Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 1 of 40 PageID #: 4933
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 12-574 (LPS)(CJB)
`(CONSOLIDATED)
`
`REDACTED PUBLIC VERSION
`FILED 5/1/2015
`
`))))))))))))
`
`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’S MOTION FOR
`SUMMARY JUDGMENT AS TO THE GOODYEAR HYBRID
`WIPER PRODUCT AND REGARDING CLAIM CONSTRUCTION
`
`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
`Greta A. Fails
`Erik Huestis
`Stefanie Lopatkin
`HUGHES HUBBARD & REED LLP
`One Battery Park Plaza
`New York, NY 10004-1482
`(212) 837-6000
`
`April 24, 2015
`
`
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 2 of 40 PageID #: 4934
`
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ......................................................................................................... iii
`
`NATURE AND STAGE OF THE PROCEEDINGS ......................................................................1
`
`SUMMARY OF THE ARGUMENT ..............................................................................................3
`
`STATEMENT OF FACTS ..............................................................................................................5
`
`ARGUMENT .................................................................................................................................10
`
`I.
`
`II.
`
`III.
`
`IV.
`
`SAC COUNT SIX (’926 PATENT) SHOULD BE DISMISSED
`AS TO THE GOODYEAR HYBRID PRODUCT. ...............................................13
`
`SAC COUNTS THREE (’607 PATENT) AND EIGHTEEN (’096
`PATENT) SHOULD BE DISMISSED AS TO THE GOODYEAR
`HYBRID PRODUCT.............................................................................................18
`
`A.
`
`B.
`
`Bosch’s Rights in the ’607 and ’096 Patents are Exhausted
`as to Original Equipment Wiper Systems in Various
`
`
`
`
`Vehicles That Were Sold in the
`United States With Bosch’s Authorization. ...............................................18
`
`The Goodyear Hybrid Product Lacks Features That the
`’607 and ’096 Patents Describe as Elements of the Claimed
`Invention. ...................................................................................................22
`
`(’698 PATENT) SHOULD BE
`SAC COUNT EIGHT
`DISMISSED AS TO THE GOODYEAR HYBRID PRODUCT. .........................25
`
`THE SAC DOES NOT ASSERT THE ’988 PATENT AGAINST
`THE GOODYEAR HYBRID PRODUCT AND THE COURT
`SHOULD DENY BOSCH’S BELATED AND FUTILE
`ATTEMPT TO RAISE SUCH A CLAIM AT THIS LATE
`STAGE. ..................................................................................................................25
`
`V.
`
`SUBJECT MATTER THAT SELECTED PATENT CLAIM
`WORDS AND PHRASES MAY DESCRIBE OR DENOTE. ..............................29
`
`A.
`
`B.
`
`C.
`
`“Means for Securing” in the ’607 Patent ...................................................30
`
`“Securing Means (60)” in the ’607 Patent .................................................31
`
`“Coupling Part (20)” in the ’988 Patent .....................................................31
`
`- i -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 3 of 40 PageID #: 4935
`
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`“Means for Maintaining the Clearance” in the ’419 Patent .......................32
`
`“Spherically Curved Window” in the ’698 Patent .....................................33
`
`“Support Means (58, 144)” in the ’588, ’264, and ’823
`Patents ........................................................................................................33
`
`“Covering Cap (16)” in the ’096 Patent .....................................................34
`
`Bosch’s Proposed Verbal Abstractions ......................................................34
`
`CONCLUSION ..............................................................................................................................35
`
`  
`
`- ii -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 4 of 40 PageID #: 4936
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`Cases
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) .............................................................................................................12
`
`Aro Mfg. Co. v. Convertible Top Replacement Co.,
`365 U.S. 336 (1961) ......................................................................................................... passim
`
`Bowman v. Monsanto Co.,
`133 S. Ct. 1761 (2013) ....................................................................................................... 19-20
`
`Eibel Process Co. v. Minnesota & Ontario Paper Co.,
`261 U.S. 45 (1923) .............................................................................................................10, 25
`
`Everpure, Inc. v. Cuno,
`875 F.2d 300 (Fed. Cir. 1989)..................................................................................................21
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`535 U.S. 722 (2002) .................................................................................................4, 11, 16, 30
