Paper 16
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: April 25, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00035
`Patent 6,836,926 B1
`_______________
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: April 25, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00035
`Patent 6,836,926 B1
`_______________
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`I. INTRODUCTION
`A. Background
`Costco Wholesale Corporation (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–3 in U.S. Patent No. 6,836,926
`B1 (Ex. 1001, “the ’926 patent”). Paper 1 (“Pet.”). Robert Bosch LLC
`(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 15
`(“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314(a). Pursuant to § 314(a)
`an inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” Petitioner bears the burden of establishing a
`reasonable likelihood of unpatentability of one or more claims. 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108(c). “The ‘reasonable likelihood’ standard is a
`somewhat flexible standard that allows the Board room to exercise
`judgment.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765
`(Aug. 14, 2012).
`Upon consideration of the Petition and Preliminary Response, we
`determine that the information presented does not show that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of any of the challenged claims. Accordingly, we deny the
`Petition and do not institute an inter partes review of the ’926 patent.
`B. Related Proceedings
`The parties state that the ’926 patent is asserted in Robert Bosch LLC
`v. Alberee Products Inc. et al., Civil Action No. 12-574-LPS (consolidated
`2
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`with Civil Action No. 14-142-LPS), currently pending in the United States
`District Court for the District of Delaware. The ’926 also has been the
`subject of several judicial proceedings and an ITC proceeding. Pet. 1–2,
`Paper 5, 1–2. There are a number of pending petitions filed by Petitioner
`against patents owned by Patent Owner dealing with wiper blade
`technology. E.g., IPR2016-00034, 00036, 00038–00042.
`C. The ’926 Patent
`The ’926 patent discloses a wiper blade, shown below, such as a
`windshield wiper for an automobile.
`
`
`
`Figure 1 of the ’926 patent showing a perspective view
` of a wiper blade connected to a wiper arm
`As shown in Figure 1, wiper blade 10 includes wiper strip 14 carried
`by support element 12. Ex. 1001, col. 4, ll. 28–30. Connecting device 16
`connects wiper blade 10 to wiper arm 18. Id. at col. 4, ll. 37–38. Wiper arm
`18 is connected to a drive mechanism that moves arm 18, and hence wiper
`blade 10, across window 15. Id. at col. 4, ll. 49–52. The surface of window
`15 to be wiped by blade 10 is shown by line 26. Id. The curvature of wiper
`blade 10 in its unstressed state is sharper than the maximal curvature of the
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`spherically curved window 15. Id. at col. 4, ll. 55–61. As shown in Figure
`3, when positioned against window 15, this results in contact force Fwf ,
`shown by arrow 24, being applied to wiper blade 10, which, in turn, results
`in lip 28 of strip 14 contacting window surface 26. Id. at col. 4, ll. 61–64.
`The contact force (arrow 24) presses the wiper blade, or, more precisely,
`wiper lip 28, against surface 26 of window 15. Id. at col. 5, ll. 16–18.
`According to the Specification, the disclosed device achieves a
`“favorable wiping quality because among other things, a rattling of the wiper
`blade across the window –– the so-called slip-stick effect––is prevented.”
`Id. at col. 2, ll. 5–7. The Specification also states that to control the slip-
`stick effect, “attention must be paid particularly to the lateral deflection
`angle and less so to the absolute lag, i.e. the absolute deflection of the tips
`under stress. Id. at col. 2, ll. 7–11. “The lateral deflection angle γ is the
`angle at which the tangent to the support element end intersects the axis
`extending in the longitudinal direction of the support element.” Id. at col. 2,
`ll. 58–60. Based on this knowledge about the role of the lateral deflection
`angle, the Specification states it is “advantageous if the wiper blade is
`designed so that the lateral deflection of the ends of the wiper blades, which
`lag behind during operation, does not exceed a lateral deflection angle of a
`particular magnitude.” Id. at col. 2, ll. 11–14.
