Ocean Tomo, LLC v. Jonathan Barney

Filing 294

MEMORANDUM Opinion and Order: For the foregoing reasons, Ocean Tomo's motion for summary judgement, R. 238 , is denied with respect to Counts I and III. Ocean Tomo's motion also is denied with respect to Count VI as it pertains to the seco nd, third, fourth, and fifth alleged misrepresentations in paragraph 40 of Defendants' Second Amended Counter-Claim. Ocean Tomo's motion is granted with respect to Count VI as it pertains to the first alleged misrepresentation in paragraph 40 of Defendants' Second Amended Counter-Claim. Signed by the Honorable Thomas M. Durkin on 6/14/2017:Mailed notice(srn, )

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
OCEAN TOMO, LLC,
Plaintiff,

No. 12 C 8450

v.

Judge Thomas M. Durkin

PATENTRATINGS, LLC; JONATHAN
BARNEY,
Defendants.
MEMORANDUM OPINION AND ORDER
Jonathan Barney, through his company PatentRatings, LLC, created,
patented, and developed software for analyzing and evaluating patents. Ocean
Tomo, LLC, provides financial services related to intellectual property, including
patent analytics. In 2004, the parties reached an agreement that provided for (1)
licensing PatentRatings’s software to Ocean Tomo; (2) giving Ocean Tomo an
ownership interest in PatentRatings; and (3) giving Barney an ownership interest
in, and a management position with, Ocean Tomo. The relationship among the
parties soured, giving rise to amendments to the agreements in 2007, and
eventually this litigation in 2012.
PatentRatings and Barney have made counterclaims against Ocean Tomo
alleging breaches of various contracts governing the parties’ business relationship
(Counts I-III); tortious interference with prospective economic advantage (Count
IV); violation of the Computer Fraud and Abuse Act, 18 U.S.C. § 1030 (Count V);

fraud (Count VI); and seeking various declaratory judgments regarding the
contracts governing the parties’ relationship (Count VII). R. 175. Ocean Tomo has
filed a motion seeking summary judgment on Count I for breach of the “Operating
Agreement”; Count VI for fraud; and Count III for breach of contract of the “License
Agreement.” R. 238. For the following reasons, the motion is denied in part and
granted in part.
Legal Standard
Summary judgment is appropriate “if the movant shows that there is no
genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317,
322-23 (1986). The Court considers the entire evidentiary record and must view all
of the evidence and draw all reasonable inferences from that evidence in the light
most favorable to the nonmovant. Ball v. Kotter, 723 F.3d 813, 821 (7th Cir. 2013).
To defeat summary judgment, a nonmovant must produce more than “a mere
scintilla of evidence” and come forward with “specific facts showing that there is a
genuine issue for trial.” Harris N.A. v. Hershey, 711 F.3d 794, 798 (7th Cir. 2013).
Ultimately, summary judgment is warranted only if a reasonable jury could not
return a verdict for the nonmovant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
248 (1986).

2

Analysis
I.

Count I – Breach of the Operating Agreement
As a member of Ocean Tomo, Barney is a party to Ocean Tomo’s Operating

Agreement. Under the Operating Agreement, the Ocean Tomo Board of Managers
has discretion to determine whether profits from a transaction are “Net Profits from
Operations” or “Other Net Profits.” R. 241-5 at 7. The full relevant provision of the
Operating Agreement provides the following:
“Net Profits from Operations” and “Net Losses from
Operations” shall mean, for each Fiscal Year or other
period, such portion of the Company’s Net Profits (or Net
Losses) attributable to the ordinary course operation of
the Company’s business for such period; provided that, (1)
such amount shall exclude any Net Profits or Net Losses
resulting from the sale of all or substantially all of the
Company’s assets, and (2) such amount shall be subject to
any other modification (including any modification that
would otherwise be inconsistent with the definition set
forth in this paragraph) as determined by the Board of
Managers (but shall not in any event include profits from
the sale of all or substantially all of the Company’s
assets). The portion of the Company’s Net Profits (or Net
Losses) constituting Net Profits from Operation (or Net
Losses from Operations) shall be determined by the Board
of Managers in its sole discretion and such determination
shall be conclusive on the Members.
Id. The determination of whether profits from a transaction constitute “Net Profits
from Operations” or “Other Net Profits” is important because different types of
profits are allocated to Ocean Tomo’s members in different ways. “Other Net
Profits” are “allocated among the Members for each Fiscal Year in accordance with
their respective Percentage Interest.” Id. at 20. The Operating Agreement does not
appear to directly state how “Net Profits from Operations” should be allocated. But
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according to Barney’s allegations, “75% of ‘Net Profits from Operations’ shall be
allocated among the members as determined by the Board of Managers, and the
remaining 25% of ‘Net Profits from Operations’ shall be allocated among the
members in accordance with their respective percentage interest.” R. 175 ¶ 13. At
least for purposes of this motion, Ocean Tomo does not appear to dispute this
characterization of the process for allocation of “Net Profits from Operations.”
A.

