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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`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
`_____________________
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`
`
`PATENT OWNER RESPONSE
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`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`Page
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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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`Level of ordinary skill in the art ...................................................................... 1
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`III. The combinations do not render obvious claims 1, 2, or 3 of the ’264
`patent ................................................................................................................ 2
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`A.
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`The combinations of Prohaska and either Kotlarski ’383 or Merkel
`do not teach or suggest the claimed “wind deflection strip” with
`divergent sides in claims 1, 2, and 3 ..................................................... 2
`
`1.
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`2.
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`3.
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`Conventional blades and beam blades are fundamentally
`different ....................................................................................... 3
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`A POSITA would not have reason to modify the complete
`beam blade solutions of Kotlarksi ’383 or Merkel ..................... 5
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`Prohaska recognized the disadvantages and discouraged use
`of a hollow spoiler....................................................................... 6
`
`B.
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`The combinations of Prohaska and either Kotlarski ’383 or Merkel
`and either Kotlarski ’090 or Mathues do not teach or suggest the
`“binary component,” as required by claim 3 ....................................... 10
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`C.
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`The objective indicia of non-obviousness ........................................... 11
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`IV. Dr. Davis lacks credibility ............................................................................. 19
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`V.
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`Conclusion ..................................................................................................... 23
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`TABLE OF AUTHORITIES
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` Page
`
`Cases
`Alco Standard Corp. v. Tenn. Valley Auth., 808 F.2d 1490 (Fed. Cir.
`1986) ................................................................................................................... 16
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) .................................................... 16
`
`Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) ............................... 2, 12
`
`InTouch Techs., Inc. v. VGo Comm’ns, Inc., 751 F.3d 1327 (Fed. Cir.
`2014) ..................................................................................................................... 3
`
`Leo Pharms. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) .................................. 11, 12, 13
`
`Metabolite Labs., Inc. v. Laboratory Corp. of Am. Holdings, 370 F.3d
`1354 (Fed. Cir. 2004) .......................................................................................... 19
`
`Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001) ............................................. 2
`
`In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984) ....................................................... 16
`
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 F. App’x 755 (Fed.
`Cir. 2015) .............................................................................................................. 6
`
`In re Sernaker, 702 F.2d 989 (Fed. Cir. 1983) ........................................................ 19
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) ........................ 12
`
`Transocean Offshore Deepwater Drilling Inc. v. Maersk Drilling
`USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012) ......................................................... 12
`
`Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc., 813 F.2d 1207 (Fed. Cir.
`1987) ................................................................................................................... 12
`
`WBIP, LLC v. Kohler Co., ___ F.3d ___, 2016 WL 3902668 (Fed. Cir.
`July 19, 2016)...............................................................................................passim
`
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`Statutes
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`35 U.S.C. § 103(a) ..................................................................................................... 1
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`35 U.S.C. § 112 ........................................................................................................ 22
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`
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`Other Authorities
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`37 C.F.R. § 42.51(b)(1)(iii) ...................................................................................... 22
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`Exhibit Number
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`LIST OF EXHIBITS
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`Description
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`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`Ex. 2010
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`Ex. 2011
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`Cross-reference key correlating exhibits across instituted
`inter partes review proceedings
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`Deposition of Petitioner’s Declarant, Gregory Davis, dated
`July 7, 2016
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`Declaration of Dr. Steven Dubowsky
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`Curriculum Vitae of Dr. Steven Dubowsky
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`April 15, 2010 Trial Transcript from Robert Bosch LLC v.
`Pylon Manufacturing Corporation in the District of
`Delaware, Case No. 08-542 (SLR)
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`April 19, 2010 Trial Transcript from Robert Bosch LLC v.
`Pylon Manufacturing Corporation in the District of
`Delaware, Case No. 08-542 (SLR)
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`Declaration of Martin Kashnowski
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`U.S. Patent No. 2,596,063
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`U.S. Patent No. 3,418,679
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`Excerpt from Supplemental Initial Expert Report of Gregory
`Davis Regarding U.S. Patent Nos. 6,675,434, 6,836,926 and
`6,973,698 in In the Matter of Certain Wiper Blades, Inv. No.
