Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00034
`U.S. Patent No. 6,973,698
`______________________
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

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`
`TABLE OF CONTENTS
`
`
`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`Page
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`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Level of ordinary skill in the art ...................................................................... 1
`
`III. The combination of Arai and Appel ’770 does not render obvious claim
`1 ....................................................................................................................... 2
`
`A.
`
`The combination does not teach or suggest: “said contact force of
`said wiper strip being greater in said center section than in at least
`one of said two end sections” ................................................................ 3
`
`1.
`
`2.
`
`Petitioner does not allege that Appel ’770 teaches or
`suggests that the contact force is greater in the center
`section than in an end section ..................................................... 4
`
`Arai does not teach or suggest that the contact force is
`greater in the center section than in an end section .................... 5
`
`B.
`
`C.
`
`The Institution Decision mistakenly cites to Appel ’551 (which is
`not part of this ground) instead of Arai and Appel ’770 ..................... 10
`
`The combination does not teach or suggest: “a concave curvature
`in said center sections of the carrying element is sharper than in
`said sections thereof”........................................................................... 16
`
`D. A POSITA would not have been motivated to combine Arai and
`Appel ’770, let alone to arrive at challenged claim 1 ......................... 17
`
`E.
`
`Arai and Appel ’770 failed to recognize the problem solved by the
`’698 patent, and in fact, taught as a solution the ’698 patent’s
`identified problem ............................................................................... 19
`
`F.
`
`The objective indicia of non-obviousness ........................................... 20
`
`IV. Swanepoel does not anticipate claim 1 .......................................................... 28
`
`A.
`
`Swanepoel discloses—opposite to the challenged claim—that the
`contact force is less in the center section than in an end section ........ 29
`
`
`
`i
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`

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`Swanepoel’s “at the tips” disclosure does not teach that the
`contact force is greater in the center section than in an end section ... 31
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`B.
`
`1.
`
`2.
`
`3.
`
`The very “tip” of a wiper is not the end section ....................... 33
`
`The disclosure of a decrease in loading at some point near
`the tip of the wiper does not provide any evidence of
`whether or not (or where) the decreasing contact force ever
`passes below the contact force in the center section ................. 34
`
`A force per unit length of zero along the length of the
`Swanepoel wiper takes the wiper outside the scope of the
`claim at issue, which requires a “spring-elastic carrying
`element extending parallel to an axis of elongation of said
`wiper strip to distribute a contact force against the window
`over an entire length of said wiper strip” ................................. 35
`
`4.
`
`Petitioner’s inherency argument fails ....................................... 35
`
`V. Dr. Davis lacks credibility ............................................................................. 37
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`VI. Conclusion ..................................................................................................... 41
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`ii
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`
`TABLE OF AUTHORITIES
`
` Page
`
`Cases
`ActiveVideo v. Verizon Communications, Inc., 694 F.3d 1312 (Fed.
`Cir. 2012) ............................................................................................................ 17
`
`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272 (Fed.
`Cir. 2000) ............................................................................................................ 14
`
`Alco Standard Corp. v. Tenn. Valley Auth., 808 F.2d 1490 (Fed. Cir.
`1986) ................................................................................................................... 25
`
`Cardiac Pacemakers, Inc. v. St. Judge Med., Inc., 381 F.3d 1371 (Fed.
`Cir. 2004) ............................................................................................................ 19
`
`Continental Can USA, Inc. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir.
`1991) ................................................................................................................... 36
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litigation, 676 F.3d 1063 (Fed. Cir. 2012) ............................................. 25
`
`Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) ............................... 2, 21
`
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951
`(Fed. Cir. 2000) ..................................................................................................... 8
`
`InTouch Techs., Inc. v. VGo Comm’ns, Inc., 751 F.3d 1327 (Fed. Cir.
`2014) ................................................................................................................... 18
`
`Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) ....................passim
`
`Metabolite Labs., Inc. v. Laboratory Corp. of Am. Holdings, 370 F.3d
`1354 (Fed. Cir. 2004) .......................................................................................... 27
`
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ..................... 29
`
`Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001) ............................................. 2
`
`In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984) ....................................................... 25
`
`
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`iii
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`
`In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) ................................................ 36, 37
`
`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir.
