Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, 2007 WL 1232089 (N.D. Ill. Apr. 25, 2007) (Manning, J.).
Judge Manning granted defendant’s, Robert Bosch Tool Corp. ("Bosch") Fed. R. Civ. P. 12(c) motion for judgment on the pleadings, holding that plaintiff’s, Black & Decker ("B&D"), patent infringement claims against Bosch’s new product regarding B&D’s previously asserted patents were barred by res judicata. In the prior case before Judge St. Eve (numerous prior opinions are discussed in the Blog’s archives), B&D asserted that two models of Bosch’s Power Box radio (the "Old Power Box") infringed B&D’s two patents (the "Old Patents"). Shortly before trial before Judge St. Eve, B&D brought the instant suit against Bosch asserting that Bosch’s new model of its Power Box radio (the "New Power Box") infringed a third patent (the "New Patent"). At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents. Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial. After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.
Shortly after Judge St. Eve excluded the New Power Box from her trial, B&D amended the complaint in the instant case to allege infringement of the Old Patents. Bosch then argued that res judicata barred B&D’s claims based upon the Old Patents. Judge Manning held that res judicata applied because the trial before Judge St. Eve resulted in a final verdict, the parties to that case were identical to those in the instant case and the claims had "identity" with each other. Judge Manning noted that B&D admitted that the causes of action had "identity" when it sought to reassign the instant case to Judge St. Eve and stated that: both cases involve the same patents; both cases involve the same product, the Power Box; both cases involve the same facts; and both cases involve the same issues of law.
B&D argued res judicata should not apply because Bosch had sought to have the New Power Box claims litigated in a separate case. But Judge Manning denied the argument, noting that Bosch had argued that B&D should not be able to bring its claims late in the suit before Judge St. Eve and also that res judicata should preclude any future B&D suit based upon the New Power Box. Additionally, Judge Manning held that B&D could have litigated the New Power Box in Judge St. Eve’s case because B&D was aware of the product throughout the suit and that at least some sample products had been made by or for Bosch.