Filed: October 24, 2016
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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,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00040
`Patent 7,484,264
`____________
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`PETITIONER’S REPLY IN SUPPORT OF PETITION
`PURSUANT TO 37 C.F.R. § 42.23
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`IPR2016-00040
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES .................................................................................... ii
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`CERTIFICATE OF WORD COUNT ........................................................................ v
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`I.
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`II.
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`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 2
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`CLAIMS 1, 2, AND 3 OF THE ‘264 PATENT Encompass Subject
`Matter that would have been OBVIOUS in view of THE
`INSTITUTED COMBINATIONS .................................................................. 5
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`A.
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`B.
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`C.
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`D.
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`The Differences Between Conventional and Flat-Spring
`Wipers Would Not Have Deterred a Person of Ordinary Skill
`From Applying Teachings of Spoiler Art ............................................. 5
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`There was Reason to Improve the Wipers of Merkel and
`Kotlarski ’383 ........................................................................................ 9
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`Prohaska Does Not Teach Away From a Hollow Spoiler .................. 13
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`The “Binary Component” of Dependent Claim 3 Would Have
`Been Obvious in Further View of Kotlarski ’090 or Mathues ............ 15
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`III.
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`PURPORTED SECONDARY CONSIDERATIONS CANNOT
`OVERCOME PRIMA FACIE OBVIOUSNESS BECAUSE THERE
`IS NO EVIDENCE OF A NEXUS ............................................................... 18
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`IV. ATTACKS ON DR. DAVIS’S CREDIBILITY ARE
`INSUPPORTABLE IN FACT AND LAW ................................................... 23
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`A.
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`B.
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`Prior Consistent Statements Support Dr. Davis’s Credibility
`and Accurately Present Dr. Davis’s Opinions..................................... 23
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`Prior Indefiniteness Opinions Regarding a Different Patent
`Are Immaterial .................................................................................... 24
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`V.
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`CONCLUSION .............................................................................................. 25
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`CERTIFICATE OF SERVICE .................................................................................. 1
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`IPR2016-00040
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF AUTHORITIES
`Cases ................................................................................................................ Page(s)
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`ABT Sys., LLC v. Emerson Elec. Co.,
`797 F.3d 1350 (Fed. Cir. 2015) .......................................................................... 19
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`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 3
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`In re Antor Media,
`689 F.3d 1282 (Fed. Cir. 2012) .......................................................................... 23
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`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) ............................................................................ 6
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`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 25
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`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
` 567 F.3d 1314 (Fed. Cir. 2009) ......................................................................... 14
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`DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
`Co.,
`464 F.3d 1356 (Fed. Cir. 2006) .................................................................. 4, 5, 15
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`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) .............................................................................. 3
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`GraftTech Int’l Holdings, Inc. v. Laird Techs. Inc., No. 2015-1796,
`2016 WL 3357427 (Fed. Cir. June 17, 2016) ............................................... 18, 19
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`Grobler v. Apple Inc., No. 12-CV-01534-JST,
`2014 WL 1867043 (N.D. Cal. May 6, 2014) ...................................................... 25
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`K-Swiss Inc. v. Glide N Lock GmbH,
`567 F. App’x 906 (Fed. Cir. 2014) ..................................................................... 22
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`KSR International Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
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`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 14
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`ii
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`TABLE OF AUTHORITIES
`Cont’d
`Cases ................................................................................................................ Page(s)
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`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .................................................................... 12, 15
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`Okajima v. Bourdeau,
`261 F.3d 1350 (Fed. Cir. 2001) ............................................................................ 4
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`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .................................................................... 18, 21
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`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 21
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`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`600 F. App’x 755 (Fed. Cir. 2015) ..................................................................... 12
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`Pregis Corp. v. Kappos,
`700 F.3d 1348 (Fed. Cir. 2012) .......................................................................... 22
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`Randall Mfg. v. Rea,
`733 F.3d 1355 (Fed. Cir. 2013) ...................................................................passim
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`Sakraida v. Ag Pro, Inc.,
`425 U.S. 273 (1976) .......................................................................................... 2, 4
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`Western Union Co. v. Moneygram Payment Sys., Inc.,
`626 F.3d 1361 (Fed. Cir. 2010) .......................................................................... 19
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`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) .......................................................................... 23
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`Statutes and Rules
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`35 U.S.C. § 103 ........................................................................................ 2, 10, 11, 18
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`35 U.S.C. § 103(a) ..................................................................................................... 1
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`Federal Rule of Evidence 801(d) ............................................................................. 24
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`IPR2016-00040
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`TABLE OF AUTHORITIES
`Cont’d
`Cases ................................................................................................................ Page(s)
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`Regulations
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`37 C.F.R. § 42.104(b)(5) .......................................................................................... 23
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`IPR2016-00040
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(c) and (d) Petitioner certifies that the word
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`count of Petitioner’s Reply in Support of the Petition (exclusive of any table of
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`contents, table of authorities, listing of facts which are admitted, denied, or cannot
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`be admitted or denied, certificate of service or word count, or appendix of exhibits)
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`as measured by Microsoft Word is 5,395 words.