`2003) ............................................................................................................. 21, 28
`
`Scripp Clinic Research Found. v. Genentech, Inc., 927 F.2d 1565
`(Fed. Cir. 1991) ................................................................................................... 29
`
`In re Sernaker, 702 F.2d 989 (Fed. Cir. 1983) ........................................................ 28
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) ........................ 21
`
`Transocean Offshore Deepwater Drilling Inc. v. Maersk Drilling
`USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012) ......................................................... 21
`
`Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc., 813 F.2d 1207 (Fed. Cir.
`1987) ................................................................................................................... 21
`
`WBIP, LLC v. Kohler Co., ___ F.3d ___, 2016 WL 3902668 (Fed. Cir.
`July 19, 2016)...............................................................................................passim
`
`In re Wright, 569 F.2d 1124 (CCPA 1977) ............................................................... 9
`
`Statutes
`
`35 U.S.C. § 102(b) ..................................................................................................... 1
`
`35 U.S.C. § 103 .......................................................................................................... 1
`
`35 U.S.C. § 112 ........................................................................................................ 40
`
`Other Authorities
`
`37 C.F.R. § 42.51(b)(1)(iii) ...................................................................................... 40
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`iv
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`Exhibit Number
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`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`Ex. 2010
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`Ex. 2011
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`LIST OF EXHIBITS
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`Description
`
`Cross-reference key correlating exhibits across instituted
`inter partes review proceedings
`
`Deposition of Petitioner’s Declarant, Gregory Davis, dated
`July 7, 2016
`
`Declaration of Dr. Steven Dubowsky
`
`Curriculum Vitae of Dr. Steven Dubowsky
`
`April 15, 2010 Trial Transcript from Robert Bosch LLC v.
`Pylon Manufacturing Corporation in the District of
`Delaware, Case No. 08-542 (SLR)
`
`April 19, 2010 Trial Transcript from Robert Bosch LLC v.
`Pylon Manufacturing Corporation in the District of
`Delaware, Case No. 08-542 (SLR)
`
`Declaration of Martin Kashnowski
`
`U.S. Patent No. 2,596,063
`
`U.S. Patent No. 3,418,679
`
`Excerpt from Supplemental Initial Expert Report of Gregory
`Davis Regarding U.S. Patent Nos. 6,675,434, 6,836,926 and
`6,973,698 in In the Matter of Certain Wiper Blades, Inv. No.
`337-TA-816 before the U.S. International Trade
`Commission
`
`Order No. 94 from In the Matter of Certain Wiper Blades,
`Inv. No. 337-TA-816 before the U.S. International Trade
`Commission
`
`Ex. 2012
`
`[Not used; reserved]
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`v
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`Exhibit Number
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`
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`Description
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`Ex. 2013
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`Ex. 2014
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`Ex. 2015
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`Ex. 2016
`
`Excerpt from Declaration of Gregory Davis, Ex. 1013 in
`IPR 2016-00034
`
`Plaintiff Robert Bosch LLC’s Amended Response to
`Defendant Costco Wholesale Corporation’s First Set of
`Interrogatories (No. 1), dated June 2, 2015, in Robert Bosch
`LLC v. Alberee Products, Inc., in the District of Delaware,
`Case No. 12-574 (LPS)
`
`Exhibit 24 to Complaint in In the Matter of Certain Wiper
`Blades, Inv. No. 337-TA-816 before the U.S. International
`Trade Commission (claim charts)
`
`Exhibit 25 to Complaint in In the Matter of Certain Wiper
`Blades, Inv. No. 337-TA-816 before the U.S. International
`Trade Commission (claim charts)
`
`
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`vi
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`
`I.
`
`Introduction
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`Patent Owner Robert Bosch LLC (“Patent Owner” or “Bosch”) submits this
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`Patent Owner Response regarding U.S. Patent Number 6,973,698 (“the ’698
`
`patent”). The Board instituted inter partes review of claim 1 of the ’698 patent as
`
`to whether it is (1) obvious under 35 U.S.C. § 103 in view of U.S. Patent No.
