Filed: December 13, 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 MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED ........................ 2
`
`IDENTIFICATION OF PETITIONER’S OBJECTIONS IN
`THE RECORD PURSUANT TO 37 C.F.R. § 42.64(C) ...................... 2
`
`III. REASONS FOR RELIEF SOUGHT ................................................... 4
`
`A.
`
`
`The Former Trial Testimony of Wilfried Merkel is
`Inadmissible Pursuant to Federal Rules of Evidence 801,
`802, and 804 ............................................................................... 4
`
`1.
`
`2.
`
`The Former Trial Testimony of Wilfried Merkel
`Constitutes Inadmissible Hearsay ................................... 6
`
`Patent Owner Cannot Carry Its Burden of
`Establishing Each Element of
`the Former
`Testimony Exception to the Rule Against Hearsay
`Under Federal Rule of Evidence 804(b)(1) .................... 7
`
` Martin Kashnowski’s Testimony B.
`
`Inadmissible
`is
`
`Pursuant to 37 C.F.R. § 42.65(b) and Constitutes
`Inadmissible Hearsay Pursuant to Federal Rules of
`Evidence 801 and 802 .............................................................. 12
`
`1.
`
`2.
`
`Martin Kashnowski’s Testimony Fails to Set
`Forth the Requirements for Relying on Technical
`Tests and Data Which Precludes Patent Owner
`from Relying on his Testimony .................................... 12
`
`Mr. Kashnowski’s Testimony Constitutes
`Inadmissible Hearsay .................................................... 14
`
`IV. CONCLUSION................................................................................... 15
`
`
`
`
`
`i
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Cordance Corp. v. Amazon.com, Inc.,
`639 F. Supp. 2d 406 (D. Del. 2009) ........................................................... 10
`
`Page(s)
`
`Holmquist v. Farm Family Cas. Ins. Co.,
`800 F. Supp. 2d 305 (D. Me. 2011) ............................................................ 10
`
`Kirk v. Raymark Indus., Inc.,
`61 F.3d 147 (3d Cir. 1995) ....................................................................... 8, 9
`
`MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc.,
`731 F.3d 1258 (Fed. Cir. 2013) .................................................................. 11
`
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .................................................................. 11
`
`Robert Bosch LLC v. Pylon Manufacturing Corp.,
`No. 08-542 (D. Del. Apr. 15, 2010).......................................................... 3, 4
`
`Transcraft, Inc. v. Galvin, Stalmack, Kirschner & Clark,
`39 F.3d 812 (7th Cir. 1994) .......................................................................... 6
`
`United States v. Kennard,
`472 F.3d 851 (11th Cir. 2006) ...................................................................... 8
`
`United States v. Omar,
`104 F.3d 519 (1st Cir. 1997) ......................................................................... 8
`
`Statutes and Rules
`
`Federal Rules of Evidence 401, 402, 403 .......................................................... 3
`
`Federal Rules of Evidence 602, 603 .................................................................. 3
`
`Federal Rule of Evidence 611 .......................................................................... 10
`
`Federal Rules of Evidence 702, 703 .................................................................. 3
`
`Federal Rules of Evidence 801, 802, 803, 804 .........................................passim
`
`Federal Rules of Evidence 901, 902 .................................................................. 3
`ii
`
`
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`Federal Rule of Evidence 1002 .......................................................................... 3
`
`Regulations
`
`37 C.F.R. § 42.12 ............................................................................................... 5
`
`37 C.F.R. § 42.51 ........................................................................................... 2, 5
`
`37 C.F.R. § 42.53 ............................................................................................... 2
`
`37 C.F.R. § 42.53(a) ........................................................................................... 5
`
`37 C.F.R. § 42.53(f)(7) ...................................................................................... 5
`
`37 C.F.R. § 42.61(a) ..................................................................................... 5, 14
`
`37 C.F.R. § 42.62 ............................................................................................... 4
`
`37 C.F.R. § 42.64(b)(1) ...................................................................................... 3
`
`37 C.F.R. § 42.64(b)(2) ...................................................................................... 9
`
`37 C.F.R. § 42.64(c) ........................................................................................... 4
`
`37 C.F.R. § 42.65 ............................................................................................... 3
`
`37 C.F.R. § 42.65(b) ........................................................................ 4, 12, 13, 14
`
`37 C.F.R. § 42.104(b)(5) .................................................................................... 5
`
`Legislative and Administrative Proceedings
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`IPR 2015-01979, Paper No. 27 (PTAB Aug. 11, 2016) ............................... 9
`
`Samsung Elecs. Co. v. Unifi Sci. Batteries, LLC,
`IPR2013-00236, Paper No. 10 (PTAB Sept. 25, 2013) ........................ 13, 14
`
`Treatises and Periodical Materials
`
`30 Charles A. Wright & Kenneth W. Graham, Jr.,
`Federal Practice and Procedure § 6325 (1st ed. 1997) ................................. 7
`
`
`
`
`
`iii
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`Costco Wholesale Corporation (“Petitioner”) submits this Motion to Exclude
`
`(i) the former trial testimony of Wilfried Merkel (Ex. 2005 at 338–921), and (ii)
`
`portions of the Declaration of Martin Kashnowski (Ex. 2007) that relate to noise
`
`testing. These exhibits were submitted by Robert Bosch LLC (“Patent Owner”) in
`
`support of its Response to the Petition for inter partes review of U.S. Patent No.
