Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 19
`Entered: April 25, 2016
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`

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`IPR2016-00039
`Patent 7,228,588 B2
`
`
`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”).1 Pet. 1. Robert Bosch
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 18, “Prelim.
`Resp.”) to the Petition.
`Upon consideration of the Petition and the Preliminary Response, for
`the reasons explained below, Petitioner has demonstrated a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims.
`We institute an inter partes review of claims 1, 12, and 14 of the ’588 patent.
`
`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.). Pet. 1; Paper 6, 1.
`The parties in the case at hand are currently involved in the following
`inter partes proceedings:
`
`
`
`1 Petitioner also entered a copy of the Petition with an amended certificate
`of service. Paper 3, 58. Throughout this decision, our reference to the
`Petition is to Paper 1. The “Notice of Accepting a Corrected Petition”
`(Paper 10) actually pertains to accepting a corrected version of Exhibit 1016.
`See Papers 4, 7.
`
`2
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`IPR2016-00039
`Patent 7,228,588 B2
`
`
`U.S. Patent #
`Case #
`6,973,698
`IPR2016-00034
`6,836,926
`IPR2016-00035
`6,944,905
`IPR2016-00036
`6,292,974
`IPR2016-00038
`7,228,588
`IPR2016-00039
`7,484,264
`IPR2016-00040
`8,099,823
`IPR2016-00041
`8,544,136
`IPR2016-00042
`The patent at issue in IPR2016-00040 is a division of the application
`that became the patent that is now at issue in this proceeding. See IPR2016-
`00040, Ex. 1001, 1 [62].
`
`C.
`
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts that the challenged claims are unpatentable over the
`following grounds:
`
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`IPR2016-00039
`Patent 7,228,588 B2
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`
`§
`
`References(s)
`
`Claims
`Challenged
`1, 14 102(b) Prohaska2
`1, 14 103(a) Prohaska and Appel3
`1, 14 103(a) Prohaska and Hoyler4
`1, 12, 14 103(a) Kotlarski5 and Prohaska
`1, 12, 14 103(a) Merkel6 and Prohaska
`
`Pet. 2–3.
`
`
`
`A.
`
`II. THE CLAIMED SUBJECT MATTER
`INTRODUCTION
`The ’588 patent relates to a wiper blade that cleans panes, in particular
`of motor vehicles.7 Ex. 1001, Abstract.
`As background, the ’588 patent describes that it was known to
`configure wiper blades 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
`
`2 U.K. Patent Application No. GB 2 106 775 A, published Apr. 20, 1983
`(Ex. 1003).
`3 U.S. Patent No. 3,192,551 issued July 6, 1965 (Ex. 1004).
`4 German Patent No. 1,028,896 published June 24, 1954 (Ex. 1005). The
`certified English translation begins at page 5.
`5 PCT WO 99/02382, published Jan. 21, 1999 (Ex. 1006). The certified
`English translation begins at page 27.
`6 PCT WO 99/12784, published March 18, 1999 (Ex. 1013). The certified
`English translation begins at page 20.
`7 Throughout this opinion we use the terms “pane,” “window,”
`“windscreen,” and “windshield” interchangeably.
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`Patent 7,228,588 B2
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`approximately the shape of a right triangle with the hypotenuse representing
`the incident surface. Id. at 1:46–54. 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. The wiper blade of the
`’588 patent was designed to eliminate these drawbacks. Id. at 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
`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.
`
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`B.
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`IPR2016-00039
`Patent 7,228,588 B2
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`Figure 2 is a cross sectional view of wiper blade 10 through line II-II shown
`in Figure 1. Id. at 4:7–8.
`
`ILLUSTRATIVE CLAIMS
`The independent challenged claims are reproduced below:
`1.
`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, 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).
`
`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
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`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 INTERPRETATION
`Petitioner contends that no term needs express construction and that
`the challenged claims should be construed under the broadest reasonable
`construction. Pet. 9. Petitioner acknowledges that in the related litigation,
`Patent Owner asserted that the “at least one support means” limitations of
`claims 1 and 14 should be construed as means-plus-function limitations
`under 35 U.S.C. § 112 ¶ 6. Id. at 9–10 (citing Ex. 1011).8 Petitioner asks
`that Patent Owner not be heard to assert a narrower construction than set
`forth in the Patent Owner’s claim construction in the related litigation. Id.
