trials@uspto.gov
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`IPR2016-00034, Paper No. 63
`IPR2016-00036, Paper No. 67
`IPR2016-00038, Paper No. 66
` IPR2016-00039, Paper No. 67
`IPR2016-00040, Paper No. 65
`IPR2016-00041, Paper No. 67
`February 7, 2017
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`571-272-7822
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`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`COSTCO WHOLESALE CORP,
`Petitioner
`vs.
`ROBERT BOSCH LLC
`Patent Owner
`- - - - - -
`Case IPR2016-00034 (Patent 6,973,698)
`Case IPR2016-00036 (Patent 6,944,905)
`Case IPR2016-00038 (Patent 6,292,974)
`Case IPR2016-00039 (Patent 7,228,588)
`Case IPR2016-00040 (Patent 7,484,264)
`Case IPR2016-00041 (Patent 8,099,823)
`- - - - - -
`Oral Hearing Held: January 18, 2017
`Before: PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON,
`and BARRY L. GROSSMAN, Administrative Patent Judges
`The above-entitled matter came on for hearing at the U.S.
`Patent and Trademark Office, 600 Dulany Street, Alexandria, Virginia in
`Courtroom A, at 10:00 a.m.
`REPORTED BY: KAREN BRYNTESON, RMR, CRR,
`
`FAPR
`
`
`
`
`
`
`
`
`
`IPR2016-00034, Paper No. 63
`IPR2016-00036, Paper No. 67
`IPR2016-00038, Paper No. 66
` IPR2016-00039, Paper No. 67
`IPR2016-00040, Paper No. 65
`IPR2016-00041, Paper No. 67
`February 7, 2017
`
`
`
`
`
`571-272-7822
`
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`COSTCO WHOLESALE CORP,
`Petitioner
`vs.
`ROBERT BOSCH LLC
`Patent Owner
`- - - - - -
`Case IPR2016-00034 (Patent 6,973,698)
`Case IPR2016-00036 (Patent 6,944,905)
`Case IPR2016-00038 (Patent 6,292,974)
`Case IPR2016-00039 (Patent 7,228,588)
`Case IPR2016-00040 (Patent 7,484,264)
`Case IPR2016-00041 (Patent 8,099,823)
`- - - - - -
`Oral Hearing Held: January 18, 2017
`Before: PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON,
`and BARRY L. GROSSMAN, Administrative Patent Judges
`The above-entitled matter came on for hearing at the U.S.
`Patent and Trademark Office, 600 Dulany Street, Alexandria, Virginia in
`Courtroom A, at 10:00 a.m.
`REPORTED BY: KAREN BRYNTESON, RMR, CRR,
`
`FAPR
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JAMES W. DABNEY, ESQ.
`
`
`RICHARD M. KOEHL, ESQ.
`
`
`JAMES R. KLAIBER, ESQ.
`
`
`STEFANIE LOPATKIN, ESQ.
`
`
`Hughes Hubbard & Reed LLP
`
`
`One Battery Park Plaza
`
`
`New York, NY 10004-1482
`
`
`212-837-6803
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`MARK HANNEMANN, ESQ.
`
`
`PATRICK R. COLSHER, ESQ.
`
`
`JOSEPH PURCELL, ESQ.
`
`
`Shearman & Sterling LLP
`
`
`599 Lexington Avenue
`
`
`New York, NY 10022
`
`
`212-848-4000
`
`
`
`
`
`
`
`2
`
`
`
`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`P R O C E E D I N G S
`
`(10:00 a.m.)
`JUDGE SAINDON: Good morning. Please be
`
`seated.
`
`All right. We're here this morning for an oral
`hearing on a series of cases, IPR 2016- 00034, 38, 36, 39, 40,
`and 41. And as our trial order specified, we're going to do
`them in the order I just recited, grouped up in blocks so that
`we will have the Petitioner go, then the Patent Owner, then the
`Petitioner's rebuttal time before we move to the next case.
`And that way we can focus on one case at a time.
`With that, I have the schedule in front of me that
`the parties proposed with 20 minutes, 30 minutes, 20 minutes,
`and then 30 minutes. And so unless the parties have agreed to
`something else, we will just go ahead with that.
`Before we get started, we will do a brief
`introduction. I am Judge Saindon. This is Judge Grossman.
