The opinion of the court was delivered by: Judge Blanche M. Manning
Bosch's motion for judgment on the pleadings [35-1] is before the court. For the reasons stated below, the motion is granted.
In December 2004, Black & Decker sued Bosch asserting that Bosch's Power Box jobsite radios infringed U.S. patent Nos. 6,308,059 and 6,788,925 ("Previously Asserted Patents"). That case, 04 C 7955, was heard by Judge St. Eve of this district.
There are three different models of the Bosch Power Box radio: PB-10, PB-10CD ("Old Power Box"), and PB-10CD Advanced ("New Power Box"). Prior to trial, Judge St. Eve granted Bosch's motion in limine to preclude Black & Decker from raising new accused products at trial (i.e., the New Power Box). Specifically, Judge St. Eve stated that:
After reviewing the parties' submissions, it is clear that Black & Decker did not identify the new Power Box as an accused product and did not disclose during discovery its contention that the new Power Box infringed the patents at issue in this case. Because of the prejudice to Bosch of adding the new Power Box as an accused product for purposes of Black & Decker's infringement claims, the Court grants Bosch's motion in limine.
Minute Order of August 23, 2006, No. 04 C 7955, Docket # 375. After a jury trial, a judgment for willful infringement was entered in September 2006 against Bosch as to certain claims of the Previously Asserted Patents.
On August 17, 2006, Black & Decker filed the instant suit alleging that the New Power Box infringed U.S. Patent No. 7,043,283 ("New Patent"). After Judge St. Eve granted Bosch's motion in limine as noted above, Black & Decker then amended its complaint in the instant action to allege that the New Power Box also infringed the Previously Asserted Patents.
Bosch now seeks judgment on the pleadings regarding Black & Decker's claim of infringement on the Previously Asserted Patents contending that this claim is barred by res judicata.
The standard of review for a motion for judgment on the pleadings is the same as that for a motion under Fed. R. Civ. P. 12(b)(6) for failure to state a claim. R.J. Corman Derailment Services, LLC v. Int'l Union of Operating Engineers, Local Union 150, AFL-CIO, 335 F.3d 643, 647 (7th Cir. 2003). Facts alleged in the complaint are viewed in the light most favorable to the non-moving party, and judgment may not be granted unless it appears beyond a doubt that the non-moving party cannot provide facts that would support his claim. Id. A motion for judgment on the pleadings pursuant to Fed. R. Civ. P. 12(c) may only be granted if no material issues of fact remain to be resolved between the parties. National Fidelity Life Ins. Co. v. Karaganis, 811 F.2d 357, 358 (7th Cir. 1986). "Although in evaluating a motion for judgment on the pleadings under Rule 12(c) '[a] district court may not look beyond the pleadings,' the court 'may take into consideration documents incorporated by reference to the pleadings' and 'may also take judicial notice of matters of public record.'" Boeckman v. A.G. Edwards, Inc., 461 F. Supp. 2d 801 (S.D.Ill. 2006)(citation omitted). A court may "take judicial notice of 'proceedings in other courts, both within and outside of the federal judicial system, if the proceedings have a direct relation to the matters at issue.' This is true even though those proceedings were not made part of the record before the district court." United States v. Hope, 906 F.2d 254, 260 n.1 (7th Cir. 1990)(citations omitted). In the instant case, both parties agree that the court may take judicial notice of the proceedings in the matter before Judge St. Eve and, indeed, each party extensively cites to the proceedings in that case.
Bosch contends that res judicata bars Black & Decker's cause of action for infringement on the Previously Asserted Patents. Because "[t]his case turns on general principles of claim preclusion, not on any rule of law having special application to patent cases" the law of the circuit applies rather than the federal circuit. Mars Inc v. Nippon Conlux Kabushiki-Kaisha, 58 F.3d 616, 618 (Fed. Cir. 1995). Bosch expressly so states and Black & Decker is silent on the issue.
For the doctrine of res judicata to apply, three elements must exist: (1) a final judgment on the merits; (2) between the same parties or their privies; and (3) involving the same causes of action. Cent. States, Southeast and Southwest Areas Pension Fund v. Hunt Truck Lines, Inc., 296 F.3d 624, 628 (7th Cir. 2002). Res judicata bars litigation not only of those issues actually decided in a previous lawsuit, but also all issues that could have been raised in the prior action. New Hampshire v. Maine, 532 U.S. 742, 748-49, 121 S.Ct. 1808, 149 L.Ed.2d 968 (2001); Publicis Communication v. True N. Communications Inc., 132 F.3d 363, 365 (7th Cir. 1997). "A pending appeal does not prevent the application of collateral estoppel or res judicata." Berry v. Illinois Dept. of Human Services, 00 C 5538, 2001 WL 111035, at *14 (N.D. Ill. Feb. 2, 2001) (citing Prymer v. Ogden, 29 F.3d 1208, 1213 n. 2 (7th Cir.), cert. denied, 513 U.S. 1057 (1994) (dictum noting that "it is clear that the [Seventh Circuit] has adhered to the general rule in American jurisprudence that a final judgment of a court of first instance can be given collateral estoppel effect even while an appeal is pending")) (other citations omitted).
The court finds that the elements of res judicata are met in this case.
1. Final Judgment This element is met in that final judgment on the jury verdict in the prior case before Judge St. Eve was entered on September 22, 2006. Moreover, all post-trial motions have been ruled upon by Judge St. Eve and notices of appeal have been filed by both parties. Hill v. Potter, 352 F.3d 1142, 1144 (7th Cir. 2003)("The test [for finality] is whether the district court has finished with the case.")(citations omitted).
2. Same Parties The parties in the two lawsuits are identical.
3. Same Causes of Action "A claim has 'identity' with a previously litigated matter if it emerges from the same 'core of operative facts' as that earlier action." Brzostowski v. Laidlaw Waste Sys., Inc., 49 F.3d 337, 338-39 (1995)(citations omitted). In other words, claims are the same if they are "based on the same, or nearly the same, factual allegations." Id. at 339 (citation omitted).
As noted by Bosch, Black & Decker has admitted that the claims in front of Judge St. Eve are the same as those at issue in this court. Indeed, in Black & Decker's motion to reassign the instant ...