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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00034
`Patent 6,973,698
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`PETITIONER’S REPLY IN SUPPORT OF PETITION
`PURSUANT TO 37 C.F.R. § 42.23
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF CONTENTS
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`Page(s)
`TABLE OF AUTHORITIES ................................................................................... iii
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`CERTIFICATE OF WORD COUNT ........................................................................ 2
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`I.
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`THE BOARD PROPERLY SET FORTH THE LEVEL OF
`ORDINARY SKILL IN THE ART ................................................................. 1
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`II.
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`ARAI AND APPEL ‘770 RENDER CLAIM 1 UNPATENTABLE ............. 2
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`A. Arai Discloses a Wiper Blade Having Contact Force Greater in
`a Center Section Than in at Least One End Section ........................... 2
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`B.
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`C.
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`Appel ’770 Discloses a Wiper Blade Having a Center Section
`Curvature That Is Greater Than an End Section Curvature ................ 4
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`Providing Arai With a Progressive Curvature of Appel ’770
`Was a Design Step Well Within the Grasp of a Person Having
`Ordinary Skill in the Art ...................................................................... 7
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`III. BOSCH’S EVIDENCE OF PURPORTED SECONDARY
`CONSIDERATIONS ARE INSUFFICIENT TO OVERCOME A
`FINDING OF OBVIOUSNESS .................................................................... 11
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`There Is No Nexus Between the ’698 Patent and Any Purported
`Commercial Success, and No Success Is Established ....................... 11
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`Bosch’s Proffered “Evidence” of Skepticism and Unexpected
`Results Does Not Undercut Obviousness ......................................... 14
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`There Is No Evidence of Failure by Others or Long-Felt Need........ 15
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`Bosch’s Vague Claims of Industry Praise Are Insufficient .............. 17
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`Bosch’s Fails to Show Copying by its Competitors ......................... 17
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`Bosch’s Licensing “Evidence” Does Not Support
`Nonobviousness ................................................................................. 18
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`i
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`IV. SWANEOPOEL ANTICIPATES THE ‘698 PATENT ................................ 19
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`A.
`
`B.
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`Swanepoel Teaches a Contact Force Greater in the Center
`Section than in the End Sections ....................................................... 19
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`Swanepoel Teaches a Force Distribution “Over an Entire
`Length” .............................................................................................. 21
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`C.
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`Swanepoel Inherently Teaches the Recited Force Distribution ........ 22
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`V. ATTACKS ON DR. DAVIS’S CREDIBILITY ARE
`INSUPPORTABLE IN FACT AND LAW ................................................... 23
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`A.
`
`B.
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`Prior Consistent Statements of Dr. Davis Support His
`Credibility and Are Consistent with His Deposition Testimony ...... 23
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`Prior Indefiniteness Opinions In District Court Proceedings Are
`Irrelevant to Dr. Davis’s Current Opinions In This Proceeding ....... 24
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`VI. CONCLUSION .............................................................................................. 24
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`CERTIFICATE OF SERVICE .................................................................................. 1
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`ii
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`TABLE OF AUTHORITIES
`
`Cases
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 2
`
`Page(s)
`
`In re Antor Media Corp.,
`689 F.3d 1282 (Fed. Cir. 2012) .......................................................................... 18
`
`Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
`581 Fed. App’x 859 (Fed. Cir. 2014) ........................................................... 14, 17
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`Brown & Williamson Tobacco Corp. v. Philip Morris Inc.,
`229 F.3d 1120 (Fed. Cir. 2000) .......................................................................... 11
`
`Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
`381 F.3d 1371 (Fed. Cir. 2004) .......................................................................... 10
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`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .................................................................................. 21, 24
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`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ........................................................................ 2, 18
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`GraftTech Int’l Holdings, Inc. v. Laird Techs. Inc., No. 2015-1796
`No. 2015-1796,
