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

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. May 4, 2010) (St. Eve, J.).

Judge St. Eve granted in part plaintiff/counter-defendant Sloan's Fed. R. Civ. P. 12 motions in the patent infringement case involving a flush valve handle assembly. The Court dismissed defendant/counter-plaintiff's (collectively "Zurn") invalidity and noninfringement counterclaims to the extent they challenged patent claims other than those identified as allegedly infringed in Sloan's complaint. The Court could have exercised jurisdiction over the counterclaims if Zurn had met the MedImmune standard independently for each of Sloan's unasserted claims, but Zurn did not.

The Court denied Sloan's Fed. R. Civ. P. 12(b)(6) motion to dismiss Zurn's inequitable conduct counterclaim. Zurn met the materiality standard by pleading that Sloan should have known that admissions made in a prior, related reexamination proceeding were relevant to the Examiner in the later application. 

The Court dismissed Zurn's estoppel and misuse affirmative defenses. Each were pled in a single sentence and without particularized facts.

The Court also dismissed Zurn's lack of actual notice affirmative defense. Zurn also denied Sloan's actual notice allegation in its answer. Because actual notice was denied in the answer, it was not a proper affirmative defense. Finally, the Court dismissed Zurn's noninfringement and exceptional case affirmative defenses.  Neither was a proper affirmative defense. 

• Email This
• Print
• Trackbacks
• Share Link

Late Monday night, the Senate confirmed Gary Feinerman as the Northern District of Illinois's next district judge.  Judge Feinerman was most recently a partner with Sidley.  He also served as a law clerk to Judge Flaum of the Seventh Circuit and then Justice Kennedy, after which he served in the Justice Department and as Illinois's Solicitor General.  Judge Feinerman fills the vacancy created when Judge Gettleman took senior status.

Welcome to the Northern District of Illinois bench Judge Feinerman.

• Email This
• Print
• Trackbacks
• Share Link

Bone Care Int'l, LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Apr. 23, 2010) (Dow, Jr.).

Judge Dow granted in part plaintiffs' motion to dismiss plaintiff's inequitable conduct affirmative defenses and corresponding counterclaim in this patent case related to a treatment for hyperthyroidism. The Court dismissed defendants' defenses and claims based upon infectious unenforceability. Defendants showed a relationship between the patents-in-suit and the earlier patents. But defendants did not meet the Fed.R.Civ.P. 9(b) pleading standards because they did not plead an "immediate and necessary" relationship between the patents-in-suit and the earlier patents in the family.

The Court denied the motion to dismiss as to prior art references that had been disclosed in earlier, related patent prosecutions, but not the prosecutions of the patents-in-suit. Defendants' allegations were sufficient to allow the Court to infer that the prior art references were intentionally withheld to avoid rejections similar to those from the earlier prosecutions based upon that prior art. It did not matter that defendants did not allege that the prior art references were not cumulative. Rule 9(b) pleading is designed to put the opposing part on notice, not to require the recitation of "certain magic words." The Court dismissed defendants' allegations regarding allegedly false statements to the PTO because other writings requested the applicant did not believe the statements to be false. 

Defendants' allegations regarding certain of plaintiffs' undisclosed articles were sufficiently plead. Defendants identified specific articles written by patentee, and plead that they were relevant and that patentee failed to disclose them. 

Finally, defendants sufficiently pled that plaintiff's submitted article made misleading statements about the state of the art. Among other reasons, the Court noted that the truth of the contested statements could not be decided upon a motion to dismiss. 

• Email This
• Print
• Trackbacks
• Share Link

Bobak Sausage Co. v. A & J Seven Bridges, Inc. d/b/a Bobak's Signature Events, No. 07 C 4718, Slip Op. (N.D. Ill. Apr. 26, 2010) (Dow, Jr.).

Judge Dow denied without prejudice defendants' Fed. R. Evid. 702 motion to exclude plaintiff's trademark survey expert in this Lanham Act case involving plaintiff's Bobak marks. Plaintiff's eight question survey was flawed. The survey's relevant universe was too broad. 

