Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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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,
`
`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00036
`U.S. Patent No. 6,944,905
`______________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 35
`U.S.C. § 313 AND 37 C.F.R. § 42.107
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`
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`
`
`U.S. Patent No. 6,944,905
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00036
`U.S. Patent No. 6,944,905
`______________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 35
`U.S.C. § 313 AND 37 C.F.R. § 42.107
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`
`
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`
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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`SUMMARY OF ARGUMENTS .................................................................... 2
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`III. STANDARD FOR INSTITUTION................................................................. 4
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`IV. BRIEF OVERVIEW OF U.S. PATENT. NO. 6,944,905 ............................... 6
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`V.
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`PETITIONER IMPROPERLY INCORPORATES BY REFERENCE THE
`KRUGER, MASLEN, AND DAVIS DECLARATIONS............................... 8
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`VI. PETITIONER PUTS FORTH NO EVIDENCE THAT THE CITED
`REFERENCES DISCLOSE THE CLAIMED ELEMENTS FOUND IN
`ALL CHALLENGED CLAIMS ...................................................................11
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`A.
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`B.
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`The prior art fails to disclose the “free ends [of the two diverging legs]
`oriented toward the window are supported on the support element”
`recited in claims 13, 17, and 18 of the ’905 patent .............................11
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`The prior art fails to disclose “a section of the wind deflection strip is
`disposed between … each respective end cap and the device piece”
`recited in claims 13, 17, and 18 of the ’905 patent .............................12
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`VII. THE ALLEGED OBVIOUSNESS COMBINATION IS DRIVEN BY
`IMPERMISSIBLE HINDSIGHT AND RESTS UPON CONCLUSORY
`ASSERTIONS ...............................................................................................14
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`VIII. SCHMID (DE 100 00 373 A1) IS NOT EVIDENCE OF SIMULTANEOUS
`INVENTION .................................................................................................19
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`IX. CONCLUSION ..............................................................................................20
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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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`Table of Authorities
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed Cir. 2012) ................................................................... 3, 5, 17
`
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00441, Paper 11 (PTAB July 13, 2015) ................................................ 3
`
`August Technology Corp. v. Camtek Ltd.,
`655 F.3d 1278 (Fed. Cir. 2011) ............................................................................ 5
`
`Blackberry Corp. v. Mobilemedia Ideas LLC,
`IPR2013-00016, Paper 32 (PTAB Feb. 25, 2014) ................................................ 9
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ........................................... 2, 8
`
`Fidelity National Info. Serv’s, Inc. v. Datatreasury Corp.,
`IPR2014-00489, Paper 9 (PTAB Aug. 13, 2014) ................................................. 9
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 14
`
`Geo M. Martin Co. v. Alliance Machine Sys. Int’l, LLC,
`618 F.3d 1294 (Fed. Cir. 2010) .......................................................................... 19
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ...................................................................... 3, 17
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................. 5
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 14
`
` PCT Int’l, Inc. v. Amphenol Corp.,
`IPR2013-00229, Paper 17 (PTAB Dec. 24, 2013) ............................................... 9
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`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 15 (PTAB Dec. 30, 2013) ............................................... 5
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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 17 (PTAB Feb. 25, 2014) .......................................... 3, 17
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`Unified Patents Inc. v. OliviStar, LLC,
`IPR2015-01216, Paper 15 (PTAB Nov. 20, 2015) ............................................... 8
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`Vizio, Inc. v. Int’l Trade Comm’n,
`605 F.3d 1330 (Fed. Cir. 2010) ............................................................................ 5
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`Statutes
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`35 U.S.C. § 314(a) ................................................................................................. 4, 5
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`35 U.S.C. § 316(e) ..................................................................................................... 5
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`
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`Regulations
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`37 C.F.R. § 42.6(a)(3) ............................................................................................ 2, 8
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`37 C.F.R. § 42.24(a)(1)(i) ...................................................................................... 2, 8
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`37 C.F.R. § 42.104(b)(4) ................................................................................ 5, 11, 12
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`37 C.F.R. § 42.108(b) ................................................................................................ 5
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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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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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`I.
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`INTRODUCTION
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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 of
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`claims 13, 17, and 18 of U.S. Patent No. 6,944,905 (“Petition”). This response is
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`timely pursuant to the Board’s Notice in Paper No. 3.
