Paper No. ______
`Filed: October 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Costco Wholesale Corporation
`Petitioner
`
`v.
`
`Robert Bosch LLC
`Patent Owner
`
`
`
`U.S. Patent 6,944,905
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 6,944,905
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
`
`
`
`
`
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`
`
`

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`
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1 
`III. 
`PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103............ 3 
`IV.  GROUNDS FOR STANDING ........................................................................ 3 
`V. 
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED UNDER 37 U.S.C. § 312 AND 37 C.F.R. §§ 42.22(A)(1)
`AND 42.104(B)(1)-(2) ..................................................................................... 4 
`A. 
`Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1) .... 4 
`
`B. 
`
`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2) ................ 4 
`
`VI.  THE ‘905 PATENT ......................................................................................... 4 
`A. 
`Prosecution and Issuance of the ‘905 Patent ......................................... 9 
`
`B. 
`
`Claim Construction ............................................................................. 19 
`
`VII.  OVERVIEW OF PRIOR ART ...................................................................... 20 
`A.  U.K. Patent No. G.B. 2,106,775 to Prohaska et al. (“Prohaska) (Ex.
`1003) .................................................................................................... 21 
`
`B. 
`
`C. 
`
`German Patent No. DE1028896 to Hoyler (“Hoyler”) (Ex. 1004) ..... 23 
`
`German Patent Publication No. DE 19736368 to Merkel, U.S. Patent
`No. 6,292,974 to Merkel et al. (“Merkel”) (Exs. 1011, 1012) ............ 26 
`
`D.  U.S. Patent No. 4,976,001 to Wright et al. (“Wright”) (Ex. 1014) ..... 27 
`
`VIII.  DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY
` ....................................................................................................................... 28 
`A. 
`Legal Standards ................................................................................... 28 
`
`Obviousness .............................................................................. 28 
`1. 
`Level of Skill in the Art .............................................................. 30 
`2. 
`Claim 13 Is Unpatentable .................................................................... 31 
`i
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`B. 
`
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`

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`
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`C. 
`C.
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`D. 
`D.
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`Claim 17 Is Unpatentable .................................................................... 37 
`Claim 17 Is Unpatentable .................................................................. ..37
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`Claim 18 Is Unpatentable .................................................................... 42 
`Claim 18 Is Unpatentable .................................................................. ..42
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`CONCLUSION ............................................................................................ ..47
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`IX.  CONCLUSION .............................................................................................. 47 
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`IX.
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`ii
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`
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`LIST OF EXHIBITS
`Description
`
`U.S. Patent No. 6,944,905 to De Block et al.
`
`Proof of Service Dated October 10, 2015
`
`U.K. Patent No. GB 2,106,775 to Prohaska et al.(“Prohaska”)
`
`German Patent No. DE1028896 to Hoyler (“Hoyler”), with trans-
`lation
`
`File History of U.S. Patent No. 6,944,905 (Application No.
`10/048,202)
`
`Robert Bosch LLC’s Opening Claim Construction Brief at 11,
`April 24, 2015
`
`Declaration of Dr. Gregory Davis, sworn to October 9, 2015 (the
`“Davis Decl.”)
`
`Declaration of Dr. Eric Maslen, sworn to April 23, 2015 (the
`“Maslen Decl.”) and accompanying Technology Tutorial
`
`Declaration of Dr. Daniel H. Kruger, sworn to October 9, 2015
`(the “Kruger Decl.”)
`
`U.S. Patent Application Publication No. 2003/0014828 to Edner-
`Walter et al. (Edner-Walter)
`
`German Patent Publication No. DE 19736368 to Merkel et al.
`
`U.S. Patent No. 6,292,974 to Merkel et al. (“Merkel”)
`
`German Patent Publication. No. DE 10000373 to Eckhardt et al.
