ROBERT BOSCH, LLC v. PYLON MANUFACTURING CORP. (Del. 11-3-2010)

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f520 U.S. 17, 24, 117 S.ct. 1040, 137 L. Ed. 2d 146 (1997). The patent owner has the burden of proving infringement and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988) (citations omitted).

a. Claim 7 of the `434 patent

Bosch claims that the jury erred in finding that claim 7 of the `434 patent was not infringed by the Accused Pylon Products. Claim 7 describes a "detent shoulder . . . embodied on a detent tooth that protrudes from the long side of the support element." (`434 patent at col. 7:27-29) The court construed this limitation to mean "[a] protrusion, one surface of which defines a detent shoulder" and declined to import the angular structure requirement of the detent teeth depicted in figure 6 based on one embodiment. (D.I. 270 at ¶ 18) The court construed the "long sides" of the support element to mean the "longitudinal sides of the support element," noting that the `434 patent distinguishes between the long sides and the long edges. ( Id. at ¶ 16) Specifically, the court stated:

Defendant argues that this construction would encompass "sides" that are not "long," and instead proposes a construction with reference to the longitudinal "edge" of the support element. Irrespective of the court's disagreement with the logic of this argument, the `434 patent distinguishes between the long sides (claims 1, 4, 5, and 7) and the long edges (claim 11) of the support element.

( Id.)

According to Bosch, Pylon's only testimony in support of its argument for non-infringement of claim 7 impermissibly contradicted the court's claim construction order. (D.I. 310 at 32-33) Bosch contends that, while it presented evidence of infringement under the court's claim construction in the form of Dubowsky's expert testimony, Pylon's only non-infringement testimony was based on a rejected claim construction that the "long side" refers only to the outermost edge of the left and right sides. ( Id.) Bosch claims that Pylon caused confusion by trying to distinguish the side and the edge in a manner contrary to the court's claim construction. (D.I. 341 at 27) In response, Pylon contends that a jury verdict finding infringement of claim 7 is not compelled by the court's construction of the terms in that claim, nor do the parties' experts' differing interpretations of the terms compel a judgment for Bosch. (D.I. 330 at 35) Pylon argues that the jury was entitled to credit the testimony of Pylon's expert over Bosch's expert, who presented a complicated theory that divided the surface of the support element into middle, left and right zones and was not supported by the figures of the `434 patent or any expert report. ( Id. at 36) Pylon further contends that its defense did not contradict the court's claim construction order, and Pylon's expert explained how his understanding of the "long sides" of the support element was consistent with the `434 patent's description in figure 6. ( Id.)

After reviewing the evidence presented at trial in the light most favorable to Pylon as the verdict winner, the court concludes that the jury's non-infringement verdict regarding claim 7 of the `434 patent was based on substantial evidence. The court acknowledges that the testimony presented by Pylon strained the limits of the term "long side" as defined by the court's claim construction order. However, the court rejects Bosch's argument that Pylon's expert testimony rose to the level of violating the court's claim construction order. Bosch had the burden of proving the infringement of claim 7 of the `434 patent by a preponderance of the evidence, and the court cannot substitute its own judgment for the jury's where conflicting evidence is present. Given that Pylon presented substantial evidence in support of its claim of non-infringement of claim 7 of the `434 patent, the court denies Bosch's motion for JMOL with respect to the non-infringement of claim 7 of the `434 patent.

b. Claims 1, 5 and 13 of the `434 patent

In its renewed motion for JMOL, Pylon argues that no reasonable jury could have found that claims 1, 5 and 13 of the `434 patent were infringed based on the court's claim construction of the term "bracing itself on the wiper blade." (D.I. 317) The court construed "bracing itself on the wiper blade" to mean "supporting itself on both the support element and the wiper strip." (D.I. 270 at ¶ 11) The court further explained that "[a]lthough claim 1 refers to bracing on both wiper strip (20) and support element (16), the inventive nature of the `434 patent, illuminated by the intrinsic record, does not require that such bracing be simultaneous." ( Id.)

