS1, 4-9)
`
`SEVERINSKY + QUIGLEY (GROUNDS2,4-9)
`
`SEVERINSKY + GRAF (GROUNDS3,4-9)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`
`
`Claim 33 Adds That the Known Setpoint‐Based Control
`Strategy Can Be Modified Based on Monitored Patterns
`
`’634 Patent
`
`Source: E.g., Pet. at 1‐7; BMW1001 at Claim 33.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`
`
`“Pattern” and “Monitoring Patterns”
`Have Been Broadly Construed
`
`IPR2015‐00722 ID
`
`PO’s ‘761 Demonstratives (IPR2020‐01299)
`
`Source: E.g., Pet. at 8‐11; BMW1060 at 8; ID at 14; IPR2020‐01299, Exhibit 2036 at 22.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`
`
`Nii Teaches “Monitor[ing]” Same “Patterns of Vehicle Operation
`Over Time” as ’634 Patent
`
`’634 Patent
`
`Nii
`
`“repetitive driving pattern”
`= “regular travel pattern”
`(e.g., daily commute)
`
`Source: E.g., Pet. at 19‐20; Reply at 3; BMW1001 at 40:50‐41:3; BMW1022 at 2:21‐24, 5:59‐64; BMW1008 at ¶¶274‐75;
`BMW1088 at ¶37.
`
`11
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Severinsky’s Setpoint‐Based Control Algorithm Could Be
`Improved Using Nii’s Pattern Monitoring Functionality
`
`Severinsky
`
`Source: E.g., Pet. at 20‐23; Reply at 3‐5; BMW1008 at ¶¶276‐84; BMW1088 at ¶¶34‐36; BMW1013 at 5:24‐37; 21:23‐38;
`21:48‐55; BMW1022 at 2:13‐24.
`
`12
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Increasing Hybrid Vehicle Efficiency Was One of Severinsky’s
`Goals
`
`Dr. Shahbakhti
`
`* * *
`
`Source: E.g., Pet. at 20‐23; Reply at 3‐5; BMW1008 at ¶¶276‐84; BMW1088 at ¶¶34‐36; BMW1089 at 77:9‐18, 130:11‐131:21.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`13
`
`
`
`Using Actual Patterns of Operation To Adjust Severinsky’s
`Factory‐Defined Setpoint Would Increase Efficiency
`
`Dr. Davis
`
`Source: E.g., Pet. at 20‐23; Reply at 3‐5; BMW1008 at ¶¶276‐84; BMW1088 at ¶¶34‐36; BMW1089 at 80:3‐81:16.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`Dr. Shahbakhti
`
`
`
`“It Is Within the Skill of the Art” To Take Nii’s Pattern Monitoring
`and “Adapt [Severinsky’s] Control Strategy Accordingly”
`
`’634 Patent
`
`Nii
`
`Source: E.g., Pet. at 23; Reply at 4‐5; BMW1001 at 40:50‐41:3; BMW1022 at 2:14‐24; BMW1008 at ¶¶278, 283; BMW1088 at
`¶71.
`
`15
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Severinsky’s Default Setpoint Is Arbitrary
`
`Severinsky
`
`Dr. Davis
`
`Source: E.g., Pet. at 20‐23; Reply at 3‐4; BMW1008 at ¶¶276‐84; BMW1088 at ¶¶34‐36; BMW1013 at 8:27‐35; 20:63‐67;
`18:23‐42; ID at 34‐35.
`
`16
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Severinsky Discloses “Vary[ing] Said Setpoint” During
`Hysteresis
`
`Severinsky
`
`Source: E.g., Pet. at 20‐23; Reply at 2‐13; BMW1008 at ¶¶276‐84; BMW1088 at ¶¶7‐71; BMW1013 at 8:27‐30; 20:63‐67;
`18:23‐42; ID at 34‐35.
`
`17
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Severinsky and ’634 Patent Confirm Severinsky’s Speed
`Values Correspond to Torque Values and Vice Versa
`
`’634 Patent
`
`Severinsky
`
`Source: E.g., Pet. at 48; Reply at 10‐11; BMW1008 at ¶48; BMW1088 at ¶¶8‐26; BMW1001 at 17:36‐50; BMW1013 at
`20:63‐67; 18:23‐42; 7:8‐16.
