`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`_______________
`
`
`Cases IPR2016-00041
`Patent 8,099,823
`
`_______________
`
`
`
`DECLARATION OF JAMES R. KLAIBER
`
`
`
`
`
`
`
`Costco Exhibit 1106, p. 1
`
`

`

`IPR2016-00041
`DECLARATION OF JAMES R. KLAIBER
`
`
`I, James R. Klaiber, declare as follows:
`
`1.
`
`I am an attorney in the Intellectual Property group at the law firm of
`
`Hughes Hubbard & Reed LLP, located at One Battery Park Plaza, New York, NY
`
`10004. I am a member in good standing of the bar of the State of New York and
`
`United States Patent and Trademark Office. I am co-counsel for Petitioner Costco
`
`Wholesale Corporation (“Costco”) in these proceedings. I make this declaration in
`
`support of Petitioner’s Motion to Strike Hearsay Testimony of Wilfried Merkel
`
`[Exhibit 2005].
`
`2.
`
`On September 27, 2016, I represented Petitioner in a conference call
`
`with the Board in which Patent Owner was represented by Mr. Mark Hanneman.
`
`The purpose of the call was to address Petitioner’s request to cross-examine Mr.
`
`Wilfried Merkel after Patent Owner had submitted, as part of Exhibit 2005 in this
`
`proceeding, excerpts from Mr. Merkel’s prior testimony in Robert Bosch LLC v.
`
`Pylon Manufacturing Corp., No. 08-542 (D. Del.).
`
`3.
`
`During the conference call, Mr. Hanneman indicated that before filing
`
`Bosch's Patent Owner’s Response in this proceeding, he had not had any contact
`
`with Mr. Merkel since Mr. Merkel’s last deposition, a number of years ago.
`
`4.
`
`Attached hereto at Tab A is a true and accurate copy of The Declara-
`
`tion of Wilfried Merkel served on Petitioner on August 12, 2016.
`
`5.
`
`Attached hereto at Tab B is a true and accurate copy of a September 7,
`
`
`
`Costco Exhibit 1106, p. 2
`
`

`

`IPR2016-00041
`DECLARATION OF JAMES R. KLAIBER
`
`2016 letter from Costco’s Counsel James R. Klaiber to Robert Bosch LLC’s Coun-
`
`sel Patrick R. Colsher requesting a cross-examination deposition of Bosch’s de-
`
`clarant Mr. Merkel.
`
`6.
`
`Attached hereto at Tab C is a true and accurate copy of a September
`
`15, 2016 email from Robert Bosch LLC’s Counsel Patrick R. Colsher responding
`
`to Mr. Klaiber’s September 7, 2016 letter and indicating that declarant Mr. Merkel
`
`was unavailable for deposition, and that instead Mr. Merkel would be willing to
`
`answer written questions.
`
`7.
`
`Attached hereto at Tab D is a true and accurate copy of a September
`
`16, 2016 letter from Costco’s Counsel James R. Klaiber to Robert Bosch LLC’s
`
`Counsel Patrick R. Colsher serving deposition notices of Mr. Merkel and rejecting
`
`Patent Owner Robert Bosch LLC’s proposal for written questions.
`
`8.
`
`Attached hereto at Tab E is a true and accurate copy of a September
`
`19, 2016 letter from Patent Owner Robert Bosch LLC’s Counsel Patrick R.
`
`Colsher to Petitioner Costco’s Counsel James R. Klaiber responding to the Sep-
`
`tember 16, 2016 letter and indicating again that Mr. Merkel was unavailable for
`
`deposition.
`
`9.
`
`Attached hereto at Tab F is a true and accurate copy of a September
`
`22, 2016 email from Petitioner’s Counsel to the Board and Patent Owner request-
`
`ing a conference call to discuss Petitioner’s request to cross-examine Mr. Merkel.
`
`
`
`Costco Exhibit 1106, p. 3
`
`

`

`IPR2016-00041
`DECLARATION OF JAMES R. KLAIBER
`
`
`
`
`
`
`I declare under penalty of perjury under the laws of the United States of
`
`America that the foregoing is true and correct.
`
`
`
`
`
`Executed on: October 24, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`James R. Klaiber
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`james.klaiber@hugheshubbard.com
`(212) 837-6125
`
`
`Costco Exhibit 1106, p. 4
`
`

