Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 1 of 18 PageID #: 12438
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Civil Action No. 12-574-LPS
`(CONSOLIDATED)
`
`ROBERT BOSCH LLC,
`
`Plaintiff,
`
`V.
`
`ALBEREE PRODUCTS, INC., API KOREA CO.,
`LTD., SAVER AUTOMOTIVE PRODUCTS,
`INC., and COSTCO WHOLESALE
`CORPORATION
`
`Defendants.
`
`COSTCO WHOLESALE CORPORATION,
`
`Counter-Plaintiff,
`
`v.
`
`ROBERT BOSCH LLC and ROBERT BOSCH
`GMBH,
`
`Counter-Defendants.
`
`Richard L. Horwitz, David E. Moore, Bindu A. Palapura, Stephanie E. O'Byrne, POTTER
`ANDERSON & CORROON LLP, Wilmington, DE.
`
`Mark A. Hannemann, Jeffrey S. Ginsberg, Rose Cordero Prey, Ksenia Takhistova, KENYON &
`KENYON LLP, New York, NY.
`
`Attorneys for Plaintiffs.
`
`Mary B. Graham, Thomas Curry, MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
`Wilmington, DE.
`
`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, New
`York, NY.
`
`Attorneys for Defendant Costco Wholesale Corporation.
`
`

`

`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 2 of 18 PageID #: 12439
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`Sean T. O'Kelly, O'KELL Y ERNST & BIELLI, LLC, Wilmington, DE.
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`Robert J. Kenney, Michael J. Smith, John D. V. Ferman, BIRCH, STEW ART, KOLASCH &
`BIRCH, LLP, Falls Church, VA.
`
`Attorneys for Defendants Alberee Products, Inc., API Korea Co., Ltd., and Saver
`Automotive Products, Inc.
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`MEMORANDUM OPINION
`
`March 16, 2016 L~ J\a \It \l~ en~......
`
`Wilmington, Delaware
`
`(V\~.JIJ.-._ ~ ~/ ").'\)I bJ
`
`

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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 3 of 18 PageID #: 12440
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`1~~~
`
`STARK; U.S. District Judge:
`
`On May 4, 2012, plaintiff Robert Bosch LLC ("Bosch LLC" or "Plaintiff') filed a patent
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`infringement action against defendants API Korea Co., Ltd. ("API") and Alberee Products, Inc.
`
`("Alberee") asserting
`
`.S. Patent Nos. 6,523,218 ("the '218 patent"), 6,530, 111 ("the '111
`
`patent"), 6,553,607 ("the '607 patent"), 6,611 ,988 ("the '988 patent"), 6,675 ,434 ("the '434
`
`patent"), 6,836,926 ("the '926 patent"), 6,944,905 ("the '905 patent"), 6,973,698 ("the '698
`
`patent"), 7,228,588 ("the ' 588 patent"), 7,293 ,321 ("the '321 patent"), 7,523,520 ("the '520
`
`patent"), and 7,484,264 ("the ' 264 patent"). (D.I. 1) 1 On January 18, 2013 , Bosch LLC filed an
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`Amended Complaint adding Saver Automotive Products, Inc. ("Saver") as a defendant. (D.I. 38)
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`On February 5, 2014, Bosch LLC filed an additional patent infringement action against
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`defendants API, Alberee, and Saver, asserting U.S. Patent No. 6,292,974 ("the '974 patent").
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`(C.A. No. 14-142-LPS, D.I. 1) On September 10, 2014, the two patent infringement actions were
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`consolidated. (D.I. 67) On October 9, 2014, Bosch LLC filed a Consolidated Amended
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`Complaint against API, Alberee, Saver, and Costco Wholesale Corporation ("Costco")
`
`(collectively, "Defendants"), asserting U.S. Patent Nos. ("the '823 patent"), 6,668,419 ("the '419
`
`patent"), 7,941 ,891 ("the ' 891 patent"), and 8,544,136 ("the ' 136 patent), as well as all of the
`
`previously asserted patents. (D.I. 84) On October 31 , 2014, Bosch LLC filed a Second
`
`Amended Complaint ("SAC") asserting U.S. Patent No. 8,272,096 ("the '096 patent") as well as
`
`all of the previously asserted patents against Defendants. (D.I. 95)
`
`On September 30, 2015, Costco filed a Counterclaim, adding Robert Bosch GmbH
`
`1All D.I. references in this opinion refer to C.A. No. 12-574-LPS unless otherwise
`specified.
