Litigation

Untitled case

1:08-cv-00029

Patents at issue (1)

Summary

Listed on the US 6,091,343 patent record as a litigation proceeding in the Western District of Michigan. The narrative could not retrieve the 2008 docket or confirm parties, patents-in-suit, or outcome.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case, starting with the patent and the docket.

Important framing correction

The premise that this is a "patent infringement litigation" does not survive contact with the docket. *Case No. 1:08-cv-29 (W.D. Mich.) is Bassali v. Johnson Controls, Inc., a correction-of-inventorship action under 35 U.S.C. § 256 plus a state-law unjust-enrichment claim — not an infringement suit.* It carries Nature of Suit 830 ("Patent") and a § 1338 jurisdictional statement, which is why it appears on the face of the '343 patent record and in patent-litigation databases, but no infringement claim, no accused product, and no damages royalty are at issue. See Justia docket, https://dockets.justia.com/docket/michigan/miwdce/1:2008cv00029/54943; Bassali v. Johnson Controls, Inc., No. 1:08-cv-29 (W.D. Mich. May 12, 2010) (Dkt. 159), https://law.justia.com/cases/federal/district-courts/michigan/miwdce/1:2008cv00029/[54943/159](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=54943-0159)/. This is a common source of noise in patent-register litigation listings and should be flagged in any portfolio or PAE-tracking analysis.

Parties and technology

Plaintiff Fred Bassali is an individual RF engineer/consultant who worked under the name "the Consulting Group" and was retained by Prince Corporation from October 1989 through 1996 to design radio-frequency systems and circuits. He is an independent inventor-claimant, not an operating company, university, or NPE/PAE — he asserted no patent of his own and sought no license revenue; he sought to be added as a named inventor on patents owned by the defendant. Defendants — Johnson Controls, Inc.; Johnson Controls Technology Company; Johnson Controls Interior L.L.C.; and Hoover Universal, Inc. — are operating automotive-interior suppliers and the successors to Prince Corporation (Holland, Michigan), which had assigned the patents to Prince and, through it, to JCI. The technology is the Universal Garage Door Opener (UGDO): a vehicle-installed trainable RF transmitter that learns the code and frequency of a customer's existing garage-door remote (the product line later commercialized as HomeLink). Prince filed applications on at least sixteen UGDO-related patents between August 14, 1990 and December 18, 1997, all issued between August 15, 1995 and July 18, 2000, with Prince employees Zeinstra, Dykema, VanLente, Duckworth and others named as inventors and Bassali named on none (Dkt. 159, slip op. at 2–4).

U.S. Patent No. 6,091,343 is one member of that sixteen-patent Prince/JCI UGDO family and is the last-issued patent of the group (July 18, 2000), consistent with the court's stated issue-date range. As a one-line sketch: it is an RF trainable-transmitter/remote-control patent in the UGDO chain — code-learning or frequency-matching circuitry for actuating a garage door operator from a vehicle. A notable wrinkle for the register entry: the court expressly found that "the last patent listed under the 'facts' portion, No. 6,091,343, is not listed under the prayer for relief," i.e., Bassali's operative second amended complaint described the '343 patent but did not ask the court to correct inventorship on it. That is likely why the '343 appears in the patent's litigation record even though the § 256 relief sought did not reach it. I could not independently verify the '343 patent's title, claims, or whether its subject matter was ever adjudicated in this case — the sources I reached do not report it, and the Register-based listing should not be read as confirming that the '343 was a claim-in-suit.

Procedural posture, venue, and significance

Bassali filed in the S.D.N.Y. on May 26, 2006 (No. 1:06-cv-4149, before Judge Kimba M. Wood), naming seven patents; the count grew to fifteen by the March 29, 2007 amended complaint, with the second amended complaint (May 22, 2007) adding unjust enrichment. On JCI's § 1404(a) motion, Judge Wood transferred to the Western District of Michigan on December 20, 2007 (S.D.N.Y. Dkt. 31), and the case was docketed as W.D. Mich. No. 1:08-cv-29 on January 10, 2008, Southern Division, before Chief Judge Paul L. Maloney, with Magistrate Judges Ellen S. Carmody and Joseph G. Scoville handling discovery. Venue matters here for a mundane reason: the inventors, the RF engineering notebooks, and the UGDO business records were all at Prince/JCI in Michigan, which is precisely the prejudice/laches evidence the court later weighed. The litigation was document-intensive — 375+ docket entries, multiple motions to compel interrogatory and document responses, a motion to compel "inventorship contentions" and exclude experts (Dkt. 124), and a stipulated motion to seal (Dkt. 198–199). On May 12, 2010 the court granted in part and denied in part JCI's summary judgment motion (Dkt. 94): it rejected JCI's laches defense to the § 256 count, holding Bassali had rebutted the presumption of laches and that JCI's evidentiary-prejudice showing was irreconcilable with its own witness's deposition testimony, while Bassali's six-year delay was unreasonable (Dkt. 159). A final order and judgment issued August 1, 2013 (Dkt. 375), and the Federal Circuit affirmed without opinion under Rule 36 on May 14, 2014, No. 2013-1558, with John M. DiMatteo, Steven H. Reisberg and Robert G. Kofsky of Willkie Farr & Gallagher for Bassali and J. Michael Huget, Deborah J. Swedlow and Charles W. Duncan, Jr. of Honigman Miller Schwartz and Cohn for JCI. See https://www.courtlistener.com/opinion/[2674261](/patent/2674261)/bassali-v-johnson-controls-inc/.

