Paper No. ______
`
`Filed: October 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Costco Wholesale Corporation
`Petitioner
`
`v.
`
`Robert Bosch LLC
`Patent Owner
`
`
`
`U.S. Patent 8,544,136
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,544,136
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
`
`
`
`
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`66941752_1
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`
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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) ................ 3 
`
`VI.  THE ‘136 PATENT ......................................................................................... 4 
`A. 
`Prosecution and Issuance of the ‘136 Patent ......................................... 6 
`
`B. 
`
`Claim Construction ............................................................................... 8 
`
`VII.  OVERVIEW OF PRIOR ART ........................................................................ 9 
`A.  U.K. Patent No. G.B. 2,106,775 (“Prohaska”; Exhibit 1003) ............... 9 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`U.S. Patent No. 3,192,551 (“Appel”; Exhibit 1005) .......................... 12 
`
`German Patent No. D.E. 1,028,896 (“Hoyler”; Exhibit 1006) .......... 13 
`
`PCT Pub. No. WO99/02383 (“Kotlarski ‘383”; Exhibit 1004) .......... 14 
`
`PCT Publication No. WO99/12784 (“Merkel”; Exhibit 1007) .......... 15 
`
`PCT Pub. No. WO00/34090 (“Kotlarski ‘090”; Ex. 1018) ................ 16 
`
`G.  U.S. Patent No. 3,121,133 (“Mathues”; Exhibit 1017) ...................... 17 
`
`H.  U.K. Patent 2,346,318 to Lumsden (“Lumsden”; Exhibit 1025) ........ 18 
`
`I. 
`
`German Pub. No. DE10000373 (“Eckhardt”; Exhibit 1028) .............. 19 
`
`VIII.  DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY
` ....................................................................................................................... 20 
`A. 
`Legal Standards ................................................................................... 20 
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`1. 
`Obviousness .............................................................................. 20 
`Level of Skill in the Art .............................................................. 21 
`2. 
`Claim 1 Is Unpatentable ...................................................................... 22 
`
`Claim 21 Is Unpatentable .................................................................... 45 
`
`A. 
`
`B. 
`
`IX.  CONCLUSION .............................................................................................. 56 
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`
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`
`
`Exhibit
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`1001
`
`1002
`
`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
`
`1014
`
`LIST OF EXHIBITS
`Description
`
`U.S. Patent No. 8,544,136, “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)
`
`U.K. Patent No. GB 2,106,775 to Prohaska et al.(“Prohaska”)
`
`PCT Pub. No. WO99/02383 to Kotlarski et al. (“Kotlarski ‘383”)
`with certified translation (also published as U.S. Patent No.
`6,279,191)
`
`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”) with cer-
`tified translation (also published as U.S. Patent No. 6,295,690)
`
`File History of U.S. Patent No. 8,544,136 (Application No.
`13/553094)
`
`File History of U.S. Patent No. 7,228,588 (Application No.
`10/312279)
`
`File History of U.S. Patent No. 7,484,264 (Application No.
`11/760394)
`
`File History of U.S. Patent No. 8,099,823 (Application No.
`12/364092)
`
`Joint Claim Construction Chart
`
`Robert Bosch LLC’s Opening Claim Construction Brief, April
`24, 2015
`
`Declaration of Dr. Daniel H. Kruger, sworn to October 9, 2015
`(the “Kruger Decl.”)
`
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`Description
`
`NOT FILED
`
`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”) with certified translation (also published as U.S. Patent
`No. 6,523,218)
`
`NOT FILED
`
`U.S. Patent No. 6,523,218 to Kotlarski
`
`U.S. Patent No. 6,279,191 to Kotlarski et al.
`
`U.S. Patent No. 6,295,690 to Merkel et al.
`
`U.S. Patent No. 3,818,536 to Plisky (“Plisky”)
`
`U.S. Patent No. 3,925,844 to Cone (“Cone”)
`
`U.K. Patent No. 2,346,318 to Lumsden (“Lumsden”)
`
`Declaration of Dr. Gregory Davis, sworn to October 9, 2015 (the
`“Davis Decl.”)
