Kenall Manufacturing Company v. Cooper Lighting, LLC et al

Filing 674

MEMORANDUM Opinion and Order: For the reasons stated in the attached Memorandum Opinion and Order, the parties' cross-motions for partial summary judgment and to bar testimony of certain experts 474 479 484 490 496 504 508 are deni ed in part and granted in part. Cooper's motion to strike and for sanctions 644 is denied. By April 2, 2024 the parties shall submit a joint status report to the Court that states the following: 1) if the parties intend to renew settlement dis cussions in the light of the Court's rulings on summary judgment; 2) if the parties cannot reach an agreement to provide more specific disclosures for their experts' materials-considered lists, identify each disclosure at issue; and 3) set forth the parties' respective positions regarding the Ricca and Conroy expert reports. A status date will be set for April 4, 2024 at 9:15 a.m. to discuss the length of trial and to set a trial date. Because the Court already has a lengthy civil trial starting in September, this case will be set for trial by jury sometime prior to September. Signed by the Honorable Thomas M. Durkin on 3/14/2024. Mailed notice. (ecw, )

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
KENALL MANUFACTURING COMPANY,
Plaintiff,

No. 17 CV 4575

v.

Judge Thomas M. Durkin

COOPER LIGHTING, LLC and
EATON CORPORATION,
Defendants.
MEMORANDUM OPINION AND ORDER
Kenall Manufacturing Company brought this suit against Defendants Cooper
Lighting, LLC and Eaton Corporation, alleging patent infringement and breach of
contract. R. 1. With discovery complete, the parties move for summary judgment on
several issues and to bar testimony of certain experts. R. 474, 479, 484, 490, 496, 504,
508. Defendants also move to strike certain disclosures and documents produced by
Kenall after the close of discovery. R. 644. The Court has already ruled, in part, on
these issues, R. 628, and resolves the remaining issues herein. For the reasons stated
below, the motions are denied in part and granted in part.
Background
Kenall and Cooper are competing commercial lighting manufacturers. R. 540
¶¶ 1–3; R. 549 ¶ 40. In 2012, Eaton acquired Cooper, which operates as Eaton’s
Lighting Division. R. 549 ¶ 4. For ease of reference, Eaton and Cooper are referred to
together as “Cooper”.

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Kenall holds several patents on technology practiced in its Millenium Stretch
lighting products. R. 540 ¶¶ 4, 8. The first, U.S. Patent No. 6,984,055 (“the ’055
Patent”), issued on January 10, 2006, covers a “modular lighting fixture adaptable
for being implemented in various shapes and configurations.” R. 1-2 at p. 11; R. 549
¶ 8. In 2007, Kenall sued Cooper, alleging that Cooper’s Fail-Safe Harmony VR
Linear Series (“HVL”) lighting fixtures infringed the ’055 Patent. R. 540 ¶¶ 10, 13; R.
549 ¶ 1. The parties resolved that suit pursuant to a Settlement Agreement and
Confidential License Agreement (together, “Agreement”). R. 1-1; R. 540 ¶ 14; R. 549
¶ 1. The Agreement is governed by Illinois law. R. 1-1 at p. 41, § 14. In exchange for
full compliance by Cooper with the Agreement, Kenall agreed to waive its prior claims
against Cooper for patent infringement. Id. at p. 3, § 3.
The Agreement granted Cooper “a worldwide, nonexclusive license” under the
’055 Patent and any patents stemming therefrom (collectively, the “Subject Patents”)
to manufacture and sell Cooper’s “Linear Continuous” and “Linear Single” products
(respectively, the “Subject Continuous Products” and “Subject Single Products”;
collectively, the “Subject Products”). Id. at pp. 35–36, § 1. In return, Cooper agreed to
the following: to make a one-time payment of $30,000 within seven days of executing
the Agreement; to pay a five percent royalty on any Subject Single Products sold from
January 1, 2008 to April 1, 2008 (if the products had not been redesigned); to pay a
five percent royalty on all Subject Continuous Products sold from January 1, 2008
through expiration of the last Subject Patent; to provide written reports indicating

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net sales of Subject Products; and to place a patent notice on every licensed product
starting December 31, 2007. Id. at pp. 36–39, §§ 2, 5.A, 5.B, 5.C, 7, 9.
The Agreement included a “No Challenge Clause,” which provided that
“Cooper does not admit infringement, validity or enforceability of the Subject Patents,
and reserves all defenses to any allegation of infringement related thereto; provided,
however that Cooper shall refrain from contesting the validity, enforceability, or
infringement of the Subject Patents in any court of law or other forum unless Kenall
asserts the Subject Patents against Cooper products other than the Subject
Products.” Id. at pp. 41–42, § 15.
After Kenall and Cooper executed the Agreement, Kenall obtained additional
patents for modular lighting technology stemming from the ’055 Patent, including
U.S. Patent No. 7,494,241 (“the ’241 Patent”), issued on February 24, 2009, and U.S.
Patent No. 8,550,656 (“the ’656 Patent”), issued on October 8, 2013. R. 540 ¶ 4; R. 549
¶ 8. The ’241 Patent was reissued as U.S. Patent No. RE45,563 (“the ’563 Patent”) on
June 16, 2015, and the ’055 Patent was reissued as U.S. Patent No. RE45,591 (“the
’591 Patent”) on June 30, 2015. R. 549 ¶ 8.
In this suit, Kenall alleges that, beginning in 2008, Cooper breached the
Agreement by failing to make royalty payments, failing to mark with the required
patent notices, and failing to redesign the Subject Single Product. 1 R. 1 ¶¶ 48–53.
Kenall also alleges that Cooper infringed its patents by selling Subject Single

As noted below, infra Part I.D, Kenall concedes that there is no independent breach
of contract claim for failure to redesign.

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Products after April 1, 2008. R. 1 ¶¶ 71–76; see R. 87 at pp. 10–14 (court order limiting
patent infringement claim to Subject Single Products sold after April 1, 2008).
Cooper asserted a variety of affirmative defenses, R. 93, which Kenall moved
to strike, R. 95. In striking Cooper’s noninfringement defense, the court held that the
No Challenge Clause barred “Cooper’s defense that the Subject Patents do not cover
the Subject Products.” R. 124 at p. 13. Because Cooper cannot contest Kenall’s
assertion that the Subject Patents cover the Subject Products, the Court ruled that
discovery related to claim construction and a Markman hearing were unnecessary.
See R. 201. Cooper’s remaining affirmative defenses are unclean hands, waiver, and
failure to mitigate. R. 93; R. 124 at p. 33.
The Court ruled, in part, on the parties’ motions to bar expert testimony and
for partial summary judgment. R. 628. The following issues remain outstanding and
will be addressed herein: Kenall’s motion for summary judgment on it claims for
liability and damages (excluding its arguments on lost profits, which the Court has
already denied), R. 496; Cooper’s motion for summary judgment (excluding its
arguments on lost profits and the royalty rate, which the Court has already denied),
R. 508; Kenall’s motion for summary judgment on Cooper’s remaining affirmative
defenses, R. 490; Cooper’s motion to bar Michelle Bennis’ expert testimony on breach
of contract damages and restitution, R. 506 at p. 18–20; Kenall’s motion to bar certain
expert testimony of Ken Lewis, R. 484; Kenall’s motion to bar certain expert
testimony of Steven Ricca, R. 474; Kenall’s motion to bar certain expert testimony of
Richard Conroy, R. 479; and Cooper’s motion to strike and for sanctions, R. 644.

