The Supreme Court issued opinions in both Microsoft v. AT&T and KSR v. Teleflex. I just received the opinions, so I have not had time for analysis yet. But you can click on the links for the opinions and I will report back Tuesday or Wednesday with more analysis.
Ocean Tomo recently had their first "town hall meeting" to discuss its plans to open an IP Enterprise Zone (the "Zone") in Chicago -- which sources say had an impressive attendance. Ocean Tomo plans to choose a site in downtown Chicago where it plans to house over one hundred representatives of companies interested in buying and/or selling portions of their IP portfolios. It sounds like it will be the equivalent of a very sophisticated farmers' market. IP professionals will bring their goods to the Zone while others come to look for IP that they want or need. You can read more about it here. Ocean Tomo plans to open the Zone in mid-2008 and is partnering with city and state government, as well as the Chicago Chamber of Commerce to turn its vision of the Zone into a reality.
In addition to housing IP professionals and facilitating deal-making, Ocean Tomo also expects to open the Intellectual Property Exchange Chicago ("IPX Chicago"), which will be the first securities exchange with an IP focus in the Zone. IPX Chicago is expected to begin operating in Q1 2010. Ocean Tomo explains its IPX Chicago as follows:
IPX Chicago will enable investor and company participation in a broad spectrum of IP-related financial products such as qualified equity listing/co-listing; IP related indexes, futures and options; IP backed bonds and securitizations; patent rich company IPOs; and, new IP-based exchange-traded products.
Ocean Tomo is also seeking responses to a survey regarding interest in the Zone. If you are interested in taking the survey, click on the top link on this page. The Zone appears to be a very exciting idea with some momentum and it could be great for Chicago generally and Chicago's IP community specifically.
Last Friday, the Chicago Tribune reported that Dick Butkus sued the Downtown Athletic Club of Orlando,* which gives out the Butkus Award to the nation's premiere linebacker each year. Butkus licensed the Club to use his name and likeness in connection with the Award and even helped the Club get and protect its rights in the Butkus Award. But Butkus alleged that the Club concealed that helping it secure trademark rights would prevent Butkus from using his name in connection with other awards and/or charitable endeavors. Butkus has attempted to terminate the parties' agreement, but the Club has allegedly told him he has not right to terminate. Butkus's attorney was quoted in this USA Today story explaining that this suit was not about money. Instead, Butkus believes that if he controls the award named after him, he can better benefit charities that he supports.
* He actually filed in the Central District of California -- Dick, nothing is more Chicago than you and Da Bears. How could you file this suit in California? But do not worry Chicagoans, Butkus's attorney says that should Butkus when his suit, he will likely bring the Butkus Award and related activities to Illinois. Welcome home Dick.
Cummins-Allison Corp. v. Glory Ltd., No. 02 C 7008 (N.D. Ill. Apr. 25, 2007) (Posner, J.).
Judge Posner, sitting by designation, entered an order dismissing all claim and counterclaims without prejudice and terminating the case, on what appeared to be near the eve of trial. The parties filed a Stipulated Dismissal earlier in the month. No further settlement details were readily available.
The Court's order ended what had been a fairly protracted patent dispute between the two parties centering around patents covering money-counting and bill-sorting devices. You can read more about prior rulings from the Northern District case in the Blog's archives. You can read about several opinions from the related Eastern District of Texas case here and here at Michael Smith's E.D. Texas Blog.
As I pointed out early this week, the Conrad Black trial has little or no intersection with IP, but I could not resist posting about Neil Steinberg's column in yesterday's Chicago Sun-Times. Steinberg spent a day observing the Black trial and provided his impressions of the jury system and Judge St. Eve. Two of his observations were particularly interesting. First, he found the trial very boring. As IP lawyers and particularly patent lawyers, this is something we have to struggle with. Making technology analysis and damages interesting is a difficult job and keeping jurors who only see a portion of the litigation proceedings awake and attentive can be difficult.
Second, Steinberg notes that "pay all that money to lawyers for a reason." I would like to believe he meant because of the immense skill involved, but I am afraid it is because of how boring and complex he found the trial.
Continue Reading...Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 1175577 (N.D. Ill. Apr. 20, 2007) (Aspen, J.).
