Paper No. 23
`Filed May 24, 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
`
`
`
`PETITIONER’S REQUEST FOR REHEARING OF
`DECISION DENYING INSTITUTION OF INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,544,136
`
`
`Filed May 24, 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
`
`
`
`PETITIONER’S REQUEST FOR REHEARING OF
`DECISION DENYING INSTITUTION OF INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,544,136
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ...................................................................................... i
`
`STATEMENT OF RELIEF SOUGHT ...................................................................... 1
`
`REASONS FOR THE RELIEF REQUESTED ......................................................... 1
`
`CONCLUSION ........................................................................................................ 13
`
`CERTIFICATE OF SERVICE .................................................................................. 1
`
`i
`
`
`
`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Costco Wholesale Corp. v. Robert Bosch, LLC,
`IPR2016-00039, Paper #19 ................................................................................... 4
`
`Costco Wholesale Corp. v. Robert Bosch, LLC,
`IPR2016-00040, Paper #16 ................................................................................... 4
`
`Costco Wholesale Corp. v. Robert Bosch, LLC,
`IPR2016-00041, Paper #20 ............................................................................... 4, 5
`
`Robert Bosch LLC v. Alberee Products, Inc.,
`No. 12-574 (D. Del.) (the “Delaware Action”) ............................................ 11, 12
`
`STATUTES AND RULES
`
`35 U.S.C. § 103(a) (2006) .................................................................................. 2, 3, 7
`
`Federal Rule of Civil Procedure 37(b)(2) ................................................................ 12
`
`Leahy-Smith America Invents Act,
`Pub. L. No. 112–29, 125 Stat. 284 (2011) .......................................................... 11
`
`
`
`
`
`i
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`
`
`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`
`Costco Wholesale Corporation (“Petitioner”) respectfully requests rehearing
`
`of the Board’s decision dated April 25, 2016 (Paper No. 22; the “Decision”), which
`
`denied institution of Inter Partes Review of claims 1 and 21 of U.S. Patent No.
`
`8,544,136 (the “’136 Patent”; Exhibit 1001).
`
`STATEMENT OF RELIEF SOUGHT
`
`Petitioner requests that the Board institute Inter Partes review of claims 1
`
`and 21 of the ’136 Patent and consolidate this case for trial with IPR2016-00039,
`
`IPR2016-00040, and IPR2016-00041 (the “Related Cases”).
`
`REASONS FOR THE RELIEF REQUESTED
`
`This case involves a patent that is a direct descendant of the patents involved
`
`in the Related Cases. The challenged claims here are very similar to the claims at
`
`issue in the Related Cases. The prior art combinations asserted here are very simi-
`
`lar to the prior art combinations at issue in the Related Cases. The Scheduling Or-
`
`ders issued in the Related Cases refer to this IPR2016-00042 as if the three cases
`
`(and two other similar cases) were going to be instituted together. And the inter-
`
`ests of justice clearly support having this Board, rather than a lay jury in parallel
`
`litigation, decide the questions of patentability raised here, especially in view of
`
`the close parallel between this case and the Related Cases.
`
`In IPR2016-00039, the Board instituted Inter Partes Review with respect to
`
`six grounds of unpatentability, including claim 1 of U.S. Patent No. 7,228,588 (the
`
`
`
`1
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`“’588 Patent”; Exhibit 1009 at 1-9) as unpatentable under 35 U.S.C. § 103(a)
`
`(2006) over Merkel (Exhibit 1007) and Prohaska (Exhibit 1003). Claim 1 of the
`
`’588 Patent recites a wiper assembly comprising a flat spring support element and
`
`a hollow wind deflection strip, as do the challenged claims here.
`
`In IPR2016-00040, the Board instituted Inter Partes Review with respect to
`
`six grounds of unpatentability, including claim 1 of U.S. Patent No. 7,484,264 (the
`
`“’264 Patent”; Exhibit 1010 at 1-8) as unpatentable under 35 U.S.C. § 103(a)
`
`(2006) over Merkel (Exhibit 1007) and Prohaska (Exhibit 1003). Claim 1 of the
`
`’264 Patent recites a wiper assembly comprising a flat spring support element and
`
`a hollow wind deflection strip, as do the challenged claims here.
