United States District Court, N.D. Illinois, Eastern Division
R-BOC REPRESENTATIVES, INC., et al., Plaintiffs-Counterclaim Defendants,
JOHN T. "TOM" MINEMYER, Defendant-Counterclaim Plaintiff. JOHN T. ("TOM") MINEMYER, Plaintiff,
R-BOC REPRESENTATIVES, INC., et al., Defendants.
MEMORANDUM OPINION AND FINDINGS OF FACT AND
CONCLUSIONS OF LAW
Jeffrey Cole, Magistrate Judge
VERY BRIEF INTRODUCTION
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. The docket entries in the two cases
encompass (according to the computer)
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.
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,  which was shown to be approximately 80
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
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
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).
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).
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).
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.
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.
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 27. 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.
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. 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.
good-luck piece is a “radial conduit coupler.”
Although it is richly colored and three-dimensional,
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.
the tale Vonnegut wove in Sirens of Titan, the
parties haven't been at it for millennia - only a
“mere” ten years. 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. It's been a terribly long time.
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. 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.
our inventor sues the infringers and wins, but our infringers
find the resultant injunction not quite to their
Minemyer invented our “good-luck piece.” On March
29, 2007, he filed suit (07-cv-1763) against R-Boc, Carolyn
Lundeen (the nominal “owner” of R-Boc), Robert
Lundeen (R-Boc's “nominal consultant, ”
Carolyn Lundeen's husband and the major decision maker
and indispensable participant in R-Boc's business),
Precision Custom Molders, Edward Krajecki (owner of Precision
Custom Molders), Dura-Line, and Timothy Grimsley (Dura-Line
vice president). (“R-Boc group”).
Minemyer charged them with patent infringement and trade
dress infringement. Mr. Minemyer was unable to stave off
summary judgment on his trade dress claims, 678 F.Supp.
691(N.D.Ill. 2009) or on the invalidation of several Patent
‘726's claims (1, 5, 10, 11, 13, 14, 15) under the
on-sale bar of 35 USC §102(b). 695 F.Supp. 797 (N.D.Ill.
2009). But Mr. Minemyer's patent infringement claims -
covering claims 2, 3, 4, and 12 of Patent ‘726 -
eventually went to trial before a jury in February 2012.
December of 2008, the R-BOC group claimed it changed the
design of the accused couplers they had been selling. As we
shall see, and as we discuss in detail, this
“redesign” involved a change to the outer surface
from groove to waffled and supposedly dispensed with the
sealing surface that had been present in the accused coupler.
However, Mr. Lundeen said nothing about changes -
intentionally or otherwise - to the angle of the interior
threads - at least so far as the evidence showed. Indeed, he
would later admit to a jury in the first case that they were
not part of the 2008 “redesign.” (Tr. 249, 264).
The supposed change in angle of the interior threads was
never discussed or mentioned by Mr. Lundeen at his 2008
deposition, although, it is now claimed to play a pivotal
role in the outcome of this case and the contempt.
now, it is enough to say that Mr. Minemyer learned of the
“redesign” at the 2008 deposition of Mr.
Lundeen. But, significantly, as we have said, Mr.
Lundeen never testified (or claimed) then, or for years
thereafter, that the angle of the interior threads had been
purposefully changed as part of a “redesign” in
2008! His “silence on the matter was deafening.”
Muhammad v. Oliver, 547 F.3d 874, 877 (7th Cir.
2008)(Posner, J.). And, even then, his story about the angle
change would be anything but clear or consistent. As we shall
see, Mr. Lundeen's essential silence on the matter of the
change in the angles of the interior threads has great
evidentiary significance in this case, as does the
vacillation in the stories he told. See cases
infra at 23.
Minemyer's view, the changes to the couplers about which
Mr. Lundeen had testified - i.e., the change in the
exterior pattern, the elimination of the seal land and stop
were insignificant. He, therefore, claimed that the
“redesigned” couplers were also infringing and
wanted to have them included as part of his proof at the
first trial. His claim was that the 2008 couplers were merely
colorable variations of the accused coupler. The defendants
moved in limine to exclude the 2008 redesigned
couplers from the jury's consideration. I granted that
motion and did not allow Mr. Minemyer “to add this 2008
coupler” on the “eve of trial” to the
accused products that the jury would learn about. (R.367 at
in February of 2012, a jury sat through a two-week trial.
