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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 68
`Entered: March 30, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`
`Case IPR2016-00038
`Patent 6,292,974 B1
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`IPR2016-00038
`Patent 6,292,974 B1
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`
`I.
`
`INTRODUCTION
`
`A. OVERVIEW
`Costco Wholesale Corp. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1, 2, and 8 of U.S. Patent
`No. 6,292,974 B1 (Ex. 1001, “the ’974 patent”). Pet. 1. Robert Bosch LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 15, “Prelim. Resp.”)
`to the Petition. We instituted inter partes review of claims 1, 2, and 8.
`Paper 16 (“Dec.”).
`We discuss preliminary matters, such as motions, in Section II below.
`We held an oral hearing on January 18, 2017. See Paper 66 (“Tr.”);
`see also Ex. 1206 (Petitioner’s transcript errata).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1, 2, and 8 the ’974 patent are
`unpatentable.
`
`B.
`
`RELATED PROCEEDINGS
`The parties indicate that the ’974 patent is at issue in: Robert Bosch
`LLC v. Alberee Products Inc. et al., No. 12-574-LPS (consolidated with No.
`14-142-LPS) (D. Del.) (“the related litigation”). Pet. 1; Paper 5, 1.
`The parties are currently involved in the following inter partes
`proceedings (“these proceedings”):
`
`
`2
`
`
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`IPR2016-00038
`Patent 6,292,974 B1
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`
`Case #
`
`Abbreviation
`
`U.S.
`Patent #
`6,973,698 “the ’698 patent”
`IPR2016-00034
`6,944,905 “the ’905 patent”
`IPR2016-00036
`6,292,974 “the ’974 patent”
`IPR2016-00038
`7,228,588 “the ’588 patent”
`IPR2016-00039
`IPR2016-000401 7,484,264 “the ’264 patent”
`IPR2016-00041
`8,099,823 “the ’823 patent”
`Two of the patents at issue in these proceedings, the ’905 patent and
`the ’974 patent, were at issue in prior litigation between Patent Owner and
`Pylon Manufacturing Corporation. Paper 36, 2. Robert Bosch LLC v. Pylon
`Manufacturing Corporation (D. Del., Case No. 08-542 (SLR)) (“the Pylon
`litigation”). See Paper 35, 1.
`In these proceedings, sometimes a party submitted an identical paper
`or exhibit in all of the proceedings even though that paper or exhibit may not
`be applicable, or applies in a different manner, to a particular proceeding.
`At other times, we are able to apply the analysis of one proceeding to
`another.
`
`
`
`
`1 The ’264 patent (IPR2016-00040) is a division of the application that
`became the ’588 patent (IPR2016-00039). IPR2016-00040, Ex. 1001, 1
`(62). The remaining patents are not related.
`
`3
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`IPR2016-00038
`Patent 6,292,974 B1
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`C.
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts that the challenged claims are unpatentable under
`the following grounds:
`Claims
`Challenged
`1, 2, 8 103(a) Prohaska2 and Appel3
`1, 2, 8 103(a) Prohaska and Hoyler4
`
`§
`
`References(s)
`
`Pet. 3.
`
`
`A.
`
`II. PRELIMINARY MATTERS
`PETITIONER’S MOTION TO STRIKE AND MOTION TO EXCLUDE
`These Motions deal with Exhibits 2005 and 2007. Exhibit 2005 is a
`transcript from the Pylon litigation between Patent Owner and a third party,
`and a portion of the transcript includes the testimony of Mr. Merkel, a
`named inventor on the ’974 patent.5 Paper 35, 1; Ex. 1001, [75]. Exhibit
`2007 is the Declaration of Martin Kashnowski, a Robert Bosch LLC
`employee. Ex. 2007 ¶ 1. Patent Owner filed both Exhibits in conjunction
`with Patent Owner’s Response as evidence relating to secondary
`considerations. See PO Resp. 7–15.
`
`
`2 U.K. Patent Application No. GB 2 106 775 A, published Apr. 20, 1983 (Ex.
`1004).
`3 U.S. Patent No. 3,192,551, issued July 6, 1965 (Ex. 1005).
`4 German Patent No. 1,028,896, published June 24, 1954 (Ex. 1006). The
`certified English translation begins at page 6.
