Costco Wholesale Corp v. Robert Bosch LLC

1. Case Identification

• Case #: IPR2016-00040
• Patent #: 7,484,264
• Filed: October 9, 2015
• Petitioner(s): Costco Wholesale Corporation
• Patent Owner(s): Robert Bosch LLC
• Challenged Claims: 1-3

2. Patent Overview

• Title: Windshield Wiper Blade
• Brief Description: The ’264 patent discloses a windshield wiper assembly comprising a flexible, belt-shaped support element, a wiper strip on its lower surface, and a wind deflector on its upper surface. The invention purports to solve problems of cost, weight, and stiffness in prior art solid deflectors by claiming a wind deflector that is hollow.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-2 - Claims 1 and 2 are anticipated by Prohaska under 35 U.S.C. §102(b).

• Prior Art Relied Upon: Prohaska (U.K. Patent No. G.B. 2,106,775).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Prohaska discloses every limitation of claims 1 and 2. Specifically, Prohaska teaches a windshield wiper with a spoiler (wind deflection strip) mounted on a flexible strip (support element). The spoiler is hollow, has a triangular cross-section with two diverging sides, features claw-like extensions on its free ends for clipping onto the flexible strip, and contains an internal support wall connecting the diverging sides. For claim 2, Petitioner argued Prohaska inherently discloses that flexible strips inserted into the wiper head would necessarily protrude to allow the spoiler to be clipped on, thereby meeting the "two flexible rails" limitation.

Ground 2: Obviousness of Claims 1-2 - Claims 1 and 2 are obvious over Prohaska in view of Appel under 35 U.S.C. §103.

• Prior Art Relied Upon: Prohaska (U.K. Patent No. G.B. 2,106,775) and Appel (Patent 3,192,551).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Prohaska teaches the claimed hollow wind deflector with all its structural features, including the diverging sides, claw-like extensions, and internal support wall. Appel, which was not before the Examiner, discloses the claimed elongated, belt-shaped, flexible resilient support element in the form of a flat "spring backbone element." The combination of Prohaska's spoiler with Appel's support element allegedly meets all limitations of claims 1 and 2.
  • Motivation to Combine: A POSITA would be motivated to combine the references as a matter of simple design choice. Prohaska expressly teaches that its spoiler can be retrofitted or clipped onto flexible strips. A POSITA, aware of the advantages of flat-style support elements like Appel's, would have found it obvious to apply Prohaska's clip-on spoiler to Appel's support element to achieve a lightweight, effective wiper blade.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination merely joins known elements for their intended purposes, yielding predictable results: a wiper blade that counters liftoff, distributes force evenly, and is lighter and less stiff than a solid-spoiler design.

Ground 3: Obviousness of Claim 3 - Claim 3 is obvious over Prohaska and Appel in further view of Mathues under §103.

• Prior Art Relied Upon: Prohaska (U.K. Patent No. G.B. 2,106,775), Appel (Patent 3,192,551), and Mathues (Patent 3,121,133).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds upon Ground 2. Claim 3 adds the limitation that the "claw-like extensions" of the wind deflection strip are made of a harder material than the area closer to the deflector's base. Petitioner argued that Mathues, which was cited by the Examiner during prosecution, explicitly teaches making the "retention portion" of a squeegee from a harder material than the flexible wiping portion.
  • Motivation to Combine: The Examiner had previously found it obvious to apply the teachings of Mathues to make the retention portion of a deflection strip harder to enhance the security of the connection. Petitioner adopted this reasoning, arguing a POSITA would be motivated to apply the known principle from Mathues—using a harder material for a retention feature—to the claw-like extensions of the Prohaska spoiler to improve the security of its attachment to the Appel support element.
  • Expectation of Success: This modification was a predictable application of a known technique to improve a known device, which would have been expected to result in a more secure connection without altering the function of the individual components.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges for claims 1 and 2 based on combining Prohaska with Hoyler (German Patent No. DE 1,028,896), Kotlarski ’383 (WO 99/02383), and Merkel (WO 99/12784), which each disclose alternative flat-style spring support elements. Further grounds for claim 3 were asserted by adding either Kotlarski ’090 (WO 00/34090) or Mathues to these combinations to teach the "harder material" limitation for the claw extensions.

4. Key Claim Construction Positions

• Petitioner asserted that no special claim construction was necessary because the claims are invalid under any reasonable construction.
• Petitioner noted that in related district court litigation, the Patent Owner argued the term "at least one support means" from claim 1 should be construed as a means-plus-function limitation under 35 U.S.C. §112(6). The stated function is "to stabilize the sides of the wind deflection strip," corresponding to a "wall connected to both sides of the wind deflection strip... and their equivalents." Petitioner proceeded with its analysis on the basis that Prohaska's internal wall (31) meets this construction.

5. Relief Requested

• Petitioner requests institution of IPR for claims 1, 2, and 3 of the '264 patent, and for those claims to be found unpatentable and canceled.