Paper No. ______
`Filed: October 9, 2015
`
`
`
`
`
`
`Filed on behalf of: Costco Wholesale Corporation
`By:
`James W. Dabney
`Richard M. Koehl
`James R. Klaiber
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6000
`Fax (212) 422-4726
`richard.koehl@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Costco Wholesale Corporation
`Petitioner
`
`v.
`
`Robert Bosch LLC
`Patent Owner
`
`
`
`
`
`U.S. Patent 7,484,264
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 7,484,264
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
`
`
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1 
`III. 
`PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103............ 2 
`IV.  GROUNDS FOR STANDING ........................................................................ 2 
`V. 
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED UNDER 37 U.S.C. § 312 AND 37 C.F.R. §§ 42.22(A)(1)
`AND 42.104(B)(1)-(2) ..................................................................................... 2 
`A. 
`Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1) .... 2 
`
`B. 
`
`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2) ................ 3 
`
`VI.  THE ‘264 PATENT ......................................................................................... 4 
`A. 
`Prosecution and Issuance of the ‘264 Patent ......................................... 5 
`
`B. 
`
`Claim Construction ............................................................................... 9 
`
`VII.  OVERVIEW OF PRIOR ART ...................................................................... 10 
`A.  U.K. Patent No. G.B. 2,106,775 (“Prohaska”; Exhibit 1003) ............. 10 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`U.S. Patent No. 3,192,551 (Exhibit 1004) ......................................... 13 
`
`German Patent No. DE 1,028,896 (Exhibit 1005) ............................. 14 
`
`PCT Pub. No. WO99/02383 (“Kotlarski ‘383”; Exhibit 1006) .......... 15 
`
`PCT Publication No. WO99/12784 (“Merkel”; Exhibit 1016) .......... 16 
`
`PCT Pub. No. WO00/34090 (“Kotlarski ‘090”; Ex. 1008) ................ 17 
`
`G.  U.S. Patent No. 3,121,133 (“Mathues”; Exhibit 1013) ...................... 18 
`
`VIII.  DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY
` ....................................................................................................................... 19 
`A. 
`Legal Standards ................................................................................... 19 
`
`1. 
`2. 
`
`Anticipation ............................................................................... 19 
`Obviousness .............................................................................. 20 
`
`i
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT No. 7,484,264
`
`
`Level of Skill in the Art .............................................................. 21 
`3. 
`Level of Skill in the Art............................................................ ..21
`3.
`Claim 1 Is Unpatentable ...................................................................... 22 
`Claim 1 Is Unpatentable .................................................................... ..22
`
`Claim 2 Is Unpatentable ...................................................................... 43 
`Claim 2 Is Unpatentable .................................................................... ..43
`
`Claim 3 Is Unpatentable ...................................................................... 51 
`Claim 3 Is Unpatentable .................................................................... ..5l
`
`A. 
`A.
`
`B. 
`B.
`
`C. 
`C.
`
`IX.  CONCLUSION .............................................................................................. 56 
`
`CONCLUSION ............................................................................................ ..56
`
`IX.
`
`ii
`
`
`
`
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`LIST OF EXHIBITS
`
`
`
`EXHIBIT
`1001
`
`1002
`
`1003  
`“Prohaska”
`1004 
`“Appel”
`1005  
`“Hoyler”
`1006 
`“Kotlarski ‘383”
`1007  
`
`1008 
`“Kotlarski ‘090”
`1009  
`
`1010
`
`1011
`
`1012  
`“Smithers”
`1013 
`“Matheus”
`1014 
`
`1015
`
`1016 
`“Merkel”
`1017 
`
`
`DESCRIPTION
`U.S. Patent No. 7,484,264
`
`October 10, 2014 Proof of Service filed by Patent Own-
`er in Civil Action No 12-574-LPS (consolidated)
`U.K. Patent No. GB 2,106,775 to Prohaska et al.
`
`U.S. Patent No. 3,192,551 to Appel
`
`German Patent No. DE1028896 to Hoyler
`
`PCT Pub. No. WO99/02383 to Kotlarski et al. (also pub-
`lished as U.S. Patent No. 6,279,191)
`U.S. Patent No. 6,279,191 to Kotlarski et al.
