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

Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2728754 (N.D. Ill. Sep. 13, 2007) (Guzman, J.).

Judge Guzman conducted a Fed. R. Civ. P. 72 de novo review of Magistrate Judge Cole’s report which recommended that the Court hold defendant in contempt for violating the Court’s permanent injunction limiting defendant’s use of plaintiff’s Coilcraft mark (click here for further discussion in the Blog’s archive). The Court adopted Judge Cole’s Report in its entirety and gave plaintiff fourteen days to submit a proposed order and proof of its attorneys' fees and costs related to this motion. The Court also held that Judge Cole was not required to hold an evidentiary hearing before issuing the Report because there were no genuine issues of material fact. The dispute was governed by the language of the Court’s injunction which was not disputed. And the only issue was whether defendant’s advertisements, the contents of which were not disputed, violated the injunction – a matter of law.

• Print
• Comments
• Trackbacks

Sotelo v. Suburban 171, Inc., No. 07 C 2447, 2007 WL 2570355 (N.D. Ill. Aug. 29, 2007) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ Lanham Act unfair competition claim. Plaintiffs operated a salon called “Studio 171.” Defendants took over the location of plaintiffs’ salon and operated their own salon using all of the Studio 171 signage and marks. Defendants argued that plaintiffs’ unfair competition claim should be dismissed because the Studio 171 mark was either descriptive or generic and plaintiff did not plead secondary meaning. But the Court held that the argument was premature. A plaintiff need not plead secondary meaning.* And furthermore, plaintiffs did plead secondary meaning, stating that the Studio 171 mark had developed “considerable value” and become “uniquely associated” with plaintiffs’ business. The Court did, however, dismiss plaintiffs’ RICO claim for failing to plead their fraud allegations with particularity pursuant to Fed. R. Civ. P. 9(b).

* The Court did not cite the Supreme Court’s recent decision in Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955 (2007) (read more about the decision at the University of Chicago Faculty Blog).  But based on other recent opinions citing Twombly for heightened pleading requirements, I wonder if plaintiffs at least should plead secondary meaning now.

• Print
• Comments
• Trackbacks

Many -- myself included -- thought the Supreme Court may have had its fill of patent law.  But yesterday, the Supreme Court granted cert in  Quanta Computer Inc. v. LG Electronics Inc., 06-937, to consider whether parties can contract around patent exhaustion.  The patent exhaustion doctrine, also known as the first sale doctrine, holds that a royalty can only be charged once per product.  Once one link in the supply chain has paid a royalty for a patented product, or a key component, the patent is exhausted and no other link in the chain must pay a royalty for the same patent.  LG Electronics attempted to contract around patent exhaustion.

LG Electronics owned a group of patents claiming microprocessors used in personal computers.  They licensed the patents to Intel, but expressly excluded from the license any Intel customer that combined a licensed Intel microprocessor with non-Intel components.  As part of the license, Intel sent letters to its customers warning of this license exclusion.  LG Electronics sued Intel's post-license customers that were allegedly combining the licensed Intel chips with non-Intel products.   

The district court held that Intel's license exhausted LG Electronics' downstream patent royalty rights.  But the Federal Circuit reversed, holding that when parties expressly restrict a license a court should infer that the parties also negotiated a more limited royalty to reflect the limited rights given in the license.  As a result, patent exhaustion should not apply to restricted licenses.  Quanta argues that the Federal Circuit's decision contradicts a long history of both Federal Circuit and Supreme Court precedent requiring that patent licenses cannot be restricted to one link in the supply chain.

This is another case that has major implications for the business of patent law.  If the Supreme Court overturns the Federal Circuit it could dramatically change the model of many patent licensing programs.

Continue Reading...

