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

Nova Design Build, Inc. v. Grace Hotels, LLC., No. 08 C 2855, Slip Op. (N.D. Ill. Mar. 25, 2009) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted in part and denied in part plaintiffs' Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants' counterclaim copyright infringement case. Plaintiffs claimed that they developed plans for a Holiday Inn Express hotel defendants planned to build, and that defendants infringed the copyrights in plaintiffs’ plans by revising them with another firm and using them without plaintiffs’ permission. The Court previously held that plaintiffs’ copyright claim was sufficiently pled -- click here for more on that opinion and the case generally in the Blog's archives.  After that opinion, defendants answered the complaint and filed a counterclaim seeking among other things declaratory relief.  The Court dismissed the counterclaim as to plaintiff Annex whom defendants agreed should be dismissed.  And the Court struck defendants' request that plaintiffs' complaint be struck because the Court already denied defendants' Rule 12(b)(6) motion to dismiss.

But the Court denied to dismiss defendants' counterclaim.  Plaintiffs argued that the counterclaim should be dismissed because it was not clearly pled, the legal basis was not specifically identified and it lacked factual detail.  But the Court held that notice pleading did not require good grammar or organization, nor were specific facts required.  Because defendants' counterclaim put plaintiffs on notice that their copyright was allegedly a derivative works to which defendants maintained certain rights.  To the extent plaintiffs believed additional information, the appropriate remedy was a Rule 12(e) motion for a more definite statement.  But the Court noted that a more definite statement was not required in this case because defendants' counterclaim put plaintiffs on notice.

• Email This
• Print
• Trackbacks
• Share Link

UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582, Slip Op. (N.D. Ill. Mar. 25, 2009) (Lindberg, Sen. J.).

Judge Lindberg denied the individual defendant's Fed. R. Civ P. 12(b)(2) motion to dismiss for lack of personal jurisdiction.  The individual defendant's four business trips to Illinois and prior work in California for plaintiff did not create general jurisdiction.  But the Court did have specific jurisdiction over the individual defendant.  Individual defendant was president of defendant Starent.  As president, he had authority over Starent's alleged pattern of hiring away plaintiff's employees and allegedly misappropriating plaintiff's trade secrets from those employees.  Because the alleged trade secret misappropriation harmed plaintiff's Illinois-based business in Illinois, the Court had general jurisdiction over Starent and its president, the individual defendant.

• Email This
• Print
• Trackbacks
• Share Link

Next week, May 1, John Marshall is hosting a Law Day IP legal ethics program:  Ethics in the Practice of Intellectual Property Law.  The program offers four hours of ethics credits (the same amount of ethics credits required by Illinois in every two year reporting period).  The program looks excellent and appears to be free.  Click here for more information.

• Email This
• Print
• Trackbacks
• Share Link

Gene Quinn at IPWatchdog recently posted his notes from Chief Judge Holderman's Ten Commandments for Trying Patent Cases presentation at a recent Thomas Jefferson School of Law symposium.  I have had the opportunity to hear versions of the presentation a couple of times and learn something new every time.  Here are Judge Holderman's ten commandments.  Thou shalt not try a patent case to a judge or to a jury without:

1. A clear theory for victory
    
2. Targeting your final argument
    
3. Anticipating your opponent’s arguments
    
4. Speaking understandable words
    
5. Telling the story
    
6. Using visuals
    
7. Organizing the exhibits for the decision maker
    
8. Presenting your theme early and often
    
9. Being straight forward and focused
    
10. Remembering you are “ON STAGE”

Some of the ten seem relatively obvious as you read them, but even the obvious ones are valuable reminders as you head into the stress of trial preparation.  One that always jumps out at me is organizing exhibits for the decision maker.  Far too many trial teams simply line up their exhibits in numeric order or the order they were shown at trial without thoughtfully organizing the exhibits so that they tell a story for the jury.  If you have a chance to see Judge Holderman give a version of this talk, do not miss it.

• Email This
• Print
• Trackbacks
• Share Link

Judge Moran passed away yesterday.  Click here for the Northern District's official statement.*  This is a difficult post for me to write.  It is hard, maybe impossible, to capture Judge Moran's impact on the Northern District of Illinois in a relatively short blog post.  Judge Moran served as a federal district judge for almost thirty years, including as Chief Judge in the early 1990s.  Judge Moran also served Illinois as a state representative and spent several years in the Army after getting his undergraduate degree from the University of Michigan and before attending Harvard Law School. 

