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

My recent story about Ebert's use of his "Two Thumbs Up" has been receiving a lot of attention (and I even scooped the Sun-Times):

• Likelihood of Confusion -- Ron Coleman agrees with E. Leonard Rubin, interviewed in the Chicago Tribune today, who says that the written "Two Thumbs Up" mark is pretty strong.
  
• Robert Feder of the Chicago Sun-Times -- Feder says that the "Two Thumbs Up" mark is "the most powerful and influential symbol in movie marketing."

The fact that the Patent Reform Act has stalled in Congress, which I discussed earlier this week, has been picked up by several blogs:

• Maryland IP Law Blog -- Citing my post.
  
• Patently-O -- Dennis Crouch says that the Patent Reform Act is not just stalled, it is dead.
  
• 271 Patent Blog -- Leads with a great Simpsons' quote in saying the Act is on hold.

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Everything Baseball Ltd., LLC v. Team Athletic Goods, Inc., No 05 C 5526, Slip Op. (N.D. Ill. Aug. 16, 2007) (Pallmeyer, J.).

Judge Pallmeyer denied defendant Team Athletic Goods, Inc.’s (“TAG”) Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of standing. The inventors of the patent at issue, for baseball chest protectors, assigned their rights in the patent to Everything Baseball Ltd. (“EB Ltd.”), but the correct corporate name was Everything Baseball Limited, LLC (“EBL LLC”). Plaintiffs argued that because EBL LLC was not the assignee when it filed suit, the Court should dismiss the case. But the Court held that the assignment to EB Ltd. was a clerical error and that the parties’ clear intent was to assign to plaintiff EBL LLC. The Illinois’s records show that while EBL LLC was incorporated, EB Ltd. never existed. Furthermore, some months after TAG identified the error, EBL LLC amended their assignment with the PTO. But the Court did note that the amended assignment could not create standing in this suit. The Federal Circuit case law is clear that where standing does not exist when the suit is filed, it cannot be corrected during the suit. The difference in this case was the Court’s ruling that the intent of the assignment agreement was to assign the patent in suit to EBL LLC, not EB Ltd., which did not exist.

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UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582, Min. Order (N.D. Ill. Aug. 16, 2007) (Lindberg, J.).

Judge Lindberg denied defendants' motion to dismiss plaintiff's state law claims and its claim seeking assignment of defendants' patents to plaintiffs.  The Court held that the claim seeking assignment of defendants patents to plaintiff was an invalidity contention.  Plaintiff claimed that it had invented defendants' patented inventions before defendants.  While plaintiff did not use the correct terms, it met the notice pleading standards.  Additionally, plaintiff's state law trade secret and tortious interference claims were sufficiently related to the patent claims to come within the Court's supplemental jurisdiction.

The Court refused to consider plaintiff's requests for additional discovery  because it was made orally in court and in plaintiff's responsive pleading, but never as a written motion as required by Fed. R. Civ. P. 7(b)(1).

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 20, 2007) (Moran, Sen. J.).*

Judge Moran granted in part plaintiff Trading Technologies’ (“TT”) motion to bifurcate inequitable conduct from the rest of the trial – in another opinion issued on the same day, the Court denied defendant eSpeed’s motion to bifurcate willfulness and damages from the liability phase of the trial. The Court noted that bifurcation is the exception not the rule, but that Fed. R. Civ. P. 42(b) allows the Court to bifurcate trials for convenience, to avoid prejudice or when bifurcation benefits expediency and economy. The Court also explained that bifurcating inequitable conduct does not violate the Seventh Amendment, citing Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209 (Fed. Cir. 1987). 

