Filed: October 24, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
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`Case IPR2016-00039
`Patent 7,228,588
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`PETITIONER’S REPLY IN SUPPORT OF PETITION
`PURSUANT TO 37 C.F.R. § 42.23
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00039
`Patent 7,228,588
`____________
`
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`PURSUANT TO 37 C.F.R. § 42.23
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`IPR2016-00039
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES .......................................................................... ii
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`CERTIFICATE OF WORD COUNT ............................................................ iv
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`I.
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`II.
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`LEVEL OF ORDINARY SKILL IN THE ART .................................. 1
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`CLAIMS 1, 12, AND 14 OF THE ’588 PATENT ARE
`OBVIOUS OVER MERKEL OR KOTLARSKI AND
`PROHASKA ......................................................................................... 4
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`A.
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`B.
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`The Differences Between Conventional and Flat-Spring
`Wipers Would Not Have Deterred a Person of Ordinary
`Skill From Applying Teachings of Spoiler Art .......................... 4
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`There was Reason to Improve the Wipers of Merkel and
`Kotlarski ..................................................................................... 9
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`C.
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`Prohaska Does Not Teach Away From a Hollow Spoiler ....... 12
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`III.
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`PURPORTED SECONDARY CONSIDERATIONS CANNOT
`OVERCOME PRIMA FACIE OBVIOUSNESS BECAUSE
`THERE IS NO EVIDENCE OF A NEXUS....................................... 14
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`IV. ATTACKS ON DR. DAVIS’S CREDIBILITY ARE
`INSUPPORTABLE IN FACT AND LAW ........................................ 20
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`A.
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`B.
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`Prior Consistent Statements Support Dr. Davis’s
`Credibility and Accurately Present Dr. Davis’s Opinions ....... 20
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`Prior Indefiniteness Opinions Regarding a Different
`Patent Are Immaterial .............................................................. 20
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`V.
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`CONCLUSION................................................................................... 21
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`CERTIFICATE OF SERVICE ....................................................................... 1
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`i
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`IPR2016-00039
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`
`TABLE OF AUTHORITIES
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`Cases
`ABT Sys., LLC v. Emerson Elec. Co.,
`797 F.3d 1350 (Fed. Cir. 2015) .......................................................................... 15
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`Page(s)
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`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 2
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`In re Antor Media,
`689 F.3d 1282 (Fed. Cir. 2012) .......................................................................... 19
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`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) ............................................................................ 6
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`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 21
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`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314, 1327 (Fed. Cir. 2009) ................................................................ 13
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`DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
`Co.,
`464 F.3d 1356, 1368 (Fed. Cir. 2006). ....................................................... 4, 5, 14
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`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) .............................................................................. 2
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`GraftTech Int’l Holdings, Inc. v. Laird Techs. Inc., No. 2015-1796,
`2016 WL 3357427 (Fed. Cir. June 17, 2016) ............................................... 14, 15
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`Grobler v. Apple Inc., No. 12-CV-01534-JST,
`2014 WL 1867043 (N.D. Cal. May 6, 2014) ...................................................... 21
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`K-Swiss Inc. v. Glide N Lock GmbH,
`567 F. App’x 906 (Fed. Cir. 2014) ..................................................................... 18
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`KSR International Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
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`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .................................................................... 11, 14
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`ii
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`IPR2016-00039
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF AUTHORITIES
`Cont’d
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`Cases
`Okajima v. Bourdeau,
`261 F.3d 1350 (Fed. Cir. 2001) ............................................................................ 4
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`Page(s)
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`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .................................................................... 14, 18
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`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 17
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`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`600 F. App’x 755 (Fed. Cir. 2015) ..................................................................... 11
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`Pregis Corp. v. Kappos,
`700 F.3d 1348 (Fed. Cir. 2012) .......................................................................... 19
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`Randall Mfg. v. Rea,
`733 F.3d 1355 (Fed. Cir. 2013) .................................................................. 7, 8, 12
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`Sakraida v. Ag Pro, Inc.,
`425 U.S. 273 (1976) .......................................................................................... 2, 3
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`Western Union Co. v. Moneygram Payment Sys., Inc.,
`626 F.3d 1361 (Fed. Cir. 2010) .......................................................................... 15
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`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) .......................................................................... 19
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`Statutes and Rules
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`35 U.S.C. § 103 ................................................................................................ 1, 9, 11
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`35 U.S.C. § 103(a) ..................................................................................................... 1
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`Federal Rule of Evidence 801(d) ............................................................................. 20
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`Regulations
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`37 C.F.R. § 42.104(b)(5) .......................................................................................... 19
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`iii
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`IPR2016-00039
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(c) and (d) Petitioner certifies that the word
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`count of Petitioner’s Reply in Support of the Petition (exclusive of any table of
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`contents, table of authorities, listing of facts which are admitted, denied, or cannot
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`be admitted or denied, certificate of service or word count, or appendix of exhibits)
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`as measured by Microsoft Word is 4,674 words.
