UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`
`DECLARATION OF DR. STEVEN DUBOWSKY REGARDING
`U.S. PATENT NOS. 6,973,698; 6,944,905;
`6,292,974; 7,228,588; 7,484,264; AND 8,099,823
`
`
`
`
`
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 1
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`
`DECLARATION OF DR. STEVEN DUBOWSKY REGARDING
`U.S. PATENT NOS. 6,973,698; 6,944,905;
`6,292,974; 7,228,588; 7,484,264; AND 8,099,823
`
`
`
`
`
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 1
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`I, Steven Dubowsky, hereby declare as follows:
`
`1.
`
`I have been retained by Patent Owner Robert Bosch LLC (“Patent
`
`Owner” or “Bosch”) in connection with inter partes review (“IPR”) proceedings
`
`brought by Costco Wholesale Corporation (“Costco” or “Petitioner”), specifically
`
`Case Nos. IPR2016-00034; IPR2016-00036; IPR2016-00038; IPR2016-00039;
`
`IPR2016-00040; and IPR2016-00041. These IPRs involve, respectively, U.S.
`
`Patent Nos. 6,973,698 (“the ’698 patent”); 6,944,905 (“the ’905 patent”);
`
`6,292,974 (“the ’974 patent”); 7,228,588 (“the ’588 patent”); 7,484,264 (“the ’264
`
`patent”); and 8,099,823 (“the ’823 patent”) (collectively, the “Bosch patents”). I
`
`submit this declaration in support of Bosch’s responses in these IPR proceedings. I
`
`have personal knowledge of the matters stated herein and would be competent to
`
`testify to them if required.
`
`2.
`
`Bosch’s counsel has informed me that the following chart sets forth
`
`the “grounds,” or how the Patent Trial and Appeal Board (“the Board”) has
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`preliminarily found various claims of the Bosch patents unpatentable over the prior
`
`art:
`
`
`
`
`
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`Robert Bosch Exhibit 2003
`Page 2
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`IPR No. Pat. No. Claims
`IPR2016-
`6,973,698 1
`00034
`
`
`
`Grounds
`OBVIOUSNESS: prior art is USP 4,807,326
`(“Arai ’326”) and USP 4,028,770 (“Appel
`’770”)
`ANTICIPATION: prior art is USP 5,325,564
`(“Swanepoel ’564”)
`OBVIOUSNESS: prior art is GB 2,106,775
`(“Prohaska ’775”) and DE 1,028,896 (“Hoyler
`’896”)
`OBVIOUSNESS: prior art is USP 3,192,551
`(“Appel ’551”) and Prohaska ’775
`OBVIOUSNESS: prior art is Hoyler ’896 and
`Prohaska ’775
`7,228,588 1, 12, 14 OBVIOUSNESS: prior art is PCT WO
`99/02383 (“Kotlarski ’383”) and Prohaska
`’775
`OBVIOUSNESS: prior art is PCT WO
`99/12784 (“Merkel ’784”) and Prohaska ’775
`OBVIOUSNESS: for claims 1 and 2, prior art
`is Prohaska ’775 and either Kotlarski ’383 or
`Merkel ’784
`OBVIOUSNESS: for claim 3, prior art is (i)
`Prohaska ’775 and (ii) either Kotlarski ’383 or
`Merkel ’784 and (iii) either PCT WO
`00/34090 (“Kotlarski ’090”) or USP
`3,121,133 (“Mathues ’133”)
`OBVIOUSNESS: for claims 1, 9, and 10,
`prior art is Prohaska ’775 and one of Appel
`’551, Hoyler ’896, Merkel ’784, or Kotlarski
`’383
`OBVIOUSNESS: for claim 6, prior art is (i)
`Prohaska ’775 and (ii) one of Appel ’551,
`Hoyler ’896, Merkel ’784, or Kotlarski ’383
`and (iii) either Kotlarski ’090 or Mathues ’133
`
`IPR2016-
`00036
`
`IPR2016-
`00038
`
`IPR2016-
`00039
`
`
`IPR2016-
`00040
`
`
`IPR2016-
`00041
`
`
`
`
`6,944,905 13, 17,
`18
`
`6,292,974 1, 2, 8
`
`7,484,264 1, 2, 3
`
`8,099,823 1, 6, 9,
`10
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 3
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`3.