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`The following arguments are not intended to be an exhaustive list of
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`arguments with respect to the sole ground asserted in the Petition. Rather, Bosch
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`respectfully submits these streamlined arguments in response to the issue of
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`institution and reserves the right to expand on these arguments with additional
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`evidence, including testimonial evidence, or to provide new arguments, should the
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`Board determine that institution is appropriate.
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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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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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`II.
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`SUMMARY OF ARGUMENTS
`The Petition fails for several reasons.
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`First, Petitioner violates 37 C.F.R. § 42.24(a)(1)(i) and 42.6(a)(3) by
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`improperly incorporating by reference large portions of the Kruger, Maslen, and
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`Davis Declarations into the Petition. Under the Board’s prior decisions, the
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`arguments incorporated by reference should be disregarded. See, e.g., Cisco Sys.,
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`Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29,
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`2014). Without this testimony, Bosch submits that the Petition is insufficient to
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`carry Petitioner’s burden, and institution of Ground 1 should be denied with
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`respect to all claims.
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`Second, Petitioner offers no evidence that the cited references relied on in
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`Ground 1 disclose the “free ends [of the two diverging legs] oriented toward the
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`window are supported on the support element” and “a section of the wind
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`deflection strip is disposed between … each respective end cap and the device
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`piece” limitations present in all challenged claims 13, 17, and 18 of the ’905
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`patent. Thus, Petitioner fails to present prima facie evidence of obviousness of all
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`challenged claims. Since the sole Ground 1 asserted in the petition is based on the
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`alleged obviousness of the invention over the cited prior art combination,
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`institution should be denied on this ground for all challenged claims.
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`Third, the alleged obviousness combination presented in the Petition is
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`driven by improper hindsight and lacks articulated reasons with rational
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`underpinnings to support the proposed modifications to both references. See, e.g.,
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`Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00441, Paper 11 at 12 (PTAB
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`July 13, 2015). Moreover, the Petition provides only conclusory assertions with
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`respect to how the references might be combined. These assertions are insufficient
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`to support a claim of obviousness. See, e.g., K/S HIMPP v. Hear-Wear Techs.,
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`LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014); ActiveVideo Networks, Inc. v. Verizon
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`Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed Cir. 2012) (dismissing expert
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`testimony that “failed to explain how specific references could be combined, which
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`combination(s) of elements in specific references would yield a predictable result,
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`or how any specific combination would operate or read on the asserted claims” and
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`further dismissing expert testimony that generically recites a desire for more
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`efficient and cheaper systems that had more features for customers); SAS Inst., Inc.
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`v. ComplementSoft, LLC, IPR2013-00581, Paper 17 at 3–4 (PTAB Feb. 25, 2014)
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`(observing that the PTAB “is not required to take every statement by a petitioner’s
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`expert as established fact” and is “required to assess the persuasiveness of the
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`testimony in light of other factual evidence in the record, e.g., the explicit wording
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`of the prior art and the scope of the claimed invention”). In an effort to remedy the
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`lack of a reasonable motivation to combine, Petitioner points to an alleged
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`“simultaneous invention” that would have provided the ordinary artisan with the
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`necessary map for piecing together the prior art. But, as discussed below, the
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`alleged “simultaneous invention” does not, in fact, disclose all elements of each
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`challenged claim of the ’905 patent. Therefore, institution should be denied on
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`Ground 1 with respect to all claims.
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`Fourth, the petition presents an obviousness challenge without adequately
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`explaining (i) why a person of ordinary skill in the art would have combined or
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`modified the prior art or (ii) how the combination or modification would fall within
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`the scope of the challenged claims. Both of these elements are essential to a well-
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`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 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, 48,756
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`(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
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`claim 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, 694 F.3d at 1328. The Board may “deny some or all
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`grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R.
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`§ 42.108(b); see also 35.U.S.C. § 314(a).
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`Thus, it is a petitioner’s duty to provide sufficient grounds for institution.
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`Here, Petitioner has failed to live up to it. Bosch respectfully submits that
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`institution of review on Ground 1 should be denied for all challenged claims.
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`U.S. Patent No. 6,944,905
`IV. BRIEF OVERVIEW OF U.S. PATENT. NO. 6,944,905
`U.S. Patent No. 6,944,905 (“the ’905 patent”), entitled “Wiper blade for
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`cleaning screens in particular on motor vehicles,” issued on September 20, 2005,
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`from a PCT application filed on April 4, 2001, which claimed priority to two
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`German patent applications filed on May 29, 2000, and September 12, 2000.
