Minemyer v. R-Boc Representatives, Inc. et al

Filing 423

MEMORANDUM Opinion and Order Signed by the Honorable Jeffrey Cole on 2/2/2012. (gmr, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

JOHN T. ("TOM") MINEMYER,
Plaintiffs,
v.
B-ROC REPRESENTATIVES, INC., et al.,
Defendants.

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No. 07 C 1763
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

1

A district court's decision to exclude or admit evidence is reviewed under the law of the regional
circuit. Del. Valley Floral Grp., Inc. v. Shaw Rose Nets, LLC, 597 F.3d 1374, 1379 (Fed.Cir.2010). The
Seventh Circuit, like most other Circuits, reviews such decisions for abuse of discretion and will reverse
“only if no reasonable person would agree with the trial court's ruling. Maher v. City of Chicago, 547 F.3d
817, 823 (7th Cir.2008). Evidentiary decisions are reviewed deferentially. Bose Corp. v. JBL, Inc., 274 F.3d
1354, 1360 (Fed Cir.2001).

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 of
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the 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).

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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.)

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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.

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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 1360, 1371 (Fed. Cir.2007).2 The 2004 office actions, it
was argued, were relevant because they supposedly tended to show an absence of objective
recklessness. (Why that was so was not adequately explained). I concluded that this evidence was
irrelevant under Rule 401 and thus was inadmissible under Rule 402. To the extent it could be
deemed relevant, I concluded that it should be excluded under Rule 403 because it ran afoul of each
of the 403 factors. Further reflection has not changed that assessment.

2

Under the objective prong of Seagate, the state of mind of the accused infringer is irrelevant. Under
the subjective prong of Seagate, a plaintiff must also prove that the objectively defined risk was either known
or so obvious that it should have been known to the accused infringer. Google, 631 F.3d at 1377.

6

The cases are virtually uniform in holding that office actions at the PTO are not relevant on
the question of patent invalidity or willful infringement. The occasional outlier has nonetheless
excluded evidence involving office actions pursuant to the various considerations enumerated in
Rule 403. The cases recognize that interim acceptances, rejections and adjustments are the norm
at the PTO. Indeed, the Federal Circuit has stressed that initial rejection by the PTO of original
claims that were later confirmed on re-examination is so commonplace that they “‘hardly justif[y]
a good faith belief in the invalidity of the claims.’” Hoechst Selanese Corp. v. BP Chems Ltd, 78
F.3d 1575, 1584 (Fed. Cir. 1996). See Acoustical Design, Inc. v. Control Electronics Co., Inc., 932
F.2d 939, 942 (Fed Cir.1991); DataQuill Ltd. v. High Tech Computer Corp., 2011 WL 6013022,
*14-15 (S.D.Cal. 2011); Belden Technologies, Inc. v. Superior Essex Communications, LP, 802
F.Supp.2d 555 (D.Del. 2011); ePlus, Inc. v. Lawson Software, Inc., 2011 WL 3584313, *8 (E.D.Va.
2011); Tesco Corp. v. Weatherford Intern., Inc., 750 F.Supp.2d 780, 794 (S.D.Tex.2010); SRI
Intern., Inc. v. Internet Sec. Systems, Inc., 647 F.Supp.2d 323, 356 (D.Del. 2009); Power
Integrations, Inc. v. Fairchild Semiconductor Intern., Inc., 762 F.Supp.2d 710, 718 (D.Del. 2011);
Anchor Wall Systems v. Rockwood Retaining Walls, Inc., 610 F.supp.2d 998, 1016 (D.Minn. 2009);
Krippelz v. Ford Motor Co., 675 F.Supp.2d 881, 894 (N.D.Ill. 2009), rev’d on other grounds,
_F.3d_, 2012 WL 248000 (Fed.Cir. 2012);3 Presidio Components, Inc. v. American Technical
Ceramics Corp., 2009 WL 3822694, 2 (S.D.Cal. 2009).4

3

In reversing the district court’s denial of the defendant’s motion for judgment as a matter of law
on the question of invalidity, the Federal Circuit expressly declined to address the court’s decision to exclude
evidence regarding re-examination proceedings in the PTO. Krippelz,. 2012 WL 248000, at * 7.
4

In the context of summary judgment, one court has concluded that where the PTO preliminarily
determines that there are substantial questions of validity, there can be no willful infringement. Pivonka v.
Central Garden & Pet Co., 2008 WL 486049 (D.Colo. 2008) granted the defendant’s motion for summary
(continued...)

