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

Here are several stories and updates worth a read:

• I am hosting the August Carnival of Trust on Monday, August 3 here.  I hosted once before and really enjoyed the experience -- click here and here.   The Carnival of Trust is a monthly, traveling review of ten of the last month's best posts related to various aspects of trust in the business world.  If you have trust-related posts from the last month, send them to me. by Friday or Saturday.  For other examples of Carnival of Trust posts, check out recent hosts Adrian Dayton and Victoria Pynchon.
   
• I was featured in Stephanie Allen West's Reading Minds column in the ABA's Law Practice Management magazine this month -- click here to read the column.  Along with Jennifer Loud Ungar, Andrew Flusche, and Todd Kashdan, I was asked to recommend a favorite management book.  I went with an unorthodox choice, but a valuable read, the Boy Scout Patrol Leader's Handbook.  Here is some of my recommendation:

In the many years since I relied on the Handbook to run Boy Scout patrols, I have found the lessons in this volume to be equally applicable to leading and managing teams of lawyers or businesspeople. The Handbook is a powerful guide for developing successful organizations, maintaining group morale and achieving group success. As an example, it lists these 10 tips for being a good leader: (1) keep your word; (2) be fair; (3) communicate well and often; (4) be flexible; (5) be organized; (6) delegate; (7) set an example; (8) be consistent; (9) give praise; and (10) ask for help. These are words to live by for patrol leaders, lawyers and C-level executives alike.

• Michael Atkins has a great post at his Seattle Trademark Lawyer about a strong brand protection program worth emulating -- click here to read it.

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Blawg Review #222 was hosted this week by Duncan Bucknell's IP Think Tank -- click here to read it.  The Review is themed around Australian community festivals, which sound much like American community festivals.  Of particular interest, are links to the following IP-related posts:

• Drug & Device Law and Point of Law posts discussing the Twombly/Iqbal pleading requirements, a subject I have discussed on this blog here and here.  These posts suggest that Twombly-style pleading is spreading to most substantive legal areas, as the Supreme Court required in Iqbal.
   
• Spicy IP's post highlighting the fact that Managing Intellectual Property magazine named IP bloggers generically as one of the fifty most influential people in IP -- click here for the post.

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Last week, the Northern District provided tips for opening new cases using ECF.  The most important tip seems to be that the Clerk's office is there to help if you have any problems.  Here they are: 

• During the initial case opening sequence, select the correct divisional office (Chicago or Rockford) in which you want to file your case.
  
   
• If you want to practice opening a case, use the training application here, not a live ECF session. 
   
• If you make a mistake while opening your new civil case, do not open a new case or complete the current case with the mistake.  Instead, exit the case opening sequence before it is complete, if possible, and call the Clerk's Office at 312-582-8727.  They will help you correct the mistake.
    
• If you have opened a case incorrectly, do not open another case, call the Clerk's office and they can help fix the mistake in the originally opened case. 
   
• If you are not sure how to open a civil case, you can find instructions at:  E-Filing Information. 
   
• If you are not able to pay the filing fee while e-filing your initiating document, use one of the events in the Civil/Other Filings/Notices category to pay the fee.
   
• When submitting a Notice of Removal, enter the Court name and Case number for the State court case. (See Step No. 35 in the instructions for opening a civil case). The parties should be added as they were named in the complaint filed in the State Court. 
   
• The summons form(s)should be emailed to intake_ilnd@ilnd.uscourts.gov. You should not attach them to the complaint or efile them. 

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A new blog and several stories I have been meaning to get to, but have not had enough time:

• Tom Patterson, from Chicago, has joined the blogosphere with the Emergency Business Litigation blog, another blog by Lexblog.  It does not have an IP focus, but some of Patterson's first post deal with Federal Circuit decisions regarding injunctions in patent cases -- click here and here to read them.  Welcome to the blogging conversation Tom.
   
• The IP ADR Blog has an interesting guest post from Robert Rose discussing patent arbitration rules -- click here to read the post.  Of particular interest, Rose points out the oft forgotten statutory obligation to notify the PTO of any arbitration award, which is made part of the file history.
   
• Also from the IP ADR Blog, Victoria Pynchon has posted the slides that were the basis of a February 2009 CLE presentation we did about alternative dispute resolution in patent disputes, a valuable tool particularly in difficult economic times.  Click here for Pynchon's post with the slides.

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McDavid Knee Guard, Inc. v. Nike USA, Inc., No. 08 C 6584, Slip Op. (N.D. Ill. Jun. 9, 2009) (Mason, Mag. J.).

Judge Mason denied plaintiffs' motion to disclose defendant's highly confidential technical information to plaintiff Stirling Mouldings' Managing Director ("MD") in this patent case.  Stirling argued that MD, who was also the patent-in-suit's inventor, was a necessary technical expert based upon his extensive experience with the technology.  Nike countered that Stirling had already hired other expert witnesses who had been able to provide technical opinions and that, if granted access to Nike's supplier's alleged trade secret process, MD would not be able to compartmentalize the information and avoid using it in competitive decision-making.  Nike also argued that Stirling was precluded from seeking access to the information for MD because he was specifically excluded from seeing Highly Confidential materials in the Protective Order and because the parties expressly agreed that information from a site visit was to be maintained as Highly Confidential and only show to plaintiffs' counsel. 