`

`
`
`Costco Exhibit 1106, p. 5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` A
`
`Costco Exhibit 1106, p. 5
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`DECLARATION OF WILFRIED MERKEL
`
`Robert Bosch Exhibit 2021
`Page 1
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`Costco Exhibit 1106, p. 6
`
`

`

`I, Wilfried Merkel, hereby declare as follows,
`
`I. My name is Wilfried Merkel. I have personal knowledge of the facts
`
`and information set forth in this document.
`
`2.
`
`3.
`
`I live in Germany. My address is Westring 6C, 77876 Kappelrodeck.
`
`I was formerly employed by Robert Bosch GmbH in Germany, and
`
`worked for Bosch as an engineer on wiper-blade development projects, among
`
`other things. I am named as an inventor on U.S. Patent No. 6,292,974.
`
`4.
`
`In 2010 I travelled to Wilmington, Delaware, in the United States, to
`
`testify at a patent-infringement trial against a company called Pylon. I testified
`
`truthfully at that trial and gave the best answers I then could to the questions I was
`
`asked during the trial.
`
`5.
`
`I retired years ago. I am no longer employed by Bosch, and no longer
`
`have any consulting contract with Bosch. I have, for reasons of cardiac health,
`
`been advised that I should not travel and should minimize my activities.
`
`6.
`
`Although I do not know any of the details, before signing this
`
`document I was advised and recognize that this document may be filed as evidence
`
`Robert Bosch Exhibit 2021
`Page2
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`Costco Exhibit 1106, p. 7
`
`

`

`in a contested case before the Patent Trial and Appeal Board of the United States
`
`Patent and Trademark Office. Because of my health issues, I will not voluntarily
`
`give a deposition in this case.
`
`I hereby declare under the penalty of perjury under the laws of the United
`
`States of America that the foregoing is true and correct.
`
`Wilfried Merkel
`
`Robert Bosch Exhibit 2021
`Page3
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`Costco Exhibit 1106, p. 8
`
`

`

`Costco Exhibit 1106, p. 9
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` B
`
`
`
`Costco Exhibit 1106, p. 9
`
`

`

`Hughes Hubbard & Recd LLP
`One Battery Park Plaza
`New York, New York 10004-1482
`Telephone: +1 (212) 837-6000
`Fax: +1 (212) 422-4726
`hugheshubbard.com
`
`J ames R. Klaiber
`Counsel
`Direct Dial: +1 (212) 837-6125
`james.klaiber@hugheshubbard.com
`
`September 7, 2016
`
`Hughes
`Hubbard
`
`Via E-Mail
`
`Patrick R. Colsher, Esq.
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`
`Re:
`
`IPR Depositions - Costco v. Bosch: Case Nos. IPR2016-00034,
`-00036,-00038,-00039,-00040,-00041
`
`Dear Patrick:
`
`Pursuant to the routine discovery provisions of 3 7 CFR 42.51 (b )(1 )(ii), Costco would like
`to schedule the cross-examination deposition of Bosch's declarant Mr. Wilfried Merkel in the
`above-referenced IPRs.
`
`Accordingly, please let us know the availability, preferably in September, of Mr. Merkel.
`We will, of course, issue a formal notice, but would prefer to agree on a date and time before we
`do.
`
`Sincerely yours,
`
`cc:
`
`James W. Dabney, Esq.
`Richard M. Koehl, Esq.
`Mark Hannemann, Esq.
`
`72136650_1
`New York
`
`• Washington, D.C.
`
`• Los Angeles
`
`• Miami
`
`•
`
`Jersey City
`
`• Kansas City
`
`• Paris
`
`•
`
`lbkyo
`
`Costco Exhibit 1106, p. 10
`
`

`

`
`
`Costco Exhibit 1106, p. 11
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` C
`
`Costco Exhibit 1106, p. 11
`
`

