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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BMW OF NORTH AMERICA, LLC, and
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT,
`Petitioner,
`
`v.
`
`THEODORE & ASSOCIATES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
`____________
`
`Record of Oral Hearing
`Held: August 15, 2018
`____________
`
`
`
`
`Before MITCHELL G. WEATHERLY, FRANCES L. IPPOLITO, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`
`
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`

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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JONATHON L. LINDSAY, ESQUIRE
`JEFFREY D. SANOK, ESQUIRE
`Crowell Moring
`1001 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`THOMAS E. BEJIN, ESQUIRE
`Bejin Bieneman, PLC
`2000 Town Center
`Suite 800
`Southfield, MI 48075
`
`SCOTT M. DANIELS
`Westerman, Hattori, Daniels & Adrian LLP
`1250 Connecticut Avenue, NW
`Suite 700
`Washington, DC 20036
`
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday, August
`15, 2018, commencing at 1 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`
`P R O C E E D I N G S
`- - - - -
`JUDGE WEATHERLY: Good afternoon. Please be seated. If you'll
`give us a moment also to get our computers awakened. Are you ready?
`Excellent, thank you. So this is a hearing for two proceedings, IPR2017-
`01379 and IPR2017-01380, both of which relate to U.S. Patent No.
`9,045,163. Petitioner is BMW North America, LLC among others, I'm not
`going to try to pronounce the German entity's name even though I took
`German in college, and Patent Owner is Theodore & Associates, LLC.
`I'm Judge Weatherly and I'm joined here to my left by Judge
`O'Hanlon and we're joined remotely by Judge Ippolito out on the West
`Coast. Because the camera through which Judge Ippolito is viewing the
`proceedings is mounted I believe behind me if you're addressing her you
`may want to look at the camera instead of me, it might make her feel a little
`more welcome and comfortable, more natural for her. Also when you're
`addressing slides during the presentation please be sure to let us know what
`slide number you're on. I can see the slide number and I think Judge
`O'Hanlon can see it, Judge Ippolito can't. It also makes the transcript much
`easier for us to use after the fact.
`Pursuant to our Hearing Order, each party is going to have 60 minutes
`to present its argument today. Because of the similarity of the issues in the
`case we're going to do the argument in a combined way and I see the
`demonstrative exhibits have been prepared that way, so that's good.
`Petitioner will open because it bears the burden of persuasion. Patent
`Owner, you'll have a chance to respond and Petitioner you can reserve time
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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`for a rebuttal that should be limited to addressing issues that are raised by
`the Patent Owner during its presentation.
`Before we begin I'd like to have everyone introduce themselves,
`starting with the Petitioner including anybody that you've brought along with
`you.
`
`MR. LINDSAY: Thank you, Your Honor. Jonathan Lindsay for
`Petitioner. I'll be arguing today.
`JUDGE WEATHERLY: Excellent.
`MR. LINDSAY: This is Jeff Santok.
`JUDGE WEATHERLY: Okay. And Patent Owner.
`MR. BEJIN: Good afternoon. Tom Bejin from Bejin Bieneman on
`behalf of Theodore & Associates. With me is Scott Daniels from
`Westerman Hattori. We have also Chris Theodore and his wife, Tracey
`Theodore.
`JUDGE WEATHERLY: Thanks very much. Does either party want
`to address any of the Motions to Exclude or any objections that have been
`filed to the demonstratives before we get into the substance? I'm sort of
`hoping no to take my hand a little bit about that.
`MR. LINDSAY: Not for Petitioner.
`JUDGE WEATHERLY: But I don't want to stop anyone from
`making a presentation if they want to.
`MR. BEJIN: We have one request --
`JUDGE WEATHERLY: Sure.
`MR. BEJIN: -- for consideration. On Friday the new guidelines were
`issued and we raised it with opposing counsel down in the cafeteria
`beforehand.
