Feit Elec. Co. v. Beacon Point Capital, LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Feb. 9, 2015) (Coleman, J.).
Judge Coleman granted in part declaratory judgment defendant Beacon Point Capital’s (“Beacon”) Fed. R. Civ. P. 12(b)(1) & (6) motion to dismiss plaintiff Feit’s declaratory judgment counts seeking a judgment that certain of Beacon’s patents regarding compact fluorescent lamps (“CFL”) are unenforceable based upon inequitable conduct and/or prosecution history estoppel and that Beacon is collaterally estopped from asserting Beacon’s ‘140 and ‘464 patent against Feit based upon an earlier case by prior patent owner Nilssen – there is much more on the Nilssen cases in the Blog’s archives. The Court held as follows:
- The Court limited Feit’s declaratory judgment claims to those that Feit’s complaint showed had been asserted by Beacon in various correspondence.
- Collateral estoppel is not limited to just those claims at issue in a prior case, but rather to those claims and any claim without an element that materially alters the invalidity analysis. But Feit did not state that the challenged claims were not materially different until its brief opposing the instant motion. Because a brief may not amend a complaint, the Court dismissed the challenged claims.
- Feit did not make a claim for prosecution history estoppel based upon delay because Feit did not plead how the delay was undue or prejudicial.
Having dismissed some or all of several claims, the Court gave Feit twenty-one days to amend its complaint.