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

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I am hosting the 133rd weekly Blawg Review on Monday.  For those of you new to the Blawg Review, it is a round up of the best law blog* posts of the last week based upon submissions and the host's (that's me) own additions.  Feel free to nominate your own posts -- click here for submission guidlines and a form for submitting your posts.  And check back Monday morning for Blawg Review #133.

*  I generally use the term "law blog."  The Blawg Review goes with "blawg" to mean the same thing.  There has been considerable debate on which term  is most appropriate -- click here, here or here if you really want to know more about this debate from Kevin O'Keefe at LexBlog. 

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Usually I post a holiday-related patent on major holidays (which Halloween is in my house).  But in light of today's Eastern District of Virginia preliminary injunction hearing regarding whether to allow the PTO's new continuation rules to take effect tomorrow, November 1, as planned, I thought a post on the continuation rules was more appropriate.  The patent world, and more particularly the patent prosecution world, has been busy analyzing and preparing for the new continuation rules for several months.  For analysis of the new rules check out the Maryland Intellectual Property Law Blog (click here and here) and the 271 Patent Blog (click here).

While most were just probing the rules for loopholes or preparing to comply with them, two also filed suits in the Eastern District of Virginia seeking to enjoin enactment of the new rules -- Triantafyllos Tafas v. Dudas, No. 07 C 846 (E.D. Va.) and SmithKline Beecham Corp./GSK v. Dudas, No 07 C 1008.  Click here for Patent Docs' excellent coverage of the SmithKline/GSK suit.

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Mitchell v. First Northern Credit Union, No. 07 C 1891, 2007 WL 2948374 (N.D. Ill. October 4, 2007) (Norgle, J.).

Judge Norgle granted defendant Arizona State Credit Union’s ("ASCU") motion to transfer to the District of Arizona pursuant to 28 U.S.C. Section 1404 in this patent dispute. The Court acknowledged that plaintiff’s chosen forum was given significant weight. But the ease of access to the evidence in Arizona dictated that the case be transferred. Plaintiff was an Arizona resident, at least as of his filing date. And ASCU, all of its documents and all of its employees were in Arizona.

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Chicago Architecture Foundation v. Domain Magic LLC, No. 07 C 764, Slip Op. (N.D.Ill. October 12, 2007) (Norgle, J.).

Judge Norgle denied defendant’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Although defendant was a Florida corporation, defendant’s website – www.chicagoarchitecturefoundation.com – played upon plaintiff Chicago Architecture Foundation’s (“CAF”) name and only included links to other Chicago businesses. The Court, therefore, held that defendant’s website targeted the Northern District creating general personal jurisdiction.

Additionally, as a Fed. R. Civ. P. 37 sanction for failing to answer interrogatory responses as the Court ordered, the Court held that defendant generated revenue from the use of CAF’s trademark. 

Practice tip: Answer discovery requests on time and, if you cannot for some reason, at least answer them by the Court ordered deadline. 

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On Sunday, the Chicago Tribune reported that a copyright dispute is brewing on the corner of Michigan Avenue and Randolph Street in Chicago, click here for the Tribune article.  In the 1980s, Israeli artist Yaacov Agam was commissioned to create a sculpture for what would become the Stone Container building at 150 N. Michigan Avenue.*  Over time, Chicago weather faded the work and the current owner hired an expert to restore the multi-hued work to its original look.  Agam is unhappy with the restoration because he believes the colors were not restored to the exact shades Agam originally used. 

Agam's counsel admits that VARA, the Visual Artists Rights Act, does not protect Agam's position because the work was created before 1990 and because Agam no longer owns his work.  But Agam claims to hold the copyright in the work and argues that the copyright allows him to prevent the current owner from creating a derivative work, which Agam believes the restored work to be because of the changed colors.  The dispute is likely governed by the contract commissioning Agam to make the work.  Of course, it is possible, and maybe even likely, that the contract is silent or ambiguous regarding derivative works or that it was an oral contract without proof of what the parties intended.  It will be interesting to see how the dispute is resolved and, I am sure, people who work in the area will be glad when the wooden stump currently in the work's place is replaced by some restored version of the work.

*  Click here for a picture of the sculpture and further discussion of this dispute at the One-Way Street. 