`
`Declaration of James W. Dabney (“Dabney Decl.”)
`
`German Pub. No. DE10000373 to Eckhardt et al. (“Eckhardt”)
`
`Exhibit
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`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
`
`1026
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`1027
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`1028
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`
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`I.
`
`Introduction
`
`Costco Wholesale Corporation (“Petitioner” or “Costco”) requests inter
`
`partes review (IPR) of Claims 1 and 21 of U.S. Patent No. 8,544,136 (“the ‘136
`
`patent”) (Ex. 1001). This petition demonstrates there is a reasonable likelihood
`
`that Petitioner will prevail in proving, by at least a preponderance of the evidence,
`
`that Claims 1 and 21 of the ‘136 patent encompass subject matter that is unpatent-
`
`able under 35 U.S.C. § 103(a)(2006) in view of prior art that the Office did not
`
`have or did not fully consider during prosecution. Claims 1 and 21 of the ‘136 pa-
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`tent should accordingly be canceled.
`
`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 ‘136 patent and 17 other patents have been asserted in
`
`Robert Bosch LLC v. Alberee Products Inc. et al., Civil Action No. 12-574-LPS,
`
`currently pending in the United States District Court for the District of Delaware
`
`(the “Delaware Action”). Among these 17 additional patents are U.S. Patents Nos.
`
`7,228,588, 7,484,264, and 8,099,823, which are related to the ‘136 patent. Costco
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`is concurrently petitioning for IPR of U.S. Patent Nos. 6,292,974, 6,836,926,
`
`6,944,905, 6,973,698, 7,228,588, 7,484,264, and 8,099,823. Petitioner is not aware
`
`of any other current judicial or administrative matters that would affect, or be af-
`
`fected by, a decision in this proceeding.
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`Counsel and Service Information: Petitioner’s lead counsel, backup counsel,
`
`and service information are below. Petitioner consents to electronic service.
`
`
`
`Lead Counsel
`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 ‘136 patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the ‘136 patent. This petition is being filed less
`
`than one year after Petitioner was served with a complaint alleging infringement of
`
`the ‘136 patent. See Oct. 10, 2014 Proof of Service (Ex. 1002).
`
`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)
`
`A. Claims for Which Review is Requested - 37 C.F.R. § 42.104(b)(1)
`
`Petitioner seeks cancellation of Claims 1 and 21.
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`B.
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`Statutory Grounds of Challenge - 37 C.F.R. § 42.104(b)(2)
`
`Ground #1. Claim 1 encompasses subject matter that is unpatentable under
`
`35 U.S.C. § 103(a) in view of (a) Hoyler (Ex. 1006), (b) Lumsden (Ex. 1025), and
`
`(c) either Kotlarski ‘090 (Ex. 1018) or Mathues (Ex. 1017).
`
`Ground #2. Claim 1 encompasses subject matter that is unpatentable under
`
`35 U.S.C. § 103(a) in view of (a) Merkel (Ex. 1007), (b) Lumsden (Ex. 1025), and
`
`(c) either Kotlarski ‘090 (Ex. 1018) or Mathues (Ex. 1017).
`
`Ground #3. Claim 1 encompasses subject matter that is unpatentable under
`
`35 U.S.C. § 103(a) in view of (a) Kotlarski ‘383 (Ex. 1004), (b) Lumsden (Ex.
`
`1025), and (c) either Kotlarski ‘090 (Ex. 1018) or Mathues (Ex. 1017).
`
`Ground #4. Claim 21 encompasses subject matter that is unpatentable under
`
`35 U.S.C. § 103(a) in view of Hoyler (Ex. 1006) and Lumsden (Ex. 1025).
`
`Ground #5. Claim 21 encompasses subject matter that is unpatentable under
`
`35 U.S.C. § 103(a) in view of Merkel (Ex. 1007) and Lumsden (Ex. 1025).
