Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 70
`Entered: April 12, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COSTCO WHOLESALE CORPORATION
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00041
`Patent 8,099,823 B2
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`SAINDON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`
`Finding Some Challenged Claims Unpatentable
`Granting-In-Part Petitioner’s Motion to Exclude Evidence
`Denying Petitioner’s Motion to Strike
`Denying Patent Owner’s Motion to Exclude Evidence
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
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`IPR2016-00041
`Patent 8,099,823 B2
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`I. INTRODUCTION
`
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. We also
`address herein the parties’ Motions to Exclude Evidence.
`Petitioner requested an inter partes review of claims 1, 6, 9, and 10 of
`U.S. Patent No. 8,099,823 B2 (Ex. 1001, “the ’823 patent”). Paper 9
`(“Pet.”). Patent Owner filed a Preliminary Response to the Petition. Paper
`19 (“Prelim. Resp.”). We instituted review on all challenged claims, on four
`grounds. Paper 20 (“Dec. on Inst.”). After our Decision on Institution,
`Patent Owner filed a Response (Paper 30, “PO Resp.”), and Petitioner filed
`its Reply (Paper 38, “Pet. Reply”). An oral hearing was held January 18,
`2017. Paper 68 (“Tr.”).
`With respect to the grounds asserted in this trial, we have considered
`the papers submitted by the parties and the evidence cited therein. For the
`reasons discussed below, we determine that Petitioner has shown, by a
`preponderance of the evidence, that claims 1, 9, and 10 of the ’823 patent are
`unpatentable. We also determine that Petitioner has not shown, by a
`preponderance of the evidence, that claim 6 of the ’823 patent is
`unpatentable.
`
`A. Related Matters
`The parties represent that the ’823 Patent is asserted in Robert Bosch
`LLC v. Alberee Products Inc. et al., cv-12-574-LPS (D. Del) (consolidated
`with cv-14-142-LPS). Pet. 1; Paper 5, 1. In addition, Petitioner has filed
`petitions against several other of Patent Owner’s patents: U.S. Patent Nos.
`6,973,698 (IPR2016-00034), 6,836,926 (IPR2016-00035), 6,944,905
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`Patent 8,099,823 B2
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`(IPR2016-00036), 6,292,974 (IPR2016-00038), 7,228,588
`(IPR2016-00039), 7,484,264 (IPR2016-00040), and 8,544,136
`(IPR2016-00042). Pet. 1; Paper 5, 1.
`
`B. Wiper Blade Background
`There are two main types of windshield wiper structures: beam and
`
`yoke (or, conventional). The conventional yoke-style structure includes a
`series of flexible rails that distribute force along the wiper blade. Ex. 1014 ¶
`19. Figure 1 of U.S. Patent 3,418,679 is reproduced below:
`
`
`Figure 1 depicts a yoke-style wiper structure, having a large main rail
`
`4 connected to two smaller rails 5, which in turn are connected to the wiper
`blade.
`In contrast to the yoke style wiper is the beam, or flat, style of wiper.
`This type of wiper uses metal strips adjacent the wiper blade to distribute the
`load along the length of the wiper blade rather than the yokes. Id. ¶ 22.
`Figure 1 of the ’823 patent is reproduced below:
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`IPR2016-00041
`Patent 8,099,823 B2
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`Figure 1 of the ’823 patent depicts a beam-style wiper structure, in which the
`beam is attached along the entire length of the wiper.
`
`C. The ’823 Patent
`The ’823 patent is directed to a beam-style automobile windshield
`
`wiper blade. Ex. 1001, Abstract. The wiper is made of three main
`components: elastic rubber wiper strip 24 (“wiper”), resilient support
`element 12 (“beam”), and wind deflection strip 42 (“spoiler”). Id. These
`three components are illustrated in Figure 2 of the ’823 patent, reproduced
`below with added coloration:
`
`Figure 2 of the ’823 patent depicts a cross-sectional view of a windshield
`wiper blade embodiment, with elastic rubber wiper strip 24 highlighted in
`blue, resilient support element 12 in red, and wind deflection strip 42 in
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`Patent 8,099,823 B2
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`green. As shown in Figure 2 of the ’823 patent, wind deflection strip 42 has
`two sides (48, 50) that diverge from common point 46, such that, in
`conjunction with wall 58, wind deflection strip 42 is generally triangular in
`cross section and has a hollow interior.
