`U.S. Patent No. 7,484,264
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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. IPR2016-00040
`U.S. Patent No. 7,484,264
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S REPLY
`EVIDENCE
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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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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`U.S. Patent No. 7,484,264
`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 Coscto’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. 1010 (prosecution history of the ’264 patent), pp. 278–
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`82 (DE 19736368), and Ex. 1105 (US 6,292,974) under Fed. R. Evid. 104(b), 401
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`and 802, and 37 C.F.R. §§ 42.6, 42.23(b) and 42.63. Costco relies on DE
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`19736368 as additional prior art to support its asserted grounds, beyond the proper
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`scope of a reply and in violation of 37 C.F.R. §§ 42.23(b) and 35 U.S.C. § 312, and
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`without the translation and corresponding affidavit required by 37 C.F.R.
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`§ 42.63(b). Ex. 1105 is relied on as a U.S. counterpart to, and assumed to be a
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`translation of, DE 19736368. It is irrelevant (Fed. R. Evid. 401) and hearsay (Fed.
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`R. Evid. 802) insofar as relied upon to establish the English meaning of DE
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`19736368, and DE 19736368 is inadmissible insofar as its relevance depends on
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`the translation (Fed. R. Evid. 104(b)). DE 19736368, insofar as relied upon in
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`support of Costco’s positions (as opposed to illustrating the prosecution history of
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`the ’264 patent), is also improperly filed under 37 C.F.R. §§ 42.6 and 42.63. Just
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`as DE 19736368 and Ex. 1105 are outside the scope of a proper reply and add to
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`the issues that should have been presented in the petition, they are irrelevant to the
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`issues properly part of this proceeding (Fed. R. Evid. 401). To whatever extent DE
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`19736368 and Ex. 1105, or the portions of Costco’s reply that rely upon them, may
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`be considered supplemental information, they are untimely and improperly
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`submitted under 37 C.F.R. § 42.123, for example, because they expand the scope
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`of the grounds upon which inter partes review was instituted.
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`Bosch objects to Ex. 1018 (Declaration of Dr. Gregory W. Davis), in
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`particular Ex. F (US 6,944,905) thereto, under Fed. R. Evid. 401 and 37 C.F.R.
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`§§ 42.6, 42.23(b), and 42.63. Costco submitted Ex. 1018 with its petition, but now
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`improperly relies upon an exhibit to that declaration as prior art to support an
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`entirely new ground and evidence of obviousness—that the invention of the ’264
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`patent was merely “a further iteration in a series of minor improvements,” Paper 34
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`at 11—in violation of 37 C.F.R. § 42.23(b) and 35 U.S.C. § 312. Just as this sub-
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`exhibit to Ex. 1018 is outside the scope of a proper reply and adds to the issues that
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`should have been presented in the petition, it is irrelevant to the issues properly
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`part of this proceeding (Fed. R. Evid. 401). Insofar as relied upon in support of
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`Costco’s positions (as opposed to in support of Dr. Davis’s declaration), it is also
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`improperly filed under 37 C.F.R. §§ 42.6 and 42.63. To whatever extent this sub-
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`exhibit to Ex. 1018, or the portions of Costco’s reply that rely on 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
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`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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`/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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`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