Filed: October 24, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
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`Case IPR2016-00041
`Patent 8,099,823
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`PETITIONER’S REPLY IN SUPPORT OF PETITION
`PURSUANT TO 37 C.F.R. § 42.23
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`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES ................................................................................... iii
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`CERTIFICATE OF WORD COUNT ....................................................................... vi
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`I.
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`II.
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`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 2
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`CLAIMS 1, 6, 9, AND 10 OF THE ‘823 PATENT ENCOMPASS
`SUBJECT MATTER THAT WOULD HAVE BEEN OBVIOUS IN
`VIEW OF THE INSTITUTED COMBINATIONS ........................................ 5
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`A.
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`B.
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`C.
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`D.
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`The Differences Between Conventional and Flat-Spring
`Wipers Would Not Have Deterred a Person of Ordinary Skill
`From Applying Teachings of Spoiler Art ............................................. 5
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`There was Reason to Improve the Wipers of Merkel and
`Kotlarski ’383 ........................................................................................ 9
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`Prohaska Does Not Teach Away From a Hollow Spoiler .................. 13
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`The “Binary Component” of Dependent Claim 6 Would Have
`Been Obvious in Further View of Kotlarski ’090 or Mathues ............ 15
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`III.
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`PURPORTED SECONDARY CONSIDERATIONS CANNOT
`OVERCOME PRIMA FACIE OBVIOUSNESS BECAUSE THERE
`IS NO EVIDENCE OF A NEXUS ............................................................... 18
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`IV. ATTACKS ON DR. DAVIS’S CREDIBILITY ARE
`INSUPPORTABLE IN FACT AND LAW ................................................... 23
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`A.
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`B.
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`Prior Consistent Statements Support Dr. Davis’s Credibility
`and Accurately Present Dr. Davis’s Opinions..................................... 23
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`Prior Indefiniteness Opinions Regarding a Different Patent
`Are Immaterial .................................................................................... 24
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`V.
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`CONCLUSION .............................................................................................. 25
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`CERTIFICATE OF SERVICE .................................................................................. 1
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`ii
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`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`
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`TABLE OF AUTHORITIES
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`Cases
`ABT Sys., LLC v. Emerson Elec. Co.,
`797 F.3d 1350 (Fed. Cir. 2015) .......................................................................... 19
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`Page(s)
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`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 3
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`In re Antor Media,
`689 F.3d 1282 (Fed. Cir. 2012) .......................................................................... 23
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`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) ............................................................................ 6
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`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 25
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`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 14
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`DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
`464 F.3d 1356 (Fed. Cir. 2006) .................................................................. 4, 5, 15
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`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) .............................................................................. 3
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`GraftTech Int’l Holdings, Inc. v. Laird Techs. Inc., No. 2015-1796,
`2016 WL 3357427 (Fed. Cir. June 17, 2016) ..................................................... 18
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`Grobler v. Apple Inc., No. 12-CV-01534-JST,
`2014 WL 1867043 (N.D. Cal. May 6, 2014) ...................................................... 25
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`K-Swiss Inc. v. Glide N Lock GmbH,
`567 F. App’x 906 (Fed. Cir. 2014) ..................................................................... 22
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`KSR International Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
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`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 14
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`iii
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`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF AUTHORITIES
`Cont’d
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`Cases
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .................................................................... 12, 15
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`Page(s)
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`Okajima v. Bourdeau,
`261 F.3d 1350 (Fed. Cir. 2001) ............................................................................ 4
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`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .................................................................... 18, 21
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`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 21
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`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`600 F. App’x 755 (Fed. Cir. 2015) ..................................................................... 12
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`Pregis Corp. v. Kappos,
`700 F.3d 1348 (Fed. Cir. 2012) .......................................................................... 22
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`Randall Mfg. v. Rea,
`733 F.3d 1355 (Fed. Cir. 2013) ...................................................................passim
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`Sakraida v. Ag Pro, Inc.,
`425 U.S. 273 (1976) .......................................................................................... 2, 4
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`Western Union Co. v. Moneygram Payment Sys., Inc.,
` 626 F.3d 1361 (Fed. Cir. 2010) ......................................................................... 19
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`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) .......................................................................... 22
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`Statutes and Rules
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`35 U.S.C. § 103 ............................................................................................ 10, 11, 17
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`35 U.S.C. § 103(a) ..................................................................................................... 1
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`Federal Rule of Evidence 801(d) ............................................................................. 23
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`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`TABLE OF AUTHORITIES
`Cont’d
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`Cases
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`Regulations
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`Page(s)
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`37 C.F.R. § 42.104(b)(5) .......................................................................................... 23
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`v
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`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(c) and (d) Petitioner certifies that the word
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`count of Petitioner’s Reply in Support of the Petition (exclusive of any table of
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`contents, table of authorities, listing of facts which are admitted, denied, or cannot
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`be admitted or denied, certificate of service or word count, or appendix of exhibits)
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`as measured by Microsoft Word is 5,407 words.
