Paper No. ______
`Filed: October 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Costco Wholesale Corporation
`Petitioner
`
`v.
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`Robert Bosch LLC
`Patent Owner
`
`
`
`U.S. Patent 7,228,588
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`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 7,228,588
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
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`66720061_13
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1 
`III. 
`PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103............ 2 
`IV.  GROUNDS FOR STANDING ........................................................................ 2 
`V. 
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED UNDER 37 U.S.C. § 312 AND 37 C.F.R. §§ 42.22(A)(1)
`AND 42.104(B)(1)-(2) ..................................................................................... 2 
`A. 
`Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1) .... 2 
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`B. 
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`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2) ................ 2 
`
`VI.  THE ‘588 PATENT ......................................................................................... 3 
`A. 
`Prosecution and Issuance of the ‘588 Patent ......................................... 7 
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`B. 
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`Claim Construction ............................................................................... 9 
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`VII.  OVERVIEW OF PRIOR ART ...................................................................... 10 
`A.  U.K. Patent No. G.B. 2,106,775 (“Prohaska”; Exhibit 1003) ............ 11 
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`B. 
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`C. 
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`D. 
`
`E. 
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`U.S. Patent No. 3,192,551 (“Appel”; Exhibit 1004) .......................... 13 
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`German Patent No. D.E. 1,028,896 (“Hoyler”; Exhibit 1005) .......... 14 
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`PCT Publication No. WO99/02383 (“Kotlarski”; Exhibit 1006) ....... 15 
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`PCT Publication No. WO99/12784 (Exhibit 1013) ........................... 17 
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`VIII.  DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY
` ....................................................................................................................... 19 
`A. 
`Legal Standards ................................................................................... 19 
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`Anticipation ............................................................................... 19 
`1. 
`Obviousness .............................................................................. 19 
`2. 
`Level of Skill in the Art .............................................................. 21 
`3. 
`Claim 1 Is Unpatentable ...................................................................... 22 
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`B. 
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`C. 
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`D. 
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`Claim 12 Is Unpatentable .................................................................... 36 
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`Claim 14 Is Unpatentable .................................................................... 39 
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`IX.  CONCLUSION .............................................................................................. 56 
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`LIST OF EXHIBITS
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`EXHIBIT
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`DESCRIPTION
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`U.S. Patent No. 7,228,588 to Kraemer et al.
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`October 10, 2014 Proof of Service filed by Patent Owner in Civil
`Action No 12-574-LPS (consolidated)
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`U.K. Patent No. GB 2,106,775 to Prohaska et al.(“Prohaska”)
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`U.S. Patent No. 3,192,551 to Appel (“Appel”)
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`German Patent No. DE1028896 to Hoyler (“Hoyler”)
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`PCT Pub. No. WO99/02383 to Kotlarski et al. (“Kotlarski”) (also
`published as U.S. Patent No. 6,279,191) with certified English
`translation
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`U.S. Patent No. 6,279,191 to Kotlarski et al.
`
`German Pub. No. DE10000373 to Eckhardt et al. (“Eckhardt”)
`with certified English translation
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`File History of U.S. Patent No. 7,228,588 (Application No.
`10/312279)
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`U.S. Patent No. 3,317,945 to Ludwig (“Ludwig”)
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`Joint Claim Construction Chart
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`Robert Bosch LLC’s Opening Claim Construction Brief, April
`24, 2015
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`PCT Pub. No. WO99/12784 to Merkel et al. (“Merkel”) (also
`published as U.S. Patent No. 6,295,690) with certified English
`translation
`
`1014
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`U.S. Patent No. 6,295,690 to Merkel et al.
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`Declaration of Dr. Daniel H. Kruger, sworn to October 9, 2015
`(the “Kruger Decl.”)
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`Declaration of Dr. Gregory Davis, sworn to October 9, 2015 (the
`“Davis Decl.”)
