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

AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Jun. 9, 2010) (Darrah, J.).

Judge Darrah granted in part defendants' bill of costs after defendants prevailed in a trademark infringement trial – click here for much more on the case in the Blog's archives. The Court awarded deposition transcript fees, but only up to the then applicable Northern District costs - $3.30 per page for an original transcript and $.83 per page for a copy. Because defendants did not show they were reasonably necessary, the Court did not award costs for condensed transcripts, word indexes, or delivery charges. 

The Court awarded costs for daily trial transcripts because they were necessary for direct and cross-examinations during trial and post-trial findings of fact. The Court awarded photocopying costs at $.10 per page only to the extent defendants showed the purposes of the copying. Finally, the Court awarded the costs of making the defendants' trial exhibits, excluding shipping costs. 

• Email This
• Print
• Trackbacks
• Share Link

Nova Design Build, Inc. v. Grace Hotels, LLC, No. 08 C 2855, Slip Op. (N.D. Ill. Jun. 8, 2010) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted defendant Grace Hotel's motion for costs and denied without prejudice Grace Hotel's motion for attorney's fees. As an initial matter, the Court held that Grace Hotels was a prevailing party pursuant to both Fed. R. Civ. P. 54(d) (costs) and 17 U.S.C. § 505 (attorney's fees). While the standards were different, Grace Hotels met both standards. Grace Hotels was granted summary judgment on plaintiff's copyright infringement claim because plaintiffs did not have a valid copyright registration – click here for more on this opinion in the Blog's archives. While the decision was jurisdictional and not substantive, Grace Hotel was a prevailing party because the Court's ruling "effectively foreclosed" Plaintiff's copyright claims. In other words, "Grace [Hotels] obtained more than just a moral victory on a minor jurisdictional point." Because Grace Hotels was a prevailing party, the Court awarded the reasonable costs Grace Hotels requested for court reporter fees pursuant to Fed. R. Civ. P. 54(d) - $2,534.70. 

While Grace Hotels was also a prevailing party for purposes of § 505, the Court denied Grace Hotels attorney's fees motion without prejudice. The fees did not appear reasonable. They were not limited to fees associated with defending the copyright claim. Grace Hotels was not entitled to fees for defending related state law claims which the Court declined to exercise supplemental jurisdiction over after resolving the federal copyright claim. Grace Hotels also sought fees for a separate case between the parties. The Court allowed Grace Hotels to file a renewal motion for attorney's fees tailored to the recoverable fees.

• Email This
• Print
• Trackbacks
• Share Link

Simonian v. Merck & Co., No. 10 C 1297, Slip Op. (N.D. Ill. June 1, 2010) (Shadur, Sen. J.).

In response to defendant Merck's motion to dismiss plaintiff's false patent marking action, the Court sent a copy of its prior decision in Zojo Solutions, Inc. v. The Stanley Works, No. 10 C 1174, Slip Op. (N.D. Ill. May 12, 2010) (Shadur, Sen. J.). In that case, the Court held that marking with expired patents was actionable and that an individual citizen could bring a false marking action pursuant to 35 U.S.C. § 292. The Court ordered the parties to appear on the notice date to discuss the course of the litigation.

• Email This
• Print
• Trackbacks
• Share Link

Kathrein-Werke KG v. Radiacion y Microondas S.A., No. 07 C 2921, Slip Op. (N.D. Ill. May 17, 2010) (Guzmán, J.).

Judge Guzmán construed the contested terms of plaintiff's patent to a high frequency phase shifter unit having a pivotable tapping element. Of particular note, the Court construed:

• "Stripline" was a conductive strip, but it did not need to be a flat, conductive strip. Nothing in the claim or specification required striplines be flat, and plaintiff's extrinsic evidence could not overcome the intrinsic evidence.
   
• "Stripline sections", "stripline segments" and "stripline elements" were construed to mean the same thing. While claim differentiation creates a presumption that different terms have different meanings, that presumption was overcome by the intrinsic evidence which showed patentee "obstinately" using the terms to mean the same thing.
   
• "Extending" was given its ordinary meaning of "lengthening." The Court held that plaintiff's definition "lengthening in one or more direction" included an unnecessary element that was not supported by the intrinsic evidence.
   
