In celebration of Halloween, I am holding off on posts about Northern District cases and, instead, I am bringing you a Halloween-themed patent. This is the first page of U.S. Patent No. 6,419,541 which protects a "device for protecting treats" which can be extended to the treat-giver to receive a treat and an inflatable "scary creature" such as a snake or a mouse to give the treat-giver a trick. Happy Halloween.
The new electronic discovery amendments to the Federal Rules of Civil Procedure become effective in one month, on December 1st. In preparation for practicing under the amended rules, this Law Practice Today page provides a wealth of links to sites discussing the amendments and electronic discovery generally (thanks to the Illinois Trial Practice Weblog for identifying this excellent resource). Also, the federal judiciary posts a list of all Federal Rules being amended December 1st here.
Additionally, in April the Northern District amended several of its Local Rules. You can see a list of the amended rules here. Amended Local Rule 5.2, among other things, states that where electronic and paper copies of a document are filed, the electronic version controls. Amended Local Rule 5.2 also requires that the judge receive a courtesy copy of all electronically filed documents, unless the judge requires otherwise.
Continue Reading...Litetronics Int'l., Inc. v. Technical Consumer Prods., Inc., No. 03 C 5733, 2006 WL 2850514 (N.D. Ill. Sept. 28, 2006) (Ashman, Mag. J.).
Defendant sought sanctions pursuant to Fed. R. Civ. P. 37 arguing spoliation of evidence because plaintiff Coollite sold a factory in China which included various documents defendant had requested during discovery. Judge Ashman denied the motion for sanctions because defendant had not shown that the documents had been destroyed. The issue was who controlled the documents, but neither plaintiff nor defendants had requested the documents from the plant's new owner. Additionally, defendant had not investigated whether the Hague Convention might allow for discovery of the documents. This leads to an important practice tip: make sure to ask for third party documents, or at least start the process of asking for them, before seeking help from a court to get the documents.
Litetronics Int'l., Inc. v. Technical Consumer Prods., Inc., No. 03 C 5733, 2006 WL 2850513 (N.D. Ill. Sept. 28, 2006) (Ashman, Mag. J.).
Magistrate Judge Ashman denied defendant's motion to compel plaintiffs' production of two inventors of a patent-in-suit for deposition, where the inventors were not, and had never been, employed by plaintiffs. Defendants argued that the assignment agreement gave plaintiff control over the inventors and obligated plaintiff to produce the inventors for deposition.
Continue Reading...The Chicago-Kent College of Law is hosting two seminars in the upcoming weeks that IP practitioners will find very useful. On this Thursday, October 26, from 9:00 AM - 12:00 PM, the school is hosting a seminar entitled, "Copyright at the World Intellectual Property Organization: An Update."
At the seminar key World Intellectual Property Organization officials will update you on pending and emerging international copyright issues, and will address the challenges facing WIPO and international copyright policymakers. Please note, prior registration is preferred and can be accomplished by email or fax.
On Wednesday, November 1st, from 3:00 - 4:00 PM, the Chicago-Kent College of Law is hosting its third annual Federal Circuit Roundtable. The Roundtable, composed of former Federal Circuit law clerks, will address the topic, "Not So Obvious: Patent Law, the Supreme Court, and KSR International." The scheduled participants are Meredith Martin Addy, Brinks Hofer Gilson & Lione, Leonard D. Conapinski, McAndrews, Held & Malloy, Ltd., Sasha D. Mayergoyz, Latham & Watkins LLP, and Michael R. Weiner, Marshall, Gerstein & Borun LLP. The Roundtable will be moderated by Chicago-Kent Professor Timothy R. Holbrook. The Roundtable is free and registration is not required. Because my wife, Laura L. Donoghue, former law clerk for the Hon. Timothy B. Dyk, has spoken at prior Roundtables, I can vouch for this as an excellent event that is worth a few hours out of your Wednesday afternoon.
DeVore Family Partnership LLP v. McDougal Littell, No. 06 C 3484, 2006 WL 2861116 (N.D. Ill. Sept. 26, 2006) (Conlon, J.).
Judge Conlon refused to dismiss or strike plaintiff's claim for defendants' profits from sales of a textbook which allegedly included plaintiff's copyrighted photograph. Plaintiff alleged that it licensed defendants to include plaintiff's photograph of the Himalaya Mountains in a run of no more than 40,000 textbooks, but that defendants made almost 1.5 million copies of the book. Plaintiff sought, among other things, defendants' profits from the allegedly infringing textbooks.
Continue Reading...Cobra Capital LLC v. LaSalle Bank Corp., __ F. Supp.2d __, 2006 WL 2720626 (N.D. Ill. Sept. 19, 2006) (Bucklo, J.)
In this trademark infringement dispute, Judge Bucklo denied defendants' summary judgment motion because there were material issues of fact regarding, among other things, the protectability of the marks at issue ("Making Impossible Possible" and "Make the Impossible Possible"). Defendants argued that the marks were descriptive of the banking and lease financing industry, and that the marks were "merely common self-laudatory advertising." The Court, however, disagreed, stating that the latter argument "borders on frivolous" and noting that defendants' argument was harmed by their corporate parent's pending application for the similar mark "Making More Possible."
Continue Reading...Big Dipper, Inc. v. Wells' Dairy, Inc., No. 05 C 5395, 2006 WL 2711843 (N.D. Ill. Sept. 20, 2006) (Manning, J.).
In this trademark action, Judge Manning denied defendant's Rule 11 motion without considering it on the merits because defendant failed to comply with Rule 11's "safe harbor period." Rule 11(c) requires that before filing a Rule 11 motion, the party serve the motion on its opponent and give the opponent at least 21 days to correct the issues raised in the motion. Defendant's Rule 11 motion was also defective because defendant combined its Rule 11 motion with its response to plaintiff's motion to strike. As the Court noted, a Rule 11 motion must be filed as a separate, standalone motion.