`(“Eckhardt”), with translation
`
`U.S. Patent No. 4,976,001 to Wright et al. (“Wright”)
`
`U.K. Patent No. GB 2346318A to Lumsden et al.(“Lumsden”)
`
`Exhibit
`
`1001
`
`1002
`
`1003
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`1004
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`1005
`
`1006
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`1007
`
`1008
`
`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
`
`iii
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`

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`
`
`Exhibit
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`Description
`
`U.S. Patent 3,418,679 to Barth et al. (“Barth”)
`
`Animation of Appeal-Prohaska; Kruger Decl. Appendix A
`
`Animation of Hoyler-Prohaska; Kruger Decl. Appendix B
`
`Illustration Claim 13; Kruger Decl. Appendix C
`
`Illustration Claim 17; Kruger Decl. Appendix D
`
`Illustration Claim 18; Kruger Decl. Appendix E
`
`iv
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`

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`
`
`I.
`
`Introduction
`Costco Wholesale Corporation (“Petitioner” or “Costco”) requests inter
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`partes review (IPR) of Claims 13, 17, and 18 of U.S. Patent No. 6,944,905 (the
`
`“‘905 patent”) (Ex. 1001). This petition demonstrates there is a reasonable
`
`likelihood that Petitioner will prevail in proving, by at least a preponderance of the
`
`evidence, that Claims 13, 17, and 18 of the ‘905 patent encompass subject matter
`
`that is unpatentable under 35 U.S.C. § 103(a)(2006) in view of prior art that the
`
`Office did not have or did not fully consider during prosecution. Claims 13, 17,
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`and 18 of the ‘905 patent should accordingly be canceled.
`
`II. Mandatory Notices Under 37 C.F.R. § 42.8
`Real Party-in-Interest: Costco is the real party-in-interest seeking IPR.
`
`Related Matters: The ‘905 Patent is asserted in Robert Bosch LLC v. Alberee
`
`Products Inc. et al., Civil Action No. 12-574-LPS (consolidated with Civil Action
`
`No. 14-142-LPS), currently pending in the United States District Court for the
`
`District of Delaware, and was previously asserted in Robert Bosch LLC v. Trico
`
`Prods. Corp., No. 12-cv-437 (N.D. Ill.), Robert Bosch LLC v. Corea Autoparts
`
`Producing Corp. et al., No. 11-14019 (E.D. Mich.), Robert Bosch LLC v. UL
`
`Enterprises LLC et al., No. 1:11cv2437 (N.D. Ill.), Robert Bosch LLC v. Jiujiang
`
`Yada Traffic Equipment Co. et al., No. 2:11cv1762 (D. Nev.), Robert Bosch LLC
`
`v. Corea Autoparts Producing Corp. et al., No. 2:10-cv-1924 (D. Nev.), Robert
`
`
`
`1
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`

`
`
`
`Bosch LLC v. ADM 21 Co. et al., No. 2:10-cv-1930 (D. Nev.), Robert Bosch LLC
`
`v. Jamak Fabrication-Tex Ltd., No. 1:07cv676 (D. Del.), Robert Bosch LLC v.
`
`Jiujiang Yada Traffic Equipment Co. et al., No. 2:10cv1926 (D. Nev.), Robert
`
`Bosch LLC v. Ningbo Xinhai Aiduo Automobile Wiper Blade Manufactory Co., No.
`
`2:14cv1855 (D.Nev.), Robert Bosch LLC v. Ocean Automobile Apparatus Co., No.
`
`2:10cv1928 (D. Nev.), Robert Bosch LLC v. Old World Industries, Inc., No.
`
`1:10cv1437 (N.D. Ill.), Robert Bosch LLC v. Pylon Manufacturing Corp, No.
`
`1:08cv542 (D. Del.), Robert Bosch LLC v. SHB Int'l, Inc et al, No. 2:10cv1929 (D.
`
`Nev.), Robert Bosch LLC v. Transbec, No. 2:10cv1933 (D. Nev.), Robert Bosch
`
`LLC v. Unipoint Electric Mfg. Co., Ltd. et al, No. 2:10cv1932 (D. Nev.), Robert
`
`Bosch LLC v. Zhejiang Wandeyuan Vehicle Fittings Co., No. 2:10cv1931 (D.
