IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION R-BOC REPRESENTATIVES, INC.

, Plaintiff, v. JOHN T. MINEMYER, an individual, Defendant. Civil Action No. 1:11-cv-8433 JURY TRIAL DEMANDED

COMPLAINT FOR DECLARATORY JUDGMENT Plaintiff R-BOC Representatives, Inc. (R-BOC), for its Complaint for Declaratory Judgment against John T. Minemyer (Minemyer), alleges as follows: NATURE OF THIS ACTION 1. This is an action for declaratory judgment of non-infringement and invalidity of

U.S. Patent No. 6,851,726 (the 726 patent) pursuant to the Declaratory Judgment Act, 28 U.S.C. 2201-2202, and the United States Patent Law, 35 U.S.C. 100 et seq., and for such other relief as the Court deems just and proper. THE PARTIES 2. Plaintiff R-BOC Representatives, Inc. is an Illinois corporation with its principal

place of business in Saint Charles, Illinois. 3. Defendant John T. Minemyer is an individual who, on information and belief,

resides at 930 S. 5th Avenue, Room 146, Monrovia, California 91016, care of Homestead Suites. JURISDICTION AND VENUE 4. This Court has exclusive subject matter jurisdiction over R-BOCs claims for

declaratory relief pursuant to 28 U.S.C. 1331, 1338(a), 2201, and 2202, and the Patent Laws of the United States, 35 U.S.C. 1, et seq.

5.

This Court has personal jurisdiction over Minemyer because, among other

reasons, Minemyer has conducted business in this judicial district, purposefully availed himself of the benefits of this forum by voluntarily filing an earlier lawsuit against R-BOC and other parties for infringement of the 726 patent as more fully described in paragraphs 8-13 below, and, through his counsel in such earlier lawsuit, made statements in this judicial district that have, in part, given rise to the case and controversy that forms the basis of this action. 6. Venue is proper in this judicial district under 28 U.S.C. 1391 and 1400(b). THE PATENT-IN-SUIT 7. U.S. Patent No. 6,851,726 (the 726 patent) is entitled Radial Conduit

Coupling System and Method and bears an issuance date of February 8, 2005. A copy of the 726 patent is attached hereto as Exhibit A. EVENTS GIVING RISE TO THIS SUIT 8. On March 29, 2007, Minemyer filed suit in the Northern District of Illinois

against R-BOC and nine other parties in an action styled Minemyer v. R-BOC Representatives, Inc., et al., Case No. 07-cv-1763 (the First Action). The First Action remains pending. 9. In the First Action, Minemyer alleged that plastic, reverse-threaded couplers

made, used, sold, and/or offered for sale by R-BOC and its codefendants (the B&C Coupler), and used to join lengths of conduit together in the telecommunications and other industries, infringe claims of the 726 patent. (See, e.g., First Action, Complnt. 14-16, 20-23, 26-27, Ex. B hereto.) 10. In the First Action, Minemyer specifically alleged that the accused B&C Coupler

has a sealing surface depicted as item Q in Exhibit C of Minemyers Infringement Contentions, which alleged sealing surface Q appears as a smooth, horizontal portion between the threaded portion G and protrusion M. Exhibit C of Minemyers Infringement Contentions, a cross-sectional image of an accused B&C coupler, appears below: 2

(First Action, Minemyers Infringement Contentions at 3-6, Ex. C hereto.) 11. In the First Action, Minemyers technical expert witness, Steven Kaiser, opined

that [e]ach B&C product has this [sealing] surface, a smooth section around the interior between the threaded portion and the first side of the raised ring or protrusion. . . . (First Action, Kaiser Rep. at 3-4, Ex. D hereto.) 12. In the First Action, Minemyer specifically alleged that the accused B&C Coupler

has flutes depicted as item P in Exhibit A of Minemyers Infringement Contentions. Exhibit A of Minemyers Infringement Contentions appears below:

(First Action, Minemyers Infringement Contentions at 12, Ex. C hereto.) 3

13.

