IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MICHIGAN

FEDERAL-MOGUL S.A., a Belgium corporation, Plaintiff, v. TRICO PRODUCTS CORPORATION, a New York corporation, Defendant. ________________________________________/ Case_No.: 13-14332

COMPLAINT FOR DECLARATORY JUDGMENT AND JURY DEMAND Plaintiff, Federal-Mogul S.A. (“Federal-Mogul”), through its attorneys, Dickinson Wright PLLC, states as follows for its cause of action against Defendant Trico Products Corporation for declaratory judgment: NATURE OF ACTION 1. This is an action arising under the Declaratory Judgment Act, 28

U.S.C. § 2201 et seq., and the patent laws of the United States, 35 U.S.C. § 1 et seq. Federal-Mogul requests a declaratory judgment that it has not infringed any valid and enforceable claim of U.S. Patent No. 6,836,925 (the “‘925 Patent”), entitled “Windscreen Wiper” (Exhibit A), and U.S. Patent No. 6,799,348 (the

“‘348 Patent”), entitled “Windscreen Wiper” (Exhibit B) (collectively “PatentsIn-Suit”) and that all of the claims of the ‘925 and ‘348 patents are invalid. THE PARTIES 2. Plaintiff Federal-Mogul S.A. is a corporation organized under the

laws of Belgium, having a principal place of business in Aubange, Belgium. 3. Defendant Trico Products Corporation is, on information and belief, a

New York Corporation with its principal place of business at 3255 West Hamlin Road, Rochester Hills, MI 48309. JURISDICTION AND VENUE 4. This Court has subject matter jurisdiction over this action pursuant to

28 U.S.C. §§ 1331 and 1338. 5. Trico asserts that Federal-Mogul’s ANCO Profile Wiper Blades,

ANCO Contour Wiper Blades and GMGR.01.146 (the “Accused Products”) infringe at least one valid claim of the Patents-In-Suit. 6. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1400.

COUNT I DECLARATORY JUDGMENT 7. herein. Plaintiffs incorporate paragraphs 1 through 6 as if fully set forth

8.

Trico Products Corporation (Trico) has threatened to file suit against

Federal-Mogul for alleged infringement of US Patents 6,836,925 (the ‘925 Patent) and US Patent 6,799,348 (the ‘348 Patent) in regard to various “flat blade” windshield wipers manufactured and/or sold in the United States by FederalMogul. Trico is the owner of record on the face of the asserted patents. The products at issue have been identified by Trico as the Anco Contour, Anco Profile and GMGR.01.146. 9. By way of background, Federal-Mogul and Trico are competitors in

the manufacture of wiper blades for automobiles, and their products can be found in various stores often very near to one another. In particular, both companies sell so-called “flat blades” windshield wipers in which the wiper strip is supported by a curved, spring elastic “backbone” or “carrier” made of spring steel that biases the wiper element to a curved shape so the wiper strip can stay in contact with and follow the curved shape of a windshield surface during operation. 10. Trico makes a style of flat blade in which the “backbone” is made of

one strip of spring steel. This is the subject matter of their ‘925 patent, and all of the claims recite “backbone” as a required element. A particular connector is slideably mounted on and creates a space above the backbone so that the backbone can flex into the space of the connector and slide relative to the connector during operation. This is the subject matter of the ‘348 patent.

11.

In regard to the ‘925 patent, none of the accused products of Federal-

Mogul have a single strip backbone. This single strip style of flat blade is unique to Trico, and neither Federal-Mogul nor any other major competitor makes such style of flat blade. All of the accused Federal-Mogul flat blades have two laterally spaced strips of spring steel as the back bone. As will be explained in detail below, Trico obtained the ‘925 patent only after expressly limiting the meaning of the claim term “backbone”, which is present in every claim, to a single strip. Trico expressly disavowed from the coverage of all of their claims any wiper blades that utilize two laterally spaced strips. As such, as a matter of law, Trico’s claims cannot by definition cover the two-strip style of wiper blades of the accused Federal-Mogul products. 12. In regard to the ‘348 patent, the particular spaced and sliding type

connector claimed in the patent is also unique to Trico, and none of the accused Federal-Mogul products have anything close to this type of connector. The

