Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 1 of 13 PageID #: 2911
`
`
`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
`PRODUCTS, INC., and COSTCO
`WHOLESALE CORPORATION,
`
`
`Defendants.
`
`REPLY 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
`
`January 20, 2015
`
`

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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 2 of 13 PageID #: 2912
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`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OFAUTHORITIES ....................................................................................................... ii
`
`ARGUMENT .............................................................................................................................. 1
`
`I.
`
`II.
`
`III.
`
`IV.
`
`THE SECOND AMENDED COMPLAINT FAILS TO STATE ANY
`ACTIONABLE CLAIM FOR DAMAGES ARISING FROM ANY
`ALLEGED ACTS OF INFRINGEMENT COMMITTED PRIOR TO MAY
`30, 2012........................................................................................................................... 1
`
`THE SECOND AMENDED COMPLAINT FAILS TO STATE ANY
`ACTIONABLE CLAIM FOR DAMAGES ARISING FROM ANY
`ALLEGED ACTS OF INFRINGEMENT COMMITTED PRIOR TO
`OCTOBER 10, 2014, AS TO AT LEAST FIVE ASSERTED PATENTS
`AND THE “HYBRID” PRODUCTS THAT WERE NOT IDENTIFIED IN
`BOSCH’S NOTICE LETTER TO COSTCO DATED MAY 30, 2012. ............................ 6
`
`THE SECOND AMENDED COMPLAINT FAILS TO STATE ANY
`ACTIONABLE CLAIM FOR DAMAGES ARISING FROM ANY
`ALLEGED ACTS OF INFRINGEMENT COMMITTED PRIOR TO
`OCTOBER 22, 2014, AS TO AT LEAST THE PATENT AND THE
`“HYBRID” PRODUCTS THAT WERE NOT IDENTIFIED IN BOSCH’S
`NOTICE LETTER TO COSTCO DATED MAY 30, 2012, OR IN ITS CAC. ................. 7
`
`BOSCH HAS CONCEDED THAT THE SECOND AMENDED
`COMPLAINT FAILS TO STATE ANY ACTIONABLE CLAIM FOR
`DAMAGES ARISING FROM ANY ALLEGED ACTS OF INDIRECT
`INFRINGEMENT COMMITTED PRIOR TO WHEN COSTCO RECEIVED
`ACTUAL NOTICE OF THE ALLEGED INFRINGEMENT. ......................................... 9
`
`CONCLUSION ........................................................................................................................... 9
`
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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 3 of 13 PageID #: 2913
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`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Am. Med. Sys., Inc. v. Med. Eng’g Corp.,
`
`6 F.3d 1523 (Fed. Cir. 1993) ............................................................................................. 2, 6
`
`Amsted Indus. Inc. v. Buckeye Steel Castings Co.,
`
`24 F.3d 178 (Fed. Cir. 1994) ............................................................................................. 7, 8
`
`Ashcroft v. Iqbal,
`
`556 U.S. 662 (2009) ...................................................................................................... 1, 2, 4
`
`AVID Identification Sys., Inc. v. Philips Elecs. N. Am. Corp.,
` No. 2:04-CV-183, 2006 WL 1408318 (E.D. Tex. May 18, 2006) ........................................... 4
`
`Bell Atl. Corp. v. Twombly,
`
`550 U.S. 544 (2007) .............................................................................................................. 5
`
`Blue Chip Stamps v. Manor Drug Stores,
`
`421 U.S. 723 (1975) .............................................................................................................. 5
`
`Cordance Corp. v. Amazon.com, Inc.,
`
`631 F. Supp. 2d 484 (D. Del. 2009) (Thynge, U.S. Mag. J.) ................................................... 4
`
`Courtesy Prods., L.L.C. v. Hamilton Beach Brands, Inc.,
` No. 13-2102-SLR, 2014 WL 5780877 (D. Del. Nov. 5, 2014) (Robinson, J.)......................... 4
`
`Dunlap v. Schofield,
`
`152 U.S. 244 (1894) .......................................................................................................... 3, 5
`
`Dura Pharm., Inc. v. Broudo,
`
`544 U.S. 336 (2005) .............................................................................................................. 5
`
`E. Coast Sheet Metal Fabricating Corp. v. Autodesk, Inc.,
` No. 12-cv-517-LM, 2014 WL 4979853 (D.N.H. Oct. 6, 2014)............................................... 3
`
`Inzer v. Frantz,
` No. 03 C 0552, 2003 WL 21877645 (N.D. Ill. Aug. 7, 2003) ................................................. 4
`
`MONEC Holding AG v. Motorola Mobility, Inc.,
`
`897 F. Supp. 2d 225 (D. Del. 2012) (Stark, J.) ....................................................................... 4
`
`Neology, Inc. v. Kapsch Trafficcom IVHS, Inc.,
` No. 13-2052-LPS, 2014 WL 4675316 (D. Del. Sept. 19, 2014) (Burke, U.S.
