Robert Bosch, LLC v. Iancu

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ROBERT BOSCH, LLC,
Appellant
v.
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2017-2122, 2017-2124, 2017-2239, 2017-2241
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2016-
00034, IPR2016-00036, IPR2016-00038, IPR2016-00040.
______________________
Decided: July 3, 2019
______________________
MARK A. HANNEMANN, Shearman & Sterling LLP, New
York, NY, argued for appellant. Also represented by
PATRICK ROBERT COLSHER, ERIC SEBASTIAN LUCAS, THOMAS
R. MAKIN, JOSEPH MATTHEW PURCELL, JR.; KSENIA
TAKHISTOVA, Hunton Andrews Kurth LLP, New York, NY.
BENJAMIN T. HICKMAN, Office of the Solicitor, United
2 ROBERT BOSCH, LLC v. IANCU
States Patent and Trademark Office, Alexandria, VA, ar-
gued for intervenor. Also represented by THOMAS W.
KRAUSE, FARHEENA YASMEEN RASHEED, MAI-TRANG DUC
DANG.
______________________
Before PROST, Chief Judge, LOURIE and BRYSON, Circuit
Judges.
LOURIE, Circuit Judge.
Robert Bosch, LLC appeals from four inter partes re-
view decisions of the United States Patent and Trademark
Office (“PTO”) Patent Trial and Appeal Board (the “Board”)
holding several claims of U.S. Patents 7,484,264 (the “’264
patent”), 6,944,905 (the “’905 patent”), 6,292,974 (the “’974
patent”), and 6,973,698 (the “’698 patent”) unpatentable as
obvious. Costco Wholesale Corp. v. Robert Bosch LLC, No.
IPR2016-00040 (P.T.A.B. Mar. 30, 2017) (“’264 Decision”);
Costco Wholesale Corp. v. Robert Bosch LLC, No. IPR2016-
00036 (P.T.A.B. Apr. 24, 2017) (“’905 Decision”); Costco
Wholesale Corp. v. Robert Bosch LLC, No. IPR2016-00038
(P.T.A.B. Mar. 30, 2017) (“’974 Decision”); Costco Wholesale
Corp. v. Robert Bosch LLC, No. IPR2016-00034 (P.T.A.B.
Apr. 24, 2017) (“’698 Decision”). For the reasons stated be-
low, we reverse the Board’s decision regarding the ’264 pa-
tent and affirm the Board’s three other decisions.
BACKGROUND
Bosch owns the four patents at issue claiming beam
windshield wiper blades, known simply as beam blades.
For purposes of this appeal, beam blades have three main
elements: (1) a rubber wiper strip which contacts the wind-
shield; (2) a pre-curved, spring-elastic support element to
distribute force along the wiper strip; and (3) a wiper arm,
which moves the blade back and forth across the wind-
shield. Beam blades have generally been known in the art
for decades.
ROBERT BOSCH, LLC v. IANCU 3
Although the patents at issue all relate to beam blades,
the issues on appeal concern discrete limitations claimed
in each patent, which we summarize as follows. Claim 3 of
the ’264 patent recites a beam blade with a “wind deflection
strip,” or spoiler, which is “designed as a binary compo-
nent” and is mounted on the support element. ’264 patent
col. 8 ll. 17–18. Claim 13 of the ’905 patent is representa-
tive of that patent for purposes of this appeal and recites a
support element with end caps at both ends. ’905 patent
col. 8 ll. 16–18. Claim 1 of the ’974 patent recites a spoiler
“mounted directly to the convex surface of [the] support el-
ement so as to form a leading-edge face extending in a lon-
gitudinal direction of the support element.” ’974 patent col.
4 ll. 26–29. Finally, claim 1 of the ’698 patent recites that
the contact force of the wiper strip on the windshield is
greater in the center section than at the ends and that the
support element has a concave curvature sharper in the
center section than at the ends. ’698 patent col. 6 ll. 14–22.
Bosch sued Costco Wholesale Corp. (“Costco”) for in-
fringing the patents in suit in the District of Delaware, and
Costco petitioned for inter partes review (“IPR”). The
Board instituted review of the four patents in suit in addi-
tion to other Bosch patents such as U.S. Patent 8,099,823
(the “’823 patent”). In four final written decisions, the
Board held as obvious: (1) claim 3 of the of the ’264 patent
over certain prior art references, ’264 Decision, slip op. at
38; (2) claims 13, 17, and 18 of the ’905 patent over U.K.
