[00:00:01] Speaker 04:
is 22-1355, Pace versus BMJ.

[00:00:06] Speaker 04:
Good morning.

[00:00:08] Speaker 04:
Whenever you're ready.

[00:00:10] Speaker 03:
Thank you, Your Honor.

[00:00:11] Speaker 03:
May it please the Court?

[00:00:13] Speaker 03:
I'd like to begin by discussing the dispute over the term burying, then address the turbocharger claims, and if time permits, the remaining issues on the pattern claims.

[00:00:25] Speaker 03:
What about according?

[00:00:26] Speaker 03:
That is another pattern claim issue.

[00:00:28] Speaker 03:
I will address that if time permits, yes.

[00:00:31] Speaker 03:
There's no relevant factual dispute about how the Severinsky Priorite Reference works here.

[00:00:39] Speaker 03:
Everyone agrees that its hysteresis has two thresholds, an upper speed threshold, which is 30 to 35, and a lower speed threshold, which is 20 to 25.

[00:00:51] Speaker 03:
Everyone agrees that these are different set points.

[00:00:54] Speaker 03:
Granted, Hayes did dispute whether they were set points below, but we're not pursuing those treatments on appeal.

[00:01:01] Speaker 03:
And everyone agrees that they're factory set and fixed.

[00:01:05] Speaker 03:
BMW said at appendix 51, 97 that they're factory set and BMW's expert, Dr. Davis, said that they can be separate variables with fixed values and that was at appendix 52, 51.

[00:01:21] Speaker 03:
And so the key dispute concerning this term.

[00:01:24] Speaker 04:
So we're talking about varying, right?

[00:01:26] Speaker 03:
Yes.

[00:01:27] Speaker 04:
Your brief on several occasions, I believe they go along, says that the board held that disregarding a set point constitutes varying.

[00:01:39] Speaker 04:
And I'm not sure I agree that that's a fair characterization of what the board said.

[00:01:45] Speaker 04:
So it seems like when the board mentioned disregarding a septum, it was citing your characterization and not its characterization of this.

[00:01:57] Speaker 04:
So one, am I right about that?

[00:01:59] Speaker 04:
Or can you point me to something where the board really can come to that conclusion, not merely citing what you said?

[00:02:04] Speaker 04:
And why, if you can't, why that doesn't become this leading statement in your brief?

[00:02:10] Speaker 03:
Well, I think what you say is fair to the extent that it's certainly the board was referring to our argument when they used more discrepancies.

[00:02:19] Speaker 03:
OK.

[00:02:19] Speaker 04:
So how do I make the leap to support your characterization of the board health that disregarding a step one constitutes very?

[00:02:29] Speaker 03:
Well, the board did not contest our characterization.

[00:02:33] Speaker 03:
What they did, what they said is here, the primary basis for patent owners' argument that disregarding... What are you going to tell me?

[00:02:39] Speaker 03:
I'm on Appendix 20.

[00:02:40] Speaker 03:
Okay.

[00:02:42] Speaker 03:
And I'm down the middle of the page.

[00:02:47] Speaker 03:
And what the board says is the primary basis for case's argument that disregarding the set point does not correspond to varying.

[00:02:55] Speaker 03:
is that several of these set points would not change through the lifetime of the vehicle.

[00:02:59] Speaker 03:
And then they go on to say, however, instead we agree with petitioner BMW that the challenge claims are agnostic on this point.

[00:03:11] Speaker 03:
So what I understand the board to be saying is we don't need to decide any factual issue about whether the values are changing because the challenge claims are agnostic about whether

[00:03:25] Speaker 03:
it's changed or disregarded.

[00:03:27] Speaker 03:
I don't think there's a clear statement where the board says, we hold that disregarding constitutes varying.

[00:03:41] Speaker 03:
And I apologize if our brief gave that impression.

[00:03:45] Speaker 04:
Well, your brief didn't give that impression.

[00:03:47] Speaker 04:
Your brief said that.

[00:03:49] Speaker 03:
What we meant to say is that the board's reasoning hinged on the assumption that a change in a set point is not required by the term varying.

[00:04:03] Speaker 03:
Now, the way we understood that below was disregarding

[00:04:06] Speaker 03:
I think the way BMW characterizes it on appeal is instead they say at page 25 of the red brief that providing for two different set points or multiple set points constitutes varying.

[00:04:17] Speaker 03:
I think the characterizations have shifted a bit in part because the parties positions have just crystallized further as the case has matured.

