Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00041
`U.S. Patent No. 8,099,823
`______________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 35
`U.S.C. § 313 AND 37 C.F.R. § 42.107
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`

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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`SUMMARY OF ARGUMENTS .................................................................... 2
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`III. STANDARD FOR INSTITUTION ................................................................. 4
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`IV. BRIEF OVERVIEW OF U.S. PATENT NO. 8,099,823 ................................. 5
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`V. UNDER THE PROPER CLAIM CONSTRUCTION, PETITIONER FAILS
`TO CARRY ITS BURDEN OF PROOF, AND INSTITUTION SHOULD
`BE DENIED ON ALL GROUNDS ................................................................ 7
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`VI. PETITIONER IMPROPERLY INCORPORATES BY REFERENCE THE
`KRUGER DECLARATION .........................................................................11
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`VII. THE OBVIOUSNESS COMBINATIONS IN GROUNDS 2–13 ARE
`DRIVEN BY IMPERMISSIBLE HINDSIGHT, IGNORE TEACHINGS
`AWAY, AND REST UPON CONCLUSORY ASSERTIONS ....................13
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`VIII. CONCLUSION ..............................................................................................18
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
`
`Table of Authorities
`
`Cases
`ActiveVideo Networks v. Verizon Comm’ns, Inc.,
`694 F.3d 1312 (Fed Cir. 2012) ................................................................... 3, 5, 17
`
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00353, Paper 9 (PTAB June 25, 2015) ............................................... 10
`
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00441, Paper 11 (PTAB July 13, 2015) ................................................ 3
`
`Apple, Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00456, Paper 9 (PTAB June 15, 2015) ................................. 2, 9, 10, 11
`
`August Tech. Corp. v. Camtek Ltd.,
`655 F.3d 1278 (Fed. Cir. 2011) ............................................................................ 5
`
`Blackberry Corp. v. Mobilemedia Ideas LLC,
`IPR2013-00016, Paper 32 (PTAB Feb. 25, 2014) .............................................. 12
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ......................................... 3, 12
`
`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) .............................................................................. 8
`
`Fidelity National Info. Serv’s, Inc. v. Datatreasury Corp.,
`IPR2014-00489, Paper 9 (PTAB Aug. 13, 2014) ............................................... 12
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 13
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ...................................................................... 3, 17
`
`Kemco Sales, Inc. v. Control Papers Co., Inc.,
`208 F.3d 1352 (Fed. Cir. 2000) ............................................................................ 9
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................. 5
`
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 13
`
`PanelClaw, Inc. v. SunPower Corp.,
`IPR2014-00386, Paper 7 (PTAB June 30, 2014) ................................. 2, 9, 10, 11
`
`PCT Int’l, Inc. v. Amphenol Corp.,
`IPR2013-00229, Paper 17 (PTAB Dec. 24, 2013) ............................................. 12
`
`Pride Solutions, LLC v. Not Dead Yet Manufacturing, Inc.,
`IPR2013-00627, Paper 14 (PTAB Mar. 17, 2014) ..................................... 2, 8, 11
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 15 (PTAB Dec. 30, 2013) ............................................... 5
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 17 (PTAB Feb. 25, 2014) .......................................... 3, 17
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00226, Paper 9 (PTAB Aug. 12, 2013) ......................................... 10, 11
`
`Unified Patents Inc. v. OliviStar, LLC,
`IPR2015-01216, Paper 15 (PTAB Nov. 20, 2015) ............................................. 12
`
`Vizio, Inc. v. Int’l Trade Comm’n,
`605 F.3d 1330 (Fed. Cir. 2010) ............................................................................ 4
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ............................................................................ 9
`
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
`IPR2014-01708, Paper 17 (PTAB Oct. 30, 2014) ................................................ 8
`
`
`
`Statutes
`
`35 U.S.C. § 112 ...................................................................................................... 2, 8
`
`35 U.S.C. § 112(f) ........................................................................................ 2, 8, 9, 10
`
`35 U.S.C. § 314(a) ................................................................................................. 4, 5
`
`35 U.S.C. § 316(e) ..................................................................................................... 4
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
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`
`
`Regulations
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`37 C.F.R. § 42.6(a)(3) .......................................................................................... 2, 11
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`37 C.F.R. § 42.24(a)(1)(i) .................................................................................... 2, 11
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`37 C.F.R. § 42.104(b)(3) ...................................................................................... 2, 10
`
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 5
`
`37 C.F.R. § 42.108(b) ................................................................................................ 5
`
`37 C.F.R. § 42.108(c) ................................................................................................. 4
`
`
`
`Other Authorities
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14,
`2012) ..................................................................................................................... 4
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
`
`I.
