Filed: October 24, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
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`Case IPR2016-00038
`Patent 6,292,974
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`PETITIONER’S REPLY IN SUPPORT OF PETITION
`PURSUANT TO 37 C.F.R. § 42.23
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF CONTENTS
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`Page(s)
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`TABLE OF AUTHORITIES ................................................................................... iii
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`CERTIFICATE OF WORD COUNT ........................................................................ 1
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`I.
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`II.
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`THE BOARD PROPERLY SET FORTH THE LEVEL OF
`ORDINARY SKILL IN THE ART ................................................................. 1
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`THE COMBINATIONS OF APPEL AND PROHASKA, AND
`HOYLER AND PROHASKA, RENDER THE CLAIMS
`OBVIOUS ........................................................................................................ 5
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`A. A Wiper Strip’s Profile Is the Well-Known Cause of Wind-Lift,
`Which Is Fundamentally the Same in Conventional and Flat-
`Spring Wipers ........................................................................................ 5
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`B.
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`C.
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`The ’974 Patent Addressed the Well-Known Wind-Lift
`Problem With a Well-Known Spoiler Solution .................................... 9
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`Bosch Ignores Petitioner’s Hindsight-Free Reasons for
`Combining Prohaska’s Spoiler With a Flat-Spring Wiper ................. 10
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`III. BOSCH’S EVIDENCE OF PURPORTED SECONDARY
`CONSIDERATIONS ARE INSUFFICIENT TO OVERCOME
`A FINDING OF OBVIOUSNESS ................................................................ 11
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`A.
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`B.
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`C.
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`D.
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`E.
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`There Is no Nexus Between the ’974 Patent and Any Purported
`Commercial Success, and No Success Has Been Established ............ 12
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`Bosch’s Proffered “Evidence” of Skepticism and Unexpected
`Results Does Not Undercut Obviousness ........................................... 16
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`There Is No Evidence of Failure of Others or Long-Felt Need .......... 17
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`Bosch’s Vague Claims of Praise Are Insufficient .............................. 18
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`Bosch’s Fails to Show Copying by Competitors ................................ 19
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`F.
`Bosch’s Licensing “Evidence” Does Not Support
`Nonobviousness ................................................................................... 20
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`IV. ATTACKS ON DR. DAVIS’S CREDIBILITY ARE
`INSUPPORTABLE IN FACT AND LAW ................................................... 20
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`A.
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`B.
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`Prior Consistent Statements Support Dr. Davis’s Credibility and
`Accurately Represent Dr. Davis’s Opinions ....................................... 20
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`Prior Indefiniteness Opinions Regarding a Different Patent Are
`Immaterial to Dr. Davis’s Current Opinions ....................................... 21
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`V.
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`CONCLUSION .............................................................................................. 22
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`ii
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`TABLE OF AUTHORITIES
`
`Cases
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 2
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`Page(s)
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`In re Antor Media, Corp.