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`IPR2016-00039
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Costco Wholesale Corporation (“Petitioner”) submits this Reply in further
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`support of the unpatentability of claims 1, 12, and 14 of U.S. Patent No. 7,228,588
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`(the “’588 Patent”; Ex. 1001) under 35 U.S.C. § 103(a) on the following instituted
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`grounds:
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`• (1) Claims 1, 12, and 14 over PCT WO99/02383 to Kotlarski et al.
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`(“Kotlarski”; Ex. 1006)1 and U.K. Patent Application No. GB 2,106,775 to
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`Prohaska et al. (“Prohaska”; Ex. 1003); and,
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`• (2) Claims 1, 12, and 14 over PCT WO99/12784 to Merkel et al. (“Merkel”;
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`Ex. 1013)2 and Prohaska.
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`The Board has already found “a reasonable likelihood that Petitioner would prevail
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`in proving the unpatentability” of these claims. See Institution Decision (Paper No.
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`19) (the “Decision”), 14–20.
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`I.
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`LEVEL OF ORDINARY SKILL IN THE ART
`In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
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`Court reaffirmed that the 35 U.S.C. § 103 statutory phrase, “ordinary skill in the
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`1 As in the Petition, citations to Kotlarski refer to Exhibit 1007. See Petition for
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`Inter Partes Review of U.S. Patent 7,228,588 (the “Petition”) (Paper No. 1), 15
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`n.1.
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`2 As in the Petition, citations to Merkel refer to Exhibit 1014. See Petition, 17 n.2.
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`art,” includes a degree of “ingenuity” or problem solving skill. Sakraida v. Ag Pro,
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`Inc., 425 U.S. 273, 279 (1976) (citation omitted); see KSR, 550 U.S. at 417, 427.
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`“Under the correct analysis, any need or problem known in the field of
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`endeavor at the time of invention and addressed by the patent can provide a reason
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`for combining the elements in the manner claimed.” KSR, 550 U.S. at 420. When
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`such a problem is identified, the relevant legal question is whether the conception
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`of a claimed solution “was a design step well within the grasp of a person of
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`ordinary skill in the relevant art,” id. at 427, or whether it required “more ingenuity
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`and skill . . . than were possessed by an ordinary mechanic acquainted with the
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`business.” Sakraida, 425 U.S. at 279 (citation omitted); see also KSR, 550 U.S. at
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`417.
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`Robert Bosch LLC (“Patent Owner”) is thus wrong in asserting that the
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`statutory phrase “ordinary skill in the art” connotes merely a level of education or
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`work experience. See Patent Owner Response (Paper No. 31) (the “Response”), 1–
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`2. A person having ordinary skill in the art “is a hypothetical person who is
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`presumed to know the relevant prior art,” In re GPAC Inc., 57 F.3d 1573, 1579
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`(Fed. Cir. 1995), and how to practice the subject matter disclosed in prior art
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`patents, see, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
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`1355 (Fed. Cir. 2003) (“[B]oth the claimed and unclaimed disclosures in a prior art
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`patent are [presumptively] enabled.”).
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`2
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`Prior to the claimed invention of the ’588 Patent, the windshield wiper art
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`included, inter alia, flat-spring wipers (e.g., U.S. Patent No. 3,192,551 to Appel
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`(“Appel”; Ex. 1004); DE 1028896 to Hoyler (“Hoyler”; Ex. 1005)), conventional
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`wipers mounted with hollow spoilers (e.g., Prohaska), and flat-spring wipers
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`having solid spoilers (e.g., Merkel, Kotlarski). See Petition, 10–18. The ’588 Patent
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`acknowledges that the prior art includes a wiper with a spoiler attached directly to
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`a flat-spring support element, and purports to improve over it by substituting a
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`hollow spoiler for the solid spoiler. See ’588 Patent, 1:41–56 (citing DE 19736368
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`[Ex. 1104]3), 1:56–2:16.
