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

DeVore Family Partnership LLP v. McDougal Littell, No. 06 C 3484, 2006 WL 3393844 (N.D. Ill. Nov. 22, 2006) (Conlon, J.).

Having already refused to dismiss this case (here), Judge Conlon held that defendants had not waived the arbitration clause in the parties' Agreement and stayed the case pending the results of the arbitration.  Plaintiff argued that defendants waived the arbitration clause by their delay in seeking arbitration.  Defendants countered that they had not delayed because when their counsel sought copies of the agreement on several occasions, defendants' employee sent copies of the front pages of the agreement, but omitted the back pages which included a set of preprinted terms and conditions including the arbitration clause at issue.  Defendants' counsel received the full agreement several months after the case was filed and sought arbitration and a stay of this proceeding within two weeks of reading the full agreement.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 2006 WL 3541933 (N.D. Ill. Dec. 5, 2006) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies ("TT") motion to compel additional deposition testimony from third party Brucato, the founder of TT's competitor Catus Technologies.  TT subpoenaed Brucato's deposition relating to Catus's work with defendant eSpeed or TT's software.  Brucato appeared for the deposition and answered questions on those topics, but refused to answer questions regarding work for clients other than eSpeed.  TT argued that evidence of Catus's work with other third party clients was relevant to show proof of widespread copying, which is an indicia of non-obviousness.  The Court acknowledged that, but balanced the relevance against TT's need for the evidence and the hardship to Catus.  The Court found that TT's request was only based upon TT's suspicions or speculations as opposed to any hard facts and that the connection, therefore, was not strong enough to warrant the risk third party Catus faced in providing such information to its competitor TT.

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Best Vacuum, Inc. v. Ian Design, Inc., No. 04 C 2249, 2006 WL 3486879 (N.D. Ill. Nov. 29, 2006) (Hort, J.).

In this trademark and Lanham Act unfair competition suit, Judge Hort granted summary judgment for defendant and dismissed the case.  Plaintiff had operated under the name "Best Vacuum" since 1983 and operated a www.bestvacuum.com website since 1996.  In 2003, defendant began operating a www.bestvacuumcleaners.com website, but when plaintiff complained, defendant changed its website to www.bestchoicevacuums.com.  After defendant refused to take down its second site, plaintiff sued.  Plaintiff's trademark infringement claim was dismissed earlier in the case because plaintiff never registered its "Best Vacuum" mark.  The case was before the Court on cross summary judgment motions.

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JVI, Inc. v. Universal Holdings, Inc., __ F.Supp.2d __ (N.D. Ill. Nov. 29, 2006) (Leinenweber, J.).

In this opinion Judge Leinenweber construed the claims of plaintiff's U.S. Patent No. 6,185,897 which covers an improved flange connector for precast concrete double tee members.  Of particular interest, the Court considered whether a specification including a single preferred embodiment limited the scope of the claims and discussed the claim differentiation doctrine.

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There has been lots of blog chatter over the last few days about various blogs taking the week between Christmas and New Years off.  But do not worry, I will not do that to you - plus I am almost fully caught up with case summaries and want to keep current for you.  So, you can continue visiting the Blog all next week, while some blogs go silent, for all of the Northern District IP news you can handle.

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U.S. Patent No. 5,855,705 is to an artificial Christmas tree with attached, or automatically wound, lights.  While the drawings depict a Charlie Brown-type tree, I am sure that was just for ease of drafting and clarity of the specification.

Merry Christmas.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3359349 (N.D. Ill. Nov. 20, 2006) (St. Eve, J.).

In this post-trial opinion, Judge St. Eve denies plaintiff's motion for attorney's fees, enhances the jury's damages award by 50% pursuant to 35 USC Section 284 and awards plaintiff prejudgment interest compounded monthly.  Despite the jury's willfulness finding the Court held that attorney's fees were not warranted because defendant's advocacy was consistently professional and the substantive positions it argued were largely meritorious.

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Wunderlich-Malec Sys., Inc. v. Eisenmann Corp., No. 05 C 04343, 2006 WL 3370700 (N.D. Ill. Nov. 17, 2006) (Ashman, Mag. J.).