Patent Application GB2106775 (“Prohaska”) and German
Patent 1,028,896 (“Hoyler”), ’905 Decision, slip op. at 32–
33; (3) claims 1, 2, and 8 of the ’974 patent over Prohaska
and U.S. Patent 3,192,551 (“Appel ’551”) or Hoyler, ’974 De-
cision, slip op. at 58; and (4) claim 1 of the ’698 patent over
U.S. Patent 4,807,326 (“Arai”) and U.S. Patent 4,028,770
(“Appel ’770”), ’698 Decision, slip op. at 48.
In arriving at its overall conclusions, the Board consid-
ered Bosch’s evidence of secondary considerations. Except
for the ’905 patent, the Board found that Bosch did not
4 ROBERT BOSCH, LLC v. IANCU
demonstrate a nexus between the evidence and the claimed
inventions. And even for the ’905 patent, the Board found
that the evidence of secondary considerations was weak
and entitled to little weight. ’905 Decision, slip op. at 29–
32.
Bosch appealed from the Board’s decisions. Costco sub-
sequently settled its dispute with Bosch and declined to
participate in the appeals. The PTO intervened to defend
the Board’s decisions as authorized under 35 U.S.C. § 143.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Our review of a Board decision is limited. In re Baxter
Int’l, Inc., 678 F.3d 1357, 1361 (Fed. Cir. 2012). We review
the Board’s legal determinations de novo, In re Elsner, 381
F.3d 1125, 1127 (Fed. Cir. 2004), but we review the Board’s
factual findings underlying those determinations for sub-
stantial evidence, In re Gartside, 203 F.3d 1305, 1316 (Fed.
Cir. 2000). A finding is supported by substantial evidence
if a reasonable mind might accept the evidence as adequate
to support the finding. Consol. Edison Co. v. NLRB, 305
U.S. 197, 229 (1938). “Where there is adequate and sub-
stantial evidence to support either of two contrary findings
of fact, the one chosen by the board is binding on the court
regardless of how we might have decided the issue if it had
been raised de novo.” Mishara Const. Co. v. United States,
230 Ct. Cl. 1008, 1009 (1982).
Obviousness is a question of law based on underlying
facts, including the scope and content of the prior art, dif-
ferences between the prior art and the claims at issue, the
level of ordinary skill, and relevant evidence of secondary
considerations. Graham v. John Deere Co. of Kan. City, 383
U.S. 1, 17–18 (1966). We have held that whether a skilled
artisan would have been motivated to combine prior art ref-
erences is also a question of fact. Wyers v. Master Lock Co.,
616 F.3d 1231, 1238–39 (Fed. Cir. 2010).
ROBERT BOSCH, LLC v. IANCU 5
We first address Bosch’s specific challenges to the
Board’s findings in its decisions concerning each of the four
patents at issue. We then consider Bosch’s more general
argument that the Board erred in its evaluation of the sec-
ondary considerations evidence.
I. ’264 Patent
We begin with the ’264 patent. Somewhat unusually,
both Bosch and the PTO argue that the Board’s obvious-
ness holding for this patent cannot stand. In the ’264 De-
cision, the Board held the ’264 patent’s claim 3, reciting a
binary spoiler, obvious over certain references. Slip op. at
38. However, the Board also held a claim in the related
’823 patent reciting the same binary spoiler not obvious
over the same references and arguments. Costco Wholesale
Corp. v. Robert Bosch LLC, No. IPR2016-00041, slip op. at
23 (P.T.A.B. Apr. 12, 2017) (“Petitioner has not provided a
reason supported by rational underpinnings . . . for why it
would have been obvious to include a binary component
. . . .”).
Unsurprisingly, the parties agree that both decisions
cannot be right. Bosch argues that “[n]othing could better
evidence an arbitrary and capricious decision than the very
same panel reaching exactly the opposite conclusion in two
proceedings on an identical issue.” Appellant’s Br. 65. The
PTO agrees, noting that partial reversal of the Board’s de-
cision would be proper because the Board itself acknowl-
edged its error but could not correct it because it had lost
jurisdiction over the case after Bosch’s appeal. Intervenor
Br. 38. Under these atypical circumstances, we agree with
the parties that the Board’s decision was arbitrary and ca-
pricious and thus reverse the Board’s unpatentability deci-
sion with respect to claim 3 of the ’264 patent.
