Robert Bosch LLC v. Trico Products Corporation et al
Filing
202
MEMORANDUM OPINION Signed by the Honorable John F. Grady on 5/21/2014. Mailed notice(cdh, )
12-437.141-RSK
May 21, 2014
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
ROBERT BOSCH LLC,
)
)
Plaintiff,
)
)
v.
)
)
TRICO PRODUCTS CORPORATION, and
)
TRICO PRODUCTS,
)
)
Defendants.
)
___________________________________)
TRICO PRODUCTS CORPORATION,
)
)
Counter-Plaintiff,
)
)
v.
)
)
ROBERT BOSCH LLC and ROBERT BOSCH )
GmbH,
)
)
Counter-Defendants.
)
No. 12 C 437
MEMORANDUM OPINION
Before the court is defendant Trico Products Corporation’s
(“Trico”) motion for summary judgment of noninfringement of U.S.
Patent Nos. 6,553,607 (the “‘607 patent”), 6,530,111 (the “‘111
patent”), 6,944,905 (the “‘905 patent”), and with respect to
Trico’s “Duralast Flex Blade.” For the reasons explained below, we
deny Trico’s motion.
BACKGROUND
Trico manufactures windshield wiper blades.
(Trico’s L.R.
56.1 Stmt. of Material Facts (“Trico’s Stmt.”) ¶ 1.)
Plaintiff
- 2 -
Robert Bosch LLC (“Bosch”) manufactures windshield-wiper systems
and sells them to automobile manufacturers.
sells aftermarket replacement blades.
(Id. at ¶ 2.)
(Id.)
It also
The ‘607 patent and
the ‘111 patent each claim a “wiper apparatus” requiring, among
other things, a “wiper arm” and a “wiper blade.”
(Id. at ¶ 22.)
Bosch alleges that Trico’s wiper blades infringe the ‘607 and ‘111
patents when combined with a pre-existing wiper arm.
Trico argues
that it is entitled to summary judgment on this claim under the
doctrine of permissible repair.
Bosch also alleges that Trico’s Duralast Flex Blade infringes
the ‘905 patent, which claims a windshield wiper blade.
Since
2002, Unipoint Electric Manufacturing Co., Ltd. (“Unipoint”) has
manufactured the Duralast Flex Blade for Trico.
(Id. at ¶ 20.)
Robert Bosch GmbH (“Bosch GmbH”) acquired Unipoint in 2011.1
In an
email dated August 16, 2011, Unipoint assured Trico that their
business relationship would “follow the ordinary business course”
after Bosch GmbH acquired the company.
(Trico’s Stmt. ¶ 31.)
The
email attached a letter from Bosch GmbH addressed to Unipoint,
asking Unipoint to reassure its customers that “Robert Bosch GmbH
will fulfill all contracts and agreements which were concluded by
[Unipoint] with their customers in a manner consistent with their
1/
Bosch is a wholly-owned subsidiary of Bosch GmbH. (See Bosch GmbH
Answer to Fourth Am. Counterclaims ¶ 12.) The parties disagree about the exact
date when Bosch GmbH completed the acquisition. (See Bosch's Resp. to Trico's
Stmt. ¶ 30.) But that dispute is irrelevant for the present motion.
- 3 -
past practices after the Closing.” (Id.; see also Email Dated Aug.
16, 2011, attached as Ex. 9 to Bosch’s Resp. to Trico’s Stmt.)
In
March 2012, Trico asked Unipoint to confirm that “Trico has the
right to use or sell those products manufactured for and sold to
Trico by Unipoint.”
(Trico’s Stmt. ¶ 32.)
Unipoint responded as
follows:
Unipoint became a member of the Bosch Group since Dec. 1,
2011. All products sold to Trico by Unipoint since takeover Dec. 1, 2011 under the existing supply agreements
between the parties may be sold by Trico to third parties
as stipulated in the respective supply agreements.
(Id. at ¶ 33; see also Letter Dated March 22, 2012, attached as Ex.
D to Kubasiak Decl., attached as Ex. 2 to Trico’s Stmt.)
