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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Monthly Archives: December 2010

Court Exercises Discretion to Avoid “Sandbagging” Rebuttal Cases

By R. David Donoghue on Posted in Trial

Bone Care Int’l, LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Sep. 30, 2010) (Dow, J.)

Judge Dow issued an Order resolving the parties’ dispute in the pre-trial joint status report regarding the order of proofs at trial, in light of defendants’ stipulation of infringement. The Court ordered that:

  1.  Defendant would present its burden of proof evidence regarding invalidity first, citing Howard T. Markey, On Simplifying Patent Trials, 116 F.R.D. 369 (1987). 
  2. Plaintiffs will then respond to defendants’ invalidity case and present evidence of any secondary considerations. 
  3. Defendants will then be allowed to respond to the secondary consideration proofs and rebut, as appropriate, plaintiffs’ validity proofs. 
  4. Plaintiffs will be allowed a rebuttal case regarding its secondary consideration. 

The Court noted, however, that it would use its broad discretion pursuant to Fed. R. Evid. 611(a) to prevent either party from sandbagging the other with its respective rebuttal case.

Trading Technologies: Court Requires Cooperation & Live Meetings Before Discovery Motion

By R. David Donoghue on Posted in Discovery

Trading Techs. Int’l, Inc. v. GL Consultants, Inc., No. 05 C 4120 & 5164, Slip Op. (N.D. Ill. Oct. 20, 2010) (Schenkier, Mag. J.).

Judge Schenkier set without the following procedures the parties were required to follow before filing discovery motions with the Court, beyond the standard Local Rule 37.2 meet and confer requirement:*

  1. Moving party must send opposing counsel a letter setting forth with specificity the relief it was seeking and the basis for the argument, including citing authority;
  2. Opposing counsel has seven days to respond to the letter in writing with similar specificity, including any areas of agreement;
  3. Within five days of opposing counsel’s letter, the parties must have a face-to-face Local Rule 37.2 meet and confer including counsel with full authority to resolve the dispute;
  4. The parties then have five days to prepare a joint statement of the results of the meet and confer not to exceed twenty-five pages; and
  5. The moving party then has five days to file a motion, without a supporting brief, not to exceed five pages.

*  Click here for much more about this and related TT cases in the Blog’s archives.

Unclaimed Colors Cannot be Captured by Doctrine of Equivalents

By R. David Donoghue on Posted in Summary Judgment

Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333, Slip Op. (N.D. Ill. Sep. 29, 2010) (Dow, J.).

Judge Dow, having previously construed the claim of plaintiff’s patent to a color printing system, granted defendant Seiko Epson Corp. ("SEC") summary judgment of noninfringement. Each claim required, among other colors, green-yellow ink. Plaintiff admitted that SEC’s yellow did not fall within the Court’s green-yellow construction.

Instead, Plaintiff argued that SEC’s yellow was equivalent to the claimed green-yellow based upon the doctrine of equivalents because although SEC’s yellow was a red-green the human eye perceived it as a yellow. But plaintiff’s evidence only proved that SEC’s yellow appeared yellow. Plaintiff had no evidence that SEC’s yellow appeared green-yellow, the color of the relevant claim limitation. Regardless of the correctness of plaintiff’s argument, therefore, plaintiff had not met its burden. And plaintiff could not use the doctrine of equivalents to expand green-yellow to all yellows.

Senate Confirms Edmond Chang as District Judge for the N.D. Illinois

By R. David Donoghue on Posted in Legal News

The U.S. Senate has confirmed Edmond E. Chang as a district judge for the Northern District of Illinois.  Chang had served as an Assistant U.S. Attorney in the Northern District of Illinois since 1999.  He was the Chief of Appeals for the Criminal Division for the last five years. He previously worked at Sidley Austin in Chicago, and served as a law clerk to Judge Marvin Aspen in the Northern District and Judge James Ryan on the U.S. Court of Appeals for the 6th Circuit.  Judge Chang’s confirmation leaves the Northern District with three vacancies on the bench.