`
`PCT Publication No. WO00/34090 to Kotlarski (also
`published as U.S. Patent No. 6,523,218)
`U.S. Patent No. 6,523,218
`
`File History of U.S. Patent No. 7,484,264 (Application
`No. 11/760394)
`File History of U.S. Patent No. 7,228,588 (Application
`No. 10/312,279)
`U.S. Patent No. 3,088,155 to Smithers
`
`U.S. Patent No. 3,121,133 to Mathues
`
`Joint Claim Construction Chart
`
`Robert Bosch LLC’s Opening Claim Construction Brief,
`April 24, 2015
`PCT Pub. No. WO99/12784 to Merkel et al. (also pub-
`lished as U.S. Patent No. 6,295,690)
`U.S. Patent No. 6,295,690
`
`iii
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`EXHIBIT
`1018
`“Davis Decl.”
`1019
`
`1020  
`“Maslen Decl.”
`1021 
`“Eckhardt”
`1022 
`“Egner-Walter”
`1023 
`“De Block”
`1024
`
`1025
`
`1026 
`
`1027 
`
`1028
`
`DESCRIPTION
`Declaration of Dr. Gregory Davis, sworn to October 9,
`2015  
`Declaration of Dr. Daniel H. Kruger, sworn to October 9
`2015 
`Declaration of Dr. Eric Maslen, sworn to April 23, 2015
`and accompanying Technology Tutorial
`German Pub. No. DE10000373 to Eckhardt et al.  
`
`PCT Publication No. WO01/49537 to Egner-Walter et
`al.
`PCT Publication No. WO01/92073 to De Block et al.  
`
`Animation of Appel-Prohaska:
`Kruger Decl. Appendix A
`Animation of Hoyler-Prohaska:
`Kruger Decl. Appendix B
`Illustrations of Claim 1:
`Kruger Decl. Appendix C
`Illustrations of Claim 2:
`Kruger Decl. Appendix D
`Illustrations of Claim 3:
`Kruger Decl. Appendix E
`
`iv
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`I.
`
`Introduction
`Costco Wholesale Corporation (“Petitioner” or “Costco”) requests inter
`
`partes review (IPR) of Claims 1, 2, and 3 of U.S. Patent No. 7,484,264 (“the ‘264
`
`patent”) (Ex. 1001).
`
`II. Mandatory Notices Under 37 C.F.R. § 42.8
`Real Party-in-Interest: Costco is the real party-in-interest seeking IPR.
`
`Related Matters: The ‘264 patent and 17 other patents are asserted in Robert
`
`Bosch LLC v. Alberee Products Inc. et al., Civil Action No. 12-574-LPS, currently
`
`pending in the United States District Court for the District of Delaware (the “Del-
`
`aware Action”). Among these 17 additional patents are U.S. Patents Nos.
`
`7,228,588, 8,099,823, and 8,544,136, which are related to the ‘264 patent. The
`
`‘264 patent was previously asserted in Robert Bosch LLC v. SHB Int’l, Inc. et al.,
`
`No. 2:10cv1929 (D. Nev.), Robert Bosch LLC v. Zhejiang Wandeyuan Vehicle Fit-
`
`tings, Co., No. 2:10cv1931 (D. Nev.), and Robert Bosch LLC v. Ningbo Xinhai Au-
`
`tomobile Wiper Blade Manufactory Co., No. 2:10cv1927 (D. Nev.). Costco is con-
`
`currently petitioning for IPR of U.S. Patent Nos. 6,292,974, 6,836,926, 6,944,905,
`
`6,973,698, 7,228,588, 8,099,823, and 8,544,136, which are also asserted in the Dis-
`
`trict of Delaware matter. Petitioner is not aware of any other current judicial or
`
`administrative matters that would affect, or be affected by, a decision in this pro-
`
`ceeding.
`
`66783663_6
`
`1
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`Counsel and Service Information: Petitioner’s lead counsel, backup counsel,
`
`and service information are below. Petitioner consents to electronic service.
