Eolas v. Microsoft Trial Date Canceled

Eolas Techs. Inc. v. Microsoft Corp., No. 99 C 626, Min. Order (N.D. Ill. Jul. 30, 2007) (Pallmeyer, J.).

Late yesterday Judge Pallmeyer entered a minute order striking the Eolas v. Microsoft trial scheduled for this week and setting a status conference for August 30.  As I said in my previous post, I will not comment on any news from this case because of my family's connection to it, but feel free to discuss the order in the comments.

And thank you to all of you who were interested in guest blogging the trial.  I will get in touch if the trial is rescheduled.  If anyone else is interested email me.

Tips for Hiring Outside Counsel

The Chicago Tribune had a great article in Monday’s business section discussing how to hire a lawyer. The first suggestion is to get referrals from colleagues. This is a good suggestion, but also a dangerous one. Colleagues’ thoughts are valuable, but anyone who has been on a bad blind date knows that you cannot rely too heavily upon the recommendations of even trusted friends and colleagues when it comes to complex, personal matters. And hiring counsel is both complex and personal. Whether you are the GC of a Fortune 100 or a small business owner, your relationship with outside counsel on a litigation or business deal is a very personal one. You need counsel who can achieve your legal goals and communicate effectively with you, but that is not enough. You also need counsel that is sensitive to your business model and the constraints of your industry, eager to work with you and willing to follow your direction in the matters you give them. And, maybe more important than all of these, you need counsel that is honest with you. When you interview potential counsel – and you should interview any new counsel before hiring them – listen to what they have to say about your case. They should tell you about their plan for your success, but they should also identify problems with the case. If they do not, that should raise a red flag. A lawyer who does not warn you about problems at the outset of a representation, is less likely to do it later. And not learning about problems with your case can be very expensive. For example, not learning that new discovery shows that your claims are not as strong as you originally expected can cause a case, and the related attorneys’ fees, to drag on when you would be settling if you knew the real state of the case. So, in addition to getting referrals and interviewing,  also try to gauge whether you can trust new counsel to give you a dispassionate review of your case and warn you of any problems quickly.

Court Recommends Contempt Because Disclaimer Was Insufficient

Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2071991 (N.D. Ill. Jul. 18, 2007) (Cole, J.).

Judge Cole recommended that the Court grant plaintiff’s motion for contempt. The parties previously settled this trademark case and agreed to a consent judgment which required, among other things, that defendants include “prominent” disclaimers on any advertisements, including webpages, offering plaintiff’s products for sale from the secondary market. Plaintiff filed a motion for contempt arguing that defendant’s website did not include prominent disclaimers. The Court agreed, explaining that prominence could be achieved in several ways, but that “fine print” was not one of them:

Being a relational and contextual concept, “prominence” may be achieved in any number of ways: placement of words, type size, typeface, text color, etc. Prominence, however, is not achieved by the use of fine print disclaimers that are substantially smaller than any other print on a page.

Practice tip: When drafting settlement agreements, or other contracts, watch out for subjective words like “prominence.”  If you expect that you may need to enforce the agreement* later, try to define subjective terms in more objective ways. For example, plaintiff in this case could have required that the disclaimer be at the top of each page in bolded font at least four points larger than the largest print on the page.

* If you expect that the agreement might be enforced against you, subjective terms may be beneficial.

Court Uses Discretion to Reduce Fee Award by Half

Meyer Intellectual Props. Ltd. V. Bodum, Inc., __ F.Supp.2d __, 2007 WL 2110931 (N.D. Ill. Jul. 24, 2007) (Shadur, J.).

Judge Shadur granted plaintiff’s motion for attorneys’ fees and costs related to a motion discovery dispute won by plaintiff, but modified its original award based upon defendant’s explanations (you can read more about this case in the Blog’s archives). The Court explained that the relevant Federal Rule, Fed. R. Civ. P. 37(a)(4)(A), could be paraphrased as “loser pays,” unless the Court finds the losing parties actions or lack of actions were justified or that other circumstances make a fee award unjust. The Court held that defendant’s explanation warranted reducing the original award by 50%. While the Court did not detail the explanation, this case identifies the broad discretion courts have in determining whether to award attorneys’ fees and costs, as well as the size of those awards.

