Case No. IPR2016-00042
`U.S. Patent No. 8,544,136
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00042
`U.S. Patent No. 8,544,136
`______________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 35
`U.S.C. § 313 AND 37 C.F.R. § 42.107
`
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`U.S. Patent No. 8,544,136
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`______________________
`
`CASE NO. IPR2016-00042
`U.S. Patent No. 8,544,136
`______________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 35
`U.S.C. § 313 AND 37 C.F.R. § 42.107
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`Case No. IPR2016-00042
`U.S. Patent No. 8,544,136
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`SUMMARY OF ARGUMENTS .................................................................... 1
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`III. STANDARD FOR INSTITUTION ................................................................. 2
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`IV. BRIEF OVERVIEW OF U.S. PATENT NO. 8,544,136 ................................. 3
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`V.
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`PETITIONER FAILS TO IDENTIFY ITS CHALLENGES .......................... 6
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`VI. PETITIONER PUTS FORTH NO EVIDENCE THAT THE PRIOR ART
`DISCLOSES ALL OF THE CLAIM LIMITATIONS ................................... 8
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`A.
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`B.
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`“flexible resilient support element”....................................................... 8
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`“on a lower belt surface” ....................................................................... 9
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`VII. CONCLUSION ..............................................................................................11
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`Case No. IPR2016-00042
`U.S. Patent No. 8,544,136
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`Table of Authorities
`
`Cases
`ActiveVideo Networks v.Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ............................................................................ 3
`
`August Tech. Corp. v. Camtek Ltd.,
`655 F.3d 1278 (Fed. Cir. 2011) ............................................................................ 3
`
`Farmwald v. ParkerVision, Inc.,
`Case No. IPR2014-01107, Paper 7 (PTAB Jan. 8, 2015) ..................................... 7
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .......................................................................................... 3, 7
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 15 at 12 (PTAB Dec. 30, 2013) ...................................... 3
`
`Vizio, Inc. v. Int’l Trade Comm’n,
`605 F.3d 1330 (Fed. Cir. 2010) ............................................................................ 3
`
`
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`Statutes
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`35 U.S.C. § 103 .......................................................................................................... 7
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`35 U.S.C. § 314(a) ................................................................................................. 2, 3
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`35 U.S.C. § 316(e) ..................................................................................................... 3
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`
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`Regulations
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`37 C.F.R. § 42.104(b)(2) ............................................................................................ 6
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`37 C.F.R. § 42.104(b)(4) ........................................................................................ 3, 6
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`37 C.F.R. § 42.108(b) ................................................................................................ 3
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`37 C.F.R. § 42.108(c) ................................................................................................. 2
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`
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`ii
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`
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`Other Authorities
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14,
`2012) ..................................................................................................................... 2
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`Case No. IPR2016-00042
`U.S. Patent No. 8,544,136
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`I.
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`INTRODUCTION
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`Case No. IPR2016-00042
`U.S. Patent No. 8,544,136
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`Patent Owner, Robert Bosch LLC (“Bosch”), submits this preliminary
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`response to the corrected Petition filed by Costco Wholesale Corporation
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`(“Petitioner” or “Costco”) as Paper No. 10 in this proceeding, requesting inter
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`partes review (“IPR”) of claims 1 and 21 of U.S. Patent No. 8,544,136
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`(“Petition”). This response is timely pursuant to the Board’s Notice in Paper No.
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`3.
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`The following arguments are not intended to be an exhaustive list of
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`arguments with respect to the grounds asserted in the Petition. Rather, Bosch
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`respectfully submits these streamlined arguments in response to the issue of
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`institution and reserves the right to expand on these arguments with additional
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`evidence, including testimonial evidence, or to provide new arguments, should the
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`Board determine that institution is appropriate.
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`Bosch respectfully submits that Petitioner has not established a reasonable
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`likelihood that it would prevail with respect to any of the challenged claims.
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`Accordingly, Bosch respectfully requests that the Board decline to institute inter
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`partes review for the reasons set forth below.
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`II.
