|May 30, 2014|
Previously published on May 29, 2014
Further to our May 9, 2014 post, on May 20, 2014, Chief ALJ Charles E. Bullock issued the public version of the Initial Determination (“ID”) finding a violation of Section 337 in Certain Windshield Wiper Devices and Components Thereof (Inv. No. 337-TA-881).
According to the ID, ALJ Bullock found that Respondents Trico Corporation, Trico Products, and Trico Components SA de CV (collectively, “Trico”) violated Section 337 based on the importation and/or sale of Ford F-Series and Chrysler 200 wiper blades that infringe claims 1 and 5 of U.S. Patent No. 8,347,449 (the ‘449 patent). The Complainants in the investigation are Federal-Mogul Corporation and Federal-Mogul S.A. (collectively, “Federal-Mogul”).
Further to the claim construction determination in Order No. 11, ALJ Bullock noted in the ID that the parties disputed the meaning of two additional terms not addressed at the Markman hearing. First, the meaning of “connecting piece” in claim 1 was disputed by the parties at trial. The ALJ agreed with Federal-Mogul that this term should be construed according to its plain meaning, and rejected Trico’s argument that this term be construed as a “clamping members” or “a device designed to bind or constrict or to press two or more parts together so as to hold them firmly.” Second, the term “clamping” in claims 2, 3, 6, 7 and 12 was also disputed by the parties. ALJ Bullock similarly gave this term its plain meaning, but agreed with Trico that the plain meaning is “a device designed to bind or constrict or to press two or more parts together so as to hold them firmly.”
According to the ID, Trico disputed only two limitations of claim 1 in connection with the accused Ford F-Series and Chrysler 200 blades. The first dispute involved the term “said carrier element including spaced-apart longitudinal strips disposed in said grooves and interconnected by a respective connecting piece at opposite neighboring ends of said strips.” Trico argued that the accused wiper blades do not satisfy this element under its claim construction for “connecting piece.” ALJ Bullock, however, rejected Trico’s interpretation of this term. Federal-Mogul’s expert testified that, based upon his visual inspection of the accused wiper blades, this term was met using the ALJ’s construction for “connecting piece.” Specifically, Federal-Mogul’s expert found that the blades contained spaced-apart longitudinal strips of a flat blade disposed in the grooves within the meaning of this claim term, and that the longitudinal strips are interconnected by connecting pieces located at the end of the strips.
The second dispute regarding claim 1 involved the term “wherein each subspoiler is connected to said longitudinal strips of said carrier element and is detachable therefrom independent of the attachment of said connecting device to said carrier element.” Federal-Mogul’s expert testified that the limitation “detachable therefrom” is met for the accused devices, whereas Trico argued that the blades have two spoilers designed to be removed without the connecting device. Further, Trico contended that a “detachable” spoiler is simply one that can be separated from the wiper assembly to allow for the replacement of worn wiper parts without needing to replace the entire wiper blade or the spoiler, which Trico asserted is consistent with its construction of the term “detachable.” ALJ Bullock determined that this limitation was met for the accused blades based on Federal-Mogul’s expert demonstrating that the subspoilers can be detached with a modest amount of pressure, and because Trico’s own expert admitted that the claim term was satisfied using the ALJ’s claim construction. Further, ALJ Bullock determined that dependent claim 5 was infringed by the accused Ford F-Series and Chrysler 200 blades for the same reasons as claim 1, and because the accused products met the additional limitation of being made of spring band material.
ALJ Bullock found that the accused Ford F-Series and Chrysler 200 wiper blades do not infringe claims 2-4, 6 and 7 because they do not have “clamping features” as that term was construed. In contrast to having features that bind or constrict or press two or more parts together so as to hold them firmly, the ALJ agreed with Trico’s expert that the spoilers on the accused blades slide, although not intentionally. Regarding claim 7, which recites that “said connecting device and said clamping member are made in one piece,” the ALJ’s finding of non-infringement was based on Federal-Mogul’s expert relying on the construction of “clamping members” that the ALJ rejected.
