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Chicago IP Litigation

Tracking Northern District of Illinois IP Cases

Late Damages Theory Allowed Based Upon Lack of Prejudice

Posted in Summary Judgment, Trial

NanoChem Sol’ns, Inc. v. Global Green Prods., LLC., No. 10 C 5686, Slip Op. (N.D. Ill. Sep. 10, 2013) (Hart, Sen. J.).

Judge Hart denied defendants’ motion in limine to exclude plaintiff NanoChem’s late-disclosed lost profit damages analysis.  The Court also granted defendants’ motion for summary judgment as to NanoChem’s Lanham Act and Illinois state law unfair competition claims.

During discovery, NanoChem stated that it would seek a reasonable royalty for its patent claims without providing a calculation.  In response to defendant’s motion, NanoChem provided a lost profit calculation.  While the calculation was late, defendants were not prejudiced because the final pre-trial order had not been filed yet and NanoChem did not rely upon an expert.  But NanoChem was limited to the offered calculation and no other damages theories.

The Court granted defendants summary judgment as to NanoChem’s Lanham Act and Illinois unfair completion claims.  Each claim required that NanoChem prove that its A-5D mark had acquired secondary meaning.  Because NanoChem did not offer evidence supporting secondary meaning, the Court granted defendants summary judgment.

Failing to Offer Construction for Indefinite Term Can Leave a Court “at Sea”

Posted in Claim Construction

Saro Golf, Inc. v. Nike, Inc., No. 08 C 1110, Slip Op. (N.D. Ill. Sep. 9, 2013) (Chang, J.).

Judge Chang clarified the claim constructions in this patent case regarding an improved golf club head.  “Radius of curvature” was previously construed to mean “radius of a substantially circular curve of a substantial portion of the back side profile shape.”  This construction presumed that each of the heel and toe of a club head had a profile that was “circular in profile” meaning that it was largely made of a single radius.  Neither party had sought a construction limiting the profile to one composed of a single radius, nor did they address the construction at the claim construction hearing.

The Court considered the parties’ briefs and the intrinsic evidence, but could not “square” the construction with the evidence because:

  1. The single radius requirement read one of the preferred embodiments out of the claim.
  2. The construction was a “mouthful” and did not make sense grammatically within the asserted claim 7.  It is good to see courts concerned with making claims that could go to a jury more reasonable and understandable, although it may be a nearly impossible task.
  3. The prior construction was based upon the faulty premise that a radius of curvature could only be a circle.  In fact, it is a mathematical term that can be applied to any curve.

The Court, therefore, held that the Radius of Curvature was an average measure along a complex curve, and the issue was where it was measured from.  The Court ordered further briefing on the issue because neither party fully addressed it.

The Court also upheld the prior constructions of “Heel” and “Toe” of the club.  In doing so, the Court cautioned defendants to strongly consider offering alternative constructions when arguing terms were indefinite to avoid leaving the Court “at sea” should indefiniteness be denied.  The Court acknowledged that offering a construction could weaken the indefiniteness argument, but pointed out that courts regularly handle arguments in the alternative.

Plaintiff May Not Communicate with Does in BitTorrent Case by Email or Phone

Posted in Discovery

The Thompsons Film, LLC v. Does 1-60, Slip Op. 13 C 2368 (N.D. Ill. Sep. 6, 2013) (Gottschall, J.).

Judge Gottschall denied two Doe defendants’ motions to quash subpoenas to their respective ISPs seeking, among other things, their identities based upon their IP addresses in this BitTorrent copyright case.  The Court held that a copyright holder alleging infringement had the right to discovery the potential identity of the accused infringer, it did not matter that someone other than the owner of the IP address may have actually performed the accused infringement.

The Court did, however, allow the Doe defendants to proceed anonymously because of the “substantial possibility” that the IP address owner did not commit the accused acts, but rather someone else did using the Doe’s network.  The Court ordered plaintiff not to identify any Doe in a pleading filed with the Court except by IP address or by Doe#, absent a further order of the Court allowing public disclosure of the Doe’s identify.  The Court also limited the subpoenas to seeking the Doe’s name and address.  Plaintiff was not entitled to phone numbers or email addresses, and plaintiff was not allowed to contact the Does directly by either email or phone.

Dropped Copyright Claim Alone Cannot be the Basis for Copyright Misuse

Posted in Discovery

John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, Slip Op., No. 12 C 1446 (N.D. Ill. Sep. 16, 2013) (Keys, Mag. J.).

Judge Keys granted in part defendant McDonnell Boehnen’s (“MBHB”) Fed. R. Civ. P. 37 motion to compel document production and interrogatory responses in this copyright infringement case involving the use of various copyrighted scientific articles.  The Court previously warned that discovery could not be used as a fishing expedition, but allowed certain discovery regarding MBHB’s alleged use of the copyrighted articles in their law practice.  MBHB asserts fair use, laches and estoppels as affirmative defenses. 

The Court ordered production of budgetary information from plaintiff’s relevant group because the annual reports plaintiff already produced lacked information regarding operating costs, allocation of shared costs, and revenue expense drivers.  Additionally, they were prepared by or with input from key witnesses.

The Court denied MBHB’s request to compel a response to an interrogatory seeking the basis for plaintiff’s statements in its complaint that plaintiff had reviewed public records and found “substantial evidence of unlicensed copying . . . .”  Plaintiff had already withdrawn the claim, and making the claim could not be a basis for copyright misuse.

