Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 1 of 14 PageID #: 2783
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. Nos. 12-574 (LPS)(CJB)
`(CONSOLIDATED)
`
`
`
`) ) ) ) ) ) ) ) ) ) ) )
`
`
`
`ROBERT BOSCH LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`ALBEREE PRODUCTS, INC., API KOREA
`CO., LTD., SAVER AUTOMOTIVE PROD-
`UCTS, INC., and COSTCO WHOLESALE
`CORPORATION,
`
`
`Defendants.
`
`OPENING BRIEF IN SUPPORT OF COSTCO WHOLESALE CORPORATION’S
`MOTION TO DISMISS CLAIMS FOR ALLEGED PRE-NOTICE DAMAGES
`AND PRE-NOTICE INDIRECT INFRINGEMENT
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Mary B. Graham (#2256)
`Thomas Curry (#5877)
`1201 N. Market Street
`P.O. Box 1347
`Wilmington, DE 19899-1347
`(302) 658-9200
`mgraham@mnat.com
`tcurry@mnat.com
`Attorneys for Costco Wholesale Corporation
`
`
`
`OF COUNSEL:
`
`
`
`James W. Dabney
`Diane E. Lifton
`Walter M. Egbert, III
`Richard M. Koehl
`Stephen Kenny
`HUGHES HUBBARD & REED LLP
`One Battery Park Plaza
`New York, NY 10004-1482
`(212) 837-6000
`
`December 23, 2014
`
`

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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 2 of 14 PageID #: 2784
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`
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES .......................................................................................................... ii
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`NATURE AND STAGE OF THE PROCEEDINGS ......................................................................1
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`SUMMARY OF THE ARGUMENT ..............................................................................................4
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`ARGUMENT ...................................................................................................................................6
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`I.
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`II.
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`BOSCH FAILS TO STATE A CLAIM FOR PRE-NOTICE
`DAMAGES ..............................................................................................................6
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`BOSCH FAILS TO STATE A CLAIM FOR PRE-NOTICE
`INDIRECT INFRINGEMENT. .............................................................................10
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`CONCLUSION ..............................................................................................................................10
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 3 of 14 PageID #: 2785
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`Page(s)
`
`Already, LLC v. Nike Inc.,
`133 S. Ct. 721 (2013) .................................................................................................................8
`
`Amer. Med. Sys., Inc. v. Med. Eng’g Corp.,
`6 F.3d 1523 (Fed. Cir. 1993).............................................................................................. 5, 7-8
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................8
`
`In the Matter of Certain Wiper Blades,
`Inv. No. 337-TA-816 (Oct. 26, 2011) ........................................................................................3
`
`Dunlap v. Schofield,
`152 U.S. 244 (1894) ............................................................................................................... 6-8
`
`Global-Tech Appliances, Inc. v. SEB S.A.,
`131 S. Ct. 2060 (2011) ..................................................................................................... 4-5, 10
`
`Jackson v. Intel Corp.,
`No. 09 C 2178, 2009 WL 2851742 (N.D. Ill. Aug. 31, 2009) ...................................................8
`
`Maxwell v. J. Baker, Inc.,
`86 F.3d 1098 (Fed. Cir. 1996)....................................................................................................7
`
`Nike, Inc. v. Wal-Mart Stores, Inc.,
`138 F.3d 1437 (Fed. Cir. 1998)..................................................................................................7
`
`U.S. Express Lines, Ltd. v. Higgins,
`281 F.3d 383 (3d Cir. 2002).......................................................................................................3
`
`Rules and Statutes
`
`35 U.S.C. 287 ......................................................................................................................... passim
`
`35 U.S.C. § 271(b) .....................................................................................................................5, 10
`
`35 U.S.C. § 271(c) .....................................................................................................................5, 10
`
`America Invents Act, Pub. L. 112-29, § 16(a)(1), 125 Stat. 284, 328 (2011) .................................7
`
`Fed. R. Civ. P. 8(a)(2) ......................................................................................................................9
`
`Fed. R. Civ. P. 12(b)(6)....................................................................................................................3
`
`§ 337 of the Tariff Act of 1930 ........................................................................................................3
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`- ii -
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 4 of 14 PageID #: 2786
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`NATURE AND STAGE OF THE PROCEEDINGS
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`This is an action for alleged patent infringement. In its original complaint filed May 4,
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`2012 (D.I. D.I. 1), plaintiff Robert Bosch LLC (“Bosch”) alleged that defendants Alberee
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`Products, Inc. (“Alberee”), API Korea Co., LTD (“API”), and Saver Automotive Products, Inc.