`The Specification states:
`the invention is based on the knowledge that a favorable wiping
`quality, particularly due to rattle prevention, is achieved if the
`angle γ does not exceed the value 0.5° (=0.009 rad) and in
`particular, 0.3° (=0.005 rad). As a result, a simple relation can
`
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`be deduced between the contact force and the geometric
`dimensions of the wiper blade, according to which
`
`
`
`in particular <0.005.
`Id. at col. 6, ll. 46–57.
`The equation above is recited in claim 1. The limitation of less than
`0.005 is recited in claim 2. In this equation, Fwf is the pressure force exerted
`on the wiper blade against the window, L is the length of the support
`element, E is the modulus of elasticity of the support element, and Izz is the
`moment of inertia of the cross-sectional profile around the z-axis.
`Id. at Abstract. A lateral deflection angle γ (see id. at col. 2, ll. 58–60) can
`be calculated by integration of the individual deflections from the fulcrum
`point of the wiper arm on the wiper blade to the wiper blade end. Id. at
`col. 6, ll. 20–24. According to the Specification,
`
`γ =
`
`.
`
`Id. at col. 6, l. 43.
`The Specification also states that “[f]rom the quantity discovered for
`this [lateral deflection] angle, important parameters can then be derived for
`the wiper blade, which have a simple relation to one another.” Id. at col. 2,
`ll. 15–17. Using this information, “cross sectional profiles for the support
`element can be very simply determined, which then produce a favorable
`wiping result.” Id. at col. 2, ll. 18–21. “Particularly useful cross sectional
`profiles are rectangular in design and have an essentially constant width and
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`an essentially constant thickness over the length of the wiper blade.” Id. at
`col. 2, ll. 32–35.
`
`D. Illustrative Claim
`The ’926 patent has eleven claims. Petitioner challenges only claims
`1–3. Claim 1, the sole independent challenged claim, is reproduced below.1
`1. A wiper blade for windows, comprising:
`at least one support element (12), a wiper strip (14), and a
`connecting device (16) for a wiper arm (18), wherein the support
`element (12) is an elongated, flat bar to which the wiper strip (14)
`and the connecting device (16) are attached, wherein the support
`element (12) has a cross sectional profile in which
`
`
`where Fwf is an actual contact force exerted on the wiper blade by
`the wiper arm (18) in condition when it is pressed against a
`window, L is a length of the support element (12), E is an
`elasticity modulus of the support element (12), and Izz is a
`moment of inertia of a cross sectional profile around a z-axis
`perpendicular to an taxis, which adapts along with the support
`element (12), and perpendicular to a y-axis, wherein the support
`element (12) has a substantially rectangular cross sectional
`profile (40), with a substantially constant width b and a
`substantially constant thickness d.
`E. References Relied Upon
`Petitioner relies upon the following prior art references:
`
`
`
`
`
`
`
`1 The parenthetical reference numerals appear in the patent claim.
`
`
`
`6
`
`
`
`Iss. Jan. 23, 1996 Ex. 1006
`
`1992
`
`Ex. 1007
`
`Iss. July 6, 1965
`
`Publ. Sept. 26,
`1974
`
`Iss. May 6, 1975
`
`Ex. 1008
`
`Ex. 1009
`Ex. 1010 (Engl.
`transl.)
`Ex. 1011
`
`Iss. Dec. 20, 1977 Ex. 1012
`
`Publ. Apr. 24,
`1958
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`Reference
`
`Date
`
`Iss. July 5, 1994
`
`Exhibit
`Number
`Ex. 1005
`
`Swanepoel ’564
`U.S. Pat. No. 5,325,564
`Swanepoel ’650
`U.S. Pat. No. 5,485,650
`Ferdinand P. Beer & E.
`Russell Johnston, Jr.
`Mechanics
`of Materials (2d ed.)
`Appel ’551
`U.S. Pat. No. 3,192,551
`DE ’939
`DE Publ. Appl.
`2,313,939
`Palu
`U.S. Pat. No. 3,881,214
`Arman
`U.S. Pat. No. 4,063,328
`Ex. 1013
`DE ’896
`Ex. 1014 (Engl.
`DE Publ. Appl.
`transl.)
