12-437.141-RSK May 21, 2014

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

ROBERT BOSCH LLC, )

)

Plaintiff, )

)

 v. ) No. 12 C 437

) 

TRICO PRODUCTS CORPORATION, and )

TRICO PRODUCTS, )

)

Defendants. )

___________________________________)

TRICO PRODUCTS CORPORATION, )

)

Counter-Plaintiff, )

)

v. )

)

ROBERT BOSCH LLC and ROBERT BOSCH )

GmbH, )

)

Counter-Defendants. )

MEMORANDUM OPINION

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.

BACKGROUND

Trico manufactures windshield wiper blades. (Trico’s L.R.

56.1 Stmt. of Material Facts (“Trico’s Stmt.”) ¶ 1.) Plaintiff
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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 2011.1 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

1/ Bosch is a wholly-owned subsidiary of Bosch GmbH. (See Bosch GmbH

Answer to Fourth Am. Counterclaims ¶ 12.) The parties disagree about the exact

date when Bosch GmbH completed the acquisition. (See Bosch's Resp. to Trico's

Stmt. ¶ 30.) But that dispute is irrelevant for the present motion. 
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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 takeover 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.

DISCUSSION

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
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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
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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.”). 

1. Territoriality

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
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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 stage of the case. (See

Trico’s Resp. to Bosch’s Stmt. of Add’l Facts ¶¶ 50, 56.) But

Bosch admits that it also sold some patented apparatuses within the

United States. (See Bosch’s Stmt. of Add’l Facts ¶¶ 42- 44.) As

to those devices, the doctrine of permissible repair may still

apply.

2. Whether Wiper-Blade Replacement Constitutes Permissible

Repair

We think it is clear that, in the abstract, vehicle owners who

replace wiper blades with Trico’s products have permissibly

repaired the purchased wiper “apparatus.” Bosch recommends that

consumers replace wiper blades every six months. (See Trico Stmt.

¶ 39.) There is no evidence in the record about the expected life

of the entire wiper system, including the wiper arm. But the

parties appear to agree — consistent with the experiences of anyone

who has ever owned a car — that the “apparatus” is expected to

outlast the blades. See Aktiebolag, 121 F.3d at 673 (the fact that
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the replaced component wears out sooner than the entire combination

supports finding permissible repair). Both Trico and Bosch sell

aftermarket replacement blades, which supports the conclusion that

there is a well-developed market for replacement parts. See id.

(an established market for replacement parts supports a finding of

permissible repair). Finally, the act of replacing a wiper blade

is analogous to the repair of other devices that Supreme Court and

the Federal Circuit have held to be permissible. See Wilson v.

Simpson, 50 U.S. 109, 1123 (1850) (replacing the blades of a

patented planing machine constituted permissible repair); Aro Mfg.

Co. v. Convertible Top Replacement Co., 365 U.S. 336, 346 (1961)

(replacing the worn fabric cover of a patented convertible top was 

permissible repair); Kendall Co. v. Progressive Medical Technology,

Inc., 85 F.3d 1570, 1574-75 (Fed. Cir. 1996) (replacing the

pressure sleeves in a patented medical device was permissible

repair); FMC Corp. v. Up-Right, Inc., 21 F.3d 1073, 1077-79 (Fed.

Cir. 1994) (replacing the worn “picking heads” of a harvester was

permissible repair). Bosch argues that wiper-blade replacement

constitutes reconstruction because of the alleged differences

between parties’ products: if, as Trico argues, its wiper blades do

not infringe Bosch’s patents, then they must be so different from

the patented product that their use constitutes impermissible

reconstruction. (See Bosch Resp. at 11.) In support of this

argument, Bosch cites cases discussing the difference between
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repair and reconstruction, generally. (Id. at 12.) The Supreme

Court and the Federal Circuit have refined the distinction between

the two concepts in cases applying the doctrine to various devices. 

Those cases support finding permissible repair in this case. (See

supra.) Conversely, Bosch has not cited any case in which a court

has held that replacing a part analogous to the wiper blades in

this case constituted impermissible reconstruction.

The more difficult question is whether Bosch’s wiper-blade

patents (e.g., the ‘905 patent) render the permissible-repair

doctrine inapplicable. The parties agree that the ‘111 and ‘607

patents are “combination” patents. A “combination patent covers

only the totality of the elements in the claim and that no element,

separately viewed, is within the grant.” Aro, 365 U.S. at 344. 

