Nilssen v. Osram Sylvania Inc.

• Decision Date: 22 February 2022
• Docket Number: 03-cv-2962
• Court: U.S. District Court — Northern District of Illinois
• Parties: OLE K. NILSSEN and GEO FOUNDATION, LTD., Plaintiffs, v. OSRAM SYLVANIA, INC. and LEDVANCE LLC as its successor-in-interest, Defendants. CFL TECHNOLOGIES, LLC, Intervenor.

OLE K. NILSSEN and GEO FOUNDATION, LTD., Plaintiffs, v. OSRAM SYLVANIA, INC. and LEDVANCE LLC as its successor-in-interest, Defendants.

CFL TECHNOLOGIES, LLC, Intervenor.

No. 03-cv-2962

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

February 22, 2022

MEMORANDUM OPINION AND ORDER

STEVEN C. SEEGER, UNITED STATES DISTRICT JUDGE

On September 27, 2005, the Honorable Amy J. St. Eve entered a minute order dismissing this patent infringement case. Now 16 years later, Defendants have returned. They ask this Court to interpret Judge St. Eve's minute order, divine her intent, and declare that the Court dismissed all claims with prejudice, even though the order itself was silent on that issue.

That's an unusual request. Parties typically do not return to the courthouse more than a decade after they left. But here, the meaning of Judge St. Eve's dismissal order is important to a later wave of litigation between the parties (or their assignees) in federal court in Delaware. The nature of the dismissal here determines whether Defendants can be sued again over there.

If Judge St. Eve dismissed the claims with prejudice, then a preclusion doctrine applies, and the Osram companies can't be sued again for infringement. But if Judge St Eve dismissed the claims without prejudice, then bringing a new infringement claim against Osram is fair game.

So Defendants have come back to this District, requesting confirmation that the dismissal in 2005 was with prejudice. They ask this Court to modify a 16-year-old dismissal order either because Judge St. Eve made a mistake under Rule 60(a), or because there are extraordinary circumstances under Rule 60(b)(6).

For the reasons that follow, the motion is denied.

Background

This is an exceptionally old case patent infringement case. Plaintiffs filed this lawsuit in 2003. It left the courthouse - but not for good - in 2005.

For present purposes, the key ruling was a minute order from September 27, 2005 dismissing the case. That's a 16-year-old minute order. If the dismissal order were a person, it would be old enough to drive. When Judge St. Eve entered that minute order, the judiciary did not have a Chief Justice. (The Senate confirmed then-Judge John Roberts a few days later.) Only two of the current nine Justices were on the Supreme Court. Tom Brady had won only three Super Bowls.

Judge St. Eve entered that minute order more than a decade before this Court took the bench. By this Court's count, Judge St. Eve has issued far more than 1, 000 opinions between September 27, 2005 and today (according to Westlaw, so it's an undercount). And in the intervening years, Judge St. Eve was elevated to the Seventh Circuit.

Taking a step back, and looking at the big picture, the dispute involves three lawsuits filed in two districts over a span of two decades.

The dispute involves inventions by Plaintiff Ole Nilssen, a prolific inventor and equally prolific litigator. See Cplt., at ¶¶ 13, 15 (Dckt. No. 1). “Nilssen is an inventor - a litigious inventor, as a check of LEXIS or Westlaw will reveal.” See Nilssen v. Motorola, Inc., 255 F.3d 410, 412 (7th Cir. 2001). According to the Seventh Circuit, Nilssen has a history of overplaying his hand. “He has been unsuccessful in all published decisions and has been threatened with sanctions for making frivolous claims . . . .” Id.

Nilssen worked in the field of electronics and electronic ballasts, which regulate the current in the tube in fluorescent lamps. See Cplt., at ¶ 13 (Dckt. No. 1); see also Nilssen, 255 F.3d at 412 (explaining electronic ballasts). Nilssen invented and owned a number of patents, including patent number 5, 757, 140 (the '140 patent) and patent number 6, 172, 464 (the '464 patent). See Cplt., at ¶ 14. In 2000, he gave an exclusive license to Plaintiff Geo Foundation, his not-for-profit based in the Cayman Islands. Id. at ¶¶ 5, 15.

Defendant Osram Sylvania is in the light business. It makes and sells electronic ballasts and compact fluorescent lights. Id. at ¶ 8. Osram Sylvania Products Inc. is a subsidiary. Id. at ¶¶ 6-7.

In 2000, Nilssen and Geo Foundation sued Osram Sylvania and Osram Sylvania Products in federal court in Delaware for infringing on 26 patents. That's Osram I. The case was eventually transferred to this district and assigned to Judge Darrah. See Nilssen v. Osram Sylvania, Inc., Case No. 01-cv-3585, 2007 WL 257711, at *1 (N.D. Ill. 2007).

During discovery, Plaintiffs submitted a claim chart that withdrew some patents and attempted to add other patents not listed in the complaint, including the '140 and '464 patents. See Pls.' Resp. to Defs.' Mtn. for Attorneys' Fees, at 9 (Dckt. No. 61). Defendants objected to the inclusion of additional patents, and Judge Darrah refused to give Nilssen leave to add them to the litigation. Id.

