Case No. IPR2016-00035
`U.S. Patent No. 6,836,926
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
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`CASE NO. IPR2016-00035
`U.S. Patent No. 6,836,926
`______________________
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 35
`U.S.C. § 313 AND 37 C.F.R. § 42.107
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`U.S. Patent No. 6,836,926
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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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`______________________
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
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`CASE NO. IPR2016-00035
`U.S. Patent No. 6,836,926
`______________________
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`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 35
`U.S.C. § 313 AND 37 C.F.R. § 42.107
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`I.
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`II.
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`Case No. IPR2016-00035
`U.S. Patent No. 6,836,926
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`Table of Contents
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`INTRODUCTION ........................................................................................... 1
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`SUMMARY OF ARGUMENTS .................................................................... 1
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`III.
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`STANDARD FOR INSTITUTION................................................................. 3
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`IV. BRIEF OVERVIEW OF U.S. PATENT. NO. 6,836,926 ............................... 5
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`V.
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`THE BOARD SHOULD DENY INSTITUTION OF IPR
`BECAUSE PETITIONER DISPUTES ITS OWN CLAIM
`CONSTRUCTIONS ........................................................................................ 6
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`VI. THE BOARD SHOULD DENY INSTITUTION OF IPR
`BECAUSE SUBSTANTIALLY THE SAME ARGUMENTS
`WERE PREVIOUSLY BEFORE THE OFFICE .......................................... 11
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`VII. PETITIONER FAILS TO ESTABLISH THAT THE PRIOR
`ART DISCLOSES THE INEQUALITY DISCLOSED IN THE
`CHALLENGED CLAIMS ............................................................................ 14
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`A. Ground 1 ..............................................................................................15
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`B.
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`Ground 2 ..............................................................................................16
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`VIII. PETITIONER FAILS TO ADEQUATELY EXPLAIN HOW
`OR WHY THE PRIOR ART WOULD BE MODIFIED, OR
`HOW ANY SUCH MODIFICATION WOULD ARRIVE AT
`THE SUBJECT MATTER OF THE CHALLENGED CLAIMS ................. 17
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`IX. CONCLUSION .............................................................................................. 21
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`Case No. IPR2016-00035
`U.S. Patent No. 6,836,926
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`Table of Authorities
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`Cases
`ActiveVideo Networks v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012). ........................................................................... 5
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`August Technology Corp. v. Camtek Ltd.,
`655 F.3d 1278 (Fed. Cir. 2011) ............................................................................ 4
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`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`Case No. IPR2014-00581, Paper 8 (PTAB Oct. 14, 2014) .................................. 9
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`Cuozzo Speed Tech v. Lee, cert.
`granted (U.S. Jan. 15, 2016) ............................................................................... 10
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`Farmwald v. ParkerVision, Inc.,
`Case No. IPR2014-01107, Paper 7 (PTAB Jan. 8, 2015) ............................. 19, 20
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`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ........................................................................................ 4, 19
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`National Steel Car, Ltd. V. Canadian Pac. Ry.,
`357 F.3d 1319 (Fed. Cir. 2004) .................................................................... 13, 16
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`Playtex Prods., LLC v. Munchkin, Inc.,
`Case No. IPR2014-01130, Paper 15 (PTAB Jan. 13, 2015) ................................. 8
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`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 15 (PTAB Dec. 30, 2013) ............................................... 4
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`Schering Corp. v. Geneva Pharm.,
`339 F.3d 1373 (Fed. Cir. 2003) .......................................................................... 12
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`Vizio, Inc. v. Int’l Trade Comm’n,
`605 F.3d 1330 (Fed. Cir. 2010) ............................................................................ 4
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`W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
`842 F.2d 1275 (Fed. Cir. 1988) .......................................................................... 10
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`Statutes
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`Case No. IPR2016-00035
`U.S. Patent No. 6,836,926
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`35 U.S.C. § 112 .......................................................................................................... 3
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`35 U.S.C. § 112(f) .............................................................................................. 3, 7, 8
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`35 U.S.C. § 314(a) ..................................................................................................... 4
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`35 U.S.C. § 316(e) ..................................................................................................... 4
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`35 U.S.C. § 325(d) ................................................................................................... 11
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`
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`Regulations
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`37 C.F.R. § 42.100(b) .............................................................................................. 10
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`37 C.F.R. § 42.104(b)(2) ............................................................................................ 3
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`37 C.F.R. § 42.104(b)(3) .................................................................................... 3, 7, 8
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`37 C.F.R. § 42.104(b)(4) .................................................................................... 3, 4, 9
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`37 C.F.R. § 42.108(c) ................................................................................................. 4
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`Other Authorities
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14,
`2012) ..................................................................................................................... 4
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`I.