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`SUMMARY OF ARGUMENTS
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`The Petition fails for at least two reasons. First, Petitioner fails to clearly
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`identify its challenges. The Petition ostensibly includes six grounds, three for
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`1
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`U.S. Patent No. 8,544,136
`claim 1 and three for claim 21, all of them asserting obviousness. But the
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`discussion of obviousness supporting these grounds lacks structure and coherence,
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`such that the reader cannot ascertain the precise challenges being asserted. Bosch
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`should not be required to respond on the merits to such a petition.
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`Second, Petitioner fails to show, for any ground, that the prior art discloses
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`at least (1) a “flexible resilient support element,” and (2) a wiper strip located “on a
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`lower belt surface” of the support element.
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`Accordingly, Bosch respectfully submits that, for at least these reasons, the
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`Board should decline to institute the inter partes review.
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`III. STANDARD FOR INSTITUTION
`The Board, in considering whether to institute a trial, determines whether or
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`not a party has met the statutory institution standard. A petition for inter partes
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`review may be granted only when “the information presented in the petition …
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`shows that there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
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`see also 37 C.F.R. § 42.108(c). A petitioner bears the burden of showing that this
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`standard has been met. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,756 (Aug. 14, 2012) (“The Board … may institute a trial where the
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`petitioner establishes that the standards for instituting the requested trial are met
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`2
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`U.S. Patent No. 8,544,136
`….”). A petitioner also bears the burden of proving unpatentability by a
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`preponderance of the evidence. 35 U.S.C. § 316(e).
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`A petitioner making an obviousness challenge must show where each
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`claimed limitation is taught in the prior art. See, e.g., Vizio, Inc. v. Int’l Trade
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`Comm’n, 605 F.3d 1330, 1342–43 (Fed. Cir. 2010); August Tech. Corp. v. Camtek
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`Ltd., 655 F.3d 1278, 1287 (Fed. Cir. 2011); see also 37 C.F.R. § 42.104(b)(4). If a
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`petitioner asserts that a combination of prior art renders a claim unpatentable, it
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`must “set forth sufficient articulated reasoning with rational underpinning to
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`support its proposed obviousness ground.” SAS Inst., Inc. v. ComplementSoft,
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`LLC, IPR2013-00581, Paper 15 at 12 (PTAB Dec. 30, 2013) (citing KSR Int’l Co.
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`v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); accord ActiveVideo Networks v.
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`Verizon Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012). The Board
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`may “deny some or all grounds for unpatentability for some or all of the
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`challenged claims.” 37 C.F.R. § 42.108(b); see also 35 U.S.C. § 314(a).
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`Thus, it is a petitioner’s duty to provide sufficient grounds for institution.
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`Here, Petitioner has failed to live up to its duty. Bosch respectfully submits that
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`institution should be denied as to all grounds.
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`IV. BRIEF OVERVIEW OF U.S. PATENT NO. 8,544,136
`U.S. Patent Number 8,544,136 (“the ’136 patent”), entitled “Automobile
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`Windshield Wiper Blade,” issued on October 1, 2013. It resulted from the
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`U.S. Patent No. 8,544,136
`prosecution of an application filed on July 9, 2012, and is a continuation of both
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`(1) application no. 13/179,132 (filed July 8, 2011), and (2) U.S. Patent No.
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`8,099,823 (filed February 2, 2009, and issued January 24, 2012), which is a
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`divisional of (a) U.S. Patent No. 7,484,262 (filed on June 8, 2007, and issued on
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`February 3, 2009) and (b) U.S. Patent No. 7,228,588 (filed on April 11, 2002, and
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`issued on June 12, 2007), which claims priority to a German application filed on
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`April 26, 2001.
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`The ’136 patent relates to a beam-type wiper blade that includes an
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`elongated belt-shaped, flexible resilient support element, an elastic wiper strip, and
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`a wind deflection strip (or spoiler) of a particular structure. Ex. 1001 at, e.g.,
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`Abstract; 4:19–5:45. Specifically, the wind deflection strip has two sides that
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`diverge from a common base point, including a surface facing the main flow
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`direction of the driving wind (“an incident surface”) located at the exterior of one
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`side. Id. at, e.g., 2:65–3:4; 5:17–23. An embodiment is illustrated in Figure 2:
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`The ’136 patent discloses different embodiments, for example, the spring
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`support element may consist of a single rail or made of two rails, the sides of the
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`spoiler may have free ends provided with claw-like extensions that grip the support
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`element at least in sections, and the spoiler can be made of one material or as a
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`binary component, with the claw-like extensions being made of a harder material
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`than the rest of the spoiler. Id. at 2:38–3:4. In addition to counteracting the wind
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`lift, reducing the wiper blade weight, and the material and manufacturing costs, the
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`wind deflection strip structures in the ’136 patent also provide a spoiler with
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`improved stability and function at high speeds and under great oncoming wind
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`loads, and add the necessary stiffness to the spoilers made of softer materials,
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`without compromising the spoiler’s attachment to the wiper blade or adversely
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`U.S. Patent No. 8,544,136
`affecting the sensitive force distribution of the spring support element. Id. at 2:13–
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`32; 2:50–60; 3:8–57; 5:38–45.