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Accordingly, as explained at the pretrial conference, the evidence of the 2004 events at the
PTO are not relevant to the question of willful infringement and thus are properly excluded under
Rule 402. As also discussed at great length at the pretrial conference, the evidence is properly
excludable under Rule 403. As the Federal Circuit has explained, among the purposes of the Federal
Rules of Evidence is assuring that irrelevant evidence does not unfairly prejudice the trial.
Magnivision, Inc., 115 F.3d at, 961. The evidence the defendants seek to introduce is gravid with
unfair prejudice and the potential for jury confusion and for wasting time. Courts routinely refuse
to permit evidence of reexamination proceedings to be introduced before a jury, fearing that it will
confuse, distract, mislead, and unfairly prejudice the jury. See, e.g., the cases cited at 7, supra;
Cordis Corp. v. Boston Scientific Corp., 2010 WL 331792, at *3 (D.Del.2010); Presidio
Components Inc.,, 2009 WL 3822694, at *2; Krippelz, 675 F.Supp.2d at 894.
It is idle to suggest that the complicated evidence the defendants seek to bring before the jury
on the question of willful infringement will not hopelessly confuse them. Data from the U.S. Patent
and Trademark Office reflects that 92% of ex parte requests for re-examination have been granted
since July 1, 1981. See Christopher B. Seaman, Willful Patent Infringement and Enhanced Damages
After In re Seagate: An Empirical Study, 97 Iowa L.Rev. 417, 461 n. 243 (2012).5 Given the fact

4

(...continued)
judgment with respect to the claim of willful infringement based on the PTO’s preliminary order determining
that the claims were unpatentable as obvious and the evidence showed that the defendants consulted with
patent counsel after learning of the patents. Absent this latter fact, it is not clear what the ruling would have
been. Lucent Technologies, Inc. v. Gateway, Inc,. 2007 WL 6955272, 7 (S.D.Cal. 2007) granted the
defendant’s motion for summary judgment with respect to the claim of willful infringement based on the
PTO’s reexamination orders. The court made clear that a reexamination order will not always warrant
summary judgment in favor of a defendant. 2007 WL 6955272, 7. Neither case cited Hoechst Selenese Corp,
and neither involved Rule 403.
5

The annual report of the Patent and Trademark Office for 1994 states that 89% of the reexamination
(continued...)

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that office actions are the norm and do not remotely presage the outcome of the patent process,
evidence of the kind involved here will not be helpful to the jury in evaluating the question of
willfulness. Quite the contrary.
The evidence will do no more than invite speculation of the most obvious sort, contrary to
the Federal Circuit’s repeated admonition that juries may not base judgments on speculation and
conjecture. Wordtech Systems, Inc v. Integrated Networks Solutions, Inc., 609 F.3d 1308, 1319
(Fed.Cir.2010); Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1334 -1335
(Fed.Cir.2009); Alza Corp. v. Mylan Laboratories, Inc., 464 F.3d 1286, 1290 (Fed.Cir.2006); Oiness
v. Walgreen Co., 88 F.3d 1025, 1033 (Fed.Cir.1996); Cerveceria Centroamericana, S.A. v.
Cerveceria India, Inc., 892 F.2d 1021, 1024 (Fed.Cir.1989).6
The defendants’ evidence also poses the intolerably high risk that the jury will engage in the
kind of hindsight analysis – perhaps unconsciously – that the Federal Circuit finds impermissible
and that warrants the exclusion of evidence under Rule 403. The defendants insist that all the Rule
403 considerations can be dealt with through limiting instructions. It is certainly true that “[t]he
law... presumes that juries have the capacity not to be over-awed by the evidence and to follow
appropriate instructions from the court. [citations omitted]. Indeed, that capacity is the very premise
on which the jury system” and various provisions of the Federal Rules of Evidence rest, .as an earlier
5

(...continued)
requests were granted that year, but only 5.6% of the reexamined patents were rejected with no claims
remaining after reexamination. Hoechst Selanese Corp., 78 F.3d at 1584.
6

The Federal Circuit’s refusal to allow conjecture as a basis for decision or the drawing of inferences
is consistent with the long-standing rejection by all the Circuit Courts of Appeals of speculation “as a
substitute for proof.” United States v. Landry, 257 F.2d 425,431 (7th Cir. 1958). Accord, In re Cohen, 507
F.3d 610, 614 (7th Cir. 2007). Speculation is not evidence and “hypothesis is not proof. ” Louth v.
McCollum, 424 F.3d 631, 634 (7th Cir. 2005). “The trouble with absence of evidence is that it is consistent
with any hypothesis.” United States v. Holland, 445 F.2d 701, 793 (D.C.Cir. 1971).

