`
`____________________
`
`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 REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.70 and the Board’s Order dated April 25, 2016
`
`(Paper 17), Patent Owner Robert Bosch LLC (“Patent Owner”) respectfully
`
`submits this Request for Oral Argument. The Board has currently scheduled the
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`oral hearings on January 18, 2017 for six IPRs filed by Petitioner (IPR2016-00034,
`
`-00036, -00038, -00039, -00040, and -00041). While some overlaps exist between
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`these proceedings, the differences between them are not insubstantial.
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`Accordingly, Patent Owner requests 90 minutes during which to present its
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`arguments for the six IPRs.
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`Patent Owner identifies the following issues to be argued at the hearing:
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`•
`
`•
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`IPR2016-00034
`o The patentability of claim 1 of U.S. Patent No. 6,973,698 on the
`instituted grounds and issues briefed with respect thereto;
`
`o Patent Owner’s Motion to Exclude; and
`o Patent Owner’s List of Petitioner’s Improper Reply Arguments.
`IPR2016-00036
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`o The patentability of claims 13, 17, and 18 of U.S. Patent No.
`6,944,905 on the instituted ground and issues briefed with
`
`respect thereto;
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`o Patent Owner’s Motion to Exclude; and
`o Patent Owner’s List of Petitioner’s Improper Reply Arguments.
`
`
`
`2
`
`
`
`
`
`•
`
`IPR2016-00038
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`•
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`•
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`o The patentability of claims 1, 2, and 8 of U.S. Patent No.
`6,292,974 on the instituted grounds and issues briefed with
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`respect thereto;
`
`o Patent Owner’s Motion to Exclude; and
`o Patent Owner’s List of Petitioner’s Improper Reply Arguments.
`IPR2016-00039
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`o The patentability of claims 1, 12, and 14 of U.S. Patent No.
`7,228,588 on the instituted grounds and issues briefed with
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`respect thereto;
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`o Patent Owner’s Motion to Exclude; and
`o Patent Owner’s List of Petitioner’s Improper Reply Arguments.
`IPR2016-00040
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`o The patentability of claims 1, 2, and 3 of U.S. Patent No.
`7,484,264 on the instituted grounds and issues briefed with
`
`respect thereto;
`
`o Patent Owner’s Motion to Exclude; and
`o Patent Owner’s List of Petitioner’s Improper Reply Arguments.
`
`
`
`3
`
`
`
`
`
`•
`
`IPR2016-00041
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`o The patentability of claims 1, 6, 9, and 10 of U.S. Patent No.
`8,099,823 on the instituted grounds and issues briefed with
`
`respect thereto;
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`o Patent Owner’s Motion to Exclude; and
`o Patent Owner’s List of Petitioner’s Improper Reply Arguments.
`Any issues identified in Petitioner’s Request for Oral Argument; and
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`Any other issues the Board deems necessary for issuing a final written
`
`•
`
`•
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`
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`
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`Respectfully submitted,
`
`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
`
`decision.
`
`
`
`DATED: December 13, 2016
`
`
`
`
`4
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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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`REQUEST FOR ORAL ARGUMENT was served via electronic mail on
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`December 13, 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)
`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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