PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`Paper No. ______
`Filed: October 9, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Costco Wholesale Corporation
`Petitioner
`
`v.
`
`Robert Bosch LLC
`Patent Owner
`
`
`
`U.S. Patent 6,292,974
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 6,292,974
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`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
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`
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1 
`III. 
`PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103............ 2 
`IV.  GROUNDS FOR STANDING ........................................................................ 2 
`V. 
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED UNDER 37 U.S.C. § 312 AND 37 C.F.R. §§ 42.22(A)(1)
`AND 42.104(B)(1)-(2) ..................................................................................... 3 
`A. 
`Claims for Which Review Is Requested - 37 C.F.R. § 42.104(b)(1) .... 3 
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`B. 
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`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2) ................ 3 
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`VI.  THE ’974 PATENT ......................................................................................... 3 
`A. 
`Prosecution and Issuance of the ’974 Patent ......................................... 5 
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`B. 
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`Claim Construction ............................................................................... 9 
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`VII.  OVERVIEW OF PRIOR ART ........................................................................ 9 
`A. 
`Prohaska (Exhibit 1004) ..................................................................... 10 
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`B. 
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`C. 
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`Appel (Exhibit 1005) .......................................................................... 12 
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`Hoyler (Exhibit 1006) ......................................................................... 14 
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`VIII.  DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY
` ....................................................................................................................... 15 
`A. 
`Legal Standards ................................................................................... 16 
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`Obviousness .............................................................................. 16 
`1. 
`Level of Skill in the Art .............................................................. 17 
`2. 
`Claim 1 Is Unpatentable ...................................................................... 18 
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`Claim 2 Is Unpatentable ...................................................................... 24 
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`Claim 8 Is Unpatentable ...................................................................... 25 
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`A. 
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`B. 
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`C. 
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`IX.  CONCLUSION .............................................................................................. 27 
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`
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`Exhibit
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`LIST OF EXHIBITS
`Description
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`U.S. Patent No. 6,292,974, “Glass Wiper Blade For Motor Vehi-
`cles,” to Merkel et al.
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`Prosecution History of U.S. Patent No. 6,292,974
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`Proof of Service filed by Patent Owner in Civil Action No. 12-
`574-LPS (consolidated)
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`UK Patent Application GB No. 2,106,775 (“Prohaska”)
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`U.S. Patent No. 3,192,551 (“Appel”)
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`German Patent No. 1,028,896 (“Hoyler”)
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`U.S. Patent No. 3,418,679 (“Barth”)
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`Declaration of Dr. Gregory W. Davis in Support of Petition for
`Inter Partes Review of U.S. Patent 6,292,974
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`U.S. Patent No. 3,317,945 (“Ludwig”)
`
`Joint Claim Construction Chart
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` 1011
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`Robert Bosch LLC’s Opening Claim Construction Brief, April
`24, 2015
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`Declaration of Dr. Eric Maslen, sworn to April 23, 2015 (the
`“Maslen Decl.”) and accompanying Technology Tutorial
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`Declaration of Dr. Daniel H. Kruger, sworn to October 8 2015
`(the “Kruger Decl.”)
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`Animation of Appel-Prohaska: Kruger Decl. Appendix A
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`Animation of Hoyler-Prohaska: Kruger Decl. Appendix B
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`Illustrations of Claim 1: Kruger Decl. Appendix C
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`Illustrations of Claim 2: Kruger Decl. Appendix D
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`Exhibit
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`Description
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`1018
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`Illustrations of Claim 8: Kruger Decl. Appendix E
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`I.
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`Introduction
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`Costco Wholesale Corporation (“Petitioner” or “Costco”) requests inter
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`partes review (IPR) of claims 1, 2 and 8 of U.S. Patent No. 6,292,974 (“the ’974
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`patent”) (Ex. 1001). This petition demonstrates there is a reasonable likelihood
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`that Petitioner will prevail in proving, by at least a preponderance of the evidence,
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`that claims 1, 2 and 8 of the ’974 patent encompass subject matter that is unpatent-
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`able under 35 U.S.C. § 103(a) in view of prior art that the Office did not have or
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`did not fully consider during prosecution. Claims 1, 2 and 8 of the ’974 patent
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`should accordingly be canceled.