This is so even if a particular component is “essential” to the

combination as a whole:

No element, not itself separately patented, that

constitutes one of the elements of a combination patent

is entitled to patent monopoly, however essential it may

be to the patented combination and no matter how costly

or difficult replacement may be.

Id. at 345 (emphasis added). Bosch argues that unlike the fabric

covers in Aro, its wiper blades are patented, albeit by separate

patents. So, according to Bosch, replacing the wiper blade with a

Trico product infringes both the component patents and the

combination patents. What little case law there is on this subject

tends to support Bosch’s argument. In Warner & Swasey Co. v. Held,
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256 F.Supp. 303, 311 (E.D. Wis. 1966), the court reasoned that the

existence of a separate patent on one component of the patented

combination negated the inference that “in selling the combination

[the patentee] contemplates or intends licensing such purchaser to

replace the patented part from any source other than himself.”2 

The court in R2 Medical Systems, Inc. v. Katecho, Inc., 931

F.Supp. 1397 (N.D.Ill. 1996) followed Warner & Swasey and

elaborated on its reasoning:

Where the part is unpatented, the Supreme Court has

emphasized that the critical question is whether the

entire combination is exhausted.

But if the new part is protected under separate patent,

the court does not inquire whether the entire combination

is exhausted upon the replacement of the worn part.

Replacement with the patented part does not infringe the

combination patent because that separate patent ascribes

the status of the combination to that part. The separate

patent does not render the inventiveness of the component

an “essential” element of the invention of the

combination. Aro I clearly rejected this analysis.

Rather, replacement infringes the combination patent

because the purchaser engages in an unauthorized use of

the combination by configuring it with an element that

infringes another patent of the patent owner. Whether

considered a form of unauthorized use or reconstruction,

the purchaser has no license to maintain the “use of the

whole” through elements that infringe the combination

patent owner’s separate patent. Thus, in contrast to the

repair and reconstruction inquiry, R2's legal action

under the system patents does not challenge the use of

the electrode elements, “separately viewed.” It

2/ The Fifth Circuit Court of Appeals cited Warner & Swasey with approval

in Hensley Equipment Co. v. Esco Corp., 383 F.2d 252, 260 (5th Cir. 1967). But

unlike this case, Hensley appears to have involved multiple claims within a

single patent. See id. at 259-60. If the ‘111 and ‘607 patents claimed wiper

blades and Trico’s products infringed those claims, then the doctrine of

permissible repair would not excuse that infringement. But the question here is

whether infringing a separate component patent also infringes the combination

patent. 
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challenges a particular use of the combination with the

infringing electrodes.

Id. at 1445-46 (footnote omitted).

Trico argues that this reasoning is inconsistent with the

Supreme Court’s decision in Quanta Computer, Inc. v. LG

Electronics, Inc., 553 U.S. 617 (2008). Quanta held that a

patentee exhausts its patent rights by selling a product that

substantially embodies, but only partially practices, the patent. 

Id. at 630-35. Trico relies in particular on the following passage

from the Court’s opinion:

With regard to LGE’s argument that exhaustion does not

apply across patents, we agree on the general principle:

The sale of a device that practices patent A does not, by

virtue of practicing patent A, exhaust patent B. But if

the device practices patent A while substantially

embodying patent B, its relationship to patent A does not

prevent exhaustion of patent B. For example, if the

Univis lens blanks had been composed of shatter-resistant

glass under patent A, the blanks would nonetheless have

substantially embodied, and therefore exhausted, patent

B for the finished lenses. This case is no different.

While each Intel microprocessor and chipset practices

thousands of individual patents, including some LGE

patents not at issue in this case, the exhaustion

analysis is not altered by the fact that more than one

patent is practiced by the same product. The relevant

consideration is whether the Intel Products that

partially practice a patent — by, for example, embodying

its essential features — exhaust that patent.

Id. at 634-35 (emphasis in original). Trico construes this passage

to require patent-by-patent analysis in cases involving exhaustion. 

But the issue in Quanta was substantially different than the issue

here. The Court did not hold, or even suggest, that replacing a
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portion of a patented combination with a separately patented

component only infringes the component patent. 

