[00:00:03] Speaker 04:
The first case for argument this morning is 172122, Robert Bosch versus Yanku.

[00:00:12] Speaker 04:
Mr. Hanneman, when you're ready.

[00:00:20] Speaker 01:
Good morning, Your Honors, and may it please the Court.

[00:00:23] Speaker 01:
We're here on appeal of obviousness rulings in four different IPRs, all related to wiper blade technology.

[00:00:32] Speaker 01:
The first patent that I'd like to discuss this morning is the 264 patent.

[00:00:36] Speaker 01:
This is the patent where the board, the same panel of the board, confronted with the same evidence and word for word the same arguments.

[00:00:46] Speaker 03:
Well, the board's conceded that.

[00:00:47] Speaker 01:
Correct.

[00:00:48] Speaker 01:
My point.

[00:00:50] Speaker 01:
Check.

[00:00:52] Speaker 01:
698.

[00:00:53] Speaker 04:
I'm sorry.

[00:00:55] Speaker 04:
I don't want to undo the check.

[00:00:56] Speaker 04:
But we would remand it to the board to do whatever needs to be done, right?

[00:01:02] Speaker 01:
Well, no.

[00:01:02] Speaker 01:
The director has conceded that reversal is appropriate, Your Honor.

[00:01:09] Speaker 01:
Then I thought we could discuss the 698 patent.

[00:01:14] Speaker 01:
That's the patent having to do with the curve of the wiper blade and the pressure distribution of the wiper blade.

[00:01:20] Speaker 01:
The sole claim of that patent was held obvious over a combination of two Appel patents and a patent to Arai.

[00:01:31] Speaker 01:
The Appel patents describe wiper blades that are circularly curved.

[00:01:37] Speaker 04:
Can I just ask you as a threshold matter, because I think we've all spent a lot of time on this case before.

[00:01:42] Speaker 04:
Is this your argument that the board misstated the Appel reference in its analysis?

[00:01:49] Speaker 01:
Well, the board seemed to misstate, at different points in its opinion, it made contradictory findings of fact, but seemed to misstate both the Pell and the Rye.

[00:02:02] Speaker 04:
OK, so why don't you show us, give us the pages of the opinion as you speak.

[00:02:17] Speaker 01:
I think if we look on page A7694, if we're talking about the Arai reference, and this part of the opinion was complicated by the original prosecution of the 698 patent, which involved rejections, court appeals, and eventually issuance of claim one.

[00:02:44] Speaker 01:
Both the petitioner and the board seemed to spend a great deal of time discussing the original prosecution, even though nobody argued that the original prosecution was controlling in any respect on

[00:03:04] Speaker 01:
Page A7693 to 7694, the board seemed to adopt what it found to be the earlier board's fact finding about the curve of the Arai reference.

[00:03:17] Speaker 01:
And this is important because, as anybody can see looking at the figure, the Arai disclosure is of a wiper blade that is curved more sharply at the ends and less sharply in the middle.

[00:03:35] Speaker 01:
rejection in the original prosecution that seemed to put that in question, the board wrote, we agree with and adopt the previous board's findings of fact concerning Arai.

[00:03:47] Speaker 01:
But later on page A7694, the board also adopted the examiner's fact finding in the original prosecution.

[00:03:56] Speaker 01:
And the examiner's fact finding was correct that the conventional backing member

[00:04:05] Speaker 01:
of claim eight being curved sharper in the center section than in the end sections was not in a rye.

[00:04:15] Speaker 01:
So the important thing about a rye.

[00:04:17] Speaker 02:
What about figure seven in a rye?

[00:04:20] Speaker 01:
So figure seven in a rye is an experimental result.

[00:04:24] Speaker 01:
A rye throughout the patent, just like a pal, just like everybody in the prior art dealing with this.

[00:04:29] Speaker 02:
You're saying the experiment went a rye?

[00:04:32] Speaker 01:
Yes, your honor.

[00:04:33] Speaker 01:
I do.

[00:04:35] Speaker 01:
The experiment shows some fluctuation in force distribution along the length of the blade at one of three, under one of three sets of test conditions.

