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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Compulsory Counterclaims

Declaratory Judgment Claims re: Redesigned Product May be Brought in A Separate Suit

Posted in Federal Rules

R-Boc Reps., Inc. v. Minemyer, No. 11 C 8433, Slip Op. (N.D. Ill. July 16, 2012) (Cole, Mag. J.).

Judge Cole denied declaratory judgment defendant Minemyer’s Fed. R. Civ. P. 13(a) motion to dismiss declaratory judgment plaintiff R-Boc’s complaint seeking a declaratory judgment that its redesigned coupler did not infringe Minemyer’s patent.  Minemyer argued that R-Boc’s complaint was improper claim-splitting and that the claim should have been filed in Minemyer’s 2007 suit accusing R-Boc’s original coupler designs.  In February 2012, a jury held that R-Boc’s original coupler did not infringe. 

The Court noted the length of that case - five years and 527 docket entries - quoting the Federal Circuit:

“Patent litigations are among the longest, most time-consuming types of civil actions.  As of 2009, 384 patent cases had been pending in the district courts for three years or more.  Moreover, the costs of patent litigation are enormous with an average patent case costing upwards of $3 million for each side.”  Ohio Willow Wood Co. v. Thermo-Ply, Inc., 629 F.3d 1374, 1376-77 (Fed.Cir. 2011)(citations omitted).

R-Boc’s claims were not claim-splitting.  While a patentholder must assert all claims from a single patent against a single product in one action, claims regarding a new product, need not be filed in the same suit involving an older version of that product.  R-Boc’s declaratory judgment claims regarding the new coupler would only have been compulsory in the earlier suit had that suit accused the new coupler of infringement.