Filed: October 24, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`
`
`Case IPR2016-00038
`Patent 6,292,974
`
`
`
`PETITIONER’S MOTION TO STRIKE HEARSAY
`TESTIMONY OF WILFRIED MERKEL [EXHIBIT 2005]
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`
`
`Case IPR2016-00038
`Patent 6,292,974
`
`
`
`PETITIONER’S MOTION TO STRIKE HEARSAY
`TESTIMONY OF WILFRIED MERKEL [EXHIBIT 2005]
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00038
`PETITIONER’S MOTION TO STRIKE
`
`
`TABLE OF AUTHORITIES
`
`Cases
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 5
`
`Page(s)
`
`Robert Bosch LLC v. Pylon Manufacturing Corp.,
`No. 08-542 (D. Del. Apr. 15, 2010) .................................................................. 1, 4
`
`Statutes and Rules
`
`35 U.S.C. § 316(a)(5) ................................................................................................. 3
`
`Federal Rule of Evidence 804 .................................................................................... 5
`
`Federal Rule of Evidence 804(b)(1)(B) ..................................................................... 5
`
`Regulations
`
`37 C.F.R. § 42 ............................................................................................................ 1
`
`37 C.F.R. § 42.5 ......................................................................................................... 4
`
`37 C.F.R. § 42.12 ....................................................................................................... 4
`
`37 C.F.R. §§ 42.51 ................................................................................................. 1, 3
`
`77 Fed. Reg. 48756 (Aug. 14, 2012).......................................................................... 3
`
`Legislative and Administrative Proceedings
`Arisdyne Sys., Inc. v. Cavitation Tech., Inc.,
`IPR2015-00977, Paper No. 32 (PTAB Dec. 15, 2015) ........................................ 5
`
`HTC Corp. v. NFC Technology, LLC,
`IPR2014-01198, Paper No. 41 (PTAB Nov. 6, 2015) ................................. 3, 4, 5
`
`IBG LLC v. Trading Techs. Int’l, Inc.,
`CBM2015-00179, Paper No. 39 (PTAB Apr. 15, 2016) .................................. 4, 5
`
`Ikaria, Inc. v. GeNO LLC,
`IPR2013-00253, Paper No. 22 (PTAB Apr. 24, 2014) ........................................ 5
`
`
`
`
`
`IPR2016-00038
`PETITIONER’S MOTION TO STRIKE
`TABLE OF AUTHORITIES
`Cont’d
`
`Cases
`John’s Lone Star Distrib., Inc. v. Thermolife Int’l, Inc.,
`IPR2014-01201, Paper No. 31 (PTAB May 13, 2015) ........................................ 5
`
`Page(s)
`
`Square, Inc. v. REM Holdings 3, LLC,
`IPR2014-00312, Paper No. 37 (PTAB December 9, 2014) ............................. 2, 3
`
`iii
`
`
`
`
`
`
`
`IPR2016-00038
`PETITIONER’S MOTION TO STRIKE
`
`
`Costco Wholesale Corporation (“Petitioner”) submits this Motion to Strike
`
`the hearsay testimony of Wilfried Merkel (Exhibit 2005, 210–264), submitted by
`
`Robert Bosch LLC (“Patent Owner”) in connection with IPR2016-00034,
`
`IPR2016-00036, IPR2016-00038, IPR2016-00039, IPR2016-00040, and IPR2016-
`
`00041 (the “IPRs”) pursuant to 37 C.F.R. §§ 42.51-53 (governing routine
`
`discovery), and 37 C.F.R. § 42.12. In each of the IPRs, Patent Owner submitted
`
`approximately 54 pages of a 2010 district court trial transcript, Robert Bosch LLC
`
`v. Pylon Manufacturing Corp., No. 08-542 (D. Del. Apr. 15, 2010), in which
`
`Mr. Merkel testified on behalf of Patent Owner. See Ex. 2005, 210–64. Each of
`
`Patent Owner’s Responses in the IPRs cites Mr. Merkel’s prior testimony as
`
`purportedly supporting assertions of non-obviousness in the IPRs, including as to
`
`patents that were not even at issue in the 2010 trial. See IPR2016-00034, Paper No.
`
`26, at 22, 24, 27; IPR2016-00036, Paper No. 28, at 17, 19, 22; IPR2016-00038,
`
`Paper No. 28, at 9, 11, 14; IPR2016-00039, Paper No. 31, at 12–14, 17; IPR2016-
`
`00040, Paper No. 28, at 13, 15–16, 18; IPR2016-00041, Paper No. 32, at 14, 15–
`
`16, 19.