Its significance is doctrinal and market-structural rather than as an NPE case: it is one of the cleaner appellate-adjacent applications of Aukerman laches principles to a § 256 inventorship claim (the court cited Serdarevic and Advanced Cardiovascular Systems), and the underlying subject matter — the trainable garage-door opener — became a highly monetized automotive feature (HomeLink), making inventorship (not infringement) the contested issue. It illustrates the "omitted co-inventor" assertion pattern distinct from PAE behavior: a long-tenured outside engineering consultant claiming contribution to a corporate patent family two decades after the work, litigated across two districts for eight years, with the patent register recording a "litigation" that never tested infringement or validity. There is no IPR or other PTAB linkage — the case predates AIA inter partes review entirely, and I found no reexamination proceeding — and no injunction, damages award, or royalty is implicated.

Sourcing caveats: docket details above are drawn from Justia, CourtListener/RECAP, the Unified Patents litigation portal entry for 1:08-cv-00029, and the reported May 12, 2010 opinion; I could not retrieve PACER images directly, could not confirm the merits disposition underlying the August 1, 2013 judgment or which of the sixteen patents (if any) were ultimately corrected, and could not verify the '343 patent's title or claim text. Those points should be checked against PACER before being relied on. Also note that search results for "the '343 patent" are heavily contaminated by the unrelated AdjustaCam LLC v. Amazon.com line (E.D. Tex. No. 6:10-cv-329), which asserted U.S. Patent No. 5,855,343 ("Camera Clip") against webcam sellers — a different patent and a genuine PAE-style campaign, not this case.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case systematically, starting with the docket and patent identity.

Let me identify the patent and the case directly.

The patent is US 6,091,343 ("Trainable RF transmitter having expanded learning capabilities"), originally Prince Corporation (Holland, MI). Let me find the litigants.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research this case to identify the parties and counsel of record.

Let me identify the patent and search for the specific case.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research this case. Let me start with searches on the case number and patent.

Searching more specifically for the patent and case.

Let me look up the patent itself and try the docket directly.

Bottom line

I could not identify any counsel of record for the defendant(s) in 1:08-cv-00029 (W.D. Mich.), and I am therefore not naming any attorneys. I ran multiple searches (case number in several formats, the 6,091,343 patent number, patent-number-plus-venue combinations, and Law360/Reuters-adjacent queries) and none returned a docket entry, opinion, complaint, or press report for this case. Because the operating rules forbid inventing attorneys, dates, or filings, the honest answer here is a documented negative rather than a counsel list.

This is consistent with the existing case summary, which also failed to retrieve the 2008 docket or confirm parties.

What the record does and does not tell us

Item Status
Court / case number Per case metadata: W.D. Mich. 1:08-cv-00029. Note W.D. Mich. docket numbers normally carry a judge suffix (e.g., -JTN, -RAED, -GJQ); the bare 00029 form is what appears on the patent's front-page litigation list and is not a PACER-retrievable identifier by itself. Unverified against PACER.
Patent-in-suit U.S. 6,091,343 — identified only by number; I could not confirm title, inventors, assignee, or claim subject matter from available sources. Unverified.
Plaintiff / defendant(s) Unknown. No complaint, caption, or docket text located.
Outcome Unknown. No dismissal order, judgment, or settlement report located.
Defense counsel Not identified — no names can be responsibly supplied.

Why the gap exists (likely causes, not conclusions)

  1. 2008 pre-RECAP coverage. CourtListener's RECAP archive is thin for W.D. Mich. civil filings before roughly 2009–2010; if no one has purchased and uploaded the docket, there is no free text to index.
  2. Likely early termination. Patent suits in this venue in that era frequently resolved by voluntary dismissal within months, sometimes before appearance/answer practice generated a searchable record.
  3. Provenance of the citation. The case appears on the 6,091,343 patent's face-of-patent litigation list. Those lists are self-reported by the patentee during prosecution/reexamination, are sometimes stale or mis-keyed, and occasionally reflect a case that was transferred, consolidated, or dismissed on filing defects.
  4. Possible number collision. Several unrelated patents share the "343" suffix and generate heavy search noise — e.g., the bivalirudin '343 patent in The Medicines Co. v. Mylan and an NXP/802.11ax '343 patent asserted in recent E.D. Tex. Wi-Fi 6 suits. Search results for "the '343 patent" are dominated by those cases, which would mask a small 2008 Michigan matter.

How to close this definitively (concrete steps)

  • PACER Docket Report, District of Michigan (Western Division), for 1:08-cv-00029. Search by case number without the judge suffix first, then by party name once the caption is known. Docket Report with the "Attorneys" option enabled will list lead/local counsel and firm addresses as of the last filing.
  • CourtListener RECAP docket page for the same number — free if a docket or PDFs were ever pulled; check for a "Docket Report" uploaded by a user.
  • W.D. Mich. CM/ECF "case summary" — the party/counsel block is available without full docket fees in some courts, and the first page of the complaint (Exhibit A) typically names defense counsel only after appearance, so also check any Answer, corporate disclosure statement, or stipulated dismissal, each of which carries the signature block.
  • The 6,091,343 patent's full file history (USPTO Patent Center / Public PAIR) — the litigation reference on the face of the patent is often accompanied by the applicant's Rule 1.56 submissions listing the case caption and the parties, which would give us the defendant names to search against.

What I will do next

If you can supply any one of the following, I can complete the counsel table with sourced names, firms, offices, and experience notes:

  1. The party caption (plaintiff v. defendant), or
  2. The judge assignment / full docket number including the suffix, or
  3. A PACER docket report text dump (even the counsel/party block alone), or
  4. Confirmation of the patent's title/assignee, so I can search the assignee's enforcement history.

Until then, I am not able to identify lead counsel, local counsel, or in-house counsel for the defense in this matter, and I want to flag that clearly rather than populate the table with names that would be guesses.