`
`
`
`
`
`m
`
`Lead Counsel
`Richard M. Koehl
`Reg. No. 54,231
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6062
`Fax (212) 422-4726
`rich-
`ard.koehl@hugheshubbard.com
`
`III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103
`The required fees are submitted herewith. If any additional fees are due at
`
`
`
`Back-Up Counsel
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6125
`
`Fax (212) 422-4726
`james.klaiber@hugheshubbard.co
`
`any time during this proceeding, the Office may charge such fees to Deposit Ac-
`
`count No. 083264.
`
`IV. Grounds for Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘264 patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the ‘264 patent. This petition is being filed less
`
`than one year after Petitioner was served with a complaint alleging infringement of
`
`the ‘264 patent. See Oct. 10, 2014 Proof of Service (Ex. 1002).
`
`V.
`
`Statement of Precise Relief Requested for Each Claim Challenged under
`37 U.S.C. § 312 and 37 C.F.R. §§ 42.22(a)(1) and 42.104(b)(1)-(2)
`A. Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1)
`
`Petitioner seeks cancellation of Claims 1, 2, and 3.
`
`66783663_6
`
`2
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`B.
`
`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2)
`
`Ground #1. Claims 1 and 2 encompass subject matter that is unpatentable
`
`under 35 U.S.C. § 102(b) in view of Prohaska (Ex. 1003).
`
`Ground #2. Claims 1 and 2 encompass subject matter that is unpatentable
`
`under 35 U.S.C. § 103(a)in view of Prohaska (Ex. 1003) and Appel (Ex. 1004).
`
`Ground #3. Claims 1 and 2 encompass subject matter that is unpatentable
`
`under 35 U.S.C. § 103(a) in view of Prohaska (Ex. 1003) and Hoyler (Ex. 1005).
`
`Ground # 4. Claims 1 and 2 encompass subject matter that is unpatentable
`
`under 35 U.S.C. § 103(a) in view of Kotlarski ‘383 (Ex. 1006) and Prohaska (EX.
`
`1003).
`
`Ground #5. Claims 1 and 2 encompass subject matter that is unpatentable
`
`under 35 U.S.C. § 103(a) in view of Merkel (Ex. 1016) and Prohaska (Ex. 1003).
`
`Grounds #6 - #9. Claim 3 encompasses subject matter that is unpatentable
`
`under 35 U.S.C. § 103(a) on any of Grounds #2-5 in further view of Kotlarski
`
`‘090 (Ex. 1008).
`
`Ground #10 - #13. Claim 3 encompasses subject matter that is unpatentable
`
`under 35 U.S.C. § 103(a) on any of Grounds #2-5 in further view of Mathues (Ex.
`
`1013).
`
`Ground #1 is not redundant of Grounds 2-5 because anticipation under 35
`
`U.S.C. § 102 is distinct from obviousness under 35 U.S.C. § 103(a). Grounds 2-5
`
`66783663_6
`
`3
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`are not redundant because Appel, Hoyler, Kotlarski ‘383, and Merkel each disclose
`
`different variants of wiper apparatus that are suitable for use with a wind deflector.
`
`Grounds 6-9 and 10-13 are not redundant because Kotlarski ‘090 and Mathues dis-
`
`close different variants of wiper blade apparatus comprising polymeric materials of
`
`different hardness suited to their functions in the apparatus.