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`(“Saver”) had infringed and were infringing twelve (12) Bosch-owned patents disclosing
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`windshield wiper apparatus. Bosch’s original complaint did not name Costco Wholesale
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`Corporation (“Costco”) as a defendant and did not identify any specific accused products.
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`On January 18, 2013, Bosch filed a first amended complaint (“FAC”; D.I. 38). Bosch’s
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`first amended complaint alleged that defendants Alberee, API, and Saver had infringed and were
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`infringing thirteen (13) Bosch-owned patents disclosing windshield wiper apparatus. Bosch’s
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`first amended complaint identified the accused products as “windshield wiper blades . . . sold
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`under brand names including the Goodyear Assurance, the Saver Arc Flex Ultra, and the Touring
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`Ultra.” FAC ¶ 10. Bosch’s first amended complaint did not name Costco as a defendant and did
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`not identify Goodyear Hybrid as an accused product.
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`On February 5, 2014, Bosch filed a further complaint commencing Case No. 14-142 (the
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`“’142 Case Complaint”). Bosch’s ’142 Case Complaint alleged that defendants Alberee, API,
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`and Saver had infringed and were infringing a fourteenth Bosch-owned patent disclosing
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`windshield wiper apparatus. Bosch’s ’142 Case Complaint identified the accused products as
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`“beam-type windshield wiper blades” (’142 Case Complaint ¶¶ 5–7) and specifically identified
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`“Goodyear Assurance and Saver Arc Flex Ultra” as “beam-type wiper blades” that the
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`defendants had supplied to Costco and others. ’142 Case Complaint ¶ 10. Bosch’s ’142 Case
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`Complaint did not name Costco as a defendant and did not identify Goodyear Hybrid as an
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`accused product.
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 5 of 14 PageID #: 2787
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`On September 10, 2014, the Court issued an Order consolidating this case with the ’142
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`Case and setting a pretrial schedule (D.I. 67). On October 9, 2014, Bosch was granted leave to
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`file a Consolidated Amended Complaint (“CAC”; D.I. 84). Bosch served that Second Amended
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`Complaint on Costco on October 10, 2014 (D.I. 86). Bosch’s Consolidated Amended Complaint
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`added Costco as a defendant, asserted three additional patents (for a total of seventeen (17)
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`patents) disclosing windshield wiper apparatus. The CAC identified the accused products as
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`“windshield wiper blades . . . sold under brand names including the Goodyear Assurance, the
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`Saver Arc Flex Ultra, and the Touring Ultra.” CAC ¶ 12. Bosch’s CAC did not identify
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`Goodyear Hybrid as an accused product.
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`On October 22, 2014, Bosch gave Costco notice of the Second Amended Complaint then
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`filed on October 31, 2014 (“SAC”; D.I. 95). Bosch’s Second Amended Complaint asserted an
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`eighteenth patent and, for the first time, identified the Goodyear Hybrid as an accused product.
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`SAC ¶ 12. The SAC characterizes the accused products identified in the first amended complaint,
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`the ’142 Case Complaint, and the Consolidated Amended Complaint as “Accused Beam
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`Products.” The SAC does not allege that the Goodyear Hybrid product is a “beam-type” product.
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`Id. A chart summarizing Bosch’s allegations against Costco in the SAC is attached as Exhibit A
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`to this brief.
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`As to at least nine of the patents asserted in Bosch’s SAC, Bosch has admitted and
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`affirmatively alleged that:
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`278. Original equipment wiper blades are sold to automobile manufacturers for
`installation on new vehicles. Bosch sells beam wiper blades (“Bosch OE Beam
`Wiper Blades”) used as original equipment on new vehicles sold in the United
`States.
`
`279. Aftermarket wiper blades are sold in retail auto parts stores, automotive
`repair shops, and in the original equipment service market for installation on
`vehicles serviced at automotive service departments. They are generally installed
`as replacement parts for either original equipment blades or other aftermarket
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 6 of 14 PageID #: 2788
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`
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`blades. Bosch sells in the aftermarket in the United Sates beam wiper blades
`(“Bosch Aftermarket Beam Wiper Blades”) under the brand names ICON,
`Evolution, Marathon, Aerotwin, and under automotive manufacturers’ trade
`names.