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`Declaration of Dr. Eric Maslen, sworn to April 23, 2015 (the
`“Maslen Decl.”) and accompanying Technology Tutorial
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`Animation of Appel-Prohaska: Kruger Decl. Appendix A
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`Animation of Hoyler-Prohaska: Kruger Decl. Appendix B
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`Illustrations of Claim 1: Kruger Decl. Appendix C
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`Illustrations of Claim 12: Kruger Decl. Appendix D
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`Illustrations of Claim 14: Kruger Decl. Appendix E
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`I.
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`Introduction
`Costco Wholesale Corporation (“Petitioner” or “Costco”) requests inter
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`partes review (IPR) of Claims 1, 12, and 14 of U.S. Patent No. 7,228,588 (the
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`“‘588 patent”) (Ex.1001).
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`II. Mandatory Notices Under 37 C.F.R. § 42.8
`Real Party-in-Interest: Costco is the real party-in-interest seeking IPR.
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`Related Matters: The ‘588 patent and 17 other patents have been asserted in
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`Robert Bosch LLC v. Alberee Products Inc. et al., Civil Action No. 12-574-LPS,
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`currently pending in the United States District Court for the District of Delaware
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`(the “Delaware Action”). Among these 17 additional patents are U.S. Patents Nos.
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`7,484,264, 8,099,823, and 8,544,136, which are related to the ‘588 patent. The
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`‘588 patent was previously asserted in previously asserted in Robert Bosch LLC v.
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`SHB Int’l, Inc. et al., No. 2:10cv1929 (D. Nev.), Robert Bosch LLC v. Zhejiang
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`Wandeyuan Vehicle Fittings, Co., No. 2:10cv1931 (D. Nev.), and Robert Bosch
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`LLC v. Ningbo Xinhai Automobile Wiper Blade Manufactory Co., No. 2:10cv1927
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`(D. Nev.). Costco is concurrently petitioning for IPR of U.S. Patent Nos.
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`6,292,974, 6,836,926, 6,944,905, 6,973,698, 7,484,264, 8,099,823, and U.S. Patent
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`No. 8,544,136. Petitioner is not aware of any other current judicial or administra-
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`tive matters that would affect, or be affected by, a decision in this proceeding.
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`Counsel and Service Information: Petitioner’s lead counsel, backup counsel,
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`and service information are below. Petitioner consents to electronic service.
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`66720061_13
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`Lead Counsel
`Richard M. Koehl
`Reg. No. 54,231
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6062
`
`Fax (212) 422-4726
`richard.koehl@hugheshubbard.com
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`III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103
`The required fees are submitted herewith. If any additional fees are due at
`
`Back-Up Counsel
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6125
`
`Fax (212) 422-4726
`james.klaiber@hugheshubbard.com
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`any time during this proceeding, the Office may charge such fees to Deposit Ac-
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`count No. 083264.
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`IV. Grounds for Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘588 patent is
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`available for inter partes review and that Petitioner is not barred or estopped from
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`requesting inter partes review of the ‘588 patent. This petition is being filed less
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`than one year after Petitioner was served with a complaint alleging infringement of
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`the ‘588 patent. See Oct. 10, 2014 Proof of Service (Ex. 1002).
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`V.
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`Statement of Precise Relief Requested for Each Claim Challenged under
`37 U.S.C. § 312 and 37 C.F.R. §§ 42.22(a)(1) and 42.104(b)(1)-(2)
`A. Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1)
`Petitioner seeks cancellation of Claims 1, 12, and 14.
`
`B.
`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2)
`Ground #1. Claims 1 and 14 encompass subject matter that is unpatentable
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`under 35 U.S.C. § 102(b) (2006) in view of Prohaska (Ex. 1003).
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`Ground #2. Claims 1 and 14 encompass subject matter that is unpatentable
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`under 35 U.S.C. § 103(a) (2006) in view of Prohaska (Ex. 1003) and Appel (Ex.