`
`C.
`
`
`8 Exhibit 1011 is a claim construction chart from the related litigation. It
`contains the proposed construction of each party, but does not contain a
`determination by the court.
`
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`
`Patent Owner contends that the “at least one support means”
`limitations of independent claims 1 and 14 are subject to 35 U.S.C. § 112
`¶ 6. Prelim. Resp. 8. Thus, Patent Owner contends that the Petition should
`be denied because Petitioner failed to address properly these limitations. Id.
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction. See 37 C.F.R. § 42.100(b). For the purposes of this
`decision, and on this record, we determine that the only claim term that
`requires express interpretation is the “at least one support means” of
`independent claims 1 and 14. 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).
`1.
`Claim 1
`Independent claim 1 recites “at least one support means.”
`Claim 1 uses the term “means” to describe a limitation, and for that
`reason a presumption inheres that 35 U.S.C. § 112 ¶ 6 is invoked. Altiris,
`Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). However, this
`presumption is rebutted because, for the reasons that follow, claim 1 recites
`“structure sufficient to perform the claimed function in its entirety.” Id.
`Claim 1 is directed to a wiper blade that includes a wind deflection
`strip. Claim 1 recites that the wind deflection strip is formed by two sides
`that diverge from a common base point and “at least one support means.”
`Claim 1 recites that the support means is made up of a wall that extends in
`the longitudinal direction of the wind deflection strip, and that wall is
`connected to each of the two sides that diverge from a common base point at
`a distance from the common base point that stabilizes those sides.
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`IPR2016-00039
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`Therefore, the function of the at least one support means is to stabilize the
`two sides of the deflection strip that diverge from a common base point. The
`recitation of a wall that connects the two sides that diverge from a common
`base point, and extends in the longitudinal direction, is sufficient structure to
`perform the function of stabilizing those sides.
`In parity with this interpretation, the Specification describes that the at
`least one support means can take the form of a wall placed between the two
`sides of the wind deflection strip at a distance from their common base point
`and stabilizes the sides. Ex. 1001, 2:17–20, 25–29; 5:36–44; Fig. 2.
`2.
`Claim 14
`Independent claim 14 recites “at least one support means.” Use of the
`term “means” creates a presumption that 35 U.S.C. § 112 ¶ 6 is invoked.
`Altiris, 318 F.3d at 1375.
`Claim 14 is directed to a wiper blade to clean windshields that
`includes a wind deflection strip. The wind deflection strip is formed by two
`sides that diverge from a common base point and “at least one support
`means.” The function of the support means is to stabilize the two sides of
`the deflection strip that diverge from a common base point.
`In contrast to claim 1, claim 14 does not recite that the support means
`is a wall. Rather, claim 14 recites the location of the support means (i.e.,
`between the two sides, at a distance from the common base point, and at a
`distance from the support element). Claim 14 describes where the support
`means is positioned, but does not specify the structure at that position. The
`Specification describes that the support means may take two forms: a wall,
`or a channel wall facing the upper belt surface of the support element. Ex.
`1001, 2:25–26; 3:6–9; Fig. 3. Because claim 14 does not recite sufficient
`
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`structure to perform the claimed function, the “at least one support means”
`of claim 14 is governed by 35 U.S.C. § 112 ¶ 6.
`3.
`Conclusion
`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.
`Petitioner’s showing regarding these limitations is analyzed in each ground
`of unpatentability below.
`
`
`III. PRELIMINARY ISSUES
`A. KRUGER DECLARATION (EX. 1015)
`Patent Owner contends that we should not consider the Kruger
`Declaration, and further, because the Petition is insufficient without it, we
`should deny the Petition. Prelim. Resp. 2–3, 12–13. Specifically, Patent
`Owner contends that the Petition improperly incorporates the Kruger
`Declaration and circumvents the 60-page limit by broadly asserting that a
`particular appendix (e.g., Appendix C) to the Kruger Declaration
`demonstrates that each element is disclosed in the prior art as set forth in the
`chart. Id. at 12–13.9
`As Patent Owner correctly observes, Petitioner repeatedly states that a
`particular appendix to the Kruger Declaration “demonstrates that each
`
`
`9 Referring to Petitioner’s citation of Ex. 1015 at Pet. 22, 24, 25, 27, 37, 39,
`43, 47; and citing 37 C.F.R. §§ 42.24(a)(1)(i), 42.6(a)(3)).
