Feb. 23, 2004) (granting defendant’s motion to withdraw without prejudice counterclaims and
defenses that “it no longer needs to pursue,” even though discovery had passed and the case was
in the summary judgment stage); DuToit v. Strategic Minerals Corp., 136 F.R.D. 82, 85-86 (D.
Del. 1991) (granting plaintiffs’ motion for voluntary dismissal pursuant to Rule 41,
notwithstanding that defendants wanted a ruling on their pending summary judgment motion, and
stating that “(t]he case law suggests that a plaintiffs purported desire to avoid a potential adverse
determination does not warrant denial of voluntary dismissal unless the plaintiffs motion follows
an indication by the court that it intends to rule against the plaintiff on the pending motion”)
(collecting cases).

For all of the reasons stated, it appears reasonably clear that the procedural foundation for
Solaia’s Motion—i.e., that Rockwell cannot amend its supplemental interrogatory response
without complying with Rule 41—is not well-placed. Solaia has not identified (nor has the
Court’s research revealed) a single case where summary judgment was granted in such an
instance.

B. A Ruling on the Merits of the Motion Should Be Deferred in Any Event

In the end, these procedural concerns do not matter because even if Solaia’s Motion were
procedurally well-taken, on the merits it appears that the parties’ arguments are best addressed in
a different context than the present Motion. Much of the parties’ dispute relates to the coverage
of claims 11 and 12 of the ‘318 patent. According to Rockwell, Solaia’s infringement
counterclaim is objectively baseless, as the ‘318 patent is unenforceable due to prosecution
history that establishes disclaimer of coverage to systems like Rockwell’s. In particular,

Rockwell argues, the inventor of the ‘318 patent disclaimed coverage by distinguishing his

13


counterclaim of infringement (“Answer”), Rockwell asserted several affirmative defenses,
including, inter alia, non-infringement, judicial estoppel, equitable estoppel, and res judicata.
(D.E. 369 at 2-3.) Another of the six affirmative defenses averred that Solaia’s claims related to
“the ‘318 patent are invalid and/or unenforceable for failure to meet the requirements of the
patent laws under 35 U.S.C. § 1 et seq.” (dd. at 2.) Not one word of this Answer, and not one
word of either Rockwell’s original or amended cross-claims (D.E. 167, 288), alludes to the
initiation of objectively baseless litigation that is the subject of Solaia’s Motion for summary
judgment here.

The subject of Solaia’s Motion is a now-withdrawn theory of patent misuse that Rockwell
once put forth in a supplemental response to one of many interrogatories propounded by Solaia,
which Rockwell thereafter withdrew by amendment to the interrogatory response before Solaia
filed its Motion. More specifically, Solaia initially propounded an interrogatory which requested
Rockwell to “[iJdentify and describe in detail the factual bases for Rockwell’s claim that the
claims of the ‘318 patent are unenforceable.” (Solaia’s Statement of Material Facts (D.E. 499),
Ex. A at 2.) In addition to making a procedural objection, Rockwell responded in May 2003 by
setting forth a theory that the prior owner of the ‘318 patent participated in an industry standards-
setting process, and that the prior owner failed to disclose his ownership of the ‘318 patent and
otherwise engaged in inappropriate conduct during the standards-setting process. (Index of Exs.
to Rockwell’s Mem. in Opp’n to Solaia’s Mot. for Summ. J. (D.E. 519), Ex. 5 at 16.) The
apparent upshot of this defense, at least according to Rockwell, would have Solaia, the current
owner of the ‘318 patent, precluded from claiming infringement relating to the use of products

that the former owner of the ‘318 patent encouraged and worked to establish as appropriate


construed as the parties’ cross-motions for summary judgment. /d. In contrast, in the present
case, Solaia has moved for summary judgment on a withdrawn interrogatory response that never
was articulated in Rockwell’s answer or counterclaim. If Solaia’s summary judgment motion
were granted, it would have no effect on the pleadings here.