`689 F.3d 1282, 1293–1294 (Fed. Cir. 2012) ...................................................... 19
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`Arlington Industries, Inc. v. Bridgeport Fittings, Inc.,
`581 F.App’x. 859, 867 (Fed. Cir. 2014). ...................................................... 15, 18
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`Brown & Williamson Tobacco Corp. v. Philip Morris Inc.,
`229 F.3d 1120, 1129 (Fed. Cir. 2000) ................................................................ 12
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`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 21
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`Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
`Co.,
`464 F.3d 1356 (Fed. Cir. 2006) ............................................................................ 4
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`Ethicon Endo-Surgery, Inc. v. Covidien LP,
`812 F.3d 1023 (Fed. Cir. 2016) .................................................................... 13, 18
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`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ........................................................................ 2, 19
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`GraftTech Int’l Holdings, Inc. v. Laird Techs. Inc., No. 2015–1796,
`(Fed. Cir. June 17, 2016) .................................................................................... 12
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`Grobler v. Apple Inc., No. 12-CV-01534-JST,
`2014 WL 1867043 (N.D. Cal. May 6, 2014) ...................................................... 21
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`In re Huang,
`100 F.3d at 140 ............................................................................................. 13, 15
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`I/P Engine, Inc. v. AOL Inc.,
`576 F. App’x 982, 992 (Fed. Cir. 2014) ............................................................. 16
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`K-Swiss Inc. v. Glide N Lock GmbH,
`567 F. App’x 906, 914 (Fed. Cir. 2014). ............................................................ 18
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`iii
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`TABLE OF AUTHORITIES
`Cont’d
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`Cases
`KSR International Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
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`Page(s)
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`Leo Pharm. Prod., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .......................................................................... 18
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`MRC Innovations, Inc. v. Hunter Mfg., LLP,
`747 F.3d 1326 (Fed. Cir. 2014) .......................................................................... 15
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`Nike, Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) .......................................................................... 18
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`Norgren v. Int’l Trade Comm’n,
`699 F.3d 1317 (Fed. Cir. 2012) .......................................................................... 16
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`Okajima v. Bourdeau,
`261 F.3d 1350 (Fed. Cir. 2001) ............................................................................ 5
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`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed Cir. 2006) ..................................................................... 13, 17
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`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 17
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`Pregis Corp. v. Kappos,
`700 F.3d 1348 (Fed. Cir. 2012) .......................................................................... 15
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`Sakraida v. Ag Pro, Inc.,
`425 U.S. 273 (1976) .......................................................................................... 2, 4
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`Tex. Instruments v. U.S. Int’l Trade Comm’n,
`988 F.2d 1165 (Fed.Cir.1993) ............................................................................ 17
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`W. Union Co. v. Moneygram Payment Systems, Inc.,
`626 F.3d 1361, 1373 (Fed. Cir. 2010) .................................................... 11, 12, 14
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`Wyers v. Master Lock Co.,
`616 F.3d 1231, 1246 (Fed. Cir. 2010) ................................................................ 19
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`iv
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`TABLE OF AUTHORITIES
`Cont’d
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`Cases
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`Statutes and Rules
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`Page(s)
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`35 U.S.C. § 103 .......................................................................................................... 1
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`35 U.S.C. § 103(a) ................................................................................................... 22
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`Federal Rule of Evidence 801(d) ............................................................................. 20
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`v
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(c) and (d), Petitioner certifies that the word
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`count of Petitioner’s Reply in Support of the Petition (exclusive of any table of
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`contents, table of authorities, listing of facts which are admitted, denied, or cannot
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`be admitted or denied, certificate of service or word count, or appendix of exhibits)
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`as measured by Microsoft Word is 5199 words.
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Petitioner respectfully submits this Reply in further support of cancellation
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`of claims 1, 2, and 8 of U.S. Patent No. 6,292,974 (the “’974 Patent”).
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`In its Institution Decision (Paper No. 16) (the “Decision”), the Board insti-
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`tuted trial on two grounds: (1) obviousness in view of U.S. Patent No. 3,192,551 to
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`Appel (“Appel”; Ex. 1005) and GB 2,106,774 to Prohaska (“Prohaska”; Ex. 1004),
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`and (2) obviousness in view of DE 1,028,896 to Hoyler (“Hoyler”; Ex. 1006) and
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`Prohaska. In its response, Patent Owner (“Bosch”) puts forward a revisionist histo-
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`ry of the claimed invention that is both unsupported by admissible evidence1 and
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`contrary to the prosecution history and the content of prior art of record including
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`U.S. Patent No. 3,418,679 to Barth et al. (“Barth”; Ex. 2009). Bosch’s assertion
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`that the subject matter claimed in the ’974 Patent has enjoyed commercial success
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`is unsupported and at all events insufficient in light of the strong evidence support-
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`ing obviousness.
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`I.