`
`D. Challenged Claims
`Petitioner challenges claims 1, 6, 9, and 10, of which claim 1 is
`independent. Claim 1 is reproduced below.
`1. A wiper blade (10) for an automobile windshield (14), with an
`elongated belt-shaped, flexible resilient support element (12)
`having a longitudinal axis, on a lower belt surface (22) of which
`that faces the windshield is located an elastic rubber wiper strip
`(24) sitting against the windshield that extends parallel to the
`longitudinal axis, and on an upper belt surface (16) of which a
`wind deflection strip (42 or 112) is located that has an incident
`surface (54 or 140) facing a main flow direction of a driving wind
`(arrow 52), said deflection strip extending in the longitudinal
`direction of the support element, characterized in that the wind
`deflection strip has two sides (48, 50 or 136, 138) that diverge
`from a common base point (46 or 134) as seen in a cross section,
`wherein connected between the two sides of the wind deflection
`strip there is at least one support means located at a distance from
`their common base point that stabilizes the sides, and that the
`incident surface (54 or 140) is located at the exterior of one side
`(50 or 138), wherein the support element has outer edges,
`wherein the sides of the wind deflection strip have respective free
`ends having thereon respective claw-shaped extensions that
`fittingly grip around the outer edges of the support element at
`least in sections and engage at least one of the upper belt surface
`(24) and the lower belt surface (22), so that the wind deflection
`strip can be snapped onto the outer edges or slid onto the outer
`edges in a longitudinal direction, wherein the wind deflection
`strip has a height extending from the base point to ends of the
`sides farthest from the base point, and wherein a substantial
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`majority of the height is above the upper belt surface in a
`direction facing away from the windshield.
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`E. Prior Art and Asserted Grounds
`Trial was instituted to determine the patentability of claims 1, 6, 9,
`and 10 of the ’823 patent in view of the following obviousness grounds:
`References
`Claim(s) Challenged
`Prohaska,1 and Appel2 or Hoyler3
`1, 9, and 10
`Kotlarski ’3834 or Merkel,5 and
`1, 9, and 10
`Prohaska
`Prohaska, Appel or Hoyler, and
`Kotlarski ’0906 or Mathues7
`Kotlarski ’383 or Merkel, Prohaska, and
`Kotlarski ’090 or Mathues
`
`1 U.K. Patent App. GB 2 106 775 A, published April 20, 1983 (Ex. 1005).
`2 U.S. Patent No. 3,192,551, issued July 6, 1965 (Ex. 1006).
`3 German Patent No. 1,028,896, published June 24, 1954 (Ex. 1007). The
`English translation begins at page 5.
`4 PCT WO 99/02383, published January 21, 1999 (Ex. 1003). Petitioner
`instead cites to Exhibit 1004, U.S. Patent 6,279,191, which issued from the
`PCT application in Exhibit 1003, because the PCT “does not include
`reference numbers for line citations, and because it encompasses the same
`subject matter.” Pet. 20, n.2.
`5 PCT WO 99/12784, published March 18, 1999 (Ex. 1008). Petitioner
`instead cites to Exhibit 1009, U.S. Patent 6,295,690, which issued from the
`PCT application in Exhibit 1009, for the same reasons as explained in supra
`note 4. Pet. 21, n.3.
`6 PCT WO00/34090, published June 15, 2000 (Ex. 1020). Petitioner instead
`cites to Exhibit 1021, U.S. Patent 6,295,690, which issued from the PCT
`application in Exhibit 1020, for the same reasons as explained in supra note
`4. Pet. 22 (citing id. at 5, n.1).
`7 U.S. Patent No. 3,121,133, issued February 11, 1964 (Ex. 1019).
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`Petitioner also relies on the declaration of Gregory W. Davis, Ph.D. (Ex.
`1014).
`
`II. MOTIONS
`A. Patent Owner’s Motion to Exclude
`Patent Owner moves to exclude the testimony of David Peck in
`Exhibit 1100, offered by Petitioner as evidence of the features of a rival
`windshield wiper blade. Paper 53. Petitioner offers in opposition (Paper
`59), to which Patent Owner offers its reply (Paper 65). The Motion to
`Exclude and associated papers have no meaningful distinction from the
`Motion to Exclude in IPR2016-00038, and consequently Patent Owner’s
`Motion to Exclude portions of Mr. Peck’s Declaration (Ex. 1100) is denied.
