Ixi Mobile (R&D) Ltd. et al v. Samsung Electronics Co., Ltd. et al

Northern District of California, cand-4:2015-cv-03752

Exhibit A

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Exhibit A Fellowes, Inc.Case 4:15-cv-03752-HSG v. Acco Document Brands Corp., Slip Copy (2019) 177-1 Filed 04/29/19 Page 2 of 9 2019 WL 1762910 validity, and possible infringement of, Plaintiff's patents for improved paper shredder technology. 2019 WL 1762910 Editor's Note: Additions are indicated by Text and In November 2010, Plaintiff filed the instant suit, Fellowes, deletions by Text. Inc. v. Acco Brands Corp., No. 10-cv-07587 ("Fellowes Only the Westlaw citation is currently available. I"), alleging that Defendant was infringing four of its United States District Court, patents. Soon after, Plaintiff filed a second infringement N.D. Illinois, Eastern Division. action, Fellowes, Inc. v. ACCO Brands Corp., No. 11- cv-04229 ("Fellowes II"), asserting that Defendant and FELLOWES, INC., Plaintiff, two other parties were infringing two more of Plaintiff's v. patents. The Court severed Plaintiff's infringement claims ACCO BRANDS CORP., Defendant. against the two non-ACCO parties and sent them to the Northern District of Ohio, where they were eventually Case No. 10 cv 7587 (consolidated), resolved. The Court then consolidated the remaining Case No. 11 cv 8148 (related) claims against Defendant into Fellowes I. In 2011, Plaintiff | filed a third suit, Fellowes, Inc. v. ACCO Brands Corp., No. Signed 04/22/2019 11-cv-08148 ("Fellowes III"), alleging that Defendant was infringing on yet another of Plaintiff's patents. Fellowes Attorneys and Law Firms III has been reassigned to this Court. Peter John Shakula, II, Wood Phillips, Chicago, IL, Christopher K. Dorsey, Pro Hac Vice, Orbital Atk Inc., Defendant challenged the validity of several of the patents Dulles, VA, Robert M. Fuhrer, Pro Hac Vice, William P. at issue in Fellows I and III in the U.S. Patent and Atkins, Pro Hac Vice, Pillsbury Winthrop Shaw Pittman, Trademark Office ("PTO"). The PTO began reexamining LLP, McLean, VA, for Plaintiff. several of the patents, and this Court stayed all of Fellowes I and III pending resolution of the PTO proceedings. On J. Donald Best, Michael Best & Friedrich LLP, Madison, August 8, 2017, while Fellowes I and III were stayed, the WI, Michael Glenn Babbitt, Peter Justin Brennan, Steven PTO issued Plaintiff U.S. Patent No. 9,724,704 ("the '704 Raymond Trybus, Jenner & Block LLP, Paul R. Coble, Patent"), concerning another shredder-related invention. Michael Best & Friedrich LLP, Chicago, IL, Michael The Court received a joint status report from the parties A. Stiegel, Grund & Leavitt, P.C., Highland Park, in mid-2018 indicating that the PTO proceedings had IL, Michael V. Ward, Pro Hac Vice, Acco Brands concluded. Corporation, Lincolnshire, IL, for Defendant. Plaintiff now moves to file Amended Complaints in Fellowes I and III, to reflect the outcome of the PTO MEMORANDUM OPINION AND ORDER proceedings and its new '704 Patent. Defendant argues that such amendments should be denied as futile and Harry D. Leinenweber, Judge prejudicial. Neither party has formally moved to lift the stay; however, the Court now lifts the stay sua sponte due *1 For the reasons stated herein, Plaintiff's Motion to to the resolution of the PTO proceedings. See Landis v. N. Amend Complaints (Dkt. No. 146) is granted in part and Am. Co., 299 U.S. 248, 254 (1936) (stating that the power denied in part. to stay proceedings is incidental to the power inherent in every court to efficiently manage its docket). I. BACKGROUND The following is a list of the patents at issue in Fellowes I and III, and, for the patents that underwent PTO Plaintiff Fellowes, Inc. ("Fellowes") and Defendant proceedings, the outcomes of those proceedings: ACCO Brands Corporation ("ACCO") are both Illinois- based office products manufacturers. This case concerns Fellowes I (consolidated with Fellowes II): a long-running dispute between the parties over the © 2019 Thomson Reuters. No claim to original U.S. Government Works. 