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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Permissible Repair Doctrine Applies Where Patentee Recommends Changing the Accused Part

Posted in Summary Judgment

Robert Bosch LLC v. Trico Prods Corp., No. 12 C 437, Slip Op. (N.D. Ill. May 21, 2014) (Grady, Sen. J.).

Judge Grady denied defendants’ (collectively “Trico”) motion for summary judgment of noninfringement with respect to Trico’s Duralast Flex Blade windshield wiper blade in this patent infringement dispute.  

As an initial matter, the Court held that a first sale in the United States is still required for patent exhaustion, even if a US first sale is not required for copyright exhaustion.  

To the extent that plaintiff Robert Bosch (“Bosch”) sold some wiper blades in the US, the Court addressed whether Trico’s acts fell within the doctrine of permissible repair.  The Court held that a consumer replacing the wiper blade in a wiper assembly with a Trico wiper blade was a permissible repair, noting that Bosch recommended replacing the blades every six months.  The Court also noted that there was an established market for replacement wiper blades.  But the Court withheld ruling upon the issue until there was a more developed record regarding the differences between patent claims that covered the entire wiper system and other claims that allegedly covered just the wiper blades, as well as related case law.

The Court held that there was not sufficient evidence that Bosch’s acquisition of Unipoint, from whom Trico purchased the accused products, prevented Bosch’s claims to pre-acquisition sales to Trico.  Trico failed to provide the relevant language of the acquisition agreements to determine whether the agreements prevented suits against customers.  And Trico did not support or sufficiently develop its theory that Bosch benefited from Unipoint’s pre-acquisition sales to Trico and therefore should be barred from suit.  The Court, therefore, denied the motion.