Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
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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,
`
`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00038
`U.S. Patent No. 6,292,974
`_____________________
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`
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`PATENT OWNER RESPONSE
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`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
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`Page
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`TABLE OF CONTENTS
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Level of ordinary skill in the art ...................................................................... 1
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`III. The combinations of Prohaska and Hoyler or Appel ’551 do not render
`obvious claims 1, 2, or 8 of the ’974 patent .................................................... 2
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`A.
`
`Petitioner relies on impermissible hindsight to combine the spoiler
`from Prohaska’s conventional blade onto the beam blade of
`Hoyler or Appel ’551 ............................................................................ 2
`
`1.
`
`2.
`
`3.
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`Conventional blades and beam blades are fundamentally
`different ....................................................................................... 3
`
`The previously unknown beam blade wind lift problem ............ 5
`
`The ’974 patent recognized the previously unknown beam
`blade wind lift problem and solved it in an unconventional
`manner ......................................................................................... 7
`
`B.
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`The objective indicia of non-obviousness ............................................. 7
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`IV. Dr. Davis lacks credibility ............................................................................. 15
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`V.
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`Conclusion ..................................................................................................... 19
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
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`TABLE OF AUTHORITIES
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` Page
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`Cases
`Alco Standard Corp. v. Tenn. Valley Auth., 808 F.2d 1490 (Fed. Cir.
`1986) ................................................................................................................... 12
`
`Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371 (Fed.
`Cir. 2004) .............................................................................................................. 7
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litigation, 676 F.3d 1063 (Fed. Cir. 2012) ............................................. 12
`
`Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) ................................. 2, 8
`
`InTouch Techs., Inc. v. VGo Comm’ns, Inc., 751 F.3d 1327 (Fed. Cir.
`2014) ..................................................................................................................... 3
`
`Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) ............... 7, 8, 9, 16
`
`Metabolite Labs., Inc. v. Laboratory Corp. of Am. Holdings, 370 F.3d
`1354 (Fed. Cir. 2004) .......................................................................................... 14
`
`Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001) ............................................. 2
`
`In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984) ....................................................... 12
`
`In re Sernaker, 702 F.2d 989 (Fed. Cir. 1983) ........................................................ 16
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) .......................... 8
`
`Transocean Offshore Deepwater Drilling Inc. v. Maersk Drilling
`USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012) ........................................................... 8
`
`Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc., 813 F.2d 1207 (Fed. Cir.
`1987) ..................................................................................................................... 8
`
`WBIP, LLC v. Kohler Co., ___ F.3d ___, 2016 WL 3902668 (Fed. Cir.
`July 19, 2016)...............................................................................................passim
`
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
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`
`Statutes
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`35 U.S.C. § 103(a) ..................................................................................................... 1
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`35 U.S.C. § 112 ........................................................................................................ 18
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`
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`Other Authorities
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`37 C.F.R. § 42.51(b)(1)(iii) ...................................................................................... 18
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
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`Exhibit Number
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`LIST OF EXHIBITS
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`Description
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`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`Ex. 2010
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`Ex. 2011
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`Cross-reference key correlating exhibits across instituted
`inter partes review proceedings
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`Deposition of Petitioner’s Declarant, Gregory Davis, dated
`July 7, 2016
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`Declaration of Dr. Steven Dubowsky
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`Curriculum Vitae of Dr. Steven Dubowsky
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`April 15, 2010 Trial Transcript from Robert Bosch LLC v.
`Pylon Manufacturing Corporation in the District of
`Delaware, Case No. 08-542 (SLR)
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`April 19, 2010 Trial Transcript from Robert Bosch LLC v.
`Pylon Manufacturing Corporation in the District of
`Delaware, Case No. 08-542 (SLR)
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`Declaration of Martin Kashnowski
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`U.S. Patent No. 2,596,063
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`U.S. Patent No. 3,418,679
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`Excerpt from Supplemental Initial Expert Report of Gregory
`Davis Regarding U.S. Patent Nos. 6,675,434, 6,836,926 and
`6,973,698 in In the Matter of Certain Wiper Blades, Inv. No.
