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

Chicago Kent Professor, and former Fed. Cir. clerk, Tim Holbrook has published a very interesting article at the Washington University Law Review's Slip Opinions blog.  In the article, Holbrook attempts to sort out obviousness and poses a new obviousness standard which he argues takes the best of the current Federal Circuit approach and the Graham v. John Deere standard created in the 1960s.  Holbrook's article is especially relevant as we await the Superme Court's KSR v. Teleflex opinion.  Here is an excerpt from the article:

Unfortunately, the debate and briefing at the Supreme Court have resulted primarily in a bifurcated world – those who agree with the Federal Circuit’s approach versus those who think we should return the state of the law to 1966, the year that the Supreme Court decided its seminal case Graham v. John Deere. The law of obviousness is not limited to this dichotomous world, however. This Essay posits a methodology that best balances the Federal Circuit’s concerns with certainty in the law with the concern of its critics that the obvious standard has been set too low. I propose a rebuttable presumption approach to obviousness, which best balances these concerns and is consistent with the Supreme Court’s approach in previous intellectual property cases.

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Rowe Int'l. Corp. v. Ecast, Inc., __ F. Supp.2d __, 2007 WL 831772 (N.D. Ill. Mar. 19, 2007) (Kennelly, J.).

Judge Kennelly held that plaintiff Arachnid waived its privilege as to a limited scope of information and held that Arachnid's related uses of the information did not rise to the level of the crime-fraud exception, even if they may have been inequitable conduct.  Arachnid filed a motion seeking the return of three inadvertently produced, privileged "patent reports."  Defendants filed a cross-motion to compel production of privileged materials arguing that Arachnid waived the privilege as to the three documents and that the crime-fraud exception destroyed the privilege to the extent it was not waived.  The Court agreed that the patent reports were inadvertently produced, but still held the privilege was waived on a limited scope of information.  In 1999, a former Arachnid employee testified that he learned from Arachnid's attorneys that "the only way we would receive [one of] the patent[s-in-suit] was if we included that information."  While a former employee cannot waive the privilege, Arachnid's attorneys attended the deposition in question and failed to object to the question or the answer.  Additionally, Arachnid later turned the transcript over to the PTO during prosecution of a subsequent application and to defendants during production in the instant case.  These actions combined to waive the privilege as to the specific information discussed by the ex-employee, the inclusion of figure 2 in the patent.

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Timebase Pty Ltd. v. Thomson Corp., No. 07 C 460, 2007 WL 772946 (N.D. Ill. Mar. 9, 2007) (Lindberg, Sen. J.).

Judge Lindberg transferred this patent case to the District of Minnesota because all of the relevant documents and witnesses reside within that district or its subpoena power, while the dispute has no apparent unique connection to Illinois.  The software at issue, Westlaw's PastStat Locator, was researched, designed and developed in Minnesota and the related documents were still there.  Additionally, although the PastStat Locator can be accessed in any state, including Illinois, the hardware and software necessary to operate it are located in Minnesota.  Finally, 24 of the 25 witnesses identified as related to defendant are within the D. Minn. or its subpoena power.  And plaintiff's witnesses are in Australia, so whether they flew to Illinois or Minnesota was a minor difference to them at most.

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Hickory Farms, Inc. v. Snackmasters, Inc., No. 05 C 4541, 2007 WL 772919 (N.D. Ill. Mar. 8, 2007) (Kennelly, J.).

Judge Kennelly held that plaintiff's "Beef Stick" and "Turkey Stick" marks were generic and canceled the Beef Stick mark, plaintiff had already let its "Turkey Stick" registration lapse.  Plaintiff alleged that defendant infringed its marks by marketing defendant's beef and turkey snacks in stick forms and labeling them "Beef Sticks" and "Turkey Sticks," respectively.  But defendant countered with evidence that numerous companies use the terms to refer to meat products sold sell in stick form.  For example, Trader Joe's, Flat Iron, Jimmy Dean, Slim Jim and Tombstone all sell meat stick products using the marks.  The Court held that the terms were generic because they name a class of goods -- meat packaged in a stick form.  The Court also noted that "it [was] difficult to imagine what else a seller would call a beef or turkey product packaged in stick form."

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Ty, Inc v. Softbelly's, Inc., No. 00 C 5230, 2007 WL 734394 (N.D. Ill. Mar. 6, 2007) (Lefkow, J.).

Judge Lefkow granted plaintiff's, Ty, motion to make the case exception and grant it attorneys' fees and expenses.  A jury previously returned a verdict against defendant, Softbelly's, for violations of the Lanham Act and common law unfair competition.  The Court held that the case was exceptional because "Softbelly's made an aggressive, uncounseled, and persistent endeavor to trade on the success and reputation of Ty's marks."

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Adventus Ams. Inc. v. Innovative Envtl. Techs., Inc., No. 06 CV 3267, 2007 WL 704938 (N.D. Ill. Mar. 5, 2007) (Manning).

Judge Manning dismissed one plaintiff for lack of standing and transferred the case to the Eastern District of Pennsylvania.  Plaintiff EnviroMetal Technologies ("EnviroMetal") had an exclusive license to the patent-in-suit from the University of Waterloo in Canada.  The Court held that EnviroMetal's license was sufficiently exclusive to create standing because, among other things, it expressly gave the right to make use or sell and EnviroMetal had exclusive sublicensing rights.  Plaintiff Adventus Americas ("Adventus"), however, was a non-exclusive sublicensee of EnviroMetal and the Court held it had no standing.  Defendant also argued that the Court lacked personal jurisdiction, but the Court held that defendant's sales contacts with Illinois were sufficient to create personal jurisdiction.

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AutoZone, Inc. v. Strick, No. 03 C 8152, 2007 WL 683992 (N.D. Ill.  March 1, 2007) (Hart, J.).

Judge Hart denied plaintiffs' motion for a Fed. R. Civ. P. 54(b) entry of final judgment on plaintiffs' Lanham Act and related state law trademark infringement and dilution claims, which the Court dismissed in this opinion.  The Court denied the motion on two grounds.  First, plaintiffs notified the Court of their intent to file the motion 30 days after the Court's order dismissing the claims, but only entered it 37 days later.  The Court noted the Seventh Circuit standard is that a district court generally abuses its discretion by entering a Rule 54(b) judgment when the motion was filed more than 30 days after the underlying order was issued.*  Second, the Court denied the motion on substantive grounds.  Defendants' counterclaims, which were the only claims remaining in suit, involved overlapping factual issues with plaintiffs' dismissed claims.  Defendants sought cancellation of plaintiffs' Zone mark, one of the marks plaintiffs alleged defendants infringed in the dismissed claims.  Additionally, defendants' remaining claims alleged infringement of their Oil Zone mark, a mark that plaintiffs' dismissed claims alleged infringed their AutoZone and Zone marks.

*  The Court also noted that some litigants have argued that the Seventh Circuit standard is no longer good law, but stated that district courts throughout the Seventh Circuit continue to follow it with a string cite.

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Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, 2007 WL 684047 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran held that the parties' contract was not exclusive and, therefore, granted in part and denied in part defendants' Rule 12(c) motion to dismiss.  Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively "HH").  HH entered into a contract (the "Agreement") with defendants to produce and promote four albums.  The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured.  HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH.  This suit arose from that dispute.  Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH's letter allegedly terminating the Agreement and related state law claims.  The Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which meant that HH was free to record other songs or records with another company during the life of the Agreement.  The Court also held that the only way HH's songs can be considered a work-for-hire owned by defendants is if HH were defendants' employees.  But the Court was unable to decide that issue on the pleadings.  As a result, the Court also could not decide HH's copyright and trademark infringement claims on the pleadings because whether defendants could have infringe requires a determination of whether HH or defendants own the marks.  The opinion also contains a very detailed analysis of Illinois choice of law issues for the related state law claims.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 2007 WL 704525 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran granted plaintiff Trading Technologies' ("TT") motion to compel production of documents and answers to interrogatories regarding defendant eSpeed's patent licenses (more on this case in the Blog's archives).  The Court held that the licenses could be relevant to three of the Georgia Pacific factors:  1) Rates paid by the licensee for patents similar to the patents in suit; 2) customary royalty rates in the industry; and 3) the royalty that would have been agreed upon in an arms length negotiation.  The Court acknowledged that the eSpeed licenses were not for the same technology as the patents in suit, but held that the fact that the patents were all for technology within the futures trading industry was sufficient to make them potentially relevant.  And the Court noted that if the eSpeed patents are ultimately not comparable to the patents in suit, the licenses covering the eSpeed patents will not be given weight in the final determination.

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Allied Ins. Co. v. Bach, No. 05 C 5945, 2007 WL 627635 (N.D. Ill. Feb. 27, 2007) (Leinenweber, J.).

Judge Leinenweber granted declaratory judgment defendants/counter-plaintiffs (collectively "defendants") summary judgment DJ plaintiff/counter-defendant's ("plaintiff") duty to defend defendants against Lanham Act and related state law claims.  Defendants were sued by third party Acushnet which accused defendants of willful and intentional violation of Acushnet's marks related to its Titlest Pro VI golf ball based upon defendants' alleged marketing of counterfeit golf balls.  Defendants sought defense and indemnification from plaintiff, their insurer.  Defendants' insurance policy covered, among other things, defendants' infringement of third party marks or copyrights in defendants' advertising so long as the infringement was not done with knowledge or intent of the infringement.  Although the Complaint charges defendants' with willful and intentional violations of the marks, the Lanham Act provides claims without regard to intent.  Because not all of Acushnet's claims require intent, plaintiff has a duty to defend defendants' against the suit.  The Court did note, however, that should Acushnet prove that defendants' acts were willful and intentional, plaintiff would have no duty to indemnify.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 2007 WL 611258 (N.D. Ill. Feb. 21, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies ("TT") motion for clarification of the Court's claim construction or in the alternative for reconsideration (more on the claim construction and the case generally here).  TT sought clarification of the Court's construction of "static" and a correction to the Court's construction of "plurality."  The Court defined "static" relative to a "price axis" as a line that does not change position unless it is manually re-centered.  TT sought clarification as to whether a product that had a "static" "price axis" for periods of time in between automatic re-centering would fall within the definition of "static" at least for part-time infringement.  The Court denied to clarify the construction as TT requested and held that for something to be "static" it must have "a permanent lack of movement."

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Ron Friedmann, of Prism Legal Consulting has created a list of "firm-branded blogs" -- he does not count AmLaw 200 attorneys that blog without displaying their firm affiliation -- in which he identifies nine AmLaw 200 firms that have a collective 30 blogs.  LexBlog's Kevin O'Keefe adds four more to Friedmann's list to reach 13 AmLaw 200 firms with 34 blogs:

• Cathy Kirkman of Wilson Sonsini (a LexBlog site).
• McGuire Woods employment law blog.
• Akin Gump's SCOTUS blog.
• Lindquist & Vennum's branded Corporate Securities Regulation blog (a LexBlog site).

Kevin's post also alludes to another blog from one of the AmLaw 50 that LexBlog will be going live with this week.  And as you can see from the addition of the DLA Piper logo to the Blog, this is it. 

Many friends and colleagues already know that I left my in-house position with Delphi's Technology Licensing & Litigation group in November and reentered private practice as Special Counsel to DLA Piper.  It has taken a little bit of time to get everything ready to go, but DLA has embraced the Blog and is very excited about being affiliated with it.  The Blog remains mine and that you will continue to get the same quality content.  The only differences are that I am back in Chicago and that I am now actively litigating IP matters in the Northern District of Illinois again.  It is great to be back in town and, as always, I welcome your comments.  And now that I am no longer inhouse, in addition to my thoughts (which remain solely mine and not necessarily those of DLA Piper or any of our clients) I can offer you my litigation services should you ever need them.

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Chief Judge Holderman announced this week that Joel Daly has been appointed the Northern District's Court Information Officer.  Daly is a "living legend" in the Chicago news world.  You can learn more about him from his ABC 7 biography.  In his role as Information Officer, Daly will assist journalists covering the Court and field inquiries about the Court's docket, ongoing cases and the judges.  Welcome to the Northern District Joel.

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Abbott Labs. v. Mylan Pharms., Inc., No. 05 C 6561, 2007 WL 625496 (N.D. Ill. Feb. 23, 2007) (Kendall, J.).

Judge Kendall denied plaintiff's, Abbott, Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant's, Mylan, antitrust counterclaims.  Mylan alleged that two Abbott employees submitted declarations and/or testimony stating the weight and structure of certain oligomers related to the patented invention, despite their knowledge that the tests they relied upon were known to be incapable of measuring the oligomers at issue.  Mylan further alleged that based upon these fraudulent statements, the USPTO issued certain of the patents-in-suit which then prevented Mylan from entering the market with a generic version of Abbott's pharmaceutical Depakote.  Abbott relied upon a prior Northern District ruling against third party Torpharm which held that Abbott's conduct before the USPTO was not inequitable.  But the Court held that while that ruling prevented a sham litigation claim, it did not estop Mylan's inequitable conduct allegations because Mylan was not a party to the prior case and, therefore, had no opportunity to present its evidence and argument.  Additionally, the Court held that Mylan adequately alleged antitrust injury by stating that it prepared to enter the market with generic Depakote, but was prevented from doing so by Abbott's alleged inequitable conduct.

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Since my last post listing the Blog's "cousin" blogs -- regional IP blogs -- another has joined the family.  The Tech Law Forum Blog has switched its format to focus on N.D. California IP cases.  Welcome to the family.  Here is the revised list:

Tech Law Forum Blog (N.D. Cal.)

If you know of other regional IP blogs, post a comment or send me an email (david.donoghue@dlapiper.com) and I will add them to the list.

*The Florida IP Blog is another blog developed and hosted by LexBlog just like this Blog and, as usual, it is a great looking site with easy navigation.

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Days Inns Worldwide, Inc. v. Lincoln Park Hotels, Inc., No. 06 C 2960, 2007 WL 551570 (N.D. Ill. Feb. 22, 2007) (Der-Yeghiayan, J.)

