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

The Chicago Tribune has had a few IP-related articles this week. First, the Tribune reported – click here for the story -- that the House is about to take up a bill that would allow an abbreviated approval process for generic versions of biotech drugs, commonly known as biosimilars or biogenerics, similar to abbreviated new drug applications. The Senate Health, Education, Labor and Pensions Committee approved a similar bill in June, called the Biologics Price Competition and Innovation Act of 2007.

Second, the Tribune reported – click here for the story – about a new book, "The Telephone Gambit: Chasing Alexander Graham Bell's Secret," by Seth Shulman -- which argues that Alexander Graham Bell, one of America’s most famous patentees, stole his most famous invention, the telephone, from his rival Elisha Gray. And Shulman argues that he was aided by attorneys and a corrupt patent examiner.  The book is due out January 7. It looks like it could be an interesting read.

Third, the Tribune reported – click here for the story -- that the Federal Circuit reversed in part the Western District of Wisconsin’s April 2007 decision which held that Google’s AutoLink and AdSense feature did not infringe HyperPhrase’s patents. The Court upheld Judge Shabaz’s decision that AdSense did not infringe the patents and remanded the case for further proceedings regarding whether the AutoLink feature infringed two of the patents in suit. Click here for a copy of the Federal Circuit decision.

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Congress enacted the Trademark Dilution Revision Act (the "TDRA") about one year ago in an effort to resolve numerous open trademark issue.*  Many believe that the TDRA has opened more questions than it answered.  The University of Michigan Law Review's First Impressions blog recently addressed those issues with a series of articles:

• Dilution's (Still) Uncertain Future
  Graeme Dinwoodie, Chicago-Kent College of Law
  Mark Janis, University of Iowa College of Law
  Looking at the litigation history of trademark dilution.

• What is Dilution, Anyway?
  Stacey Dogan, Northeastern University School of Law
  Considering the underlying meaning of dilution.

• The Trademark Dilution Revision Act of 2006: A Welcome — and Needed — Change
  Dale Cendali & Bonnie Schriefer, O'Melveny & Myers LLP
  Explaining why the TDRA clarifies and strengthens First Amendment protections.

• The Dilution Solution: Populating the Trademark A-list
  Scott Wilcox, University of Michigan Law School
  Looking at the court as arbiters of fame.

*  For more on the TDRA, click here for the Blog's archives and click here for the Seattle Trademark Lawyer’s coverage of the TDRA's first anniversary.

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The Chicago Tribune reported last week -- click here for the story -- that Northwestern University received $700M from Royalty Pharma in exchange for certain of Northwestern's royalty rights to its patents covering pregabalin.  Pregabalin is a key component of Pfizer's Lyrica, which is used to treat nerve pain associated with diabetes, shingles and fibromyalgia.  Northwestern plans to use some of the money to fund its new nanotechnology initiative.

I will be on a panel at Northwestern's IP Law Week next month.  Perhaps in light of Northwestern's new found wealth I should have requested a speaker's fee.  Seriously though, this will be a great event and is worth your time if you are in town.  They have not published their literature on the event yet, but as soon as they do I will post it.

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Easypower Corp. v. Alden Corp., __ F. Supp.2d __, 2007 WL 4191837 (N.D.Ill. Nov. 21, 2007) (Denlow, Mag. J.).

Judge Denlow denied defendant Alden Corp.’s (“Alden”) motion for reconsideration of the Court’s construction of “acute angle relative to the axis.” The Court’s construction required an angle less than 90°, and further required that if there were two or more angles, any two angles together be greater than 90°. Alden argued that the requirement regarding two or more angles was improperly read into the claim without support in the specification. But the Court held that the limitation was required based upon the clear language of the specification. Additionally, the Court noted that the parties were given ample opportunities to argue the issue, both on the papers and during the Markman hearing.

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As usual, on a holiday I take a break from posting about cases and bring you a holiday-themed patent.  U.S. Patent No. 7,175,302 covers a string of LED lights with selectable colors so that you can string lights once and use them for Christmas, Thanksgiving, Fourth of July or to support your favorite sports teams --  sadly, no need for Super Bowl lights this year Bears fans.

Merry Christmas.  I hope the holiday finds you enjoying time with family and not writing briefs or preparing for trial.

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Aharonian v. Gutierrez, No. 07-1224, 2007 WL 9282064 (D.D.C.) (Robertson, J.).

