Filed: October 24, 2016
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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.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00036
`Patent 6,944,905
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`
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`PETITIONER’S REPLY IN SUPPORT OF PETITION
`PURSUANT TO 37 C.F.R. § 42.23
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF CONTENTS
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`Page(s)
`TABLE OF AUTHORITIES ................................................................................... iii
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`CERTIFICATE OF WORD COUNT ......................................................................... i
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`I.
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`II.
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`THE BOARD PROPERLY SET FORTH THE LEVEL OF ORDINARY
`SKILL IN THE ART ....................................................................................... 2
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`HOYLER AND PROHASKA RENDER THE CHALLENGED CLAIMS
`UNPATENTABLE .......................................................................................... 5
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`A.
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`B.
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`C.
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`D.
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`Flat-Spring and Conventional Wipers Are Subject to Wind Lift
`in Fundamentally the Same Way, and Spoilers Were Well-
`Known Solutions to the Wind-Lift Problem ......................................... 5
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`Hoyler Teaches “End Caps . . . Disposed at Both Ends of the
`Support Element” .................................................................................. 8
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`Prohaska Does Not Teach Away From Using a Hollow Spoiler ........ 10
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`Combining Hoyler and Prohaska Would Have Yielded a
`Spoiler “Between and in Contact With” the End Caps and
`Device Piece ........................................................................................ 11
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`E. Weight Reduction and Rigidity Were Known Problems
`Addressed in the Prior Art ................................................................... 12
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`F.
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`Bosch Ignores Petitioner’s Reasons for Combining Prohaska’s
`“Diverging Leg[]” Hollow Spoiler With Hoyler’s Flat-Spring
`Wiper ................................................................................................... 13
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`III. BOSCH’S EVIDENCE OF PURPORTED SECONDARY
`CONSIDERATIONS IS INSUFFICEINT TO OVERCOME A FINDING
`OF OBVIOUSNESS ...................................................................................... 14
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`A.
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`There Is No Nexus Between the ‘905 Patent and Any Purported
`Commercial Success, and No Success Is Established ......................... 15
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`i
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`B.
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`C.
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`D.
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`E.
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`F.
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`Bosch’s Proffered “Evidence” of Skepticism and Unexpected
`Results Does not Undercut Obviousness ............................................ 18
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`There Is No Evidence of Failure by Others or Long-Felt Need.......... 19
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`Bosch’s Vague Claims of Industry Praise Are Insufficient ................ 21
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`Bosch’s Fails to Show Copying by Its Competitors ........................... 21
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`Bosch’s Licensing “Evidence” Does Not Support
`Nonobviousness ................................................................................... 22
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`IV. ATTACKS ON DR. DAVIS’S CREDIBILITY ARE INSUPPORTABLE IN
`FACT AND LAW ......................................................................................... 23
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`A.
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`B.
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`Prior Consistent Statements Support Dr. Davis’s Credibility and
`Accurately Present Dr. Davis’s Opinions ........................................... 23
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`Prior Indefiniteness Opinions Regarding a Different Patent Are
`Immaterial to Dr. Davis’s Current Opinions ....................................... 23
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`V.