`
`INTRODUCTION
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`Patent Owner, Robert Bosch LLC (“Bosch”), submits this preliminary
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`response to the corrected Petition filed by Costco Wholesale Corporation
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`(“Petitioner” or “Costco”) as Paper No. 9 in this proceeding, requesting inter
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`partes review of claims 1, 6, 9, and 10 of U.S. Patent No. 8,099,823 (“Petition”).
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`This response is timely pursuant to the Board’s Notice in Paper No. 3.
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`The following arguments are not intended to be an exhaustive list of
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`arguments with respect to the grounds asserted in the Petition. Rather, Bosch
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`respectfully submits these streamlined arguments in response to the issue of
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`institution and reserves the right to expand on these arguments with additional
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`evidence, including testimonial evidence, or to provide new arguments, should the
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`Board determine that institution is appropriate.
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`Bosch respectfully submits that Petitioner has not established a reasonable
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`likelihood that it would prevail with respect to any of the challenged claims.
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`Accordingly, Bosch respectfully requests that the Board decline to institute inter
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`partes review for the reasons set forth below.
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`1
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
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`II.
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`SUMMARY OF ARGUMENTS
`The Petition fails for several reasons.
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`First, Petitioner fails to construe “support means . . .,” a means-plus-function
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`limitation governed by 35 U.S.C. §112 ¶ 6.1 This failure is a fatal violation of 37
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`C.F.R. § 42.104(b)(3). See, e.g., Apple, Inc. v. ContentGuard Holdings, Inc.,
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`IPR2015-00456, Paper 9 at 5–9 (PTAB June 15, 2015); PanelClaw, Inc. v.
`
`SunPower Corp., IPR2014-00386, Paper 7 at 9–10 (PTAB June 30, 2014).
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`Because this means-plus-function limitation is present in all challenged claims 1, 6,
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`9, and 10, institution should be denied on all grounds on this basis alone.
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`Second, Petitioner has conducted no invalidity analysis using the proper
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`construction of “support means,” which construction is described below. As this
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`limitation is present in all challenged claims, institution must be denied with
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`respect to all grounds. See, e.g., Pride Solutions, LLC v. Not Dead Yet
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`Manufacturing, Inc., IPR2013-00627, Paper 14 at 9–11 (PTAB Mar. 17, 2014).
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`Third, Petitioner violates 37 C.F.R. §§ 42.24(a)(1)(i) and 42.6(a)(3) by
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`improperly incorporating by reference numerous arguments from the Kruger
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`1 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125
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`Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f).
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`Because the ’823 patent has a filing date prior to September 16, 2012, the effective
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`date of § 4(c) of the AIA, Bosch refers to the pre-AIA version of 35 U.S.C. § 112.
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`U.S. Patent No. 8,099,823
`Declaration into the Petition. Under the Board’s prior decisions, the Declaration
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`should be disregarded. See, e.g., Cisco Sys., Inc. v. C-Cation Techs., LLC,
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`IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014). Without this testimony,
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`Bosch submits that the Petition is insufficient to carry Petitioner’s burden, and
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`institution should be denied on all grounds.
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`Fourth, regarding the alleged obviousness combinations, the Petition is
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`driven by improper hindsight and lacks articulated reasons with rational
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`underpinnings to support the proposed modifications. See, e.g., Apple Inc. v.
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`ContentGuard Holdings, Inc., IPR2015-00441, Paper 11 at 12 (PTAB July 13,
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`2015). Moreover, the references themselves teach away from the proposed
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`combinations. And, the Petition provides only conclusory assertions with respect
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`to how the references might be combined. See, e.g., K/S HIMPP v. Hear-Wear
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`Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014); ActiveVideo Networks v.