[00:04:29] Speaker 03:
And really that, I think, now is the key dispute for the court, which is, is BMW correct that the term varying encovers providing for two fixed, unchanging set points?

[00:04:41] Speaker 03:
Or is Pace correct that the ordinary meaning of varying, which is changing, applies?

[00:04:48] Speaker 03:
I think it's really important to note here that the plain meaning is not actually in dispute.

[00:04:54] Speaker 03:
In our blue brief, argued at length about the plain meaning, and in the red brief, BMW does not argue for a different plain meaning.

[00:05:02] Speaker 03:
Instead, their substantive argument on this point is that there are examples in the specification of the term varying being used, which they say compels broader understanding.

[00:05:15] Speaker 03:
That's simply not an accurate characterization of the specification.

[00:05:19] Speaker 03:
All four of the embodiments that they point to involve at least the ability to change the value of one of those set points.

[00:05:28] Speaker 03:
I think the third one in particular is the one that the board cited in support of its interpretation of the claims.

[00:05:36] Speaker 03:
That is an embodiment that also involves hysteresis, just similar in some ways to the hysteresis of the prior Severinsky reference.

[00:05:46] Speaker 03:
But what that embodiment says is not only do you have these two fixed set points, but those set points have the ability to change.

[00:05:54] Speaker 03:
And that's the feature that is claimed in claims 2 and 24, 347 patent, when they use the word varying set set point.

[00:06:05] Speaker 00:
And these points appear to be factually based.

[00:06:08] Speaker 00:
So you're staring at substantial evidence in the face.

[00:06:15] Speaker 00:
What's your argument as to the evidence that supports your position?

[00:06:21] Speaker 03:
I would disagree with you about them being factually based, Your Honor.

[00:06:24] Speaker 00:
What's the legal issue, then, that you're arguing?

[00:06:26] Speaker 03:
The legal issue is, what is the scope of these claims?

[00:06:30] Speaker 03:
Are they broad enough to include providing for more than one set point, even if those set points don't change?

[00:06:36] Speaker 03:
Or are the claims narrower than that and limited scenarios where the values of those set points can actually change?

[00:06:43] Speaker 03:
And I think the thermostat analogy that we've used in our brief is helpful to understand that.

[00:06:47] Speaker 03:
Because you could have a thermostat, wouldn't be a very useful one, I think, that has this hysteresis,

[00:06:53] Speaker 03:
where there's an upper threshold and a lower threshold, so it's not constantly going off and on.

[00:07:00] Speaker 03:
But you couldn't change the temperature.

[00:07:02] Speaker 03:
Or you could have a thermostat that works like most thermostats, where you can actually change the temperature.

[00:07:08] Speaker 03:
And by changing it, you're also altering the upper and lower bounds.

[00:07:12] Speaker 00:
And you present that expert testimony in this regard?

[00:07:15] Speaker 03:
I don't know if our expert provided this exact analogy.

[00:07:19] Speaker 00:
Who is Dr. Davis?

[00:07:21] Speaker 03:
Dr. Davis didn't dispute this, what he said instead, and let me direct you to... I think this is at... And it's 52-51.

[00:07:42] Speaker 03:
And he says that the argument that we made about these thresholds never changing misses the point, because the claims do not require

[00:07:55] Speaker 03:
that you have to change a variable in the source code or any other particular way of varying.

[00:08:01] Speaker 03:
And so implicit in his argument here is about what the claims require or what the claims do not require.

[00:08:07] Speaker 03:
So he's really offering an opinion on the interpretation of construction of the claim rather than opinion about the scope of the content of the claim.

[00:08:15] Speaker 00:
He's offering a factual opinion or a legal opinion?

[00:08:18] Speaker 03:
I would say it's a legal opinion, because he's not saying it.

[00:08:22] Speaker 03:
You're not saying it?

[00:08:22] Speaker 03:
Dr. Davis is BMW's expert.

[00:08:24] Speaker 03:
I would say he's offering a legal opinion here, because he's not saying, for instance, that this is the ordinary meaning that a person of skill in the field would use the word very in this way.

[00:08:34] Speaker 03:
He's sort of directly testifying about what he thinks the claims require, which as the court knows, the ultimate decision on claim instruction.

[00:08:43] Speaker 00:
Do you have a quality that we can accept?

[00:08:48] Speaker 00:
legal opinion?

[00:08:53] Speaker 03:
I think actually you should not accept it and I think that's really the board's error in this case is that they credited Dr. Davis's legal opinion on the scope of the claims instead of looking at the intrinsic evidence and reaching the complete

[00:09:14] Speaker 03:
which all agree is not satisfied in the prior art.

