Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 22
`Entered: April 25, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COSTCO WHOLESALE CORPORATION
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00042
`Patent 8,544,136
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 22
`Entered: April 25, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COSTCO WHOLESALE CORPORATION
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00042
`Patent 8,544,136
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00042
`Patent 8,544,136
`
`I. INTRODUCTION
`
`Petitioner requests an inter partes review of claims 1 and 21 of U.S.
`Patent No. 8,544,136 (Ex. 1001, “the 136 patent”). Paper 10 (“Pet.”).
`Patent Owner filed a Preliminary Response to the Petition. Paper 21
`(“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that
`an inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Upon consideration of the Petition and
`Patent Owner’s Preliminary Response, we do not institute an inter partes
`review of the ’136 patent.
`
`A. Related Matters
`
`The parties represent that the ’136 patent is asserted in Robert Bosch
`LLC v. Alberee Products Inc. et al., cv-12-574-LPS (D. Del) (consolidated
`with cv-14-142-LPS). Pet. 1; Paper 5, 1. In addition, Petitioner has filed
`petitions against several other of Patent Owner’s patents related to
`windshield wiper technology: U.S. Patent Nos. 6,973,698 (IPR2016-00034),
`6,836,926 (IPR2016-00035), 6,944,905 (IPR2016-00036), 6,292,974
`(IPR2016-00038), 7,228,588 (IPR2016-00039), 7,484,264 (IPR2016-
`00040), and 8,099,823 (IPR2016-00041). Pet. 1; Paper 5, 1.
`
`B. The ’136 Patent
`
`The ’136 patent is directed to an automobile windshield wiper blade.
`
`Ex. 1001, Abstract. The wiper is made of three main components: elastic
`rubber wiper strip 24, resilient support element 12, and wind deflection strip
`
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`Case IPR2016-00042
`Patent 8,544,136
`42. Id. These three components are illustrated in Figure 2 of the ’136
`patent, reproduced below with added coloration.
`
`Figure 2 of the ’136 patent depicts a cross-sectional view of a windshield
`wiper blade embodiment, with elastic rubber wiper strip 24 highlighted in
`blue, resilient support element 12 in red, and wind deflection strip 42 in
`green. As shown in Figure 2 of the ’136 patent, wind deflection strip 42 has
`two sides (48, 50) that diverge from common point 46, such that, in
`conjunction with wall 58, wind deflection strip 42 is generally triangular in
`cross section and has a hollow interior.
`
`C. Challenged Claims
`
`Petitioner challenges claims 1 and 21, both of which are independent.
`Claims 1 and 21 are similar in scope and the differences between them do
`not affect the outcome in this Decision. Claim 1 is reproduced below for
`reference.
`1. A wiper blade (10) for an automobile windshield
`(14), with an elongated belt-shaped, flexible
`resilient support element (12) having a longitudinal
`axis, on a lower belt surface (22) of which that faces
`the windshield is located an elastic rubber wiper
`strip (24) sitting against the windshield that extends
`parallel to the longitudinal axis, and on an upper belt
`
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`Case IPR2016-00042
`Patent 8,544,136
`surface (16) of which a wind deflection strip (42 or
`112) is located that has an incident surface (54 or
`140) facing a main flow direction of a driving wind
`(arrow 52), said deflection strip extending in the
`longitudinal direction of the support element,
`characterized in that the wind deflection strip has
`two sides (48, 50 or 136, 138) that diverge from a
`common base point (46 or 134) as seen in a cross
`section, and that the incident surface (54 or 140) is
`located at the exterior of one side (50 or 138),
`wherein the support element has outer edges,
`wherein the sides of the wind deflection strip have
`respective free ends having thereon respective
`claw-shaped extensions that fittingly grip around
`the outer edges of the support element at least in
`sections and engage at least one of the upper belt
`surface (24) and the lower belt surface (22), so that
`the wind deflection strip can be snapped onto the
`outer edges or slid onto the outer edges in a
`longitudinal direction, wherein the wind deflection
`strip has a height extending from the base point to
`ends of the sides farthest from the base point,
`wherein a substantial majority of the height is above
`the upper belt surface in a direction facing away
`from the windshield, and characterized in that the
`wind deflection strip is designed as a binary
`component whose longitudinal area provided with
`the claw-shaped extensions is made of a harder
`material than a longitudinal area lying closer to the
`base point.
`
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`Case IPR2016-00042
`Patent 8,544,136
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`D. Prior Art and Asserted Grounds
`
`Basis Claim(s) Challenged
`§ 103 1
`
`Petitioner asserts that claims 1 and 21 of the ’136 patent are
`unpatentable on the following grounds:
`Reference(s)
`Hoyler,1 Lumsden,2 and
`Kotlarski ’0903 or Mathues4
`Merkel,5 Lumsden, and Kotlarski
`’090 or Mathues
`Kotlarski ’383,6 Lumsden, and
`Kotlarski ’090 or Mathues
`§ 103 21
`Hoyler and Lumsden
`§ 103 21
`Merkel and Lumsden
`§ 103 21
`Kotlarski ’383 and Lumsden
`Petitioner also relies on the declaration of Gregory W. Davis, Ph.D.
`(Ex. 1026).
`
`§ 103 1
`
`§ 103 1
`
`
`1 German Patent No. 1,028,896, published April 24, 1958 (Ex. 1006). The
`English translation begins at page 5.
`2 U.K. Patent App. GB 2 346 318 A, published August 9, 2000 (Ex. 1025).
`3 PCT WO00/34090, published June 15, 2000 (Ex. 1018). Petitioner instead
`cites to Exhibit 1020, U.S. Patent 6,523,218, which issued from the PCT
`application in Exhibit 1018, because the PCT “does not include reference
`numbers for line citations, and because it encompasses the same subject
`matter.” Pet. 17, n.5. (Ex. 1018).
