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

Lettuce Entertain You Enters., Inc. v. Leila Sophie AR, LLC, No. 09 CV 2582, Slip. Op. (N.D. Ill. Feb. 26, 2010), (Lefkow, J.). 

Judge Lefkow granted plaintiff Lettuce Entertain You ("LEYE") a preliminary injunction against defendants' use of the name "Lettuce Mix" in their salad bar restaurant in Lincoln Park. LEYE argued that the defendants' "Lettuce Mix" name would infringe its family of "Lettuce" marks for use in restaurant services.

Likelihood of Success

LEYE's Lettuce marks were not generic as used for restaurant services. While some of LEYE's meals included lettuce, LEYE was not in the business of lettuce sales. And defendant's intent to use its Lettuce Mix name was sufficient for use in commerce.

The Court held there was a likelihood of confusion. Both parties marks focus upon "lettuce" and use it as a pun for "let us." This is true even though LEYE's logo, which includes a waiter opening a covered a dish was different from defendant's logo. Additionally the parties' services in the restaurant industry were similar.

Both parties used the marks in the same area and manner. They directly compete for restaurant customers, and at least one of LEYE'S 70 restaurants is within one mile of Lettuce Mix. To the extent both parties cater to patrons seeking inexpensive, casual meals, the patrons are assumed to use a lesser degree of care, even though some of LEYE's restaurants are more expensive.

LEYE's family of Lettuce markers was strong, and defendants' argument to the contrary was their genericness argument that the Court previously denied.

LEYE, however, did not provide evidence of actual confusion, although actual confusion is not required. And there was no evidence that defendants intended to pass themselves off as affiliated with LEYE. Finally, defendants' was not a fair use because lettuce was not descriptive of their service.

Irreparable Harm

Trademark infringements are presumed to result in irreparable harm. LEYE would, therefore, have been irreparably harmed by any trademark infringement from defendants.

Balancing Harm

Defendants would not suffer significant harm from the injunction given that they had already stopped using the allegedly infringing name. And any loss of defendants' goodwill would be attributable to their own actions.

Public Interest

The public interest would not be harmed by the preliminary injunction. Enforcement of trademarks serves the public good, and LEYE had shown a "substantial" likelihood of confusion.

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Scala's Original Beef & Sausage Co., LLC v. Alvarez d/b/a Michaelangelo Foods, No. 09 C 7353 (N.D. Ill. Dec. 22, 2009 (Dow, J).

Judge Dow denied plaintiff Scala's motion for a temporary restraining order ("TRO") in this Lanham Act case regarding Scala's and Scala's Preferred marks for giardiniera.

Likelihood of Success

Scala's made a "fairly strong showing" that defendants' (collectively "Michaelangelo Foods") labels using the marks were likely to cause consumer confusion. Scala's also met its burden to show some likelihood of success that its trademark license to Michaelangelo Foods was terminable at will, even though the license lacked a termination provision. Finally, Scala's showed some likelihood of success as to its argument that licensee estoppel barred Michaelangelo Foods' challenges to Scala's marks. The Court noted, however, that at the early stages of the litigation it appeared that Michaelangelo Foods might be able to overcome licensee estoppel upon equitable grounds.

Irreparable Harm

Irreparable harm is presumed in trademark cases, and Michaelangelo Foods did not challenge the presumption. Instead, Michaelangelo Foods argued that Scala's harm was not sufficiently immediate because Scala's was not selling competing products. But the fact that Scala's did not make a product, did not eliminate the harm. Scala's was harmed by not being able to control Michaelangelo Foods' quality. Additionally, Scala's was using the marks with other products.

But the Court noted that the facts of this case mitigated the strength of Scala's irreparable harm. In particular, Scala's licensed the marks at least in part because Scala's was unable to consistently pay suppliers or deliver products to its customers. And Michaelangelo Foods took substantial steps to fix those relationships, thereby enhancing the marks' value.

Balance of Harm

The Court held that Michaelangelo Foods would be harmed by a TRO. A TRO would allow the sale of existing inventory, but individual defendant invested a significant portion of his savings into the business and the business had relatively low profits. A TRO would, therefore, likely do substantial damage to Michaelangelo Foods' finances. This financial harm combined with Michaelangelo Foods' efforts to rebuild the marks and the business tipped the balance of harm in Michaelangelo Foods' favor.

Conclusion

While it was a close call, the Court denied a TRO. In view of the importance of a decision to both parties, the Court set an expedited discovery, briefing and hearing schedule for Scala's preliminary injunction motion.

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Aguila Records, Inc. v. Nueva Generacion Music Group, Inc., No. 07 C 3399, Slip Op. (N.D. Ill. Nov. 4, 2009) (Der-Yeghiayan, J.).

Judge Zagel granted in part and denied in part plaintiffs', collectively "Aguila Records") motion for a preliminary injunction in this trademark and copyright infringement dispute.  Aguila Records, a music management and recording agency, was in a dispute with defendants' musical group Alacranes Musical (“Alacranes”).  Based upon that dispute, Aguila Records sought a preliminary injunction preventing defendants' use of the Alacranes word mark and scorpion logo.

                                               Likelihood of Success

Because the parties agreed that the Alacranes marks were protectable and that there was a likelihood of confusion if two groups used the marks, the only likelihood of success issue was whether Aguila Records owned the marks.  The Court held that the proof of ownership was at best "in conflict" and that the agreements were contradictory.

                                               Irreparable Harm

The Court held that a preliminary injunction against performing using the Alacranes Musical mark would irreparably harm defendants who would be forced to negotiate with Aguila Records for rights to use the name or change their name, but it was undisputed that the band's success was intertwined with its name.  Alternatively, if the Court did not grant an injunction defendants would continue performing using the name and would likely continue to grow in popularity and earn additional income, which would be lost to Aguila Records.  But that harm would not be irreparable because it could be repaid financially. 

                                               Conclusion

While Aguila Records did not demonstrate a strong likelihood of success, it did demonstrate a "greater than negligible chance of winning."  The Court, therefore, enjoined defendants from using the marks on compact disks, other recording media and merchandise such as t-shirts and hats, all uses for which Aguila Records had trademark registrations.  But the Court did not enjoin the use of the marks for live performances because Aguila Records did not have registered marks for live performances and the balance of harms tipped in defendants' favor for live performances.

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Zimnicki v. Neo-Neon Int'l., Ltd., No. 06 C 4879, Slip Op. (N.D. Ill. Jul. 30, 2009) (Norgle, J.).