Judge Der-Yeghiayan granted plaintiff summary judgment on its trademark infringement and Illinois Deceptive Trade Practices Act ("IDTPA") claims, among others.  Plaintiff owns various marks relating to its Days Inn chain (the "Days Inn Marks").  Plaintiff licensed defendants Lincoln Park Hotels, Inc. and Richard Erlich (collectively "LPH") to use the Days Inn Marks in connection with the operation of a hotel in Chicago's Lincoln Park neighborhood.  In 2005, LPH sold the hotel to defendant Gold Coast Investors ("GCI") without informing plaintiff, in violation of the parties' license agreement.  GCI continued operating the hotel using the Days Inn Marks without licensing the rights to the marks from plaintiff.  As a result, plaintiff brought the instant action against defendants alleging that, among other things, GCI infringed plaintiff's Days Inn Marks and LPH contributorily infringed plaintiff's Days Inn Marks by selling the hotel to GCI with the knowledge that GCI intended to continue using the Days Inn Marks and without informing plaintiff of the sale or removing the Days Inn Marks from the hotel, as required in the parties' license agreement. 

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883286 (N.D. Ill. Dec. 18, 2006) (St. Eve, J.).*

Judge St. Eve granted judgment as a matter of law for plaintiff, holding that the jury's findings of invalidity and obviousness were not supported by legally sufficient evidence.  At trial, defendant introduced an article describing a prior art radio as 102(b) prior art using its expert.  But the expert testified that one of the claim elements was missing.  Defendant argued that pictures of the radio that were not used in the article, showed the device.  But the Court held that defendant could not piece together the article, testimony and pictures to prove that the article disclosed all elements of the claimed invention.  The jury's obviousness finding was not supported by legally sufficient evidence because defendant did not present clear and convincing evidence of a motivation to combine its obviousness prior art references.

* You can find much more on this case in the Blog's archives.

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Sheppard Mullin's Intellectual Property Law Blog (another LexBlog creation) has an excellent post on The Top Ten Ways Copyright Law Can Mess Up Your Transaction.  The post will go a long way towards keeping any company or individual out of the Northern District for copyright infringement issues.  But it does not address one of the biggest copyright dangers -- not addressing the use of potentially copyrighted materials within an organization.  Every modern business relies upon information, often that information is gathered from copyrighted sources, for example the internet, television, books or newsletters and magazines.  It is important to educate your employees to respect the copyrights covering their information sources and to set up corporate policies to make it clear that the company respects copyrights.  The fix for this problem is inexpensive and quick, but it can head off very expensive mistakes -- statutory damages for copyright infringement can be astronomical.

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Abbott Labs. v. Andrx Pharms., Inc., No. 05 C 1490, 2007 WL 551551 (N.D. Ill. Feb. 20, 2007) (Brown, Mag. J.).*

The Court denied defendant's motion to compel production of attorney-client privileged documents pursuant to the crime-fraud exception.  Defendant argued that plaintiff's failure to disclose full results from two studies with conflicting results (for and against the applications' claims) to the USPTO, both of which were material to the claims, was both inequitable conduct and fraud.  The studies were conducted during the pendency of one application and prior to two others.  Additionally, three of the named inventors co-authored a journal article detailing the results.  And during her deposition, prosecution counsel admitted being aware of the studies during prosecution of the applications.  The Court held that the evidence warranted in camera review of selected documents from plaintiff's privilege log to determine whether there was evidence of intent.  But after its review, the Court found no direct evidence of intent to defraud the USPTO.  The Court noted that "[n]one of the documents . . . contained a 'smoking gun' or anything close to it."  Furthermore, while intent can be inferred based upon circumstantial evidence, there most be more evidence than failure to disclose to support the inference. 

* You can see more on this case, in particular, various preliminary injunction opinions here and here.

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In January, Cisco's General Counsel Mark Chandler gave a speech at Northwestern's Securities Regulation Institute that made major headlines.  Because several in-house friends and colleagues have mentioned it to me recently, I thought it was worth a post.  Anyone involved in the private practice of law should take the time to read it.  It highlights an issue that is critical to achieving a client's desired results and to developing a strong relationship between a client and its outside counsel -- aligning the interests of the counsel to those of the client.  Chandler's speech resonates with me because when I was in-house, I struggled to align my outside counsel's interests with those of my company.  It seems that it should be an easy task, but many outside counsel do not get it. 

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According to this Chicago Tribune article, 'Struck By Lightning' 3 Times Over, three recent Northwestern grads Andrianna Kastanek (2005), Jessica Phillips (2006) and Katherine Shaw (2006) are headed to the Supreme Court next term.  The three will clerk for Kennedy, Alito and Stevens, respectively.  Congratulations to each and to Northwestern.  The school on the Lake will a U. of Chicago size presence on the Court next term.

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 551579 (N.D. Ill. Feb. 20, 2007) (Moran, J.).

Judge Moran granted in part defendant's motion for reconsideration regarding the Court's construction of "binary code."  In its prior claim construction opinion -- discussed here -- the Court defined "binary code" and "trinary code generator," among other terms.  In its discussion of its "binary code" construction, the Court explained that the claims do not limit binary code to a binary number and, therefore, the term encompasses "other numerical and character languages, including trinary code."  Defendant argued that binary code could not be defined as trinary code and that, therefore, the Court should modify its construction to make clear that trinary code cannot be part of binary code.  The Court agreed with defendant that binary code cannot encompass trinary code and, therefore, clarified its explanatory sentence.  The Court explained that binary code could not include trinary code, but that it could include trinary numbers.  But because the Court's actual construction did not mention trinary code, it declined to revise the construction.

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Murphy v. Murphy, No. 04 C 3496, 2007 WL 551576 (N.D. Ill. Feb. 15, 2007) (Darrah, J.).

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RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, 2007 WL 495254 (N.D. Ill. Feb. 14, 2007) (Coar, J.).

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Cummins-Allison Corp. v. Glory Ltd., No. 02 C 7008, 2007 WL 487564 (N.D. Ill. Feb. 12, 2007) (Kendall, J.).

Judge Kendall denied summary judgment of invalidity for defendant in this patent dispute (you can find the Court's prior claim construction ruling here).  Defendant argued that plaintiff's public use of money-counting machines embodying the patented inventions in banks more than one year before filing of the patent application invalidated the patents pursuant to 35 U.S.C. Section 102(b).  Defendant relied upon the testimony of several bank employees that the machines were beta-tested by banks in locations that bank patrons could see without signing any confidentiality agreements.  But plaintiff put forth evidence that defendant had taken steps to keep the use confidential and that, even if the use was public, it was only an experimental use which does not create a Section 102(b) bar.  Based on the conflicting evidence, the Court held that there were questions of material fact as to the patents' validity and, therefore, denied summary judgment.

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The big news in patent law this week is the Supreme Court oral argument in Microsoft v. AT&T.  Microsoft exports software from the United States to various countries.  The software code alone cannot infringe AT&T's patents until it is combined with the hardware, which only occurs after the software has left the United States.  So, exporting the software is not an act of infringement.  The issue, therefore, is whether, pursuant to 35 U.S.C. Section 271(f), exporting the software constitutes:

suppl[y] . . . from the United States . . . [of] all or a substantial portion of the components of a patented invention . . . in such manner as to actively induce the combination of such components outside of the United States,” as well as the “suppl[y] . . . from the United States [of] any component of a patented invention that is especially made or especially adapted for use in the invention.

For more on the issues, you can find the briefs at Patently-O. 

The case has received substantial media attention both because it was granted cert and because the case could have effects far beyond the international exportation of software.  The oral arguments were interesting (transcript here) and both the main stream media and blogs are frantically reading the tea leaves.

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Bryant v. Gordon, No. 05 C 3066, 2007 WL 461326 (N.D. Ill. Feb. 8, 2007) (Kennelly, J).

Judge Kennelly granted summary judgment for defendants, Gordon and Mach 1 LLC ("Mach 1"), on plaintiff's, Bryant, claims of copyright infringement based upon copyrighted goods Mach 1 purchased free of encumbrances in a bankruptcy auction.  Because Bryant had notice that copies of posters including his copyrighted photograph of U.S. Army snipers in Ghillie suits (the "Bryant photo") would be sold at the auction and he did not object, he had no claim of infringement for those copies.  The Court denied summary judgment for both Bryant and defendants on their cross-motions for summary judgment regarding infringement of a picture taken by defendant, Urtis, (the "Urtis photo") which allegedly copied the Bryant photo.  The Court held that the Bryant photo was copyrightable based upon Bryant's choice of composition, lighting, camera angle and other factors, but denied summary judgment as to whether the Urtis photo copied the Bryant photo.  The Court noted that both photos were "taken from the same angle, perspective, and with the same scene and terrain."  There were differences between the photos, but the Court could not say as a matter of law that the differences would be sufficiently obvious to an ordinary person.  The Court, therefore, held that a reasonable jury could find that the Urtis photo copied the Bryant photo or that it did not and denied summary judgment.

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Gabbanelli Accordions & Imports, L.L.C. v. Italo-Am. Accordion Manufacturing Co., No. 02 C 4048, 2007 WL 465423 (N.D. Ill. Feb. 6, 2007) (Zagel, J.).

Judge Zagel held that the Court had jurisdiction over plaintiff's trademark infringement action and ordered defendant to respond to plaintiff's summary judgment motion on the merits of the case.  In October 2002, the Court stayed the case pending resolution of contractual disputes related to ownership of the marks at issue in an Italian court.  The Court lifted the stay in May 2005.  Plaintiff distributed defendant's accordions in the United States.  In 1997, Plaintiff registered the mark at issue, which defendant claims to own.  While the contract at issue in the Italian court may play a role in determining ownership of the mark, the Court held that if plaintiff can prove ownership of the mark prior to the Agreement, then the Court can exercise jurisdiction and resolve the trademark infringement dispute.

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On the front page of yesterday's Business section, the Tribune ran a story about pharmaceutial companies developing combination drugs - Combo Pills Perk Up Firms' Profits.  The combination pills, for example a pill containing medicine to treat both high cholesterol and high blood pressure, have dual advantages:  1) patients are required to take fewer pills and the fewer the number of pills a person must take, the more likely they are to take all of their pills; and 2) patents are likely available on the combined drugs, extending patent protection.  The Tribune reported that dozens of combination pills are likely being developed, including in areas such as heart disease, asthma and depression.  For example, the article reports that Abbott Labs and AstraZeneca announced plans last year to combine their two popular cholesterol drugs, Tricor and Crestor respectively, into a single pill to lower cardiovascular disease risk (the #1 killer according to the article).

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Specialized Seating, Inc. v. Greenwich Indus., L.P., __ F. Supp.2d, 2007 WL 417027 (N.D. Ill. Feb. 2, 2007) (Holderman, C.J.).

Judge Holderman held declaratory judgment defendant's, Greenwich Industries ("Greenwich"), trademark invalid and held that Greenwich committed fraud on the USPTO while prosecuting its trademarks.  Declaratory judgment plaintiff, Specialized Seating ("Specialized"), and Greenwich are competing manufacturers of folding chairs.*  Greenwich has a trademark to a configuration of a folding chair with certain physical characteristics.  Because Greenwich secured patents for most or all of the features identified in its trademark, the Court held that Greenwich's trademark was functional and, therefore, invalid.  In addition to having held patents on the claimed features, Greenwich had also touted the functional benefits of the features in advertising.

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Over the weekend the Tribune ran two articles on trademark suits.  The first on Friday - 'March Madness' Use Approved - reported on a trademark suit in Cook County Circuit Court between Intersport, a Chicago-based sports media company, and the NCAA.  Intersport brought the action for, it appears, declaratory judgment that Intersport's license with the NCAA allowed it to use the NCAA's March Madness mark in connection with college-basketball related programming on wireless devices.  Circuit Judge Palmer held that Intersport could use the mark for distributing content "in any manner, including but not limited to distribution to video-enabled mobile wireless media devices."  The Tribune reports that Cingular Wireless, one of the NCAA's sponsors, offered wireless scores and highlights last year.  Last year, Intersport produced basketball-related wireless content for Sprint, but was barred from using the March Madness mark.  This year, it appears they will be free to use the mark.

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Clarus Transphase Scientific, Inc. v. Q-Ray, Inc., No. 06 C 4634, 2006 WL 4013750 (N.D. Ill. Oct. 6, 2006) (Cole, Mag. J.).

Magistrate Judge Cole denied plaintiff's motion for a preliminary injunction holding that plaintiff had not demonstrated a likelihood of success on its trademark, trade dress and copyright infringement claims.  Plaintiff marketed and sold pendants incorporating its "Sympathetic Resonance Technology" which it claimed enhanced the human biofield under its "Q-Link" mark.  Defendants sold a line of pendants and bracelets under the "Q-Ray" mark which they claim are "bio-magnetic ionized" which they claim enhance a person's overall well-being.  The Court held that there was no likelihood of success on the trademark infringement claims because the three most important likelihood of confusion factors -- the similarity of the marks, defendants' intent and evidence of actual confusion -- all favored defendants.  The marks, "Q-Link" and "Q-Ray" share only one letter, "Q," and a hyphen and use substantially different fonts, making even the Q's employed in each mark look different.  Plaintiff's actual confusion evidence consisted of a declaration from plaintiff's employee stating that she had added a Professional Golfers Association ("PGA") trade show at which "a number of attendees" were confused as to whether plaintiff sold the "Q-Ray" pendants.  The Court noted that the number of attendees that stated there confusion could have been as low as two.  As a result, the Court could not find a likelihood of success on the issue of actual confusion. 

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In January the House of Representatives passed a bill that would establish a pilot program in five district courts to develop district court judges with patent expertise.  The program will provide judges in the five districts the opportunity to get specialized patent training.  Cases, including patent suits, in the five districts will continue to be randomly assigned, but judges without the specialized patent training will have the option to transfer the cases to one of the patent-trained judges.  Each of the five district's will also be allowed to hire patent law clerks available to help judges on patent cases.  I assume these clerks will be like habeas clerks that many district courts already have or staff clerks/attorneys at some of the regional circuits.

I expect that many district court judges will, quite reasonably, believe they already have gained the necessary experience through their own hard work, but will also appreciate the extra law clerk help and the training.  It is a very interesting proposal which many expect to be approved by the Senate and signed into law this year.  For more on the pilot program, check out Patently-O, the Infinite Monkey Theorem Blog (a new blog affiliated with www.patentmonkey.com  - both of which are worth checking out), the IP Blawg and the WSJ Law Blog (an older post, but with some good information).

