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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 67
`Entered: March 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`
`Case IPR2016-00040
`Patent 7,484,264 B2
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`
`I.
`
`INTRODUCTION
`
`A. OVERVIEW
`Costco Wholesale Corp. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1, 2, and 3 of U.S. Patent
`No. 7,484,264 B2 (Ex. 1001, “the ’264 patent”). Pet. 1. Robert Bosch LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 15, “Prelim. Resp.”)
`to the Petition. We instituted inter partes review of claims 1, 2, and 3.
`We discuss preliminary matters, such as motions, in Section II below.
`We held an oral hearing on January 18, 2017. See Paper 65 (“Tr.”);
`see also Ex. 1206 (Petitioner’s transcript errata).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1, 2, and 3 the ’264 patent are
`unpatentable.
`
`B.
`
`RELATED PROCEEDINGS
`The parties indicate that the ’264 patent is at issue in: Robert Bosch
`LLC v. Alberee Products Inc. et al., No. 12-574-LPS (consolidated with No.
`14-142-LPS) (D. Del.) (“the related litigation”). Pet. 1; Paper 4, 1.
`
`
`
`2
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`
`Abbreviation
`
`The parties are currently involved in the following inter partes
`proceedings (“these proceedings”):
`Case #
`U.S.
`Patent #
`6,973,698 “the ’698 patent”
`IPR2016-00034
`6,944,905 “the ’905 patent”
`IPR2016-00036
`6,292,974 “the ’974 patent”
`IPR2016-00038
`7,228,588 “the ’588 patent”
`IPR2016-00039
`IPR2016-000401 7,484,264 “the ’264 patent”
`IPR2016-00041
`8,099,823 “the ’823 patent”
`Two of the patents at issue in these proceedings, the ’905 patent and
`the ’974 patent, were at issue in prior litigation between Patent Owner and
`Pylon Manufacturing Corporation. Paper 36, 2. Robert Bosch LLC v. Pylon
`Manufacturing Corporation (D. Del., Case No. 08-542 (SLR)) (“the Pylon
`litigation”). See Paper 33, 1.
`In these proceedings, sometimes a party submitted an identical paper
`or exhibit in all of the proceedings even though that paper or exhibit may not
`be applicable, or applies in a different manner, to a particular proceeding. At
`other times, we are able to apply the analysis of one proceeding to another.
`
`
`
`
`1 The ’264 patent is a division of the application that became the ’588 patent
`(IPR2016-00039). Ex. 1001, [62]. The remaining patents are not related.
`
`3
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`C.
`
`References(s)
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts that the challenged claims are unpatentable under
`the following grounds:
`Claims
`§
`Challenged
`103(a) Prohaska2 and Kotlarski ’3833
`1, 2
`103(a) Prohaska and Merkel4
`1, 2
`103(a) Prohaska, Kotlarski ’383, and Kotlarski ’0905
`3
`103(a) Prohaska, Merkel, and Kotlarski ’090
`3
`103(a) Prohaska, Kotlarski ’383, and Mathues6
`3
`103(a) Prohaska, Merkel, and Mathues
`3
`In the Patentability section below, we address these grounds in three
`groupings:
`1.
`2.
`3.
`
`
`Prohaska and either Kotlarski ’383 or Merkel
`Prohaska, either Kotlarski ’383 or Merkel, and Kotlarski ’090
`Prohaska, either Kotlarski ’383 or Merkel, and Mathues
`
`
`2 U.K. Patent Application No. GB 2 106 775 A, published Apr. 20, 1983 (Ex.
`1003).
`3 PCT WO 99/02382, published Jan. 21, 1999 (Ex. 1006). The certified
`English translation begins at page 27.
`4 PCT WO 99/12784, published March 18, 1999 (Ex. 1016). The certified
`English translation begins at page 20. We reference the U.S. counterpart
`filed as Ex. 1017 (U.S. Pat. No. 6,295,690 B1). References to “Merkel,”
`mean the prior art, while references to “Mr. Merkel” pertain to that person.