`5 At times, the questioner mistakenly refers to the ’974 patent as the ’947
`patent. See, e.g., Ex. 2005, 226:3, 234:18.
`
`4
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`IPR2016-00038
`Patent 6,292,974 B1
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`In the Motion to Strike, Petitioner contends that we should strike
`Mr. Merkel’s trial testimony from the Pylon litigation as a matter of routine
`discovery because Patent Owner did not make Mr. Merkel available for
`cross-examination.6 Paper 35, 1–5 (citing 37 C.F.R. §§ 42.12, 42.51–53).
`We deal with the hearsay issue Petitioner raises in the Motion to Strike
`(Paper 35, 5, n.2) in the analysis of Petitioner’s Motion to Exclude.
`In the Motion to Exclude, Petitioner seeks to exclude: (1)
`Mr. Merkel’s former trial testimony (Ex. 2005, 210–264), (2) portions of
`Mr. Kashnowski’s testimony (Ex. 2007 ¶ 6, second, third, and fourth
`sentences), and (3) those portions of Patent Owner’s Response that rely on
`evidence that is excluded. Paper 50, 1–2.
`The background section that follows pertains to both Motions. For the
`reasons that follow, both motions are denied.
`Background
`1.
`On April 15, 2010, in Wilmington, Delaware, Mr. Merkel testified in
`the Pylon litigation. Paper 35, 1; Paper 60, 3; Ex. 1106, Tab A, ¶ 4.
`Mr. Merkel was then living in Germany and was an employee of Robert
`Bosch Gmbh, Patent Owner’s parent company. Ex. 2005, 210:4–211:3.
`English is a second language for Mr. Merkel and he testified with the aid of
`a translator. Id.
`
`
`6 Exhibit 2005 has native page numbers (129–393) one line down from the
`top right corner, and exhibit page numbers (1–265) in the lower right corner.
`For example, the first page of the exhibit has native page 129 and exhibit
`page number 1. For consistency, we reference exhibit page numbers. Where
`a party cites to native page numbers, we convert to exhibit page numbers.
`
`5
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`Patent 6,292,974 B1
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`
`On July 22, 2016, Patent Owner submitted, as evidence related to
`secondary considerations, a transcript from the Pylon litigation that includes
`the testimony of Mr. Merkel (Ex. 2005) and a declaration from
`Mr. Kashnowski (Ex. 2007). See PO Resp. 7–15.
`On July 29, 2016, Petitioner objected to Exhibits 2005 and 2007 on
`several grounds, including hearsay under Federal Rules of Evidence 801–
`804.7 Paper 29, 2, 4; Paper 35, 1–2; Paper 50, 2–4.
`On August 12, 2016, in response to those objections, Patent Owner
`served (on Petitioner), as supplemental evidence, a declaration from
`Mr. Merkel regarding his availability. Paper 36, 1; Ex. 1106 ¶ 4.
`Mr. Merkel states that he is a former employee of Patent Owner’s parent
`company Robert Bosch GmbH, and currently lives in Germany. Ex. 1106,
`Tab A ¶¶ 1–3; see also Paper 5, 1 (regarding parent company). Mr. Merkel
`states that he will not voluntarily give a deposition in this case because of his
`cardiac health. Ex. 1106, Tab A ¶¶ 5–6. Subsequently, Petitioner filed
`Mr. Merkel’s Declaration as Tab A of Exhibit 1106, following which Patent
`Owner filed a copy as Exhibit 2021.
`During discussion of the matter, Patent Owner proposed that
`Mr. Merkel answer written questions, and Petitioner declined, seeking cross-
`examination in person. See Paper 35, 2; Ex. 1106 ¶ 6; Ex. 1106, Tab C, 12.
`Subsequently, Petitioner asked that Patent Owner voluntarily withdraw
`Mr. Merkel’s testimony, and Patent Owner declined. Paper 35, 2; Ex. 1106,
`Tab E, 31. Following this, Petitioner requested a conference call with the
`
`
`7 The objections were filed within five business days of service of Patent
`Owner’s Response and Exhibit 2005. See 37 C.F.R. § 42.64(b).
