Kim v. Sara Lee Bakery Group, Inc.

• Decision Date: 01 February 2006
• Docket Number: No. 05 C 3138.,05 C 3138.
• Citation: 412 F.Supp.2d 929
• Parties: Yoon Ja KIM, Ph.D., Plaintiff, v. SARA LEE BAKERY GROUP, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

Page 929

412 F.Supp.2d 929

Yoon Ja KIM, Ph.D., Plaintiff, v. SARA LEE BAKERY GROUP, INC., Defendant.

No. 05 C 3138.

United States District Court, N.D. Illinois, Eastern Division.

February 1, 2006.

Dean Andrew Pelletier, James P. Murphy, Jonathan M. Rushman, McAndrews, Held & Malloy, P.C., Chicago, IL, for Plaintiff.

Craig Christopher Martin, Amanda S. Amert, Elizabeth L. Fine, Jenner & Block, LLC, Chicago, IL, for Defendant.

MEMORANDUM OPINION AND ORDER

FILIP, District Judge.

Plaintiff, Yoon Ja Kim, Ph.D. ("Dr. Kim" or "Plaintiff"), brings suit against Sara Lee Bakery Group, Inc. ("Sara Lee" or "Defendant"), alleging patent infringement under 35 U.S.C. § 271. (D.E. 1.)¹ Before the Court is Sara Lee's motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6). (D.E. 12.) For the reasons set forth below, the motion is granted.

FACTUAL AND PROCEDURAL BACKGROUND

I. The First Action

The parties have been engaged in litigation in this judicial district for a considerable period of time; that litigation substantially predates the filing of this suit and is, indeed, ongoing. Specifically, in May 2001, Dr. Kim filed suit against The Earthgrains Company² (the "First Action") for allegedly infringing Dr. Kim's United States Patent No. Re. 36,355 (the "1355 Patent"). (First Action, D.E. 1.)³ The '355 Patent, which is entitled "Potassium Bromate Replacer Composition," describes itself as "a method of preparing potassium bromate replacer," which has its application in flour-based mixes, bases, breads and other flour-based products. (D.E. 1, Ex. A (abstract); D.E. 1 ¶ 13.) Dr. Kim alleged infringement of the '355 Patent, and identified specifically two Sara Lee products, D'Italiano Italian Bread⁴ and Buttertop Wheat Bread. (First Action, D.E. 1 at 4.) In its answer to the initial complaint in the First Action, Sara Lee filed a counterclaim for declaration of non-infringement of the '355 patent. (See D.E. 12, Ex. C (answer and counterclaim) at 5 (seeking an order that defendant "has not infringed, and does not infringe, U.S. Patent No. RE 36,355.").)

After extensive litigation history not relevant to the matters before this Court, discovery in the First Action began in the Spring of 2003. (First Action, D.E. 31; First Action, 5/8/03 Order (no docket number, but appears unnumbered on docket sheet).) In June 2003, Sara Lee propounded interrogatories to Plaintiff that, among other things, requested that Plaintiff identify each Sara Lee "product that Plaintiff contends infringes the claim, and describe how the product meets each element of the claim." (See D.E. 23, Ex. A (Def's First Set of Interrogs. to Pl., Interrog. No. 4); see also D.E. 23 at 2.) Plaintiff submitted answers to Sara Lee's interrogatories in September 2003; in response to the interrogatory requesting identification of infringing Sara Lee products, Plaintiff stated that Buttertop bread and D'Italiano bread were manufactured using the potassium bromate replacer composition described in the '355 Patent. (See D.E. 23, Ex. B at 8.) Plaintiff further averred that "[a]part from the products already identified in this interrogatory, Kim cannot at this time specifically identify each and every product by name, manufacturer, description and product code because Earthgrains has not yet produced its documents and information to Kim." (Id. at 9.)

The First Action proceeded through discovery. The docket reflects that discovery initially was scheduled to close in July 2003. (First Action, D.E. 31.) It appears that the district court extended this deadline, perhaps on its own initiative, to September 2003, and then extended it a second time until December 2003. (First Action, 7/9/03 Order (no docket number); 9/22/03 Scheduling Order (no docket number).)

On December 12, 2003, three days before the extended discovery period was set to close, Dr. Kim, through counsel, sought an extension of the discovery deadline. (See First Action, D.E. 38.) Dr. Kim's motion for extension of discovery was granted, with discovery extended until February 1, 2004. (First Action, D.E. 41.) A review of the docket in the First Action reveals that, as of December 2003, Dr. Kim never had sought to compel any discovery during the initial discovery period or any of the various extensions.

On January 30, 2004, or two days before the again-extended discovery period was set to close, Plaintiff filed a motion, which was agreed to by Sara Lee, for another extension of the discovery period. (First Action, D.E. 47.) That motion was granted as well. (First Action, D.E. 48.) Specifically, Magistrate Judge Mason, who was then and has been presiding over the First Action for all purposes since the parties consented to his jurisdiction in January 2004, extended the discovery period until May 1, 2004. (Id.)

