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

Filing 355

MEMORANDUM OPINION AND ORDER Signed by the Honorable Harry D. Leinenweber on 7/28/2014: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.

BACKGROUND

This patent case is now before the Court on a Motion by the
Defendant, Bodum USA, Inc. (“Bodum”), to have the Court declare
this an “exceptional” case under Section 285 of the Patent Act.
This case has a long history before this Court and the Federal
Circuit.
The

Plaintiff,

Meyer

Intellectual

Properties,

Limited

(“Meyer”), had brought suit against the Defendant, 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), which provide a
method for frothing liquids such as milk.
were three of Bodum’s milk frothers.

The accused products

Bodum counterclaimed for

declaratory judgment of non-infringement and invalidity based on
obviousness.

In pretrial rulings the trial judge granted summary

judgment in favor of Meyer on direct infringement, disposed of the
inequitable conduct defense on a motion in limine, limited the
scope of prior art to what was expressly relied upon by the defense
expert, excluded the testimony of Defendant’s expert regarding
obviousness on grounds that the expert’s report was insufficiently
detailed,

and

excluded

the

lay

testimony

of

Defendant’s

CEO

regarding one of its coffee presses. The practical effect of these
rulings was to exclude Bodum’s primary prior art:

its own Bodum’s

3-cup French Press coffee maker, which it contended, when in
combination with one of its allowed prior art references, taught
all of the elements of the two patents in suit.
The case proceeded to trial in the district court on the issue
of invalidity, willfulness, and damages.

The jury returned a

verdict in favor of Meyer finding that the patent was not invalid,
the infringement was willful, and assessed damages at $50,000.00.
Bodum’s Motion for Judgment as a Matter of Law was denied and the
Court awarded enhanced damages and attorneys’ fees. Bodum appealed
to the Federal Circuit which reversed in part, vacated in part, and
remanded back to this Court.
held

that

it

was

error

to

Specifically, the Federal Circuit
grant

summary

judgment

on

direct

infringement, and that the District Court abused its discretion in
limiting the scope of prior art to what was expressed in the
expert’s report, excluding the testimony of Bodum’s expert on the
issue of obviousness, excluding the lay testimony of Bodum’s CEO,

- 2-

and in disposing of the inequitable conduct defense on a motion in
limine.

The main basis for the Federal Circuit’s reversal was the

exclusion of the prior art references and the expert testimony.
On remand before this Court, Meyer renewed its Motions for
Summary Judgement on infringement and inequitable conduct.
filed a

Motion

for

Summary

Judgment

on

invalidity,

Bodum

based on

obviousness, which it supported by an amended expert report which
specifically included reliance on new references regarding frothing
devices that were on sale prior to the issuance of the patent in
suit.

Based on the additional prior art, this Court granted

Bodum’s Motion for Summary Judgment and denied the two Motions of
Meyer as moot.
The United States Supreme Court in Octane Fitness, LLC v. Icon
Health and Fitness, Inc., 134 S.Ct. 1749, redefined an exception
case under Section 285 and departed from the more stringent rule
enunciated by the Federal Circuit in Brooks Furniture Mfg. v.
Dutailier Int’l, Inc., 393 F.3d 1378 (Fed Cir. 2005).

The new

definition provided that an “exception CAE stands out from others
with respect to the substantial strength of a party’s litigating
position (considering the governing law and the facts of the case)
or the unreasonable manner in which the case was litigated.”

The

“totality of the circumstances” was to be considered by the Court
in making this decision.

- 3-

II.

