Paper No. ______
`Filed: October 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Costco Wholesale Corporation
`Petitioner
`
`v.
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`Robert Bosch LLC
`Patent Owner
`
`
`
`U.S. Patent 8,099,823
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,099,823
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
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`66803919_4
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1 
`III. 
`PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103............ 2 
`IV.  GROUNDS FOR STANDING ........................................................................ 2 
`V. 
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED UNDER 37 U.S.C. § 312 AND 37 C.F.R. §§ 42.22(A)(1)
`AND 42.104(B)(1)-(2) ..................................................................................... 2 
`A. 
`Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1) .... 2 
`
`B. 
`
`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2) ................ 2 
`
`VI.  THE ‘823 PATENT ......................................................................................... 4 
`A. 
`Prosecution and Issuance of the ‘823 Patent ......................................... 6 
`
`B. 
`
`Claim Construction ............................................................................. 14 
`
`VII.  OVERVIEW OF PRIOR ART ...................................................................... 15 
`A.  U.K. Patent No. G.B. 2,106,775 to Prohaska (“Prohaska;” Ex. 1005)
` ............................................................................................................. 15 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`U.S. Patent No. 3,192,551 to Appel (“Appel;” Ex. 1006) .................. 18 
`
`German Patent No. D.E. 1,028,896 to Hoyler (“Hoyler,” Ex. 1007)
`(“Hoyler”) ............................................................................................ 19 
`
`PCT Pub. No. WO99/02383 (“Kotlarski ‘383”; Exs. 1003, 1004) ..... 20 
`
`PCT Publication No. WO99/12784 (“Merkel”; Exs. 1008, 1009) .... 21 
`
`PCT Pub. No. WO00/34090 to Kotlarsi (“Kotlarski ‘090”; Exs. 1020,
`1021) .................................................................................................... 22 
`
`G.  U.S. Patent No. 3,121,133 to Mathues (“Mathues;” Exhibit 1019) .... 23 
`
`VIII.  DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY
` ....................................................................................................................... 23 
`A. 
`Legal Standards ................................................................................... 24 
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`Anticipation ............................................................................... 24 
`1. 
`Obviousness .............................................................................. 24 
`2. 
`Level of Skill in the Art .............................................................. 25 
`3. 
`Claim 1 Is Unpatentable ...................................................................... 27 
`
`Claim 6 Is Unpatentable ...................................................................... 48 
`
`Claim 9 Is Unpatentable ...................................................................... 54 
`
`Claim 10 Is Unpatentable .................................................................... 57 
`
`B. 
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`C. 
`
`D. 
`
`E. 
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`IX.  CONCLUSION .............................................................................................. 60 
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`66803919_4
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`Exhibit
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`LIST OF EXHIBITS
`Description
`
`U.S. Patent No. 8,099,823 “Automobile Windshield Wiper
`Blade,” to Kraemer et al.
`
`October 10, 2014 Proof of Service filed by Patent Owner in Civil
`Action No 12-574-LPS (consolidated)
`
`PCT Pub. No. WO99/02383 to Kotlarski et al. (“Kotlarski ‘383”)
`
`U.S. Patent No. 6,279,191 to Kotlarski et al. (“Kotlarski ‘383”)
`
`U.K. Patent No. GB 2,106,775 to Prohaska et al.(“Prohaska”)
`
`U.S. Patent No. 3,192,551 to Appel (“Appel”)
`
`German Patent No. DE1028896 to Hoyler (“Hoyler”)
`
`PCT Pub. No. WO99/12784 to Merkel et al. (“Merkel”) (also
`published as U.S. Patent No. 6,295,690)
`
`U.S. Patent No. 6,295,690 to Merkel et al. (“Merkel”)
`
`File History of U.S. Patent No. 7,228,588 (Application No.
`10/312,279)
`
`File History of U.S. Patent No. 7,484,264 (Application No.
`11/760,394)
`
`File History of U.S. Patent No. 8,099,823 (Application No.
`12/364,092)
`
`Joint Claim Construction Chart
`
`Declaration of Dr. Gregory Davis, sworn to October 9, 2015 (the
`“Davis Decl.”)