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`Case IPR2017-01379 (Patent 9,045,163 B2)
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`
`JUDGE WEATHERLY: Okay.
`MR. BEJIN: Relative to a request that the Patent Owner receives a
`modest surrebuttal, so the new guidelines would allow a surreply brief. We
`had asked for a surreply brief relative to --
`JUDGE WEATHERLY: I recall.
`MR. BEJIN: -- kind of an unusual supplemental declaration that was
`submitted and I think under the guidelines that was denied properly at that
`time but the Law 360 article that I read this morning in the guidelines
`suggested that the Board would have authority to grant surrebuttals. So I
`wanted --
`JUDGE WEATHERLY: By surrebuttal do you mean to refer to a
`surreply brief?
`MR. BEINI: No, I mean the last word.
`JUDGE WEATHERLY: The last word during the hearing?
`MR. BEJIN: Yes. So that's what was discussed in the 72 hours of
`commentary about the --
`JUDGE WEATHERLY: Sure.
`MR. BEJIN: -- new guidelines that was raised, we had asked for the
`surreply before and so as a replacement we're seeking --
`JUDGE WEATHERLY: You'd like to have the last word today.
`MR. BEJIN: We'd like to have the last word.
`JUDGE WEATHERLY: And you discussed it with Petitioner's
`counsel?
`MR. BEJIN: Yes, sir.
`JUDGE WEATHERLY: Okay. And what's your position, if
`anything, on that?
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`Case IPR2017-01379 (Patent 9,045,163 B2)
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`
`MR. LINDSAY: Thank you, Your Honor. We're not sure it's
`appropriate in this case so our understanding, again, there hasn't been a lot of
`discussion on this, is that the new surreply would be taking the place of a
`Motion for Observation and that the surrebuttal would kind of coincide with
`that surreply, right, so you have some symmetry there. But in our case there
`were no Motions for Observations. There was no deposition of the reply
`declarant and so there shouldn't be any arguments to be made in a surrebuttal
`since there were no, again, Motions for Observation which we understand
`would be preceded now by a surreply.
`
`JUDGE WEATHERLY: I understand. I'm not inclined to have the
`Patent Owner have the last word here. Are there any Motions to Amend on
`the table, there's really no burden of persuasion here carrying. I'd rather do it
`along the lines of more traditional party with the burden having the last
`word. I may be speaking out of school a little bit. I have one vote on this
`panel, not three, so if either of my colleagues would like to alter the order of
`things for the hearing, please let me know.
`
`JUDGE O'HANLON: No, no I don't.
`
`JUDGE WEATHERLY: Judge Ippolito?
`
`JUDGE IPPOLITO: Not from me.
`
`JUDGE WEATHERLY: Okay. I'll put it this way. If you were to
`have another word after rebuttal from the Petitioner, my inclination would
`want to be to go back to the Petitioner and give them an opportunity --
`
`MR. BEJIN: Understood.
`
`JUDGE WEATHERLY: -- to have the last word. I also will let you
`know that it's very important for me -- and I think this is a common theme
`among my colleagues generally, not just the ones here with us on this panel -
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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`- that we all want the record to be as deep as the parties want it to be. So I
`guess what I'm inviting you to do is if there's something that's really burning,
`I'm not going to stop you from getting up but I'm typically going to let both
`parties have a say, and my inclination is to give the Petitioner the last word
`on things for which they bear the burden of persuasion.
`
`MR. BEJIN: Very good.
`
`JUDGE WEATHERLY: Okay? So, Petitioner do you have a sense
`of how much time you'd like to reserve for your rebuttal?
`
`MR. LINDSAY: Yes, Your Honor. We'd like to attempt to reserve
`20 minutes.
`
`JUDGE WEATHERLY: So you want to open with a 40 minute
`argument period. Okay. So any time whenever you're ready you can come
`to the podium and begin.
`
`MR. LINDSAY: Okay. Just want to make sure my slides are
`working. Shall I begin?