The District Court for the District of Columbia (“D.D.C.”) recently dismissed a suit seeking the dismissal of the PTO’s Deputy Director Margaret Peterlin for lack of sufficient experience. The D.D.C. held that the Act establishing Ms. Peterlin’s position did not create a private cause of action for removal and the Administrative Procedure Act did not allow for review of the appointment. 

There is little I can say about the decision that has not already been said. For more check out:

• 271 Patent Blog
• I/P Updates
• Maryland IP Blog
• Patently-O

But I can add a human element to the issue. I know Ms. Peterlin.  I have met her in social settings (she and my wife were law school classmates). My limited interactions with her made clear to me that while she may not have the IP-specific experience that might be ideal, Ms. Peterlin is as capable as anyone without that background to learn the law and do an excellent job.

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Goss Int'l Am., Inc. v. Graphic Management Assocs., Inc., No. 05 C 5622, 2007 WL 161684 (N.D. Ill. Oct. 9, 2007) (Valdez, Mag. J.).*

Magistrate Judge Valdez granted in part the parties’ cross motions to compel various discovery. Each party’s alleged waived privilege is of particular interest. The Court denied plaintiff’s motion to compel all documents reflecting defendants’ trial counsel’s** mental impressions of the case, whether or not they were shared with defendants. In light of In re Seagate, the Court held that defendants’ reliance upon advice of counsel does not waive its privilege as to trial counsel’s mental impressions not communicated to defendants. 

The Court denied in part defendants’ motion to compel all previously privileged documents related to prosecution of the patent in suit. Defendants alleged that plaintiff’s production of a Record of Invention document prepared by the inventors at counsel’s direction and request waived privilege. The Court held that plaintiff intentionally waived privilege by disclosing the document, but limited the waiver to documents related to development of plaintiff’s invention.

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

** It is not entirely clear, but it appears from the opinion that defendants used the same firm or attorneys for both opinion counsel and trial counsel.

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Cement-Lock v. Gas Tech. Institute, No. 05 C 0018, 2007 WL 3374401 (N.D. Ill. Nov. 8, 2007) (Pallmeyer, J.).

Judge Pallmeyer granted in part defendants’ summary judgment motion. This is a dispute over the control and use of Cement –Lock technology (the “Technology”) which decontaminated certain waste products and used the decontaminated waste as a beneficial cement additive. Plaintiffs Cement-Lock LLC and Richard Mell, a Chicago Alderman, brought this derivative action on behalf of the Cement-Lock Group (“CLG”) which owns the Technology. Plaintiffs asserted various IP claims, including Lanham Act unfair competition, deceptive trade practices and trademark infringement. This opinion focused primarily on plaintiff’s state law claims, including alleged breach of fiduciary duties. So, I will not address most of the opinion, but I will discuss the most IP-related breach of fiduciary duty allegations. Plaintiffs alleged that defendants permitted defendant Gas Technology Institute (“GTI”) to secure funding for Technology-related activities, despite defendants’ knowledge that GTI had no license to use the Technology and kept knowledge of the funding from CLG. GTI also allegedly claimed to own and have developed the Technology. The Court held that there was no written license between CLG and GTI regarding the Technology. But there was a question of fact as to whether GTI’s efforts to secure finding for the Technology was improper. Additionally, there was a question of fact as to whether GTI misrepresented its ownership or control over the Technology.

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Tamburo v. Dworkin, No. 04 C 3317, 2007 WL 3046216 (N.D. Ill. Oct. 9, 2007) (Gottschall, J.).

Judge Gottschall granted defendants’ motion to dismiss for lack of personal jurisdiction. Plaintiffs sell a dog breeding and pedigree software program and sought, among other things, a declaratory judgment that certain allegedly factual information (date of birth, gender, parent’s names, titles, color, medical information, etc.) included in its pedigree database was not copyrightable and, therefore, could not be infringed by plaintiffs. Defendants either offer allegedly competing software or are dog breeders who use such software. The Court held that it lacked general or specific jurisdiction over each of the defendants. There was no general jurisdiction because plaintiffs identified, at most, minimal interactions with and sales to Illinois residents. And defendants various websites were not sufficiently targeted to Illinois to alone create general jurisdiction. The Court similarly found that it lacked specific jurisdiction. Of particular interest, the Court held that defendants’ posts to internet chat groups and message boards could not create specific jurisdictions. The posts allegedly accused plaintiffs of theft and trafficking in stolen goods, among other things. The Court held that, while the Seventh Circuit had not addressed the issue or expressly adopted the Zippo sliding scale analysis, posts to internet chat rooms and message boards would fall below passive websites, which make up the bottom of the Zippo scale. Defendants are not alleged to own the chat rooms or to use them to transact or target business within Illinois. The Court reasoned that a holding that specific jurisdiction was created by postings to chat rooms would make jurisdiction boundless because the chat rooms have no geographic restrictions.