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`V.
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`PETITIONER FAILS TO CLEARLY IDENTIFY ITS CHALLENGES
`The rules governing inter partes review require a petition to identify “[t]he
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`specific statutory grounds … on which the challenge to the claim is based” and
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`“[h]ow the construed claim is unpatentable under the statutory grounds.” 37
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`C.F.R. § 42.104(b)(2),(4). The instant petition fails to meet this requirement.
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`Furthermore, Petitioner’s failure to adequately explain its challenge precludes a
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`finding that there is a reasonable likelihood that the claims are unpatentable.
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`The Petition includes six grounds of unpatentability, all based on the alleged
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`obviousness combinations—three each for claims 1 and 21. Grounds 1–3 (vis-à-
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`vis claim 1) are described using a series of claim charts and a textual discussion
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`following them. The claim charts indicate that Lumsden is the primary reference
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`and that, in Petitioner’s view, Lumsden should be modified by including certain
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`features of other, secondary references. Petition at 21–38. But the text is
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`inconsistent with the claim charts.
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`For example, the text of the Petition alleges that “[c]ombining the hollow
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`spoiler of Lumsden with the spring support element of Hoyler yields predictable
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`results.” Id. at 39. But the claim chart indicates that Petitioner is relying solely on
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`Lumsden for the “support element” limitation. Id. at 23.
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`As another example, the text of the Petition alleges: “A person of ordinary
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`skill in the art … would have reason to reduce the weight by substituting the
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`hollow carrier 6 … of Lumsden for the solid wind deflector strips of either
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`Kotlarski ‘383 or Merkel.” Id. at 40. This text suggests an obviousness challenge
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`in which the wiper blade of Kotlarski ’383 or Merkel is modified by applying a
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`particular teaching of Lumsden. But, again, the claim charts indicate that
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`Petitioner is relying on Lumsden alone to satisfy numerous limitations, including
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`the “support element” limitation. See id. at 28–38. These examples are
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`emblematic of Petitioner’s faulty approach, but not exhaustive.
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`The Petition thus leaves the Board (and Bosch) unable to ascertain what
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`exactly Petitioner is claiming would have been obvious. Fundamentally, a
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`showing of obviousness requires some consideration of “the differences between
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`the claimed invention and the prior art” in order to determine whether they “would
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`have been obvious … to a person having ordinary skill in the art.” 35 U.S.C.
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`§ 103. But the Petition leaves doubt as to what those differences are, or why they
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`would have been obvious to a skilled artisan. Petitioner is also required to identify
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`specific rationales supporting its contention that it would have been obvious to
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`modify the prior art. See, e.g., Farmwald v. ParkerVision, Inc., Case No.
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`IPR2014-01107, Paper 7 at 23–24 (PTAB Jan. 8, 2015) (citing KSR Int’l co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007)). But the Petition includes only ill-
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`U.S. Patent No. 8,544,136
`explained claim charts and a meandering discussion of various problems, without
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`identifying any concrete challenge to which Bosch can meaningfully respond. The
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`Petition therefore fails the requirements of the rules and fails to establish a
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`reasonable likelihood that claim 1 is unpatentable.
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`Petitioner’s discussion, in Grounds 4–6, of claim 21 incorporates Petitioner’s
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`discussion of claim 1. Petition at 55–56. It therefore fails for the same reasons.
