be precluded as a matter of law from contesting the validity and enforceability of the
902 patent. In a patent infringement case a district court applying the doctrine of res
judicata applies its own Circuit’s law regarding the doctrine. Epic Metals Corp. v.
HH. Robertson Co., 870 F.2d 1574, 1576 (Fed. Cir. 1989). The elements for res
judicata are: 1) final judgment, 2) identity of the cause of action, and 3) identities of
parties or privies in the suits. Hawxhurst v. Pettibone Corp. 40 F.3d 175, 180 (7*
Cir. 1994); see also Martino v. McDonald’s System, Inc, 598 F.2d 1079, 1083-84
(7 Cir. 1979)(stating that res judicata is an “absolute bar” to “every matter offered
and received to sustain or defeat the claim or demand and to every matter which
might have been received for that purpose . . .” and that for res judicata purposes a
cause of action includes defenses “that might have been raised.”).

Central attempts to confuse the pertinent issues by arguing that there is
insufficient evidence for the court to conclude as a matter of law that the devices at
issue in the California suit are the same as the devices in the instant suit. Central
cites several cases which are distinguishable from the instant set of facts because in
all of those cases infringement was an issue at dispute in the earlier cases, thus
making the devices’ similarity relevant. Central does not dispute that there was no
counterclaim of infringement in the California suit. The California suit was not
concerned with infringement. Rather the suit was brought by Central seeking to
declare the 902 patent invalid and unenforceable. We find that res judicata is

applicable in the instant case and therefore grant Mitutoyo’s motion for summary



believes demonstrate the absence of a genuine issue of material fact.” Celotex Corp.
v. Catrett, 477 U.S. 317, 323 (1986) (quoting Fed. R. Civ. P. 56(c)). This initial
burden may be satisfied by presenting specific evidence on a particular issue or by
pointing out “an absence of evidence to support the non-moving party’s case.”/d. at
325. Once the movant has met this burden, the non-moving party cannot simply rest
on the allegations or denials in the pleadings, but, “by affidavits or as otherwise
provided for in [Rule 56], must set forth specific facts showing that there is a
genuine issue for trial.” Fed. R. Civ. P. 56(e). A “genuine issue” in the context of a

‘ motion for summary judgment is not simply a “metaphysical doubt as to the material
facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp, 475 U.S. 574, 586
(1986). Rather, a genuine issue of material fact exists when "the evidence is such
that a reasonable jury could return a verdict for the nonmoving party." Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Insolia v. Philip Morris, Inc. 216
F.3d 596, 599 (7th Cir. 2000). The court must consider the record as a whole, in a
light most favorable to the non-moving party, and draw all reasonable inferences that
favor the non-moving party. Anderson, 477 U.S. at 255; Bay v. Cassens Transport
Co., 212 F.3d 969, 972 (7th Cir. 2000).

DISCUSSION

I. Motion for Summary Judgment- Validity of Patent

Mitutoyo argues that it is entitled to summary judgment and Central should



judgment and order that Central is precluded from asserting in this action that the
902 patent is invalid and unenforceable under the doctrine of res judicata. Central
had its opportunity to litigate this issue in the California suit and the District of
Columbia court made a final ruling, and Central is not entitled to another bite at the

pear before this court.

- Motion ifurcate

Central has filed a motion to bifurcate the discovery of and trial on issues of
infringement, invalidity and patent misuse from the discovery of and trial on the
issues of damages and willfulness. Pursuant to Federal Rule of Civil Procedure 42 a
court “may” bifurcate issues and order separate trials if it will further “convenience,”
“avoid prejudice,” or “when separate trials will be conducive to expedition and
economy. ...” Fed. R. Civ. P. 42 (b). Central argues that bifurcation of the issues
will help to avoid jury confusion and will limit prejudice. Mitutoyo opposes the
bifurcation and we agree that the liability, damages, and willful infringement
evidence is intertwined to the extent that mainly the same evidence and witnesses
would be presented at two different trials were we to grant the motion for
bifurcation. We do not find that a bifurcation of issues would serve any of the
purposes listed in Rule 42 and the interests of the efficient functioning of the court
system will be served absent a bifurcation. We also agree that Central’s attempt at

bifurcating discovery at this late stage of the proceedings is untimely. Therefore, we


Minute Otder Forts (06/97)
: .

