Page 1
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` Cases: IPR2016-00034, IPR2016-00036,
` IPR2016-00038, IPR2016-00039,
` IPR2016-00040, IPR2016-00041d
`
`--------------------------------X
`COSTCO WHOLESALE CORPORATION,
` Petitioner,
` VS.
`ROBERT BOSCH LLC,
` Patent Owner.
`--------------------------------X
`
` ***TELEPHONIC HEARING***
` December 9, 2016
` 11:00 a.m.
`
`BEFORE:
` JUDGE WILLIAM SAINDON
` JUDGE BARRY GROSSMAN
` JUDGE PHIL KAUFFMAN
`
`Reported by:
`AYLETTE GONZALEZ, RPR, CLR, CCR
`JOB NO. 116818
`
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`Costco Exhibit 1108, p. 1
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
`
`
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` Cases: IPR2016-00034, IPR2016-00036,
` IPR2016-00038, IPR2016-00039,
` IPR2016-00040, IPR2016-00041d
`
`--------------------------------X
`COSTCO WHOLESALE CORPORATION,
` Petitioner,
` VS.
`ROBERT BOSCH LLC,
` Patent Owner.
`--------------------------------X
`
` ***TELEPHONIC HEARING***
` December 9, 2016
` 11:00 a.m.
`
`BEFORE:
` JUDGE WILLIAM SAINDON
` JUDGE BARRY GROSSMAN
` JUDGE PHIL KAUFFMAN
`
`Reported by:
`AYLETTE GONZALEZ, RPR, CLR, CCR
`JOB NO. 116818
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 1
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
`
`
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`Page 2
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`A P P E A R A N C E S:
`
`HUGHES HUBBARD & REED
`Counsel for Petitioner
`COSTCO WHOLESALE CORPORATION
` One Battery Park Plaza
` New York, New York 10004
`BY: JAMES DABNEY, ESQ.
`BY: RICHARD KOEHL, ESQ.
`BY: JAMES KLAIBER, ESQ.
`BY: STEFANIE LOPATKIN, ESQ.
`
`SHEARMAN & STERLING
`Counsel for Patent Owner
`ROBERT BOSCH, LLC
` 599 Lexington Avenue
` New York, New York 10022
`BY: MARK HANNEMANN, ESQ.
`BY: PATRICK COLSHER, ESQ.
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`Costco Exhibit 1108, p. 2
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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` PROCEEDINGS
` JUDGE SAINDON: This conference
`call is at the request of Patent
`Owner. We received an e-mail and they
`have requested a Motion to Strike or
`some other relief regarding
`Petitioners reply. So what we
`instructed the parties to do was
`essentially to provide or for Patent
`Owner to provide a list of examples
`for us to go through today to decide
`whether or not we need further
`briefing on this issue.
` Before we get into the particular
`items that were provided, I just
`wanted to do a quick background on our
`view of what's proper in a reply and
`what we're looking for and to try to
`hope that the arguments that we see
`can be a little more useful to us.
` So we see this issue come up a lot
`especially recently given the federal
`circuit cases regarding new arguments
`in the reply. What we're looking for
`is -- it's often the case that in a
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`Costco Exhibit 1108, p. 3
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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` PROCEEDINGS
`Patent Owner response will have an
`argument and then in the reply,
`Petitioner responds to that and they
`introduce new evidence to respond to
`that and in our view, that is within
`the rules, that's what the reply is
`for, even if that is something that
`could theoretically have been raised
`in the petition.
` The issue for us is whether the
`response is a change in the theory of
`unpatentability and so that's really
`what we're looking for here, not
`really is it something that could have
`been raised in the petition but is a
`change, because it's obviously
`something not in the petition, it's in
`the reply.
` So to the extent we can focus less
`on that this is new and more on this
`either -- I mean it does happen that
`something in the reply is not
`responsive to something in the Patent
`Owner response, that is rare though.
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`Costco Exhibit 1108, p. 4
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
`
`
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`So if that's true the issue, then
`let's talk about it, but if it's
`really that the issue is that this is
`a new thrust of theory for
`unpatentability, then let's focus on
`that issue and just go right to it,
`because that's the one we're really
`interested in and if that's the case,
`then what we're looking for is either
`to disregard that argument, that new
`argument or that new factor, whatever
`it may be or to have Patent Owner have
`the opportunity to respond to it in
`some fashion. And so again, those are
`the two avenues that we're looking at
`here, if we find ourselves with
`something new.