Trico
argues that Unipoint’s assurances, and its affiliation with Bosch,
prohibit Bosch from pursuing any claim against Trico for sales of
Unipoint-manufactured Duralast Flex Blades.
DISCUSSION
A.
Legal Standard
“The court shall grant summary judgment if the movant shows
that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
P. 56(a).
Fed. R. Civ.
In considering such a motion, the court construes the
evidence and all inferences that reasonably can be drawn therefrom
in the light most favorable to the nonmoving party.
See Pitasi v.
Gartner Group, Inc., 184 F.3d 709, 714 (7th Cir. 1999). “The court
need consider only the cited materials, but it may consider other
- 4 -
materials in the record.”
Fed. R. Civ. P. 56(c)(3).
judgment should be denied if the dispute is ‘genuine’:
“Summary
‘if the
evidence is such that a reasonable jury could return a verdict for
the nonmoving party.’”
Talanda v. KFC Nat’l Mgmt. Co., 140 F.3d
1090, 1095 (7th Cir. 1998) (quoting Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986)).
The court will enter summary
judgment against a party who does not “come forward with evidence
that would reasonably permit the finder of fact to find in [its]
favor on a material question.” McGrath v. Gillis, 44 F.3d 567, 569
(7th Cir. 1995).
B.
Permissible Repair
The unrestricted sale of a patented product “exhausts” the
patentee’s right to control the purchaser’s use of the product.
Jazz Photo Corp. v. International Trade Com'n, 264 F.3d 1094, 1105
(Fed. Cir. 2001). After the sale, the purchaser “has the rights of
any owner of personal property, including the right to use it,
repair it, modify it, discard it, or resell it, subject only to
overriding conditions of the sale.”
repair
the
purchased
product
Id. at 1102.
does
not
But the right to
include
the
right
to
“construct an essentially new article on the template of the
original, for the right to make the article remains with the
patentee.”
Id.
There is a “continuum” between permissible repair
and impermissible reconstruction. Id.; see also Aktiebolag v. E.J.
Co., 121 F.3d 669, 674 (Fed. Cir. 1997) (“[T]here is no bright-line
- 5 -
test
for
determining
occurred.”).
whether
reconstruction
or
repair
has
Relevant factors include: “the nature of the actions
by the defendant, the nature of the device and how it is designed
(namely, whether one of the components of the patented combination
has a shorter useful life than the whole), whether a market has
developed to manufacture or service the part at issue and objective
evidence of the intent of the patentee.”
Aktiebolag, 121 F.3d at
673. Besides these factors, the Federal Circuit requires the party
asserting permissible repair to show that the repaired device was
first sold in the United States.
See Jazz Photo, 264 F.3d at 1105
(“United States patent rights are not exhausted by products of
foreign provenance. To invoke the protection of the first sale
doctrine, the authorized first sale must have occurred under the
United States patent.”).
1.
Territoriality
Trico
argues
that
the
Supreme
Court
eliminated
the
territoriality requirement in Kirtsaeng v. John Wiley & Sons, Inc.,
133 S.Ct. 1351 (2013).
Kirtsaeng abolished the “first sale” rule
as applied to claims for copyright infringement.
See id. at 1371.
The Federal Circuit may at some point reconsider Jazz Photo in
light of the Supreme Court’s analysis in Kirtsaeng, but it has not
done so yet. It appears that only one district court has addressed
Kirtsaeng’s impact on Jazz Photo. See Lexmark Intern., Inc. v. Ink
Technologies Printer Supplies, LLC, Case No. 1:10–cv–564, 2014 WL
- 6 -
1273665, *2-7 (S.D. Ohio Mar. 27, 2014).
The Lexmark court
concluded after careful analysis that Kirtsaeng does not overrule
Jazz Photo.
cursory.
Id. at *2-7.
Trico’s argument to the contrary is
(See Trico Reply at 3.)
We decline to hold that a first
sale in the United States is no longer a requirement for patent
exhaustion.
Bosch contends that some of the relevant wiper
apparatuses were first sold abroad, then imported into the United
States. (See Bosch’s Stmt. of Add’l Facts ¶¶ 48-50, 52-56.) Trico
concedes the point, at least at this stage of the case.
