Paper 23
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: August 12, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`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 Request for Rehearing
`37 C.F.R. § 42.71
`
`

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`IPR2016-00035
`Patent 6,836,926 B1
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`I.
`INTRODUCTION
`Costco Wholesale Corporation (“Petitioner”) timely filed a Request
`for Rehearing (Paper 17, (“Req. Reh’g.”)) requesting rehearing of our
`decision (Paper 16 (“Decision” or “DI”)) denying institution of an inter
`partes review of claims 1–3 in U.S. Patent No. 6,836,926 B1 (Ex. 1001, “the
`’926 patent”).
`Petitioner raises two issues on which Petitioner asserts the Board
`abused its discretion. One concerns the claim limitation in independent
`claim 1of a support element having “a substantially rectangular cross
`sectional profile,” with “a substantially constant width” and “a substantially
`constant thickness.” The other issue concerns the claim limitation in claim
`3, dependent on claim 1, of a support element “comprised of at least two
`individual bars” and wherein the widths of the individual bars add up to a
`total width.
`For the reasons stated below, we deny Petitioner’s Request.
`
`II.
`ANALYSIS
`When rehearing a decision on institution, the Board reviews the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may arise if the decision is based on an erroneous interpretation of
`law, if a factual finding is not supported by substantial evidence, or if an
`unreasonable judgment is made in weighing relevant factors. Star Fruits
`S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d
`1305, 1315–16 (Fed. Cir. 2000).
`
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`The burdens and requirements of a request for rehearing are stated in
`37 C.F.R. § 42.71(d):
`(d) Rehearing. . . . The burden of showing a decision should be
`modified lies with the party challenging the decision. The request
`must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter
`was previously addressed in a motion, an opposition, or a reply.
`A. SUPPORT ELEMENT HAVING A
`SUBSTANTIALLY RECTANGULAR CROSS SECTIONAL PROFILE
`Petitioner asserts an abuse of discretion in the determination that
`“Petitioner did not present an adequate rationale for applying the stiffness
`teachings of Swanepoel ’650 and Swanepoel ’564 to prior art windshield
`wiper supports having a substantially constant width and thickness,” as
`disclosed in Palu. Req. Reh’g. 4 (citing Decision at 23-25). It is Petitioner’s
`position that the Decision “overlooked Petitioner’s discussion of U.S. Patent
`3,881,214 to Palu (Ex. 1011) on pages 40 and 48 of the Petition.”1 Id.
`Petitioner points to the disclosure in Palu, but does not cite where in its
`Petition it provided an evidence-based rationale, in accordance with
`controlling law and precedent, that it would have been obvious to a person
`of ordinary skill to combine Palu’s disclosure with the other cited references.
`Our Decision to Institute discussed Petitioner’s assertion that claim 1
`would have been obvious based on Swanepoel ’650 (Ex. 1006), in view of
`
`
`1 The discussion of Palu on page 48 of the Petition (in the context of
`Petitioner’s Ground 2) is a verbatim repetition of the discussion of Palu on
`page 40 of the Petition (in the context of Petitioner’s Ground 1). The
`Decision Denying Institution, and this Decision denying Petitioner’s request
`for rehearing, refer to the discussion on page 40 of the Petition.
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`Patent 6,836,926 B1
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`Appel (Ex. 1008), Swanepoel ’564 (Ex. 1005), DE ’939 (Exs. 1009, 1010),
`Palu (Ex. 1011), Arman (Ex. 1012), or Hoyler (Exs. 1013, 1014). DI 13-25.
`In the Petition, Petitioner argued:
`The parameterization method taught in Swanepoel ’650 could be
`applied to support elements of constant width and thickness,
`which are constants as a function of coordinate. Moreover,
`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.
`Pet. 40 (emphases added, citations omitted).
`Independent claim 1, however, is not limited to a substantially
`constant width and thickness “over at least a portion of its length,” as
`Petitioner characterized the prior art. Claim 1 recites that the support
`element has a substantially rectangular cross sectional profile, with a
`substantially constant width and a substantially constant thickness.