`337-TA-816 before the U.S. International Trade
`Commission
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`Order No. 94 from In the Matter of Certain Wiper Blades,
`Inv. No. 337-TA-816 before the U.S. International Trade
`Commission
`
`Ex. 2012
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`[Not used; Reserved]
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`Exhibit Number
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`Description
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`Ex. 2013
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`Ex. 2014
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`Ex. 2015
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`Ex. 2016
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`Excerpt from Declaration of Gregory Davis, Ex. 1013 in
`IPR2016-00034
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`Plaintiff Robert Bosch LLC’s Amended Response to
`Defendant Costco Wholesale Corporation’s First Set of
`Interrogatories (No. 1), dated June 2, 2015, in Robert Bosch
`LLC v. Alberee Products, Inc., in the District of Delaware,
`Case No. 12-574 (LPS)
`
`Exhibit 24 to Complaint in In the Matter of Certain Wiper
`Blades, Inv. No. 337-TA-816 before the U.S. International
`Trade Commission (claim charts)
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`Exhibit 25 to Complaint in In the Matter of Certain Wiper
`Blades, Inv. No. 337-TA-816 before the U.S. International
`Trade Commission (claim charts)
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`v
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`I.
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`Introduction
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`Patent Owner Robert Bosch LLC (“Patent Owner” or “Bosch”) submits this
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`Patent Owner Response regarding U.S. Patent No. 7,484,264 (“the ’264 patent”).
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`The Board instituted inter partes review of claims 1 and 2 of the ’264 patent as to
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`whether they are unpatentable under 35 U.S.C. § 103(a) over GB 2,106,775 to
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`Prohaska (“Prohaska”) and either PCT WO 99/02383 to Kotlarski (“Kotlarski
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`’383”) or PCT WO 99/12784 to Merkel (“Merkel”). The Board also instituted
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`inter partes review of claim 3 of the ’264 patent as to whether it is unpatentable
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`under 35 U.S.C. § 103(a) over these combinations in further view of either PCT
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`WO 00/34090 to Kotlarski (“Kotlarski ’090”) or U.S. Patent No. 3,121,133 to
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`Mathues (“Mathues”). For the reasons set forth herein, Patent Owner respectfully
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`submits that the Board should find the challenged claims not unpatentable.
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`II. Level of ordinary skill in the art
`A person of ordinary skill in the art at the time of the invention of the ’264
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`patent (“POSITA”) would have had either an undergraduate degree in mechanical
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`engineering or a similar discipline, or several years of experience in the field of
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`wiper blade manufacture and design. Ex. 2003 at ¶¶ 16–19.
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`Petitioner asserts that “the level of skill level [sic] in the art of the ’264
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`patent included at least the ability to make the subject matter disclosed in [the prior
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`art in Petitioner’s grounds],” that “the level of skill level [sic] in the art also
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`included the ability to make predictable use of the materials and components
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`U.S. Patent No. 7,484,264
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`described above according to their established functions,” and that “[a] person of
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`ordinary skill in the art would have the education and experience in mechanical
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`engineering to have knowledge of the information deployed in these patents and
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`printed publications.” Paper 1, Petition (“Pet.”) at 21–22. Petitioner is wrong,
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`confusing the “content of the prior art” Graham factor and the “level of skill in the
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`art” Graham factor. While the prior art can reflect the level of skill, the point of
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`identifying the level of skill is to avoid hindsight and add objectivity to the
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`obviousness analysis. “Skill in the art does not act as a bridge over gaps in
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`substantive presentation of an obviousness case, but instead supplies an important
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`guarantee of objectivity in the process.” Okajima v. Bourdeau, 261 F.3d 1350,
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`1355 (Fed. Cir. 2001). Compressing the content of the prior art and the skill of the
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`ordinary artisan into a single factor renders tautological the analysis of the scope of
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`the prior art—including the analysis of whether and how references would be
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`combined. It essentially assumes the sought-for result.
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`III. The combinations do not render obvious claims 1, 2, or 3 of the ’264
`patent
`A. The combinations of Prohaska and either Kotlarski ’383 or
`Merkel do not teach or suggest the claimed “wind deflection
`strip” with divergent sides in claims 1, 2, and 3
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`Petitioner acknowledges that neither Kotlarski ’383 nor Merkel teach or
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`suggest the claimed “wind deflection strip” that has “two sides . . . that diverge
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`from a common base point . . . as seen in a cross section” as required by claims 1,
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`2, and 3 of the ’264 patent. Pet. at 30, 34. Petitioner contends this limitation is
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`taught by the hollow-shaped conventional spoiler shown in Prohaska’s Figure 3,
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`and that it would have been obvious to add this conventional spoiler onto the beam
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`blade of Kotlarksi ’383 or Merkel. But, it is apparent that Petitioner’s conclusory
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`assertions improperly invoke hindsight reasoning and “rel[y] on [the ’264 patent]
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`itself as [its] roadmap for putting . . . pieces of a ‘jigsaw puzzle’ together.”
