Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 16
`Entered: April 25, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`
`Case IPR2016-00040
`Patent 7,484,264 B2
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 16
`Entered: April 25, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`
`Case IPR2016-00040
`Patent 7,484,264 B2
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Case 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.
`Upon consideration of the Petition and the Preliminary Response, for
`the reasons explained below, Petitioner has demonstrated a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims.
`We institute an inter partes review of claims 1, 2, and 3 of the ’264 patent.
`
`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.). Pet. 1; Paper 4, 1.
`The parties in the case at hand are currently involved in the following
`inter partes proceedings:
`Case #
`IPR2016-00034
`IPR2016-00035
`IPR2016-00036
`IPR2016-00038
`IPR2016-00039
`IPR2016-00040
`IPR2016-00041
`IPR2016-00042
`
`U.S. Patent #
`6,973,698
`6,836,926
`6,944,905
`6,292,974
`7,228,588
`7,484,264
`8,099,823
`8,544,136
`
`2
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`Case IPR2016-00040
`Patent 7,484,264 B2
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`The ’264 patent is a division of the application that became the patent
`that is now at issue in IPR2016-00039. Ex. 1001, 1 (62).
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts that the challenged claims are unpatentable based on
`the following grounds (Pet. 3):
`
`
`C.
`
`3
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`Patent 7,484,264 B2
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`§
`
`References(s)
`
`Claims
`Challenged
`1, 2 102(b) Prohaska1
`1, 2 103(a) Prohaska and Appel2
`1, 2 103(a) Prohaska and Hoyler3
`1, 2 103(a) Kotlarski ’3834 and Prohaska
`1, 2 103(a) Merkel5 and Prohaska
`3 103(a) Prohaska, Appel, and Kotlarski ’0906
`3 103(a) Prohaska, Hoyler, and Kotlarski ’090
`3 103(a) Kotlarski ’383, Prohaska, and Kotlarski ’090
`3 103(a) Merkel, Prohaska, and Kotlarski ’090
`3 103(a) Prohaska, Appel, and Mathues7
`3 103(a) Prohaska, Hoyler, and Mathues
`3 103(a) Kotlarski ’383, Prohaska, and Mathues
`3 103(a) Merkel, Prohaska, and Mathues
`
`
`1 U.K. Patent Application No. GB 2 106 775 A, published Apr. 20, 1983
`(Ex. 1003).
`2 U.S. Patent No. 3,192,551 issued July 6, 1965 (Ex. 1004).
`3 German Patent No. 1,028,896 published June 24, 1954 (Ex. 1005). The
`certified English translation begins at page 6.
`4 PCT WO 99/02382, published Jan. 21, 1999 (Ex. 1006). The certified
`English translation begins at page 26.
`5 PCT WO 99/12784, published Mar. 18, 1999 (Ex. 1016). Although the
`pages of this exhibit are not numbered, the certified English translation
`begins at page 19.
`6 PCT WO 00/34090, published June 15, 2000 (Ex. 1008).
`7 U.S. Patent No. 3,121,133, issued Feb. 11, 1964 (Ex. 1013).
`
`4
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`A.
`
`II. THE CLAIMED SUBJECT MATTER
`INTRODUCTION
`The ’264 patent relates to a wiper blade that cleans panes, in particular
`of motor vehicles.8 Ex. 1001, Abstract.
`As background, the ’264 patent describes that in wiper blades with a
`spring-action support element, the support element provides even
`distribution of wiper blade pressure onto the windshield. Id. at 1:12–16.
`The un-loaded support element is bent to a shape having a radius of
`curvature somewhat greater than the maximum curvature within the wipe
`field on the windshield. Id. at 1:16–26.
`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. Id. at 1:46–51.
`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.
`
`
`8 Throughout this opinion we use the terms “pane,” “window,”
`“windscreen,” and “windshield” interchangeably.
`
`5
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`B.
`
`
`Figure 2 is a cross sectional view of wiper blade 10 through line II-II shown
`in Figure 1. Id. at 4:1–2.
