iBall Instruments v. Myron Butler: All Claims Dismissed After 1,089-Day Fight Over TocBox Patents
iBall Instruments, LLC brought a multi-count action against Myron Butler in the Eastern District of Oklahoma, targeting patents US11212380B2 and US10187501B1 tied to the TocBox device. After nearly three years, the court dismissed every claim — the DTSA count with prejudice as time-barred, patent and inventorship counts for lack of standing, and state law claims for want of subject matter jurisdiction.
A Multi-Front Patent and Trade Secret Dispute That Collapsed on Standing and Timeliness
iBall Instruments, LLC filed this action on August 9, 2021, in the U.S. District Court for the Eastern District of Oklahoma, naming individual defendant Myron Butler. The complaint centered on two issued U.S. patents — US11212380B2 and US10187501B1 — both tied to the TocBox device, along with a Defend Trade Secrets Act (DTSA) claim and supplemental state law counts for breach of contract and unjust enrichment. The case also sought correction of inventorship across three sub-counts.
On August 2, 2024, Judge Jodi W. Dishman dismissed the entire action via a Federal Rule of Civil Procedure 58(a) judgment. The DTSA claim (Count 1) was dismissed with prejudice under Rule 12(b)(6), the court finding it time-barred on its face. The inventorship correction and patent invalidity claims (Counts 2–5) were dismissed without prejudice under Rule 12(b)(1) for lack of standing. State law claims (Counts 6–7) were dismissed without prejudice after the court declined supplemental jurisdiction.
The nearly three-year duration before a Rule 12 dismissal suggests protracted motion practice or periods of inactivity, yet the case never reached merits adjudication on any patent claim. The standing deficiency on the patent counts — dismissed without prejudice — leaves open the theoretical possibility of refiling if iBall can cure the jurisdictional defect. The DTSA dismissal with prejudice, however, forecloses any renewed federal trade secret claim arising from the same conduct, a materially more adverse result for iBall on that front.
Filing to Case Dismissed in 1089 days
1,089 days litigated — nearly three years before final dismissal
Mixed dismissal: what ‘with’ and ‘without’ prejudice means for each party
Rule 12(b)(6) time bar ends the DTSA claim permanently
A Rule 12(b)(6) dismissal with prejudice means the court found the DTSA claim deficient on its face and that no amendment could cure the defect — in this case, because the statute of limitations had expired. The claim is extinguished. iBall cannot refile a DTSA claim arising from the same alleged misappropriation in any federal court.
Dismissed with prejudicePatent counts dismissed without prejudice — door not fully closed
The Rule 12(b)(1) dismissal for lack of standing on Counts 2–5 is a jurisdictional ruling, not a merits ruling. The court found iBall failed to establish it had the right to bring the inventorship correction and patent invalidity claims. Dismissed without prejudice, these counts could theoretically be refiled if iBall can establish the requisite standing — though doing so may require restructuring the ownership or assignment position in the patents.
Dismissed without prejudiceButler avoids merits exposure — patents remain intact
Because no count reached merits adjudication, Myron Butler faces no adverse finding on inventorship, patent validity, or trade secret liability. The patents US11212380B2 and US10187501B1 survive unchallenged on the merits. For Butler, this is a procedural victory: the claims ended before any substantive determination could be made against him.
Full procedural victoryTocBox patents remain in force — FTO exposure persists for the sector
With the invalidity challenge dismissed on standing rather than merits, both US11212380B2 and US10187501B1 remain valid and enforceable. Companies operating in the TocBox device technology space cannot rely on this case as prior art challenge precedent. Any competitor seeking to design around or invalidate these patents must initiate a fresh challenge — via IPR, ex parte reexamination, or a new district court action with proper standing.
Patents remain enforceableFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Iball Instruments, LLC | Company | Instrument technology company — holder of TocBox-related patents US11212380B2 and US10187501B1Search in Eureka ↗ |
| Defendant | Myron Butler | Individual | Individual defendant Myron Butler, named in connection with TocBox device patent and inventorship disputesSearch in Eureka ↗ |
| Plaintiff counsel | Breanne M. Gordon | Attorney | Counsel for Iball Instruments, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Daniel V. Carsey | Attorney | Counsel for Iball Instruments, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Joseph M Vorndran | Attorney | Counsel for Iball Instruments, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Littleton Tazewell Ellett, IV | Attorney | Counsel for Iball Instruments, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Mitchell K. McCarthy | Attorney | Counsel for Iball Instruments, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Hall Estill (OKC) | Law Firm | Representing Iball Instruments, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Hall, Estill, Hardwick, Gable, Golden & Nelson PC | Law Firm | Representing Iball Instruments, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Stuart & Clover, PLLC | Law Firm | Representing Iball Instruments, LLCSearch in Eureka ↗ |
| Defendant counsel | Matthew D. Craig | Attorney | Counsel for Myron ButlerSearch in Eureka ↗ |
| Defendant counsel | Mitchell D Blackburn | Attorney | Counsel for Myron ButlerSearch in Eureka ↗ |
| Defendant law firm | Conner & Winters LLP | Law Firm | Representing Myron ButlerSearch in Eureka ↗ |
| Presiding judge | Judge Jodi W. Dishman | Judge | Oklahoma Eastern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The judgment’s tripartite structure — with prejudice on DTSA, without prejudice on patent counts, and declined supplemental jurisdiction on state claims — reflects the court’s careful parsing of distinct legal deficiencies rather than a single global ruling. The with-prejudice DTSA dismissal under Rule 12(b)(6) is the most consequential for iBall: it carries full preclusive effect on that claim. The Rule 12(b)(1) dismissals, being jurisdictional, carry no claim preclusion on the merits, preserving a theoretical but practically difficult path for iBall to refile the patent counts if standing can be cured.
