Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
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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. IPR2016-00038
`U.S. Patent No. 6,292,974
`______________________
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S REPLY
`EVIDENCE
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`U.S. Patent No. 6,292,974
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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. IPR2016-00038
`U.S. Patent No. 6,292,974
`______________________
`
`
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S REPLY
`EVIDENCE
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
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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, and evidence newly cited therein, 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 37 C.F.R. § 42.23(b). Paragraphs 5–26 of Ex. 1100 constitute
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`unqualified expert testimony (Fed. R. Evid. 702) because Costco has not
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`established Mr. Peck as an expert to opine on the thinking of a person of ordinary
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`skill in the art at the time of the invention, or the applicability of any secondary
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`considerations, and constitute improper lay opinion testimony (Fed. R. Evid. 701)
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`because the opinions offered by Mr. Peck are based on “scientific, technical, or
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`other specialized knowledge within the scope of Rule 702.” Costco further has
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`failed to provide the requisite disclosures required by Fed. R. Civ. P. 26(a)(2)(B).
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`Paragraphs 5–13, 14, 17, and 21–26 of Ex. 1100 constitute material outside the
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`proper scope of a reply (37 C.F.R. § 42.23(b)) because they do not respond to
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`arguments in Bosch’s patent owner response and because they add to or modify the
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`grounds and evidence of alleged unpatentability asserted in Costco’s petition and
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`instituted by the Board and present evidence that should have been presented with
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`Costco’s petition (35 U.S.C. § 312), for example by asserting additional prior art,
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`evidence, and reasons that someone would have been motivated to modify or
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`1
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
`combine elements of the prior art. This evidence should have been presented in
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`Costco’s petition. Because these paragraphs fall outside the scope of a proper
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`reply, and further because they are presented from the perspective of a single
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`artisan rather than a person of ordinary skill in the art, they are irrelevant (Fed. R.
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`Evid. 401). To whatever extent Ex. 1100, or the portions of Costco’s reply that
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`rely on it, may be considered supplemental information, it is untimely and
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`improperly submitted under 37 C.F.R. § 42.123, for example because it expands
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`the scope of the grounds upon which inter partes review was instituted.
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`Bosch objects to Ex. 1101 (Second Declaration of Dr. Gregory W. Davis)
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`under Fed. R. Evid. 401 and 37 C.F.R. § 42.23(b). Paragraphs 8–20 of Ex. 1101
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`constitute material outside the proper scope of a reply (37 C.F.R. § 42.23(b))
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`because they do not respond to arguments in Bosch’s patent owner response and
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`because they add to or modify the grounds and evidence of alleged unpatentability
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`asserted in Costco’s petition and instituted by the Board and present evidence that
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`should have been presented with Costco’s petition (35 U.S.C. § 312), for example
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`by asserting how a person of ordinary skill in the art would understand the prior art
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`relied upon by Costco in its petition and by asserting additional prior art, evidence,
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`and reasons that someone would have been motivated to modify or combine
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`elements of the prior art. Costco’s petition relied upon the assertion that the spoiler
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`of Prohaska was applicable to the different wiper blade of Hoyler or Appel.
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`2
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
`Costco should have submitted any evidence in support of this position with its
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`petition. Bosch further objects to paragraphs 8–12 and 17 of Ex. 1101 as
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`improperly relying upon prior art not part of the grounds instituted by the Board.
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`Just as the aforementioned paragraphs fall outside the scope of a proper reply and
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`add to the issues that should have been presented in the petition, they are irrelevant
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`to the issues properly part of this proceeding (Fed. R. Evid. 401). To whatever
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`extent Ex. 1103, or the portions of Costco’s reply that rely upon it, may be
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`considered supplemental information, it is untimely and improperly submitted
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`under 37 C.F.R. § 42.123, for example because it expands the scope of the grounds
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`upon which inter partes review was instituted.
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`Bosch objects to Ex. 1009 (US 3,317,945), insofar as newly relied upon by
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`Costco, under Fed. R. Evid. 401 and 37 C.F.R. § 42.23(b). Costco originally filed
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`Ex. 1009 with its petition, but relied on it only to explain the ’974 patent’s
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`prosecution history. It was not part of the grounds alleged in the petition or
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`instituted by the Board. In its reply, Costco has improperly relied upon Ex. 1009
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`as prior art to support its asserted grounds, in violation of 37 C.F.R. §§ 42.23(b)
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`and 35 U.S.C. § 312. Just as Ex. 1009 is outside the scope of a proper reply and
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`adds to the issues that should have been presented in the petition, it is 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. 1009, or the portions of Costco’s reply that rely upon it, may be considered
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`3
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
`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. 1007 (US 3,418,679) and its equivalent Ex. 2009,
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`insofar as newly relied upon by Costco, under 37 C.F.R. §§ 42.23(b). Costco
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`submitted Ex. 1007 with its petition but did not cite it for any purpose. In its reply,
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`Costco has improperly relied upon Ex. 1007/2009 as prior art to support its
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`asserted grounds, in violation of 37 C.F.R. §§ 42.23(b) and 35 U.S.C. § 312. To
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`whatever extent Exs. 1007 and 2009, or the portions of Costco’s reply that rely
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`upon them, may be considered supplemental information, they are untimely and
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`improperly submitted under 37 C.F.R. § 42.123, for example because they expand
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`the scope of the grounds upon which 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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`
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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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`4
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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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