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`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 and
`BMW OF NORTH AMERICA, LLC,
`Petitioners,
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`v.
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`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owners.
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`Case IPR2020-01386
`Patent 7,237,634
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`PATENT OWNERS’ SUR-REPLY TO PETITIONERS’ REPLY TO
`PATENT OWNERS’ PRELIMINARY RESPONSE
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`Attorney Docket: 36351-0018IP1
`Case IPR2020-01386
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
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`A. General Plastic Factors Favor Denial of Institution .............................. 3
`General Plastic Factor 1 ...................................................................... 3
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`General Plastic Factor 3 ...................................................................... 5
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`General Plastic Factors 2, 4, and 5 ..................................................... 6
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`General Plastic Factors 6 and 7 .......................................................... 7
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`B. Additional Factors Favor Denial ........................................................... 7
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`Attorney Docket: 36351-0018IP1
`Case IPR2020-01386
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`INTRODUCTION
`For the reasons stated in Patent Owners’ Preliminary Response, the General
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`Plastic factors and fundamental fairness support denial of institution. By filing what
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`amounts to the 27th attack against the ’634 patent, BMW intentionally seeks to derive
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`a strategic advantage by studying the earlier petitions and the subsequent Patent
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`Owner Preliminary Responses and Board decisions. BMW does not contest that it
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`used the earlier Ford and VW petitions as menus from which to pick and choose its
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`prior art and arguments. Nor does it dispute that it modified its grounds in response
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`to Patent Owners’ prior responses and the Board’s prior institution decisions. This
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`is precisely what the General Factors analysis seeks to prohibit.
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`What is more, BMW seeks to benefit from prior petitioners’ unabated
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`harassment of Patent Owners. BMW engages in revisionist history, attributing the
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`shocking number of previous petitions against the ’634 patent to the ’634 patent’s
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`large number of patent claims. In doing so, BMW ignores the fact that prior
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`petitioners filed serial petition after petition challenging many of the same claims in
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`clear violation of General Plastic. For example, prior petitioner Ford filed waves
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`of IPRs on June 2014, September 2014, and January/February 2015 strategically
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`orchestrated to derive the benefits of Patent Owners’ Preliminary Responses and the
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`Board’s Institution Decisions. Ford’s three waves of IPRs—totaling thirteen
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`separate petitions—challenged the same claims multiple times (some claims as many
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`1
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`as seven times). (Ex. 2003 (IPR2015-00791 POPR), 28-36; id., Ex. 2401 (Summary
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`Case IPR2020-01386
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`of Ford’s IPR Petitions).) Patent Owners repeatedly argued that Ford’s strategy was
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`abusive and fundamentally unfair pointing to the same considerations recognized in
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`General Plastic two years later. (See, e.g., Ex. 2003 (IPR2015-00791 POPR), 28-
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`36.) While Patent Owners’ arguments were unsuccessful at the time, BMW should
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`not be able to benefit from this previous harassment.
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`There is nothing efficient or fair about BMW’s Petition. BMW’s improper
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`roadmapping is pervasive. In total, 19 of the 36 challenged claims were previously
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`subject to IPR. The Board denied institution of 18 challenged claims (33-44, 46, 50,
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`52-55). (BMW1060, 6-8, 16-17; BMW1061, 7-9, 14-15; BMW1062, 7-9, 15-16).
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`Additionally, the Federal Circuit remanded one challenged claim (68) after final
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`written decision. See IPR2015‐00606.1 There is no dispute that the majority of
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`challenged claims were unsuccessfully challenged via IPR. Despite this, BMW
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`devotes eight of its remaining 14 grounds to claims the Board already considered.
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`If BMW had any interest in efficiency or fairness, it would have only brought
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`1 As BMW concedes in its reply, BMW’s Petition assertion that “[n]one of Claims
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`37, 44, or 202” have been subject to IPR is incorrect. Petition, 6; Reply, fn. 2.
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`Claims 37 and 44 were subject to IPR petitions, both of which did not institute.
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`See IPR2015‐00791; IPR2015‐00722.
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`2
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`IPR against the previously unchallenged claims. Having failed to do so, BMW’s
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`Petition runs squarely into 314(a) and General Plastic, which considers “the
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`potential impacts on both the efficiency of the inter partes review process and the
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`fundamental fairness of the process for all parties.” General Plastic at 18.