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`IPR2016-00040
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Costco Wholesale Corporation (“Petitioner”) submits this Reply in further
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`support of the unpatentability of claims 1, 2, and 3 of U.S. Patent No. 7,484,264
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`(the “’264 Patent”; Ex. 1001) under 35 U.S.C. § 103(a) on the following instituted
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`grounds:
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`• (1) Claims 1 and 2 over PCT WO99/02383 to Kotlarski et al. (“Kotlarski
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`’383”; Ex. 1006)1 and U.K. Patent Application No. GB 2,106,775 to
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`Prohaska et al. (“Prohaska”; Ex. 1003);
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`• (2) Claims 1 and 2 over PCT WO99/12784 to Merkel et al. (“Merkel”; Ex.
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`1016)2 and Prohaska;
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`• (3) Claim 3 over Kotlarski ’383, Prohaska, and PCT WO00/34090 to
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`Kotlarski (“Kotlarski ’090”; Ex. 1008);3
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`• (4) Claim 3 over Merkel, Prohaska, and Kotlarski ’090;
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`• (5) Claim 3 over Kotlarski ’383, Prohaska, and U.S. Patent No. 3,121,133 to
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`1 As in the Petition, citations to Kotlarski ’383 refer to Exhibit 1007. See Petition
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`for Inter Partes Review of U.S. Patent 7,484,264 (the “Petition”) (Paper No. 1), 15
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`n.3.
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`2 As in the Petition, citations to Merkel refer to Exhibit 1017. See Petition, 16 n.4.
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`3 As in the Petition, citations to Kotlarski ’090 refer to Exhibit 1009. See Petition, 5
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`n.1.
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`Mathues (“Mathues”; Ex. 1013); and,
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`• (6) Claim 3 over Merkel, Prohaska, and Mathues.
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`The Board has already found “a reasonable likelihood that Petitioner would prevail
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`in proving the unpatentability” of these claims. See Institution Decision (Paper No.
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`16) (the “Decision”), 11–17, 19.
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`I.
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`LEVEL OF ORDINARY SKILL IN THE ART
`In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
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`Court reaffirmed that the 35 U.S.C. § 103 statutory phrase, “ordinary skill in the
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`art,” includes a degree of “ingenuity” or problem solving skill. Sakraida v. Ag Pro,
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`Inc., 425 U.S. 273, 279 (1976) (citation omitted); see KSR, 550 U.S. at 417, 427.
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` “Under the correct analysis, any need or problem known in the field of
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`endeavor at the time of invention and addressed by the patent can provide a reason
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`for combining the elements in the manner claimed.” KSR, 550 U.S. at 420. When
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`such a problem is identified, the relevant legal question is whether the conception
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`of a claimed solution “was a design step well within the grasp of a person of
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`ordinary skill in the relevant art,” id. at 427, or whether it required “more ingenuity
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`and skill . . . than were possessed by an ordinary mechanic acquainted with the
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`business.” Sakraida, 425 U.S. at 279 (citation omitted); see also KSR, 550 U.S. at
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`417.
