Feit Elec. Co. v. Beacon Point Capital, LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Sept. 30, 2015) (Coleman, J.).

Judge Coleman granted in part declaratory judgment plaintiff Feit’s motion for summary judgment of collateral estoppel regarding defendant Beacon Capital’s ‘464 and ‘140 patents – both from the Ole Nilssen portfolio.

The Court held as follows:

  • Beacon Capital was collaterally estopped from asserting the ‘464 patent because it was finally adjudicated as unenforceable due to inequitable conduct. The intervening Therasense decision did not change anything. Holding otherwise would make every final judgment potentially infirm.
  • Beacon Capital was not collaterally estopped from asserting the ‘140 patent. While it was related to patents finally adjudged to be unenforceable, it had never been a part of those judgments. The intervening Therasense decision was, therefore, applicable to the ‘140 patent.
  • The Court held that there were questions of fact regarding both materiality and intent pursuant to Theresense.

In addition to being prepared to address venue at an initial status conference, the Court asked for a list of relevant case citations – without a brief – that Wimo would reply upon.