February 2012

Civix-DDI, LLC v. Hotels.com, No. 05 C 6869, Slip Op. (N.D. Ill. Aug. 19, 2011) (St. Eve, J.).
Judge St. Eve granted defendant Hotels.com summary judgment of noninfringement in this patent litigation involving selecting items from a database based upon geographic vicinity. Here are the key holdings:
· Citing Centillion Data Sys., LLC v. Quest Comm’ns Int’l, Inc. 631 F. 3d 1279 (Fed. Civ. 2011) the Court held that Hotels.com did not “use” or “make” the required “point” or end-user computer or mobile device. The end-user had to initiate a query by implementing data into its post. Those activities were not under Hotels.com’s control. And therefore Hotels.com neither directly infringed nor induced infringement.
· Plaintiff Civix-DDI (“Civix”) only identified star-rankings and property type in its interrogatory responses as “Associated Categories.” Civix was, therefore, limited to those two associated categories. Because no Hotels.com initial screen in evidence allowed for search by either of these associated categories, Hotels.com was entitled to partial summary judgment of noninfringement.
· Hotels.com was granted summary judgment of noninfringement because its banner ads were supplied by a third party, not from a Hotels.com database as required by the patents. Similarly, Hotels.com did not store the required virtual tours on its own database as required by the patent.
· The Court refused to consider Civix’s expert declarations to the extent that they contradicted the expert’s deposition testimony.
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Continue Reading Required Third Party Data Backs Patent Claims

Simonian v. Mead Westvaco Corp., No. 10 C 1217 Slip. Op. (N.D. Ill. Sep. 1, 2011) (Castillo, J.).
Judge Castillo granted defendant Mead Westvaco’s motion to dismiss plaintiff Simonian’s false patent marking suit claiming that Mead Westvaco marked envelopes with expired patents. Simonian’s general allegation of intent did not meet the Fed. R. Civ. P. 9 (b) heightened pleading standards. In fact, they mirrored the allegations held insufficient in BP Lubricant. And Simonian did not:
· Identify specific Mead Westvaco individuals with knowledge of the alleged false marking;
· Allege that Mead Westvaco sued a third party asserting the patents after they expired; or
· Allege that Mead Westvaco made multiple revisions to the packaging on the markings after the patents expired.
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Continue Reading False Marking Requires More than General Intent Allegations

Trading Techs. Int’l., Inc. v. BCG Partners, Inc., No. 10 C 715 (Consolidated), Slip Op. (N.D. Ill. Sep. 2, 2011) (Kendall, J.).
Judge Kendall granted defendants’ motion to strike references to settlement discussions in plaintiff Trading Technologies (“TT”) complaints, and denied the parties’ various motions to dismiss each others pleadings in their patent cases involving trading software. TT used various of its settlement documents to allege certain defendants’ actual knowledge of both TT’s patents and defendants’ alleged infringement of those patents. TT acknowledged that the documents were settlement documents. The Court noted that TT could not waive FRE 408 even for its own documents and held that TT’s attempted use was improper pursuant to FRE 408. TT used the documents to prove two elements of liability for indirect infringement – knowledge of the patents and the alleged infringement. The Court, therefore, struck all references to the documents pursuant to Fed. R. Civ. P. 12(b). The Court denied defendants’ motions to dismiss TT’s indirect infringement claims. Even after striking the settlement documents, TT pled sufficient facts:
• TT made a general allegation of knowledge which was not alone sufficient, but was adequately supported.
• TT alleged that each defendant competed with TT. It was “not a stretch” to presume that TT’s competitors would be watching TT’s patents.
• TT alleged that defendants were aware of the patents through various suits. The Court voted conflicting case law regarding whether these suits could create notice.
• TT denied that defendants encouraged infringement by advertising allegedly infringing products and encouraging them to infringe by using the software products.
The Court denied TT’s motion to strike defendants’ noninfringement and invalidity affirmative defenses and then related counterclaims calling the motions a “waste of time”:
• The defendants’ bare-bones affirmative defenses were consistent with standard patent litigation practice and put TT on notice.
• The defenses were also consistent with the Local Patent Rules which require more detailed allegations early in discovery. See LPR 2.3.
• TT’s affirmative defenses as to one defendant were “really identical” to those TT sought to strike.
• Defendant had a right to maintain their declaratory judgment counterclaim for findings of noninfringement and invalidity.
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Continue Reading Trading Technologies: Party Cannot Waive FRE 408 Protection As to its Communications

Judge Pallmeyer granted in part plaintiff Nielsen’s motion for summary judgment and denied defendant Truck Ad’s cross-motion in this copyright case involving Nielsen’s marketing area maps for television and other media. The Court held that Nielsen had valid copyrights in its maps:
The fact that Arbiton may have made the maps first did not prevent Nielsen’s copyright because of Nielsen’s original contribution to its maps.
Nielsen’s maps were not merely factual; Truck Ad’s comparison to the white pages was imperfect.
The FCC’s use of the maps did not bring them into the public domain.
The court held that there were questions of fact as to infringement, including:
Truck Ad’s access to the copyrighted maps;
The similarity between Nielsen’s and Truck Ad’s maps; and
Truck Ad’s defense of independent creation.
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Continue Reading Nielson Marketing Area Maps are Protectable

