Filed: July 29, 2016
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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 IPR2016-00041
`Patent 8,099,823
`____________
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`PETITIONER’S OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
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`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 OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
`
`
`
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`IPR2016-00041
`PETITIONER’S OBJECTIONS TO EVIDENCE
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`Pursuant to 37 C.F.R. § 42.64, Petitioner Costco Wholesale Corporation
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`(“Petitioner”) objects to the admissibility of the documents identified below that
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`were submitted by Patent Owner Robert Bosch LLC (“Patent Owner”) in Patent
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`Owner’s Response to the Petition for inter partes review of U.S. Patent No.
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`8,099,823 (“Patent Owner’s Response,” Paper No. 32) as follows:
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`1.
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`Petitioner objects
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`to Patent Owner’s Response and each
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`accompanying Exhibit submitted by Patent Owner to the extent they purport to
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`introduce evidence that exceeds the scope of the Petition or does not relate to
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`“prior art consisting of patents and printed publications.” 35 U.S.C. § 311.
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`Petitioner objects to Patent Owner’s Response to the extent it relies on or otherwise
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`cites Exhibits 2003, 2005, 2006, 2007, 2008, 2010, 2011, 2013, 2014, 2015, and
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`2016 for the reasons set forth below.
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`2.
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`Petitioner objects to the Exhibits submitted by Patent Owner to the
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`extent they attempt to circumvent the page limits established for Patent Owner’s
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`Response. See 37 C.F.R. §§ 42.24(b), 42.6(a)(3); Cisco Sys., Inc. v. C-Cation
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`Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014).
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`3.
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`Exhibit 2003 (Declaration of Dr. Steven Dubowsky1) is objected to
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`under Fed. R. Evid. 401, 402, 403 for lack of relevance; under Fed. R. Evid. 602,
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`1 Titles of Patent Owner’s exhibits are taken from Patent Owner’s List of Exhibits,
`Patent Owner’s Response at iv-v.
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`2
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`IPR2016-00041
`PETITIONER’S OBJECTIONS TO EVIDENCE
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`603 to the extent that it lacks foundation as to matters discussed therein; under Fed.
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`R. Evid. 702, 703 and 37 C.F.R. § 42.65 for lack of qualified expert testimony and
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`insufficient bases for such testimony; and under Fed. R. Evid. 801, 802, 803, 804
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`as hearsay. Exhibit 2003 is also objected to insofar as it cites or refers to other
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`objectionable exhibits and testimony.
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`4.
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`Exhibit 2005 (April 15, 2010 Trial Transcript from Robert Bosch LLC
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`v. Pylon Manufacturing Corp. in the District of Delaware, Case No. 08-542 (SLR))
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`is objected to under Fed. R. Evid. 401, 402, 403 for lack of relevance; under Fed.
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`R. Evid. 602, 603 for lack of foundation as to matters discussed therein; under Fed.
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`R. Evid. 702, 703 and 37 C.F.R. § 42.65 for lack of qualified expert testimony and
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`insufficient bases for such testimony; under Fed. R. Evid. 801, 802, 803, 804 as
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`hearsay; under Fed. R. Evid. 901, 902 for lack of authentication, and under Fed. R.
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`Evid. 1002 for lack of best evidence, including corroborating documentation.
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`Patent Owner has produced no knowledgeable witness to testify in this proceeding
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`or to be cross-examined as to these statements. Exhibit 2005 is also objected to
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`insofar as it cites or refers to other objectionable exhibits and testimony.
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`5.
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`Exhibit 2006 (April 19, 2010 Trial Transcript from Robert Bosch LLC
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`v. Pylon Manufacturing Corp. in the District of Delaware, Case No. 08-542 (SLR))
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`is objected to under Fed. R. Evid. 401, 402, 403 for lack of relevance; under Fed.
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`R. Evid. 602, 603 for lack of foundation as to matters discussed therein; under Fed.