Judge Aspen denied defendant Little Lady Foods, Inc.'s ("LLF") Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Fast Food Gourmet, Inc.'s ("FFGI") breach of contract claim. FFGI alleged that FFGI entered a "co-packing" relationship with LLF, essentially that LLF was to manufacture FFGI's product. Based upon that relationship, FFGI provided LLF with its various trade secrets relating to producing "a unique stone hearth oven thin crust frozen pizza." In addition to its formulas, recipes, methods and techniques, FFGI also provided LLF its equipment. FFGI alleged that, in addition to making pizzas for FFGI, LLG worked with defendant Kraft Foods Global, Inc. ("Kraft") to develop a line of pizzas using FFGI's trade secrets, with substantially the same crusts as the FFGI pizzas. FFGI brought claims for misappropriation of trade secrets against both defendants, breach of contract against LLF and unjust enrichment against Kraft. LLF sought to dismiss FFGI's breach of contract claim to the extent it was based upon allegations that the agreement was breached by production of pizzas for Kraft with crusts nearly identical to FFGI's crusts. LLF first argued that the agreement could not be breached because the agreement prohibits LLF from producing "pizzas with specification which are identical or . . . substantially identical to" the FFGI pizzas. Because FFGI only pled that the crusts were identical or substantially identical, LLF argued the claim should be dismissed. But the Court held that FFGI was only required to provide notice pleading of claims, not facts. Because FFGI identified the parties, stated the nature of its dispute and provided "a few tidbits" LLF was sufficiently on notice.
LLF also argued that the claim should be dismissed because the FFGI and Kraft pizzas are substantially different because Kraft's sauce and/or toppings are very different than FFGI's. But the Court refused to make factual determinations in a Rule 12(b)(6) motion and denied LLF's motion.
Michael Sneed's Tuesday Chicago Sun-Times column included an entry entitled "Ring. Ring."about the Northern District. She rarely covers Northern District happenings, but the Conrad Black trial is major international news. Sneed reports that during the Black trial, an attorney's cell phone "erupted" with a ring tone from The Exorcist. The always gracious Judge St. Eve reportedly responded to the ring, saying "I hope you didn't program that ring just for this trial."
While the Black trial is not intellectual property-related, I am blogging about Sneed's piece because it highlights an important practice tip: If you cannot turn off your phone when you enter a courtroom, at least put it on vibrate. Everyone has made the mistake of forgetting to silence your phone (mine was in church, very embarrassing), but to avoid it altogether leave your phone on vibrate permanently.
Metropolitan Life Ins. Co. v. Guardian Life Ins. Co. of Am., No. 06 C 5812, 2007 WL 1169704 (N.D. Ill. Apr. 17, 2007) (Norgle, J.).
Judge Norgle denied defendants' motion to stay based upon Colorado River abstention, which the Court noted was more properly referred to as Colorado River deference since it is not strictly abstention. This case had a tortured procedural history:
Defendants motion to stay argued that the Court should stay the case based upon the related, co-pending state court matter. But the Court held that Colorado River deference was not applicable because the Illinois Supreme Court had already denied Guardian's petition for leave to appeal which was a final resolution of the state court case.
Last Thursday, Ocean Tomo held its third live patent auction in Chicago. According to the Chicago Sun-Times report, nearly 300 people attended the auction live (I understand others bid by telephone) and that 50 patents were offered for bidding, generating $11.4M. The Sun-Times also reports that Telecommunications Corp. sold a video-on-demand patent portfolio for $2.75M. And the Infinite Monkey Theorem blog reports that an anonymous bidder paid $2.6M for a mobile social networking patent. According to the IMT blog, the patent "bridge[s] the online into the real world, the patent's main claim covers the use of mobile location information in conjunction with online information. This is a broad application which provide a location-based boost to gaming as well as networking sites like MySpace or upstart mobile IM players like Twitter."
Ocean Tomo's next live patent auction will be in Chicago this October.
Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 1141635 (N.D. Ill. Apr. 16, 2007) (Coar, J.).