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`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Costco Wholesale Corporation (“Petitioner”) submits this Reply in further
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`support of the unpatentability of claims 1, 6, 9, and 10 of U.S. Patent No.
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`8,099,823 (the “’823 Patent”; Ex. 1001) under 35 U.S.C. § 103(a) on the following
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`instituted grounds:
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`• Claims 1, 9, and 10 over GB 2,106,775 to Prohaska et al. (“Prohaska”; Ex.
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`1005) and U.S. Patent No. 3,192,551 to Appel (“Appel”) or DE1028896 to
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`Hoyler (“Hoyler”; Ex. 1007);
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`• Claims 1, 9, and 10 over PCT WO99/02383 to Kotlarski et al. (“Kotlarski
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`’383”; Ex. 1003)1 or PCT WO99/12784 to Merkel et al. (“Merkel”; Ex.
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`1008)2 and Prohaska;
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`• Claim 6 over Prohaska, Appel or Hoyler, and PCT WO00/34090 to
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`Kotlarski (“Kotlarski ’090”; Ex. 1020)3 or U.S. Patent No. 3,121,133 to
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`Mathues (“Mathues”; Ex. 1019); and
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`• Claim 6 over Kotlarski ’383 or Merkel, Prohaska, and Kotlarski ’090 or
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`1 As in the Petition, citations to Kotlarski ’383 refer to Exhibit 1004. See Petition
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`for Inter Partes Review of 8,099,823 (the “Petition”) (Paper No. 9), 20 n.2.
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`2 As in the Petition, citations to Merkel refer to Exhibit 1009. See Petition, 21 n.3.
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`3 As in the Petition, citations to Kotlarski ’090 refer to Exhibit 1021. See Petition, 5
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`n.1.
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`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`Mathues.
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`The Board has already found “a reasonable likelihood that Petitioner would prevail
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`in proving the unpatentability” of these claims. See Institution Decision (Paper No.
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`20) (the “Decision”), 14–18.
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`I.
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`LEVEL OF ORDINARY SKILL IN THE ART
`In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
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`Court reaffirmed that the 35 U.S.C. § 103 statutory phrase, “ordinary skill in the
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`art,” includes a degree of “ingenuity” or problem solving skill. Sakraida v. Ag Pro,
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`Inc., 425 U.S. 273, 279 (1976) (citation omitted); see KSR, 550 U.S. at 417, 427.
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` “Under the correct analysis, any need or problem known in the field of
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`endeavor at the time of invention and addressed by the patent can provide a reason
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`for combining the elements in the manner claimed.” KSR, 550 U.S. at 420. When
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`such a problem is identified, the relevant legal question is whether the conception
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`of a claimed solution “was a design step well within the grasp of a person of
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`ordinary skill in the relevant art,” id. at 427, or whether it required “more ingenuity
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`and skill . . . than were possessed by an ordinary mechanic acquainted with the
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`business.” Sakraida, 425 U.S. at 279 (citation omitted); see also KSR, 550 U.S. at
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`417.
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`Robert Bosch LLC (“Patent Owner”) is thus wrong in asserting that the
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`statutory phrase “ordinary skill in the art” connotes merely a level of education or
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`work experience. See Patent Owner Response (Paper No. 32) (the “Response”), 1–
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`2. A person having ordinary skill in the art “is a hypothetical person who is
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`presumed to know the relevant prior art,” In re GPAC Inc., 57 F.3d 1573, 1579
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`(Fed. Cir. 1995), and how to practice the subject matter disclosed in prior art
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`patents, see, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
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`1355 (Fed. Cir. 2003) (“[B]oth the claimed and unclaimed disclosures in a prior art
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`patent are [presumptively] enabled.”).