• "Transformers" were defined as "devices that transfer electrical signals and match impedance values." The Court also construed the statement that transformers "share power" as meaning that transformers "permit the sharing of power" because the parties agreed that transformers cannot share power.

• Email This
• Print
• Trackbacks
• Share Link

Eva's Bridal Ltd. v. Halanick Enterprises, Inc., No. 07 C 1668, Slip Op. (N.D. Ill. May 19, 2010) (Darrrah, J.).

Judge Darrah granted in part defendants' and denied plaintiffs' summary judgment motions in this Lanham Act case over the use of the name "Eva's Bridal." The Court granted defendants' summary judgment as to plaintiffs' trademark infringement claim because plaintiffs presented no evidence that they federally registered the "Eva's Bridal" trademark.

Plaintiffs' Lanham Act unfair competition and trademark dilution claims did not require a federally registered trademark. But because the mark was not registered, plaintiffs had the burden of proving ownership of the mark.  Plaintiffs created at least a question of fact as to ownership with evidence that plaintiffs' business was a continuation of the original use of the mark. And because the mark was based upon a first name and not a last name the mark was not necessarily descriptive. The Court, therefore, held there was a question of fact as to whether the mark was descriptive. 

Defendants agreed that plaintiffs abandoned the mark by licensing it without maintaining any quality control. Plaintiffs, however, presented sufficient evidence of control to create a question of fact.

Defendants' argument that plaintiffs had not shown a likelihood of confusion was not relevant to a dilution analysis. And defendants' argument that the Eva's Bridal mark was not famous failed because it was not developed. Defendants' argument was a single sentence without elaboration or support.

There was also a question of fact as to defendants' laches and acquiescence claims. Plaintiffs cited evidence that during the alleged delay the parties engaged in various negotiations and defendants made various payments.

Finally, the Court denied plaintiffs' summary judgment motion. Plaintiffs failed to comply with Local Rule 56.1(a)(3) requiring a statement of uncontested material facts supported by admissible evidence. Plaintiffs' statements were largely taken verbatim from its amended complaint, were largely irrelevant to the summary judgment issues and were largely not supported by cites to the record. The Court, therefore, denied plaintiffs' motion without analyzing it on the merits. 

• Email This
• Print
• Trackbacks
• Share Link

Zojo Solutions, Inc. v. The Stanley Works,No. 10 C 1175, Slip Op. (N.D. Ill. May 12, 2010) (Shadur, Sen. J.).

Judge Shadur denied defendants' motion to dismiss this false patent marking case before plaintiff responded. First, the Court held that marking with expired patents was actionable pursuant to 35 U.S.C. § 292(a), citing Forest Group, Inc. v. Bon Tool Corp., 590 3d 1295 (Fed. Cir. 2009). Also citing Forest Group, the Court held that private citizens had standing. The Court reasoned that if there was not standing, the Federal Circuit would have been obligated to address it before deciding the substantive issues. Finally, the Court characterized false patent marking cases as an "infestation of dandelions" which "dot the greensward of patent litigation." 

• Email This
• Print
• Trackbacks
• Share Link

The Farnsworth Invention, a play about the fight over patent rights to television broadcasting has left Broadway and come to the TimeLine Theatre, at Wellington and Broadway in Chicago.  I have to admit I have not had time to see the play myself.  But when I tell Chicagoans that I am a patent litigator, I an increasingly met with questions about whether I have seen The Farnsworth Invention and recommendations to see it.  And an excellent review of the play by the Chicago Daily Law Bulletin's Jerry Crimmins prompted me to write about it.  Crimmins' review is reprinted below with permission.  The play ends its run at the end of next week.  So, get to the TimeLine soon.  Tickets are still available.

Review: Play on patents will entertain those new to the story

By Jerry Crimmins
Law Bulletin staff writer
 

There's a play on the North Side about a spectacular invention and the fight over the patent between a hick genius and a New York corporation.

The play was written by the man who created TV's "The West Wing."

Yet hardly any patent or intellectual property lawyers in Chicago seem to be know about this play.

"The Farnsworth Invention," by Aaron Sorkin, is about the creation of television.