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Papst Lic. GmbH & Co. KG v. Fujifilm Corp., No. 07 C 3401, Slip Op. (N.D. Ill. Nov. 27, 2007) (Holderman, C.J.).

Judge Holderman transferred this case to the District of the District of Columbia (“D.D.C.”) pursuant to an order of the Multidistrict Litigation Panel (“MDL Panel”). Plaintiff Papst Licensing (“Papst”) sought centralization pursuant to 28 U.S.C. Section 1407 of this case and four others – two in the D.D.C, one in the District of Delaware and on in the District of New Jersey. The MDL Panel centralized the cases, but centralized them in the D.D.C., instead of the Northern District. The first, and the most advanced, of the cases was pending in the D.D.C. And the MDL Panel held that the East Coast would be the most convenient location for the majority of the parties.

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Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Viachem, No. 07 C 4232, Min. Order (N.D. Ill. Nov. 21, 2007) (St. Eve, J.).

Judge St. Eve granted in part plaintiff’s motion to compel various discovery. The Court ordered defendants to produce various once-privileged documents disclosed to unidentified customers pursuant to an alleged common interest privilege. The Court acknowledged that common interest could protect such disclosures. But defendants failed to identify the specific customers that were shown documents, which documents were disclosed or when the disclosures occurred. On that record, the Court could not find that defendants had maintained the privilege. 

The Court also ordered defendants to update their privilege log to identify any attorneys on the log. And the Court ordered the parties to meet and confer regarding uncrystalized disputes over defendants’ answers to some interrogatories.

Practice Tip: It is the rare judge that appreciates discovery motions, let alone motions where the parties did not identify what the actual issues were. It is very important to follow both the letter and the spirit of Local Rule 37.2 meet and confers.

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Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Viachem, No. 07 C 4232, Min. Order (N.D. Ill. Nov. 27, 2007) (St. Eve, J.).

Judge St. Eve granted in part plaintiff’s Fed. R. Civ. P. 12(e) motion for a more definite statement regarding defendant The Ingredient House’s (“TIH”) affirmative defenses and counterclaim. The Court ordered TIH to amend its patent misuse affirmative defense to provide factual allegations outlining the alleged misuse. TIH’s original defense simply stated that plaintiff’s claims were “barred by patent misuse.” The Court also ordered TIH to amend “incongruous statements” in its pleading that appeared to be clerical errors.

The Court denied plaintiff’s motion as to TIH’s defamation counterclaim. TIH was not required to plead which state’s law governed TIH’s defamation claim.

Practice Tip: Defendants frequently plead affirmative defenses with an unsupported statement of the defense. The better practice, and the one that avoids Rule 12(e) motions, is to plead at least the basic facts underlying the defense.

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With Patent Reform not expected to be considered by the full Senate before January 2008, the House appear to be turning its focus to copyright reform.  The Maryland Intellectual Property Law Blog has a series of posts on the new copyright legislation (click here and here to read them).  The most recent bill would prevent lawsuits from being dismissed for unintentional errors in copyright registration forms and would give courts discretion to treat compilations as more than one work for statutory damages purposes.  Treating compilations* as multiple works for damages is significant because it increases the potential award for infringing a compilation from a maximum of $150,000 (the maximum willful infringement award for a work) to multiples of $150,000 depending on how many separate works the court determines the compilation to be.

*  Compilations are grouped works such as collections of short stories, magazines with multiple articles or databases.

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Here is some recent Northern District news:

• Judge Coar recently updated his case management procedures (click here to read them) to state that pursuant to Local Rule 5.2(e), parties are no longer to provide courtesy copies of electronically filed papers to Judge Coar's chambers, except for papers pertaining to Fed. R. Civ. P. 56 or Local Rule 56.1 (summary judgment papers).
  