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`4,807,326 to Arai (“Arai”) and U.S. Patent No. 4,028,770 to Appel (“Appel ’770”);
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`and (2) anticipated under 35 U.S.C. § 102(b) based on U.S. Patent No. 5,325,564
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`to Swanepoel (“Swanepoel”). For the reasons set forth herein, Patent Owner
`
`respectfully submits that the Board should determine that the challenged claim is
`
`not unpatentable.
`
`II. Level of ordinary skill in the art
`A person of ordinary skill in the art at the time of the invention of the ’698
`
`patent (“POSITA”) would have had either an undergraduate degree in mechanical
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`engineering or a similar discipline, or several years of experience in the field of
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`wiper blade manufacture and design. Ex. 2003 at ¶¶ 16–19.
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`Petitioner asserts that “the level of skill level [sic] in the art of the ’698
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`Patent included at least the ability to make the subject matter disclosed in [prior
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`art] patents and . . . publications,” that “the level of skill level [sic] in the art also
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`included the ability to make predictable use of the materials and components
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`described above according to their established functions,” and that “[a] person of
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`1
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`ordinary skill in the art would have the education and experience in mechanical
`
`engineering to have knowledge of the information deployed in these patents and
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`printed publications.” Paper 1, Petition (“Pet.”) at 28–29. Petitioner is wrong,
`
`confusing the “content of the prior art” Graham factor and the “level of skill in the
`
`art” Graham factor. While the prior art can reflect the level of skill, the point of
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`identifying the level of skill is to avoid hindsight and add objectivity to the
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`obviousness analysis. “Skill in the art does not act as a bridge over gaps in
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`substantive presentation of an obviousness case, but instead supplies an important
`
`guarantee of objectivity in the process.” Okajima v. Bourdeau, 261 F.3d 1350,
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`1355 (Fed. Cir. 2001). Compressing the content of the prior art and the skill of the
`
`ordinary artisan into a single factor renders tautological the analysis of the scope of
`
`the prior art—including the analysis of whether and how references would be
`
`combined. It essentially assumes the sought-for result.
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`III. The combination of Arai and Appel ’770 does not render obvious claim
`1
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`Petitioner asserts that the challenged claim is obvious over the combination
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`of Arai and Appel ’770. The asserted combination, however, is insufficient to
`
`render the challenged claim obvious because (A) the references fail to teach or
`
`suggest the claim limitation, “said contact force of said wiper strip being greater in
`
`said center section than in at least one of said two end sections”; (B) the references
`
`fail to teach or suggest the claim limitation, “a concave curvature in said center
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`U.S. Patent No. 6,973,698
`section of the carrying element is sharper than in said sections thereof”; (C) a
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`POSITA would not have been motivated to combine Arai and Appel ’770; (D) Arai
`
`and Appel ’770 failed to recognize the problem solved by the ’698 patent, and in
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`fact, taught as a solution the ’698 patent’s identified problem (i.e., uniform pressure
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`distribution); and (E) the evidence of objective considerations compels a finding of
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`non-obviousness.
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`A. The combination does not teach or suggest: “said contact force of
`said wiper strip being greater in said center section than in at
`least one of said two end sections”
`
`As a threshold matter, prior art directed to beam blade wipers—including the
`
`prior art relied upon in the instituted grounds—was generally concerned with
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`achieving the most uniform pressure distribution possible. See, e.g., Exs. 1004,
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`1005, 1006; see also Ex. 2003 at ¶ 51. No prior art beam blade reference
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`suggested that, in practice, the uniform pressure distribution would result in an
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`undesirable noise when the wiper strip would flip over simultaneously over its
`
`entire length. It was only the inventor of the ’698 patent who discovered this
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`problem, and solved it by requiring the wiper blade to have a lower force in at least
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`one end section, so that the flipping over of the wiper strip starts in that section
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`first, and gradually moves through the length of the wiper strip in a rolling fashion,
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`mitigating the noise. See Ex. 1001 at 1:40–2:15; Ex. 2003 at ¶ 51.
