Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 69
`Entered: April 24, 2017
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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 IPR2016-00036
`Patent 6,944,905
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`
`GROSSMAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`Incorporating Decisions on
`Petitioner’s Motion to Exclude Evidence
`Petitioner’s Motion to Strike
`Patent Owner’s Motion to Exclude Evidence
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 69
`Entered: April 24, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COSTCO WHOLESALE CORPORATION
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00036
`Patent 6,944,905
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`
`GROSSMAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`Incorporating Decisions on
`Petitioner’s Motion to Exclude Evidence
`Petitioner’s Motion to Strike
`Patent Owner’s Motion to Exclude Evidence
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
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`
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`Case IPR2016-00036
`Patent 6,944,905
`
`I. INTRODUCTION
`
`Costco Wholesale Corporation (“Petitioner”) filed a Petition
`requesting inter partes review of claims 13, 17, and 18 of U.S. Patent No.
`6,944,905 (Ex. 1001, “the ’905 patent”). Paper 1 (“Pet.”). Robert Bosch
`LLC (“Patent Owner”) filed a Preliminary Response to the Petition. Paper
`15 (“Prelim. Resp.”). We instituted review on the sole asserted ground of
`whether claims 13, 17, and 18 would have been obvious in view of
`Prohaska1, and Hoyler2. Paper 16 (“Dec. Inst.”). After our Decision on
`Institution, Patent Owner filed a Response (Paper 28, “PO Resp.”), and
`Petitioner filed its Reply (Paper 34, “Pet. Reply”). An oral hearing was held
`January 18, 2017. Paper 67 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`We also address herein the parties’ Motions to Strike or Exclude
`Evidence.
`As described below, we determine that a preponderance of the
`evidence establishes that claims 13, 17, and 18 are unpatentable.
`
`A. Related Matters
`The parties represent that the ’905 Patent is asserted in Robert Bosch
`LLC v. Alberee Products Inc. et al., cv-12-574-LPS (D. Del) (consolidated
`with cv-14-142-LPS). Pet. 1; Paper 5, 1.
`
`
`1 U.K. Patent App. GB 2 106 775 A, published April 20, 1983 (Ex. 1003).
`2 German Patent No. 1,028,896, published April 24, 1958 (Ex. 1004). The
`English translation begins at page 5.
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`In addition, Petitioner has filed petitions against several of Patent
`Owner’s other patents related to windshield wiper technology, including:
`U.S. Patent Nos. 6,973,698 (IPR2016-00034), 6,836,926 (IPR2016-00035),
`6,292,974 (IPR2016-00038), 7,228,588 (IPR2016-00039), 7,484,264
`(IPR2016-00040), 8,099,823 (IPR2016-00041), and 8,544,136
`(IPR2016-00042). Pet. 1–2; Paper 5, 1–2. The petition in IPR2016-00035
`was denied. Trial was instituted in the other listed cases. A single,
`consolidated hearing was held for this case and the other listed cases.
`
`B. Wiper Blade Background
`There are two main types of windshield wiper structures: beam
`
`blades, and yoke, or conventional, blades. The conventional or yoke-style
`structure includes a series of flexible rails that distribute force along the
`wiper blade. Ex. 1007 ¶ 19. Figure 1 of U.S. Patent 3,418,679 (Ex. 1016) is
`reproduced below:
`
`
`Figure 1 depicts a yoke-style wiper structure, having a large main rail
`
`4 connected to two smaller rails 5 and 6, which in turn are connected to the
`wiper blade.
`In contrast to the conventional or yoke style wiper is the beam-style of
`wiper. This type of wiper uses metal strips adjacent the wiper blade to
`distribute the load along the length of the wiper blade rather than the yokes.
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`Ex. 1007 ¶ 22. The ’905 patent discloses a beam wiper. Figure 1 of the
`’905 patent illustrating a beam wiper, is reproduced below:
`
`
`Figure 1 of the ’905 patent depicts a beam-style wiper structure, in
`which the beam is attached along the entire length of the wiper.