`
`1
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`

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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 4 of 18 PageID #: 12441
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`("Bosch GmbH") as a counterclaim defendant. (D.l. 244) Bosch GmbH filed a Motion to
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`Dismiss for Lack of Jurisdiction Over the Person on December 4, 2015 (D.l. 263), but withdrew
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`its motion on January 15, 2016 (D.l. 283), and is now a counterclaim defendant and co nnter claim
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`plaintiff [revised March 28 , 2016) in this case (see D.I. 311 ).
`
`Among the several issues pending before the Court is Costco' s Motion for Summary
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`Judgment as to the Goodyear Hybrid Wiper Product ("Summary Judgment Motion"). (D.I. 158)
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`Bosch LLC and Costco completed briefing on the Summary Judgment Motion on May 29, 2015
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`(D.I. 159; D.I. 177; D.I. 188), and Defendants API, Alberee, and Saver have joined in Costco's
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`submissions (D .I. 163; D .I. 179; D .I. 189). The Court heard argument on the Summary Judgment
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`Motion on June 8, 2015 . (See D.I. 204) ("Tr.") On June 24, 2015, the Court ordered
`
`supplemental briefing (D.I. 201), which the parties completed on July 24, 2015 (D.I. 211 ; D.I.
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`212 ; D.I. 214; D.I. 216; D.I. 229; D.I. 230). The Summary Judgment Motion is directed to
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`multiple issues. This Memorandum Opinion addresses three of them: (1) non-infringement of
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`the ' 607 and ' 096 patents by the Goodyear Hybrid Product; (2) non-infringement of the ' 698
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`patent by the Goodyear Hybrid Product; and (3) non-infringement of the ' 988 patent by the
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`Goodyear Hybrid Product. For the reasons explained below, the Court will grant in part the
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`Summary Judgment Motion with respect to these three issues. The Court will deny without
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`prejudice the remainder of the Summary Judgment Motion in light of the fact that, for the most
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`part, this case will be stayed.
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`The Court also addresses Bosch LLC ' s Motion for Relief from the Court' s December 22,
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`20 15 Order ("Motion for Relief') (D.I. 284) and how the case will proceed.
`
`I.
`
`FACTUAL BACKGROUND
`
`2
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`

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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 5 of 18 PageID #: 12442
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`The '607 and '096 patents claim side-lock wiper systems for motor vehicles. (D.I. 161
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`Exs. 16, 24) The '988 and ' 698 patents claim wiper blades for motor vehicles. (D.I. 161 Exs.
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`17, 20) All four of these patents were originally assigned to Bosch GmbH. (D.I. 161 Exs. 16,
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`17, 20, 24) Bosch GmbH, the parent of Bosch LLC (see D.I. 311 at ii 4), assigned these four
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`patents to Bosch LLC in 2010 ('607 and '698 patents), 2011 ('988 patent), and 2014 ('096
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`patent). (D.I. 188 Ex. 2 at BLLC1241453-56, BLLC1241460-65) In doing so, Bosch GmbH
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`retained for itself "a nonexclusive license under the Contract Patents," including "the right to
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`sublicense the Contract Patents in the framework of manufacturing licenses or patent cross
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`licenses." (D.I. 216 Ex. A at Ex. 1 at ii 5)
`
`Bosch LLC sells in the United States original equipment side-lock wiper systems that
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`practice the '607 and ' 096 patents, for installation by domestic car manufacturers on vehicles
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`sold in the United States.2 The Bosch group of companies enters into agreements with domestic
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`car manufacturers. For example, Section 19.01 of the Production Purchasing Global Terms and
`
`Conditions, "the global terms-and-conditions agreement applicable to sales by the Bosch group
`
`of companies to• • • • • • • • and its affiliates" (D.I. 348 at 1), provides:
`
`The Supplier will grant Licenses on the bases specified below
`unless an Earlier Agreement (as defined in Section 4.02) states
`otherwise. A License is a license granted in all cases to the Buyer
`and its Related Companies on a nonexclusive, worldwide basis, to
`make, have made, use, have used, sell and import manufactures,
`compositions, machines and processes covered by the Intellectual
`Property Rights of the Supplier.