`1,028,896
`Petitioner also relies on the Declaration testimony of Gregory W.
`Davis, Ph.D. (Ex. 1015).
`F. Asserted Grounds of Unpatentability
`In the Section of the Petition entitled “Statutory Grounds of Challenge
`- 37 C.F.R. § 42.104(b)(2),” Petitioner asserts two grounds of
`unpatentability. Pet 3–4. Petitioner’s “Ground #1” asserts that claims 1–3
`are unpatentable under 35 U.S.C. § 103(a) based on Swanepoel ’650 in view
`of Appel, Swanepoel ’564, DE ’939, Palu, or Arman, “and the knowledge of
`
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`a person of ordinary skill in the art.”2 Id. Petitioner’s “Ground #2” is
`identical to “Ground #1” except that “Ground #2 transposes the order of the
`two Swanepoel references. Id. at 4.
`Petitioner, however, asserts different grounds in other sections of its
`Petition. For example, the grounds discussed above do not refer to “Hoyler”
`(Ex. 1014) as a reference on which Petitioner relies. In the section of the
`Petition entitled “Level of Skill in the Art,” the Petition lists the prior art
`cited above, but does not refer to Hoyler. Pet. 31–32. In the section of the
`Petition entitled “Detailed Explanation of Grounds for Unpatentability,”
`however, Petitioner relies on Hoyler as a reference. E.g., Pet. 32, 41.
`Petitioner presents a third variation of the asserted grounds in stating
`its conclusion and rationale for the asserted grounds. For example,
`concerning Petitioner’s “Ground #1,” Petitioner concludes that a person of
`ordinary skill in the art,
`would understand that the lateral rigidity and contact force
`parameters similar
`to
`those described and disclosed
`in
`Swanepoel ’650 could be applied to the problem at hand, either
`in view of the knowledge of the existing skill in the art or more
`specifically in view of Swanepoel ’564 and/or Appel, DE ‘939,
`Palu, Arman, or Hoyler, rendering Claim 1 obvious.
`
`
`2 The phrase “and the knowledge of a person of ordinary skill in the art”
`does not add any additional prior art to the asserted ground. The knowledge
`of a person of ordinary skill in the art is part of the statutory test for
`patentability. The analysis under § 103 requires a determination of whether
`“the differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been obvious
`at the time the invention was made to a person having ordinary skill in the
`art to which said subject matter pertains.” 35 U.S.C. § 103(a).
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`Id. at 41 (emphasis added). The phrase “and/or” indicates that the items
`listed can be taken either together or as alternatives. This assertion suggests
`Petitioner is relying on, for example, Swanepoel ’650 alone or Swanepoel
`’650 in view of Swanepoel ’564 and Appel. Petitioner states a similar
`conclusion and rationale for its “Ground #2.” Id. at 48–49.
`Petitioner’s argument for claim 3 includes yet another variant of
`Petitioner’s “Ground#1” and “Ground #2”, asserting obviousness based on
`either of the Swanepoel references in view of “Appel, DE ‘939, Arman,
`Hoyler, and the knowledge of the existing skill in the art.” Id. at 52
`(emphasis added). Here, Petitioner uses the additive conjunction “and”
`rather than the alternative conjunction “or.”
`A petition is required to “identif[y], in writing and with particularity,
`each claim challenged, the grounds on which the challenge to each claim is
`based, and the evidence that supports the grounds for the challenge to each
`claim.” 35 U.S.C. § 312(a)(3). Our rules further address the showing
`required in a petition. The Petition must provide a statement of “[t]he
`specific statutory grounds under 35 U.S.C. 102 or 103 on which the
`challenge to the claim is based and the patents or printed publications relied
`upon for each ground.” 37 C.F.R. § 42.104(b)(2). The Petition also must
`identify “[h]ow the construed claim is unpatentable under the statutory
`grounds identified in paragraph (b)(2).” 37 C.F.R. § 42.104(b)(4).