`
`6
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`IPR2016-00038
`Patent 6,292,974 B1
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`Board and asked that either: (1) Mr. Merkel be made available for
`cross-examination or (2) the Board authorize a Motion to Strike
`Mr. Merkel’s testimony. Paper 35, 2. During the call, Counsel for Patent
`Owner represented that, prior to creating Mr. Merkel’s Declaration that was
`served as supplemental evidence, Patent Owner had not contacted
`Mr. Merkel in years. Ex. 1106 ¶ 3. We authorized Petitioner to file a
`Motion to Strike and authorized Patent Owner to file a response. Paper 31.
`Analysis of Motion to Strike
`2.
`Petitioner cites to our rules in support of the contention that, as a
`matter of routine discovery, we should strike Mr. Merkel’s testimony from
`the Pylon litigation (Ex. 2005) because Patent Owner did not make
`Mr. Merkel available for cross-examination. Paper 35, 1. Patent Owner
`counters, and we agree, that the testimony at issue is not “affidavit testimony
`prepared for the proceeding” as recited in 37 C.F.R. § 42.51(b)(1)(ii); rather,
`the testimony at issue is Mr. Merkel’s trial testimony from earlier District
`Court litigation. Paper 36, 3–4.
`Petitioner also makes three similar assertions, with supporting case
`citations, that striking Mr. Merkel’s testimony is warranted because Patent
`Owner did not make Mr. Merkel available for in-person cross-
`examination. Paper 35, 3–5. All of the cases cited by Petitioner are routine,
`non-precedential decisions.8
`
`
`8 See Standard Operating Procedure 2, ¶ III.E (Revision 9) (stating that in
`contrast to a routine opinion, a precedential opinion “is binding authority in
`subsequent matters involving similar facts or issues”).
`
`7
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`IPR2016-00038
`Patent 6,292,974 B1
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`
`First, Petitioner contends that a party must make a witness available
`when proffering that witness’s testimony. See Paper 35, 3 (citing HTC Corp.
`v. NFC Technology, LLC, Case IPR2014-01198, slip op. at 3 (PTAB Nov. 6,
`2015) (Paper 41) and Square Inc. v. REM Holdings 3, LLC, Case IPR2014-
`00312, slip op. at 2–3 (PTAB Dec. 9, 2014) (Paper 37)); see also Paper 35, 2
`(citing Square Inc for the proposition that Petitioner is entitled to
`cross-examination). In HTC Corp., the Board expunged a declaration from a
`nonparty witness where that witness declined cross-examination for
`“personal reasons” and caused considerable delay in the proceeding. HTC
`Corp., slip op. at 1–5. The case at hand is distinguishable in several
`respects: the document at issue is a trial transcript rather than a declaration,
`Mr. Merkel is unavailable based on an alleged medical condition rather than
`“personal reasons,” and Petitioner does not allege that Mr. Merkel caused
`delay in this proceeding. See id. In Square Inc., where the witness was
`outside the United States, the Board determined that cost alone was not a
`sufficient reason to preclude in-person cross-examination. Square Inc., slip
`op. at 2–3. Here, in contrast, cost is not the sole issue; it is uncontested that
`the witness (Mr. Merkel) is unavailable due to a medical condition that
`allegedly precludes travel.
`Second, Petitioner contends that submittal of Mr. Merkel’s testimony
`subjects him to cross-examination, adding that this point is reinforced by
`Patent Owner “having submitted an affidavit from Mr. Merkel” in these
`proceedings. Paper 35, 4 (citing IBG LLC v. Trading Techs. Int’l, Inc., Case
`CBM2015-00179, slip op. at 2–3 (PTAB Apr. 15, 2016) (Paper 39)). To the
`extent that Petitioner suggests that Patent Owner filed Mr. Merkel’s
`Declaration in this proceeding, that is incorrect. As explained above, Patent
`
`8
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`Patent 6,292,974 B1
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`Owner served that Declaration as supplemental evidence, and Petitioner, not
`Patent Owner, filed it as an exhibit (Tab A of Ex. 1106). Patent Owner’s
`service of Mr. Merkel’s Declaration as supplemental evidence was not
`improper.