Answer Cannot be Amended to Add a Defense Originally Available

Meyer Intellectual Props. Ltd. V. Bodum, Inc., No. 06 C 6329, Slip Op. (N.D. Ill. Jul. 24, 2007) (Shadur, J.).*

Judge Shadur denied defendant’s motion to amend its answer adding an equitable estoppel defense. The Court noted that amendments were usually “generously” allowed, but defendant provided no justification for not including equitable estoppel in its original answer. Defendant argued that it required investigation to discover its equitable estoppel defense, but the Court noted that the information defendant relied upon was in defendant’s possession. So, there was no reason that defendant could not have conducted its investigation before filing its answer.

 

*  A copy of the Opinion is available here.

Eolas v. Microsoft Trial Starts Next Week: A Call for Guest Bloggers

Eolas Tech. Inc.v. Microsoft Corp., No. 99 C 626 (N.D. Ill.) (Pallmeyer, J.).

The second Eolas v. Microsoft trial starts Monday, July 30.  The first trial, held before Judge Zagel, was about as close to a media frenzy as patent cases get.  I would love to live blog some or all of the trial.  But I cannot do it because my wife, Laura Donoghue, is a member of Microsoft's trial team.  However, if one of the Blog's readers wants to guest blog about the trial, send me an email and we can work something out.  If I do not get a guest blogger for the trial, I will post links to news coverage of the case without any commentary, for obvious reasons.

NFL is Single Entity for Sherman Act Purposes

Am. Needle, Inc. v. New Orleans Louisiana Saints, __ F. Supp.2d __, 2007 WL 2042764 (N.D. Ill. Jul. 11, 2007) (Moran, J.).

Judge Moran granted defendants, the NFL, NFL Properties and each of the thirty two teams (collectively the “NFL”) as well as Reebok International, Ltd. (“Reebok”), summary judgment on plaintiff’s Sherman Act antitrust claims, finding that the NFL acts through NFL Properties as a single entity for IP licensing purposes. For more than twenty years, NFL Properties licensed plaintiff to use various trademarks on its headwear. Plaintiff filed this suit after NFL Properties entered an exclusive license with Reebok, ending plaintiff’s license rights. Plaintiff argued that the NFL teams collectively, as well as in concert with Reebok, violated the antitrust laws by acting together through NFL Properties to license their collective intellectual property rights exclusively to Reebok (plaintiff argued that the NFL did not violate antitrust laws when it licensed to numerous parties, including plaintiff, through NFL Properties). But the Court held that licensing coordination between the NFL and its teams was equivalent to coordination between a corporation and its wholly-owned subsidiary. Because the Supreme Court treats corporations and their wholly-owned subsidiaries as single entities, there could be no conspiracy and no antitrust violation.

Read the Chicago IP Litigation Blog from the Dirksen Building

The Northern District and the City of Chicago are working together to provide free wireless access in the Northern District’s Dirksen Federal Courthouse. The wireless connection is not available in any of the courtrooms (although it could be very useful during trials or hearings to have an internet connection), but it is available free of charge in the lobby and the second floor cafeteria. So, next time you arrive early for a hearing, take a few minutes to catch the Blog’s latest post.

Can Patent Reform Cross the Finish Line?

This week the House Judiciary Committee sent its version of the Patent Reform Act of 2007 to the full body for a vote.  The damages provisions that Federal Circuit Chief Judge Michel publicly spoke against remained in the House bill, but the controversial post-grant review process was removed completely, instead of being limited as many interested parties are suggesting.  The Senate continues to markup its version of the Patent Reform Act, but so far has tightened venue requirements and is debating the damages provisions.  The Patent Reform Act feels like a long breakaway in the Tour de France.*  When a group of riders is leading the peloton (the large group consisting of most of the riders in the race) they each want to win the day's race, but in order to do that they must work together until the last 200-500 meters of what may be a 200 km ride.  If they stop cooperating before the last several hundred meters, they become disorganized, slow down and get swallowed by the peloton.  They are generally exhausted from their efforts in the breakaway and have no chance of winning once they rejoin the peloton -- all of their individual efforts are thrown away because they stopped cooperating with their competitors too early.  Cooperating with competitors is difficult and counter-intuitive, but is often the only way to achieve individual success.  The Patent Reform Act is just such an effort, but it looks like the interested parties may not win this race.

You can read more about Congress's deliberations at:

 

* Forgive the analogy, but I love the Tour and today is the first individual time trial of this year's race.  Go Levi, Alberto & the rest of the Discovery Channel team!

