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

Arcadia Group Brands Ltd. v. Studio Moderna SA, No. 10 C 7790, Slip Op. (N.D. Ill. Aug. 15, 2011) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted plaintiffs' (collectively "Arcadia") motion to dismiss defendants' (collectively "Moderna") counterclaims and denied Moderna's motion to dismiss Arcadia's claims in this Lanham Act case involving Arcadia's TOPSHOP and Moderna's TOP SHOP TV marks.  In 2004, the parties entered a settlement agreement (the "Agreement") pursuant to which Moderna agreed not to use TOPSHOP to sell women's clothing in any country.  Arcadia alleged that Moderna violated the Agreement beginning in 2010 when it began selling women's clothing in the US on Moderna's topshoptv.com website.

Moderna's Motion

Moderna argued that Arcadia did not plausibly plead a protectable mark because Moderna was the first user of the mark.  But a motion to dismiss must assume the truth of Arcadia's allegations and Arcadia plausibly pled that it was the first user of the mark.  Additionally, Moderna's arguments ignored that Arcadia's complaint challenged the validity of Moderna's TOPSHELF TV registration.

Arcadia sufficiently pled fame as part of its trademark dilution claim.  While Arcadia did not parrot the language of the statute, it pled its TOPSHOP brands were "world famous", that the brand is one of the most successful in the world, that there have been millions of dollars in US sales and that the brand is regularly featured in US and international fashion and celebrity magazines and other media.

Arcadia's Motion

The Court dismissed Moderna's counterclaim for a declaratory judgment that it was the senior user of its TOP SHOP TV mark.  Arcadia, however, had never challenged Moderna's TOP SHOP TV mark.  Arcadia's only claims, in the suit or otherwise, were with respect to its TOPSHOP mark.  As a result, any decision regarding the mark would be an impermissible advisory opinion.

The Court dismissed Moderna's trademark misuse counterclaim because Moderna did not show that trademark misuse was an affirmative cause of action. Moderna was, however, allowed to amend its answer to add an affirmative defense of trademark misuse.

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Schultz v. iGPS Co., No. 10 C 71, Slip Op. (N.D. Ill. Aug. 16, 2011) (Hibbler, Sen. J.).

Judge Hibbler denied defendants' motion to dismiss plaintiff's patent infringement complaint for lack of standing. Defendants argued that plaintiffs did not hold enforceable title to the patents in suit. The patents in suit were intentionally abandoned by plaintiff's co-owner, CHEP. When plaintiff learned of the abandonment, he asked the Patent Office to revive the patents, explaining that his failure to pay the maintenance fee was inadvertent. The only way plaintiff could truthfully claim inadvertence was if he referred only to himself and not CHEP, which intentionally abandoned. As such plaintiff was estopped from arguing that he also revived CHEP's rights. Defendants argued that plaintiff had a fiduciary duty to assign his rights to his then employer, VTEC. But because VTEC never required plaintiff to assign his rights, the Court held that plaintiff had retained the remaining rights in the patents in suit based upon the facts alleged in the complaint. Plaintiff, therefore, had standing to sue.

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Trading Techs. Int'l., Inc. v. BCG Partners, Inc., No. 10 C 715, Slip Op. (N.D. Ill. May 5, 2011) (Kendall, J.).

Judge Kendall granted the FuturePath defendants' and denied the SunGuard defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Trading Technologies' ("TT") patent claims regarding trading software.

FuturePath:  The Court dismissed TT's direct infringement claims against FuturePath because TT did not accuse a specific FuturePath product or even category of product. TT's reference to unspecified "products" did not meet the Twomby or Iqbal standards, nor did it meet the Federal Circuit's requirements in McZel v. Spring Nextel Corp., 501 F. 3d 1354 (Fed. Cir. 2007). Identification of an accused product in TT's briefing and reference to FuturePath's website in TT's indirect infringement claims were insufficient.

TT did not allege that FuturePath had knowledge of TT's patents. Without an allegation of knowledge, TT's claims were deficient. The Court, therefore, dismissed all of TT's claims against FuturePath with leave to replead correcting the deficiencies.

SunGuard:  TT alleged that SunGuard had constructive knowledge of TT's patents, but not actual knowledge. Constructive knowledge was sufficient to maintain TT's claims, regardless of whether the Federal Circuit might later hold constructive knowledge insufficient.
 

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SCI Ill. Servs., Inc. v. Mitzvah Memorial Funerals, Inc., No. 10 C 6111, Slip Op. (N.D. Ill. Apr. 27, 2011) (Holderman, C.J.).

Judge Holderman denied defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff's Lanham Act false designation of original claim in this trademark dispute involving funeral home trademarks - Lloyd Mandel Levayah Funerals (plaintiff) and Lloyd Mandel Mitzvah Memorial Funerals (defendant). Plaintiff properly pled that it had a protectable mark and that there was a likelihood of confusion as to defendants' funeral services. The Court could not find the marks so dissimilar that plaintiff could not demonstrate a likelihood of confusion between the marks as a matter of law. The Court refused to consider defendants' motion as to other claims because defendant did not argue or support its motion as to the other claims in its briefing.
 

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Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. May 10, 2011) (Grady, J.).

Judge Grady granted in part defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Flava Works' complaint in this copyright case involving adult entertainment on the internet. 

Direct Infringement

Defendant Gunter operates myVidster.com where users could post content, including the allegedly infringing videos. But, as an internet service provider ("ISP") Gunter was not liable for his user's copying. And Flava Works did not allege that Gunter copied. The claim was, therefore, dismissed. 

Contributory Infringement

Flava Works could not rely solely upon its DMCA take down notices to defendants - even multiple notices - to prove either actual or constructive knowledge of the infringement. Flava Works, however, showed knowledge based upon seven notices it sent to defendants over seven months, in addition to the DMCA takedown notices. The contributory infringement count was, therefore sufficiently pled. 

Vicarious Liability

Flava Works did not sufficiently plead defendants' direct financial interest in the alleged infringement. Flava Works did allege that defendants' inexpensive storage space and video sharing attracts customers. But Flava Works did not allege that the presence of the allegedly infringing material drew customers. 

Inducement

The Court dismissed Flava Works' inducement claim. It was a "formulaic recitation" of the standard void of facts showing an infringing purpose of active steps fostering infringement. 

False Designation & Trademark Infringement

Defendants' alleged posting on their website of Flava Works' videos containing Flava Works marks did not constitute a use in commerce. 

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Free Green Can, LLC v. Green Recycling Enterprs., LLC, No. 10 C 5764, Slip Op. (N.D. Ill. June 20, 2011) (Coleman, J.).

Judge Coleman granted the individual defendant Menas' motion to dismiss the counterclaims against him and granted in part defendant Green Recycling Enterprises' ("GRE") motion to dismiss plaintiffs' (collectively "FGC") counterclaim in this trademark case regarding recycling can systems with integral advertising.

The Court's significant holdings included: 

• GRE did not plead sufficient facts showing Menas was PGC's alter ego that would warrant piercing the corporate veil. GRE only pled that Menas made significant investment in FGC and that Menas directed FGC without any factual support or detail.
   
• GRE's deceptive trade practices act claims were all based upon actions taken before Menas invested. So, Menas could not be liable for them. 

The holdings with respect to FGC's motion were all related to Nebraska causes of action. So, I am not addressing them here. 

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Dynamic Fluid Control (PTY) Ltd. v. International Valve Mfg., LLC, No. 10 C 7555, Slip Op. (N.D. Ill. May 11, 2011) (Darrah, J.).

Judge Darrah denied defendants' Fed. R. Civ. P. 12(b)(6) motions to dismiss in this patent and Lanham Act case involving air-release valves for water and sewage pipes, and plaintiff Dynamic Fluid Control's ("DFC") VENT-O-MAT mark.
 

Trademark Infringement

The fact that DFC's related entity DFC Water (Pty) Ltd. was the trademark registrant not DFC did not require dismissal. The terms "applicant" and "registrant" are read to include predecessor and future assignees of the mark.
 

Trade Dress Infringement

DFC was not required to specifically identify the elements of its trade dress in the complaint. DFC's general statement that its trade dress consisted of distinctive shape, contours . . . and color scheme" was sufficient. 
 

Unfair Competition

Because DFC's unfair competition claim was of the likelihood of confusion type, not the false advertising type, DFC was not required to meet Fed. R. Civ. P. 9(b) pleading standards. As a result, while DFC's allegations were "rather broad and somewhat ambiguous" they met the notice pleading standards. Defendants were on notice that DFC believed that customers were likely to be confused by defendants' use of the VENT-TECH mark and alleged use of DFC's trade dress.

The Court also noted that the Illinois Uniform Deceptive Trade Practices Act ("DTPA") codified unfair competition so it was unclear what limited exception DFC's state unfair competition claim might fall into, but the Court allowed the claim to remain. 

Deceptive Trade Practices Act

Once again, because DFC's DTPA claim was based upon likelihood of confusion, heighted pleadings standards were not required. And DFC's claim met the standard, as did its Lanham Act claims. 

Illinois Trade Secrets Act 

The Court held that DFC need not identify specific trade secrets that were allegedly misappropriated. DFC's general list of trade secret categories were sufficient to put defendants on notice.

Unjust Enrichment

Unjust enrichment is not a stand alone claim in Illinois. But it can be brought, although it is dependent upon other claims.

Pegasus Airline Group LLC

The individual defendants argued that there was no such entity as Pegasus Airline Group LLC ("PAG"). But as PAG was allegedly a limited liability company, not a corporation, defendant's argument that PAG was not incorporated was irrelevant. And defendant's only evidence that PAG did not exist came in its reply - too late. Finally, DFC's failure to prove service did not effect the validity of service.

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Caldera Pharms., Inc. v. Los Alamos Nat'l. Sec., L.L.C., No. 10 C 6347, Slip Op. (N.D. Ill. Mar. 11, 2011) (Bucklo, J.).

Judge Bucklo granted defendant UChicago Argonne's ("Argonne") Fed. R. Civ. P. 12(b)(1) & (b) motion to dismiss plaintiff Caldera's claims against Argonne in this patent dispute. Caldera was allegedly the exclusive licensee of the patents-in-suit and Argonne was allegedly using the patented technology in a partnership with the licensor. Argonne argued that there was no case or controversy for Caldera's declaratory judgment complaint because: 1) Argonne had no contract with Caldera; and 2) Caldera lacked the right to bring suit using the patents-in-suit. Caldera said its claims did not sound in breach of contract or patent infringement, but Caldera never explained what its claim was. And because Caldera had the burden of proof, the motion was granted.