`
`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
`
`6
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`Case IPR2016-00040
`Patent 7,484,264 B2
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`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.
`
`CLAIM INTERPRETATION
`Petitioner contends that no term needs express construction and that
`the challenged claims should be construed under the broadest reasonable
`construction. Pet. 9. Petitioner acknowledges that in the related litigation,
`Patent Owner asserted that the support means of claim 1 should be construed
`under 35 U.S.C. § 112 ¶ 6. Id. at 9–10 (citing Ex. 1014).9 Petitioner asks
`that Patent Owner not be heard to assert a narrower construction than set
`forth in the Patent Owner’s claim construction in the related litigation. Id.
`Patent Owner contends that the “at least one support means” of
`independent claim 1 is a means-plus-function limitation governed by
`35 U.S.C. § 112 ¶ 6. Prelim. Resp. 8–11. Patent Owner contends the
`
`C.
`
`
`9 Exhibit 1014 is a joint claim construction chart from the related litigation.
`
`7
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`Patent 7,484,264 B2
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`Petition should be denied because Petitioner failed to address properly this
`imitation. Id. at 11.
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction. See 37 C.F.R. § 42.100(b).
`For the purposes of this decision, and on this record, we determine
`that the only claim term that requires express interpretation is the “at least
`one support means” of independent claim 1. 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).
`Independent claim 1 recites “at least one support means.”
`Claim 1 uses the term “means” to describe a limitation, and for that
`reason a presumption inheres that 35 U.S.C. § 112 ¶ 6 is invoked. Altiris,
`Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). However, this
`presumption is rebutted because, for the reasons that follow, claim 1 recites
`“structure sufficient to perform the claimed function in its entirety.” Id.
`Claim 1 is directed to a wiper blade that includes a wind deflection
`strip. Claim 1 recites that between and connected to the two sides of the
`wind deflection strip that diverge from a common base point, there is at least
`one support means that stabilizes those sides, and that support means is
`made up of a wall. The wall extends in the longitudinal direction of the
`wind deflection strip for the entire length of the wind deflection strip. The
`recitation of a wall that is between and connects the two sides that diverge
`from a common base point and extends in the longitudinal direction of the
`wind deflection strip for the entire length of that strip is sufficient structure
`to perform the function of stabilizing the sides.
`
`8
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`Case IPR2016-00040
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`In parity with this interpretation, the Specification describes that the at
`least one support means can take the form of a wall placed between the two
`sides of the wind deflection strip at a distance from their common base point
`and stabilizes the sides. Ex. 1001, 2:17–20, 25–29; 5:36–44; Fig. 2.
`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.
`
`
`III. PRELIMINARY ISSUE
`Patent Owner contends that we should not consider the Kruger
`Declaration, and because the Petition is insufficient without it, we should
`deny the Petition. Prelim. Resp. 2–3, 12–13. Specifically, Patent Owner
`contends that the Petition improperly incorporates the Kruger Declaration
`into the Petition, and circumvents the 60-page limit on Petitions by broadly
`asserting that a particular appendix (e.g., Appendix C) to the Kruger
`Declaration demonstrates that each element is disclosed in the prior art as set
`forth in the chart. Id. at 12–13.10
`As Patent Owner correctly observes, Petitioner repeatedly states that
`“[a]ppendices to the Kruger Declaration illustrate the same” as shown in the
`claim charts. See, e.g., Pet. 22 (citing Kruger Declaration Appendices at
`Exs. 1026 and 1024); id. at 25–26 (citing Kruger Decl. Appendices at Exs.
`1026, 1025).
`
`
`10 Referring to Petitioner’s citation of Ex. 1019 at Pet. 22, 25, 43, 44, and
`51; and citing 37 C.F.R. §§ 42.24(a)(1)(i), 42.6(a)(3)
`
`9
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`We consider Petitioner’s citation to the Kruger Declaration in context.