1 Fellowes, Inc.Case 4:15-cv-03752-HSG v. Acco Document Brands Corp., Slip Copy (2019) 177-1 Filed 04/29/19 Page 3 of 9 2019 WL 1762910 determined that claim 1-2, 4-9, 11-24, and 26-45 are U.S. Patent No. 7,631,822 ("the '822 Patent"): After unpatentable; the Federal Circuit affirmed. ACCO an inter partes reexamination (Control No. 95/001,736), Brands Corp. v. Fellowes, Inc., IPR2013-00566, 2015 the PTO issued a certificate canceling all original WL 1009186 (P.T.A.B. Feb. 12, 2015), aff'd, Fellowes, and reissued claims. Plaintiff filed a notice of Inc. v. ACCO Brands Corp., 642 F. App'x 994 (Fed. Cir. appeal to the Federal Circuit (No. 2017-001274); by 2016). The PTO issued a certificate canceling claims 1-2, mutual agreement between the parties, the appeal was 4-9, 11-24, and 26-45. Claim 3, 10, and 25 remain. dismissed. U.S. Patent No. 6,978,954 ("the '954 Patent"): On January 25, 2015, after an inter partes reexamination II. LEGAL STANDARD (Control No. 95/001722), the PTO issued a certificate canceling all claims. Under Federal Rule of Civil Procedure 15(a), a court "should freely give leave" to amend the pleadings "when *2 U.S. Patent No. 7,963,468 ("the '468 Patent"): justice so requires." FED. R. CIV. P. 15(a). Rule 15(a) A Patent Examiner rejected Claims 9-12 in an inter reflects "a liberal attitude towards the amendment of partes reexamination. The Patent Trial and Appeal pleadings." Soltys v. Costello, 520 F.3d 737, 743 (7th Cir. Board ("PTAB") reversed that rejection. The Federal 2008). However, a court has discretion to deny a proposed Circuit reversed the Patent Examiner's finding and amendment if the moving party has unduly delayed in remanded the PTAB's decision. See ACCO Brands filing the motion, if the opposing party would suffer undue Corp. v. Fellowes, Inc., 813 F.3d 1361, 1368 (Fed. Cir. prejudice, or if the pleading is futile. Id. The standard for 2016). The PTAB then affirmed the Patent Examiner's futility is whether the amended pleadings would withstand rejection of claims 9-12. Acco Brands Corp. Respondent, a Rule 12(b)(6) motion to dismiss. Gen. Elec. Capital Corp. Requester v. Owner, Appeal 2013-010043, 2017 WL v. Lease Resolution Corp., 128 F.3d 1074, 1085 (7th Cir. 3638350, at *18 (P.T.A.B. Aug. 22, 2017). Plaintiff 1997). "Accordingly, a proposed amendment must allege appealed that PTAB decision to the Federal Circuit; enough facts to state a claim to relief that is plausible on the Federal Circuit dismissed the appeal at the parties' its face." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). later request. The PTO has issued a certificate cancelling claims 9-12. U.S. Patent No. 7,631,823 ("the '823 Patent"): III. DISCUSSION Defendant did not challenge the validity of this patent at the PTO. A. First Amended Complaint (Fellowes I) U.S. Patent No. 7,226,009 ("the '009 Patent"): In its proposed First Amended Complaint, Plaintiff seeks Defendant did not challenge the validity of this patent to withdraw its allegations under the '822, '954, and '468 at the PTO. Patents, and continue its claims regarding the '823, '009, and '293 Patents. The Court notes that Defendant does U.S. Patent No. 7,025,293 ("the '293 Patent"): not oppose Plaintiff's request to amend the Fellowes I Defendant did not challenge the validity of this patent Complaint. Furthermore, such amendment is not unduly at the PTO. delayed or futile. Soltys, 520 F.3d at 743. Accordingly, Fellowes III: Plaintiff may amend its Fellowes I pleadings to clarify the remaining patents in that case. The pleadings must clearly U.S. Patent No. 8,020,796 ("the '796 Patent"): After state the patent claims that Plaintiff is asserting Defendant an ex parte reexamination (No. 90/013,046), the PTO infringed, as explained later in this Opinion. issued a certificate canceling claims 1, 2, 21, and 22; amending claims 16-18, 20, and 31; adding claims 32-33; and confirming claims 11, 12, and 19. B. Second Amended Complaint (Fellowes III) U.S. Patent No. 8,464,767 ("the '767 Patent"): After an inter partes review (No. IPR2013-00566), the PTAB © 2019 Thomson Reuters. No claim to original U.S. Government Works. 