• Magistrate Judges Brown (Eastern Division -- Chicago) and Mahoney (Western Division -- Rockford) are both up for reappointment in early 2008.  Pursuant to federal law, the Court has established a citizen's panel to consider their reappointments.  Members of the bar, as well as the general public, are requested to forward comments regarding the reappointments no later than January 18, 2008, to:

Magistrate Judge Advisory Panel
c/o Mr. Michael W. Dobbins
Clerk of Court
U.S. District Court
219 South Dearborn St. -- Rm. 2050
Chicago, IL 60604

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Late last week, President Bush signed the appointment papers for the Northern District's newest judge, the Honorable Robert M. Dow, Jr.  Judge Dow was sworn-in last Friday by Chief Judge Holderman and is sitting in the Northern District's Eastern Division.  Here is some biographical information about Judge Dow from the Northern District’s announcement of his appointment (click here for the announcement):

From 1993 to 1994, Judge Dow served as Law Clerk to The Honorable Joel M. Flaum of the United States Court of Appeals for the Seventh Circuit. Since 1995, Judge Dow has been employed at Mayer Brown, LLP, where he specialized in general and appellate litigation, with particular emphasis on telecommunications, state and federal constitutional law, jurisdiction, civil procedure, preemption, mass tort and products liability, admissibility of expert testimony, and class actions. Judge Dow has been acclaimed as a “superb” lawyer in the field of communications and technology law, as recognized by Chambers USA's Guide to America's Leading Business Lawyers. In his spare time, Judge Dow serves as Secretary for the Committee of Selection for the Rhodes Scholarships, State of Illinois, and on the Development and Academic Committees of Joliet Catholic Academy. Judge Dow was himself named a Rhodes Scholar in 1990. 

Judge Dow has had a distinguished academic career, with degrees from Yale University (B.A., 1987), University of Oxford (M. Phil. in International Relations, 1990; D. Phil. in International Relations, 1997), and Harvard Law School (J.D., 1993). While at Harvard Law School, in addition to graduating with honors, Judge Dow served as supervising editor of the Harvard Journal on Legislation, a member of the Editorial Board for the Harvard Human Rights Journal, and a Teaching Fellow at Harvard College.

Welcome to the Northern District Judge Dow. Judge Dow’s investiture ceremony is scheduled for Friday, January 11, 2008 at 4:00 pm.

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Krueger v. TradeGuider Sys., LLC, No. 07 C 6261, Slip Op. (N.D. Ill. Nov. 27, 2007) (Kendall, J.)*

Judge Kendall granted plaintiff Todd Krueger’s (“Krueger”) motion to remand this breach of Employment Agreement (“Agreement”) suit to Cook County Circuit Court. Krueger originally filed his Complaint in Cook County Circuit Court. Defendants (collectively “TradeGuider”) remanded the case to the Northern District, arguing that Krueger’s claim for breach of the Agreement, which governed his employment as TradeGuider’s CEO, was a federal copyright claim. TradeGuider reasoned that determining whether it had breached the Agreement required a determination of whether Krueger’s works were works for hire. The Court cited the Seventh Circuit’s narrow view of copyright preemption for contract claims – generally a contract involving copyrights is of a different scope than the copyrights because the contract is a private agreement between parties and a copyright is a right against the world. The alleged breach, therefore, was not essentially a copyright claim because it included rights beyond the copyright. Additionally, the Court reasoned that there was no evidence that suggested any copyright law would have to be interpreted to construe the contract or rule upon the alleged breach.

*Click here for a copy of the opinion.

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The Senate's Judiciary Committee set Judge Filip's confirmation hearing for Wednesday, December 19.  That is pretty quick turn around for this Senate and all indications are that Judge Filip will be confirmed.  Congratulations Judge Filip, the Northern District will miss you.

A tip of the hat to the BLT Blog for pointing us to the news.

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As promised last week, here are highlights of the substantive changes to the Federal Rules of Civil Procedure that went into effect last Saturday, December 1st:*

• New Rule 5.2 Privacy Protection  This rule limits what personal information can be left in public pleadings without redaction, unless a court orders the information to be publicly filed. Public filings may only include:  the last four digits of a social security number, tax identification number or other financial account number; the year of a person’s birth; and the initials of known minors (not whole names). All other information must be redacted or left out of the papers.

• Rule 11 Signing Pleadings  Signature blocks on all filings must now include an email address, in addition to counsel’s or a pro se party’s phone number and physical address. The comments to Rule 11 note that inclusion of an email address is a courtesy and is not an automatic consent to email service. For that, you still have to get a separate agreement with the opposing party.

