Robert Bosch Llc v. Pylon Mfg. Corp..

775 F.Supp.2d 739

ROBERT BOSCH, LLC, Plaintiff,

v.PYLON MANUFACTURING CORP., Defendant.

Civ. No. 08–542–SLR.

United States District Court, D. Delaware.

March 9, 2011.

David Ellis Moore, Esquire and Richard L. Horwitz, Esquire of Potter Anderson & Corroon LLP, Wilmington, DE, of Counsel: Michael J. Lerinon, Esquire, Mark A. Hannemann, Esquire and Jeffrey S. Ginsberg, Esquire of Kenyon & Kenyon LLP, New York, NY, for Plaintiff.Ashley Blake Stitzer, Esquire and Stephen B. Brauerman, Esquire of Bayard, P.A., Wilmington, DE, of Counsel: Gregory L. Hillyer, Esquire of Feldman Gale, P.A., Philadelphia, PA, Jeffrey D. Feldman, Esquire of Feldman Gale, P.A., Miami, FL, for Defendant.

OPINION

SUE L. ROBINSON, District Judge.I. INTRODUCTION

Robert Bosch, LLC (“Bosch”) filed this patent infringement action against Pylon Manufacturing Corporation (“Pylon”) on August 25, 2008. (D.I. 1) Both parties are manufacturers of automotive windshield wiper blades. Presently before this court is Pylon's “motion for judgment of unenforceability” of Bosch's U.S. Patent No. 6,292,974 (“the '974 patent”) on the basis of inequitable conduct. (D.I. 322) Specifically, Pylon contends that the submissions made by Robert Bosch GmbH (“Bosch GmbH”) employees Wilfred Merkel (“Merkel”) and Wolfgang Leutsch (“Leutsch”) to the United States Patent and Trademark Office (“PTO”) regarding the '974 patent failed to: (1) list Johannes Fehrsen (“Fehrsen”) as an inventor of the '974 patent relating to the triangular spoiler; (2) disclose Fehrsen's Inclined Beam alternative; and (3) disclose Adriaan Swanepoel's (“Swanepoel”) spoiler to beam concept contained in his 1991 memorandum (the “Swanepoel memorandum”). (D.I. 362 at 6) Having conducted a bench trial on the issue of inequitable conduct and having reviewed the parties' submissions, the court denies Pylon's claim.¹

II. FINDINGS OF FACT AND CONCLUSIONS OF LAWA. Facts Relevant to Inequitable Conduct²

1. Collaboration between Bosch GmbH and AMIC

In the early 1990s, Swanepoel, a South African engineer, developed a prototype “Variflex” bracketless, tapered wiper blade with Fehrsen on behalf of the Anglo American Industrial Corporation (“AMIC”). (D.I. 369 at 364:8–19; D.I. 370 at 544:24–553:17; D.I. 373 at 1234:1–1236:10; D.I. 376 at 1598:15–1599:5) Bosch GmbH, hoping to commercialize the wiper blades, provided Fehrsen and Swanepoel with specifications to address “lift-off” problems identified with the high speed quality of the Variflex wiper blades. ( Id.) In connection with these efforts, Swanepoel prepared the Swanepoel memorandum in which he proposed to solve the problem by either reducing the height of the blade from the windshield or by mounting a rigid spoiler on the top surface of the beam. (DTX 265; D.I. 369 at 374:11–376:21; D.I. 373 at 1235:18–1242:15)

In September 1992, Fehrsen met with Merkel and Leutsch to discuss solutions to the wind lift problem for AMIC's beam blade. (D.I. 370 at 408:20–409:11, 562:24–564:2; D.I. 376 at 1603:6–22) The two solutions proposed at this meeting included: (1) a flexible spoiler mounted on top of the beam (the “Triangular Spoiler”); and (2) tilting the beam itself relative to the windshield (the “Inclined Beam”). (D.I. 369 at 387:22–388:15; D.I. 370 at 415:5–416:25; D.I. 376 at 1583:8–21, 1585:3–12) Pylon alleges that it was at this meeting that Fehrsen disclosed the Triangular Spoiler and Inclined Beam solutions to Merkel and Leutsch. (D.I. 370 at 564:3–565:5) Conversely, Bosch alleges that Merkel and Leutsch pitched the Triangular Spoiler idea, attributing only the Inclined Beam concept to Fehrsen. (D.I. 369 at 387:22–388:15; D.I. 376 at 1583:8–21) The only documentary evidence prior to or during the September 1992 meeting regarding these disclosures is embodied in Fehrsen's meeting notes, depicted below, which diagram both solutions but do not attribute ownership of either concept. (D.I. 370 at 487:12–488:6; D.I. 376 at 1600:25–1602:18)

Image 1 (3.22" X 1.68") Available for Offline Print

(PTX 113)

AMIC and Bosch GmbH entered into a confidentiality agreement pertaining to the Variflex beam blade which obligated each party to keep confidential all technical information received from the other party and granted the party who provided the information the rights over the information. (DTX 237; D.I. 370 at 471:14–474:18) Moreover, any working results, improvements and inventions, whether or not they were patentable, would be jointly owned by both parties. ( Id.) The obligation to keep technical information confidential terminated at the end of 2001, five years after the expiration of the agreement in December 1996. ( Id.) In July 1996, without informing AMIC, Bosch GmbH mounted a spoiler on a prototype constant thickness beam and tested it at Mercedes Benz's wind tunnel in Germany. (D.I. 370 at 575:2–576:23; D.I. 376 at 1637:20–1638:24)