`337-TA-816 before the U.S. International Trade
`Commission
`
`Order No. 94 from In the Matter of Certain Wiper Blades,
`Inv. No. 337-TA-816 before the U.S. International Trade
`Commission
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`Ex. 2012
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`[Not used; reserved]
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
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`Exhibit Number
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`Description
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`Ex. 2013
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`Ex. 2014
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`Ex. 2015
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`Ex. 2016
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`Excerpt from Declaration of Gregory Davis, Ex. 1013 in
`IPR 2016-00034
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`Plaintiff Robert Bosch LLC’s Amended Response to
`Defendant Costco Wholesale Corporation’s First Set of
`Interrogatories (No. 1), dated June 2, 2015, in Robert Bosch
`LLC v. Alberee Products, Inc., in the District of Delaware,
`Case No. 12-574 (LPS)
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`Exhibit 24 to Complaint in In the Matter of Certain Wiper
`Blades, Inv. No. 337-TA-816 before the U.S. International
`Trade Commission (claim charts)
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`Exhibit 25 to Complaint in In the Matter of Certain Wiper
`Blades, Inv. No. 337-TA-816 before the U.S. International
`Trade Commission (claim charts)
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
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`I.
`
`Introduction
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`Patent Owner Robert Bosch LLC (“Patent Owner” or “Bosch”) submits this
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`Patent Owner Response regarding U.S. Patent No. 6,292,974 (“the ’974 patent”).
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`The Board instituted inter partes review of claims 1, 2, and 8 of the ’974 patent as
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`to whether these claims are unpatentable under 35 U.S.C. § 103(a) over (1) U.S.
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`Patent No. 3,192,551 to Appel (“Appel ’551”) and GB 2,106,775 to Prohaska
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`(“Prohaska”); or (2) DE 1,028,896 to Hoyler (“Hoyler”) and Prohaska. For the
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`reasons set forth herein, Patent Owner respectfully submits that the Board should
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`find the challenged claims not unpatentable.
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`II. Level of ordinary skill in the art
`A person of ordinary skill in the art at the time of the invention of the ’974
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`patent (“POSITA”) would have had either an undergraduate degree in mechanical
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`engineering or a similar discipline, or several years of experience in the field of
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`wiper blade manufacture and design. Ex. 2003 at ¶¶ 16–19.
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`Petitioner asserts that “the level of skill level [sic] in the art of the ’974
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`patent included at least the ability to make the subject matter disclosed in
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`[Prohaska, Hoyler, and Appel ’551],” that “the level of skill level [sic] in the art
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`also included the ability to make predictable use of the materials and components
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`described above according to their established functions,” and that “[a] person of
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`ordinary skill in the art would have the education and experience in mechanical
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`U.S. Patent No. 6,292,974
`engineering to have knowledge of the information deployed in these patents and
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`printed publications.” Paper 1, Petition (“Pet.”) at 17–18. Petitioner is wrong,
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`confusing the “content of the prior art” Graham factor and the “level of skill in the
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`art” Graham factor. While the prior art can reflect the level of skill, the point of
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`identifying the level of skill is to avoid hindsight and add objectivity to the
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`obviousness analysis. “Skill in the art does not act as a bridge over gaps in
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`substantive presentation of an obviousness case, but instead supplies an important
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`guarantee of objectivity in the process.” Okajima v. Bourdeau, 261 F.3d 1350,
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`1355 (Fed. Cir. 2001). Compressing the content of the prior art and the skill of the
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`ordinary artisan into a single factor renders tautological the analysis of the scope of
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`the prior art—including the analysis of whether and how references would be
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`combined. It essentially assumes the sought-for result.
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`III. The combinations of Prohaska and Hoyler or Appel ’551 do not render
`obvious claims 1, 2, or 8 of the ’974 patent
`A.
`
`Petitioner relies on impermissible hindsight to combine the spoiler
`from Prohaska’s conventional blade onto the beam blade of
`Hoyler or Appel ’551
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`Petitioner acknowledges that neither Hoyler nor Appel ’551 teaches or
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`suggests the claimed “component . . . separate from said wiper strip and . . .
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`mounted directly to the convex surface of said support element so as to form a
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`leading-edge face extending in a longitudinal direction of the support element . . .”
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`Pet. at 19–22. Petitioner contends that this limitation—required by all challenged
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`claims—is taught by the spoiler of Prohaska’s conventional blade, and that it
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`would have been obvious to add this conventional spoiler onto the beam blade of
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`either Hoyler or Appel ’551. Pet. at 19–24. But, it is apparent that Petitioner’s
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`conclusory assertions improperly invoke hindsight reasoning and “rel[y] on [the
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`’974 patent] itself as [its] roadmap for putting . . . pieces of a ‘jigsaw puzzle’
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`together.” InTouch Techs., Inc. v. VGo Comm’ns, Inc., 751 F.3d 1327, 1351 (Fed.
