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 IPR2016-00038
`Patent 6,292,974
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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
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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.
`____________
`
`
`Case IPR2016-00038
`Patent 6,292,974
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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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`IPR2016-00038
`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 52). Patent Owner
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`presented eight 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 ’974
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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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`IPR2016-00038
`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 ’974 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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`Contrary to Patent Owner’s suggestion, the cited testimony of Mr. Peck
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`shows that the Trico Innovision wiper was fully understood to be subject to “wind
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`lift,” but that “wind lift” was not a practical concern in North America because of
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`speed limits here. Ex. 2029 at 54:4–15 (“Q: Why didn’t [Innovision] need one? A:
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`Because it wouldn’t lift ‘til above 110 miles an hour, and who drives a car in
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`America at 110 miles an hour in the rain? . . . We didn’t have to worry about things
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`like the Autobahn and super-high speeds.”). The cited testimony of Mr. Peck (id. at
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`53:24–54:25) also does not support Patent Owner’s broad assertion that
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`“companies . . . did not believe their beam blades suffered from wind lift problems
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`significant enough to require spoilers.” Mr. Peck’s testimony clearly refers to the
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`effect of speed limits in North America, not any lack of understanding that flat-
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`spring or “beam”-style wipers were subject to “wind lift” forces.
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`RESPONSE TO OBSERVATION NO. 3
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`The cited testimony of Mr. Peck shows that the Trico Innovision wiper was
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`fully understood to be subject to “wind lift,” but that “wind lift” was not a
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`2
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`IPR2016-00038
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`practical concern in North America because of speed limits here. Ex. 2029 at
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`54:4–15 (“Q: Why didn’t [Innovision] need one? A: Because it wouldn’t lift ‘til
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`above 110 miles an hour, and who drives a car in America at 110 miles an hour in
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`the rain? . . . We didn’t have to worry about things like the Autobahn and super-
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`high speeds.”); see supra Resp. to Observation 2. Mr. Peck’s testimony shows that
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`the industry recognized the “possibility” of spoilers on flat-spring wipers not later
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`than 1997 when he testified that computer programs, such as VariFlex, had such
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`capabilities at that time. Id. at 81:9–24 (“Q: . . . Was there any button or manual
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`option in the VariFlex software that said ‘Spoiler’ on it? [Objection] “A: . . . I
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`don’t know if he said spoiler or wind lift or whatever, but you had to put in the
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`profile. But there was a special routine for adding something above the line,
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`including a coupler. . . .”). The cited testimony (id. at 68:12–69:8) provides no
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`support for Patent Owner’s assertion that adding a spoiler to a flat spring or
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`“beam”-style wiper was beyond the skill of a person having ordinary skill in the art
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`of the ’974 Patent at the time the claimed invention was made.
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`RESPONSE TO OBSERVATION NO. 4
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`Mr. Peck testified, in the citation offered by Patent Owner (Ex. 2029 at
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`70:25–71:6), that the design process described in paragraph 8 of his declaration is
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`applicable to both conventional and flat wipers. Id. at 70:5–71:6 (“Q: Is Paragraph
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`3
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`IPR2016-00038
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`8 describing the design of a rigid spoiler? . . . [Objection] [A:] Well, if it were on a
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`whiffletree, it would be rigid. If it’s a beam blade, it’s a flexible structure.”).
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`Instead of supporting Patent Owner’s assertion that “considerations for designing a
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`spoiler” for conventional and flat-spring wipers “would have been fundamentally
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`different,” Mr. Peck’s testimony supports the opposite proposition—that the
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`process described in paragraph 8 of his declaration applies to both.
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`RESPONSE TO OBSERVATION NO. 5
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`Mr. Peck testified that the industry focused primarily on operational noise—
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`as opposed to wind noise. Ex. 2029 at 98:4–19 (“As I said in [my report], usually if
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`you actually are driving the vehicle, and you have all this engine noise; you have
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`all this – people have radios on. And one of the biggest noise generators from wind
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`noise happens to be side-view mirrors, which kind of drowned everything out.”).
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`The cited testimony of Mr. Peck (id. at 97:23–98:19) is not to the contrary, and
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`supports neither of Patent Owner’s assertions: that the success of Bosch’s products
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`“was attributable in part to their being quiet,” nor that designing a flat-spring wiper
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`with a spoiler required more than ordinary skill.
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`RESPONSE TO OBSERVATION NO. 6
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`Mr. Peck testified, in the citation offered by Patent Owner (Ex. 2029 at
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`109:16–110:4), that the main reason for commercialization of flat wipers
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`4
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`IPR2016-00038
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`(including those with spoilers) was for aesthetic, rather than practical reasons. See
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`also id. at 55:24–56:2 (“The primary reason people like beam blades was
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`aesthetics. They liked the way they looked.”). Mr. Peck further testified that,
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`depending on the application, designers would make a wiper appear smaller or
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`larger for aesthetic reasons. See id. at 56:13–22 (“So if you went to a beam blade
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`with a spoiler, it was a lot narrower and – you know, so it looked really cool. But if
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`you went to other markets, including today you go to the truck people; F-150,
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`Silverado, Ram 1500, Ford two and a half ton, you know, 250, 350, 450, they said
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`it looks flimsy. It looks cheap. It doesn’t look truck-like, and so they refused to
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`accept it.”). Patent Owner’s contrary assertion is unsupported and erroneous.
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`RESPONSE TO OBSERVATION NO. 7
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`Mr. Peck testified, in the citation offered by Patent Owner (Ex. 2029 at
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`86:23–87:3), that Trico sought to “compete” with Bosch, not to copy it, and his
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`testimony does not make any connection between the wiper disclosed and claimed
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`in the ’974 Patent and the Trico product. Id; see also id. at 13:14–16 (“Q: Did you
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`ever see them [the ’974 Patent and those in Petitioner’s related inter partes review
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`proceedings] while you were at Trico? A: No.”). Patent Owner’s assertion is
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`unsupported and erroneous.
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`5
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`IPR2016-00038
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`RESPONSE TO OBSERVATION NO. 8
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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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`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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`6
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`IPR2016-00038
`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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`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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`7
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`IPR2016-00038
`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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`74905743
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