Filed: December 23, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
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`Case IPR2016-00034
`Patent 6,973,698
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`____________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
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`MOTION FOR OBSERVATION ON
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`CROSS-EXAMINATION OF DAVID PECK
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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 IPR2016-00034
`Patent 6,973,698
`
`____________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
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`MOTION FOR OBSERVATION ON
`
`CROSS-EXAMINATION OF DAVID PECK
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`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`Pursuant to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,768 (Aug. 14, 2012) and the Board’s Scheduling Order (Paper 17), Costco
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`Wholesale Corp. (“Petitioner”) submits its Response to Patent Owner’s Motion for
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`Observation On Cross-Examination of David Peck (Paper 49). Patent Owner
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`presented four observations on the December 2, 2016 deposition testimony of Mr.
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`Peck (Ex. 2029). Although Petitioner responds to each of Patent Owner’s
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`observations, Petitioner respectfully requests that the Board decline to consider
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`Patent Owner’s Observations because they are excessively argumentative in
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`violation of the Office Patent Trial Practice Guide.
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`RESPONSE TO OBSERVATION NO. 1
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`Mr. Peck testified that the Trico Innovision product enjoyed considerable
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`commercial success. Ex. 2029 at 52:7–53:2. The cited testimony of Mr. Peck (id. at
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`50:24–52:12) is not to the contrary. Mr. Peck testified that the wiper to which
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`Patent Owner refers in its observation was offered to Ford as original equipment,
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`but the Innovision product was “designed mainly for the aftermarket.” Id. at
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`50:24–51:5; Ex. 1100 at ¶¶ 14–15. According to Mr. Peck the Ford wiper was
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`discontinued because of a problem unrelated to the subject matter of the ’698
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`Patent (i.e. its connection type). Id. at 51:21–24 (“[The Ford wipers] didn’t work
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`well ‘cause . . . they didn’t have the hook coupler . . . .”). Contrary to Patent
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`1
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`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`Owner’s suggestion, this testimony has no tendency to show that the subject matter
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`claimed in the ’698 Patent has experienced commercial success, either directly or
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`by comparison to the commercial success of the Trico Innovision wiper product.
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`RESPONSE TO OBSERVATION NO. 2
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`Mr. Peck testified to Trico’s process for determining a target pressure
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`distribution. Ex. 2029 at 92:14–94:20. In his testimony, Mr. Peck distinguished
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`between an optimum pressure distribution “in a section . . . of the glass” and the
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`pressure distribution required in operation. Id. (emphasis added). In context, the
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`“constant load everywhere” to which Mr. Peck referred applies to the initial
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`development of a pressure profile, before “the engineer would decide how to –
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`which one or a slight modification would be best fit for all of the sections. . . .
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`maybe two or 300 per specific lines which is positions on glass.” Id. at 92:18–20,
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`93:17–18. Contrary to Patent Owner’s assertion, the cited testimony of Mr. Peck
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`(id. at 93:19–94:20) does not say that the pressure distribution of a completed
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`wiper should be uniform. In fact, Mr. Peck testified that designers may “want to,
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`say, bias [the pressure distribution] more to the center or ends.” Id. at 94:2–3.
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`RESPONSE TO OBSERVATION NO. 3
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`Mr. Peck wrote in his article: “This [flat-spring wiper] replaces the current
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`standard blade superstructure that puts localized high load points onto the glass.”
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`2
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`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`Ex. 2028 at 1; Ex. 2029 at 101:16–19. In this context, the excerpt of Mr. Peck’s
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`article referenced in Patent Owner’s observation (see id. at 101:9–20)—that a
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`better wiper could be produced through “a more uniform pressure distribution”—
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`plainly refers to a narrow distribution (i.e. reducing pressure points caused by
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`conventional wipers) rather than the broad distribution with which the ’698 Patent
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`is concerned (i.e. relative pressures among sections,). See Resp. (Paper 26) at 9
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`(“Further, the ’698 patent itself acknowledges that ‘uniform’ contact force may not
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`be absolutely 100% uniform,” i.e. local non-uniformities are inevitable). Further,
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`the cited excerpt from Mr. Peck’s article supports Costco’s position that factors
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`other than the claimed subject matter of the ’698 Patent (e.g. being “better
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`looking”) were the “driving force behind the development” of flat-spring wipers.
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`See Reply (Paper 32) at 11–12. Mr. Peck confirmed. Ex. 2029 at 109:12–110:4
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`(explaining cited portion of Ex. 2028, “looks on a passenger car seemed to be a
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`main driver for selling this particular type of blade.”) (redirect); id. at 55:24–56:2
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`(“The primary reason people like beam blades was aesthetics. They liked the way
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`they looked.”) (cross-examination).
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`RESPONSE TO OBSERVATION NO. 4
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`Mr. Peck explicitly stated that he was hired to “be an industry expert.” Ex.
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`2029 at 12:5–6. Patent Owner’s observation, on its face, is irrelevant to any of the
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`3
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`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`arguments or evidence at issue in this proceeding. It is well-established that
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`“[t]estimony in the dual roles of both a fact witness and an expert witness . . . is
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`permissible provided that the district court takes precautions to minimize potential
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`prejudice.” United States v. Farmer, 543 F.3d 363, 370 (7th Cir. 2008). Here,
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`where there are no concerns of confusing the jury, “[t]he gatekeeping function of
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`the court is relaxed . . . because the court is better equipped than a jury to weigh the
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`probative value of expert evidence.” Traxys N. Am., LLC v. Concept Mining, Inc.,
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`808 F. Supp. 2d 851, 853 (W.D. Va. 2011). Mr. Peck is indisputably testifying
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`from his own personal observation and rational perception. Further, the questions
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`asked under redirect simply clarify the questions put by Patent Owner’s counsel,
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`and Mr. Peck’s responses are not inconsistent.1
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`1 Paragraph 11 of Mr. Peck’s declaration (Ex. 1100), the subject about which Mr.
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`Peck was being questioned, concerns general composite beam modeling, including
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`a single sentence describing VariFlex. However, Patent Owner’s counsel asked Mr.
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`Peck if he had ever “us[ed] software other than VariFlex?” Ex. 2029 at 87:5–8. In
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`each answer, Mr. Peck clarified that while VariFlex was the only program Trico
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`had, he never limited the general method to VariFlex only. See id. at 87:5–88:11.
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`On redirect, Mr. Peck was asked whether each sentence (other than the one noted)
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`was limited to VariFlex, and answered in the negative. See id. at 112:19–114:22.
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`4
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`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`Dated: December 23, 2016
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`Respectfully Submitted,
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`/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 Corporation
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`5
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`IPR2016-00034
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 23rd day of December, 2016, the foregoing
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`Petitioner’s Response
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`to Patent Owner’s Motion
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`for Observation on
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`Cross-Examination of David Peck was served in its entirety by email on the
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`attorneys of record for Patent Owner:
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`Patrick R. Colsher (patrick.colsher@shearman.com)
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`Mark Hannemann (mark.hannemann@shearman.com)
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`Joseph Purcell (joseph.purcell@shearman.com)
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`/James R. Klaiber/
`James R. Klaiber
`Registration No. 41,902
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