UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`COSTCO WHOLESALE CORPORATION,
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`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
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`Patent Owner.
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`____________________
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`CASE NO. IPR2016-00034
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`U.S. Patent No. 6,973,698
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`____________________
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`PATENT OWNER’S REPLY ON MOTION TO EXCLUDE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`COSTCO WHOLESALE CORPORATION,
`
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`
`Patent Owner.
`
`____________________
`
`CASE NO. IPR2016-00034
`
`U.S. Patent No. 6,973,698
`
`____________________
`
`PATENT OWNER’S REPLY ON MOTION TO EXCLUDE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
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`Patent Owner Robert Bosch LLC (“Patent Owner”) submits this Reply in
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`support of its motion to exclude evidence submitted by Petitioner Costco
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`Wholesale Corporation (“Petitioner”). Patent Owner’s motion requested exclusion
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`of Paragraphs 7, 9–11, 15, 18, 19, 21, and 23–26 of the declaration of Mr. David
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`Peck (Ex. 1100). As Patent Owner pointed out in its motion, it was “unclear
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`whether Petitioner intends to offer Mr. Peck’s testimony as a fact or an expert
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`witness.” Motion at 1. Only now does Petitioner clarify that Mr. Peck is being
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`offered as an expert witness on technical issues and both an expert and a fact
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`witness on economic issues. With respect to both sets of issues, however, the
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`challenged testimony is expert in nature, and Mr. Peck is not qualified to offer it.
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`I. MR. PECK HAS NOT SET FORTH SUFFICIENT KNOWLEDGE TO
`PROVIDE TECHNICAL TESTIMONY RELEVANT TO
`OBVIOUSNESS
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`Petitioner’s opposition all but ignores the crucial distinction between beam
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`blades (or, in Petitioner’s words, “flat-spring wipers”) and conventional wiper
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`blades. Mr. Peck purports to offer opinions regarding beam-blade design,
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`specifically, in the 1990s, but Mr. Peck’s declaration and cross-examination
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`testimony establish that his experience in beam-blade design as of the relevant time
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`period is based solely on his supervision of engineers using VariFlex software,
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`which neither he nor anyone else at Trico actually developed. For example, at
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`deposition, Mr. Peck testified that the extent of his involvement in designing any
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`1
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`
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`beam blade’s spring—the “support element”—was to verify that the VariFlex
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`software worked:
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`Q. How involved were you in designing the spring in the beam blade?
`A. That was a VariFlex program. That was – Adriaan [Swanepoel] gave that
`to us. We just had to verify it worked. So what we did, we at Trico, we
`verified the program. We did it two ways. …
`Ex. 2029 at 38:16–21. VariFlex is proprietary software that Trico acquired from
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`Adriaan Swanepoel in South Africa. See Ex. 2029 at 35:11–14, 40:20–24, 74:17–
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`24. Mr. Swanepoel not only provided the software but also taught Trico how to use
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`it. Id. at 75:4–17. Petitioner cannot assert that a person of ordinary skill in the art in
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`the relevant time period would have been familiar with VariFlex.
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`Petitioner argues that Mr. Peck need not have worked in precisely the same
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`field as the invention, and that he need not have been a person of ordinary skill in
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`the art during the relevant time frame. But there must be some basis for his
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`opinions. For example, “[i]f an expert is qualified to testify about a subject
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`generally and has had training in the subject matter at issue, then the expert may
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`offer an opinion.” Petitioner’s Opposition at 5 (emphasis added) (quoting Zoltek
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`Corp. v. United States, 95 Fed. Cl. 681, 685 (2010)). Nobody has argued that
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`Trico already had designed a beam blade in 1997 such that Mr. Peck could have
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`learned from others there. And, Mr. Peck’s testimony establishes that the beam
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`blade he worked on was actually designed, in relevant part, by VariFlex. There is
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`2
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`
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`no indication that Mr. Peck’s knowledge of how a “wiper designer” would have
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`designed a beam blade in 1997 is based on anything other than Mr. Swanepoel’s
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`explanation of how his proprietary software works.1 Therefore, the only “wiper
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`designer” about whom Mr. Peck may be qualified to opine is Mr. Swanepoel
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`himself (whom Mr. Peck described as an “inventor”), or someone trained by Mr.
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`Swanepoel—not a person of ordinary skill in the relevant art.
