Meyer Intellectual Properties Limited et al v. Bodum, Inc.

Filing 323

Memorandum Opinion and Order Signed by the Honorable Harry D. Leinenweber on 4/7/2014:Mailed notice(wp, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

MEYER INTELLECTUAL PROPERTIES
LIMITED; and MEYER CORPORATION,
U.S.,
Case No. 06 C 6329
Plaintiffs,

Hon. Harry D. Leinenweber

v.
BODUM USA, INC.,
Defendant.

MEMORANDUM OPINION AND ORDER
I.
This is a patent case.

BACKGROUND
The Plaintiff, Meyer Intellectual

Properties Limited (“Meyer”), has brought a suit against Bodum USA,
Inc. (“Bodum”), alleging infringement of two of Meyer’s patents,
U.S. Patent Nos. 5,780,087 (“the ‘087 Patent”) and 5,939,122 (“the
‘122 Patent”).

Bodum counterclaimed for declaratory judgment of

non-infringement and invalidity.

The case proceeded to trial

before another District Court judge which ended in a verdict for
Meyer for willful infringement and set damages at $50,000.

The

trial judge, based on the willfulness finding, trebled the damages
and awarded attorneys’ fees. Bodum appealed to the Federal Circuit
which reversed the judgment, based upon a number of the trial
court’s pretrial and trial rulings, which it considered erroneous.
Specifically, the Federal Circuit reversed the district court’s

decision granting summary judgments that two of Bodum’s products
infringed Meyer’s patents, reversed the trial court’s pretrial
rulings that precluded Bodum from introducing prior art even though
it had been disclosed during discovery, that precluded Bodum’s
President from testifying as to one of its products as prior art,
that precluded Bodum’s expert from testifying on the issue of
obviousness, that precluded Bodum from introducing any evidence of
inequitable conduct, vacated the district court’s decision denying
Bodum JMOL that it did not willfully infringe, and vacated the
district court’s decision enhancing damages and awarding attorney
fees. Finally, the court remanded the case for further proceedings
consistent with its opinion.
Since this case has been the subject of multiple written
rulings as well as a 28-page published opinion by the Federal
Circuit (Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690
F.3d 1354 (Fed Cir. 2012)), the court will write sparingly on the
facts of the case.

Essentially the case involves two patents, a

continuing application that later became the ‘122 Patent, and the
original patent application, which was the ‘087 Patent.

Both

patents share a common specification which provides a method for
frothing liquids such as milk. Specifically, the patents relate to
“an apparatus and method for frothing, which allows the user to
obtain foamy, frothed milk without the use of a complicated steamer
device.” The claims disclose a four-step method for doing so:

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(1)

providing a container that has a height to diameter aspect ration
of 2:1; (2) pouring liquid such as milk into the container; (3)
introducing a plunger that includes at least a rod and plunger body
with a screen; and (4) pumping the plunger to aerate the liquid.
The inventor of the two patents was Frank Brady (“Brady”) who
for approximately ten years was an independent sales representative
for Bodum, a company that designs and sells housewares products,
including coffee makers, milk frothers, and other kitchen products.
As CEO of Brady Marketing Company, Inc., Brady marketed and sold a
number of Bodum’s household products, including Bodum’s French
Press coffee makers, which used a container and a rod and plunger
assembly to brew coffee.

Brady testified that he first conceived

of using a frother to provide aeration instead of steam in the mid1990s, and introduced it for sale at a trade show in May 1996.

He

began selling this product through BonJour, Inc., a company he
owned.

In May 2005, Brady sold BonJour to Meyer and transferred

its intellectual property rights to Meyer, including the ‘087 and
the ‘122 Patents.
Meyer has accused three of Bodum’s milk frothers of infringing
the ‘087 and the ‘122 Patents.

Bodum has moved for summary

judgment of invalidity based on obviousness and Meyer has moved for
summary judgment of infringement and no inequitable conduct.

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II.

THE FEDERAL CIRCUIT OPINION

The pre-trial rulings of the District Court, which were
reversed by the Federal Circuit, had limited the universe of prior
art solely to the Ghidini Reissue Patent, No. RE 37,137, which
described a method for frothing liquids.

The trial court excluded

all other references submitted by Bodum, including Bodum’s own
Bodum 3-Cup

French

Press

Coffee

Maker,

which consisted

of

a

container using a rod and plunger assembly, and limited it to the
Ghidini Reissue Patent, which taught a method for frothing milk
using a container with a plunger assembly.

The pretrial rulings

also prohibited Bodum’s designated expert, Robert John Anders
(“Anders”), as well as Bodum’s CEO, Jorgen Bodum, from testifying.
The latter was expected to testify as a non-expert to describe
Bodum’s products, its catalogs and drawings depicting the features
of its French Press coffee maker which was on sale prior to the
application dates for the patents-in-suit.
Essentially the basis for the court’s reversals of the trial
court pre-trial rulings was its view that the technology involved
in this case was “not complex,” so that the basis for precluding
Anders’ expert opinion as “ipse dixit” was incorrect; and that
Anders’ opinion that the patents-in-suit were obvious to one
skilled

in

the

art

was

based

on

“common

sense,”

which

was

appropriate in obvious analysis of a non-technical patent, citing
Perfect Web Techs, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed

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Cir. 2009).

The court also held that the exclusion of the lay

testimony of Jorgen Bodum that the Bodum 3-Cup French Press Coffee
Maker was an accurate example of Bodum’s product which had been on
sale prior to the application for the patents-in-suit, was error.
As was the attempt to corroborate Bodum’s testimony with drawings
and catalogs showing dimensions and the plunger assembly.