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`In analyzing whether this claimed subject matter was non-obvious at the
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`time of its making by the ’588 Patent applicants, it is both necessary and
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`appropriate to consider whether the combination of Merkel or Kotlarski with
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`Prohaska is one that “‘arranges old elements with each performing the same
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`function it had been known to perform’ and yields no more than one would expect
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`from such an arrangement,” KSR, 550 U.S. at 417 (quoting Sakraida, 425 U.S. at
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`282), or whether the substitution would have been “beyond” the “skill” of a person
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`having ordinary skill in the art. Id. “[A]n implicit motivation to combine [prior art
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`3 Hereinafter, citations are to the English counterpart, U.S. Patent No. 6,292,974
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`(the “’974 Patent”; Ex. 1105).
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`3
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`references] exists . . . when the ‘improvement’ is technology-independent and the
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`combination of references results in a product or process that is more desirable, for
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`example because it is stronger, cheaper, . . . faster, lighter, . . . or more efficient.”
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`DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
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`1356, 1368 (Fed. Cir. 2006).
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` In a parallel proceeding involving U.S. Patent No. 6,973,698 (the “’698
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`Patent”), the Board found that the prior art of record reflects an appropriate skill
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`level, relying on the very same case that Patent Owner now suggests supports a
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`different outcome. See Institution Decision, IPR2016-00034, Paper No. 16, at 22
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`(quoting Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Here too,
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`the prior art of record reflects and indeed prescribes the baseline of knowledge and
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`skill against which the obviousness or non-obviousness of the challenged claims
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`must be measured. See KSR, 550 U.S. at 427.
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`II. CLAIMS 1, 12, AND 14 OF THE ’588 PATENT ENCOMPASS
`SUBJECT MATTER THAT WOULD HAVE BEEN OBVIOUS IN
`VIEW OF MERKEL OR KOTLARSKI AND PROHASKA
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` The Differences Between Conventional and Flat-Spring Wipers A.
`Would Not Have Deterred a Person of Ordinary Skill From
`Applying Teachings of Spoiler Art
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`Patent Owner has not disputed, or even addressed, the reasons why a person
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`of ordinary skill would have modified the wipers of Merkel and Kotlarski with a
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`hollow spoiler, as claimed: to reduce the wiper’s weight, material, and cost of
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`manufacture. See, e.g., Petition, 20–21, 35–36, 38–39; Ex. 1016 ¶¶ 54–56. Nor has
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`Patent Owner disputed Petitioner’s assertion that these are implicit motivations,
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`recognized as a matter of law. See DyStar, 464 F.3d at 1368. Patent Owner instead
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`argues that conventional wipers are “fundamentally different” from flat-spring
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`wipers, and that with respect to the latter, “the conventional thinking at the time
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`was to avoid any additional components on the beam.” Response, 3–5. This
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`assertion is contrary to the evidence of record, including the ’588 Patent’s own
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`disclosure.
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`Prior to the claimed invention, it was known that flat-spring wipers, like
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`conventional wipers, were prone to wind-lift at high speeds. Merkel explains this
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`by reference to Hoyler, a flat-spring wiper dating back to 1958: “At relatively high
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`vehicle speeds, given the cooperation of the[] two aforementioned pressures, both
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`of which are oriented counter to the wiper blade contact pressure, this contact
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`pressure is reduced at least enough that proper wiping is no longer possible.”
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`Merkel, 1:32–47; see also Ex. 1016 ¶ 27. Prohaska likewise teaches that
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`conventional wipers are susceptible to reduced contact pressure as a product of
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`these same forces. Prohaska, 1:8–15; Ex. 1016 ¶ 25.
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`The problem of wind-lift was not only well-known and understood, but by
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`the time of the claimed invention, it had been solved. Spoilers (i.e., “wind
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`deflection strips”) were known to counter the liftoff tendencies of both
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`conventional and flat-spring wipers. See Ex. 1016 ¶¶ 24–27. Prohaska describes
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`several embodiments of a spoiler arranged on a conventional wiper such that “the
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`lifting force created by the air stream is on one hand deflected from the wiper blade
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`and on the other hand transmitted to the wiper element.” Prohaska, 1:53–57.