Pylon contends that the Accused Pylon Products do not meet the requirements of the court's claim construction because they do not brace themselves on both the support element and the wiper strip. (D.I. 317 at 5) According to Pylon, both parties' experts agreed that the end caps in the Accused Pylon Products support themselves only on the support element. ( Id. at 6) Furthermore, Pylon maintains that evidence showing both the end cap and the wiper strip supported on the support element is not sufficient to demonstrate a functional relationship between the end cap and the wiper strip as required by the court's claim construction. ( Id.) Bosch responds that Dubowsky's testimony (which tracks the court's claim construction, the jury instructions and the verdict) supports the theory that the end cap contained in the Accused Pylon Products was supported by both the wiper strip and the support element. (D.I. 333 at 3-4) According to Bosch, the physical exhibits of the Accused Pylon Products also show that the end caps in the infringing products support themselves on both the support element and the wiper strip. ( Id. at 4) Furthermore, Bosch maintains that the court rejected Pylon's alternative claim construction and affirmed in the jury instructions that "bracing" does not require "touching" as long as a functional relationship exists between the end caps and the wiper strip. ( Id. at 3)

After reviewing the evidence presented at trial in the light most favorable to Bosch as the verdict winner, the court concludes that the jury's infringement verdict regarding claims 1, 5 and 13 of the `434 patent was based on substantial evidence. The jury could find Dubowsky's testimony more credible and rely on its own conclusions concerning the Accused Pylon Products, and the court cannot substitute its own judgment for the jury's where, as here, conflicting evidence is present. Given that substantial evidence supported the jury's finding of infringement of claims 1, 5 and 13 of the `434 patent, the court denies Pylon's motion for JMOL with respect to the infringement of those claims.

B. Motion for a New Trial

The decision to grant or deny a new trial is within the sound discretion of the trial court and, unlike the standard for determining judgment as a matter of law, the court need not view the evidence in the light most favorable to the verdict winner. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36 (1980). Federal Rule of Civil Procedure 59(a) provides, in pertinent part:

A new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.

New trials are commonly granted where: (1) the jury's verdict is against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage of justice; (2) newly-discovered evidence surfaces that would likely alter the outcome of the trial; (3) improper conduct by an attorney or the court unfairly influenced the verdict; or (4) the jury's verdict was facially inconsistent. See Zarow-Smith v. N.J. Transit Rail Operations, 953 F.Supp. 581, 584 (D.N.J. 1997) (citations omitted). The court, however, must proceed cautiously and cannot substitute its own judgment of the facts and assessment of the witnesses' credibility for the jury's independent evaluation. Nevertheless,

[w]here a trial is long and complicated and deals with a subject matter not lying within the ordinary knowledge of jurors a verdict should be scrutinized more closely by the trial judge than is necessary where the litigation deals with material which is familiar and simple, the evidence relating to ordinary commercial practices. An example of subject matter unfamiliar to a layman would be a case requiring a jury to pass upon the nature of an alleged newly discovered organic compound in an infringement action.

Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics Plastics, Inc., 615 F. Supp. 2d 304, 309-10 (D. Del. 2009) (quoting Lind v. Schenley Indus. Inc., 278 F.2d 79, 90-91 (3d Cir. 1960)). Pursuant to Fed.R.Civ.P. 50(c), if the court grants a renewed motion for JMOL, it must also conditionally rule on any motion for a new trial by determining whether a new trial should be granted if the judgment is later vacated or reversed. Fed.R.Civ.P. 50(c)(1).