`
`(D.I. 347 Ex. 1 at BGMBH0013576-77)
`
`Bosch GmbH sells outside of the United States original equipment side-lock wiper
`
`2These include the BMW X3 , Ford Five Hundred, Ford Freestyle, and Mercury Montego.
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`3
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`

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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 6 of 18 PageID #: 12443
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`systems that practice the ' 607 and '096 patents, for installation by foreign car manufacturers on
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`vehicles to be imported into the United States. 3 The record includes a Representative
`
`Agreement4 between Bosch GmbH and the foreign car manufacturers. Article XII(l) of the
`
`Representative Agreement between Bosch GmbH and the foreign car manufacturers provides:
`
`1. The Supplier shall be liable for any claim which, by the use of
`goods according to the terms of the contract, result from the
`infringement of industrial property rights ... if at least one of such
`industrial property rights of the same industrial property rights
`family [is] published either in the supplier's mother country ... or
`the United States of America.
`
`2. The supplier shall hold the purchaser and his purchaser' s
`customers free and harmless of all liabilities from making use of
`such industrial property rights.
`
`(D.I. 211 Ex. 3 at Ex. 2 at 3)
`
`The Goodyear Hybrid Product is a wiper blade which can be used to replace the worn-out
`
`wiper blades of the original equipment side-lock wiper systems sold by Bosch LLC and Bosch
`
`GmbH. (See D.I. 95 at iii! 429-33)
`
`II.
`
`LEGAL ST AND ARDS
`
`Pursuant to Rule 56(a) of the Federal Rules of Civil Procedure, "[t]he court shall grant
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`summary judgment if the movant shows that there is no genuine dispute as to any material fact
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`and the movant is entitled to judgment as a matter of law." The moving party bears the burden of
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`3These include the BMW i3 , BMW 5-series, BMW 6-series, BMW 7-series, Mercedes C(cid:173)
`class, Mercedes CL-class, Mercedes CLS-class, Mercedes E-class, Mercedes GLK-class,
`Mercedes S-class, Porsche Cayenne, and Volkswagen Touareg.
`
`4Bosch GmbH represents that its agreements with foreign car manufacturers "closely
`follow the terms recommended by the Verband der Automobilindustrie," which terms
`(hereinafter, "Representative Agreement") it produced in lieu of its confidential agreements.
`(D.I. 216 Ex. A at if 6)
`
`4
`
`

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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 7 of 18 PageID #: 12444
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`showing the absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co. , Ltd. v.
`
`Zenith Radio Corp., 475 U.S. 574, 585-86 (1986). An assertion that a fact cannot be - or,
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`alternatively, is - genuinely disputed must be supported either by citing to "particular parts of
`
`materials in the record, including depositions, documents, electronically stored information,
`
`affidavits or declarations, stipulations (including those made for purposes of the motion only),
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`admissions, interrogatory answers, or other materials," or by "showing that the materials cited do
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`not establish the absence or presence of a genuine dispute, or that an adverse party cannot
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`produce admissible evidence to support the fact. " Fed. R. Civ. P. 56(c)(l)(A) & (B). If the
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`moving party has carried its burden, the nonmovant must then "come forward with specific facts
`
`showing that there is a genuine issue for trial." Matsushita , 475 U.S. at 587 (internal quotation
`
`marks omitted). The Court will "draw all reasonable inferences in favor of the nonmoving party,
`
`and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson
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`Plumbing Prods., Inc. , 530 U.S. 133, 150 (2000).