`5 PCT WO 00/34090, published June 15, 2000 (Ex. 1008). We reference the
`U.S. counterpart (Pat. No. 6,523,218 (Ex. 1009)). See Pet. 5, n. 1.
`6 U.S. Patent No. 3,121,133, issued Feb. 11, 1964 (Ex. 1013).
`
`4
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`
`A.
`
`II. PRELIMINARY MATTERS
`PETITIONER’S MOTION TO STRIKE AND MOTION TO EXCLUDE
`1. Motion to Strike
`Petitioner’s Motion to Strike and associated papers7 do not differ from
`the Motion to Strike in IPR2016-00038 in any meaningful way. We adopt
`that analysis here, and accordingly, that Motion is denied.
`2. Motion to Exclude
`Petitioner’s Motion to Exclude and associated papers8 do not differ
`from the Motion to Exclude in IPR2016-00039 in any meaningful way. We
`adopt that analysis here, and accordingly, that Motion is granted-in-part and
`denied-in-part as outlined below.
`a) Mr. Merkel’s former testimony
`Just as in IPR2016-00039, the patent at issue in the proceeding at
`hand was not at issue in the Pylon litigation. Consequently, for the reasons
`given in IPR2016-00039, Petitioner has demonstrated that Mr. Merkel’s
`testimony from the Pylon litigation is inadmissible hearsay, and with respect
`to this evidence, Petitioner’s Motion is granted.
`b) Mr. Kashnowski’s testimony
`Our analysis in IPR2016-00038 is applicable here. Consequently,
`
`Petitioner has not demonstrated effectively that the testimony at issue is
`
`
`7 See Paper 31 (authorizing the Motion), Paper 33 (Petitioner’s Motion),
`Paper 36 (Patent Owner’s opposition).
`8 See Paper 29 (Petitioner’s Objections); Paper 50 (Petitioner’s Motion);
`Paper 58 (Patent Owner’s Opposition); Paper 63 (Petitioner’s Reply to
`Patent Owner’s Opposition).
`
`5
`
`

`

`B.
`
`IPR2016-00040
`Patent 7,484,264 B2
`
`inadmissible hearsay, and with respect to this evidence, the Motion to
`Exclude is denied.
`c) Related Portions of Patent Owner’s Response
`We do not exclude any portion of Patent Owner’s Response, but will
`not consider any citations to the excluded portion of Exhibit 2005.
`
`PATENT OWNER’S MOTION TO EXCLUDE
`The Motion to Exclude and associated papers9 have no meaningful
`distinction from the Motion to Exclude in IPR2016-00038, and consequently
`Patent Owner’s Motion to Exclude portions of Mr. Peck’s Declaration (Ex.
`1100) is denied.
`
`C. MOTIONS FOR OBSERVATION
`Patent Owner submitted a Motion for Observation on cross-
`examination of Mr. Peck, and Petitioner submitted a response. Papers 51,
`57. We considered these observations in making our analysis below.
`Generally, we are persuaded by each of Petitioner’s responses.
`
`
`
`9 See Papers 37, 49, 55, 62.
`
`6
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`
`A.