`
`VI. The ‘264 Patent
`The ‘264 patent discloses and claims a windshield wiper assembly that com-
`
`prises three basic elements, namely: (i) a flexible spring support element, (ii) a
`
`wiper strip, and (iii) a wind deflector. Figure 1 of the ‘264 patent is reproduced be-
`
`low:
`
`
`
`
`
`The ‘264 patent states that prior art wind deflectors, being solid, were costly,
`
`heavy, stiff, and required “a more powerful drive system as well as a more expen-
`
`sive design of pendulum gear attached to it.” Ex. 1001 at 1:46 – 2:3. As a solution
`
`to these problems, the ‘264 patent discloses and claims wiper apparatus comprising
`
`a hollow wind deflector strip, having the general configuration depicted at left, be-
`
`low:
`
` ‘264 Patent Fig. 2
`
`
`
`
`
` Prohaska Fig. 3
`
`66783663_6
`
`4
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`
`
`
`
`
`
`
`
`
`
`But as shown at right above, long prior to the priority date of the ‘264 patent,
`
`it was known to provide a windshield wiper assembly with a hollow wind deflec-
`
`tion strip and to mount such a deflection strip using claw-like structures as shown
`
`by Prohaska. It was also known to make claw-like extensions of a relatively harder
`
`material, such as plastic. See e.g., Kotlarski ‘090, 5:46-47.1 It was equally well-
`
`known to co-extrude windshield wiper components utilizing polymeric materials of
`
`different hardness to provide whatever degree of hardness was required for a given
`
`application. See generally Mathues.
`
`A.
`
`Prosecution and Issuance of the ‘264 Patent
`
`The file history of the ‘264 patent is attached hereto as Exhibit 1008. The
`
`application that led to the ‘264 patent, Application No. 11/760394, was filed as a
`
`1 Because the translation of the PCT Publication (Ex. 1008) does not include refer-
`
`ence numbers for line citations, and because it encompasses the same subject mat-
`
`ter as U.S. Patent 6,523,218 (Ex. 1009), which issued from the PCT, for ease of
`
`reference the column:line citations refer to U.S. Patent No. 6,523,218 (Ex. 1009.)
`
`
`
`66783663_6
`
`5
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`divisional of Application No. 10/312279 which issued as U.S. Patent No.
`
`7,228,588 (“the ‘588 patent”). Ex. 1010 at 10. 2 The application claims priority to
`
`a German application filed April 26, 2001. Id. at 11. Of claims 1-20 that were filed,
`
`claims 1, 5, and 6 issued as claims 1, 2, and 3 respectively. Id. at 582.
`
`In a non-final Office Action dated January 9, 2008, the Examiner rejected all
`
`of the claims under 35 U.S.C. § 112 as being indefinite for a lack of antecedent ba-
`
`sis. Id. at 138. Claims 1-3, 5, 18, and 19 were also rejected under 35 U.S.C.
`
`§ 102(b) as being anticipated by U.S. Patent No. 3,088,155 to Smithers (Ex. 1012).
`
`See Ex. 1010 at 138. Smithers disclosed a wiper blade having an elongated belt
`
`shaped, twin rail, support element, with a wiper strip on a lower belt surface there-
`
`of and outer edges gripped by claw-like extensions. Id. Smithers also taught a
`
`wind deflection strip having two sides that diverged from a common point. Id.
`
`Claims 6-8 were rejected under 35 U.S.C. § 103(a) as obvious over Smithers
`
`in view of Mathues (Ex. 1013). See id. According to the Examiner, Mathues dis-
`
`closed claw-like extensions being of a harder material than an area closer to the
`
`base point, which Smithers lacked:
`
`The patent to Mathues discloses a wiper blade wherein the re-
`tention portion (22) of the blade (20) is harder than the remainder.
`
`
`2 Petitioner has filed a separate petition for IPR of claims 1, 12, and 14 of the ’588
`
`patent.
`
`66783663_6
`
`6
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`Mathues thus teaches making the retention portion of an article harder
`than the remainder. Such helps enhance the security of the joint. It
`would have been obvious to one of skill in the art to make the reten-
`tion portion of the deflection strip harder than the remainder, as taught
`by Mathues, to enhance the security of the connection between the
`strip and the support element.
`Ex. 1010 at 140.
`
`Applicant filed an Amendment and Request for Reconsideration on July 9,
`
`2008. See id. at 156, 159, 160. Applicant amended claim 1 to address the anteced-
`
`ent basis rejection and to include all of the limitations of claims 2-4, “such that
`
`amended claim 1 is the equivalent of claim 4 rewritten in dependent form.” Id. at
`
`159. The added limitations included a support means comprising a wall extending
`
`in the longitudinal direction of the wind deflection strip along its entire length. Id.