`
`B. Petitioner’s Motion to Exclude and Motion to Strike
`Petitioner moves to exclude the testimony of Wilfried Merkel offered
`by Patent Owner in Exhibit 2005 as evidence for consideration in our
`objective indicia of non-obviousness analysis. Paper 54, 4–11. Petitioner
`also moves to exclude the testimony of Martin Kashnowski, offered by
`Patent Owner in Exhibit 2007 for similar reasons. Id. at 12–15. Patent
`Owner offers its opposition (Paper 62), to which Petitioner offers its reply
`(Paper 66).
`With respect to the testimony of Mr. Merkel, our analysis in IPR2016-
`00039 is applicable here. For the reasons giving in that proceeding,
`Petitioner has demonstrated that Mr. Merkel’s testimony from the Pylon
`litigation is inadmissible hearsay, and with respect to this evidence,
`Petitioner’s Motion is granted.
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`Patent 8,099,823 B2
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`
`With respect to the testimony of Mr. Kashnowski, our analysis in
`IPR2016-00038 is applicable here. For the reasons given in that proceeding,
`Petitioner has not demonstrated effectively that the testimony at issue is
`inadmissible hearsay, and with respect to this evidence, the Motion to
`Exclude is denied.
`Petitioner moves to strike the testimony of Mr. Merkel in Exhibit
`2005. Paper 37. Patent Owner filed an opposition. Paper 40. Petitioner’s
`Motion to Strike and associated papers do not differ from the Motion to
`Strike in IPR2016-00038 in any meaningful way. We adopt that analysis
`here, and accordingly, that Motion is denied.
`
`C. Motion for Observations
`Patent Owner submits a Motion for Observation regarding the
`testimony of David Peck. Paper 55. Petitioner offers a response. Paper 61.
`We have reviewed these papers and the statements made therein.
`
`III. PATENTABILITY ANALYSIS
`A. Claim Construction
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b).
`In our Decision on Institution, the only claim construction issue we
`discussed was Patent Owner’s argument that Petitioner failed to meet the
`requirement of 37 C.F.R. § 42.104(b)(3) to construe means-plus-function
`claims. Dec. on Inst. 7–11. However, the construction of that term was not
`at issue in our Decision to Institute. Neither party raises a claim
`construction issue in its subsequent briefs, nor do we discern a term that
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`requires construction for rendering our Decision. Therefore, we do not
`construe any terms.
`
`B. Overview of the Prior Art and Level of Ordinary Skill
`We first present the parties’ positions regarding the level of ordinary
`skill in the art. Then, we briefly discuss each of the prior art references cited
`in Petitioner’s grounds.
`The challenged claims are generally directed to a beam-style wiper
`blade having a hollow spoiler attached thereto. To address the challenged
`claims, Petitioner sets forth three main grounds, those primarily relying on
`Prohaska, Kotlarski ’383, or Merkel. In the Prohaska-led grounds, Petitioner
`cites to Prohaska for the teachings directed to the hollow spoiler and Appel,
`or alternatively Hoyler, for the teachings directed to the fact the spoiler is on
`a beam-style wiper. In the Kotlarski ’383-led grounds, Petitioner cites to
`Kotlarski ’383 for the beam-style wiper blade having a spoiler, and to
`Prohaska for the limitation directed to the spoiler being hollow. The
`Merkel-led ground is similar to the Kotlarski ’383-led ground, and cites to
`Merkel for the beam-style wiper blade having a spoiler and to Prohaska for
`the spoiler being hollow. All of these grounds then propose adding
`Kotlarski ’090 or Mathues , which discuss certain portions of the spoiler
`having different hardness values, to address dependent claim 6.
`
`1. The Level of Ordinary Skill in the Art
`Petitioner proposes that “[a] person of ordinary skill in the art would
`have the education and experience in mechanical engineering to have
`knowledge of the information deployed in [the prior art used in its
`grounds].” Pet. 26. Petitioner adds, “the level of skill in the art also
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`included the ability to make predictable use of the materials and components
`described above according to their established functions.” Id. Patent Owner
`proposes that a person of ordinary skill in the art “would have had either an
`undergraduate degree in mechanical engineering or a similar discipline, or
`several years of experience in the field of wiper blade manufacture and
`design.” PO Resp. 1. Patent Owner then argues that Petitioner’s proposed
`level of skill confuses the “content of the prior art” Graham factor with the
`“level of skill in the art” Graham factor.8 PO Resp. 2.