(07-cv-1763, Dkt. #443-448, 458-459). The evidence showed
that R-Boc blatantly copied Mr. Minemyer's couplers - to
which, of course, they had had ready access while they had
been distributors. 2012 WL 2155240, *15-16 (N.D.Ill. June 13,
2012); (07-cv-1763, Dkt. #515, at 20, 25); (Tr. 439; parts
were “copied well”)). Evidence also showed
conclusively that they deliberately passed off their accused
couplers as Mr. Minemyer's to at least one major
customer, Verizon and others. (07-cv-1763, Dkt. #452, #515,
at 20, 25). The evidence presented satisfied the
jury that, not only had R-Boc infringed on claims 2, 3, 4,
and 12 of Mr. Minemyer's patent, but that they had done
so willfully. (07-cv-1763, Dkt. #468). The jury assessed
damages at a bit over $1.5 million, accounting for Mr.
Minemyer's lost profits. Id., (07-cv-1763, Dkt.
#468, at 7). After post-trial motions were considered, I
concluded that Federal Circuit case law - Seagate
and its progeny - required that the jury's finding of
willful infringement be overruled, despite the indisputable
evidence of purposeful copying and passing off. (Dkt. # 515,
7, 2012, I entered a permanent injunction. (07-cv-1763,
Dkt.#526). Parsing Mr. Minemyer's various requests for
relief proved a bit more complicated than the usual case, as
he insisted on once again bringing in the R-BOC
defendants' 2008 couplers, and revisiting the issue of
willful infringement. This was, perhaps, in line with my
pretrial granting of one of the defendants' motions
in limine which held that while it was too late for
Mr. Minemyer to bring in as an accused product the 2008
redesign, Mr. Minemyer could, in all likelihood, use the
redesigned couplers in calculating lost profits. [Dkt. #367
at 8]. As a result of the inevitably extended briefing of
that motion and several post-trial motions,  the entry of
a final order was delayed more than might normally be the
case. (07-cv-1763, Dkt. #477, #501, #505, #508, #527).
end, the injunction precluded the R-BOC defendants:
(1) from making, using, offering to sell, selling or
importing into the United States, the Infringing Products
listed below and all other products that are only colorably
different therefrom in the context of claims 2, 3, 4 and 12
of United States Patent No. 6, 851, 726, and from otherwise
infringing or inducing others to infringe those claims;
(2) the above named defendants are further ordered to, within
thirty (30) days of the issuance of this Order, destroy all
inventory of Infringing Products, and ship to Moldrite
Products, Inc., 2442 Waynoka Rd., Colorado Springs, CO, at
their own cost and for destruction all molds
utilized in the production of Infringing Products.
The Infringing Products are as follows: Part Nos. BC02-148,
BC02-154, BC02-1540, BC02-158, BC02-166, BC02-117, BC02-1315,
BC02-188, BC02-189, BC02-190, BC02-166TB, BC02-2348,
BC02-2375, BC02-190 Clear, BC01-166 Clear, BC02-154130,
(07-cv-1763, Dkt. #526)(emphasis supplied.
enough, one would imagine, and the defendants did not
complain that what they were ordered to do was unclear. But
we were in store for more Vonnegut-style absurdity. As noted
earlier, the parties filed appeals of a number of rulings.
The R-BOC defendants filed a motion requesting that I stay
enforcement of the judgment without the R-BOC defendants
posting a supersedeas bond. They premised their motion on the
claim that they had plenty of money to pay the damages award
of about $1.6 million within 30 days, but would struggle to
pay a bond of just $35, 000. (07-cv-1763, Dkt. # 546, at 4-5;
Dkt. # 550).
came the question of the R-BOC defendants' compliance
with the injunction. The short answer to the question is they
didn't comply with it. As already noted, The R-BOC
defendants asserted that they made some changes to their
version of Mr. Minemyer's couplers late in 2008. Among
other things, the injunction that issued July 7, 2012,
required the R-BOC defendants to turn over the molds they
used to manufacture the infringing products for destruction
by August 7, 2012. They never have. Yet, in this case, Mr.