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`Robert Bosch LLC (“Patent Owner”) is thus wrong in asserting that the
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`statutory phrase “ordinary skill in the art” connotes merely a level of education or
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`work experience. See Patent Owner Response (Paper No. 28) (the “Response”),
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`1–2. A person having ordinary skill in the art “is a hypothetical person who is
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`presumed to know the relevant prior art,” In re GPAC Inc., 57 F.3d 1573, 1579
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`(Fed. Cir. 1995), and how to practice the subject matter disclosed in prior art
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`patents, see, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
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`1355 (Fed. Cir. 2003) (“[B]oth the claimed and unclaimed disclosures in a prior art
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`patent are [presumptively] enabled.”).
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`Prior to the claimed invention of the ’264 Patent, the windshield wiper art
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`included, inter alia, flat-spring wipers (e.g., U.S. Patent No. 3,192,551 to Appel
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`(“Appel”; Ex. 1004); DE 1028896 to Hoyler (“Hoyler”; Ex. 1005)), conventional
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`wipers mounted with hollow spoilers (e.g., Prohaska), and flat-spring wipers
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`having solid spoilers (e.g., Merkel, Kotlarski ’383, Kotlarski ’090). See Petition,
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`10–18. The ’264 Patent acknowledges that the prior art includes a wiper with a
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`spoiler attached directly to a flat-spring support element, and purports to improve
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`over it by substituting a hollow spoiler for the solid spoiler. See ’264 Patent, 1:46–
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`60 (citing DE 19736368 [Ex. 1010, p. 279]4), 1:60–2:15.
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`4 Hereinafter, citations are to the English counterpart, U.S. Patent No. 6,292,974
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`(the “’974 Patent”; Ex. 1105).
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`In analyzing whether this claimed subject matter was non-obvious at the
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`time of its making by the ’264 Patent applicants, it is both necessary and
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`appropriate to consider whether the combination of Merkel or Kotlarski ’383 with
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`Prohaska is one that “‘arranges old elements with each performing the same
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`function it had been known to perform’ and yields no more than one would expect
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`from such an arrangement,” KSR, 550 U.S. at 417 (quoting Sakraida, 425 U.S. at
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`282), or whether the substitution would have been “beyond” the “skill” of a person
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`having ordinary skill in the art. Id. “[A]n implicit motivation to combine [prior art
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`references] exists . . . when the ‘improvement’ is technology-independent and the
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`combination of references results in a product or process that is more desirable, for
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`example because it is stronger, cheaper, . . . faster, lighter, . . . or more efficient.”
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`DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
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`1356, 1368 (Fed. Cir. 2006).
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` In a parallel proceeding involving U.S. Patent No. 6,973,698 (the “’698
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`Patent”), the Board found that the prior art of record reflects an appropriate skill
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`level, relying on the very same case that Patent Owner now suggests supports a
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`different outcome. See Institution Decision, IPR2016-00034, Paper No. 16, at 22
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`(quoting Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Here too,
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`the prior art of record reflects and indeed prescribes the baseline of knowledge and
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`skill against which the obviousness or non-obviousness of the challenged claims
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`must be measured. See KSR, 550 U.S. at 427.
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`II. CLAIMS 1, 2, AND 3 OF THE ‘264 PATENT ENCOMPASS SUBJECT
`MATTER THAT WOULD HAVE BEEN OBVIOUS IN VIEW OF
`THE INSTITUTED COMBINATIONS
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` The Differences Between Conventional and Flat-Spring Wipers A.
`Would Not Have Deterred a Person of Ordinary Skill From
`Applying Teachings of Spoiler Art
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`Patent Owner has not disputed, or even addressed, the reasons why a person
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`of ordinary skill would have modified the wipers of Merkel and Kotlarski ’383
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`with a hollow spoiler, as claimed: to reduce the wiper’s weight, material, and cost
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`of manufacture. See, e.g., Petition, 20–21, 38–43; Ex. 1018 ¶¶ 54–56. Nor has
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`Patent Owner disputed Petitioner’s assertion that these are implicit motivations,
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`recognized as a matter of law. See DyStar, 464 F.3d at 1368. Patent Owner instead
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`argues that conventional wipers are “fundamentally different” from flat-spring
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`wipers, and that with respect to the latter, “the conventional thinking at the time
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`was to avoid any additional components on the beam.” Response, 3–5. This
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`assertion is contrary to the evidence of record, including the ’264 Patent’s own
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`disclosure.
