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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 DAVID PECK
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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 David Peck. Petitioner
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`Costco Wholesale Corp. (“Costco”) submitted a declaration by Mr. Peck (Ex.
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`1100) with its Reply, and Bosch cross-examined Mr. Peck on December 2, 2016.
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`The complete transcript of the cross-examination is submitted herewith as Exhibit
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`2029. Also submitted herewith is an article written by Mr. Peck, Exhibit 2028,
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`which was introduced and served upon Costco at the deposition.
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`1.
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`In Exhibit 2029, on page 50, line 24 to page 52, line 12, Mr. Peck
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`testified that Ford purchased a variant of the Innovision product for one year but
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`found it didn’t work well, and no other OEMs purchased Innovision. This is
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`relevant to Costco’s arguments on pages 17–18 of its Reply. It is relevant because
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`it rebuts any assertion that Trico’s product (lacking a spoiler or end caps) was
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`commercially successful, and highlights the relative success of Bosch’s own beam-
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`blade products (including a spoiler and end caps).
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`2.
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`In Exhibit 2029, on page 53, line 24 to page 54, line 25, Mr. Peck
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`testified that there were no concerns regarding wind-lift in the Trico Innovision
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`product. He testified that it did not have a spoiler, because it did not need one; the
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`blade would not lift below 110 miles per hour. This testimony is relevant to the
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`1
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`position argued in Costco’s Reply, section II-A (pages 5–8), that wind-lift would
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`have been recognized as a problem among beam blades. It is relevant because it
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`demonstrates that, even after the filing date of the ’974 patent, companies actually
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`designing wiper blades did not believe their beam blades suffered from wind lift
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`problems significant enough to require spoilers.
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`3.
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`In Exhibit 2029, on page 68, line 12 to page 69, line 8, Mr. Peck
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`testified that Trico did not release any beam blade with a spoiler until
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`approximately 2006. This is relevant to Costco’s position, argued in its Reply at
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`pages 9–11, that it would have been obvious to use a conventional-blade spoiler
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`with a beam blade. It is relevant because, consistent with Bosch’s position, it
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`shows that the industry did not recognize the need for and possibility of spoilers on
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`beam blades until after the filing date of the ’974 patent, and contradicts any basis
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`for the conclusions or implications in Mr. Peck’s declaration that wiper designers
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`in 1997 (or before 2006) would have designed a beam blade with a spoiler.
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`4.
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`In Exhibit 2029, on page 70, line 25 to page 71, line 6, Mr. Peck
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`testified that a spoiler designed for a conventional (“whiffletree”1) blade would be
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`rigid, whereas a spoiler designed for a beam blade would be flexible. This
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`testimony is relevant to Costco’s position, argued in its Reply at pages 9–11, that it
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`1 Mr. Peck used the term “whiffletree” to refer to a conventional blade. See,
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`e.g., Ex. 2029 at 16:8–9, 36:16–18, 38:11–14, 41:20–21.
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`2
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`would have been obvious to use a conventional-blade spoiler with a beam blade. It
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`is relevant because it demonstrates that, consistent with Bosch’s position that
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`conventional blades and beam blades are fundamentally different (Response at 3–
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`5), the considerations for designing a spoiler for a beam blade would have been
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`fundamentally different from those for a conventional blade.
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`5.
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`In Exhibit 2029, on page 97, line 23 to page 98, line 19, Mr. Peck
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`testified that “[h]igher profile would make wind noise more of an issue for sure.”
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`This is relevant to Bosch’s arguments at pages 3–6 and 11–12 of its Response. It is
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`relevant because it supports Bosch’s position that artisans would not have thought
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`to add structures to a beam blade that increased its profile. It also supports Bosch’s
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`evidence (Ex. 2007 at ¶ 6) that the success of its products was attributable in part to
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`their being quiet (despite the inclusion of a spoiler), supporting a finding of non-
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`obviousness (see Response at 11–12).
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`6.
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`In Exhibit 2029, on page 109, line 16 to page 110, line 4, Mr. Peck
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`testified that the Innovision product “looked better because it was low profile, and
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`it didn’t restrict the vision” and that “looks on a passenger car seemed to be a main
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`driver for selling this particular type of blade.” This is relevant to Bosch’s position,
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`argued at pages 4 and 8–9 of its Response, that conventional blades impaired
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`driver visibility because of their high profiles. It is relevant because it shows that
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`3
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`an ordinary artisan would not have been motivated (in fact would have been de-
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`motivated) to add structures to the beam blade that increase their profiles.
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`7.
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`In Exhibit 2029, on page 86, line 23 to page 87, line 3, Mr. Peck
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`testified that Trico “wanted to get the air foil to compete with Bosch for European
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`potential applications.” This is relevant to Bosch’s position, argued at pages 7–15
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`of its Response, that secondary considerations support a finding of non-
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`obviousness. It is relevant because it shows that Trico was copying Bosch when it
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`eventually designed a beam blade with a spoiler2. See also Ex. 2029 at 77:6–14
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`(testifying to awareness of Bosch patents covering beam blades with spoilers).
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`8.
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`In Exhibit 2029, on page 7, lines 11 to 20, Mr. Peck testified that he
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`was being compensated at $150 per hour for his time preparing his declaration and
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`attending his deposition. This is relevant if Mr. Peck is, at least on certain issues, a
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`fact witness being paid for his recollections. See also Ex. 2029 at 112:19–114:22
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`(Mr. Peck, in response to leading questions from Costco’s counsel, contradicted his
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`prior testimony developed on cross-examination at 87:5–88:11). His declaration
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`therefore should be given minimal weight.
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`2 Mr. Peck used the term “air foil” to refer to a spoiler. See Ex. 2029 at 53:21–
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`23.
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`4
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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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`5
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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 DAVID
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`PECK 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