Filed: December 23, 2016
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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.
`____________
`
`
`Case IPR2016-00040
`Patent 7,484,264
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`____________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
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`MOTION FOR OBSERVATION ON
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`CROSS-EXAMINATION OF DAVID PECK
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`
`Case IPR2016-00040
`Patent 7,484,264
`
`____________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`
`MOTION FOR OBSERVATION ON
`
`CROSS-EXAMINATION OF DAVID PECK
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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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 for
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`Observation On Cross-Examination of David Peck (Paper 51). Patent Owner
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`presented fourteen observations on the December 2, 2016 deposition testimony of
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`Mr. Peck (Ex. 2029). Although Petitioner responds to each of Patent Owner’s
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`observations, Petitioner respectfully requests that the Board decline to consider
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`Patent Owner’s Observations because they are excessively argumentative in
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`violation of the Office Patent Trial Practice Guide.
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`RESPONSE TO OBSERVATION NO. 1
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`Mr. Peck testified that the Trico Innovision product enjoyed considerable
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`commercial success. Ex. 2029 at 52:7–53:2. The cited testimony of Mr. Peck (id. at
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`50:24–52:12) is not to the contrary. Mr. Peck testified that the wiper to which
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`Patent Owner refers in its observation was offered to Ford as original equipment,
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`but the Innovision product was “designed mainly for the aftermarket.” Id. at
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`50:24–51:5; Ex. 1100 at ¶¶ 14–15. According to Mr. Peck the Ford wiper was
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`discontinued because of a problem unrelated to the subject matter of the ’264
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`Patent (i.e. its connection type). Id. at 51:21–24 (“[The Ford wipers] didn’t work
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`well ‘cause . . . they didn’t have the hook coupler . . . .”). Contrary to Patent
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`1
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`Owner’s suggestion, this testimony has no tendency to show that the subject matter
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`claimed in the ’264 Patent has experienced commercial success, either directly or
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`by comparison to the commercial success of the Trico Innovision wiper product.
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`RESPONSE TO OBSERVATION NO. 2
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`Contrary to Patent Owner’s suggestion, the cited testimony of Mr. Peck
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`shows that the Trico Innovision wiper was fully understood to be subject to “wind
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`lift,” but that “wind lift” was not a practical concern in North America because of
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`speed limits here. Ex. 2029 at 54:4–15 (“Q: Why didn’t [Innovision] need one? A:
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`Because it wouldn’t lift ‘til above 110 miles an hour, and who drives a car in
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`America at 110 miles an hour in the rain? . . . We didn’t have to worry about things
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`like the Autobahn and super-high speeds.”). The cited testimony of Mr. Peck (id. at
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`53:24–54:25) also does not support Patent Owner’s broad assertion that
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`“companies . . . did not believe their beam blades suffered from wind lift problems
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`significant enough to require spoilers.” Mr. Peck’s testimony clearly refers to the
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`effect of speed limits in North America, not any lack of understanding that flat-
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`spring or “beam”-style wipers were subject to “wind lift” forces.
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`RESPONSE TO OBSERVATION NO. 3
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`Contrary to Patent Owner’s suggestion, the cited testimony of Mr. Peck
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`shows that the Trico Innovision wiper was not fitted with a spoiler because (i) the
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`2
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`legal driving speeds in North American were lower than speeds that would have
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`required a spoiler to counter “wind lift” (Ex. 2029 at 54:4–15; see supra Resp. to
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`Observation 2); and because (ii) Trico did not wish to incur the capital expense of
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`another gluing machine. Id. at 65:14–21. Because of its complex taper-taper cross-
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`section, (see id. at 100:10–17) the Trico Innovision’s accompanying structure
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`would naturally have been glued, as was the wiping element. See id. at 22:6–8.
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`However, when Trico developed a simpler split-rail cross section, Mr. Peck
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`testified that Trico naturally chose a spoiler that was not glued. Id. at 68:16–24
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`(“We designed VariFlex blades with spoilers . . . . [T]he decision was when we
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`needed to extend the production line, that we would go the constant width, constant
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`thickness split rail pretempered version, where you could then get the air foil
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`between the rails and hold it by the endcaps.”) (emphasis added). The testimony
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`provides no support for Patent Owner’s broad assertion that at the time of the
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`claimed ’264 Patent invention, a person having ordinary skill in the art would have
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`erroneously believed that “a spoiler would need to be glued to a beam blade,” as
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`opposed to knowing how to make routine spoiler mounting choices.