(See
Trico’s Resp. to Bosch’s Stmt. of Add’l Facts ¶¶ 50, 56.)
But
Bosch admits that it also sold some patented apparatuses within the
United States.
(See Bosch’s Stmt. of Add’l Facts ¶¶ 42- 44.)
As
to those devices, the doctrine of permissible repair may still
apply.
2.
Whether Wiper-Blade Replacement Constitutes Permissible
Repair
We think it is clear that, in the abstract, vehicle owners who
replace
wiper
blades
with
Trico’s
products
repaired the purchased wiper “apparatus.”
permissibly
Bosch recommends that
consumers replace wiper blades every six months.
¶ 39.)
have
(See Trico Stmt.
There is no evidence in the record about the expected life
of the entire wiper system, including the wiper arm.
But the
parties appear to agree — consistent with the experiences of anyone
who has ever owned a car — that the “apparatus” is expected to
outlast the blades. See Aktiebolag, 121 F.3d at 673 (the fact that
- 7 -
the replaced component wears out sooner than the entire combination
supports finding permissible repair).
Both Trico and Bosch sell
aftermarket replacement blades, which supports the conclusion that
there is a well-developed market for replacement parts.
See id.
(an established market for replacement parts supports a finding of
permissible repair).
Finally, the act of replacing a wiper blade
is analogous to the repair of other devices that Supreme Court and
the Federal Circuit have held to be permissible.
See
Wilson v.
Simpson, 50 U.S. 109, 1123 (1850) (replacing the blades of a
patented planing machine constituted permissible repair); Aro Mfg.
Co. v. Convertible Top Replacement Co., 365 U.S. 336, 346 (1961)
(replacing the worn fabric cover of a patented convertible top was
permissible repair); Kendall Co. v. Progressive Medical Technology,
Inc., 85 F.3d 1570, 1574-75 (Fed. Cir. 1996) (replacing the
pressure sleeves in a patented medical device was permissible
repair);
FMC Corp. v. Up-Right, Inc., 21 F.3d 1073, 1077-79 (Fed.
Cir. 1994) (replacing the worn “picking heads” of a harvester was
permissible repair).
Bosch argues that wiper-blade replacement
constitutes reconstruction because of the alleged differences
between parties’ products: if, as Trico argues, its wiper blades do
not infringe Bosch’s patents, then they must be so different from
the patented product that their use constitutes impermissible
reconstruction.
(See Bosch Resp. at 11.)
In support of this
argument, Bosch cites cases discussing the difference between
- 8 -
repair and reconstruction, generally.
(Id. at 12.)
The Supreme
Court and the Federal Circuit have refined the distinction between
the two concepts in cases applying the doctrine to various devices.
Those cases support finding permissible repair in this case.
supra.)
(See
Conversely, Bosch has not cited any case in which a court
has held that replacing a part analogous to the wiper blades in
this case constituted impermissible reconstruction.
The more difficult question is whether Bosch’s wiper-blade
patents (e.g., the ‘905 patent) render the permissible-repair
doctrine inapplicable.
The parties agree that the ‘111 and ‘607
patents are “combination” patents.
A “combination patent covers
only the totality of the elements in the claim and that no element,
separately viewed, is within the grant.”
Aro, 365 U.S. at 344.
This is so even if a particular component is “essential” to the
combination as a whole:
No element, not itself separately patented, that
constitutes one of the elements of a combination patent
is entitled to patent monopoly, however essential it may
be to the patented combination and no matter how costly
or difficult replacement may be.
Id. at 345 (emphasis added).
Bosch argues that unlike the fabric
covers in Aro, its wiper blades are patented, albeit by separate
patents.
Trico
So, according to Bosch, replacing the wiper blade with a
product
infringes
both
the
component
patents
and
the
combination patents. What little case law there is on this subject
tends to support Bosch’s argument. In Warner & Swasey Co. v. Held,
- 9 -
256 F.Supp. 303, 311 (E.D. Wis. 1966), the court reasoned that the
existence of a separate patent on one
component of the patented
combination negated the inference that “in selling the combination
[the patentee] contemplates or intends licensing such purchaser to
replace the patented part from any source other than himself.”2
The court in
F.Supp.
