Case 1:12-cv-00574-LPS Document 241 Filed 09/16/15 Page 1 of 9 PageID #: 8570
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ROBERT BOSCH LLC,
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`Plaintiff,
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`v.
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`ALBEREE PRODUCTS, INC., API
`CO., LTD., SAVER AUTOMOTIVE
`PRODUCTS, INC., and COSTCO
`WHOLESALE CORPORATION,
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`Defendants.
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`Civil Action No. 12-574-LPS
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`MEMORANDUM ORDER
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`At Wilmington this 16th day of September, 2015:
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`Having reviewed the parties' briefing (D.I. 113, 114, 116, 152, 171, 190) and having
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`heard oral argument on June 8, 2015 (D.I. 204) on Costco Wholesale Corporation's ("Costco")
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`Motion to Dismiss Claims for Alleged Pre-Notice Damages and Pre-Notice Indirect Infringement
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`(D.I. 112), as well as Robert Bosch LLC's ("Bosch" or "Plaintiff') request for leave to amend its
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`complaint (D.I. 114 at 9),
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`IT IS HEREBY ORDERED that: (1) Costco's motion (D.I. 112) is DENIED IN PART
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`with respect to the '419 patent and GRANTED IN PART with respect to all other patents-in-
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`suit; and (2) Bosch's request for leave to amend (D.I. 114 at 9) is DENIED AS MOOT.
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`1.
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`On May 4, 2012, Bosch commenced this action, asserting that Alberee Products,
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`Inc. ("Alberee") and API Korea, Co., Ltd. ("API") each directly and indirectly infringed certain
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`claims of U.S. Patent Nos. 6,523,218 ("the '218 patent"), 6,530,111 ("the '111 patent"),
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`6,553,607 ("the '607 patent"), 6,611,988 ("the '988 patent"), 6,675,434 ("the '434 patent"),
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`1
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`Case 1:12-cv-00574-LPS Document 241 Filed 09/16/15 Page 2 of 9 PageID #: 8571
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`6,836,926 ("the '926 patent"), 6,944,905 ("the '905 patent"), 6,973,698 ("the '698 patent"),
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`7,228-,588 ("the '588 patent"), 7,293,321 ("the '321 patent"), 7,523,520 ("the '520 patent"), and
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`7,484,264 ("the '264 patent"), "by making, using, selling, and offering for sale in the United
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`States windshield wiper blades such as the Goodyear Assurance, the Saver Arc Flex Ultra, and
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`the Touring Ultra." (D.I. 1 at if 6) Bosch further alleged that Alberee does business under the
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`name "Saver Automotive Products, Inc." ("Saver"). (Id. at 1)
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`2.
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`On May 30, 2012, Bosch sent Costco a notice letter informing Costco of the
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`infringement action against Alberee and API, stating that "certain beam-style wiper products sold
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`by Saver, including the Goodyear Assurance, the Saver Flex Ultra, and the Touring Ultra" ("the
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`Beam products") were accused of infringing the asserted patents, and further stating "that Costco
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`currently purchases one or more of the accused wiper products from Saver." (D.I. 113, Ex.Cat
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`1)
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`3.
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`On January 18, 2013, Bosch filed an Amended Complaint adding Saver
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`Automotive Products, Inc. as a defendant and alleging infringement by the Beam products of
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`U.S. Patent No. 8,099,823 ("the '823 patent") as well as infringement of all the previously
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`asserted patents. (D.I. 38)
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`4.
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`On February 5, 2014, Bosch filed another patent infringement action against
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`defendants API, Alberee, and Saver alleging infringement of U.S. Patent No. 6,292,974 ("the
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`'974 patent") by the Beam products. (C.A. No. 14-142-LPS, D.I. 1) On September 10, 2014, the
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`Court consolidated the two patent infringement actions. (D .I. 67)
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`5.
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`On October 9, 2014, Bosch filed a consolidated amended complaint ("CAC")
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`adding Costco as a defendant and alleging infringement by the Beam products of U.S. Patent
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`2
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`Case 1:12-cv-00574-LPS Document 241 Filed 09/16/15 Page 3 of 9 PageID #: 8572
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`Nos. 6,292,974 ("the '974 patent"), 6,668,419 ("the '419 patent"), 7,941,891 ("the '891 patent"),
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`and 8,544,136("the'136 patent), as well as infringement of all of the previously asserted patents.
