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 IPR2016-00036
`Patent 6,944,905
`____________
`
`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 IPR2016-00036
`Patent 6,944,905
`____________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON
`CROSS-EXAMINATION OF GREGORY DAVIS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00036
`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 51). Patent
`
`Owner presented five 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 120:9-13), when viewed in
`
`context (see id. at 87:11-89:18, 116:20-127:9), supports Petitioner’s contentions
`
`(see Pet., Paper 1 at 21-23, 26-27; Ex. 1007 ¶ 27; Ex. 1008 at 45-46; Reply, Paper
`
`34 at 5-8) that wind lift was a problem known to affect both conventional and flat-
`
`spring wipers, and that a person of ordinary skill in the art would have been able to
`
`select the stiffness and bending properties of the components of Prohaska and
`
`Hoyler in combining the teachings of those references to solve the well-known
`
`wind lift problem. See Ex. 2030 at 118:16-21 (“Q: The question is, does Prohaska
`
`teach a person of ordinary skill in the art how to calculate the relative stiffness and
`
`1
`
`
`
`IPR2016-00036
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS-EXAMINATION OF GREGORY DAVIS
`
`bending properties of different spoilers and springs? A: Well, one of ordinary skill
`
`in the art would already know how to do that.”).
`
`RESPONSE TO OBSERVATION NO. 2
`
`The cited testimony of Dr. Davis (Ex. 2030 at 131:8-12), when viewed in
`
`context (see id. at 129:18-131:14), supports Petitioner’s contention (see Pet., Paper
`
`1 at 34-37; Reply, Paper 34 at 5-8, 13-14) that combining Prohaska and Hoyler
`
`would have required no more than ordinary skill in the art. In particular, Dr. Davis
`
`expressly explained that a person of ordinary skill would have been able to perform
`
`the calculations and make material selections needed to take “what’s disclosed in
`
`Prohaska” and “apply[] it to these beam-style blades of . . . Hoyler.” Ex. 2030 at
`
`131:12-14. Patent Owner’s contrary suggestion is unsupported and erroneous.
`
`RESPONSE TO OBSERVATION NO. 3
`
`The cited testimony of Dr. Davis (Ex. 2030 at 97:18-22), when viewed in
`
`context (see id. at 97:5-98:16, 102:13-106:21, 112:12-115:7), supports Petitioner’s
`
`contentions (see Reply, Paper 34 at 13) that DE 19736368 to Merkel (“Merkel”;
`
`Exs. 1011, 10121) does not describe any “sensitivity” of flat-spring wipers, and
`
`selecting the materials and stiffnesses of flat-spring wiper components required no
`
`
`1 U.S. Patent No. 6,292,974 (Ex. 1012) is the U.S. counterpart to DE 19736368
`
`(Ex. 1011).
`
`2
`
`
`
`IPR2016-00036
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS-EXAMINATION OF GREGORY DAVIS
`
`more than ordinary skill in the art. Patent Owner’s contrary suggestion is
`
`unsupported and erroneous.
`
`RESPONSE TO OBSERVATION NO. 4
`
`The cited testimony of Dr. Davis (Ex. 2030 at 98:17-22, 102:3-11), when
`
`viewed in context (see id. at 98:17-100:21), supports Petitioner’s contention (see
`
`Reply, Paper 34 at 13-14) that Merkel does not teach that flat-spring wipers are
`
`affected by “small changes” in their structure. As described above (see supra Resp.
`
`to Observation 3), Dr. Davis explained that the “design considerations” (i.e., the
`
`stiffness and material properties) of the components of flat-spring wipers are
`
`common to flat-spring and conventional wipers. Ex. 2030 at 98:17-100:21.
`
`RESPONSE TO OBSERVATION NO. 5
`
`The cited testimony of Dr. Davis (Ex. 2030 at 107:15-108:8, 109:19-23),
`
`when viewed in context (see Ex. 2030 at 106:23-113:18), supports Petitioner’s
`
`contention (see Reply, Paper 34 at 13-14) that the ’905 patent does not teach that
`
`flat-spring wipers are affected by “small changes” to their structure. As described
`
`above (see supra Resps. to Observations 3, 4), there is no such teaching in Merkel.
`
`Furthermore, Dr. Davis explained that designing the stiffness of the components of
`
`flat-spring wipers is a “design consideration” and requires no more than ordinary
`
`skill in the art. Ex. 2030 at 106:23-108:8; see also id. at 105:4-106:21.
`
`3
`
`
`
`IPR2016-00036
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS-EXAMINATION OF GREGORY DAVIS
`
`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.
`
`
`
`4
`
`
`
`IPR2016-00036
`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
`
`
`74902729
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
