R-BOC Representatives, Inc. v. Minemyer

• Decision Date: 10 February 2017
• Docket Number: No. 11 C 8433,No. 07 C 1763,11 C 8433,07 C 1763
• Citation: 233 F.Supp.3d 647
• Parties: R–BOC REPRESENTATIVES, INC., et al., Plaintiffs–Counterclaim Defendants, v. John T. ("Tom") MINEMYER, Defendant–Counterclaim Plaintiff. John T. ("Tom") Minemyer, Plaintiff, v. R–BOC Representatives, Inc., et al., Defendants.
• Court: U.S. District Court — Northern District of Illinois

233 F.Supp.3d 647

R–BOC REPRESENTATIVES, INC., et al., Plaintiffs–Counterclaim Defendants,

v.John T. ("Tom") MINEMYER, Defendant–Counterclaim Plaintiff.

John T. ("Tom") Minemyer, Plaintiff,

v.R–BOC Representatives, Inc., et al., Defendants.

No. 11 C 8433

No. 07 C 1763

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

Signed February 10, 2017

Matthew G. McAndrews, Niro McAndrews, LLC, Chicago, IL, for Plaintiffs–Counterclaim Defendants.

Douglas Mason Chalmers, Douglas M. Chalmers P.C., Eugene J. Schiltz, Sean Brendan Crotty, Crotty & Schiltz, LLC, Chicago, IL, for Defendant–Counterclaim Plaintiff.

MEMORANDUM OPINION AND FINDINGS OF FACT AND CONCLUSIONS OF LAW

Jeffrey Cole, UNITED STATES MAGISTRATE JUDGE

A VERY BRIEF INTRODUCTION

These patent infringement cases, involving seemingly uncomplicated plastic couplers, have now spanned ten years, generated 17 written opinions, scores of substantive orders, two trials, and a contempt hearing.¹ The docket entries in the two cases encompass (according to the computer) more than 21,000 pages. In the first trial, a jury in early 2012 found for Mr. Minemyer and awarded him $1.5 million in damages. The Federal Circuit affirmed without opinion, Minemyer v. R–Boc Representatives, Inc. 515 Fed.Appx. 897 (Fed. Cir. 2013), and the Supreme Court's denied cross applications for certiorari. ––– U.S. ––––, 134 S.Ct. 2133, 188 L.Ed.2d 1123 (2014).

In December 2011, three months before the first trial began, the R–BOC defendants sued Mr. Minemyer, seeking a declaration that the R–BOC defendants' "redesigned" coupler did not infringe Mr. Minemyer's patent. [Dkt. #1–11 C 8423]. No mention was made of a change to the angle of the interior threads,² which was shown to be approximately 80 degrees.

Mr. Lundeen conceded in his testimony in the instant case that his expert acknowledged in the first case that if the original coupler infringed on Claim 12 of the Minemyer patent—which involved the angle of the interior threads—³ then so too did the redesign, since, as Mr. Lundeen told the jury in the first case, the redesign did not change the thread angle. (Tr. 266–269). As we shall see, Mr. Lundeen and his group were to jettison that admission made in the first trial and proceed in this case in contravention of it.⁴ He would say in the instant case that "almost all the changes [were] made immediately after [the first] trial." (Tr. 278). He admitted that he approached WZ Tool to change some of the threads on the core inserts after the first trial and after Mr. Minemyer was seeking an injunction. (Tr. 279). It was after the first trial that he enlisted a Mr. David Nelson to remeasure the cores for him. (Tr. 280). He acknowledged that even after the first trial he did not have the thread angles of the existing cores changed. (Tr. 281). And while he claimed to have procured the changes in thread angle on four models, sixteen were not changed after the trial. (Tr. 282). And finally, he acknowledged that after the trial he continued to sell twelve models that had not been changed to Duraline. (Tr. 316). He said he didn't know when that stopped. (Tr. 316).

The present action was tried to the court in December 2014, along with Mr. Minemyer's alleged contempt for non-compliance with the July 9, 2012 permanent injunction that followed the jury trial in the first case and required the R–BOC defendants, among other things, to turn over for destruction "all molds utilized in the production of Infringing Products," which were then listed by Part Numbers. (Dkt. #526)(Emphasis supplied). Nothing was turned over, as Mr. Lundeen admitted, even though he acknowledged that he understood the July 9, 2012 injunction to require the turnover of molds that had been utilized in the past to create couplers that violated Mr. Minemyer's patent. (Tr. 292–294). He never questioned the wording or meaning of the injunction. Indeed, a month after the injunction issued he filed a statement of compliance with it. (Tr. 300).

The R–BOC defendants were, in this case, adamant that they had "redesigned" the couplers—actually the inner cores of the molds—in the fall of 2008 because of the "contentious" and "expensive" patent infringement case brought by Mr. Minemyer at the end of March 2007. It had, Mr. Minemeyer's lawyer said, taken a "huge toll" on the company and its owners. (Tr. 68–71). But Mr. Lundeen admitted that no changes had occurred in 2008 (Tr. 360–61) and that 12 of the 16 couplers did not have thread angle changes. (Tr. 282–86, 362).