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`(D.I. 84) The CAC was served on Costco on October 10, 2014. (D.I. 86)
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`6.
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`On October 22, 2014, Bosch served Costco with notice of its Second Amended
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`Complaint ("SAC"). (See D.I. 113 at 2; see also D.I. 95) The SAC was filed on October 31,
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`2014, alleging infringement by the Goodyear Hybrid product of U.S. Patent No. 8,272,096 ("the.
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`'096 patent") and the '607, '926, and '698 patents, as well infringement by the Beam products of
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`all of the previously asserted patents. (D.I. 95) The SAC further alleged that Costco received
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`notice of:.(1) the Beam products' alleged infringement of the '218, '111, '607, '988, '434, '926,
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`'905, '698, '588, '321, '520, and '264 patents by means of the May 30, 2012 letter; (2) the Beam
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`products' alleged infringement of the '823, '97 4, '419, '8 91, and ' 13 6 patents by means of the
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`CAC served on October 10, 2014; and (3) the Goodyear Hybrid product's alleged infringement
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`of the '607, '926, '698, and '096 patents by means of the notice served on October 22, 2014. (Id.
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`at~~38,42,60, 76,77, 100, 104, 129, 133, 158, 159, 163, 188, 192,217,218,222,247,251,
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`276,305,309,334,338,431)
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`7.
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`Costco filed its Motion to Dismiss Claims for Alleged Pre-Notice Damages and
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`Pre-Notice Indirect Infringement on December 23, 2014. (D.I. 112) The parties completed
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`briefing on the motion on January 20, 2015. (D.I. 113, 114, 116) Thereafter, Bosch submitted a
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`Notice of Subsequent Development Regarding Costco Wholesale Corporation's Motion to
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`Dismiss ("Notice") (D.I. 152), to which Costco submitted a Response (D.I. 171), and Bosch
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`submitted a Reply (D.I. 190). Because the Notice asked the Court to consider documents
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`obtained in discovery, Costco requested in its Response that the Court convert Costco's motion
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`3
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`Case 1:12-cv-00574-LPS Document 241 Filed 09/16/15 Page 4 of 9 PageID #: 8573
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`to dismiss to a motion for summary judgment. (D.I. 171 at 1) Bosch did not oppose conversion
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`of the motion into a summary judgment motion (see D.I. 90 at 1; see also D.I.-204 at 22), and the
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`Court will treat it as such. 1 The Court heard oral argument on the motion at the June 8, 2015
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`Markman hearing. (D .I. 204)
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`8.
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`"The court shall grant summary judgment if the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a matter oflaw.';
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`Fed. R. Civ. P. 56( a). The moving party bears the burden of demonstrating the absence of a
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`genuine issue of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475
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`U.S. 574, 586 n.10 (1986). An assertion that a fact cannot be- or, alternatively, is - genuinely
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`disputed must be supported either by citing to "particular parts of materials in the record,
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`including depositions, documents, electronically stored information, affidavits or declarations,
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`stipulations (including those made for the purposes of the motion only), admissions,
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`interrogatory answers, or other materials," or by "showing that the materials cited do not
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`establish the absence or presence of a genuine dispute, or that an adverse party cannot produce
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`admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(l)(A) & (B). If the moving party
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`has carried its burden, the nonmovant must then "come forward with specific facts showing that
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`there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation marks
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`omitted). The Court will "draw all reasonable inferences in favor of the nonmoving party, and it
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`may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing
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`Prods., Inc., 530 U.S. 133, 150 (2000).
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`1This moots Plaintiffs request for leave to amend its complaint, as well as Plaintiff's
`argument that constructive notice was adequately pled through willfulness allegations. (See D.I.
`204 at 21-22)
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`4
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`Case 1:12-cv-00574-LPS Document 241 Filed 09/16/15 Page 5 of 9 PageID #: 8574
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`9.