`
`Nev.), and In re Certain Wiper Blades, Investigation No. 337-TA-816 (U.S. Int’l
`
`Trade Comm’n). It is anticipated that additional Petitions for Inter Partes Review
`
`may also be filed in relation to one or more of U.S. Patents Nos. 6,836,926,
`
`6,973,698, No. 7,228,588, No. 7,484,264, No. 8,099,823, No. 6,292,974, and No.
`
`8,544,136, which are also asserted in the District of Delaware matter. Petitioner is
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`not aware of any other current judicial or administrative matters that would affect,
`
`or be affected by, a decision in this proceeding.
`
`Lead and Back-Up Counsel and Service Information: The following
`
`designates lead counsel, backup counsel, and service information for the Petitioner.
`
`
`
`2
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`

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`
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`Petitioner consents to electronic service.
`
`
`
`Lead Counsel
`Richard M. Koehl
`Reg. No. 54,231
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6062
`
`Fax (212) 422-4726
`richard.koehl@hugheshubbard.com
`
`III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103
`The required fees are submitted herewith. If any additional fees are due at
`
`Back-Up Counsel
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6125
`
`Fax (212) 422-4726
`james.klaiber@hugheshubbard.com
`
`any time during this proceeding, the Office may charge such fees to Deposit
`
`Account No. 083264.
`
`IV. Grounds for Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘905 patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the ‘905 patent. This petition is being filed less
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`than one year after Petitioner was served with a complaint alleging infringement of
`
`the ‘905 patent. See Proof of Service on October 10, 2014 (Ex 1002).
`
`
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`3
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`

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`
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`V.
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`Statement of Precise Relief Requested for Each Claim Challenged under
`37 U.S.C. § 312 and 37 C.F.R. §§ 42.22(a)(1) and 42.104(b)(1)-(2)
`
`A. Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1)
`Petitioner seeks cancellation of Claims 13, 17, and 18.
`
`B.
`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2)
`Ground #1. Claims 13, 17, and 18 encompass subject matter that is
`
`unpatentable under 35 U.S.C. § 103(a) (2006) in view of Prohaska (Ex. 1003) and
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`Hoyler (Ex. 1004).
`
`VI. The ‘905 Patent
`The ‘905 patent discloses and claims a windshield wiper assembly that
`
`comprises three basic elements, namely: (i) a flexible spring support element, (ii) a
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`wiper strip, and (iii) a triangular wind deflector. The ‘905 patent acknowledges
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`that prior art windshield wiper apparatus incorporated these three elements (Ex.
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`1001 at 1:6-40, citing DE 19736368 (to Merkel, Ex. 1011 (later issued as U.S.
`
`Patent No. 6,292,974 to Merkel et al. (Ex. 1012) (“Merkel”)). Figure 1 of the ‘905
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`patent, disclosing a flexible spring support element, a wiper strip, a triangular wind
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`deflector positioned above the support element having a curved concave surface
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`identified as a “fluted surface,” a “fluted” wiper arm connector, and “fluted” end
`
`caps, is reproduced below:
`
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`4
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`
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`‘905 patent at 3: 60-4:21; 4:48-51; 5:3-9.
`
`The ‘905 patent states that prior art wind deflectors, being solid, were costly,
`
`heavy, stiff, and required “a more powerful drive system as well as a more
`
`expensive design of the reciprocating mechanism connected to this drive unit.” Id.,
`
`1:40-48. As a solution to these problems, the ‘905 patent discloses and claims
`
`wiper apparatus comprising a hollow wind deflector strip and having the general
`
`configuration depicted at left, below:
`
`
`
`5
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`

`
`
`
` ‘905 Patent Fig. 2 Prohaska Fig. 3
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`Id. at 4:22-5:11.