• Print
• Comments
• Trackbacks (2)

Trading Technologies Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, 2007 WL 2566291 (N.D. Ill. Aug. 29, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies’ (“TT”) motion for a protective order to prevent depositions after the close of fact discovery and days before trial was scheduled to begin, although the Court did preclude one deposition. The Court held that defendant eSpeed could depose third party Lorin at Lorin’s convenience for no more than two hours. But eSpeed can only introduce Lorin’s testimony in support of its claim that the alleged prior art GL Win with Trade Pad software existed before the critical date (you can read more about the parties’ dispute over whether the GL Win with Trade Pad software invalidates TT’s patents in the Blog’s archives). The Court, however would not permit the deposition of third party Doug Moneison. TT relied upon Moneison’s declaration in opposing eSpeed’s GL Win with Trade Pad invalidity summary judgment motion. But in its reply brief, TT stated that it would not call Moneison at trial or directly rely upon his declaration. The Court, therefore, held that Moneison’s deposition was not necessary. The Court also allowed eSpeed to file an additional expert report regarding hard drives produced by third party Chicago Mercantile Exchange (“CME”) – CME’s production is discussed in the Blog’s archives – because the Court had been aware of the hard drives and their likely use at trial for some time. Finally, the Court denied TT’s request that evidence regarding GL’s Win with Trade Pad software be precluded at trial because of GL’s alleged failure to produce documents from its website regarding its software. The Court did, however, require that GL perform an additional word search of its website using terms specified by the Court and produce any additional materials found by the search.

Trial started the week of September 10. Expect to see several more opinions in this case and its related cases. Additionally, work has made it difficult for me to observe the trial, but I spent a few hours watching last week and will post some thoughts on it later this week.

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

• Print
• Comments
• Trackbacks

Trading Technologies Int’l, Inc. v. eSpeed, Inc., (N.D. Ill.) (Moran, Sen. J.).

Last week, I attended several hours of the Trading Technologies (“TT”) v. eSpeed trial. I watched the direct exam of TT’s infringement expert. Unfortunately, because of an ill-timed lunch break and other responsibilities, I missed eSpeed’s cross-exam. The jury is made up of eight members and two alternates, equally split between men and women. To their credit and that of the Northern District’s jury pool generally, the jurors appeared very engaged, dressed appropriately for court and were taking detailed notes.

None of the issues that I have written about came up (click here for the Blog’s archive on the case), but I came away with several thoughts about making your case to a jury:

• TT’s PowerPoint slides were often, although not always, very dense. This led to a jury that was over-focused on the slides and not listening to the testimony. Of course, TT’s infringement case was on the slides so they may be comfortable with that. But I want the jury focused on my expert and her credibility, not her slides.
  
• Despite their occasional wordiness, TT’s expert interacted very well with his slides. When the expert stepped away from the witness stand and pointed out information on the slides, he recaptured the jury’s attention very well.
  
• When the expert relied upon deposition or trial testimony, TT put the testimony on a slide next to the person’s picture. This was an excellent way of humanizing the cold transcript. I suspect it also helped the jurors remember the testimony by attaching the words to a face.

I understand that trial will continue at least this week and maybe in to next week. I will try to observe the trial again, but I am traveling most of this week so it will not be until late this week or early next. And if I do make it back, I will do my best to watch both the direct and the cross of a witness or maybe both sides’ closings. That way I will be able to provide more perspective on the substance of the trial.

• Print
• Comments
• Trackbacks

Lorillard Tobacco Co. v. Montrose Wholesale Candies & Sundries, Inc., No. 03 C 5311 & 4844, 2007 WL 2580491 (N.D. Ill. Sep. 10, 2007) (Cole, Mag. J.).

Judge Cole recommended awarding plaintiff $2.5M in statutory damages. The Court had previously entered a Fed. R. Civ. P. 37(b) default judgment against defendants for sales of counterfeit Newport cigarettes in violation of the Lanham Act.* The Court recommended that a damages hearing was not necessary because of defendants’ four year pattern of avoiding discovery obligations leading to a default judgment, including failing to produce damages documents. Having actively avoided producing the information for four years, defendants were not now entitled to seek opportunities to present evidence in their defense. Furthermore, the Court reported that a $2.5 M award was reasonable. $2.5M was half of plaintiff’s estimate of defendants’ infringing sales and it was half of the potential $1M statutory award for each of the five marks defendants infringed.