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`Verizon Comm’ns, Inc., 694 F.3d 1312, 1327–28 (Fed Cir. 2012) (dismissing
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`expert testimony that “failed to explain how specific references could be
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`combined, which combination(s) of elements in specific references would yield a
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`predictable result, or how any specific combination would operate or read on the
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`asserted claims” and further dismissing expert testimony that generically recites a
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`desire for more efficient and cheaper systems that had more features for
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`customers); SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper 17 at
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`U.S. Patent No. 8,099,823
`3–4 (PTAB Feb. 25, 2014) (observing that the PTAB “is not required to take every
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`statement by a petitioner’s expert as established fact” and “is required to assess the
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`persuasiveness of the testimony in light of other factual evidence in the record,
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`e.g., the explicit wording of the prior art and the scope of the claimed invention”).
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`Accordingly, Bosch respectfully submits that, for at least these reasons, the
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`Board should decline to institute the inter partes review.
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`III. STANDARD FOR INSTITUTION
`The Board, in considering whether to institute a trial, determines whether or
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`not a party has met the statutory institution standard. A petition for inter partes
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`review may be granted only when “the information presented in the petition …
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`shows that there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
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`see also 37 C.F.R. § 42.108(c). A petitioner bears the burden of showing that this
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`standard has been met. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,756 (Aug. 14, 2012) (“The Board … may institute a trial where the
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`petitioner establishes that the standards for instituting the requested trial are met
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`….”). A petitioner also bears the burden of proving unpatentability by a
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`preponderance of the evidence. 35 U.S.C. § 316(e).
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`A petitioner making an obviousness challenge must show where each
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`claimed limitation is taught in the prior art. See, e.g., Vizio, Inc. v. Int’l Trade
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
`Comm’n, 605 F.3d 1330, 1342–43 (Fed. Cir. 2010); August Tech. Corp. v. Camtek
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`Ltd., 655 F.3d 1278, 1287 (Fed. Cir. 2011); see also 37 C.F.R. § 42.104(b)(4). If a
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`petitioner asserts that a combination of prior art renders a claim unpatentable, it
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`must “set forth sufficient articulated reasoning with rational underpinning to
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`support its proposed obviousness ground.” SAS Inst., Inc. v. ComplementSoft,
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`LLC, IPR2013-00581, Paper 15 at 12 (PTAB Dec. 30, 2013) (citing KSR Int’l Co.
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`v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); accord ActiveVideo Networks, 694
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`F.3d at 1327–28. The Board may “deny some or all grounds for unpatentability for
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`some or all of the challenged claims.” 37 C.F.R. § 42.108(b); see also 35 U.S.C. §
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`314(a).
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`Thus, it is a petitioner’s duty to provide sufficient grounds for institution.
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`Here, Petitioner has failed to live up to its duty. Bosch respectfully submits that
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`institution should be denied as to all grounds.
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`IV. BRIEF OVERVIEW OF U.S. PATENT NO. 8,099,823
`U.S. Patent Number 8,099,823 (“the ’823 patent”), entitled “Automobile
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`Windshield Wiper Blade,” issued on January 24, 2012. It resulted from the
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`prosecution of an application filed on February 2, 2009, and is a divisional of U.S.
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`Patent No. 7,484,262 (filed on June 8, 2007, and issued on February 3, 2009) and
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`U.S. Patent No. 7,228,588 (filed on April 11, 2002, and issued on June 12, 2007),
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`which claims priority to a German application filed on April 26, 2001.
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
`The ’823 patent relates to a beam-type wiper blade that includes an
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`elongated belt-shaped, flexible resilient support element, an elastic wiper strip, and
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`a wind deflection strip (or spoiler) of a particular structure. Ex. 1001 at, e.g.,
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`Abstract; 4:9–5:30. Specifically, the wind deflection strip has two sides that
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`diverge from a common base point, a surface facing the main flow direction of the
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`driving wind (“an incident surface”) located at the exterior of one side, and at least
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`one “support means” placed between the two sides at a distance from their
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`common base point, which functions to stabilize the sides. Id. at, e.g., 2:17–21;
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`2:58–64; 5:3–9. This feature “provides a certain degree of stiffening even when
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`using a relatively soft material for the manufacture of the wind deflection strip,
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`which provides the necessary form stability of the wind deflection strip even at []
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`high wind loads.” Ex. 1001 at 2:21-25; Fig. 2.