Argonne also argued that Caldera's claims were not sufficiently plead. In response, Caldera simply restated its claim with the relevant portion bolded. But merely restating claims in bold does not support plaintiff's claims or overcome a motion to dismiss. The Court, therefore, dismissed the claims.
 

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Groupon Inc. v. MobGob LLC, No. 10 C 7456, Slip Op. (N.D. Ill. May 25, 2011) (Hibbler, Sen. J.).

Judge Hibbler granted plaintiff Groupon's motion to strike defendant MobGob's affirmative defenses and to dismiss MobGob's counterclaims, and denied MobGob's motion to dismiss Groupon's claim in this patent dispute involving online marketing systems.

MobGob's Motion to Dismiss

Groupon pled the intent elements of its indirect infringement claims upon information and belief. And that pleading was sufficient even though intent is governed by Fed. R. Civ. P. 9(b) because even pursuant to Rule 9(b), intent and knowledge can be pled generally. Additionally, it was reasonable to infer from Groupon's allegations that MobGob created or had someone create the accused system and the public nature of Groupon's patent that MobGob had actually knowledge of its accused infringement.

Groupon's Motions to Strike and Dismiss

First, Groupon sought to strike MobGob's affirmative defense of invalidity. The Court initially noted that motions to strike are disfavored because they are unlikely to streamline a case or make resolving the case more efficient. But the Court still struck MobGob's invalidity defense. MobGob's invalidity defense did nothing more than identify the relevant statutory sections, offering not a single fact, upon information and belief or otherwise. While the Court noted there were some policy reasons for not holding affirmative defenses and counterclaims to the Twombly/Iqbal standards, the Seventh Circuit required that they be met for any pleading. The Court, therefore, struck MobGob's invalidity defense. And for the same reason, the Court dismissed MobGob's invalidity counterclaim because it also offered no facts. The Court also noted that it would not excuse inadequate pleading because of the Local Patent Rule 2.3(b) invalidity contentions that MobGob would be required to serve shortly after answering. The LPR 2.3(b) disclosures require significantly more detail than Fed. R. Civ. P. 8 notice pleading. So, MobGob could meet its Rule 8 obligations without providing the level of detail required by LPR 2.3(b).

The Court also struck MobGob's affirmative defense regarding ownership of Groupon's patent because it also lacked factual support, and because it did not accept Groupon's facts as true, as required by an affirmative defense, instead challenging Groupon's facts.
 

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Estwing Manufacturing Co. v. CTT Tools, Inc., No. 11 C 2139, Slip Op. (N.D. Ill. May 18, 2011) (Shadur, Sen. J.).

Judge Shadur entered this order sua sponte to address deficiencies in defendant CTT's answer, affirmative defenses and counterclaims in this Lanham Act case, as he often does. First, CTT denied plaintiff Estwing's claims for which CTT lacked information or belief. But the Court noted that denying a statement for which one lacks information or belief was "oxymoronic." The Court, therefore, struck the denials.

The Court also struck, with leave to replead, each of CTT's affirmative defenses that were mere recitations of a legal principle and did not put Estwing or the Court on notice of the defense, as well as those defenses which did not accept the truth of Estwing's allegations.

Finally, the Court also struck CTT's counterclaims with leave to replead those that were not simply the "flip side" of Estwing's complaint, which "add nothing to the mix." For example, the Court suggested that CTT's counterclaim for cancellation of Estwing's mark might be replead, while declaratory judgment claims for noninfringement and invalidity should not be. Finally, the Court ordered that CTT should not be charged for its counsel's efforts in revising the papers, and counsel should send a letter to that effect to CTT, copying the Court.

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Hollander v. Hospira, No. 10 C 8151, Slip Op. (N.D. Ill. May 12, 2011) (Kendall, J.).

Judge Kendall granted defendant Hospira's motion to dismiss plaintiff Hollander's false patent marking claims for failure to sufficiently plead intent. But the Court gave Hollander 30 days to replead because its complaint was filed before the BP Lubricants decision on intent pleading was entered. The following items were of particular note:

• The fact that some of Hospira's patents expired for failure to pay maintenance fees was not sufficient.
   
• The fact that one patent was held unenforceable was not sufficient to show intent.
   
• Hospira's 10-K statements regarding its attention to third party patents were not relevant to Hospira's knowledge of its own patents.
   
• Packaging inserts inside a consumer package were not relevant because a consumer could not see them before purchasing the product, and therefore, could not be swayed its decisions based upon allegedly false marking.

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Simonian v. Astellas Pharma US Inc., No. 10 C 1539, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.).

Judge Coleman granted defendant Astella's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Simonian's false patent marking claims for failure to meet the Fed. R. Civ. P. 9(b) heightened pleading standards, but did so without prejudice. The Court held that Simonian's complaint contained "precisely the same" general allegations -- a "sophisticated company" that "knew or should have known" of the expired patent -- that the Federal Circuit rejected as deficient in BP Lubricants.
 

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Heathcote Holdings Corp., Inc. v. Maybelline LLC, No. 10 C 2544, Slip Op. (N.D. Ill. Mar. 15, 2011) (Pallmeyer, J.).

Judge Pallmeyer granted in part defendants' (collectively "Maybelline") motion to dismiss plaintiff Heathcote's false patent marking case. The Court also granted Maybelline's motion to transfer the case to the Southern District of New York. In this pre-BP Lubricants case, the Court held that Heathcote had sufficiently pled intent to deceive by pleading the allegedly false statement and Maybelline's knowledge of the false statement. These are the type of allegations specifically held to be in sufficient by BP Lubricants.

Heathcote did not oppose Maybelline's motion to dismiss L'Oreal USA Creative, so long as it was given leave to replead if it later found Maybelline's representations were wrong.

Finally, the Court transferred the case to Maybelline's home district, the Southern District of New York. One key factor was that the alleged conduct would have largely occurred at Maybelline's headquarters, in New York. The Court also held that the sources of proof in the case will be more accessible in New York than in Illinois.
 

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Simonian v. Maybelline LLC, No. 10 C 1615, Slip Op. (N.D. Ill. Mar. 14, 2011) (Kendall, J.)

Judge Kendall denied defendant Maybelline's motion to dismiss, granted its motion to transfer and denied as moot its motion to stay pending the Federal Circuits standing decision in Stauffer, in this false patent marking case. The Court held, pre-BP Lubricant, that Fed. R. Civ. P. 9(b) pleading applied to the intent element, but because the intent went to state of mind the fraud could be alleged generally, inconsistent with BP Lubricants. Because plaintiff Simonian had generally pled intent, the complaint was sufficient.

The Court then transferred the case to the Southern District of New York, Maybelline's home district. As a relator plaintiff, Simonian's choice of forum was given little deference. And the situs of material facts was where marking decisions were made - New York - not where marked products were bought - Illinois. The Court, therefore, transferred the case.
 

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Newt LLC v. Nestle USA, Inc., No. 09 C 4792, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.)

Judge Coleman denied defendants' Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction, but dismissed the false patent marking case pursuant to Rule 12(b)(6) for failure to sufficiently plead intent to deceive. The Court held that plaintiff Newt had standing to sue without proof of particularized injury, citing Stauffer v. Brooks Bros., Inc., 619 F. 3d 1321, 1327 (Fed. Cir. 2010).

Newt alleged that defendant Graphic Packaging ("GPI") falsely marked the products and sold them to the customer defendants. GPI made no allegations that the customer defendants marked the accused products. The customer defendants were, therefore, dismissed.

Further, all defendants were dismissed because Newt only made generalized intent allegations -- e.g., that defendants were "sophisticated companies." 

Finally, the Complaint was dismissed because Newt made only general allegations against all defendants, rather than particular allegations against each defendant.

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CP Prods., Inc. v. Does 1-300, No. 10 C 6255, Slip Op. (N.D. Ill. Feb. 7, 2011) (Shadur, Sen. J.).

Judge Shadur dismissed this case without prejudice as to all defendants based upon plaintiff's failure to serve any of the 300 Doe defendants within the required 120 days pursuant to Fed. R. Civ. P. 4(m). The Court also noted that it would be an "understatement" to call plaintiff's copyright infringement claims against 300 unidentified defendants " problematic." The Court raised a concern that plaintiff's use of a lawsuit to identify defendants "plainly has the potential to perpetrate the type of abuse" identified in various third party motions to quash.
 

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Free Green Can, LLC v. Green Recycling Enters., LLC, No. 10 C 5764, Slip Op. (N.D. Ill. Jan. 28, 2011 (Coleman, J.).

Judge Coleman granted the individual defendants' and Aslan Financial Group's Fed. R. Civ. P. 12(b) motion to dismiss plaintiff Free Green Can's trademark infringement and related state law claims. As an initial matter, the Court lacked subject matter jurisdiction as to all state law claims because while Free Green Can pled diversity of citizenship, it did not plead that the amount in controversy exceeded $75,000. Because Aslan Financial Group was only accused of state law claims, it was dismissed.

The federal trademark claims against the individual defendants were dismissed pursuant to Fed. R. Civ. P. 12(b)(6) because the individual defendants were accused of infringement based upon corporate acts of defendant Green Recycling Enterprises, of which each was an officer. But in order to state a claim for infringement, or any tort, by corporate officers or employees Free Green Can was required to allege each individual defendant had actively participated in the tortious acts. Because there were no such allegations, the infringement claims were dismissed.
 

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Healix Infusion Therapy, Inc. v. HHI Infusion Servs., Inc., No. 10 C 3772, Slip Op. (N.D. Ill. Jan. 27, 2011) (Zagel, J.).

Judge Zagel granted in part defendants' motion to dismiss plaintiff Healix Infusion Therapy's ("Healix") complaint, which included copyright infringement, trademark infringement and tortious interference claims, all related to the parties' competition for medical infusion services, as follows:

                                                                       Copyright

The Court dismissed Healix's claims for statutory damages on its copyright claims. The record showed that Healix filed for its copyright registrations after defendants began the alleged infringements, and more than three months after first publication. As a result, statutory damages were not recoverable. Healix could only receive actual damages. Furthermore, the Court denied Healix's request to amend its pleadings to include a demand for actual damages because Healix had already filed four complaints in the case and never sought actual damages.

                                                                       Trademark

Although sparse, Healix's trademark claims were sufficiently plead. Defendants argued that Healix had not pled use in commerce. But it was sufficient that Healix pled that Defendants displayed Healix's marks to the public and that Defendants allegedly copied Healix's marks with intent to use them in selling Defendants services to the consuming public.

                                                                  Tortious Interference

The Court took Defendants' motion to dismiss Healix's tortious interference claim under advisement, in favor of a fully briefed summary judgment motion on the issue that more fully set out the relevant facts.