` So again, with the arguments that
`we're going to discuss today, I'd just
`like that to be in the back of the
`mind of the parties because that's
`what we're looking for.
` So with that, Patent Owner, I see
`the first item on your list, if you
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`Costco Exhibit 1108, p. 5
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
`
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`want to begin or if you have any
`preliminary statements.
` MR. HANNEMANN: Thank you,
`Your Honor. This is Mark Hannemann.
`Thank you to the board for permitting
`this call.
` What we wanted to do is raise
`these issues. We're happy to make a
`motion to strike if that's how the
`board would prefer that we go or we
`could do something else. Really, we
`were seeking guidance on what would be
`most productive for the board so that
`we don't waste our effort or waste the
`board's effort in writing and reading
`unnecessary paperwork.
` That said, our concern with the
`reply papers that the Petitioner
`submitted is that in a number of
`different ways, they essentially argue
`new grounds for unpatentability or in
`some cases, if not new prior art, at
`least entirely new motivations to
`combine the prior art that was in the
`
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`Costco Exhibit 1108, p. 6
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
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`instituted grounds and those kinds of
`things to us seem to fall into the
`category of changes in theory and
`unpatentability rather than just new
`evidence.
` There are some issues in the reply
`papers where -- one issue in
`particular that certainly seems fair
`to us where we, Patent Owner, had
`raised issues of objective evidence
`and not obviousness, for example, and
`the Petitioner put in some fact
`testimony relating to commercial
`success or lack of success of a
`product, that obviously, you know, we
`don't have a problem with that, that
`seems perfectly proper. But when
`they're introducing new prior art and
`new motivations combined, that as I
`said, seems to us to fall under the
`category of new theories of
`unpatentability.
` Is that generally accord with the
`view of the board in terms of when you
`
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`Costco Exhibit 1108, p. 7
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
`
`
`
`Page 8
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`were describing changes in theories
`versus just new evidence?
` JUDGE SAINDON: Yes, that's what
`we're looking for and really the core
`is notice and Administrative
`Procedures Act.
` MR. HANNEMANN: Okay. So the
`first item that we had flagged in our
`e-mail is the discussion in section 2A
`on pages five to eight of the
`Petitioner's reply in the 038 number
`IPR, which is the 974 patent, there's
`a similar argument in another of the
`IPR replies. And in this section of
`the reply and in the associated -- I
`believe in the associated declarations
`as well, Petitioner argues about a
`piece of prior art, a new reference of
`the Barth patent and has this extended
`argument about what the Barth patent
`teaches and then why that teaching
`provides a motivation to combine the
`prior art that is in the instituted
`grounds.
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`Costco Exhibit 1108, p. 8
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
`
`
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` Obviously, the teachings of this
`piece of prior art were not in the
`instituted grounds, nor were they even
`in the petition and the motivation to
`combine that's being argued here is
`also new, at least that's what we
`believe, and so this falls into both
`of those categories and it's a new
`theory of unpatentability, that's our
`view.
` JUDGE SAINDON: So this Barth
`reference is being used, as I'm
`reading it here in the reply, with
`respect to wind lift and scrolling
`down to page eight, the last sentence,
`is this last sentence the one that you
`say is the new rational?
` MR. HANNEMANN: Yes, I think so.
`I think so. The new -- at the bottom
`of page five, Petitioner describes
`what Barth allegedly teaches and
`they're using it as a new piece of
`prior art, a new reference and then
`the suggestion -- my issue is the last
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`Costco Exhibit 1108, p. 9
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`sentence, it's sort of a conclusion,
`although I suppose it's a motivation
`to combine. I was looking at the
`first sentence of the last paragraph,
`"It's because wind lift is caused by
`wiper strips inverted triangle
`profile, a person of ordinary skill in
`the art would have understood the
`conventional and flat spring wipers
`are subject to wind in and
`fundamentally the same way." That
`whole paragraph is that motivation to
`combine and that's the motivation that
`was not argued in the petition.
` In fact, the petitions were -- the
`petition in this IPR was exactly
`consistent with what we, the Patent
`Owners, have argued in connection with
`various pieces of the IPR, the wind
`lift was thought primarily to be
`caused by the superstructure of
`conventional wiper blades and that's,
`in fact, even what, you know, to the
`extent there was any statement of
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`Costco Exhibit 1108, p. 10
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`motivation to combine, the petition
`for this IPR which is extremely
`limited, there is a phrase that's
`consistent with that. Nowhere in the
`petition is their argument that
`somebody would have been motivated to
`combine the spoiler from the
`conventional blade with the beam blade
`because the beam blade would be
`subject to wind lift, because wind
`lift comes from the wiper strip.