Judge Norgle denied plaintiff's motion for an antisuit injunction.  Plaintiff filed copyright, trademark and unjust enrichment claims against defendant based upon the alleged use of plaintiff's North Pole Village brand and decorative holiday lighting products.  Defendant then filed a declaratory judgment action in China seeking a determination that defendant, who filed Chinese copyrights on designs similar to those covered by plaintiff's US copyrights in suit, owned the disputed designs.  The Court explained that there is a circuit split on the standard for antisuit injunctions that the Seventh Circuit had not weighed in on.  The First, Second, Third, Sixth and District of Columbia take the "conservative approach" requiring that the foreign action to be enjoined would prevent US jurisdiction or threaten a vital US policy, and that the domestic interests outweigh concerns of international comity.  The Fifth and Ninth Circuits take the "liberal" approach which requires only that the injunction is "necessary to prevent duplicative and vexatious foreign litigation and to avoid inconsistent judgments."

Because the Seventh Circuit has not chosen an approach, most district courts in the circuit follow the more "lax" liberal approach.  But in this case, the Court did not need to make that determination because plaintiff's claim did not meet either standard because the issues in suit were not the same.  Plaintiff's instant suit asserted its US intellectual property.  Defendant's Chinese suit, on the other hand, sought a declaratory judgment that defendant owned its Chinese intellectual property, not plaintiff.  Because the Chinese suit would not make determinations about plaintiff's US intellectual property, neither litigation's outcome would be dispositive of the other.  Furthermore, plaintiff did not present evidence that the relevant Chinese intellectual property laws were the same or similar to the US Copyright or Lanham Acts.

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Bajer Design & Marketing, Inc. v. Whitney Design,, Inc., No. 09 C 1815, Slip Op. (N.D. Ill. Jun. 26, 2009) (Zagel, J.).

Judge Zagel denied defendant Whitney Design's ("Whitney") Section 1404(a) motion to transfer plaintiff Bajer Design & Marketing's ("Bajer") patent infringement case to the Eastern District of Missouri, where Whitney filed a declaratory judgment case after being served with Bajer's complaint.  Although Bajer was not a Chicago-based company, its choice of forum still deserved significant deference because the alleged injury occurred in Chicago.  Bajer filed the complaint after identifying the accused infringement at the International Housewares Show in Chicago.  Whitney argued that the accused infringement occurred in the St. Louis area where Whitney researched and designed the accused clothes hampers.  But the Court held that the point of sale, Chicago, was the situs of the injury.  

Whitney also argued that convenience of the parties weighed in favor of transfer because all of its documents and people were in the St. Louis area.  But the Court held convenience weighed against transfer because the parties could transfer documents electronically and, in any event, the documents would have to be sent to the parties' counsel across the midwest.  And the convenience of third parties also weighed against transfer.  The only third party, the inventor, lived in Iowa almost equidistant from Chicago and St. Louis.

Finally, the interests of justice did not weigh in favor of transfer.  Whitney argued that time to trial in the Eastern District of Missouri was significantly faster than in the Northern District of Illinois.  But the Court held that those statistics were irrelevant because they were for all cases, not split up by case types. 

The Court denied Bajer's preliminary injunction motion seeking to enjoin the Eastern District of Missouri case.  Because that court stayed its case pending the Northern District of Illinois's decision on the transfer motion, there was no need to enjoin a stayed case.

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DeVry Inc. v. Int'l Univ. of Nursing d/b/a Robert Ross Int'l Univ. of Nursing, No. 06 C 3364, Slip Op. (N.D. Ill. Jun. 30, 2009) (Guzman, J.).

After a bench trial, Judge Guzman issued findings of facts and conclusions of law, holding plaintiffs Ross University marks infringed and enjoining defendants from using the Ross name in conjunction with medical or nursing schools.  Plaintiffs operated the Ross University School of Medicine and the Ross University School of Veterinary Medicine, both off which plaintiffs bought along with the related trademarks from Robert Ross.  Both institutions are offshore and cater to US students.  Ross later associated himself with defendant, after which defendant, an offshore nursing school, began using the Ross name.  Defendant claimed plaintiffs' claims were moot because defendant stopped using the Ross name.  But the Court held that an injunction could be appropriate to guarantee that the misconduct does not restart after the case.

The Court held that defendants' "Robert Ross International University of Nursing" mark was confusingly similar to plaintiffs' "Ross University" marks for the following reasons:

• Defendant's marks were "strikingly similar" to plaintiffs' in both appearance and suggestion;
   
• Both sets of marks represent offshore medical institutions;
   
• The parties promote their institutions and hire faculty and staff through the same channels; and
   
• There have been numerous instances of actual confusion.

Having held that plaintiffs' mark was infringed, the Court held that injunctive relief was appropriate.  Plaintiffs were irreparably harmed  because of the ongoing actual confusion between the parties' marks and plaintiffs' inability to control its image when confusion occurs.  Furthermore, the balance of hardships weighed in favor of plaintiffs.  Plaintiffs faced "potential devastation" if an injunction was not issued, but defendant's only harm was Ross's temporary inability to use his name in connection with offshore medical services.  And the public would not be harmed by an injunction.  In fact, the injunction would serve the public interest by clarifying the source of medical education services for consumers.

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Lettuce Entertain You Enters., Inc. v. Leila Sophia AR, LLC d/b/a Lettuce Mix, No. 09 C 2582, Slip Op. (N.D. Ill. Jun. 8, 2009) (Lefkow, J.).

Judge Lefkow denied plaintiff Lettuce Entertain You Enterprises' ("LEYE") motion for a temporary restraining order against defendants' use of a banner reading "Let us be!" flanked by images of lettuce heads (the "Banner") on a building in which defendants plan to open a salad bar restaurant to be named "Lettuce mix."  LEYE filed this suit seeking the removal of a "Lettuce mix" sign (the "Sign") defendants placed on the same building.  As an effort at resolving the dispute, defendants replaced the Sign with the Banner.  After the Banner appeared, LEYE made the instant motion for a temporary restraining order, arguing that the Banner infringes LEYE's LETTUCE trademarks used in connection with LEYE's operation of more than seventy restaurants throughout the Chicago area and nationwide.  The Court held that LEYE did not meet its burden as to the first prong of the TRO analysis, LEYE's likelihood of success on the merits, and, therefore, the Court did not consider the remaining two elements, whether an adequate remedy at law existed and whether LEYE would have been irreparably harmed if the injunction was not granted. 

The Court held that defendants' Banner was a fair use of LEYE's trademarks and that, therefore, LEYE did not have a likelihood of success on the merits of its Lanham Act claims.  Defendants were not using the Banner's combination of the phrase "Let us be!" (which the parties agreed sounded like "Lettuce") and the lettuce images as a service mark.  "Lettuce mix" may have been a service mark, but "Let us be!" and the lettuce images were used to draw attention to this case and were meant to say "Hey, Lettuce Entertain You, leave us alone!"  And the use of the "let us"/lettuce pun was intended to parody LEYE's use of "lettuce" in place of "let us" throughout LEYE's website and other materials.  The Court explained that the Banner was not used to identify defendants' services, but to make a statement of protest:

The [B]anner thus conveys a message from its authors, the proprietors of the unopened restaurant, to the owners of the LETTUCE marks, essentially saying, "Leave us alone!"  Even if potential customers viewing the [B]anner do not know or learn of the dispute, it is clear at first glance that the banner is being used to communicate a message of protest.