2 Fellowes, Inc.Case 4:15-cv-03752-HSG v. Acco Document Brands Corp., Slip Copy (2019) 177-1 Filed 04/29/19 Page 4 of 9 2019 WL 1762910 In its proposed Second Amended Complaint, Plaintiff (1-2, 4-9, 11-24, 26-45) that the PTAB found unpatentable seeks to withdraw allegations related to the '767 Patent, —a decision the Federal Circuit affirmed. ACCO Brands continue alleging infringement under the '796 Patent, and Corp. v. Fellowes, Inc., IPR2013-00566, 2015 WL 1009186 add allegations based on its new '704 Patent. Defendant (P.T.A.B. Feb. 12, 2015), aff'd, Fellowes, Inc. v. ACCO argues that amending the Fellowes III pleadings is futile Brands Corp., 642 F. App'x 994 (Fed. Cir. 2016). The '704 because the doctrine of issue preclusion bars Plaintiff from Patent contains 38 claims, all of which are identical to the asserting the '704 and '706 Patents. '767 Patent's invalidated claims except for two groupings. The first group includes the '704 Patent's claims 4, 5, and *3 Issue preclusion prohibits "successive litigation of an 28. Those claims correspond to the '767 Patent's remaining issue of fact or law actually litigated and resolved in a valid valid claims 3, 10, and 25. Since the '704 Patent's claims court determination essential to the prior judgment," even 4, 5, and 28 are identical to '767's claims that were not if the issue recurs in the context of a different claim. Taylor invalidated by the PTAB, the Court finds, and Defendant v. Sturgell, 553 U.S. 880, 892 (2008) (citation omitted). apparently agrees, that issue preclusion does not bar To establish issue preclusion, Defendant must show: (1) Plaintiff from asserting the '704 Patent's claims 4, 5, and the issue sought to be precluded is the same as an issue in 28. the prior litigation; (2) the issue must have been actually litigated in the prior litigation; (3) the determination of the The second grouping of claims—1, 16, 26, and 34— issue must have been essential to the final judgment; and requires a deeper analysis. These are the four independent (4) the party against whom estoppel is invoked must have claims of the '704 Patent and are the only claims in the been fully represented in the prior action. Adams v. City of '704 Patent that contain new language to differentiate Indianapolis, 742 F.3d 720, 736 (7th Cir. 2014). While the themselves from the invalidated '767 claims. The Court Seventh Circuit sets the issue preclusion criteria, Federal will refer to the altered language in claims 1, 16, 26, Circuit law governs the aspects of issue preclusion that are and 34 as the "immediately limitation." The immediately unique to patent law. Aspex Eyewear, Inc. v. Zenni Optical limitation is emphasized in italics below: Inc., 713 F.3d 1377, 1380 (Fed. Cir. 2013) ("[W]hether a particular claim in a patent case is the same as or separate [A] controller coupled to the motor ... said controller from another claim has special application to patent cases, performing a predetermined operation in response to and we therefore apply our own law to that issue."). determining that the at least one criterion has been met. (See '767 Patent, invalidated claims 1, 15, 23, 28.) Defendant argues that issue preclusion bars Plaintiff from [A] controller coupled to the motor ... said controller accusing Defendant of infringing certain claims in the '704 being configured to prevent operation of the motor and '796 Patents because those claims are not materially in the shredding direction immediately in response to different from claims in the '767 Patent that the PTAB determining that the at least one criterion has been and Federal Circuit have found to be invalid. The Court met to prevent the one or more additional articles from will assess the '704 and '796 Patents separately. Plaintiff jamming the shredder mechanism. (See '704 Patent, does not dispute that it was fully represented at all the claims 1, 16, 26, 34, Ex. 2 to Def.'s Resp., Dkt. No. 147-2 proceedings at issue; consequently, the fourth element of (emphasis added).) issue preclusion is satisfied for both the '704 and '706 Patents. Defendant asserts that a shredder that stops "immediately" after it senses a criterion related to too 1. The '704 Patent much paper having been inserted in the machine is not materially different from a shredder that stops after an undefined period of time. The Federal Circuit has held a. Same Issue that issue preclusion is not limited to identical patent claims. Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d The PTO issued the '704 Patent in 2017, and the PTAB has 1333, 1342 (Fed. Cir. 2013). Rather, the "identity of the not adjudicated its validity. However, Defendant asserts issues that were litigated" determines whether preclusion that many of the '704 Patent's claims (1-3, 6-27, and 29-38) applies. Id. If differences between the unadjudicated are not materially different from the '767 Patent's claims and adjudicated patent claims "do not materially alter © 2019 Thomson Reuters. No claim to original U.S. Government Works. 