Performance Under the Operating Agreement

Barney alleges that Ocean Tomo’s Board of Managers improperly determined
that the revenue from two particular transactions—the sales of Ocean Tomo
subsidiaries ICAP and IPXI—were “Net Profits from Operations” rather than
“Other Net Profits,” thereby depriving Barney of income. R. 175 ¶ 72. Barney also
argues that the Board of Managers exercised its discretion to make these decisions
in violation of the covenant of good faith and fair dealing. R. 254 at 15-16. Ocean
Tomo argues that summary judgment is appropriate because the Operating
Agreement provides that allocation of profits is within the Board of Managers’
discretion. R. 239 at 7-8.
1.

Interpretation of the Contractual Language Providing
the Board of Managers’ Discretion

Barney argues that even though the provision of the Operating Agreement
defining “Net Profits from Operations” grants the Board of Managers’ discretion to
classify profits, the definition also limits that discretion, in that
to the extent that the Board of Managers have discretion
to modify, the modification can only be to “such amount,”
which refers to the amount in the preceding clause—i.e.,
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“such portion of the Company’s Net Profits . . .
attributable to the ordinary course operation of the
Company’s business . . . .” Thus, the Board of Managers
does not have discretion to modify the classification of any
other portion of Ocean Tomo’s Net Profits.
R. 254 at 15. In other words, Barney argues that the Board does not have discretion
to classify profits as “Net Profits from Operations,” because the contract already
sets forth that definition as “Net Profits . . . attributable to the ordinary course
operation of the Company’s business.” Barney argues that the Board’s discretion
does not apply to this initial classification as “Net Profits from Operations,” but only
to a subsequent “modification” of this already determined “amount.”
This interpretation flies in the face of the plain language of the provision.
There is no dispute that “Net Profits from Operations” are defined as “Net Profits . .
. attributable to the ordinary course operation of the Company’s business.” Barney’s
argument ignores three important phrases. First, the phrase “provided that”
appears immediately after the definition of “Net Profits from Operations.” This
shows that the clause giving the Board the right to “modify” the “amount” is not an
additional modification on the initial classification of “Net Profits from Operations,”
but is the process of classifying “Net Profits from Operations” in the first place.
This interpretation is further confirmed by the second phrase Barney’s
argument ignores, namely that the “modifications” the Board is permitted to make
are permitted to be “inconsistent with the definition set forth in this paragraph.” In
other words, even if the clause does provide for a two-step process for determining
“Net Profits from Operations”—i.e., (1) the initial classification according to the

5

definition set forth in the contract, and (2) any “modification” by the Board—the
Board also has the power to “modify” the initial classification definition. This power
moots the limitation Barney’s interpretation would place on the Board’s discretion.
And third, the last clause of the provision states, “The portion of the
Company’s Net Profits . . . constituting Net Profits from Operations . . . shall be
determined by the Board of Managers in its sole discretion and such determination
shall be conclusive on the Members.” To the extent Barney has identified any
ambiguity in the preceding clauses (of which there is none), this clause removes it.
The Operating Agreement unambiguously grants the Board of Managers “sole
discretion” to classify Net Profits from Operations, and Barney’s interpretation of
the contract’s language does not serve to defeat Ocean Tomo’s motion.
2.

Good Faith and Fair Dealing

However, “[w]hen one party to a contract is vested with contractual
discretion,” as the Board of Managers is here, “it must exercise that discretion
reasonably and with proper motive, and may not do so arbitrarily, capriciously or in
a manner inconsistent with the reasonable expectations of the parties.” Interim
Health Care of N. Ill., Inc. v. Interim Health Care, Inc., 225 F.3d 876, 884 (7th Cir.
2000). Yet, the duty of good faith and fair dealing “cannot override an express term
of a contract.” Cromeens, Holloman, Sibert, Inc. v. AB Volvo, 349 F.3d 376, 396 (7th
Cir. 2003). It “is not an independent source of duties for the parties to a contract,”
but rather is “used as a construction aid in determining parties’ intent” with respect
to the duties or obligations imposed by the contract’s terms. Wilson v. Career Educ.

6

Corp., 729 F.3d 665, 687 (7th Cir. 2013); see also Cromeens, 349 F.3d at 395
(“Illinois courts use the covenant to determine the intent of the parties where a
contract is susceptible to two conflicting constructions.”); VC Mgmt., LLC v.
Reliastar Life Ins. Co., 195 F. Supp. 3d 974, 995 (N.D. Ill. 2016) (“an independent
duty of good faith and fair dealing does not appear to exist under Illinois law”).
Here, as discussed, the provision granting “sole discretion” to the Board of
Managers to determine whether certain profits constitute “Net Profits from
Operations” is unambiguous. The covenant of good faith and fair dealing does not
serve to impose a limitation on the discretion granted by this provision in and of
itself.
But Barney points out that the Operating Agreement provides, with respect
to “return of Capital Contributions or as to Net Profits, Net Losses or distributions,”
that “no Member shall have priority over any other Member.” R. 241-5 at 16 (§
6.05). This provision could reasonably be understood to impose a limitation on the
Board of Managers’ discretion with respect to classifying profits, to the extent that
profits cannot be classified in a manner that gives one member “priority over”
another. “Priority,” however, is not defined in the Operating Agreement, leaving the
intent of the parties with respect to the meaning of the term, and the provision’s
relation to the contract as a whole, “susceptible to conflicting constructions.” The
Seventh Circuit has applied the covenant of good faith and fair dealing in similar
circumstances. See Wilson, 729 F.3d at 676 (“[E]ven though the termination clause
also says [the defendant] has the right to terminate the Plan for any reason, the fact

