Paper No. 17
`Filed: May 24, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`COSTCO WHOLESALE CORPORATION
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner,
`
`
`
`Case IPR2016-00035
`Patent 6,836,926 B1
`
`
`
`PETITIONER’S REQUEST FOR REHEARING OF
`DECISION DENYING INSTITUTION OF INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,836,926
`
`
`
`
`
`
`
`
`
`
`
`
`Filed: May 24, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`COSTCO WHOLESALE CORPORATION
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner,
`
`
`
`Case IPR2016-00035
`Patent 6,836,926 B1
`
`
`
`PETITIONER’S REQUEST FOR REHEARING OF
`DECISION DENYING INSTITUTION OF INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,836,926
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`Page
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`STATEMENT OF RELIEF SOUGHT ........................................................................ 1
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`REASONS FOR THE RELIEF REQUESTED .......................................................... 1
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`A.
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`B.
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`C.
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`The “Support Element” Limitations of ’926 Patent Claims 1-3 ............. 2
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`The “Two Individual Bars” Limitation of ’926 Patent Claim 3 ............. 8
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`Institutional and Policy Decisions Support Rehearing
`and Institution of Inter Partes Review .................................................. 10
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`CONCLUSION .......................................................................................................... 11
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`
`
`
`
`i
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`
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`TABLE OF AUTHORITIES
`
`
`CASES
`Costco Wholesale Corp. v. Robert Bosch LLC,
`IPR2016-00036, Paper #16 .................................................................................. 8
`
`Page(s)
`
`Dystar Textilfarben GmbH v. C.H. Patrick & Co.,
`464 F.3d 1356 (Fed. Cir. 2006) ............................................................................ 6
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................. 5
`
`Robert Bosch LLC v. Alberee Products, Inc.,
`No. 12-574 (D. Del.) (the “Delaware Action”) ............................................ 10, 11
`
`Virtualagility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2015) .......................................................................... 10
`
`
`
`STATUTES AND RULES
`
`35 U.S.C. § 103(a) (2006) ......................................................................................... 8
`
`Federal Rule of Civil Procedure 37(b)(2) ................................................................ 11
`
`Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) ..... 10
`
`ii
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
`
`
`Costco Wholesale Corporation (“Petitioner”) respectfully requests rehearing of
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`the Board’s decision dated April 25, 2016 (Paper #16 [hereinafter the “Decision”]),
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`which denied institution of Inter Partes Review of Claims 1-3 of U.S. Patent No.
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`6,836,926 (the “’926 Patent”; Ex. 1001).
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`STATEMENT OF RELIEF SOUGHT
`
`Petitioner requests that the Board institute Inter Partes Review of Claims 1, 2,
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`and 3 of the ’926 Patent and consolidate this case with IPR2016-00034 and IPR2016-
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`00036, which involve closely related subject matter.
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`REASONS FOR THE RELIEF REQUESTED
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`As to each of the challenged claims, the Board appears to have overlooked or
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`misapprehended Petitioner’s evidence showing the desirability, and thus the obvi-
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`ousness, of providing a wiper support of substantially constant cross sectional profile
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`with the stiffness that U.S. Patent No. 5,485,650 to Swanepoel (“Swanepoel ’650”;
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`Ex. 1006) and U.S. Patent No. 5,325,564 (“Swanepoel ’564”; Ex. 1005) both teach is
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`desirable in a flat spring wiper support of varying cross sectional profile.
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`As to challenged Claim 3, the Board appears to have overlooked or misappre-
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`hended the disclosure of German Patent No. 1,028,896 to Hoyler (“Hoyler”; Exs.
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`1013-1014). That reference clearly and explicitly discloses a windshield wiper sup-
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`port comprising two “longitudinal springs 5 . . . inserted in lateral slots, held together
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`at the ends of the bar by the clamps 6.” Ex. 1013, Fig. 1; Ex. 1014 at p. 1 col. 2.
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`1
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`A. The “Support Element” Limitations of ’926 Patent Claims 1-3
`As noted in the Decision, the ’926 Patent discloses a wiper assembly that
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`comprises a pre-curved support element (12). Decision at 3. Swanepoel ’650 also
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`discloses a wiper assembly that comprises a pre-curved support element (12). Figure
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`1 of Swanepoel ’650 and Figure 1 of the ’926 Patent are reproduced below:
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` Swanepoel ’650 Fig. 1
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` ’926 Patent Fig. 1
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`In the ’926 Patent, the support element (12) has a width (b) and thickness (d)
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`as shown in Figure 4, below.