1. Obviousness of the `974 patent and the `434 patent

Bosch argues that the jury's verdict of obviousness of claims 1 and 8 of the `974 patent and claims 1 and 5 of the `434 patent is against the weight of the evidence and warrants a new trial. (D.I. 310 at 27) Specifically, Bosch contends that its expert testified that the prior art patents did not embody every limitation of the claimed inventions, and Pylon presented no evidence of a motivation by one of ordinary skill in the art to combine the prior art patents to achieve the claimed invention. ( Id. at 27-28) Furthermore, Bosch maintains that the prior art was either literally considered by the PTO or it was cumulative to other prior art considered by the PTO, and secondary factors such as the commercial success of the blades also support Bosch's claim for non-obviousness. ( Id. at 28-30) Pylon counters that the jury was free to accept the opinions of its expert over Bosch's expert, and the evidence of secondary considerations presented by Bosch does not control the obviousness determination and was not adequately substantiated. (D.I. 330 at 32-33)

Pursuant to Fed.R.Civ.P. 50(c)(1), the court conditionally grants a new trial on the obviousness of claims 1 and 8 of the `974 patent and claims 1 and 5 of the `434 patent because the jury's verdict was against the clear weight of the evidence. Both parties presented evidence on prior art references upon which the jury could have reasonably based its verdict. However, the jury based its obviousness verdict on combinations of prior art not presented at trial by either party because they were precluded by the court's in limine order. As such, the jury's verdict goes against the clear weight of the evidence and, if this court's order granting Bosch's motion for JMOL is reversed on appeal, a new trial is warranted on the obviousness of claims 1 and 8 of the `974 patent and claims 1 and 5 of the `434 patent. Accordingly, Bosch's motion for a new trial on the obviousness of claims 1 and 8 of the `974 patent and claims 1 and 5 of the `434 patent is conditionally granted.

2. Derivation of the `974 patent

Bosch also argues that the jury's derivation finding is against the weight of the evidence taken as a whole and a new trial is warranted to prevent a miscarriage of justice. (D.I. 310 at 12) Bosch points to Merkel's testimony regarding the sketch pad on which he allegedly proposed the invention at the September 1992 meeting and to Swanepoel's lengthy manuals on beam-blade technology that did not mention the spoiler invention. ( Id. at 12-13) Bosch alleges that the jury overlooked Fehrsen's admission that Anglo American Industrial Corporation ("AMIC") lacked expertise with rubber beam blade technology in September of 1992, as well as evidence showing that Fehrsen was skeptical about the `974 patent working, his preference being instead the second inclined beam solution contained in his notes. ( Id. at 14) Furthermore, Bosch contends that neither Swanepoel nor Fehrsen claimed ownership of the spoiler invention when Merkel presented it on behalf of Bosch at the 1997 meeting in Leipzig. ( Id.) According to Bosch, Fehrsen warranted that Bosch had not used any of AMIC's beam blade technology before selling it to Trico Products Corporation ("Trico"), a Bosch competitor, who neither caused AMIC to sue Bosch for infringement nor made products incorporating the spoiler found in the `974 patent. ( Id. at 15-16) Moreover, Bosch points to inconsistencies in Fehrsen's testimony to further indicate that the weight given to his testimony by the jury was misplaced. ( Id. at 16-18)

Pylon responds that a new trial should not be granted because the jury's verdict on the derivation of claims 1 and 8 of the `974 patent was not against the clear weight of the evidence. (D.I. 330 at 13) Pylon notes that Bosch never produced the flip chart that allegedly contained Merkel's drawing of the `974 patent and that Merkel expressed uncertainty regarding whether the flip chart ever existed. ( Id.) Furthermore, Pylon contends that Bosch's failure to bring a beam blade to market prior to its joint venture with AMIC undercuts its suggestion that its superior understanding of beam blade technology enabled it to propose a spoiler. ( Id. at 14) Pylon also maintains that Fehrsen's admission that he preferred the inclined beam design does not disprove that he conceived of both designs. ( Id. at 14-15) According to Pylon, Fehrsen and Swanepoel adequately explained their failure to assert ownership over the design of the `974 patent at the 1997 meeting because they believed Bosch would not commercialize the product without a license, which they refused to grant. ( Id. at 15) Moreover, Pylon contends that the minor inconsistencies in the testimony of Fehrsen and Swanepoel is insufficient to warrant a new trial. ( Id. at 16)