[00:09:19] Speaker 02:
So can you point me to where Barry was raised just as a claim construction dispute so I can make sure I'm on the same page?

[00:09:25] Speaker 03:
So I think it's a little challenging because again this is an issue that sort of crystallized more as the case went on but I would take you first of all back to the petition which is where it all started.

[00:09:36] Speaker 03:
That's what BMW raised, this theory that

[00:09:43] Speaker 03:
Their theory was, I'll point to 10x4-16.

[00:09:54] Speaker 03:
They don't really explain what they understand varying to me.

[00:10:00] Speaker 03:
What they say instead is simply that use of speed-responsive hysteresis requires varying setpoint accordingly.

[00:10:11] Speaker 03:
And so PACE was at a bit of a disadvantage here, not really understanding what the theory was in the petition.

[00:10:17] Speaker 03:
In our patent owner response, we came back and we applied what we understand the ordinary meaning to be.

[00:10:23] Speaker 03:
And that is Appendix 4542.

[00:10:30] Speaker 03:
And at the top of the page, we say, there is nothing in Severninsky that discloses the

[00:10:39] Speaker 03:
speed thresholds are changed.

[00:10:42] Speaker 03:
Now, certainly we're not asking for a claim of instruction in that sense, but implicit in our argument is that we understood the term varying habits ordinary meaning has changed.

[00:10:52] Speaker 03:
And it's really when BMW came back with their reply brief and they attached the second declaration of Dr. Davis, where he kind of opines about what the claims allegedly do not require, that introduced, I think, a claim of instruction dispute or sort of a latent claim of instruction dispute into the case.

[00:11:09] Speaker 02:
Would you agree that there's a difference between disputing whether prior art discloses a term and actually disputing how a term should be construed?

[00:11:17] Speaker 03:
I think there's certainly a distinction there, yes, Your Honor.

[00:11:20] Speaker 03:
And the important way to understand that distinction is, are you looking at what the prior art teaches?

[00:11:29] Speaker 03:
Is there an argument, a factual, underlying factual argument about what the prior art teaches?

[00:11:34] Speaker 03:
Or is the argument really about the scope of the claims and what the claims require?

[00:11:39] Speaker 03:
It wasn't really apparent in this case to Pace until the final decision that the real crux of the dispute here was about what the claims don't require.

[00:11:50] Speaker 00:
Did you put across or did you offer any claim construction on varying and according?

[00:11:56] Speaker 03:
No.

[00:11:57] Speaker 03:
No formal claim construction is proposed.

[00:11:59] Speaker 03:
It's been Pace's position from the beginning that this term has its ordinary meaning and that that ordinary meaning is changing.

[00:12:07] Speaker 04:
But just since Judge Raina mentioned accordingly, going back to the first point I raised with you earlier, now on the accordingly point, you also say that the board mischaracterized your argument as requiring that varying a set point accordingly

[00:12:24] Speaker 04:
be done in real time.

[00:12:27] Speaker 04:
But wasn't the board, in fact, just quoting your argument?

[00:12:31] Speaker 04:
Were you bolded and italicized the words real time?

[00:12:34] Speaker 03:
Well, we made two points in a single argument, and maybe the board was confused by that.

[00:12:39] Speaker 04:
Well, how did the board mischaracterize your argument when it was using your own words for what you had said?

[00:12:45] Speaker 04:
How is that a mischaracterization by the board?

[00:12:48] Speaker 03:
They mischaracterized our argument because they equated this real-time concept with word accordingly, when the real-time concept was really being argued as part of the varying argument.

[00:13:00] Speaker 03:
In effect, if you turn to what we say in our surabri that the board is quoting, which is,

[00:13:12] Speaker 04:
Is that 5948?

[00:13:13] Speaker 04:
The board was quoting what you said.

[00:13:17] Speaker 04:
And the word accordingly indicates that the controller must vary the set point based on vehicle monitoring over time.

[00:13:24] Speaker 03:
Right.

[00:13:25] Speaker 03:
So that, Your Honor, is where we set forth what we understand.

[00:13:28] Speaker 03:
And then you go on.

[00:13:31] Speaker 04:
The quote goes on.

[00:13:33] Speaker 04:
And I don't need to read all of it, but it talks about, in real time, much less based on the observed vehicle operation.

[00:13:40] Speaker 03:
Right.

