United States: Secondary Considerations Again Fail To Shore Up Patent Estate

Last Updated: September 7 2017
Article by William K. Merkel

In IPR 2016-00036, a Bosch windshield wiper patent succumbed to Costco's challenge on grounds of obviousness. In its final written decision, the Board held claims 13, 17, and 18 of U.S. Patent No. 6,944,905 obvious. IPR 2016-00039, discussed here, is another Board decision holding obvious several claims of U.S. Patent No. 7,228,588, another member of Bosch's windshield wiper patent portfolio. Unlike the Board's finding in IPR 2016-00039 that PO failed to establish a nexus between proferred evidence and the claims sufficient to provide persuasive evidence of secondary considerations of non-obviousness, PO did establish that nexus in IPR 2016-00036. Even with that nexus, however, a preponderance of the evidence led the Board to hold the challenged claims unpatentably obvious.

The challenged claims of the '905 patent were drawn to beam (non-yoked) windshield wipers with hollow spoilers to keep the wipers in contact with the windshield in high winds and end caps securing wiper and spoiler to the wiper mechanism. Petitioner combined two references —Hoyler and Prohaska—to argue that the claims were obvious. Hoyler assertedly disclosed a beam wiper and Prohaska assertedly disclosed a hollow spoiler added to a conventional yoked wiper. Petitioner also relied on expert testimony to establish the level of skill in the art and to establish a reason to combine the references to arrive at a combination of elements known in the art, with each element providing its known function to yield predictable results. While not providing evidence of the level of skill in the art, Patent Owner (PO) argued that yoked and beam wipers were fundamentally different and not interchangeable.

PO also argued that the combined references failed to disclose the claim-recited end cap, but the Board disagreed. The Board noted that Figure 1 of Hoyler depicts clamps functioning as end caps at the ends of the wiper. PO unsuccessfully argued that those clamps did not meet the end cap requirement of the claims because the Hoyler clamps did not cover the sharp corners at the ends of the wiper. The Board reasoned that the claims did not require an end cap that completely covered the wiper ends and their sharp corners, and that the clamp illustrated in Hoyler did at least partially cover the sharp corners at the wiper ends.

PO further argued that the references failed to disclose the spoiler between and in contact with both end caps. The Board relied on Prohaska's teaching that spoilers could be arranged in the working points of the wiper, and the Board characterized these working points as extending from one end cap to the other in Hoyler's wiper. Consequently, adding Prohaska's spoiler to Hoyler's wiper, the spoiler would extend from end cap to end cap.

PO next argued that the combined references did not disclose a wind deflection strip having diverging legs because of the fundamental differences in wiper types, the failure to recognize the problems of wind lift, spoiler rigidity and mass reduction in beam wipers, and the disadvantages of hollow spoilers acknowledged by Prohaska. The Board dismissed the fundamental differences argument as unpersuasive and noted that Prohaska generally taught the problem of wind lift and disclosed that wipers should be designed to reduce the weight of wipers, thus rebutting PO's assertion that the problems weren't recognized in beam wipers. The Board also disagreed with PO regarding the asserted failure of the references to disclose wind deflection strips having diverging legs by citing Figure 3 of Prohaska, which showed a wind-deflecting spoiler with diverging legs. Addressing the argument that Prohaska taught disadvantages of hollow spoilers, the Board cited Prohaska's statement that the disadvantage of hollow spoilers in conditions of high air pressure could be minimized by a close fit of the parts, interpreted by the Board to mean that the spoiler's hollow could be filled in. This did not trouble the Board, which reasoned that the securing of one benefit at the cost of another should simply be weighed against each other.

The Board found the level of skill in the art to be sufficient to adapt features of one wiper type to another, and noted that Prohaska did not limit its disclosure of hollow spoilers to any one wiper type. The Board found a reason to combine Prohaska with Hoyler in Prohaska's disclosure of a spoiler solving the problem of wiper lift-off in high winds.

PO also argued that Prohaska taught away from using a hollow spoiler, but the Board found that Prohaska disclosed a hollow spoiler in an embodiment and noted that Prohaska identified a potential disadvantage and disclosed a solution overcoming that disadvantage, which does not amount to a teaching away from the claimed subject matter.

The Board also was unpersuaded by PO's evidence of secondary considerations. PO offered evidence to show the following secondary considerations favored a determination that the challenged claims were not obvious: commercial success, praise and awards, copying, licensing, long-felt need, and failure of others. Unlike other IPRs between the parties concerning wiper patents, as discussed here, the Board found sufficient nexus between the claims and the objective evidence of non-obviousness based on the Aerotwin and Icon wipers, but noted that nexus does not establish patentability.

In support of the asserted praise for commercial embodiments of the claims, PO noted that the Aerotwin wiper received a number of awards and the Icon wiper was the subject of praise. The unsupported assertions of praise and awards was given minimal probative weight by the Board.

In addressing PO's evidence of long-felt need, the Board re-phrased this secondary consideration as a long-felt, but unresolved, need. PO argued that the Icon wiper succeeded commercially where the competing Trico Innovision wiper failed. PO acknowledged that the competing wiper lacked a spoiler and end caps, both of which were known in the art and disclosed in Prohaska and Hoyler, respectively. The Board reasoned that, as a consequence, any need for such features had been resolved.

The Board stated that evidence of copying must show more than a competing product. PO's evidence of competing "knock-off" products only related to the Icon wiper and did not establish any effort to replicate a specific product. The Board concluded that there was no probative evidence of copying in the record.

PO attempted to establish commercial success with sales figures for the Icon wiper, but not the Aerotwin. The figures provided were for three years of sales, with no evidence of how the sales figures were determined and no comparison of sales figures to other years that might have established the significance of the sales figures provided. PO's unsupported assertions that the figures were significant were unpersuasive and the evidence was given little probative value on the issue of commercial success. Generic statements about licensing the wiper family of patents were also accorded little probative weight on this issue.

The Board concluded that, based on a preponderance of the evidence, the challenged claims would have been obvious to one of ordinary skill in the art in view of Prohaska and Hoyler.

The Board's decision clarifies that, beyond the need to establish a nexus between the proferred evidence of non-obviousness and the claimed subject matter, an issue central to the decision in IPR 2016-00039, discussed here, evidence of objective non-obviousness must be specific and commensurate in scope to the subject matter of the involved claims.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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