`Patent Owner’s proposed level of skill would include anyone with an
`undergraduate degree in mechanical engineering or similar discipline,
`regardless of whether they had any actual knowledge or experience in the
`present field of endeavor, i.e. windshield wiper blades. See id. at 1
`(proposing “mechanical engineering . . . or . . . experience in the field”).
`Patent Owner’s proposed level would include virtually anyone with a
`mechanical engineering degree. We cannot accept Patent Owner’s proposed
`level of skill because it reads out at least “in the art” in “a person of ordinary
`skill in the art.” Instead, we adopt Petitioner’s proposed level of skill. See
`also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior
`art itself reflects an appropriate level [of skill]”).
`
`
`8 The question of obviousness is resolved on the basis of underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)
`(cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007)).
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`2. Prohaska
`Prohaska is directed to an automobile windshield wiper blade. Ex.
`1005, 1:5–7. Prohaska describes the known problem of an air stream
`striking the wiper blade, which diminishes the contact pressure of the wiper,
`causing lifting and deterioration of the wiper blade, especially at high
`vehicle speeds. Id. at 1:8–16. Prohaska explains that spoilers are known,
`but prior spoilers were attached to the yoke or were unduly complicated and
`unattractive. Id. at 1:25–29. Prohaska proposes a spoiler formed on, or
`attached to, a flexible strip, which in turn is attached to a wiper blade. Id. at
`1:48–52, 68–77. Prohaska explains that its spoiler makes it “easily possible
`to retrofit a wiper blade.” Id. at 1:68–69. One embodiment is shown in
`Figure 3, reproduced below with added coloring:
`
`Figure 3 of Prohaska depicts spoiler 20 (in green) integral with
`flexible strip 30 (also green) and attached to wiper 10 (in blue). Id. at 2:71–
`75.
`
`Petitioner cites to Prohaska for its teachings of a hollow spoiler
`attached to a windshield wiper. See, e.g., Pet. 43. Prohaska does not teach a
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`spring support element (i.e., the metal bar that makes the wiper a beam-style
`wiper); Petitioner relies on Appel or Hoyler to teach this aspect of the
`claims. Id.
`
`3. Appel / Hoyler
`Appel and Hoyler are used by Petitioner in the Prohaska-led ground to
`
`demonstrate that beam-style wiper blades were known in the art. Appel
`discloses a wiper having a spring element as a backbone to distribute the
`wiper load evenly. Ex. 1006, 1:23–28. Figures 3 and 4 of Appel are
`reproduced below.
`
`
`Figures 4 and 5 of Appel are top and side views, respectively, of a
`beam-style windshield wiper blade.
`Hoyler discloses a wiper having a wiper bar formed of elastic metal
`strips bent according to the curvature of the windshield. Ex. 1007, 69 (left
`column). Figure 1 of Hoyler is reproduced below:
`
`
`9 Citations to Exhibit 1007 are to the page numbers stamped in the lower
`right hand corner.
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`Figure 1 of Hoyler depicts side, top, and cross-section views of a
`beam-style wiper blade.
`Hoyler also describes the importance of having light-weight wipers.
`Specifically, Hoyler states that the “weight of the moving parts can be
`largely reduced thereby so that the stress upon the drive elements is low,”
`and that “low weight also meets the demand for increasing wiper speeds.”
`Ex. 1007, 5 (right column).
`
`4. Kotlarski ’383 / Merkel
`Kotlarski ’383 and Merkel both describe beam-style wiper blades
`having spoilers. Figure 2 of Kotlarski ’383 and Figure 3 of Merkel are
`reproduced below:
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`Figure 2 of Kotlarski ’383 is an isometric view of a beam-style wiper
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`blade having spoiler 200 and end caps 35. Figure 3 of Merkel is a cross-
`section view of a similar style wiper.
`
`Missing from these references are the limitations in the challenged
`claims requiring the spoiler to be hollow, which Petitioner asserts is found in
`Prohaska. Pet. 44.
`
`5. Kotlarski ’090 / Mathues
`Petitioner cites to Kotlarski ’090 and Mathues to teach that certain
`components of the retaining mechanism of the wiper are harder than other
`components, relevant for dependent claim 6. See, e.g., Pet. 51, 53. Figure 5
`of Kotlarski ’090 is reproduced below.
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`Kotlarski ’090 describes a beam-style wiper blade having a spoiler 23
`that is retained via claws 58 of retainers that grasp rails 32 (i.e., the beams).
