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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 69
`Entered: March 30, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`
`Case IPR2016-00039
`Patent 7,228,588 B2
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`IPR2016-00039
`Patent 7,228,588 B2
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`
`I.
`
`INTRODUCTION
`
`A. OVERVIEW
`Costco Wholesale Corp. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1, 12, and 14 of U.S. Patent
`No. 7,228,588 B2 (Ex. 1001, “the ’588 patent”). Pet. 1. Robert Bosch LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 18, “Prelim. Resp.”)
`to the Petition. We instituted inter partes review of claims 1, 12, and 14.
`We discuss preliminary matters, such as motions, in Section II below.
`We held an oral hearing on January 18, 2017. See Paper 67 (“Tr.”);
`see also Ex. 1206 (Petitioner’s transcript errata).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1, 12, and 14 the ’588 patent are
`unpatentable.
`
`B.
`
`RELATED PROCEEDINGS
`The parties indicate that the ’588 patent is at issue in: Robert Bosch
`LLC v. Alberee Products Inc. et al., No. 12-574-LPS (consolidated with No.
`14-142-LPS) (D. Del.) (“the related litigation”). Pet. 1; Paper 6, 1.
`
`
`
`2
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`IPR2016-00039
`Patent 7,228,588 B2
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`
`Abbreviation
`
`The parties are currently involved in the following inter partes
`proceedings (“these proceedings”):
`Case #
`U.S.
`Patent #
`6,973,698 “the ’698 patent”
`IPR2016-00034
`6,944,905 “the ’905 patent”
`IPR2016-00036
`6,292,974 “the ’974 patent”
`IPR2016-00038
`7,228,588 “the ’588 patent”
`IPR2016-00039
`IPR2016-000401 7,484,264 “the ’264 patent”
`IPR2016-00041
`8,099,823 “the ’823 patent”
`Two of the patents at issue in these proceedings, the ’905 patent and
`the ’974 patent, were at issue in prior litigation between Patent Owner and
`Pylon Manufacturing Corporation. Paper 39, 2. Robert Bosch LLC v. Pylon
`Manufacturing Corporation (D. Del., Case No. 08-542 (SLR)) (“the Pylon
`litigation”). See Paper 36, 1.
`In these proceedings, sometimes a party submitted an identical paper
`or exhibit in all of the proceedings even though that paper or exhibit may not
`be applicable, or applies in a different manner, to a particular proceeding.
`At other times, we are able to apply the analysis of one proceeding to
`another.
`
`
`
`
`
`1 The ’264 patent (IPR2016-00040) is a division of the application that
`became the ’588 patent. IPR2016-00040, Ex. 1001, 1 (62). The remaining
`patents are not related.
`
`3
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`Patent 7,228,588 B2
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`C.
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts that the challenged claims are unpatentable under
`the following grounds:
`Claims
`Challenged
`1, 12, 14 103(a) Kotlarski2 and Prohaska3
`1, 12, 14 103(a) Merkel4 and Prohaska
`In the patentability analysis below, we address these grounds as
`obvious over Prohaska and either Kotlarski or Merkel.
`
`§
`
`References(s)
`
`
`
`A.
`
`II. PRELIMINARY MATTERS
`PETITIONER’S MOTION TO STRIKE AND MOTION TO EXCLUDE
`Petitioner’s Motion to Strike (Paper 36), Motion to Exclude (Paper
`53), and associated papers are quite similar to those submitted in IPR2016-
`00038. We adopt that analysis here with the distinctions noted below.
`
`
`
`
`2 PCT WO 99/02382, published Jan. 21, 1999 (Ex. 1006). The certified
`English translation begins at page 27.
`3 U.K. Patent Application No. GB 2 106 775 A, published Apr. 20, 1983
`(Ex. 1003).
`4 PCT WO 99/12784, published March 18, 1999 (Ex. 1014). The certified
`English translation begins at page 20. References to “Merkel,” mean this
`prior art, while references to “Mr. Merkel” pertain to that person.