Formerly on Broadway, its Chicago premiere is at the TimeLine Theatre, 615 W. Wellington Ave., in the Wellington Avenue United Church of Christ. The play will run only through July 24 and must close, TimeLine says.

"I was unaware of such a play," said a member of the Chicago Intellectual Property Alliance (CIPA), a common response from attorneys contacted. The play has been here since April.

Another member of CIPA said he could "confirm that many patent/IP practitioners are not aware of this play. …"

"The Farnsworth Invention" combines elements of a docudrama and a biopic with the frenzy of a Marx Brothers movie.

The "play" element, meaning what children do, is prominent in this production, directed by Nick Bowling. Yet the thrust of the play is serious.

It tells the lives of Philo T. Farnsworth (played by Rob Fagin) and David Sarnoff (P.J. Powers).

Half the story opens at the turn of the century with the child Sarnoff — a Russian Jew who would become president of the Radio Corporation of America (RCA) — meeting the Cossacks.

The other half begins when Farnsworth, who was born in a log cabin in Indian Creek, Utah, meets his high school science teacher.

Farnsworth tells the incredulous teacher about Farnsworth's detailed plan for a way to transmit moving pictures through the air.

Teenager Farnsworth gives the science teacher a sketch, and the teacher saves it. That becomes a key element in Farnsworth's court fight with Sarnoff in the 1930s about the patent rights to television.

"The Farnsworth Invention" has almost 40 scenes, lightning scene changes, and 16 actors who play nearly 70 characters.

It takes place in the early days of Guglielmo Marconi's invention, radio, along with the sinking of the Titanic, Vladimir Zworykin's application for a patent in 1923 for "mechanical" television, and Farnsworth's application in 1927 for a patent for his "electronic television."

Farnsworth's cheap laboratory employs his friends, sister and brother-in-law.

Zworykin, a minor character here, goes to work for Westinghouse and then for the mogul Sarnoff at RCA.

Farnsworth's success in 1927 in transmitting the first electronic image to a screen is portrayed — great props here — with panic and verve by Fagin and all hands involved.

Farnsworth was then 21.

Sarnoff's vision of what was to come with both radio and television — his business prowess, drive to be first no matter what and incredible gift for self-promotion — is well-portrayed in Powers' strong performance.

Farnsworth (Fagin) and his wife, Pem, played by Bridgette Pechman, get the love story. Fagin makes Farnsworth an everyman genius.

The historical sweep of the play also takes in some early legal controversies involving radio, the 1929 stock market crash and its effects on Sarnoff, RCA, and, separately, Farnsworth.

The story covers Farnsworth's personal problems and a version of the later lives of Sarnoff and Farnsworth. Part of this sweep is achieved through narrations by the Farnsworth and Sarnoff characters.

The play is controversial. This reviewer suggests that anyone who goes to see it avoid all advance study of the lives of Farnsworth and Sarnoff and the court battle.

Sorkin's play seems intended to entertain and educate people who don't know the story and want to hear it. The needs of the stage and the compression of this story into two hours and 20 minutes, including intermission, requires dramatist's tricks.

Once the play has rolled over the viewer in the way the author intended, only then should one read the playbill (an extremely good story in itself), the Wikipedia entry on the play, and comments on the Internet by Farnsworth's descendants, Kent Farnsworth and Linda Farnsworth.

Chicago attorney Steven G. Parmelee of CIPA, who said that neither he nor many other IP lawyers were aware of the play, said the play needs to appeal to "the spouses of patent/IP attorneys … as they might be fearing a night trapped in a virtual CLE presentation."

In answer to that, this is a real, lively show by one of the leading dramatists of our time.

As a Chicago note, Allen H. Gerstein, a retired name partner of Marshall, Gerstein & Borun LLP, said he started with the firm in 1962 when it was named Merriam, Smith & Marshall. Name partner Samuel B. Smith "was former head of RCA's patent department" and "very familiar with the litigation and Zworykin, who Sam considered a genius," Gerstein said.

jcrimmins@lbpc.com

• Email This
• Print
• Trackbacks
• Share Link

Tuesday, the Senate confirmed Illinois Appellate Court Justice Sharon Johnson Coleman as the Northern District of Illinois's next district judge.  From 1996 until 2008, Justice Coleman served as a judge of the Circuit Court of Cook County, Illinois.  Between 1993 and 1996, she held the position of Deputy State’s Attorney and Bureau Chief for the Public Interest Bureau of the Cook County State’s Attorney’s Office.  From 1989 to 1993, Justice Coleman served as an Assistant United States Attorney in the Northern District of Illinois.  From 1984 until 1989, she was an Assistant State’s Attorney in Cook County.  Justice Coleman received her J.D. in 1984 from Washington University School of Law in St. Louis and her B.A. in 1981 from Northern Illinois University.

