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 6,973,698
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 6,973,698
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
`
`
`
`
`
`
`
`
`
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
`
`
`
`TABLE OF CONTENTS
`
`
`I. 
`Introduction ...................................................................................................... 1 
`II.  Mandatory Notices Under 37 C.F.R. § 42.8 .................................................... 1 
`III. 
`Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103 ............................ 2 
`IV.  Grounds for Standing ....................................................................................... 3 
`V. 
`Statement of Precise Relief Requested for Each Claim Challenged Under
`37 U.S.C. § 312 and 37 C.F.R. §§ 42.22(a)(1) and 42.104(b)(1)-(2) ............. 3 
`A.  Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1) ............ 3 
`B.  Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2) ........................ 3 
`VI.  The ‘698 Patent ................................................................................................ 4 
`A.  Prosecution and Issuance of the ‘698 Patent ................................................. 7 
`B.  Claim Construction ...................................................................................... 13 
`VII.  Overview of Prior Art .................................................................................... 14 
`1.  Arai (Ex. 1004) ......................................................................................... 15 
`2.  Appel ‘551 (Ex. 1005) .............................................................................. 18 
`3.  Appel ‘770 (Ex. 1006) .............................................................................. 20 
`4.  DE 2 313 939 (“DE ‘939”) (Exs. 1007, 1008) ......................................... 22 
`5.  Swanepoel ‘564 (Ex. 1009) ...................................................................... 24 
`VIII.  Detailed Explanation of Grounds for Unpatentability .................................. 26 
`A.  Legal Standards ........................................................................................... 26 
`1.  Anticipation .............................................................................................. 26 
`2.  Obviousness ............................................................................................. 27 
`3.  Level of Skill in the Art ........................................................................... 28 
`B.  Claim 1 Is Unpatentable .............................................................................. 29 
`1.  Grounds #1 and #2 ................................................................................... 29 
`2.  Grounds #3 and #4 ................................................................................... 42 
`IX.  Conclusion ..................................................................................................... 50 
`
`i
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`LIST OF EXHIBITS
`Description
`U.S. Patent No. 6,973,698
`
`Certified file history for U.S. Patent No. 6,973,698
`
`October 10, 2014 Proof of Service filed by Patent Own-
`er in Civil Action No. 12-574-LPS (consolidated)
`U.S. Patent No. 4,807,326
`
`U.S. Patent No. 3,192,551
`
`U.S. Patent No. 4,028,770
`
`German Published Patent Application 2 313 939
`
`English Translation of German Published Patent
`Application 2 313 939 (Ex. 1007)
`U.S. Patent No. 5,325,564
`
`German Published Patent Application No. 1 247 161
`
`English Translation of German Published Patent
`Application No. 1 247 161 (Ex. 1010)
`Robert Bosch LLC’s Opening Claim Construction Brief
`filed Apr. 24, 2015 in Civil Action No. 12-574-LPS
`Declaration of Dr. Gregory W. Davis
`
`
`Exhibit
`1001
`
`1002
`
`1003
`
`1004
`“Arai”
`1005
`“Appel ‘551”
`1006
`“Appel ‘770”
`1007
`“DE ‘939”
`1008
`
`1009
`“Swanepoel ‘564”
`1010
`
`1011
`
`1012
`
`1013
`
`
`
`ii
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`
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`
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`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
`
`I.
`
`Introduction
`
`Costco Wholesale Corporation (“Petitioner” or “Costco”) requests inter
`
`partes review (IPR) of Claim 1 of U.S. Patent No. 6,973,698 (“the ‘698 Patent”)
`
`(Ex. 1001). This petition demonstrates there is a reasonable likelihood that Peti-
`
`tioner will prevail in proving, by at least a preponderance of the evidence, that
`
`Claim 1 of the ‘698 Patent encompasses subject matter that is unpatentable under
`
`35 U.S.C. § 102(b) (2006) and 35 U.S.C. § 103(a) (2006). Claim 1 of the ‘698 Pa-
`
`tent should accordingly be canceled.