[00:13:40] Speaker 03:
And it's the much less based on observed vehicle operation portion of that sentence.

[00:13:46] Speaker 03:
That last clause is where we tie back to the previous sentence, where we articulate what we understand.

[00:13:53] Speaker 04:
I know, but again, I'm just maybe

[00:13:58] Speaker 04:
what's proper to do.

[00:14:00] Speaker 04:
It just offends me or bothers me that you accuse the board of mischaracterizing your argument, or I don't see why they mischaracterize your argument.

[00:14:12] Speaker 04:
Now, you could have said they misunderstood, because even though we said this, we really meant that.

[00:14:18] Speaker 04:
But I think in fairness to the board, they were quoting exactly what you said.

[00:14:24] Speaker 03:
Well, respectfully, Your Honor, I disagree with that.

[00:14:26] Speaker 03:
I do think it's a mischaracterization and perhaps misunderstanding is a more charitable interpretation of it.

[00:14:33] Speaker 03:
But we were trying to make two interrelated points.

[00:14:36] Speaker 03:
First, that there's no varying at all.

[00:14:38] Speaker 03:
And second, if there's no varying at all, there's certainly also no varying accordingly.

[00:14:43] Speaker 03:
Because there's further a requirement that the varying be done in a particular way, just based on people monitoring over time.

[00:14:50] Speaker 03:
And I think the board's statement conflated those two points.

[00:14:54] Speaker 03:
Perhaps it was a mistake.

[00:14:55] Speaker 03:
If I can just very briefly address the Chargill-Cheser claims.

[00:15:01] Speaker 03:
The important thing to know here is that the only non-redundant reason to combine the references that the board identified was to preserve battery charge.

[00:15:12] Speaker 03:
And the only evidence that cited for that was two paragraphs from Dr. Davis' initial and reply declaration, which essentially just assert that doing so would have been obvious in an Ipsa-Dixit fashion.

[00:15:26] Speaker 03:
And we think that this is a direct application of the TQ Delta case.

[00:15:30] Speaker 03:
If you compare the conclusory nature of his opinions on this subject to TQ Delta's conclusory testimony, it's the same level of generality.

[00:15:40] Speaker 03:
Just as in TQ Delta, the rationale is not supported by citation to any reference that teaches this motivation.

[00:15:48] Speaker 03:
Just as in TQ Delta, it appears to have been taken just directly from the specification of the challenge patents.

[00:15:55] Speaker 03:
And finally, the board

[00:15:58] Speaker 03:
really compounded its air in relying on this testimony by entirely ignoring the evidence Pace put forth over four and a half pages of its patent on the response about the disadvantages of adding a turbocharger to Severinsky, which under this court's cases in Winner and Henny Penny, needed to at least be considered as part of the analysis.

[00:16:18] Speaker 04:
Well, we'll leave it at that.

[00:16:21] Speaker 04:
Thank you.

[00:16:21] Speaker 04:
Good morning, Your Honors.

[00:16:22] Speaker 01:
Are you pleased with the court?

[00:16:26] Speaker 01:
Vincent Galuzzo on behalf of BMW.

[00:16:29] Speaker 01:
Even though PACE did not preserve the claim construction arguments it raises now on appeal, those arguments have no bearing on this case.

[00:16:36] Speaker 01:
And that's because Prior Art Severinsky varies or changes a set point value during its historicism, from its traditional 60% MTO set point to a lower value, not a different set point, but a lower value MTO corresponding to 20 to 25 miles an hour of speed during normal highway driving.

[00:16:59] Speaker 01:
Likewise for accordingly, the combination of Severinsky and Knee varies that set point accordingly, in accordance with, based on Knee's pattern monitoring.

[00:17:10] Speaker 02:
In other words... I just want to understand, are you saying that you would win under either construction, either the construction that he seems to be implying, or...

[00:17:19] Speaker 02:
Your construction?

[00:17:20] Speaker 02:
I'm just trying to make sure I'm tracking what you're saying right now.

[00:17:23] Speaker 01:
You're absolutely right, Your Honor.

[00:17:25] Speaker 01:
Under the constructions that they are now proposing, BMW would still win, and that's because the scope of the prior art, Severinsky, in terms of the varying issue and the combination of Severinsky and Knee in terms of the accordingly issue that they're raising, in addition to the motivation to combine arguments which are

[00:17:42] Speaker 01:
Quite a bit different.

[00:17:43] Speaker 01:
But all of that would still find under the board's own reasoning and conclusions, based on the expert testimony and the battle of the experts, as Judge Raina has referred to before, that Severinsky discloses varying as a change of the set point value.

