Filed: December 22, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00034
`Patent 6,973,698
`____________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON
`CROSS-EXAMINATION OF GREGORY DAVIS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00034
`Patent 6,973,698
`____________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON
`CROSS-EXAMINATION OF GREGORY DAVIS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR OBSERVATION ON
`CROSS-EXAMINATION OF GREGORY DAVIS
`
`
`Pursuant to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,768 (Aug. 14, 2012), and the Board’s Scheduling Order (Paper 17), Costco
`
`Wholesale Corp. (“Petitioner”) submits its Response to Patent Owner’s Motion
`
`for Observation on Cross-Examination of Gregory Davis (Paper 48). Patent
`
`Owner presented eight observations on the November 30, 2016 deposition
`
`testimony of Dr. Davis (Ex. 2030). Although Petitioner responds to each of Patent
`
`Owner’s observations, Petitioner respectfully requests that the Board decline to
`
`consider Patent Owner’s Observations because they are excessively argumentative
`
`in violation of the Office Patent Trial Practice Guide.
`
`RESPONSE TO OBSERVATION NO. 1
`
`The cited testimony of Dr. Davis (Ex. 2030 at 55:16-23), when taken in
`
`context (see id. at 54:22-59:14), supports Petitioner’s contentions that U.S. Patent
`
`No. 4,807,326 to Arai et al. (“Arai”) teaches a non-uniform force distribution with
`
`greater force applied at the center and less force applied at the end sections, and
`
`that both Arai and U.S. Patent No. 4,028,770 to Appel (“Appel ’770”) are directed
`
`to improving wiping quality. See Pet., Paper 1 at 39-40; Reply, Paper 32 at 9-10. In
`
`particular, Dr. Davis explained that such a person would understand that a wiper’s
`
`pressure distribution is “never uniform,” and that Arai and Appel ’770 are both
`
`directed to improving wiping quality by improving pressure distribution. See Ex.
`
`1
`
`
`
`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR OBSERVATION ON
`CROSS-EXAMINATION OF GREGORY DAVIS
`
`2030 at 54:22-56:11, 58:13-59:14.
`
`RESPONSE TO OBSERVATION NO. 2
`
`The cited testimony of Dr. Davis (Ex. 2030 at 56:15-57:7), when taken in
`
`context (see id. at 54:22-59:14; supra Resp. to Observation 1), supports
`
`Petitioner’s contentions (see Pet., Paper 1 at 17-18, 36; Reply, Paper 32 at 3) that
`
`Arai discloses a non-uniform force distribution with greater force applied at the
`
`center and less force applied at the end sections. In particular, Dr. Davis explicitly
`
`indicated that (1) Arai and Appel ’770 are “both talking about improved wiping
`
`quality,” and (2) Arai disclosed “a way of improving the force distribution” which
`
`included a greater force applied at the center and less force applied at the end
`
`sections. Ex. 2030 at 56:15-57:14, 58:3-11.
`
`RESPONSE TO OBSERVATION NO. 3
`
`The cited testimony of Dr. Davis (Ex. 2030 at 62:7-10), when taken in
`
`context (see id. at 61:14-62:10; supra Resps. to Observations 1, 2), supports
`
`Petitioner’s contention that Arai teaches a non-uniform force distribution with
`
`greater force applied at the center than in the end sections.
`
`RESPONSE TO OBSERVATION NO. 4
`
`The cited testimony of Dr. Davis (Ex. 2030 at 22:11-23:22, 27:20-25), when
`
`taken in context (see id. at 19:3-22:10), supports Petitioner’s contentions (see Pet.,
`
`2
`
`
`
`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR OBSERVATION ON
`CROSS-EXAMINATION OF GREGORY DAVIS
`
`Paper 1 at 25-26, 44-46; Reply, Paper 32 at 19-22) that U.S. Patent No. 5,325,564
`
`to Swanepoel (“Swanepoel”) discloses a wiper whose support element (1) applies
`
`greater force at the center than in the end sections, and (2) distributes contact
`
`pressure along the entire length of the wiper strip. In particular, Dr. Davis
`
`explained that in annotating figure 4, “I’ve added some red lines to illustrate what
`
`Swanepoel talked about in the text.” Ex. 2030 at 20:5-7.