3 Fellowes, Inc.Case 4:15-cv-03752-HSG v. Acco Document Brands Corp., Slip Copy (2019) 177-1 Filed 04/29/19 Page 5 of 9 2019 WL 1762910 the question of invalidity," issue preclusion applies. Id. The PTAB found that the '767 Patent's independent claims Defendant asserts that the immediately limitation merely 1, 15, 23, and 28, were obvious over Aries. Id. The Federal uses "slightly different language to describe substantially Circuit affirmed the PTAB decision. Fellowes, Inc. v. the same invention." See id. ACCO Brands Corp., 642 F. App'x 994 (Fed. Cir. 2016). *4 Plaintiff argues that the '704 Patent's claims are not The new language in the '704 Patent's claims 1, 16, 26, materially similar to the invalidated '767 Patent claims, and 34 create two "differences" from the invalidated because the PTO issued the '704 Patent even after Plaintiff '767 Patent's claims: (1) the motor stops "immediately" informed it that the PTAB had invalidated the '767 Patent. in response to a determination that a predetermined (See Preliminary Amendment of the '704 Patent, Ex. D maximum thickness threshold has been violated; and (2) to Pl.'s Reply at 13, Dkt. No. 148-1 (wherein Plaintiff the purpose of such stoppage is to prevent the shredder noted that the claims of the '704 Patent are "similar from becoming jammed. The corresponding '767 Patent's to the claims of" the '767 Patent, and explained that claims state that the motor would stop an undefined the PTAB found most claims in the '767 Patent to be period of time after determining the maximum thickness unpatentable).) In its Preliminary Amendment to the '704 threshold has been violated, and do not specify that the Patent, Plaintiff encouraged the PTO to find that the purpose of this stoppage is to prevent jamming. immediately limitation rendered the '704 Patent's claims patentable despite the PTAB's decision on the '767 Patent. The immediately limitation was not present in the '767 (Id. at 12.) Plaintiff also correctly points out that the '704 Patent's claims, but complete identity of claims is not Patent, like all patents, enjoys a statutory presumption of required to satisfy the identity-of-issues requirement for validity. See 35 U.S.C. § 282. claim preclusion. Ohio Willow Wood, 735 F.3d at 1342. The invalidated '767 Patent's claims "require that the However, the fact that the PTO issued the '704 Patent does controller monitors input from the thickness detector and, not bar issue preclusion. The Court is not bound by the upon detecting a violation of a predetermined maximum issuance of a patent—it must make its own independent thickness threshold, the controller determines if the input determination of patent validity. See Medrad, Inc. v. MRI meets at least one criterion corresponding to insertion Devices Corp., 401 F.3d 1313, 1322 (Fed. Cir. 2005). of one or more additional articles." Fellowes, 2015 WL Indeed, when considering issue preclusion in the patent 1009186, at *8. The new '704 Patent's claims do not context, the Court must compare unadjudicated patents meaningfully alter that function. Here, if the immediately to adjudicated patents, to determine whether they are limitation was present in the '767 Patent's claims, it would materially similar. See Ohio Willow Wood, 735 F.3d at not have changed the PTAB's judgment. And if the 1342. Thus, Plaintiff's argument that because the PTO differences between the unadjudicated and adjudicated issued the '704 Patent it cannot be materially similar to patent claims "do not materially alter the question of the '767 Patent, fails. Plaintiff further fails to explain how invalidity," issue preclusion applies. Ohio Willow Wood, the immediately limitation would change an invalidity 735 F.3d at 1342. The PTAB explicitly held that selecting analysis. Id. at 1343. between an immediate or time-delayed motor shutdown is not a patentable innovation: A brief recitation of the relevant PTAB proceedings is necessary to analyze the identity of issues adjudicated at the PTAB, and those before the Court now. In 2014, at *5 [A]lthough the immediate Defendant's request, the PTO authorized an inter partes shutdown of a shredder motor review of the '767 Patent. On February 12, 2015, the PTAB may be beneficial in acting as determined that the '767 Patent's claims 1-2, 4-9, 11-24, a protective measure to prevent and 26-45 are unpatentable under 35 U.S.C. § 103(a). See shredder damage, the triggering of Fellowes, 2015 WL 1009186. Section 103(a) states that a time delay to account for paper only non-obvious subject matter is patentable. 