`2016 WL 3357427, (Fed. Cir. June 17, 2016). ................................................... 11
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`Grobler v. Apple Inc., No. 12-CV-01534-JST,
`2014 WL 1867043 (N.D. Cal. May 6, 2014) ...................................................... 24
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`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ...................................................................... 12, 14
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`Husky Injection Molding Sys. v. Athena Automation Ltd., Nos. 2015-
`1726, 2015-1727,
`2016 WL 5335500 (Fed. Cir. Sept. 23, 2016) ...................................................... 7
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`I/P Engine, Inc. v. AOL Inc.,
`576 F. App’x 982 (Fed. Cir. 2014) ..................................................................... 15
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`iii
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`TABLE OF AUTHORITIES
`Cont’d
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`Cases
`Jervis B. Webb Co. v. S. Sys., Inc.,
`742 F.2d 1388 (Fed. Cir. 1984) ............................................................................ 4
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`Page(s)
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`K-Swiss Inc. v. Glide N Lock GmbH,
`567 F. App’x 906 (Fed. Cir. 2014) ..................................................................... 17
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`KSR Int’l Co. v. Teleflex Inc,
`550 U.S. 398 (2007) .............................................................................. 2, 9, 10, 11
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`Leo Pharm. Prods., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .................................................................... 10, 17
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`In re Lundberg,
`280 F.2d 865 (C.C.P.A. 1960) .............................................................................. 2
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`MRC Innovations, Inc. v. Hunter Mfg., LLP,
`747 F.3d 1326 (Fed. Cir. 2014) .......................................................................... 14
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`Nike, Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) .......................................................................... 17
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`Norgren v. Int’l Trade Comm’n,
`699 F.3d 1317 (Fed. Cir. 2012) .......................................................................... 15
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`Okajima v. Bourdeau,
`261 F.3d 1350 (Fed. Cir. 2001) ............................................................................ 1
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`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .................................................................... 12, 16
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`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 16
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`Pregis Corp. v. Kappos,
`700 F.3d 1348 (Fed. Cir. 2012) .......................................................................... 14
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`Tex. Instruments v. U.S. Int’l Trade Comm’n,
`988 F.2d 1165 (Fed.Cir.1993) ............................................................................ 16
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`iv
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`TABLE OF AUTHORITIES
`Cont’d
`
`Cases
`Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc.,
`774 F.3d 968 (Fed. Cir. 2014) ................................................................ 10, 12, 17
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`Page(s)
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`W. Union Co. v. MoneyGram Payment Sys., Inc.,
`626 F.3d 1361 (Fed. Cir. 2010) .................................................................... 11, 13
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`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) .......................................................................... 18
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`Statutes and Rules
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`35 U.S.C. § 102(b) ................................................................................................... 24
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`35 U.S.C. § 103(a) ................................................................................................... 24
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`35 U.S.C. § 311(b) ................................................................................................... 24
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`Federal Rules of Evidence 801(d)............................................................................ 23
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`Regulations
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`37 C.F.R. § 42.100(b) .............................................................................................. 21
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`v
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(c) and (d), Petitioner certifies that the word
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`count of Petitioner’s Reply in Support of the Petition (exclusive of any table of
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`contents, table of authorities, listing of facts which are admitted, denied, or cannot
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`be admitted or denied, certificate of service or word count, or appendix of exhibits)
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`as measured by Microsoft Word is 5490 words.
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Petitioner respectfully submits this Reply in further support of cancellation
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`of claim 1 of U.S. Patent No. 6,973,698 (the “’698 Patent”; Ex. 1001).