`
`8,099,823 (the “’823 Patent”; Ex. 1001). See Patent Owner Response (the
`
`“Response”) (Paper No. 32) at 14–16 (citing Ex. 2005 at 337:10–23, 346:16–
`
`348:2, 353:22–354:1, 359:12–360:4, 388:23–391:8); id. at 16–17 (citing Ex. 2007
`
`¶ 6).
`
`Patent Owner relies on this testimony in its attempt to overcome Petitioner’s
`
`prima facie showing of obviousness of the ’823 Patent, but these exhibits cannot
`
`form the basis of Patent Owner’s assertions because they are inadmissible. The
`
`direct testimony of Wilfried Merkel (Ex. 2005 at 338–92) cannot be considered by
`
`the Board because Mr. Merkel was never produced for deposition.2 His testimony,
`
`
`1 These page citations reflect the actual page numbers of the transcript and
`
`correspond to pages 210–64 of Patent Owner’s exhibit stamp.
`
`2 Pursuant to an Order of this Board (Paper No. 35), Petitioner previously moved to
`
`strike Mr. Merkel’s testimony because his failure to appear for deposition in
`
`response to Petitioner’s Notice of Deposition (Paper Nos. 34, 36) denied Petitioner
`
`
`
`1
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`which is from a prior district court trial that involved a different defendant and
`
`different issues, also constitutes hearsay. The testimony of Martin Kashnowski
`
`(Ex. 2007 ¶ 6), a fact witness and employee of Patent Owner, regarding Patent
`
`Owner’s internally conducted wiper testing and purported results, is also hearsay
`
`and contravenes the rules because it omits any explanation of this testing. The
`
`portions of Patent Owner’s Response that rely on this testimony should likewise be
`
`excluded from consideration by the Board.
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner requests that the Board grant its Motion to Exclude and that (i)
`
`pages 338–92 of Exhibit 2005, and (ii) the second, third, and fourth sentences of
`
`paragraph 6 of Exhibit 2007 be excluded from the record. Petitioner also requests
`
`that the PTAB exclude or decline to consider portions of the Response that rely on
`
`any evidence the Board excludes as a result of this Motion.
`
`II.
`
`IDENTIFICATION OF PETITIONER’S OBJECTIONS IN THE
`RECORD PURSUANT TO 37 C.F.R. § 42.64(c)
`
`Petitioner timely objected to Exhibits 2005 and 2007. On July 22, 2016
`
`Patent Owner submitted its Response to the Petition, including Exhibits 2005 and
`
`
`the opportunity for cross-examination in accordance with the procedures governing
`
`inter partes review. See generally Petitioner’s Motion to Strike (Paper No. 37); see
`
`also 37 C.F.R. §§ 42.51, 42.53 (governing routine discovery).
`
`
`
`2
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`2007. See Response at iv (Patent Owner’s List of Exhibits). Pursuant to 37 C.F.R.
`
`§ 42.64(b)(1), Petitioner filed objections to evidence on July 29, 2016, within five
`
`business days of being served with Patent Owner’s evidence. See Petitioner’s
`
`Objections to Evidence (the “Objections”) (Paper No. 33). Petitioner made the
`
`following objections to Exhibit 2005 (id. at 3):
`
`Exhibit 2005 (April 15, 2010 Trial Transcript from Robert Bosch LLC
`v. Pylon Manufacturing Corp. in the District of Delaware, Case No.