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`The ’905 patent is directed to a beam wiper blade that includes a band-like,
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`elongated, spring-elastic support element, a rubber-elastic wiper strip, a connecting
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`device for connecting the wiper blade to a wiper arm located in the middle section
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`of the support element, end caps disposed at both ends of the support element, and
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`a wind deflection strip, or spoiler, disposed on the upper band surface of the
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`support element between the end caps and the connecting device.
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`Fig. 1 is a perspective representation of a wiper blade, and Fig. 2 shows a
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`cross-section of a preferred embodiment of Bosch’s claimed invention.
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`In an improvement to the wind deflection strips known in the art at the time
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`of the invention, the ’905 patent discloses a wind deflection strip with two
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`diverging legs connected to each other at a common base, with an attack surface
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`oriented toward the main flow of the relative wind embodied on the outside of one
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`leg, and with the free ends of the two diverging legs supported on the support
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`element. In addition to reducing wind lift, the particular spoiler structure disclosed
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`and claimed in the ’905 patent results in a lighter and less rigid spoiler, and
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`minimizes the undesirable effects of the spoiler component on the bending and
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`elastic properties of the spring-elastic support element, thereby improving wipe
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`quality. The wind deflection strip of the invention also reduces the wiper blade’s
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`weight, provides savings in material and fabrication costs, and simplifies
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`installation. Ex. 1001 at 1:55–2:10.
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`Each challenged claim 13, 17, and 18 is an independent claim of the ’905
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`patent.
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`V.
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`PETITIONER IMPROPERLY INCORPORATES BY REFERENCE
`THE KRUGER, MASLEN, AND DAVIS DECLARATIONS
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`Bosch respectfully submits that the Kruger Declaration cannot be relied
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`upon to support Petitioner’s arguments because the citations amount to improper
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`incorporations by reference, and have the effect of circumventing the 60-page limit
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`on petitions.
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`A petition requesting inter partes review is limited to 60 pages, and
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`incorporation by reference is not permitted. 37 C.F.R. §§ 42.24(a)(1)(i),
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`42.6(a)(3). The Board has consistently determined that declarations are not to be
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`used as a tool for circumventing page limits, and tactics of incorporating lengthy
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`materials to circumvent the page limit have been determined to be improper. See,
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`e.g., Cisco, IPR2014-00454, Paper 12 at 10 (disregarding arguments made in
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`declaration that were improperly incorporated by reference; “Incorporation ‘by
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`reference amounts to a self-help increase in the length of the [] brief[,]’ and ‘is a
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`pointless imposition on the court’s time. A brief must make all arguments
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`accessible to the judges, rather than ask them to play archeologist with the
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`record.’” (alteration in original; citation omitted)); Unified Patents Inc. v.
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`OliviStar, LLC, IPR2015-01216, Paper 15 at 12–13 n.7 (PTAB Nov. 20, 2015)
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`(citing to a declaration to support conclusory statements in petition is improper
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`incorporation by reference); Fidelity National Info. Serv’s, Inc. v. Datatreasury
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`Corp., IPR2014-00489, Paper 9 at 9–11 (PTAB Aug. 13, 2014); Blackberry Corp.
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`v. Mobilemedia Ideas LLC, IPR2013-00016, Paper 32 at 21 (PTAB Feb. 25, 2014);
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`PCT Int’l, Inc. v. Amphenol Corp., IPR2013-00229, Paper 17 at 2 (PTAB Dec. 24,
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`2013).
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`Throughout the Petition, Petitioner broadly asserts that a certain appendix to
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`the Kruger Declaration “demonstrates that each element is disclosed in the prior art
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`as set forth in the chart.” See Petition at 31, 37, 42 (citing one or more of Kruger
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`appendices A–E, Exs. 1017–1021). The appendices alone comprise 45 pages and
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`about 2.5 minutes of video. However, Petitioner does not connect these generic
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`citations to any particular claim limitation or unpatentability argument.
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`Bosch respectfully submits that the Board should disregard the Maslen
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`Declaration, Ex. 1008, for the same reason. Petitioner only cites it once, in its
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`entirety, for the proposition that “the problems that the ‘905 patent purports to
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`solve were similarly well-known.” Petition at 21 (citing generally to Maslen Decl.,
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`Ex. 1008). The Maslen Declaration and tutorial contains about 30 pages of
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`substantive wiper blade technology discussion. However, Petitioner neglects to
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`point to any specific support in the Maslen Declaration for the cited proposition, or
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`connect it to any particular claim limitation or unpatentability argument.