That roadblock led to a second lawsuit in this district. In May 2003, Plaintiffs opened a second front and filed the case at hand - Osram II - about the additional patents. Id. In Osram II, Nilssen and Geo Foundation alleged that Osram Sylvania and Osram Sylvania Products had infringed on 16 patents. See Cplt., at ¶¶ 14, 17 (Dckt. No. 1). The list of patents at issue included the '140 and '464 patents. Id. Judge St. Eve presided over Osram II.

Before long, the parties whittled down the case. By November 2003, the parties' joint claim construction chart reduced the number of patents at issue from 16 to 2. That is, Plaintiffs dropped 14 of the 16 patents, including both the '140 patent and the '464 patent. See Parties' Joint Claim Construction Chart (Dckt. No. 20) (listing only two patents); see also 3/2/2006 Order, at 1 (Dckt. No. 71) (“On September 25, 2003, Plaintiffs provided Defendants with an infringement claim chart, which reduced the number of patents in issue from sixteen to two.”); Nilssen's Submission of a Revision to the Parties' Prior Joint Claim Construction Chart, at 1-2 (Dckt. No. 45) (confirming that there were only “two patents-in-suit” as of November 19, 2003). Two patents remained in the case: the '827 patent and the '787 patent.

The parties discussed settlement, and apparently made substantial progress. At a status hearing in April 2004, Plaintiffs orally moved to voluntarily dismiss Osram II - with leave to refile by June 25, 2004 - while they discussed settlement. Plaintiffs' counsel expressly requested a dismissal without prejudice:

Plaintiffs' Counsel: So, what we'd like to do and what Nilssen has agreed to do - and what we've proposed to Osram just this morning - is that we, in this case, stipulate to a voluntary dismissal of this action.

The Court: Without prejudice?

Plaintiffs' Counsel: Without prejudice, correct.

Defense Counsel: And, your Honor -

The Court: Mr. Pasternak?

Defense Counsel: Your Honor, I think that sounds like a very good plan. I had understood we were going to come in and try to get the case stayed. I am going to advise the client to agree to this, but I'd like to check with them this morning just to make sure they have no problem, if you're inclined to do it.

The Court: And what would the terms of the voluntary dismissal be? What are you proposing?

Plaintiffs' Counsel: It would be -

The Court: With leave to reinstate within a certain period of time, or -

Plaintiffs' Counsel: Exactly. It would give us until some date - say, October 15th of this year - to refile without any prejudice.

See 4/14/2004 Tr., at 3:1-22 (Dckt. No. 79-5) (emphasis added).

The next day, the Court presided over a follow-up hearing. Defense counsel confirmed that Defendants had agreed to the voluntary dismissal. See 4/15/2004 Tr., at 2:7-13 (Dckt. No. 79-6).

Based on that agreement, Judge St. Eve granted the oral motion for voluntary dismissal, with leave to reinstate by June 25, 2004. Id. at 2:24 - 3:1; see also 4/15/2004 Order (Dckt. No. 28) (“Plaintiffs' oral motion for voluntary dismissal with leave to reinstate by 6/25/04 is granted. Terminating case.”). So, in April 2004, Osram II was closed.

But the case didn't quite leave the building. Plaintiffs filed motion after motion, and Judge St. Eve granted extension after extension, pushing the deadline to reinstate the case. See 6/23/2004 Order (Dckt. No. 30); 7/29/2004 Order (Dckt. No. 31); 8/13/2004 Order (Dckt. No. 32); 9/9/2004 Order (Dckt. No. 33); 9/29/2004 (Dckt. No. 34); 10/20/2004 (Dckt. No. 35); 11/17/2004 (Dckt. No. 36); 1/6/2005 (Dckt. No. 37); 3/4/2005 (Dckt. No. 38); 4/21/2005 (Dckt. No. 39); 6/16/2005 (Dckt. No. 41); 7/8/2005 (Dckt. No. 42).

After a dozen extensions spanning more than a year, Judge St. Eve called a status hearing in July 2005. See 7/8/2005 Order (Dckt. No. 42). Right away, the Court cut to the chase: “What is going on?” See 7/21/2005 Tr., at 2:12 (Dckt. No. 79-7).

Counsel for Nilssen and Geo Foundation reported that the parties had come “close” to a settlement, but didn't quite get there, so it was “time to get the litigation back on track.” Id. at 2:19-21. Plaintiffs' counsel announced that they planned to pursue a claim about only one patent: “Well, your Honor, first I'd like to note that Mr. Nilssen is going to be proceeding with just one patent against one product line.” Id. at 3:15-17.

Based on that revelation, Judge St. Eve reinstated the case and directed the parties to submit a revised joint claim construction chart. Id. at 5:24 - 6:1. The Court also set a schedule for the parties to file claim construction briefs, and to complete discovery. See 7/21/2005 Order (Dckt. No. 43).

So by July 2005, this case was open again. The parties filed proposed claim construction charts by the end of August 2005. The charts showed that only one patent was at issue in the case: the '787 patent, meaning patent number 5, 049, 787. See Nilssen's Submission of a Revision to...