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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Monthly Archives: February 2011

Federal Circuit’s Claim Constructions Control in Remanded Patent Case

By R. David Donoghue on Posted in Claim Construction

The Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Nov. 24, 2010) (St. Eve, J.).

Judge St. Eve ruled on the parties’ numerous summary judgment motions in this patent case involving garage door opener remote control technology.* The Court first addressed the controlling claim constructions. Judge Moran previously construed the claim terms, but on appeal those constructions were amended by the Federal Circuit. Plaintiffs argued that the Federal Circuit’s constructions were not binding and were open to further construction. But the Court held that the Federal Circuit’s constructions were the law of the case and were binding upon the parties. Because plaintiffs’ arguments for summary judgment of infringement were premised upon its own claim constructions, and not the Federal Circuit’s constructions, those motions were denied.

Next the Court considered whether there was a question of fact that the accused devices used "binary code" as required by the patents. The parties agreed that an absence of binary code would require a finding of noninfringement. But the parties disputed whether defendant Lear’s accused products used binary code. Ultimately the battle of the parties’ experts created a question of material fact precluding summary judgment of either infringement or noninfringement.

The Court granted plaintiffs summary judgment as to Lear’s argument that the asserted claims were not directed to patentable subject matter. Lear argued that plaintiffs’ claims simply covered algorithms, but the cases were directed to devices that were by definition not just algorithms.

Plaintiffs were also granted summary judgment as to Lear’s claim that plaintiff’s committed inequitable conduct by failing to disclose a particular patent to the Patent Office as prior art. Plaintiffs had provided the art to a prior examiner, in a parent application. Once a patent applicant submits prior art in a parent application, that art is considered disclosed in any progeny applications.

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

Court Stays Attorney’s Fees Determination Pending Appeal

By R. David Donoghue on Posted in Local Rules

Callprod, Inc. v. GN Netcome, Inc., No. 06 C 4961, Slip Op. (N.D. Ill. Nov. 1, 2010) (Kendall, J.).

Judge Kendall granted in part plaintiff Callprod’s motion to stay determination regarding attorney’s fees pending appeal of the underlying patent issues and the Court’s determination as to whether the case was exceptional. The Court held that the Court’s and the parties’ resources were best preserved if all proceedings regarding attorney’s fees were stayed until the Federal Circuit ruled on Callprod’s appeal of the Court’s grant of summary judgment of noninfringement. The Court, however, ordered Callprod to respond to defendants’ bill of costs.

Court Will Not Apportion Costs to Prevailing Party Based Upon How Much of the Case was Won

By R. David Donoghue on Posted in Trial

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Oct. 29, 2010) (Dow, J.).

Judge Dow denied defendants’ (collectively "eSpeed") motion to strike or stay consideration of plaintiff Trading Technologies’ ("TT") bill of costs, and awarded TT $381,831.04 in costs.* Because TT received a damages award at trial, TT was the prevailing party and costs were warranted, absent TT’s trial misconduct or eSpeed’s inability to pay. The fact that TT lost on the issue of eSpeed’s alleged willfulness did not change TT’s status as the prevailing party, nor did the fact that eSpeed was found not to infringe based upon several of its software packages. The Court had previously stayed a determination of the bill of costs pending the Federal Circuit appeal. So, with the appeal complete, there was no reason left to delay the Court’s decision.

The Court then turned to the bill of costs. The following determinations were of particular note:

The Court awarded all undisputed witness travel, attendance and subsistence costs, totaling approximately $21,000. The Court denied travel costs for a trial witness that was flown to trial from Switzerland, rather than from his home in Ohio. Witness fees are only allowed for the shortest possible route from the witness’s residence.

The Court awarded videography costs only for depositions of foreign witnesses that TT disclosed as potential trial witnesses.

Court reporter appearance fees were denied because they are only allowed to the extent the fee plus the per-page rate charged does not exceed the Judicial Conference’s limit. In this case, the per page rate was already more than the allowed per-page recovery.

Because hearing transcripts played a significant role in the case, the Court awarded TT the allowable hearing transcript fees.

The Court awarded 25% of TT’s photocopying request. The reduction accounted for various non-copying charges, such as OCR, blowbacks, etc. and multiple copies of some documents. Recovery is only allowed for a single copy of a document, in most cases.

No costs were awarded for translation because § 1920(6) does not authorize recovery of translation costs, except for "check interpreters" used at trial to dispute certain interpretations.

The Court refused to apportion TT’s costs based upon the portion of the case that eSpeed won (summary judgment of noninfringement) versus the jury award that TT won.