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
`The ’823 patent discloses different embodiments, for example, the spring
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`support element may consist of a single rail or made of two rails, the sides of the
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`spoiler may have free ends provided with claw-like extensions that grip the support
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`element at least in sections, and the spoiler can be made of one material or as a
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`binary component, with the claw-like extensions being made of a harder material
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`than the rest of the spoiler. Id. at 2:31–64. In addition to counteracting the wind
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`lift, reducing the wiper blade weight, and the material and manufacturing costs, the
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`wind deflection strip structures in the ’823 patent also provide a spoiler with
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`improved stability and function at high speeds and under great oncoming wind
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`loads, and add the necessary stiffness to the spoilers made of softer materials,
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`without compromising the spoiler’s attachment to the wiper blade or adversely
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`affecting the sensitive force distribution of the spring support element. Id. at 2:5–
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`25; 2:43–53; 3:1–48; 5:23–30.
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`V. UNDER THE PROPER CLAIM CONSTRUCTION, PETITIONER
`FAILS TO CARRY ITS BURDEN OF PROOF, AND INSTITUTION
`SHOULD BE DENIED ON ALL GROUNDS
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`Petitioner offers no actual claim constructions. And, Petitioner’s general
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`statements regarding claim construction arguments from a district court litigation
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`are misleading and fail to provide any guidance as to the proper construction of the
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`claim limitations.
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
`Bosch proposes the following claim construction for the “support means …”
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`limitation found in each of the challenged claims. Because Petitioner does not use
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`this construction in its arguments and expert testimony, and because it is present in
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`all of the challenged claims, the Board should deny the institution request on all
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`grounds. See, e.g., Pride Solutions, IPR2013-00627, Paper 14 at 9–11.2
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`Bosch respectfully submits that “support means …” is a means-plus-function
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`limitation governed by 35 U.S.C. § 112, ¶ 6, where the function is “to stabilize the
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`sides of the wind deflection strip,” and the corresponding structure is “a wall
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`connected to both sides of the wind deflection strip” or “the channel wall facing
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`the upper belt surface of the support element.” See Ex. 1001, 2:18–42; 3:1–18;
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`5:38–51; 6:8–27; 6:60–67; 7:16–19; Figs. 2, 3; see also element 58 in Fig. 2
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`below.3
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`2 Bosch submits that a person of ordinary skill in the art has either an
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`undergraduate degree in mechanical engineering or a similar discipline, or several
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`years of experience in the field of wiper blade manufacture and design.
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`3 The broadest reasonable interpretation consistent with the specification of a
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`means-plus-function limitation ‘is that statutorily mandated in paragraph 6 [of 35
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`U.S.C. § 112].’” Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
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`IPR2014-01708, Paper 17 at 8 (PTAB Oct. 30, 2014) (quoting In re Donaldson
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`Co., 16 F.3d 1189, 1194–95 (Fed. Cir. 1994); alteration in original).
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
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`Use of the word “means” creates a rebuttable presumption that the limitation
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`should be interpreted pursuant to 35 U.S.C. § 112, ¶ 6. See, e.g., Williamson v.
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`Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015); Kemco Sales, Inc. v.
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`Control Papers Co., Inc., 208 F.3d 1352, 1361 (Fed. Cir. 2000) (“The term
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`‘means’ in this limitation creates a presumption that a section 112, paragraph 6
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`interpretation is called for ...”); Apple, IPR2015-00456, Paper 9 at 6; PanelClaw,
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`IPR2014-00386, Paper 7 at 9.