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`Likewise, Merkel describes a flat-spring wiper which includes a “wind deflector
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`strip” whose “leading-edge face” “counteracts the liftoff tendency of the two
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`pressures and thus assures excellent cleaning quality.” Merkel, 2:15–24; see also
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`Kotlarski, 1:66–2:4.
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`The ’588 Patent’s own disclosure confirms Petitioner’s understanding and
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`undermines Patent Owner’s contention that a person of ordinary skill would not
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`have attached a spoiler to a flat-spring wiper: it cites a flat-spring wiper having a
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`spoiler fastened directly to the spring support element as prior art. ’588 Patent,
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`1:40–56 (citing Ex. 1104); see also, e.g., Constant v. Advanced Micro-Devices,
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`Inc., 848 F.2d 1560, 1569–70 (Fed. Cir. 1988) (“A statement in a patent that
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`something is in the prior art is binding on the applicant and patentee for
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`determinations of anticipation and obviousness.”). It is not disputed that flat-
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`springs are affected by structural additions, but the state of the art was such that
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`this so-called “sensitive” behavior (Response, 3, 9) was a factor that persons of
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`ordinary skill readily understood and accounted for in design. See Ex. 1100 (Peck
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`Decl.) ¶ 9.
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`It is thus clear that by the time of the claimed invention, persons of ordinary
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`skill in the windshield wiper art had already borrowed spoiler teachings from the
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`older conventional wipers and successfully applied them to flat-spring wipers. See,
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`e.g., Ex. 1006 ¶ 57. All of this background information “is part of the store of
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`public knowledge that must be consulted when considering whether a claimed
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`invention would have been obvious.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362
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`(Fed. Cir. 2013).
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`In Randall, patentee argued “that one of ordinary skill in the art would not
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`have been motivated to combine the cited references, both because of alleged
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`physical impediments to their combination and because the references each taught
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`distinct features that were at cross-purposes with one another.” Id. at 1360. Randall
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`countered that the state of the art included well-known options for avoiding any
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`alleged incompatibility, and submitted numerous prior art references as evidence.
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`Id. The Board declined to consider these background references, opting instead to
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`rely solely on the specific references cited in the claim rejection. Id. The Federal
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`Circuit held this was in error:
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`By narrowly focusing on the four prior-art references cited by the
`Examiner and ignoring the additional record evidence Randall cited to
`demonstrate the knowledge and perspective of one of ordinary skill in
`the art, the Board failed to account for critical background information
`that could easily explain why an ordinarily skilled artisan would have
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`been motivated to combine or modify the cited references to arrive at
`the claimed inventions.
`Id. at 1362.
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`Just as in Randall, and contrary to Patent Owner’s contention (see, e.g.,
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`Response, 2), at least Merkel, Kotlarski, Prohaska, and the ‘974 Patent demonstrate
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`the “background knowledge possessed by a person having ordinary skill in the art,”
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`namely that spoilers effectively counter wind-lift tendencies of conventional and
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`flat-spring wipers and can be attached in various ways, including to the spring
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`support element directly. Randall, 733 F.3d at 1362 (citing KSR, 550 U.S. at 418).
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`It is this knowledge that informs “the inferences and creative steps” that such a
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`person would have employed. Id.
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`Viewed through this lens, it is apparent that the differences between
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`conventional and flat-spring wipers would not have deterred a person of ordinary
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`skill from applying teachings of conventional wiper spoiler art to pre-existing flat-
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`spring wiper spoilers. Given the disclosures of Merkel, Kotlarski, and Prohaska,
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`the relevant legal question is whether “[a] person having ordinary skill in the art
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`could have combined [Merkel or Kotlarski] . . . with [a hollow spoiler] . . . in a
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`fashion encompassed by [the challenged claims], and would have seen the benefits
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`of doing so.” KSR, 550 U.S. at 422. The answer here is clearly “yes.”
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`B.
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`There was Reason to Improve the Wipers of Merkel and
`Kotlarski
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`Only two features claimed in the ’588 Patent purport to improve over the
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`prior art: a hollow spoiler having a support means (i.e., a wall). See, e.g., ’588
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`Patent, 2:3–29; see also Ex. 1016 ¶ 62; Ex. 2003 (Dubowsky Decl.) ¶¶ 29–31.
