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

LimitNone v. Google, Inc., (Cook County Ct. Jun. 24, 2008).

Last week, LimitNone, a Chicago company, sued Google for trade secret misappropriation seek $1B.  LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone's gMove software -- software that helps Microsoft Outlook users migrate data to the Google platform.  Google allegedly assured LimitNone that it would not offer a competing product, but after receiving LimitNone's trade secrets and promoting the $19 gMove software, Google began offering a free, competing software package which allegedly used LimitNone's trade secrets.  LimitNone filed a speaking complaint, for example:

With gMove priced at $19 per copy and Google's prediction that there were potentially 50 million users, Google deprived LimitNone of a $950m opportunity by offering Google's competitive product for free as a part of its 'premier' Google Apps package

This appears to be an interesting and potentially significant case.  I will keep my eye on it and update you as opinions and events occur.  For more on the filing, check out:

• Chicago Tribune
  
• Slashdot
  
• Tech Report
  
• ZDNet

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Team USA placed an impressive third in the international Patent Cup Regatta, skippered by Chicago patent attorneys Gary Ropski, President of Brinks Hofer, and Leif Sigmond, a former Managing Partner at McDonnell Boehnen Hulbert & Berghoff ("MBHB").  This year's Cup was held in Venice, Italy on the Adriatic Sea.  Ropski's and Sigmond's crew included:  Marcus Thymian and Michael Gannon , MBHB attorneys; Derek Minihane , in-house counsel at Intermolecular; and Michael Pophal, in-house counsel at Energizer.  Congratulations Team USA!

The Cup was created in 1989 by a German patent attorney and a French patent attorney to foster camaraderie and relationships among IP lawyers internationally.  The Cup is held in a different country each year, with the host country organizing the event, providing vessels and setting the rules.  Chicago hosted the Cup in 2006, and Ropski's and Sigmond's crew won the Cup that year.

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Wound Care Educ. Institute v. Thomas, No. 07 C 6505, Slip Op. (N.D. Ill. Jun. 17, 2008) (Conlon, J.).

Judge Conlon denied defendants' (collectively “Wound Care Plus”) motion to dismiss plaintiff Wound Care Education Institute's (“WCEI”) trademark and copyright infringement case for lack of personal jurisdiction, improper venue and forum non conveniens. WCEI provided wound treatment education to health professionals across the country using copyrighted materials, and is largely based in the Northern District. It alleged that Wound Care Plus attended three of its seminars and then began running competing seminars, including at least one in Chicago, using course materials that were substantially similar to or exact copies of WCEI's copyrighted course materials. Wound Care Plus also operated a website which allowed its customers to register online for the Wound Care Plus seminars.

Personal Jurisdiction

The Court held that it had specific personal jurisdiction over Wound Care Plus, a New York resident, because it advertised its Chicago seminars in national publications seeking to register Illinois customers. Additionally, Wound Care Plus's website created jurisdiction because it was an active, commercial website that allowed Wound Care Plus's customers to register for, among others, its Chicago seminar online.

Venue

Venue was proper in the Northern District, despite the fact that Wound Care Plus did not reside in Illinois because a substantial part of the events giving rise to WCEI's claims, the Chicago seminars, occurred within the Northern District.

Forum Non Conveniens

The Court noted that the motion should have been brought pursuant to 28 U.S.C. Section 1404(a), instead of the common law forum non conveniens.  Forum non conveniens was inapplicable to this case because the alternate forum was not abroad or a state court. 

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Bral Corp. v. CMN Comps. Inc., No. 07 C 7029, 2008 WL 2062494 (N.D. Ill. May 13, 2008) (Gettleman, J.).

Judge Gettleman denied defendant CMN's Fed. R. Civ. P. 12(b)(1), (6) & (7) motion to dismiss. Plaintiff Bral alleged that it was the exclusive supplier, with limited exceptions, for certain cartridges third party Johnstown used in its patented MegaFlow Door System for coal-carrying railroad cars. Despite knowledge of the exclusive relationship, CMN allegedly offered to provide Johnstown the cartridges at reduced prices, thereby interfering with Bral's contract with Johnstown.