TT sought an inequitable conduct bench trial after the conclusion of the jury trial. eSpeed asked the Court to try inequitable conduct before the jury and have the jury issue an advisory verdict pursuant to Fed. R. Civ. P. 39(c). The Court observed that there was substantial case law supporting both TT’s and eSpeed’s positions, showing the discretion the Court has on the issue. But the Court followed the reasoning of Judge Norgle in THK Am., Inc. v. NSK, Ltd., 1996 WL 33398071 (N.D. Ill. 1996). Judge Norgle bifurcated inequitable conduct, but heard the evidence of inequitable conduct each day after the jury was dismissed as the inequitable conduct evidence came up. The Court reasoned that this form of bifurcation prevented the jury from hearing potentially prejudicial evidence, while allowing witnesses not to have to return for additional days of testimony.

Continue Reading...

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The Wall Street Journal reported yesterday (subscription required) that patent reform is stalled. I blogged last month – Can Patent Reform Cross the Finish Line? – that it appeared that the patent reform efforts in this Congress were in trouble because the reform proponents were not maintaining a unified position. The WSJ’s article suggests that my analysis was correct, although the WSJ focuses on a new critic of the reform legislation – the AFL-CIO. The AFL-CIO argues that the Patent Reform Act of 2007* will cost America, and specifically the AFL-CIO’s members, high tech manufacturing and production jobs. The union is concerned that patent reform would weaken the U.S. patent system, thereby causing high tech manufacturers to send their manufacturing and production work overseas where they will receive relatively stronger patent protection. It is an interesting view on the reform issue that, judging from other blog posts, most people in the IP community had not considered: FileWrapper.

* For more analysis of the Patent Reform Act of 2007 check out the Blog’s archives or the Maryland IP Law Blog’s excellent five part series on the Act: 1, 2, 3, 4 and 5.

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Tillman v. New Line Cinema, No. 05 C 910, 2007 WL 2323302 (N.D. Ill. Aug. 9, 2007) (Kennelly, J.)

Judge Kennelly denied plaintiff’s motion for leave to file a second amended complaint, despite noting that Fed. R. Civ. P. 15A) requires that leave to amend be given “freely.” Plaintiff alleged that defendants collectively had access to his screen play “Kharisma Heart of Gold” about his experience with a sick child requiring heart surgery, stole it, produced it and released it as the movie “John Q.” Plaintiff filed his first complaint pro se alleging copyright infringement. Plaintiff then hired counsel and filed an amended complaint alleging copyright infringement and numerous other tort claims arising out of the alleged theft of plaintiff’s screen play. Various defendants filed motions to dismiss the amended complaint for lack of personal jurisdiction pursuant to Fed. R. Civ. P. 12(b)(2) and for failure to state a claim regarding the non-copyright claims pursuant to Fed. R. Civ. P. 12(b)(6). Plaintiff did not respond to that complaint, but filed a motion for leave to file a second amended complaint. The Court* granted the motion to dismiss the individual defendants for lack of personal jurisdiction and the non-copyright claims against the remaining defendants. The Court also denied plaintiff leave to file its second amended complaint because it was futile. Plaintiff, again proceeding pro se, then sought leave to file a new second amended complaint. But the Court held that plaintiff’s current second amended complaint had no substantive changes from plaintiff’s original second amended complaint. The second amended complaint, therefore, was still futile. Additionally, the second amended complaint attempted to reassert claims against the individual defendants, who had been dismissed from the suit for lack of personal jurisdiction. Because the Court lacked personal jurisdiction, plaintiff could not draw the individual defendants back into the suit. 

* The case was originally before Judge Norberg, who decided the original motions to dismiss and motion for leave to file the second amended complaint, and has since been transferred to Judge Kennelly who heard this motion.

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Blawg Review #123 was published today by the Texas Appellate Law Blog.  For those who do not know, Blawg Review is a review of each week's law-related blog posts hosted by a different legal blog each week.  This week's review is written in the style of an appellate opinion.* The review highlights yesterday's Blog post reporting that Roger Ebert has withdrawn Disney's right to use Ebert's thumbs up/thumbs down trademark until negotiations regarding Ebert's return to his movie review program are resolved.  I will be hosting the Blawg Review on November 5th.

