Effect of a Stipulated Dismissal

Garber v. Chicago Mercantile Exchange (CME) and the Chicago Board of Trade (CBOT) (Fed. Cir. 2009)

Garber first brought his patent infringment suit against the CME and CBOT in 2004. However, he had some trouble finding adequate representation and offered to dismiss without prejudice. The parties then filed an stipulated motion to dismiss without prejudice.

In his order dismissing that case, Judge Castillo (N.D. Ill.) added a statement that appears to be a typographical error giving Garber one-month “to move to reinstate this case or this lawsuit may be dismissed without prejudice.”  

Two facts indicate to me that that Judge Castillo intended to threaten a dismissal “with prejudice” rather than “without prejudice.” First, the case was already dismissed without prejudice; and second, soon after his deadline had passed, Judge Castillo ordered the case dismissed with prejudice.

In any event, Garber did not re-file until 2008, and Judge Castillo refuesd to re-open the case. On appeal, the Federal Circuit reversed – finding that the joint stipulation of dismissal divsted the court of its power over the case – rendering the court’s dismissal “void ab initio.”

The appellate panel based its decision on Fed. R. Civ. Pro. R. 41(a)(1) which provides that “the plaintiff may dismiss an action without a court order by filing … a stipulation of dismissal signed by all parties who have appeared” and Seventh Circuit law on-point. See Smith v. Potter, 513 F.3d 781 (7th Cir. 2008).



  • A caution for patentees considering such a stipulation: Rule 41(a)(1)(B) makes clear that the stipulated dismissal is presumably without prejudice only if the plaintiff has not previously dismissed another action “based on or including the same claim.”
  • Garber’s asserted patent No. 5,963,923 is titled “System and method for trading having a principal market maker.”
  • Compact Prosecution: The patent application was filed July 1997. The Examiner issued a first non-final rejection in February 1998 and a second non-final rejection in December 1998. The notice of allowance was then mailed in April 1999.
  • According to the complaint, Garber has been a Chicago based trader since 1972.

11 thoughts on “Effect of a Stipulated Dismissal

  1. 10


    Good article in my local paper today about Marshall Phelps’s new book “”Burning the Ships: Intellectual Property and the Transformation of Microsoft” http:// bit.ly/10uOiQ

  2. 9

    With a typo and a Fed. R. Civ. Pro. R. 41(a)(1) going against Judge Castillo, Chicago Mercantile Exchange’s attorney seems to have done a good job to get as far as they did on the issue. The pro se litigant probably shot his litigation wad to get through the federal circuit. Who was Chicago Mercantile Exchange’s trial court attorney?

  3. 8

    Dear Noise above law,

    RE: Names in the comments.

    It still doesn’t work for me…

    And, for the past week or so, I’ve had to re-type my pen name and e-mail address for every comment I’ve made.

  4. 7

    Dear Noise above law,

    “I also notice that the search Patently-O function is not retrieving recent articles.”

    I don’t think Patently-O was ever able to retrieve recent articles. Other than that flaw, the Patently-O “search” is the best I’ve ever used.

    I’ve been meaning to ask, what’s the lag time for a recent article to be searched?

  5. 4

    Effect of a trainwreck stipulation:

    Dennis, is the removal of names from the recent comments list an effort to stifle the trainwreck effect? I also notice that the search Patently-O function is not retrieving recent articles.

  6. 2

    With a four year delay between the first suit and the re-filed suit just to get another attorney, will the defendants have a good argument for patent litigation laches? [Unfortunately, even if established, that may only bar pre-second-suit [back] damages?]

  7. 1

    Pretty easy case for the CAFC. It looks like the district court was being impermissibly harsh with a pro se litigant.

Comments are closed.