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`1004).
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`Ground #3. Claims 1 and 14 encompass subject matter that is unpatentable
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`under 35 U.S.C. § 103(a) (2006) in view of Prohaska (Ex. 1003) and Hoyler (Ex.
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`1005).
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`Ground #4. Claims 1, 12, and 14 encompass subject matter that is unpatent-
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`able under 35 U.S.C. § 103(a) (2006) in view of Kotlarski (Ex. 1006) and Prohaska
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`(Ex. 1003).
`
`Ground #5. Claims 1, 12, and 14 encompass subject matter that is unpatent-
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`able under 35 U.S.C. § 103(a) (2006) in view of Merkel (Ex. 1013) and Prohaska
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`(Ex. 1003).
`
`The asserted grounds are not redundant because Prohaska, Appel, Kotlarski,
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`and Merkel each disclose different variants of wiper apparatus that are suitable for
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`use with a wind deflector.
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`VI. The ‘588 Patent
`The ‘588 patent discloses and claims a windshield wiper assembly that com-
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`prises three basic elements, namely: (i) a flexible spring support element, (ii) a
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`wiper strip, and (iii) a wind deflector. The ‘588 patent acknowledges that prior art
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`windshield wiper apparatus incorporated these three elements (Ex. 1001 at 1:24-
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`56, citing DE 1,973,368), but does not cite Kotlarski (Ex. 1006) or Merkel (Ex.
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`1013) even though these published applications were assigned to Robert Bosch
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`GmbH, the initial assignee of the ‘588 patent. Figure 2 of Kotlarski, disclosing a
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`flexible spring support element, a wiper strip, a wind deflector positioned above
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`the support element, and a “recess” in a center section for a wiper arm connector, is
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`reproduced below:
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`Figure 1 of Merkel, disclosing a flexible spring support element, a wiper strip, a
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`wind deflector positioned above the support element, and a “recess” in a center
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`section for a wiper arm connector, is reproduced below:
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`Similar to Kotlarski and Merkel, Figure 1 of the ‘588 patent, disclosing a flexible
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`spring support element, a wiper strip, a wind deflector positioned above the sup-
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`port element, and a “recess” in a center section for a wiper arm connector, is repro-
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`duced below:
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`The ‘588 patent states that prior art wind deflectors, being solid, were costly,
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`heavy, stiff, and required “a more powerful drive system as well as a more expen-
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`sive design of pendulum gear attached to it.” Ex. 1001 at 1:40-67. As a solution to
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`these problems, the ‘588 patent discloses and claims wiper apparatus comprising a
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`hollow wind deflector strip, having the general configuration depicted at left, be-
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`low:
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`‘588 Patent Fig. 2
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`Prohaska Fig. 3
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`But long prior to the priority date of the ‘588 patent, it was known to provide
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`a windshield wiper assembly with a hollow wind deflection strip as shown by Pro-
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`haska, Figure 3 of which is reproduced at right, above. During the prosecution of
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`the ‘588 patent, the Examiner did not have the benefit of Kotlarski, Merkel, or
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`Prohaska. The Examiner also did not give any weight to the disclosure of Eckhardt
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`(Ex. 1008), which was filed before the priority date of the ‘588 patent, Figure 3 of
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`which is reproduced below:
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`
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`Eckhart describes the same problem as the ‘588 patent and discloses the same solu-
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`tion, i.e., a hollow wind deflection strip. Eckhardt, cols. 3 – 4.
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`Apparently, the Examiner did not give any weight to Eckhardt because it
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`does not qualify as prior art under 35 U.S.C. § 102; however, it is well-settled that:
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`“Independently made, simultaneous inventions, made within a comparatively short
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`space of time, are persuasive evidence that the claimed apparatus was the product
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`only of ordinary mechanical or engineering skill.” Geo M. Martin Co. v. Alliance
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`Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010) (internal quotation
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`marks and citation omitted).
