`U.S. Patent No. 6,973,698
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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 NO. IPR2016-00034
`U.S. Patent No. 6,973,698
`______________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 35
`U.S.C. § 313 AND 37 C.F.R. § 42.107
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`
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`Table of Contents
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`
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`I.
`
`II.
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`INTRODUCTION ........................................................................................... 1
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`SUMMARY OF ARGUMENTS ..................................................................... 2
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`III. STANDARD FOR INSTITUTION ................................................................. 3
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`IV. BRIEF OVERVIEW OF U.S. PATENT. NO. 6,973,698 ................................ 5
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`V.
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`PETITIONER IMPROPERLY INCORPORATES BY REFERENCE THE
`DAVIS DECLARATION ................................................................................ 6
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`VI. PETITIONER PUTS FORTH NO EVIDENCE THAT THE CITED
`REFERENCES IN GROUNDS 1–4 DISCLOSE “SAID CONTACT FORCE
`OF SAID WIPER STRIP BEING GREATER IN SAID CENTER SECTION
`THAN IN AT LEAST ONE OF SAID TWO END SECTIONS,” AS
`REQUIRED BY CLAIM 1 .............................................................................. 9
`
`VII. PETITIONER’S OBVIOUSNESS ANALYSIS FAILS FOR LACK OF A
`VALID REASON TO COMBINE ................................................................12
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`VIII. PETITIONER’S ESTOPPEL ARGUMENT LACKS ANY FACTUAL OR
`LEGAL BASES .............................................................................................13
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`IX. CONCLUSION ..............................................................................................14
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`i
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`Case No. IPR2016-00034
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`Table of Authorities
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`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ............................................................................ 4
`
`August Tech. Corp. v. Camtek Ltd.,
`655 F.3d 1278 (Fed. Cir. 2011) ............................................................................ 4
`
`Blackberry Corp. v. Mobilemedia Ideas LLC,
`IPR2013-00016, Paper 32 (PTAB Feb. 25, 2014) ................................................ 7
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ........................................... 2, 6
`
`Fidelity National Info. Serv’s, Inc. v. Datatreasury Corp.,
`IPR2014-00489, Paper 9 (PTAB Aug. 13, 2014) ................................................. 7
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ........................................................................................ 4, 13
`
`PCT Int’l, Inc. v. Amphenol Corp.,
`IPR2013-00229, Paper 17 (PTAB Dec. 24, 2013) ............................................... 7
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 15 (PTAB Dec. 30, 2013) ............................................... 4
`
`Unified Patents Inc. v. OliviStar, LLC,
`IPR2015-01216, Paper 15 (PTAB Nov. 20, 2015) ............................................... 7
`
`Vizio, Inc. v. Int’l Trade Comm’n,
`605 F.3d 1330 (Fed. Cir. 2010) ............................................................................ 4
`
`Statutes
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`35 U.S.C. § 314(a) ................................................................................................. 3, 4
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`35 U.S.C. § 315(e) ............................................................................................... 3, 13
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`35 U.S.C. § 316(e) ..................................................................................................... 4
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`
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`ii
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`Regulations
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`37 C.F.R. § 42.6(a)(3) ............................................................................................ 2, 6
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`37 C.F.R. § 42.24(a)(1)(i) ...................................................................................... 2, 6
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`37 C.F.R. § 42.104(b)(4) ...................................................................................... 4, 10
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`37 C.F.R. § 42.108(b) ................................................................................................ 4
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`37 C.F.R. § 42.108(c) ................................................................................................. 3
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`
`
`Other Authorities
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14,
`2012) ..................................................................................................................... 4
`
`
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`iii
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`I.
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`INTRODUCTION
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`Patent Owner, Robert Bosch LLC (“Bosch”), submits this preliminary
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`response to the Petition filed by Costco Wholesale Corporation (“Petitioner” or
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`“Costco”) as Paper No. 1 in this proceeding, requesting inter partes review of
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`claim 1 of U.S. Patent No. 6,973,698 (“Petition”). This response is timely pursuant
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`to the Board’s Notice in Paper No. 3.
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`The following arguments are not intended to be an exhaustive with respect
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`to the grounds asserted in the Petition. Bosch respectfully submits these
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`streamlined arguments in response to the issue of institution and reserves the right
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`to expand on these arguments with additional evidence, including testimonial
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`evidence, or to provide new arguments, should the Board determine that institution
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`is appropriate.
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`Bosch submits that Petitioner has not established a reasonable likelihood that
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`it would prevail with respect to at least one of challenged claim. Accordingly,
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`Bosch respectfully requests that the Board decline to institute inter partes review
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`for the reasons set forth below.