`
`18
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Prior IPR Decisions and Dr. Davis Confirm Severinsky’s Speed
`Values Correspond to Torque Values and Vice Versa
`
`Institution Decision
`
`Dr. Davis
`
`Source: E.g., Reply at 9‐13; BMW1088 at ¶¶9‐10; ID at 34‐35; BMW1059 at 14‐17.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`
`
`Board Rejected Years Ago Paice’s Argument That Severinsky’s
`Control System Only Takes Speed Into Account
`
`BMW1059
`
`Source: E.g., Reply at 13; ID at 30, 34‐35; BMW1059 at 14‐17; BMW1013 at 18:23‐42, 20:63‐67.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`
`
`Severinsky Takes Instantaneous Torque
`Into Account “at all times”
`
`Severinsky
`
`Dr. Davis
`
`Source: E.g., Reply at 10‐11; BMW1088 at ¶¶8‐26; BMW1013 at 17:11‐15; Exhibit 2016 at ¶70.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`
`
`Severinsky Varies Setpoint from 30‐35 mph During Normal
`Operation to 20‐25 mph During Hysteresis
`
`’634 Patent
`
`Severinsky
`
`Source: E.g., Pet. at 21‐22; Reply at 9‐13; BMW1001 at Claim 33; BMW1013 at 18:34‐42; BMW1008 at ¶¶274‐84; BMW1088
`at ¶¶7‐71.
`
`22
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`PO’s Thermostat Example Is Misplaced
`
`’634 Patent
`
`user desired temperature
`
`setpoint being varied
`
`setpoint being varied
`
`Source: E.g., Pet. at 21‐22; Reply at 9‐13; BMW1001 at Claim 33; BMW1008 at ¶¶274‐84; BMW1088 at ¶¶7‐71; POSR at 5;
`IPR2020‐00994, Exhibit 2030 at 16.
`
`23
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`’634 Patent Includes Using Two Different Setpoints as
`Example of “Varying”
`
`’634 Patent
`
`Source: E.g., Reply at 11‐12; BMW1088 at ¶¶27‐30; BMW1001 at 41:4‐47.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`24
`
`
`
`Dr. Shahbakhti Admits Using Two Different Setpoint Values Is
`“Main Example” of “Varying the Setpoint” in ’634 Patent
`
`’634 Patent
`
`Dr. Shahbakhti
`
`* * *
`
`* * *
`
`Source: E.g., Reply at 11‐12; BMW1088 at ¶¶27‐30; BMW1001 at 41:4‐47; BMW1105 at 29:14‐32:6.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`
`
`BMW’s Arguments Are Consistent with Its Adopted Arguments from
`Prior IPRs, Which the Board Previously Credited
`
`Petition
`
`BMW1059
`
`Source: E.g., Sur‐Reply at 9, n.5; Pet. at 48, 50; BMW1059 (IPR2014‐01416 FWD) at 21‐22.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`
`
`MONITORING PATTERNS
`
`CLAIM 33 IS OBVIOUS OVER
`MONITORING PATTERNS
`SEVERINSKY + NII (GROUNDS 1, 4‐9)
`SEVERINSKY + QUIGLEY (GROUNDS 2, 4‐9)
`CLAIM 33 IS OBVIOUS OVER
`SEVERINSKY + GRAF (GROUNDS 3, 4‐9)
`SEVERINSKY + NII (GROUNDS1, 4-9)
`
`SEVERINSKY + QUIGLEY (GROUNDS2, 4-9)
`
`SEVERINSKY + GRAF (GROUNDS3, 4-9)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`
`
`Institution Decision On Quigley‐Based Grounds
`Was Based On Two Misconceptions With Petition
`
`Institution Decision
`
`Source: E.g., ID at 40‐41.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`
`
`Petitioners Have Consistently Proposed Adjusting Severinsky’s
`Torque‐Based “Setpoint”
`
`Petition
`
`Source: E.g., Pet. at 27‐29.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`
`
`Petitioners Have Consistently Proposed Modifying Severinsky’s
`Setpoints in Normal Operation and During Hysteresis
`
`Petition
`
`POR
`
`Source: E.g., Pet. at 26‐29; Reply at 13‐22; POR at 44‐45, 49; BMW1008 at ¶¶294‐98; BMW1088 at ¶¶72‐98.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`
`
`Quigley Teaches “Monitoring Patterns of Vehicle Operation Over
`Time” and Optimizing Hybrid Vehicle Control Accordingly
`
`Quigley
`
`Source: E.g., Pet. at 23‐26; Reply at 14‐15; BMW1008 at ¶¶286‐93; BMW1088 at ¶¶72‐98; BMW1054 at 129‐30.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`
`
`Severinsky’s Setpoint‐Based Control Algorithm Could Be
`Improved Using Quigley’s Pattern Monitoring Functionality
`
`Severinsky
`
`Quigley
`
`Source: E.g., Pet. at 26‐29; Reply at 13‐22; BMW1008 at ¶¶294‐98; BMW1088 at ¶¶72‐98; BMW1013 at 5:31‐37; 21:23‐38;
`21:48‐55; BMW1054 at 129‐30.