`That's not in the petition. That's
`not in the grounds. And what we did
`respond to is the other point and now
`we have this new theory of
`unpatentability that's in fact based
`on prior art that wasn't in the
`grounds.
` JUDGE SAINDON: Okay. Let me just
`make sure, I just want to make sure I
`really understand this. So Barth
`isn't being used to show any of the
`limitations. I think that's clear,
`correct?
`
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`Costco Exhibit 1108, p. 11
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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` MR. HANNEMANN: In terms of the --
` JUDGE SAINDON: Limitations of the
`claim.
` MR. HANNEMANN: -- physical
`element, no, that's right.
` JUDGE SAINDON: So from what I'm
`hearing here, it's being used to
`provide evidence regarding the
`existence of a problem, where the
`source of a problem or something
`related to this wind lift idea.
` MR. HANNEMANN: Right. It's being
`used to show that the problem of wind
`lift was caused by the wiper strip,
`which is an element that is common to,
`of course, all windshield wipers.
` JUDGE SAINDON: Okay. All right.
`Let's here from Petitioner for a few
`minutes and then we can go back to
`Patent Owner, see if you have any
`further comments.
` Petitioner, go ahead.
` MR. DABNEY: Thank you,
`Your Honor. James Dabney for the
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`Costco Exhibit 1108, p. 12
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`Petitioner.
` The Barth reference that opposing
`counsel referred to was cited in both
`the petition and in the Patent Owner's
`response as part of the background
`knowledge that a person skilled in the
`art would have had at the time the
`claimed invention was made. In its
`response to the petition, the Patent
`Owner submitted a declaration, which
`was their Exhibit 2003, which asserted
`in conclusionary fashion, without
`citing to any documentary evidence,
`that windshield wiper wind lift
`supposedly was erroneously thought to
`have been caused by the superstructure
`or the high profile of a conventional
`wiper and the reply -- so that was the
`Patent Owner's attempt to rebut the
`prima facie case of obviousness that
`the institution decision recognized
`based on the combined disclosure of a
`prior art wiper, such as Hoyler, and a
`prior art spoiler such as Prohaska.
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`Costco Exhibit 1108, p. 13
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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` So in directory rebuttal to that
`and there's no argument from the other
`side that the cited packages of the
`Petitioner's reply are not directly
`responsive to the new factual
`assertion made by their expert.
`Petitioner submitted a declaration
`from its expert, Dr. Davis, which is
`Exhibit 1101, in which he disagrees
`with the plaintiff's expert as to what
`causes wind lift in a windshield wiper
`and he says "don't take my word for
`it, what I'm telling you is shown in
`the Barth reference," which is
`something that both sides had full
`notice of and which set out very
`clearly the fluid mechanics that
`result in wind lift and windshield
`wipers.
` So what we have here is basically
`competing factual assertions about
`what a person skilled in the art knew
`at the time of the invention. The
`Patent Owner has come in with what we
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`Costco Exhibit 1108, p. 14
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`IPR2016-00041
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`believe is a completely insupportable
`and unsupportable factual assertion
`from its expert supported by nothing.
`The Petitioner has rebutted that with
`its own expert, which unlike what the
`Patent Owner is saying, we have
`corroboration for our position in the
`from of a prior art patent that both
`sides' experts cited as pertinent to
`the subject matter claimed in the
`patent. So if there ever was a case
`of proper rebuttal, which is being put
`forward to support the original
`instituted grounds of review, which
`are that the subject matter claimed
`here is unpatentable in light of the
`combinations of Apel and Prohaska or
`alternatively in light of Hoyler and
`Prohaska. This simply is a skill
`level argument about what a person
`skilled in the art would and would not
`have known about the forces impinging
`on windshield wipers at the time.
` So I don't see how anyone could
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`Costco Exhibit 1108, p. 15
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`Page 16
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`characterize this as a new theory of
`patentability or a new argument. The
`reply here is simply responding to a
`factual assertion made by the Patent
`Owner with regard to the skill level
`in the art.
` JUDGE SAINDON: Okay. So,
`Counsel, let me just take a step back
`and make sure I understand.