Answers Must Follow “Yellow Brick” Road of Federal Rules

Posted in Pleading Requirements

Wastequip Mfg. Co., LLC v. Precision Sewing, Inc., No. 13 C 8726, Slip Op. (N.D. Ill. Feb. 13, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte struck certain paragraphs of defendant’s answer and affirmative defenses for straying from the “yellow brick road” set by the Federal Rules in this patent case.

The Court struck answers that were not responded to based upon a lack of information and belief.  The Court also struck improper affirmative defenses.  The Court did not strike defendant’s invalidity affirmative defense because defendant did not have to clearly deny validity in its answer.  Therefore, an invalidity affirmative defense was proper, although the Court usually strikes them.  But the Court struck other defenses that were directly contradictory to plaintiff’s allegations.

Claim Constructions Rely Upon Specification and Dictionary

Posted in Claim Construction

Bobel v. MaxLite, Inc., No. 12 C 5346, Slip Op. (N.D. Ill. Feb. 5, 2014) (St. Eve, J.).

Judge St. Eve construed the disputed terms in this patent litigation related to compact fluorescent lamps.  Of particular note, the Court held as follows:

  • Resonate Boosting Circuit was construed as “a circuit comprising (i) boosting inductance connected in circuit between the AC input terminals and (ii) boosting capacitance, comprising one or more capacitors, connected in parallel with selected one or more diodes of the rectifier circuit.”
  • Power Line Voltage Rectifier was construed as “a device that converts the AC signal from an alternating voltage source into a pulsating DC signal at the output of the rectifier, with such device including at least two diodes, each of which connects on one side to the AC power line.”
  • Integrated Into was construed as “physically combined into.”
  • A Resonant Boosting Circuit Integrated Into the Power Line Voltage Rectifier was construed as “a circuit operable to provide between the DC terminals a variable DC voltage having an absolute peak magnitude higher than the absolute peak magnitude of a rectified voltage of the alternative voltage source, and the resonant boosting circuit comprising: (i) boosting inductance connected in circuit between the AC input terminals and the alternating voltage source, and (ii) boosting capacitance comprising one or more capacitors connected in parallel with one or more unidirectional devices of the rectifier circuit.”  Because the term was a combination of the previously construed terms, the term was construed consistent with those constructions.
  • Parallels was construed as “of or denoting electrical components or circuits connected to common points at each end, rather than one to another in sequence.”  This construction was based upon a dictionary definition.

The Court helpfully closed its opinion with a chart listing its constructions.

Failure to Serve Complaint Courtesy Copies Leads to Fine

Posted in Local Rules

Malibu Media, LLC v. Doe, No. 14 C 693, Slip Op. (N.D. Ill. Feb. 7, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Malibu Media to serve a courtesy copy of its copyright complaint on the Court in compliance with Local Rule 5.2(f) and the Court’s website.  Malibu Media also was ordered to pay a $100 fine for delayed compliance with Local Rule 5.2(f).

Court Will Not Expedite Discovery Decision After Party’s Delayed Filing

Posted in Discovery

Tellabs Ops., Inc. v. Fijitsu, Ltd., No. 09 C 4530, Slip Op. (N.D. Ill. Feb. 13, 2014) (Cole, Mag. J.).

Judge Cole denied plaintiff/counter-defendant Tellab’s motion to expedite ruling upon Tellab’s motion to reclassify certain confidential documents or that Tellab’s executives could review the documents before a looming mediation.  The Court denied the motion for several reasons:

  • Tellabs should not have waited until four weeks before a mediation to complete briefing about documents that were reviewed as much as one year ago.
  • With the motion noticed four days before the mediation and eight categories and hundreds of pages to review, the Court could not meaningfully consider the issues.
  • The motion to expedite was the 1,185th document filed in the five-year-old case, with two prior mediations.  Parties and counsel should already be well-versed in the case and ready for mediation based upon the already extensive schedule to date.
  • Tellabs offers no reason it could not postpone the mediation instead of expending the Court’s limited resources.

Having denied to expedite its decision, the Court said it would attempt to decide the motion before the mediation.

CLE: IPLAC 2014 Federal Judicial Panel

Posted in Legal Seminars

On March 5, 2014 from 5:30 to 7:30, the Intellectual Property Law Association of Chicago (IPLAC) is hosting its annual Federal Judicial Panel at the Chicago-Kent College of Law.  Margaret Duncan of McDermott, Will & Emery will moderate a panel consisting of N.D. Illinois Judges Coleman, Darrah, and Kendall.  The panel will discuss:

  • N.D. Illinois 2013-2014 IP litigation trends
  • The Supreme Court’s IP docket
  • Patent Office litigation and its effect on district courts
  • Electronic discovery

The panel costs $30 (members) or $35 (non-members).  Register here.

Court Orders Briefing Where Complaint Shown No Correction to Chicago

Posted in Local Rules

Sonic Indus., LLC v. iRobot Corp., No. 13 C 9251, Slip Op. (N.D. Ill. Jan. 17, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered the parties to explain their positions as to whether venue for this patent case was proper in the N.D. Illinois.  Based upon the complaint, plaintiff Sonic was a Delaware company and iRobot was a Massachusetts company.  The Court saw no connection to the Northern District except, perhaps Sonic’s interest in the Court’s Local Patent Rules.