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`- VOLUME B -
`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`
`CIVIL ACTION
`
`NO. 08-542 (SLR)
`
`::::::::::
`
`ROBERT BOSCH LLC,
`Plaintiff,
`
`vs.
`PYLON MANUFACTURING
`CORPORATION,
`
`Defendant.
`
`- - -
`Wilmington, Delaware
`Thursday, April 15, 2010
`9:25 o'clock, a.m.
`- - -
`BEFORE: HONORABLE SUE L. ROBINSON, U.S.D.C.J., and a jury
`- - -
`
`APPEARANCES:
`
`POTTER, ANDERSON & CORROON
`BY: RICHARD L. HORWITZ, ESQ.
`
`-and-
`
`Valerie J. Gunning
`Kevin Maurer
`Official Court Reporters
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`Robert Bosch Exhibit 2005 - Page 1
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`Case 1:08-cv-00542-SLR-MPT Document 369 Filed 12/09/10 Page 1 of 265 PageID #: 6946
`
`- VOLUME B -
`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`
`CIVIL ACTION
`
`NO. 08-542 (SLR)
`
`::::::::::
`
`ROBERT BOSCH LLC,
`Plaintiff,
`
`vs.
`PYLON MANUFACTURING
`CORPORATION,
`
`Defendant.
`
`- - -
`Wilmington, Delaware
`Thursday, April 15, 2010
`9:25 o'clock, a.m.
`- - -
`BEFORE: HONORABLE SUE L. ROBINSON, U.S.D.C.J., and a jury
`- - -
`
`APPEARANCES:
`
`POTTER, ANDERSON & CORROON
`BY: RICHARD L. HORWITZ, ESQ.
`
`-and-
`
`Valerie J. Gunning
`Kevin Maurer
`Official Court Reporters
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`Robert Bosch Exhibit 2005 - Page 1
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
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`APPEARANCES (Continued):
`
`KENYON & KENYON, LLP
`BY: JEFFREY S. GINSBERG, ESQ. and
`MARK A. HANNEMANN, ESQ.
`(New York, New York)
`
`Counsel for Plaintiff
`
`BAYARD, P.A.
`BY: STEPHEN B. BRAUERMAN, ESQ.
`
`-and-
`
`FELDMAN GALE, P.A.
`BY: GREGORY L. HILLYER, ESQ.,
`JEFFREY FELDMAN, ESQ. and
`JAVIER SOBRADO, ESQ.
`(Bethesda, Maryland)
`
`Counsel for Defendant
`
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`Robert Bosch Exhibit 2005 - Page 2
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
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`P R O C E E D I N G S
`
`(Proceedings commenced in the courtroom
`beginning at 9:25 a.m.)
`
`THE COURT: All right. We made changes. We did
`not make the stylistic changes you requested, but I believe
`we made the important substantive changes that you requested
`in the jury instructions. Go ahead and take a minute to
`look those over, although at this point we've made copies
`for the jury, so hopefully we're okay.
`The only issues I want to discuss at this point
`are issues that have to do with the opening statements. If
`it does not have to do with the opening statements, we will
`stop as soon as all the jurors show up. We've got one
`juror. I don't want to hold them up for issues that don't
`necessarily have to be addressed right away.
`Yes, sir?
`MR. HANNEMANN: Your Honor, Mark Hannemann for
`plaintiff, Bosch.
`Just one question on the edits to the
`preliminary jury instructions.
`The Court deleted, at Pylon's request, the
`instruction that the Court had originally written that the
`'947 patent had been found to be infringed. That's a
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`Robert Bosch Exhibit 2005 - Page 3
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
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`determination that's in the case and I think we need to tell
`the jury that for context so that they understand why there
`are three patents, but we're only talking about infringement
`of two of them.
`THE COURT: You can. I just chose not to.
`MR. HANNEMANN: But I'm allowed to mention that?
`That's all I wanted to clarify, your Honor.
`And then there was one, I think, agreed issue.
`The Court's order recently issued, Docket No. 290, talked
`about allowing Swanepoel to testify and allowing theories on
`derivation relating to the '905 patent and '434 patent as
`well as the '947. I think that was text that came out of
`our motion in limine that was filed before the summary
`judgment. I think probably what the Court intended was just
`to talk about the '947 patent there. That's agreed by both
`side.