`
`II. Mandatory Notices Under 37 C.F.R. § 42.8
`Real Party-in-Interest: Costco is the real party-in-interest seeking IPR.
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`Related Matters: The ‘698 Patent is asserted in Robert Bosch LLC v. Alberee
`
`Products Inc. et al., Civil Action No. 12-574-LPS (consolidated with Civil Action
`
`No. 14-142-LPS), currently pending in the United States District Court for the Dis-
`
`trict of Delaware. U.S. Patents No. 6,292,974, No. 6,523,218, No. 6,530,111, No.
`
`6,553,607, No. 6,611,988, No. 6,668,419, No. 6,675,434, No. 6,836,926, No.
`
`6,944,905, No. 7,228,588, No. 7,293,321, No. 7,484,264, No. 7,523,520, No.
`
`7,941,891, No. 8,099,823, No. 8,272,096, and No. 8,544,136 have also been as-
`
`serted in this consolidated civil action. The ‘698 Patent was previously asserted in
`
`Robert Bosch LLC v. Trico Prods. Corp., No. 12-cv-437 (N.D. Ill.), Robert Bosch
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`LLC v. Corea Autoparts Producing Corp. et al., No. 11-14019 (E.D. Mich.), Rob-
`
`1
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
`
`ert Bosch LLC v. UL Enterprises LLC et al., No. 1:11cv2437 (N.D. Ill.), Robert
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`Bosch LLC v. Jiujiang Yada Traffic Equipment Co. et al., No. 2:11cv1762 (D.
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`Nev.), Robert Bosch LLC v. Corea Autoparts Producing Corp. et al., No. 2:10-cv-
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`1924 (D. Nev.), Robert Bosch LLC v. ADM21 Co. et al., No. 2:10-cv-1930 (D.
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`Nev.), and In re Certain Wiper Blades, Investigation No. 337-TA-816 (U.S. Int’l
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`Trade Comm’n). Costco is concurrently petitioning for IPR of U.S. Patents No.
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`6,836,926, No. 6,944,905, No. 7,228,588, No. 7,484,264, No. 8,099,823, No.
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`6,292,974, and No. 8,544,136, which are also asserted in the District of Delaware
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`matter. Petitioner is not aware of any other current judicial or administrative mat-
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`ters that would affect, or be affected by, a decision in this proceeding.
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`Lead and Back-Up Counsel and Service Information: The following desig-
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`nates lead counsel, backup counsel, and service information for the Petitioner. Peti-
`
`tioner consents to electronic service.
`
`
`
`Lead Counsel
`Richard M. Koehl
`Reg. No. 54,231
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6062
`
`Fax (212) 422-4726
`richard.koehl@hugheshubbard.com
`
`Back-Up Counsel
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6125
`
`Fax (212) 422-4726
`james.klaiber@hugheshubbard.com
`
`III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103
`The required fees are submitted herewith. If any additional fees are due at
`
`any time during this proceeding, the Office may charge such fees to Deposit Ac-
`
`2
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`count No. 083264.
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`IV. Grounds for Standing
`Petitioner certifies that, under 37 C.F.R. § 42.104(a), the ‘698 Patent is
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`available for inter partes review, and Petitioner is not barred or estopped from re-
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`questing inter partes review of the ‘698 Patent on the grounds identified below.
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`This petition is being filed less than one year after Petitioner was first served with a
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`complaint alleging infringement of the ‘698 Patent. See Oct. 10, 2014 Proof of
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`Service (Ex. 1003).
`
`V.
`
`Statement of Precise Relief Requested for Each Claim Challenged Un-
`der 37 U.S.C. § 312 and 37 C.F.R. §§ 42.22(a)(1) and 42.104(b)(1)-(2)
`A. Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1)
`Petitioner seeks cancellation of Claim 1.