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After Hours Formalwear, Inc. v. Tuxedos, Inc., No. 06 C 2460, 2007 WL 404005 (N.D. Ill. Jan. 29, 2007) (Guzman, J.).

Judge Guzman denied plaintiff's Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of defendants' tortious interference and antitrust claims.  Plaintiff, After Hours Formalwear ("AHF"), controls at least 50% of Chicago's formalwear market.  AHF acquired a group of formalwear stores operating under the mark "Modern Tuxedo" and converted them to its AHF mark.  Shortly thereafter, defendants, including Tuxedos, Inc., (collectively "Tuxedos") renamed its stores, "Formally Modern Tuxedo."  This renaming led to AHF's suit against Tuxedos for trademark infringement and unfair competition.  Tuxedos responded with counterclaims alleging tortious interference of various kinds, and both federal and state antitrust violations.  Basically, Tuxedos alleged that AHF was using baseless trademark infringement claims to harass Tuxedos' customers and push Tuxedos out of the market.

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Ropak Corp. v. Plastican, Inc., No. 04 C 5422, 2007 WL 328880 (N.D. Ill. Jan. 30, 2007) (Valdez, Mag. J.).

Magistrate Judge Valdez awarded plaintiff certain of its fees related to motions to compel based upon the Court's August 15, 2006, order imposing Rule 37 discovery sanctions.  The Court noted its "considerable discretion" before reducing the fees so that they only included fees directly related to the particular discovery motions at issue.  The Court also removed entries for administrative tasks performed by attorneys that could have been performed by support staff.  And finally the Court reduced the hourly rates of the attorneys because plaintiff did not justify its rates by providing the Court information regarding standard rates in the Northern District or any biographical information regarding the attorneys to support their rates based upon their respective experience levels.  Practice tip:  If you are preparing a motion for fees, this opinion is an excellent place to look for determining what information to include in your motion and how to support your rates.

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This afternoon is the second installment of the 2007 Chicago IP Colloquium.  Professor Margaret Chon of the Seattle University School of Law will be discussing her paper Intellectual Property "from Below": Copyright and Capability for Education,  starting at 4:00 4:00 in the Rubloff Reception Room at Loyola (25 E. Pearson).  It should be a great presentation.

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Shen Wei (USA) Inc. v. Sempermed, Inc., No. 05 C 6004, 2007 WL 328846 (N.D. Ill. Jan. 30, 2007) (Guzman, J.).

Judge Guzman granted defendant leave to amend its answer adding inequitable conduct affirmative defenses and counterclaims alleging that plaintiffs failed to disclose their prior art sale of a medical glove embodying their invention, but not regarding the existence and sale of a third party's glove of which plaintiffs were allegedly aware.  The Court held that defendant's affirmative defense and counterclaim met the Fed. R. Civ. P. 9(b) standard with respect to plaintiffs' alleged sale of their own product more than one year before their priority date because, although defendant did identify the person who intended to deceive the USPTO, it was reasonable to conclude that the inventor was charged with the intent.  With regards to the sale of the third party, Ostar, glove defendant only alleged that plaintiffs generally knew of the glove and its materiality, but failed to disclose it.  Defendant did not plead with sufficient specificity:  who knew about the Ostar glove, what they knew, when they knew it, whether the failure to disclose was intentional or why the Ostar glove was material. 

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Last Wednesday the Chicago IP Alliance held its second annual Chicago IP Day at Loyola.  It was, no surprise, an excellent program providing an information-packed day.  I do not have the time to summarize all of the presentations, but I will give some highlights.  George McAndrews, McAndrews, Held & Malloy, gave a very interesting presentation outlining his views on the Supreme Court's recent eBay v. MercExchange opinion requiring the use of the standard permanent injunction test to determine whether a permanent injunction should be granted after a patent infringement judgment.  Essentially, he argued that the Supreme Court's ruling contradicts the constitutional grant of a limited monopoly.  His presentation led to some spirited debate at various tables during the excellent lunch in Loyola's beautiful new conference room atop the law school.

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International Profit Assocs., Inc. v. Paisola, 461 F. Supp.2d 672 (N.D. Ill. Nov. 14, 2006) (Bucklo, J.).

Judge Bucklo held that plaintiff was likely to succeed on its Lanham Act and cyberpiracy or cybersquatter, 15 U.S.C. Section 1125(d), claims and issued a temporary restraining order ("TRO") preventing defendants from conduct that likely infringed plaintiff's trademarks.  Based upon the cyberpiracy claim, Defendants were ordered to stop making content available through their website, www.ipaopinion.com, which was likely confusingly similar to plaintiff's site, www.ipaopinions.com.  The Court also ordered defendants to stop using plaintiff's trademarks as search terms in Google's Adwords program. 

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Judge Darrah, after finding each of the eleven patents-in-suit unenforceable for inequitable conduct, held that the suit was exceptional based upon the inequitable conduct, the filing of several frivolous claims which were previously dismissed and misconduct at trial, providing the Court the discretion to award attorney's fees.  The court also did a detailed analysis of defendants' Bill of Costs and awarded defendants some or all of their requested costs for service of process, court reporters, witnesses and experts, among others.  Of note, the Court held that expert fees, including the expert's hourly rates, were recoverable for time spent on expert reports, deposition and related preparation, and other time spent in responding to discovery, but not for time spent attending other expert depositions in the case.

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Civix-DDI, LLC v. National Assoc. of Realtors, No. 05 C 6869, 2007 WL 178318 (N.D. Ill. Jan. 22, 2007) (St. Eve, J.).

Judge St. Eve granted defendant Hotels.com summary judgment that certain of its alleged activities are protected by plaintiff Civix's covenant-not-to-sue with Hotels.com covenant-provider MapQuest and denied summary judgment as to activities that might be covered by Civix's similar covenant-not-to-sue with Hotels.com content-provider Navteq.  Another opinion on a similar issue with defendant Yahoo in the case is discussed in this post.  The Court held that both covenants prevented suits against the licensee's customers or end users with respect to or relating to the licensee's technology.  But in the case of the Navteq agreement, there was an issue of fact as to whether a third party in the stream of commerce between Navteq and Hotels.com added independent value to Hotels.com thereby giving Hotels.com more than the Navteq technology and kept Hotels.com from benefiting from the covenant-not-to-sue.  In the case of the MapQuest technology, there was no such third party in the stream of commerce and, therefore, no question that Hotels.com was protected by MapQuest's covenant-not-to-sue.

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Yesterday the Tribune ran another article on big firm associate salaries -- .Biggest Chicago Firms Boosting 1st-Year Pay.  This story only made page 3 of the Business section, not the front page like the last article.  But unlike the last Trib article which only predicted that firms were considering responses to the New York raises, this one reported that Sidley and Mayer, Brown have both raised first-year salaries from $135,000 to $145,000.  The article also predicts that other large Chicago firms will be following suit. 

The Blog is not going to get side-tracked reporting on which firms do and do not raise, so if you are looking for more updated information check out other sources such as Above The Law and the WSJ Law Blog, which does not cover the salaries obsessively but has done several posts on this round of salary raises.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2007 WL 108412 (N.D. Ill. Jan 12, 2007) (St. Eve, J.).

Judge St. Eve denied defendant's motion for a new trial, altered judgment or judgment as a matter of law in this patent dispute (more on this case and the injunction in the Blog's archives).  Defendant first argued that the jury's infringement findings on various claim elements were not supported by the facts.  The Court denied each argument, citing facts that supported the jury's infringement findings.  Defendant also argued that the jury's verdict that claim 1 of USPN 6,788,925 (the "'925 patent") was valid while the almost identical claim 2 of the '925 patent was invalid was inconsistent.  Defendant sought an altered judgment or a new trial as a remedy.  The Court first noted that several Circuits would have waived this objection because defendant did not object to the alleged inconsistency when the jury rendered its verdict.  But because the Seventh Circuit has not directly ruled on the issue (the matter is governed by region-specific law because it is a procedural matter), the Court did not waive the objection.  The Court did, however, waive any arguments Defendant first made in its reply brief.  Having addressed the procedural posture of the arguments, the Court held that the jury's validity findings on the two claims was sufficiently supported.  Because the two claims, although substantially the same, had different elements, the Court held that a rational jury could have come to different validity conclusions for each claim and denied defendant's request for a new trial. 

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The Chicago Auto Show runs from February 9-18 at the McCormick Place.  As a former IP licensing and litigation counsel for Delphi (the largest auto supplier in the world), I have a soft spot for the Auto Show and highly recommend that you check it out.  It is especially great for kids who love to climb through the cars and, after a certain age, use the backdoor child-safety locks to lock brother and sisters in the cars.  But this year's show appears to include a trademark dispute.  According to the Electronic Frontier Foundation* counsel for the Chicago Auto Show has sent this letter claiming that the Shutdown's website uses the Auto Show's trademarks in an infringing manner and demanding that any such infringement be stopped.  Shutdown and its counsel appear ready to fight, as can be seen in their response to the Auto Show's cease and desist letter.  I have not reviewed the facts or trademarks at issue and so take no position on who may be correct in this dispute, but a quick look at the banners atop the Auto Show's site and Shutdown's site, suggests that Shutdown is at least using all or much of the Auto Show's banner.

Thanks to the Cogito Ergo Teneo Blog for the heads up here.

* The EFF represents the accused infringer in this dispute.

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As a life-long Lions fan -- yes, I did say "fan" -- it pains me to say "Go Bears", but this is a Chicago-focused blog and so, with Chicago's Bears preparing for Sunday's Big Game* I feel obliged to write the post.  In order to keep this law-related, I direct you to the WSJ Law Blog's Football Hall of Fame.  The criteria is combined football and legal prowess.  Several Bears have been mentioned, including:    Bob Thomas (Chief Justice of the Illinois Supreme Court) and Chris Zorich.  My choice would be Gerald Ford, a Captain and national champion at Michigan, Speaker of the House and, albeit briefly, POTUS. 

* It is very, very dangerous to use the NFL's trademarks, as reported by The Hollywood Reporter, Esq. Blog.

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Goss Int'l Am., Inc. v. Graphic Management Assocs., Inc., No. 05 C 5622, 2007 WL 161684 (N.D. Ill. Jan. 11, 2007) (Valdez, Mag. J.).

Magistrate Judge Valdez  compelled certain foreign defendants (the "Swiss Defendants") to produce documents related to each Swiss Defendant's contacts with the United States.  After plaintiff filed its patent infringement claims against the defendants, the Swiss Defendants filed motions to dismiss the case for lack of jurisdiction.  They argued that no state had personal jurisdiction over them.  Plaintiff responded that the Court had jurisdiction pursuant to Fed. R. Civ. P. 4(k)(2), the federal long-arm statute.  Plaintiff also sought jurisdiction-related discovery to prove the necessary jurisdictional facts.  The  Court granted jurisdictional discovery and, based upon that decision, compelled the Swiss Defendants to produce documents relevant to their contacts with the United States after the Swiss Defendants refused to produce them pursuant to plaintiff's discovery requests.

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American Fam. Mutual Insur. Co. v. Roth, No. 05 C 3839, 2007 WL 63983 (N.D. Ill. Jan. 10, 2007) (Cole, Mag. J.).

Judge Cole recommended denying defendants' motion to modify Judge Guzman's preliminary injunction for lack of jurisdiction.  Judge Guzman, following Judge Cole's recommendation, issued a preliminary injunction to prevent defendants from using a list of confidential information regarding plaintiff's policy holders.  Defendants ultimately appealed the preliminary injunction and then filed a motion to clarify seeking modifications to the injunction  equivalent to what they were asking to be overturned on appeal.  After an exhaustive analysis of the procedural rules, the Court recommended denying the motion to modify for lack of jurisdiction because once defendants appealed the injunction, the district court loses jurisdiction over the appealed issues.

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Father Robert Drinan, S.J. died on Sunday.  Father Drinan was a founder of modern (post-Watergate) legal ethics and a colorful, important character in American political history, having been a member of the House Judiciary Committee during the Nixon impeachment proceedings and an outspoken critic of American activities in Vietnam and Cambodia while he was in Congress.  Father Drinan was also a professor at Boston College (actually the Dean) and then at Georgetown.  While getting my JD at Georgetown, I was blessed to spend a considerable amount of time with Fr. Drinan as an Editor on the Georgetown Journal of Legal Ethics, created by Fr. Drinan and still the only ethics journal in the country, and when I took several of his classes, including his Advanced Legal Ethics Seminar.  Fr. Drinan loved teaching and he had an endless supply of experience from which to teach. 

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Junction Solutions, LLC v. MBS DEV, Inc., No. 06 C 1632, 2007 WL 114306 (N.D. Ill. Jan. 9, 2007) (Gottschall, J.).

Judge Gottschall denied defendants' motion to dismiss plaintiff's, Junction Solutions, trade secret and tortious interference case for lack of venue and denied plaintiff's motion to remand the case to Cook County Circuit Court, from where defendants removed the case.  Individual defendants, Jeffrey Ernest, Mitch Tucker and Kenneth Paul, were plaintiff's employees and helped it develop it its Junction Multi-Channel Distribution Software ("JMCD Software").  Shortly after developing the JMCD Software, the individual defendants left Junction Solutions and joined its competitor MBS DEV.  MBS DEV then began marketing software that competed with the JMCD Software.  Junction Solutions sued MBS DEV in the District of Colorado in 2004.  The parties eventually settled that case, a settlement which was also signed by the individual defendants.  In 2006, MBS partnered with Iteration2 and again began planning to market a software product very similar to the JMCD Software.  In response, plaintiff filed the instant suit in Cook County Circuit Court and defendants removed it to the Northern District.

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Top Tobacco, L.P. v. North Atl. Operating Co., No. 06 C 950, 2007 WL 118527 (N.D. Ill. Jan. 4, 2007) (Kennelly, J.).