35 U.S.C. § waving or flapping operates as a 103(a). The PTAB found that the above-listed '767 claims convenience to alleviate unnecessary were unpatentable as obvious over prior art, specifically motor shutdown. We do not discern the "Aries," "Ricoh," and "JP '445" patents. Id. at *16. that such selection between those © 2019 Thomson Reuters. No claim to original U.S. Government Works. 4 Fellowes, Inc.Case 4:15-cv-03752-HSG v. Acco Document Brands Corp., Slip Copy (2019) 177-1 Filed 04/29/19 Page 6 of 9 2019 WL 1762910 two known options is the product that issue preclusion is "not limited to those situations in of innovation, but is instead simply which the same issue is before two courts. Rather, where a the exercise of the routine skill of an single issue is before a court and an administrative agency, artisan. preclusion also often applies." B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1303 (2015). In B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 Fellowes, 2015 WL 1009186, at *11. Thus, the immediately (2015), the Supreme Court considered the preclusive effect limitation is insufficient to constitute a material difference. of decisions by the Trademark Trial and Appeal Board ("TTAB") and held that "a court should give preclusive Nor does the new "purpose" language ("to prevent effect to TTAB decisions if the ordinary elements of issue the one or more additional articles from jamming the preclusion are met." Id. at 1299. The Federal Circuit shredder ...") materially differentiate the '704 Patent's has applied B & B Hardware to PTAB decisions, finding claims from the '767 Patent's claims. There are statements that the TTAB and the PTAB "are indistinguishable for throughout the '767 Patent, including in the specification, preclusion purposes." MaxLinear, Inc. v. CF CRESPE asserting that the purpose of the invention is to prevent LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018). Thus, the jamming. (See '767 Patent, 1:46-48 ("By sensing thickness Supreme Court and the Federal Circuit have instructed of the articles being fed, the shredder can be stopped courts to give issue preclusive effect to PTAB decisions if (or not started) before a jam occurs."); 1:65-67 ("It is the ordinary elements of issue preclusion are met. See B & an aspect of the invention to provide a shredder that B Hardware, 135 S. Ct. at 1299. does not jam as a result of too many papers ..."); 6:45-48 ("In an embodiment of the invention, the shredder 10 *6 Plaintiff further argues that the '704 Patent's claims includes a thickness detector 100 to detect overly thick were not "actually litigated" because the PTAB used stacks of documents or other articles that could jam the a different burden of proof when assessing the '767 shredder mechanism 16."); 13:47-50 ("If the controller 200 Patent. The burden of proof in the PTAB proceeding was determines that the jam proof system is turned on, the different from the burden this Court would apply. In inter controller 200 detects the thickness of the article fed into partes review, the challenger (or the PTO) must establish the throat 36 of the shredder 10."), Ex. 1 to Def.'s Resp., unpatentability "by a preponderance of the evidence"; Dkt. No. 147-1.) The PTAB considered the '767 Patent's in district court, a challenger must prove invalidity by claims in light of the specification, Fellowes, 2015 WL "clear and convincing evidence." Cuozzo Speed Techs., 1009186, at *4, and still determined the corresponding LLC v. Lee, 136 S. Ct. 2131, 2144 (2016). And the PTAB claims to be invalid. Thus, including this purpose language uses the "broadest reasonable interpretation" standard for in the independent claims of the '704 Patent does nothing claim construction, whereas a district court gives claim to distinguish it from the invalidated '767 Patent's claims. terms their "ordinary and customary meaning" from the perspective of a person of ordinary skill in the art of the The new language in the '704 Patent's claims 1, 16, 26, invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 and 34 does not render those claims materially different (Fed. Cir. 2005). The Seventh Circuit has held that issue from the invalidated '767 Patent's claims 1, 15, 23, and 28 preclusion may be defeated by shifts in the burden of claims. Therefore, the issue that the PTAB adjudicated— persuasion or by changes in the degree of persuasion the validity of the '767 Patent's claims—is the same issue required to prevail. Kunzelman v. Thompson, 799 F.2d currently before the Court. 