`
`JUDGE WEATHERLY: Any time you're ready.
`
`MR. LINDSAY: Okay. Well thank you, Your Honors. The
`challenged patent in this case, the ’163 patent, is the product of two CIPs,
`each of which added various new features to Mr. Theodore's original chassis
`idea, trivial features for the most part, while at the same time stripping out
`the very features that Mr. Theodore had touted as being important to the
`invention. The effect of this is that the challenged claims are not patentable.
`
`I'm going to fast forward to slide 7 if I could. Here we see the
`disclosed uni-chassis of the ʽ163 patent. It's claimed in simple terms. It has
`a backbone structure connecting front structure 14 and rear structure 16.
`There's an energy storage compartment inside that backbone structure.
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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`On slide 8 we see that the ʽ163 patent discloses the chassis as being a
`
`simple chassis. It also says it's a complete self-supporting chassis and by
`virtue of these front and rear suspensions being rigidly affixed to these front
`and rear structures that we saw, there are suspension loads stressing the
`engine block and the transaxle case and that's a concept that's important to
`the ʽ163 patent because it's how it achieves its frameless design. It was
`touted by Mr. Theodore in his prototype unveiling. It's a video Exhibit
`1051, and in the press release on his website, Exhibit 1053, and it was also
`included in all of the apparatus claims of the parent case, the 268 case. But
`this is one feature that finds no place in the ʽ163 patent claims. Instead the
`Patent Owner is going to be largely relying on trivial features like service
`plates, fluid lines and wires.
`
`So I'll fast forward to slide 13, if I could, just to do a quick summary
`of the claims at issue. There were originally 42 claims that were challenged.
`Many of those were disclaimed including the broadest claims and we're left
`with 27 claims remaining in the challenge.
`
`Slide 14 is a summary of the first IPR 01379 Gastesi-based challenge
`and one thing I note here is Gastesi was filed ten years before the earliest
`priority date to which the ʽ163 patent claims priority, while Berghauer was
`filed about 15 years before. So these references represent teachings and
`technology that were very mature by the time the ʽ163 patent came along.
`We're going to talk about these various claims but before we do that
`we wanted to briefly show on slide 15 how Gastesi's chassis perfectly
`parallels what is now disclaimed claim 1 but since these feature are going to
`be in claim 6, we wanted to briefly show -- I would use my pointer but
`unfortunately it's ineffective on this screen. So we have a central backbone
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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`structure in the form of member B, the B was cut off of the side of the screen
`there, apologies for that. First structure that includes an engine, that's a front
`structure A. A second structure, which is the rear structure, having a
`transaxle and Gastesi tells us that that central backbone structure there
`transmits the majority of those loads between the front and the rear.
`So I'll go ahead to slide 17, and to say that, for the most part, Patent
`Owners don't take issue with what I just said with one exception. The
`exception is that they take the position that the central backbone structure of
`Gastesi does not connect to the front structure but rather connects to the
`engine and the reason that's the case is because if you look at the left side
`there, sub element A1 is disclosed as containing the -- may contain the
`engine and their position is well that's what the backbone is connecting to.
`But that's not what Gastesi tells us. It tells us that the whole front structure
`is A, and that it may be subdivided into A1 and A2, and that's actually
`exactly what we see with the ʽ163 patent and the uni-chassis there. If you
`superimpose the labeling system on the left there, you see that the front
`structure 14 of the uni-chassis of the ʽ163 patent does the same thing.
`Instead of calling it A1 it calls it subframe 34 and that's where the engine is.
`We know that's where the engine is because those are engine mounts ZZ that
`are highlighted there in green, and the next figure 2A will actually have that
`engine in there. So you see that it perfectly parallels the structure where you
`have the front part of which is taken up by the engine just like Gastesi
`shows.