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`CONCLUSION .............................................................................................. 24
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`CERTIFICATE OF SERVICE ................................................................................... i
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`ii
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`

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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`TABLE OF AUTHORITIES
`
`Cases
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 3
`
`Page(s)
`
`In re Antor Media Corp.,
`689 F.3d 1282 (Fed. Cir. 2012) .......................................................................... 22
`
`In re Antor Media Corp.,
`689 F.3d at 1293–94 ........................................................................................... 22
`
`Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
`581 F. App’x 859 (Fed. Cir. 2014) ............................................................... 18, 21
`
`Brown & Williamson Tobacco Corp. v. Philip Morris Inc.,
`229 F.3d 1120 (Fed. Cir. 2000) .......................................................................... 15
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .................................................................................. 10, 24
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 11
`
`Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
`Co.,
`464 F.3d 1356 (Fed. Cir. 2006) ............................................................................ 5
`
`Ethicon Endo-Surgery, Inc. v. Covidien LP,
`812 F.3d 1023 (Fed. Cir. 2016) .................................................................... 15, 20
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ............................................................................ 7
`
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ........................................................................ 3, 22
`
`Graftech Int’l Holdings, Inc. v. Laird Techs. Inc., Nos. 2015-1796,
`2016 WL 3357427 (Fed. Cir. June 17, 2016) ..................................................... 15
`
`Grobler v. Apple Inc., No. 12-CV-01534-JST,
`2014 WL 1867043 (N.D. Cal. May 6, 2014) ...................................................... 24
`
`iii
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`

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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`TABLE OF AUTHORITIES
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`Cases
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ...................................................................... 16, 18
`
`Page(s)
`
`I/P Engine, Inc. v. AOL Inc.,
`576 F. App’x 982 (Fed. Cir. 2014) ..................................................................... 19
`
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) .......................................................................... 22
`
`K-Swiss Inc. v. Glide N Lock GmbH,
`567 F. App’x 906 (Fed. Cir. Apr. 23, 2014) ....................................................... 21
`
`KSR International Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ................................................................................ 2, 4, 5, 14
`
`Leo Pharms. Prods. Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .......................................................................... 20
`
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 11
`
`MRC Innovations, Inc. v. Hunter Mfg., LLP,
`747 F.3d 1326 (Fed. Cir. 2014) .......................................................................... 18
`
`Nike, Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) .................................................................... 20, 21
`
`Norgren v. Int’l Trade Comm’n,
`699 F.3d 1317 (Fed. Cir. 2012) .......................................................................... 19
`
`Okajima v. Bourdeau,
`261 F.3d 1350 (Fed. Cir. 2001) ............................................................................ 3
`
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed Cir. 2006) ..................................................................... 15, 20
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
` 587 F.3d 1324 (Fed. Cir. 2009) ......................................................................... 19
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`iv
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF AUTHORITIES
`
`Cases
`Pregis Corp. v. Kappos,
`700 F.3d 1348 (Fed. Cir. 2012) .......................................................................... 17
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`Page(s)
`
`Randall Mfg. v. Rea,
`733 F.3d 1355 (Fed. Cir. 2013) ............................................................................ 3
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`Sakraida v. Ag Pro, Inc.,
`425 U.S. 273 (1976) .................................................................................... 2, 5, 14
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`Tex. Instruments v. U.S. Int’l Trade Comm’n,
`988 F.2d 1165 (Fed.Cir.1993) ............................................................................ 19
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`W. Union Co. v. MoneyGram Payment Sys., Inc.,
`626 F.3d 1361 (Fed. Cir. 2010) .................................................................... 14, 17
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`Wyers v. Master Lock Co.,
`616 F.3d 123 (Fed. Cir. 2010) ............................................................................ 22
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`Statutes and Rules
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`35 U.S.C. § 103 .......................................................................................................... 2
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`35 U.S.C. § 103(a) ................................................................................................... 24
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`Federal Rule of Evidence 801(d) ............................................................................. 23
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`v
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(c) and (d), Petitioner certifies that the word
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`count of Petitioner’s Reply in Support of the Petition (exclusive of any table of
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`contents, table of authorities, listing of facts which are admitted, denied, or cannot
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`be admitted or denied, certificate of service or word count, or appendix of exhibits)
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`as measured by Microsoft Word is 5,351 words.
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Petitioner respectfully submits this Reply in further support of cancellation
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`of claims 13, 17, and 18 of U.S. Patent No. 6,944,905 (the “’905 Patent”).
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`In its Institution Decision (Paper No. 16) (the “Decision”) the Board
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`instituted trial on the ground of obviousness in view of U.K. Patent Application
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`No. GB 2,106,775A to Prohaska et al. (“Prohaska”; Ex. 1003) and German Patent
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`No. DE 1,028,896 to Hoyler (“Hoyler”; Ex. 1004). In its response, Patent Owner
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`(“Bosch”) asks the board to ignore the express teachings of Hoyler and Prohaska,
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`as well as the disclosure of the ’905 Patent, based on misleading and inaccurate
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`characterizations of those references. Bosch also argues that differences between
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`conventional and flat-spring wipers would have dissuaded a person of ordinary
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`skill from adding a hollow spoiler to a flat-spring wiper, but Petitioner’s cited prior
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`art, Bosch’s own evidence, and the ’905 Patent itself demonstrate the opposite.
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`Bosch’s assertion that the subject matter claimed in the ’905 Patent has enjoyed
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`commercial success is unsupported1 and at all events insufficient in light of the
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`strong evidence supporting obviousness.