Lundeen admitted that the “mold” was made up of
more than the cores and included the core insert, the cavity,
and the base which was composed of large pieces of steel.
hearing on the matter on August 8th, the R-BOC
defendants insisted that there was nothing to turn over for
destruction because they had retooled the molds in 2008 -
before any injunction issued - and therefore the “molds
utilized in the production of Infringing Products”
(07-cv-1763, Dkt. No. 526 at 2) no longer existed. Therefore,
they said, with the utmost earnestness, there were no molds
to be turned over that were in existence that fit within the
injunction and therefore there could be no contempt.
(07-cv-1763, Dkt. #535, at 3). The illogic of the argument is
stunning. It ignores the injunction; it ignores the evidence
in the case relating to the claimed changes in 2008 to the
interior threads of the coupler; it ignores the explicit and
straightforward language of the injunction which embraced
molds that had been utilized. Thus, even if changes were made
in 2008 to the angle of the interior threads, it ignores the
ability of the R-BOC defendants to again change the interior
threads on the molds to again produce infringing products. In
short, the argument was nonsensical, contrived, and too
clever by half.
of those molds, which clearly had been utilized in the
manufacture of the offending products was also necessary to
ensure the R-BOC defendants could not and would not be able
to engage in future infringement. See 35 U.S.C.
§ 283 (“The several courts having jurisdiction of
cases under this title may grant injunctions in accordance
with the principles of equity to prevent the violation of any
right secured by patent, on such terms as the court deems
reasonable.”). See Johns Hopkins University v.
CellPro, Inc., 152 F.3d 1342, 1366 n.31 (Fed.Cir. 1998);
Newspring Industrial Corp. v. Sun Gem Plastics Enterprise
Co., Ltd., 66 Fed.Appx. 863 (Fed. Cir. 2003)(upholding
injunctive relief including seizure of molds that had been
used to produce infringing products).
now, the R-BOC defendants wager all on testimony from Mr.
Minemyer's “expert” that the old infringing
products cannot be made with the retooled molds. (11-cv-8433,
Dkt. # 190, at 95; Dkt. #192, at 9). It's a bit of
semantics coupled with metaphysics that would not be out of
place in Vonnegut or, at a more pop-cultural level, Star
Wars - as in “these aren't the molds
you're looking for” - but it doesn't get the
R-BOC defendants out from under a finding of contempt. They
might as well argue that internal metabolic changes mean that
they are not the same people they were when the case
important to reiterate the salient portion of the injunction
- regardless of whether one subscribes to the unpersuasive
claim that the interior angles were changed to a
non-infringing degree as part of the 2008 redesign. The R-BOC
defendants were to turn over “all molds
utilized in the production of Infringing
Products.” (Emphasis supplied). Retooled or not, the
molds they hung onto were, indeed, the ones they
“utilized” to produce their infringing products.
If the injunction meant otherwise, it would have targeted
molds capable of still producing the infringing
products or molds that could be retooled so that they could
produce the infringing products. But it did not. The order
clearly targeted the molds that had been utilized to make the
infringing couplers. See, e.g., Ohr ex rel. National
Labor Relations Bd. v. Latino Exp., Inc., 776 F.3d 469,
474 (7th Cir. 2015)(district court's order set
forth an unambiguous command). It didn't matter what
condition they were in. What if the molds were rusty or were
damaged and could not be used any longer to make the
infringing couplers? Would the R-BOC defendants have refused
to turn such molds over as well? Apparently they would have,
but that's contempt. The molds would still have been
utilized to make infringing products, and that is the evil
the order explicitly dealt with.
telling, perhaps - and suggestive of their knowledge of their
culpability - that the R-BOC defendants took 30 days before
they informed the court of that - in their little
“chrono-synclastic infundibulum.” (This is a
phrase Judge Easterbrook is fond of: Sherwin-Williams
Co., 71 F.3d at 1340-41 (“Neither the arbitrator
nor the district court directly confronted the Fund's
central argument: that when Sherwin-Williams sold its stock
in Lyons, the old Sherwin-Williams group vanished, as if it
had fallen into one of Kurt Vonnegut's chrono-synclastic
defendants' view, the molds “no longer
existed” because a (meaningless) waffle pattern had
been added and (the equally unimportant) sealing lands had
been replaced with additional threads (that extended from the
original internal thread to replace the sealing land and
occupy the space the latter had formerly occupied). In short,
under the defendants' view, if the interior angle had not
been changed as part of the redesign or otherwise, the molds
would nonetheless have ceased to exist. The argument is
telling, the R-BOC defendants stood mute on the topic when
Mr. Minemyer initially asked that destruction of the molds be
part of any injunction order in March 2012. (07-cv-1763, Dkt.