`
`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2)
`
`B.
`Ground #1. Claim 1 encompasses subject matter that is unpatentable under
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`35 U.S.C. § 103(a) (2006) over U.S. Patent No. 4,807,326 (“Arai”) (Ex. 1004),
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`alone or in view of U.S. Patent No. 4,028,770 (“Appel ‘770”) (Ex. 1006), and in
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`view of the knowledge of a person of ordinary skill in the art.
`
`Ground #2. Claim 1 is unpatentable under 35 U.S.C. § 103(a) (2006) over
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`Arai (Ex. 1004) in view of Appel ‘770 (Ex. 1006), and further in view of U.S. Pa-
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`tent No. 3,192,551 (“Appel ‘551”) (Ex. 1005), German patent publication DE 2
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`313 939 (Exs. 1007, 1008), or U.S. Patent No. 5,325,564 (“Swanepoel ‘564”) (Ex.
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`3
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`1009), and in view of the knowledge of a person of ordinary skill in the art.
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`Ground #3. Claim 1 is unpatentable under 35 U.S.C. § 102(b) over Swa-
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`nepoel ‘564 (Ex. 1009).
`
`Ground #4. Claim 1 is unpatentable under 35 U.S.C. § 103(a) (2006) over
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`Swanepoel ‘564 (Ex. 1009), alone or in view of German patent publication DE 2
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`313 939 (Exs. 1007, 1008) and in view of the knowledge of a person of ordinary
`
`skill in the art.
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`The asserted grounds are not redundant for at least the following reasons:
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`Anticipation under 35 U.S.C. § 102(b) does not involve any secondary considera-
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`tions of non-obviousness. Also, whether claims would have been obvious under 35
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`U.S.C. § 103(a) does not depend on whether every claim element was necessarily
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`disclosed in a single reference.
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`VI. The ‘698 Patent
`Claim 1 of the’698 Patent is directed to a wiper blade that includes a spring-
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`elastic carrying element, which distributes pressure along the length of the wiper
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`strip such that the contact force of the wiper strip with the window is greater in the
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`center section of the wiper blade than in at least one of its ends. The reduced force
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`in the end section or sections purportedly encourages the wiper lip to flip over,
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`avoiding knocking noise that would otherwise occur. See ‘698 Pat., 1:65-2:4.
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`The ‘698 Patent explains that in known prior art wiper blades of the type
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`4
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`claimed by the ‘698 Patent, such as those disclosed in German Laid-Open Patent
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`Application No. 1 247 161 (“Appel DE ‘161”) (Exs. 1010, 1011), a carrying ele-
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`ment of a wiper blade is precurved, so that it is unstressed when the wiper blade is
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`not placed against the window, and stressed when the wiper blade is placed against
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`the window by a wiper blade pressing force. See ‘698 Patent, 1:9-27. That is,
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`the ends of the wiper strip, which is placed completely against the
`window during the operation of the wiper blade, are loaded toward the
`window by the carrying element which is then stressed, even when the
`curvature radii of spherically curved vehicle windows change with
`each wiper blade position. The curvature of the wiper blade must
`therefore be slightly sharper than the sharpest curvature measured in
`the wiping field on the window to be wiped. The carrying element
`consequently replaces the expensive support bracket construction with
`two spring rails disposed in the wiper strip, as is the practice in con-
`ventional wiper blades . . . .
`
`Id., 1:16-27. The ‘698 Patent asserts, however, that such wiper blades can produce
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`an unpleasant knocking noise and also are hard to match to spherically curved
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`windows. See id., 1:40-53. The ‘698 Patent purports to solve these alleged prob-
`
`lems by describing and claiming an improvement to this wiper blade and its sup-
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`port element that avoids these concerns. See id., 1:57-2:28; see also id., Fig. 1.