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`INTRODUCTION
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`Case No. IPR2016-00035
`U.S. Patent No. 6,836,926
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`Patent Owner, Robert Bosch LLC (“Bosch”), submits this preliminary
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`response to the Petition filed by Costco Wholesale Corporation (“Petitioner” or
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`“Costco”) as Paper No. 1 in this proceeding, requesting inter partes review (“IPR”)
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`of claims 1–3 of U.S. Patent No. 6,836,926 (“Petition”). This response is timely
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`pursuant to the Board’s Notice in Paper No. 3.
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`The following arguments are not intended to be exhaustive with respect to
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`the grounds asserted in the Petition. Bosch respectfully submits the streamlined
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`arguments showing that denial of institution is appropriate here, and reserves the
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`right to provide additional evidence, including testimonial evidence, and to include
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`new arguments, should the Board decide to institute review in this case.
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`Bosch respectfully submits that Petitioner has not established a reasonable
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`likelihood that it would prevail with respect to any of the challenged claims.
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`Accordingly, Bosch respectfully requests that the Board decline to institute inter
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`partes review for the reasons set forth below.
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`II.
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`SUMMARY OF ARGUMENTS
`The Petition fails for several reasons.
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`First, Petitioner has proposed that the Board apply claim constructions that
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`Petitioner explicitly disputes. These claim constructions are drawn from Bosch’s
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`proposed claim constructions in district court. However, Bosch objects to
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`Petitioner’s request that the Board disregard Petitioner’s own misgivings about its
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`proposed claim constructions and cancel Bosch’s duly issued claims at the same
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`time that Petitioner argues to a different tribunal that the claims are narrower. This
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`request is contrary to the rules and policies surrounding inter partes review.
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`Second, the Petition raises no new issues. Substantially the same prior art
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`and substantially the same arguments were considered by the examiner during
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`prosecution. Petitioner has failed to explain the differences between this petition
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`and the examiner’s rejection—or even why the examiner was wrong—in a legally
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`proper or coherent manner.
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`Third, the Petition fails to explain how the asserted prior art discloses the
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`inequality of claim 1. Claim 1 recites a specific inequality, requiring a particular
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`quantity to be less than 0.009 (or 0.005 for dependent claim 3). The Petition
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`performs “exemplary” calculations to show this relationship, but one such
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`calculation inexplicably relies on a quantity from the wrong reference, and the
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`others do not even use the same formula as claim 1.
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`Fourth, and last, the Petition presents obviousness challenges without
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`adequately explaining (i) why a person of ordinary skill in the art would have
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`combined or modified the prior art, (ii) what the resulting combination or
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`modification would look like, or (iii) how the combination or modification would
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`fall within the scope of the challenged claims. All of these elements are essential
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`to a well-pleaded obviousness challenge.
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`Accordingly, Bosch respectfully submits that, for at least these reasons, the
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`Board should decline to institute the inter partes review.
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`III. STANDARD FOR INSTITUTION
`The rules governing petitions for inter partes review require the petitioner to
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`identify certain basic information about its challenge. Importantly, a petition
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`challenging a claim must identify (i) “specific statutory grounds … on which the
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`challenge to the claim is based,” (ii) “[h]ow the challenged claim is to be
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`construed,” and (iii) “[h]ow the construed claim is unpatentable under the statutory
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`grounds.” 37 C.F.R. § 42.104(b)(2)–(4). If a claim is to be construed according to
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`35 U.S.C. § 112, ¶ 6, the petitioner must identify “the specific portions of the
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`specification that describe the structure, material, or acts corresponding to each
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`claimed function.” Id.1
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`1 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125
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`Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f).