`Petitioner singled out Palu from the list of secondary references to
`assert:
`Palu (Ex. 1011) teaches: “At the same time, since the cross
`section of said supporting structure is substantially constant, the
`ends of the supporting structure can withstand very well the
`forces which tend to flect them laterally.” Ex. 1011, 4:52-55.
`“Thus, the windshield wiper blade” of Palu “presents . . . the
`advantage of withstanding considerably higher lateral loads,
`since its supporting structure 1 has a substantially constant cross
`section.”
`Id. (quoting Ex. 1011, 4:52-55.) Petitioner’s characterization of Palu refers
`to a substantially constant cross section. It does not also assert, however, a
`
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`substantially constant width and a substantially constant thickness, as recited
`in claim 1.
`Notwithstanding this distinction between the argued disclosure in Palu
`and the claimed elements and limitations, the Decision did not overlook
`Petitioner’s discussion of Palu on pages 40 and 48 of the Petition. In
`discussing the scope and content of the prior art, we discussed collectively
`what Petitioner referred to as the “secondary references.”
`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.”
`DI 17 (quoting Pet. 40) (emphases added). Thus, we did not overlook
`Petitioner’s reliance on Palu. Nor did we misapprehend Palu’s disclosure.
`1. RATIONALE
`Our Decision was based on the determination that, notwithstanding
`the disclosure in Palu and the other references, Petitioner did not provide “a
`rationale based on persuasive evidence or argument for why a person of
`ordinary skill would have chosen certain features from the cited references,
`omitted other features, and combined the selected features to yield the
`invention in the challenged claims.” DI 25 (citing ActiveVideo Networks,
`Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327–1328 (Fed. Cir. 2012).
`Petitioner does not take issue with the determination that there was not a
`persuasive rationale for the proposed combination of references. Petitioner
`merely asserts we overlooked or misapprehended the disclosure of Palu.
`Req. Reh’g. 4 (“The Board appears to have overlooked Petitioner’s
`
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`discussion of U.S. Patent 3,881,214 to Palu (“Palu,” Ex. 1011) on pages 40
`and 48 of the Petition.”).
`The Decision stated Petitioner’s rationale for the asserted combination
`of the references, which we repeat below:
`[Accordingly,]2 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 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.
`DI 23–24 (quoting Pet. 41). This one sentence is the entirety of the asserted
`rationale. As unsupported attorney argument, we did not find the asserted
`rationale persuasive. Id. Moreover, without citing supporting evidence, the
`asserted rationale argued that a person of ordinary skill would understand
`
`
`
`2 Petitioner asserts that omitting the word “Accordingly” in the Decision as
`the first word of the quoted sentence was “misleading” because the omitted
`word connected the immediately preceding paragraph discussing “Palu and
`numerous other prior art wiper support elements having substantially
`constant cross sectional profiles.” Req. Reh’g. 5–6. We disagree. The word
`“Accordingly,” was the only word omitted from the quoted sentence. Its
`role in connecting two concepts was not overlooked. As discussed above,
`our Decision specifically acknowledged Petitioner’s argument that Palu and
`the other secondary references disclosed “that the support element may be of
`substantially constant width and thickness over at least a portion of its
`length.” DI 17 (citing Pet. 40).
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`that both “lateral rigidity” and “contact force” parameters “could be applied
`to the problem at hand.” Pet. 41. Even if we were to accept this conclusory
`argument as probative evidence, which we do not, Petitioner provides
`neither argument nor evidence as to why a person of ordinary skill and
`creativity would balance the two parameters of “lateral rigidity” and
`“contact force” exerted on the wiper blade by the wiper arm when it is
`pressed against a window to yield a support element that has a substantially
`rectangular cross sectional profile, with a substantially constant width and a
`substantially constant thickness, as recited in independent claim 1.