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`BMW’s effort to escape scrutiny by cabining the reach of the Board’s
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`precedential decisions in General Plastic and Valve I & II to artificially narrow fact
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`patterns is barred by the Board’s contrary view of these decisions. As the Board
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`explained in the Consolidated Trial Practice Guide, General Plastic is “not intended
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`to represent all situations where it may be appropriate to deny a petition.” CTPG at
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`58 (emphasis added throughout). The fact pattern here presents the same
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`fundamental fairness concerns that led to denial in all three of the Board’s
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`precedential decisions. Like the petitioners in General Plastic and Valve I & II,
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`BMW attempts to reap a “benefit from receiving and having the opportunity to study
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`[Patent Owners’] Preliminary Response, as well as [the Board’s] institution
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`decisions.” General Plastic at 17. This tactic is abusive, especially in view of the
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`vast number of serial petitions that precede the petition BMW filed. See Valve I at
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`12-13 (using the Board’s institution decision “as a roadmap for the Petition” is unfair
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`and favors denial); Valve II at 12-13 (same).
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`A. General Plastic Factors Favor Denial of Institution
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`General Plastic Factor 1: BMW’s reply turns a blind eye to the Valve cases,
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`3
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`which instructs the Board to “consider any relationship” between different
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`petitioners that raise serial challenges against the same patent. Valve I at 2, 9; Valve
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`II at 2, 10. This guidance directly rebuts BMW’s argument that Factor 1 favors
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`institution because BMW and previous petitioners like Ford and VW are not co-
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`defendants like in Valve. See Reply at 3. A more nuanced analysis is required to
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`determine if the relationship at hand is “significant.” Valve I at 10; Valve II at 11.
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`Here, it is. BMW “implicitly created” a significant relationship with Ford and VW
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`as to the ’634 patent by leveraging Ford’s and VW’s previous patentability analysis
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`and hiring Ford’s expert who undoubtedly shared his inside knowledge with BMW
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`in an effort to improve BMW’s Petition. See POPR, 12-13 (citing Ericsson Inc. v.
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`Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 12 (PTAB Mar. 17, 2020)). This tacit
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`cooperation is comparable to what occurs amongst similarly situated co-defendants
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`in litigation who share work product and witnesses in opposition to the plaintiff.
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`As in Ericsson, “[BMW’s] decision to use the prior petitions as a roadmap for
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`its own petition ties the interests of all of the petitioners together.” IPR2019-01550,
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`Paper 8 at 12. BMW used the Ford IPRs as a roadmap by taking the art from the
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`Ford IPRs that invalidated certain independent claims (e.g., 1, 80, and 114) and
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`jettisoning the art that failed to invalidate independent claim 33 and its dependent
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`claims. See POPR, 10-12. BMW then modified Ford’s grounds by adding art from
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`the VW petition in an attempt to address Patent Owners’ claim construction
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`4
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`arguments. Id. Ericsson’s directly-on-point reasoning is consistent with the Valve
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`I & II precedent that the Board must consider “any relationship” between petitioners
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`lodging serial challenges. Valve I at 2, 9; Valve II at 2, 10.
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`BMW’s only basis for distinguishing Ericsson is the fact that BMW also
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`challenges claims that were not previously challenged. But this difference is
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`ultimately immaterial. BMW’s Petition largely focuses on attacking 19 claims,
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`which were previously subject to IPR. BMW devotes eight grounds to attacking
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`these claims and asserts three different prior art combinations against independent
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`claim 33, which the Board refused to institute on three separate occasions. Petition,
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`11; BMW1060, 6-8, 16-17; BMW1061, 7-9, 14-15; BMW1062, 7-9, 15-16. BMW’s
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`secondary attack on additional claims does not excuse the redundant and abusive
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`nature of BMW’s Petition. Nor does it provide BMW with the “get out of jail free
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`card” that it seeks. See PayPal Inc. v. IOENGINE, LLC, IPR2019-00884, Paper No.
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`22 at 12 (October 3, 2019) (finding that the existence of non-overlapping claims
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`between the instant and earlier petitions not sufficient to tip the first factor to favor
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`institution). And as set forth in the POPR, the Grounds against these additional
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`claims are weak on the merits further counseling against institution. POPR, 19-20.