`
`C. The ’905 Patent
`When driving at high speeds, the windshield wipers on a vehicle tend
`to lift off the windshield. The ’905 patent addresses this problem by
`providing a “wind-deflection strip” on the windshield wiper to create a force
`directed towards the windshield. Wind-deflection strips on windshield
`wipers are, admittedly, well-known. E.g. Ex. 1001, 1:26–32.3 The wiper
`blade disclosed and claimed in the ’905 patent, however, is hollow, which
`reduces its weight and rigidly. This creates savings in material, reduces the
`mass that the drive unit must reciprocate, and reduces bending on the wiper
`blade support element. Id. at 1:55–64.
`The disclosed wiper blade is made of three main components: elastic
`rubber wiper strip 14, resilient support element 12, and wind deflection strip
`42. Id., Abstract. These three components are illustrated in Figure 2 of the
`’905 patent, reproduced below:
`
`3 Citations to the ’905 patent are in the format of “column:line[s].”
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`Figure 2 of the ’905 patent depicts a cross-sectional view of a
`windshield wiper blade embodiment. As shown in Figure 2 and also in
`Figure 3, of the ’905 patent, wind deflection strip 42 has two diverging legs
`(44, 46) that diverge from common point 48. Free ends 50 and 52 of legs 44
`and 46 are oriented toward window 22 and are supported against wiper blade
`10 or its support element 12, so that deflection strip 42 is generally
`triangular in cross section and has a hollow interior. Id. at 2:54–62.
`End caps 38 (see Fig. 1) are at each end of the blade. Id.4:34. Attack
`surface 54, which is fluted in the exemplary embodiment, is on the outside
`of leg 44. Id. at 4:48–49. The relative wind flows against this attack surface
`to provide a force directed towards the windshield. Id. at 4:50–51.
`
`D. Challenged Claims
`Petitioner challenges claims 13, 17, and 18, each of which is written
`as an independent claim. Claim 13 is reproduced below. 4
`13. A wiper blade for cleaning windows, comprising:
`a band-like, elongated, spring-elastic support element
`(12),
`
`
`4 Line breaks have been added to claim 13 to assist in identifying the
`elements recited in claim 1. Reference numerals appear is the issued claim.
`
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`wherein a lower band surface (13) oriented toward the
`window (22) has an elongated, rubber-elastic wiper
`strip (14), which can be placed against the window,
`disposed on it so that the longitudinal axes of these
`two parts are parallel and
`wherein an upper band surface (11) of the support
`element has a wind deflection strip (42) disposed on
`it,
`wherein the wind deflection strip extends in a
`longitudinal direction of the support element (12),
`is provided with an attack surface (54) oriented
`toward the main flow of the relative wind, and is
`made of an elastic material,
`wherein the wind deflection strip (42, 142, 242) has
`two diverging legs (44, 46), viewed in transverse
`cross section, wherein the two diverging legs are
`connected to each other at a common base (48) and
`wherein free ends of the two diverging legs oriented
`toward the window (22) are supported on the
`support element, and the attack surface (54) is
`embodied on the outside of the one leg (44),
`wherein the upper band surface (11) of the support
`element (12), in its middle section, includes a wiper
`blade part (15) for connecting the wiper blade (10)
`to a reciprocally driven wiper arm (16) and is
`supported,
`wherein an end cap (38) is respectively disposed at both
`ends of the support element (12), and
`wherein a section (40) of the wind deflection strip (42)
`is disposed between and in contact with each
`respective end cap (38) and the device piece (15).
`Claims 17 and 18 are substantially similar to claim 13.
`Claim 17 adds a limitation, not in claims 13 or 18, stating that the end
`caps are provided with a “flute (68), which extends in a projection of the
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`flute of the attack surface (54)5 of the wind deflection strip.” Ex. 1001,
`10:2–4.
`Claim 18 adds a limitation, not in claims 13 or 17, stating that “the
`wiper blade part (15) of the connecting device is provided with a flute (70),
`which extends in a projection of the flute of the attack surface (54)6 of the
`wind deflection strip (42).” Id. at 10:32–34.
`
`II. EVIDENTIARY MOTIONS
`
`Before addressing the merits, we first decide several evidentiary
`motions filed by the parties.