`Dr. Kruger testifies that to illustrate the proposed ground of unpatentability,
`he created five computer files that are three-dimensional representations of
`objects depicted in two-dimensional engineering drawings. Ex. 1019 ¶¶ 1–
`4, 10. Dr. Kruger adds that Appendix A (Ex. 1024) is an animation of the
`proposed combination of Appel and Prohaska, Appendix B (Ex. 1025) is an
`animation of the proposed combination of Hoyler and Prohaska, and
`Appendices C–E (Exs. 1026–1028) are illustrations of embodiments of
`claims 1, 2, and 3 of the ’264 patent, respectively. Id. ¶¶ 2, 5–9. In context,
`the Petition states that certain animations and illustrations support the
`asserted grounds of unpatentability. See, e.g., Pet. 22.
`Petitioner’s citation and explanation appropriately identify specific
`portions of the evidence that support the challenge (the entire exhibit), and
`explain the significance of that evidence including material facts (illustrating
`the ground of unpatentability), as contemplated by our Rules. See 37 C.F.R.
`§§ 42.22(a)(2), 42.104(b)(5). Petitioner’s citation to and explanation of the
`Kruger Declaration is not improper incorporation by reference because the
`Kruger Declaration is evidence not argument. 37 C.F.R. § 42.6(a)(3)
`(“Arguments must not be incorporated by reference from one document into
`another document.”) (emphasis added). In light of this, we conclude that
`Petitioner has not improperly incorporated to avoid page limits. See
`37 C.F.R. § 42.24(a)(1)(i). Consequently, Patent Owner has not persuaded
`us that the Petition should be denied on this basis.
`
`10
`
`
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`Case IPR2016-00040
`Patent 7,484,264 B2
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`IV. PATENTABILITY11
`A. KOTLARSKI ’383 AND PROHASKA – CLAIMS 1, 212
`1.
`Petitioner’s Contentions
`Petitioner contends that claims 1 and 2 would have been obvious over
`Kotlarski ’383 and Prohaska. Pet. 10–12, 15–16, 29–32, 46–47, 49–51.
`Specifically, Petitioner contends that Kotlarski ’383 discloses a wiper as
`claimed, except that Kotlarski ’383’s wind deflection strip is not hollow.
`Pet. 29–32, 35. Petitioner contends that it would have been obvious to
`substitute Prohaska’s hollow wind deflection strip (spoiler) for
`Kotlarski ’383’s. Id. According to Petitioner, such a modification: would
`have predictably yielded a lighter weight blade that would permit use of a
`less powerful drive system, was a substitution that would yield predictable
`results, and involved design choices that do not rise to the level of a
`patentable distinction. Id. at 38–43 (citing Ex. 1018 ¶¶ 55, 63–66).
`At this stage of the proceedings, these contentions are supported
`adequately.
`2.
`Patent Owner Arguments
`a) 35 U.S.C. § 112 ¶ 6
`As explained in our claim construction above, the “at least one
`support means” of claim 1 does not invoke 35 U.S.C. § 112 ¶ 6.
`Consequently, Patent Owner’s argument that Petitioner fails to analyze this
`
`
`11 We address the grounds of unpatentability in a different order than
`presented by Petitioner.
`12 Petitioner identifies this as ground 4. See Pet. 3.
`
`11
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`limitation as a means-plus-function limitation is unpersuasive. See Prelim.
`Resp. 2, 8–11.
`b) Other Arguments
`Patent Owner contends that Petitioner’s proposed combination to
`arrive at the claimed subject matter fails to provide “any reason for doing
`so,” and does not have “any expectation of success.” Prelim. Resp. 17. To
`the contrary, as detailed above, Petitioner provides several reasons for the
`proposed combination. Further, Patent Owner’s naked assertion that the
`combination has no expectation of success, without an accompanying
`explanation or evidence, it not persuasive.13
`Patent Owner contends that Petitioner’s assertions are insufficient to
`support a claim of obviousness. Prelim. Resp. 18. In particular, Patent
`Owner states that the Petitioner “repeatedly relies on the Davis Declaration
`to support certain propositions, when, in fact, the cited paragraphs do not
`provide any actual support.” Id. (referring to Pet. at 38 citing Ex. 1018
`¶ 55).
