Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 79
`Entered: November 20, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COSTCO WHOLESALE CORPORATION
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`Case
`IPR2016-00041
`Patent 8,099,823 B2
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION ON REHEARING
`
`Denying Petitioner’s Request for Rehearing in IPR2016-00041
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 79
`Entered: November 20, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COSTCO WHOLESALE CORPORATION
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`Case
`IPR2016-00041
`Patent 8,099,823 B2
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION ON REHEARING
`
`Denying Petitioner’s Request for Rehearing in IPR2016-00041
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2016-00041
`Patent 8,099,823 B2
`
`
`I. BACKGROUND
`Petitioner filed a request for rehearing (Paper 71, “Req. Reh’g” or
`“Request”) in IPR2016-00041 of our Final Written Decision (Paper 70, “the
`’823 Final Dec.”) in which we determined that claims 1, 9, and 10 of U.S.
`Patent No. 8,099,823 (Ex. 1001, “the ’823 patent”) were unpatentable but
`that claim 6 of the ’823 patent was not unpatentable. In its Request,
`Petitioner asserts that claim 6 of the ’823 patent is similar in scope to claim 3
`of U.S. Patent No. 7,484,264 (Ex. 1011, “the ’264 patent”), which we
`determined was unpatentable in our Final Written Decision in IPR2016-
`00040 (IPR2016-00040, Paper 67, “the ’264 Final Dec.”). Req. Reh’g 1.
`Petitioner asserts that our conclusions with respect to claim 6 of the ’823
`patent and claim 3 of the ’264 patent are “irreconcilable” because those
`claims involve “the same prior art; the same expert testimony; [and] the
`same arguments.” Id. at 5.
`
`II. LEGAL STANDARD
`The Rule governing requests for rehearing provides that “[t]he burden
`of showing a decision should be modified lies with the party challenging the
`decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically
`identify all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was previously addressed in a
`motion, an opposition, or a reply.” Id.
`
`III. ANALYSIS
`We have reviewed Petitioner’s arguments and our Final Written
`Decisions with respect to the ’264 patent and the ’823 patent, and we agree
`
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`IPR2016-00041
`Patent 8,099,823 B2
`
`that the results are mutually exclusive. In order to consider whether our
`decisions in IPR2016-00041 and IPR2016-00040 are irreconciliable, we
`must, of course, consider both decisions. For the reasons expressed below,
`we are persuaded that our analysis of the evidence was correct in the ’823
`Final Decision.1
`Claim 6 of the ’823 patent and claim 3 of the ’264 patent both require
`the wind deflection strip (i.e., spoiler) of a windshield wiper to be “designed
`as a binary component”2 that has claw-shaped extensions (for holding onto
`the beam of the wiper) “made of a harder material” than the upper portion
`(which deflects wind). See, e.g., ’823 Final Dec., 4 (reproducing Figure 2 of
`the ’823 patent with added green coloring to denote the spoiler, and with
`item 56 indicating a claw-shaped extension and item 46 indicating the base
`point of the upper portion). As we explained in the ’823 Final Decision, and
`which is not disputed in the Request, we considered a “binary component”
`“to be a structure wherein the portions having different hardness values are
`not separable.” ’823 Final Dec. 22.
`All of the grounds asserted against claim 6 of the ’823 patent and
`claim 3 of the ’264 patent effectively rely on Prohaska (Ex. 1005) to teach a
`spoiler having claw-shaped extensions. See ’823 Final Dec. 16–17; ’264
`Final Dec. 15–16. The proposed modification to address the “binary
`component” limitation is to modify Prohaska’s spoiler in view of Kotlarski
`’090 (Ex. 1021) or Mathues (Ex. 1019). See ’823 Final Dec. 14–15; ’264
`
`
`1 IPR2016-00040 is presently on appeal to the Court of Appeals for the
`Federal Circuit.
`2 Claim 6 of the ’823 patent depends from claim 5; our quotes here are
`limitations present in claim 6 by virtue of dependence from claim 5.