In the First Action, Minemyers technical expert witness, Steven Kaiser, opined

that [e]ach B&C product has these flutes, or channels or recesses formed in the exterior surface of the connector that provide a surface for gripping the coupler. (First Action, Kaiser Rep. at 7, Ex. D hereto.) 14. In the fall of 2008, R-BOC redesigned the B&C coupler by making changes to the

couplers exterior and interior structures (the B&C Redesign). 15. R-BOC changed the exterior of the B&C Redesign by replacing the longitudinal

flutes of the old design with intersecting circumferential bands and longitudinal channels, which form a waffle pattern. The B&C Redesigns waffle pattern (Lundeen Ex. 51) and the old designs fluted pattern (Lundeen Ex. 52) appear side-by-side below:

(First Action, R. Lundeen Dep. Exs. 51 and 52.) 16. R-BOC changed the interior of the B&C Redesign by removing the alleged

sealing surface of the old design identified as item Q in Exhibit C of Minemyers Infringement Contentions in the First Action (see 10 above). Cross-sectional images of the old design, 4

including alleged sealing surface Q, and three representative examples of the B&C Redesign, without sealing surfaces, appear below:

(B&C Redesign, Orange 1 SIDR 11.5 without alleged sealing surface.)

(B&C Redesign, Blue 1 SIDR 1.88 1.93 without alleged sealing surface.)

(B&C Redesign, Blue 2 TRUE SDR 11&13 without alleged sealing surface.) 17. Because Minemyer did not accuse the B&C Redesign of infringement in his

pleadings, Infringement Contentions, or expert reports in the First Action, R-BOC and its codefendants moved in limine to preclude Minemyer from introducing evidence of alleged infringement by, or seeking damages for the defendants alleged sale of, the B&C Redesign. (First Action, Defs. Mot. In Limine, Case No. 07-1763, Doc. #338.) 18. On March 23, 2011, the Court in the First Action granted the defendants motion

in limine, stating, In the instant case, the plaintiff did not amend his infringement contentions and he ought not to be allowed to do so at this late date. The supposedly redesigned product was 5

introduced into the market two years ago. * * * The defendants motion is GRANTED. (First Action, Mem. Op. and Order, March 23, 2011, Case No. 07-1763, Doc. #367.) 19. Since the Courts order in the First Action barring Minemyer from alleging

infringement of the B&C Redesign in that lawsuit, Minemyer, through his counsel in the First Action, has made statements that have given rise to the case and controversy that forms the basis of this action, including arguments made in in limine motion practice accusing the B&C Redesign of infringing the 726 patent and comments made in court and on the record in the First Action that Minemyer plans to file a lawsuit against R-BOC and perhaps others alleging infringement of the 726 patent by the B&C Redesign. 20. In his January 7, 2011 Response to Defendants Motion In Limine to Bar

Evidence of the B&C Redesign in the First Action, Minemyer argued that the B&C Redesign infringes the 726 patent, stating: Are Defendants counsel actually claiming a stupidity defense? Are they really saying that they are so stupid that they could not possibly understand that this essential feature in the original product from Defendants that unquestionably infringes the independent Claim 12 must also, when incorporated unchanged in the misnamed Redesign, continue to infringe Claim 12? (First Action, Pl.s Resp. to Defs. Mot. In Limine, Case No. 07-1763, Doc. #351 (emphasis in original).) 21. At an October 11, 2011 Final Pretrial Conference in the First Action, Minemyers

counsel indicated that Minemyer intended to file another lawsuit accusing the B&C Redesign of infringing the 726 patent: THE COURT: Help me with this. So what youre saying is theres not going to is there a two-month period of dispute between your view of when the redesigned couplers, at the latest, went into went into shipment and replaced your clients versus their period, which is two months earlier? Is that what were talking about? [Minemyers counsel] MR. CHALMERS: No. I think we accept their date for when it was introduced, but 6

THE COURT: How long after that were they selling the accused product? [Minemyers counsel] MR. CHALMERS: Well, their THE COURT: Is it your theory? [Minemyers counsel] MR. CHALMERS: For quite some time. But our damage expert happens to cut off in February or March 2009 just because so we dont have proof beyond that, and we dont know if it was the redesign or not. THE COURT: No, I understand. [Minemyers counsel] MR. CHALMERS: So when that be would be our other case, not this case. * * * THE COURT: Okay. So theres not going to be a dispute then about I understand what youre saying. The damage point will be cut off, because youve cut it off at a particular point in time. And because I have ruled that anything that happens thereafter is not relevant to this case, because if those things are infringing, file another lawsuit. [Minemyers counsel] MR. CHALMERS: Right. (Hrg Tr. 209:21210:23, October 11, 2011 (emphasis added), Ex. E hereto.) [Minemyers counsel] MR. CHALMERS: We dont think they [the redesigned couplers] are relevant, so the new design is not part of our [pending] case. [Minemyers counsel] MR. FRIEDMAN: Its not this case. Its the next case. * * * THE COURT: But if he doesnt say that the new design is also noninfringing, what relevance does the redesign have? If its a redesign, there would be a redesign that also infringes. [Minemyers counsel] MR. FRIEDMAN: Thats the next case. (Hrg Tr. 212:2-16, October 11, 2011 (emphasis added), Ex. E hereto.) 22. In the First Action, on October 27, 2009, the Court ruled that the 726 patent is

