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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 16
`Entered: April 25, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`
`Case IPR2016-00038
`Patent 6,292,974 B1
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`IPR2016-00038
`Patent 6,292,974 B1
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`I.
`
`INTRODUCTION
`
`A. OVERVIEW
`Costco Wholesale Corp. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1, 2, and 8 of U.S. Patent
`No. 6,292,974 B1 (Ex. 1001, “the ’974 patent”). Pet. 1. Robert Bosch LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 15, “Prelim. Resp.”)
`to the Petition.
`Upon consideration of the Petition and the Preliminary Response, for
`the reasons explained below, Petitioner has demonstrated a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims.
`We institute an inter partes review of claims 1, 2, and 8 of the ’974 patent.
`
`B.
`
`RELATED PROCEEDINGS
`The parties indicate that the ’974 patent is at issue in: Robert Bosch
`LLC v. Alberee Products Inc. et al., No. 12-574-LPS (consolidated with No.
`14-142-LPS) (D. Del.). Pet. 1; Paper 5, 1.
`The parties in the case at hand are currently involved in the following
`inter partes proceedings:
`Case #
`IPR2016-00034
`IPR2016-00035
`IPR2016-00036
`IPR2016-00038
`IPR2016-00039
`IPR2016-00040
`IPR2016-00041
`IPR2016-00042
`
`U.S. Patent #
`6,973,698
`6,836,926
`6,944,905
`6,292,974
`7,228,588
`7,484,264
`8,099,823
`8,544,136
`
`2
`
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`IPR2016-00038
`Patent 6,292,974 B1
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`
`C.
`
`The patent at issue in IPR2016-00040 is a division of the application
`that became the patent that is now at issue in IPR2016-00039. See IPR2016-
`00040, Ex. 1001, 1 (62).
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts that the challenged claims are unpatentable under
`the following grounds:
`Claims
`Challenged
`1, 2, 8 103(a) Prohaska1 and Appel2
`1, 2, 8 103(a) Prohaska and Hoyler3
`
`§
`
`References(s)
`
`Pet. 3.
`
`
`A.
`
`II. THE CLAIMED SUBJECT MATTER
`INTRODUCTION
`1.
`Types of Wipers
`There are two main types of windshield wiper structures: beam and
`yoke. The conventional yoke-style structure includes a series of flexible
`rails that distribute force along the wiper blade. Ex. 1008 ¶ 19. Figure 1 of
`U.S. Patent 3,418,679 is reproduced below:
`
`
`1 U.K. Patent Application No. GB 2 106 775 A, published Apr. 20, 1983
`(Ex. 1004).
`2 U.S. Patent No. 3,192,551, issued July 6, 1965 (Ex. 1005).
`3 German Patent No. 1,028,896 published June 24, 1954 (Ex. 1006). The
`certified English translation begins at page 6.
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`3
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`Patent 6,292,974 B1
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`Figure 1 depicts a yoke-style wiper structure, having a large main rail
`
`4 connected to two smaller rails 5, which in turn are connected to the wiper
`blade.
`In contrast to the yoke style wiper is the beam, or flat, style of wiper.
`This type of wiper uses metal strips adjacent the wiper blade to distribute the
`load along the length of the wiper blade rather than the yokes. Id. ¶ 22.
`Figure 1 of the ’974 patent is reproduced below:
`
`
`Figure 1 of the ’974 patent depicts a beam-style wiper structure, in which the
`beam is attached along the entire length of the wiper. Ex. 1001, 2:50–51.
`2.
`The ’974 patent
`The ’974 patent relates to a wiper blade for windows4 of motor
`vehicles. Ex. 1001, Abstract, 1:5–6.
`As background, the ’974 patent describes that the support element
`assures that wiper blade contact pressure on the window is as even as
`
`
`4 Throughout this opinion we use the terms “window,” “windscreen,” and
`“windshield” interchangeably.
