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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`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00036
`U.S. Patent No. 6,944,905
`_____________________
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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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 RESPONSE
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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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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`Page
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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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`Level of ordinary skill in the art ...................................................................... 1
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`III. The combination of Prohaska and Hoyler does not render obvious claims
`13, 17, or 18 of the ’905 patent ........................................................................ 3
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`A.
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`The “End Cap” Limitations ................................................................... 3
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`1.
`
`2.
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`Prohaska and Hoyler do not teach or suggest the claimed
`“end cap[s]” ................................................................................. 3
`
`Prohaska and Hoyler do not teach or suggest “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),” as required by claim 13 ........................................... 7
`
`B.
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`Prohaska and Hoyler do not teach or suggest the “wind deflection
`strip” having “two diverging legs” in each challenged claim ............... 8
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`1.
`
`2.
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`3.
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`Conventional blades and beam blades are fundamentally
`different ....................................................................................... 8
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`The problems of wind lift and spoiler rigidity and mass
`reduction were not known in beam blades................................ 10
`
`Prohaska recognized the disadvantages and discouraged use
`of a hollow spoiler..................................................................... 11
`
`C.
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`The objective indicia of non-obviousness ........................................... 15
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`IV. Dr. Davis lacks credibility ............................................................................. 23
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`V.
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`Conclusion ..................................................................................................... 27
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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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`TABLE OF AUTHORITIES
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` Page
`
`Cases
`Alco Standard Corp. v. Tenn. Valley Auth., 808 F.2d 1490 (Fed. Cir.
`1986) ................................................................................................................... 20
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) ................................................ 6, 20
`
`Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) ............................... 2, 16
`
`InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327 (Fed. Cir.
`2014) ................................................................................................................. 7, 8
`
`Leo Pharms. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) ............................ 15, 16, 17, 23
`
`Metabolite Labs., Inc. v. Laboratory Corp. of Am. Holdings, 370 F.3d
`1354 (Fed. Cir. 2004) .......................................................................................... 23
`
`Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001) ......................................... 2, 3
`
`In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984) ....................................................... 20
`
`In re Sernaker, 702 F.2d 989 (Fed. Cir. 1983) ........................................................ 23
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) ........................ 16
`
`Transocean Offshore Deepwater Drilling Inc. v. Maersk Drilling
`USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012) ......................................................... 16
`
`Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc., 813 F.2d 1207 (Fed. Cir.
`1987) ................................................................................................................... 16
`
`WBIP, LLC v. Kohler Co., ___ F.3d ___, 2016 WL 3902668 (Fed. Cir.
`July 19, 2016)...............................................................................................passim
`
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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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`Statutes
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`35 U.S.C. § 103 .......................................................................................................... 1
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`35 U.S.C. § 112 ........................................................................................................ 26
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`
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`Other Authorities
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`37 C.F.R. § 42.51(b)(1)(iii) ...................................................................................... 26
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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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`Exhibit Number
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`LIST OF EXHIBITS
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`Description
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`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`Ex. 2010
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`Ex. 2011
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`Cross-reference key correlating exhibits across instituted
`inter partes review proceedings
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`Deposition of Petitioner’s Declarant, Gregory Davis, dated
`July 7, 2016
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`Declaration of Dr. Steven Dubowsky
`
`Curriculum Vitae of Dr. Steven Dubowsky
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`April 15, 2010 Trial Transcript from Robert Bosch LLC v.
`Pylon Manufacturing Corporation in the District of
`Delaware, Case No. 08-542 (SLR)
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`April 19, 2010 Trial Transcript from Robert Bosch LLC v.
`Pylon Manufacturing Corporation in the District of
`Delaware, Case No. 08-542 (SLR)
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`Declaration of Martin Kashnowski
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`U.S. Patent No. 2,596,063
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`U.S. Patent No. 3,418,679
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`Excerpt from Supplemental Initial Expert Report of Gregory
`Davis Regarding U.S. Patent Nos. 6,675,434, 6,836,926 and
`6,973,698 in In the Matter of Certain Wiper Blades, Inv. No.