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Autotech Techs. Ltd. Ptnshp. V. Automation Direct.com Inc., No. 05 C 5488, 2007 WL 2746654 (N.D.Ill. Sep. 18, 2007) (Cole, Mag. J.).*

Judge Cole denied plaintiffs’ (collectively “Autotech”) motion to compel production of defendant Koyo Electronics’ (“Koyo”) touchscreen source code. In Autotech’s Third Amended Complaint – filed without the leave of Court required by Fed. R. Civ. P. 15, but later allowed by Chief Judge Holderman – Autotech alleged that defendants infringed Autotech’s copyrights in its touchscreen display images. Autotech also alluded to source code infringement, but did not explicitly claim it. 

In a later interrogatory response, Autotech stated that it was not claiming that defendants’ source code infringed Autotech’s copyrights, but reserved the right to amend the complaint adding such charges. Because Autotech had not sought leave to add source code infringement claims to its complaint, the Court held that the requested source code was not relevant and production was not required. The Court also noted that the request seeking source code was improper because it was served less than thirty days before the fact discovery close in violation of Local Rule 16.1. It did not matter that the deadline was ultimately extended because the extension was granted after the original fact discovery close and after the deadline for responding to the document requests.

Practice tip: Whenever a Court issues a fact discovery close, get out your calendar, count backward thirty days and mark the last day for serving discovery requests. You would be amazed at how many litigators do not take note of this important date.

*Click here for more on this case in the Blog's archives.

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Everything Baseball Ltd., LLC v. Team Athletic Goods, Inc., No. 05 C 5526, 2007 WL 2608551 (N.D. of Ill. Sep. 4, 2007) (Pallmeyer, J.).*

Judge Pallmeyer construed the claims of plaintiff’s patent to a baseball catcher’s chest protector with flexible shoulder guards. Defendant argued that the “scope and content of the prior art” should be determined before construing the claims, citing the Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) dissent. But the Court held that it need not survey the prior art before construing the claims. And the Court noted that the quoted portion of the Phillips dissent argued that obviousness should receive de novo review, as does claim construction. The dissent was not attempting to add additional claim construction steps.

Additionally, and maybe most importantly for Cubs fans (like me) still smarting over being swept out of the playoffs this season, the Court explained in a footnote Javy Lopez’s (who wore a patented chest protector for at least one year) connection to the Tommy John surgery from which Cubs’ ace Kerry Wood has arguably never fully recovered. If Kerry Wood were still the 20 K kid he once was, maybe the Cubs would have given the Colorado Rockies a run in the NLCS, setting up a Cubs-Red Sox Series that would have been a dream for Cubs fans, baseball historians and network executives. Unfortunately, the Cubs curse (or at least lack of postseason success) lives another year and the Rockies get a chance to complete an amazing rags to riches story.

*Click here for more about this case in the Blog's archives.

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Bryant v. Gordon, __F.Supp.2d__, 2007 WL 2440208 (N.D. Ill. August 30, 2007) (Kennelly, Jr.).*

Judge Kennelly denied defendants James Gordon’s (“Gordon”) and Mach 1’s motions for judgment as a matter of law (“JMOL”) and entered an injunction against Gordon’s and Mach 1’s continued use of the copyrighted pictures at issue – pictures of a parachutist and a sniper used in motivational posters. Gordon and Mach 1 argued that the jury’s verdict that Gordon and Mach 1 infringed plaintiff’s copyrights was inconsistent with the jury’s verdict that defendant John Urtis (“Urtis”) – who took the infringing sniper photo – did not infringe plaintiff’s copyright. But the Court held that JMOL cannot be used to harmonize jury verdicts. Furthermore, the Court held that the infringement verdicts were supported by the facts.

Because of a threat of continued infringement, the Court granted a permanent injunction against Gordon and Mach 1. But the Court held that it could not issue the injunction against Urtis because the jury’s verdict was in Urtis’s favor. The Court did, however, caution Urtis not to aid the other defendants in violating their injunction.

* For more on this case, click here in the Blog’s archives.

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Geisha, LLC v. Tuccillo, No. 05 C 5529, 2007 W> 2608558 (N.D. Ill. Sep. 4, 2007) (Pallmeyer, J.).