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`Prior to the claimed invention, it was known that flat-spring wipers, like
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`conventional wipers, were prone to wind-lift at high speeds. Merkel explains this
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`by reference to Hoyler, a flat-spring wiper dating back to 1958: “At relatively high
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`vehicle speeds, given the cooperation of the[] two aforementioned pressures, both
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`of which are oriented counter to the wiper blade contact pressure, this contact
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`pressure is reduced at least enough that proper wiping is no longer possible.”
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`Merkel, 1:32–47; see also Ex. 1018 ¶ 27. Prohaska likewise teaches that
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`conventional wipers are susceptible to reduced contact pressure as a product of
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`these same forces. Prohaska, 1:8–15; Ex. 1018 ¶ 25.
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`The problem of wind-lift was not only well-known and understood, but by
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`prior to the claimed invention, it had been solved. Spoilers (i.e., “wind deflection
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`strips”) were known to counter the liftoff tendencies of both conventional and flat-
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`spring wipers. See Ex. 1018 ¶¶ 24–27. Prohaska describes several embodiments of
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`a spoiler arranged on a conventional wiper such that “the lifting force created by
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`the air stream is on one hand deflected from the wiper blade and on the other hand
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`transmitted to the wiper element.” Prohaska, 1:53–57. Likewise, Merkel describes
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`a flat-spring wiper which includes a “wind deflector strip” whose “leading-edge
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`face” “counteracts the liftoff tendency of the two pressures and thus assures
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`excellent cleaning quality.” Merkel, 2:15–24; see also Kotlarski ’383, 1:66–2:4.
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`The ’264 Patent’s own disclosure confirms Petitioner’s understanding and
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`undermines Patent Owner’s contention that a person of ordinary skill would not
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`have attached a spoiler to a flat-spring wiper: it cites a flat-spring wiper having a
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`spoiler fastened directly to the spring support element as prior art. ’264 Patent,
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`1:46–60 (citing Ex. 1010, p. 279); see also, e.g., Constant v. Advanced Micro-
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`Devices, Inc., 848 F.2d 1560, 1569–70 (Fed. Cir. 1988) (“A statement in a patent
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`that something is in the prior art is binding on the applicant and patentee for
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`determinations of anticipation and obviousness.”). It is not disputed that flat-
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`springs are affected by structural additions, but the state of the art was such that
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`this so-called “sensitive” behavior (Response, 3, 9) was a factor that persons of
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`ordinary skill readily understood and accounted for in design. See Ex. 1100 (Peck
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`Decl.) ¶ 9; see also Kotlarski ’090, 4:43–48 (describing retainers “provided with
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`opposed securing claws 58 (FIG. 6), each of which clasps one of the two
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`longitudinal rails 32, transversely to their length, on their longitudinal edges 33
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`remote from one another”).
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`It is thus clear that prior to the claimed invention, persons of ordinary skill in
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`the windshield wiper art had already borrowed spoiler teachings from the older
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`conventional wipers and successfully applied them to flat-spring wipers. See, e.g.,
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`Ex. 1018 ¶ 57. All of this background information “is part of the store of public
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`knowledge that must be consulted when considering whether a claimed invention
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`would have been obvious.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir.
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`2013).
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`In Randall, patentee argued “that one of ordinary skill in the art would not
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`have been motivated to combine the cited references, both because of alleged
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`physical impediments to their combination and because the references each taught
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`distinct features that were at cross-purposes with one another.” Id. at 1360. Randall
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`countered that the state of the art included well-known options for avoiding any
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`alleged incompatibility, and submitted numerous prior art references as evidence.
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`Id. The Board declined to consider these background references, opting instead to
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`rely solely on the specific references cited in the claim rejection. Id. The Federal
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`Circuit held this was in error:
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`By narrowly focusing on the four prior-art references cited by the
`Examiner and ignoring the additional record evidence Randall cited to
`demonstrate the knowledge and perspective of one of ordinary skill in
`the art, the Board failed to account for critical background information
`that could easily explain why an ordinarily skilled artisan would have
`been motivated to combine or modify the cited references to arrive at
`the claimed inventions.
`Id. at 1362.
