Through the undersigned Counsel, Patent Owner, Michigan Motor Technologies LLC is submitting the follow Mandatory Notices pursuant to 37 C.F.R. § 42.9(a)(2).

Michigan Motor Technologies LLC certifies that it is the real party-in-interest as it is the owner of the Patent No. 8,909,482.

Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.01(a), Michigan Motor Technologies LLC designated the following:

Michigan Motor Technologies LLC believes this submission fulfills the requirements of 37 C.F.R. § 42.8.

If additional information is required, please contact the undersigned counsel at the address shown below.

Michigan Motor Technologies, LLC Patent Owner.

I have authority to execute this document on behalf of Mercedes-Benz USA, LLC.

Dated: June 6, 2023

Respectfully submitted, Tiffany Moore Corporate Counsel, Litigation Mercedes-Benz USA, LLC

Michigan Motor Technologies, LLC Patent Owner.

Pursuant to 37 C.F.R. § 42.10(b), Petitioner BMW of North America, LLC hereby appoints the following practitioners as back-up counsel to transact all business in the United States Patent & Trademark Office associated with the above-captioned inter partes review:

I have authority to execute this document on behalf of BMW of North America,

Respectfully submitted,

The ’894 IPR petition relied on combinations of Luff, Zuta, Breton and Hill & Lewicki, Statistics: Methods and Applications: A Comprehensive Reference for Science, Industry, and Data Mining, StatSoft, Inc., 2006 (“Hill”).

For the second prong, the Board considers whether the office materially erred in determining patentability of the challenged claims, including by overlooking a specific teaching of the relevant prior art.

Likewise, as noted by the Director, “the PTAB will not rely on the Fintiv factors to discretionarily deny institution ... where a petition presents compelling evidence of unpatentability.” USPTO Interim Procedure for Discretionary Denials, at 2.

A POSITA would understand that the code defining the machine executable instructions in Luff’s data collector device could be modified to implement an adjusted mean of the sum of deviations formula as taught by Seem to calculate Luff’s energy consumption indices.

As explained in § XI.2.g, Luff in view of Amaratunga discloses calculating an ecological parameter based on a power consumption value, i.e., the fuel flow input, and the waste production data.

Petitioner’s request for a refund of certain post-institution fees paid on May 20, 2020 in the above proceeding is hereby granted.

The amount of $15,000.00 has been refunded to Petitioner’s deposit account.

The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.

C. Related Matters The parties state that the ’482 patent was originally asserted in Michigan Motor Technologies LLC v. Volkswagen AG, Case No. 2:19-cv- 10485 (E.D.

The comparison is made by calculating “an ecological parameter as an adjusted mean of the sum of deviations of each value of power consumption measured with respect to its corresponding reference value.” Id. at 3:22–25.

In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the Supreme Court set out a framework for assessing obviousness under 35 U.S.C. § 103 that requires consideration of four factors: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope and content of the prior

First, with regard to burning wood, Luff states: The example HRCM device 302 and/or the example data collector 110 include a user interface to enter and/or adjust resource consumption information.

Based on the facts of this case, Dr. Bower’s conclusory testimony without any explanation is not sufficient to demonstrate that Luff teaches a processor that “receives the waste production data.” See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (noting that the “[l]ack of factual support” for an expert opinion “may render the testimony of little probative value”).7 For the reasons explained above, the arguments and evidence presented in the Petition fail to provide sufficient reasoning and evidence to

On June 26, 2020, Patent Owner filed a motion requesting pro hac vice admission of Robyn T. Williams.

In authorizing a motion for pro hac vice admission, the Board requires the moving party to provide a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice and an affidavit or declaration of the individual seeking to appear in the proceeding.

Based on the facts set forth in the Motion and the accompanying Affidavit, we conclude that Ms. Williams has sufficient legal and technical qualifications to represent Patent Owner in this proceeding, and has demonstrated sufficient familiarity with the subject matter of this proceeding.

Accordingly, Patent Owner has established good cause for pro hac vice admission of Ms. Williams.

In consideration of the foregoing, it is hereby ORDERED that Patent Owner’s Motion for pro hac vice admission of Robyn T. Williams is granted; FURTHER ORDERED that Patent Owner shall continue to have a registered practitioner represent it as lead counsel for this proceeding, but

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.

Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.

If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, mediation, etc.) was used and the general result.

Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.

The fee for this disclaimer is set forth in 37 CFR 1.20(d) and is being paid in the following manner: ☐ payment by the USPTO patent electronic filing system.

estimated to average 12 minutes per response, including the time for reviewing instructions, searching existing data sources, gathering and

6) a court, magistrate, or administrative tribunal, in the course of presenting evidence, including disclosures to opposing counsel in the course of settlement negotiations;

If you do not furnish the information requested on this form, the USPTO may not be able to process and/or examine your submission, which may result in termination of proceedings, abandonment of the application, and/or expiration of the patent.