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`THE BOARD PROPERLY SET FORTH THE LEVEL OF ORDI-
`NARY SKILL IN THE ART
`In KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme
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`Court reaffirmed that the 35 U.S.C. § 103 statutory phrase, “ordinary skill in the
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`1 On October 19, 2016, the Board (Paper No. 31) authorized Petitioner to file a mo-
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`tion to strike the hearsay testimony of Wilfried Merkel submitted by Patent Owner.
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`Petitioner’s motion is being submitted contemporaneously herewith.
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`art,” includes a degree of “ingenuity” or problem solving skill. Sakraida v. Ag Pro,
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`Inc., 425 U.S. 273, 279 (1976) (citation omitted); see also KSR, 550 U.S. at 417,
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`427.
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`“Under the correct analysis, any need or problem known in the field of en-
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`deavor at the time of invention and addressed by the patent can provide a reason
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`for combining the elements in the manner claimed.” KSR, 550 U.S. at 420. When
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`such a problem is identified, the relevant legal question is whether the conception
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`of a claimed solution “was a design step well within the grasp of a person of ordi-
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`nary skill in the relevant art,” id. at 427, or whether it required “more ingenuity and
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`skill . . . than were possessed by an ordinary mechanic acquainted with the busi-
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`ness.” Sakraida, 425 U.S. at 279 (citation omitted); see also KSR, 550 U.S. at 417.
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`Bosch is thus wrong in asserting that the statutory phrase “ordinary skill in
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`the art” connotes merely a level of education or work experience. See Patent Own-
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`er Response (Paper No. 28) (the “Response”), 1. A person having ordinary skill in
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`the art “is a hypothetical person who is presumed to know the relevant prior art,”
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`e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995), and how to practice the
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`subject matter disclosed in prior art patents, see, e.g., Amgen Inc. v. Hoechst Mari-
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`on Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“[B]oth the claimed and
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`unclaimed disclosures in a prior art patent are [presumptively] enabled.”).
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`Prior to the claimed invention of the ’974 Patent, the windshield wiper art
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`included flat-spring wipers (e.g., Hoyler, Appel, reproduced below) and conven-
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`tional wipers with spoilers for reducing wind-induced liftoff (e.g., Prohaska, repro-
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`duced below). See Petition, 9–15. As discussed infra, p. 5, Barth demonstrates that
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`it was well known that liftoff was caused by the inverted-triangle profile of a wip-
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`er’s rubber strip—a feature common to both flat-spring and conventional wipers.
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`U.S. Patent No. 3,317,945 to Ludwig (“Ludwig”; Ex. 1009) (reproduced below)
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`disclosed a flat-spring wiper with a triangular rubber “spine” provided above the
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`spring and “homogeneous” with the wiper strip. Ludwig, fig. 7, 3:24–67; see Peti-
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`tion, 6–9.
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` Appel
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`Hoyler
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`Barth
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`Prohaska
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`Ludwig
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`’974 Patent
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`During the prosecution of the ’974 Patent, Bosch overcame a rejection over
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`Ludwig by adding the limitation, “a component which is separate from said wiper
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`strip so as to form a leading-edge face extending in a longitudinal direction of the
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`support element and forming, as seen crosswise to its longitudinal extension, an
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`acute angle with a plane which extends parallel to a plane formed by said convex
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`surface . . . .” ’974 Patent, 4:26–32 (emphasis added); Ex. 1002, p. 97, 117, 124–
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`129. It was this trivial difference from Ludwig, and not any purported difference in
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`3
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`the tendency of flat spring wipers and conventional wipers to experience wind lift,
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`that Bosch relied on to secure allowance of the challenged claims during the prose-
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`cution of the ’974 Patent. See Ex. 1101 (Second Davis Decl.) ¶ 17.