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`Just as in Randall, and contrary to Patent Owner’s contention (see, e.g.,
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`Response, 2), at least Merkel, Kotlarski ’383, Prohaska, Kotlarski ’090, and the
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`’974 Patent demonstrate the “background knowledge possessed by a person having
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`ordinary skill in the art,” namely that spoilers effectively counter wind-lift
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`tendencies of conventional and flat-spring wipers and that wiper components,
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`including spoilers, can be attached in various ways, including to the spring support
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`element directly. Randall, 733 F.3d at 1362 (citing KSR, 550 U.S. at 418). It is this
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`knowledge that informs “the inferences and creative steps” that such a person
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`would have employed. Id.
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`Viewed through this lens, it is apparent that the differences between
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`conventional and flat-spring wipers would not have deterred a person of ordinary
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`skill from applying teachings of conventional wiper spoiler art to pre-existing flat-
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`spring wiper spoilers. Given the disclosures of Merkel, Kotlarski ’383, and
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`Prohaska, the relevant legal question is whether “[a] person having ordinary skill in
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`the art could have combined [Merkel or Kotlarski ’383] . . . with [a hollow spoiler]
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`. . . in a fashion encompassed by [the challenged claims], and would have seen the
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`benefits of doing so.” KSR, 550 U.S. at 422. The answer here is clearly “yes.”
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`B.
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`There was Reason to Improve the Wipers of Merkel and
`Kotlarski ’383
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`Only a few features claimed in the ’264 Patent purport to improve over the
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`prior art, namely a hollow spoiler having a support means (i.e., a wall), attached
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`with claw-like extensions. See, e.g., ’264 Patent, 2:4–28; see also Ex. 2003
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`(Dubowsky Decl.) ¶¶ 29–32. With the exception of the “binary component” of
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`dependent claim 3, discussed infra, Patent Owner has never argued that these
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`specific improvements are not obvious; instead, it has taken the extraordinary
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`position that there was no reason to make any improvement to Merkel or Kotlarski
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`’383 because both “disclose a complete beam blade solution.” Response, 5. The
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`reasons Petitioner presented remain unaddressed. See, e.g., Petition, 20–21, 38–43;
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`Ex. 1018 ¶¶ 54–58, 60–67.
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`If the Board credited this argument, the entire obviousness doctrine would
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`be rendered superfluous; 35 U.S.C. § 103 is intended to preclude monopolies on
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`trivial improvements. As the Supreme Court observed, “[g]ranting patent
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`protection to advances that would occur in the ordinary course without real
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`innovation retards progress and may, in the case of patents combining previously
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`known elements, deprive prior inventions of their value or utility.” KSR, 550 U.S.
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`at 419. And even though, over time, it “is expected in the normal course” that
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`progress will begin “from higher levels of achievement,” improvements that are
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`“the results of ordinary innovation” will still not be “the subject of exclusive rights
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`under the patent laws.” KSR, 550 U.S. at 427.
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`By the time of the claimed invention, the flat-spring and spoiler windshield
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`wiper art constituted a series of minor improvements, exemplified below:
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`Exemplary Timeline of Improvements5
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`Aug. 21, 19976 Sept. 8, 19977 Dec. 7, 19988 May 29, 20009 Apr. 26, 200110
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`The ’264 Patent simply reflects a further iteration in a series of minor
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`improvements, all of which occurred “in the ordinary course” and none of which
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`were beyond the skill of a person of ordinary skill in the windshield wiper art. See
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`KSR, 550 U.S. 417, 419.
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`5 The dates reflect the earliest priority date listed on the face of each reference,
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`respectively.
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`6 ’974 Patent, Fig. 3.
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`7 Merkel, Fig. 3.
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`8 Kotlarski ’090, Fig. 6.
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`9 U.S. Patent No. 6,944,905 (Ex. 1018, p. 78), Fig. 2. Although this patent is not
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`statutory prior art, it nonetheless indicates that minor iterative improvements on
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`flat-spring wipers with spoilers were common in this field.
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`10 ’264 Patent, Fig. 2.
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`IPR2016-00040
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`Patent Owner has not adequately supported its suggestion that the situation
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`here is different than every other improvement encompassed by § 103. Dr.
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`Dubowsky’s conclusory assertion (Ex. 2003 ¶ 74) adds nothing to the analysis, and
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`the single authority Patent Owner points to, Plas-Pak Indus., Inc. v. Sulzer Mixpac
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`AG, 600 F. App’x 755 (Fed. Cir. 2015), is inapposite. See Response, 5–6.