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`The Swanepoel ’650 support element is described as “having a suitably
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`varying transverse cross sectional profile.” Ex. 1006 col. 1, lines 25-26 (emphasis
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`added). The challenged ’926 Patent claims 1-3 recite a support element (i) having a
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`substantially constant width and thickness, and (ii) having a stiffness such that the
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`2
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`deflection angle gamma, illustrated below, does not exceed .009 radians (claim 1) or
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`.005 radians (claim 2) when the structure is pulled or pushed by a wiper arm in a
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`direction parallel to the windshield, an axis denoted “Z” in the figure below:
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`Claim 1 of the ’926 Patent reads (Ex.1001 at col. 10; emphasis added):
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`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 F wf 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 [s]-axis, 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.
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`As noted in the Decision, claims 1-3 of the ’926 Patent were allowed after the
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`Applicant had argued that Swanepoel ’650 and Swanepoel ’564 purportedly did not
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`disclose any support element having a cross sectional profile whose resistance to lat-
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`eral deflection satisfied the equation recited in those claims. Decision at 11-13. The
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`3
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`Decision goes on to find that Petitioner has adequately showed, through the Declara-
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`tion of Dr. Gregory W. Davis (“Davis Decl.”; Ex. 1015), that under the Patent Own-
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`er’s construction of the challenged claims (see Decision at 10-11), Swanepoel ’650
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`and Swanepoel ’564 both do, in fact, disclose support elements having a cross sec-
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`tional profile whose stiffness satisfies the equations recited in ‘926 Patent claims 1
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`and 2. Decision at 18-19 (citing Davis Decl. ¶¶ 28-29, 37, 46, 48-56).
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`The Board nonetheless declined to institute Inter Partes Review on the basis
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`that Petitioner did not present an adequate rationale for applying the stiffness teach-
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`ings of Swanepoel ’650 and Swanepoel ’564 to prior art windshield wiper supports
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`having a substantially constant width and thickness. Decision at 23-25. The Board
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`appears to have overlooked Petitioner’s discussion of U.S. Patent 3,881,214 to Palu
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`(“Palu,” Ex. 1011) on pages 40 and 48 of the Petition. Palu discloses a wiper support
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`element (1) having a substantially constant cross section as shown below:
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`Referring to the support element (1) depicted above, Palu states: “At the same
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`time, since the cross section of said supporting structure is substantially constant, the
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`ends of the supporting structure can withstand very well the forces which tend to flect
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`them laterally.” Ex. 1011, 4:52-55 (emphasis added), quoted in Pet. at 40, 48.
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`4
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`“Thus,” Palu continues, “the windshield wiper blade of the present invention pre-
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`sents, with respect to the prior art windshield wiper blades, the advantage of with-
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`standing considerably higher lateral loads, since its supporting structure 1 has a sub-
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`stantially constant cross section.” Id. at 5:8-12 (emphasis added), quoted in Pet. at
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`40, 48.
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`From Palu, it was known that a wiper support element of substantially constant
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`cross section, as shown in Palu Figure 1 above, had “the advantage of withstanding
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`considerably higher lateral loads.” Swanepoel ’650 and Swanepoel ’564 taught a par-
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`ticular degree of resistance to lateral loads applied to the tip of a wiper support ele-
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`ment, namely, a deflection of “approximately equal to 0.002 radians.” Decision at 19
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`(quoting Davis Decl. ¶¶ 48-56). The challenged claims thus easily fall within the le-
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`gal prohibition of patents for subject matter that involves “the mere application of a
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`known technique to a piece of prior art ready for the improvement.” KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 417 (2007).
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`Page 23 of the Decision quotes part of the first paragraph on page 41 of the Pe-
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`tition but omits the first word, “Accordingly.” This incomplete quotation also ap-
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`pears in the Patent Owner’s Preliminary Response rather than in the Petition itself.
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`Patent Owner’s Preliminary Response, Paper 15 at 18. The Patent Owner’s omission
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`of the word “accordingly” from its purported quotation of page 41 of the Petition was
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`misleading, for the omitted word “Accordingly” connected the first paragraph on Pe-
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`5
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`tition page 41 (and the similar paragraph appearing at Petition pages 48-49) with the
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`immediately preceding discussion of Palu and numerous other prior art wiper support
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`elements having substantially constant cross sectional profiles. See Pet. at 40 (citing
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`Appel [Ex. 1008] at 2:23-37, 3:9-36, Fig. 1; DE ’939 [Ex. 1010] at 6, Figs. 1, 3; Palu
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`[Ex. 1011] at 2:8-21, 3:31-39, 4:63-5:22, Figs. 1-3, 5, 6; Arman [Ex. 1012] at 2:10-
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`29, 2:46-62, Figs. 1-3, 5; Hoyler [Exs. 1013, 1014] at 2, Fig. 1).