`08-542 (SLR)) is objected to under Fed. R. Evid. 401, 402, 403 for
`lack of relevance; under Fed. R. Evid. 602, 603 for lack of foundation
`as to matters discussed therein; under Fed. R. Evid. 702, 703 and 37
`C.F.R. § 42.65 for lack of qualified expert testimony and insufficient
`bases for such testimony; under Fed. R. Evid. 801, 802, 803, 804 as
`hearsay; under Fed. R. Evid. 901, 902 for lack of authentication, and
`under Fed. R. Evid. 1002 for lack of best evidence, including
`corroborating documentation. Patent Owner has produced no
`knowledgeable witness to testify in this proceeding or to be cross-
`examined as to these statements. Exhibit 2005 is also objected to
`insofar as it cites or refers to other objectionable exhibits and
`testimony.
`Petitioner also objected to Exhibit 2007 for the following reasons (id. at 4):
`
`Exhibit 2007 (Declaration of Martin Kashnowski) is objected to under
`Fed. R. Evid. 401, 402, 403 for lack of relevance; under Fed. R. Evid.
`602, 603 for lack of foundation as to matters discussed therein; under
`Fed. R. Evid. 702, 703 and 37 C.F.R. § 42.65 for lack of qualified
`
`
`
`3
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`expert testimony and insufficient bases for such testimony; and under
`Fed. R. Evid. 801, 802, 803, 804 as hearsay. Exhibit 2007 is also
`objected to insofar as it cites or refers to other objectionable exhibits
`and testimony.
`Finally, Petitioner objected to “Patent Owner’s Response to the extent it relies on
`
`or otherwise cites Exhibits . . . 2005 . . . [and] 2007 . . . for the reasons set forth” in
`
`Petitioner’s Objections. Id. at 2.
`
`Pursuant to 37 C.F.R. § 42.64(c) and the Board’s Scheduling Order (Paper
`
`No. 21), Petitioner now seeks to exclude pages 338–92 of Exhibit 2005 pursuant to
`
`Federal Rules of Evidence 801, 802, and 804, and to exclude portions of Exhibit
`
`2007 pursuant to 37 C.F.R. § 42.65(b) as well as Federal Rules of Evidence 801
`
`and 802. Petitioner’s explanations for these objections follow.
`
`III. REASONS FOR RELIEF SOUGHT
`The Federal Rules of Evidence govern the admissibility of evidence in this
`
`proceeding. See 37 C.F.R. § 42.62.
`
`
` The Former Trial Testimony of Wilfried Merkel is Inadmissible A.
`Pursuant to Federal Rules of Evidence 801, 802, and 804
`
`Patent Owner submitted approximately fifty-four pages of Wilfried Merkel’s
`
`direct trial testimony from Robert Bosch LLC v. Pylon Manufacturing Corp., No.
`
`08-542 (D. Del. Apr. 15, 2010) (the “Pylon Proceeding”). See Ex. 2005 at 338–92.
`
`But having “produced no knowledgeable witness to testify in this proceeding or to
`
`be cross-examined as to these statements” (Objections at 3) and having failed to
`4
`
`
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`adhere to the procedural rules, Patent Owner deprived Petitioner of the testimony it
`
`is entitled to. See generally Petitioner’s Motion to Strike (Paper No. 37) (moving to
`
`strike the former trial testimony of Wilfried Merkel because Patent Owner failed to
`
`produce him for deposition); see also 37 C.F.R. §§ 42.51, 42.53 (governing routine
`
`discovery).
`
`The Board does not even have the power to review this exhibit because it is
`
`neither an “affidavit” nor a “deposition transcript.” 37 C.F.R. § 42.53(a); see also
`
`37 C.F.R. § 42.61(a) (“Evidence that is not taken, sought, or filed in accordance
`
`with this subpart is not admissible.”). And even by analogy, if it were considered
`
`comparable to deposition testimony, it would also be improper because Patent
`
`Owner did not submit
`
`the cross-examination
`
`transcript. See 37 C.F.R.
