Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 44
`Entered: December 12, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`Cases
`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`_______________
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON,
`and BARRY L. GROSSMAN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`ORDER
`Authorizing Patent Owner to File a List of Reply
`Arguments It Considers Improper
`
`Authorizing Petitioner to File a Response
`
`37 C.F.R. §§ 42.5
`
`
`
`
`
`
`
`
`

`

`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`
`
`Patent Owner requested a conference call to discuss what it believed
`
`were improper arguments and evidence in Petitioner’s Reply. Patent Owner
`
`was asked to provide Petitioner and the panel a list of several items it
`
`believed were representative. A conference call was then held on December
`
`9, 2016. A court reporter provided by Petitioner transcribed the conference.
`
`Petitioner will file and serve a copy of the transcript. We will first discuss a
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`procedure for Patent Owner to bring to our attention those arguments it
`
`considers new, with an opportunity for Petitioner to respond. We will then
`
`discuss a particular argument Patent Owner alleges was new that was
`
`addressed during the conference call.
`
`
`
`Opportunity to Identify Allegedly New Arguments
`
`During the call, we asked Patent Owner if an opportunity to provide a
`
`list of citations to portions of the Reply, along with a brief explanation,
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`would address its concern that the Reply raises new issues. Patent Owner
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`represented that it would. Petitioner objected, and asked instead for full
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`briefing on the issue. Patent Owner indicated that it did not wish to pursue
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`further briefing, in the interests of costs and finality of briefing.
`
`We have considered the positions of the parties and determine that the
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`following procedure serves the just, speedy, and inexpensive resolution of
`
`this proceeding. First, Patent Owner may file, in each above-identified
`
`proceeding, a numbered list of citations, with brief explanations (akin to a
`
`motion for observation), to those passages in the reply briefs it believes
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` 2
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`

`

`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`
`contain improper arguments.1 Patent Owner’s lists will be filed as papers
`
`and will be called “Patent Owner’s List of Improper Reply Arguments.”
`
`Then, Petitioner may respond to each item and cite to where the argument in
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`the Reply is supported by the theory of unpatentability expressed in the
`
`Petition and/or is in response to an argument raised by Patent Owner in its
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`Response, with brief explanations (again, akin to a motion for observation).
`
`In the event our Final Written Decision does not rely on a passage included
`
`in Patent Owner’s list, then we will make no comment as to whether that
`
`passage is proper. In the event that our Final Written Decision relies on a
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`passage included in Patent Owner’s list, we will set forth our analysis why
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`that passage does not contain an improper argument.
`
`
`
`Alleged New Argument Discussed During Conference Call
`
`During the call, we discussed Patent Owner’s leading example of
`
`where it believed Petitioner had included improper material in its Reply. We
`
`
`1 For purposes of this paper, an improper argument is an argument made by
`Petitioner in its Reply where (1) it is beyond the scope of a reply under 37
`C.F.R. § 42.23(b) or (2), if we were to rely on it to find Patent Owner’s
`claims unpatentable, Patent Owner would not have had sufficient notice and
`opportunity to respond (see, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d
`1064, 1080 (Fed. Cir. 2015) (applying a similar standard in inter partes
`review as in prosecution: “this court has determined whether the Board
`relied on a ‘new ground of rejection’ by asking ‘whether applicants have had
`fair opportunity to react to the thrust of the rejection.’”)). Because
`arguments are supported by evidence, and evidence not argued is not
`considered, we purposely leave out a separate class of “improper evidence.”
`
` 3
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`