`
`A. Patent Owner’s Motion to Exclude
`Patent Owner moves to exclude Paragraphs 7, 9–11, 15, 18, 19, 21,
`and 23–26 of the Declaration testimony of Mr. David Peck (Ex. 1100).
`Paper 49. Petitioner offers in opposition (Paper 58), to which Patent Owner
`offers its reply (Paper 64). The Motion to Exclude and associated papers
`have no meaningful distinction from the similar Motion to Exclude
`Mr. Peck’s testimony in IPR2016-00038, slip op. at 19–22, Paper 68 (PTAB
`Mar. 30, 2017). We adopt the findings, analysis, and conclusions from that
`case on this issue. Consequently, Patent Owner’s Motion to Exclude
`portions of Mr. Peck’s Declaration (Ex. 1100) is denied.
`
`
`5 We note that claim 17 does not have an antecedent basis for the reference
`to “the flute of the attack surface (54) of the wind deflection strip.”
`6 We note that claim 18 does not have an antecedent basis for the reference
`to “the flute of the attack surface (54) of the wind deflection strip.”
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`B. Petitioner’s Motion to Exclude
`Petitioner moves to exclude the testimony of Wilfried Merkel offered
`by Patent Owner in Exhibit 2005, 210–264. Paper 50, 1–11. This testimony
`is from a 2010 district court trial transcript in Robert Bosch LLC v. Pylon
`Manufacturing Corp., No. 08-542 (D. Del. Apr. 15, 2010), in which Mr.
`Merkel testified on behalf of Patent Owner. Paper 50, 4.
`Petitioner also moves to exclude portions of the Declaration testimony
`of Martin Kashnowski offered by Patent Owner in Exhibit 2007. Id. at 11–
`15.
`
`Patent Owner offers its opposition (Paper 61), to which Petitioner
`offers its reply (Paper 65).
`With respect to the testimony of Mr. Merkel, our analysis in IPR2016-
`00038, slip op. at 10–16, Paper 68 (PTAB Mar. 30, 2017) is applicable here.
`We adopt the findings, analysis, and conclusions from that case on this issue.
`Consequently, Petitioner’s Motion to Exclude portions of Mr. Merkel’s prior
`trial testimony (Ex. 2005) is denied.
`With respect to the testimony of Mr. Kashnowski, our analysis in
`IPR2016-00038, slip op. 16–19, Paper 68 is applicable here. We adopt the
`findings, analysis, and conclusions from that case on this issue.
`Consequently, Petitioner has not demonstrated effectively that the testimony
`at issue is inadmissible hearsay, and with respect to this evidence, the
`Motion to Exclude is denied.
`
`C. Petitioner’s Motion to Strike
`
`Petitioner moves to strike the testimony of Mr. Merkel in Exhibit
`2005, 210–264. Paper 33. This testimony is from a 2010 district court trial
`transcript in Robert Bosch LLC v. Pylon Manufacturing Corp., No. 08-542
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`(D. Del. Apr. 15, 2010), in which Mr. Merkel testified on behalf of Patent
`Owner. Paper 33, 1. Patent Owner filed an opposition. Paper 36.
`Petitioner’s Motion to Strike and associated papers do not differ from the
`similar Motion to Strike in IPR2016-00038, slip op. at 4–10, Paper 68
`(PTAB Mar. 30, 2017). We adopt the findings, analysis, and conclusions
`from that case on this issue. Consequently Patent Owner’s Motion to Strike
`portions of Mr. Merkel’s prior trial testimony (Ex. 2005) is denied.
`
`III. ANALYSIS
`A. Claim Construction
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b). Petitioner asserts that none of the claim terms in the ’905
`patent needs to be construed for purposes of this Petition. Pet. 19. Patent
`Owner does not address claim construction.
`We determine that the challenged claims do not require specific
`construction.
`
`B. Petitioner’s Asserted Ground of Unpatentability
`Petitioner asserts that claims 13, 17, and 18 would have been obvious
`under 35 U.S.C. § 103 based on Prohaska in view of Hoyler. Petitioner also
`relies on the declaration of Gregory W. Davis, Ph.D. (Ex. 1007).
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.”