[00:04:46] Speaker 01:
And according to the board, it shows

[00:04:49] Speaker 01:
force distribution less at the ends than in the middle of this array example.

[00:04:57] Speaker 01:
And if this were an anticipation case, I think that would be very important if we found the correct curvature in array, which we do not, then you could take this one experimental result and say, aha, we have an anticipation of the 698 pattern.

[00:05:13] Speaker 01:
Dealing with obviousness, we have to look at the reference for everything that it teaches.

[00:05:16] Speaker 01:
And what it teaches throughout is the desirability of uniform force distribution.

[00:05:21] Speaker 01:
The experiment that they reported was a failure in the sense that it did not achieve uniform force distribution.

[00:05:26] Speaker 02:
What a reference teaches is question of fact.

[00:05:29] Speaker 02:
And we owe the board deference on facts.

[00:05:32] Speaker 01:
We need to find substantial evidence in support of the board's fact findings.

[00:05:37] Speaker 01:
And I'm not arguing

[00:05:39] Speaker 01:
the question of what figure seven describes.

[00:05:41] Speaker 01:
What I'm arguing is that in view of the whole disclosure of a rye and the whole disclosure of a pell, both of which are directed to uniform force distribution, there's no way to combine to say that one of skill and the art would take the shape of one embodiment from one impell patent and modify it to have the force distribution of the failed experiment reported in

[00:06:08] Speaker 01:
awry of figure seven, when both of them call for uniform force distribution throughout, which is exactly the opposite of the 698 pattern, the whole invention of which was that uniform force distribution is not desirable because it has undesirable results in practice.

[00:06:26] Speaker 02:
What about Appel?

[00:06:30] Speaker 02:
Appel talked about increasing pressure applied at the center.

[00:06:37] Speaker 01:
And what Appel is describing there is the process of the curved wiper blade.

[00:06:45] Speaker 03:
Are we talking about Appel 551 or 770?

[00:06:47] Speaker 01:
Both of them, Your Honor.

[00:06:48] Speaker 03:
Well, specifically, you were about to describe something.

[00:06:52] Speaker 03:
I just wanted to know whether you were pointing at 551 in particular.

[00:06:57] Speaker 01:
I don't recall whether the progressive

[00:07:00] Speaker 01:
Force distribution language is in 551 or in 770.

[00:07:04] Speaker 03:
But it's incorporated.

[00:07:05] Speaker 03:
In any event, 551 is incorporated in 770.

[00:07:08] Speaker 01:
Our position is that 551 is only incorporated for its uniform force distribution.

[00:07:13] Speaker 01:
But yes, let's assume that it's entirely incorporated in 770, since there's really nothing else in 551 anyway.

[00:07:22] Speaker 03:
I think the progressive curvature is in 551.

[00:07:24] Speaker 01:
Yes.

[00:07:26] Speaker 03:
That's a pretty important ingredient,

[00:07:30] Speaker 03:
By your argument, it's not in the ARRAI reference.

[00:07:34] Speaker 01:
Agreed, Your Honor.

[00:07:35] Speaker 03:
But the lesser curvature at the ends is in ARRAI 551.

[00:07:40] Speaker 03:
I mean, APEL 551, right?

[00:07:42] Speaker 01:
Yes.

[00:07:42] Speaker 01:
There's a parabolic curve described in APEL 551, which would be curved less at the ends than in the middle.

[00:07:47] Speaker 01:
That's correct.

[00:07:49] Speaker 01:
As far as force distribution, only uniform force distribution is described in APEL.

[00:07:54] Speaker 01:
And that's the critical force distribution point.

[00:07:58] Speaker 01:
The progressive force distribution that Your Honor was describing from the appell patents is describing the process where the wiper blade is pushed onto the windshield, where the pressure is applied in the middle.

[00:08:15] Speaker 01:
And as the blade flattens on the windshield, the pressure evens out as it pushes down and evens out.

[00:08:23] Speaker 01:
That's not a description.

[00:08:24] Speaker 01:
of a static state pressure being anything other than uniform.