The Court also noted that this decision had no bearing upon the question of whether defendants' Lettuce mix restaurant name infringed LEYE's LETTUCE marks.

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Miyano Machinery USA, Inc. v. MiyanoHitec Mach., Inc., No. 08 C 526, Slip Op. (N.D. Ill. Sep. 5, 2008) (Kendall, J.)

Judge Kendall granted a preliminary injunction against defendants’ (collectively “MiyanoHitec”) continued use of plaintiff Miyano Machinery’s (“MMU”) MIYANO trademarks. MMU proved a sufficient likelihood of success on its trademark infringement claims. Despite the fact that Miyano was the surname of the individual defendants, it was protectible. While personal names are not generally protectible, MMU’s Miyano marks had acquired secondary meaning, making them protectible. And individual defendants originally consented to MMU registering the marks.

MMU’s “Winged M” mark was not abandoned when MMU changed the font of the Miyano name in the mark. And MMU showed a likelihood of confusion. MMU’s and MiyanoHitec’s marks were very similar and were used on similar products – lathes – that were to be sold in similar channels. MMU also offered evidence of a few acts of actual confusion. And the evidence showed that MiyanoHitec likely intended to benefit from the likely consumer confusion.

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Liquid Dynamics Corp. v. Vaughan, No. 08 C 6934, Slip Op. (N.D. Ill. Oct. 20, 2008) (Conlon, J.).

Judge Conlon denied plaintiff's objections to the Magistrate's Report and Recommendations and denied plaintiff's contempt motion. In a prior case, a jury found plaintiff's patent valid and willfully infringed. The Court trebled plaintiff's damages, awarded plaintiff attorney's fees, and entered a permanent injunction preventing defendant from making, using or selling any of 47 mixing systems, or colorable imitations thereof, at issue in the case. Plaintiff brought a second case alleging infringement of 22 additional mixing systems and then filed a contempt motion arguing that the 22 new mixing systems were imitations of the original 47. After an extensive evidentiary hearing, the Magistrate found questions of fact as to whether the 22 mixing systems were colorable imitations of the enjoined systems and, therefore, denied the contempt motion. After a de novo review, the Court affirmed the Magistrate's Recommendation The 22 new mixing systems were not exact duplicates of the enjoined systems and there were questions of fact as to whether the differences were sufficiently minimal to make the new systems colorable imitations. The contempt motion was, therefore, denied, but the infringement case continued.

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Here are several stories that did not warrant a full post, or that were so well done by another blogger that there was no point in recreating the wheel:

• The Federal Circuit upheld Judge Coar's preliminary injunction in Abbott v. Sandoz, No. 05 C 5373 -- click here to read the Federal Circuit's opinion and here to read the Blog's prior posts on the case.  Dennis Crouch at Patently-O has a good post explaining the central issue of the case -- a defendant's burden of proof regarding invalidity in the likelihood of success analysis.  Judge Newman wrote the majority decision with Judge Gajarsa dissenting.  Crouch sees the case as a "good vehicle" for en banc review of the preliminary injunction standard.
   
• Ocean Tomo is holding its 8th IP auction at home in Chicago this Wednesday and Thursday.
   

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Mintel Int’l. Group Ltd. v. Neergheen, No. 08 C 3939, 2008 WL 2782818 (N.D. Ill. Jul. 16, 2008) (Dow, J.).

Judge Dow granted plaintiff a limited temporary restraining order (“TRO”) in this trade secret and non-compete case. After defendant gave plaintiff his notice of resignation from plaintiff’s marketing department, plaintiff began monitoring defendant’s computer use. This monitoring allegedly showed that defendant copied, emailed or printed various pieces of confidential information, including plaintiff’s client and vendor lists. Defendant then allegedly used those documents, in violation of defendant’s employment agreements, with defendant’s new employer, plaintiff’s alleged competitor.

The Court held that plaintiff had shown at least some likelihood of success regarding its trade secret misappropriation and Computer Fraud and Abuse Act claims based upon the alleged copying, emailing or printing of plaintiff’s client lists and other strategic documents. The Court also held that plaintiff showed a strong likelihood of success on elements of its breach of the non-compete and employment agreement claims. But the Court noted that it appeared likely that some provisions of the agreements were not enforceable.

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Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).

Plaintiff Jones Day sued defendants, BlockShopper.com and two individuals allegedly associated with the website, for allegedly using plaintiff’s service marks and linking to plaintiff’s website in at least two articles that allegedly discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition – click here for the complaint. Plaintiff also moved for a temporary restraining order (“TRO”) – click here for the TRO motion. In addition to the use of its service marks, plaintiff alleged that defendants used pictures of plaintiff’s associates that appear to be identical to pictures on plaintiff’s website.

A January 2007 Chicago Tribune article described defendants’ website as one that provides details surrounding Chicago-area real estate transactions using a Cook County list of home sales and internet research, noting that subjects of some posts do not like the stories:

But BlockShopper goes beyond the basic who-what-and-how-much, revealing tantalizing tidbits such as what the parties do for a living and what the sellers originally paid for the property, plus satellite maps and even photos of the property and the parties.

The TRO hearing was noticed for Tuesday, August 19. I will keep you updated as decisions are issued.

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Square D Co. v. Elec. Soln’s, Inc., No. 07 C 6294, Slip Op. (N.D. Ill., Jul. 22, 2008) (Moran, Sen. J.).

Judge Moran granted plaintiffs’ motion to reopen discovery and compel production of certain documents, but tabled plaintiff’s motion for sanctions. Plaintiffs alleged that defendants were selling counterfeit electrical products using plaintiffs’ trademarks. The parties entered an agreed preliminary injunction pursuant to which defendant agreed not to sell any products with plaintiffs’ trademarks, and to plaintiffs’ inspection of defendants’ inventory on or before February 29, 2008, unless the parties agreed to a later date.

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Amari Co. v. Burgess, No. 07 C 1425, ___ F.Supp.2d ___, 2008 WL 656072 (N.D. Ill. May 7, 2008) (Ashman, Mag. J.).

Judge Ashman denied plaintiff Amari Co.’s motion for a protective order to prevent defendants’ alleged intimidation of Amari's non-party witnesses in this Racketeering Influenced and Corrupt Organization Act ("RICO"). Amari argued, among other things,* that defendants were intimidating ex-employees of former defendant International Profits Associates ("IPA"), which was run by defendants, by threatening to enforce confidentiality agreements signed by all IPA employees.

The Court held that it could not grant Amari its requested relief for two reasons. First, to be effective the injunction would have had to enjoin non-party IPA from suing its ex-employees to enforce the agreements. The Court could not enjoin IPA without proof it was working in concert with defendants or that IPA was defendants’ alter ego.  And before enjoining IPA, IPA would have to be given notice of the motion and an opportunity to respond.

