UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. COSTCO WHOLESALE CORPORATION, Petitioner,

Transcription

1 Filed: December 23, 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 IPR Patent 7,484,264 PETITIONER S OPPOSITION TO PATENT OWNER S MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R

2 PETITIONER S MOTION TO EXCLUDE EVIDENCE TABLE OF CONTENTS I. DAVID PECK IS QUALIFIED TO GIVE TECHNICAL EXPERT OPINIONS REGARDING THE STATE OF THE ART AND THE SKILL LEVEL IN THE ART AT THE TIME OF THE CLAIMED INVENTION... 1 II. DAVID PECK IS QUALIFIED TO PROVIDE OPINIONS BASED ON HIS PERSONAL OBSERVATIONS III. CONCLUSION i

3 TABLE OF AUTHORITIES Cases Page(s) Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7713, 2006 WL (N.D. Ill. Dec. 14, 2006)... 6 In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040 (Fed. Cir. 1997)... 6, 7 Mytee Prod., Inc. v. Harris Research, Inc., 439 F. App x 882 (Fed. Cir. 2011)... 5 In re Oelrich, 579 F.2d 86 (CCPA 1978) Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001) S.E.B. S.A. v. Montgomery Ward & Co., 594 F.3d 1360 (Fed. Cir. 2010)... 7 Teva Neuroscience, Inc. v. Watson Pharma, Inc., No. CIV.A CCC, 2013 WL (D.N.J. May 10, 2013)... 6, 7, 8 Traxys N. Am., LLC v. Concept Mining, Inc., 808 F. Supp. 2d 851 (W.D. Va. 2011)... 4, 12 United States v. Farmer, 543 F.3d 363 (7th Cir. 2008) Zoltek Corp. v. United States, 95 Fed. Cl. 681 (2010)... 4, 5 ii

4 TABLE OF AUTHORITIES Statutes and Rules Page(s) Fed. R. Evid Fed. R. Evid , 7, 10 Fed. R. Evid , 12 Legislative and Administrative Proceedings CaptionCall, LLC v. Ultratec, Inc., IPR , Paper No. 78 (PTAB Mar. 3, 2015)... 7 Primera Technology, Inc. v. Automatic Manufacturing Systems, Inc., IPR , Paper No. 52 (PTAB Aug. 29, 2014)... 9 U.S. Endoscopy Grp., Inc. v. CDX Diagnostics, Inc., IPR , Paper No. 27 (PTAB Sept. 14, 2015)... 6 iii

5 Costco Wholesale Corporation ( Petitioner ) hereby opposes the motion (Paper No. 49; the Motion ) of Robert Bosch LLC ( Patent Owner ) to exclude the following evidence submitted by Petitioner in support of the unpatentability of U.S. Patent No. 7,484,264 (the 264 Patent ; Ex. 1001): Paragraphs 7, 9 11, 15, 18, 19, 21, and of the Declaration of David Peck (Ex. 1100). Patent Owner s assertions regarding David Peck s qualifications are factually insupportable and legally erroneous. I. DAVID PECK IS QUALIFIED TO GIVE TECHNICAL EXPERT OPINIONS REGARDING THE STATE OF THE ART AND THE SKILL LEVEL IN THE ART AT THE TIME OF THE CLAIMED INVENTION Patent Owner wrongly asserts that Petitioner has made no showing that [Mr. Peck] has ever been a wiper-blade designer. Motion at 3. To the contrary, the evidence of record establishes Mr. Peck s extensive experience in this field. Mr. Peck received a Bachelor of Science in mechanical engineering and has held various automotive engineering roles throughout his career, including Chief Engineer of Applied Research at Rockwell International, Automotive Operations. See Ex. 1100, App x A (curriculum vitae of David E. Peck) at pp In 1997, Mr. Peck began his employment at Trico Products, Inc. ( Trico ) where he held the title of Manager of Advanced Products and Processes Research and Development. Ex In this role, he became familiar with the 1