`337-TA-816 before the U.S. International Trade
`Commission
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`Order No. 94 from In the Matter of Certain Wiper Blades,
`Inv. No. 337-TA-816 before the U.S. International Trade
`Commission
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`Ex. 2012
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`[Not used; reserved]
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`U.S. Patent No. 6,944,905
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`Exhibit Number
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`Description
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`Ex. 2013
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`Ex. 2014
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`Ex. 2015
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`Ex. 2016
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`Excerpt from Declaration of Gregory Davis, Ex. 1013 in
`IPR 2016-00034
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`Plaintiff Robert Bosch LLC’s Amended Response to
`Defendant Costco Wholesale Corporation’s First Set of
`Interrogatories (No. 1), dated June 2, 2015, in Robert Bosch
`LLC v. Alberee Products, Inc., in the District of Delaware,
`Case No. 12-574 (LPS)
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`Exhibit 24 to Complaint in In the Matter of Certain Wiper
`Blades, Inv. No. 337-TA-816 before the U.S. International
`Trade Commission (claim charts)
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`Exhibit 25 to Complaint in In the Matter of Certain Wiper
`Blades, Inv. No. 337-TA-816 before the U.S. International
`Trade Commission (claim charts)
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`v
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`I.
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`Introduction
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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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`Patent Owner Robert Bosch LLC (“Patent Owner” or “Bosch”) submits this
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`Patent Owner Response regarding U.S. Patent No. 6,944,905 (“the ’905 patent”).
`
`The Board instituted inter partes review of claims 13, 17, and 18 of the ’905 patent
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`as to whether they are obvious under 35 U.S.C. § 103 in view of GB 2,106,775 to
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`Prohaska (“Prohaska”) and DE 1,028,896 to Hoyler (“Hoyler”). For the reasons
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`set forth herein, Patent Owner respectfully submits that the Board should find the
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`challenged claims not unpatentable.
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`II. Level of ordinary skill in the art
`A person of ordinary skill in the art at the time of the invention of the ’905
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`patent (“POSITA”) would have had either an undergraduate degree in mechanical
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`engineering or a similar discipline, or several years of experience in the field of
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`wiper blade manufacture and design. Ex. 2003 at ¶¶ 16–19.
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`Petitioner asserts that “the level of skill level [sic] in the art of the ’905
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`patent included at least the ability to make the subject matter disclosed in [prior
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`art] patents and printed publications,”1 that “the level of skill level [sic] in the art
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`also included the ability to make predictable use of the materials and components
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`described above according to their established functions,” and that “[a] person of
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`1 Petitioner asserts that all but one reference—German Patent Publication No. DE
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`10000373—is prior art, and includes both Prohaska and Hoyler.
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`1
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`ordinary skill in the art would have the education and experience in mechanical
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`engineering to have knowledge of the information deployed in these patents and
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`printed publications.” Paper 1, Petition (“Pet.”) at 30–31. Petitioner is wrong,
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`confusing the “content of the prior art” Graham factor and the “level of skill in the
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`art” Graham factor. While the prior art can reflect the level of skill, the point of
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`identifying the level of skill is to avoid hindsight and add objectivity to the
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`obviousness analysis. “Skill in the art does not act as a bridge over gaps in
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`substantive presentation of an obviousness case, but instead supplies an important
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`guarantee of objectivity in the process.” Okajima v. Bourdeau, 261 F.3d 1350,
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`1355 (Fed. Cir. 2001). Compressing the content of the prior art and the skill of the
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`ordinary artisan into a single factor renders tautological the analysis of the scope of
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`the prior art—including the analysis of whether and how references would be
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`combined. It essentially assumes the sought-for result.
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`Despite listing it as part of the “patents and printed publications related to
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`wiper blades for motor vehicles,” Pet. at 30, Petitioner made a deliberate decision
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`not to rely on German Patent No. DE 197 36 368 (“Merkel”) as part of a
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`ground. See generally Pet. Petitioner did so presumably because it wanted to be
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`able to argue that it was presenting new prior art, (Pet. at 28), as Merkel was both
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`of record and described in the specification of the ’905 patent, (Ex. 1001 at Title
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`Page, 1:26–31). Petitioner cannot now use it as prior art showing knowledge of the
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`2
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`problem solved, even by calling it evidence of the “level of skill in the art.” This
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`would result in improperly using the level of skill “as a bridge over gaps in
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`substantive presentation.” Okajima, 261 F.3d at 1355.