`
`at 157. This amendment—i.e., forming a support means as a wall—imported a
`
`“hollow” limitation into the spoiler of claim 1 and its dependent claims. See Davis
`
`Decl. (Ex. 1018) ¶ 55. The remaining claims either depended from the newly
`
`amended claim 1 (claims 5-8, 18 and 19) or were cancelled.
`
`The Examiner issued a Final Rejection on October 17, 2008. Claims 1, 5 and
`
`19 were rejected under 35 U.S.C. § 102(a) over PCT Publication No. WO01/49537
`
`to Egner-Walter et al. (“Egner-Walter”) (Ex. 1022). See Ex. 1010 at 548. Egner-
`
`Walter disclosed a wiper blade having an elongated belt-shaped, flexible support
`
`element, including two flexible rails which extended from opposing notches in a
`
`66783663_6
`
`7
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`rubber-elastic wiper strip, the wiper strip being disposed on a lower belt surface of
`
`the support element. Id. at 549. A wind deflection strip, located on an upper belt
`
`surface of the support element, had a constant cross-section, two diverging sides,
`
`free-ends with claw-like extensions that gripped outer edges of the support ele-
`
`ment, and a support means in the form of a wall. Id.
`
`Claims 1, 5, 18 and 19 were also rejected as obvious over De Block (Ex.
`
`1023). Id. at 550. According to the Examiner, De Block disclosed all of the same
`
`elements as Egner-Walter, except a wall (i.e., support means) extending between
`
`two diverging sides. See id. Prohaska, however, disclosed a wind deflection strip
`
`with “a support means in the form of wall (31) that connects the diverging sides
`
`spaced from the base point.” Id. The Examiner concluded that “[i]t would have
`
`been obvious to one of skill in the art to provide the wind deflection strip of De
`
`Block with a support means in the form of a connecting wall between the diverging
`
`sides, as clearly suggested by Prohaska, to enhance the structural integrity of the
`
`deflection strip.” Id.
`
`The Examiner also rejected claims 6-8 over Egner-Walter in view of Ma-
`
`thues, and over De Block in view of Prohaska, and in further view of Mathues. Id.
`
`at 551. Egner-Walter and the De Block/Prohaska combination each disclosed all
`
`recited elements except a harder material for the claw-like extensions. Id. Thus, in
`
`making these rejections, the Examiner again relied on the same Mathues-based ra-
`
`66783663_6
`
`8
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`tionale as in the first Office Action. Id.
`
`Following the Final Rejection, an interview was held on November 19,
`
`2008. Id. at 564. The Examiner’s record indicates that the interview discussion was
`
`directed to perfecting priority. Id. The Examiner decided that Applicant’s submis-
`
`sion of a certified translation of the German priority patent was sufficient to afford
`
`it an April 26, 2001 priority date. Id. On November 25, 2008, Applicant filed a Re-
`
`quest for Reconsideration without amendment, requesting withdrawal of the rejec-
`
`tions because neither Egner-Walter nor De Block qualified as prior art under 35
`
`U.S.C. § 102. See id. at 570-71.
`
`On December 18, 2008, the Examiner issued a Notice of Allowance. Id. at
`
`573. Applicant never substantively addressed the rejections over Prohaska or Ma-
`
`thues, and the Examiner appears never to have considered any of the obviousness
`
`combinations presented by Petitioner here.
`
`B. Claim Construction
`
`For the purposes of inter partes review Claims 1, 2, and 3 should be accord-
`
`ed their “broadest reasonable construction” in light of the specification and prose-
`
`cution history of the ‘264 patent. 37 C.F.R. § 42.100(b). Petitioner asserts that none
`
`of the claim terms in the ‘264 patent need to be construed for purposes of this peti-
`
`tion because under any reasonable construction the claims are invalid.
`
`In the Delaware Action cited above, the Patent Owner has asserted that the
`
`66783663_6
`
`9
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`term “at least one support means (58, 144)” in Claim 1 should be construed under
`
`35 U.S.C. 112(6). See Joint Claim Construction Chart, Exhibit 1014 at 4. Accord-
`
`ing to Patent Owner, the function of “at least one support means (58, 144)” is “to
`
`stabilize the sides of the wind deflection strip” and this function corresponds to “a
`
`wall connected to both sides of the wind deflection strip, or the channel wall facing
`
`the upper belt surface of the support element, and their equivalents.” Id.