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`In the terms of the obviousness rationale from KSR quoted above, Swanepoel
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`’650 and Swanepoel ’564 disclose a “known technique” (i.e., providing a flat spring
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`wiper support element with a degree of stiffness that satisfies the equation recited in
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`the challenged claims); and Appel (Ex. 1008), DE ’939 (Exs. 1009, 1010), Palu (Ex.
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`1011), Arman (Ex. 1012), and Hoyler (Exs. 1013, 1014) each disclose “a piece of
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`prior art ready for the improvement” (i.e., flat spring wiper elements having both a
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`substantially rectangular cross sectional profile and a substantially constant width
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`and thickness). 550 U.S. at 417.
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`As stated in Dystar Textilfarben GmbH v. C.H. Patrick & Co., 464 F.3d 1356
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`(Fed. Cir. 2006), “we have repeatedly held that an implicit motivation to combine ex-
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`ists not only when a suggestion may be gleaned from the prior art as a whole, but
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`when the ‘improvement’ is technology-independent and the combination of refer-
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`ences results in a product or process that is more desirable, for example because it is
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`stronger . . . .” Id. at 1368 (emphasis added). So here, to provide a prior art flat
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`6
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`spring wiper support element with the degree of stiffness that Swanepoel ’650 and
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`Swanepoel ’564 teach is desirable would be to make the prior art support element
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`more desirable.
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`Nothing in the specification of the ’926 Patent states that a wiper support hav-
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`ing a substantially constant cross sectional profile is any more or less inventive than
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`a wiper support element having a varying cross sectional profile. The prosecution
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`history of the ’926 Patent shows, to the contrary, that the Examiner gave no patenta-
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`ble weight to the Applicant’s change of form from a varying to a substantially con-
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`stant cross sectional profile, but allowed the challenged claims on the basis of a mis-
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`apprehension that Swanepoel ’650 and Swanepoel ‘564 purportedly did not disclose
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`wiper support elements having the strength or resistance to lateral deflection that was
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`implied by the equation recited in those claims. See Decision at 13 (quoting Examin-
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`er stated reason for allowance, which did not mention cross sectional profile).
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`Having concluded that Petitioner’s evidence is sufficient to traverse the Exam-
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`iner’s stated reason for allowing the challenged claims, i.e., that neither Swanepoel
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`’650 nor Swanepoel ’564 discloses “an actual contact force exerted on the wiper
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`blade by the wiper arm in condition when it is pressed against a window” (Ex. 1002
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`at p. 381 [emphasis in original], quoted in Decision at 13), Petitioner respectfully
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`submits that the interests of justice plainly call for the Board to grant rehearing and
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`review whether the challenged claims were properly allowed.
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`7
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`B.
`The “Two Individual Bars” Limitation of ’926 Patent Claim 3
`In IPR2016-00036, the Board instituted Inter Partes Review with respect to
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`claims 13, 17, and 18 of U.S. Patent No. 6,944,905 (the “’905 Patent”) as unpatenta-
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`ble under 35 U.S.C. § 103(a) (2006) over GB 2 106 775 A (“Prohaska”) in view of
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`Hoyler (Exs. 1013, 1014). The institution decision in IPR2016-00036 states in part:
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`Hoyler discloses a windshield wiper shown generally in the several im-
`ages that make up Figure 1, which is reproduced below.
`
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`As shown in Figure 1, rubber wiper blade 1 with a back part 2 is con-
`nected via a strip 3 with wiper lip 4. Longitudinal springs 5 are inserted
`in lateral slots in back part 4, held together at the ends by clamps 6.
`Rubber blade 1 may be adhered or vulcanized to longitudinal spring 5.
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`Costco Wholesale Corp. v. Robert Bosch LLC, IPR2016-00036, Paper #16, at 7-8
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`(emphasis added).
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`8
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
`
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`In this IPR2016-00035, however, the Board rejected Petitioner’s contention
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`that the Hoyler reference “discloses a support element of two bars, in which the
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`widths of the bars add to up to a total width. See, e.g., Ex. 1014 at 2, Fig. 1.” Pet. at
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`52. The Decision states that “[t]he evidence does not support petitioner’s argument,”
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`but it does not cite or quote the part of Hoyler cited and relied on by Petitioner.