`
`280. Bosch sells wiper systems for installation as original equipment on new
`vehicles sold in the United States, many of which include a Bosch OE Beam
`Wiper Blade (“Bosch Beam Blade Wiper Systems”).
`
`281. At least one claim of each of the Asserted Patents is practiced by the Bosch
`OE Beam Wiper Blades, Bosch Aftermarket Beam Wiper Blades, and/or Bosch
`Beam Blade Wiper Systems.
`
`Complaint Under Section 337 of the Tariff Act of 1930, as amended, ¶¶ 278–281, In the Matter
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`of Certain Wiper Blades, Inv. No. 337-TA-816 (Oct. 26, 2011) (cited and relied on in SAC
`
`¶¶ 31, 33, 35, 37, 39, 41, 75, 93, 95, 97, 99, 101, 103, 122, 124, 126, 128, 130, 132, 151, 153,
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`155, 157, 160, 162, 181, 183, 185, 187, 189, 191, 210, 212, 214, 216, 221, 269, 271, 273, 275,
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`277, 279, 298, 300, 302, 304, 306). (Ex. B hereto.)1
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`Bosch seeks damages “for Defendants’ past infringement” (SAC at 100 “WHEREFORE”
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`¶ D); however, as to the vast majority of the alleged infringements for which Bosch now seeks to
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`hold Costco responsible, the Second Amended Complaint fails to state actionable claims for pre-
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`notice damages under 35 U.S.C. § 287(a). The Second Amended Complaint is, thus, subject to
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`dismissal under Federal Rule of Civil Procedure 12(b)(6) as to these claims.
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`With respect to alleged infringements committed prior to May 30, 2012, the Second
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`Amended Complaint is devoid of allegations that Costco had statutory notice of those alleged
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`infringements. With respect to the alleged infringements of the five patents that were asserted
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`against Costco for the first time in the CAC, the Second Amended Complaint is devoid of
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`1 The Court properly may consider the contents of documents cited and relied upon in Bosch’s
`complaint. U.S. Express Lines, Ltd. v. Higgins, 281 F.3d 383, 388 (3d Cir. 2002) (“A document
`integral to or explicitly relied upon in the complaint may be considered without converting the
`motion to dismiss into one for summary judgment.”) (emphasis in original) (citation omitted).
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 7 of 14 PageID #: 2789
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`allegations that Costco had statutory notice of those alleged infringements prior to the service of
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`the CAC on October 10, 2014. With respect to the Goodyear Hybrid product and the eighteenth
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`patent asserted for the first time in the SAC, the complaint is devoid of allegations that Costco
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`had statutory notice of that alleged infringement prior to October 22, 2014.
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`As to three patents which claim combinations of windshield wiper blade assemblies and
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`vehicle wiper arms (SAC at 100 “WHEREFORE” ¶ B), Bosch asserts only that Costco has
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`actively induced or contributed to infringement by consumers who replaced worn-out wiper
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`blade assemblies on their vehicles. As to these alleged acts of infringement by third party
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`consumers, the Second Amended Complaint fails to allege that Costco had “knowledge that the
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`induced acts constitute[d] patent infringement” at relevant times. Global-Tech Appliances, Inc. v.
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`SEB S.A., 131 S. Ct. 2060, 2068 (2011). This is an independent basis for dismissal of Bosch’s
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`claims of infringement of those patents.
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`This is Costco’s opening brief in support of its motion to dismiss the Second Amended
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`Complaint insofar as it seeks damages from Costco: (i) for any alleged infringements committed
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`prior to May 30, 2012; or (ii) as to the five patents that were first asserted in the CAC, for any
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`alleged infringements committed prior to the service of the CAC; or (iii) as to the Goodyear
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`Hybrid product or the eighteenth patent which was first asserted in the SAC, for any alleged
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`infringements committed prior to the SAC’s notice date of October 22, 2014.
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`SUMMARY OF THE ARGUMENT
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`When patented articles are sold or offered for sale within the United States, the patentee’s
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`right to recover damages is subject to the provisions of 35 U.S.C. § 287(a). To recover damages
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`for alleged patent infringement committed prior to the date(s) when a defendant has been notified
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`of the alleged infringement, a patent-practicing plaintiff bears the burden of pleading and proving
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 8 of 14 PageID #: 2790
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`
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`that it and its licensees have “consistently marked substantially all of its patented products.”
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`Amer. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993) (“AMS”).