`So back to our summary of the grounds. This is slide 18. We first
`want to talk about claim 6 which is the service claim. This claim essentially
`adds a service plate to the backbone structure. There isn't anything novel of
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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`unique about the service plate. The Patent Owner in his Patent Owner
`response points to plate 88, figure 4, as being the service plate and it's our
`position for the petition that it would have been obvious to add a service
`plate to Gastesi's backbone. It would have been obvious because it's well
`known to use service plates in this fashion and the fact is Gastesi was
`already in possession of the value of using service plates in the form of its
`removable bottom plate so it understood the need to provide access. It
`anticipated the way to do that and doing this would have provided a nice
`easy inexpensive way to get access to the components that are inside
`Gastesi's backbone, fuel tank, transmission shaft, and so forth.
`So on slide 20 we see the Patent Owner's response is that, well, first
`Gastesi's bottom plate, that's on the body not the backbone. Well that's not
`our position. We're relying on an additional service plate on the backbone,
`not Gastesi's bottom plate 36. They also say, well, there would be no reason
`to add a service plate to Gastesi because the fuel tank would be adjacent to
`the engine and this argument I guess is based on the fact that the opening at
`the end of the backbone would provide easy access but there's no reason to
`believe that Gastesi's fuel tank would be adjacent to the engine. Both the
`experts agree that it could be anywhere within that.
`JUDGE WEATHERLY: Well and you'd also have to take the chassis
`apart to get to that opening.
`MR. LINDSAY: Exactly. Once it's assembled --
`JUDGE WEATHERLY: And split it in two essentially, right?
`MR. LINDSAY: Exactly, exactly. So we believe there would be
`plenty of reasons to have a service plate to access the contents therein.
`Their final argument is the notion that this would introduce an additional
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`Case IPR2017-01379 (Patent 9,045,163 B2)
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`leak path but this ignores the fact that Gastesi discloses a separate fuel tank,
`fuel tank 22, as being in there so there would be no additional impact there.
`So that's why we think claim 6 is obvious in view of Gastesi. This is
`slide 21. The next claim is the fluid fuel line in the backbone and, again,
`nothing special about the fluid fuel line. There's no indication that the
`inventor invented a new or novel way of delivering fuel to an engine, it just
`simply adds a fuel line in the backbone and here again we think it would be
`obvious for Gastesi to have such a fuel line because you would be motivated
`to offset that fuel tank somewhat from the engine so this would reduce the
`risk of fire and so forth so you don't have your fuel tank right up touching
`the engine and once you do that you have a fuel line then within the
`backbone structure and so I think that would have been an obvious choice in
`Gastesi to have that fuel line running between offset fuel tank and the
`engine.
`So on slide 23 we see the Patent Owner's response to that is again this
`notion of the fuel tank being adjacent to the engine. We believe that has no
`merit. There's also the idea that offsetting the engine would disrupt
`handling. Now there's no rationale or reasoning other than the conclusion
`itself to suggest that would happen. However if anything we would think
`that it would be better for purposes of your center of gravity to displace the
`fuel tank from the engine so you don't have all that weight at one end of the
`vehicle, fuel tank plus engine.
`JUDGE WEATHERLY: You know, I'll say just generally one of the
`things that's most frustrating to me about this case is so much of the
`argument is based on either attorney's arguments that's not supported by
`evidence or what I refer to as kind of bald expert testimony, testimony that
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`Case IPR2017-01379 (Patent 9,045,163 B2)
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`frankly looks like it's been written by a lawyer and signed by an expert
`without citing evidence to support their conclusions. And the reason I'm
`interrupting with that thought is because that's what I'm hearing from you.
`That's what it sounds -- feels like I'm hearing from you right now, a lot of I
`think this, I think that. If it's possible for you to focus on the evidence that
`you're marshalling to support the arguments that you're making, I think that's
`going to be most helpful for the panel. I mean the papers do that to some
`extent and ultimately that's what's going to determine the outcome frankly.