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`II. MR. PECK’S OPINIONS ON CONSUMER DEMAND AND
`COMMERCIAL SUCCESS ARE NOT SUPPORTED BY HIS
`EXPERTISE
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`Petitioner attempts to admit paragraphs 15, 18, and 26 of Mr. Peck’s
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`declaration as both lay opinion testimony and expert testimony. But opinion
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`testimony must be classified as lay or expert testimony, not both, even if a single
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`witness may separately give both kinds of testimony. See Fed. R. Evid. 701(c) &
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`advisory committee’s notes. Mr. Peck testifies that (i) Trico’s Innovision “was a
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`1 Petitioner argues that Mr. Peck’s experience “qualifies him to testify that
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`mechanical engineers were capable of performing FEA [finite element analysis]
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`long prior to 1997.” Petitioner’s Opposition at 3. This is neither relevant nor in
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`dispute. VariFlex was not a generalized FEA tool applicable throughout the field of
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`mechanical engineering; it designed beam blades specifically. Nowhere in the
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`Petition did Petitioner assert that it would have been obvious to apply known FEA
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`tools to modify beam blades, much less to achieve the claimed invention.
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`3
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`success” and “demand this high constitutes a success” (Ex. 1100 ¶ 15); (ii) that
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`“there would [not] be any way to attribute the ‘customer demand’ … to the noise
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`testing” (id. ¶ 18); and (iii) that “consumer demand for quiet wipers is [not] related
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`… to the features described in any or each of these four patents” (id. ¶ 26). These
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`are the kind of opinions that require commercial expertise to be admissible. See
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`Motion at 4–5 (describing authorities).
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`Petitioner does not argue that Mr. Peck has the commercial or economic
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`expertise required to admit the challenged testimony under Rule 702. Instead,
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`Petitioner claims that Mr. Peck may testify to such issues because “[a]n expert may
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`base an opinion on facts or data in the case that the expert has been made aware of
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`or personally observed.” Petitioner’s Opposition at 11 (alteration and emphasis in
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`original) (quoting Fed. R. Evid. 703). But Rule 703 (titled “Bases of an Expert’s
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`Opinion Testimony”) presumes that the witness be “[a]n expert”; the quoted text
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`does not supplant the requirement that the witness be “qualified as an expert”
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`under Rule 702. Since Petitioner has not satisfied the prerequisites of Rule 702, the
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`testimony cannot be admitted. There is no reason to consider Rule 703.
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`The challenged testimony is also not admissible as lay opinions; Rule 701(c)
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`was meant to “eliminate the risk that the reliability requirements set forth in Rule
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`702 will be evaded through the simple expedient of proffering an expert in lay
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`witness clothing.” Fed. R. Evid. 701, advisory committee’s notes. Furthermore, lay
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`4
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`opinion testimony must be “rationally based on the witness’s perception.” Id.
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`701(a). As an engineer, Mr. Peck was not in any position to perceive sufficient
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`bases for his conclusion that Trico’s Innovision was commercially successful.
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`According to Petitioner, Mr. Peck’s conclusions regarding commercial success are
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`based solely on Mr. Peck’s knowledge that Trico had to increase its manufacturing
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`capacity. Petitioner’s Opposition at 11–12. But this one fact is not sufficient for a
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`layman to rationally reach the more general conclusion that the product was
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`commercially successful, particularly in any way relevant to this case. The
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`testimony therefore should be excluded.
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`DATED: January 3, 2017
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`Respectfully submitted,
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`Shearman & Sterling LLP
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`
`
`
`/Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`Mark A. Hannemann (pro hac vice)
`Joseph M. Purcell, Jr. (pro hac vice)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
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`Counsel for Patent Owner
`Robert Bosch LLC
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`
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`5
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`
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`Certificate of Service
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`REPLY ON MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. §
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`42.64(c) was served via electronic mail on January 3, 2017, on the following
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`counsel for Petitioner:
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`Richard M. Koehl (richard.koehl@hugheshubbard.com)
`James R. Klaiber (james.klaiber@hugheshubbard.com)
`David E. Lansky (david.lansky@hugheshubbard.com)
`Stefanie Lopatkin (stefanie.lopatkin@hugheshubbard.com)
`James Dabney (james.dabney@hugheshubbard.com)
`
`
`
`
`
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`
`
` /Patrick R. Colsher/
`Patrick R. Colsher
`Reg. No. 74,955
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`
`Counsel for Patent Owner
`Robert Bosch LLC
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