`
`III. THE CLAIMED SUBJECT MATTER
`ILLUSTRATIVE CLAIM
`Of the challenged claims, 1 is independent and follows:
`1. A wiper blade (10) for an automobile windshield (14), with an
`elongated belt-shaped, flexible resilient support element (12)
`having a longitudinal axis, on the lower belt surface (22) of
`which that faces the windshield is located an elastic rubber wiper
`strip 24 sitting against the windshield that extends parallel to the
`longitudinal axis, and on the upper belt surface (16) of which a
`wind deflection strip (42 or 112) is located that has an incident
`surface (54 or 140) facing the main flow direction of a driving
`wind (arrow 52), said deflection strip extending in the
`longitudinal direction of the support element, characterized in
`that the wind deflection strip has two sides (48, 50 or 136, 138)
`that diverge from a common base point (46 or 134) as seen in a
`cross section, that the incident surface (54 or 140) is located at
`the exterior of one side (50 or 138) and that the profile of the
`cross section of the wind deflection strip is the same along its
`entire length, wherein the support element has outer edges, and
`wherein the sides of the wind deflection strip have respective free
`ends having thereon respective claw-like extensions that fittingly
`grip around the outer edges of the support element at least in
`sections, so that the wind deflection strip can be snapped onto the
`outer edges or slid onto the outer edges in a longitudinal
`direction, wherein between the two sides (48, 50 or 136, 138) of
`the wind deflection strip (42 or 112) there is at least one support
`means (58 or 144) located at a distance from their common base
`point (46 or 134) that stabilizes the sides, wherein the support
`means is made up of a wall (58 or 144) connected to both sides
`(48, 50 or 136, 138) that extends in the longitudinal direction of
`the wind deflection strip (42 or 112), and wherein the wall (58 or
`144) extends along the entire length of the wind deflection strip
`(42 or 112).
`Claims 2 and 3 depend from independent claim 1.
`
`
`7
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`B.
`
`CLAIM INTERPRETATION
`In an inter partes review, we interpret the claims of an unexpired
`patent using the broadest reasonable construction. See 37 C.F.R.
`§ 42.100(b).
`In our Institution Decision, we stated
`We determine that the “at least one support means” of
`independent claim 1 is not a means-plus-function limitation
`governed by 35 U.S.C. § 112 ¶ 6. We emphasize that this claim
`construction is based on the record to this point, and is
`preliminary.
`Dec. 10.
`Neither party challenges this determination or otherwise addresses
`construction of these terms. We adopt our analysis from the Institution
`Decision. See Dec. 7–9.
`We do not expressly construe any other claim terms. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those
`terms which are in controversy need to be construed, and only to the extent
`necessary to resolve the controversy).
`
`
`IV. PATENTABILITY
`
`A.
`
`SCOPE OF REPLY
`Patent Owner contends that portions of Petitioner’s Reply are
`improper, and consequently, the Board should not consider those portions.
`Paper 54. Petitioner disagrees. Paper 56. The arguments here on this issue
`do not differ in any meaningful way from those in IPR2016-00039 and we
`adopt that analysis here. Consequently, Petitioner’s arguments are proper.
`
`8
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`B.
`
`C.
`
`CREDIBILITY OF DR. DAVIS
`There is no meaningful distinction between this argument here and
`that made in IPR2016-00038. See PO Resp. 19–23; Pet. Reply. 23–24. As
`in IPR2016-00038, the factors discussed detract slightly from Dr. Davis’s
`testimony, but not so much to warrant that we give his testimony overall
`little or no weight. Our analysis below reflects this determination.
`
`LEVEL OF SKILL
`We do not discern a meaningful difference between the arguments on
`this issue here and that in IPR2016-00038, and we incorporate that analysis
`here. See PO Resp. 1–2; Pet. Reply 2–4. Here, as in IPR2016-00038, the
`prior art of record is reflective of the level of skill in the art. We address
`what was known in the art in our analysis below.
`
`D. CHRONOLOGY
`
`The following generally chronological discussion pertains to all four
`Graham factors, and is applicable to all of the challenged claims and
`grounds of unpatentability.10
`Prior to the ’264 Patent
`1.
`Conventional wipers were known prior to the critical date of the ’264
`patent. See PO Resp. 12; Ex. 1018 ¶¶ 19–20; Ex. 2003 ¶ 21; Ex. 2007 ¶ 2;
`see also PO Resp. 4 (citing Exs. 2008 and 2009 as examples of known
`
`
`10 Much of what Patent Owner labels as “secondary considerations” (see PO
`Resp. 11–19) pertains to all four Graham factors and is addressed in this
`section.