Judge Coar granted plaintiff Abbott's motion for a preliminary injunction, after having previously denied it a TRO.* The PI enjoined defendant Sandoz from selling a generic version of Abbott's patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL). The Court held that Sandoz had shown a substantial likelihood of materiality and Abbott's intent to deceive the PTO based upon Abbott's failure to disclose certain taste perversion data during prosecution. But because Abbott abandoned the claims to which the taste perversion data was relevant of its own accord, the Court did not find the patent preliminarily unenforceable. The Court explained its reasoning as follows:
Redemption is one of the core principles of the American ethos. Thus in addition to being contrary to the spirit of Scribbs, Kimberly-Clark and the Code of Federal Regulation, it seems wholly inequitable to hold a patent to be invalid for fraudulent conduct in the prosecution of a claim that was withdrawn before actual prosecution had even begun.
Continue Reading...
Tomorrow afternoon the last installment of the Chicago IP Colloquium will feature Professor Pamela Samuelson of the University of California, Berkeley, School of Law
discussing her paper: What Section 102(b) Excludes from Copyright Protection and Why. The event will start at 4:10 PM in Loyola's Rubloff Reception Room.
Top Tobacco, L.P. v. North Atl. Operating Co., No. 06 C 950, 2007 WL 118527 (N.D. Ill. Jan. 4, 2007) (Kennelly, J.).
Judge Kennelly granted defendants' motion for attorneys' fees and granted in part their bill of costs. In January, Judge the Court granted summary judgment for defendants on plaintiff's trademark, unfair competition and dilution claims (read more about that decision in the Blog's archives). The Court ruled that no reasonable jury could find that consumers were confused between plaintiffs' TOP mark and defendants' "Fresh-Top Canister" mark. Defendants then filed the instant bill of costs and motion for attorneys' fees arguing that the case was exceptional. The Court held the case exceptional for three reasons. First, the Court found that plaintiffs' infringement and dilution claims were "exceptionally weak" stating that "a simple look at the canisters as they appeared on store shelves shows the virtual impossibility that consumers would be confused . . . ." The Court disregarded plaintiffs' purported evidence of actual confusion, which it presented for the first time in its response to the motion for attorneys' fees. Second, plaintiffs argued before the PTO that other "top" marks in the tobacco classification were narrow. But before the Court plaintiffs took the "diametrically opposite" position, arguing that their TOP mark should enjoy broad protection. Third, the Court found defendant Top Tobacco's chairman Donald Levin's testimony that the two products looked identical because they were both cans of tobacco "absurd." The Court analogized Levin's argument to the position that all the books on library shelves are identical because they are all books, without regard to their titles, jacket designs or colors.
Continue Reading...Chief Judge Holderman announced the selection of Susan E. Cox as the Northern District's newest magistrate judge, filing the vacancy created by Judge Levin's retirement. You can read the Northern District's press release here. Magistrate Judge Designate Cox has an impressive resume including a clerkship with District Judge Wayne R. Andersen, eight years as an AUSA, twenty four cases (civil and criminal) tried to a verdict, and, perhaps most important to Blog readers, patent infringement experience. Congratulations Judge Cox.
United States Gypsum Co. v. LaFarge N. Am., Inc., No. 03 C 6027, 2007 WL 1100804 (N.D. Ill. Apr. 3, 2007) (Hart, J.).
Judge Hart granted in part and denied in part the parties' cross-motions for summary judgment. This case was a dispute over technology related to gypsum wallboard manufacturing and included patent infringement, trade secret misappropriation, breach of contract, Stored Communications Act ("SCA"), Computer Fraud and Abuse Act ("CFAA") and various related state tort claims. The Court first looked at plaintiff's patent infringement claims regarding methods for making gypsum board and resolved the parties' claim construction disputes. The Court then turned to defendants' argument that plaintiff was estopped from claiming infringement by equivalents because it failed to expressly refer to the doctrine of equivalents in its complaint or in its contention interrogatory responses. The Court held that it was sufficient to allege infringement and cite Section 271 in a complaint. And as to waiver for failure to disclose equivalents in its interrogatory responses, the Court held that defendants had shown no prejudice from plaintiff's failure to disclose equivalents and that while plaintiff did not use the term equivalents in its responses, it did state that it contended defendants infringed the patents even if defendants processes did not meet timing requirements in the claims. As a result, plaintiff was not barred from arguing infringement pursuant to the doctrine of equivalents.