* For more on this case, see the Blog’s archives.

• Print
• Comments
• Trackbacks

Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., No. 06-1561, Slip Op. (Fed. Cir. Sept. 12, 2007) (Holderman, C.J., sitting by designation.).*

On behalf of Chief Judge Michel and Judge Gajarsa, the Northern District’s Chief Judge Holderman affirmed C.D. California’s holding that declaratory judgment plaintiffs’ (“Arminak”) “AA Trigger” shroud design for a spray bottle did not infringe declaratory judgment defendant’s (“Calmar”) design patents covering certain design elements of shrouds. The main issue, and one of first impression, was whether the “ordinary observer” for purposes of design patent infringement should be the end-user/purchaser of spray bottles or the industrial purchaser that buys triggers or shrouds for assembly into a finished spray bottle product. The district court held that the ordinary observer was the industrial purchaser and the evidence clearly established that industrial purchasers would not be confused by similarities between Arminak’s and Calmar’s patented shrouds. Calmar argued, however, that the Supreme Court in Gorham Mfg. Co. v. White, 81 U.S. 511 (1871), expressly excluded experts from being ordinary observers and that, therefore, retail purchasers had to be the ordinary observer. But the Federal Circuit noted that did not sell shrouds or fully assembled spray bottles including their respective shrouds to retail purchasers. The parties sell shrouds to industrial purchasers. Industrial purchasers, therefore, are the appropriate population of ordinary observers. The ordinary observer is:

A person who is either a purchaser or, or sufficiently interested in, the item that displays the patented designs and who has the capability of making a reasonably discerning decision when observing the accused item’s design whether the accused item is substantially the same as the item claimed in the design patent.

* This is not an appeal from the Northern District, but I am covering it because Chief Judge Holderman authored the Opinion. Thanks to Dennis Crouch at Patently-O for bringing the case to my attention.

• Print
• Comments
• Trackbacks

Trading Technologies Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Aug. 21, 2007) (Moran, Sen. J.).

Judge Moran denied the parties’ cross motions for summary judgment regarding whether GL Win with Trade Pad (“GL Trade Pad”) was invalidating prior art to plaintiff Trading Technologies’ (“TT”) patents. Defendant argued that the GL Trade Pad product was on sale prior to the critical date (the critical date was either March 2, 1999 or June 9, 1999, the Court previously held that it was a question of fact for the jury) based upon a February 19, 1999 software license (“February License”). But because the February License did not specifically name the GL Trade Pad software as part of the licensed software, both parties relied upon extrinsic evidence to prove whether GL Trade Pad was part of the February. The Court held that oral invalidity testimony must be corroborated by evidence other than additional interested oral testimony. eSpeed, therefore, corroborated its main witness’s testimony with Trade Pad software code and catalogs. eSpeed argued that this evidence showed that the Trade Pad software was made and sold on or before the February License and would have been included in the February License. But the Court held that eSpeed’s evidence did not meet its evidence of proving the sale by clear and convincing evidence. TT challenged each piece of eSpeed’s evidence and the Court could not decide summary judgment of invalidity based upon eSpeed’s remaining evidence – oral testimony of an interested party (GL is a defendant in a related case). The jury must weigh competing testimony and judge the witnesses' credibility. 

Trial started in this case the week of September 10. Expect to see several more opinions in this case and its related cases (there are two weighty summary judgment opinions still in my queue, as well as several other smaller opinions and orders). Additionally, I have some other obligations, but am planning to blog some of the trial. Stay tuned.