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`And, Petitioner’s use of a large portion of the Davis Declaration in the same
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`context amounts to an improper incorporation by reference of arguments from an
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`expert declaration. Petitioner cites 37 paragraphs of the Davis Declaration,
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`spanning 12 pages, for the proposition that “the problems that the ‘905 patent
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`purports to solve were similarly well-known.” Petition at 21 (citing Davis Decl.,
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`Ex. 1007, ¶¶ 18–27, 33–59). Petitioner fails to connect this large swath of expert
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`testimony to any particular claim limitation or unpatentability argument.
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`This tactic amounts to an improper incorporation by reference and shifts the
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`burden to the Board to make arguments for Petitioner. Petitioner’s reliance on the
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`Kruger and Maslen Declarations, and the discussed-above portion of the Davis
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`Declaration, lacks any specificity and fails to support any particular argument of
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`unpatentability. Accordingly, the Kruger Declaration and its Appendices, the
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`Maslen Declaration, and paragraphs 18–27 and 33–59 of the Davis declaration
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`should be excluded from consideration in support of the Petition.
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`Bosch respectfully submits that, without this support from its experts,
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`Petitioner has failed to carry its burden with respect to all claims challenged in
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`Ground 1, and institution of the sole ground should be denied for all claims.
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`U.S. Patent No. 6,944,905
`VI. PETITIONER PUTS FORTH NO EVIDENCE THAT THE CITED
`REFERENCES DISCLOSE THE CLAIMED ELEMENTS FOUND IN
`ALL CHALLENGED CLAIMS
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`Bosch respectfully submits that Petitioner has not shown that the challenged
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`claims are unpatentable. Petitioner failed to provide evidence that the prior art
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`references disclose all claimed elements under the plain and ordinary meaning of
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`the claim terms.1
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`A. The prior art fails to disclose the “free ends [of the two diverging
`legs] oriented toward the window are supported on the support
`element” recited in claims 13, 17, and 18 of the ’905 patent
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`Each independent claim 13, 17, and 18 of the ’905 patent includes a
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`limitation “free ends [of the two diverging legs] oriented toward the window are
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`supported on the support element.” Petitioner cites no evidence of its presence in
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`the cited prior art, and thus fails to meet its burden of specifying elements that
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`demonstrate unpatentability because they contain insufficient explanations and rest
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`on irrelevant citations. 37 C.F.R. § 42.104(b)(4) (petition must “specify where
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`each element of the claim is found in the prior art patents or printed publications
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`relied upon.”).
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`1 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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`In Ground 1—the single invalidity ground asserted in the Petition—
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`Petitioner does not argue that Hoyler discloses this limitation, and relies solely on
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`Prohaska. Petition at 33, 39–40, 44–45. However, the claim charts shown on these
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`pages include only a conclusory statement that “Prohaska discloses that wind
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`deflector surfaces 21 and 22 are supported by the back 31 of flexible strip 30,” and
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`cite to Prohaska at 2:125–3:5 and Fig. 3. Id. The statement does not purport to
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`recite the relevant “free ends” limitation; the citation to Prohaska does not disclose
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`that an alleged spoiler has any “free ends oriented toward the window” and is
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`“supported on the support element;” and Figure 3 does not show any such spoiler
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`configuration. Petitioner, therefore, fails to show that the prior art combination
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`discloses this limitation, and cannot establish a prima facie obviousness case for all
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`challenged claims of the ’905 patent.
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`B.
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`The prior art fails to disclose “a section of the wind deflection
`strip is disposed between … each respective end cap and the
`device piece” recited in claims 13, 17, and 18 of the ’905 patent
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`Each independent claim 13, 17, and 18 of the ’905 patent includes a
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`limitation “a section of the wind deflection strip is disposed between … each
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`respective end cap and the device piece.” Petitioner cites no evidence of its
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`presence in the cited prior art, and thus fails to meet its burden of specifying
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`elements that demonstrate unpatentability because they contain insufficient
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`explanations and rest on irrelevant citations. See 37 C.F.R. § 42.104(b)(4) (petition
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`must “specify where each element of the claim is found in the prior art patents or
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`printed publications relied upon.”).