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`1
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`II.
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`SUMMARY OF ARGUMENTS
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`The Petition fails for several reasons.
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`First, Petitioner violates 37 C.F.R. §§ 42.24(a)(1)(i) and 42.6(a)(3) by
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`improperly incorporating by reference numerous arguments from the Davis
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`Declaration into the Petition. Under this Board’s prior decisions, the Declaration
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`should be disregarded. See, e.g., Cisco Sys., Inc. v. C-Cation Techs., LLC,
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`IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014). Without this testimony,
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`Bosch submits that the Petition is insufficient to carry Petitioner’s burden, and
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`institution should be denied with respect to Grounds 1, 2, and 4.
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`Second, Petitioner offers no evidence that the cited references relied on by
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`Petitioner in Grounds 1–4 disclose the limitation “said contact force of said wiper
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`strip being greater in said center section than in at least one of said two end
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`sections,” as required by the sole challenged claim. Therefore, institution on
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`Grounds 1–4 must be denied.
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`Third, Petitioner fails to show that claim 1 is unpatentable because Petitioner
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`fails to present a valid reason to combine references in its Petition. In applying its
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`obviousness analysis with respect to the claims, Petitioner states that the reason to
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`combine prior art teachings is to achieve a “uniform pressure distribution”;
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`however, this proposed reasoning is not encompassed by the claim language—
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`“said contact force of said wiper strip being greater in said center section than in at
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`2
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`
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`least one of said two end sections .…” In fact, the ’698 patent identifies “uniform
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`pressure distribution over the entire wiper blade length” as a prior art problem.
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`Ex. 1001 at 1:40–50 (emphasis added). Accordingly, institution should be denied
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`for obviousness Grounds 1, 2, and 4.
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`Last, Petitioner’s estoppel argument lacks any factual or legal bases.
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`Petitioner admits that the BPAI was never presented with issued claim 1, and that
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`the BPAI never issued any determination with respect to the validity of issued
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`claim 1. Further, Petitioner cites no rules or case law concerning this issue.
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`Estoppel only applies to petitioners under 35 U.S.C. § 315(e)(1)–(2); however,
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`these sub-sections apply only to a particular claim at issue, not to related claims.
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`Accordingly, the Board should reject this estoppel argument and institution should
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`be denied for Ground 1.
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`For these reasons, the Board should deny institution on all grounds.
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`III. STANDARD FOR INSTITUTION
`The Board, in considering whether to institute a trial, determines whether or
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`not a party has met the statutory institution standard. A petition for inter partes
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`review may be granted only when “the information presented in the petition …
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`shows that there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
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`see also 37 C.F.R. § 42.108(c). A petitioner bears the burden of showing that this
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`3
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`standard has been met. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,756 (Aug. 14, 2012) (“The Board … may institute a trial where the
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`petitioner establishes that the standards for instituting the requested trial are met
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`….”). A petitioner also bears the burden of proving unpatentability by a
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`preponderance of the evidence. 35 U.S.C. § 316(e).
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`A petitioner making an obviousness challenge must show where each
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`claimed limitation is taught in the prior art. See, e.g., Vizio, Inc. v. Int’l Trade
`
`Comm’n, 605 F.3d 1330, 1342–43 (Fed. Cir. 2010); August Tech. Corp. v. Camtek
`
`Ltd., 655 F.3d 1278, 1287 (Fed. Cir. 2011); see also 37 C.F.R. § 42.104(b)(4). If a
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`petitioner asserts that a combination of prior art renders a claim unpatentable, it
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`must “set forth sufficient articulated reasoning with rational underpinning to
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`support its proposed obviousness ground.” SAS Inst., Inc. v. ComplementSoft,
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`LLC, IPR2013-00581, Paper 15 at 12 (PTAB Dec. 30, 2013) (citing KSR Int’l Co.
`
`v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); accord ActiveVideo Networks, Inc. v.
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`Verizon Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012). The Board
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`may “deny some or all grounds for unpatentability for some or all of the
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`challenged claims.” 37 C.F.R. § 42.108(b); see also 35 U.S.C. § 314(a).
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`Thus, it is a petitioner’s duty to provide sufficient grounds for institution.
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`Here, Petitioner has failed to live up to its duty. Bosch respectfully submits that
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`institution should be denied as to all grounds.
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`4
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`IV. BRIEF OVERVIEW OF U.S. PATENT. NO. 6,973,698
`U.S. Patent Number 6,973,698 (“the ’698 patent”) issued on December 13,
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`2005, and resulted from the prosecution of a PCT application filed on December
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`18, 1998, which claims priority back to a German application filed April 1, 1998.