`
`Robert Bosch LLC’s Opening Claim Construction Brief, April
`24, 2015
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`66803919_4
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`
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`Exhibit
`
`1016
`
`1017
`
`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
`
`1028
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`1029
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`1030
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`1031
`
`1032
`
`1033
`
`Description
`
`Declaration of Dr. Daniel H. Kruger, sworn to October 9, 2015
`(the “Kruger Decl.”)
`
`German Pub. No. DE10000373 to Eckhardt et al. (“Eckhardt”)
`
`Declaration of Dr. Eric Maslen, sworn to April 23, 2015 (the
`“Maslen Decl.”) and accompanying Technology Tutorial
`
`U.S. Patent No. 3,121,133 to Mathues (“Mathues”)
`
`PCT Publication No. WO00/34090 to Kotlarski (“Kotlarski
`‘090”)
`
`U.S. Patent No. 6,523,218 to Kotlarski (“Kotlarski ‘090”)
`
`[NOT FILED]
`
`PCT Publication No. WO01/49537 to Egner-Walter et al.
`(“Egner-Walter”)
`
`PCT Publication No. WO01/92073 to De Block et al. (“De
`Block”)
`
`U.S. Patent No. 3,088,155 to Smithers (“Smithers”)
`
`U.S. Patent No. 3,881,214 to Palu et al. (“Palu”)
`
`U.S. Patent No. 3,317,945 to Ludwig (“Ludwig”)
`
`Animation of Appel-Prohaska; Kruger Decl. Appendix A.
`
`Animation of Hoyler-Prohaska; Kruger Decl. Appendix B.
`
`Illustration claim 1; Kruger Decl. Appendix C
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`Illustration claim 6; Kruger Decl. Appendix D
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`Illustration claim 9; Kruger Decl. Appendix E
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`Illustration claim 10; Kruger Decl. Appendix F
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`66803919_4
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`Exhibit
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`1034
`
`Description
`
`U.K. Patent 2,346,318 to Lumsden (“Lumsden”)
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`66803919_4
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`
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`I.
`
`Introduction
`
`Costco Wholesale Corporation (“Petitioner” or “Costco”) requests inter
`
`partes review (IPR) of Claims 1, 6, 9, and 10 of U.S. Patent No. 8,099,823 (“the
`
`‘823 patent”) (Ex. 1001).
`
`II. Mandatory Notices Under 37 C.F.R. § 42.8
`
`Real Party-in-Interest: Costco is the real party-in-interest seeking IPR.
`
`Related Matters: The ‘823 Patent is asserted in Robert Bosch LLC v. Alberee
`
`Products Inc. et al., Civil Action No. 12-574-LPS (consolidated with Civil Action
`
`No. 14-142-LPS), currently pending in the United States District Court for the Dis-
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`trict of Delaware.. It is anticipated that additional Petitions for Inter Partes Review
`
`may also be filed in relation to one or more of U.S. Patents Nos. 6,292,974,
`
`6,836,926, 6,944,905, 6,973,698, 7,228,588, 7,484,264, and 8,544,136, which are
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`also asserted in the District of Delaware matter. Petitioner is not aware of any other
`
`current judicial or administrative matters that would affect, or be affected by, a de-
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`cision in this proceeding.
`
`Lead and Back-Up Counsel and Service Information: The following desig-
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`nates lead counsel, backup counsel, and service information for the Petitioner. Peti-
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`tioner consents to electronic service.
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`Lead Counsel
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`Richard M. Koehl
`Reg. No. 54,231
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6062
`
`Fax (212) 422-4726
`richard.koehl@hugheshubbard.com
`
`III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103
`
`The required fees are submitted herewith. If any additional fees are due at
`
`
`
`Back-Up Counsel
`
`James R. Klaiber
`Reg. No. 41,902
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`Tel. (212) 837-6125
`
`Fax (212) 422-4726
`james.klaiber@hugheshubbard.com
`
`any time during this proceeding, the Office may charge such fees to Deposit Ac-
`
`count No. 083264.
