`FOR THE DISTRICT OF MARYLAND
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`PAICE LLC and THE ABELL FOUNDATION
`INC.,
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`Plaintiffs,
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`v.
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`BAYERISCHE MOTOREN WERKE A.G., and
`BMW OF NORTH AMERICA, LLC,
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`Defendants.
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`C.A. No. 19-CV-3348-SAG
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`DEFENDANTS BAYERISCHE MOTOREN WERKE AG AND
`BMW OF NORTH AMERICA, LLC’S RESPONSES TO
`PLAINTIFFS’ FIRST SET OF INTERROGATORIES (NOS. 1-28)
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`Pursuant to the Federal Rule of Civil Procedure 26 and Local Rule 104, Defendants
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`Bayerische Motoren Werke AG (“BMWAG”) and BMW of North America, LLC (“BMWNA”)
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`(collectively, “BMW”) hereby provide the following responses and objections to the First Set of
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`Interrogatories propounded by Plaintiffs Paice LLC (“Paice”) and the Abell Foundation, Inc.
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`(“Abell”) (collectively, “Plaintiffs” or “Paice”).1 Discovery is ongoing, and BMW reserves the
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`right to further supplement or amend these responses as discovery progresses.
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`The following responses are based upon information and documentation that is currently
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`available and specifically known to BMW following a reasonable and ongoing investigation.
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`These responses are given without prejudice to BMW’s right to produce or rely on subsequently
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`discovered, uncovered, or learned information. It is anticipated that further discovery, independent
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`1 Unless stated otherwise, responses to these Interrogatories are submitted on behalf of both BMWAG and
`BMWNA.
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`1
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`Defendants Bayerische Motoren Werke AG and BMW of North America, LLC’s
`Responses to Plaintiffs’ First Set of Interrogatories (Nos. 1-28)
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`EAST\174029981.1
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`PAICE 2006
`BMW v. Paice
`IPR2020-01386
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`custody, or control of Plaintiffs or their counsel, or that are publicly available or equally available
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`to Plaintiffs and, therefore, are of no greater burden for Plaintiffs to obtain than for BMW to obtain.
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`BMW objects to this Interrogatory as compound, and therefore counting as more than one
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`interrogatory under Fed. R. Civ. P. 33(a)(1).
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`Subject to and without waiving the foregoing General and Specific Objections, and as
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`BMW understands the Interrogatory, BMW responds as follows:
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`As presently advised, BMW has identified no employees that recall having any such
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`communications. However, pursuant to Fed. R. Civ. P. 33(d) and to the extent that it has any non-
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`privileged documents in its possession, custody, and control from which responsive information
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`within the non-objectionable scope of this Interrogatory can be obtained, BMW may produce such
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`documents and will supplement this response to identify Bates ranges associated with those
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`documents after such documents are produced.
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`BMW further states that it is continuing to investigate the subject matter of this
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`Interrogatory and reserves the right to supplement its response if it locates any non-privileged,
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`relevant information or documents responsive to this Interrogatory in accordance with the
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`procedures and timetables established by the Court’s Scheduling Order and the Federal Rules of
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`Civil Procedure, and after BMW has been afforded an adequate opportunity to investigate Paice’s
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`allegations through discovery in this Action.
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`INTERROGATORY NO. 27:
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`Identify and describe in detail the circumstances under which You first became aware of
`Paice and Abell and state the date(s) when You first had notice of each of the Asserted Patents and
`describe the method(s) by which You received such notice, including in Your answer an
`identification of all persons involved.
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`37
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`Defendants Bayerische Motoren Werke AG and BMW of North America, LLC’s
`Responses to Plaintiffs’ First Set of Interrogatories (Nos. 1-28)
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`EAST\174029981.1
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`2
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`RESPONSE TO INTERROGATORY NO. 27:
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`In addition to its General Objections, BMW specifically objects to this Interrogatory
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`because it calls for information already in the possession, custody, or control of Plaintiffs or their
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`counsel, or that are publicly available or equally available to Plaintiffs and, therefore, are of no
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`greater burden for Plaintiffs to obtain than for BMW to obtain. BMW objects to this Interrogatory
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`as compound, and therefore counting as more than one interrogatory under Fed. R. Civ. P. 33(a)(1).
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`Subject to and without waiving the foregoing General and Specific Objections, and as
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`BMW understands the Interrogatory, BMW responds as follows:
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`BMW incorporates its Responses to Interrogatory Nos. 25 and 26.
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`BMWAG further responds that sometime in 2006 it was contacted by Toyota regarding a
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`request for information pertinent to Toyota’s litigation with Paice. However, BMWAG did not
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`learn of the Asserted Patents at that time. BMWAG notes that, between 2006 and 2012, it had no
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`commercially available hybrid vehicles. As presently advised, BMWAG’s first knowledge of the
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`Asserted Patents occurred when it received a letter to Dr. Jurgen Reul from Paice in February
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`2019.
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`BMWNA further answers that it was aware of Paice sometime in 2009 when it was asked
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`to participate in an amicus brief in the Toyota litigation. However, BMWNA did not learn of the
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`Asserted Patents at that time. As presently advised, BMWNA’s first knowledge of the Asserted
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`Patents occurred when it was sued in this case.
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`BMW further states that it is continuing to investigate the subject matter of this
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`Interrogatory and reserves the right to supplement its response if it locates any non-privileged,
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`relevant information or documents responsive to this Interrogatory in accordance with the
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`38
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`Defendants Bayerische Motoren Werke AG and BMW of North America, LLC’s
`Responses to Plaintiffs’ First Set of Interrogatories (Nos. 1-28)
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`EAST\174029981.1
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`procedures and timetables established by the Court’s Scheduling Order and the Federal Rules of
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`Civil Procedure, and after BMW has been afforded an adequate opportunity to investigate Paice’s
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`allegations through discovery in this Action.
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`INTERROGATORY NO. 28:
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`Identify and describe any internal monitoring performed by You or others on Your behalf
`of Paice or Paice’s past litigations with respect to hybrid vehicle technology, and identify all
`supporting documents and persons most knowledgeable.
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`RESPONSE TO INTERROGATORY NO. 28:
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`In addition to its General Objections, BMW specifically objects to this Interrogatory
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`because it seeks documents protected by the attorney-client privilege, attorney work product
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`doctrine, the common interest privilege, joint-defense privilege, or any other applicable privilege.
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`BMW objects to this Interrogatory because it calls for information not relevant to the claims and
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`defenses at issue in this Action nor reasonably calculated to lead to the discovery of admissible
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`evidence. BMW objects to this Interrogatory because it requests that BMW create or produce
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`information that BMW does not maintain in the ordinary course of its business or it requests that
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`BMW create or produce information in a particular format or at a particular level of detail that
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`BMW does not maintain in the ordinary course of its business. BMW objects to this Interrogatory
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`as compound, and therefore counting as more than one interrogatory under Fed. R. Civ. P. 33(a)(1).
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`Subject to and without waiving the foregoing General and Specific Objections, and as
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`BMW understands the Interrogatory, BMW responds as follows:
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`BMW is not aware of any non-privileged information responsive to this Interrogatory other
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`than as noted in its Response to Interrogatory No. 27
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`39
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`Defendants Bayerische Motoren Werke AG and BMW of North America, LLC’s
`Responses to Plaintiffs’ First Set of Interrogatories (Nos. 1-28)
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`EAST\174029981.1
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