`Mag. J.) ............................................................................................................................. 1, 4
`
`- ii -
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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 4 of 13 PageID #: 2914
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`ReefEdge Networks, LLC v. Juniper Networks, Inc.,
` No. 13-412-LPS, 2014 WL 1217263 (D. Del. Mar. 21, 2014) (Stark, J.) ............................ 1, 4
`
`Sentry Prot. Prods., Inc. v. Eagle Mfg. Co.,
`
`400 F.3d 910 (Fed. Cir. 2005)............................................................................................ 2, 3
`
`Siemens v. Seagate Tech.,
` No. SACV 06-788-JVS (ANx), 2008 WL 9028522 (C.D. Cal. Sept. 23, 2008) ...................... 4
`
`Statutes and Rules
`
`35 U.S.C. § 287 .................................................................................................................. passim
`
`Fed. R. Civ. P. 8(a)(2) ..................................................................................................... 3, 4, 5, 6
`
`Fed. R. Civ. P. 11 ........................................................................................................................ 8
`
`
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`- iii -
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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 5 of 13 PageID #: 2915
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`This is Costco Wholesale Corporation’s reply brief in further support of its motion to
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`dismiss Robert Bosch LLC’s claims for pre-notice damages and pre-notice indirect infringement.
`
`ARGUMENT
`
`I.
`
`THE SECOND AMENDED COMPLAINT FAILS TO STATE ANY
`ACTIONABLE CLAIM FOR DAMAGES ARISING FROM ANY ALLEGED
`ACTS OF INFRINGEMENT COMMITTED PRIOR TO MAY 30, 2012.
`
`In its opposition filed January 9, 2015 (D.I. 114), Robert Bosch LLC (“Bosch”) does not
`
`dispute that its Second Amended Complaint (D.I. 95) (“SAC”) is devoid of allegations that, at all
`
`relevant times prior to May 30, 2012, Bosch and its licensees consistently molded, stamped,
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`embossed, or otherwise “fix[ed]” statutory patent notices on substantially all Bosch wiper blade
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`apparatus that were sold in the United States in accordance with 35 U.S.C. § 287(a). Bosch
`
`asserts, however, that such allegations can purportedly be inferred from paragraph 438 of the
`
`SAC, which alleges in conclusory fashion:
`
`The acts of infringement set forth above have occurred with full knowledge of the
`’218, ’111, ’607, ’988, ’434, ’926, ’905, ’698, ’588, ’321, ’520, ’264, ’823, ’974,
`’419, ’891,’136, and ’096 patents. The infringement has occurred despite an
`objectively high likelihood that the acts constituted infringement. The risk of
`infringement was either known to Defendants, or so obvious it should have been
`known to them. Thus, the acts of infringement have been willful and deliberate,
`making this case exceptional within the meaning of the United States patent laws.
`
`Bosch’s argument fails for at least three reasons. First, the above-quoted allegation is
`
`wholly “conclusory” and, as such, is “not entitled to be assumed true.” Ashcroft v. Iqbal,
`
`556 U.S. 662, 681 (2009). Second, as to times prior to May 30, 2012, the SAC does not allege
`
`any “factual circumstances in which the patents-in-suit [we]re called to the attention of the
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`defendant” at those times. Neology, Inc. v. Kapsch Trafficcom IVHS, Inc., No. 13-2052-LPS,
`
`2014 WL 4675316, at *8 (D. Del. Sept. 19, 2014) (Burke, U.S. Mag. J.); accord ReefEdge
`
`Networks, LLC v. Juniper Networks, Inc., No. 13-412-LPS, 2014 WL 1217263, at *2–3 (D. Del.