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`Eckhardt “is strong evidence of what constitutes the level of ordinary skill in
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`the art,” id. at 1306, and that a hollow wind deflection strip was an obvious solu-
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`tion to the weight and stiffness problems that the applicants for the ‘588 patent ad-
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`dressed—and as Prohaska had disclosed many years previously.
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`A.
`Prosecution and Issuance of the ‘588 Patent
`The file history of the ‘588 patent is attached hereto as Exhibit 1009. The
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`application that led to the ‘588 patent, Application No. 10/312279, was filed in the
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`U.S. on December 20, 2002 and claimed priority to International Application No.
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`PCT/DE02/01336, which itself claimed priority to a German patent filed April 26,
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`2001. See Ex. 1009 at 10-11. Of claims 1-20 that were filed, claims 1, 18, and 5 is-
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`sued as claims 1, 12, and 14, respectively. Id. at 197.
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`In a non-final office action dated August 7, 2006, the Examiner rejected
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`claims 1, 2, 9, 11, 17, 18, 19, and 20 under 35 U.S.C. § 102(b) as being anticipated
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`by U.S. Patent No. 3,317,945 to Ludwig (“Ludwig”) (Ex. 1010). Id. at 146. Ac-
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`cording to the Examiner, Ludwig disclosed an elastomeric wiper blade with an
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`elongated support element, which had a rubber strip on its lower face and a wind
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`deflection strip on its upper face extending in the longitudinal direction of the sup-
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`port element. Id. The wind deflection strip in Ludwig also had two sides that di-
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`verged from a common base point and defined an incident surface on the exterior
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`of one side, and had a support means between the two sides. Id.
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`Claims 12, 13, 14, 15, and 16 were rejected under 35 U.S.C. § 103(a) as ob-
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`vious over Ludwig in view of U.S. patent 3,121,133 to Mathues (“Mathues”). Id. at
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`147-48. According to the Examiner, Ludwig failed to disclose different hardnesses
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`in different areas of the wiper, but Mathues filled this gap: “Given the teachings of
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`Mathues and varying the hardness, it would not involve invention to vary the hard-
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`ness as desired to optimize performance.” Id. at 147-48.
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`The Examiner objected to the remaining claims 3-8 and 10 as being depend-
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`ent upon a rejected base claim, but indicated they would be allowable if rewritten
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`in independent form. Id. Rejected claim 3 required a support means made up of a
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`wall extending in the longitudinal direction of the wind deflection strip. Id. at 23.
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`Rejected claim 3 was apparently allowable over Ludwig because a support means
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`in the form of a wall imports a hollow limitation into the claimed spoiler—a fea-
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`ture lacking in the prior art before the Examiner. See Davis Decl. ¶ 59.
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`As to the claims at issue in the present petition, rejected claim 1 contained
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`the same limitations as issued Claim 1, with the exception of a support means
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`comprising a wall that extends in the longitudinal direction of the wind deflection
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`strip (as in rejected claim 3). Id. at 23. Applicant amended claim 1 to include these
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`limitations and argued that as amended, claim 1 was “the equivalent of claim 3 re-
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`written in independent form . . . and is therefore allowable.” Id. at 177, 183.
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`Claim 5 was directed towards a support element having two rails, each sit-
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`ting in a longitudinal notch of the wiper blade. Id. at 23-24, 30. Applicant similarly
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`rewrote this claim in independent form as the Examiner had suggested, including
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`all of the limitations of newly amended claim 1—particularly the rejected claim 3
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`limitation that results in a hollow spoiler. Id. at 178, 183. According to the Appli-
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`cant, because rejected claim 18 depended from claim 1, it too was allowable. Id. at
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`183. Applicant did not substantively address the anticipation and obviousness re-
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`jections.