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`Petitioner does not attempt to rebut this presumption or explain why
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`“support means” falls outside the scope of 35 U.S.C. § 112, ¶ 6. Nor does
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`Petitioner offer any actual construction. Instead, Petitioner states “that it does not
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`agree that Patent Owner’s construction [of the term in a district court litigation]
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`represents the broadest reasonable construction of this term in the abstract” and
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`that “Patent Owner should not be heard to assert a narrower construction than was
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`9
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
`set forth” in that litigation. Petition at 14–15. This non-construction is ambiguous
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`and in violation of 37 C.F.R. § 42.104(b)(3), which requires that the petition must
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`“identify the specific portions of the specification that describe the structure,
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`material, or acts corresponding to each claimed function” for means-plus-function
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`terms. Apple, IPR2015-00456, Paper 9 at 6 (denying institution where “Petitioner
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`does not rebut the presumption that these limitations [containing “means”] are
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`governed by § 112, ¶ 6 … [and] Petitioner fail[ed] to ‘identify the specific portions
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`of the specification that describe the structure, material, or acts corresponding to
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`each claimed function.” (quoting 37 C.F.R. § 42.104(b)(3)); Apple Inc. v.
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`ContentGuard Holdings, Inc., IPR2015-00353, Paper 9 at 12 (PTAB June 25,
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`2015) (failure to identify corresponding structure of a means-plus-function
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`limitation deemed “fatal”); PanelClaw, IPR2014-00386, Paper 7 at 9–10
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`(“Petitioner does not provide any rebuttal to [the] presumption …. By rule, [37
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`C.F.R. § 42.104(b)(3)] Petitioner was required to identify the corresponding
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`structure …. Petitioner failed to do this, and the Petition as to the claims at issue
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`[with the “means” limitation”] is denied for this reason alone.”); SAS Inst., Inc. v.
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`ComplementSoft, LLC, IPR2013-00226, Paper 9 at 10–11 (PTAB Aug. 12, 2013)
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`(denying institution because Petitioner did not rebut presumption of a claim
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`containing “means” and failed to satisfy the requirements of § 42.104(b)(3)).
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
`Accordingly, because Petitioner does not rebut the presumption and fails to
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`identify the required structure and function, the Petition should be denied for all
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`grounds on this basis alone. See, e.g., Apple, IPR2015-00456, Paper 9 at 5–9;
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`PanelClaw, IPR2014-00386, Paper 7 at 9–10; SAS Inst., IPR2013-00226, Paper 9
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`at 10–11.
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`Moreover, Petitioner has made no invalidity argument based on the proper
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`construction of “support means” presented here. Accordingly, institution should
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`be denied for all grounds for this reason as well. Pride Solutions, IPR2013-00627,
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`Paper 14 at 11 (“Petitioner has not presented evidence, or argument, that the
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`grounds alleged are shown in any of the prior art cited when ‘retention means’ is
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`properly construed as a means-plus-function term.”).
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`VI. PETITIONER IMPROPERLY INCORPORATES BY REFERENCE
`THE KRUGER DECLARATION
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`Bosch respectfully submits that the Kruger Declaration cannot be relied
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`upon to support the Petition because it amounts to an improper incorporation by
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`reference, which has the effect of circumventing the 60-page limit on petitions.
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`A petition requesting inter partes review is limited to 60 pages, and
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`incorporation by reference is not permitted. 37 C.F.R. §§ 42.24(a)(1)(i),
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`42.6(a)(3). The Board has consistently determined that declarations are not to be
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`used as a tool for circumventing page limits, and the tactic of incorporating lengthy
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`materials to circumvent the page limit has been determined to be improper. See,
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`Case No. IPR2016-00041
`U.S. Patent No. 8,099,823
`e.g., Cisco, IPR2014-00454, Paper 12 at 10 (disregarding arguments made in
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`declaration that were improperly incorporated by reference; “Incorporation ‘by
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`reference amounts to a self-help increase in the length of the [] brief[,]’ and ‘is a
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`pointless imposition on the court’s time. A brief must make all arguments
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`accessible to the judges, rather than ask them to play archeologist with the
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`record.’” (alteration in original; citation omitted)); Unified Patents Inc. v.
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`OliviStar, LLC, IPR2015-01216, Paper 15 at 12–13 n.7 (PTAB Nov. 20, 2015)
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`(citing to a declaration to support conclusory statements in petition is improper
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`incorporation by reference); Blackberry Corp. v. Mobilemedia Ideas LLC,
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`IPR2013-00016, Paper 32 at 21 (PTAB Feb. 25, 2014); PCT Int’l, Inc. v.