`
`4
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`
`Analysis of Motion to Strike
`1.
`Petitioner’s Motion to Strike and associated papers5 do not differ from
`the Motion to Strike in IPR2016-00038 in any meaningful way, and
`accordingly, that Motion is denied.
`Analysis of Motion to Exclude
`2.
`For the reasons given below, Petitioner’s Motion to Exclude is
`granted-in-part and denied-in-part.
`a) Mr. Merkel’s former testimony
`In the Pylon litigation, Mr. Merkel’s testimony related to the patent at
`issue in IPR 2016-00038, but here that is not the case (i.e., the ’588 patent
`was not at issue in the Pylon litigation.). We agree with Petitioner that this
`distinction is significant. See Paper 53, 10–11. Patent Owner acknowledges
`this distinction, and states that it does not preclude admissibility. Paper 61,
`6; see also 5 (acknowledging the ’588 patent was not at issue in the Pylon
`litigation, and that Mr. Merkel “did not discuss the ’588 patent on direct
`examination”).
`To demonstrate identity of issues between the Pylon litigation and the
`case at hand, Patent Owner’s asserts that “some of the same prior art” is at
`issue. Paper 61, 5. As Petitioner correctly points out, Mr. Merkel’s
`testimony does not address any of the prior art at issue in this proceeding,
`and as a result Pylon could not have cross-examined Mr. Merkel on any of
`that prior art. Paper 53, 10. Consequently, the only issue that Patent Owner
`
`
`5 See Paper 34 (authorizing the Motion), Paper 36 (Petitioner’s Motion),
`Paper 39 (Patent Owner’s opposition).
`
`5
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`Patent 7,228,588 B2
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`identifies as common to the Pylon litigation and the case at hand is not
`relevant because it was not part of Mr. Merkel’s testimony.
`In light of this, Patent Owner has not persuaded us that Pylon had
`opportunity and motive to develop Mr. Merkel’s testimony through cross-
`examination as Petitioner would have here. See United States v. Kennard,
`472 F.3d 851, 856 (11th Cir. 2006) (citation omitted); United States v.
`Omar, 104 F.3d 519, 522 (1st Cir. 1997) (“And, the evidence in question
`being hearsay, it was the defendants’ burden to prove each element of the
`[804(b)(1)] exception they invoked.”). Accordingly, Patent Owner has not
`demonstrated that the exception of Fed. R. Evid. 804(b)(1) applies.
`The analysis in IPR2016-00038 of whether Mr. Merkel’s testimony
`qualifies for the residual hearsay exception is applicable here.
`Petitioner has demonstrated that Mr. Merkel’s testimony from the
`Pylon litigation (Ex. 2005, 210–264) is inadmissible hearsay, and with
`respect to this evidence, Petitioner’s Motion is granted.
`b) Mr. Kashnowski’s testimony
`Our analysis in IPR2016-00038 is applicable here, and consequently,
`
`with respect to this evidence (Ex. 2007 ¶ 6, second, third, and fourth
`sentences) Petitioner’s Motion to Exclude is denied.
`c) Related Portions of Patent Owner’s Response
`We do not exclude any portion of Patent Owner’s Response, but will
`not consider any citations to the excluded portion of Exhibit 2005.
`
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`6
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`B.
`
`PATENT OWNER’S MOTION TO EXCLUDE
`The Motion to Exclude and associated papers6 have no meaningful
`distinction from the Motion to Exclude in IPR2016-00038, and consequently
`Patent Owner’s Motion to Exclude portions of Mr. Peck’s Declaration (Ex.
`1100 ¶¶ 7, 9–11, 15, 18, 19, 21, and 23–26) is denied.
`
`C. MOTIONS FOR OBSERVATION
`Patent Owner submitted a Motion for Observation on cross-
`examination of Mr. Peck, and Petitioner submitted a response. Papers 54,
`60. We considered these observations in making our analysis below.
`Generally, we are persuaded by each of Petitioner’s responses.