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`4
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`Patent 6,292,974 B1
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`possible over the entire swept field. Id. at 1:7–10. Although the pendulum
`motion of a wiper changes its position relative to the oncoming wind,5 the
`lateral side of the wiper generally exposed to the wind is the “front side” and
`the opposing side is the “back side.” Id. at 1:34–40. The wind induces
`overpressure on the front side of the wiper blade, and negative pressure on
`the back side, and these forces tend to lift the wiper blade off the window
`(“liftoff tendency”). Id. at 1:25–34, 64–67. At relatively high vehicle
`speeds, these forces may reduce contact pressure to the point that proper
`wiping is no longer possible. Id. at 1:40–45. Increasing wiper blade contact
`pressure can counter this problem, but the attending drawback is that at
`lower vehicle speeds the increased contact pressure increases friction,
`leading to undesirable noise buildup and high stress on the wiper and drive
`components. Id. at 1:45–51.
`An object of the ’974 patent was to avoid these disadvantages by
`providing a wiper blade with a leading-edge face which extends
`longitudinally over the wiper blade, substantially parallel to the window,
`facing into the wind and forming an acute angle with the window. Id. at
`1:55–63. The wiper blade causes a force component that counters the liftoff
`tendency and assures better cleaning quality, at least in the region most
`important to the vehicle’s driver. Id. at 1:64–2:3. The wiper blade can be
`embodied in a separate, elongated component, with a cross section
`approximating a triangle that is solidly joined to the support element. Id. at
`2:16–22. Alternatively, the leading edge face may have a hollow curvature
`
`
`5 Meaning the relative air movement caused by movement of the vehicle.
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`5
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`facing into the wind. Id. at 2:25–27. The length, width, and height of the
`leading-edge face may be varied to suit requirements. Id. at 2:38–40.
`The wiper blade may be embodied as wiper blade 10 comprised of:
`support element 12, elongated rubber-elastic wiper strip 14, connection
`device 16, and single- or multiple-part component 32. Id. at 2:62–66, 3:22–
`37. Figures 1 and 3 of the ’974 patent follow.
`
`
`Figure 1 is a side view of wiper blade 10, and Figure 3 is a cross sectional
`view of wiper blade 10 along line III–III shown in Figure 1. Id. at 2:50–51,
`53–55. Component 32 extends longitudinally along wiper blade 10, and has
`a triangle or wedge shaped cross section with the longest side of the triangle
`forming a leading edge face for relative wind 38 caused by the motor
`vehicle. Id. at 3:32–38.
`
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`6
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`B.
`
`ILLUSTRATIVE CLAIM
`Claim 1 is the sole independent challenged claim and follows
`(emphasis added):
`A wiper blade for windows of motor vehicles, comprising
`1.
`a curved, band-shaped, spring-elastic support element
`which distributes a pressure applied by a wiper arm and has a
`concave and a convex surface which defines corresponding
`planes;
`an elongated rubber-elastic wiper strip placeable on a
`window to be wiped and mounted to said concave surface of said
`support element which faces
`the window, substantially
`longitudinally parallel to said concave surface;
`a connection device provided for a wiper arm and arranged
`directly on a convex side of said support element; and
`a component which is separate from said wiper strip and
`is mounted directly to the convex surface of said support element
`so as to form a leading-edge face extending in a longitudinal
`direction of the support element and forming, as seen crosswise
`to its longitudinal extension, an acute angle with a plane which
`extends parallel to a plane formed by said convex surface.6
`
`CLAIM INTERPRETATION
`In an inter partes review, we interpret the claims of an unexpired
`patent using the broadest reasonable construction. See 37 C.F.R.
`§ 42.100(b).
`Petitioner acknowledges that inter partes reviews apply a broadest
`reasonable interpretation claim construction, and contends that no term
`needs express construction. Pet. 9. Petitioner contends that the claim term
`“support element” should be given its plain and ordinary meaning. Id.
`
`C.
`
`
`6 Line breaks added.
`
`7
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`(citing Ex. 1010).7 Petitioner asks that Patent Owner not be heard to assert a
`narrower construction than set forth in the Patent Owner’s claim
`construction in the related litigation. Id.
`Patent Owner does not provide any explicit claim constructions.