`

`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`
`provide a decision here for the benefit of the parties, to provide guidance as
`
`to what we consider to be a proper reply argument.
`
`With respect to the Reply in IPR2016-00038 (Paper 33), Patent
`
`Owner alleged that page 5, line 13 through page 8, line 13 introduced Barth
`
`as prior art, and alleged a new motivation to combine.
`
`By way of background, in our Decision on Institution in IPR2016-
`
`00038 (Paper 16) we understood Petitioner’s instituted ground to rely on a
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`combination of the wipers of Appel and Prohaska (see Paper 16, 10–12), or
`
`Hoyler and Prohaska (see id., 16–17). We understood the combination in
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`each would be to take the spoiler of Prohaska and combine it with to the
`
`wiper of Appel or Hoyler. Id. at 11, 17. We understood Petitioner’s
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`rationale to be that the combination is the predictable use of prior art
`
`elements (e.g., adding Prohaska’s spoiler) according to its established
`
`function (e.g., to counter liftoff tendency). Id. at 11–12, 17.
`
`In its Response, Patent Owner argues that “wind liftoff . . . was
`
`generally recognized as a problem in conventional blades, [but] it was not a
`
`recognized problem in beam blades.” Paper 28, 5; see also id. at 5–6 (entire
`
`argument). The relevance of this argument is that Appel and Hoyler teach
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`beam blades, whereas Prohaska teaches a conventional blade. Id. at 7.
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`Petitioner then replies that it is the triangular wiper strip itself that
`
`causes the lift problem, not whether it is a beam or conventional blade.
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`Paper 28, 5–8. As evidence, Petitioner cites Barth and argues that it shows
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` 4
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`that:
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`
`
`

`

`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`
`
`Contrary to Bosch’s arguments (Response, 3–5), because
`wind lift is caused by a wiper strip’s inverted-triangle profile—a
`profile common to all wipers[]—a person of ordinary skill in the
`art would have understood that conventional and flat-spring
`wipers are subject to wind lift in fundamentally the same way.
`
`Paper 33, 8.
`
`Reviewing the briefing, and having heard the arguments of both
`
`parties on this matter during the conference call, we determine that
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`Petitioner’s Reply here is not improper. Patent Owner argues that the
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`problem its patent solved was not recognized with respect to a certain class
`
`of wiper blades. Petitioner offers evidence that tends to show that the
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`problem stems from the shape of the wiper strip itself, not the class of wiper
`
`blade. Both parties have had the opportunity to offer arguments and
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`evidence on this issue, and we see no compelling reason to strike or
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`disregard this portion of Petitioner’s Reply or the evidence cited therein.
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`Patent Owner also argues that the portion of Petitioner’s Reply at page
`
`5 also introduces a new motivation to combine. Reviewing the record before
`
`us, and having heard the arguments of both parties during the conference
`
`call, we disagree. As we explained above, we understood Petitioner’s
`
`rationale to be that the combination is the predictable use of prior art
`
`elements according to their established function to counter liftoff tendency.
`
`Thus, Petitioner’s statement in its Reply that, “[t]hus, a person of ordinary
`
`skill in the art seeking to solve the well-known problem of wind lift would
`
`have turned to the well-known solution to that problem, ie. adding a
`
`conventionally shaped spoiler to a pre-existing wiper,” is simply restating its
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` 5
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`

`

`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`
`original position. Paper 33, 8. Accordingly, we determine that Petitioner’s
`
`Reply at page 5, line 13 through page 8, line 13 is not improper.
`
`In view of the foregoing, it is hereby:
`
`ORDER
`
`ORDERED that Patent Owner is authorized to file a List of Improper
`
`Reply Arguments and Petitioner is authorized to file a Response, as outlined
`
`above;
`
`FURTHER ORDERED that Patent Owner’s List is to be filed no later
`
`than December 16, 2016, and that Petitioner’s Response is to be filed 5
`
`business days from entry of Patent Owner’s List; and
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`FURTHER ORDERED that neither paper is to be more than two
`
`pages, inclusive of signature block but not including the cover page or the
`
`certificate of service.
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`

`

`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`
`
`For PETITIONER:
`Richard Koehl
`David Lansky
`James Klaiber
`Stefanie Lopatkin
`HUGHES HUBBARD & REED LLP
`richard.koehl@hugheshubbard.com
`david.lansky@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`stefanie.lopatkin@hugheshubbard.com
`
`For PATENT OWNER:
`Patrick Colsher
`SHEARMAN & STERLING LLP
`patrick.colsher@shearman.com
`
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