Simply put, Solaia offers no authority for the counter-intuitive proposition that an issue
raised solely in an interrogatory response can only be withdrawn from a case under the rubric of
Federal Rule of Civil Procedure 41. There are substantial practical reasons to doubt the wisdom
of such an approach: parties in civil litigation, even garden-variety civil litigation, frequently
amend (and sometimes narrow) factual disputes in a case via amendments to interrogatory
responses without triggering motion practice under Rule 41. Such informal narrowing or
sharpening of issues is usually viewed as a good thing, not a bad one—at least from a judicial
perspective and often from the perspective of the parties. Making such interrogatory-response-
amendments the target of summary judgment motions threatens to invite a multiplicity of
motions on (as here) collateral issues that would draw substantial judicial resources away from
issues central to the particular case at issue and away from other cases as well.

Solaia also contends broadly that where a litigant seeks to withdraw a claim or defense
without prejudice to avoid summary judgment, the issue should be decided on summary
judgment in the interests of justice. Putting aside that Rockwell amended its interrogatory
response before Solaia filed this Motion, and putting aside the fact that Solaia offers no support
for its contention that Rockwell is trying to “avoid summary judgment” (as opposed to
streamlining discovery disputes here in favor of broader litigation in Wisconsin), Solaia still

overstates its position. The sole support (other than Quad) that Solaia offers in support of its


also asserts that it is substantively meritless.
il. Discussion

Summary judgment is appropriate when 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), Summary
judgment may be granted when no reasonable jury could return a verdict for the nonmoving
party. See Anderson v. Liberty Lobby, Inc., 477 US. 242, 248 (1986). In determining whether
there is a genuine issue of material fact, the evidence must be viewed in the light most favorable
to the party opposing the motion, and any doubts regarding the evidence must be resolved in
favor of the nonmoving party. Foley v. City of Lafayette, 359 F.3d 925, 928 (7th Cir. 2004).

Solaia makes several arguments in support of its motion for summary judgment. Of most
relevance, Solaia first contends that Rockwell “realizes its misuse-unenforceability claim is
wholly without merit and wants to avoid adjudication of that claim.” (Solaia’s Mot. for Summ.
J, (D.E. 498) at 11.) In this regard, Solaia further argues that Rockwell cannot at this stage of the
litigation simply withdraw its patent misuse claim and asserts that the “patent misuse claim”
should be dismissed with prejudice under Fed. R. Civ. P. 41. (/d. at 11-12.) Solaia also contends
that a proper analysis of the patent claim construction issues precludes Rockwell’s ability to
assert a patent misuse claim, at least in part because of a prior claims construction ruling in a case
involving Judge Holderman, Solaia Technology LLC v. Jefferson Smurfit Corp., No. 01-6641
(N.D. Ill, filed Aug. 27, 2001).

Rockwell responds that, because it voluntarily withdrew the patent misuse issue from the
case, Solaia’s motion should be denied as moot or deferred until resolution of the parties’ cross

motions for summary judgment of noninfringement and infringement. (D.E. 517 at 8 & n.6.)


industry practice.

Rockwell later supplemented its interrogatory response to add the theory that “[t]he ‘318
patent is unenforceable due to patent misuse.” (D.E. 499, Ex. A. at 3.) In Rockwell’s
approximately one-page long supplemental interrogatory response, Rockwell asserted that “[t]he
patent owner has engaged in patent misuse by instituting objectively baseless litigation regarding
the ‘318 patent and by conducting litigation regarding the ‘318 patent in bad faith.” (/d. at 4.)
Thus, Rockwell's patent misuse theories emerged for the first time in one supplemental response
to one of Solaia’s interrogatories.

On December 11, 2003, Rockwell again supplemented its response to Solaia’s
interrogatory in question. Rockwell explained that it withdrew “its affirmative defense of the
unenforceability of the ‘318 patent due to patent misuse.” (/d., Ex. K at 2.) Rockwell stated that
“[a]lthough there is ample evidence supporting this defense, Rockwell withdraws this defense to
streamline the patent litigation and limit competition issues to the ongoing antitrust litigation
pending in Wisconsin... .” (/d.) (As stated, this Wisconsin litigation is pending in federal
court in Milwaukee, and it appears to relate to various issues and claims under Wisconsin law as
well as federal law, one of which issues is the “objectively baseless litigation” contention.)

