`U.S. Patent No. 6,944,905
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`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’S OBJECTIONS TO PETITIONER’S REPLY
`EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`
`
`
`
`
`Patent Owner Robert Bosch LLC (“Bosch”) objects to the evidence
`
`submitted by Petitioner Costco Wholesale Corp. (“Costco”) on October 24, 2016
`
`with its reply brief, and evidence newly cited therein, as follows:
`
`Bosch objects to Ex. 1100 (Declaration of David Peck) under Fed. R. Evid.
`
`401 and 701–02 and 37 C.F.R. § 42.23(b). Paragraphs 5–26 of Ex. 1100 constitute
`
`unqualified expert testimony (Fed. R. Evid. 702) because Costco has not
`
`established Mr. Peck as an expert to opine on the thinking of a person of ordinary
`
`skill in the art at the time of the invention, or the applicability of any secondary
`
`considerations, and constitute improper lay opinion testimony (Fed. R. Evid. 701)
`
`because the opinions offered by Mr. Peck are based on “scientific, technical, or
`
`other specialized knowledge within the scope of Rule 702.” Costco further has
`
`failed to provide the requisite disclosures required by Fed. R. Civ. P. 26(a)(2)(B).
`
`Paragraphs 5–13, 14, 17, and 21–26 of Ex. 1100 constitute material outside the
`
`proper scope of a reply (37 C.F.R. § 42.23(b)) because they do not respond to
`
`arguments in Bosch’s patent owner response and because they add to or modify the
`
`grounds and evidence of alleged unpatentability asserted in Costco’s petition and
`
`instituted by the Board and present evidence that should have been presented with
`
`Costco’s petition (35 U.S.C. § 312), for example by asserting additional prior art,
`
`evidence, and reasons that someone would have been motivated to modify or
`
`
`
`1
`
`
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`combine elements of the prior art. This evidence should have been presented in
`
`Costco’s petition. Because these paragraphs fall outside the scope of a proper
`
`reply, and further because they are presented from the perspective of a single
`
`artisan rather than a person of ordinary skill in the art, they are irrelevant (Fed. R.
`
`Evid. 401). To whatever extent Ex. 1100, or the portions of Costco’s reply that
`
`rely on it, may be considered supplemental information, it is untimely and
`
`improperly submitted under 37 C.F.R. § 42.123, for example because it expands
`
`the scope of the grounds upon which inter partes review was instituted.
`
`Bosch objects to Ex. 1102 (Second Declaration of Dr. Gregory W. Davis)
`
`under Fed. R. Evid. 401 and 37 C.F.R. § 42.23(b). Paragraphs 8–20 of Ex. 1102
`
`constitute material outside the proper scope of a reply (37 C.F.R. § 42.23(b))
`
`because they do not respond to arguments in Bosch’s patent owner response and
`
`because they add to or modify the grounds and evidence of alleged unpatentability
`
`asserted in Costco’s petition and instituted by the Board and present evidence that
`
`should have been presented with Costco’s petition (35 U.S.C. § 312), for example
`
`by asserting how a person of ordinary skill in the art would understand the prior art
`
`relied upon by Costco in its petition and by asserting additional prior art, evidence,
`
`and reasons that someone would have been motivated to modify or combine
`
`elements of the prior art. Costco’s petition relied upon the assertion that the spoiler
`
`of Prohaska was applicable to the different wiper blade of Hoyler. Costco should
`
`
`
`2
`
`
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`have submitted any evidence in support of this position with its petition. Bosch
`
`further objects to paragraphs 8, 10–13, and 17–18 of Ex. 1102 as improperly
`
`relying upon prior art not part of the grounds instituted by the Board. Just as the
`
`aforementioned paragraphs fall outside the scope of a proper reply and add to the
`
`issues that should have been presented in the petition, they are irrelevant to the
`
`issues properly part of this proceeding (Fed. R. Evid. 401). To whatever extent Ex.
`
`1103, or the portions of Costco’s reply that rely on it, may be considered
`
`supplemental information, it is untimely and improperly submitted under 37 C.F.R.
`
`§ 42.123, for example because it expands the scope of the grounds upon which
`
`inter partes review was instituted.
`
`Bosch objects to Ex. 1011 (DE 19736368) and Ex. 1012 (US 6,292,974),
`
`insofar as newly relied upon by Costco, under Fed. R. Evid. 104(b), 401, and 802
`
`and 37 C.F.R. §§ 42.23(b) and 42.63(b). Costco originally filed Exs. 1011 and
`
`1012 with its petition, but relied on them only to explain the ’905 patent, its
`
`prosecution history, and the alleged state of the art. It was not part of the grounds
`
`alleged in the petition or instituted by the Board. Ex. 1012 was submitted as a U.S.
`
`counterpart to, and assumed to be a translation of, Ex. 1011. It is irrelevant (Fed.
`
`R. Evid. 401) and hearsay (Fed. R. Evid. 802) insofar as relied upon to establish
`
`the English meaning of Ex. 1011, and Ex. 1011 is inadmissible insofar as its
`
`relevance depends on the translation (Fed. R. Evid. 104(b)). In its reply, Costco
`
`
`
`3
`
`
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`has improperly relied upon Ex. 1011 as prior art to support its asserted grounds, in
`
`violation of 37 C.F.R. §§ 42.23(b) and 35 U.S.C. § 312, and has done so without
`
`the translation and corresponding affidavit required by 37 C.F.R. §§ 42.63(b). Just
`
`as Exs. 1011 and 1012 are outside the scope of a proper reply and add to the issues
`
`that should have been presented in the petition, they are irrelevant to the issues
`
`properly part of this proceeding (Fed. R. Evid. 401). To whatever extent Exs. 1011
`
`and 1012, or the portions of Costco’s reply that rely upon them, may be considered
`
`supplemental information, they are untimely and improperly submitted under 37
`
`C.F.R. § 42.123, for example, because they expands the scope of the grounds upon
`
`which inter partes review was instituted.
`
`Bosch objects to Ex. 1016 (US 3,418,679) and its equivalent Ex. 2009,
`
`insofar as newly relied upon by Costco, under 37 C.F.R. § 42.23(b). Costco
`
`submitted Ex. 1016 with its petition but did not cite it for any purpose. In its reply,
`
`Costco has improperly relied upon Ex. 1016/2009 as prior art to support its
`
`asserted grounds, in violation of 37 C.F.R. §§ 42.23(b) and 35 U.S.C. § 312. To
`
`whatever extent Exs. 1016 and 2009, or the portions of Costco’s reply that rely
`
`upon them, may be considered supplemental information, they are untimely and
`
`improperly submitted under 37 C.F.R. § 42.123, for example because they expand
`
`the scope of the grounds upon which inter partes review was instituted.
`
`
`
`
`
`4
`
`
`
`DATED: October 31, 2016
`
`
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`Respectfully submitted,
`
`
`
`Shearman & Sterling LLP
`
`
`
`/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
`
`Attorneys for Patent Owner
`Robert Bosch LLC
`
`
`
`
`5
`
`
`
`
`
`
`
`
`
`Certificate of Service
`
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`OBJECTIONS TO PETITIONER’S REPLY EVIDENCE was served via
`
`electronic mail on October 31, 2016, on the following counsel 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)
`
`/Patrick R. Colsher/
`Patrick R. Colsher
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Counsel for Patent Owner
`Robert Bosch LLC