First, CMN argued that the claim should be dismissed because it was not ripe until Bral resolved its breach of contract dispute with Johnstown. But it was sufficient that Bral pled a breach. Bral need not sue Johnstown to make its claim, it just had to prove the agreement was breached.

Continue Reading...

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Fernandez Innovative Techs., LLC v. General Motors Corp., No. 07 C 1397, 2008 WL 2168843 (N.D. Ill. May 23, 2008) (Kendall, J.).

Judge Kendall construed the claims of plaintiff's U.S. Patent No. 6,963,899 related to vehicle telematics – systems like the accused products Onstar and Lexus Link. Construction of the two terms were of particular note:

Real Time

Through the claim construction hearing the parties agreed that "real time" meant continuous. But after the hearing, plaintiff filed a motion arguing that real-time meant "contemporaneous." The Court allowed defendants a responsive submission, and then adopted plaintiffs' construction because it comported with the intrinsic evidence and dictionary definitions better than defendants' construction did.

Selects and Downloads

The Court held that neither party's construction of "selects and downloads" was consistent with the agreed upon construction of related term "selects and sends." The Court, therefore, gave the parties fourteen days to meet and confer, and then either submit an agreed upon construction, or individual revised constructions.

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The Northern District started making copies of requested court transcripts (not depositions) available online via Pacer – click here for the Northern District's statement on its new transcript procedures. This is great news for Northern District litigators and litigants. It will be much easier to get information about ongoing cases and, in time, prior cases, information that used to require calls to court reporters or prior counsel.

But the online transcripts also create additional responsibilities.* Pursuant to recently added Fed. R. Civ. P. 5.2 (click here for the Blog's discussion for 5.2), certain personal information – social security numbers, identities of minors, and financial account numbers, for example, must be redacted from filed papers. Counsel for a party has twenty one days after a transcript is filed to e-file a Transcript Redaction Request that specifically identifies the information to be redacted and its exact location within the transcript. Also, the request cannot fully list the information to be removed, because that would require redaction of the Redaction Request.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312 (N.D. Ill. Jun. 13, 2008).

The Court held that its May 22 permanent injunction against defendant eSpeed (click here for the Blog's post on the injunction) was a final judgment, which allowed for appeal to the Federal Circuit.  Anyone reading the Blog's recent posts regarding the Court's permanent injunction against eSpeed, and eSpeed's appeal of the injunction as well as plaintiff Trading Technologies' ("TT") cross-appeal, might have assumed that the Court had entered a final judgment.  eSpeed apparently did because it filed an appeal of the permanent injunction to the Federal Circuit (click here for the Blog's post on the issues on appeal).  TT filed its broader appeal shortly thereafter (which eSpeed objected to as untimely because the Court had not entered a final judgment on anything beyond the permanent injunction), but disagreed that the Court had entered a final judgment on any issue.  TT, therefore, also filed an emergency motion requesting that the Court vacate its permanent injunction, rule on the parties' cross-motions for attorney's fees (the Court now has ruled on those motions, click here for the Blog's post about that decision) and then reenter the permanent injunction along with final judgment.*

This may seem like irrelevant procedural posturing, but TT explains the appellate rules implications in its emergency motion:

The rules state that the first-filed notice of appeal is the appellant, but when both parties file an appeal on the same day, the plaintiff is deemed the appellant. F.R.A.P. 28.1. Where there is a cross-appeal, the appellant has the advantage of having higher word limits in its briefs and also files the first brief focused solely on the issues it seeks to appeal. The general rule is that a plaintiff, like TT here, has the right to be an appellant if it wants to appeal an issue.

The Court did not directly rule on TT's motion, but effectively decided it by entering this Minute Order stating that its May 22 permanent injunction was a final judgment effective May 22.  The Clerk, who subsequently entered final judgment on all issues effective May 22, and the parties -- eSpeed filed a notice of appeal of all issues rather than its initial appeal of just the injunction -- treated the final judgment as relating to all matters before the Court, which makes both parties' appeals timely.  According to TT's above analysis, because TT filed its appeal after but on the same day as eSpeed, TT will be appellant and eSpeed will be the cross-appellant.