The

court held that this proffered testimony was appropriate for a lay
fact witness to give.
III.

MOTION TO STRIKE ANDERS’ UPDATED REPORT

Bodum in its Motion for Summary Judgment has attached an
updated expert opinion from Anders that includes two references:
the 1916 Belgium Patent No. 384,589 (the Belgian ‘589 Patent”),
which taught how to froth liquids with a container and a plunger,
and the Insta-Brewer, a coffee maker, which was similar to the
Bodum 3-Cup French Press Coffee Maker but was sold as early as
1964. Meyer has moved, pursuant to Federal Rule of Civil Procedure
26(a), to strike this updated report based on untimeliness and
prejudice.

It is hard to see how Meyer is prejudiced by the “late”

disclosure

as

the

Original

included both references.

Anders

Report,

which

was

timely,

Although Anders did not specifically

include them in the portion of his report in which he stated his
opinion of obviousness, the references were included in his report
and

were

not

particularly

different

from

the

two

that

he

specifically relied upon (the Bodum 3-Cup French Press Coffee Maker

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and the Ghidini frother).

The Court does not believe that there is

a basis for striking Anders latest report which was filed far more
than thirty (30) days prior to trial, and, as conceded by Meyer,
the references were, in fact, included in his initial report.
Moreover,

in

his

original

report

he

reserved

the

right

to

supplement his report and rely on additional documents that came to
his attention.

The Motion to Strike is therefore denied.
IV.

DISCUSSION

Even if the Court were to exclude the updated Anders report,
the Court could still consider these “new” references under the law
of the case.

The Federal Circuit stated that lay witnesses in a

non-technical case could testify to factual matters in helping the
jury arrive at its opinion as to obviousness so long as they did
express an opinion as to invalidity.

The Court further held that

where the technology is easily understandable, expert testimony is
not even required. Meyer Intellectual Properties Ltd., 690 F.3d at
1377.

Here, the Court has ample evidence that the use of plunger

or piston to froth milk has been in use since at least 1916 and
during subsequent years.

See, descriptions of prior art that were

included in Meyer’s responses to Bodum’s SOF’s Nos. 54, 38, 39, 44,
and 45.
The standard for obviousness is located in Section 103(a) of
the Patent Act.

35 U.S.C. § 103(a).

This section provides that a

patent may not be issued “if the differences between the subject

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matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to
which said subject matter pertains.”

This is a question of law for

the court based on underlying factual considerations.
John Deere Co., 383 U.S. 1, 17 (1966).
allowed

if

the

matters

are

not

Graham v.

The use of common sense is
overly

technical.

Meyer

Intellectual Properties Ltd., 690 F.3d at 1375.
The prosecution history shows that the Patent and Trademark
Office (the “PTO”) rejected the application as obvious prior to an
amendment that adopted the height to diameter ratio of “at least
2:1”.

There is no indication of why this ratio is important other

than making frothing faster.

The evidence shows that the Bodum 3-

Cup French Press Coffee Maker had an external 130mm height to 64mm
diameter, an internal ratio of 118mm to 64mm and exterior ratio of
130mm to internal of 64mm.
is the appropriate one.

The claims do not specify which ratio

Furthermore, it is hard to see that a very

minor difference in the ratio would not constitute equivalence.
Here the prior art Ghidini Patent teaches that a container of
milk can be frothed using a plunger.

The prior art Bodum 3-Cup

French Press Coffee Maker included a container having a height to
diameter ration of at least 2 to 1 under certain measurements and
a plunger body having a circumference, a screen and a spring
positioned about the circumference of the plunger body such that

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the spring is biased to hold the screen in place in contact with,
though not sealable connected to the container.

It would appear

reasonable for one of ordinary skill in the art to combine these
references.

To quote the concurring judge in the federal circuit

in this case:
the patents essentially claim the use of prior
art French press coffee maker to froth milk.
Instead of making coffee by using the plunger
to separate coffee from coffee grounds, the
plunger is depressed to froth milk. The idea
of frothing cold milk by the use of aeration
rather than steam is not new as reflected in
the prior art Ghidini patent. Under the
Supreme Court’s decision in KSR International
Co. v. Teleflex, Inc., 550 U.S. 398, 420, 127
S.Ct. 1727, 167 L.Ed. 2d 705 (207), and its
predecessors, it would be reasonable to expect
that the claims would have been rejected as
obvious by the examiner, and, if not, that
they would have been found obvious on summary
judgment by the district court.
Meyer Intellectual Properties Ltd., 690 F.3d at 1380.
The Court agrees and finds that as a matter of law the ‘087
and ‘122 patents are obvious in light of the Bodum 3-Cup French
Press Coffee Maker and the Ghidini Reissue Patent.

Accordingly,

Summary Judgment is rendered in favor of Bodum and against Meyer
and the ‘087 and the ‘122 patents are ruled invalid based on
obviousness.
V. MEYER’S MOTION FOR SUMMARY JUDGMENT
ON INFRINGEMENT AND NO INEQUITABLE CONDUCT
In so far as the Court has invalidated the ‘087 and ‘122
Patents for obviousness, the motions of Meyer are denied as moot.

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VI.

CONCLUSION

For the reasons stated herein, the Plaintiffs’ Motion to
Strike is denied.
granted.

Defendant’s Motion for Summary Judgment is

The plaintiff’s motion for summary Judgment is denied.

IT IS SO ORDERED.

Harry D. Leinenweber, Judge
United States District Court
Date:4/7/2014

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