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

• Print
• Comments
• Trackbacks (1)

Trading Technologies Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Aug. 16, 2007) (Moran, Sen. J.).*

Judge Moran granted in part plaintiff Trading Technologies’ (“TT”) motion for summary judgment regarding prior use and denied defendant eSpeed’s cross motion for summary judgment. TT argued for a March 2, 1999 critical date (one year before the March 2, 2000 filing of TT’s related provisional application). eSpeed argued that the provisional application did not fully describe the patented invention and that, therefore, the critical date was June 9, 1999 (one year before filing of TT’s parent application). The Court held that whether the provision application met the written description requirements was a question of fact for the jury. The Court, therefore, determined this summary judgment motion in the alternative, either if the jury found a March 2 or a June 9 critical date. eSpeed argued that various uses of TT’s software before March 2 constituted public use because trades were either completely or partially performed to test the software. But the Court held that this use of the software was only experimental and done solely for the purpose of making sure the software functioned properly. The trades that were initiated during the testing were canceled prior to completion, except in several discreet incidents where the users testified that they had intended to cancel the trades but forgot. eSpeed also argued that the software was reduced to practice before March 2. But the Court held that the software was not reduced to practice until March 2 based upon the developers’ testimony that they did not believe the software was fully functioning and were still testing it prior to March 2. The Court, therefore, granted TT summary judgment for pre-March 2 use of the software. 

The Court held that the March 2 to June 9 alleged use was a question of fact for the jury. eSpeed’s email, video and trading record evidence for the March 2 to June 9 period might constitute public use, but a question of fact remained.

Trial started in this case the week of September 10. Expect to see several more opinions in this case and its related cases (there are two weighty summary judgment opinions still in my queue, as well as several other smaller opinions and orders). Additionally, I have some other obligations, but am planning to blog some of the trial. Stay tuned.

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

http://www.chicagoiplitigation.com/tags/trading-technologies/

• Print
• Comments
• Trackbacks (6)

Tomorrow, Wednesday, September 18, from 3:00 - 4:00 PM, the Chicago-Kent College of Law is hosting its fourth annual Federal Circuit Roundtable.  The Roundtable, composed of former Federal Circuit law clerks, will address the topic, "MedImmune and SanDisk:  Seeking a License Without Getting a Lawsuit."  The scheduled participants are:

• Laura L. Donoghue, Sidley Austin;
  
• Lisa A. Schneider, Sidley Austin;
  
• Jonathan R. Spivey, Foley & Lardner, 
  
• Meredith Martin Addy, Brinks Hofer Gilson & Lione;
  
• Laura A. Lydigsen, Brinks Hofer Gilson & Lione;
  
• Leonard D. Conapinski, McDermott Will & Emory;
  
• Sasha D. Mayergoyz, Latham & Watkins;
  
• David C. McKone, Latham & Watkins;
  
• Michael R. Weiner, Marshall, Gerstein & Borun; and
  
• Michelle Armond, Marshall, Gerstein & Borun. 

The Roundtable will be moderated by Chicago-Kent Professor Timothy R. Holbrook. 

I will not be able to attend this year's event because I am teaching an IP course at Loyola on Wednesday afternoons, but I can vouch for the program.  It is an hour of excellent insight from former Federal Circuit clerks.  Also, in the interest of full disclosure, my wife (Laura Donoghue) is a roundtable participant.  So, I am biased, but it is still an excellent program.

• Print
• Comments
• Trackbacks

Autotech Techs. Ltd. Partnership v. AutomationDirect.com, Inc., No. 05 C 5488, 2007 WL 2388794 (N.D. Ill. Aug. 17, 2007) (Holderman, C.J.).