To the extent Bosch contends that the jury's verdict is against the weight of the evidence, the court acknowledges that it need not construe the evidence in the light most favorable to Pylon in the context of determining whether a new trial is warranted. However, even without the benefit of this less stringent standard, the court concludes that the jury's derivation verdict regarding claim 1 of the `974 patent is supported by sufficient evidence, and the court is not persuaded that the jury's verdict shocks the conscience or results in a miscarriage of justice. The court acknowledges that Bosch presented evidence in the form of witness testimony, manuals and circumstantial factors in support of its argument. However, Pylon also presented witness testimony, notes from the September 1992 meeting and circumstantial factors in support of its derivation claim regarding claim 1 of the `974 patent, and the court shall not overturn the jury's factual findings where a clear evidentiary basis for those findings exists. Accordingly, the court concludes that a new trial is not warranted with respect to the derivation of claim 1 of the `974 patent.

Pursuant to Fed.R.Civ.P. 50(c)(1), the court conditionally grants a new trial on the derivation of claim 8 of the `974 patent because the jury's verdict was against the clear weight of the evidence. As previously explained in the court's ruling on Bosch's motion for JMOL regarding the derivation of claim 8 of the `974 patent, no evidence was presented at trial from which a jury could reasonably conclude that the claim 8 limitation regarding the length of the leading edge face extending across the wiper blade was derived from Fehrsen. As a result, the jury's verdict goes against the clear weight of the evidence presented at trial, and if this court's order granting Bosch's motion for JMOL is reversed on appeal, a new trial is warranted on the derivation of claim 8 of the `974 patent. Accordingly, Bosch's motion for a new trial on the derivation of claim 8 of the `974 patent is conditionally granted.

3. Infringement of claim 7 of the `434 patent

At the conclusion of its argument for JMOL regarding the infringement of claim 7 of the `434 patent, Bosch briefly requests a new trial without referencing any evidence specific to that request. (D.I. 310 at 33) To the extent Bosch contends that the jury's verdict is against the weight of the evidence, the court acknowledges that it need not construe the evidence in the light most favorable to Pylon in the context of determining whether a new trial is warranted. However, even without the benefit of this less stringent standard, the court concludes that the jury's non-infringement verdict regarding claim 7 of the `434 patent is supported by sufficient evidence, and the court is not persuaded that the jury's verdict results in a miscarriage of justice.

4. Pylon's closing argument and expert testimony

Bosch alleges that Pylon presented expert testimony which was not disclosed in Buechele's expert report, and Pylon's counsel made an improper closing argument that unfairly influenced the jury verdict, thus warranting a new trial. (D.I. 310 at 33) Specifically, Bosch contends that Buechele's testimony describing the relationship of the `214 patent to claim 8 of the `974 patent fell outside the scope of Buechele's expert report. ( Id. at 34) Bosch maintains that Buechele's testimony describing the placement of the end caps in the `434 patent as a mere design choice also exceeds the scope of his expert report. ( Id. at 35) Furthermore, Bosch contends that Buechele's claim that he himself designed the beam blade with the spoiler as shown in the `974 patent may have contributed to the jury's finding that claims 1 and 8 of the `974 patent were obvious. ( Id. at 35-36) According to Bosch, Pylon's closing argument was also improper because Pylon's counsel repeatedly referred to the absence of Wolfgang Leutsch and Thomas Kotlarski, two named inventors of the `974 patent, in violation of the stipulated pretrial order stating that "a party's failure to call a witness identified on the witness list shall not be commented on during trial." ( Id. at 37) Bosch contends that Pylon also disregarded the court's order to refrain from referring to the infringement of the `974 patent, and Pylon misstated the law of derivation by telling the jury that "if there is derivation on claim 1, claim 8 likewise goes because all the elements of claim 1 are in claim 8." ( Id. at 37-38) Bosch maintains that the court's curative instructions to the jury were insufficient to cure the harm caused by Pylon's closing argument. ( Id. at 37)

