IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 12-574-LPS
`(consolidated)
`
`JURY TRIAL DEMANDED
`
`))))))))))))
`
`ROBERT BOSCH LLC,
`
`Plaintiff,
`
`v.
`
`ALBEREE PRODUCTS, INC.,
`API KOREA CO., LTD.,
`SAVER AUTOMOTIVE PRODUCTS, INC.,
`and COSTCO WHOLESALE CORPORATION,
`
`Defendants.
`
`ROBERT BOSCH LLC’S OPENING CLAIM CONSTRUCTION BRIEF
`
`OF COUNSEL:
`
`Mark A. Hannemann
`Jeffrey S. Ginsberg
`Rose Cordero Prey
`Ksenia Takhistova
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004
`Tel.: (212) 425-7200
`
`Dated: April 24, 2015
`1187826 / 39026
`
`Richard L. Horwitz (#2246)
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`rhorwitz@potteranderson.com
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Plaintiff Robert Bosch LLC
`
`Costco Exhibit 1004, p. 1
`
`

`
`term. Bosch’s proposed construction is consistent with the disclosure in the specification and,
`
`therefore, should be adopted.
`
`Defendants’ proposed construction is improper at least because it does not recognize that
`
`this term should be construed as a means-plus-function limitation under 35 U.S.C. § 112 ¶6, and
`
`does not identify any function that it performs.
`
`Defendants may argue that the term should be limited to certain structures denoted by
`
`reference numerals that are “depicted and described in the ‘419 specification and drawings,” and
`
`no equivalents should be allowed. First, as discussed above in section III.A.1, reference
`
`numerals in the claims have no effect on the claim scope. Ex parte Fressola, 27 U.S.P.Q.2d at
`
`1613; MANUAL OF PATENT EXAMINING PROCEDURE § 608.01(m) (8th ed.2010).
`
`Second, means-plus-function claiming allows patentees to capture equivalents of the
`
`disclosed structures. Minks v. Polaris Indus., Inc., 546 F.3d 1364, 1378–79 (Fed. Cir. 2008).
`
`The specification and prosecution history of the ’419 patent do not support limiting the claim
`
`scope to just the structures proposed by defendants. See, e.g., Thorner v. Sony Computer Entm’t
`
`Am. LLC, 669 F.3d 1362, 1368–69 (Fed. Cir. 2012) (vacating judgment where neither the claims
`
`nor the specification supported limiting the claim scope); Liebel-Flarsheim, 358 F.3d at 906
`
`(Patent claims should not be read restrictively “unless the patentee has demonstrated a clear
`
`intention to limit
`
`the claim scope using ‘words or expressions of manifest exclusion or
`
`restriction.’”). Further, nothing in the prosecution history bars equivalents.
`
`D.
`
`U.S. Patent No. 6,836,926
`
`The ’926 patent is directed to a beam-type wiper blade having a support element (beam)
`
`with a substantially constant thickness and width, wherein the support element’s profile satisfies
`
`
`* 2L
`F
`wf
`
` **48 IE
`
`zz
`
`
`
`
`
` 009.0
`
`the inequality:
`
`, where Fwf is the pressure force exerted on the wiper blade,L
`
`- 9 -
`
`Costco Exhibit 1004, p. 2
`
`

`
`is the length of the support element, E is the modulus of elasticity of the support element and Izz
`
`is the moment of inertia of the cross-sectional profile around a z-axis perpendicular to an s-axis,
`
`which adapts along with the support element, and perpendicular to a y-axis. D.I. 142, Ex. 5,
`
`’926 patent at Abstract; 5:47–50; 10:4–25. The lateral deflection at the ends of a wiper blade
`
`designed according to this invention is minimized, thereby preventing undesirable rattling. Id. at
`
`2:1–18.
`
`“Izz is a moment of inertia of a cross sectional profile around a z-axis
`1.
`perpendicular to an taxis, which adapts along with the support element (12),
`and perpendicular to a y-axis” (claim 1)
`
`Bosch’s Construction
`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, and perpendicular to a y-axis,
`calculated by the formula
`3bd
`
`12
`
`I
`
`zz
`
`Defendants’ Construction
`“Izz” denotes a moment of inertia around a z-
`axis, the z-axis in this instance being the axis
`denoted “z” in Figures 4, 5, and 7 of the ‘926
`patent. The z-axis is perpendicular to an s-axis
`which adapts along with the support element
`(12), and perpendicular to a y-axis, the y-axis in
`this instance being the axis denoted “y” in
`Figures 4, 5, and 7 of the ‘926 patent.
`
`
`
`The parties agree that “an taxis” is properly understood as “an s-axis.” A court may
`
`make a simple correction when the meaning of the term is not in dispute. See, e.g., Arthrocare
`
`Corp. v. Smith & Nephew, Inc., 406 F.3d 1365, 1374–75 (Fed. Cir. 2005) (recognizing that “[t]he
`
`correction of a ministerial error in the claims, which also serves to broaden the claims, is
`
`allowable if it is ‘clearly evident from the specifications, drawings, and prosecution history how
`
`the error should appropriately be corrected’ to one of skill in the art”) (quoting Superior
`
`Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358, 1373 (Fed. Cir. 2001)). Bosch’s proposed
`
`construction leaves the rest of the claim language unchanged, including at the end a formula for
`
`calculating the moment of inertia, Izz, for clarity. Bosch’s construction is consistent with the
`
`’926 patent specification, which teaches using this formula to calculate Izz. (’926 patent at 6:58–
`
`- 10 -
`
`Costco Exhibit 1004, p. 3
`
`