Continue Reading...Connell v. KLN Steel Prods. Co., No. 04 C 194, 2006 WL 2661011 (N.D. Ill. Sept. 13, 2006) (Kendall, J.)
Judge Kendall stayed this patent infringement suit and transferred the case to the Court of Federal Claims, for the Court of Federal Claims to determine whether the Navy consented to defendant's alleged infringement pursuant to 28 U.S.C. Section 1498(a). Section 1498 provides that when the use or sale of a patented product is both for the government and with the government's "authorization and consent," a patent owner's sole infringement remedy is against the United States in the Court of Federal Claims.
Continue Reading...The new blog Trial Lawyer Resource Center looks like it will be a great resource and it represents many of the best aspects of legal blogging -- experts in a field gathering to share their insights and to engage readers in conversation. It has no specific relation to IP, but appears to be worth reading on general litigation and trial issues.
For more commentary on the Trial Lawyer Resource Center, check out Legal Blog Watch and Evan Schaeffer at his sites Legal Underground and Illinois Trial Practice Weblog.
Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2006 WL 2632074 (N.D. Ill. Sept. 11, 2006) (Moran, J.)
In this claim construction opinion, Judge Moran made an interesting holding regarding the use of claim construction to resolve literal infringement issues. Defendant argued that plaintiff’s proposed constructions of “binary code” and “trinary code generator” were improperly driven by plaintiff’s infringement case. The Court noted that this was an infringement argument. The Court, therefore, would not address defendant’s argument in its claim construction opinion. This does not change my advice that you should explain why you are arguing for subtle variations of a construction. Rather, Judge Moran’s opinion illustrates that, after explaining the purpose of your proposed construction, you should be sure to ground your argument in the intrinsic and extrinsic evidence.
Kennelsource, Inc. v. Barking Hound Village, LLC, No. 05 C 1788, 2006 WL 2578975 (N.D. Ill. Sept. 5, 2006) (Grady, J.)
Judge Grady dismissed plaintiff's complaint with prejudice for lack of personal jurisdiction. Plaintiff alleged that defendants, several Georgia and Texas entities and individuals, worked together or at each other's direction to steal plaintiff's pet-care business management software and to infringe plaintiff's copyrights for the software.
Continue Reading...Mader v. Motorola Inc., No. 92 C 8089, 1999 WL 519020 (N.D. Ill. Jul. 14, 1999) (Manning, J.).
This opinion intersects with IP only to the extent that you consider the opinion a derivative work based on its use of Beatles and Pink Floyd song titles and quotes. But it does highlight a fun area of legal writing -- the use of song lyrics in judicial opinions. A recent law review article, [Insert Song Lyrics Here]: The Uses and Misuses of Popular Music Lyrics in Legal Writing, by Professor Alex Long analyzes the use of music in legal writing (Bob Dylan is the most cited artist in judicial opinions, followed by Paul Simon and Bruce Springsteen). (Note: If my wife were a federal district judge, you might see a sharp increase in judicial citations to Judas Priest and KISS. Thankfully – at least for the sake of good musical taste – she is not, although she would otherwise make a great judge.)
Continue Reading...Trading Techs. Int'l., Inc. v. eSpeed, No. 04 C 5312, 4120 & 5164, 2006 WL 2506293 (N.D. Ill. Jul. 18, 2006) (Moran, J.).
Judge Moran requested additional briefing on remaining discovery disputes and denied defendant's motion to compel additional discovery regarding plaintiff's patent prosecution after both plaintiff and its prosecution counsel represented that they had produced all non-privileged documents. The opinion itself is somewhat generic, except that Judge Moran made some reasoned comments regarding the discovery process that IP litigators should read and remember:
Continue Reading...Discovery is a means for determining the truth, not an end in itself. Indeed, in criminal cases where liberty, not just money, is at stake, discovery is much circumscribed. Further, the discovery process depends upon the good faith of the parties and their counsel. . . . More often, reasonably complete discovery requires some prodding--the party is loath to expend the effort or seeks to use delays as a bargaining chip in getting discovery from others, or is anxious about what full discovery might disclose. Generally, however, we are convinced that litigants, represented by ethical counsel, recognize their obligations and act accordingly. Therefore, courts customarily rely upon the representations of counsel that the party has complied.
Underwriters Labs. Inc. v. Hydrofilm L.P., No. 05 C 5509, 2006 WL 2494748 (N.D. Ill. Aug. 23, 2006) (Guzman, J.).
Although this opinion deals solely with non-IP issues, it is interesting because it addresses how corporate websites fit into a personal jurisdiction analysis. Judge Guzman held that while the Court had subject matter jurisdiction over plaintiff's declaratory judgment claims (based upon defendants's voluntary withdrawal without prejudice of a related suit against plaintiff), the Court lacked personal jurisdiction over the defendants.
Continue Reading...Konvin Assocs. V. Extech/Exterior Techs., No. 04 C 2544, 2006 WL 2460589 (N.D. Ill. Aug. 21, 2006) (Kennelly, J.).
In this opinion, Judge Kennelly ruled on opposing summary judgment motions arguing invalidity and infringement issues. As an initial matter, the Court refused to exclude opposing expert affidavits despite the fact that neither expert was disclosed as required by Rule 26(a)(2)(A). The Court held that Rule 37(c) does not allow striking evidence based upon Rule 26(a) violations where the violation is harmless. Because neither party argued that they were harmed by the failure to disclose the experts, the Court refused to exclude the expert affidavits. The Court went on to deal with numerous invalidity and infringement issues, but I will focus on one more expert testimony issue.
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