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`In analyzing whether the claimed subject matter was non-obvious at the time
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`of its making by the ’974 Patent applicants, it is both necessary and appropriate to
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`consider whether the combination of Prohaska with Appel, or Prohaska with
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`Hoyler, is one that “‘arranges old elements with each performing the same function
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`it had been known to perform’ and yields no more than one would expect from
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`such an arrangement,” KSR, 550 U.S. at 417 (quoting Sakraida, 425 U.S. at 417),
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`or whether the substitution would have been “beyond” the “skill” of a person hav-
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`ing ordinary skill in the art. Id. Under Federal Circuit precedent, “an implicit moti-
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`vation to combine [prior art references] exists . . . when the ‘improvement’ is tech-
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`nology-independent and the combination of references results in a product or pro-
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`cess that is more desirable, for example because it is stronger, cheaper, . . . faster,
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`lighter, . . . more durable, or more efficient.” Dystar Textilfarben GmbH & Co.
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`Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
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`In a parallel proceeding involving U.S. Patent No. 6,973,698 (the “’698 Pa-
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`tent”), the Board found that the prior art of record reflects an appropriate skill lev-
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`el, relying on the very same case that Patent Owner now suggests supports a differ-
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`ent outcome. See IPR2016-00034, Institution Decision (Paper No. 16) at 22 (quot-
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`ing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Here too, the
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`prior art of record reflects and indeed prescribes the baseline of knowledge and
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`skill against which the obviousness or non-obviousness of the challenged claims
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`must be measured. See KSR, 550 U.S. at 427.
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`II. THE COMBINATIONS OF APPEL AND PROHASKA, AND
`HOYLER AND PROHASKA, RENDER THE CLAIMS OBVIOUS
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`It is undisputed that the combination of Appel and Prohaska, as well as the
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`combination of Hoyler and Prohaska, include all of the features recited in the chal-
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`lenged claims. Response, 2–3. As set forth below, a person having ordinary skill in
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`the art “could have combined [these references] in a fashion encompassed by [the
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`challenged claims], and would have seen the benefits of doing so.” KSR, 550 U.S.
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`at 422.
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`A. A Wiper Strip’s Profile Is the Well-Known Cause of Wind-Lift,
`Which Is Fundamentally the Same in Conventional and Flat-
`Spring Wipers
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`As set forth in the Decision, the ’974 Patent describes the problem of “liftoff
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`tendency” as resulting from “overpressure” on the “front” side of the wiper (i.e. the
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`side “exposed to the wind”) and “negative pressure” on the back side of the wiper.
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`Decision, 4–5 (quoting ’974 Patent, 1:7–10, 25–34, 34–40, 64–67). This problem,
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`however, was not discovered by the ’974 Patent inventors, but was described in a
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`Bosch patent issued in 1966, Barth, which teaches that wiper blade wind lift is
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`caused by the point-down triangular shape of a wiper’s rubber wiper strip as illus-
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`trated in the figures below:
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`Referring to the figures above, Barth states:
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`FIGS. 3 and 4 respectively illustrates the theory of air flow and
`lift-off forces as it pertains to the prior-art;
`* * *
`Discussing now these figures in detail, it will be seen that FIG.
`3 shows the air flow and the static pressure conditions with respect to
`a wiper having the customary so-called “pine tree” profile. It is clearly
`evident that in the direction of air flow-impingement a zone of static
`overpressure is generated on that lateral side of the blade which faces
`the air flow, whereas a zone of static underpressure is present on the
`lateral side facing away from the air flow as well as on the back of the
`blade which is located remote from the windshield. The arrows indi-
`cating air flow clearly show how the forces generated in this construc-
`tion tend to lift the blade away from the windshield.
`This is shown in still more detail in FIG. 4 where for purposes
`of simplicity the profile, which has been identified in FIG. 3 as a
`“pine tree” profile has been shown as a triangle standing on edge with
`its base remote from the windshield. It is evident from FIG. 4 how the
`lift-off forces act against the lateral faces of the blade. The zone of
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`6
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`static overpressure located on the lateral side onto which the air flow
`impinges results in an upwardly directed pressure P1, while the zone
`of underpressure on the other lateral side of the blade results in a
`downwardly directed pressure P2 of approximately the same magni-
`tude. A third force, the lift-off force P3, acts on the back of the blade.