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`General Plastic Factor 3: BMW’s Petition is replete with instances of
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`improper roadmapping. As to independent claim 33 and its dependents, BMW
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`draws attention to the differences between its grounds and Ford’s previously rejected
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`5
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`grounds. Reply, 6. BMW, however, fails to explain how it made these modifications
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`by reviewing Patent Owners’ responses and the Board’s institution and final written
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`decisions in the previous IPR proceedings. POPR, 10-12. For example, during the
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`prior Ford IPRs, Patent Owners argued that the Ibaraki prior art reference on which
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`Ford relied did not disclose “monitor[ing] patterns of vehicle operation over time”
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`as properly construed and the Board agreed. (BMW1060, 6-8, 16-17; BMW1061,
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`7-9, 14-15; BMW1062, 7-9, 15-16). It is clear that BMW reviewed Patent Owners’
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`arguments and attempted to address them by taking Severinsky from Ford’s other
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`petitions against the ’634 patent and combining it with Graf from VW’s petition.
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`POPR, 10-12. This is exactly the roadmapping that General Plastic seeks to prevent.
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`See General Plastic at 17 (“[W]e are concerned here by the shifts in the prior art
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`asserted and the related arguments in follow-on petitions.”). The Board should not
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`countenance BMW’s unfair tactics. Factor 3 favors denial.
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`General Plastic Factors 2, 4, and 5: BMW does not dispute that it was aware
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`of the ’634 patent and the prior art at the time of the earlier Ford and VW petitions.
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`Nevertheless, BMW claims it had no reason to file its Petition until Patent Owners
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`filed suit in November 2019. But BMW cannot claim that its interests were not
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`aligned with Ford and VW. Like Ford and VW, BMW worked with Paice in the
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`early 2000’s and benefited from Paice’s patented technology. And prior to Ford’s
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`and VW’s earlier petitions, BMW had been closely monitoring Patent Owners and
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`6
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`prior actions involving Patent Owners. POPR, 15. Moreover, the Board’s rules do
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`Case IPR2020-01386
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`not require filing of suit against a party before that party may file a petition for IPR.
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`These factors favor denial.
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`General Plastic Factors 6 and 7: The Board’s resources are finite, and its
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`timeline for review is condensed. There is no room for BMW’s follow-on petition
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`that games the system by combining art from other parties’ petitions after Patent
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`Owners have revealed their defenses and the Board issued its decisions.
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`B. Additional Factors Favor Denial
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`Fairness further counsels against institution. BMW claims it is not intending
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`to harass Patent Owners with its 27th attack on the ’634 patent. Yet it brings eight
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`grounds against claims that have already been unsuccessfully challenged. If BMW
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`had any interest in fairness, it would have refrained from these redundant and
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`prejudicial attacks. By failing to do so, BMW seeks to benefit from serial attacks
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`that were previously allowed to proceed against Patent Owners prior to the Board
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`making General Plastic precedential. On the other hand, BMW suffers no prejudice
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`if the Board denies institution. BMW is free to present the identical ground in the
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`co-pending district court proceeding. Consideration of the previous IPR
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`proceedings, the redundant nature of BMW’s Petition, and the flaws on the merits
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`set forth in the POPR all counsel for denial under 35 U.S.C. §314(a). POPR, 17-20.
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`The Board should exercise its discretion to deny institution.
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`7
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`Date: December 16, 2020
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`Attorney Docket: 36351-0018IP1
`Case IPR2020-01386
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`Respectfully submitted,
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`/Brian J. Livedalen/
`Ruffin B. Cordell, Reg. No. 33,487
`Indranil Mukerji, Reg. No. 46,944
`Timothy W. Riffe, Reg. No. 43,881
`Brian J. Livedalen, Reg. No. 67,450
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
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`Attorney Docket: 36351-0018IP1
`Case IPR2020-01386
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on December
`16, 2020, a complete and entire copy of this Patent Owners’ Sur-Reply to
`Petitioners’ Reply to Patent Owners’ Preliminary Response was provided via
`email, to Petitioners by serving the email correspondence addresses of record as
`follows:
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`Jeffrey D. Sanok
`Vincent J. Galluzzo
`Crowell & Moring LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
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`Scott L. Bittman
`Jacob Z. Zambrzycki
`Crowell & Moring LLP
`Intellectual Property Group
`590 Madison Avenue, 20th Floor
`New York, NY 10022-2544
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`Email: jsanok@crowell.com
`Email: vgalluzzo@crowell.com
`Email: sbittman@crowell.com
`Email: jzambrzycki@crowell.com
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`/Jessica K. Detko/
`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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