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Analysis
I.

Motions for Summary Judgment
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 Dunn v. Menard, Inc., 880 F.3d 899, 905
(7th Cir. 2018). At summary judgment, the Court’s function is “to determine whether
there is a genuine issue for trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249
(1986). The Court considers the evidentiary record and must view the evidence and
draw all reasonable inferences from that evidence in the light most favorable to the
nonmovant. Horton v. Pobjecky, 883 F.3d 941, 948 (7th Cir. 2018). The Court does not
“weigh conflicting evidence, resolve swearing contests, determine credibility, or
ponder which party’s version of the facts is most likely to be true.” Stewart v. Wexford
Health Sources, Inc., 14 F.4th 757, 760 (7th Cir. 2021). Ultimately, summary
judgment is not proper “if the evidence is such that a reasonable jury could return a
verdict for the nonmoving party.” Anderson, 477 U.S. at 248.
A. Patent Infringement for Subject Single Products Sold After
April 1, 2008
Kenall moves for summary judgment finding that the Subject Single Products
sold by Cooper after April 1, 2008 infringe the Subject Patents. R. 603 at pp. 16–19.
Here, there is no “genuine issue for trial,” Anderson, 477 U.S. at 249, because the
Court has already and repeatedly barred Cooper from contesting this issue.

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There is no dispute that Cooper sold Subject Single Products after April 1,
2008, 2 R. 549 ¶ 19, that all patents asserted in this lawsuit are Subject Patents,
R. 549 ¶ 8, and that the No Challenge Clause bars Cooper from contesting
infringement if the Subject Patents are asserted against the Subject Products (which
include Subject Single Products), R 1-1 at pp. 41–42, § 15. Cooper ignores this and
argues that Kenall should have proffered an expert to conduct a claim analysis
comparing the Subject Single Products to the Subject Patents. R. 547 at pp. 30–32.
The Court has already determined that “[a]ll sales of Subject Single Products
after April 1, 2008 were unauthorized and therefore subject to an infringement
claim.” R. 87 at p. 13. The Court has also already determined that the No Challenge
Clause of the Agreement bars Cooper from contesting infringement. See R. 124 at
pp. 5–14 (“The No Challenge Clause therefore bars Cooper’s noninfringement
defense—that is Cooper’s defense that the Subject Patents do not cover the Subject
Products.”). Indeed, the Court has found that, for this lawsuit, the Subject Products
infringe the Subject Patents. See May 16, 2019 Hr’g Tr. at p. 15:5–11 (“[F]or purposes
of [this] litigation, Cooper is admitting that the Subject Patents cover the Subject
Products.”). Cooper’s argument that Kenall should proffer an expert to conduct a
claim analysis disregards the Court’s prior rulings.

Cooper admits that it sold Subject Single Products after April 1, 2008 but contends
that it replaced the Subject Single Products with a redesign in 2016. R. 549 ¶ 19.
When the Court refers to “Subject Single Products”, it means the original nonredesigned products. See R. 189 at pp. 9–10 (court order clarifying that “Subject
Single Products” include “only the fixed set of products specifically identified in
Exhibit B” of the Agreement.).Whether the redesigned products infringe the Subject
Patents is not addressed here.
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Consistent with its previous rulings, the Court finds that the Subject Single
Products sold by Cooper after April 1, 2008 infringe the Subject Patents and grants
Kenall’s motion for summary judgment on this issue. 3 See Alston v. King, 157 F.3d
1113, 1116 (7th Cir. 1998) (“As a general principle of judicial decision-making . . .
[there is] a presumption that a ruling made at one stage of the proceedings will be
adhered to throughout the suit.”).
B. Breach of Contract for Subject Single Products Sold After
April 1, 2008
Kenall moves for summary judgment finding that the Subject Single Products
sold by Cooper after April 1, 2008 breached the Agreement. R. 603 at pp. 19–21. The
Court has already analyzed the language of the Agreement with respect to this issue.
See R. 87 at pp. 12–13. As relevant, the Court found that although Cooper’s license to
sell the Subject Single Products expired on April 1, 2008, “[n]o single provision in the
[] Agreement expressly obligated Cooper to cease selling the Subject Single Products
by April 1.” Id. at 12. In other words, the language of the Agreement is silent with
respect to Cooper’s obligations after April 1 regarding the Subject Single Products.
Id. at 12–13; see also R. 1-1 (the Agreement). For Kenall to bring a breach of contract
claim on this issue, the Court would need to find an implied negative covenant in the
Agreement that prohibits Cooper from selling the Subject Single Products after April
1, 2008.
Kenall raises additional arguments that Cooper breached the No Challenge Clause
by contesting patent infringement in this case and as part of its summary judgment
briefing. R. 603 at pp. 30–32. Because the Court grants summary judgment on this
issue and rejects Cooper’s arguments contesting patent infringement, the Court need
not reach Kenall’s additional arguments.

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Contract interpretation is a question of law which the Court may resolve at
summary judgment. Cont’l Cas. Co. v. Nw. Nat. Ins. Co., 427 F.3d 1038, 1041 (7th
Cir. 2005). Implied covenants should not be introduced into contracts unless
“absolutely necessary to effectuate the intention of the parties.” B & J Mfg. Co. v.
Hennessy Indus., Inc., 493 F. Supp. 1105, 1132 (N.D. Ill. 1979) (internal citations
omitted), aff’d 663 F.2d 1075 (7th Cir. 1981); see also Beraha v. Baxter Health Care
Corp., 956 F.2d 1436, 1441 (7th Cir. 1992) (courts do “not lightly find implied
obligations of any kind”); Mid-W. Energy Consultants, Inc. v. Covenant Home, Inc.,
815 N.E.2d 911, 916 (Ill. App. Ct. 2004) (courts find implied covenants only where
“necessary . . . in order to effect the purposes of the parties making the contract”).
Here, introducing an implied covenant is not absolutely necessary to effectuate
the intention of the parties. Even assuming the parties intended the Agreement to
operate as an enforcement mechanism for Kenall to obtain damages if Cooper sold
the Subject Single Products after April 1, Kenall already has an independent
enforcement mechanism. As discussed above, Kenall’s claim of patent infringement
for Single Subject Products sold after April 1 has been decided in its favor. Thus, the
parties’ intent is effectuated absent the implied covenant. See B & J Mfg. Co., 493 F.
Supp. at 1132 (internal citations omitted) (“[T]he possibility of a patent infringement
suit to protect [plaintiff’s] rights . . . under the agreement negates any inference that
the implication of such a covenant is absolutely necessary to the effectuation of the
parties’ intentions.”). The Court thus declines to read an implied covenant into the
Agreement. Absent an implied covenant, Kenall has no legal basis to support a breach