`Barth, 2:52–53, 4:8–39 (emphasis added).
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`Barth not only describes the underpressure and overpressure affecting wipers
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`in a manner that is essentially identical to that of the ’974 Patent, it specifically de-
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`scribes the “lift-off force” as resulting from the wiper strip’s inverted triangle pro-
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`file. Id.; Ex. 1101 ¶ 8. And contrary to Bosch’s arguments, Barth’s analysis of
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`these forces applies equally to all wipers having wiper strips with this profile, re-
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`gardless of whether they have a flat-spring or conventional-style support structure.
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`Barth, 1:33–54 (“Such pressure differences become effective on the windshield
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`wiper in the form of a force whose action on the type of windshield wiper known
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`from the prior art, namely the type whose cross section decreases in direction to-
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`wards the windshield, results in a tendency to lift the wiper from the windshield.”
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`(emphasis added)); Ex. 1101 ¶ 9–10; Ex. 1008 (Davis Decl.) ¶ 29; Ex. 2002 (Davis
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`Tr.), 127:25–128:17, 129:17–130:8.
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`Bosch relies on its expert’s conclusory statements and his incorrect charac-
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`terization of Prohaska to argue that it is the yoke structure of conventional-style
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`wipers that causes liftoff force. Response, 5 (citing Ex. 2003 (Dubowsky Decl.)).
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`7
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`As explained by Dr. Davis, Prohaska’s description of liftoff is consistent with
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`Barth and nowhere discusses the yoke as the source of the liftoff force. Ex. 1101
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`¶ 12.
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`Contrary to Bosch’s arguments (Response, 3–5), because wind lift is caused
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`by a wiper strip’s inverted-triangle profile—a profile common to all wipers2—a
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`person of ordinary skill in the art would have understood that conventional and
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`flat-spring wipers are subject to wind lift in fundamentally the same way. Ex. 1101
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`¶ 8–11. Accordingly, the allegedly “unknown” flat-spring wind-lift problem (Re-
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`sponse, 7) was, in fact, the identical common wind lift problem long understood by
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`persons of ordinary skill in the art. Thus, a person of ordinary skill in the art seek-
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`ing to solve the well-known problem of wind lift would have turned to the well-
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`known solution to that problem, i.e. adding a conventionally shaped spoiler to a
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`pre-existing wiper.
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`2 This profile is illustrated in all the prior art flat-spring and conventional wiper pa-
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`tents in evidence. See Appel, figs. 7–8, 10–15 (flat-spring); Hoyler, fig.1, cross-
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`sections A-A, B-B, C-C (flat-spring); Prohaska, figs. 1–5 (conventional); Barth,
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`figs. 2–13 (conventional); Ludwig, figs. 3, 4, 7, 10 (flat-spring); U.S. Patent No.
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`2,596,063 (Ex. 2008), figs. 7, 8, 12 (conventional).
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`The ’974 Patent Addressed the Well-Known Wind-Lift Problem
`B.
`With a Well-Known Spoiler Solution
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`Providing a spoiler atop a wiper was a well-known way to solve the problem
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`of wind lift. Petition, 4; Prohaska, 1:68–70, 4:3–7; Ex. 1008 ¶ 40; see Barth, 4:47–
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`59, figs. 2, 4, 5, 7; Ex. 1002, pp. 123–124. Bosch’s assertion that “adding a ‘com-
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`ponent’—a spoiler—onto the wiper blade” was “unconventional” (Response, 7) is
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`insupportable, because Ludwig disclosed just such a structure (albeit not one “sep-
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`arate from the wiper strip” (Ludwig, fig. 7, 3:24–67) and Prohaska taught: “It is
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`easily possible to retrofit a wiper blade by squeezing a spoiler against its flexible
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`strip or clipping it on this flexible strip.” Prohaska, 1:68–70; see also id. at 3:127–
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`30 (“The wiper elements needs only to be put onto one of the flexible strips which
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`either has already equipped with a spoiler or onto which it can be additionally at-
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`tached.”). As stated in the Decision, there is nothing in Prohaska “discouraging use
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`of Prohaska’s spoiler with a single-beam blade construction wiper.” Decision, 14.