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`In its Institution Decision (Paper No. 16) (the “Decision”), the Board insti-
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`tuted trial on two grounds: (1) obviousness in view of U.S. Patent No. 4,807,326 to
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`Arai (“Arai”; Ex. 1004) and U.S. Patent No. 4,028,770 to Appel (“Appel ’770”;
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`Ex. 1006); and (2) anticipation by U.S. Patent No. 5,325,564 to Swanepoel (“Swa-
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`nepoel”; Ex. 1009). In its response, the Patent Owner (“Bosch”) asks the Board to
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`ignore the express teachings of Arai, Appel ’770, and Swanepoel based on inaccu-
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`rate and misleading quotations, and makes a formalistic and meritless attack on the
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`Board’s citations to U.S. Patent No. 3,192,551 to Appel (“Appel ’551”; Ex. 1005)
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`which Appel ’770 incorporates by reference. Bosch’s assertion that the subject
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`matter claimed in the ’698 Patent is entitled to secondary considerations of non-
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`obviousness is insufficient1 in light of the trivial or non-existent differences be-
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`tween the challenged claim and the prior art of record.
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`THE BOARD PROPERLY SET FORTH THE LEVEL OF ORDI-
`I.
`NARY SKILL IN THE ART
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`The Board found that the prior art of record reflects an appropriate skill lev-
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`1 On October 19, 2016, the Board (Paper No. 29) authorized Petitioner to file a mo-
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`tion to strike the hearsay testimony of Wilfried Merkel submitted by Patent Owner.
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`Petitioner’s motion is being submitted contemporaneously herewith.
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`el, relying on the same case that Bosch now suggests supports a different outcome.
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`See Decision, 22 (quoting Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
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`2001)). Bosch is wrong in asserting that the statutory phrase “ordinary skill in the
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`art” connotes merely a level of education or work experience. See Patent Owner
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`Response (Paper No. 26) (the “Response”), 1. A person having ordinary skill in the
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`art “is a hypothetical person who is presumed to know the relevant prior art,” In re
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`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995), and how to practice the subject
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`matter disclosed in prior art patents, see, e.g., Amgen Inc. v. Hoechst Marion Rous-
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`sel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“[B]oth the claimed and unclaimed
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`disclosures in a prior art patent are [presumptively] enabled.”). Thus, the prior art
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`of record reflects the baseline of knowledge and skill against which the non-
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`obviousness of the challenged claims must be measured. See KSR Int’l Co. v. Tele-
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`flex Inc, 550 U.S. 398, 427 (2007).
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`II. ARAI AND APPEL ‘770 RENDER CLAIM 1 UNPATENTABLE
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`A. Arai Discloses a Wiper Blade Having Contact Force Greater in a
`Center Section Than in at Least One End Section
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`The Institution Decision correctly held that Arai discloses structure falling
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`within the limitation, “said contact force of said wiper strip being greater in said
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`center section than in at least one of said two end sections.” Decision, 20. Bosch’s
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`contrary assertion is inconsistent with both with the express disclosure of Arai and
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`with the BPAI’s prior unappealed finding to that effect. Decision, 23 (citing
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`2
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`Ex. 1002 (File History of U.S. Patent No. 6,973,698), 292; Arai, 3:73–4:3); see al-
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`so Decision, 19–22. Having failed, during prosecution, to appeal the Board’s de-
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`termination of this factual point, Bosch should not be allowed to re-litigate that
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`point. See In re Lundberg, 280 F.2d 865, 872 (C.C.P.A. 1960) (claim held “un-
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`patentable because insofar as it would require a reexamination of the identical is-
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`sues raised in the prior case, because of inclusion of the same subject-matter as the
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`prior claims, res judicata controls”).
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`Even assuming that Bosch could now collaterally attack the Board’s prior
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`unappealed finding that Arai discloses structure falling within the limitation, “said
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`contact force of said wiper strip being greater in said center section than in at least
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`one of said two end sections,” the “High Pressure” curve in Arai figure 7 (repro-
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`duced below) plainly shows a contact pressure that is greater in the center section
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`than in the end sections.
