Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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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 NO. IPR2016-00040
`U.S. Patent No. 7,484,264
`______________________
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 35
`U.S.C. § 313 AND 37 C.F.R. § 42.107
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`U.S. Patent No. 7,484,264
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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,
`
`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00040
`U.S. Patent No. 7,484,264
`______________________
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 35
`U.S.C. § 313 AND 37 C.F.R. § 42.107
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`SUMMARY OF ARGUMENTS .................................................................... 2
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`III.
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`STANDARD FOR INSTITUTION................................................................. 4
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`IV. BRIEF OVERVIEW OF U.S. PATENT NO. 7,484,264 ................................ 6
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`V. UNDER THE PROPER CLAIM CONSTRUCTION, PETITIONER FAILS
`TO CARRY ITS BURDEN OF PROOF, AND INSTITUTION SHOULD
`BE DENIED ON ALL GROUNDS ................................................................ 8
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`VI. PETITIONER IMPROPERLY INCORPORATES BY REFERENCE THE
`KRUGER DECLARATION .........................................................................12
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`VII. PETITIONER PUTS FORTH NO EVIDENCE THAT THE CITED
`REFERENCES IN GROUNDS 1–3, 6, 7, 10, and 11 DISCLOSE “THE
`PROFILE OF THE CROSS SECTION OF THE WIND DEFLECTION
`STRIP IS THE SAME ALONG ITS ENTIRE LENGTH” LIMITATION
`FOUND IN ALL CHALLENGED CLAIMS ...............................................13
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`VIII. THE OBVIOUSNESS COMBINATIONS IN GROUNDS 2–13 ARE
`DRIVEN BY IMPERMISSIBLE HINDSIGHT, IGNORES TEACHINGS
`AWAY, AND REST UPON CONCLUSORY ASSERTIONS ....................14
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`IX. CONCLUSION ..............................................................................................19
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`Table of Authorities
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`
`Cases
`ActiveVideo Networks v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed Cir. 2012) ................................................................... 3, 5, 18
`
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00353, Paper 9 (PTAB June 25, 2015) ............................................... 10
`
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00441, Paper 11 (PTAB July 13, 2015) ................................................ 3
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`Apple, Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00456, Paper 9 (PTAB June 15, 2015) ..................................... 2, 10, 11
`
`August Tech. Corp. v. Camtek Ltd.,
`655 F.3d 1278 (Fed. Cir. 2011) ............................................................................ 5
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`Blackberry Corp. v. Mobilemedia Ideas LLC,
`IPR2013-00016, Paper 32 (PTAB Feb. 25, 2014) .............................................. 12
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`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ......................................... 3, 12
`
`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) .............................................................................. 9
`
`Fidelity National Info. Serv’s, Inc. v. Datatreasury Corp.,
`IPR2014-00489, Paper 9 (PTAB Aug. 13, 2014) ............................................... 12
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 15
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ...................................................................... 3, 18
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`Kemco Sales, Inc. v. Control Papers Co., Inc.,
`208 F.3d 1352 (Fed. Cir. 2000) ............................................................................ 9
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`U.S. Patent No. 7,484,264
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`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................. 5
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`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 15
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`PanelClaw, Inc. v. SunPower Corp.,
`IPR2014-00386, Paper 7 (PTAB June 30, 2014) ..................................... 2, 10, 11
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`PCT Int’l, Inc. v. Amphenol Corp.,
`IPR2013-00229, Paper 17 (PTAB Dec. 24, 2013) ............................................. 12
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`Pride Solutions, LLC v. Not Dead Yet Manufacturing, Inc.,
`IPR2013-00627, Paper 14 (PTAB Mar. 17, 2014) ..................................... 2, 8, 11
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`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 15 (PTAB Dec. 30, 2013) ............................................... 5
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`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 17 (PTAB Feb. 25, 2014) .......................................... 4, 18
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`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00226, Paper 9 (PTAB Aug. 12, 2013) ............................................... 11
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`Unified Patents Inc. v. OliviStar, LLC,
`IPR2015-01216, Paper 15 (PTAB Nov. 20, 2015) ............................................. 12
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`Vizio, Inc. v. Int’l Trade Comm’n,
`605 F.3d 1330 (Fed. Cir. 2010) ............................................................................ 5
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ............................................................................ 9
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`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
`IPR2014-01708, Paper 17 (PTAB Oct. 30, 2014) ................................................ 9
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`
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`Statutes
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`35 U.S.C. § 112 ...................................................................................................... 2, 9
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`35 U.S.C. § 112(f) ........................................................................................ 2, 8, 9, 10
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`U.S. Patent No. 7,484,264
`35 U.S.C. § 314(a) ................................................................................................. 4, 5
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`35 U.S.C. § 316(e) ..................................................................................................... 5
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`
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`Regulations
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`37 C.F.R. § 42.6(a)(3) .......................................................................................... 2, 12
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`37 C.F.R. § 42.24(a)(1)(i) .................................................................................... 2, 12
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`37 C.F.R. § 42.104(b)(3) ................................................................................ 2, 10, 11
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`37 C.F.R. § 42.104(b)(4) ...................................................................................... 5, 14
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`37 C.F.R. § 42.108(b) ................................................................................................ 5
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`37 C.F.R. § 42.108(c) ................................................................................................. 4
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`
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`Other Authorities
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14,
`2012) ..................................................................................................................... 5
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`iv
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`I.
