Filed: December 13, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00038
`Patent 6,292,974
`____________
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
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`STATEMENT OF PRECISE RELIEF REQUESTED ........................ 2
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`IDENTIFICATION OF PETITIONER’S OBJECTIONS IN
`THE RECORD PURSUANT TO 37 C.F.R. § 42.64(C) ...................... 2
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`III. REASONS FOR RELIEF SOUGHT ................................................... 4
`
`A.
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`
`The Former Trial Testimony of Wilfried Merkel is
`Inadmissible Pursuant to Federal Rules of Evidence 801,
`802, and 804 ............................................................................... 4
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`1.
`
`2.
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`The Former Trial Testimony of Wilfried Merkel
`Constitutes Inadmissible Hearsay ................................... 6
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`Patent Owner Cannot Carry Its Burden of
`Establishing Each Element of
`the Former
`Testimony Exception to the Rule Against Hearsay
`Under Federal Rule of Evidence 804(b)(1) .................... 8
`
` Martin Kashnowski’s Testimony B.
`
`Inadmissible
`is
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`Pursuant to 37 C.F.R. § 42.65(b) and Constitutes
`Inadmissible Hearsay Pursuant to Federal Rules of
`Evidence 801 and 802 .............................................................. 12
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`1.
`
`2.
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`Martin Kashnowski’s Testimony Fails to Set
`Forth the Requirements for Relying on Technical
`Tests and Data Which Precludes Patent Owner
`from Relying on his Testimony .................................... 12
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`Mr. Kashnowski’s Testimony Constitutes
`Inadmissible Hearsay .................................................... 14
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`IV. CONCLUSION................................................................................... 15
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`i
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`TABLE OF AUTHORITIES
`
`Cases
`Holmquist v. Farm Family Cas. Ins. Co.,
`800 F. Supp. 2d 305 (D. Me. 2011) ............................................................ 10
`
`Page(s)
`
`Kirk v. Raymark Indus., Inc.,
`61 F.3d 147 (3d Cir. 1995) ........................................................................... 9
`
`Robert Bosch LLC v. Pylon Manufacturing Corp.,
` No. 08-542 (D. Del. Apr. 15, 2010)................................................... 3, 4, 14
`
`Robert Bosch, LLC v. Pylon Mfg. Corp.,
`775 F. Supp. 2d 739, vacated per stipulation,
`No. 08-542 (D. Del. Oct. 31, 2013) ............................................................ 11
`
`Transcraft, Inc. v. Galvin, Stalmack, Kirschner & Clark,
`39 F.3d 812 (7th Cir. 1994) .......................................................................... 6
`
`United States v. Kennard,
`472 F.3d 851 (11th Cir. 2006) .................................................................. 8, 9
`
`United States v. Omar,
`104 F.3d 519 (1st Cir. 1997) ......................................................................... 8
`
`Wonderland Nurserygoods Co. v. Kids II, Inc.,
`No. 1:13-CV-01114-ELR, 2016 WL 3958733 (N.D. Ga. Feb.
`10, 2016), report and recommendation adopted,
`No. 1:13-CV-01114-ELR, 2016 WL 4035521 (N.D. Ga. Mar.
