Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 20
`Entered: April 25, 2016
`
`
`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
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 20
`Entered: April 25, 2016
`
`
`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
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`
`I. INTRODUCTION
`
`Petitioner requests an inter partes review of claims 1, 6, 9, and 10 of
`U.S. Patent No. 8,099,823 (Ex. 1001, “the ’823 patent”). Paper 9 (“Pet.”).
`Patent Owner filed a Preliminary Response to the Petition. Paper 19
`(“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that
`an inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Upon consideration of the Petition and
`Patent Owner’s Preliminary Response, we institute an inter partes review on
`all challenged claims of the ’823 patent.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to the patentability of claims for which inter partes review is
`instituted. Our final decision will be based on the record as fully developed
`during trial.
`
`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
`(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.
`
` 2
`
`
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`
`B. Wiper Blade Background
`
`There are two main types of windshield wiper structures: beam and
`
`yoke. 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 and 6, 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:
`
`
`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.
`
` 3
`
`
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`
`C. The ’823 Patent
`
`The ’823 patent is directed to an automobile windshield wiper blade.
`
`Ex. 1001, Abstract. The wiper is made of three main components: elastic
`rubber wiper strip 24, resilient support element 12, and wind deflection strip
`42. 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
`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
`
` 4
`
`
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`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 majority of the
`height is above the upper belt surface in a direction
`facing away from the windshield.
`
` 5
`
`
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`
`E. Prior Art and Asserted Grounds
`
`Petitioner asserts that claims 1, 6, 9, and 10 of the ’823 patent are
`unpatentable on the following grounds:
`Basis Claim(s) Challenged
`Reference(s)
`§ 102 1, 9, and 10
`Prohaska1
`Prohaska, and Appel2 or Hoyler3 § 103 1, 9, and 10
`Kotlarski ’3834 or Merkel,5 and
`§ 103 1, 9, and 10
`Prohaska
`Prohaska, Appel or Hoyler, and
`Kotlarski ’0906 or Mathues7
`Kotlarski ’383 or Merkel,
`Prohaska, and Kotlarski ’090 or
`Mathues
`
`§ 103 6
`
`§ 103 6
`
`
`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 April 24, 1958 (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).
`
` 6
`
`
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`Petitioner also relies on the declaration of Gregory W. Davis, Ph.D.
`(Ex. 1014).
`
`II. 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).
`Petitioner points out that the “support means” of claim 1 was
`construed previously by Patent Owner in a district court proceeding to be a
`means-plus-function limitation, and has identified what Patent Owner
`alleged to be the corresponding structure. Pet. 14–15. Petitioner takes the
`position that, although it “does not agree that Patent Owner’s construction
`represents the broadest reasonable construction of the claim term in the
`abstract,” in this proceeding, the “Patent Owner should not be heard to assert
`a narrower construction.” Id. at 15. In its claim charts, Petitioner identifies
`corresponding structure in the prior art consistent with Patent Owner’s prior
`construction. See, e.g., id. at 28 (“Prohaska discloses a support means, in the
`form of a back 31 of flexible strip 30”).
`Patent Owner argues that Petitioner has not met the requirement of 37
`C.F.R. § 42.104(b)(3) to construe means-plus-function claims because
`Petitioner has not set forth its own claim construction, and that the Petition
`should be denied on that basis alone. Prelim. Resp. 9–11. Our Rules require
`that, “[w]here the claim to be construed contains a means-plus-function
`[limitation] . . ., the construction of the claim must identify the specific
`portions of the specification that describe the structure, material, or acts
`
` 7
`
`
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Patent
`Owner argues that some PTAB panels have interpreted this Rule as requiring
`every element in a challenged claim that contains a means-plus-function
`limitation to be construed explicitly according to 35 U.S.C. § 112(f). See
`Prelim. Resp. 9–11. Patent Owner argues that Petitioner has not “offer[ed]
`any actual construction,” and that on that basis, “the Petitioner should be
`denied.” Id. at 9, 11.