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`RESPONSE TO OBSERVATION NO. 4
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`Mr. Peck testified that FEA was not new and VariFlex was not the only FEA
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`product capable of being used to design a flat-spring wiper with a spoiler. See Ex.
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`3
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`2029 at 84:25–85:4 (“FEA programs from that time and even before that time
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`would be capable of adding dissimilar materials and [accounting for] their effects
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`on stiffness and deflection.”) (cross-examination); id. at 114:16–22 (“Q: And when
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`you say ‘designers were quite capable of combining flat-spring wipers with spoilers
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`. . . ,’ could they have done that with programs other than VariFlex. A: Yes.”)
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`(redirect). Mr. Peck also testified that VariFlex was chosen only to accommodate
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`the more complex beam equations associated with the taper-taper design. Id. at
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`84:15–23. When Trico switched to the (non-glued) split-rail design, Trico
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`developed a simpler analysis program that could still model flat-spring wipers with
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`spoilers by applying elementary beam equations. See id. at 82:8–21.The cited
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`testimony of Mr. Peck (Ex. 2029 at 82:3–8) is not to the contrary. Whether the
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`VariFlex program had functional limitations is irrelevant to the skills required to
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`design a flat-spring wiper with a spoiler. Patent Owner’s identification of two other
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`limitations of VariFlex (aerodynamics, thermal effects) is irrelevant to whether a
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`person of ordinary skill in the art was skilled enough to design with these effects in
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`mind. Mr. Peck testified that at the time Trico licensed VariFlex, it simply
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`“contracted [computational fluid dynamics (“CFD”) analysis] out with an FEA
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`house in Southeastern Michigan. They used a program called FLUENT.” Id. 36:5–
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`13.
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`4
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`RESPONSE TO OBSERVATION NO. 5
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`Contrary to Patent Owner’s suggestion, Mr. Peck testified that his company,
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`Trico, had modeled the aerodynamic behavior of wiper spoilers well before the
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`priority date of the ’264 Patent. Ex. 2029 at 36:5–13 (“We, at Trico, had originally
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`contracted [CFD] out with an FEA house in Southeastern Michigan. They used a
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`program called FLUENT.”). Paragraph 8 of Mr. Peck’s declaration (Ex. 1100)
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`concerns aerodynamic modeling—not attaching a spoiler to a flat wiper. Whether
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`Mr. Peck personally performed that task is irrelevant to whether it took more than
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`ordinary skill to design a flat wiper with a spoiler. “An expert need not have
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`worked in precisely the same field as the subject matter in question to give credible
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`evidence as to the knowledge and level of skill in the relevant art.” Baxter
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`Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00582, Paper No. 8, at 29
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`n.13 (PTAB Mar. 21, 2014). Mr. Peck testified that “we were able to adapt the CFD
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`from the whiffletree [to the flat-spring wiper.]” Ex. 2029 at 37:10–11. Mr. Peck’s
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`testimony does not support but, to the contrary, contradicts Patent Owner’s
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`assertion that “teachings regarding conventional blades (including with respect to
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`spoilers) were not believed to be applicable” to flat-spring wipers.
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`5
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`RESPONSE TO OBSERVATION NO. 6
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`Mr. Peck testified that detailed measurements of a windshield (or many
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`windshields to create a composite profile) were part of the inputs to VariFlex when
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`Trico received it in 1997, well before the priority date of the ’264 Patent. Ex. 2029
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`at 66:4–19 (“[D]uring the ’98 and subsequent timeframe, we had to verify that the
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`VariFlex was correct. . . . [Operating VariFlex entails] just putting in parameters.
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`It’s like a data input sheet. . . . The input was just the mechanics of putting it in,
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`and that was more digitizing the glass, which would be a technician’s job.”).
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`Paragraph 9 of Mr. Peck’s declaration (Ex. 1100) concerns this measurement—not
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`attaching a spoiler to a flat wiper. Whether Mr. Peck (or a technician for that
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`matter) personally performed that task is irrelevant to whether it took more than
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`ordinary skill to design a flat wiper with a spoiler. “An expert need not have
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`worked in precisely the same field as the subject matter in question to give credible
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`evidence as to the knowledge and level of skill in the relevant art.” Baxter
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`Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00582, Paper No. 8, at 29
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`n.13 (PTAB Mar. 21, 2014). Mr. Peck testified that “we were able to adapt the CFD
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`from the whiffletree [to the flat-spring wiper.]” (Ex. 2029 at 37:10–11) and that in
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`performing the process, Trico was able to use the same windshield profiles it had
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`developed for conventional wipers. Id. at 41:20–42:1. Mr. Peck’s testimony does
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`6
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`not support but, to the contrary, contradicts Patent Owner’s assertion that
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`“teachings regarding conventional blades (including with respect to spoilers) were
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`not believed to be applicable” to flat-spring wipers.