Judge Holderman denied the parties’ cross-motion for summary judgment regarding the parties’ opposing trademark infringement claims regarding the “EZTOUCH” and “EZTEXT” marks. For approximately five years, the parties worked together with plaintiff manufacturing and defendant exclusively distributing a line of operator interface panels using the “EZTOUCH” and “EZTEXT” marks. When the business relationship deteriorated the parties disputed ownership of the marks and each attempted to register them with the PTO, as well as filing suits which were consolidated into this suit. The Court held that in a dispute between manufacturers and distributors, trademark ownership is first governed by contract and, if not resolved by contract, then presumed to be with the manufacturer. In this case, the parties agreed by contract that the trademark ownership was disputed. The Court, therefore, looked to a series of factors to determine whether ownership could be determined. The Court held that the parties raised factual disputes and competing positions which the trier of fact must weigh to determine ownership. The parties each presented evidence that they created and first used the marks in commerce. The parties both used their names in connection with the marks and controlled the quality of the products sold. And both parties paid for advertising involving the marks. The Court, therefore, could not decide trademark ownership or summary judgment.

• Print
• Comments
• Trackbacks

The Northern District's Executive Committee set new Magistrate Judge Cox's calendar in an order signed by Chief Judge Holderman.  You can read the order here. 

Welcome to the bench Judge Cox.

• Print
• Comments
• Trackbacks

American Fam. Mut. Ins., Co. v. Roth, No. 05 C 3839, 2007 W LL377335 (N.D. Ill. Aug. 16, 2007) (Cole, Mag. J.).

Judge Cole recommended that plaintiff’s motion be granted in part requiring defendants to comply with the Court’s preliminary injunction and holding defendants in contempt for failing to comply with the Counts TRO and PI. The Court first explained that no injunction could be a general prohibition against using trade secrets. Rather, an injunction – whether temporary, preliminary or permanent – must include specific recitals limiting defendants’ actions or requiring that actions be performed. The Court then analyzed whether defendants’ actions or inactions violated specific provisions of the TRO and the PI issued by the Court. The Court reported that defendants had retained possession of plaintiff’s customer list and defendants failed to provide a list of their customer contacts with sufficient detail. The Court, therefore, recommended that defendants be held in contempt for failing to comply with the TRO and the PI.

• Print
• Comments
• Trackbacks

Am Fam. Mutual Ins., Co. v. Roth, No. 05 C 3839, 2007 WL 2410074 (N.D. Ill. Aug. 16, 2007) (Cole, Mag. J.).

Judge Cole granted in part plaintiff’s motion to strike evidence and bar its use. The documents at issue were commission statements including plaintiff’s customer information. The Court previously ordered defendants to return to plaintiff all documents in its possession including plaintiff’s customer information in this trade secret matter. After that order, defendants filed the commission statements, including customer information, with the clerk as an exhibit to another document. The Court held that filing of the commission statements was public disclosure which violated the Court’s order that defendants not retain or disclose such information. But the Court held that plaintiff’s preferred sanction for retaining and filing the documents, barring their use as evidence at trial, was not proportional with defendants’ wrong in keeping the document and filing them publicly with the Court. 

• Print
• Comments
• Trackbacks

Sunstar, Inc. v. Alberto-Culver Co., No. 01 CV 736 & 5825, 2007 WL 2410069 (N.D. Ill. Aug. 22, 2007) (Guzman, J.).

Judge Guzman denied defendants’ Fed. R. Civ. P. 59 motion for a new trial and Fed. R. Civ. P. 50(b) motion for judgment as a matter of law and granted plaintiff’s motion for a permanent injunction, among other things assigning all trademarks at issue to plaintiff and enjoining defendants from using plaintiff’s trademarks. The Court held that the jury’s verdict of a breach of contract without a damages award was not inconsistent and, therefore, did not warrant a new trial. The jury was free to find that the contract was breached and to award nominal damages. But because plaintiff did not argue for nominal damages an award of no damages was warranted. Defendants also argued that the jury’s verdict was not supported by the evidence because plaintiff’s survey was not sufficient proof actual confusion. But the Court held that plaintiff’s breach-by-infringement claim only required proof of likely confusion. The jury could have considered the survey sufficient to prove likely confusion. Furthermore, plaintiff introduced fact evidence in addition to the survey which supported the jury’s findings, including the similarity of the marks at issue and the sale of similar products using the marks in the same areas as plaintiff’s trademarked products.