`We disagree with Patent Owner. First, we do not agree that our rules
`always require an original, explicit, or full construction of every
`means-plus-function limitation in a challenged claim in order for a petition
`to be considered. In particular, Rule 104(b)(3) does not state --where the
`claim contains a means-plus-function limitation-- but rather “[w]here the
`claim to be construed contains a means-plus-function [limitation].” 37
`C.F.R. § 42.104(b)(3) (emphasis added). In addition, the Rule merely
`requires “identi[fication]” of the corresponding structure. Thus, the Rule
`states that, in a claim that is construed by a petitioner that has a means-plus-
`function limitation, the petitioner must point out the corresponding structure.
`Accordingly, we hold that the Rules do not require every means-plus-
`function limitation in a challenged claim to be fully or explicitly construed
`by a petitioner.8
`
`
`8 As a practical matter, however, we note that a petitioner who fails to offer a
`claim construction of a potential means-plus-function limitation of a
`challenged claim may very likely run the risk of failing to demonstrate a
`reasonable likelihood of success on the merits for failing to address
`adequately the patentability of the claimed subject matter, but that is a
`separate issue.
`
` 8
`
`
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`Second, we do not agree that Petitioner’s identification of the
`corresponding structure here was improper, even under the stricter reading
`of Rule 104(b)(3) that Patent Owner offers. Petitioner has identified the
`corresponding structure in its Petition, and points to where the prior art
`discloses that structure. See Pet. 14–15 (“this function corresponds to ‘a
`wall connected to both sides of the wind deflection strip, or the channel wall
`facing the upper belt surface of the support element, and their equivalents’”);
`id. at 28 (“Prohaska discloses a support means, in the form of a back 31 of
`flexible strip 30”). Although Petitioner does not cite to particular passages
`of the ’823 patent where this structure can be found, given that the
`corresponding structure identified by Petitioner (a wall) is simple and readily
`identifiable, Petitioner has sufficiently identified the corresponding structure
`in the specification. In addition, although Petitioner expresses some
`skepticism of Patent Owner’s prior construction, Petitioner relies on that
`construction for purposes of this proceeding. Petitioner has made clear the
`ground of unpatentability upon which it relies with respect to this limitation,
`and the prohibition on new arguments in Petitioner’s Reply ensures that
`Patent Owner has a full and fair opportunity to respond to the grounds in its
`Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to
`arguments raised in the corresponding opposition or patent owner
`response”). Accordingly, on the facts before us, Petitioner has satisfied the
`notice and identification functions of Rule 104(b)(3) with respect to the
`claimed “support means.”
`Lastly, the prior Board cases Patent Owner cites in support of its
`position have facts different from this case. In Pride Solutions, the
`petitioner construed a “retention means” functionally as “a mechanism that
`
` 9
`
`
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`retains something” but did not offer corresponding structure. Pride
`Solutions, LLC v. Not Dead Yet Mfg., Inc., Case IPR2014-00627, Paper 14,
`9–11 (PTAB Mar. 17, 2014). Similarly, in PanelClaw, the petitioner argued
`the limitation should be read to be “purely functional” and did not point to
`corresponding structure. PanelClaw, Inc. v. SunPower Corp., Case
`IPR2014-00386, Paper 7, 9 (PTAB June 30, 2014). Here, on the other hand,
`Petitioner does identify a corresponding structure for the construed “support
`means.” Pet. 14–15. We further point out that, in PanelClaw, the Board
`noted that “[w]e are not required to deny the Petition on account of
`Petitioner’s failure to comply with the rule,” but that the particular
`circumstances of the case warranted such a result. PanelClaw, Paper 7, 10
`n.6. In Apple v. ContentGuard, the petitioner attempted to incorporate by
`reference prior statements of corresponding structure. Apple, Inc. v.
`ContentGuard Holdings, Inc., Case IPR2015-00456, Paper 9, 6 (PTAB June
`15, 2015). Here, Petitioner offers identification of the corresponding
`structure in the Petition itself. Pet. 14–15. In SAS v. ComplementSoft, the
`petitioner did not offer a construction for the term “means for allowing,”
`which the Board determined to be “fatal” to the petitioner’s challenge, but
`the reason given was because the “analysis . . . is insufficient to show that
`the prior art teaches the means-plus-function limitation of claim 11”
`(emphases added), rather than simply for not construing the term in its claim
`construction section. SAS Inst., Inc. v. ComplementSoft, LLC, Case
`IPR2013-00226, Paper 9, 11 (PTAB Aug. 12, 2013).9 Accordingly, our
`holding here is consistent with the prior Board decisions identified by Patent
`
`
`9 The holding in SAS v. ComplementSoft is an example of the risk of not
`offering a claim construction we identified in supra n.8.
