Paper No. ______
`Filed: October 9, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COSTCO WHOLESALE CORPORATION
`Petitioner
`
`v.
`
`ROBERT BOSCH LLC
`Patent Owner
`
`
`
`U.S. Patent 8,544,136
`DECLARATION OF JAMES W. DABNEY IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,544,136
`
`
`
`
`
`
`
`
`Costco Exhibit 1027, p. 1
`
`
`Filed: October 9, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COSTCO WHOLESALE CORPORATION
`Petitioner
`
`v.
`
`ROBERT BOSCH LLC
`Patent Owner
`
`
`
`U.S. Patent 8,544,136
`DECLARATION OF JAMES W. DABNEY IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,544,136
`
`
`
`
`
`
`
`
`Costco Exhibit 1027, p. 1
`
`
`
`My name
`
`is James W. Dabney.
`
`I am a member of the Bar of the
`States of New York and New Jersey and of the Firm of Hughes Hubbard 2 Reed
`for petitioner Costco Wholesale Corporation ("Petitioner" )
`
`LLP. I am lead counsel
`
`in a civil action entitled Robert Bosch LLC v. Alberee Products,
`
`Inc., C.A. No. 12-
`
`574 (LPS) (Consolidated), which is currently pending in the United States District
`
`Court
`
`for the District of Delaware
`
`(the "Delaware Action" ).
`
`I have personal
`
`knowledge of the matters
`
`stated in this declaration.
`
`Annexed hereto as Exhibits
`
`1 and 2 are true copies of infringement
`that Robert Bosch LLC ("Patent Owner" ) served in the Delaware
`
`contentions
`
`Action on or about October 31, 2014.
`
`I, JAMES W. DABNEY, hereby declare under
`
`the penalty of perjury that
`
`the fol cgo111g Is tluc and coITcct.
`
`Dated: October 9, 2015
`
`hmes W.
`
`Costco Exhibit 1027, p. 2
`
`
`
`EXHIBIT 1
`
`Costco Exhibit 1027, p. 3
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim 1:
`
`U.S. Patent No. 8,544,136
`
`Claim Element
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`A wiper blade (10) for an
`automobile windshield
`(14),
`
`The Arc Flex Ultra 1 is a wiper blade for an automobile windshield.
`
`
`
`
`1
`Goodyear Assurance and Arc Flex Ultra samples produced by defendants in 2012 in connection with the ITC Investigation 337-TA-816, In re Certain
`Wiper Blades, appear to have the same design. This claim chart represents Bosch's infringement allegations with regard to both models.
`
`- 2 -
`
`Costco Exhibit 1027, p. 4
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim Element
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`with an elongated belt-
`shaped, flexible resilient
`support element (12)
`having a longitudinal
`axis, on a lower belt
`surface (22) of which
`that faces the windshield
`is located an elastic
`rubber wiper strip (24)
`sitting against the
`windshield that extends
`parallel to the
`longitudinal axis, and on
`an upper belt surface
`(16) of which a wind
`deflection strip (42 or
`112) is located
`
`The wiper blade has an elongated belt-shaped, flexible resilient support element (a) having a longitudinal axis, on a lower belt
`surface (b) of which that faces the windshield is located an elastic rubber wiper strip (c) sitting against the windshield that extends
`parallel to the longitudinal axis, and on an upper belt surface (d) of which a wind deflection strip (e) is located. To the extent this
`limitation is not literally present in the accused wiper blade, for example under claim-constructions proposed by the parties or
`adopted by the Court, it is present at least under the doctrine of equivalents.
`
`
`a
`
`d
`
`b
`
`e
`
`d
`
`b
`
`a
`
`e
`
`
`
`
`
`c
`
`a
`
`
`
`- 3 -
`
`Costco Exhibit 1027, p. 5
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim Element
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`The wind deflection strip (e) has an incident surface (f) facing a main flow direction of a driving wind (g), said deflection strip
`extending in the longitudinal direction of the support element.
`
`g
`
`
`
`e
`
`f
`
`
`
`e
`
`e
`
`
`
`The wiper blade is characterized in that the wind deflection strip has two sides (h, i) that diverge from a common base point (j) as
`seen in a cross section.