`Patent Owner contends that Petitioner failed to demonstrate that the
`challenged claims are unpatentable, due in part to not providing any claim
`constructions. Prelim. Resp. 8–9. Although 37 C.F.R. § 42.104(b)(3)
`requires a petition to include a statement of how each challenged claim is to
`be construed, it is sufficient that Petitioner stated that a broadest reasonable
`interpretation applies. See OFFICE PATENT TRIAL PRACTICE GUIDE, 77 Fed.
`Reg. 48756, 48764 (Aug. 14, 2012) (“[I]t may be sufficient for a party to
`provide a simple statement that the claim terms are to be given their broadest
`reasonable interpretation, as understood by one of ordinary skill in the art
`and consistent with the disclosure.”); Pet. 9. Consequently, Petitioner has
`not persuaded us that the absence of an explicit claim construction for each
`claim term is a sufficient reason to deny the Petition. In Section IV below,
`we consider Patent Owner’s related contention that Petitioner has not shown
`sufficiently how the prior art discloses or renders obvious each claim
`element.
`
`
`7 Exhibit 1010 is a claim construction chart from the related litigation. It
`contains the proposed construction of each party, but does not contain a
`determination by the court. The chart states, regarding another patent, that
`the plain and ordinary meaning of “support element” should be applied. See
`Ex. 1010, 3. The ’974 patent is not mentioned in the chart. Id. We take this
`as an assertion by Petitioner that “support element” should be given its plain
`and ordinary meaning in the context of a broadest reasonable construction.
`
`8
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`For the purposes of this decision, and on this record, we determine
`that no claim term needs express interpretation. See Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms
`which are in controversy need to be construed, and only to the extent
`necessary to resolve the controversy).
`
`
`III. PRELIMINARY ISSUE
`Patent Owner contends that we should not consider the Kruger
`Declaration (Ex. 1013), and further, because the Petition is insufficient
`without it, we should deny the Petition. Prelim. Resp. 1–2, 6–8.
`Specifically, Patent Owner contends that the Petition improperly
`incorporates the Kruger Declaration and circumvents the 60-page limit by
`broadly asserting that the appendices to the Kruger Declaration illustrate
`where each feature of each challenged claim is disclosed in the prior art. Id.
`at 1–2, 6.8
`The Petition provides a claim chart for claim 1 for both grounds of
`unpatentability, states that the chart shows where each feature of claim 1 is
`disclosed, and then states that the “[a]ppendices to the Kruger Declaration
`illustrate the same.” Pet. 18 (citing Ex. 1013–1016). The Petition makes
`similar statements for claims 2 and 8. Id. at 24–26. Dr. Kruger testifies that
`to illustrate the proposed ground of unpatentability, he created five computer
`files that are three-dimensional representations of objects depicted in two-
`dimensional engineering drawings. Ex. 1013 ¶¶ 1–4, 10. Dr. Kruger adds
`
`
`8 Referring to Petitioner’s citation of Ex. 1013 at Pet. 18, 24–26, and citing
`37 C.F.R. §§ 42.24(a)(1)(i), 42.6(a)(3).
`
`9
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`that Appendix A (Ex. 1014) is an animation of the proposed combination of
`Appel and Prohaska, Appendix B (Ex. 1015) is an animation of the proposed
`combination of Hoyler and Prohaska, and Appendices C–E (Exs. 1016–
`1018) are illustrations of embodiments of claims 1, 2, and 8 of the ’974
`patent, respectively. Id. ¶¶ 2, 4–6, 9.
`Petitioner’s grounds are set forth in the claim charts and
`accompanying text in the Petition. The Kruger Declaration and the
`illustrations are supplemental to what is in the Petition. Further, the Petition
`includes a commensurate introduction of that evidence that identifies
`specific portions of the evidence that support the challenge (the entire
`exhibit), and explains the significance of that evidence (illustrating the
`grounds of unpatentability), as contemplated by our Rules. See 37 C.F.R.
`§§ 42.22(a)(2), 42.104(b)(5). In light of this, we conclude that Petitioner has
`not improperly incorporated to avoid page limits. See 37 C.F.R.
`§ 42.24(a)(1)(i); see also 37 C.F.R. § 42.6(a)(3) (“Arguments must not be
`incorporated by reference from one document into another document.”)