#477-1; Dkt. #501). They and their lawyers made absolutely no
mention of the molds anywhere in their 34-page response to
Mr. Minemyer's request for a preliminary injunction that
ordered the molds be destroyed. (07-cv-1763, Dkt. #501). And
yet, the R-BOC defendants and its counsel knew full well what
the molds were: indeed, the R-BOC lawyer admitted that the
molds had multiple components. (Tr. 126, 127, 397). It was
Mr. Minemyer's counsel's view, enunciated at the
outset of the trial (Tr. 6) and ultimately proved by
evidence, that the molds had multiple parts which included
the base, and, that in fact, was still using the ones Mr.
Backman made initially for R-BOC, and were the ones utilized
in manufacturing the infringing parts. (Tr. 6). In short, as
the photographs at the trial revealed, the molds had multiple
parts, some quite large, which were never changed and Mr.
Lundeen never claimed were different from the day Mr. Backman
made and installed them. And yet, these were never turned
over as required by the injunction.
it's too late, even if the injunction could have been
more specific (and it should be noted the R-BOC defendants
make no such claim). “Where a party faced with an
injunction perceives an ambiguity in the injunction, it
cannot unilaterally decide to proceed in the face of the
injunction and make an after-the-fact contention that it is
unduly vague.” TiVo, 646 F.3d at 885. The
molds the R-BOC defendants used to make the infringing
couplers existed and they had them. And they didn't ship
them for destruction as ordered.
this makes for clear and convincing evidence that the R-BOC
defendants violated a significant portion of the injunction.
Latino Exp., Inc., 776 F.3d 469, 474 (7th
Cir. 2015)(clear and convincing evidence that defendant
violated command, that violation was significant, and that
defendant failed to make reasonable effort to comply). We now
move on to the balance of the injunction, and the matter of
“colorable differences” and continued
infringement. So it goes.
BRIEF INTERLUDE FROM LITIGATION
one must comes to grips with what “colorably
here, we can segue into the meatier disputes remaining in
this case. But we shall pause to take up a threshold issue,
and that is: the standard for contempt. In other words, how
does a court go about determining if the R-BOC defendants
were in contempt of the permanent injunction.
TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir.
2011), the Federal Circuit scrapped the quarter-century old
contempt analysis of KSM Fastening Systems v. H.A. Jones
Co., 776 F.2d 1522 (Fed.Cir.1985) and came up with a new
two-step analysis that in the court's word clarified the
procedure. 646 F.3d at 876-77. This was the second go-round
for the Federal Circuit on this issue. Previously, a
three-judge panel had affirmed the district court's
application of the contempt analysis set out in KSM
Fastening Systems v. H.A. Jones Co., 776 F.2d 1522
(Fed.Cir.1985) and found that the defendant was in contempt
of the district court's permanent injunction order. The
defendant petitioned for a rehearing en banc and,
ultimately, the Federal Circuit reversed itself and held that
“the two-step KSM analysis is unsound in
contempt cases and . . . clarif[ied] the standards governing
contempt proceedings in patent infringement cases.” 646
F.3d at 876.
Tivo, KSM also provided a two-step
analysis, but the first step was determining whether a
contempt proceeding should be allowed. 776 F.2d at 1532. To
make that determination, the court would compare the new
accused product to the adjudged infringing product to see if
there was “more than colorable difference”
between the two. If there were not, a contempt proceeding was
appropriate, and the court could move on to an infringement
analysis. If there were a colorable difference, a contempt
proceeding was inappropriate, and a new trial on infringement
was necessary. 776 F.2d at 1532. Tivo found this
unworkable because, as a practical matter, courts don't
determine the propriety of a contempt proceeding before
moving on to the merits. Accordingly, Tivo
“telescope[d] the . . . two-fold KSM inquiry
into one, eliminating the separate determination whether
contempt proceedings were properly initiated.” 646 F.3d
at 881. Not withstanding the “telescoping” of two
KSM steps into one, the end result in Tivo
was another, rather similar two-step analysis.