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`Cir. 2014).
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`Putting aside its conclusory nature, Petitioner’s assertion fails for three
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`additional reasons: (1) the fundamental differences between conventional and
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`beam blades; (2) the beam blade wind lift problem the ’974 patent sought to solve
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`was previously unknown; and (3) the ’974 patent’s solution (adding a component
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`that increases the beam blade profile) ran counter to the conventional wisdom at
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`the time of the ’974 patent (e.g., that maintaining a low profile was desired).
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`1.
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`Conventional blades and beam blades are fundamentally
`different
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`Petitioner incorrectly treats conventional and beam blade technology as
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`interchangeable. While conventional and beam blades are superficially similar in
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`that they are both wiper blades, they are, in actual fact, fundamentally different
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`such that a POSITA would not have been motivated to combine conventional and
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`beam blade teachings at the time of the invention of the ’974 patent. Ex. 2003 at
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`¶¶ 21–25, 58–61.
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`Conventional blades—dating back to the 1940’s—use a number of brackets
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`(or yokes) at multiple levels to capture the wiper strip at a number of spaced-apart
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`attachment points to the wiper strip. Ex. 2003 at ¶ 21; see also, e.g., Ex. 2008,
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`U.S. Patent No. 2,596,063. In conventional blades, the downward force is
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`transferred through the attachment points to the wiper strip. Ex. 2003 at ¶ 21; see
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`also, e.g., Ex. 2009, U.S. Patent No. 3,418,679.
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`However, this conventional-blade design results in a number of
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`disadvantages, for example, (1) the superstructure fails to evenly distribute the
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`pressure applied by the wiper arm, resulting in pressure points on the rubber
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`wiping element and thus an uneven wipe; (2) when exposed to extreme weather,
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`the pressure-distributing frame of the conventional blades tends to become clogged
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`by ice and snow, which renders the blade rigid and impairs its performance; (3)
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`they did not meet the aesthetic requirements of purchasers; and (4) their high
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`profile causes wind lift issues and driver visibility problems. Ex. 2003 at ¶ 22.
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`Beam blade patents—as known to a POSITA at the time of the ’974
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`patent—sought to solve these problems by eliminating the yokes and utilizing a
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`low profile design. Ex. 2003 at ¶¶ 21–23, 58. In a beam blade, the wiper arm
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`pressure is distributed by a spring-elastic support element over the entire length of
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`the wiper strip. Ex. 2003 at ¶ 58; see generally Ex. 1005. Because of this,
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`pressure distribution in a beam blade is greatly affected by small changes in the
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`U.S. Patent No. 6,292,974
`beam shape, and by any additional components that may be attached to it. Ex.
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`2003 at ¶ 58. Thus, the conventional thinking at the time of the ’974 patent was to
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`avoid adding any additional components on a beam blade, keeping the profile of
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`the wiper blade very low, and thus making the beam perform the best. Ex. 2003 at
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`¶ 58.
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`The previously unknown beam blade wind lift problem
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`2.
`While wind liftoff—the reduction of contact pressure against a windshield
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`that occurs at high speeds—was generally recognized as a problem in conventional
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`blades, it was not a recognized problem in beam blades. Ex. 2003 at ¶¶ 59–60.
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`A POSITA at the time of the invention of the ’974 patent would have
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`thought that wind liftoff problems result from having too high a profile, i.e., from a
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`conventional blade’s yoke. Ex. 2003 at ¶ 60; Ex. 1004 at 1:8–11. Thus, as a beam
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`blade eliminates the yoke and utilizes a low profile, a POSITA would not have
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`thought that wind liftoff would be a problem in beam blades; and, even if a
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`POSITA had identified a wind liftoff problem in beam blades, the POSITA would
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`not have desired to raise the beam blade profile by adding a spoiler on top. Ex.
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`2003 at ¶ 60.