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that the parties anticipated that [the defendant] might have to terminate the Plan
‘for regulatory compliance purposes’ implies that the parties had a reasonable
expectation about how [the defendant] would exercise its discretion in this very
situation.”); Interim Health, 225 F.3d at 884 (applying the covenant of good faith
and fair dealing where the contract provided one party the right to “withhold some
account leads, but the contract is vague about which leads it may withhold, and
what justifies withholding”). The ambiguity present when the section concerning
“priority of members” is applied to the Board’s discretion to classify “Net Profits
from Operations,” is similar to that in Wilson and Interim Health, and so opens a
space for the covenant of good faith and fair dealing to play a role.
In that regard, Barney points to the following email between Ocean Tomo’s
majority owners as evidence that the Ocean Tomo Board of Managers did not
exercise its discretion with respect to determining Net Profits from Operation in
good faith:
There is one other way to do it: treat the sale like an
operating item instead of a sale item. An argument could
be made for that too. If we did that I’d bet we get a
number close to the above because you own so much of the
firm and because our ET value generation is not far off of
our ownership percentages. If anything, you’ll gain at JB’s
expense.
R. 254-9 at 2. Ocean Tomo does not address this email in its brief. With its
references to “treating a sale like an operating item instead of a sale item,”
“ownership percentages,” and “gaining at JB’s expense,” this email could be
evidence that the Ocean Tomo Board of Managers exercised its discretion to

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prioritize the majority owners’ interests over Barney’s with respect to classifying
profits. On the basis of this evidence, a reasonable jury could find that Ocean Tomo
did not exercise its discretion in good faith. Therefore, Ocean Tomo’s argument
regarding the Board of Managers’ discretion under the Operating Agreement is not
a basis to grant its motion for summary judgment on Count I.
B.

Profits from the IPXI Transaction

With respect to the IPXI transaction in particular, Ocean Tomo contends that
it did not receive profits from that transaction, and thus, the Board of Managers
could not have abused its discretion in allocating profits that did not exist. In
support of this contention, Ocean Tomo cites an amended tax return stating that
Ocean Tomo did not receive a “net long-term capital gain (loss)” from this
transaction. But Ocean Tomo also admits that its two majority owners received
“adjustments to [their] partner capital accounts as a result of a change in the value
of Ocean Tomo’s partial ownership of IPXI.” R. 262 at 10-11 (¶¶ 18-19). Ocean Tomo
argues that Barney did not receive these adjustments “because he was not entitled
to receive distributions as a result of his breach of the confidentiality and noncompete provisions of the Operating Agreement.” Id.; see also R. 257 at 7 (“Mr.
Barney’s K-1s from 2013 and 2014 show no adjustment because as a Former
Member in breach of his non-compete and confidentiality requirements, he was not
entitled to any distributions.”). These arguments, however, imply that Ocean Tomo
did receive profits from the IPXI transaction that would have been distributed to
Barney but for Ocean Tomo’s contention that he was in breach of the Operating

9

Agreement. It may be that Barney was in breach of the Operating Agreement, and
that Barney’s breach was a justification for Ocean Tomo to disregard the
agreement. But that question has not been briefed on this motion. Since there is
evidence that Ocean Tomo may have received profits from the IPXI transaction, and
that Barney did not receive a share of those profits, the Court denies summary
judgment to Ocean Tomo on Barney’s claim for breach of the Operating Agreement
in Count I.
II.

Count VI – Fraud
The relationship between Ocean Tomo and Barney quickly deteriorated after

the initial agreements were reached in 2004. By 2007, an amendment to the
agreements was necessary to address certain disputes that had arisen. Barney
alleges that Ocean Tomo (through its officers) made the following fraudulent
representations to induce him to agree to the amended contracts on behalf of
PatentRatings in 2007:
1) Ocean Tomo would assume the obligation for all further
expenses associated with Ocean Tomo’s use and continued
development of the PatentRatings System, and that
PatentRatings would have no further obligation for such
expenses.
2) Ocean Tomo had not used and was not using the
PatentRatings Analysis (as defined in the License
Agreement) to provide information or reports to any
external clients of Ocean Tomo as part of any products or
services provided by its business units known as Expert
Services, Appraisals, Valuations, Investments, Risk
Management, and Corporate Finance.
3) Ocean Tomo had only used and was only using the
PatentRatings Analysis to provide information or reports
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to external clients of Ocean Tomo as part of the products
or services provided by its business units known as
Analystics and Ocean Tomo PatentRatings.
4) [A]ll revenues invoiced or collected by Ocean Tomo in
connection with the sale of any products or services that
used or incorporated any PatentRatings Analysis had
been reported to PatentRatings in accordance with the
terms of the License Agreement.
5) [T]here were no other revenues invoiced or collected by
Ocean Tomo prior to July 19, 2007 in connection with the
sale of any products or services that used or incorporated
any PatentRatings Analysis.
R. 175 ¶ 40.
A.