`
`IV. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘823 patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the ‘823 patent. This petition is being filed less
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`than one year after Petitioner was served with a complaint alleging infringement of
`
`the ‘823 patent. See Oct. 10, 2014 Proof of Service (Ex. 1002).
`
`V.
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`Statement of Precise Relief Requested for Each Claim Challenged under
`37 U.S.C. § 312 and 37 C.F.R. §§ 42.22(a)(1) and 42.104(b)(1)-(2)
`
`A. Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1)
`
`Petitioner seeks cancellation of Claims 1, 6, 9, and 10.
`
`B.
`
`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2)
`
`Ground #1. Claims 1, 9, and 10 encompass subject matter that is unpatenta-
`2
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`ble under 35 U.S.C. § 102(b) in view of Prohaska (Ex. 1005).
`
`Ground #2. Claims 1, 9, and 10 encompass subject matter that is unpatenta-
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`ble under 35 U.S.C. § 103(a) in view of Prohaska (Ex. 1005) and Appel (Ex.
`
`1006).
`
`Ground #3. Claims 1, 9, and 10 encompass subject matter that is unpatent-
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`able under 35 U.S.C. §103(a) in view of Prohaska (Ex. 1005) and Hoyler (Ex.
`
`1007).
`
`Ground # 4. Claims 1, 9, and 10 encompass subject matter that is unpatent-
`
`able under 35 U.S.C. § 103(a) in view of Kotlarski ‘383 (Ex. 1003) and Prohaska
`
`(Ex. 1005).
`
`Ground #5. Claims 1, 9, and 10 encompass subject matter that is unpatenta-
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`ble under 35 U.S.C. § 103(a) in view of Merkel (Ex. 1008) and Prohaska (Ex.
`
`1005).
`
`Grounds #6 - #9. Claim 6 encompasses subject matter that is unpatentable
`
`under 35 U.S.C. § 103(a) on any of Grounds #2-5 in further view of Kotlarski
`
`‘090.
`
`Ground #10 - #13. Claim 6 encompasses subject matter that is unpatentable
`
`under 35 U.S.C. § 103(a) on any of Grounds #2-5 in further view of Mathues.
`
`Ground #1 is not redundant of Grounds 2-5 because anticipation under 35
`
`U.S.C. § 102 is distinct from obviousness under 35 U.S.C. § 103(a). Grounds 2-5
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`are not redundant because Appel (Ex. 1006), Hoyler (Ex. 1007), Kotlarski ‘383
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`(Exs. 1003, 1004), and Merkel (Exs. 1008, 1009) each disclose different variants of
`
`wiper apparatus that are suitable for use with a wind deflector. Grounds 6-9 and
`
`10-13 are not redundant because Kotlarski ‘090 (Exs. 1020, 1021) and Mathues
`
`(Ex. 1019) disclose different variants of wiper blade apparatus comprising poly-
`
`meric materials of different hardness suited to their functions in the apparatus.
`
`VI. The ‘823 Patent
`
`The ‘823 patent discloses and claims a windshield wiper assembly that com-
`
`prises three basic elements, namely: (i) a flexible spring support element, (ii) a
`
`wiper strip, and (iii) a wind deflector. Figure 1 of the ‘823 patent is reproduced be-
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`low:
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`The ‘823 patent states that prior art wind deflectors, being solid, were costly,
`
`heavy, stiff, and required “a more powerful drive system as well as a more expen-
`
`sive design of pendulum gear attached to it.” Ex. 1001 at 1:46 – 2:3. As a solution
`
`to these problems, the ‘823 patent discloses and claims wiper apparatus comprising
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`a hollow wind deflector strip, having the general configuration depicted at left, be-
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`low:
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`‘823 Patent Fig. 2
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`Prohaska Fig. 3
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`Lumsden Fig. 1
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`
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`But as shown at right above, long prior to the priority date of the ‘823 patent,
`
`it was known to provide a windshield wiper assembly with a hollow wind deflec-
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`tion strip and to mount such a deflection strip using claw-like structures as shown
`
`by Prohaska (Ex. 1005) and Lumsden (Ex. 1034). It was also known to make
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`claw-like extensions of a relatively harder material, such as plastic. See e.g.,
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`Kotlarski ‘090 (Exs. 1020, 1021), 5:46-47.1 It was equally well-known to co-
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`extrude windshield wiper components utilizing polymeric materials of different
`
`hardness to provide whatever degree of hardness was required for a given applica-
`
`tion. See generally Mathues (Ex. 1019).