`
`10
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`Owner regarding the requirements of a petition challenging claims including
`means-plus-function limitations.
`
`B. Petitioner’s Asserted Grounds of Unpatentability
`
`Petitioner asserts several grounds of unpatentability (Pet. 27–60),
`which we address in turn.
`
`1. Anticipation by Prohaska
`
`Petitioner asserts that claims 1, 6, 9, and 10 are anticipated by
`Prohaska. Pet. 2, 27–30, 54, 57. We briefly introduce Prohaska before
`turning to our discussion of Petitioner’s analysis.
`a. 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. One embodiment is shown in Figure 3, reproduced below
`with added coloring:
`
`
`11
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`
`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.
`b. Discussion of the Prohaska Anticipation Ground
`Independent claim 1 requires a flexible resilient support element, an
`
`elastic rubber wiper strip, and a wind deflection strip. Petitioner asserts that
`the support element reads on flexible strip 30; that the wiper reads on wiper
`element 10; and that the wind deflection strip reads on spoiler 20. Pet. 27–
`28. Petitioner specifically relies on the embodiment shown in Figure 3 of
`Prohaska in order to show the limitations of claim 1 requiring the wind
`deflection strip to have two sides and a support means. Id. at 28. Claim 1
`additionally requires that “the sides of the wind deflection strip have
`respective free ends . . . that fittingly grip around the outer edges of the
`support element.” Thus, the claimed wind deflection strip grips the support
`element; to do so they must be separate structures. Addressing that
`limitation, Petitioner asserts that “Prohaska expressly discloses clipping a
`spoiler 20 that contacts the top and bottom of a flexible strip 30 by means of
`claw-like extensions (detents 28 and 29).” Id. at 29. Spoiler 20 of Prohaska,
`however, does not use claws to grip flexible strip 30; they are one and the
`
`12
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`same in Figure 3. Flexible strip 30 in Figure 3 of Prohaska, as shown above,
`has claw-like elements that grip onto the wiper. Accordingly, Petitioner has
`not shown how Prohaska describes each element of claim 1, arranged as
`required by the claim. This deficiency applies to dependent claims 6, 9, and
`10. Petitioner’s assertions with respect to this anticipation ground are
`insufficient to demonstrate a reasonable likelihood of success.
`
`2. Obviousness in View of Prohaska and Appel
`
`Petitioner asserts that claims 1, 9, and 10 are unpatentable in view of
`
`the windshield wipers of Prohaska and Appel. Pet. 3, 27–30, 54, 57. In
`general, Petitioner asserts that it would have been obvious to clip the spoiler
`of Prohaska on the beam-style wiper of Appel. See, e.g., id. at 43. We
`discussed the spoiler of Prohaska above, we next describe Appel before
`turning to our discussion of Petitioner’s ground.
`a. Appel
`Appel discloses a wiper having a spring element as a backbone to
`
`distribute the wiper load evenly. Ex. 1006, 1:23–28. Figures 4 and 5 of
`Appel are reproduced below.
`
`
`
`
`
`
`13
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`Figures 4 and 5 of Appel are top and side views, respectively, of a
`beam-style windshield wiper blade.
`b. Discussion of the Prohaska / Appel Obviousness Ground
`Petitioner identifies where Prohaska and Appel disclose each
`
`limitation of claims 1, 9, and 10. Pet. 27–30, 54, 57. Petitioner asserts that
`Prohaska discloses a hollow wind deflection strip (spoiler) and that Appel
`discloses a belt-shaped flexible spring support element and wiper. Id. at 27.