[00:08:31] Speaker 01:
So our contention is, as I said, there's really no motivation for anybody to take the parabolic curve in a Pell, which is taught to provide uniform force distribution, modify it in view of a RIE, which also teaches uniform force distribution, although it discloses an example where that didn't happen, and come up with the invention of the 698 patent, which

[00:08:54] Speaker 01:
designed specifically to avoid uniform force distribution because of the problems heretofore unknown that come from that.

[00:09:11] Speaker 04:
maybe one, maybe more than one basis for finding motivation to combine.

[00:09:17] Speaker 04:
So I think most of the discussion so far, if I've understood it correctly, went to what they're talking about in the middle of the page about APEL.

[00:09:25] Speaker 04:
This is all about APEL, what APEL teaches.

[00:09:29] Speaker 04:
But then at the bottom of the page, it says, maybe this is another, an alternative basis for finding motivation.

[00:09:37] Speaker 04:
770 also discloses various constructional approaches incorporating progressive dimensional variations in free-form curvature.

[00:09:46] Speaker 04:
And then they have a citation to appell, the citation seems to be to the 551, which says it's possible to combine a number of different ways these various constructional approaches, blah, blah, blah, blah, blah.

[00:10:01] Speaker 04:
So do you read that as another basis for motivating the combination of a Pell and a Rye?

[00:10:09] Speaker 04:
And why is that not sufficient for an affirmance here?

[00:10:13] Speaker 01:
No, I don't read it that way.

[00:10:15] Speaker 01:
What that section of the patent is describing is that you can combine different shapes of curves with different thickness progressions, different width progressions of the beam in order to come up with the desired uniform force distribution.

[00:10:31] Speaker 01:
That's what that section of the patent is talking about.

[00:10:33] Speaker 01:
And I should mention that the practical compromise language to which the board also refers does not teach what the board seemed to suggest that it teaches.

[00:10:48] Speaker 01:
What it is teaching is another way of getting at uniform force distribution, pointing out that the rubber wiper strip itself has a role in force distribution, and the practical compromise

[00:11:02] Speaker 01:
language says you can do something just short of a circular curvature and still get a satisfactory force distribution because the rubber wiper strip itself will smooth out the pressure distribution.

[00:11:17] Speaker 01:
So again, there's nothing in Appel suggesting anything other than uniform force distribution, and again, that's the opposite of the

[00:11:26] Speaker 01:
698 patent.

[00:11:28] Speaker 01:
The invention of the 698 patent was noting that you have a problem when you have uniform force distribution.

[00:11:34] Speaker 01:
You get a flacking noise when the rubber flips over all at once.

[00:11:38] Speaker 01:
And you avoid it by specifically designing the blade to not have uniform force distribution.

[00:11:44] Speaker 03:
Although that limitation was not in the claim, the limitation with respect to the reduction of noise.

[00:11:50] Speaker 03:
It was simply a consequence of

[00:11:53] Speaker 03:
you argue the limitations that were in the claims.

[00:11:57] Speaker 01:
Yes, that's right.

[00:11:58] Speaker 01:
And it's taught in the patent as a consequence of that limitation.

[00:12:03] Speaker 01:
It's the result.

[00:12:04] Speaker 03:
The curvature issue in a rye, there's a sentence in a rye that you're well aware of, that the curvature, it says, and I'm reading a column one, line 60, is preferably small at opposite end portions and large at the central portion.

[00:12:20] Speaker 03:
I take it that you're

[00:12:22] Speaker 03:
Argument is that has to be interpreted to mean, particularly in light of figure five, that the radius of curvature is preferably small at the opposite ends, which means that the actual sharpness of the curve is greater.

[00:12:37] Speaker 03:
That's your position on that, right?

[00:12:40] Speaker 03:
Exactly.

[00:12:40] Speaker 03:
Although we have no reference to radius of curvature in the patents, so far as I can tell.

[00:12:47] Speaker 03:
There is a reference and an appeal to radius of curvature, but not in Arai.

[00:12:51] Speaker 01:
Correct.

[00:12:52] Speaker 03:
So how do we know that that's what they must mean by looking at Figure 5?

[00:12:58] Speaker 01:
Well, we know we have expert testimony at, I believe, page 8405 from our expert explaining that.