`
`
`
`
`
`
`6 See Papers 37, 49, 57, 63.
`
`7
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`Patent 7,228,588 B2
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`A.
`
`III. THE CLAIMED SUBJECT MATTER
`ILLUSTRATIVE CLAIM
`The independent challenged claims are reproduced below:
`A wiper blade (10) to clean windshields (14), in particular
`1.
`of automobiles, with an elongated belt-shaped, flexible spring
`support element (12), on the lower belt surface (22) of which that
`faces the windshield is located an elastic rubber wiper strip 24
`sitting against the windshield that extends parallel to the
`longitudinal axis and on the upper belt surface (16) of which a
`wind deflection strip (42 or 112) is located that has an incident
`surface (54 or 140) facing the main flow direction of the driving
`wind (arrow 52), said deflection strip extending in the
`longitudinal direction of the support element, characterized in
`that the wind deflection strip has two sides (48, 50 or 136, 138)
`that diverge from a common base point (46 or 134) as seen in a
`cross section, that the incident surface (54 or 140) is located at
`the exterior of one side (50 or 138) and that the profile of the
`cross section of the wind deflection strip is the same along its
`entire length, in that between the two sides (48, 50 or 136, 138)
`of the wind deflection strip (42 or 112) there is at least one
`support means (58 or 144) located at a distance from their
`common base point (46 or 134) that stabilizes the sides, and in
`that the support means is made up of a wall (58 or 144) connected
`to both sides (48, 50 or 136, 138) that extends in the longitudinal
`direction of the wind deflection strip (42 or 112).
`
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`8
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`IPR2016-00039
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`
`14. A wiper blade (10) to clean windshields (14), in particular
`of automobiles, with an elongated belt-shaped, flexible spring
`support element (12), on the lower belt surface (22) of which that
`faces the windshield is located an elastic rubber wiper strip 24
`sitting against the windshield that extends parallel to the
`longitudinal axis and on the upper belt surface (16) of which a
`wind deflection strip (42 or 112) is located that has an incident
`surface (54 or 140) facing the main flow direction of the driving
`wind (arrow 52), said deflection strip extending in the
`longitudinal direction of the support element, characterized in
`that the wind deflection strip has two sides (48, 50 or 136, 138)
`that diverge from a common base point (46 or 134) as seen in a
`cross section, that the incident surface (54 or 140) is located at
`the exterior of one side (50 or 138) and that the profile of the
`cross section of the wind deflection strip is the same along its
`entire length, characterized in that between the two sides (48, 50
`or 136, 138) of the wind deflection strip (24 or 112) there is at
`least one support means (58 or 144) located at a distance from
`their common base point (46 or 134) that stabilizes the sides, and
`characterized in that the support element (12) includes two
`flexible rails (36) each of which sits in a longitudinal notch (34)
`associated with it, respectively, said longitudinal notches being
`open toward the opposite lateral sides of the wiper strip (24), that
`the outer strip edges (38) of each of said flexible rails extend out
`of these notches, and that the support means (58 or 144) are
`positioned at a distance from the support element (12).
`Claim 12 depends from claim 1.
`
`CLAIM INTERPRETATION
`In an inter partes review, we interpret the claims of an unexpired
`patent using the broadest reasonable construction. See 37 C.F.R.
`§ 42.100(b).
`
`
`B.
`
`9
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`Patent 7,228,588 B2
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`
`In our Institution Decision, we stated
`We determine that the “at least one support means” of
`independent claim 1 is not a means-plus-function limitation
`governed by 35 U.S.C. § 112 ¶ 6, but the support means of claim
`14 is a means-plus-function limitation governed by 35 U.S.C.
`§ 112 ¶ 6. We emphasize that these claim constructions are based
`on the record to this point, and are preliminary.
`Dec. 10.
`Neither party challenges this determination or otherwise addresses
`construction of these terms. We adopt our analysis from the Institution
`Decision. See Dec. 7–10.