`
`1 Because the translation of the PCT Publication (Ex. 1020) does not include refer-
`
`ence numbers for line citations, and because it encompasses the same subject mat-
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`ter as U.S. Patent 6,523,218 (Ex. 1021), which issued from the PCT, for ease of
`
`reference the column and line citations refer to U.S. Patent No. 6,523,218.
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`A.
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`Prosecution and Issuance of the ‘823 Patent
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`The file history of the ‘823 patent, along with the parent and grandparent
`
`applications to which it claims priority, are attached hereto as Exhibits 1012, 1011,
`
`and 1010, respectively. The original U.S. application, Application No. 10/312,279
`
`(“the ‘279 application,” Ex. 1010), which later issued as U.S. Patent No. 7,228,588
`
`(“the ‘588 patent”), was filed in the U.S. on December 20, 2002 and claimed prior-
`
`ity to International Application No. PCT/DE02/01336, which itself claimed priori-
`
`ty to a German patent filed April 26, 2001. See Ex. 1001 (cover). Application No.
`
`11/760,394 (“the ‘394 application,” Ex. 1011), which claimed priority to the ‘279
`
`application and later issued as U.S. Patent No. 7,484,264, was filed in the U.S. on
`
`June 8, 2007. See id. Application No. 12/364,092 (“the ‘092 application,” Ex.
`
`1012), which claimed priority to the ‘394 application and later issued as the ‘823
`
`patent, was filed in the U.S. on February 2, 2009.
`
`The ‘092 application (Ex. 1012) was filed with application claims 1-18, of
`
`which claims 1 and 10 were independent. ‘092 application at 24-27. Of claims 1-24
`
`that were filed during the ‘092 application, application claims 19, 5, 7, 20, and 21
`
`issued as claims 1, 5, 6, 9, and 10, respectively, of the ‘823 patent. Application
`
`claims 1, 5, 6, and 7, as they were originally filed, are reproduced below. Id.
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`1.
`
`A wiper blade (10) for an automobile windshield (14),
`
`with an elongated belt-shaped, flexible resilient support element (12),
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`on the lower belt surface (22) of which that faces the windshield is lo-
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`cated an elastic rubber wiper strip 24 sitting against the windshield
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`that extends parallel to the longitudinal axis, and on the upper belt sur-
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`face (16) of which a wind deflection strip (42 or 112) is located that
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`has an incident surface (54 or 140) facing the main flow direction of
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`the driving wind (arrow 52), said deflection strip extending in the lon-
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`gitudinal direction of the support element, characterized in that the
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`wind deflection strip has two sides (48, 50 or 136, 138) that diverge
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`from a common base point (46 or 134) as seen in a cross section, and
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`that the incident surface (54 or 140) is located at the exterior of one
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`side (50 or 138), wherein the support element has outer edges, and
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`wherein the sides of the wind deflection strip have respective free
`
`ends having thereon respective claw-like extensions that fittingly grip
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`around the outer edges of the support element at least in sections, so
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`that the wind deflection strip can be snapped onto the outer edges or
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`slid onto the outer edges in a longitudinal direction.
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`5.
`
`A wiper blade according to claim 1, characterized in that
`
`the wind deflection strip (42) is designed as a binary component
`
`whose longitudinal area provided with the claw-like extensions (56) is
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`made of a harder material than the longitudinal area lying closer to the
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`base point (46).
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`6.
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`A wiper blade according to claim 5, characterized in that
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`the support means is made up of a wall (58 or 144) connected to both
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`sides (48, 50 or 136, 138) that extends in the longitudinal direction of
`
`the wind deflection strip (42 or 112).