`And with us on the line is Judge Kauffman.
`JUDGE KAUFFMAN: Good morning.
`JUDGE SAINDON: He can only hear you if you
`speak into that microphone at the podium, so please, whoever
`is speaking, speak at the podium and speak into the
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`microphone.
`All right. So let's have appearances from Patent
`Owner now.
`MR. HANNEMANN: Good morning, Your Honor,
`Mark Hannemann, Patrick Colsher, and Joseph Purcell of
`Shearman & Sterling for Patent Owner, Bosch.
`JUDGE SAINDON: Thank you. Petitioner?
`MR. DABNEY: Good morning, Your Honor, James
`Dabney, Richard Koehl, Jim Klaiber, and Stefanie Lopatkin of
`Hughes Hubbard & Reed for Costco, Petitioner.
`JUDGE SAINDON: Good morning. You can stay
`up there and we can begin with IPR2016- 34. Just as one other
`matter, the hearing record will count for all cases. Anything
`said in one counts for all the others, unless there is some
`specific statement you give otherwise. That way we don't have
`to repeat ourselves because there is so much overlap.
`So with that, we will begin with IPR 2016- 34. I
`budgeted 20 minutes. If you go over, we will borrow from the
`next one and so forth. So you may begin when ready.
`MR. DABNEY: Thank you, Your Honor, James
`Dabney from Hughes Hubbard. And what I would like to do
`this morning is just to provide an overview of what we expect
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`to present to the Board over all of the six cases this morning.
`And my colleagues will make more specific arguments about
`the cases before, and I realize that may take up some of our
`time this morning on this first case.
`The cases the Board is hearing this morning, as we
`see it, fall into basically two pots. The first pot is the first
`case up this morning involving the '698 patent, which claims a
`wiper comprising a spring elastic support element, and the
`other five cases all involve a wiper that comprises both a
`spring elastic support element and other structures, mostly a
`spoiler, but in one case a spoiler and end caps.
`And it seems to me that you can think about the
`obviousness issues most effectively by focusing on them in
`those two groups. The first case up we're talking about today
`is unusual in that it basically is a case in which we are
`relitigating an issue that this Board's predecessor decided on
`May 28th of 2003.
`And in the prosecution history of its Exhibit 1002,
`we have the primary reference at issue in this proceeding,
`which is Arai. And may the record show I am showing Arai
`figure 1 on the ELMO.
`And the Board took a very careful look at the prior
`
`
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`art and compared it to the Arai reference and found that
`everything recited in the claim, everything, including a contact
`force in the center that was greater than in the two end
`sections, and including a radius of curvature that met the claim
`limitations in the claim, but because the examiner had not
`argued that this was rendered obvious by the further limitation
`that the wiper element had to have a sharper curvature than the
`windshield being swept across, the Board said that he had not
`made a showing of anticipation based on this -- based on this
`reference alone.
`So when we turn to the secondary reference in the
`
`case --
`
`JUDGE GROSSMAN: Mr. Dabney, when you are
`referring to the Board, are you referring to our Decision to
`Institute or are you referring to the decision by the Board Of
`Patent Appeals in Interferences during prosecution?
`MR. DABNEY: I am talking to the Board of Patent
`Appeals during prosecution, so what we view as the threshold
`issue in this case, is there any basis for this board to take a
`different view of the prior art than was taken by the Board in
`that case?
`And the critical parts of the decision in that case is
`
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`found on page 293 of the prosecution history, which I will just
`put up on the ELMO. The Board at this point took a very, very
`careful look and quoted the written description of the patent,
`column 3, lines 29 to 30, and said the curvature is gradually
`decreased at longitudinally opposite end portions 3A and 3A.
`And that position was contested at that time, but
`the Board adhered to its view of what a person skilled in the
`art would interpret the disclosure to be. The Board also
`carefully considered the Patent Owner's assertion that the Arai
`reference did not show pressure differential as claimed in the
`patent. And they go on to say that while Arai is interested in
`applying uniform pressure, it says the high distribution shown
`in figure 7 -- which I will put up -- shows pressure differential
`that is lower at the outer sections than it is in the center.