`We do not expressly construe any other claim terms. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those
`terms which are in controversy need to be construed, and only to the extent
`necessary to resolve the controversy).
`
`
`IV. PATENTABILITY
`
`A.
`
`SCOPE OF REPLY
`Patent Owner contends that portions of Petitioner’s Reply are
`improper, and consequently, the Board should not consider those portions.
`Paper 57. Petitioner disagrees. Paper 59.
`In our order authorizing submittals on this issue, we informed the
`parties that a portion of Petitioner’s Reply is improper if: (1) that portion is
`beyond the scope of a reply under 37 C.F.R. § 42.23(b), or (2) Patent Owner
`did not have sufficient notice and opportunity to respond (see, e.g., Belden
`Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (applying a
`similar standard in inter partes review as in prosecution: “this court has
`
`10
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`B.
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`IPR2016-00039
`Patent 7,228,588 B2
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`determined whether the Board relied on a ‘new ground of rejection’ by
`asking ‘whether applicants have had fair opportunity to react to the thrust of
`the rejection.’”)). See Paper 47. In the patentability discussion below, we
`apply that standard, and address each of Patent Owner’s contentions.7
`
`CREDIBILITY OF DR. DAVIS
`There is no meaningful distinction between the argument on this issue
`here and that in IPR2016-00038. See PO Resp. 18–22; Pet. Reply. 20–21.
`Here, as in IPR2016-00038, the factors discussed detract slightly from
`Dr. Davis’s testimony, but not so much to warrant that we give his testimony
`overall little or no weight. Our analysis below reflects this determination.
`
`LEVEL OF SKILL
`We do not discern a meaningful difference between the argument on
`this issue here and that in IPR2016-00038. See PO Resp. 1–2; Pet. Reply 1–
`4. Here, as in IPR2016-00038, the prior art of record is reflective of the
`level of skill in the art. We address what was known in the art in our
`analysis below.
`
`C.
`
`
`7 Patent Owner’s disagreement regarding Barth is not applicable to this
`proceeding because Patent Owner submitted Barth as Exhibit 2009 in
`conjunction with the Response. See Paper 57, 1–2.
`
`
`11
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`D. CHRONOLOGY
`
`The following generally chronological discussion pertains to all four
`Graham factors, and is applicable to all of the challenged claims and both
`grounds of unpatentability.8
`Prior to the ’588 Patent
`1.
`Conventional wipers were known prior to the critical date of the ’588
`patent. See PO Resp. 11; Ex. 1016 ¶¶ 19–20; Ex. 2003 ¶ 21; Ex. 2007 ¶ 2;
`see also PO Resp. 4 (citing Exs. 2008 and 2009 as examples of known
`conventional wipers). Conventional wipers, also known as yoke or yoke-
`style wipers, include a series of flexible rails that distribute force along the
`wiper blade. Ex. 1016 ¶ 19; PO Resp. 4; Ex. 2003 ¶ 21. Barth is an
`example of a conventional, yoke wiper, as illustrated in Figure 1 below:
`
`
`Figure 1 depicts a yoke-style wiper structure, having a support structure
`comprised of main member 4 and intermediate members 5 and 6 to support
`blade 14. See Ex. 1016 ¶ 19 (reproducing this figure); Ex. 2009, 2:52–53,
`3:6–35, Figs. 1, 2.
`
`
`8 Much of what Patent Owner labels as “secondary considerations” (see PO
`Resp. 10–18) pertains to all four Graham factors and is addressed in this
`section.
`
`12
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`IPR2016-00039
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`
`Beam wipers were known prior to the critical date of the ’588 patent.
`See Pet. 13–15; Pet. Reply 3; PO Resp. 12 (“beam blades were described in
`paper patents long before the invention at issue here”); Ex. 2003 ¶ 23; Exs.