Representation 1

Ocean Tomo argues that the first representation is a representation of future
intent and is not actionable. See Ass’n Ben. Servs. v. Caremark Rx, Inc., 493 F.3d
841, 853 (7th Cir. 2007) (“[P]romissory fraud, involving a false statement of intent
regarding future conduct, is generally not actionable under Illinois law unless the
plaintiff also proves that the act was a part of a scheme to defraud.”). PatentRatings
relies on the exception to the rule that false statements of future intent are not
actionable when the statement is a part of a fraudulent scheme. “To invoke the
scheme exception, the plaintiff must allege and then prove that, at the time the
promise was made, the defendant did not intend to fulfill it.” Wigod v. Wells Fargo
Bank, N.A., 673 F.3d 547, 570 (7th Cir. 2012). “Such evidence would include a
pattern of fraudulent statements, or one particularly egregious fraudulent
statement.” Id.
PatentRatings argues that the “scheme exception” applies here because
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Ocean Tomo implemented [a royalty-cheating scheme]
across all its practice groups. This was an elaborate
scheme whereby Ocean Tomo would artificially depress
the price of bundled products and services that were
royalty bearing, while artificially elevating the price of
other bundled products and services that were allegedly
non-royalty-bearing and which were sold as part of the
same client engagement/transaction. Ocean Tomo would
issue separate invoices for each portion (a small invoice
and a large invoice) but only report the small invoice to
PatentRatings.
R. 255 ¶ 26. To support this argument, PatentRatings offers a declaration by
Barney, see R. 254-1 ¶ 38, and an expert report, see R. 254-8. The expert report
concludes that Ocean Tomo withheld royalties from PatentRatings. Barney’s
declaration explains the deceptive mechanism by which the royalties were withheld.
There are two primary problems with this argument with respect to the first
alleged misrepresentation. First, the first representation concerns PatentRatings’s
obligation to finance the continued development of the PatentRatings technology,
but the alleged scheme concerned concealment of royalties. The Court fails to see
how a scheme to conceal royalties is evidence of intent not to keep a promise
regarding PatentRatings’s financial obligations with respect to development of its
technology. Second, Barney’s declaration states that the scheme started in 2012. R.
254-1 ¶ 39. The Court also fails to see how a scheme that started in 2012 could be
evidence of Ocean Tomo’s intent in 2007 when the allegedly false statements were
made. Therefore, summary judgment is granted in Ocean Tomo’s favor with respect
to Count VI as it pertains to the first representation.

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B.

Representations 2 & 3

Apparently it was important to the parties that the PatentRatings technology
only be used to provide services to clients in certain of Ocean Tomo’s business units.
With representations 2 and 3, PatentRatings alleges that Ocean Tomo falsely made
assurances that the PatentRatings technology was only to be used in the business
units known as “Analytics” and “Ocean Tomo PatentRatings,” and not in the
business

units

known

as

“Expert

Services,”

“Appraisals,”

“Valuations,”

“Investments,” “Risk Management,” and “Corporate Finance.”
Ocean Tomo argues that these representations are contradicted by a
provision of the 2007 Amendment, and “it cannot possibly be reasonable to rely on a
statement that is directly contradicted by the contract the parties signed.” R. 239 at
11. In support of this argument, Ocean Tomo cites the following provision of the
2007 Amendment:
“External Data Usage” means any usage or inclusion of
PatentRatings Analysis or any derivative thereof by
[Ocean Tomo], which facilitates the provision of
information or reports actually delivered to [Ocean
Tomo’s] external clients or customers as part of [Ocean
Tomo’s] consulting services such as currently used by its
practice unit presently known as the “Analytics Practice
Group.” For the avoidance of doubt, “External Data
Usage” shall not mean the internal use of PatentRatings
Analysis such as currently used by [Ocean Tomo] as part
of its services presently known as Expert Services,
Appraisals, Investments, Risk Management and/or
Corporate Finance.
R. 241-4 at 2. Ocean Tomo argues that the last sentence of this provision shows that
Barney knew Ocean Tomo was using the PatentRatings technology in its “Expert

13

Services, Appraisals, Investments, Risk Management and/or Corporate Finance”
business units, such that it would have been unreasonable for Barney to rely on
representations 2 and 3 that Ocean Tomo was not using the PatentRatings
technology in those business units. Representations 2 and 3, however, specifically
promised not to use the PatentRatings technology in those business units to serve
“external clients.” By contrast, the sentence from the 2007 Amendment on which
Ocean Tomo relies only permits Ocean Tomo to use the PatentRatings technology in
those business units “internally.” The term “internally” is juxtaposed in the 2007
Amendment to the “external clients and customers” for whom Ocean Tomo is
permitted to use the PatentRatings technology in the “Analytics” business unit.
Thus, contrary to Ocean Tomo’s argument, the 2007 Amendment can be reasonably
interpreted to conform to (rather than contradict) the promise in representations 2
and 3 that Ocean Tomo would not use the PatentRatings technology to serve
external clients in its “Expert Services, Appraisals, Investments, Risk Management
and/or Corporate Finance” business units. On this interpretation, the 2007
Amendment does not serve to undermine Barney’s reliance on representations 2
and 3. For this reason, the Court denies Ocean Tomo’s motion for summary
judgment with respect to Count VI as it pertains to representations 2 and 3.
C.