6 windshield wiper product design and development process and personally participated in the design and development of Trico s Innovision aftermarket wiper blade, a commercial flat-spring wiper sold by Trico. Ex , 14. In developing this flat-spring wiper for commercial production, Mr. Peck became well-versed in the numerous factors that contribute to a windshield wiper s commercial success. See, e.g., Ex (Peck Tr.) at 37:18 22, 71:8 21 (aerodynamics); id. at 24:22 25:6, 55:19 56:22, 97:15 21, 108:22 110:4 (aesthetics); id. at 40:20 42:7, 89:25 94:20 (conforming curvature to windshield); id. at 24:16 21 (consumer safety); id. at 42:18 43:15, 52:7 53:2 (means of connection); id. at 62:11 16; 107:13 108:20 (climate accommodation); id. at 20:12 21:18, 80:7 24 (material selection); id. at 35:20 36:23, 85:14 86:16 (product simulation and finite element analysis ( FEA )); see also Ex at 4 n.1 (listing examples of Trico s internal wiper requirements). Mr. Peck currently holds the position of Advanced Technology Subject Matter Expert at Mahindra North American Technical Center, where he works with windshield wipers as the most experienced employee on staff. Ex. 1100, App x A at p. 15; Ex at 15:9 13. His wiper-related responsibilities in this role include helping to make sure all the testing [is] done correctly. Ex at 16: All of this experience, as set forth more fully in his curriculum vitae (Ex. 2

7 1100, App x A), plainly qualifies Mr. Peck as an expert by knowledge, skill, experience, training, or education on the subjects of wiper design and testing, such that he may testify in the form of an opinion. Fed. R. Evid For example, Mr. Peck s testimony that [w]iper noise during general operation is a function of many technical factors (Ex ) finds a foundation in his role developing the Trico Innovision wiper and in his current role where he has been instrumental in reaching an agreement with a supplier on what testing and what requirements would be needed for meeting the wiper requirements for making a successful wiper. Ex at 16: Likewise, his position at Rockwell, where the FEA group reported to him from 1986 until 1995 (see Ex at 84:24 85:9), qualifies him to testify that mechanical engineers were capable of performing FEA long prior to 1997 (Ex ). His qualifications cannot reasonably be disputed. Contrary to Patent Owner s suggestion, Mr. Peck s experience designing production equipment to manufacture wiper components renders him more not less qualified to provide expert testimony on the design process. This work involved tailoring the production equipment to the precise wiper design specifications and verifying that the manufactured wiper performed as intended. For example, Mr. Peck explained (Ex at 46:7 47:24): Q So going back to the beam blade, when you were designing the 3

8 manufacturing equipment, how did you know exactly what it was your manufacturing equipment was supposed to be manufacturing?... [A] Well, the tapered rolling mill had to meet a specific thickness gradient. And so the goal was VariFlex tells us, this is the gradient you must have. This thickness at this width. We had to make sure that the thickness would meet a very tight specification and it was repeatable.... So we had to make sure that we could match not only the thickness gradient -- and then the same thing, we had to match the width that was required. And we had to make sure that the width variation and the thickness variation were at the same place where they were supposed to be. So that was part of it. And then, of course, as I mentioned earlier, we had to verify that, in fact, the force intensity was what VariFlex predicted. And we had to verify that when put on a glass per the conformance that he determined, that it would wipe effectively, so that was more verification of the VariFlex. By iteratively improving wiper production machinery and verifying the performance of the manufactured wipers, it would be nearly impossible not to gain an intimate understanding of wiper design. Regardless, Patent Owner s argument still misses the point. An expert need not have worked in precisely the same field as the subject matter in question to give credible evidence as to the knowledge and level of skill in the relevant art. Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR , Paper No. 8, at 29 n.13 (PTAB Mar. 21, 2014); see also Zoltek Corp. v. United States, 95 4

9 Fed. Cl. 681, 685 (2010) (internal quotation marks and citations omitted) ( [I]f an expert is qualified to testify about a subject generally and has had training in the subject matter at issue, then the expert may offer an opinion. ). In Zoltek, for example, plaintiff argued that the government s proffered expert was unqualified. The government demonstrated that the expert had extensive education and professional experience in the areas of carbon fiber and carbon composite materials, but plaintiff nonetheless objected to this testimony because of the absence of any work involving the electrical properties of carbon fibers. Zoltek, 95 Fed. Cl. at 685. The court rejected this argument and held that [r]egardless of Dr. Sullivan s experience with electrical properties of carbon fibers, his substantial experience with carbon fibers establishes his qualification to serve as an expert in this case. Id.; see also Mytee Prod., Inc. v. Harris Research, Inc., 439 F. App x 882, (Fed. Cir. 2011) (affirming district court decision to admit expert testimony notwithstanding his lack of experience in carpet cleaning because his experience with mechanical devices would provide relevant technical expertise in the pertinent art ). Here too, Mr. Peck s substantial experience with wipers in general establishes his qualification to serve as an expert in this case. Zoltek, 95 Fed. Cl. at 685. Patent Owner also argues that Mr. Peck is unqualified because he had no experience designing beam-style wiper blades with spoilers at the time of the 5