The collaboration between Bosch GmbH and AMIC formally ended in October 1996. (D.I. 370 at 423:11–15, 576:24–577:21) AMIC subsequently sold its beam blade technology to Bosch competitor Trico Products Corporation (“Trico”) in August 1998. (DTX 183; D.I. 370 at 582:8–17) Bosch GmbH made several unsuccessful attempts to purchase or license certain beam blade technology from AMIC and then, after AMIC's transfer of its intellectual property, from Trico. (D.I. 370 at 578:2–583:16, 615:8–20; D.I. 373 at 1255:20–1258:16) The license agreement sought by Bosch GmbH regarding AMIC's Variflex-related patents concerned only AMIC's lateral stiffness patent, which had a beam tapered in width and in thickness and did not concern the spoiler technology. (D.I. 370 at 428:12–430:3; D.I. 373 at 1222:6–1223:1, 1282:10–15) At one meeting held in December 1997 for purposes of discussing a potential licensing agreement, Merkel displayed a prototype of Bosch GmbH's flexible spoiler wiper design with a constant width and thickness, and neither Fehrsen nor Swanepoel claimed that the prototype included their ideas. (D.I. 370 at 430:4–18; D.I. 373 at 1255:20–1259:17, 1280:20–23, 1285:12–24)

After learning of Bosch GmbH's efforts to obtain patent protection on its prototype, Trico requested that Fehrsen and Swanepoel memorialize their recollection regarding the conception of the spoiler technology, as well as the particulars regarding the joint development efforts between Bosch GmbH and AMIC. (D.I. 370 at 586:1–24; D.I. 373 at 1265:25–1268:11) On July 12, 2001, Trico sent a letter to AMIC expressing its concerns regarding the subject matter of Bosch GmbH's pending patent applications. (DTX 193; D.I. 370 at 636:7–13; D.I. 373 at 1268:12–22) In September of 2001, Bosch GmbH received a claim that AMIC personnel had contributed to the flexible spoiler invention and that Bosch GmbH had breached its contract with AMIC by filing the '974 patent. (DTX 194; D.I. 370 at 636:7–638:20; D.I. 376 at 1743:17–1744:9) In response, Bosch GmbH denied the allegations, detailed its inventorship positions and noted that Fehrsen was appropriately identified on an invention disclosure for his Inclined Beam contribution. (DTX 199; D.I. 376 at 1753:18–1754:13) AMIC thereafter dropped the correspondence and did not file a lawsuit against Bosch GmbH. (D.I. 370 at 589:7–10, 622:2–623:9; D.I. 376 at 1754:2–13)

2. Prosecution history of the '974 patent

In 1995, Thomas Kotlarski (“Kotlarski”) began to work on the beam blade project in the wiper blade division of Bosch. (D.I. 376 at 1705:24–1706:10) In early 1996, Kotlarski prepared an invention disclosure form for the ideas that were later embodied in the '974 patent, listing himself, Merkel, Leutsch and Friedrich Don as the inventors after discussing the invention disclosure form with Merkel. (D.I. 376 at 1651:11–1652:11, 1708:16–1709:12) Kotlarski did not list Fehrsen as an inventor on the invention disclosure form regarding the ' 974 patent because Merkel indicated that Fehrsen had not proposed the use of a spoiler on a beam blade, which originated with Bosch GmbH employees. (D.I. 376 at 1651:8–1653:17, 1654:7–17, 1708:25–1709:16) However, Kotlarski listed Fehrsen as an inventor on the final version of the invention disclosure form describing the Inclined Beam concept because Merkel informed him that Fehrsen had suggested the idea years before. (D.I. 376 at 1709:17–23, 1720:22–1721:7, 1731:9–1732:12)

In August 1997, Bosch GmbH's patent department filed a German patent application based on the Kotlarski flexible spoiler invention disclosure form, but no application was filed on the Inclined Beam invention. (D.I. 370 at 348:25–349:7; D.I. 376 at 1640:13–16, 1653:3–17, 1654:4–6, 1747:21–1748:6) In July 1998, Bosch filed a PCT application, identified as patent application serial number 09/284,398 (“the '398 application”), which was based on the German patent application. (PTX 3 at BOS_LLC0798994–0799008; D.I. 376 at 1587:16–24, 1664:18–1665:8) Claim 1 of the '398 application reads:

A wiper blade (10) for windows (25) of motor vehicles, having an elongated, rubber-elastic wiper strip (14) which can be applied to the window to be wiped and is disposed substantially longitudinally axially parallel to one face (34), that is, the face oriented toward the window, of a striplike, spring-elastic support element (12), which is connected to a wiper arm (18) that is driven crosswise to the length of the wiper blade and can be urged toward the window, characterized in that the wiper blade (10) is provided with a leading-edge face (36 or 60), which extends longitudinally of the wiper blade and substantially parallel to the window (25) and faces into the wind (46), and which crosswise to its length forms an acute angle (a) with the window.

(PTX 3) The '398 application led to the '974 patent. Issued claim 1 of the '974 patent reads as follows:

A wiper blade for windows of motor vehicles, comprising a curved, bandshaped, spring-elastic support element which distributes a pressure applied by a wiper arm and has a concave and a convex...