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`In Ground 1—the single invalidity ground asserted in the Petition—
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`Petitioner does not argue that Hoyler discloses this limitation, and relies solely on
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`Prohaska. Petition at 34, 40, 45. However, the claim charts shown on these pages
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`include only a conclusory statement that “Prohaska discloses arranging spoilers
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`between the working points of the clawed yokes connecting to the wiper blade,”
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`and cite to Prohaska at 1:107–112, 2:80–86, Fig.1. Id. This statement does not
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`purport to recite the relevant limitation of the ’905 patent claims, which requires a
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`section of the wind deflection strip to be disposed between the “respective end cap
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`and the device piece”—not between “the working points of the clawed yokes.”
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`Indeed, Petitioner could not make a statement that Prohaska discloses the claimed
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`limitation as written in the claims, because it does not disclose the end caps or the
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`connecting device for the wiper arm located in the middle section of the support
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`element—thus, it cannot teach a spoiler located between these elements. The two
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`citations, (Ex. 1003 at 1:107–112, 2:80–86), do not provide any disclosure of this
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`limitation. Figure 1 shows a cross-section of the wiper blade perpendicular to the
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`wiper strip, not along it; therefore it does not depict or disclose a spoiler section
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`located between the “respective end cap and the device piece.” Petitioner,
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`therefore, fails to show that the prior art combination discloses this limitation, and
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`13
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`cannot establish a prima facie obviousness case for all challenged claims of the
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`’905 patent.
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`Accordingly, the combination that Petitioner presents is missing at least two
`
`separate elements of each challenged claim of the ’905 patent. As such, the
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`Petitioner fails to establish a prima facie case of obviousness of claims 13, 17, and
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`18 of the ’905 patent, and institution of the sole Ground 1 of the Petition should be
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`denied for all challenged claims.
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`VII. THE ALLEGED OBVIOUSNESS COMBINATION IS DRIVEN BY
`IMPERMISSIBLE HINDSIGHT AND RESTS UPON CONCLUSORY
`ASSERTIONS2
`Petitioner is required to identify a specific rationale supporting its contention
`
`that it would have been obvious to modify the prior art. See In re Fritch, 972 F.2d
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`1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as
`
`an instruction manual or ‘template’ to piece together the teachings of the prior art
`
`so that the claimed invention is rendered obvious”); In re NTP, Inc., 654 F.3d
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`1279, 1299 (Fed. Cir. 2011) (“The Board improperly relied on hindsight reasoning
`
`to piece together elements to arrive at the claimed invention. ‘Care must be taken
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`
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`2 The Merkel and Wright references, (Exs. 1011, 1012, 1014), that Petitioner cites
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`throughout the petition should be disregarded, as the Petitioner does not present a
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`detailed invalidity argument that includes either of these references.
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`14
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`U.S. Patent No. 6,944,905
`to avoid hindsight reconstruction by using the “patent in suit as a guide through a
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`maze of prior art references, combining the right references in the right way so as
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`to achieve the result of the claims in suit.”’”).
`
`The sole Ground 1 of the Petition is based on the alleged obviousness
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`combination of Prohaska and Hoyler references. Prohaska is directed to a
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`conventional bracketed wiper blade “comprising a supporting structure including at
`
`least one yoke element for holding a wiper element.” Ex. 1003 at 1:108–117.
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`Petitioner argues that it would have been obvious for a person of ordinary skill in
`
`the art to combine the spoiler of Prohaska’s conventional bracketed wiper blade
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`with the components of a beam wiper blade (of the type disclosed and claimed in
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`’905 patent, see Ex. 1001 at 1:5–31). Petitioner, however, does not provide any
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`motivation to do so, or any explanation as to how the resulting structure would be
`
`able to function as a wiper blade. The motivation to combine cannot come from
`
`the ’905 patent, but should come from the prior art references or some other
`
`source. Prohaska provides no such motivation, and, in fact, teaches away from the
`
`invention of the ’905 patent.
`
`Prohaska discloses a molded-on or clipped-on spoiler, and teaches that
`
`making a spoiler “moulded” together with the flexible stiffener used to stiffen a
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`wiper element in a conventional bracketed wiper blade is “a simple and
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`15
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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`economical” way to produce a wiper blade with a spoiler, and that such molded
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`stiffener-spoiler will “stiffen the wiper blade flexibly.” Ex. 1003 at 1:62–67.