The Court denied the defendant's motion to dismiss defendant Metro Infectious Disease Consultants ("Metro"). Defendants argued that Metro was never specifically accused to have committed any acts in the complaint. Instead, Healix defined as a single entity three defendants, including Metro. But the Court held that it was sufficient in this instance for Healix to group Metro with two other defendants and make all allegations against Metro as part of the defined entity.

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Bernina of Am., v. Imageline, Inc., No. 10 C 4917, Slip Op. (N.D. Ill. Jan. 18, 2011) (Shadur, Sen. J).

Judge Shadur sua sponte ordered defendant to correct its answer. Two paragraphs stated that defendant lacked information and belief sufficient to answer and, based upon that, denied the contentions. The Court explained that denying a contention for which one lacked information and belief was "oxymoronic." The Court gave defendant time to file a paper removing the relevant denials.
 

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Schultz v. iGPS Co. LLC, No. 10 C 71, Slip. Op. (N.D. Ill. Jan. 3, 2011) (Hibbler, Sen. J.)

Judge Hibbler granted in part defendant's Fed. R. Civ. P. 15 motion to amend its affirmative defenses. The doctrine of assignor estoppel did not ban defendant's invalidity and inequitable conduct defenses. An assignor is estopped from challenging the validity and enforceability of its assigned patent, but that estoppel is personal to the assignee. Because plaintiff was not the assignee, he had no right to assert estoppel. Furthermore, to determine whether defendants were in privity with the assignor would require facts beyond the complaint and was, therefore, not resolvable in a motion to dismiss.

The Court, however, did not accept defendants' inequitable conduct defenses because they failed to plead the necessary intent with particularity. Defendants only alleged that patentee failed to pay its maintenance fees and then improperly revived the patents, without more. Defendants were granted leave to replead those defenses, if possible, with sufficient facts.
 

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ThermaPure, Inc. v. Temp-Air, Inc., No. 10 C 4724, Slip Op. (N.D. Ill. Dec. 22, 2010) (Lefkow, J.).

Judge Lefkow granted defendants' RxHeat and Cambridge Engineering's (collectively "Cambridge") motion to dismiss or sever and Temp-Air's motion to sever and transfer in this patent litigation involving the use of heat to remediate structures removing mold, bacteria, insects or rodents, among other things. Neither Cambridge nor Temp-Air were related to any of the other defendants. As such, their sales of different products could not satisfy the Fed. R. Civ. P. 20(a) joinder requirement that the claims arise out of the same transaction or occurrence. It was not enough that plaintiff accused that each defendant infringed the same patent. Furthermore, plaintiff never identified which specific products it accused of infringement, even during briefing of the instant motion. So, there was no way for the Court to determine how similar the accused products actually were. The Court, therefore severed Cambridge's and Temp-Air's cases.

The Court then transferred Temp-Air's case. ThermaPure's choice of forum was given little deference because it was neither party's home district. The situs of material events was Minnesota, where ThermaPure is headquartered and conducts most of its business. The fact that ThermaPure sold accused products to Illinois customers was unavailing. Additionally, most of the documents were located in Minnesota. Temp-Air only identified party witnesses, which are given less consideration, that were located in Minnesota. But ThermaPure did not identify any Illinois witnesses.

Neither party argued that either district would resolve the claims faster, and ThermaPure's citation to the Northern District's Local Patent Rules for reducing costs and expenses of the litigation was not relevant. The Court, therefore, transferred Temp-Air's case to Minnesota. And having transferred the case as to Temp-Air, the Court stayed ThermaPure's case against Temp-Air's alleged Illinois customer Gierstsen Illinois. That case could be reopened, as necessary, in the Northern District after Temp-Air's case was resolved, as it should significantly narrow, if not resolve, the claims against Gierstsen Illinois.
 

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Patent Compliance Group, Inc. v. Brunswick Corp., No. 10 C 4645, Slip Op. (N.D. Ill. Jan. 14, 2010) (Der-Yeghiayan, J.).

Judge Der-Yeghiyan denied defendant Brunswick's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Patent Compliance Group's ("PCG") false patent marking claims regarding Brunswick's exercise equipment. First, the Court held that Rule 9(b) heightened pleadings applied to the intent to deceive requirement of false patent marking, and anologized to the Federal Circuit's inequitable conduct pleading requirements. While PCG's first complaint alleging that Brunswick was a sophisticated company, PCG's amended complaint attaching Patent Office documents identifying the expiration dates of the allegedly expired patents and identifying Brunswick's in-house patent counsel was sufficient.
 

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Golden v. Nadler Pritikin & Mirabelli, No. 05 C 283, Slip Op. (N.D. Ill. Dec. 21, 2010) (Gottschall, J.).

Judge Gottschall denied plaintiff Golden's motion to dismiss or for a more definite statement pursuant to Fed. R. Civ. P. 12(b)(6) & (e) in this copyright dispute over real estate listings. Golden was not required to attach a copy of its copyright registration to its complaint. And while it was an "extraordinarily close question whether Golden's "bare-bones" amended complaint satisfied Twombly, it did plead ownership of a registered copyright and it did plead that defendant allegedly copied the work without consent. Because Golden's complaint was so bare-bones, defendant's motion to dismiss was not in bad faith. The Court, therefore, denied Golden's Fed. R. Civ. P. 11 motion regarding the motion to dismiss.

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Trading Technologies Int'l, Inc. v. CQG, Inc., No. 10 C 718, Slip Op. (N.D. Ill. Jan. 24, 2011) (Shadur, Sen. J.).*

Judge Shadur sua sponte dismissed defendants' (collectively "CQG") noninfringement and invalidity counterclaims. The Court explained that "mirror image" noninfringement and invalidity patent counterclaims are "seemingly meaningless." And the "amorphous nature" of CQG's counterclaims resulted in them being especially unnecessary. The Court, therefore, dismissed the declaratory judgment counterclaims.

*Click here for much more on this and TT's other cases in the Blog's archives.
 

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Bernina of Am., Inc. v. Imageline, Inc., No. 10 C 4917, Slip Op. (N.D. Ill. Jan. 12, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte struck two paragraphs of plaintiff's answer and affirmative defenses to defendants' counterclaims. Both paragraphs denied allegations for which plaintiff lacked information and belief, which was both "oxymoronic" and in violation of Fed. R. Civ. P. 8(b)(5).
 

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Sullivan d/b/a Survivor v. Jamison, No. 06 C 5240, Slip Op. (N.D. Ill. Dec. 1, 2010) (Coleman, J.).

Judge Coleman denied counter-defendants' (collectively "Survivor Music") Fed. R. Civ. P. 12(b)(6) motion to dismiss counter-plaintiffs' breach of contract and related claims in this dispute over royalties due based upon the copyrighted songs of the band Survivor -- Eye of the Tiger was one of their big hits. Although counter-plaintiffs were not signatories to the agreements from which the song royalties flowed, they were replacement members of Survivor and as such had agreed in writing to be bound by and enjoy the benefits of the agreements. As to Survivor Music's statute of limitations claim, although the claim was older than five years, counter-plaintiffs did not discover it until less than five years before filing their counterclaims.

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Simonian v. Allergan, Inc., No. 10 C 2414, Slip Op. (N.D. Ill. Nov. 30, 2010) (St. Eve, J.).

Judge St. Eve denied defendant Allergan's motion to dismiss plaintiff Simonian's false patent marking claim regarding Allergan's RESTASIS product. The Court, citing its Blistex decision, held that false patent marking claims were subject to Fed. R. Civ. P. 9(b) heightened pleading requirements. Simonian's general averment that Allergan marked with an allegedly expired patent with an intent to deceive was sufficient, without more facts.

The Court also held that the fact that RESTASIS was marked with an unexpired patent, did not insulate Allergan from marking with an expired patent as well, citing Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347 (Fed. Cir. 2005). In Clontech, the Federal Circuit explained that "an unpatented article" was one "not covered by at least one claim of each patent with which the article is marked." Id. at 1352 (emphasis added).
 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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Optics Planet, Inc. v. OpticSale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Jul. 14, 2010) (Shadur, Sen. J.).

The Court granted in part Plaintiff Optics Planet's Fed. R. Civ. P. 12(b)(6) motion to dismiss. Initially, the Court noted that defendants' tortious interference with prospective business relationships and with prospective economic advantage were not separate counts, but at most separate theories of recovery for a single court, calling the claims "Tweedledum and Tweedledee."

But the claims, whether single or multiple counts did not survive the competitor's privilege. Defendants offered no evidence showing that plaintiff was doing anything except "feathering its own competitive nest". Defendants' attempted monopolization claims were also dismissed because there was no evidence that plaintiff did anything but compete, and there was no indication that plaintiff would or could acquire power over market pricing.

Finally, the Court dismissed defendant's accounting counterclaim to the extent the claim was based upon the dismissed counterclaims.

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Simonian v. Edgecraft Corp., No. 10 C 1263, Slip Op. (N.D. Ill. Sep. 20, 2010) (Grady, Sen. J.).

Judge Grady granted defendant Edgecraft's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Simonian's false patent marking claims. The Federal Circuit's recent decisions rejected two of Edgecraft's three arguments. In Stauffer, the Federal Circuit held that any individual had standing to sue for false marking without regard to injury in fact. And in Solo Cup, the Federal Circuit held that marking with an expired patent could constitute false patent marking.

The Court, however, held that Fed. R. Civ. P. 9(b) heightened pleading standards applied to the intent to deceive requirement. Simonian's "bare allegations" - and otherwise only "mere labels and conclusions" - at best suggested a "possibility of misconduct," not intent. While Rule 9(b) does allow intent to be pled generally, the allegations must create a reasonable inference that defendant acted with the necessary intent.
 

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Trading Techs. Int'l., Inc. v. CQG, Inc., No. 10 C 718, Slip Op. (N.D. Ill. Aug. 12, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte struck defendants' answer and counterclaim with leave to file an amended answer and counterclaim based upon a variety of pleading deficiencies. First, the Court struck statements that the patents-in-suit "speak for [themselves]" and related answers citing State Farm Mut. Auto Ins. Co. v. Riley, 199 F.R.D. 276, 279 (N.D. Ill. 2001). But the Court granted CQG leave to replead those answers.

The Court also struck several affirmative defenses. CQG's Fed. R. Civ. P. 12(b)(6) defense was struck because it was not an affirmative defense. And no leave to replead was granted because when plaintiff Trading Technologies' ("TT") allegations were accepted as true CQG's defense was "simply dead wrong." The Court also struck various affirmative defenses that were only "skeletal recitals" of legal doctrines, with leave to replead if CQG could. Finally, the Court struck CQG's noninfringement defense because denials in the answer already brought infringement into issue.

The Court also struck CQG's counterclaim with leave to replead for failure to meet the Twombly/Iqbal pleading standards. Finally, the Court ordered that CGQ's counsel should not charge CQG for preparing CGQ's amended answer and counterclaim and should send CQG a copy of the Court's Order.
 