`16, 2016) ..................................................................................................... 11
`
`Statutes and Rules
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`Federal Rules of Evidence 401, 402, 403 .......................................................... 3
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`Federal Rules of Evidence 602, 603 .................................................................. 3
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`Federal Rule of Evidence 611 .......................................................................... 10
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`Federal Rules of Evidence 702, 703 .................................................................. 3
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`Federal Rules of Evidence 801, 802, 803, 804 .........................................passim
`ii
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`Federal Rules of Evidence 901, 902 .................................................................. 3
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`Federal Rule of Evidence 1002 .......................................................................... 3
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`Regulations
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`37 C.F.R. § 42.12 ............................................................................................... 5
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`37 C.F.R. § 42.51 ........................................................................................... 2, 5
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`37 C.F.R. § 42.53 ............................................................................................... 2
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`37 C.F.R. § 42.53(a) ........................................................................................... 5
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`37 C.F.R. § 42.53(f)(7) ...................................................................................... 5
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`37 C.F.R. § 42.61(a) ..................................................................................... 5, 14
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`37 C.F.R. § 42.62 ............................................................................................... 4
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`37 C.F.R. § 42.64(b)(1) ...................................................................................... 2
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`37 C.F.R. § 42.64(b)(2) ...................................................................................... 9
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`37 C.F.R. § 42.64(c) ........................................................................................... 4
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`37 C.F.R. § 42.65 ............................................................................................... 3
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`37 C.F.R. § 42.65(b) ........................................................................ 4, 12, 13, 14
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`37 C.F.R. § 42.104(b)(5) .................................................................................... 5
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`Legislative and Administrative Proceedings
`Palo Alto Networks, Inc. v. Finjan, Inc., IPR 2015-01979, Paper
`No. 27 (PTAB Aug. 11, 2016) .................................................................... 10
`
`Samsung Elecs. Co. v. Unifi Sci. Batteries, LLC, IPR2013-00236,
`Paper No. 10 (PTAB Sept. 25, 2013) ......................................................... 13
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`Treatises and Periodical Materials
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`30 Charles A. Wright & Kenneth W. Graham, Jr.,
`Federal Practice and Procedure § 6325 (1st ed. 1997) ................................. 7
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`iii
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`Costco Wholesale Corporation (“Petitioner”) submits this Motion to Exclude
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`(i) the former trial testimony of Wilfried Merkel (Ex. 2005 at 338–921), and (ii)
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`portions of the Declaration of Martin Kashnowski (Ex. 2007) that relate to noise
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`testing. These exhibits were submitted by Robert Bosch LLC (“Patent Owner”) in
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`support of its Response to the Petition for inter partes review of U.S. Patent No.
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`6,292,974 (the “’974 Patent”; Ex. 1001). See Patent Owner Response (the
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`“Response”) (Paper No. 28) at 9–11 (citing Ex. 2005 at 337:10–23, 346:16–348:2,
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`353:22–354:1, 359:12–360:4, 388:23–391:8); id. at 11–12 (citing Ex. 2007 ¶ 6).
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`Patent Owner relies on this testimony in its attempt to overcome Petitioner’s
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`prima facie showing of obviousness of the ’974 Patent, but these exhibits cannot
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`form the basis of Patent Owner’s assertions because they are inadmissible. The
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`direct testimony of Wilfried Merkel (Ex. 2005 at 338–92) cannot be considered by
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`the Board because Mr. Merkel was never produced for deposition.2 His testimony,
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`1 These page citations reflect the actual page numbers of the transcript and
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`correspond to pages 210–64 of Patent Owner’s exhibit stamp.
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`2 Pursuant to an Order of this Board (Paper No. 31), Petitioner previously moved to
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`strike Mr. Merkel’s testimony because his failure to appear for deposition in
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`response to Petitioner’s Notice of Deposition (Paper Nos. 30, 32) denied Petitioner
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`the opportunity for cross-examination in accordance with the procedures governing
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`1
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`which is from a prior district court trial that involved a different defendant and
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`different issues, also constitutes hearsay. The testimony of Martin Kashnowski
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`(Ex. 2007 ¶ 6), a fact witness and employee of Patent Owner, regarding Patent
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`Owner’s internally conducted wiper testing and purported results, is also hearsay
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`and contravenes the rules because it omits any explanation of this testing. The
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`portions of Patent Owner’s Response that rely on this testimony should likewise be
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`excluded from consideration by the Board.
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioner requests that the Board grant its Motion to Exclude and that (i)
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`pages 338–92 of Exhibit 2005, and (ii) the second, third, and fourth sentences of
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`paragraph 6 of Exhibit 2007 be excluded from the record. Petitioner also requests
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`that the PTAB exclude or decline to consider portions of the Response that rely on
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`any evidence the Board excludes as a result of this Motion.
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`II.
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`IDENTIFICATION OF PETITIONER’S OBJECTIONS IN THE
`RECORD PURSUANT TO 37 C.F.R. § 42.64(c)
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`Petitioner timely objected to Exhibits 2005 and 2007. On July 22, 2016
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`Patent Owner submitted its Response to the Petition, including Exhibits 2005 and
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`2007. See Response at iv (Patent Owner’s List of Exhibits). Pursuant to 37 C.F.R.
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`inter partes review. See generally Petitioner’s Motion to Strike (Paper No. 35); see
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`also 37 C.F.R. §§ 42.51, 42.53 (governing routine discovery).