`
`I have reviewed and am familiar with the Bosch patents, including
`
`their specifications. I have also reviewed and am familiar with the prior art in the
`
`chart directly above.
`
`4.
`
`I have been asked to provide my technical review, analysis, insights,
`
`and opinions regarding the Bosch patents in view of the prior art cited in the table
`
`above.
`
`I.
`
`QUALIFICATIONS
`
`5.
`
`I am Professor Emeritus
`
`in
`
`the Department of Mechanical
`
`Engineering and in the Department of Aeronautics and Astronautics at the
`
`Massachusetts Institute of Technology.
`
`6.
`
`I was previously the Director of the MIT Mechanical Engineering
`
`Field and Space Robotics Laboratory, the Head of the Systems and Design
`
`Division of the Mechanical Engineering Department, and have also served as the
`
`Associate Head of the MIT Interdepartmental Laboratory for Manufacturing and
`
`Productivity. I hold several engineering degrees, including a doctorate in
`
`Engineering Science from Columbia University. I am an active researcher with
`
`over 350 publications in the area of mechanical and electromechanical systems
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 4
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`design and analysis. The focus of my work is on advancing design methods and
`
`control systems for complex mechanical and electromechanical systems.
`
`7.
`
`I have many years of industry experience. For a time I worked at
`
`Electric Boat Division of the General Dynamics Corporation on nuclear
`
`submarines, and then I was employed for about eight years as a Senior Engineer
`
`with the Perkin-Elmer Corporation, where I worked in the design and analysis of
`
`complex mechanisms, electromechanical and electro-optical systems used in
`
`precision, high-speed optical systems and devices.
`
`8.
`
`I worked on many projects consulting for industry and government
`
`over the years. For example, in or around 2000 I worked at MIT on an industrial
`
`project for Foster-Miller Corporation that involved design and development of
`
`systems to assemble weapons automatically on aircraft carriers. From 2002 to
`
`2005 I worked with U.S. governmental agencies, including National Aeronautics
`
`and Space Administration (NASA) and Defense Advanced Research Projects
`
`Agency (DARPA), doing research in automotive systems. We collaborated with
`
`and were also funded by U.S. Army’s Tank-automotive and Armaments Command
`
`Research Laboratory and Army Research Office. I also worked on a project
`
`related to automotive systems and control systems that was supported by Ford
`
`
`
`Robert Bosch Exhibit 2003
`Page 5
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`Motor Company, from 2004 to 2008. Additionally, I have consulted for SRI
`
`International, a nonprofit research institute; EG&G, Inc., a U.S. national defense
`
`contractor; Schlumberger Corporation, Corporate Research Laboratories; SVG
`
`Corporation, to name a few. All these consulting projects related to mechanical
`
`systems, often including control systems and robotic devices.
`
`9.
`
`All my engineering and consulting experience is relevant to the
`
`technological field of the inventions claimed in Bosch’s patents because a wiper
`
`blade is essentially a mechanical device or a mechanism with elastic and rigid
`
`elements, linkages, joints and clearances in those joints. The support elements that
`
`are central to the beam wiper blades at issue in these IPRs are the type of elastic
`
`elements considered in my research, and this is the general field in which I have
`
`significant expertise.
`
`10.
`
`I am a lifetime Fellow of the American Society of Mechanical
`
`Engineers (ASME), and a lifetime Fellow of the Institute of Electrical and
`
`Electronic Engineering (IEEE). I have been an Associate Editor of the
`
`professional journal, Mechanisms and Machine Theory, as well as a technical
`
`reviewer for numerous professional and scholarly publications. I founded the
`
`Journal of Mechanisms, Transmissions and Automation in Design, a Transaction
`
`
`
`Robert Bosch Exhibit 2003
`Page 6
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`of the ASME, and served as its Technical Editor for five years. I am a registered
`
`Professional Engineer in the State of California.
`
`11.
`
`I have received many professional awards and honors, all of which are
`
`listed in my curriculum vitae (Ex. 2004), including the Lifetime Achievement
`
`Award in Mechanical Design from the Design Division of the ASME. I also have
`
`multiple issued patents and pending patent applications.