1172, 1176 (7th Cir. 1986). However, in this case, the differing burdens do not defeat issue preclusion. The Federal Circuit recently held that its b. Actually Litigated & Essential to the Final Judgment affirmance of the PTAB's invalidity findings has an issue preclusive effect on all pending actions in district courts. As an initial matter, Plaintiff argues that that the PTAB's XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 judgment cannot preclude an issue before this Court (Fed. Cir. 2018) (reasoning that the patentee, having been because only a district court's finding that a patent is afforded the opportunity to exhaust his remedy of appeal, invalid can create issue preclusion for another patent. has "had his day in court" and a defendant should not Plaintiff misstates the law. The Supreme Court has held © 2019 Thomson Reuters. No claim to original U.S. Government Works. 5 Fellowes, Inc.Case 4:15-cv-03752-HSG v. Acco Document Brands Corp., Slip Copy (2019) 177-1 Filed 04/29/19 Page 7 of 9 2019 WL 1762910 have to continue defending a suit for infringement of an adjudged invalid patent). In so finding, the court rejected Fellowes, 2015 WL 1009186, at *10-11 (emphasis added). the argument articulated in the dissent, that PTAB Accordingly, all four prongs of issue preclusion are opinions should not have preclusive effect in district courts present. because of the different standards of validity, burdens of proof, and standards of appellate review. See id. at 1300 The remainder of the '704 Patent's claims that Defendant (Newman, J., dissenting). Though the Court could end seeks to preclude Plaintiff from asserting (2-3, 6-15, 17-27, its inquiry here, to also satisfy the remaining elements of 29-33, and 35-38) are all identical to invalidated claims in issue preclusion as set forth by the Seventh Circuit, the the '767 Patent, and depend on claims 1, 16, 26, and 34. Court notes that the subject of the '704 Patent's claims was Because 1, 16, 26, and 34 are barred by issue preclusion, essential to the PTAB's final judgment. so too are 2-3, 6-15, 17-27, 29-33, and 35-38. Plaintiff is barred from asserting claims 1-3, 6-27, and 29-38 of the The PTAB considered the exact issue of using an '704 Patent. immediate or delayed motor shutdown, and found that selection of one or the other is not a patentable innovation, 2. The '796 Patent but rather a choice between two alternatives that are known to a person of ordinary skill in the art: a. Same Issue *7 Defendant argues that issue preclusion bars Plaintiff The record, thus, demonstrates from asserting claims 19 and 20 of the '796 Patent, as it was known in the art that those claims are not materially different from invalidated thickness thresholds, specifically claims 11 and 12 of the '767 Patent. Indeed, '796 Patent's violation thereof, may provide claims 19 and 20 are identical to invalidated '767 Patent's either of two functions: (1) almost claims 11 and 12 with one exception: claim 19 uses a immediate shutdown of a shredder "thickness detector" rather than a "variable thickness motor; or (2) establishment of a detector." Below are the relevant claims from the '796 time period, during which motor Patent, with the differences from the '767 Patent indicated shutdown may be preempted, but in strikethrough: after which shutdown occurs.... [A] skilled artisan would have '796 Claim 19. A shredder according to claim 1, wherein appreciated reasonably that there said variable thickness detector includes a contact is trade-off in the selection of member in the throat movable by engagement of the responses to violations of thickness at least one article being received in the throat, and a thresholds. That is, although the sensor for detecting movement of the contact member. immediate shutdown of a shredder motor may be beneficial in acting '796 Claim 20. A shredder according to claim 19, as a