`1004, 1005. Beam wipers, also known as flat wipers, use metal strips
`adjacent the wiper blade to distribute the load along the length of the wiper
`blade rather than the yokes. Ex. 1016 ¶ 22. Figure 1 of the ’588 patent is
`reproduced below:
`
`
`
`Figure 1 of the ’588 patent is a perspective view of a beam wiper blade with
`the wiper arm shown as a dot-dashed outline. Ex. 1001, 4:4–6; see also Ex.
`1006, Fig. 1; Ex. 1006, Fig. 1; Ex. 1014, Fig. 1.
`
`Patent Owner emphasizes that although beam wipers were known,
`there were no “commercially viable” beam wipers prior to 2002. PO Resp.
`12 (citing Ex. 2007 ¶ 3). Even if the beam wipers known prior to 2002 were
`
`13
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`Patent 7,228,588 B2
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`not commercially viable, that does not alter the fact that beam wipers were
`known prior to the ’588 patent.
`The ’588 patent acknowledges that the prior art included a wiper
`blade provided with a wind deflection strip for producing a force that
`counters lift off.9 Ex. 1001, 1:41–46. Thus, it was known to configure a
`beam wiper blade with a wind deflection strip that produces a force
`component directed toward the windshield to counteract the tendency of the
`wiper blade to lift off the windshield due to airflow at high vehicle speeds.
`Id. at 1:40–46. The cross section of the wind deflection strip was
`approximately the shape of a right triangle with the hypotenuse representing
`the incident surface. Id. at 1:46–54; see also Pet. 15–18 (discussing prior art
`beam wipers having a spoiler, such as Exs. 1006, 1013). The ’588 patent
`describes that it was known that this configuration had several drawbacks: it
`required a relatively large amount of material to manufacture that added cost
`and weight to the design, the increased weight necessitated a more powerful
`drive system and a more expensive pendulum gear, and it adversely affected
`bending stiffness. Id. at 1:56–67;
`In sum, prior to the ’588 patent, conventional and beam wipers were
`known. Use of a spoiler to counter lift off in both conventional and beam
`wipers was known. See Pet. 10–18; Pet. Reply 3. Specifically, use of a
`hollow spoiler on a conventional wiper (e.g., Ex. 1003) and use of a solid
`spoiler on a beam wiper (e.g., Exs. 1006, 1013, 1104) were both known.
`Pet. 11–12, 15–18; Pet. Reply 3.
`
`
`9 German Patent No. DE 197 36 368.7 found at Ex. 1104, with certified
`English translation at Ex. 1107.
`
`14
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`Patent Owner’s Mischaracterizations
`2.
`Patent Owner argues that conventional thinking at the time of the ’588
`patent was to avoid adding components to beam blades because beam blades
`are highly sensitive to additional components. PO Resp. 3–5, 9, 11, 14. In
`reaction to this, Petitioner argued, with support from Dr. Peck, that the
`sensitivity of beam blades was a design factor that was understood prior to
`the ’588 patent. See Pet. Reply 6 (citing Ex. 1100 ¶ 9), 16–17.
`Patent Owner contends that Petitioner’s argument is improper because
`it goes to an artisan’s expectation of success in making the claimed
`combination, and should have been in the Petition. Paper 57, 2 (referring to
`Pet. Reply 6:16–20). Petitioner’s argument properly responds to Patent
`Owner’s argument as required by 37 C.F.R. § 42.23(b). Further, we agree
`with Petitioner that Petitioner could not have reasonably anticipated that
`Patent Owner would make such argument when it is contradicted by the
`disclosure of the ’588 patent itself. Paper 59, 2. For that reason, Petitioner’s
`counter argument in the Reply was not required to be in the Petition.
`In light of the chronology given above, Patent Owner’s argument
`regarding conventional thinking and the sensitivity of beam blades to
`modification is directly contradicted by the evidence of record. See PO
`Resp. 3–5, 9, 11; Pet. Reply 4–6. In particular, we repeat that the ’588
`patent itself acknowledges that the prior art included a wiper blade provided
`with a wind deflection strip for producing a force that counters lift off. See
`Ex. 1001, 1:41–46.