`

`Klaiber, James R.
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Patrick Colsher <Patrick.Colsher@Shearman.com>
`Thursday, September 15, 2016 4:58 PM
`Klaiber, James R.
`Mark Hannemann; Dabney, James W.; Koehl, Richard M.; Lansky, David E.; Lopatkin,
`Stefanie
`Re: Costco v. Bosch: Case Nos. IPR2016-00034, -00036, -00038, -00039, -00040, -00041
`
`Jim,
`
`Unfortunately, Mr. Merkel remains unable to be deposed; however, if you would like him to answer a reasonable
`number of written questions, he will answer them.
`
`
`Best regards,
`
`Patrick
`
`On Sep 7, 2016, at 5:33 PM, Klaiber, James R. <james.klaiber@hugheshubbard.com> wrote:
`
`Counsel,
`
`
`Please see the attached letter.
`
`Jim Klaiber
`
`James R. Klaiber | Counsel
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza | New York, NY 10004-1482
`Office +1 (212) 837-6125
`james.klaiber@hugheshubbard.com | bio
`
`Please consider the environment before printing this email or its attachments.
`
`
`This message contains confidential information and is intended only for the individual named. If you are not the named addressee you should not
`disseminate, distribute or copy this e-mail. Please notify the sender immediately by e-mail if you have received this e-mail by mistake and delete this e-
`mail from your system. E-mail transmission cannot be guaranteed to be secure or error-free as information could be intercepted, corrupted, lost,
`destroyed, arrive late or incomplete, or contain viruses. The sender therefore does not accept liability for any errors or omissions in the contents of this
`message, which arise as a result of e-mail transmission. If verification is required please request a hard-copy version.
`<Letter to P. Colsher re IPR depositions.pdf>
`
`1
`
`Costco Exhibit 1106, p. 12
`
`

`

`
`
`Costco Exhibit 1106, p. 13
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` D
`
`Costco Exhibit 1106, p. 13
`
`

`

`Hughes Hubbard & Recd LLP
`One Battery Park Plaza
`New York, New York 10004-1482
`Telephone: +1 (212) 837-6000
`Fax: +1 (212) 422-4726
`hugheshubbard.com
`
`James R. Klaiber
`Counsel
`Direct Dial: +1 (212) 837-6125
`james.klaiber@hugheshubbard.com
`
`September 16, 2016
`
`Hughes
`Hubbard
`
`Via E-Mail
`
`Patrick R. Colsher, Esq.
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`
`Re:
`
`IPR Depositions - Costco v. Bosch: Case Nos. IPR2016-00034,
`-00036,-00038,-00039,-00040,-00041
`
`Dear Patrick:
`
`We are in receipt of your email of yesterday afternoon.
`
`Under the laws and rules governing IPR proceedings, Bosch's declarant, Mr. Wilfried
`Merkel, "must be made available in the United States for cross-examination." Square Inc. v.
`REM Holdings 3, LLC, IPR2014-00312, Paper 37 at 3, December 9, 2014; 37 C.F.R. §
`42.53(b )(2), (g). Costco does not agree to the improper alternative procedure proposed by
`Bosch.
`
`Deposition notices for Mr. Merkel in the above-referenced proceedings are enclosed and
`served upon you. Bosch is required to either (i) make Mr. Merkel available for deposition in the
`United States, or (ii) voluntarily request withdrawal and expungement from the record of his
`declaration and related testimony (i.e., Ex. 2005, 338:4-392:1, Ex. 2021; Ex. 2022, 338:4-392:1).
`Square, Paper 3 7 at 3.
`
`Please let me know by 5 pm on Monday, September 19 which alternative Bosch has
`selected.
`
`Sincerely yours,
`
`Encl.
`cc:
`
`James W. Dabney, Esq.
`Richard M. Koehl, Esq.
`Mark Hannemann, Esq.
`
`72545793_1
`New York
`
`• Washington, D.C.
`
`• Los Angeles
`
`• Miami
`
`•
`
`Jersey City
`
`• Kansas City
`
`•
`
`Paris
`
`• Tokyo
`
`Costco Exhibit 1106, p. 14
`
`

`

`Filed: September 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`____________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00034
`Patent 6,973,698
`____________
`
`PETITIONER’S NOTICE OF DEPOSITION OF
`MR. WILFRIED MERKEL
`PURSUANT TO 37 C.F.R. § 42.53
`
`
`
`
`
`
`
`
`Costco Exhibit 1106, p. 15
`
`