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when available, secondary considerations, such as
`commercial success, long felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR, 550 U.S. at
`407 (“While the sequence of these questions might be reordered in any
`particular case, the [Graham] factors continue to define the inquiry that
`controls.”).
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. To reach this conclusion, however, it is not enough to show
`merely that the prior art includes separate references covering each separate
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally
`requires that a person of ordinary skill at the time of the invention “would
`have selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention.” Id.
`Moreover, in determining the differences between the prior art and the
`claims, the question under 35 U.S.C. § 103 is not whether the differences
`themselves would have been obvious, but whether the claimed invention as a
`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
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`Sys. Corp., 755 F. 2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
`claimed invention must be considered as a whole in deciding the question of
`obviousness.”) (citation omitted); see also Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530, 1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C.
`§ 103 is not whether the differences themselves would have been obvious.
`Consideration of differences, like each of the findings set forth in Graham,
`is but an aid in reaching the ultimate determination of whether the claimed
`invention as a whole would have been obvious.”) (citation omitted).
`“A reference must be considered for everything it teaches by way of
`technology and is not limited to the particular invention it is describing and
`attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
`907 (Fed. Cir. 1985).
`As a factfinder, we also must be aware “of the distortion caused by
`hindsight bias and must be cautious of arguments reliant upon ex post
`reasoning.” KSR, 550 U.S. at 421. This does not deny us, however,
`“recourse to common sense” or to that which the prior art teaches. Id.
`Against this general background, we consider the references, other
`evidence, and arguments on which the parties rely.
`
`1. Scope and Content of the Prior Art
`The first step in our analysis is to review the scope and content of the
`prior art.
`
`a. Prohaska
`Prohaska is directed to an automobile windshield wiper blade. Ex.
`1003, 4:5–7.7 Prohaska describes the known problem of an air stream
`
`
`7 Citations are to exhibit page number, in the form “page:line[s].”
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`striking the wiper blade, which diminishes the contact pressure of the wiper,
`causing lifting and deterioration of the wiper blade, especially at high
`vehicle speeds. Id. at 4:8–16. Prohaska explains that spoilers are known,
`but prior spoilers were attached to the yoke or were unduly complicated and
`unattractive. Id. at 4:25–29. Prohaska proposes a spoiler formed on, or
`attached to, a flexible strip, which in turn is attached to a wiper blade. Id. at
`4:48–52, 68–77. Prohaska explains that its spoiler makes it “easily possible
`to retrofit a wiper blade.” Id. at 4:68–69. One embodiment is shown in
`Figure 3, reproduced below with added coloring:
`
`Figure 3 of Prohaska depicts spoiler 20 (in green) integral with flexible strip
`30 (also green) and attached to wiper 10 (in blue). Id. at 2:71–75. In the
`embodiment shown in Figure 3, spoiler 20 clearly is hollow.
`b. Hoyler
`Hoyler discloses a windshield wiper shown generally in the several
`images that make up Figure 1, which is reproduced below.
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`Figure 1 of Hoyler depicts side, top, and cross-section views
`of a beam-style wiper blade.
`As shown in Figure 1, rubber wiper blade 1 with a back part 2 is
`connected via a strip 3 with wiper lip 4. Ex. 1004, 5.8 Longitudinal springs
`5 are inserted in lateral slots in back part 4, held together at the ends by
`clamps 6. Id. Rubber blade 1 may be adhered or vulcanized to longitudinal
`spring 5 to reduce weight. Id. at 6 (“the rubber blade is adhered or
`vulcanized to the longitudinal spring 5, allowing a particularly light and
`narrow embodiment of the wiper bar.”).
`Hoyler also describes the importance of having light-weight wipers.
`Id. at 5 (“The weight of the moving parts can be largely reduced thereby so
`that the stress upon the drive elements is low.”).
`
`2. Level of Ordinary Skill
`
`Petitioner asserts that the references cited or discussed in the Petition
`reflect the level of ordinary skill in the relevant technology. Pet 30–31.
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`8 Citations are to the exhibit page number.
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`Petitioner also asserts a person of ordinary skill would have had “education
`and experience in mechanical engineering to have knowledge of the
`information deployed in these patents and printed publications.” Id. at 31.