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opinion in ths case noted. Minemyer v. B-Roc Representatives, Inc., 2011 WL 1113146, 3
(N.D.Ill.2011).
But there are limits to a jury’s capacity to make the kind of exceedingly fine distinctions that
would be required by the evidence the defendants seek to offer. There are times, and this is one of
them, when a limiting instruction is pointless. Bruton v. United States, 391 U.S. 123 (1968); United
States v. Mannie,509 F.3d 851 (7th Cir. 2007). It is no more than an admonition to the jury to
perform a “mental gymnastic which is beyond not only their powers, but anybody else’s,” Nash v.
United States, 54 F.2d 1006, 1007 (2d Cir.1932) (L. Hand, J.), as in Mark Twain's story of the boy
told to stand in a corner and not think of a white elephant. United States v. Antonelli Fireworks Co.,
155 F.2d 631, 656 (2d Cir.1946) (Frank, J., dissenting). To tell someone not to “think about the beast
is to assure at least a fleeting mental image.” United States v. DeCastris, 798 F.2d 261, 264 (7th
Cir.1986).
It is the defendant’s contention that although there is not an invalidity defense to the four
claims at issue in this case – the question is whether there has been infringement – the jury has the
capacity to consider the office action proceedings in 2004 solely as they bear on where there
existed credible defenses to validity and thus whether any infringement was willful. The jury will
have the capacity, the defendants insist, to be able to find that the defendants infringed the very
patent that they have simultaneously determined may well be invalid – a determination inherent in
the finding that there were credible invalidity defenses.
To borrow Justice Cardozo’s famous phrase, “[d]iscrimination so subtle is a feat beyond the
compass of ordinary minds.” Shepard v. United States, 290 U.S. 96, 104 (1933). “It is for ordinary
minds, and not for psychoanalysts, that our rules of evidence are framed. They have their source
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very often in considerations of administrative convenience, of practical expediency, and not in rules
of logic. When the risk of confusion is so great as to upset the balance of advantage, the evidence
goes out.” Id. That is the case here. Compare Callaway Golf Co. v. Acushnet Co. 576 F.3d 1331,
1342 (Fed Cir.2009)(“We see no error in the district court's exclusion of the test-ball testimony on
the issue of obviousness. The introduction of evidence concerning the test balls ran a substantial risk
of leading the jury towards the inappropriate use of hindsight and towards unduly weighting
Acushnet's arguments concerning motivation to combine the prior art; the likely outcome, as the
district court perceived it, was the jury understanding Acushnet's argument concerning the
combination of prior art as ‘[w]e did it, here it is, anyone can do this.’”).
The evidence proposed by the defendants is anything but self-explanatory and self-evident.
No jury will understand either its significance or its inherent limitations. It will require explanation
by some expert, lest the jury be overwhelmed by a welter of facts that it cannot comprehend.
Fairness will then the plaintiff to respond with its own expert testimony as well as permitting him
to put on extended evidence regarding how the examination process at the PTO works, the
insignificance (from his perspective) of the complicated and diverting evidence offered by the
defendants, the necessarily equivocal and evanescent nature of office actions, and a host of related
issues that could easily result in a trial within the broader framework of the case, itself.
To alleviate the problem posed by the office action evidence – assuming for the sake of
argument that it was relevant – and other evidence purportedly relevant solely to the question of
willfulness, I suggested that the issue of willful infringement be bifurcated from the trial on
infringement. The defendants agreed, but plaintiff did not, contending that he would be prejudiced
were the case to be bifurcated literally on the eve of trial. I concluded in a minute order that the
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refusal to agree to bifurcation constituted a waiver of any Rule 403 argument that might be made.
(Dkt. #411, Jan. 20, 2012). Further reflection has persuaded me that that order was erroneous, and
it is hereby vacated.
Our system of justice is adversarial, and judges are not to play the “proactive” role of a
Continental European judge or to advance a theory without according the affected party an adequate
opportunity to respond. Burdett v. Miller, 957 F.2d 1375, 1380 (7th Cir.1992). Nor in the usual case
ought a judge to go beyond the arguments of counsel as expressed in the briefs. See Kay v. Board
of Educ. of City of Chicago, 547 F.3d 736, 738 (7th Cir. 2008)(“The benefit of adversarial
presentation is a major reason why judges should respond to the parties' arguments rather than going
off independently.”). My suggestion at the January 20th pretrial conference session that there was
a waiver of any Rule 403 objection as a consequence of the plaintiff’s refusal to agree to bifurcation
ran afoul of these principles, and accordingly the order of January 20 is vacated.

ENTERED:_____________________________________
UNITED STATES MAGISTRATE JUDGE
DATE: 2/2/12

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