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`The ’698 patent is directed to a beam-type wiper blade that includes a
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`support element that distributes pressure along the length of the wiper strip such
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`that the contact force of the wiper strip with the window is greater in the center
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`section of the wiper blade than in at least one of its ends. Ex. 1001 at 4:16–5:18.
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`The reduced force in the end section or sections encourages the wiper lip to flip
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`over sequentially from the end or ends to the center, avoiding a knocking noise that
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`would otherwise occur if the entire lip flips over simultaneously. Id. The wiping
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`quality at the ends of the wiper blade is maintained by having the curvature of the
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`support element be greater than the greatest curvature of the windshield in the
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`wiping region. Id.
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`5
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`A schematic representation of an unloaded wiper blade placed against the
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`window is shown in Figure 2. Id. at 2:38–40. Figure 5 depicts the contact pressure
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`distribution along the wiper blade length for an exemplary embodiment of the
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`invention. Id. at 2:53–55.
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`V.
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`PETITIONER IMPROPERLY INCORPORATES BY REFERENCE
`THE DAVIS DECLARATION
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`Bosch respectfully submits that the Davis Declaration cannot be relied upon
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`to support the Petition because it amounts to an improper incorporation by
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`reference, which has the effect of circumventing the 60-page limit on petitions.
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`A petition requesting inter partes review is limited to 60 pages, and
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`incorporation by reference is not permitted. 37 C.F.R. §§ 42.24(a)(1)(i),
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`42.6(a)(3). The Board has consistently determined that declarations are not to be
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`used as a tool for circumventing page limits, and the tactic of incorporating lengthy
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`materials to circumvent the page limit has been determined to be improper. See,
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`e.g., Cisco, IPR2014-00454, Paper 12 at 10 (disregarding arguments made in
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`6
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`declaration that were improperly incorporated by reference; “Incorporation ‘by
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`reference amounts to a self-help increase in the length of the [] brief[,]’ and ‘is a
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`pointless imposition on the court’s time. A brief must make all arguments
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`accessible to the judges, rather than ask them to play archeologist with the
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`record.’” (alteration in original; citation omitted)); Unified Patents Inc. v.
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`OliviStar, LLC, IPR2015-01216, Paper 15 at 12–13 n.7 (PTAB Nov. 20, 2015)
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`(citing to a declaration to support conclusory statements in petition is improper
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`incorporation by reference); Blackberry Corp. v. Mobilemedia Ideas LLC,
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`IPR2013-00016, Paper 32 at 21 (PTAB Feb. 25, 2014); PCT Int’l, Inc. v.
`
`Amphenol Corp., IPR2013-00229, Paper 17 at 2 (PTAB Dec. 24, 2013); Fidelity
`
`National Info. Serv’s, Inc. v. Datatreasury Corp., IPR2014-00489, Paper 9 at 9–11
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`(PTAB Aug. 13, 2014).
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`Petitioner repeatedly cites to large sections of the Davis Declaration to
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`support broad scope conclusions without any correspondence or particularity. For
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`example, the chart below demonstrates that each citation allegedly supports a
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`single sentence that combines all of the following: reasons to combine; prior art
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`teachings; and multiple obviousness conclusions.
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`7
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`Corresponding Citation
`See also Declaration of Dr. Gregory W.
`Davis (“Davis Decl.”) (Ex. 1013) at 11–
`19, 31–33. [12 pages]
`
`See also Declaration of Dr. Gregory W.
`Davis (“Davis Decl.”) (Ex. 1013) at 11–
`31, 33–35. [26 pages]
`
`See also Davis Decl. (Ex. 1013) at 11–
`31, 35–37.” [23 pages]
`
`Petitioner’s Obviousness Conclusion
`“One of ordinary skill in the art would
`have reason to combine these teachings
`of Appel ’770, along with the teachings
`of Arai that a ‘multiple number of
`mutually pivotally connected yoke
`elements’ are ‘complicated in
`construction” and ‘expensive,’ to obtain
`a wiper blade with an appropriately
`curved carrying element that maintains
`relatively uniform pressure distribution
`and results in good wiping quality.” See
`Petition at 40.
`“One of ordinary skill in the art would
`have reason to combine these teachings
`of Arai with those of Appel ’551, DE
`’939, or Swanepoel ’564 to obtain a
`wiper blade, in which the curvature of
`the carrying element is sharper than that
`of the window, in which the curvature is
`greater in the middle than at the ends,
`and in which the carrying element
`maintains relatively uniform pressure
`distribution and results in good wiping
`quality.” See Petition at 41–42.