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of contract claim for Subject Single Products sold after April 1, 2008. Kenall’s motion
for summary judgment is denied on this issue and Kenall’s breach of contract claim
for Subject Single Products sold after April 1, 2008 is dismissed. 4
C. Failure to Mark
The parties bring cross-motions for summary judgment regarding Kenall’s
failure to mark claim. R. 509 at pp. 17–18; R. 603 at pp. 25–30. Under the Agreement,
Cooper was required to mark every Licensed Product with a patent notice starting in
2008. R. 1-1 at p. 39, § 9. There is no dispute that Cooper failed to mark the products
until September 10, 2015 at the earliest. R. 549 ¶ 30. The issue is whether Kenall can
demonstrate damages. See TAS Distrib. Co. v. Cummins Engine Co., 491 F.3d 625,
631 (7th Cir. 2007) (“Merely showing that a contract has been breached without
demonstrating actual damage does not suffice, under Illinois law, to state a claim for
breach of contract.”). As a result of Cooper’s failure to mark, Kenall claims damages
exclusively in the form of reputational harm. R. 603 at pp. 27–30.
Courts have consistently held that “reputational damages cannot be recovered
under a breach of contract theory.” Maroon Soc’y v. Unison Consulting Inc., 2020 WL
5076688, at *5 (N.D. Ill. Aug. 26, 2020); see, e.g., Rice v. Community Health Ass’n, 203
F.3d 283, 288 (4th Cir. 2000) (“Courts have universally rejected claims for damages
to reputation in breach of contract actions reasoning that such damages are too
speculative and could not reasonably be presumed to have been contemplated by the

Because Kenall may not bring a breach of contract claim for Subject Single Products
sold after April 1, 2008, the Court need not reach the parties’ arguments regarding
damages for this claim.

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parties when they formed the contracts.”); Beverage Realty, Inc. v. Chatham Club,
LLC, 2003 WL 444572, at *12 (N.D. Ill. Feb. 21, 2003) (“[A] party . . . is not entitled
to any damages to its reputation caused by breach of contract.”).
Kenall argues that reputational damages are proper because courts have found
reputational harm in claims for trademark and patent infringement. R. 603 at p. 28–
29. But this is a breach of contract claim, and Kenall’s citations to cases involving
trademark and patent infringement claims are inapplicable. Indeed, Kenall relies on
cases that analyze reputational harm in the context of injunctions, where the courts
granted injunctions on the presumption that money damages were insufficient to
measure or calculate reputational harm. See, e.g., Kraft Foods Grp. Brands LLC v.
Cracker Barrel Old Country Store, Inc., 735 F.3d 735, 740 (7th Cir. 2013) (trademark
infringement: “for the grant of a preliminary injunction to be proper, the harm to the
plaintiff also must be judged irreparable—meaning not fully compensable . . . by the
issuance of a final judgment.”); Douglas Dynamics, LLC v. Buyers Prod. Co., 717 F.3d
1336, 1345 (Fed. Cir. 2013) (patent infringement: “This court finds remedies at law
inadequate to compensate [plaintiff] for at least the reputation loss [plaintiff] has
suffered from [defendant’s] infringement.”). These cases do not support the
application of reputational damages to assess money damages for breach of contract,
and Kenall cannot seek them here.
Even if reputational damages were available, Kenall would fail to have
presented sufficient evidence to defeat summary judgment. “Where allowed, an
award for damage to goodwill or business reputation must be supported by specific

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evidence.” Dresser Indus., Inc., Waukesha Engine Div. v. Gradall Co., 965 F.2d 1442,
1448 (7th Cir. 1992). In its briefs, Kenall identifies just two pieces of evidence to
support its claim for reputational harm. R. 603 at p. 29–30; R. 604 at pp. 28–29. First,
Kenall presents the testimony of its 30(b)(6) witness James Hawkins, who testified
that because of Cooper’s failure to mark, the lighting “industry [did not] know” the
Licensed Products were Kenall’s which had “very significant business consequences
to everybody that buys and views the product.” R. 673 at pp. 3–4. Beyond this
conclusory assertion, Hawkins fails to provide additional details about what these
business consequences were and how they could be measured. Id. Kenall also asserts
that Cooper won industry awards for unmarked Licensed Products. Id. (citing R. 50018). Kenall’s brief makes a conclusory one-sentence assertion that “but for [Cooper’s
failure to mark], Kenall would have benefited from the goodwill Cooper wrongfully
enjoyed with respect to its Licensed Products.” Id. at 30. This is an insufficient
showing that fails to support a claim for reputational damages. See Dresser Indus.,
Inc., 965 F.2d at 1448 (“Mere self-serving testimony is not enough to prove damage
to a plaintiff’s goodwill. [The witness] did not even venture to put a dollar figure on
[plaintiff’s] loss, much less support his testimony with concrete evidence.”);
Thornbrook Int’l, Inc. v. Rivercross Found., 2004 WL 1718430, at *1 (N.D. Ill. July 30,
2004) (granting summary judgment on claim for reputational damages where the
only evidence was testimony from plaintiff’s witness that was “entirely speculative
and unsupported, and thus . . . insufficient to support a claim for damages.”). This
lack of concrete testimony highlights why reputational damages are not allowed in

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breach of contract cases. Cooper’s motion for summary judgment is granted on the
failure to mark claim brought by Kenall.
D. Failure to Redesign
Cooper moves for summary judgment finding that Kenall cannot bring a
breach of contract claim for a failure to redesign. R. 509 at pp. 18–20. Kenall concedes
that there is no independent breach of contract claim for failure to redesign. R. 604
at pp. 30–31. Therefore, Cooper’s motion for summary judgment is granted.
E. Remaining Claims for Breach of Contract
As to Kenall’s remaining claims for breach of contract, Kenall moves for
summary judgment finding that Cooper breached the Agreement by failing to provide
Kenall with written reports and that Kenall is entitled to collect interest on late
royalty payments. R. 603 at pp. 21–25. On these issues, Cooper also moves for
summary judgment contending that Kenall failed to mitigate. R. 509 at pp. 21–25.
Under Illinois law, an injured party must “exercise reasonable diligence and ordinary
care in attempting to minimize the damages after injury has been inflicted.” St.
George Chicago, Inc. v. George J. Murges & Assocs., Ltd., 695 N.E.2d 503, 509 (Ill.
App. Ct. 1998) (internal citations omitted). Where an injured party “permits his loss
to be unnecessarily enhanced, the increased loss will be borne by the injured party.”
Id. In other words, a plaintiff may not recover for “consequences of defendant’s act
which were readily avoidable by plaintiff.” Mayster v. Santacruz, 163 N.E.3d 246, 256
(Ill. App. Ct. 2020) (citing Kelly v. Chicago Park Dist., 98 N.E.2d 738, 742 (Ill. 1951));
see also Maere v. Churchill, 452 N.E.2d 694, 701 (Ill. App. Ct. 1983) (claim was