`
`Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,
`336 U.S. 271 (1949) .................................................................................................................11
`
`Husky Injection Molding Sys. Ltd. v. R & D Tool & Eng’g Co.,
`291 F.3d 780 (Fed. Cir. 2002)..................................................................................................21
`
`Lava Trading, Inc. v. Sonic Trading Mgmt., LLC,
`445 F.3d 1348 (Fed. Cir. 2006)............................................................................................4, 29
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`481 F.3d 1371 (Fed. Cir. 2007)................................................................................................34
`
`Limelight Networks, Inc. v. Akamai Techs., Inc.,
`134 S. Ct. 2111 (2014) .............................................................................................................19
`
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) ........................................................................................................... 11-12
`
`Porter v. Farmers Supply Serv., Inc.,
`790 F.2d 882 (Fed. Cir. 1986)..................................................................................................21
`
`Retractable Techs., Inc. v. Becton, Dickinson & Co.,
`653 F.3d 1296 (Fed. Cir. 2011)................................................................................................12
`
`- iii -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 5 of 40 PageID #: 4937
`
`
`Robert Bosch LLC v. Trico Prods. Corp.,
`No. 12 CV 437 (N.D. Ill. Sept. 14, 2012), D.I. 62 ....................................................... 13-14, 28
`
`Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`135 S. Ct. 831 (2015) ...........................................................................................................4, 30
`
`Union Paper-Bag Machine Co. v. Murphy,
`97 U.S. 120 (1877) ...................................................................................................................11
`
`Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
`520 U.S. 17 (1997) .............................................................................................................10, 14
`
`Westinghouse Electric & Mfg. Co. v. Formica Insulation Co.,
`266 U.S. 342 (1924) .................................................................................................................10
`
`Winans v. Denmead,
`56 U.S. (15 How.) 330 (1853) .................................................................................................12
`
`Rules and Statutes
`
`35 U.S.C. § 112(a) .....................................................................................................................4, 30
`
`35 U.S.C. § 154(a)(1) (2012) .........................................................................................................11
`
`35 U.S.C. §§ 271(b) and (c) ...........................................................................................................18
`
`35 U.S.C. § 271(a) ................................................................................................................. passim
`
`Fed. R. Civ. P. 37(c)(1) ..................................................................................................................25
`
`Fed. R. Civ. P. 30(b)(6)..................................................................................................................20
`
`
`
`- iv -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 6 of 40 PageID #: 4938
`
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`This is an action for alleged patent infringement. The Second Amended Complaint of
`
`plaintiff Robert Bosch LLC (“Bosch”), filed October 31, 2014 (the “SAC”; D.I. 95), asserts
`
`eighteen “Counts” of infringement, but the Goodyear “Hybrid” product is accused in just four of
`
`them, namely, Counts Three, Six, Eight, and Eighteen. The time for amending that pleading set
`
`by the Scheduling Order in this nearly three-year-old case lapsed on March 20, 2015.
`
`On October 31, 2014, Bosch served initial infringement contentions. As to the Goodyear
`
`Hybrid product, Bosch asserts claims of the four patents of the asserted Counts: (i) two claims of
`
`U.S. Patent No. 6,826,926 (the “’926 patent) of Count Six; (ii) three claims of U.S. Patent No.
`
`6,553,607 (the “’607 patent”) of Count Three; (iii) eight claims of U.S. Patent No. 8,272,096 (the
`
`“’096 Patent”) of Count Eighteen; and (iv) one claim of U.S. Patent No. 6,973,698 (the “’698
`
`patent”) of Count Eight.
`
`On December 9, 2014, Bosch served supplemental initial infringement contentions.
`
`Bosch dropped its contention that the ’698 patent reached the Goodyear Hybrid product, thus
`
`leaving only three patents asserted against that product and only one claim for direct
`
`infringement (the ’926 of Count Six) as to that product.