In response, Pylon contends that all of the expert testimony Bosch cites was contained in the expert reports and was known to Bosch through discovery. (D.I. 330 at 37) Citing Genzyme Corp. v. Atrium Medical Corp., 315 F. Supp. 2d 552, 584 (D. Del. 2004), Pylon also maintains that its closing arguments do not warrant a new trial because they did not rise to the level of affecting a "substantial right in the context of the entire trial record." ( Id. at 41) Pylon claims that the court's curative instruction remedied Pylon's statements regarding the absence of certain witnesses from trial. ( Id. at 42) Furthermore, Pylon notes that Bosch did not object to Pylon's reference to the non-infringement of claims 1 and 8 of the `974 patent at trial and, regardless, the statements regarding non-infringement were inconsequential because the jury did not rule on infringement of those claims. ( Id.) Pylon contends that its reference to the derivation of claim 1 as it relates to claim 8 was proper because the only additional limitation in claim 8 was well-known in the prior art and Bosch failed to object at trial. ( Id. at 43)

To the extent Bosch contends that the jury's verdict was unfairly influenced by Pylon's counsel's improper conduct, the court acknowledges that it need not construe the evidence in the light most favorable to Pylon in the context of determining whether a new trial is warranted. However, even without the benefit of this less stringent standard, the court is not persuaded that the jury's verdict was unfairly influenced by Pylon's actions. The court acknowledges that Bosch has identified certain conduct by Pylon's trial counsel which may reasonably be questioned. In particular, Pylon's counsel mentioned the "missing witnesses" and the infringement of the `974 patent in closing arguments, contrary to the court's instructions. However, the court finds that it is not reasonably probable that Buechele's testimony and Pylon's closing argument had a significant influence on the jury's deliberations, and the court's curative instruction was sufficient to remedy any prejudice caused by the statements. Accordingly, the court concludes that a new trial is not warranted due to Pylon's counsel's misconduct.

5. Cumulative references on claim 13 of the `905 patent

Pylon argues that the court should grant a new trial on the validity of claim 13 of the `905 patent because the jury was unfairly prejudiced by Bosch's argument that International Publication WO 00/34090 ("the `090 publication") was substantively considered by the patent examiner and the prior art relied upon by Pylon was cumulative to the `090 publication. (D.I. 321 at 12) Bosch responds that the USPTO did, in fact, consider the `090 publication during the prosecution of the `905 patent because the `090 publication published in between the foreign filing date and the U.S filing date of the `905 patent, and USPTO regulations require an examiner to consider intervening references without regard to the claimed priority date and make any appropriate rejections to pending claims. ( Id. at 20-22) According to Bosch, the examiner in the instant case considered the `090 publication and allowed the claims of the `905 patent over the `090 publication. ( Id. at 22-23) Even if the court were to determine that the `090 publication was neither relevant to the `905 patent nor considered by the examiner, Bosch contends that it properly cross-examined Pylon's expert regarding whether the prior art presented by Pylon at trial was cumulative to the references considered by the examiner. ( Id. at 24) Moreover, Bosch contends that Pylon could not have been so prejudiced as to warrant a new trial when Pylon neither addressed the `090 publication during its re-direct nor sought a curative instruction, and Bosch refrained from raising its cumulative references argument during closings, consistent with Pylon's request. ( Id. at 26-27)

Pylon replies that the examiner did not allow the claims of the `905 patent over the `090 publication because the foreign priority claim of the `905 patent was perfected and the USPTO regulations do not require an examiner to issue a rejection on references filed between the foreign priority date and the U.S. filing date. (D.I. 344 at 18) According to Pylon, Bosch's speculation that the examiner considered the `090 publication during the examination of claim 13 of the `905 patent was its sole justification for cross-examining Pylon's expert regarding whether the references presented by Pylon were cumulative to the `090 publication. ( Id. at 21) Furthermore, Pylon justifies its failure to request a curative instruction by noting that it feared further discussion of the `090 publication would only continue to prejudice the jury. ( Id. at 22)

To the extent Pylon contends that the jury's verdict was unfairly influenced by Bosch's argument regarding the `090 publication, the court acknowledges that it need not construe the evidence in the light most favorable to Bosch in the context of determining whether a new trial is warranted. However, even without the benefit of this less stringent standard, the court cannot find it reasonably probable that Buechele's testimony on cross-examination regarding the `090 publication had a significant influence on the jury's deliberations, particularly because Bosch did not refer to the `090 publication again in its closing arguments and Pylon did not bother to re-direct its expert or request a curative instruction regarding Bosch's cross-examination of Pylon's expert. Accordingly, the court concludes that a new trial is not warranted as a result of Bosch's argument that the `090 publication was substantively considered by the patent examiner and the prior art relied upon by Pylon was cumulative to the `090 publication.