`
`
`
`But long prior to the priority date of the ‘905 patent, it was known it was
`
`known to provide a windshield wiper assembly with a hollow wind deflection strip
`
`as shown by Prohaska, Figure 3 of which is reproduced at right, above. Prohaska
`
`also 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., 1:68-70, 4:3-7. In addition, Prohaska
`
`discloses wind deflectors having curved concave (i.e, fluted) surfaces (Figs. 2, 4).
`
`It was also known, more than one year before the priority date of the ‘905
`
`Patent, that lightweight components were desirable in a windshield wiper
`
`assembly. German Patent No. DE 1028896 to Hoyler (“Hoyler”) (Ex. 1004) taught
`
`that by reducing the weight of a wiper blade, the stress upon drive elements is
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`
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`6
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`

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`
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`reduced, less wear and tear occurs after identical running time, and increased wiper
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`speeds are possible. See, e.g., Hoyler, col. 2.1 Figure 1 of Hoyler, reproduced
`
`below shows flexible spring support elements 2, a wiper strip 1, a fluted wiper arm
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`connector 9, and fluted end caps 6:
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`Hoyler Fig. 1
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`Cross-section A-A
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`Cross-section B-B
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`Cross-section C-C
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`Hoyler at 1-2.
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`During the prosecution of the ‘905 patent, the Examiner did not have the
`
`benefit of Prohaska or Hoyler. In addition, the Examiner was not aware of the
`
`1 Citations to Hoyler are made to the translation included in Ex. 1004.
`7
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`
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`disclosure of German Pub. No. DE 10000373 to Eckhardt et al. (“Eckhardt”) (Ex.
`
`1013), which was filed January 7, 2000, before the priority date of the ‘905 patent,
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`Figure 3 of which is reproduced below:
`
`
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`
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`Eckhardt describes the same problem as the ‘905 patent and discloses the
`
`same solution, i.e., a hollow wind deflection strip. Eckhardt, cols. 3-4.2 It is well-
`
`settled that: “Independently made, simultaneous inventions, made within a
`
`comparatively short space of time, are persuasive evidence that the claimed
`
`apparatus was the product only of ordinary mechanical or engineering skill.” Geo
`
`M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir.
`
`2010) (internal quotation marks omitted). Accordingly, Eckhardt “is strong
`
`evidence of what constitutes the level of ordinary skill in the art,” id. at 1306, and
`
`that a hollow wind deflection strip was an obvious solution to the weight and
`
`stiffness problems that the applicants for the ‘905 patent addressed – and as
`
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`2 Citations to Eckhardt are made to the translation included in Ex. 1013.
`8
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`
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`Prohaska had disclosed many years previously.
`
`A.
`
`Prosecution and Issuance of the ‘905 Patent
`
`The file history of the ‘905 patent is attached hereto as Exhibit 1004. The
`
`application that led to the ‘905 patent, Application No. 10/048,202 “the ‘202
`
`application”), was filed in the U.S. on February 28, 2002 and claimed priority to
`
`International Application No. PCT/DE01/01304 filed April 4, 2001, which itself
`
`claimed priority to German patent applications filed May 29 and September 26,
`
`2000. See Ex. 1005 at 182. Of application claims 1-47 that were filed, application
`
`claims 41, 45, and 46 issued as claims 13, 17, and 18, respectively. Id. at 350.
`
`Original application claims 1-20 were cancelled, and new application claims 21-40
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`(mis-numbered as 1-20) were added, in an amendment filed simultaneously with
`
`the filing of the ‘202 application. Application claims 21, 22, 36, and 37 are
`
`reproduced below. Id. at 150-153.
`
`[21.]
`
`A wiper blade for cleaning windows, in particular of motor
`
`vehicles, having a band-like, elongated, spring-elastic support element (12), whose
`
`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 whose upper
`
`band surface (11) has a wind deflection strip (42) disposed on it, which extends in
`
`the longitudinal direction of the support element (12), is provided with an attack
`
`
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`9
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`

`
`
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`surface (54) oriented toward the main flow of the relative wind, and is made of an
`
`elastic material, characterized in that the wind deflection strip (42, 142, 242) has
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`two diverging legs (44, 46), viewed in cross section, which are connected to each
`
`other at a common base (48) and whose free ends oriented toward the window (22)
`
`are supported on the wiper blade (10), and an attack surface (54) is embodied on
`
`the outside of the one leg (44).