`
`9
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`conventional wipers). Conventional wipers, also known as yoke or yoke-
`style wipers, include a series of flexible rails that distribute force along the
`wiper blade. Ex. 1018 ¶ 19; PO Resp. 4; Ex. 2003 ¶ 21. Barth is an
`example of a conventional, yoke wiper, as illustrated in Figure 1 below:
`
`
`Figure 1 depicts a conventional or yoke-style wiper structure. See Ex. 1018
`¶ 19 (including this Figure from Barth).
`Beam wipers were known prior to the critical date of the ’264 patent.
`See Pet. 15–17 (discussing Kotlarski ’383 (Ex. 1007) and Merkel (Ex.
`1016)); Pet. Reply 3; PO Resp. 13 (“beam blades were described in paper
`patents long before the invention at issue here”). Beam wipers, also known
`as flat wipers, use metal strips adjacent the wiper blade to distribute the load
`along the length of the wiper blade rather than the yokes. Ex. 1018 ¶ 22.
`Figure 1 of the ’264 patent is reproduced below:
`
`10
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`
`
`
`Figure 1 of the ’264 patent is a perspective view of a beam wiper blade with
`the wiper arm shown as a dot-dashed outline. Ex. 1001, 3:65–67; see also
`Ex. 1005, Fig. 1; Ex. 1004, Fig. 1.
`Patent Owner emphasizes that although beam wipers were known,
`there were no “commercially viable” beam wipers prior to 2002. PO Resp.
`13 (citing Ex. 2007 ¶ 3; 2003 ¶ 23).11 Even if the beam wipers that were
`known prior to 2002 were not commercially viable, that does not alter the
`fact that beam wipers were known prior to the ’264 patent.
`Use of a spoiler (wind deflection strip) to counter the lifting force that
`occurs at high vehicle speeds and ensure reliable contact pressure between
`the wiper strip and the windscreen was known for both conventional and
`beam wipers. Pet. 10–12, 15–17, 38; Ex. 1003 (conventional); Ex. 1006
`
`
`11 Patent Owner also cites to Exhibit 2005, but we do not consider that
`evidence here.
`
`11
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`(beam); Ex. 1013 (beam); see also Ex. 1001, 5–8 (incorporating the
`application that became the ’588 patent).
`Use of claw-like extensions to fittingly grip the outer edges of the
`support element was known. Pet. 12, 31, 34–35; Ex. 1003, 1:68–83, 2:61–
`70, 80–86, (describing that the spoiler includes downwardly directed
`elongations having claws, formed either as individual claws or along the
`entire length of the strip, that attach the spoiler to wiper strip by engaging
`the longitudinal grooves of the wiper strip), Figs. 1–3.12
`In sum, prior to the ’264 patent, conventional and beam wipers were
`known. Use of a spoiler to counter lift off in both conventional and beam
`wipers was known. See Pet. 10–18; Pet. Reply 3. Specifically, use of a
`hollow spoiler on a conventional wiper (e.g., Ex. 1003) and use of a solid
`spoiler on a beam wiper (e.g., Exs. 1006, 1013) were both known. Pet. 11–
`12, 15–18; Pet. Reply 3; see also Ex. 1001, 1:46–51 (acknowledging in the
`’264 patent a beam wiper with spoiler as prior art).
`Patent Owner’s Mischaracterizations
`2.
`Given what was known in the art, Patent Owner’s argument that
`conventional thinking at the time of the ’264 patent was to avoid additional
`components on a beam blade and that beam blades are highly sensitive to
`such modifications is directly contradicted by the evidence of record. PO
`Resp. 3–5, 9, 11, 14; Pet. Reply 5–6. We agree with Dr. Peck that the
`sensitivity of beam blades was a design factor that was understood prior to
`the ’264 patent. See Pet. Reply 7 (citing Ex. 1100 ¶ 9).
`
`
`12 Although some of this description relates to Figure 1, it is applicable to
`similar Figure 3. See Ex. 1003, 2:56–61.