`
`32
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`A POSA Would “Vary” Severinsky’s “Setpoint” Based on Actual
`Operation To Improve Efficiency
`
`Dr. Davis
`
`Source: E.g., Pet. at 26‐29; Reply at 13‐22; BMW1008 at ¶¶294‐98; BMW1088 at ¶¶72‐98.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`33
`
`
`
`“It Is Within the Skill of the Art” To Take Quigley’s Pattern
`Monitoring and “Adapt [Severinsky’s] Control Strategy Accordingly”
`
`’634 Patent
`
`Dr. Davis
`
`Severinsky
`
`Quigley
`
`Source: E.g., Pet. at 29; Reply at 17; BMW1001 at 40:50‐41:3; BMW1013 at Fig. 3; BMW1054 at Fig. 2; BMW1008 at ¶297;
`BMW1088 at ¶¶78‐80.
`
`34
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Quigley Teaches Monitoring Signals Already Available in
`Hybrid Vehicles for Patterns To Optimize Control
`
`Severinsky
`
`Quigley
`
`Source: E.g., Pet. at 26‐29; Reply at 13‐22; BMW1008 at ¶¶294‐98; BMW1088 at ¶¶72‐98; BMW1013 at 17:11‐15;
`BMW1054 at 129‐30.
`
`35
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`MONITORING PATTERNS
`
`CLAIM 33 IS OBVIOUS OVER
`MONITORING PATTERNS
`SEVERINSKY + NII (GROUNDS 1, 4‐9)
`SEVERINSKY + QUIGLEY (GROUNDS 2, 4‐9)
`CLAIM 33 IS OBVIOUS OVER
`SEVERINSKY + GRAF (GROUNDS 3, 4‐9)
`SEVERINSKY + NII (GROUNDS1, 4-9)
`
`SEVERINSKY + QUIGLEY (GROUNDS2, 4-9)
`
`SEVERINSKY + GRAF (GROUNDS3,4-9)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`
`
`Graf’s Block 2 Teaches
`“Monitor[ing] Patterns of Vehicle Operation Over Time”
`
`Institution Decision
`
`Source: E.g., Pet. at 30‐32; Reply at 22; ID at 45‐46; BMW1020 at Fig. 2; BMW1008 at ¶¶300‐06.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`
`
`Graf’s Block 2 Teaches
`“Monitor[ing] Patterns of Vehicle Operation Over Time”
`
`Graf
`
`Dr. Davis
`
`* * *
`
`Source: E.g., Pet. at 30‐32; Reply at 22‐24; BMW1020 at 5:36‐42; BMW1008 at ¶¶117‐22, 300‐06; BMW1088 at ¶¶99‐103.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`
`
`Dr. Davis’s Opinion Is Confirmed by European
`Graf Reference (Graf ’703) Cited in Graf
`
`Graf
`
`Graf ’703
`
`Source: E.g., Pet. at 30‐32; Reply at 22‐24; BMW1020 at 5:36‐42; BMW1008 at ¶¶117‐22, 300‐06; BMW1088 at ¶¶99‐103;
`BMW1090 at 6:13‐26, 8:32‐9:10, 10:3‐9, 13:14‐15, Figs. 6, 7.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`
`
`Graf Adjusts “Individual Operating Points” at Which Engine and/or Motor
`Will Be Operated in Hybrid Vehicle Based on Driver Type
`
`Graf
`
`Dr. Davis
`
`Source: E.g., Pet. at 34; Reply at 22‐24; BMW1020 at 2:20‐24, Claim 5; BMW1008 at ¶¶300‐06.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`
`
`Graf Explicitly Describes a Hybrid Vehicle, Contradicting PO’s
`Arguments Against Combining Graf’s Teachings With Severinsky
`
`Graf
`
`Source: E.g., Pet. at 30‐35; Reply at 24; BMW1020 at 2:20‐24, 4:41‐49, Claim 5; BMW1008 at ¶¶300‐14.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`
`
`TURBOCHARGER
`
`CLAIM 49 IS OBVIOUS OVER
`TURBOCHARGER
`SEVERINSKY + (NII, QUIGLEY, OR GRAF) + MA (GROUND 7)
`
`CLAIM 105 IS OBVIOUS OVER
`CLAIM 49 IS OBVIOUS OVER
`SEVERINSKY + FRANK + MA (GROUND 10)
`SEVERINSKY+ (NII, QUIGLEY, OR GRAF) + MA (GROUND 7)
`
`CLAIM 188 IS OBVIOUS OVER
`CLAIM 105 IS OBVIOUS OVER
`SEVERINSKY + MA (GROUNDS 11‐14)
`SEVERINSKY + FRANK + MA (GROUND 10)
`
`CLAIM 188 IS OBVIOUS OVER
`SEVERINSKY + MA (GROUNDS11-14)
`
`42
`
`
`
`Claims 49, 105, and 188 Tack On Well‐Known “Turbocharger”
`Functionality Even Broader Than in ’347 Patent
`
`‘634 Patent
`
`’347 Patent
`
`Source: E.g., Pet. at 2‐3, 9‐11; ID at 28‐29; e.g., BMW1001 at Claims 49, 105, 188; U.S. Patent No. 7,104,347 at Claims 11,
`33.
