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

Bone Care Int'l, LLC v. Pentech Pharma., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Jul. 16, 2010) (Ashman, Mag. J.).

Judge Ashman granted plaintiffs' motion to strike defendants' late-filed expert declaration. The Court previously held that discovery in this case was long closed and that "enough [was] enough." The Court, therefore, granted the motion to strike defendants' expert declaration filed with a Daubert motion for three reasons:

1. The Court's February 9, 2010 Order holding that "enough [was] enough" regarding discovery was still in effect.
    
2. Plaintiff would suffer prejudice from defendants' late-filed expert declaration with trial "looming."
    
3. Defendants had the information required in December 2009, before discovery closed.

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On October 29 from 7:30 until 9:15 am at the Gleacher Center in Chicago, Analysis Group is hosting a free seminar about the entire market value rule that looks very interestin.  Here is how they describe it:

The entire market value rule (or "EMVR") allows for the recovery of patent infringement damages based on the value of the entire product that contains an infringing component (when the patent-related feature is the basis for consumer demand). It has historically been a potent tool for patentholders claiming damages in intellectual property cases. However, increased scrutiny of the application of the EMVR suggests that more rigorous, empirical approaches are needed to provide adequately detailed evidence of consumer-driven demand. In this seminar:

David C. Giardina, Esq., Partner at Sidley Austin LLP, will address the impact recent cases such as Lucent Technologies v. Gateway Inc. may have on future damages claims and analytic requirements by the courts.

Iain M. Cockburn, Ph.D., George Schultz Professor of Economics, The University of Chicago Booth School of Business; Dean Designate, Yale School of Management, will discuss hedonic analysis, a method that uses actual product, price, and sales data, to evaluate consumer demand.

John R. Hauser, Sc.D., Professor of Marketing and Head of the Management Science Area of MIT Sloan School of Management, will focus on the use of conjoint analysis, a survey methodology that can be employed in the absence of sufficient market data, to assess consumer preferences.

Click here to register for the seminar.

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For the next five Fridays, I will be running a series of twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation.  The tips are not in a particular order, so I will not countdown backwards to tip number one.  Why twenty-five?  I found that beyond twenty five, the tips became focused upon minutia. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinion over the last four years.  As you read them, let me know if you come up with others.  I will be glad to include them as I go.  Here are the first five:

1. Draft complaints to meet both the Local Rules and the Judge's requirements. There are pleading requirements in the Local Rules that are pretty standard, but do not make the mistake of failing to review them because they may not be the same as courts you are more familiar with. And do not stop at reading the Local Rules, check out requirements of specific judges before deciding, for example, how many unrelated parties to put into a single patent complaint. Click here for some examples of opinions to consider.
    
2. Repeat plaintiffs' allegations in your answers. Local Rules require that you repeat the complaint paragraphs in your answer. Most judges will not return your answer for failing to do so, but some will. And even if they do not, you render your answer far less useful a tool for the judge and her chambers.
    
3. Deliver courtesy copies. The Local Rules require courtesy copies be delivered within one business day, and some judges' standing orders require same day delivery. Opinions chastising counsel for failing to provide courtesy copies are surprisingly frequent. But even if your judge does not penalize you for failing to meet the courtesy copy requirements (and some will) if your motion or response is on a tight schedule you run the risk of not being fully heard. For example, if you are filing a response brief the day before a motion is to be heard and you bring your courtesy copies with you to the hearing you have only the slimmest chance that your brief is being read and digested before the hearing.
    
4. Certificates of service are not required when all parties are on ECF. This may not be mission critical, but using an unnecessary certificate of service signals to your opponent that you are not well versed in the Local Rules or custom. That is not necessarily a fact that you want to give away.
    
5. Signature blocks require both email and a fax number. Despite the 2008 revision to Federal Rule of Civil Procedure 11, many litigators still do not add email or fax numbers to signature blocks. I have not seen anyone sanctioned or warned for this omission yet, but you do not want to be the first.

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Jul. 12, 2010) (St. Eve, J.).

Judge St. Eve denied plaintiffs' motion for a letter of request to India's Ministry of Law and Justice seeking a deposition of an individual third party that previously was a software programmer for defendant's software vendor Wipro. Despite identifying the witness in July 2009, Plaintiffs did not file their motion until June 2010, two weeks before the close of discovery.

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OpticsPlanet, Inc. v. OpticSale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Jul. 14, 2010) (Shadur, Sen. J.).