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`3
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`IPR2016-00041
`PETITIONER’S OBJECTIONS TO EVIDENCE
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`R. Evid. 702, 703 and 37 C.F.R. § 42.65 for lack of qualified expert testimony and
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`insufficient bases for such testimony; under Fed. R. Evid. 801, 802, 803, 804 as
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`hearsay; under Fed. R. Evid. 901, 902 for lack of authentication; and under Fed. R.
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`Evid. 1002 for lack of best evidence, including corroborating documentation.
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`Patent Owner has produced no knowledgeable witness to testify in this proceeding
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`or to be cross-examined as to these statements. Exhibit 2006 is also objected to
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`insofar as it cites or refers to other objectionable exhibits and testimony.
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`6.
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`Exhibit 2007 (Declaration of Martin Kashnowski) is objected to under
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`Fed. R. Evid. 401, 402, 403 for lack of relevance; under Fed. R. Evid. 602, 603 for
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`lack of foundation as to matters discussed therein; under Fed. R. Evid. 702, 703
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`and 37 C.F.R. § 42.65 for lack of qualified expert testimony and insufficient bases
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`for such testimony; and under Fed. R. Evid. 801, 802, 803, 804 as hearsay. Exhibit
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`2007 is also objected to insofar as it cites or refers to other objectionable exhibits
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`and testimony.
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`7.
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`Exhibit 2008 (U.S. Patent No. 2,596,063) is objected to under Fed. R.
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`Evid. 602, 603 for lack of foundation as to matters discussed therein; under Fed. R.
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`Evid. 401, 402, 403 for lack of relevance; under Fed. R. Evid. 702, 703 and 37
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`C.F.R. § 42.65 for lack of qualified expert testimony and insufficient bases for
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`such testimony; and under Fed. R. Evid. 801, 802, 803, 804 as hearsay.
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`4
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`IPR2016-00041
`PETITIONER’S OBJECTIONS TO EVIDENCE
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`8.
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`Exhibit 2010 (Excerpt from Supplemental Initial Expert Report of
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`Gregory Davis Regarding U.S. Patent Nos. 6,675,434, 6,836,926 and 6,973,698 in
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`In the Matter of Certain Wiper Blades, Inv. No. 337-TA-816 before the U.S.
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`International Trade Commission) is objected to under Fed. R. Evid. 401, 402, 403
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`for lack of relevance; Fed. R. Evid. 602, 603 for lack of foundation; and under Fed.
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`R. Evid. 1002 for lack of best evidence.
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`9.
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`Exhibit 2011 (Order No. 94 from In the Matter of Certain Wiper
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`Blades, Inv. No. 337-TA-816 before the U.S. International Trade Commission) is
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`objected to under Fed. R. Evid. 602, 603 for lack of foundation as to matters
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`discussed therein; under Fed. R. Evid. 401, 402, 403 for lack of relevance; under
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`Fed. R. Evid. 801, 802, 803, 804 as hearsay, and under Fed. R. Evid. 1002 for lack
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`of best evidence.
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`10. Exhibit 2013 (Excerpt from Declaration of Gregory Davis, Ex. 1013
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`in IPR 2016-00034) is objected to under Fed. R. Evid. 401, 402, 403 for lack of
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`relevance.
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`11. Exhibit 2014 (Plaintiff Robert Bosch LLC’s Amended Response to
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`Defendant Costco Wholesale Corporation’s First Set of Interrogatories (No. 1),
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`dated June 2, 2015, in Robert Bosch LLC v. Alberee Products, Inc., in the District
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`of Delaware, Case No. 12-574 (LPS)) is objected to under Fed. R. Evid. 401, 402,
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`403 for lack of relevance; under Fed. R. Evid. 602, 603 for lack of foundation such
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`5
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`IPR2016-00041
`PETITIONER’S OBJECTIONS TO EVIDENCE
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`as testimony of a witness with personal knowledge; under Fed. R. Evid. 702, 703
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`and 37 C.F.R. § 42.65 for lack of qualified expert testimony and insufficient bases
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`for such testimony; under Fed. R. Evid. 801, 802, 803, 804 as hearsay; under Fed.