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`II. Mandatory Notices under 37 C.F.R. § 42.8
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`Real Party-in-Interest: Costco is the real party-in-interest seeking IPR.
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`Related Matters: The ‘974 Patent is asserted along with 17 other patents in
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`Robert Bosch LLC v. Alberee Products Inc. et al., Civil Action No. 12-574-LPS
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`(consolidated with Civil Action No. 14-142-LPS), currently pending in the United
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`States District Court for the District of Delaware (the “Delaware Action”) and was
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`previously asserted in Robert Bosch LLC v. Trico Prods. Corp., No. 12-cv-437
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`(N.D. Ill.), Robert Bosch LLC v. Pylon Manufacturing Corp., No. 1:08cv542 (D.
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`Del.), Robert Bosch LLC v. Old World Industries, Inc., No. 1:10cv1437 (N.D. Ill.)
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`and Robert Bosch LLC v. Ningbo Xinhai Aiduo Automobile Wiper Blade Manufac-
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`tory Co., No. 2:14cv1855 (D. Nev.). It is anticipated that additional Petitions for
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`inter partes review may also be filed in relation to one or more of U.S. Patents No.
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`6,836,926, No. 6,944,905, No. 6,973,698, No. 7,228,588, No. 7,484,264, No.
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`8,099,823, and No. 8,544,136, which are also asserted in the District of Delaware
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`matter. Petitioner is not aware of any other current judicial or administrative mat-
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`ters that would affect, or be affected by, a decision in this proceeding.
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`Lead and Back-Up Counsel and Service Information: The following desig-
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`nates lead counsel, backup counsel, and service information for the Petitioner. Peti-
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`tioner consents to electronic service.
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`
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`Lead Counsel
`Richard M. Koehl
`Reg. No. 54,231
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6062
`
`Fax (212) 422-4726
`richard.koehl@hugheshubbard.com
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`III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103
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`The required fees are submitted herewith. If any additional fees are due at
`
`Back-Up Counsel
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6125
`
`Fax (212) 422-4726
`james.klaiber@hugheshubbard.com
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`any time during this proceeding, the Office may charge such fees to Deposit Ac-
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`count No. 083264.
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`IV. Grounds for Standing
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`Petitioner certifies that, under 37 C.F.R. § 42.104(a), the ’974 patent is
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`available for inter partes review, and Petitioner is not barred or estopped from re-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`questing inter partes review of the ’974 patent on the grounds identified below.
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`This petition is being filed less than one year after Petitioner was served with a
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`complaint alleging infringement of the ’974 patent. See Oct. 10, 2014 Proof of
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`Service (Ex. 1003).
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`V.
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`Statement of Precise Relief Requested for Each Claim Challenged under
`37 U.S.C. § 312 and 37 C.F.R. §§ 42.22(a)(1) and 42.104(b)(1)-(2)
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`A. Claims for Which Review Is Requested - 37 C.F.R. § 42.104(b)(1)
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`Petitioner seeks cancellation of Claims 1, 2 and 8 of the ’974 patent.
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`B.
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`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2)
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`Ground #1. Claims 1, 2 and 8 are unpatentable under 35 U.S.C. § 103(a) in
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`view of Prohaska (Ex. 1004) and Appel (Ex. 1005).
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`Ground #2. Claims 1, 2 and 8 are unpatentable under 35 U.S.C. § 103(a) in
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`view of Prohaska (Ex. 1004) and Hoyler (Ex. 1006).
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`The asserted grounds are not redundant because Prohaska, Appel and Hoyler
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`each disclose different variants of wiper apparatus that are suitable for use with a
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`wind deflector.
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`VI. THE ’974 PATENT
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`The ‘974 patent discloses and claims an automotive wiper blade assembly.
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`Citing to the German counterpart of Appel (DE 1,247,161), the ’974 patent states
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`that prior art wiper blade assemblies had support elements that protruded far past
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`the wiper strip in the middle region of the wiper blade (see Appel Fig. 4), which
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`led to reduced contact pressure so that proper wiping was no longer possible at
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`high vehicle speeds. As a solution to the wind lift problem, the ‘974 patent dis-
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`closes a wiper blade assembly comprising a flat spring support element to whose
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`top surface an airfoil is mounted, as shown at left, below:
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` ’974 patent - Figure 4
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` Prohaska - Figure 6
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`But long prior to the priority date of the ‘974 patent, it was known to provide
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`a windshield wiper assembly with a wind deflection strip to solve the problem of
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`high speed wind lift as shown by Prohaska. Prohaska also teaches that existing
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`wiper blades may be retrofitted by clipping wind deflector strips on a flexible strip,
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`and that a flexible wind deflector strip may be inserted onto the head of the wiper
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`strip. Prohaska, 1:68-70, 4:3-7.