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`Petitioner, and its Declarant, Dr. Davis, have offered no evidence that the
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`wind lift problem was known for beam blades. They rely exclusively on the
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`teachings of Prohaska to argue that the wind lift problem was known. Pet. at 22–
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`23; Ex. 1008 at ¶¶ 37–40. But, Prohaska discloses only “retrofitting” a spoiler
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`onto a conventional blade. Ex. 1004 at 1:68–70, 2:35–36, 3:87–107; Ex. 2003 at
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`¶¶ 56–57, 61; Ex. 2002 at 110:25–111:25.1 And, as Dr. Davis admitted, neither
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`Hoyler nor Appel ’551 recognized or addressed the wind lift problem in beam
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`blades. Ex. 2002 at 128:18–130:14. This makes sense: While beam blades were
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`known in paper patents prior to Prohaska (both Hoyler and Appel ’551 pre-date it),
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`the beam blade wind lift problem was not and, as discussed in § III.A.1, above,
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`conventional wisdom taught to avoid anything that would increase or otherwise
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`alter a beam blade’s highly-sensitive profile.
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`1 There are currently six pending IPRs filed by Petitioner that involve overlapping
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`prior art references and the same Petitioner Declarant, Dr. Davis, Case Nos.
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`IPR2016-00034; IPR2016-00036; IPR2016-00038; IPR2016-00039; IPR2016-
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`00040; and IPR 2016-00041. Because the same references appear in multiple IPRs
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`with different exhibit numbers, and because the parties agreed to conduct a single,
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`consolidated deposition of Dr. Davis, Patent Owner provides herewith as Ex. 2001
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`(as it did during Dr. Davis’s deposition) a table showing the corresponding exhibit
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`numbers for references that appear in multiple IPRs.
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`3.
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`Case No. IPR2016-00038
`U.S. Patent No. 6,292,974
`The ’974 patent recognized the previously unknown beam
`blade wind lift problem and solved it in an unconventional
`manner
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`The ’974 patent—contrary to conventional thinking—recognized that there
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`was indeed a problem with wind liftoff in beam blades, and sought to solve the
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`problem in an unconventional manner: by adding a “component”—a spoiler—onto
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`the wiper blade. Ex. 1001 at 1:32–52, 1:64–2:3. This resulted in an increased
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`profile of the wiper blade, which, again, at the time was thought to have negative
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`impact on the highly-sensitive beam blade profile. Ex. 2003 at ¶¶ 58–60. “[A]n
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`invention can often be the recognition of a problem itself.” Leo Pharm. Prods.,
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`Ltd. v. Rea, 726 F.3d 1346, 1353 (Fed. Cir. 2013); Cardiac Pacemakers, Inc. v. St.
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`Jude Med., Inc., 381 F.3d 1371, 1377 (Fed. Cir. 2004) (“There can of course arise
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`situations wherein identification of the problem is itself the invention.”).
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`Accordingly, a POSITA would not have been motivated to combine a
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`conventional and beam blade generally, or specifically, Prohaska’s conventional
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`blade spoiler onto the beam blade of Appel ’551 or Hoyler—let alone would have
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`had any expectation of success.
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`The objective indicia of non-obviousness
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`B.
`“The objective indicia of non-obviousness play an important role as a guard
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`against the statutorily proscribed hindsight reasoning in the obviousness analysis.”
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`WBIP, LLC v. Kohler Co., ___ F.3d ___, 2016 WL 3902668, at *5 (Fed. Cir. July
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`19, 2016); see also Leo Pharms. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013)
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`(“[O]bjective indicia of nonobvious are crucial in avoiding the trap of hindsight
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`when reviewing, what otherwise seems like, a combination of known elements.”).
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`“‘[E]vidence of secondary considerations may often be the most probative and
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`cogent evidence in the record.’” WBIP, 2016 WL 3902668, at *5 (quoting
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`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983); and citing
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`Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc., 813 F.2d 1207, 1212 (Fed. Cir. 1987)
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`and Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 36 (1966)).
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`Objective considerations may include, for example, long-felt but unresolved
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`need, industry praise and awards, failure of others, commercial success, licensing,
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`unexpected results, and copying. WBIP, 2016 WL 3902668, at *7; Transocean
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`Offshore Deepwater Drilling Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340,
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`1350 (Fed. Cir. 2012); Leo. Pharms., 726 F.3d at 1358–59. All of these
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`considerations are implicated with respect to the challenged claims. And, while
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`there must be a nexus between the objective evidence and the merits of the claimed
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`invention, the nexus is presumed, where, as here, “the patentee shows that the
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`asserted objective evidence is tied to a specific product and that product ‘is the
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`invention disclosed and claimed in the patent.’” WBIP, 2016 WL 3902668, at *6.