For those concerned that the Blog might be silent about this case for months, have no fear.  The related cases continue and I will continue blogging about both the related cases and the appeal.

*  Click here for TT's emergency motion, click here for eSpeed's response, and click here for TT's reply. Also, click here for much more on this case in the Blog's archives.

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Counsel on Call is putting on a two hour seminar next Wednesday, June 25, titled “Were You Born to Blog?”  It is being held in Counsel on Call's office at  from 3:00-5:00 pm. 

The panelists are three (relatively) local bloggers with great credentials:

• Mark Herrmann of Jones Day and the Drug & Device Law Blog;
  
• Patrick Lamb of the Valorem Law Group and the In Search of Perfect Client Service blog; and
  
• John Wallbillich of  Lexvista Partners and the Wired GC.

According to Wallbillich, they will "pull the veil back a bit and give a real-world view of why legal blogging matters, where it is going and how it can be used by firms and in-house law departments to foster service delivery and collaboration."  These guys are each excellent bloggers.  I have no doubt the program will be well worth the time.  And although I am already sold on the value of blogging, I will try to attend.

Program and registration information is here.

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According to this Northern District press release, the Illinois Broadcasters Association ("IBA") honored the Northern District's Court Information Officer Joel Daly with one of two inaugural Illinois Broadcast Pioneer Awards.  The award honored Daly's fifty year broadcasting career.  Here is some of what the IBA had to say about Daly:

Joel Daly, one of the most recognizable names in Chicago broadcasting, co-anchors ABC 7’s 4 p.m. newscast, alongside Linda Yu, and serves as a reporter for ABC 7 News. The ABC 7 News at 4 p.m. is the top rated newscast in its time period.

                                                      * * *

Inducted into the Chicago Journalism Hall of Fame in 2003 as a “living legend,” Daly has won five Chicago Emmy Awards, including a citation for nightly commentary, a citation for “highlighting the genuine humanity and humor in the day’s happenings,” and an award for excellence in writing. He twice received the Herman Kogan Award from the Chicago Bar Association and the NATAS Silver Circle Award. His commentaries were also honored with the 1973 Liberty Bell awarded from the Chicago Bar Association and the 1974 Human Relations award from the American Jewish Congress.

In addition to his role as newscaster, Daly is active in music and theater. He appears yearly in the “Christmas Spirits” revue of the Chicago Bar Association and is part of a repertory company that regularly produces radio plays at the Museum of Broadcasting. He was critically lauded for his 1994 role as Atticus Finch in “To Kill a Mockingbird” at Chicago’s Wisdom Bridge Theater. Daly also shone in “Darrow,” a one-man play about the legendary Clarence Darrow, and as the lead character in William Kennedy’s Grand View” at the Pegasus Theater.

Click here to read more about Daly's impressive credentials from the IBA.

Congratulations Joel.  You are an outstanding broadcaster and have done an excellent job establishing your role as the Northern District's media contact and liaison.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 22, 2008) (Moran, Sen. J.).*

Judge Moran denied the party's cross motions for attorney's fees. Plaintiff Trading Technologies (“TT”) argued that the case was exceptional. But the Court held that it was not for the following reasons:

• eSpeed's refusal to admit infringement was reasonable. A defendant requiring plaintiff to make its proofs does not alone make a case exceptional.
  
• eSpeed's decision not to agree to an interlocutory appeal of claim construction and noninfringement decision was not grounds to make the case exceptional. Although eSpeed argued against an interlocutory appeal, the Court made the ultimate determination.
  
• eSpeed's pursuit of its inequitable conduct claim, which it lost after a bench trial, did not make the case exceptional. In the Court's opinion regarding inequitable conduct, the Court ruled for TT, but noted that eSpeed's case was not frivolous – click here to read the Blog's post about that opinion.
  
• The jury's willfulness finding did not make the case exceptional. This was especially true because the Court overturned the jury's willfulness decision based upon In re Seagate – click here to read the Blog's post about that case.

The Court noted that neither party in this case acted more outrageously than the other. Counsel for both parties were zealous advocates that pushed, but did not go beyond, the envelope.

Continue Reading...