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`InTouch Techs., Inc. v. VGo Comm’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014).
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`Putting aside its conclusory nature, Petitioner’s assertion fails for three
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`additional reasons: (1) the fundamental differences between conventional and
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`beam blades; (2) a POSITA would not have reason to modify the complete beam
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`blade solutions of Kotlarksi ’383 or Merkel; and (3) the disadvantages mentioned
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`by Prohaska of its hollow-shaped Figure 3 conventional spoiler would have led a
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`POSITA to avoid using it, particularly given the highly sensitive beam blade.
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`1.
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`Conventional blades and beam blades are fundamentally
`different
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`Petitioner incorrectly treats conventional and beam blade technology as
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`interchangeable. While conventional and beam blades are superficially similar in
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`that they are both wiper blades, they are, in actual fact, fundamentally different
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`such that a POSITA would not have been motivated to combine conventional and
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`beam blade teachings at the time of the invention of the ’264 patent. Ex. 2003 at
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`¶¶ 21–25, 58–61, 65–67, 77–79.
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`Conventional blades—dating back to the 1940’s—use a number of brackets
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`(or yokes) at multiple levels to capture the wiper strip at a number of spaced-apart
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`attachment points to the wiper strip. Ex. 2003 at ¶ 21; see also, e.g., Ex. 2008,
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`U.S. Patent No. 2,596,063. In conventional blades, the downward force is
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`transferred through the attachment points to the wiper strip. Ex. 2003 at ¶ 21; see
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`also, e.g., Ex. 2009, U.S. Patent No. 3,418,679.
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`However, this conventional blade design results in a number of
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`disadvantages, for example, (1) the superstructure fails to evenly distribute the
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`pressure applied by the wiper arm, resulting in pressure points on the rubber
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`wiping element and thus an uneven wipe; (2) when exposed to extreme weather,
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`the pressure-distributing frame of the conventional blades tends to become clogged
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`by ice and snow, which renders the blade rigid and impairs its performance; (3)
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`they did not meet the aesthetic requirements of purchasers; and (4) their high
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`profile causes wind lift issues and driver visibility problems. Ex. 2003 at ¶ 22.
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`Beam blade patents—as known to a POSITA at the time of the ’264
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`patent—sought to solve these problems by, among other things, eliminating the
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`yokes. Ex. 2003 at ¶¶ 21–23, 79. In a beam blade, the wiper arm pressure is
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`distributed by a spring-elastic support element over the entire length of the wiper
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`strip. Ex. 2003 at ¶¶ 58, 65, 73, 79. A beam blade’s wiping performance—
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`U.S. Patent No. 7,484,264
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`including its force distribution characteristic—is thus greatly affected by the small
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`changes in its structure, especially if additional components are attached to the
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`beam. Ex. 2003 at ¶¶ 58, 65, 73, 79. Therefore, the conventional thinking at the
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`time was to avoid any additional components on a beam blade, making the beam
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`perform the best. Ex. 2003 at ¶¶ 58, 65, 73, 79.
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`This is further evidenced by the failure in the marketplace of a competitor’s
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`beam-blade product, the Trico Innovision wiper blade, which does not include a
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`flexible spoiler. Ex. 2007 at ¶ 7.
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`2.
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`A POSITA would not have reason to modify the complete
`beam blade solutions of Kotlarksi ’383 or Merkel
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`Merkel and Kotlarski ’383 both disclose a beam blade with a solid spoiler
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`that is formed as a part of the wiper strip. Ex. 1017 at 2:11–14; Ex. 1007 at 1:66–
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`2:4.1 A POSITA would not have found it obvious to modify Merkel or Kotlarski
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`’383 to replace the part of the wiper strip formed as a spoiler with the separate-
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`piece spoiler of Prohaska’s conventional blade. Ex. 2003 at ¶¶ 74, 77. First, both
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`Merkel and Kotlarski ’383 disclose a complete beam blade solution, and Petitioner
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`provides no reason for a POSITA to modify their elements. Ex. 2003 at ¶¶ 74, 77;
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`1 As in the petition, citations to Merkel and Kotlarski ’383 are to their U.S.