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`In its Second Amended Complaint, Bosch fails to allege that it has consistently marked
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`substantially all products embodying the claimed inventions that Bosch or its licensees have sold
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`or offered for sale in the United States. The Second Amended Complaint thus fails to state any
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`actionable claim against Costco for damages arising from alleged infringements committed
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`before Costco was “notified of the infringement.” 35 U.S.C. § 287(a).
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`As applied here, 35 U.S.C. § 287(a) requires dismissal of the Second Amended
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`Complaint insofar as it seeks damages from Costco (i) for any alleged infringements committed
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`prior to May 30, 2012 (when Bosch alleges it notified Costco that use or sale of certain “beam-
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`style” windshield wiper products infringed the first through twelfth asserted patents); or (ii) as to
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`the five patents that were asserted for the first time in the CAC, for any alleged infringements of
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`those newly asserted patents committed prior to the service of the CAC on October 10, 2014; or
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`(iii) as to the Goodyear Hybrid product or the eighteenth patent asserted for the first time in the
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`SAC, any alleged infringements committed prior to the SAC’s notice date of October 22, 2014.
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`Insofar as it invokes 35 U.S.C. §§ 271(b) or (c), the Second Amended Complaint also
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`fails to state any actionable claim with respect to alleged infringements committed before Bosch
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`notified Costco of the alleged infringements. The Second Amended Complaint is devoid of
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`allegations that, prior to May 30, 2012, Costco had “knowledge” of either the asserted patents’
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`existence or of Bosch’s unusual contention that replacement of worn-out wiper blades by retail
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`customers “constitute[d] patent infringement.” Global-Tech, 131 S. Ct. at 2067. The Second
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`Amended Complaint is also devoid of allegations that, prior to October 22, 2014, Costco had
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`“knowledge” of either the patents that were first asserted in the CAC or the SAC or of the new
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 9 of 14 PageID #: 2791
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`
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`infringement contentions that Bosch made for the first time in those pleadings. Thus, all of
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`Bosch’s claims of pre-notice indirect infringement should be dismissed.
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`ARGUMENT
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`I.
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`BOSCH FAILS TO STATE A CLAIM FOR PRE-NOTICE DAMAGES
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`35 U.S.C. § 287(a) provides (emphasis added):
`
`Patentees, and persons making, offering for sale, or selling within the United
`States any patented article for or under them, or importing any patented article
`into the United States, may give notice to the public that the same is patented,
`either by fixing thereon the word “patent” or the abbreviation “pat.”, together with
`the number of the patent, or by fixing thereon the word “patent” or the
`abbreviation “pat.” together with an address of a posting on the Internet,
`accessible to the public without charge for accessing the address, that associates
`the patented article with the number of the patent, or when, from the character of
`the article, this can not be done, by fixing to it, or to the package wherein one or
`more of them is contained, a label containing a like notice. In the event of failure
`so to mark, no damages shall be recovered by the patentee in any action for
`infringement, except on proof that the infringer was notified of the infringement
`and continued to infringe thereafter, in which event damages may be recovered
`only for infringement occurring after such notice. Filing of an action for
`infringement shall constitute such notice.
`
`35 U.S.C. § 287(a) has long been held to require patent plaintiffs to plead and prove that
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`they have complied with its requirements as a prerequisite to recovering damages for alleged
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`infringement. In Dunlap v. Schofield, 152 U.S. 244 (1894), the Supreme Court reversed a
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`judgment awarding monetary relief for patent infringement where a patent-practicing plaintiff
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`had failed to allege and prove that it had marked products embodying the claimed inventions as
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`required by the statute. The trial court had held that failure to mark was a defense that an alleged
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`infringer had to prove; but the Supreme Court reversed, holding that a patentee’s right to recover
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`damages for alleged infringement was conditioned on both pleading and proof of either marking
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`of patented articles or actual notice to the alleged infringer:
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`One of these two things marking the articles, or notice to the infringers is made by
`the statute a prerequisite to the patentee’s right to recover damages against them.
`Each is an affirmative fact, and is something to be done by him. Whether his
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 10 of 14 PageID #: 2792
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`patented articles have been duly marked or not is a matter peculiarly within his
`own knowledge; and if they are not duly marked, the statute expressly puts upon
`him the burden of proving the notice to the infringers, before he can charge them
`in damages. By the elementary principles of pleading, therefore, the duty of
`alleging, and the burden of proving, either of these facts is upon the plaintiff.
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`152 U.S. at 248.