`Notwithstanding the inconsistency in the Petition, we consider the
`grounds stated in the Petition on pages 3 and 4 and identified as the
`“Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2).” Because
`
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`Hoyler is asserted as an alternative reference (“or Hoyler”) (e.g., Pet. 32), we
`consider the asserted grounds as including the Hoyler reference.
`II. ANALYSIS
`A. Claim Construction
`When interpreting a claim, words of the claim generally are given
`their ordinary and accustomed meaning, unless it appears from the
`specification, the file history, or other evidence asserted by the parties that
`the inventor used them differently. In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994). Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. Id.
`Petitioner asserts that “for purposes of this IPR proceeding, the Board
`may assume, for purposes of argument, that the ’926 Patent claim terms ‘Izz’
`and ‘support element’ have the meaning that the Patent Owner has asserted
`that they have in the Delaware Action.” Pet. 19. Petitioner makes this
`assertion notwithstanding Petitioner’s view that “the claim construction
`proceedings in Delaware are not governed by the ‘broadest reasonable
`construction’ standard, and Petitioner does not agree that Patent Owner’s
`proposed construction of the ’926 Patent represents the broadest reasonable
`construction” of these two terms.
`Patent Owner points out that Petitioner asks the Board to apply these
`constructions “while continuing to assert that they are incorrect.” Prelim.
`Resp. 7. Patent Owner concludes that the Petition is “facially defective, and
`should be denied as to all grounds for this reason alone.” Id. at 8. We
`disagree.
`
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`Our rules require a petitioner to identify “[h]ow the challenged claim
`is to be construed.” 37 C.F.R. § 42.104(b)(3). Petitioner has proffered a
`proposed construction, although it is not, in Petitioner’s view, the broadest
`reasonable interpretation of the claims. The fact that we disagree with, or do
`not accept, Petitioner’s proffered claim construction does not establish that
`Petitioner failed to identify Petitioner’s proposal for how the claims are to be
`construed.
`Only terms which are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of
`this Decision, we determine that specific construction of the claims is not
`required. The challenged claims are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure, including the prosecution history.
`B. Prosecution History
`The Swanepoel references on which Petitioner relies, Swanepoel ’564
`and Swanepoel ’650, were relied on by the Examiner during prosecution of
`the application that matured into the ’926 patent. Ex. 1002, 291–293.
`Independent application claim 19 initially was rejected as anticipated by
`Swanepoel ’650 (id. at 291) and also anticipated by Swanepoel ’564
`(id. at 292).
`The Examiner found that Swanepoel ’650 disclosed a wiper blade
`wherein the support element has a “cross sectional profile in which there is a
`value less than 0.009 and less than 0.005, specifically of that of
`0.00014244.” Id. at 291. The Examiner also found that Swanepoel ’650
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`disclosed a “support element [that] has an essentially rectangular cross
`sectional profile (as seen in Figure 3) with an essentially constant width and
`thickness.” Id. at 292.
`With respect to Swanepoel ’564, the Examiner made similar finding.
`The Examiner stated that Swanepoel disclosed a “cross sectional profile in
`which there is a value less than 0.009 and less than 0.005, specifically that of
`0.00962 [sic].” Id.3
`The Examiner also rejected claims on the basis that they would have
`been obvious based on Swanepoel ’564 and Appel. Id. at 293–294, 350–
`352. The Examiner rejected one claim on the basis that it would have been
`obvious based on Swanepoel ’650 and Appel. Id. at 294–295.
`Following amendment of application claim 19 to add the phrase
`“wherein the support element (12) has a substantially rectangular cross
`sectional profile (40), with a substantially constant width b and a
`substantially constant thickness d.” (id. at 313), claim 19 was allowed and
`issued as patent claim 1 (id. at 385). Applicant argued that “Swanepoel
`[’650] fails to show or suggest the substantially constant width and
`thickness” of the claimed invention. Id. at 327. Applicant also argued that
`the “1N” force value used by the Examiner to calculate the cross-sectional
`profile value for Swanepoel ’650 of “0.00014244” (id. 291) was incorrect
`because “the force noted in column 3, lines 38-41 of 1 N also presses
`parallel to the Z axis – that is, parallel to the windshield.” Id. at 327.