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`VI. PETITIONER PUTS FORTH NO EVIDENCE THAT THE PRIOR
`ART DISCLOSES ALL OF THE CLAIM LIMITATIONS
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`In addition to Petitioner’s failure to clearly identify its challenges to claims 1
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`and 21, Petitioner also has failed to show that the prior art discloses all of the
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`limitations in those claims.1
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`“flexible resilient support element”
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`A.
`Claims 1 and 21 both require “an elongated, belt-shaped, flexible resilient
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`support element.” Judging by the claim charts in the Petition (since, again, the
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`Petition as a whole does not clearly set forth its challenges), Petitioner is relying
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`1 Bosch submits that a person of ordinary skill in the art has either an
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`undergraduate degree in mechanical engineering or a similar discipline, or several
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`years of experience in the field of wiper blade manufacture and design.
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`U.S. Patent No. 8,544,136
`solely on Lumsden to supply the “support element.”2 Petition at 23, 28, 33, 45, 49,
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`52. But the extent of Petitioner’s explanation is that “Lumsden discloses elongated
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`belt-shaped reinforcing elements 8, 10 having a longitudinal axis. Lumsden, Fig.
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`1, 2:13–15, 3:7[–]8.” Id. This is insufficient. In fact, Lumsden itself seems to
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`indicate that the sole purpose of the reinforcing elements is to lend rigidity to the
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`structure, (see Ex. 1025 at 3:8–9), and nothing in Lumsden teaches that either the
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`reinforcing elements or the blade as a whole should be in any way flexible or
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`resilient.
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`Given this failure of proof, the Petition should be denied as to all grounds.
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`“on a lower belt surface”
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`B.
`Claims 1 and 21 both require that “an elastic rubber wiper strip” be located
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`“on a lower belt surface” of the support element. Again, judging by the claim
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`charts in the Petition, Petitioner appears to be relying solely on Lumsden to supply
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`this limitation. See Petition at 23, 28–29, 33–34, 45–46, 49, 52–53.3 Petitioner
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`notes that the wiper strip of Lumsden is located “beneath” its reinforcing elements
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`2 The text of the Petition makes passing reference to “the spring support element of
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`Hoyler,” (Petition at 39), but this is not further explained.
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`3 The claim charts for Grounds 1–3 appear to cite other references for this
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`limitation, but this is must be a typographical/formatting mistake, and the citations
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`belong one row down.
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`U.S. Patent No. 8,544,136
`(which Petitioner alleges to be the “support element” of claims 1 and 21). Id.
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`But—even assuming arguendo that Lumsden’s reinforcing elements satisfy the
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`“support element” limitation—“beneath” is not the same as “on a lower belt
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`surface.” Figure 1 of Lumsden, the only disclosed embodiment, makes clear that
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`the wiper strip (12) does not make contact with the lower surface of the reinforcing
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`elements (8 and 10):
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`Ex. 1025, Fig. 1. Nowhere does Petitioner assert that any obvious modification of
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`Lumsden would include a wiper strip “on a lower belt surface” of the support
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`element.
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`Given this failure of proof, the Petition should be denied as to all grounds.
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`Case No. IPR2016-00042
`U.S. Patent No. 8,544,136
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`VII. CONCLUSION
`For at least the reasons set forth above, the Board should decline to institute
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`inter partes review of all challenged claims 1 and 21 of the ’136 patent, on any
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`ground.
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`DATED: January 28, 2016
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`Respectfully submitted,
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`Shearman & Sterling LLP
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`/Enrique W. Iturralde/
`Enrique W. Iturralde (Reg. No. 72,883)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
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`Agent for Patent Owner
`Robert Bosch LLC
`
`Mark A. Hannemann (pro hac vice)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
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`Counsel for Patent Owner
`Robert Bosch LLC
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`Case No. IPR2016-00042
`U.S. Patent No. 8,544,136
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`Certificate of Service
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. §
`42.107 was served via electronic mail on January 28, 2016, on the following
`counsel for Petitioner:
`
`Richard M. Koehl (richard.koehl@hugheshubbard.com)
`James R. Klaiber (james.klaiber@hugheshubbard.com)
`David E. Lansky (david.lansky@ hugheshubbard.com)
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`/Enrique W. Iturralde/
`Enrique W. Iturralde (Reg. No. 72,883)
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-4000
`
`Agent for Patent Owner
`Robert Bosch LLC
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