`

`IPR2016-00034
`PETITIONER’S NOTICE OF DEPOSITION OF MR. WILFRIED MERKEL
`
`
`PLEASE TAKE NOTICE that pursuant to 37 C.F.R. § 42.53, Petitioner,
`
`Costco Wholesale Corporation, will take the deposition of Patent Owner’s
`
`declarant, Mr. Wilfried Merkel, upon oral examination as follows:
`
`Date:
`
`Time
`
`October 3, 2016
`
`9:30 AM
`
`Location: Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004-1482
`
`The deposition will be recorded by stenographic means by a court reporter licensed
`
`to administer oaths and may be recorded by videotape.
`
`
`
`Dated: September 16, 2016
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/James R. Klaiber/
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`T: (212) 837-6125
`Attorney for Petitioner
`Costco Wholesale Corporation
`
`
`2
`
`Costco Exhibit 1106, p. 16
`
`

`

`IPR2016-00034
`PETITIONER’S NOTICE OF DEPOSITION OF MR. WILFRIED MERKEL
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on Friday, September 16, 2016, the foregoing document
`
`was served in its entirety by email on the attorneys of record for Patent Owner:
`
`•
`
`•
`
`Patrick R. Colsher (patrick.colsher@shearman.com)
`
`Mark Hannemann (mark.hannemann@shearman.com)
`
`
`
`
`
`
`/James R. Klaiber/
`Registration No. 41,902
`
`
`
`3
`
`Costco Exhibit 1106, p. 17
`
`

`

`Filed: September 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`____________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00036
`Patent 6,944,905
`____________
`
`PETITIONER’S NOTICE OF DEPOSITION OF
`MR. WILFRIED MERKEL
`PURSUANT TO 37 C.F.R. § 42.53
`
`
`
`
`
`
`
`
`Costco Exhibit 1106, p. 18
`
`

`

`IPR2016-00036
`PETITIONER’S NOTICE OF DEPOSITION OF MR. WILFRIED MERKEL
`
`
`PLEASE TAKE NOTICE that pursuant to 37 C.F.R. § 42.53, Petitioner,
`
`Costco Wholesale Corporation, will take the deposition of Patent Owner’s
`
`declarant, Mr. Wilfried Merkel, upon oral examination as follows:
`
`Date:
`
`Time
`
`October 3, 2016
`
`9:30 AM
`
`Location: Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004-1482
`
`The deposition will be recorded by stenographic means by a court reporter licensed
`
`to administer oaths and may be recorded by videotape.
`
`
`
`Dated: September 16, 2016
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/James R. Klaiber/
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`T: (212) 837-6125
`Attorney for Petitioner
`Costco Wholesale Corporation
`
`
`2
`
`Costco Exhibit 1106, p. 19
`
`

`

`IPR2016-00036
`PETITIONER’S NOTICE OF DEPOSITION OF MR. WILFRIED MERKEL
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on Friday, September 16, 2016, the foregoing document
`
`was served in its entirety by email on the attorneys of record for Patent Owner:
`
`•
`
`•
`
`Patrick R. Colsher (patrick.colsher@shearman.com)
`
`Mark Hannemann (mark.hannemann@shearman.com)
`
`
`
`
`
`
`/James R. Klaiber/
`Registration No. 41,902
`
`
`
`3
`
`Costco Exhibit 1106, p. 20
`
`

`

`Filed: September 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`____________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00038
`Patent 6,292,974
`____________
`
`PETITIONER’S NOTICE OF DEPOSITION OF
`MR. WILFRIED MERKEL
`PURSUANT TO 37 C.F.R. § 42.53
`
`
`
`
`
`
`
`
`Costco Exhibit 1106, p. 21
`
`

`

`PLEASE TAKE NOTICE that pursuant to 37 C.F.R. § 42.53, Petitioner,
`
`Costco Wholesale Corporation, will take the deposition of Patent Owner’s
`
`declarant, Mr. Wilfried Merkel, upon oral examination as follows:
`
`Date:
`
`Time
`
`October 3, 2016
`
`9:30 AM
`
`Location: Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004-1482
`
`The deposition will be recorded by stenographic means by a court reporter licensed
`
`to administer oaths and may be recorded by videotape.
`
`
`
`Dated: September 16, 2016
`
`
`
`Respectfully submitted,
`
`/James R. Klaiber/
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`T: (212) 837-6125
`Attorney for Petitioner
`Costco Wholesale Corporation
`
`
`
`
`
`
`Costco Exhibit 1106, p. 22
`
`

