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 IN THE UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION 

YOON JA KIM, 

Plaintiff, 

vs. 

THE EARTHGRAINS CO., 

k/n/a SARA LEE BAKERY GROUP, 

INC., 

Defendant. 

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No. 01 cv 3895 

Hon. Susan E. Cox 

DEFENDANT SARA LEE BAKERY GROUP, INC.’S INITIAL STATUS REPORT

Pursuant to this Court’s September 7, 2007 Order and the Court’s standing Order Setting 

Initial Status Report, Defendant Earthgrains Company, k/n/a Sara Lee Bakery Group, Inc. (“Sara 

Lee”) submits its Initial Status Report. 

1. Summary of Claims Asserted

This is a patent infringement case. In Kim’s initial complaint filed in 2001, Kim asserted 

that two Sara Lee products, “D’Italiano” and “Buttertop”, infringe U.S. Patent No. Re 36,355 

(the “‘355 Patent”). (Compl., May 25, 2001.) In 2005, Kim filed an amended complaint, which 

asserts that five products baked by Sara Lee infringe claims 5-8 and 10 of the ‘355 Patent. (First 

Am. Compl, Jan. 3, 2005 at ¶¶ 6, 12-17.)1

 The products are the original Sara Lee products and 

three breads baked by Sara Lee under a licensing agreement with ConAgra -- Healthy Choice 

Natural Wheat Bread, Healthy Choice Seven-Grain Bread, and Healthy Choice Whole Grain 

Bread (the “Healthy Choice products”). (Id. at ¶¶ 12-13.) Kim asserts that Sara Lee’s actions 

constitute direct infringement pursuant to 35 U.S.C. § 271(a). (Id. at ¶ 17.) 

 

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 Dr. Kim filed a second lawsuit, accusing additional Sara Lee products of infringement, in 2005, 

but that lawsuit was dismissed by the Court in its entirety in early 2006. Kim v. Sara Lee Bakery 

Group, Inc., 412 F. Supp. 929 (N.D. Ill. 2006). 

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Sara Lee asserts a counterclaim for declaration of invalidity and non-infringement of the 

pursuant to 28 U.S.C. §§ 2201-02. (Ans. to First Am. Compl., Jan. 26, 2005 at ¶¶ 30-37.) 

2. Statement of Relief Sought

Kim seeks injunctive relief pursuant to 35 U.S.C. § 283, monetary damages, treble 

damages pursuant to 35 U.S.C. § 284, reasonable attorneys’ fees pursuant to 35 U.S.C. § 285, 

and other relief that this Court deems just. (First Am. Complaint.) Kim’s latest damages claim 

is $8.9 million in actual damages from late 1999 through early 2006. Sara Lee seeks injunctive 

relief in the form of a order declaring that Sara Lee has not, and does not, infringe the ‘355 

Patent, that the ‘355 Patent is not valid, that the ‘355 Patent is unenforceable, as well as 

reasonable attorneys’ fees pursuant to 35 U.S.C. § 285, reasonable costs in defending this action, 

and other relief that this Court deems just. (Id.) 

3. Status of Pending Motions

There are no motions currently pending before the Court; however the procedural posture 

of this case merits further explanation. Sara Lee filed a motion for summary judgment on 

July 14, 2006 on grounds of invalidity, non-infringement, and estoppel (estoppel with respect to 

the Healthy Choice Products only). At about the time Sara Lee filed its motion for summary 

judgment, the United States Patent and Trademark Office (“USPTO”) issued an Initial Office 

Action rejecting the sole claims of the ‘355 Patent that Kim asserts Sara Lee infringed on 

grounds of invalidity. On July 19, 2006, the Court struck Sara Lee’s motion for summary 

judgment with leave to re-file pending the completion of the reexamination process -- if the 

USPTO ruling stands and the ‘355 Patent continues to be held invalid, this matter is moot. 

(Minute Order, July 19, 2006). On January 25, 2007, the UPSTO issued a Final Office Action 

reaffirming its earlier decision, Kim responded to the Final Office Action, and the Court has 

continued status hearings in this matter pending the end of the reexamination process. On 

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September 18, 2007, the USPTO issued an advisory action stating that it was continuing to reject 

the claims asserted against Sara Lee as invalid. 

4. Current Dates for Discovery Cut-Offs, Pre-Trial Order or Trial

Fact discovery and expert discovery is closed in this matter. (Order, March 9, 2005.) It 

is expected that if Kim’s claims survive Sara Lee’s renewed motion for summary judgment, each 

party will need to supplement their expert damages report. 

5. Earliest Date Parties Will Be Available for Trial

If the ‘355 Patent survives the reexamination, Sara Lee intends to move for summary 

judgment. If that motion is denied, Sara Lee will need an additional 3 months to prepare for 

trial. 

6. Status of Settlement Discussions

Kim made a formal settlement demand on March 8, 2006. Sara Lee considered the 

demand, but Sara Lee viewed the demand as an unrealistic, unproductive demand. Dr. Kim did 

not provide Sara Lee with an itemization of damages and settlement demand as required by the 

Court in its standing Order Setting Initial Status Report. 

Respectfully submitted, 

SARA LEE BAKERY GROUP 

By: s/Craig C. Martin__________

 Craig C. Martin 

Craig C. Martin (Atty. No. 06201581) 

Elizabeth L. Fine (Atty. No. 06282854) 

JENNER & BLOCK LLP 

330 N. Wabash 

Chicago, IL 60611 

Telephone: 312 222-9350 

Facsimile: 312 840-7776 

cmartin@jenner.com Dated: September 20, 2007 

Case 1:01-cv-03895 Document 179 Filed 09/20/07 Page 3 of 4
CERTIFICATE OF SERVICE

I, Elizabeth L. Fine, an attorney, hereby certify that, I caused a copy of the 

foregoing DEFENDANT SARA LEE BAKERY GROUP INC.’S INITIAL STATUS 

REPORT to be served upon the following by e-mail and U.S. Mail on September 20, 2007: 

 Yoon Ja Kim 

 Research Resources, Inc. 

 913 Frances Parkway 

 Park Ridge, IL 60068 

 ykajin@gmail.com 

 Plaintiff 

 

 s/Elizabeth L. Fine _

 Elizabeth L. Fine 

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