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`counterparts. See Pet. at 15–16 nn.3–4.
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`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 F. App’x 755, 759 (Fed. Cir. 2015)
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`(“Such a change to a reference’s ‘principle of operation’ is unlikely to motivate a
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`person of ordinary skill to pursue a combination with that reference.”). Second,
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`cutting off the spoiler part of the wiper strip and adding in its place the
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`conventional blade spoiler from Prohaska Figure 3 would have required changes to
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`the wiper strip, the support element, and the spoiler attachment mechanism—and,
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`none of these reference teach what those changes would be. Ex. 2003 at ¶¶ 74, 77.
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`3.
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`Prohaska recognized the disadvantages and discouraged use
`of a hollow spoiler
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`Prohaska recognized that “[b]ecause the back 31 of the resilient strip is
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`developed as a hollow member with about triangular cross-section, there is a
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`hollow space between the surfaces 21 and 22 which possibly migh[t] be
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`disadvantageous.” Ex. 1003 at 3:3–6 (emphasis added). Recognizing the
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`potential disadvantages, Prohaska taught that:
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`This disadvantage is avoided in a wiper element
`according to Figure 6 in that the head 11 includes
`inclined surface 18 which closely rests against back 31 of
`a flexible strip 20 and is lapped over by it. The back 31
`of the flexible strip is on both sides elongated beyond the
`inclined surface 18 of the head 11 of the wiper element
`10 and forms the wind deflector surface 21. In this case
`the somewhat smaller, downwardly directed elongation
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`U.S. Patent No. 7,484,264
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`23 is to be exposed to the air stream. The pressure
`exerted by the air stream on the back 31 of the flexible
`strip 30 can especially effectively be transmitted to head
`11 of the wiper element due to the close fit of the parts,
`so that the tendency of their being lifted is dim[in]ished.
`The air behind the wiper element 10 can be carried away
`via the elongation 22.
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`Ex. 1003 at 3:7–22 (emphasis added). A POSITA would have understood that the
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`disadvantage mentioned in Prohaska is that the hollow shape of the Figure 3
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`spoiler would lead to aerodynamically excited, degrading vibrations—which would
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`disturb wiping ability and lead to premature failure. Ex. 2003 at ¶ 66. And, thus a
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`POSITA would have understood that Prohaska taught away from using the Figure
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`3 hollow spoiler at all. Ex. 2003 at ¶¶ 66, 73, 77.
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`Dr. Davis agrees regarding the perceived disadvantages of using the
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`Prohaska hollow spoiler, and also acknowledges that further stiffening of the
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`spoiler would be needed:
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`Q. Now, the Prohaska patent says that the hollow
`space in the spoiler that’s integral with the flexible
`strip in Figure 3 might possibly be
`disadvantageous, correct? And I am looking at
`page -- page numbered 3 at the top in the left-hand
`column at the top around line 5.
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`MR. KLAIBER: Object to the form.
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`U.S. Patent No. 7,484,264
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` A. Yes. It says it might possibly be disadvantageous.
`So it’s kind of one of the design trade offs that you
`would be making is that you could make
`something like that, and it would certainly be
`lighter, but there could be a bit of a tradeoff there.
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`Q. What would the tradeoff be?
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`A. That potentially it could be less structurally rigid
`so that it could potentially -- you would have to
`look at whether that hollow space would still allow
`it to perform its function so that it wouldn’t
`deform, let’s say, under load. Things like that.
`
`Q. So am I correct that a windshield wiper designer
`looking at the Prohaska patent would know that
`they should make the spoiler in Figure 3 out of a
`material that is rigid enough so it wouldn’t deform
`under load?
`
`MR. KLAIBER: Objection to form.
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`A. I mean, I suppose that could be one way you could
`do it, but it would be one of your considerations is
`to make sure that it’s strong enough. That’s why I
`said they said it might be disadvantageous.
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`Q. Now, am I correct that the Prohaska patent
`describes the flexible strip to which you previously
`referred as stiffening the wiper element?
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`MR. KLAIBER: Object as to form.