6 ROBERT BOSCH, LLC v. IANCU
II. ’905 Patent
We now address Bosch’s appeal over the ’905 patent,
which focuses on the end caps limitation in claim 13. The
’305 patent depicts end caps 38 as follows:
’905 patent fig. 1 (annotations added). The end caps secure
the spring strips of the support element. Id. col. 4 ll. 31–
34.
The Board found that Hoyler taught this limitation by
disclosing a beam blade with “clamps” positioned at the
ends of the wiper to secure the springs of the support ele-
ment, as depicted at 6 below:
’905 Decision, slip op. at 19–20; Hoyler, J.A. 10235 (“The
longitudinal springs 5 are inserted in lateral slots, held to-
gether at the ends of the bar by the clamps 6.”), 10237.
On appeal, Bosch argues that Hoyler’s clamps do not
teach the end cap limitation because they do not fully cover
ROBERT BOSCH, LLC v. IANCU 7
the end and side of the blade and do not cover the sharp
corners that could scratch a car or person. Further, Bosch
contends that the Board “assumed ex cathedra power” and
relied on its own technical opinion instead of expert testi-
mony. Appellant’s Br. 56.
The PTO responds that substantial evidence supports
the Board’s finding that Hoyler taught the claimed end
caps because its clamps hold together the springs of the
support element. According to the PTO, the ’905 patent
never mentions scratch protection or that the end caps
must completely cover the ends.
We agree with the PTO that substantial evidence sup-
ports the Board’s finding regarding Hoyler’s clamps. The
Board reasonably found that Hoyler’s clamps cover the end
of the blade and hold the springs together, like the claimed
end caps in the ’905 patent. Bosch directs us to no persua-
sive evidence that the end caps must completely cover the
end or prevent scratching, and the ’905 patent nowhere
mentions such functions. We thus uphold the Board’s find-
ings.
III. ’974 Patent
Next we address the ’974 patent, which claims a spoiler
mounted on the support element. Bosch’s appeal with re-
spect to this patent focuses on alleged procedural defects in
the Board’s adjudication, namely that Bosch had insuffi-
cient notice of the Board’s ultimate theory of unpatentabil-
ity.
In its petition, Costco argued that it would have been
obvious to put a spoiler, as taught in Prohaska, on a beam
blade, as taught in either Appel ’551 or Hoyler, in order to
prevent the known problem of wind lift. Pet. at 22–23, ’974
Decision (Paper No. 1). As explained in Prohaska and the
’974 patent, wind lift is the tendency of a wiper blade to lift
off the windshield due to oncoming wind when a vehicle
travels at high speeds. Prohaska col. 1 ll. 8–21; ’974 patent
8 ROBERT BOSCH, LLC v. IANCU
col. 1 ll. 41–52. Bosch agreed that wind lift was a known
problem, but only for higher-profile conventional blades
like Prohaska that use a yoke structure to distribute force
along the blade, and not for lower-profile beam blades. ’974
Decision, slip op. at 31–32. The Board disagreed with
Bosch, as Prohaska generally described wind lift as being
caused by the air stream “striking the wiper blade later-
ally,” not the yoke structure. Id. at 32 (quoting Prohaska
col. 1 ll. 8–9). Further, the Board credited Costco’s rebuttal
argument based on U.S. Patent 3,418,679 (“Barth”) that it
was understood in the art that wind lift was caused by the
inverted triangle shape of the wiper strip, a feature com-
mon to conventional and beam blades. ’974 Decision, slip
op at 32–34.
On notice grounds, Bosch objected to the Board’s con-
sideration of Barth as evidence that wind lift was a known
problem for beam blades. Bosch argued that Barth was
only substantively raised in Costco’s reply and was not part
of any ground of obviousness. The Board disagreed because
Barth was cited in Costco’s petition and in its expert’s open-
ing declaration as part of the knowledge of a skilled arti-
san. Id. at 34. The Board also found that Bosch was on
notice of Costco’s contention in its petition that a skilled
artisan would put a spoiler on a beam blade to prevent
wind lift and that Bosch argued to the contrary in its re-
sponse. Id. at 35. Ultimately, the Board held claims 1, 2,
and 8 of the ’974 patent obvious over Prohaska and either
Appel ’551 or Hoyler. Id. at 58.