Notwithstanding the lack of contrary authority, we have

reservations about the reasoning in Warner & Swasey and R2 Medical

Systems. Both courts emphasized the patentee’s expectations and

intentions. See Warner & Swasey, 256 F.Supp. at 311 (“The

patentee, therefore, must have contemplated when he sold the

combination that unless he extended to the purchaser a license to

replace such parts from any available source, such combination

would be of little use to the purchaser.”); see also R2 Medical

Systems, 931 F.Supp. at 1446 (“It is because the patent owner’s

common ownership of the component patent negates the presumption

that his sale of the patented combination also includes a license

to preserve the entire combination through the use of the

infringing device as an element of the patented combination.”). 

But as the Supreme Court explained in Aro, “the claims made in the

patent are the sole measure of the grant.” Aro, 365 U.S. at 339. 

If the ‘111 and ‘607 patents do not claim wiper blades, how can an

individual who replaces the wiper blade infringe those patents? 

Also, what if the combination patent predates the component patent? 

Does the component patent retroactively expand the scope of the

combination patent to cover the previously unpatented component? 

We are not prepared at this time to reject Warner & Swasey and R2

Medical. But we have sufficient doubts about whether they were
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correctly decided to withhold ruling pending a more developed

record. 

C. Whether the Unipoint Acquisition Bars Bosch’s Claim That

Trico’s Duralast Flex Blade Infringes its Patents

Trico makes essentially two arguments in support of its claim

that Bosch cannot sue it for selling Unipoint-manufactured blades. 

First, it argues that Unipoint — as a member of the “Bosch Group”

— promised that it would “fulfill all contracts and agreements

which were concluded by [Unipoint] with their customers in a manner

consistent with their past practices after the closing.” (Trico

Stmt. ¶ 31.) Bosch has clarified, consistent with this commitment,

that it is not pursuing damages for post-closing sales by Trico. 

(See Bosch Resp. at 13.) The question is whether Bosch agreed not

to pursue claims alleging pre-closing infringement. When Trico

asked Unipoint to clarify Bosch GmbH’s commitment, it stated only

that Trico was authorized to resell Unipoint-manufactured blades

purchased “since” December 1, 2011. (See Letter Dated March 22,

2012, attached as Ex. D to Kubasiak Decl.) So, as far as the

record reveals, neither Unipoint nor Bosch/Bosch GmbH ever stated

that it would not pursue infringement claims for sales pre-dating

the closing.

Trico also argues that Bosch: (1) stepped into Unipoint’s

shoes after the closing, thereby barring any infringement claim

that Unipoint could not have pursued in its own right; and (2)

would be unjustly enriched if it was permitted to pursue claims for
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infringement while retaining the benefits of Unipoint’s pre-closing

sales to Trico. With respect to the first point, it appears that

Bosch and Unipoint remain distinct corporate entities. Without

some authority to the contrary — and Trico has not cited any — we

will not treat Bosch and Unipoint as if they were the same company. 

With respect to the second point, we are not persuaded by Trico’s

analogy to PSN Illinois, LLC v. Abbott Laboratories, No. 09 C 5879,

2011 WL 4442825 (N.D. Ill. Sept. 20, 2011). In that case, PSN

claimed that certain third parties had infringed its patented

biotechnology. Id. at *2. It settled those claims and granted the

third parties licenses to use PSN’s patents in the future, and

released them from liability for past infringement. Id. at *7-10. 

The third parties then sold the patented cell lines to the

defendants. Id. at *1-2. The PSN court held that PSN had

exhausted its patent rights in the cell lines when it granted

licenses to the third parties. Id. at *6-7, *9-10. So, it could

not pursue infringement claims against downstream purchasers like

the defendants. Id. PSN may be analogous to our case, depending

upon the terms of Bosch GmbH’s acquisition of Unipoint. But Trico

has not cited or discussed those terms. Instead, it makes a more

abstract point: Bosch GmbH — and Bosch, as its wholly-owned

subsidiary — acquired the benefit of Unipoint’s prior sales to

Trico when it acquired Unipoint. But it has not cited any case law

supporting that theory, nor has it developed its argument that
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Bosch benefitted from Unipoint’s sales to Trico. On this record,

we decline to rule that the Unipoint acquisition bars Bosch’s claim

that Trico’s Duralast Flex Blade infringes its patents. 

CONCLUSION

Trico’s motion for summary judgment [104] is denied.

DATE: May 21, 2014

ENTER: ___________________________________________

John F. Grady, United States District Judge