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`Because the ’926 patent has a filing date prior to September 16, 2012, the effective
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`date of § 4(c) of the AIA, Bosch refers to the pre-AIA version of 35 U.S.C. § 112.
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`U.S. Patent No. 6,836,926
`The Board, in considering whether to institute a trial, determines whether or
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`not a party has met the statutory institution standard: a petition for inter partes
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`review may be granted when “the information presented in the petition … shows
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`that there is a reasonable likelihood that the petitioner would prevail with respect to
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`at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37
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`C.F.R. § 42.108(c). A petitioner bears the burden of showing that this standard has
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`been met. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,756(Aug. 14, 2012) (“The Board … may institute a trial where the petitioner
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`establishes that the standards for instituting the requested trial are met….”). A
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`petitioner also bears the burden of proving unpatentability by a preponderance of
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`the evidence. 35 U.S.C. § 316(e).
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`A petitioner making an obviousness challenge must show where each
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`claimed limitation is taught in the prior art. See, e.g., Vizio, Inc. v. Int’l Trade
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`Comm’n, 605 F.3d 1330, 1342–43 (Fed. Cir. 2010); August Technology Corp. v.
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`Camtek Ltd., 655 F.3d 1278, 1287 (Fed. Cir. 2011); see also 37 C.F.R. §
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`42.104(b)(4). If a petitioner asserts that a combination of prior art renders a claim
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`unpatentable, it must “set forth sufficient articulated reasoning with rational
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`underpinning to support its proposed obviousness ground.” SAS Inst., Inc. v.
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`ComplementSoft, LLC, IPR2013-00581, Paper 15 at 12 (PTAB Dec. 30, 2013)
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`(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); accord
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`ActiveVideo Networks v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed.
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`Cir. 2012).
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`It is a petitioner’s duty to provide sufficient grounds for institution. Here,
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`Petitioner has failed to live up to it. Bosch respectfully submits that institution
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`should be denied.
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`IV. BRIEF OVERVIEW OF U.S. PATENT. NO. 6,836,926
`U.S. Patent No. 6,836,926 (“the ’926 patent”), entitled “Wiper Blade for
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`Windshields, Especially Automobile Windshields, and Method for the Production
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`Thereof,” issued on January 4, 2005, from a PCT application filed on July 6, 2000,
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`which claims priority to three German applications filed on July 9, 1999, and one
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`filed on July 5, 2000.
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`The ’926 patent is directed to a beam wiper blade having a support element
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`with a substantially constant thickness and width, wherein the parameters of the
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`support element satisfy the inequality:
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`𝐹𝑤𝑓∗𝐿2
`48∗𝐸∗𝐼𝑧𝑧<0.009
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`where Fwf is the pressure force exerted on the wiper blade against the window, L is
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`the length of the support element, E is the modulus of elasticity of the support
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`element, and Izz is the moment of inertia of the cross-sectional profile around a z-
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`axis perpendicular to an s-axis, which adapts along with the support element, and
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`perpendicular to a y-axis. Ex. 1001 at claim 1, Abstract; see also 4:52–54. The
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`patent describes Izz as being calculated by the following formula, where d is the
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`thickness of the support element and b is the width of the support element (id. at
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`6:58–7:1):
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`𝐼𝑧𝑧=𝑑∗𝑏312
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`The lateral deflection of the ends of a wiper blade designed according to this
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`invention is minimized, thereby preventing undesirable wiper blade rattling. Id. at
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`2:1–23.
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`V. THE BOARD SHOULD DENY INSTITUTION OF IPR BECAUSE
`PETITIONER DISPUTES ITS OWN CLAIM CONSTRUCTIONS
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`Petitioner offers no actual claim constructions. Instead, with respect to two
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`claim terms, the petition identifies two claim constructions offered by Bosch to the
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`U.S. District Court for the District of Delaware. In particular, according to the
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`Petition, Bosch asserted that:
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`• the term “Izz is a moment of inertia of a cross sectional profile around
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`a z-axis perpendicular to an taxis [sic], which adapts along with the
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`support element (12), and perpendicular to a y-axis” should be
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`construed as “Izz is a moment of inertia of a cross sectional profile
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`around a z-axis perpendicular to an s-axis which adapts along with the
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`support element, and perpendicular to a y-axis, calculated by the
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`formula Izz=(d*b3)/12,” and
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`U.S. Patent No. 6,836,926
`• the term “support element” should carry its plain and ordinary
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`meaning.