`
`[22.]
`
`The wiper blade according to claim 1, characterized in that the
`
`upper band surface (11) of the support element (12), in its middle section, the
`
`wiper blade part (15) of a device, which is for connecting the wiper blade (10) to a
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`reciprocally driven wiper arm (16), is supported, that an end cap (38) is
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`respectively disposed at both ends of the support element (12), and that a section
`
`(40) of the wind deflection strip (42) is disposed between each respective end cap
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`(38) and the device piece (15).
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`[36.]
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`The wiper blade according to claim 2, characterized in that the
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`end caps (38) are provided with a flute (68), which extends in the projection of the
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`flute of the attack surface (54) of the wind deflection strip.
`
`[37.]
`
`The wiper blade according to claim 2, characterized in that the
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`wiper blade part (15) of the connecting device is provided with a flute (70), which
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`extends in the projection of the flute of the attack surface (54) of the wind
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`deflection strip (42).
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`10
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`
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`In a non-final office action dated June 28, the Examiner rejected all pending
`
`application claims 21-40. Id. at 200-208. All claims were rejected under 35 U.S.C.
`
`§112 ¶2 for indefiniteness, due to various informalities, including the lack of
`
`specificity regarding the location of the “cross section” recited in independent
`
`application claim 21, and the absent antecedent basis for the phrase “the projection
`
`of the flute of the attack surface” in application claims 36-37. Id. at 203. Claims
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`21, 23-26, 28, 30-31, 35, and 38-39 were rejected under 35 U.S.C. §102(e) as
`
`being anticipated by U.S. Patent Publication No. 3,317,945 to Edner-Walter (Exh.
`
`1010) (“Edner-Walter”)3. Id. at 204-205. According to the Examiner, Edner-
`
`Walter, Figure 6 of which is reproduced below, disclosed a deflection strip with
`
`diverging legs having a fluted attack surface, which in turn engaged an upper band
`
`surface of an elastic support element that engaged a rubber wiper strip. Id. at 204;
`
`citing Edner-Walter, Fig. 6, ¶¶ 0055-0056.
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`
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`
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`3 Throughout the ‘202 application prosecution, Edner-Walter was referred to incor-
`rectly as “Egner-Walter.” Id. at e.g. 204.
`11
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`

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`
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`Claims 29 and 33 were rejected under 35 U.S.C. §103(a) as obvious over
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`Edner-Walter in view of German patent publication DE 19736368 to Merkel
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`(corresponding U.S. Patent issued as No. 6,292,974 to Merkel et al.) (“Merkel”)
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`(Exh. 1012). Id. at 205-206. The Examiner objected to claims 22, 27, 32, 34, 36-
`
`37, and 40 as being dependent upon a rejected base claim, but indicated they would
`
`be allowable if rewritten in independent form and to overcome the rejections under
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`35 U.S.C. §112 ¶2. Id. at 207.
`
`On September 3, 2004, the Applicant submitted a response to the Office
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`action in which, inter alia, application claim 21 was amended, claims 22, 27, 32,
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`34, 36-37, and 40 were cancelled, and new claims 41-47 were added. Id. at 226-
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`245. Claim 21 was amended to recite a “transverse” cross section, and new claims
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`41-47 purportedly included, respectively, the limitations of claims 22, 27, 32, 34,
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`36-37, and 40 rewritten in independent form and to address the indefiniteness
`
`rejections under 35 U.S.C. §112 ¶2. Id. at 230, 233-240, 242. However, in
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`rewriting claims 36-37 as new claims 45-46, the Applicant did not change the
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`recitation of “the flute of the attack surface,” which was referred to in the
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`Examiner’s rejection of original application claims 36-37. Id. at 237-239. As to the
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`rejections under 35 U.S.C. §102(e) as anticipated by Edner-Walter, the Applicant
`
`argued that, being formed of “solid material,” it failed to show two divergent legs,
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`which according to the Applicant, “cannot be equated with the outer sides of [a]
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`
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`12
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`

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`
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`triangle,” and “must enclose a hollow chamber between them.” Id. at 242-243. On
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`October 1, 2004, the Applicant submitted a Supplemental Amendment that
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`purported to correct “an arguable indefinite and awkward wording from the
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`original translation of claim 41,” and stated that “no substantive amendments were
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`made to the claims.” Id. at 262. After this amendment, application claims 21, 41,
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`45, and 46 appeared as reproduced below. Id. at 251, 254-255, 257-260.