the Supreme Court's admonition that “contempt
‘is a severe remedy, and should not be resorted to
where there is a fair ground of doubt as to the wrongfulness
of the defendant's conduct'” Tivo, 646
F.3d at 881-82 (quoting Cal. Artificial Stone Paving Co.
v. Molitor, 113 U.S. 609, 618 (1885)), the Federal
Circuit explained that:
[t]he primary question on contempt should be whether the
newly accused product is so different from the product
previously found to infringe that it raises “a fair
ground of doubt as to the wrongfulness of the defendant's
conduct.” The analysis must focus not on differences
between randomly chosen features of the product found to
infringe in the earlier infringement trial and the newly
accused product, but on those aspects of the accused product
that were previously alleged to be, and were a basis for, the
prior finding of infringement, and the modified features of
the newly accused product. Specifically, one should focus on
those elements of the adjudged infringing products that the
patentee previously contended, and proved, satisfy specific
limitations of the asserted claims. Where one or more of
those elements previously found to infringe has been
modified, or removed, the court must make an inquiry into
whether that modification is significant. If those
differences between the old and new elements are significant,
the newly accused product as a whole shall be deemed more
than colorably different from the adjudged infringing one,
and the inquiry into whether the newly accused product
actually infringes is irrelevant. Contempt is then
646 F.3d at 882. The patentee has the burden of demonstrating
that the differences between the infringing product and the
new product are no more that colorable. 646 F.3d at 883. The
first problem here is, what is the meaning of the phrase
“colorable difference?” While some have found the
phrase, “colorably different, ” not as helpful as
they might have wished, the Federal Circuit and the field of
patent law have been fond of it for quite a while.
See, e.g., Farnham v. United States, 1913
WL 1293, 8 (Ct.Cl. 1913). Of course, in previous
generations, the court conceded the nebulousness of the
phrase. It even woodshedded a patent examiner for using it in
Application of Plank, 399 F.2d 241(Cust. &
Pat.App. 1968), calling the modifier “colorable”
“unsatisfactory . . . as a means of communicating a
clear idea . . . .” 399 F.2d at 244 n.5. The court went
on to say that patent law would “progress toward
clarity with greater alacrity if the use of the word is
abandoned and rejections are stated in less ambiguous
terms.” 399 F.2d at 244 n.5.
the phrase was often used thereafter, from Interdent
Corp. v. United States, 1975 WL 339906, 7 (Ct.Cl. 1975)
through Tivo and most recently in ePlus, Inc. v.
Lawson Software, Inc., 789 F.3d 1349, 1354 (Fed.Cir.
or “colorably” in the context of the degree of
changes or differences comes up in the context of not just
contempt procedure - as in KSM and Tivo -
but in claim preclusion, see, e.g., Nystrom v. Trex Co.,
Inc., 580 F.3d 1281, 1285 (Fed.Cir. 2009); Hallco
Mfg. Co., Inc. v. Foster, 256 F.3d 1290, 1297 (Fed.Cir.
2001), design patent infringement, see, e.g., Pacific
Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739
F.3d 694, 701 (Fed.Cir. 2014), and the doctrine of
equivalents, which is likely its origin. See Charles
Greiner & Co., Inc. v. Mari-Med Mfg., Inc., 962 F.2d
1031, 1036 (Fed.Cir.1992)(citing Odiorne v. Winkley,
18 F.Cas. 581, 582 (D.Mass. 1814) (Story, J.)).
event, we are told to focus on “those aspects of the
accused product that were previously alleged to be, and were
a basis for, the prior finding of infringement, and the
modified features of the newly accused product.”
Tivo, 646 F.3d at 882. If one or more of the
elements previously found to infringe has been modified or
removed, then we must determine whether that modification is
significant. Id. “The significance of the
differences between the two products is much dependent on the
nature of the products at issue.” Id. As such,
a modification that, given the prior art, would be obvious to
one skilled in the art would tend to lead to a finding of no
colorable difference. Id. On the other hand,
“[a] nonobvious modification may well result in a
finding of more than a colorable difference.”
Id. at 882-83. But, given the court's language,
neither of these hints seem to be dispositive.
course, we must be mindful of Tivo's injunction
that “the policy that legitimate design-around
efforts should always be encouraged as a path to spur further
innovation.” 646 F.3d at 883. (Emphasis supplied). But,
seemingly tidy formulas do not alone decide - nor were they
intended to decide - specific cases or determine of their own
force who is a winner and who is a loser in a case.