`
`12. My professional efforts are now focused on PV Pure, a company I co-
`
`founded with one of my colleagues at MIT. The company produces solar-powered
`
`water-desalinating and purifying systems that our team designed. The systems are
`
`small and relatively easy to maintain, and thus are useful both in commercial
`
`settings like resort hotels in areas without abundant potable water, and as
`
`community resources (funded in part by PV Pure by sales of commercial systems)
`
`in places without a municipal clean-water supply where residents now have no
`
`choice but to pay for expensive bottled water. For example, as described on our
`
`website, in cooperation with local NGOs and operators PV Pure installed a system
`
`in the small village of La Mancolona, in the heart of the Yucatan jungle in Mexico,
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`where bottled water is not affordable and the available water supply was not
`
`purified and contained harmful levels of bacteria and dissolved solids. The cost to
`
`
`
`Robert Bosch Exhibit 2003
`Page 7
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`village is less than 2 pesos for a 20 liter bottle for all supplies, energy and labor,
`
`much less than the cost of bottled water at 25 pesos per bottle. Our systems
`
`include many small-seeming engineering improvements over prior technology that
`
`collectively make our systems efficient and reliable enough to be practical. We
`
`have a number of patent applications pending on our improvements.
`
`13.
`
`I have been involved in Bosch wiper litigations for several years, and
`
`am familiar with both conventional and beam wiper blades, as well as the Bosch
`
`patents. I have spoken with Bosch engineers during this time regarding the history,
`
`the technology, the research, the design, the fabrication, and the development of
`
`wiper blades, including beam blades, and the engineering difficulties associated
`
`with beam blades.
`
`14. A true and correct copy of my curriculum vitae further setting forth
`
`my qualifications is being submitted as Exhibit 2004, and is incorporated by
`
`reference.
`
`15.
`
`I am being compensated for my time in this matter. My compensation
`
`is not contingent on the outcome of these IPR proceedings.
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 8
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`II. MY UNDERSTANDING OF THE LEGAL STANDARDS AND THE
`LEVEL OF ORDINARY SKILL IN THE ART
`
`16. Bosch’s counsel has informed me that the prior art is to be read as a
`
`person of ordinary skill in the art (a “POSITA”) would read it. Bosch’s counsel
`
`has informed me that, in an IPR, the claims of the Bosch patents are given the
`
`broadest reasonable construction (in light of the specification of the patent in
`
`which it appears) as understood by a POSITA.
`
`17. Bosch’s counsel has informed me that a claim in a patent is
`
`anticipated if all of its elements are present in a single prior art reference.
`
`18. Bosch’s counsel has informed me that a claim is obvious when the
`
`differences between the subject matter sought to be patented and the reference are
`
`such that the subject matter as a whole would have been obvious to a POSITA at
`
`the time the invention was made. Bosch’s counsel has informed me that to prove
`
`that a combination of references renders a claim obvious, it is necessary to (1)
`
`identify the particular references that, in combination, make the patent obvious; (2)
`
`specifically identify which elements of the patent claim appear in each of the
`
`asserted references; and (3) explain how and why the references would have been
`
`combined in order to create the features recited in the patent claims.
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 9
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`19.
`
`I have been asked to consider the level of ordinary skill in the art that
`
`the POSITA would have had at the time the claim was made. In deciding the level
`
`of ordinary skill, I considered the following: (a) the levels of education and
`
`experience of persons working in the field; (b) the types of problems encountered
`
`in the field; and (c) the sophistication of the technology. Using these factors, it is
`
`my opinion that a POSITA would have either an undergraduate degree in
`
`mechanical engineering or a similar discipline, or several years of experience in the
`
`field of wiper blade manufacture and design.
`
`III. THE BOSCH PATENTS AND STATE OF THE ART
`20. The Bosch patents at issue in the IPRs are directed to beam wiper
`
`blades, which are a departure from the conventional prior art blades.
`
`21. Conventional wiper blades have been around since the 1940’s (e.g.,
`
`Ex. 2008, U.S. Patent No. 2,596,063 to Anderson), with hundreds of improvements
`
`introduced over the years. Conventional wiper blades use a number of brackets or
`
`yokes at multiple levels to capture the wiper strip at a number of spaced-apart
`
`attachment points to the wiper strip. The downward force is transferred through
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 10
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`the attachment points to the wiper strip. See, e.g., Ex. 2009, U.S. Patent No.