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`INTRODUCTION
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`Patent Owner, Robert Bosch LLC (“Bosch”), submits this preliminary
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`response to the Petition filed by Costco Wholesale Corporation (“Petitioner” or
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`“Costco”) as Paper No. 1 in this proceeding, requesting inter partes review of
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`claims 1–3 of U.S. Patent No. 7,484,264 (“Petition”). This response is timely
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`pursuant to the Board’s Notice in Paper No. 3.
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`The following arguments are not intended to be an exhaustive list of
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`arguments with respect to the grounds asserted in the Petition. Rather, Bosch
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`respectfully submits these streamlined arguments in response to the issue of
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`institution and reserves the right to expand on these arguments with additional
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`evidence, including testimonial evidence, or to provide new arguments, should the
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`Board determine that institution is appropriate.
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`Bosch respectfully submits that Petitioner has not established a reasonable
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`likelihood that it would prevail with respect to any of the challenged claims.
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`Accordingly, Bosch respectfully requests that the Board decline to institute inter
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`partes review for the reasons set forth below.
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`II.
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`SUMMARY OF ARGUMENTS
`The Petition fails for several reasons.
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`First, Petitioner fails to construe “support means …,” a means-plus-function
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`limitation governed by 35 U.S.C. §112 ¶ 6.1 This failure is a fatal violation of 37
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`C.F.R. § 42.104(b)(3). See, e.g., Apple, Inc. v. ContentGuard Holdings, Inc.,
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`IPR2015-00456, Paper 9 at 5–9 (PTAB June 15, 2015); PanelClaw, Inc. v.
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`SunPower Corp., IPR2014-00386, Paper 7 at 9–10 (PTAB June 30, 2014).
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`Because this means-plus-function limitation is present in all challenged claims 1–3,
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`institution should be denied on all grounds on this basis alone.
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`Second, Petitioner has conducted no invalidity analysis using the proper
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`construction of “support means,” which construction is described below. As this
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`limitation is present in all challenged claims, institution must be denied with
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`respect to all grounds. See, e.g., Pride Solutions, LLC v. Not Dead Yet
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`Manufacturing, Inc., IPR2013-00627, Paper 14 at 9–11 (PTAB Mar. 17, 2014).
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`Third, Petitioner violates 37 C.F.R. §§ 42.24(a)(1)(i) and 42.6(a)(3) by
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`improperly incorporating by reference numerous arguments from the Kruger
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`1 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125
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`Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f).
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`Because the ’264 patent has a filing date prior to September 16, 2012, the effective
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`date of § 4(c) of the AIA, Bosch refers to the pre-AIA version of 35 U.S.C. § 112.
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`2
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`Declaration into the Petition. Under this Board’s prior decisions, the Declaration
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`should be disregarded. See, e.g., Cisco Sys., Inc. v. C-Cation Techs., LLC,
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`IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014). Without this testimony,
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`Bosch submits that the Petition is insufficient to carry Petitioner’s burden, and
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`institution should be denied with respect to all grounds.