`
`On December 23, 2014, Costco moved to dismiss the SAC as to its asserted claims for
`
`pre-notice damages or pre-notice indirect infringement. That motion is fully briefed and set for
`
`oral argument on June 8, 2015, concurrently with the argument of the present motion.
`
`On March 6, 2015, Bosch served its preliminary election of claims under paragraph 21.a
`
`of the Scheduling Order (which required an election of no more than 56 claims in total). As to
`
`the Goodyear Hybrid product, Bosch maintained its previous contentions as to the ’607 and ’926
`
`patents but dropped three claims of the ’096 patent.
`
`On March 18, 2015, the parties exchanged lists of claim words and phrases that might (or
`
`
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 7 of 40 PageID #: 4939
`
`
`might not) require construction by the Court. On March 19, 2015, Costco advised Bosch that it
`
`intended to seek summary judgment dismissing the SAC insofar as it alleged that sale or use of
`
`the Goodyear Hybrid product constituted patent infringement. The following day, March 20,
`
`2015, Bosch served a paper styled “Second Supplemental Initial Infringement Contentions.”
`
`Bosch’s Second Supplemental Initial Infringement Contentions purported to increase the
`
`number of asserted claims from 56 to 106, contrary to paragraph 21.a of the Scheduling Order.
`
`Additionally, those contentions asserted for the first time that U.S. Patent No. 6,611,988 (the
`
`“’988 patent”) is purportedly infringed by use or sale of the Goodyear Hybrid product, although
`
`no such claim is pleaded in the existing SAC (see D.I. 95 Count Four).
`
`By letter dated April 1, 2015 (D.I. 141), Costco, joined by its co-defendants, sought leave
`
`to file an early motion for summary judgment dismissing the SAC insofar as it alleges that use or
`
`sale of the Goodyear Hybrid product constitutes patent infringement. Costco proposed moving
`
`for summary judgment as an alternative to asking the Court to construe patent claim words in the
`
`abstract. On April 7, 2015 (D.I. 147), the Court granted leave to move for summary judgment
`
`concurrently with the briefing of certain claim construction issues.
`
`This is Costco’s opening brief in support of its motion for summary judgment and
`
`regarding claim construction. Insofar as the Goodyear Hybrid product lacks structural elements
`
`that asserted claim words describe, any claim construction aspects of those points are briefed in
`
`the context of the non-infringement discussion.1 To the extent that the Court elects to declare
`
`what certain patent claim words or phrases denote or describe, outside the context of a merits
`
`issue whose resolution requires such a declaration, Costco separately sets forth its views on what
`
`
`1 Costco respectfully submits that twenty (20) pages of this brief should be counted toward
`claim construction issues and any excess counted against the pages that the Court has allowed
`the parties for summary judgment briefing.
`
`- 2 -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 8 of 40 PageID #: 4940
`
`
`disclosed subject matter asserted claim terms are rightly understood as describing or denoting.
`
`SUMMARY OF THE ARGUMENT
`
`1.
`
`SAC Count Six, which asserts the ’926 patent, should be dismissed as to the
`
`Goodyear Hybrid product, at least because that product lacks the claimed “at least one support
`
`element (12), a wiper strip (14), and a connecting device (16) for a wiper arm (18), wherein the
`
`support element (12) is an elongated, flat bar to which the wiper strip (14) and the connecting
`
`device are attached.” The Goodyear Hybrid product lacks any structure identical or equivalent to
`
`the claimed “support element (12).” The metal wiper strip stiffener in the Goodyear Hybrid
`
`product cannot constitute the claimed “support element (12)” for at least the reason that that
`
`stiffener is not “attached” to the product’s wiper arm connector. Part I, infra.
`
`2.