10 invention. Motion at 3. But this is irrelevant. An expert must be qualified to testify about what a person with ordinary skill in the art must have understood at the time of the invention, but the expert s knowledge of that may have come later. Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7713, 2006 WL , at *1 (N.D. Ill. Dec. 14, 2006) (emphasis added); see also U.S. Endoscopy Grp., Inc. v. CDX Diagnostics, Inc., IPR , Paper No. 27, at 18 (PTAB Sept. 14, 2015) ( A witness must provide testimony about the level of skill in the art as of the critical date; however, the witness need not have acquired that knowledge as of the critical date. ). Following the lead of many district courts, the Board should reject[] the remarkable proposition that only those who were skilled in the art at the time of the invention may be qualified to offer opinions on the issue of obviousness. Teva Neuroscience, Inc. v. Watson Pharma, Inc., No. CIV.A CCC, 2013 WL , at *4 (D.N.J. May 10, 2013) (citation omitted) (compiling cases). By taking the position that to qualify as an expert, Mr. Peck must have had experience designing flat-spring wipers with spoilers at the time of the claimed invention (Motion at 3), Patent Owner essentially argues that being a person of ordinary skill as of the critical date is a prerequisite to expert testimony. Of course that objection is meritless. Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (rejecting attack on proffered 6

11 expert as unqualified because he was not a person of ordinary skill in the art); see also CaptionCall, LLC v. Ultratec, Inc., IPR , Paper No. 78 at 13 (PTAB Mar. 3, 2015) (citation omitted) ( Patent Owner s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather qualified in the pertinent art. ). [T]he relevant inquiry regarding whether an expert should be allowed to provide testimony at trial is not whether she is a [person of ordinary skill in the art], but instead is grounded in whether the expert s knowledge, skill, experience, training [and] education... [i]s likely to assist the trier of fact to understand the evidence. Teva Neuroscience, 2013 WL , at *4 (quoting S.E.B. S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). Patent Owner has not addressed this inquiry. In Endress + Hauser, the Federal Circuit explained the reasoning behind this well-settled rule: The person of ordinary skill in the art is a theoretical construct used in determining obviousness under 103, and is not descriptive of some particular individual. To suggest that the construct applies to particular individuals could mean that a person of exceptional skill in the art would be disqualified from testifying as an expert because not ordinary enough. Endress + Hauser, 122 F.3d at 1042 (citations omitted). Even assuming, for 7

12 purposes of argument, that Mr. Peck had little to no experience in designing beam-style wiper blades at the time of the invention as Patent Owner asserts (Motion at 3), his education and extensive wiper-related experience, both before and after the date of the claimed invention, qualify him to testify regarding the state of the art and the skill level in the art as of the time the claimed invention was made. His mechanical engineering-related experience with FEA and beam equations can assist the trier of fact [in] understand[ing] the evidence. Teva Neuroscience, 2013 WL , at *4. Insofar as Patent Owner faults Mr. Peck for not setting forth an express understanding of who a person of ordinary skill is in the context of this patent (Motion at 2), this is irrelevant. Although the law does not require it, under Patent Owner s own definition of skill level, Mr. Peck was qualified as such a person at the relevant time. According to Patent Owner and its expert, [a] person of ordinary skill in the art at the time of the invention of the 264 patent ( POSITA ) would have had either an undergraduate degree in mechanical engineering or similar discipline, or several years of experience in the field of wiper blade manufacture and design. Patent Owner Response (Paper No. 28) (the Response ) at 1 (citing Ex ). Mr. Peck had an undergraduate degree in mechanical engineering prior to April 2001 and he also had several years of experience in the field of wiper blade manufacture and design. See Ex. 1100, 8

13 App x A at p. 15. Not only did Mr. Peck have the requisite skill set at the relevant time, he makes very clear in his declaration that his testimony reflects the state of the art [b]y no later than See Ex ; see also, e.g., id (describing the wiper design process that took place at Trico [b]y no later than 1997 ). In fact, after discussing various sources of wiper noise, Mr. Peck concludes that prior to 1997, a person with my experience would have understood how to design a wiper that is quiet in operation based on the factors that were known to influence wiper noise. Id. 26. The combination of Mr. Peck s qualifications and the express timeframe limitation he imposes renders inescapable the conclusion that his testimony is directed to what [a person of ordinary skill] would have known and understood (Motion at 2). Patent Owner s suggestion to the contrary cannot withstand scrutiny without undermining its own expert s evaluation of skill level in the art of the 264 Patent (Ex ). Unsurprisingly, Patent Owner cites to no authority in support of its contention that an expert must provide a particular skill level definition. See Motion at 2. Where the prior art references of record establish the skill level, as they do here, it is unnecessary for a witness or even a party to expressly identify a skill level. In Primera Technology, Inc. v. Automatic Manufacturing Systems, Inc., IPR , Paper No. 52 (PTAB Aug. 29, 2014), for example, 9