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`If a patentee fails to adequately mark patented articles, the patentee may not
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`recover damages for direct infringement claims arising before the patentee provides notice of
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`infringement to the alleged infringer. See 35 U.S.C. § 287(a) ("In the event of a failure so to
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`· mark, no damages shall be recovered by the patentee in any action for infringement, except on
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`proof that the infringer was notified of the infringement and continued to infringe thereafter, in
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`which event damages maybe recovered only for infringement occurring after such notice.").
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`"[T]he actual notice requirement of§ 287(a) is satisfied when the recipient is informed of the
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`identity of the patent and the activity that is believed to be an infringement, accompanied by a
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`proposal to abate the infringement, whether by license or otherwise." SRI Int 'l, Inc. v. Advanced
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`Tech. Labs., Inc., 127 F.3d 1462, 1470 (Fed. Cir. 1997); see also Lans v. Digital Equip. Corp.,
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`252 F.3d 1320, 1327 (Fed. Cir. 2001) ("[T]he actual notice requirement of§ 287(a) demands
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`notice of the patentee's identity as well as notice of infringement."). "'[T]he notice must arise by
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`'an affirmative act on the part of the patentee which informs the defendant of infringement."'
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`U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd., 505 F.3d 1371, 1375 (Fed. Cir. 2007) (quoting
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`Lans, 252 F.3d at 1327-28); see also Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d
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`178, 187 (Fed. Cir. 1994) ("The correct approach to determining notice under section 287 must
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`focus on the action of the patentee, not the knowledge of the infringer."). Relatedly, liability for
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`indirect infringement under 35U.S.C. §§ 271(b)-(c) requires "knowledge of the existence of the
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`patent that is infringed." Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2067-68
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`(2011 ).
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`10.
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`Pursuant to§§ 287(a) and 27l(b) and (c), Costco seeks summary judgment of no
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`pre-notice damages for any claim arising from any alleged acts of direct or indirect infringement
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`.. 5
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`Case 1:12-cv-00574-LPS Document 241 Filed 09/16/15 Page 6 of 9 PageID #: 8575
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`. committed prior to the dates of alleged notice to Costco in the Second Amended Complaint, i.e.,
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`(1) May 30, 2012 with respect to the Beam products' alleged infringement of any of the patents-
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`in-suit; {2) October 10, 2014 with respect to the Beam products' alleged infringement of the
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`'419, '974, '891, '823, and '136 patents; and (3) October 22, 2014 with respect to the Goodyear
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`Hybrid product's alleged infringement of the '607, '926, '698,2 and '096 patents. According to
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`Costco, these are the earliest dates Costco received notice of the alleged infringements, and
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`Bosch may not recover for pre-notice damages because Bosch failed to comply with the marking
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`requirements of§ 287(a).
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`11.
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`Bosch has conceded that it failed to mark its patented wiper blade products. With
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`respect to the '419.patent, Bosch contends it was not required to mark its products because none
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`of its products was an embodiment of the '419 patent. (See D.I. 190 at 1, 3; see also D.I. 190,
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`Ex. 3 at 3-6) There is a genuine dispute of material fact as to whether any Bosch products
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`practiced the '419 patent. (Compare, e.g., D.I. 190 at 1, 3 andD.I. 204 at 20 ("[A]s to one of the
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`patents, the '419 patent, Bosch doesn't have any marking requirement because they haven't
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`practiced it.") with D.I. 171 at 5 ("The existing record does not show whether any Bosch
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`licensees have practiced the '419 patent.")) However, except for the '419 patent, Bosch's lack of
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`marking establishes that Bosch may only recover damages (at most) beginning with the dates on
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`which Costco was provided adequate notice of the alleged infringement.
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`12.
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`Bosch argues that Costco received adequate notice of the Beam products' alleged
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`infringement of the '607, '926, '988, '218, '698, '905, '434, '321, and '520 patents as early as
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`2Bosch has since retracted its claim that sales of the Goodyear Hybrid product infringe the
`'698 patent. (See D.I. 116 at 7)
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`6
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`Case 1:12-cv-00574-LPS Document 241 Filed 09/16/15 Page 7 of 9 PageID #: 8576
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`December 1, 2011, when Costco received an email from a third party, Rally Manufacturing,
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`about litigation Bosch had initiated againstAlberee and API in the International Trade
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`Commission ("ITC") involving these patents. (D.I. 152, Ex. 1) With respect to all other
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`infringement allegations in the instant case, Bosch points to the dates of notice alleged in the
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`SAC. 3 Thus, the only issue that remains is whether or not the email from Rally Manufacturing
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`satisfied the notice requirements of§ 287(a).