`
`THE COURT: All right. Thank you.
`MR. HANNEMANN: Thank you, your Honor.
`THE COURT: All right. Any issues from counsel
`
`for Pylon?
`
`MR. HILLYER: Your Honor, just briefly
`responding to Mr. Hannemann's point about mentioning the
`infringement of the '947 patent.
`We had submitted some authority in our footnote
`to the Court which was pursuant to the motion in limine
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`Robert Bosch Exhibit 2005 - Page 4
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
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`which was made in that case on the ground of unfair
`prejudice to preclude any mention of it, and we ask the
`Court to preclude them from getting into it, the lack of
`relevance, the extreme potential prejudice, informing the
`jury of the fact it's not an issue.
`THE COURT: Well, if there's not extreme
`prejudice, it seems to me as though a mention that
`infringement is not at issue for the '947 is fine. If you
`want me to mention it once to set the table, that's fine.
`If you want me to do it, you're the one that suggested I
`didn't do it. It has to be mentioned someplace.
`MR. HILLYER: Just for purposes of being clear,
`are you permitting them to say infringement of the '947 is
`not an issue in this case?
`THE COURT: That is what should be said as
`opposed to -- well, I think that's what we've said in the
`past.
`
`MR. HILLYER: Okay. Thank you. That was my
`point of clarification. Thank you.
`MR. HORWITZ: Your Honor, I know this came up in
`a slightly different context in our last trial, where the
`parties had agreed that there was infringement. For the
`jury to understand why they're being asked to discuss the
`invalidity, they have to know that there has been some
`determination whether it is among the parties or from the
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`Robert Bosch Exhibit 2005 - Page 5
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
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`Court that there was infringement. Otherwise, why are they
`doing it?
`
`THE COURT: Well, to tell the jury infringement
`is not an issue --
`MR. HORWITZ: I think infringement has been
`determined, something like that, but to --
`MR. HANNEMANN: We need to be able to say their
`product matches the claims of this patent.
`THE COURT: No, you don't need to say that. I
`mean, no one needs to say anything.
`You know, I'm sorry. I had lots going on in my
`life before I walked in here. If this is a true issue about
`how this is put to the jury, I'm going to step out and look
`at what I've done in the past and gather my thoughts if
`there's nothing else for opening statements besides this
`issue. All right.
`(Short recess taken.)
`- - -
`(Proceedings resumed after the short recess.)
`THE COURT: All right. A moment of reflection.
`Number one, in Callaway, the parties stipulated
`that there had been infringement. That's a little different
`than the Court determining it.
`There is no reason for the jury to know that
`there has been a determination of infringement. Therefore,
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`Robert Bosch Exhibit 2005 - Page 6
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
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`because it's too late to change the preliminary
`instructions, if counsel for Bosch feels the need to say
`something, this is what you can say: That the issue of
`infringement of the '947 patent has been determined by the
`Court. It could be noninfringement, it could be
`infringement. It's about as neutral as it can be. That is
`appropriate, but that's all that needs be said, so take the
`infringement of the '947 patent out of the case. All right.
`MR. HILLYER: Your Honor, I have just one
`housekeeping matter, just briefly?
`THE COURT: Yes.
`MR. HILLYER: We'd like to invoke the rule for
`Federal Rule of Evidence 615. We note that Bosch has one
`fact witness in the courtroom. We'd like them to be
`sequestered during the opening statements and throughout the
`course of the trial.
`THE COURT: All right. Well, that's not
`
`unusual.
`
`MR. HORWITZ: Your Honor, the issue here is
`whether our first witness --
`MR. HILLYER: No. We stipulated to that.
`MR. HANNEMANN: Second witness.
`MR. HORWITZ: Whether a witness can hear opening
`statements, and I think the rule says they can be precluded
`from hearing other witnesses testify, and I think the
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`Robert Bosch Exhibit 2005 - Page 7
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
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`practice has been people can hear opening statements because
`that's not evidence.
`THE COURT: That is true.