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`21. (previously presented) A wiper blade for cleaning windows, comprising:
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`A band-like, elongated, spring-elastic support element (12), wherein a whose
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`lower band surface (13) of the support element 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,
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`wherein the wiper strip can be placed against a window, and wherein an and whose
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`upper band surface (11) of the wiper strip has a wind deflection strip (42), disposed
`
`on it, which extends in the longitudinal direction of the support element (12),
`
`provided with an attach surface (54) oriented toward the main flow of the relative
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`wind, and is made of an elastic material, characterized in that wherein the wind
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`deflection strip (42, 142, 242) has two diverging legs (44, 46), viewed in transverse
`
`cross section, which wherein the two diverging legs are connected to each other at
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`a common base (48) and whose wherein free ends of the two diverging legs
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`oriented toward the window (22) are supported on the wiper blade (10), and an the
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`
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`13
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`

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`
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`attach surface (54) is embodied on the outside of the one leg (44).
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`41. (currently amended) A wiper blade for cleaning windows, comprising:
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`a band-like, elongated, spring-elastic support element (12), whose wherein a
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`lower band surface (13) oriented toward the window (22) has an elongated, rubber-
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`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 whose wherein an
`
`upper band surface (11) of the wiper strip has a wind deflection strip (42) disposed
`
`on it, which wherein the wind deflection strip extends in the a longitudinal
`
`direction of the support element (12), is provided with an attach surface (54)
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`oriented toward the main flow of the relative wind, and is made of an elastic
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`material, wherein the wind deflection strip (42, 142, 242) has two diverging legs
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`(44, 46), viewed in transverse cross section, which wherein the two diverging legs
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`are connected to each other at a common base (48) and whose wherein free ends of
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`the two diverging legs oriented toward the window (22) are supported on the wiper
`
`blade (10), and the attach surface (54) is embodied on the outside of the one leg
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`(44), wherein the upper band surface (11) of the support element (12), in its middle
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`section, includes a wiper blade part (15) of a device, which is for connecting the
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`wiper blade (10) to a reciprocally driven wiper arm (16)[[,]] and is supported,
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`wherein an end cap (38) is respectively disposed at both ends of the support
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`element (12), and wherein a section (40) of the wind deflection strip (42) is
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`14
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`disposed between each respective end cap (38) and the device piece (15).
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`45. (previously presented) A wiper blade for cleaning windows, comprising:
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`a band-like, elongated, spring-elastic support element (12), whose lower
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`band surface (13) oriented toward the window (22) has an elongated, rubber-elastic
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`wiper strip (14), which can be placed against the window, disposed on it so that the
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`longitudinal axes of these two parts are parallel and whose upper band surface (11)
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`has a wind deflection strip (42) disposed on it, which extends in the longitudinal
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`direction of the support element (12), is provided with an attach surface (54)
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`oriented toward the main flow of the relative wind, and is made of an elastic
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`material, wherein the wind deflection strip (42, 142, 242) has two diverging legs
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`(44, 46), viewed in transverse cross section, which are connected to each other at a
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`common base (48) and whose free ends oriented toward the window (22) are
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`supported on the wiper blade (10), and the attach surface (54) is embodied on the
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`outside of the one leg (44), wherein the upper band surface (11) of the support
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`element (12), in its middle section, the wiper blade part (15) of a device, which is
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`for connecting the wiper blade (10) to a reciprocally driven wiper arm (16), is
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`supported, wherein an end cap (38) is respectively disposed at both ends of the
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`support element (12), wherein a section (40) of the wind deflection strip (42) is
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`disposed between each respective end cap (38) and the device piece (15), and
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`wherein the end caps (38) are provided with a flute (68), which extends in a
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`projection of the flute of the attach surface (54) of the wind deflection strip.