Second, Amari sought a blanket injunction from enforcing the agreements against IPA’s ex-employees, but did not allege that the agreement was unenforceable. While confidentiality agreements cannot be used to hide a company's potential impropriety, they can be used to protect proprietary information. Without identification of specific ex-employees allegedly threatened with a suit, the Court could not determine whether IPA might have been using the confidentiality agreement for enforceable or unenforceable ends. And if Amari identified a specific individual, it could subpoena them, removing the need for an injunction.

*Amari alleged other forms of intimidation, but they are not related to IP and are, therefore, not discussed in this post.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 2008-1392 & 1393 (Fed. Cir.).*

As Judge Moran predicted, the parties have appealed this case to the Federal Circuit.* The parties’ appeals were consolidated, leaving a single appeal with a substantial number of issues. The great, new Patent Appeal Tracer* reported that plaintiff Trading Technologies (“TT”) is appealing at least the following decisions (click here to read Tracer’s post on the cross-appeals):

Claim constructions, specifically constructions of "static price axis" and "order entry region"  (click here and here and here for the Blog’s posts regarding claim construction opinions);

• Summary judgment of noninfringement of most of defendant eSpeed’s software packages, including the following titles: Dual Dynamic, eSpeedometer, and modified eSpeedometer programs (click here for the Blog’s post regarding this opinion);
  
• Partial summary judgment for TT regarding prior use (click here for the Blog’s post regarding this opinion); and
  
• Judgment as a matter of law overturning the jury’s willfulness finding (click here for the Blog’s post regarding this opinion).

And eSpeed is appealing, at least, the following decisions:

• The permanent injunction regarding certain of eSpeed’s software packages (click here for the Blog’s post regarding the Court’s permanent injunction).

* Thanks to Patent Tracer for linking to the Blog’s TT v. eSpeed coverage. Click here to read much more about this case in the Blog’s archives.

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Nat'l. Spiritual Assembly of the Baha'is of the U.S.A. Under the Hereditary Guardianship, Inc. v. Nat'l. Spiritual Assembly of the Baha'is of the U.S.A., Inc., ___ F.Supp.2d ___, 2008 WL 1839078 (N.D. Ill. Apr. 23, 2008) (St. Eve, J.).

Judge St. Eve denied defendant the National Spiritual Assembly of the Baha'is of the United States' (the "NSA") motion to hold non-parties Franklin D. Schlatter, Joel B. Marangella, the Provisional National Baha'i Council ("PNBC"), the Second International Baha'I Council (d/b/a Baha'is Under the Provisions of the Covenant)("SIBC"), and the Baha'i Publishers Under the Provisions of the Covenant ("BPUPC")(collectively the "Alleged Contemnors") in contempt for violating the 1966 permanent injunction against plaintiff The National Spiritual Assembly of the Baha'is of the United States Under the Hereditary Guardianship, Inc.'s (the "NSA-UHG" or "UHG") use of the NSA's trademarks. Shortly after the injunction was entered, the NSA-UHG dissolved. NSA argued that its former officers, Schlatter and Marangella, remained bound by the injunction. But the Court held that officers or agents of an entity that are not personally named in an injunction are only bound while acting for the named entity or a subsequent entity formed to avoid the injunction. Schlatter's and Marangella's alleged contempt, therefore, is dependent on their new entity PNBC's status.

The Court held that PNBC was not in privity with NSA-UHG. NSA-UHG followed the directives of its spiritual leader, Mason Remey. PNBC, however, followed the directives of its spiritual leader Marangella, not Remey. Furthermore, Marangella specifically instructed PNBC and its members not to violate the injunction. PNBC, Schlatter and Marangella, therefore, were not in privity with NSA-UHG and not bound by the injunction.

Similarly, non-parties Jensen, SIBC and BPGPC were not in privity with NSA-UGH, even though they admitted to being successors-in-interest to Remey. Jensen disassociated themselves from the NSA-UGH and Remey several years before the injunction was issued.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 22, 2008) (Moran, Sen. J.).*

After a jury held that certain of defendants' (collectively "eSpeed") products willfuly infringed two of plaintiff Trading Technologies' (“TT”) futures trading software patents (the Court previously reversed the willfulness finding), the Court entered a permanent injunction preventing future sales of the infringing software -- a previous opinion granted summary judgment of noninfringement of eSpeed's current software and all software except that sold during a six month period shortly after TT's patents issued.  The Court looked at each of the four standard injunction elements, as required by the Supreme Court in eBay Inc. v. MercExchange, LLC.

Irreparable Harm

The Court held that TT would be irreparably harmed by any continued sales of infringing product because TT's successful business was built around its patented technology and, therefore, direct competitors with infringing products irreparably harmed TT.    The Court agreed with eSpeed that general claims of competition were insufficient pursuant to eBay, but the Court held that TT's direct competition assertions were supported by trial testimony.

Inadequate Remedy at Law

eSpeed argued that TT's numerous licenses proved that monetary damages could compensate TT, as the eBay district court held after remand.  but the Court distinguished eBay.  eBay was premised upon a combination of plaintiff MercExchange's:

• willingness to license;
  
• choice not to practice the patent;
  
• failure to seek preliminary injuctive relief; and
  
• consistent, clear statements that it desired monetary damages.

In contrast, TT manufactured a patented product and only licensed as an alternative to litigation.  And the Court acknowledged TT's concern that providing monetary damages after trial without an injuction would force a compulsory license on TT.

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Little Tikes Co. v. Kid Station Toys, Ltd., No. 08 C 1935, 2008 WL 1805379 (N.D. Ill. Apr. 18, 2008) (Gottschall, J.).

Judge Gottschall denied plaintiff Little Tikes' Motion for Temporary Restraining Order ("TRO") to prevent defendant Kid Station Toys, Ltd. ("Kid Station") from selling Kid Station electric toys using Little Tikes' trademarks. From 2003 until February 2008, the parties had a license agreement ("Agreement") pursuant to which Kid Station sold its electric toys using the Little Tikes trademarks. In February 2008, Little Tikes canceled the Agreement pursuant to a provision allowing it to do so for, among other reasons, unsafe toys. Kids Station allegedly had a toy cellphone recalled because it was a potential choking hazard. Kids Station disputed the validity of the termination and continued selling its toys using the Little Tikes trademarks.

The Court held that Little Tikes had shown sufficient likelihood of success on the merits. Its trademarks ownership was undisputed and its success regarding the validity of its Agreement termination was "better than negligible." Additionally, in the parties' Agreement, Kids Station stipulated to Little Tikes' irreparable harm.

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Recycled Paper Greetings, Inc. v. Davis, No. 08 C 236, __ F. Supp.2d __, 2008 WL 282687 (N.D. Ill. Feb. 1, 2008) (Bucklo, J.).