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`Insofar as it precludes recovery of damages in the event of a failure to mark products
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`embodying patented inventions,2 the text of current 35 U.S.C. § 287(a) does not differ in any
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`material respect from the statutory text that the Supreme Court construed in Dunlap and has been
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`held to prescribe the same rule as that stated in the quotation above. See, e.g., Nike, Inc. v. Wal-
`
`Mart Stores, Inc., 138 F.3d 1437, 1446–47 (Fed. Cir. 1998); Maxwell v. J. Baker, Inc., 86 F.3d
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`1098, 1111 (Fed. Cir. 1996); AMS, 6 F.3d at 1537–38.
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`In this case, as noted above, Bosch has alleged that it sells windshield wiper apparatus in
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`the United States which practice at least nine of the patents being asserted against Costco
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`(namely, the first, third, fourth, fifth, sixth, seventh, eighth, tenth, and eleventh patents asserted
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`in the Second Amended Complaint). In these circumstances, to state an actionable claim for pre-
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`notice damages, it was incumbent on Bosch to allege that, as of a time prior to Costco’s first
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`alleged infringement, Bosch had “consistently marked substantially all of its patented products.”
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`AMS, 6 F.3d at 1538 (emphasis added); accord Nike, 138 F.3d at 1447; Maxwell, 86 F.3d at
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`1111. Yet far from meeting this stringent pleading requirement, the Second Amended Complaint
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`wholly fails to allege compliance with 35 U.S.C. § 287(a).
`
`
`2 The America Invents Act, Pub. L. 112-29, § 16(a)(1), 125 Stat. 284, 328 (2011), amended the
`text of 35 U.S.C. § 287 to permit “virtual” marking of patented articles “by fixing thereon the
`word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet,
`accessible to the public without charge for accessing the address, that associates the patented
`article with the number of the patent.” The SAC is devoid of allegations that Bosch has molded,
`stamped, embossed, or otherwise “fix[ed]” statutory notices on Bosch wiper blade apparatus in
`accordance with 35 U.S.C. 287.
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 11 of 14 PageID #: 2793
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`
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`In Jackson v. Intel Corp., No. 09 C 2178, 2009 WL 2851742 (N.D. Ill. Aug. 31, 2009),
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`the Court confronted a similar situation. In that case, the plaintiff-patentee had entered into six
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`license agreements which licensed third parties to practice the patent-in-suit; however, his
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`complaint did not allege that the licensees had marked products made and sold under the patent.
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`The district court held that, in the circumstances, the plaintiff’s claim for pre-notice damages was
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`barred by 35 U.S.C. § 287(a) and that even with respect to post-notice damages, the plaintiff
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`could not recover because it could not meet the stringent standard of “substantially consistent
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`and continuous” marking. Id. at *6 (citing AMS, 6 F.3d at 1537).
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`Both in reasoning and in result, the Jackson decision is fully applicable here. As the
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`Supreme Court noted in Dunlap, “[w]hether [a patentee’s] patented articles have been duly
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`marked or not is a matter peculiarly within his own knowledge; and if they are not duly marked,
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`the statute expressly puts upon him the burden of proving the notice to the infringers, before he
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`can charge them in damages.” 152 U.S. at 248. So here, as to any asserted patent that Bosch has
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`practiced or authorized to be practiced in the United States, it was incumbent on Bosch to allege
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`that it and its licensees had “consistently marked substantially all of its patented products,” AMS,
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`6 F.3d at 1538 (emphasis added), as of a date not later than when Costco is alleged to have
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`infringed those patents. If Bosch is not able to allege this, Costco should not be put to the
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`enormous burden and expense of litigating whether the use or sale of discontinued “beam-type”
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`replacement wiper blade assemblies3 infringed one or more of the eighteen (18) patents that
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`Bosch has seen fit to assert in this case. Cf. Ashcroft v. Iqbal, 556 U.S. 662, 685–86 (2009)
`
`
`3 Prior to being dragged into this lawsuit, Costco had voluntarily ceased selling “beam-type”
`replacement windshield wiper blade assemblies. As to those “beam-type” products, dismissal of
`Bosch’s prayers for damages under 35 U.S.C. § 287(a) would likely lead to dismissal of Bosch’s
`claims as to those products in their entirety. Cf. Already, LLC v. Nike Inc., 133 S. Ct. 721 (2013)
`(voluntary cessation of allegedly wrongful activity may result in claim for injunctive relief
`becoming moot).
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 12 of 14 PageID #: 2794
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`(discovery burdens provided a justification for requiring that a complaint’s factual allegations
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`state a plausible claim under Rule 8(a)(2)).