`Petitioner points to Prohaska’s disclosure “to retrofit the spoilers it discloses
`onto flexible strips sharing features with embodiments of Appel.” Id. at 43
`(citing Ex. 1005, 1:68–70). Petitioner asserts, therefore, that the proposed
`combination is “a simple arrangement of old elements, each performing the
`same function it had been known to perform.” Id. at 43–44.
`
`Patent Owner argues that Petitioner “does not provide any motivation
`. . . or an explanation of how the resulting structure would be able to
`function as a wiper blade.” Prelim. Resp. 14. Regarding the reason to
`combine, Petitioner has pointed out that Prohaska itself suggests retrofitting
`wipers without a spoiler to have a spoiler. Pet. 43 (citing Ex. 1005, 1:68–70
`(“It is easily possible to retrofit a wiper blade by squeezing a spoiler against
`its flexible strip or clipping it on this flexible strip”)). Further, Patent Owner
`does not offer any evidence or explanation for how such a combination
`would fail to result in a functional wiper blade, such that the argument is
`unpersuasive on this record.
`
`Patent Owner also argues that Prohaska “disparages the embodiment
`of Figure 3” such that a person of ordinary skill in the art would avoid it.
`Prelim. Resp. 15–16. The cited portion of Prohaska that Patent Owner
`addresses states: “[b]ecause the back 31 of the resilient strip is developed as
`
`
`14
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`a hollow member with about triangular cross-section, there is a hollow space
`5 between the surfaces 21 and 22 which possibly migh[t] be
`disadvantageous.” Ex. 1005, 3:2–6. Prohaska then goes on to offer a
`different embodiment (shown in Figure 6) that purportedly avoids the
`disadvantage by the wiper extending up into the hollow space to fill it. Id. at
`3:7–22. 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. See DePuy 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)). On this
`record, we are persuaded by Petitioner that Prohaska teaches a way to form a
`spoiler that retrofits onto existing wipers and that is hollow. We have no
`evidence before us or reason to believe that the particular problem identified
`by Prohaska regarding the hollow Figure 3 spoiler would prevent a person of
`ordinary skill in the art from considering it obvious to apply it to Appel in
`the manner proposed by Petitioner.
`
`Patent Owner lastly criticizes Petitioner’s use of the Kruger and Davis
`declarations and the citation to allegedly non-prior art (Eckhardt). Prelim.
`Resp. 11–13, 16–17. Patent Owner asserts that the citations to the Kruger
`
`
`15
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`declaration amount to incorporation by reference. Id. at 11–13. Mr. Daniel
`H. Kruger, Ph.D., attests to his supervision in the creation of certain
`three-dimensional drawings and animations that appear in other exhibits of
`record. Ex. 1016. Petitioner cites, for example, to Exhibits 1028 and 1030
`prior to its claim chart pointing to the disclosures of Prohaska and Appel it
`asserts satisfy the limitations of claim 1; these exhibits are an animation and
`illustrations of the proposed combination, respectively. Pet. 27; see
`generally Ex. 1028; Ex. 1030. Petitioner’s proposed obviousness ground
`here is explained fully in the Petition in the claim chart on pages 27–30 and
`text on pages 42–44. The citations to Exhibits 1028 and 1030 serve merely
`as further evidence offered to assist in envisioning what the proposed
`combination would look like. There is no analysis in these exhibits that
`must be in the Petition in order for Petitioner to make its case.10
`Accordingly, the citations are not improper and are not improper
`incorporation by reference. This same analysis applies to the similar
`allegations Patent Owner makes with respect to the other grounds and
`claims. See Prelim. Resp. 12 (alleging improper incorporation by reference
`on pages 27, 30, 34, 37, 49, 54, and 57 of the Petition).
`Patent Owner’s arguments regarding the Davis declaration are
`likewise unpersuasive. Patent Owner offers as an example Petitioner’s
`citation of paragraph 55 of the Davis declaration on page 38 of the Petition.
`Page 38 of the Petition, however, does not cite to the Davis declaration.
`
`
`10 In other words, the citations here are additional evidence; the prohibition
`in our rules is with respect to arguments. 37 C.F.R. § 42.6(a)(3)
`(“Arguments must not be incorporated by reference from one document into
`another document.”) (emphasis added).