The next day, December 12, 2003, Solaia filed the present Motion for summary
judgment. The Motion relates to the “objectively baseless litigation” contention of Rockwell that
was withdrawn even before the Motion was filed. Solaia contends that it is entitled to summary
judgment against the “objectively baseless litigation” contention, which, Solaia argues, Rockwell
cannot simply withdraw. (See, ¢.g., Solaia’s Reply Mem. in Supp. of Its Mot. for Summ. J. (D.E.

534) at 2.) Rockwell challenges the factual and procedural foundations for Solaia’s Motion, and


from the interrogatory response in order to streamline this litigation (and focus the issue into the
Wisconsin litigation, where it exists with other, broader issues not present here) and to help
resolve various discovery disputes that were pending before Magistrate Judge Nolan. (See D.E.
517 at 3; see also, e.g., D.E. 519, Ex. 4 (examples of discovery rulings prompted by discovery
disputes concerning this general subject).) That is materially different from a scenario in which
the defenses are conceded to be baseless.

All of these distinctions are significant, but for present purposes it is worth highlighting
that the defenses at issue in Solaia’s proffered Quad opinion were put at issue by having been
pleaded in the answer in that case, which is not the situation here. This procedural distinction
between the present case and the situation in Quad is reflected, as coincidence would have it, in
another unpublished opinion from the Quad case not cited by either party. In Quad
Environmental Technologies Corp. v. Union Sanitary Dist., No. 88-1806, 1990 WL 288712
(N.D. Cal.*), Quad (the plaintiff) likewise moved for summary judgment concerning an
affirmative defense. Previously, the relevant defendant itself had moved for summary judgment
concerning the defense, and the district court therefore “deemed the [movant’s] answer amended
to include the defense.” /d., at *1 (Feb. 20, 1990). Thereafter, the plaintiff moved for summary

judgment, asserting that the defense was baseless, and the district court evaluated what it

4 The Westlaw citation appears to include three orders from the case, which were issued on

February 20, 1990, March 26, 1990 (and amended on April 3, 1990), and September 20, 1990.
The Court references the date of the respective order when using the Westlaw citation. It appears
as though the subject of the September 20, 1990 ruling, a finding of estoppel that resulted in a
grant of summary judgment (which is not at issue here or the reason for this Court’s citation of
the Quad opinion/orders), was reversed on appeal. See Quad Env’t Techs. v. Union Sanitary
Dist., 946 F.2d 870 (Fed. Cir. 1991). That reversal, on another issue, is not germane for present
purposes.


Minute Order Form (06/97)

United States District Court, Northern District of [inois

Name of Assigned Judge Mark Filip Sitting Judge if Other
or Magistrate Judge than Assigned Judge
CASE NUMBER 02 € 4704 DATE 9/29/2004
CASE SOLAIA TECHNOLOGY LLC vs. ARVINMERITOR, INC.
TITLE

{In the folowing box (a) indicate the party filing the motion, ¢-g,, plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

of the motion being presented ]

ay

MOTION:

DOCKET ENTRY:

(ly G Filed motion of { use listing in “Motion” box above.|

Q) Qa Brief in support of motion due

@) oO Answer brief to motion due___. Reply to answer brief due.

(4) Oo Ruling/Hearingon__—_—_set for at

(5) a Status hearing[held/continued to] [set for/re-set for]on__———s set for at

(6) Qa Pretrial conference[held/continued to] [set for/re-set for]on___——ssetfor att.

mM oa Trial[set for/re-set for] on __—_at

(8) a (Bench/Jury trial] [Hearing] held/continued to ____at

(9) o This case is dismissed (with/without prejudice and without costs{by/agreement/pursuant to]
OOFRCP4(m) Cl) Local Rule 41.1 COFRCP41(a)(1) OO FRCP41(a)(2).

go ff {Other docket entry) ENTER MEMORANDUM OPINION AND ORDER: Counterclaim plaintiff

Solaia Technology LLC’s motion for summary judgment {498-1] is denied without prejudice.

