`U.S. Patent No. 6,292,974
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00038
`U.S. Patent No. 6,292,974
`______________________
`
`
`
`PATENT OWNER’S LIST OF IMPROPER REPLY ARGUMENTS,
`PURSUANT TO THE BOARD’S DECEMBER 12 ORDER
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
`Patent Owner recognizes the Board’s ruling on arguments concerning the
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`Barth reference, but disagrees, and includes the following paragraph in its
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`submission in an effort to explain why, and to illustrate the kinds of issues that are
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`involved with the arguments listed below. Patent Owner joins with Petitioner in
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`requesting briefing on these issues (see Ex. 1108 at 33–36).
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`In the challenged section of its reply in IPR2016-00038, Petitioner argued
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`that the Barth reference—which was not part of any proposed or instituted ground
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`of unpatentability—taught that wind lift is caused by the rubber wiper strip
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`“common to all wipers” and that Barth’s analysis “applies equally to all wipers . . .
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`regardless of whether they have a flat-spring or conventional-style support
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`structure” (Reply at 5–8). Before the reply was served, Patent Owner had no
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`notice that the Barth reference was alleged to have taught that wind lift is a
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`problem for beam blades. If notice had been given in the petition or in the
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`institution decision, Patent Owner would have contested it in its responsive brief
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`and responsive evidence (for example because Barth teaches only a conventional
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`blade with pressure applied to the wiper strip at four discrete points along the
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`length of the blade, and does not teach that wind lift caused by the wiper strip
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`would be a problem also in beam blades, where the beam applies a nearly uniform
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`pressure along the entire length of the wiper strip, and so the pressure of the wiper
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`1
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
`arm, being evenly distributed, would resist wind lift along the entire length of the
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`flexible wiper strip).
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`Improper Reply Argument 1, found in the Reply at 3:3–5 and Section IIA:
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`improper because it presents prior art (Barth) outside the grounds, on which it
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`bases the new argument that wind lift was known to be a problem in beam blades
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`as in conventional blades.
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`Improper Reply Argument 2, found in the Reply at 3:6–9 and Section IIB:
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`improper because it presents prior art (Ludwig) outside the grounds, on which it
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`bases the new argument that a beam blade with a spoiler structure above the beam
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`was known in the art.
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`
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`DATED: December 16, 2016
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`
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`Respectfully submitted,
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`Shearman & Sterling LLP
`
`/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
`
`Counsel for Patent Owner
`Robert Bosch LLC
`
`
`
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`2
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`
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
`
`Certificate of Service
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`LIST OF IMPROPER REPLY ARGUMENTS, PURSUANT TO THE BOARD’S
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`DECEMBER 12 ORDER was served via electronic mail on December 16, 2016,
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`on the following 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)
`
`
`
`
`
`/Patrick R. Colsher/
`Patrick R. Colsher
`Reg. No. 74,955
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`
`Counsel for Patent Owner
`Robert Bosch LLC
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