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`Petitioner asks the Board to assume that these constructions are correct and
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`admits that the analyses in the Petition and supporting expert declaration also
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`assume the application of these claim constructions. Petition at 18–19. However,
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`it is clear from the Petition that Petitioner disagrees with those claim constructions:
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`“Petitioner does not agree that Patent Owner’s proposed construction of the ’926
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`Patent represents the broadest reasonable construction of the terms ‘Izz’ and
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`‘support element’ ….” Id. at 19. In short, Petitioner has asked the Board to apply
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`these constructions “for purposes of this IPR proceeding,” while continuing to
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`assert that they are incorrect. See id. at 19–20. Furthermore, Petitioner takes the
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`position that these terms “should be construed as denoting corresponding structure,
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`material, or acts described in the specification and drawings of the ‘926 Patent,”
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`i.e., under 35 U.S.C. § 112, ¶ 6. Id. But nowhere in the Petition does Petitioner
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`identify which “corresponding structure, material, or acts” should be limiting or
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`otherwise convey what it believes the correct claim construction should be.
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`Costco’s disavowal of its own proposed claim constructions is fatal to its
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`petition. The rules governing IPR proceedings require a petitioner to identify
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`“[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). While
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`Petitioner has offered some claim constructions for the Board to apply, it has in the
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`same breath disputed those constructions. See Petition at 18–20. The Board has
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`regularly denied institution of IPR after finding claim constructions offered by the
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`petitioner to be incorrect. See, e.g., Playtex Prods., LLC v. Munchkin, Inc., Case
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`No. IPR2014-01130, Paper 15 (PTAB Jan. 13, 2015) (denying petitioner’s request
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`for rehearing after institution was denied, because petitioner’s challenge was
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`contingent on a claim construction rejected by the Board). In this case, the petition
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`itself states that the constructions are wrong and does not identify any
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`constructions that Petitioner actually supports. It is therefore facially defective,
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`and should be denied as to all grounds for this reason alone.
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`The rules further require that, where claims are construed according to 35
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`U.S.C. § 112, ¶ 6, the petition must identify “the specific portions of the
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`specification that describe the structure, material, or acts corresponding to each
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`claimed function.” 37 C.F.R. § 42.104(b)(3). The Petition conveys Costco’s
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`position that the challenged terms “should be construed as denoting corresponding
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`structure, material, or acts described in the specification and drawings of the ‘926
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`Patent.” Petition at 19–20. But the Petition does not identify which portions of the
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`specification describe such structure, material, or acts. Instead, Costco asks the
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`Board to disregard its position and assume that Bosch’s constructions are right, all
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`while reserving the right to disprove this assumption in Delaware. This is not in
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`compliance with the rules.
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`U.S. Patent No. 6,836,926
` The rules also require the petition to identify “[h]ow the construed claim is
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`unpatentable.” 37 C.F.R. § 42.104(b)(4). Costco also has failed this requirement.
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`The Petition clearly states that Costco’s and its expert’s analyses are based on the
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`very claim constructions that Costco believes to be wrong. Petition at 20. Rather
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`than asserting that the claims are in fact unpatentable under the correct (or
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`“broadest reasonable”) construction, Costco is arguing that the claims would be
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`unpatentable if the constructions proposed by Bosch were correct—while, in
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`Costco’s view, they are wrong. Thus, the Petition essentially asks the Board to
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`decide a hypothetical dispute. The Petition is therefore defective, and should be
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`denied as to all grounds.