Oo {For further detail see order (on reverse side offattached to) the original minute order.]

No notices required, advised in open court, Document
Number

No notices required.
umber of nies

Notices mailed by judge’s staff, ep 29 2004
Notified counsel by telephone.

ate docketed G
Docketing to mail notices (y |
Mail AO 450 form. wenden {

dobketldy dopey initials

Copy to judge/magistrate judge.

LCT date maitéd notice
courtroom

BK deputy’s
initials

Date/time received in ol 7
central Clerk’s Office mailing depary initials



discretion of the district court,” Kovalic vy. DEC Int'l, Inc., 855 F.2d 471, 473 (7th Cir. 1988),
and “the very concept of discretion presupposes a zone of choice within which the trial court may
go either way in granting or denying the motion,” id. 474 (internal quotation marks and citation
omitted). See also, e.g., id. (teaching that a litigant need not prevail on each of the Pace factors,
and that Pace is “simply a guide for the trial judge”); accord, e.g., Johnston Dev. Group, Inc. v.
Carpenters Local Union No. 1578, 728 F. Supp. 1142, 1146 (D.N.J. 1990) (collecting case law
and treatise material and stating that “[s]ince Rule 41(a)(2) only applies when an answer or a
motion for summary judgment has been filed by the defendants, the mere filing of an answer or a
motion for summary judgment could not, without more, be a basis for refusing to dismiss without
prejudice”) (internal quotation marks and citation omitted).

Solaia has not provided any authority (nor has the Court found any) that supports the idea
that an interrogatory answer that was never the subject of an amendment to the pleadings, and
that if “dismissed” would not prompt any amendment even to the pleadings, can be the subject of
Rule 41 analysis.’ Solaia’s brief does not convincingly establish the propriety of granting

summary judgment on an issue that has merely been raised in an interrogatory answer rather than

5 Solaia also appears to contend that the patent misuse issue has not been withdrawn from

this case via the amended interrogatory response, but rather only the patent misuse issue as it
relates to an affirmative defense and not as it might relate to a patent misuse claim by Rockwell
in this Court (as opposed to in Wisconsin). (See D.E. 534 at 3.) This position is unavailing for at
least two reasons. First, as explained, there is no “patent misuse” claim that was pleaded by
Rockwell in its pleadings here. Second, while the issue was raised in the since-withdrawn
interrogatory response, Rockwell has made clear that its withdrawal applies both to any
affirmative defense or claim in this Court (as opposed to a court in Wisconsin). (See, e.g., D.E.
517 at 8 (‘Rockwell never pleaded a claim based on patent misuse in any claim or defense.”); id.
n.6 (“Rockwell’s patent misuse claim was raised solely in an interrogatory answer, and is now
withdrawn. We are aware of no authority to the effect that an issue raised solely in an
interrogatory answer can only be withdrawn from the case via Rule 41. Solaia cites no such
authority.”’).)

it


contention is Pace v. Southern Express Co., 409 F.2d 331 (7th Cir. 1968). Pace dealt with a
situation where the defendant appears to have moved for summary judgment on all claims against
it, and Pace affirmed the district court’s exercise of discretion in refusing to allow the plaintiff to
withdraw her action without prejudice. /d. at 334. Pace set forth a multi-prong set of analytical
guideposts to help inform district courts’ exercise of discretion in deciding whether to dismiss an
action without prejudice after, among other things, a summary judgment motion is filed. Jd.