`We disagree with Petitioner’s characterization of IBG and with the
`assertion that the holding is applicable to this case. In IBG, as the sole
`evidence that a reference was prior art, the petitioner submitted a witness’s
`deposition testimony from prior litigation between the patent owner and a
`third party. IBG, slip op. at 1–2. The Board determined that it was the
`petitioner’s responsibility to produce the witness for cross-examination, and
`the Board cautioned, that if not produced, the witness’s availability would be
`considered when weighing his deposition. Id. at 3. Consequently, IBG does
`not stand for the proposition that if a party fails to produce a witness for
`cross-examination the deposition of that witness will be stricken or
`excluded; rather, the Board stated that such failure would impact the weight
`afforded that evidence, not its admissibility. Further, IBG is distinguishable
`from the case at hand in that in IBG the petitioner made an assertion that the
`witness was “unavailable,” but the Board did not make such a finding, and
`here, it is uncontested that the witness is unavailable.9 Id.
`Third, Petitioner asserts that because the routine discovery period is
`closed and Patent Owner failed to make Mr. Merkel available, Mr. Merkel’s
`testimony from earlier District Court litigation “must be stricken, expunged
`from the record, and given no weight.” Paper 35, 4–5 (citing IBG and three
`
`
`9 In IBG the evidence at issue was a deposition rather than trial testimony.
`
`9
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`IPR2016-00038
`Patent 6,292,974 B1
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`other Board decisions). We address IBG above. The remaining three cases
`are distinguishable for the reasons that follow.
`Arisdyne is distinguishable in that it dealt with the highly unusual
`situation of live testimony before at least one member of the panel. Id. at 1–
`2. Arisdyne Sys., Inc. v. Cavitation Tech., Inc., Case IPR2015-00977, slip
`op. at 2–3 (PTAB Dec. 15, 2015) (Paper 32).
`In John’s Lone Star, the petitioner submitted affidavit testimony from
`a witness triggering cross-examination under 37 C.F.R. § 42.51(b)(1), and
`because petitioner did not make that witness available for cross-examination,
`the Board expunged that testimony. John’s Lone Star Distrib., Inc. v.
`Thermolife Int’l, Inc., Case IPR2014-01201 (PTAB May 13, 2015) (Paper
`31). As noted above, Mr. Merkel’s testimony from earlier District Court
`litigation is not in the form of affidavit testimony and does not trigger 37
`C.F.R. § 42.51(b)(1).
`Ikaria is distinguishable in that it was an unopposed motion to
`expunge. Ikaria, Inc. v. Geno LLC, Case IPR2013-00253 (PTAB Apr. 24,
`2014) (Paper 22).
`Petitioner has not persuaded us that expunging Mr. Merkel’s
`testimony from the Pylon litigation is warranted as a matter of routine
`discovery. See 37 C.F.R. §§ 42.20(c), 42.22.
`Analysis of Motion to Exclude
`3.
`As stated above, Petitioner seeks to exclude: (1) Mr. Merkel’s former
`trial testimony (Ex. 2005, 210–264), (2) portions of Mr. Kashnowski’s
`testimony (Ex. 2007 ¶ 6, second, third, and fourth sentences), and (3) those
`portions of Patent Owner’s response that rely on evidence that is excluded.
`Paper 50, 1–2.
`
`10
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`IPR2016-00038
`Patent 6,292,974 B1
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`a) Mr. Merkel’s former testimony
`Petitioner argues that, “the deadline for Patent Owner to submit
`supplemental evidence passed on August 12, 2016.” Paper 50, 9–10. To the
`extent that Petitioner suggests it was improper for Patent Owner to submit
`Mr. Merkel’s Declaration with Patent Owner’s Opposition to Petitioner’s
`Motion to Exclude, we disagree. As explained above, Patent Owner timely
`served Mr. Merkel’s Declaration on Petitioner as supplemental evidence, and
`Petitioner filed Mr. Merkel’s Declaration as Tab A of Exhibit 1106. See 37
`C.F.R. § 42.64(b)(1).
`Petitioner contends that the “Board does not even have the power to
`review this exhibit because it is neither an ‘affidavit’ nor a ‘deposition
`transcript.’” Paper 50, 5 (citing 37 C.F.R. §§ 42.12, 42.53(a), 42.53(f)(7),
`42.61(a), and 42.104(b)(5); Paper 64, 2).