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`Q. I am looking at what it says in column -- page 1,
`line -- around line 50.
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`A. (Witness reviewing document). So they are
`talking about the wiper element itself, the rubber
`wiper element, which, as we know, is pretty
`floppy, let’s say, if it’s not hooked up. You could
`use this flexible strip to help provide some of the
`structure to give that wiping element shape.
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`Ex. 2002 at 113:15–115:14.
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`As discussed above, conventional and beam blades are fundamentally
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`different, and beam blades are highly sensitive, such that even the slightest
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`alteration will significantly impact beam blade performance. Therefore, a POSITA
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`would have thought that aerodynamically excited, degrading vibration problems
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`relating to a hollow spoiler—discussed above—would be at least as problematic in
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`a sensitive beam blade as in Prohaska’s conventional blade. Ex. 2003 at ¶¶ 66, 73,
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`77.
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`Indeed, the conventional wisdom at the time of the invention of the ’264
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`Case No. IPR2016-00040
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`patent was to avoid adding anything that might have altered the beam blade and,
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`thus, its effectiveness, especially the additional engineering of stiffening
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`structures2 that would have been required to combat the “deform[ation]” or
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`“flopp[iness]” expected in a hollow spoiler. Accordingly, a POSITA would not
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`have thought to add Prohaska’s Figure 3 conventional spoiler onto the beam blade
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`of Merkel or Kotlarski ’383—let alone would have had any expectation of success.
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`Ex. 2003 at ¶¶ 65–67, 73, 77.
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`Accordingly, the proffered combinations do not render obvious claims 1, 2,
`
`or 3 of the ’264 patent.
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`B.
`
`The combinations of Prohaska and either Kotlarski ’383 or
`Merkel and either Kotlarski ’090 or Mathues do not teach or
`suggest the “binary component,” as required by claim 3
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`Claim 3 of the ’264 patent requires that the claimed spoiler include “a
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`binary component whose longitudinal area provided with the claw-like extensions
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`(56) is made of a harder material than a longitudinal area lying closer to the base
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`point (46).”
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`Petitioner first contends that the “retainer” of Kotlarski ’090 has a different
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`hardness than the “spoiler” of Kotlarski ’090. Pet. at 53. However, even assuming
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`2 Prohaska teaches that its spoiler will stiffen the wiper blade. Ex. 1003 at 1:65–
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`67.
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`that the retainer and spoiler are of different hardnesses, Kotlarski ’090 fails to
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`U.S. Patent No. 7,484,264
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`disclose the claim limitation because Kotlarski ’090 does not disclose any
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`individual element made of “a binary component” material with two different
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`hardnesses. Ex. 2003 at ¶ 80; see generally Ex. 1008. At most, Kotlarski ’090
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`discloses two separate elements, but not the claimed “a binary component.”
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`Petitioner then contends that Mathues discloses this limitation. However,
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`while Mathues discloses a wiper strip made with progressively different hardnesses
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`in different parts of the wiper strip to improve wiping quality, it does not disclose a
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`spoiler made of a “binary component whose longitudinal area provided with the
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`claw-like extensions (56) is made of a harder material than a longitudinal area
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`lying closer to the base point (46).” Ex. 2003 at ¶ 80; see generally Ex. 1013.
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`Mathues does not disclose or suggest a spoiler that has two discrete hardnesses in
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`its upper part and its attachment part (its “claw-like extensions”), respectively. Ex.
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`2003 at ¶ 80; see generally Ex. 1013.
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`Accordingly, the proffered combinations also do not render obvious claim 3
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`of the ’264 patent for this reason.
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`C. The objective indicia of non-obviousness
`“The objective indicia of non-obviousness play an important role as a guard
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`against the statutorily proscribed hindsight reasoning in the obviousness analysis.”
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`WBIP, LLC v. Kohler Co., ___ F.3d ___, 2016 WL 3902668, at *5 (Fed. Cir. July
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`11
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`19, 2016); see also Leo Pharms. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013)
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`Case No. IPR2016-00040
`U.S. Patent No. 7,484,264
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`(“[O]bjective indicia of nonobvious are crucial in avoiding the trap of hindsight
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`when reviewing, what otherwise seems like, a combination of known elements.”).