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`III. The combination of Prohaska and Hoyler does not render obvious
`claims 13, 17, or 18 of the ’905 patent
`A. The “End Cap” Limitations
`Prohaska and Hoyler do not teach or suggest the claimed
`1.
`“end cap[s]”
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`Each challenged claim (claims 13, 17, and 18) requires that “an end cap (38)
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`is respectively disposed at both ends of the support element” on the beam-type
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`wiper blade. Ex. 1001 at 8:16–18, 9:57–58, 10:27–28.
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`The conventional blade of Prohaska2 does not describe an end cap. The
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`parties’ experts agree. Ex. 2003 at ¶ 69; Ex. 2002 at 112:2–6.3 Indeed, there are
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`2 The parties agree that Prohaska discloses only a conventional blade. Ex. 2003 at
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`¶¶ 56–57, 61; Ex. 2002 at 110:25–111:25; Ex. 1003 at 1:68–70, 2:35–36, 3:87–
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`107.
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`3 There are currently six pending IPRs filed by Petitioner that involve overlapping
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`prior art references and the same Petitioner Declarant, Dr. Davis, Case Nos.
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`IPR2016-00034; IPR2016-00036; IPR2016-00038; IPR2016-00039; IPR2016-
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`00040; and IPR 2016-00041. Because the same references appear in multiple IPRs
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`with different exhibit numbers, and because the parties agreed to conduct a single,
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`no discussions or figures of end caps in Prohaska, and, in fact, there are no length-
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`view drawings that could even show an end cap. See generally Ex. 1003.
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`The beam blade of Hoyler does not describe an end cap either. What
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`Petitioner points to is a clamp, not an end cap. As shown in Figure 1 below, “[t]he
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`longitudinal springs 5 are inserted in lateral slots, held together at the ends of the
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`bar by the clamps 6.” Ex. 1004 at 5.
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`A person of ordinary skill in the art at the time of the invention would not
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`have understood these “clamps” to cap the ends of the wiper blade, that is, to cover
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`the sharp corners that could scratch a car or a person. Ex. 2003 at ¶ 69.
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`consolidated deposition of Dr. Davis, Patent Owner provides herewith as Ex. 2001
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`(as it did during Dr. Davis’s deposition) a table showing the corresponding exhibit
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`numbers for references that appear in multiple IPRs.
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`In his declaration, Petitioner’s expert, Dr. Davis, opined that the clamp is an
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`end cap. But, at his deposition, he admitted that one of skill in the art at the time of
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`the invention would have known that an actual end cap must, among other things,
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`“completely cover the end of the wiper blade to prevent possible scratching or
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`things like that, from the metal.” Ex. 2002 at 118:19–119:18. This is consistent
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`with the description in the ’905 patent, (Ex. 1001 at FIG. 1 (end caps 38), 1:65–
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`2:5; 4:31–38; 5:3–8), and the understanding of a POSITA, (Ex. 2003 at ¶ 69). As
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`can be seen from Hoyler Figure 1, excerpted below, clamp 6 does not even cover
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`the sharp corners of the thin metal rails (exposed corners highlighted in yellow):
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`Not only did Dr. Davis admit at his deposition that the Hoyler clamp did not
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`meet the understanding of a person of ordinary skill at the time of the invention of
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`an “end cap,” (Ex. 2002 at 119:19–120:14), but also he admitted that his reasoning
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`for the obviousness of the end cap was entirely impermissible hindsight.
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`Specifically, Dr. Davis admitted that one of skill in the art would only now know
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`to change the Hoyler clamp into the claimed end cap:
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`Q. The clamp at callout 6 in Figure 1 of the Hoyler patent
`does not perform the last function that you mentioned for
`an end cap, correct?
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`MR. KLAIBER: Object to form.
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`A. No. I would say it at least partially performs that because
`it’s got a portion that comes off the end as well as a
`portion that goes laterally on either side. So at the very
`least, it would make it more difficult, but, of course, this
`is, like, a patent from, like, 1958. One of ordinary skill in
`the art would know that we tend to make the end caps
`cover the entire portion now. So that was just a simple
`design choice, but one of ordinary skill would understand
`that as an end cap, they would just realize that they
`would probably cover those, as you said, the corner
`sections.
