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,
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`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
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`Patent Owner.
`
`____________________
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`CASE NO. IPR2016-00040
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`U.S. Patent No. 7,484,264
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`____________________
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`PATENT OWNER’S MOTION TO EXCLUDE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`COSTCO WHOLESALE CORPORATION,
`
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`
`Patent Owner.
`
`____________________
`
`CASE NO. IPR2016-00040
`
`U.S. Patent No. 7,484,264
`
`____________________
`
`PATENT OWNER’S MOTION TO EXCLUDE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
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`
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`I.
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`PRECISE RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner Robert Bosch LLC (“Patent
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`Owner”) respectfully requests that the Board exclude Paragraphs 7, 9–11, 15, 18,
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`19, 21, and 23–26 of the declaration of Mr. David Peck (Ex. 1100) offered by
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`Petitioner. Patent Owner timely objected to this evidence on October 31, 2016.
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`See Paper 37. Petitioner did serve any supplemental evidence or otherwise respond
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`to the objection.
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`It is unclear whether Petitioner intends to offer Mr. Peck’s testimony as a
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`fact or an expert witness. While Petitioner did not establish Mr. Peck as qualified
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`to opine as an expert on the subjects on which he offered his opinions, Petitioner
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`did retain Mr. Peck in February 2015 (prior to filing this IPR) and did pay Mr.
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`Peck for his testimony in connection with this proceeding. Ex. 2029 at 7:11–20;
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`10:13–12:11.
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`
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`II. MR. PECK IS NOT QUALIFIED TO GIVE TECHNICAL EXPERT
`OPINIONS REGARDING THE THINKING OF A PERSON OF
`ORDINARY SKILL IN THE ART AT THE TIME OF THE
`INVENTION
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`Rule 702 allows opinion testimony from an expert witness only if the
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`witness is qualified “by knowledge, skill, experience, training, or education” on the
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`subject to which the witness is testifying, and then only if four criteria are met: “(a)
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`the expert’s scientific, technical, or other specialized knowledge will help the trier
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`1
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`
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`of fact to understand the evidence or to determine a fact in issue; (b) the testimony
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`is based on sufficient facts or data; (c) the testimony is the product of reliable
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`principles and methods; and (d) the expert has reliably applied the principles and
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`methods to the facts of the case.” See Fed. R. Evid. 702. Conversely, a lay witness
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`may not offer opinion testimony unless it is “(a) rationally based on the witness’s
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`perception; (b) helpful to clearly understanding the witness’s testimony or to
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`determining a fact in issue; and (c) not based on scientific, technical, or other
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`specialized knowledge within the scope of Rule 702.” Fed. R. Evid. 701.
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`The questions presented in this proceeding concern the understanding of a
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`hypothetical person of skill in the pertinent art at the time the invention was made
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`(no later than April 26, 2001, the foreign application priority date of the ’264
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`patent). See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007); see also
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`35 U.S.C. § 103(a). However, nowhere in his declaration or deposition testimony
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`did Mr. Peck express any understanding of who a person of ordinary skill is in the
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`context of this patent, nor any understanding that the opinions stated in his
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`declaration are directed to what such a person would have known and understood.
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`Mr. Peck’s expertise was gained in the course of his employment by Trico, a
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`previously accused infringer that is now one of Patent Owner’s licensees. See Ex.
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`1100 at ¶ 3; Ex. 2029 at 102:18–103:15; see also Robert Bosch LLC v. Trico
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`Prods. Corp., Case No. 12 CV 437 (N.D. Ill.), D.I. 209, Stipulation of Dismissal
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`2
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`and Order (Aug. 6, 2014). However, he did not begin his employment at Trico
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`until the spring of 1997, and Petitioner has made no showing that he has ever been
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`a wiper-blade designer—certainly not during the time period between his joining
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`Trico and the time of the invention, such that he could have gained expertise
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`sufficient to opine as to the state of mind of a person of ordinary skill of the art in
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`the wiper-design field as of the time of the invention. Ex. 1100 at ¶ 3; Ex. 2029 at
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`20:12–32:24. His experience is in the field of manufacturing machinery, including
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`the design of the “production equipment” that was used to manufacture what
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`ultimately became the Trico “Innovision” beam-style wiper blade. Ex. 2029 at,
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`e.g., 34:25–37:17; see also 20:12–32:24.
