UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00036
`U.S. Patent No. 6,944,905
`______________________
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`
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`PATENT OWNER’S MOTION FOR OBSERVATION ON CROSS-
`EXAMINATION OF GREGORY DAVIS
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`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00036
`U.S. Patent No. 6,944,905
`______________________
`
`
`
`PATENT OWNER’S MOTION FOR OBSERVATION ON CROSS-
`EXAMINATION OF GREGORY DAVIS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`Pursuant to the Scheduling Order (Paper 17) and the Office Patent Trial
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`Practice Guide, Patent Owner Robert Bosch LLC (“Bosch”) moves the Board to
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`observe the following passages in the cross-examination of Gregory Davis.
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`Petitioner Costco Wholesale Corp. (“Costco”) submitted a declaration by Dr.
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`Davis (Ex. 1102) with its Reply, and Bosch cross-examined Dr. Davis on
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`November 30, 2016. The complete transcript of the cross-examination is submitted
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`herewith as Exhibit 2030.
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`1.
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`In Exhibit 2030, at page 120, lines 9–13, Dr. Davis testified that
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`Prohaska’s spoiler designs were for conventional blades, but “that’s why I was
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`looking at the idea of the combination of Prohaska with, like, Appel or Hoyler.”
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`This testimony is relevant to Costco’s position, argued at pages 5–8 of its Reply,
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`that it would have been obvious to apply conventional-blade spoilers to beam
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`blades. It is relevant because, consistent with Bosch’s arguments in its Response, it
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`shows that Dr. Davis (and, by extension, Costco) is using the ’905 patent as a
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`roadmap to construct a hindsight-driven obviousness argument.
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`2.
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`In Exhibit 2030, on page 131, lines 8–12, Dr. Davis testified,
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`“Whether or not they would literally try to take the spoiler as is from Prohaska and
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`combine it with Appel or Hoyler, I don’t think that’s the point. It’s the idea of
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`what’s disclosed in Prohaska in applying it to these beam-style blades of Appel and
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`
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`1
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`
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`Hoyler.” This testimony is relevant to Costco’s position, argued at pages 5–8 of its
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`Reply, that it would have been obvious to apply conventional-blade spoilers to
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`beam blades. It is relevant because Dr. Davis implicitly acknowledges that changes
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`would be required to adapt Prohaska’s spoiler to Hoyler’s beam blade, but does not
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`account for what those changes might be or how they might have been
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`implemented.
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`3.
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`In Exhibit 2030, on page 97, lines 18–22, Dr. Davis, in response to a
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`question about the teachings of Merkel (’974 patent, Ex. 1012, at 2:30–35),
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`testified, “So if we were to make another element that was sizeable in cross-section
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`that is stiffer than the support element, that then could impair the design. We
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`would have to redesign the system.” This is relevant to Costco’s argument, in its
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`Reply at pages 12–13 (citing Merkel, among others), that beam blades were not
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`thought to be sensitive to small changes in structure, as Bosch argued in its
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`Response.
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`4.
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`In Exhibit 2030, on page 98, lines 17–22, Dr. Davis testified that the
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`same passage in Merkel referred to in Observation 3 is referring specifically to
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`beam blades (in particular, a “support element” which is a beam-blade component).
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`This is relevant to the same argument as Observation 3. It is relevant because it
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`confirms Merkel’s teaching, consistent with Bosch’s position in its Response, that
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`beam blades in particular are affected by small changes to their structure. See also
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`2
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`Ex. 2030 at 102:3–11 (clarifying that the “support element” described by Merkel is
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`specifically one which is “able to function in the absence of the claw and [yoke]
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`system of a traditional wiper blade.”)
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`5.
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`In Exhibit 2030, on page 107, line 15 to page 108, line 8, Dr. Davis
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`testified that the ’905 patent itself (at 1:49–52) contains “precisely” the same
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`teaching as Merkel referred to in Observation 3. This is relevant to Costco’s
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`argument on page 13 of its Reply that the ’905 patent does not contain support for
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`Bosch’s position that beam blades are sensitive to small changes in their structure.
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`It is relevant because this passage does in fact support Bosch’s position by
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`acknowledging that spoilers like those in Merkel can affect the rigidity and
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`behavior of a beam blade. See also Ex. 2030 at 109:19–23 (acknowledging that this
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`passage in the ’905 patent is referring to Merkel’s beam blade).
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`
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`DATED: December 13, 2016
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`
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`Respectfully submitted,
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`Shearman & Sterling LLP
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`/Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`Mark A. Hannemann (pro hac vice)
`Joseph M. Purcell, Jr. (pro hac vice)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Counsel for Patent Owner
`Robert Bosch LLC
`3
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`
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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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`MOTION FOR OBSERVATION ON CROSS-EXAMINATION OF GREGORY
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`DAVIS was served via electronic mail on December 13, 2016, on the following
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`counsel for Petitioner:
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`
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`
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`
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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)
`Stefanie Lopatkin (stefanie.lopatkin@hugheshubbard.com)
`James Dabney (james.dabney@hugheshubbard.com)
`
`/Patrick R. Colsher/
`Patrick R. Colsher
`Reg. No. 74,955
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Counsel for Patent Owner
`Robert Bosch LLC
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