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`German Patent No. DE 1028896 to Hoyler (“Hoyler”) (Ex. 1006) taught that
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`by reducing the weight of a wiper blade, the stress upon drive elements is reduced,
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`less wear and tear occurs after identical running time, and increased wiper speeds
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`are possible. See, e.g., Hoyler, col. 2.1
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`A.
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`Prosecution and Issuance of the ’974 Patent
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`The file history of the ’974 patent is attached hereto as Exhibit 1002. The
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`applicant initially submitted nine claims, all but three of which were initially re-
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`jected as anticipated by EP 0 316,114 to Wright and GB 1,425,820 to Vickerson,
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`relevant figures of which are reproduced below:
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` Wright Fig. 3
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` Vickerson Fig. 4C
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`In an office action dated June 13, 2000 (Ex. 1002 at 83-91), the Examiner
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`stated that Wright anticipated originally filed claims 1-3 and 7-9 and Vickerson an-
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`ticipated originally filed claims 1-3, 8, and 9 (see Ex. 1002 at 86-87), all of which
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`broadly claimed the combination of a “striplike, spring elastic support element
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`(12)” provided with “a leading-edge face (36 or 60), which extends longitudinally
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`of the wiper blade” and “which crosswise to its length forms an acute angle (α)
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`with the window.” Ex. 1002 at 17.
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`1 Citations to Hoyler are made to the translation included in Ex. 1006.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`The Examiner also rejected originally filed claims 4 and 6 as unpatentable
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`under 35 U.S.C. § 103 in view of Vickerson. Id. at 88. The Examiner interpreted
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`these as requiring the leading edge face to be “on a separate component that . . . is
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`glued to a side of the support element.” Id. Vickerson disclosed a triangular lead-
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`ing edge that was molded with the wiper strip. The Examiner concluded that
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`“[w]hether such is molded with the wiper strip to the support element or glued as a
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`separate component to the wiper strip appears a mere design choice.” Id. at 89.
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`The only claim initially deemed allowable by the Examiner was originally
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`filed claim 5, which required that the leading edge have “a hollow curvature (60)
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`facing into the wind.” Id. at 89-90.
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`In response, the Applicants cancelled all of their original claims, submitted a
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`new claim 18 which corresponded with original claim 5, and new claims 10-17
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`which corresponded with original claims 1-4 and 6-9. Ex. 1002 at 101. The appli-
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`cants asserted that Vickerson did not anticipate the claims because it did not dis-
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`close “a wiper arm connected to the support element” and the claimed subject mat-
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`ter lacked “a support bracket construction.” Id. at 101. The applicants asserted
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`that Wright did not anticipate the claims because it did not disclose “a substantially
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`flat support element.” Id. at 102.
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`In a subsequent office action dated December 22, 2000, the Examiner reject-
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`ed all of the applicant’s then pending claim in view of U.S. Patent No. 3,317,945 to
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`Ludwig (“Ludwig”; Ex. 1009) Figures 5 and 7 of which are below:
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`The Examiner stated that Ludwig anticipated application claims 10, 11, 17,
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`and 18 and rendered obvious all of the other claims. With regard to application
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`claims 12-16, the Examiner stated that Ludwig disclosed everything claimed there-
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`in except for the requirement that the leading edge face be “formed as a separate
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`component.” Ex. 1002 at 97, 117. But this, the Examiner stated, “appears to be an
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`obvious variant of Ludwig” and “[i]t appears that the unity or diversity of compo-
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`nents would depend more upon the choice of the manufacturer, and the conven-
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`ience and availability of the machines and tools necessary to construct the wiper
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`blade, rather than on any inventive concept.” Id. at 117. Continuing the Examiner
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`stated, “It would have been obvious to one of skill in the art to make the wiper strip
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`and component of Ludwig of separate components attached to the support element
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`instead of integral as a mere design choice, lacking any criticality of such manner
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`of manufacture.” Id.