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`Bosch’s arguments to the contrary amount to nothing more than the ipse dixit of its
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`expert, which cannot overcome Ludwig’s and Prohaska’s clear teachings. Re-
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`sponse, 7; Ex. 2003 ¶ 60; see Ex. 1008 ¶37–40.
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`Is undisputed that Hoyler taught that the design of flat-spring wiper should
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`be designed so that a “rubber or elastic plastic” component can be used above the
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`metal flat springs. Hoyler, col. 2. And Appel teaches that “it is the combination of
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`[rubber and metal components] which determines the final pressure characteristic .
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`9
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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`. . . .” Appel, 3:22–30. Similarly, there is no dispute that Prohaska taught that a
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`spoiler should be “flexible enough in order to enable an adaptation of the rubber
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`wiper element to different pane curvatures, and on the other hand it has enough
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`stiffness not to be deformed by the attacking air stream.” Prohaska, 3:108–14.
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`The prosecution history of the ’974 Patent belies Bosch’s assertion that add-
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`ing a spoiler structure to a flat-spring wiper was beyond the skill of the art due to
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`such wipers being “highly sensitive” or “greatly affected by small changes,” for
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`Ludwig disclosed just such a flat-spring wiper. The Hoyler, Appel, Prohaska,
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`Ludwig, and Barth disclosures presuppose that the skill level in the art included
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`skill enough to select the stiffness and bending properties of components making
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`up the wipers disclosed in those references. Response, 4, 6; Ex. 2003 ¶¶ 58, 65;
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`Appel, 2:36–45; Hoyler, col. 2; ’974 Patent, 1:24–52, 2:3–15, 2:30–37; Ex. 1008 ¶
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`50; Ex. 1101 ¶ 18–19. As stated in the Decision, a person of ordinary skill armed
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`with the knowledge in the prior art “would know how to vary the spring element
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`when incorporating the added stiffness of the spoiler so that the desired force dis-
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`tribution is achieved,” and none of Bosch’s evidence supports deviating from this
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`conclusion. Decision, 14, 16; see Ex. 1101 ¶ 20.
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`C. Bosch Ignores Petitioner’s Hindsight-Free Reasons for Combining
`Prohaska’s Spoiler With a Flat-Spring Wiper
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`Bosch dismisses Petitioner’s arguments as “conclusory” (Response, 8),
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`ignoring the express disclosures of Appel, Prohaska, and Hoyler and the reasons
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`
`
`10
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`

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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`Petitioner gave for combining those references. Bosch has not addressed
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`Petitioner’s explanation that conforming to windshield curvature, countering lift,
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`evenly distributing force, as well as reducing noise, stress, and wear, were all well-
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`known wiper design objectives (see Petition, 23; Ex. 1008 ¶ 48), and “any need or
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`problem known in the field of endeavor at the time of invention and addressed by
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`the patent [i.e., Prohaska, Appel, Hoyler] can provide a reason for combining the
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`elements in the manner claimed.” KSR, 550 U.S. at 420.
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`Once it has been established that the problem of wind-lift was known, and
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`that spoilers were used to solve this problem, see supra, the addition of a Prohaska
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`spoiler to an Appel or Hoyler wiper would merely have involved “the simple sub-
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`stitution 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.” KSR, 550 U.S. 398,
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`417. Given the express retrofitting teachings of Prohaska, the claimed “improve-
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`ment” of the ’974 patent is nothing “more than the predictable use of prior art ele-
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`ments according to their established functions,” and therefore is unpatentably ob-
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`vious. Id.; Ex. 1008 ¶ 49.