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`Fourth, Petitioner offers no evidence that the cited references relied on by
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`Petitioner in Grounds 1–3, 6, 7, 10, and 11, disclose that “the profile of the cross
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`section of the wind deflection strip is the same along its entire length,” as required
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`by claims 1–3. Therefore, institution on Grounds 1–3, 6, 7, 10, and 11 must be
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`denied.
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`Fifth, regarding the alleged obviousness combinations, the Petition is driven
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`by improper hindsight and lacks articulated reasons with rational underpinnings to
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`support the proposed modifications. See, e.g., Apple Inc. v. ContentGuard
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`Holdings, Inc., IPR2015-00441, Paper 11 at 12 (PTAB July 13, 2015). Moreover,
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`the references themselves teach away from the proposed combinations. And, the
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`Petition provides only conclusory assertions with respect to how the references
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`might be combined. These assertions are insufficient to support a claim of
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`obviousness. See, e.g., K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362,
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`1365 (Fed. Cir. 2014); ActiveVideo Networks v. Verizon Commc’ns, Inc., 694 F.3d
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`1312, 1327–28 (Fed Cir. 2012) (dismissing expert testimony that “failed to explain
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`how specific references could be combined, which combination(s) of elements in
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`specific references would yield a predictable result, or how any specific
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`combination would operate or read on the asserted claims” and further dismissing
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`expert testimony that generically recites a desire for more efficient and cheaper
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`systems that had more features for customers); SAS Inst., Inc. v. ComplementSoft,
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`LLC, IPR2013-00581, Paper 17 at 3–4 (PTAB Feb. 25, 2014) (observing that the
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`PTAB “is not required to take every statement by a petitioner’s expert as
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`established fact” and “is required to assess the persuasiveness of the testimony in
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`light of other factual evidence in the record, e.g., the explicit wording of the prior
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`art and the scope of the claimed invention”). Therefore, institution should be
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`denied with respect to Grounds 2–13.
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`Accordingly, Bosch respectfully submits that, for at least these reasons, the
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`Board should decline to institute the inter partes review.
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`III. STANDARD FOR INSTITUTION
`The Board, in considering whether to institute a trial, determines whether or
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`not a party has met the statutory institution standard. A petition for inter partes
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`review may be granted only when “the information presented in the petition …
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`shows that there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
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`see also 37 C.F.R. § 42.108(c). A petitioner bears the burden of showing that this
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`standard has been met. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,756 (Aug. 14, 2012) (“The Board … may institute a trial where the
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`petitioner establishes that the standards for instituting the requested trial are met
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`….”). A petitioner also bears the burden of proving unpatentability by a
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`preponderance of the evidence. 35 U.S.C. § 316(e).
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`A petitioner making an obviousness challenge must show where each
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`claimed limitation is taught in the prior art. See, e.g., Vizio, Inc. v. Int’l Trade
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`Comm’n, 605 F.3d 1330, 1342–43 (Fed. Cir. 2010); August Tech. Corp. v. Camtek
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`Ltd., 655 F.3d 1278, 1287 (Fed. Cir. 2011); see also 37 C.F.R. § 42.104(b)(4). If a
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`petitioner asserts that a combination of prior art renders a claim unpatentable, it
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`must “set forth sufficient articulated reasoning with rational underpinning to
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`support its proposed obviousness ground.” SAS Inst., Inc. v. ComplementSoft,
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`LLC, IPR2013-00581, Paper 15 at 12 (PTAB Dec. 30, 2013) (citing KSR Int’l Co.
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`v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); accord ActiveVideo Networks, 694
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`F.3d at 1327–28. The Board may “deny some or all grounds for unpatentability for
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`some or all of the challenged claims.” 37 C.F.R. § 42.108(b); see also 35 U.S.C.
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`§ 314(a).
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`Thus, it is a petitioner’s duty to provide sufficient grounds for institution.
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`Here, Petitioner has failed to live up to its duty. Bosch respectfully submits that
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`institution should be denied as to all grounds.
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`U.S. Patent No. 7,484,264
`IV. BRIEF OVERVIEW OF U.S. PATENT NO. 7,484,264
`U.S. Patent Number 7,484,264 (“the ’264 patent”), entitled “Automobile
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`Windshield Wiper Blade,” issued on February 3, 2009. It resulted from the
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`prosecution of an application filed on June 8, 2007, and is a divisional of U.S.
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`Patent No. 7,228,588, filed on April 11, 2002, and issued on June 12, 2007, which
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`claims priority to a German application filed on April 26, 2001.