`
`16
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`Lastly, Patent Owner argues that Eckhardt (Ex. 1017) is not prior art.
`Petitioner cites to Exhibit 1017, among others, as evidence that a hollow
`spoiler was known. See Pet. 42 (“the hollow cross-section would reduce
`stiffness, increase material savings, and weigh less than a spoiler with a solid
`cross-section”); Ex. 1014 ¶ 57. Regardless of whether Eckhardt is prior
`art,11 we agree with Patent Owner that Eckhardt shows a spoiler that is
`hollow for the purposes of providing a channel for fluids rather than for
`reducing stiffness, increasing material savings, or weighing less, as
`Petitioner asserts. See Ex. 1017, 13 (describing “a channel 16 for a washer
`fluid”), 14 (describing Figure 3, which Dr. Davis discussed at Ex. 1014 ¶ 57,
`as having a channel 18, which is simply a larger version of channel 16).
`Accordingly, we do not find Petitioner’s assertions regarding Eckhardt
`persuasive and do not rely on them for purposes of this Decision.
`In view of the above, we are persuaded that Petitioner has shown a
`reasonable likelihood that claim 1 of the ’823 patent is obvious in view of
`Prohaska and Appel.
`
`3. Remaining Claims and Grounds
`
`Patent Owner does not address specifically the remaining claims or
`grounds at this time and instead focuses its arguments on those issues
`addressed above. Petitioner offers its analysis of claims 9 and 10 under the
`
`
`11 Exhibit 1017 was published on August 16, 2001 (Ex. 1017, (43)), whereas
`the application issuing as the ’823 patent was filed on February 9, 2009 but
`claims priority to a series of applications ultimately leading to a foreign
`application filed April 26, 2001 (Ex. 1001, (22), (62)). Patent Owner does
`not explain whether the subject matter of the ’823 patent properly can claim
`benefit to one or more earlier filing date(s), but we need not reach that issue
`at this time for the reasons explained herein.
`
`17
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`Prohaska and Appel ground, as well as its analysis of three other references
`(Hoyler, Kotlarski ’383, and Merkel) in combination with Prohaska that also
`address claims 1, 9, and 10. Pet. 30–48, 54–60. Petitioner also sets forth its
`analysis of claim 6, which depends from claim 1, in view of Prohaska,
`Appel, Hoyler, Kotlarski ’383, and Merkel in addition to Kotlarski ’090 and
`Mathues. Pet. 48–54.
`We have set forth our analysis for claim 1 under the Prohaska and
`Appel ground. Under 35 U.S.C. § 314(a), “inter partes review [must not] be
`instituted unless . . . there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Petitioner has satisfied that requirement and we therefore also institute on
`these remaining obviousness claims and grounds, as set forth in our Order
`below.
`
`III. ORDER
`
`
`
`In view of the foregoing, it is hereby:
`ORDERED that inter partes review of the ’823 patent is instituted on
`the following grounds:
`Whether claims 1, 9, and 10 would have been obvious in view
`of Prohaska, and Appel or Hoyler;
`Whether claims 1, 9, and 10 would have been obvious in view
`of Kotlarski ’383 or Merkel, and Prohaska;
`Whether claim 6 would have been obvious in view of Prohaska,
`Appel or Hoyler, and Kotlarski ’090 or Mathues;
`Whether claim 6 would have been obvious in view of
`Kotlarski ’383 or Merkel, Prohaska, and Kotlarski ’090 or Mathues;
`
`
`18
`
`
`
`
`
`Case IPR2016-00041
`Patent 8,099,823
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, inter partes review of the ʼ823 patent shall commence on the
`entry date of this Order, and notice is hereby given of the institution of a
`trial; and
`
`FURTHER ORDERED that no ground other than those specifically
`provided above is authorized.
`
`
`
`PETITIONER:
`
`Richard M. Koehl
`James R. Klaiber
`David Lansky
`HUGHES HUBBARD & REED LLP
`richard.koehl@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`david.lansky@hugheshubbard.com
`
`
`
`PATENT OWNER:
`
`Enrique Iturralde
`SHEARMAN & STERLING LLP
`Enrique.Iturralde@shearman.com
`
`
`
`
`
`19
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