`
`Mar. 21, 2014) (Stark, J.) (dismissing willfulness claim for failure adequately to allege pre-suit
`
`
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`

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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 6 of 13 PageID #: 2916
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`knowledge of patents). Third, and especially when viewed in light of Bosch’s conspicuous
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`failure to plead compliance with § 287(a), the above-quoted allegation does not “plausibly
`
`suggest” (Iqbal, 556 U.S. at 681) that at all relevant times prior to May 30, 2012, Bosch and its
`
`licensees “consistently marked substantially all of its patented products.” Am. Med. Sys., Inc. v.
`
`Med. Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993).
`
`The case law cited by Bosch is inapposite and in no way supports its broad contention
`
`that a conclusory (and, in this case, clearly deficient) allegation of “willful” infringement is
`
`sufficient to meet a plaintiff’s pleading burden under § 287. In the principal case relied on by
`
`Bosch, Sentry Protection Products, Inc. v. Eagle Manufacturing Co., 400 F.3d 910 (Fed. Cir.
`
`2005), the question was whether the plaintiff had waived its right to seek damages during a ten-
`
`day period between (i) the date when the patent-in-suit issued and (ii) the date when the plaintiff
`
`had actually notified the defendant that the patent-in-suit had issued, in the circumstance where
`
`(iii) just prior to the patent-in-suit issuing, the plaintiff had written to the defendant and informed
`
`it that the patent was about to issue. The plaintiff’s complaint in Sentry did not allege that it had
`
`marked its products in accordance with § 287(a) during the subject ten-day period but, in
`
`opposition to a motion for summary judgment, the Sentry plaintiff proffered evidence that it had,
`
`in fact, marked its products during that period in accordance with the statute. 400 F.3d at 913,
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`917–18. The Sentry plaintiff also alleged that the defendant’s infringement had been willful. Id.
`
`at 918.
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`The Sentry defendant moved for summary judgment dismissing the plaintiff’s claim for
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`damages due to the plaintiff’s alleged non-compliance with § 287(a). When the plaintiff disputed
`
`the defendant’s allegation of non-compliance and proffered evidence of compliance, the district
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`court refused to consider the plaintiff’s evidence because its complaint had failed to allege
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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 7 of 13 PageID #: 2917
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`compliance with § 287. It was in this context that the Federal Circuit, in Sentry, reversed and
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`held that the plaintiff’s general allegation of willful infringement was sufficient to prevent a
`
`waiver of the plaintiff’s rights to recover damages during the subject ten-day period. The Sentry
`
`decision did not hold, or even state, that a conclusory allegation of willful infringement is
`
`sufficient to state a plausible claim that a defendant had actual or constructive knowledge of a
`
`patent. See Sentry, 400 F.3d at 918. Sentry involved the appropriateness of a district court’s
`
`refusal to consider evidence of actual compliance with § 287(a) in the context of a motion for
`
`summary judgment, not whether a pleading was itself sufficient to state a plausible claim of
`
`compliance by marking. Cf. E. Coast Sheet Metal Fabricating Corp. v. Autodesk, Inc., No. 12-
`
`cv-517-LM, 2014 WL 4979853, at *2 (D.N.H. Oct. 6, 2014) (denying summary judgment;
`
`plaintiff did not waive right to seek damages by failing to plead compliance with § 287).
`
`At issue here is not whether Bosch has waived rights to seek damages, but whether its
`
`SAC contains a legally sufficient “statement . . . showing” (Fed. R. Civ. P. 8(a)(2) (emphasis
`
`added)) that Costco Wholesale Corporation (“Costco”) had actual or constructive knowledge of
`
`the patents-in-suit at relevant times, a factual prerequisite to recovery of damages that § 287(a)
`
`and longstanding precedent requires a patent-practicing plaintiff to allege in its complaint. See
`
`Dunlap v. Schofield, 152 U.S. 244, 248 (1894) (“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.”). Sentry
`
`is thus inapposite.
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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 8 of 13 PageID #: 2918
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`Equally unavailing is Bosch’s reliance on pre-Iqbal district court precedent1 stating that a
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`conclusory allegation of “willful” infringement is sufficient to state a plausible claim that a
`
`defendant had actual or constructive knowledge of a patent. Under Iqbal and recent precedent in
`
`this district, such a conclusory allegation is plainly insufficient to constitute a “statement . . .
