Asher Worldwide Enterprises LLC v. Housewaresonly.com Inc., No. 12 C 568, Slip Op. (N.D. Ill. Aug 26, 2013) (Durkin, J.).
Judge Durkin denied the individual defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss the individual defendants in this Lanham Act and copyright case involving defendants allegedly infringing plaintiff’s copyrights by using plaintiff’s copyrighted product descriptions regarding kitchen and restaurant equipment. Plaintiff’s “conclusory” statements regarding the individual defendants’ control of defendant Housewaresonly.com made the motion a “close call.” But plaintiff’s additional statements in its opposition brief, which the Court could consider because they were consistent with the complaint, were sufficient to maintain the complaint. The additional statements focused upon the extent of the alleged copying and the individual defendants’ alleged shutting down of the company and relocating, presumably to avoid suit.
The Court also noted that it would be inefficient to dismiss the complaint without prejudice to refile and allow plaintiff to replead including the additional facts when the Court had already held that the additional facts were sufficient.
Spitz v. Proven Winners N. Am., LLC, No. 11 C 3997, Slip Op. (N.D. Ill. Aug. 22, 2013) (Hart, Sen. J.).
Judge Hart granted defendants’ motion for summary judgment in this trade secret case involving alleged trade secrets identifying pet-friendly plants. Plaintiff alleged that defendants used plaintiff’s trade secret identification of pet-friendly plants without paying the agreed upon $.02 per pet-friendly plant sold. As an initial matter, the Court denied to strike either parties Local Rule 56.1 statements or responses. Each party claimed that the other did not comply with various portions of Local Rule 56.1, but to the extent the Court was able to understand and use the statements, it would do so without striking any party’s statements. The Court did, however, disregard extraneous facts included in plaintiff’s responses to defendants’ statements of fact, instead of in a Local Rule 56.1 additional statement of facts.
The Court held that plaintiff did not provide sufficient evidence that defendants’ association of a pet-friendly label with certain plants on its website came from plaintiffs’ trade secret information. Instead, the evidence suggested that the information was publicly available. The Court also granted defendants summary judgment as to plaintiff’s other non-IP contract and tort claims, but I will not detail those because they do not have significant IP implications.
Dental USA, Inc. v. McClellan, No. 13 C 260, Slip OP. (N.D. Ill. Aug. 16, 2013) (Zagel, J.).
Judge Zagel granted in part plaintiff Dental USA’s motion for a temporary restraining order and injunction in this trademark and design patent infringement case. Dental USA had a trademark for DENTAL USA, as well as POWER ELEVATOR for a tooth extraction machine. Dental USA also had a design patent for the tooth extraction machine. Defendants are former employees of Dental USA who allegedly formed United Dental USA, which competed with Dental USA, including by selling a Misch Power Elevator that performs the same function as Dental USA’s Power Elevator. Dental USA also alleged that defendants improperly used Dental USA’s copyrighted images on defendants’ website. Dental USA sought an order enjoining defendants from: 1) using the United Dental USA name at upcoming trade shows; 2) selling Misch Power Elevators, along with any related tools; 3) selling infringing products on defendants’ website; and 4) using Dental USA’s copyrighted works on defendants’ website. Dental USA also sough seizure of counterfeit goods.
Defendants were barred from using the name United Dental USA at any future trade shows until the Court reached a decision on the merits. Defendants had already agreed not to use the name at one, upcoming tradeshow in San Francisco. Defendants were ordered to take down their uniteddentalusa.com website until at least a final judgment was issued in the case.
The Court held that DENTAL USA and UNITED DENTAL USA were “self-evidently very similar marks.” Adding “United” did little to change that analysis, particularly because the U in USA was an abbreviation for “united.” Dental USA also had at least some evidence of actual confusion. There was also evidence that Defendants were using Dental USA’s part numbers and product images, adding to the likelihood of confusion. There was also at least some evidence of actual confusion.