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`2
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`§ 42.64(b)(1), Petitioner filed objections to evidence on July 29, 2016, within five
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`business days of being served with Patent Owner’s evidence. See Petitioner’s
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`Objections to Evidence (the “Objections”) (Paper No. 29). Petitioner made the
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`following objections to Exhibit 2005 (id. at 3):
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`Exhibit 2005 (April 15, 2010 Trial Transcript from Robert Bosch LLC
`v. Pylon Manufacturing Corp. in the District of Delaware, Case No.
`08-542 (SLR)) is objected to under Fed. R. Evid. 401, 402, 403 for
`lack of relevance; under Fed. R. Evid. 602, 603 for lack of foundation
`as to matters discussed therein; under Fed. R. Evid. 702, 703 and 37
`C.F.R. § 42.65 for lack of qualified expert testimony and insufficient
`bases for such testimony; under Fed. R. Evid. 801, 802, 803, 804 as
`hearsay; under Fed. R. Evid. 901, 902 for lack of authentication, and
`under Fed. R. Evid. 1002 for lack of best evidence, including
`corroborating documentation. Patent Owner has produced no
`knowledgeable witness to testify in this proceeding or to be cross-
`examined as to these statements. Exhibit 2005 is also objected to
`insofar as it cites or refers to other objectionable exhibits and
`testimony.
`Petitioner also objected to Exhibit 2007 for the following reasons (id. at 4):
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`Exhibit 2007 (Declaration of Martin Kashnowski) is objected to under
`Fed. R. Evid. 401, 402, 403 for lack of relevance; under Fed. R. Evid.
`602, 603 for lack of foundation as to matters discussed therein; under
`Fed. R. Evid. 702, 703 and 37 C.F.R. § 42.65 for lack of qualified
`expert testimony and insufficient bases for such testimony; and under
`Fed. R. Evid. 801, 802, 803, 804 as hearsay. Exhibit 2007 is also
`3
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`objected to insofar as it cites or refers to other objectionable exhibits
`and testimony.
`Finally, Petitioner objected to “Patent Owner’s Response to the extent it relies on
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`or otherwise cites Exhibits . . . 2005 . . . [and] 2007 . . . for the reasons set forth” in
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`Petitioner’s Objections. Id. at 2.
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`Pursuant to 37 C.F.R. § 42.64(c) and the Board’s Scheduling Order (Paper
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`No. 17), Petitioner now seeks to exclude pages 338–92 of Exhibit 2005 pursuant to
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`Federal Rules of Evidence 801, 802, and 804, and to exclude portions of Exhibit
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`2007 pursuant to 37 C.F.R. § 42.65(b) as well as Federal Rules of Evidence 801
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`and 802. Petitioner’s explanations for these objections follow.
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`III. REASONS FOR RELIEF SOUGHT
`The Federal Rules of Evidence govern the admissibility of evidence in this
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`proceeding. See 37 C.F.R. § 42.62.
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` The Former Trial Testimony of Wilfried Merkel is Inadmissible A.
`Pursuant to Federal Rules of Evidence 801, 802, and 804
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`Patent Owner submitted approximately fifty-four pages of Wilfried Merkel’s
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`direct trial testimony from Robert Bosch LLC v. Pylon Manufacturing Corp., No.
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`08-542 (D. Del. Apr. 15, 2010) (the “Pylon Proceeding”). See Ex. 2005 at 338–92.
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`But having “produced no knowledgeable witness to testify in this proceeding or to
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`be cross-examined as to these statements” (Objections at 3) and having failed to
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`adhere to the procedural rules, Patent Owner deprived Petitioner of the testimony it
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`4
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`is entitled to. See generally Petitioner’s Motion to Strike (Paper No. 35) (moving to
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`strike the former trial testimony of Wilfried Merkel because Patent Owner failed to
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`produce him for deposition); see also 37 C.F.R. §§ 42.51, 42.53 (governing routine
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`discovery).
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`The Board does not even have the power to review this exhibit because it is
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`neither an “affidavit” nor a “deposition transcript.” 37 C.F.R. § 42.53(a); see also
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`37 C.F.R. § 42.61(a) (“Evidence that is not taken, sought, or filed in accordance
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`with this subpart is not admissible.”). And even by analogy, if it were considered
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`comparable to deposition testimony, it would also be improper because Patent
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`Owner did not submit
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`the cross-examination
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`transcript. See 37 C.F.R.