[00:18:00] Speaker 01:
And Severinsky and Nee teach in combination of varying in accordance with the pattern monitoring.

[00:18:06] Speaker 01:
So Judge Cunningham, you're exactly right.

[00:18:09] Speaker 01:
And that's why I say this.

[00:18:10] Speaker 04:
Well, can I just ask you a process point?

[00:18:13] Speaker 04:
The other side says in its brief that you did accuse as you have not relied on me for the accordingly piece of the claims.

[00:18:22] Speaker 01:
Is that correct statement that is an incorrect statement your honor and I'll point you to Throughout the proceedings below where we relied on that exact point first in the petition an appendix 442 and I won't quote it in all but I will Exactly your honor.

[00:18:39] Speaker 04:
Thank you.

[00:18:42] Speaker 01:
Next was in petitioners declaration by dr. Davis.

[00:18:46] Speaker 01:
This is appendix 868 and 869 specifically dr. Davis's paragraph 610

[00:18:52] Speaker 01:
where he states a skilled artisan would have applied the teachings discussed above from Knee, those are the ones about monitoring, to vary the set point discussed from Severinsky.

[00:19:02] Speaker 04:
So on what basis did they conclude that you feel preserved that argument?

[00:19:06] Speaker 01:
None.

[00:19:07] Speaker 01:
Thank you.

[00:19:11] Speaker 01:
Back to Judge Cunningham's question, that's why I said that the claim construction issues have no bearing on this case.

[00:19:20] Speaker 01:
We can argue as a theoretical matter whether they were preserved or whether this court should exercise its discretion to review forfeited arguments, but to cut to the point, they simply don't matter.

[00:19:31] Speaker 01:
Because the prior art satisfies Pace's new claim constructions, the result should be to affirm the board's decision.

[00:19:40] Speaker 01:
The board decision should also be affirmed, or decisions should also be affirmed, because substantial evidence from the prior art, from Dr. Davis' testimony, from testimony, some of which from their own expert, and from contemporaneous and supporting evidence, not just conclusory expert testimony, supports a motivation to combine on both the pattern claims and on the turbocharger claims.

[00:20:06] Speaker 01:
Now, I'd like to address an argument that my friend made at the very beginning of his argument, stating that there is no factual dispute in this matter about what Severinsky discloses.

[00:20:17] Speaker 01:
I don't think that's true.

[00:20:19] Speaker 01:
Severinsky, as we've presented it, as Dr. Davis has opined, and as the board found, varies a set point by pointing to different values during the hysteresis mode.

[00:20:32] Speaker 01:
In normal operation, Severinsky is changing from an all-motor operation at low road loads to an all-engine operation at what I'll call moderate road loads at a 60% maximum torque output of the engine set point.

[00:20:48] Speaker 01:
But in order to get rid of nuisance stopping and starting, as your normal suburban drive-in might go above and below that set point quite often, Severinsky makes the decision for a limited period of time

[00:21:01] Speaker 01:
to lower that set point value to a different value, to lower the set point to a different value, a torque value that approximates 20 to 25 miles an hour in normal highway driving.

[00:21:14] Speaker 01:
Now, my friend didn't raise this argument here, but in the briefing and below, they say that that is a disregarding of the set point, but that's not true.

[00:21:23] Speaker 01:
We know it is not a disregarding of the set point because disregarding would require running the engine regardless of what the road load needed is.

[00:21:33] Speaker 01:
Even if you come to a full and complete stop of the vehicle, the engine would still be running if you are disregarding the set point.

[00:21:40] Speaker 01:
But what we know from Dr. Davis's opinion about Severinsky, one of skill in the art, would read Severinsky and know because of the way it characterizes its hysteresis mode, the engine, in fact, is turned off if you get to that set point below 20 miles an hour.

[00:21:55] Speaker 01:
So you essentially have a situation where the set point isn't just this.

[00:22:01] Speaker 00:
Does that set point reset itself back to the original set point, or does it depend on a different MOT to do that?

[00:22:09] Speaker 01:
According to Dr. Davis's read of Severinsky and what someone with skill in the art would understand, Judge Raina, that's exactly right.

[00:22:16] Speaker 01:
After the two to three minutes at the 20 to 25 miles an hour, the set point would be reset such that the normal engine operation, the normal control strategy for the hybrid vehicle would resume.

