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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 IPR2016-00036
`Patent 6,944,905
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`____________
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`PETITIONER’S RESPONSE TO PAPER NO. 56 STYLED
`“PATENT OWNER’S LIST OF IMPROPER REPLY ARGUMENTS,
`PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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`IPR2016-00036
`PETITIONER’S RESPONSE TO PAPER NO. 56 STYLED “PATENT OWNER’S LIST OF
`IMPROPER REPLY ARGUMENTS, PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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`U.S. Patent No. 3,428,679 (“Barth”). Patent Owner asserts that the Board
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`purportedly erred in its Order issued December 12, 2016 (“Order,” Paper 44)
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`holding that Petitioner was entitled to rely on Barth to rebut Patent Owner’s factual
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`assertion that, prior to August 21, 1997, persons having ordinary skill in the wiper
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`art prior purportedly did not understand the causes of wiper “wind lift” and
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`purportedly harbored an erroneous and false belief that flat spring wipers were not
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`subject to “wind lift.” Patent Owner’s assertion of “improper reply argument” as to
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`this point amounts to a meritless and unsupported motion for reconsideration.
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`The Petition presented evidence that “liftoff tendency” at high speeds was a
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`known problem potentially affecting windshield wipers prior to the claimed
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`invention date. Pet., Paper 1 at 27 (quoting U.S. Patent No. 6,292,974 to Merkel
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`(“Merkel,” Exs. 1011, 1012). Bosch countered that liftoff tendency was
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`purportedly unknown in flat-spring wipers. See Resp., Paper 28 at 10-11. Costco’s
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`rebuttal cited Barth (Exs. 1016, 2009), to explain that liftoff tendency is common
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`to conventional and flat-spring wipers. See Reply, Paper 34 at 6 (citing Resp.,
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`Paper 28 at 8-10). Costco’s argument is neither new nor based on new evidence,
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`does not introduce a new motivation to combine, and is proper rebuttal argument.
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`See Order at 5-6; see also 37 C.F.R. 42.23(b); Belden Inc. v. Berk-Tek LLC, 805
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`F.3d 1064, 1077-82 (Fed. Cir. 2015) (finding new reply expert testimony proper);
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`1
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`IPR2016-00036
`PETITIONER’S RESPONSE TO PAPER NO. 56 STYLED “PATENT OWNER’S LIST OF
`IMPROPER REPLY ARGUMENTS, PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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`Pet., Paper 1 at 20-21, 35-37; Ex. 1007 at ¶ 27; Ex. 1008 at 45-46.
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`Reason to Combine. In its response to the Petition, Patent Owner asserted
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`that “conventional wisdom taught to avoid adding anything that would alter a beam
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`blade’s highly sensitive profile because even a slight [sic, change] would have a
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`negative impact on blade performance.” Resp., Paper 28 at 11. Costco’s rebuttal
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`cited Merkel (Ex. 1012) as evidence that Patent Owner’s “conventional wisdom”
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`assertion was unsupported and wrong. See Reply, Paper 34 at 7 (citing Resp.,
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`Paper 28 at 11). Costco’s reply argument is neither new nor based on new evidence
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`(see Pet., Paper 1 at 4, 26-27, 35-37; Ex. 1007 at ¶ 28), does not introduce a new
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`motivation to combine, and is proper rebuttal argument. See Belden, 805 F.3d at
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`1077-82; 37 § C.F.R. 42.23(b); Order at 3, n.1.
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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 Corp.
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`2
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`IPR2016-00036
`PETITIONER’S RESPONSE TO PAPER NO. 56 STYLED “PATENT OWNER’S LIST OF
`IMPROPER REPLY ARGUMENTS, PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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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 to Petitioner’s Response to Paper No. 56 Styled “Patent
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`Owner’s List of Improper Reply Arguments, Pursuant to the Board’s December 12
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`Order” was served in its entirety by email on the attorneys of record for Patent
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`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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`74893477
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