Pace is not helpful to Solaia’s effort to bridge the apparent procedural gaps underpinning
its request for summary judgment on the withdrawn interrogatory response. First, it is not clear
that, even if Rockwell needed to amend its defenses or counterclaim, Rule 41 would be the
proper procedural vehicle to drive the analysis. The Court’s research has uncovered case law
teaching that “courts have recognized that Rule 41(a) was singularly designed to allow for
voluntary dismissal of entire actions only and not for dismissal of one of several claims against a
defendant.” Louify v. R.R. Donnelley & Sons, Co., 148 F.R.D. 599, 602 (N.D. Ill. 1993)
(collecting cases). Solaia certainly is not seeking to dismiss all of the claims against it by this
Motion; as previously stated, even if Solaia’s Motion were considered and found meritorious, not
one of Rockwell’s pleaded claims or defenses would be dismissed. In fact, not one word of
Rockwell’s Answer or cross-claim would need to be changed or eliminated. Moreover,
Rockwell, by withdrawing a putative legal theory advanced in an interrogatory response, was not
trying to dismiss any of its pleaded claims against Solaia.

Second, even if that issue were ignored, Pace certainly does not purport to set forth any
rule that a party cannot dismiss without prejudice because another litigant wants a summary

judgment ruling. As the Seventh Circuit has emphasized, this issue is one left to “the sound

10


Rockwell also argues in the alternative that, if the Court reaches the merits, Solaia’s motion
should be denied because its infringement claim is objectively baseless. (Id. at 9.)

A. Solaia’s Motion Js Likely Procedurally Defective

As indicated above, Solaia’s Motion essentially seeks summary judgment concerning a
once-advanced-and-later-withdrawn interrogatory response that was withdrawn via amendment
before the Motion was even filed. (See, e.g., D.E. 534 at 2 (Solaia stating that its Motion “is
narrowly drawn just to Rockwell’s claim (and defense) of patent misuse”) (emphasis omitted);
compare, e.g., D.E, 517 at 8 n.6 (Rockwell stating that “[wJe are aware of no authority to the
effect that an issue raised solely in an interrogatory answer can only be withdrawn from the case
via Rule 41.”).) Not surprisingly, Solaia offers no authority supporting the procedural basis for
such a request.

The principal case that Solaia offers on this threshold procedural issue is Quad
Environmental Technologies Corp. v. Union Sanitary District, No. 88-1806, 1990 U.S. Dist.
LEXIS 18685 (N.D, Cal. Feb. 21, 1990). There, the Quad district court refused to allow the
defendants to withdraw three affirmative defenses after the plaintiff had moved for summary
judgment on them and the defendants conceded the defenses were “groundless.” (/d., at *2.) But
the situation in the Quad opinion offered by Solaia was materially different than the one in the
present case. The defenses at issue there were actually pleaded in the answer and formally placed
at issue. Here, in contrast, the “objectively baseless litigation” issue was only the subject of a
supplemental interrogatory response that was later withdrawn. Moreover, the defendants in
Quad conceded that their defenses were groundless, which is not the case here. Rockwell

contends (and offers evidence from the record to support its contention) that it withdrew the issue


35 U.S.C. § 102 or made obvious under 35 U.S.C. § 103” by the prior patent (id. 4 56), that
Solaia’s claims under the ‘318 patent were “invalid for lack of an enabling disclosure” (id. 57),
as well as other averments such as that the ‘318 patent violated what Rockwell describes as the
“best mode and other statutory prerequisites of 35 U.S.C. § 112.” (Rockwell’s Mem. in Opp’n to
Solaia’s Mot. for Summ. J. on Rockwell’s Unenforceability Claim and Affirm. Defense (D.E.
517) at 3 (discussing DE. 167 {ff 57-58).)° These issues contrast with the “patent misuse” that is
the subject of Solaia’s Motion, which relates to whether Solaia has initiated objectively baseless
patent litigation against Solaia’s customers. (This “objectively baseless litigation” issue appears
to be one part of what appears to be much broader litigation pending in federal court in
Milwaukee, Wisconsin, in which there is a Wisconsin state statutory claim, various Wisconsin
common law claims, federal antitrust claims, and defamation claims, as well as other defendants
and parties besides Rockwell and Solaia.*)

Solaia eventually counterclaimed in the instant case against Rockwell, alleging that
Rockwell! had infringed Solaia’s ‘318 patent. (Solaia’s Reply to Rockwell’s Cross-cl. for

Declaratory J. and Solaia’s Compulsory Countercl. (D.E. 360).) In answering Solaia’s

2 Approximately four months later, Rockwell filed its First Amended Cross-Claim Against

Solaia Technology LLC (D.E. 288), which was incorporated into a single filing that also included
Rockwell’s Answer to ArvinMeritor’s Third Party Complaint. This subsequent filing (D.E. 288)
is materially identical for present purposes.