`
`Ground #6. Claim 21 encompasses subject matter that is unpatentable under
`
`35 U.S.C. § 103(a) in view of Kotlarski ‘383 (Ex. 1004) and Lumsden (Ex. 1025).
`
`Grounds 1-6 are not redundant because Hoyler, Kotlarski ‘383, and Merkel
`
`each disclose different variants of wiper apparatus that are suitable for use with a
`
`wind deflector, and because Kotlarski ‘090 and Mathues disclose different variants
`
`of wiper blade apparatus comprising polymeric materials of different hardness
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`suited to their functions in the apparatus.
`
`VI. The ‘136 Patent
`
`The ‘136 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. The ‘588 patent acknowledges that prior art
`
`windshield wiper apparatus incorporated these three elements. Ex. 1001 at 1:38-66,
`
`(citing DE 1,973,368 (later issued as U.S. Patent No. 6,292,974 to Merkel et al.)).
`
`Figure 1 of the ‘136 patent, disclosing a flexible spring support element, a wiper
`
`strip, a wind deflector positioned above the support element, and a “recess” in a
`
`center section for a wiper arm connector, is reproduced below is reproduced below:
`
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`
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`The ‘136 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 2:1-12. As a solution to
`
`these problems, the ‘136 patent discloses and claims wiper apparatus comprising a
`
`hollow wind deflector strip, having the general configuration depicted at left, be-
`4
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`low:
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` ‘136 Patent Fig. 2
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` Lumsden Fig. 1
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`
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`But as shown at right above, prior to the priority date of the ‘136 patent, it
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`was known to provide a windshield wiper assembly with a hollow wind deflection
`
`strip and to mount such a deflection strip using claw-like structures as shown by
`
`Lumsden. It was also known to make claw-like extensions of a relatively harder
`
`material, such as plastic. See e.g., Kotlarski ‘090, 5:46-47.1 It was equally well-
`
`known to co-extrude windshield wiper components utilizing polymeric materials of
`
`different hardness to provide whatever degree of hardness was required for a given
`
`
`1 Because the translation of PCT Pub. No. WO00/34090 (Ex. 1018) does not in-
`
`clude reference numbers for line citations, and because it encompasses the same
`
`subject matter as U.S. Patent 6,523,218 (Ex. 1020), which issued from the same
`
`priority application, for ease of reference the column and line citations refer to U.S.
`
`Patent No. 6,523,218.
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`application. See generally Mathues (Ex. 1017). And Hoyler (Ex. 1006) taught use
`
`of elongated belt-shaped flexible resilient support elements as shown below.
`
`A.
`
`Prosecution and Issuance of the ‘136 Patent
`
`The file history of the ‘136 patent is attached hereto as Exhibit 1008. The
`
`application that led to the ‘136 patent, Application No. 13/553094, was filed as a
`
`continuation of Application No. 13/179132, which is a continuation of Application
`
`No. 12/364,092 (Ex. 1011) (which issued as U.S. Patent No. 8,099,823), which is a
`
`divisional of Application No. 11/760,394 (Ex. 1010) (which issued as U.S. Patent
`
`No. 7,484,264), which is a divisional of Application No. 10/312,279 (Ex. 1009)
`
`(which issued as U.S. Patent No. 7,228,588, or the “‘588 patent”).2 See Ex. 1001.
`
`The ‘136 patent claims the same priority status as the ‘588 patent, namely priority
`
`to a German application filed April 26, 2001. Id. Of claims 1-22 that were filed
`
`initially, and claim 23 which was added in amendment, claims 5 and 23 issued as
`
`claims 1 and 21, respectively. Ex. 1008 at 109.
`
`In a non-final Office Action dated December 6, 2012, the Examiner rejected
`
`all of the claims under 35 U.S.C. § 112 for indefiniteness. Id. at 64. Claims 1, 8,
`
`13-17, and 21 were rejected under 35 U.S.C. § 102(b) as being anticipated by U.S.
`
`2 Petitioner is filing separate petitions for IPR of claims 1, 12, and 14 of the ‘588
`
`patent, claims 1, 2, and 3 of the ‘264 patent, and claims 1, 6, 9, and 10 of the ‘823
`
`patent.