`(emphasis added). Consequently, Patent Owner has not persuaded us that
`the Petition should be denied on this basis
`
`
`IV. PATENTABILITY
`A. OBVIOUSNESS OVER PROHASKA AND APPEL
`1.
`Petitioner’s Contentions
`Petitioner contends that claim 1 would have been obvious over
`Prohaska and Appel. Pet. 18–24. Specifically, Petitioner contends that
`Appel discloses a wiper blade for windows of motor vehicles comprising a
`curved, band-shaped, spring-elastic support element that includes a concave
`
`10
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`and a convex surface that defines corresponding planes. Pet. 12–14, 18–19,
`23; Ex. 1005, 1:11–15, 1:23–28, 3:9–16; Ex. 1014. Petitioner contends that
`Appel discloses an elongated rubber-elastic wiper strip and a connection
`device. Pet. 19; Ex. 1005, 4:18–22, Figs. 5, 7; Ex. 1014 (depicting arm
`attachment clip 41 of Appel, a connection device, as included in the
`proposed combination); Ex. 1005, 3:69–73.
`Petitioner contends that Prohaska discloses a component (spoiler) as
`claimed.9 Pet. 10–12, 19–20, 22–23; Ex. 1004, 1:8–16, 25–52, 1:68–70,
`2:56–58, 2:71–75, 3:16–21, Figs 3, 6; Ex. 1008 ¶¶ 37–40; Ex. 1014.
`Petitioner contends that Prohaska’s spoiler: can be retrofitted to a wiper
`blade, diminishes liftoff tendency, and provides reliable contact between the
`wiper and the windscreen. Pet. 10–12, 19–20, 22–23; Ex. 1004, 1:8–16, 25–
`52, 1:68–70, 2:56–58, 2:71–75, 3:16–21, Figs 3, 6; Ex. 1008 ¶¶ 37–40; Ex.
`1014.
`
`In light of these disclosures, Petitioner contends that it would have
`been obvious to combine Prohaska’s component (spoiler) with Appel’s wiper
`blade. Pet. 18, 22–23. Petitioner reasons that such a combination would
`have been the predictable use of prior art elements according to the functions
`disclosed in Appel and Prohaska. Id. at 23. Petitioner adds that this
`combination would yield predictable results and was nothing more that the
`simple arrangement of old elements with each performing the same function
`it was known to perform. Id. at 22–24; Ex. 1008 ¶ 48. Petitioner reasons
`that the proposed combination: conforms to the curvature of any windshield,
`counters liftoff tendency, distributes force evenly over the windshield, and
`
`
`9 Parenthetical nomenclature is Prohaska’s.
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`11
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`both reduces noise buildup and prevents excessive stress at low vehicle
`speeds. Pet. 22–24.
`2.
`Patent Owner’s Arguments
`a) Component
`Patent Owner contends that Petitioner “cites no evidence” that the
`prior art discloses a component as claimed, and that Petitioner’s arguments
`contain insufficient explanations and rest on irrelevant citations. Prelim.
`Resp. 8–9 (citing 37 C.F.R. § 42.104(b)(4)). In particular, Patent Owner
`contends that the quoted portion of Prohaska does not disclose that the
`alleged spoiler is mounted directly to the convex surface of the support
`element, nor it is depicted in Figures 3 and 6.10 Id. at 10.
`First, Patent Owner’s contention that Petitioner “cites no evidence” is
`incorrect. As detailed above, Petitioner identifies evidence regarding
`Appel’s a wiper blade having a support element that includes a convex
`surface and regarding Prohaska’s component (spoiler). Patent Owner’s
`conclusory assertion that Petitioner provides no evidence fails to address
`effectively the evidence Petitioner provided.
`Second, Patent Owner’s argument attacks Prohaska individually and
`does not address the combination as articulated by Petitioner. See e.g., In re
`Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
`F.2d 413, 425 (CCPA 1981) (one cannot show nonobviousness by attacking
`references individually where the rejections are based on combinations of
`references)). Petitioner does not rely upon Prohaska as disclosing a support
`
`
`10 Patent Owner does not provide a citation to the quotation used by
`Petitioner, but based on content it is Ex. 1004, 1:39–52 quoted at Pet. 19.