protective measure to prevent wherein said sensor is an optical sensor. shredder damage, the triggering of a time delay to account for paper Plaintiff does not explain how the presence of a variable waving or flapping operates as a thickness detector materially distinguishes claims 19 and convenience to alleviate unnecessary 20 from the otherwise identical and invalidated claims motor shutdown. We do not discern 11 and 12 from the '767 Patent. Instead, Plaintiff raises that such selection between those the same argument it did with the '704 Patent—the two known options is the product of '796 Patent must be materially different because the innovation, but is instead simply the PTO issued it knowing that, at the time, the related exercise of the routine skill of an '767 Patent was being challenged at the PTAB. As artisan. explained above, this argument is insufficient to bar issue preclusion. Furthermore, the PTO issued the '796 Patent's reexamination certificate on September 2, 2014—before © 2019 Thomson Reuters. No claim to original U.S. Government Works. 6 Fellowes, Inc.Case 4:15-cv-03752-HSG v. Acco Document Brands Corp., Slip Copy (2019) 177-1 Filed 04/29/19 Page 8 of 9 2019 WL 1762910 the PTAB invalidated the relevant claims in the '767 parties' arguments and the record, and held that the claims Patent, in February 2015. ('796 Ex Parte Reexamination were obvious: Certificate, Ex. 3 to Def.'s Resp., Dkt. No. 147-3.) Thus, the Court cannot give the PTO's decision to issue the *8 ACCO contends that claims 8, 9, 11, 12, 18-20, '796 Patent much weight. Rather, the Court must look to 31-33, 35-37, 39-41, and 43-45 are unpatentable over the actual identity of the issue before the PTAB and this Aries and Ricoh.... Each of the above-noted dependent Court. claims add features specifying that a thickness detector is a "variable thickness detector," and a particular A thickness detector, described in the '796 Patent's "sensor" or "optical sensor" is associated with a claim 1, "detect[s] a thickness of the at least one article shredder. ACCO relies on Ricoh as disclosing those to be shredded being received by the throat." ('796 added features.... Fellowes does not dispute that Ricoh Patent, 14:42-44, Ex. 3 to Def.'s Resp., Dkt. No. discloses the features added by each of claims 8, 9, 147-3.). Unsurprisingly, a variable thickness detector 11, 12, 18-20, 31-33, 35-37, 39-41, and 43-45. Rather, "detect[s] and output[s] varying amounts of detected Fellowes contends that "there would have been no thicknesses." ('796 Patent, 15:2-3.) Plaintiff conceded in objective reasons for one of ordinary skill in the art at the '767 Patent litigation that Aries disclosed a thickness the time of Patent Owner's invention to have looked to detector, Fellowes, 2015 WL 1009186, at *8, and that Ricoh in order to modify the shredder of Aries." ... We Ricoh disclosed a variable thickness detector. Id. at *12. agree with Petitioner that the combination of Ricoh and Both thickness detectors and variable thickness detectors Aries discloses all of the elements of claims 8, 9, 11, 12, are "known" elements. Id. at *10, 12. Thus, the difference 18-20, 31-33, 35-37, 39-41, and 43-45. We further agree in the unadjudicated claim does not materially alter the that a skilled artisan would have had reason to make the question of invalidity. See Ohio Willow Wood, 735 F.3d at combination because it would have been nothing more 1342. than the combination of known elements, in a known way, to achieve a predictable result. The difference between '796 Patent claims 19 and 20 and Fellowes, 2015 WL 1009186, at *11-12. '767 Patent claims 11 and 12 is not material. Therefore, the PTAB's adjudication of the patentability of the '767 Accordingly, all four prongs of issue preclusion are Patent's claims is the same issue currently before the present for the '796 Patent's claims 19 and 20. Plaintiff Court. is barred from further asserting these claims against Defendant. b. Actually Litigated & Essential to the Final Judgment 3. Prejudice The PTAB found that the '767 Patent's claims 11 Defendant argues that it will be unduly prejudiced if the and 12 were unpatentable as obvious over the Ricoh Court grants Plaintiff leave to amend. See Soltys, 520 and Aires patents. Fellowes, 2015 WL 1009186, at *12 F.3d at 743. Defendant first contends that Plaintiff did not ("[T]he combination of Ricoh and Aries discloses all inform the Court of the '704 Patent in a timely manner. of the elements of claims [11 and 12]."). As the Court The PTO issued the '704 Patent to Plaintiff on August 8, has already explained, the Federal Circuit affirmed the 2017; Plaintiff first informed the Court of the that patent PTAB's decision, which the Federal Circuit has indicated on October 23, 2018. However, Defendant does not claim is sufficient to create an issue preclusive effect on these that it was uninformed of the '704 Patent until October claims. See XY, 890 F.3d at 1294. 