`
`In IPR2016-00041, the Board instituted Inter Partes Review with respect to
`
`four grounds of unpatentability, including claim 1 of U.S. Patent No. 8,099,823
`
`(the “’823 Patent”; Exhibit 1011 at 1-8) as unpatentable under 35 U.S.C. § 103(a)
`
`(2006) over Merkel (Exhibit 1007) and Prohaska (Exhibit 1003). Claim 1 of the
`
`’823 Patent recites a wiper assembly comprising a flat spring support element and
`
`a hollow wind deflection strip, as do the challenged claims here.
`
`The petitions in IPR2016-00039, IPR2016-0040, and IPR2016-0041 are
`
`each supported by the same Declarations of Dr. Eric H. Maslen (“Maslen Decl.”;
`
`Exhibit 1016), and Dr. Gregory W. Davis (“Davis Decl.”; Exhibit 1026) as is the
`
`Petition here.
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`
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`2
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`
`In this IPR2016-00042, Petitioner seeks Inter Partes Review with respect to
`
`six grounds of unpatentability, including claim 21 of the ’136 Patent as unpatenta-
`
`ble under 35 U.S.C. § 103(a) (2006) over Merkel (Exhibit 1007) and Lumsden
`
`(Exhibit 1025). See also Pet. at 9-11, 15-16, 18-19. Images of prior art at issue
`
`here and in the Related Cases are reproduced below:
`
`Merkel (Ex. 1007) Figs. 1 and 4
`
` Prohaska (Ex. 1003) Fig. 2
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`
`
`Lumsden (Ex. 1025) Fig. 1
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`
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`
`
`
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`Claims 1 and 21 of the ’136 Patent recite a wiper assembly comprising a flat
`
`spring support element and a hollow wind deflection strip (see Pet. at 4), as does
`
`claim 1 of the ’588 Patent, claim 1 of the ’264 Patent, and claim 1 of the ’823 Pa-
`
`tent. In this case, Petitioner contends, inter alia, that it would have been obvious to
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`3
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
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`provide the flat spring wiper assembly disclosed in Merkel with the hollow wind
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`deflection strip disclosed in Lumsden (Pet. at 27-32, 38-45) for substantially the
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`same reasons that the Board found, in IPR2016-00039, IPR2016-00040, and
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`IPR2016-00041, that it would have been obvious to provide the flat spring wiper
`
`assembly disclosed in Merkel with the hollow wind deflection strip disclosed in
`
`Prohaska.
`
`In IPR2016-00039, the Board found that the combination of Merkel and
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`Prohaska would likely result in a wiper assembly that met the claim description,
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`“an elongated belt-shaped, flexible spring support element (12), on the lower belt
`
`surface (22) of which that faces the windshield is located an elastic rubber wiping
`
`strip 24 . . . .” ’588 Patent col. 7, lines 25-28 (emphasis added).
`
`In IPR2016-00040, the Board also found that the combination of Merkel and
`
`Prohaska would likely result in a wiper assembly that met the claim description,
`
`“an elongated belt-shaped, flexible resilient support element (12) having a longitu-
`
`dinal axis, on the lower belt surface (22) of which that faces the windshield is lo-
`
`cated an elastic rubber wiping strip 24 . . . .” ’264 Patent col. 7, lines 11-14 (em-
`
`phasis added).
`
`In IPR 2016-0041, the Board once again found that the combination of Mer-
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`kel and Prohaska would likely result in a wiper assembly that met the claim de-
`
`scription, “an elongated belt-shaped, flexible resilient support element (12) having
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`4
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
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`a longitudinal axis, on a lower belt surface (22) of which that faces the windshield
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`is located an elastic rubber wiping strip (24) . . . .” ’823 Patent col. 7, lines 3-6
`
`(emphasis added).
`
`In this IPR2016-00042, however, the Board found that the combination of
`
`Merkel and Lumsden likely would not result in a wiper assembly that met the
`
`claim description, “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 strip (24) . . . .” ’136 Patent col. 7, lines 23-
`
`26. The Board reached this conclusion on the basis that “Lumsden does not appear
`
`to describe the claimed relationship between the lower surface of the support ele-
`
`ment and the wiper.” Decision at 7.