`But for the hearing I think my preference is to be talking about evidence
`rather than speculation or opinions, or what sounds like speculation or
`opinions.
`MR. LINDSAY: Okay, Your Honor.
`JUDGE WEATHERLY: And I don't intend any disrespect by that.
`I'm trying to let you, sort of behind the curtain to some extent --
`MR. LINDSAY: Sure.
`JUDGE WEATHERLY: -- to let you know how my mind works and
`what my preferences are for hearings.
`MR. LINDSAY: Right. Understood and I certainly appreciate that.
`JUDGE WEATHERLY: Sure.
`MR. LINDSAY: And in this case I'll also mention that in terms of the
`evidence, Mr. Kunselman agreed that there is no teaching in Gastesi that
`would limit that fuel tank to being anywhere within the backbone when it
`could be anywhere. So if you were the, you know, design choice or obvious
`to try case law I think putting it anywhere within there would include in the
`middle of it, or offset, or otherwise, but I appreciate your point
`(indiscernible.)
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`Case IPR2017-01379 (Patent 9,045,163 B2)
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`
`JUDGE WEATHERLY: I mean, so here's what -- I'll let you behind
`the curtain a little bit more -- here's what prompted me to sort of interrupt.
`You know, to locate a fuel tank inside of a chassis for weight distribution
`purposes is going to depend completely on what the other components of the
`car weigh and what you -- where you want the CG to be.
`MR. LINDSAY: Right.
`JUDGE WEATHERLY: So it's very difficult to argue, as you did,
`that you would move it to a particular location --
`MR. LINDSAY: Right.
`JUDGE WEATHERLY: -- in connection with a reference that quite
`frankly describes concepts in a very schematic sort of way. I think that to
`some extent is a criticism that you could level at every single document
`involved in this case with some exceptions.
`MR. LINDSAY: So our position would be it's actually the Patent
`Owner that's arguing for a specific location.
`JUDGE WEATHERLY: Uh-huh.
`MR. LINDSAY: We are arguing for any of a number of locations.
`JUDGE WEATHERLY: Fair enough.
`MR. LINDSAY: Yes. Okay. The final argument is the fuel line
`would take up too much space and here the reference itself says that the
`inside of its backbone can be used for additional purposes, it's in the
`reference so there's no reason to believe it would be a space constraint.
`The next category of claims are claims that basically add batteries or
`electric motor type limitations to the claims. Some of these claims also have
`the service plate and fuel line that we're talking about, but we've talked about
`those so we won't go over those again.
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`Case IPR2017-01379 (Patent 9,045,163 B2)
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`The next category of claims are claims that are have a redline through
`them. Those are the vehicle configuration claims and for all the reasons in
`the petition we believe those claims are obvious over Gastesi in view of
`Berghauer. The Patent Owner has made no attempt to address those
`arguments and so --
`JUDGE WEATHERLY: Well, I was going to wait until the Patent
`Owner got up and I'll ask them for their input on this. But by my own
`examination I had difficulty finding any argument from the Patent Owner. I
`did find argument in connection with claim 43 so I'm not sure I agree with
`your strikethrough of claim 43, but independent claim 44 and all its
`dependent claims I didn't find those claims to be addressed at all in the
`Patent Owner response and, as I said, Patent Owner will have a chance to
`correct me if I'm wrong, which I often am. Claim 35 I didn't see addressed
`in the 1379 case either. I saw it addressed in the 1380 case. So what do you
`have to say about 43? Do you agree with me that the strikethrough on 43 on
`this slide is --
`MR. LINDSAY: No, I don't agree --
`JUDGE WEATHERLY: -- incorrect?
`MR. LINDSAY: -- because 43 includes limitations relating to --
`JUDGE WEATHERLY: And 43 is an independent claim, right?
`MR. LINDSAY: 43 is an independent claim and the last limitation
`there is the spine is universally adapted to fit in different vehicle
`configurations including front wheel and rear wheel without change. They
`address the --
`JUDGE IPPOLITO: Counsel, I can't hear you. Can you move to the
`podium? Thank you.