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`7.
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`A wiper blade according to claim 6, characterized in that
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`the transition from the harder longitudinal area to the softer longitudi-
`
`nal area occurs near the wall (58).
`
`On June 24, 2010, the Examiner issued an Office Action rejecting all pend-
`
`ing application claims. Id. at 67-74. All claims were rejected under 35 U.S.C. §
`
`112 as being indefinite for a lack of antecedent basis for numerous limitations re-
`
`cited in claims 1, 5, 7, 10, 14, and 16. Id. at 69. Claims 1-4, 8-13, and 17-18 were
`
`rejected under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No.
`
`3,088,155 to Smithers (“Smithers”) (Ex. 1025), Figure 2 of which is reproduced
`
`below. Id. at 70; Smithers, Fig. 1.
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`According to the Examiner, Smithers disclosed a wiper blade having an
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`elongated belt shaped, twin rail, support element 14, with a wiper strip 12 on a
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`lower belt surface thereof and outer edges gripped by claw-like extensions 24 on
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`the free ends of a wiper deflection strip having two sides that diverged from a
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`common point, as well as support means in the form of a wall 16 extending be-
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`tween the sides of the wind deflection strip. Id. Claims 5-7 and 14-16 were rejected
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`under 35 U.S.C. § 103(a) as obvious over Smithers in view of U.S. Patent
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`3,121,133 to Mathues (“Mathues,” Ex. 1019). Id. at 71. In the Examiner’s view,
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`Smithers disclosed all recited elements except claw-like extensions being of a
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`harder material than an area closer to the base point, but Mathues “discloses a wip-
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`er blade wherein the retention portion (22) of the blade (20) is harder than the re-
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`mainder [and] thus teaches making the retention portion of an article harder than
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`the remainder [, which] helps enhance the security of the joint.” Id. at 71. The Ex-
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`aminer concluded that “[i]t would have been obvious to one of skill in the art to
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`make the retention portion of the deflection strip harder than the remainder, as
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`taught by Mathues, to enhance the security of the connection between the strip and
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`the support element.” Id. at 72.
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`On November 24, 2010 the Applicant conducted an Examiner interview dur-
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`ing which the rejections over Smithers were discussed, and the Applicant proposed
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`that an amendment “defining a particular height for the wind deflection strip
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`wherein a majority of such height is above the upper belt surface of the support el-
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`ement” would distinguish over Smithers. Id. at 92-93. The Examiner noted that
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`while such an amendment “may distinguish from Smithers” but that “in view of the
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`large number of prior art references concerned with wind deflection,” no agree-
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`ment was reached. Id.
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`On December 23, 2010, the Applicant submitted a response amending each
`
`of claims 1-18. Id. at 95-103. All claims were amended to remove reference nu-
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`merals, and claims 1 and 10 were amended to recite that the “support element” in-
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`cluded “a longitudinal axis and that a “device to connect a drive wiper arm is lo-
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`cated directly on the upper belt surface.” Id. at 96, 98. Claims 5, 7, 14, and 16 were
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`amended to address the indefiniteness rejections under 35 U.S.C. § 112. Id. at 97,
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`99-100, The Applicant argued that the newly added connecting device feature dis-
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`tinguished over Smithers because it disclosed a wiper blade connected to the wiper
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`arm using “a harness made up of yokes” in which the yokes were connected to the
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`wiper arm “in a location spaced from and not directly on the upper surface of the
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`metal backing strips.” Id. at 101-102. The Applicant did not address the rejections
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`in view of Mathues.
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`On March 8, 2011, the Examiner issued a Final Office Action again reject-
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`ing all pending application claims 1-18. While no rejections were made under 35
`
`U.S.C. § 112, the Examiner again rejected claims 1-4, 8-13, and 17-18 under 35
`
`U.S.C. § 102(b) by Smithers, claims 5-7 and 14-16 under 35 U.S.C. § 103(a) as
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`obvious over Smithers in view of Mathues. Id. at 109-118. With regard to the new-
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`ly-added connecting device limitation of claims 1 and 10, the Examiner stated that
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`the yokes of Smithers connect the wiper arm and connect directly to the upper sur-
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`face of the upper surface of the support element. Id. at 116-117.