Judge Pallmeyer held that the Court lacked jurisdiction over plaintiff Geisha’s declaratory judgment claim. Geisha operates a series of restaurants, each called Japonais – Japonais Chicago, Japonais New York and Japonais Las Vegas. Between the openings of Japonais Chicago and Japonais New York, defendant Roy Tuccillo (“Tuccillo”) filed an intent to use trademark application for a nearly identical Japonais mark, with the “firm intent” to open a restaurant using the mark. Geisha registered Japonais with the State of Illinois, but never federally registered the mark. Geisha sought, among other things, a declaratory judgment that Geisha owned the Japonais mark and that Tuccillo’s opening of a Japonais restaurant would infringe Geisha’s mark. The Court noted that the Seventh Circuit looks to patent law when considering whether there is an actual controversy in a trademark declaratory judgment action. The Court, therefore, relied upon the Supreme Court’s recent MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 765 (2007), decision which required that a controversy be “real and immediate,” overturning the Federal Circuit’s reasonable apprehension of suit test. The Court held that there was no “real and immediate” controversy. While Tuccillo had filed for registration of a Japonais mark nearly identical to Geisha’s and expressed his firm intent to open a Japonais restaurant, Tuccillo’s actions did not suggest that there was “imminent danger” that he would actually open a restaurant when the suit was filed. Tuccillo testified that he had generally looked at some properties to purchase for the restaurant, but he did not remember when he had done that and could not identify specific properties. Additionally, Tuccillo purchased a Chinese restaurant in 2002, but leased the space without opening a Japonais restaurant in 2003, two years before Geisha filed this suit.

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Aguila Records, Inc. v. Federico, No. 07 C 3993, Slip Op. (N.D. Ill. Oct. 10, 2007) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s Lanham Act, copyright infringement and breach of contract complaint. Plaintiff, a music management and recording agency, alleged that it entered into an oral agreement with individual defendant Sergio Federico (“Federico”), a musician, giving plaintiff exclusive rights to Federico’s and his musical group Alacranes Musical’s (“Alacranes”) recordings. Shortly after agreeing to a ten-year extension of the agreement, plaintiff alleged that Federico quit the Alacranes and joined defendant musical group Aliados de la Sierra (“Sierra”). Plaintiff claimed that defendants infringed its scorpion trademark by using scorpion logos in their promotional material. Plaintiff also alleged that defendants violated plaintiff's copyright in the song “Por Tu Amor” – click here to watch the Alacranes’ music video on YouTube – by performing the song without authorization. Defendants argued that plaintiff failed to state its claims because several of plaintiff’s allegations were false, unsupported or otherwise incorrect. But the Court held that plaintiff had sufficiently pled its claims and that a Rule 12(b)(6) motion was not the appropriate vehicle for evaluating the strength of the evidence.

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Abbott Labs v. Baxter Healthcare Corp., No. 04 C 0836, 2007 WL 2875503 (N.D. Ill. Sep. 28, 2004) (Guzman, J.).

Judge Guzman granted plaintiff Abbott Laboratories’ (“Abbott”) Fed. R. Civ. P. 15(a) motion to amend its Complaint dismissing claims regarding its U.S. Patent No. 6,444,859 (the “’859 patent”). After the Federal Circuit held the parent of the ‘859 patent invalid, Abbott Labs v. Baxter Pharm. Prods., 471 F.3d 1363 (Fed. Cir. 2006), Abbott gave defendant Baxter Healthcare (“Baxter”) a covenant not to sue Baxter on the ‘859 patent (“Covenant”). Abbott, therefore, sought leave to dismiss its claims regarding the ‘859 patent. But Baxter argued that the claims should not be dismissed because the Covenant excluded any reissue or reexamination of the ‘859 patent, thereby creating an actual controversy. The Court held that Abbott’s potential suit based upon its potential reissue or reexam of the ‘859 patent did not create a current controversy. The Court, therefore, allowed Abbott to amend its Complaint dismissing claims regarding the ‘859 patent. 

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I have already posted on the verdict generally, but the jury's completed verdict form is now available and provides some more detailed information -- click here for a copy.  The jury found infringement, either literal, contributory or induced, for every accused product on every asserted claim.  The $3.5M damages award was split $1.5M against eSpeed and $2M against Ecco.  And both eSpeed and Ecco were found to have willfully infringed the patents.

Additionally, click here for the final jury instructions.  Of particular interest, the willfulness instruction, at page 35, is likely one of the first that used the new objective recklessness standard from In re Seagate.

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Shen-Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, 2007 WL 2903184 (N.D. Ill. Sep. 28, 2007) (Guzman, J.).

Judge Guzman denied defendant’s motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(b). Defendant argued that plaintiffs sold medical gloves embodying the claims of their patent, U.S. Patent No. 6, 953,582 (the “’582 patent”), to a glove with a coating of a skin-soothing substance in July 1999, approximately two years before the ‘582 patent’s July 1, 2001 critical date. Furthermore, plaintiffs admitted that they sold patented gloves as early as July 1999 by failing to cite any contradictory evidence in their responses to defendant’s Local Rule 56.1 statement.

