On May 27, 2015, ALJ Thomas B. Pender issued the public version of Order No. 19 (dated May 19, 2015) in Certain Windshield Wipers and Components Thereof (Inv. No. 337-TA-928/937).  Please note that Oblon represents Complainants in this matter.

By way of background, the investigation is based on July 25, 2014 and October 15, 2014 complaints filed by Valeo North America, Inc. of Troy, Michigan and Delmex de Juarez S. de R.L. de C.V. of Mexico alleging violation of Section 337 in the importation into the U.S. and sale of certain windshield wipers and components thereof.  See our August 1, 2014August 28, 2014October 16, 2014, and November 19, 2014 posts for more details on the complaints and Notices of Investigation in the 928 and 937 investigations.  On December 9, 2014, ALJ Pender consolidated the 928 and 937 investigations.  See our December 15, 2014 post for more details. 

According to the Order, Complainants Valeo North America, Inc. and Delmex de Juarez S. de R.L. de C.V. (collectively, "Valeo") filed a motion for summary determination of no exhaustion or permissible repair defenses with respect to U.S. Patent Nos. 7,937,798 (the '798 patent) and 7,891,044 (the '044 patent) (collectively, "the asserted patents").  With respect to the '798 patent, Valeo argued that the "wiper blade assembly" claims "do not include a wiper arm and that replacing the patented wiper blade assembly with Trico's unauthorized wiper blade assembly cannot be considered permissible repair."  As to the '044 patent, Valeo argued that the exhaustion and permissible repair defenses are not available because the "wiper blade" component is separately patented under the '798 patent.

ALJ Pender held that Valeo identified an adequate legal basis for its summary determination motion and, thus, shifted the burden to Trico to designate specific facts showing that there is a genuine issue for trial.  Trico advanced two main arguments against summary determination.  Specifically, Trico argued (1) "that it is not required to establish exhaustion and permissible repair until Valeo meets its initial burden of proving direct or contributory infringement", and (2) "that it does not make, use, sell, or import a Valeo-type pinch tab style wiper arm and that its wiper blades are sold, not as original equipment, but rather in the 'aftermarket' as a replacement for any given worn out wiper blade."

ALJ Pender determined that "Trico's first argument is flawed and contrary to longstanding practice and jurisprudence" and "Trico's second argument is persuasive with respect to the '044 patent but not with respect to the '798 patent."  Regarding Trico's first argument, ALJ Pender held that "[t]here is no requirement for patentees to prove infringement before moving to dismiss or for summary judgment on an accused infringer's affirmative defense."  ALJ Pender further noted that "[d]istrict courts and the International Trade Commission have frequently and repeatedly considered and ruled on such motions, before the hearing or trial on infringement."  Regarding the '798 patent, ALJ Pender rejected Trico's argument that it does not "make, use, sell, or import a Valeo-type pinch tab style wiper arm" because such argument is irrelevant to the '798 patent because the "wiper arm" is not a component of the "wiper blade assembly."  Additionally, ALJ Pender held that the exhaustion and permissible repair doctrines do not apply to the '798 patent because "Trico is selling a replacement for the entire patented article, not subparts of the 'wiper blade assembly' or individual components thereof."  As to the '044 patent, ALJ Pender determined that summary determination cannot be granted "because if the '798 patent is found invalid, there is at least a question of law as to whether Trico can assert its defenses of exhaustion and permissible repair with respect to the '044 patent."

Accordingly, ALJ Pender granted Valeo's motion for summary determination of no exhaustion or permissible repair defenses with respect to the '798 patent, and denied Valeo's motion with respect to the '044 patent.