4s 7 United States District Court, Northern District of Hinois
Nam ects seat Samuel Der-Yeghiayan Sitting aid Sedge
CASE NUMBER ; 03 C 990 DATE 3/30/2004
CASE Mitutoyo vs. Central Purchasing
TITLE
[In the following box (a) indicate the party filing the motion, e.g,, plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented]
DOCKET ENTRY:
qd) a Filed motion of [ use listing in “Motion” box above.]
(2) im Brief in support of motion due
@) a Answer brief to motion due___. Reply to answer briefdue__.
(4) o Ruling/Hearingon__—setfor___—at
(5) o Status hearing[held/continued to] [set for/re-set for] on setfor____—at
(6) oO Pretrial conference[held/continued to] [set for/re-set for]on__—setfor___—sat__.
(7) a Trial[set for/re-set for]on_ at
(8) o [Bench/Jury trial} [Hearing] held/continuedto__—_at
(9) oO This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

OFRCP4(m) COLocal Rule 41.1 OFRCP41(a)(1) OFRCP4t(a)(2).

ao [Other docket entry] For the reasons stated in the attached memorandum opinion, the plaintiff's
motion for summary judgment is granted. The defendant’s motion for bifurcation is denied. All pending
dates and motions are hereby terminated as moot. Terminating case. Enter Memorandum Opinion.

(11) @ (For further detail see order attached to the original minute order.]
No notices required, advised in open court.

No notices required.

Notices mailed by judge's staff.
Notified counsel by telephone.

o | Docketing to mail notices.

Mail AO 450 form.

‘Copy to judge/magistrate judge.
‘courtroom
MW6 deputy’s
initials
Date/time received in
central Clerk's Office sailing deputy tials



deny the motion for bifurcation.

CONCLUSION
Based on the foregoing analysis we grant Mitutoyo’s motion for summary
judgment and order that Central is precluded from asserting in this action that the

902 patent is invalid and unenforceable. We also deny Central’s motion for

bifurcation.

Samuel eG ; d

United States District Court Judge

Dated: March 30, 2004



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
MITUTOYO CORPORATION, )
MITUTOYO AMERICA CORP. and _)
C.E. JOHANSSON AB, )
)
Plaintiffs, )
)
v. ) No. 03C 0990
)
CENTRAL PURCHASING, INC., ) ger?
) Wr
Defendant. ) ws?

MEMORANDUM OPINION
SAMUEL DER-YEGHIAYAN, District Judge

This matter is before the court on Plaintiff Mitutoyo Corporation’s, Mitutoyo
America Corporation’s, and C.E. Johansson AB’s (collectively referred to as
“Mitutoyo”) motion for summary judgment as to the validity and enforceability of
U.S. patent No. 4,743,902 (“902 patent”). Also before the court is Defendant
Central Purchasing, Inc.’s (“Central”) motion for bifurcation. For the reasons stated
below we grant the motion for summary judgment and deny the motion for

bifurcation.



BACKGROUND

Central filed a complaint for declaratory judgment of patent invalidity and
unenforceability against Mitutoyo on or about March 29, 1995 in the United States
District Court for the Central District of California (“California suit”). The first
amended complaint in that case asserted that the 902 patent was invalid and
unenforceable. The action was transferred to the United States District Court for the
District of Columbia. The court granted Mitutoyo’s motion for summary judgment
on several claims and dismissed the remaining claims with prejudice. Central
appealed the trial court’s rulings, but Central voluntarily withdrew the appeal.
Central continues to assert in the instant action that the 902 patent is invalid and
unenforceable and Mitutoyo has filed a motion for summary judgment asking this
court to preclude Central from asserting that the 902 patent is invalid and
unenforceable under the doctrine of res judicata. Central has also filed a motion for

bifurcation.

LEGAL STANDARD
Summary judgment is appropriate when the record reveals that there is no
genuine issue as to any material fact and the moving party is entitled to judgment as
a matter of law. Fed. R. Civ. P. 56(c). In seeking a grant of summary judgment the
moving party must identify “those portions of ‘the pleadings, depositions, answers to

interrogatories, and admissions on file, together with the affidavits, if any,’ which it