Judge Bucklo denied plaintiff’s, Recycled Paper Greetings (“RPG”), motion for a temporary restraining order in this trade secret misappropriation action. RPG argued that it was either part of a joint venture or, at least, a confidential relationship with defendant Kathy Davis to develop a signature line of greeting cards. RPG contends that Davis took confidential information regarding the greeting card line to a competitor. Davis countered that she had terminated her contract with RPG pursuant to the contract’s termination provision before working with RPG’s competitor and there was, therefore, no breach or misappropriation. At an initial hearing, the Court suggested that live testimony might be required to fully resolve the motion for the TRO. But both parties told the Court that their respective witnesses would not be available during the necessary time frame to testify. Because no witnesses were available, the Court denied the TRO, holding that it lacked sufficient information to determine that RPG maintained its alleged trade secrets with sufficient secrecy or the nature of the relationship between RPG and Davis.

Practice tip: If you are seeking a TRO, line up commitments from your potential witnesses to be available both flexibly and quickly. Not many judges will grant TROs if plaintiff cannot present requested witnesses.

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Chamberlain Group, Inc. v. Johnson Controls Interiors LLC, No. 2007-1314-1467, Slip Op. (Fed. Cir. Feb. 19, 2008).

The Federal Circuit reversed Judge Moran’s construction of “binary code” and, therefore, reversed the limited preliminary injunction entered by the Northern District - click here and here for the Blog’s posts regarding the injunction. The Northern District construed “binary code” as a code represented by two values, but not necessarily a binary number – click here and here for the Blog’s posts regarding the Northern District’s claim and construction opinions. The Federal Circuit praised the Northern District’s claim construction analysis, but reversed the construction:

The district court commendably strove to follow this court’s rules for claim construction. See Phillips, 415 F.3d at 1318-19. In this regard, the trial court weighed the intrinsic evidence along with the extrinsic evidence and properly sought to avoid importing a limitation from the specification into the claims. See id. Nonetheless, this court discerns that the ‘544 patent specification gives particular limiting meanings to the language in the claims.

The Federal Circuit held that “binary code” required a binary (or base two) number. Otherwise, any values would meet the limitation because all values, whether in base two, three, the more standard ten or any other, are represented by computers using two values – 1 and 0. Because the revised claim construction called into question the Northern District’s likelihood of success analysis, the Federal Circuit reversed the preliminary injunction.

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Brian Higgins's Maryland IP Law Blog post about the progeny of In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), inspired me to do follow up posts identifying Northern District cases discussing recent major IP decisions.  The first looks at cases discussing eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).  Here they are:*

• Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3446144 (N.D. Ill. Nov. 29, 2006) (St. Eve, J.). -- Granting a permanent injunction in a case between competitors.
  
• Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1017751 (N.D. Ill. Mar. 30, 2007) (Moran, J.). -- Granting a preliminary injunction in a case between competitors and holding that in eBay the Supreme Court limited the automatic presumption of irreparable harm based upon infringement.

For further analysis of post-eBay decisions, check out my post about Michael Smith's analysis (click here) and my post discussing Ray Nimmer's thoughts on the potential for compulsory licensing regimes because of eBay (click here).

*  A brief note on methodology:  this was not a thorough study and does not include cases that granted or denied injunctions without discussion.  For a more comprehensive list of decisions nationwide (updated through the end of 2007) go to the Fire of Genius.

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Am. Fam. Mutual Ins. Co. v. Roth, No. 05 C 3839 & 3869, 2008 WL 168693 (N.D. Ill. Jan. 15, 2008) (Guzman, J.).

Judge Guzman adopted Magistrate Judge Cole’s Report and Reconsideration in full, holding defendants in contempt for violating the Court’s injunctions requiring that defendants return various customer information taken from plaintiff, defendant’s former employer – click here for more on the prior opinions in the Blog’s archives. It was defendants’ responsibility to ensure that defendants’ former counsel, who had copies of relevant documents, comply with the injunction by turning the documents over to plaintiff. The fact that defendants did not have direct control over their former counsel’s copies did not matter.

Additionally, the Court held that it did not matter that plaintiff did not originally make a “big deal” out of defendant’s non-compliance. Defendants argued that they presumed there was no need to comply with the Court’s injunctions because nobody was making a “big deal” about the return of the materials. That presumption was flawed. Neither party moved to modify either the preliminary injunction or the amended preliminary injunction. Thus, defendants had a duty to comply with the Court’s injunctions as written.

Practice Tip: Do not fall in to the trap of believing that substantial compliance with a court order is sufficient. While that could be true in some cases, you should always contact the court if you have a problem complying with an order. Compliance with orders is one case where the adage that you are better off asking forgiveness than asking permission does not hold true.

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Geneva Int’l Corp. v. Petrof, Spol, S.R.O., No. 07 C 4214, 2007 WL 4522621 (N.D. Ill. Dec. 14, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Geneva International’s preliminary injunction motion and the parties’ cross motions for summary judgment on Geneva’s anticipatory breach of contract claim.* Geneva signed a variety of agreements with defendant Petrof making Geneva the exclusive U.S. distributor of Petrof’s pianos and the exclusive U.S. licensee of the “Petrof” trademark for use with Petrof’s pianos, through 2012. In 2007, Petrof gave Geneva the required six months notice to terminate the parties’ contract (but not their trademark license agreement which did not have the same termination provisions) and notified Geneva that Petrof planned to start selling its pianos using its trademark in the U.S.

Geneva sough a preliminary injunction to stop Petrof’s U.S. sales because Geneva continued to be the exclusive licensee of the Petrof trademark. But the Court held Geneva would not be irreparably harmed without the preliminary injunction. Geneva’s alleged irreparable harm — lost goodwill of its customers because Geneva would not be Petrof’s exclusive distributor — was caused by the contract, not breach of the trademark license. Petrof’s contract termination meant that Geneva could not be Petrof’s U.S. distributor, exclusive or otherwise. Because the alleged irreparable harm did not stem from the license at issue, the Court denied the injunction.

* Because they are not IP-specific, I will not fully address the contract issues. I will say that the disputes arose from the fact that the three agreements were signed on the same day, but did not all mention each other and had differing integration clauses, some mentioning the other agreements and some not. Practice tip: When drafting parallel agreements, make very clear how the agreements relate or that they do not.

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Federal Trade Comm. v. Trudeau, No. 03 C 3904, 2007 WL 4109607 (N.D. Ill. Nov. 16, 2007) (Gettleman, J.).

Judge Gettleman held defendant Kevin Trudeau ("Trudeau") in contempt for violating the Court's Stipulated Permanent Injunction (the "Injunction").  In 2003, plaintiff Federal Trade Commission ("FTC") filed suit against Trudeau* alleging, among other things, false advertising pursuant to the FTC Act, 15 U.S.C. Section 52(a).  The advertisements at issue included various informercials in which Trudeau allegedly claimed that the coral calcium in his supplement Coral Calcium Supreme could treat cancer, multiple sclerosis and heart disease, among other medical conditions.  In settlement of the FTC's suit, the parties agreed to and the Court entered the Injunction.  The Injunction generally prohibited Trudeau from producing infomercials, with the exception that he could make infomercials promoting books, so long as the infomercials did not misrepresent the books.  The FTC argued that a series of three infomercials promoting Trudeau's new book The Weigh Loss Cure "They" Don't Want You to Know About (the "Book") violated the Injunction because Trudeau made claims in the infomericals that the weight loss program described in the book was "easy,"  "simple" and prevented weight gain forever once complete. 