C. Motion to Alter or Amend the Judgment

The purpose of a motion to alter or amend the judgment is to "correct manifest errors of law or fact or to present newly discovered evidence." Max's Seafood Café By Lou-Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). Therefore, a court should alter or amend its judgment only if the movant demonstrates at least one of the following: (1) a change in the controlling law; (2) availability of new evidence not available when summary judgment was granted; or (3) a need to correct a clear error of law or fact or to prevent manifest injustice. See id.

Citing to the evidence presented in support of its renewed motion for JMOL on the validity of claim 13 of the `434 patent, Pylon contends that no evidence supports the jury's finding that end caps made of plastic were not disclosed in the `507 patent or otherwise known in the prior art. (D.I. 319 at 9-10) According to Pylon, it would be a manifest injustice to uphold the validity of claim 13 as non-obvious in view of the `507 patent. ( Id.) Bosch responds that Pylon's motion to alter or amend the judgment should not be granted because it is based on the same argument Pylon presented in support of its motion for JMOL under Fed.R.Civ.P. 50(b). (D.I. 334 at 16) Unlike motions raised under Rule 50(b), Bosch contends that motions made under Rule 59(e), to alter or amend a judgment to prevent manifest injustice, are reserved for "exigent circumstances such as a case of manifest and extreme abuse of the jury's function." ( Id. at 16-17) Bosch notes that Rule 59(e) is "an improper device to set aside a jury verdict based upon evidentiary insufficiency." Hegger v. Green, 646 F.2d 22, 28 (2d Cir. 1981).

Pylon's arguments concerning the invalidity of claim 13 of the `434 patent have already been considered by the court. Pylon has not demonstrated that alteration or amendment of the judgment is warranted based on a need to correct a clear error of law or fact or to prevent manifest injustice.

D. Motion for a Permanent Injunction

In eBay Inc. v. MercExchange, L.L.C. (hereinafter " eBay"), the Supreme Court overruled the Federal Circuit's prior "general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances." 547 U.S. 388, 126 S.ct. 1837, 164 L. Ed. 2d 641 (2006) (vacating and remanding MercExchange, L.L.C. v. eBay Inc., 401 F.3d 1323, 1339 (2005)). Under eBay, permanent injunctions in patent cases must be based on a case-by-case assessment of the traditional equitable factors governing injunctions. Id. at 392-93. That is, to be awarded a permanent injunction, a plaintiff must demonstrate that: (1) "it has suffered an irreparable injury;" (2) "remedies available at law, such as monetary damages, are inadequate to compensate for that injury;" (3) "considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted;" and (4) "the public interest would not be disserved by a permanent injunction." Id. "[T]he decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards." Id. at 393.

Bosch contends that it suffered irreparable harm in the form of a loss of market share, loss of customers, loss of business opportunities, loss of good will and brand loyalty, and price erosion due to Pylon's infringement. (D.I. 353 at 11-12) According to Bosch, monetary damages alone are insufficient compensation for its statutory right to exclude its competitor from using the patented technology, and it is impossible to calculate what Bosch's market share would have been but for Pylon's infringement. ( Id. at 14-15) Furthermore, Bosch contends that Pylon's unstable financial condition makes it unlikely Bosch would be able to recover the amounts to which it is entitled. ( Id. at 15) In weighing the balance of hardships the parties would suffer, Bosch contends that, without a permanent injunction to protect its right to exclude a direct competitor, Bosch

may need to lay off employees and will not be able to recoup its research and development costs. ( Id. at 15-16) In contrast, Bosch observes that Pylon wrongfully profited from the sale of infringing products for the past several years. ( Id. at 16) Moreover, Bosch maintains that the denial of a permanent injunction would harm the public interest by exposing the public to Pylon's inferior product, reducing the value of patents and disincentivizing scientific progress. ( Id. at 16-17)