Continue Reading...Yesterday, Senators Leahy (D-Vt) and Hatch (R-Utah), and Representatives Berman (D-Calif.) and Smith (R-Texas) announced their new Patent Reform Act. You can read their press release on the Act here. The Act is very far reaching and is worth review, in order to prepare for it and/or inject yourself into the debate over it. Here are the the portions of the Act I found to be the most interesting (the other major changes follow in a list after the jump):
Each of these is a major change. Petitions for cancellation could develop into another fast-track strategy for plaintiffs, like ITC proceedings for goods shipped internationally. And the lack of presumption of validity could make the proceedings very popular. The venue limits, though perhaps not surprising, could have a big impact. They will likely reduce the number of pre-answer, non-substantive litigation skirmishes that "venue shopping" results in. And they could be harmful to some communities, like Marshall, Texas, that have developed cottage industries around patent litigation. Finally, giving the Federal Circuit jurisdiction for interlocutory claim construction appeals may save money by reducing discovery, dispositive briefing and trials that are overruled by claim construction reversals. But it could also dramatically increase the Federal Circuit's docket, if it has to see most cases twice, thereby doubling the volume of briefing, instead of once.
Continue Reading...Johnson v. Wright, No. 05 C 3943, 2007 WL 1079063 (N.D. Ill. Apr. 5, 2007) (Grady, J.).
Judge Grady denied defendants' Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff's amended complaint for lack of subject matter jurisdiction. Defendants, record companies and related individuals, were accused of infringing plaintiff Syl Johnson's copyright in his song "Is It Because I'm Black," as well as related state law claims. Defendants argued that there was not federal jurisdiction because the co-owners of Johnson's copyright had transferred their rights to one of the defendants. The transfer, defendants argued, destroyed Johnson's federal copyright claim, leaving only state claims over which the Court lacked independent jurisdiction. But defendants conceded that Johnson stated a claim for federal copyright infringement. The Court held that Johnson's and defendants' alleged co-ownership of the copyright was an affirmative defense, not a jurisdictional matter. Because Johnson had a well-pled claim of federal copyright infringement, the Court denied defendants' Rule 12(b)(1) motion to dismiss. The Court also noted that defendants' motion was "essentially" a copyright infringement summary judgment motion, but because it was styled as a Rule 12(b)(1) motion on the pleadings, Johnson was not given adequate opportunity to present his response. Additionally, the Court identified several questions of fact that would have prevented a grant of summary judgment based upon the exhibits attached to the parties' briefs.
The Chicago Sun-Times reported some IP-related news Sunday. In a piece entitled "Futures Exchanges Fight Back on Patents," the Sun-Times reported that Brinks Hofer, a Chicago IP boutique, filed a petition with the PTO, on behalf of an unnamed client (PTO regulations do not require identification of Brinks's client), seeking reexamination of patents assigned to Trading Technologies ("TT"). The patents are at issue in a series of Northern District law suits, which have been consolidated to some degree before Judge Moran. You can read more about the suits in the Blog's archives. According to the Sun-Times piece, the reexam petition argued that the TT patents were invalid based upon an order-entry system adopted by the Tokyo Stock Exchange several years before the filing dates of the TT patents. TT responded to the petition's allegations in the Sun-Times piece, saying that the arguments were recycled from the Northern District lawsuits and that the Court was skeptical of the arguments. TT also noted that a trial was set for June 28, just two months away. Finally, TT pointed out that the majority of reexam petition are granted and said that it "is confident that the validity of its patents will be upheld."
GMAC Real Estate, LLC v. E.L. Cutler & Assocs., Inc., 472 F. Supp.2d 960 (N.D. Ill. Oct. 20, 2006) (Bucklo, J.).
Judge Bucklo held that the Court lacked personal jurisdiction over defendant and dismissed plaintiff's complaint. Plaintiff, a franchiser of residential real estate brokerages, brought this suit alleging that defendant, a former franchisee, breached its agreement with plaintiff and after the breach continued using plaintiff's trade and service marks. The Court held that defendant's continued business relationship with plaintiff after plaintiff moved from New Jersey to Illinois was not sufficient to create specific jurisdiction. While defendant had exchanged some communications with plaintiff in Illinois and come to Illinois for business meetings on one or more occasions, the Court lacked jurisdiction because the parties negotiated the underlying agreement in New Jersey (plaintiff's prior main office) and Ohio (defendant's location); defendant paid its franchising fees to plaintiff's Pennsylvania office; defendant's post-termination obligations which it allegedly did not meet were to have been performed in Ohio; and plaintiff's letter to defendant terminating the franchise agreement had a New Jersey return address. Furthermore, the Court held that the location of defendant's alleged trademark infringement and cybersquatting was in Ohio, not Illinois.
Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1017751 (N.D. Ill. Mar. 30, 2007) (Moran, J.).
Judge Moran granted plaintiffs' motion for a preliminary injunction, preventing defendant from marketing and selling its garage door opener transmitters. Relying upon its two prior claim construction decisions (which can be found in the Blog's archives), the Court first determined that plaintiffs had proven a likelihood of success on its infringement claims. Then the Court considered plaintiffs' irreparable harm claims. The Court denied plaintiffs' argument that its showing of a strong likelihood of success creates a presumption of irreparable harm. Citing eBay, Inc. v. Merc Exchange, L.L.C., 126 S. Ct. 1837 (2006), the Court held that the Supreme Court limited the automatic presumption of irreparable harm based upon infringement. Instead, the Court determined that plaintiffs' had shown that they were irreparably harmed because defendant's sales had eroded its prices and strained its customer relations.
Continue Reading...Bryant v. Gordon, __ F. Supp.2d __, 2007 WL 461326 (N.D. Ill. Feb. 8, 2007) (Kennelly, J).
This opinion replaces Judge Kennelly's February 8, 2007 opinion. The result is not altered, the Court granted summary judgment for defendants, Gordon and Mach 1 LLC ("Mach 1"), on plaintiff's, Bryant, claims of copyright infringement based upon copyrighted goods Mach 1 purchased free of encumbrances in a bankruptcy auction. The only substantive change appears to be a statement that to the extent that Mach 1 acquired merchandise from the asset sale, Mach 1 was likely entitled to to depict that merchandise for advertising purposes, including on the internet. But the Court stops short of holding that the goods depicted on Mach 1's internet site were all acquired from the asset sale.
The John Marshall Review of Intellectual Property has published an article by Ray Niro senior partner of Niro Scavone, traditionally a patent plaintiff's firm, calling for an end to name-calling in the patent world: Raymond P. Niro, Who is Really Undermining the Patent System -- "Patent Trolls" or Congress?, 6 J. MARSHALL REV. INTELL. PROP. L. 185 (2007). First, he traces the history of the term "patent troll" for patent holding companies and then he suggests a few less than pleasant nicknames for the attorneys that defend corporations against patent suits. And as someone who often, although not exclusively, defends companies in patent suits the names hurt Ray, they really hurt. But seriously, the article is very interesting, raises some provoking points and is worth a read.
Chicago Tribune Co. v. Fox News Network LLC, No. 07 C 0865, 2007 WL 1052508 (N.D. Ill. Apr. 4, 2007) (Bucklo, J.).*
Judge Bucklo denied plaintiff Chicago Tribune's ("Tribune") motion for a preliminary injunction. The Tribune sought an injunction which would have required defendant Fox News Networks ("Fox") to change the name of its "Redeye" late-night television news program based upon alleged infringement of the Tribune's Redeye mark related to its Redeye newspaper. The Court held that the Tribune had only shown a "possibility" that it would prevail on the merits. The Court found that the Tribune's Redeye mark was at least suggestive and, therefore a strong mark. And the Court held that while the marks did not visually resemble each other, the Tribune proved a likelihood that the marks were aurally identical. But the evidence did not favor the Tribune on either of the other two "most important" factors in deciding likelihood of confusion: defendant's intent and actual confusion. No evidence showed that Fox "passed off" its program as coming from the Tribune, so the issue of Fox's intent favored Fox. As to actual confusion, the Tribune put forth a witness that testified that he suffered "momentary actual confusion" when he first learned of Fox's Redeye program, but that it was cleared up almost immediately by someone he was talking with about the program. Additionally, the witness did not have cable television, so could not watch the show. While initial confusion can be sufficient to show actual confusion, the Court disregarded the witnesses testimony because he admitted that he was a consumer of neither the Tribune's nor Fox's products.