`
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`IPR2016-00041
`Patent 8,099,823 B2
`
`Final Dec. 33; see also IPR2016-00040, Paper 1, 3 (identifying Mathues or
`Kotlarski ’090 for claim 3 of the ’264 patent). Kotlarski ’090 describes the
`spoiler and the spoiler retaining components as separate structures made of
`separate materials. ’823 Final Dec. 14–15. Mathues describes a binary
`component, that component made of a retaining portion and a wiper blade.
`Id. at 15. Petitioner’s Request does not allege a misapprehension with
`respect to those facts.
`In the ’823 Final Decision with respect to Kotlarski ’090, we
`determined that Petitioner failed to provide “an explanation for why it would
`have been obvious to combine the two separate components in Kotlarski
`’090 into a single component.” ’823 Final Dec. 22. In its Request,
`Petitioner asserts that we overlooked the explanation by its expert that
`“[e]ach part of the ‘binary component’ performs the same function in the
`same way as the distinct components of Kotlarski ‘090.” Req. Reh’g 10
`(citing Ex. 1014 ¶ 74). But pointing out that Kotlarski ’090 and claim 6 of
`the ’823 patent both have a spoiler for displacing air and claws for retention
`fails to account for the fact that they are configured to do so in different
`ways. Claim 6 requires a binary component having portions with different
`hardness values, where the wind deflection portion and the claws are
`integrated into a single piece (see, e.g., Ex. 1001, Figs. 1, 2 (depicting the
`claw as the lower portion of the spoiler, uniform along the length of the
`wiper)), whereas Kotlarski ’090 has separate retaining clips, longitudinally
`spaced apart in intervals, that have a similar profile as the wind deflection
`portion (see, e.g., Ex. 1021, Figs. 5–15 (depicting various embodiments of
`spoiler/clip combos, with blowouts showing just the separate clips)). This is
`not a simple matter of making two things one; somehow fusing the clips and
`
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`IPR2016-00041
`Patent 8,099,823 B2
`
`wind deflection portion together of Kotlarski ’090 would not meet the
`requirement of claim 6 where the claw area is harder than the wind
`deflection portion, because the clips in Kotlarski ’090 are hard from claw to
`tip (i.e., through the wind deflection portion). See, e.g., Ex. 1021, Figs. 5, 6
`(depicting the clip and a cross-section of the clip as made of a uniform
`material). We emphasize that Kolarski ’090’s clips are separate components
`from the spoiler, are of uniform hardness (all plastic), and are not harder at
`the claws. Petitioner’s expert’s testimony that the wind deflection portion
`and the claws perform the same function in the same way is an
`oversimplification and does not address this significant distinction.
`Further, Petitioner has not directed us to, nor do we see, any direct
`application of the teachings of Kotlarski ’090 for modifying the Prohaska
`spoiler to have harder claws. The Prohaska spoiler is similar to the spoiler in
`the ’823 patent, in that the claws are on the spoiler. Kotlarski ’090 is
`different—it teaches separate clips. It does not teach making the claws of a
`spoiler harder. To apply the teachings of Kotlarski ’090 to Prohaska’s
`spoiler in one of the articulated grounds would not satisfy the claims; it
`would require a further modification than what is shown in Kotlarski ’090 or
`explained in the Petition in order for the claw portion to be harder than the
`wind deflection portion. Petitioner argues that Prohaska already teaches a
`“binary component,” Req. Reh’g 10–12, but this argument is untenable in
`view of our understanding of the term. See ’823 Final Dec. 22 (explaining
`that the claim requires a binary component to be made of a single structure
`having different hardness values). Reviewing the Request, we are not
`persuaded we misapprehended or overlooked Petitioner’s arguments or
`evidence regarding the ground asserted against claim 6 of the ’823 patent
`
` 5
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`IPR2016-00041
`Patent 8,099,823 B2
`
`involving Kotlarski ’090.