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`R. Evid. 901, 902 for lack of authentication; and under Fed. R. Evid. 1002 for lack
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`of best evidence of
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`the purported products described
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`therein,
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`including
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`corroborating documentation. Patent Owner has produced no knowledgeable
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`witness to testify or to be cross-examined as to the purported products described in
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`Exhibit 2014 nor has Patent Owner set forth specifications or other documentation
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`underlying the features of the purported products described in Exhibit 2014.
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`12. Exhibit 2015 (Exhibit 24 to Complaint in In the Matter of Certain
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`Wiper Blades, Inv. No. 337-TA-816 before the U.S. International Trade
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`Commission (claim charts)) is objected to under Fed. R. Evid. 401, 402, 403 for
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`lack of relevance; under Fed. R. Evid. 602, 603 for lack of foundation such as
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`testimony of a witness with personal knowledge; under Fed. R. Evid. 702, 703 and
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`37 C.F.R. § 42.65 for lack of qualified expert testimony and insufficient bases for
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`such testimony; under Fed. R. Evid. 801, 802, 803, 804 as hearsay; under Fed. R.
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`Evid. 901, 902 for lack of authentication; and under Fed. R. Evid. 1002 for lack of
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`best evidence of the purported products described therein, including corroborating
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`documentation. Patent Owner has produced no knowledgeable witness to testify or
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`to be cross-examined as to the purported products described in Exhibit 2015 nor
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`6
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`IPR2016-00041
`PETITIONER’S OBJECTIONS TO EVIDENCE
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`has Patent Owner set forth specifications or other documentation underlying the
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`features of the purported products described in Exhibit 2015.
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`13. Exhibit 2016 (Exhibit 25 to Complaint in In the Matter of Certain
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`Wiper Blades, Inv. No. 337-TA-816 before the U.S. International Trade
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`Commission (claim charts)) is objected to under Fed. R. Evid. 401, 402, 403 for
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`lack of relevance; under Fed. R. Evid. 602, 603 for lack of foundation such as
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`testimony of a witness with personal knowledge; under Fed. R. Evid. 702, 703 and
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`37 C.F.R. § 42.65 for lack of qualified expert testimony and insufficient bases for
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`such testimony; under Fed. R. Evid. 801, 802, 803, 804 as hearsay; under Fed. R.
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`Evid. 901, 902 for lack of authentication; and under Fed. R. Evid. 1002 for lack of
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`best evidence of the purported products described therein, including corroborating
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`documentation. Patent Owner has produced no knowledgeable witness to testify or
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`to be cross-examined as to the purported products described in Exhibit 2016 nor
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`has Patent Owner set forth specifications or other documentation underlying the
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`features of the purported products described in Exhibit 2016.
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`/
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`7
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`IPR2016-00041
`PETITIONER’S OBJECTIONS TO EVIDENCE
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`These objections have been timely made within five business days from the
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`date of service of Patent Owner’s Response.
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`Dated: July 29, 2016
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`Respectfully submitted,
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`/James R. Klaiber/
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`T: (212) 837-6062
`Attorney for Petitioner
`Costco Wholesale Corporation
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`8
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`IPR2016-00041
`PETITIONER’S OBJECTIONS TO EVIDENCE
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`CERTIFICATE OF SERVICE
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`I hereby certify that on Friday, July 29, 2016, the foregoing document was
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`served in its entirety by email on the attorneys of record for Patent Owner:
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`• Patrick R. Colsher (patrick.colsher@shearman.com)
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`• Mark Hannemann (mark.hannemann@shearman.com)
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`/James R. Klaiber/
`Registration No. 41,902
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`71465222
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`9
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