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`1 On October 19, 2016, the Board (Paper No. 31) authorized Petitioner to file a mo-
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`tion to strike the hearsay testimony of Wilfried Merkel submitted by Patent Owner.
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`Petitioner’s motion is being submitted contemporaneously herewith.
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`I.
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`THE BOARD PROPERLY SET FORTH THE LEVEL OF ORDI-
`NARY SKILL IN THE ART
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`The Decision correctly states that “the prior art itself reflects an appropriate
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`skill level.” Decision, 8. Nothing in Bosch’s arguments should disturb this finding.
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`In KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme
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`Court reaffirmed the 35 U.S.C. § 103 statutory phrase, “ordinary skill in the art,”
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`includes a degree of “ingenuity” or problem solving skill. See id. at 417; Sakraida
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`v. Ag Pro, Inc., 425 U.S. 273, 279 (1976).
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` “Under the correct analysis, any need or problem known in the field of
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`endeavor at the time of invention and addressed by the patent can provide a reason
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`for combining the elements in the manner claimed.” KSR, 550 U.S. at 420. When
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`such a problem is identified, the relevant legal question is whether the conception
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`of a claimed solution “was a design step well within the grasp of a person of
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`ordinary skill in the relevant art,” id. at 427, or whether it required “more ingenuity
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`and skill . . . than were possessed by an ordinary mechanic acquainted with the
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`business.” Sakraida, 425 U.S. at 279 (citation omitted); see also KSR, 550 U.S. at
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`417.
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`Bosch is thus wrong in asserting that the statutory phrase “ordinary skill in
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`the art” connotes merely a level of education or work experience. See Patent
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`Owner Response (Paper No. 28) (the “Response”), 1. A person having ordinary
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`2
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`skill in the art “is a hypothetical person who is presumed to know the relevant prior
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`art,” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995), and how to practice the
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`subject matter disclosed in prior art patents, see, e.g., Amgen Inc. v. Hoechst
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`Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“[B]oth the claimed
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`and unclaimed disclosures in a prior art patent are [presumptively] enabled.”).
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`Prior to the claimed invention of the ’905 Patent, the windshield wiper art
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`included flat-spring wipers having end caps and central connectors with fluted
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`contours (e.g., Hoyler), conventional wipers with hollow fluted spoilers for
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`reducing wind-induced liftoff (e.g., Prohaska), and flat-spring wipers with fluted
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`solid spoilers (e.g., DE 19736368 to Merkel (“Merkel”; Exs. 1011, 1012)2). See
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`Petition, 9–15.3 In view of the state of the art, the ’905 Patent purported to improve
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`2 U.S. Patent No. 6,292,974 (Ex. 1012) is the U.S. counterpart to DE 19736368,
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`and citations to “Merkel” herein are made to the U.S. Patent.
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`3 Bosch’s suggestion that the Board should not consider Merkel as evidence of the
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`knowledge of one of ordinary skill—because it was not cited in Petitioner’s
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`Grounds (Response at 2–3)—is unsupported by Okajima and is contrary to law.
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`See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); Randall Mfg.
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`v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir. 2013) (vacating a Board decision that
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`“narrowly focus[ed] on the four prior-art references cited . . . and ignor[ed] the ad-
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`over prior-art flat-spring wipers by substituting a hollow fluted spoiler for a solid
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`fluted spoiler to decrease liftoff. See ’905 Patent, 1:40–2:5. The proper analysis,
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`then, is whether a person of ordinary skill in the art, presumed to have perfect
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`knowledge of all prior art of record, could have improved a pre-existing flat-spring
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`wiper by adding a hollow fluted spoiler (instead of a solid one), or whether that
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`addition would have been “beyond his or her skill.” See KSR, 550 U.S. at 417,
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`421–422.
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`In analyzing whether this claimed subject matter was non-obvious at the
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`time of its making by the ’905 Patent applicants, it is both necessary and
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`appropriate to consider whether the combination of Hoyler with Prohaska is one
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`that “‘arranges old elements with each performing the same function it had been
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`known to perform’ and yields no more than one would expect from such an
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`ditional record evidence . . . cited to demonstrate the knowledge and perspective of
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`one of ordinary skill . . . [including] critical background information that could
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`easily explain why an ordinarily skilled artisan would have been motivated to
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`combine or modify the cited references to arrive at the claimed inventions”) (citing
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`KSR, 550 U.S. at 415–22); see also Petition, 20–31 (summarizing state of prior art
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`and level of ordinary skill).