Compare Decisions in an area of law that seeks to
compensate injured plaintiffs while at the same time ensuring
future innovation are inherently tricky, and thus perhaps not
as precise as many would wish. Compare Lochner v. New
York, 198 U.S. 45, 76 (1905)(Holmes, J., dissenting)(But
“general propositions do not decide concrete
cases.”); Behrens v. Pelletier, 516 U.S. 299,
324 (1996) (Breyer, J., dissenting)([M]eaning in law depends
upon an understanding of purpose. Law's words, however
technical they may sound, are not magic formulas; they must
be read in light of their purposes, if we are to avoid
essentially arbitrary applications and harmful
the infringers sue the inventor claiming they don't
infringe and the inventor claims the infringers are in
contempt of the preliminary injunction and
time has come to further look at the changes the R-BOC
defendants made in the 2008 couplers - as opposed to - the
changes they claim they made. The two are quite different.
Tivo, 646 F.3d at 883. It is the R-BOC
defendants' current position that in 2008 they
consciously and legitimately redesigned their infringing
couplers to implement what they now say are four changes:
deletion of the waffle pattern on the exterior of the coupler
(which is conceded to be of no consequence); the removal of
the sealing surface on the interior in basically the middle
of the coupler; the addition of one or two additional
interior threads to replace the sealing surface where it had
been removed; and a change to the angle of the interior
we shall discuss these changes individually, they are not
necessarily being agreed to nor are they to be considered in
isolation. It's important and informative to examine them
separately given the odd, to say the least, and suspicious
chronology that the changes are claimed to be a part of. We
can quickly dispense with the waffle pattern. As the R-BOC
defendants conceded at the second trial the waffle pattern
was no more than “a cosmetic change” that was
uninvolved in any of the claims in the second case.
(Minemyer Chapter II, Trial Tr. 44-45). So it
can't possibly enter into the calculus when the
discussion is about changes that are more than
“colorably different.” See Tivo, 646
F.3d at 682 (to be more than colorable, modification must be
“significant”); Proveris Scientific Corp. v.
Innovasystems, Inc., 739 F.3d 1367, 1371 (Fed. Cir.
2014)(no colorable difference where it “it is not at
all clear from the record whether . . . purported change
actually had any effect.”).
leaves three purported changes, but the extension of the
threads and removal of the sealing land may be considered
together. After the sealing land had been removed in 2008,
extension of one or two threads to fill that space seemed
logical. And that's what occurred. It turns out,
when all the evidence is considered, if they happened at all,
it was a lot like the production of the part for the
robot's spaceship in Sirens of Titan. Extending
one or two threads was most likely happenstance, with no
meaningful purpose other than to fill a small eliminated
throughout the trial in this case it was difficult, if not
impossible, to see what - if anything - prompted the claimed
change in the angles of the interior threads, or how the
change, if any, came about. It should have been simple, given
the overarching importance that the angle of the threads
played in this and the previous case, given Claim 12 of Mr.
Minemyer's patent. Yet, counsel for the R-BOC group was
unable to provide a succinct explanation of what had
occurred. (Minemyer Chapter II, Trial Tr.
1392-1424). And the entire story involving the mysterious Mr.
Calvacca - who it was claimed without any evidence had made
changes to the thread angles - of course never testified in
cannot relate, in simple fashion, how it was that the
uncomplicated act of extending a few threads on a mold was
conceived and carried out, the story is troublesome, to say
the least. Truth and simplicity often go hand in hand.
Compare United States v. Klein,
=3 U.S. 128, 148 (1871); Lozman v. City of Riviera Beach,
Fla., 133 S.Ct. 735, 744 (2013); Kilgore Corp. v.