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`Amphenol Corp., IPR2013-00229, Paper 17 at 2 (PTAB Dec. 24, 2013); Fidelity
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`National Info. Serv’s, Inc. v. Datatreasury Corp., IPR2014-00489, Paper 9 at 9–11
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`(PTAB Aug. 13, 2014).
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`Throughout the Petition, Petitioner broadly asserts that the entirety of one or
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`more appendices shows the features of the challenged claims. See Petition at 27,
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`30, 34, 37, 49, 54, and 57. The appendices alone comprise 29-pages and over 2.5
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`minutes of video. However, Petitioner does not connect these generic citations to
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`any particular claim limitation or unpatentability argument.
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`This tactic amounts to an improper incorporation by reference and shifts the
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`burden to the Board to make arguments for Petitioner. Petitioner’s extensive
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`reliance on the Kruger Declaration lacks any specificity and fails to support any
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`particular aspect of any argument of unpatentability. Accordingly, the Kruger
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`Declaration and its Appendices should be excluded from consideration, and Bosch
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`respectfully submits that Petitioner has failed to carry its burden with respect to
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`any challenged claim for each of Grounds 1–13.
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`VII. THE OBVIOUSNESS COMBINATIONS IN GROUNDS 2–13 ARE
`DRIVEN BY IMPERMISSIBLE HINDSIGHT, IGNORE TEACHINGS
`AWAY, AND REST UPON CONCLUSORY ASSERTIONS
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`Petitioner improperly uses the challenged claims as a roadmap to piece
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`together disparate references in an attempt to arrive at the claimed invention. See
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`In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the
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`claimed invention as an instruction manual or ‘template’ to piece together the
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`teachings of the prior art so that the claimed invention is rendered obvious”); In re
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`NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (“The Board improperly relied on
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`hindsight reasoning to piece together elements to arrive at the claimed invention.
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`‘Care must be taken to avoid hindsight reconstruction by using the “patent in suit
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`as a guide through a maze of prior art references, combining the right references in
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`the right way so as to achieve the result of the claims in suit.”’”).
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`In all obviousness grounds (Grounds 2–13), Petitioner relies on Prohaska in
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`combination with other references. Prohaska is directed to a conventional
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`bracketed wiper blade “comprising a supporting structure including at least one
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`yoke element for holding a wiper element.” Ex. 1003 at 1:108–117. Petitioner
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`argues that it would have been obvious for a person of ordinary skill in the art to
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`combine the spoiler of Prohaska’s conventional bracketed wiper blade with the
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`components of a beam wiper blade (of the type disclosed and claimed in ’823
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`patent, see Ex. 1001 at 1:13–44). Petition at 42–48, 51–54, 56 and 59. Petitioner,
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`however, does not provide any motivation to do so, or an explanation of how the
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`resulting structure would be able to function as a wiper blade. The motivation to
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`combine cannot come from the ’823 patent, but should come from the prior art
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`references or some other source. Prohaska provides no such motivation, and, in
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`fact, teaches away from the invention of the ’823 patent.
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`Prohaska discloses a molded-on or clipped-on spoiler, and teaches that
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`making a spoiler “moulded together” with the flexible stiffener used to stiffen a
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`wiper element in a conventional bracketed wiper blade is “a simple and
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`economical” way to produce a wiper blade with a spoiler, and that such molded
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`stiffener-spoiler will “stiffen the wiper blade flexibly.” Ex. 1003 at 1:62–67.
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`In support of its obviousness combinations in Grounds 2, 3, 6, 7, 10, and
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`11,4 Petitioner argues that “a person of ordinary skill in the art … would have
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`4 Ground 1 challenges claims 1, 9, and 10 of the ’823 patent based on anticipation.
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`Petition at 2–3, 27. It is unclear why Petitioner includes Ground 1 in its
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`obviousness discussion.
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`considered the spoiler embodied in Figure 3 of Prohaska as a logical starting
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`point.” Petition at 42. And, throughout all obviousness grounds (Grounds 2–13),
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`Petitioner relies on Figure 3 of Prohaska for the disclosure of a hollow spoiler.