`
`43
`
`
`
`Patent Owners No Longer Dispute That Supposedly Novel Portion of
`Claimed “Turbocharger” Limitations Was Well‐Known
`
`’634 Patent
`
`Institution Decision
`
`* * *
`
`POR
`
`* * *
`
`Source: E.g., BMW1001 at Claims 49, 105, 188; Pet. at 55‐57; BMW1008 at ¶¶517‐23; ID at 50‐52; POPR at 4, 53‐63; POR at
`56‐71.
`
`44
`
`
`
`Ma Expressly Contradicts POs’ Argument That POSA Would Not Use
`Turbocharger with Electric Motor To Supplement Engine MTO
`
`Ma
`
`“torque is augmented by bringing any one
`or more of the supplementary sources …
`into operation”
`
`Source: E.g., BMW1021 at Fig. 1, 5:10‐29, 7:11‐37; Pet. at 55‐58; Reply at 25‐26; ID at 50; BMW1008 at ¶520; BMW1088 at
`¶104.
`
`45
`
`
`
`Dr. Shahbakhti Conceded as Much, Despite Having Trouble
`Understanding Ma
`
`Ma
`
`Dr. Shahbakhti
`
`* * *
`
`* * *
`
`* * *
`
`Source: E.g., BMW1021 at Fig. 1; Pet. at 55‐58; Reply at 26; BMW1089 at 148:23‐149:24.
`
`46
`
`
`
`Severinsky and Ma Interrelatedly Concern Hybrid Vehicle Control
`To Maximize Engine Efficiency Through Supplemental Torque
`Sources, Providing a Motivation To Combine
`
`Dr. Davis
`
`Source: E.g., Pet. at 57‐58; Reply at 25; BMW1008 at ¶¶516‐28; BMW1088 at ¶123.
`
`47
`
`
`
`A POSA Would Have Been Motivated to Add a Turbocharger To
`Improve Engine’s Efficiency
`
`Dr. Davis
`
`Source: E.g., Pet. at 57‐58; Reply at 25‐30; BMW1008 at ¶¶524‐28; BMW1088 at ¶¶105‐28.
`
`48
`
`
`
`Benefits of Adding Turbocharger Would Not Have Been
`Redundant of Severinsky’s Electric Motor
`
`Institution Decision
`
`Reply
`
`* * *
`
`Source: E.g., ID at 49‐52; Pet. at 57‐58; Reply at 26‐30; BMW1008 at ¶¶524‐28; BMW1088 at ¶¶105‐25.
`
`49
`
`
`
`POSA Would Have Been Motivated To Add Turbocharger and Use It
`in Sustained Periods of High‐Power Use To Preserve Battery Charge
`
`Severinsky
`
`Dr. Davis
`
`Source: E.g., BMW1013 at 6:19‐26, 11:27‐34, 18:9‐33; Pet. at 57‐58; Reply at 28‐29; BMW1008 at ¶¶524‐28; BMW1088 at
`¶¶121‐28.
`
`50
`
`
`
`Petitioners’
`Oral Argument Demonstratives
`
`Bayerische Motoren Werke Aktiengesellschaft &
`BMW of North America, LLC,
`Petitioners
`v.
`Paice LLC & The Abell Foundation, Inc.,
`Patent Owners
`
`IPR2020‐01386
`U.S. Patent No. 7,237,634 K2
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5151
`
`
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