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`Even if the rules do not strictly prohibit Petitioner’s disavowal of its own
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`proposed claim constructions, the Board should deny institution. The Board has
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`discretion to deny an IPR petition, even where the petition otherwise satisfies the
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`statutory and regulatory requirements. See, e.g., Butamax Advanced Biofuels LLC
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`v. Gevo, Inc., Case No. IPR2014-00581, Paper 8 at 5–6 (PTAB Oct. 14, 2014). In
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`this case, Costco appears to be taking the position that, if the claims are construed
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`broadly enough to encompass the products accused of infringement, then they are
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`invalid. In principle, this might be an appropriate strategy in the district court,
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`where infringement and validity issues may be decided together and the claims
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`must be construed consistently: “Having construed the claims one way for
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`determining their validity, it is axiomatic that the claims must be construed in the
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`same way for infringement.” W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d
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`1275, 1279 (Fed. Cir. 1988). Costco’s Petition seeks a way around this principle,
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`asking the Board and district court to collectively construe the claims one way for
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`validity and another way for infringement.2 This could, in theory, lead to
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`inconsistent judgments that the challenged claims are unpatentable and not
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`infringed, even though the petition itself implies the inconsistency of these
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`conclusions. Put differently, Costco can properly argue in the alternative in district
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`court, but by presenting its invalidity challenge to a different tribunal it converts its
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`alternative arguments into downright inconsistent ones. The Board should not
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`entertain such duplicity; its resources are better spent adjudicating disputes in
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`2 Unlike the district court, the Board gives claims their broadest reasonable
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`construction. 37 C.F.R. § 42.100(b); but see Cuozzo Speed Tech v. Lee, cert.
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`granted (U.S. Jan. 15, 2016) (No. 15-446). While Petitioner pays lip service to the
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`“broadest reasonable construction” standard, the Petition nowhere indicates how
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`the differing standards might properly give rise to different claim constructions of
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`the disputed claim terms. Rather, Costco explicitly admits that its proposed
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`constructions are not the “broadest reasonable” ones. Petition at 19.
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`which the petitioners unconditionally support their own challenges. The Petition
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`should be denied as to all grounds.
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`VI. THE BOARD SHOULD DENY INSTITUTION OF IPR BECAUSE
`SUBSTANTIALLY THE SAME ARGUMENTS WERE PREVIOUSLY
`BEFORE THE OFFICE
`The statute creating inter partes and post-grant reviews authorizes the PTO
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`to deny institution of IPR where “the same or substantially the same prior art or
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`arguments” in the petition “previously were presented to the Office.” 35 U.S.C.
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`§ 325(d). The Petition runs afoul of § 325(d). During prosecution, the examiner
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`rejected a host of claims—including application claims 19, and 20, which would
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`become claims 1 and 2 in the issued patent—as anticipated by the same Swanepoel
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`’650 and ’564 patents asserted as primary references in Petitioner’s only grounds.
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`Ex. 1002 at 291–93. The examiner also rejected claim 22—which would become
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`claim 3—as obvious over Swanepoel ’564 in view of the same Appel reference
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`relied upon by Petitioner for all of claims 1–3. Id. at 293–94. At the time, claim
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`19 did not include the “substantially rectangular cross sectional profile,”
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`“substantially constant width,” and “substantially constant thickness” limitations.
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`See id. at 313 (showing later amendment). But the examiner’s allowance did not
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`depend on these limitations. See id. at 352–53.
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`Petitioner attempts, but fails, to distinguish the instant petition from the
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`arguments presented during prosecution. The applicant argued that these
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`references failed to satisfy the inequality in claim 1 (as issued) because the 1-
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`Newton force described by the Swanepoel references referred to a lateral force
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`applied parallel to the windshield rather than the force pressing against the
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`windshield, and the examiner ultimately agreed. Petition at 13–14 (citing Ex. 1002
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`at 325). Petitioner distorts the applicant’s argument in order to create the
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`appearance of error: “Contrary to the applicants’ assertion that the lateral rigidity
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`did not relate to ‘the force that presses the wiper arm onto the wiper blade,’ the
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`‘926 Patent unambiguously links the up-and-down contact force distribution that
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`presses the wiper arm onto the wiper blade to the wiper blade’s lateral mechanical
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`properties.” Id. at 14 (quoting Ex. 1002 at 325) (emphasis added by Petitioner).
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`But Costco’s comments do not establish any mistake by the examiner.