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`5
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`In the alleged improvement, the contact pressure of the wiper strip against
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`the window is lower at its two end sections than in its center section. See id., 2:11-
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`15. Figure 5 of the ‘698 Patent graphs the contact pressure. As can be seen, the
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`contact pressure is lower at the two ends 38 than at the center 36.
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`Additionally, the “concave curvature” of the side of the wiper blade oriented
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`towards the window is sharper than the sharpest curvature of the window in that
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`vicinity, and the concave curvature in the center section of the wiper blade support
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`element is sharper than that of its end section(s), as can be seen in Figure 2. See id.,
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`2:21-29 (describing Fig. 2).
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`These alleged improvements are reflected in Claim 1.
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`6
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`Prosecution and Issuance of the ‘698 Patent
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`A.
`The application which led to this sole claim, Application No. 09/445,046,
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`was filed on December 1, 1999 and claimed priority to a December 18, 1998 PCT
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`application, no. PCT/DE98/03721, as well as to an April 1, 1998 German patent
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`application, no. 198 14 610. The December 1, 1999 application was accompanied
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`by a simultaneous amendment. See Ex. 1002 at 4-70, 101-02.
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`In a February 23, 2001 office action, the Examiner rejected application
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`claims 1-4 under 35 U.S.C. § 112(2) as indefinite, and further rejected claims 1-4
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`as anticipated by U.S. Patent No. 4,807,326 to Arai et al. (“Arai”) (Ex. 1004). See
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`Ex. 1002 at 144-47. The Examiner noted that Figures 5-7 of Arai shows, “at least
`
`under high pressure, the ends having a lower contact force compared with the cen-
`
`ter section,” and that Figure 6 of Arai shows “the center section having a greater
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`curvature than at least the right end sections.” See id. at 146-47.
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`ARAI, FIGS. 7 & 8
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`
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`7
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`In a June 1, 2001 amendment, the applicant canceled application claims 1-4,
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`added new claims 5-14, and traversed the anticipation rejection in light of Arai. See
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`id. at 183-98. The applicant argued that Arai discloses a backing member with
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`“two elongated spaced-apart pivot connection points which cooperate with the
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`bracket to receive and distribute the load applied by the wiper arm.” See id. at 191.
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`According to the applicant, Arai thus teaches that “the pressure distribution must
`
`be uniform so that a high pressure or a low pressure in some regions should be
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`avoided.” See id. In contrast, the applicant said, his application “teaches and claims
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`a decreasing pressure distribution at at least one end section of the wiper blade.”
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`See id.
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`The applicant also disagreed with the Examiner’s argument that Figure 7 of
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`Arai shows that at least when applying high pressure, the end sections have a lower
`
`contact force than the middle section. According to the applicant, Arai “neither
`
`shows nor suggests the structure of the wiper blade with the wiper element and
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`wiper strip which distributes a contact force on the wiper strip against the vehicle’s
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`window to provide a contact force which is greater in the center section o[f] the
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`wiper strip than in at least one of the two end sections of the wiper strip.” See id. at
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`191-92.
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`In a July 27, 2001 office action, the Examiner again rejected all pending
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`claims of the application. See id. at 201-09. Application claims 9-13 were rejected
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`8
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`under 35 U.S.C. § 112(2) as indefinite. See id. at 203. Application claims 5-7, 9-
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`11, and 13-14 were again rejected under 35 U.S.C. § 102(b) as anticipated by Arai.
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`See id. at 204-05. The Examiner continued to maintain that Figures 7 and 8 of Arai
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`“show, at least under high pressure, the end sections of the wiper blade having a
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`lower contact force compared with a center section thereof,” that Figure 8 shows a
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`“prior art backing member [that] is loaded centrally and provides high pressure
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`centrally which drops off towards the ends of the backing member, at least under
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`high loading,” and that Figure 6 of Arai “shows the center section having a greater
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`curvature than at least the right end section.” See id. at 204-05.