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`Patent No. 3,818,536 to Plisky (“Plisky”) (Ex. 1023). According to the Examiner,
`
`the embodiment of Plisky depicted in Figure 3, reproduced below disclosed all the
`
`limitations of these claims, including a deflection strip with two sides diverging
`
`from a common base point having claw extensions at their free ends that that
`
`wrapped around the outer edges of the support element and engaged with the lower
`
`and upper belt surfaces, as well as a substantial majority of strip above the upper
`
`belt surface and walls defining the side farthest from the base point of the strip.
`
`Ex. 1008at 65-66.
`
`
`
`
`
`Claims 9 and 22, directed to a deflection strip formed of flexible plastic,
`
`were rejected under 35 U.S.C. § 103(a) as obvious over Plisky in view of Cone
`
`(Ex. 1024). See Ex. 1008 at 67. According to the Examiner, “[i]t would have been
`
`obvious to one of skill in the art to make the supporting structure of Plisky of flex-
`
`ible plastics, as clearly suggested by Cone, to reduce rattle, reduce glare reflection
`
`and to make such of a non-corrosive material.” Id. Claims 6 and 19 (reciting a
`
`wall connecting the sides of the wind deflection strip) as well as claims 7 and-20
`
`(directed to a transition from harder to softer areas occurs near the wall) were indi-
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`cated as being allowable if rewritten in independent form. Id. at 69.
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`On May 3, 2013, the Applicant conducted an Examiner Interview proposing
`
`that the limitations of claim 5 distinguished over Plisky. Id. at 98. On May 6,
`
`2013, the Applicant submitted an amendment cancelling claim 1 and rewriting
`
`claim 5 (directed to a “binary component” wind deflection strip having claw-
`
`shaped extensions made of a harder material than an area near its base point) in in-
`
`dependent form. Id. at 79-88. The applicant argued that the limitations of original
`
`claim 5 distinguished over the cited prior art. Id. at 87. The Applicant also added
`
`new claim 23, asserting that it too distinguished over the cited prior art. Id.
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`On September 3, 2013, the Examiner issued a Notice of Allowance, and
`
`amended claims 5 and 23 issued as Claims 1 and 21 of the ‘136 Patent, respective-
`
`ly. Id. at 101-106, 109. The Examiner did not provide any reasons for allowance
`
`and did not appear to consider any of the reference combinations that Petitioner is
`
`presenting here.
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`B. Claim Construction
`
`For the purposes of inter partes review Claims 1 and 21 should be accorded
`
`their “broadest reasonable construction” in light of the specification and prosecu-
`
`tion history of the ‘136 patent. 37 C.F.R. § 42.100(b). Petitioner asserts that none
`
`of the claim terms in the ‘136 patent need to be construed for purposes of this peti-
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`tion 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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`claim term “support element” “should be given its plain and ordinary meaning in
`
`each of the asserted patents.” See Robert Bosch LLC’s Opening Claim Construc-
`
`tion Brief at 11-12, April 24, 2015 (Ex. 1013). Additionally, in infringement con-
`
`tentions served in the Delaware Action, the Patent Owner has asserted that the
`
`Claim 21 phrase, “a wall extending beneath and parallel to the lower belt surface of
`
`the support element,” purportedly encompasses a claw that engages with the bot-
`
`tom surface of a wiper spring rail. See Dabney Decl. Ex. 1027.
`
`While the claim construction proceedings in Delaware are not governed by
`
`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
`
`Owner’s claim construction briefing and infringement contentions in the Delaware
`
`Action.