`
`j
`
`i
`
`
`
`h
`
`- 4 -
`
`that has an incident
`surface (54 or 140)
`facing a main flow
`direction of a driving
`wind (arrow 52), said
`deflection strip extending
`in the longitudinal
`direction of the support
`element,
`
`characterized in that the
`wind deflection strip has
`two sides (48, 50 or 136,
`138) that diverge from a
`common base point (46
`or 134) as seen in a cross
`section,
`
`Costco Exhibit 1027, p. 6
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim Element
`
`and that the incident
`surface (54 or 140) is
`located at the exterior of
`one side (50 or 138),
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`The wind deflection strip is characterized in that the incident surface (f) is located at the exterior of one side (i).
`
`f
`
`i
`
`
`
`- 5 -
`
`Costco Exhibit 1027, p. 7
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim Element
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`The wiper blade is characterized in that the support element (a) has outer edges (l), wherein the sides of the wind deflection strip
`have respective free ends having thereon respective claw-shaped extensions (m) that fittingly grip around the outer edges (l) of the
`support element at least in sections and engage at least one of the upper belt surface (d) and the lower belt surface (b), so that the
`wind deflection strip (e) can be snapped onto the outer edges or slid onto the outer edges in a longitudinal direction.
`
`
`
`
`e
`
`d
`
`m
`
`l
`
`
`
`m
`
`l
`
`
`
`b
`
`
`
`
`
`
`
`a
`
`l
`
`e
`
`m
`
`
`
`m
`
`- 6 -
`
`wherein the support
`element has outer edges,
`wherein the sides of the
`wind deflection strip
`have respective free ends
`having thereon
`respective claw-shaped
`extensions that fittingly
`grip around the outer
`edges of the support
`element at least in
`sections and engage at
`least one of the upper
`belt surface (24) and the
`lower belt surface (22),
`so that the wind
`deflection strip can be
`snapped onto the outer
`edges or slid onto the
`outer edges in a
`longitudinal direction,
`
`
`
`Costco Exhibit 1027, p. 8
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim Element
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`The wiper blade is characterized in that the wind deflection strip has a height extending from the base point to ends of the sides
`farthest from the base point, and wherein a substantial majority of the height is above the upper belt surface (d) in a direction
`facing away from the windshield.
`
`
`
`d
`
`The wiper blade is characterized in that wind deflection strip is designed as a binary component whose longitudinal area provided
`with the claw-shaped extensions (m) is made of a harder material than a longitudinal area lying closer to the base point (j).
`
`
` j
`
`
`
`
`
` m
`
`- 7 -
`
`wherein the wind
`deflection strip has a
`height extending from
`the base point to ends of
`the sides farthest from
`the base point, wherein a
`substantial majority of
`the height is above the
`upper belt surface in a
`direction facing away
`from the windshield,
`
`and characterized in that
`the wind deflection strip
`is designed as a binary
`component whose
`longitudinal area
`provided with the claw-
`shaped extensions is
`made of a harder
`material than a
`longitudinal area lying
`closer to the base point.
`
`
`
`
`
`Costco Exhibit 1027, p. 9
`
`
`
`EXHIBIT 2
`
`Costco Exhibit 1027, p. 10
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`Claim 21:
`
`
`Claim Element
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`A wiper blade (10) for an
`automobile windshield
`(14),
`
`The Arc Flex Ultra is a wiper blade for an automobile windshield.
`
`
`
`with an elongated belt-
`shaped, flexible resilient
`support element (12)
`having a longitudinal
`axis, on a lower belt
`surface (22) of which
`that faces the windshield
`is located an elastic
`rubber wiper strip (24)
`sitting against the
`windshield that extends
`parallel to the
`longitudinal axis, and on
`an upper belt surface
`(16) of which a wind
`deflection strip (42 or
`112) is located
`
`
`The wiper blade has an elongated belt-shaped, flexible resilient support element (a) having a longitudinal axis, on a lower belt
`surface (b) of which that faces the windshield is located an elastic rubber wiper strip (c) sitting against the windshield that extends
`parallel to the longitudinal axis, and on an upper belt surface (d) of which a wind deflection strip (e) is located. To the extent this
`limitation is not literally present in the accused wiper blade, for example under claim-constructions proposed by the parties or
`adopted by the Court, it is present at least under the doctrine of equivalents.