`
`SAC Counts Three and Eighteen, asserting the ’607 patent and the ’096 patent,
`
`respectively, should be dismissed as to the Goodyear Hybrid product, at least because (i) the
`
`subject matter claimed in those patents includes wiper arm structures that form no part of the
`
`Goodyear Hybrid product, and (ii) the ’607 and ’096 patents grant Bosch no right to exclude use
`
`or repair of original equipment (“OE”) wiper systems that were sold or re-sold in the United
`
`States with Bosch’s authorization. See, e.g., Aro Mfg. Co. v. Convertible Top Replacement Co.,
`
`365 U.S. 336 (1961) (replacement of worn-out convertible top material did not infringe patents
`
`claiming convertible top assembly). Bosch has not identified so much as a single year or model
`
`of
`
`or other brand
`
`of vehicle whose use or repair by Costco customers could even theoretically infringe the ’607 or
`
`’096 patents. Part II, infra.
`
`3.
`
`SAC Count Eight, asserting the ’698 patent, should be dismissed as to the
`
`Goodyear Hybrid product, because Bosch has abandoned that claim. Part III, infra.
`
`4.
`
`SAC Court Four, asserting the ’988 patent, does not allege that use or sale of the
`
`- 3 -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 9 of 40 PageID #: 4941
`
`
`Goodyear Hybrid product infringes that patent. The time for amending the pleadings passed on
`
`March 20, 2015, without Bosch seeking leave to amend. In any event, Bosch’s back-door attempt
`
`to amend SAC Count Four should be rejected as futile. The Goodyear Hybrid product lacks the
`
`claimed “band-shaped-elongated, spring-elastic support element (12)” and also lacks the claimed
`
`“coupling part (20).” The wiper arm connector in the Goodyear Hybrid product cannot constitute
`
`the claimed “coupling part (20),” at least because it is not “seated on another band face (18) of
`
`the support element.” Part IV, infra.
`
`5.
`
`Except as necessary to determine these non-infringement questions, Costco
`
`submits that the Court need not and should not undertake to declare what patent claim words
`
`might mean or denote in the abstract, an exercise that often “takes on the attributes of something
`
`akin to an advisory opinion.” Lava Trading, Inc. v. Sonic Trading Mgmt., LLC, 445 F.3d 1348,
`
`1350 (Fed. Cir. 2006). Without a particular accused structure in view, the Court cannot
`
`determine whether Bosch may be barred from seeking to exclude use of “the particular
`
`equivalent in question.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722,
`
`740 (2002). Moreover, fact-bound disputes about patent claim scope now require trials, not
`
`summary proceedings. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 840–42
`
`(2015).
`
`Nevertheless, should the Court find it appropriate to declare what certain patent claim
`
`words or phrases might mean or denote outside the context of a merits issue whose resolution
`
`turns on whether particular subject matter is included or excluded, in Part V infra, Costco
`
`addresses what appears to be the support for certain patent claim terms in the “written
`
`description of the invention” (35 U.S.C. § 112(a)) contained in the specifications of the asserted
`
`patents. Insofar as Bosch contends that asserted patent claim words or phrases encompass more
`
`- 4 -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 10 of 40 PageID #: 4942
`
`
`than equivalents of corresponding structures disclosed in the specifications and drawings of the
`
`patents, such patents should be declared void.
`
`STATEMENT OF FACTS
`
`In the years following World War II, new vehicles started to come equipped with curved
`
`windshields and, relatedly, windshield wiper assemblies having the general arrangement of parts
`
`depicted in U.S. Patent No. 3,418, 679 to Barth (“Barth”; Appendix [“A-”] 44):
`
`
`The above figure shows a first support bracket (2), two outer support brackets (5, 6), four
`
`claws (7), two stiffeners (20), and a rubber wiper (1). The ’926 patent characterizes the support
`
`system depicted above as “the costly support bracket design.” A-222 at col. 1:22–23.
`
` The prior art to the ’926 patent also includes wiper assemblies in which a pre-curved
`
`spring replaces the multiple support brackets, stiffeners, claws, and couplers often found in wiper
`
`assemblies. One such prior art wiper assembly (“Swanepoel”; A-84) is depicted below:
`
`
`The above figure shows a pre-curved spring (12) to which a wiper arm connector (16)
`
`- 5 -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 11 of 40 PageID #: 4943
`
`
`and a rubber wiper strip (14) are both attached. There are no support brackets, bracket pivot
`
`couplers, claws, or stiffeners positioned in the rubber wiper strip.