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`12
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`element that includes a convex surface. Rather, as explained above,
`Petitioner proposes to mount Prohaska’s spoiler on the support element of
`Appel’s wiper, which includes a convex surface. See Pet. 12–14, 18–19, 22–
`23.
`
`b) Rationale
`Patent Owner makes a variety of contentions in support of the
`argument that Petitioner has not provided an adequate rationale for the
`ground of unpatentability. Prelim. Resp. 11–14.
`First, Patent Owner contends that Petitioner’s assertion that
`“combining the angled spoiler of Prohaska with the support element of
`Appel or Hoyler meets the limitations of Claim 1 and yields predictable
`results” is conclusory and fails to show how and why these elements are
`combined. Prelim. Resp. 11–12 (quoting Pet. 23). Patent Owner’s
`contention fails to address persuasively the rationale provided by Petitioner.
`For example, Patent Owner does not address cogently Petitioner’s
`explanation that the proposed combination yields several benefits, such as,
`conforming to the curvature of any windshield and countering liftoff
`tendency. See Pet. 23; Ex. 1008 ¶ 48. At this stage of the proceeding, we
`are persuaded by Petitioner’s explanation.
`Second, according to Patent Owner, Prohaska teaches away from the
`invention of the ’974 patent. Prelim. Resp. 12–13. Specifically, Patent
`Owner contends that Prohaska discloses a spoiler for use on a conventional
`bracketed wiper blade having at least one yoke element, with that spoiler
`formed on, or attached to, the flexible stiffener strip used to stiffen a wiper
`element, and teaches that spoilers are most effective when arranged closely
`to the windscreen. Id. at 12–13. Patent Owner asserts that Petitioner fails to
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`explain why a person of ordinary skill would have chosen the single-beam
`blade construction of Appel as opposed to conventional-blade construction
`of Prohaska, or why a person of ordinary skill would have added a separate
`spoiler that would stiffen the beam and thus adversely affect the sensitive
`force distribution of a beam blade’s spring-elastic support element. Id. at 13.
`Regarding conventional versus single-beam construction, Patent
`Owner has not identified, nor do we discern, any disclosure in Prohaska
`discouraging use of Prohaska’s spoiler with a single-beam blade construction
`wiper. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior
`art’s mere disclosure of more than one alternative does not constitute a
`teaching away from any of these alternatives because such disclosure does
`not criticize, discredit, or otherwise discourage the solution claimed in the
`’198 application.”).
`Regarding force distribution, Patent Owner focuses on Prohaska and
`contends that adding Prohaska’s spoiler to Appel’s single-beam blade will
`adversely affect force distribution. However, Appel discloses various
`techniques for configuring the wiper spring/backbone element to distribute
`force evenly. See Ex. 1005, 1:11–3:63, 4:32–45 (identifying several variable
`parameters to the backbone element). As this point in the proceeding,
`Petitioner has shown a reasonable likelihood of prevailing in that a person of
`ordinary skill in the art, armed with the knowledge of Prohaska and Appel,
`would know how to vary the spring element when incorporating the added
`stiffness of the spoiler so that the desired force distribution is achieved.
`Patent Owner’s contentions are not supported by evidence at this time and
`may be further developed during the course of this proceeding.
`
`14
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`Regarding the distance between the spoiler and the windscreen, the
`spoiler of the proposed combination is positioned the same distance
`disclosed in Prohaska, and therefore, Prohaska does not teach away from the
`claimed subject matter. See Ex. 1014; Prelim. Resp. 13; Ex. 1004, 1:19–21,
`3:121–125.
`Petitioner’s rationale is adequate for this stage of the proceedings. At
`this stage of the proceeding, the question is not whether a preponderance of
`the evidence supports Petitioner’s position, but rather whether Petitioner has
`provided sufficient evidence, based on the current record, to show a
`reasonable likelihood of prevailing on its asserted grounds. Compare 35
`U.S.C. § 314(a) (regarding threshold for instituting a trial) with 35 U.S.C. §
`316(e) (regarding proving unpatentability of a claim).