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`With respect to application claim 14, which required the leading edge “com-
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`ponent” to be “glued” to the support element (12), the Examiner stated that “the
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`particular attachment, whether it be glue, rivets, welding, etc appears but a mere
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`choice of manufacturing design.” Id. at 117. With respect to application claim 16,
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`which required the leading edge component to be “composed of plastic” (id. at 98),
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`the Examiner stated, “note that Ludwig discloses making the blade and thus the
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`component of vinyl.” Ex. 1002 at 117.
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`In response, the Applicants cancelled application claims 10 and 18, submit-
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`ted a new claim 19, and made application claims 11-17 dependent on the new
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`claim 19. New application claim 19 recited a “spring-elastic support element
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`which distributes a pressure applied by a wiper arm” and “a component which is
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`separate from the wiper strip and is mounted directly to the convex surface of said
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`support element” Ex. 1002 at 129 (emphasis added). These limitations were as-
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`serted to distinguish Ludwig on the basis that: “While the stiffener strip 19 of
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`Ludwig provides lateral rigidity, the support element of the applicant’s invention is
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`responsible to equally distribute the load applied by the wiper arm along the wiper
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`strip to the windscreen window.” Id. at 124. “Therefore,” the applicant continued,
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`“the wiper strip and the separate component can be adapted to their special re-
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`quirements for providing optimal windscreen wiping and producing an additional
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`load created by the wind during high speed.” Id. “Adapted” in this context meant
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`that the wiper strip and leading edge could be “composed of different materials”
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`and “have different hardnesses.” Id. at 125.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`The Examiner then allowed the claims without articulating any reasons for
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`allowance. Id. at 134-36.
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`B. Claim Construction
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`For purposes of inter partes review, claims should be accorded their “broad-
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`est reasonable construction” in light of the specification and prosecution history of
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`the ’974 patent. 37 C.F.R. § 42.100(b). Petitioner asserts that none of the claim
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`terms in the ’974 patent need to be construed for purposes of this petition because
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`under any reasonable construction the claims are invalid. Patent Owner has assert-
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`ed in the Delaware Action that the term “support element” “should be given its
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`plain and ordinary meaning in each of the asserted patents,” including the ‘974 pa-
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`tent. See Joint Claim Construction Statement (Ex. 1010).
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`While the claim construction proceedings in Delaware are not governed by
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`the “broadest reasonable construction” standard, and Petitioner does not agree that
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`Patent Owner’s construction represents the broadest reasonable construction of this
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`claim term in the abstract, for purposes of this proceeding the Patent Owner should
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`not be heard to assert a narrower construction than was set forth in the Patent
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`Owner’s claim construction briefing in the Delaware Action.
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`VII. Overview of Prior Art
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`Prior to July 9, 1998, the earliest priority date of the ’974 patent, that state of
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`the art included wiper blades containing: (i) a curved, band-shaped, spring-elastic
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`support element; (ii) a wiper strip; (iii) a connection device; and (iv) a wind deflec-
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`tor.
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`Below, Petitioner shows that Claims 1, 2 and 8 of the ’974 patent are un-
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`patentable as rendered obvious over Prohaska in view of Appel or Hoyler. Each of
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`these references is prior art pursuant to 35 U.S.C. § 102(b). As explained above,
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`wiper blades were well known in the art before July 9, 1998. These references
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`show that the challenged claims of the ’974 patent describe no more than the pre-
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`dictable use of prior art elements according to their established functions.
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`Furthermore, as explained in more detail below, a person of ordinary skill in
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`the art would have reason to combine Prohaska with Appel to obtain wiper blades
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`falling within the scope of Claims 1, 2 and 8 of the ’974 patent. A person of skill
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`in the art would also have reason to combine Prohaska with Hoyler to obtain wiper
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`blades falling within the scope of Claims 1, 2 and 8 of the ’974 patent.
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`A.
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`Prohaska (Exhibit 1004)
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`GB No. 2,106,775, entitled “Wiper blade assembly comprising spoiler,”
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`published on April 20, 1983 on a UK patent application by Hans Prohaska et al.
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`(Ex. 1004). Prohaska was not before the Examiner during the prosecution of the
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`’974 patent.