Representations 4 & 5

The fourth and fifth representations concern Ocean Tomo’s reporting of
revenue that might generate royalties to PatentRatings. Barney stated in his
declaration, and Defendants have presented an expert report showing, that Ocean

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Tomo failed to pay royalties beginning in 2005, which would make representations
four and five false. Ocean Tomo has not made any contrary argument. Thus, the
Court denies Ocean Tomo’s motion for summary judgment on Count VI as it
pertains to representations four and five.
III.

Count III – Breach of the License Agreement
Ocean Tomo seeks summary judgment on PatentRatings’s claim for royalties

under the License Agreement arguing that the patents at issue are invalid, which
would mean Ocean Tomo is not liable for royalties. PatentRatings argues that
Ocean Tomo is precluded from making this argument by a “no-challenge” clause in
the License Agreement (entered into in 2004), which was reaffirmed by the 2007
Amendment. The no-challenge provision in the License Agreement provides as
follows:
[Ocean Tomo] further agrees not to challenge, or to assist
or encourage any third party in challenging, the validity
or enforceability of the Licensed Rights in any court or
other tribunal anywhere in the world.
R. 241-1 at 7 (§ 5.1).
A.

Enforceability of the No-Challenge Clause

Although the parties do not discuss it, the no-challenge clause in the 2004
License Agreement is unenforceable. Prior to the Supreme Court’s decision in Lear,
Inc. v. Adkins, a patent license agreement (even without a no-challenge clause)
served to estop a licensee from denying the validity of the patent as a defense to a
lawsuit for royalties. 395 U.S. 653 (1969). In Lear, the Supreme Court abolished
this doctrine and held instead that the “important public interest in permitting full
15

and free competition in the use of ideas” required permitting licensees to challenge
a patent’s validity. Id. at 670. Subsequent to Lear, courts have found Lear’s
reasoning to mean that “no-challenge” clauses in license agreements are
unenforceable. See Alfred C. Server & Peter Singleton, Licensee Patent Validity
Challenges Following Medimmune: Implications for Patent Licensing, 3 HASTINGS
SCI. & TECH. L.J. 243, 403 (2011) (“[V]irtually every post-Lear court and
commentator that has considered the matter has concluded that, in a typical
licensing arrangement, an explicit licensee ‘no-challenge’ clause is invalid and
unenforceable under Lear.”) (citing cases and commentaries); Richard W.
Goldstucker, Stop the Bleeding: MedImmune Ends the Unjustified Erosion of Patent
Holders’ Rights in Patent Licensing Agreements, 16 J. INTELL. PROP. 137, 141 (20082009) (“[T]he Supreme Court’s decision in Lear has guided courts to strike down nochallenge clauses in license agreements.”); id. at 139 (“Licensees can negotiate a
patent license and face no risk in challenging the validity of the patent.”).
Federal courts also agree, however, that no-challenge clauses in agreements
and consent decrees settling litigation of claims for royalties are enforceable. See
Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1369-70 (Fed. Cir. 2001); Rates Tech.
Inc. v. Speakeasy, Inc., 685 F.3d 163, 169-71 (2d Cir. 2012). In Flex-Foot, the
Federal Circuit explained that no-challenge clauses are enforceable in these
circumstances because Lear’s concern with the “full and free competition in the use
of ideas” is trumped by two other principles: (1) “the importance of res judicata and
its hierarchical position in the realm of public policy”; and (2) the “compelling public

16

interest and policy in upholding and enforcing settlement agreements voluntarily
entered into because enforcement of settlement agreements encourages parties to
enter into them—thus fostering judicial economy.” 238 F.3d at 1369.1 The court held
that the licensee was barred from further challenges to the patent’s validity because
[o]nce an accused infringer has challenged patent validity,
has had an opportunity to conduct discovery on validity
issues, and has elected to voluntarily dismiss the
litigation with prejudice under a settlement agreement
containing a clear and unambiguous undertaking not to
challenge validity and/or enforceability of the patent in
suit, the accused infringer is contractually estopped from
raising any such challenge in any subsequent proceeding.
Id. at 1370.
Although the Second and Ninth Circuits agree with the Federal Circuit that
no-challenge clauses in agreements settling litigation are enforceable, they will not
enforce no-challenge clauses in pre-litigation agreements. These courts have
reasoned that “it [is] unimportant that . . . the [no-challenge clause in a prelitigation settlement agreement] is part of a settlement agreement rather than of a
typical patent licensing agreement,” because it would be “easy to couch licensing