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`On July 8, 2011, the Applicant submitted a Request for Continued Examina-
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`tion and an Amendment in which claim 1 and 10 were cancelled, new claims 19-24
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`were added (including new independent claims 19 and 22), and dependent claims
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`2-9 and 11-18 were amended to depend directly or indirectly from new claims 19
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`or 22. Id. at 140-154. New independent claim 19 is reproduced below. Id. at 149.
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`19.
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`(New) A wiper blade (10) for an automobile windshield
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`(14), with an elongated belt-shaped, flexible resilient support element
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`(12) having a longitudinal axis, on a lower belt surface (22) of which
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`that faces the windshield is located an elastic rubber wiper strip (24)
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`sitting against the windshield that extends parallel to the longitudinal
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`axis, and on an upper belt surface (16) of which a wind deflection
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`strip (42 or 112) is located that has an incident surface (54 or 140) fac-
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`ing a main flow direction of a driving wind (arrow 52), said deflection
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`strip extending in the longitudinal direction of the support element,
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`characterized in that the wind deflection strip has two sides (48, 50 or
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`136, 138) that diverge from a common base point (46 or 134) as seen
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`in a cross section, and that the incident surface (54 or 140) is located
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`at the exterior of one side (50 or 138), wherein the support element
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`has outer edges, wherein the sides of the wind deflection strip have re-
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`spective free ends having thereon respective claw-like extensions that
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`fittingly grip around the outer edges of the support element at least in
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`sections and engage at least one of the upper belt surface (24) and the
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`lower belt surface (22), so that the wind deflection strip can be
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`snapped onto the outer edges or slid onto the outer edges in a longitu-
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`dinal direction, wherein the wind deflection strip has a height extend-
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`ing from the base point to ends of the sides farthest from the base
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`point, and wherein a substantial majority of the height is above the
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`upper belt surface in a direction facing away from the windshield.
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`New claim 19 thus read identically with rejected claim 1, except that the reference
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`numerals were re-inserted, and the language “wherein a device to connect a drive
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`wiper arm is located directly on the upper belt surface” was replaced with “wherein
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`the wind deflection strip has a height extending from the base point to ends of the
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`sides farthest from the base point, and wherein a substantial majority of the height
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`is above the upper belt surface in a direction facing away from the windshield.”
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`Compare id., 149 with id., 96. Claim 5 was amended to depend from claim 19. Id.
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`at 147. New claim s 20 and 21, which each depended from new claim 19, required
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`that “the wiper blade has a length in the direction of the longitudinal axis and the
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`wind deflection strip extends along at least about half of the length of the wiper
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`blade” (claim 20), and “the claw-shaped extensions fittingly engage the upper belt
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`surface (24) and the lower belt surface (22)” (claim 20). Id. at 149. In remarks ac-
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`companying these amendments, the Applicant stated that “majority of the [wind
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`deflection strip] height … above the upper belt surface” was added further to the
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`November 24, 2010 Examiner Interview, and that this limitation distinguished over
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`Smithers, U.S. Patent 6,523,218 to Kotlarski et al (“Kotlarski ‘090”) (Ex. 1021),
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`and U.S. Patent No. 3,881,214 to Palu et al. (“Palu”) (Ex. 1026). Id. at . The fig-
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`ures of Kotlarski ‘090 and Palu discussed by the Applicant are reproduced below.
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`The rejections relating to Mathues were not substantively addressed by the Appli-
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`cant.
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`On September 21, 2011, the Examiner initiated an Interview in which it was
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`agreed that the limitations of claims 2 and 11 would be added to independent
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`claims 19 and 22, respectively, and that changes to the dependencies of the other
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`claims would be made. Id. at 161. On January 12, 2012, the Examiner issued a No-
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`tice of Allowance that included an Examiners amending the claims to be in the
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`form in with they issued, with application claims 19, 5, 7, 20, and 21 issuing as
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`claims 1, 5, 6, 9, and 10 of the ‘823 patent, respectively. Id. at 168-169, 171.
