United States District Court, N.D. Illinois, Eastern Division
JOHN F. GRADY, District Judge.
Before the court is defendant Trico Products Corporation's ("Trico") motion for summary judgment of noninfringement of U.S. Patent Nos. 6, 553, 607 (the "607 patent"), 6, 530, 111 (the "111 patent"), 6, 944, 905 (the "905 patent"), and with respect to Trico's "Duralast Flex Blade." For the reasons explained below, we deny Trico's motion.
Trico manufactures windshield wiper blades. (Trico's L.R. 56.1 Stmt. of Material Facts ("Trico's Stmt.") ¶ 1.) Plaintiff Robert Bosch LLC ("Bosch") manufactures windshield-wiper systems and sells them to automobile manufacturers. (Id. at ¶ 2.) It also sells aftermarket replacement blades. (Id.) The 607 patent and the 111 patent each claim a "wiper apparatus" requiring, among other things, a "wiper arm" and a "wiper blade." (Id. at ¶ 22.) Bosch alleges that Trico's wiper blades infringe the 607 and 111 patents when combined with a pre-existing wiper arm. Trico argues that it is entitled to summary judgment on this claim under the doctrine of permissible repair.
Bosch also alleges that Trico's Duralast Flex Blade infringes the 905 patent, which claims a windshield wiper blade. Since 2002, Unipoint Electric Manufacturing Co., Ltd. ("Unipoint") has manufactured the Duralast Flex Blade for Trico. (Id. at ¶ 20.) Robert Bosch GmbH ("Bosch GmbH") acquired Unipoint in 2011. In an email dated August 16, 2011, Unipoint assured Trico that their business relationship would "follow the ordinary business course" after Bosch GmbH acquired the company. (Trico's Stmt. ¶ 31.) The email attached a letter from Bosch GmbH addressed to Unipoint, asking Unipoint to reassure its customers that "Robert Bosch GmbH will fulfill all contracts and agreements which were concluded by [Unipoint] with their customers in a manner consistent with their past practices after the Closing." (Id.; see also Email Dated Aug. 16, 2011, attached as Ex. 9 to Bosch's Resp. to Trico's Stmt.) In March 2012, Trico asked Unipoint to confirm that "Trico has the right to use or sell those products manufactured for and sold to Trico by Unipoint." (Trico's Stmt. ¶ 32.) Unipoint responded as follows:
Unipoint became a member of the Bosch Group since Dec. 1, 2011. All products sold to Trico by Unipoint since take-over Dec. 1, 2011 under the existing supply agreements between the parties may be sold by Trico to third parties as stipulated in the respective supply agreements.
(Id. at ¶ 33; see also Letter Dated March 22, 2012, attached as Ex. D to Kubasiak Decl., attached as Ex. 2 to Trico's Stmt.) Trico argues that Unipoint's assurances, and its affiliation with Bosch, prohibit Bosch from pursuing any claim against Trico for sales of Unipoint-manufactured Duralast Flex Blades.
A. Legal Standard
"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). In considering such a motion, the court construes the evidence and all inferences that reasonably can be drawn therefrom in the light most favorable to the nonmoving party. See Pitasi v. Gartner Group, Inc. , 184 F.3d 709, 714 (7th Cir. 1999). "The court need consider only the cited materials, but it may consider other materials in the record." Fed.R.Civ.P. 56(c)(3). "Summary judgment should be denied if the dispute is genuine': if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.'" Talanda v. KFC Nat'l Mgmt. Co. , 140 F.3d 1090, 1095 (7th Cir. 1998) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248 (1986)). The court will enter summary judgment against a party who does not "come forward with evidence that would reasonably permit the finder of fact to find in [its] favor on a material question." McGrath v. Gillis , 44 F.3d 567, 569 (7th Cir. 1995).
B. Permissible Repair
The unrestricted sale of a patented product "exhausts" the patentee's right to control the purchaser's use of the product. Jazz Photo Corp. v. International Trade Com'n , 264 F.3d 1094, 1105 (Fed. Cir. 2001). After the sale, the purchaser "has the rights of any owner of personal property, including the right to use it, repair it, modify it, discard it, or resell it, subject only to overriding conditions of the sale." Id. at 1102. But the right to repair the purchased product does not include the right to "construct an essentially new article on the template of the original, for the right to make the article remains with the patentee." Id . There is a "continuum" between permissible repair and impermissible reconstruction. Id .; see also Aktiebolag v. E.J. Co. , 121 F.3d 669, 674 (Fed. Cir. 1997) ("[T]here is no bright-line test for determining whether reconstruction or repair has occurred."). Relevant factors include: "the nature of the actions by the defendant, the nature of the device and how it is designed (namely, whether one of the components of the patented combination has a shorter useful life than the whole), whether a market has developed to manufacture or service the part at issue and objective evidence of the intent of the patentee." Aktiebolag , 121 F.3d at 673. Besides these factors, the Federal Circuit requires the party asserting permissible repair to show that the repaired device was first sold in the United States. See Jazz Photo , 264 F.3d at 1105 ("United States patent rights are not exhausted by products of foreign provenance. To invoke the protection of the first sale doctrine, the authorized first sale must have occurred under the United States patent.").
Trico argues that the Supreme Court eliminated the territoriality requirement in Kirtsaeng v. John Wiley & Sons, Inc. , 133 S.Ct. 1351 (2013). Kirtsaeng abolished the "first sale" rule as applied to claims for copyright infringement. See id. at 1371. The Federal Circuit may at some point reconsider Jazz Photo in light of the Supreme Court's analysis in Kirtsaeng, but it has not done so yet. It appears that only one district court has addressed Kirtsaeng's impact on Jazz Photo. See Lexmark Intern., Inc. v. Ink Technologies Printer Supplies, LLC, Case No. 1:10-cv-564, 2014 WL 1273665, *2-7 (S.D. Ohio Mar. 27, 2014). The Lexmark court concluded after careful analysis that Kirtsaeng does not overrule Jazz Photo. Id. at *2-7. Trico's argument to the contrary is cursory. (See Trico Reply at 3.) We decline to hold that a first sale in the United States is no longer a requirement for patent exhaustion. Bosch contends that some of the relevant wiper apparatuses were first sold abroad, then imported into the United States. (See Bosch's Stmt. of Add'l Facts ¶¶ 48-50, 52-56.) Trico concedes the point, at least at this ...