`
`12
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`
`In association with the argument that the ’264 patent took an
`unconventional approach, Patent Owner characterizes the ’264 patent as
`meeting a long-felt but unresolved need, producing unexpected results, and
`being met with skepticism. PO Resp. 12, 15–16 (citing Ex. 2003 ¶¶ 22–25,
`58–60, 65, 73, 77, 79).13 This evidence applies to a flexible spoiler with
`diverging legs and not the claims at issue here. Further, the ’264 patent does
`not explicitly disclose or fairly imply that providing a beam wiper with a
`spoiler met a long-felt but unresolved need or produced unexpected results.
`To the contrary, as mentioned above, the ’264 patent itself acknowledges
`that the prior art included a wiper blade provided with a wind deflection
`strip. We agree with Petitioner that the proposed modification was not
`contrary to conventional thinking at the time. See, e.g., Pet. Reply 20 (citing
`Ex. 1100 ¶¶ 7–8).
`The ’264 Patent
`3.
`The ’264 patent discloses a wiper blade having a wind deflection strip
`that produces a force component directed toward the windshield to
`counteract the tendency of the wiper blade to lift off the windshield due to
`airflow at high vehicle speeds. Ex. 1001, 1:46–51.
`
`
`13 We note that paragraphs 65, 73, 77, and 79 do not relate to the patent at
`issue in this case.
`
`13
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`
`Wiper blade 10 includes elongated belt-shaped, flexible spring
`support element 12 and wind deflector strip 42. Id. at 4:9–10, 4:67–5:6;
`Figs. 1, 2. Wind deflector strip 42 is made of an elastic material such as
`plastic, and has an essentially triangular cross section formed by sides 48
`and 50 diverging from common base point 46 at one end and connected at
`the opposite ends by a support means such as wall 58. Id. at 5:6–34. Figure
`2 follows.
`
`
`Figure 2 is a cross sectional view of wiper blade 10 through line II-II shown
`in Figure 1. Id. at 4:1–2.
`
`
`
`
`14
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`E. OBVIOUSNESS OVER PROHASKA AND EITHER KOTLARSKI ’383 OR
`MERKEL
`Claim 2 follows:
`A wiper blade according to claim 1, characterized in that the
`support element (12) includes two flexible rails (36) each of
`which sits in a longitudinal notch (34) associated with it,
`respectively, said longitudinal notches being open toward the
`opposite lateral sides of the wiper strip (24), that the outer strip
`edges (38) of each of said flexible rails extend out of these
`notches, and that the support means (58 or 144) are positioned
`at a distance from the support element (12).
`Uncontested aspects
`1.
`Petitioner contends that claims 1 and 2 would have been obvious over
`Prohaska and either Kotlarski ’383 or Merkel. Pet. 10–12, 15–17, 29–36,
`46–51.14 Specifically, Petitioner contends that Kotlarski ’383 and Merkel
`each disclose a wiper as claimed, except the wind deflection strip is not
`hollow. Id. at 29–32, 35. Petitioner contends that Prohaska discloses a
`hollow wind deflection strip as claimed, except that profile of the cross
`section is not the same along the entire length. Id. at 10–12, 30–32, 34–36,
`38–43. Petitioner contends that it would have been obvious to substitute
`Prohaska’s hollow wind deflection strip (spoiler) for either Kotlarski ’383’s
`or Merkel’s deflection strip, and to form Prohaska’s strip with a cross section
`that is the same along the entire length. Id.
`Petitioner’s contentions regarding the claimed limitations are
`supported by a preponderance of the evidence and we adopt them here. As
`discussed above, each of the claimed elements was known. Patent Owner
`
`
`14 See also Exhibit 1019, Declaration of Dr. Kruger, and associated
`illustrations of claims 1–3 at Exhibits 1026–1028.
`
`15
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`does not dispute that the features of the challenged claims are found in the
`prior art. See Paper 17 ¶ 3 (instructing Patent Owner that “any arguments
`for patentability not raised in the [Patent Owner Response] will be deemed
`waived”); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,766 (stating
`that the Patent Owner Response “should identify all the involved claims that
`are believed to be patentable and state the basis for that belief”).