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`element is disclosed in the prior art as set forth in the chart.” See, e.g., Pet.
`22 (citing Appendix C of the Kruger Declaration). Dr. Kruger testifies that
`to illustrate the proposed ground of unpatentability, he created five computer
`files that are three-dimensional representations of objects depicted in two-
`dimensional engineering drawings. Ex. 1015 ¶¶ 1–4, 10. Dr. Kruger adds
`that Appendix A (Ex. 1018) is an animation of the proposed combination of
`Appel and Prohaska, Appendix B (Ex. 1019) is an animation of the proposed
`combination of Hoyler and Prohaska, and Appendices C–E (Exs. 1020–
`1022) are illustrations of embodiments of claims 1, 12, and 14 of the ’588
`patent, respectively. Id. ¶¶ 2, 4–6, 9.
`Petitioner’s grounds are set forth in the claim charts and
`accompanying text in the Petition. The Kruger Declaration and the
`illustrations are supplemental to what is in the Petition. Further, the Petition
`includes a commensurate introduction of that evidence that identifies
`specific portions of the evidence that support the challenge (the entire
`exhibit), and explains the significance of that evidence (illustrating the
`grounds of unpatentability), as contemplated by our Rules. See 37 C.F.R.
`§§ 42.22(a)(2), 42.104(b)(5). In light of this, we conclude that Petitioner has
`not improperly incorporated to avoid page limits. See 37 C.F.R.
`§ 42.24(a)(1)(i); see also 37 C.F.R. § 42.6(a)(3) (“Arguments must not be
`incorporated by reference from one document into another document.”)
`(emphasis added). Consequently, Patent Owner has not persuaded us that
`the Petition should be denied on this basis.
`
`
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`B.
`
`SCHMID (ECKHARDT)
`Exhibit 1008 is a German patent to Eckhardt Schmid, et al. We refer
`to Exhibit 1008 as “Schmid,” as does Patent Owner, while Petitioner refers
`to it as “Eckhardt.” Patent Owner contends that Schmid is not prior art
`under 35 U.S.C. § 102.10
`Petitioner contends that Schmid “describes the same problem as the
`’588 patent and discloses the same solution, i.e., a hollow wind deflection
`strip.” Pet. 6. According to Petitioner, it is well settled that simultaneous
`inventions, meaning those independently made within a comparatively short
`space of time, are strong evidence that the claimed apparatus was the
`product of ordinary mechanical or engineering skill. Pet. 6 (citing Geo. M.
`Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d. 1294, 1305 (Fed. Cir.
`2010)).
`Patent Owner contends that Schmidt is not evidence of simultaneous
`invention and should not weigh in favor of institution. Prelim. Resp. 20–21.
`Specifically, Patent Owner contends Petitioner made an inadequate showing
`that Schmidt actually constitutes a simultaneous invention because, for
`example, Petitioner does not explain how Schmid discloses the limitations of
`claims 1, 12, and 14. Id. at 21.
`
`
`10 Schmid was published on August 16, 2001. The ’588 patent was filed on
`April 11, 2002, but claims priority to an April 26, 2001, German application.
`Ex. 1008, 1; Ex. 1001, 1; Prelim. Resp. 6. Patent Owner does not explain
`whether the subject matter of the ’588 patent properly can claim benefit to
`one or more earlier filing date(s), but we need not reach that issue at this
`time.
`
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`
`Petitioner’s contention that Schmid, as a simultaneous invention,
`demonstrates that the claimed apparatus was the product of ordinary
`mechanical or engineering skill suffers from two primary shortcomings.