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`3
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`1.
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`Petitioner does not allege that Appel ’770 teaches or
`suggests that the contact force is greater in the center
`section than in an end section
`
`Petitioner does not contend that Appel ’770 teaches the claimed contact force
`
`being greater in the center section than in an end section. While Petitioner cites in
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`its claim chart to U.S. Patent No. 3,192,551 (“Appel ’551”)—which Petitioner
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`asserts is incorporated by reference into Appel ’770—Petitioner asserts only that it
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`“discloses a wiper strip that distributes a contact force against the window over an
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`entire length of a wiper strip and a wiper strip having a center section and end
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`section.” Pet. at 36. That is, Petitioner alleges only that Appel ’770 (through its
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`incorporation of Appel ’551) distributes some undefined contact force. Petitioner
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`does not, however, argue that Appel ’770 (or Appel ’551, for that matter) discloses
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`that the contact force is greater in the center section than in an end section, as
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`required by claim 1.1
`
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`1 For good reason: Appel ’770 teaches uniform pressure distribution, and its
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`incorporation by reference of Appel ’551 is for the sole purpose of its uniform
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`pressure distribution teachings. Ex. 1006 at 3:14–51; Ex. 2002 at 40:12–44:23; Ex.
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`2003 at ¶¶ 48–51, 54.
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`Arai does not teach or suggest that the contact force is
`greater in the center section than in an end section
` Petitioner and its Declarant, Dr. Davis,2 rely exclusively on an earlier
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`2.
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`decision by the Board of Appeals and Interferences (“BPAI”) during the
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`prosecution of the ’698 patent for the premise that Arai explicitly teaches that the
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`contact force is greater in the center section than in an end section. Pet. at 29–40;
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`Ex. 2002 at 14:18–16:19.3 There is no technical testimony from Dr. Davis about
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`such a teaching in Arai.
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`The Board, in its Institution Decision, similarly relies on the BPAI decision
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`and institutes this IPR based on explicit anticipation. However, in actual fact, the
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`2 There are currently six pending IPRs filed by Petitioner that involve overlapping
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`prior art references and the same Petitioner Declarant, Dr. Davis, Case Nos.
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`IPR2016-00034; IPR2016-00036; IPR2016-00038; IPR2016-00039; IPR2016-
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`00040; and IPR 2016-00041. Because the same references appear in multiple IPRs
`
`with different exhibit numbers, and because the parties agreed to conduct a single,
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`consolidated deposition of Dr. Davis, Patent Owner provides herewith as Ex. 2001
`
`(as it did during Dr. Davis’s deposition) a table showing the corresponding exhibit
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`numbers for references that appear in multiple IPRs.
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`3 Dr. Davis only opines that the challenged claim of the ’698 patent parallels the
`
`claim discussed in the BPAI decision.
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`BPAI did not rule that this limitation is explicitly disclosed in Arai, but rather that it
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`is inherent in Arai. Ex. 1002 at 293–94. For this reason alone, this ground should
`
`fail.
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`But, further, the BPAI’s inherency decision was incorrect. A POSITA would
`
`not find the claimed contact force limitation to be either actually disclosed in or
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`inherently disclosed in Arai. For example, Arai discloses that:
`
`•
`
`•
`
`•
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`“The present invention . . . aims to provide a backing
`member for enabling uniform pressure distribution along
`the length of the blade rubber.”4
`
`“It is important that a blade rubber contacts with the
`surface of a windshield being wiped under a uniform
`pressure distribution . . .”5
`
`“According to the invention, the backing member can
`easily be formed to have desired rigidity against bending,
`thus, it is not required to connect the wiperblade to the
`yoke member through three or more points for obtaining
`uniform pressure distribution. . .”6
`
`•
`
`“[T]he backing member 3 is formed to have the cross-
`sectional configuration as shown in backing member 3’
`of FIG. 4, so as to have suitable rigidity against bending .
`
`4 Ex. 1004 at 1:30–34 (emphasis added).
`5 Ex. 1004 at 1:12–15 (emphasis added).