Northern District of Illinois Court Historical Association

The Blog previously discussed Judge Pallmeyer's letter seeking information about the Northern District's history on behalf of the Northern District's Historical Association.  The Historical Association has now taken the next step, developing a website that includes lots of interesting information.  The site includes a history of Northern District judgeships, including biographies for all current and former judges -- who knew that the first appointee to the Northern District's fourth judgeship, Judge Barnes, was a University of Michigan Law graduate and a basset hound breeder for the last years of his life, including some or all of his last two years on the bench.  If you are interested in joining the Historical Association, this page provides the necessary contact information.

Patents -- Profit or Cost Centers?

Two patent professors, James Bessen and Michael Muerer, have published portions of their upcoming book, Innovation at Risk, online.  The book promises an empirical study showing that the current patent system discourages innovation and suggesting ways to fix the system, presumably to encourage innovation.  The suggested fixes are not fully described online yet, but some of the empirical basis for the problem is and it is generating a fair amount of conversation -- see the New York Times, Wired, Patently-O and Wired GC, for example.  The authors say they have analyzed emperical patent litigation data from 1974 until 1999 (the last for which information was fully available).  Their numbers show that profits/damages from pharmaceutical and chemical patent litigation have generally increased as patent litigation costs have increased and maintained a substantial profit margin -- in 1999, patent litiation resulted in worldwide profits of over $12B (in 1992 USD) with US litigation costs of just over $4B (in 1992 USD).  For all other technology areas, however, patent litigation profits/damages have remained relatively flat while patent litigation costs have increased substantially -- profits have hovered around $2-3B per year (in 1992 USD) while costs have gone from a little more than $2B in 1994 to almost $12B in 1999.

These numbers could be terrifying to a casual reader, and they fit nicely with the current Patent Reform Act efforts in Congress.  But I suspect that much of the increased patent litigation costs come from companies that are bringing questionable cases based upon inflated damages theories or refusing to settle infringement cases against them despite the fact that the facts do not support their case.  One of the most important skills in patent litigation is self-reflection.  You have to be able to take a step back and review your case with a disinterested eye to truly determine your strengths and weaknesses.  An outside counsel who has the ability and the courage to do that for a company is an invaluable asset, who will likely save you far more than he or she will ever cost the company in legal fees.

Abbott & Andrx Settle Biaxin Litigation

Abbott Laboratories and Andrx Pharmaceuticals have settled their Northern District patent litigation over Andrx's efforts to sell a generic version of Abbott's extended release antibiotic Biaxin XL, Case No.05 C 1490 (discussed at length in the Blog's archives).  According to IP Law360 (subscription required), the settlement includes an agreement that Andrx will not market a generic version of Biaxin XL for, presumably, the remainder of Abbott's patent term.

Ownership is a Copyright Prerequisite

DJ Photog. v. Wibert, Inc., No. 06 C 2215, Slip Op. (N.D. Ill. Jul. 11, 2007) (Zagel, J.).*

Judge Zagel dismissed plaintiff's copyright infringement claim, held that its quantum meruit claim was preempted by the Copyright Act and, therefore, entered judgment in the case in favor of defendants.  Plaintiff DJ Photography argued that defendants infringed its copyrights in pictures of a burial vault and mourners at a graveside service.  But in their Local Rule 56.1 Statement of Undisputed Facts, defendants stated that the copyrights asserted were both registered by an individual, Donald Johnson, not DJ Photography.  Because DJ Photography did not dispute that Johnson owned the copyrights, the Court held that DJ Photography could not prove ownership of the copyrights and, because it did not own the copyrights, DJ Photography lacked standing to bring the suit.  The Court also held that the quantum meruit claim was preempted by the Copyright Act.

* Because the opinion has not been published electronically, you can read a copy of it here.

Strike Two for Plaintiff's "Stealth" Mark, But a Home Run for Readable Opinions

Central Mfg., Inc. v. George Brett, __ F.3d __, Slip Op. (7th Cir. Jul. 9, 2007).

The Seventh Circuit upheld Judge Coar's cancellation of plaintiff's "Stealth" mark for use with baseball bats.  The result is not that surprising in light of the fact that plaintiff had not been able to provide any evidence that it used the Stealth mark for baseball bats prior to defendant, and Hall of Famer, George Brett's and his company Brett Brothers Sports International's first sale of a Stealth bat in 1999 (plaintiff filed a mark application for Stealth in connection with baseball bats in 2001).  Additionally, according to the Seventh Circuit plaintiff is controlled by Leo Stoller who is, according to the Seventh Circuit, a "hyperactive trademark litigator."  The Seventh Circuit also discussed the frivolous nature of most of Stoller's cases:

In fact, Stoller's cases have generally proven so frivolous and wasteful of court resources that since this appeal was filed the Northern District of Illinois has enjoined him or any of his companies from filing any new civil action in the district's courts without first obtaining the court's permission.

