UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. Costco Wholesale Corporation Petitioner

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1 Paper No. Filed: October 9, 2015 Filed on behalf of: Costco Wholesale Corporation By: James W. Dabney Richard M. Koehl James R. Klaiber Hughes Hubbard & Reed LLP One Battery Park Plaza New York, NY Tel. (212) Fax (212) 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 7,484,264 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 7,484,264 UNDER 35 U.S.C AND 37 C.F.R. 42

2 TABLE OF CONTENTS I. INTRODUCTION... 1 II. MANDATORY NOTICES UNDER 37 C.F.R III. PAYMENT OF FEES UNDER 37 C.F.R (A) AND 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 (A)(1) AND (B)(1)-(2)... 2 A. Claims for Which Review is Requested - 37 C.F.R (b)(1)... 2 B. Statutory Grounds of Challenge - 37 C.F.R (b)(2)... 3 VI. THE 264 PATENT... 4 A. Prosecution and Issuance of the 264 Patent... 5 B. Claim Construction... 9 VII. OVERVIEW OF PRIOR ART A. U.K. Patent No. G.B. 2,106,775 ( Prohaska ; Exhibit 1003) B. U.S. Patent No. 3,192,551 (Exhibit 1004) C. German Patent No. DE 1,028,896 (Exhibit 1005) D. PCT Pub. No. WO99/02383 ( Kotlarski 383 ; Exhibit 1006) E. PCT Publication No. WO99/12784 ( Merkel ; Exhibit 1016) F. PCT Pub. No. WO00/34090 ( Kotlarski 090 ; Ex. 1008) G. U.S. Patent No. 3,121,133 ( Mathues ; Exhibit 1013) VIII. DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY A. Legal Standards Anticipation Obviousness i

3 3. Level of Skill in the Art A. Claim 1 Is Unpatentable B. Claim 2 Is Unpatentable C. Claim 3 Is Unpatentable IX. CONCLUSION ii

4 LIST OF EXHIBITS EXHIBIT DESCRIPTION 1001 U.S. Patent No. 7,484, October 10, 2014 Proof of Service filed by Patent Owner in Civil Action No LPS (consolidated) 1003 U.K. Patent No. GB 2,106,775 to Prohaska et al. Prohaska 1004 U.S. Patent No. 3,192,551 to Appel Appel 1005 German Patent No. DE to Hoyler Hoyler 1006 PCT Pub. No. WO99/02383 to Kotlarski et al. (also published as U.S. Patent No. 6,279,191) Kotlarski U.S. Patent No. 6,279,191 to Kotlarski et al PCT Publication No. WO00/34090 to Kotlarski (also Kotlarski 090 published as U.S. Patent No. 6,523,218) 1009 U.S. Patent No. 6,523, File History of U.S. Patent No. 7,484,264 (Application No. 11/760394) 1011 File History of U.S. Patent No. 7,228,588 (Application No. 10/312,279) 1012 U.S. Patent No. 3,088,155 to Smithers Smithers 1013 U.S. Patent No. 3,121,133 to Mathues Matheus 1014 Joint Claim Construction Chart 1015 Robert Bosch LLC s Opening Claim Construction Brief, April 24, PCT Pub. No. WO99/12784 to Merkel et al. (also published as U.S. Patent No. 6,295,690) Merkel 1017 U.S. Patent No. 6,295,690 iii

5 EXHIBIT DESCRIPTION 1018 Declaration of Dr. Gregory Davis, sworn to October 9, Davis Decl Declaration of Dr. Daniel H. Kruger, sworn to October Declaration of Dr. Eric Maslen, sworn to April 23, 2015 Maslen Decl. and accompanying Technology Tutorial 1021 German Pub. No. DE to Eckhardt et al. Eckhardt 1022 PCT Publication No. WO01/49537 to Egner-Walter et Egner-Walter al PCT Publication No. WO01/92073 to De Block et al. De Block 1024 Animation of Appel-Prohaska: Kruger Decl. Appendix A 1025 Animation of Hoyler-Prohaska: Kruger Decl. Appendix B 1026 Illustrations of Claim 1: Kruger Decl. Appendix C 1027 Illustrations of Claim 2: Kruger Decl. Appendix D 1028 Illustrations of Claim 3: Kruger Decl. Appendix E iv

6 I. Introduction Costco Wholesale Corporation ( Petitioner or Costco ) requests inter partes review (IPR) of Claims 1, 2, and 3 of U.S. Patent No. 7,484,264 ( the 264 patent ) (Ex. 1001). II. Mandatory Notices Under 37 C.F.R Real Party-in-Interest: Costco is the real party-in-interest seeking IPR. Related Matters: The 264 patent and 17 other patents are asserted in Robert Bosch LLC v. Alberee Products Inc. et al., Civil Action No 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, 8,099,823, and 8,544,136, which are related to the 264 patent. The 264 patent was previously asserted in Robert Bosch LLC v. SHB Int l, Inc. et al., No. 2:10cv1929 (D. Nev.), Robert Bosch LLC v. Zhejiang Wandeyuan Vehicle Fittings, Co., No. 2:10cv1931 (D. Nev.), and Robert Bosch LLC v. Ningbo Xinhai Automobile Wiper Blade Manufactory Co., No. 2:10cv1927 (D. Nev.). Costco 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, 8,099,823, and 8,544,136, which are also asserted in the District of Delaware matter. Petitioner is not aware of any other current judicial or administrative matters that would affect, or be affected by, a decision in this proceeding. 1