*  The Blawg Review opinion did not reach the issue of whether "blawg" or "law blog" is the correct term for legal blogs.  This is, perhaps surprisingly, a hotly contested issue (and here and here).  I side with Kevin O'Keefe at LexBlog.  Legal blog or law blog is sufficiently descriptive and the least confusing title.  "Blawg" is too cute and confuses people.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 20, 2007) (Moran, Sen. J.).*

Judge Moran denied defendant eSpeed, Inc.'s (“eSpeed”) renewed motion to bifurcate willfulness and damages from the liability phase of the trial.  The Court denied eSpeed's original bifurcation motion.  The Court noted that since the initial motion, the Court had issued claim constructions largely favorable to eSpeed and summary judgment of noninfringement as to the majority of eSpeed's accused products.  But the Court had also denied eSpeed's motions for summary judgment of invalidity, leaving invalidity to be resolved by the jury.  The Court reasoned that the Real v. Bunn-O-Matic, 195 F.R.D. 618 (N.D. Ill. 2000) factors weighed in favor of not bifurcating the trial or were neutral.  The Court's summary judgment of noninfringement rulings severely limited the damages case and "significantly simplified" the infringement issues. 

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On Saturday, the Chicago Tribune reported that Roger Ebert has withdrawn the right to use his trademarked (co-owned with Siskel's estate) thumbs-up/thumbs-down rating system.  Ebert is negotiating a new contract with Disney, the show's producer, after a one year hiatus during which he successfully battled cancer.  Ebert allowed the show and his co-host Richard Roeper to continue using the thumb ratings during what he called "good faith negotiations," but recently changed his mind when he felt negotiations were not progressing sufficiently.  So far, two episodes have been taped without thumb ratings. 

It will be interesting to see whether the thumb ratings are a powerful enough mark to get Ebert the contract he is looking for.  My feeling is that we have moved from the era of thumbs to the era of more comprehensive ratings like Rotten Tomatoes.  It is much easier and more reliable to go to an internet site available whenever you want it (for example, right after you decide to go to a movie) that aggregates opinions of critics around the country, than to wait for a television program and a couple of thumbs.  But the thumbs are icons.

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LexBlog (the firm that designed this Blog) has just done a very interesting analysis of blogging among the AmLaw 200 firms.  LexBlog found that 39 of the AmLaw 200 firms are blogging.  The firms (or their lawyers) have 74 blog.  Of those 74, 56 are firm branded (like this one) and 18 are not, suggesting that the blog may not be formally approved by the firm.  And nearly half of the 74 blogs were designed by LexBlog -- an impressive testimony.  I predict that by this time next year there will be 125-150 AmLaw 200 blogs and that LexBlog will continue to have created at least half of them.

After the jump, there are links to and descriptions of the other intellectual property or technology-related blogs from the AmLaw 200:*

 

Continue Reading...

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 17, 2007) (Moran, Sen. J.).*

Judge Moran denied plaintiff Trading Technologies’ (“TT”) motion to compel an additional Fed. R. Civ. P. 30(b)(6) witness. TT noticed a 30(b)(6) deposition of defendant eSpeed, Inc. (“eSpeed”) identifying twenty four topics, including someone with knowledge of the names of customers or potential customers of eSpeed’s accused products. eSpeed provided a witness on the topic, but he was only able to identify eSpeed’s customers and potential customers, he had no knowledge regarding any demonstrations to those customers or use of the accused products by those customers. TT, therefore, served a second notice, after the close of fact discovery, seeking a witness to testify regarding any demonstrations to or use by eSpeed customers. eSpeed refused to produce a witness in response to the second notice. The Court denied TT’s motion to compel because the original deposition sought only the identity of the customers, so the witness did not need to have any knowledge regarding demonstrations to or use by those customers. 

What is most interesting about this opinion, however, is the Court’s statements regarding the fact discovery history of the case. The Court shows some frustration with what appears to have been a very protracted and contentious discovery process:

Both parties in this case have been pushing discovery up to and through the close of discovery, which has been extended time and time again . . . . Enough is enough.

Trial is set to start in this case the week of September 10. Between now and then expect to see several more opinions in this case and its related cases. Additionally, I have some other obligations that week, but am planning to blog some of the trial. Stay tuned.