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`Ex. 2002 at 119:19–120:14 (emphases added); see also 118:19–119:22 (describing
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`POSITA’s understanding of end caps). This textbook example of hindsight
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`illustrates why claims 13, 17, and 18 are not unpatentable in view of Prohaska and
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`Hoyler. See, e.g., In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
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`Patent Litig., 676 F.3d 1063, 1073 (Fed. Cir. 2012) (“This hindsight analysis is
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`inappropriate because obviousness must be assessed at the time the invention was
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`made.”); see also InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327,
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`1352 (Fed. Cir. 2014) (expert improperly “succumbed to hindsight bias in her
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`obviousness analysis” and “failed to address why one of ordinary skill in the art at
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`the time of the invention, which was 2001, would have motivated to combine these
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`three references.” (emphasis in original)).
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`2.
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`Prohaska and Hoyler do not teach or suggest “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),” as required by claim 13
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`Claim 13 requires that the “end caps” and the “device piece” (the part
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`connecting the wiper blade to the wiper arm) are both “disposed between and in
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`contact with” the “wind deflection strip.” As discussed above in § III.A.1, the
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`Hoyler clamp is not the claimed “end cap.” And, even if it could be considered to
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`be an end cap, the claimed “wind deflection strip,” which Petitioner admits is
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`absent from Hoyler, is not “disposed between and in contact with” these supposed
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`end caps. Also, as discussed above in § III.A.1, the conventional blade of
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`Prohaska does not have end caps. Therefore, the Prohaska spoiler is not “disposed
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`between and in contact with” both the end caps and the device piece. Thus, the
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`combination of Hoyler and Prohaska would not have taught or suggested this
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`limitation to a POSITA. Ex. 2003 at ¶ 70.
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`B.
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`Prohaska and Hoyler do not teach or suggest the “wind deflection
`strip” having “two diverging legs” in each challenged claim
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`Petitioner acknowledges that Hoyler does not teach or suggest the claimed
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`“wind deflection strip,” let alone one that has “two diverging legs,” as required by
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`claims 13, 17, and 18 of the ’905 patent. Pet. at 33, 35–37, 39, 41, 44, 46.
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`Petitioner contends this limitation is taught by the hollow-shaped conventional
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`spoiler shown in Prohaska’s Figure 3, and that it would have been obvious to add
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`this conventional spoiler onto a beam blade of Hoyler. But, it is apparent that
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`Petitioner’s conclusory assertions improperly invoke hindsight reasoning and
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`“rel[y] on [the ’905 Patent] itself as [its] roadmap for putting . . . pieces of a
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`‘jigsaw puzzle’ together.” InTouch Techs., 751 F.3d at 1351.
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`Putting aside its conclusory nature, Petitioner’s assertion fails for three
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`additional reasons: (1) the fundamental differences between conventional and
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`beam blades; (2) the problems of wind lift and spoiler rigidity and mass reduction
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`were not known in beam blades; and (3) the disadvantages mentioned by Prohaska
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`of its hollow-shaped Figure 3 conventional spoiler would have led a POSITA to
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`avoid using it, particularly given the highly sensitive beam blade.
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`1.
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`Conventional blades and beam blades are fundamentally
`different
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`Petitioner incorrectly treats conventional and beam blade technology as
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`interchangeable. While conventional and beam blades are superficially similar in
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`that they are both wiper blades, they are, in actual fact, fundamentally different
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`such that a POSITA would not have been motivated to combine conventional and
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`beam blade teachings at the time of the invention of the ’905 patent. Ex. 2003 at
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`¶¶ 21–25, 58–61, 65–67.
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`Conventional blades—dating back to the 1940’s—use a number of brackets
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`(or yokes) at multiple levels to capture the wiper strip at a number of spaced-apart
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`attachment points to the wiper strip. Ex. 2003 at ¶ 21; see also, e.g., Ex. 2008,
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`U.S. Patent No. 2,596,063. In conventional blades, the downward force is
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`transferred through the attachment points to the wiper strip. Ex. 2003 at ¶ 21; see
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`also, e.g., Ex. 2009, U.S. Patent No. 3,418,679.