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` The ’264 patent relates to a beam-type wiper blade that includes an
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`elongated belt-shaped, flexible resilient support element, an elastic wiper strip, and
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`a wind deflection strip (or spoiler) of a particular structure. Ex. 1001, at, e.g.,
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`Abstract; 4:9–5:34. Specifically, the wind deflection strip has two sides that
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`diverge from a common base point, a surface facing the main flow direction of the
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`driving wind (“an incident surface”) located at the exterior of one side, and at least
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`one “support means” placed between the two sides at a distance from their
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`common base point, which functions to stabilize the sides. Id. at, e.g., 2:16–19,
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`2:56–62, 5:6–12. This feature “provides a certain degree of stiffening even when
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`using a relatively soft material for the manufacture of the wind deflection strip,
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`which provides the necessary form stability of the wind deflection strip even at []
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`high wind loads.” Id. at 2:19–23, Fig. 2. The cross-sectional profile of the wind
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`deflection strip remains the same along its entire length and can be manufactured
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`using an extrusion process, which provides cost savings. Id. at 2:13–15.
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`The ’264 patent discloses different embodiments, for example, the spring
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`support element may consist of a single rail or be made of two rails, the sides of
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`the spoiler may have free ends provided with claw-like extensions that grip the
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`support element at least in sections, and the spoiler can be made of one material or
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`as a binary component, with the claw-like extensions being made of a harder
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`material than the rest of the spoiler. Id. at 2:29–63. In addition to counteracting
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`the wind lift, reducing the wiper blade weight, and the material and manufacturing
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`costs, the wind deflection strip structures in the ’264 patent also provide a spoiler
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`with improved stability and function at high speeds and under great oncoming
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`wind loads, and add the necessary stiffness to the spoilers made of softer materials,
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`without compromising the spoiler’s attachment to the wiper blade or adversely
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`affecting the sensitive force distribution of the spring support element. Id. at 2:4–
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`23,2:41–51, 2:66–3:47, 5:27–34.
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`V. UNDER THE PROPER CLAIM CONSTRUCTION, PETITIONER
`FAILS TO CARRY ITS BURDEN OF PROOF, AND INSTITUTION
`SHOULD BE DENIED ON ALL GROUNDS
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`Petitioner offers no actual claim constructions. And, Petitioner’s general
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`statements regarding claim construction arguments from a district court litigation
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`are misleading and fail to provide any guidance as to the proper construction of the
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`claim limitations.
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`Bosch proposes the following claim construction for the “support means …”
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`limitation found in each of the challenged claims. Because Petitioner does not use
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`this construction in its arguments and expert testimony, and because it is present in
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`all of the challenged claims, the Board should deny the institution request on all
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`grounds. See, e.g., Pride Solutions, IPR2013-00627, Paper 14 at 9–11.2
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`Bosch respectfully submits that “support means …” is a means-plus-function
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`limitation governed by 35 U.S.C. § 112 ¶ 6, where the function is “to stabilize the
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`sides of the wind deflection strip,” and the corresponding structure is “a wall
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`connected to both sides of the wind deflection strip” or “the channel wall facing
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`the upper belt surface of the support element.” See Ex. 1001, 2:16–40, 2:66–3:16,
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`2 Bosch submits that a person of ordinary skill in the art has either an
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`undergraduate degree in mechanical engineering or a similar discipline, or several
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`years of experience in the field of wiper blade manufacture and design.
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`5:43–56, 6:14–33, 6:67–7:7, 7:67–8:7, Figs. 2, 3; see also element 58 in Fig. 2
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`below.3
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`Use of the word “means” creates a rebuttable presumption that the limitation
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`should be interpreted pursuant to 35 U.S.C. § 112, ¶ 6. See, e.g., Williamson v.
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`Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015); Kemco Sales, Inc. v.
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`Control Papers Co., Inc., 208 F.3d 1352, 1361 (Fed. Cir. 2000) (“The term
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`‘means’ in this limitation creates a presumption that a section 112, paragraph 6
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`3 The broadest reasonable interpretation consistent with the specification of a
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`means-plus-function limitation ‘is that statutorily mandated in paragraph 6 [of 35
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`U.S.C. § 112].’” Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
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`IPR2014-01708, Paper 17 at 8 (PTAB Oct. 30, 2014) (alteration in original)
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`(quoting In re Donaldson Co., 16 F.3d 1189, 1194–95 (Fed. Cir. 1994).