`
`The prior art to the ’926 patent also included “hybrid” wiper assemblies like the one
`
`below in U.S. Patent No. 6,000,093 to Charng (A-89):
`
`
`The above figures show (i) a first support bracket (2); (ii) two outer support brackets (3,
`
`4); (iii) six claws (not numbered); (iv) a rubber wiper strip (14); (v) a stiffener (15); and (vi) a
`
`wiper arm connector (23, 24, 25). As in the Barth assembly depicted above, the Charng outer
`
`support brackets (3) are free to pivot independently of one another.
`
`The ’926 patent discloses a wiper assembly that purports to improve upon the Swanepoel
`
`assembly depicted above. Figures 1 and 4 of the ’926 patent (A-216, A-218) are reproduced
`
`below:
`
`
`The above figures depict a pre-curved flat spring (12) to which a wiper arm connector
`
`(16) and a rubber wiper strip (14) are both attached. There are no support brackets, bracket pivot
`
`couplers, claws, or stiffeners positioned in the rubber wiper strip. The support element (12) has a
`
`- 6 -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 12 of 40 PageID #: 4944
`
`
`width (b) and thickness (d) as shown in Figure 4. The width (b) is defined by reference to a z-
`
`axis, which is the sweep direction and generally parallel to the windshield. The depth (d) is
`
`defined by reference to a y-axis, which is generally perpendicular to the windshield.
`
`In explaining the purported novelty of the wiper assembly depicted above, the ’926 patent
`
`stated in column 1 (A-222 at col. 1:7–24; emphasis added):
`
`In wiper blades of the present invention, the support element should assure a
`predetermined distribution of the wiper blade pressing force—often also called
`pressure—applied by the wiper arm against the window, over the entire wiping
`zone that the wiper blade sweeps across. Through an appropriate curvature of the
`unstressed support element—i.e. when the wiper blade is not resting against the
`window—the ends of the wiper strip, which is placed completely against the
`window during the operation of the wiper blade, are loaded in the direction of the
`window by the support element, which is then under stress, even when the curvature
`radii of spherically curved vehicle windows change in every wiper blade position.
`The curvature of the wiper blade must therefore be slightly sharper than the sharpest
`curvature measured in the wiping zone of the window to be wiped. The support
`element thus replaces the costly support bracket design that has two spring strips
`disposed in the wiper strip, which is the kind used in conventional wiper blades
`(DE-OS 15 05 357).
`
`The citation “DE-OS 115 05 357,” above, denotes the German counterpart to U.S. Patent
`
`No. 3,418,697 to Barth (“Barth”), Figure 1 of which is reproduced on page 5, above. The ’926
`
`patent specification proceeds then to describe three prior art flat spring wiper blade assemblies
`
`and characterizes each of them as being of the same “type” as the “[t]he invention.” A-222 at
`
`col. 1:26–28, 33–34, 52–53 (“EP 0 594 451 describes flat bar wiper blades with a varying
`
`profile”).
`
`The ’926 patent then goes on to propose, as a purported improvement upon the tapered
`
`spring support disclosed in Swanepoel, a substantially rectangular spring support whose width
`
`and thickness are such that the deflection angle gamma, illustrated below, does not exceed .009
`
`radians (claim 1) or .005 radians (claim 2) when the structure is pulled or pushed by a wiper arm
`
`in a direction parallel to the windshield, an axis denoted “Z” in the figure below:
`
`- 7 -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 13 of 40 PageID #: 4945
`
`
`Claim 1 of the ’926 patent reads (A-226; emphasis added):
`
`
`
`1. A wiper blade for windows, comprising: at least one support element (12), a
`wiper strip (14), and a connecting device (16) for a wiper arm (18), wherein the
`support element (12) is an elongated, flat bar to which the wiper strip (14) and
`the connecting device (16) are attached, wherein the support element (12) has a
`cross sectional profile in which
`
`
`where Fwf is an actual contact force exerted on the wiper blade by the wiper arm
`(18) in condition when it is pressed against a window, L is a length of the support
`element (12), E is an elasticity modulus of the support element (12), and Izz is a
`moment of inertia of a cross sectional profile around a z-axis perpendicular to an
`[s-]axis, which adapts along with the support element (12), and perpendicular to a
`y-axis, wherein the support element (12) has a substantially rectangular cross
`sectional profile (40), with a substantially constant width b and a substantially
`constant thickness d.