`Contested Aspects
`2.
`Patent Owner contests the obviousness of the combination by arguing
`that a person of ordinary skill would not have made the proposed
`modifications, and by submitting secondary indicia of nonobviousness. PO
`Resp. 2–10.
`Petitioner contends that the proposed modification would have
`predictably yielded a lighter weight blade that provides the benefit of a less
`powerful drive system. Pet. 38–39 (citing Ex. 1005, col. 2 (evidencing that
`reduced weight reduces wiper drivetrain stress) (citing Ex. 1021, col. 3–4
`(evidencing that a hollow spoiler reduces manufacturing materials)).
`Petitioner contends that modifying Prohaska’s wind deflector strip to have a
`constant cross section along its length is faster and cheaper to manufacture
`than a cross section that varies along the length and improves stability. Id. at
`40 (citing Ex. 1018 ¶ 66 (explaining the benefits of manufacturing with a
`constant cross section); Ex. 1017, 2:47–49 (“Advantages from a
`manufacturing standpoint can be obtained if the wiper strip has a constant
`cross section substantially over its entire length.”)). Petitioner contends that
`such a combination would lead to predictable results. Id. at 39–40 (Ex.
`1018, Davis Decl. ¶ 55 (explaining that the proposed combination reduces
`material costs and system weight). Petitioner contends that a person of
`
`16
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`ordinary skill would have recognized that Prohaska’s claws provide a
`method of attachment and could have easily been adapted to clip to either
`Kotlarski ’383’s or Merkel’s spring rails. Id. at 41–43.
`a) Alleged Hindsight
`Patent Owner contends that Petitioner’s reasoning for adding
`Prohaska’s spoiler improperly invokes hindsight. PO Resp. 2–3. In
`particular, Patent Owner emphasizes: (1) fundamental differences between
`conventional and beam blades, (2) a person of ordinary skill in the art would
`not have had reason to modify Kotlarski ’383 or Merkel, and (3) the
`disadvantages mentioned by Prohaska of its hollow-shaped Figure 3
`conventional spoiler would have led a POSITA to avoid using it, particularly
`given the highly sensitive beam blade.15 Id. at 3. We analyze these
`contentions in turn.
`(1) Fundamental Differences
`According to Patent Owner, conventional and beam blades are so
`fundamentally different that a person of ordinary skill would not have
`combined conventional and beam blade teachings. PO Resp. 3–5 (citing Ex.
`2003 ¶¶ 21–25, 58–61, 65–67, 77–79). This statement is contradicted by the
`evidence of record, in that conventional and beam wipers have
`commonalities. For example, beam and conventional wipers can use the
`same wiper strip, and can be attached to an actuating arm.16
`
`
`15 Although there is considerable overlap between the argument and
`evidence here and in IPR2016-00039, there are enough distinctions so that
`we cannot simply rely on that analysis there.
`16 Regarding the wiper strip, see, e.g., Ex. 1003, Fig. 1 (conventional strip);
`Ex. 1006, Fig. 10 (beam strip). Regarding the arm see, e.g., Ex. 1006, 33
`
`17
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`
`Patent Owner contends that conventional blades have several
`disadvantages, and that beam blades solved these problems by among other
`things, eliminating the yoke. PO Resp. 4 (citing Ex. 2003 ¶¶ 21–23, 79). In
`support, Dr. Dubowski opines that because beam blades avoid the high
`superstructure of a conventional wiper, beam blades “were hoped to perform
`better in extreme weather conditions” such as ice and snow. Ex. 2003 ¶ 23.
`Dr. Dubowski opines that beam blades are greatly affected by small changes
`in beam shape and by attaching additional components. Ex. 2003 ¶ 58.
