UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00041
`U.S. Patent No. 8,099,823
`______________________
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`
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`PATENT OWNER’S MOTION FOR OBSERVATION ON CROSS-
`EXAMINATION OF DAVID PECK
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`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00041
`U.S. Patent No. 8,099,823
`______________________
`
`
`
`PATENT OWNER’S MOTION FOR OBSERVATION ON CROSS-
`EXAMINATION OF DAVID PECK
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` Pursuant to the Scheduling Order (Paper 21) and the Office Patent Trial
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`Practice Guide, Patent Owner Robert Bosch LLC (“Bosch”) moves the Board to
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`observe the following passages in the cross-examination of David Peck. Petitioner
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`Costco Wholesale Corp. (“Costco”) submitted a declaration by Mr. Peck (Ex.
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`1100) with its Reply, and Bosch cross-examined Mr. Peck on December 2, 2016.
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`The complete transcript of the cross-examination is submitted herewith as Exhibit
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`2029. Also submitted herewith is an article written by Mr. Peck, Exhibit 2028,
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`which was introduced and served upon Costco at the deposition.
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`1.
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`In Exhibit 2029, on page 50, line 24 to page 52, line 12, Mr. Peck
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`testified that Ford purchased a variant of the Innovision product for one year but
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`found it didn’t work well, and no other OEMs purchased Innovision. This is
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`relevant to Costco’s arguments on page 21 of its Reply. It is relevant because it
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`rebuts any assertion that Trico’s product (lacking a spoiler or end caps) was
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`commercially successful, and highlights the relative success of Bosch’s own beam-
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`blade products (including a spoiler and end caps).
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`2.
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`In Exhibit 2029, on page 53, line 24 to page 54, line 25, Mr. Peck
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`testified that there were no concerns regarding wind-lift in the Trico Innovision
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`product. He testified that it did not have a spoiler, because it did not need one; the
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`blade would not lift below 110 miles per hour. This testimony is relevant to
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`Bosch’s position, expressed in its Response at page 6, that a person of ordinary
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`1
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`skill in the art would not have had reason to modify Kotlarski or Merkel. It is
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`relevant because it shows that Trico either did not recognize the wind-lift problem
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`or determined that its blade was good enough not to modify it.
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`3.
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`In Exhibit 2029, on page 65, lines 14 to 21, Mr. Peck testified that a
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`spoiler was never added to the Trico Innovision product because Trico did not
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`want to buy additional gluing equipment. This testimony is relevant to Bosch’s
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`position, argued in its Response at 3–6, that it would not have been obvious to
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`combine the conventional-blade spoiler of Prohaska with the beam blade of
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`Kotlarski or Merkel. It is relevant because it demonstrates artisans’ assumption that
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`a spoiler would need to be glued to a beam blade.
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`4.
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`In Exhibit 2029, on page 82, lines 3 to 8, Mr. Peck testified that the
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`Variflex software was only designed to account for a spoiler glued to the blade.
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`This testimony is relevant to Bosch’s position, argued in its Response at 3–6, that it
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`would not have been obvious to combine the conventional-blade spoiler of
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`Prohaska with the beam blade of Kotlarski or Merkel. It is relevant because it
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`shows that the proprietary Variflex software to which Mr. Peck refers could not be
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`used to design a functional beam blade with a spoiler (because it “couldn’t
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`accommodate the wind lift characteristics” and “did not have in there the low
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`temperature effects when rubber becomes very hard”), and could not be used to
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`2
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`model a coupler or spoiler that was attached in some other way, not glued to the
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`beam.
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`5.
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`In Exhibit 2029, on page 70, lines 18–23, Mr. Peck testified that he
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`had not performed the spoiler-design process described in paragraph 8 of his
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`declaration on a beam blade before 2002.1 This is relevant to Costco’s reliance on
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`that paragraph in its Reply at page 20 to attempt rebuttal of Bosch’s secondary
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`considerations evidence. It is relevant because it is Bosch’s position, expressed in
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`its Response at pages 3–6 and 13–16, that teachings regarding conventional blades
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`(including with respect to spoilers) were not believed to be applicable to beam
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`blades at the time of the invention, and Mr. Peck has no basis for saying
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`otherwise.2
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`6.