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`Petitioner respectfully submits that the Board has misapprehended Petition-
`
`er’s stated grounds of unpatentability. Petitioner does not rely on Lumsden to
`
`teach a support element, but rather relies on Lumsden, just as in the Related Cases
`
`it relied on Prohaska, to teach a spoiler that is readily adaptable to support ele-
`
`ments found in prior art flat spring wiper assemblies such as the spring rails 30, 32
`
`disclosed in Merkel as shown above. It is when the spoiler of Lumsden is com-
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`bined with a prior art flat spring wiper assembly that there results “an elongated
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`belt-shaped, flexible resilient support element (12) having a longitudinal axis, on a
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`5
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
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`lower belt surface (22) of which that faces the windshield is located an elastic rub-
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`ber strip (24) . . . .” ’136 Patent col. 7, lines 23-26.
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`Thus, the Petition states that “Claim 1 describes a wiper assembly in which a
`
`prior art hollow spoiler (Lumsden) is mounted on a prior art wiper blade (Hoyler)
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`in conventional fashion. . . .” Pet. at 22. The Petition further states that “[b]y the
`
`priority date of the ’136 Patent, it was known that flexible spring support elements
`
`cause wiper strips to evenly distribute force over a windshield, see, e.g., Appel [Ex.
`
`1005], 1:23-28; Merkel [Ex. 1007], 1:15-18, and spoilers maintain wiper blade
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`contact pressure at high speeds, see, e.g., Lumsden, 3:3-6 . . . .” Pet. at 38. In both
`
`of these statements, the Petition relies on Lumsden as teaching a spoiler, not a sup-
`
`port element.
`
`The Petition further states that “knowledge of even pressure distribution as-
`
`sociated with spring support elements” would have motivated a person having or-
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`dinary skill in the art “to clip the spoiler of Lumsden on any wiper blade with a
`
`flat-style support element, such as that disclosed in Hoyler” (Pet. at 39; emphasis
`
`added), and “[c]ombining the hollow spoiler of Lumsden with the spring support
`
`element of Hoyler yields predictable results: a wiper blade that counters liftoff ten-
`
`dency, distributes force evenly over the windshield, weighs less than a wiper blade
`
`with a solid spoiler, and is less stiff than a solid spoiler and thus has less tendency
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`6
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
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`to prevent the spring support element from remaining in contact with the wind-
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`shield. Davis Decl. ¶ 55.” Pet. at 39-40.
`
`In the Related Cases, the Board utilized similar reasoning to find that provid-
`
`ing Merkel (Exhibit 1007) with the spoiler of Prohaska (Exhibit 1003) would result
`
`in wiper assembly whose support elements would have a lower belt surface “on”
`
`which was located a rubber wiper strip. The Petition here urges exactly the same
`
`type of combination and rationale, differing only in that Petitioner here relies on
`
`Lumsden for the spoiler element, whereas in the Related Cases Petitioner relies on
`
`Prohaska for the spoiler element.
`
`The Board appears to have misapprehended Petitioner’s position as being to
`
`replace the support elements 60, 62 of Merkel with the reinforcing elements 8, 10
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`of Lumsden. See Decision at 8 (“Petitioner’s rationale to clip or substitute
`
`Lumsden’s spoiler on Hoyler, Kotlarski ’383, or Merkel’s beam wiper remains in-
`
`congruous with Petitioner’s reliance of Lumsden to teach a support element.”)
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`(emphasis added). But Petitioner does not rely on Lumsden to teach a “support el-
`
`ement.” Rather, as the Board correctly stated elsewhere in its decision, “Petition-
`
`er’s asserted combinations and rationales involve adding the spoiler of Lumsden to
`
`one or more prior art references . . . .” Decision at 7-8 (emphasis in original).
`
`Throughout the Petition and in the supporting declarations, Petitioner con-
`
`tends that challenged claims 1 and 21 of the ’136 Patent are unpatentable under 35
`
`
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`7
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`U.S.C. § 103(a) (2006) because they describe the simple combination of the
`
`Lumsden spoiler and a prior art flat spring wiper blade assembly, the flat springs
`
`comprising the “support element” of the combination. See, e.g., Pet. at 22 (“Claim
`
`1 describes a wiper assembly in which a prior art hollow spoiler (Lumsden) is
`
`mounted in a prior art wiper blade (Hoyler) in conventional fashion . . . .”); id. at
`
`27-28 (“Claim 1 also describes a wiper assembly in which a prior art hollow spoil-
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`er (Lumsden) is mounted on a prior art wiper blade (Merkel) in conventional fash-
`
`ion . . .”). The Petition’s entire discussion of why it would have been obvious to
`
`make these combinations (Pet. at 38-45; Pet. at 55-56) is similarly focused on
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`combining the hollow spoiler of Lumsden with a prior art flat spring wiper assem-
`
`bly such as the one disclosed in Merkel. Pet. at 38-41; Pet. at 55-56.