`In association with the argument that the ’588 patent took an
`unconventional approach, Patent Owner characterizes the ’588 patent as
`meeting a long-felt but unresolved need, producing unexpected results, and
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`15
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`being met with skepticism. PO Resp. 11, 14 (citing Ex. 2003 ¶¶ 22–25, 58–
`60, 65, 73, 77, 79).10 We agree with Petitioner that the proposed
`modification was not contrary to conventional thinking at the time. See, e.g.,
`Pet. Reply 16–17 (citing Ex. 1100 ¶¶ 7–8). The ’588 patent does not
`explicitly disclose or fairly imply that providing a beam wiper with a spoiler
`met a long-felt but unresolved need or produced unexpected results. To the
`contrary, as mentioned above, the ’588 patent itself acknowledges that the
`prior art included a wiper blade provided with a wind deflection strip.
`Patent Owner contends that Petitioner’s argument (Pet. Reply 16:11–
`17:1) is improper because it does not relate to skepticism or unexpected
`results, but rather asserts the new position that it was conventional to add
`structures to a beam blade. Paper 57, 2. This argument is unpersuasive
`because, as discussed in the previous paragraph, Petitioner’s argument does
`relate to skepticism and unexpected results. Further, we agree with
`Petitioner that Petitioner could not have reasonably anticipated that Patent
`Owner would make such argument when it is contradicted by the disclosure
`of the ’588 patent itself. See Paper 59, 2.
`The ’588 Patent
`3.
`The wiper blade of the ’588 patent was designed to eliminate the
`drawbacks described in the background of the Specification. Ex. 1001, 2:3–
`13. Wiper blade 10 includes elongated belt-shaped, flexible spring support
`element 12 and wind deflector strip 42. Id. at 4:15–17, 5:9–13; Figs. 1, 2.
`Wind deflector strip 42 is made of an elastic material such as “a plastic”, and
`
`
`10 We note that paragraphs 65, 73, 77, and 79 do not relate to the patent at
`issue in this case.
`
`16
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`has an essentially triangular cross section formed by sides 48 and 50
`diverging from common base point 46 at one end and connected at the
`opposite ends by a support means such as wall 58. Id. at 5:15–21, 36–44.
`Figure 2 follows.
`
`
`Figure 2 is a cross sectional view of wiper blade 10 through line II-II shown
`in Figure 1. Id. at 4:7–8.
`
`E. OBVIOUSNESS OVER PROHASKA AND EITHER KOTLARSKI OR MERKEL11
`Uncontested aspects
`1.
`Petitioner contends that claim 1 would have been obvious over
`Prohaska and either Kotlarski or Merkel. Pet. 11–12, 15–18, 27–33, 35–
`
`
`11 We recite the ground of unpatentability in a different order than recited by
`Petitioner, but the order of references is of no significance.
`
`17
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`36.12 Specifically, Petitioner contends that Prohaska discloses a wind
`deflection strip as claimed. Pet. 28–32. Petitioner contends that Kotlarski
`and Merkel each disclose a wiper as claimed, except that Kotlarski’s and
`Merkel’s wind deflection strip is not hollow. Pet. 27–33, 35–36. Petitioner
`proposes to replace the solid spoiler of Kotlarski or Merkel with the hollow
`spoiler of Prohaska. Pet. 35–36.
`Claim 12 depends from independent claim 1 and recites,
`“characterized in that the wind deflection strip (42 or 112) has a longitudinal
`center section and in that a recess (65) is located in the center section of the
`wind defection strip (42 or 112) at which to place a device (18) to connect a
`drive wiper arm (20).” Petitioner adds to the analysis of claim 1 that it
`would have been obvious to include a recess to connect a drive wiper arm
`with that recess as close as possible to the support element for transfer of
`pressure as directly as possible. Pet. 38–39; Ex. 1016 ¶ 66.