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`“‘[E]vidence of secondary considerations may often be the most probative and
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`cogent evidence in the record.’” WBIP, 2016 WL 3902668, at *5 (quoting
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`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983); and citing
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`Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc., 813 F.2d 1207, 1212 (Fed. Cir. 1987)
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`and Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 36 (1966)).
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`Objective considerations may include, for example, long-felt but unresolved
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`need, industry praise and awards, failure of others, commercial success, licensing,
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`unexpected results, and copying. WBIP, 2016 WL 3902668, at *7; Transocean
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`Offshore Deepwater Drilling Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340,
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`1350 (Fed. Cir. 2012); Leo. Pharms., 726 F.3d at 1358–59. All of these
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`considerations are implicated with respect to the challenged claims. And, while
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`there must be a nexus between the objective evidence and the merits of the claimed
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`invention, the nexus is presumed, where, as here, “the patentee shows that the
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`asserted objective evidence is tied to a specific product and that product ‘is the
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`invention disclosed and claimed in the patent.’” WBIP, 2016 WL 3902668, at *6.
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`“Conventional” wiper blades were long known in the art prior to the
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`invention at issue here. Ex. 2007 at ¶ 2; Ex. 2003 at ¶ 21. However, such
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`conventional blades have a number of disadvantages compared to what are now
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`commonly referred to as “beam” or “flat” wiper blades. Ex. 2007 at ¶ 2; Ex. 2003
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`at ¶¶ 22–23. For example, conventional blades can be clogged with ice and snow,
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`which can cause the blade to freeze and stick and lead to banding, which can result
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`in poor visibility. Ex. 2007 at ¶ 2; Ex. 2003 at ¶ 22. They are also prone to
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`wearing unevenly, with the portion of the wiper strip underneath the pressure
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`points wearing first, which can lead to streaking and poor visibility. Ex. 2007 at ¶
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`2; Ex. 2003 at ¶ 22. All of these problems with conventional wiper blades were
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`well known in the industry, but solutions to these problems were not. Ex. 2007 at ¶
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`2; Ex. 2005 at 271:4–22.
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`While beam blades were described in paper patents long before the invention
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`at issue here, (Ex. 2003 at ¶ 23), there were no commercially viable beam blades
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`prior to 2002, when, after significant engineering difficulties, Bosch satisfied the
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`above-described unresolved long-felt need by introducing a wiper blade called
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`Aerotwin into the automotive aftermarket, first in Europe and then in the United
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`States, (Ex. 2007 at ¶ 3, Ex. 2005 at 346:16–348:2).3 The Aerotwin was the first
`
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`3 WBIP, 2016 WL 3902668, at *7 (“Evidence of a long felt but unresolved need
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`tends to show non-obviousness because it is reasonable to infer that the need would
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`commercially successful beam blade in the United States aftermarket, and was
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`given a number of awards, including both the Pace award and the Automechanika
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`award. Ex. 2007 at ¶ 3; Ex. 2005 at 239:6–16.4 The Pace award, in particular,
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`described the use of a flexible spoiler on the Aerotwin blade. Ex. 2007 at ¶ 3; Ex.
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`2005 at 337:10–23.
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`In 2005, Bosch introduced the Icon wiper blade to the United States
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`aftermarket. Ex. 2007 at ¶ 5. The Icon blade was a beam blade designed for use in
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`more applications with fewer part numbers than the Aerotwin blade. Ex. 2007 at ¶
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`5. The Icon blade was subject to praise and commercial success: (1) the demand
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`from Bosch customers for the Icon blade was considerably high, even though it
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`have not persisted had the solution been obvious.”); Leo Pharms., 726 F.3d at
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`1359.
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`4 WBIP, 2016 WL 3902668, at *10, *12 (“Evidence that the industry praised a
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`claimed invention or a product which embodies the patent claims weighs against
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`an assertion that the same claim would have been obvious. . . . Demonstrating that
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`an invention has commercial value, that it is commercially successful, weighs in
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`favor of its non-obviousness.”).
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`was more expensive than conventional blades; and (2) customers expressed a great
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`deal of excitement for the Icon blade. Ex. 2007 at ¶ 5; Ex. 2005 at 270:14–271:3.5
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`Both the Aerotwin blade6 and the Icon blade practice the challenged claims.