Welcome to the Northern District bench Judge Chang.

Expert Opinions Served After Final Pretrial Order Are Excluded

By R. David Donoghue on Posted in Experts

Midtronics, Inc. v. Aurora Performance Prods., LLC, No. 06 C 3917, Slip Op. (N.D. Ill. Oct. 14, 2010) (Shadur, Sen. J.).

Judge Schadur granted plaintiff Midtronics’ motion in limine to exclude defendants’ expert submission offered after entry of the parties’ Final Pretrial Order. Defendants argued their submissions were timely pursuant to Fed. R. Civ. P. 26(a)(2)(D)(1) because they were served more than ninety days before trial. But the Court noted that Rule 26(a)(2)(D)(1) is an alternative rule that was preempted by entry of the Final Pretrial Order, and by the close discovery before that.

R. David Donoghue Selected as a 40 Under 40 Chicago Lawyer

By R. David Donoghue on Posted in Legal News

I am slow in posting this because of an early November patent trial in the Northern District (a resounding win). But my delay does not change how honored I am to have been selected by Chicago Lawyer magazine as one of Chicago’s 40 Under 40 lawyers for 2010. Click here to read the article.

I am very thankful to each of my clients that nominated me, including those quoted in the article. I am especially honored that each of them took time out of very busy schedules to nominate me.

I would also like to congratulate the other IP lawyers that were honored this year:

Chicago IP Litigation Named a Top 50 Patent Blog

By R. David Donoghue on Posted in Legal News

I am honored to announce that the Chicago IP Litigaiton blog has been chosen as one of the top 50 patent blogs by the Guide to Online Schools.  Although, I have to note that while the list of blogs is patent heavy, it also include trademark and copyright blogs. So, it may be more appropriate to  call it a list of the top 50 intellectual property blogs.  Either way, t is an honor to be included among this select group of excellent blogs, including (with the Guide’s descriptions of each blog):

  • Anticipate This!|Patent and Trademark Law Blog:  This! (AT!) is a patent and trademark law blog that provides thought-provoking commentary with a dash of irreverent humor. 
  • Green Patent Blog: This blog covers intellectual property issues in clean technology. The blog is maintained by a patent attorney at a firm based in San Diego, CA.
  • Patent Baristas: Patent Baristas is an intellectual property news and commentary blog featuring freshly brewed chat on patent and intellectual property issues in the biotechnology and pharmaceutical fields.
  • Patent Docs: Patent Docs is a biotechnology patent law and news blog. The authors and contributors to this blog are patent attorneys and agents who hold doctorates in a diverse array of biotechnology and chemical disciplines.
  • The 271 Patent Blog: Peter Zura’s 271 Patent Blog is written by a former United States Patent and Trade Organization (USPTO) patent examiner who now works closely with established and emerging companies to implement successful patent and litigation strategies. The blog follows his adventures while also offering advice for patent seekers.
  • Anything Under the Sun Made by Man: This blog is written by a design engineer turned patent lawyer with a two-fold focus. The first focus is understanding the technology, capturing the salient features, and writing a broad yet concise patent application. The second is counseling clients in developing a patent strategy that makes good business sense.
  • Bits: A New York Times blog about business, innovation, technology, and society.
  • China Law Blog: The China Law Blog discusses the practical aspects of Chinese law and how it impacts business, intellectual property ownership, and patent rights there. The site’s contributors will tell you how you as a businessperson can use Chinese law to your advantage.
  • Docket Report: The Docket Report is a blog that provides extensive coverage of patent litigation and patent litigation research.
  • Internet Cases: A blog about law and technology. The blog focuses mainly on the intersection of technology and intellectual property law.
  • IP Dragon: IP Dragon started in 2005 and has since grown into a blog that allows subscribers to gather, comment on, and share information about intellectual property in China with the hopes of making it more transparent. Danny Friedmann, the blog’s creator, is a consultant and author who provides advice, reports, and publications to law firms, companies, and IPR holders’ organizations.
  • IP Finance: Where money issues meet IP rights. This blog examines financial issues for intellectual property rights, including tax breaks, quantum of damages, IP valuation for acquisition, and securisation and collateral. 
  • IP Watchdog: IP Watchdog is an excellent source for news and information in the patent and innovation industries. The site’s founder is Gene Quinn–a patent attorney.
  • Las Vegas Trademark Attorney Blog: A blog dedicated to exploring, discussing, and sharing with the world the latest news and legal developments in trademark law. The blog is published by trademark and intellectual property attorney Ryan Gile.
  • Likelihood of Confusion: A blog on trademark, copyright, internet law and free speech. The writer’s savvy humor combined with his extensive knowledge of the law makes this blog both entertaining and informative.
  • Los Angeles Intellectual Property Trademark Attorney Blog: The official blog of Milord and Associates Patent Corporation–a firm dedicated to safeguarding your intellectual property. The blog offers complimentary legal advice and a list of resources for anyone interested in intellectual property.
  • Rebecca Tushnet’s 43 (B)log: This blog covers litigation and news pertaining to trademarks and false advertising.
  • Seattle Trademark Lawyer: Trademark law developments from Seattle and beyond. The blog’s creator is Michael Atkins–a shareholder at the Seattle law firm of Graham and Dunn.