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`§ 42.53(f)(7) (“The [deposition] testimony must be filed as an exhibit.”). In fact,
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`Patent Owner did not just omit Mr. Merkel’s cross-examination, it selectively
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`introduced his direct examination, omitting a portion of direct, and any redirect.
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`See Ex. 2005 at 392:2–393:10. Patent Owner has flouted the inter partes review
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`procedures, and the Board has discretion to decline to consider this evidence. See
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`37 C.F.R. § 42.12; 37 C.F.R. § 42.104(b)(5).
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`Even if the Board was not precluded from reviewing Mr. Merkel’s former
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`trial testimony at the outset, for the reasons that follow, the transcript constitutes
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`inadmissible hearsay and should be excluded.
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`5
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`1.
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`The Former Trial Testimony of Wilfried Merkel
`Constitutes Inadmissible Hearsay
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`The former trial testimony of Wilfried Merkel is a “statement” that Mr.
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`Merkel did not “make while testifying at the current trial or hearing” and is being
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`offered by Patent Owner “in evidence to prove the truth of the matter asserted.”
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`Fed. R. Evid. 801(c) (defining hearsay); see also Transcraft, Inc. v. Galvin,
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`Stalmack, Kirschner & Clark, 39 F.3d 812, 818 (7th Cir. 1994) (“A trial transcript
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`is hearsay . . . if offered to prove the truth of testimony presented at the trial.”). In
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`particular, Patent Owner has sought to establish secondary considerations of
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`nonobviousness based in part on the factual assertions of Mr. Merkel. See, e.g.,
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`Response at 9–11 (citing Ex. 2005 at 337:10–23, 346:16–348:2, 353:22–354:1,
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`359:12–360:4, 388:23–391:8).
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`For example, in its Response, Patent Owner cited Mr. Merkel’s testimony
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`for the proposition that “[a]dding structures to a sensitive beam blade, especially
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`structures that raise the profile, would not have been expected to work and would
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`have been expected to cause lift-off problems.” Response at 11 (citing Ex. 2005 at
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`388:23–391:8). But, as Petitioner has previously discussed in detail, the
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`prosecution history of the ’974 Patent (Ex. 1002), including the arguments made
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`by Applicants therein, belies this testimony. See Petition (Paper No. 1) at 5–9;
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`Petitioner’s Reply in Support of the Petition (the “Reply”) (Paper No. 33) at 3–4.
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`6
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`The Examiner rejected the pending claims in view of U.S. Patent No. 3,317,945 to
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`Ludwig (“Ludwig”; Ex. 1009), which disclosed every claimed limitation except for
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`a spoiler “formed as a separate component.” See Petition at 6–7 (citing Ex. 1002 at
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`97, 117). But this limitation, according to the Examiner, was “an obvious variant of
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`Ludwig” that would have been driven by manufacturing-related choices. See
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`Petition at 7–8 (citing Ex. 1002 at 117). In response, rather than dispute this
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`finding, Applicants acquiesced and added trivial claim limitations which purported
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`to distinguish over Ludwig because “the stiffener strip 19 of Ludwig provides
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`lateral rigidity, [whereas] the support element of the applicant’s invention is
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`responsible to equally distribute the load applied by the wiper arm along the wiper
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`strip to the windscreen window.” See Petition at 8 (citing Ex. 1002 at 124, 125,
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`129); Reply at 3–4 (citing Ex. 1002 at 97, 117, 124–29). Applicants never
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`suggested that a person of ordinary skill in the art would not have known “how to
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`vary the spring element when incorporating the added stiffness” of a Ludwig-type
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`spoiler. See Institution Decision (Paper No. 16) (the “Decision”) at 14.
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`Petitioner is fortunate, in this instance, that the prosecution history of the
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`’974 Patent itself undermines the evidentiary value of Mr. Merkel’s statements, but
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`such obvious inconsistencies are not guaranteed to be present in the record.
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`Without the opportunity for cross-examination, Petitioner is at a severe
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`disadvantage. See 30 Charles A. Wright & Kenneth W. Graham, Jr., Federal
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`7
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`Practice and Procedure § 6325 (1st ed. 1997) (citation omitted) (“[T]he hearsay
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`rule, as accepted in our law, signifies a rule rejecting assertions, offered
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`testimonially, which have not in some way been subjected to the test of cross-
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`examination.”).