7 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 Tel. (212) Fax (212) richard.koehl@hugheshubbard.com m Back-Up Counsel James R. Klaiber Reg. No. 41,902 Hughes Hubbard & Reed LLP One Battery Park Plaza New York, NY Tel. (212) Fax (212) james.klaiber@hugheshubbard.co III. Payment of Fees Under 37 C.F.R (a) and The required fees are submitted herewith. If any additional fees are due at any time during this proceeding, the Office may charge such fees to Deposit Account No IV. Grounds for Standing Pursuant to 37 C.F.R (a), Petitioner certifies that the 264 patent is available for inter partes review and that Petitioner is not barred or estopped from requesting inter partes review of the 264 patent. This petition is being filed less than one year after Petitioner was served with a complaint alleging infringement of the 264 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 (a)(1) and (b)(1)-(2) A. Claims for Which Review is Requested - 37 C.F.R (b)(1) Petitioner seeks cancellation of Claims 1, 2, and 3. 2

8 B. Statutory Grounds of Challenge - 37 C.F.R (b)(2) Ground #1. Claims 1 and 2 encompass subject matter that is unpatentable under 35 U.S.C. 102(b) in view of Prohaska (Ex. 1003). Ground #2. Claims 1 and 2 encompass subject matter that is unpatentable under 35 U.S.C. 103(a)in view of Prohaska (Ex. 1003) and Appel (Ex. 1004). Ground #3. Claims 1 and 2 encompass subject matter that is unpatentable under 35 U.S.C. 103(a) in view of Prohaska (Ex. 1003) and Hoyler (Ex. 1005). Ground # 4. Claims 1 and 2 encompass subject matter that is unpatentable under 35 U.S.C. 103(a) in view of Kotlarski 383 (Ex. 1006) and Prohaska (EX. 1003). Ground #5. Claims 1 and 2 encompass subject matter that is unpatentable under 35 U.S.C. 103(a) in view of Merkel (Ex. 1016) and Prohaska (Ex. 1003). Grounds #6 - #9. Claim 3 encompasses subject matter that is unpatentable under 35 U.S.C. 103(a) on any of Grounds #2-5 in further view of Kotlarski 090 (Ex. 1008). Ground #10 - #13. Claim 3 encompasses subject matter that is unpatentable under 35 U.S.C. 103(a) on any of Grounds #2-5 in further view of Mathues (Ex. 1013). Ground #1 is not redundant of Grounds 2-5 because anticipation under 35 U.S.C. 102 is distinct from obviousness under 35 U.S.C. 103(a). Grounds 2-5 3

9 are not redundant because Appel, Hoyler, Kotlarski 383, and Merkel each disclose different variants of wiper apparatus that are suitable for use with a wind deflector. Grounds 6-9 and are not redundant because Kotlarski 090 and Mathues disclose different variants of wiper blade apparatus comprising polymeric materials of different hardness suited to their functions in the apparatus. VI. The 264 Patent The 264 patent discloses and claims a windshield wiper assembly that comprises three basic elements, namely: (i) a flexible spring support element, (ii) a wiper strip, and (iii) a wind deflector. Figure 1 of the 264 patent is reproduced below: The 264 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 expensive design of pendulum gear attached to it. Ex at 1:46 2:3. As a solution to these problems, the 264 patent discloses and claims wiper apparatus comprising a hollow wind deflector strip, having the general configuration depicted at left, below: 264 Patent Fig. 2 Prohaska Fig. 3 4

10 But as shown at right above, long prior to the priority date of the 264 patent, it 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 Prohaska. It was also known to make claw-like extensions of a relatively harder material, such as plastic. See e.g., Kotlarski 090, 5: It was equally wellknown to co-extrude windshield wiper components utilizing polymeric materials of different hardness to provide whatever degree of hardness was required for a given application. See generally Mathues. A. Prosecution and Issuance of the 264 Patent The file history of the 264 patent is attached hereto as Exhibit The application that led to the 264 patent, Application No. 11/760394, was filed as a 1 Because the translation of the PCT Publication (Ex. 1008) does not include reference numbers for line citations, and because it encompasses the same subject matter as U.S. Patent 6,523,218 (Ex. 1009), which issued from the PCT, for ease of reference the column:line citations refer to U.S. Patent No. 6,523,218 (Ex ) 5

11 divisional of Application No. 10/ which issued as U.S. Patent No. 7,228,588 ( the 588 patent ). Ex at The application claims priority to a German application filed April 26, Id. at 11. Of claims 1-20 that were filed, claims 1, 5, and 6 issued as claims 1, 2, and 3 respectively. Id. at 582. In a non-final Office Action dated January 9, 2008, the Examiner rejected all of the claims under 35 U.S.C. 112 as being indefinite for a lack of antecedent basis. Id. at 138. Claims 1-3, 5, 18, and 19 were also rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. 3,088,155 to Smithers (Ex. 1012). See Ex at 138. Smithers disclosed a wiper blade having an elongated belt shaped, twin rail, support element, with a wiper strip on a lower belt surface thereof and outer edges gripped by claw-like extensions. Id. Smithers also taught a wind deflection strip having two sides that diverged from a common point. Id. Claims 6-8 were rejected under 35 U.S.C. 103(a) as obvious over Smithers in view of Mathues (Ex. 1013). See id. According to the Examiner, Mathues disclosed claw-like extensions being of a harder material than an area closer to the base point, which Smithers lacked: The patent to Mathues discloses a wiper blade wherein the retention portion (22) of the blade (20) is harder than the remainder. 2 Petitioner has filed a separate petition for IPR of claims 1, 12, and 14 of the 588 patent. 6