Pylon first responds that Bosch's motion for a permanent injunction is premature because discovery on damages has yet to be taken in this bifurcated trial. (D.I. 331 at 9) Turning to the four factors of the permanent injunction analysis, Pylon contends that Bosch's undue delay in seeking the injunction indicates that Bosch did not suffer irreparable injury. ( Id. at 11-12) Furthermore, Pylon maintains that Bosch cannot demonstrate the inadequacy of money damages because Bosch operates in a different segment of the market and has offered to exchange its patent rights for licensing agreements and monetary compensation. ( Id. at 13-16) According to Pylon, Bosch's damages theories regarding Pylon's potential inability to pay a monetary judgment are highly speculative and do not warrant the entry of a permanent injunction. ( Id. at 16-17) Pylon contends that the balance of equities also weighs in its favor because, while Bosch is an international conglomerate with a diverse product base in multiple industries, Pylon is a small domestic corporation that focuses on the manufacture and sale of wiper blades and its business would be profoundly affected by a permanent injunction. ( Id. at 18) Furthermore, Pylon argues that its continuing right to compete outweighs the public interest in protecting valid patent rights because the jury's verdict will likely not survive post-trial or appellate review. ( Id. at 19-20) If the court enters an injunction despite Pylon's contentions, Pylon requests that the court stay enforcement of the injunction pending appeal. ( Id. at 20)

Although the quantum of evidence required under eBay is relatively unclear, the court concludes that Bosch has not met its burden for a permanent injunction. The eBay Court specifically cautioned against the application of categorical rules, classifications, and assumptions in permanent injunction analyses. Id. Nevertheless, courts, presumably struggling to balance the absence of a presumption of irreparable harm with a patentee's right to exclude, have frequently focused upon the nature of the competition between plaintiff and defendant in the relevant market in the context of evaluating irreparable harm and the adequacy of money damages. Courts awarding permanent injunctions typically do so under circumstances in which the plaintiff practices its invention and is a direct market competitor. Plaintiffs also frequently succeed when their patented technology is at the core of its business, and/or where the

See, e.g., Muniauction, Inc. v. Thomson Corp., 502 F. Supp. 2d 477, 482 (W.D. Pa. 2007) ("Plaintiff and defendants are direct competitors in a two-supplier market. If plaintiff cannot prevent its only competitor's continued infringement of its patent, the patent is of little value"); Johns Hopkins Univ. v. Datascope Corp., 513 F. Supp. 2d 578, 586 (D. Md. 2007) (granting permanent injunction where infringing product was plaintiffs' "only competition" and "thus, its sale reduce[d] the [p]laintiffs' market share"); Transocean Offshore Deepwater Drilling, Inc. v. GlobalSantaFe Corp., No. Civ. A. 03-2910, 2006 WL 3813778, at *4 (S.D. Tex. Dec. 27, 2006) (granting permanent injunction requiring structural modifications to infringing deepwater drilling rigs where "the customer base for deep water drill rigs is small, and [defendant] has not only used [its] rigs equipped with the infringing structure to compete for the same customers and contracts as [plaintiff], but also to win contracts over competing bids from [plaintiff]").

market for the patented technology is volatile or still developing.

