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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
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`Case IPR2016-00041
`Patent 8,099,823
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`____________
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`PETITIONER’S RESPONSE TO PAPER NO. 58 STYLED
`“PATENT OWNER’S LIST OF IMPROPER REPLY ARGUMENTS,
`PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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`IPR2016-00041
`PETITIONER’S RESPONSE TO PAPER NO. 58 STYLED “PATENT OWNER’S LIST OF
`IMPROPER REPLY ARGUMENTS, PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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`U.S. Patent No. 3,428,679 (“Barth”). Patent Owner asserts that the Board
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`purportedly erred in its Order issued December 12, 2016 (“Order,” Paper 48)
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`holding that Petitioner was entitled to rely on Barth to rebut Patent Owner’s factual
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`assertion that, prior to August 21, 1997, persons having ordinary skill in the wiper
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`art purportedly did not understand the causes of wiper “wind lift” and purportedly
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`harbored an erroneous and false belief that flat spring wipers were not subject to
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`“wind lift.” Patent Owner’s assertion in this regard amounts to a meritless and
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`wholly unsupported motion for reconsideration. It is, moreover, a gratuitous
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`argument in this IPR2016-00041 which does not involve Barth.
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`Skill to Combine. Costco’s Petition presented, and this proceeding was
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`instituted on, obviousness grounds that rely on a “simple arrangement of old
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`elements,” i.e. “retrofit[ting] the spoilers” of Prohaska on to the flat-spring wipers
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`of Appel, Hoyler, Kotlarski ’383, or Merkel. Decision, Paper 20 at 14, 17-18.
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`Bosch countered that the “conventional thinking at the time was to avoid any
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`additional components on a beam blade” and “beam blades are highly sensitive.”
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`Resp., Paper 32 at 3-5, 10; see id. at 16-17. Costco’s rebuttal cited admitted prior
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`art in the background of U.S. Patent No. 8,099,823 (the “’823 Patent,” Ex. 1001)
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`and the Declaration of David Peck (Ex. 1100 at ¶ 9), which established that (1)
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`spoilers on flat-spring wipers were known before the claimed invention of the ’823
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`1
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`IPR2016-00041
`PETITIONER’S RESPONSE TO PAPER NO. 58 STYLED “PATENT OWNER’S LIST OF
`IMPROPER REPLY ARGUMENTS, PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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`Patent and (2) ordinarily-skilled persons were skilled enough to account for the
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`additional stiffness of a spoiler structure mounted on a flat-spring wiper support.
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`See Reply, Paper 38 at 6-7 (citing Resp. at 4, 10), 20 (citing Resp. at 16-17).
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`Costco’s rebuttal properly relies on expert testimony to counter a factual
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`assertion by Patent Owner regarding the supposedly low level of skill in the art at
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`the time the claimed invention was made, especially since the assertion contradicts
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`admitted prior art in the ’823 Patent’s background and Petitioner could not
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`reasonably have anticipated such an assertion. See 37 C.F.R. 42.23(b); Belden Inc.
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`v. Berk-Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015) (finding reply expert
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`testimony that “confirm[s] the prima facie case” proper); Volkswagen Grp. of Am,
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`Inc. v. Emerachem Holdgs., LLC, IPR2014-01555 Paper 36 at 5 (PTAB October 9,
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`2015) (“[P]etitioner does not have to anticipate all possible arguments . . . [of]
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`patent owner . . . .”).
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`Dated: December 23, 2016
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`Respectfully Submitted,
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`/James R. Klaiber
`James R. Klaiber
`Registration No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004
`James.klaiber@hugheshubbard.com
`(212) 837-6125
`Attorney for Petitioner Costco Wholesale Corp.
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`2
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`IPR2016-00041
`PETITIONER’S RESPONSE TO PAPER NO. 58 STYLED “PATENT OWNER’S LIST OF
`IMPROPER REPLY ARGUMENTS, PURSUANT TO THE BOARD’S DECEMBER 12 ORDER”
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 23rd day of December, 2016, the foregoing
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`Petitioner’s Response to Paper No. 58 Styled “Patent Owner’s List of Improper
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`Reply Arguments, Pursuant to the Board’s December 12 Order” was served in its
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`entirety by email on the attorneys of record for Patent Owner:
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`Patrick R. Colsher (patrick.colsher@shearman.com)
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`Mark Hannemann (mark.hannemann@shearman.com)
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`Joseph Purcell (joseph.purcell@shearman.com)
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`/James R. Klaiber/
`James R. Klaiber
`Registration No. 41,902
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`
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`74906719
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