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`In order to anticipate, a prior art reference must disclose every limitation of
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`the challenged claim. See, e.g., Schering Corp. v. Geneva Pharm., 339 F.3d 1373,
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`1377 (Fed. Cir. 2003) (a patent claim is “invalid for anticipation [only] if a single
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`reference discloses each and every limitation” of the claim). It is not enough for
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`the disclosures of the prior art to relate to the claim limitations, much less relate to
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`the specification. For example, the force described in the Swanepoel ’650
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`reference is a “lateral force applied at either tip,” (Ex. 1006 at 3:39 (emphasis
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`added)), which is neither in the right direction (perpendicular to the windshield)
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`nor in the right place (where the wiper arm connects to the wiper blade) as required
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`by the claims. Assumptions stated in the specification of the ’926 patent do not
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`dispense with the requirement that the prior art disclose every limitation of each
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`claim.
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`Similarly, the applicant argued that the Swanepoel references failed to
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`disclose a wiper blade having the “substantially constant width and thickness of the
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`present invention,” (see Petition at 14–15), but the petition falsely attributes error
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`to the applicant. According to Petitioner, the applicant’s argument was “mistaken
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`inasmuch as the ‘926 Patent asserts that ‘the invention is based on the knowledge
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`that a favorable wiping quality, particularly due to rattle prevention, is achieved if
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`the angle γ does not exceed the value 0.5° (=0.009 rad) and in particular, 0.3°
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`(=0.005 rad).” Id. (quoting Ex. 1001 at 6:45–50). Again, Petitioner commits a
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`fundamental mistake of patent law; in evaluating anticipation or obviousness, the
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`prior art must be compared to the claims, not to the specification. National Steel
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`Car, Ltd. v. Canadian Pac. Ry., 357 F.3d 1319, 1334 (Fed. Cir. 2004). Petitioner
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`apparently assumes that if the invention, as described in the specification, is “based
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`on” some concept, then the prior art need only relate to that concept in some vague,
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`unstated manner in order to render the claims unpatentable. This is incorrect.
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`Thus, the only alleged “difference” identified by Petitioner between the
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`issues presented in prosecution and the issues presented in the instant petition is
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`that Petitioner has misinterpreted and/or misapplied patent law. Accordingly, the
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`Board should exercise its discretion and decline reconsideration of these issues.
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`VII. PETITIONER FAILS TO ESTABLISH THAT THE PRIOR ART
`DISCLOSES THE INEQUALITY DISCLOSED IN THE
`CHALLENGED CLAIMS
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`Bosch respectfully submits that Petitioner has not shown that the challenged
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`claims are unpatentable.3 At a minimum, the Petition fails to show that the prior
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`art discloses wiper blades having the claimed mathematical relationship. Claim 1
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`recites that relationship precisely: 𝐹𝑤𝑓∗𝐿2
`48∗𝐸∗𝐼𝑧𝑧<0.009
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`Yet, rather than pointing to items in the prior art that expressly or inherently
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`disclose this relationship, Petitioner combines the disclosures of multiple
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`references without explanation and applies equations found not in the claims but in
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`the specification.
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`3 Bosch submits that a person of ordinary skill in the art in this case has an
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`undergraduate degree in mechanical engineering or a similar discipline, or several
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`years of experience in the field of wiper blade manufacture and design.
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`A. Ground 1
`In Ground 1, which uses Swanepoel ’650 as the primary reference, the
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`Petition presents two “exemplary” calculations,4 allegedly showing that the
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`claimed inequality is disclosed by the prior art. The first calculation in the Petition
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`proceeds as follows:
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`• The lateral force, length, and modulus of elasticity are derived from
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`Swanepoel ’650;
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`• The moment of inertia is calculated by applying an equation from a
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`book (Ex. 1007) to these parameters;
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`• The force against the windshield (Fwf in the claimed equation) is
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`derived from the other Swanepoel reference; and
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`• The result is 0.002 radians, which is less than the claimed 0.009.
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`This calculation is facially defective, for at least two reasons. First, it
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`assumes that the single equation from Ex. 1007 may be applied to a wiper blade to
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`determine its moment of inertia. Neither the Petition itself, nor the supporting
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`expert declaration, explains why this equation is applicable, asserting merely that it
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`4 Bosch objects to Petitioner’s characterization of its calculations as “exemplary.”