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`However, Petitioner omits that Prohaska itself disparages the embodiment of
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`Figure 3, noting that the “hollow space between the surfaces … possibly might be
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`disadvantageous.” Ex. 1003 at 3:4–6 (emphasis added). Recognizing the
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`problems with this hollow spoiler design, Prohaska proposes its own solution, as
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`shown in Figure 6. Id. at 3:6–10 (“This disadvantage is avoided in a wiper element
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`according to Figure 6 …”).
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`Based on this disclosure, a person of ordinary skill in the art would not have
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`attempted to use the stiff spoiler of Prohaska on a beam blade because it would
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`stiffen the beam and adversely affect the sensitive force distribution of a beam
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`blade’s spring support element. Indeed, a person of ordinary skill in the art would
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`have avoided using a spoiler with a hollow space between its sides, as Prohaska
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`taught away from it.
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`Petitioner’s proposed combinations to arrive at the invention of the ’823
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`patent by combining Prohaska and other references make it evident that Petitioner
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`used impermissible hindsight gleaned from the ’823 patent to find similar elements
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`in the prior art and mash them together without any reason for doing so, and
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`without any expectation of success.
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`In addition, Petitioner’s conclusory assertions are insufficient to support a
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`claim of obviousness. K/S HIMPP, 751 F.3d at 1365; ActiveVideo, 694 F.3d at
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`1327–28; SAS Inst., IPR2013-00581, Paper 17 at 3-4. In particular, the Petition
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`repeatedly relies on the Davis Declaration to support certain propositions, when, in
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`fact, the cited paragraphs do not provide any actual support. And without such
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`support, the assertions in the Petition amount to nothing more than attorney
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`argument.
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`For example, Petitioner alleges, citing to the Davis Declaration at ¶ 55, that
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`“[c]ombining the hollow spoiler of Prohaska with the spring support element of
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`either Appel or Hoyler meets the limitations of Claim 1 and yields predictable
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`results: a wiper blade that counters liftoff tendency, distributes force evenly over
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`the windshield, weighs less than a wiper blade with a solid spoiler, and is less stiff
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`than a solid spoiler and thus has less tendency to prevent the spring support
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`element from remaining in contact with the windshield.” Petition at 38. But ¶ 55
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`of the Davis Declaration only generally discusses hollow beam-like structures in
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`other fields. It makes no mention of countering liftoff tendency, even force
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`distribution or stiffness.
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`Last, to mask its use of hindsight bias and conclusory arguments regarding
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`the reasons to combine the various references, Petitioner cites to a reference that is
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`not itself prior art. Petition at 42, 44 (citing “Eckhardt”).5 Petitioner argues that
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`this reference provides evidence that those of skill in the art knew that a hollow
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`portion improved the weight of the wiper Id. However, this reference actually
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`discloses a spoiler-shaped wiper strip portion filled with washer fluid, which is (at
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`least) a different solution for a different problem. See Ex. 1021 at 13 (col. 2, last
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`paragraph) and 14 (col. 3, last paragraph continuing on col. 4). Filling a spoiler
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`with washer fluid would not improve the weight of a wiper blade.
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`As the Petition’s obviousness combinations are built on improper hindsight
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`bias and conclusory assertions, the obviousness grounds, Grounds 2–13 should be
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`denied.
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`
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`5 Petitioner admits in IPR2016-00039 that this reference is not prior art. See Paper
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`1, Petition at 6.
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`VIII. CONCLUSION
`For at least the reasons set forth above, the Board should decline to institute
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`inter partes review of all challenged claims 1, 6, 9, and 10 of the ’823 patent, on all
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`grounds.
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`
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`DATED: January 28, 2016
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`
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`Respectfully submitted,
`
`Shearman & Sterling LLP
`
`/Enrique W. Iturralde/
`Enrique W. Iturralde (Reg. No. 72,883)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Agent for Patent Owner
`Robert Bosch LLC
`
`Mark A. Hannemann (pro hac vice)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Counsel for Patent Owner
`Robert Bosch LLC
`
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`Case No. IPR2016-00041
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`Certificate of Service
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`PRELIMINARY RESPONSE PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. §
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`42.107 was served via electronic ma