`According to Dr. Dubowski, this is caused by the different in pressure
`distribution in each wiper type, namely, that conventional wipers have a
`series of yokes to distribute pressure, while beam wipers distribute pressure
`through a spring-elastic support element that runs the entire length of the
`wiper strip. Id. Dr. Dubowski concludes that conventional thinking at the
`time of ’264 patent was to avoid additional components on a beam blade.17
`Id. (citing three patents submitted in these proceedings).18
`An assertion that conventional wipers were “hoped” to perform better
`in ice and snow falls short of establishing that beam wipers performed better
`in ice and snow. See Ex. 2003 ¶ 23. More importantly, Patent Owner has
`
`
`(referring to driven wiper arm 18 for a beam blade); Ex. 2008 (U.S. Pat. No.
`2,596,063 to Anderson), 3:6–8 (referring to conventional wiper arm 1), Fig.
`2.
`17 Paragraphs 65 and 73 do not relate to the ’264 patent, and this evidence
`adds nothing to Patent Owner’s assertion here.
`18 Appel ’551 (Ex. 1005 of IPR2016-00038); Appel ’770 (Ex. 1006 of
`IPR2016-00034); Swanepoel ’564 (Ex. 1010 of IPR2016-00034).
`
`18
`
`

`

`IPR2016-00040
`Patent 7,484,264 B2
`
`not explained cogently how the superior ice and snow performance of a
`beam wiper relates to the modification proposed by Petitioner.
`Although the three patents cited by Dr. Dubowski do not have
`additional components attached, Patent Owner does not identify, nor do we
`discern, any disclosure in these patents that is critical of increasing wiper
`profile or adding additional components. At most, these patents illustrate
`one approach and are silent regarding other approaches. Consequently, to
`the extent that Patent Owner’s argument suggests that these patents teach
`away from the proposed modification, such is not the case. Further, both
`Katlarski ’383 and Merkel are beam patents that include spoilers. This
`evidence directly contradicts Patent Owner’s contention that conventional
`thinking was to avoid such additions, yet, Dr. Dubowski’s opinion does not
`address that evidence. Patent Owner’s choice of addressing other
`approaches and not addressing the strongest evidence is unpersuasive.19
`In sum, we are not persuaded by Patent Owner’s contention that
`conventional thinking at the time of the ’264 patent was to avoid additional
`components on a beam blade. As detailed above, use of a spoiler (additional
`component) to counter lift off in both conventional and beam wipers was
`known.
`
`(2) Reason to Modify
`Patent Owner makes two contentions in support of the argument that a
`person of ordinary skill in the art would not have reason to modify either
`
`
`19 Patent Owner’s reference to the “failure” of the Trico wiper is similarly
`flawed. See PO Resp. 5. This assertion is addressed in greater detail in the
`secondary considerations analysis that follows.
`
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`Kotlarski ’383 or Merkel: one, because each discloses a complete beam
`solution, and two, because none of the prior art teaches the required changes
`to the wiper strip, support element, and spoiler attachment mechanism. PO
`Resp. 5–6; (citing Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 F. App’x
`755, 759 (Fed. Cir. 2015)). In support, Dr. Dubowski echoes the Response,
`stating that Kotlarski and Merkel disclose a complete beam blade solution,
`and that the modification would necessitate changes that the references do
`not teach. Ex. 2003 ¶¶ 74, 77.
`Patent Owner’s contention that a person of ordinary skill would not
`have made the proposed modification because Kotlarski ’383 and Merkel
`each disclose a complete solution is unpersuasive. This argument is
`overbroad and not tied to the facts of this case. As Petitioner observes, this
`argument would largely render § 103 superfluous. Pet. Reply. 10.
`Further, the non-precedential case cited by Patent Owner is
`distinguishable from the case at hand. See PO Resp. 5–6. In Plas-Pak the
`proposed modification would render either fundamentally alter a prior art
`reference’s principle of operation or would render it inoperable for its
`intended purpose. Plas-Pak, 600 F. App’x at 759–60. We agree with
`Petitioner’s characterization that the proposed modification here would not
`fundamentally alter the principle of operation of Katlarski ’383 or Merkel,
`nor render them inoperable for their intended purpose. Pet. Reply 12–13.