entitled to a priority date of August 23, 1999 instead of the patents presumptive priority date of August 25, 1998, the filing date of Minemyers provisional patent application. (First Action, Mem. Op. and Order at 12, October 27, 2009, Case No. 07-cv-1763, Doc. #252, reported as Minemyer v. R-BOC Representatives, Inc., et al., 695 F. Supp.2d 797, 806 (N.D. Ill. 2009).) 7

23.

In the First Action, on October 27, 2009, the Court ruled that claims 1, 5, 6, 10,

11, 13, 14, and 15 of the 726 patent are invalid under the on-sale bar of 35 U.S.C. 102(b). (First Action, Mem. Op. and Order at 16, October 27, 2009, Case No. 07-cv-1763, Doc. #252, reported as Minemyer v. R-BOC Representatives, Inc., et al., 695 F. Supp.2d 797, 808 (N.D. Ill. 2009).) 24. R-BOC and its B&C Redesign have not infringed and do not infringe, either

directly or indirectly, any valid and enforceable claim of the 726 patent, either literally or under the doctrine of equivalents. 25. A substantial controversy exists between the parties, which is of sufficient

immediacy and reality to warrant declaratory relief. COUNT I DECLARATION OF NONINFRINGEMENT OF THE 726 PATENT 26. R-BOC incorporates by reference paragraphs 1 through 25 above as though fully

set forth herein. 27. R-BOC has not directly infringed, contributed to the infringement of, or induced

others to infringe, any valid and enforceable claim of the 726 patent, either literally or under the doctrine of equivalents by virtue of its sale and/or offer for sale of the B&C Redesign. 28. As a result of the acts described in the foregoing paragraphs, there exists a

substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 29. A judicial declaration is necessary and appropriate so that R-BOC may ascertain

its rights regarding the 726 patent.

COUNT II DECLARATION OF INVALIDITY OF THE 726 PATENT 30. R-BOC incorporates by reference paragraphs 1 through 29 above as though fully

set forth herein. 31. The 726 patent is invalid for failure to meet the conditions of patentability and/or

otherwise comply with one or more of 35 U.S.C. 100 et seq., 101, 102, 103 and 112. 32. As a result of the acts described in the foregoing paragraphs, there exists a

substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 33. A judicial declaration is necessary and appropriate so that R-BOC may ascertain

its rights with respect to the 726 patent. PRAYER FOR RELIEF WHEREFORE, Plaintiff R-BOC Representatives, Inc. respectfully request that the Court enter judgment in favor of Plaintiff granting the following relief: A. A declaration that R-BOC has not infringed and does not infringe any valid and enforceable claim of the 726 patent; B. A declaration that all claims of the 726 patent not previously held invalid are invalid for failure to meet the conditions of patentability and/or otherwise comply with the requirements of 35 U.S.C. 100 et seq., 101, 102, 103, and/or 112; C. An order declaring that this case is an exceptional case and awarding R-BOC its costs, expenses, disbursements and reasonable attorney fees under 35 U.S.C. 285 and all other applicable statutes, rules and common law; and D. Such other and further relief as this Court may deem just and proper.

JURY DEMAND In accordance with Rule 38 of the Federal Rules of Civil Procedure, R-BOC respectfully demands a jury trial of all issues triable to a jury in this action.

Respectfully submitted,

Dated: November 25, 2011

/s/ Matthew G. McAndrews Matthew G. McAndrews Frederick C. Laney NIRO, HALLER & NIRO 181 West Madison St., Suite 4600 Chicago, Illinois 60602 Telephone: (312) 377-3292 E-mail: mmcandrews@nshn.com E-mail: laney@nshn.com Attorneys for Plaintiff, R-BOC REPRESENTATIVES, INC.

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