[00:13:12] Speaker 01:
We also have the fact that neither the petitioner nor the board

[00:13:19] Speaker 01:
was dealing with an anticipation argument at all.

[00:13:21] Speaker 01:
And if a rye was curved opposite to the way that is shown in its figure, you would have an anticipation argument.

[00:13:30] Speaker 03:
Well, right.

[00:13:32] Speaker 03:
But you would also have a stronger, at least as strong and perhaps stronger, obviousness argument, because you would have two different references, both of which give you curvature.

[00:13:41] Speaker 01:
Oh, yeah, I was merely pointing out that nobody had ever argued that that language meant the opposite of what's shown here.

[00:13:48] Speaker 01:
And as was confirmed by our expert in his declaration, that it's curved more sharply at the end.

[00:13:55] Speaker 03:
But isn't that where you say the board, the first time through the BPAI, got it wrong?

[00:14:01] Speaker 03:
Where they went wrong?

[00:14:02] Speaker 01:
It's a very difficult prosecution to unpack because there was rejection of several related

[00:14:09] Speaker 01:
claims in different inconsistent ways.

[00:14:12] Speaker 01:
There is certainly arguably a fact finding by the board that was never urged by the examiner in the original prosecution about a rye in the way that you describe.

[00:14:26] Speaker 01:
But I think that that's something that the petitioner never raised and something the board didn't rely on.

[00:14:33] Speaker 01:
The picture is fairly self-explanatory.

[00:14:36] Speaker 01:
And as I said, we have expert testimony confirming that.

[00:14:40] Speaker 04:
You're well into your rebuttal, so why don't we hear from the other side?

[00:14:45] Speaker 00:
Good morning, may it please the court?

[00:15:00] Speaker 00:
I think what I'd like to add to the discussion starting off is to

[00:15:05] Speaker 00:
step back and think about the state of the art and what Arai and Appel show us about what was going on in the windshield wiper field for decades before the invention of this patent.

[00:15:18] Speaker 00:
And I think what the art shows us is that artisans have been working with the same sorts of materials for a long time.

[00:15:24] Speaker 00:
It's basically been rubber, metal strips, gravity, and glass.

[00:15:29] Speaker 00:
And there have been a limited number of ways that... And wind.

[00:15:33] Speaker 00:
I'm sorry?

[00:15:33] Speaker 00:
And wind.

[00:15:34] Speaker 00:
And wind, too.

[00:15:35] Speaker 00:
Although not pertinent to this patent, the 698.

[00:15:38] Speaker 00:
Exactly.

[00:15:39] Speaker 00:
And Arai and Appel show us that there have basically been a limited number of ways that artisans, in techniques that artisans have had, to adjust the pressure in a blade, the rigidity of the rubber, the placement of the arm on the wiper, and the curvature.

[00:16:00] Speaker 00:
And what Arai and Appel are doing, they're really approaching

[00:16:05] Speaker 00:
the problem here from the same perspective.

[00:16:08] Speaker 00:
And so when Judge Prost mentioned the board's observation about Appel's discussion about progressive dimensional variations, I think it really ties in with that concept.

[00:16:23] Speaker 00:
How does that give us the motivation to combine the two references?

[00:16:27] Speaker 00:
Well, I agree that the board really, I think, articulated two alternative motivations with respect to that progressive dimensional variation concept.

[00:16:38] Speaker 00:
If you're one of skill in the yard and you're sort of working incrementally with these blades and trying to get the pressure right, it's really just a matter of small tweaks to try to figure out how to get there.

[00:16:53] Speaker 03:
Well, the key thing, though, isn't it, is what constitutes the pressure right.

[00:16:57] Speaker 03:
As far as Appel and Arai are concerned, the right pressure, it seems to me, is suggested to be equal pressure across the entire expanse of the blade, whereas the claim in the 698 is directed at a different pressure at different points of the blade.

[00:17:16] Speaker 03:
That's the objective of the claim.