As a district judge, Judge Moran was respectful, thoughtful, and thorough.  Judge Moran's most lasting contributions to the Northern District were likely as a mentor and a writer.  Judge Moran's opinions were detailed and well reasoned, but most of all his opinions were written in straight forward language that opened the federal courts to people without legal training.  Judge Moran's passing is a significant loss.

[UPDATE:]  The Chicago Tribune posted a detailed obituary here with more comments from Judge Moran's peers and a more detailed account of his impressive legal career.

*  I will post more information regarding any memorials, as the information becomes available.  On a procedural note, Judge St. Eve is hearing any motions pending on Judge Moran's docket until further notice.

• Email This
• Print
• Trackbacks
• Share Link

The final edition of the 2009 Chicago IP Colloquium will be hosted tomorrow, April 21, by Loyola in Room 1103 of the law school.  Professor Frank Pasquale, of Seton Hall will present his paper, Search, Copyright, and Speech.

• Email This
• Print
• Trackbacks
• Share Link

On Monday, April 20, John Marshall is offering a free CLE presentation (click here to register) by Columbia Professor Clarisa Long.  The presentation is titled, The Political Economy of Intellectual Property Law.  I do not have more information than the title, but it appears to be a timely topic as the Patent Reform Acts works its way through Congress.

• Email This
• Print
• Trackbacks
• Share Link

Last week the Northern District of Illinois became the first federal court to allow complete online registration and payment for attorney admission -- click here to read the Clerk's press release.  You can now register for both the general and trial bars online and pay the registration fees by credit card.  This is another step toward getting the federal courts fully online, now if they could only end PACER access fees.

• Email This
• Print
• Trackbacks
• Share Link

Callpod, Inc. v. GN Netcom, Inc., No. 06 C 4961, Slip Op. (N.D. Ill. Mar. 6, 2009) (Kendall, J.).
 

Judge Kendall construed the disputed claim terms in plaintiff's patent directed to methods and devices for making conference calls using cordless and mobile phones. The following constructions were of particular interest:

• “Plurality of participants” meant more than one participant. The parties agreed that plurality meant more than one in relation to headsets, but defendants argued that a plurality of participants was three or more because a conference call generally required more than two participants. The Court, however, noted that having two different definitions of plurality would lead to the odd result of requiring two headsets and three participants.
  
• “Callpod” was construed as a portable device that forms conference calls among a plurality of participants. The claims did not provide a clear definition, but the Court noted that the patentee's lexicography governs and construed the term based upon the specification.

• Email This
• Print
• Trackbacks
• Share Link

The Northern District and the Federal Bar Association are seeking nominations for excellence in pro bono and public interest work. Nominations should be based upon work performed in civil cases before the Northern District which are no longer pending. Nominations should include:  the name and address of the nominee; a brief resume; the complete case title; case number and judge for each case; the work done by the nominee on the cases; and the brief summary of the reasons you believe the nominees pro bono work has been outstanding. 

Send nominations by this Friday, April 17 to:

Email:  ProBono2009_ILND@ilnd.uscourts.gov
Chambers of the Chief Judge James F. Holderman
219 South Dearborn Street, Suite 2548
Chicago, Illinois 60604

• Email This
• Print
• Trackbacks
• Share Link

Geisha LLC d/b/a Japonais v. Tuccillo, No. 05 C 5529, Slip Op. (N.D. Ill. Mar. 13, 2009) (Pallmeyer, J.).*

Judge Pallmeyer denied plaintiff's motion for summary judgment regarding its Lanham Act false designation claim. Plaintiff began using the Japonais mark in conjunction with its Chicago area European/Japanese fusion restaurant in 2003. Plaintiff later opened New York and Las Vegas locations. But plaintiff did not register the Japonais mark. In 2004, defendant filed an intent to use trademark application for the Japonais mark to be used in connection with restaurants. In order to receive the registration, defendant was required to use the mark in commerce. Once that use occurred and was properly documented, defendant's mark would have a 2004 constructive use date, as opposed to the later date of actual first use. Defendant has filed a verified statement of use, so the parties agree that defendant's registration is a formality. Plaintiff, however, believed that it would succeed in a cancellation proceeding against the mark.