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`In Exhibit 2029, on page 72, line 19 to page 74, line 4, Mr. Peck
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`testified that he had not performed the procedure described in paragraph 9 of his
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`declaration on a beam blade until approximately 2003. This is relevant to Costco’s
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`reliance on that paragraph in its Reply at page 7 to attempt rebuttal of Bosch’s
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`According to his declaration, 2002 is the last year that he was directly
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`1
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`involved in beam-blade design. Ex. 1100 at ¶ 16.
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`2
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`Notably, while paragraphs 7 and 9 of Mr. Peck’s declaration (Ex. 1100) refer
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`specifically to beam blades, paragraph 8 does not explicitly do so. Thus, paragraph
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`8 is not false in this regard, but in context it is misleading.
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`3
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`
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`secondary considerations evidence. It is relevant because Bosch’s position,
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`expressed in its Response at 3–6 and 13–16, is that teachings regarding
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`conventional blades (including with respect to spoilers) were not believed to be
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`applicable to beam blades at the time of the invention, and Mr. Peck has no basis
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`for saying otherwise.
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`7.
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`In Exhibit 2029, on page 70, line 25 to page 71, line 6, Mr. Peck
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`testified that a spoiler designed for a conventional (“whiffletree”3) blade would be
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`rigid, whereas a spoiler designed for a beam blade would be flexible. This
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`testimony is relevant to Costco’s position, argued in its Reply at pages 5–9, that it
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`would have been obvious to use a conventional-blade spoiler with a beam blade. It
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`is relevant because it demonstrates that, consistent with Bosch’s position that
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`conventional blades and beam blades are fundamentally different (Response at 3–
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`5), the considerations for designing a spoiler for a beam blade would have been
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`fundamentally different from those for a conventional blade.
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`8.
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`In Exhibit 2029, on page 97, line 23 to page 98, line 19, Mr. Peck
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`testified that “[h]igher profile would make wind noise more of an issue for sure.”
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`This is relevant to Bosch’s arguments at pages 4–5 and 16 of its Response. It is
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`relevant because it supports Bosch’s position that artisans would not have thought
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`3 Mr. Peck used the term “whiffletree” to refer to a conventional blade. See,
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`e.g., Ex. 2029 at 16:8–9, 36:16–18, 38:11–14, 41:20–21.
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`4
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`to add structures to a beam blade that increased its profile. It also supports Bosch’s
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`evidence (Ex. 2007 at ¶ 6) that the success of its products was attributable in part to
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`their being quiet (despite the inclusion of a spoiler), supporting a finding of non-
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`obviousness (see Response at 16–17).
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`9.
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`In Exhibit 2029, on page 109, line 16 to page 110, line 4, Mr. Peck
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`testified that the Innovision product “looked better because it was low profile, and
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`it didn’t restrict the vision” and that “looks on a passenger car seemed to be a main
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`driver for selling this particular type of blade.” This is relevant to Bosch’s position,
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`argued at pages 4–5 and 13–14 of its Response, that conventional blades impaired
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`driver visibility because of their high profiles. It is relevant because it shows that
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`an ordinary artisan would not have been motivated (in fact would have been de-
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`motivated) to add structures to the beam blade that increase their profiles.
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`10.
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`In Exhibit 2029, on page 86, line 23 to page 87, line 3, Mr. Peck
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`testified that Trico “wanted to get the air foil to compete with Bosch for European
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`potential applications.” This is relevant to Bosch’s position, argued at pages 12–20
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`of its Response, that secondary considerations support a finding of non-
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`obviousness. It is relevant because it shows that Trico was copying Bosch when it
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`5
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`eventually designed a beam blade with a spoiler4. See also Ex. 2029 at 77:6–14
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`(testifying to awareness of Bosch patents covering beam blades with spoilers).
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`11.