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

Chicago IP Colloquium Discusses Hot News

By R. David Donoghue on Posted in Legal Seminars

The annual Chicago IP Colloquium continues this Tuesday, February 22, 2011.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The next session will be this Tuesday, February 22 from 4:10 pm to 5:50 pm at Chicago-Kent Room 305 and will feature Professor Shyamkrishna Balganesh, University of Pennsylvania Law School discussing the paper:  "Hot News": The Enduring Myth of Property in News

Northern District Answers Must Repeat the Complaint’s Allegations

By R. David Donoghue on Posted in Local Rules

JAB Distribs., LLC v. Martha Stewart Living Omnimedia, Inc., No. 10 C 5716, Slip Op. (N.D. Ill. Oct. 26, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte struck plaintiff JAB’s reply to defendant Martha Stewart Living’s counterclaims. The reply failed to comply with Local Rule 10.1, requiring that an answer repeat the contention before responding to it. Additionally, JAB was ordered not to deny statements for which it lacked information and belief; as denying something about which one lacks sufficient information is "oxymoronic."

“Prudent” Filing of Second Suit Not Sanctionable

By R. David Donoghue on Posted in Local Rules

DH Holdings, LLC v. MeridianLink. Inc., No. 10 C 2351, Slip Op. (N.D. Ill. Aug. 23, 2010) (Kennelly, J.).

Judge Kennelly denied defendant MeridianLink’s motion for sanctions pursuant to Fed. R. Civ. P. 11, § 1927 and the Court’s inherent powers. Plaintiff DH Holdings originally filed its Northern District patent infringement case in 2008, and Judge Norgle entered a default against MeridianLink when it failed to answer the complaint. MeridianLink later got the judgment overturned for improper service in the Central District of California, and then filed a declaratory judgment action in that district. DH Holdings responded by filing the instant case and simultaneously asking Judge Norgle to reopen the 2008 case. MeridianLink claimed that DH Holding unnecessarily multiplied the litigation by seeking to reopen the 2008 case and filing the instant case. But the Court held that DH Holding simply took prudent actions to maintain the status quo. DH Holding could not be certain that its original case would be reopened. So, filing a new case was a reasonable precaution.

Sales to Sixteen Illinois Dentists Creates Jurisdiction

By R. David Donoghue on Posted in Jurisdiction

Dental Arts Lab. V. Studio 360, The Dental Lab, LLC, No. 10 CV 4535, Slip Op. (N.D. Ill. Nov. 23, 2010) (Dow, J.).

Judge Dow denied defendant’s Fed. R. Civ. P. 12(b) motion to dismiss this Lanham Act dispute regarding plaintiff’s 360 Dental Laboratories mark. Defendant was a Nevada entity which had sold product to sixteen Illinois dentists, making up 1.2% of defendant’s gross revenue, and maintained a website that used the mark and offered defendant’s products for sale. Plaintiff only argued that the Court had specific, not general jurisdiction. While defendant’s contacts were minimal – sixteen customers and 1.2% of revenues – they involved the alleged tortious acts at issue. The sales, therefore, were sufficient minimum contacts to create specific jurisdiction. Although the Illinois sales were allegedly de minimus, each sale was allegedly a tortious act and the Court could have had jurisdiction based upon even one of the sales. Because defendant’s venue arguments mirrored its jurisdiction arguments, venue was also proper.

Presumed Harm Not Enough for Injunction Where Plaintiff shows Little Likelihood of Success

By R. David Donoghue on Posted in Legal News

Kastaris v. Eggstacy LLC, No. 10 C 35614917, Slip Op. (N.D. Ill. Oct. 20, 2010) (Gilbert, Mag. J.).

Judge Gilbert denied plaintiff’s motion for preliminary injunction in this Lanham Act matter. Plaintiffs claimed infringement of its Yolk trademark for a breakfast restaurant by defendants’ New Yolk New Yolk ("NYNY") breakfast restaurant. Yolk was not generic when used to describe restaurants, although it was generic for the center of an egg.

Plaintiff did not show a likelihood of success on the merits. First, the marks were dissimilar both visually and aurally. While both marks use "Yolk", NYNY is intended to invoke New York, New York.

Second, the area and manner of use is not concurrent. Yolk is in downtown Chicago, while NYNY is in the western suburbs of Chicago. Third, based upon strong reviews for both sets of restaurants, consumer were likely to exercise reasonable care in choosing to dine at either restaurant. Fourth, plaintiff had established a Chicago-area reputation for Yolk, giving the trademark some weight. Fifth, plaintiff alleged evidence of actual confusion was not supported by sufficient evidence. Sixth, defendant knew about Yolk before opening NYNY, but there was no evidence showing passing off. NYNY’s theme was clearly New York City, and Yolk’s was not.

Balancing the factor, the Court held that plaintiffs did not have greater than negligible chances of showing likelihood of confusion. Plaintiffs were, therefore, required to show a proportionally larger irreparable harm, the presumption of irreparable harm in Lanham Act cases was not alone sufficient. Because of the significant harm to defendant in changing its name, a preliminary injunction was not appropriate.

Individual Defendant May Not Appear Pro Se on Behalf of His Related Party Co-Defendants

By R. David Donoghue on Posted in Pleading Requirements

Bernina of Am., Inc. v. Imageline, Inc., No. 10 C 44917, Slip Op. (N.D. Ill. Aug. 18, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte issued an order in response to defendant’s response to plaintiff’s motion for a temporary restraining order and a preliminary injunction. The Court cautioned that even though individual defendant Riddick was the sole officer and employee of each co-defendant, the corporate defendants required representation because a corporation cannot represent itself pro se.