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properly dismissed on summary judgment where plaintiffs “failed to establish
damages attributable to defendants” because the damages had been caused by
plaintiffs’ own inaction).
Under the Agreement, Cooper was obligated to “keep complete and accurate
books and records sufficient to ascertain and verify the Net Sales of Licensed Products
subject to royalty payments” and “within thirty (30) days after the end of each
calendar-year quarter [to] provide to Kenall a written report indicating Net Sales of
Licensed Products during the quarter or that there were no sales.” R. 1-1 at p. 38, § 7.
Cooper owed a quarterly royalty payment “due within thirty (30) days after the end
of each calendar-year quarter” in the amount of “five percent (5%) of Net Sales of
Subject Continuous Products sold by Cooper” from January 1, 2008 through the
expiration of the Subject Patents. Id. at p. 37, § 5B. Cooper also owed a “one-time
royalty payment” due May 1, 2008 in the amount of “five percent (5%) of Net Sales, if
any, of Subject Single Products sold by Cooper” from January 1, 2008 through April
1, 2008. Id. at p. 37, § 5C. Cooper never provided written reports and Cooper sold both
products during the relevant time period but failed to make any royalty payments.
See R. 540 ¶ 27; R. 549 ¶¶ 23–24, 26–27. After the parties signed the Agreement in
2007, they did not communicate again until Kenall sent Cooper a letter on July 23,
2015 stating that Cooper was selling Subject Single Products in violation of the
Agreement . R. 540 ¶ 27; R. 544-18. Kenall sent a follow-up letter on September 10,
2015, and for the first time, inquired into the missing royalty payments. R. 540 ¶ 28;

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R. 510-5. In response to Kenall’s inquiry, Cooper made royalty payments for the sales
of Subject Products. 5 R. 549 ¶¶ 26–27.
Regarding the written reports and royalty payments, Kenall asserts that it is
entitled to two categories of damages. First, Kenall argues that if Cooper had
provided the written reports as required by the Agreement, then Kenall would have
been “alerted in a general sense” that Cooper had breached the Agreement. R. 603 at
p. 24. In turn, Kenall claims that it would have investigated “right away” and acted
in 2008 to stop the infringement which “would have saved Kenall from a large amount
of injury.” Id. This is a one-sentence conclusory statement and Kenall fails to provide
any method to calculate damages. In other words, Kenall lacks a “sensible basis” for
this damages claim. See Transportation & Transit Assocs., Inc. v. Morrison Knudsen
Corp., 255 F.3d 397, 401 (7th Cir. 2001) (Although the demonstration of damages
“need not be precise,” the plaintiff must have “a sensible basis for its claim.”). Even if
Kenall could show a sensible basis for these damages, any injury resulting from
delayed investigation is the direct result of Kenall’s own failure to mitigate. Indeed,
when Cooper breached its obligation by failing to provide the first written report in
early 2008, Kenall was alerted in a general sense that Cooper had breached the
Agreement because Kenall knew, as a function of Kenall signing the Agreement, that

Though Cooper made royalty payments for the sale of Subject Products, Kenall
contends that Cooper also should have made royalty payments for the sale of
“connectors” which were integral to the Subject Continuous Products. R. 540 ¶ 28;
R. 603 at pp. 43–45. Cooper has agreed to pay these royalties and disputes only the
issue of interest. R. 547 at pp. 42–43. For the same reasons that Kenall is not entitled
to interest for royalty payments on the Subject Products, as explained infra, Kenall
is not entitled to interest for royalty payments on the connectors.

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the due date for the written report had passed. By Kenall’s own logic, if Kenall had
investigated in 2008, Kenall could have prevented injury. Kenall is not entitled to
now claim a “large amount of injury” when that injury could have been prevented if
Kenall had acted in 2008.
Second, Kenall argues that it is entitled to interest on the late royalty
payments. R. 603 at pp. 23–25. The interest, in particular, is a loss unnecessarily
enhanced and a consequence readily avoidable had Kenall acted with reasonable
diligence. Kenall’s 30(b)(6) witness James Hawkins explained in his deposition that
Kenall failed to monitor royalty payments because there were “plenty of things to be
doing besides [sic] . . . tracking down small payments.” R. 510-15 at p. 4. That may
have been true, but Kenall’s delay cannot now justify a ballooning of the “small
payments” into larger ones. Kenall is not entitled to interest when Kenall allowed
that interest to grow for years without acting.
There is no dispute that Kenall failed to exercise reasonable diligence and
ordinary care and thus failed to mitigate. 6 Kenall signed the Agreement in 2007 and

Kenall argues that it did not have a duty to mitigate absent “actual knowledge” of
Cooper’s breach. R. 604 at p. 34 (citing Straits Fin. LLC v. Ten Sleep Cattle Co., 900
F.3d 359, 375 (7th Cir. 2018)). Yet Kenall misstates the standard. In “case[s] of fraud,”
the duty to mitigate attaches only after a party has “actual knowledge” of the fraud;
but for breach of contract claims, parties are required from the outset to exercise
“reasonable diligence and ordinary care.” See Straits Fin. LLC, 900 F.3d at 374–75.
This is not a case of fraud, and Kenall does not allege fraud. See R. 1. But even if
Kenall’s duty to mitigate attached only upon actual knowledge of the breach, the facts
support that Kenall had actual knowledge. Because Kenall signed the Agreement,
Kenall was necessarily aware that Cooper breached when it failed to provide written
reports and failed to make royalty payments for over seven years. Thus, under an
actual knowledge standard, Kenall still failed to mitigate.

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was therefore aware that starting within thirty days after the first quarter of 2008,
it was entitled to receive written reports and—to the extent Cooper sold the Subject
Projects—royalty payments. Despite radio silence from Cooper as to the reports and
payments, Kenall failed to reach out for over seven years. It should have been obvious
to Kenall that Cooper was required to provide quarterly reports, and if Cooper had
sold Subject Products, that it was required to make quarterly royalty payments.
Where Cooper clearly breached the Agreement, Kenall should have notified Cooper
of the breach years earlier. Kenall is barred from recovering any damages that stem
from its own failure to mitigate. See St. George Chicago, Inc., 695 N.E.2d at 509. As
to these issues, Cooper’s motion for summary judgment is granted in that Kenall
failed to mitigate damages.
F. Affirmative Defenses
Kenall moves for summary judgment as to Cooper’s affirmative defenses.
R. 602. In addition to seeking summary judgment on failure to mitigate as described
above, Cooper raises failure to mitigate, unclean hands, and waiver as affirmative
defenses against each of Kenall’s claims for breach of contract. See R. 551. These
defenses apply only against Kenall’s claims for breach of contract and not to Kenall’s
claims for patent infringement. As Kenall’s claims for breach of contract have all been
either dismissed or otherwise resolved, summary judgment as to Cooper’s affirmative
defenses are denied as moot.