During this discovery extension, in April 2004, Sara Lee produced to Dr. Kim 648 Sara Lee bread formulas containing ascorbic acid and food acid, which are the key ingredients in the '355 Patent. (See First Action, D.E. 88 at 4.) Although Dr. Kim notes that this production occurred in the final week of the discovery period, Dr. Kim did not request a further discovery extension after getting the formulas. The docket in the First Action also reflects that Dr. Kim had never filed any motion to compel this discovery during the final discovery extension, nor at any prior time in the case. (Sara Lee also does not appear to have filed any motions to compel). Fact discovery in the First Action closed on May 1, 2004 (see First Action, D.E. 48), and expert discovery closed on September 2, 2004. (First Action, Order 8/24/2004 (no docket entry).)

On December 7, 2004, Dr. Kim moved for leave to file an amended complaint in the First Action to add an infringement claim based on products sold under the Healthy Choice label and manufactured by Sara Lee under a license agreement with ConAgra. (First Action, D.E. 64 at 4.) The motion stated that "[s]imultaneous with the prosecution of this case, Dr. Kim pursued a similar action against ConAgra Foods Inc.... In Kim v. ConAgra, Kim accused, and the jury found, that ConAgra's `Healthy Choice' bread formulas which Earthgrains strictly followed in the manufacture of breads under the `Healthy Choice' brand infringed Kim's '355 patent." (Id. at 3.) Dr. Kim stated that she should be given leave to amend "to include Earthgrains' manufacture, sale and offer for sale of the `Healthy Choice' breads as an `Accused Product' ... ." (Id. at 4.) In connection with the motion to amend, Plaintiff asserted that "it must be noted that no prejudice to the parties will occur as no further discovery is necessary based on the amendment to the complaint." (First Action, D.E. 64 at 4.)

The trial court granted Plaintiff's motion on December 29, 2004, and stated:

Fact discovery has been closed for seven months and expert discovery has been closed for three months. However, while expert discovery was still open, Earthgrains knew that plaintiff was claiming damages for the manufacture and sale of the Healthy Choice products. Indeed, both plaintiff's expert and defendant's expert addressed the Healthy Choice products in their respective reports. Therefore, we find that the amendment will not cause substantial prejudice to Earthgrains.

(First Action, D.E. 68 at 2.)

On January 3, 2005, Dr. Kim filed her First Amended Complaint, which alleged that Sara Lee manufactured and distributed "certain types of breads under at least the `Healthy Choice' brands and the `D'Italia' and `Buttertop' brands (collectively `Accused Products')," and that "the Accused Products . . . infringe the '355 patent." (First Action, D.E. 69 ¶¶ 6, 14.) The First Amended Complaint requested injunctive relief against Earthgrains for its infringing acts, as well as treble damages for those acts, interest, costs and attorneys' fees. (Id. at 4.)

On January 28, 2005, Sara Lee answered the First Amended Complaint (the "Answer to the First Amended Complaint") and asserted affirmative defenses. (First Action, D.E. 78.) In the Answer to the First Amended Complaint, Sara Lee reasserted its counterclaim pursuant to 28 U.S.C. §§ 2201, 2202, and maintained its global request for a declaratory judgment that Sara Lee did not and does not infringe upon the '355 Patent. (See id. at 8, ¶ 35; id. at 9 (requesting an order "declaring that Defendant has not infringed, and does not infringe, U.S. Patent No. RE 36,355.").) Dr. Kim's "Reply to Defendant's Answer to Plaintiffs First Amended Complaint," filed on March 17, 2005, denied Sara Lee's non-infringement counterclaim, but it did not specifically identify any additional infringing products or formulas beyond the previously-identified Buttertop, Healthy Choice, and D'Italiano formulas named in the First Amended Complaint. (See First Action, D.E. 69 at 2-3; First Action, D.E. 84 at 3.) Nor does Dr. Kim suggest that she had amended her sworn interrogatory response—a response that specifically identified only the Buttertop bread and D'Italiano bread products as infringing (D.E. 23, Ex. B at 8), and that noted that further identification would not be possible until the defense produced requested documents. (See id., Ex. B at 9.)

The parties briefed Markman/claim construction issues during the Fall of 2004. (See First Action, D.E. 54.) On January 10, 2005, Magistrate Judge Mason issued a Markman/claim construction opinion in the First Action. (First Action, D.E. 70.) On March 9, 2005, the court issued an order permitting Dr. Kim "to supplement discovery as to the new claim" added in the First Amended Complaint, i.e., the claim relating to the Healthy Choice products, but the Court explicitly stated, consistent with Dr. Kim's representations in the motion to amend (D.E. 64 at 2) that Dr. Kim was "not allowed to issue or take new discovery." (First Action, D.E. 82.)

Dr. Kim ultimately supplemented her discovery responses on April 7, 2005, and identified some 450 infringing formulas,...