DISCUSSION

Bodum’s request for exception case status is based on two
points:

first, that the inventor of the ‘087 and the ‘122 Patents

withheld the Bodum 3-Cup coffee maker prior art with intent to
deceive the Patent Examiner, which constitutes inequitable conduct,
and, second, that Meyer was guilty of litigation misconduct, which
included repeated efforts to preclude the introduction of the prior
art Bodum 3-Cup coffee maker. It specifically cites the efforts to
bar Bodum’s proffered expert from testifying, to prevent Bodum from
introducing its prior art references, and from presenting evidence
of inequitable conduct.
Meyer responds by pointing out that there has not been any
ruling by any court regarding inequitable conduct, other than the
denial of Meyer’s Motion for Summary Judgment of no inequitable
conduct. Thus, there is no specific evidence before the Court that
the inventor knew the Bodum 3-Cup coffee maker was material.

All

Bodum has produced is speculation which is insufficient to show
inequitable conduct.

It also denies that its litigation strategy

amounted to misconduct.
limited

litigation

Meyer argues that the Federal Circuit has

misconduct

to

instances

of

unethical

or

unprofessional behavior, citing Old Reliable Wholesale, Inc. v.
Cornell Corp., 635 F.3d 539, 549 (Fed Cir. 2011).
behavior amounted to no more than zealous advocacy.

- 4-

Its litigation

The Court finds that this case is not an exceptional case
under Section 285.

The Court agrees with Meyer that the record

does not sufficiently support a finding of inequitable conduct so
as to justify such a finding of an exceptional case.

There is no

specific evidence that the inventor was aware of the Bodum 3-Cup as
a prior art reference at the time he obtained the two patents-insuit.

While he may have been aware that such a coffee maker

existed, the fact that it was primarily a device to make coffee
rather than one to froth liquid could be a reasonable explanation
for not advising the patent examiner of it as a reference.

The

fact that Bodum’s expert did not rely upon it in his expert report
would be some evidence that it was not such an obvious reference so
as to amount to inequitable conduct.
As far as litigation strategy is concerned, if efforts to
limit inequitable conduct as an issue in a patent case as well as
efforts to limit the introduction of evidence based on the Rules of
Civil Procedure, makes a case an “exceptional” one, then almost
every patent case would be exceptional.

The Court notes that

patent lawyers love to litigate aggressively and this was no
exception on both sides.

The first point the Court will make is

that the claim that Meyer misled the trial judge is risible.

The

trial judge is, to say the least, an able and experienced trial
judge who very clearly set forth the bases for his respective
pretrial rulings in multiple written opinions.

- 5-

It is clear that

the Federal Circuit disagreed with his interpretation of the
requirements of FED. R. CIV. P. 25(a)(2)(B) at least with respect to
what the Federal Circuit believed are cases involving simple
technology. Urging a Court to enforce previously issued rulings is
certainly not misconduct. If a court incorrectly rules, a party is
entitled to appeal to obtain a correction.
in this case.

That is what Bodum did

But seeking to enforce previous Court rulings in

one’s favor is neither unethical nor unprofessional.
The Court would like to make one additional observation:

the

prior judge made a finding of exceptional case against Bodum, after
trial, in large part based on Bodum’s conduct at the trial.

The

conduct the Court found offensive was the refusal on the part of
Bodum to accept the Court’s prior rulings.

Appropriate trial

conduct requires a party who loses on a point to accept defeat and
conduct oneself in accord with the Court’s rulings.

The Court in

this case denied Bodum’s attempt to raise inequitable conduct as a
defense but was forced on multiple occasions during the trial to
enforce its ruling.

In addition, despite the Court’s ruling

limiting prior art, Bodum’s attorneys attempted to include the
excluded prior art in its claim chart prepared for final argument.
Judges are not infallible.

The appropriate response to perceived

erroneous rulings is to accept them and then appeal.

In any event,

none of Meyer’s litigation conduct was unprofessional or unethical
so as to warrant a finding of an exceptional case.

- 6-

III.

CONCLUSION

For the reasons stated herein, Defendant’s Motion to Declare
this an Exception Case under Section 285 of the Patent Act is
denied.
IT IS SO ORDERED.

Harry D. Leinenweber, Judge
United States District Court
Date:7/28/2014

- 7-