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Sep. 10, 2010) (St. Eve, J.).

Judge St. Eve denied defendant Lear's motion to amend its complaint adding new inequitable conduct defenses. While leave to amend is freely granted and delay alone is usually not enough to deny leave, Courts retain discretion to deny leave to amend. In this case, Lear waited until after fact discovery closed in this five-year-old case to seek leave to amend. And without explanation, Lear appeared in court three times and eight entries were added to the docket between the depositions in which Lear allegedly discovered the inequitable conduct and filing of its motion. Furthermore, Lear had been aware of the individuals accused of committing the inequitable conduct for several years. Finally, plaintiff Chamberlain Group would have been prejudiced by amendment at this late date because the expert reports the parties had already exchanged would have to have been revised or supplemented if Lear was allowed to amend.
 

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Trading Techs., Intl., Inc. v. BGC Partners, Inc., No. 10 C 715, Slip Op. (N.D. Ill. Aug. 17, 2010) (Kendall, J.).

Judge Kendall denied defendant BGC Partners' ("BGC") motion to dismiss as moot because of plaintiff Trading Technologies' ("TT's") subsequently filed amended complaint. Courts routinely deny without prejudice motions to dismiss when an amended complaint is filed, but this case was unique because TT opposed dismissal. TT argued that BGC's improper service argument should be dismissed with prejudice and the remaining arguments should be heard to avoid delay because TT continued asserting similar claims in the amended complaint. The service arguments were, however, moot because BGC did not make the service arguments in response to the amended complaint.

The Court also denied the motion to dismiss without prejudice as to the remaining arguments. While the claims may have remained factually similar, BGC's arguments went to jurisdiction, not the sufficiency of the facts. Furthermore, the amended complaint added several new defendants. BGC and the other defendants would have been prejudiced if they were not given the opportunity to review the amended complaint and to collectively decide how to address any jurisdiction or venue issues.

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McNamara v. Natural Organics, Inc., No. 10 C 3544, Slip Op. (N.D. Ill. Sep. 1, 2010) (Shadur, Sen. J.).

Judge Shadur denied defendant's motion to stay this false patent marking case pending the Federal Circuit's standing decision in Stauffer (Stauffer has since been decided). The Court also dismissed plaintiff's second amended complaint for failure to plead the requisite intent to deceive pursuant to Fed. R. Civ. P. 9(b) heightened pleading standards. Plaintiff attempted to plead intent upon information and belief using a nine-year-old statement made on defendant's behalf about its skilled legal representative in an FTC proceeding. But that quoted language referred to a lawyer who was deceased, and he had passed away even before the FTC proceeding. Because plaintiff had already been given two chances to replead, the Court dismissed the case.
 

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Simonian v. Pella Corp., No. 10 C 1253, Slip Op. (N.D. Ill. Aug. 5, 2010) (Bucklo, J.)

Judge Bucklo granted defendant Pella's 28 U.S.C. § 1404(a) motion to transfer plaintiff Simonian's false patent marking case to the Southern District of Iowa. The court held that Simonian's choice of forum was not given deference, as it normally would be. First, the real plaintiff was the United States, not Simonian. Second, the situs of the material events was Iowa where Pella made its marking and packaging decisions, not Illinois where some marked products were sold. Simonian's numerous other false marking cases filed in the district did not weigh against transfer. Each of those cases involved different defendants, different accused products and different allegedly expired patents.
 

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Simonian v. Merck & Co., Inc., No. 10 C 1297, Slip Op. (N.D. Ill. Jul. 16, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte struck portions of defendants' answer to plaintiff's false patent marking case. First, the Court struck denials that followed defendants' statements that they lacked information and belief. While a lack of information and belief acts as a denial, denying allegations as to which you cannot form a belief is "oxymoronic."

Second, the Court struck defendants' improper affirmative defenses. Several of defendants' affirmative defenses were improper because they had already been brought into issue by denying allegations in the complaint. The Court also struck defendants' Fed. R. Civ. P. 12(b)(6) affirmative defense with leave to promptly file a "properly supported" motion to dismiss.
 

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Simonian v. Irwin Indus. Tool Co., No. 10 C 1260, Slip Op. (N.D. Ill. Aug. 27, 2010) (Lindberg, Sen. J.).

Judge Lindberg denied defendant Irwin Industrial Tool's ("Irwin") motion to dismiss plaintiff Simonian's false patent marking case. First, the Court denied Irwin's standing arguments. While the Federal Circuit had not yet issued its Stauffer decision regarding standing, the Court used similar reasoning. The Court analogized to the False Claims Act and held that any person had standing without proof of an injury in fact. The false marking injury is to the government and the public at large.

The Court also held that Simonian sufficiently pled the requisite intent to deceive, whether notice pleading or Fed. R. Civ. P. 9(b) standards applied. Simonian pled that Irwin was a "sophisticated company" with years of patent experience and that Irwin knew or should have known the patent was expired when it was marked.
 

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Simonian v. Bunn-O-Matic Corp., No. 10 C 1203, Slip Op. (N.D. Ill. Aug. 23, 2010) (Zagel, J.).

Judge Zagel stayed plaintiff Simonian's false patent marking case pending the Federal Circuit's standing decision in Stauffer - which has since issued, holding that any person has standing without regard to injury in fact.

The Court also indicated that, once the stay was lifted, it would deny defendant's Fed. R. Civ. P. 12(b)(6) motion to dismiss Simonian's complaint for failure to adequately plead intent to deceive pursuant to Fed. R. Civ. P. 9(b). Simonian pled that defendant knowingly marked its coffeemakers with expired patents. That was sufficient to meet the rebuttable presumption of intent as set out in Solo Cup. It did not matter that Simonian's claims were generic as evidenced by the use of nearly identical allegations in more than forty false patent marking cases Simonian had filed in the Northern District of Illinois.

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OpticsPlanet, Inc. v. OpticSale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Jul. 14, 2010) (Shadur, Sen. J.).

Judge Shadur granted in part plaintiff OpticsPlanet's Rule 12(b)(6) motion to dismiss certain of defendants' (collectively "OpticSale") counterclaims in this dispute over trade names. As an initial matter, the Court noted that OpticSale's tortious interference with prospective business relationships and with prospective economic advantage claims were properly brought as a single federal claim pursuant to Fed. R. Civ. P. 10(b). Furthermore, both counts failed at the hands of the competitor's privilege. Businesses are free to compete to divert business from their competitors unless, among other exceptions, the competition is solely motivated by spite or ill will. OpticSale made no such allegation in this case. And the Court noted that OpticSale had competed with OpticsPlanet in similar ways. 

The Court also dismissed OpticSale's Sherman Act attempted monopolization claim because there was no indication that OpticsPlanet controlled or could come to control market prices. The Court further noted that the claim improperly sought to turn competition into attempted monopolization.

Finally, the Court dismissed OpticSale's accounting claim to the extent its scope was reduced by dismissal of the other claims.

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Golden Golf Lighting, Inc. v. Greenwich Indus., L.P., No. 07 C 1086, Slip Op. (N.D. Ill. Jun. 18, 2010) (Andersen, J.).

Judge Andersen denied defendant Clarin's Fed. R. Civ. P. 8(a), 9(b) and 12(b)(6) motion to dismiss this Lanham Act case regarding Clarin's allegedly fraudulent procurement of a trademark related to folding seats.

First, 15 U.S.C. § 1120 limited recovery to injuries sustained "in consequence" of a trademark registered by fraud or false reasons. The damages need not be to a trademark, as Clarin argued. Plaintiff's alleged damage because its folding chairs were seized at the U.S. border based upon alleged infringement of Clarin's trademark and plaintiffs allegedly lost business based upon the seizure. Those facts were sufficient to plead that Clarin was the proximate cause of plaintiff's alleged damages.

Plaintiffs pled fraud with sufficient particularity by incorporating by reference the fraud-related decision in Specialized Seating v. Greenwich Indus., L.P., 472 F.Supp. 2d 999 (N.D. Ill. 1999). Finally, Plaintiffs did not violate Fed. R. Civ. P. 8(a) or 8(d)(1) by combining two claims into a single count. Notice pleading did not require separate headings for each claim.

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Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. May 4, 2010) (St. Eve, J.).

Judge St. Eve granted in part plaintiff/counter-defendant Sloan's Fed. R. Civ. P. 12 motions in the patent infringement case involving a flush valve handle assembly. The Court dismissed defendant/counter-plaintiff's (collectively "Zurn") invalidity and noninfringement counterclaims to the extent they challenged patent claims other than those identified as allegedly infringed in Sloan's complaint. The Court could have exercised jurisdiction over the counterclaims if Zurn had met the MedImmune standard independently for each of Sloan's unasserted claims, but Zurn did not.

The Court denied Sloan's Fed. R. Civ. P. 12(b)(6) motion to dismiss Zurn's inequitable conduct counterclaim. Zurn met the materiality standard by pleading that Sloan should have known that admissions made in a prior, related reexamination proceeding were relevant to the Examiner in the later application. 

The Court dismissed Zurn's estoppel and misuse affirmative defenses. Each were pled in a single sentence and without particularized facts.

The Court also dismissed Zurn's lack of actual notice affirmative defense. Zurn also denied Sloan's actual notice allegation in its answer. Because actual notice was denied in the answer, it was not a proper affirmative defense. Finally, the Court dismissed Zurn's noninfringement and exceptional case affirmative defenses.  Neither was a proper affirmative defense. 

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Bone Care Int'l, LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Apr. 23, 2010) (Dow, Jr.).

Judge Dow granted in part plaintiffs' motion to dismiss plaintiff's inequitable conduct affirmative defenses and corresponding counterclaim in this patent case related to a treatment for hyperthyroidism. The Court dismissed defendants' defenses and claims based upon infectious unenforceability. Defendants showed a relationship between the patents-in-suit and the earlier patents. But defendants did not meet the Fed.R.Civ.P. 9(b) pleading standards because they did not plead an "immediate and necessary" relationship between the patents-in-suit and the earlier patents in the family.

The Court denied the motion to dismiss as to prior art references that had been disclosed in earlier, related patent prosecutions, but not the prosecutions of the patents-in-suit. Defendants' allegations were sufficient to allow the Court to infer that the prior art references were intentionally withheld to avoid rejections similar to those from the earlier prosecutions based upon that prior art. It did not matter that defendants did not allege that the prior art references were not cumulative. Rule 9(b) pleading is designed to put the opposing part on notice, not to require the recitation of "certain magic words." The Court dismissed defendants' allegations regarding allegedly false statements to the PTO because other writings requested the applicant did not believe the statements to be false. 