`
`As explained more fully in Part I infra, the above-quoted claim plainly excludes the
`
`accused Goodyear Hybrid product from its scope. Reproduced below is an image from Bosch’s
`
`letter to the Court dated April 2, 2015 (D.I. 145) which Bosch labeled, “Exploded view of
`
`Costco’s accused Goodyear Hybrid blade”:
`
`
`The above image shows, from top to bottom, (i) one part of a two-part wiper arm
`
`- 8 -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 14 of 40 PageID #: 4946
`
`
`connector, (ii) an articulated, three-part superstructure having an irregularly shaped opening for
`
`receiving the wiper connector, a central support bracket, two outer support brackets, and four
`
`claws as shown in the exploded image below; (iii) a first wiper strip stiffener made of metal;
`
`(vi) a second wiper strip stiffener made of plastic (inside of which the metal stiffener slides and
`
`fits loosely); and (vi) a rubber wiper strip. A-651–60 (Declaration of Daniel H. Kruger ¶¶ 2, 13–
`
`14 & Exs. 1–2).
`
`
`The central and outer support brackets of the Goodyear Hybrid product, depicted above,
`
`plainly do not form “an elongated, flat bar” having a “substantially rectangular” cross sectional
`
`profile. Evidently recognizing this, Bosch’s April 2 letter to the Court pointed to the metal
`
`stiffener in the Goodyear Hybrid product (third from the bottom, above) as supposedly being
`
`identical or equivalent to the claimed “support element (12).” But this proposed word game
`
`avails Bosch of nothing; for the asserted claims require “an elongated, flat bar to which the wiper
`
`strip (14) and the connecting device (16) are attached.” As clearly shown above, the structure
`
`that Bosch now fancifully characterizes as identical or equivalent to the claimed “support
`
`element (12)” does not even touch and plainly is not “attached” to the wiper arm connecting
`
`device in the Goodyear Hybrid product (structure at top).
`
`Whatever may be the merits of a pre-curved, substantially rectangular spring support
`
`whose deflection angle under load in the sweep or z-axis direction can be calculated using a
`
`mathematical formula, the Goodyear Hybrid simply does not incorporate any such support. And
`
`- 9 -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 15 of 40 PageID #: 4947
`
`
`as for the load balancing brackets that do form the Goodyear Hybrid wiper support structure, the
`
`’926 patent does not disclose any such structure and the formula in the asserted claims does not
`
`even purport to define lateral deflection angle of such a structure under load.
`
`ARGUMENT
`
`Section 271(a) of the United States Code provides: “Except as otherwise provided in this
`
`title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within
`
`the United States or imports into the United States any patented invention during the term of the
`
`patent therefor, infringes the patent.” 35 U.S.C. § 271(a) (2012) (emphasis added).
`
`“§ 271(a) of the new Patent Code, which defines ‘infringement,’ left intact the entire
`
`body of case law on direct infringement.” Aro, 365 U.S. at 342; accord Warner-Jenkinson Co. v.
`
`Hilton Davis Chem. Co., 520 U.S. 17, 26 (1997) (“In the context of infringement, we have
`
`already held that pre-1952 precedent survived the passage of the 1952 Act.”).
`
`In Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 63 (1923), the
`
`Supreme Court provided a comprehensive restatement of how federal courts are to go about
`
`analyzing whether a patent is, or is not, infringed by use of an accused product or process:
`
`In administering the patent law, the court first looks into the art, to find what the
`real merit of the alleged discovery or invention is, and whether it has advanced
`the art substantially. If it has done so, then the court is liberal in its construction of
`the patent, to secure to the inventor the reward he deserves. If what he has done
`works only a slight step forward, and that which he says is a discovery is on the
`border line between mere mechanical change and real invention, then his patent, if
`sustained, will be given a narrow scope, and infringement will be found only in
`approximate copies of the new device. It is this differing attitude of the courts
`toward genuine discoveries and slight improvements that reconciles the
`sometimes apparently conflicting instances of construing specifications and the
`finding of equivalents in alleged infringements.