*You can download this opinion here and you can read much more about this case and related cases in the Blog's archives.

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Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 2156665 (N.D. Ill. Jul. 26, 2007) (Cole, M.J.)

Judge Cole granted in part defendant Little Lady Foods’ (“LLF”) Fed. R. Civ. P. 37 motion to bar evidence of allegedly late–identified trade secrets. Plaintiff Fast Food Gourmet (“FFG”) originally identified four trade secret elements of its process for making thin crust frozen pizza (you can read more about this case in the Blog's archives). FFG’s Vice President of Operations Crause identified four additional elements during his deposition. And FFG later identified two additional elements. LLF argued that FFG should be limited to the first four elements because FFG never updated its interrogatory responses to include the six additional elements. The Court held that the four additional elements disclosed during the deposition had “otherwise been made known” pursuant to Fed. R. Civ. P. 26(e) and, therefore, were not required to be added to FFG’s interrogatory responses. The Court excluded the other two elements. FFG argued that it had identified the elements by identifying documents containing the elements in its interrogatory responses pursuant to Fed. R. Civ. P. 33(d). But the Court held that the documents FFG identified only identified the two elements sporadically, and in connection with elements that were not trade secrets. This, combined with Crause’s testimony that he had identified all of the trade secret elements, made FFG’s Rule 33(d) statements insufficient.

Practice Tip: Rule 33(d) is often seen as a simple escape from answering cumbersome or difficult interrogatories. Of course, it is also often warranted. But when you use Rule 33(d), make sure to identify the correct documents, and make sure the identified documents fully support your position.

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I received an email from the PTO this week asking that I post about a free webcast the PTO is holding this Thursday, August 23 from 12:00 pm - 2:00 pm CT.  The webcast will explain the new continuation and claims rules that become effective November 1st.  The rules were published this morning.  For summaries and explanations of the changes, here is PTO document explaining the highlights  and a specific identification of each amendment.  You can register for the webcast here.  The PTO's press release is reprinted below: Continue Reading...

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Sitrick v. Freehand Sys., Inc., No. 02 C 1568, 2007 WL 2298362 (N.D. Ill. Aug. 3, 2007) (Guzman, J.).

Judge Guzman denied plaintiff’s motion to amend the Court’s final order dismissing plaintiff’s patent infringement case with prejudice pursuant to Fed. R. Civ. P. 41(a)(1). Plaintiff sought to amend the order to include the terms of the parties’ settlement agreement because in Lynch v. SamataMason, Inc., 279 F.3d 487, 489 (7th Cir. 2006), the Seventh Circuit held that a court only maintains ancillary jurisdiction to enforce settlement agreements if the dismissal order contains (not just by incorporation) the terms of the agreement. But the Court denied the motion for two reasons. First, the Court’s original order was a nullity because it was issued after the parties filed their unconditional stipulation of dismissal pursuant to Fed. R. Civ. P. 41(a)(1) which immediately ended the Court’s jurisdiction. Second, because the amendment was not clerical, sought within one year of entry of the order or otherwise justified, Fed. R. Civ. P. 60 prevented the Court from amending the order.

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Gencor Pacific, Inc. v. Federal Labs., Corp., No. 07 C 168, 2007 WL 2298367 (N.D. Ill. Aug. 3, 2007) (Guzman, J.).

Judge Guzman granted defendants’ Fed. R. Civ. P. 12(b)(3) motion to dismiss for lack of venue. Plaintiff Gencor Pacific (“Gencor”) and defendant Federal Laboratories (“Fedlabs”) both distribute products including caralluma powder. Gencor alleged that Fedlabs infringed Gencor’s copyrights, engaged in unfair competition and other related state law claims by using various Gencor studies and literature to promote Fedlabs’s products. Gencor also alleged that Fedlabs’s Chairman defendant Jeffery Taub left a defamatory voicemail message for an Illinois-based Gencor distributor. Because defendants are all New York residents, venue was only proper in the Northern District if a substantial part of the events at issue occurred in Illinois. Gencor argued that the Illinois voicemail and various Fedlabs mailings to Illinois residents including the copyrighted studies constituted a substantial part of the events at issue. In support of its contentions, Gencor submitted only a transcript of the alleged voicemail. Gencor did not submit any mailings that had been sent to Northern District residents or a declaration stating that the voicemail had been received at a Northern District telephone number. The Court held that Gencor’s unsupported “bare allegations” did not meet Gencor’s burden of proving that venue was proper.