United States, 613 F.2d 279, 289 (Ct. Cl. 1979).
most of the proceedings in this case, the supposed change in
the angle of the interior threads could not be persuasively
explained, which is why counsel for Mr. Minemyer often
derisively described the supposed change as a
“Christmas miracle” - the new thread angle
claimed to have come into being around December 2008 (or
2011) - it was never clear. And Mr. Lundeen could never
persuasively explain when the change was made. It was said by
Mr. Minemyer's counsel, again derisively, that it must
have been the work of the “mold fairy.” (Perhaps
it was Mr.
who made the changes - which is what the Lundeen group argued
- but he never testified and has disappeared and cannot be
found, and who, in the quaint language of R-BOC's
counsel, may “be on the lam.”)
the course of both of these cases, the R-BOC defendants have
characterized the changes they claimed to have made to their
infringing couplers in varied ways. Initially, during the
first case, in February 2012, the R-BOC defendants had this
to say about their changes to which they alluded in a motion
in limine they filed on November 29, 2010:
In addition to having “circumferential bands, ”
the Redesign also has a different “internal”
construction than the old B&C coupler. Specifically, as
shown in the comparison on the next page below, unlike the
accused old design that Plaintiff identified as Exhibit C of
his Infringement Contentions, the B&C Redesign does not
have the alleged “sealing surface” element
Plaintiff and his expert witness, Mr. Kaiser, have identified
as being part of “each” accused B&C coupler.
(07-cv-1763, Dkt. #338, at 10).
were no other changes asserted. Not a word about interior
thread angles! Indeed, Mr. Lundeen, who knew more than anyone
and attended every one of the countless pretrial proceedings
in this case faithfully and took the proceedings “very
seriously, ” (Tr. 403, 404),  testified at the first
trial in February 2012 that there were no changes made to the
angles of the interior threads (and this after he
had the Nelson report which purported to show changes in
thread angles. (Tr. 20-21;1520)). He would only claim that
the interior thread angle was changed after the first trial
and then only on one model. (Tr. 414). At the first trial he
told the jury a very different story. Indeed, as we have
said, in the instant trial he acknowledged having told the
jury in the first trial that there were no changes to the
thread angles as part of the 2008 redesign. And no one was
more knowledgeable than he. And he would have been the one to
have approved and known about the changes in the 2008
changes - the circumferential bands that created a waffle
pattern on the surface of the coupler (which is now conceded
to be inconsequential and irrelevant) and the removal of the
interior sealing surface were the only reasons given by the
R-BOC defendants that “the Redesign ha[d] a different
construction from the coupler design accused . . . .”
That was according to the November 2010 motion in limine of
the R-BOC defendants' “To Bar Plaintiff From
Introducing Evidence of Alleged Infringement by R-BOC's
2008 Redesigned Coupler.” (07-cv-1763, Dkt. #338, at
purported changes the R-BOC defendants made to their
infringing couplers in 2008 came up again about two years
later. On November 25, 2011, they filed their declaratory
judgment action asking for a ruling that their 2008 couplers
do not infringe Mr. Minemyer's ‘726 patent. Again,
the only two reasons the R-BOC defendants posited for
non-infringement were the waffle pattern and the removal of
the sealing land. (11-cv-8433, Dkt. #1, ¶¶ 15, 16).
And they added a count claiming the patent was invalid, but,
inexplicably and erroneously were not specific as to why.
(11-cv-8433, Dkt. #1, ¶¶ 30-33). Indeed, the
Complaint, while extensive in its discussion of the
meaningless change in the exterior pattern of the coupler,
said nothing about a supposed change in the interior thread
after that, in December 2011 - a few months before the first
trial in February 2012 - the R-BOC defendants would insist -
but not tell anyone - that they had the angles on their
couplers measured and rather than being close to 80 degrees
as they had been, after the removal of the sealing surface
and the addition of one or two threads to occupy that area,
all but four models measured in the 74 to 76 degree range.
But for some unknown reason, they kept this all to themselves
- for nearly three more years until 2014.
to mention something under circumstances when a reasonable
person would do so is a factor that courts have long approved
as an organon for measuring credibility. It appears in
various ways. See Georgia v. South Carolina, 497
U.S. 376, 389 (1990); Doyle v. Ohio, 426 U.S. 610,
621 (1976); 3A Wigmore, Evidence in Trials at Common
Law § 1042 at 1058 (James H. Chadbourn Rev. 1970);
Jenkins v. Anderson, 447 U.S. 231, 239 (1980);
AZ v. Shinseki, 731 F.3d 1303, 1320-1321 (Fed.Cir.