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`The Examiner also rejected new application claims 9-14 “under 35 U.S.C.
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`§ 102(b) as anticipated by Appel ‘770 [U.S. Patent No. 4,028,770 (Ex. 1006)] as
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`evidenced by Arai et al ‘326.” See id. at 205.
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`APPEL, FIGS. 1 & 2
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`
`
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`The Examiner stated:
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`9
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`As applicant has claimed no structure to develop contact pressure, the
`patent to Appel discloses the invention as claimed. Appel shows a
`conventional backing member/blade as is claimed, wherein in a free
`form state, prior to windshield application, such is prestressed or
`curved (figs. 1 and 2). The curvature is such that the center section of
`the backing member has a greater curvature than the ends thereof.
`Such curvature is provided such that upon application of the backing
`member/blade to the windshield, a substantially uniform pressure is
`achieved in the wiper blade. Appel discloses all the structure set forth
`by applicant. Applicant has claimed only a wiper blade. Thus, the de-
`vice of Appel will inherently function as claimed. Indeed, if sufficient
`pressure is applied to the conventional backing member of Appel, as
`discussed by Arai figure 8, the contact pressure in the center of the
`blade would be greater than end sections thereof, just as applicant’s.
`Applicant has set forth no structure for his wiper blade that is not dis-
`closed by Appel.
`
`Id.
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`Finally, application claim 8 – which claim incorporated each and every ele-
`
`ment of the claim that was eventually allowed as 1 of the ‘698 Patent years later –
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`was rejected under 35 U.S.C. § 103(a) as unpatentable over Arai in view of Appel
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`‘770. See id. at 206-07. The Examiner stated that Arai “discloses all of the above
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`recited subject matter” of claim 8, “with the exception of the conventional backing
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`member/blade of figure 8 being curved sharper than the windshield to be wiped
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`and having a curvature in a center section sharper than in the end sections. The pa-
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`10
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`tent to Appel discloses all of the above recited subject matter.” See id. at 206. The
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`Examiner also stated that Appel also teaches “pre-stressing the backing member by
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`curving,” which permits “the backing member of Arai” to “achieve the pressure
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`profiles as shown in the figure 8 graph.” See id. at 207.
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`The Examiner stated that the applicant’s arguments in favor of patentability
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`“have been fully considered but they are not persuasive.” See id. at 207. While “the
`
`Appel backing member is disclosed as shaped to provide uniform wiping pres-
`
`sure,” at some point, “upon application of sufficient pressure, the backing member
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`of Appel will provide a high pressure in the center of the blade with reduced pres-
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`sure at the ends. Such is clearly suggested by Arai in his figure 8 for conventional
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`backing members/blades.” Therefore, “in those claims where only the wiper blade
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`is claimed, it appears Appel will meet such,” and in any event, “Arai teaches appli-
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`cation of varying forces to conventional backing members/blades such that a pres-
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`sure profile as claimed is achieved.” See id.at 207-08.
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`On September 27, 2001, the applicant mailed a request for reconsideration of
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`the final rejection and proposed amendments to application claims 5, 13, and 14.
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`See id. at 211-20. On October 4, 2001, the Examiner issued an advisory action,
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`stating that the amendments would be entered for purposes of appeal, but that
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`claims 5-14 “will be rejected the same as in the final, with the exception that claim
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`13 will not be rejected under 35 USC 112 second paragraph.” See id. at 221-22.
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`11
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`After a telephonic interview on October 15, 2001, see id. at 223-25, the applicant
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`filed an appeal on December 26, 2001. See id. at 226-45. After a further interview
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`on February 27, 2002, the applicant filed a supplemental appeal brief on February
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`28, 2002. See id. at 246-65.