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Milwaukee Elec. Tool Corp. v. Robert Bosch Tool Corp., No. 05 C 1171, 2007 WL 2875232 (N.D. Ill. Sep. 28, 2004) (Kendall, J.)

Judge Kendall granted plaintiff’s motion to dismiss its Lanham Act case with prejudice and awarded defendant its costs but not its fees pursuant to 15 U.S.C. § 1117(a). The Court held that attorney’s fees were not warranted because the case and its dismissal after substantial fact discovery were not exceptional. Plaintiff dismissed its case because of two significant events which plaintiff believed reduced its likelihood of success.

            First, during discovery Congress passed the Trademark Dilution Revision Act (“TDRA”)* which changed the definition of “famous” such that fame within a niche market was no longer sufficient for dilution. Plaintiff was not certain it could prove fame outside its market. Second, defendant changed the trade dress, and particularly the color scheme, of its accused SKIL line of power tools. Plaintiff believed that defendant’s new trade dress was less similar to plaintiff’s and, therefore, plaintiff’s case was more difficult to prove. The Court accepted plaintiff’s reasoning and, therefore, held that the case was not exceptional. The Court did, however, award costs, which plaintiff had originally agreed it would pay.

* For more on the TDRA, click here for the Seattle Trademark Lawyer’s coverage of the TDRA this week in honor of the TDRA’s first anniversary.

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As I posted yesterday afternoon, the jury came back for Trading Technologies ("TT").  The jury found that eSpeed willfully infringed TT's patents for a six month period in 2004, found the patents valid and awarded $3.5M in damages.  The parties have not completed their bench trial on inequitable conduct.  So, the Court may still hold the patents invalid based upon inequitable conduct, which would render the $3.5M damages award moot.  But unless and until that happens, the award stands and has the potential to be as much as trebled based upon the willfulness finding. 

There has been some press coverage already.  Here is some of the best:

• Crain's Chicago Business
  
• Wall Street Journal (subscription required)
  
• Ad Hoc News
  
• CNN Money (AP story)
  
• Futures Magazine
  
• Reuters

You can read much more about this case and its related cases in the Blog's archives by clicking here.

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Flentye v. Kathrein, No. 06 C 3492, Slip Op. (N.D. Ill. Oct 2, 2007) (Cole, Mag. J.).*

Judge Cole continued defendants’ motion to compel for one week because defendants had not conducted a Local Rule 37.2 conference before filing their motion. But the Court also provided its thoughts on the prosecution of discovery, both in this specific case and generally. The Court noted that after one year of discovery, “not a single document was produced in response to the 70 paragraph document request!”

But what is most interesting about the opinion is the Court’s quotes on various discovery issues. On discovery generally: 

“[D]iscovery is the bane of modern federal litigation.” Rossetto v. Pabst Brewing Co., Inc., 217 F.3d 539, 542 (7th Cir. 2000). It is intrusive, unpleasant, time-consuming and costly. It is, like life itself, “nasty [and] brutish …” Hobbes, Leviathan, Chapt XIII. Unfortunately, it is not generally “short.”

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The jury continued its deliberations yesterday and reconvened this morning.  That is not a very informative update, but based on the Blog's traffic this week people are looking for updates on the case.  And that is all there is right now.

A relative who is a criminal defense attorney, often said that longer jury deliberations benefited the defense.  Of course, when he had a close case and a fast jury, he sometimes thought that benefited the defense also.  It is difficult to read the tea leaves with a jury.  But I will let you know as soon as I learn the jury's verdict.  For more on the case and Trading Technologies' related cases click here for the Blog's archives.

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Dicam, Inc. v. United States Cellular Corp., No. 07 C 5472, Slip. Op. (N.D. Ill. Sep. 28, 2007) (Shadur, J.).*

Judge Shadur sua sponte ordered plaintiff Dicam to dismiss all parties but defendant United States Cellular (“U.S. Cellular”) and one of its five co-defendants. Dicam’s Complaint alleged patent infringement of telephones sold by U.S. Cellular and manufactured by the other five defendants. The Court could find “no legitimate reason” for brining what it believed were five separate suits as one. The Court explained that if Dicam had filed the suits separately, the Court would not have consolidated them pursuant to Local Rule 40.4, although they might have qualified for coordinated discovery. The Court, therefore, ordered Dicam to dismiss four of the five suppliers, without prejudice to refile separate cases against those suppliers. Dicam has since dismissed all but one of the four suppliers and refiled separate cases against each of the four suppliers with U.S. Cellular named as a co-defendant in each case.