`
`RESPONSE TO OBSERVATION NO. 5
`
`The cited testimony of Dr. Davis (Ex. 2030 at 40:20-41:14), when taken in
`
`context (see id. at 35:13-41:14; supra Resp. to Observation 4), supports
`
`Petitioner’s contentions (see Pet., Paper 1 at 25-26, 44-46; Reply, Paper 32 at 19-
`
`22) that Swanepoel discloses a wiper whose support element (1) applies greater
`
`force at the center than in the end sections, and (2) distributes contact pressure
`
`along the entire length of the wiper strip. In particular, Dr. Davis explained why a
`
`person of ordinary skill would not need structural details to understand
`
`Swanepoel’s disclosure of these features, in particular because such a person
`
`would have understood that Swanepoel gives “design guidance” on “how to design
`
`the wiper blades.” Ex. 2030 at 40:19-41:14.
`
`RESPONSE TO OBSERVATION NO. 6
`
`The cited testimony of Dr. Davis (Ex. 2030 at 38:21-39:11), when taken in
`
`3
`
`
`
`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR OBSERVATION ON
`CROSS-EXAMINATION OF GREGORY DAVIS
`
`context (see id. at 19:3-22:10; 35:13-41:14; supra Resps. to Observations 3, 4),
`
`supports Petitioner’s contention (see Pet., Paper 1 at 25-26, 44-46; Reply, Paper 32
`
`at 19-22) that Swanepoel discloses contact pressure distributed along the entire
`
`length of the wiper strip. In particular, Dr. Davis explained that Patent Owner’s
`
`understanding of Swanepoel (see Resp., Paper 26 at 35) is “physically silly”
`
`because a person of ordinary skill in the art would not have understood Swanepoel
`
`to have zero force at areas other than the extremities of the wiper tips. Ex. 2030 at
`
`39:3-11.
`
`RESPONSE TO OBSERVATION NO. 7
`
`The cited testimony of Dr. Davis (Ex. 2030 at 39:18-40:6), when taken in
`
`context (see id. at 39:12-17; see also id. at 19:3-22:10, 35:13-41:14; supra Resps.
`
`to Observations 3, 4, 6), supports Petitioner’s contention (see Pet., Paper 1 at 25-
`
`26, 44-46; Reply, Paper 32 at 19-22) that Swanepoel discloses a wiper whose
`
`support element distributes contact pressure along the entire length of the wiper
`
`strip. In particular, Dr. Davis explained that a person of ordinary skill would
`
`understand Swanepoel to describe the force as decreasing from a constant value to
`
`zero at the ends, and that such a person would not design a wiper “that goes to 0
`
`before the end . . .” because “it wouldn’t be functioning as a wiper blade.” Ex.
`
`2030 at 39:13-25.
`
`4
`
`
`
`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR OBSERVATION ON
`CROSS-EXAMINATION OF GREGORY DAVIS
`
`
`RESPONSE TO OBSERVATION NO. 8
`
`The cited testimony of Dr. Davis (Ex. 2030 at 48:9-49:14), when taken in
`
`context (see id. at 49:16-50:14, 51:4-52:2), supports Petitioner’s contentions (see
`
`Pet., Paper 1 at 25-26, 44-46; Reply, Paper 32 at 19-22) that Swanepoel discloses a
`
`greater force applied at the center of a wiper than in its end sections, and that claim
`
`1 of the ’698 Patent does not require that the contact force in some vaguely
`
`described “whole” or “entire” end section must be lower than the force in the
`
`center.
`
`Dated: December 22, 2016
`
`Respectfully Submitted,
`
`/James R. Klaiber/
`James R. Klaiber
`Registration No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004
`James.klaiber@hugheshubbard.com
`(212) 837-6125
`Attorney for Petitioner Costco Wholesale Corp.
`
`
`
`5
`
`
`
`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS-EXAMINATION OF GREGORY DAVIS
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 22nd day of December, 2016, the foregoing
`
`Petitioner’s Response to Patent Owner’s Motion for Observation on Cross-
`
`Examination of Gregory Davis was served in its entirety by email on the attorneys
`
`of record for Patent Owner:
`
`•
`
`•
`
`•
`
`Patrick R. Colsher (patrick.colsher@shearman.com)
`
`Mark Hannemann (mark.hannemann@shearman.com)
`
`Joseph Purcell (joseph.purcell@shearman.com)
`
`/James R. Klaiber/
`James R. Klaiber
`Registration No. 41,902
`
`
`74902801
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