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`interpretation is called for ….”); Apple, IPR2015-00456, Paper 9 at 6; PanelClaw,
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`IPR2014-00386, Paper 7 at 9.
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`Petitioner does not attempt to rebut this presumption or explain why
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`“support means” falls outside the scope of 35 U.S.C. § 112 ¶ 6. Nor does
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`Petitioner offer any actual construction. Instead, Petitioner states that it “does not
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`agree that Patent Owner’s construction [of the term in a district court litigation]
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`represents the broadest reasonable construction of this term in the abstract” and
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`that “Patent Owner should not be heard to assert a narrower construction than was
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`set forth” in that litigation. Petition at 9–10. This non-construction is ambiguous
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`and in violation of 37 C.F.R. § 42.104(b)(3), which requires that the petition must
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`“identify the specific portions of the specification that describe the structure,
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`material, or acts corresponding to each claimed function” for means-plus-function
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`terms. Apple, IPR2015-00456, Paper 9 at 6 (denying institution where “Petitioner
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`does not rebut the presumption that these limitations [containing “means”] are
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`governed by § 112, ¶ 6… [and] Petitioner fail[ed] to ‘identify the specific portions
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`of the specification that describe the structure, material, or acts corresponding to
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`each claimed function.” (quoting 37 C.F.R. § 42.104(b)(3)); Apple Inc. v.
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`ContentGuard Holdings, Inc., IPR2015-00353, Paper 9 at 12 (PTAB June 25,
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`2015) (failure to identify corresponding structure of a means-plus-function
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`limitation deemed “fatal”); PanelClaw, IPR2014-00386, Paper 7 at 9–10
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`(“Petitioner does not provide any rebuttal to [the] presumption …. By rule, [37
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`C.F.R. § 42.104(b)(3)] Petitioner was required to identify the corresponding
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`structure …. Petitioner failed to do this, and the Petition as to the claims at issue
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`[with the “means” limitation”] is denied for this reason alone.”); SAS Inst., Inc. v.
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`ComplementSoft, LLC, IPR2013-00226, Paper 9 at 10–11 (PTAB Aug. 12, 2013)
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`(denying institution because Petitioner did not rebut presumption of a claim
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`containing “means” and failed to satisfy the requirements of § 42.104(b)(3)).
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`Accordingly, because Petitioner does not rebut the presumption and fails to
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`identify the required structure and function, the Petition should be denied for all
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`grounds on this basis alone. See, e.g., Apple, IPR2015-00456, Paper 9 at 5–9;
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`PanelClaw, IPR2014-00386, Paper 7 at 9–10; SAS Inst., IPR2013-00226, Paper 9
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`at 10–11.
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`Moreover, Petitioner has made no invalidity argument based on the proper
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`construction of “support means” presented here. Accordingly, institution should
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`be denied for all grounds for this reason as well. Pride Solutions, IPR2013-00627,
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`Paper 14 at 11 (“Petitioner has not presented evidence, or argument, that the
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`grounds alleged are shown in any of the prior art cited when ‘retention means’ is
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`properly construed as a means-plus-function term.”).
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`VI. PETITIONER IMPROPERLY INCORPORATES BY REFERENCE
`THE KRUGER DECLARATION
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`Bosch respectfully submits that the Kruger Declaration cannot be relied
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`upon to support the Petition because it amounts to an improper incorporation by
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`reference, which has the effect of circumventing the 60-page limit on petitions.
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`A petition requesting inter partes review is limited to 60 pages, and
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`incorporation by reference is not permitted. 37 C.F.R. §§ 42.24(a)(1)(i),
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`42.6(a)(3). The Board has consistently determined that declarations are not to be
`
`used as a tool for circumventing page limits, and the tactic of incorporating lengthy
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`materials to circumvent the page limit has been determined to be improper. See,
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`e.g., Cisco, IPR2014-00454, Paper 12 at 10 (disregarding arguments made in
`
`declaration that were improperly incorporated by reference; “Incorporation ‘by
`
`reference amounts to a self-help increase in the length of the [] brief[,]’ and ‘is a
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`pointless imposition on the court’s time. A brief must make all arguments
`
`accessible to the judges, rather than ask them to play archeologist with the
`
`record.’” (alteration in original; citation omitted)); Unified Patents Inc. v.