`First, we do not agree with Petitioner’s characterization that it is “well-
`settled” that simultaneous invention is strong evidence that the claimed
`apparatus was the product of ordinary mechanical or engineering skill. See
`Geo. M. Martin, 618 F.3d at 1304–05 (noting that the secondary
`consideration of simultaneous invention might supply indicia of obviousness
`in some rare instances, and acknowledging a proposition to the contrary in
`Lindemann Maschinenfabrick GMBH v. American Hoist and Derrick Co.,
`730 F.2d 1452, 1460 (Fed. Cir. 1984)). Second, we agree with Patent Owner
`that Petitioner’s statement that Schmid describes the same problem and
`solution as the ’588 patent does not explain cogently how Schmid’s wiper
`corresponds to the challenged subject matter. For example, Schmid
`discloses three versions of a wiper strip (2, 2a, and 2b) having a channel or
`channels (16, 18, 21) that extends the length of that strip and is filled with
`washer fluid. Ex. 1008, pp. 13–44, col. 2–4, Figs. 2–4. Petitioner does not
`specify which embodiment is relied upon, nor does Petitioner explain
`persuasively how a fluid filled channel decreases the weight of the wiper
`strip.
`As detailed in the Section that follows, we determine that Petitioner
`has shown a reasonable likelihood of prevailing in demonstrating that the
`challenged claims are unpatentable. Our determination does not rely upon
`Petitioner’s assertions regarding Schmid.
`
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`
`IV. PATENTABILITY11
`A. OBVIOUSNESS OVER KOTLARSKI AND PROHASKA
`
`CLAIMS 1, 12, & 1412
`1.
`Petitioner’s Contentions
`Petitioner contends that claim 1 would have been obvious over
`Kotlarski and Prohaska. Pet. 11–12, 15–16, 27–30, 35–36. Specifically,
`Petitioner contends that Kotlarski discloses a wiper as claimed, except that
`Kotlarski’s wind deflection strip is not hollow. Pet. 27–30, 35. Petitioner
`contends that it would have been obvious to substitute Prohaska’s hollow
`wind deflection strip (spoiler) for Kotlarski’s. Id. According to Petitioner,
`such a modification: would have predictably yielded a lighter weight blade,
`was the mere substitution of one known element for another with a
`predictable result, and had the benefit of the lower manufacturing cost of
`producing a deflection strip with a constant cross section. Id. at 35–36
`(citing Ex. 1016 ¶¶ 55, 64, 66).
`2.
`Patent Owner’s Arguments
`a) 35 U.S.C. § 112 ¶ 6
`As explained in our claim construction above, the support means of
`claim 1 does not invoke 35 U.S.C. § 112 ¶ 6. Consequently, Patent Owner’s
`argument that Petitioner fails to analyze this limitation as a means-plus-
`function limitation is unpersuasive. See Prelim. Resp. 2, 8–11.
`
`
`11 We address the grounds of unpatentability in a different order than
`presented by Petitioner.
`12 This is the ground identified by Petitioner as ground 4. See Pet. 3.
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`b) Teaching Away
`Patent Owner contends that Petitioner uses the challenged claims as a
`roadmap to arrive at the claimed invention. Prelim. Resp. 15. Specifically,
`Patent Owner contends that Prohaska does not provide any motivation to
`combine Prohaska’s conventional wiper blade with the components of a
`beam wiper, and in fact teaches away from such a combination. Id. at 15–
`16. According to Patent Owner, Prohaska disparages the embodiment
`shown in Figure 3 that is relied upon by Petitioner, describing the hollow
`spoiler as disadvantageous, and describes the embodiment of Figure 6 as
`avoiding this disadvantage. Id. at 17 (citing Ex. 1003, 3:4–10, Figs. 3, 6).
`Patent Owner contends that a person of ordinary skill would not have
`attempted to use the stiff spoiler of Prohaska on a beam blade because it
`would stiffen the beam and adversely affect the sensitive force distribution
`of a beam blade’s spring support element. Id.
`To the extent that Patent Owner’s argument suggests that the
`motivation for the proposed combination must be found in Prohaska, such a
`strict application of the teaching, suggestion, or motivation test has been
`rejected by the Supreme Court. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 418 (2007) (“The obviousness analysis cannot be confined by a
`formalistic conception of the words teaching, suggestion, and motivation, or
`by overemphasis on the importance of published articles and the explicit
`content of issued patents.”).