* Click here for a copy of the opinion.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04C 5312, Slip Op. (N.D. Ill. Sep. 25, 2007) (Moran, Sen. J.). 

Judge Moran denied plaintiff Trading Technologies’ (“TT”) supplemental summary judgment motion. The Court previously denied the original motions regarding the priority dates of the patents in suit.* In that opinion, the Court held that whether the patents could claim priority from their provisional application was a question of fact for the jury. The issue was whether disclosing the species of a single mouse click in the provisional application was sufficient support for the genus – a single action by the user – claimed in the patents in suit.

TT argued that eSpeed’s expert’s statement that the art – software engineering and user interface design – was predictable, was sufficient to take the patents out of the In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004), exception (unpredictability of a species prevents support of a genus). The Court agreed that the factual issue was predictability of the art. But the Court held that eSpeed’s expert’s statement did not resolve the dispute. A generally predictable art does not mean that one of ordinary skill would understand the patentee’s description of the particular species (one-click) was necessarily in possession of the genus (one action). So the issue went to the jury.

As of this post, the jury still has this case.  I will let you know as soon as I learn the jury's verdict.  For more on this case and Trading Technologies' related cases click here for the Blog's archives.  And keep watching the Blog, while the jury deliberates and the parties try inequitable conduct to Judge Moran this week, I will continue catching up with some prior opinions from the case.

*  To read about the original summary judgment motions click here or for a copy of this opinion click here.

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Trading Technologies (“TT”) and eSpeed rested on the issues of infringement, validity and damages last week, and the jury now has the case.  I attended closings last Thursday. Both sides made strong, persuasive arguments for their desired outcomes. What I thought was most interesting about the closings, from a trial standpoint, was the use of themes. TT’s theme was a story of a boy who eats cookies knowing he is not supposed to and, when his Mom returns and asks him about it, tries repeated lies and distractions to avoid punishment. The story was simple and compelling. Also, it fit well with TT’s case theory, that eSpeed copied its patented software and was simply trying to avoid payment for it. The only problem I saw with the theme, putting aside whether it was supported by the evidence since I did not attend the entire trial, was that it was introduced in the middle of the closing and only referred to sporadically. As a result, even though it was likely a stronger choice of theme than eSpeed’s, it was distracting instead of being integrated into TT’s and, hopefully for TT, the jury’s thinking about the case.

eSpeed’s theme was that TT engaged in a pattern of overreaching, evidenced by exaggerations and partial truths. With each TT witness discussed during its closing, eSpeed identified an alleged exaggeration or partial truth from that witness. eSpeed’s consistent use of the theme was compelling and, although I cannot comment on whether it was supported by the facts at trial, likely resonated well with the jury.

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The parties have rested on the issues of infringement, validity and damages.  Closings were Thursday and the jury now has the case.  I attended the closings.  Look for my thoughts on them Monday morning -- unlike the Northern District, other government offices, the Post Office and many schools, the Blog will be working on Columbus Day.  Judge Moran will hear the inequitable conduct case beginning next week. 

I will let you know as soon as I learn the jury's verdict.  For more on this case and Trading Technologies' related cases in the Blog's archives click here.

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RTC Indus., Inc. v. Haddon, No. 06 C 5734, 2007 WL 2743583 (N.D. Ill. Sep. 10, 2007) (Grady, J.).

Judge Grady denied defendant’s Fed. R. Civ. P. 12(c) motion for judgment on the pleadings. The Court held that plaintiff’s breach of fiduciary duty claim was not preempted by the Illinois Trade Secret Act. Plaintiff alleged that defendant (plaintiff’s employee) violated his fiduciary duty to plaintiff (his employer at the time) by disclosing to third party DCI Marketing (“DCI”) that a DCI employee had accepted an offer to work for plaintiff. The Court held that the alleged acts would breach defendant’s fiduciary duty regardless of whether the hiring decision was confidential. The breach of fiduciary duty claim, therefore, was not preempted.

The Court also held that the non-complete clause defendant signed as a condition of employment was enforceable even though it lacked a geographic restriction. There was a two year time restriction and an “activity” restriction - defendant was only prevented from taking a job with a competitor that would either result in actual or threatened use of plaintiff’s confidential information.

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Eazypower Corp. v. Alden Corp., __ F. Supp.2d __, 2007 WL 2601309 (N.D. Ill. Sep. 6, 2007) (Denlow, Mag. J.)