`
`§ 42.53(f)(7) (“The [deposition] testimony must be filed as an exhibit.”). In fact,
`
`Patent Owner did not just omit Mr. Merkel’s cross-examination, it selectively
`
`introduced his direct examination, omitting a portion of direct, and any redirect.
`
`See Ex. 2005 at 392:2–393:10. Patent Owner has flouted the inter partes review
`
`procedures, and the Board has discretion to decline to consider this evidence. See
`
`37 C.F.R. § 42.12; 37 C.F.R. § 42.104(b)(5).
`
`Even if the Board was not precluded from reviewing Mr. Merkel’s former
`
`trial testimony at the outset, for the reasons that follow, the transcript constitutes
`
`inadmissible hearsay and should be excluded.
`
`
`
`5
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`1.
`
`The Former Trial Testimony of Wilfried Merkel
`Constitutes Inadmissible Hearsay
`
`The former trial testimony of Wilfried Merkel is a “statement” that Mr.
`
`Merkel did not “make while testifying at the current trial or hearing” and is being
`
`offered by Patent Owner “in evidence to prove the truth of the matter asserted.”
`
`Fed. R. Evid. 801(c) (defining hearsay); see also Transcraft, Inc. v. Galvin,
`
`Stalmack, Kirschner & Clark, 39 F.3d 812, 818 (7th Cir. 1994) (“A trial transcript
`
`is hearsay . . . if offered to prove the truth of testimony presented at the trial.”). In
`
`particular, Patent Owner has sought to establish secondary considerations of non-
`
`obviousness based in part on the factual assertions of Mr. Merkel. See, e.g.,
`
`Response at 14–16 (citing Ex. 2005 at 337:10–23, 346:16–348:2, 353:22–354:1,
`
`359:12–360:4, 388:23–391:8).
`
`For example, in its Response, Patent Owner cited Mr. Merkel’s testimony
`
`for the proposition that “[a]dding structures to a sensitive beam blade, especially
`
`structures that raise the profile, would not have been expected to work and would
`
`have been expected to cause lift-off problems.” Response at 16 (citing Ex. 2005 at
`
`388:23–391:8). But, as Petitioner has previously discussed in detail, the ’823
`
`Patent’s own disclosure belies this testimony; by its own admission, the prior art to
`
`the ’823 Patent includes a flat-spring wiper having a spoiler fastened directly to the
`
`spring support element. See, e.g., Petitioner’s Reply in Support of the Petition (the
`
`
`
`6
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`“Reply”) (Paper No. 38) at 3, 6–7 (citing the ’823 Patent); see also ’823 Patent at
`
`1:47–61 (citing DE 19736368 [Ex. 1011, p. 2793] as prior art). Petitioner is
`
`fortunate, in this instance, that the ’823 Patent itself undermines the evidentiary
`
`value of Mr. Merkel’s statements, but such obvious inconsistencies are not
`
`guaranteed to be present in the record. Without the opportunity for cross-
`
`examination, Petitioner is at a severe disadvantage. See 30 Charles A. Wright &
`
`Kenneth W. Graham, Jr., Federal Practice and Procedure § 6325 (1st ed. 1997)
`
`(citation omitted) (“[T]he hearsay rule, as accepted in our law, signifies a rule
`
`rejecting assertions, offered testimonially, which have not in some way been
`
`subjected to the test of cross-examination.”).
`
`2.
`
`Patent Owner Cannot Carry Its Burden of Establishing
`Each Element of the Former Testimony Exception to the
`Rule Against Hearsay Under Federal Rule of Evidence
`804(b)(1)
`
`Patent Owner has suggested that this testimony is admissible pursuant to the
`
`hearsay exception in Federal Rule of Evidence 804(b)(1). See Patent Owner’s
`
`Opposition to Motion to Strike (Paper No. 40) at 1–3. To be eligible for this
`
`exception, the former testimony must be offered against a party, or a party’s
`
`predecessor in interest, who had “an opportunity and similar motive to develop it
`
`
`3 Petitioner submitted the English language counterpart, U.S. Patent No. 6,292,974
`
`(the “’974 Patent”), as Exhibit 1105. See Reply at 3 & n.4.