`
`OliviStar, LLC, IPR2015-01216, Paper 15 at 12–13 n.7 (PTAB Nov. 20, 2015)
`
`(citing to a declaration to support conclusory statements in petition is improper
`
`incorporation by reference); Blackberry Corp. v. Mobilemedia Ideas LLC,
`
`IPR2013-00016, Paper 32 at 21 (PTAB Feb. 25, 2014); PCT Int’l, Inc. v.
`
`Amphenol Corp., IPR2013-00229, Paper 17 at 2 (PTAB Dec. 24, 2013); Fidelity
`
`
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`12
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
`National Info. Serv’s, Inc. v. Datatreasury Corp., IPR2014-00489, Paper 9 at 9–11
`
`(PTAB Aug. 13, 2014).
`
`Throughout the Petition, Petitioner broadly states that “[a]ppendices to the
`
`Kruger Declaration illustrate the same” as shown in the claim charts, and then
`
`generally cites to the entirety of one or more appendices. See Petition at 22, 25,
`
`43, 44, and 51. The appendices alone comprise 31 pages and over 2.5 minutes of
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`video. However, Petitioner does not connect these generic citations to any
`
`particular claim limitation or unpatentability argument.
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`This tactic amounts to an improper incorporation by reference and shifts the
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`burden to the Board to make arguments for Petitioner. Petitioner’s extensive
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`reliance on the Kruger Declaration lacks any specificity and fails to support any
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`particular aspect of any argument of unpatentability. Accordingly, the Kruger
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`Declaration and its Appendices should be excluded from consideration, and Bosch
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`respectfully submits that Petitioner has failed to carry its burden with respect to
`
`any challenged claim for each of Grounds 1–13.
`
`VII. PETITIONER PUTS FORTH NO EVIDENCE THAT THE CITED
`REFERENCES IN GROUNDS 1–3, 6, 7, 10, and 11 DISCLOSE “THE
`PROFILE OF THE CROSS SECTION OF THE WIND DEFLECTION
`STRIP IS THE SAME ALONG ITS ENTIRE LENGTH” LIMITATION
`FOUND IN ALL CHALLENGED CLAIMS
`
`Claim 1 requires that “the profile of the cross section of the wind deflection
`
`strip is the same along its entire length.” Claims 2 and 3 incorporate this limitation
`
`
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`13
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
`by reference through their dependency on claim 1. With respect to this limitation,
`
`for Grounds 1–3, Petitioner makes only unsupported statements of its presence in
`
`the cited prior art, and thus fails to meet Petitioner’s burden of specifying elements
`
`that demonstrate unpatentability with sufficient explanation and relevant citations.
`
`37 C.F.R. § 42.104(b)(4) (petition must “specify where each element of the claim
`
`is found in the prior art patents or printed publications relied upon.”).
`
`In Grounds 1–3, 6, 7, 10, and 11, Petitioner relies exclusively on Prohaska
`
`for the limitation “the profile of the cross section of the wind deflection strip is the
`
`same along its entire length.” But, Petitioner’s claim charts provide only a
`
`conclusory statement that echoes the ’264 patent’s claim language; and Petitioner
`
`cites only to Prohaska at 1:97–100 and 2:56–70. See Petition at 24 and 27.
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`Neither citation mentions or suggests a cross-sectional profile. Both excerpts
`
`describe only the length of the spoiler itself, not the cross-section.
`
`Petitioner, thus, fails to show that the relied upon reference discloses this
`
`limitation. Accordingly, Bosch respectfully submits that Grounds 1–3, 6, 7, 10,
`
`and 11 should not be instituted for the reasons set forth in this section.
`
`VIII. THE OBVIOUSNESS COMBINATIONS IN GROUNDS 2–13 ARE
`DRIVEN BY IMPERMISSIBLE HINDSIGHT, IGNORES
`TEACHINGS AWAY, AND REST UPON CONCLUSORY
`ASSERTIONS
`
`Petitioner improperly uses the challenged claims as a roadmap to piece
`
`together disparate references in an attempt to arrive at the claimed invention. See
`
`
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`14
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
`In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the
`
`claimed invention as an instruction manual or ‘template’ to piece together the
`
`teachings of the prior art so that the claimed invention is rendered obvious”); In re
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`NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (“The Board improperly relied on
`
`hindsight reasoning to piece together elements to arrive at the claimed invention.