`We disagree. Petitioner’s contention based on our rules does not
`belong in a Motion to Exclude because a Motion to Exclude deals with the
`admissibility of evidence under the Federal Rules of Evidence. See 37
`C.F.R. §§ 42.62 (applying the Federal Rules of Evidence to inter partes
`reviews), 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,758
`(August 14, 2012) (“Admissibility of evidence is generally governed by the
`Federal Rules of Evidence.”). As stated in the Office Patent Trial Practice
`Guide, the parties may submit motions to exclude regarding evidence
`“believed to be inadmissible.” Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,758. Further, a motion to exclude “must explain why the evidence
`is not admissible (e.g., relevance or hearsay).” Id. at 48,767. Even
`considering Petitioner’s contention based on our rules, for the reasons given
`by Patent Owner (Paper 60, 2–3), § 42.53(a) applies to testimony taken for
`
`11
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`IPR2016-00038
`Patent 6,292,974 B1
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`the proceeding at hand and does not preclude our consideration of
`Mr. Merkel’s prior testimony in litigation. Paper 60, 2–3.
`The testimony in question is hearsay because Mr. Merkel’s testimony
`in the Pylon litigation was not made while testifying at the current
`proceeding, and is being offered to prove the truth of the matter asserted.10
`Fed. R. Evid. 801(c); Paper 50, 6–7. Consequently, this testimony is
`inadmissible unless an exception applies. Fed. R. Evid. 802. Patent Owner
`contends that the exception of Federal Rule of Evidence 804(b)(1) applies,
`and Petitioner contends that it does not. See Paper 50, 8–12; Paper 60, 3–7;
`Paper 64, 1–3.
`Petitioner does not disputed that Mr. Merkel is unavailable due to an
`infirmity or physical illness, namely his cardiac health.11 Paper 60, 3–4; Ex.
`1106, Tab A ¶¶ 5–6; Fed. R. Evid. 804(a)(4). Further, it is undisputed that
`the testimony at issue was given by a witness at trial. Fed. R. Evid.
`804(b)(1)(A). Therefore, the focus of our inquiry is whether Pylon had an
`opportunity and similar motive to develop Mr. Merkel’s testimony through
`cross-examination as Petitioner does in this proceeding. Patent Owner, as
`the proponent of former testimony, bears “the burden of establishing that
`[the transcript] came within the former testimony hearsay exception.” See
`generally, United States v. Kennard, 472 F.3d 851, 856 (11th Cir. 2006)
`(citation omitted); see also, e.g., United States v. Omar, 104 F.3d 519, 522
`
`
`10 Regarding the matter asserted in the proffered testimony, see PO Resp. 9–
`11.
`11 Patent Owner asserts, and we agree, that on this preliminary question of
`the admissibility of Exhibit 2005, we may consider Mr. Merkel’s
`Declaration. Paper 60, 4; Fed. R. Evid. 104(a).
`
`12
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`IPR2016-00038
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`(1st Cir. 1997) (“And, the evidence in question being hearsay, it was the
`defendants’ burden to prove each element of the [804(b)(1)] exception they
`invoked.”).
`Petitioner contends that Patent Owner cannot demonstrate that the
`exception of Fed. R. Evid. 804(b)(1) applies because there is not sufficient
`identity of issues between the Pylon litigation and the proceeding at hand.
`Paper 50, 10. In particular, Petitioner emphasizes Mr. Merkel’s failure to
`mention any prior art references. Id. Further, according to Petitioner, the
`Pylon litigation was primarily interested in derivation. Id.
`Patent Owner contends that Pylon had a like opportunity and motive.
`Paper 60, 3 (citing Lloyd v. Am. Export Lines, Inc., 580 F.2d 1179, 1187 (3d
`Cir. 1978); Supermarket of Marlinton, Inc. v. Meadow Gold Diaries, Inc., 71
`F.3d 119, 128 (4th Cir. 1995); Clay v. Johns–Manville Sales Corp., 722 F.2d
`1289, 1295 (6th Cir. 1983)). In particular, Patent Owner asserts that Pylon
`was asserting the obviousness of Patent Owner’s patents, to include the ’974
`patent, and some of the same prior art overlaps with this proceeding. Id. at
`5; Ex. 2005, 22:2–3. Patent Owner contends that Mr. Merkel’s testimony is
`offered to prove that:
`(i) no commercially viable beam blades existed before 2002,
`when Bosch satisfied the long-felt need for them, (id. at 218:16–
`220:2); (ii) Bosch’s first commercial beam blade (Aerotwin) and
`later product (Icon) practice the challenged claims, (id. at
`225:22–226:1); (iii) these blades included a flexible spoiler with
`diverging legs mounted on top of the blade, as well as plastic end
`caps, (id. at 231:12–232:4); and (iv) beam blades are sensitive to
`changes caused by adding structures, (id. at 260:23–263:8).12
`
`12 This quote was altered by converting native page numbering to exhibit
`numbering.
