Minemyer v. B-Roc Representatives, Inc.

JOHN T. ("TOM") MINEMYER, Plaintiffs,

v.B-ROC REPRESENTATIVES, INC., et al., Defendants.

No. 07 C 1763

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

Dated: February 2, 2012

Magistrate Judge Cole

Under the Federal Rules of Evidence, "[a]ll relevant evidence is admissible, except as otherwise provided by the Constitution of the United States, by Act of Congress, by [the Federal Rules of Evidence] or by other rules prescribed by the Supreme Court pursuant to statutory authority. Evidence which is not relevant is not admissible." Rule 402. Although relevant, evidence may be excluded if the court concludes that its probative value is substantially outweighed by a danger of unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative evidence. Rule 403. These principles are applicable in patent cases no less than in any other, see e.g., Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1284 (Fed. Cir.2011); Magnivision, Inc. v. Bonneau Co., 115 F.3d 956, 961 (Fed.Cir. 1997), and inform the analysis of the evidentiary question before the court.¹

To satisfy the requirement of Rule 401, the evidence need not be conclusive on a given point or have great probative weight. As Professor McCormick phrased it, "a brick is not a wall." It is enough that the evidence has "any tendency to make the existence of any fact that is of consequence to the determination of the action more or less probable than it would be without the evidence." Rule 401. See generally Sprint/United Management Co. v. Mendelsohn, 552 U.S. 379, 387-388 (2008); Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 587 (1993); Huddleston v. United States, 485 U.S. 681, 691 (1988); 1 J. Weinstein & M. Berger, Weinstein's Federal Evidence § 401.04[2] [b].

It is the defendants' contention that evidence of events occurring before the United States Patent and Trademark office in February 2004 is admissible in this case because it is relevant to the question of willful infringement. The extensive evidence that the defendants seek to have admitted was itemized in a jury instruction that asked that I take judicial notice of the following:

10. On February 17, 2004, a Patent Examiner for the United States Patent and Trademark Office issued an office action concerning the '726 Patent. (Office Action, February 17, 2004, Dkt. 305-12).

11. On May 17, 2008, Plaintiff filed a response to the PTO's February 17, 2004 Office Action. (Pl.'s Resp. to Office Action, May 17, 2004, Dkt 305-13).

12. In the February 17, 2004 Office Action, the Examiner prosecuting the '726 Patent provided the following reasons for allowance of asserted claim 12 [which is one of the four claims that will be presented to the jury]:

The following is a statement of reasons for the indication of allowable subject matter: The proper art of record does not disclose...a continuous first thread a first face and a second face extending from a base ofthe first thread forming a sharp point, and a rear face disposed perpendicular to a longitudinal axis through the first thread, wherein the front face is at an angle greater than five degrees with respect to the axis (claim 61) [i.e., asserted claim 12]....

(Office Action, February 17, 2004, p. 12, Dkt. 30512).

13. In his February 17, 2004 reasons for allowance, the Examiner used the term "perpendicular," but did not use the terms "approximately" or "approximately perpendicular." (Office Action, February 17, 2004, p. 12, Dkt. 305-12).

14. During prosecution of the '726 Patent, the Examiner initially rejected prosecution claim 54 as obvious, but then allowed Plaintiff to "add" the additional elements of dependent prosecution claim 61 to the existing elements of rejected claim 54 to form a new, independent prosecution claim 61, which issued as claim 12. (Office Action, February 17, 2004, p. 12, Dkt. 305-12).

15. In the February 17, 2004 Office Action, the Examiner stated: "Claims 59-65 and 70-72 are objected to as being dependent upon a rejected base claim [i.e., claim 61 depended from rejected base claim 54], but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims." (Office Action, February 17, 2004, p. 12, Dkt. 305-12).

16. In his May 17, 2004 Response to the February 17, 2004 Office Action, Plaintiff did not object to the Examiner's reasons for allowance. (Pl.'s Resp. to Office Action, May 17, 2004, p. 13, Dkt. 305-13).

17. In his May 17, 2004 Response to the February 17, 2004 Office Action, Plaintiff complied with the Examiner's request that certain claims be modified to gain allowance, stating: "The Office Action indicated that Claims 5-65 and 70-72 would be allowable if rewritten in independent form. Claims 59, 61, 64, 65, 70 and 71 have been rewritten in independent form and should therefore be in condition for allowance." (Pl.'s Resp. to Office Action, May 17, 2004, p. 13, Dkt. 305-13).