` So the original reason to combine,
`and correct me if my recollection is
`incorrect here, but to take the beam
`style blade and add a spoiler or a
`wing to counteract the lift, was
`that --
` MR. DABNEY: Correct.
` JUDGE SAINDON: So to counteract
`the lift was the stated motivation.
`And do you have -- can you direct me
`to the petition?
` MR. DABNEY: Yes.
` JUDGE SAINDON: So I could see the
`language used there.
` MR. DABNEY: In this particular
`
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`Costco Exhibit 1108, p. 16
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`Page 17
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`case, we would cite to page 23, where
`it's stated "combining the angled
`spoiler of Prohaska with the support
`element of Apel or Hoyler meets the
`limitations of Claim 1 and yields
`predictable results. A wiper blade
`that conforms to the curvature of any
`windshield counters lift off tendency,
`distributes force evenly over the
`windshield," and so on. We cite to
`the declaration of Dr. Davis for that
`proposition.
` So during the prosecution of this
`patent, the applicants never suggested
`that they had made -- you know, they
`were the first to discover that, you
`know, wind lift as a problem of these
`flat wipers, but the various structure
`of limitations of the claim reflect
`that there was prior art, Ludwig
`reference, which is also described in
`the petition.
` If the board looks at page seven
`of the petition in which you had all
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`Costco Exhibit 1108, p. 17
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`Page 18
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`of the structure that would provide
`for the subject matter claimed here
`and the claim here was allowed on a
`very, very narrow ground that unlike
`the Ludwig wiper, which as the board
`can see from the illustration on
`page seven of the petition, you have a
`flat spring coupled to a spoiler
`structure over the top. The
`distinction between this is that the
`spoiler structure and the wiper strip
`were made of different components,
`which allowed for the use of different
`materials, but there was never any
`assertion that they were entitled to
`claim broadly the concept of putting a
`spoiler on a flat spring or beam
`wiper. That is a rationale that
`emerged in the Patent Owner response
`to the petition, which has no basis in
`the prosecution history of the claim.
` JUDGE SAINDON: Counsel, let me
`jump in here. So just to take a step
`back, you in your petition talk about
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`Costco Exhibit 1108, p. 18
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
`
`Page 19
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` PROCEEDINGS
`that the combination would counter
`lift off tendency. Patent Owner comes
`back and says something that causes
`you to respond with Barth and I just
`would like to go look at what Patent
`Owner said that caused you to respond
`with Barth.
` MR. DABNEY: Okay. Well, what the
`Patent Owner said in evidence, I can
`look in -- I was citing to their
`declaration, but in --
` JUDGE SAINDON: I'm looking around
`page five of their response.
` MR. DABNEY: Yes. They assert
`that on page five, "Petitioner has
`offered in evidence that the wind lift
`problem was known for beam blades," so
`and in the immediately preceding
`paragraph, they say, "A person of
`ordinary skill in the art would not
`have thought that wind liftoff would
`be a problem in beam blades." So
`there is the factual assertion on
`page five. They cite to paragraph 60
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 19
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
`
`Page 20
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` PROCEEDINGS
`of their expert's declaration, which
`is what I mentioned there.
` So the theory put forward by the
`Patent Owner to say that a person of
`skill in the art would not have made
`the combination was supposedly a
`person skilled in the art at that time
`would not have thought that lift off
`was a problem for so-called beam
`blades, because they would have
`harbored this erroneous belief that
`liftoff was caused by the
`superstructure rather than the forces
`generated by the wiper strip inverted
`triangle shape. So that is what
`prompted us not to leave that factual
`assertion unanswered, but to say that
`the factual assertion here on
`page five is incorrect and we put in a
`rebuttal affidavit and we cite to the
`Barth reference, which was already
`relied on in the petition that was
`Exhibit 1005 of the petition and was
`cited by our expert as identifying a
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 20
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
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`Page 21
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` PROCEEDINGS
`baseline of knowledge and skill as
`proof that, in fact, liftoff was known
`to be the result of mechanical forces
`that are generated by the passing of
`air over a wiper strip of this shape
`and that would not vary according to
`what superstructure happened to be
`holding the wiper strip in position.
` JUDGE SAINDON: Okay. Thank you,
`Petitioner.
` So I'd like to -- do you have any
`last words before I go back to Patent
`Owner on this particular item?
` MR. DABNEY: No, Your Honor.