`c) “Primary Reference”
`Patent Owner mentions that Prohaska only discloses a wiper blade for
`windows of motor vehicles and a separate spoiler component, yet “Petitioner
`bills Prohaska as the primary reference.” Prelim. Resp. 12 n.2. To the
`extent that Patent Owner suggests that Appel should be labeled as the
`primary reference rather than Prohaska, such an argument is unpersuasive
`because the order of references is of no consequence. See In re Bush, 296
`F.2d 491, 496 (CCPA 1961) (“[W]here a rejection is predicated on two
`references each containing pertinent disclosure which has been pointed out
`to the applicant, we deem it to be of no significance, but merely a matter of
`exposition, that the rejection is stated to be on A in view of B instead of on B
`in view of A, or to term one reference primary and the other secondary.”).
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`Conclusion
`3.
`On the record before us, Petitioner has demonstrated a reasonable
`likelihood of prevailing in the contention that claim 1 is unpatentable over
`Prohaska and Appel. Because Petitioner has demonstrated a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims
`of this ground of unpatentability, we institute on claims 1, 2, and 8.11
`
`B. OBVIOUSNESS OVER PROHASKA AND HOYLER
`1.
`Petitioner’s Contentions
`Petitioner contends that claim 1 would have been obvious over
`Prohaska and Hoyler. Pet. 18. Specifically, Petitioner contends that Hoyler
`is directed to a wiper bar for windshield wipers that includes an elongated
`band-shaped spring elastic support element (longitudinal spring 5) that
`distributes pressure and includes concave and convex surfaces.12 Pet. 14–15,
`20–21, 23; Ex. 1006, 1:1, 2:15–19, 2:24–3:4, 3:8–9;13 Ex. 1015. Petitioner
`contends that Hoyler discloses an elongated rubber-elastic wiper strip
`(rubber blade 1) and a connection device (central clamp 9, eyelet-like
`opening 10, and hump 7).14 Pet. 14–15, 20–21, 23; Ex. 1006, 1:1, 2:15–19,
`2:24–3:4, 3:8–9, Fig. 1; Ex. 1015.
`
`
`11 Patent Owner does not present additional arguments for claims 2 or 8.
`12 Parenthetical nomenclature is Hoyler’s.
`13 The English translation of Hoyler (Ex. 1016) does not include line
`numbers. Cross reference to the original German version provides an
`approximation.
`14 Parenthetical nomenclature is Hoyler’s.
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`Petition contends that Prohaska discloses a component (spoiler) as
`claimed. Pet. 10–12, 19–20, 22–23; Ex. 1004, 1:8–16, 25–52, 1:68–70,
`2:56–58, 2:71–75, 3:16–21, Figs 3, 6; Ex. 1008 ¶¶ 37–40; Ex. 1015.
`Petitioner contends that Prohaska’s spoiler: can be retrofitted to a wiper
`blade, diminishes liftoff tendency, and provides reliable contact between the
`wiper and the windscreen. Pet. 10–12, 19–20, 22–23; Ex. 1004, 1:8–16, 25–
`52, 1:68–70, 2:56–58, 2:71–75, 3:16–21, Figs 3, 6; Ex. 1008 ¶¶ 37–40; Ex.
`1015.
`
`In light of these disclosures, Petitioner contends that it would have
`been obvious to combine Prohaska’s connection device (spoiler) with
`Hoyler’s wiper blade. Pet. 18, 22–23. Petitioner reasons that such a
`combination would have been the predictable use of prior art elements
`according to the functions disclosed in Hoyler and Prohaska. Id. at 23.
`Petitioner adds that this combination would yield predictable results and was
`nothing more that the simple arrangement of old elements with each
`performing the same function it was known to perform. Id. at 22–24; Ex.
`1008 ¶ 48. Petitioner reasons that the proposed combination: conforms to
`the curvature of any windshield, counters liftoff tendency, distributes force
`evenly over the windshield, and both reduces noise buildup and prevents
`excessive stress at low vehicle speeds. Pet. 23; Ex. 1008 ¶ 48.