Judge Kennelly granted summary judgment for defendants on plaintiff's trademark, unfair competition and dilution claims.  Plaintiffs, Top Tobacco and Republic Tobacco ( collectively "Top Tobacco ") own various trademarks associating the word "top" or a picture of a toy top with tobacco products.  Both Top Tobacco and defendant, North Atlantic Operating and National Tobacco Company ("National Tobacco"), are large players in the "make your own" and "roll your own" cigarette market.  Top Tobacco alleged that its Top marks were infringed and diluted by National Tobacco's use of its "Fresh-Top Canister" mark.  The Court granted summary judgment of non-infringement because it ruled that no reasonable jury could find that consumers were confused between Top Tobacco's TOP mark and National Tobacco's "Fresh-Top Canister" mark.  The Court held that they were visually distinct and cited Top Tobacco's remarks to the USPTO during prosecution of its marks that its TOP marks were visually distinct from marks relating to lids, as does the National Tobacco mark.  Additionally, the Court noted that Top Tobacco had chosen not to present a consumer survey to show actual confusion and did not explain why no survey was done.

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Don't forget that tomorrow is the first day of the 2007 Chicago IP Colloquium.  Professor Glynn Lunney of Tulane University Law School will be discussing Copyright as a Coordinating Mechanism starting at 4:10 in Room 305 of the Kent Law School.  It should be a great presentation.

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For the last week or two, many of the big New York City law firms have been raising associate salaries -- a $15k bump for young associates and a $20k bump for more senior ones -- raising starting salaries to $160,000 for first year associates.  It has not hit Chicago directly yet, but the Tribune ran a front page article on it Sunday, Raising The Bar For Legal Salaries.  Several large Chicago firms asked to comment for the story all said "they were still discussing the issue and had not made a decision on whether to raise salaries."

If you want more information on the raises, check out the excellent coverage at Above The Law (an entertaining site by former AUSA and creator of Underneath Their Robes David Lat) and The WSJ Blog.

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Judge Pallmeyer, as the Chair of Northern District's Historical Association, sent a letter to the Chicago Association of Law Libraries seeking any historical information about the Court and significant cases before it that local firms or practitioners may have in their archives.  Here is Judge Pallmeyer's request in her own words:

We are aware that some of the local law firms themselves maintain archives that might relate to our court's history.  Might your firm maintain such an archive?  If you have retained materials that might be of interest to our Association, would you please contact me?  One of the members of our Association, or a legal historian who is working with us, would very much appreciate the opportunity to review them.  I can be reached at (312) 435-5636 or by e-mail CourtHistory_ILND@ilnd.uscourts.gov.

If you have something, send it on and let them know you saw the request here.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883937 (N.D. Ill. Dec. 27, 2006) (St. Eve, J.).

Judge St. Eve denied defendant's emergency motion to prohibit plaintiff from sending Rule 65(d) notice letters regarding the Court’s permanent injunction to defendant’s customers (more on this case and the injunction in the Blog's archives). But before analyzing defendant’s emergency motion, the Court first addressed defendant’s prior motion to clarify the injunction which the Court previously denied. In the motion to clarify, defendant stated that it had sold approximately 150,000 infringing radios to various resellers prior to being enjoined. Defendant argued that those resellers should be free to sell their supplies of infringing radios. The Court denied the motion because it was first raised in a sur-reply brief regarding plaintiff’s motion for a permanent injunction without presentation of any detailed facts, legal argument or supporting case law. 

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883286 (N.D. Ill. Dec. 18, 2006) (St. Eve, J.).*

Judge St. Eve denied defendant's motion for vacature of a lost profits award and for a new trial.  First, defendant argued that the jury's finding that it induced infringement could not stand because it shipped the product at issue with an AC power cord (non-infringing) and a battery (infringing), but plaintiff had not shown that each individual sale of a product resulted in an infringing use.  Prior to trial defendant argued that plaintiff must show a one-to-one correspondence between each unit sold and a customer's direct infringement citing Chiuminatta concrete Concepts, Inc. v. Cardinal Indus., Inc., 1 Fed. Appx. 879 (Fed. Cir. 2001) (unpublished op.).  The Court denied that argument.  In its post-trial motion, defendant argued that proof of sales is not sufficient for an award of induced infringement citing Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354 (Fed. Cir. 2006).  But the Court distinguished Golden Blount because the issue in that case was that some product was returned to the alleged infringer before being assembled into an infringing product, which may or may not have been sold.  There was no induced infringement because the product at issue may never have been sold.  In the instant case, the Court held that the product with the infringing configuration had been sold and, therefore, upheld the jury's finding of induced infringement.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883919 (N.D. Ill. Dec. 7, 2006) (St. Eve, J.).

This is Judge St. Eve's permanent injunction order (numerous opinions from this case and its resulting jury trial have been analyzed in the Blog and can be found in the Blog's archives).  The injunction is notable for its thoroughness, in describing both the claims at issue and the enjoined products or classes of products.  The order even includes electrical schematics of a portion of the enjoined invention.

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Wednesday, February 7 is IP Day in Chicago.  This annual event at Loyola (where I previously taught Legal Writing) will focus on a hot topic for IP litigators -- the Supreme Court's recent active role in defining intellectual property law.  You can see from the event brochure that the day is full of great speakers focused on very interesting topics.  Of special note, John Whealan, the USPTO's Deputy General Counsel for IP and Solicitor, is giving the key note speech.  I have heard Mr. Whealan speak on several occasions and can confirm that he is an excellent speaker who always provides a very interesting and thoughtful perspective on any issue he addresses.  This is an event that you should not miss.  I certainly will not miss it, if you see me there please say "hello."

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Black & Decker v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883921 (N.D. Ill. Nov. 20, 2006) (St. Eve, J.).

Judge St. Eve's latest opinion in this patent dispute awarded plaintiff its costs pursuant to Fed. R. Civ. Pro. 54(d) over defendant's objection that plaintiff's alleged misconduct.  My analysis of Judge St. Eve's opinion which analyzed defendant's misconduct allegations, as well as opinions addressing numerous other aspects of this case and the resulting trial, can be found in the Blog's archives.  In response to defendant's allegations of misconduct, the Court cited her previous opinion finding that there was no misconduct and noted that counsel for both parties "exhibited rigorous advocacy on behalf of their clients."  The remainder of the opinion determined which requested fees were appropriate.  It serves as an excellent primer on what fees will be paid in the Northern District and what acceptable charges are for those fees.

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A recent post complimenting The Blog by Mike Atkins at the Seattle Trademark Lawyer Blog (thanks Mike) jump started a post I had been planning for a while.  There are a growing number of blogs following IP issues in different regions of the country (and world), what Mike refers to as our "cousin" blogs.  So, here a list of the regional IP blogs that I know about.  All of them offer interesting content, much of  which is useful beyond their home regions:

If you know of other regional IP blogs, post a comment or send me an email (dave.donoghue@yahoo.com) and I will add them to the list.

*The Florida IP Blog is another blog developed and hosted by LexBlog just like this Blog and, as usual, it is a great looking site with easy navigation.

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Chicago-Kent College of Law and Loyola University Chicago School of Law  (where I previously served as an Adjunct Professor of Legal Writing) are jointly sponsoring and hosting the Chicago Intellectual Property Colloquium.  The Colloquium brings six nationally renowned IP scholars to Chicago to discuss their current IP research. The presentations look very interesting.  They start January 30th and run through April on Tuesday afternoons (schedule after the jump).  Each lasts just under two hours and they rotate between Kent and Loyola.  

Attendance is by invitation only.  If you would like an invitation, contact Patricia O'Neal at Kent -- poneal@kentlaw.edu.  I will be attending as many as I can and blogging about them afterward.  If you see me, please say "hello."

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Abbott Labs. v. Andrx Pharm., Inc., No. 06-1101, __ F.3d __ (Fed. Cir. 2007).

While this is not a Northern District case, it is relevant to the Blog because it is an appeal of a Northern District case and because it confirms Judge Coar's ruling (discussed here) that a preliminary injunction holding lacked preclusive effect in the related case Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 3718025 (N.D. Ill. Dec. 15, 2006).  In this patent dispute plaintiff, Abbott Laboratories ("Abbott"), alleged that defendant's, Andrx Pharmacueticals ("Andrx") sale of a generic form of Abbott's patented extended release antibiotic (clarithromycin, an erythromycin derivative) which Abbott markets as Biaxin XL.  The Northern District held that Abbott had established a likelihood of success on the merits of its infringement claim and that Andrx had not established a likelihood that the patent would be held invalid.  As a result of those holdings, the Northern District issued a preliminary injunction.  In its appeal, Andrx argued that Abbott was precluded from obtaining a preliminary injunction because the Federal Circuit overturned a previous Northern District preliminary injunction for Abbott against another generic antibiotic producer Teva Pharmaceuticals ("Teva").  In that case, the Federal Circuit held that Teva raised a substantial question as to the validity of the claims at issue, sufficient to call Abbott's likelihood of success on the merits into question. 

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Goss Int'l Am., Inc. v. K & M Newspaper Serves., Inc., __ F. Supp.2d __, 2006 L 3883318 (N.D. Ill. Dec. 29, 2006) (Colon, J.).

In this claim construction opinion, Judge Colon considered several issues regarding whether "means" terms were actually means plus function terms.  The patented technology at issue is "inserts" which are machines that insert advertising materials into newspapers at specific locations within the newspaper.  The Court first held that "article feeder means" was no means plus function language governed by Section 112, para. 6.  Citing the Federal Circuit's MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006) decision, the Court concluded that "article feeder," like "circuitry" in the MIT case, described a known structure in the industry.  Additionally, the patent's prosecution history showed that both the examiner and the patienter understood "article feeder" to refer to a specific structure.  And dictionaries definitions of "feeder" were consistent with its use in the patent-at-issue.  Furthermore, the claims that included the term described the location of the article feeder and certain of its components, giving it structural definition.  Finally, defendant's means plus function definition failed because it sought to import structures that were not necessary to the "article feeder's" function and because certain of the structures were recited in independent claims, violating the doctrine of claim differentiation.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3783006 (N.D. Ill. Dec. 22, 2006) (St. Eve, J.).

Having already denied plaintiff summary judgment on defendant's inequitable conduct defense (here) and increased damages 50% and awarded prejudgment interest compounded monthly (here), the Court denied defendant's motions for judgment as a matter of law, to alter the willfulness judgment and for a new trial.  The Court's denial of these sort of post-trial motions is far from surprising, in light of the substantial burdens that must be overcome to win them.  Of special note, defendant argued that the jury's willfulness determination was not valid because the evidence relied upon was defendant's knowledge of a competing product that it believed to constitute patented technology, not defendant's knowledge of the specific patents that were infringed.  The Court held that the relevant inquiry is the infringer's knowledge of the existence of patent rights, not specific patents.

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As promised in my prior post about Bill Patry's Patry on Copyrights, below is the Blog's first e-interview.*  I emailed Patry questions about himself and his treatise and I print his responses (in italics) below.

What drove you to write a copyright treatise?

Probably a mild form of insanity. I have written other treatises, including a multivolume one of 1995, but I wanted to really go crazy, and did.

How did you go about writing the treatise and how large was the staff that helped you draft it?

It took me 7 years and when you include material I incorporated and revised from earlier works, it is 14 years total. I have never used assistants of any kind, so I researched and wrote 100% of it myself. The book evolved a lot over time, and I probably rewrote it substantially at least three times. I had a fair idea of the structure so the hard part was figuring out what kind of treatise I wanted it to be. A straight treatise along the lines of a recap of the statute and major case law is not so helpful or interesting. I wanted this to be exhaustive, meaning I tried to think of every issue I could, provide all cases I could, all legislative history, major commentary and insights from general law or even other disciplines outside of law. I tried to leave no stone unturned.

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Bill Patry has just published Patry on Copyright -- a seven volume treatise on copyright law and the first new copyright treatise in seventeen years according to Patry.  Patry spent seven years working on his nearly 6,000 page treatise and brings a distinguished background to the subject.  He is currently Google, Inc.'s Senior Copyright Counsel, he was a professor of copyright law at Cardozo (and an adjunct professor at my alma matter, the Georgetown University Law Center), copyright counsel to the U.S. House Judiciary Committee and Policy Planning Advisor to the Register of Copyrights.  You can see the table of contents here and you can buy Patry on Copyrights here.  You can also read Patry's own thoughts about his treatise on his Patry Copyright Blog or give him feedback on the treatise at his Patry Treatise Blog, both hosted by Google's Blogger, of course.

This appears to be an excellent, exhaustive resource for copyright practitioners and academics.  Stay tuned for more from Patry himself on his treatise.  Later today or tomorrow I will be posting the Blog's first e-interview (of Patry), which I plan to make a quasi-regular Blog feature. 

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Bergt v. McDougal Littell, No. 06 C 4645, 2006 WL 3782919 (N.D. Ill. Dec. 21, 2006) (Lefkow, J.).

Judge Lefkow denied defendants' motion to dismiss plaintiff's copyright and fraud case which alleged that defendants' use of plaintiff's copyrighted painting "Primavera" in textbooks exceeded the number of copies allowed by the parties' license agreement.  Defendants sent plaintiff, via his agent ("Agent"), a request to use copies of his painting in a run of no more than 40,000 textbooks.  Agent responded shortly thereafter with a document labeled "Invoice" which granted defendants the right to use Primavera in textbooks without specifying any limitations, for example limiting use to the run of 40,000 textbooks as per defendants' initial request.  Defendants argued that Agent's letter was a counteroffer which changed the terms of the parties' license.  But the Court held that defendants' initial letter, specifying the price and the limited run, was an offer and that Agent's letter was the acceptance.  The Court reasoned that Agent's letter did not require a response, suggesting it was an acceptance, and that defendants could not have reasonably believed that Agent was modifying the offer to allow unlimited use of Primavera, instead of a limit of 40,000 copies, without increasing the $200 license fee.

There is also what appears to be a similar case, although brought by a different plaintiff, addressed in this post.

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Ortho-Tain, Inc. v. Rocky Mountain Orthodontics, Inc., No. 05 C 6656, 2006 WL 3782916 (N.D. Ill. Dec. 20, 2006) (Leinenweber, J.).