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`However, this conventional blade design results in a number of
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`disadvantages, for example, (1) the superstructure fails to evenly distribute the
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`pressure applied by the wiper arm, resulting in pressure points on the rubber
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`wiping element and thus an uneven wipe; (2) when exposed to extreme weather,
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`the pressure-distributing frame of the conventional blades tends to become clogged
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`by ice and snow, which renders the blade rigid and impairs its performance; (3)
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`they did not meet the aesthetic requirements of purchasers; and (4) their high
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`profile causes wind lift issues and driver visibility problems. Ex. 2003 at ¶ 22.
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`Beam blade patents—as known to a POSITA at the time of the ’905
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`patent—sought to solve these problems by eliminating the yokes and utilizing a
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`low profile design. Ex. 2003 at ¶¶ 21–23, 58, 65. In a beam blade, the wiper arm
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`pressure is distributed by a spring-elastic support element over the entire length of
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`the wiper strip. Ex. 2003 at ¶¶ 58, 65. A beam blade’s wiping performance—
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`including its force distribution characteristic—is thus greatly affected by the small
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`changes in its structure, especially if additional components are attached to the
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`beam. Ex. 2003 at ¶¶ 58, 65. Therefore, the conventional thinking at the time was
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`to avoid any additional components on a beam blade, making the beam perform the
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`best, and keeping the profile of the wiper blade very low. Ex. 2003 at ¶¶ 58, 65.
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`This is further evidenced by the failure in the marketplace of a competitor’s
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`beam-blade product, the Trico Innovision wiper blade, which includes neither a
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`flexible spoiler nor end caps. Ex. 2007 at ¶ 7.
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`2.
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`The problems of wind lift and spoiler rigidity and mass
`reduction were not known in beam blades
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`While wind liftoff—the reduction of contact pressure against a windshield
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`that occurs at high speeds—was generally recognized as a problem in conventional
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`blades, Petitioner has failed to provide any evidence that it was a recognized
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`problem in beam blades. Ex. 2003 at ¶¶ 59–60, 65. Similarly, Petitioner has
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`offered no evidence that the problems of spoiler rigidity and mass reduction—
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`which Petitioner argues constitutes reasons to combine the references—were
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`known in beam blades.
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`Petitioner argues that Prohaska shows that these problems were generally
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`known about wipers. Pet. at 35–37 (discussing Ground 1). But, Prohaska
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`discloses only “retrofitting” a spoiler onto a conventional blade. Ex. 1003 at 1:68–
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`70, 2:35–36, 3:87–107; Ex. 2003 at ¶¶ 56–57, 61; Ex. 2002 at 110:25–111:25.
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`And, Hoyler—the beam blade reference in the instituted ground—does not have a
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`spoiler, and as Dr. Davis admitted, it does not recognize or address the wind lift
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`problem in beam blades. Ex. 2002 at 129:17–130:14. This makes sense: while
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`beam blades were known in paper patents prior to Prohaska (Hoyler, after all, pre-
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`dates it), the conventional wisdom taught to avoid adding anything that would alter
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`a beam blade’s highly-sensitive profile because even a slight would have a
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`negative impact on blade performance. Ex. 2003 at ¶¶ 65, 58.
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`3.
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`Prohaska recognized the disadvantages and discouraged use
`of a hollow spoiler
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`Prohaska recognized that “[b]ecause the back 31 of the resilient strip is
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`developed as a hollow member with about triangular cross-section, there is a
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`hollow space between the surfaces 21 and 22 which possibly migh[t] be
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`disadvantageous.” Ex. 1003 at 3:3–6 (emphasis added). Recognizing the
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`potential disadvantages, Prohaska taught that:
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`This disadvantage is avoided in a wiper element
`according to Figure 6 in that the head 11 includes
`inclined surface 18 which closely rests against back 31 of
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`11
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`U.S. Patent No. 6,944,905
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`a flexible strip 20 and is lapped over by it. The back 31
`of the flexible strip is on both sides elongated beyond the
`inclined surface 18 of the head 11 of the wiper element
`10 and forms the wind deflector surface 21. In this case
`the somewhat smaller, downwardly directed elongation
`23 is to be exposed to the air stream. The pressure
`exerted by the air stream on the back 31 of the flexible
`strip 30 can especially effectively be transmitted to head
`11 of the wiper element due to the close fit of the parts,
`so that the tendency of their being lifted is dim[in]ished.
