R-Boc Reps., Inc. v. Minemyer, No. 11 C 8433, Slip Op. (N.D. Ill. Sep. 18, 2014) (Cole, Mag. J.).
Judge Cole denied plaintiff R-Boc’s motion for reconsideration regarding the Court’s prior denial of its motion for leave to amend its Final Invalidity Contentions and supplement its expert reports to add an indefiniteness argument in this patent case. In the underlying motion, R-Boc argued that the Supreme Court’s recent Nautilus decision which relaxed the indefiniteness standard — created a new indefiniteness argument regarding the term “approximately perpendicular.” After an explanation of the meaning of Shakespeare’s phrase “hoist with his own petard.” The Court explained that R-Boc was hoist by its own petard in the form of its strategy decisions to propose a construction of the term which defendant agreed to and the Court adopted. The Court then turned to French in italics to emphasize R-Boc’s repeated strategy decisions since 2008:
- “C’est une petard”: R-Boc proposed its construction.
- “C’est deux petards”: After defendant accepted R-Boc’s construction, R-Boc chose to forego a claim construction hearing.
- “Le troisieme petard”: R-Boc waived its indefiniteness arguments.
- “Le quatrieme petard”: R-Boc filed a summary judgment motion that undercut its instant motion to amend.
Based upon these strategic decisions, R-Boc could not reclaim its indefiniteness arguments despite the changed indefiniteness standard.
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.