`6 Ex. 1004 at 2:3–8 (emphasis added).
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`. . whereby the force transmitted from the yoke member
`can [be] uniformly dispersed along the length of the blade
`rubber.”7
`
`•
`
`“Thus, the pressure distribution along the length of the
`blade rubber is uniform, and the wiperblade can follow a
`curved windshield.”8
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`While Arai acknowledges that there may be “small” pressure changes along
`
`the blade in actual implementation, (Ex. 1004 at 3:48–4:3), Arai’s goal is to
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`effectively eliminate those inconsistencies and to ensure as uniform a pressure
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`distribution as possible, (Ex. 1004 at 1:24–34). Therefore, a POSITA would have
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`understood that Arai teaches uniform pressure distribution (i.e., constant pressure),
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`and that the unquantified “small” fluctuations in practice are still within the
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`meaning of “uniform.” Ex. 2003 at ¶ 44–47, 51; see also generally Ex. 1004.
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`Petitioner cites to Arai, from column 3, line 48 to column 4, line 8, and
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`identifies Figures 7 and 8 (without explanation) in support of Petitioner’s argument
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`that Arai shows the claimed contact force being greater in the center section than in
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`an end section. Pet. at 36. However, as discussed above, Arai at column 3, line 48
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`to column 4, line 8 simply identifies that there is some unspecified “small” pressure
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`fluctuation along the blade; it does not describe the contact force as claimed in
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`7 Ex. 1004 at 3:16–22 (emphasis added).
`8 Ex. 1004 at 3:34–36 (emphasis added).
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`U.S. Patent No. 6,973,698
`claim 1 of the ’698 patent. Figure 7 likewise only shows that the pressure fluctuates
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`slightly over the length. See Ex. 1004 at FIG. 7, 3:48–4:3; Ex. 2003 at ¶ 46. The
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`figure provides no sense of where on the blade the pressure fluctuates, or how much
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`it fluctuates. See Ex. 1004 at FIG. 7, 3:48–4:3; Ex. 2003 at ¶ 46. That is, it only
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`shows that there is a general fluctuation up and down (which, again, Arai describes
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`as “small”). See Ex. 1004 at FIG. 7, 3:48–4:3; Ex. 2003 at ¶ 46. And, even at “high
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`pressure” in Figure 7, Arai provides no indication of what the contact pressures are
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`relative to the pressures actually used in the wiper system. Ex. 2003 at ¶ 46. Arai
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`Figure 8 illustrates the prior art—which Arai identifies as being problematic and
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`teaches to avoid.9 Ex. 1004 at 3:67–4:3; Ex. 2003 at ¶ 47.
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`It is improper to attempt to expand the teachings of Arai here, where the Arai
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`specification and figures provide no scale to make any determinations other than the
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`fact there is some unquantified “small” pressure fluctuations. See Hockerson-
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`9 The BPAI found that Figure 8 “‘shows [a] prior art wiperblade’ for which [Arai]
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`provides no disclosure of the structure of the prior art article,” and that “there is no
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`factual basis for comparing the results reported in Arai FIG. 8 with the articles
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`claimed in the appealed claims.” Ex. 1002 at 293 (n5). It is disingenuous for
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`Petitioner to argue, on the one hand, that “the BPAI’s decisions . . . were entirely
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`correct,” (Pet. at 33), and, on the other, rely on Figure 8 in support of its
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`obviousness ground.
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (“it
`
`is well established that patent drawings do not define the precise proportions of the
`
`elements and may not be relied on to show particular sizes if the specification is
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`completely silent on the issue.”); see also In re Wright, 569 F.2d 1124, 1127
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`(CCPA 1977) (“Absent any written description in the specification of quantitative
`
`values, arguments based on measurement of a drawing are of little value.”).
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`Further, the ’698 patent itself acknowledges that “uniform” contact force may
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`not be absolutely 100% uniform, such that a POSITA would understand that minor
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`fluctuations in force distribution are not within the scope of the claim requirement
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`of a greater contact force in the center section than in an end section. For example,
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`the ’698 patent describes a “virtually uniform contact force” in the center section
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`and that “this contact force . . . sharply decreases at both ends sections . . .,” (Ex.