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`As presented to the BPAI, the issues for decision were (i) whether applica-
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`tion claims 5 through 7, 9 through 11, and 14 were anticipated by Arai, (ii) whether
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`application claims 9 through 12 and 14 were anticipated by Appel ‘770, and (iii)
`
`whether claim 8 was unpatentable under 35 U.S.C. § 103(a) in view of Arai and
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`Appel ‘770. Id. at 291. The Examiner did not make any obviousness argument as
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`to application claim 12, taking the position that that claim was anticipated. See id.
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`at 278, 282, 291.
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`In its decision dated May 28, 2003, the Board (1) affirmed the Examiner’s
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`rejection of appealed application claims 5 through 7, 9 through 11, and 14 as antic-
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`ipated by Arai; and (2) “summarily affirm[ed]’” the Examiner’s rejection of claim
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`8 under 35 U.S.C. § 103(a) as being unpatentable over Arai in view of Appel. See
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`id. at 296. As to application claim 12, however, the Board reversed the Examiner’s
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`rejection, finding that the Examiner had failed to show that the claim was antici-
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`pated by Appel ‘770. See id. at 295. The Board was never asked to decide, and
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`did not decide, whether application claim 12 was unpatentable under § 103(a).
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`Following the Board’s decision, the applicant abandoned the application and
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`12
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`a notice of abandonment was issued on August 29, 2003. See id. at 299-300. Ap-
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`proximately a year and a half later, in February 2005, an attorney representing the
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`applicant filed a petition to revive the application on the grounds that the applicant
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`had allegedly intended to file a petition to revive in October 2003 but counsel had
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`inadvertently failed to file it. See id. at 301-08. Concurrently with its belated peti-
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`tion for revival the applicant submitted a proposed amendment which canceled all
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`claims and submitted a new claim 15 that “combines the features of original claims
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`9 and 12, since claim 12 was indicated as allowable.” See id. at 304. The petition
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`was granted, the amendment was entered, and the ‘698 Patent proceeded to issue
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`with a single claim that corresponded to application claim 15. See id. at 309-15.
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`B. Claim Construction
`For the purposes of inter partes review Claim 1 should be accorded its
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`“broadest reasonable construction” in light of the specification and prosecution his-
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`tory of the ‘698 Patent. 37 C.F.R. § 42.100(b). Petitioner asserts that none of the
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`claim terms in the ‘588 patent need to be construed for purposes of this petition be-
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`cause under any reasonable construction the claims are invalid.
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`In Robert Bosch LLC v. Alberee Products Inc. et al., Civil Action No. 12-
`
`574-LPS (consolidated with Civil Action No. 14-142-LPS), currently pending in
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`the United States District Court for the District of Delaware, the Patent Owner has
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`asserted that the term “spherically curved window” in Claim 1 should be construed
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`13
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`as “a window having at least one radius of curvature.” See Ex. 1012 at 6. While the
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`claim construction proceedings in Delaware are not governed by the “broadest rea-
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`sonable construction” standard, and Petitioner does not agree that Patent Owner’s
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`construction represents the broadest reasonable construction of this claim term in
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`the abstract, for purposes of this proceeding the Patent Owner should not be heard
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`to assert a narrower construction than was set forth in the Patent Owner’s claim
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`construction briefing in the Delaware Action.
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`VII. Overview of Prior Art
`Below, Petitioner shows that Claim 1 of the ‘698 Patent is unpatentable.
`
`Every element of issued Claim 1 was present in application claim 8, which the
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`Board held was unpatentable under § 103(a) in view of Arai and Appel ‘770.
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`Claim 1 of the ‘698 Patent is broader than application claim 8; it is unpatentable
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`for the same reasons that the Examiner and the Board both previously concluded
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`that application claim 8 was unpatentable.
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`Claim 1 is also unpatentable as obvious over Arai in view of other refer-
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`ences, including DE ‘939, Appel ‘551, and Swanepoel ‘564; as anticipated by
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`Swanepoel ‘564; and as obvious over Swanepoel’ 564 in view of Arai, the Appel
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`patents, and DE ‘939. Each of these references is prior art pursuant to 35 U.S.C.