`
`Patent Owner has also asserted in the Delaware Action that the term “sup-
`
`port element” “should be given its plain and ordinary meaning in each of the as-
`
`serted patents,” including the ‘264 patent. See Robert Bosch LLC’s Opening Claim
`
`Construction Brief at 11-12, April 24, 2015 (Ex. 1015).
`
`While the claim construction proceedings in Delaware are not governed by
`
`the “broadest reasonable construction” standard, and Petitioner does not agree that
`
`Patent Owner’s construction represents the broadest reasonable construction of this
`
`claim term in the abstract, for purposes of this proceeding the Patent Owner should
`
`not be heard to assert a narrower construction than was set forth in the Patent
`
`Owner’s claim construction briefing in the Delaware Action.
`
`VII. Overview of Prior Art
`
`A. U.K. Patent No. G.B. 2,106,775 (“Prohaska”; Exhibit 1003)
`
`Prohaska was published on April 20, 1983, and is therefore prior art to the
`
`‘264 patent under 35 U.S.C. § 102(b). Prohaska is directed to wiper blades having
`
`66783663_6
`
`10
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`spoilers that can be connected in a simple way, which counter the lifting force that
`
`occurs at high vehicle speeds, thereby ensuring reliable contact between the wiper
`
`element and windscreen. Prohaska (Ex. 1003), 1:8-16, 1:38-42. Prohaska explains
`
`that a variety of spoilers have emerged in response to the problem of wind-lift, but
`
`these spoilers all had disadvantages; some could only be secured to the wiper strip
`
`in a relatively complicated way, and others:
`
`[I]ncluding a spoiler formed out of the wiper element might not
`be stable enough to act against the air stream in all cases, bcause [sic]
`of the rubber-elastic materials normally used for the production of
`wiper elements. Moreover, as far as technology is concerned, the pro-
`duction of such a wiper element might be very difficult and therefore
`expensive.
`Id. at 1:25-37.
`
`To avoid these concerns, Prohaska discloses a wiper blade having a wiper
`
`element made of a rubber-elastic material, stiffened by a flexible strip extending
`
`over almost the entire length of the wiper element, and a spoiler formed or attached
`
`on the flexible strip “[t]o maintain contact pressure in use.” Id. at 1:443-52, 2:56-
`
`58. During prosecution, the Examiner explained that the Prohaska deflection strip:
`
`[H]as two sides (21,22) that diverge from a common base and
`pass on opposite sides of a cavity. The wind deflection strip has free
`ends with claw-like extensions that grip around outer edges of the
`wiper strip. The wind deflection strip also has a support means in the
`form of a wall (31) that connects the diverging sides spaced from the
`
`66783663_6
`
`11
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`base point.
`Ex. 1010 at 550.
`
`In several examples, the spoiler forms an integral part with the flexible strip,
`
`id. at 2:71-75, but importantly, Prohaska also teaches that “it would also be possi-
`
`ble to insert individual flexible strips in the head of the wiper element . . . and to
`
`equip one of them with a spoiler.” Id. at 4:1-7. Prohaska notes that “[i]t is easily
`
`possible to retrofit a wiper blade by squeezing a spoiler against its flexible strip or
`
`clipping it on this flexible strip,” id. at 1:68-70, and teaches elongations formed as
`
`individual claws that extend over the length of the flexible strip, id. at 1:78-83.
`
`The embodiment reflected in Figure 3, reproduced below, includes a flexible
`
`strip with its back developed as a spoiler that is hollow and has an approximately
`
`“triangular cross-section.” Id. at 2:125 – 3:6. Like several of the other embodi-
`
`ments, this embodiment is formed with two downward elongations that engage in
`
`the longitudinal grooves of the wiper strip.
