Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

MPC Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2006 WL 2331148 (N.D. Ill. Aug. 10, 2006) (Aspen, J.).

Judge Aspen granted defendants’ Rule 12(b)(6) motion to dismiss plaintiff’s Lanham Act unfair competition claim for failure to meet the Rule 9(b) heightened pleading requirements.  Plaintiff’s bare allegation that the individual defendants made misrepresentations to a single customer did not satisfy Rule 9(b)’s heightened pleading requirements. 

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Kenall Mfg. Co. v. Genlyte Thomas Group LLC, 439 F. Supp.2d 854 (N.D. Ill. July 20, 2006) (Castillo, J.).

Judge Castillo denied opposing infringement and invalidity summary judgment motions in this very detailed and thorough opinion. The opinion is most remarkable for its illustration of two basic, but important, practice tips, which are best understood from the following excerpts:

The only thing that the multitude of summary judgment motions and expert reports filed in this hotly-disputed patent case make clear is that multiple issues of material fact remain to be determined. Instead of moving this case toward a timely resolution, the parties are driving up the costs of litigation with superfluous briefing that has repeatedly failed to abide by this Court’s local rules.

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This case has been poorly litigated up to this point. By failing to file a 56.1 statement of facts and by failing to respond to Genlyte’s 56.1 statement, Kenall’s attorneys have come dangerously close to losing this case for their client based on nothing but their own ineptitude. On the other side, both Genlyte and Kenall have fanned the flame of excessive and superfluous briefing with arguments for unfeasible claim construction and a litany of expert reports that show nothing but material issues of facts. The parties have now spent tens of thousands of dollars on seven expert reports and extensive briefing of three separate motions for summary judgment to prove to this Court that this case is certainly not appropriate for resolution on summary judgment.

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C/F Int’l., Inc. v. Payne, No. 06 C 1329, 2006 WL 22290992 (N.D. Ill. Aug. 3, 2006) (Kennelly, J.).

Plaintiff filed suit to enforce a copyright infringement and breach of contract judgment against individual defendant Payne, his wife and two companies run by Payne after Payne allegedly transferred both personal and corporate assets to his wife. Judge Kennelly denied defendants’ motions to dismiss and for judgment on the pleadings, and deferred ruling on defendants’ motion to stay based on one defendant’s Chapter 7 bankruptcy proceeding.

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Shanklin Corp. v. American Packaging Mach., Inc., No. 95 C 1617, 2006 WL 2054382 (N.D. Ill. July 18, 2006) (Schenkier, Mag. J.).

In this case, Magistrate Judge Schenkier considered plaintiff’s Amended Bill of Costs after the two defendants were found to have infringed plaintiff’s patents, one defendant willfully.  The Court took pains explaining plaintiff’s math and proof-reading errors in plaintiff’s cost spreadsheet.  Apparently, defendant’s (only one defendant objected to the Bill of Costs) initial objections to the Bill of Costs were largely based upon plaintiff’s failure to explain and support its costs. Both parties would have saved attorneys fees – and the court would have been spared the task of sorting this out – had plaintiff taken the time to explain in detail its costs in the first place.  This opinion also provides a useful explanation of which standard costs are recoverable and which are not.

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Murata Mfg. Co., Ltd. v. Bel Fuse Inc., __ F. Supp.2d __, 2006 WL 2176241 (N.D. Ill. Jul. 28, 2006) (Gottschall, J.).

This detailed claim construction ruling demonstrates several useful practice tips. First:  work with opposing counsel upfront to determine which terms are actually in dispute. The parties’s initial briefing sought construction of nineteen terms, but when the Court required supplemental briefs post-Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the parties limited their briefing to only seven terms. This highlights the value of sitting down with opposing counsel before claim construction to identify the terms that are actually disputed.  Of course, this requires two reasonable parties represented by reasonable counsel, but you are better off at least trying. It is embarrassing to counsel and expensive for the client to learn, upon receiving the opposing brief, that a term that you spent hours, dollars, and valuable pages briefing is not actually in dispute. And of course, it is frustrating for the Court.

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The article Pet Peeves from the Bench by LA Superior Court Judge Victoria Gerrard Chaney is not about intellectual property law, nor is it about the N.D. Ill.  But I include it here to encourage anyone who ever appears in court to read it. Most of the article should be common sense for your average litigator, but apparently many of us need a refresher.  (Thanks to the WSJ Law Blog for identifying this excellent article).

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Abbott Labs. V. Andrx Pharm., Inc., No. 05 C 1490, 2006 WL 2092377 (N.D. Ill. July 25, 2006) (Brown, Mag. J.).

Using nonprivileged documents that are connected to privileged documents, such as fax coversheets or cover emails used to send a privileged report, to question a witness regarding the related privileged documents can waive the privilege.  Applying Seventh Circuit law (the privilege questions at issue are unrelated to substantive patent law, so Federal Circuit law does not apply), the Court held that plaintiff Abbott waived privilege with respect to an entire document where:  1) Abbott produced a fax coversheet from a document over which it had claimed attorney-client and work product privilege; and 2) used that cover sheet in a line of questioning regarding the underlying document, despite Abbott’s decision not to produce the underlying document.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 2088437 (N.D. Ill. July 24, 2006) (St. Eve, J.).

Judge St. Eve denied plaintiff, Black & Decker’s (“B&D”) summary judgment motion on defendant Bosch’s inequitable conduct defense. While prosecuting various applications related to a rugged jobsite radio and charger (the “Smith patents”), B&D became aware of inventor Joseph Domes’s similar applications, which later matured into the patents-in-suit. To avoid a possible interference, B&D licensed Domes’s applications (the “Domes patents”) and ultimately became the exclusive licensee of the two Domes patents.

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