`
`§ 102(b).
`
`14
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`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`Arai (Ex. 1004)
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`1.
`U.S. Patent No. 4,807,326, entitled “Backing Member in Wiperblade of
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`Windshield Wiper,” issued on February 28, 1989 on an application by Masuru Arai
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`et al. See Ex. 1004.
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`As explained by the Examiner during prosecution of the ‘698 Patent, Arai
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`discloses a backing member 3 supporting a wiper blade strip 1 for movement over
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`a windshield. See Ex. 1002 at 280. Figures 1-3 of Arai also show an embodiment
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`in which “[t]he backing member 3 comprises two elongated body elements 4 and 5
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`extending substantially along the entire length of the blade rubber 1 to which the
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`backing member 3 is mounted. The backing member 3 and the blade rubber 1 are
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`the major components of a wiperblade.” See Ex. 1004, 2:43-48; see also id., 2:36-
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`3:22 & Figs. 1-3 (describing Figs. 1-3 in detail).
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`ARAI, FIG. 1
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`
`
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`15
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`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`ARAI, FIGS. 2&3
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`More specifically, Arai discloses that the backing member is a spring-elastic
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`
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`element that carries the wiper blade rubber, that is:
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`A backing member according to the invention comprises two elongat-
`ed body elements extending substantially along the entire length of a
`blade rubber to which the backing member is mounted and extending
`parallel at a spaced apart relationship, a plurality of bridge portions
`being spaced apart in the longitudinal direction of the backing mem-
`ber and connecting the body elements, the space between the body el-
`ements being adapted to receive a neck portion of the blade rubber,
`the bridge portions extending in the sidewise direction and above the
`body elements so as to define a space above the body elements for re-
`ceiving a head portion of the blade rubber, two longitudinally spaced
`apart pivot connections for connecting with a yoke member of a wip-
`er, at least one of the pivot connections being adapted to permit rela-
`tive longitudinal displacement of corresponding pivot connection of
`the yoke member, and the curvature of the lower surfaces of the body
`elements and the rigidity of the backing member being changed in the
`longitudinal direction.
`
`16
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`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`Ex. 1004, 1:36-55. Arai further discloses that the “backing member may be used
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`together with metal strips, otherwise, metal strips may be embedded in the backing
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`member of synthetic resin material,” id., 1:64-66, and further that
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`According to the invention, the backing member can easily be formed
`to have desired rigidity against bending, thus, it is not required to con-
`nect the wiperblade to the yoke member through three or more points
`for obtaining uniform pressure distribution, thus, it is simple in the
`construction and cheap in the cost.
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`Id., 2:3-8.
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`Figures 4-8 of Arai similarly show the properties of the embodiments of
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`Arai and prior art wiper blades under load. See id., 3:23-4:8 & Figs. 4-8.
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`ARAI, FIG.4
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`And, as the Examiner stated, Figures 7 and 8 show, at least under high pres-
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`sure, the end portions of the wiper blade having a lower contact force compared
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`with a center section thereof. See Ex. 1002 at 280. The BPAI explicitly “agree[d]
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`with the examiner that the high pressure distribution curve showing the pressure
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`applied on the wiper blade by the article of Arai in FIG. 7 (see col. 3, lines 48-51)
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`demonstrates that, at that pressure, the contact force of the wiper strip is greater in
`
`17
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`the center section than at both of the end sections (see also col. 4, lines 1-8) . . . .”
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`Ex. 1002 at 293. Although the Board discounted the teachings of Figure 8 because
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`“there is no disclosure of the structure of the ‘prior art wiperblade’ represented in
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`that figure,” see id. at 293, 295, the Board did not have the opportunity to consider
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`evidence of the state of the art of similar wiper blades from other prior art refer-
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`ences pursuant to Section 103.
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`ARAI, FIGS. 7 & 8
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`Appel ‘551 (Ex. 1005)
`
`2.