`

`IPR2016-00038
`PETITIONER’S NOTICE OF DEPOSITION OF MR. WILFRIED MERKEL
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on Friday, September 16, 2016, the foregoing document
`
`was served in its entirety by email on the attorneys of record for Patent Owner:
`
`•
`
`•
`
`Patrick R. Colsher (patrick.colsher@shearman.com)
`
`Mark Hannemann (mark.hannemann@shearman.com)
`
`
`
`
`
`
`/James R. Klaiber/
`Registration No. 41,902
`
`
`
`72562043
`
`3
`
`Costco Exhibit 1106, p. 23
`
`

`

`Filed: September 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`____________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00040
`Patent 7,484,264
`____________
`
`PETITIONER’S NOTICE OF DEPOSITION OF
`MR. WILFRIED MERKEL
`PURSUANT TO 37 C.F.R. § 42.53
`
`
`
`
`
`
`
`
`Costco Exhibit 1106, p. 24
`
`

`

`IPR2016-00040
`PETITIONER’S NOTICE OF DEPOSITION OF MR. WILFRIED MERKEL
`
`
`PLEASE TAKE NOTICE that pursuant to 37 C.F.R. § 42.53, Petitioner,
`
`Costco Wholesale Corporation, will take the deposition of Patent Owner’s
`
`declarant, Mr. Wilfried Merkel, upon oral examination as follows:
`
`Date:
`
`Time
`
`October 3, 2016
`
`9:30 AM
`
`Location: Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004-1482
`
`The deposition will be recorded by stenographic means by a court reporter licensed
`
`to administer oaths and may be recorded by videotape.
`
`
`
`Dated: September 16, 2016
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/James R. Klaiber/
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`T: (212) 837-6125
`Attorney for Petitioner
`Costco Wholesale Corporation
`
`
`2
`
`Costco Exhibit 1106, p. 25
`
`

`

`IPR2016-00040
`PETITIONER’S NOTICE OF DEPOSITION OF MR. WILFRIED MERKEL
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on Friday, September 16, 2016, the foregoing document
`
`was served in its entirety by email on the attorneys of record for Patent Owner:
`
`•
`
`•
`
`Patrick R. Colsher (patrick.colsher@shearman.com)
`
`Mark Hannemann (mark.hannemann@shearman.com)
`
`
`
`
`
`
`/James R. Klaiber/
`Registration No. 41,902
`
`
`
`72563399
`
`3
`
`Costco Exhibit 1106, p. 26
`
`

`

`Filed: September 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`____________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00041
`Patent 8,099,823
`____________
`
`PETITIONER’S NOTICE OF DEPOSITION OF
`MR. WILFRIED MERKEL
`PURSUANT TO 37 C.F.R. § 42.53
`
`
`
`
`
`
`
`
`Costco Exhibit 1106, p. 27
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`

`

`IPR2016-00041
`PETITIONER’S NOTICE OF DEPOSITION OF MR. WILFRIED MERKEL
`
`
`PLEASE TAKE NOTICE that pursuant to 37 C.F.R. § 42.53, Petitioner,
`
`Costco Wholesale Corporation, will take the deposition of Patent Owner’s
`
`declarant, Mr. Wilfried Merkel, upon oral examination as follows:
`
`Date:
`
`Time
`
`October 3, 2016
`
`9:30 AM
`
`Location: Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004-1482
`
`The deposition will be recorded by stenographic means by a court reporter licensed
`
`to administer oaths and may be recorded by videotape.
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`
`
`Dated: September 16, 2016
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`
`
`Respectfully submitted,
`
`
`
`
`
`/James R. Klaiber/
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`T: (212) 837-6125
`Attorney for Petitioner
`Costco Wholesale Corporation
`
`
`2
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`Costco Exhibit 1106, p. 28
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`

`

`IPR2016-00041
`PETITIONER’S NOTICE OF DEPOSITION OF MR. WILFRIED MERKEL
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on Friday, September 16, 2016, the foregoing document
`
`was served in its entirety by email on the attorneys of record for Patent Owner:
`
`•
`
`•
`
`Patrick R. Colsher (patrick.colsher@shearman.com)
`
`Mark Hannemann (mark.hannemann@shearman.com)
`
`
`
`
`
`
`/James R. Klaiber/
`Registration No. 41,902
`
`
`
`72551154
`
`3
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`Costco Exhibit 1106, p. 29
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`