`MR. HILLYER: Your Honor, we don't think it's
`fair for them to hear our theories. We assume, let's just
`cleanse the whole case from the outset. They can bring in
`the witness when the time comes.
`THE COURT: Well, generally, I mean, I don't
`know whether fact witnesses are generally here for openings.
`It does not come to my attention. I don't know who all
`these people are.
`So --
`MR. HORWITZ: It's not a big deal, your Honor.
`The rule says testimony of witnesses, and obviously openings
`aren't testimony.
`MR. HILLYER: And we object to that.
`THE COURT: Well, I have the feeling you all are
`going to be objecting to everything and that you are going
`to find that I will be impatient, so reserve your objections
`to important things.
`I don't believe that opening statements are
`subject to the sequestration rule, so I will not invoke that
`until the testimony begins.
`All right. Anything else before we bring the
`
`jury in?
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`Robert Bosch Exhibit 2005 - Page 8
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
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`Now, it's really up to you whether I play the
`tape first or whether I give my preliminary injunction
`first. We always give the explanation of the patent system.
`Does anyone care? Plaintiff's counsel?
`MR. HANNEMANN: Whichever order --
`MR. HILLYER: I have no preference. I think you
`said preliminary injunction. It is instructions. Well,
`preliminary instructions, yes.
`MR. HANNEMANN: Before we could lodge an
`objection to the preliminary instructions. I know it's
`determined.
`
`THE COURT: God bless you. Yes, you can object
`to everything I say and do for purposes of the record.
`All right. Let us bring the jury in, and I
`think we'll play the tape first.
`(The jury entered the courtroom and took their
`seats in the box.)
`THE COURT: Thank you for coming back. We
`appreciate that.
`As you know, this is a patent case, and because
`probably most of you aren't familiar with patent law, we
`have a video to show you that explains something about the
`patent system here in the United States. It will refer to a
`sample patent. You've got copies of the actual patents at
`issue in this case, so when the individual on the DVD is
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`Robert Bosch Exhibit 2005 - Page 9
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
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`talking about the parts of the patent, you can refer to the
`ones you actually have and kind of find your way through
`that.
`
`All right. Let's have that. And then I will
`proceed with my preliminary instructions after you've got
`some background here.
`(Videotape played as follows.)
`A VOICE: As you probably know by now probably
`this is a patent case, so you may be wondering, how can I
`sit in judgment on a case like this when I'm not entirely
`sure what a patent is? We hope to answer that concern with
`this brief video, which will give you some of the background
`needed to do your job.
`This case will involve some special issues that
`the judge and lawyers will explain to you, but all patent
`cases involve some basics that you will learn about.
`This video will discuss: What patents are, why
`we have them, how people get them, and why there are
`disputes that require us to call in a jury like you. We'll
`also show you what patents look like.
`The United States Constitution gives Congress
`the power to pass laws relating to patents. It allows
`Congress to promote the progress of science and useful arts
`by securing for limited times to authors and inventors the
`exclusive right to their respective writings and
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`Robert Bosch Exhibit 2005 - Page 10
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
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`discoveries.
`
`A patent, then, is an official grant by the
`United States Government that gives its owner certain rights
`to an invention. Those include the right to keep others
`from making, using, selling, or offering for sale the
`invention that is described in the patent.
`A patent lasts for a specific period of time.
`Usually, 20 years, and represents a bargain made between the
`government and the inventor.
`In return for the right to keep others from
`using the invention, the inventor must enhance the public
`knowledge or what we sometimes call the state of the art by
`adding something new and useful to it.
`An example is Thomas Edison's invention of the
`light bulb. During the lifetime of the patent, its
`disclosure may inspire new inventions, and after it expires,
`the invention is free for anyone to use. It is this giving
`of something new and valuable to the public that justifies
`giving a patent to the inventor.
`A patent is in many ways like a deed to a piece
`of property. It grants the owner the right to keep people
`off the property, or to charge them a fee, like rent, for
`using it. And just as a deed indicates limitations on the
`rights of a landowner, a patent sets limits on the rights of
`an inventor.