Judge Leinenweber dismissed defendant's, Rocky Mountain Orthodontics ("RMO"), patent-related declaratory judgment counterclaims for lack of subject matter jurisdiction.  Plaintiff, Ortho-Tain ("OT"), sued RMO alleging that RMO breached the distributorship agreement between the parties pursuant to which OT manufactured dental appliances (allegedly covered by OT's patents) and RMO sold those appliances in France.  RMO counterclaimed for, among other things, declaratory judgment of noninfringement and unenforceability of OT's relevant United States patents.  RMO argued that OT's breach of contract and tortious interference suit combined with OT's warnings to RMO's customers that RMO was no longer authorized to sell OT products created the requisite reasonable apprehension of suit.  The Court, however, held that there was no reasonable apprehension.  OT's suit had been pending for over a year and OT had not added patent claims.  OT had also repeatedly stated that the suit was only a contract and tortious interference action.  While OT's statements stopped short of an affirmative disavowal of suit, they were sufficient to prevent a reasonable apprehension of suit.

Additionally, there was no present activity by RMO which constituted infringement.  RMO's counterclaims identified only United States patents, but RMO's sales activities were all in France.  Because there was no evidence submitted of infringing activity in the United States, there was no subject matter jurisdiction for a declaratory judgment action.

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McKillup Indus., Inc. v. Integrated Label Corp., No. 06 C 3279, 2006 WL 3775954 (N.D. Ill. Dec. 19, 2006) (Bucklo, J.).

Judge Bucklo denied summary judgment that defendant's "integrated labels," "integrated cards" and "integrated forms" marks were generic.  Plaintiff argued that the marks were generic based upon the separate dictionary definitions of "integrated" and "labels/cards/forms" (although there was no dictionary definition of either of the three whole marks) and evidence that competitors use the term, including a Google search of each of the marks.

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Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 3718025 (N.D. Ill. Dec. 15, 2006) (Coar, J.).

Judge Coar denied plaintiff's, Abbott Laboratories ("Abbott"), motion for a temporary restraining order ("TRO") to prevent defendant, Sandoz, Inc. ("Sandoz"), from selling a generic version of Abbott's patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  The Court had entered a TRO and, ultimately, a preliminary injunction preventing another party, Teva Pharmaceuticals ("Teva"), from selling a generic version of plaintiff's patented extended release antibiotic, but the Federal Circuit vacated the preliminary injunction.  The Federal Circuit held that Teva raised a substantial question as to the validity of the claims at issue, sufficient to call Abbott's likelihood of success on the merits into question. 

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The Intellectual Property Law Association of Chicago ("IPLAC") is hosting a lunch seminar on January 24, 2007 at DePaul's Law School.  The speaker, Professor Katherine Strandburg, will give an overview of data privacy identifying the hot issues in the field, as well as discussing the relevant statutes and legislation.  A copy of the brochure for the seminar is here.  The brochure has registration details, but make sure to register by IPLAC's deadline -- next Friday, January 19. 

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Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7713, 2006 WL 3718074 (N.D. Ill. Dec. 14, 2006) (Moran, J.).

Judge Moran's opinion addressed several motions in limine in preparation for a February 5 trial (good luck to both sides).  Of special note, the Court delayed ruling upon plaintiff's motion to exclude deposition testimony of two witnesses regarding prior use as hearsay .  Defendant argued, not surprisingly, that the testimony it intended to introduce was not hearsay.  The Court, however, could not rule on the motion because neither party provided the Court with copies of the relevant deposition testimony.  Practice tip:  always provide the Court with the evidence underlying your motions and arguments.  It is hard for a court to rule without seeing the evidence it is ruling upon.

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In my previous post about Google's introduction of its new Google Patents search interface, I did not yet appreciate the full range of the tool or its potential benefits.  The Ironic Sans blog has shown some of the site's power here, posting a list of celebrity patents identified using Google Patents.  Who knew Eddie Van Halen was an inventor. 

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AutoZone, Inc. v. Strick, __ F. Supp.2d __, 2006 WL 3626770 (N.D. Ill.  Dec. 7, 2006) (Hart, J.).

Judge Hart granted summary judgment for defendants and dismissed all of plaintiffs' claims in this trademark case.  First, the Court did a detailed analysis of each of the seven likelihood of confusion factors and determined that a reasonable jury could not find a likelihood of confusion between plaintiffs' AutoZone mark and defendants' Oil Zone and Wash Zone marks.  The Court found that plaintiffs' mark was strong, but held that there was not great similarity between the marks, that plaintiffs' and defendants' services were not similar, and that there was no evidence of actual confusion or intentional infringement.  As a result, the Court dismissed plaintiffs' trademark infringement and unfair competition claims.

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Matthew Buchanan and the rest of the folks at the Rethink(ip) blog have launched FedCirc.us.  Fed Circus claims it will provide summaries and analysis of all Federal Circuit case as they come down with lots of bells and whistles.  It sounds a lot like what this Blog does for the Northern District, but for the Federal Circuit (just like Patently-O).  It looks like a great site, and I am curious to see how they will differentiate themselves from Patently-O, which already has a very strong and very loyal audience.

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Andrew Corp. v. Beverly Mfg. Co., No. 04 C 6214, 2006 WL 3486884 (N.D. Ill. Dec. 1, 2006) (Holderman, Chief J.).

In this claim construction opinion regarding several patents relating to cable hangers used for telecommunications towers, Judge Holderman refuses to limit several claim terms based upon the preferred embodiments described in the specifications.  The Court explained that "district courts should not generally rely on preferred embodiments in specifications to confine claims unless the embodiment defines the outer limit of the claim." 

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On December 29th, the Blog was Inter Alia's Blawg* of the Day.  Thanks Inter Alia.

* For any that do not know "blawg" is blogger short hand for law blogs.

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Martin Eng. Co. v. CVP Group, Inc., No. 06 C 4687, 2006 WL 3541777 (N.D. Ill. Dec. 7, 2006) (Cole, J.).

Judge Cole granted defendant's motion for a 21 day extension to respond to written discovery requests.  Plaintiff refused to agree to the extension (for discovery due eight months prior to the close of fact discovery) and filed a written objection to defendant's motion citing a "pattern of dilatory conduct."  As examples of the pattern, plaintiff identified two items.  First, that it took defendant two weeks to respond to plaintiff's settlement offer, and only then after repeated calls from plaintiff.  And second, that defendant's Rule 26 disclosures were served nearly two weeks late.  The Court made clear that it did not condone a party ignoring the Court's deadlines or delay more generally, but noted that "not all delays are the same."

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Last Tuesday the Chicago Tribune published an article titled Human Resources Garnering Respect at Large Law Firms which discussed a growing trend among large law firms:  hiring HR professionals from outside of the legal profession and placing greater importance on HR.  The article suggests that  placing a greater emphasis on HR is one way in which the firms are combating increased attrition and associate dissatisfaction.

The Wired GC also noticed the article and wrote a thoughtful post about it here.

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The Chicago Tribune ran a story Sunday -- Lawyer Bills Get Closer Scrutiny -- about outside counsel billing and the potential for bill padding and other abuses.  The story quoted a few experts and briefly outlined the billing pressures faced by medium and large law firms, although it would probably be fair to say that firms of all size face pressures to bill.  The article highlighted a recent dispute between partners at a Wisconsin firm over billing practices in a copyright case, recent federal bankruptcy court fee applications, and a Cook County judge who halved plaintiffs' attorneys fees in a class action against Boeing. 

Not the best press for the profession, but I must say that my experience (as both inside and outside counsel) has been that attorneys generally strive to bill honestly, fairly and conservatively, to avoid questions like those raised in this article and the cases it cites.

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This is the first page of U.S. Patent No. 5,582,532 which covers a New Year's Eve party-type toy which emits "reflective particles."  Enjoy the day and the bowl games.  Go Blue!

More importantly though, I wish each of you a happy, healthy and prosperous 2007.  And thank you for helping launch the Chicago IP Litigation Blog in 2006.  I really enjoy writing it and I am very appreciative that each of you read it.  As always, your thoughts on the Blog and anything you would like to see on it are always welcome.

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DeVore Family Partnership LLP v. McDougal Littell, No. 06 C 3484, 2006 WL 3393844 (N.D. Ill. Nov. 22, 2006) (Conlon, J.).

Having already refused to dismiss this case (here), Judge Conlon held that defendants had not waived the arbitration clause in the parties' Agreement and stayed the case pending the results of the arbitration.  Plaintiff argued that defendants waived the arbitration clause by their delay in seeking arbitration.  Defendants countered that they had not delayed because when their counsel sought copies of the agreement on several occasions, defendants' employee sent copies of the front pages of the agreement, but omitted the back pages which included a set of preprinted terms and conditions including the arbitration clause at issue.  Defendants' counsel received the full agreement several months after the case was filed and sought arbitration and a stay of this proceeding within two weeks of reading the full agreement.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 2006 WL 3541933 (N.D. Ill. Dec. 5, 2006) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies ("TT") motion to compel additional deposition testimony from third party Brucato, the founder of TT's competitor Catus Technologies.  TT subpoenaed Brucato's deposition relating to Catus's work with defendant eSpeed or TT's software.  Brucato appeared for the deposition and answered questions on those topics, but refused to answer questions regarding work for clients other than eSpeed.  TT argued that evidence of Catus's work with other third party clients was relevant to show proof of widespread copying, which is an indicia of non-obviousness.  The Court acknowledged that, but balanced the relevance against TT's need for the evidence and the hardship to Catus.  The Court found that TT's request was only based upon TT's suspicions or speculations as opposed to any hard facts and that the connection, therefore, was not strong enough to warrant the risk third party Catus faced in providing such information to its competitor TT.

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Best Vacuum, Inc. v. Ian Design, Inc., No. 04 C 2249, 2006 WL 3486879 (N.D. Ill. Nov. 29, 2006) (Hort, J.).

In this trademark and Lanham Act unfair competition suit, Judge Hort granted summary judgment for defendant and dismissed the case.  Plaintiff had operated under the name "Best Vacuum" since 1983 and operated a www.bestvacuum.com website since 1996.  In 2003, defendant began operating a www.bestvacuumcleaners.com website, but when plaintiff complained, defendant changed its website to www.bestchoicevacuums.com.  After defendant refused to take down its second site, plaintiff sued.  Plaintiff's trademark infringement claim was dismissed earlier in the case because plaintiff never registered its "Best Vacuum" mark.  The case was before the Court on cross summary judgment motions.

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JVI, Inc. v. Universal Holdings, Inc., __ F.Supp.2d __ (N.D. Ill. Nov. 29, 2006) (Leinenweber, J.).

In this opinion Judge Leinenweber construed the claims of plaintiff's U.S. Patent No. 6,185,897 which covers an improved flange connector for precast concrete double tee members.  Of particular interest, the Court considered whether a specification including a single preferred embodiment limited the scope of the claims and discussed the claim differentiation doctrine.

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There has been lots of blog chatter over the last few days about various blogs taking the week between Christmas and New Years off.  But do not worry, I will not do that to you - plus I am almost fully caught up with case summaries and want to keep current for you.  So, you can continue visiting the Blog all next week, while some blogs go silent, for all of the Northern District IP news you can handle.

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U.S. Patent No. 5,855,705 is to an artificial Christmas tree with attached, or automatically wound, lights.  While the drawings depict a Charlie Brown-type tree, I am sure that was just for ease of drafting and clarity of the specification.

Merry Christmas.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3359349 (N.D. Ill. Nov. 20, 2006) (St. Eve, J.).

In this post-trial opinion, Judge St. Eve denies plaintiff's motion for attorney's fees, enhances the jury's damages award by 50% pursuant to 35 USC Section 284 and awards plaintiff prejudgment interest compounded monthly.  Despite the jury's willfulness finding the Court held that attorney's fees were not warranted because defendant's advocacy was consistently professional and the substantive positions it argued were largely meritorious.

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Wunderlich-Malec Sys., Inc. v. Eisenmann Corp., No. 05 C 04343, 2006 WL 3370700 (N.D. Ill. Nov. 17, 2006) (Ashman, Mag. J.).

Magistrate Judge Ashman granted plaintiff's motion to compel certain documents and held that defendant waived privilege as to certain documents it produced despite claiming attorney-client and work product privileges.  Defendant produced for inspection twenty two binders of documents, including four binders which defendant's counsel had internally identified as privileged and did not intend to produce for inspection.  About six weeks after the inspection, defendant realized that it had provided certain of these documents to plaintiff and sought the return of seventeen pages from the four binders.  Then, over the next several weeks, defendant sought the return of the remainder of the produced documents from the four binders claiming that they contained privileged information or trade secrets unrelated to the case.  Plaintiff retained the bulk of the documents arguing that any privilege that existed had been waived by disclosure of the documents.  Defendant argued that the documents were disclosed inadvertently and should be returned.

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U.S Patent No. 6,491,516 covers a Hanukkah candelabrum which sings/plays traditional Hanukkah songs and interacts electronically with a paired  dreidel to activate lights or play songs when the dreidel is spun.

Happy Hanukkah.

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Avery Dennison Corp. v. Naimo, No. 06 C 3390, 2006 WL 3343762 (N.D. Ill. Nov. 16, 2006) (Grady, J.).

In this trade secret dispute, Judge Grady dismissed plaintiff's breach of contract claim alleging defendant's breach of the parties' Employment Agreement because the Separation Agreement the parties subsequently signed included an integration clause.  When defendant began his employment with plaintiff he signed an Employment Agreement which required that, among other things, defendant not compete with plaintiff for twelve months after his employment ended and that defendant never use plaintiff's proprietary information for the benefit of anyone besides plaintiff.  When defendant later stopped working for plaintiff, the parties signed a Separation Agreement with a similar proprietary information clause and a strong integration clause, but apparently without a similar non-compete clause. 

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Copyscape has just launched a service which it claims will scour the web to locate potential copiers of your site's content.  Combine that evidence (if copying is found) with proper registration and we just might see an increase in copyright infringement suits.  Of course, the service is not perfect.  I tried it for the Chicago IP Litigation Blog and it returned one result, suggesting that Dennis Crouch at Patently-O had copied me.  In fact, Dennis's post was highlighting a new blog.  Two days after Dennis's post, I also highlighted the new blog (here) and mentioned Dennis.  So, if one of us was copying the other, it was me copying Dennis.  Of course, I did not plagiarize Dennis, we each did short posts identifying a new blog using similar language and it was exactly the kind of cross-posting blogs thrive on.