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`Figure 1 of Hoyler is discussed on page 2, column 2, of Exhibit 1014 (a certi-
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`fied English translation of Hoyler) as stated on page 52 of the Petition. The part of
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`Hoyler cited on page 52 is the same one that the Board quoted in its institution deci-
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`sion in IPR2016-00036 quoted above, which clearly refers to a plurality of longitudi-
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`nal “springs 5” which are “held together” by “clamps 6.” When introducing Hoyler,
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`the Petition similarly explained that “[t]he wiper bar includes a support element
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`composed of two longitudinal springs 5, shown for example in cross-section in Fig-
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`ure 1.” Pet. at 29 (emphasis added). The Petition then showed Figure 1 of Hoyler and
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`quoted the following text:
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`In Fig. 1 1 represents the rubber blade, with its profile generally being
`discernible from the cross-section C-C. A strong back part 2 is connect-
`ed via a strip 3 with the actual wiper lip 4. The longitudinal springs 5 are
`inserted in lateral slots, held together at the ends of the bar by the
`clamps 6.
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`Pet. at 29-30. These passages were the only features of Hoyler discussed in the Peti-
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`tion’s overview of the prior art. See id. The Petition then cited these same passages in
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`9
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`its discussion of Claim 3, which claims inter alia a support element comprised of at
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`least two individual bars. See id. at 52. As can also be seen in Figure 1, and as ex-
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`plained in the Petition, the two longitudinal bars add up to a total width. See id.
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`In view of Hoyler’s explicit teaching of two “springs 5” that are “held together
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`at the ends by clamps 6,” Petitioner respectfully submits that the Board misappre-
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`hended Hoyler and should grant rehearing and institute Inter Partes Review as to
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`claim 3.
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`C.
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`Institutional and Policy Reasons Support
`Rehearing and Institution of Inter Partes Review
`Institutional and policy reasons also strongly support rehearing in this case. A
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`major purpose of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125
`
`Stat. 284 (2011), was to improve the adjudication of patentability questions by hav-
`
`ing expert administrative bodies, rather than lay juries, decide whether claims in is-
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`sued patents satisfied statutory conditions for patentability. Cf. Virtualagility Inc. v.
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`Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2015) (reversing denial of stay pend-
`
`ing outcome of PTAB proceeding). The ’926 Patent is being asserted against peti-
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`tioner in Robert Bosch LLC v. Alberee Products, Inc., No. 12-574 (D. Del.) (the
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`“Delaware Action”). Although Petitioner is confident of prevailing in the Delaware
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`Action, the ability to present an invalidity defense to a jury is not a substitute for hav-
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`ing this expert Board consider the patentability questions that the Petition raises.
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`There is also an important consideration of judicial economy that should be
`10
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`taken into account. The prior art and unpatentability rationales here are very similar
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`to the prior art and unpatentability rationales in IPR2016-00034 and IPR2016-00036,
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`(collectively, “Related Cases”). Petitioner and the Patent Owner are going to be
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`briefing and arguing the Related Cases, involving substantially similar claimed sub-
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`ject matter, references, and arguments, no matter what happens in this case. But if re-
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`hearing is not granted, Petitioner and the Patent owner will be substantially duplicat-
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`ing the work that the Related Cases require by litigating the validity of claims 1, 2,
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`and 3 of the ’926 Patent in the context of the Delaware Action.1
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`CONCLUSION
`For the reasons set forth above, the Board should grant rehearing, institute In-
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`ter Partes Review of claims 1-3 of the ’926 Patent, and consolidate this case for trial
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`with IPR2016-00034 and IPR 2016-00036.
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`1 On March 17, 2016, the District Court hearing the Delaware Action stayed proceed-
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`ings pending determination of a motion by Petitioner to dismiss the Second Amended
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`Complaint in that action as a discovery sanction under Federal Rule of Civil Proce-
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`dure 37(b)(2). The Patent Owner has vowed to appeal any discovery sanction that
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`the Delaware district court may impose, and there is no imminent prospect of the
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`Delaware Action being finally terminated on grounds that will render moot the ques-
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`tions of patentability sought to be raised in this case.
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`11
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`Dated: May 24, 2016
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`70206912
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`Respectfully submitted,
`
`/Richard M. Koehl/
`Richard M. Koehl
`Registration No. 54,231
`
`
`
`HUGHES HUBBARD & REED LLP
`One Battery Park Plaza, 17th Floor
`New York, New York 10004
`Telephone: (212) 837-6062
`richard.koehl@hugheshubbard.com
`Attorney for Petitioner
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`12
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00035
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 24th day of May, 2016, copies of the foregoing
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`Request For Rehearing of Decision Denying Institution of Inter Partes Review of
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`U.S. Patent No. 6,836,926 have been served in their entirety by email on the attor-
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`neys of record for Patent Owner:
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` Patrick R. Colsher (patrick.colsher@shearman.com)
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` Mark A. Hannemann (mark.hannemann@shearman.com)
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` Enrique W. Iturralde (enrique.iturralde@shearman.com)
`
`
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`Respectfully submitted,
`
`/Richard M. Koehl/
`Richard M. Koehl
`Registration No. 54,231
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`
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`Dated: May 24, 2016
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`1
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