Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 28
`Entered: July 7, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COSTCO WHOLESALE CORPORATION
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00042
`Patent 8,544,136
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 28
`Entered: July 7, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COSTCO WHOLESALE CORPORATION
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00042
`Patent 8,544,136
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00042
`Patent 8,544,136
`
`A. Introduction
`Petitioner requested an inter partes review of claims 1 and 21 of U.S.
`Patent No. 8,544,136 (Ex. 1001, “the 136 patent”). Paper 10 (“Petition” or
`“Pet.”). We denied Petitioner’s Petition and did not institute an inter partes
`review. Paper 22 (“Decision” or “Dec.”). Petitioner filed a Request for
`Rehearing of our Decision. Paper 23 (“Request” or “Req.”).
`
`B. Applicable Legal Standard
`Under 37 C.F.R. § 42.71(c), we review decisions on petitions “for an
`abuse of discretion.” The burden of showing a decision should be modified
`lies with the requesting party, who must “specifically identify all matters the
`party believes the Board misapprehended or overlooked.” Id. § 42.71(d).
`
`C. Overview of Our Decision
`In our Decision, we determined that a dispositive issue was whether
`Petitioner had shown in the prior art the claim requirement that “the wiper
`. . . be on the lower surface of the support element.” Dec. 6. We noted
`Petitioner asserted that beneath Lumsden’s reinforcing elements was a wiper
`blade. Id. (citing Pet. 23). Notably, the portion of the Petition we cited
`shows that Petitioner relies solely on Lumsden for showing the claimed
`support element. See Pet. 23. We then noted that “Lumsden does not appear
`to describe the claimed relationship between the lower surface of the support
`element and the wiper.” Dec. 7. Specifically, the claim required the wiper
`to be “on” the lower surface of the support element, which Petitioner
`asserted was reinforcing elements 8, 10 of Lumsden, but the wiper could not
`be “on” the reinforcing elements because flanges 24 and 26 were
`
` 2
`
`
`
`
`
`
`
`Case IPR2016-00042
`Patent 8,544,136
`intervening. Id. We noted that Petitioner failed to give a claim construction
`that would support characterizing “on” in this fashion. Id.
`We then further noted that Petitioner’s proposed combination was to
`take the spoiler of Lumsden with the support element of Hoyler. Dec. 7
`(citing Pet. 39). However, as we stated above, Petitioner only relied on
`Lumsden to describe the support element, not Hoyler, such that Petitioner’s
`analysis was inconsistent. See Pet. 23. We then noted that further
`modifications were required of the prior art to meet the particular
`relationship between the support element and the wiper, and that Petitioner
`had not set forth a sufficient explanation of this. Dec. 8. Accordingly, the
`proposed combination was not clear, as the support element limitation was
`not addressed sufficiently.
`
`D. Petitioner’s Assertions
`Petitioner asserts that we “misapprehended Petitioner’s stated grounds
`of unpatentability.” Req. 5. Petitioner asserts that it “does not rely on
`Lumsden to teach a support element.” Id.; id. at 7–10. Petitioner fails to
`persuade us we misapprehended its claim chart, however, which only relies
`on Lumsden to teach the support element. Pet. 23; see also Req. 8–9
`(discussing the claim chart). To the extent Petitioner argues that we could
`have chosen elements from the asserted prior art in a manner that meets the
`claims, or that we could have selectively read Petitioner’s Petition in a
`manner that addresses the claim limitations, we find these arguments
`unpersuasive. It is not our role to sift through the information provided and
`determine on our own if there is a reasonable likelihood that the asserted
`references show unpatentability; it is Petitioner’s role to provide a specific
`explanation demonstrating a reasonable likelihood of such. 37 C.F.R.
`
` 3
`
`
`
`
`
`
`
`Case IPR2016-00042
`Patent 8,544,136
`§ 42.104(b). In other words, Petitioner must provide in its Petition not only
`the art, but also the particular rationale and explanation persuasively
`showing how that art renders the claims unpatentable. Further, even if we
`were persuaded by similar combinations in other proceedings, those
`proceedings are not this proceeding and do not relieve Petitioner of its
`burden to identify the specific challenge. See id. §§ 42.104(b), 42.6(a)(3).
`Petitioner next asserts that our determination that “Petitioner merely
`makes an unsupported attorney argument” regarding the proposed
`modification fails to appreciate fully the declaration of Dr. Davis. Req. 10
`(quoting Dec. 8). In particular, Petitioner asserts that the Petition at pages
`39 and 44 cite Exhibit 1026, paragraphs 55 and 74. Req. 10. Page 39
`contains arguments for why it would have been obvious to combine the
`Lumsden deflector with the support element of Hoyler. This explanation
`does not address the specific arrangement required by the claims, however,
`regarding the claimed “on” relationship between the lower surface of the
`support element and the wiper. As we explained above, just combining the
`hollow spoiler with a support element does not necessarily result in the
`wiper being on the lower surface of the support element (e.g., flanges may
`intervene). The explanation at page 44 similarly is lacking in specificity, not
`addressing the particular claimed location of the claws.
`Lastly, Petitioner asserts that there are “[i]nstitutional and policy
`reasons” to grant rehearing, such as avoiding duplicative district court
`proceedings. Req. 11–12. We are not persuaded here that these reasons
`outweigh our interest in holding petitioners to the strict standards set forth in
`37 C.F.R. § 42.104(b), which facilitates the “just, speedy, and inexpensive”
`resolution of the proceeding (§ 42.1(b)) by requiring petitioners to bring
`
` 4
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`
`
`Case IPR2016-00042
`Patent 8,544,136
`their case-in-chief in the petition and requiring as a component thereof a
`persuasive and reasoned explanation for how the asserted art renders the
`claims unpatentable.
`
`E. Order
`In view of the foregoing, it is hereby ORDERED that Petitioner’s
`Request for Rehearing of our Decision Denying Inter Partes Review is
`denied.
`
`For PETITIONER:
`Richard M. Koehl
`richard.koehl@hugheshubbard.com
`James R. Klaiber
`james.klaiber@hugheshubbard.com
`David E. Lansky
`david.lansky@hugheshubbard.com
`Stefanie Lopatkin
`stefanie.lopatkin@hugheshubbard.com
`
`For PATENT OWNER:
`Patrick R. Colsher
`patrick.colsher@sherman.com
`
` 5
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