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`Arai figure 7 expressly discloses the relationship between the larger central
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`contact pressure and the smaller contact pressure in the tip region, and it is entirely
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`proper to rely on drawings to show relationships between elements. See Ex. 1013
`3
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`(Davis Decl.) ¶ 60 (citing Arai 3:48–4:8, figs. 7–8); Ex. 2002 (Davis Tr.), 14:18–
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`20:9, 59:16–25;2 Jervis B. Webb Co. v. S. Sys., Inc., 742 F.2d 1388, 1397 (Fed. Cir.
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`1984). Finally, even if Arai figure 7 shows only a “small” decrease in pressure
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`from the center section to the end sections (see Response, 7–8), it is undisputed
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`that such a decrease would be within the scope of the disputed claim. See Re-
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`sponse, 9; ’698 Patent, 4:33–40.
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`B. Appel ’770 Discloses a Wiper Blade Having a Center Section Cur-
`vature That Is Greater Than an End Section Curvature
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`Appel ’770 discloses a wiper blade comprising a “superstructure 16” that is
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`formed in a generally arcuate or curvilinear shape to provide a “substantially uni-
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`form wiping pressure of the wiper blade 18 against the associated windshield.”
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`Ex. 1006, 3:14–18. The written description of this superstructure states in part: “As
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`described in [Appel ’551], which patent is incorporated by reference in the descrip-
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`tion portion of this specification, the aforesaid uniform pressure may be accom-
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`plished by forming the superstructure 16 such that it assumes a generally arcuate
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`configuration of a predetermined radius in a free form or state . . . .” Id. at 3:18–24
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`(citing Appel ’551, Ex. 1005). The Decision identifies Appel ’770 as “Appel ’770,
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`Ex. 1005)” and repeatedly cites to Exhibit 1005, which is Appel ’551 incorporated
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`2 Bosch is incorrect that “[t]here is no technical testimony from Dr. Davis” regard-
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`ing Arai’s force distribution teaching. Response, 5.
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`4
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`by reference in Appel ’770. See, e.g., Decision, 20–21, 25–26 (citing Ex. 1005,
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`1:11–15, 25–28, 32–41, 3:9–22, 23–30, 31–36, 3:73–4:3).
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`Appel ’551 figure 5, which is incorporated by reference in Appel ’770, is re-
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`produced below:
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`
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`Referring to the above figure and its written description, the Institution Decision
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`states in part: “As shown in Figure 5 of Appel ’770, the backbone 36a and rubber
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`blade 37a have a free form circular arc curvature modified at the ends with some-
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`what less curvature, . . . .” Decision, 5 (emphasis in original) (citing Ex. 1005,
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`3:73–4:3). “We recognize that Appel ’770 refers to ‘uniform contact pressure.’
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`Appel ’770 also discloses, however, that progressive pressure contact from ends to
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`center can be achieved through various constructional approaches incorporating
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`progressive dimensional variations in free form curvature.” Decision, 25 (citing Ex.
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`1005, 3:9–22, 31–36) (emphasis in original).
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`Bosch does not dispute that the Appel ’770 disclosures cited in the Institu-
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`tion Decision meet the limitation, “a concave curvature in said center section of the
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`5
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`carrying element is sharper than in said [end] sections thereof.” ’698 Patent,
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`Ex. 1001, 6:20–22. Instead, Bosch asserts that the Board “mistakenly” cited Ap-
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`pel ’551 disclosures that Appel ’770 incorporated by reference. Response, 10–15.
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`That contention is meritless. The supposedly “mistaken” citations that Bosch refers
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`to are correct citations to Exhibit 1005, which Appel ’770 incorporates by refer-
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`ence as disclosing how to make the generally arcuate or curvilinear superstructure
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`16 it depicts and describes. See Appel ’770, Ex. 1006, 3:18–30. Petitioner’s expert,
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`Dr. Davis, has previously testified to that very point. See Ex. 1013 ¶¶ 28, 31; Ex.