`
`
`
`7
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`by . . . cross.” Fed. R. Evid. 804(b)(1). Patent Owner, as the proponent of former
`
`testimony, bears “the burden of establishing that [the transcript] came within the
`
`former testimony hearsay exception.” United States v. Kennard, 472 F.3d 851, 856
`
`(11th Cir. 2006) (citation omitted); see also, e.g., United States v. Omar, 104 F.3d
`
`519, 522 (1st Cir. 1997) (“And, the evidence in question being hearsay, it was the
`
`defendants’ burden to prove each element of the [804(b)(1)] exception they
`
`invoked.”).
`
`Here, where Patent Owner has not submitted the transcript of Mr. Merkel’s
`
`cross-examination, it cannot carry its burden of proving that Pylon had an
`
`opportunity and similar motive as Petitioner in this proceeding to develop the
`
`testimony on cross-examination. See, e.g., Kirk v. Raymark Indus., Inc., 61 F.3d
`
`147, 166 & n.25 (3d Cir. 1995) (“The district court did not have the complaint,
`
`answer, or jury charge from the state court proceedings. Thus, even if the district
`
`court had attempted to make a finding as to opportunity and similar motive, it
`
`would have been unable to reach a well-reasoned conclusion based on the
`
`information before the district court.”); see also Kennard, 472 F.3d at 856 (finding
`
`proponents of former testimony did not carry their burden of establishing
`
`admissibility on the record). On the present record, there is no evidence on which
`
`the Board could find that Pylon’s cross-examination of Mr. Merkel “is the rough
`
`equivalent” of what Costco’s cross-examination would be “if the witness were
`
`
`
`8
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`available to be examined” in this proceeding. Kirk, 61 F.3d at 166.
`
`Patent Owner is precluded, at this late date, from supplementing the record
`
`and making up for its deficient showing. Following the service of Petitioner’s
`
`Objections, Patent Owner had the option of “respond[ing] to the objection[s] by
`
`serving supplemental evidence within ten business days.” 37 C.F.R. § 42.64(b)(2).
`
`The Board has explained this procedure specifically contemplated by the rules:
`
`This process allows the party relying on evidence to which an
`objection is timely served the opportunity to overcome the objection.
`If, upon receiving the supplemental evidence, the opposing party is
`still of the opinion that the evidence of record is inadmissible, the
`opposing party may file a motion to exclude such evidence. . . . We do
`not allow supplemental evidence to be filed at the time of service
`because the supplemental evidence, which is not evidence of record,
`may obviate an objection. Should the objecting party file a Motion to
`Exclude, the party who served the supplemental evidence may file the
`supplemental evidence with an Opposition to the Motion.
`Palo Alto Networks, Inc. v. Finjan, Inc., IPR 2015-01979, Paper No. 27, at 2
`
`(PTAB Aug. 11, 2016) (citation omitted). The deadline for Patent Owner to submit
`
`supplemental evidence passed on August 12, 2016.
`
`Furthermore, based on the limited record that is before the Board, Mr.
`
`Merkel’s former testimony would not be entitled to the Rule 804(b)(1) exception
`
`because there is not “sufficient identity of issues to ensure that cross examination
`
`
`
`9
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`in the former case was directed to the issues presently relevant,” as there must be
`
`where, as here, “the parties in the two proceedings differ.” Holmquist v. Farm
`
`Family Cas. Ins. Co., 800 F. Supp. 2d 305, 310 (D. Me. 2011) (citation omitted).
`
`For example, Mr. Merkel’s testimony fails to mention a single prior art
`
`reference at issue in this proceeding, namely Prohaska (Ex. 1005), Appel (Ex.
`
`1006), Hoyler (Ex. 1007), Kotlarski ’383 (Ex. 1003), Merkel (Ex. 1008), Kotlarski
`
`’090 (Ex. 1020), and Mathues (Ex. 1019). Pylon could not, then, have questioned
`
`Mr. Merkel regarding the instituted grounds of the present inter partes review
`
`because such questioning would have exceeded the scope of direct. See Fed. R.
`
`Evid. 611(b) (“Cross-examination should not go beyond the subject matter of the
`
`direct examination and matters affecting the witness’s credibility.”). Here,
`
`however, argument and evidence is expressly limited to the instituted grounds (see
`
`Institution Decision (Paper No. 20) (the “Decision”) at 18–19 (“[N]o ground other
`
`than those specifically proved above is authorized.”)), and Petitioner’s motive has
`
`always been to develop invalidity on these bases.