Try it for your sites and let me know how it works for you.

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Microthin.com, Inc. v. Siliconezone USA, LLC, No. 06 C 1522, 2006 WL 3302825 (N.D. Ill. Nov. 14, 2006) (Kendall, J.).

Judge Kendall held that plaintiff's patent claim did not give the Court supplemental jurisdiction over defendants' assault and battery, trespass, breach of contract and tortious interference counterclaims, even though the counterclaims were arguably related to plaintiff's patent infringement allegations.  The Court did, however, have diversity jurisdiction over the counterclaims.  After concluding it had jurisdiction, the Court dismissed the assault and battery counterclaims because there is no tort of assault against a corporation in Illinois.  The Court also dismissed the breach of contract claim, because plaintiff/counter-defendant was neither a party to the contract, nor an intended beneficiary. 

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The Northern District Clerk's Office sent a notice this morning that it is installing the new version 3.0 of its e-filing software this evening.  As a result, e-filing will be unavailable from 5:00 PM until at least 9:00 PM tonight, December 15.  So, you better get those Friday filings in early.  Also, the Clerk's office warned that the new software does not work with Netscape Navigator 4.7x, but it does work correctly with the following browsers:  Netscape 7.x, Internet Explorer 6.0 and Firefox 1.5.

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PSN Illinois, LLC v. Ivoclar Vivadent, Inc., No. 04 C 7232, 2006 WL 3523760 (N.D. Ill. Dec. 7, 2006) (Kendall, J.).

Judge Kendall granted defendant summary judgment of noninfringement, both literal and doctrine of equivalents.  Plaintiff alleged that Ivoclar's Empress veneer technique for making porcelain tooth veneers infringed plaintiff's patent.  The patent claimed a method for making porcelain veneers consisting of:  1) taking an impression of a tooth; 2) forming a "statue" of the tooth from the impression; 3) applying a "porcelain powder" to the statue to build a veneer restoration; 4) firing the veneer restoration on the statue; and 5) eroding the statue from the veneer restoration leaving a restoration "ready for mounting."  The Court construed each of the three terms in quotations and then held that no reasonable jury could find that defendant's Empress method produced a "ready for mounting" veneer.

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Google's continuing expansion has led it into the patent world.  Google is offering a new service called Google Patents.  It is a very powerful tool.  You can search for patents using the standard Google interface or you can do an advanced search which allows you to search by inventor, assignee, filing date, issue date or classification.  But the real power of Google Patents is the front page of each patent -- you can see an example here.  The page gives you all of the information from the front page of the patent (including links to the cited art), plus thumbnails of each drawing page and the text of the claims.  Very impressive.  If Google is taking over the world, at least they are doing a good job of it.

Thanks to Kevin O'Keefe at Lexblog and Matt Gulde at the Law Offices of Mark L. Rotert for pointing out Google Patents.

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Civix-DDI, LLC v. National Assoc. of Realtors, No. 05 C 6869, 2006 WL 3210504 (N.D. Ill. Nov. 6, 2006) (St. Eve, J.).

Judge St. Eve denied defendant Yahoo! Inc.'s ("Yahoo") summary judgment motion which argued that plaintiff Civix-DDI's ("Civix") patent infringement claims were barred by Civix's covenant not to sue in its settlement agreement (the "Settlement Agreement") with third party Navteq, a provider of relevant navigation data to Yahoo.  The Court held that Yahoo was a third party beneficiary of the Settlement Agreement because Yahoo purchased the data at issue from Navteq and that the Settlement Agreement protected such third parties from suit.  But the Court found an issue of material fact as to whether each of Yahoo's accused activities "relate in any way" to the Navteq technology and information, as required by the covenant not to sue. 

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The Chicago IP boutique McDonnell Boehnen Hulbert & Berghoff (former home of Dennis Crouch and Patently-O) has generated another patent blog:  Patent Docs.  Patent Docs is focused on the biotech/pharma arts written by a group of attorneys who are all PhDs (hence the blog's name).  Welcome to the conversation Docs.  We are glad to have you.

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QSRSoft, Inc. v. Restaurant Tech., Inc., No. 06 C 2734, 2006 WL 3196928 (N.D. Ill. Nov. 2, 2006) (Der-Yeghiayan, J.).

In this trade secret and copyright dispute, Judge Der-Yeghiayan granted the individual defendants' motion to dismiss plaintiff's conversion claim because it was preempted by plaintiff's Illinois Trade Secrets Act claim.  The Court, however, denied the remainder of the motion.  The remainder of the challenged the sufficiency of the pleadings generally, as well as each count specifically.  The individual defendants argued that each of the counts was not sufficiently plead because plaintiff failed to specifically identify each defendant by name, instead they were collectively referred to in the allegations as "defendants."  The Court held that the general references to the "defendants" were more than sufficient to put defendants on notice of the alleged acts.

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Jay Kesan  and Gwendolyn Ball  of the University of Illinois  Law School recently published a very interesting article in which they detail their empirical analysis of patent litigations.*  For the study they tracked 3,700 patent litigations beginning as early as 1995.  Among other things, they found that 80% of patent litigations settle and 95% of patent litigations are resolved prior to a full trial on the merits.  These should not be shocking results to patent litigators, but what may be more surprising is the results of their analysis of the cost of patent litigations.

* Thanks to the 271 Patent Blog for identifying the article.

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Judges Bucklo, Coar, Gettleman, Kennelly and Lefkow are instituting a joint trial call in 2007 (the N.D. Ill.'s statement about it is here).  Each judge is contributing cases to the call, apparently at the judge's discretion.  The cases in the call will be tried in order by one of the five judges, although not necessarily the judge originally assigned the case.  Each trial is expected to last no longer than five days and the attorneys and parties for a case on the call are expected to be ready for trial, including producing witnesses, on 48 hours notice.  I suspect that the five day trial limit will remove the typical patent case, although plenty of trade secret, trademark and copyright cases could end up on the joint call.  The judges on the call also intend to use suggestions from the Seventh Circuit Bar Association Jury Project Commission to speed the trials (more on the Commission's recommendations here).

This practice will make the Northern District, at least for some cases assigned to the participating judges, more like the Eastern District of Virginia, which randomly assigns judges to each new motion or trial throughout a proceeding.  It may also make it harder to delay a trial, turning up the heat on pre-voir dire settlement negotiations.

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Here is a patent philosophy issue to mull over:

Are patents worthless to startups?  Guy Kawasaki (marketing guru and the author of the How to Change the World Blog) says they are here.  He suggests that, with the exceptions of biotech, chip design and medical devices, startups generally cannot afford the time or money necessary to litigate, so "the most valuable outcomes of a patent are often impressing your parents and filling up space in your MySpace profile."  Not surprisingly, Guy's post resulted in some very strong negative responses from both patent prosecutors and litigators.  Guy generously posted this well articulated response which identifies that patents have both litigation and non-litigation benefits that all companies should consider, whether startups or well-established Fortune 100s.

Thanks to Rethink(IP): J. Matthew Buchanan, Douglas J. Sorocco, and Stephen M. Nipper for defending the value of patents.

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The Northern District of Illinois has recently established a Settlement Assistance Program for Pro Se Litigants.  Under the program, the presiding judge will appoint a volunteer attorney from member law firms of the Chicago Lawyers’ Committee for Civil Rights Under Law to represent pro se litigants solely for the purposes of a settlement conference and, if the dispute is resolved, drafting a settlement agreement and a motion to dismiss the case.  The Northern District has more information about the program here.  You can also see the Limited Appointment form here.

I doubt there will be many pro se patent litigants in the program, but it is still a good way for young litigators to get some court time and do some pro bono work all at the same time.

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Judge Nolan compelled defendant to provide complete answers, citing specific individuals, documents and things to plaintiff's fact-based contention interrogatories.  Plaintiff served defendant with contention interrogatory seeking to learn each basis for each of defendant's defenses and counterclaims relating to plaintiff's "ULTRA-LITE" and "Monster Tachometer" marks.  Defendant initially provided broad, non-committal answers and eventually supplemented including general statements directing plaintiff to defendant's document production without specifying any Bates ranges.

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Following up on my recent post about Judge St. Eve's post-eBay permanent injunction opinion (the first in the Northern District), Michael Smith who writes the E.D. Texas Federal Court Blog has written a very interesting article analyzing the first nine district court permanent injunction decisions decided using the eBay standard.

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Trading Techs. Int'l, Inc. v. eSpeed, Inc., No. 04 C 5312, 2006 WL 3147697 (N.D. Ill. Oct. 31, 2006). (Moran, Senior J.)

Judge Moran issued this opinion construing the claims of the patents-in-suit after a Markman hearing.  There are two items of special note.  First, the opinion provides a thorough recitation of the claim construction standards post-Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).  Second, the Court provides further proof that claim construction is an organic process which can change througout a case, with this succinct quote:

Although our preliminary injunction construction aligned with plaintiff's view, such construction was, simply put, preliminary.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3446144 (N.D. Ill. Nov. 29, 2006) (St. Eve, J.).*

In this opinion, Judge St. Eve issued what I believe is the first permanent injunction in the Northern District pursuant to the "new" Supreme Court standard set forth in eBay Inc. v. MercExchange, L.L.C., __ U.S. __, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).  The Court found irreparable harm, satisfying the first prong of the injunction standard, based on the possibility of continuing sales (although defendant stated that it had stopped producing and selling the infringing product), harm to plaintiff's reputation as an innovator in the relevant market and plaintiff's loss of market share. 

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In the last few weeks intellectual property law has gotten lots of press coverage.  Friday's Chicago Tribune had a good article on the often misunderstood boundaries of copyright law generally and the Digital Millennium Copyright Act specifically.  It even touches on the broadly misunderstood Fair Use doctrine. 

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3069544 (N.D. Ill. Oct. 24, 2006) (St. Eve, J.).

After a jury found that defendant willfully infringed certain claims of the patents-in-suit, Judge St. Eve conducted a bench trial to determine whether the patents were unenforceable based upon prosecution counsel’s alleged inequitable conduct in failing to disclose known prior art to the PTO during examination.* A finding of inequitable conduct based upon failure to disclose material information requires that the information was material to patentability and that the failure to disclose was done with intent to mislead the PTO. The Court denied the inequitable conduct claim focusing on the second prong of the inequitable conduct test – intent.  In short, prosecution counsel’s failure to disclose the alleged prior art (the “Smith patents”) to the PTO was not inequitable conduct because prosecution counsel believed the invention under examination (the “Dome patents”) was prior art to the Smith patents. Whether or not the Dome patents were in fact prior art to the Smith patents was not relevant to the question of prosecution counsel’s intent.

* Judge St. Eve previously denied plaintiff’s motion for summary judgment on inequitable conduct discussed in this post, along with a longer description of the facts of the case.

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I do not want the Blog to get off track, so this will be my last post for awhile on the subject, but here is a roundup of blogs discussing yesterday's argument:

Chicago's own 271 Patent Blog

SCOTUS Blog

Patently-O

Patent Baristas

I will be back at the Blog's traditional subjects tomorrow with Northern District case updates.

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The Northern District of California is considering revising its patent rules (enacted in January 2001).  To start its review, the Northern District of California is seeking public comments.  Comments must be sent by December 15, 2006 to patentlocalrulescommittee@gmail.com.  The notice is here.   The Northern District of California Local Rules are not directly relevant to Northern District of Illinois cases, but because the Northern District of California's patent rules serve as a pattern for courts across the country, including in the Northern District of Illinois, any changes to the Northern District of California's rules could effect courts in the Northern District of Illinois and across the country.

Thanks to Dennis Crouch at Patently-O for identifying the request for comments and for an interesting post, followed interesting comments, on proposed changes.

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Following up on my post yesterday, The Chicago Daily Law Bulletin has published this story regarding today's Supreme Court argument in KSR International Co. v. Teleflex Inc.  The argument centered around whether the Federal Circuit's obviousness test should be revised (more on the KSR case from Patently-O here and here).  Of course, Justices often play devil's advocate in oral arguments, so it is dangerous to presume outcomes based upon oral argument, but it looks like it was good legal theater. 

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Although it is not about the Northern District, there is a great article on the front page of today's Wall Street Journal about the Supreme Court's increasing interest in patent law.  The article is here (subscription required) or you can read about it on the Journal's Law Blog here.  The Journal's Law Blog also has an interesting post here on McDonald's patent application covering methods for making sandwiches.

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Huthwaite, Inc. v. Randstad General Partner (US), L.L.C., No. 06 C 1548, 2006 WL 3065470 (N.D. Ill. Oct. 24, 2006) (Lefkow, J.).

Plaintiff, a corporate sales training services provider, contacted defendant, an employment services provider, to discuss improving defendant's sales training offerings.  Plaintiff told defendant that it knew defendant's current training materials incorporated techniques from plaintiff's copyrighted books -- "SPIN Selling" and "Major Account Sales Strategy" -- but assured defendant that it would not file a copyright infringement suit.  As discussions between the parties progressed, plaintiff asked to review defendant's training materials and promised defendant that it would not bring a copyright suit if the materials contained plaintiff's copyrighted information.   Defendant ultimately gave plaintiff its training materials, but only after signing a nondisclosure agreement requiring that the documents not be used for, among other things, filing a copyright infringement suit.  Two days after receiving defendant's documents, plaintiff filed a copyright infringement suit.  In response, defendant filed fraud and breach of contract counterclaims alleging that plaintiff was engaged in a broad scheme to leverage its copyrights be gaining the trust of potential infringers through marketing discussions and that the suit breached the nondisclosure agreement between the parties.

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Conditioned Ocular Enhancement, Inc. v. Bonaventura, 05 C 3153, 2006 WL 2982140 (N.D. Ill. Oct. 17, 2006) (Zagel, J.).

Judge Zagel held that Illinois's absolute litigation privilege, which protects communications leading up to a litigation, did not protect a patentholder's cease and desist letters because, in addition to federal preemption issues, the Illinois privilege is limited to defamation and false light claims.  Plaintiff alleged that defendant was practicing its patented vision training services.  In addition to filing suit, plaintiff also sent certain of defendant's customers cease and desist letters warning that defendant was unlawfully using plaintiff's patented vision training methods.  Defendant filed several Lanham Act and tortious interference counterclaims alleging that plaintiff's cease and desist letters were sent in bad faith.

