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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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`____________
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`PETITIONER’S RESPONSE TO PAPER NO. 55 STYLED
`“PATENT OWNER’S LIST OF IMPROPER REPLY ARGUMENTS,
`PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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`IPR2016-00038
`PETITIONER’S RESPONSE TO PAPER 55 STYLED “PATENT OWNER’S LIST OF IMPROPER
`REPLY ARGUMENTS, PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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`U.S. Patent No. 3,428,679 (“Barth”). Patent Owner asserts that the Board
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`purportedly erred in its Order issued December 12, 2016 (“Order,” Paper 43)
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`holding that Petitioner was entitled to rely on Barth to rebut Patent Owner’s factual
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`assertion that, prior to August 21, 1997, persons having ordinary skill in the wiper
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`art purportedly did not understand the causes of wiper “wind lift” and purportedly
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`harbored an erroneous and false belief that flat spring wipers were not subject to
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`“wind lift.” Patent Owner’s assertion of “improper reply argument” as to this point
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`amounts to a meritless and unsupported motion for reconsideration.
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`The Petition presented, and this proceeding was instituted on, obviousness
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`grounds that rely on the “predictable use of . . . Prohaska’s spoiler . . . to counter
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`liftoff tendency[].” Order at 4; see Pet., Paper 1 at 23-24. Bosch countered that
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`liftoff tendency purportedly was unknown in flat-spring wipers. See Resp., Paper
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`28 at 5-6 (citing Pet., Paper 1 at 22-23). Costco’s rebuttal cited Barth (Exs. 1007,
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`2009), to explain that liftoff tendency is common to conventional and flat-spring
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`wipers. See Reply, Paper 33 at 3, 5-8 (citing Resp., Paper 28 at 3-5). The Board
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`rightly held that Costco’s argument is neither new nor based on new evidence,
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`does not “introduc[e] a new motivation to combine,” and is proper rebuttal
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`argument. Order at 5-6; see 37 C.F.R. 42.23(b); Belden Inc. v. Berk-Tek LLC, 805
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`F.3d 1064, 1077-82 (Fed. Cir. 2015); Pet., Paper 1 at ii; Ex. 1008 at ¶ 29; Ex. 1012
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`1
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`IPR2016-00038
`PETITIONER’S RESPONSE TO PAPER 55 STYLED “PATENT OWNER’S LIST OF IMPROPER
`REPLY ARGUMENTS, PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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`at 45-46.
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`U.S. Patent No. 3,317,945 (“Ludwig”). In its response to the Petition,
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`Patent Owner asserted that “the conventional thinking at the time of the ’974 patent
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`was to avoid adding any additional components on a beam blade, keeping the
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`profile of the wiper blade very low, and thus making the beam perform the best.”
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`Resp., Paper 28 at 5. Costco’s rebuttal cited the ’974 Patent’s prosecution history
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`(Ex. 1002) and Ludwig (Ex. 1009), which showed that Patent Owner’s response
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`argument was unsupported and wrong. See Reply, Paper 33 at 3, 9-10 (citing
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`Resp., Paper 28 at 7); Pet., Paper 1 at 6-9 (explaining Ludwig’s role during
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`prosecution). Accordingly, Costco’s argument presents no new evidence and is
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`proper. See 37 C.F.R. § 42.23(b); Belden, 805 F.3d at 1077-82.
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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 Corp.
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`2
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`IPR2016-00038
`PETITIONER’S RESPONSE TO PAPER 55 STYLED “PATENT OWNER’S LIST OF IMPROPER
`REPLY ARGUMENTS, PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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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 to Paper 55 Styled “Patent Owner’s List of Improper Reply
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`Arguments, Pursuant to the Board’s December 12 Order” was served in its entirety
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`by email on the 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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`74757906
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