Defendants' allegations regarding certain of plaintiffs' undisclosed articles were sufficiently plead. Defendants identified specific articles written by patentee, and plead that they were relevant and that patentee failed to disclose them. 

Finally, defendants sufficiently pled that plaintiff's submitted article made misleading statements about the state of the art. Among other reasons, the Court noted that the truth of the contested statements could not be decided upon a motion to dismiss. 

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Viskase Companies, Inc. v. World Pac Int'l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 10, 2010) (Bucklo, J.).

Judge Bucklo granted declaratory judgment defendants' (collectively "World Pac") motion to dismiss declaratory judgment plaintiff Viskase's state law tort claims as preempted by Viskase's declaratory judgment patent claims. Patent holders have a basis right to assert their patents. In order to make tort claims based upon patent assertions, therefore, Viskase had to show that defendants acted in bad faith in asserting their patents, and the bad faith had both objective and subjective components. Viskase's general statement of bad faith did not meet the Twombly/Iqbal pleading standards. Furthermore, defendants need not have stated in their assertion letters to third parties that Viskase objected to defendants' claims.

The Court had specific jurisdiction over foreign defendant World Pac. World Pac's filing for U.S. patents and its enforcement letters regarding the patents-in-suite created specific jurisdiction.

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Adams v. Pull'R Holding Co., LLC, No. 09 C 7170, Slip Op. (N.D. Ill. Apr. 20, 2010) (Gettleman, Jr.).

Judge Gettleman granted defendants' motion to dismiss as to plaintiff's civil conspiracy claim and granted in part plaintiff's motion to dismiss defendants' trade secret and related state law counterclaim in this case involving hoists, fence installation tools and other do it yourself tools. The Court dismissed plaintiff's civil conspiracy claim because it was not based upon an underlying tort claim. The purpose of a civil conspiracy is to extend tort liability to members of a conspiracy. 

The Court denied plaintiff's motion to dismiss as to defendants' breach of contract counterclaim.  The motion was premised upon plaintiff's argument that he was not a party to the agreement. But plaintiff was not allowed to make that argument after having pled in his complaint that he was a party to the agreement. 

The Court also denied plaintiff's motion as to defendants' trade secret misappropriation claim. It did not matter that defendants' allegations were all pled on information and belief. Defendants' pleading sufficiently provided plaintiff the what, where, when, why and how required by the pleading standards. 

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Continental Datalabel, Inc. v. Avery Dennison Corp., No. 09 C 5980, Slip. Op. (N.D. Ill. Dec. 9, 2009 (Shadur, Sen. J.).

Judge Shadur ordered the parties to be prepared to discuss at a status conference why defendants' respective noninfringement and invalidity declaratory judgment counterclaims should not be stricken as duplicative of plaintiff's patent infringement claims. 

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

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Continental Datalabel, Inc. v. Avery Dennison Corp., No. 09 C 5980, Slip Op. (N.D. Ill. Nov. 19, 2009) (Shadur,  J., Sen.).

Judge Shadur sua sponte notified the parties to be prepared to discuss plaintiff Continental Datalabels' (“CDL”) addition of defendant Memorex in this patent infringement and Lanham Act dispute.  CDL added Memorex by amending CDL’s complaint pursuant to Fed. R. Civ. P. 15(a) of right, before the original defendant Avery Dennison Corp. (“ADC”) answered.  The Court noted that Memorex’s and ADC’s accused products appeared to be unrelated.  The infringement proofs, therefore, were unlikely to have much overlap, although the invalidity cases would likely have commonality.  

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SourceOne Global Partners LLC v. KGK Synergize, Inc., No. 08 C 7403, Slip Op. (N.D. Ill. Jul. 21, 2009) (Schenkier, Mag J.).

Judge Schenkier dismissed declaratory judgment defendant/counter-plaintiff KGK Synergize's ("KGK") patent, trademark, Lanham Act and related state law claims against declaratory judgment plaintiff/counter-defendant SourceOne's President for failure to meet the Twombly/Iqbal pleading standards.*  The Court held that KGK had not sufficiently pled allegations to support the factors in the veil piercing analysis, in particular:

• Allegations of episodes of "subpar record keeping" was not sufficient to prove SourceOne's failure to observe corporate formalities;
   
• Conclusory statements that SourceOne's corporate officers were allegedly not given autonomy to make decisions were not sufficient to show that officers or directors were non-functioning;
   
• The President and his family borrowing against a home equity loan to support SourceOne was not sufficient to show SourceOne was a "mere 'dummy or sham.'"; and
   
• the allegation that the President exerted significant control over SourceOne and personified the company was not sufficient to show a failure to maintain arm's-length relationships among related entities.

The Court also held that KGK's direct patent infringement claims against the President did not meet the Twombly/Iqbal pleading standards.  KGK's only allegations about the President were conclusory and tied to SourceOne's alleged infringing actions.  KGK did not plead sufficient facts about the President independent of SourceOne to support direct patent infringement claims.

*  For more on the application of the Twombly pleading standards to patent cases, click here in the Blog's archives.

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Last week, the Northern District provided tips for opening new cases using ECF.  The most important tip seems to be that the Clerk's office is there to help if you have any problems.  Here they are: 

• During the initial case opening sequence, select the correct divisional office (Chicago or Rockford) in which you want to file your case.
  
   
• If you want to practice opening a case, use the training application here, not a live ECF session. 
   
• If you make a mistake while opening your new civil case, do not open a new case or complete the current case with the mistake.  Instead, exit the case opening sequence before it is complete, if possible, and call the Clerk's Office at 312-582-8727.  They will help you correct the mistake.
    
• If you have opened a case incorrectly, do not open another case, call the Clerk's office and they can help fix the mistake in the originally opened case. 
   
• If you are not sure how to open a civil case, you can find instructions at:  E-Filing Information. 
   
• If you are not able to pay the filing fee while e-filing your initiating document, use one of the events in the Civil/Other Filings/Notices category to pay the fee.
   
• When submitting a Notice of Removal, enter the Court name and Case number for the State court case. (See Step No. 35 in the instructions for opening a civil case). The parties should be added as they were named in the complaint filed in the State Court. 
   
• The summons form(s)should be emailed to intake_ilnd@ilnd.uscourts.gov. You should not attach them to the complaint or efile them. 

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Connetics Corp. v. Pentech Pharms., Inc., No. 07 C 2230, Slip Op. (N.D. Ill. May 8, 2009) (Gottschall, J.).

Judge Gottschall granted defendants' motion to amend their answers to include new invalidity and unenforceability affirmative defenses and counterclaims in this ANDA patent case involving plaintiff's patented pharmaceutical LUXIQ.  The Court held that the amended answers and counterclaims were appropriate, although they were sought after the Court's deadline to amend the pleadings for reasons similar to Judge Lienenweber's analysis in a motion to amend adding the same defenses and claims in a related case -- click here to read the Blog's post on that opinion.  Of particular note, the Court held that the delay at issue is delay of the trial, not a party's delay in seeking to amend.  In this case, the Court had recently extended fact discovery.  So, plaintiffs had time to seek discovery on the defenses and counterclaims without delaying the trial date.

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Connetics Corp. v. Pentech Pharms., Inc., No. 08 C 2230, Slip Op. (N.D. Ill. May 8, 2009) (Leinenweber, J.).

Judge Leinenweber granted defendants' motion to amend their answers including new invalidity and unenforceability affirmative defenses and counterclaims in this ANDA patent case involving plaintiff's patented pharmaceutical OLUX.  The Court held that the amended answers and counterclaims were appropriate because they were filed before the Court's deadline for amended pleadings, even though the parties briefed the motion to amend as if the amendment was sought after the deadline.  Furthermore, defendants did not unduly delay in seeking to amend.  The motion to amend was filed within several months of depositions in which new information necessary for the amendments was disclosed.  And the litigation was still in its early stages so the amendments would not cause any prejudice.

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Niro Scavone's Joe Hosteny recently responded to my John Marshall Review of Intellectual Property article, The Uneven Application of Twombly in Patent Cases: An Argument for Leveling the Playing Field (click here to read it).  In the article, I argued that Twombly's increased pleading standard should be applied to patent cases, but that it was being applied unevenly to patent plaintiffs and defendants.  To fix that, I argued that plaintiffs should be required to identify the asserted claims and the products accused of infringing those claims in their complaints. 

Hosteny responded in his February 2009 IP Today column, the Litigator's Corner -- click here to read it -- contending that increasing pleading standards, in his experience, has either wrongly streamlined cases, where a defendant attempted to limit plaintiff to its original complaint regardless of what discovery later showed, or has increased the cost of discovery when plaintiff was required to move to compel after defendant unreasonably limited the scope of discovery defendant would provide based upon a more detailed complaint.

Hosteny admits his argument is based upon anecdotal evidence, and I do not fault him for that.  As litigators, we constantly rely upon our own anecdotal evidence to make decisions about our cases.  But I do disagree with Hosteny's conclusion.  If the Federal Circuit adopted rules requiring more detailed pleadings, or even if just an individual district court did it, just like with other rules a body of law would be created guiding litigants in future cases.  Over time Hosteny's anecdotal examples would stop recurring as defendants relied upon prior opinions telling them how much discovery beyond the claims was required.  And plaintiffs would learn how long they generally had to amend their complaints to add new claims or products.  So, while increased patent pleading standards might briefly increase the scope of discovery in patent cases, over time increased pleading standards would significantly reduce the cost and scope of patent cases.

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Nova Design Build, Inc. v. Grace Hotels, LLC., No. 08 C 2855, Slip Op. (N.D. Ill. Mar. 25, 2009) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted in part and denied in part plaintiffs' Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants' counterclaim copyright infringement case. Plaintiffs claimed that they developed plans for a Holiday Inn Express hotel defendants planned to build, and that defendants infringed the copyrights in plaintiffs’ plans by revising them with another firm and using them without plaintiffs’ permission. The Court previously held that plaintiffs’ copyright claim was sufficiently pled -- click here for more on that opinion and the case generally in the Blog's archives.  After that opinion, defendants answered the complaint and filed a counterclaim seeking among other things declaratory relief.  The Court dismissed the counterclaim as to plaintiff Annex whom defendants agreed should be dismissed.  And the Court struck defendants' request that plaintiffs' complaint be struck because the Court already denied defendants' Rule 12(b)(6) motion to dismiss.

But the Court denied to dismiss defendants' counterclaim.  Plaintiffs argued that the counterclaim should be dismissed because it was not clearly pled, the legal basis was not specifically identified and it lacked factual detail.  But the Court held that notice pleading did not require good grammar or organization, nor were specific facts required.  Because defendants' counterclaim put plaintiffs on notice that their copyright was allegedly a derivative works to which defendants maintained certain rights.  To the extent plaintiffs believed additional information, the appropriate remedy was a Rule 12(e) motion for a more definite statement.  But the Court noted that a more definite statement was not required in this case because defendants' counterclaim put plaintiffs on notice.