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I have much to be thankful for this year, including but by no means limited to all of you who take the time to read the Blog.  So, like the Northern District, I will be taking the remainder of the week off to spend time with family and friends.  Have a happy Thanksgiving.  And, enjoy U.S. Patent No. 7,102,301 (by Chicago-area inventors) which teaches holiday lights with user-selectable lights.  Just think, lights that stay up all year round.  Anyone who has spent a November, December or January evening in the Midwest putting up or taking down lights, can appreciate this invention.

I will see you on Monday.

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Although the amendment will still be open for public comment, effective December 1st the Northern District has amended Local Rule 3.2.  In its current form, Local Rule 3.2 requires that any nongovernmental corporate party file a statement identifying its parent corporations and any publicly held company that owns 10% or more of the party.  The Northern District has revised the rule expanding the categories of parties that must file a notification and the scope of the notification.  You can read a redlined version of the amended Local Rule 3.2 here.

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Because the December 1st e-discovery Federal Rules changes are approaching, I will continue to provide links to resources for understanding and preparing for the changes.  The Legal Talk Network recently published this Coast to Coast podcast discussing the changes and their impact upon corporations.  It is worth listening to and could be a valuable resource for corporate litigants as well.

Thanks to the Illnois Trial Practice Weblog for identifying this podcast.

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Autotech Techs. Ltd. Partnership v. Automationdirect.com, Inc. 237 F.RD. 405 (N.D. Ill. 2006). (Cole, Mag. J.).

In this impressively detailed opinion, Magistrate Judge Cole grants defendant's motion for a protective order limiting plaintiff's in-house counsel's access to sensitive customer information and communications.  The parties faced a common problem, they had agreed that customer information, including customer identities and communications, would be limited to attorneys' eyes only, but could not agree as to whether plaintiff's in-house counsel could access the information.  Plaintiff argued that its in-house counsel played a lead role in the case and, therefore, required access to the information.  Defendant argued that in-house counsel were corporate decision makers, in addition to counselors, and would not be able to separate the knowledge of defendant's customers they would be exposed to when performing business-related functions.

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Cummins-Allison Corp. v. Glory Ltd., __ F.Supp.2d __, 2006 WL 2931999 (N.D. Ill. Oct. 13, 2006) (Kendall, J.).

Judge Kendall performed a very thorough claim construction in this opinion, but what is most interesting about it is the procedural history.  The Court (with another judge presiding) initially construed the claims at issue in March 2005, without holding a Markman hearing.  Plaintiff then sought reconsideration regarding one of the patents at issue and defendant sought reconsideration regarding the other.  The Court ultimately granted both motions and held a Markman hearing, which is the basis of this opinion.   

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Nordstrom Consulting, Inc. v. M&S Techs., Inc., No. 06 C 3234, 2006 WL 2931677 (N.D. Ill. Oct. 12, 2006) (Darrah, J.).

Judge Darrah held that plaintiff plead sufficient allegations to meet the pleading requirements to include the individual defendants, Marino and Butler who were both employees of the corporate defendant, M&S Technologies ("M&S").  Plaintiff alleged that Marino and Bulter, acting on M&S's behalf, broke into plaintiff's computer, bypassed its digital security system and then downloaded, copied and distributed plaintiff's copyrighted software.  Based on these allegations plaintiff alleged copyright infringement, violation of the Digital Millennium Copyright Act, unfair competition and other common law claims.

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Abbott Labs. v. Apotex, Inc., __ F.Supp.2d __, 2006 WL 2884317 (N.D. Ill. Oct. 6, 2006) (Posner, C.J.).

Judge Posner, sitting on the Northern District by designation, extended the injunction he issued after a bench trial, No. 97 C 7515 (N.D. Ill. Mar. 31, 2004), aff'd by 122 Fed. Appx. 511 (Fed. Cir. 2005), to include Nu-Pharm, defendant Apotex's "stalking horse" from making, using or sell the patented drug, divalproex sodium.  In 2004, the Court enjoined Apotex from making, using or selling the patented drug.  At some point thereafter, Apotex slightly changed its manufacturing process and had an entity it formerly owned, and apparently still controlled, file an Abbreviated New Drug Application ("ANDA") with the Food and Drug Administration ("FDA").  Neither Apotex nor Nu-Pharm tested the drug to determine whether the altered manufacturing process resulted in a drug with sufficiently different characteristics to avoid plaintiff's claims.

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Last week the Federal Circuit Clerk published two top ten lists, The Top Ten Reasons Why Briefs Are Rejected and The Top Ten Reasons Why Motions Are Rejected.  They are not as entertaining as a David Letterman Top Ten List, but they are very useful for Federal Circuit practitioners.

I would love to see the Northern District Clerk's Office publish lists like these, but until then what rules violations have you seen motions or briefs for?

Thanks to the I/P Updates Blog for identifying these lists.

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Gail Green Licensing & Design Ltd. v. Accord, Inc., No. 05 C 5303, 2006 WL 2873202 (N.D. Ill. Oct. 5, 2006) (St. Eve, J.).

Judge St. Eve dismissed plaintiffs's Lanham Act false advertising claim, but refused to dismiss plaintiffs's breach of contract claim, among others.  Both claims are based upon defendants's receipt of plaintiffs's copyrighted designs for pet clothing and accessories pursuant to a Non-Disclosure and Confidentiality Agreement (the "NDA") and defendants's subsequent alleged sale of  goods based upon plaintiffs's copyrighted designs.

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Jim Amend, a founder of the Kirkland & Ellis intellectual property group and longtime Chicagoan, was recently appointed the Federal Circuit's Chief Circuit Mediator.  Jim will take charge of the Federal Circuit mediation program in January 2007, shortly after it was changed from a voluntary to a mandatory program.

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In celebration of Halloween, I am holding off on posts about Northern District cases and, instead, I am bringing you a Halloween-themed patent.  This is the first page of U.S. Patent No. 6,419,541 which protects a "device for protecting treats" which can be extended to the treat-giver to receive a treat and an inflatable "scary creature" such as a snake or a mouse to give the treat-giver a trick.  Happy Halloween.

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The new electronic discovery amendments to the Federal Rules of Civil Procedure become effective in one month, on December 1st.  In preparation for practicing under the amended rules, this Law Practice Today page provides a wealth of links to sites discussing the amendments and electronic discovery generally (thanks to the Illinois Trial Practice Weblog for identifying this excellent resource).  Also, the federal judiciary posts a list of all Federal Rules being amended December 1st here.

Additionally, in April the Northern District amended several of its Local Rules.  You can see a list of the amended rules here.  Amended Local Rule 5.2, among other things, states that where electronic and paper copies of a document are filed, the electronic version controls.  Amended Local Rule 5.2 also requires that the judge receive a courtesy copy of all electronically filed documents, unless the judge requires otherwise.

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Litetronics Int'l., Inc. v. Technical Consumer Prods., Inc., No. 03 C 5733, 2006 WL 2850514 (N.D. Ill. Sept. 28, 2006) (Ashman, Mag. J.).

Defendant sought sanctions pursuant to Fed. R. Civ. P. 37 arguing spoliation of evidence because plaintiff Coollite sold a factory in China which included various documents defendant had requested during discovery.  Judge Ashman denied the motion for sanctions because defendant had not shown that the documents had been destroyed.  The issue was who controlled the documents, but neither plaintiff nor defendants had requested the documents from the plant's new owner.  Additionally, defendant had not investigated whether the Hague Convention might allow for discovery of the documents.  This leads to an important practice tip:  make sure to ask for third party documents, or at least start the process of asking for them, before seeking help from a court to get the documents.

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Litetronics Int'l., Inc. v. Technical Consumer Prods., Inc., No. 03 C 5733, 2006 WL 2850513 (N.D. Ill. Sept. 28, 2006) (Ashman, Mag. J.).

Magistrate Judge Ashman denied defendant's motion to compel plaintiffs' production of two inventors of a patent-in-suit for deposition, where the inventors were not, and had never been, employed by plaintiffs.  Defendants argued that the assignment agreement gave plaintiff control over the inventors and obligated plaintiff to produce the inventors for deposition. 

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The Chicago-Kent College of Law is hosting two seminars in the upcoming weeks that IP practitioners will find very useful.  On this Thursday, October 26, from 9:00 AM - 12:00 PM, the school is hosting a seminar entitled, "Copyright at the World Intellectual Property Organization: An Update."
At the seminar key World Intellectual Property Organization officials will update you on pending and emerging international copyright issues, and will address the challenges facing WIPO and international copyright policymakers.  Please note, prior registration is preferred and can be accomplished by email or fax.

On Wednesday, November 1st, from 3:00 - 4:00 PM, the Chicago-Kent College of Law is hosting its third annual Federal Circuit Roundtable.  The Roundtable, composed of former Federal Circuit law clerks, will address the topic, "Not So Obvious: Patent Law, the Supreme Court, and KSR International." The scheduled participants are Meredith Martin Addy, Brinks Hofer Gilson & Lione, Leonard D. Conapinski, McAndrews, Held & Malloy, Ltd., Sasha D. Mayergoyz, Latham & Watkins LLP, and Michael R. Weiner, Marshall, Gerstein & Borun LLP.  The Roundtable will be moderated by Chicago-Kent Professor Timothy R. Holbrook.  The Roundtable is free and registration is not required.  Because my wife, Laura L. Donoghue, former law clerk for the Hon. Timothy B. Dyk, has spoken at prior Roundtables, I can vouch for this as an excellent event that is worth a few hours out of your Wednesday afternoon.

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DeVore Family Partnership LLP v. McDougal Littell, No. 06 C 3484, 2006 WL 2861116 (N.D. Ill. Sept. 26, 2006) (Conlon, J.).

Judge Conlon refused to dismiss or strike plaintiff's claim for defendants' profits from sales of a textbook which allegedly included plaintiff's copyrighted photograph.  Plaintiff alleged that it licensed defendants to include plaintiff's photograph of the Himalaya Mountains in a run of no more than 40,000 textbooks, but that defendants made almost 1.5 million copies of the book.  Plaintiff sought, among other things, defendants' profits from the allegedly infringing textbooks.

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Cobra Capital LLC v. LaSalle Bank Corp., __ F. Supp.2d __, 2006 WL 2720626 (N.D. Ill. Sept. 19, 2006) (Bucklo, J.)

In this trademark infringement dispute, Judge Bucklo denied defendants' summary judgment motion because there were material issues of fact regarding, among other things, the protectability of the marks at issue ("Making Impossible Possible" and "Make the Impossible Possible").  Defendants argued that the marks were descriptive of the banking and lease financing industry, and that the marks were "merely common self-laudatory advertising."  The Court, however, disagreed, stating that the latter argument  "borders on frivolous" and noting that defendants' argument was harmed by their corporate parent's pending application for the similar mark "Making More Possible."

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Big Dipper, Inc. v. Wells' Dairy, Inc., No. 05 C 5395, 2006 WL 2711843 (N.D. Ill. Sept. 20, 2006) (Manning, J.).

In this trademark action, Judge Manning denied defendant's Rule 11 motion without considering it on the merits because defendant failed to comply with Rule 11's "safe harbor period."  Rule 11(c) requires that before filing a Rule 11 motion, the party serve the motion on its opponent and give the opponent at least 21 days to correct the issues raised in the motion.  Defendant's Rule 11 motion was also defective because defendant combined its Rule 11 motion with its response to plaintiff's motion to strike. As the Court noted, a Rule 11 motion must be filed as a separate, standalone motion. 

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Connell v. KLN Steel Prods. Co., No. 04 C 194, 2006 WL 2661011 (N.D. Ill. Sept. 13, 2006) (Kendall, J.)

Judge Kendall stayed this patent infringement suit and transferred the case to the Court of Federal Claims, for the Court of Federal Claims to determine whether the Navy consented to defendant's alleged infringement pursuant to 28 U.S.C. Section 1498(a).  Section 1498 provides that when the use or sale of a patented product is both for the government and with the government's "authorization and consent," a patent owner's sole infringement remedy is against the United States in the Court of Federal Claims.

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Crafting proposed jury instructions is one of the first steps when preparing for trial.  And one of the first steps in drafting those instructions is looking for pattern or sample instructions that the court has previously used or endorsed.  In order to help speed that process, I am adding a new Blog feature.  I have gathered the jury instructions that each of the Northern District judges identify on their respective  web pages as either form or model instructions.  Most have general civil instructions and a few have specific sample instructions for various types of IP suits.

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The new blog Trial Lawyer Resource Center looks like it will be a great resource and it represents many of the best aspects of legal blogging -- experts in a field gathering to share their insights and to engage readers in conversation.  It has no specific relation to IP, but appears to be worth reading on general litigation and trial issues.

For more commentary on the Trial Lawyer Resource Center, check out Legal Blog Watch and Evan Schaeffer at his sites Legal Underground and Illinois Trial Practice Weblog.

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2006 WL 2632074 (N.D. Ill. Sept. 11, 2006) (Moran, J.)

In this claim construction opinion, Judge Moran made an interesting holding regarding the use of claim construction to resolve literal infringement issues. Defendant argued that plaintiff’s proposed constructions of “binary code” and “trinary code generator” were improperly driven by plaintiff’s infringement case. The Court noted that this was an infringement argument. The Court, therefore, would not address defendant’s argument in its claim construction opinion. This does not change my advice that you should explain why you are arguing for subtle variations of a construction. Rather, Judge Moran’s opinion illustrates that, after explaining the purpose of your proposed construction, you should be sure to ground your argument in the intrinsic and extrinsic evidence.

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Kennelsource, Inc. v. Barking Hound Village, LLC, No. 05 C 1788, 2006 WL 2578975 (N.D. Ill. Sept. 5, 2006) (Grady, J.)

Judge Grady dismissed plaintiff's complaint with prejudice for lack of personal jurisdiction.  Plaintiff alleged that defendants, several Georgia and Texas entities and individuals, worked together or at each other's direction to steal plaintiff's pet-care business management software and to infringe plaintiff's copyrights for the software.

