Robert Bosch Llc v. Pylon Mfg. Corp.., Civ. No. 08–542–SLR.

748 F.Supp.2d 383

ROBERT BOSCH, LLC, Plaintiff,

v.PYLON MANUFACTURING CORP., Defendant.

Civ. No. 08–542–SLR.

United States District Court, D. Delaware.

Nov. 3, 2010.

David Ellis Moore, Esquire and Richard L. Horwitz, Esquire of Potter Anderson & Corroon LLP, Wilmington, DE, Of Counsel: Michael J. Lennon, Esquire, Mark A. Hannemann, Esquire, R. Scott Roe, Esquire, Susan A. Smith, Esquire and Jeffrey S. Ginsberg, Esquire of Kenyon & Kenyon LLP, New York, NY, for Plaintiff and Counterclaim Defendant.Ashley Blake Stitzer, Esquire and Stephen B. Brauerman, Esquire of Bayard, P.A., Wilmington, DE, Of Counsel: Gregory L. Hillyer, Esquire and Javier Sobrado, Esquire of Feldman Gale, P.A., Bethesda, Maryland, James A. Gale, Esquire of Feldman Gale, P.A., Miami, FL, for Defendant and Counterclaim Plaintiff.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.I. INTRODUCTION

Presently before the court are six motions brought in this patent infringement action involving Robert Bosch LLC (“Bosch”) and Pylon Manufacturing Corp. (“Pylon”) relating to Bosch's United States Patent Nos. 6,292,974 (“the '974 patent”), 6,675,434 (“the '434 patent”), and 6,944,905 (“the '905 patent”) (collectively, the “Bosch patents”). (D.I. 1) The procedural history of this action is complex and is described in greater detail below. Pending before the court are: (1) Bosch's renewed motion for judgment as a matter of law (“JMOL”) or, in the alternative, for a new trial (D.I. 309); (2) Pylon's renewed motion for JMOL concerning the non-infringement of claims 1, 5 and 13 of the '434 patent (D.I. 316); (3) Pylon's renewed motion for JMOL or, in the alternative, motion to amend or alter the judgment concerning the invalidity of claim 13 of the '434 patent (D.I. 318); (4) Pylon's renewed motion for JMOL or, in the alternative, for a new trial regarding the invalidity of the '905 patent (D.I. 320); (5) Bosch's motion for leave to file a sur-reply in opposition to Pylon's motion for JMOL or, in the alternative, motion for a new trial regarding the invalidity of the '905 patent (D.I. 351); and (6) Bosch's motion for a permanent injunction (D.I. 311).II. BACKGROUND¹A. Patents in Suit

This case involves the refinement of several aspects of beam blade technology found in the Bosch patents, resulting in wiper blades that allow for better performance, visibility and safety on the road. The '974 patent, entitled “Glass Wiper Blade For Motor Vehicles,” teaches a beam blade that prevents “lift-off” issues by deflecting wind up and over the blade through the use of a flexible spoiler on top of the support element. This deflection counteracts any “lift-off” tendency by creating additional downward force along the length of the wiper blade at higher speeds. ('974 patent at col. 1:58–2:3, 2:11–15) Claim 1, which is representative of the invention of the '974 patent, claims

[a] wiper blade for windows of motor vehicles, comprising a curved, band-shaped, spring-elastic support element which distributes a pressure applied by a wiper arm and has a concave and a convex surface which defines corresponding planes; an elongated rubber-elastic wiper strip placeable on a window to be wiped and mounted to said concave surface of said support element which faces the window, substantially longitudinally parallel to said concave surface; a connection device provided for a wiper arm and arranged directly on a convex side of said support element; and a component which is separate from said wiper strip and is mounted directly to the convex surface of said support element so as to form a leading-edge face extending in a longitudinal direction of the support element and forming, as seen crosswise to its longitudinal extension, an acute angle with a plane which extends parallel to a plane formed by said convex surface.