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`Patent Owner has never argued that these specific improvements are not obvious;
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`instead, it has taken the extraordinary position that there was no reason to make
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`any improvement to Merkel or Kotlarski because “each disclose a complete beam
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`blade solution.” Response, 5. The reasons Petitioner presented remain unaddressed.
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`See, e.g., Petition, 20–21, 35–36, 38–39; Ex. 1016 ¶¶ 54–58, 60–67.
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`If the Board credited this argument, the entire obviousness doctrine would
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`be rendered superfluous; 35 U.S.C. § 103 is intended to preclude monopolies on
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`trivial improvements. As the Supreme Court observed, “[g]ranting patent
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`protection to advances that would occur in the ordinary course without real
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`innovation retards progress and may, in the case of patents combining previously
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`known elements, deprive prior inventions of their value or utility.” KSR, 550 U.S.
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`at 419. And even though, over time, it “is expected in the normal course” that
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`progress will begin “from higher levels of achievement,” improvements that are
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`“the results of ordinary innovation” will still not be “the subject of exclusive rights
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`under the patent laws.” KSR, 550 U.S. at 427.
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`Prior to the claimed invention, the flat-spring and spoiler windshield wiper
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`art constituted a series of minor improvements, exemplified below:
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`Exemplary Timeline of Improvements4
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`Aug. 21, 19975 Sept. 8, 19976 Dec. 7, 19987 May 29, 20008 Apr. 26, 20019
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`The ’588 Patent simply reflects a further iteration in a series of minor
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`improvements, all of which occurred “in the ordinary course” and none of which
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`4 The dates reflect the earliest priority date listed on the face of each reference,
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`respectively.
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`5 ’974 Patent, Fig. 3.
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`6 Merkel, Fig. 3.
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`7 PCT Pub. No. WO00/34090 (Ex. 1016, p. 139), Fig. 6.
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`8 U.S. Patent No. 6,944,905 (Ex. 1016, p. 78), Fig. 2. Although this patent is not
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`statutory prior art, it nonetheless indicates that minor iterative improvements on
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`flat-spring wipers with spoilers were common in this field.
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`9 ’588 Patent, Fig. 2.
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`10
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`were beyond the skill of a person of ordinary skill in the windshield wiper art. See
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`KSR, 550 U.S. 417, 419.
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`Patent Owner has not adequately supported its suggestion that the situation
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`here
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`is different
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`than every other
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`improvement encompassed by § 103.
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`Dr. Dubowsky’s conclusory assertion (Ex. 2003 ¶ 74) adds nothing to the analysis,
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`and the single authority Patent Owner points to, Plas-Pak Indus., Inc. v. Sulzer
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`Mixpac AG, 600 F. App’x 755 (Fed. Cir. 2015), is inapposite. See Response, 5–6.
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`In Plas-Pak, the proposed obviousness combinations were rejected because
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`they would “fundamentally alter” a prior art reference’s “principle of operation” or
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`“would render [it] inoperable for its intended purpose.” Id. at 759–60. For
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`example, where the prior art reference specifically required valves to prevent
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`backflow in a paint-dispensing apparatus, and the proposed combination would
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`have eliminated the valves, a finding of non-obviousness was proper because the
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`reference’s principle of operation would have been destroyed. Id. at 758–59.
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`Unlike in Plas-Pak, substituting the hollow spoiler of Prohaska for the solid
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`spoiler of either Merkel or Kotlarski would not “fundamentally alter” the
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`“principle of operation” or render Merkel or Kotlarski “inoperable for [their]
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`intended purpose.” The slightly modified wipers would weigh less and require less
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`material to manufacture, but they would otherwise clean windshields and counter
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`wind-lift in exactly the same way. See In re Mouttet, 686 F.3d 1322, 1333 (Fed.
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`11
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`Cir. 2012) (finding obviousness where a substitution did not destroy the primary
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`reference’s principle of operation).