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`46. (previously presented) A wiper blade for cleaning windows, comprising:
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`a band-like, elongated, spring-elastic support element (12), whose lower
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`band surface (13) oriented toward the window (22) has an elongated, rubber-elastic
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`wiper strip (14), which can be placed against the window, disposed on it so that the
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`longitudinal axes of these two parts are parallel and whose upper band surface
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`(11) has a wind deflection strip (42) disposed on it, which extends in the
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`longitudinal direction of the support element (12), is provided with an attach
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`surface (54) oriented toward the main flow of the relative wind, and is made of an
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`elastic material, wherein the wind deflection strip (42, 142, 242) has two diverging
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`legs (44, 46), viewed in transverse cross section, which are connected to each other
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`at a common base (48) and wherein free ends oriented toward the window (22) are
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`supported on the wiper blade (10), and the attach surface (54) is embodied on the
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`outside of the one leg (44), wherein the upper band surface (11) of the support
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`element (12), in its middle section, the wiper blade part (15) of a device, which is
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`for connecting the wiper blade (10) to a reciprocally driven wiper arm (16), is
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`supported, wherein an end cap (38) is respectively disposed at both ends of the
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`support element (12), and wherein a section (40) of the wind deflection strip (42) is
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`disposed between each respective end cap (38) and the device piece (15), and the
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`wiper blade part (15) of the connecting device is provided with a flute (70), which
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`16
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`extends in a projection of the flute of the attach surface (54) of the wind deflection
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`strip (42).
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`On December 15, 2004, the Examiner issued a Final Office Action rejecting
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`application claims 21, 23-26, 28-31, 33, 35, and 38-39 and objected to claims 41-
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`47. Id. at 265-274. Claims 21 and 41-47 were objected to, inter alia, for reciting
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`“wiper strip” rather than “support element,” as the “upper band surface” was
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`disclosed as being disposed on the latter feature. Id. at 267. Claims 21, 23-26, 28,
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`30-31, 35, and 38-39 were again rejected under 35 U.S.C. §102(e) as being
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`anticipated by U.S. Patent Publication No. 3,317,945 to Edner-Walter (Exh. 1010).
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`Id. at 268-269. In the Examiner’s view, the Applicant’s arguments regarding the
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`recited “legs” were not persuasive, as the pending claims included no requirement
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`for legs of any particular size. Id.
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`The Applicant submitted a Request for Reconsideration amending claims 21
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`and 41-47 to address the Examiner’s objections and to add the language
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`reproduced below to claim 21 relating to the location of the “attack surface” and
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`the shape of the “wind deflection strip” (id. at 300-301; emphasis added):
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`[the attack surface is] above the support element, and the legs (44, 46) from
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`there between an angular hollow space that expands from an upper narrowest point
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`of the base downwardly to the upper band surface of the support element (12: 30,
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`30) in contact with the upper band surface (11) of the support element.
`17
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`The Applicant argued that Edner-Walter did not disclose the newly-recited
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`“angular hollow space” between the legs of the wind deflection strip, and that the
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`“attack surface” of that strip is not located on a leg above the support element. Id.
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`at 313-314. On May 2, 2005, the Applicant submitted a Supplemental Request For
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`Reconsideration in which claim 21 was “somewhat amended to more clearly define
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`the invention.” Id. at 334.
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`The Applicant conducted an Examiner Interview on May 5, 2005, during
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`which agreement was not reached, but noting that the “Applicant to consider
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`adding additional language to define legs as contacting the upper band surface at a
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`location spaced from the wiper strip” to distinguish over U.K. Patent No. GB
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`2346318A to Lumsden et al.(“Lumsden”) (Ex. 1015), the sole figure of which is
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`reproduced below. Id. at 338-340; Lumsden Fig. 1.