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`arrangement,” KSR, 550 U.S. at 417 (quoting Sakraida, 425 U.S. at 282), or
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`whether the substitution would have been “beyond” the “skill” of a person having
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`ordinary skill in the art. Id. Under Federal Circuit precedent, “an implicit
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`motivation to combine [prior art references] exists . . . when the ‘improvement’ is
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`technology-independent and the combination of references results in a product or
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`process that is more desirable, for example because it is stronger, cheaper, . . .
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`faster, lighter, . . . or more efficient.” Dystar Textilfarben GmbH & Co.
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`Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
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`The Board was thus fully justified in finding that the prior art of record
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`reflects and indeed prescribes the baseline of knowledge and skill against which
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`the obviousness or non-obviousness of the challenged claims must be measured.
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`Decision, 8; see also KSR, 550 U.S. at 427.
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`II. HOYLER AND PROHASKA RENDER THE CHALLENGED
`CLAIMS UNPATENTABLE
`A.
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`Flat-Spring and Conventional Wipers Are Subject to Wind Lift in
`Fundamentally the Same Way, and Spoilers Were Well-Known
`Solutions to the Wind-Lift Problem
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`As described in the Petition and explained by Petitioner’s expert, Dr. Davis,
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`Merkel discloses a wiper having a flat-spring support element, a wiper strip, and a
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`triangular spoiler for counteracting the “liftoff tendency,” and the ’905 Patent
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`expressly acknowledges this disclosure. Petition, 26–27; Ex. 1007 (Davis Decl.)
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`¶ 28; Ex. 1012, 2:62–3:29, 3:31–38, 3:54–4:9, Figs. 1, 3, 4; ’905 Patent, 1:6–40.
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Thus, Bosch’s position that “wind liftoff” was not a “recognized problem” in flat-
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`spring wipers, and that they are ‘fundamentally different” from conventional
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`wipers (Response, 8–10; Ex. 2003 ¶¶ 21–25, 58–61, 65–67), is contrary to the ’905
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`Patent itself. See Response, 2; see also Ex. 1102 (Second Davis Decl.) ¶ 9.
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`Furthermore, Bosch’s own evidence, U.S. Patent No. 3,418,679 to Barth et
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`al. (“Barth”; Ex. 2009), issued in 1966, establishes that it was long-known to
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`persons of ordinary skill in the wiper art that the problem, described in the ‘905
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`Patent as “airflow-induced tendency . . . to lift up” (Ex. 1001, 1:26–31), is caused
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`by the point-down triangular shape of a wiper’s rubber wiper strip. Ex. 2009, 2:52–
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`53, 4:8–39. Barth’s analysis of the “lift-off force” applies in fundamentally the
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`same way to all wipers having wiper strips with this “inverted triangle” profile,
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`regardless of whether they have a flat-spring or conventional support structure. Ex.
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`2009, 1:33–54 (“Such pressure differences become effective on the windshield
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`wiper in the form of a force whose action on the type of windshield wiper known
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`from the prior art, namely the type whose cross section decreases in direction
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`towards the windshield, results in a tendency to lift the wiper from the windshield.”
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`(emphasis added)); Ex. 1102 ¶¶ 11-12; Ex. 1007 ¶ 27; Ex. 2002 (Davis Tr.),
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`127:25–128:17, 129:17–130:8. Thus, a person of ordinary skill in the art seeking to
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`solve the well-known problem of wind lift would turn to well-known methods of
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`solving that problem, such as a spoiler. Ex. 1102 ¶ 15.
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Merkel also expressly teaches a triangular spoiler atop a flat-spring wiper, a
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`disclosure summarized in the ’905 Patent. Petition, 26–27; Ex. 1012, 2:62–3:29,
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`3:31–38, 3:54–4:9, Figs. 1, 3, 4; Ex. 1001, 1:6–40; Response, 2–3 (citing ’905
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`Patent, 1:26–31). Bosch’s argument that “the conventional wisdom taught to avoid
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`adding anything” to a flat-spring wiper (Response, 11 (citing Ex. 2003 ¶¶ 58, 65))
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`conflicts with the ’905 Patent and must fail. See Ex. 1102 ¶¶ 15, 18; Ex. 1007 ¶ 28.
