By Eric Schweibenz and Tom Yebernetsky
On June 19, 2015, ALJ Thomas B. Pender issued the public version of Order No. 25 (dated June 11, 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, 2014, August 28, 2014, October 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 Order No. 25, Valeo filed a motion for partial summary determination of validity of the asserted patents.  Specifically, Valeo argued "that the record warrants summary determination of validity under 35 U.S.C. § 112, ¶ 1 (lack of enablement and written description), § 102 (anticipation), and § 103 (obviousness)."

With respect to Valeo's 35 U.S.C. § 112, ¶ 1 (written description) argument, ALJ Pender noted that Valeo's arguments are moot in view of Order No. 23, which precluded Trico from asserting invalidity based on lack of written description.  As to Valeo's 35 U.S.C. § 112, ¶ 1 (enablement) argument, ALJ Pender first noted that the issue was moot with respect to the '798 patent because of Trico's representation that they are no longer pursuing invalidity of the '798 based on lack of enablement.  Regarding the '044 patent, ALJ Pender held that, "[d]rawing all inferences in Trico's favor, I find that genuine issues of material fact remain and, consequently, summary determination of enablement under 35 U.S.C. § 112, ¶ 1, is not warranted with respect to the '044 patent."

As to Valeo's § 102 (anticipation) and § 103 (obviousness) arguments, ALJ Pender held that genuine issues of material fact remain regarding the teachings of the Weber reference that make a determination of theses invalidity defenses inappropriate at the summary determination stage.  For example, ALJ Pender noted that the "the parties disagree as to what constitutes the 'front portion' in Weber's device."

Accordingly, ALJ Pender denied Valeo's motion for summary determination of validity.