`
`Even more fundamentally, the ’823 Patent, at issue in this proceeding, was
`
`not part of the Pylon Proceeding (see Ex. 2005 at 149:24–150:7), so Pylon’s
`
`motive to establish its invalidity was non-existent. See Cordance Corp. v.
`
`Amazon.com, Inc., 639 F. Supp. 2d 406, 431–32 (D. Del. 2009) (prior testimony
`
`did not fall within the Federal Rule of Evidence 804(b)(1) exception where “[t]he
`
`
`
`10
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`Barnesandnoble.com matter addressed whether Amazon’s ’411 patent was valid;
`
`the issue in the current litigation is whether Cordance’s ’710 patent is valid”). All
`
`of the inquiries relevant to this proceeding (obviousness and secondary
`
`considerations) are specific to the claimed subject matter, and cannot be
`
`generalized. See, e.g., MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc.,
`
`731 F.3d 1258, 1264 (Fed. Cir. 2013) (“Obviousness, like other grounds of
`
`invalidity, must be analyzed on a claim-by-claim basis.”); Ormco Corp. v. Align
`
`Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006) (“Evidence of commercial
`
`success, or other secondary considerations, is only significant if there is a nexus
`
`between the claimed invention and the commercial success.”). None of the
`
`testimony Pylon would have elicited would support the arguments Petitioner has
`
`maintained, specifically that challenged claims 1, 6, 9, and 10 of the ’823 Patent
`
`are obvious and that Patent Owner has failed to prove a nexus between any
`
`purported secondary indicia of nonobviousness and the claimed subject matter.
`
`Accordingly, there is insufficient evidence on the present record for Patent
`
`Owner to carry its burden of establishing that Mr. Merkel’s former testimony is
`
`admissible, and based on the limited evidence of record, Pylon did not have an
`
`opportunity or similar motive as Petitioner to cross-examine Mr. Merkel.
`
`
`
`11
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
` Martin Kashnowski’s Testimony is Inadmissible Pursuant to 37 B.
`C.F.R. § 42.65(b) and Constitutes Inadmissible Hearsay Pursuant
`to Federal Rules of Evidence 801 and 802
`
`In a further effort to rebut Petitioner’s showing of obviousness of the ’823
`
`Patent, Patent Owner also relies on the hearsay testimony of Martin Kashnowski in
`
`violation of 37 C.F.R. § 42.65(b). See Response at 16–17 (citing Ex. 2007 ¶ 6). Mr.
`
`Kashnowski, a fact witness and employee of Patent Owner, testified that “Bosch
`
`tested [two of its commercial] products extensively before releasing them,” “[o]ne
`
`aspect tested was noise,” and “[t]he Bosch beam blades were quiet in operation,”
`
`which was “part of the reason for the great customer demand.” Ex. 2007 ¶ 6. While
`
`this testimony substantively does not support the nonobviousness of the claimed
`
`subject matter of the ’823 Patent because the ’823 Patent has nothing to do with
`
`wiper noise (see Reply at 20 (citing Ex. 1100 ¶¶ 25–26)) and there is no evidence
`
`on this record that Patent Owner’s commercial wiper products embody the
`
`challenged claims of the ’823 Patent (see Reply at 19), it is also inadmissible.
`
`1. Martin Kashnowski’s Testimony Fails to Set Forth the
`Requirements for Relying on Technical Tests and Data
`Which Precludes Patent Owner from Relying on his
`Testimony
`
`In support of its argument that the alleged success of two of its commercial
`
`products renders the ’823 Patent nonobvious, Patent Owner relies on the purported
`
`“extensive[]” testing described in Mr. Kashnowski’s declaration. See Response at
`
`16–17 (citing Ex. 2007 ¶ 6). But in order to “rel[y] on a technical test or data from
`12
`
`
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`such a test,” Patent Owner should have provided an “affidavit explaining” the
`
`surrounding circumstances of the test, including, inter alia, “[h]ow the test was
`
`performed and the data was generated”; “[h]ow the data is used to determine a
`
`value”; and “[h]ow the test is regarded in the relevant art.” 37 C.F.R. § 42.65(b).
`
`Mr. Kashnowski provides none of the information required by § 42.65(b).