The Court held that Stirling was not precluded by prior agreements or orders from seeking access for MD.  But the Court also held that plaintiffs had not met their burden of showing good cause to modify the Protective Order granting MD access to Highly Confidential documents.  First, plaintiffs had already hired outside experts that had provided competent technical opinions and none of those experts had submitted a declaration stating they needed MD's expertise to render an opinion.  Furthermore, Nike showed that disclosing its supplier's technical information to MD would likely cause competitive harm.  It would be impossible for him to fully segregate the technical knowledge he would gain when performing his strategic decision-making role for Stirling.  The Court noted, however, that it did not determine whether the process at issue was, in fact, a trade secret.

Finally, the Court noted that it did not consider plaintiffs' arguments that MD would necessarily hear the technical information during the trial.  The Magistrate Judge did not have jurisdiction over the District Judge's decision of whether to seal the courtroom for trial when technical information is discussed.

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The Northern District of Illinois is seeking applicants for one or more open Magistrate Judge positions.  Magistrates serve eight year terms and the open positions will be located in Chicago.  Chief Judge Holderman expects to appoint a Merit Selection Panel that will screen applicants and make recommendations this fall with the position or positins expected to be filled in the spring of 2010.

The minimum requirements are as follows:

[A]n applicant must be, and have been for at least five years, a member in good standing of the bar of the highest court of a State, the District of Columbia, the Commonwealth of Puerto Rico, or the Virgin Islands of the United States, and have been engaged in the active practice of law for a period of at least five years. The applicant must be less than seventy years of age, and may not be related to a judge of the district court.

Applications and application instructions are available here.  Applications must be received by 4;30 pm on September 11, 2009.

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Gene Quinn has done some great work in developing a list of the top 50 patent blogs at IPWatchdog, based on a combination of objective and subjective criteria -- click here to read the post.  With all of the usual caveats about the value of top blog lists and competitions, I am proud that the Chicago IP Litigation blog came in at number 28 and the top regional US patent blog.  I am honored to be among the top regional patent blogs, including Washington State Patent Blog, California Biotech Blog,* and Georgia Patent Law.  I am also proud to be among the numerous Chicago patent blogs that made the list, including Patent Docs, Orange Book Blog and the 271 Patent Blog.

Here is the top 50:

1. Patently-O
2. IPWatchdog.com
3. IP Kat
4. Spicy IP
5. Patent Baristas
6. Intellectual Property Watch
7. Patent Docs
8. 271 Patent Blog
9. BlawgIT
10. Patent Prospector
11. The Invent Blog
12. IP Think Tank and The Prior Art
13. -
    
14. Orange Book Blog
15. IPJUR and European Patent Caselaw
16. -
    
17. Promote the Progress
18. IP NewsFlash
19. Anticipate This!
20. Patentably Defined
21. India Patent
22. Intellectual Asset Management
23. Against Monopoly
24. Patent Circle
25. I/P Updates
26. PHOSITA
27. IP Spotlight
28. Chicago IP Litigation
29. The IP Factor
30. Patent Arcade and File Wrapper
31. -
    
32. Securing Innovation
33. Patents 101 and IP Estonia
34. -
    
35. PatLit
36. Just An Examiner
37. The Business of Patents
38. Patentability
39. Inventive Step
40. Holman’s Biotech IP
41. Washington State Patent Law
42. California Biotech Law
43. Patent Infringement Updates and Patent Assassins
44. -
    
45. Russian Patents
46. Georgia Patent Law
47. Patentnapsis
48. Honoring the Inventor
49. OC Patent Lawyer
50. Nanomedicine & IP

*  Another blog by LexBlog.

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Bajer Design & Marketing Inc. v. Ware Mfg. Inc., No. 09 C 1425, Min. Order (N.D. Ill. Jun 11, 2009) (Kendall, J.).

Judge Kendall denied plaintiff Bajer's motion to reassign its second filed patent infringement suit pending before Judge Zagel asserting the patent in suit to Judge Kendall pursuant to Fed. R. Civ. P. 42 and Local Rule 40.4. The cases met two of the four Rule 40.4(b) requirements for reassignment because both cases were pending in the Northern District and because both cases were at similar stages with defendants having just answered, such that reassignment would not slow progress of the first case. The Court also noted that a single Markman proceeding and set of claim constructions was a benefit of reassignment. But the potential for a uniform claim construction was outweighed by the fact that defendants' accused products and, therefore, noninfringement positions were significantly different. Based upon the differing noninfringement positions and other possible differences in the parties defenses, the Court held that reassignment would not achieve the required substantial savings of judicial time and effort.

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SourceOne Global Partners,  LLC v. KGK Synergize, Inc., No. 08 C 7403, Slip Op. (N.D. Ill. May 13, 2009) (Schenkier, Mag. J.).