`The air behind the wiper element 10 can be carried away
`via the elongation 22.
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`Ex. 1003 at 3:7–22 (emphasis added). A POSITA would have understood that the
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`disadvantage mentioned in Prohaska is that the hollow shape of the Figure 3
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`spoiler would lead to aerodynamically excited, degrading vibrations—which would
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`disturb wiping ability and lead to premature failure. Ex. 2003 at ¶ 66. And, thus a
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`POSITA would have understood that Prohaska taught away from using the Figure
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`3 hollow spoiler at all. Ex. 2003 at ¶ 66.
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`Dr. Davis agrees regarding the perceived disadvantages of using the
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`Prohaska hollow spoiler, and also acknowledges that further stiffening of the
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`spoiler would be needed:
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`Q. Now, the Prohaska patent says that the hollow
`space in the spoiler that’s integral with the flexible
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`U.S. Patent No. 6,944,905
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`strip in Figure 3 might possibly be
`disadvantageous, correct? And I am looking at
`page -- page numbered 3 at the top in the left-hand
`column at the top around line 5.
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`
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`MR. KLAIBER: Object to the form.
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` A. Yes. It says it might possibly be disadvantageous.
`So it’s kind of one of the design trade offs that you
`would be making is that you could make
`something like that, and it would certainly be
`lighter, but there could be a bit of a tradeoff there.
`
`Q. What would the tradeoff be?
`
`A. That potentially it could be less structurally rigid
`so that it could potentially -- you would have to
`look at whether that hollow space would still allow
`it to perform its function so that it wouldn’t
`deform, let’s say, under load. Things like that.
`
`Q. So am I correct that a windshield wiper designer
`looking at the Prohaska patent would know that
`they should make the spoiler in Figure 3 out of a
`material that is rigid enough so it wouldn’t deform
`under load?
`
`MR. KLAIBER: Objection to form.
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`13
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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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`A. I mean, I suppose that could be one way you could
`do it, but it would be one of your considerations is
`to make sure that it’s strong enough. That’s why I
`said they said it might be disadvantageous.
`
`Q. Now, am I correct that the Prohaska patent
`describes the flexible strip to which you previously
`referred as stiffening the wiper element?
`
`MR. KLAIBER: Object as to form.
`
`Q. I am looking at what it says in column -- page 1,
`line -- around line 50.
`
`A. (Witness reviewing document). So they are
`talking about the wiper element itself, the rubber
`wiper element, which, as we know, is pretty
`floppy, let’s say, if it’s not hooked up. You could
`use this flexible strip to help provide some of the
`structure to give that wiping element shape.
`
`Ex. 2002 at 113:15–115:14.
`
`As discussed above, conventional and beam blades are fundamentally
`
`different, and beam blades are highly sensitive, such that even a slight alteration
`
`will significantly impact beam blade performance. Therefore, a POSITA would
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`have thought that aerodynamically excited, degrading vibration problems relating
`
`
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`14
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`
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`to a hollow spoiler—discussed above—would be at least as problematic in a
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`U.S. Patent No. 6,944,905
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`sensitive beam blade as in Prohaska’s conventional blade. Ex. 2003 at ¶ 66.
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`Indeed, the conventional wisdom at the time of the invention of the ’905
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`patent was to avoid adding anything that might have altered the beam blade and,
`
`thus, its effectiveness, especially the additional engineering of stiffening
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`structures4 that would have been required to combat the “deform[ation]” or
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`“flopp[iness]” expected in a hollow spoiler. Accordingly, a POSITA would not
`
`have thought to add Prohaska’s Figure 3 conventional spoiler onto the beam blade
`
`of Hoyler—let alone would have had any expectation of success. Ex. 2003 at ¶¶
`
`65–67.
`
`C. The objective indicia of non-obviousness
`“The objective indicia of non-obviousness play an important role as a guard
`
`against the statutorily proscribed hindsight reasoning in the obviousness analysis.”