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`2002, 37:16–38:18. Bosch admits that Appel ’551 discloses a “parabolic form of
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`free curvature in a spring,” (Response, 13–14 (quoting Appel ’551, 3:9–22, 31–
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`36)), but omits, from its quotation of Appel ’770, its teachings regarding “progres-
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`sive contact” and how a “particular radius of curvature” is dependent on other
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`structural features and material properties. Appel ’551, 3:12.
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`Bosch wrongly asserts that “Appel ’770 only incorporates Appel ’551 by
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`reference for its uniform pressure distribution teachings.” Response, 15 (emphasis
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`omitted). In fact, the portions of Appel ’770 quoted by Bosch identify with detailed
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`particularity that Appel ’770 incorporates Appel ’551 for its teaching that “pro-
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`gressive pressure contact from ends to center can be achieved through various
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`constructional approaches incorporating progressive dimensional variations in free
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`6
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`form curvature.” Decision, 26 (emphasis in original).3 Cf. Husky Injection Molding
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`Sys. v. Athena Automation Ltd., Nos. 2015-1726, 2015-1727, 2016 WL 5335500, at
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`*8 (Fed. Cir. Sept. 23, 2016) (citation omitted)) (“The incorporation standard relies
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`only on the reasonably skilled artisan and his or her ability to deduce from lan-
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`guage, however imprecise, what a host document aims to incorporate.”); see
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`Ex. 1013 ¶¶ 28, 31; Ex. 2002, 37:16–38:18; Ex. 1103 (“Second Davis Decl.”)
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`¶¶ 8–11.
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`Contrary to Bosch’s suggestion, the disclosure of Appel ’770 is not limited
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`to wiper blade superstructures that have a perfectly constant or “uniform” radius of
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`curvature. Response, 17 (citing Ex. 2003 ¶ 54). None of the portions of Appel ’770
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`cited by Bosch support limiting its disclosure in this way. Id.; Appel ’770, 2:64–65
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`(“generally curvilinear or arcuate” superstructure), 3:14–24 (same), 3:30–35 (“ra-
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`dius of curvature” dependent on material properties); see Ex. 2002, 49:13–52:11.
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`C.
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`Providing Arai With a Progressive Curvature of Appel ’770 Was
`a Design Step Well Within the Grasp of a Person Having Ordi-
`nary Skill in the Art
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`Bosch asserts that it would have been non-obvious to make an Arai wiper
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`with a center section whose concave curvature was “sharper than in said [end] sec-
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`3 The Board’s citation to “Ex. 1006, 3:9–22; 31–36” appears to be the one citation
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`that might be characterized as “mistaken”; in other portions of the decision the
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`Board cites to these portions of Exhibit 1005, rather than Exhibit 1006.
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`7
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`tions” as disclosed in Appel ’770, because such curvature would have defeated
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`Arai’s stated objective of a “uniform” pressure distribution. Response, 16–20. That
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`argument is unsupported, incorrect, and contrary to the prior unappealed finding of
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`the Board.
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`To begin, the Board previously found that Arai discloses a wiper blade hav-
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`ing a contact force greater in the center section than in the end sections. See Ex.
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`1004, 3:48–51, fig. 7. Challenged claim 1 is written in broad terms and encom-
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`passes any pressure differential between “center” and “end” sections of a wiper
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`blade, including that disclosed in Arai figure 7 reproduced above.
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`Second, Arai and Appel ’770 both teach that varying the pre-curvature of a
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`wiper blade is one way to vary the force distribution received from a wiper arm.
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`Given the pressure distribution disclosed in Arai figure 7, the Appel ’770 provided
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`a clear reason to use the means claimed in the ’698 Patent, namely, lessening the
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`curvature in the end regions of the wiper support. As the Board stated,
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`pel ’770’s disclosure that progressive pressure contact from ends to center can be
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`achieved through various constructional approaches incorporating progressive di-
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`mensional variations in free form curvature . . . provides a rationale for a person of
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`ordinary skill to modify Arai so that the combined structure has progressive pres-
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`sure contact from ends to center.” Decision, 26 (emphasis in original). Bosch does
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`not dispute the Board’s finding that Appel ’770 discloses “various constructional
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`8
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`approaches incorporating dimensional variations in free form curvature” (id. at 25),
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`apart from its quibble with the Board’s reliance on Appel ’551 disclosures incorpo-
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`rating Appel ’770 by reference.