The weight loss plan had four phases, the last of which was to be followed for the remainder of a person's life.  Each phase had various requirements (or strong recommendations) including colonics, various organ cleansings, avoiding use of over the counter or prescription drugs, daily walks and eating only 100% organic foods.  Phase two also required daily injections of human chorionic gonadotrophin ("HCG").  HCG is available only by prescription in the US, but the FDA specifically stated that it should not be used for treating obesity.  Trudeau argued that the claims were mere puffery and opinion which, therefore, did not violate the Injunction.  But the Court held that Trudeau's claims that the Book detailed an "easy" diet were false.  Furthermore, Trudeau's claims that once the diet was complete you could eat anything you wanted were false because the fourth phase of the diet lasted for the remainder of the dieter's life.  The Court, therefore, held Trudeau in contempt  and set a hearing to determine an appropriate remedy.

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Last week the intellectual property world obsessed over injunctions – specifically, a preliminary injunction hearing in the Eastern District of Virginia resulting in an injunction against the U.S. Patent & Trademark Office’s (“PTO”) new continuation rules. There was a lot of analysis about the injunction, including live blogging by Patent Practice Center Patent Blog and a lot of post-injunction analysis by, among others: 271 Patent Blog; FileWrapper; Patent Baristas; Patent Docs (and here); Patent Prospector; PHOSITA; Patently-O; WSJ Law Blog; and Washington State Patent Law Blog. For those of you who have no idea what a continuation is or just do not care about the particulars of the rules, I promise that I am done with patent continuations for this post. Honestly, I find the rules rather tedious myself. I prefer to focus on litigating patents, rather than the PTO’s prosecution rules. So, today we talk about injunctions:

According to TechCrunch, Patent Monkey received a permanent injunction when it was sold to the Internet Real Estate Group. But Patent Monkey’s patent search technology will see its injunction lifted when it is used on www.patents.com. Hopefully, for those like me who enjoyed it, Patent Monkey’s Infinite Monkey Theorem Blog will also see its injunction lifted.

Virtually Blind has an interesting report on Second Life’s* new Patent & Trademark Office, the SLPTO. No word on whether the SLPTO and the Second Life legal system generally will allow for any permanent injunctions. Right now it appears that the SLPTO will be heavily skewed toward copyright and trademark, which makes sense in a virtual world. And before we learn whether the SLPTO has any enforcement mechanisms, Blawg IT is offering to represent virtual clients before the SLPTO. I would get a retainer up front Brett – virtual clients can be difficult to track down when the bills are due.

The Patry Copyright Blog shows why Second Life injunctions may be necessary. Six Second Life players have sued a Queens man in the Eastern District of New York for trademark and copyright infringement based upon sales of goods in Second Life. I wonder if the trademarks and copyrights were registered with the SLPTO or the US PTO/Copyright Office. And does the E.D.N.Y. have authority to issue cyber-injunctions?

Promote the Progress provides an interesting piece on the long-term effects of last week’s injunction against the PTO on shaping patent reform.

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Yesterday, I blogged briefly about the Eastern District of Virginia's injunction preventing the PTO's new continuation rules from taking effect today, November 1st.  But the Court's order was not available yet.  The order has been issued -- click here for a copy -- and it is very interesting.  The Court held that plaintiff GSK had shown a likelihood of success on the merits regarding several issues:

• That limiting the number of continuations a party can file violates 35 U.S.C. Section 120, which states that later filed applications have the same effect as their parent applications.
  
• That the new rules are impermissably retroactive because the limits on numbers of claims and continuations will change the terms of the bargain struck between inventors currently prosecuting their applications and the PTO when those inventors filed their applications, prior to the new rules going into effect.
  
• That the requirements for Examination Support Documents ("ESD") are impermissably vague because they do not sufficiently define the paramters of the search required.

The Court also held that GSK would be irreparably harmed by implementation of the rules because GSK has about 2,000 pending applications and GSK's rights in each of those applications would be materially altered by the new rules. 

[Updated with more links after the jump.]

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Bryant v. Gordon, __F.Supp.2d__, 2007 WL 2440208 (N.D. Ill. August 30, 2007) (Kennelly, Jr.).*

Judge Kennelly denied defendants James Gordon’s (“Gordon”) and Mach 1’s motions for judgment as a matter of law (“JMOL”) and entered an injunction against Gordon’s and Mach 1’s continued use of the copyrighted pictures at issue – pictures of a parachutist and a sniper used in motivational posters. Gordon and Mach 1 argued that the jury’s verdict that Gordon and Mach 1 infringed plaintiff’s copyrights was inconsistent with the jury’s verdict that defendant John Urtis (“Urtis”) – who took the infringing sniper photo – did not infringe plaintiff’s copyright. But the Court held that JMOL cannot be used to harmonize jury verdicts. Furthermore, the Court held that the infringement verdicts were supported by the facts.

Because of a threat of continued infringement, the Court granted a permanent injunction against Gordon and Mach 1. But the Court held that it could not issue the injunction against Urtis because the jury’s verdict was in Urtis’s favor. The Court did, however, caution Urtis not to aid the other defendants in violating their injunction.

* For more on this case, click here in the Blog’s archives.

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Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2728754 (N.D. Ill. Sep. 13, 2007) (Guzman, J.).

Judge Guzman conducted a Fed. R. Civ. P. 72 de novo review of Magistrate Judge Cole’s report which recommended that the Court hold defendant in contempt for violating the Court’s permanent injunction limiting defendant’s use of plaintiff’s Coilcraft mark (click here for further discussion in the Blog’s archive). The Court adopted Judge Cole’s Report in its entirety and gave plaintiff fourteen days to submit a proposed order and proof of its attorneys' fees and costs related to this motion. The Court also held that Judge Cole was not required to hold an evidentiary hearing before issuing the Report because there were no genuine issues of material fact. The dispute was governed by the language of the Court’s injunction which was not disputed. And the only issue was whether defendant’s advertisements, the contents of which were not disputed, violated the injunction – a matter of law.

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American Fam. Mut. Ins., Co. v. Roth, No. 05 C 3839, 2007 W LL377335 (N.D. Ill. Aug. 16, 2007) (Cole, Mag. J.).