`Petitioner contends that claim 14 would have been obvious over
`Prohaska and either Kotlarski or Merkel. Pet. 11–12, 15–18, 46–56
`(incorporating analysis of similar claim 1). Specifically, Petitioner contends
`that Kotlarski and Merkel each disclose a wiper as claimed, except that
`Kotlarski’s and Merkel’s wind deflection strip is not hollow. Pet. 27–33, 35–
`36. Regarding the at least one support means of the wind deflection strip,
`Petitioner identifies the claimed function, and specific portions of the
`specification that describe the structure, materials, or acts corresponding to
`
`
`12 See also the Declaration of Dr. Kruger and associated illustrations. Exs.
`1015, 1020–1022.
`
`18
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`that claimed function, and contends that the prior art discloses the same. See
`Pet. 9–10, 46–54.
`Petitioner’s contentions regarding the claimed limitations are
`supported by a preponderance of the evidence and we adopt them here. As
`discussed above, Kotlarski (Ex. 1006) and Merkel (Ex. 1014) each disclose
`beam type wipers, and Prohaska discloses a wind deflection strip. See Ex.
`1006, Fig. 1; Ex. 1014, Fig. 1; Ex. 1003, Fig. 3. These disclosures must be
`considered in the context that the ’588 patent “begins with a wiper blade
`according to the preamble of claim 1,” and that the ’588 patent
`acknowledges that use of a wind deflection strip to counteract wiper lift off
`was known. Ex. 1001, 1:40–46. Further, Patent Owner does not dispute
`that the features of the challenged claims are found in the prior art. See
`Paper 20 ¶ 3 (instructing Patent Owner that “any arguments for patentability
`not raised in the [Patent Owner Response] will be deemed waived”); Pet.
`Reply 4–5 (asserting the Patent Owner only argues that the proposed
`modifications go against conventional thinking at the time); Office Patent
`Trial Practice Guide, 77 Fed. Reg. at 48,766 (stating that the Patent Owner
`Response “should identify all the involved claims that are believed to be
`patentable and state the basis for that belief”).
`Contested Aspects
`2.
`Patent Owner contests the obviousness of the combination by arguing
`that a person of ordinary skill would not have made the proposed
`modifications, and by submitting secondary indicia of nonobviousness.
`Petitioner contends that it would have been obvious to substitute
`Prohaska’s hollow wind deflection strip (spoiler) for either Kotlarski’s or
`Merkel’s. Pet. 35–36. According to Petitioner, a spoiler with a hollow cross
`
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`IPR2016-00039
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`section such as Prohaska’s was lighter, providing the benefits of: reducing
`stress on wiper drive components, reducing the amount of power needed to
`drive the wiper, and reducing manufacturing costs through use of less
`material to produce the components.13 Pet. 20–21, 35–36 (referring to this
`as implicit motivation and citing Dystar Textilfarben GmbH & Co.
`Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)).
`Petitioner contends that such a modification was the mere substitution of one
`known element for another with a predictable result. Id. at 20–21, 35–36;
`Ex. 1016 ¶¶ 54–56, 64, 66. In light of the chronological discussion above,
`these contentions are supported by a preponderance of the evidence and we
`adopt them here.
`a) Alleged Hindsight
`Patent Owner contends that Petitioner’s reasoning for adding
`Prohaska’s spoiler improperly invokes hindsight. PO Resp. 2–3. In
`particular, Patent Owner emphasizes: (1) fundamental differences between
`conventional and beam blades, (2) a person of ordinary skill in the art would
`not have had reason to modify Kotlarski or Merkel, and (3) the
`disadvantages mentioned by Prohaska of its hollow-shaped Figure 3
`conventional spoiler would have led a POSITA to avoid using it, particularly
`given the highly sensitive beam blade. Id. at 3. We analyze these
`contentions in turn.
`
`
`13 Petitioner cites Eckhardt for the proposition that a hollow spoiler reduces
`manufacturing cost through use of less material. See Ex. 1008, col. 3–4
`(reference does not include line numbering). Petitioner cites Hoyler in
`support of the proposition that reducing component weight reduces wiper
`drive stress. Ex. 1005, 5 (col. 2).