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`Prior to the claimed invention of the ’823 Patent, the windshield wiper art
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`included, inter alia, flat-spring wipers (e.g., Appel, Hoyler), conventional wipers
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`mounted with hollow spoilers (e.g., Prohaska), and flat-spring wipers having solid
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`spoilers (e.g., Merkel, Kotlarski ’383, Kotlarski ’090). See Petition, 15–23. The
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`’823 Patent acknowledges that the prior art includes a wiper with a spoiler attached
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`directly to a flat-spring support element, and purports to improve over it by
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`substituting a hollow spoiler for the solid spoiler. See ’823 Patent, 1:47–61 (citing
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`DE 19736368 [Ex. 1011, p. 279]4), 1:61–2:17.
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`In analyzing whether this claimed subject matter was non-obvious at the
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`time of its making by the ’823 Patent applicants, it is both necessary and
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`4 Hereinafter, citations are to the English counterpart, U.S. Patent No. 6,292,974
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`(the “’974 Patent”; Ex. 1105).
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`3
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`appropriate to consider whether the combination of Merkel, Kotlarski ’383, Appel,
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`or Hoyler with Prohaska is one that “‘arranges old elements with each performing
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`the same function it had been known to perform’ and yields no more than one
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`would expect from such an arrangement,” KSR, 550 U.S. at 417 (quoting Sakraida,
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`425 U.S. at 282), or whether the substitution would have been “beyond” the “skill”
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`of a person having ordinary skill in the art. Id. “[A]n implicit motivation to
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`combine [prior art references] exists . . . when the ‘improvement’ is technology-
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`independent and the combination of references results in a product or process that
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`is more desirable, for example because it is stronger, cheaper, . . . faster, lighter, . .
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`. or more efficient.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
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`Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
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` In a parallel proceeding involving U.S. Patent No. 6,973,698 (the “’698
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`Patent”), the Board found that the prior art of record reflects an appropriate skill
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`level, relying on the very same case that Patent Owner now suggests supports a
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`different outcome. See Institution Decision, IPR2016-00034, Paper No. 16, at 22
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`(quoting Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Here too,
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`the prior art of record reflects and indeed prescribes the baseline of knowledge and
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`skill against which the obviousness or non-obviousness of the challenged claims
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`must be measured. See KSR, 550 U.S. at 427.
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`4
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`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
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`II. CLAIMS 1, 6, 9, AND 10 OF THE ‘823 PATENT ENCOMPASS
`SUBJECT MATTER THAT WOULD HAVE BEEN OBVIOUS IN
`VIEW OF THE INSTITUTED COMBINATIONS
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` The Differences Between Conventional and Flat-Spring Wipers A.
`Would Not Have Deterred a Person of Ordinary Skill From
`Applying Teachings of Spoiler Art
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`Patent Owner has not disputed, or even addressed, the reasons why a person
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`of ordinary skill would have modified the spoilers of Merkel and Kotlarski ’383 to
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`be hollow and have claw-like extensions, or include a hollow spoiler on the flat-
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`springs of Appel or Hoyler, as claimed: to reduce the wiper’s weight, material, and
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`cost of manufacture. See, e.g., Petition, 24–25; 42–48; Ex. 1014 ¶¶ 54–56. Nor has
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`Patent Owner disputed Petitioner’s assertion that these are implicit motivations,
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`recognized as a matter of law. See DyStar, 464 F.3d at 1368. Patent Owner instead
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`argues that conventional wipers are “fundamentally different” from flat-spring
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`wipers, and that with respect to the latter, “the conventional thinking at the time
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`was to avoid any additional components on the beam.” Response, 3–5. This
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`assertion is contrary to the evidence of record, including the ’823 Patent’s own
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`disclosure.
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`Prior to the claimed invention, it was known that flat-spring wipers, like
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`conventional wipers, were prone to wind-lift at high speeds. Merkel explains this
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`by reference to Hoyler, which dates back to 1958: “At relatively high vehicle
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`speeds, given the cooperation of the[] two aforementioned pressures, both of which
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`are oriented counter to the wiper blade contact pressure, this contact pressure is
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`reduced at least enough that proper wiping is no longer possible.” Merkel, 1:32–
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`47; see also Ex. 1014 ¶ 27. Prohaska likewise teaches that conventional wipers are
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`susceptible to reduced contact pressure as a product of these same forces.