12 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, to enhance the security of the connection between the strip and the support element. Ex at 140. Applicant filed an Amendment and Request for Reconsideration on July 9, See id. at 156, 159, 160. Applicant amended claim 1 to address the antecedent basis rejection and to include all of the limitations of claims 2-4, such that amended claim 1 is the equivalent of claim 4 rewritten in dependent form. Id. at 159. The added limitations included a support means comprising a wall extending in the longitudinal direction of the wind deflection strip along its entire length. Id. at 157. This amendment i.e., forming a support means as a wall imported a hollow limitation into the spoiler of claim 1 and its dependent claims. See Davis Decl. (Ex. 1018) 55. The remaining claims either depended from the newly amended claim 1 (claims 5-8, 18 and 19) or were cancelled. The Examiner issued a Final Rejection on October 17, Claims 1, 5 and 19 were rejected under 35 U.S.C. 102(a) over PCT Publication No. WO01/49537 to Egner-Walter et al. ( Egner-Walter ) (Ex. 1022). See Ex at 548. Egner- Walter disclosed a wiper blade having an elongated belt-shaped, flexible support element, including two flexible rails which extended from opposing notches in a 7

13 rubber-elastic wiper strip, the wiper strip being disposed on a lower belt surface of the support element. Id. at 549. A wind deflection strip, located on an upper belt surface of the support element, had a constant cross-section, two diverging sides, free-ends with claw-like extensions that gripped outer edges of the support element, and a support means in the form of a wall. Id. Claims 1, 5, 18 and 19 were also rejected as obvious over De Block (Ex. 1023). Id. at 550. According to the Examiner, De Block disclosed all of the same elements as Egner-Walter, except a wall (i.e., support means) extending between two diverging sides. See id. Prohaska, however, disclosed a wind deflection strip with a support means in the form of wall (31) that connects the diverging sides spaced from the base point. Id. The Examiner concluded that [i]t would have been obvious to one of skill in the art to provide the wind deflection strip of De Block with a support means in the form of a connecting wall between the diverging sides, as clearly suggested by Prohaska, to enhance the structural integrity of the deflection strip. Id. The Examiner also rejected claims 6-8 over Egner-Walter in view of Mathues, and over De Block in view of Prohaska, and in further view of Mathues. Id. at 551. Egner-Walter and the De Block/Prohaska combination each disclosed all recited elements except a harder material for the claw-like extensions. Id. Thus, in making these rejections, the Examiner again relied on the same Mathues-based ra- 8

14 tionale as in the first Office Action. Id. Following the Final Rejection, an interview was held on November 19, Id. at 564. The Examiner s record indicates that the interview discussion was directed to perfecting priority. Id. The Examiner decided that Applicant s submission of a certified translation of the German priority patent was sufficient to afford it an April 26, 2001 priority date. Id. On November 25, 2008, Applicant filed a Request for Reconsideration without amendment, requesting withdrawal of the rejections because neither Egner-Walter nor De Block qualified as prior art under 35 U.S.C See id. at On December 18, 2008, the Examiner issued a Notice of Allowance. Id. at 573. Applicant never substantively addressed the rejections over Prohaska or Mathues, and the Examiner appears never to have considered any of the obviousness combinations presented by Petitioner here. B. Claim Construction For the purposes of inter partes review Claims 1, 2, and 3 should be accorded their broadest reasonable construction in light of the specification and prosecution history of the 264 patent. 37 C.F.R (b). Petitioner asserts that none of the claim terms in the 264 patent need to be construed for purposes of this petition because under any reasonable construction the claims are invalid. In the Delaware Action cited above, the Patent Owner has asserted that the 9

15 term at least one support means (58, 144) in Claim 1 should be construed under 35 U.S.C. 112(6). See Joint Claim Construction Chart, Exhibit 1014 at 4. According to Patent Owner, the function of at least one support means (58, 144) is to stabilize the sides of the wind deflection strip and this function corresponds to a wall connected to both sides of the wind deflection strip, or the channel wall facing the upper belt surface of the support element, and their equivalents. Id. Patent Owner has also asserted in the Delaware Action that the term support element should be given its plain and ordinary meaning in each of the asserted patents, including the 264 patent. See Robert Bosch LLC s Opening Claim Construction Brief at 11-12, April 24, 2015 (Ex. 1015). While the claim construction proceedings in Delaware are not governed by the broadest reasonable construction standard, and Petitioner does not agree that Patent Owner s construction represents the broadest reasonable construction of this claim term in the abstract, for purposes of this proceeding the Patent Owner should not be heard to assert a narrower construction than was set forth in the Patent Owner s claim construction briefing in the Delaware Action. VII. Overview of Prior Art A. U.K. Patent No. G.B. 2,106,775 ( Prohaska ; Exhibit 1003) Prohaska was published on April 20, 1983, and is therefore prior art to the 264 patent under 35 U.S.C. 102(b). Prohaska is directed to wiper blades having 10