ALJ Bullock determined that none of the accused products infringe claims 8-11 because the only evidence presented by Federal-Mogul for the “elastic, elongated carrier element extending between opposite ends” limitation in independent claim 8 is its expert’s testimony, which in turn simply referred to portions of his claim charts. Unlike his testimony as to claim 1, Federal-Mogul’s expert did not testify that he visually inspected or manipulated any of the 19 accused wiper blades with respect to this claim term. Further, the ALJ noted that claim charts are only demonstrative exhibits and not substantive evidence. Because the second element of claim 8 was not met, the ALJ did not address the remaining limitations. ALJ Bullock similarly concluded that claims 12-14 are not infringed because Federal-Mogul’s expert did not testify that he visually inspected or manipulated any of the 19 accused wiper blades with respect to the “longitudinally extending wiper blade” limitation in independent claim 12.
As an initial matter, ALJ Bullock observed that in its post-hearing brief, Trico improperly asserted certain obviousness combinations which were not set forth in its pre-hearing brief. Consequently, the ALJ ruled that Trico abandoned these contentions of obviousness in accordance with Ground Rule 8.2. Thus, Trico’s only remaining obviousness contention was U.S. Patent No. 5,713,099 (the ‘099 patent) in view of U.S. Patent No. 6,799,348 (the ‘348 patent).
ALJ Bullock found that Trico failed to show by clear and convincing evidence that the combination of the ‘099 and ‘348 patents rendered the ‘449 patent obvious. First, the ALJ noted that neither the ‘099 nor the ‘348 patent teaches a detachable spoiler - the ‘348 patent only discloses a beam blade, and the ‘099 patent only discloses a single piece spoiler that slides on the wiper blade only during assembly. Even assuming, however, that the ‘099 teaches a detachable spoiler, the ALJ found no motivation to combine the beam blade of the ‘348 patent with the spoiler, clasps and end caps of the ‘099 patent. In fact, the ALJ determined that placing a spoiler on top of a wiping element is contrary to the teachings of the ‘099 patent because the spoiler was designed to prevent airstreams from interfering with the contact of the blade with the window. Moreover, the ALJ found that instead of suggesting the use of a spoiler, the ‘348 patent discusses reducing the height of the blade and changing the width of the blade to reduce wind lift.
As to written description, Trico argued that the patentee added new material to the specification during prosecution of the ‘449 patent to cover single spline carriers, while the original specification, claims and drawings only disclose wiper blades with dual spline carriers. ALJ Bullock was unpersuaded, however, as he previously found that “carrier” is not limited to only double spline carriers. Further, the ALJ noted that prior art disclosed during prosecution illustrates that one of ordinary skill in the art knew of wiper blades with single and double spline carriers. Accordingly, the ALJ found that Trico failed to prove by clear and convincing evidence that the ‘449 patent is invalid for lack of written description.
Regarding the technical prong of the domestic industry requirement, Federal-Mogul asserted that the ‘449 patent covers its ANCO Profile, ANCO Contour, NAPA Vista, NAPA AccuFit and Tesla Model S wiper blades. ALJ Bullock noted that the parties did not dispute that Federal-Mogul’s domestic industry products are structurally the same as Trico’s accused products, and therefore if any of Trico’s accused products infringe, then Federal-Mogul’s domestic industry products likewise satisfy the technical prong of the domestic industry requirement. Accordingly, because the ALJ found that the accused Ford F-Series and Chrysler 200 wiper blades infringe claims 1 and 5 of the ‘449 patent, the ALJ likewise determined that Federal-Mogul also satisfied the technical prong of the domestic industry requirement.
As to the economic prong, Federal-Mogul had argued that it conducts significant domestic industry activities in the U.S. relating to its domestic industry products, which Trico did not dispute. Thus, ALJ Bullock determined that Federal-Mogul satisfied the economic prong of the domestic industry requirement
Having found a violation of Section 337, ALJ Bullock recommended that the Commission issue a limited exclusion order prohibiting the importation of Trico’s wiper blades found to infringe the ‘449 patent. The ALJ further recommended that no cease and desist order issue, however, noting that the exhibits relied on by Federal-Mogul to show that Trico maintains a “commercially significant” amount of infringing, imported product were not admitted into evidence.