The Court gave defendants time to identify whether Riddick was a lawyer and to find new counsel, if not. Until that time, the corporate defendants were treated as non-responding parties to plaintiff’s injunction motions.

Preamble is Limiting Because it Recited Essential Structure

By R. David Donoghue on Posted in Claim Construction

Tanita Corp. v. Homedics-U.S.A, Inc., No. 08 C 7145, Slip Op. (N.D. Ill. Nov. 4, 2010) (Holderman, C.J.).

Judge Holderman construed the claims of plaintiff’s patent to a scale for measuring a person’s weight with a platform that had a clear outer layer so that instructions or warnings could be placed on the inner layer, but still be read by the user through the transparent outer layer. Of particular note, the Court construed the following terms:

  • "Doughnut-shaped" meant a circular shape with a circular-type enclosed center opening." Plaintiff Tanita’s argument that it could be any shape with a center opening was not supported by the patent or dictionary definitions, which identified doughnuts as ring-like.
  • The claim’s preamble was limiting because it stated the purpose or use of the invention and recited an essential part of its structure, a built-in weight meter.

False Patent Marking Claims Subject to Rule 9(b) Pleading

By R. David Donoghue on Posted in Pleading Requirements

Simonian v. Blistex, Inc., No. 10 C 1201, Slip Op. (N.D. Ill. Nov. 3, 2010) (St. Eve, J.).

Judge St. Eve denied defendant Blistex’s Fed. R. Civ. P. 12(b) motion to dismiss Simonian’s false patent marking case. As an initial matter, the fact that most of Simonian’s statements were made upon information and belief did not require dismissal. The Court then held that false patent marking, or at least its intent requirement, was subject to Rule 9(b) heightened pleading. But Simonian met that standard by pleading that Blistex allegedly falsely marked its lip-ointment products with an expired patent.

Failure to Timely Disclose Third Party Witness Contacts Prevents Testimony

By R. David Donoghue on Posted in Discovery

Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Nov. 8, 2010) (Denlow, Mag. J.).

Judge Denlow granted in part defendant Lear’s motion for sanctions in this patent case regarding universal garage door openers. Plaintiff Johnson Controls ("JCI") received an anonymous email from someone calling themselves "Kova Kova," offering documents regarding Lear’s development of the accused garage door opener. JCI questioned the anonymous emailer as to the confidentiality and ethical obligations that might surround the offered documents. But despite not receiving a direct answer, JCI eventually met with Kova Kova and received emailed documents from Kova Kova. JCI, however, testified that it never opened the documents, sent as email attachments. JCI also suggested by email that it would consider offering Kova Kova an engineering position and tuition reimbursement, but in a later email made clear it would not pay Kova Kova for testimony or documents, although it would retain Kova Kova counsel.

While JCI’s offers of a job and tuition were close, they were not a bribe. Chamberlain never explicitly offered any remuneration for testimony or documents. And immediately after mentioning an engineering position and tuition, JCI sent an email making clear that it would not pay for testimony or documents. JCI did, however, violate its duties by waiting more than nine months to produce Kova Kova’s emails and documents. While that violation did not warrant dismissing the case as Lear requested, it did warrant exclusion of any evidence from or related to Kova Kova, including his testimony, and JCI’s payment of Lear’s attorney’s fees related to the motion.

CLE: Is Copyright Out of Touch with Digital Media?

By R. David Donoghue on Posted in Legal Seminars

Heartland Angels, a Chicago based, early-stage private equity capital investment network, is sponsoring a new educational series on Intellectual Property in the 21st Century.

The first in the series will be a panel discussion on February 7, 2011, starting at 6:30pm in the Chicago offices of Drinker, Biddle and Reath LLP,  191 N. Wacker Drive, Suite 3700.  The panel will consider answers to the question:  Are the copyright laws out of touch in the new reality of digital on-line media?

Panelists include:

David Frey, J.D, Partner, Drinker, Biddle and Reath LLP

Ed Lee, J. D., Professor, Chicago-Kent College of Law

Daliah Saper, J.D., Saper Law

Tim McCarthy, J.D., Senior Counsel of Clark Hill (Moderator)

Space is limited and pre-registration is required. Registration and inquiries by e-mail only to: Ron@heartlandangels.com. There will be a $10 charge (payable by cash or check only) at the door.

Court Sua Sponte Orders Defendant to Present Affirmative Defenses and Motions

By R. David Donoghue on Posted in Pleading Requirements

Bernina J. Am. v. Imageline, Inc., No. 10 C 4917, Slip Op. (N.D. Ill. Nov. 18, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte issued an order regarding defendants’ answer. The Court dismissed affirmative defenses that were impermissibly inconsistent with the allegations in the Complaint. The Court also ordered defendants to present jurisdictional and Rule 12(b) defenses as motions, rather than conclusory affirmative defenses.