Judge Shadur granted in part plaintiff OpticsPlanet's Rule 12(b)(6) motion to dismiss certain of defendants' (collectively "OpticSale") counterclaims in this dispute over trade names. As an initial matter, the Court noted that OpticSale's tortious interference with prospective business relationships and with prospective economic advantage claims were properly brought as a single federal claim pursuant to Fed. R. Civ. P. 10(b). Furthermore, both counts failed at the hands of the competitor's privilege. Businesses are free to compete to divert business from their competitors unless, among other exceptions, the competition is solely motivated by spite or ill will. OpticSale made no such allegation in this case. And the Court noted that OpticSale had competed with OpticsPlanet in similar ways. 

The Court also dismissed OpticSale's Sherman Act attempted monopolization claim because there was no indication that OpticsPlanet controlled or could come to control market prices. The Court further noted that the claim improperly sought to turn competition into attempted monopolization.

Finally, the Court dismissed OpticSale's accounting claim to the extent its scope was reduced by dismissal of the other claims.

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The Licensing Executives Society is hosting its 2010 annual meeting in Chicago from September 26 through September 29.  I will be attending and I know several other bloggers will be there as well.  So, it is a great time for the next Chicago-area law blogger gathering, and of course non-bloggers are welcome as well.  We will be gathering Monday, September 27 beginning at 6:00 pm at Lizzie McNeill's, the only Irish pub on the Chicago River according to Lizzie's.  Lizzie's is located on the Chicago River at 400 N. McClurg Court, next to the Sheraton that is hosting the annual meeting.  I hope to see you there, especially Peter Zura of the 271 Patent Blog; Stephen Albainy-Jenei of Patent Baristas; and the anonymous Ed. of Blawg Review.

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BlueStar Management, LLC v. The Annex Club, LLC, No. 09 C 4540, Slip Op. (N.D. Ill. Jul. 12, 2010) (Gettleman, J.).

Judge Gettleman granted in part defendants' Fed. R. Civ. P. 12(b)(6) and 9(b) motion to dismiss this Lanham Act case. Plaintiff Wrigley Done Right sued defendants, a number of other Wrigley Rooftops and one rooftop owner individually alleging that defendants harmed Wrigley Done Right by falsely advertising the Wrigley Done Right name and excluding Wrigley Done Right from websites and organizations. 

Lanham Act

The Court dismissed the Lanham Act claims as to all defendants except the individual defendant and one of his rooftops the Wrigley Rooftop Club. Wrigley Done Right sufficiently pled the who, what, where, when, and why of its claims as to those two defendants. Wrigley Done Right sufficiently pled false designation: 1) defendants sponsored an advertisement showing a picture of Wrigley Done Right linked to the Wrigley Rooftop Club; 2) defendants placed the ad in interstate commerce via the internet; and 3) Wrigley Done Right was harmed by business lost to the ad.

Wrigley Done Right also sufficiently pled false advertising. Wrigley Done Right pled that, for more than a year, defendants provided and advertised the availability of its Ivy League Club despite the fact that it was under construction. Further, the Ivy League Club's booked reservations during that time diverted sales from Wrigley Done Right. Because the legal inquiry for Wrigley Done Right's Deceptive Trade Practices Act and Consumer Fraud Act claims involved the same legal inquiry, the motion to dismiss was denied as to them as well.

Sherman Act

Wrigley Done Right's Sherman Act § 1 claim was dismissed. Wrigley Done Right pled a group boycott of it by defendants which prevented Wrigley Done Right from joining a rooftop association. But Wrigley Done Right did not plead that exclusion from the group would result in serious anticompetitive effects. And Wrigley Done Right pled no lost customers or revenues.

Tortious Interference

The Court dismissed Wrigley Done Right's tortious interference claim because the parties were competitors and defendants only engaged in protected competitive behavior.

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Kim v. Earthgrains Co., No. 01 C 3895, Slip Op. (N.D. Ill. Jun. 24, 2010) (Cox, Mag. J.).

Judge Cox denied defendant's motion to dismiss plaintiff's patent claims regarding a bread formulation pursuant to 28 U.S.C. 1915(e)(2)(A). The Court held that plaintiff made false statements on her in forma pauperis ("IFP") application. The normal remedy for false IFP application statements was dismissal of the applicant's case.