Practice tip: You must support factual allegations with evidence. Local Rule 56.1 forces parties to follow this advice for summary judgment motions (although many fail to follow the rule). But the requirement, although unwritten, is no less important for other motions. If you are ever not sure whether an allegation requires evidentiary support, err on the side of providing the support. I have never seen an argument lost because a party unnecessarily supported its factual allegations.

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Faruki v. Eagle Seven, No. 06 C 7125, Min. Order (N.D. Ill. Aug. 10, 2007) (Mason, J.).

Magistrate Judge Mason denied plaintiffs' motion for a protective order to prevent a third party deposition.  Plaintiffs argued that the third party's only knowledge relevant to the case was outside the relevant time frame.  But the Court did not reach the merits of the motion because plaintiffs filed their motion two business days prior to the deposition.  The motion was filed so close to the date of the deposition that the motion was noticed for the day after the deposition was set to be taken.  Plaintiffs were aware of the subpoena and the deposition date for at least two weeks prior to filing their motion and the parties appeared before the Court during that time, but plaintiffs failed to raise the issue.  The Court, therefore, denied the motion as untimely.

Practice tip:  Deposition scheduling issues are often negotiated until very near the planned date, but if you think you might bring the issues before the Court make sure to warn the Court if you are appear while you are aware of the issue and, if at all possible, file your motion with sufficient time to notice your motion before the deposition is scheduled.

* The minute order is available here.

 

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Illinois Tool Works, Inc. v. Chester Bros. Mach. Prods., Inc., No. 05 C 5002, 2007 WL 2278448 (N.D. Ill. Aug. 6, 2007) (Guzman, J.).

Judge Guzman granted in part plaintiff’s Fed. R. Civ. P. 41(a)(2) motion to dismiss, dismissing the case with prejudice but awarding defendant’s costs. The Court also denied defendant’s motion for attorneys fees. After sending several cease and desist letters, plaintiff Illinois Tool Works (“ITW”) filed suit against Chester Brothers Machined Products (“Chester”) alleging that Chester infringed plaintiff’s trademark in the color orange used with pneumatic nailers and staplers. ITW amended its complaint after Chester served ITW with a Fed. R. Civ. P. 11 motion explaining that Chester did not sell pneumatic nailers. Chester answered the amended complaint and the case proceeded. But during discovery one of ITW’s customers began selling orange pneumatic nailers. As a result, ITW amended its trademark registration to exclude pneumatic nailers and filed the instant motion. The Court agreed to dismiss the claims with prejudice, but held that costs were justified because Chester had not engaged in litigation misconduct. The Court, however, denied defendant’s motion for attorneys fees because Chester never explicitly told ITW that it did not manufacture pneumatic nailers and because ITW’s claims survived Chester’s motion to dismiss.

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Herman Miller, Inc. v. Teknion Corp., No. 05 C 2761, 2007 WL 2230042 (N.D. Ill. Jul. 30, 2007) (Gettleman, J.).