[00:22:30] Speaker 01:
And the reason we know that is because Severinsky tells us we're trying to deal with two competing interests here.

[00:22:36] Speaker 01:
One is, we want to increase fuel economy and decrease pollutants, but at the same time, as any vehicle, we have to respond to the driver's demand.

[00:22:45] Speaker 01:
We can't shut the engine off if they need to climb a hill.

[00:22:48] Speaker 01:
So with these two competing interests, we are allowing us to go out of the most efficient operating range of the engine in this hysteresis mode, but for a limited amount of time to account for driver demands and needs, such as a nuisance.

[00:23:01] Speaker 01:
That brings me to the thermostat point that my friend made.

[00:23:05] Speaker 01:
Now, I think the better analogy to a thermostat for what Severinsky does is everyone who's been in a hotel knows that the thermostat and the AC can click on and off quite a bit.

[00:23:17] Speaker 01:
Mine last night, in fact, was doing that.

[00:23:19] Speaker 01:
And the way that you solve that nuisance stopping and starting of the air conditioning is you might decide, I'm okay with my room being a little colder for a few minutes.

[00:23:29] Speaker 01:
So I'm going to go and I'm going to change the thermostat value down five degrees for two to three minutes such that the AC will continue to run for those two to three minutes even though it's colder than I would normally like.

[00:23:41] Speaker 02:
And after this... That's a good idea, maybe I'll try it.

[00:23:44] Speaker 01:
Well, Severinsky teaches it, your honor, so we can learn from that.

[00:23:47] Speaker 01:
And so that is what Severinsky is doing.

[00:23:50] Speaker 01:
It's not a hysteresis of blending values on transients.

[00:23:55] Speaker 01:
It is resetting the set point to a lower value so that the engine will continue to work.

[00:24:01] Speaker 01:
On the turbocharger motivation, unless your honors would like more on that point, motivation to combine arguments, this is not a situation like in TQ Delta.

[00:24:11] Speaker 01:
TQ Delta involved a case where the expert relied on two sentences from the prior reference and gave two paragraphs of opinion based on that without any support whatsoever other than his own say so.

[00:24:25] Speaker 01:
That's not this case.

[00:24:26] Speaker 01:
Dr. Davis gave sufficient background testimony that, while maybe not cited in the board's analysis, was recognized by the board in its summary of the argument.

[00:24:38] Speaker 04:
Why don't you start with what the board did?

[00:24:41] Speaker 04:
Because I thought I was a little confused about the board's reasoning.

[00:24:44] Speaker 04:
So maybe you can start with what the board's reasoning was and then talk about some of the support for that.

[00:24:50] Speaker 01:
Absolutely, Your Honor.

[00:24:52] Speaker 01:
After summarizing the party's arguments from Appendix 30 to 36, the board started its analysis and found first that Ma explicitly discloses the use of a motor, an engine, and a turbocharger in conjunction.

[00:25:06] Speaker 01:
That's at Appendix 37 to 38.

[00:25:09] Speaker 01:
The board next found that Ma and Severinsky both relate to parallel hybrids.

[00:25:13] Speaker 01:
They have interrelated teachings.

[00:25:15] Speaker 01:
That's Appendix 38.

[00:25:16] Speaker 01:
That Ma and Severinsky both tried to solve for supplemental torque.

[00:25:21] Speaker 01:
Ma doing it with an engine, a motor, and a turbocharger, whereas Severinsky does it just with an engine and a motor.

[00:25:29] Speaker 01:
That's an Appendix 38 to 39.

[00:25:33] Speaker 01:
The board then analyzed Dr. Shabakti, that's Pace's expert's testimony, and found for a number of very good reasons supported by the record that his testimony should be entitled to little weight.

[00:25:45] Speaker 01:
That's at appendix 39.

[00:25:47] Speaker 01:
The board then went on in appendix 39 to 40 to reject the bodily incorporation arguments that Pace had made, essentially that because Ma's engine was suspected to be, I'm sorry, motor was suspected to be a supplemental engine as opposed to a full-size engine, that it wouldn't work in Severinsky.

[00:26:07] Speaker 01:
Those arguments were rejected appendix 39 to 40.

[00:26:10] Speaker 01:
And to get, now I think to Judge Crost, what your question was, starting at appendix 40, the board found that the benefits from MA would not be redundant, the benefits of adding a turbocharger from MA would not be redundant of the benefits that you could gain from

[00:26:31] Speaker 01:
further optimizing the electric motor.

