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R-Boc Representatives, Inc. v. Minemyer

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

February 10, 2017

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.


          Jeffrey Cole, Magistrate Judge


         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 (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 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.


         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]



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


         John 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).[12] (“R-Boc group”).

         Mr. 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.

         Around 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.

         For now, it is enough to say that Mr. Minemyer learned of the “redesign” at the 2008 deposition of Mr. Lundeen.[13] 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.[14]


         In Mr. 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 6-9, 3/23/11).

         Eventually, 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).[15] 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, at 21-26).[16]

         On July 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, [17] the entry of a final order was delayed more than might normally be the case. (07-cv-1763, Dkt. #477, #501, #505, #508, #527).

         In the 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, BC02-166154, BC02-188154.

(07-cv-1763, Dkt. #526)(emphasis supplied.

         Straightforward 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).

         Then 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. (Tr. 275).

         At a 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.

         Destruction 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).

         Even 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 started.[18]

         It is 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).[19] 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.[20] The molds would still have been utilized to make infringing products, and that is the evil the order explicitly dealt with.

         It is 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.”[21] (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 infundibulums.”)).

         In the 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 silly.

         More 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.

         Now 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.

         All 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.



         (wherein one must comes to grips with what “colorably different” means)

         From 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.

         In 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.

         Like 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.

         Noting 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 inappropriate.

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).[22] 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.

         Nonetheless, 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. 2015).

         “Colorable” 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.)).

         In any 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.

         Of 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.[23] 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 results.”).



         (wherein the infringers sue the inventor claiming they don't infringe and the inventor claims the infringers are in contempt of the preliminary injunction and are infringing)

         The 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 threads.

         While 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.”).

         That 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.[24] 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 space.[25]

         But, 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 this case.

         If one 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).

         Throughout 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.

         Calvacca, 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.”)

         Over 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).

         There 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), [26] 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 redesign.

         The two 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 12).

         The 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 angles.

         Right 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.[27]

         Failure 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.

         It is 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.

         Mr. 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).

         Mr. 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.

         While 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)).[28] 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, 737; 1523).

         But it 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 ...

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