Metropolitan Chicago residents were surveyed, not just those in the market for the parties' products. The survey was also underinclusive because it excluded businesses, a large percentage of defendants' business. Additionally, the survey asked leading questions, and did not use the parties' visual marks. Finally, the survey used only minimal controls. 

Despite having identified technical defects in the survey, the Court did not exclude the survey. Although the defects substantially limited the usefulness of the survey, the survey was not one of the "rare" ones that are "completely unhelpful" to the trier of fact. But the Court stressed that its decision was preliminary. And the Court was more comfortable allowing a flawed survey because it was the trier of fact. 

• Email This
• Print
• Trackbacks
• Share Link

While the U.S. patent community passes another restless Monday without a Supreme Court decision regarding the future of business methods and maybe software patents in the Bilski case, I have been reviewing an excellent new prior art database from IP.com.*  IP.com's Intellectual Property Library is unique, to my knowledge, among free prior art databases for at least two reasons:  1) it is international; and 2) it searches not just patents, but also non-patent prior art.  The Intellectual Property Library also claims to be the first website outside China offering free access to China's State Intellectual Property Office patent data.  In my experience, China is a huge and often untapped prior art resource in U.S. patent litigation.

In addition to providing a significant amount of patent and non-patent prior art searching capability without any charge.  The Intellectual Property Library has a very nice interface and the search results appear to be very good.  IP.com promises that in addition to a classic full text search, it offers a sophisticated semantic search engine.  I cannot comment on the sophistication of the system, except to say that I was very happy with the quality and speed of my test searches.  Click here to try out the Intellectual Property Library yourself.  If you would like to see some sample results that IP.com has prepared, check out their Interesting Queries.

*  In the interest of full disclosure, I have used IP.com for professional search services before, and would expect to use them again.  But they have not offered me anything in return for this post, nor would I every accept anything were they to.  I am writing about it only because I like the tool.

• Email This
• Print
• Trackbacks
• Share Link

Team USA won the international Patent Cup Regatta earlier this month.  Team USA was skippered by Chicago patent attorney Leif Sigmond, a former Managing Partner at McDonnell Boehnen Hulbert & Berghoff ("MBHB").  This year's Cup was held in Sweden off the island of Marstrand.  Sigmond's crew included:  Marcus Thymian and Michael Gannon, MBHB attorneys; and Derek Minihane , in-house counsel at Intermolecular.  Team USA won five of their six races, all while building goodwill amongst the international patent community.  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 Sigmond's crew won the Cup that year as well.

• Email This
• Print
• Trackbacks
• Share Link

Albecker v. Contour Prods., Inc., No. 09 C 6312, Slip Op. (N.D. Ill. May 3, 2010) (Castillo, J.).

Judge Castillo construed the claims in this patent case involving a wedge-shaped backrest and legless leisure chair. Of particular interest, the Court construed the following terms:

• "Secured to" was defined as "attached using attachment means" that connect a type cushion to a foundation. The "secured to" definition excluded unitary top cushion foundations. The fact that the Court's definition excluded one embodiment because that embodiment was part of a restriction requirement; and
   
• "face of the generally wedge shaped foundation" was not properly briefed, but the Court held that the face was top surface.

The Court declined to construe other claim terms because the parties told the Court that the construed terms were the key terms.

The Court also noted that the parties' Local Patent Rule 4.2(b) joint appendix failed to provide a complete prosecution history – a violation of the LPR 4.2(b).

• Email This
• Print
• Trackbacks
• Share Link

Viskase Companies, Inc. v. World Pac Int'l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 10, 2010) (Bucklo, J.).

Judge Bucklo granted declaratory judgment defendants' (collectively "World Pac") motion to dismiss declaratory judgment plaintiff Viskase's state law tort claims as preempted by Viskase's declaratory judgment patent claims. Patent holders have a basis right to assert their patents. In order to make tort claims based upon patent assertions, therefore, Viskase had to show that defendants acted in bad faith in asserting their patents, and the bad faith had both objective and subjective components. Viskase's general statement of bad faith did not meet the Twombly/Iqbal pleading standards. Furthermore, defendants need not have stated in their assertion letters to third parties that Viskase objected to defendants' claims.