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`In its sole Ground 1, Petitioner argues that “a person of ordinary skill in the
`
`art … would use the spoiler embodied in Figure 3 of Prohaska as a logical starting
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`point.” Petition at 35. And, Petitioner relies on Figure 3 of Prohaska for the
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`disclosure of a hollow spoiler. However, Petitioner omits that Prohaska itself
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`disparages the embodiment of Figure 3, noting that the “hollow space between the
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`surfaces … possibly migh[t] be disadvantageous.” Ex. 1003 at 3:4–6 (emphasis
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`added). Recognizing the problems with this hollow spoiler design, Prohaska
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`proposes its own solution, as shown in Figure 6. Id. at 3:6–10 (“This disadvantage
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`is avoided in a wiper element according to Figure 6 ….”).
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`16
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`Based on this disclosure, a person of ordinary skill in the art would not have
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`attempted to use the stiff spoiler of Prohaska on a beam blade because it would
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`stiffen the beam and adversely affect the sensitive force distribution of a beam
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`blade’s spring support element. Indeed, a person of ordinary skill in the art would
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`have avoided using a spoiler with a hollow space between its sides, as Prohaska
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`taught away from it.
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`Petitioner’s proposed combinations to arrive at the invention of the ’905
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`patent by combining Prohaska and Hoyler make it evident that Petitioner used
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`impermissible hindsight gleaned from the ’905 patent to find similar elements in
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`the prior art and mash them together without any reason for doing so, and without
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`any expectation of success.
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`In addition, Petitioner’s conclusory assertions are insufficient to support a
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`claim of obviousness. K/S HIMPP, 751 F.3d at 1365; ActiveVideo, 694 F.3d at
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`1327–28; SAS Inst., IPR2013-00581, Paper 17 at 3–4. In particular, the Petition
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`repeatedly relies on the Davis Declaration to support certain propositions, when, in
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`fact, the cited paragraphs do not provide any actual support. And without such
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`support, the assertions in the Petition amount to nothing more than attorney
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`argument. For example:
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`• Petitioner cites to ¶ 49 to support the assertion that “it would have been well
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`within the skill of a person of ordinary skill in the art to modify the
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`17
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`elongations 32, 32 of Prohaska to clip to the springs 5 of Hoyler in order to
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`implement this teaching.” Petition at 36. But ¶ 49 of the Davis Declaration
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`discusses only the placement of the spoiler on the wiper blade between the
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`connecting device and end caps, not its attachment to the support element.
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`• Petitioner cites to ¶ 54 to support the assertion that a person of ordinary skill
`
`would have been motivated “to include a flute in the wind-facing surface of
`
`the Prohaska spoiler, and to include a similarly-shaped flute in the end cap
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`of Hoyler.” Petition at 42. But ¶ 54 of the Davis Declaration only makes a
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`general statement about combining old elements according to their
`
`established functions, and does not support Petitioner’s statement about a
`
`person of ordinary skill in the art’s motivation to combine the specific
`
`elements of the discussed references.
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`• Likewise, Petitioner cites to ¶ 58 to support the assertion that a person of
`
`ordinary skill would have been motivated “to include a flute in the wind-
`
`facing surface of the Prohaska spoiler, and to include a similarly-shaped
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`flute in the central wiper blade connecting device of Hoyler.” Petition at 47.
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`But ¶ 58 of the Davis Declaration also only makes a general statement about
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`combining old elements according to their established functions, and does
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`not support Petitioner’s statement about a person of ordinary skill in the art’s
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`motivation to combine the specific elements of the discussed references.
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`18
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`As the Petition’s only obviousness combination is built on improper
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`hindsight bias and conclusory assertions, the Board should deny institution of all
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`challenged claims based on the arguments presented in the sole Ground 1 of the
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`Petition.
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`VIII. SCHMID (DE 100 00 373 A1) IS NOT EVIDENCE OF
`SIMULTANEOUS INVENTION
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`To mask its use of hindsight bias and conclusory arguments regarding the
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`reasons to combine the various references, Petitioner interjects a simultaneous
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`invention argument. This argument also fails.
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`Petitioner admits that the Schmid reference (Exhibit 1013; referred to by
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`Petitioner as Eckhardt) is not prior art. IPR2016-00039, Paper 1, at 6. Therefore,
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`Petitioner relies on it as evidence of simultaneous invention only. See Pe
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