`
`To defeat a motion for summary judgment, the nonmoving party must "do more than
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`simply show that there is some metaphysical doubt as to the material facts ." Matsushita, 475
`
`U.S. at 586; see also Podobnik v. US. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (stating
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`party opposing summary judgment "must present more than just bare assertions, conclusory
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`allegations or suspicions to show the existence of a genuine issue") (internal quotation marks
`
`omitted). However, the "mere existence of some alleged factual dispute between the parties will
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`not defeat an otherwise properly supported motion for summary judgment;" a factual dispute is
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`genuine only where "the evidence is such that a reasonable jury could return a verdict for the
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`nonmoving party." Anderson v. Liberty Lobby, Inc. , 477 U.S . 242, .247-48 (1986). "If the
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`5
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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 8 of 18 PageID #: 12445
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`evidence is merely colorable, or is not significantly probative, summary judgment may be
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`granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S.
`
`317, 322 (1986) (stating entry of summary judgment is mandated "against a party who fails to
`
`make a showing sufficient to establish the existence of an element essential to that party' s case,
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`and on which that party will bear the burden of proof at trial"). Thus, the "mere existence of a
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`scintilla of evidence" in support of the nonmoving party' s position is insufficient to defeat a
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`motion for summary judgment; there must be "evidence on which the jury could reasonably find"
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`for the nonmoving party. Anderson, 477 U.S . at 252.
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`III. DISCUSSION
`
`A.
`
`Non-Infringement of the '607 and '096 Patents
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`The SAC alleges indirect- rather than direct - infringement of the ' 607 and '096 patents
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`by Defendants based on direct infringement by Defendants' customers when those customers
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`replace the wiper blades in their original equipment side-lock wiper systems. (D.I. 95 at iii! 80,
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`434) Defendants seek summary judgment of non-infringement of the ' 607 and '096 patents by
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`the Goodyear Hybrid Product on the basis that there is no direct infringement by Defendants'
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`customers as a matter oflaw, and, therefore, there can be no indirect infringement by Defendants.
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`See Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 , 2117 (2014) ("[W]here
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`there has been no direct infringement, there can be no inducement of infringement under §
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`271(b)."); Aro Mfg. Co. v. Convertible Top Replacement Co. , 365 U.S. 336, 341 (1961) ("[T]here
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`can be no contributory infringement in the absence of a direct infringement."). Defendants insist
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`there is no direct infringement of the ' 607 and '096 patents by Defendants' customers either
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`because: (a) Plaintiff has exhausted its rights with respect to these patents by selling the claimed
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`6
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`

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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 9 of 18 PageID #: 12446
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`side-lock wiper systems in the United States to domestic car manufacturers and authorizing their
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`importation into the United States by foreign car manufacturers, or (b) alternatively with respect
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`to the foreign car manufacturers, because Plaintiff has licensed the importation and sale of the
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`claimed side-lock wiper systems into the United States without restriction. As a result,
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`Defendants argue, Defendants' customers' use of the Goodyear Hybrid Product, which consists
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`of only a component (the wiper blade) of the side-lock wiper systems claimed by the ' 607 and
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`' 096 patents, does not constitute direct infringement of the ' 607 and ' 096 patents under the
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`doctrine of permissible repair. See Aro, 365 U.S . at 341 (explaining that replacement of worn-
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`out convertible top material did not infringe patent claiming convertible top assembly); Husky
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`Injection Molding Sys. Ltd. v. R & D Tool & Eng 'g Co., 291 F.3d 780, 788 (Fed. Cir. 2002)
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`("[T]here is no infringement [of the patented system] if the particular part is readily
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`'replaceable'").
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`Plaintiff Bosch LLC counters that it has neither exhausted nor licensed its rights under the
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`' 607 and '096 patents, arguing that the permissible repair doctrine is inapplicable in this case. 5
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`While Bosch LLC concedes that the side-lock wiper systems installed on domestic vehicles were
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`the subject of authorized first sales in the United States, it argues that the side-lock wiper systems
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`5Plaintiff further argues that " [ o ]ther infringers have asserted the same defense, without
`success," pointing to an opinion from the Northern District of Illinois denying a defendant' s
`motion for summary judgment of non-infringement of Bosch LLC' s ' 111 and ' 607 patents based
`on exhaustion. (D.I. 177 at 12 n.8) (citing Robert Bosch LLC v. Trico Prods. Corp., 2014 WL
`2118609 (N.D. Ill. May 21, 2014)) However, Plaintiff fails to mention that the court in that case
`denied the summary judgment motion because it had "sufficient doubts about whether [Warner
`& Swasey Co. v. Held, 256 F. Supp. 303 , 311 (E.D. Wis. 1966), and R2 Med. Sys., Inc. v.