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`2.
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`Patent Owner Cannot Carry Its Burden of Establishing
`Each Element of the Former Testimony Exception to the
`Rule Against Hearsay Under Federal Rule of Evidence
`804(b)(1)
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`Patent Owner has suggested that this testimony is admissible pursuant to the
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`hearsay exception in Federal Rule of Evidence 804(b)(1). See Patent Owner’s
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`Opposition to Motion to Strike (Paper No. 36) at 1–3. To be eligible for this
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`exception, the former testimony must be offered against a party, or a party’s
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`predecessor in interest, who had “an opportunity and similar motive to develop it
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`by . . . cross.” Fed. R. Evid. 804(b)(1). Patent Owner, as the proponent of former
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`testimony, bears “the burden of establishing that [the transcript] came within the
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`former testimony hearsay exception.” United States v. Kennard, 472 F.3d 851, 856
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`(11th Cir. 2006) (citation omitted); see also, e.g., United States v. Omar, 104 F.3d
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`519, 522 (1st Cir. 1997) (“And, the evidence in question being hearsay, it was the
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`defendants’ burden to prove each element of the [804(b)(1)] exception they
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`invoked.”).
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`Here, where Patent Owner has not submitted the transcript of Mr. Merkel’s
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`8
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`cross-examination, it cannot carry its burden of proving that Pylon had an
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`opportunity and similar motive as Petitioner in this proceeding to develop the
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`testimony on cross-examination. See, e.g., Kirk v. Raymark Indus., Inc., 61 F.3d
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`147, 166 & n.25 (3d Cir. 1995) (“The district court did not have the complaint,
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`answer, or jury charge from the state court proceedings. Thus, even if the district
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`court had attempted to make a finding as to opportunity and similar motive, it
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`would have been unable to reach a well-reasoned conclusion based on the
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`information before the district court.”); see also Kennard, 472 F.3d at 856 (finding
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`proponents of former testimony did not carry their burden of establishing
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`admissibility on the record). On the present record, there is no evidence on which
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`the Board could find that Pylon’s cross-examination of Mr. Merkel “is the rough
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`equivalent” of what Costco’s cross-examination would be “if the witness were
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`available to be examined” in this proceeding. Kirk, 61 F.3d at 166.
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`Patent Owner is precluded, at this late date, from supplementing the record
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`and making up for its deficient showing. Following the service of Petitioner’s
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`Objections, Patent Owner had the option of “respond[ing] to the objection[s] by
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`serving supplemental evidence within ten business days.” 37 C.F.R. § 42.64(b)(2).
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`The Board has explained this procedure specifically contemplated by the rules:
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`This process allows the party relying on evidence to which an
`objection is timely served the opportunity to overcome the objection.
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`9
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`If, upon receiving the supplemental evidence, the opposing party is
`still of the opinion that the evidence of record is inadmissible, the
`opposing party may file a motion to exclude such evidence. . . . We do
`not allow supplemental evidence to be filed at the time of service
`because the supplemental evidence, which is not evidence of record,
`may obviate an objection. Should the objecting party file a Motion to
`Exclude, the party who served the supplemental evidence may file the
`supplemental evidence with an Opposition to the Motion.
`Palo Alto Networks, Inc. v. Finjan, Inc., IPR 2015-01979, Paper No. 27, at 2
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`(PTAB Aug. 11, 2016) (citation omitted). The deadline for Patent Owner to submit
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`supplemental evidence passed on August 12, 2016.
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`Furthermore, based on the limited record that is before the Board, Mr.
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`Merkel’s former testimony would not be entitled to the Rule 804(b)(1) exception
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`because there is not “sufficient identity of issues to ensure that cross examination
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`in the former case was directed to the issues presently relevant,” as there must be
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`where, as here, “the parties in the two proceedings differ.” Holmquist v. Farm
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`Family Cas. Ins. Co., 800 F. Supp. 2d 305, 310 (D. Me. 2011) (citation omitted).