Judge Gettleman construed the claims of the asserted patents covering features of swivel office chairs and granted partial summary judgment of infringement for plaintiff on one of the two patents, U.S. Patent No. 6,588,741 (the “‘741 patent”), with the exception of claim 10 which plaintiff admitted was not literally infringed, and summary judgment of noninfringement for defendant as to claim 10 of the ’741 patent and the second patent, U.S. Patent No. 6,588,842. But the most interesting part of this opinion is not the Court’s constructions or infringement analysis, but what appears to be plaintiff’s reasonableness – a trait seldom displayed at this stage of the case in my experience. At the beginning of its opinion, the Court noted that the case originally included two other patents and that the parties had filed and briefed cross summary judgment motions regarding those patents as well. But in light of the KSR v. Teleflex decision, plaintiff issued a statement of non-liability as to those patents and the parties voluntarily dismissed all of their claims and counterclaims related to those patents. It must have been an exceptionally strong obviousness case. I have read several post-KSR decisions and this is the first case in which I have seen a plaintiff voluntarily dismiss its claims in light of the “new” obviousness standard.

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Allen v. Destiny’s Child, No. 06 C 6606, Min. Order (N.D. Ill. Jul. 30, 2007) (Holderman, C.J.).*

Judge Holderman granted in part defendant Andrea Murray’s motion to dismiss plaintiff’s copyright infringement and related state law tort claims.  Plaintiff alleges that defendants, including the musical group Destiny’s Child and its members, infringed plaintiffs’ copyrights in his song “Cater 2 U” by producing and selling Destiny’s Child’s song of the same name (watch the video of  Destiny’s Child’s version on their website).  The Court denied the motion as to plaintiff’s copyright infringement claims for the reasons set forth in a separate order of the same date (you can read more about it in the Blog’s archives). The Court dismissed with prejudice plaintiff’s misappropriation claim because plaintiff failed to prove that Illinois recognizes a misappropriation claim separate from the Illinois Trade Secret Act. Additionally, plaintiff failed to identify a difference between his misappropriation claim and his claims for breach of implied contract and copyright infringement. The Court also dismissed plaintiff’s fraudulent misrepresentation claim with prejudice because plaintiff failed to produce evidence beyond a broken promise that defendants intended fraud. 

Defendant also argued that plaintiff’s breach of fiduciary duty and breach of contract claims should be dismissed because the alleged breaches occurred in or before 2000, but plaintiff did not file his complaint until November 2006. But plaintiff pled that he did not become aware of the breaches until the November 2004 release of the Destiny’s Child album that included Cater 2 U. Because plaintiff’s complaint did not establish a statute of limitations defense, the Court allowed the claims. Additionally, the Court noted that defendant’s arguments regarding pleading requirements were based in Illinois, despite the fact that federal pleadings are controlled by federal law.

*  You can read a copy of the Minute Order here.

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Allen v. Destiny’s Child, No. 06 C 6606, Min. Order (N.D. Ill. Jul. 30, 2007) (Holderman, C.J.).*

Judge Holderman granted in part defendants’ motion to dismiss plaintiff’s copyright infringement claims. Plaintiff alleges that defendants, including the musical group Destiny’s Child and its members, infringed plaintiffs’ copyrights in his song “Cater 2 U” by producing and selling Destiny’s Child’s song of the same name (watch the video of  Destiny’s Child’s version on their website). The Court dismissed the infringement claims regarding the two copyrights that plaintiff did not own, but allowed the claims as to plaintiff’s other two copyrights. Plaintiff’s allegations that he owned the two copyrights, provided copies of his performances of the song to various defendants who relayed them to Destiny’s Child and that the Destiny’s Child song is musically and lyrically similar were sufficient to meet the new Fed. R. Civ. P. 12(b)(6) motion to dismiss standard set forth in Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955, 1969 (2007) (read more about the decision at the University of Chicago Faculty Blog). The Court did, however, dismiss claims against defendant McDonald’s. McDonald’s was only charged with having received financial gain from the infringement because it sponsored a Destiny’s Child tour during which the song was performed. The Court quoted upon Twombly in explaining its decision:

The court is not convinced that [plaintiff] has “nudged [his] claims across the line from conceivable to plausible.”

*  You can read a copy of the Minute Order here.

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According to the Boston Globe, the Boston Patent Law Association ("BPLA"), headed by Boston attorney Lee Carl Bromberg, is trying to make the District of Massachusetts the next hot patent court.  The BPLA is working to create patent rules for D. Mass. and case deadlines similar to those found in "rocket dockets" like E.D. Texas, W.D. Wis. and E.D. Va.  Bromberg also touts the intelligent judiciary in Boston as a reason D. Mass. should be the next patent court. 