3 This litigation includes similar litigation that Solaia initially instituted against Rockwell

and multiple other parties (who are not parties to the suit sub judice) in federal court in Chicago.
Judge Gottshall ordered this litigation transferred to the Eastern District of Wisconsin (see D.E.
83 (Minute Order of 9/2/03) in Solaia Tech., LLC v. Rockwell Automation, No. 03-566 (N.D. Ill.
filed Jan. 24, 2003 and transferred Sept. 2, 2003)), where the first-filed Rockwell lawsuit
discussed above was filed and where the bulk of the relevant witnesses appear to be located (see
DE. 20 in that case (discussing location of witnesses and evidence)).

3



invention from systems using various computer technologies. (D.E. 517 at 1-5.)

For its part, Solaia contends that any prosecution history disclaimer arguments were
resolved when Judge Holdetman, in a separate case involving Solaia, Rockwell, and other
accused infringers,’ conducted a claim construction of the ‘318 patent. (D.E. 498 at 4-8.) Solaia
argues that prosecution disclaimer must be decided in claim construction, and, because Judge
Holderman already constructed the disputed claims, Rockwell is precluded—or as a matter of
discretion, should be precluded—from reasserting its disclaimer arguments in the present case.
(id. at 7; D.E, 534 at 4-8.)

There are material practical reasons why the Court should not issue a judgment “on the
merits” regarding this Motion at this time. First, as mentioned, the parties’ briefs are often
directed to whether the ‘318 patent applicant surrendered or disclaimed certain coverage and
whether Judge Holderman’s claim construction could preclude Rockwell’s arguments that
Solaia’s infringement counterclaim is objectively baseless. Even though the parties have briefed
these issues in some detail here, the parties have briefed these same issues in a more
comprehensive fashion in their pending cross-motions for summary judgment on infringement
and non-infringement. (See, e.g., D.E. 603 at 9-17; D.E. 621 at 27-40, respectively.) It would,
therefore, seem imprudent to resolve the present Motion on the merits, which in the present

context involves arguments that are briefed in a relatively abbreviated fashion, at least as

7 In the Jefferson Smurfil case, Judge Holderman, pursuant to Markman v. Westview

Instruments, Inc., 517 U.S, 370 (1996), construed the disputed claim language of the ‘318 patent.
(See D.E. 108 (Minute Order of 3/28/02) in case No. 01-664] (N.D. Ill. filed August 27, 2001).)
The effect of Judge Holderman’s claim construction, which is set forth in a minute order, was
and is a matter of debate between the parties, both in the Jefferson Smurfit case and in subsequent
litigation concerning the ‘318 patent, including the case sub judice. See, ¢.g., Solaia v. Am.
Honda, No. 03-989 (N.D. Ill. filed Feb. 10, 2003).

14


Chicago case (if any) is not now”
It. Conclusion

All of the above considerations, both procedural and substantive, counsel against
resolving the Motion on the merits at this time. Accordingly, the Court denies Solaia’s motion

without prejudice.