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`The calculations are important parts of Petitioner’s grounds, and any calculation
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`not presented in the Petition should be deemed waived.
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`is a “standard mechanics equation[].” Second, the analysis combines one
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`parameter from a secondary reference (Swanepoel ’564) with several parameters
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`from the primary reference (Swanepoel ’650). Neither the Petition, nor the
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`supporting declaration, explains why the 6.3 N applied force in Swanepoel ’564 is
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`inherent in or incorporated into Swanepoel ’650, or why it would have been
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`obvious to import it.
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`The second calculation in Ground 1 does not even purport to apply the
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`relation explicitly recited in claim 1. Instead, it applies a different (albeit related)
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`inequality for determining the lateral deflection angle, substituting the fixed “Izz”
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`term in an equation from the specification (at column 6, line 35) for a variable
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`“Izz(s),” which varies as a function of distance along the longitudinal axis of the
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`wiper blade. Nowhere does the Petition explain why this is proper, or whether and
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`why the relationship actually recited in claim 1 is expressly or inherently disclosed.
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`See National Steel Car, 357 F.3d at 1334 (requiring comparison of prior art to
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`claims).
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`B. Ground 2
`Ground 2, which uses Swanepoel ’564 as the primary reference, also
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`presents two “exemplary” calculations allegedly showing that the prior art
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`discloses the inequality of claim 1. The first is entirely conclusory, asserting that
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`the dimensions in Swanepoel ’650 and Swanepoel ’564 are identical and that the
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`second calculation from Ground 1 is equally applicable to Ground 2. Even
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`assuming Petitioner is correct in this regard, the first calculation suffers from at
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`least the same problems discussed above with respect to Ground 1. The second
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`calculation relies on a different portion of Swanepoel ’564, but suffers from the
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`same problem: the inequality recited in claim 1 appears nowhere in the analysis.
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`For the foregoing reasons, the Petition fails to show that the inequality
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`recited in claim 1 is actually disclosed by the prior art. Accordingly, the Petition
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`does not demonstrate a reasonable likelihood that claims 1–3 are unpatentable, and
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`should be denied in its entirety.
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`VIII. PETITIONER FAILS TO ADEQUATELY EXPLAIN HOW OR WHY
`THE PRIOR ART WOULD BE MODIFIED, OR HOW ANY SUCH
`MODIFICATION WOULD ARRIVE AT THE SUBJECT MATTER
`OF THE CHALLENGED CLAIMS
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`As discussed above, Petitioner has failed to show that the inequality
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`disclosed in claims 1–3 is satisfied by the Swanepoel references. But even
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`disregarding this failure, Petitioner has failed to show (i) how or why a person of
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`ordinary skill in the art would have modified the Swanepoel references to include a
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`“support element” having “a substantially rectangular cross sectional profile …
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`with a substantially constant width b and a substantially constant thickness d,” or
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`(ii) how the modified wiper blade would satisfy the inequality in claims 1–3.
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`Using claim charts, the Petition relies on several references as allegedly
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`disclosing a wiper blade with the support element having a “substantially
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`rectangular cross sectional profile” with “substantially constant” width and
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`thickness, as required by claim 1. Petition at 34–35, 43–44. Beyond the assertion
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`that each such reference—Appel, DE ’939, Palu, Arman, and Hoyler—discloses a
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`wiper blade with the support element having these features, the rationale for
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`combining these features with the primary Swanepoel references is simply that one
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`of the secondary references—Palu—touts its “substantially constant cross section”
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`as “withstanding considerably higher lateral loads.” Id. at 40 (quoting Ex. 1011 at
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`5:8–12); see also id. at 48. Thus, according to Petitioner,
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`a person of ordinary skill in the art confronted with the problem of
`limiting the side-to-side lateral deflection angle γ by selecting
`physical parameters including the actual, up-and-down contact forces
`exerted on the wiper blade by the wiper arm in condition when it is
`pressed against a window, would understand that the lateral rigidity
`and contact force parameters similar to those described and disclosed
`in Swanepoel ‘650 could be
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