[00:26:34] Speaker 01:
And based on that, I think, wrapped up in that, inextricable from that, is that Dr. Shabakti's testimony otherwise, that you could just make motor gain benefits, was entitled to little weight.

[00:26:49] Speaker 01:
That's an appendix 40 to 40.

[00:26:50] Speaker 04:
But PACE takes issue with that and says it was conclusory, that the reliance on the expert testimony, the expert testimony was conclusory on that point.

[00:26:58] Speaker 01:
I don't think they take issue with

[00:27:00] Speaker 01:
Dr. Shabakti's testimony being given little weight.

[00:27:03] Speaker 01:
The issue they take, at least as far as I read their briefing, is that Dr. Davis' testimony was conclusory.

[00:27:10] Speaker 01:
Thank you, Your Honor.

[00:27:13] Speaker 01:
So Dr. Davis' testimony is not conclusory because it's based on a number of contemporaneous and supporting references.

[00:27:19] Speaker 01:
The one that came up in this court

[00:27:21] Speaker 01:
is the stone reference.

[00:27:23] Speaker 01:
And he references this at appendix 5287-88 in his paragraph 93, discussing how this reference talks about the benefits of turbochargers in hybrid electric vehicles.

[00:27:37] Speaker 01:
But all of this opinion also comes with an extensive background at appendix 693 to 702 and appendix 5276 to 5286, where Dr. Davis goes through chapter and verse of a number of different contemporaneous supporting documents discussing the benefits of turbochargers in general, the benefits of turbochargers in hybrid-elect vehicles.

[00:28:02] Speaker 01:
Now, to take a step back and put it in context, a turbocharger is a booster.

[00:28:08] Speaker 01:
it boosts engine output for the same amount of fuel.

[00:28:12] Speaker 01:
And because PACE didn't invent using a turbocharger in hybrid vehicles on demand, like Ma discloses this, we know that there is reason from Ma itself to add a turbocharger to use a turbocharger with an engine and a motor at high loads for supplementary torque.

[00:28:33] Speaker 01:
The reason, in addition to what Dr. Davis said, and to summarize one of the points he made, is that adding a turbocharger is beneficial for the same reason it's beneficial to add a turbocharger to any engine, hybrid or not.

[00:28:48] Speaker 01:
Turbochargers increase maximum torque output, they allow for smaller engine size, and they reduce fuel consumption.

[00:28:56] Speaker 01:
And those are not

[00:28:59] Speaker 01:
Those are not redundant benefits of the motor and the reason being that in Severinsky, since that's our base reference, in Severinsky's vehicle control strategy, you have to run the engine at least at some times.

[00:29:14] Speaker 01:
And you run the engine at high loads in conjunction with the motor for that acceleration mode as they call it.

[00:29:21] Speaker 01:
Well, you can optimize the motor as much as you want, but you still have to run the engine, so optimization gains of the engine are also beneficial.

[00:29:32] Speaker 01:
And when you are running the engine, those gains are not redundant of motor gain deficiencies.

[00:29:37] Speaker 00:
Is a turbocharged engine just by definition running at a higher torque than a non-turbocharged engine?

[00:29:44] Speaker 01:
So there's two, I'll call it two different types of turbocharged engines.

[00:29:48] Speaker 01:
There's turbocharged engines where the turbocharger is running at all times.

[00:29:53] Speaker 01:
And then there are turbocharged engines such as, that are in the MA reference and as we propose in our combination, that are run only at high loads.

[00:30:02] Speaker 01:
They are run selectively and only at

[00:30:05] Speaker 01:
is sustained high power or high, I think Mark calls it, high performance needs.

[00:30:10] Speaker 01:
And so there are differences in the way the turbochargers are operated.

[00:30:14] Speaker 01:
But when they are operated, they do increase the torque output of the engine for the same amount of fuel because the turbocharger's torque burst, if you call it, or torque increase, is not gasoline or fuel based.

[00:30:31] Speaker 01:
Your Honors, I believe I've touched almost all of the issues.

[00:30:36] Speaker 01:
I'm happy to concede the rest of my time, or if Your Honors would like.

[00:30:39] Speaker 04:
No, you're almost out of time.

[00:30:42] Speaker 01:
You're trying hard.

[00:30:44] Speaker 01:
The one point I'll just make in my final few seconds, Your Honors, is there was a point raised in the yellow brief about a quest for remand.

[00:30:51] Speaker 01:
I mean, it's clear that should this court make any decision other than to affirm

[00:30:56] Speaker 01:
There were a number of alternative grounds that require remand.