[00:17:19] Speaker 00:
Arai and Appel both absolutely talk about the desirability of uniform pressure, but it is also true that the

[00:17:27] Speaker 00:
Inventors motivation does not have to be the same as the motivations of those who came before the inventor and Appel does make clear that non-uniform distribution is an acceptable compromise and Appel shows us that Are you referring to the board's analysis or it talks about a practical compromise?

[00:17:54] Speaker 00:
Yes, and the board cited that discussion, and that comes straight out of the Pell, and the board says that is a legitimate motivation.

[00:18:04] Speaker 00:
And there's a problem with that, isn't there?

[00:18:06] Speaker 04:
I mean, didn't the problem, I mean, the board's reliance on motivation, I mean, the other side spends a lot of ink, and I think they make a fair point about how the board was misconstruing what a Pell said in that regard.

[00:18:24] Speaker 00:
Well, we can go to Appel and read what he says.

[00:18:27] Speaker 04:
I mean, if they're referring to the practical compromise, isn't it right that in the reference, it still results in uniform contact force?

[00:18:39] Speaker 00:
That's not how I read it.

[00:18:40] Speaker 00:
The way that I read what Appel is saying is that Appel has a backing.

[00:18:44] Speaker 00:
And I'm sort of using an elegant, basic way with my fingers of showing this.

[00:18:48] Speaker 00:
But you've got the backing.

[00:18:50] Speaker 00:
of the blade, and then you've got the blade under it.

[00:18:52] Speaker 00:
And whatever pressure that the backing is applying on the blade is going to be the same.

[00:19:02] Speaker 00:
Ultimately, we're talking about a fact finding that the board made.

[00:19:05] Speaker 00:
And I think what I described in the fact finding that the board made is at least reasonable.

[00:19:10] Speaker 00:
So even if there is an alternative way of looking at it, I think the way that the board looked at it at least is reasonable.

[00:19:20] Speaker 04:
You mean the board says, and they're looking at this paragraph, Gray cites it at length at page three.

[00:19:28] Speaker 04:
And the board states that this passage teaches non-uniform contact force, and specifically it teaches reduced contact force at the ends.

[00:19:43] Speaker 04:
whatever standard of review we use for reviewing it, isn't it true that the passage does not teach that?

[00:20:16] Speaker 00:
Well, if I'm understanding, Your Honor, what you're quoting, I think that is consistent with what Appel says, that there could be reduced contact force at the end of the blades.

[00:20:33] Speaker 00:
And again, Appel is saying that as a satisfactory compromise, that there could be a limited degree of non-uniform spring load.

[00:20:47] Speaker 00:
So I think between Appell and, again, when we look at figure seven from Arai, we are looking at examples of blades that have non-uniform force distribution.

[00:21:02] Speaker 00:
And whether or not that was ultimately what Arai and Appell desired or thought was ideal at least shows that it was being done.

[00:21:12] Speaker 00:
And the claim language here is,

[00:21:15] Speaker 00:
is extremely broad.

[00:21:16] Speaker 00:
It doesn't say anything about noise reduction.

[00:21:18] Speaker 00:
It doesn't say anything about particular levels of pressure that are needed to reduce noise.

[00:21:24] Speaker 03:
All it says is that... Well, suppose it did have a limitation about noise reduction.

[00:21:29] Speaker 03:
Would that, would your argument be any different or would you be simply saying that noise reduction is an inherent feature of reduced pressure at the ends and therefore it's still obvious?

[00:21:39] Speaker 00:
I mean, I think it could be a closer case if the claims were limited to

[00:21:43] Speaker 00:
to something that specific, because then I think it would be harder to disregard what Orion and Pell were saying about desirability of uniform force.

[00:21:58] Speaker 00:
But when the claim simply is reciting non-uniform force distribution, that's exactly what we're looking at.

[00:22:10] Speaker 00:
had already been done in these references.

[00:22:13] Speaker 03:
Suppose that Bosch had discovered that wipers tend to deteriorate at the ends more quickly than in the middle.

[00:22:22] Speaker 03:
And further, they discovered that the deterioration could be alleviated by having less pressure at the ends.

[00:22:32] Speaker 03:
They wrote a claim very much like the claim here, where they focused on less pressure and less curvature at the ends.