`
`showing” (Fed. R. Civ. P. 8(a)(2) (emphasis added)) that a defendant had knowledge of an
`
`asserted patent. See, e.g., Courtesy Prods., L.L.C. v. Hamilton Beach Brands, Inc., No. 13-2102-
`
`SLR, 2014 WL 5780877, at *5 (D. Del. Nov. 5, 2014) (Robinson, J.); Neology, 2014 WL
`
`4675316, at *8; ReefEdge, 2014 WL 1217263, at *2–3; MONEC Holding AG v. Motorola
`
`Mobility, Inc., 897 F. Supp. 2d 225, 236–37 (D. Del. 2012) (Stark, J.).
`
`Despite its length and prolixity, the SAC does not allege any facts which show or
`
`plausibly suggest that Costco, at any time prior to May 30, 2012, had either actual or
`
`constructive notice of any of the eighteen (18) asserted patents-in-suit. Bosch’s assertion that its
`
`SAC “sufficiently plead[s] constructive notice for all asserted patents by pleading willful
`
`infringement” (Robert Bosch LLC’s Br. in Opp’n to Costco Wholesale Corp.’s Mot. to Dismiss
`
`at 1 (D.I. 114) (“Bosch Br.”) (emphasis added)) is erroneous as a matter of law: under the above-
`
`cited and numerous other recent decisions in this district, a conclusory allegation of “willful”
`
`infringement (SAC ¶ 438) is legally insufficient to support any species of “willful” infringement,
`
`much less a claim that Costco purportedly had “constructive” notice of the patents-in-suit prior to
`
`
`1 See Cordance Corp. v. Amazon.com, Inc., 631 F. Supp. 2d 484, 499 (D. Del. 2009) (Thynge,
`U.S. Mag. J.) (Iqbal not cited/considered); Siemens v. Seagate Tech., No. SACV 06-788-JVS
`(ANx), 2008 WL 9028522, at *16–17 (C.D. Cal. Sept. 23, 2008); AVID Identification Sys., Inc.
`v. Philips Elecs. N. Am. Corp., No. 2:04-CV-183, 2006 WL 1408318, at *1 (E.D. Tex.
`May 18, 2006). In Inzer v. Frantz, No. 03 C 0552, 2003 WL 21877645 (N.D. Ill. Aug. 7, 2003),
`also cited by Bosch, the plaintiff patentee actually pleaded compliance with the notice and
`marking requirements of § 287(a). 2003 WL 21877645, at *7. Although the Inzer case is of
`doubtful authority in the post-Iqbal era, Bosch here has not pleaded even token allegations of
`compliance with § 287.
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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 9 of 13 PageID #: 2919
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`May 30, 2012, because Bosch and its licensees purportedly fixed patent notices on substantially
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`all patent-practicing wiper blade apparatus that they sold in the United States during that period.
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`Enforcing the requirements of Rule 8(a)(2) is important, “lest a plaintiff with ‘a largely
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`groundless claim’ be allowed to ‘take up the time of a number of other people, with the right to
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`do so representing an in terrorem increment of the settlement value.’” Bell Atl. Corp. v.
`
`Twombly, 550 U.S. 544, 558 (2007) (quoting Dura Pharm., Inc. v. Broudo, 544 U.S. 336, 347
`
`(2005) (quoting Blue Chip Stamps v. Manor Drug Stores, 421 U. S. 723, 741 (1975))). The SAC
`
`here well illustrates this point: by asserting no fewer than 103 claims in eighteen (18) patents,
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`this plaintiff seeks to initiate a litigation whose costs will be enormous and wieldable as a club in
`
`the context of potential settlement. If, as Costco believes, the great bulk of Bosch’s claims
`
`against Costco are barred by § 287(a), the time to find that out is now, not after Costco has been
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`put to the burden and expense of litigating the merits of moot claims as to products sold years
`
`ago and long discontinued.