`
`See also Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 350 (1924)
`
`(“As between the owner of a patent and the public, the scope of the right of exclusion granted is
`
`to be determined in the light of the state of the art at the time of the invention.”).
`
`- 10 -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 16 of 40 PageID #: 4948
`
`
`With equal clarity, the Supreme Court has repeatedly instructed that patent claim words
`
`cannot expand a patentee’s rights beyond equivalents of corresponding structure, material, or
`
`acts described in a patent’s specification. See, e.g., Festo, 535 U.S. at 736 (“What is claimed by
`
`the patent application must be the same as what is disclosed in the specification; otherwise the
`
`patent should not issue.”); Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271, 277
`
`(1949) (patent claims “fail equally to perform their function as a measure of the grant when they
`
`overclaim the invention”).
`
`In Union Paper-Bag Machine Co. v. Murphy, 97 U.S. 120, 125 (1877), the Court
`
`explained:
`
`[I]n determining the question of infringement, the court or jury, as the case may
`be, are not to judge about similarities or differences by the names of things, but
`are to look at the machines or their several devices or elements in the light of what
`they do, or what office or function they perform, and how they perform it, and to
`find that one thing is substantially the same as another, if it performs substantially
`the same function in substantially the same way to obtain the same result, always
`bearing in mind that devices in a patented machine are different in the sense of the
`patent law when they perform different functions or in a different way, or produce
`a substantially different result.
`
`The rule stated in Union Paper-Bag Machine Co. remains the law of the United States to
`
`this day. Patent claim words “‘define the scope of a patent grant,’” Markman v. Westview
`
`Instruments, Inc., 517 U.S. 370, 373 (1996) (emphasis added) (quoting 3 E. Lipscomb, Walker
`
`on Patents § 11:1, at 280 (3d ed. 1985)),2 but they do not necessarily provide an accurate
`
`description of a person’s actual invention. Patent claims are not statutes, but point to external
`
`things, i.e., structure, material, or acts that constitute the “invention” that is “patented”:
`
`
`2
` “Every patent shall contain . . . a grant to the patentee, his heirs or assigns, of the right to
`exclude others from making, using, offering for sale, or selling the invention throughout the
`United States . . . referring to the specification for the particulars thereof.” 35 U.S.C. § 154(a)(1)
`(2012) (emphasis added).
`
`- 11 -
`
`

`
`Case 1:12-cv-00574-LPS Document 165 Filed 05/01/15 Page 17 of 40 PageID #: 4949
`
`
`to describe mechanisms and complicated
`[T]he specifications . . . profess
`machinery, chemical compositions and other manufactured products, which have
`their existence in pais, outside of the documents themselves . . . . Indeed, the whole
`subject-matter of a patent is an embodied conception outside of the patent
`itself. . . . This outward embodiment of the terms contained in the patent is the thing
`invented, and is to be properly sought, like the explanation of all latent ambiguities
`arising from the description of external things, by evidence in pais. . . . It is not the
`construction of the instrument, but the character of the thing invented, which is
`sought in questions of identity and diversity of inventions.
`
`Markman, 517 U.S. at 385–86 (emphasis in original) (quoting Bishoff v. Wethered, 76 U.S. (9
`
`Wall.) 812, 815–16 (1869)).
`
`In Winans v. Denmead, 56 U.S. (15 How.) 330, 338–39 (1853), the Supreme Court set
`
`forth the following legal standard for determining the identity of “the thing patented” as a
`
`predicate for patent infringement analysis:
`
`In this, as in most patent cases, founded on alleged improvements in machines, in
`order to determine what is the thing patented, it is necessary to inquire.
`1. What is the structure or device, described by the patentee, as embodying his
`invention.
`2. What mode of operation is introduced and employed by this structure or device.
`3. What result is attained by means of this mode of operation.
`4. Does the specif