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`(1) Fundamental Differences
`According to Patent Owner, conventional and beam blades are so
`fundamentally different that a person of ordinary skill would not have
`combined conventional and beam blade teachings. PO Resp. 3–5 (citing Ex.
`2003 ¶¶ 21–25, 58–61, 65–67, 72–74). This statement is contradicted by the
`evidence of record, in that conventional and beam wipers have
`commonalities. For example, beam and conventional wipers can use the
`same wiper strip, and can be attached to an actuating arm.14
`Patent Owner contends that conventional blades have several
`disadvantages, and that beam blades solved these problems by among other
`things, eliminating the yoke. PO Resp. 4–5 (citing Ex. 2003 ¶¶ 21–23, 58,
`65, 73). In support, Dr. Dubowski opines that because beam blades avoid
`the high superstructure of a conventional wiper, beam blades “were hoped to
`perform better in extreme weather conditions” such as ice and snow. Ex.
`2003 ¶ 23. Dr. Dubowski opines that beam blades are greatly affected by
`small changes in beam shape and by attaching additional components. Ex.
`2003 ¶ 58. According to Dr. Dubowski, this is caused by the difference in
`pressure distribution in each wiper type, namely, that conventional wipers
`have a series of yokes to distribute pressure, while beam wipers distribute
`pressure through a spring-elastic support element that runs the entire length
`of the wiper strip. Id. Dr. Dubowski concludes that conventional thinking at
`
`
`14 Regarding the wiper strip, see, e.g., Ex. 1003, Fig. 1 (conventional strip);
`Ex. 1006, Fig. 1 (beam strip). Regarding the arm see, e.g., Ex. 1006, 33
`(referring to wiper arm 18 for a beam blade); Ex. 2008, 3:6–8 (referring to
`conventional wiper arm 1.
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`IPR2016-00039
`Patent 7,228,588 B2
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`the time of ’588 patent was to avoid additional components on a beam
`blade.15 Id. (citing three patents filed in these proceedings).16
`An assertion that conventional wipers were “hoped” to perform better
`in ice and snow falls short of establishing that beam wipers performed better
`in ice and snow. See Ex. 2003 ¶ 23. More importantly, Patent Owner has
`not explained cogently how the superior ice and snow performance of a
`beam wiper relates to the modification proposed by Petitioner.
`Although the three patents cited by Dr. Dubowski do not have
`additional components attached, Patent Owner does not identify, nor do we
`discern, any disclosure in these patents that is critical of increasing wiper
`profile or adding additional components. At most, these patents illustrate
`one approach and are silent regarding other approaches. Consequently, to
`the extent that Patent Owner’s argument suggests that these patents teach
`away from the proposed modification, such is not the case. Further, both
`Katlarski and Merkel are beam patents that include spoilers. This evidence
`directly contradicts Patent Owner’s contention that conventional thinking
`was to avoid such additions, yet, Dr. Dubowski’s opinion does not address
`
`
`15 Paragraph 65 of Ex. 2003 deals with the ’974 patent and is not relevant
`here. Paragraph 73 simply presents the conclusion that the challenged
`claims are not obvious over the asserted art, and adds nothing to Patent
`Owner’s assertion here.
`16 Appel ’551 (Ex. 1005 of IPR2016-00038); Appel ’770 (Ex. 1006 of
`IPR2016-00034); Swanepoel ’564 (Ex. 1010 of IPR2016-00034).
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`that evidence. Patent Owner’s choice of addressing other approaches and
`not addressing the strongest evidence is unpersuasive.17
`In sum, we are not persuaded by Patent Owner’s contention that
`conventional thinking at the time of ’588 patent was to avoid additional
`components on a beam blade. As detailed above, and as acknowledged in
`the ’588 patent, use of a spoiler (additional component) to counter lift off in
`both conventional and beam wipers was known. See Pet. Reply 4–6; Ex.
`1001, 1:41–46.
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