Continue Reading...SMC Corp., Ltd. v. Lockjaw, LLC, __ F. Supp.2d __, 2007 WL 983850 (N.D. Ill. Apr. 3, 2007) (Castillo, J.).
Judge Castillo granted plaintiff's motion for a preliminary injunction, enjoining defendants from breaching the parties' agreement, unless plaintiff acted in a manner triggering the agreement's termination provision, and from contacting plaintiff's customers for any purpose without plaintiff's consent. Plaintiff was the exclusive distributor of defendants' patented Lockjaw pliers in certain Western European countries. For about eighteen months, plaintiff's distributed defendants' pliers without incident. But then defendants altered payment terms, which was their right if they followed certain procedures. Plaintiff alleges that defendants did not follow those procedures and based on this dispute the relationship appears to have broken down. Shortly after defendants altered the payment terms, plaintiff filed this suit seeking, among other things, a declaratory judgment that the agreement is binding and enforceable, and that defendants breached the agreement. Plaintiff also sought an injunction to prevent the defendants from terminating the agreement and/or contacting plaintiff's customers. Relying upon the UCC, the Court found that plaintiff had a likelihood of success on the merits based upon, among other things, the fact that its brief (and cured) nonpayment for two shipments likely did not constitute a breach of the agreement.
Continue Reading...Tomorrow afternoon the latest installment of the Chicago IP Colloquium will feature Professor James Thuo Gathii of the Albany Law School discussing his paper: What History Teaches Us About International Protection of Intellectual Property Rights: The Case of Least Developed Countries. The event will start at 4:10 PM in Room 305 at Kent.
According to this Law.com article, effective May 1st the Northern District of Texas, based in Dallas, has instituted local patent rules similar to those used in the more famous (at least in patent circles) Eastern District of Texas, which were modeled after the Northern District of California's Local Patent Rules. Additionally, the Southern District of Texas, based in Houston, is considering adopting a similar set of local patent rules. Perhaps the courts think that the variety of direct flights to Dallas or Houston combined with the same Texas charm and hospitality available in Marshall, will give the Northern and Southern Districts a leg up on their colleagues to the east. Of course, all of this would fall apart if Congress revises the venue requirements as Patently-O suggests it might.
But regardless of what Congress does, this spreading of special patent local rules, which I am all for, makes me wonder if the Northern District of Illinois will follow the trend and adopt their own special patent rules. Some judges already have standing orders outlining their processes for claim construction proceedings. For example, Judge St. Eve's procedures can be found on her site in the "Patent Cases" section.
Scholz Design Inc. v. Jaffe, No. 06 C 0075, 2007 WL 896536 (N.D. Ill. Mar. 21, 2007) (Grady, J.).
Judge Grady, after a bench trial, entered judgment on behalf of defendants because they had neither directly or contributorily infringed plaintiff's copyrighted home design. The Court held that, while plaintiffs approved the design, any actual copying of the copyrighted design was done by defendants' architects. Additionally, the Court held that plaintiff introduced no evidence at trial to prove that defendants knew that plaintiff's copyright was being infringed by defendants' architect. The Court held that, at most, defendants knew plaintiff's design was being used, but had no reason to believe the architect was infringing the design.
Bobak Sausage Co. v. Bobak Orland Park, Inc., No. 06 C 4747, 2007 WL 846505 (N.D. Ill. Jar. 19, 2007) (Kennelly, J.).
After an evidentiary hearing, Judge Kennelly held defendants in contempt for violating the stipulated permanent injunction entered by the Court and ordered defendants to comply with the injunction within three weeks or face daily fines. Plaintiff Bobak Sausage Co. ("Bobak's") makes and sells meat products and operates a related restaurant in Chicago. Bobak's founder, Frank Bobak, transferred ownership of Bobak's to his sons. In early 2006, Bobak's reorganized, which led to two of the sons owning Bobak's and a third owning a grocery store that Bobak's had been building. As part of the reorganization, Bobak's granted two entities rights to use Bobak's trademarks at retail locations for a six month period. After the six month period ended, Bobak's filed suit against defendants (including the third son and the licensed retail locations) for, among other things, trademark infringement based upon the continued use of the Bobak's marks. The parties settled that dispute based at least in part upon a stipulated permanent injunction, which the Court entered, which set various limits on what marks each defendant could use, requirements that the defendants remove and change their signage and requirements that defendants use disclaimers that they were not affiliated with Bobak's.
