Gunsight maker Laser Aiming Systems has shot down several of its former employees Eric and Carl Bondhus’ counterclaims in Laser Aiming Sys. Corp., Inc. v. Bondhus, File No. 15-cv-510 (DWF/FLN).
This is not the two sides’ first courtroom duel: the Bondhus brothers sued Laser Aiming in 2012 for allegedly failing to live up to provisions of their employment agreements. That case was settled in the fall of 2013, but with an unusual provision mutually releasing all claims other than contract claims under the agreements’ provision requiring that bonuses be paid if the company received any patents on products conceived by the brothers. After settling, the Bondhus’ demanded payments under that bonus provision, and Laser Aiming promptly filed the present lawsuit, seeking a declaratory judgment that it is not obligated to pay bonuses to the Bondhuses for their alleged conception of several products.
The Bondhus brothers, in turn, filed several counterclaims for declaratory judgment of their inventorship on certain patents and patent applications, declaratory judgment of wrongful abandonment or withdrawal of other patents and patent applications, declaratory judgment of unenforceability of another patent, and breach of contract relating to Laser Aiming’s failure to pay bonuses for certain products allegedly conceived by the Bondhus’ and covered by issued patents or pending patent applications.
Laser Aiming went for a kill shot, and moved to dismiss on the theories that (1) the Bondhus’ declaratory judgment counterclaims were released by the parties’ earlier settlement agreement, and (2) the breach of contract counterclaim, in so far as it pertained to patent applications, was baseless. Judge Frank agreed. The Bondhus brothers’ declaratory judgment counterclaims were dismissed with prejudice, and their breach of contract claim was limited to only those allegations relating to products allegedly conceived by the Bondhus’ and covered by an issued patent. Full opinion here.
The moral of the story? Take care when trying to carve unasserted or potential future claims out of a release, or you may end up shooting yourself in the foot.