`
`
`
`
`
` Prohaska Fig. 3
`
`66783663_6
`
`12
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`B. U.S. Patent No. 3,192,551 (“Appel”; Exhibit 1004)
`
`U.S. Patent No. 3,192,551 to Appel (“Appel”) issued on July 6, 1965 and is
`
`therefore prior art to the ‘264 patent under 35 U.S.C. § 102(b). Appel was not be-
`
`fore the Examiner during prosecution of the ‘264 patent.
`
`Appel discloses a wiper blade assembly comprising “a spring backbone ele-
`
`ment 36” which “may be adapted to carry a conventional rubber wiping blade 37,
`
`by providing a slot 38 extending almost throughout the length and terminating just
`
`short of the end 39 for accommodating a flanged rib 40 of the rubber blade project-
`
`ing therethrough.” Id. at 1:23-25, 3:63-69. These features are illustrated in Figures
`
`1, 5 and 6 of Appel, reproduced below.
`
`
`
` Appel Fig. 1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Appel Fig. 6
`
`
`
`
`
` Appel Fig. 5
`
`66783663_6
`
`13
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`C. German Patent No. DE 1,028,896 (“Hoyler”; Exhibit 1005)
`
`German Patent No. 1,028,896 to Hoyler (“Hoyler”) issued on April 24,
`
`1958, and is therefore prior art to the ‘264 patent under 35 U.S.C. § 102(b). Hoyler
`
`was not before the Examiner during prosecution of the ‘264 patent.
`
`Hoyler discloses a wiper blade assembly comprising two longitudinal
`
`springs positioned in lateral slots of a wiper strip. Id. at cols. 1, 2. As compared
`
`with conventional bracket-style wiper assemblies, Hoyler teaches, the flat spring
`
`design reduces the weight of the wiper blade moving parts, thus lowering the stress
`
`upon the drive elements. Id. at col. 1. The lower weight results in less wear and
`
`tear after an identical running time and facilitates faster wiping speeds. Id. Figure
`
`1 of Hoyler is reproduced below.
`
`
`
`
`
` Hoyler Fig. 1
`
`66783663_6
`
`14
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`
`D.
`
`PCT Pub. No. WO99/02383 (“Kotlarski ‘383”; Exhibit 1006)
`
`Kotlarski ‘383 was published on January 21, 1999, and is therefore prior art
`
`to the ‘264 patent under 35 U.S.C. § 102(b). Kotlarski ‘383 discloses a wiper
`
`blade assembly comprising two spring rails (30, 32) positioned in longitudinal
`
`grooves of a wiper strip and between which a wind deflector strip (200) is mount-
`
`ed. Figures 2 and 12 of Kotlarski ‘383 are reproduced below:
`
`
`
`
`The two spring rails are spaced apart from one another (id. at 3:38-40)3 and
`
`“protrude out” of the grooves in the wiper strip such that their longitudinal edges
`
`
`3 Because the translation of the PCT Publication (Ex. 1006) does not include refer-
`
`ence numbers for line citations, and because it encompasses the same subject mat-
`
`ter as U.S. Patent 6,279,191 (Ex. 1007), which issued from the PCT, for ease of
`
`reference the column and line citations refer to U.S. Patent No. 6,279,191.
`
`66783663_6
`
`15
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`point away from one another, id. at 3:61-64. Kotlarski ‘383 further discloses
`
`“claws 70” which “form fastening means for retaining the connection device 16 on
`
`support element 12.” Id. at 4:51-60. The holders “grip the outer edges . . . of the
`
`spring rails in an exposed portion,” using “clawlike protrusions.” Id. at 4:20-27.
`
`E.
`
`PCT Publication No. WO99/12784 (“Merkel”; Exhibit 1016)
`
`Merkel was published March 18, 1999 and is therefore prior art to the ‘264
`
`patent under 35 U.S.C. § 102(b). Merkel was not before the Examiner during the
`
`prosecution of the ‘264 patent. Merkel Figures 1 and 4 are reproduced belowP
`
`
`
`Merkel describes the above wiper blade assembly as comprising a wiper
`
`strip (14),4 two spring rails (30, 32) positioned in grooves of the wiper strip, and a
`
`wind deflector (54) having a recess (62) for accommodating a wiper arm connect-
`
`ing device (16). The wiper arm connecting device has pairs of legs (64, 66) which
`
`
`4 Because the translation of the PCT Publication (Ex. 1016) does not include refer-
`
`ence numbers for line citations, and because it encompasses the same subject mat-
`
`ter as U.S. Patent 6,295,690 (Ex. 1017), which issued from the PCT, for ease of
`
`reference the column and line citations refer to U.S. Patent No. 6,295,690.