Claims Construed Narrowly to Avoid Indefiniteness

By R. David Donoghue on Posted in Claim Construction

Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333 & 09 C 4655, Slip Op. (N.D. Ill. Sep. 29, 2010) (Dow, J.).

Judge Dow construed the claims of plaintiff’s patent covering a color printing system, and granted in part defendant’s motion for summary judgment of indefiniteness. Of particular note, the Court construed the following terms:

  • The Court, by agreement, construed the base colors – violet, blue, green, yellow, orange and red – using the same wavelengths the Court used in construing a related patent earlier in the case — click here for that opinion in the Blog’s archives.
  • As in the prior constructions, the Court held that the components of component colors (e.g., red and orange for orange-red) must have the highest intensity of all the components. Otherwise, a color ordered red, orange, blue and violet could be both orange-red and violet-blue, a nonsensical result.
  • The Court held that the patentee gave "intensity" the same "unconventional" meaning — a synonym for "quantity" — as in the prior constructions because the two patents share a specification and the claims did not define the term differently.
  • The Court held that the term "peak reflectance percentage" used in claims 7 and 9 was not supported by the specification and, therefore, those claims were invalid because they contained new matter. While a new matter determination is a question of fact, no reasonable jury could find support for peak reflectance percentage in the specification, warranting summary judgment.
  • "Peak intensity" and "dominant intensity" were both indefinite. Pursuant to the Court’s construction of intensity, each color can only have a single intensity, rendering peak and dominant intensities nonsensical.
  • The terms "cyan," "magenta," and "yellow" were indefinite to the extent that they were amenable to multiple constructions. The Court, however, used the narrowest possible constructions as follows: "cyan" was "green-blue"; "magenta" was "violet-red"; and "yellow" was "orange-yellow" or "green-yellow."
  • "Each of a different color" was not indefinite. Color referred to the six claimed colors, as well as black and white. Shades of a color were not "different."

Preliminary Injunction Denied Because of Noninfringement Evidence

By R. David Donoghue on Posted in Legal News

Viskase Cos., Inc. v. World Pac Int’l. AG, No. 09 C 5022, Slip Op. (N.D. Ill. Aug. 9, 2010) (Bucklo, J.).

Judge Bucklo denied defendants’ motion for preliminary injunction based upon World Pac’s patent infringement counterclaim regarding impermeable sausage casings. Viskase’s research and design documents referenced "World Pac knock-off[s]," "World Pac replacement[s]" and "World Pac me-too" products. The key infringement issue was whether Viskase’s accused casings were "impermeable" as that term was construed by the Court. The parties set up a "classic battle of the experts" with competing testing disputing whether the accused sausage casing allowed a measurable weight loss, and therefore was permeable. While a jury would ultimately have to weigh the evidence, Viskase presented "more than insubstantial evidence" that the accused casings lost measurable weight. And Viskase’s testing was done outside of litigation, lending it additional credibility. World Pac also failed to present sufficient evidence regarding loss of flavor and taste, the other "impermeable" characteristics. Viskase, therefore, raised a substantial noninfringement question. Furthermore, World Pac did not put forth sufficient evidence to warrant a preliminary injunction. Because Viskase raised a substantial question regarding noninfringement, the Court declined to examine Viskase’s other defenses or the other element of a preliminary injunction.