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`Costco Exhibit 1106, p. 30
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`Costco Exhibit 1106, p. 30
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`

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`SHEARMAN & STERLINGLLr
`
`599 LEXINGTON AVENUE I NEW YORK I NY I 10022-6069
`WWW.SHEARMAN.COM I T +1.212.848.4000 I F +1.212.848.7179
`
`Patrick.Colsher@Shearman.com
`212.848. 7708
`
`Via Email
`
`James R. Klaiber
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`
`September 19, 2016
`
`Costco v. Bosch, IPR Case Nos. IPR2016-00034, -00036, -00038, -00039, -00040, 00041
`
`Dear Jim,
`
`We write in response to your letter of September 16, 2016, noticing a deposition of Mr.
`Merkel on October 3 at your office in New York City.
`
`You will recall that, in his August 10 declaration, Mr. Merkel explained that he lives in
`Germany, that he retired years ago, that his heart condition precludes any travel, that he has been
`instructed to minimize his activities, and that because of his health issues he would not volunteer
`to be deposed (Ex. 2021 at pars. 5-6). We nonetheless passed your request for deposition dates
`to Mr. Merkel, and, as you know, he advised us that his medical situation is unchanged. As you
`also know, although you did not propose any alternative to a deposition in New York, in the
`hopes of achieving a constructive solution we also asked Mr. Merkel whether in view of his
`medical situation he would be willing to answer written questions from you, and he agreed to do
`so.
`
`Your September 16 letter does not propose any procedure other than the New York
`deposition that Mr. Merkel has already declined for medical reasons. You refused the alternative
`he offered. Moreover, his declaration merely authenticates his 2010 trial testimony (Ex.
`2005). In a more usual case, we might agree with your position that because Mr. Merkel cannot
`be deposed, we should "voluntarily request withdrawal and expungement from the record of his
`declaration and related testimony." However, the circumstances of this case are different, and
`we cannot agree that Mr. Merkel's limited testimony should be withdrawn because of his
`medical problems.
`
`; very 'truly your~
`
`:/ ~A.,,t {,,t,j_
`
`Patrick R. Colsher _ _ _
`
`I DUBAI
`I BRUSSELS
`I BEIJING
`ABU DHABI
`I ROME
`I SAN FRANCISCO
`I SAo PAULO
`PARIS
`
`I HONG KONG
`I FRANKFURT
`I SAUDI ARABIA'
`I SHANGHAI
`
`I
`LONDON
`I SINGAPORE
`
`I NEW YORK
`I MILAN
`I MENLO PARK
`I TOKYO
`I TORONTO
`I WASHINGTON, DC
`
`SHEARMAN & STERLING LLP IS A LIMITED LIABILITY PARTNERSHIP ORGANIZED IN THE UNITED STATES UNDER THE LAWS OF THE STATE OF DELAWARE, WHICH LAWS LIMIT THE PERSONAL LIABILITY OF PARTNERS
`'DR. SULTAN ALMASOUD & PARTNERS IN ASSOCIATION WITH SHEARMAN & STERLING LLP
`
`Costco Exhibit 1106, p. 31
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`

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`Costco Exhibit 1106, p. 32
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`Costco Exhibit 1106, p. 32
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`