`U.S. Pat. No. 3,192,551, entitled “Windshield Wiper Blade Assembly,” is-
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`
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`sued July 6, 1965 to Walter D. Appel (Ex. 1004). Appel ‘551 is a continuation-in-
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`part of the United States application corresponding to admitted prior art reference
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`DE 1 247 161 (Exs. 1010, 1011) cited in the ‘698 Patent at col. 1:29-33. Appel
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`18
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`‘551 describes improvements in a simplified spring wiper blade backbone con-
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`struction, adaptable to the wiping of variably curved as well as flat windshield sur-
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`faces. Appel ‘551 also discloses a beam blade having a support element (22), wiper
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`strip (37), and connecting device (41) for a wiper arm, wherein the support element
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`is an elongated flat bar with a substantially rectangular cross sectional profile hav-
`
`ing a constant width and thickness. See, e.g., Ex. 1004, 2:28-29, Figs. 1, 4.
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`In particular, Appel ‘551 seeks to provide substantially uniform pressure of
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`the wiper blade against the windshield surface, with a single spring backbone con-
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`struction. See id., 2:24-25. It demonstrates constructional approaches involving
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`both support elements of constant widths and thicknesses (Fig. 1), and tapering
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`widths and thicknesses (Figs. 2, 3).
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`APPEL ‘551, FIGS. 1 & 2
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`Appel ‘551 further explains that uniformity of pressure contact against a flat
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`
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`surface can be obtained by “incorporating progressive dimensional variations in
`
`19
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`free form curvature, width and/or thickness along its length to provide a single
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`spring backbone element having uniform pressure loading characteristics when
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`pressed against a flat windshield.” See id., 3:18-22. Uniform pressure against a
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`curved surface would be achieved by “adding to the free form curvature which
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`produces uniform pressure loading on a flat surface the additional curvature of the
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`curved windshield surface.” See id., 3:31-36. Several methods for minimizing the
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`variations in pressure in order to achieve satisfactory wiping results are described.
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`See, e.g., id., 3:45-60.
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`Appel ‘770 (Ex. 1006)
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`3.
`U.S. Pat. No. 4,028,770, entitled “Windshield Wiper Assembly,” issued June
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`14, 1977 to Walter D. Appel (Ex. 1006). Appel ‘770 incorporates by reference Ap-
`
`pel ‘551 (described in the previous section). See Ex. 1006, 3:18-20. Appel ‘770
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`discloses a number of improvements to Appel ‘551, see id., 1:25-33, including a
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`backbone member “fabricated of a one-piece, molded, polymeric material,” see id.,
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`1:38-56, and a feature “that the associated wiper blade is secured to the superstruc-
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`ture by means of a coextensive retainer member.” See id., 1:58-63.
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`APPEL ‘770, FIG. 1
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`Appel ‘770 discloses that, in the embodiment shown in Figure 1:
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`
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`20
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,973,698
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`[g]enerally speaking, the wiper blade assembly 10 comprises a wiper
`blade superstructure which is of a one-piece molded construction and
`is generally designated by the numeral 16. The superstructure 16 is
`provided with a coextensive wiping blade 18 which is secured to the
`superstructure 16 by means of a coextensive blade retaining member
`20. As will hereinafter be described in detail, the retaining member 20
`is adapted to secure the blade 18 to the superstructure 16 in a manner
`such that the blade 18 will assume the generally curvalinear or arcuate
`shape shown in FIG. 1, and permit the blade 18 to be conveniently
`removed from the superstructure 16 for purposes of repair, inspection,
`replacement, etc.
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`Id., 2:55-68. The radius of curvature and other general properties of superstructure
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`16 are stated to be disclosed in Appel ‘551, which is incorporated by reference. See
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`id., 3:14-52. In addition:
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`[a]s shown in FIGS. 3 and 4, the retaining member 20 is of a