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`“Conventional” wiper blades were long known in the art prior to the
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`invention at issue here. Ex. 2007 at ¶ 2; Ex. 2003 at ¶ 21. However, such
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`conventional blades have a number of disadvantages compared to what are now
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`commonly referred to as “beam” or “flat” wiper blades. Ex. 2007 at ¶ 2; Ex. 2003
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`at ¶¶ 22–23. For example, conventional blades can be clogged with ice and snow,
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`which can cause the blade to freeze and stick and lead to banding, which can result
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`in poor visibility. Ex. 2007 at ¶ 2; Ex. 2003 at ¶ 22. They are also prone to
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`wearing unevenly, with the portion of the wiper strip underneath the pressure
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`points wearing first, which can lead to streaking and poor visibility. Ex. 2007 at ¶
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`2; Ex. 2003 at ¶ 22. All of these problems with conventional wiper blades were
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`well known in the industry, but solutions to these problems were not. Ex. 2007 at ¶
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`2; Ex. 2005 at 271:4–22.
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`While beam blades were described in paper patents long before the invention
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`at issue here, (Ex. 2003 at ¶ 23), there were no commercially viable beam blades
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`prior to 2002, when, after significant engineering difficulties, Bosch satisfied the
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`above-described unresolved long-felt need by introducing a wiper blade called
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`Aerotwin into the automotive aftermarket, first in Europe and then in the United
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`States, (Ex. 2007 at ¶ 3, Ex. 2005 at 346:16–348:2).2 The Aerotwin was the first
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`2 WBIP, 2016 WL 3902668, at *7 (“Evidence of a long felt but unresolved need
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`tends to show non-obviousness because it is reasonable to infer that the need would
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`have not persisted had the solution been obvious.”); Leo Pharms., 726 F.3d at
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`1359.
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`commercially successful beam blade in the United States aftermarket, and was
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`given a number of awards, including both the Pace award and the Automechanika
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`award. Ex. 2007 at ¶ 3; Ex. 2005 at 239:6–16.3 The Pace award, in particular,
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`described the use of a flexible spoiler on the Aerotwin blade. Ex. 2007 at ¶ 3; Ex.
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`2005 at 337:10–23.
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`In 2005, Bosch introduced the Icon wiper blade to the United States
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`aftermarket. Ex. 2007 at ¶ 5. The Icon blade was a beam blade designed for use in
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`more applications with fewer part numbers than the Aerotwin blade. Ex. 2007 at ¶
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`5. The Icon blade was subject to praise and commercial success: (1) the demand
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`from Bosch customers for the Icon blade was considerably high, even though it
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`was more expensive than conventional blades; and (2) customers expressed a great
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`deal of excitement for the Icon blade. Ex. 2007 at ¶ 5; Ex. 2005 at 270:14–271:3.4
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`3 WBIP, 2016 WL 3902668, at *10, *12 (“Evidence that the industry praised a
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`claimed invention or a product which embodies the patent claims weighs against
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`an assertion that the same claim would have been obvious. . . . Demonstrating that
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`an invention has commercial value, that it is commercially successful, weighs in
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`favor of its non-obviousness.”).
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`4 WBIP, 2016 WL 3902668, at *10, *12 (“[I]f there is evidence of industry praise
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`in the record, it weighs in favor of the nonobviousness of the claimed invention. . .
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`U.S. Patent No. 6,292,974
`Both the Aerotwin blade5 and the Icon blade practice the challenged claims.
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`Ex. 2014 at 3 (identifying products and patents); Ex. 2015 at 33–57, 59–62
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`(Aerotwin claim charts); Ex. 2016 at 30–43, 45–48 (Icon claim charts); Ex. 2007 at
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`¶ 6; Ex. 2005 at 234:25–235:4, 249:25–250:5, 252:17–254:21, 353:22–354:1,
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`359:12–360:4; Ex. 2006 at 698:19–699:22.
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`Both blades include a flexible spoiler with diverging legs mounted on the
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`top of the blade, as well as plastic end caps. Ex. 2007 at ¶ 6; Ex. 2005 at 234:25–
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`235:4, 249:25–250:5, 252:17–254:21, 359:12–360:4; Ex. 2006 at 698:19–699:22.