Continue Reading...

• Print
• Comments
• Trackbacks

Minemyer v. R-Boc Reps., Inc., No. 07 C 1763, 2007 WL 2461666 (N.D. Ill. Aug. 24, 2007) (Coar, J.).

Judge Coar denied individual defendant Timothy Grimsley’s (“Grimsley”) motion to dismiss for lack of personal jurisdiction. Grimsley argued that all of his involvement in allegedly infringing plaintiff’s patented couplers was undertaken within the scope of his employment for defendant Dura-Line and, therefore, was protected by the fiduciary shield doctrine. But the Court disagreed. The parties provided conflicting evidence regarding whether Grimsley was an officer of Dura-Line and Grimsley’s level of control over Dura-Line’s coupler business. Additionally, the parties provided conflicting evidence regarding whether Grimsley was aware that Dura-Line’s couplers infringed plaintiff’s patents, but continued to market and sell them despite that knowledge, acts which would go beyond the scope of his employment because of his knowledge of their illegality. The Court, therefore, held that based on the current evidence the fiduciary shield doctrine was not available to Grimsley. But the Court acknowledged that further evidence may reverse that analysis and allowed Grimsley to refile his motion should discovery present that additional evidence.

• Print
• Comments
• Trackbacks

Glenayre Elecs., Inc. v. Jackson, No. 02 C 0256, 2007 WL 2492105 (N.D. Ill. Aug. 30, 2007) (Leinenweber, J.).

Judge Leinenweber denied a motion for an injunction against declaratory judgment defendant Jackson (“Jackson”) making arguments in a related malpractice case against Jackson’s prior counsel Niro Scavone (“Niro”). In the original case, the jury returned a verdict for Jackson finding direct infringement and awarding him $12.1M. Jackson accepted a remittitur of $2.65M which the Court ruled prevented Jackson from pursuing further indirect infringement claims against declaratory judgment plaintiff Glenayre Electronics (“Glenayre”). Jackson appealed the issue to the Federal Circuit which upheld the Court’s decision. Jackson then sued his Niro in Illinois state court for, among other things, malpractice. Niro brought the instant motion in this case seeking to prevent Jackson from taking any position that contradicts the principle that the $2.65M remittitur represented all possible damages in the case. Because Niro had already moved the state court to prevent the arguments at issue, the Court had to determine whether the relitigation exception applied to allow the Court to reconsider the decision rendered by the state court. The Court held that the exception did not apply for two reasons. First, Counsel showed no “equitable entitlement” to the relitigation exception. Counsel may still appeal the state court decision through the state appellate system. And the costs of litigation are not a sufficient equitable consideration. Second, the characterization of the Court’s ruling was incorrect. The Court held only that once he accepted the remittitur, Jackson was not entitled to any further damages for the infringement. The Court did not hold that Jackson had never been entitled to more than the $2.65M remittitur.

• Print
• Comments
• Trackbacks

On Friday, I promised an explanation of what was included in the Patent Reform Act passed by the House.  As I was preparing to write it, I found that Patent Docs had done it already.  Patent Docs' strong feelings about the Act shine through their analysis, but whether you agree with their position or not, their explanation of the Act's various components is very thorough.  Thanks for doing my work for me Mr. Noonan.

• Print
• Comments
• Trackbacks

Canadian Thermal Windows, Inc. v. Magic Window Co., No. 07 C 1784, 2007 WL 2481295 (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).

Judge Moran granted defendant’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Defendant’s business is focused on southeastern Michigan. Defendant’s only connections to Illinois were a passive website, which cannot create jurisdiction, and purchases of certain supplies which were wholly unrelated to defendant’s alleged infringing activities. The Court, therefore, held that it lacked personal jurisdiction. In addition, the Court awarded defendant its attorneys fees and costs for moving to transfer or dismiss the case because plaintiff knew that defendant’s business was localized in southeastern Michigan without any ties to Illinois based on the parties’ ongoing business relationship.