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`III. BOSCH’S EVIDENCE OF PURPORTED SECONDARY CONSID-
`ERATIONS ARE INSUFFICIENT TO OVERCOME A FINDING OF
`OBVIOUSNESS
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`“[W]eak secondary considerations generally do not overcome a strong prima
`
`facie case of obviousness.” W. Union Co. v. Moneygram Payment Systems, Inc.,
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`
`
`11
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`

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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`626 F.3d 1361, 1373 (Fed. Cir. 2010) (citation omitted). “Here, where the inven-
`
`tions represented no more than the ‘predictable use of prior art elements according
`
`to their established functions,’ the secondary considerations advanced by [Bosch]
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`are inadequate to establish nonobviousness as a matter of law.” Id. (citing KSR at
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`417).
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`A. There Is no Nexus Between the ’974 Patent and Any Purported
`Commercial Success, and No Success Has Been Established
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`A “nexus” is established where there is proof that a “marketed product em-
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`bodies the claimed features, and is coextensive with them . . . .” Brown & William-
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`son Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1129 (Fed. Cir. 2000)
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`(emphasis added) (citation omitted). Bosch “submitted the same evidence in each
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`of the inter parties reviews” Nos. IPR2016-00034, -00036, -00038, -00039, -
`
`00040, and -00041, which “undermines its commercial success arguments” be-
`
`cause the ’974 Patent and those that are the subject of the other five IPRs are “di-
`
`rected to different inventions.” GraftTech Int’l Holdings, Inc. v. Laird Techs. Inc.,
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`No. 2015–1796, 2015–1797, 2015–1798, slip op. at 11, (Fed. Cir. June 17, 2016).
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`There can be no legally significant nexus between the ’974 Patent and any
`
`alleged success because Bosch’s evidence is that that features of the purportedly
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`successful Aerotwin and Icon wiper products are either “unclaimed” in the ’974
`
`
`
`12
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`

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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`Patent,3 Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed Cir. 2006), or
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`were “known in the prior art,” Ethicon Endo-Surgery, Inc. v. Covidien LP, 812
`
`F.3d 1023, 1034 (Fed. Cir. 2016). See Response, 17–18.
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`Bosch relies on its employee, Martin Kashnowski, to link (1) the “flexible
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`spoiler with diverging legs” and “end caps” of its wiper products, and (2) his recol-
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`lection that Bosch allegedly “tested these products extensively before releasing
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`them” and found them “quiet in operation,” to the supposed “great customer de-
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`mand for these products.” Response, 19–20; Ex. 2007 ¶ 6). But the ’974 Patent
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`does not discuss “diverging legs” or “end caps” at all (see generally Ex. 1001).
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`And Mr. Kashnowsky’s “conclusory assertion that, in his opinion, the sales of the
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`[products] derive from” these features or tests “is insufficient” to show nexus. In re
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`Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). As explained by Mr. David Peck, an
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`engineer with more than 15 years of experience in the wiper industry, wiper prod-
`
`ucts are routinely tested before their market release, and wiper noise is caused by
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`many sources, “the design of the motor linkage clearances, wind and aerodynam-
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`ics, rubber selection of the wiping element, and failure of a wiping mode (e.g.,
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`chatter),” all of which must be addressed to make a quiet system. Ex. 1100 (“Peck
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`Decl.”) ¶ 19. In view of this, Mr. Kashnowski’s testimony suggests a lack of nexus
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`3 Bosch alleges that features of these products are claimed in a multitude of other
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`patents. See Ex. 2014, 3–4.
`
`
`
`13
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`

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`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`between its products and the ’974 Patent.