16 spoilers that can be connected in a simple way, which counter the lifting force that occurs at high vehicle speeds, thereby ensuring reliable contact between the wiper element and windscreen. Prohaska (Ex. 1003), 1:8-16, 1: 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 complicated way, and others: [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 expensive. Id. at 1: 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 over almost the entire length of the wiper element, and a spoiler formed or attached on the flexible strip [t]o maintain contact pressure in use. Id. at 1:443-52, 2: During prosecution, the Examiner explained that the Prohaska 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 11

17 base point. Ex at 550. In several examples, the spoiler forms an integral part with the flexible strip, id. at 2:71-75, but importantly, Prohaska also teaches that it would also be possible to insert individual flexible strips in the head of the wiper 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 teaches elongations formed as individual claws that extend over the length of the flexible strip, id. at 1: The embodiment reflected in Figure 3, reproduced below, includes a flexible strip with its back developed as a spoiler that is hollow and has an approximately triangular cross-section. Id. at 2:125 3:6. Like several of the other embodiments, this embodiment is formed with two downward elongations that engage in the longitudinal grooves of the wiper strip. Prohaska Fig. 3 12

18 B. U.S. Patent No. 3,192,551 ( Appel ; Exhibit 1004) U.S. Patent No. 3,192,551 to Appel ( Appel ) issued on July 6, 1965 and is therefore prior art to the 264 patent under 35 U.S.C. 102(b). Appel was not before the Examiner during prosecution of the 264 patent. Appel discloses a wiper blade assembly comprising a spring backbone element 36 which may be adapted to carry a conventional rubber wiping blade 37, by providing a slot 38 extending almost throughout the length and terminating just short of the end 39 for accommodating a flanged rib 40 of the rubber blade projecting therethrough. Id. at 1:23-25, 3: These features are illustrated in Figures 1, 5 and 6 of Appel, reproduced below. Appel Fig. 1 Appel Fig. 6 Appel Fig. 5 13

19 C. German Patent No. DE 1,028,896 ( Hoyler ; Exhibit 1005) German Patent No. 1,028,896 to Hoyler ( Hoyler ) issued on April 24, 1958, and is therefore prior art to the 264 patent under 35 U.S.C. 102(b). Hoyler was not before the Examiner during prosecution of the 264 patent. Hoyler discloses a wiper blade assembly comprising two longitudinal springs positioned in lateral slots of a wiper strip. Id. at cols. 1, 2. As compared with conventional bracket-style wiper assemblies, Hoyler teaches, the flat spring design reduces the weight of the wiper blade moving parts, thus lowering the stress upon the drive elements. Id. at col. 1. The lower weight results in less wear and tear after an identical running time and facilitates faster wiping speeds. Id. Figure 1 of Hoyler is reproduced below. Hoyler Fig. 1 14

20 D. PCT Pub. No. WO99/02383 ( Kotlarski 383 ; Exhibit 1006) Kotlarski 383 was published on January 21, 1999, and is therefore prior art to the 264 patent under 35 U.S.C. 102(b). Kotlarski 383 discloses a wiper blade assembly comprising two spring rails (30, 32) positioned in longitudinal grooves of a wiper strip and between which a wind deflector strip (200) is mounted. Figures 2 and 12 of Kotlarski 383 are reproduced below: The two spring rails are spaced apart from one another (id. at 3:38-40) 3 and protrude out of the grooves in the wiper strip such that their longitudinal edges 3 Because the translation of the PCT Publication (Ex. 1006) does not include reference numbers for line citations, and because it encompasses the same subject matter as U.S. Patent 6,279,191 (Ex. 1007), which issued from the PCT, for ease of reference the column and line citations refer to U.S. Patent No. 6,279,

21 point away from one another, id. at 3: Kotlarski 383 further discloses claws 70 which form fastening means for retaining the connection device 16 on support element 12. Id. at 4: The holders grip the outer edges... of the spring rails in an exposed portion, using clawlike protrusions. Id. at 4: E. PCT Publication No. WO99/12784 ( Merkel ; Exhibit 1016) Merkel was published March 18, 1999 and is therefore prior art to the 264 patent under 35 U.S.C. 102(b). Merkel was not before the Examiner during the prosecution of the 264 patent. Merkel Figures 1 and 4 are reproduced belowp Merkel describes the above wiper blade assembly as comprising a wiper strip (14), 4 two spring rails (30, 32) positioned in grooves of the wiper strip, and a wind deflector (54) having a recess (62) for accommodating a wiper arm connecting device (16). The wiper arm connecting device has pairs of legs (64, 66) which 4 Because the translation of the PCT Publication (Ex. 1016) does not include reference numbers for line citations, and because it encompasses the same subject matter as U.S. Patent 6,295,690 (Ex. 1017), which issued from the PCT, for ease of reference the column and line citations refer to U.S. Patent No. 6,295,

22 fit over and under the spring rails (30, 32). Merkel teaches that [a]dvantages from a manufacturing standpoint can be obtained if the wiper strip has a constant cross section substantially over its entire length. Id. at 2:15-21, 2: Further, advantages of mounting and assembly are obtained if the connection device is embodied as a retaining means, and specifically, that the longitudinal edges of the spring rails that protrude from the longitudinal grooves of the wiper strip offer an excellent capability of positioning and fastening the connection device. Id. at 2:28-32, 2: F. PCT Pub. No. WO00/34090 ( Kotlarski 090 ; Ex. 1008) Kotlarski 090 was published June 15, Patent owner has not asserted that the 264 patent has an earlier date of invention than its earliest possible priority date. See Ex at 11. Accordingly, Kotkarski 090 is prior art to the 264 patent under 35 U.S.C. 102(a). Figure 5 of Kotlarski 090 is reproduced below. Kotlarski 090 discloses a wiper blade having a spring-elastic support element with two rails that sit in two longitudinal grooves of a rubber-elastic wiper strip, a spoiler integrally joined with, and included as an extension of, the wiper 17