`“Accordingly, one of ordinary skill in
`the art would have reason to combine
`the teachings of Swanepoel ’564 with
`those of Arai, Appel ’770, Appel ’551,
`or DE ’939 to obtain a wiper blade, in
`which the curvature of the carrying
`element is sharper than that of the
`window, in which the curvature is
`greater in the middle than at the ends,
`and which maintains relatively uniform
`pressure distribution and results in good
`wiping quality.” See Petition at 49–50.
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`8
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`In total, this amounts to approximately 30 pages of improper incorporations
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`by reference. Other than the broad “see also” citations, Petitioner does not provide
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`any connection to particular arguments, any explanation as to how or why it relies
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`on these lengthy sections, or what particular portion of the declaration it relies
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`upon. The Board is left to sift through the Davis Declaration and to create
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`arguments for Petitioner.
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`This tactic amounts to an improper incorporation by reference and shifts the
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`burden to the Board to make arguments for Petitioner. Petitioner’s extensive
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`reliance on the Davis Declaration lacks any specificity and fails to support any
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`particular prior art teaching or argument of unpatentability. Accordingly, the
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`Davis Declaration should be excluded from consideration, and Bosch respectfully
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`submits that—without the declaration—Petitioner has failed to carry its burden
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`with respect to the sole challenged claim (claim 1) for each of Grounds 1, 2, and 4.
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`VI. PETITIONER PUTS FORTH NO EVIDENCE THAT THE CITED
`REFERENCES IN GROUNDS 1–4 DISCLOSE “SAID CONTACT
`FORCE OF SAID WIPER STRIP BEING GREATER IN SAID CENTER
`SECTION THAN IN AT LEAST ONE OF SAID TWO END
`SECTIONS,” AS REQUIRED BY CLAIM 1
`Claim 1 requires the following limitation: “said contact force of said wiper
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`strip being greater in said center section than in at least one of said two end
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`sections.” With respect to this limitation, for Grounds 1–4, Petitioner makes only
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`unsupported statements of its presence in the cited prior art, and thus fails to meet
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`Petitioner’s burden of specifying elements that demonstrate unpatentability with
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`sufficient explanation and relevant citations. 37 C.F.R. § 42.104(b)(4) (petition
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`must “specify where each element of the claim is found in the prior art patents or
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`printed publications relied upon”).
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`Regarding Ground 1, Petitioner asserts that claim 1 is unpatentable as
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`obvious over Arai in view of Appel ’770 and the knowledge of a person of
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`ordinary skill in the art.1 As alleged evidence in support, Petitioner submits a
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`claim chart that merely echoes the claim language. See Petition at 33–38. This
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`echoed claim language is not supported by the Arai reference.
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`In fact, Arai discloses the opposite: uniform pressure distribution along the
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`length of the blade rubber. See Ex. 1004 at 1:30–34; 3: 34–36. This uniform
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`pressure distribution is plainly not the same as “said contact force of said wiper
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`strip being greater in said center section than in at least one of said two end
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`sections.”
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`In its claim chart, Petitioner also asserts that Appel ’770—as a secondary
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`reference—discloses this limitation, by incorporating by reference Appel ’551.
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`1 Bosch submits that a person of ordinary skill in the art has either an
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`undergraduate degree in mechanical engineering or a similar discipline, or several
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`years of experience in the field of wiper blade manufacture and design.
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`10
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`Petitioner alleges that Appel ’551 “discloses a wiper strip that distributes a contact
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`force against the window over an entire length of a wiper strip and a wiper strip
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`having a center section and end section.” Again, this describes uniform pressure
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`loading, rather than the claimed limitation: “said contact force of said wiper strip
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`being greater in said center section than in at least one of said two end sections.”
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`Thus, Petitioner fails to meet its burden of specifying elements that
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`demonstrate unpatentability because the Petition contains insufficient explanations
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`and rests on irrelevant citations. Accordingly, Ground 1 should be denied
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`institution.
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`Ground 2 alleges the same obviousness argument as Ground 1, and further in
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`view of Appel ’551, DE ’939, or Swanepoel ’564. To support Ground 2, Petitioner
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`submits the same claim chart as provided for Ground 1. Bosch submits that the
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`above arguments with respect to Ground 1, regarding Arai, Appel ’551, and Appel
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`’770, also apply here to Ground 2. For Ground 2, Petitioner does not specify any
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`additional prior art teachings, in DE ’939, or Swanepoel ’564, for the limitation
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`“said contact force of said wiper strip being greater in said center section than in
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`at least one of said two end sections.” Accordingly, Ground 2 should be denied.