 Stoller has appealed the Executive Committee's injunction, and the Executive Committee has already denied Stoller's first request to file a new case in the Northern District.

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Patent Reform Act: Senators Limit Venue

Last Thursday, the Senate Judiciary Committee began marking up the Patent Reform Act.  At the beginning of the Committee's public markup session, Committee Chairman Leahy (D-Vt.) stated that he wanted to finish the markup Thursday, vote on the bill and send it to the full Senate.  The Committee, however, only got through two amendments, one of which was a "manager's amendment" which just includes technical/clerical revisions."  And Leahy, prodded by several Republican senators and Dianne Feinstein (D-Ca.), agreed to provide the Committee additional time to consider the Act further.  The one substantive amendment (which you can read here) further limited venue in patent cases.  The amendment was strongly worded stating that in any patent case:

. . . a party shall not manufacture venue by assignment, incorporation, or otherwise to invoke the venue of a specific district court.

This preamble language is very interesting.  It has the potential to lead to a big increase in initial motion practice in which defendants argue that whatever entity sues them was created to create venue in the jurisdiction.  But this problem is seemingly resolved because in almost all cases plaintiff's principal place of business or state of incorporation will not create venue, it will almost always be based upon defendant's footprint and infringing activities.  The amendment goes on to specify that venue would be proper:

    1. where defendant has a principal place of business or is incorporated;
    2. where defendant has committed "substantial" infringing acts and maintains a physical facility constituting a "substantial portion" of defendant's operations; or
    3. where plaintiff resides, if plaintiff is a university or an individual inventor.

The 271 Patent Blog also has a good post on the markup.

The Case for Patent Reform

Intel's General Counsel, Bruce Sewell, had an interesting commentary piece in yesterday's Wall Street JournalPatent Nonsense (because it is from the Op/Ed pages, I do not think a subscription is required).  On the day that the Senate Judiciary Committee renewed its consideration of the Patent Reform Act of 2007, Sewell makes many of the arguments that led to the changes proposed by the Act.  Sewell argues that the number of patent law suits is increasing, damages awards are rising (he states that there have been at least four settlements or judgments in excess of $500M in the last five years) and the more and more "questionable, loosely defined patents" are being issued.  Sewell's remedies to these problems include:

  • limiting damages to the patented component not the entire product (i.e., a patentee's damages should be based on its patented engine component, not the entire car);
  • strong post-grant PTO review;
  • strengthening of venue requirements so that suits must be brought in a forum with an actual connection to the alleged infringement; and
  • requiring a showing of actual bad faith for a willfulness finding.

Sewell also argues that the allegedly increasing number of "questionable, loosely defined patents" chills research and development in technology areas covered by the patents.  But I am not sure this argument is correct.  In my experience, a patentee, assignee or exclusive licensee with a broad patent tends to assert its patent when the technology is developed and a large chunk of the research investments have already been made.  That is the point when the alleged infringers have developed a market and, therefore, potential damages.  So, while I am all in favor of careful examination by the PTO (as are most people involved in this debate, I think), I am not sure that the problem with the broad, questionable patents is that they chill research and development investment.

Post-Appeal Addition of Allegation Does Not Warrant Mandamus

In re AD-II Eng’ing., Inc., Misc. Docket No. 07-852, Slip Op. (Fed. Cir. May 29, 2007).*