[00:30:59] Speaker 01:
So I just wanted to make that clear for the record.

[00:31:01] Speaker 04:
You mean gray, not yellow, right?

[00:31:03] Speaker 01:
I'm sorry, yes.

[00:31:04] Speaker 01:
Thank you, Your Honor.

[00:31:04] Speaker 01:
Gray brief.

[00:31:05] Speaker 01:
My apologies.

[00:31:06] Speaker 01:
This is not a cross appeal.

[00:31:07] Speaker 01:
Thank you.

[00:31:08] Speaker 04:
Thank you, Your Honor.

[00:31:12] Speaker 04:
We're out of time, but will we start two minutes of rebuttal?

[00:31:14] Speaker 04:
Mr. Dyer.

[00:31:16] Speaker 03:
Thank you, Ronos.

[00:31:16] Speaker 03:
I'll just briefly respond to a few points.

[00:31:20] Speaker 03:
First of all, on the varying issue, I think that the argument we just heard from my friend on the other side is really quite contradictory to what BMW's own expert said about the Severansky prior reference.

[00:31:34] Speaker 03:
On Appendix 5251, in particular, he characterized the different values as separate variables or fixed values.

[00:31:45] Speaker 03:
So his opinion that he offered was not that you have one variable or value that's changing depending on this hysteresis mode.

[00:31:55] Speaker 03:
It's that you have separate variables.

[00:31:59] Speaker 03:
And that's why the dispute really turns on claim construction.

[00:32:03] Speaker 03:
On the turbocharger claims, Your Honor, I think we heard a lot about the alleged benefits of adding torque to Severinsky.

[00:32:16] Speaker 03:
But the board never made a finding that adding torque would not be redundant.

[00:32:22] Speaker 03:
I think that the comparison of adding a turbocharger to Severinsky and Ma is really

[00:32:27] Speaker 03:
a specious one.

[00:32:29] Speaker 03:
Ma has a very small lean burn engine, which it says lacks power, and that's why they add the turbocharger.

[00:32:38] Speaker 03:
In contrast, Semmelwinski has a very large motor in addition to its engine, and there's never been any suggestion that the amount of torque it generates is deficient in any way.

[00:32:49] Speaker 03:
So it can't be correct that a skilled artisan is motivated to just continually add more and more torque to the engine ad nauseam, not serving or addressing any underlying problem.

[00:33:03] Speaker 03:
And finally, on the accordingly issue, we heard a lot about nigh.

[00:33:06] Speaker 03:
I just wanted to give the court citations, which is, you know, appendix 45, 49, 4550, which is where we in our panel in response said they weren't relying on nigh.

[00:33:18] Speaker 03:
Their reply was 5202, 5206, silent on that issue.

[00:33:24] Speaker 03:
And then the board found they were not relying on nigh appendix.

[00:33:28] Speaker 04:
Do you disagree with, in their brief, in the red brief, they point to several passages where they do just that, they rely on nigh.

[00:33:39] Speaker 03:
They certainly rely on nigh for motivation to combine.

[00:33:43] Speaker 03:
And that was the citation that my friend provided you was to the motivation combined section of their petition.

[00:33:50] Speaker 03:
But if you go back earlier in the petition to where they lay out why they think the varying accordingly limitation is met, it's again, it's just this

[00:34:04] Speaker 03:
appendix 416, it's just this sentence that says, use of the speed responsive hysteresis.

[00:34:11] Speaker 03:
And that's referring to Severinsky, not deny.

[00:34:14] Speaker 03:
Requires varying said set point.

[00:34:16] Speaker 04:
Well, what about 442?

[00:34:18] Speaker 04:
This is their petition.

[00:34:20] Speaker 03:
Yes, 442 is a later section of their petition, which addresses motivation to combine.

[00:34:27] Speaker 03:
And they say, I think they say that

[00:34:36] Speaker 03:
So certainly, they rely on nigh as a reference in this combination.

[00:34:39] Speaker 04:
They rely on it, though, for the use of- They said it would have understood that the arbitrary parameters for varying the engine set point can be improved based on the pattern information disclosed by nigh.

[00:34:55] Speaker 04:
So isn't that reliance on nigh for disclosure?

[00:34:59] Speaker 03:
What I would read that as is relying on nigh for the disclosure of monitoring for pattern information.

[00:35:04] Speaker 03:
I don't believe that as changing what they said earlier, where they relied on Severinsky for the bearing accordingly.

[00:35:10] Speaker 04:
Thank you.