Bosch argues on appeal that Costco impermissibly
raised new arguments in its reply that a skilled artisan
would have considered the wind lift problem to be applica-
ble to beam blades and that the problem was caused by the
inverted triangle shape of the wiper strip. Under our deci-
sion in In re NuVasive, 841 F.3d 966 (Fed. Cir. 2016), Bosch
argues that the Board’s decision must be vacated.
ROBERT BOSCH, LLC v. IANCU 9
The PTO responds that the Board did not change theo-
ries and properly cited Costco’s rebuttal evidence, which
was submitted with its petition and accompanying expert
declaration.
Under the Administrative Procedure Act and due pro-
cess guarantees, a patent owner in an IPR is “entitled to
notice of and a fair opportunity to meet the grounds of re-
jection.” NuVasive, 841 F.3d at 971 (quoting Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)).
Whether a patent owner was given such notice is an issue
of law we review de novo. Id. at 970. We agree with the
PTO that under these standards, the Board’s adjudication
fully comported with Bosch’s procedural rights.
Contrary to Bosch’s argument, Costco’s petition put
Bosch on notice of its theory that a skilled artisan would
put a spoiler on a beam blade to combat wind lift. The pe-
tition set forth that a skilled artisan, “knowing the ad-
vantages of spoilers that eliminated liftoff tendency,”
would combine the spoiler of Prohaska with the beam blade
support element of Appel ’551 or Hoyler to “counter wind-
lift.” Pet’n at 22–23, ’974 Decision (Paper No. 1). The com-
bination, according to Costco, was “nothing more than a
simple arrangement or aggregation of old elements, each
performing the same function it had been known to per-
form.” Id. at 23–24. Bosch then took the opportunity to
respond to this argument, contending that a person of or-
dinary skill would understand wind lift to only be a prob-
lem for the higher-profile support element of conventional
blades.
When Costco cited Barth in its reply, it properly relied
on that reference as rebuttal evidence to show that wind
lift was understood in the art to be caused by the shape of
the wiper strip, not the profile of the support element. It
was Bosch who raised the profile issue, and it is not incum-
bent on the Board or the petitioner “to anticipate and set
forth every legal or factual issue that might arise in the
10 ROBERT BOSCH, LLC v. IANCU
course of the trial.” Genzyme Therapeutic Prod. Ltd. P’ship
v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir.
2016). Our decision in Genzyme is instructive. There, we
rejected a patent owner’s notice argument based on two ref-
erences discussed in an IPR petitioner’s reply to indicate
the state of the prior art. Id. at 1369. We concluded that
“the Board may consider a prior art reference to show the
state of the art at the time of the invention, regardless of
whether that reference was cited in the Board’s institution
decision.” Id. at 1369. That is what the Board did here.
See ’974 Decision, slip op. at 33–34 (crediting Costco’s ex-
planation concerning Barth and finding that “it was known
that wiper blades having an inverted isosceles triangle
cross sectional profile produce a lift off force on the wiper
when subject to relative wind in both conventional and
beam blades”). Further, like Genzyme, and unlike the sit-
uation in NuVasive, the Board did not rely on Barth to
teach any claim limitations. Compare Genzyme, 825 F.3d
at 1369, with NuVasive, 841 F.3d at 971, 975 (vacating and
remanding based on insufficient notice where the Board re-
lied on a reference’s embodiment, raised for the first time
on reply, as the only prior art disclosure of a claim limita-
tion).
Because the Board afforded Bosch ample process and
properly considered Barth in determining the knowledge of
a skilled artisan, we affirm the Board’s judgment of obvi-
ousness with respect to claims 1, 7, and 8 of the ’974 patent.
IV. ’698 Patent
We last address claim 1 of the ’698 patent, which has
two limitations relevant on appeal. First, the contact force
of the wiper strip must be “greater in [the] center section
than in at least one of . . . two end sections” (the “force lim-
itation”). ’698 patent col. 6 ll. 14–15. Second, the support
element must have a concave curvature curved more
sharply in the center than at the ends (the “curvature lim-
itation”). Id. col. 6 ll. 20–22. Bosch challenges the Board’s
ROBERT BOSCH, LLC v. IANCU 11
finding that these limitations were known in the art and
its conclusion that claim 1 would have been obvious.