The Federal Circuit denied defendant AD-II Engineering’s (“AD-II”) writ of mandamus seeking to prevent Judge Gettleman from considering plaintiff SRAM Corp.’s (“SRAM”) motion to amend its complaint to add infringement allegations on a new claim and related summary judgment motion as to infringement of that claim. SRAM sued AD-II alleging infringement of SRAM’s patent for a system of shifting bicycle gears that prevents overshifting. The Northern District Court previously construed the claims of the claim initially asserted by SRAM, found the patent claim valid and entered judgment in favor of SRAM and an injunction against AD-II, a subset of these decisions are set out at SRAM Corp. v. AD-II Eng’ing, Inc., 326 F. Supp.2d 903 (N.D. Ill. 2005). On AD-II’s appeal of that decision, the Federal Circuit overturned the claim construction and, therefore, vacated the final judgments on validity and infringement – SRAM Corp., 465 F.3d 1351 (Fed. Cir. 2006). On remand, SRAM sought to amend its complaint asserting an additional claim and moved for summary judgment of infringement of the claim to be added. At a hearing on SRAM’s motions, the Northern District Court noted that there were problems with SRAM’s late effort to amend its complaint and add infringement allegations, but set a briefing schedule for SRAM’s summary judgment motion. AD-II then filed this writ of mandamus. The Federal Circuit refused to prevent briefing of SRAM’s summary judgment motion, reasoning that AD-II’s writ was premature because the Northern District Court had not yet decided whether to allow SRAM to assert its additional claim.  Continue Reading...

Pending Motion to Transfer Preserves DJ Complaint

Steiner Indus., Inc. v. Auburn Mfg., Inc., No. 07 C 668, 2007 WL 1834176 (N.D. Ill. Jun. 22, 2007) (Darrah, J.).

Judge Darrah denied declaratory judgment defendant Auburn Manufacturing’s (“Auburn”) motion to dismiss. Auburn argued that plaintiff’s (collectively “DJ Plaintiffs”) suit improperly anticipated Auburn’s complaint which alleged Lanham Act claims of false designation and false advertising, as well as related state law claims. Auburn filed its complaint in the District of Maine within a week of DJ Plaintiffs’ filing. Auburn alleged that DJ Plaintiffs’ use of “FM Approved” and “Made in the USA” in their catalogs and website advertising in connection with their welding blankets constituted false designation and false advertising. DJ Plaintiffs were aware of the allegations before they filed suit because, as part of an ongoing negotiation with plaintiffs, Auburn had provided plaintiffs a copy of its complaint. The Court acknowledged its discretion to dismiss the case in favor of Auburn’s later filed complaint, but did not dismiss the case. The two cases mirrored each other, so either could resolve the parties’ dispute. And because both cases were filed in federal courts, there was no concern that the DJ case would cause friction between federal and state courts. The deciding issue was whether the Maine Court could offer a full remedy. DJ Plaintiffs had a motion to transfer or dismiss pending before the Maine Court. In that motion, DJ Plaintiffs argued that the Maine Court lacked personal jurisdiction over two of the three DJ Plaintiffs – Steiner Industries, Inc. and Lab Safety Supply, Inc. DJ Plaintiffs, therefore, asked the Maine Court to transfer the case to the Northern District of Illinois or to dismiss the case.  The Court held that if the Maine Court transferred the case to the Northern District or dismissed Steiner and Lab Safety for lack of jurisdiction, those factors would weigh in favor of maintaining the DJ action. If, however, the Maine Court denied DJ Plaintiffs’ motion and held that it had jurisdiction over all DJ Plaintiffs, then the Main Court could more effectively decide the dispute than the Northern District. The Court, therefore, denied the motion to dismiss with leave to refile if the Maine Court finds it has jurisdiction over all DJ Plaintiffs and does not transfer the case to the Northern District.

Interlocutory Motions for Reconsideration are Brought Pursuant to FRCP 54(b)

Varitalk, LLC v. Lahoti, No. 07 C 1771, 2007 WL 1576127 (N.D. Ill. May 30, 2007) (Conlon, J.).

Judge Conlon denied defendant Dave Lahoti’s (“Lahoti”) Fed. R. Civ. P. 60(b) motion for reconsideration of the Court’s previous opinion denying Lahoti’s motion to dismiss for lack of personal jurisdiction, improper venue and forum non conveniens (you can read more about the previous decision in the Blog’s archives). Lahoti, a California resident, operated a website from California using the domain name www.veritalk.com. Lahoti’s site was an internet portal which allowed visitors to his site to click through links to buy various products or services. The Court held that Lahoti’s website fell in the gray area between active websites (which create specific jurisdiction) and passive websites (which do not create specific jurisdiction). But the portal’s interactive and commercial nature combined with plaintiff Varitalk’s evidence that some consumers were confused and erroneously visited Lahoti’s website created personal jurisdiction. Lahoti argued for reconsideration because he contends that his website did not link to businesses located in or doing business in Illinois, and that a third party puts the content on his website. The Court denied both of these arguments, explaining that Varitalk had put presented evidence that Lahoti’s website included links to business with substantial Illinois operations and that whether Lahoti or an agent of his placed the content on his website did not change the Court’s analysis. But the Court’s procedural analysis may be the most useful part of this case for litigators. The Court notes that Lahoti styled his motion as a Fed. R. Civ. P. 60(b) motion for reconsideration, but that it is actually a Fed. R. Civ. P. 54(b) motion. Rule 60(b) is for reconsideration of final judgments, where as Rule 54(b) is for interlocutory decisions. A denial of a motion to dismiss is necessarily interlocutory.