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`B. Claim Construction
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`For the purposes of inter partes review Claims 1, 6, 9, and 10 should be ac-
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`corded their “broadest reasonable construction” in light of the specification and
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`prosecution history of the ‘823 patent. 37 C.F.R. § 42.100(b). Petitioner asserts that
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`none of the claim terms in the ‘823 patent need to be construed for purposes of this
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`petition because under any reasonable construction the claims are invalid.
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`In the Delaware Action cited above, the Patent Owner has asserted that the
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`term “at least one support means (58, 144)” in Claim 1 should be construed under
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`35 U.S.C. 112(6). See Joint Claim Construction Chart, Exhibit 1 at 4 (page 8 of
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`861) (Ex. 1013). According to Patent Owner, the function of “at least one support
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`means (58, 144)” is “to stabilize the sides of the wind deflection strip” and this
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`function corresponds to “a wall connected to both sides of the wind deflection
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`strip, or the channel wall facing the upper belt surface of the support element, and
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`their equivalents.” Id.
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`Patent Owner has also asserted in the Delaware Action that the term “sup-
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`port element” “should be given its plain and ordinary meaning in each of the as-
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`serted patents,” including the ‘823 patent. See Robert Bosch LLC’s Opening Claim
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`Construction Brief at 11-12, April 24, 2015 (Ex. 1015).
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`While the claim construction proceedings in Delaware are not governed by
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`the “broadest reasonable construction” standard, and Petitioner does not agree that
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`Patent Owner’s construction represents the broadest reasonable construction of this
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`claim term in the abstract, for purposes of this proceeding the Patent Owner should
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`not be heard to assert a narrower construction than was set forth in the Patent
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`Owner’s claim construction briefing in the Delaware Action.
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`VII. Overview of Prior Art
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`A. U.K. Patent No. G.B. 2,106,775 to Prohaska (“Prohaska;” Ex.
`1005)
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`Prohaska was published on April 20, 1983, and is therefore prior art to the
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`‘823 patent under 35 U.S.C. § 102(b). Prohaska is directed to wiper blades having
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`spoilers that can be connected in a simple way, which counter the lifting force that
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`occurs at high vehicle speeds, thereby ensuring reliable contact between the wiper
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`element and windscreen. Prohaska, 1:8-16, 1:38-42. Prohaska explains that a vari-
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`ety of spoilers have emerged in response to the problem of wind-lift, but these
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`spoilers all had disadvantages; some could only be secured to the wiper strip in a
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`relatively complicated way, and others:
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`[I]ncluding a spoiler formed out of the wiper element
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`might not be stable enough to act against the air stream in all
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`cases, bcause [sic] of the rubber-elastic materials normally used
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`for the production of wiper elements. Moreover, as far as tech-
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`nology is concerned, the production of such a wiper element
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`might be very difficult and therefore expensive.
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`Id. at 1:25-37. To avoid these concerns, Prohaska discloses a wiper blade having a
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`wiper element made of a rubber-elastic material, stiffened by a flexible strip ex-
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`tending over almost the entire length of the wiper element, and a spoiler formed or
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`attached on the flexible strip “[t]o maintain contact pressure in use.” Id. at 1:443-
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`52, 2:56-58. During prosecution, the Examiner explained that the Prohaska deflec-
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`tion strip:
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`[H]as two sides (21,22) that diverge from a common base
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`and pass on opposite sides of a cavity. The wind deflection strip
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`has free ends with claw-like extensions that grip around outer
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`edges of the wiper strip. The wind deflection strip also has a
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`support means in the form of a wall (31) that connects the di-
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`verging sides spaced from the base point.
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`Ex. 1011 at 550.