In its final written decision, the Board determined that
no terms in claim 1 required construction because neither
party proposed any specific constructions. ’698 Decision,
slip op. at 9–10. However, the Board did observe that claim
1 did not require any particular magnitude of force or cur-
vature differential between the center and ends. Id. at 28,
32. Bosch points to no error in this interpretation on ap-
peal.
The Board held claim 1 obvious over Appel ’770 and
Arai, which we discuss here. Appel ’770 was issued in 1977
and discloses beam blades where multiple variables are de-
scribed as influencing the force distribution of the wiper.
These variables include “the width, thickness, and degree
of curvature” of the blade. Id. at 17; see Appel ’770 col. 3 ll.
14–44. According to the reference, “it is also possible to
combine, in a number of different ways, the various con-
structional approaches incorporating progressive dimen-
sional variations in free-form curvature, width and/or
thickness to provide a superstructure . . . having the de-
sired uniform pressure loading characteristics.” Appel ’770
col. 3 ll. 46–51. The Board found that these disclosures
suggested “a wide range of design options to a person of
ordinary skill.” ’698 Decision, slip op. at 18.
Appel ’770 incorporates by reference Appel ’551, Appel
’770 col. 3 ll. 18–20, and the Board also considered the
teachings of the latter reference in its obviousness analy-
sis. Similar to Appel ’770, Appel ’551 describes a beam
blade that distributes pressure “relatively uniformly along
the length of the blade.” Appel ’551, col. 1 ll. 26–27. Ulti-
mately, the combination of the support element and the
rubber wiping blade determines the final pressure on the
windshield. Id. col. 3 ll. 22–26. Three design options are
presented to provide uniform pressure: “(1) a parabolic
form of free curvature in a spring of uniform section; (2) a
12 ROBERT BOSCH, LLC v. IANCU
parabolic form of width in a spring of uniform thickness
and uniform curvature; or (3) a uniformly tapered thick-
ness in a spring of uniform width and uniform curvature.”
Id. col. 3 ll. 10–16. 1 The reference also explains that these
designs can be combined in various ways to provide uni-
form pressure. Id. col. 3 ll. 16–22.
However, Appel ’551 provides an embodiment that does
not adopt any of the options designed for uniform pressure.
Instead of using the “theoretically proper curvature,” id.
col. 4 ll. 7–8, “as a practical compromise” the embodiment
has “a circular curvature terminating somewhat short of
straight end portions,” which “has been found satisfactory
due to the ability of the rubber wiper blade to compensate
for a limited degree of non-uniform spring load,” id. col. 4
ll. 12–17. The specification indicates that this non-ideal
curvature—i.e., a circular curvature “modified at the ends
with somewhat less curvature,” id. col. 3 l. 75–col. 4 l. 1—
is nonetheless “adapted to provide uniform contact pres-
sure,” id. col. 4 ll. 1–2. The Board found that this embodi-
ment taught the curvature limitation claimed in the ’698
patent. ’698 Decision, slip op. at 24 (“This described struc-
ture, less curvature at the ends, is the same structure dis-
closed in the ’698 patent to provide reduced pressure at the
end portions.”).
The other reference cited by the Board, Arai, issued in
1989 and is also directed to beam blades. Like Appel ’551,
Arai discloses blades with a “uniform” or “relatively uni-
form” pressure distribution on the windshield. Arai col. 1
ll. 31–32, col. 3 ll. 43–44. Figure 7 shows the change in
1 In this context, parabolic curvature refers to a cur-
vature that is sharper in the middle than the ends. Uni-
form, or circular, curvature means a constant curvature
throughout. Holding width and thickness constant, a
sharper curvature at a given section exerts a greater con-
tact force. See Appellant’s Br. 38 n.58.
ROBERT BOSCH, LLC v. IANCU 13
pressure distribution “according to the invention,” id. col. 3
ll. 51–52, and is reproduced below:
The high pressure curve shows a somewhat higher contact
force in the center than at the ends. See ’698 Decision, slip
op. at 16–17. Arai’s specification acknowledges the pres-
sure change and describes it as “small.” Arai col. 4 ll. 1–3.
