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.
Snap-On Inc. v. Robert Bosch, LLC, No. 09 C 6914, Slip Op. (N.D. Ill. July 11, 2012) (Kocoras, J.).
Judge Kocoras denied defendants’ Beissbarth GmbH (“Beissbarth”) and Robert Bosch, GmbH’s (“Bosch Germany”) (collectively “German Defendants”) Fed. R. Civ. P. 12(b)(6) motion to dismiss. As an initial matter, the court denied plaintiff Snap-On’s argument that the motion was an improper Rule 12(b) motion pursuant to Rule 12(g)(2) because the German Defendants previously filed a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction. The Court ordered limited jurisdictional discovery prior to deciding that motion. That discovery had become “highly contested.” The German Defendants sought and received the Court’s leave to file this Rule 12(b)(6) motion because were the motion granted, it would have removed the need for that discovery. The Rule 12(b)(6) motion, therefore, was not filed for dilatory purposes and it promoted the policies behind Rule 12(g).
Of particular note, the Court held the following with respect to the Rule 12(b)(6) motion:
- General allegations that all defendants directly infringed were sufficient. Snap-On was not required to make separate infringement allegations as to each defendant by name.
- Snap-On’s claim that the German Defendants used the product in Illinois was sufficient to plead direct infringement.
- Snap-On was not estopped from pursuing inducement claims based upon Snap-On’s statements to the Court regarding claiming direct infringement against the German Defendants. Those statements were about direct infringement as opposed to joint infringement claims, and had no bearing upon indirect infringement claims.
- Snap-On’s allegations were sufficient to plead inducement. Snap-On alleged the German Defendants worked with defendant Robert Bosch USA to develop, price, and market the accused products and that Snap-On sent Bosch a warning letter prior to the US introduction of the accused product. Snap-On’s failure to use the words “induce” or “inducement” did not doom its claim because Snap-On still pled the elements of inducement.
Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 2007-1243, 1244, Slip Op. (Fed. Cir. Jan. 7, 2008).*
The Federal Circuit affirmed the Northern District jury’s obviousness verdict, and Judge St. Eve’s denial of defendant’s inequitable conduct claim. But the Federal Circuit reversed the Northern District’s construction of “power conversion circuit” and remanded for further proceedings and, perhaps, a new trial.** The Federal Circuit held that the Northern District relied largely upon claim differentiation for its construction and, in the process, gave the patent scope beyond the disclosed invention.
The Federal Circuit held that the Northern District’s pre-KSR obviousness jury instruction was not reversible because defendants identified no evidence in the record that supported an obviousness finding even under the broader KSR standard.
* Click here for extensive coverage of this case in the Blog’s archives.
** The Court scheduled a status conference early next week. We may learn at that conference whether a new trial is being scheduled or whether summary judgment will be briefed or a settlement conference scheduled first.