`
`
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`3 We note that 0.00962 is not less than 0.009 or 0.005.
`
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`Applicant concluded that “[t]his is not the force that presses the wiper arm
`onto the wiper blade.” Id.
`Applicant made similar arguments against use of Swanepoel ’564 to
`reject claim 19. Id. at 328.
`Notwithstanding the amended claim language added, Applicant
`argued, “the width or the thickness, remaining constant, do not essentially
`affect the geometry and technical behavior of the spring bars.” Id. at 329.
`The Examiner stated the following “reason[] for allowance,” which is
`relevant to the challenged claim:
`None of the prior art made of record includes a wiper blade
`comprising a support element, wiper strip, wiper arm, the cross
`sectional profile in which there is a value less than 0.009 and less
`than 0.005, and in where the force is an actual contact force
`exerted on the wiper blade by the wiper arm in condition when it
`is pressed against a window. The ‘force’ of Swanepoel is the
`force to straighten the support element.
`Id. at 381.
`
`C. Grounds of Unpatentability
`1. Obviousness Based on Swanepoel ’650 in view of
`Appel, Swanepoel ’564, DE ’939, Palu, Arman, or Hoyler
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when available, secondary considerations, such as
`commercial success, long felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR, 550 U.S. at
`407 (“While the sequence of these questions might be reordered in any
`particular case, the [Graham] factors continue to define the inquiry that
`controls.”).
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. To reach this conclusion, however, it is not enough to show
`merely that the prior art includes separate references covering each separate
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally
`requires that a person of ordinary skill at the time of the invention would
`have selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention. Id. (citing KSR,
`550 U.S. at 421.
`Moreover, in determining the differences between the prior art and the
`claims, the question under 35 U.S.C. § 103 is not whether the differences
`themselves would have been obvious, but whether the claimed invention as a
`whole would have been obvious. Litton Indus. Products, Inc. v. Solid State
`Systems Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
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`claimed invention must be considered as a whole in deciding the question of
`obviousness.”); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
`1537 (Fed. Cir. 1983) (“the question under 35 U.S.C. § 103 is not whether
`the differences themselves would have been obvious. Consideration of
`differences, like each of the findings set forth in Graham, is but an aid in
`reaching the ultimate determination of whether the claimed invention as a
`whole would have been obvious.”).
`“A reference must be considered for everything it teaches by way of
`technology and is not limited to the particular invention it is describing and
`attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
`907 (Fed. Cir. 1985).
`As a factfinder, we also must be aware “of the distortion caused by
`hindsight bias and must be cautious of arguments reliant upon ex post
`reasoning.” KSR, 550 U.S. at 421. This does not deny us, however,
`“recourse to common sense” or to that which the prior art teaches. Id.
`Against this general background, we consider the references, other
`evidence, and arguments on which the parties rely.
`a. Scope and Content of the Prior Art
`i. Swanepoel ’564, Ex. 1005
`Swanepoel ’564 discloses a windshield wiper having “an elongate
`curved backbone [10]” Ex. 1005, col. 1, ll. 10–12. Wiper blade 12 is
`attached to backbone 10. Id. at col. 4, ll. 24–25. Connector 14 is at a
`position intermediate the length of backbone 10 for connecting backbone 10
`to a displacing and force-applying member, such as a spring loaded wiper
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`arm. Id. at col. 4, ll. 25–27. The general structure of the windshield wiper is
`shown in Figures 1 and 2 of Swanepoel ’564, reproduced below.
`
`
`Figures 1 and 2 of Swanepoel ’564 illustrating
`a perspective view and side elevation, respectively, of a windshield wiper.
`Swanepoel ’564 refers specifically to the cross-sectional shape of
`backbone 10. According to Swanepoel ’564, the cross section of backbone
`10 may be of any suitable shape. Id. at col. 4, ll. 37–39. Swanepoel ’564
`also refers specifically to the width and thickness of backbone 10.
