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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
`MOTION FOR OBSERVATION
`CROSS-EXAMINATION OF GREGORY DAVIS
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`IPR2016-00038
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF GREGORY DAVIS
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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
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`for Observation On Cross-Examination of Gregory Davis (Paper 51). Patent
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`Owner presented two observations on the November 30, 2016 deposition
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`testimony of Dr. Davis (Ex. 2030). Although Petitioner responds to each of Patent
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`Owner’s observations, Petitioner respectfully requests that the Board decline to
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`consider Patent Owner’s Observations because they are excessively argumentative
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`in violation of the Office Patent Trial Practice Guide.
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`RESPONSE TO OBSERVATION NO. 1
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`The cited testimony of Dr. Davis (Ex. 2030 at 120:9-13), when viewed in
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`context (see id. at 87:11-89:18, 116:20-127:9), supports Petitioner’s contention
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`(see Pet., Paper 1 at 22-24; Ex. 1008 ¶ 29; Ex. 1012 at 45-46; Reply, Paper 33 at 5-
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`11) that wind lift was a problem known to affect both conventional and flat-spring
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`wipers, and that a person of ordinary skill in the art would have been able to select
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`the stiffness and bending properties of the components of Prohaska and Appel, or
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`of Prohaska and Hoyler, in combining the teachings of those references to solve
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`the well-known wind lift problem. See Ex. 2030 at 118:16-21 (“Q: The question is,
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`does Prohaska teach a person of ordinary skill in the art how to calculate the
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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 GREGORY DAVIS
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`relative stiffness and bending properties of different spoilers and springs? A: Well,
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`one of ordinary skill in the art would already know how to do that.”). Patent
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`Owner’s contrary suggestion is unsupported and erroneous.
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`RESPONSE TO OBSERVATION NO. 2
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`The cited testimony of Dr. Davis (Ex. 2030 at 131:8-12), when viewed in
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`context (see id. at 128:18-131:14), supports Petitioner’s contention (see Pet., Paper
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`1 at 10, 18-27; Reply, Paper 33 at 5-11) that combining Prohaska with Appel or
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`Hoyler was a step that required no more than ordinary skill in the art. In particular,
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`Dr. Davis expressly explained that a person of ordinary skill would have been able
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`to perform the calculations and make material selections needed to use “what’s
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`disclosed in Prohaska” and “apply[] it to these beam-style blades of Appel and
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`Hoyler.” Ex. 2030 at 131:2-14. Patent Owner’s contrary suggestion is unsupported
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`and erroneous.
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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 GREGORY DAVIS
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`Dated: December 22, 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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`3
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`IPR2016-00038
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF GREGORY DAVIS
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 22nd 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 Gregory Davis was served in its entirety by email on the
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`attorneys of record for Patent Owner:
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`•
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`•
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`•
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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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`74902818
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