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`This top-mounted spoiler totally ran against the grain of conventional wiper
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`understanding. Ex. 2003 at ¶¶ 22–25, 58–60, 65, 73, 77, 79. Adding structures to
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`a sensitive beam blade, especially structures that raise the profile, would not have
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`been expected to work and would have been expected to cause lift-off problems.
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`Ex. 2005 at 388:23–391:8; Ex. 2003 at ¶¶ 22–25, 58–60, 65, 73, 77, 79.6 Bosch
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`tested these products extensively before releasing them. Ex. 2007 at ¶ 6. One
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`. Demonstrating that an invention has commercial value, that it is commercially
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`successful, weighs in favor of its non-obviousness.”).
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`5 The Aerotwin is also referred to as the Bosch “OE” blade. Ex. 2014 at 3.
`6 WBIP, 2016 WL 3902668, at *10 (“If industry participants or skilled artisans are
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`skeptical about whether or how a problem could be solved or the workability of the
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`claimed solution, it favors non-obviousness.”).
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`aspect tested was noise. Ex. 2007 at ¶ 6. The Bosch beam blades were quiet in
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`operation, including when the wiping direction changes and the wiper strip flips
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`from one side to the other. Ex. 2007 at ¶ 6. These features were part of the reason
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`for the great customer demand for these products. Ex. 2007 at ¶ 6; Ex. 2005 at
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`270:14–271:3. Both products solved many of the problems associated with
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`conventional blades. Ex. 2007 at ¶ 6.
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`Further, the commercial success of the Icon product was in contrast to the
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`failure of a competitor’s beam-blade product, the Trico Innovision wiper
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`blade. Ex. 2007 at ¶ 7; Ex. 2005 at 250:6–251:7.7 The Trico product was
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`7 In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
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`Litigation, 676 F.3d 1063, 1082–83 (Fed. Cir. 2012) (“Evidence is particularly
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`probative of obviousness when it demonstrates both that a demand existed for the
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`patented invention, and that others tried but failed to satisfy that demand.”); In re
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`Piasecki, 745 F.2d 1468, 1475 (Fed. Cir. 1984) (finding nonobviousness where the
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`evidence demonstrated a failure of others to provide a feasible solution to a
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`longstanding problem); Alco Standard Corp. v. Tenn. Valley Auth., 808 F.2d 1490,
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`1500 (Fed. Cir. 1986) (affirming a nonobviousness finding where the evidence
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`showed that the relevant industry had searched for more than a decade for a
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`reliable solution and that major manufacturers in the industry had tried but failed to
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`develop such a solution).
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`U.S. Patent No. 6,292,974
`introduced in 2004, after the Aerotwin but before Icon, and it failed in the
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`marketplace. Ex. 2007 at ¶ 7; Ex. 2005 at 250:6–251:7. Notably, the Trico
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`product included neither a flexible spoiler nor end caps. Ex. 2007 at ¶ 7; Ex.
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`2005 at 250:6–251:7.
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`Bosch’s sales figures are indicative of commercial success.8 In 2006,
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`Bosch’s sales of the Icon blades were approximately $17M; in 2007, they were
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`approximately $24M; and in 2008, approximately $28M. Ex. 2007 at ¶ 8. These
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`sales figures are significant in the context of aftermarket wiper blades. Ex. 2007 at
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`¶ 8. In 2008, the Icon product was given the Frost & Sullivan award for
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`innovation. Ex. 2007 at ¶ 8.9 At that time, Frost & Sullivan was one of the more
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`prominent automotive research organizations. Ex. 2007 at ¶ 8.
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`Bosch created an entirely new and tremendously successful market category
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`when it introduced Aerotwin and Icon. Ex. 2007 at ¶ 9. But within a year,
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`knockoff products that looked identical to Icon appeared in the United States. Ex.
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`
`8 WBIP, 2016 WL 3902668, at *12 (“Demonstrating that an invention has
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`commercial value, that it is commercially successful, weighs in favor of its non-
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`obviousness.”).
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`9 WBIP, 2016 WL 3902668, at *10 (“[I]f there is evidence of industry praise in the
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`record, it weighs in favor of the nonobviousness of the claimed invention.”).
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`2007 at ¶ 9.10 In particular, like the Icon blade, the knockoff products included
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`spoilers with diverging legs similar to that shown on the cover of U.S. Patent No.
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`6,944,905, as well as end caps. Ex. 2007 at ¶ 9.