`

`Klaiber, James R.
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Klaiber, James R.
`Thursday, September 22, 2016 10:16 AM
`'Trials@uspto.gov'
`Mark Hannemann; Dabney, James W.; Koehl, Richard M.; Lansky, David E.; Lopatkin,
`Stefanie; Klaiber, James R.; 'Patrick Colsher'
`Costco v. Bosch: Case Nos. IPR2016-00034, -00036, -00038, -00039, -00040, -00041
`
`Re: IPRs Nos. IPR2016-00034, -00036, -00038, -00039, -00040, -00041
`
`
`To the Board:
`
`
`Petitioner Costco Wholesale Corporation (“Costco”) requests a teleconference, pursuant to 37 CFR § 42.53
`(d)(1), to schedule the cross-examination deposition of Mr. Wilfried Merkel, one of the declarants of Patent
`Owner Robert Bosch LLC (“Bosch”) in each of the six above-referenced IPR proceedings (“the Costco IPRs”).
`The parties have not been able to agree on a time or place for the deposition. Bosch has informed Costco that
`Mr. Merkel has health issues and will not appear for deposition.
`
`
`The parties are available on Tuesday, September 27 from 9:30 AM to 1:30 PM or after 3:00 PM (EDT) for a
`teleconference with the Board.
`
`
`Statement of the Subject Matter of the Teleconference and Relief Requested:
`
`In each of the Costco IPRs, Bosch submitted approximately 54 pages of Mr. Merkel’s trial testimony from a
`2010 district court case in which Mr. Merkel testified on behalf of Bosch. See IPR2016-00034, -00036, -00038, -
`00039, -00040, -00041, Ex. 2005 at 210-264. Each of Bosch’s Patent Owner Responses relies on the testimony
`of Mr. Merkel to support Bosch’s secondary considerations arguments relating to, e.g., long-felt need,
`commercial success, and industry skepticism, as well as to allege a nexus between the challenged claims and
`certain Bosch wiper products. See IPR2016-00034, Paper 26 at 22, 24, 27; IPR2016-00036, Paper 28 at 17, 19,
`22; IPR2016-00038, Paper 28 at 9, 11, 14; IPR2016-00039, Paper 31 at 12-14, 17; IPR2016-00040, Paper 28 at
`13, 15-16, 18; IPR2016-00041, Paper 32 at 14, 15-16, 19.
`
`
`On July 29, 2016, in each of the Costco IPRs, Costco objected to this testimony on multiple
`grounds. See IPR2016-00034, Paper 27 at 3; IPR2016-00036, Paper 29 at 3; IPR2016-00038, Paper 29 at 3;
`IPR2016-00039, Paper 32 at 3; IPR2016-00040, Paper 29 at 3; IPR2016-00041, Paper 33 at 3. On August 12,
`2016, in each of the Costco IPRs, Bosch served supplemental evidence that included a Declaration of Wilfried
`Merkel, in which Mr. Merkel asserted that that “I have, for reasons of cardiac health, been advised that I
`should not travel and should minimize my activities,” and that he “will not voluntarily give a deposition in this
`case.”
`
`It is Costco’s position that, pursuant to 37 C.F.R. §§ 42.51(b)(1)(ii) and 42.53(b), (g), it is entitled to take a
`deposition in the United States to cross-examine Mr. Merkel on his declaration and trial testimony. Bosch has
`contacted Mr. Merkel and he has confirmed that he will not make himself available for deposition, and Bosch
`has proposed that Mr. Merkel answer written questions instead. Costco does not agree to this alternative,
`because “it is important to cross-examine this witness in person to properly discuss the many exhibits and
`technical issues that are involved in” these six cases. Square, Inc. v. REM Holdings 3, LLC. , IPR2014-00312,
`1
`
`Costco Exhibit 1106, p. 33
`
`

`

`Paper 37 at 2-3 (December 9, 2014). Costco has requested that if Bosch cannot produce Mr. Merkel for
`deposition, Bosch should voluntarily withdraw his trial testimony and declaration from consideration in this
`proceeding. Id. at 3; see also HTC Corp. v. NFC Tech., LLC, IPR2014-01998, Paper 41 at 4-5 (November 6, 2015)
`(ordering expunging of declaration of Patent Owner’s declarant who refused to be deposed regarding his
`declaration). Bosch has declined both alternatives.
`
`
`Costco therefore requests that the Board order Bosch to comply with the rules governing routine discovery
`and produce Mr. Merkel for deposition in the United States, and if Bosch truly cannot do so, to authorize
`Costco to file a Motion to Strike Mr. Merkel’s trial testimony and declaration. HTC Corp., Paper 41 at 2.
`
`
`Sincerely,
`
`James R. Klaiber
`Back-up Counsel for Costco Wholesale Corporation
`
`
`
`
`James R. Klaiber | Counsel
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza | New York, NY 10004-1482
`Office +1 (212) 837-6125
`james.klaiber@hugheshubbard.com | bio
`
`Please consider the environment before printing this email or its attachments.
`
`
`2
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`Costco Exhibit 1106, p. 34
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