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`Apparently the Examiner agreed and issued a Notice of Allowance on Feb-
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`ruary 8, 2007. Id. at 191. In making this decision, the Examiner was never present-
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`ed with any hollow-spoiler art, including Prohaska, nor did the Examiner consider
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`Appel, Kotlarski, Merkel, or other prior art flat spring wipers whose relatively
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`wide spring rails would naturally require a Prohaska-type airfoil to be mounted as
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`claimed.
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`B. Claim Construction
`For the purposes of inter partes review Claims 1, 12, and 14 should be ac-
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`corded their “broadest reasonable construction” in light of the specification and
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`prosecution history of the ‘588 patent. 37 C.F.R. § 42.100(b). Petitioner asserts that
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`none of the claim terms in the ‘588 patent need to be construed for purposes of this
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`petition because under any reasonable construction the claims are invalid.
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`In Robert Bosch LLC v. Alberee Products Inc. et al., Civil Action No. 12-
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`574-LPS (consolidated with Civil Action No. 14-142-LPS), currently pending in
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`the United States District Court for the District of Delaware (the “Delaware Ac-
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`tion”), the Patent Owner has asserted that the term “at least one support means (58,
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`144)” in Claims 1 and 14 should be construed under 35 U.S.C. 112(6). See Joint
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`Claim Construction Chart (Ex. 1011), at 4. According to Patent Owner, the func-
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`tion of “at least one support means (58, 144)” is “to stabilize the sides of the wind
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`deflection strip” and this function corresponds to “a wall connected to both sides of
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`the wind deflection strip, or the channel wall facing the upper belt surface of the
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`support element, and their equivalents.” Id.
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`Similarly, Patent Owner has also asserted in the Delaware Action that the
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`term “support element” “should be given its plain and ordinary meaning in each of
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`the asserted patents,” including the ‘588 patent. See Robert Bosch LLC’s Opening
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`Claim Construction Brief at 17-18, April 24, 2015 (Ex. 1012).
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`While the claim construction proceedings in Delaware are not governed by
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`the “broadest reasonable construction” standard, and Petitioner does not agree that
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`Patent Owner’s construction represents the broadest reasonable construction of this
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`claim term in the abstract, for purposes of this proceeding the Patent Owner should
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`not be heard to assert a narrower construction than was set forth in the Patent
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`Owner’s claim construction briefing in the Delaware Action.
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`VII. Overview of Prior Art
`Prior to April 26, 2001, the earliest possible priority date of the ‘588 patent,
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`the state of the art included wiper blades containing: (i) flexible spring support el-
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`ements (including those having two flexible rails), (ii) rubber-elastic wiping strips,
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`and (iii) wind deflection strips with triangular cross-sectional profiles. Indeed,
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`these features are admitted prior art in the ‘588 specification. See Ex. 1001 at 1:24-
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`56; see also, e.g., PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342,
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`1362 (Fed. Cir. 2007) (“Admissions in the specification regarding the prior art are
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`binding on the patentee for purposes of a later inquiry into obviousness.”).
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`Below, Petitioner shows that the challenged claims of the ‘588 patent are
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`unpatentable as anticipated in view of Prohaska, and obvious over Appel, Hoyler,
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`Kotlarski, and Merkel in view of Prohaska. These references show that the chal-
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`lenged claims describe no more than the predictable use of prior art elements ac-
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`cording to their established functions.
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`A. U.K. Patent No. G.B. 2,106,775 (“Prohaska”; Exhibit 1003)
`Prohaska was published April 20, 1983 and is therefore prior art to the ‘588
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`patent under 35 U.S.C. § 102(b). Prohaska was not before the Examiner during
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`prosecution of the ‘588 patent and was therefore not considered. Prohaska is di-
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`rected to wiper blades having spoilers that can be connected in a simple way,
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`which counter the well-known problem of lifting force that occurs at high vehicle
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`speeds, thereby ensuring reliable contact between the wiper element and wind-
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`screen. Prohaska, 1:8-16, 1:38-42. Prohaska explains that a variety of spoilers have
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`emerged in response to the problem of wind-lift, but these spoilers all had disad-
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`vantages; some could only be secured to the wiper strip in a relatively complicated
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`way, and others:
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`[I]ncluding a spoiler formed out of the wiper element might not be
`stable enough to act against the air stream in all cases, bcause [sic] of
`the rubber-elastic materials normally used for the production of wiper
`elements. Moreover, as far as technology is concerned, the production
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`of such a wiper element might be very difficult and therefore expen-
`sive.