But that remedy was not appropriate in this case because plaintiff had not "reaped the benefits" of IFP status. Plaintiff financed her own case for over nine years by mortgaging her house, using credit cards and borrowing from friends and family. Plaintiff only applied for IFP status after the Court suggested it, and only enjoyed its benefits for ten months. And while plaintiff made false statements, they were all either contradicted elsewhere in the application or the false statements tended to portray plaintiff as wealthier than she was. The consumers, therefore, suggested plaintiff misunderstood the question. While the Court did not dismiss plaintiff's claims, the Court did sanction plaintiff pursuant to Fed. R. Civ. P. 11 for her false statement. Plaintiff was ordered to pay for here legal services received from pro bono counsel. The Court, however, observed the fees and costs were not likely recoverable unless plaintiff won at trial.

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The Intellectual Property Law Association of Chicago will be holding its annual Patent Law Symposium October 1, 2010 beginning at 8:45 am at the Union League Club of Chicago.  Presentations and panels include:

• Life Under the N.D. of Illinois Local Patent Rules and Jury Instructions -- Northern District of Illinois Chief Judge, Presiding Magistrate Judge Sidney Schenkier and Allan Sternstein of Dykema Gossett

• Recent Developments In IP Law:  The Year In Review -- Edward Manzo of Husch Blackwell

• Mock Inventor Deposition  -- Timothy Delaney of Brinks Hofer Gilson & Lione and Paul Vickrey of Niro, Haller & Niro

• Best Practices:  Attorney-Client Privilege and Ethical Considerations in IP Transactions -- Glen Belvis of Foroenergy

• Reexamination:  Ex Parte and Inter Partes -- Janet Garetto of Nixon Peabody (moderator), Joseph Berghammer of Banner & Witcoff and Jessica Harrison, PTO's Central Reexamination Unit

• Patent Damages -- Garret Leach of Kirkland & Ellis and Raymond Sims, Vice-President of CRA International

• Common Mistakes in Briefs and Arguments before the Federal Circuit and How to Avoid Them -- Olivia Luk of Jenner & Block (moderator), the Federal Circuit's Chief Judge Randall Rader, John Whealan, Dean at the George Washington University Law School, and Emily Johnson, Federal Circuit Law Clerk

The Symposium schedule is here.  A cocktail reception will take place following the Symposium.  Register here, $275 for members and $425 for non-members.  Following the program, IPLAC will host its annual judges dinner with keynote speech by Judge Rader.  Click here for registration information cost for members and non-members is $150.

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Merrill Primack v. Polto, Inc., No. 08 C 4539, Slip Op. (N.D. Ill. Jul. 8, 2010) (Dow, J.).

Judge Dow granted defendants' Fed. R. Civ. P. 12(b)(2) motion to dismiss this Lanham Act case over plaintiff's "Credit Lifeline" mark for lack of personal jurisdiction. Plaintiff did not claim general jurisdiction, relying only upon specific jurisdiction. Defendants' only Illinois contacts were the sale of 212 books unrelated to the Credit Lifeline mark into Illinois. And defendants' offer for sale of its Credit Lifeline book via an interactive website could not alone create specific jurisdiction. Similarly, injury to intellectual property alone did not create jurisdiction based upon the effects test. Harm to the plaintiff in the jurisdiction did not satisfy the test by itself. Defendant's actions must have been intentional, aimed at the forum state and defendant had to know that plaintiff's harm was likely to be suffered. But there was no indication that defendant was even aware of plaintiffs' Credit Lifeline mark, or of plaintiff, from defendant's first use of the mark in 2001 until, at the earliest, when plaintiff registered its mark in 2008.

Finally, the Court held that there was no persuasive reason that exercising personal jurisdiction would have comported with "fair play and substantial justice." 

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Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 95 C 4088, Slip Op. (N.D. Ill. Jun. 29, 2010) (Kim, Mag. J.).

Judge Kim granted declaratory judgment defendant Trading Technologies ("TT") approximately $290,000 of $375,000 requested in fees and costs pursuant to Fed. R. Civ. P. 37(b)(2) in this patent case.* On March 14, 2007, the Court held that declaratory judgment plaintiff Rosenthal Collins Group's ("RCG") summary judgment motion was "misleading," "disingenuous" and "prematurely filed" – click here to read more about the opinion in the Blog's archives. The Court, therefore, found RCG's conduct sanctionable, struck the motion without prejudice, struck the supporting Buist declaration, and ordered RCG to pay costs for TT's software consultants, and attorney's fees and costs related to the sanction motion.

On July 17, 2008, the Court denied RCG's motion to vacate the sanction order and again ordered RCG to pay: 1) TT's consultant; 2) TT's deposition of the Buists; and 3) TT's prosecution of the sanctions motions. The Court also ordered the parties to comply with Local Rule 54.3 by trying to come to agreement on the issues.