`Petitioner does not cite any evidence or authority to support its asserted level
`of ordinary skill. We note, however, that Dr. Davis states a slightly different
`view. Dr. Davis opines that a person of ordinary skill “would have the
`education and experience in automotive design, automotive manufacture, or
`mechanical engineering. Ex. 1007 ¶¶ 15, 16.
`Patent Owner asserts a person of ordinary skill in the art at the time of
`the invention of the ’905 patent would have had either an undergraduate
`degree in mechanical engineering or a similar discipline, or several years of
`experience in the field of wiper blade manufacture and design. PO Resp. 1
`(citing Ex. 2003 ¶¶ 16–19).
`Patent Owner’s proposed level of skill would include anyone with an
`undergraduate degree in mechanical engineering or similar discipline,
`regardless of whether they had any actual knowledge or experience in the
`present field of endeavor, i.e. windshield wiper blades. See id. at 1
`(proposing “mechanical engineering . . . or . . . experience in the field”).
`Patent Owner’s proposed level would include virtually anyone with a
`mechanical engineering degree. We cannot accept Patent Owner’s proposed
`level of skill because it reads out at least “in the art” in “a person of ordinary
`skill in the art.”
`Neither party presents a detailed evidentiary showing under the
`factors typically considered in determining the level of ordinary skill in the
`art. Factors pertinent to this determination include: (1) educational level of
`the inventor; (2) type of problems encountered in the art: (3) prior art
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`solutions to those problems; (4) rapidity with which innovations are made;
`(5) sophistication of the technology, and (6) educational level of workers
`active in the field. Not all such factors may be present in every case, and
`one or more of these or other factors may predominate in a particular case.
`Id. These factors are not exhaustive but are merely a guide to determining
`the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex,
`Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`We adopt the level of skill proposed by Petitioner, as explained by
`Dr. Davis. A person of ordinary skill would have sufficient education and
`experience in mechanical engineering to have knowledge of and understand
`the information disclosed in the prior art discussed in the Petition. This
`includes experience in automotive design and manufacture. See also
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art
`itself reflects an appropriate level [of skill]”).
`3. Obviousness in View of Prohaska and Hoyler
`In general, Petitioner asserts that it would have been obvious to clip
`the spoiler of Prohaska on the beam-style wiper of Hoyler. Pet. 36, 41–42,
`46–47.
`The figures below are excerpts from Petitioner’s Exhibit 1202, page 2,
`comparing the proposed combination of prior elements, shown on the left, to
`the disclosed structure in the ’905 patent on the right. 9
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`9 We recognize that we compare the prior art to the claimed invention, not
`the illustrated invention. These illustrations, however, provide a useful aid
`to our analysis of the claimed invention.
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`Excerpt from Ex. 1202, 2 comparing
`Prohaska and Hoyler figures to ’905 patent figures.
`Petitioner identifies where Prohaska and Hoyler disclose each
`limitation of the challenged claims. Pet. 31–34, 37–41, 42–46. Petitioner
`asserts that Prohaska “teaches that existing wiper blades may be retrofitted
`by clipping wind deflector strips on a flexible strip, and that a flexible wind
`deflector strip may be inserted onto the head of the wiper strip.” Id. at 6
`(citing Ex. 1003, 4:68–70) (“It is easily possible to retrofit a wiper blade by
`squeezing a spoiler against its flexible strip or clipping it on this flexible
`strip.”). Prohaska states that “conventional rubber wiper elements and
`supporting structure can be used.” Ex. 1003, 4:13–15. Moreover, Prohaska
`discloses that the:
`embodiments shown illustrate a flexible strip which laps over the
`head of at least one wiper element. However it would also be
`possible to insert individual flexible strips in the head of the
`wiper element, which flexible strips either consist of steel as
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`usual or of plastics material, and to equip one of them with a
`spoiler.
`Id. at 4:1–7.
`Petitioner asserts, therefore, that the proposed combination is “nothing
`more than a simple arrangement of old elements with each performing the
`same function it had been known to perform yielding predictable results.”
