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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,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
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`CASE NO. IPR2016-00038
`U.S. Patent No. 6,292,974
`______________________
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`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. 1101) 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 ’974 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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`Hoyler.” This testimony is relevant to Costco’s position, argued at pages 5–8 of its
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`1
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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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`DATED: December 13, 2016
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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
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`Counsel for Patent Owner
`Robert Bosch LLC
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`2
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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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`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)
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`/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