Initially, the Court observed that "contentiousness and obvious material distrust" demonstrated by both sides had "leached" into the parties briefing. The Court awarded TT the full amount of its expert fees and costs because those fees and costs were specifically awarded by Judge Moran and because TT showed that all of the expert's work was impacted by or resulted from the misconduct. Those fees were approximately $52,000.

The Court also awarded TT's attorney's fees and costs of approximately $157,000 related to the depositions of the experts at issue. The only reduction was for a series of identical, cryptic time entries for "preparation of Buist witness kit". The court could not determine whether the fees were justified. The Court awarded TT its actual costs, instead of limiting the costs to the Fed. R. Civ. P. 54(d) limits because this sanction award was pursuant to Fed. R. Civ. P. 37 and, therefore, was not limited by Rule 54(d). The Court finally awarded $86,000 in fees and costs related to TT's sanctions motion. The Court generally found TT's fees and expenses reasonable, with limited exceptions. The Court limited fees for writing a "simple" two-page motion to two hours. The Court also deleted approximately $11,000 in apparently duplicative time entries.

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At the end of September, September 26-29, the Licensing Executives Society is hosting its annual meeting in Chicago at the Sheraton Hotel & Towers.  The meeting, themed "Deals, Deals and more Deals" will focus upon IP's critical role in business strategies and ways to use IP to maximize deals and profitability.  There are an impressive array of presentations and workshops, headlined by the following very impressive plenary sessions, as described by the Society:

• The SuperFreakonomics of IP Licensing – Do Patents Slow Innovation? - Steven Levitt, co-author of the New York Times best-seller Freakonomics and its recent follow-up SuperFreakonomics, will present a keynote address on the unintended impact of the patent system on innovation. He will also discuss his groundbreaking research on the effects of incentives on economics and market behavior as they relate to innovation. A book signing will follow Mr. Levitt’s presentation.
   
• Is the U.S. Patent System Under Siege: Congress, the PTO, the FTC and the Supreme Court -The Honorable Judge Paul Michel, retired Chief Judge of the United States Court of Appeals for the Federal Circuit will look at the many challenges facing the U.S. patent system including the reform legislation currently pending in Congress, the USPTO’s efforts to reduce backlogs and improve the quality of issued patents, and increased scrutiny by the Supreme Court and FTC.
   
• IP as a National Responsibility: A Global Outlook for Strategies, Policies and Laws - Economist and Former Vice Presidential Candidate Pat Choate, will join John Whealan, Associate Dean of Intellectual Property Law at George Washington University Law School and Suzanne Michel, Deputy Director of FTC’s Office of Policy Planning to discuss how the United States, Europe, Asia and developing countries might leverage IP to secure future wealth and what this could mean for commercial collaboration across national boundaries.
   
• IP100 Recap: IP Hot Topics 2010 - Over the course of 2010, LES has hosted innovative IP100 forums comprised of high-level IP leaders who have analyzed several hot IP topics. This panel will revisit the topics, review previous findings and discuss what we’ve learned from the world-class IP100 panels about best practices in licensing. Key ‘take-aways’ will be included in a white paper available after the meeting for attendees.

Click here for registration information.  I plan to attend, and hope to see you there.

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MPH Techs. Oy v. Zyxel Coms. Corp., No. 10 C 684, Slip Op. (N.D. Ill. Jul. 16, 2010) (Darrah, J.).

Judge Darrah granted defendants' 28 U.S.C. § 1404(a) motion to transfer this patent case to the Northern District of California. Venue was proper in both districts. Plaintiff's choice of forum was only given slight weight because the Northern District of Illinois was not plaintiff's home forum and had only a weak connection to the case. The convenience of witnesses weighted in favor of transfer. All of defendants' employee witnesses were in the Northern District of California and, more importantly, half of the non-party witnesses were in the Northern District of California. Three of plaintiff's four witnesses were in its home country – Finland. Access to proofs is given little deference in light of wide-spread use of digital discovery, but still leaned slightly in favor of transfer because defendants' documents were largely in California.

The situs of material events was neutral because it is largely irrelevant in patent cases. The convenience of parties weighed in favor of transfer. Plaintiff's inconvenience in traveling from Finland to Chicago or to Northern California was not significantly different.

The interests of justice weighed slightly in favor of transfer because defendants' employees had a greater interest in the case than Illinois citizens did. Otherwise, the Courts were similarly capable of handling patent cases and had comparable times to resolution, with only a few months difference in each category.

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