`Regarding teaching away, we disagree with Patent Owner’s
`characterization of Prohaska. Prohaska does not disclose that a hollow
`spoiler should not be used. Rather, Prohaska discloses an embodiment that
`includes a hollow space between surfaces 21 and 22 of spoiler 20 “which
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`possibly migh[t] be disadvantageous.” Ex. 1003, 3:2–11; Fig. 3. That is,
`Prohaska discloses that a spoiler as shown in Figure 3 may be used, but may
`have a disadvantage. Such a disclosure is better characterized as a tradeoff
`rather than teaching away. Further, a patent that offers multiple solutions to
`a problem, even if it characterizes some solutions as having disadvantages
`and others not, does not teach away from those solutions. See DePuy Spine,
`Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
`(“A reference does not teach away, however, if it merely expresses a general
`preference for an alternative invention but does not ‘criticize, discredit, or
`otherwise discourage’ investigation into the invention claimed.”); Medichem,
`S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“Where the prior
`art contains ‘apparently conflicting’ teachings . . . each reference must be
`considered ‘for its power to suggest solutions to an artisan of ordinary skill .
`. . consider[ing] the degree to which one reference might accurately discredit
`another.’”) (quoting In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)).
`We are not persuaded by Patent Owner’s contention that the proposed
`modification would stiffen Kotlarski’s beam and adversely affect force
`distribution. Patent Owner does not identify any portion of the references
`that supports the contention, and at this stage of the proceeding, Patent
`Owner’s argument is unsupported by evidence. See Prelim. Resp. 17.
`c) Other Arguments
`Patent Owner provides examples in support of the argument that
`Petitioner’s assertions are conclusory and insufficient to support a claim of
`obviousness. Prelim. Resp. 18.
`First, Patent Owner asserts that the cited portion of the Davis
`Declaration only generally discusses hollow beam-like structures in other
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`fields and makes no mention of countering liftoff tendency, even force
`distribution, or stiffness. Id. at 18–19 (referring to citation of Ex. 1016 ¶ 55
`at Pet. 34). The portion of the Petition cited by Patent Owner pertains to
`other grounds of unpatentability (i.e., Prohaska alone, Prohaska and Appel,
`and Prohaska and Hoyler)13 and is not relevant to our analysis here. See Pet.
`33–35.
`Second, Patent Owner contends that the cited portion of the Davis
`Declaration does not support the Petitioner’s assertion regarding three
`known problems. Prelim. Resp. 19 (referring to citation of Ex. 1016 ¶ 21 at
`Pet. 20). We agree that paragraph 21 of the Davis Declaration does not
`support Petitioner’s assertion regarding three known problems. Compare
`Pet. 20, with Ex. 1016 (David Decl.) ¶ 21. However, Petitioner has
`demonstrated a reasonable likelihood of success without this disclosure, as
`explained above.
`Third, Patent Owner contends that the cited portion of the Davis
`Declaration describes the stability of legs of a triangle, not the support
`means of the claimed invention. Prelim. Resp. 19 (referring to citation of
`Ex. 1016 ¶ 65 at Pet. 36). Patent Owner’s contention is not persuasive
`because the Davis Declaration’s discussion of a triangular truss is relevant to
`the claimed subject matter in that the claimed wind deflection strip has a
`cross section approximately the shape of a triangle. See Ex. 1016 ¶ 65; Ex.
`1001, 1:46–54.
`
`
`13 Referred to by Petitioner as grounds 1–3. See Pet. 2–3.
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`
`Conclusion
`3.
`On the record before us, Petitioner has demonstrated a reasonable
`likelihood of prevailing in the contention that claim 1 is unpatentable over
`Kotlarski and Prohaska. Because Petitioner has demonstrated a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims
`of this ground of unpatentability, we institute on all claims subject to this
`ground of unpatentability. See 35 U.S.C. § 314(a).
`Regarding independent claim 14, as explained above, we agree with
`Patent Owner that the support means is a means-plus-function limitation
`governed by 35 U.S.C. § 112 ¶ 6. We note that Petitioner has identified
`specific portions of the specification that describe the structure, materials, or
`acts corresponding to the claimed function. See Pet. 9–10 (citing Ex. 1011,
`4 which in turn cites to the ’588 patent); Prelim. Resp. 10; 37 C.F.R.