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`Prohaska, 1:8–15; Ex. 1014 ¶ 25.
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`The problem of wind-lift was not only well-known and understood, but by
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`the time of the claimed invention, it had been solved. Spoilers (i.e., “wind
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`deflection strips”) were known to counter the liftoff tendencies of both
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`conventional and flat-spring wipers. See Ex. 1014 ¶¶ 24–27. Prohaska describes
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`several embodiments of a spoiler arranged on a conventional wiper such that “the
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`lifting force created by the air stream is on one hand deflected from the wiper blade
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`and on the other hand transmitted to the wiper element.” Prohaska, 1:53–57.
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`Likewise, Merkel describes a flat-spring wiper which includes a “wind deflector
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`strip” whose “leading-edge face” “counteracts the liftoff tendency of the two
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`pressures and thus assures excellent cleaning quality.” Merkel, 2:15–24; see also
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`Kotlarski ’383, 1:66–2:4.
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`The ’823 Patent’s own disclosure confirms Petitioner’s understanding and
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`undermines Patent Owner’s contention that a person of ordinary skill would not
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`have attached a spoiler to a flat-spring wiper: it cites a flat-spring wiper having a
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`spoiler fastened directly to the spring support element as prior art. ’823 Patent,
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`1:47–61 (citing Ex. 1011, p. 279); see also, e.g., Constant v. Advanced Micro-
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`Devices, Inc., 848 F.2d 1560, 1569–70 (Fed. Cir. 1988) (“A statement in a patent
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`that something is in the prior art is binding on the applicant and patentee for
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`determinations of anticipation and obviousness.”). It is not disputed that flat-
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`springs are affected by structural additions, but the state of the art was such that
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`this so-called “sensitive” behavior (Response, 4, 10) was a factor that persons of
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`ordinary skill readily understood and accounted for in design. See Ex. 1100 (Peck
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`Decl.) ¶ 9; see also Kotlarski ’090, 4:43–48 (describing retainers “provided with
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`opposed securing claws 58 (FIG. 6), each of which clasps one of the two
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`longitudinal rails 32, transversely to their length, on their longitudinal edges 33
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`remote from one another”).
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`It is thus clear that by the time of the claimed invention, persons of ordinary
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`skill in the windshield wiper art had already borrowed spoiler teachings from the
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`older conventional wipers and successfully applied them to flat-spring wipers. See,
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`e.g., Ex. 1014 ¶ 57. All of this background information “is part of the store of
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`public knowledge that must be consulted when considering whether a claimed
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`invention would have been obvious.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362
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`(Fed. Cir. 2013).
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`In Randall, patentee argued “that one of ordinary skill in the art would not
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`have been motivated to combine the cited references, both because of alleged
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`physical impediments to their combination and because the references each taught
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`distinct features that were at cross-purposes with one another.” Id. at 1360. Randall
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`countered that the state of the art included well-known options for avoiding any
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`alleged incompatibility, and submitted numerous prior art references as evidence.
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`Id. The Board declined to consider these background references, opting instead to
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`rely solely on the specific references cited in the claim rejection. Id. The Federal
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`Circuit held this was in error:
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`By narrowly focusing on the four prior-art references cited by the
`Examiner and ignoring the additional record evidence Randall cited to
`demonstrate the knowledge and perspective of one of ordinary skill in
`the art, the Board failed to account for critical background information
`that could easily explain why an ordinarily skilled artisan would have
`been motivated to combine or modify the cited references to arrive at
`the claimed inventions.
`Id. at 1362.
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`Just as in Randall, and contrary to Patent Owner’s contention (see, e.g.,
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`Response, 2), at least Merkel, Kotlarski ’383, Prohaska, Kotlarski ’090, Hoyler,
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`Appel, and the ’974 Patent demonstrate the “background knowledge possessed by
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`a person having ordinary skill in the art,” namely that spoilers effectively counter
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`wind-lift tendencies of conventional and flat-spring wipers and that wiper
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`components, including spoilers, can be attached in various ways, including to the
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`spring support element directly. Randall, 733 F.3d at 1362 (citing KSR, 550 U.S. at
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`418). It is this knowledge that informs “the inferences and creative steps” that such
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`a person would have employed. Id.