`Katecho, Inc., 931 F. Supp. 1397 (N.D. Ill. 1996) (following Warner & Swasey), which adopted
`Plaintiff s view of exhaustion] were correctly decided to withhold ruling." Trico, 2014 WL
`2118609, at *4 (emphasis added).
`
`7
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`

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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 10 of 18 PageID #: 12447
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`installed on imported vehicles - imported into the United States by foreign car manufacturers
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`who first purchased the side-lock wiper systems from Bosch GmbH overseas -were not. (See
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`D.I. 177 at 14) Hence, Bosch LLC argues that it has not exhausted its rights with respect to the
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`original equipment side-lock wiper systems first sold to foreign car manufacturers abroad.
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`Moreover, according to Bosch LLC, its parent, Bosch GmbH, never licensed the foreign car
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`manufacturers to sell the side-lock wiper systems in the United States; nor could it have done so,
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`because when Bosch GmbH transferred the asserted patents to Bosch LLC, Bosch GmbH only
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`expressly retained the right to sub-license in "the framework of manufacturing licenses or patent
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`cross licenses." (D.I. 216 at 4) (quoting D.I. 216 Ex. A at Ex. 1 at BLLC1 241437 ~ 5)
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`The Court agrees with Bosch LLC that it has not surrendered its rights under the '607 and
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`' 096 patents due to exhaustion, but further agrees with Defendants that Plaintiff has surrendered
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`these rights due to licensing.
`
`The doctrine of patent exhaustion (or ' first sale' doctrine)
`addresses the circumstances in which a sale of a patented article (or
`an article sufficiently embodying a patent), when the sale is made
`or authorized by the patentee, confers on the buyer the ' authority'
`to engage in acts involving the article, such as resale, that are
`infringing acts in the absence of such authority.
`
`Lexmark Int'!, Inc. v. Impression Prods. , Inc., 2016 WL 559042, at *1 (Fed. Cir. Feb. 12, 2016) ;
`
`see also Bowman v. Monsanto Co., 133 S. Ct. 1761 , 1766 (2013) ("[T]he initial authorized sale
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`of a patented item terminates all patent rights to that item.") (internal quotation marks omitted)
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`(quoting Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625 (2008)). However, as the
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`Federal Circuit (sitting en bane) recently explained:
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`a foreign sale of a U.S.-patented article, when made by or with the
`approval of the U.S. patentee, does not exhaust the patentee' s U. S.
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`8
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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 11 of 18 PageID #: 12448
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`patent rights in the article sold, even when no reservation of rights
`accompanies the sale. Loss of U.S. patent rights based on a foreign
`sale remains a matter of express or implied license.
`
`Lexmark, 2016 WL 559042, at *47. 6 Because the side-lock wiper systems subject to the ' 607 and
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`' 096 patents were first sold outside of the United States, Defendants must show the existence of a
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`license in order to rely on the permissible repair defense.
`
`As stated by the Supreme Court in De Forest Radio Telephone & Telegraph Co. v. United
`
`States, 273 U.S. 236, 241 (1927):
`
`[a ]ny language used by the owner of the patent or any conduct on
`his part exhibited to another, from which that other may properly
`infer that the owner consents to his use of the patent in making or
`using it, or selling it, upon which the other acts, constitutes a
`license, and a defense to an action for a tort.
`
`Here, Article XII(l) of the Representative Agreement between Bosch GmbH and foreign car
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`manufacturers clearly authorizes the foreign car manufacturers to sell the side-lock wiper systems
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`without any geographical restrictions, by ensuring that Bosch LLC's parent, Bosch GmbH, will
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`be responsible for any damages arising from a patent infringement suit brought by Bosch LLC.