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`Patent Owner also argues that Merkel, Kotlarski, and Prohaska do not
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`expressly teach what changes to the wiper strip, support element, and spoiler
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`attachment mechanism might be needed to successfully substitute a hollow spoiler
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`for the solid spoilers of Merkel and Kotlarski. Response, 6. The same situation was
`
`presented in KSR itself:
`
`In automotive design, as in many other fields, the interaction of
`multiple components means that changing one component often
`requires
`the others
`to be modified as well. Technological
`developments made it clear that engines using computer-controlled
`throttles would become standard. As a result, designers might have
`decided to design new pedals from scratch; but they also would have
`had reason to make pre-existing pedals work with the new engines.
`KSR, 550 U.S. at 424. Here too, a person of ordinary skill would have had reason
`
`to make pre-existing components work together and there is no evidence that slight
`
`modifications to various wiper components were beyond the technical grasp of a
`
`person of ordinary skill in the windshield wiper art. Patent Owner urges the same
`
`rigid approach that KSR rejected. See, e.g., Randall, 733 F.3d at 1362 (citing KSR,
`
`550 U.S. at 415–22).
`
`Prohaska Does Not Teach Away From a Hollow Spoiler
`
`C.
`
`In a well-reasoned ruling, this Board has already “disagree[d] with Patent
`
`12
`
`
`
`IPR2016-00039
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`Owner’s characterization of Prohaska” as teaching away from using one of its own
`
`embodiments, a hollow spoiler (Fig. 3):
`
`Prohaska does not disclose that a hollow spoiler should not be used.
`Rather . . . 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.
`Decision, 15–16 (citing DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
`
`F.3d 1314, 1327 (Fed. Cir. 2009); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
`
`1165 (Fed. Cir. 2006)).
`
`Patent Owner has not proffered any evidence that should cause the Board to
`
`doubt its initial finding. The deposition testimony of Petitioner’s expert, Dr. Davis,
`
`which Patent Owner relies on, actually lends support to the Board’s conclusion.
`
`See Response, 7–9 (citing Ex. 2002, 113:15–115:14) (“[I]t’s kind of one of the
`
`design trade offs that you would be making . . . and it would certainly be lighter,
`
`but there could be a bit of a tradeoff there.”).
`
`
`
`Moreover, there are reasons why a person of ordinary skill would have
`
`modified the spoilers of Merkel or Kotlarski to be hollow, as in Prohaska—Patent
`
`Owner has just ignored them. “[A]ny need or problem known in the field of
`
`13
`
`
`
`IPR2016-00039
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`endeavor at the time of invention and addressed by the patent [i.e., Prohaska] can
`
`provide a reason for combining the elements in the manner claimed.” KSR, 550
`
`U.S. at 420; see also Ex. 1016 ¶ 57. Reducing the weight of automobile
`
`components was a well-known objective, see Ex. 1016 ¶¶ 53–56; see also DyStar,
`
`464 F.3d at 1368, and Prohaska “may be read for all that it teaches, including uses
`
`beyond its primary purpose.” In re Mouttet, 686 F.3d at 1331.
`
`III. PURPORTED SECONDARY CONSIDERATIONS CANNOT
`OVERCOME PRIMA FACIE OBVIOUSNESS BECAUSE THERE IS
`NO EVIDENCE OF A NEXUS
`
`“Evidence of commercial success, or other secondary considerations, is only
`
`significant if there is a nexus between the claimed invention and the commercial
`
`success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir.
`
`2006). Patent Owner devotes a substantial portion of its Response to “objective
`
`indicia of non-obviousness,” but for all the exhibits it cites, not a single one is
`
`linked to the ’588 Patent’s allegedly novel contributions to the art (i.e., a hollow
`
`spoiler with a support means).
`
`In fact, Patent Owner submitted the exact same evidence of secondary
`
`considerations of nonobviousness in all six pending parallel inter partes review
`
`proceedings. See, e.g., GraftTech Int’l Holdings, Inc. v. Laird Techs. Inc., No.
`
`2015-1796, 2016 WL 3357427, at *5 (Fed. Cir. June 17, 2016) (finding that
`
`“GrafTech failed to meet its burden of demonstrating the requisite nexus” because,
`
`14
`
`
`
`IPR2016-00039
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`inter alia, “GrafTech submitted the same evidence in each of the inter partes
`
`reviews to establish the commercial success of the patents-in-suit. . . . That strategy
`
`undermines its commercial success arguments because GrafTech argues that the
`
`patents-in-suit are directed to different inventions”). The arguments made in this
`
`proceeding are even more attenuated than in GraftTech, because reference to the
`
`’588 Patent’s allegedly novel features are conspicuously absent.