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`Third, Bosch’s assertion that Costco and the Board have engaged in imper-
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`missible “hindsight” analysis is incorrect. Response, 17–18. As noted above, the
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`Board states that the express teachings of Appel ’770—not addressed by Bosch—
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`would have provided a rationale for a person of ordinary skill to include Appel
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`’770’s parabolic curvature in Arai’s backbone. Id.; Decision, 26. And, as Bosch
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`admits, the “goal” of both Arai and Appel ’770 was the application of relatively
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`uniform pressure across the length of the wiper (Response, 7, 15), providing an ad-
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`ditional reason to combine these references to improve wiping quality. See Peti-
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`tion, 40; Ex. 1013 ¶ 54, Ex. 2002, 16:2–18:23; Ex. 1013 ¶ 60–61. Furthermore,
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`modifying Arai’s backbone to include the parabolic curvature of Appel ’770 would
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`merely be a “predictable use of prior art elements according to their established
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`functions.” KSR, 550 U.S. at 417; see Second Davis Decl. ¶ 12.
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`Fourth, Bosch’s attempts to characterize Arai as teaching away from both a
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`contact force and a curvature that are greater in its center section than in its end
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`sections, as well as limiting Appel ’770 to “uniform” curvature, are merely rehash-
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`es of its individual attacks on those references. Response, 18–19. Bosch’s under-
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`standing is inconsistent with the express teachings of Arai and Appel ’770 as well
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`9
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`as the BPAI’s decision. See discussion supra p. 2–7.
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`Finally, Bosch argues that the purported “flip over” problem discussed in the
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`’698 Patent is not addressed by Arai or Appel ’770, suggesting that the identifica-
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`tion of this problem is the invention. Response, 19–20 (citing Leo Pharm. Prods.,
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`Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013); Cardiac Pacemakers, Inc. v. St. Jude
`
`Med., Inc., 381 F.3d 1371 (Fed. Cir. 2004)). But the problem the ’698 Patent ad-
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`dresses need not be the problem that would lead a person of ordinary skill in the art
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`to arrive at the subject matter of claim 1. KSR, 550 U.S. at 420 (“[A]ny need or
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`problem known in the field of endeavor at the time of invention and addressed by
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`the patent can provide a reason for combining the elements in the manner
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`claimed.”) (emphasis added); see, e.g., Tyco Healthcare Grp. LP v. Ethicon Endo-
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`Surgery, Inc., 774 F.3d 968, 977 (Fed. Cir. 2014) (non-preferred embodiment di-
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`rected to different purpose contributing to obviousness).
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`As discussed above, persons of ordinary skill in the art interested in con-
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`structing a wiper faced with solving the problem of providing relatively uniform
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`pressure distribution would have had reason to modify Arai’s backbone with Appel
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`’770’s parabolic curvature to improve pressure distribution and wiping quality.
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`And, as stated in the BPAI’s opinion and in the Decision, Arai inherently discloses
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`a wiper that would flip over as described in the ’698 Patent and recited in previous-
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`ly-rejected application claim 5. Ex. 1002, 293; Decision, 24.
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`
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`10
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`III. BOSCH’S EVIDENCE OF PURPORTED SECONDARY CONSID-
`ERATIONS ARE INSUFFICIENT TO OVERCOME A FINDING OF OB-
`VIOUSNESS
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`“Weak secondary considerations generally do not overcome a strong prima
`
`facie case of obviousness.” W. Union Co. v. MoneyGram Payment Sys., Inc., 626
`
`F.3d 1361, 1373 (Fed. Cir. 2010). “Here, where the inventions represented no more
`
`than ‘the predictable use of prior art elements according to their established func-
`
`tions,’ the secondary considerations advanced by [Bosch] are inadequate to estab-
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`lish nonobviousness as a matter of law.” Id. (citing KSR, 550 U.S. at 417).