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`Ex. 2014 at 3 (identifying products and patents); Ex. 2015 at 33–57, 59–62
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`(Aerotwin claim charts); Ex. 2016 at 30–43, 45–48 (Icon claim charts); Ex. 2007 at
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`¶ 6; Ex. 2005 at 234:25–235:4, 249:25–250:5, 252:17–254:21, 353:22–354:1,
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`359:12–360:4; Ex. 2006 at 698:19–699:22.
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`Both blades include a flexible spoiler with diverging legs mounted on the
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`top of the blade, as well as plastic end caps. Ex. 2007 at ¶ 6; Ex. 2005 at 234:25–
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`235:4, 249:25–250:5, 252:17–254:21, 359:12–360:4; Ex. 2006 at 698:19–699:22.
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`This top-mounted spoiler totally ran against the grain of conventional wiper
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`understanding. Ex. 2003 at ¶¶ 22–25, 58–60, 65, 73, 77, 79. Adding structures to
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`a sensitive beam blade, especially structures that raise the profile, would not have
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`been expected to work and would have been expected to cause lift-off problems.
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`5 WBIP, 2016 WL 3902668, at *10, *12 (“[I]f there is evidence of industry praise
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`in the record, it weighs in favor of the nonobviousness of the claimed invention ….
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`Demonstrating that an invention has commercial value, that it is commercially
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`successful, weighs in favor of its non-obviousness.”).
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`6 The Aerotwin is also referred to as the Bosch “OE” blade. Ex. 2014 at 3.
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`Ex. 2005 at 388:23–391:8; Ex. 2003 at ¶¶ 22–25, 58–60, 65, 73, 77, 79.7 Bosch
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`tested these products extensively before releasing them. Ex. 2007 at ¶ 6. One
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`aspect tested was noise. Ex. 2007 at ¶ 6. The Bosch beam blades were quiet in
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`operation, including when the wiping direction changes and the wiper strip flips
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`from one side to the other. Ex. 2007 at ¶ 6. These features were part of the reason
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`for the great customer demand for these products. Ex. 2007 at ¶ 6; Ex. 2005 at
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`270:14–271:3. Both products solved many of the problems associated with
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`conventional blades. Ex. 2007 at ¶ 6.
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`Further, the commercial success of the Icon product was in contrast to the
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`failure of a competitor’s beam-blade product, the Trico Innovision wiper
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`blade. Ex. 2007 at ¶ 7; Ex. 2005 at 250:6–251:7.8 The Trico product was
`
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`7 WBIP, 2016 WL 3902668, at *10 (“If industry participants or skilled artisans are
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`skeptical about whether or how a problem could be solved or the workability of the
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`claimed solution, it favors non-obviousness.”).
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`8 In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
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`676 F.3d 1063, 1082–83 (Fed. Cir. 2012) (“Evidence is particularly probative of
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`obviousness when it demonstrates both that a demand existed for the patented
`
`invention, and that others tried but failed to satisfy that demand.”); In re Piasecki,
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`745 F.2d 1468, 1475 (Fed. Cir. 1984) (finding nonobviousness where the evidence
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`introduced in 2004, after the Aerotwin but before Icon, and it failed in the
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`U.S. Patent No. 7,484,264
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`marketplace. Ex. 2007 at ¶ 7; Ex. 2005 at 250:6–251:7. Notably, the Trico
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`product included neither a flexible spoiler nor end caps. Ex. 2007 at ¶ 7; Ex.
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`2005 at 250:6–251:7.
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`Bosch’s sales figures are indicative of commercial success.9 In 2006,
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`Bosch’s sales of the Icon blades were approximately $17M; in 2007, they were
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`approximately $24M; and in 2008, approximately $28M. Ex. 2007 at ¶ 8. These
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`sales figures are significant in the context of aftermarket wiper blades. Ex. 2007 at
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`¶ 8. In 2008, the Icon product was given the Frost & Sullivan award for
`
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`demonstrated a failure of others to provide a feasible solution to a longstanding
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`problem); Alco Standard Corp. v. Tenn. Valley Auth., 808 F.2d 1490, 1500 (Fed.
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`Cir. 1986) (affirming a nonobviousness finding where the evidence showed that
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`the relevant industry had searched for more than a decade for a reliable solution
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`and that major manufacturers in the industry had tried but failed to develop such a
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`solution).
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`9 WBIP, 2016 WL 3902668, at *12 (“Demonstrating that an invention has
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`commercial value, that it is commerci