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`Regardless of whether he has any design experience at all, Mr. Peck had
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`little to no experience in designing beam-style wiper blades at the time of the
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`invention in April 2001. Id. In particular, he had no experience designing beam-
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`style wiper blades with spoilers at the time of the invention—Trico (the company
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`for which he worked and the sole source of his purported experience) did not start
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`designing beam blades with spoilers until 2003, well after the invention of the ’264
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`patent and the publication of its PCT counterpart. Id. at, e.g., 69:16–70:15 (“When
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`we went to beam blades, once we got it commercialized, so that puts it in the 2003
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`beginning, then we started focusing on adding air foils into the VariFlex type
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`3
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`
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`program.”);1 see also 73:16–74:4 (discussing beam blades, “[t]hat would mean it
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`started about 2003-ish, where we would start trying to develop the air foil and how
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`you integrate it into a flexible structure.”).
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`Accordingly, Paragraphs 7, 9–11, 18, 19, 21, and 23–26 should be excluded
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`under Rule 702.
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`To the extent that Mr. Peck is offering his lay opinion, these paragraphs
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`should be excluded under Rule 701 because Mr. Peck’s lay opinion is not
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`rationally based on Mr. Peck’s perception, and because it is based on scientific,
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`technical, or other specialized knowledge within the scope of Rule 702 instead; and
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`as irrelevant under Rule 401 because his purported experience stems from the
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`wrong time period.
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`1
`VariFlex is a “proprietary” software program created by a third party that
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`was not “commercially available at any time,” (Ex. 2029 at 74:17–24; see also Ex.
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`1100 at ¶ 10 (“a custom computer program created by Adrian Swanepoel….”))—
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`one that Mr. Peck never personally used, (Ex. 2029 at 44:11–45:6).
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`
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`4
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`
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`III. MR. PECK IS NOT QUALIFIED TO GIVE EXPERT OPINIONS
`REGARDING FINANCIAL ISSUES, COMMERCIAL SUCCESS, OR
`CONSUMER DEMAND
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`Mr. Peck is a mechanical engineer with experience in designing wiper-blade
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`production equipment. He has no knowledge, skill, experience, training, or
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`education to qualify as an expert to offer opinions concerning financial, marketing,
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`or consumer demand issues, including an opinion whether Trico’s Innovision
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`wiper blade was a commercial success or a commercial failure. See, e.g.,
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`Wonderland Nurserygoods Co. v. Thorley Industries LLC, No. 13-cv-00387, 2015
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`WL 5021416, at *13 (W.D. Pa. Aug. 21, 2015) (excluding proffered expert with
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`background in “product design, product development, manufacturing and
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`international sourcing” from testifying concerning “financial issues” such as
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`commercial success); XpertUniverse, Inc. v. Cisco Sys., Inc., No. 9–157, 2013 WL
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`865974, at *3 (D. Del. Mar. 7, 2013) (witness with computer science and call
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`center expertise not qualified to give conclusions on commercial success and
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`industry acceptance because such conclusions exceeded his technical expertise);
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`Lutron Elecs. Co. v. Crestron Elecs., Inc., 970 F. Supp. 2d 1229, 1242 (D. Utah
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`2013) (witness with background in electrical engineering not qualified to opine on
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`commercial success and “deficiencies cannot be corrected merely by cross-
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`examination”); Rambus Inc. v. Hynix Semiconductor Inc., 254 F.R.D. 597, 608
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`(N.D. Cal. 2008) (witness with electrical engineering background and over three
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`5
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`decades semiconductor device design experience “lack[ed] the expertise needed to
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`testify about the commercial aspects of this inquiry”).
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`Accordingly, Paragraph 15 (opining on what makes a product a “success”),
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`the last sentence of Paragraph 18 (opining on “customer demand”), and Paragraph
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`21 (opining on issues “important to customers”) should be excluded under Rule
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`702. And, to the extent that Mr. Peck is offering his lay opinion in these
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`paragraphs, they should be stricken under Rules 401 and 701 for the same reasons
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`as discussed in Section II above.
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`Respectfully submitted,
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`
`
`Shearman & Sterling LLP
`
`
`
` /Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`Mark A. Hannemann (pro hac vice)
`Joseph M. Purcell, Jr. (pro hac vice)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`
`Counsel for Patent Owner
`Robert Bosch LLC
`
`
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`DATED: December 13, 2016
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`
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`6
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`
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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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`MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c) was
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`served via electronic mail on December 13, 2016, on the following counsel for
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`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)
`James Dabney (james.dabney@hugheshubbard.com)
`
`
`
`
`
`
`
`
` /Patrick R. Colsher/
`Patrick R. Colsher
`Reg. No. 74,955
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`
`Counsel for Patent Owner
`Robert Bosch LLC
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