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G. Convoyed Sales
Kenall moves for summary judgment asserting that it is entitled to patent
damages for convoyed sales of three unpatented accessories sold by Cooper that are
related to the Subject Single Products. 7 R. 603 at pp. 45–48. First, a stem that
attaches to the light fixture and allows the fixture to be mounted to the ceiling. Id. at
pp. 45–46. Second, a corner mount bracket that allows the fixture to be mounted in a
corner. Id. at p. 47. And third, a specialized screwdriver (and its related bits) that
helps with vandal-resistant installation. Id. at pp. 47–48.
A “convoyed sale” refers to “the relationship between the sale of a patented
product and a functionally associated non-patented product.” Am. Seating Co. v.
USSC Grp., Inc., 514 F.3d 1262, 1268 (Fed. Cir. 2008). “A patentee may recover lost
profits on unpatented components sold with a patented item, a convoyed sale, if both
the patented and unpatented products ‘together were considered to be components of
a single assembly or parts of a complete machine, or they together constituted a
functional unit.’” Id. (quoting Rite–Hite Corp. v. Kelley Co. Inc., 56 F.3d 1538, 1550
(Fed. Cir. 1995)). The products are not a functional unit if the consumer purchased
the unpatented material solely the sake of convenience, aesthetic purpose, or onestop shopping. See id., 514 F.3d at 1268–69 (“The fact that customers prefer [the
products] come from a single supplier for ease of purchase, repair, and uniform design
and appearance, does not compel the conclusion that the [products] are . . . part of a

Patent infringement as to the Subject Continuous Products is not at issue. See supra
at pp. 3–4.

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single functional unit.”). The products are a functional unit if the unpatented
material and the patented product “function together to achieve one result.” Juicy
Whip, Inc. v. Orange Bang, Inc., 382 F.3d 1367, 1372 (Fed. Cir. 2004) (citing RiteHite, 56 F.3d at 1551). In Juicy Whip, even though “other syrups may be used in Juicy
Whip’s dispenser and, likewise, other dispensers could use Juicy Whip’s syrups[,]” the
unpatented syrup and patented dispenser functioned together to achieve one result
because “[t]he dispenser needs syrup and the syrup is mixed in a dispenser.” 382 F.3d
at 1372. By contrast, in Rite-Hite, unpatented dock levelers which secure trucks to a
patented truck restraint system did not function together to achieve one result
because “each could effectively have been used independently of each other.” 56 F.3d
at 1551 (“The parties had established positions in marketing dock levelers long prior
to developing the vehicle restraints.”).
Kenall fails to provide sufficient evidence to support summary judgment on
convoyed sales. Kenall identifies two images, yet neither of these images show how
the accessories fit together with the Subject Single Products. See R. 569 at pp. 23–24;
R. 603 at pp. 45–48. First, Kenall identifies a picture of a light fixture with holes on
the bottom and asserts that the stem would be attached through the holes. R. 500-44.
Significantly, the stem is missing from the picture and thus the Court cannot rely on
this picture to support an inference of functionality. Second, Kenall identifies
drawings on a specification sheet that show the stem and bracket as accessories for
the Subject Continuous Products. R. 1-1 at p. 53. Yet Kenall seeks convoyed sales
related to the Subject Single Products, so drawings related to the Subject Continuous

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Products are not relevant. Kenall fails to identify a similar specification sheet for the
Subject Single Products.
Beyond these two images, Kenall cites to various invoices from Cooper. These
invoices present examples of when, as part of the same order but as separate line
items, a customer purchased both the Subject Single Products and an accessory. See,
e.g., R. 500-45 (stem and Subject Single Product); R-500-47 (screwdriver and Subject
Single Product); R-500-48 (bracket and Subject Single Product). Kenall also cites
deposition testimony from Cooper’s 30(b)(6) witness Mandy Timmons where
Timmons confirmed that the screwdriver is “used with the [Subject Single Products].”
R. 672 at p. 11. As discussed above, the fact that the patented product and accessory
were purchased together or used together does not compel the conclusion that the
products are part of a single functional unit. With nothing more, this evidence is thus
insufficient. Kenall’s motion for summary judgment as to convoyed sales is denied.
H. Willfulness in Patent Infringement
The parties bring cross motions for summary judgment as to whether Cooper’s
sale of Subject Single Products after April 1, 2008 was willful patent infringement.
R. 509 at 26–27; R. 603 at 32–34. Willfulness requires a finding of “deliberate or
intentional infringement.” Eko Brands, LLC v. Adrian Rivera Maynez Enter., Inc.,
946 F.3d 1367, 1378 (Fed. Cir. 2020) (“Under Halo, the concept of ‘willfulness’
requires a jury to find no more than deliberate or intentional infringement.”); see also
Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 105 (2016) (“The subjective
willfulness of a patent infringer, intentional or knowing, may warrant enhanced

19

damages, without regard to whether his infringement was objectively reckless.”).
Subjective willfulness can also be shown by proof that “the defendant acted despite a
risk of infringement that was either known or so obvious that it should have been
known” to the accused infringer. Arctic Cat Inc. v. Bombardier Recreational Prods.
Inc., 876 F.3d 1350, 1371 (Fed. Cir. 2017) (internal citations omitted); see also Kolcraft
Enterprises, Inc. v. Chicco USA, Inc., 2018 WL 3329706, at *4 (N.D. Ill. July 6, 2018).
Further, to establish willfulness, “a patentee must show that the accused infringer
had a specific intent to infringe at the time of the challenged conduct.” BASF Plant
Sci., LP v. Commonwealth Sci. & Indus. Rsch. Org., 28 F.4th 1247, 1274 (Fed. Cir.
2022) (citing Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 987 (Fed. Cir.
2021)); see also Halo, 579 U.S. at 105 (explaining that “culpability is generally
measured against the knowledge of the actor at the time of the challenged conduct”).
There is no dispute that Cooper was on notice regarding the potential for
patent infringement. After Cooper signed the Agreement in 2007, Cooper was
necessarily aware of the ’055 Patent and the No Challenge Clause barring Cooper
from contesting infringement. See R. 1-1. Kenall also wrote a letter to Cooper on
September 10, 2015 stating that the Subject Single Products sold by Cooper were
“within the scope” of Kenall’s Subject Patents, including the ’055, ’241, ’591, and ’563
Patents. R. 510-5. The key factual dispute centers around whether Cooper sold the
Subject Single Products with knowledge that they infringed, or whether Cooper sold
the Subject Single Products but took steps to avoid infringement.