`
`3,418,679, Fig. 1, col. 4, ll. 21–39.1
`
`
`
`22.
`
`I understand from my studies that the prior art conventional wiper
`
`blades possess a number of disadvantages. The superstructure fails to evenly
`
`distribute the pressure applied by the wiper arm, resulting in pressure points on the
`
`rubber wiping element and thus an uneven wipe. Further, when exposed to
`
`extreme weather, the pressure-distributing frame of the conventional blades tends
`
`to become clogged by ice and snow, which renders the blade rigid and impairs its
`
`performance.
`
` Also, the conventional blades did not meet the aesthetic
`
`requirements of purchasers. And, the high profile of the convention blades caused
`
`wind lift issues and driver visibility problems.
`
`
`1 Citations to patents are in the form “col. X, ll. Y–Z” or “X:Y–Z,” where X
`represents the column number and Y–Z represents the range of line numbers in the
`cited portion.
`
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 11
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`23. With beam wiper blades, pressure from the wiper arm to the wiping
`
`element is applied through the use of a spring elastic support element, which
`
`ideally helps to distribute the load applied by the wiper arm along the wiper strip to
`
`the windscreen window to achieve an even wipe. See, e.g., U.S. Patent No.
`
`3,192,551 (“Appel ’551”), col. 2, ll. 23−27. Because they avoid the need for a
`
`high profile superstructure, on which ice and snow can accumulate, beam blades
`
`were hoped to perform better in extreme weather conditions.
`
`24.
`
`It is my understanding that a beam wiper blade did not appear on the
`
`market until September of 1999, when it was first introduced by Bosch. Bosch
`
`engineers encountered a number of problems during
`
`their beam-blade
`
`development, and their ideas and new solutions allowed them to develop and
`
`manufacture the first beam blade capable of meeting the practical performance
`
`requirements for a windshield wiper blade.
`
`25. The problems Bosch encountered during their development included:
`
`an unexpected amount of wind lift at high speed (despite the low profile); how to
`
`distribute force properly for good wiping in view of the sensitivity of beam blades
`
`to the parameters of their design and in view of the relative curvatures of the blade
`
`and the windshield; and how to make them quiet, especially how to eliminate the
`
`
`
`Robert Bosch Exhibit 2003
`Page 12
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`flipping of the wiper strip during blade reversal. It was understood that beam
`
`blades and conventional blades were significantly different, such that one could not
`
`simply transfer conventional blade structures to beam blades.
`
`26. Now I will briefly describe each of Bosch’s patents.
`
`27. The ’698 patent is directed to a beam wiper blade that includes a
`
`carrying (support) element that distributes pressure along the entire length of the
`
`wiper strip such that the contact force of the wiper strip with the window is greater
`
`in the center section than in at least one of its end sections. ’698 patent at Abstract,
`
`1:59–62, Figs. 5–7. The reduced force in the end section (or sections) encourages
`
`the wiper lip to flip over sequentially from the end or ends to the center, avoiding a
`
`knocking noise that would otherwise occur if the entire lip flips over
`
`simultaneously. Id. at 1:65–2:4.
`
`28. The wiping quality at the ends of the wiper blade is maintained by
`
`having the curvature of the support element be greater than the greatest curvature
`
`
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 13
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`of the windshield in the wiping region, and by having the curvature in the center
`
`section sharper than that in the end sections. Id. at 2:20–28, Figs. 2, 8.
`
`
`
`29. The ’974 patent discloses a beam wiper blade that includes a
`
`component (spoiler) that is separate from the wiper strip, mounted directly to the
`
`convex surface of the support element, and whose leading-edge face forms an
`
`acute angle with the support element. As a consequence of this deflection, a
`
`fraction of the wind force is applied downward toward the windshield, thereby
`
`increasing the contact pressure and reducing wind lift. See, e.g., ’974 patent, cl. 1.