Judge Schenkier denied declaratory judgment defendant KGK's motion to dismiss plaintiff SourceOne's declaratory judgment claims of noninfringement and invalidity of KGK's patents.  KGK allegedly asserted its patents against SourceOne's cholesterol fighting drug Cholesstrinol.  KGK argued that the Court lacked subject matter jurisdiction because SourceOne did not, and could not name the co-owner of KGK's patent, the United States government.  The Court held that it had subject matter jurisdiction over SourceOne's patent declaratory judgment claims, reasoning that otherwise the government's co-ownership of a patent would strip accused infringers of ever seeking declaratory actions.

The Court also held that, while the government was a required party pursuant to Fed. R. Civ. P. 19(a), the Rule 19(b) factors weighed in favor of allowing SourceOne's case to proceed despite its inability to join the government.  The Court held that allowing KGK to prevent a declaratory suit because it was not possible to name the government would give KGK too much power as a patent holder:

The approach urged by KGK (and the Government) would allow KGK to threaten legal action against SourceOne (or others) with impunity.  For those who gave into those threats, KGK would receive the benefit of the patent (a cessation of the alleged infringing conduct and perhaps compensation) without the need to do anything more.  For those who might rear up and seek a judicial resolution, KGK could retreat behind the Government's cloak of immunity and prevent the infringement or validity of the '125 Patent from ever being tested in court.

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Landon IP has created an excellent new patent search information site and community -- Intellogist.  Among other services, Intellogist offers:

• Comparisons of numerous patent search sites and services;
   
• An interactive map that identifies country-specific search services;
   
• Detailed reports on search services; and
   
• A best patent searching practices wiki.

I am a big fan of Landon IP and based on Landon's past great work for me, I would have expected nothing less than the excellent resource they created in Intellogist.

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Connetics Corp. v. Pentech Pharms., Inc., No. 07 C 2230, Slip Op. (N.D. Ill. May 8, 2009) (Gottschall, J.).

Judge Gottschall granted defendants' motion to amend their answers to include new invalidity and unenforceability affirmative defenses and counterclaims in this ANDA patent case involving plaintiff's patented pharmaceutical LUXIQ.  The Court held that the amended answers and counterclaims were appropriate, although they were sought after the Court's deadline to amend the pleadings for reasons similar to Judge Lienenweber's analysis in a motion to amend adding the same defenses and claims in a related case -- click here to read the Blog's post on that opinion.  Of particular note, the Court held that the delay at issue is delay of the trial, not a party's delay in seeking to amend.  In this case, the Court had recently extended fact discovery.  So, plaintiffs had time to seek discovery on the defenses and counterclaims without delaying the trial date.

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Connetics Corp. v. Pentech Pharms., Inc., No. 08 C 2230, Slip Op. (N.D. Ill. May 8, 2009) (Leinenweber, J.).

Judge Leinenweber granted defendants' motion to amend their answers including new invalidity and unenforceability affirmative defenses and counterclaims in this ANDA patent case involving plaintiff's patented pharmaceutical OLUX.  The Court held that the amended answers and counterclaims were appropriate because they were filed before the Court's deadline for amended pleadings, even though the parties briefed the motion to amend as if the amendment was sought after the deadline.  Furthermore, defendants did not unduly delay in seeking to amend.  The motion to amend was filed within several months of depositions in which new information necessary for the amendments was disclosed.  And the litigation was still in its early stages so the amendments would not cause any prejudice.

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The Northern District recently sent out the following notice of a memorial service for Judge Moran to all e-filers:

The Judges of the United States District Court
for the Northern District of Illinois
cordially invite you to attend the
Memorial Service
in Remembrance of
Honorable James B. Moran
Monday, July 13, 2009, beginning at 3:30 p.m.
James Benton Parsons Memorial Courtroom
Everett McKinley Dirksen United States Courthouse
Twenty-fifth floor
219 South Dearborn Street
Chicago, Illinois

Reception immediately following in the 25th floor lobby,
Please RSVP by July 9, 2009 via e-mail
To JudgeMoranMemorialService@ilnd.uscourts.gov

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Microthin.com, Inc. v. SiliconeZone USA, LLC, No. 06 C 1522, Slip Op. (N.D. Ill. May 6, 2009) (Kendall, J.).

Judge Kendall construed the claims of plaintiff Microthin's patents to non-slip mats and based on the constructions granted defendant SiliconeZone summary judgment of invalidity as to the first claim of each patent. Of particular interest, the Court construed the following terms:

• Non-Slip meant reducing or preventing smooth sliding motion, but the Court declined to add Microthin's proposed requirement that it not be sticky to the touch because there was an independent claim that only added the requirement that the non-slip surface was not sticky to touch.
   
• Consisting of was construed as a closed transitional phrase, as it is normally used in patent law.

Based on its construction of non-slip, the Court held the first claims of each patent invalid. Microthin's sole argument against the asserted prior art was that it did not teach a non-slip surface because the surface was sticky to the touch. Because the Court construed non-slip without the sticky limitation, the first claims of each patent were invalid.

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