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`Viewed through this lens, it is apparent that the differences between
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`conventional and flat-spring wipers would not have deterred a person of ordinary
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`skill from applying teachings of conventional wiper spoiler art to pre-existing flat-
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`spring wiper spoilers. Given the disclosures of Merkel, Kotlarski ’383, Prohaska,
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`Kotlarski ’090, Hoyler, and Appel, the relevant legal question is whether “[a]
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`person having ordinary skill in the art could have combined [Merkel, Kotlarski
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`’383, Appel, or Hoyler] . . . with [a hollow spoiler] . . . in a fashion encompassed
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`by [the challenged claims], and would have seen the benefits of doing so.” KSR,
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`550 U.S. at 422. The answer here is clearly “yes.”
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`B.
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`There was Reason to Improve the Wipers of Merkel and
`Kotlarski ’383
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`Only a few features claimed in the ’823 Patent purport to improve over the
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`prior art, namely a hollow spoiler having a support means (i.e., a wall), attached
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`with claw-like extensions. See, e.g., ’823 Patent, 2:5–30; see also Ex. 1014 ¶ 62;
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`Ex. 2003 (Dubowsky Decl.) ¶¶ 29–32. With the exception of the “binary
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`component” of dependent claim 3, discussed infra, Patent Owner has never argued
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`that these specific improvements are not obvious; instead, it has taken the
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`extraordinary position that there was no reason to make any improvement to
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`Merkel or Kotlarski ’383 because both “disclose a complete beam blade solution.”
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`Response, 6. The reasons Petitioner presented remain unaddressed. See, e.g.,
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`Petition, 24–25; 42–48; Ex. 1014 ¶¶ 54–56, 60–72.
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`If the Board credited this argument, the entire obviousness doctrine would
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`be rendered superfluous; 35 U.S.C. § 103 is intended to preclude monopolies on
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`trivial improvements. As the Supreme Court observed, “[g]ranting patent
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`protection to advances that would occur in the ordinary course without real
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`innovation retards progress and may, in the case of patents combining previously
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`known elements, deprive prior inventions of their value or utility.” KSR, 550 U.S.
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`at 419. And even though, over time, it “is expected in the normal course” that
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`progress will begin “from higher levels of achievement,” improvements that are
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`“the results of ordinary innovation” will still not be “the subject of exclusive rights
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`under the patent laws.” KSR, 550 U.S. at 427.
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`By the time of the claimed invention, the flat-spring and spoiler windshield
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`wiper art constituted a series of minor improvements, exemplified below:
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`10
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`IPR2016-00041
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`Exemplary Timeline of Improvements5
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`Aug. 21, 19976 Sept. 8, 19977 Dec. 7, 19988 May 29, 20009 Apr. 26, 200110
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`The ’823 Patent simply reflects a further iteration in a series of minor
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`improvements, all of which occurred “in the ordinary course” and none of which
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`were beyond the skill of a person of ordinary skill in the windshield wiper art. See
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`KSR, 550 U.S. 417, 419.
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`5 The dates reflect the earliest priority date listed on the face of each reference,
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`respectively.
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`6 ’974 Patent, Fig. 3.
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`7 Merkel, Fig. 3.
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`8 Kotlarski ’090, Fig. 6.
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`9 U.S. Patent No. 6,944,905 (Ex. 1014, p. 78), Fig. 2. Although this patent is not
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`statutory prior art, it nonetheless indicates that minor iterative improvements on
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`flat-spring wipers with spoilers were common in this field.
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`10 ’823 Patent, Fig. 2.
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`Patent Owner has not adequately supported its suggestion that the situation
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`here
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`is different
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`than every other
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`improvement encompassed by § 103.
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`Dr. Dubowsky’s conclusory assertion (Ex. 2003 ¶ 74) adds nothing to the analysis,
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`and the single authority Patent Owner points to, Plas-Pak Indus., Inc. v. Sulzer
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`Mixpac AG, 600 F. App’x 755 (Fed. Cir. 2015), is inapposite. See Response, 6.