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`VII. Overview of Prior Art
`
`A. U.K. Patent No. G.B. 2,106,775 (“Prohaska”; Exhibit 1003)
`
`Prohaska was published April 20, 1983, and is therefore prior art to the ‘136
`
`patent under 35 U.S.C. § 102(b). Prohaska is directed to wiper blades having spoil-
`
`ers that can be connected in a simple way, which counter the lifting force that oc-
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`curs at high vehicle speeds, thereby ensuring reliable contact between the wiper el-
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`ement and windscreen. Prohaska, 1:8-16, 1:38-42. Prohaska explains that a variety
`
`of spoilers have emerged in response to the problem of wind-lift, but these spoilers
`
`all had disadvantages; some could only be secured to the wiper strip in a relatively
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`complicated way, and others:
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`[I]ncluding a spoiler formed out of the wiper element might not be
`stable enough to act against the air stream in all cases, bcause [sic] of
`the rubber-elastic materials normally used for the production of wiper
`elements. Moreover, as far as technology is concerned, the production
`of such a wiper element might be very difficult and therefore expen-
`sive.
`Id. at 1:25-37.
`
`To avoid these concerns, Prohaska discloses a wiper blade having a wiper
`
`element made of a rubber-elastic material, stiffened by a flexible strip extending
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`over almost the entire length of the wiper element, and a spoiler formed or attached
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`on the flexible strip “[t]o maintain contact pressure in use.” Id. at 1:443-52, 2:56-
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`58. During prosecution of the ‘264 patent, the Examiner explained that the Prohas-
`
`ka deflection strip:
`
`[H]as two sides (21, 22) that diverge from a common base and pass on
`opposite sides of a cavity. The wind deflection strip has free ends with
`claw-like extensions that grip around outer edges of the wiper strip.
`The wind deflection strip also has a support means in the form of a
`wall (31) that connects the diverging sides spaced from the base point.
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`Ex. 1010 at 550.
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`Prohaska discloses several embodiments in which the spoiler’s claw-like ex-
`
`tensions grip edges of a flexible strip, id. at 2:71-75, but Prohaska also teaches that
`
`“it would also be possible to insert individual flexible strips in the head of the wip-
`
`er element . . . and to equip one of them with a spoiler.” Id. at 4:1-7. Prohaska
`
`notes that “[i]t is easily possible to retrofit a wiper blade by squeezing a spoiler
`
`against its flexible strip or clipping it on this flexible strip,” id. at 1:68-70, and
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`teaches elongations formed as individual claws that extend over the length of the
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`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-
`
`ments, this embodiment is formed with two downward elongations that engage in
`
`the longitudinal grooves of the wiper strip.
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`Prohaska Fig. 3
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`B. U.S. Patent No. 3,192,551 (“Appel”; Exhibit 1005)
`
`Appel issued on July 6, 1965 and is therefore prior art to the ‘136 patent un-
`
`der 35 U.S.C. § 102(b). Appel was not before the Examiner during prosecution of
`
`the ‘136 patent.
`
`Appel discloses a wiper blade assembly comprising “a spring backbone ele-
`
`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 (“Hoyler”; Exhibit 1006)
`
`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 ‘136 patent under 35 U.S.C. § 102(b). Hoyler
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`was not before the Examiner during prosecution of the ‘264 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 1
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`of Hoyler is reproduced below.
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`66941752_1
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`13
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`
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` Hoyler Fig. 1
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`D.
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`PCT Pub. No. WO99/02383 (“Kotlarski ‘383”; Exhibit 1004)
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`Kotlarski ‘383 was published on January 21, 1999, and is therefore prior art
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`to the ‘136 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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`The two spring rails are spaced apart from one another, id. at 3:38-40,3 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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`3 Because the translation of the PCT Pub. No. WO99/02383 (Ex. 1004) does not
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`include reference numbers for line citations, and because it encompasses the same
`
`subject matter as U.S. Patent 6,279,191 (Ex. 1021), which issued from the PCT, for
`
`ease of reference the column and line citations refer to U.S. Patent No. 6,279,191.
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`66941752_1
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`14
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`
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`spring rails in an exposed portion,” using “clawlike protrusions.” Id. at 4:20-27. As
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`seen in Figure 2, above, the wind deflection strip has a substantial majority of its
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`height above the support element.
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`E.