`
`For instance, Patent Owner discusses in detail the purported commercial
`
`success of the Aerotwin and Icon wipers, but it has not only failed to prove that
`
`these products are “coextensive with the patented invention,” see, e.g., ABT Sys.,
`
`LLC v. Emerson Elec. Co., 797 F.3d 1350, 1361 (Fed. Cir. 2015) (citation
`
`omitted), it has not even submitted competent evidence that the Aerotwin or Icon
`
`wipers practice the ’588 Patent; the Response is peppered with citations to claim
`
`charts, but the claim charts are for different patents. See Response, 13–14 (citing
`
`Ex. 2015, 33–57, 59–62; Ex. 2016, 30–43, 45–48); see also id. (citing Ex. 2006,
`
`698:19–699:22 (questioning regarding whether the Icon practices a different
`
`patent))10
`
`
`10 An unverified, attorney-signed, interrogatory (Ex. 2014), which merely lists the
`
`’588 Patent among countless others, cannot overcome this failure of proof. See,
`
`e.g., Western Union Co. v. Moneygram Payment Sys., Inc., 626 F.3d 1361, 1373
`
`15
`
`
`
`IPR2016-00039
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`
`Patent Owner goes so far as to say that its commercial products are
`
`successful because they are quiet in operation—purportedly a result of its own
`
`extensive testing. Response, 14. But wiper noise, and the numerous factors which
`
`influence wiper noise, are not even mentioned in the ’588 Patent. See Ex. 1100 ¶¶
`
`25–26. In other words, Patent Owner points to something other than the claimed
`
`features of the ’588 Patent as “part of the reason for the great customer demand.”
`
`Ex. 2007 ¶ 6. Alternatively, if a discussion of noise was omitted from the
`
`specification because the ’588 Patent applicants presumed that persons of ordinary
`
`skill understood how to design a quiet flat-spring wiper (cf. Ex. 1100 ¶¶ 18–23)),
`
`then a fortiori this “evidence” cannot undermine prima facie obviousness.
`
`Perhaps to try and illustrate skepticism or unexpected results, Patent Owner
`
`again points to the alleged “conventional” thinking to avoid adding structures to a
`
`flat-spring wiper. Response, 12, 14. But, as discussed supra, and as confirmed by
`
`the ’588 Patent’s own disclosure, this was not the case. See Ex. 1016 ¶ 57; Ex.
`
`
`(Fed. Cir. 2010) (noting that “[m]ere attorney argument” relating to commercial
`
`success “is not evidence that can support a finding of nonobviousness”). Nor can
`
`conclusory assertions of Patent Owner’s witnesses, which do not even contemplate
`
`whether the Aerotwin or Icon products possess the claimed support means. See
`
`Response, 13–14 (citing Ex. 2007; Ex. 2005).
`
`16
`
`
`
`IPR2016-00039
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`1100 ¶ 7–8. Neither the feasibility of attaching a flexible spoiler on a flat-spring
`
`wiper, nor any purported long-felt need for such a wiper, can be attributed to the
`
`minor improvements claimed in the ’588 Patent.
`
`Patent Owner also claims that the Trico Innovision product is evidence of a
`
`long-felt need and failure by others (see Response, 15–16 (citing Ex. 2007 ¶ 7; Ex.
`
`2005,11 250:6–251:7)), but the Trico product is not probative for several reasons.
`
`First, it was introduced after the earliest priority date of the ’588 Patent.12 See
`
`Response, 15; Ex. 1100 ¶ 15. To be relevant, however, the evidence must
`
`demonstrate a long-felt and unmet need that “existed on the patent’s filing date.”
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332 (Fed. Cir. 2009)
`
`(emphasis added). Patent Owner has not pointed to any efforts—unsuccessful or
`
`otherwise—to reduce the weight of flat-spring wipers with spoilers prior to the
`
`’588 Patent’s filing date.
`
`Second, Patent Owner apparently attributes the alleged failure of the Trico
`
`
`11 On October 19, 2016, the Board authorized Petitioner to file a motion to strike
`
`the hearsay testimony of Wilfried Merkel, submitted by Patent Owner. See Paper
`
`No. 34. Petitioner’s motion is being submitted contemporaneously herewith.
`
`12 Con
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