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`In Plas-Pak, the proposed obviousness combinations were rejected because
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`they would “fundamentally alter” a prior art reference’s “principle of operation” or
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`“would render [it] inoperable for its intended purpose.” Id. at 759–60. For
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`example, where the prior art reference specifically required valves to prevent
`
`backflow in a paint-dispensing apparatus, and the proposed combination would
`
`have eliminated the valves, a finding of non-obviousness was proper because the
`
`reference’s principle of operation would have been destroyed. Id. at 758–59.
`
`Unlike in Plas-Pak, substituting the hollow spoiler of Prohaska for the solid
`
`spoiler of either Merkel or Kotlarski ’383 would not “fundamentally alter” the
`
`“principle of operation” or render Merkel or Kotlarski ’383 “inoperable for [their]
`
`intended purpose.” The slightly modified wipers would weigh less and require less
`
`material to manufacture, but they would otherwise clean windshields and counter
`
`wind-lift in exactly the same way. See In re Mouttet, 686 F.3d 1322, 1333 (Fed.
`
`Cir. 2012) (finding obviousness where a substitution did not destroy the primary
`
`reference’s principle of operation).
`
`12
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`

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`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`
`Patent Owner also argues that Merkel, Kotlarski ’383, and Prohaska do not
`
`expressly teach what changes to the wiper strip, support element, and spoiler
`
`attachment mechanism might be needed to successfully substitute a hollow spoiler
`
`for the solid spoilers of Merkel and Kotlarski ’383. Response, 6. The same
`
`situation was presented in KSR itself:
`
`In automotive design, as in many other fields, the interaction of
`multiple components means that changing one component often
`requires
`the others
`to be modified as well. Technological
`developments made it clear that engines using computer-controlled
`throttles would become standard. As a result, designers might have
`decided to design new pedals from scratch; but they also would have
`had reason to make pre-existing pedals work with the new engines.
`KSR, 550 U.S. at 424. Here too, a person of ordinary skill would have had reason
`
`to make pre-existing components work together and there is no evidence that slight
`
`modifications to various wiper components were beyond the technical grasp of a
`
`person of ordinary skill in the windshield wiper art. Patent Owner urges the same
`
`rigid approach that KSR rejected. See, e.g., Randall, 733 F.3d at 1362 (citing KSR,
`
`550 U.S. at 415–22).
`
`Prohaska Does Not Teach Away From a Hollow Spoiler
`
`C.
`
`In a well-reasoned ruling, this Board has already rejected Patent Owner’s
`
`characterization of Prohaska as teaching away from using one of its own
`
`embodiments, a hollow spoiler (Fig. 3):
`
`13
`
`

`
`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`
`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. 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 . . . in the manner proposed by Petitioner.
`Decision, 14–15 (citing DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
`
`F.3d 1314, 1327 (Fed. Cir. 2009); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
`
`1165 (Fed. Cir. 2006)).
`
`Patent Owner has not proffered any evidence that should cause the Board to
`
`doubt its initial finding. The deposition testimony of Petitioner’s expert, Dr. Davis,
`
`which Patent Owner relies on, actually lends support to the Board’s conclusion.
`
`See Response, 8–9 (citing Ex. 2002, 113:15–115:14) (“[I]t’s kind of one of the
`
`design trade offs that you would be making . . . and it would certainly be lighter,
`
`but there could be a bit of a tradeoff there.”).
`
`
`
`Moreover, there are reasons why a person of ordinary skill would have
`
`modified the flat-spring wipers of Hoyler and Appel by adding the Prohaska
`
`spoiler, or modified the spoilers of Merkel or Kotlarski ‘383 to be hollow, as in
`
`Prohaska—Patent Owner has just ignored them. “[A]ny need or problem known in
`
`14
`
`

`
`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`the field of endeavor at the time of invention and addressed by the patent [i.e.,
`
`Prohaska] can provide a reason for combining the elements in the manner
`
`claimed.” KSR, 550 U.S. at 420; see also Ex. 1014 ¶ 57. Reducing the weight of
`
`automobile components was a well-known objective, see Ex. 1014 ¶¶ 53–56; see
`
`also DyStar, 464 F.3d at 1368, and Prohaska “may be read for all that it teaches,
`
`including uses beyond its primary purpose.” In re Mouttet, 686 F.3d at 1331.
