Minemyer v. B-Roc Reps., Inc., No. 07 C 1763, Slip Op. (N.D. Ill. Oct. 27, 2009) (Cole, Mag. J.)*
Judge Cole granted summary judgment of invalidity based upon the §102(b) on-sale bar and denied summary judgment as to invalidity based upon §102(b) public use and obviousness.
Plaintiff argued that its pipe coupler patent was entitled to the priority date of its provisional application because the provisional application disclosed in the drawings the tapered threads at issue, although they were not described in the specification. The Court held that figures showing tapered threads would be sufficient, but that the figures did not show tapered threads. Plaintiff alleged that enlargements of the figures showed a 1% taper. But the Court held that the original drawing did not “convey” the tapered threads with "reasonable clarity.” Even the enlargement showed “no true tapers.” Because the provisional application did not disclose the taper, the patent’s priority date was its filing date.
The Court held that plaintiff admitted he offered the patented couplers for sale more than one year before the filing date, also known as the critical date. Plaintiff also admitted both in interrogatory responses and at deposition that his invention had been reduced to practice at the time of the offer. Plaintiff claimed that the use was experimental, but the court held that the claim was not properly supported by evidence in plaintiff’s Local Rule 56.1 statement of material facts.
Public Use Bar
The Court denied summary judgment based upon the public use bar. The alleged prior art device was asserted against other claims in defendants’ invalidity contentions, but not against the claim at issue, claim 12. Furthermore, the evidence of the alleged prior art coupler was provided by a witness that was not disclosed in defendants’ Rule 26 disclosures or their interrogatory responses. He was first identified in a subpoena at the end of fact discovery.
Defendant’s obviousness arguments were based upon the same prior art as the public use bar prior art. So, summary judgment was not appropriate for similar reasons. Additionally, defendants arguments were cursory and did not even cite case law.
* Click here for more on this case in the Blog’s archives.
Minemyer v. B-Roc Reps., Inc., No 07 C 1763, Slip Op. (N.D. Ill. Nov. 9, 2009) (Cole, Mag. J.).
Judge Cole granted in part defendants’ motion to extend the trial date. The Court continued the trial, but not to the early 2010 date defendants requested. Instead, the Court continued the trial until early 2011. An early 2010 trial date would have prevented plaintiff from attending the patent trial because plaintiff begins serving a one-year federal prison sentence in December 2009. The Court held that holding a trial that plaintiff would be unable to attend in person would prejudice plaintiff. Instead, the Court delayed the trial until plaintiff will be able to attend. Plaintiff argued that he would be prejudiced by the one-year delay because his damage award would be delayed an additional year. The Court, however, held that any prejudice from a delayed award was too speculative to be considered because there was no way to know that plaintiff would be awarded any damages. Additionally, the Court noted that the delay would benefit plaintiff if he ultimately prevails because his award would include an additional year of damages.
Boler Co. v. ArvinMeritor, Inc., No. 03 C 489, Slip Op. (N.D. Ill. Jul. 2, 2008) (Cole, Mag. J.).
Judge Cole decided various discovery and protective order issues in this patent infringement dispute. Of particular note, the Court denied defendant’s motion to preclude inspection of items that were commercially available. The Court held that commercially available items were discoverable and that because the items were commercially available there were no protective order implications.
The Court also refused to consider certain oral motions, likely those that the parties could have filed before the hearing, because the Court’s standing order required that motions be briefed. Always make sure to read the Court’s standing order, as well as the Local Rules.