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`Adding a spoiler to the top of a flat-spring or conventional wiper was a well-
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`known way to counter wind lift. Petition, 4–6, 34–35; Prohaska, 1:68–70, 4:3–7;
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`Ex. 1007 ¶¶ 25–26, 28; Merkel, 3:22–4:14, Figs. 3, 4; Ex. 1010, Fig. 6; Ex. 1014,
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`11:25–42, Fig. 29; Ex. 1015, Fig. 1. Bosch’s argument that adding a spoiler to a
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`flat spring wiper was somehow “unconventional” is insupportable, because Merkel
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`teaches that very thing and Prohaska teaches retrofitting wipers with a hollow
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`spoiler assembly. See Ex. 2003 ¶ 65; Prohaska, 1:68–70 (“[I]t is easily possible to
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`retrofit a wiper blade by squeezing a spoiler against its flexible strip or clipping it
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`on this flexible strip.”), 3:127–130. In a parallel proceeding, the Board stated that
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`“Patent Owner has not identified, nor do we discern, any disclosure in Prohaska
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`discouraging use of Prohaska’s spoiler with a single-beam blade construction
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`wiper.” Institution Decision, IPR2016-00038, Paper No. 16 (the “’00038
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`Decision”), 14 (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). In fact,
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`Bosch’s expert admits that adding a Prohaska spoiler to a conventional wiper
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`“would not be any less problematic in a sensitive beam blade.” Ex. 2003 ¶ 66;
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`Response, 14–15.
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`B. Hoyler Teaches “End Caps . . . Disposed at Both Ends of the
`Support Element”
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`The Decision correctly states that “Hoyler discloses fluted ‘clamps’ or end
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`caps 6 at the ends of the wiper bar,” (Decision, 10 (citing Ex. 1004, col. 5)), and
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`nothing submitted by Bosch should disturb this finding. Response, 3–7. Hoyler’s
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`end caps (“clamps 6”) extend over the sides and ends of “longitudinal springs 5.”
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`Response, 5; Hoyler, col. 5, Fig. 1 (excerpt reproduced below); Ex. 2002, 115:21–
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`116:2 (“[Y]ou can see the end caps, which it calls the clamp 6.”), 116:3–14; 117:2–
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`22; 118:4–18.
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`As explained by Dr. Davis, a person of ordinary skill would have understood
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`end caps to have both primary structural functions (i.e., holding the spring
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`elements in their grooves and preventing longitudinal slippage of the wiping
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`element) and could optionally include other functions. Ex. 2002, 118:19–119:18
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`8
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`(“To hold those two elements into the grooves or the slots so that they don’t
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`separate and the wiper doesn’t fall apart, and the rubber wiping element doesn't
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`slip out . . . [is] one of the prime functions of the end cap. . . . often end caps also
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`cover—completely cover the end of the wiper blade to prevent possible
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`scratching.”) (emphasis added); see also Ex. 1007 ¶¶ 45, 53, 57. There is no
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`evidence supporting Bosch’s argument that an end cap “must” cover the corners of
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`the underlying structure. Response, 5; Ex. 2002, 118:19–120:144; ’905 Patent, Fig
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`1, 1:65–2:5, 4:31–38, 5:3–8; Ex. 2003 ¶ 69. Even the ’905 Patent illustrates that the
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`“end cap 38” permits the underlying components’ corners to protrude:
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`4 Dr. Davis stated that “we tend to make the end caps cover the entire portion
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`now,” and rather than being “hindsight,” (Response at 5–6, emphasis added), dis-
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`tinguished current end cap implementations from the understanding of a person of
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`ordinary skill at the time of the claimed invention.
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`9
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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Ex. 1001, Fig. 1. Furthermore, Bosch’s interpretation clearly runs afoul of the
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`“broadest reasonable construction” of “end cap” that the Board must apply here.
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`See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143-46 (2016). By any
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`measure, Hoyler describes an “end cap . . . disposed at both ends of the support
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`element” as claimed. ’905 Patent, 8:16–18.
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`Prohaska Does Not Teach Away From Using a Hollow Spoiler
`C.
`Prohaska does not teach away from using the hollow spoiler embodiment it
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`describes, illustrated in Figure 3 (reproduced below).
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`See Prohaska, 3:3–6 (disclosing “a hollow member with about triangular cross-
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`section”). As stated in the Decision, Prohaska’s “disclosure that a ‘hollow space . .