In a previous opinion in this case, Judge Gottschall applied the law of the Federal
Circuit to this issue. See R. 147 at 18 (Ocean Tomo, LLC v. Barney, 133 F. Supp. 3d
1107, 1119 (N.D. Ill. 2015)). The parties have not sought reconsideration of that
holding on this motion, and the Court also sees no reason to do so. See Baseload
Energy, Inc. v. Roberts, 619 F.3d 1357, 1361 (Fed. Cir. 2010) (“the question of
whether a settlement agreement bars a party from challenging the validity of a
patent in a subsequent action is intertwined with the substance of enforcement or a
patent right” which is governed by Federal Circuit precedent); Flex-Foot, 238 F.3d
at 1365 (“[W]hether public policy precluding patent license estoppel should extend
to a waiver of validity challenges in a settlement agreement[ ] is intimately related
with the substance of enforcement of a patent right. Therefore, we will apply our
law to these issues.”).
1

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arrangements in the form of settlement agreements,” thereby “undermin[ing]
[Lear’s concern with] the public interest in discovering invalid patents.” Rates Tech.,
685 F.3d at 171-72 (quoting Massillon-Cleveland-Akron Sign Co. v. Golden State
Adver. Co., 444 F.2d 425, 427 (9th Cir. 1971)).
Unlike the Second and Ninth Circuits, the Federal Circuit has not had
occasion to rule definitively on no-challenge clauses in pre-litigation settlement
agreements. But in Baseload Energy, Inc. v. Roberts, the Federal Circuit stated the
following in dicta:
[The licensee] argues that [the Flex-Foot] factors are
determinative, and that the Settlement Agreement in this
case is inadequate to release its patent invalidity claims,
because the prior litigation between the parties did not
involve patent invalidity issues or actual litigation on
those issues. We disagree. Contrary to [the licensee’s]
argument, while the absence of a prior dispute and
litigation as to invalidity is pertinent, we do not think
that a settlement agreement is ineffective to release
invalidity claims unless the exact circumstances described
in Flex-Foot are present. Each case must be examined on
its own facts in light of the agreement between the
parties. In the context of settlement agreements, as with
consent decrees, clear and unambiguous language barring
the right to challenge patent validity in future
infringement actions is sufficient, even if invalidity claims
had not been previously at issue and had not been
actually litigated.
619 F.3d at 1363. The court held that the release provision in Baseload did not
serve to bar patent validity challenges because (1) the release was ambiguous in
that regard, and (2) the fact that the settlement included only an option for a license
demonstrated that the parties had not intended to bar claims of patent
infringement or the defense of patent invalidity (since the patent holder who does
18

not grant a license presumably would want to retain the right to prosecute
infringement). But Baseload’s statement that a “clear and unambiguous” nochallenge clause might be enforceable “even if invalidity claims had not been
previously at issue and had not been actually litigated,” lead Judge Gottschall, and
at least two other district courts, to hold that a no-challenge clause in a prelitigation settlement agreement “can be enforceable.” R. 147 at 21 (Ocean Tomo, 133
F. Supp. 3d at 1121); see also TMI Prod., Inc. v. Rosen Elecs., L.P., 2013 WL
12114078, at *5 (C.D. Cal. Nov. 27, 2013) (“Although Baseload’s comments on FlexFoot appear to be dicta, the Court finds them persuasive.”); Kee Action Sports, LLC,
v. Shyang Huei Indus. Co., Ltd, 2015 WL 9581808, at *6 (D. Or. Dec. 30, 2015)
(“Baseload make[s] clear that no-challenge clauses can be enforceable under Federal
Circuit law, depending on the facts of each case.”). Other courts, however, have
emphasized that the statement at issue is dicta and recognized that “the Federal
Circuit did not actually reach or decide the issue of whether a pre-litigation nochallenge provision is enforceable.” Ford Motor Co. v. Versata Software, Inc., 2016
WL 6650380, at *4 n.1 (E.D. Mich. Nov. 10, 2016); see also Rates Tech., 685 F.3d at
174.
PatentRatings argues that the Court should enforce the no-challenge clause
and deny Ocean Tomo’s summary judgment motion, based on the dicta in Baseload,
even though the parties had not litigated patent validity issues prior to the 2007
Amendment, and there is no indication that the disputes that were settled in 2007
had anything to do with patent validity. According to PatentRatings, what matters

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is that the 2007 Amendment constituted a “settlement” of certain disputes the
parties had, and that the “settlement” included a reaffirmation of a clear and
unambiguous bar to challenges of patent invalidity. PatentRatings contends that
Baseload’s statement that no-challenge clauses can be enforceable even if patent
validity had not previously been litigated or disputed shows that the no-challenge
clause in this case should be enforced. Ocean Tomo, on the other hand, contends
that the 2007 Amendment is not a “settlement agreement” for purposes of
Baseload’s reasoning because it did not end any litigation. Ocean Tomo argues that
PatentRatings’ application of Baseload to this case cannot be correct, for “[i]f a
business negotiation of the type between Ocean Tomo and Defendants in 2007 could
trigger a settlement exception, the exception would swallow the Lear rule.” R. 239
at 14.
Although the parties and courts have speculated based on Baseload’s dicta
that the Federal Circuit would enforce no-challenge clauses in pre-litigation
settlement agreements as long as the language of the clause was clear and
unambiguous, the meaning of that dicta is not clear. The Baseload court noted that,
“in the context of settlement agreements,” it was unnecessary for “invalidity claims
[to have] been previously at issue and [to have] been actually litigated,” a statement
that clearly requires that the parties had to have previously disputed issues
regarding patent invalidity. But whether the court intended by that statement to
say that a settlement that does not end pending litigation qualifies for an exception
to the Lear rule against no-challenge clauses is not as obvious. To the Court’s