The Board found that this disclosure met the force limita-
tion because claim 1 did not require any specific magnitude
of force differential between the center and ends. ’698 De-
cision, slip op. at 28–29.
Ultimately, the Board found that the combination of
Appel ’770 (including the incorporated Appel ’551) and Arai
taught each limitation in claim 1 of the ’698 patent. Id. at
29. The Board found that a skilled artisan would have com-
bined the references, each directed to beam blades, because
Appel ’770 taught that various curvatures could be used,
and because Appel ’551 taught that having lesser curva-
ture at the ends than in the center was a practical compro-
mise resulting in some non-uniform spring load. Id. at 31–
32. The Board considered Bosch’s evidence of secondary
considerations but afforded it little weight. Id. at 43. In
light of all the evidence, the Board concluded that claim 1
would have been obvious. Id. at 43–44.
On appeal, Bosch argues that Arai did not teach the
claimed force limitation. Further, Bosch argues that each
cited reference favored uniform contact force, leaving the
14 ROBERT BOSCH, LLC v. IANCU
Board’s motivation to combine finding supported only by
hindsight.
The PTO responds that the references both taught the
contested limitations, that combining them only required
ordinary skill, and that the Board’s findings are supported
by substantial evidence.
We agree with the PTO and conclude that substantial
evidence supports the Board’s findings. We begin with the
contact force limitation and conclude that substantial evi-
dence supports the Board’s finding that Arai disclosed that
limitation. While we agree with Bosch that Arai generally
describes uniform contact pressure as desirable, it also con-
templates somewhat lesser contact pressure at the ends
than the center as encompassed within its invention. Fig-
ure 7, which Arai describes as “the result according to the
invention,” clearly shows lesser contact pressure at the
ends than the center. Arai col. 3 ll. 51–52, fig. 7. Arai no-
where indicates that absolute uniformity is required. Be-
cause the force limitation undisputedly does not require
any particular disparity in contact force between the center
and the ends, substantial evidence supports the Board’s
finding that Arai taught the force limitation.
The Board determined that a skilled artisan would
make the claimed wiper blade by adopting the curvature
taught in Appel ’770 and the incorporated Appel ’551. We
conclude that substantial evidence also supports this find-
ing. As the Board found, Appel ’770 taught a wide range of
design options to a person of ordinary skill. ’698 Decision,
slip op. at 17–18. Several of those options are presented in
Appel ’551 as designed for uniform pressure, i.e., parabolic
or circular curvature with varying width or thickness. Ap-
pel ’551 col. 3 ll. 9–16. But contrary to a “theoretically
proper curvature,” id. col. 4 ll. 7–8, Appel ’551 also sets
forth, “as a practical compromise,” id. col. 4 ll. 12–14, the
same curvature Bosch claimed in the ’698 patent: gener-
ally circular curvature but with somewhat less curvature
ROBERT BOSCH, LLC v. IANCU 15
at the ends, id. col. 3 l. 75–col. 4 l. 1. The reference explains
that this curvature leads to some “non-uniform spring
load,” id. col. 4 ll. 16–17, which influences the ultimate
pressure of the wiper blade on the windshield, id. col. 3 ll.
22–26. In light of these teachings, the Board found that a
skilled artisan would only need to exercise ordinary skill in
applying the “practical compromise” curvature of Appel
’551 to achieve non-uniform force as contemplated in Arai.
’698 Decision, slip op. at 31–32.
The Board took note of evidence in tension with its find-
ing. Most notably, Appel ’551 states that the “practical
compromise” curvature is nonetheless “adapted to provide
uniform contact pressure.” ’698 Decision, slip op. at 24–25
(discussing Appel ’551 col. 4 ll. 1–2); see also Appel ’551 col.
4 ll. 15–17 (describing how the rubber wiper blade can com-
pensate for “a limited degree of non-uniform spring load”).
But the Board observed that the ’698 patent claimed the
same curvature to achieve the opposite result of non-uni-
form contact force and that Appel ’551 indicated that this
curvature, unlike the theoretically optimal curvature,
would introduce non-uniform spring load. ’698 Decision,
slip op. at 24–26. In light of this conflicting evidence, we
conclude that a reasonable fact finder could accept that the
“practical compromise” in curvature would somewhat com-
promise the uniformity of a wiper blade’s contact force.