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Aller-Caire, Inc. v. Am. Textile Co., No. 07 C 4086, Slip Op. (N.D. Ill. Feb. 11, 2009) (Andersen, J.).

Judge Andersen granted in part plaintiff's motion to strike certain of defendant's affirmative defenses in this trademark and unfair competition case.  Defendant's competitor's privilege defense was sufficiently pled, although it alleged no specific facts, because it put plaintiff on notice.  Plaintiff knew that the parties were the competitors.  The Court struck the remaining two affirmative defenses:  1) plaintiff's damages were not the proximate result of defendant's alleged acts; and 2) a reservation of rights to amend the defenses.  Neither were affirmative defenses and, therefore, could not be properly pled.

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Ratner v. M&M Control Serv., Inc., No. 08 C 6928, Slip Op. (N.D. Ill. Jan. 5, 2009) (Shadur, Sen. J.).

Judge Shadur ordered that certain denials in patent defendant's answers be stricken pursuant to Fed. R. Civ. P. 8(b)(5) and 11 (b).  The Court held that when a defendant lacked sufficient knowledge to answer an allegation and so stated, it was deemed a denial pursuant to Rule 8(b)(5).  But defendant cannot actually deny the allegation because defendant has already stated that it lacks sufficient knowledge to admit or deny the allegation.  As such, denying the allegation conflicts with Rule 11(b) obligations.

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Kingsbury Int'l., Ltd. v. Trade the News, Inc., No 08 C 3110, Slip Op. (N.D. Ill. Oct. 28, 2008) (Lindberg, Sen. J.).

Judge Lindberg denied defendant's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff's copyright infringement claim and defendant's alternative Fed. R. Civ. P. 12(e) motion for a more definite statement of the claim. Plaintiff alleged that it owned a copyright in its Chicago Business Barometer monthly business index; that it specifically informed its subscribers that the index was copyrighted and that it could not be reproduced or rebroadcast in any manner until plaintiff publicly released the index at 8:45 AM; and that defendant released unidentified “parts” of the May 2007 issue of the index at 8:42 AM, three minutes before plaintiff's public release. The Court held that these allegations met the Fed. R. Civ. P. 8(a) pleading standards, without specifically identifying which parts of the index were copied, noting that copyright claims did not require Fed. R. Civ. P. 9(b) heightened pleading. Furthermore, defendant's defense that, if anything, it copied only unprotected facts was not appropriate for a Rule 12(b) determination on the pleadings.

Finally, the Court held that the complaint was not “so vague or ambiguous” that it warranted requiring a more definite statement.

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Consumers Digest Comms., LLC v. Westpoint Home, Inc., No. 08 C 3486, Slip Op. (N.D. Ill. Dec. 9, 2008) (Shadur, Sen. J.).

Plaintiff filed an amended complaint including a copyright claim, after Judge Shadur orally granted defendant's motion to dismiss its original copyright and related state law claims.  The Court noted that the amended complaint did not include a copy of the allegedly infringing publications as exhibits.  The Court, therefore, ordered plaintiff to deliver copies of the allegedly infringing publications to the Court and defendant's counsel. 

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The TicketRESERVE, Inc. v. Viagogo, Inc., No. 08 C 5202, Slip Op. (N.D. Ill. Nov. 19, 2008) (Shadur, Sen. J.).*

Judge Shadur ordered that plaintiff's amended complaint was entered without need for plaintiff's motion for leave to file the amended complaint.  While defendant Yoonew had already answered the complaint, the amendment added a party that appeared related to defendant Viagogo, which had filed a motion to dismiss instead of answering.  The Court held that plaintiff's Fed. R. Civ. P. 15(a)(1)(A) absolute right to amend its complaint before it is answered was not destroyed as to a particular defendant until that defendant answers.  So, plaintiff was free to amend any claims made against Viagogo until Viagogo answered, but presumably would have to seek leave to amend should the amendments impact defendant Yoonew.

*  This case is assigned to Judge Moran, but during Judge Moran's absence from the bench Judge Shadur has taken over his docket.

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Edge Capture L.L.C. v. Lehman Bros. Holdings, Inc., No. 08 C 24112, Slip Op. (N.D. Ill. Aug. 28, 2008) (Darrah, J.).

Judge Darrah denied defendants' motion to dismiss plaintiffs' patent complaint and defendants' motion to bifurcate invalidity and enforceability from liability and damages issues. Plaintiffs' complaint was sufficient for the Fed. R. Civ. P. 8(a) notice pleading standards. It pled ownership of a patent to a trading system and infringement by defendants “by making, selling, and using [the device] embodying the patent.” (brackets in the opinion). Plaintiffs were not required to plead infringement by specific devices.

While the Court had broad discretion to bifurcate issues and to stay discovery on the bifurcated issues, it was not warranted in this case because defendants did not meet their burden of proof. While bifurcating would significantly speed resolution if defendants' invalidity or inequitable conduct arguments succeeded, bifurcation could significantly delay the case should defendants lose their invalidity and inequitable conduct arguments. Because defendants had not proven that they were likely to succeed, the Court denied the motion to bifurcate.

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BaliJewel, Inc. v. John Hardy Ltd., No. 07 C 3819, 2008 WL 4425886 (N.D. Ill. Sep. 24, 2008) (Gottschall, J.).

Judge Gottschall granted defendant’s motion to dismiss plaintiff’s Lanham Act malicious interference with business relations claim (§ 1125(a)) and related state law claims, and denied defendant’s motion for sanctions pursuant to 28 U.S.C. § 1927. Plaintiff’s malicious interference claim was based upon defendant’s allegedly false letters to plaintiff’s ISPs stating that plaintiff was selling Indonesian folk jewelry that infringed defendant’s copyrights in defendant’s jewelry. But defendant was not accused of using any word or mark that confused defendant’s goods with plaintiff’s. Allegedly false claims of copyright infringement do not constitute a malicious interference claim. And individual letters to ISPs making allegedly false copyright infringement claims do not constitute actionable “commercial advertising or promotion” because the letters were single, private correspondences, as opposed to public dissemination of information. Finally, despite dismissing the claims, plaintiff had not crossed the line from zealous advocacy to sanctionable conduct, that would merit sanctions. 

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Helferich Patent Licensing v. ASUStek Computer Inc., No. 08 C 5189, Min. Order (N.D. Ill. Sep. 22, 2008) (Castillo, J.)

Judge Castillo sua sponte dismissed without prejudice plaintiff’s patent infringement complaint. The Court held that defendants were foreign entities without business entities in the Northern District. The Court allowed plaintiff to proceed with expedited jurisdictional discovery, and gave plaintiff until December 15 to refile an amended complaint, if they could, with more facts supporting jurisdiction and venue. The Court did not cite the Supreme Court’s Twombly decision regarding Fed. R. Civ. P. 8 pleading standards in its brief opinion. But this decision could flow from Twombly’s plausibility pleading standards.

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Nike, Inc. v. Wal-Mart Stores, Inc., No. 08 C 5840 (N.D. Ill.) (Hibbler, J.).

As I have said before, I generally do not discuss complaints, but Nike's design patent suit against Wal-Mart last week has drawn significant blog coverage  -- click here for the complaint.  And most of that coverage has missed the most interesting element of the complaint, from a legal procedure perspective (and yes, legal procedure is interesting, at least to me):  Nike's detailed pleadings.  Instead of simply identifying its design patents (related to its Nike Shox product line) and Wal-Mart's allegedly infringing shoes, Nike put detailed design patent claim charts in its complaint showing an accused product from the same angle as each figure in the design patent.  Here is a portion of one of the charts:

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Para Gear Equip. v. Square One Parachute, Inc., No. 04 C 601, Min. Order (N.D. Ill. Sep. 2, 2008) (Brown, Mag. J.)

Judge Brown granted defendants–counterplaintiffs Square One Parachute’s (“SOP”) motion for summary judgment that plaintiff–counterdefendant Para Gear (“Para”) infringed SOP’s design patent based solely upon Para’s failure to plead noninfringement as an affirmative defense. Originally, Para filed this case seeking a declaratory judgment of noninfringement and SOP counterclaimed for infringement. But Para later voluntarily dismissed its claim with prejudice.

When Para answered SOP’s counterclaim, it did not plead noninfringement as an affirmative defense. The Court held that Para’s declaratory judgment noninfringement claim was a sufficient affirmative statement of Para’s defense. But once Para dismissed its claim, Para’s pleadings did not support a noninfringement defense. It was not enough that Para’s answer denied infringement, an affirmative statement of the defense was required. And while Para had not sought to amend its papers to support its defense, the Court would not have granted leave to amend four years into the case.

Practice Tip: Always ask, at least in the alternative, for leave to amend when accused of pleading deficiencies. Even though it would not have worked here, it rarely hurts to ask.

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Vulcan Gold, LLC v. Google, Inc., No. 07 C 3371, 2008 WL 2959951 (N.D. Ill. Jul. 31, 2008) (Manning, J.)

Judge Manning granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing plaintiffs’ RICO claims. The Court previously dismissed plaintiffs’ complaint with leave to refile – click here to read the Blog’s post on that opinion. The Court held that plaintiffs did not sufficiently plead an enterprise. Plaintiffs only alleged that the defendants were contractually related within Google’s adsense program. And the alleged contractual relationship did not show consensual decisionmaking or joined purpose. Plaintiffs’ RICO claims were, therefore, dismissed.

The Court denied defendants’ motion to dismiss the unjust enrichment and civil conspiracy claims. Fed. R. Civ. P. 9(b) heightened pleading standards did not govern the claims because they were both based upon trademark infringement, not fraud.

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Arience Builders, Inc. v. Baltes, No. 08 C 921, 2008 WL 2580166 (N.D. Ill. Jun. 17, 2008) (Bucklo, J.).

Judge Bucklo denied defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s Computer Fraud and Abuse Act (“CFAA”) claim challenging whether plaintiff sufficiently pled a “transmission.” The Court held that plaintiff’s allegations that defendant used “a code and/or command” to “delete and/or change” plaintiff’s computer and electronic files constituted a transmission. The allegations went well beyond simply pressing a delete key, which the Seventh Circuit held was not a CFAA transmission in Airport Ctrs., LLC v. Citrin, 440 F.3d 418, 419 (7th cir. 2006).