`
`13
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`Paper 60, 5. According to Patent Owner, this evidence was relevant in the
`Pylon litigation for the same reason it is relevant here, as objective evidence
`of non-obviousness regarding consequences of modifications to beam
`blades. Id. at 6.
`In response, Petitioner makes several contentions in support of the
`argument that Patent Owner has not demonstrated that Pylon was a
`“predecessor in interest” that had an opportunity and similar motive to
`develop what Petitioner would have sought to develop on cross-examination
`of Mr. Merkel in this case. Paper 64, 1–3. First, Petitioner contends that
`Mr. Merkel’s assertion could have been presented by “any number of
`witnesses.” Paper 64, 1. This contention is not a factor for consideration
`under Fed. R. Evid. 804(b)(1).
`Second, Petitioner repeats the appeal to 37 C.F.R. § 42.53(a). Paper
`64, 2. This contention is unpersuasive for the reasons given above.
`Third, Petitioner asserts that Patent Owner had a powerful motive to
`shield Mr. Merkel from cross-examination because Mr. Merkel was found to
`have falsely taken credit for subject matter conceived by a third party. Paper
`64, 2 (citing Robert Bosch, LLC v. Pylon Mfg. Corp., 775 F. Supp. 2d 739,
`745 (D. Del. 2011) (“Merkel and Leutsch committed a material omission by
`presenting Fehrsen’s ideas as their own during the prosecution of the ’974
`patent . . . .”)).13 This factor is also not relevant to our inquiry under Fed. R.
`Evid. 804(b)(1).
`Fourth, Petitioner emphasizes that the Pylon litigation took place in
`2010 and Petitioner’s opportunity for cross-examination would have been in
`
`
`13 Notably, Petitioner does not make this argument in the Reply (Paper 33).
`
`14
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`2016. Paper 64, 2–3. Petitioner adds that Patent Owner engaged in a
`“pattern of discovery misconduct” during the related litigation. Id. at 3
`(citing Robert Bosch LLC v. Alberee Products, Inc., 171 F. Supp. 3d 283,
`291–92 (D. Del. 2016)).
`The passage of time is not directly relevant to our inquiry. What
`matters, as stated above, is whether Pylon had opportunity and similar
`motive to develop Mr. Merkel’s testimony through cross-examination.
`Regarding the alleged pattern of misconduct, in the related litigation,
`the Court stated
`[a]mong the issues that have been repeatedly addressed are the
`failure of Bosch LLC to produce discovery ordered by the Court,
`for reasons including Bosch LL’s insistence that the documents
`are in the control of its parent Bosch GmbH and Bosch GmbH
`for some time refused to provide them to Bosch LLC.
`Bosch LLC, 171 F.Supp3d at 292 (citing D.I. 285 at 1).14 The Court went on
`to state that Bosch LLC (Patent Owner) failed to comply with a discovery
`order and that Costco (Petitioner) was entitled to some relief, and the court
`authorized Costco to file a motion to dismiss as a sanction for Bosch LLC’s
`(Patent Owner’s) conduct. Id. at 292–293. Petitioner does not provide
`argument or evidence regarding subsequent action in this case.
`The question at hand is whether Pylon had opportunity and similar
`motive to develop Mr. Merkel’s testimony through cross-examination.
`Petitioner has failed to explain cogently how Patent Owner’s misconduct
`during discovery in the related litigation is relevant to that inquiry.
`
`
`14 “D.I.” refers to C.A. No. 12–574–LPS. See Bosch LLC, 171 F.Supp3d at
`285, n. 1.