`Swanepoel ’564 discloses that “[m]ost importantly to the invention,”
`however, the thickness and width of backbone 10 and its radius of curvature
`“are matched at every point along the length of the backbone so that the
`backbone will provide a force per unit length distribution in a longitudinal
`direction which increases towards both tips of the windscreen wiper when
`the windscreen wiper is, in use.” Id. at col. 4, ll. 40–46 (emphasis added).
`The “force per unit length” provided by backbone 10 “is equal in magnitude
`to the down force required to straighten the backbone,” which must be
`adequate to render the wiper blade 12 fully functional. Id. at col. 4, ll. 48–
`52. Thus, according to Petitioner, “the force F disclosed by Swanepoel ‘564
`is the same contact force Fwf that, in the ’926 Patent, presses the wiper blade
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`against the window.” Pet. 22. We agree with Petitioner’s understanding of
`the Swanepoel ’564 disclosure on this point.
`Swanepoel ’564 also discloses that “the width and thickness will
`determine the rigidity of the wiper and if the backbone is too thin at its tips it
`will be vulnerable to mechanical damage.” Ex. 1005, col. 3, ll. 22–24.
`Swanepoel ’564 discloses a number of equations for calculating the
`various forces on backbone 10. None of the disclosed equations are
`identical to the equation recited in claim 1.
`ii. Swanepoel ’650, Ex. 1006
`According to Petitioner, the disclosure of Swanepoel ’650 is similar to
`Swanepoel ’564. Pet. 24 (“Like the ‘Swanepoel ’564 patent, the Swanepoel
`’650 patent also discloses specific values of material and physical
`parameters pertinent to the challenged claims.”).
`iii. Other References
`Petitioner asserts the additional references on which it relies disclose
`support elements of constant width and thickness. Id. Petitioner asserts
`“support elements of substantially constant width and thickness are also
`taught by the secondary references, Appel, DE ’939, Palu, Arman, and
`Hoyler, each of which teaches that the support element may be of
`substantially constant width and thickness over at least a portion of its
`length.” Id. at 40.
`
`b. Level of Ordinary Skill
`Petitioner asserts the references cited in the Petition reflect the level of
`ordinary skill in the relevant technology. Pet 31–32. Petitioner also asserts
`a person of ordinary skill would have had “education and experience in
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`mechanical engineering.” Id. at 32. Petitioner does not cite any evidence or
`authority to support its asserted level of ordinary skill. We note, however,
`that Dr. Davis repeats substantially verbatim Petitioners asserted level of
`ordinary skill. Ex. 1015 ¶¶ 15, 16.
`Patent Owner does not propose a level of ordinary skill.
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001) (citing Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d
`1308, 1324 (Fed. Cir. 1999). The absence of an express finding about the
`level of skill in the art “does not give rise to reversible error ‘where the prior
`art itself reflects an appropriate level and a need for testimony is not
`shown.’” Id. (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp.,
`755 F.2d 158, 163 (Fed. Cir. 1985))
`For purposes of this Decision we determine that the prior art itself
`reflects an appropriate skill level.
`c. Discussion
`Petitioner cites to the testimony of Dr. Davis to establish that
`Swanepoel ’564 and Swanepoel ’650 each disclose a support element with a
`cross sectional profile that satisfies the equation recited in claim 1 that:
`
`
`and also is less than 0.0005, as recited in claim 2. E.g., Pet. 36–37 (citing
`“Ex. 1015 at 17–19”). Dr. Davis testifies that he “performed certain
`exemplary calculations using the disclosures of the Swanepoel ’564 patent.”
`Ex. 1015 ¶ 28. Dr. Davis concludes that, using the wiper blade dimensions
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`found in Example 1 of Swanepoel ’564, “results in the mathematical relation
`claimed in Claims 1–3,” with a result of the equation in claim being
`“approximately equal to 0.002 radians.” Id. ¶¶ 29, 37. This clearly is less
`than the 0.009 radians recited in claims 1 and 3, and the 0.005 radians
`recited in claim 2. Dr. Davis states a similar opinion regarding Example 2 in
`Swanepoel ’564. Id. ¶ 46.