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`In Plas-Pak, the proposed obviousness combinations were rejected because
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`they would “fundamentally alter” a prior art reference’s “principle of operation” or
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`“would render [it] inoperable for its intended purpose.” Id. at 759–60. For
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`example, where the prior art reference specifically required valves to prevent
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`backflow in a paint-dispensing apparatus, and the proposed combination would
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`have eliminated the valves, a finding of non-obviousness was proper because the
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`reference’s principle of operation would have been destroyed. Id. at 758–59.
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`Unlike in Plas-Pak, substituting the hollow spoiler of Prohaska for the solid
`
`spoiler of either Merkel or Kotlarski ’383 would not “fundamentally alter” the
`
`“principle of operation” or render Merkel or Kotlarski ’383 “inoperable for [their]
`
`intended purpose.” The slightly modified wipers would weigh less and require less
`
`material to manufacture, but they would otherwise clean windshields and counter
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`wind-lift in exactly the same way. See In re Mouttet, 686 F.3d 1322, 1333 (Fed.
`
`Cir. 2012) (finding obviousness where a substitution did not destroy the primary
`
`reference’s principle of operation).
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`12
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`IPR2016-00040
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`
`Patent Owner also argues that Merkel, Kotlarski ’383, and Prohaska do not
`
`expressly teach what changes to the wiper strip, support element, and spoiler
`
`attachment mechanism might be needed to successfully substitute a hollow spoiler
`
`for the solid spoilers of Merkel and Kotlarski ’383. Response, 6. The same
`
`situation was presented in KSR itself:
`
`In automotive design, as in many other fields, the interaction of
`multiple components means that changing one component often
`requires
`the others
`to be modified as well. Technological
`developments made it clear that engines using computer-controlled
`throttles would become standard. As a result, designers might have
`decided to design new pedals from scratch; but they also would have
`had reason to make pre-existing pedals work with the new engines.
`KSR, 550 U.S. at 424. Here too, a person of ordinary skill would have had reason
`
`to make pre-existing components work together and there is no evidence that slight
`
`modifications to various wiper components were beyond the technical grasp of a
`
`person of ordinary skill in the windshield wiper art. Patent Owner urges the same
`
`rigid approach that KSR rejected. See, e.g., Randall, 733 F.3d at 1362 (citing KSR,
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`550 U.S. at 415–22).
`
`Prohaska Does Not Teach Away From a Hollow Spoiler
`
`C.
`
`In a well-reasoned ruling in a parallel proceeding involving U.S. Patent No.
`
`7,228,588, which shares a specification and claim of priority with the ’264 Patent,
`
`this Board has already “disagree[d] with Patent Owner’s characterization of
`
`13
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`

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`IPR2016-00040
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`Prohaska” as teaching away from using one of its own embodiments, a hollow
`
`spoiler (Fig. 3):
`
`Prohaska does not disclose that a hollow spoiler should not be used.
`Rather . . . Prohaska discloses that a spoiler as shown in Figure 3 may
`be used, but may have a disadvantage. Such a disclosure is better
`characterized as a tradeoff rather than teaching away. Further, a patent
`that offers multiple solutions to a problem, even if it characterizes
`some solutions as having disadvantages and others not, does not teach
`away from those solutions.
`Institution Decision, IPR2016-00039, Paper No. 19, at 15–16 (citing DePuy Spine,
`
`Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009);
`
`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)).
`
`Patent Owner has not proffered any evidence that should cause the Board to
`
`doubt its initial finding in this substantially comparable proceeding. The deposition
`
`testimony of Petitioner’s expert, Dr. Davis, which Patent Owner relies on, actually
`
`lends support to the Board’s conclusion. See Response, 7–9 (citing Ex. 2002,
`
`113:15–115:14) (“[I]t’s kind of one of the design trade offs that you would be
`
`making . . . and it would certainly be lighter, but there could be a bit of a tradeoff
`
`there.”)..