`
`15
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`Petitioner contends that the prosecution history of the ’974 patent
`undermines Mr. Merkel’s prior testimony. Paper 50, 6–7. Even if the
`prosecution history contradicts Mr. Merkel’s testimony, that does not render
`Mr. Merkel’s testimony inadmissible.
`We agree with Patent Owner that Mr. Merkel’s testimony in the Pylon
`litigation relates to secondary considerations and that those same secondary
`considerations are at issue here as well.
`We agree with Patent Owner that the presence of the defense of
`derivation in the Pylon litigation did not negate Pylon’s motive and
`opportunity to cross-examine Mr. Merkel with regard to the obviousness of
`the claimed subject matter. Paper 60, 7.
`In light of this, Mr. Merkel’s former trial testimony is admissible
`under Federal Rule of Evidence 804(b)(1). Consequently, Petitioner has not
`persuaded us that Mr. Merkel’s testimony should be excluded. See 37 C.F.R.
`§§ 42.20(c), 42.22.
`Patent Owner also asserts that Mr. Merkel’s testimony is admissible
`under the residual hearsay exception. Paper 60, 8. We agree with Petitioner
`that Patent Owner has failed to demonstrate that the evidence “is more
`probative on the point[s] for which it is offered than any other evidence that
`the proponent can obtain through reasonable efforts.” Paper 64, 3–4. Fed.
`R. Evid. 807(a)(3).
`b) Mr. Kashnowski’s testimony
`Petitioner seeks to exclude Mr. Kashnowski’s testimony as
`inadmissible on two bases: (1) under 37 C.F.R. §§ 42.61, 42.65, and (2) as
`hearsay. Paper 50, 12–15; Paper 64, 4–5.
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`16
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`
`
`(1) 37 C.F.R. § 42.65
`Petitioner contends that Mr. Kashnowski’s testimony (Ex. 2007 ¶ 6
`second, third, and fourth sentences) deals with test results, but Patent Owner
`does not provide the information required by 37 C.F.R. § 42.65(b), rendering
`the testimony inadmissible under 37 C.F.R. § 42.61(a). Paper 50, 12–14.
`Paragraph 6 of Mr. Kashnowski’s Declaration, with the sentences at
`issue underlined, follows:
`Both the Aerotwin blade and the Icon blade included a flexible
`spoiler with diverging legs mounted on the top of the blade, as
`well as plastic end caps. Bosch tested these products extensively
`before releasing them. One aspect tested was noise. The Bosch
`beam blades were quiet in operation, including when the wiping
`direction changes and the wiper strip flips from one side to the
`other. Those features were part of the reason for the great
`customer demand for these products. Both products solved many
`of the problems associated with conventional blades.
`Rule 42.65 does not apply because Mr. Kashnowski’s testifies as a
`factual witness, not as an expert. See 37 C.F.R. § 42.65 (“Expert Testimony;
`tests and data”); Paper 60, 10 (asserting the Mr. Kashnowski is a factual
`witness). Nor is the testimony at issue an attempt to submit expert testimony
`by a factual witness. See Paper 60, 10–11 (explaining the context of the
`evidence). Patent Owner relies on the evidence in the following manner:15
`Bosch tested these products extensively before releasing
`them. Ex. 2007 at ¶ 6. One aspect tested was noise. Ex. 2007 at
`¶ 6. The Bosch beam blades were quiet in operation, including
`
`15 Patent Owner also relies on the first sentence of paragraph 6 of Exhibit
`2007 in support of the assertion that the Aerotwin and Icon blades practice
`the challenged claims. See PO Resp. 11. We need not address this evidence
`because Petitioner does not challenged the first sentence of paragraph 6 of
`Exhibit 2007.
`
`17
`
`
`
`IPR2016-00038
`Patent 6,292,974 B1
`
`
`when the wiping direction changes and the wiper strip flips from
`one side to the other. Ex. 2007 at ¶ 6.
`PO Resp. 11–12. Patent Owner is not utilizing Mr. Kashnowski’s testimony
`to explain the details of a technical test or data. Rather, Patent Owner
`utilizes this evidence to support the more generalized contention that the
`products were tested to reduce noise.16
`Patent Owner goes on to assert that,
`These features were part of the reason for the great customer
`demand for these products. Ex. 2007 at ¶ 6; Ex. 2005 at 270:14–
`271:3. Both products solved many of the problems associated
`with conventional blades. Ex. 2007 at ¶ 6.