Court Sua Sponte Questions Validity of Lanham Act Claims

By R. David Donoghue on Posted in Pleading Requirements

Ashley Furniture Indus., Inc. v. Value City Furniture, Inc., No. 10 C 5413, Slip Op. (N.D. Ill. Sep. 27, 2010) (Shadur, Sen. J.).

Nothing that his opinion was styled "Memorandum" and not "Memorandum Order," Judge Shadur questioned the viability of plaintiff Ashley Furniture’s trademark infringement, false designation of origin and dilution claims. The Court opined that "no rational reader" could find that defendant Value City’s accused advertising violated Ashley Furniture’s trademarks or that Value City’s "accurate" use of Ashley Marks’ infringed the marks. The Court, however, did not strike the claims sua sponte. The Court also noted that, even if the "troublesome" claims were eliminated, Ashley Furniture’s Lanham Act unfair competition claims would still survive.

Discovery Motion Denied for Failure to Meet and Confer

By R. David Donoghue on Posted in Pleading Requirements

Healix Infusion Therapy, Inc. v. HHI Infusion Servs., Inc., No. 10 C 3772, Slip Op. (N.D. Ill. Aug. 9, 2010) (Zagel, J.).

Judge Zagel denied plaintiff Healix’s motion to compel and its motion for sanctions. The motion to compel was denied without substantive analysis for failing to meet and confer with defendant pursuant to Local Rule 37.2. The motion for contempt was denied because defendant had complied with the Court’s general orders to produce documents and respond to subpoenas. Defendant did produce documents and respond to the subpoenas. Defendant did not violate those orders by refusing to produce specific documents while producing others.

However They are Styled, Claims Involving Copyright Ownership are Federal Questions

By R. David Donoghue on Posted in Pleading Requirements

Clarke v. Gregory, No. 09 C 7978, Slip Op. (N.D. Ill. Jul. 26, 2010) (Dow J.).

Judge Dow denied declaratory judgment plaintiff’s motion to remand this case involving rights to two plays to state court. Plaintiff argued that her claim sounded in contract and therefore, should not have been removed to Federal Court. But plaintiff claimed rights in two plays, the first allegedly covered by the contract, and the second not. At a minimum, therefore, the claim for the second play sounded in copyright and was a federal question.

Patent Cases Consolidated and Stayed Pending Related Case

By R. David Donoghue on Posted in Federal Rules

GS Cleantech Corp. v. Big River Resources Galva, LLC, No. 10 C 990, Slip Op. (N.D. Ill. Jul. 30, 2010) (Andersen, J.).

Judge Andersen reassigned this case so that it could be consolidated with a case before Judge Bucklo by the same plaintiff asserting the same patent accusing similar technologies. The Court also ordered that a stay awaiting resolution of a related District of Kansas case would apply to the consolidated case.

Court Orders Pre-Answer Brief re Viability of Lanham Act Case

By R. David Donoghue on Posted in Pleading Requirements

Ashley Furniture Indus., Inc. v. Value City Furniture, Inc., No. 10 C 5413, Slip Op. (N.D. Ill. Aug. 31, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Ashley Furniture to submit a brief memorandum citing the principal cases supporting Ashley Furniture’s trademark infringement claims based upon Value City Furniture’s "aggressive competitive advertising" including the use of Ashley Furniture’s trademark. The memorandum would help facilitate addressing the case at the Court’s initial status conference. The Court also noted that while the use of a competitor’s name in advertising was once verboten, it is now ubiquitous.