`Regarding Swanepoel ’650, Dr. Davis performed similar calculations
`and determined, in his opinion, that using the wiper blade dimensions found
`in Swanepoel ’650 results in the mathematical relation claimed in Claims 1–
`3, with a result of the equation in claim being “approximately equal to 0.002
`radians. Id. ¶¶ 48–56.
`Patent Owner asserts that “the Petition fails to show that the prior art
`discloses wiper blades having the claimed mathematical relationship.”
`Prelim. Resp. 14. According to Patent Owner, Petitioner “applies equations
`found not in the claims but in the specification.” Id. We disagree, based on
`the record before us.
`First, we note Dr. Davis stated that: “[t]he equation given at Column
`6, Line 35 of the ‘926 Patent contains a typographical error. The correct
`equation includes the square of the term (L/2 – s).” Ex. 1015 ¶ 30. Using
`this corrected equation, with respect to Swanepoel ’564, Dr. Davis then
`stated that “[f]or uniform loading and constant width and thickness,
`integration of the [corrected] equation results in the deflection angle
`relationship claimed in the ‘926 Patent.” Id. (emphasis added). In
`Dr. Davis’ calculations, he solved an equation for the lateral deflection angle
`γ. Id. ¶¶ 36–37. As discussed above, however, the ’926 patent discloses:
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`the invention is based on the knowledge that a favorable wiping
`quality, particularly due to rattle prevention, is achieved if the
`angle γ does not exceed the value 0.5° (=0.009 rad) and in
`particular, 0.3° (=0.005 rad). As a result, a simple relation can
`be deduced between the contact force and the geometric
`dimensions of the wiper blade, according to which
`
`in particular <0.005.
`
`
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`Ex. 1001, col. 6, ll. 46–57 (emphasis added). Dr. Davis considered the
`moment of inertia I (Ex. 1015 ¶ 31), length of the support element L
`(id. at 33), the elasticity modulus of the support element E (id. at 34), and the
`downward force Fwf (id. at 35). Thus, in reaching his opinion, Dr. Davis
`considered each factor in the equation stated in the claims. In determining
`that the angle γ was approximately 0.0002 radians (id. ¶ 37), Dr. Davis also
`determined that the references disclosed parameters that met the claimed
`relationship because, according to the Specification,
`
`γ =
`
`.
`
`Ex. 1001 at col. 6, l. 43.
`Patent Owner also asserts that in the calculations for Swanepoel ’650,
`Dr. Davis relies on “the other Swanepoel reference” for the force against the
`windshield, Fwf. Prelim. Resp. at 15.
`Dr. Davis testifies that “[t]ypical values for a force F= 6.3 N (as
`disclosed in Swanepoel ‘564, Column 6, Line 66; see also Swanepoel ‘564,
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`Column 7, Line 55 and Column 8, Line 35) may be used” Ex. 1015 ¶ 51
`(emphasis added). On the record before us, Dr. Davis supports his testimony
`about a typical force value with the data on which he relies. Id. Moreover,
`the asserted ground of unpatentability is obviousness based on Swanepoel
`’650 in view of Appel, Swanepoel ’564, DE ’939, Palu, Arman or Hoyler.
`Thus, Dr. Davis’ reliance on the combined disclosures in each of the
`Swanepoel references is consistent with the asserted ground.
`i. Claim 3
`Claim 3 recites that support element (12) is comprised of at least two
`individual bars (42, 44). Concerning Claim 3, Petitioner asserts that Appel,
`DE ’939, Arman and Hoyler each disclose a support element having two
`individual bars as recited in claim 3. Pet. 51–52. We disagree. The
`evidence cited does not support Petitioner’s position.
`With reference to Figures 4–6, Appel discloses a spring backbone
`support element 36 of the type illustrated in Figures 2a–2c adapted to carry
`rubber wiping blade 37. Ex. 1008, col. 3, ll. 63–67. Backbone element 36
`includes slot 38 for accommodating flanged rib 40 of the rubber blade. Id. at
`col. 3, ll. 66–68. The slot thus creates a C-shaped cross-section for
`backb
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