`4 U.S. Patent No. 3,121,133, issued February 11, 1964 (Ex. 1017).
`5 PCT WO 99/12784, published March 18, 1999 (Ex. 1007). Petitioner
`instead cites to Exhibit 1022, U.S. Patent 6,295,690, which issued from the
`PCT application in Exhibit 1022, for the same reasons as explained in supra
`note 3. Pet. 15, n.4.
`6 PCT WO 99/02383, published January 21, 1999 (Ex. 1004). Petitioner
`instead cites to Exhibit 1021, U.S. Patent 6,279,191, which issued from the
`PCT application in Exhibit 1004, for the same reasons as explained in supra
`note 3. Pet. 14, n.3.
`
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`Case IPR2016-00042
`Patent 8,544,136
`
`II. ANALYSIS
`
`We agree with Patent Owner that there is a dispositive issue in this
`case. Namely, both challenged claims require a “support element (12)” and
`that “on a lower belt surface (22)” of that support element is “an elastic
`rubber wiper strip (24).” See Prelim. Resp. 9–10. In other words, the claims
`require the wiper to be on the lower surface of the support element. For this
`element, found in both challenged claims, Petitioner asserts that “Lumsden
`discloses a lower belt surface of reinforcing elements 8, 10 beneath which is
`located a rubber wiper blade 4.” Pet. 23 (first ground addressing claim 1)
`(emphasis added); see also id. at 28, 33–34, 45–46, 49, 52–53 (other grounds
`and claims). However, Petitioner does not offer a claim construction
`justifying reading “on” to mean “beneath.” The word “on” generally
`conveys a sense of contact between two elements,7 whereas “beneath” more
`broadly conveys a sense of the spatial relationship between elements.8 As
`shown below in a reproduction of Figure 1 of Lumsden, flange 24 of spoiler
`18 precludes wiper 4 from being in contact with the alleged support element
`in Lumsden (element 8):
`
`
`7 See, e.g., “on”: “1.b. Used to indicate contact with or extent over (a
`surface) regardless of position: a picture on the wall; a rash on my back,”
`The American Heritage® Dictionary of the English Language (2011) (Ex.
`3001).
`8 See, e.g., “beneath”: “1. In a lower place; below,” “2. Underneath.” Id.
`
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`Case IPR2016-00042
`Patent 8,544,136
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` Figure 1 of Lumsden depicts a cross section of a wiper having spoiler
`18 (in green), wiper 4 (in blue) and support elements 8 and 10 (in orange).
`Flange 24 of spoiler 18 is on the lower surface of support element 8, not the
`wiper. Thus, Lumsden does not appear to describe the claimed relationship
`between the lower surface of the support element and the wiper, and
`Petitioner fails to set forth a claim construction in support of its position.
`In addition, although Petitioner’s ground reads the claimed supporting
`element on the support elements in Lumsden (Pet. 23, 28, 33–34, 45–46, 49,
`52–53), that structure does not appear to be a part of any asserted
`combination. In its explanation of the proposed combination, Petitioner
`asserts that “[c]ombining the hollow spoiler of Lumsden with the spring
`support element of Hoyler yields predictable results.” Pet. 39. In particular,
`Petitioner asserts the combination is to “clip the spoiler of Lumsden on any
`wiper blade with a flat-style support element.” Id. Petitioner proposes
`similar combinations in the grounds involving Kotlarski ’383 and Merkel,
`which Petitioner alleges would “reduce the weight [in Kotlarski ’383 or
`Merkel] by substituting the hollow [spoiler] of Lumsden for the solid wind
`deflector” of those references. Id. at 40. Given all of this, Petitioner’s
`asserted combinations and rationales involve adding the spoiler of Lumsden
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`Case IPR2016-00042
`Patent 8,544,136
`to one or more prior art reference(s), not the support element. The proposed
`combinations, therefore, do not address adequately the claimed support
`element.
`Accordingly, proposed combination involving Lumsden’s spoiler
`asserted against the wiper of claim 1 of the ’136 patent would require a
`further modification. On this point, however, Petitioner merely makes an
`unsupported attorney argument that “[a] person of ordinary skill in the art
`would immediately understand from these disclosures that the Lumsden
`flanges (Fig. 1) could easily be modified to be directly in contact with the
`upper surface of the reinforcing elements.” Id. at 42. Even if it would have
`been obvious to do that, Petitioner’s rationale to clip or substitute Lumsden’s
`spoiler on Hoyler, Kotlarski ’383, or Merkel’s beam wiper remains
`incongruous with Petitioner’s reliance of Lumsden to teach a support
`element. Accordingly, we determine that Petitioner has not shown
`sufficiently how the asserted prior art is reasonably likely to render obvious
`the subject matter of claims 1 and 21.9
`
`III. ORDER
`
`In view of the foregoing, we do not institute inter partes review of the
`
`’136 patent.
`
`
`
`
`9 Petitioner’s analysis for independent claim 21 is substantively similar to
`that of claim 1; we need not address it separately. See Pet. 55 (“[t]he
`discussion of Claim 1 above is incorporated by reference, as most elements
`of claim 1 are present in Claim 21.”).
`
` 8
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`Case IPR2016-00042
`Patent 8,544,136
`PETITIONER:
`
`Richard M. Koehl
`James R. Klaiber
`David Lansky
`HUGHES HUBBARD & REED LLP
`richard.koehl@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`david.lansky@hugheshubbard.com
`
`
`
`PATENT OWNER:
`
`Enrique Iturralde
`SHEARMAN & STERLING LLP
`Enrique.Iturralde@shearman.com
`
`
`
` 9
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