The Court noted that Lanham Act violations are presumed to be irreparable harm, and the evidence in this case bolstered that — the similarity of the products and the fact that the parties compete at the same trade shows.
The balance of equities favored Dental USA. In particular, defendants used two names — United Dental USA and Misch Instruments. Because Misch Instruments was the dominant name, defendants were unlikely to be harmed by an injunction.
The public had a strong interest in enforcing intellectual property which was somewhat balanced by an interest in healthy competition. If the Court felt that the injunction would put defendants out of business, it might have changed the analysis, but that was unlikely.
The Court, however, denied Dental USA’s motion to enjoin sales of the Misch Power Elevator. But the Court enjoined the use of the MISCH POWER ELEVATOR trademark or any other POWER ELEVATOR mark, for similar reasons. The Court did, however, delay the injunction until after the San Francisco trade show. Having enjoined the products so close to that trade show would have seriously harmed defendant’s business.
Panoramic Stock Images, Ltd. v. The McGraw-Hill Cos., No. 12 C 9881, Slip Op. (N.D. Ill. Aug. 9, 2013) (Pallmeyer, J.).
Judge Pallmeyer denied defendant McGraw-Hill’s Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of plaintiffs’ (collectively “Panoramic”) claims that were allegedly related to defective or unissued copyrights in this case involving licensing of stock photographs. The parties had a license pursuant to which McGraw-Hill could use certain of Panoramic’s images pursuant to some restrictions. Panoramic alleged that McGraw-Hill exceeded those restrictions regarding at least 170 of the images. McGraw-Hill counters that Panoramic’s claims should be dismissed as to 101 of those images because Panoramic lacks valid copyrights as to those images. The Court held as follows:
- McGraw-Hill argued that 52 images had deficient copyrights because they were registered without identifying the authors or the titles of the images in violation of § 409 of the Copyright Act. Panoramic argued that the works were compilations which did not require identification of the author or title of the specific images. The Court noted a circuit split upon the issue, and that the Seventh Circuit had not squarely addressed it. Without controlling precedent and deferring to the Copyright Office’s reading of the statute — that no author or title were required for compilations — the Court denied McGraw-Hill’s motion and allowed Panoramic to continue asserting the copyrights on the 52 images. The Court also noted that there was not a notice issue in this case because McGraw-Hill was sufficiently aware of the copyright owner to have licensed with Panoramic for the images at issue.
- The Court held that Panoramic could assert the 49 images for which it had applied for copyright, but not yet received a registration. The Court noted a circuit split on the issue, but that the Seventh Circuit, not without some uncertainty, had determined that a copyright applicant could file suit based upon their application.
Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 23, 2013) (St. Eve, J.).
Judge St. Eve granted defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s “corporate intellectual property practice” expert in this patent infringement case involving flush valves for use in plumbing fixtures. Zurn argued that the expert’s opinions regarding willfulness should not be allowed because they had not been sufficiently disclosed in the expert’s report. The expert sought to opine that Zurn had acted inconsistent with “normal standards of fair commerce”, thus making Zurn’s conduct was willful. The Court excluded those opinions because “normal standards of fair commerce” was never identified or discussed in the expert’s disclosures and reports. Furthermore, there were no corporate standards or other evidence of “normal standards of fair commerce” identified as having been considered by the expert in relation to his report. The Court also noted that Sloan Valve’s arguments regarding the purposes and testimony of the expert’s opinions had shifted throughout the briefing and hearing. And Sloan Valve’s failure to disclose the normal standards or corporate policies was not harmless or substantially justified. Without at least some notice of them, Zurn was unable to properly respond to them.
Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 12, 2013) (St. Eve, J.).
Judge St. Eve granted in part defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s technical expert in this patent infringement case involving flush valves for use in plumbing fixtures. Zurn argued that the expert should not be allowed to testify about willfulness issues or about life cycle testing of valves because of a lack of experience and reliable methods. Sloan Valve stipulated that the expert would not testify about the willfulness standard or about how Zurn’s actions related to the willfulness standards, for example what information was or was not relayed to outside counsel. The Court held as follows:
- The expert had sufficient qualifications. While the expert did not have specific plumbing expertise, he was sufficiently qualified. He had a degree in mechanical engineering, as well as a masters of science and doctor of philosophy in theoretical and applied mechanics. He was a registered professional engineer, a former professor of engineering, and a member of various engineering societies. And he has analyzed product designs regarding numerous patents. Finally, he had studied the wear on brass faucets.