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`In several examples, the spoiler forms an integral part with the flexible strip,
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`Ex. 1005 at 2:71-75, but importantly, Prohaska also teaches that “it would also be
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`possible to insert individual flexible strips in the head of the wiper element . . . and
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`to equip one of them with a spoiler.” Id. at 4:1-7. Prohaska notes that “[i]t is easily
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`possible to retrofit a wiper blade by squeezing a spoiler against its flexible strip or
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`clipping it on this flexible strip,” id. at 1:68-70, and teaches elongations formed as
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`individual claws that extend over the length of the flexible strip, id. at 1:78-83.
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`The embodiment reflected in Figure 3, reproduced below, includes a flexible
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`strip with its back developed as a spoiler that is hollow and has an approximately
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`“triangular cross-section.” Id. at 2:125 – 3:6. Like several of the other embodi-
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`ments, this embodiment is formed with two downward elongations that engage in
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`the longitudinal grooves of the wiper strip.
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` Prohaska Fig. 3
`17
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`B. U.S. Patent No. 3,192,551 to Appel (“Appel;” Ex. 1006)
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`U.S. Patent No. 3,192,551 to Appel (“Appel”) issued on July 6, 1965 and is
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`therefore prior art to the ‘823 patent under 35 U.S.C. § 102(b). Appel was not be-
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`fore the Examiner during prosecution of the ‘823 patent.
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`Appel discloses a wiper blade assembly comprising “a spring backbone ele-
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`ment 36” which “may be adapted to carry a conventional rubber wiping blade 37,
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`by providing a slot 38 extending almost throughout the length and terminating just
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`short of the end 39 for accommodating a flanged rib 40 of the rubber blade project-
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`ing therethrough.” Id. at 1:23-25, 3:63-69. These features are illustrated in Figures
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`1, 5 and 6 of Appel, reproduced below.
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` Appel Fig. 1
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`Appel Fig. 6
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` Appel Fig. 5
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`C. German Patent No. D.E. 1,028,896 to Hoyler (“Hoyler,” Ex. 1007)
`(“Hoyler”)
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`German Patent No. 1,028,896 to Hoyler (“Hoyler”) issued on April 24,
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`1958, and is therefore prior art to the ‘823 patent under 35 U.S.C. § 102(b). Hoyler
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`was not before the Examiner during prosecution of the ‘823 patent.
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`Hoyler discloses a wiper blade assembly comprising two longitudinal
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`springs positioned in lateral slots of a wiper strip. Id. at cols. 1, 2. As compared
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`with conventional bracket-style wiper assemblies, Hoyler teaches, the flat spring
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`design reduces the weight of the wiper blade moving parts, thus lowering the stress
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`upon the drive elements. Id. at col. 1. The lower weight results in less wear and
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`tear after an identical running time and facilitates faster wiping speeds. Id. Figure
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`1 of Hoyler is reproduced below.
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` Hoyler Fig. 1
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`D.
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`PCT Pub. No. WO99/02383 (“Kotlarski ‘383”; Exs. 1003, 1004)
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`Kotlarski ‘383 was published on January 21, 1999, and is therefore prior art
`
`to the ‘823 patent under 35 U.S.C. § 102(b). Kotlarski ‘383 discloses a wiper
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`blade assembly comprising two spring rails (30, 32) positioned in longitudinal
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`grooves of a wiper strip and between which a wind deflector strip (200) is mount-
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`ed. Figures 2 and 12 of Kotlarski ‘383 are reproduced below:
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`
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`The two spring rails are spaced apart from one another (id. at 3:38-40)2 and
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`“protrude out” of the grooves in the wiper strip such that their longitudinal edges
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`point away from one another, id. at 3:61-64. Kotlarski ‘383 further discloses
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`“claws 70” which “form fastening means for retaining the connection device 16 on
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`support element 12.” Id. at 4:51-60. The holders “grip the outer edges . . . of the
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`spring rails in an exposed portion,” using “clawlike protrusions.” Id. at 4:20-27.
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`2 Because the translation of the PCT Publication (Ex. 1003) does not include refer-
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`ence numbers for line citations, and because it encompasses the same subject mat-
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`ter as U.S. Patent 6,279,191 (Ex. 1004), which issued from the PCT, for ease of
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`reference the column and line