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`RESPONSE TO OBSERVATION NO. 7
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`Mr. Peck testified, in the citation offered by Patent Owner (Ex. 2029 at
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`70:25–71:6), that the design process described in paragraph 8 of his declaration is
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`applicable to both conventional and flat wipers. Id. at 70:5–71:6 (“Q: Is Paragraph
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`8 describing the design of a rigid spoiler? . . . [Objection] [A:] Well, if it were on a
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`whiffletree, it would be rigid. If it’s a beam blade, it’s a flexible structure.”).
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`Instead of supporting Patent Owner’s assertion that “considerations for designing a
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`spoiler” for conventional and flat-spring wipers “would have been fundamentally
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`different,” Mr. Peck’s testimony supports the opposite proposition—that the
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`process described in paragraph 8 of his declaration applies to both.
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`RESPONSE TO OBSERVATION NO. 8
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`Mr. Peck testified that the industry focused primarily on operational noise—
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`as opposed to wind noise. Ex. 2029 at 98:4–19 (“As I said in [my report], usually if
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`you actually are driving the vehicle, and you have all this engine noise; you have
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`all this – people have radios on. And one of the biggest noise generators from wind
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`noise happens to be side-view mirrors, which kind of drowned everything out.”).
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`7
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`The cited testimony of Mr. Peck (id. at 97:23–98:19) is not to the contrary, and
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`supports neither of Patent Owner’s assertions: that the success of Bosch’s products
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`“was attributable in part to their being quiet,” nor that designing a flat-spring wiper
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`with a spoiler required more than ordinary skill.
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`RESPONSE TO OBSERVATION NO. 9
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`Mr. Peck testified, in the citation offered by Patent Owner (Ex. 2029 at
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`109:16–110:4), that the main reason for commercialization of flat wipers
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`(including those with spoilers) was for aesthetic, rather than practical reasons. See
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`also id. at 55:24–56:2 (“The primary reason people like beam blades was
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`aesthetics. They liked the way they looked.”). Mr. Peck further testified that,
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`depending on the application, designers would make a wiper appear smaller or
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`larger for aesthetic reasons. See id. at 56:13–22 (“So if you went to a beam blade
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`with a spoiler, it was a lot narrower and – you know, so it looked really cool. But if
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`you went to other markets, including today you go to the truck people; F-150,
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`Silverado, Ram 1500, Ford two and a half ton, you know, 250, 350, 450, they said
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`it looks flimsy. It looks cheap. It doesn’t look truck-like, and so they refused to
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`accept it.”). Patent Owner’s contrary assertion is unsupported and erroneous.
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`RESPONSE TO OBSERVATION NO. 10
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`Mr. Peck testified, in the citation offered by Patent Owner (Ex. 2029 at
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`8
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`86:23–87:3), that Trico sought to “compete” with Bosch, not to copy it, and his
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`testimony does not make any connection between the wiper disclosed and claimed
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`in the ’264 Patent and the Trico product. Id; see also id. at 13:14–16 (“Q: Did you
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`ever see them [the ’264 Patent and those in Petitioner’s related inter partes review
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`proceedings] while you were at Trico? A: No.”). Patent Owner’s assertion is
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`unsupported and erroneous.
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`RESPONSE TO OBSERVATION NO. 11
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`Mr. Peck testified that software for performing finite element analyses
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`(FEA) of structures, including wiper structures, had long been available to the
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`wiper industry. Ex. 2029 at 84:25–85:4; see supra Resp. to Observation 4. Mr.
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`Peck further testified that the “Variflex software” referred to by Patent Owner was
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`sold to Trico and commercially used by Trico in the United States prior to the date
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`of the claimed invention of the ’264 Patent (Ex. 2029 at 87:5–88:11) and that the
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`calculations performed by the Variflex software could have been performed by
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`other commercially available FEA computer programs. Id. at 113:2–114:22. The
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`cited testimony of Mr. Peck (id. 38:16–21, 87:5–88:11) does not support Patent
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`Owner’s assertion that Mr. Peck’s declaration testimony purportedly rests on
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`“software and expertise that was not available to a person of ordinary skill in the
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`art outside of Trico.”