1397
R2 Medical Systems, Inc. v. Katecho, Inc., 931
(N.D.Ill.
1996)
followed
Warner
&
Swasey
and
elaborated on its reasoning:
Where the part is unpatented, the Supreme Court has
emphasized that the critical question is whether the
entire combination is exhausted.
But if the new part is protected under separate patent,
the court does not inquire whether the entire combination
is exhausted upon the replacement of the worn part.
Replacement with the patented part does not infringe the
combination patent because that separate patent ascribes
the status of the combination to that part. The separate
patent does not render the inventiveness of the component
an “essential” element of the invention of the
combination. Aro I clearly rejected this analysis.
Rather, replacement infringes the combination patent
because the purchaser engages in an unauthorized use of
the combination by configuring it with an element that
infringes another patent of the patent owner. Whether
considered a form of unauthorized use or reconstruction,
the purchaser has no license to maintain the “use of the
whole” through elements that infringe the combination
patent owner’s separate patent. Thus, in contrast to the
repair and reconstruction inquiry, R2's legal action
under the system patents does not challenge the use of
the
electrode
elements,
“separately
viewed.”
It
2/
The Fifth Circuit Court of Appeals cited Warner & Swasey with approval
in Hensley Equipment Co. v. Esco Corp., 383 F.2d 252, 260 (5th Cir. 1967). But
unlike this case, Hensley appears to have involved multiple claims within a
single patent. See id. at 259-60. If the ‘111 and ‘607 patents claimed wiper
blades and Trico’s products infringed those claims, then the doctrine of
permissible repair would not excuse that infringement. But the question here is
whether infringing a separate component patent also infringes the combination
patent.
- 10 -
challenges a particular use of the combination with the
infringing electrodes.
Id. at 1445-46 (footnote omitted).
Trico argues that this reasoning is inconsistent with the
Supreme
Court’s
decision
in
Quanta
Computer,
Electronics, Inc., 553 U.S. 617 (2008).
Inc.
v.
LG
Quanta held that a
patentee exhausts its patent rights by selling a product that
substantially embodies, but only partially practices, the patent.
Id. at 630-35. Trico relies in particular on the following passage
from the Court’s opinion:
With regard to LGE’s argument that exhaustion does not
apply across patents, we agree on the general principle:
The sale of a device that practices patent A does not, by
virtue of practicing patent A, exhaust patent B. But if
the device practices patent A while substantially
embodying patent B, its relationship to patent A does not
prevent exhaustion of patent B. For example, if the
Univis lens blanks had been composed of shatter-resistant
glass under patent A, the blanks would nonetheless have
substantially embodied, and therefore exhausted, patent
B for the finished lenses. This case is no different.
While each Intel microprocessor and chipset practices
thousands of individual patents, including some LGE
patents not at issue in this case, the exhaustion
analysis is not altered by the fact that more than one
patent is practiced by the same product. The relevant
consideration is whether the Intel Products that
partially practice a patent — by, for example, embodying
its essential features — exhaust that patent.
Id. at 634-35 (emphasis in original). Trico construes this passage
to require patent-by-patent analysis in cases involving exhaustion.
But the issue in Quanta was substantially different than the issue
here.
The Court did not hold, or even suggest, that replacing a
- 11 -
portion of a patented combination with a separately patented
component only infringes the component patent.
Notwithstanding
the
lack
of
contrary
authority,
we
have
reservations about the reasoning in Warner & Swasey and R2 Medical
Systems.
Both courts emphasized the patentee’s expectations and
intentions.
See
Warner
&
Swasey,
256
F.Supp.
at
311
(“The
patentee, therefore, must have contemplated when he sold the
combination that unless he extended to the purchaser a license to
replace such parts from any available source, such combination
would be of little use to the purchaser.”); see also R2 Medical
Systems, 931 F.Supp. at 1446 (“It is because the patent owner’s
common ownership of the component patent negates the presumption
that his sale of the patented combination also includes a license
to
preserve
the
entire
combination
through
the
use
of
the
infringing device as an element of the patented combination.”).