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`Robert Bosch Exhibit 2005 - Page 11
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
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`The patent system works because the inventor is
`required to describe the invention in clear and specific
`terms so that the public knows what the boundaries of the
`invention are. Once a patent is issued by the government,
`it becomes available for public inspection, and that way,
`anyone who learns of the patent and is interested can read
`it and understand exactly what the inventor has claimed to
`have invented.
`Now that we understand what a patent is, let's
`take a closer look at the term invention. An invention is a
`new way of solving a problem. The patent process begins in
`the mind of the inventor and in particular when the
`invention is formulated in the mind of the inventor. Patent
`lawyers call this conception.
`This is when the idea occurs to the inventor
`clearly enough that he or she can write it down and explain
`it to someone. To qualify for a patent, the invention needs
`to be new and useful. Also, it must not be obvious to one
`of ordinary skill in the field.
`If the inventor believes these requirements are
`met, he or she will prepare an application for filing with
`the United States patent and Trademark Office in Washington,
`D.C. The Patent and Trademark Office, often called the PTO,
`is the agency of the federal government whose job it is to
`examine patent applications to make sure they are in proper
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`Robert Bosch Exhibit 2005 - Page 12
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
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`form and comply with the requirements of the law.
`The inventor can prepare the application for
`filing with the PTO, but usually it's drafted by an attorney
`who specializes in this work, or by a patent agent, who is
`not an attorney. The attorney or agent works with the
`inventor to be sure the invention is described and claimed
`in a way that complies with the law and the regulations of
`the PTO.
`
`As you can see, the application is basically a
`typewritten document in which the inventor describes the
`invention he or she is trying to protect. When the PTO
`receives the inventor's application, it assigns a Patent
`Examiner, a staff person with a background in the field or
`art the invention falls within to examine the application
`and decide whether a patent can be granted.
`You've been given a sample patent to refer to as
`you watch this video, so you already have a sense of what a
`patent looks like. But now let's take a closer look at the
`three main parts to a patent.
`To begin with, there is some basic identifying
`information on the first page. This material is highlighted
`in your handout. On the upper right side of the page is the
`number assigned to the patent by the government and on the
`left side is a title that describes the invention, the names
`of the inventors and sometimes the company they have
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`Robert Bosch Exhibit 2005 - Page 13
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
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`assigned the patent to, and the date when the patent
`application was filed.
`There is also more detailed information on the
`first page, including a list of numbers following the
`caption, field of search. These numbers identify previously
`issued patents the examiner looked at or searched to make
`sure the applicant's claimed invention really is something
`new, not obvious, and thus patentable.
`Also listed on the first page are what we call
`references. That is, previous patents or articles that
`describe the technology or prior art known at the time the
`application was filed.
`It may seem strange to you that we call this
`pre-existing technology prior art even though it has nothing
`to do with artists. We use the word "art" in its broadest
`sense to include inventions and other subject matter
`reasonably related to the claimed invention. We also refer
`to the latest technology as state of the art, and we say of
`someone who can understand and apply the technology that he
`or she is skilled in the art.
`The second major part of the patent is what we
`call the specification, or written description. As is the
`case in your sample, it's usually the longest part of the
`patent. It includes an abstract, which is a brief summary
`of the invention, a background section that describes the
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`Robert Bosch Exhibit 2005 - Page 14
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
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`nature of the problem the invention is supposed to solve,
`one or more drawings, called figures, that illustrate
`various aspects of the invention, and a detailed description
`of one or more embodiments of the invention. An embodiment
`is a specific device or method that uses the invention, such
`as a particular form of light bulb.
`The third and most important part of the patent
`is the claims. These are the numbered paragraphs that
`appear at the end. The claims are what give the public
`notice of the boundaries of the invention. They are similar
`to the description of property you may have seen in a deed,
`referring to precise measurements taken on the ground.
`Now that we've discussed the main parts of a
`patent, let's take a look at how the PTO processes patent
`applications. This process, which is called prosecution of
`a patent application, begins when the inventor's application
`arrives at the PTO mailroom. There, it receives a stamp
`that establishes its filing date.
`Every year, the PTO receives over 300,000
`applications and issues more than 150,000 patents.
`Applications go from the mailroom to the office of initial
`patent examination, which looks them over to make sure all
`the required parts are there.