`
`Bosch clearly knows what wiper blade apparatus it has sold in the United States and what
`
`patent markings were, and were not, fixed on those products during the period of time covered
`
`by its SAC. Bosch can thus readily provide a “statement . . . showing” (Fed. R. Civ. P. 8(a)(2))
`
`that it complied with § 287 during the periods covered by its SAC, including how that
`
`compliance was allegedly achieved. Contrary to Bosch’s suggestion (Bosch Br. at 6–7 & n.2), it
`
`is not Costco’s burden to plead and prove that Bosch failed to comply with § 287; that was the
`
`very argument that Dunlap rejected. See 152 U.S. at 248 (“Whether his 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,
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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 10 of 13 PageID #: 2920
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`therefore, the duty of alleging and the burden of proving either of these facts is upon the
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`plaintiff.”).
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`Requiring Bosch to provide a “statement . . . showing” (Fed. R. Civ. P. 8(a)(2) (emphasis
`
`added)) that it has complied with § 287(a) will permit early determination of whether claims that
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`Bosch has made against Costco are legally viable and facilitate settlement efforts. Insofar as
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`Bosch may contend that it is compliant with § 287(a) as to some patents because Bosch did not
`
`practice those patents in the United States at relevant times, Bosch can so state. Insofar as Bosch
`
`has practiced the patents-in-suit (as Bosch has admitted as to at least nine of the asserted patents
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`(see D.I. 113-1 Ex. B)), to recover pre-notice damages Bosch must allege facts showing that
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`Bosch and its licensees “consistently marked substantially all of its patented products” during all
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`relevant pre-notice periods. Am. Med., 6 F.3d at 1538. Bosch’s carefully worded present tense
`
`assertion that it “does mark its products” (Bosch Br. at 1 n.1) says nothing about what it did at
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`relevant times between 2006 and 2014.
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`II.
`
`THE SECOND AMENDED COMPLAINT FAILS TO STATE ANY
`ACTIONABLE CLAIM FOR DAMAGES ARISING FROM ANY ALLEGED
`ACTS OF INFRINGEMENT COMMITTED PRIOR TO OCTOBER 10, 2014,
`AS TO AT LEAST FIVE ASSERTED PATENTS AND THE “HYBRID”
`PRODUCTS THAT WERE NOT IDENTIFIED IN BOSCH’S NOTICE
`LETTER TO COSTCO DATED MAY 30, 2012.
`
`As shown in D.I. 113-1 Ex. A, Bosch’s Consolidated Amended Complaint served
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`October 10, 2014 (D.I. 84) (“CAC”) was the first occasion on which Bosch gave Costco notice
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`that it was asserting five (5) of the eighteen (18) patents-in-suit, i.e., the patents asserted in
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`Counts 13–17 of the SAC (the “CAC Asserted Patents”). For substantially the reasons given in
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`the preceding section, the CAC fails to state any actionable claim for damages arising from any
`
`alleged acts of infringement of the CAC Asserted Patents committed prior to October 10, 2014.
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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 11 of 13 PageID #: 2921
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`III. THE SECOND AMENDED COMPLAINT FAILS TO STATE ANY
`ACTIONABLE CLAIM FOR DAMAGES ARISING FROM ANY ALLEGED
`ACTS OF INFRINGEMENT COMMITTED PRIOR TO OCTOBER 22, 2014,
`AS TO AT LEAST THE PATENT AND THE “HYBRID” PRODUCTS THAT
`WERE NOT IDENTIFIED IN BOSCH’S NOTICE LETTER TO COSTCO
`DATED MAY 30, 2012, OR IN ITS CAC.
`
`As shown in D.I. 113-1 Ex. A, Bosch’s SAC served October 22, 2014 (D.I. 95) was the
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`first occasion on which Bosch gave Costco notice that it was asserting U.S. Patent No. 8,272,096
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`(the “’096 Patent”) and was alleging that sales of the Goodyear Hybrid product purportedly
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`infringed the ’096 Patent and three other patents. (Bosch has since retracted its claim that sales of
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`the Goodyear Hybrid product infringe U.S. Patent No. 6,973,698, the patent asserted in SAC
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`Count 8.) For substantially the reasons given in the preceding section, the SAC fails to state any
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`actionable claim for damages arising from any alleged acts of infringement of the ’096 Patent
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`committed prior to October 22, 2014. Neither in its notice letter dated May 30, 2012 (D.I. 113-1
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`Ex. C), nor in its CAC, did Bosch identify or assert the ’096 Patent.