`
`
`
`30. The ’905 patent in one embodiment discloses and claims an
`
`improvement to the wind deflection strip (or spoiler)—a wind deflection strip with
`
`two diverging legs connected at a common base, that is “disposed between and in
`
`
`
`Robert Bosch Exhibit 2003
`Page 14
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`contact with” the claimed end caps and the device piece (the part connecting the
`
`wiper blade to the wiper arm). In addition to reduction of wind lift, the claimed
`
`structure provides benefits in terms of reductions of the blade weight and material
`
`cost. ’905 patent at 1:55–64.
`
`
`
`31. The ’588, ’264, and ’823 patents share a common specification. They
`
`claim improvements in a beam wiper blade with a wind deflection strip (or spoiler)
`
`with two diverging sides. “Support means” are located inside the spoiler and help
`
`to stabilize the spoiler sides. E.g., ’588 patent at 2:17–29. This provides the
`
`necessary form stability of the wind deflection strip even under the high pressure
`
`of the oncoming winds. Id.
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 15
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`
`
`32. Additional embodiments include a wind deflection strip (spoiler)
`
`“designed as a binary component,” with its claw-like extensions having a greater
`
`hardness than a longitudinal area lying closer to the spoiler base point.
`
`IV. ANALYSIS
`IPR 2016-00034 (the ’698 patent)
`A.
`1.
`
`The Question of the Anticipation of Claim 1 of the ’698
`patent
`
`33.
`
`It is my opinion that Swanepoel ’564 does not anticipate claim 1 of
`
`the ’698 patent.
`
`34. Claim 1 of the ’698 patent requires “an elongated spring-elastic
`
`carrying element disposed on a side of the wiper strip remote from the window,
`
`said spring-elastic carrying element extending parallel to an axis of elongation of
`
`said wiper strip to distribute a contact force against the window over an entire
`
`
`
`Robert Bosch Exhibit 2003
`Page 16
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`length of said wiper strip, said wiper strip having a center section and two end
`
`sections.”
`
`35. Claim 1 further requires that “said contact force of said wiper strip [is]
`
`greater in said center section than in at least one of said two end sections.”
`
`36.
`
`I have been asked whether Swanepoel ’564 teaches this element. It is
`
`my opinion that Swanepoel ’564 does not teach that “said contact force of said
`
`wiper strip [is] greater in said center section than in at least one of said two end
`
`sections,” and therefore does not anticipate claim 1.
`
`37. Relevant to my opinion is the POSITA’s understanding of the claimed
`
`“end” and “center” portions of the wiper blade. It is my opinion that a POSITA
`
`would understand that the “end sections” of a beam blade, such as that claimed in
`
`the ’698 patent, are those portions within the range of the “end effects” of the
`
`beam. Those portions are approximately three times in length the relevant
`
`dimension of the beam, in this case the width. This would be approximately a few
`
`centimeters of beam length per end in a typical beam blade. The “center section”
`
`is the section where the beam blade connects to the wiper arm. ’698 patent at
`
`4:36–37 (stating that the center section of the wiper blade is “where the linkage
`
`point of the wiper arm 18 is disposed”). The “end sections” and “center section”
`
`
`
`Robert Bosch Exhibit 2003
`Page 17
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
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`of the wiper strip refer to these same portions. Consistent with my opinion, the
`
`Swanepoel ’564 says that the “end portions may have a length of at least 20 mm”
`
`(or 2 cm). Swanepoel ’564 at 2:49–50.
`
`38. Swanepoel ’564 teaches that the contact force is greater in the end
`
`sections than in the center section. See Swanepoel ’564 at 1:65–2:8, 2:20–22,
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`4:40–52, 4:40–52, 2:8–14, FIG. 4.
`
`39. The three quotes from Swanepoel ’564 that Costco’s expert Dr. Davis,
`
`focuses on—“The loading may decrease right at the tips . . . .”; “[I]t may be
`
`necessary to shed the distributed blade load at the tip portions of the wiper. . . .”;
`
`and “[A]t tip regions the backbone may be such that the force per unit length . . .