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knowledge, no court has ever held that a pre-litigation settlement qualifies for the
Lear exception.
The underlying logic of the Federal Circuit’s decision, and the decisions of the
Second and Ninth Circuits Neither party addresses, which neither party addresses,
sheds some light on this subject. The exception to Lear’s prohibition of no-challenge
clauses in license agreements was founded upon the public policy favoring
settlement agreements (as well as res judicata with respect to consent decrees). As
the Federal Circuit noted in Flex-Foot, public policy favors settlements because they
foster judicial economy. Read in light of Flex-Foot’s emphasis on judicial economy as
the justification for the settlement exception, Baseload’s dicta should not be
understood as an endorsement of a pre-litigation settlement exception to Lear. Since
pre-litigation settlements are not as certain to have preserved judicial resources as
settlements that end pending litigation, they do not trigger the conditions that
justify the exception. Moreover, as the Second and Ninth Circuits have recognized,
permitting the possibility that pre-litigation settlements can include enforceable nochallenge clauses would encourage patent holders to couch “license agreements” as
“settlement agreements,” thereby undermining Lear’s concern with protecting the
ability of licensees to challenge patent validity. As those courts have said, such an
exception would swallow the rule.
Therefore, the Court holds that as a provision in a pre-litigation agreement—
regardless of whether it is properly considered a “settlement” agreement—the nochallenge clause in this case is not enforceable. Thus, the no-challenge clause

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cannot serve as a basis to deny Ocean Tomo’s motion for summary judgment on the
invalidity of the patents as PatentRatings argues. Furthermore, since the Court has
held that the no-challenge clause is unenforceable as a matter of law, the Court has
reconsidered the earlier ruling in this case that a trial is necessary to determine
whether the no-challenge clause is enforceable. That issue will no longer be a part
the trial.
B.

Other Forms of Estoppel

PatentRatings also argues that Ocean Tomo should be estopped from
challenging the validity of the patents under “the doctrines of equitable estoppel,
assignor estoppel, and judicial estoppel.” R. 254 at 20.2
1.

Equitable Estoppel

PatentRatings contends that “there are . . . circumstances in which the
equities of the contractual relationships between the parties should deprive one
party . . . of the right to [challenge potentially invalid patents].” R. 113 at 18
(quoting Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220, 1225 (Fed. Cir.
1988)); see also Roberts v. Sears, Roebuck & Co., 573 F.2d 976, 982 (7th Cir. 1978)
(holding that Lear does not bar a plaintiff’s recovery where “[t]here is no balance of
equities between [defendant/licensee] and plaintiff in their contractual relations”).
However, both of the cases PatentRatings cites to support its argument for
In support of these arguments, PatentRatings referenced its briefs on the prior
summary judgment motion in this case. Ocean Tomo argues that this is improper,
and requests permission for additional briefing should the Court reach these issues.
The Court has reviewed the earlier briefing on these issues. Since the Court rejects
PatentRatings’s arguments, Ocean Tomo has not suffered any prejudice and no
further briefing from Ocean Tomo is necessary.

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“equitable estoppel” concerned “assignees” of patent rights, as opposed to licensees
like Ocean Tomo. Roberts held that an assignee of a patent could not challenge the
patent’s validity because “the primary evil that the [Supreme Court] in Lear sought
to end, that the public might have to pay tribute to a ‘would-be monopolist’ [in the
form of a patent holder whose patent’s validity could not be challenged], is
completely irrelevant” when there has been a “complete assignment” of the patent
rights at issue. 573 F.2d at 982. Additionally, Diamond Scientific expressly applied
“assignor estoppel” and did not contemplate a separate doctrine of “equitable
estoppel” relevant to patent litigation as PatentRatings contends. 848 F.2d at 1225
(“Appellants argue that assignor estoppel is necessarily a variation of estoppel by
conduct and should be governed by the traditional elements of equitable estoppel.
But the Supreme Court has never analyzed assignor estoppel by reference to the
elements of equitable estoppel and has explicitly recognized assignor estoppel to be
the functional equivalent of estoppel by deed.”). Thus, to the extent that Ocean
Tomo can be equitably estopped from challenging the patents’ validity,
PatentRatings has not cited any authority outside of the context of assignment. The
Court will address that authority next.
2.

Assignor Estoppel

The Federal Circuit has explained that
Assignor estoppel is an equitable doctrine that is mainly
concerned with the balance of the equities between the
parties. Those in privity with the assignor partake of that
balance; hence, extension of the estoppel to those in
privity is justified.