( Id. at col. 4:16–32) Figure 3 of the '974 patent discloses the cross section of an exemplary wiper blade:

Image 1 (1.36" X 1.2") Available for Offline Print

The subject matter of the '434 patent, entitled “Wiper Blade For The Glass Surfaces Of Motor Vehicles With An Elongated, Spring–Elastic Support Element,” addresses innovations with respect to wiper blade end caps. End caps serve a safety function, preventing injury to those who handle the wiper blades by covering the often sharp ends of the support element. ('434 patent at col. 1:63–65) However, end caps can adversely affect the elasticity of the spring element which, in turn, disrupts the wiper strip's even distribution of pressure upon the windshield. ( Id. at col. 1:46–50) The '434 patent discloses end caps that are used to maintain the integrity of the wiper blade without adversely affecting the elasticity of the beam. ( Id.) Claim 1 claims

[a] wiper blade for windows or other glass of motor vehicles, having an elongated, spring-elastic support element, on whose side toward the window or glass an elongated, rubber-elastic wiper strip that can be placed against the window or glass is located parallel to the longitudinal axis, and on the side of the support element remote from the window or glass, in the middle portion of the support element, a device for attaching a driven wiper arm is disposed, the two ends of the wiper blade each being covered by a respective termination part in the region of the support element, characterized in that the termination part has a base body, located on the side of the support element remote from the window and bracing itself on the wiper blade, which base body is provided with hook-like extensions that cross the support element on both of its long sides and engage the side of the support element toward the window from behind; that at least one detent shoulder pointing toward the other end portion is disposed on each of the two end portions of the support element, and a counterpart shoulder present on the termination part is associated with the detent shoulder; and that at least one of the two shoulders and/or at least one of the two extensions is elastically deflectable.

( Id. at col. 7:41–65)

The '905 patent is entitled “Wiper Blade For Cleaning Screens In Particular On Motor Vehicles.” Although existing separately from the '974 patent family, the '905 patent discloses the structure of a spoiler that could be used in conjunction with the invention of the '974 patent. The spoiler taught by the '905 patent includes two diverging legs, with an attack surface embodied on the outside of one leg, allowing for a reduction in both weight and material costs. ('905 patent at col. 1:55–64) The '905 patent also describes wiper blades that incorporate end caps. ( Id. at col. 7:60–8:21) Claim 13 of the '905 patent, which is at issue in this case, reads:

13. A wiper blade for cleaning windows, comprising:

a band-like, elongated, spring-elastic support element, wherein a lower band surface oriented toward the window has an elongated, rubber-elastic wiper strip, which can be placed against the window, disposed on it so that the longitudinal axes of these two parts are parallel and wherein an upper band surface of the support element has a wind deflection strip disposed on it, wherein the wind deflection strip extends in a longitudinal direction of the support element, is provided with an attack surface oriented toward the main flow of the relative wind, and is made of an elastic material, wherein the wind deflection strip has two diverging legs, viewed in transverse cross section, wherein the two diverging legs are connected to each other at a common base and wherein free ends of the two diverging legs oriented toward the window are supported on the support element, and the attack surface is embodied on the outside of the one leg, wherein the upper band surface of the support element, in its middle section, includes a wiper blade part for connecting the wiper blade to a reciprocally driven wiper arm and is supported, wherein an end cap is respectively disposed at both ends of the support element, and wherein a section of the wind deflection strip is disposed between and in contact with each respective end cap and the device piece.

( Id. at col. 7:60–8:21)B. Litigation History

Bosch filed this patent infringement action against Pylon on August 25, 2008, alleging that Pylon infringed certain claims of various wiper blade patents owned by Bosch. Following discovery, on November 12, 2009, Bosch moved for summary judgment of infringement of the '974 patent (D.I. 169), non-infringement of Pylon's U.S. Patent No. 6,640,380 (“the '380 patent”) (D.I. 171), and no inequitable conduct and no invalidity for derivation of the ' 974 patent, the '905 patent and the '434 patent (D.I. 173). On the same date, Pylon moved for summary judgment of non-infringement and invalidity of four patents owned by Bosch. (D.I. 177)

The court granted in part and denied in part the parties' motions for summary judgment on March 30, 2010.² (D.I. 271) Specifically, the court: (1) granted Bosch's motion for summary judgment of infringement of the ' 974 patent with respect to claims 1 and 8 and denied summary judgment with respect to claim 2; (2) granted Bosch's motion for summary judgment of non-infringement of the ' 380 patent; (3) granted Bosch's motion for summary judgment of no inequitable conduct and no invalidity for derivation with respect to the '905 and ' 434 patents and denied summary judgment with respect to the ' 974 patent; (4) granted Pylon's motion for summary judgment of non infringement of U.S. Patent No. 6,978,512 (“the '512 patent”); (5) denied Pylon's motion for summary judgment of non-infringement of the '974, ' 905 and ' 434 patents; (6) denied Pylon's motion for summary judgment that the '974 and ' 512 patents were invalid as anticipated or obvious; and (7) denied as moot Bosch's motion to strike the expert report of Pylon's expert, Franz Buechele (“Buechele”). On the same date, the court issued its claim construction opinion. (D.I. 270) ³

On April 12, 2010, 2010 WL 1485326, the court...