Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`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,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
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`CASE NO. IPR2016-00034
`U.S. Patent No. 6,973,698
`______________________
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S REPLY
`EVIDENCE
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`U.S. Patent No. 6,973,698
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00034
`U.S. Patent No. 6,973,698
`______________________
`
`
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S REPLY
`EVIDENCE
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`
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`Patent Owner Robert Bosch LLC (“Bosch”) objects to the evidence
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`submitted by Petitioner Costco Wholesale Corp. (“Costco”) on October 24, 2016,
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`with its reply brief as follows:
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`Bosch objects to Ex. 1100 (Declaration of David Peck) under Fed. R. Evid.
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`401 and 701–02 and 42.23(b). Paragraphs 5–26 of Ex. 1100 constitute unqualified
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`expert testimony (Fed. R. Evid. 702) because Costco has not established Mr. Peck
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`as an expert to opine on the thinking of a person of ordinary skill in the art at the
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`time of the invention, or the applicability of any secondary considerations, and
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`constitute improper lay opinion testimony (Fed. R. Evid. 701) because the opinions
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`offered by Mr. Peck are based on “scientific, technical, or other specialized
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`knowledge within the scope of Rule 702.” Costco further has failed to provide the
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`requisite disclosures required by Fed. R. Civ. P. 26(a)(2)(B). Paragraphs 5–13, 14,
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`17, and 21–26 of Ex. 1100 constitute material outside the proper scope of a reply
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`(37 C.F.R. § 42.23(b)) because they do not respond to arguments in Bosch’s patent
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`owner response and because they add to or modify the grounds and evidence of
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`alleged unpatentability asserted in Costco’s petition and instituted by the Board
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`and present evidence that should have been presented with Costco’s petition (35
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`U.S.C. § 312), for example, by asserting additional prior art, evidence, and reasons
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`that someone would have been motivated to modify or combine elements of the
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`prior art. This evidence should have been presented in Costco’s petition. Because
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`these paragraphs fall outside the scope of a proper reply, and further because they
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`are presented from the perspective of a single artisan rather than a person of
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`ordinary skill in the art, they are irrelevant (Fed. R. Evid. 401). To whatever extent
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`Ex. 1100, or the portions of Costco’s reply that rely on it, may be considered
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`supplemental information, it is untimely and improperly submitted under 37 C.F.R.
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`§ 42.123, for example, because it expands the scope of the grounds upon which
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`inter partes review was instituted.
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`Bosch objects to Ex. 1103 (Second Declaration of Dr. Gregory W. Davis)
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`under Fed. R. Evid. 401 and 42.23(b). Paragraphs 8–27 of Ex. 1103 constitute
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`material outside the proper scope of a reply (37 C.F.R. § 42.23(b)) because they do
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`not respond to arguments in Bosch’s patent owner response and because they add
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`to or modify the grounds and evidence of alleged unpatentability asserted in
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`Costco’s petition and instituted by the Board and present evidence that should have
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`been presented with Costco’s petition (35 U.S.C. § 312), for example, by asserting
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`how a person of ordinary skill in the art would understand the prior art relied upon
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`by Costco in its petition and by asserting additional prior art, evidence, and reasons
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`that someone would have been motivated to modify or combine elements of the
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`prior art. Costco’s petition relied upon (i) the incorporation by reference of Appel
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`’551 into Appel ’770, (ii) the combination of Arai and Appel ’770, and
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`(iii) Swanepoel’s alleged teaching of the elements of the challenged claims.
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`Costco should have submitted any evidence in support of these positions with its
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`petition. Just as these paragraphs fall outside the scope of a proper reply and add
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`to the issues that should have been presented in the petition, they are irrelevant to
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`the issues properly part of this proceeding (Fed. R. Evid. 401). To whatever extent
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`Ex. 1103, or the portions of Costco’s reply that rely upon it, may be considered
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`supplemental information, it is untimely and improperly submitted under 37 C.F.R.
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`§ 42.123, for example because it expands the scope of the grounds upon which
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`inter partes review was instituted.
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`DATED: October 31, 2016
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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)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
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`Attorneys for Patent Owner
`Robert Bosch LLC
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`3
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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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`OBJECTIONS TO PETITIONER’S REPLY EVIDENCE was served via
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`electronic mail on October 31, 2016, on the following 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)
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`/Patrick R. Colsher/
`Patrick R. Colsher
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
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`Counsel for Patent Owner
`Robert Bosch LLC
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