Welcome to the Northern District of Illinois bench Judge Coleman.

• Email This
• Print
• Trackbacks
• Share Link

Von Holdt v. A-1 Tool Corp., No. 04 C 4123, Slip Op. (N.D. Ill. May 17, 2010) (Manning, J.).

Judge Manning granted defendants (collectively "A-1 Tool") summary judgment as to plaintiff's (collectively "Plas-Tool") patent claims based upon a lack of notice and as to the plaintiff's Computer Fraud and Abuse Act ("CFAA") claims, and chose not to exercise supplemental jurisdiction over the remaining state law claims. A-1 Tool sought summary judgment of a lack of pre-suit notice of the alleged patent infringement. The issue was dispositive because Plas-Tool's patent expired before the suit was filed. So, pre-suit-notice – actual or constructive – was required in order for Plas-Tool to have any damages.

Plas-Tool's general statements that they would sue A-1 Tool if it ever infringed Plas-Tool's patents did not create actual notice. And the alleged patent knowledge of Plas-Tool's former employee who joined A-1 Tool could not be imputed to A-1 Tool for purposes of actual notice. A-1 Tool's burden was to make an evidentiary showing that could lead a reasonable person to find that Plas-Tool complied with the marking requirements by marking substantially all of Plas-Tool's relevant product. Plas-Tool did not meet its burden of proof. Plas-Tool's only evidence of marking compliance was testimony from Plas-Tool's 30(b)(6) witness. The witness testified that Plas-Tool's policy was to mark its products, but had no recollection of what specifically was marked. And the Court held that evidence of a company policy to mark without any other evidence of marking compliance was insufficient to overcome summary judgment. Beyond the 30(b)(6) testimony, Plas-Tool's only marking evidence was having sent a customer two molds including patent markings. But when the molds were returned, one of them had the patent marking covered up, suggesting the product was made from the mold had not been marked. The Court, therefore, granted A-1 Tool summary judgment on Plas-Tool's patent claims for lack of notice.

The Court also granted A-1 Tool summary judgment on Plas-Tool's CFAA claim. Plas-Tool alleged that its former employee improperly accessed and damaged CAD files related to the patented products. But Plas-Tool was not able to identify any damage to the allegedly accessed files and the CFAA was not designed to deal with disgruntled former employees that took electronic files as they left. Also, Plas-Tool was unable to show the required $5,000 in damages within one year of the alleged damage. The loss Plas-Tool was able to show was not related to fixing damaged files, as required by the CFAA. Plas-Tool's alleged damage was related to a forensic review that allegedly showed that the former employee tampered with the files.

Having granted summary judgment on the federal patent claim and the CFAA claim, the Court declined to exercise supplemental jurisdiction over Plas-Tool's state law claims.

• Email This
• Print
• Trackbacks
• Share Link

Chief Judge Holderman recently gave the annual State of the Court address, concluding that the Northern District continues to be an active, growing district court. Civil case filings were up 6.2% from 2008 to 2009, and the Northern District remains in the top 10% of district courts for median time to disposition – 6.2 months. 

The Court began 2009 with one vacant judgeship – created by Judge Filip's March 2008 resignation. The Court ended 2009 with from after Judges Bucklo, Coar and Gettleman took senior status. In February 2010, Judge Manning also took senior status. Judge Feinerman was confirmed last month, reducing the vacant seats by one, but there could be five vacancies again at the end of July when Judge Anderson retires. 

The magistrate bench was also active. Judges Ashman and Keys shifted to recalled status. Judges Finnegan, Gilbert and Kim joined the bench. 

Finally, the number of registered e-filers is up 18% to over 25,000. And the daily filing rate is up 15% to an average 867 documents per day. 