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`Id. at 1:25-37.
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`To avoid these concerns, Prohaska discloses a wiper blade having a support-
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`ing structure for holding a wiper element of rubber-elastic material, a flexible strip
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`extending over almost the entire length of the wiper element to stiffen it, and a
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`spoiler formed or attached on the flexible strip “[t]o maintain contact pressure in
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`use.” Id. at 1:443-52, 2:56-58. In several examples, the spoiler forms an integral
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`part with the flexible strip, id. at 2:71-75, but importantly, Prohaska also teaches
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`that “it would also be possible to insert individual flexible strips in the head of the
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`wiper element . . . and to equip one of them with a spoiler.” Id. at 4:1-7.
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`The embodiment reflected in Figure 3, reproduced below, includes a flexible
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`strip with its back developed as a spoiler that is hollow and has an approximately
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`“triangular cross-section.” Id. at 2:125 – 3:6. Prohaska notes that “[i]t is easily pos-
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`sible to retrofit a wiper blade by squeezing a spoiler against its flexible strip or
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`clipping it on this flexible strip.” Id. at 1:68-70.
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`Prohaska Fig. 3
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`B. U.S. Patent No. 3,192,551 (“Appel”; Exhibit 1004)
`Appel issued on July 6, 1965 and is therefore prior art to the ‘588 patent un-
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`der 35 U.S.C. § 102(b). Appel was not before the Examiner during prosecution of
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`the ‘588 patent and was therefore not considered. The improved wiper blade as-
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`sembly disclosed in Appel is directed to a simplified spring wiper blade backbone
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`construction that is flexibly adaptable to efficient wiping of variable curvatures as
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`well as relatively flat portions of vehicle windshields. See Appel, 1:11-15.
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`Specifically, as seen in Figure 6, reproduced below, “a spring backbone el-
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`ement 36 . . . may be adapted to carry a conventional rubber wiping blade 37, by
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`providing a slot 38 extending almost throughout the length and terminating just
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`short of the end 39 for accommodating a flanged rib 40 of the rubber blade project-
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`ing therethrough.” Id. at 1:23-25, 3:63-69. Figures 1 and 5 of Appel also illustrate
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`these features and are similarly reproduced below:
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`Appel Fig. 1
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`Appel Fig. 6
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`Appel Fig. 5
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`Appel represents an early disclosure of a spring support element mounted to a rub-
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`ber wiping blade, “together operat[ing] to distribute a centrally applied actuating
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`arm pressure load relatively uniformly along the length of the blade.” Id. at 1:23-
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`28. This is achieved by a support element that has (i) a constant width and thick-
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`ness, (ii) a varied width, or (iii) a varied thickness. Id. 3:11-16.
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`C. German Patent No. D.E. 1,028,896 (“Hoyler”; Exhibit 1005)
`Hoyler issued on April 24, 1958 and is therefore prior art to the ‘588 patent
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`under 35 U.S.C. § 102(b). Hoyler was not before the Examiner during prosecution
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`of the ‘588 patent and was therefore not considered.
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`Hoyler represents a very early disclosure of a flat-style wiper blade, which
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`improves over the prior art by avoiding the use of multiple metal parts and joints,
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`which had been known to create undesirable noise during operation. See Hoyler,
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`col. 1. Hoyler is directed to wiper blade with a wiper bar having a wiper bar com-
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`prised of two longitudinal springs sitting in lateral slots of a wiper strip, which dis-
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`tribute pressure and are capable of adapting to curved windshields. Id. at cols. 1, 2.