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`The alleged infringements at issue in this case fall into four basic categories: (1) alleged
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`infringements that occurred prior to May 29, 2012 (the “Pre-Notice Events”); (2) alleged
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`infringements that occurred between May 30, 2014, and October 9, 2014 (the “Second Period
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`Events”); (3) alleged infringements that occurred between October 10 and October 21, 2014 (the
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`“Third Period Events”); and (4) alleged infringement that occurred after October 22, 2014 (the
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`“Fourth Period Events”).
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`With respect to the Pre-Notice Events, as noted above, the Second Amended Complaint
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`is devoid of allegations that Bosch complied with 35 U.S.C. § 287(a), either constructively (by
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`adequately marking products with patent numbers) or actually (by giving Costco notice that
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`specific activity allegedly infringed specific patents). The Second Amended Complaint should
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`thus be dismissed as to Costco insofar as it seeks damages based on Pre-Notice Events.
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`With respect to the Second Period Events, the Second Amended Complaint alleges that
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`on May 30, 2012, Bosch notified Costco that its sales of “beam-style” windshield wiper blade
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`assemblies allegedly infringed twelve (12) Bosch-owned patents. SAC ¶¶ 38, 60, 76, 100, 129,
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`158, 188, 217, 247, 276, 305, 334. A copy of this letter is annexed hereto as Exhibit C.
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`Assuming, for purposes of argument, that the May 30 letter complied with § 287 with respect to
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`the twelve (12) patents and “beam-style” products identified therein, that letter is not alleged to
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`have provided statutory notice of alleged infringements of the five (5) patents that were newly
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`asserted against Costco for the first time in the CAC (the “CAC Added Patents”). The Second
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`Amended Complaint should thus be dismissed as to Costco insofar as it seeks damages for
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`alleged infringements of the CAC Added Patents based on Second Period Events.
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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 13 of 14 PageID #: 2795
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`With respect to Third Period Events, the Second Amended Complaint does not allege that
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`prior to October 22, 2014, Bosch gave Costco any notice that sale or use of the Goodyear Hybrid
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`product infringed any Bosch-owned patents, or that sales of any product infringed the eighteenth
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`patent that was asserted for the first time in the SAC. As to Third Period Events, the Second
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`Amended Complaint should be dismissed insofar as it seeks damages based on sales of the
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`Goodyear Hybrid product, or based on alleged infringements of the eighteenth patent, prior to the
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`SAC’s notice date of October 22, 2014.
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`II.
`
`BOSCH FAILS TO STATE A CLAIM FOR PRE-NOTICE INDIRECT
`INFRINGEMENT.
`
`To be liable for indirect infringement under 35 U.S.C. § 271 (b) or (c), a defendant must
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`have had “knowledge” of the alleged infringement, including “knowledge of the existence of the
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`patent that is infringed.” See Global-Tech, 131 S. Ct. at 2067–68. As described above, Bosch’s
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`Second Amended Complaint is devoid of allegations that, prior to May 30, 2012, Costco had
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`“knowledge” of the existence of any asserted patent or that, prior to October 22, 2014, Costco
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`had “knowledge” of the patents that were first asserted in the CAC or the SAC or of the new
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`infringement contentions that Bosch made for the first time in those pleadings. This is an
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`independent basis for dismissing all of Bosch’s claims of pre-notice indirect infringement.
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`CONCLUSION
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`For the foregoing reasons, Costco requests that the Court grant its motion to dismiss
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`Bosch’s claims for alleged pre-notice damages and pre-notice indirect infringement.
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`

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`Case 1:12-cv-00574-LPS Document 113 Filed 12/23/14 Page 14 of 14 PageID #: 2796
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
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`
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`/s/ Mary B. Graham
`Mary B. Graham (#2256)
`Thomas Curry (#5877)
`1201 N. Market Street
`P.O. Box 1347
`Wilmington, DE 19899-1347
`(302) 658-9200
`mgraham@mnat.com
`tcurry@mnat.com
`Attorneys for Costco Wholesale Corporation
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`
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`OF COUNSEL:
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`James W. Dabney
`Diane E. Lifton
`Walter M. Egbert, III
`Richard M. Koehl
`Stephen Kenny
`HUGHES HUBBARD & REED LLP
`One Battery Park Plaza
`New York, NY 10004-1482
`(212) 837-6000
`
`December 23, 2014
`8754471
`
`
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