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`For Grounds 3 and 4, Petitioner alleges that claim 1 is unpatentable as
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`anticipated by Swanepoel ’564 or obvious in view of Swanepoel ’564, alone or in
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`view of DE ’939. With respect to the limitation “said contact force of said wiper
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`11
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`strip being greater in said center section than in at least one of said two end
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`sections,” Petitioner’s Grounds 3 and 4 are based on an unsupported inherency
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`argument with insufficient explanation, irrelevant citations and conclusory
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`statements. To support its inherency argument, Petitioner only cites to the Davis
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`Declaration, with no explanation of how or why the Davis Declaration supports
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`inherency. See Petition at 48. In other words, the Board must go to the Davis
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`Declaration and develop its own arguments to import into the Petition on behalf of
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`Petitioner. For the same reasons described in Section V, supra, this tactic amounts
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`to an improper incorporation by reference, and the Davis Declaration should be
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`excluded from consideration. Accordingly, Petitioner’s inherency arguments are
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`unsupported and Petitioner fails to meet its burden of specifying elements that
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`demonstrate unpatentability, and Grounds 3–4 should be denied.
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`Thus, the Board should deny institution on all grounds.
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`VII. PETITIONER’S OBVIOUSNESS ANALYSIS FAILS FOR LACK OF
`A VALID REASON TO COMBINE
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`Petitioner fails to show that claim 1 is unpatentable because Petitioner fails
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`to present a valid reason to combine the references in its Petition.
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`Petitioner first notes that “‘[o]ne of the ways in which a patent’s subject
`
`matter can be proved obvious is by noting that there existed at the time of the
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`invention a known problem for which there was an obvious solution encompassed
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`12
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`
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`by the patent’s claims.’” Petition at 27–28 (quoting KSR Int’l Co. v. Teleflex, Inc.,
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`550 U.S. 398, 419–420 (2007)) (emphasis added). Petitioner then states that the
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`reason to combine prior art teachings is to achieve a “uniform pressure
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`distribution.” See Petition at 40, 42, and 50. However, this proposed reasoning is
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`not encompassed by the claim language—“said contact force of said wiper strip
`
`being greater in said center section than in at least one of said two end sections …”
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`In fact, the ’698 patent identifies “uniform pressure distribution over the entire
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`wiper blade length” as a prior art problem. Id. at 1:40–50 (emphasis added).
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`Accordingly, institution should be denied for obviousness Grounds 1, 2, and 4.
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`VIII. PETITIONER’S ESTOPPEL ARGUMENT LACKS ANY FACTUAL
`OR LEGAL BASES
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`As part of its Petition, Petitioner alleges that Bosch is estopped from
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`contesting its alleged obviousness arguments in Ground 1. Petitioner argues that
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`because a separate, distinct claim in the application of the ’698 patent was rejected
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`as obvious, that decision should affect the unpatentability of the issued claim 1 and
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`that Bosch should be estopped from contesting obviousness allegations of issued
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`claim 1.
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`Petitioner’s argument lacks any legal or factual bases. Petitioner cites no
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`rules or case law concerning this issue. In fact, estoppel only applies to petitioners
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`under 35 U.S.C. § 315(e)(1)–(2); however, these sub-sections apply only to a
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`13
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`
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`particular claim at issue, not to related claims. And, Petitioner admits that the
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`BPAI was never presented with issued claim 1, and that the BPAI never issued any
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`determination with respect to the validity of issued claim 1. In particular,
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`Petitioner states that the “BPAI was never asked to consider the obviousness of
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`application claim 12 or issued claim 1.” Thus, the Board should reject Petitioner’s
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`estoppel argument.
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`IX. CONCLUSION
`For at least the reasons set forth above, the Board should decline to institute
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`inter partes review of claim 1 of the ’698 patent on all grounds.
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`DATED: January 28, 2016
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`Respectfully submitted,
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`
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`Shearman & Sterling LLP
`
`/Enrique W. Iturralde/
`Enrique W. Iturralde (Reg. No. 72,883)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Agent for Patent Owner
`Robert Bosch LLC
`
`Mark A. Hannemann (pro hac vice)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Counsel for Patent Owner
`Robert Bosch LLC
`
`14
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`Certificate of Service
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`
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`PRELIMINARY RESPONSE PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. §
`
`42.107 was served via electronic mail on January 28, 2016, on the following
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`counsel for Petitioner:
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`Richard M. Koehl (richard.koehl@hugheshubbard.com)
`James R. Klaiber (james.klaiber@hugheshubbard.com)
`David E. Lansky (david.lansky@ hugheshubbard.com)
`
`/Enrique W. Iturralde/
`Enrique W. Iturralde (Reg. No. 72,883)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Agent for Patent Owner
`Robert Bosch LLC