`The Decision acknowledged that we apply “an expansive and flexible
`approach” to the question of obviousness. DI 14 (quoting KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 415 (2007)). We recognize that a motivation to
`combine references may be found explicitly or implicitly in market forces;
`design incentives; the “interrelated teachings of multiple patents”; “any need
`or problem known in the field of endeavor at the time of invention and
`addressed by the patent”; and the background knowledge, creativity, and
`common sense of the person of ordinary skill. Plantronics, Inc. v. Aliph,
`Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (quoting Perfect Web Techs., Inc.
`v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed.Cir.2009) (quoting KSR, 550
`U.S. at 418–21)). Conclusions with respect to obviousness, however, must
`find support in the record. Plantronics, 724 F. 3d at 1354.
`The Decision determined that, based on the argument and evidence
`presented, the rationale or reasoning was not persuasive to establish that
`claim 1, as a whole, would have been obvious. We are not persuaded that
`we abused our discretion in reaching this determination.
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`2. STATUTORY REQUIREMENTS
`We also stated that the rationale provided by Petitioner did not
`address the statutory requirements of establishing that the challenged claims
`would have been obvious. Id. at 24–25.
`Petitioner argued that a person of ordinary skill “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.” DI 24 (citing Pet 41, 48–49, 50, 52). As stated in the Decision,
`the applicable statute, however, requires evidence that “‘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 relevant
`technology.” Id. (citing 35 U.S.C. § 103(a) (emphasis added)). The
`Decision stated “[a]n understanding that something ‘could be applied to the
`problem at hand’ does not establish that it would have been obvious to do so
`at the time the ’926 invention was made.” Id. at 25. Thus, we concluded
`that Petitioner failed to provide persuasive evidence that the challenged
`claims are unpatentable under the statutory grounds asserted. Id. See Black
`& Decker, Inc. v. Positec USA, Inc., No. 2015-1646, 2016 WL 2898012, at
`*6 (Fed. Cir. May 18, 2016) (stating what one of skill in the art “would have
`known” or “could have” done to meet a claim limitation is not sufficient to
`establish that a claimed invention would have been obvious).
`
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`B. A SUPPORT ELEMENT COMPRISED OF AT LEAST TWO INDIVIDUAL BARS
`With respect to dependent claim 3, Petitioner also asserts the Decision
`overlooked or misapprehended “Hoyler’s explicit teaching of two ‘springs 5’
`that are ‘held together at the ends by clamps 6.’” Req. Reh’g. 10.
`Because claim 3 is dependent on claim 1, and because Hoyler does
`not compensate for the lack of rationale in establishing a reasonable
`likelihood that claim 1 would have been obvious, as discussed above,
`Petitioner’s challenge to claim 3 also fails for the reasons discussed above.
`The Petition stated that the wiper bar in Hoyler “includes a support
`element composed of two longitudinal springs 5,” with a reproduction of
`Hoyler’s Figure 1. Pet. 29.
`The entirety of Petitioner’s argument in its Petition concerning Hoyler
`
`is:
`
`The use of at least two individual bars was known in the
`state of the art and represented nothing more than a routine
`design choice found for example in Appel, DE ’939, Arman, and
`Hoyler. See, e.g., Ex. 1007, 3:69-73, Fig. 6; Ex. 1010 at 6, Figs.
`1, 3; Ex. 1012, Figs. 5, 6; Ex. 1014 at 2, Fig. 1.
`Pet. 52. Petitioner also states in its claim chart for claim 3 that “Hoyler also
`discloses a support element formed of two bars, in which the widths of the
`individual bars add up to a total width.” Pet. 52 (citing Ex. 1014 at 2, Fig.
`1.)
`
`The Decision determined that the evidence did not support
`Petitioner’s argument. DI 22–23. As stated in the Decision, Hoyler
`discloses:
`
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`The disadvantages of the wiper bars of prior art are avoided
`according to the invention, if the wiper bar of the type mentioned
`at the outset comprises . . . a reinforcement produced in one piece
`with it or being adhered thereto for an insertion and latching
`fastening at the wiper arm.