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Mader v. Motorola Inc., No. 92 C 8089, 1999 WL 519020 (N.D. Ill. Jul. 14, 1999) (Manning, J.).

This opinion intersects with IP only to the extent that you consider the opinion a derivative work based on its use of Beatles and Pink Floyd song titles and quotes.  But it does highlight a fun area of legal writing -- the use of song lyrics in judicial opinions.  A recent law review article,  [Insert Song Lyrics Here]: The Uses and Misuses of Popular Music Lyrics in Legal Writing, by Professor Alex Long analyzes the use of music in legal writing (Bob Dylan is the most cited artist in judicial opinions, followed by Paul Simon and Bruce Springsteen). (Note: If my wife were a federal district judge, you might see a sharp increase in judicial citations to Judas Priest and KISS. Thankfully – at least for the sake of good musical taste – she is not, although she would otherwise make a great judge.)

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Trading Techs. Int'l., Inc. v. eSpeed, No. 04 C 5312, 4120 & 5164, 2006 WL 2506293 (N.D. Ill. Jul. 18, 2006) (Moran, J.).

Judge Moran requested additional briefing on remaining discovery disputes and denied defendant's motion to compel additional discovery regarding plaintiff's patent prosecution after both plaintiff and its prosecution counsel represented that they had produced all non-privileged documents.  The opinion itself is somewhat generic, except that Judge Moran made some reasoned comments regarding the discovery process that IP litigators should read and remember:

Discovery is a means for determining the truth, not an end in itself.  Indeed, in criminal cases where liberty, not just money, is at stake, discovery is much circumscribed.  Further, the discovery process depends upon the good faith of the parties and their counsel. . . .  More often, reasonably complete discovery requires some prodding--the party is loath to expend the effort or seeks to use delays as a bargaining chip in getting discovery from others, or is anxious about what full discovery might disclose.  Generally, however, we are convinced that litigants, represented by ethical counsel, recognize their obligations and act accordingly.  Therefore, courts customarily rely upon the representations of counsel that the party has complied. 

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Underwriters Labs. Inc. v. Hydrofilm L.P., No. 05 C 5509, 2006 WL 2494748 (N.D. Ill. Aug. 23, 2006) (Guzman, J.).

Although this opinion deals solely with non-IP issues, it is interesting because it addresses how corporate websites fit into a personal jurisdiction analysis.  Judge Guzman held that while the Court had subject matter jurisdiction over plaintiff's declaratory judgment claims (based upon defendants's voluntary withdrawal without prejudice of a related suit against plaintiff), the Court lacked personal jurisdiction over the defendants. 

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Konvin Assocs. V. Extech/Exterior Techs., No. 04 C 2544, 2006 WL 2460589 (N.D. Ill. Aug. 21, 2006) (Kennelly, J.).

In this opinion, Judge Kennelly ruled on opposing summary judgment motions arguing invalidity and infringement issues.  As an initial matter, the Court refused to exclude opposing expert affidavits despite the fact that neither expert was disclosed as required by Rule 26(a)(2)(A).  The Court held that Rule 37(c) does not allow striking evidence based upon Rule 26(a) violations where the violation is harmless.  Because neither party argued that they were harmed by the failure to disclose the experts, the Court refused to exclude the expert affidavits.  The Court went on to deal with numerous invalidity and infringement issues, but I will focus on one more expert testimony issue.

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Ropak Corp. v. Plastican, Inc., No. 04 C 5422, 2006 WL 2385297 (N.D. Ill. Aug. 15, 2006) (Valdez, Mag. J.).

Magistrate Judge Valdez’s opinion ruled on plaintiff’s Rule 37 motion for sanctions based upon defendant’s repeated refusal to fully meet its discovery obligations in this patent infringement dispute. The opinion demonstrates an important point: a party must comply with a court’s discovery orders (even orders issued by the most reasonable and forgiving court, as here) or suffer the consequences.

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Richmond v. National Inst. of Certified Estate Planners, No. 06 C 1032, 2006 WL 2375454 (N. D. Ill. Aug. 15, 2006) (Manning, J.).

This is a trademark action regarding defendants' use of the term "certified estate planner" ("CEP").  In addition to trademark claims, plaintiff also brought claims for civil conspiracy, conversion and trespass to chattel.  Plaintiff alleged that defendants' use of the CEP mark constituted conversion and trespass to chattel.  Plaintiff also alleged that the individual defendants engaged in civil conspiracy by taking the CEP mark for the benefit of NICEP and for their own individual uses.

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MPC Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2006 WL 2331148 (N.D. Ill. Aug. 10, 2006) (Aspen, J.).

Judge Aspen granted defendants’ Rule 12(b)(6) motion to dismiss plaintiff’s Lanham Act unfair competition claim for failure to meet the Rule 9(b) heightened pleading requirements.  Plaintiff’s bare allegation that the individual defendants made misrepresentations to a single customer did not satisfy Rule 9(b)’s heightened pleading requirements. 

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Kenall Mfg. Co. v. Genlyte Thomas Group LLC, 439 F. Supp.2d 854 (N.D. Ill. July 20, 2006) (Castillo, J.).

Judge Castillo denied opposing infringement and invalidity summary judgment motions in this very detailed and thorough opinion. The opinion is most remarkable for its illustration of two basic, but important, practice tips, which are best understood from the following excerpts:

The only thing that the multitude of summary judgment motions and expert reports filed in this hotly-disputed patent case make clear is that multiple issues of material fact remain to be determined. Instead of moving this case toward a timely resolution, the parties are driving up the costs of litigation with superfluous briefing that has repeatedly failed to abide by this Court’s local rules.

                                                                * * *

This case has been poorly litigated up to this point. By failing to file a 56.1 statement of facts and by failing to respond to Genlyte’s 56.1 statement, Kenall’s attorneys have come dangerously close to losing this case for their client based on nothing but their own ineptitude. On the other side, both Genlyte and Kenall have fanned the flame of excessive and superfluous briefing with arguments for unfeasible claim construction and a litany of expert reports that show nothing but material issues of facts. The parties have now spent tens of thousands of dollars on seven expert reports and extensive briefing of three separate motions for summary judgment to prove to this Court that this case is certainly not appropriate for resolution on summary judgment.

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C/F Int’l., Inc. v. Payne, No. 06 C 1329, 2006 WL 22290992 (N.D. Ill. Aug. 3, 2006) (Kennelly, J.).

Plaintiff filed suit to enforce a copyright infringement and breach of contract judgment against individual defendant Payne, his wife and two companies run by Payne after Payne allegedly transferred both personal and corporate assets to his wife. Judge Kennelly denied defendants’ motions to dismiss and for judgment on the pleadings, and deferred ruling on defendants’ motion to stay based on one defendant’s Chapter 7 bankruptcy proceeding.

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Shanklin Corp. v. American Packaging Mach., Inc., No. 95 C 1617, 2006 WL 2054382 (N.D. Ill. July 18, 2006) (Schenkier, Mag. J.).

In this case, Magistrate Judge Schenkier considered plaintiff’s Amended Bill of Costs after the two defendants were found to have infringed plaintiff’s patents, one defendant willfully.  The Court took pains explaining plaintiff’s math and proof-reading errors in plaintiff’s cost spreadsheet.  Apparently, defendant’s (only one defendant objected to the Bill of Costs) initial objections to the Bill of Costs were largely based upon plaintiff’s failure to explain and support its costs. Both parties would have saved attorneys fees – and the court would have been spared the task of sorting this out – had plaintiff taken the time to explain in detail its costs in the first place.  This opinion also provides a useful explanation of which standard costs are recoverable and which are not.

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Murata Mfg. Co., Ltd. v. Bel Fuse Inc., __ F. Supp.2d __, 2006 WL 2176241 (N.D. Ill. Jul. 28, 2006) (Gottschall, J.).

This detailed claim construction ruling demonstrates several useful practice tips. First:  work with opposing counsel upfront to determine which terms are actually in dispute. The parties’s initial briefing sought construction of nineteen terms, but when the Court required supplemental briefs post-Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the parties limited their briefing to only seven terms. This highlights the value of sitting down with opposing counsel before claim construction to identify the terms that are actually disputed.  Of course, this requires two reasonable parties represented by reasonable counsel, but you are better off at least trying. It is embarrassing to counsel and expensive for the client to learn, upon receiving the opposing brief, that a term that you spent hours, dollars, and valuable pages briefing is not actually in dispute. And of course, it is frustrating for the Court.

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The article Pet Peeves from the Bench by LA Superior Court Judge Victoria Gerrard Chaney is not about intellectual property law, nor is it about the N.D. Ill.  But I include it here to encourage anyone who ever appears in court to read it. Most of the article should be common sense for your average litigator, but apparently many of us need a refresher.  (Thanks to the WSJ Law Blog for identifying this excellent article).

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Abbott Labs. V. Andrx Pharm., Inc., No. 05 C 1490, 2006 WL 2092377 (N.D. Ill. July 25, 2006) (Brown, Mag. J.).

Using nonprivileged documents that are connected to privileged documents, such as fax coversheets or cover emails used to send a privileged report, to question a witness regarding the related privileged documents can waive the privilege.  Applying Seventh Circuit law (the privilege questions at issue are unrelated to substantive patent law, so Federal Circuit law does not apply), the Court held that plaintiff Abbott waived privilege with respect to an entire document where:  1) Abbott produced a fax coversheet from a document over which it had claimed attorney-client and work product privilege; and 2) used that cover sheet in a line of questioning regarding the underlying document, despite Abbott’s decision not to produce the underlying document.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 2088437 (N.D. Ill. July 24, 2006) (St. Eve, J.).

Judge St. Eve denied plaintiff, Black & Decker’s (“B&D”) summary judgment motion on defendant Bosch’s inequitable conduct defense. While prosecuting various applications related to a rugged jobsite radio and charger (the “Smith patents”), B&D became aware of inventor Joseph Domes’s similar applications, which later matured into the patents-in-suit. To avoid a possible interference, B&D licensed Domes’s applications (the “Domes patents”) and ultimately became the exclusive licensee of the two Domes patents.

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Nilssen v. Osram Sylvania, Inc., __ F. Supp.2d __, 2006 WL 1891807, (N.D. Ill. July 5, 2006) (Darrah, J.).

After a six-day inequitable conduct bench trial, Judge Darrah held each of the eleven patents-in-suit unenforceable based upon the pro se plaintiff/inventor’s inequitable conduct before the Patent & Trademark Office (“PTO”). Plaintiff’s inequitable conduct included: submitting misleading affidavits to the PTO; improperly claiming small entity status; falsely claiming priority dates to avoid prior art; failing to disclose related litigation during prosecution; and failing to disclose material prior art to the PTO during prosecution. The Court, however, refused to hold that all patents related to the patents-in-suit were unenforceable under the unclean hands doctrine.

This opinion provides a detailed primer on the many types of misconduct that an applicant may commit before the PTO.  It also serves as a cautionary tale for inventors considering prosecuting patent applications pro se.

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Beck Sys., Inc. v. ManageSoft Corp., No. 05 C 2036, 2006 WL 2037356 (N.D. Ill. July 14, 2006) (Schenkier, Mag. J.).

In considering the scope of attorney-client privilege and work product waivers stemming from defendant ManageSoft’s reliance on an opinion of counsel, Magistrate Judge Schenkier undertook a detailed analysis of the Federal Circuit’s recent In re Echostar Communications, 448 F.3d 1294 (Fed. Cir. 2006), decision and how it changes the Northern District of Illinois’ previous ruling on the issue in Beneficial Franchise Co., Inc. v. Bank One N.A., 205 F.R.D. 212 (N.D. Ill. 2001).

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Trading Techs. Int'l, Inc. v. eSpeed, Inc., No. 04 C 5312, 2006 WL 1994541 (N.D. Ill. July 13, 2006) (Moran, J.).

Ruling on several motions for protective orders, Judge Moran provided insight into the increasing use of multi-tiered confidentiality designations. Before the Court were numerous cases that originated before different judges, all involving Trading Technologies International, Inc. as either Plaintiff or Defendant-Counterclaimant. Before consolidation, differing protective orders were entered in several of the cases. Some of the orders provided for relatively simple two-tier designations ("CONFIDENTIAL" and "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY"), but others provided an additional designation for documents related to patent prosecution which were even more limited than the Highly Confidential documents. Documents with this designation were to be restricted to outside counsel, as well as a limited number of identified inside counsel and business persons who are not directly or substantially involved in the party's patent prosecution activities.

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Zeidler v. A&W Restaurants, Inc., No. 03 C 5063, 2006 WL 1898056 (N.D. Ill. July 6, 2006) (Anderson, J.).

Zeidler is worth mentioning despite the absence of intellectual property issues because it makes a point that many practitioners miss:  disregarding Local Rule 56.1 Statements of Fact or slapping one together at the last minute can have real, potentially case-dispositive consequences. Judge Andersen accepted defendant's statement of facts in its entirety because plaintiff’s statement of facts and his response to defendant’s statement of facts included unsupported statements, made legal arguments, referenced unauthenticated documents, and contradicted other factual evidence.

Plaintiff started at a major disadvantage by choosing to represent himself. But even many experienced members of the N.D. Ill. bar play fast and loose with the Local Rule 56.1 requirements or just ignore them until hours or minutes before filing deadlines. This case is the most recent example that such an approach is foolish and may have case-ending consequences.

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Papa John's Int'l, Inc. v. Rezko, __ F. Supp.2d __, 2006 WL 1843121 (N.D. Ill. June 29, 2006) (Moran, J.).

In partially granting Rezko's Motion to Dismiss, Judge Moran looked at notice pleading standards across a variety of intellectual property and addressed the individual defendant's personal liability for the acts of his company.

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Why Intellectual Property Cases in the Northern District of Illinois?  I expect that many people will ask that question. The answer is simple. The N.D. Ill. is and consistently has been one of the four or five most active patent courts in the country. See, e.g. Kimberly A. Moore, Forum Shopping In Patent Cases: Does Geographic Choice Affect Innovation?, 79 N.C. L. Rev. 889, 903 (2001); Federal Judicial Caseload Statistics, Tables C-2 & C-3. 

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