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`1001 at 4:16–20 (emphasis added)); and a “contact force . . . [that] is essentially
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`uniform in the center region . . . and that . . . decreases slightly toward one [end
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`section] and . . . decreases considerably in the vicinity of the other,” (Ex. 1004 at
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`4:33–40 (emphasis added)). Both the ’698 patent and Arai are simply
`
`acknowledging reality—that absolute, 100% uniform force may not be possible
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`when implementing their inventions in a physical wiper blade (instead of as
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`theoretically described in the paper patents).
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`Indeed, Petitioner and its Declarant, Dr. Davis, admit that this is true by
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`arguing that a POSITA would have been motivated to combine Arai and Appel
`
`’770 “. . . to obtain a wiper blade with an appropriately curved carrying element
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`that maintains relatively uniform pressure distribution and results in good wiping
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`quality.” Pet. at 40 (emphasis added); Ex. 1013 at ¶ 54 (emphasis added);10 see
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`also Ex. 2002 at 19:2–20:9; 36:4–37:6. Petitioner’s argument that a POSITA
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`would have combined Arai and Appel ’770 to maintain uniformity, and that the
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`result would have been a beam blade with non-uniform distribution contact force
`
`greater in the center section than in an end section, is internally inconsistent.
`
`B.
`
`The Institution Decision mistakenly cites to Appel ’551 (which is
`not part of this ground) instead of Arai and Appel ’770
`
`
`
` In the Institution Decision, the Board indicates that it is citing to Arai for the
`
`disclosure of the contact force being greater in the center section than in an end
`
`section. However, upon scrutiny, it is clear that the Board is not citing to Arai.
`
`Rather, the Board is citing to Appel ’551.
`
`
`
`The Board states as follows:
`
`As shown in Figure 5 of Arai, backbone 36a and rubber
`blade 37a have a free form circular arc curvature modified at
`the ends with somewhat less curvature, adapted to provide
`uniform contact pressure along the length of contact with a
`
`
`10 The Petition and Dr. Davis’s Declaration include the same quote.
`
`
`
`10
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`flat windshield when fully depressed by the actuating arm.
`Ex. 100411, col. 3, l. 73–col. 4, l. 3.
`
`Paper 16, Institution Decision at 23 (emphasis in original). But, Arai does not
`
`include a line 73, (Ex. 1004 at col. 3; Ex. 2002 at 59:7–15), and Arai Figure 5 does
`
`not (nor does any other figure in Arai) disclose backbone 36a or rubber blade 37a,
`
`(see generally Ex. 1004).
`
`
`
`The Board must have meant to cite to Appel ’551 (Ex. 1005), which states at
`
`column 3, line 73 to column 4, line 3:
`
`As shown in FIG. 5 the backbone 36a and rubber blade
`37a have a free form circular arc curvature modified at
`the ends with somewhat less curvature, adapted to
`provide uniform contact pressure along the length of
`contact with a flat windshield 43 when fully depressed by
`the actuating arm (not shown).
`
`But, as the Board itself appears to acknowledge, this disclosure in Appel ’551
`
`discloses “uniform contact pressure,” not the claimed distribution where the contact
`
`force is greater in the center section than in an end section. Institution Decision at
`
`23.
`
`And, in any event, Appel ’551 is not part of the obviousness combination at
`
`issue; which is Arai plus Appel ’770.
`
`
`11 Ex. 1004 is Arai.
`
`
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`11
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`The Board also indicates that it is citing directly to Appel ’770, apparently
`
`for a disclosure of the claimed contact force being greater in the center section than
`
`in an end section (even though Petitioner did not even allege such a teaching was
`
`there, Pet. at 36–40), but this too is obviously another cite to Appel ’551.
`
`The Board states as follows:
`
`Appel ’770 also discloses, however, that progressive
`pressure contact from the ends to center can be achieved
`through various constructional approaches incorporating
`progressive dimensional variations in free form curvature.
`[Appel ’770] at col. 3, ll. 9–22; ll. 31–36.