`Ex. 1021, Fig. 5. The retainers are made of plastic. Id. at 5:45–46.
`Mathues discloses a wiper blade having a retention portion of the
`blade harder than the wiper. Ex. 1019, Fig. 1 (showing profile of wiper),
`Fig. 3 (showing hardness values at various portions of the wiper). Figure 3
`is reproduced below.
`
`Figure 3 of Mathues depicts the relationship between the location on
`
`the cross-section of the wiper blade and its corresponding hardness value.
`Mathues teaches that heavily contoured windshields benefit from harder
`material in the retention portion of the wiper. Id. at 2:70–3:1.
`
`C. Analysis of the Teachings of the Cited References
`The disputes between the parties does not revolve around whether the
`prior art discloses each element of claims 1, 9, and 10. For completeness of
`our analysis, we address briefly these aspects of Petitioner’s ground. Claim
`1 requires a belt-shaped flexible resilient support element (beam), an elastic
`rubber wiper strip (wiper), and a wind deflection strip (spoiler). Claim 1
`specifies that the spoiler has two sides that diverge from a common base
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`point, which in turn are connected by a support means; effectively requiring
`the spoiler to be a hollow triangle-like shape. See Ex. 1001, Fig. 3. In
`addition, the claim requires the spoiler has claw-shaped extensions to
`provide for attachment to the beam. Claim 9 specifies that the spoiler
`extends along at least half of the length of the wiper blade, and claim 10
`specifies that the claw-shaped extensions engage both the upper and lower
`surfaces of the beam.
`For the Prohaska-led ground, Petitioner directs us to spoiler 20 of
`Prohaska, which as shown in Figure 3 reproduced above, has two sides that
`diverge from a common base point, which are then connected by a wall. Pet.
`27–28; Ex. 1005, Fig. 3. Further, Petitioner points out that the spoiler is
`connected to a wiper blade via claw-shaped extensions, also as shown in
`Figure 3. Pet. 29–30. Petitioner points to the beam-style wipers of Appel
`and Hoyler for the flexible resilient support element in claim 1. Id. at 27, 31
`(citing Ex. 1006, Fig. 1; Ex. 1007, Fig. 1). Petitioner also points out that
`Prohaska’s spoiler is coextensive with its wiper (Pet. 54), and that the claw-
`shaped extensions of Prohaska grip both an upper and lower surface of the
`flexible strip (id. at 57). We find no reasonable dispute on this record as to
`these disclosures, and adopt Petitioner’s findings (i.e., claim chart and
`associated discussion) as our own.
`For the Kotlarsky ’383-led ground, Petitioner directs us to the
`elongated, spring-elastic support element 12 for the beam, rubber-elastic
`wiper strip 14 for the wiper, and wind deflector strip 200 for the spoiler.
`Pet. 34–35 (citing, e.g., Ex. 1003, Fig. 1). Petitioner directs us to Prohaska
`for the particular configuration of the spoiler, e.g., the divergent legs, length,
`and claw-shaped extensions. Id. at 35–37. We find no reasonable dispute on
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`this record as to these disclosures, and adopt Petitioner’s findings as our
`own.
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`For the Merkel-led ground, Petitioner directs us to the elastic spring-
`elastic support 12 for the beam, rubber-elastic wiper strip 14 for the wiper,
`and wind deflection strip 54 for the spoiler. Pet. 37–39 (citing, e.g., Ex.
`1009, Fig. 1). Petitioner directs us to Prohaska for the particular
`configuration of the spoiler, e.g., the divergent legs, length, and claw-shaped
`extensions. Id. at 38–41. We find no reasonable dispute on this record as to
`these disclosures, and adopt Petitioner’s findings as our own.
`Claims 6 depends indirectly from claim 1, and requires the spoiler to
`be a “binary component,” wherein the claw-shaped extensions are made of a
`harder material than the remainder of the spoiler, and wherein the transition
`in hardness occurs near the wall (i.e., the support means). For all of the
`grounds, Petitioner points to either Kotlarski ’090 or Mathues. Pet. 48–50.