But as the Supreme Court explained in Aro, “the claims made in the
patent are the sole measure of the grant.”
Aro, 365 U.S. at 339.
If the ‘111 and ‘607 patents do not claim wiper blades, how can an
individual who replaces the wiper blade infringe those patents?
Also, what if the combination patent predates the component patent?
Does the component patent retroactively expand the scope of the
combination patent to cover the previously unpatented component?
We are not prepared at this time to reject Warner & Swasey and R2
Medical.
But we have sufficient doubts about whether they were
- 12 -
correctly decided to withhold ruling pending a more developed
record.
C.
Whether the Unipoint Acquisition Bars Bosch’s Claim That
Trico’s Duralast Flex Blade Infringes its Patents
Trico makes essentially two arguments in support of its claim
that Bosch cannot sue it for selling Unipoint-manufactured blades.
First, it argues that Unipoint — as a member of the “Bosch Group”
— promised that it would “fulfill all contracts and agreements
which were concluded by [Unipoint] with their customers in a manner
consistent with their past practices after the closing.” (Trico
Stmt. ¶ 31.) Bosch has clarified, consistent with this commitment,
that it is not pursuing damages for post-closing sales by Trico.
(See Bosch Resp. at 13.)
The question is whether Bosch agreed not
to pursue claims alleging pre-closing infringement.
When Trico
asked Unipoint to clarify Bosch GmbH’s commitment, it stated only
that Trico was authorized to resell Unipoint-manufactured blades
purchased “since” December 1, 2011.
(See Letter Dated March 22,
2012, attached as Ex. D to Kubasiak Decl.)
So, as far as the
record reveals, neither Unipoint nor Bosch/Bosch GmbH ever stated
that it would not pursue infringement claims for sales pre-dating
the closing.
Trico also argues that Bosch: (1) stepped into Unipoint’s
shoes after the closing, thereby barring any infringement claim
that Unipoint could not have pursued in its own right; and (2)
would be unjustly enriched if it was permitted to pursue claims for
- 13 -
infringement while retaining the benefits of Unipoint’s pre-closing
sales to Trico.
With respect to the first point, it appears that
Bosch and Unipoint remain distinct corporate entities.
Without
some authority to the contrary — and Trico has not cited any — we
will not treat Bosch and Unipoint as if they were the same company.
With respect to the second point, we are not persuaded by Trico’s
analogy to PSN Illinois, LLC v. Abbott Laboratories, No. 09 C 5879,
2011 WL 4442825 (N.D. Ill. Sept. 20, 2011).
In that case, PSN
claimed that certain third parties had infringed its patented
biotechnology. Id. at *2. It settled those claims and granted the
third parties licenses to use PSN’s patents in the future, and
released them from liability for past infringement.
The
third
defendants.
parties
then
sold
Id. at *1-2.
the
patented
cell
Id. at *7-10.
lines
to
the
The PSN court held that PSN had
exhausted its patent rights in the cell lines when it granted
licenses to the third parties.
Id. at *6-7, *9-10.
So, it could
not pursue infringement claims against downstream purchasers like
the defendants.
Id.
PSN may be analogous to our case, depending
upon the terms of Bosch GmbH’s acquisition of Unipoint.
has not cited or discussed those terms.
But Trico
Instead, it makes a more
abstract point: Bosch GmbH — and Bosch, as its wholly-owned
subsidiary — acquired the benefit of Unipoint’s prior sales to
Trico when it acquired Unipoint.
But it has not cited any case law
supporting that theory, nor has it developed its argument that
- 14 -
Bosch benefitted from Unipoint’s sales to Trico.
On this record,
we decline to rule that the Unipoint acquisition bars Bosch’s claim
that Trico’s Duralast Flex Blade infringes its patents.
CONCLUSION
Trico’s motion for summary judgment [104] is denied.
DATE:
May 21, 2014
ENTER:
___________________________________________
John F. Grady, United States District Judge
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?