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`. possibly migh[t] be disadvantageous’ . . . is merely a factor for a person of
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`
`
`10
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`

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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`ordinary skill and creativity to consider.”5 Decision, 11 (emphasis in original). Dr.
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`Davis’s testimony, which Bosch relies on, actually supports the Board’s
`
`conclusion. See Response, 12–14 (citing Ex. 2002, 113:15–115:14) (“[I]t’s kind of
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`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.”).
`
`D. Combining Hoyler and Prohaska Would Have Yielded a Spoiler
`“Between and in Contact With” the End Caps and Device Piece
`
`The Decision correctly stated that “Prohaska teaches that it is ‘reasonable to
`
`arrange spoilers in [the working points] of the wiper element,” and that “[t]hese
`
`‘working points’ extend from end cap to end cap in Hoyler.” Decision, 10 (citing
`
`Ex. 1003, 1:107–112). Bosch and its expert ignore these teachings. See Response,
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`7; Ex. 2003 ¶ 70. As illustrated below, Prohaska shows that the spoiler may contact
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`the “element” 40—nearly identical in cross-section to Hoyler’s end cap—used to
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`“secure[]” the wiper to the “support[] structure”:
`
`
`5 A parallel proceeding’s institution decision states that this disclosure “is better
`
`characterized as a tradeoff rather than teaching away.” Institution Decision,
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`IPR2016-00039, Paper No. 19, at 15–16 (emphasis added) (citing DePuy Spine,
`
`Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009);
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`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)).
`
`
`
`11
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`

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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`
`
`
`Prohaska, Fig. 1
`
`
`Hoyler, Fig. 1, Cross-section C-C
`
`See also Prohaska, 2:76–86; Petition at 36–37; Ex. 1007 ¶ 49;. Accordingly,
`
`
`
`retrofitting a Prohaska spoiler to a Hoyler wiper, as discussed infra II.F, would
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`have resulted in a spoiler located “between and in contact with” Hoyler’s end caps.
`
`E. Weight Reduction and Rigidity Were Known Problems
`Addressed in the Prior Art
`
`Contrary to Bosch’s argument that the problems of mass reduction and
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`component rigidity were unknown (Response, 10–11), Hoyler teaches that flat-
`
`spring wipers should be designed so “[t]he weight of the moving parts can be
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`largely reduced,” by using a “rubber or elastic plastic” component above the metal
`
`flat springs. Hoyler, col. 2, Fig. 1; Ex. 1007 ¶ 47. And Merkel, cited in the ’905
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`patent, explains that a flat-spring wiper’s pressure distribution “will not be
`
`impaired” if its spoiler is less rigid then its wiper strip. Merkel, 2:30–35. Similarly,
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`Prohaska teaches that a spoiler should be “flexible enough in order to enable an
`
`adaptation of the rubber wiper element to different pane curvatures, and on the
`
`
`
`12
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`

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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`other hand it has enough stiffness not to be deformed by the attacking air stream.”
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`Prohaska, 3:108–114.
`
`Neither Hoyler, Merkel, nor the ’905 patent itself contain any support for
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`Bosch’s view that flat-spring wipers were “sensitive” or “greatly affected by small
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`changes” to their structure, disclosures that presuppose that a person of ordinary
`
`skill would have been able to understand and select the stiffness and bending
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`properties of components making up the wiper. Ex. 1102 ¶¶ 18-20.6
`
`F.
`
`Bosch Ignores Petitioner’s Reasons for Combining Prohaska’s
`“Diverging Leg[]” Hollow Spoiler With Hoyler’s Flat-Spring
`Wiper
`
`Bosch dismisses Petitioner’s arguments as “conclusory” (Response, 8),
`
`ignoring the express disclosures of Prohaska and Hoyler as and the reasons
`
`Petitioner gave for combining those references. Bosch has not addressed
`
`Petitioner’s explanation that reducing weight and countering liftoff were well-
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`known wiper design objectives (see Petition, 35–36; Davis Decl. ¶¶ 47-48), and
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`“any need or problem known in the field of endeavor at the time of invention and
`
`
`6 See also ’00038 Decision, 14, 18 (“[A] person of ordinary skill in the art . . .
`
`would know how to vary the spring element when incorporating the added stiffness
`
`of the spoiler . . . .”).