Federal-Mogul connector is firmly fixed to the two strips and there is no space above the connector, and so the two strips can neither slide relative to nor flex into any space (there is none) of the connector. And like the ‘925 patent, Trico was only able to get the ‘348 patent after expressly excluding the possibility of their claims from covering wiper blades having connectors which cannot slide and do not have the space to accommodate flexing of the backbone. Trico disavowed

coverage of the Federal-Mogul type connector (fixed and no space for flexing of the backbone within the connector). And so, as a matter of law, the claims of Trico’s ‘348 patent cannot cover the accused Federal-Mogul products. 13. It is noteworthy, by way of background, that Federal-Mogul

previously filed an ITC Complaint against Trico for infringement of FederalMogul US Patent 8, 347,449 (also involving flat blades covering both the single and double strip style) and that this Investigation before the ITC is ongoing. It is believed that Trico’s threats with regard to the ‘348 and ‘925 are purely retaliatory that Trico knows its patents do not and cannot possibly cover the FM products and that its assertions are therefore frivolous. 14. There are other defects with these two patents which further act to

preclude their claims from covering the accused Federal-Mogul products, including invalidity under Title 35 of the US Code. These further defects will be addressed fully below. I. 15. Background to the ‘925 Patent The ‘925 patent was granted January 4, 2005 based on an application

filed in the US in 2001. The invention purports to be one in which Trico came up with several different “formulas” for determining the ideal dimensional characteristics (length, width, thickness, etc) for a single strip backbone.

16.

The claims of the application as originally filed are contained in Claims 1-4 were independent claims, and, notably, each claim

Appendix A.

included the limitation (among others): “…the backbone having a substantially spatially consolidated cross-sectional profile at substantially all points along its length.” 17. In the first office action (OA1) dated September 3, 2003, the examiner

rejected all of the independent claims as anticipated by each of German Published Application DE1973443 (Merkel), US Patent 4,063,328 (Arman) and European Patent EP0528643. All claims were further rejected as being indefinite (the recited formulas did not make sense).

Merkel

Arman

18.

In response, Trico amended the formulas and argued that the recited

“backbone” in the Trico claims distinguished over Merkel and Arman because the recited backbone was limited to a single beam, and that the backbones in Merkel and Arman were not “spatially consolidated” as required by the claims, because they each consisted of two laterally spaced strips (or two speced rectangles in cross section). The two spaced strips of Merkel can be seen at 40 and 42 in the figure above, and the two spaced strips of Arman can be seen at 10 and 10 in the above figure. (See generally Exhibit C). 19. The examiner responded to Trico’s arguments by withdrawing the As such, it is crystal clear that Trico

rejections over Merkel and Arman.

necessarily disclaimed the examiner’s interpretation of a “spatially consolidated’ “backbone” as encompassing wiper blades having two laterally spaced strips. In direct contrast to the examiner’s interpretation in his office action being responded to, Trico clearly explained that a “spatially consolidated” backbone meant a single beam, and further explained that backbones having two laterally spaced strips were excluded from the meaning of “spatially consolidated” backbones within the scope of all of the claims. Trico went on to distinguish Swanepoel (a single beam backbone) by touting the extensive experimentation put into discovering the optimal dimensions of “single beam wiper blades according to the invention.”

20.

In presenting their arguments and successfully getting the examiner to

withdraw the rejections over Merkel and Arman, there is no doubt that one of ordinary skill in the art reading the claims in view of the file history would understand that “spatially consolidated backbone”, as used in all of the claims means a single beam, and that it by Trico’s own definition excludes beams made of two laterally spaced strips. A. 21. Non-infringement of the ‘925 Patent

Applying the above-claim construction of “spatially consolidated

backbone” to the accused Federal-Mogul products leaves no doubt that these devices do not and cannot by definition infringe, since they do not have single beam backbones (as required) and instead possess two laterally spaced strips (as forbidden by the scope of the claims).

B. 22.

Invalidity of the ‘925 Patent Under 35 USC 112

All of the claims the ‘925 are invalid under at least 35 USC 112, first They each contain a formula that is nonsensical.

or second paragraph.

Specifically, each calls for calculation of a particular dimension (to be expressed in mm) or ratio (which is by definition dimensionless), yet when one plugs the required numbers into the formulas one comes out with meaningless units.