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Judge Castillo dismissed some defendants for lack of personal jurisdiction (the wrong defendants) and denied defendant Strategic Commercial Solutions (“SCS”). Fed. R. Civ. P. 12(b)(6) motion to dismiss. Plaintiff Medline alleged that defendants violated its trademark and related federal and state laws by selling “Medline Savings” packages with telemarketers.

Personal Jurisdiction

The Court did not have personal jurisdiction over the Wong defendants. The Wong defendants, all individuals, did not direct any of their allegedly infringing and fraudulent calls to Illinois residents. Their only contacts with Illinois were calls to and from Illinois banks regarding processing payments and refunds. These secondary contacts were not sufficient to create personal jurisdiction.

SCS similarly did not have sufficient contacts with Illinois. But Fed. R. Civ. P. 4(K)(2) provided for national, and therefore, there was personal jurisdiction in Illinois because SCS argued it was not subject to jurisdiction in any U.S. state or territory.

Telemarketing and Consumer Fraud and Abuse Act

SCS argued that Medline could not bring its Telemarketing and Consumer Fraud and Abuse Act claim because it was not a “private person” that was “adversely affected” by the telemarketing as required by the Act. But the Court held that while Medline was not an aggrieved consumer, the alleged unfair use of Medline’s trademarks could have caused Medline the harm it alleged.

Trademark Infringement

The Court noted that it was not aware of a similar case in which a party was accused of trademark infringement for using marks in telemarketing. But SCS’s alleged use of Medline’s marks was a use in commerce.

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MPC Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2008 WL 1775501 (N.D. Ill. Apr. 17, 2008) (Aspen, J.).*

Judge Aspen granted in part plaintiff MPC Containment's ("MPC") Fed. R. Civ. P. 12(f) motion to strike defendants' (collectively "Moreland") waiver and unclean hands defenses. The Court struck Moreland's unclean hands defense. Moreland alleged unclean hands based upon MPC’s allegedly fraudulent procurement of a patent related to the flexible tank technology at issue. But the Court held that Moreland failed to show that MPC's alleged fraud was somehow directed at Moreland. Furthermore, while the patented technology is related to the technology in suit, MPC's alleged misconduct in obtaining the patent had no connection to this suit.

The Court, however, allowed Moreland’s waiver defense. Moreland did not specifically plead that MPC voluntarily relinquished its rights to the claims in suit. But it was sufficient that voluntary relinquishment could be inferred from the pleadings.

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

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e360Insight, LLC v. Comcast Corp., No. 08 C 340, Slip Op. (N.D. Ill. Apr. 10, 2008) (Zagel, J.).

Judge Zagel granted defendant Comcast judgment on the pleadings, dismissing plaintiff e360Insight’s ("e360") Computer Fraud and Abuse Act, First Amendment, and related state law claims. e360, an Internet marketer and accused email spammer, alleged that Comcast harmed e360 by unjustifiably blocking all or most of e360’s emails from Comcast’s customer email accounts. Comcast stopped e360's emails with filtering software that identified and stopped emails from e360 addresses.

Comcast argued that the Good Samaritan clause of the Communications Decency Act, 47 U.S.C. § 230(c)(2), provided Comcast absolute immunity from e360's claims because Comcast voluntarily filtered e360's emails to restrict access to what Comcast believed was objectionable content. The Court held that the Good Samaritan clause provided absolute immunity for ISPs that filtered for objectionable material. The Court also held that Judge St. Eve's and the Seventh Circuit's recent Chicago Lawyers' Committee v. Craigslist opinions – click here for more on those cases – were not applicable. Those opinions limited the clause's protection for ISPs that chose not to filter. Because Comcast filtered, it enjoyed absolute protection. The Court also held that e360's compliance with Congress's spam prevention laws, 15 U.S.C. §§ 7701-13 (Controlling the Assault of Non-Solicited Pornography and Marketing Act of 2003 ("CAN-SPAM") was irrelevant. Regardless of compliance with CAN-SPAM, the Good Samaritan clause still allowed the ISP to make a good faith judgment that e360's emails were objectionable. And e360 did not sufficiently plead Comcast's lack of good faith in determining that the emails were objectionable.

Eric Goldman at the Technology & Marketing Law Blog has a good post on this case and several other district court cases considering § 230(c) defenses. – click here for his post.

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Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. Mar. 20, 2008) (Manning, J.).

Judge Manning granted in part the defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs' RICO, Lanham Act and related state law claims. Plaintiffs alleged that the "parking defendants" – entities that allegedly register common misspellings of domain names – worked together and conspired with defendant Google to populate the misspelled domains with revenue-generating advertising related to the actual web sites' business.*

Anticybersquatting Consumer Protection Act ("ACPA")

The Court denied the Parking Defendants motion to dismiss plaintiffs' ACPA claims. While plaintiffs did not allege that the Parking Defendants were the registrants of the domains at issue, they did allege that the Parking Defendants registered, owned, and controlled the sites. Furthermore, the Court would not rule on the factual issue of whether the domains – for example, vulcangolf.com and vulcanogolf.com – were confusingly similar to plaintiffs' marks.

The Court denied Google's motion to dismiss because while Google did not register or own the domains at issue, it was sufficient that they allegedly "trafficked" in them by working in concert with the other defendants.

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Judge Shadur, on the Court's own motion, struck the portions of defendant Biorigin's Answer that denied plaintiff's claims because plaintiff misspelled Biorigin – spelling it “Biorgin” instead of “Biorigin.” The Court noted that a denial based upon misspelling was an argument “only a patent lawyer could love.” And the Court explained that, despite plaintiff's misspelling, Biorigin understood that it was the intended target of plaintiff's complaint.

The Court also struck Biorigin's lack of personal jurisdiction, insufficient service and insufficient process affirmative defenses. The Court held that by filing a counterclaim, Biorigin affirmatively invoked the Court's jurisdiction, forfeiting these affirmative defenses.

As to Biorigin's lack of standing affirmative defense, the Court noted that it was pled on information and belief and required that Biorigin, should it find facts to support its defense, file a motion with such facts as quickly as possible because standing should be addressed as early as possible.

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Eva’s Bridal Ltd. v. Halanick Enter., Inc., No. 07 C 1668, Slip Op. (N.D. Ill. Jan. 24, 2008) (Darrah, J.).*

Judge Darrah denied plaintiff’s (collectively “Eva’s Bridal”) motion to dismiss defendants’ (collectively “Halanick”) counterclaims, including Halanick’s claim for declaratory judgment that Eva’s Bridal abandoned its Eva’s Bridal mark.** Halanick’s allegations that Eva’s Bridal caused its mark to lose significance by “destroy[ing]” its good name and failing to stop Halanick’s use of the mark after the parties’ business relationship ended were sufficient to state a claim.

* Click here for a copy of the opinion.

** Halanick had non-IP claims related to the business relationship between the parties, but they will not be addressed here.

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Am. Needle, Inc. v. New Orleans, Louisiana Saints, No. 04 C 7806, 2007 WL 4766815 (N.D. Ill. Nov. 19, 2007) (Moran, Sen. J.).

Judge Moran dismissed plaintiff’s remaining antitrust monopolization claim against various NFL entities and the 32 NFL teams.* Despite the fact that the NFL teams were a single entity for licensing purposes,** the NFL team could still be liable for monopolization outside of coordinated licensing efforts . But the alleged monopolization – licensing of defendants’ trademarks – can be done at defendants’ whim without violating antitrust laws based on the NFL’s status as a single entity.

*  Congrats to the New York Giants and Michigan Man Amani Toomer on a great Super Bowl victory.

** Click here for the post on that opinion in the Blog’s archives.

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Matteo v. Rubin, No. 07 C 2536, Slip Op. (N.D. Ill. Dec. 3, 2007) (Kendall, J.).

Judge Kendall denied defendant’s motion to dismiss plaintiff’s copyright infringement and related state law claims. Plaintiff photographed defendant’s daughter’s wedding pursuant to a contract between plaintiff and defendant’s wife. Defendant was allegedly unsatisfied with plaintiff’s photographs and, therefore, allegedly created numerous website regarding plaintiff’s photographs including defamatory comments about both plaintiff and his photographs. The Court held that plaintiff stated a claim for copyright infringement because he pled that he owned copyrights in his photos and that defendant infringed those copyrights by posting the pictures on websites. Plaintiff was not required to plead that defendant received any economic benefit from his alleged infringement. Additionally, plaintiff did not have to register his copyright before defendant’s allegedly infringing acts. Finally, the Court held that defendant’s fair use defense was not grounds for dismissal. Fair use is a factual inquiry best resolved on summary judgment or at trial.

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Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Viachem, No. 07 C 4232, Min. Order (N.D. Ill. Nov. 27, 2007) (St. Eve, J.).

Judge St. Eve granted in part plaintiff’s Fed. R. Civ. P. 12(e) motion for a more definite statement regarding defendant The Ingredient House’s (“TIH”) affirmative defenses and counterclaim. The Court ordered TIH to amend its patent misuse affirmative defense to provide factual allegations outlining the alleged misuse. TIH’s original defense simply stated that plaintiff’s claims were “barred by patent misuse.” The Court also ordered TIH to amend “incongruous statements” in its pleading that appeared to be clerical errors.

The Court denied plaintiff’s motion as to TIH’s defamation counterclaim. TIH was not required to plead which state’s law governed TIH’s defamation claim.

Practice Tip: Defendants frequently plead affirmative defenses with an unsupported statement of the defense. The better practice, and the one that avoids Rule 12(e) motions, is to plead at least the basic facts underlying the defense.

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WMH Tool Group, Inc. v. Woodstock Int’l, Inc., No. 07 C 3885, Slip Op. (N.D. Ill. Nov. 14, 2007) (Darrah, J.).*

Judge Darrah denied defendants’ Fed. R. Civ. P 12(b)(6) motion to dismiss plaintiff WMH Tool Group’s (“WMH”) Lanham Act dilution claim and its related Illinois Consumer Fraud and Deceptive Business Practices Act (“Consumer Fraud Act”) claim. WMH registered a trade dress for the color white on its woodworking and metal working products, sold under its JET brand. WMH alleged that its white trade dress was both famous and exclusively associated with WHM’s tools. WMH further alleged that defendant Woodstock International (“Woodstock”) diluted WMH’s trade dress by selling woodworking and metal working tools in WMH’s distinctive white color under Woodstock’s Shop Fox brand. Similarly, WMH alleged that defendant Grizzly Industrial (“Grizzly”) diluted WMH’s trade dress by selling woodworking and metal working tools in WMH’s distinctive white color under Grizzly’s Grizzly or Grizzly Industrial brands. 

Defendants argued that WMH did not state a claim for dilution because the complaint did not specify the date when WMH’s trade dress became famous and that defendants’ allegedly infringing sales began after that date. But the Court held that notice pleading did not require that WMH plead specific dates. It was enough that WMH pled that the trade dress had become famous and that defendants' infringement of the trade dress occurred after the fame was acquired.

