`
`
`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 PAPER NO. 52 STYLED
`“PATENT OWNER’S LIST OF IMPROPER REPLY ARGUMENTS,
`PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00034
`PETITIONER’S RESPONSE TO PAPER NO. 52 STYLED “PATENT OWNER’S LIST OF
`IMPROPER REPLY ARGUMENTS PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
`
`
`U.S. Patent No. 3,428,679 (“Barth”). Patent Owner asserts that the Board
`
`purportedly erred in its Order issued December 12, 2016 (“Order,” Paper 41) hold-
`
`ing that Petitioner was entitled to rely on Barth to rebut Patent Owner’s factual as-
`
`sertion that, prior to August 21, 1997, persons having ordinary skill in the wiper art
`
`purportedly did not understand the causes of wiper “wind lift” and purportedly
`
`harbored an erroneous and false belief that flat spring wipers were not subject to
`
`“wind lift.” Patent Owner’s assertion in this regard amounts to a meritless and
`
`wholly unsupported motion for reconsideration. It is, moreover, a gratuitous asser-
`
`tion in this IPR2016-00034 which does not involve Barth, wind lift, or spoiler
`
`structures of any kind.
`
`U.S. Patent No. 5,325,564 (“Swanepoel”). In its Institution Decision, the
`
`Board stated it was “persuaded, for purposes of this Decision, that Swanepoel dis-
`
`closes a wiper blade wherein the contact force of the wiper strip may be greater in
`
`the center section than in at least one of the two end sections, as required by claim
`
`1 . . . .” Paper 16 at 30. Patent Owner then asserted that “[t]he Board is incorrect
`
`for four reasons” (Response, Paper 26 at 32-33), each of which “reasons” presup-
`
`posed that 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,” should be judi-
`
`cially re-written to read, “said contact force of said wiper strip being greater in said
`
`1
`
`
`
`IPR2016-00034
`PETITIONER’S RESPONSE TO PAPER NO. 52 STYLED “PATENT OWNER’S LIST OF
`IMPROPER REPLY ARGUMENTS PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
`
`center section than in the entirety of at least one of said two end sections” (see id.
`
`at 34 (asserting for the first time that decreased force in Swanepoel is not “in the
`
`whole end section”); id. at 35 (asserting for the first time that decreased force in
`
`Swanepoel is not “in the entire end section”)), and thus exclude Swanepoel’s dis-
`
`closure of decreased contact force at “the very ‘tip’ of a wiper.” Id. at 32.
`
`In reply, Petitioner contested Patent Owner’s proposed re-writing of the claim
`
`and presented evidence confirming that a person skilled in the art would under-
`
`stand that the “tip” of a wiper is “in” the wiper’s “end section,” such that Swa-
`
`nepoel’s disclosure of zero contact force at the tip of a wiper teaches a contact
`
`force that is lower in an end section than in the wiper’s center as the existing claim
`
`language requires. Reply, Paper 32 at 20-21. Petitioner’s reply introduced no new
`
`theory or evidence, and was proper rebuttal. See Belden Inc. v. Berk-Tek LLC, 805
`
`F.3d 1064, 1077-82 (Fed. Cir. 2015); 37 C.F.R. § 42.23(b); Order at 3, n.1.
`
`Dated: December 23, 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.
`
`
`
`2
`
`
`
`
`IPR2016-00034
`PETITIONER’S RESPONSE TO PAPER NO. 52 STYLED “PATENT OWNER’S LIST OF
`IMPROPER REPLY ARGUMENTS PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 23rd day of December, 2016, the foregoing Peti-
`
`tioner’s Response to Paper No. 52 Styled “Patent Owner’s List of Improper Reply
`
`Arguments Pursuant to the Board’s December 12 Order” 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
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