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`PCT Publication No. WO99/12784 (“Merkel”; Exhibit 1007)
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`Merkel was published March 18, 1999 and is therefore prior art to the ‘136
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`patent under 35 U.S.C. § 102(b). Merkel was not before the Examiner during the
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`prosecution of the ‘264 patent. Merkel Figures 1 and 4 are reproduced below:
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`
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`Merkel describes the above wiper blade assembly as comprising a wiper
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`strip (14),4 a support element (12), and a wind deflector (54) which has a substan-
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`tial majority of its height above the support element, as seen in Figures 1 and 4.
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`Merkel, 3:24-27, 4:8-17. Located in a recess (62) of the wind deflector is a con-
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`necting device (16) which has pairs of legs (64, 66) which fit over and under the
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`
`4 Because the translation of the PCT Pub. No. WO99/12784 (Ex. 1007) does not
`
`include reference numbers for line citations, and because it encompasses the same
`
`subject matter as U.S. Patent 6,295,690 (Ex. 1022), which issued from the PCT, for
`
`ease of reference the column and line citations refer to U.S. Patent No. 6,295,690.
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`66941752_1
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`15
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`
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`spring rails (30, 32). Id. at 4:27-36. Merkel teaches that embodying the connection
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`device as a retaining means as described results in mounting and assembly ad-
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`vantages, and specifically because “the longitudinal edges of the spring rails that
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`protrude from the longitudinal grooves of the wiper strip offer an excellent capabil-
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`ity of positioning and fastening the connection device.” Id. at 2:28-32, 2:54-56.
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`F.
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`PCT Pub. No. WO00/34090 (“Kotlarski ‘090”; Ex. 1018)
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`Kotlarski ‘090 was published June 15, 2000. Patent Owner has not identi-
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`fied any date of invention earlier than April 26, 2001. Accordingly, Kotlarski ‘090
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`is prior art to the ‘136 patent under 35 U.S.C. § 102(a).
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`Figure 5 of Kotlarski ‘090 is reproduced below.
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`
`
`
`
`Kotlarski ‘090 discloses a wiper blade having a spring-elastic support ele-
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`ment, a spoiler integrally joined with, and included as an extension of, a rubber-
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`elastic wiper strip, and a plurality of retainers. See Kotlarski ‘090, 3:1-15, 3:57-60,
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`
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`4:62-64.5 The retainers “are provided with opposed securing claws 58 (FIG. 6),
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`each of which clasps one of the two longitudinal rails 32, transversely to their
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`length, on their longitudinal edges 33 remote from one another.” Id. at 4:43-48. In
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`a preferred embodiment, the retainers are made of plastic. Id. at 5:45-47.
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`G. U.S. Patent No. 3,121,133 (“Mathues”; Exhibit 1017)
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`Mathues was published February 11, 1964, and is therefore prior art to the
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`‘136 patent under 35 U.S.C. § 102(b). Mathues is directed to “a method of making
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`a squeegee which includes a plurality of strata of different hardness elastomers
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`whereby the completed squeegee includes an integral retention portion together
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`with a flexible wiping portion.” Mathues, 1:12-16. During prosecution, the Exam-
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`iner explained:
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`The patent to Mathues discloses a wiper blade wherein the retention
`portion (22) of the blade (20) is harder than the remainder. Mathues
`thus teaches making the retention portion of an article harder than the
`remainder. Such helps enhance the security of the joint. It would have
`been obvious to one of skill in the art to make the retention portion of
`the deflection strip harder than the remainder, as taught by Mathues,
`
`
`5 Because the translation of the PCT Pub. No. WO00/34090 (Ex. 1018) does not
`
`include reference numbers for line citations, and because it encompasses the same
`
`subject matter as U.S. Patent 6,523,218, 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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`66941752_1
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`17
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`
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`to enhance the security of the connection between the strip and the
`support element.
`Ex. 1008 at 140.
`
`H. U.K. Patent 2,346,318 to Lumsden (“Lumsden”; Exhibit 1025)
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`Lumsden was published August 9, 2000. Patent Owner has not identified
`
`any date of invention earlier than April 26, 2001. Accordingly, Lumsden is prior
`
`art to the ‘136 patent under 35 U.S.C. § 102(a).