• Rule 26 Discovery  As with Rule 11, signature blocks on all discovery papers must now include an email address, in addition to counsel’s or a pro se party’s phone number and physical address. The comments to Rule 26 note that if a party lacks an email address, a physical address or a telephone number, the party need not supply the nonexistent information. So, at least Rule 26 does not require that counsel get email accounts.  But Rule 11 does not have the same exception, so arguably Rule 11 does require that counsel have email accounts.

* This is only a summary of the substantive changes that I found most interesting or important. It is not a detailed explanation of all substantive changes.  For example, I did not explain the changes to Fed. R. Civ. P. 4 regarding summonses. If you want detailed advice regarding the Federal Rules, please consult your attorney or dig in to your copy of the Federal Rules.

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On Sunday, the Chicago Tribune reported on the latest round of the Sugar v. Splenda fight (click here for the article).  An initial hearing was scheduled for yesterday in the Central District of California regarding the suit five U.S. sugar companies -- American Sugar Refining Inc., C&H Sugar Co. (owned by American Sugar), Imperial Sugar Co., Rio Grande Valley Sugar Growers Inc. and Western Sugar Cooperative (collectively "Sugar Companies") -- brought against Johnson & Johnson's McNeil Nutritionals ("McNeil") which makes Splenda.  Splenda is a sugar substitute which McNeil advertises with the tagline, "tastes like sugar."  The Sugar Companies alleged that the "tastes like sugar" advertising campaign was false advertising in violation of the Lanham Act.  And they further alleged that McNeil continued its advertisements despite knowledge that consumers were confused.  McNeil countered that consumers were not misled by its advertisements.

The parties have engaged in various out-of-court disputes as well as this action and the two cases already settled, one in France and one in the United States.  For example, the parties maintain opposing websites regarding Splenda:  McNeil's is www.splendatruth.com and the Sugar Companies maintain www.truthaboutsplenda.com. 

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RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, Min. Order (N.D. Ill. Sep. 10, 2007) (Coar, J.).*

Judge Coar denied the parties’ damages motions in limine.* First, the Court held that defendant Sears, Roebuck & Co. (“Sears”) could have its damages expert Catherine Lawton testify regarding her analysis of a hypothetical September 2001 negotiation between the parties. Plaintiff RRK Holding (“RRK”) argued that the misappropriation began in March 2000, not when Sears began selling its product in September 2001. As a result, Sears contended that Lawton’s September 2001 hypothetical negotiation should not be allowed into evidence. But the Court held that the timing of the misappropriation was a question of fact for the jury and, therefore, allowed Lawton’s testimony.

Second, the Court held that Sears could introduce the 2003 sale of some of RRK’s assets for $17M as part of Sears’s damages case. The Court held that the value of the sale was relevant to RRK’s alleged injury based upon the alleged misappropriation.

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WMH Tool Group, Inc. v. Woodstock Int’l, Inc., No. 07 C 3885, Slip Op. (N.D. Ill. Nov. 14, 2007) (Darrah, J.).*

Judge Darrah denied defendants’ Fed. R. Civ. P 12(b)(6) motion to dismiss plaintiff WMH Tool Group’s (“WMH”) Lanham Act dilution claim and its related Illinois Consumer Fraud and Deceptive Business Practices Act (“Consumer Fraud Act”) claim. WMH registered a trade dress for the color white on its woodworking and metal working products, sold under its JET brand. WMH alleged that its white trade dress was both famous and exclusively associated with WHM’s tools. WMH further alleged that defendant Woodstock International (“Woodstock”) diluted WMH’s trade dress by selling woodworking and metal working tools in WMH’s distinctive white color under Woodstock’s Shop Fox brand. Similarly, WMH alleged that defendant Grizzly Industrial (“Grizzly”) diluted WMH’s trade dress by selling woodworking and metal working tools in WMH’s distinctive white color under Grizzly’s Grizzly or Grizzly Industrial brands. 

Defendants argued that WMH did not state a claim for dilution because the complaint did not specify the date when WMH’s trade dress became famous and that defendants’ allegedly infringing sales began after that date. But the Court held that notice pleading did not require that WMH plead specific dates. It was enough that WMH pled that the trade dress had become famous and that defendants' infringement of the trade dress occurred after the fame was acquired.

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