2018, only that the Court was. The Court does not find itself prejudiced by the time lapse. This argument fails. Regardless, for the sake of assessing all the Seventh Circuit's issue preclusion elements, the Court notes that Next, Defendant argues that Plaintiff's proposed the materially similar '767 Patent claims were actually amended complaints do not plead sufficient facts to litigated and essential to the PTAB's judgment. Plaintiff support its infringement allegations with respect to each and Defendant litigated the validity of '767 Patent claims asserted patent claim. There is disagreement among 11 and 12 before the PTAB; the PTAB considered the district courts in the Seventh Circuit as to the level of © 2019 Thomson Reuters. No claim to original U.S. Government Works. 7 Fellowes, Inc.Case 4:15-cv-03752-HSG v. Acco Document Brands Corp., Slip Copy (2019) 177-1 Filed 04/29/19 Page 9 of 9 2019 WL 1762910 pleading specificity that Twombly and Iqbal require in For the reasons stated herein, Plaintiff's Motion to Amend Complaints (Dkt. No. 146) is granted in part and patent cases. Compare Oil-Dri Corp. of Am. v. Nestle denied in part. Plaintiff is barred from accusing Defendant Purina Petcare Co., No. 15-CV-1067, 2017 WL 1197096, of infringing the following patent claims: at *5 (N.D. Ill. Mar. 31, 2017) ("Twombly and Iqbal require plaintiffs to plead sufficient facts supporting their (1) '704 Patent Claims: 1-3, 6-27, and 29-38; and infringement allegations with respect to each asserted patent claim."), with Orion Energy Sys. Inc. v. Energy (2) '796 Patent Claims: 19-20. Bank Inc., No. 16-C-1250, 2017 WL 4773301, at *2 (E.D. Wis. Oct. 23, 2017) (finding that requiring plaintiffs to Plaintiff has leave to file a First Amended Complaint plead facts supporting infringement allegations for all in Fellowes I that withdraws allegations related to the asserted claims would be contrary to the spirit of the '822, '954, and '468 Patents, and continues allegations Federal Rules of Civil Procedures). related to the '823, '009, and '293 Patents. Plaintiff is also granted leave to file a Second Amended Complaint The Court need not weigh in on this debate. The Court in Fellowes III that withdraws the '767 Patent and adds has a general mandate to construe the Federal Rules of the remaining claims under the '704 Patent that are not Civil Procedure to secure the just, speedy, and inexpensive barred by issue preclusion: 4, 5, and 28. It is unclear to determination of every action and proceeding. FED. the Court whether Plaintiff seeks to continue asserting any R. CIV. P. 1. In light of this case's lengthy history, of the '796 Patent's claims other than 19 and 20, which the multiple patents at issue, and the variety of claims are now barred. If Plaintiff wishes to assert any of the within those patents that Plaintiff can no longer pursue, '796 Patent's remaining claims that are not barred by issue the parties and the Court would be well served by preclusion it may do so. In both of its amended pleadings, ongoing clarity regarding the remaining patent claims at Plaintiff must specify which patent claims it is alleging issue. Thus, Plaintiff's Amended Complaints must identify that Defendant infringed. Plaintiff shall file the Amended which patent claims it is accusing Defendant of infringing. Complaints on or before May 6, 2019. The Court, however, is not requiring Plaintiff to plead facts with respect to each asserted patent claim. Nor is the Court excusing the parties from their parallel obligations *9 IT IS SO ORDERED. under the Local Patent Rules. All Citations Slip Copy, 2019 WL 1762910 IV. CONCLUSION End of Document © 2019 Thomson Reuters. No claim to original U.S. Government Works. © 2019 Thomson Reuters. No claim to original U.S. Government Works. 8