`
`
`
`13
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`

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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`addressed by the patent [i.e., Prohaska, Hoyler] can provide a reason for combining
`
`the elements in the manner claimed.” KSR, 550 U.S. at 420.
`
`The addition of a hollow Prohaska spoiler to a Hoyler wiper would merely
`
`have involved “the simple substitution of one known element for another or the
`
`mere application of a known technique to a piece of prior art ready for the
`
`improvement.” KSR, 550 U.S. at 417. Given the express retrofitting teachings of
`
`Prohaska and the prior art Merkel flat spring/solid spoiler wiper, the claimed
`
`hollow-spoiler “improvement” of the ’905 Patent is nothing “more than the
`
`predictable use of prior art elements according to their established functions,” and
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`therefore is unpatentably obvious. Id.. (quoting Sakraida, 425 U.S. at 282); see
`
`also Ex. 1007 ¶ 50.
`
`III. BOSCH’S EVIDENCE OF PURPORTED SECONDARY CONSID-
`ERATIONS IS INSUFFICEINT TO OVERCOME A FINDING OF
`OBVIOUSNESS
`
` “[W]eak secondary considerations generally do not overcome a strong
`
`prima facie case of obviousness.” W. Union Co. v. MoneyGram Payment Sys., Inc.,
`
`626 F.3d 1361, 1373 (Fed. Cir. 2010) (citation omitted). “Here, where the
`
`inventions represented no more than ‘the predictable use of prior art elements
`
`according to their established functions,’ the secondary considerations advanced by
`
`[Bosch] are inadequate to establish nonobviousness as a matter of law.” Id. (citing
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`KSR, 550 U.S. at 417).
`
`
`
`14
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`

`
`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`A. There Is No Nexus Between the ‘905 Patent and Any Purported
`Commercial Success, and No Success Is Established
`
`A “nexus” is established where there is proof that a “marketed product
`
`embodies the claimed features, and is coextensive with them . . . . Brown &
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`Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120 (Fed. Cir. 2000)
`
`(emphasis added) (citation omitted). Bosch “submitted the same evidence in each
`
`of the inter parties reviews” Nos. IPR2016-00034, -00036, -00038, -00039, -
`
`00040, and -00041, which “undermines its commercial success arguments”
`
`because the ’905 Patent and those that are the subject of the other five IPRs are
`
`“directed to different inventions.” Graftech Int’l Holdings, Inc. v. Laird Techs.
`
`Inc., Nos. 2015-1796, , 2016 WL 3357427, at *5 (Fed. Cir. June 17, 2016).
`
`There can be no legally significant nexus between the ’905 Patent and any
`
`alleged success because Bosch’s evidence is that that features of the purportedly
`
`successful Aerotwin and Icon wiper products are either “unclaimed” in the ’905
`
`Patent, Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed Cir. 2006), or
`
`were “known in the prior art,” Ethicon Endo-Surgery, Inc. v. Covidien LP, 812
`
`F.3d 1023, 1034 (Fed. Cir. 2016). See Response, 17–18.
`
`Bosch relies on its employee, Martin Kashnowski, for the proposition that
`
`wipers purportedy embodying the claimed ’905 Patent subject matter were “tested .
`
`. . extensively” and found to be “quiet in operation,” but a “conclusory assertion
`
`
`
`15
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`

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`IPR2016-00036
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`that, in his opinion, the sales of the [products] derive from” these features or tests
`
`“is insufficient” to show nexus. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
`
`As explained by Mr. David Peck, an engineer with more than 15 years of
`
`experience in the wiper industry, wiper products are routinely tested before their
`
`market release, and wiper noise is caused by many sources, including “the design
`
`of the motor linkage clearances, wind and aerodynamics, rubber selection of the
`
`wiping element, and failure of a wiping mode (e.g., chatter), all of which must be
`
`addressed to make a quiet system.” Ex. 1100 (“Peck Decl.”) ¶ 19. In view of this,
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`and because the ’905 Patent does not discuss noise abatement at all, (see Ex. 1100
`
`¶¶ 25-26), Mr. Kashnowski’s testimony suggests that something other than the
`
`claimed features is responsible for any purported success—a fact which plainly
`
`undermines the existence of any nexus.
`
`Bosch also submits that its purported solution to unspecified “engineering
`
`difficulties” led to the introduction of the Aerotwin product, and that the Icon
`
`product had “fewer part