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`For example, Mr. Merkel’s testimony fails to mention a single prior art
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`reference at issue in this proceeding, namely Appel (Ex. 1005), Hoyler (Ex. 1006),
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`and Prohaska (Ex. 1004). Pylon could not, then, have questioned Mr. Merkel
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`regarding the instituted grounds of the present inter partes review because such
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`questioning would have exceeded the scope of direct. See Fed. R. Evid. 611(b)
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`10
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`(“Cross-examination should not go beyond the subject matter of the direct
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`examination and matters affecting the witness’s credibility.”). Here, however,
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`argument and evidence is expressly limited to the instituted grounds (see Decision
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`at 20 (“[N]o other ground of unpatentability is authorized for this inter partes
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`review.”)), and Petitioner’s motive has always been to develop invalidity on these
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`bases.
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`Moreover, the Pylon Proceeding was largely centered on whether the ’974
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`Patent was invalid for derivation. Insofar as Mr. Merkel’s testimony is proffered in
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`support of patentability, it is highly misleading (particularly without the cross-
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`examination transcript) because the jury found that it was derived from a third-
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`party inventor. See Robert Bosch, LLC v. Pylon Mfg. Corp., 775 F. Supp. 2d 739,
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`744–45 (“Merkel and Leutsch committed a material omission by presenting
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`Fehrsen’s ideas as their own during the prosecution of the ’974 patent….”),
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`vacated per stipulation, No. 08-542 (D. Del. Oct. 31, 2013). Further, the evidence
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`that could support a finding of derivation is entirely distinct from evidence that
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`would support invalidity in an inter partes review proceeding. See, e.g.,
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`Wonderland Nurserygoods Co. v. Kids II, Inc., No. 1:13-CV-01114-ELR, 2016
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`WL 3958733, at *4 (N.D. Ga. Feb. 10, 2016) (“[T]he IPR proceedings for the ’919
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`patent do not relate to other issues in this case such as allegations of prior invention
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`of the ’919 patent under 35 U.S.C. 102(g).”), report and recommendation adopted,
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`11
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`IPR2016-00038
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`No. 1:13-CV-01114-ELR, 2016 WL 4035521 (N.D. Ga. Mar. 16, 2016).
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`Accordingly, there is insufficient evidence on the present record for Patent
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`Owner to carry its burden of establishing that Mr. Merkel’s former testimony is
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`admissible, and based on the limited evidence of record, Pylon did not have an
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`opportunity or similar motive as Petitioner to cross-examine Mr. Merkel.
`
`
` Martin Kashnowski’s Testimony is Inadmissible Pursuant to 37 B.
`C.F.R. § 42.65(b) and Constitutes Inadmissible Hearsay Pursuant
`to Federal Rules of Evidence 801 and 802
`
`In a further effort to rebut Petitioner’s showing of obviousness of the ’974
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`Patent, Patent Owner also relies on the hearsay testimony of Martin Kashnowski in
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`violation of 37 C.F.R. § 42.65(b). See Response at 11–12 (citing Ex. 2007 ¶ 6). Mr.
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`Kashnowski, a fact witness and employee of Patent Owner, testified that “Bosch
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`tested [two of its commercial] products extensively before releasing them,” “[o]ne
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`aspect tested was noise,” and “[t]he Bosch beam blades were quiet in operation,”
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`which was “part of the reason for the great customer demand.” Ex. 2007 ¶ 6. While
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`this testimony substantively does not support the nonobviousness of the claimed
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`subject matter of the ’974 Patent because it fails to connect the alleged test results
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`to the subject matter of the ’974 Patent (see Ex. 1100 ¶ 24), it is also inadmissible.
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`1. Martin Kashnowski’s Testimony Fails to Set Forth the
`Requirements for Relying on Technical Tests and Data
`Which Precludes Patent Owner from Relying on his
`Testimony
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`In support of its argument that the alleged success of two of its commercial
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`products renders the ’974 Patent nonobvious, Patent Owner relies on the purported
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`“extensive[]” testing described in Mr. Kashnowski’s declaration. See Response at
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`11–12 (citing Ex. 2007 ¶ 6). But in order to “rel[y] on a technical test or data from
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`such a test,” Patent Owner should have provided an “affidavit explaining” the
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`surrounding circumstances of the test, including, inter alia, “[h]ow the test was
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`performed and the data was generated”; “[h]ow the data is used to determine a
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`value”; and “[h]ow the test is regarded in the relevant art.” 37 C.F.R. § 42.65(b).