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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`MR. LINDSAY: I apologize. So 43's last element is going to the
`vehicle configuration limitation which they do not argue. They do mention I
`believe the electrical wire and they lump 43 into that discussion, but in terms
`of dealing with that particular limitation which is the subject of 44 on, that's
`why we looped them together was because the vehicle configuration
`limitation was unaddressed.
`JUDGE WEATHERLY: Okay. I understand better. Thank you.
`MR. LINDSAY: So with respect to the combination of Berghauer
`and Gastesi, we take a quick look at Berghauer and what it teaches. What it
`shows is that you can't put batteries down --
`JUDGE WEATHERLY: We're on slide 25 now, right?
`MR. LINDSAY: Right.
`JUDGE WEATHERLY: I know it's hard to remember to indicate the
`slide number.
`MR. LINDSAY: I was doing good up to that point.
`JUDGE WEATHERLY: You were doing great.
`MR. LINDSAY: So the batteries there are spanning from the front of
`the vehicle to the back of the vehicle and they're in what Gastesi calls -- I'm
`sorry, what Berghauer calls a support body which is its backbone and those
`are driving the electric motor, and that's figure 16 I was describing.
`Now what we say about the combination on slide 26 is that you would
`have been motivated to use Berghauer's electric drive and the batteries in
`combination with Gastesi's rolling chassis to expand its use cases so that it
`could be available in other types of vehicles like electric vehicles for
`example. In response to that the Patent Owner takes issue with that and
`makes a few points.
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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`On slide 27 it first says well Berghauer does not disclose a chassis.
`We'll certainly talk about that. Beyond that, their arguments basically
`revolve around motivation to combination and we think those fail, and we'll
`certainly tick down through those. But first with respect to Berghauer's
`chassis the fact is that our combination doesn't require any particular chassis
`arrangement in Berghauer. Rather, it's the teachings of the placement of the
`batteries with the electric motor and the power train configuration that's
`being used with Gastesi's chassis, and even beyond that there's no dispute in
`this case based on the testimony of both experts that a fully constructed
`Berghauer vehicle would have a chassis as do all vehicles and that that
`support pipe would be part of that chassis. So I just wanted to mention that
`as well.
`With respect to the motivation to combine arguments, the first point
`relates to this commercial viability point and what they erroneously focused
`on is whether Gastesi sold any of his vehicles or whether Berghauer's design
`was ever commercially used. In our view that's not the proper inquiry.
`What our actual motivation is set forth in the petition is to increase the
`commercial viability of Gastesi's design by making it, again, available across
`more use cases and that this is generally desirable in the automotive arts.
`So you don't have to just take Mr. Parker's word for that because you
`can look at the patent itself. The patent itself acknowledges that it's a known
`desire to use the chassis across more types of vehicle, something that Mr.
`Kunselman also agreed with. Our position is that the commercial viability
`of this individual reference of whether Gastesi sold one or not is not
`pertinent. It's not relevant to the analysis.
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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`The next argument that the Patent Owner makes is the allegation that
`Gastesi discloses only a load bearing engine. In that context we don't agree.
`It has two embodiments, one non-load bearing, one load bearing. In the
`petition we specifically relied on figure 1 which is a non-load bearing
`embodiment and in their Patent Owner response they focus only on the
`figure 2 which is the load bearing embodiment.
`JUDGE WEATHERLY: And on this slide 32, my understanding of
`your label of non-load bearing is that you mean the transaxle and the engine
`are not load bearing elements in that chassis?
`MR. LINDSAY: Correct.
`JUDGE WEATHERLY: All right. I see.
`MR. LINDSAY: Yes, correct. And so if we look at the specification
`of Gastesi it talks about figure 1. It says in that case that the engine is
`attached to the chassis it certainly has to be, but there's no other description
`or suggestion that that engine is attached to the backbone or that it's
`otherwise being used as a structural component. You can look at the
`suspension attachment points, are completely in these two figures as well.