`
`WBIP, LLC v. Kohler Co., ___ F.3d ___, 2016 WL 3902668, at *5 (Fed. Cir. July
`
`19, 2016); see also Leo Pharms. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013)
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`(“[O]bjective indicia of nonobvious are crucial in avoiding the trap of hindsight
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`when reviewing, what otherwise seems like, a combination of known elements.”).
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`“‘[E]vidence of secondary considerations may often be the most probative and
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`4 Prohaska teaches that its spoiler will stiffen the wiper blade. Ex. 1003 at 1:65–
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`67.
`
`
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`15
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`
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`cogent evidence in the record.’” WBIP, 2016 WL 3902668, at *5 (quoting
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`U.S. Patent No. 6,944,905
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`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983); and citing
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`Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc., 813 F.2d 1207, 1212 (Fed. Cir. 1987)
`
`and Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 36 (1966)).
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`Objective considerations may include, for example, long-felt but unresolved
`
`need, industry praise and awards, failure of others, commercial success, licensing,
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`unexpected results, and copying. WBIP, 2016 WL 3902668, at *7; Transocean
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`Offshore Deepwater Drilling Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340,
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`1350 (Fed. Cir. 2012); Leo. Pharms., 726 F.3d at 1358–59. All of these
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`considerations are implicated with respect to the challenged claims. And, while
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`there must be a nexus between the objective evidence and the merits of the claimed
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`invention, the nexus is presumed, where, as here, “the patentee shows that the
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`asserted objective evidence is tied to a specific product and that product ‘is the
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`invention disclosed and claimed in the patent.’” WBIP, 2016 WL 3902668, at *6.
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`“Conventional” wiper blades were long known in the art prior to the
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`invention at issue here. Ex. 2007 at ¶ 2; Ex. 2003 at ¶ 21. However, such
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`conventional blades have a number of disadvantages compared to what are now
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`commonly referred to as “beam” or “flat” wiper blades. Ex. 2007 at ¶ 2; Ex. 2003
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`at ¶¶ 22–23. For example, conventional blades can be clogged with ice and snow,
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`which can cause the blade to freeze and stick and lead to banding, which can result
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`
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`16
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`
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`in poor visibility. Ex. 2007 at ¶ 2; Ex. 2003 at ¶ 22. They are also prone to
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`U.S. Patent No. 6,944,905
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`wearing unevenly, with the portion of the wiper strip underneath the pressure
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`points wearing first, which can lead to streaking and poor visibility. Ex. 2007 at ¶
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`2; Ex. 2003 at ¶ 22. All of these problems with conventional wiper blades were
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`well known in the industry, but solutions to these problems were not. Ex. 2007 at ¶
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`2; Ex. 2005 at 271:4–22.
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`While beam blades were described in paper patents long before the invention
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`at issue here, (Ex. 2003 at ¶ 23), there were no commercially viable beam blades
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`prior to 2002, when, after significant engineering difficulties, Bosch satisfied the
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`above-described unresolved long-felt need by introducing a wiper blade called
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`Aerotwin into the automotive aftermarket, first in Europe and then in the United
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`States, (Ex. 2007 at ¶ 3, Ex. 2005 at 346:16–348:2).5 The Aerotwin was the first
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`commercially successful beam blade in the United States aftermarket, and was
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`given a number of awards, including both the Pace award and the Automechanika
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`5 WBIP, 2016 WL 3902668, at *7 (“Evidence of a long felt but unresolved need
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`tends to show non-obviousness because it is reasonable to infer that the need would
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`have not persisted had the solution been obvious.”); Leo Pharms., 726 F.3d at
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`1359.
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`17
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`
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`award. Ex. 2007 at ¶ 3; Ex. 2005 at 239:6–16.6 The Pace award, in particular,
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`described the use of a flexible spoiler on the Aerotwin blade. Ex. 2007 at ¶ 3; Ex.
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`2005 at 337:10–23.
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`In 2005, Bosch introduced the Icon wiper blade to the United States
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`aftermarket. Ex. 2007 at ¶ 5. The Icon blade was a beam blade designed for use in
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`more applications with fewer part numbers than the Aerotwin blade. Ex. 2007 at ¶
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`5. The Icon blade was subject to praise and commercial success: (1) the demand
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`from Bosch customers for the Icon blade was considerably high, even though it
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`was more expensive than conventional blades; and (2) customers expressed a great
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`deal of exciteme
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