`This office also decides what field of
`technology an application relates to and assigns it to the
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`Robert Bosch Exhibit 2005 - Page 15
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
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`Case 1:08-cv-00542-SLR-MPT Document 369 Filed 12/09/10 Page 16 of 265 PageID #: 6961
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`appropriate examining group.
`Soon it is assigned to an individual Patent
`Examiner for handling. It then gets put in a stack to wait
`its turn for examination. The reason is that examiners have
`to review the applications assigned to them in the order in
`which they have been filed. In time, the examiner turns to
`our inventor's application, and begins by reading it,
`especially the specification and claims in order to come to
`a conclusion about whether the inventions described in the
`claims are patentable.
`A patent might contain one claim or many claims
`and the examiner must make this conclusion about each
`individual claim.
`In order to make that decision, the Patent
`Examiner usually looks at patents that have been issued
`previously in the same or very closely related fields of
`art. In most areas of technology, the examiner also has
`computer databases that contain limited additional
`information.
`
`Another part of the job is to decide if the
`inventor's description of the invention is complete and
`clear enough to meet the requirements for a patent,
`including the requirement that the description enables
`someone of ordinary skill in the field to actually make and
`use it.
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`Robert Bosch Exhibit 2005 - Page 16
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
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`It's important to note that the process of
`patent examination is private. That is, the public does not
`know that someone has applied for a patent on an invention
`until the patent issues, or in some cases, until the
`application has been pending for at least 18 months.
`The reason for this secrecy is to give the
`inventor a chance to get the examiner's reaction to the
`application and decide whether to withdraw it, for
`whatever reason, and keep the invention as confidential
`information.
`
`However, because the process occurs mostly in
`private, and because the job of examining so many
`applications is very challenging, the law requires the
`applicant to tell the examiner whatever he or she knows
`about the prior art that might be important to the
`examiner's decision on whether to allow the patent.
`We call this the applicant's duty of candor.
`One way the applicant can satisfy this duty is by bringing
`certain prior art to the attention of the examiner, either
`in the original application, or in other submissions, called
`information disclosure statements. In this way, the
`decisions of the examiner are based on both the information
`provided by the applicant and on the information the
`examiner is able to find during the examination process.
`Sometimes the examiner concludes the application
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`Robert Bosch Exhibit 2005 - Page 17
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
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`meets all the requirements we've discussed and allows the
`patent to issue at this first stage, but more frequently,
`the examiner will reject the application as deficient in
`some respect.
`At that point, the applicant usually prepares a
`written response, either agreeing or disagreeing with the
`examiner. An applicant who agrees with the examiner can
`submit amendments to the application designed to overcome
`the examiner's objection and an applicant who disagrees
`with the examiner can explain the reason for the
`disagreements.
`This exchange of office actions and responses
`goes on until the examiner issues a final office action,
`which may reject or allow some or all of the applicant's
`claims. Once a final PTO office action has occurred, and
`one or more claims have been allowed, the applicant is
`required to pay an issuance fee and the patent is granted.
`Then, on the date shown in the upper right
`corner of the first page of the patent, it is issued by the
`PTO, and the inventor receives all the rights of a patent.
`That date is highlighted on your sample.
`By the time a patent issues and the public can
`take a look at it, the record of what the examiner did is
`also made public. This is the patent's file, which we call
`the prosecution history.
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`Robert Bosch Exhibit 2005 - Page 18
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
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`Case 1:08-cv-00542-SLR-MPT Document 369 Filed 12/09/10 Page 19 of 265 PageID #: 6964
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`The file history contains the original
`application and all the communications between the applicant
`and the Patent Examiner, including a record of any
`rejections, the applicant's responses, and any amendments.
`Once a patent is issued, the inventor, or the
`person or company the inventor has assigned a patent to, can
`enforce the patent against anyone who uses the invention
`without permission. We call such unlawful use infringement,
`but the PTO and its examiners do not decide infringement
`issues.
`
`If there is a dispute about infringement, it is
`brought to the Court to decide. Sometimes in a Court case,
`you are also asked to decide about validity. That is,
`whether the patent should have been allowed at all by the
`PTO.