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`13.
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`The Court concludes that the email from Rally Manufacturing did not satisfy the
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`notice requirements of§ 287(a) because it was not an affirmative act by Bosch. In Lans, the
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`Federal Circuit held that "a letter sent by Mr. Lans, the inventor of the patent in suit and the sole
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`shareholder and managing director of the assignee company, was nevertheless insufficient to
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`create notice because it was not sent by the patent owner." Iwasaki, 505 F.3d at 1375
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`(discussingLans, 252 F.3d at 1327) (emphasis in original). In Iwasaki, by contrast, the Federal
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`Circuit found that a notice - which included the front page of the asserted patent, indicating the
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`name of the correct patent owner - sent by Philips International B. V. regarding patents owned by
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`Philips International B.V.'s intellectual property holding company, U.S. Philips Corporation, did:
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`provide adequate notice under§ 287(a) because "the reasons ... articulated in Lans for strictly
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`enforcing the notice requirement were all fulfilled: Philips International B.V .... was the party
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`'to contact ... about an amicable and early resolution of the potential dispute,' 'to consult with . :
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`. about design changes to avoid infringement,' and with whom 'to negotiate a valid license."'
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`3Initially, Bosch also argued that the notice provided by the May 30, 2012 letter and the
`CAC applied both to the Beam products and the Goodyear Hybrid product. (See D.I. 114 at 8 &
`n.3) Bosch has since retreated from this argument. (See D.I. 190 at 3) (Bosch conceding that
`notice to Costco of Goodyear Hybrid product's alleged infringement was not provided until
`October 22, 2014)
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`7
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`Case 1:12-cv-00574-LPS Document 241 Filed 09/16/15 Page 8 of 9 PageID #: 8577
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`505 F.3d at 1375 (quotingLans, 252 F.3d at 1327). To the extent Iwasaki created an exception
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`to the rule articulated in Lans, it does not apply to the facts of this case. Here, the notice on
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`which Bosch now seeks to rely was sent by a third party with no authority to speak on behalf of
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`Plaintiff with respect to its patent infringement claims. Indeed, here, the sender of the letter is
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`much further removed from the patent owner than was the sender in Lans, a sender which there
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`was found to be inadequate. The Rally Manufacturing email is neither an affirmative act by the
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`patentee, as required by Iwasaki, nor a proposal by patentee for how to abate the infringement, as'
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`required by SRI International. Rather, the purported notice at issue in this case fails to "fulfill[]
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`the purposes of§ 287(a) by facilitating the alleged infringer's efforts to avoid continued
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`infringement, and avoid[ing] troublesome determinations about the sufficiency of relationships
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`between the notifier and the patentee." Lans, 252 F.3d at 1328. Hence, the email from Rally
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`Manufacturing cannot serve as a proper foundation for the date on which Costco had notice of its
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`purported infringement of any of the patents-in-suit.
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`14.
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`Accordingly, the Court finds that, with the exception of the '419 patent, for which
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`there is a genuine factual dispute with respect to Plaintiffs marking obligations, Costco is not
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`liable for damages for any claim arising from any alleged acts of infringement committed prior to
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`the dates of alleged notice to Costco in the SAC. 4
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`15.
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`Because this Memorandum Order is being issued under seal, IT IS FURTHER
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`ORDERED that the parties shall meet and confer and shall, no later than September 18, 2015,
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`provide the Court a proposed redacted version. Thereafter, the Court will file a publicly-
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`4Having so concluded, the Court need not separately address Costco' s argument regarding
`knowledge of indirect infringement under§§ 271(b) and (c).
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`8
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`Case 1:12-cv-00574-LPS Document 241 Filed 09/16/15 Page 9 of 9 PageID #: 8578
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`available version of this Memorandum Order.
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`. STARK
`LE LEONARD
`HONO
`UNITED STATES DISTRICT COURT
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`9