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Lorillard Tobacco Co. v. Elston Self Service Wholesale Groceries, Inc., No. 03 C 4753, Slip Op. (N.D. Ill. May 13, 2008) (Ashman, Mag. J.).

Judge Ashman granted in part plaintiff Lorillard's motion to strike defendant Elston's expert report. Lorillard alleged that Elston, in violation of the Lanham Act and state law, knowingly bought and sold counterfeit Newport cigarettes. Elston offered an expert to opine on three general subjects: (1) customs and practices in the cigarette industry; (2) Elston's cigarette purchasing history; and (3) whether the prices of the allegedly counterfeit cigarettes would have made it obvious to Elston that the cigarettes were counterfeit.

The Court held that the expert's seven years in the cigarette industry and subsequent consulting were sufficient to qualifying him as an expert in the custom and practice of the industry. But the Court struck the remainder of the expert's opinions. His opinions regarding Elston's purchasing history were based solely on produced documents. And the jury could glean the same information from its review of the documents. The expert's opinions regarding Elston's subjective reaction to the price difference were struck because they were beyond both the expert's expertise and his personal knowledge.

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Blawg Review #164 is up at cearta.ie (cearta is roughly translated as "rights").  Posted on Bloomsday, the post's theme is the works of James Joyce.  In addition to a great piece of writing around a great theme, there is a strong IP component to the review focused on the proposed Canadian copyright legislation and net neutrality.

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Amari Co. v. Burgess, No. 07 C 1425, ___ F.Supp.2d ___, 2008 WL 656072 (N.D. Ill. May 7, 2008) (Ashman, Mag. J.).

Judge Ashman denied plaintiff Amari Co.’s motion for a protective order to prevent defendants’ alleged intimidation of Amari's non-party witnesses in this Racketeering Influenced and Corrupt Organization Act ("RICO"). Amari argued, among other things,* that defendants were intimidating ex-employees of former defendant International Profits Associates ("IPA"), which was run by defendants, by threatening to enforce confidentiality agreements signed by all IPA employees.

The Court held that it could not grant Amari its requested relief for two reasons. First, to be effective the injunction would have had to enjoin non-party IPA from suing its ex-employees to enforce the agreements. The Court could not enjoin IPA without proof it was working in concert with defendants or that IPA was defendants’ alter ego.  And before enjoining IPA, IPA would have to be given notice of the motion and an opportunity to respond.

Second, Amari sought a blanket injunction from enforcing the agreements against IPA’s ex-employees, but did not allege that the agreement was unenforceable. While confidentiality agreements cannot be used to hide a company's potential impropriety, they can be used to protect proprietary information. Without identification of specific ex-employees allegedly threatened with a suit, the Court could not determine whether IPA might have been using the confidentiality agreement for enforceable or unenforceable ends. And if Amari identified a specific individual, it could subpoena them, removing the need for an injunction.

*Amari alleged other forms of intimidation, but they are not related to IP and are, therefore, not discussed in this post.

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Digisound-WIE, Inc. v. BeStar Techs., Inc., No. 07 C 6535, 2008 WL 2095605 (N.D. Ill. May 16, 2008) (Lindberg, Sen. J.).

Judge Lindberg granted individual defendants Mr. and Ms. Greiling's Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Both Greilings were German citizens and residents. Mr. Greiling was previously Managing Director of plaintiff's parent company, but no longer held that role. First, the Court held that the Greilings were not amenable to Fed. R. Civ. P. 4(k)(2) nationwide service of process because the Lanham Act, which created federal question jurisdiction in this trade secret misappropriation case, did not provide for nationwide service, as some acts do. As a result, the Greilings' general contacts with the United States were irrelevant. The issue was whether the Greilings had sufficient minimum contacts with Illinois for specific jurisdiction.

The Court did not have specific jurisdiction over Ms. Greiling because she had no contacts with Illinois. She had never been to or conducted business in Illinois and she had no other attachments to Illinois.

Mr. Greiling was a closer question, but the Court held that it lacked specific jurisdiction over him as well. Mr. Greiling was formerly Managing Director of plaintiff's parent entity, and plaintiff was an Illinois entity. But Mr. Greiling was no longer employed by plaintiff's parent. And plaintiff provided no facts indicating that Mr. Greiling had any contacts with Illinois during the time relevant to the case.