`
`On July 29, 2016, Petitioner objected to Mr. Merkel’s testimony on multiple
`
`grounds. See Petitioner’s Objections to Evidence (Paper No. 29), 3. On August 12,
`
`2016, in response to Petitioner’s objections, Patent Owner served a Declaration of
`
`Wilfried Merkel, in which Mr. Merkel asserted that “for reasons of cardiac health”
`
`
`
`
`
`IPR2016-00038
`PETITIONER’S MOTION TO STRIKE
`he would not “voluntarily give a deposition in this case.” Ex. 1106 (Klaiber Decl.),
`
`pp. 6–8 (Tab A). After Petitioner inquired further, Patent Owner informed
`
`Petitioner that they contacted Mr. Merkel, but would not be producing him New
`
`York, instead proposing that Mr. Merkel answer written questions. Ex. 1106, p. 12
`
`(Tab C). Petitioner declined because “it is important to cross-examine this
`
`particular witness in person to properly discuss the many exhibits and technical
`
`issues that are involved in” these six cases and because it is entitled to do so.
`
`Square, Inc. v. REM Holdings 3, LLC, IPR2014-00312, Paper No. 37, at 2–3
`
`(PTAB December 9, 2014). Patent Owner rejected Petitioner’s suggestion to
`
`voluntarily withdraw Mr. Merkel’s testimony from consideration. Ex. 1106, p. 31
`
`(Tab E).
`
`On September 22, 2016, Petitioner sought relief from the Board and
`
`requested either that the Board order Patent Owner to make Mr. Merkel available
`
`for cross examination in the United States or authorize Petitioner to file a motion to
`
`strike. Ex. 1106, p. 33–34 (Tab F). On September 27, 2016, the Board held a
`
`teleconference call to discuss Petitioner’s request. During that call, counsel for
`
`Patent Owner represented that before Patent Owner supplemented its evidence
`
`with a declaration from Mr. Merkel, it had not contacted Mr. Merkel in years.1
`
`Subsequently, the Board authorized Petitioner to file a motion to strike Exhibit
`
`
`1 Ex. 1106 ¶ 3.
`
`
`
`2
`
`
`
`IPR2016-00038
`PETITIONER’S MOTION TO STRIKE
`2005, containing hearsay testimony of Mr. Merkel, from the record (Paper No. 31).
`
`I.
`
`THE BOARD SHOULD STRIKE EXHIBIT 2005 BECAUSE PATENT
`OWNER FAILED TO MAKE ITS TESTIFYING WITNESS, MR.
`MERKEL, AVAILABLE FOR CROSS-EXAMINATION IN THE U.S.
`
` “Under 35 U.S.C. § 316(a)(5), Congress tasked the Director with
`
`prescribing regulations ‘setting forth standards and procedures for discovery of
`
`relevant evidence including that such discovery shall be limited to …the deposition
`
`of witnesses submitting affidavits or declarations.” HTC Corp. v. NFC Technology,
`
`LLC, IPR2014-01198, Paper No. 41, at 3 (PTAB Nov. 6, 2015). As a “guiding
`
`principle” of “routine discovery,” “if a party proffers a witness’s testimony, that
`
`party must make that witness available for cross-examination by the other party” in
`
`the United States, and must bear all costs. Id. at 3–4 (citing 37 C.F.R. §§ 42.51–
`
`42.53 and Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14,
`
`2012)) (emphasis added by Board); see also Square Inc. v. REM Holdings 3, LLC,
`
`IPR2014-00312, Paper No. 37, at 2–3 (PTAB Dec. 9, 2014) (witness must be made
`
`available for cross-examination in the United States or be withdrawn).
`
`In HTC, the non-party witness refused to appear for deposition, and the
`
`Board concluded that under the rules governing routine discovery, Patent Owner
`
`must make him available for cross-examination. HTC, Paper No. 41, at 4 (citing 37
`
`C.F.R. § 42.53(b)(2), (3)). The Board exercised its authority to strike the
`
`declaration under 37 C.F.R. § 42.12(a) and (b), and further cited § 42.5(a). HTC,
`
`
`
`3
`
`
`
`IPR2016-00038
`PETITIONER’S MOTION TO STRIKE
`Paper 41, at 4 (citations omitted). The Board granted Petitioner’s subsequent
`
`motion to strike in part, and expunged the declaration. In lieu of striking portions
`
`of Patent Owner’s Response that cited to the expunged declaration, the Board gave
`
`no weight to any reliance on the declaration in Patent Owner’s Response. Id. at 5.
