ImageCube LLC v. MTS Sys. Corp., No. 04 C 7587, Slip Op. (N.D. Ill. Apr. 4, 2012) (Dow, J.).
Judge Dow granted plaintiff ImageCube’s Fed. R. Civ. P. 41(a)(2) motion to dismiss all claims without prejudice in this nearly eight year-old patent litigation involving alloyed and non-alloyed powders. The Court previously granted summary judgment of non-infringement regarding the alloyed powders and certified its decision for immediate appeal. After the Federal Circuit affirmed the decision, the parties attempted to settle the case and came close, but were not quite able to resolve their disputes. As a result of that, ImageCube sought dismissal of all claims without prejudice so that it could reassert its non-alloyed powder claims at a later date, presumably if defendant MTS’s sales became more significant. MTS opposed dismissal without prejudice, instead asking that all claims be dismissed with prejudice except for MTS’s claim for attorney’s fees pursuant to 35 U.S.C. Section 285.
The Court noted that it was in a “less advantageous position” than the parties to predict the future of their claims. As a result, the Court dismissed all of the claims without prejudice. That way the parties would be free to assert their claims should conditions warrant it, but the Court also noted that issue and claim preclusion would likely bar relitigation of previously decided claims.