• Print
• Comments
• Trackbacks

The House of Representatives passed the Patent Reform Act 225-175 this afternoon.  I have not been able to find the final version of the bill yet or any information on the final version of the venue and damages provisions, but it appears that the bill includes revisions to current law in both areas.  I will post more once the final version is available.  The Senate is scheduled to consider the Act next month and it is unlikely the Senate will pass an identical version.  So, the Act still has a few hurdles before it makes its way to the White House.

• Print
• Comments
• Trackbacks

I, along with many others, blogged last week that the Patent Reform Act had stalled in Congress.  But Congress has changed its mind and today the House is debating its version of the bill (available here).  And experts expect some version of the bill to be passed by the House at the end of today's debate.  You can find an excellent summary of key amendments to the House bill at Tech Daily Dose.  If you want a list of each amendment to the bill, by Congressperson, go to the House website.  And it should come as no surprise that with the Patent Reform Act moving forward again both the MSM and blogs are full of commentary.  Here is some of the best:

• Chicago Tribune surveys the opinions of some Chicago-area companies.
  
• 271 Patent Blog weighs in with the President's view and a survey of news stories on the Act.
  
• FileWrapper says that the House will likely pass some form of the Patent Reform Act today, but that the Senate is not expected to consider it until October.
  
• IP Central is watching the House debate on CSPAN and says that most of it centers on procedural issues, not substance.

• Print
• Comments
• Trackbacks

Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).*

Judge Moran denied defendant eSpeed’s motion to compel production of damages documents from plaintiff Trading Technologies (“TT”). eSpeed sought, among other things, monthly licensing reports, monthly product profitability reports and documents for determining TT’s costs and sales budgets. TT argued that it had already produced the requested information, to the extent that it was kept in the form requested. And to the extent that the information was not kept in the requested form, TT stated that it had provided documents sufficient to determine the requested information. Noting that counsel are officers of the Court, the Court relied upon TT’s representations and denied eSpeed’s motion because TT stated that the documents had been produced.

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 (there are two weighty summary judgment opinions still in my queue, as well as several other smaller opinions and orders). 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.

• Print
• Comments
• Trackbacks

Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).*

Judge Moran denied plaintiff Trading Technologies’ (“TT”) motions to reconsider the Court’s grant of summary judgment of noninfringement regarding defendant eSpeed’s software utilizing automatic and drift recentering of a price axis (discussed here). This opinion is most notable for the Court’s blunt footnote acknowledging that this case will be appealed to the Federal Circuit and that, therefore, the Court believes that “speedy resolution” is in all parties’ best interests:

We recognize that TT may have a valid argument [that an amendment during prosecution did not narrow the claims] and note that this was a close call. We also recognize that our decision may have been influenced by the impending trial and our disinclination to reopen a significant issue for debate. We have previously noted that this case is certain to find itself in front of the Federal Circuit for ultimate resolution and acknowledge our place as a “way station” to the Court of Appeals. Therefore, we are further convinced that speedy resolution of all issues before this court is in everyone’s best interest. . . .

Certainly other courts have thought along these lines, but few voice these opinions. 

Continue Reading...

• Print
• Comments
• Trackbacks (2)

Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).*

Judge Moran denied plaintiff Trading Technologies’ (“TT”) motion to preclude defendant eSpeed from arguing its prior sale defense at trial. In a previous Order, the Court struck eSpeed’s summary judgment motion regarding its prior sale defense because it was filed after a case deadline. The Court stated eSpeed could use its “full arsenal of defenses” with the jury.

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 (there are two weighty summary judgment opinions still in my queue, as well as several other smaller opinions and orders). 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.

