Saint-Gobain vs. Xinyi Trial to Begin Monday; Saint-Gobain Alleges Xinyi Infringed on Patents in Three-Year-Long Case
October 29, 2009

A trial in the case Saint-Gobain filed against Xinyi Glass in 2006 alleging patent infringement is scheduled to begin next Monday, November 2, at 8 a.m. In the case, Saint-Gobain Autover USA Inc., Saint-Gobain Sekurit Mexico S.A. and Saint-Gobain Sekurit USA Inc. allege that Xinyi Glass North America and Xinyi Automobile Glass Co. Ltd. infringed on two of its patents, one titled "Spacer for Windshield Bracket" (known in court documents as the '669 patent) and one titled "Method of Centering Windshield Glazings" (referred to as the '395 patent). The trial will be held in Akron, Ohio, in the U.S. District Court for the Northern District of Ohio.

In cases of both patents, the plaintiffs allege that Xinyi has "induced infringement and/or contributorily infringed at least one of claim [of each patent], with intent to do so, by making, offering for sale, selling, and/or importing certain glazings (at least windshield FW02072) for use in automobiles," according the complaint filed in the case.

The companies go on to allege that Xinyi "provides automotive glazings such as windshields to installers such as automobile manufacturers or windshield replacers who directly infringe the '669 and '395 by installing the glazings such as windshields in automobiles."

The plaintiffs are seeking an injunction against continued infringement; damages for past infringement; increased and treble damages for willful infringement; attorney fees; costs; and "such other relief as may be appropriate under the circumstances."

Xinyi denies the claims and says the claims of the patents "are invalid and unenforceable" for several reasons, such as that:
- "… such claims are indefinite and ambiguous and, therefore, do not particularly point out and distinctly claim, within the meaning of the patent laws, the subject matter which the patentee regards as the invention;"
- "… any inventions disclosed and claimed therein, and all the material in substantial part, were known or used by others in this country and/or patented or described in a printed publication in this or a foreign country before the invention thereof by applicant for the patent;"
- "… any inventions disclosed and claimed therein were patented or described in a printed publication in this or a foreign country and more than one year prior to the date of application for patent in the United States;"
- "… any invention disclosed and claimed therein were public use or on sale in this country more than one year prior to the date of application for patent in the United States;"
- " … the differences between the subject matter described and claimed in the patent and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains;" and
- " …the differences between the subject matter described and claimed in the patent and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill to which the subject matter pertains."

Xinyi is requesting that the claims be dismissed without prejudice and that their attorneys' fees and costs be paid by Saint-Gobain and that both patents be declared to be un-infringed, invalid and unenforceable."

Saint-Gobain's expert witness list, filed in the case, includes industry expert Bob Beranek, "who will testify concerting the aftermarket replacement glass industry and the infringement of Saint-Gobain's patents by Xinyi's windshields." Dennis Warlick of Saint-Gobain Autover also will testify about "Xinyi's entrance into the market and the effect of Xinyi's entry into the market on Saint-Gobain's business."

The plaintiff companies are represented by Thompson Hine LLP in Cleveland. The defendants are represented by Katz, Teller, Brant & Hild and Sand & Sebolt.

Saint-Gobain Autover representative Eric Christian Persson declined to comment, since the case is still in litigation. Representatives for the defendants had not responded to request for comment at press time.

Judge Sarah Lioi is presiding over the case.

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