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`Bosch has sought to defend its patent rights relating to beam blades,
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`including at the 2010 trial of Bosch’s case against a company called Pylon. Ex.
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`2007 at ¶ 10; see also generally Ex. 2005, 2006. Despite Bosch’s efforts, however,
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`competitors continued to sell knockoff products that appeared to be copies of
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`Bosch’s aftermarket beam blades, including Icon and its successor products, such
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`as the Evolution wiper blade. Ex. 2007 at ¶ 10.11
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`However, the industry is now largely respectful of Bosch’s beam-blade
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`patent rights. Ex. 2007 at ¶ 11. All of Bosch’s major competitors have made
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`licensing agreements with Bosch relating to Bosch’s beam-blade patents. Ex. 2007
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`at ¶ 11.12 Bosch has received more than $
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`10 WBIP, 2016 WL 3902668, at *11 (“Copying may indeed be another form of
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` in royalties from these agreements,
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`flattering praise for inventive features . . . and thus evidence of copying tends to
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`show nonobviousness.”).
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`11 WBIP, 2016 WL 3902668, at *11 (“The fact that a competitor copied technology
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`suggests it would not have been obvious.”).
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`12 Metabolite Labs., Inc. v. Laboratory Corp. of Am. Holdings, 370 F.3d 1354, 1368
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`(Fed. Cir. 2004) (“The record contains evidence of objective indicia . . . [including]
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`U.S. Patent No. 6,292,974
`as well as agreements with smaller competitors. Ex. 2007 at ¶ 11. The patents
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`specifically licensed in most of these agreements include the ’974 patent. Ex. 2007
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`at ¶ 11.
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`It is also of note that the references asserted against the challenged claims in
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`this IPR were in the published prior art as of April 1983, over 14 years before the
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`filing of the Bosch patent. The substantial length of intervening time between the
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`prior art relied upon in the instituted ground and the claimed invention provides
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`further evidence of a long-felt but unresolved need.13
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`Accordingly, the objective indicia counsel a finding of non-obviousness.
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`IV. Dr. Davis lacks credibility
`These IPRs are not the first time that Petitioner’s technical expert, Dr.
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`Gregory Davis, has opined about wiper-blade patent issues. As noted in the
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`curriculum vitae attached to his declaration to this Board, (Ex. 1013 in IPR2016-
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`that Metabolite has licensed the invention to eight companies.”); In re Sernaker,
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`702 F.2d 989, 996 (Fed. Cir. 1983) (extensive licensing supports nonobviousness).
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`13 Leo Pharms., 726 F.3d at 1359 (“The record also shows evidence of long felt but
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`unsolved need . . . The length of the intervening time between the publication dates
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`of the prior art and the claimed invention can also qualify as an objective indicator
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`of nonobviousness.”).
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`00034, at 43–44), he previously opined on behalf of various parties in ITC
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`investigations concerning wiper blades.
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`What Dr. Davis did not note in his CV is that one of those Investigations,
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`number 337-TA-816, was requested by Bosch, and that the subject matter included
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`several of the Bosch patents about which he now offers his opinion to the Board.
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`(In the ITC investigation, Dr. Davis was retained by a different law firm for a
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`different party than in these IPRs. Patent Owner’s counsel here was counsel for
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`Bosch in that Investigation.)
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`He also did not explain to the Board that extensive portions of his
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`declaration in one of these IPRs (IPR2016-00034, regarding U.S. Patent No.
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`6,973,698) were copied directly from an expert report he signed in 2013 in
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`connection with the previous ITC investigation. Compare Ex. 2013 (portions of
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`Dr. Davis’s declaration to this Board) with Ex. 2010 (portions of Dr. Davis’s 2013
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`expert report); also N.B. the extraneous references in Dr. Davis’s declaration to the
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`Board, Ex. 2013, to a “provisional application” that is not involved in these IPRs.
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`The fact that Dr. Davis has opined before on some of the issues presented in
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`these IPRs does not, by itself, make his declarations not credible. Nor, by itself,
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`does the copying of the 2013 expert report into his 2016 declaration to the Board
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`make his opinions not credible. Nor even does his failure to note these facts in his
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`declaration make his opinions not credible.
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`However, what does make his opinions not credible is his failure to admit
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`these facts when he was testifying under oath at his deposition.
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`During the deposition, he was asked when he started considering the issues
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`described in his declarations in these IPRs (“I suppose it’s about a year ago,” Ex.
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`20