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`Petitioner acknowledges that the claim charts in the Petition (e.g., Pet. at 23)
`
`could have been clearer in describing what results when “a prior art hollow spoiler
`
`(Lumsden) is mounted on a prior art wiper blade.” Pet. at 22. Petitioner’s claim
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`charts state that Lumsden discloses “a lower belt surface of reinforcing elements 8,
`
`10 beneath which is located a rubber wiper blade 4 sitting against the windshield.”
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`E.g., Pet. at 23 (emphasis added). That is an accurate description of Lumsden: the
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`elements 8, 10 depicted on page 3, above, are indeed reinforcing elements.
`
`But a reinforcing element is not necessarily a support element in the sense of
`
`the ’136 Patent. The specification of the ’136 Patent specifically distinguishes be-
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`8
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`tween a flat spring “support element,” on the one hand, and “the expensive stirrup
`
`design with two flexible rails located in the wiper strip, as is practiced in conven-
`
`tional wiper blades.” ’136 Patent col. 1, lines 39-41 (Exhibit 1001) (emphasis add-
`
`ed); Pet. at 4. The “two flexible rails” referred to here are “reinforcing elements”
`
`in the sense of the Lumsden patent (see, e.g., Maslen Decl. p. 43 [Exhibit 1016]),
`
`but are not “support elements” in the sense of the ’136 Patent.
`
`Petitioner’s claim charts do not refer to the Lumsden structure 8, 10 as “sup-
`
`port” elements, because the Petition relies on Hoyler (Exhibit 1006, Grounds 1 and
`
`4), see Pet. at 22-27, 45-48, Merkel (Exhibit 1007, Grounds 2 and 5), see Pet. at
`
`27-32, 48-52, and Kotlarski ’383 (Exhibit 1004, Grounds 3 and 6), see Pet. at 32-
`
`38, 52-55, as teaching the claimed support elements. Petitioner’s discussion of the
`
`state of the prior art as of the filing date of the ’136 Patent similarly states that
`
`“Merkel describes a wiper blade assembly as comprising a wiper strip (14), a sup-
`
`port element (12) . . . ,” while mentioning Lumsden’s “reinforcement elements (8,
`
`10)” in passing, noting only that they are “conveniently made of steel.” Pet. at 15,
`
`18.
`
`The Board correctly states that “Petitioner’s asserted combinations and ra-
`
`tionales involve adding the spoiler of Lumsden to one or more prior art refer-
`
`ences.” Decision at 7-8 (emphasis in original). That is indeed Petitioner’s position
`
`here, as it is in the Related Cases. And precisely for that reason, the merits of the
`
`
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`9
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`Petition are not undermined by the Board’s observation, “Lumsden does not appear
`
`to describe the claimed relationship between the lower surface of the support ele-
`
`ment and the wiper.” Decision at 6; cf. Pet. at 13 (“Hoyler discloses a wiper blade
`
`assembly comprising two longitudinal springs positioned in lateral slots of a wiper
`
`strip.”); Pet. at 40 (“Kotlarski ‘383 and Merkel each disclose a wiper blade having
`
`an elongated spring-elastic support element, a rubber-elastic wiper strip located on
`
`the underside of the support element.”).
`
`The Board stated that “Petitioner merely makes an unsupported attorney ar-
`
`gument” in support of its proposed combinations of the Lumsden hollow spoiler
`
`with prior art flat spring wiper assemblies (Decision at 8), but that is incorrect: the
`
`Declaration of Dr. Davis (Exhibit 1026) fully supports the rationale of proposed
`
`combinations and the position that they render obvious, and unpatentable, at least
`
`some subject matter that challenged claims 1 and 21 of the ’136 Patent describe.
`
`See Pet. at 39 (citing Davis Decl. ¶ 55 as showing the obviousness of replacing
`
`Merkel’s solid spoiler with Lumsden’s hollow spoiler as stated at Pet. 39-39); Pet.