`
`As an initial matter, Patent Owner asserts that the Petition repeatedly
`relies on the Davis Declaration, yet Patent Owner only identifies a single
`example. Further, the example identified does not relate to this ground.14
`
`
`13 We note that what is a required is a reasonable expectation of success.
`See In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (absolute
`predictability that the substitution will be successful is not required, all that
`is required is a reasonable expectation of success).
`14 The example identified relates to what Petitioner identifies as ground 3.
`See Pet. 38 (citing Ex. 1018 ¶ 55).
`
`12
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`Patent Owner asserts that Petitioner cited a reference that is not prior
`art in order to mask Petitioner’s use of hindsight bias and conclusory
`arguments. Prelim. Resp. 18–19 (referring to Petitioner’s reference to
`“Eckhardt” at Pet. 37, 39). Patent Owner elaborates that Petitioner states
`Eckhart improves the weight of the wiper via a hollow portion, when in fact
`this is not the case because the hollow volume is filled with washer fluid. Id.
`For the reasons that follow, our determination that Petitioner has
`demonstrated a reasonable likelihood of prevailing in demonstrating that one
`of the challenged claims is unpatentable does not rely upon Petitioner’s
`assertion regarding Eckhardt.
`Exhibit 1021 is a German patent to Eckhardt Schmid, et al. We refer
`to Exhibit 1021 as “Schmid,” as does Patent Owner, while Petitioner refers
`to it as “Eckhardt.”15
`The first reference pertaining to “Eckhardt” that is identified by Patent
`Owner does not pertain to this ground of unpatentability.16 The second
`reference pertains to this ground of unpatentability. See Pet. 39 (citing
`
`
`15 Schmid was published on August 16, 2001. The ’588 patent was filed on
`April 11, 2002, but claims priority to an April 26, 2001 German application.
`Ex. 1008, 1; Ex. 1001, 1; Prelim. Resp. 6. Patent Owner does not explain
`whether the subject matter of the ’588 patent properly can claim benefit to
`one or more earlier filing date(s), but we need not reach that issue at this
`time.
`16 The reference is part of what Petitioner identifies as grounds 1–3. See
`Pet. 36–37.
`
`13
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`Schmid, cols. 3–4). Petitioner cites to Schmid for the proposition that
`decreasing weight was a familiar design technique.17 Id.
`The cited portion of Schmid does not contain an explicit disclosure
`regarding decreasing weight. Schmid discloses three versions of a wiper
`strip (2, 2a, and 2b) having a channel or channels (16, 18, 21) that extends
`the length of that strip. Ex. 1021, pp. 13–44, col. 2–4, Figs. 2–4. Each of
`these channels is filled with washer fluid. Id. Petitioner does not specify
`which embodiment is relied upon, nor does Petitioner explain persuasively
`how a fluid filled channel decreases weight of the wiper strip.
`Consequently, Petitioner’s reliance on Schmid does not add to this ground of
`unpatentability.
`3.
`Conclusion
`On the record before us, Petitioner has demonstrated a reasonable
`likelihood of prevailing in the contention that claim 1 is unpatentable over
`Kotlarski ’383 and Prohaska. Because Petitioner has demonstrated a
`reasonable likelihood of prevailing with respect to at least one of the
`challenged claims of this ground of unpatentability, we institute on claims 1
`and 2.
`
`
`
`17 In IPR2016-00039, Petitioner relies on Schmid as evidence of
`simultaneous invention, but it is not relied upon in that manner here. See
`IPR2016-00039, Paper 1, 6.
`
`14
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`B. MERKEL AND PROHASKA – CLAIMS 1, 218
`1.