` JUDGE SAINDON: Okay, thank you.
` So let's go back to Patent Owner.
`So the story as I see it from talking
`to counsel on both sides so far is
`that the original rationale involved a
`statement that the combination would
`counter liftoff and then in the
`response, Patent Owner comes back to
`say well, there's no recognition that
`this problem involves beam blades and
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 21
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
`
`Page 22
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` PROCEEDINGS
`then Petitioner comes back to show
`that it's with respect to the blade
`itself. That's the story that I just
`got out from our discussion.
` So Patent Owner, I'd like to see
`what your thoughts are on that story
`and then any response to what
`Petitioner said.
` MR. HANNEMANN: So just to start
`with the parenthetical, so I don't
`forget, Your Honor, there was some
`discussion that Patent Owner had
`raised the Barth reference in its
`response to the petition. It is true
`that we cited to the Barth patent. We
`cited to it as background for how
`conventional blades work. We said the
`downward force is transferred through
`the attachment points of the wiper
`strip, that was the only reason that
`we talked about Barth, and I didn't
`see Barth anywhere in the petition or
`in the instituted grounds.
` In terms of the story as
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 22
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`Page 23
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` PROCEEDINGS
`Your Honor put it, I don't think that
`I agree with that exactly. The
`portion of the petition on page 23 to
`24 and I think -- I just want to make
`sure when I briefly started to
`interrupt, I wanted to make sure I was
`looking at the right section that
`counsel for the Petitioner had been
`citing for motivation to combine was
`at page 23 to 24 of the petition.
` JUDGE SAINDON: I think so.
` MR. DABNEY: 22 to 24 I think is
`the extent but mostly 23.
` MR. HANNEMANN: Right. So that's
`the argument about grounds 1 and 2.
`You know, there was some discussion in
`the institution decision about it
`doesn't matter which is the primary
`reference and which is not, which is I
`think completely right except when
`motivation to combine comes into it
`and the motivation or the obviousness
`combination story that Petitioner told
`in this section grounds 1 to 22, has
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 23
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
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`Page 24
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` PROCEEDINGS
`the person of ordinary skill in the
`art beginning with a spoiler from
`Prohaska and it says as a logical
`starting point and then it goes on
`from there and explains why somebody
`would have wanted to add -- to replace
`the entire rest of the Prohaska device
`with something from Apel or Hoyler.
`But then we come to the section that
`counsel read, which I'm not sure
`really is talking about motivation to
`combine. It's talking about the
`results, what it alleges to be the
`results of combining the angled
`spoiler Prohaska with support element
`of Apel or Hoyler. It gives a list of
`what it says are predictable results,
`for example, of countering liftoff
`tendency, distributing force evenly
`and all that. And it really goes to,
`as they note in the following
`sentence, Petitioner's argument that
`you don't have to show a motivation to
`combine at all under the KSR case if
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 24
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
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`Page 25
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` PROCEEDINGS
`things are just a simple arrangement
`of all elements, each performing a
`known function, that's a legal
`contention that I don't agree with but
`they started the petition with it and
`ended the argument with it.
` JUDGE SAINDON: Counsel, if I
`could jump in. I understand, you
`know, your argument. I think we're
`getting a little too much into the
`case.
` MR. HANNEMANN: Okay.
` JUDGE SAINDON: My point with the
`story was just to figure out what
`statement was made, what was the
`counter, what was the comeback, that's
`all I'm trying to -- as to the merits
`of it, we'll save that for our
`hearing.
` So I mean you did in your response
`make the issue with respect to the
`beam blade so if that was in response
`to some other portion of the petition,
`let's go to there, that's the bigger
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 25
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
`
`Page 26
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` PROCEEDINGS
`issue, just to see the back and forth,
`that's what I mean by the story, just
`the back and forth.