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`Prohaska is directed to wiper blades whose spoilers can be connected with
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`the wiper element in a simple way, which counter the lifting force that occurs at
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`high vehicle speeds, thereby ensuring reliable contact between the wiper element
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`and windscreen. Prohaska, 1:8-16, 1:38-42. Prohaska explains that a variety of
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`spoilers have emerged in response to the problem of wind-lift, but these spoilers all
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`had disadvantages:
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`Thus the spoilers to be attached to the yoke or to be inserted in
`it can only be secured thereon in a relatively complicated way
`and, moreover, the connecting points are subject to considerable
`wear and do not look very nice. The other embodiment known
`from [a prior art specification] including a spoiler formed out of
`the wiper element might not be stable enough to act against the
`air stream in all cases, bcause [sic] of the rubber-elastic materi-
`als normally used for the production of wiper elements. Moreo-
`ver, as far as technology is concerned, the production of such a
`wiper element might be very difficult and therefore expensive.
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`Id. at 1:25-37.
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`To avoid these concerns, Prohaska discloses a wiper blade having a support-
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`ing structure for holding a wiper element of rubber-elastic material, a flexible strip
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`extending over almost the entire length of the wiper element to stiffen it, and a
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`spoiler formed or attached on the flexible strip “[t]o maintain contact pressure in
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`use.” Id. at 1:43-52, 2:56-58. In several examples, the spoiler forms an integral
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`part with the flexible strip. Id. at 2:71-75.
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`The embodiment reflected in Figures 3 and 6, reproduced below, includes an
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`“inclined surface 18 which closely rests against the back 31 of the flexible strip 30
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`and is lapped over by it.” Id. at 3:8-10. Prohaska notes that “[i]t is easily possible
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`to retrofit a wiper blade by squeezing a spoiler against its flexible strip or clipping
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`it on this flexible strip.” Id. at 1:68-70. Prohaska further states that “[t]he pressure
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`exerted by the air stream on the back 31 of the flexible strip 30 can especially ef-
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`fectively be transmitted to the head 11 of the wiper element due to the close fit of
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`the parts, so that the tendency of their being lifted is diminished.” Id. at 3:16-21.
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`Prohaska - Figure 3
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` Prohaska - Figure 6
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`B. Appel (Exhibit 1005)
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`U.S. Patent No. 3,192,551, entitled “Windshield Wiper Blade Assembly,”
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`issued on July 6, 1965 on an application by Walter D. Appel (Ex. 1005). Appel
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`was not before the Examiner during the prosecution of the ’974 patent. The im-
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`proved wiper blade assembly disclosed in Appel is directed to a simplified spring
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`wiper blade backbone construction that is flexibly adaptable to efficient wiping of
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`variable curvatures as well as relatively flat portions of vehicle windshields. See
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`Appel, 1:11-15.
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`Specifically, as seen in Figure 7, reproduced below, a “rubber wiper blade
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`and attaching means in which a spring backbone element 45 similar to that of
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`FIGS. 4-6 has a modified rubber blade 46 attached by bonding at 47.” Id. at 4:19-
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`22. Figures 1 and 5 of Appel also illustrate these features and are similarly repro-
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`duced below:
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`Appel - Figure 1
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`Appel - Figure 7
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`Appel - Figure 5
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`Appel further discloses that the spring support element has a concave and a
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`convex surface which defines corresponding planes. Id. at 3:9-16. Appel repre-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`sents an early disclosure that a spring support element, mounted to a rubber wiping
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`blade, “together operate to distribute a centrally applied actuating arm pressure
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`load relatively uniformly along the length of the blade.” Id. at 1:23-28.
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`C. Hoyler (Exhibit 1006)
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`German Patent No. 1,028,896, entitled “Wiper bar for windshield wipers,”
`
`issued on April 24, 1958 on application by Alfred Hoyler (Ex. 1006). Hoyler was
`
`not before the Examiner during the prosecution of the ’974 patent.
`
`The disclosure of Hoyler is directed to a wiper bar for windshield wipers.
`
`Hoyler sets forth the following disadvantages of prior art wiper blades: 1) prior art
`
`wiper blades that use multiple parts develop noise during operation, particularly at
`
`the inversion points of the wiping motion; 2) wiper blades that use elastic inserts
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`for noise reduction are ground over time by wear and tear, in the winter the joints
`
`lock up by icing and the metal parts become unsightly due to weathering; and, 3)
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`other wiper blades were inflexible and could not be adapted to wipe a curved
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`windshield surface.