`So the question whether or not Arai describes and
`discloses what the patent claims in this case was very carefully
`considered by the Board in 2003. And the Patent Owner at that
`time acquiesced in the Board's decision.
`So what we have here is what amounts to a
`collateral attack on the decision because the Board at that time
`held that when the examiner argued that it was obvious to make
`that curvature, have a radius of curvature that was less than the
`
`
`
`7
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`1
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`
`
`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`radius of the windshield, you could just look at Appel and it
`would show that uniform wiping pressure is achieved by
`forming the wiper super structure in a curvalinear manner with
`a radius of curvature less than that of the windshield to be
`traversed.
`JUDGE GROSSMAN: Mr. Dabney, before we go
`too far into Appel, you are talking about what the Board of
`Patent Appeals and Interferences decided during prosecution.
`MR. DABNEY: Correct.
`JUDGE GROSSMAN: And what they affirmed was
`application claim 9, what you were just talking about when
`they were disclosing about what Arai discloses.
`MR. DABNEY: Correct.
`JUDGE GROSSMAN: That was in the context of
`considering application claim 9.
`MR. DABNEY: Correct.
`JUDGE GROSSMAN: Not in the context of the
`claim that's in front of us right now.
`MR. DABNEY: Yes. But application claim 9 had
`additional limitations that were also met by the prior art. The
`limitations that we're talking about now are verbatim identical
`to the limitations that the Board considered were met by these
`
`
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`references at that time.
`JUDGE GROSSMAN: It is my understanding of
`this record that this claim 1 in the patent that's in front of us in
`the '698 patent is a combination of application claim 9 and
`application claim 12.
`MR. DABNEY: That's correct. And the difference
`between those two was the recital that you have three features
`here. You have the pressure differential, where the pressure is
`greater, the contact force is greater in the center than in the
`outer extremities, which is what the Board said figure 7 of Arai
`showed, which we contend in this case as well, I will put it up
`again.
`
`The Board dealt with the question of does Arai
`show that the curvature of the spring elastic support element is
`less in the outer end sections than it is in the center section.
`And based on the written description of the patent, the Board
`held that it did.
`We believe that that decision was correct and
`supportable. The Patent Owner is attacking the correctness of
`that decision in this proceeding. But even if the Board were
`inclined to revisit that finding, when you look at Appel, the
`Appel secondary reference discloses a preferred embodiment
`
`
`
`9
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`by reference that is characterized as having a free form circular
`arc curvature modified at the ends with somewhat less
`curvature. That's how Appel characterized the preferred
`embodiment of the wiper disclosed in Appel.
`JUDGE GROSSMAN: When you mention
`revisiting that prior Board decision, do you agree that we have
`the authority to revisit that and can reach a different
`conclusion, that it is not binding on our decision here?
`MR. DABNEY: I think that this Board is -- that
`the res judicata collateral estoppel effect of that Board
`decision is a matter of this Board's precedent. We think the
`Board would be well within its province to say that this Patent
`Owner should not be permitted to relitigate this issue and
`relitigate whether the Board was right to find what it did. It
`did not appeal from that decision.
`This patent has been out there for years with this in
`the prosecution history. And we think it would be entirely
`appropriate for the Board to say on this issue of what Arai
`discloses as a factual matter and what a person of skill in the
`art would understand by the written description, they should
`not be heard to be relitigating that issue now. So, no, we do
`not concede that. We argue that there should be res judicata
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`and collateral estoppel on this issue. They had their shot.
`That was 15 years ago. It ought to -- or 13 years ago. It ought
`to be done.
`So what we, therefore, have is whether you accept
`that the Board was correct the first time around in how it
`described -- how it described what a person skilled in the art
`would understand is meant by the disclosure of Arai when it
`says that the curvature is gradually decreased at longitudinally
`opposite end portions 3A and 3A, if you eyeball figure 5 of the
`patent, and depending on how you look at that, you could
`possibly, depending on where you cut sections, you might
`possibly say: Well, I can't tell scaling off the drawing whether
`or not the written description is right or wrong.
`JUDGE GROSSMAN: Mr. Dabney, when you say
`figure 5 of the patent, which patent are you talking about?
`MR. DABNEY: Figure 5 of Arai is the one that is
`up on the ELMO now. I will zoom out so you can see. It is
`structure 3 in figure 1, which is in a different rendition shown
`in figure 5.