The Court also denied plaintiff's request for jurisdictional discovery. Plaintiff had not made a prima facie case for personal jurisdiction and jurisdictional discovery was not appropriate without the prima facie showing of jurisdiction.

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Bretford Mfg., Inc. v. Mass Engineered Design, Inc., No. 08 C 486, Slip Op. (N.D. Ill. May 13, 2008) (Moran, Sen. J.).

Judge Moran denied declaratory judgment ("DJ") of defendants' (collectively "Mass Engineered") motion to dismiss DJ plaintiff Bretford Manufacturing's ("Bretford") complaint and granted Mass Engineered's motion to transfer. Mass Engineered filed a patent infringement suit against three of Bretford's customers in the Eastern District of Texas in 2006. That case was six months from trial as of the Court's opinion.

The Court denied Mass Engineered's argument that the case should be dismissed because it was not the first filed case. But the Court transferred the case to the E.D. Texas. The Court noted its belief that related patent litigation should be resolved in one jurisdiction. Additionally, Bretford had played a role in the E.D. Texas litigation, at least as a third party defendant. And the E.D. Texas Court granted Mass Engineered's motion to amend its complaint adding infringement allegations against Bretford.

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Nilssen v. MagneTek, Inc., No. 05 C 2933, 2008 WL 1774984 (N.D. Ill. Apr. 16, 2008) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan confirmed an arbitration award and denied plaintiff's motion to vacate it. The arbitrator awarded plaintiffs (collectively "Nilssen") approximately $23M for defendant Magnetek's patent infringement. MagneTek argued that the Court lacked jurisdiction because the arbitration agreement did not expressly confer the right to confirm the arbitration award. But the Court held that the Seventh Circuit only required that the right to confirm be inferred from the arbitration agreement. While the arbitration agreement did not explicitly allow confirmation, the parties evidenced their intent to allow confirmation:

• The parties' American Arbitration Association ("AAA") submission provided for confirmation;
  
• The parties agreed to be bound by the AAA's Commercial Arbitration Rules which provide for court confirmation; and
  
• MagneTek's post-arbitration press release said that the parties conducted binding arbitration which was not subject to appeal.

MagneTek also argued that certain prior art patents were new evidence which required vacating the award. But the Court held that MagneTek was aware of the patents during the arbitration. In fact, at least one patent was marked as an exhibit in the arbitration. Furthermore, MagneTek's post-arbitration prior art search could have been performed before the arbitration. And the Court would not reward MagneTek's late search with a second shot at invalidity.

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Quanta Computer, Inc. v. LG Elecs., No. 06-937, 553 U.S. ___ (2008).

The Supreme Court concluded its latest review of the patent laws Monday when Justice Thomas delivered the Court's succinct, unanimous decision in Quanta v. LG.  Client obligations this week prevent me from providing a detailed analysis today.  But, no surprise, there is plenty of commentary out there already.  For more about decision, check out:

• 271 Patent Blog

• Agricultural Law

• FileWrapper

• IP Thinktank

• Patent Docs
  

• Patently-O

• WSJ Law Blog

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This week's Blawg Review is up at More Partner Income, click here to read it.  Among other articles, the Blawg Review highlights Victoria Pynchon's excellent series of posts at her Settle It Now Negotiation Blog, about facing the last days of her father's life.  The posts are moving on a personal level, and Pynchon manages to work in good legal advice as well.  Click on the titles to read Pynchon's Negotiating Life's End posts:  Part One; Part Two; Part Three; Part Four; Part Five; Part Six; and click here for the remainder of the posts.


And June's Carnival of Trust is now available at Clark Chinge, click here to read it.  Chinge does a nice job of helping the Carnival of Trust celebrate its first birthday.  Congratulations to the Carnival on the big milestone.