`
`To overcome these disadvantages, Hoyler describes wiper bars that avoid
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`metal parts and metal joints. This results in a lower weight of the moving parts of
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`the windshield wiper which leads to a reduction of stress upon the drive elements,
`
`less wear and tear on the windshield wiper and allows for increased wiper speed.
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`Hoyler also sets forth spring elements that allow the wiper bars to be used on
`14
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`curved windshields. Below is Figure 1 and Cross-section C-C from Hoyler.
`
` Hoyler - Figure 1
`
`
`
`
`
`
`
` Hoyler - Cross-section C-C
`
`Hoyler discloses a wiper blade for windows of motor vehicles (col. 1) that
`
`has an elongated band-shaped spring elastic support element 5 which distributes a
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`pressure and has concave and convex surfaces. The wiper blade has an elongated
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`wiper strip 1, which is mounted to the concave surface. Hoyler discloses a connec-
`
`tion device 9, 10, 7 for attaching a wiper arm at the middle portion and on the top
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`side of the support element (Figure 1).
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`VIII. Detailed Explanation of Grounds for Unpatentability
`
`Petitioner respectfully submits that this Petition demonstrates a reasonable
`
`likelihood that the Petitioner will prevail in demonstrating the unpatentability of
`
`15
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`66810272_2
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`each of Claims 1, 2 and 8 of the ’974 patent. The references cited herein provide
`
`technical disclosures that the Office did not have and therefore did not fully con-
`
`sider.
`
`A. Legal Standards
`
`
`1. Obviousness
`
`In an obviousness analysis, the Court “must ask whether the improvement is
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`more than the predictable use of prior art elements according to their established
`
`functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). If the answer
`
`to this threshold question is “no,” then the claimed subject matter is unpatentable
`
`under § 103(a) without more. See id. (“when a patent ‘simply arranges old ele-
`
`ments with each performing the same function it had been known to perform’ and
`
`yields no more than one would expect from such an arrangement, the combination
`
`is obvious.” (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). This
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`rule applies with special force where claimed subject matter involves “the simple
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`substitution of one known element for another or the mere application of a known
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`technique to a piece of prior art ready for the improvement.” Id.
`
`“One of the ways in which a patent’s subject matter can be proved obvious
`
`is by noting that there existed at the time of invention a known problem for which
`
`there was an obvious solution encompassed by the patent’s claims.” Id. at 419-20.
`
`In this case, among the “known problem[s]” was that the curvature of the wiper
`16
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`blade did not always match the curvature of the windshield and wiper blades have
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`support elements that protrude far past the wiper strip in the middle region of the
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`wiper blade, which leads to (1) either a reduced contact pressure so that proper
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`wiping is no longer possible at high vehicle speeds, (2) undesirable noise buildup,
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`and (3) excessively high stress (wear and tear) on the drive components and on the
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`rubber of the wiper at low vehicle speeds.
`
`“[A]n implicit motivation to combine [prior art references] exists . . . when
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`the ‘improvement’ is technology-independent and the combination of references
`
`results in a product or process that is more desirable, for example because it is
`
`stronger, cheaper, . . . faster, lighter, . . . more durable, or more efficient.” Dystar
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`Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
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`1368 (Fed. Cir. 2006).
`
`2.
`
`Level of Skill in the Art
`
`As of not later than July 9, 1998, the level of skill level in the art of the ’974
`
`patent included at least the ability to make the subject matter disclosed in the fol-
`
`lowing patents and printed publications relating to wiper blades:
`
` U.K. Patent Application No. G.B. 2,106,775, “Wiper Blade Assembly Com-
`
`prising Spoiler,” to Prohaska et al. (“Prohaska”) (Ex. 1004).
`
` U.S. Patent No. 3,192,551, “Windshield Wiper Blade Assembly,” to Appel
`
`17
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`(“Appel”) (Ex. 1005).
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`
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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` German Patent Publication No. 1,028,896, “Wiper Bar for Windshield Wip-
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`ers,” to Hoyler (“Hoyler”) (Ex. 1006).
`
`As of not later than July 9, 1998, the level of skill level in the art also in-
`
`cluded the ability to make predictable use of the materials described above accord-
`
`ing to their established functions. A person of ordinary skill in the art would have
`
`the education and experience in mechanical engineering to have knowledge of the
`
`information deployed in these patents and printed publications.