`
`
` The “Binary Component” of Dependent Claim 6 Would Have D.
`Been Obvious in Further View of Kotlarski ’090 or Mathues
`
`The only claim element that Patent Owner contends is not disclosed by the
`
`proposed combinations is the “binary component” of dependent claim 6. Response,
`
`11–12. But Petitioner has never taken the position that this element is disclosed,
`
`precisely as claimed, by any one reference—it is the combination of references that
`
`renders this claim obvious. See Petition, 48–54.
`
`The claimed “binary component” comprises two parts: (i) a wind deflection
`
`strip and (ii) claw-like extensions; the latter is made of a harder material than the
`
`former. ’823 Patent, claim 6 (depending from claim 5). Prohaska describes a
`
`comparable, two-part spoiler (i.e., a “binary component”), but the two parts are
`
`made of the same material (see, e.g., Prohaska, 1:68–79, 3:108–116; see also
`
`Petition, 54):
`
`15
`
`

`
`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`
`
`
`Prohaska, Fig. 3
`
`Kotlarski ’090 teaches a spoiler and claw-like extensions; the spoiler is
`
`formed as part of the wiper strip and the claws are provided on retainers placed
`
`along the length of the wiper and grip the spring support element directly. See
`
`Petition, 22–23, 49, 51–53 (discussing Kotlarski ’090). The wind deflection strip is
`
`made of a rubber-elastic material, while the “securing claws” are made preferably
`
`of plastic—a generally harder material than the rubber. Id.; Ex. 1014 ¶ 74.
`
`Mathues, on the other hand, discloses a wiper strip or “squeegee,” having
`
`two or more strata, each with a different degree of hardness; the retention portion
`
`of the squeegee is made of a harder material than the remainder. See Petition, 23,
`
`50, 53 (discussing Mathues); Ex. 1014 ¶ 75. As the Examiner correctly observed in
`
`a rejection that Patent Owner never substantively addressed, Mathues thus “teaches
`
`making the retention portion of an article harder than the remainder[, which] helps
`
`enhance the security of the joint.” Petition, 9–10 (citation omitted).
`
`16
`
`

`
`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`
`Based on the knowledge described in Kotlarski ’383, Merkel, Kotlarski
`
`’090, and Prohaska, a person of ordinary skill in the art is presumed to have
`
`understood at least the following by the time of the claimed invention: (1) claw-
`
`like extensions can be formed directly on a spoiler (Prohaska); (2) claw-like
`
`extensions can grip a flat-spring directly to secure a wiper component thereto
`
`(Kotlarski ’090); (3) harder materials (e.g., plastic) enhance the security of the
`
`connection (Kotlarski ’090; Mathues); (4) flexible spoilers are preferable to rigid
`
`spoilers (Kotlarski ’383, Merkel, Kotlarski ’090, Prohaska); and, (5) windshield
`
`wiper components can be co-extruded with materials of different degrees of
`
`hardness, tailored to a given application (Mathues).
`
`In light of this background knowledge which “must be consulted,” Randall,
`
`733 F.3d at 1362, the question is whether “a person having ordinary skill in the art
`
`could have combined” the materials-related teachings of either Kotlarski ’090 or
`
`Mathues to upgrade the Prohaska elongations to be harder than its wind deflection
`
`strip, “and would have seen the benefits of doing so,” KSR, 550 U.S. at 422.
`
`Petitioner submits that selecting materials known to optimize respective functions,
`
`and combining them using the known technique of co-extrusion, is precisely the
`
`type of “ordinary innovation” that is unpatentable pursuant to § 103. See id. at 417,
`
`427; Ex. 1014 ¶¶ 73, 76.
`
`17
`
`

`
`IPR2016-00041
`PETITIONER’S REPLY IN SUPPORT OF PETITION
`
`III. PURPORTED SECONDARY CONSIDERATIONS CANNOT
`OVERCOME PRIMA FACIE OBVIOUSNESS BECAUSE THERE IS
`NO EVIDENCE OF A NEXUS
`
`“Evidence of commercial success, or other secondary considerations, is only
`
`significant if there is a nexus between the claimed invention and the commercial
`
`success.” Or