`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`COSTCO WHOLESALE CORPORATION,
`
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`
`Patent Owner.
`
`____________________
`
`CASE NO. IPR2016-00036
`
`U.S. Patent No. 6,944,905
`
`____________________
`
`PATENT OWNER ROBERT BOSCH LLC’S NOTICE OF APPEAL
`
`
`
`
`
`
`
`
`Please take notice that, pursuant to 37 C.F.R. §§ 90.2(a) and 90.3(a) and 35
`
`U.S.C. §§ 141(c), 142, and 319, Patent Owner Robert Bosch LLC (“Bosch”)
`
`hereby appeals to the United States Court of Appeals for the Federal Circuit
`
`stemming from the Final Written Decision entered on April 24, 2017 (Paper No.
`
`69) (the “Final Written Decision”) in the above-captioned inter partes review of
`
`U.S. Patent No. 6,944,905 (“the ’905 patent”).
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Bosch’s issues on appeal
`
`include at least the following: (i) in finding claims 13, 17, and 18 of the ’905 patent
`
`unpatentable as obvious under 35 U.S.C. § 103(a) over the combination of U.K.
`
`Patent App. No. GB 2 106 775 A to Prohaska (“Prohaska”) and German Patent No.
`
`1,028,896 to Hoyler, the Board made factual findings unsupported by the evidence,
`
`and failed to make factual findings mandated by the evidence—for example, by
`
`finding that a person of ordinary skill in the art would have been motivated to
`
`apply the spoiler teachings of Prohaska to the beam blade disclosed by Hoyler, and
`
`by finding that Hoyler discloses the claimed “end caps”; (ii) any findings or
`
`determinations supporting or related to those issues, as well as other issues decided
`
`adversely to Bosch in any orders, decisions, rulings, and opinions; (iii) it would
`
`violate the Constitution of the United States for the Patent and Trademark Office to
`
`extinguish Bosch’s property rights in the ’905 patent by cancelling the claims at
`
`issue in this inter partes review.
`
`
`
`
`
`
`
`
`
`Simultaneously with this submission, Bosch is filing a true and correct copy
`
`of this Notice of Appeal with the Director of the United States Patent and
`
`Trademark Office and a true and correct copy (or copies) of the same, along with
`
`the required filing fee, with the Clerk of the United States Court of Appeals for the
`
`Federal Circuit as set forth in the accompanying Certificate of Filing.
`
`
`
`
`
`DATED: June 26, 2017
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Shearman & Sterling LLP
`
`
`
`
`/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
`
`Counsel for Patent Owner
`Robert Bosch LLC
`
`
`
`2
`
`
`
`
`
`CERTIFICATE OF FILING
`
`The undersigned hereby certifies that, in addition to being electronically
`
`filed through E2E, a true and correct copy of the above-captioned PATENT
`
`OWNER ROBERT BOSCH LLC’S NOTICE OF APPEAL is being filed by
`
`Express Mail (Label No. EL 788212426) with the Director on June 26, 2017, at the
`
`following address:
`
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`The undersigned also hereby certifies that a true and correct copy of the
`
`above-captioned PATENT OWNER ROBERT BOSCH LLC’S NOTICE OF
`
`APPEAL and the filing fee is being filed via CM/ECF with the Clerk’s Office of
`
`the United States Court of Appeals for the Federal Circuit on June 26, 2017.
`
`
`
`DATED: June 26, 2017
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/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
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER
`
`ROBERT BOSCH LLC’S NOTICE OF APPEAL was served, in accordance with
`
`the parties’ electronic service agreement, via electronic mail on June 26, 2017, on
`
`the following counsel of record for Petitioner:
`
`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)
`
`
`
`DATED: June 26, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`/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
`
`
`
`
`
`
`
`
`
`
`
`
`
`