`DI 23 (quoting Ex. 1014, 2). The Decision stated, “Petitioner has not
`pointed us to persuasive evidence in Hoyler that supports Petitioner’s
`interpretation of this reference.” Id. Petitioner does not address or attribute
`an abuse of discretion to the statement in the Decision that Hoyler discloses
`a one-piece reinforcement of the wiper blade. Petitioner’s general citation to
`page 2 and Figure 1 of the reference does not point us to evidence that
`supports Petitioner’s argument.
`The Request for Rehearing similarly has not directed us to any
`persuasive argument, persuasive testimony, or other persuasive evidence in
`the Petition that the two springs are a support element comprised of at least
`two individual bars and wherein widths of the individual bars add up to a
`total width, as recited in claim 3.
`Based on the analysis above, Petitioner’s Request for Rehearing does
`not establish an abuse of discretion with respect to claim 3.
`3. OTHER MATTERS
`Petitioner refers to related IPR2016-00036 and implies that arguments
`and determinations made in that case should be considered in this case. Req.
`Reh’g. 9. We disagree. Arguments must not be incorporated by reference
`from one document into another document. Combined motions, oppositions,
`replies, or other combined documents are not permitted. 37 C.F.R.
`§ 42.6(a)(3). Each petition or motion must be filed as a separate paper and
`
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`must include a full statement of the reasons for the relief requested,
`including a detailed explanation of the significance of the evidence including
`material facts. 37 C.F.R. § 42.22. Moreover, Petitioner’s quoted statement
`from the decision in IPR2016-00036 concerning Hoyler is not inconsistent
`with the Board’s statement herein. The decision in IPR2016-00036
`accurately quoted Hoyler’s disclosure, as did the Decision herein. The issue
`herein, in claim 3, concerning a support element comprised of at least two
`individual bars, is not present in the patent at issue in IPR2016-00036.
`Petitioner also asserts that the prior art and unpatentability rationales
`in this case are very similar to the prior art and unpatentability rationales in
`the related cases of IPR2016-00034 and IPR2016-00036. Req. Reh’g. 11.
`Those two related cases involve patents different from the ’926 patent. Inter
`partes review has been instituted in the two related IPRs. The ’926 patent
`and the patents involved in the two related IPR proceedings also are
`involved in district court litigation in Delaware. Id. According to Petitioner,
`for “judicial economy,” we should grant inter partes review in this case so
`that Petitioner and the Patent owner can avoid “duplicating the work that the
`[two related IPR proceedings] require by litigating the validity of claims 1,
`2, and 3 of the ’926 Patent in the context of the Delaware Action.” Id. at
`10–11. This is not the statutory standard for instituting an inter partes
`review.
`In order to institute an inter partes review in this case, Petitioner must
`establish in the petition “that there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a). As explained in the Decision and herein,
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`Petitioner has not met this burden. Id.; 37 C.F.R. § 42.108(c). Accordingly,
`Petitioner is not entitled to the relief requested.
`III.
`CONCLUSION
`Based on the analysis above, Patent Owner has not persuaded us that
`our Decision was an abuse of our discretion, or that we misapprehended or
`overlooked any substantive matter. Accordingly, we deny the request for
`rehearing.
`
`ORDER
`
`IV.
`For the reasons given, it is
`ORDERED that the request for rehearing is denied.
`
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`IPR2016-00035
`Patent 6,836,926 B1
`
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`For PETITIONER:
`
`Richard M. Koehl
`David E. Lansky
`James R. Klaiber
`Stefanie Lopatkin
`HUGHES HUBBARD & REED LLP
`richard.koehl@hugheshubbard.com
`david.lansky@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`stefanie.lopatkin@hugheshubbard.com
`
`
`
`For PATENT OWNER:
`
`Patrick Colsher
`Enrique W. Iturralde
`Mark A. Hannemann
`SHEARMAN & STERLING LLP
`patrick.colsher@shearman.com
`enrique.iturralde@shearman.com
`mark.hannemann@shearman.com
`
`
`
`
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