Magistrate Judge Denlow construed the claims of plaintiff’s patents regarding bits for removing damaged screws and fasteners. Of particular interest, the Court defined “in a place including the axis” as “simply what is says”:  “in a plane including the axis.” Plaintiff argued that the Court should read manufacturing tolerances into the term. But the Court held that manufacturing tolerances could not be read into claim terms citing Senned, Inc. v. Richard-Allan Med. Indus., Inc., 888 F.2d 815 (Fed. Cir. 1989).

Of course, if the specifications and prosecution histories do not limit the doctrine of equivalents, plaintiff will be able to recapture products that would meet the “in a plane including the axis” but for manufacturing tolerances.

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Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 04 C 5312, 2007 WL 2713335 (N.D. Ill. Sep. 12, 2007) (Moran, Sen. J.).

Judge Moran granted in part plaintiff Trading Technologies’ (“TT”) motion in limine, precluding defendant eSpeed from arguing to the jury that any feature requiring the specific sequence – a double mouse click, keying in a value and pressing the enter key – fell within the Court’s construction of a “single action.”* The Court reasoned that it defined single action from the perspective of the software end-user. And from the user prospective the double-click/quantity/enter sequence was clearly more than a single action.

The Court acknowledged that taking this decision from the jury was “unusual,” but the Court believed its decision was warranted because of the complexity of the case and how clearly outside the construction of single action the double-click/quantity/enter sequence was: 

The parties have no lack of theories, especially when it comes to invalidity and prior art. Therefore, as we are convinced that it would be impossible for a reasonable jury to find that the three steps described by eSpeed’s attorney could fit into our definition of single action, we grant TT’s motion to exclude evidence that it does. Rather than throw a non-starter at the jury or deal with this issue during post-trial motion practice, we exclude the evidence from the start. Although our decision is nearly akin to a partial summary judgment ruling, we are convinced that it is correct, it will save precious judicial resources, and simplify the case for the jury.  (Citations and footnotes omitted).

I understand that the trial is ongoing.  I am hoping to make it to closing arguments and will post about them if my schedule allows me to see them. 

* Click here to read much more about this case and its related cases in the Blog’s archives.

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Top Tobacco, L.P. v. North Atlantic Op. Co., No. 08 C 950, 2007 WL 2688452 (N.D. Ill. Sep. 6, 2007) (Kennelly, J.).

Judge Kennelly previously granted defendant summary judgment on all claims in this trademark infringement case regarding plaintiff’s “TOP and “Fresh-Top Canister” marks and awarded defendant’s attorneys’ fees pursuant to 15 U.S.C. § 1117(a).* The Court reduced the rates charged by defendant’s counsel Kirkland & Ellis’ summer associates from $185 to $125, more in line with paralegal rates. The Court acknowledged that Kirkland & Ellis’s attorneys showed skill “commensurate with its… high rates,”** but reduced Kirkland & Ellis’s rates because that skill did not result in the time savings (as required by the Seventh Circuit). Kirkland & Ellis billed roughly 30% more hours than plaintiff’s counsel. The Court, therefore, reduced Kirkland & Ellis’s rates to those charged by plaintiff’s counsel.

* Click here to read more about this case and related cases in the Blog’s archives.

** Having worked with Kirkland & Ellis’s lead counsel on this matter, Paul Garcia, I can confirm the Court’s praise.

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Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., No. 05 C 3684, 2007 WL 2570351 (N.D. Ill. Sep. 4, 2007) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted plaintiff Ball Aerosol & Specialty Container (“BASC”) summary judgment on the issue of patent damages, held that the case was exceptional and then doubled some of the damages and trebled the remainder. The Court previously construed the claims of BASC’s patent for a candle tin with a cover that can be used as a base and granted plaintiff summary judgment of infringement. In this opinion, the Court weighed the Georgia Pacific factors and held that they warranted a royalty rate of 20%. This rate represented an increase over the 17% rate BASC argued it would have granted in an arms-length negotiation to compensate BASC for the compulsory license. The Court then found that the case was exceptional because, among other reasons, defendants continued selling infringing product after the Court granted summary judgment of infringement. Based on the exceptional case holding, the Court doubled the damages from sales before the Court granted BASC summary judgment of infringement and trebled the damages for all sales after summary judgment.

Summary judgment of damages is a fairly rare occurrence. A quick review of the docket does not suggest that the parties waived their right to a jury. So, the facts in this case must have been very strong.

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