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`Lumsden discloses a wiper blade assembly comprising a wiper blade carrier
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`(6) having and airfoil surface (20) and two claw-like extensions (24, 26) which
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`grip the surfaces of first and second reinforcing elements (8, 10) as shown below:
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`
`
`
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`The inwardly directed flanges (24, 26) run along the length of the carrier,
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`which is of open section. In the illustrated embodiment, the carrier element surface
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`(20) is shaped to form an aerodynamic spoiler which may act to urge the wiper
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`blade into contact with a windshield or to act as a slipstream deflector to east the
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`movement of the wiper blade during its travel. Ex. 1025 at 3. The first and second
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`reinforcement elements (8, 10) are conveniently made of spring steel. Id.
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`66941752_1
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`18
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`
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`The wiper blade carrier, in use, has a reduced wind noise as compared with
`
`prior art carriers. Further, since the carrier can be made of smaller size, less motor
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`power is needed to drive the wiper. The small size also lends an aesthetic appeal to
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`the wiper blade carrier. Id. at 3-4.
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`I.
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`German Pub. No. DE10000373 (“Eckhardt”; Exhibit 1028)
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`Eckhardt was filed before the priority date of the ‘136 Patent; it describes the
`
`same problem as the ‘136 patent and discloses the same solution, i.e., a hollow
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`wind deflection strip. Eckhardt Figure 3 is reproduced below:
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`
`
`
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`Eckhardt, cols. 3 – 4 (Ex. 1028).
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`Eckhardt is not prior art under 35 U.S.C. § 102; however, it is well-settled
`
`that: “Independently made, simultaneous inventions, made within a comparatively
`
`short space of time, are persuasive evidence that the claimed apparatus was the
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`product only of ordinary mechanical or engineering skill.” Geo M. Martin Co. v.
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`Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010) (internal quo-
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`tation marks omitted).
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`
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`Eckhardt “is strong evidence of what constitutes the level of ordinary skill in
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`the art,” id. at 1306, and that a hollow wind deflection strip was an obvious solu-
`
`tion to the weight and stiffness problems that the applicants for the ‘136 patent ad-
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`dressed—and as Prohaska and Lumsden had already solved.
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`VIII. Detailed Explanation of Grounds for Unpatentability
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`Petitioner respectfully submits that this Petition demonstrates a reasonable
`
`likelihood that the Petitioner will prevail in demonstrating the unpatentability of
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`each of Claims 1 and 21 of the ‘136 patent. The references cited herein provide
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`technical disclosures that the Office did not have or did not fully consider.
`
`A. Legal Standards
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`1. Obviousness
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`In an obviousness analysis, the Court “must ask whether the improvement is
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`more than the predictable use of prior art elements according to their established
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`functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). If the answer
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`to this threshold question is “no,” then the claimed subject matter is unpatentable
`
`under § 103(a) without more. See id. (“when a patent ‘simply arrange[s] old ele-
`
`ments with each performing the same function it had been known to perform’ and
`
`yields no more than one would expect from such an arrangement, the combination
`
`is obvious.’” (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). This
`
`rule applies with special force where claimed subject matter involves “the simple
`
`66941752_1
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`20
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`
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`substitution of one known element for another or the mere application of a known
`
`technique to a piece of prior art ready for the improvement.” Id.
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`“One of the ways in which a patent’s subject matter can be proved obvious
`
`is by noting that there existed at the time of invention a known problem for which
`
`there was an obvious solution encompassed by the patent’s claims.” Id. at 419-20.
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`In this case, among the “known problem[s]” was that heavier moving components
`
`(1) caused a higher level of stress on drive elements, (2) required more powerful
`
`drive elements for fast wiping speeds, and (3) were costly due to the amount of
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`material needed to produce such components. “[A]n implicit motivation [to com-
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`bine prior art references] exists . . . when the ‘improvement’ is technology-
`
`independent and the combination of references results in a pr