`
`decrease[s] from the constant value to zero at the extremities of the backbone”
`
`(Swanepoel ’564 at 5:13–18, 9:33–35, 9:33–35)—do not change my opinion. The
`
`first two quotes provide no force values, and refer only to (some unspecified)
`
`reduction of the contact force (or loads) at the “tips” (i.e., not in the whole end
`
`section). A POSITA could not determine when or if the contact force in the end
`
`sections of Swanepoel ’564 goes below the force in the center section (as required
`
`by the claim). The third quote provides only a single contact force value of zero,
`
`and only at the theoretical tip (again, not in the entire end section). Further, if a
`
`
`
`Robert Bosch Exhibit 2003
`Page 18
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`contact force of zero existed for some significant length at the ends of the
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`Swanepoel ’564 beam blade, then Swanepoel ’564 would fail to anticipate for an
`
`additional reason: it would not teach to “distribute a contact force against the
`
`window over an entire length of said wiper strip,” as required by claim 1 of the
`
`’698 patent.
`
`40. My opinions in this regard do not change even if one were to consider
`
`the beam of Swanepoel being used with windshields of various curvatures.
`
`Another variable would only make it more difficult to determine when or if the
`
`contact force in the end sections of Swanepoel ’564 ever go below the force in the
`
`center section.
`
`41.
`
`In summary, in spite of what Dr. Davis argues, Swanepoel ‘564
`
`teaches the opposite of claim 1’s force profile teaching.
`
`2.
`
`The Question of the Unpatentability of Claim 1 of the ’698
`patent over the Combination of Arai ’326 and Appel ’770
`
`42.
`
`I disagree that Arai ’326 and Appel ‘770 renders obvious claim 1 of
`
`the ‘698 patent.
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 19
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`43. Similar to my discussion above with respect to Swanepoel ’564,
`
`neither Arai ’326 nor Appel ’770 teach that “said contact force of said wiper strip
`
`[is] greater in said center section than in at least one of said two end sections.”
`
`44.
`
`It is my opinion that a POSITA would understand that Arai ’326
`
`teaches uniform contact force. See, e.g., Arai ’326 at 1:30–34, 1:12–15, 2:3–8,
`
`3:16–22, 3:16–22.
`
`45. While Arai ’326 acknowledges that there may be “small” pressure
`
`changes in actual implementation, (Arai ’326 at 3:48–4:3), Arai ’326’s goal is to
`
`effectively eliminate those inconsistencies and ensure as uniform a pressure
`
`distribution as possible, (Arai ’326 at, e.g., 1:24–34). A POSITA would understand
`
`that Arai ’326 teaches uniform pressure distribution (i.e., constant pressure) and that
`
`the unquantified “small” fluctuations in practice are still within the meaning of
`
`“uniform.”
`
`46.
`
`In this vein, a POSITA would understand that Figure 7 of Arai ’326
`
`only shows that the pressure (i.e., force) fluctuates slightly over the length. That is,
`
`Arai ’326 only shows that there is a general fluctuation up and down (which, again,
`
`Arai ’326 describes as “small”). And, even at “high pressure,” Arai ’326 provides
`
`no indication of what the contact forces are relative to the forces actually used in the
`
`
`
`Robert Bosch Exhibit 2003
`Page 20
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`wiper systems. Again, as discussed above, the goal of Arai ’326 is to create a wiper
`
`blade with a uniform pressure distribution.
`
`47. Figure 8 of Arai ’326 does not change my opinion about Arai’s
`
`disclosure. Figure 8 is what Arai ’326 teaches to avoid. That is, Figure 8 illustrates
`
`the prior art—which Arai ’326 identifies as being problematic and suggests to
`
`improve: “FIG. 8 shows prior art wiperblade. According to the invention, the
`
`pressure change in the longitudinal direction is small and pressure change at
`
`opposite end portions when the pressing force is changed is also small.” Arai ’326
`
`at 3:67–4:3.
`
`48.
`
`I have reviewed Appel ’770 and do not find any teaching there either
`
`that “said contact force of said wiper strip [is] greater in said center section than in
`
`at least one of said two end sections.” Appel ’770 teaches that the contact pressure
`
`should be uniform. Appel ’770 at 1:13–24 (“The uniform wiping pressure is
`
`achieved by forming the wiper superstructure in a curvilinear manner … with the
`
`width and/or thickness and degree of curvature being proportioned or correlated
`
`with the modulus of elasticity, load and length of the blade, so as to assure for the
`
`desired uniform wiping pressure.”).