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`9
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`RESPONSE TO OBSERVATION NO. 12
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`For substantially the reasons stated in Response to Observation No. 11, the
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`fact that the “Variflex software” that Trico acquired and commercially used in the
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`1990’s was “proprietary” does not remove that software from the prior art and also
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`does not support Patent Owner’s suggestion that the software carried out any
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`methods of finite element analysis (FEA) that were non-obvious at the time.
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`Further, whether or not the “Variflex software” was itself prior art, Mr. Peck
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`testified that that the calculations performed by the Variflex software could have
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`been performed by other commercially available FEA computer programs (Ex.
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`2029 at 113:2–114:22) and he personally directed and reviewed the results of the
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`VariFlex software that Trico happened to have on hand. Id. at 66:6–17 (“Q: You
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`mentioned earlier that you had not personally used the VariFlex software; correct?
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`[Objection] [A:] That’s just putting in parameters. . . . The input was just the
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`mechanics of putting it in . . . which would be a technician’s job”); id. at 44:11–24
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`(“I didn’t push the button and run it. I was involved in all of the outputs.”).1
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`1 Furthermore, Mr. Peck’s testimony on redirect is unrelated to and does not
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`contradict his cited testimony. Id. at 112:19–114:22 (discussing ¶ 11 of his
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`declaration, which concerns modeling methods, generally); see also infra Resp. to
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`Observation 14.
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`10
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`RESPONSE TO OBSERVATION NO. 13
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`Mr. Peck testified that (1) he was familiar with the flat-spring wiper design
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`process, and (2) employees under his supervision were trained to use, and did use,
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`the VariFlex software to design flat-spring wipers as early as 1997. See Ex. 2029 at
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`40:19–45:6 (placing the cited testimony of Mr. Peck (id. at 43:20–45:6) in
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`context). Whether Mr. Peck personally operated the software, and the identity of
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`the software trainer, are irrelevant to whether in 1997 it took more than ordinary
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`skill to design a flat-spring wiper with a spoiler using an FEA program. “An expert
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`need not have worked in precisely the same field as the subject matter in question
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`to give credible evidence as to the knowledge and level of skill in the relevant art.”
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`Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00582, Paper No.
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`8, at 29 n.13 (PTAB Mar. 21, 2014); see supra Resp. to Observation 5.
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`RESPONSE TO OBSERVATION NO. 14
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`Mr. Peck explicitly stated that he was hired to “be an industry expert.” Ex.
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`2029 at 12:5–6. Patent Owner’s observation, on its face, is irrelevant to any of the
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`arguments or evidence at issue in this proceeding. It is well-established that
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`“[t]estimony in the dual roles of both a fact witness and an expert witness . . . is
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`permissible provided that the district court takes precautions to minimize potential
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`prejudice.” United States v. Farmer, 543 F.3d 363, 370 (7th Cir. 2008). Here,
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`11
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`where there are no concerns of confusing the jury, “[t]he gatekeeping function of
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`the court is relaxed . . . because the court is better equipped than a jury to weigh the
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`probative value of expert evidence.” Traxys N. Am., LLC v. Concept Mining, Inc.,
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`808 F. Supp. 2d 851, 853 (W.D. Va. 2011). Mr. Peck is indisputably testifying
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`from his own personal observation and rational perception. Further, the questions
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`asked under redirect simply clarify the questions put by Patent Owner’s counsel,
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`and Mr. Peck’s responses are not inconsistent.2
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`2 Paragraph 11 of Mr. Peck’s declaration (Ex. 1100), the subject about which Mr.
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`Peck was being questioned, concerns general composite beam modeling, including
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`a single sentence describing VariFlex. However, Patent Owner’s counsel asked Mr.
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`Peck if he had ever “us[ed] software other than VariFlex?” Ex. 2029 at 87:5–8. In
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`each answer, Mr. Peck clarified that while VariFlex was the only program Trico
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`had, he never limited the general method to VariFlex only. See id. at 87:5–88:11.
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`On redirect, Mr. Peck was asked whether each sentence (other than the one noted)
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`was limited to VariFlex, and answered in the negative. See id. at 112:19–114:22.
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`12
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`Dated: December 23, 2016
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`Respectfully Submitted,
`
`/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 Corporation
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`13
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`IPR2016-00040
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF DAVID PECK
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`
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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
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`to Patent Owner’s Motion
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`for Observation on
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`Cross-Examination of David Peck was served in its entirety by email on the
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`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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