`
`A. There Is No Nexus Between the ’698 Patent and Any Purported
`Commercial Success, and No Success Is Established
`
`A “nexus” is established where there is proof that a “marketed product em-
`
`bodies the claimed features, and is coextensive with them . . . . Brown & William-
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`son Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120 (Fed. Cir. 2000) (emphasis
`
`added) (citation omitted).
`
`Bosch “submitted the same evidence in each of the inter parties reviews”
`
`Nos. IPR2016-00034, -00036, -00038, -00039, -00040, and -00041, which “un-
`
`dermines its commercial success arguments” because the ’698 Patent and those
`
`that are the subject of the other five IPRs are “directed to different inventions.”
`
`GraftTech Int’l Holdings, Inc. v. Laird Techs. Inc., No. 2015-1796 No. 2015-1796,
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`2016 WL 3357427, at *5 (Fed. Cir. June 17, 2016).
`
`Because Bosch’s own evidence indicates that there are features, purportedly
`
`
`
`11
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`
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`present in the allegedly successful Aerotwin and Icon wiper products but either
`
`“unclaimed” in the ’698 Patent,4 see Ormco Corp. v. Align Tech., Inc., 463 F.3d
`
`1299, 1312 (Fed. Cir. 2006), or resulting from the flat-springs “known in the prior
`
`art,” Ethicon, 812 F.3d at 1034, there can be no nexus between the ’698 Patent and
`
`any alleged success. See Response, 21.
`
`Bosch relies on its employee, Martin Kashnowski, to link (1) its products’
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`“flexible spoiler with diverging legs” and “end caps” and (2) his recollection that
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`Bosch allegedly “tested these products extensively before releasing them and
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`found them “quiet in operation,” to the supposed “great customer demand for these
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`products.” Response, 24–25; Ex. 2007 (Kashnowski Decl.) ¶ 6. But the ‘698 Patent
`
`does not discuss “diverging legs” or “end caps” at all (see generally Ex. 1001).
`
`And Mr. Kashnowski’s “conclusory assertion that, in his opinion, the sales of the
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`[products] derive from” the results of these features or tests “is insufficient” to
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`show nexus. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). As explained by Mr.
`
`David Peck, an engineer with more than 15 years of experience in the wiper indus-
`
`try, wiper products are routinely tested before their market release, and wiper noise
`
`is caused by many sources, “the design of the motor, the design of the motor link-
`
`age clearances, the rubber selection of the wiping element, and the tendency of the
`
`4 Bosch alleges that features of these products are claimed in a multitude of other
`
`patents. See Ex. 2014, 3–4.
`
`
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`12
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`wiper to enter a failed wiping mode (e.g., chatter),” all of which must be addressed
`
`to make a quiet system. Ex. 1100 (“Peck Decl.”) ¶¶ 19. In view of this, Mr. Kash-
`
`nowski’s testimony suggests a lack of nexus between its products and the ’698 Pa-
`
`tent.
`
`Bosch also submits that its purported solution to unspecified “engineering
`
`difficulties” led to the introduction of the Aerotwin product, and that the Icon
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`product had “fewer part numbers” that, in turn, overcame a “disadvantage” of the
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`Aerotwin product. Response, 21, 23 (citations omitted). Again, Bosch’s own evi-
`
`dence indicates a lack of nexus between its products and the challenged claims of
`
`the ‘698 Patent.