`
`‘Care must be taken to avoid hindsight reconstruction by using the “patent in suit
`
`as a guide through a maze of prior art references, combining the right references in
`
`the right way so as to achieve the result of the claims in suit.”’”).
`
`In all obviousness grounds (Grounds 2–13), Petitioner relies on Prohaska in
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`combination with other references. Prohaska is directed to a conventional
`
`bracketed wiper blade “comprising a supporting structure including at least one
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`yoke element for holding a wiper element.” Ex. 1003 at 1:43–52. Petitioner
`
`argues that it would have been obvious for a person of ordinary skill in the art to
`
`combine the spoiler of Prohaska’s conventional bracketed wiper blade with the
`
`components of a beam wiper blade (of the type disclosed and claimed in ’264
`
`patent, see Ex. 1001 at 1:12–42). Petitioner, however, does not provide any
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`motivation to do so, or an explanation of how the resulting structure would be able
`
`to function as a wiper blade. The motivation to combine cannot come from the
`
`’264 patent, but should come from the prior art references or some other source.
`
`
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`15
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
`Prohaska provides no such motivation, and, in fact, teaches away from the
`
`invention of the ’264 patent.
`
`Prohaska discloses a molded-on or clipped-on spoiler, and teaches that
`
`making a spoiler “moulded” together with the flexible stiffener used to stiffen a
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`wiper element in a conventional bracketed wiper blade is “a simple and
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`economical” way to produce a wiper blade with a spoiler, and that such molded
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`stiffener-spoiler will “stiffen the wiper blade flexibly.” Ex. 1003 at 1:62–67.
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`In support of its obviousness combinations in Grounds 2, 3, 6, 7, 10, and
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`11,4 Petitioner argues that “a person of ordinary skill in the art … would have
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`considered the spoiler embodied in Figure 3 of Prohaska as a logical starting
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`point.” Petition at 36–37. And, throughout all obviousness grounds (Grounds 2–
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`13), Petitioner relies on Prohaska Figure 3 for disclosing a hollow spoiler.
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`However, Petitioner omits that Prohaska itself disparages the embodiment of
`
`Figure 3, noting that the “hollow space between the surfaces … possibly migh[t]
`
`be disadvantageous.” Ex. 1003 at 3:4–6 (emphasis added). Recognizing the
`
`problems with this hollow spoiler design, Prohaska proposes its own solution, as
`
`
`4 Ground 1 challenges claims 1 and 2 of the ’264 patent based on anticipation.
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`Petition at 3, 22. It is unclear why Petitioner includes Ground 1 in its obviousness
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`discussion.
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`16
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
`shown in Figure 6. Id. at 3:6–10 (“This disadvantage is avoided in a wiper element
`
`according to Figure 6 …”).
`
`
`
`Based on this disclosure, a person of ordinary skill in the art would not have
`
`attempted to use the stiff spoiler of Prohaska on a beam blade because it would
`
`stiffen the beam and adversely affect the sensitive force distribution of a beam
`
`blade’s spring support element. Indeed, a person of ordinary skill in the art would
`
`have avoided using a spoiler with a hollow space between its sides, as Prohaska
`
`taught away from it.
`
`Petitioner’s proposed combinations to arrive at the invention of the ’264
`
`patent by combining Prohaska and other references make it evident that Petitioner
`
`used impermissible hindsight gleaned from the ’264 patent to find similar elements
`
`in the prior art and mash them together without any reason for doing so, and
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`without any expectation of success.
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`17
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
`In addition, Petitioner’s conclusory assertions are insufficient to support a
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`claim of obviousness. K/S HIMPP, 751 F.3d at 1365; ActiveVideo, 694 F.3d at
`
`1327–28; SAS Inst., IPR2013-00581, Paper 17 at 3–4. In particular, the Petition
`
`repeatedly relies on the Davis Declaration to support certain propositions, when, in
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`fact, the cited paragraphs do not provide any actual support. And without such
`
`support, the assertions in the Petition amount to nothing more than attorney
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`argument. For example, Petitioner alleges, citing to th
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