Snap-on Incorporated

Filing 107

WRITTEN Opinion signed by the Honorable Charles P. Kocoras on 10/14/2011: Plaintiff's motion (Doc 97 ) to dismiss defendant's counterclaims relating to U.S. Patent No. 5,208,646 is granted. (For further details see minute order.)Mailed notice(sct, )

Order Form (01/2005)

United States District Court, Northern District of Illinois
Name of Assigned Judge
or Magistrate Judge

Charles P. Kocoras

CASE NUMBER

09 C 6914

CASE
TITLE

Sitting Judge if Other
than Assigned Judge

DATE

October 14, 2011

Snap-On, Inc. vs. Robert Bosch, LLC

DOCKET ENTRY TEXT

Plaintiff’s motion (Doc [97]) to dismiss defendant’s counterclaims relating to U.S. Patent No. 5,208,646 is
granted.

O[ For further details see text below.]

Docketing to mail notices.

ORDER
This case comes before the Court on the motion of Plaintiff Snap-on, Inc. (“Snap-on”) to dismiss
Defendant Robert Bosch, LLC’s (“Bosch”) counterclaims relating to U.S. Patent No. 5,208,646 (“‘646 Patent”).
For the reasons stated below, the motion is granted.

On November 3, 2009, Snap-on filed a complaint against Bosch, alleging numerous counts of patent
infringement. Beissbarth GmbH (“Beissbarth”) and Robert Bosch GmbH (“Bosch Germany”) (collectively, the
“German Entities”) are related to Defendant Bosch. On August 18, 2011, Snap-on filed a First Amended
Complaint adding the German Entities as defendants and withdrawing all claims relating to the ‘646 Patent.
Thereafter, Snap-on provided Bosch with a covenant not to sue concerning the ‘646 Patent and Snap-on now
moves to dismiss Bosch’s counterclaims relating to the ‘646 Patent.

Bosch agrees that the Court no longer has jurisdiction over its counterclaims relating to the ‘646 Patent
because Snap-on withdrew its infringement claim and provided Bosch with a covenant not to sue. See Dow Jones
& Co. v. Ablaise Ltd., 606 F.3d 1338, 1349 (Fed. Cir. 2010) (finding that the covenant not to sue proffered by
a party extinguished the controversy and divested the district court of Article III jurisdiction over the other party’s
action seeking to declare the patent invalid). Accordingly, the Court grants Snap-on’s motion to dismiss. As a
09C6914 Snap-On, Inc. vs. Robert Bosch, LLC

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ORDER
final matter, Bosch asks the Court to clarify that it retains jurisdiction over Bosch’s request for attorneys’ fees
under 35 U.S.C. § 285 with respect to the ‘646 Patent and Bosch’s planned request for attorneys’ fees under
Federal Rule of Civil Procedure 11. Further, Bosch asks the Court to rule on the relevance of certain discovery
requests. Snap-on has not had an opportunity to respond to Bosch’s additional requests. The Court defers ruling
on these issues until properly brought before the Court. See Fed. R. Civ. P. 7(b) (stating that a request for a court
order must be made by motion).

Date: October 14, 2011
CHARLES P. KOCORAS
U.S. District Judge

09C6914 Snap-On, Inc. vs. Robert Bosch, LLC

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