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`In Exhibit 2029, on page 74, lines 17 to 24, Mr. Peck testified that the
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`Variflex software referred to in his declaration was not publicly available but
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`acquired from Adriaan Swanepoel and proprietary. This is relevant to Costco’s
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`reliance on any of paragraphs 7–11 of Mr. Peck’s declaration in its Reply at pages
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`7 and 20. It is relevant because it shows that Mr. Peck’s declaration testimony
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`regarding the capabilities of wiper-blade designers is based on software and
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`expertise that was not available to a person of ordinary skill in the art outside of
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`Trico.
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`12.
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`In Exhibit 2029, on page 38, lines 16 to 21, Mr. Peck testified that the
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`design for the beam-blade spring was done not by him but by Variflex software.
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`And on page 87, line 5 to page 88, line 11, Mr. Peck testified that his opinion that a
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`wiper designer in 1997 could have calculated the properties of a beam blade with a
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`spoiler as easily as those of a beam blade without a spoiler (see Ex. 1100, ¶ 11)
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`was based only on Trico’s Variflex software.5 This is relevant to Costco’s reliance
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`4 Mr. Peck used the term “air foil” to refer to a spoiler. See Ex. 2029 at 53:21–
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`23.
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`5
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`On redirect examination, Mr. Peck contradicted this testimony using one-
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`word answers to leading questions. See Ex. 2029 at 112:19–114:22.
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`6
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`on any of paragraphs 7–11 of Mr. Peck’s declaration in its Reply at pages 7 and 20.
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`It is relevant because (i) as noted in Observation 11, the Variflex software was
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`proprietary and (ii) as noted in Observation 4, the Variflex software was not
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`designed to account for components not glued to the blade.
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`13.
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`In Exhibit 2029, on page 43, line 20 to page 45, line 6, Mr. Peck
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`testified that Adriaan Swanepoel, not Mr. Peck, trained Trico employees on use of
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`the Variflex software, and that Mr. Peck himself did not use the Variflex software
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`or determine inputs to the Variflex software. This testimony is relevant to Costco’s
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`reliance on Mr. Peck in its Reply at pages 7 and 20. It is relevant, especially in
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`view of Observation 12, because it shows that Mr. Peck’s familiarity with Variflex,
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`and therefore with the beam-blade-design process, is based on second-hand
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`knowledge; therefore his declaration testimony regarding these subjects carries
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`little weight.
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`14.
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`In Exhibit 2029, on page 7, lines 11 to 20, Mr. Peck testified that he
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`was being compensated at $150 per hour for his time preparing his declaration and
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`attending his deposition. This is relevant if Mr. Peck is, at least on certain issues, a
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`fact witness being paid for his recollections. See also Ex. 2029 at 112:19–114:22
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`(Mr. Peck, in response to leading questions from Costco’s counsel, contradicted his
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`prior testimony developed on cross-examination at 87:5–88:11). His declaration
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`therefore should be given minimal weight.
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`7
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`DATED: December 13, 2016
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`
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`Respectfully submitted,
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`
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`Shearman & Sterling LLP
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`
`
`/Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`Mark A. Hannemann (pro hac vice)
`Joseph M. Purcell, Jr. (pro hac vice)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`
`Counsel for Patent Owner
`Robert Bosch LLC
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`8
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`Certificate of Service
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`MOTION FOR OBSERVATION ON CROSS-EXAMINATION OF DAVID
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`PECK was served via electronic mail on December 13, 2016, on the following
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`counsel for Petitioner:
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`Richard M. Koehl (richard.koehl@hugheshubbard.com)
`James R. Klaiber (james.klaiber@hugheshubbard.com)
`David E. Lansky (david.lansky@ hugheshubbard.com)
`Stefanie Lopatkin (stefanie.lopatkin@hugheshubbard.com)
`James Dabney (james.dabney@hugheshubbard.com)
`
`
`
`/Patrick R. Colsher/
`Patrick R. Colsher
`Reg. No. 74,955
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`
`Counsel for Patent Owner
`Robert Bosch LLC
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