US11212380B2 & US10187501B1 — TocBox Device Technology Patents
US11212380B2 (application no. US16/251921) and US10187501B1 (application no. US14/541820) are both U.S. patents covering technology embodied in the TocBox device. The sequential application numbers suggest a continuation or portfolio relationship, with the earlier application US14/541820 likely representing foundational claims and the later US16/251921 potentially extending or refining those claims. The patents sit within the instrumentation and device technology domain, though the specific technical claims have not been publicly adjudicated in this litigation.
Because both patents survived this action on a standing deficiency rather than a merits determination, they remain fully enforceable with no adverse validity finding on record. For competitors developing products in the TocBox device space, this means the patent portfolio retains its full blocking potential. The inventorship dispute at the heart of this case — if unresolved — may also indicate contested ownership that could affect licensing or enforcement posture going forward, making ongoing USPTO assignment monitoring strategically important.
Should your team run an FTO against US11212380B2 and US10187501B1?
Any company developing instrumentation products, connected device hardware, or technology overlapping with the TocBox device category should treat these two patents as active enforcement risk. Neither US11212380B2 nor US10187501B1 has had its validity tested on the merits. The dismissal of iBall’s invalidity challenge on standing grounds means no prior art or claim construction analysis entered the public record — leaving the claims’ full scope intact.
PatSnap Eureka’s FTO Search Agent can rapidly map the claim scope of both patents against your product architecture, identify prior art candidates that were never raised in this litigation, and flag related family members or continuation applications that could present additional exposure. For R&D teams in the instrumentation and device sector, running a proactive FTO now — before these patents are asserted by a party with corrected standing — is materially lower cost than defending at the pleading stage.
Run a freedom-to-operate analysis on US11212380B2 to assess your product’s exposure
Run FTO in Eureka →Similar Patent Invalidity and Trade Secret Cases in Oklahoma Federal Courts
Cases combining DTSA claims and patent invalidity actions in the Eastern District of Oklahoma, particularly those dismissed on standing or timeliness grounds.
What this case signals for the instrumentation IP landscape in Oklahoma
A collapsed standing position and an expired DTSA window offer hard lessons for patent enforcement strategy in the Eastern District of Oklahoma.
Standing must be locked down before filing — Rule 12(b)(1) kills cases early
All four patent-related counts in this case fell at the pleading stage for lack of standing. Companies asserting patent invalidity or inventorship correction must confirm their ownership and assignment chain is bulletproof before filing. A standing deficiency burns years of litigation time and attorney fees with no merits outcome.
The DTSA three-year clock starts on discovery — document your timeline carefully
The Defend Trade Secrets Act imposes a three-year statute of limitations from the date the misappropriation was discovered or should have been discovered. iBall’s claim was dismissed as time-barred. Companies should audit potential DTSA claims proactively and file before the window closes — especially where patent and trade secret claims overlap.
Iball v Myron — key questions answered
The Eastern District of Oklahoma dismissed all seven counts in August 2024. The DTSA claim was dismissed with prejudice as time-barred under Rule 12(b)(6). Patent invalidity and inventorship correction claims were dismissed without prejudice for lack of standing under Rule 12(b)(1). State law breach of contract and unjust enrichment claims were dismissed without prejudice after the court declined supplemental jurisdiction.
Dismissal without prejudice on the patent and inventorship counts means iBall is not barred from refiling those claims if it can establish the necessary standing. The court made no merits ruling on patent validity or inventorship. However, curing a standing deficiency typically requires demonstrating a legally sufficient ownership or assignment interest in the patents, which may involve restructuring the IP position at the USPTO.
Yes. Both patents survived this litigation with no adverse validity ruling. The invalidity challenge was dismissed on jurisdictional grounds before any merits analysis. US11212380B2 and US10187501B1 remain in force and fully enforceable. Third parties seeking to challenge validity would need to initiate a new action — via IPR, ex parte reexamination, or a new district court filing — with proper standing.
The DTSA claim fell under Rule 12(b)(6) — a merits-adjacent standard — because the court found it facially time-barred by the statute’s three-year limitations period. Once a claim is time-barred, no amendment can cure it, warranting a with-prejudice dismissal. The patent counts failed on jurisdictional standing grounds under Rule 12(b)(1), which are not merits determinations and can theoretically be cured, justifying without-prejudice treatment.
The TocBox device is the commercial product covered by the two patents asserted in this case — US11212380B2 and US10187501B1. The case involved claims of trade secret misappropriation, inventorship correction, and patent invalidity connected to the device. The specific technical claims and product functionality were not adjudicated on the merits, so the full scope of the TocBox’s patented technology remains publicly unarticulated through this litigation.
PatSnap Eureka searches patents and litigation data to answer instantly.