18. Plaintiff's '726 Patent is a continuation of, and shares the same specification with, Plaintiff's '772 Patent. ('726 Patent, cover page)

19. In the February 17, 2004 Office Action, the Examiner prosecuting the '726 Patent provided the following reasons for allowance of, among other claims, independent asserted claim 1 and dependent asserted claims 2, 3, and 4:

The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not disclose [1] a plurality of teeth having a point disposed thereupon, and [2] the teeth configured that an axis through the point of each tooth is tapered with respect to a central longitudinal axis of the conduit coupling (claim 59).

(Office Action, February 17, 2004, p. 12, Dkt. 305-12).

20. In the February 17, 2004 Office Action, the Examiner rejected as obvious claims 2, 3, and 4 in their original form, stating:

In regards to [prosecution] claim 55 [now asserted claim 2], Hunt '907 discloses a sealing surface disposed between the threaded portion and the protrusion; and the sealing surface operable to cooperate with an exterior surface of the first conduit to form a generally fluid tight seal therebetween.

In regards to [prosecution] claim 56 [now asserted claim 3], Hunt '907 discloses the sealing surface being tapered and operable to compress the exterior surface of the first conduit as the first conduit is threadably installed within interior surface.

In regards to [prosecution] claim 57 [now asserted claim 4], Hunt '907 discloses the sealing surface being tapered at approximately one and one-half degrees with respect to a central longitudinal axis of the conduit coupling (at one point along the surface).

(Office Action, 2/17/2004, at 9-10, Dkt. 305-12.)

21. In the February 17, 2004 Office Action, the Examiner determined that the Hunt '907 Patent disclosed all of the elements of prosecution claim 54 in its original form (claim 1) other than a tapered thread, stating: "In regards to claim 54, Hunt '907 discloses the claimed invention except for the threaded portion being tapered with respect to a central longitudinal axis of the first connector. Reimart teaches a threaded portion being tapered with respect to a central longitudinal axis of the first connector. . . ." (Office Action, 2/17/2004, at 9-10, Dkt. 305-12.)

22. Plaintiff neither objected to nor rebutted the Examiner's findings described in paragraph 33 above. (Pl.'s Resp. to Office Action, May 17, 2004, Dkt. 305-13.)

23. In the process of initially rejecting, as obvious, prosecution claims 54 (which ultimately issued after amendment as claim 1), 55 (which ultimately issued after amendment as claim 2), 56 (which ultimately issued after amendment as claim 3), and 57 (which ultimately issued after amendment as claim 4), the Examiner stated:

It would have been obvious to one having ordinary skill in the art at the time the invention was made to fabricate a tapered threaded portion with respect to a central longitudinal axis of the first connector, since it was known in the art that a variety of threads are known for use in various thread structures.

(Office Action, 2/17/2004, at 9-10, Dkt. 305-12.).

Paragraphs 24 - 26 of the instruction asked that I also take judicial notice that:

24. On March 10, 2010, Defendants filed Doc. # 293, Defendants.' Mot. for Summ. J. of Non-Infringement of Claim 12 and Invalidity of Claims 2, 3, and 4, March 10, 2010, and asserted the invalidity and noninfringement defenses set forth therein.

25. On June 2, 2010, Defendants filed Doc. # 303, Defendants.' Mot. for Summ. J. of Non-Infringement of Claim 12 and Invalidity of Claims 2, 3, and 4, June 2, 2010, and asserted the invalidity and noninfringement defenses set forth therein.

26. On November 8, 2010, Defendants filed Doc. # 331, Defendants.' Mot. for Summ. J. of Non-Infringement of Claim 12 of the '726 Patent, and asserted the noninfringement defenses set forth therein.

Following the instruction was an explanatory paragraph that stated that the defendants intended to introduce theses facts at trial "as evidence that there are legitimate noninfringement arguments and credible invalidity arguments concerning claims 2, 3, 4 and 12 of Plaintiff's patent." No further explanation was given, and no case was cited at the end of the proposed instruction in support of it. The plaintiff, of course, objected, not because the matters were outside the scope of proper judicial notice, but because they were irrelevant and otherwise excludable under Rule 403.

The defendants' response was that in order to establish willful infringement, the plaintiff must show by clear and convincing evidence that the defendants acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. ILOR, LLC v. Google, Inc., 631 F.3d 1372, 1377 (Fed.Cir.2011); Powell v. The Home Depot, 633 F.3d 1221, 1236 (Fed.Cir.2011); In re Seagate Technology, LLC, 497 F.3d...