The Court had specific jurisdiction over foreign defendant World Pac. World Pac's filing for U.S. patents and its enforcement letters regarding the patents-in-suite created specific jurisdiction.

• Email This
• Print
• Trackbacks
• Share Link

I am proud to announce that the Chicago Bar Association has honored me, and the Blog, with the 2010 Herman Kogan Media Award.  I usually do not post about personal awards, but I am making an exception because this one stems from my work on the Blog.  I was the first winner of the Kogan Award's new online category.  The print and broadcast category recipients of the 2010 Kogan Awards were, respectively, The Chicago Reporter and Chicago's ABC 7 News.  I received the award for my series of posts on the Local Patent Rules at the end of 2009 -- click here to read the posts.  The award comes with a $1,000 journalism scholarship, which I have given to Loyola University Chicago's journalism school.

Here is a little bit more about the Herman Kogan Media Awards:

Established in 1989, CBA's Herman Kogan Media Awards competition honors local journalists and legal affairs reporting. Qualified candidates in the Chicago metropolitan area submitted entries in one of three entries: Print, Broadcast or Online. The competition celebrates the life of Herman Kogan, whose career spanned more than 50 years and included positions as an editor, reporter, feature and editorial writer, historian, literary critic and radio host.

Thank you to the Chicago Bar Association and the Herman Kogan Media Award committee for this honor.  And if you are interested in hearing more about the award and how I blog, click here for an interview LexBlog did with me after the award.

• Email This
• Print
• Trackbacks
• Share Link

Viskase Companies, Inc. v. World Pac Int'l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 10, 2010) (Bucklo, J.).

Judge Bucklo granted declaratory judgment defendants' (collectively "World Pac") motion to dismiss declaratory judgment plaintiff Viskase's state law tort claims as preempted by Viskase's declaratory judgment patent claims. Patent holders have a basic right to assert their patents. In order to make tort claims based upon patent assertions, therefore, Viskase had to show that defendants acted in bad faith in asserting their patents, both objectively and subjectively. Viskase's general statement of bad faith did not meet the Twombly/Iqbal pleading standards. Furthermore, defendants need not have stated in their assertion letters to third parties that Viskase objected to defendants' claims.

The Court had specific jurisdiction over foreign defendant World Pac. World Pac's filing for U.S. patents and its enforcement letters regarding the patents-in-suite created specific jurisdiction.

• Email This
• Print
• Trackbacks
• Share Link

Wm. Wrigley Jr. Company v. Cadbury Adams USA LLC, Case No. 04 C 346, Slip Op. (N.D. Ill. Mar. 30, 2010) (Dow, Jr.).

Judge Dow denied plaintiff Wrigley's motion for reconsideration of the Court's opinion granting defendant Cadbury summary judgment of invalidity based upon anticipation and obviousness in this patent case regarding menthol-enhanced chewing gum. Because Wrigley originally only opposed the anticipation arguments by claiming the prior art was not enabling, the Court refused to consider any arguments unrelated to enablement. And the fact that the Court did not specifically address each of the seven undue experimentation factors in denying Wrigley's argument against invalidity was irrelevant. The Court was not required to consider every factor. And Wrigley did not specifically tie any of its original arguments to the factors. Finally, Wrigley never provided "meaningful evidence" showing the amount of experimentation that would have been required. The Court did not address Wrigley's arguments regarding obviousness because they sough to "re-hash rejected arguments."

• Email This
• Print
• Trackbacks
• Share Link

Nova Design Build, Inc. v. Grace Hotels, LLC, No. 08 C 2855, Slip Op. (N.D. Ill. Feb. 26, 2010) (Der-Yeghiayan).

Judge Der-Yeghiayan granted defendant summary judgment as to plaintiffs' copyright infringement claims, and refused to exercise supplemental jurisdiction over plaintiff's state law claims. Plaintiffs had a registered copyright, which was prima facie evidence of registration. But the Court held the registration was invalid because it was not accompanied by original deposit materials.