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The parties identify internal Cooper documents and cherry-pick excerpts that
support their respective positions. Kenall argues that these documents show
knowledge of infringement. See, e.g., R. 500-23 at p. 3 (“The current design is
acceptable for continuous run applications, but when used for individual units, the
endcap design infringes on a competitor’s patent.”). Cooper argues that these
documents support a finding that Cooper took steps to avoid infringement. See, e.g.,
R. 500-22 at p. 3 (“The Mid-Cap could not be used in our product due to a competitor
patent, therefore it was designed out.”).
The parties also submit oddly conflicting affidavits from Cooper employee John
Pena. Pena was employed by Cooper from 1998 through 2010 and worked as the
Director of Marketing and Product Development from 2006 through January 2009.
R. 510-19 ¶ 2; R. 544-58 ¶ 3. Kenall submits an affidavit from Pena dated April 12,
2019, in which Pena attests to facts that support a finding of willful infringement.
R. 544-58. For example, Pena identifies an email chain dated June 17, 2009 that
refers to “individual fixtures.” Id. at ¶¶ 14–17. Pena explains that the term
“individual fixtures” refers to “stand-alone (i.e., ‘Subject Single Products’) which
Cooper had agreed to redesign.” Id. at ¶ 14. In the email, Pena and other Cooper
employees reach an “agreement” to identify the stand-alone products a certain way
on a customer order, as “HVL12 BR/ER…”. Id. at ¶ 16–17. Pena then attests: “Using
the ‘BR/ER’ notation for the stand-alone HVL fixtures was considered an easy way to
make a non-redesigned stand-alone fixture appear to be part of a run of two or more
end-to-end units, i.e., part of a licensed continuous fixture instead of being an

21

unlicensed stand-alone fixture.” Id. at ¶ 21. Based on the affidavit submitted by
Kenall, the email at issue shows that Cooper created a work-around to continue
selling Subject Single Products.
Cooper submits an affidavit from Pena dated May 14, 2019, in which Pena
contradicts the affidavit submitted by Kenall. R. 510-19. Pena attests that one of
Kenall’s attorneys threatened him into an interview and misrepresented the contents
of the affidavit to Pena prior to him signing it. Id. at ¶¶ 4, 16–17. He attests that the
“these 2009 emails reflect the Cooper team’s concerted and careful efforts to comply
with the 2007 Settlement and License Agreements.” Id. at ¶ 19. He further attests:
“Having now had a chance to review my prior declaration, I strongly disagree with
its conclusion . . . the notation of ‘BR/ER’ . . . had nothing to do with the standard
HVL single products. Rather it was limited to this single instance where we were to
deliver 8-foot units that were seemingly single products but were in fact in-house
created continuous products.” Id. at ¶¶ 21–22. Based on the affidavit submitted by
Cooper, the email at issue had “nothing to do” with Subject Single Products and thus
is not evidence that Cooper created a work-around.
The parties offer conflicting interpretations of the same documents and emails
and call into question the credibility of Pena bearing on critical issues of fact. Based
on these contested, material facts, the parties’ cross-motions for summary judgment
are denied.

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II.

Motions to Exclude Expert Testimony
The parties move under Federal Rule of Evidence 702 to bar testimony of each

other’s experts. Under Rule 702, a witness may testify as an expert if their testimony:
(1) will help the trier of fact to understand the evidence or to determine a fact in issue;
(2) is based on sufficient facts or data; (3) is the product of reliable principles and
methods; and (4) reflects a reliable application of the principles and methods to the
facts of the case. Fed. R. Evid. 702. A “district court is a gate-keeper who determines
whether proffered expert testimony is reliable and relevant.” Winters v. Fru-Con Inc.,
498 F.3d 734, 741 (7th Cir. 2007) (internal citations omitted). The Court’s primary
concern is “the validity of the methodology employed by an expert, not the quality of
the data used . . . or the conclusions reached.” Manpower, Inc. v. Ins. Co. of Pa., 732
F.3d 796, 806 (7th Cir. 2013). “Vigorous cross-examination, presentation of contrary
evidence, and careful instruction on the burden of proof are the traditional and
appropriate means of attacking shaky but admissible evidence.” Daubert v. Merrell
Dow Pharmaceuticals, Inc., 509 U.S. 579, 596 (1993). District courts have “broad
latitude to determine how to evaluate expert testimony.” United States v. Hill, 818
F.3d 289, 297 (7th Cir. 2016) (internal citations omitted). The expert’s proponent
bears the burden of proving by a preponderance of the evidence that the expert’s
testimony satisfies Rule 702. Varlen Corp. v. Liberty Mut. Ins. Co., 924 F.3d 456, 459
(7th Cir. 2019). As set forth below, the majority of the arguments to exclude expert
testimony go to the weight of the testimony rather than its admissibility.

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A. Bennis
Kenall intends to call Melissa Bennis, a financial consultant, as a damages
expert. R. 506-1 at pp. 5–8. Cooper challenges Bennis’s damages calculations for
breach of contract regarding failure to redesign and for restitution. R. 506 at pp. 22–
24. As discussed above, supra Part I.F, Kenall’s claims for breach of contract have
all been either dismissed or otherwise resolved. The damages calculations are thus
no longer relevant, and the Court denies Cooper’s motion on these issues as moot.
B. Lewis
Ken Lewis is a sales associate for commercial lighting equipment who has sold
lighting for a variety of infrastructure projects. R. 487-1 ¶ 2. Cooper intends to call
Lewis as an expert to respond to Kenall’s expert Brian Golden. Id. at ¶ 8. Golden
works in sales and marketing for a commercial lighting manufacturer and intends to
offer opinions on “dynamics, entities, roles and terminology” in the “commercial
lighting industry.” R. 506-2 ¶¶ 9, 11. The Court has already ruled on Cooper’s motion
to bar Golden’s testimony. R. 628 at pp. 9–11 (allowing Golden to testify regarding
market demand for Kenall’s products but barring Golden’s opinion as to Cooper’s
state of mind). Kenall challenges Lewis’ opinion on multiple grounds.
First, Kenall identifies three paragraphs of Lewis’ report—paragraphs 20, 36,
and 37—and argues that they contain opinions not genuinely in rebuttal of Golden’s
report. R. 487 at pp. 4–6. A rebuttal report is proper “so long as it relates to the same
subject matter” as the report it critiques. Ernst v. City of Chicago, 2013 WL 4804837,
at *2 (N.D. Ill. Sept. 9, 2013). Upon review, the Court finds that paragraphs 20, 36,