Mark Filip
United States Disthiet Judge
Northern District of {linois

Date: q- Rq- OF

° Indeed, several of the arguments Solaia itself advances support the notion that the merits

presented here should be deferred until resolution of the infringement and non-infringement cross
motions for summary judgment. For example, Solaia recognizes that Rockwell’s
unenforceability claim “comes down to a matter of patent claim interpretation.” (D.E. 498 at 2.)
Solaia states that “Rockwell’s ‘disclaimer’ argument is the centerpiece of its cross claim against
Solaia for a declaration of noninfringement|,]” (U/d. at 4.) In addition, Solaia asserts that
“Rockwell’s allegations of objectively baseless claims hinge on claim construction (which is a
matter of law).” (/d. at 9.) Thus, whether this Court adopts Judge Holderman’s claim
construction or undertakes its own Markman proceeding, Rockwell’s unenforceability claim (and
affirmative defense) and associated disclaimer arguments are best addressed in another context.

16


I. Factual Background

The history of litigation between the parties (before this Court and others) is long and
complicated, and the Court will not summarize all of it here. Instead, the Court will recount only
those facts immediately germane to the disposition of this Motion.

In July 2002, Solaia initiated this suit against ArvinMeritor, Inc. (“ArvinMeritor”) and
fifteen other large industrial corporations. (See Compl. (D.E. 1).)' In its suit, Solaia alleged that
the defendants infringed claims 11 and 12 of Solaia’s ‘318 patent, which claims a type of
“control system [and] processes for industrial automation in manufacturing facilities ....” Ud. §
22.) ArvinMeritor (and at least some of the other defendants) allegedly utilize Rockwell-
manufactured industrial automation products that, Solaia alleges, infringe the ‘318 patent. (See
Third-Party PI. ArvinMeritor, Inc.’s Third-Party Compl. (D.E. 131) 44 11, 25, Answer of Third-
Party Def. Rockwell to Third-Party Pl. ArvinMeritor, Inc.’s Third-Party Compl. (D.E. 167) {fj 9-
11.) ArvinMeritor and other defendants filed complaints for indemnification against Rockwell,
which brought Rockwell into this litigation. (See, e.g., D.E. 131.)

Rockwell thereafter asserted cross-claims against Solaia, seeking a declaratory judgment
that, inter alia, Solaia’s alleged claims regarding the ‘318 patent are “invalid and/or
unenforceable under 35 U.S.C. §§ 1 et seq.” (D.E. 167 459.) To the extent that Rockwell
offered any specificity for this expansive allegation (Title 35 of the United States Code is the
statutory corpus of federal patent law), Rockwell offered specifics that had nothing to do with
patent misuse as identified in Solaia’s Motion. For example, Rockwell averred that there was a

prior art patent (id. {§ 54-55), that Solaia’s claims under the ‘318 patent were “anticipated under

The designation “D.E.” refers to the docket entry number of the cited document.

2


UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

Solaia Technology LLC,

Plaintiff, No. 02-C-4704
Vv. Judge Mark R. Filip
Arvinmeritor, Inc., Magistrate Judge Nan R. Nolan
Defendant.
v.

Rockwell Automation Inc.,

Third-Party Defendant-
Cross-Claim Plaintiff.

Vv.
Solaia Technology LLC,

Cross-Claim Defendant-
Counterclaim-Plaintiff

v.
Rockwell Automation Inc.,

Counterclaim-Defendant.

eS SS SS ewer

MEMORANDUM OPINION AND ORDER
Counterclaim plaintiff Solaia Technology LLC (“Solaia”) moves for summary judgment
on Rockwell Automation Inc.’s (“Rockwell”) “patent misuse claim (and affirmative defense)”

(“Motion”). For the reasons set forth below, Solaia’s Motion is denied without prejudice.

Lolo


properly pleaded in accord with the Federal Rules of Civil Procedure.