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MPC Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2008 WL 1775501 (N.D. Ill. Apr. 17, 2008) (Aspen, J.).*

Judge Aspen granted in part plaintiff MPC Containment's ("MPC") Fed. R. Civ. P. 12(f) motion to strike defendants' (collectively "Moreland") waiver and unclean hands defenses. The Court struck Moreland's unclean hands defense. Moreland alleged unclean hands based upon MPC’s allegedly fraudulent procurement of a patent related to the flexible tank technology at issue. But the Court held that Moreland failed to show that MPC's alleged fraud was somehow directed at Moreland. Furthermore, while the patented technology is related to the technology in suit, MPC's alleged misconduct in obtaining the patent had no connection to this suit.

The Court, however, allowed Moreland’s waiver defense. Moreland did not specifically plead that MPC voluntarily relinquished its rights to the claims in suit. But it was sufficient that voluntary relinquishment could be inferred from the pleadings.

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

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The Seventh Circuit's Judge Posner wrote a Tips from the Trenches column for the ABA in May.  The article was well written and insightful, no surprise from Judge Posner.  He summed up his advice like this:

be brief, be clear, be simple, be vivid, be commonsensical, avoid legalisms, and do not be afraid to spoon-feed us—we will not bite your hand.

He also provided more detailed advice.  Here are my favorites:

• Use visual aids.  But he suggests pictures or objects instead of charts or graphs.  People (and judges are people, although litigators sometimes forget they are) connect with and remember images better than words or statistics, especially when they see the demonstratives quickly and from a distance.
  
• Admit when you do not know and concede when you must.  Few things kill credibility like false statements, even unintentionally false ones, or refusing to admit the obvious.
  
• Rehearse.  And not just by reading your materials and preparing notes.  Set up a session as close to what you can expect as possible.  You practice baseball by playing and running by running, practice argument the same way.
  
• Dress to be taken seriously.  First impressions matter and the judge(s) see you both before and while they hear you.

Most of Judge Posner's points apply to both district and appellate court arguments.  The article is worth a read.

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When Google introduced its Google Patents, it revolutionized online (read "free") patent searching.  But I always had one complaint.  When I use Google Patents, my goal is usually getting a either a pdf or a hard copy (which I usually obtain by printing a pdf) of the patent.  Google Patents gives you that, but it takes too many steps. 

Rolf Claessen of IP Newsflash (a German patent attorney and partner with v. Kreisler Selting Werner in Cologne, Germany), recently emailed me about his new Free Patent PDF Download tool that solves my one, relatively minor, Google Patents complaint.  Enter your patent number (after free registration, that is) hit enter and get your pdf.  Also, Claessen's tool uses the espacenet database, so its coverage is substantially more than just US patents.

Patent Retriever is another new and free download service that allows you to download US, European and PCT patent and published applications as PDF files (no registration required).

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 2008-1392 & 1393 (Fed. Cir.).*

As Judge Moran predicted, the parties have appealed this case to the Federal Circuit.* The parties’ appeals were consolidated, leaving a single appeal with a substantial number of issues. The great, new Patent Appeal Tracer* reported that plaintiff Trading Technologies (“TT”) is appealing at least the following decisions (click here to read Tracer’s post on the cross-appeals):

Claim constructions, specifically constructions of "static price axis" and "order entry region"  (click here and here and here for the Blog’s posts regarding claim construction opinions);

• Summary judgment of noninfringement of most of defendant eSpeed’s software packages, including the following titles: Dual Dynamic, eSpeedometer, and modified eSpeedometer programs (click here for the Blog’s post regarding this opinion);
  
• Partial summary judgment for TT regarding prior use (click here for the Blog’s post regarding this opinion); and
  
• Judgment as a matter of law overturning the jury’s willfulness finding (click here for the Blog’s post regarding this opinion).

And eSpeed is appealing, at least, the following decisions:

• The permanent injunction regarding certain of eSpeed’s software packages (click here for the Blog’s post regarding the Court’s permanent injunction).

* Thanks to Patent Tracer for linking to the Blog’s TT v. eSpeed coverage. Click here to read much more about this case in the Blog’s archives.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, 1079, 4088, 4120, 4811 & 5164, Slip Op. (N.D. Ill. May 23, 2008) (Moran, Sen. J.).*

Judge Moran granted plaintiff Trading Technologies' (“TT”) motion for a protective order, but denied its request for its fees related to the motion. TT used two videos of third part Walter Brumfield's trading screen and a portion of one of Brumfield's daily trading records (collectively the “Evidence”) as evidence during the Court's inequitable conduct bench trial. Despite prior designation as “Attorneys' Eyes Only” pursuant to a protective order and having been sealed in the parties' previous filings, the Evidence was presented in open court without any protections. Additionally, it was designated on exhibit lists submitted in connection with the bench trial without any confidentiality designation.