24

and 37 cover the same subject matter as Golden’s report—both Lewis and Golden
address the benefits of Kenall’s Millenium Stretch Product, the characterization of
the Millenium Stretch Product as a “specification locker”, and whether products that
serve as specification lockers tend to “pull through” other sales. 8 Compare R. 487-1
¶¶ 20, 36, 37 (Lewis’ report) with R. 487-2 ¶¶ 15–49 (Golden’s report). These
paragraphs are thus appropriate for rebuttal so Kenall’s motion is denied.
Second, Kenall argues that Lewis should be barred from testifying regarding
the existence of specification lockers in the lighting market because Lewis’ deposition
testimony regarding specification lockers is inconsistent with his report. R. 487 at
pp. 6–7. If this were true, Kenall’s proper recourse would be cross-examination at
trial rather than exclusion under Rule 702. See Daubert, 509 U.S. at 596. Yet Kenall’s
argument fails as a threshold matter because Lewis’ deposition testimony is in fact
consistent with his report. In his report, Lewis states that the lighting industry has
“evolved away” from specification lockers and that the practice is “outdated” and
“antiquated.” R. 487-1 ¶¶ 12, 22, 37. And in his deposition, Lewis states that
specification lockers are “a rather antiquated view of how the industry works.” R. 4873 at p. 111. Lewis then offers a hypothetical, that a specification locker could exist
today for an “LED source that cures cancer” but clarifies immediately after that
specification lockers would not exist with regard to the types of products at issue in
this case. Id. at p. 112. On this point, Kenall’s motion is also denied.

A product is a “specification locker” if 1) the product is only available from one
manufacturer and 2) there is proven market demand for the product due to its specific
characteristics. R. 487-2 ¶ 27.

8

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Third, Kenall argues that paragraphs 31, 36 and footnote 3 should be excluded
because these paragraphs falsely imply that Lewis has prior personal experience
installing the Subject Single Products. R. 487 at pp. 7–8. In paragraph 31, Lewis
explains that he has placed “Cooper’s FailSafe products” at various venues, but he
does not specify if the products were Subject Single Products. R. 487-1 ¶ 31. In
paragraph 36 and in footnote 3, Lewis provides descriptions of how the Subject Single
Products are installed, but the report remains silent as to whether Lewis has prior
experience installing them. Id. at ¶ 36 and at p. 11, n. 3. Here, Kenall’s proper
recourse is once again cross-examination, not exclusion. See Daubert, 509 U.S. at 596.
On cross-examination, Kenall is free to clarify which Fail-Safe products which Lewis
has personally installed and the basis for Lewis’ knowledge regarding the installation
process so Kenall’s motion is denied.
Fourth, Kenall argues that paragraphs 30 and 32 should be excluded because
they lack a factual basis. R. 487 at pp. 8–11. Yet in both paragraphs, Lewis explains
that his conclusions are based on his years of personal experience in the field. See
R. 487-1 ¶¶ 30, 32. This is a proper background to support his conclusions and
Kenall’s motion is denied.
Fifth, Kenall argues that Lewis’ report should be excluded in entirety because
the materials-considered list appended to Lewis’ report (R. 487-1 at p. 26) was vague
and fails to sufficiently disclose the materials considered. R. 487 at pp. 11–13. In
response, Cooper argues that Kenall questioned Lewis about the materialsconsidered list during his deposition in May 2022 and that Kenall has not sought

26

further clarification since. R. 529 at pp. 17–18. Cooper also notes that Kenall’s expert
Brian Golden provided a similarly vague list. R. 529 at p. 13 n. 4. Under the Federal
Rules of Civil Procedure, an expert witness must provide “the facts or data considered
by the witness in forming [his opinions].” Fed. R. Civ. P. 26(a)(2)(B)(ii). Yet “[b]arring
expert testimony completely is considered a harsh punishment for failing to comply
with Rule 26(a)(2)(B).” Duff v. Grandberry, 2017 WL 1375539, at *2 (N.D. Ill. Apr. 17,
2017). As such, the Court will allow the parties to supplement their expert’s
materials-considered lists with more specific disclosures. This should not be a difficult
task. The parties should meet and confer in attempt to reach an agreement as to
which disclosures require more specificity. Failing that, they should identify each
disclosure at issue in a joint status report to the Court by April 2, 2024.
C. Ricca and Conroy
Steven Ricca is an electrical engineer who has held multiple roles working for
companies that manufacture commercial lighting. R. 477-1 ¶¶ 1–3. Cooper offers
Ricca as an expert to respond to Kenall’s expert Francis Reid. Id. at ¶ 8. Reid is an
electrical engineer and intends to offer opinions on the advantages of Kenall’s
products. R. 505-2 ¶¶ 6, 11. The Court has already denied Cooper’s motion to bar
Reid’s testimony. R. 628 at pp. 6–9.
Richard Conroy is a director at an economic consulting firm. R. 482-1 ¶ 1.
Cooper offers Conroy as an economic expert to respond to Kenall’s expert Michelle
Bennis. Id. at ¶¶ 7–8.

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Ricca’s opinion relies on the following assertion: “[T]he crux of the Asserted
Patents is modularity” and modularity is “a feature that is not present in the [Subject
Single Products].” R. 477-1 ¶ 11. Based on this assertion, Ricca concludes: “[T]here
are numerous options for corresponding non-infringing alternatives.” Id. Conroy then
incorporates this assertion into his report. See, e.g., R. 482-1 ¶ 127. This creates a
fundamental issue for both Ricca and Conroy. The Subject Patents protect “modular
lighting fixture[s] adaptable for being implemented in various shapes and
configurations.” R. 1-2 at p. 11. As the Court has repeatedly held, the No Challenge
Clause bars Cooper from contesting infringement. See supra Part I.A. The Court has
already and specifically barred Cooper from arguing that its Subject Single Products
are not modular. R. 628 at p. 9 (internal citations omitted) (“Cooper accordingly
cannot argue that its Subject Single Products are not modular lighting fixtures.”). As
such, Ricca and Conroy will not be allowed to testify that the Subject Single Products
are not modular. They will also not be allowed to testify as to any opinion that
incorporates or is based on this assertion.
This assertion is entangled within both reports, but the Court is concerned that
excluding Ricca and Conroy’s opinions entirely would be overbroad. As such, the
parties should submit a joint status report by April 2, 2024 that addresses the
following: 1) whether Ricca and Conroy can reach their opinions without relying on
this assertion or whether the assertion is too fundamental to be removed; 2) if possible
to remove the assertion, the parties should set dates for Ricca and Conroy to submit
updated reports that do not rely on this assertion. If an update is not possible, then

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Ricca and Conroy’s reports will be excluded in their entirety. If an update is possible,
then Kenall will have the option to take an additional deposition of each expert to
address the updated reports. Each deposition will be no longer than one hour and
Kenall will only be allowed to address parts of the reports that have been revised.
III.