`
`A party accused of infringement is entitled to
`challenge whether the asserted patent claims are
`sufficiently new or nonobvious in light of the prior art, or
`whether other requirements of patentability have been met.
`In other words, a defense to an infringement lawsuit is that
`the patent in question is invalid.
`You may wonder why it is that you would be asked
`to consider such things when the patent has already been
`reviewed by a government examiner. There are several
`reasons for this.
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`Robert Bosch Exhibit 2005 - Page 19
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
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`First, there may be facts or arguments that the
`examiner did not consider, such as prior art that was not
`located by the PTO, or provided by the applicant.
`Another reason may be the failure by the
`applicant to disclose the best way of making or using the
`invention, which is another requirement for getting a
`patent.
`
`In addition, there is, of course, the
`possibility that mistakes were made, or important
`information overlooked. Examiners have a lot of work to do
`and no process is perfect.
`Also, unlike a Court proceeding, prosecution of
`a patent application takes place in private, without input
`from people who might later be accused of infringement.
`So it is important that we provide a chance for someone
`who is accused of infringement to challenge the patent in
`court.
`
`In deciding issues of infringement and validity,
`it is your job to decide the facts of the case. The judge
`will instruct you about the law, which may include the
`meaning of certain words or phrases contained in the patent,
`but it is up to you as exclusive judges of the facts to
`apply the facts as you find them to the law and decide the
`questions of infringement and validity in the case before
`you.
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`Robert Bosch Exhibit 2005 - Page 20
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
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`To prove infringement, the patent holder must
`persuade you that it is more likely than not that the patent
`has been infringed.
`To prove that a patent is invalid, the law
`requires a higher standard of proof, since the PTO is
`presumed to have done its job correctly.
`The party accused of infringement must persuade
`you that it is highly probable that the patent is invalid.
`Good luck with your task, and thank you for your
`
`service.
`
`THE COURT: All right, ladies and gentlemen. I
`am going read to you the preliminary instructions. I think
`there are copies included in your notebook, so you certainly
`don't have to read along.
`Members of the jury now that you have been sworn
`in, I have the following preliminary instructions for
`guidance on your role as jurors in this case.
`This is an action for patent infringement
`arising under the patent laws of the United States. The
`plaintiff is Robert Bosch, LLC, which I will refer to as
`Bosch. The defendant is Pylon Manufacturing, which I will
`refer to Pylon Manufacturing Corporation, which I will refer
`to as Pylon.
`
`Bosch and Pylon are companies engaged in the
`design, development, marketing, and sales of wiper blades.
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`Robert Bosch Exhibit 2005 - Page 21
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
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`Case 1:08-cv-00542-SLR-MPT Document 369 Filed 12/09/10 Page 22 of 265 PageID #: 6967
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`Bosch is the owner of the three United States patents at
`issue in this case: United States Patent No. 6,292,974,
`which I will refer to as the '974 patent; U.S. Patent No.
`6,675,434, which I will refer to as the '434 patent; and
`U.S. Patent No. 6,944,905, which I will refer to as the '905
`patent. I may refer to these patents collectively as the
`Bosch patents or the patents in suit.
`Copies of these patents have been given to you
`in your notebooks along with these preliminary instructions.
`We have also provided paper to you to take notes if you
`choose to do so during the trial.
`Bosch contends that Pylon infringes the '434 and
`'504 patents. Pylon asserts that it does not infringe them
`and that the '974, '434 and '905 patents are invalid. Bosch
`denies that the Bosch patents are invalid. You must decide
`these issues according to the instructions that I shall give
`you at the end of the trial. Those instructions will repeat
`the summary and provide more detail.
`In essence, however, you must decide, one,
`whether Bosch has proven, by a preponderance of the
`evidence, that Pylon has infringed the '905 and '434
`patents, and second, whether Pylon has proven by clear and
`convincing evidence that the Bosch patents are invalid. It
`will be your duty to find what the facts are from the
`evidence presented at trial. You and you alone are the
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`Robert Bosch Exhibit 2005 - Page 22
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
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`judges of the facts.
`I skipped a page.
`This is a civil case that in which Pylon
`contends that the patents in suit are invalid. A party
`alleging the invalidity of a patent
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