`
`Neither Patent Owner nor Mr. Kashnowski explain: (i) what test was performed
`
`(e.g., whether in a wind tunnel or anechoic chamber); (ii) the format of the results
`
`(e.g., whether the test was objective or subjective); (iii) how the data supports the
`
`conclusion that the blades were “quiet in operation” (e.g., that the volume did not
`
`exceed a certain decibel limit); or (iv) the importance of such testing in the
`
`industry (e.g., that the test comported with a specific industry standard). Compare
`
`Ex. 2007 ¶ 6, with Ex. 1100 (Peck Decl.) ¶¶ 18–23 (describing various testing and
`
`factors that contribute to wiper noise).
`
`Because Mr. Kashnowski’s declaration does not “provide any detail
`
`regarding the specific tests it purports to have conducted,” it fails to satisfy
`
`§ 42.65(b). Samsung Elecs. Co. v. Unifi Sci. Batteries, LLC, IPR2013-00236, Paper
`
`No. 10, at 17 (PTAB Sept. 25, 2013). In Samsung, the Board faulted the patent
`
`owner for failing to “provide any detail regarding the specific tests it purports to
`
`have conducted using the simulation software,” and noted that should the patent
`
`owner rely on this information in the future, it must be accompanied by a
`
`
`
`13
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`“supporting affidavit.” Id. at 17, 18 n.7 (citing 37 C.F.R. § 42.65(b)). Here too, Mr.
`
`Kashnowski’s conclusory assertions regarding technical testing should have been
`
`accompanied by a “supporting affidavit” if Patent Owner intended to rely on them.
`
`Because Mr. Kashnowski’s testimony was not “filed in accordance with” the
`
`governing rules, namely § 42.65(b), it is “not admissible” and should be excluded.
`
`37 C.F.R. § 42.61(a). Without a supporting affidavit pursuant to § 42.65(b), Patent
`
`Owner should be precluded from relying on the wiper tests and data.
`
`2. Mr. Kashnowski’s Testimony Constitutes Inadmissible
`Hearsay
`
`Mr. Kashnowski’s testimony regarding wiper testing and consumer demand
`
`in paragraph 6 of his declaration constitutes inadmissible hearsay because it
`
`conveys “a statement” made by a declarant who is not “testifying at the current
`
`trial or hearing,” and it is offered by Patent Owner “in evidence to prove the truth
`
`of the matter asserted in the statement.” Fed. R. Evid. 801(c). In particular, Mr.
`
`Kashnowski’s indication that “Bosch tested [two of its commercial] products
`
`extensively before releasing them,” (Ex. 2007 ¶ 6 (emphasis added)) does not
`
`establish that Mr. Kashnowski actually observed or played any role in the alleged
`
`noise testing.
`
`Without this foundation, the most generous conclusion is that someone at
`
`Bosch communicated the fact of this testing, and its purported results, to Mr.
`
`
`
`14
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`Kashnowski. Petitioner has no ability to cross-examine this declarant to test the
`
`reliability of these statements—for all Petitioner knows, the “quiet” operation
`
`could reflect grossly exaggerated puffery that was provided to Mr. Kashnowski in
`
`a marketing effort to increase sales. Neither the Board nor Petitioner can have any
`
`assurances of the reliability of this out-of-court statement.
`
`IV. CONCLUSION
`For the foregoing reasons, the direct trial testimony of Wilfried Merkel (Ex.
`
`2005 at 338–92), the second, third, and fourth sentences of paragraph 6 of the
`
`Declaration of Martin Kashnowski (Ex. 2007), and the corresponding portions of
`
`the Response are inadmissible and should be excluded.
`
`
`
`Dated: December 13, 2016
`
`Respectfully Submitted,
`
`/Stefanie M. Lopatkin/
`Stefanie M. Lopatkin
`Registration No. 74,312
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004
`Stefanie.lopatkin@hugheshubbard.com
`(212) 837-6393
`Attorney for Petitioner
`Costco Wholesale Corporation
`
`15
`
`
`
`
`
`

`
`IPR2016-00041
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 13th day of December, 2016, the foregoing
`
`Petitioner’s Motion to Exclude Evidence Pursuant to 37 C.F.R. § 42.64 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)
`
`Joseph Purcell (joseph.purcell@shearman.com)
`
`/Stefanie M. Lopatkin/
`Stefanie M. Lopatkin
`Registration No. 74,312
`
`
`
`74557713
`
`1