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`(See D.I. 211 Ex. 3 at Ex. 2 at 3) This indemnification conveys the requisite freedom from suit
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`commensurate with the grant of a license. See generally TransCore, LP v. Elec. Transaction
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`Consultants Corp. , 563 F.3d 1271 , 1275-76 (Fed. Cir. 2009) ("[A] patentee, by license or
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`otherwise, cannot convey an affirmative right to practice a patented invention by way of making,
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`using, selling, etc.; the patentee can only convey a freedom from suit. ... The real question .. .
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`is not whether an agreement is framed in terms of a ' covenant not to sue' or a 'license.' That
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`6The parties submitted post-hearing letter briefs concerning the recent Lexmark decision.
`(See D.I. 346; D.I. 347; D.I. 348)
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`9
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`

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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 12 of 18 PageID #: 12449
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`difference is only one of form, not substance - both are properly viewed as ' authorizations."').
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`Bosch LLC' s assertion that there is no evidence that Bosch Gm bH itself is not licensed to
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`authorize sales in the United States does not change the nature of the indemnity found in Article
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`XII(l) of the Representative Agreement, particularly in light of Bosch LLC's representation in
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`this Court that it will not sue the foreign car manufacturers or Bosch GmbH.7 "[There is] no law
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`that requires a subsidiary to delegate the right to license intellectual property held in its name to
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`its parent in writing, as opposed to giving its tacit consent in the course of intercorporate
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`dealings." Koninklifke Philips Elecs. N. V. v. Cinram Int 'l Inc., 603 F. Supp. 2d 735, 739
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`(S.D.N.Y. 2009). The absence of any restrictions on Bosch GmbH's ability to sub-license the
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`foreign car manufacturers' sale of the original equipment side-lock wiper systems is consistent
`
`with the Production Purchasing Global Terms and Conditions in which both Bosch entities grant
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`• • • • • • • •land its affiliates "a license granted in all cases to the Buyer and its Related
`
`Companies on a nonexclusive, worldwide basis, to make, have made, use, have used, sell and
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`import." (D.I. 347 Ex. 1at11 -12 (emphasis added); see also D.I. 348 at 1) Thus, the Court
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`concludes that Bosch LLC licensed its parent, Bosch GmbH, to authorize sales of the side-lock
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`wiper systems without any geographical restrictions.
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`Having found the existence of a license, the Court next considers the applicability of the
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`permissible repair doctrine. The permissible repair doctrine ensures "that a license to use a
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`7Bosch LLC does not clearly and affirmatively deny that Bosch GmbH has a license to
`authorize sales of the side-lock wiper system in the United States, but rather repeatedly points to
`the lack of evidence of such a license. (See, e.g., D .I. 216 at 3) ("But there is no evidence that
`Bosch GmbH has ever granted such a license, express or implied."); Tr. at 14 ("There has been
`no license in the record that importing or the selling of the wiper system was authorized by
`Bosch LLC, the patent owner."))
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`10
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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 13 of 18 PageID #: 12450
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`patented combination includes the right to preserve its fitness for use so far as it may be affected
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`by wear or breakage." Aro, 365 U.S. at 345. Plaintiffs contend that the Goodyear Hybrid
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`Product is not shielded from infringing the ' 607 and '096 patents by the permissible repair
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`doctrine because it infringes the claims of patents-in-suit other than the '607 and '096 patents.
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`Yet the permissible repair doctrine would only shield Defendants' customers from infringing the
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`'607 and '096 patents if those patents separately claimed the wiper blades embodied by the
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`Goodyear Hybrid Product, which they do not. Plaintiffs' reliance on the distinction made in
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`permissible repair cases between unpatented and patented components for the proposition that
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`Costco 's customers directly infringe the '607 and '096 patents when replacing a component
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`claimed only by other patents not at issue in this motion, is unpersuasive. See, e.g. , Aro, 365
`
`U.S . at 345 ("No element, not itself separately patented, that constitutes one of the elements of a
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`combination patent is entitled to patent monopoly, however essential it may be to the patented
`
`combination and no matter how costly or difficult replacement may be."); Porter v. Farmers
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`Supply Serv. , Inc. , 790 F2d 882, 886 (Fed. Cir. 1986) ("[A] licensed user may replace any
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`element no matter how essential it may be to the patented combination, as long as the replaced
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`element is not itself, i.e., separately, claimed.") (internal quotation marks and citation omitted);
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`LifeScan Scot. , Ltd. v. Shasta Techs. , LLC, 734 F.3d 1361 (Fed. Cir. 2013) ("[I]f a patent had
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`actually issued on the strips, the patentability of the strips could be relevant to exhaustion."). The
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`cases cited by Plaintiffs stand for the unremarkable proposition that the permissible repair
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`doctrine cannot shield from all infringement liability the replacement of worn-out components in
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`a product covered by a combination patent when those worn-out components are separately
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`patented.