We note that the Board’s finding is also consistent with
Arai, which discloses embodiments with non-uniform con-
tact pressure as nonetheless representative of its invention
directed to uniform contact pressure. Arai col. 3 ll. 51–52.
Like Arai, Appel ’551 aims to distribute “pressure load rel-
atively uniformly” along the blade but never indicates that
absolute uniformity is necessary. Appel ’551 col. 1 ll. 23–
28 (emphasis added).
For similar reasons, we reject Bosch’s assertion that
the references teach away from the claimed invention. “A
reference does not teach away . . . if it merely expresses a
16 ROBERT BOSCH, LLC v. IANCU
general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investiga-
tion into the invention claimed.” DePuy Spine, Inc. v. Med-
tronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir.
2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004)). To the extent there is any difference between the
relatively uniform pressure distribution disclosed in the
prior art and the somewhat non-uniform distribution
claimed in the ’698 patent, neither cited reference discred-
its the latter, as we have already explained.
We thus conclude that substantial evidence supports
the Board’s findings that the ’698 patent claimed no more
than using known beam blade components in known ways,
and that a skilled artisan exercising ordinary skill would
have combined the cited references.
V. Secondary Considerations
We last address the Board’s analysis of secondary con-
siderations, which Bosch challenges as undermining each
of the Board’s judgments.
The Board considered Bosch’s objective evidence.
Bosch submitted the same secondary considerations evi-
dence in support of each patent, but the Board only found
a nexus between the evidence and the claims for the ’905
patent. ’905 Decision, slip op. at 28.
Even for the ’905 patent, the Board afforded Bosch’s
objective evidence little weight. First, Bosch submitted ev-
idence that its wiper blades won three awards. The Board
gave minimal weight to this evidence of industry praise be-
cause Bosch provided “no description of these awards, cop-
ies of them, or persuasive evidence as to what these awards
were for and how specifically they relate to the claimed in-
vention.” Id. at 29–30.
Next, the Board considered Bosch’s evidence of long-
felt need and the alleged failure of other beam blades. The
Board found that there was not a long-felt need solved by
ROBERT BOSCH, LLC v. IANCU 17
the ’905 patent because the prior art already provided
wiper blades with the claimed components. Id. at 30.
Bosch also alleged copying by unspecified “knockoffs.”
J.A. 11524. The Board found no persuasive evidence of ef-
forts to replicate Bosch’s specific products and thus gave no
weight to Bosch’s evidence. ’905 Decision, slip op. at 31.
Bosch further presented sales figures of about $70M
over three years that it asserted were “significant” and
showed commercial success. J.A. 11523. However, the
Board gave this evidence little weight because it consisted
only of raw sales data lacking supporting documentation,
any explanation of how the sales were significant, or any
comparison to prior or subsequent years’ sales. ’905 Deci-
sion, slip op. at 31–32. Likewise, the Board gave little
weight to Bosch’s evidence of licensing its family of beam
blade patents. Id. at 32.
On appeal, Bosch argues that the Board erred in not
giving a presumption of nexus to the ’698 and ’974 patents
and that the Board did not give sufficient weight to Bosch’s
objective evidence. The PTO responds that the Board cor-
rectly weighed Bosch’s evidence of secondary considera-
tions.
We agree with the PTO. Even assuming that there is
a nexus between the objective evidence and the claims of
each patent, and having considered Bosch’s arguments
challenging the Board’s weighing of the evidence, we con-
clude that Bosch has not demonstrated reversible error in
the Board’s findings. In light of the totality of the evidence,
Bosch’s sparse evidence of secondary considerations does
not outweigh the case for obviousness based on the prior
art. Consequently, we affirm the Board’s ultimate judg-
ments of unpatentability with respect to the instituted
claims of the ’905, ’974, and ’698 patents.
18 ROBERT BOSCH, LLC v. IANCU
CONCLUSION
We have considered Bosch’s remaining arguments but
find them unpersuasive. For the foregoing reasons, we re-
verse the Board’s judgment with respect to the ’264 patent
and affirm the Board’s judgment of unpatentability with
respect to the ’905, ’974, and ’698 patents.
AFFIRMED-IN-PART, REVERSED-IN-PART
COSTS
No costs.