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 21
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`49.
`
`I have been asked if the following disclosure of Appel ’551, if
`
`included within Appel ’770, would change my opinion—it does not:
`
`Thus a parabolic effect in spring rate leading to
`progressive wrapping from ends to center and uniformity
`of pressure contact can be achieved
`through
`the
`provision of (1) a parabolic form of free curvature in a
`spring of uniform section; (2) a parabolic form of width
`in a spring of uniform thickness and uniform curvature;
`or (3) a uniformly tapered thickness in a. spring of
`uniform width and uniform curvature. Obviously, it is
`also possible to combine in a number of different ways
`these various constructional approaches incorporating
`progressive dimensional variations
`in
`free
`form
`curvature, width and/or thickness along its length to
`provide a single spring backbone element having uniform
`pressure loading characteristics when pressed against a
`flat windshield
`.
`.
`.
`. With whatever specific
`constructional form is employed it may be adapted to
`also provide substantially uniform pressure loading on
`any given curved windshield surface by adding to the
`free form curvature which produces uniform pressure
`loading on a flat surface the additional curvature of the
`curved windshield surface.
`
`Appel ’551 at 3:9–36 (emphases added). This quote teaches a POSITA that in all
`
`circumstances a desired force distribution is uniform.
`
`50.
`
`It is further my opinion that a POSITA would not have been
`
`motivated to combine Arai ’326 and Appel ’770 to achieve the force distribution of
`
`claim 1 of the ’698 patent. As discussed above, neither reference teaches the force
`
`
`
`Robert Bosch Exhibit 2003
`Page 22
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`distribution profile of claim 1. Even if such a combination was contemplated, a
`
`combination of two references, both of which teach the desirability of a uniform
`
`pressure distribution, would not result in the substantially non-uniform pressure
`
`distribution of the ’698 invention. A POSITA would not take the shape of Appel
`
`’770 and use the disclosure of Arai ’326 Figure 8 to make the pressure in the end
`
`sections lower than in the center section, because Arai ’326 taught away from
`
`using such a pressure distribution.
`
`51.
`
`Indeed, the beam-blade prior art at the time was generally concerned
`
`with achieving the most uniform pressure distribution possible. See, generally, e.g.,
`
`Arai ’326, Appel ’551, Appel ’770. No prior art beam-blade reference suggested
`
`that in practice, the uniform pressure distribution would result in an undesirable
`
`noise when the wiper strip would flip over simultaneously over its entire length,
`
`Bosch’s inventor discovered this problem, and solved it by requiring the wiper
`
`blade to have a lower force in at least one end section, so the flipping over of the
`
`wiper strip starts in that section first, and gradually moves through the length of the
`
`wiper strip in a rolling fashion, mitigating the noise.
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 23
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`52.
`
`In addition, the curvature limitation of ’698 patent claim 1 is not
`
`disclosed or suggested by either of the two prior art references, Arai ’326 or Appel
`
`’770.
`
`53. Arai ’326 states that “[t]he curvature is preferably small at the opposite
`
`end portions and is large at the central portion. Further, the curvature at the
`
`longitudinally central portion may be opposite sense or downwardly convex.” Arai
`
`’326 at 1:60–63, Figs. 5, 6.
`
`
`
`A POSITA would understand that this statement refers to the radii of curvature (see
`
`also, e.g., Arai ’326 at 3:29–30 (“curvature is gradually decreased at . . . opposite
`
`end portions 3A and 3A”)). That is, a POSITA would understand that the backing
`
`member of Arai ’326 is curved more at the end portions than in the central portion,
`
`which is the opposite of the requirement in claim 1 of the ’698 patent.
`
`
`
`
`Robert Bosch Exhibit 2003
`Page 24
`COSTCO (Petitioner) v. ROBERT BOSCH (Patent Owner)
`IPR2016-00034; IPR2016-00036; IPR2016-00038;
`IPR2016-00039; IPR2016-00040; IPR2016-00041
`
`
`
`
`
`54. As discussed above, Appel ’770 discloses uniform pressure
`
`distribution, and a POSITA reading Appel ’770 would look to Appel ’551 only for
`
`discl
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