23 strip, and a plurality of retainers. See Kotlarski 090, 3:1-15, 3:57-60, 4: The retainers are provided with opposed securing claws 58 (FIG. 6), each of which clasps one of the two longitudinal rails 32, transversely to their length, on their longitudinal edges 33 remote from one another. Id. at 4: In a preferred embodiment, the retainers are made of plastic. Id. at 5: G. U.S. Patent No. 3,121,133 ( Mathues ; Exhibit 1013) Mathues was published February 11, 1964, and is therefore prior art to the 264 patent under 35 U.S.C. 102(b). Mathues is directed to a method of making a squeegee which includes a plurality of strata of different hardness elastomers whereby the completed squeegee includes an integral retention portion together with a flexible wiping portion. Mathues, 1: During prosecution, the Examiner explained: 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, to enhance the security of the connection between the strip and the support element. Ex at See footnote 1 supra. 18

24 VIII. Detailed Explanation of Grounds for Unpatentability Petitioner respectfully submits that this Petition demonstrates a reasonable likelihood that the Petitioner will prevail in demonstrating the unpatentability of each of Claims 1, 2, and 3 of the 264 patent. The references cited herein provide technical disclosures that the Office did not have or did not fully consider. A. Legal Standards 1. Anticipation A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Bros. Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.Cir.1987). When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art. Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001). Furthermore, a prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference. Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). 19

25 2. Obviousness In an obviousness analysis, the Court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR Int l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). If the answer 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 elements 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 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. 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 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 material needed to produce such components. [A]n implicit motivation [to combine prior art references] exists... when the improvement is technology- 20

26 independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper,... faster, lighter,... more durable, or more efficient. Dystar Textilefarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). 3. Level of Skill in the Art As of not later than April 26, 2001, the level of skill level in the art of the 264 patent included at least the ability to make the subject matter disclosed in the following patents and printed publications relating to wiper blades for motor vehicles: U.K. Patent Application No. G.B. 2,106,775 to Prohaska et al. ( Prohaska ) (Ex. 1003). U.S. Patent No. 3,192,551 to Appel ( Appel ) (Ex. 1004). German Patent No. D.E. 1,028,896 to Hoyler ( Hoyler ) (Ex. 1005). PCT Publication No. WO99/02383 to Kotlarski et al. ( Kotlarski 383 ) (Ex. 1006). PCT Publication No. WO99/12784 to Merkel et al. ( Merkel ) (Ex. 1016). U.S. Patent No. 3,121,133 to Mathues ( Mathues ) (Ex. 1013). PCT Publication No. WO00/34090 to Kotlarski ( Kotlarski 090 ) (Ex. 1008). As of not later than April 26, 2001, the level of skill level in the art also in- 21

27 cluded the ability to make predictable use of the materials and components described above according to their established functions. A person of ordinary skill in the art would have the education and experience in mechanical engineering to have knowledge of the information deployed in these patents and printed publications. A. Claim 1 Is Unpatentable Petitioner asserts alternatively that Claim 1 is anticipated in view of Prohaska (Ground #1) and is obvious over Prohaska in view of Appel (Ground #2). The following chart shows where each feature of Claim 1 is disclosed. Appendices to the Kruger Declaration illustrate the same. See Kruger Decl. Appendices (Exs (illustrations) and 1024 (animation)). CLAIM 1 PROHASKA APPEL 1. A wiper blade (10) for an automobile windshield (14), This invention concerns a wiper blade for windscreen cleaning installations on vehicles, especially on motor vehicles. Prohaska, 1:5-7. with an elongated belt-shaped, flexible resilient support element (12) having a longitudinal axis, on the lower belt surface (22) of which that faces the windshield is located Prohaska discloses an elongated belt-shaped flexible spring support element, in the form of flexible strip 30, having a longitudinal axis. See Prohaska, Figs. 1 & 3, 1:43-52, 2: Prohaska discloses, on a lower belt surface of its flexible strip 30, a wiper element 10, made of Appel discloses an elongated belt-shaped flexible spring support element as spring 20, having a longitudinal axis. See Appel, Fig. 1, 2: Appel discloses, on a lower belt surface of spring 20, a rubber wiping blade 37 sitting 22

28 CLAIM 1 PROHASKA APPEL rubber-elastic material, sitting against the windshield and extending parallel to the longitudinal axis. See Prohaska, Fig. 3, 1:43-61, 2: an elastic rubber wiper strip 24 sitting against the windshield that extends parallel to the longitudinal axis, and on the upper belt surface (16) of which a wind deflection strip (42 or 112) is located that has an incident surface (54 or 140) facing the 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, that the incident surface (54 or 140) is located at the exteri- Prohaska discloses, on the upper belt surface of its flexible strip 30, a wind deflection strip (spoiler 20) having an incident wind deflector surface exposed to the air stream. See Prohaska, Fig. 3, 1:51-52, 2: Prohaska discloses a wind deflection strip (spoiler 20) extending in the longitudinal direction of its support element (flexible strip 30). See Prohaska, 1:97-100, 2:56-58, 2: Prohaska discloses a wind deflection strip (spoiler 20) having two sides in the form of wind deflector surfaces 21 and 22 that diverge from a common base point as seen in cross section, for example, in Figure 3. See Prohaska, 2:125 3: 5. Prohaska discloses an incident wind deflector surface 21 located at the against windshield 43 and extending parallel to the longitudinal axis. See Appel, Figs. 5 & 6, 3:63-69, 3:73 4:3, 4:

29 CLAIM 1 PROHASKA APPEL or of one side (50 or 138) exterior of one side of its spoiler 20. See Prohaska, Fig. 3, 2: and that the profile of the cross section of the wind deflection strip is the same along its entire length, wherein the support element has outer edges, and wherein the sides of the wind deflection strip have respective free ends having thereon respective claw-like extensions that fittingly grip around the outer edges of the support element at least in sections, so that the wind deflection strip can be snapped onto the outer edges or slid onto the outer edges in a longitudinal direction, Prohaska discloses a wind deflection strip (spoiler 20) having a cross-sectional profile that is the same along its entire length. See Prohaska 1:97-100, 2: Prohaska discloses individual flexible strips as the support element, which may be inserted in the head of a wiper element, and onto which a spoiler may be clipped. See Prohaska, 1:68-70, 4:3-7. Prohaska discloses spoiler 20 as its wind deflection strip, which has sides 21 and 22 having free ends that are each provided with claw-like extensions, in the form of elongations 32 and 33, a spoiler 20 [that] is clipped onto a flexible strip. See Prohaska, Fig. 3, 2:61-70, 2:80-86, 2:28-89, 4:1-7. Appel discloses a support element in the form of a spring backbone element that has outer edges, as seen, for example, in Figures 1 and 6. 24

30 CLAIM 1 PROHASKA APPEL Prohaska discloses a support means, in the form of back 31 of flexible strip 30, between the two sides (wind deflector surfaces 21 and 22) of the wind deflection strip (spoiler 20), located at a distance from their common base point, as seen, for example, in Figure 3. wherein between the two sides (48, 50 or 136, 138) of the wind deflection strip (42 or 112) there is at least one support means (58 or 144) located at a distance from their common base point (46 or 134) that stabilizes the sides, wherein the support means is made up of a wall (58 or 144) connected to both sides (48, 50 or 136, 138) that extends in the longitudinal direction of the wind deflection strip (42 or 112), Prohaska discloses a support means made up of a wall, in the form of back 31 of flexible strip 30, connected to both sides (wind deflector surfaces 21 and 22), extending in the longitudinal direction of the wind deflection strip (spoiler 20). See Prohaska, Fig. 3, 1:43-52, 2: and wherein the wall Prohaska discloses a (58 or 144) extends wall, in the form of along the entire back 31 of flexible strip length of the wind 30, extending along the deflection strip (42 entire length of the or 112). wind deflection strip (spoiler 20). See Prohaska, Fig. 3, 1:43-52, 1:97-100, 2: Petitioner asserts alternatively that Claim 1 is obvious over Prohaska in view of Hoyler (Ground #3). The following chart shows where each feature of Claim 1 is disclosed. Appendices to the Kruger Declaration illustrate the same. See Kruger 25

31 Decl. Appendices (Exs (illustrations) and 1025 (animation)). CLAIM 1 PROHASKA HOYLER 1. A wiper blade (10) for an automobile windshield (14), This invention concerns a wiper blade for windscreen cleaning installations on vehicles, especially on motor vehicles. Prohaska, 1:5-7. with an elongated belt-shaped, flexible resilient support element (12) having a longitudinal axis, on the 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 the upper belt surface (16) of which a wind deflection strip (42 or 112) is located that has an incident surface (54 or 140) facing the main flow direction of a driving wind (arrow 52), said deflection strip Prohaska discloses an elongated belt-shaped flexible spring support element, in the form of flexible strip 30, having a longitudinal axis. See Prohaska, Figs. 1 & 3, 1:43-52, 2: Prohaska discloses, on a lower belt surface of its flexible strip 30, a wiper element 10, made of rubber-elastic material, sitting against the windshield and extending parallel to the longitudinal axis. See Prohaska, Fig. 3, 1:43-61, 2: Prohaska discloses, on the upper belt surface of its flexible strip 30, a wind deflection strip (spoiler 20) having an incident wind deflector surface exposed to the air stream. See Prohaska, Fig. 3, 1:51-52, 2: Prohaska discloses a Hoyler discloses an elongated belt-shaped flexible spring support element as wiper bar having longitudinal springs 5. See Hoyler, Fig. 1, cols. 1, 2 & 3. Hoyler discloses, on a lower belt surface of springs 5, a rubber wiping strip 3 with wiper lip 4 sitting against windshield and extending parallel to the longitudinal axis. See Hoyler, Fig. 1, cols. 1, 2 & 3. 26