`As described above, Kotlarski ’090 describes a retainer having claws 58, and
`Mathues describes a wiper with varying hardness at the retention portion,
`versus the blade. Patent Owner argues that Kotlarski ’090 does not teach a
`binary component because the retention portion is a separate element. PO
`Resp. 11. Patent Owner appears to concede that Mathues describes a binary
`component, but argues that Mathues does not disclose a spoiler. Id. at 11–
`12. Petitioner’s ground, however, does not look to Kotlarski ’090 by itself
`to teach the limitations of claims 6, but rather the combination of Prohaska
`and Kotlarski ’090. Pet. 51–52. Similarly, Petitioner does not rely on
`Mathues to describe the spoiler, but rather that binary components were
`known, and that it would been obvious to apply the teachings of Mathues to
`the spoiler of Prohaska. Id. at 53. Thus, the dispute here is not over what
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`the prior art references teach, but rather whether Petitioner has explained
`why it would have been obvious to arrive at the claimed invention. We
`address issues of rationale in the next section. Accordingly, we adopt
`Petitioner’s findings as to the teachings of Kotlarski ’090 and Mathues as
`our own.
`
`D. Analysis of the Rationales
`1. Prohaska-led Ground
`Petitioner’s proposed combination is to combine the spoiler of
`Prohaska with the beam-style wiper of Appel or Hoyler. Pet. 41–44. Based
`on the disclosures of the prior art brought to our attention by Petitioner, we
`find that a person of ordinary skill in the art would have known that liftoff
`tendency was a problem with windshield wipers. See Pet. 42 (“spoilers
`maintain wiper blade contact pressure at high speeds”) (citing Ex. 1005, 1:8–
`19; Ex. 1009, 1:55–56; Ex. 1014 ¶ 25). Similarly, we find that spoilers were
`a known solution to that problem, both for conventional and beam-style
`wipers. See id. (“spoilers were a solution to liftoff tendency”); Ex. 1005,
`1:8–21 (“The practice shows that spoilers closely arranged to the windscreen
`are most effective against the attacking air stream.”); Ex. 1009, 1:53–57
`(“[t]o suppress the aforementioned tendencies of the wiper blade to lift off
`from the window, the accessories trade offers so-called spoilers”), 2:15–31
`(describing a spoiler on a beam-style wiper); Ex. 1003, 2–3 (describing a
`“wind deflection strip” as advantageous when driving at high speeds); Ex.
`1021, 1:25–29 (providing for a beam-style wiper with a “spoiler, if the
`tendencies of the wiper blade to lift away from the window at relatively high
`travel speeds are to be averted”); see also Ex. 1014, 1:33–54 (a 1965 patent
`
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`IPR2016-00041
`Patent 8,099,823 B2
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`describing “well known . . . aerodynamic principles” regarding airflow as
`applied to windshield wipers). With this level of knowledge, we find that
`Petitioner has provided rational underpinnings that provide a factual basis
`for its assertion that adding the spoiler of Prohaska to the beam-style wiper
`of Appel or Hoyler would “yield[] predicatable results,” and be “nothing
`more than a simple arrangement of old elements, each performing the same
`function it had been known to perform.” Pet. 43–44 (citing KSR Intern. Co.
`v. Teleflex Inc., 550 U.S. 398, 417 (2007)).
`Patent Owner’s arguments that “conventional thinking” with respect
`to beam-style blades would be to “avoid any additional components” is
`unpersuasive, as the prior art shows that a person of ordinary skill in the art
`had contemplated adding spoilers to beam-style wipers, e.g., such as shown
`in Merkel, Kotlarski ’383, and Kotlarski ’090. PO Resp. 4–5. Patent Owner
`next argues that Prohaska discourages the use of a hollow spoiler. Id. at 7–
`10. The problem with this argument is that Prohaska affirmatively describes
`a hollow spoiler. We acknowledge that Prohaska cautions that a hollow
`spoiler, “possibly migh[t] be disadvantageous.” Ex. 1005, 3:2–6. Prohaska
`indicates that the possible disadvantage stems from the pressure exerted by
`the airstream, which Prohaska proposes can be eliminated by a “close fit of
`the parts,” i.e., by filling the void in the hollow of the spoiler. See id. at 3:7–
`21. First, to the extent Patent Owner is arguing that Prohaska teaches away,
`we find that Prohaska does not affirmatively teach away from a hollow
`spoiler; indeed it provides an embodiment specifically directed to a hollow
`spoiler. In addition, just because a patent teaches that a particular course of
`action has certain disadvantages does not preclude a person of ordinary skill
`in the art considering that course of action for what it teaches. See DePuy
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`Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
`Cir. 2009) (“A reference does not teach away […] if it merely expresses a
`general preference for an alternative invention but does not ‘criticize,
`discredit, or otherwise discourage’ investigation into the invention
`claimed.”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
`2006) (“[w]here the prior art contains ‘apparently conflicting’ teachings . . .