The first business day after the bench trial, TT contacted defendant eSpeed to confirm that the Evidence was to be treated as confidential. But eSpeed, and the other defendants in the related cases, objected arguing that by using the Evidence at trial without any protections or designations, TT waived confidentiality.

The Court acknowledged a “strong presumption of public access to court proceedings and records . . . .” But noting that the presumption is not absolute and that the parties seeking disclosure here were defendants not the press or public, the Court held that the Evidence retained its confidential status for the following reasons:

• The videos showing Brumfield's custom-designed computer screen configuration was a trade secret and its disclosure could harm Brumfield's competitive trading advantage;

• TT's public disclosure of the Evidence was inadvertent as evidenced by the numerous times the Evidence was previously treated as confidential; and

• To the extent the Court relied on the Evidence in its opinion (click here to read the Blog's post about the opinion), it did not do so in sufficient technical detail to disclose the confidential elements of the Evidence.

Continue Reading...

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RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, Slip Op (N.D. Ill. May 27, 2007) (Coar, J.).

Judge Coar denied defendant Sears, Roebuck & Co.'s ("Sears") Fed. R. Civ. P. 50(b) motion for judgment as a matter of law and Fed. R. Civ. P. 59(a) motion for a new trial or a remittitur. And the Court granted plaintiff RRK Holding Co.'s ("RRK") motion for pre-judgment and post-judgment interest. A jury previously returned a verdict finding Sears liable for breach of a nondisclosure agreement and misappropriation of RRK's trade secret related to its spiral saw – click here for much more on this case in the Blog's archives. The jury awarded RRK approximately $21M, including $11.6M in actual damages, $1.6M for unjust enrichment and $8M in punitive damages.

First, Sears argued that RRK offered insufficient evidence showing that Sears' alleged misappropriation caused RRK's damages. But the Court held that there was sufficient evidence to support the jury's verdict. The fact that Sears's price for its spiral saw was lower than RRK's explained why customers purchased Sears's saws over RRK's, but the trade secret causation was shown by the fact that Sears sold the combination tool instead of selling the components separately.

Second, Sears argued that RRK's damages should be limited to the traditional “head start” period (an estimate of the time it would take for defendant to develop the trade secret on its own). But the Court held that Illinois law limits injunctive relief to a head start period, but not monetary relief.

Continue Reading...

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Blawg Review #162 is now available at the China Law Blog.  This week's review is a bit light on IP links, except for Mike Atkin's Seattle Trademark Lawyer post detailing a potential trademark dispute involving coffee and roller derby -- click here for the post.  Despite that (or maybe because of it), it is a great read.  And if you are looking for good information on Chinese business law, the China Law Blog is one of the best.

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 In the June 2008 issue of the National Law Journal (out today), Tresa Baldas reported on the increasing number of law suits involving allegedly fake MySpace or Facebook pages -- click here (subscription required) for the story.  Among other cases, Baldas discusses the town of Cicero's efforts to identify the creators of two MySpace pages containing false and allegedly defamatory statements about Cicero Town President Larry Dominick and claiming to be authored by him, which I posted about last week.

As I said in my post last week, the increasing number of disputes regarding false social networking pages raises questions about the problems with the anonymity of the internet that are equally interesting and difficult. And while your first reaction may be that courts should not be asked to resolve these disputes, the courts may be a necessary part of the process, as I discussed in the National Law Journal article:

Free speech issues aside, fake online profiles have pushed the age-old problem of schoolyard rumors into the courtroom, said Dave Donoghue, an attorney with DLA Piper who specializes in intellectual property litigation.

"The internet gives [a rumor] an air of credibility that it used to not have," Donoghue said. "It forces the schoolyard into the courtroom. And how the courts deal with youthful mistakes and transgressions is a very difficult issue."

Continue Reading...

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