`
`66783663_6
`
`16
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`fit over and under the spring rails (30, 32). Merkel teaches that “[a]dvantages from
`
`a manufacturing standpoint can be obtained if the wiper strip has a constant cross
`
`section substantially over its entire length.” Id. at 2:15-21, 2:46-48. Further, ad-
`
`vantages of mounting and assembly are obtained if the connection device is em-
`
`bodied as a retaining means, and specifically, that “the longitudinal edges of the
`
`spring rails that protrude from the longitudinal grooves of the wiper strip offer an
`
`excellent capability of positioning and fastening the connection device.” Id. at
`
`2:28-32, 2:54-56.
`
`F.
`
`PCT Pub. No. WO00/34090 (“Kotlarski ‘090”; Ex. 1008)
`
`Kotlarski ‘090 was published June 15, 2000. Patent owner has not asserted
`
`that the ‘264 patent has an earlier date of invention than its earliest possible priori-
`
`ty date. See Ex. 1017 at 11. Accordingly, Kotkarski ‘090 is prior art to the ‘264 pa-
`
`tent under 35 U.S.C. § 102(a). Figure 5 of Kotlarski ‘090 is reproduced below.
`
`
`
`
`
`Kotlarski ‘090 discloses a wiper blade having a spring-elastic support ele-
`
`ment with two rails that sit in two longitudinal grooves of a rubber-elastic wiper
`
`strip, a spoiler integrally joined with, and included as an extension of, the wiper
`
`66783663_6
`
`17
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`strip, and a plurality of retainers. See Kotlarski ‘090, 3:1-15, 3:57-60, 4:62-64.5
`
`The retainers “are provided with opposed securing claws 58 (FIG. 6), each of
`
`which clasps one of the two longitudinal rails 32, transversely to their length, on
`
`their longitudinal edges 33 remote from one another.” Id. at 4:43-48. In a preferred
`
`embodiment, the retainers are made of plastic. Id. at 5:45-47.
`
`G. U.S. Patent No. 3,121,133 (“Mathues”; Exhibit 1013)
`
`Mathues was published February 11, 1964, and is therefore prior art to the
`
`‘264 patent under 35 U.S.C. § 102(b). Mathues is directed to “a method of making
`
`a squeegee which includes a plurality of strata of different hardness elastomers
`
`whereby the completed squeegee includes an integral retention portion together
`
`with a flexible wiping portion.” Mathues, 1:12-16. During prosecution, the Exam-
`
`iner explained:
`
`The patent to Mathues discloses a wiper blade wherein the re-
`tention portion (22) of the blade (20) is harder than the remainder.
`Mathues thus teaches making the retention portion of an article harder
`than the remainder. Such helps enhance the security of the joint. It
`would have been obvious to one of skill in the art to make the reten-
`tion portion of the deflection strip harder than the remainder, as taught
`by Mathues, to enhance the security of the connection between the
`strip and the support element.
`Ex. 1010 at 140.
`
`
`5 See footnote 1 supra.
`
`66783663_6
`
`18
`
`

`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,484,264
`
`VIII. Detailed Explanation of Grounds for Unpatentability
`
`
`Petitioner respectfully submits that this Petition demonstrates a reasonable
`
`likelihood that the Petitioner will prevail in demonstrating the unpatentability of
`
`each of Claims 1, 2, and 3 of the ‘264 patent. The references cited herein provide
`
`technical disclosures that the Office did not have or did not fully consider.
`
`A. Legal Standards
`
`1.
`
`Anticipation
`
`
`“A claim is anticipated only if each and every element as set forth in the
`
`claim is found, either expressly or inherently described