Magistrate Judge Ashman granted plaintiff's motion to compel certain documents and held that defendant waived privilege as to certain documents it produced despite claiming attorney-client and work product privileges.  Defendant produced for inspection twenty two binders of documents, including four binders which defendant's counsel had internally identified as privileged and did not intend to produce for inspection.  About six weeks after the inspection, defendant realized that it had provided certain of these documents to plaintiff and sought the return of seventeen pages from the four binders.  Then, over the next several weeks, defendant sought the return of the remainder of the produced documents from the four binders claiming that they contained privileged information or trade secrets unrelated to the case.  Plaintiff retained the bulk of the documents arguing that any privilege that existed had been waived by disclosure of the documents.  Defendant argued that the documents were disclosed inadvertently and should be returned.

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U.S Patent No. 6,491,516 covers a Hanukkah candelabrum which sings/plays traditional Hanukkah songs and interacts electronically with a paired  dreidel to activate lights or play songs when the dreidel is spun.

Happy Hanukkah.

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Avery Dennison Corp. v. Naimo, No. 06 C 3390, 2006 WL 3343762 (N.D. Ill. Nov. 16, 2006) (Grady, J.).

In this trade secret dispute, Judge Grady dismissed plaintiff's breach of contract claim alleging defendant's breach of the parties' Employment Agreement because the Separation Agreement the parties subsequently signed included an integration clause.  When defendant began his employment with plaintiff he signed an Employment Agreement which required that, among other things, defendant not compete with plaintiff for twelve months after his employment ended and that defendant never use plaintiff's proprietary information for the benefit of anyone besides plaintiff.  When defendant later stopped working for plaintiff, the parties signed a Separation Agreement with a similar proprietary information clause and a strong integration clause, but apparently without a similar non-compete clause. 

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Copyscape has just launched a service which it claims will scour the web to locate potential copiers of your site's content.  Combine that evidence (if copying is found) with proper registration and we just might see an increase in copyright infringement suits.  Of course, the service is not perfect.  I tried it for the Chicago IP Litigation Blog and it returned one result, suggesting that Dennis Crouch at Patently-O had copied me.  In fact, Dennis's post was highlighting a new blog.  Two days after Dennis's post, I also highlighted the new blog (here) and mentioned Dennis.  So, if one of us was copying the other, it was me copying Dennis.  Of course, I did not plagiarize Dennis, we each did short posts identifying a new blog using similar language and it was exactly the kind of cross-posting blogs thrive on.

Try it for your sites and let me know how it works for you.

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Microthin.com, Inc. v. Siliconezone USA, LLC, No. 06 C 1522, 2006 WL 3302825 (N.D. Ill. Nov. 14, 2006) (Kendall, J.).

Judge Kendall held that plaintiff's patent claim did not give the Court supplemental jurisdiction over defendants' assault and battery, trespass, breach of contract and tortious interference counterclaims, even though the counterclaims were arguably related to plaintiff's patent infringement allegations.  The Court did, however, have diversity jurisdiction over the counterclaims.  After concluding it had jurisdiction, the Court dismissed the assault and battery counterclaims because there is no tort of assault against a corporation in Illinois.  The Court also dismissed the breach of contract claim, because plaintiff/counter-defendant was neither a party to the contract, nor an intended beneficiary. 

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The Northern District Clerk's Office sent a notice this morning that it is installing the new version 3.0 of its e-filing software this evening.  As a result, e-filing will be unavailable from 5:00 PM until at least 9:00 PM tonight, December 15.  So, you better get those Friday filings in early.  Also, the Clerk's office warned that the new software does not work with Netscape Navigator 4.7x, but it does work correctly with the following browsers:  Netscape 7.x, Internet Explorer 6.0 and Firefox 1.5.

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PSN Illinois, LLC v. Ivoclar Vivadent, Inc., No. 04 C 7232, 2006 WL 3523760 (N.D. Ill. Dec. 7, 2006) (Kendall, J.).

Judge Kendall granted defendant summary judgment of noninfringement, both literal and doctrine of equivalents.  Plaintiff alleged that Ivoclar's Empress veneer technique for making porcelain tooth veneers infringed plaintiff's patent.  The patent claimed a method for making porcelain veneers consisting of:  1) taking an impression of a tooth; 2) forming a "statue" of the tooth from the impression; 3) applying a "porcelain powder" to the statue to build a veneer restoration; 4) firing the veneer restoration on the statue; and 5) eroding the statue from the veneer restoration leaving a restoration "ready for mounting."  The Court construed each of the three terms in quotations and then held that no reasonable jury could find that defendant's Empress method produced a "ready for mounting" veneer.