`
`7:1.) Bosch’s technical expert, Dr. Dubowsky, agrees with Bosch’s position and explains why a
`
`person of ordinary skill
`
`in the art, considering the claim language in light of the patent
`
`specification, would calculate Izz as
`
`I
`
`3bd
`
`12
`
`
`
`zz
`
`. Declaration of Dr. Steven Dubowsky, filed
`
`concurrently herewith (“Dubowsky Decl.”), ¶¶ 6–10. In construing claim terms, a court can rely
`
`on extrinsic evidence, such as an expert declaration, and make factual findings. See Teva Pharm.
`
`USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015).
`
`Defendants’ proposed construction refers to the z-axis and the y-axis denoted by the
`
`corresponding letters as shown in Figures 4, 5, and 7 of the ’926 patent. This construction
`
`imports limitations from the figures, while neglecting to take into account a fair reading of the
`
`entire specification as it would be understood by a person of ordinary skill in the art. See
`
`Dubowsky Decl., ¶ 10. See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333
`
`(Fed. Cir. 2007) (“[P]atent coverage is not necessarily limited to inventions that look like the
`
`ones in the figures. To hold otherwise would be to import limitations onto the claim from the
`
`specification, which is fraught with ‘danger.’” (citations omitted));see also Acumed, 483 F.3d at
`
`807–08.
`
`2.
`
`“support element (12)” (claims 1, 3)
`
`Bosch’s Construction
`plain and ordinary meaning
`
`Defendants’ Construction
`“support element (12)” denotes the structure
`(12) depicted and described in the ‘926
`specification and drawings; no equivalents in
`light of narrowing amendments.
`
`The term “support element” appears in the asserted claims of the ’988, ’926, ’588, ’264,
`
`’823, and ’096 patents (and other asserted patents, constructions of which are not before the
`
`Court at this time). This term should be given its plain and ordinary meaning in each of the
`
`- 11 -
`
`Costco Exhibit 1004, p. 4
`
`

`
`asserted patents, as it is clear on its face and can be applied by the jury without construction.See
`
`Phillips, 415 F.3d at 1312; see also, e.g., Silicon Graphics, 607 F.3d at 798; Finjan, 626 F.3d at
`
`1207; U.S. Surgical Corp., 103 F.3d at 1568. Bosch’s position is consistent with an earlier
`
`construction of this term by an administrative body.6
`
`Defendants, again, seek to improperly limit the claim scope to “the structure (12)
`
`depicted and described in the ’926 specification and drawings; no equivalents in light of
`
`narrowing amendments.” First, as discussed above in section III.A.1, reference numerals in the
`
`claims have no effect on the claim scope. Ex parte Fressola, 27 U.S.P.Q.2d at 1613; MANUAL
`
`OF PATENT EXAMINING PROCEDURE § 608.01(m) (8th ed.2010).
`
`Second, the specification and prosecution history of the ’926 patent do not support
`
`limiting the claim scope to the embodiments disclosed in the patent specification and drawings.
`
`See, e.g., Liebel-Flarsheim, 358 F.3d at 906; see also Acumed, 483 F.3d at 807–08; SanDisk, 415
`
`F.3d at 1286; Comark, 156 F.3d at 1187. Further, nothing in the prosecution history bars
`
`equivalents.
`
`E.
`
`U.S. Patent No. 6,973,698
`
`The ’698 patent is directed to a beam-type wiper blade that includes a support element
`
`that distributes pressure along the length of the wiper strip such that the contact force of the
`
`wiper strip with the window is greater in the center section of the wiper blade than in at least one
`
`of its ends. D.I. 142, Ex. 6, ’698 patent at Abstract, 1:59–62. The reduced force in the end
`
`section or sections encourages the wiper lip to flip over sequentially from the end or ends to the
`
`center, avoiding knocking noise that would otherwise occur. Id. at 1:65–2:4.
`
`6
`In the 816 Investigation, the ITC found that the term “support element” should be
`afforded its plain and ordinary meaning, as proposed by Bosch. Ex. 1,In re Certain Wiper
`Blades, Inv. 337-TA-816, Commission Op. at 35–41 (Apr. 24, 2013).
`
`- 12 -
`
`Costco Exhibit 1004, p. 5
`
`

`
`OF COUNSEL:
`
`By:
`
`Mark A. Hannemann
`Jeffrey S. Ginsberg
`Rose Cordero Prey
`Ksenia Takhistova
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004
`Tel.: (212) 425-7200
`
`Dated: April 24, 2015
`1187826 / 39026
`
`Respectfully submitted,
`
`POTTER ANDERSON & CORROON LLP
`
`/s/ David E. Moore
`Richard L. Horwitz (#2246)
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`rhorwitz@potteranderson.com
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Plaintiff Robert Bosch LLC
`
`- 19 -
`
`Costco Exhibit 1004, p. 6