Late Requested 56(f) Cannot Save Summary Judgment

Hickory Farms, Inc. v. Snackmasters, Inc., No. 05 C 4541, 2007 WL 1576124 (N.D. Ill. May 29, 2007) (Kennelly, J.).

Judge Kennelly denied plaintiff’s motion for reconsideration of the Court’s decision that plaintiff’s "Beef Stick" and "Turkey Stick" marks were generic and the Court’s cancellation of the Beef Stick mark (you can read more about that opinion in the Blog’s archives). The Court denied plaintiff’s argument that it should be given more time, pursuant to Fed. R. Civ. P. 56(f) to conduct a survey to show that the marks are not generic. But the Court reasoned that plaintiff was free to conduct such a survey in the fourteen months of discovery leading up to defendant’s summary judgment motion. Furthermore, in its responsive briefing plaintiff specifically stated that plaintiff would “not seek to delay the briefing of this matter with its own survey at this time.” Instead, plaintiff suggested that it would conduct a survey if the Court denied defendant’s summary judgment motion. The Court held that after these statements, plaintiff’s current request to perform a survey was almost “frivolous.”

Continue Reading...

Juries Get it Right -- 80% of the Time

Northwestern University statistics professor Bruce Spencer concluded in a recent paper that juries  provide accurate results 80% of the time. The paper, "Estimating the Accuracy of Jury Verdicts” was recently released online prior to a planned publication in this month’s issue of the Journal of Empirical Legal Studies (if you do not want to wade through Spencer’s statistical analysis and discussions, Northwestern created a very detailed press release that is a good start). Spencer considers two studies of 271 criminal juries in which the presiding judge filled out a survey explaining what the judge believed the correct verdict to be prior to hearing the jury’s verdict. Approximately the juries agreed with the presiding judges approximately 80% of the time. Spencer is careful to point out that a jury that disagrees with a presiding judge is not necessarily wrong. But he explains that jury-judge agreement is a reliable indicator of jury accuracy. Spencer also argues that his study is based upon a relatively limited data set, and that his study should not be a basis for broad conclusions so much as additional research.

Continue Reading...

Pre-KSR Validity Verdict Upheld Under KSR Standard

Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. Jun. 8, 2007).*

Judge Rosenbaum (a visiting judge, who is the Chief Judge for the District of Minnesota) denied defendants’ Fed. R. Civ. P. 60(b) for relief from the Court’s judgment.  The Court held a trial in October 2006 resulting in a jury verdict that defendants’ insufflator (a device that blows a powder, gas or vapor into a body cavity) infringed plaintiff’s patent (you can read more about the case in the Blog’s archives). In their motion, defendants argued that the Supreme Court’s April 2007 obviousness decision, KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 127 S.Ct. 1727 (2007), dramatically changed obviousness law and conflicted with the jury instructions which “nullif[ied] the jury verdict.” Defendants moved the Court to invalidate two claims of the patent in suit or to order a new trial on obviousness. But the Court held that even under the KSR standard, the jury’s verdict was fully supported by evidence at trial. Because a corrected instruction would not have changed the result, the erroneous instruction was harmless.

*You can read the opinion here.

Happy Fourth of July

On most holidays I post a holiday-related patent, but the Fourth of July seems different.  Perhaps it is because the Fourth marks the birth of our legal system (or at least its infancy) and, therefore, the Fourth is tied closely to our profession.  Or, maybe it is because I have been reading Ron Chernow's excellent biography Alexander Hamilton and thinking about the founding of our country.  So, instead of a patent, I am posting the text of the Declaration of Independence.  It certainly has flaws -- in some cases it has taken us a century or two to put the freedoms in to practice.  But it is a beautifully written document that sketches out an ideal for self government.  Happy Fourth of July. 