`
`Institution Decision at 25 (emphasis in original).
`
`These citations in Appel ’770 state:
`
`with aligned bores or apertures, generally designated by
`the numeral 30. The flanges 26, 28 define a cavity or
`recess 32 therebetween adapted to nestingly receive a
`portion of the connector 14 in a manner hereinafter to be
`described. As previously mentioned, the superstructure
`16 is formed in a generally arcuate or curvalinear shape,
`as best seen in FIG. 1, whereby to provide a substantially
`uniform wiping pressure of the wiper blade 18 against the
`associated windshield. As described in U.S. Pat. No.
`3,192,551, which patent is incorporated by reference in
`the descriptive portion of this specification, the aforesaid
`
`
`
`12
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`

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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`uniform pressure may be accomplished by forming the
`superstructure 16 such that it assumes a12
`
`*
`
`*
`
`*
`
`*
`
`ture is, of course, dependent upon the length, thickness,
`width and modulus of elasticity of the material from
`which the superstructure 16 is fabricated, and for a given
`modulus of elasticity, relatively thinner or narrower
`sections will require relatively greater deflection. In
`addition to forming the superstructure in the afore-13
`
`The above citations plainly do not make the Board’s point, as confirmed by Dr.
`
`Davis. Ex. 2002 at 55:18–58:22.
`
`The Board must have meant to cite to Appel ’551, which states at column 3,
`
`lines 9–22 and 31–36:
`
`Thus a parabolic effect in spring rate leading to
`progressive “wrapping” from ends to center and
`uniformity of pressure contact can be achieved through
`the provision of (1) a parabolic form of free curvature in
`a spring of uniform section; (2) a parabolic form of width
`in a spring of uniform thickness and uniform curvature;
`or (3) a uniformly tapered thickness in a. spring of
`uniform width and uniform curvature. Obviously, it is
`
`
`12 Ex. 1005 at 3:9–22.
`13 Ex. 1005 at 3:31–36.
`
`
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`also possible to combine in a number of different ways
`these various constructional approaches incorporating
`progressive dimensional variations in free form
`curvature, width and/or thickness along its length to
`provide a single spring backbone element having uniform
`pressure loading characteristics when pressed against a
`flat windshield . . . . With whatever specific
`constructional form is employed it may be adapted to
`also provide substantially uniform pressure loading on
`any given curved windshield surface by adding to the
`free form curvature which produces uniform pressure
`loading on a flat surface the additional curvature of the
`curved windshield surface.
`
`1 Ex. 1005 at 3:9–36 (underline added; italics in original). But this disclosure in
`
`Appel ’551 discloses uniform contact pressure, not the claimed non-uniform contact
`
`force distribution that is greater in the center section than in the end sections. Ex.
`
`2003 at ¶ 49.
`
`And, again, as noted above, Appel ’551 is not part of the obviousness
`
`combination at issue; which is Arai plus Appel ’770.
`
`While Petitioner may argue that Appel ’770 incorporates Appel ’551 by
`
`reference, it does not do so for any disclosure of non-uniform pressure, and
`
`Petitioner’s brief does not even so allege. “To incorporate material by reference,
`
`the host document must identify with detailed particularity what specific material it
`
`
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`incorporates and clearly indicate where that material is found in the various
`
`documents.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282
`
`(Fed. Cir. 2000). Appel ’770 only incorporates Appel ’551 by reference for its
`
`uniform pressure distribution teachings:
`
`As previously mentioned, the superstructure 16 is formed
`in a generally arcuate or curvalinear shape, as best seen
`in FIG. 1, whereby to provide a substantially uniform
`wiping pressure of the wiper blade 18 against the
`associated windshield. As described in U.S. Pat. No.
`3,192,551, which patent is incorporated by reference in
`the descriptive portion of this specification, the aforesaid
`uniform pressure may be accomplished by forming the
`superstructure 16 …. As stated in the aforementioned
`United States patent incorporated by reference herein, it
`is also possible to combine, in a number of different
`ways, the various constructional approaches
`incorporating progressive dimensional variations in free-
`form curvature, width