Judge Cole recommended that plaintiff’s motion be granted in part requiring defendants to comply with the Court’s preliminary injunction and holding defendants in contempt for failing to comply with the Counts TRO and PI. The Court first explained that no injunction could be a general prohibition against using trade secrets. Rather, an injunction – whether temporary, preliminary or permanent – must include specific recitals limiting defendants’ actions or requiring that actions be performed. The Court then analyzed whether defendants’ actions or inactions violated specific provisions of the TRO and the PI issued by the Court. The Court reported that defendants had retained possession of plaintiff’s customer list and defendants failed to provide a list of their customer contacts with sufficient detail. The Court, therefore, recommended that defendants be held in contempt for failing to comply with the TRO and the PI.

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Glenayre Elecs., Inc. v. Jackson, No. 02 C 0256, 2007 WL 2492105 (N.D. Ill. Aug. 30, 2007) (Leinenweber, J.).

Judge Leinenweber denied a motion for an injunction against declaratory judgment defendant Jackson (“Jackson”) making arguments in a related malpractice case against Jackson’s prior counsel Niro Scavone (“Niro”). In the original case, the jury returned a verdict for Jackson finding direct infringement and awarding him $12.1M. Jackson accepted a remittitur of $2.65M which the Court ruled prevented Jackson from pursuing further indirect infringement claims against declaratory judgment plaintiff Glenayre Electronics (“Glenayre”). Jackson appealed the issue to the Federal Circuit which upheld the Court’s decision. Jackson then sued his Niro in Illinois state court for, among other things, malpractice. Niro brought the instant motion in this case seeking to prevent Jackson from taking any position that contradicts the principle that the $2.65M remittitur represented all possible damages in the case. Because Niro had already moved the state court to prevent the arguments at issue, the Court had to determine whether the relitigation exception applied to allow the Court to reconsider the decision rendered by the state court. The Court held that the exception did not apply for two reasons. First, Counsel showed no “equitable entitlement” to the relitigation exception. Counsel may still appeal the state court decision through the state appellate system. And the costs of litigation are not a sufficient equitable consideration. Second, the characterization of the Court’s ruling was incorrect. The Court held only that once he accepted the remittitur, Jackson was not entitled to any further damages for the infringement. The Court did not hold that Jackson had never been entitled to more than the $2.65M remittitur.

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Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 1549498 (N.D. Ill. May 24, 2007) (Coar, J.).

Judge Coar denied defendant Sandoz, Inc.'s ("Sandoz") motion to stay the Court's preliminary injunction pending appeal to the Federal Circuit pursuant to Fed. R. Civ. P. 62(c).  The Court previously granted plaintiff Abbott's motion for a preliminary injunction (you can read more about that decision and related cases in the Blog's archives).  The PI enjoined defendant Sandoz from selling a generic version of Abbott's patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  Sandoz argued that the PI should be stayed pending appeal because of conflicting Federal Circuit law regarding the Court's claim construction and because of the Supreme Court's KSR decision. 

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Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).

Judge Moran granted plaintiffs a preliminary injunction preventing defendants from interfering with plaintiffs' right to record new music with producers or record labels of plaintiffs' choice.  The Court also denied defendants an opposing preliminary injunction that would have prevented plaintiffs from recording new music with anyone other than defendants.  Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively "HH") -- in addition to clicking on "Hawthorne Heights" to go to the band's website, you can also read about them on Wikipedia, listen to them online or see them live June 12th in Urbana, Illinois's Canopy Club.  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.  In a prior opinion (discussed in the Blog's archives), the Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which left HH free to record other songs or records with another company during the life of the Agreement.  Based upon the Court's ruling, HH moved the Court for a preliminary injunction confirming that defendants could not interfere with any of HH's efforts to record new music with a third party.  Defendants cross-moved to prevent HH from working with anyone but defendants.  The Court held that HH showed a likelihood of success on the merits based upon the Court's prior ruling that the Agreement was not exclusive.  Similarly, the Court held that defendants did not show a likelihood of success in light of the same ruling.  Because defendants had no likelihood of success, their motion for a PI was denied.  Defendants argued that HH could not base a motion for preliminary injunction upon claims for declaratory relief, but the Court held that numerous courts had granted preliminary injunctive relief based upon claims for declaratory judgment.

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CertainTeed Corp. v. Williams, __ F. Supp.2d __, 2007 WL 1297165 (N.D. Ill. Apr. 3, 2007) (Holderman, C.J.).

Pursuant to a remand and forthwith mandate from the Seventh Circuit, Chief Judge Holderman preliminarily enjoined defendant, Williams, from continued employment by plaintiff's competitor, IKO Industries, Inc. ("IKO"), based upon a non-compete agreement ("Agreement") defendant signed with his previous employer, CertainTeed Corp. ("CT").  But the Court made clear that the preliminary injunction violated defendants' right to due process and violated the Erie doctrine.  When Williams began working for CT, he signed the Agreement which required, among other things, that for one year after working for CT, Williams not perform work:  (i) regarding any product, process or service that is competitive with or similar to any product, process or service Williams was involved with at CT; or (ii) regarding any product, process or service of CT's for which Williams had access to CT's confidential information during his employment.  After leaving CT's employ, Williams took a position with IKO.  Based upon that employment, CT sued Williams and sought a preliminary injunction to prevent Williams's continued employment by IKO.

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Abbott Labs. v. Sandoz, Inc., No. 07 C 1721, Slip op. (N.D. Ill. May 3, 2007) (Anderson, J.).

Judge Anderson denied plaintiffs'  motion for a preliminary injunction to prevent defendants Sandoz, Inc. ("Sandoz") and Teva Pharmaceutical Industries, Ltd. ("Teva") from selling a generic version of plaintiff Abbott Laboratories' ("Abbott") antibiotic cefdinir, which it markets using the name Omnicef.  Plaintiffs' original patent, U.S. Patent No. 4,559,334 (the "'334 patent"), covering a form of cefdinir expired on Sunday, May 6, 2007 at 10:59 p.m. CDT.  Plaintiffs' second patent, U.S. Patent No. 4,935,507 (the "'507 patent"), covering a crystalline cefdinir, does not expire until December 4, 2011.  Plaintiffs argued that Sandoz's and Teva's respective formulations of cefdinir (the "accused products"), which the parties agree can be classified as cefdinir monohydrate, infringed the '507 patent and, therefore, sales of the accused products should be enjoined.  The Court, with agreement of the parties, adopted a prior claim construction from Judge Payne of the E.D. Virginia for purposes of the PI determination.  Using Judge Payne's construction, the Court held that the accused products did not likely infringe the '507 patent.  First, cefdinir monohydrate only displayed four of the seven peaks in an x-ray diffraction pattern that the '507 patent identified as indicative of crystalline cefdinir within the +/-.1 degree margin of error that the Court determined was the proper construction of the '507 patent's "about" qualifier.  Second, the Court held that "trace" amounts of crystalline cefdinir that were allegedly in the accused products in addition to the cefdinir monohydrate did not likely amount to literal infringement.

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1238908 (N.D. Ill. Apr. 25, 2007) (Moran, J.).