`And the Patent Owner's argument basically is that
`the Board was incorrect previously in saying that the written
`description of these structures is incorrect when it says that the
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`curvature is gradually decreased at longitudinally opposite end
`portions.
`
`And our position is --
`JUDGE GROSSMAN: What is your understanding
`of what the patent means when it says curvature gradually
`decreased? Does that mean it flattens out or does that mean it
`looks sharper? Because when I look at figure 5, it looks like it
`is flatter in the middle than it is at the end.
`MR. DABNEY: That is -- I mean, I'm not going to
`stand here and say that you couldn't interpret it that way.
`That's not how the Board interpreted it in 2003. So I am not
`saying that that couldn't be found, but we think that the Board,
`when you read that in the context of figure 1 and the whole
`patent, the written description is the specification. The
`drawings are not necessarily the specification.
`The drawings are optional. So we think that what
`should control is the written description, which is the position
`that the Board took. We find that one of skill in the art would
`reasonably interpret this disclosure described in the center
`section, which has a greater curvature than either of the end
`portions, but I emphasize that whether you accept that view or
`not, when you look at figure 5 of Exhibit 105, and you look at
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`the description of the preferred embodiment of this structure,
`which Appel 77 describes at great length, it says that this -- the
`patent description distinguishes between parabolic curvature
`and free form curvature. And it says that this structure, figure
`5, has free form circular arc curvature modified at the ends
`with somewhat less curvature.
`So there is no ambiguity at all that the prior art
`says, for any given pressure distribution that you want,
`whether it is Arai's pressure distribution or some other
`pressure distribution, you can accomplish that by varying
`various variables. You can vary the stiffness of the material.
`You can vary the thickness. You can vary the width. And you
`can vary the amount of precurvature of the structure.
`These are just all routine variables that can be
`varied. So on those grounds, we say that the Board was correct
`in its prior interpretation of the prior art. It should adhere to
`its decision; the reasoning of which supports a conclusion that
`the subject matter claimed in claim 1 of the patent is all
`disclosed in Arai.
`You can put this claim side-by-side with the patent.
`And, of course, Arai has the elongated wiper strip placable
`against a window, no dispute about that; elongated
`
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`
`
`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`spring- elastic carrying element disposed on the side of the
`wiper strip remote from the window, no dispute about that;
`said spring- elastic carrying element extending parallel to an
`axis of elongation of said wiper strip to distribute a contact
`force against the window over an entire length of said wiper
`strip, no dispute about that; the wiper strip having a center
`section and two end sections, no dispute about that; the contact
`force of the wiper strip being greater in said center section
`than at least one of two end sections, no dispute about that --
`that's figure 7 of Arai as interpreted by the Board -- said
`spring- elastic carrying element has a side thereof oriented
`toward the window, a concave curvature that is sharper than
`the sharpest curvature of a spherically curved window -- that
`was the thing that Arai did not expressly disclose. But Appel
`did, which is -- which I showed you earlier that the curvature
`of the wiper has to be sharper than that of the windshield.
`JUDGE GROSSMAN: The clause on said elastic
`spring element is what Arai --
`MR. DABNEY: Yes.
`JUDGE GROSSMAN: I think what you read
`previously in going through Arai in that claim 1, everything up
`to, I think what is about line 15 --
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`MR. DABNEY: Yes.
`JUDGE GROSSMAN: -- is identical to application
`claim 9 that the Board affirmed the 102 on Arai.
`MR. DABNEY: Correct.
`JUDGE GROSSMAN: So that's claim 9. And that's
`what the Board said Arai had. So that we can -- I understand
`that point.
`So what you are saying is everything below line 15
`in the '698 patent in claim 1 is what Arai does not have?
`MR. DABNEY: Well, no, the Board held that Arai
`had application claim 12 -- claims 5 and 8 of Arai were all
`disclosed. Application claims 5 and 8, which include --
`JUDGE GROSSMAN: 5 and 8 of the application.
`MR. DABNEY: And so that meant that the Board
`found that Arai had everything -- it said Arai had a concave
`curvature sharper -- no, sorry. It had a concave curvature in
`the center that is sharper in said end sections thereof. They
`found that Arai disclosed that.