` MR. HANNEMANN: I committed the
`cardinal sin there bearing the lead,
`Your Honor. Pages 15 to 16 of the
`petition talk to the extent there's
`any discussion of what the motivation
`to combine is asserted to be in the
`petition, it's here in the paragraph
`that bridges pages 16 to 17, where the
`petition argues that one way you can
`prove obviousness is by noting the
`existence of a known problem and then
`it list the known problems that it
`asserts to be pertinent and what it
`says is -- the top of page 17, "wiper
`blades have support elements that
`protrude far past the wiper strip in
`the middle region of the wiper blade,
`which leads to 1, either a reduced
`contact pressure so that proper wiping
`is no longer possible at high vehicle
`speeds; 2, noise; 3, stress." So the
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 26
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
`
`Page 27
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` PROCEEDINGS
`very thing that's being argued there
`is that there's a wind lift, that the
`known problem was wind lift caused by
`support elements protruding far past
`the wiper strip in the middle region
`of the wiper blade. There's no
`argument there at all that a known
`problem is the wiper strips on their
`own cause wind lift. That's what's
`being argued in the reply with the
`support of this new piece of prior art
`and that's not something that we had
`any chance to respond to, nor do I
`think that it makes any sense to try
`and go back and do that now. From my
`point of view, it's essentially a new
`ground of a three-reference
`combination.
` JUDGE SAINDON: So in the reply,
`Petitioner cites to Barth with respect
`to the blade itself providing some
`aspect of lift and I can trace that to
`the Patent Owner response on page 5 to
`6, there's a discussion of previously
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 27
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
`
`Page 28
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` PROCEEDINGS
`unknown blade lift, wind lift problem
`and so this argument, Patent Owner
`made this argument in response to
`something and I'm just trying to
`figure out what it is. I mean, what
`you just directed me to is what you're
`saying was their rationale or their
`motivation and that's fine, that could
`be relevant if we were to decide
`whether or not this blade is a new
`rationale, but what is your response
`in response 2? I see cited page 22
`through 23.
` MR. HANNEMANN: So our argument on
`that particular point is that nobody
`recognized that there is a problem of
`wind lift with beam blades. The
`reasons for that is that nobody
`actually ever made a beam blade that
`was ever of any use to anybody, so
`nobody had any practical experience
`with it, but for example in the
`references that are in the grounds,
`the spoiler and et cetera, there's no
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 28
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
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`Page 29
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` PROCEEDINGS
`discussion of a wind lift problem and
`the conventional wisdom is exactly as
`is not only in the Prohaska reference,
`which is a conventional blade to which
`a spoiler is attached, but also right
`here in the description of the problem
`in the petition, which is the wind
`lift comes from the superstructure.
`And so where that came from in our
`brief or what it's responding to is
`it's really -- I'm not even sure it's
`responding to anything so much as it's
`saying this is patentable because
`there's no known problem to which
`somebody would respond by making this
`combination and I don't think that the
`fact that petitioner didn't put it in
`the petition makes it okay for them to
`go put it in the reply.
` If this is the argument that this
`was a known problem and that's why
`people should have or would have
`combined these things, then I think
`that should have been in the petition.
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 29
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
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`Page 30
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` PROCEEDINGS
`You know, we go on from there and say
`why people would have thought -- would
`not have thought it would work, but
`you know, the first level of proving
`obviousness is proving that somebody
`would have had at least reason to try
`it.
` That's like the basic part of the
`prima facie case, I think.
` JUDGE SAINDON: Okay. I think
`we've discussed this item
`sufficiently.
` So going back to Patent Owner to
`one of your opening statements, in the
`event that we were to review -- that
`we were to decide that maybe there is
`something new in what Petitioner has
`said, what is the remedy that you're
`seeking; is it additional briefing or
`is it the motion to strike that I
`think was in the -- or either.
` MR. HANNEMANN: Well, it's not
`additional briefing, Your Honor. You
`know, whether we should file a motion
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 30
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
`
`Page 31
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`to strike and have the replies
`stricken from the record or you know,
`whether it's something that should be
`taken up at the hearing or taken under
`advisement for the board, we're happy
`of course to do whatever the board
`wants, but in our view, these things
`and the Ludwig example is another good
`one, this is really starting an
`entirely new ground and I don't think
`we should be trying to respond to it
`with a whole -- essentially a whole
`additional IPR proceeding where we
`would now put in a response to this
`new argument, presumably expert
`testimony and then you know, our
`experts would be deposed and there'd
`be replies and it doesn't -- that's
`not what we're seeking.
` I think just eliminating the new,
`you know, the new material is the
`better way to go and a reason for that
`or an example of how that might play
`out is in the second issue that we
`
`TSG Reporting - Worldwide 877-702-9580
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`Costco Exhibit 1108, p. 31
`Costco Wholesale Corp. v. Robert Bosch LLC
`IPR2016-00041
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`
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`Page 32
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`flagged with relation to the Ludwig
`patent and in the section of the reply
`brief that we flagged on that issue,
`first of all, it rai
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