`§ 42.104(b)(3).
`
`B. OBVIOUSNESS OVER MERKEL AND PROHASKA
`
`CLAIMS 1, 12, & 1414
`1.
`Petitioner’s Contentions
`Petitioner contends that claim 1 would have been obvious over Merkel
`and Prohaska. Pet. 11–12, 17–18, 30–33, 35–36. Specifically, Petitioner
`contends that Merkel discloses a wiper as claimed, except that Merkel’s
`wind deflection strip is not hollow. Pet. 30–32, 35. Petitioner contends that
`it would have been obvious to substitute Prohaska’s hollow wind deflection
`strip (spoiler) for Merkel’s. Id. According to Petitioner, such a
`
`
`
`
`14 Identified by Petitioner as ground 5. See Pet. 3.
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`IPR2016-00039
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`
`modification: would have predictably yielded a lighter weight blade, was
`the mere substitution of one known element for another with a predictable
`result, and had the benefit of the lower manufacturing cost of producing a
`deflection strip with a constant cross section. Id. at 35–36 (citing Ex. 1016
`¶¶ 55, 64, 66).
`2.
`Patent Owner’s Arguments
`Patent Owner makes the same arguments against this ground of
`unpatentability that are asserted against the ground of unpatentability based
`on Kotlarski and Prohaska discussed above. See Prelim. Resp. 8–20. Our
`analysis above is applicable here.
`3.
`Conclusion
`On the record before us, Petitioner has demonstrated a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims
`of this ground of unpatentability, and consequently, we institute on all claims
`subject to this ground of unpatentability.
`
`C. ANTICIPATION BY PROHASKA
` OBVIOUSNESS OVER PROHASKA AND APPEL
` OBVIOUSNESS OVER PROHASKA AND HOYLER
` CLAIMS 1 & 1415
`Independent claims 1 and 14 each require the profile of the cross
`section of the wind deflection strip to be the same along its entire length.
`Regarding this limitation, Petitioner contends that Prohaska’s spoiler 20
`corresponds to a wind deflection strip having such a profile. See Pet. 24, 26,
`
`
`15 These are the grounds identified by Petitioner as grounds 1–3. See Pet.
`2–3.
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`41, 45 (citing Ex. 1004, 1:97–100, 2:56–70). As Patent Owner correctly
`points out, the portions of Prohaska cited by Petitioner describe spoiler 20 as
`extending the length of the wiper element, but do not address the profile of
`the cross section of spoiler 20 along that length. Consequently, with regard
`to these three grounds of unpatentability, Petitioner has not demonstrated a
`reasonable likelihood of prevailing in demonstrating that claims 1 and 14 are
`unpatentable.
`
`
`V. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has
`demonstrated that the information presented in the Petition and in the
`Preliminary Response shows that there is a reasonable likelihood that
`Petitioner would prevail in proving the unpatentability of claims 1, 12, and
`14 of the ’588 patent under 35 U.S.C. § 103.
`At this stage of the proceeding, the Board has not made a final
`determination as to the patentability of any challenged claim or any
`underlying factual and legal issues.
`
`
`VI. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted with respect to the
`following grounds of unpatentability:
`(1) claims 1, 12, and 14 as unpatentable under 35 U.S.C. § 103(a) over
`Kotlarski and Prohaska;
`(2) claims 1, 12, and 14 as unpatentable under 35 U.S.C. § 103(a) over
`Merkel and Prohaska;
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`FURTHER ORDERED that no other ground of unpatentability is
`authorized for this inter partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’588 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial.
`
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`IPR2016-00039
`Patent 7,228,588 B2
`
`PETITIONER:
`
`Richard M. Koehl
`David Lansky
`James R. Klaiber
`HUGHES HUBBARD & REED LLP
`richard.koehl@hugheshubbard.com
`david.lansky@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`
`
`
`PATENT OWNER:
`
`Enrique Iturralde
`SHEARMAN & STERLING LLP
`Enrique.Iturralde@shearman.com
`
`
`
`
`
`22