14 the Board was not persuaded by Patent Owner s argument that because Petitioner did not state affirmatively the level of ordinary skill in the art, the evidence was insufficient to establish obviousness. Id. at 8. The Board explained: We relied on the evidence presented in the record, which includes the testimony of Patent Owner s declarant and the references themselves. As stated in our Decision, the level of ordinary skill in the art usually is evidenced by the references themselves. Id. at 8 9 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). In this proceeding, Petitioner has set forth in detail why the prior art of record reflects the skill level in the art of the 264 Patent. See Petition (Paper No. 1) at 21 22; Ex (Davis Decl.) 15 16; Reply in Support of Petition (Paper No. 34) (the Reply ) at 2 5. In these circumstances, the Board would be fully capable of assigning Mr. Peck s testimony the appropriate weight in light of the level of skill in the art that Petitioner has set forth. Accordingly, under Federal Rule of Evidence 702, Mr. Peck is qualified to provide the technical expert opinions in his declaration regarding the state of the art. 10

15 II. DAVID PECK IS QUALIFIED TO PROVIDE OPINIONS BASED ON HIS PERSONAL OBSERVATIONS Patent Owner s argument that Mr. Peck is unqualified to provide expert testimony regarding financial, marketing, or consumer demand issues (Motion at 5) ignores the foundation for this testimony in Mr. Peck s own personal knowledge and observations. Federal Rule of Evidence 703 unambiguously states: [a]n expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed. Id. (emphasis added). In the first instance, it is not entirely clear what financial or marketing testimony Patent Owner is referring to. 1 The one specific substantive example that Patent Owner did provide Mr. Peck s opinion that Trico s Innovision wiper blade was a commercial success (Motion at 5) is plainly grounded in Mr. Peck s personal observations during his tenure at Trico. Mr. Peck does not purport to, for instance, analyze sales or market share data in order to support his opinion that the Trico Innovision enjoyed success; 2 instead, his opinion is based on Trico s inability 1 Patent Owner has indicated that this objection applies only to paragraphs 15, 18, and 21 of Exhibit 1100 (Motion at 6), but none of these paragraphs purport to characterize or otherwise provide an opinion about financ[es] or marketing. 2 Indeed, no expert that Petitioner could proffer would be able to do this because Patent Owner provided no such information to analyze; Patent Owner s assertions 11

16 to meet supply demands and its resulting increase in manufacturing capacity. See Ex Having worked at Trico at this time in a senior role, Mr. Peck s opinion that [i]n my experience, demand this high constitutes a success (id.) is well-founded and falls squarely within the meaning of Federal Rule of Evidence 703. Not one of the cases cited by Patent Owner involves an expert who testified based on his or her own personal observations. See Motion at 5 6. Moreover, Mr. Peck is also permitted to provide an opinion as a fact witness if the opinion is rationally based on the witness s perception. Fed. R. Evid It is well-established that [t]estimony in the dual roles of both a fact witness and an expert witness... is permissible provided that the district court takes precautions to minimize potential prejudice. United States v. Farmer, 543 F.3d 363, 370 (7th Cir. 2008). Here, where there are no concerns of confusing the jury, [t]he gatekeeping function of the court is relaxed... because the court is better equipped than a jury to weigh the probative value of expert evidence. Traxys N. Am., LLC v. Concept Mining, Inc., 808 F. Supp. 2d 851, 853 (W.D. Va. 2011). Whether the Board believes this testimony is within the scope of Mr. Peck s regarding purported secondary considerations of nonobviousness were entirely unsupported, even though Patent Owner bears the burden of proof on this point. See Reply at

17 expertise or not, it is indisputably based on his own personal observation and rational perception; the Board will have no trouble determining the foundation for Mr. Peck s testimony and weighing it accordingly. III. CONCLUSION For the foregoing reasons, Petitioner respectfully requests that the Board deny Patent Owner s Motion to Exclude and admit the Declaration of David Peck (Ex. 1100) into evidence in its entirety. Dated: December 23, 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 Stefanie.lopatkin@hugheshubbard.com (212) Attorney for Petitioner Costco Wholesale Corporation 13

18 CERTIFICATE OF SERVICE I hereby certify that on this 23rd day of December, 2016, the foregoing Petitioner s Opposition to Patent Owner s Motion to Exclude Evidence Pursuant to 37 C.F.R was served in its entirety by 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) /James R. Klaiber/ James R. Klaiber Registration No. 41,