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`On May 9, 2005, the Examiner issued a Notice of Allowance of all pending
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`claims which included an Examiner’s Amendment. ‘202 application, Ex. 1005 at
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`341-347. The Examiner stated that the addition of the language “said legs
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`18
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`contacting the upper band surface at a location laterally spaced from said rubber-
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`elastic wiper strip,” in combination with the other recited structure, distinguished
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`claim 21 over the prior art, including Edner-Walter and Lumsden. Id. at 345. Claim
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`41 was amended to add that the wind deflector strip is “in contact with” each end
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`cap and device piece, and each of claims 21 and 41-47 were amended to change
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`“wiper blade” to “support element” regarding the “support” of the “free ends” of
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`the legs of the wind deflection strip. Id. at 346-347. In allowing the claims, the
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`Examiner never considered Prohaska, nor did the Examiner consider Hoyler or
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`other prior art flat spring wipers having end caps and centrally located connection
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`points whose relatively wide spring rails would naturally require a Prohaska-type
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`spoiler to be mounted as claimed.
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`B. Claim Construction
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`For the purposes of inter partes review Claims 13, 17, and 18 should be
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`accorded their “broadest reasonable construction” in light of the specification and
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`prosecution history of the ‘905 patent. 37 C.F.R. § 42.100(b). Petitioner asserts that
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`none of the claim terms in the ‘905 patent need to be construed for purposes of this
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`petition because under any reasonable construction the claims are invalid.
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`In Robert Bosch LLC v. Alberee Products Inc. et al., Civil Action No. 12-
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`574-LPS (consolidated with Civil Action No. 14-142-LPS), currently pending in
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`the United States District Court for the District of Delaware, the Patent Owner has
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`19
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`asserted that the term “support element” “should be given its plain and ordinary
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`meaning in each of the asserted patents,” including the ‘905 patent. See Robert
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`Bosch LLC’s Opening Claim Construction Brief at 11, April 24, 2015 (Ex. 1006).
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`While the claim construction proceedings in Delaware are not governed by
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`the “broadest reasonable construction” standard, and Petitioner does not agree that
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`Patent Owner’s construction represents the broadest reasonable construction of this
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`claim term in the abstract, for purposes of this proceeding the Patent Owner should
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`not be heard to assert a narrower construction than was set forth in the Patent
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`Owner’s claim construction briefing in the Delaware Action.
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`VII. Overview of Prior Art
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`As explained above in Section VI., before May 29, 2000, the state of the art
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`included wiper blades containing: (1) support elements (including those having
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`two flexible rails), (2) elastic rubber wiping strips, and (3) wind deflection strips
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`with triangular cross-sectional profiles. Indeed, these features are necessarily
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`included in the prior art as admitted prior art in the ‘905 specification. See, e.g.,
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`PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1362 (Fed. Cir.
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`2007) (“Admissions in the specification regarding the prior art are binding on the
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`patentee for purposes of a later inquiry into obviousness.”).
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`Below, Petitioner shows that the challenged claims of the ‘905 patent are
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`20
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`unpatentable as obvious over Prohaska in view of Hoyler, and in further view of
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`the knowledge of a person having ordinary skill in the art. These references
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`exemplify the once-inventive features that were well-known by the time the ‘905
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`patent was filed. Likewise, the problems that the ‘905 patent purports to solve were
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`similarly well-known. See Davis Decl., ¶¶ 18-27; 33-59 (Ex. 1007); see generally
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`Maslen Decl. (Ex. 1008).
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`A. U.K. Patent No. G.B. 2,106,775 to Prohaska et al. (“Prohaska)
`(Ex. 1003)
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`U.K. Patent No. G.B. 2,106,775 to Prohaska et al. (“Prohaska”) (Ex. 1003)
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`was published on April 20