Claim 1 of the patent, for example, requires the following formula to be executed to determine if a backbone of the wiper falls within the scope of the claim, and in particular to see if the backbone has a “maximum width, Wm to be expressed in mm (millimeters). Asking for a maximum width measurement to be determined in units of “mm” in itself makes sense, since width is a linear measurement and “mm” is appropriate. However, the rest of the formula makes no sense. To determine if a wiper blade having maximum width backbone falls within the scope of the claim, one is required to multiply the Young’s Modulus of the backbone (units in GPa, or also equivalent to N/m2) by the length of the backbone (in mm), which makes no sense because the resulting units are N/mm (or force/distance). calculation is never measured in N/m or N/mm units. A width

One is left with an

impossible task, since there is no way to derive a meaningful maximum width value, as is required by claim 1. As such, claim 1 is invalid under 35 USC, 112, first and or second paragraph since it makes no sense and one cannot determine whether or not a backbone of a wiper blade does or does not have a maximum width dimension that would fall within the claim. 23. Claims 7, 8, 14 and 15 (below) suffer from the same deficiencies and

are thus invalid for the same reasons. Claim 7 calls for determination of a ratio of width (mm) to length (mm) which by definition is unitless. Instead, the ratio ends up having units of N/mm3 (force per unit volume), which is meaningless. Claim 8

requires one to calculate a maximum width (in mm), but the formula yields units of mm-N/m2, which is meaningless as a width calculation. Claim 14 calls for a ratio of thickness over length (should be unitless), but the formula yields units of N/mm, which makes no sense as a width calculation. Claim 15 requires one to determine both maximum width (mm) and maximum thickness (mm) of a backbone to see if it falls within the coverage of the claims, and both formulas yield units of N/m or N/mm, which are meaningless as far as width and thickness calculations. In each case, the specification is of no help, as it is equally senseless and provides no guidance as to resolving the fatally defective formulas contained in all of the claims.

24.

As such, even if the accused Federal-Mogul products had a single

beam backbone, which they do not, it would be impossible to determine if they were covered by any of the claims.

C.

Invalidity under 35 USC 101 – Expression of Laws of Nature

25.

To the extent Trico might argue that the claims makes sense, it is clear

from the specification and file history that the formulations were generated not from any discovery or invention, but were empirically derived by conducting a series of tests. All that Trico did was make several backbones of different

combinations of length, width and thickness; test them to see which ones performed best, and then came up with some mathematical expression which simply captured what would be readily apparent to one of ordinary skill in the art. While Trico may get credit for its mathematical prowess (excepting that the formulas make no sense), being observers of empirically derived data does not amount to invention. Given enough time and resources, any one of ordinary skill would arrive at the same result if they tried. As such, all of the claims are further invalid under 35 USC, Section 101 as being merely expressions of the laws of nature. D. 26. Invalidity under 35 USC, Section 102(a) or (b)

Trico admits that the formulas expressed in the claims were known at

the time of the invention. Beginning at Column 1, line 9 to Column 2, line 25 is a section that Trico entitled “Description of the Related Art”. The contents are deemed to be Applicant’s Admitted Prior Art (AAPA). In that prior art section is

mention of the experimentation conducted by Trico on which the formulas are based. There is no relative time frame, so it is reasonable to conclude that these were prior events that preceded the invention, and they are admitted as such by being contained in the Related Art section. Whether they fall under 102(a) or (b) is a matter of timing, but either way it constitutes admitted prior art. As such, the formulas are based on Trico’s admitted prior art, and all claims are thus invalid under 35 USC, Section 102(a), and it follows that the formulas show up in the prior art section in the exact form as contained in the claims. It is noteworthy that Trico expressly added this heading at the advent of examination, presumably to make clear to the public that what followed was deemed prior art. 2. 27. Background to the ‘348 Patent The ‘348 patent was granted October 5, 2004 based on an application The invention is directed to a particular connector

filed in the US in 2001.

(coupler) for a flat blade that enables the backbone of the wiper blade to slide longitudinally and to flex into an open space of the connector provided above the connector. Figures 3, 8 and 6 are reproduced below for quick reference.

28.

The so-called “coupler” (or connector) 16 has a base 23 and claws

24.1 and 24.2 for mounting a beam 18 of a flat blade 10. The coupler 16 has at least one so-called “spacing formation”26.1, 26.2 (producing projecting ridge features 28) that are engagable with the upper surface of the beam at a contact point (i.e., with the ridge(s) 28) for spacing the contact point of the beam from the support structure. In other words, as seen from the assembled view above, the line contact of the upper surface of the beam 18 with the ridges of features 28 produces

a space above the beam and between the ridges into which the spanning portion of the beam can flex.

29.

The ‘348 patent contains a total of 13 claims, of which claims 1 and

10 are in independent form. Each of the claims recites the coupler as having a “spacing formation” engaged or engagable with the upper surface of the beam “at a contact point” for spacing the contact point of the beam a predetermined distance from the support structure of the coupler.

A.

File Wrapper Estoppel

30.