• Email This
• Print
• Trackbacks
• Share Link

Alta Mere Indus., Inc. v. DBC Window Tinting, Inc., No. 10 C 266, Slip Op. (N.D. Ill. May 6, 2010) (Darrah, J.).

Judge Darrah granted defendant Impact's Fed. R. Civ. 12(b)(2) motion to dismiss plaintiff Alta Mere's Lanham Act claims regarding its marks related to automotive window tinting and alarm systems. Impact operated a local Texas business and had no other identified Illinois contacts. Alta Mere argued that the Court had specific jurisdiction over Impact because of Impact's interactions with other defendants who were Alta Mere franchisees, as well as two letters allegedly sent to Impact warning that a franchise agreement governing defendant Cader's use of the Alta Mere marks were governed by Illinois law.

The Court considered jurisdiction over each defendant separately and, therefore, did not consider the other defendants' Illinois contacts in analyzing jurisdiction over Impact. Impact alleged that it never received Alta Mere's letters. But even if Impact had received them, correspondence sent to a defendant outside the forum could not alone create jurisdiction. The letters were "random, fortuitous, or attenuated contacts."

• Email This
• Print
• Trackbacks
• Share Link

This post comes more than a week after the Supreme Court decided Bilski.  Last Monday when the decision came down I was struggling with what value I could add to the many reports that would fill the intellectual property blogosphere, and was leaning towards waiting a few days (which also allowed me to deal with various client commitments and new opportunities).  Then a good friend praised me for being the lone IP blog who had not said a word about Bilski on the day of the decision, after receiving an email of the blog's content for the day.  That comment cemented it for me.  I decided to give myself some time to think about the decision before posting here.  Of course, that means that much of what can be said already has been.  So, links to many excellent commentaries are below. 

At its heart, the Bilski decision continues the Supreme Court's patent law trend moving away from bright line rules and allowing the flexibility to adapt the law to future situations.  The business method in Bilski was struck down, but the Court did not strike down all business methods.  And the justices made clear that the machine-or-transformation test was not the only option for determining patentability, increasing the law's flexibility even more.  Having preserved at least some business methods, the Court obviously left software patents intact as well.  So, Bilski was not the death of business methods or software.  And just as after KSR (obviousness) and eBay (injunction standard), the decision injects uncertainty into the law that will take 18 - 24 months to sort out, first in the district courts and then more slowly in the Federal Circuit.  The one thing you can be sure of is that you will see lots of Bilski-based motions over the next year.  And I am sure I will be writing about Northern District Bilski decisions during that time.

Here is some of the commentary from across the blogosphere:

• 271 Patent Blog; 
   
• Chisum's Notes on Bilski;
   
• Filewrapper (noting that the Supreme Court issued grant, vacate and remand orders in two business method cases assuring we will get some realtively quick Federal Circuit guidance on the outlines of Bilski);
   
• IPWatchdog (arguing, among other things, that even in the post-Bilski world one could write claims that would capture Bilski innovation);
   
• New York Times Bits Blog (looking at the uncertainty the decision injects into litigation);
   
• Patent Docs (looking at Bilski's impact upon biotech patents);
   
• Patently-O (and here, here, here and here); and
   
• WSJ Law Blog.

• Email This
• Print
• Trackbacks
• Share Link

A group of Chicago trademark lawyers has set up the First Annual Chicagoland Trademark Practitioners Golf Outing on July 19, 2010. I have to admit that I am more of a runner and a swimmer than a golfer, but I can appreciate a day on a beautiful course with great people as much as anyone. And this promises to be exactly that. The event is being held in Northbrook at Mission Hills Country Club. The golf will be a four-person scramble format with lunch, a happy hour and an outdoor dinner with an awards reception. Registration costs $150 for an individual, $500 for a foursome or $50 for only the happy hour and dinner. Click here to register.

The events planning committee includes: Joe Norvell - Norvell IP, Kevin McDevitt and Rick Biagi - Neal & McDevitt, LLC, Jim McCarthy - McDonnell, Boehnen, Hulbert & Berghoff, LLP, Eric Gallender - McDonald's Corporation, and Paul Allen - Marksmen

• Email This
• Print
• Trackbacks
• Share Link