First Time Videos, LLC v. Does 1-76, No. 11 C 3831, Slip Op. (N.D. Ill. Aug. 16, 2011) (Bucklo, J.).
Judge Bucklo denied the Doe defendants’ various motions to quash or dismiss in this BitTorrent copyright infringement case. Plaintiff First Time Video (“FTV”) alleged that the seventy-six Doe defendants infringed plaintiff’s copyright in an adult movie using BitTorrent and in so doing engaged in a civil conspiracy. The Court denied each motion:
· While file-sharers have limited first amendment rights, those rights do not shelter copyright infringement.
· FTV sufficiently described the alleged copyrighted work by naming the movie in the complaint.
· Joinder of the seventy-six Does was proper. FTV alleged that the Does acted in concert to copy one video over several months as part of a BitTorrent “swarm.” And the case involved common legal questions regarding copyright law.
· The Court recognized that other Northern District judges had severed all of the Doe defendants. Those cases, however, involved many more Does, and did not show a connection to Illinois. FTV alleged that it had traced the accused IP addresses to Illinois using geo-location technology.
· FTV’s personal jurisdiction allegations – that FTV traced the Doe IP addresses to Illinois – were also sufficient.
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Continue Reading Shared Downloading of a Movie Makers Joinder

John Marshall is hosting its 56th Annual Intellectual Property Law Conference this week, on Friday, February 24, 2012.
The content looks excellent, including:
Recent Developments in Intellectual Property Law;
Bernard Knight, General Counsel, U.S. Patent & Trademark Office will present a luncheon keynote on “The Future Challenges of IP Litigation: A Judge’s Perspective”;
Supreme Court’s Renewed Interest in Patent Law;
Critical Trends in 2012 from In-House Perspective;
Monetizing IP and Generating Cash from Patents; and
E-Discovery — Limiting the Solar System or Expanding the Universe?
Registration and additional information is available here.
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Continue Reading CLE: John Marshall 56th Annual IP Law Conference

Millennium TGA, Inc. v. Doe, No. 10 C 5603, Slip Op. (N.D. Ill. Aug. 24, 2011) (Manning, J.).
Judge Manning held in abeyance Doe defendant’s motion to quash a subpoena issued to its alleged internet service provider and Doe’s motion to dismiss the case for lack of personal jurisdiction. Plaintiff Millennium TGA reasoned that the subpoenaed information would allow it to show that Doe’s actions were directed at Illinois and within the Courts’ jurisdiction.
The Court was “troubled” by Millennium TGA’s claims that it needed jurisdictional discovery, as opposed to discovery only seeking Doe’s identity. Millennium TGA already filed a complaint alleging jurisdiction upon information and belief. The Court, therefore, ordered Millennium TGA to file a brief detailing how the information it sought was necessary. And the Court held the motions in abeyance pending that brief. The Court also warned Millennium TGA that it would initiate sanctions proceedings if Millennium TGA had not met its Fed. R. Civ. P 11 obligations.
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Continue Reading Potential Sanctions for Early Discovery Inconsistent With Pleadings

ExactLogic, Inc. v. Xactlink, LLC, No. 11 C 50038, Slip Op. (N.D. Ill. Aug. 18, 2011) (Reinhard, J.).
Judge Reinhard granted in part plaintiff ExactLogic’s motion to dismiss defendant Xactlink’s counterclaims. The Court dismissed Xactlink’s declaratory judgment copyright infringement counterclaim. Xactlink agreed to dismiss the claim so long as Xactlink was free to challenge the validity of ExactLogic’s registration. Because the registration’s validity was at issue based upon Xactlink’s affirmative defenses, the Court dismissed the counterclaim.
The Court allowed Xactlink’s declaratory judgment trademark infringement claim. While ExactLogic did not directly allege trademark infringement, its Lanham Act claims would require a determination of the likelihood of confusion between the marks. As such, the trademark was as issue and Xactlink had a right to its declaratory judgment claim.
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Continue Reading Defendant Has Right to Bring Declaratory Trademark Claims

llinois Corporation Research LLC v. Best Buy Stores, L.P., No. 10 C 4298 Slip. Op. (N.D. Ill. Sep. 12, 2011) (Zagel, J.).
Judge Zagel denied plaintiff Illinois Computer Research’s (“ICR”) motion to reconsider the Court’s opinion granting summary judgment in this patent case for the following reasons:
· ICR’s argument that defendant Best Buy’s agreement was based upon an improper definition of “affiliate” was improper for reconsideration because it was a new argument;
· ICR’s argument that Singapore law controlled was also new and, therefore, improper.
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Continue Reading New Arguments Improper in Motion for Reconsideration

Porritt v. MacLean Power Sys., LP, No. 10 C 6128 Slip. Op. (N.D. Ill. Sep. 6, 2011) (Lefkow, J.).
Judge Lefkow granted defendants’ (collectively “MacLean”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s false patent marking case involving allegedly expired patents marked upon MacLean’s Square Shank Barbed Staples. Plaintiff’s intent allegations were “nearly identical” to those held inadequate in BP Lubricants. The Court, therefore, dismissed plaintiff’s claim.
The decision was issued about one week before the America Inventory Act was signed into law. But, McLean could not have challenged plaintiff’s claim because they were based upon expired patents. The Court refused to consider MacLean’s constitutional challenge to the False Marking Act.
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Continue Reading Intent Allegations “Nearly Identical” to BP Lubricants Dismissed