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`11
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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 14 of 18 PageID #: 12451
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`Analysis of infringement liability under the permissible repair doctrine must be
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`undertaken with respect to the patent at issue, as opposed to other patents not at issue. That is,
`
`liability for infringing a combination patent by replacing a worn-out component of the
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`combination turns on whether that component is claimed by that combination patent. See
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`generally, e.g., Aro, 365 U.S. at 339 ("The fabric with which we deal here is an unpatented
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`element of respondent's combination patent, which covers only the combination of certain
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`components, one of which is a 'flexible top material. ' The patent makes no claim to invention
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`based on the fabric or on its shape, pattern or design. Whether the fabric or its shape might have
`
`been patentable is immaterial, for the fact is that neither the fabric nor its shape has been
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`patented. No claim that the fabric or its shape, pattern or design constituted the invention was
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`made in the application or included in the patent.") (internal citations omitted; emphasis added)
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`Just as the existence of a separate patent on a component of a patented combination does
`
`not render a licensee of the patented combination liable for infringement of the patented
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`combination , the existence of a separate patent on a component of a licensed combination patent
`
`does not defeat the permissible repair doctrine with respect to the licensed combination patent.
`
`See generally Quanta Computer, 553 U.S. at 634 ("The sale of a device that practices patent A
`
`does not, by virtue of practicing patent A, exhaust patent B. But if the device practices patent A
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`while substantially embodying patent B, its relationship to patent A does not prevent exhaustion
`
`of patent B. . . . While each Intel microprocessor and chipset practices thousands of individual
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`patents, including some LGE patents not at issue in this case, the exhaustion analysis is not
`
`altered by the fact that more than one patent is practiced by the same product. The relevant
`
`consideration is whether the Intel Products that partially practice a patent - by, for example,
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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 15 of 18 PageID #: 12452
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`embodying its essential features - exhaust that patent.") (fust emphasis added). Thus, patents
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`other than the ' 607 and '096 patents are irrelevant to the question of whether the Goodyear
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`Hybrid Product directly infringes the ' 607 and ' 096 patents.
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`In sum, the Court agrees with Defendants regarding the applicability of the permissible
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`repair doctrine to the ' 607 and ' 096 patents, and thus, the absence of any direct infringement of
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`those patents by the Goodyear Hybrid Product. As in Everpure, Inc. v. Cuno, Inc. , "[ s ]ummary
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`judgment is appropriate here because there can be neither contributory nor induced infringement
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`when, because of the permissible repair doctrine, there has been no direct infringement." 875
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`F.2d 300, 302 (Fed. Cir. 1989). Accordingly, the Court will grant Defendants ' Summary
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`Judgment Motion with respect to non-infringement of the 607 and ' 096 patents by the Goodyear
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`Hybrid Product.
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`B.
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`Non-Infringement of the '698 Patent
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`Plaintiff does not oppose summary judgment of non-infringement of the ' 698 patent by
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`the Goodyear Hybrid Product. (D.I. 212 at 1; Tr. at 42-43) Accordingly, the Court will grant
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`Defendant' s Summary Judgment Motion with respect to non-infringement of the ' 698 patent by
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`the Goodyear Hybrid Product.
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`C.