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Google's continuing expansion has led it into the patent world.  Google is offering a new service called Google Patents.  It is a very powerful tool.  You can search for patents using the standard Google interface or you can do an advanced search which allows you to search by inventor, assignee, filing date, issue date or classification.  But the real power of Google Patents is the front page of each patent -- you can see an example here.  The page gives you all of the information from the front page of the patent (including links to the cited art), plus thumbnails of each drawing page and the text of the claims.  Very impressive.  If Google is taking over the world, at least they are doing a good job of it.

Thanks to Kevin O'Keefe at Lexblog and Matt Gulde at the Law Offices of Mark L. Rotert for pointing out Google Patents.

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Civix-DDI, LLC v. National Assoc. of Realtors, No. 05 C 6869, 2006 WL 3210504 (N.D. Ill. Nov. 6, 2006) (St. Eve, J.).

Judge St. Eve denied defendant Yahoo! Inc.'s ("Yahoo") summary judgment motion which argued that plaintiff Civix-DDI's ("Civix") patent infringement claims were barred by Civix's covenant not to sue in its settlement agreement (the "Settlement Agreement") with third party Navteq, a provider of relevant navigation data to Yahoo.  The Court held that Yahoo was a third party beneficiary of the Settlement Agreement because Yahoo purchased the data at issue from Navteq and that the Settlement Agreement protected such third parties from suit.  But the Court found an issue of material fact as to whether each of Yahoo's accused activities "relate in any way" to the Navteq technology and information, as required by the covenant not to sue. 

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The Chicago IP boutique McDonnell Boehnen Hulbert & Berghoff (former home of Dennis Crouch and Patently-O) has generated another patent blog:  Patent Docs.  Patent Docs is focused on the biotech/pharma arts written by a group of attorneys who are all PhDs (hence the blog's name).  Welcome to the conversation Docs.  We are glad to have you.

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QSRSoft, Inc. v. Restaurant Tech., Inc., No. 06 C 2734, 2006 WL 3196928 (N.D. Ill. Nov. 2, 2006) (Der-Yeghiayan, J.).

In this trade secret and copyright dispute, Judge Der-Yeghiayan granted the individual defendants' motion to dismiss plaintiff's conversion claim because it was preempted by plaintiff's Illinois Trade Secrets Act claim.  The Court, however, denied the remainder of the motion.  The remainder of the challenged the sufficiency of the pleadings generally, as well as each count specifically.  The individual defendants argued that each of the counts was not sufficiently plead because plaintiff failed to specifically identify each defendant by name, instead they were collectively referred to in the allegations as "defendants."  The Court held that the general references to the "defendants" were more than sufficient to put defendants on notice of the alleged acts.

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Jay Kesan  and Gwendolyn Ball  of the University of Illinois  Law School recently published a very interesting article in which they detail their empirical analysis of patent litigations.*  For the study they tracked 3,700 patent litigations beginning as early as 1995.  Among other things, they found that 80% of patent litigations settle and 95% of patent litigations are resolved prior to a full trial on the merits.  These should not be shocking results to patent litigators, but what may be more surprising is the results of their analysis of the cost of patent litigations.

* Thanks to the 271 Patent Blog for identifying the article.

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Judges Bucklo, Coar, Gettleman, Kennelly and Lefkow are instituting a joint trial call in 2007 (the N.D. Ill.'s statement about it is here).  Each judge is contributing cases to the call, apparently at the judge's discretion.  The cases in the call will be tried in order by one of the five judges, although not necessarily the judge originally assigned the case.  Each trial is expected to last no longer than five days and the attorneys and parties for a case on the call are expected to be ready for trial, including producing witnesses, on 48 hours notice.  I suspect that the five day trial limit will remove the typical patent case, although plenty of trade secret, trademark and copyright cases could end up on the joint call.  The judges on the call also intend to use suggestions from the Seventh Circuit Bar Association Jury Project Commission to speed the trials (more on the Commission's recommendations here).

This practice will make the Northern District, at least for some cases assigned to the participating judges, more like the Eastern District of Virginia, which randomly assigns judges to each new motion or trial throughout a proceeding.  It may also make it harder to delay a trial, turning up the heat on pre-voir dire settlement negotiations.

