United States: Evidence Of Secondary Considerations Fails To Establish Nexus To Challenged Claims

Last Updated: May 16 2017
Article by William K. Merkel

In IPR 2016-00039, Costco challenged claims 1, 12 and 14 of USPN 7,228,588 owned by Bosch and drawn to beam (non-yoked) windshield wipers with spoilers to keep the wipers in contact with the windshield in high winds. Petitioner combined one reference with each of two other references in support of obviousness challenges to the claims. In defense of the claims, Patent Owner relied on evidence in the challenged patent and on expert testimony. The Board found PO's evidence contradicted by other evidence of record and found PO's expert testimony related to challenged patents not at issue in this IPR. Further, the Board found that evidence of secondary considerations of non-obviousness was insufficiently developed and held the challenged claims unpatentably obvious.

This IPR concerned an attack on one of at least eight Bosch wiper patents at issue in IPRs between these parties. Petitioner asserted that claims 1, 12 and 14 of the '588 patent were obvious over Prohaska's disclosure of a hollow spoiler in combination with the disclosure in either Kotlarski or Merkel (no relation to the author) of a beam wiper with a solid spoiler. Petitioner argued that substitution of Prohaska's hollow spoiler for the solid spoiler of Kotlarski or Merkel was merely the substitution of one known element for another known element, with predictable results. Petitioner asserted that the reason to modify the beam wiper by substituting a hollow for a solid spoiler was to reduce the stress on the wiper motor by reducing the weight of the wiper.

PO defended its claims by distinguishing beam wipers from conventional, yoked wipers and asserting that beam wipers performed better than yoked wipers in ice and snow and avoided the disadvantages of the yoked superstructure, which added weight and height to the blades. PO's expert attempted to support the non-obviousness of the claims by stating that the hope for beam wipers was that they would eliminate the disadvantages of weight and height associated with conventional wipers. In this regard, PO argued that one of ordinary skill in the art would not add components (e.g., spoilers) to beam wipers because it would negatively affect performance. Further, PO argued that there was no reason to combine references because each of Kotlarski and Merkel taught a complete solution to cleaning windshields in the form of beam wipers with solid spoilers.

Springboarding from its argument that there was no reason to combine references, PO argued Petitioner improperly relied on hindsight reconstruction. In support, PO noted that Prohaska disclosed disadvantages of using hollow spoilers. In view of the disadvantages, PO argued that the only way to combine the beam wipers with solid spoilers of Kotlarski or Merkel with the hollow spoiler of Prohaska was through impermissible hindsight reconstruction. PO also argued secondary considerations of non-obviousness in the form of commercial success, skepticism, industry praise, failure of others, licensing, copying and unexpected results.

In its analysis, the Board noted that beam wipers were known in the art, that beam wipers could incorporate additional components, as shown by Kotlarski's and Merkel's solid spoilers, and that spoilers were known to counter wind lift. Further, the Board discounted PO's expert testimony as merely stating a hope for improved performance of beam wipers over yoked ones, falling short of establishing that improved performance. The Board also found a sound reason to modify a beam wiper by substituting a hollow for a solid spoiler in order to reduce the stress on the wiper motor by reducing wiper weight while retaining the capacity to counter wind lift. Further, the Board found PO's argument that Prohaska's disclosure of the disadvantages of beam wipers unpersuasive because the expert testimony failed to explain which features of beam wipers were responsible for the disadvantages and because of a lack of factual data establishing those disadvantages. In view of the evidence and argument establishing a reason to combine references, PO's argument centered on hindsight reconstruction was found unpersuasive.

Finally, the Board eviscerated PO's arguments relating to secondary considerations. In general, the Board characterized PO's secondary consideration arguments as based on a mischaracterization of the cited art. In addressing commercial success, the Board found that PO failed to establish a nexus between its commercial products and the claims-at-issue, while noting that some of the products appeared to correspond to other patents involved in separate IPRs between the parties. Further, the evidence of commercial success was limited to subjective judgments of the high demand for commercial products having features defined in claims of other disputed patents. The sales figures offered by PO also involved a product that differed from the product cited in other arguments to argue commercial success. The skepticism argument focused on top-mounted spoilers running contrary to conventional thinking, but the Board found top-mounted spoilers in the art. PO's assertion of industry praise was based on awards unsupported by evidence, and at least one award was characterized as likely involving a product with a nexus to a different patent in dispute between the parties. The failure-of-others argument was based on the subjective assessment of the failure of a competitor product, but that product was introduced after the critical date for the '588 patent. The licensing argument missed the mark in arguing licenses to other Bosch patents, not to the '588 patent. The copying argument did not relate to products embodying a claim of the '588 patent.

Based on its analysis of the evidence and arguments presented by the parties, the Board held that Petitioner had established by a preponderance of the evidence that challenged claims 1, 12 and 14 of the '588 patent were unpatentably obvious. The outcome here stands in contrast to the recent decision in World Bottling Cap v. Crown Packaging Tech., IPR 2015-01651, in which, as we have discussed, the patent claims withstood an obviousness challenge, in large part due to sound evidence supporting arguments based on secondary considerations. Considered together, these decisions reveal that evidence of secondary considerations may be helpful in defending a patent challenged in an IPR, but only if the Patent Owner submits evidence that establishes that the secondary consideration has a nexus to the challenged claims.

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