Judge Moran denied defendant Lear's motion to stay the Court's preliminary injunction pending appeal to the Federal Circuit,* but did allow third party General Motors ("GM") to intervene of right and modified the PI to limit harm to defendant and GM.  In a March 30, 2007 opinion and order, the Court granted plaintiffs' motion for a preliminary injunction, preventing defendant from marketing and selling its garage door opener transmitters based upon the Court's prior claim constructions (these opinions are available in the Blog's archives).  The Court held that Lear could not show a likelihood of success on the merits, in part because the Court's "Markman decision and subsequent reconsideration dealt an enormous blow to [Lear's] case."  The Court acknowledged that while plaintiff would suffer irreparable harm without the PI, both Lear and GM could suffer irreparable harm because of the PI.  In order to resolve the irreparable harm issue, the Court revised the PI to exempt Lear's sales to GM.  Because GM was Lear's only client and because the exemption allowed GM to continue sourcing Lear's product  the revised PI would remove harm to GM and substantially reduce Lear's harm.  While Lear would not be able to add new customers, it would not have to idle its related workers and factories because Lear would not lose any customers.  Because the removal of GM sales from the PI substantially limits Lear's potential harm, the Court denied Lear's motion, supported by GM, to increase the bond from $10,000,000 to $50,000,000.

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Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 1141635 (N.D. Ill. Apr. 16, 2007) (Coar, J.).

Judge Coar granted plaintiff Abbott's motion for a preliminary injunction, after having previously denied it a TRO.*  The PI enjoined defendant 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 held that Sandoz had shown a substantial likelihood of materiality and Abbott's intent to deceive the PTO  based upon Abbott's failure to disclose certain taste perversion data during prosecution.  But because Abbott abandoned the claims to which the taste perversion data was relevant of its own accord, the Court did not find the patent preliminarily unenforceable.  The Court explained its reasoning as follows:

Redemption is one of the core principles of the American ethos.  Thus in addition to being contrary to the spirit of Scribbs, Kimberly-Clark and the Code of Federal Regulation, it seems wholly inequitable to hold a patent to be invalid for fraudulent conduct in the prosecution of a claim that was withdrawn before actual prosecution had even begun.

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1017751 (N.D. Ill. Mar. 30, 2007) (Moran, J.).

Judge Moran granted plaintiffs' motion for a preliminary injunction, preventing defendant from marketing and selling its garage door opener transmitters.  Relying upon its two prior claim construction decisions (which can be found in the Blog's archives), the Court first determined that plaintiffs had proven a likelihood of success on its infringement claims.  Then the Court considered plaintiffs' irreparable harm claims.  The Court denied plaintiffs' argument that its showing of a strong likelihood of success creates a presumption of irreparable harm.  Citing eBay, Inc.  v. Merc Exchange, L.L.C., 126 S. Ct. 1837 (2006), the Court held that the Supreme Court limited the automatic presumption of irreparable harm based upon infringement.  Instead, the Court determined that plaintiffs' had shown that they were irreparably harmed because defendant's sales had eroded its prices and strained its customer relations.

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Chicago Tribune Co. v. Fox News Network LLC, No. 07 C 0865, 2007 WL 1052508 (N.D. Ill. Apr. 4, 2007) (Bucklo, J.).*

Judge Bucklo denied plaintiff Chicago Tribune's ("Tribune") motion for a preliminary injunction.  The Tribune sought an injunction which would have required defendant Fox News Networks ("Fox") to change the name of its "Redeye" late-night television news program based upon alleged infringement of the Tribune's Redeye mark related to its Redeye newspaper.  The Court held that the Tribune had only shown a "possibility" that it would prevail on the merits.  The Court found that the Tribune's Redeye mark was at least suggestive and, therefore a strong mark.  And the Court held that while the marks did not visually resemble each other, the Tribune proved a likelihood that the marks were aurally identical.  But the evidence did not favor the Tribune on either of the other two "most important" factors in deciding likelihood of confusion:  defendant's intent and actual confusion.  No evidence showed that Fox "passed off" its program as coming from the Tribune, so the issue of Fox's intent favored Fox.  As to actual confusion, the Tribune put forth a witness that testified that he suffered "momentary actual confusion" when he first learned of Fox's Redeye program, but that it was cleared up almost immediately by someone he was talking with about the program.  Additionally, the witness did not have cable television, so could not watch the show.  While initial confusion can be sufficient to show actual confusion, the Court disregarded the witnesses testimony because he admitted that he was a consumer of neither the Tribune's nor Fox's products. 

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SMC Corp., Ltd. v. Lockjaw, LLC, __ F. Supp.2d __, 2007 WL 983850 (N.D. Ill. Apr. 3, 2007) (Castillo, J.).

Judge Castillo granted plaintiff's motion for a preliminary injunction, enjoining defendants from breaching the parties' agreement, unless plaintiff acted in a manner triggering the agreement's termination provision, and from contacting plaintiff's customers for any purpose without plaintiff's consent.  Plaintiff was the exclusive distributor of defendants' patented Lockjaw pliers in certain Western European countries.  For about eighteen months, plaintiff's distributed defendants' pliers without incident.  But then defendants altered payment terms, which was their right if they followed certain procedures.  Plaintiff alleges that defendants did not follow those procedures and based on this dispute the relationship appears to have broken down.  Shortly after defendants altered the payment terms, plaintiff filed this suit seeking, among other things, a declaratory judgment that the agreement is binding and enforceable, and that defendants breached the agreement.  Plaintiff also sought an injunction to prevent the defendants from terminating the agreement and/or contacting plaintiff's customers.  Relying upon the UCC, the Court found that plaintiff had a likelihood of success on the merits based upon, among other things, the fact that its brief (and cured) nonpayment for two shipments likely did not constitute a breach of the agreement.

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Bobak Sausage Co. v. Bobak Orland Park, Inc., No. 06 C 4747, 2007 WL 846505 (N.D. Ill. Jar. 19, 2007) (Kennelly, J.).

After an evidentiary hearing, Judge Kennelly held defendants in contempt for violating the stipulated permanent injunction entered by the Court and ordered defendants to comply with the injunction within three weeks or face daily fines.  Plaintiff Bobak Sausage Co. ("Bobak's") makes and sells meat products and operates a related restaurant in Chicago.  Bobak's founder, Frank Bobak, transferred ownership of Bobak's to his sons.  In early 2006, Bobak's reorganized, which led to two of the sons owning Bobak's and a third owning a grocery store that Bobak's had been building.  As part of the reorganization, Bobak's granted two entities rights to use Bobak's trademarks at retail locations for a six month period.  After the six month period ended, Bobak's filed suit against defendants (including the third son and the licensed retail locations) for, among other things, trademark infringement based upon the continued use of the Bobak's marks.  The parties settled that dispute based at least in part upon a stipulated permanent injunction, which the Court entered, which set various limits on what marks each defendant could use, requirements that the defendants remove and change their signage and requirements that defendants use disclaimers that they were not affiliated with Bobak's. 

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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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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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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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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 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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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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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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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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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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