`
`at 44 (citing Davis Decl. ¶ 74 as showing the obviousness of modifying the claws
`
`of Lumsden to grip the upper and lower surfaces of the support elements disclosed
`
`in Merkel and Kotlarski ’383). There is no substantial difference between the obvi-
`
`ousness positions asserted in this case and those relied upon in the Related Cases.
`
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`10
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`Substantially the same evidence and arguments are made in all of the cases, and the
`
`conclusion here should be the same as in the Related Cases.
`
`Institutional and policy reasons also strongly support rehearing in this case.
`
`A major purpose of the Leahy-Smith America Invents Act, Pub. L. No. 112–29,
`
`125 Stat. 284 (2011), was to improve the adjudication of patentability questions by
`
`having expert administrative bodies, rather than lay juries, decide whether claims
`
`in issued patents satisfied statutory conditions for patentability. Cf. Virtualagility
`
`Inc. v. Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2015) (reversing denial of
`
`stay pending outcome of PTAB proceeding). The ’136 Patent is being asserted
`
`against petitioner in Robert Bosch LLC v. Alberee Products, Inc., No. 12-574 (D.
`
`Del.) (the “Delaware Action”). Although Petitioner is confident of prevailing in
`
`the Delaware Action, the ability to present an invalidity defense to a jury is not a
`
`substitute for having this expert Board consider the patentability questions that the
`
`Petition raises.
`
`There is also an important consideration of judicial economy that should be
`
`taken into account. As noted above, the challenged claims at issue here are very
`
`similar to the challenged claims as to which the Board has instituted Inter Partes
`
`Review in the Related Cases. The prior art and unpatentability rationales here are
`
`also very similar to the prior art and unpatentability rationales in the Related Cases.
`
`Petitioner and the Patent Owner are going to be briefing and arguing the Related
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`11
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`Cases, involving substantially similar claimed subject matter, references, and ar-
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`guments, no matter what happens in this case. But if rehearing is not granted, Peti-
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`tioner and the Patent owner will be substantially duplicating the work that the Re-
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`lated Cases require by litigating the validity of claims 1 and 21 of the ’136 Patent
`
`in the context of the Delaware Action.1
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`
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`
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`1 On March 17, 2016, the District Court hearing the Delaware Action stayed pro-
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`ceedings pending determination of a motion by Petitioner to dismiss the Second
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`Amended Complaint in that action as a discovery sanction under Federal Rule of
`
`Civil Procedure 37(b)(2). The Patent Owner has vowed to appeal any discovery
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`sanction that the Delaware district court may impose, and there is no imminent
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`prospect of the Delaware Action being finally terminated on grounds that will ren-
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`der moot the questions of patentability sought to be raised in this case.
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`12
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`
`CONCLUSION
`
`For the reasons set forth above, the Board should grant rehearing, institute
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`Inter Partes review of claims 1 and 21 of the ’136 Patent, and consolidate this case
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`for trial with IPR 2016-00039, IPR2016-00040, and IPR2016-00041.
`
`Dated: May 24, 2016
`
`Respectfully submitted,
`
`/James R. Klaiber/
`James R. Klaiber
`Registration No. 41,902
`
`
`
`HUGHES HUBBARD & REED LLP
`One Battery Park Plaza, 17th Floor
`New York, New York 10004
`Telephone: (212) 837-6125
`james.klaiber@hugheshubbard.com
`Attorney for Petitioner
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`13
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`PETITIONER’S REQUEST FOR REHEARING
`IPR2016-00042
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 24th day of May, 2016, copies of the foregoing
`
`Request For Rehearing of Decision Denying Institution of Inter Partes Review of
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`U.S. Patent No. 8,544,136 have been served in their entirety by email on the attor-
`
`neys of record for Patent Owner:
`
` Patrick R. Colsher (patrick.colsher@shearman.com)
`
` Mark A. Hannemann (mark.hannemann@shearman.com)
`
` Enrique W. Iturralde (enrique.iturralde@shearman.com)
`
`
`
`Respectfully submitted,
`
`/James R. Klaiber/
`James R. Klaiber
`Registration No. 41,902
`
`
`
`
`
`1
`
`Dated: May 24, 2016
`
`
`70163594_9
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