`But when you get to -- sorry, I'm on slide 34 -- when you get to the
`description of figure 2 here you do see the language of stressing the engine
`or being load-bearing as we've been talking about. The backbone structure
`is connected, is the middle bullet point, to the rear of the engine. It's also
`connected to the front of the transmission. This engine is useful as a
`structural component of the chassis 11 in this embodiment. This is its
`preferred embodiment but certainly not its only embodiment.
`Finally the Patent Owner takes the position that Berghauer teaches
`away from inline engines, the allegation --
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`Case IPR2017-01379 (Patent 9,045,163 B2)
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`JUDGE WEATHERLY: Inline being an engine used as a structural
`member in the chassis? That's, I think is that what -- well, I'll let them
`(indiscernible.)
`MR. LINDSAY: They can -- I suppose they want to address that
`themselves. Our understanding was it had to do with more whether it was a
`cantilevered engine or an inline engine, not offset (indiscernible.)
`JUDGE WEATHERLY: Oh, I see. Okay.
`MR. LINDSAY: And in our view the Patent Owner is just getting
`that wrong. They're looking at it backwards. The challenge starts with
`Gastesi, not Berghauer, and it's Berghauer's engine or motor I suppose that's
`being incorporated into Gastesi so to the extent that Berghauer shows a
`preference for an engine, that's fine, that's embraced by the combinations,
`not contradicted by it and that was slide 36.
`The next set of claims are the T-shaped backbone claims on slide 38
`we wanted to address briefly. For these, I want to look at a representative
`claim. Here we have longitudinal lateral crossing sections of that backbone
`that look like a T. Our view is that this was known and it was known by
`General Motors, in particular in the EV1 which describes its battery pack as
`-- and this is slide 40 -- its battery pack as being in a T-shaped compartment.
`So the orientation of those batteries and that shape, it was known. Their
`position is that the EV1 does not have a T-shaped backbone but as we were
`talking about a moment ago, the combination does not rely on any particular
`chassis arrangement of the EV1. It's still Gastesi's chassis. It's the idea of
`shaping batteries in a T-shape or orienting them in a T-shape, and here I
`think it's important to note that the Patent Owner never makes the argument
`that you can't take Gastesi's backbone and alter its configuration to be in a T-
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`Case IPR2017-01379 (Patent 9,045,163 B2)
`Case IPR2017-01380 (Patent 9,045,163 B2)
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`shape. The argument is looking at the secondary reference requiring bodily
`incorporation of that chassis into Gastesi, which is not what we were
`proposing, and that's slide 42 if I didn't say it. Sorry.
`JUDGE WEATHERLY: So this view of the EV1 that we're seeing on
`slide 40 is kind of a partial cut-away, I guess you could call it cut-away but
`the unibody's missing. But my understanding of the EV1 is that it was a
`unibody construction, so this tray, this battery tray isn't really -- I mean this
`isn't a rolling chassis as it's shown here on this slide, correct?
`MR. LINDSAY: That's correct. So the EV1 is more of a unibody
`design where the tray was bolted into the body. That's what the testimony
`shows. The unibody construction is certainly different than a body on frame
`construction but there's no reason why somebody working on a body or a
`frame wouldn't look to the innovations in the unibody art. So there's
`certainly been no suggestion in this case that you wouldn't look to unibody
`art.
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`JUDGE WEATHERLY: Well but what's your, if I understand it
`Patent Owner's position a little bit better, it would be that a teaching of a T-
`shaped tray for batteries and unibody structure doesn't translate particularly
`to a backbone style kind of chassis. In other words, it's just kind of -- you
`have a lot more flexibility about where you put batteries in a unibody
`because a unibody is kind of a big open box. So why does it translate? Why
`does this arrangement of batte