`Id. at 37; Ex. 1007 ¶ 50; see also Ex. 1007 ¶ 46 (“In my view it would have
`been well within the skill of a person of ordinary skill in the art to modify
`the elongations 32, 33 of Prohaska to clip to the springs 5 of Hoyler in order
`to implement this teaching.”).
`a. Conventional vs. Beam Blades
`Patent Owner’s basic argument against combining the disclosures of
`Prohaska and Hoyler is that a conventional blade, like Prohaska, is
`“fundamentally different” from a beam blade. PO Resp. 8–9. According to
`Patent Owner, they are not “interchangeable.” Id. at 8. We disagree.
`The level of skill in the art is education and experience in mechanical
`engineering, with experience in automotive design and manufacture. This
`level of skill is not limited to the nuances or limitations of yoke or beam
`windshield wipers. A person with this level of skill and experience would
`be readily capable of adapting features from one type of windshield wiper to
`another.
`Moreover, we have not been directed to any persuasive evidence that
`the disclosure of Prohaska is limited to any specific type of windshield
`wiper. Prohaska discloses, in general, the problem of the air stream of a
`moving vehicle causing the windshield wipers to lift from the windshield.
`Ex. 1003, 4:8–15. To solve this problem, Prohaska explains, “[i]t is easily
`possible to retrofit a wiper blade by squeezing a spoiler against its flexible
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`strip or clipping it on this flexible strip.” Id. at 4:68–70. Prohaska does not
`limit the problem and solution identified to any specific type of windshield
`wiper.
`The specific embodiment in which Prohaska implements his disclosed
`invention is a yoke-style blade. Id. at 4:46. This does not limit the teaching
`of the disclosure to this specific embodiment. “A reference must be
`considered for everything it teaches by way of technology and is not limited
`to the particular invention it is describing and attempting to protect.” EWP
`Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985).
`As explained in KSR, “[w]hen a work is available in one field of
`endeavor, design incentives and other market forces can prompt variations of
`it, either in the same field or a different one.” 550 U.S. at 417.
`Additionally, “if a technique has been used to improve one device, and a
`person of ordinary skill in the art would recognize that it would improve
`similar devices in the same way, using the technique is obvious unless its
`actual application is beyond his or her skill.” Id. (emphasis added).
`Prohaska and Hoyler are “similar devices” and there is no persuasive
`evidence that the proposed combination is beyond the skill of a person with
`education and experience in mechanical engineering, and with experience in
`automotive design and manufacture. Moreover, as the Supreme Court
`informs us, “[a] person of ordinary skill is also a person of ordinary
`creativity, not an automaton.” Id. at 421 (2007).
`b. The “End Cap” Limitations
`Patent Owner also asserts that neither Prohaska nor Hoyler disclose an
`“end cap,” as recited in the challenged claims.” PO Resp. 3–4. We
`disagree.
`
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`The Specification discloses that spring strips 30 are secured in
`longitudinal grooves 34 by end caps 38 disposed at each end of the wiper
`blade. Ex. 1001, 4:31–34. We have not been directed to any persuasive
`disclosure in the Specification that states a specific shape of the end caps or
`discloses a specific function other than merely securing the spring strips. Id.
`As shown in the excerpt from Figure 1 in Hoyler, reproduced below,
`which shows only the right end of the wiper blade, Hoyler discloses
`“clamps” 6 at the ends of the wiper bar. Ex. 1004, 5 (The longitudinal
`springs 5 are inserted in lateral slots, held together at the ends of the bar by
`the clamps 6.” (emphasis added)).
`
`
`Excerpt of right side of blade from Fig. 1 of Hoyler.
`
`Thus, clamps 6 in Hoyler, like end caps 38 in the ’905 patent, are positioned
`at the ends of the wiper blade and function to secure longitudinal spring
`strips.
`In arguing that Hoyler “does not describe an end cap” (PO Resp. 4),
`Patent Owner asserts “a clamp [is] not an end cap” (id.). Patent Owner
`asserts “[a] person of ordinary skill in the art at the time of the invention
`would not have understood these ‘clamps’ to cap the ends of the wiper
`blade, that is, to cover the sharp corners that could scratch a car or a person.”