32 CLAIM 1 PROHASKA HOYLER extending in the longitudinal direction of the support element, wind deflection strip (spoiler 20) extending in the longitudinal direction of its support element (flexible strip 30). See Prohaska, 1:97-100, 2:56-58, 2: 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, that the incident surface (54 or 140) is located at the exterior of one side (50 or 138) and that the profile of the cross section of the wind deflection strip is the same along its entire length, wherein the support element has outer edges, Prohaska discloses a wind deflection strip (spoiler 20) having two sides in the form of wind deflector surfaces 21 and 22 that diverge from a common base point as seen in cross section, for example, in Figure 3. See Prohaska, 2:125 3: 5. Prohaska discloses an incident wind deflector surface 21 located at the exterior of one side of its spoiler 20. See Prohaska, Fig. 3, 2: Prohaska discloses a wind deflection strip (spoiler 20) having a cross-sectional profile that is the same along its entire length. See Prohaska, 1:97-100, 2: Prohaska discloses individual flexible strips as the support element, which may be inserted in the head of a wiper element, and onto Hoyler discloses a support element in the a wiper bar with longitudinal springs 5 that have outer edges, as seen, for example, in Figure 1. 27

33 CLAIM 1 PROHASKA HOYLER which a spoiler may be clipped. See Prohaska, 1:68-70, 4:3-7. and wherein the sides of the wind deflection strip have respective free ends having thereon respective claw-like extensions that fittingly grip around the outer edges of the support element at least in sections, so that the wind deflection strip can be snapped onto the outer edges or slid onto the outer edges in a longitudinal direction, wherein between the two sides (48, 50 or 136, 138) of the wind deflection strip (42 or 112) there is at least one support means (58 or 144) located at a distance from their common base point (46 or 134) that stabilizes the sides, wherein the support means is made up of a wall (58 or 144) connected to both sides (48, 50 or 136, 138) that extends in Prohaska discloses spoiler 20 as its wind deflection strip, which has sides 21 and 22 having free ends that are each provided with claw-like extensions, in the form of elongations 32 and 33, a spoiler 20 [that] is clipped onto a flexible strip. See Prohaska, Fig. 3, 2:61-70, 2:80-86, 2:28-89, 4:1-7. Prohaska discloses a support means, in the form of back 31 of flexible strip 30, between the two sides (wind deflector surfaces 21 and 22) of the wind deflection strip (spoiler 20), located at a distance from their common base point, as seen, for example, in Figure 3. Prohaska discloses a support means made up of a wall, in the form of back 31 of flexible strip 30, connected to both sides (wind deflector 28

34 CLAIM 1 PROHASKA HOYLER the longitudinal direction of the wind deflection strip (42 or 112), surfaces 21 and 22), extending in the longitudinal direction of the wind deflection strip (spoiler 20). See Prohaska, Fig. 3, 1:43-52, 2: and wherein the wall (58 or 144) extends along the entire length of the wind deflection strip (42 or 112). Prohaska discloses a wall, in the form of back 31 of flexible strip 30, extending along the entire length of the wind deflection strip (spoiler 20). See Prohaska, Fig. 3, 1:43-52, 1:97-100, 2: Petitioner asserts that Claim 1 is obvious over Kotlarski 383 in view of Prohaska (Ground #4). The following chart shows where each feature of Claim 1 is disclosed. CLAIM 1 KOTLARSKI 383 PROHASKA 1. A wiper blade (10) for an automobile windshield (14), The present invention relates to a wiper blade for cleaning vehicle windows. Kotlarski 383, 1:5-6. with an elongated belt-shaped, flexible resilient support element (12) having a longitudinal axis, on the lower belt surface (22) of which that faces the Kotlarski 383 discloses a striplike, elongated, spring-elastic support element 12 having a longitudinal axis. See Kotlarski 383, Figs. 1, 3 & 13, 3:6-8, 3: Kotlarski 383 discloses, on band face 46 of support element 12, facing to- 29

35 CLAIM 1 KOTLARSKI 383 PROHASKA windshield is located an elastic rubber wiper strip 24 sitting against the windshield that extends parallel to the longitudinal axis, ward the window, an elongated, rubber-elastic wiper strip 14 sitting against the window surface 26, and disposed parallel to the longitudinal axis. See Kotlarski 383, Fig. 1, 3:12-15, 3:29-35, 3: and on the upper belt surface (16) of which a wind deflection strip (42 or 112) is located that has an incident surface (54 or 140) facing the 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, that the incident surface (54 or 140) is Kotlarski 383 discloses, on band 48 of spring support element 12, which faces away from the window, a wind deflector strip 200 having an incident surface facing the main flow direction of the driving wind. See Kotlarski 383, Figs. 1-3 & 11, 3:57-61, 5: Kotlarski 383 discloses a wind deflector strip 200 extending in the longitudinal direction of support element 12, as seen, for example, in figure 2. See Kotlarski 383, 5: Kotlarski discloses an incident surface of the wind Prohaska discloses a wind deflection strip (spoiler 20) having two sides in the form of wind deflector surfaces 21 and 22 that diverge from a common base point as seen in cross section, for example, in Figure 3. See Prohaska, 2:125 3: 5. Prohaska discloses an incident wind deflector sur- 30