See Martek Biosciences Corp. v. Nutrinova Inc., 520 F. Supp. 2d 537, 558-59 (D. Del. 2007) (granting permanent injunction where plaintiff was a direct competitor "likely to lose market share that it may not be able to recapture," as plaintiff's patented technology was its primary revenue source, and defendant was plaintiff's only competitor and was "targeting [plaintiff's] customers in that industry"); TiVo, Inc. v. EchoStar, 446 F. Supp. 2d 664 (E.D. Tex. 2006) (granting permanent injunction where: (1) parties were direct competitors; (2) "plaintiff [was] losing market share at a critical time in the market's development"; (3) the parties agreed that customers in the relevant market tend to remain customers of the company they first purchased from; and (4) as a "relatively new company with only one primary product," plaintiff's "primary focus is on growing a customer base specifically around the product" competing with the infringing product).

The court notes at this juncture that Bosch has not provided a clear, summary-level overview of the relevant market for the wiper blade technology at issue. Furthermore, on the record before the court, it does not appear that Bosch and Pylon are the only market participants, and Bosch does not contest Pylon's identification of Federal Mogul, Trico and Shell as additional beam blade competitors. (D.I. 331 at 15) Even assuming that Bosch had clearly defined a relevant market in which Bosch and Pylon are the major market players, the parties failed to provide the court with a breakdown illuminating their relative market percentages. This is not a clear case of a two-supplier market wherein a sale to Pylon necessarily represents the loss of a sale to Bosch. Cf. TruePosition, Inc. v. Andrew Corp., 611 F. Supp. 2d 400 (D. Del. 2009) (holding that infringement by a direct competitor in a two-supplier market mitigates in favor of enhanced damages). In addition, Bosch manufactures a wide variety of automotive and home products, and wiper blades alone are not at the core of its business. In light of Bosch's failure to define a relevant market, the existence of additional competitors and the non-core nature of Bosch's wiper blade business in relation to its business as a whole, the court concludes that Bosch has failed to show that it would suffer irreparable harm absent a permanent injunction.

IV. CONCLUSION

For the foregoing reasons, the court: (1) denies Bosch's renewed motion for JMOL or for a new trial with respect to the derivation of claim 1 of the `974 patent and the infringement of claim 7 of the `434 patent and grants the motion in all other respects (D.I. 309); (2) denies Pylon's renewed motion for JMOL with respect to non-infringement of claims 1, 5 and 13 of the `434 patent (D.I. 316); (3) denies Pylon's renewed motion for JMOL or to alter or amend the judgment with respect to the invalidity of claim 13 of the `434 patent (D.I. 318); (4) denies Pylon's renewed motion for JMOL or for a new trial with respect to the invalidity of the `905 patent (D.I. 320); (5) denies Bosch's motion for leave to file a sur-reply (D.I. 351) as moot; and (6) denies Bosch's motion for a permanent injunction (D.I. 311). An appropriate order shall issue.

ORDER

At Wilmington this 3rd day of November 2010, consistent with the memorandum opinion issued this same date;

IT IS ORDERED that:

1. Bosch's renewed motion for JMOL or for a new trial (D.I. 309) is granted in part, to wit:

a. Bosch's motion for JMOL is granted and its motion for new trial is conditionally granted with respect to the obviousness of claims 1 and 8 of the '974 patent.

b. Bosch's motion for JMOL is granted and its motion for new trial is conditionally granted with respect to the obviousness of claims 1 and 5 of the '434 patent.

c. Bosch's motion for JMOL is granted and its motion for a new trial is conditionally granted with respect to the derivation of claim 8 of the '974 patent.

d. Bosch's motion for JMOL or for a new trial is denied with respect to the derivation of claim 1 of the '974 patent.

e. Bosch's motion for JMOL or for a new trial is denied with respect to the infringement of claim 7 of the '434 patent.

2. Pylon's renewed motion for JMOL or to amend the judgment with respect to non-infringement of claim 13 of the '434 patent (D.I. 316) is denied,

3. Pylon's renewed motion for JMOL or to amend the judgment with respect to invalidity of claim 13 of the '434 patent (D.I. 318) is denied.

4. Pylon's renewed motion for JMOL or for a new trial with respect to the invalidity of the '905 patent (D.I. 320) is denied.

5. Bosch's motion for leave to file a sur-reply (D.I. 351) is denied as moot.

6. Bosch's motion for a permanent in-junction (D.I. 311) is denied.