`
`Bosch also submits that its purported solution to unspecified “engineering
`
`difficulties” led to the introduction of the Aerotwin product, and that the Icon
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`product had “fewer part numbers” that, in turn, overcame a “disadvantage” of the
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`Aerotwin product. Response, 9, 10 (citations omitted). Again, Bosch’s own evi-
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`dence indicates a lack of nexus between its products and the challenged claims of
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`the ’974 Patent. See Ex. 1100 ¶ 13.
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`The evidence submitted by Bosch fails to establish that its Aerotwin and
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`Icon products actually practice the ’974 Patent. First, Bosch submits claim charts
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`that address different patents, which actually supports a lack of nexus. Response,
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`19; see generally Exs. 2015, 2016. Next, Bosch simply alleges, without explana-
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`tion, that the Aerotwin and three different “Generation[s]” 4 of Icon products “have
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`practiced and continue to practice” the ’974 Patent, Ex. 2014, 3–4. It is well-
`
`established that “mere attorney argument” relating to commercial success “is not
`
`evidence that can support a finding of nonobviousness.” W. Union, 626 F.3d at
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`1372 (citation omitted). And what little testimony Bosch did submit does not estab-
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`lish that each of the elements (such as the “separate” spoiler) of the challenged
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`4 Bosch does not distinguish among these three generations of “ICON” products or
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`describe how they relate to “the Icon blade” discussed in its response and in the
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`declaration of Mr. Kashnowski. Response, 11 (emphasis added).
`
`
`
`14
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`

`
`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`claims of the ’974 Patent are present in Bosch’s Aerotwin and Icon products. Re-
`
`sponse, 11; Ex. 2005, 234:25–235:4, 249:25–250:5, 252:17–254:21, 353:22–
`
`353:22–354:1, 359:12–360:4; Ex. 2006, 698:19–699:22. “The lack of nexus be-
`
`tween the claimed subject matter and the commercial success . . . of the [Bosch
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`products] renders [Bosch’s] proffered objective evidence uninformative to the ob-
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`viousness determination.” Pregis Corp. v. Kappos, 700 F.3d 1348, 1355–56 (Fed.
`
`Cir. 2012) (citation omitted).
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`Even if Bosch had shown a nexus between its wiper products and the ’974
`
`Patent, Mr. Kashnowski’s testimony—Bosch’s only evidence on the issue—fails to
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`establish that the claimed invention enjoyed commercial success. Response, 9–10,
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`13 (citations omitted). Mr. Kashnowski’s “merely stating – with no supporting fig-
`
`ures or data – that the [Aerotwin] . . . was successful . . . is insufficient on its own
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`to establish that the [Aerotwin] has been a ‘commercial success’ . . . .” MRC Inno-
`
`vations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1336 (Fed. Cir. 2014). And Mr.
`
`Kashnowski submits only “bare sales numbers” for Bosch’s Icon product that
`
`“provide[] no indication of whether this represents a substantial quantity in this
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`market.” In re Huang, 100 F.3d at 140. Accordingly, Mr. Kashnowski’s testimony
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`“insufficient because it does not establish that either product is [] commercially
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`successful . . . .” Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 581
`
`F.App’x. 859, 867 (Fed. Cir. 2014).
`
`
`
`15
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`

`
`IPR2016-00034
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`Bosch’s Proffered “Evidence” of Skepticism and Unexpected Re-
`B.
`sults Does Not Undercut Obviousness
`
`Bosch suggests, based on the testimony of Dr. Dubowsky and Mr. Wilfried
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`Merkel, one of its former employees and a named inventor of the ’974 Patent,5 that
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`persons of ordinary skill in the art were skeptical regarding the subject matter of
`
`the challenged claims. Response, 11; Ex. 2005 (citations omitted). But the state-
`
`ments of Dr. Dubowsky and Mr. Merkel are merely conclusory with regard to the
`
`understanding of persons of ordinary s