Robert Bosch, LLC v. Pylon Manufacturing Corp.
2010 U.S. Dist. LEXIS 116674
| D. Del. | 2010Background
- Bosch filed a patent infringement action against Pylon over the '974, '434, and '905 Bosch patents relating to beam blade wiper technology.
- Procedural posture includes six post-trial motions: Bosch JMOL/new trial requests, Pylon JMOL on certain patents, Bosch sur-reply motion, and Bosch’s request for a permanent injunction.
- The court previously granted partial summary judgment and issued a claim construction ruling before trial.
- A jury trial in April 2010 found claims 1 and 8 of the '974 patent invalid for obviousness and derivation, found claims 1 and 5 of the '434 patent invalid for obviousness, and found infringement of claims 1, 5, and 13 of the '434 patent and claim 13 of the '905 patent.
- Post-trial rulings address the sufficiency of the record for invalidity and derivation findings, and address remedies including a potential injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Obviousness of the '974 patent (claims 1 & 8) | Bosch: jury basis flawed due to in limine limits; prior art combinations insufficiently shown. | Pylon: evidence supports obviousness under prior art combinations and common sense. | Granted JMOL and new-trial conditional on obviousness for claims 1 & 8. |
| Obviousness of the '434 patent (claims 1 & 5) | Bosch: in limine limits prevented support for obviousness; jury relied on improper references. | Pylon: relied on '394/'507 in combination with '564 and others; evidence supports motivation to combine. | Granted JMOL and new-trial conditional on obviousness for claims 1 & 5. |
| Validity of claim 13 of the '434 patent | Bosch: precludes invalidity; claim 13 broader/elastic end-cap limitations not taught by prior art. | Pylon: prior art lacks elastic plastic end-cap limitation; requires testing of motivation to combine. | Upheld jury's non-obviousness finding; claim 13 valid. |
| Derivation of the '974 patent (claims 1 & 8) | Pylon: Fehrsen/Swanepoel testimony insufficient corroboration for derivation; alleged start points disputed. | Pylon: corroboration from Swanepoel/Fehrsen notes supports derivation. | Claim 1 derived affirmed; claim 8 derivation warranted new-trial conditional relief. |
| Infringement of claim 7 of the '434 patent | Bosch contends infringement under court construction; Pylon's defense misinterprets long sides. | Pylon: substantial evidence supports non-infringement under the court's construction. | Denied JMOL; non-infringement finding upheld. |
Key Cases Cited
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. Supreme Court 2007) (obviousness requires reason to combine with common sense, avoid hindsight)
- PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) (deference to PTO determinations in validity analysis)
- Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573 (Fed. Cir. 1997) (conception requires complete disclosure of all claimed elements)
- Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1376 (Fed. Cir. 1986) (concept of conception and reduction to practice in patent law)
- In re Rouffet, 149 F.3d 1310 (Fed. Cir. 1998) (motivation to combine references in anticipation of obviousness)
- Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1461 (Fed. Cir. 1998) (corroboration required for inventor testimony in derivation)
- Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 1219 (Fed. Cir. 1984) (standard for evaluating evidence in patent validity/derivation)
- Williamson v. Consol. Rail Corp., 926 F.2d 1344 (3d Cir. 1991) (view record in light most favorable to verdict winner)
- Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009 (Fed. Cir. 1998) (credibility assessment in factual determinations)