`
`
`
`Moreover, there are reasons why a person of ordinary skill would have
`
`modified the spoilers of Merkel or Kotlarski ‘383 to be hollow, as in Prohaska—
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`14
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`IPR2016-00040
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Patent Owner has just ignored them. “[A]ny need or problem known in the field of
`
`endeavor at the time of invention and addressed by the patent [i.e., Prohaska] can
`
`provide a reason for combining the elements in the manner claimed.” KSR, 550
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`U.S. at 420; see also Ex. 1018 ¶ 57. Reducing the weight of automobile
`
`components was a well-known objective, see Ex. 1018 ¶¶ 53–56; see also DyStar,
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`464 F.3d at 1368, and Prohaska “may be read for all that it teaches, including uses
`
`beyond its primary purpose.” In re Mouttet, 686 F.3d at 1331.
`
`
` The “Binary Component” of Dependent Claim 3 Would Have D.
`Been Obvious in Further View of Kotlarski ’090 or Mathues
`
`The only claim element that Patent Owner contends is not disclosed by the
`
`proposed combinations is the “binary component” of dependent claim 3. Response,
`
`10–11. But Petitioner has never taken the position that this element is disclosed,
`
`precisely as claimed, by any one reference—it is the combination of references that
`
`renders this claim obvious. See Petition, 51–56.
`
`The claimed “binary component” comprises two parts: (i) a wind deflection
`
`strip and (ii) claw-like extensions; the latter is made of a harder material than the
`
`former. ’264 Patent, claim 3. Prohaska describes a comparable, two-part spoiler
`
`(i.e., a “binary component”), but the two parts are made of the same material (see,
`
`e.g., Prohaska, 1:68–79, 3:108–16; see also Petition, 55):
`
`15
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`

`
`IPR2016-00040
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`
`
`
`Prohaska, Fig. 3
`
`Kotlarski ’090 teaches a spoiler and claw-like extensions; the spoiler is
`
`formed as part of the wiper strip and the claws are provided on retainers placed
`
`along the length of the wiper and grip the spring support element directly. See
`
`Petition, 17–18, 51–52, 53 (discussing Kotlarski ’090). The wind deflection strip is
`
`made of a rubber-elastic material, while the “securing claws” are made preferably
`
`of plastic—a generally harder material than the rubber. Id.; Ex. 1018 ¶ 74.
`
`Mathues, on the other hand, discloses a wiper strip or “squeegee,” having
`
`two or more strata, each with a different degree of hardness; the retention portion
`
`of the squeegee is made of a harder material than the remainder. See Petition, 18,
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`52–53, 54–55 (discussing Mathues); Ex. 1018 ¶ 75. As the Examiner correctly
`
`observed in a rejection that Patent Owner never substantively addressed, “Mathues
`
`thus teaches making the retention portion of an article harder than the remainder.
`
`Such helps enhance the security of the joint.” Petition, 5–9 (citing Ex. 1010).
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`16
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`

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`IPR2016-00040
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`
`Based on the knowledge described in Kotlarski ’383, Merkel, Kotlarski
`
`’090, and Prohaska, a person of ordinary skill in the art is presumed to have
`
`understood at least the following prior to the claimed invention: (1) claw-like
`
`extensions can be formed directly on a spoiler (Prohaska); (2) claw-like extensions
`
`can grip a flat-spring directly to secure a wiper component thereto (Kotlarski
`
`’090); (3) harder materials (e.g., plastic) enhance the security of the connection
`
`(Kotlarski ’090; Mathues); (4) flexible spoilers are preferable to rigid spoilers
`
`(Kotlarski ’383, Merkel, Kotlarski ’090, Prohaska); and, (5) windshield wiper
`
`components can be co-extruded with materials of different degrees of hardness,
`
`tailored to a given application (Mathues).
`
`In light of this background knowledge which “must be consulted,” Randall,
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`733 F.3d at 1362, the question is whether “a person having ordinary skill in the art
`
`could have combined” the materials-related teachings of either Kotlarski ’090
`
`(instituted grounds (3) and (4)11) or Mathues (instituted grounds (5) and (6)12) to
`
`upgrade the Prohaska elongations to be harder than its wind deflection strip, “and
`
`would have seen the benefits of doing so,” KSR, 550 U.S. at 422. Petitioner
`
`submits that selecting materials known to optimize respective functions, and
`
`
`11 Decision, 19.
`
`12 Decision, 19.
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`17
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`IPR2016-00040
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`combining them using the known technique of co-extrusion, is precisely the