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What constitutes “privity” varies, depending on the
purpose for which privity is asserted.
Privity, like the doctrine of assignor estoppel itself, is
determined upon a balance of the equities. If an inventor
assigns his invention to his employer company A and
leaves to join company B, whether company B is in privity
and thus bound by the doctrine will depend on the
equities dictated by the relationship between the inventor
and company B in light of the act of infringement. The
closer that relationship, the more the equities will favor
applying the doctrine to company B.
Shamrock Tech., Inc. v. Med. Sterilization, Inc., 903 F.2d 789, 793 (Fed. Cir. 1990)
(internal citations omitted). In other words, assignor estoppel “prevents one who
has assigned the rights to a patent (or patent application) from later contending
that what was assigned is a nullity.” Diamond Scientific, 848 F.2d at 1224. The
underlying rationale is that “an assignor should not be permitted to sell something
and later to assert that what was sold is worthless, all to the detriment of the
assignee.” Id.
PatentRatings argues that assignor estoppel applies here because Barney
assigned the patents to PatentRatings, and then after Barney joined Ocean Tomo,
Ocean Tomo asserted that the patents are invalid. While the facts of this case
superficially match the facts held by the Federal Circuit in Shamrock to implicate
assignor estoppel, the underlying equities do not. Although Barney “joined” Ocean
Tomo after assigning the patents to PatentRatings, Barney also never “left”
PatentRatings. He remains its majority owner. And although Ocean Tomo’s use of
the patented technology coincided with Barney joining Ocean Tomo, Barney’s
presence at Ocean Tomo did not enable Ocean Tomo to begin infringing the patents
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to PatentRatings’s detriment. Rather, PatentRatings granted Ocean Tomo licenses
to use the patents. Most important, although there might be privity between Ocean
Tomo and Barney,3 Ocean Tomo’s challenge to the patents’ validity cannot be
imputed to Barney, which is the concern with privity in assignor estoppel. Rather,
unlike the circumstances that implicate the equities associated with assignor
estoppel, the assignor here (Barney) is not on the side arguing for invalidity, but
instead through his majority ownership of PatentRatings is opposing Ocean Tomo’s
invalidity argument. Thus, the primary concern of the assignor estoppel
argument—that the assignor would argue for invalidity after assigning the patent
rights—is not present here. Accordingly, assignor estoppel is not a basis to deny
Ocean Tomo’s motion.
3.

Judicial Estoppel

Lastly, PatentRatings also argues that Ocean Tomo should be judicially
estopped from challenging the validity of certain of the patents at issue because
Ocean Tomo participated in the patent prosecution proceedings before the Patent
Office. Judicial estoppel only applies, however, when “the party’s later position [is]
clearly inconsistent with its earlier position.” In re Airadigm Comms., Inc., 616 F.3d
642, 661 (7th Cir. 2010). Here, Ocean Tomo’s invalidity argument is based on the
Supreme Court’s decisions in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012), and Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347
(2014), which were rendered after the Patent Office proceedings for the patents at
In light of the Court’s holding, it is unnecessary for the Court to decide whether
privity exists.

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issue here. Since the legal basis for the patents’ invalidity was not available at the
time of the Patent Office proceedings, it was not inconsistent for Ocean Tomo to
implicitly assert their validity at that time. Moreover, to the extent Ocean Tomo’s
invalidity argument here can be considered inconsistent with its argument during
the Patent Office proceedings, judicial estoppel should not be applied “when the
[party’s] change in position resulted from circumstances outside their control—
namely, a change in controlling . . . law.” Jarrard v. CDI Telecomms., Inc., 408 F.3d
905, 915 (7th Cir. 2005). Thus, the Court will not deny Ocean Tomo’s motion for
summary judgment on Count III on the basis of estoppel.
C.

Patent Validity

Ocean Tomo argues that the patents at issue are invalid such that the Court
should grant summary judgment in its favor on PatentRatings’s royalty claims.
Ocean Tomo concedes, however, that even if the Court were to find the patents
invalid, Ocean Tomo could still be liable for royalties earned prior to December 21,
2012, the date when Ocean Tomo first raised the invalidity defense. See R. 239 at 3.
For this reason, even if the Court were to hold the patents invalid, the trial would
still have to address seven years’ worth of allegedly “royalty-bearing revenues.” See
R. 254-1 ¶ 37 (according to Barney, “[d]iscovery obtained in this case has now
confirmed that, from 2005 to 2016, Ocean Tomo systematically failed to report more
than $8.25 million in royalty-bearing revenues”). It does not appear that deciding
whether the patents are valid under Alice at this stage of the proceedings would
materially reduce the amount of evidence presented at trial. Thus, the patent

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validity issue is more relevant to damages than liability, and there is no need to
address it now. The Court will address it if necessary during post-trial proceedings.
Conclusion
For the foregoing reasons, Ocean Tomo’s motion for summary judgement, R.
238, is denied with respect to Counts I and III. Ocean Tomo’s motion also is denied
with respect to Count VI as it pertains to the second, third, fourth, and fifth alleged
misrepresentations in paragraph 40 of Defendants’ Second Amended CounterClaim. Ocean Tomo’s motion is granted with respect to Count VI as it pertains to
the first alleged misrepresentation in paragraph 40 of Defendants’ Second Amended
Counter-Claim.
ENTERED:
______________________________
Honorable Thomas M. Durkin
United States District Judge
Dated: June 14, 2017

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