IN CONGRESS, JULY 4, 1776
The unanimous Declaration of the thirteen united States of America

When in the Course of human events it becomes necessary for one people to dissolve the political bands which have connected them with another and to assume among the powers of the earth, the separate and equal station to which the Laws of Nature and of Nature's God entitle them, a decent respect to the opinions of mankind requires that they should declare the causes which impel them to the separation.

We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness. — That to secure these rights, Governments are instituted among Men, deriving their just powers from the consent of the governed, — That whenever any Form of Government becomes destructive of these ends, it is the Right of the People to alter or to abolish it, and to institute new Government, laying its foundation on such principles and organizing its powers in such form, as to them shall seem most likely to effect their Safety and Happiness. Prudence, indeed, will dictate that Governments long established should not be changed for light and transient causes; and accordingly all experience hath shewn that mankind are more disposed to suffer, while evils are sufferable than to right themselves by abolishing the forms to which they are accustomed. But when a long train of abuses and usurpations, pursuing invariably the same Object evinces a design to reduce them under absolute Despotism, it is their right, it is their duty, to throw off such Government, and to provide new Guards for their future security. — Such has been the patient sufferance of these Colonies; and such is now the necessity which constrains them to alter their former Systems of Government. The history of the present King of Great Britain is a history of repeated injuries and usurpations, all having in direct object the establishment of an absolute Tyranny over these States. To prove this, let Facts be submitted to a candid world.

He has refused his Assent to Laws, the most wholesome and necessary for the public good.

He has forbidden his Governors to pass Laws of immediate and pressing importance, unless suspended in their operation till his Assent should be obtained; and when so suspended, he has utterly neglected to attend to them.

He has refused to pass other Laws for the accommodation of large districts of people, unless those people would relinquish the right of Representation in the Legislature, a right inestimable to them and formidable to tyrants only.

He has called together legislative bodies at places unusual, uncomfortable, and distant from the depository of their Public Records, for the sole purpose of fatiguing them into compliance with his measures.

He has dissolved Representative Houses repeatedly, for opposing with manly firmness his invasions on the rights of the people.

He has refused for a long time, after such dissolutions, to cause others to be elected, whereby the Legislative Powers, incapable of Annihilation, have returned to the People at large for their exercise; the State remaining in the mean time exposed to all the dangers of invasion from without, and convulsions within.

He has endeavoured to prevent the population of these States; for that purpose obstructing the Laws for Naturalization of Foreigners; refusing to pass others to encourage their migrations hither, and raising the conditions of new Appropriations of Lands.

He has obstructed the Administration of Justice by refusing his Assent to Laws for establishing Judiciary Powers.

He has made Judges dependent on his Will alone for the tenure of their offices, and the amount and payment of their salaries.

He has erected a multitude of New Offices, and sent hither swarms of Officers to harass our people and eat out their substance.

He has kept among us, in times of peace, Standing Armies without the Consent of our legislatures.

He has affected to render the Military independent of and superior to the Civil Power.

He has combined with others to subject us to a jurisdiction foreign to our constitution, and unacknowledged by our laws; giving his Assent to their Acts of pretended Legislation:

For quartering large bodies of armed troops among us:

For protecting them, by a mock Trial from punishment for any Murders which they should commit on the Inhabitants of these States:

For cutting off our Trade with all parts of the world:

For imposing Taxes on us without our Consent:

For depriving us in many cases, of the benefit of Trial by Jury:

For transporting us beyond Seas to be tried for pretended offences:

For abolishing the free System of English Laws in a neighbouring Province, establishing therein an Arbitrary government, and enlarging its Boundaries so as to render it at once an example and fit instrument for introducing the same absolute rule into these Colonies

For taking away our Charters, abolishing our most valuable Laws and altering fundamentally the Forms of our Governments:

For suspending our own Legislatures, and declaring themselves invested with power to legislate for us in all cases whatsoever.

He has abdicated Government here, by declaring us out of his Protection and waging War against us.

He has plundered our seas, ravaged our coasts, burnt our towns, and destroyed the lives of our people.

He is at this time transporting large Armies of foreign Mercenaries to compleat the works of death, desolation, and tyranny, already begun with circumstances of Cruelty & Perfidy scarcely paralleled in the most barbarous ages, and totally unworthy the Head of a civilized nation.

He has constrained our fellow Citizens taken Captive on the high Seas to bear Arms against their Country, to become the executioners of their friends and Brethren, or to fall themselves by their Hands.