`Petitioner’s Contentions
`Petitioner contends that claims 1 and 2 would have been obvious over
`Merkel and Prohaska. Pet. 10–12, 16–17, 32–36, 38–43. Specifically,
`Petitioner contends that Merkel discloses a wiper as claimed, except that
`Merkel’s wind deflection strip is not hollow. Pet. 29–32, 35. Petitioner
`contends that it would have been obvious to substitute Prohaska’s hollow
`wind deflection strip (spoiler) for Merkel’s. Id. According to Petitioner,
`such a modification: would have predictably yielded a lighter weight blade
`that would permit use of a less powerful drive system, was a substitution that
`would yield predictable results, and involved design choices that do not rise
`to the level of a patentable distinction. Id. at 38–43 (citing Ex. 1018 ¶¶ 55,
`63–66).
`Patent Owner Arguments
`2.
`Patent Owner uses the same arguments against this ground of
`unpatentability as against the previous. See Prelim. Resp. 2, 8–11, 17–19.
`Our analysis above is applicable here.
`3.
`Conclusion
`On the record before us, Petitioner has demonstrated a reasonable
`likelihood of prevailing in the contention that claim 1 is unpatentable over
`Merkel and Prohaska. Because Petitioner has demonstrated a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims
`of this ground of unpatentability, we institute on claims 1 and 2.
`
`
`18 Petitioner identifies this as ground 5. See Pet. 3.
`
`15
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`C. KOTLARSKI ’383, PROHASKA, AND KOTLARSKI ’090
`
`MERKEL, PROHASKA, AND KOTLARSKI ’09019
` CLAIM 3
`Claim 3 depends from claim 1 and recites, “characterized in that the
`wind deflection strip (42) is designed as a binary component whose
`longitudinal area provided with the claw-like extensions (56) is made of a
`harder material than a longitudinal area lying closer to the base point (46).”
`Petitioner builds upon the grounds of unpatentability based on
`(1) Kotlarski ’383 and Prohaska, and (2) Merkel and Prohaska by addressing
`the added limitation of claim 3 in view of Kotlarski ’090. Pet. 51–54.20
`Specifically, Petitioner contends that Kotlarski ’090’s retainer 36
`corresponds to a binary component as claimed. Id. at 51–52. Petitioner
`reasons that a person of ordinary skill in the art would have utilized claw-
`like extensions being made of a harder material (plastic) than the
`longitudinal area closer to the base of the spoiler (rubber), as disclosed by
`Kotlarski ’090, in order to grip the spring rails. Id. at 52–54; Ex. 1018 ¶ 74.
`Petitioner adds that such an improvement was use of a familiar element
`according to a known method to produce predictable results. Pet. 54.
`
`Patent Owner makes no additional arguments regarding these grounds
`of unpatentability.
`On the record before us, Petitioner has demonstrated a reasonable
`likelihood of prevailing in the contention that claim 3 is unpatentable over
`
`
`19 Petitioner identifies these as grounds 8 and 9. See Pet. 3.
`20 Petitioner’s reference to the claim charts for claim 15 appears to have
`intended claim 1. See Pet. 51.
`
`16
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`(1) Kotlarski ’383, Prohaska, and Kotlarski ’090, and (2) Merkel, Prohaska,
`and Kotlarski ’090.
`
`D. KOTLARSKI ’383, PROHASKA, AND MATHUES
`
`MERKEL, PROHASKA, AND MATHUES21
` CLAIM 3
`Petitioner builds upon the grounds of unpatentability based on (1)
`Kotlarski ’383 and Prohaska, and (2) Merkel and Prohaska by addressing the
`added limitation of claim 3 in view of Matheus. Pet. 52, 54–56.22
`Specifically, Petitioner contends that Matheus’s squeegee 20 corresponds to
`a binary component as claimed. Id. at 52. Petitioner reasons use of a binary
`component as disclosed by Matheus would have been obvious because the
`materials are appropriate to counter wind-lift forces and to secure the wind
`deflector to the wiper blade assembly according to their established
`functions, to yield predictable results. Id. at 55–56.
`
`Patent Owner makes no additional arguments regarding these grounds
`of unpatentability.
`On the record before us, Petitioner has demonstrated a reasonable
`likelihood of prevailing in the contention that claim 3 is unpatentable over
`(1) Kotlarski ’383, Prohaska, and Matheus, and (2) Merkel, Prohaska, and
`Matheus.