I am all for districts adopting patent rules.  Regardless of their specific content, the certainty of patent-specific rules for claim construction and the exchange of infringement and invalidity contentions benefits all parties.  Local rules also save the expense of the numerous discovery motions parties often use to resolve these issues in the absence of local rules.  But I think what matters most, is getting a judge that is interested in or at least willing to tackle a patent case.  Judge Ward's interest in patent cases (and now the interests of his E.D. Texas colleagues) is really what made the E.D. Texas a patent hot-bed, his local rules were just an off-shoot of that.  Similarly, the chief reason that the Northern District is a top five patent district is that there are a critical mass of judges that have taken an interest in patent cases.  And although the Northern District lacks patent local rules, the judges that seem to preside over the most patent cases tend to have set or preferred procedures for patent cases that take the place of broader patent-specific rules.  For example, Judge St. Eve has a standing order setting a claim construction schedule.

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According to Interbrand Ronald is worth more than Mickey.  Interbrand has just published its 2007 Best Global Brands, ranking the top 100 brands that:  1) derive at least a third of earnings outside of the brand’s home country; 2) are recognized beyond the brand's customer base; and 3) have public marketing and financial data.  Interbrand also excludes brands that are hard to identify as having brand value separate from their products or services. For example, pharma brands are excluded because Interbrand has determined that consumers focus on products rather than the overarching company branding. That leaves Northern District companies like Abbott Labs out of the running.  But the Northern District is still very well represented.  For example, McDonald's jumped one spot this year, surpassing Disney in brand value.  Here are the Northern District companies (or at least those very near the Northern District) on the list:

Northern District Top Global Brands

07 Rank	06 Rank	Company	07 Brand Value (in USD Millions)
8	9	McDonald's	29.398
59	59	Wrigley's	5.777
77	69	Motorola	4.149
86	79	Kraft	3.732

Thanks to the Seattle Trademark Lawyer for identifying the ranking.

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Statistics compiled by the Patent Troll Tracker* blog show that the Northern District continues to play a prominent role in deciding the nation's patent disputes and, as a result, its IP disputes more generally.  Filings of patent cases for 2007 (through the end of July), show that the Northern District had the fourth most patent filings:

2007 Patent Filings (through July)

District	Cases	Defendants
E.D. Texas	202	705
C.D. Cal.	148	329
D.N.J.	98	169
N.D. Ill.	81	163
N.D. Cal.	78	156
D. Del.	75	199
S.D.N.Y.	67	167

Another interesting statistic from this data:  with the exception of the E.D. Texas, all of the districts have a rough average of two to three defendants per case.  E.D. Texas averages about three and a half defendants per case.  I would have expected that E.D. Texas would average closer to five to ten defendants per case.  Perhaps all of the large patent licensing company cases that garner so much attention in Marshall are balanced by disputes between individual parties.

If readers are interested in these statistics, let me know and I will compile my own data and make it a regular (maybe quarterly) feature.

*  I appreciate the Patent Troll Tracker's statistics and even the effort he performs keeping track of cases filed by patent licensing companies, but as I have explained before I am no fan of name calling (by either plaintiffs' or defendants' counsel).  As such, I prefer the neutral term "patent licensing company."