`In the ’823 Final Decision with respect to Mathues, we found that
`Mathues teaches a binary component, but a binary wiper rather than a binary
`spoiler. ’823 Final Dec. 22–23. We determined that Petitioner failed to
`explain why a particular wiper configuration is desirable for spoilers, as
`spoilers do not necessarily have the same need for having a softer material
`on one portion versus another as would a wiper. Id. at 23. The Request
`takes issue with our statement that Petitioner did not explain or provide
`evidence as to why it would be obvious to have the wind deflection portion
`“more flexible” than the claw. Req. Reh’g 8. Petitioner asserts that “the
`record is replete with evidence demonstrating that it was known that
`‘flexible spoilers are preferable to rigid spoilers.’” Id. However, Petitioner
`misreads our Decision, which determined that Petitioner failed to explain
`why the wind deflection portion should be more flexible than the claw
`portion; we acknowledge that flexibility of some sort is desirable in a
`windshield wiper, which must conform to the shape of the windshield. That
`a spoiler as a whole is flexible does not mean that some portion of that
`spoiler must or should be more flexible than another, however. We did not
`find Mathues’ teaching of a softer wiper portion was instructive on this
`point. ’823 Final Dec. 22–23. Petitioner’s characterization of Mathues on
`this point attempts to apply the teaching of Mathues with respect to a wiper
`broadly to anything having a retaining portion. Req. Reh’g 9. Still missing,
`however, is a reason to apply Mathues’ teaching with respect to a wiper to a
`spoiler, which has a different function. For example in Mathues the wiper
`needs to be soft to flex back and forth during wiping, but it cannot be so soft
`that it falls off—hence the solution of making the claw portion harder than
`
` 6
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`IPR2016-00041
`Patent 8,099,823 B2
`
`the wiper portion. There is no evidence of a similar problem here with the
`spoilers because, for example, the spoilers are not flexing back and forth
`during a wiping motion, such that there is no apparent reason to have one
`portion harder than the other. Thus, this is not a matter of using a familiar
`element in a known way—the application is different here and it is not
`apparent why a person of ordinary skill in the art would seek to modify a
`spoiler as if it were a wiper. Accordingly, we are not persuaded we
`misapprehended or overlooked Petitioner’s arguments or evidence regarding
`the ground asserted against claim 6 of the ’823 patent involving Mathues.
`Lastly, Petitioner argues that the ’264 Final Decision, which issued
`March 30, 2017, and determined claim 3 of the ’264 patent was
`unpatentable, should be held to have preclusive effect as to claim 6 in our
`’823 Final Decision, which issued April 12, 2017.3 Req. Reh’g 13–15. That
`these two final decisions mailed on separate days is due to mere clerical
`factors—these trials proceeded concurrently. See Paper 21 (Scheduling
`Order placing these proceedings on the same schedule). Petitioner’s
`argument, if persuasive, would result in an inability to rehear certain cases
`mailed after others, contrary to our Rules. 37 C.F.R. § 42.71(d) (permitting
`rehearings of decisions, including final decisions). We are not persuaded
`that the ’264 Final Decision in this instance precludes certain determinations
`in the ’823 Final Decision. See also generally In re Craig, 411 F.2d 1333,
`1336 (CCPA 1969) (where the Board has conceded error in a prior decision,
`the broad countervailing public policy considerations of granting valid
`
`
`3 We note that neither decision has been designated as informative and/or
`precedential.
`
` 7
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`IPR2016-00041
`Patent 8,099,823 B2
`
`patents preclude the application of res judicata).
`In conclusion, we are not persuaded to modify our decision with
`respect to claim 6 of the ’823 patent.
`
`IV. ORDER
`It is hereby ORDERED that Petitioner’s Request for Rehearing of our
`Final Written Decision in IPR2016-00041 is denied.
`
`
`
`PETITIONER:
`
`Richard M. Koehl
`James R. Klaiber
`David Lansky
`James Klaiber
`Stefanie Lopatkin
`HUGHES HUBBARD & REED LLP
`richard.koehl@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`david.lansky@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`stefanie.lopatkin@hugheshubbard.com
`
`
`PATENT OWNER:
`
`Patrick R. Colsher
`SHEARMAN & STERLING LLP
`patrick.colsher@shearman.com
`
`
` 8
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