`
`A. Claim 1 Is Unpatentable
`
`Petitioner asserts that Claim 1 is obvious in view of Prohaska and Appel or
`
`Hoyler (Grounds #1-#2). The following chart shows where each feature of Claim
`
`1 is disclosed. Appendices to the Kruger Declaration illustrate the same. See Kru-
`
`ger Decl. (Ex. 1013) Appendices (Exs. 1016 (illustrations) and 1014 and 1015 (an-
`
`PROHASKA
`“This invention concerns
`a wiper blade for wind-
`screen cleaning installa-
`tions on vehicles, espe-
`cially on motor vehi-
`cles.” Prohaska, 1:5-7.
`
`
`
`APPEL
`“This invention relates to
`improvements in windshield
`wiper blade assemblies and
`more particularly to a sim-
`plified spring wiper blade
`backbone construction flex-
`ibly adaptable to efficient
`wiping of variable curva-
`tures as well as relatively
`flat portions of vehicle
`windshields.” 1:11-15; Fig-
`ure 1.
`
`
`18
`
`imation)).
`
`CLAIM 1
`1. A wiper blade
`for windows of
`motor vehicles,
`comprising a
`curved, band-
`shaped, spring-
`elastic support el-
`ement which dis-
`tributes a pressure
`applied by a wiper
`arm and has a
`concave and a
`
`
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`PROHASKA
`
`APPEL
`
`shows
`7
`“FIGURE
`a…rubber wiper blade and
`attaching means in which a
`spring backbone element
`45… has a modified rubber
`blade 46 attached by bond-
`ing at 47.” 4:18-22; Figure
`7.
`
`
`shows
`7
`“FIGURE
`a…rubber wiper blade and
`attaching means in which a
`spring backbone element
`45… has a modified rubber
`blade 46 attached by bond-
`ing at 47.” 4:18-22; Figures
`5 and 7.
`
`
`
`
`.
`
`A “spoiler [i.e. compo-
`nent] that can be con-
`nected with the wiper
`element… which wiper
`element is flexibly stiff-
`ened by a flexible strip
`extending over almost its
`entire
`length, whereby
`the wiper element
`is
`provided with at least
`one spoiler, and wherein
`the spoiler is formed on
`or attached on the flexi-
`ble
`strip.” Prohaska,
`1:39-52; Figures 3 and 6.
`
`The elongation 22 can
`be directed “in the
`downward direction per-
`19
`
`CLAIM 1
`convex surface
`which defines cor-
`responding planes;
`an elongated rub-
`ber-elastic wiper
`strip placeable on
`a window to be
`wiped and mount-
`ed to said concave
`surface of
`said
`support
`element
`which
`faces
`the
`window, substan-
`tially longitudinal-
`ly parallel to said
`concave surface;
`a connection de-
`vice provided for a
`wiper arm and ar-
`ranged directly on
`a convex side of
`said support ele-
`ment; and
`
`component
`a
`which is separate
`from said wiper
`strip and is mount-
`ed directly to the
`convex surface of
`said support ele-
`ment so as to form
`a
`leading-edge
`face extending in a
`longitudinal direc-
`tion of the support
`element and form-
`ing,
`as
`seen
`crosswise
`to
`its
`longitudinal exten-
`sion, an acute an-
`gle with a plane
`which
`extends
`
`
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`66810272_2
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,292,974
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`APPEL
`
`HOYLER
`“This invention relates to a
`wiper bar for windshield
`wipers” Holyer, 1:1.
`
`“The longitudinal springs 5
`are inserted in lateral slots.”
`Hoyler, 2:18-19, Figure 1.
`
`“in the case of curved glass
`springs preliminarily bent
`according to the curvature
`of the windshield.” Hoyler,
`3:8-9.
`
`
`“In Fig. 1 1 represents the
`rubber blade, with its profile
`generally being discernible
`from the cross-section C-C.
`A strong back part 2 is con-
`nected via a strip 3 with the
`actual wiper lip 4.” Hoyler,
`2:15-18.
`
`PROHASKA
`pendicularly or at an
`acute angle and to con-
`duct it as far as possible
`down the pane, so that
`the air stream appearing
`behind the wiper blade is
`carried away from the
`wiper element 10.