The Court noted that as the senior user, plaintiff had a right to use the mark in the Chicago area. But there was a question of fact as to whether plaintiff's later opened New York restaurant had sufficiently penetrated the New York market before defendant's 2004 constructive use date. Furthermore, to the extent plaintiff had actual notice of defendant's application, any rights plaintiff might have had in New York would not be enforceable against defendant. Furthermore, the Court noted that granting plaintiff's motion could result in the bizarre outcome of defendant being liable for violating plaintiff's trademark today, but tomorrow, after issuance of defendant's mark, defendant may be able to assert the trademark against plaintiff.

* For more on this case, click here to read the Blog's archives about the case or here for a Las Vegas Trademark Attorney post about the case.

• Email This
• Print
• Trackbacks
• Share Link

Mindy's Restaurant, Inc. v. Watters, No. 08 C 5448, Slip Op. (N.D. Ill. Feb. 27, 2009) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendant's motion to disqualify plaintiff's counsel in this Lanham Act dispute regarding plaintiff's Mindy's Restaurant marks. Defendant previously was a licensee of plaintiff's marks. During their licensing arrangement, the parties explored a potential joint venture. As part of that process, plaintiff and defendant jointly met with a member of plaintiff's current law firm. Defendant contended that that meeting created an attorney-client relationship which disqualified plaintiff's counsel from this case. But the Court held that even if the single meeting with both parties created an attorney-client relationship, there was only a “slight tangential relationship” between the current case and the prior potential joint venture. And the attorney involved could not have received confidential information. The attorney met with both parties together and never spoke to either party about the matter after the initial meeting. So any information defendant provided to the attorney was also provided to plaintiff. Finally, there was no evidence that the attorney or any member of plaintiff's counsel's firm would ever be called as an essential witness in the case.

• Email This
• Print
• Trackbacks
• Share Link

The next edition of the Chicago IP Colloquium will be hosted by Chicago-Kent tomorrow, April 7, in Room 305.  The presenter will be Professor Lisa Ramsey, of the University of San Diego School of Law.  Professor Ramsey will discuss her paper, Free Speech and International Obligations to Protect Trademarks.

• Email This
• Print
• Trackbacks
• Share Link

Constant Compliance, Inc. v. Emerson Process Mgt. Power & Water Sol'ns., Inc., No. 08 C 3724, Slip Op. (N.D. Ill. Feb. 13, 2009) (Ashman, Mag. J.).

Judge Mason granted in part plaintiff's motion to bar defendant from opposing plaintiff's claim constructions because of defendant's failure to meet the Court's deadline for the parties to exchange proposed claim constructions. In response to an interrogatory, defendant identified claim terms that it believed required construction. But defendant did not submit any proposed constructions until two weeks after receiving plaintiff's constructions on the date of the Court's deadline for joint exchange of constructions. The Court held that defendant was barred from offering constructions for those terms it identified as requiring construction in its interrogatory response, but allowed defendant's constructions of those terms offered by plaintiff, but not in defendant's response. Additionally, as to the terms identified in defendant's interrogatory response, the Court adopted plaintiff's constructions because no alternative construction had been timely offered.

• Email This
• Print
• Trackbacks
• Share Link

Next Wednesday, April 8, John Marshall is offering a free (click here to register) CLE lecture by George Washington Professor John Duffy discussing how the state of federal laws may cause financial firms to shift from secret innovations to using patents and other legal mechanisms that foster innovation and transparency.

• Email This
• Print
• Trackbacks
• Share Link

Ledergerber Med. Innovs., LLC v. W.L. Gore & Assocs., Inc., No. 07 C 1593, Slip Op. (N.D. Ill. Feb. 17, 2009) (Kendall, J.).

Judge Kendall construed the claims in this patent dispute regarding surgical implants for use with brain tumors and hernias that direct scar tissue away from the implant surfaces. Of particular interest, the Court held, relying in part upon a dictionary definition, that "sheet" was a thin structure, instead of defendant's broader definition which did not require that the structure be thin. The Court held that "non-textured" was focused on the tactile characteristics of the surface and meant that the surface was smooth. A surface was not required to be free of macroscopic defects. And the Court construed textured as the opposite of non-textured or not smooth.

• Email This
• Print
• Trackbacks
• Share Link