Continue Reading...Global Computing, Inc. v. Hartford Cas. Ins. Co., No. 05 C 6753, 2007 WL 844618 (N.D. Ill. Mar. 14, 2007) (Hibbler, J.).
Judge Hibbler granted defendant-insurer summary judgment that it had no duty to indemnify or defend plaintiff-insured. Microsoft brought suit against plaintiff alleging that plaintiff distrbuted counterfeit Microsoft software and used Microsoft logos in its advertising for the software, thus infirning Microsoft's copyrights and trademarks. Plaintiff tendered the claim to defendant, its insurer, but defendant refused to defend plaintiff stating that its policy did not cover Microsoft's allegations. After settling with Microsoft, plaintiff brought the instant suit alleging defendant breached its duty to defend and indemnify. The Court noted that by refusing to defend, defendant estopped itself from denying coverage for policy reasons if it breached its duty to defend. But because Microsoft's alleged infringement of its copyrights and trademarks (which were exempted from coverage), instead of the use of Microsoft's advertising ideas, the suit was not covered by the insurance policy.
Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, 2007 WL 844610 (N.D. Ill. Mar. 14, 2007) (Moran, Sen. J.).*
Judge Moran denied in part and granted in part declaratory judgment defendant Trading Technologies' ("TT") Rule 37 motion for sanctions. The Court held that declaratory judgment plaintiff Rosenthal Collins Group's ("RCG") motion for summary judgment of invalidity was "somewhat misleading" and possibly "disingenuous," but refused to dismiss the case. Instead the Court struck the declaration underlying RCG's motion, denied RCG's summary judgment motion with leave to refile a motion "supported by proper evidence" and awarded TT its costs and attorneys fees associated with the Rule 37 motion, as well as its software expert's fees. RCG filed a summary judgment motion arguing that TT's patents covering "double click" methods for executing an electronic trade were anticipated by the alleged prior art system "Wit DSM" as embodied in a software package RCG presented to the Court and TT on a laptop and claimed was essentially the software as it is existed more than one year prior to TT's patent filing. TT's software expert identified that several lines of code had been added to the software by RCG's declarant, and that the added code performed certain functionalities required for anticipation. When RCG's declarant was deposed, he stated that he had not written the "double click" portion of the original code and could not be sure that it was in the alleged prior art version of the WIT DSM. These facts did not warrant dismissal of the case or barring of any evidence because RCG and its declarant had not made any false statements, although they had made deliberately vague statements. Furthermore, while RCG did not identify that the software package included added code which the Court found disturbing, it did include a comparison program on the laptop it provided to TT and the Court which would have identified the added code.
This case involves the several of the same patents as the other TT case before Judge Moran.
Vaughn v. Kelly, No. 06 C 6427, 2007 WL 804694 (N.D. Ill. Mar. 13, 2007) (Manning, J.).
Judge Manning denied plaintiff Vaughn's motion to remand his case to state court, but gave plaintiff leave to file an amended complaint. Vaughn sued defendant R. Kelly ("Kelly") in Illinois state court alleging breach of contract, fraud and unjust enrichment, among other things. Vaughn alleged that he introduced Kelly to stepping, taught him how to step, helped him write a stepping-based song entitled "Step in the Name of Love," and collaborated with Kelly to develop a video for the song. Kelly had the case removed to the Northern District based upon an argument that the claims sound in copyright law. In his motion to remand, Vaughn argued that his case was not about copyright, but about Kelly's alleged theft of his uncopyrightable ideas and the breach of the contract governing the exchange of those ideas. The Court noted that Vaughn's fraud and breach of oral contract claims were close questions, but held that Vaughn's unjust enrichment claim sounded in copyright. The unjust enrichment was based upon fixed works -- Kelly's song and video -- and the unjust enrichment claim is equivalent to allegations of Kelly's infringement of Vaughn and Kelly's alleged joint work. The Court acknowledged that Vaughn was likely to amend his complaint to force remand and gave Vaughn a deadline for filing any such amended complaint.