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`This improvement, Hoyler teaches, is further advantageous because it reduces the
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`weight of the wiper blade moving parts, thus lowering the stress upon the drive el-
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`ements. Id. at col. 1. The lower weight results in less wear and tear after an identi-
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`cal running time and facilitates faster wiping speeds. Id. Figure 1 of Hoyler is re-
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`produced below.
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`Hoyler Fig. 1
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`D.
`PCT Publication No. WO99/02383 (“Kotlarski”; Exhibit 1006)
`Kotlarski published January 21, 1999 and is therefore prior art to the ‘588
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`patent under 35 U.S.C. § 102(b). Kotlarski was not before the Examiner during
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`prosecution of the ‘588 patent and was therefore not considered. Kotlarski is di-
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`rected to a wiper assembly in which the improvement comprises a holder divided
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`into parts and positioned over the length of the wiper blade.
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`Kotlarski discloses an “elongated, spring-elastic support element 12” having
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`two band faces. Id. at 3:6-7, 3:57-61.1 Located on the underside of the support ele-
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`1 Because the translation of the PCT Publication (Ex. 1006) does not include refer-
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`ence numbers for line citations, and because it encompasses the same subject mat-
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`ment, facing toward the window, “an elongated, rubber-elastic wiper strip 14 is
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`disposed, parallel to the longitudinal axis.” Id. at 3:12-15. Under contact pressure
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`from the wiper arm, “the wiper blade presses with its wiper lip 28 over its entire
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`length against the window surface.” Id. at 3:29-31. The support element “has two
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`spring rails 30 and 32 spaced apart from one another,” id. at 3:38-40, which are
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`disposed in “two opposed longitudinal grooves 38 and 40 of the wiper strip,” id. at
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`3:49-55; the two spring rails “protrude out” of these grooves with their longitudinal
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`edges pointing away from one another, id. at 3:61-64. On the band face of the sup-
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`port element remote from the window is “an extension, which is embodied as a
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`wind deflector strip 200.” Id. at 5:44-48. A recess is assigned within this wind de-
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`flector strip for a connection device 16, id. at 5:48-51, such that the connection de-
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`vice is “seated in the middle region of the support element,” id. at 3:43-46. Figures
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`2 and 12 of Kotlarski are reproduced below:
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`Kotlarski, Fig. 2
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`ter as U.S. Patent 6,279,191 (Ex. 1007), which issued from the PCT, for ease of
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`reference the column and line citations refer to U.S. Patent No. 6,279,191.
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`Kotlarski, Fig. 12
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`E.
`PCT Publication No. WO99/12784 (Exhibit 1013)
`PCT Publication No. WO99/12784 to Merkel et al. (“Merkel”) published on
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`March 18, 1999 and is therefore prior art to the ‘588 patent under 35 U.S.C. §
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`102(b). Merkel was not before the Examiner during prosecution of the ‘588 patent
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`and was therefore not considered. Merkel is directed to a wiper blade with a sup-
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`port element and spoiler that overcomes problems associated with rigid spoilers:
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`“[fastening] a rigid spoiler to the support element would render the flexibility of
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`the support element virtually nil, making proper cleaning of the prescribed swept
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`field no longer possible.” Merkel, 1:57-62.2
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`The invention of Merkel is described as being attained in a wiper blade
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`2 Because the translation of the PCT Publication (Ex. 1013) does not include refer-
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`ence numbers for line citations, and because it encompasses the same subject mat-
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`ter as U.S. Patent 6,295,690 (Ex. 1014), which issued from the PCT, for ease of
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`reference the column and line citations refer to U.S. Patent No. 6,295,690.