`2.
`Patent Owner’s Arguments
`a) Component
`Here, as with the prior ground of unpatentability, Patent Owner argues
`that Petitioner has not made a sufficient showing regarding a component as
`claimed. Prelim. Resp. 8–10. Our analysis here parallels the analysis of the
`previous ground of unpatentability. First, Patent Owner does not address
`
`17
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`IPR2016-00038
`Patent 6,292,974 B1
`
`cogently the evidence identified by Petitioner regarding Hoyler’s wiper
`blade having a support element that includes a convex surface and regarding
`Prohaska’s component (spoiler). Second, Patent Owner’s argument attacks
`Prohaska individually, but Petitioner relies upon a combination of the
`references. Specifically, as explained above, Petitioner proposes to mount
`Prohaska’s spoiler on the support element of Hoyler’s wiper, which includes
`a convex surface.
`b) Rationale
`Patent Owner’s argument that Petitioner has not provided an adequate
`rationale for the ground of unpatentability applies to this ground of
`unpatentability as well. Prelim. Resp. 11–13. Our analysis of this argument
`parallels that of the previous ground of unpatentability.
`Patent Owner also argues that Hoyler’s disclosure of the importance
`of reducing wiper blade weight teaches away from the proposed
`combination that increases weight. Prelim. Resp. 14 (citing Pet. 4 and Ex.
`1006, col. 2). Indeed, Hoyler discloses that reducing the weight of moving
`parts reduces stress upon the drive elements. Ex. 1006, 2:21–22. However,
`this disclosure is not a teaching away. A person of ordinary skill in the art
`would understand that reducing weight is not the sole design criteria.
`Rather, weight is a design consideration to be balanced with other
`considerations, such as reducing liftoff tendency.
`c) “Primary Reference”
`Patent Owner’s statement that “Petitioner bills Prohaska as the
`primary reference” is applicable to this ground as well. See Prelim. Resp. 12
`n.2. In parallel with the analysis above, to the extent that Patent Owner
`suggests that Hoyler should be labeled as the primary reference rather than
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`IPR2016-00038
`Patent 6,292,974 B1
`
`Prohaska, such an argument is unpersuasive because the order of references
`is of no consequence. In re Bush, 296 F.2d 496.
`3.
`Conclusion
`On the record before us, Petitioner has demonstrated a reasonable
`likelihood of prevailing in the contention that claim 1 is unpatentable over
`Prohaska and Hoyler. Because Petitioner has demonstrated a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims
`of this ground of unpatentability, we institute on claims 1, 2, and 8.15
`
`
`V. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has
`demonstrated that the information presented in the Petition and in the
`Preliminary Response shows that there is a reasonable likelihood that
`Petitioner would prevail in demonstrating that claims 1, 2, and 8 of the ’974
`patent are unpatentable under 35 U.S.C. § 103.
`At this stage of the proceeding, the Board has not made a final
`determination as to the patentability of any challenged claim or any
`underlying factual and legal issues.
`
`
`
`
`15 Patent Owner does not present additional arguments for claims 2 or 8.
`
`19
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`IPR2016-00038
`Patent 6,292,974 B1
`
`
`VI. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted with respect to the
`following grounds of unpatentability:
`(1) claims 1, 2, and 8 as unpatentable under 35 U.S.C. § 103(a) over
`Appel and Prohaska;
`(2) claims 1, 2, and 8 as unpatentable under 35 U.S.C. § 103(a) over
`Hoyler and Prohaska;
`FURTHER ORDERED that no other ground of unpatentability is
`authorized for this inter partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’974 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial.
`
`
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`20
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`IPR2016-00038
`Patent 6,292,974 B1
`
`PETITIONER:
`
`Richard M. Koehl
`James R. Klaiber
`David Lansky
`HUGHES HUBBARD & REED LLP
`richard.koehl@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`david.lansky@hugheshubbard.com
`
`
`
`PATENT OWNER:
`
`Enrique Iturralde
`SHEARMAN & STERLING LLP
`Enrique.Iturralde@shearman.com
`
`
`21
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`
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