`
`
`a
`
`d
`
`b
`
`e
`
`d
`
`b
`
`- 30 -
`
`a
`
`e
`
`
`
`
`
`c
`
`a
`
`
`
`Costco Exhibit 1027, p. 11
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim Element
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`The wind deflection strip (e) has an incident surface (f) facing a main flow direction of a driving wind (g), said deflection strip
`extending in the longitudinal direction of the support element.
`
`g
`
`
`
`e
`
`f
`
`
`
`e
`
`e
`
`
`
`The wiper blade is characterized in that the wind deflection strip has two sides (h, i) that diverge from a common base point (j) as
`seen in a cross section.
`
`j
`
`i
`
`
`
`h
`
`- 31 -
`
`that has an incident
`surface (54 or 140)
`facing a main flow
`direction of a driving
`wind (arrow 52), said
`deflection strip extending
`in the longitudinal
`direction of the support
`element,
`
`characterized in that the
`wind deflection strip has
`two sides (48, 50 or 136,
`138) that diverge from a
`common base point (46
`or 134) as seen in a cross
`section,
`
`
`
`Costco Exhibit 1027, p. 12
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim Element
`
`and that the incident
`surface (54 or 140) is
`located at the exterior of
`one side (50 or 138),
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`The wind deflection strip is characterized in that the incident surface (f) is located at the exterior of one side (i).
`
`f
`
`i
`
`
`
`- 32 -
`
`Costco Exhibit 1027, p. 13
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim Element
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`The wiper blade is characterized in that the support element (a) has outer edges (l), wherein the sides of the wind deflection strip
`have respective free ends having thereon respective claw-shaped extensions (m) that fittingly grip around the outer edges (l) of the
`support element at least in sections and engage at least one of the upper belt surface (d) and the lower belt surface (b), so that the
`wind deflection strip (e) can be snapped onto the outer edges or slid onto the outer edges in a longitudinal direction. To the extent
`this limitation is not literally present in the accused wiper blade, for example under claim-constructions proposed by the parties or
`adopted by the Court, it is present at least under the doctrine of equivalents.
`
`
`
`
`e
`
`d
`
`m
`
`l
`
`
`
`m
`
`l
`
`
`
`b
`
`
`
`
`
`
`
`a
`
`l
`
`e
`
`m
`
`
`
`m
`
`- 33 -
`
`wherein the support
`element has outer edges,
`wherein the sides of the
`wind deflection strip
`have respective free ends
`having thereon
`respective claw-shaped
`extensions that fittingly
`grip around the outer
`edges of the support
`element at least in
`sections and engage at
`least one of the upper
`belt surface (24) and the
`lower belt surface (22),
`so that the wind
`deflection strip can be
`snapped onto the outer
`edges or slid onto the
`outer edges in a
`longitudinal direction,
`
`
`
`Costco Exhibit 1027, p. 14
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim Element
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`wherein each of the
`claw-shaped extensions
`includes a wall extending
`beneath and parallel to
`the lower belt surface of
`the support element, the
`wall defining the point of
`the respective side
`farthest from the base
`point,
`
`The wiper blade is characterized in that each of the claw-shaped extensions (m) includes a wall (v) extending beneath and parallel
`to the lower belt surface (b) of the support element, the wall defining the point of the respective side farthest from the base point
`(j).
`
` h
`
` m
`
`i
`
` b
`
` v
`
`m
`
` b
`
` v
`
`
`
`- 34 -
`
`Costco Exhibit 1027, p. 15
`
`
`
`U.S. Patent No. 8,544,136
`
`
`
`
`
`
`Claim Element
`
`Arc Flex Ultra/Goodyear Assurance Wiper Blade
`
`The wiper blade is characterized in that the claw-shaped extensions (m) contact the flexible resilient support element (a) along a
`majority of a longitudinal extent of the wiper blade.
`
`
`and wherein the claw-
`shaped extensions
`contact the flexible
`resilient support element
`(12) along a majority of a
`longitudinal extent of the
`wiper blade (10).
`
`
`
` m
`
`
`
` m
`
` a
`
`- 35 -
`
`Costco Exhibit 1027, p. 16
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