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`Non-Infringement of the '988 Patent
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`Plaintiff does not oppose summary judgment of non-infringement of the ' 988 patent by
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`the Goodyear Hybrid Product. (D.I. 212 at 1; Tr. at 165) Accordingly, the Court will grant
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`Defendant's Summary Judgment Motion with respect to non-infringement of the '988 patent by
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`the Goodyear Hybrid Product.
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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 16 of 18 PageID #: 12453
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`D.
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`Remaining Portions of Summary Judgment Motion
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`The Summary Judgment Motion raises other issues, including non-infringement of the
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`' 926 patent and arguments relating to claim construction. (See D.I. 158; D.I. 159) The Court
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`does not today reach the merits of those issues. Given that this case is going to be stayed while
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`the Court determines whether it should be dismissed as a sanction for violation of discovery
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`orders, as explained below, the Court will deny the remainder of the Summary Judgment Motion
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`without prejudice to renew if or when the stay is lifted. 8
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`IV.
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`FURTHER PROCEEDINGS
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`Over the course of this case, the Court has conducted numerous discovery
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`teleconferences. (See D.I. 203 ; D.I. 277; D.I. 349) Among the issues that have been repeatedly
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`addressed are the failure of Bosch LLC to produce discovery ordered by the Court, for reasons
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`including Bosch LLC' s insistence that the documents are in the control of its parent Bosch
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`GmbH and Bosch GmbH for some time refused to provide them to Bosch LLC. (See D.I. 285 at
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`1) The Court has entered several orders relating to this ongoing dispute. (See D.I. 277 at 20-23 ;
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`D.I. 274; D.I. 349 at 25-28 ; D.I. 350)9
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`Costco has asked to file a motion to dismiss as a sanction for Plaintiffs' conduct. (See
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`D.I. 345) Costco also asks that the case be stayed until the Court determines whether the case
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`8By separate Memorandum Order issued today, the Court is denying the Motion to
`Dismiss the Second Amended Complaint for Lack of Personal Jurisdiction filed by Defendant
`API Korea Co., Ltd. (D.I. 200) In light of the stay, the Court will also deny without prejudice
`Bosch LLC' s Motion to Dismiss for Failure to State a Claim certain of Costco ' s counterclaims.
`(D.I. 252)
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`9 A detailed recitation of the issue and its history is set forth in Costco' s brief in
`opposition to Bosch LLC' s Motion for Relief. (D .I. 315 at 1-8)
`
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`Case 1:12-cv-00574-LPS Document 365 Filed 03/28/16 Page 17 of 18 PageID #: 12454
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`should be dismissed. (See id. at 1) Plaintiffs ' position is that the Court should determine that
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`nothing sanctionable has occurred, modify the schedule if necessary, and permit this case to
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`proceed. (See D.I. 336 at 1, 7; D.I. 345) Plaintiffs take this position despite the Court's
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`statements that there has been "a failure by [Bosch] LLC to comply with the order" and that
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`"Costco is entitled to some relief possibly including dismissal of the entire case." (D.I. 349 at
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`25)
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`In this regard, Bosch LLC has filed its Motion for Relief. (D.I. 284) The Court's
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`December 22, 2015 Order required Bosch LLC to produce, on or before January 8, 2016, "all
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`agreements between Robert Bosch GmbH and OEMs relating to wipers or wiper systems, the
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`OEM specifications for wipers or wiper systems to be supplied, and related development
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`documents, including meeting minutes and correspondence." (D.I. 274 at 2) Bosch LLC ' s
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`Motion for Relief will be denied. It is untimely. 10 Moreover, on the merits, it largely rehashes
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`arguments the Court has already considered and rejected, which is not a meritorious basis for
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`reargument. See Flash Seats, LLC v. Paciolan, Inc. , 2011 WL 4501320, at *2 (D. Del. Sept. 28,
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`2011), aff'd, 469 Fed. App'x 916 (Fed. Cir. 2012). Other portions of the motion are inconsistent
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`with prior representations (e.g., challenging the language of the December 22, 2015 Order to
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`which Bosch LLC agreed as to form, and contending Costco seeks a great number of documents
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`10Although entitled a motion for relief, Bosch LLC's motion is essentially a motion for
`reargument. (See, e.g. , D.I. 274 at 1) (requesti