`Id. (citing Ex. 2003 at ¶ 69). We disagree.
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`As shown in the excerpt from Figure 1 of Hoyler, clamp 6 clears has a
`flange or component that bends over the end of the blade. Clamp 6 covers
`the end and sides of the blade. Thus, it caps the end. We have not been
`directed to any limitations in the challenged claims that require the end cap
`to have a specific structure, to cover the entirety of the end of the blade, or to
`perform a specific function, such as to prevent scratching. Thus, the
`evidence does not support Patent Owner’s argument.
`Petitioner also asserts that because Prohaska does not have end caps,
`the Prohaska spoiler is not “disposed between and in contact with both the
`end caps and the device (element 15 in the ’905 patent) connecting the wiper
`blade to the wiper arm, as recited in the claims. PO Resp. 7. We disagree.
`The asserted basis of unpatentabilty is based on adding the spoiler of
`Prohaska to the blade of Hoyler. Pet. 36. Prohaska teaches that it is
`“reasonable to arrange spoilers in [the working points] of the wiper
`element.” Ex. 1003, 4:107–112. These “working points” extend from end
`cap to end cap in Hoyler. Thus, when the spoiler of Prohaska is added to
`Hoyler, it would extend from end cap to end cap.
`Hoyler discloses that “hump 7” is fastened in the center of the rubber
`blade. Ex. 1004, 5. Hump 7 is the “device” that connects the wiper blade to
`the wiper arm. Id. at 6 (“the hump includes an eyelet-like opening 10, which
`serves for the suspension at the wiper arm not shown.”). Hump 7 is fastened
`to the wiper blade. Id. at 5. If the wiper blade of Hoyler is fitted with a
`spoiler, as suggested by Prohaska, the spoiler will thus contact hump 7 and
`extend from end cap to cap, contrary to Patent Owner’s assertions. See Pet.
`36–37 (citing Ex. 1007 ¶ 49).
`
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`c. A “Wind Deflection Strip” Having “Two Diverging Legs”
`Patent Owner asserts that the spoiler disclosed in Prohaska combined
`with Hoyler do not meet the “wind deflecting strip” limitations in the claims
`because of “(1) the fundamental differences between conventional and beam
`blades; (2) the problems of wind lift and spoiler rigidity and mass reduction
`were not known in beam blades; and (3) the disadvantages mentioned by
`Prohaska of its hollow-shaped Figure 3 conventional spoiler.” PO Resp. 8–
`12.
`
`We have addressed above Patent Owner’s reason 1.
`As to reason 2, Prohaska addresses the problem of “wind lift” in
`general. See Ex. 1003, 4, ll. 8–(“the air stream striking the wiper blade
`laterally produces a lifting force at the supporting structure and at the wiper
`element”). Further, Hoyler teaches that flat-spring wipers should be
`designed so “[t]he weight of the moving parts can be largely reduced,” by
`using a “rubber or elastic plastic” component above the metal flat springs.
`Ex. 1004, 5.
`As to reason 3, spoiler 20 of Prohaska, as shown in Figure 3, has two
`sides that diverge from a common base point, which are then connected by a
`wall. Id., Fig. 3. It clearly is hollow with diverging legs. We acknowledge
`that Prohaska cautions that a hollow spoiler, “possibly migh[t] be
`disadvantageous.” Ex. 1003, 3:2–6. Prohaska indicates that the possible
`disadvantage stems from the pressure exerted by the airstream, which
`Prohaska proposes can be eliminated by a “close fit of the parts,” i.e., by
`filling the void in the hollow of the spoiler. See id. at 3:7–21. “The fact that
`the motivating benefit comes at the expense of another benefit, however,
`should not nullify its use as a basis to modify the disclosure of one reference
`
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`with the teachings of another. Instead, the benefits, both lost and gained,
`should be weighed against one another.” Winner Int’l Royalty Corp. v.
`Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000).
`The rationale for adding Prohaska’s spoiler to Hoyler’s windshield
`wiper is suggested by Prohaska – it solves the lift-off problem faced by all
`windshield wipers.
`Petitioner asserts that a person of ordinary skill “would have
`understood that Prohaska taught away from using the Figure
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