Moreover, even if Rockwell were seeking (pursuant to Rule 41) to withdraw properly
pleaded claims without prejudice, substantial authority would support the potential for such a
withdrawal. On this score, the Seventh Circuit has, as explained, set forth procedural guideposts
that help inform a district court’s discretion. Although the Court need not rule on the Rule 41
issue, given that it is not procedurally presented, these factors are not unfavorable to Rockwell.
For instance, Rockwell presents a seemingly credible reason for seeking to withdraw the issue
here (i.e., to avoid further discovery disputes that, as reflected in the record, already had
eventuated here and to direct the issue to the Wisconsin litigation, where this issue and other
related issues and parties are involved). Moreover, at the time that Rockwell sought to “dismiss”
its interrogatory response (to speak in the language of Rule 41, even if that might not be
warranted) Solaia had not yet moved for summary judgment. It also does not appear that
Rockwell has been dilatory in pursuing this issue—in fact, it has been the subject of a separate
lawsuit in Wisconsin and the aforementioned discovery practice. All of these factors would
likely cut in Rockwell’s favor. See, e.g., Tyco Labs., Inc. v. Koppers Co., Inc., 627 F.2d 54, 56
(7th Cir. 1980) (per curiam) (discussing factors to inform discretionary Rule 41 analysis)’;

accord, e.g., Stanley Works v. Allirade, Inc., No. 02-1468, 2004 WL 367619, at *3-4 (D. Conn

6 If Loutfy v. R.R. Donnelley & Sons, Co., 148 F.R.D. 599, 602 (N.D. Il. 1993), and the
precedent cited therein applies, such that the proper analytical framework is found under Federal
Rule of Civil Procedure 15, as opposed to Federal Rule of Civil Procedure 41, then the Rule 15
analysis would still be a discretionary one. See, e.g., Verhein v. South Bend Lathe, Inc., 598 F.2d
1061, 1063 (7th Cir. 1979) (stating that “[a] party is free to move for leave to amend, even after a
motion for summary judgment has been made by the opposing party, and the ordinary standards
of Rule 15(a), Fed. R. Civ. P., apply to the court’s determination of whether to allow
amendment”) (citations omitted).

12


compared to the more detailed treatment of the same issues in the parties’ briefs for the
infringement and non-infringement cross-motions.

Thus any substantive argument regarding aspects of the patent misuse issues relevant to
this case (as opposed to any issues that might be relevant in what appears to be broader
Wisconsin litigation) would, as Rockwell urges (D.E. 517 at 8), seem to be more appropriately
resolved at some point in the future, after the infringement/non-infringement motions are
resolved.® So, to the extent patent misuse was ever properly asserted in this case at all, and to the
extent it somehow remains after Rockwell amended its interrogatory response even before Solaia

filed this Motion, the time for addressing those aspects of patent-misuse that might relate to this

8 As the Court understands it, there has been a request to make this case and related

litigation the subject of a multi-district-litigation proceeding. While this opinion expresses no
position on that subject, the Court notes that the litigation in Wisconsin appears to be
substantially broader than the litigation here in Chicago—in that, regardless of whether
developments in this case might affect some aspect(s) of the Wisconsin litigation, the Wisconsin
litigation involves other parties and other factual and legal issues (many relating to Wisconsin
state law) that seemingly will exist regardless of what happens in any claim construction process
here. (See, e.g., D.E. 519, Ex. 7 at 5-6 (9/29/03 Ruling of Judge Guzman in this case (D.E. 460))
(stating that “[t]he plaintiffs in the Milwaukee Action [such as Rockwell] have alleged causes of
action that require the determination of numerous issues not before this Court. The Milwaukee
Action also includes several parties that are not before this Court,” and rejecting Solaia’s request
to enjoin Wisconsin litigation); id., Ex. 4 at 2 (3/6/03 discovery ruling by Magistrate Judge Nolan
in this case (D.E. 308)) (finding that Solaia’s requested discovery concerning alleged defamation
and antitrust violations by Rockwell and others not parties to this case was not germane to this
case but rather was germane to another federal suit by Solaia, which was transferred to
Milwaukee from Chicago to be joined with a similar, first-filed suit of Rockwell in Milwaukee
that alleges Wisconsin state law and federal antitrust claims); id, Ex. 4 at 4 (3/6/03 discovery
ruling by Magistrate Judge Nolan in this case (D.E. 305)) (similarly finding other discovery
requested by Solaia concerning alleged defamation was not relevant to this case but rather was
germane to litigation now in Wisconsin involving Rockwell, Solaia, and other parties not parties
to this case).)

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