`Rather, the modified wipers would weigh less and require less material to
`manufacture, but would otherwise clean windshields and counter wind-lift in
`the same way as when unmodified. Id.
`Patent Owner’s contention that the references do not teach the needed
`changes is also unpersuasive. We agree with Petitioner that Patent Owner
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`has not gone so far as to assert that the proposed change is beyond the level
`of skill in the art. Pet. Reply 12. As Petitioner explained and Patent Owner
`did not contest, a person of ordinary skill includes a degree of ingenuity or
`problem solving skill. See Pet. 21–22; Pet. Reply 1–2; PO Resp. 1–2.
`Further, given what was known in the art as detailed above, the proposed
`modification was within the level of skill in the art to make the proposed
`modification.
`
`(3) Prohaska’s alleged disadvantages
`Patent Owner contends that Prohaska “taught away from using the
`Figure 3 hollow spoiler at all” because, as a person of ordinary skill would
`have understood, that spoiler “would lead to aerodynamically excited,
`degrading vibrations––which would disturb wiping ability and lead to
`premature failure.” PO Resp. 6–7 (citing Ex. 1003, 3:7–22). According to
`Patent Owner, Dr. Davis agrees. Id. at 7–9 (citing Ex. 2002, 113:15–
`115:14).
`We are not persuaded by Dr. Dubowski’s opinion that adding
`Prohaska’s spoiler shown in Figure 3 would “lead to aerodynamically
`excited, degrading vibrations.” See Ex. 2003 ¶¶ 66, 73. Dr. Dubowski does
`not explain the feature or features that cause vibrations. Nor does
`Dr. Dubowski cite any underlying facts or data. The only portion of
`Prohaska cited by Dr. Dubowski is the portion describing that Figure 3 has a
`possible disadvantage.
`We consider the cited portion of Prohaska in context. Prohaska
`discloses several embodiments of a windshield wiper blade assembly. Ex.
`1003 [57], 2:56–57. Figures 3 and 6 of Prohaska follow:
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`Figures 3 and 6 are wiper assemblies that each include a flexible strip having
`a back formed as a spoiler. Ex. 1003, 2:33–34, 49–40. Prohaska describes
`that the embodiment shown in Figure 3 includes a spoiler in the form of a
`hollow resilient strip that “possibly might be disadvantageous.” Id. at 3:2–6.
`Prohaska describes that this disadvantage is avoided in the embodiment
`shown in Figure 6 in that head 11 includes inclined surface 18 which closely
`rests against back 31 of flexible strip 30. Id. at 3:7–10.
`Prohaska does not expressly state that the embodiment shown in
`Figure 3 may induce aerodynamic vibrations, that it should not be used, or
`that it is ineffective. Rather, Prohaska states the embodiment “possibly
`might be disadvantageous.” This language indicates that the negative aspect
`may or may not be present. Further, the severity of that negative aspect is
`characterized as a disadvantage, not as a feature that would prohibit effective
`wiper operation. A person of ordinary skill would understand that the
`embodiment shown in Figure 3 may or may not have a disadvantage. In
`contradiction of Dr. Dubowski’s assertion, Prohaska indicates that the
`invention (meaning all embodiments including that of Figure 3) ensures
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`reliable contact between the wiper element and windscreen. Ex. 1003, 1:38–
`42, 97–100.
`As we stated in our Institution Decision, Prohaska is best
`characterized as disclosing that the disadvantage of Figure 3 is a tradeoff and
`not a teaching away. Dec. 15–16. We incorporate that analysis here.
`Further, we agree with Petitioner that Dr. Davis’s testimony is consistent
`with this interpretation rather than Patent Owner’s assertion. Pet. Reply 14
`(quoting Dr. Davis’s testimony from 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.”)).
`(4) Hindsight Summary
`Specifically, As detailed above, Petitioner reasons, with uncontest