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`Mr. Kashnowski provides none of the information required by § 42.65(b).
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`Neither Patent Owner nor Mr. Kashnowski explain: (i) what test was performed
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`(e.g., whether in a wind tunnel or anechoic chamber); (ii) the format of the results
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`(e.g., whether the test was objective or subjective); (iii) how the data supports the
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`conclusion that the blades were “quiet in operation” (e.g., that the volume did not
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`exceed a certain decibel limit); or (iv) the importance of such testing in the
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`industry (e.g., that the test comported with a specific industry standard). Compare
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`Ex. 2007 ¶ 6, with Ex. 1100 (Peck Decl.) ¶¶ 18–23 (describing various testing and
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`factors that contribute to wiper noise).
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`Because Mr. Kashnowski’s declaration does not “provide any detail
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`regarding the specific tests it purports to have conducted,” it fails to satisfy
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`§ 42.65(b). Samsung Elecs. Co. v. Unifi Sci. Batteries, LLC, IPR2013-00236, Paper
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`No. 10, at 17 (PTAB Sept. 25, 2013). In Samsung, the Board faulted the patent
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`owner for failing to “provide any detail regarding the specific tests it purports to
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`have conducted using the simulation software,” and noted that should the patent
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`owner rely on this information in the future, it must be accompanied by a
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`“supporting affidavit.” Id. at 17, 18 n.7 (citing 37 C.F.R. § 42.65(b)). Here too, Mr.
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`Kashnowski’s conclusory assertions regarding technical testing should have been
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`accompanied by a “supporting affidavit” if Patent Owner intended to rely on them.
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`Because Mr. Kashnowski’s testimony was not “filed in accordance with” the
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`governing rules, namely § 42.65(b), it is “not admissible” and should be excluded.
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`37 C.F.R. § 42.61(a). Without a supporting affidavit pursuant to § 42.65(b), Patent
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`Owner should be precluded from relying on the wiper tests and data.
`
`2. Mr. Kashnowski’s Testimony Constitutes Inadmissible
`Hearsay
`
`Mr. Kashnowski’s testimony regarding wiper testing and consumer demand
`
`in paragraph 6 of his declaration constitutes inadmissible hearsay because it
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`conveys “a statement” made by a declarant who is not “testifying at the current
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`trial or hearing,” and it is offered by Patent Owner “in evidence to prove the truth
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`of the matter asserted in the statement.” Fed. R. Evid. 801(c). In particular, Mr.
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`Kashnowski’s indication that “Bosch tested [two of its commercial] products
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`extensively before releasing them,” (Ex. 2007 ¶ 6 (emphasis added)) does not
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`establish that Mr. Kashnowski actually observed or played any role in the alleged
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`noise testing.
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`Without this foundation, the most generous conclusion is that someone at
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`Bosch communicated the fact of this testing, and its purported results, to Mr.
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`Kashnowski. Petitioner has no ability to cross-examine this declarant to test the
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`reliability of these statements—for all Petitioner knows, the “quiet” operation
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`could reflect grossly exaggerated puffery that was provided to Mr. Kashnowski in
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`a marketing effort to increase sales. Neither the Board nor Petitioner can have any
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`assurances of the reliability of this out-of-court statement.
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`IV. CONCLUSION
`For the foregoing reasons, the direct trial testimony of Wilfried Merkel (Ex.
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`2005 at 338–92), the second, third, and fourth sentences of paragraph 6 of the
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`Declaration of Martin Kashnowski (Ex. 2007), and the corresponding portions of
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`the Response are inadmissible and should be excluded.
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`Dated: December 13, 2016
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`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
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 13th day of December, 2016, the foregoing
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`Petitioner’s Motion to Exclude Evidence Pursuant to 37 C.F.R. § 42.64 was served
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`in its entirety by email on the attorneys of record for Patent Owner:
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`•
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`•
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`•
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`Patrick R. Colsher (patrick.colsher@shearman.com)
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`Mark Hannemann (mark.hannemann@shearman.com)
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`Joseph Purcell (joseph.purcell@shearman.com)
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`/Stefanie M. Lopatkin/
`Stefanie M. Lopatkin
`Registration No. 74,312
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`
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`74568582
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