- A battle of experts does not make the expert testimony unreliable. While Sloan Valve’s expert challenged portions of the expert’s life cycle analysis and while the expert had not performed life cycle testing in the relevant field, his background and experience were a sufficient basis of his opinions. These and any other issues could be probed upon cross-examination. Additionally, the Court considered that there was not a written standard for life cycle testing these valves. So, any expert would be performing the test or critiquing them based upon that expert’s experience.
- The expert’s opinion statements are admissible, but not those about willfulness. The Court allowed the expert’s alleged conclusory statements that the life cycle tests at issues were not an accurate simulation of real world conditions. They were expert opinions based upon experience, not merely conclusory, and might add the trier of fact. The Court, however, barred a statement that the test was developed to defeat the patent in suit and therefore were evidence of willful infringement.
On September 26, Chicago-Kent is hosting its fourth annual U.S. Supreme Court Intellectual Property Review. Seventh Circuit Judge Diane P. Wood will deliver the keynote address, titled “Is It Time to Abolish the Federal Circuit’s Exclusive Jurisdiction in Patent Cases?” It promises to be a very interesting discussion.
The one-day conference will be held at the law school, 565 West Adams Street (between Clinton and Jefferson streets), in Chicago. Register here for the conference. Registration is free for Chicago-Kent faculty and students, $15 for other academics or students, and $35 for others.
The Medicines Co. v. Mylan, Inc., No. 11 C 1285, Slip Op. (N.D. Ill. June 13, 2013) (St. Eve, J.).
Judge St. Eve denied plaintiff The Medicines Company’s (“TMC”) motion to compel discovery withheld as privileged in this patent dispute. Initially, the Court held that TMC failed to comply with Local Rule 37.2 by filing its motion to compel without having a meet and confer. But the Court addressed the merits of the motion to avoid “needless delay.”
Drafts of defendant Mylan’s expert report were not discoverable. Mylan’s counsel had not written the reports, they had merely provided a prior declaration, portions of which were used verbatim in the report. TMC was, however, free to impeach the expert based upon his copying of the declaration. Finally, TMC did not show the “substantial need” required to overcome the Rule 16(b) protections of the draft reports.
DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 C 1531, Slip Op. (N.D. Ill. June 20, 2013) (Coleman, J.).
Judge Coleman awarded defendants (collectively “3D Systems”) approximately $140K in fees and costs as the prevailing party. Of particular note, the Court held as follows:
- The Court awarded witness fees for days testifying, but not days traveling.
- The Court awarded subsistence costs, up to the allowed $71/day.
- The Court awarded Bates-labeling costs, but not costs for confidentiality branding.
- 3D Systems was allowed to recover for two copies of each deposition exhibit, but not the full four that it made.
- 3D Systems was allowed to recover for three copies of summary judgment motions because 3D Systems had encountered trouble downloading multiple copies of its briefs.
- 3D Systems did not recover for rough drafts or ASCII versions of deposition transcripts.
- Video synchronization costs were not awarded because there were not sound or comprehension problems that required putting the text on the screen.
John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 24, 2013) (Keys, Mag. J.).
Judge Keys granted plaintiff’s motion to clarify the Court’s order that plaintiff produce documents related to two copyrighted, scientific articles that plaintiff alleges that defendants infringed by using them before the U.S. Patent & Trademark Office. While the requests were written broadly to encompass not just the two works, but all of plaintiff’s copyrighted works. But such a broad reading would be overly broad and unduly burdensome. So, the requests were limited to the two articles at issue or, in limited cases, “closely related scientific articles which are much like” the asserted works.