• Print
• Comments
• Trackbacks

This post is not Chicago-specific, but it is an issue I feel very strongly about.  Last week, my DLA Piper colleague Stan Abrams in Beijing wrote a post at his China Hearsay blog arguing against the widely-held belief that patent protection in China is worthless:

Again, I’m not going to start the whole “China’s IP system is getting better and filing a patent is worth it and can be protected . . .” type of argument. Call me, and I’ll be happy to sound forth on that subject for a couple hours, but I’m not writing about it today. No, what really bothers me is this knee-jerk aggregation of the “China market” that encompasses all types of patents, all types of products, all kinds of technologies, all locations, all manufacturing processes - you get the point.

Look, your chances of protecting your patent in China varies significantly according to a number of factors. Given positive factors, the system here can work extremely well for IP owners. Given a poor set of factors, you can be screwed with no practical options. Talking about whether filing a patent in worth it or not begs the question as to what technology we are dealing with, what industry sector, a whole host of issues.

I know that it’s tough to deal with complex issues on TV or in a newspaper Q&A column. It’s much easier to show a photo of a fake Rolex and talk about the scourge of piracy, but in the end, this does not help real companies with real risk management calculations to make. Not to unjustly smack around the Wall Street Journal (heaven forbid), but there you have it.

Stan has it right.  Patent protection in China is improving and foreign corporations have been winning cases brought in Chinese courts.  It is certainly true, that Chinese patent protection is not consistent.  But if you choose to believe the stereotypes and do not "waste" your money protecting your technology in China, you will have no recourse if that technology is stolen.  Corporations doing business in China or in industries that use substantial Asian manufacturing should be protecting their technology in China.

Continue Reading...

• Print
• Comments (1)
• Trackbacks

Farag v. Defense Threat Reduction Agency, No. 07 C 1688, 2007 WL 2404625 (N.D. Ill. Aug. 15, 2007) (Hart, J.).

Judge Hart dismissed for lack of subject matter jurisdiction plaintiff's suit seeking that the Court order the PTO to place a secrecy order on plaintiff's patent application for a process of separating an isotope from uranium for use in nuclear applications.  Plaintiff's application is about to be published and plaintiff believes that publication of the application would allow use of his process for illicit purposes that might threaten national security.  The Invention Secrecy Act provides a patent applicant the right to appeal the issuance of a secrecy order, but not the right to appeal the denial of a secrecy order.  See 35 U.S.C. Section 181; 35 C.F.R. Section 5.4.  The Invention Secrecy Act also permits a suit for compensatory damages, but only based on damage created by a secrecy order, not the absence of one.  Finally, the Court noted that plaintiff might have a claim pursuant to the Administrative Procedure Act (the "APA"), but the APA requires that the plaintiff by harmed by the agency (PTO) action.  The Court noted that potential threat to national security based upon a review of plaintiff's patent application was too remote and general to create standing pursuant to the APA.  As a result, the Court dismissed plaintiff's complaint.  It is also interesting to note, the Court instructed plaintiff to file any appeal with the Seventh Circuit, instead of the Federal Circuit despite the fact that the case is focused on PTO procedure. 

• Print
• Comments (1)
• Trackbacks

Below is the first drawing of U.S. Patent No. 2,645,332 to a picnic basket with a variety of compartments issued in 1953 to Nora Martin of Chicago.  This patent suggests that some fairly obvious inventions have been making it through the PTO long before the recent complaints about, among other things, methods for swinging started.  Putting patent reform issues aside, I hope all of you enjoyed a restful long weekend with families and friends.

• Print
• Comments
• Trackbacks

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 over.  Eolas announced that it settled with Microsoft in a letter to shareholders (available from theSeattle Post-Intelligencer).  No details of the settlement were available, but Eolas told its shareholders to expect a dividend from the settlement of up to $60-$72 per share.  Here is more coverage of the settlement:*

• Vnunet.com
  
• Todd Bishop's Microsoft Blog -- discussing the letter to Eolas shareholders.
  
• Wall Street Journal (subscription required)
  
• Patent Prospector

*  As I have explained in 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.

• Print
• Comments
• Trackbacks