Cooper’s Motion to Strike and for Sanctions
Kenall and Cooper have aggressively litigated this case for years. Kenall filed

its complaint on June 20, 2017. R. 1. Fact discovery proceeded for over four years,
eventually closing on August 17, 2021. R. 394. Expert discovery closed nearly a year
after that on June 10, 2022. R. 470. During discovery, the parties engaged in frequent
discovery disputes and filed numerous motions to compel. See, e.g., R. 136, R. 192,
R. 209, R. 230, R. 266, R. 274, R. 285, R. 315, R. 422. On August 15, 2023, after the
close of discovery, Kenall served Rule 26(e) supplemental disclosures and produced
over 700 additional documents. R. 646 at p. 7; R. 645-1; R. 645-3. Cooper moves to
strike Kenall’s August 15 supplemental disclosures and document production as
untimely. R. 644. For the reasons stated below, Cooper’s motion is denied.
Federal Rule of Civil Procedure 26 requires litigants to disclose “a computation
of each category of damages claimed by the disclosing party” within 14 days after the
Rule 26(f) conference. Fed. R. Civ. P. 26(a)(1). Parties are required to supplement
these disclosures “in a timely manner” as more information becomes available to
them. Fed. R. Civ. P. 26(e)(1). Parties are also required to supplement document
production “in a timely manner” as more documents become available. Id. If a party
fails to disclose information or documents in a timely manner as required by Rule 26,

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“the party is not allowed to use that information . . . [as] evidence . . . unless the
failure was substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1). “Whether
a failure to comply with Rule 26(a) or (e) is substantially justified, harmless, or
warrants sanctions is left to the broad discretion of the district court.” Dynegy Mktg.
& Trade v. Multiut Corp., 648 F.3d 506, 514 (7th Cir. 2011). In determining whether
a failure to comply with Rule 26 was harmless, courts consider the following factors:
(1) the prejudice or surprise to the party against whom the evidence is offered; (2) the
ability of the party to cure the prejudice; (3) the likelihood of disruption to the trial;
and (4) the bad faith or willfulness involved in not disclosing the evidence at an earlier
date. David v. Caterpillar, Inc., 324 F.3d 851, 857 (7th Cir. 2003).
Regarding the supplemental disclosures, Cooper argues that Kenall violated
Rule 26 because the disclosures present three categories of damages for which Kenall
had not previously provided calculations: damages for failure to mark, price erosion,
and convoyed sales. R. 646 at pp. 12–15. As ruled above, supra Part I.C, Kenall may
not bring a claim for failure to mark, so the calculations for failure to mark are no
longer relevant. At issue are the calculations for price erosion and convoyed sales.
Regarding price erosion, damages for lost profits and price erosion are “inextricably
linked.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d
1336, 1360 (Fed. Cir. 2001). Kenall sought lost profits from the outset of this case, see
R. 1 ¶ 67 (complaint alleges lost sales), and Kenall specifically notified Cooper that it
was seeking damages for price erosion in August 2019, R. 239 at p. 3, almost two
years prior to the close of fact discovery. Regarding convoyed sales, Kenall stated in

30

the complaint that “Kenall’s patented products are frequently sold and supplied by
Kenall together with related lighting-system components for functional use” and that
Kenall had been damaged by “[lost] sales of Kenall products covered by [the Subject
Patents] and also including sales of other products.” R. 1 ¶¶ 24, 67. Such other
products that are related to the patented products for functional use fall within the
scope of convoyed sales. See Am. Seating Co. v. USSC Grp., Inc., 514 F.3d 1262, 1268
(Fed. Cir. 2008) (Convoyed sale refers to “the relationship between the sale of a
patented product and a functionally associated non-patented product.”)
The factors articulated in Caterpillar weigh in Kenall’s favor. Cooper cannot
establish surprise because it has been aware, for years, that Kenall intended to seek
these categories of damages. And there is no evidence of bad faith as Kenall has been
up-front regarding its intent to pursue price erosion damages for years and
articulated a basis for convoyed sales in the complaint. The case of Assaf v. Trinity
Med. Ctr. is on point. 696 F.3d 681 (7th Cir. 2012). In Assaf, plaintiff provided a
computation of damages for lost fees after the close of discovery but more than a
month prior to trial. Id. at 686. The Seventh Circuit found that the district court
abused its discretion in barring the evidence for the following reasons: 1) prior to the
close of discovery, the defendant had been aware that the plaintiff intended to pursue
some amount of damages for lost fees even absent the specific calculations; 2) the
defendant was not prejudiced because it had more than a month to prepare before
trial; and 3) the calculations were based on the defendant’s own documents. Id. at
686–87. Each of these points is mirrored in this case. Prior to the close of discovery,

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Cooper was aware that Kenall intended to pursue these categories of damages.
Cooper will have ample time to prepare for a trial as a trial date has not yet been set.
And any data related to convoyed sales comes from Cooper’s own documents.
Regarding the untimely document production, Kenall asserts that the
documents fall into two categories: 1) screenshots, printouts, and downloads of
Cooper’s own online documents; and 2) screenshots, printouts, and downloads of nonparty online documents. R. 650 at pp. 12–13. Of the non-party online documents,
Kenall asserts that these documents show Cooper’s own lighting products as
“installed in situ at some of the many [non-party] installation sites [Cooper has]
always known of.” Id. at p. 15. Cooper does not dispute Kenall’s categorization of the
documents. See generally R. 646 and R. 666.
Again, the factors articulated in Caterpillar weigh in Kenall’s favor. Regarding
the first factor, Cooper cannot logically claim to be surprised by its own documents or
by documents showing the installation of Cooper’s own products. Regarding the
second factor, none of the documents are internal Kenall documents. To the extent
Cooper needs additional context to understand the documents, Cooper need not
depose Kenall’s witnesses. Rather, Cooper has access to its own employees who have
knowledge of Cooper’s own documents or knowledge regarding the installation of
Cooper’s own products at non-party locations. Regarding the third factor, there is no
trial date currently set, and Cooper has ample time to review the documents. Finally,
regarding the fourth factor, there is no evidence of bad faith. Kenall asserts that it
diligently searched online during the discovery period but did not identify these

32

documents. R. 650 at p. 15. Kenall explains that these additional documents are
images without any text referring to the parties, making the documents challenging
to find. Id. And finally, some of the documents were not available online until after
the close of discovery. R. 666 at p. 6. For the foregoing reasons, Cooper’s motion to
strike and for sanctions is denied.
Conclusion
As described above, the parties’ cross-motions for partial summary judgment
and to bar testimony of certain experts are denied in part and granted in part.
Cooper’s motion to strike and for sanctions is denied. By April 2, 2024 the parties
shall submit a joint status report to the Court that states the following: 1) if the
parties intend to renew settlement discussions in the light of the Court’s rulings on
summary judgment; 2) if the parties cannot reach an agreement to provide more
specific disclosures for their experts’ materials-considered lists, identify each
disclosure at issue; and 3) set forth the parties’ respective positions regarding the
Ricca and Conroy expert reports. A status date will be set for April 4, 2024 at 9:15
a.m. to discuss the length of trial and to set a trial date. Because the Court already
has a lengthy civil trial starting in September, this case will be set for trial by jury
sometime prior to September.
ENTERED:

______________________________
Honorable Thomas M. Durkin
United States District Judge

Dated: March 14, 2024
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