Plaintiffs were robbed prior to filing for their copyright. The original building diagrams were taken at that time. So, in order for plaintiffs to get copyright protection, plaintiff prepared a reconstruction of the deposit materials – blueprints in this case. The fact that the deposit material was a close approximation of the originals was not enough. Furthermore, manual reconstruction without reference to the original was also not sufficient. Having denied plaintiffs' federal claims, the court exercised its discretion to refuse supplemental jurisdiction over the state law claims.

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

• Email This
• Print
• Trackbacks
• Share Link

Lettuce Entertain You Enters., Inc. v. Leila Sophie AR, LLC, No. 09 CV 2582, Slip. Op. (N.D. Ill. Feb. 26, 2010), (Lefkow, J.). 

Judge Lefkow granted plaintiff Lettuce Entertain You ("LEYE") a preliminary injunction against defendants' use of the name "Lettuce Mix" in their salad bar restaurant in Lincoln Park. LEYE argued that the defendants' "Lettuce Mix" name would infringe its family of "Lettuce" marks for use in restaurant services.

Likelihood of Success

LEYE's Lettuce marks were not generic as used for restaurant services. While some of LEYE's meals included lettuce, LEYE was not in the business of lettuce sales. And defendant's intent to use its Lettuce Mix name was sufficient for use in commerce.

The Court held there was a likelihood of confusion. Both parties marks focus upon "lettuce" and use it as a pun for "let us." This is true even though LEYE's logo, which includes a waiter opening a covered a dish was different from defendant's logo. Additionally the parties' services in the restaurant industry were similar.

Both parties used the marks in the same area and manner. They directly compete for restaurant customers, and at least one of LEYE'S 70 restaurants is within one mile of Lettuce Mix. To the extent both parties cater to patrons seeking inexpensive, casual meals, the patrons are assumed to use a lesser degree of care, even though some of LEYE's restaurants are more expensive.

LEYE's family of Lettuce markers was strong, and defendants' argument to the contrary was their genericness argument that the Court previously denied.

LEYE, however, did not provide evidence of actual confusion, although actual confusion is not required. And there was no evidence that defendants intended to pass themselves off as affiliated with LEYE. Finally, defendants' was not a fair use because lettuce was not descriptive of their service.

Irreparable Harm

Trademark infringements are presumed to result in irreparable harm. LEYE would, therefore, have been irreparably harmed by any trademark infringement from defendants.

Balancing Harm

Defendants would not suffer significant harm from the injunction given that they had already stopped using the allegedly infringing name. And any loss of defendants' goodwill would be attributable to their own actions.

Public Interest

The public interest would not be harmed by the preliminary injunction. Enforcement of trademarks serves the public good, and LEYE had shown a "substantial" likelihood of confusion.

• Email This
• Print
• Trackbacks
• Share Link

AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Mar. 8, 2010) (Darrah, J.).

Judge Darrah, after a bench trial, held that defendant’s use of his Oil Zone and Wash Zone marks did not create a likelihood of confusion with plaintiff AutoZone’s Auto Zone trademarks.*

Likelihood of Confusion

Only one of the seven likelihood of confusion factors weighed in AutoZone’s favor – the strength of AutoZone’s mark. But the strength of the mark was outweighed by the dissimilarity of both the marks and the services offered by the parties. Apart from the common use of the word “zone” there was little similarity between plaintiff’s AutoZone and defendant’s Oil Zone/Wash Zone. And while AutoZone sells auto parts, defendant performs automatic services.

Laches

AutoZone’s four-year delay exceeded the analogous Consumer Fraud and Deceptive Business Practices Act three-year statute of limitations. The fact that defendant’s alleged infringement “fell through the cracks” and was not acted on for four years, was not a sufficient excuse for the delay. And defendant was prejudiced by AutoZone’s delay based upon defendant’s four years of advertising the Oil Zone/Wash Zone names.

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

• Email This
• Print
• Trackbacks
• Share Link