He has excited domestic insurrections amongst us, and has endeavoured to bring on the inhabitants of our frontiers, the merciless Indian Savages whose known rule of warfare, is an undistinguished destruction of all ages, sexes and conditions.

In every stage of these Oppressions We have Petitioned for Redress in the most humble terms: Our repeated Petitions have been answered only by repeated injury. A Prince, whose character is thus marked by every act which may define a Tyrant, is unfit to be the ruler of a free people.

Nor have We been wanting in attentions to our British brethren. We have warned them from time to time of attempts by their legislature to extend an unwarrantable jurisdiction over us. We have reminded them of the circumstances of our emigration and settlement here. We have appealed to their native justice and magnanimity, and we have conjured them by the ties of our common kindred to disavow these usurpations, which would inevitably interrupt our connections and correspondence. They too have been deaf to the voice of justice and of consanguinity. We must, therefore, acquiesce in the necessity, which denounces our Separation, and hold them, as we hold the rest of mankind, Enemies in War, in Peace Friends.

We, therefore, the Representatives of the united States of America, in General Congress, Assembled, appealing to the Supreme Judge of the world for the rectitude of our intentions, do, in the Name, and by Authority of the good People of these Colonies, solemnly publish and declare, That these united Colonies are, and of Right ought to be Free and Independent States, that they are Absolved from all Allegiance to the British Crown, and that all political connection between them and the State of Great Britain, is and ought to be totally dissolved; and that as Free and Independent States, they have full Power to levy War, conclude Peace contract Alliances, establish Commerce, and to do all other Acts and Things which Independent States may of right do. — And for the support of this Declaration, with a firm reliance on the protection of Divine Providence, we mutually pledge to each other our Lives, our Fortunes and our sacred Honor.

Post-Verdict Infringing Sales Exceptional, But Not Willful

Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. May 29, 2007).*

Judge Rosenbaum (a visiting judge, who is the Chief Judge for the District of Minnesota) granted in part plaintiff’s Fed. R. Civ. P. 59(e) and 60(a) motion to alter or amend the judgment, altering the judgment to include all post-verdict sales of infringing product. The court held a trial in October 2006 resulting in a jury verdict that defendants’ insufflator (a device that blows a powder, gas or vapor into a body cavity) infringed plaintiff’s patent, but that the infringement was not willful. The Court entered judgment in February 2007. Shortly after the judgment, defendant Northgate Technologies (“Northgate”) informed plaintiff that after the verdict, but before the judgment was entered, Northgate sold its remaining inventory. Plaintiff sought damages for the post-verdict sales and argued that the Court should find the post-verdict sales willful and declare the case exceptional. The Court held that the post-verdict sales infringed the patent, but that they were not willful because Northgate received an oral opinion of counsel prior to shipping any post-verdict product. The oral opinion was based upon three factors: 1) a belief that the jury’s verdict was unreasonable; 2) the fact that the Court had not yet entered a permanent injunction; and 3) Northgate’s post-trial arguments that were pending before the Court. The Court noted that the second factor could not support Northgate’s decision. But the remaining justifications were not “so flawed as to alert Northgate to reject [the oral opinion] as ‘obviously bad legal advice.” Continue Reading...

Delayed Filing Leads to Half-Baked Motion to Compel

Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 1673563 (N.D. Ill. Jun. 8, 2007) (Cole, J.).

Judge Cole denied plaintiff Fast Food Gourmet, Inc.'s ("FFGI") motion to compel responses to interrogatories, in this trade secret case involving frozen pizzas (you can read more about this case in the Blog's archives).  FFGI served defendants with an interrogatory seeking information regarding which brands of frozen pizza (aside from the accused DiGiorno Thin Crispy Crust Pizza) defendants baked in the ovens which were allegedly part of FFGI's trade secret crust-making process for stone hearth oven, thin crust, frozen pizzas.  Defendants objected to the interrogatory, which led to a meet and confer between the parties on February 15, 2007, two weeks before the close of fact discovery on March 1.  The meet and confer did not resolve the dispute.  On April 1, FFGI submitted its expert reports and then, six weeks after the close of discovery, FFGI moved to compel responses to the interrogatories.  But FFGI failed to notice the motion until more than one month later on May 18.  The Court noted that, while it had discretion to grant the motion, motions to compel filed after the close of fact discovery are generally held to be untimely unless accompanied by a "reasonable and persuasive justification" for the delay.  FFGI, however, provided no justification for its delay. 

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