2013). The concept often appears under the rubric impeachment
by omission. United States v. Useni, 516 F.3d 634,
652 (7th Cir.2008); United States v. Fonville, 422
Fed.Appx. 473, 482-483 (6th Cir. 2011). The name
counts for little. The principle is the same.
certainly a far-fetched tale, and those are not only
difficult for the witnesses to keep straight, but
factfinders, be they judges or juries, are seldom persuaded
by them and are free to reject them as contrivances. Indeed,
that which makes no sense to common understanding is often
rejected - and rightly so. See, e.g., Anderson v.
Bessemer City, 470 U.S. 564, 575 (1985)("the story
itself may be so internally inconsistent or implausible on
its face that a reasonable factfinders would not credit
it."); Edwards v. Snyder, 478 F.3d 827
(7th Cir. 2007); United States v. Hajda,
135 F.3d 439, 444-445 (7th Cir. 1998). Mr.
Lundeen's story was severely impeached by his
inconsistency and silence to say nothing of his admissions in
the first trial which played so significant a role here.
Lundeen's credibility was further eroded by his demeanor.
Demeanor counts, Anderson v. Bessemer City, 470 U.S.
564, 575 (1985)(“When findings are based on
determinations regarding the credibility of witnesses, Rule
52(a) demands even greater deference to the trial court's
findings; for only the trial judge can be aware of the
variations in demeanor and tone of voice that bear so heavily
on the listener's understanding of and belief in what is
said.”); United States v. Schiro, 679 F.3d
521, 532 (7th Cir.2012); Indiana Metal Products v.
NLRB, 442 F.2d 46 (7th Cir.1971); United States. v.
Smith, 668 F.3d 427, 430 (7th Cir.2012).
Lundeen's demeanor in this case was evasive and
unconvincing. He was clearly uncomfortable as he told the
tale of how the alleged changes in the angle of the interior
threads was part of the 2008 redesign. But, as we have said,
credibility, involves more than demeanor, Thompson v.
Keohane, 516 U.S. 99, 111 (1995), and disbelief of a
witness is not a substitute for proof. Moore v.
Chesapeake & O. Ry. Co., 340 U.S. 573, 576 (1951);
United States v. Zeigler, 994 F.2d 845 (D.C.Cir.
1993). Here Lundeen's testimony about the angle changes
was implausibile. Tijani v. Holder, 628 F.3d 1071,
1089 (9th Cir.2010). The implausibility of
testimony, the shifting and vacillating explanations for
conduct, the inconsistencies between testimony and objective
evidence, and the internal inconsistencies within testimony
can be so great that no reasonable fact-finder would credit
the testimony. See United States v. Bradford, 499
F.3d 910, 920-21 (8th Cir.2007); Pinpoint, Inc. v.
Amazon.Com, Inc., 347 F.Supp.2d 579, 583 (N.D.Ill.2004)
(Posner, J.)(sitting by designation). Cf. Miller-El v.
Dretke, 545 U.S. 231, 237 (2005); NLRB v. Dorothy
Shamrock Coal Co., 833 F.2d 1263, 1268 (7th Cir.1987).
That is the situation with Mr. Lundeen's attempts to
explain how the interior threads of the couplers were
different and how they came to be changed.
instant case was getting under way, Mr. Lundeen testified at
the trial in the first case on February 10, 2012, that the
internal angles of the threads, were not changed,
not from 2008 through the date he testified. (Minemyer
Chapter I, Trial Tr. 996 (Dkt. #489)). Things were
even more troublesome by the time of the second trial. Mr.
Lundeen claimed that modifications to the threads were done
after the trial, which would have been sometime in
2012. (Minemyer Chapter II, Trial Tr. 377). But
shortly thereafter, he said that “when the redesign was
done in ‘08, all the threads were changed from 80
degrees to 75 degrees on some of them.” (Minemyer
Chapter II, Trial Tr. 379). Obviously, this directly
contradicted what he swore to in the first trial, and what he
had said a few moments earlier. And it contradicted the
testimony of his fellow defendant, Ed Krajecki, who testified
that no threads were changed in any 2008 redesign, and he was
never told to change the angles of any threads by Lundeen or
anyone else. (Minemyer Chapter II, Trial Tr. 721-22,
got even farther fetched, because, as it turns out, the
changes in 2008 were, apparently, the result of magic, as Mr.
Lundeen testified a few minutes later:
Q. You did not request in 2008 that the angle of any
of the threads be ...