Case No. IPR2016-00039
`U.S. Patent No. 7,228,588
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00039
`U.S. Patent No. 7,228,588
`______________________
`
`
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S REPLY
`EVIDENCE
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,228,588
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00039
`U.S. Patent No. 7,228,588
`______________________
`
`
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S REPLY
`EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-00039
`U.S. Patent No. 7,228,588
`
`
`
`
`
`Patent Owner Robert Bosch LLC (“Bosch”) objects to the evidence
`
`submitted by Petitioner Costco Wholesale Corp. (“Costco”) on October 24, 2016
`
`with its reply brief, and evidence newly cited therein, as follows:
`
`Bosch objects to Ex. 1100 (Declaration of David Peck) under Fed. R. Evid.
`
`401 and 701–02 and 37 C.F.R. § 42.23(b). Paragraphs 5–26 of Ex. 1100 constitute
`
`unqualified expert testimony (Fed. R. Evid. 702) because Costco has not
`
`established Mr. Peck as an expert to opine on the thinking of a person of ordinary
`
`skill in the art at the time of the invention, or the applicability of any secondary
`
`considerations, and constitute improper lay opinion testimony (Fed. R. Evid. 701)
`
`because the opinions offered by Mr. Peck are based on “scientific, technical, or
`
`other specialized knowledge within the scope of Rule 702.” Costco further has
`
`failed to provide the requisite disclosures required by Fed. R. Civ. P. 26(a)(2)(B).
`
`Paragraphs 5–13, 14, 17, and 21–26 of Ex. 1100 constitute material outside the
`
`proper scope of a reply (37 C.F.R. § 42.23(b)) because they do not respond to
`
`arguments in Bosch’s patent owner response and because they add to or modify the
`
`grounds and evidence of alleged unpatentability asserted in Costco’s petition and
`
`instituted by the Board and present evidence that should have been presented with
`
`Costco’s petition (35 U.S.C. § 312), for example by asserting additional prior art,
`
`evidence, and reasons that someone would have been motivated to modify or
`
`
`
`1
`
`
`
`Case No. IPR2016-00039
`U.S. Patent No. 7,228,588
`combine elements of the prior art. This evidence should have been presented in
`
`Costco’s petition. Because these paragraphs fall outside the scope of a proper
`
`reply, and further because they are presented from the perspective of a single
`
`artisan rather than a person of ordinary skill in the art, they are irrelevant (Fed. R.
`
`Evid. 401). To whatever extent Ex. 1100, or the portions of Costco’s reply that
`
`rely upon it, may be considered supplemental information, it is untimely and
`
`improperly submitted under 37 C.F.R. § 42.123, for example because they expand
`
`the scope of the grounds upon which inter partes review was instituted.
`
`Bosch objects to Ex. 1104 (DE 19736368) and Ex. 1105 (US 6,292,974)
`
`under Fed. R. Evid. 104(b), 401, and 802 and 37 C.F.R. §§ 42.23(b) and 42.63(b).
`
`Costco relies on Ex. 1104 as additional prior art to support its asserted grounds,
`
`beyond the proper scope of a reply and in violation of 37 C.F.R. §§ 42.23(b) and
`
`35 U.S.C. § 312, and without the translation and corresponding affidavit required
`
`by 37 C.F.R. §§ 42.63(b). Ex. 1105 is relied on as a U.S. counterpart to, and
`
`assumed to be a translation of, Ex. 1104. It is irrelevant (Fed. R. Evid. 401) and
`
`hearsay (Fed. R. Evid. 802) insofar as relied upon to establish the English meaning
`
`of Ex. 1104, and Ex. 1104 is inadmissible insofar as its relevance depends on the
`
`translation (Fed. R. Evid. 104(b)). Just as Exs. 1104 and 1105 are outside the
`
`scope of a proper reply and add to the issues that should have been presented in the
`
`petition, they are irrelevant to the issues properly part of this proceeding (Fed. R.
`
`
`
`2
`
`
`
`Case No. IPR2016-00039
`U.S. Patent No. 7,228,588
`Evid. 401). To whatever extent Exs. 1104 and 1105, or the portions of Costco’s
`
`reply that rely upon them, may be considered supplemental information, they are
`
`untimely and improperly submitted under 37 C.F.R. § 42.123, for example because
`
`they expand the scope of the grounds upon which inter partes review was
`
`instituted.
`
`Bosch objects to Ex. 1016 (Declaration of Dr. Gregory W. Davis), in
`
`particular Exs. F (US 6,944,905) and K (WO00/34090) thereto, under Fed. R.
`
`Evid. 401 and 37 C.F.R. §§ 42.6, 42.23(b), and 42.63. Costco submitted Ex. 1016
`
`with its petition, but now improperly relies upon two exhibits to that declaration as
`
`prior art to support an entirely new ground and evidence of obviousness—that the
`
`invention of the ’588 patent was merely “a further iteration in a series of minor
`
`improvements,” Paper 37 at 10—in violation of 37 C.F.R. § 42.23(b) and 35
`
`U.S.C. § 312. Just as these sub-exhibits to Ex. 1016 are outside the scope of a
`
`proper reply and add to the issues that should have been presented in the petition,
`
`they are irrelevant to the issues properly part of this proceeding (Fed. R. Evid.
`
`401). The ’905 patent is also irrelevant because it is admitted not to be prior art.
`
`These sub-exhibits, insofar as relied upon in support of Costco’s positions (as
`
`opposed to in support of Dr. Davis’s declaration), are also improperly filed under
`
`37 C.F.R. §§ 42.6 and 42.63. To whatever extent these sub-exhibits to Ex. 1016,
`
`or the portions of Costco’s reply that relies on them, may be considered
`
`
`
`3
`
`
`
`Case No. IPR2016-00039
`U.S. Patent No. 7,228,588
`supplemental information, they are untimely and improperly submitted under 37
`
`C.F.R. § 42.123, for example because they expand the scope of the grounds upon
`
`which inter partes review was instituted.
`
`
`
`DATED: October 31, 2016
`
`
`
`Respectfully submitted,
`
`
`
`Shearman & Sterling LLP
`
`
`
`/Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`Mark A. Hannemann (pro hac vice)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Attorneys for Patent Owner
`Robert Bosch LLC
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`Certificate of Service
`
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`OBJECTIONS TO PETITIONER’S REPLY EVIDENCE was served via
`
`electronic mail on October 31, 2016, on the following counsel for Petitioner:
`
`Richard M. Koehl (richard.koehl@hugheshubbard.com)
`James R. Klaiber (james.klaiber@hugheshubbard.com)
`David E. Lansky (david.lansky@hugheshubbard.com)
`Stefanie Lopatkin (stefanie.lopatkin@hugheshubbard.com)
`
`/Patrick R. Colsher/
`Patrick R. Colsher
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Counsel for Patent Owner
`Robert Bosch LLC
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