`
`In the instant proceeding, Patent Owner’s proffer of Mr. Merkel’s prior trial
`
`testimony in support of its secondary considerations argument subjects him to
`
`cross-examination as routine discovery. See IBG LLC v. Trading Techs. Int’l, Inc.,
`
`CBM2015-00179, Paper No. 39, at 2–3 (PTAB Apr. 15, 2016) (authorizing cross-
`
`examination as routine discovery where Petitioner attempted to use prior
`
`deposition testimony, but refused to make declarant available for cross-
`
`examination). This point is reinforced by Patent Owner’s having submitted an
`
`affidavit from Mr. Merkel in the IPRs which embraces that testimony. See
`
`Ex. 1106, pp. 6–8 (Tab A).
`
`As of October 24, 2016, the routine discovery period has closed. (Paper No.
`
`31). By failing to make Mr. Merkel available for cross-examination, Patent Owner
`
`has failed to comply with applicable rules, electing not to contact Mr. Merkel to
`
`see if he was available before submitting his testimony, failing to make him
`
`available, and then refusing to withdraw his testimony when he was not, all to
`
`Petitioner’s detriment. Accordingly, as set forth in HTC, the declaration and
`
`testimony of Mr. Merkel must be stricken, expunged from the record, and given no
`
`
`
`4
`
`
`
`IPR2016-00038
`PETITIONER’S MOTION TO STRIKE
`weight in the Board’s consideration of the Costco IPRs.2 See also IBG, CBM2015-
`
`00179, Paper No. 39; Arisdyne Sys., Inc. v. Cavitation Tech., Inc., IPR2015-00977,
`
`Paper No. 32 (PTAB Dec. 15, 2015); John’s Lone Star Distrib., Inc. v. Thermolife
`
`Int’l, Inc., IPR2014-01201, Paper No. 31 (PTAB May 13, 2015); Ikaria, Inc. v.
`
`GeNO LLC, IPR2013-00253, Paper No. 22 (PTAB Apr. 24, 2014).
`
`II. CONCLUSION
`For the foregoing reasons, Exhibit 2005 at 210–64 must be stricken and
`
`expunged from the record.
`
`
`
`
`2 Mr. Merkel‘s testimony should be disregarded for the additional reason that it
`
`constitutes inadmissible hearsay to which no exception applies. Even assuming that
`
`Mr. Merkel were “unavailable” for purposes of Federal Rule of Evidence 804, the
`
`provision in that rule for “Former Testimony” is inapplicable where, as here, the
`
`proponent seeks to offer former testimony against a litigant who was neither a
`
`party nor a predecessor in interest to a party to the prior proceeding. See Fed. R.
`
`Evid. 804(b)(1)(B). Petitioner has never had any opportunity to cross-examine Mr.
`
`Merkel with respect to the origin of the claimed subject matter, including with
`
`respect to OEM requirements that may have driven the development. Cf.
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 410 (2007) (OEM requirements led to
`
`making of claimed pedal system).
`
`
`
`5
`
`
`
`Respectfully Submitted,
`
`
`
`
`
` / Stefanie M. Lopatkin /
`Stefanie M. Lopatkin
`Registration No. 74,312
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004
`Stefanie.lopatkin@hugheshubbard.com
`(212) 837-6393
`Attorney for Petitioner
`Costco Wholesale Corporation
`
`6
`
`IPR2016-00038
`PETITIONER’S MOTION TO STRIKE
`Dated: October 24, 2016
`
`
`
`
`
`
`
`IPR2016-00038
`PETITIONER’S MOTION TO STRIKE
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 24th day of October, 2016, the foregoing Motion
`
`to Strike and Exhibit 1106 thereto were served by email in their entirety on the
`
`attorneys of record for Patent Owner:
`
`•
`
`•
`
`
`
`Patrick R. Colsher (patrick.colsher@shearman.com)
`
`Mark Hannemann (mark.hannemann@shearman.com)
`
` / Stefanie M. Lopatkin /
`
`Stefanie M. Lopatkin
`
`Registration No. 74,312
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