In the office action dated September 2, 2003, the examiner rejected all

claims as anticipated by any of 4 individual references, namely: WO 98/15438 (De Paloi); WO 98/19899 (Merkel); US 3,785,002 (Quinlan) and US 5,319,826 (Mower).

Paloi

Merkel

Quinlan

Mower

31.

As for Paloi and Merkel, the examiner construed the meaning or

“predetermined distance” of spacing to be “no spacing.” The examiner found Quinlan to contain rivets 28 which supported the top of the beam away from coupler 130. The examiner further construed Mower to meet the limitations of the

claims because the top of the blade was spaced from the frame of a conventional blade via the claws. 32. In response, Trico took issue with the examiner’s claim construction

of “spaced a predetermined distance” as encompassing “zero”, or “no space” in regard to DePaloi and Merkel. Trico said that the support structure disclosed in DePaloi and Merkel cannot be deemed “a spacing formation” because it creates no space between the upper surface of the beam and the support structure. And without the spacing formation, Trico argued that DePaloi and Merkel “does not allow the beam to advantageously bend as it moves across the windscreen.” Trico argued that this is in direct contrast to the coupler of claim 1. 33. Trico argued, unsuccessfully, that the rivets of Quinlan do not create a

space. Trico further argued that Mower is a conventional blade, not a beam blade as required by the claims, and that they could not overemphasize the importance of this distinguishing feature in this case. (See generally Exhibit D). 34. The examiner then withdrew his rejections of the claims based on

DePaloi, Merkel and Mower, but maintained the rejection over Quinlan in a subsequent Office Action dated February 2, 2004. 35. In response, Trico amended the independent claims to include the

requirement for “a plurality of claws”, and argued under a section entitled “The Present Invention”, that “in contrast to Quinlan”, the claws allow for “increased

longitudinal movement of the wiper 14 relative to the coupler 16 for improved force distribution of the wiper while moving across the windshield.” (See generally Exhibit E). 36. In view of the claim amendment and arguments made by Trico in

order to secure allowance of the claims, there is no doubt that the claim term “spacing formation” as it appears in each of the independent claims 1 and 10 must cause the upper surface of the beam to be spaced from the underside of the coupler so as to create a space or pocket into which the beam can flex during use. Moreover, any coupler that sits flat against the upper surface of the beam and doesn’t have such a space pocket is expressly excluded from the scope of the meaning of “spacing formation”.

37.

In addition, the prosecution history makes clear that the “plurality of

claws” must be ones that “allow for increased longitudinal movement of the wiper blade relative to the coupler”, and that exclude from the scope and meaning of “claws” would be ones that restrain the wiper from such relative longitudinal movement.

38.

Like DePosoi and Merkel, the coupler (connector) of the accused

Federal-Mogul products is mounted flush against the top surface of the flexors, and

thus there is “no space” as is required by claims 1 and 10. Further, the coupler is welded (immovably fixed) to the surface of the flexors, and so there is no mobility between the flexors and the coupler as further required by claims 1 and 10. Consequently, as a matter of law, Trico is precluded by prosecution estoppel from expanding the scope of their claims to cover the structure of the accused Federal Mogul products, as a blade having such a coupler with expressly disavowed during prosecution in order to gain allowance of the claims.

RELIEF REQUESTED a) Declare that Federal-Mogul has not infringed any valid and enforceable claim of ‘925 and ‘348 patents; b) Declare that the claims of the ‘925 and ‘348 patents are invalid; c) Declare that this case is exceptional under 35 U.S.C. § 285 and award Federal-Mogul its attorney’s fees and expenses incurred in this action; d) Award Federal-Mogul its costs pursuant to 28 U.S.C. § 1920; and e) Grant Federal-Mogul such relief as the Court deems proper.

JURY DEMAND Plaintiff Federal-Mogul S.A. demands a trial by jury as to all issues so triable.

Respectfully submitted,

s/ DICKINSON WRIGHT PLLC Michelle L. Alamo (P60684) L. Pahl Zihn DICKINSON WRIGHT PLLC 500 Woodward Ave, Suite 4000 Detroit, Michigan 48226 Tel: 313.223.3500 Fax: 313.223.3598 malamo@dickinsonwright.com H. Jonathan Redway (Va. Bar No. 42189) DICKINSON WRIGHT PLLC 1875 Eye St., N.W., Suite 1200 Washington, D.C. 20006 Tel: 202.659.6946 Fax: 202.659.1559 jredway@dickinsonwright.com

Dated: October 11, 2013