`And it also said that it has a contact force of the
`wiper strip being greater in the center section than at least one
`of the two end sections. The Board found that it had that as
`well, which was in application claim 5 and 8 together. So we
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`have all of that.
`The only thing missing was the curvature of the
`windshield. So at this point the issue simply is are we going to
`revisit what Arai's specification discloses? Are we going to
`not pay attention to the figure 7 in Arai?
`I have to point out the claims here are very broad.
`Any contact pressure differential meets this claim. It doesn't
`have to be any particular amount.
`JUDGE GROSSMAN: Is it your understanding then
`that there are only two data points, one is the center, the
`pressure at the center --
`MR. DABNEY: Yes.
`JUDGE GROSSMAN: -- and the other data point is
`the pressure at an end. And the claim only says that the first
`data point in the center has to be greater than the data point at
`the end.
`
`MR. DABNEY: Correct.
`JUDGE GROSSMAN: Is there anything about
`progressive pressure between the center and the end?
`MR. DABNEY: No, no.
`JUDGE GROSSMAN: Why has -- do you have
`figure 7 on the screen?
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`MR. DABNEY: Yeah.
`JUDGE GROSSMAN: I wonder if you could help
`me try and understand what figure 7 is. I know what the patent
`says. The patent says figure 7 is a graph showing change in
`pressure distribution at the tip end of the blade according to
`the invention in Arai.
`MR. DABNEY: Yes.
`JUDGE GROSSMAN: Figure 7 doesn't have any
`labels about what a tip end, where the center is. All I see are
`three curves labeled high, medium, and low. And I don't -- I
`can't tell from figure 7 where the tip is, where the center is, or
`what that pressure distribution curve is trying to tell me, but
`maybe you can explain what that is showing, at least your
`understanding of it.
`MR. DABNEY: My understanding, which was the
`Board's previous understanding, is that if you put that Arai
`wiper down on a windshield and you measured what the contact
`force was along its length, it would -- the two P's indicate the
`two yoke pressure points shown here in the drawing.
`And that it shows that the pressure is higher in a
`center section than in both of the end sections, according to the
`force distribution curve on the graph.
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`JUDGE GROSSMAN: So is it your position that
`the figure 7 force distribution curve is a distribution of the
`structure that is shown in, for example, Arai figure 5 or figure
`6?
`
`MR. DABNEY: Yes.
`JUDGE GROSSMAN: And what are the indications
`of high, medium, and low? They seem to be three different
`curves. So what does the high pressure curve show different
`from what the low pressure curve shows?
`MR. DABNEY: Different amount of wiper arm
`
`force.
`
`what?
`
`JUDGE GROSSMAN: And that would be caused by
`
`MR. DABNEY: The tension, compression brought
`by the wiper arm, how much -- how many newtons are imposed
`on the wiper.
`JUDGE GROSSMAN: Is that a modified backing
`member? Would that change that pressure?
`MR. DABNEY: It would change the distribution of
`the pressure. It wouldn't necessarily change the wiper arm
`force.
`
`JUDGE GROSSMAN: Which is what figure 7 is
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`trying to show is the distribution.
`MR. DABNEY: Exactly.
`JUDGE GROSSMAN: So if we look at figure 5
`that has one embodiment and then figure 6, which has a
`different backing member, is there anything in Arai that
`suggests why we have -- why we have three curves there? We
`have two embodiments, one figure 5 and one figure 6, but we
`have three curves.
`MR. DABNEY: I have always interpreted that as
`showing different amount of wiper arm force. There can be
`different amount of wiper arm forces imposed on a structure.
`JUDGE GROSSMAN: Is there anything in the
`record that reinforces your view of what it shows?
`MR. DABNEY: I will have to leave that to -- I
`believe our expert has testified to that, Professor Davis.
`JUDGE GROSSMAN: Okay.
`MR. DABNEY: I unfortunately have left very little
`time, no time actually, to discuss the Swanepoel reference, but
`I will just refer the Board to the reference and the experts on
`that, that the Swanepoel as a secondary reference discloses
`everything that's recited in the claim. And you don't even need
`to make the obviousness combination that is asserted here.
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`So --
`JUDGE KAUFFMAN: Counsel, I understand you to
`be arguing that an ex parte appeal decision by the Board is
`binding in an AIA proceeding by the Board. Do you, in your
`briefs or here today, have any legal authority for that
`proposition?