`each reference must be considered ‘for its power to suggest solutions to an
`artisan of ordinary skill . . . consider[ing] the degree to which one reference
`might accurately discredit another.’”) (citing In re Young, 927 F.2d 588, 591
`(Fed. Cir. 1991)).
`The only evidence Patent Owner offers in support of its argument is
`the testimony of Dr. Dubowsky. PO Resp. 8 (citing Ex. 2003 ¶¶ 66, 73, and
`83). Dr. Dubowsky states that a person of ordinary skill in the art would
`have understood Prohaska’s hollow spoiler would cause vibrations and
`premature failure. Ex. 2003 ¶ 66. We do not credit his testimony because
`his experience provides little insight into the knowledge of a person of
`ordinary skill in the art, because he provides no supporting evidence, and
`because he provides no technical explanation in support of his statement. 37
`C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying
`facts or data on which the opinion is based is entitled to little or no
`weight.”); Ex. 2003 ¶¶ 5–13 (professional experience not including
`automotive or wiper technology; sole experience with wipers is as expert for
`Patent Owner). Instead, we credit the testimony of Dr. Davis, who has
`significant automotive engineering experience and specific experience with
`the design of a wiper blade system, and who testifies that a person of
`ordinary skill in the art would consider the hollow feature of Prohaska’s
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`IPR2016-00041
`Patent 8,099,823 B2
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`spoiler is a trade-off between weight and flexibility. Ex. 2002, 113:15–
`115:14 (“it’s kind of one of the design trade-offs that you [i.e., a person of
`ordinary skill in the art] would be making”) (cited in PO Resp. 8–9); Ex.
`1014 ¶¶ 6–8 (describing prior work experiences), 59–60 (describing the
`structural integrity of a hollow spoiler). Petitioner also offers evidence that
`we find establishes that a person of ordinary skill in the art is concerned
`about the weight of a given wiper, and has a reason to make wipers lighter.
`Pet. 19 (citing Ex. 1007, 5), 46 (citing Ex. 1014 ¶ 56); Ex. 1007, 5 (“The
`weight of the moving parts can be largely produced thereby so that the stress
`upon the drive elements is low.” “The low weight also meets the demand
`for increasing wiper speeds.”)); Ex. 1014 ¶ 56 (Dr. Davis testifying that
`Hoyler shows an awareness in the art regarding weight). Given that a person
`of ordinary skill in the art is concerned with the weight of a wiper, we find
`reason for him or her to consider using an existing hollow spoiler design
`such as shown in Prohaska. Ex. 1014 ¶¶ 54–55 (Dr. Davis testifying that
`weight reduction, and the solution to provide a hollow structure, are
`“perennial goals” in the automobile industry).
`Reviewing the arguments and evidence before us, we find that a
`person of ordinary skill in the art knew how to place a spoiler on a beam-
`style windshield wiper to avoid wind lift, and was motivated to seek light-
`weight components. Accordingly, with respect to the challenged claims, we
`find reason to make the spoiler of a beam-style windshield wiper, such as
`found in Appel or Hoyler, to be hollow, as shown in Prohaska.
`
`With respect to claim 6, in contrast, we do not find Petitioner to have
`set forth a reason to combine the references supported by rational
`underpinnings. As Patent Owner points out, Kotlarski ’090 describes the
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`spoiler and a separate retainer. PO Resp. 11. Without disagreeing with
`Petitioner’s assertion that these materials have different hardness values, the
`claim requires a “binary component” which we understand to be a structure
`wherein the portions having different hardness values are not separable. See
`also PO Resp. 11, (arguing that “[the prior art] does not disclose any
`individual element made of ‘a binary component’ material with two
`different harndesses.”) (emphasis in original). For example, claim 6
`describes that there is a “transition” from one hardness value to the other,
`implying in context that there is no separation. Further, the ’823 patent
`describes the “binary wind deflection strip” is manufactured using a
`“complex extrusion process.” Ex. 1001, 5:48–51. This again implies that
`there is no separation between the portions with different hardness values.
`Accordingly, missing from Petitioner’s analysis is an explanation for why it
`would have been obvious to combine the two separate components in
`Kotlarski ’090 into a single component.
`With respect to Mathues, Patent Owner does not contest that the wiper
`is a binary material, but ra