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Here is a patent philosophy issue to mull over:

Are patents worthless to startups?  Guy Kawasaki (marketing guru and the author of the How to Change the World Blog) says they are here.  He suggests that, with the exceptions of biotech, chip design and medical devices, startups generally cannot afford the time or money necessary to litigate, so "the most valuable outcomes of a patent are often impressing your parents and filling up space in your MySpace profile."  Not surprisingly, Guy's post resulted in some very strong negative responses from both patent prosecutors and litigators.  Guy generously posted this well articulated response which identifies that patents have both litigation and non-litigation benefits that all companies should consider, whether startups or well-established Fortune 100s.

Thanks to Rethink(IP): J. Matthew Buchanan, Douglas J. Sorocco, and Stephen M. Nipper for defending the value of patents.

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The Northern District of Illinois has recently established a Settlement Assistance Program for Pro Se Litigants.  Under the program, the presiding judge will appoint a volunteer attorney from member law firms of the Chicago Lawyers’ Committee for Civil Rights Under Law to represent pro se litigants solely for the purposes of a settlement conference and, if the dispute is resolved, drafting a settlement agreement and a motion to dismiss the case.  The Northern District has more information about the program here.  You can also see the Limited Appointment form here.

I doubt there will be many pro se patent litigants in the program, but it is still a good way for young litigators to get some court time and do some pro bono work all at the same time.

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Judge Nolan compelled defendant to provide complete answers, citing specific individuals, documents and things to plaintiff's fact-based contention interrogatories.  Plaintiff served defendant with contention interrogatory seeking to learn each basis for each of defendant's defenses and counterclaims relating to plaintiff's "ULTRA-LITE" and "Monster Tachometer" marks.  Defendant initially provided broad, non-committal answers and eventually supplemented including general statements directing plaintiff to defendant's document production without specifying any Bates ranges.

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Following up on my recent post about Judge St. Eve's post-eBay permanent injunction opinion (the first in the Northern District), Michael Smith who writes the E.D. Texas Federal Court Blog has written a very interesting article analyzing the first nine district court permanent injunction decisions decided using the eBay standard.

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Trading Techs. Int'l, Inc. v. eSpeed, Inc., No. 04 C 5312, 2006 WL 3147697 (N.D. Ill. Oct. 31, 2006). (Moran, Senior J.)

Judge Moran issued this opinion construing the claims of the patents-in-suit after a Markman hearing.  There are two items of special note.  First, the opinion provides a thorough recitation of the claim construction standards post-Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).  Second, the Court provides further proof that claim construction is an organic process which can change througout a case, with this succinct quote:

Although our preliminary injunction construction aligned with plaintiff's view, such construction was, simply put, preliminary.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3446144 (N.D. Ill. Nov. 29, 2006) (St. Eve, J.).*

In this opinion, Judge St. Eve issued what I believe is the first permanent injunction in the Northern District pursuant to the "new" Supreme Court standard set forth in eBay Inc. v. MercExchange, L.L.C., __ U.S. __, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).  The Court found irreparable harm, satisfying the first prong of the injunction standard, based on the possibility of continuing sales (although defendant stated that it had stopped producing and selling the infringing product), harm to plaintiff's reputation as an innovator in the relevant market and plaintiff's loss of market share. 

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In the last few weeks intellectual property law has gotten lots of press coverage.  Friday's Chicago Tribune had a good article on the often misunderstood boundaries of copyright law generally and the Digital Millennium Copyright Act specifically.  It even touches on the broadly misunderstood Fair Use doctrine. 

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3069544 (N.D. Ill. Oct. 24, 2006) (St. Eve, J.).

After a jury found that defendant willfully infringed certain claims of the patents-in-suit, Judge St. Eve conducted a bench trial to determine whether the patents were unenforceable based upon prosecution counsel’s alleged inequitable conduct in failing to disclose known prior art to the PTO during examination.* A finding of inequitable conduct based upon failure to disclose material information requires that the information was material to patentability and that the failure to disclose was done with intent to mislead the PTO. The Court denied the inequitable conduct claim focusing on the second prong of the inequitable conduct test – intent.  In short, prosecution counsel’s failure to disclose the alleged prior art (the “Smith patents”) to the PTO was not inequitable conduct because prosecution counsel believed the invention under examination (the “Dome patents”) was prior art to the Smith patents. Whether or not the Dome patents were in fact prior art to the Smith patents was not relevant to the question of prosecution counsel’s intent.

* Judge St. Eve previously denied plaintiff’s motion for summary judgment on inequitable conduct discussed in this post, along with a longer description of the facts of the case.

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