`
`
`
`21 Petitioner identifies these as grounds 12 and 13. See Pet. 3.
`22 Petitioner’s reference to the claim charts for claim 15 appears to have
`intended claim 1. See Pet. 52.
`
`17
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`E. GROUNDS RELYING ON PROHASKA FOR THE PROFILE OF THE CROSS
`SECTION23
`Independent claim 1 requires the profile of the cross section of the
`wind deflection strip to be the same along its entire length. Claims 2 and 3
`contain this limitation by virtue of dependence from claim 1.
`With regard to claims 1 and 2, Petitioner asserts in several of the
`grounds of unpatentability that Prohaska’s spoiler 20 corresponds to a wind
`deflection strip having such a profile. See Pet. 24,24 2725 (each citing Ex.
`1004, 1:97–100, 2:56–70). Petitioner asserts several grounds of
`unpatentability against claim 3 that rely on Prohaska in the same manner.26
`See Pet. 51–56.
`As Patent Owner correctly points out, the portions of Prohaska cited
`by Petitioner describe spoiler 20 as extending the length of the wiper
`element, but do not address the profile of the cross section of spoiler 20
`along that length. Prelim. Resp. 13–14. Consequently, , Petitioner has not
`demonstrated a reasonable likelihood of prevailing in demonstrating that
`claims 1–3 are unpatentable with regard to these grounds.
`
`
`23 This analysis applies to what Petitioner identifies as grounds 1–3, 6, 7, 10,
`and 11. See Pet. 3.
`24 Relating to the ground based on Prohaska, and the ground based on
`Prohaska and Appel.
`25 Relating to the ground based on Prohaska and Hoyler.
`26 The following grounds: Prohaska, Appel, and Kotlarski ’090; Prohaska,
`Hoyler, and Kotlarski ’090; Prohaska, Appel and Matheus; and Prohaska
`Hoyler, and Mathues.
`
`18
`
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`
`Case IPR2016-00040
`Patent 7,484,264 B2
`
`V. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has
`demonstrated that the information presented in the Petition and in the
`Preliminary Response shows that there is a reasonable likelihood that
`Petitioner would prevail in proving the unpatentability of claims 1, 2, and 3
`of the ’264 patent under 35 U.S.C. § 103.
`At this stage of the proceeding, the Board has not made a final
`determination as to the patentability of any challenged claim or any
`underlying factual and legal issues.
`
`
`VI. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted with respect to the
`following grounds of unpatentability:
`(1) claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over
`Kotlarski ’383 and Prohaska;
`(2) claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over
`Merkel and Prohaska;
`(3) claim 3 as unpatentable under 35 U.S.C. § 103(a) over
`Kotlarski ’383, Prohaska, and Kotlarski ’090;
`(4) claim 3 as unpatentable under 35 U.S.C. § 103(a) over Merkel,
`Prohaska, and Kotlarski ’090;
`(5) claim 3 as unpatentable under 35 U.S.C. § 103(a) over
`Kotlarski ’383, Prohaska, and Mathues; and
`(6) claim 3 as unpatentable under 35 U.S.C. § 103(a) over Merkel,
`Prohaska, and Mathues.
`
`19
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`Case IPR2016-00040
`Patent 7,484,264 B2
`
`FURTHER ORDERED that no other ground of unpatentability is
`authorized for this inter partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’264 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial.
`
`
`
`
`
`
`
`
`
`20
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`Case IPR2016-00040
`Patent 7,484,264 B2
`
`PETITIONER:
`
`Richard M. Koehl
`James R. Klaiber
`David Lansky
`HUGHES HUBBARD & REED LLP
`richard.koehl@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`david.lansky@hugheshubbard.com
`
`
`
`PATENT OWNER:
`
`Enrique Iturralde
`SHEARMAN & STERLING LLP
`Enrique.Iturralde@shearman.com
`
`
`
`
`
`21
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