According to the current story of the R–BOC defendants and their lawyers, in 2008, four years before the 2012 injunction issued, and three years before the R–BOC group sued Mr. Minemyer in this case, they claimed the couplers were "redesigned" to avoid infringing on the Minemyer patent. Id. And, so the theory goes, the 2008 redesign intentionally included a change in the interior thread angle. Id. That argument is unsupportable.

One of the difficulties with the current theory is that, incredibly, the claimed alteration of the angle of the interior threads in 2008 was never disclosed to Mr. Minemyer, his counsel, the court, or anyone else, it would appear, in the years between 2008 and July 2012—even though, as we shall see, there were repeated opportunities and the most compelling of reasons to have done so. Indeed, even in the Complaint filed in December 2011 by R–BOC against Mr. Minemyer claiming that the 2008 redesign did not offend the Minemyer patent, there was no claim that the angle of the interior threads had been reworked or redesigned. [Dkt. #1]. As we shall see, the current theory is unsupported and indeed contrary to the evidence in the case, and, of course, to Mr. Lundeen's admission in the first case in early 2012 that the redesign did not embrace changes to interior thread angles.

Not surprisingly, the person who supposedly made the changes to the thread angles did not testify in this case, and cannot be found. And, as we have said, the owners of the company were silent on the alleged change to the thread angle over an extended period of many years. Finally, Ed Krajecki denied he was told anything about thread angle changes by Mr. Lundeen. (Tr. 721); see infra at 665. Not unexpectedly, Mr. Lundeen told inconsistent and conflicting stories about virtually everything that mattered in the case. And the defendants' stunning and inexplicable silence on the matter of supposed changes to thread angles of the coupler between 2008 and 2012 is part of the extraordinary (and there is no other fitting adjective) evidentiary fabric of the case.

PROLOGUE

In Kurt Vonnegut, Jr.'s Hugo award-nominated book The Sirens of Titan , there is a good luck piece—a four-inch piece of metal that the young Chrono picked up off a flamethrower factory floor. Moreover, the good-luck piece turns out to be a part necessary for the repair of a spaceship meant to carry a stranded robot from Tralfamadore with nothing more than a message of greeting.⁵ It turns out that the entirety of human existence over the millennia—evolution, civilization, technology, love, brutal war, disease, death, etc.—culminating in space travel, the colonization of Mars, and war between the colony and earth—the reason for the flamethrower factory—had been to produce this inconsequential part—this good-luck piece—for the robot's ship just so someone could say "hello." That's all.⁶

Our good-luck piece is a "radial conduit coupler." Although it is richly colored and three-dimensional,⁷ it's not overly complicated. That's been clear from the start. (07–cv–1763, Dkt. # 252, at 1). But it did merit a patent a decade ago—Patent No. 6,851,726 —and that is something not to be discounted. The couplers link together plastic pipes that are conduits for communications lines. They have internal threads tapering in from both ends toward the middle. The idea is that the plastic pipes that need to be connected get screwed in from both ends toward the center where there is a stop and the whole thing becomes sealed. It's a useful item to the communications industry in the installation of underground communications lines.

Unlike the tale Vonnegut wove in Sirens of Titan , the parties haven't been at it for millennia—only a "mere" ten years.⁸ Nevertheless, the history of our good-luck piece has covered two federal court cases, a jury trial, a bench trial, 805 docket entries totaling (according to the court's computer system) 21,195 pages, comprising scores of motions and rulings, culminating in a trip to the Federal Court of Appeals in Washington, D.C., where the Federal Circuit rejected the approximately 16 challenges those rulings. That was followed by applications for certiorari , to the Supreme Court by both sides. Those petitions were unsuccessful. Children who were mere toddlers at the outset of this case are now approaching puberty. The Chicago Bears made their last Super Bowl appearance just weeks before the case was filed. A few months after this litigation started, the Sopranos cut to black to the strains of Journey's Don't Stop Believing , and Mad Men debuted—Peggy Olson was no more than Don Draper's secretary at the time. Apple launched its first version of something called an iPhone.⁹ It's been a terribly long time.

There hasn't only been a lot of water under the bridge, there's been a lot of money. Our little good-luck piece has generated a million dollars in damages and probably more than that in legal fees.¹⁰ And it has cost the taxpayers untold tens of thousands of dollars. They are often forgotten, but they are, after all, footing the bill for the resolution of this protracted dispute, like the humans being manipulated by the Tralfamadorians toward an end that hardly seems worth it for them. But, so it goes.¹¹

I.LITIGATION—CHAPTER I

(wherein our inventor sues the infringers and wins, but our infringers find the resultant injunction not quite to their liking.)

A.

John Minemyer invented our "good-luck piece." On March 29, 2007, he filed suit (07–cv–...