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`comprising the following structure:
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`[A]n elongated, rubber-elastic wiper strip [14] provided with
`respective longitudinal grooves [38 and 40] on corresponding
`opposite long sides thereof and with a wiper lip [28] for con-
`tact with a window; a support element [12] for the wiper strip
`having respective spring rails [30 and 32] engaged in and pro-
`truding from the longitudinal grooves provided in the wiper
`strip; a connection device [16] for a wiper arm [18] connected
`to a middle portion of the support element, the connection de-
`vice is being held on the longitudinal edges of the spring rails
`arranged outside of the longitudinal grooves and a wind deflec-
`tor strip comprising at least one longitudinal portion of the wip-
`er strip located on a side of the spring rails remote from the
`wiper lip.
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`Id. at 2:2-14. Merkel teaches that “[a]dvantages from a manufacturing standpoint
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`can be obtained if the wiper strip has a constant cross section substantially over its
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`entire length.” Id. at 2:15-21, 2:46-48. Figures 1 and 4 of Merkel are reproduced
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`below:
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`Merkel Fig. 1
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`Merkel Fig. 4
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`VIII. Detailed Explanation of Grounds for Unpatentability
`Petitioner respectfully submits that this Petition demonstrates a reasonable
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`likelihood that the Petitioner will prevail in demonstrating the unpatentability of
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`each of Claims 1, 12, and 14 of the ‘588 patent. The references cited herein pro-
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`vide technical disclosures that the Office did not have before it.
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`A. Legal Standards
`1.
`Anticipation
` “A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art refer-
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`ence.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
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`(Fed.Cir.1987). “When a claim covers several structures or compositions, either
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`generically or as alternatives, the claim is deemed anticipated if any of the struc-
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`tures or compositions within the scope of the claim is known in the prior art.”
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`Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). Furthermore, “a prior art ref-
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`erence may anticipate without disclosing a feature of the claimed invention if that
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`missing characteristic is necessarily present, or inherent, in the single anticipating
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`reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir.
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`2003) (citing Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.
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`Cir. 1991)).
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`2. Obviousness
`In an obviousness analysis, the Court “must ask whether the improvement is
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`more than the predictable use of prior art elements according to their established
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`functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). If the answer
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`to this threshold question is “no,” then the claimed subject matter is unpatentable
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`under § 103(a) without more. See id. (“when a patent ‘simply arranges old ele-
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`ments with each performing the same function it had been known to perform’ and
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`yields no more than one would expect from such an arrangement, the combination
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`is obvious.” (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). This
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`rule applies with special force where claimed subject matter involves “the simple
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`substitution of one known element for another or the mere application of a known
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`technique to a piece of prior art ready for the improvement.” Id.
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`“One of the ways in which a patent’s subject matter can be proved obvious
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`is by noting that there existed at the time of invention a known problem for which
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`there was an obvious solution encompassed by the patent’s claims.” Id.at 419-20.
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`In this case, among the “known problem[s]” was that heavier moving components
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`(1) caused a higher level of stress on drive elements, (2) required more powerful
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`drive elements for fast wiping speeds, and (3) were costly due to the amount of
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`material needed to produce such components. See Hoyler, col. 2; Davis Decl. ¶ 21.
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`“[A]n implicit motivation to combine [prior art references] exists . . . when the
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`‘improvement’ is technology-independent and the combination of references re-
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`sults in a product or process that is more desirable, for example because it is
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`stronger, cheaper, . . . faster, lighter, . . . more durable, or more efficient.” Dystar
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`Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
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`1368 (Fed. Cir. 2006).
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`3.
`Level of Skill in the Art
`As of not later than April 26, 2001, the level of skill level in the art of the
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`‘588 patent included at least the ability to make the subject matter disclosed in the
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`following patents and printed publications relating to wiper blades for motor vehi-
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`cles:
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` U.K. Patent Application No. G.B. 2,106,775 to Prohaska et al. (“Prohaska”)
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`(Ex. 1003).
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` U.S. Patent No. 3,192,551 to Appel (“Appel”) (E