`MR. DABNEY: There is a case that we cite in our
`brief, I believe it is Judge Rich opinion, that says, I think it is
`Lundberg or something like that, where a patent applicant, I
`think that was a case where an appeal was taken, it was lost.
`And then they filed a continuation. And they tried to relitigate
`the same issue in the continuation that they previously lost in
`the earlier case. And the Court held that they were not
`permitted to do that.
`Now, since we're in an administrative proceeding, I
`believe this Board has authority to decide for itself what
`preclusive effect it chooses to give to that earlier decision. I
`don't think it is controlled by what a federal court says. I
`believe this Board as a matter of its own juris prudence has the
`authority to make that decision. So it is entirely up to this
`Board.
`
`I mean, if there had been an intervening change in
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`the law or something like that that would justify a different
`outcome, that would be one thing. But we think that on a
`historical factual issue like this, is what would a person skilled
`in the art have understood was meant by the disclosure of Arai.
`And there is a considered decision by the Board and the Patent
`Owner chose not to appeal that decision, but acquiesced in the
`decision, and got a patent, which it has been asserting against
`people all the time since, that it ought not be allowed now after
`the patent has been issued for more than ten years to come in
`and argue that the prosecution history findings of this office
`that it acquiesced in were not correct.
`JUDGE KAUFFMAN: Thank you for that
`clarification.
`MR. DABNEY: So at this point I will subside and
`turn the dias over to opposing counsel.
`JUDGE SAINDON: Thank you.
`MR. HANNEMANN: Good morning, Your Honors.
`And may it please the Board, where I would like to begin this
`morning is with an issue that is of particular interest in this
`IPR but, in fact, carries through to all of them, which is Patent
`Owner's concern with the credibility of Dr. Davis, Petitioner's
`retained technical expert.
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`We made several arguments about that in the
`briefing, but the most important one, I don't believe that
`Petitioner really responded to. Could we switch to VGA?
`And the way I would like to go through this is I
`would like to show the Board some of the questions and
`answers from our deposition of Dr. Davis that were referred to
`in our briefing. So on page 5 of Dr. Davis's transcript, which
`is Patent Owner's Exhibit 2002, one of the first questions that
`we asked Dr. Davis is when he began to consider the issues
`that he is describing in his declarations in these inter partes
`reviews.
`
`And what he said was: "I suppose it's about a year
`ago now."
`We then asked him who wrote the declarations?
`And he gave an explanation that went on from page 5 to page
`6. He says: Well, you know, different people typed different
`things. These are my declarations. And he went on to explain
`how he left details to other people, but basically he did what
`he said he normally does, he works with the lawyers. We met.
`They talk over issues. They work on the drafts and that kind
`of thing back and forth.
`And, in fact, we asked another question on page 6
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent 8,099,823)
`
`asking Dr. Davis to clarify whether he is writing these
`declarations from scratch or working with counsel, and he
`again explained his process, you know, for example, he is not a
`good typist, so he would talk through the ideas and somebody
`else would type them down and then the drafts would go back
`and forth and he would make changes, et cetera, et cetera.
`We also asked him later in the deposition whether
`he had considered any of the obviousness or anticipation issues
`about the '698 patent before, and he said: Well, you know, I
`don't remember whether I considered those things in earlier
`litigations. He says it was like five years ago. In fact, it was
`three years, but he says it was like five years ago. He says he
`remembers looking at the '698 but he doesn't know what
`opinions he provided.
`JUDGE SAINDON: Counsel, can you give the page
`number, please?
`MR. HANNEMANN: I'm sorry, that is page 102 of
`the transcript, which is also page 102 of Exhibit 2002.
`JUDGE SAINDON: Thank you.
`MR. HANNEMANN: And also on that same page
`in the next question --
`JUDGE GROSSMAN: Mr. Hannemann, before you
`
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`Case Nos. IPR2016-00034 (Patent 6,973,698), IPR2016-00036 (Patent
`6,944,905), IPR2016-00038 (Patent 6,292,974), IPR2016-00039 (Patent
`7,228,588), IPR2016-00040 (Patent 7,484,264), and
`IPR2016-00041 (Patent
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