[00:22:42] Speaker 03:
Do you think that would also be rendered obvious by a combination of a rye and the apple references?

[00:22:50] Speaker 00:
I think it would be the same answer again, because if we're dealing with a claim that's- The same answer as which?

[00:22:54] Speaker 03:
The same answer as to my immediately proceeding, or the same answer as to this case?

[00:23:00] Speaker 00:
If I understand your honor's question correctly, the hypothetical is that if it were found that the reduced pressure prevented deterioration, would that be not the case?

[00:23:12] Speaker 03:
So their claim is to a wiper that lasts 50% longer than the wipers with uniform blade pressure?

[00:23:22] Speaker 00:
Well, in that example,

[00:23:25] Speaker 00:
I think there is a limitation that's something more than we have here.

[00:23:29] Speaker 00:
And so I think that might be a different case than we're dealing with here.

[00:23:34] Speaker 00:
But we don't have anything about noise.

[00:23:36] Speaker 00:
We don't have anything other than the very fact that there is non-uniform force distribution recited in this claim.

[00:23:51] Speaker 00:
So unless there are any further questions, I will yield the remainder of my time.

[00:23:56] Speaker 03:
What do you think, and let me just ask you this question because it came up in the first argument, what do you think is dispositionally the proper thing for us to do with respect to the, what is it, 294 patent?

[00:24:09] Speaker 00:
264.

[00:24:09] Speaker 03:
264, on which the PTO has conceded error, is it simply to send it back to the board for a correction of

[00:24:23] Speaker 03:
what the board had previously done or to just enter an order saying reversed period?

[00:24:30] Speaker 00:
In our brief, we concede that reversal would be appropriate in this case, and merely because it was just an up or down sort of black and white situation where one board decision came to one conclusion, the other board decision came to the other.

[00:24:46] Speaker 00:
If the board hadn't lost jurisdiction before it could have fixed it, the board could have fixed it on its own.

[00:24:51] Speaker 00:
But there's really nothing else to do at this point.

[00:24:56] Speaker 00:
Thank you.

[00:25:05] Speaker 01:
Your Honors, it's important that the 698 claim does not recite

[00:25:12] Speaker 01:
non-uniform force distribution, per se.

[00:25:14] Speaker 01:
It recites a particular kind of non-uniform force distribution.

[00:25:18] Speaker 01:
And that's what we have to find in the prior art, is that particular kind of non-uniform force distribution.

[00:25:25] Speaker 01:
Talking about what artisans knew in the art for years, artisans before Bosch never knew how beam blades work in practice.

[00:25:34] Speaker 01:
It's undisputed that Bosch made the first commercially viable beam blade.

[00:25:38] Speaker 01:
And in the course of its development,

[00:25:40] Speaker 01:
discovered for the first time that uniform force distribution is a problem, and discovered for the first time with respect to the 974 patent that wind lift is a problem.

[00:25:51] Speaker 01:
Bosch developed these hugely successful products, discovered the problems, and solved them, and then took patents on the solutions, which is exactly how the system is supposed to work.

[00:26:03] Speaker 01:
On the 974 patent, the Barth patent was raised as an additional ground

[00:26:10] Speaker 04:
For obviousness it was the sole evidence of motivation to combine We don't agree that it provides motivation to combine, but we never had an opportunity to respond to it in the board Okay, I'm just getting a little anxious because you're raising you're talking about things We didn't talk about me initial argument, so red has not had a chance to respond So you want to stick to the 698 or what we were discussing in your earlier?

[00:26:36] Speaker 01:
Then I'm complete, Your Honor.

[00:26:39] Speaker 01:
I love my other two patents, too, and would like to talk about them, but we didn't get a chance.

[00:26:44] Speaker 03:
All right.

[00:26:45] Speaker 03:
Thank you.

[00:26:45] Speaker 03:
Well, you had a chance.

[00:26:49] Speaker 01:
Fair enough.

[00:26:49] Speaker 04:
Well, we have the briefs.

[00:26:51] Speaker 04:
Thank you.

[00:26:51] Speaker 04:
Thank both sides, and the case is submitted.