`
`The evidence submitted by Bosch fails to establish that its Aerotwin and
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`Icon products actually practice the ’698 Patent. First, Bosch simply alleges, with-
`
`out explanation, that the Aerotwin and three different “Generation[s]” 5 of Icon
`
`products “have practiced and continue to practice” the ’698 Patent, along with
`
`claim charts that are not discussed by any of its declarants. Response, 24;
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`Ex. 2014, 3–4; Ex. 2015, 33–57; Ex. 2016, 30–43. It is well-established that “mere
`
`attorney argument” relating to commercial success “is not evidence that can sup-
`
`5 Bosch does not distinguish among these three generations of “ICON” products or
`
`describe how they relate to “the Icon blade” discussed in its response and in the
`
`declaration of Mr. Kashnowski. Response, 19 (emphasis added).
`
`
`
`13
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`
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`port a finding of nonobviousness.” W. Union, 626 F.3d at 1372 (citation omitted).
`
`“The lack of nexus between the claimed subject matter and the commercial success
`
`. . . of the [Bosch products] renders [Bosch’s] proffered objective evidence unin-
`
`formative to the obviousness determination.” Pregis Corp. v. Kappos, 700 F.3d
`
`1348, 1355–56 (Fed. Cir. 2012) (citation omitted).
`
`Even if Bosch had shown a nexus between its wiper products and the ‘698
`
`Patent, Mr. Kashnowski’s testimony—Bosch’s only evidence on the issue—fails to
`
`establish commercial success. Response, 17–18, 21 (citations omitted). Mr. Kash-
`
`nowski’s “merely stating—with no supporting figures or data—that the [Aerotwin]
`
`. . . was successful . . . is insufficient on its own to establish that the [Aerotwin] has
`
`been a ‘commercial success.’” MRC Innovations, Inc. v. Hunter Mfg., LLP, 747
`
`F.3d 1326, 1336 (Fed. Cir. 2014). And Mr. Kashnowski submits only “bare sales
`
`numbers” for Bosch’s Icon product that “provide[] no indication of whether this
`
`represents a substantial quantity in this market.” In re Huang, 100 F.3d at 140. Ac-
`
`cordingly, Mr. Kashnowski’s testimony is “insufficient because it does not estab-
`
`lish that either product is . . . commercially successful.” Arlington Indus., Inc. v.
`
`Bridgeport Fittings, Inc., 581 Fed. App’x 859, 867 (Fed. Cir. 2014).
`
`B.
`
`Bosch’s Proffered “Evidence” of Skepticism and Unexpected Re-
`sults Does Not Undercut Obviousness
`
`Bosch suggests, based on the testimony of Dr. Dubowsky and Mr. Wilfried
`
`Merkel, one of its former employees, that persons of ordinary skill in the art were
`
`
`
`14
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`
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`skeptical regarding the invention claimed in the ’698 Patent. Response, 24 (cita-
`
`tions omitted). As noted above (see note 1 supra), Patent Owner failed to make Mr.
`
`Merkel available for deposition and accordingly, for the reasons set forth in Peti-
`
`tioner’s Motion to Strike submitted simultaneously herewith, the Board should not
`
`give this testimony any weight.
`
`In any event, their statements do not appear to relate in any way to the cur-
`
`vature and force distributions described in the challenged claim. Id. As explained
`
`by Dr. Davis, and set forth supra pp. 7–10, a person of ordinary skill would have
`
`expected the force distributions and curvatures described in Arai and Appel ’770 to
`
`work as described. Second Davis Decl. ¶ 12; Ex. 1013 ¶ 54; Ex. 2002, 16:2–18:23.
`
`Accordingly, Bosch’s submissions relating to skepticism and surprise are merely
`
`“conclusory testimony from [an expert],” see I/P Engine, Inc. v. AOL Inc., 576 F.
`
`App’x 982, 992 (Fed. Cir. 2014)) and are “lacking in detail and . . . support in the
`
`record” that fails to “undercut[] [the] conclusion [of obviousness]” of the chal-
`
`lenged claim of the ’698 Patent. Norgren v. Int’l Trade Comm