36 CLAIM 1 KOTLARSKI 383 PROHASKA deflector strip 200 located at the exterior of one side of the wind deflector strip, as seen, for example, in Figure 2. located at the exterior of one side (50 or 138) and that the profile of the cross section of the wind deflection strip is the same along its entire length, wherein the support element has outer edges, and wherein the sides of the wind deflection strip have respective free ends having thereon respective claw-like extensions that fittingly grip around the outer edges of the support element at least in sections, so that the wind deflection strip can be snapped onto the outer edges or slid onto the outer edges in a longitudinal direction, wherein between the two sides (48, 50 or 136, 138) of the wind deflection strip Kotlarski 383 discloses a wind deflector strip 200 having a cross-sectional profile that is the same along its entire length, as can be seen in Figures 1-3. Kotlarski 383 discloses a support element 12 with two spring rails 30 and 32 having outer edges 50 and 52. See Kotlarski 383, 3:38-40, 3: Kotlarski 383 discloses a connection device 16 having claws 70 formed thereon which grips the spring rails 30 and 32, forming fastening means for retaining the connection device on the support element. See Kotlarski 383, Fig. 2, 4: face 21 located at the exterior of one side of its spoiler 20. See Prohaska, Fig. 3, 2: Prohaska discloses spoiler 20 as its wind deflection strip, which has sides 21 and 22 having free ends that are each provided with claw-like extensions, in the form of elongations 32 and 33, and a spoiler 20 [that] is clipped onto a flexible strip. See Prohaska, Fig. 3, 2:61-70, 2:80-86, 2: Prohaska discloses a support means, in the form of back 31 of flexible strip 30, between the two sides 31

37 CLAIM 1 KOTLARSKI 383 PROHASKA (42 or 112) there is at least one support means (58 or 144) located at a distance from their common base point (46 or 134) that stabilizes the sides, wherein the support means is made up of a wall (58 or 144) connected to both sides (48, 50 or 136, 138) that extends in the longitudinal direction of the wind deflection strip (42 or 112), (wind deflector surfaces 21 and 22) of the wind deflection strip (spoiler 20), located at a distance from their common base point, as seen, for example, in Figure 3. Prohaska discloses a support means made up of a wall, in the form of back 31 of flexible strip 30, connected to both sides (wind deflector surfaces 21 and 22), extending in the longitudinal direction of the wind deflection strip (spoiler 20). See Prohaska, Fig. 3, 1:43-52, 2: and wherein the Prohaska discloses a wall, wall (58 or 144) extends along the en- flexible strip 30, extending in the form of back 31 of tire length of the along the entire length of wind deflection strip the wind deflection strip (42 or 112). (spoiler 20). See Prohaska, Fig. 3, 1:43-52, 1:97-100, 2: Petitioner asserts alternatively that Claim 1 is obvious over Merkel in view of Prohaska (Ground #5). The following chart shows where each feature of Claim 1 is disclosed. CLAIM 1 MERKEL PROHASKA 1. A wiper blade (10) for an automobile windshield (14), The present invention relates to a wiper blade for cleaning windows of motor vehicles. Merkel, 1:

38 CLAIM 1 MERKEL PROHASKA Merkel discloses a bandlike, elongated, springelastic support 12 having a longitudinal axis. See Merkel, Fig. 1, 3:24-27, 3: with an elongated belt-shaped, flexible resilient support element (12) having a longitudinal axis, on the 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 the upper belt surface (16) of which a wind deflection strip (42 or 112) is located that has an incident surface (54 or 140) facing the main flow direction of a driving wind (arrow 52), said deflection strip extending in the longitudinal direction of the support element, Merkel discloses an elongated, spring-elastic support element 12 (FIG. 2), to whose underside an elongated, rubber-elastic wiper strip 14 is secured longitudinally axially parallel to it, the wiper lip 28 of wiper strip 14 having contact with the motor vehicle window over its entire length. See Merkel, 3:24-26, 3: Merkel discloses a portion of the wiper strip 14 having, on the side of the support element 12 facing away from the window, a substantially triangular cross section, which serves as a wind deflector strip, with one side face 56 of the wind deflector strip facing predominantly into the wind. See Merkel, Figs. 1, 3 & 4, 4:8-17. Merkel discloses a wind deflection strip 54 being integrated with the wiper strip 14, and therefore extending longitudinally axially parallel to the support element 12. See Mer- 33

39 CLAIM 1 MERKEL PROHASKA kel, Fig. 1, 3:24-27, 4: 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, that the incident surface (54 or 140) is located at the exterior of one side (50 or 138) and that the profile of the cross section of the wind deflection strip is the same along its entire length, wherein the support element has outer edges, and wherein the sides of the wind deflection strip have respective free ends having thereon respective Merkel discloses one side face of the wind deflector strip facing predominantly into the wind, and being scooped out in concave fashion. See Merkel, Figs. 1, 3 & 4, 4: Merkel discloses that the wiper strip 14 and the wind deflector strip 54 integrated with it have a... constant cross section over the length of the wind deflector strip. See Merkel, Figs. 1, 3 & 4, 4: Merkel discloses a support element 12 having outer longitudinal edges 42 and 44. See Merkel, Fig. 2, 4:4-7, 4: Merkel discloses a connection device, embodied as a retaining means, having legs 64 and 66, allowing the connection device 16 to fit over and under Prohaska discloses a wind deflection strip (spoiler 20) having two sides in the form of wind deflector surfaces 21 and 22 that diverge from a common base point as seen in cross section, for example, in Figure 3. See Prohaska, 2:125 3:5. Prohaska discloses an incident wind deflector surface 21 located at the exterior of one side of its spoiler 20. See Prohaska, Fig. 3, 2: Prohaska discloses spoiler 20 as its wind deflection strip, which has sides 21 and 22 having free ends that are each provided with claw-like 34