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Lorillard Tobacco Co. v. Montrose Wholesale Candies & Sundries, Inc., No. 03 C 5311 & 03 C 4844, Slip Op. (N.D. Ill. Jul. 27, 2007) (Cole, J.).*

Judge Cole recommended granting plaintiff Lorillard Tobacco’s (“Lorillard”) petition for attorneys fees, but reduced the requested fees by about $80,000. Lorillard received a default judgment against defendants in 2006 and, as a result, brought this petition seeking its fees and costs. The Court’s opinion is an excellent guide for anyone preparing a fee petition. The Court refused to consider Lorillard’s costs because although Lorillard submitted a list of costs, it did not total the costs or discuss them in its petition and supporting declaration. Next, the Court accepted most of the costs for the four attorneys whose billing rates were explained in the supporting declaration, but denies any fees for the other nineteen people whose fees were not explained in the declaration. The Court notes that these nineteen people could be partners, associates or paralegals, but the Court cannot assess the reasonableness of their rates or billed activities without knowing their roles. And even for the four, the Court notes that it would have preferred some explanation of each attorney’s experience in past Lanham Act cases, in order to judge whether the attorneys’ billing rates were commensurate with their experience. 

Continue Reading...

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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, Min. Order (N.D. Ill. Jul. 13, 2007) (Manning, J.).*

In the first Northern District opinion to address the Supreme Court’s MedImmune declaratory judgment standard, Judge Manning denied plaintiff Black & Decker’s (“B&D”) motion to dismiss defendant Robert Bosch Tool Corp.’s ("Bosch") declaratory judgment counterclaims for lack of subject matter jurisdiction. In a prior case between the parties before Judge St. Eve (numerous prior opinions are discussed in the Blog's archives), B&D asserted that two models of Bosch's Power Box radio (the "Old Power Box") infringed B&D's two patents (the "Old Patents").  Shortly before Judge St. Eve held trial in the previous case, B&D brought this suit against Bosch asserting that Bosch's new model of its Power Box radio (the "New Power Box") infringed a third patent (the "New Patent").  At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents.  Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial.  After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.

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

Speculation regarding Judge Pallmeyer's delay of the Eolas v. Microsoft trial is starting in the MSM and on the internet.  The Seattle Post-Intelligencer and the Internetnews.com both have pieces reporting that Eolas and Microsoft are working toward settlement.  Both stories quote a Microsoft spokesperson as saying, "[Microsoft is] in active discussions with Eolas Technologies regarding a possible settlement ."

As I said in my previous posts, I will not comment on any news from this case because of my family's connection to it, but feel free to discuss the case in the comments.

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United States Gypsum Co. v. LaFarge N. Am., Inc., No. 03 C 6027, 2007 WL 2091020 (N.D. Ill. Jul. 18, 2007) (Hart, J.).

Judge Hart granted in part defendants motion to enforce the Court’s order and denied plaintiff’s motion to compel discovery. The Court previously ruled upon the parties’ cross-motions for summary judgment, holding that plaintiff’s state law claims were not preempted by the Illinois Trade Secrets Act, but significantly limiting the claims and removing some defendants (you can read more in the Blog’s archives). Defendant sought reconsideration of the Court’s preemption ruling. But the Court held that the motion, filed three months after the Court’s opinion, was untimely and that it presented no new arguments. The Court granted defendant’s request that plaintiff be limited to the trade secrets it identified during fact discovery and prior to summary judgment briefing.

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Vaughn v. Kelly, No. 06 C 6427, Slip Op. (N.D. Ill. Jul. 16, 2007) (Manning, J.).

Judge Manning denied defendant R. Kelly’s (“Kelly”) motion to dismiss plaintiff Vaughn’s case arguing that Vaughn’s state law claims were preempted by copyright law. The Court previously dismissed Vaughn’s motion to remand the case to state court, holding that his unjust enrichment claim sounded in copyright law and giving Vaughn time to amend his complaint to remove the copyright elements (you can read more about the case in the Blog’s archives). Kelly now moves to dismiss the amended complaint. As in the original complaint, 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.  The Court held that Vaughn’s unjust enrichment claim was preempted by copyright law, but granted Vaughn leave to refile the claim as one for copyright infringement. The Court refused to consider Vaughn’s proposed amended unjust enrichment claim because Vaughn failed to amend the unjust enrichment claim when the Court first offered Vaughn a chance to amend and because it is improper to consider amendments as part of a motion to dismiss. The Court held that Vaughn’s breach of oral contract claim was not preempted by copyright law because it could be for less than co-ownership of the copyright, which would be preempted. 

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