`Id. at 12. These assertions pertain to the fifth and sixth sentences of
`paragraph 6 of Exhibit 2007, sentences that are not challenged by Petitioner.
`See Paper 50, 2 (specifically identifying the second, third, and fourth
`sentences). Even if Petitioner intended to seek exclusion of the fifth and
`sixth sentences, our analysis above is equally applicable.
`Petitioner has not persuaded us that Rule 42.65 prohibits use of
`evidence in this manner or is an improper attempt to skirt that rule.
`c) Hearsay
`Petitioner contends that
`Mr. Kashnowski’s testimony regarding wiper testing and
`consumer demand in paragraph 6 of his declaration constitutes
`inadmissible hearsay because it conveys “a statement” made by
`a declarant who is not “testifying at the current trial or hearing,”
`
`
`16 3D-Matrix is distinguishable in that there the proffering party sought to
`submit what amounted to expert testimony. 3D-Matrix Ltd. v. Menicon Co.,
`Case IPR2014-00398, slip op. at 7–9 (PTAB Aug. 1, 2014) (Paper 11)
`(discussing a calculation of the pH level of acidic and amino acid residue).
`
`18
`
`
`
`IPR2016-00038
`Patent 6,292,974 B1
`
`
`and it is offered by Patent Owner “in evidence to prove the truth
`of the matter asserted in the statement.”
`Paper 50, 14 (citing Fed. R. Evid. 801(c)). In particular, Petitioner asserts
`that the evidence does not establish that Mr. Kashnowski actually observed
`the test, and that Mr. Kashnowski’s statement may simply be repeating what
`he was told by another. Id. 14–15.
`
`Mr. Kashnowski’s statement was made while testifying in the current
`proceeding. Mr. Kashnowski’s statement is silent regarding how the
`information was obtained, and does not explicitly repeat the statement of
`another. Regarding the lack of information that Mr. Kashnowski observed
`the tests, although Petitioner objected under Fed. R. Evid. 602, Petitioner did
`not preserve that objection by asserting that rule in the Motion to Exclude.
`See Paper 29, Paper 50, 14–15 (not asserting Fed. R. Evid. 602); Paper 60,
`12; 37 C.F.R. § 42.64(c).
`
`Consequently, Petitioner has not demonstrated effectively that the
`testimony at issue is inadmissible hearsay.
`d) Related Portions of Patent Owner’s Response
`Given that we deny Petitioner’s Motion to Exclude with regard to
`Mr. Merkel’s testimony and Mr. Kashnowski’s Declaration, there are no
`associated portions of Patent Owner’s Response to consider for exclusion.
`
`PATENT OWNER’S MOTION TO EXCLUDE
`Exhibit 1100 is the Declaration of David Peck.
`Petitioner served and filed the Declaration of David Peck (Ex. 1100)
`on October 24, 2016, in conjunction with Petitioner’s Reply. Within five
`business days, on October 31, 2016, Patent Owner objected for several
`
`B.
`
`19
`
`
`
`IPR2016-00038
`Patent 6,292,974 B1
`
`reasons, including Federal Rules of Evidence 701 and 702. See Paper 37, 1–
`2; Pet Reply, 24 (Certificate of Service); 37 C.F.R. § 42.64(b)(1). Petitioner
`does not challenge the timeliness or specificity of Patent Owner’s objections.
`See Paper 57; 37 C.F.R. § 42.64(b)(1).
` Person of Ordinary Skill at the Time
`1.
`Patent Owner seeks to exclude paragraphs 7, 9–11, 18, 19, 21, and
`23–26 because, according to Patent Owner, Mr. Peck is not qualified to give
`technical expert opinions regarding a person of ordinary skill in the art at the
`time of the invention. Paper 49, 1–4. In support, Patent Owner contends
`that: Mr. Peck’s Declaration does not address the level of skill in the art,
`Mr. Peck’s experience began after the critical data of the ’974 patent, and
`Mr. Peck has never been a wiper-blade designer to include beam style
`wipers. Paper 49, 2–4.
`Petitioner counters that Mr. Peck has a Bachelor of Science in
`mechanical engineering and has held var
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