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`Bosch’s claims as to the Goodyear Hybrid product are restricted to events subsequent to
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`October 22, 2014 for the further reason that no prior notice or pleading was sufficiently specific
`
`to give notice that the Goodyear Hybrid product was the subject of Bosch’s purported claims. In
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`order to satisfy the requirements of § 287(a), “[a]ctual notice requires the affirmative
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`communication of a specific charge of infringement by a specific accused product or device.”
`
`Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994). The SAC
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`does not contain any allegations that Bosch gave Costco notice of a “specific charge of
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`infringement” as to the Goodyear Hybrid product prior to October 22, 2014.
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`Paragraph 12 of the SAC expressly distinguishes between the “Accused Beam Products,”
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`on the one hand, and the “Goodyear Hybrid” product, on the other. Neither in its CAC, nor in its
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`notice letter dated May 30, 2012 (D.I. 113-1 Ex. C), did Bosch accuse the Goodyear Hybrid
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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 12 of 13 PageID #: 2922
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`product or any other wiper blade product having conventional hinged brackets supporting a
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`wiping element. Bosch’s footnote assertion that “the Goodyear Hybrid wiper blades include a
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`beam” (Bosch Br. at 8 n.3) is not to be found in the SAC and could not be pleaded consistently
`
`with Federal Rule of Civil Procedure 11. As shown in the attached excerpt from Bosch’s initial
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`infringement contentions (Exhibit 1 hereto), the Goodyear Hybrid product incorporates the very
`
`type of support bracket construction that beam-type wiper blades, by their very nature and by
`
`definition, do not. (See, e.g., SAC Ex. A (first asserted U.S. Patent No. 6,523,218 at col. 1,
`
`ll. 19–23) (“The support element [i.e., the beam] thus replaces the complicated support bracket
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`construction with two spring rails, disposed in the wiper strip, as they are used in conventional
`
`wiper blades.”).)
`
`To state an actionable claim for damages arising from Costco’s sales of the Goodyear
`
`Hybrid product prior to October 22, 2014, it was incumbent on Bosch to plead that it provided
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`Costco with a “specific charge of infringement by [that] specific accused product or device.”
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`Amsted, 24 F.3d at 187. Bosch’s assertion that Costco had notice of Bosch’s claims as to the
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`Goodyear Hybrid product “since at least October 22, 2014” (Bosch Br. at 7 (emphasis in
`
`original)) plainly does not constitute “a specific charge of infringement by a specific accused
`
`product or device” at any earlier date. Bosch’s further assertion that the Goodyear Hybrid
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`product is part of a general “category” of windshield wiper products (Bosch Br. at 7–8 & n.3) is
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`equally deficient as “a specific charge of infringement by a specific accused product or device.”
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`Amsted, 24 F.3d at 187.
`
`As to the Goodyear Hybrid product, the SAC plainly fails to state any actionable claim
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`for damages arising from any alleged acts of infringement committed prior to October 22, 2014.
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`To this extent, the SAC should be dismissed.
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`Case 1:12-cv-00574-LPS Document 116 Filed 01/20/15 Page 13 of 13 PageID #: 2923
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`IV.
`
`BOSCH HAS CONCEDED THAT THE SECOND AMENDED COMPLAINT
`FAILS TO STATE ANY ACTIONABLE CLAIM FOR DAMAGES ARISING
`FROM ANY ALLEGED ACTS OF
`INDIRECT
`INFRINGEMENT
`COMMITTED PRIOR TO WHEN COSTCO RECEIVED ACTUAL NOTICE
`OF THE ALLEGED INFRINGEMENT.
`
`In a strategic retreat, Bosch states that it “does not seek damages for Costco’s indirect
`
`infringement prior to the time when actual notice was provided” (Bosch Br. at 3) and is “not
`
`seeking damages for indirect infringement prior to the dates of actual notice” (id. at 8). This
`
`temporal limitation of Bosch’s claims for indirect infringement does not appear on the face of the
`
`SAC. Those claims accordingly should be dismissed.
`
`CONCLUSION
`
`For the reasons set forth above and in its Opening Brief, Costco requests that the Court
`
`grant its motion to dismiss Bosch’s claims for alleged pre-notice damages and pre-notice indirect
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`
`/s/ Thomas Curry
`_________________________________________
`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
`
`infringement.
`
`
`
`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
`
`January 20, 2015
`8819472
`
`
`
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