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Mullen v. Society of Stage Directors & Choreographers, No. 06 C 6818, 2007 WL 2892654 (N.D. Ill. Sep. 30, 2007) (Coar, J.).

Judge Coar granted in part defendant United Scenic Artists’ (“USA”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ declaratory judgment (“DJ”) claims and denied all defendants’ motions seeking dismissal of plaintiffs’ defamation claim. Plaintiffs are the various production heads of the Chicago production of the musical “Urinetown!” (“Chicago Production”). The Chicago Production was performed pursuant to a license from Blue Dog Entertainment, LLC. But despite that license, plaintiffs each received a cease and desist letter from counsel for defendants (the heads of production of the Broadway Urinetown! production (“Broadway Production”) and their unions USA and the Society of Stage Directors & Choreographers (“SSDC”). The letter warned that plaintiffs willfully copied copyrighted aspects of the Broadway Production and attempted to pass off the Chicago Production as the award-winning Broadway Production. Defendants demanded an accounting of revenues from the Chicago Production in order to calculate damages. Defendants also held a press conference during which they publicly stated that the plaintiffs “plagiarized” the Broadway Production. Plaintiffs responded by filing suit seeking declaratory judgments that the Chicago Production did not infringe any of plaintiffs’ copyrights and that it was not Lanham Act passing off. And based upon the press conference, plaintiffs included a defamation claim.

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Sotelo v. Suburban 171, Inc., No. 07 C 2447, 2007 WL 2570355 (N.D. Ill. Aug. 29, 2007) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ Lanham Act unfair competition claim. Plaintiffs operated a salon called “Studio 171.” Defendants took over the location of plaintiffs’ salon and operated their own salon using all of the Studio 171 signage and marks. Defendants argued that plaintiffs’ unfair competition claim should be dismissed because the Studio 171 mark was either descriptive or generic and plaintiff did not plead secondary meaning. But the Court held that the argument was premature. A plaintiff need not plead secondary meaning.* And furthermore, plaintiffs did plead secondary meaning, stating that the Studio 171 mark had developed “considerable value” and become “uniquely associated” with plaintiffs’ business. The Court did, however, dismiss plaintiffs’ RICO claim for failing to plead their fraud allegations with particularity pursuant to Fed. R. Civ. P. 9(b).

* The Court did not cite the Supreme Court’s recent decision in Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955 (2007) (read more about the decision at the University of Chicago Faculty Blog).  But based on other recent opinions citing Twombly for heightened pleading requirements, I wonder if plaintiffs at least should plead secondary meaning now.

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UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582, Min. Order (N.D. Ill. Aug. 16, 2007) (Lindberg, J.).

Judge Lindberg denied defendants' motion to dismiss plaintiff's state law claims and its claim seeking assignment of defendants' patents to plaintiffs.  The Court held that the claim seeking assignment of defendants patents to plaintiff was an invalidity contention.  Plaintiff claimed that it had invented defendants' patented inventions before defendants.  While plaintiff did not use the correct terms, it met the notice pleading standards.  Additionally, plaintiff's state law trade secret and tortious interference claims were sufficiently related to the patent claims to come within the Court's supplemental jurisdiction.

The Court refused to consider plaintiff's requests for additional discovery  because it was made orally in court and in plaintiff's responsive pleading, but never as a written motion as required by Fed. R. Civ. P. 7(b)(1).

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Tillman v. New Line Cinema, No. 05 C 910, 2007 WL 2323302 (N.D. Ill. Aug. 9, 2007) (Kennelly, J.)

Judge Kennelly denied plaintiff’s motion for leave to file a second amended complaint, despite noting that Fed. R. Civ. P. 15A) requires that leave to amend be given “freely.” Plaintiff alleged that defendants collectively had access to his screen play “Kharisma Heart of Gold” about his experience with a sick child requiring heart surgery, stole it, produced it and released it as the movie “John Q.” Plaintiff filed his first complaint pro se alleging copyright infringement. Plaintiff then hired counsel and filed an amended complaint alleging copyright infringement and numerous other tort claims arising out of the alleged theft of plaintiff’s screen play. Various defendants filed motions to dismiss the amended complaint for lack of personal jurisdiction pursuant to Fed. R. Civ. P. 12(b)(2) and for failure to state a claim regarding the non-copyright claims pursuant to Fed. R. Civ. P. 12(b)(6). Plaintiff did not respond to that complaint, but filed a motion for leave to file a second amended complaint. The Court* granted the motion to dismiss the individual defendants for lack of personal jurisdiction and the non-copyright claims against the remaining defendants. The Court also denied plaintiff leave to file its second amended complaint because it was futile. Plaintiff, again proceeding pro se, then sought leave to file a new second amended complaint. But the Court held that plaintiff’s current second amended complaint had no substantive changes from plaintiff’s original second amended complaint. The second amended complaint, therefore, was still futile. Additionally, the second amended complaint attempted to reassert claims against the individual defendants, who had been dismissed from the suit for lack of personal jurisdiction. Because the Court lacked personal jurisdiction, plaintiff could not draw the individual defendants back into the suit. 

* The case was originally before Judge Norberg, who decided the original motions to dismiss and motion for leave to file the second amended complaint, and has since been transferred to Judge Kennelly who heard this motion.

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Gencor Pacific, Inc. v. Federal Labs., Corp., No. 07 C 168, 2007 WL 2298367 (N.D. Ill. Aug. 3, 2007) (Guzman, J.).

Judge Guzman granted defendants’ Fed. R. Civ. P. 12(b)(3) motion to dismiss for lack of venue. Plaintiff Gencor Pacific (“Gencor”) and defendant Federal Laboratories (“Fedlabs”) both distribute products including caralluma powder. Gencor alleged that Fedlabs infringed Gencor’s copyrights, engaged in unfair competition and other related state law claims by using various Gencor studies and literature to promote Fedlabs’s products. Gencor also alleged that Fedlabs’s Chairman defendant Jeffery Taub left a defamatory voicemail message for an Illinois-based Gencor distributor. Because defendants are all New York residents, venue was only proper in the Northern District if a substantial part of the events at issue occurred in Illinois. Gencor argued that the Illinois voicemail and various Fedlabs mailings to Illinois residents including the copyrighted studies constituted a substantial part of the events at issue. In support of its contentions, Gencor submitted only a transcript of the alleged voicemail. Gencor did not submit any mailings that had been sent to Northern District residents or a declaration stating that the voicemail had been received at a Northern District telephone number. The Court held that Gencor’s unsupported “bare allegations” did not meet Gencor’s burden of proving that venue was proper.

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Allen v. Destiny’s Child, No. 06 C 6606, Min. Order (N.D. Ill. Jul. 30, 2007) (Holderman, C.J.).*

Judge Holderman granted in part defendant Andrea Murray’s motion to dismiss plaintiff’s copyright infringement and related state law tort claims.  Plaintiff alleges that defendants, including the musical group Destiny’s Child and its members, infringed plaintiffs’ copyrights in his song “Cater 2 U” by producing and selling Destiny’s Child’s song of the same name (watch the video of  Destiny’s Child’s version on their website).  The Court denied the motion as to plaintiff’s copyright infringement claims for the reasons set forth in a separate order of the same date (you can read more about it in the Blog’s archives). The Court dismissed with prejudice plaintiff’s misappropriation claim because plaintiff failed to prove that Illinois recognizes a misappropriation claim separate from the Illinois Trade Secret Act. Additionally, plaintiff failed to identify a difference between his misappropriation claim and his claims for breach of implied contract and copyright infringement. The Court also dismissed plaintiff’s fraudulent misrepresentation claim with prejudice because plaintiff failed to produce evidence beyond a broken promise that defendants intended fraud. 

Defendant also argued that plaintiff’s breach of fiduciary duty and breach of contract claims should be dismissed because the alleged breaches occurred in or before 2000, but plaintiff did not file his complaint until November 2006. But plaintiff pled that he did not become aware of the breaches until the November 2004 release of the Destiny’s Child album that included Cater 2 U. Because plaintiff’s complaint did not establish a statute of limitations defense, the Court allowed the claims. Additionally, the Court noted that defendant’s arguments regarding pleading requirements were based in Illinois, despite the fact that federal pleadings are controlled by federal law.

*  You can read a copy of the Minute Order here.

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Allen v. Destiny’s Child, No. 06 C 6606, Min. Order (N.D. Ill. Jul. 30, 2007) (Holderman, C.J.).*

Judge Holderman granted in part defendants’ motion to dismiss plaintiff’s copyright infringement claims. Plaintiff alleges that defendants, including the musical group Destiny’s Child and its members, infringed plaintiffs’ copyrights in his song “Cater 2 U” by producing and selling Destiny’s Child’s song of the same name (watch the video of  Destiny’s Child’s version on their website). The Court dismissed the infringement claims regarding the two copyrights that plaintiff did not own, but allowed the claims as to plaintiff’s other two copyrights. Plaintiff’s allegations that he owned the two copyrights, provided copies of his performances of the song to various defendants who relayed them to Destiny’s Child and that the Destiny’s Child song is musically and lyrically similar were sufficient to meet the new Fed. R. Civ. P. 12(b)(6) motion to dismiss standard set forth in Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955, 1969 (2007) (read more about the decision at the University of Chicago Faculty Blog). The Court did, however, dismiss claims against defendant McDonald’s. McDonald’s was only charged with having received financial gain from the infringement because it sponsored a Destiny’s Child tour during which the song was performed. The Court quoted upon Twombly in explaining its decision:

The court is not convinced that [plaintiff] has “nudged [his] claims across the line from conceivable to plausible.”

*  You can read a copy of the Minute Order here.

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Meyer Intellectual Props. Ltd. V. Bodum, Inc., No. 06 C 6329, Slip Op. (N.D. Ill. Jul. 24, 2007) (Shadur, J.).*

Judge Shadur denied defendant’s motion to amend its answer adding an equitable estoppel defense. The Court noted that amendments were usually “generously” allowed, but defendant provided no justification for not including equitable estoppel in its original answer. Defendant argued that it required investigation to discover its equitable estoppel defense, but the Court noted that the information defendant relied upon was in defendant’s possession. So, there was no reason that defendant could not have conducted its investigation before filing its answer.

*  A copy of the Opinion is available here.

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Ace v. Marn, No. 06 C 5335, 2007 WL 1541747 (N.D. Ill. Apr. 17, 2007) (St. Eve, J.).

Judge St. Eve granted in part and denied in part plaintiff/counterdefendant Ace Hardware Corp.'s ("Ace") Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants/counter-plaintiffs' (collectively "Marn") counterclaims.  The Court denied the motion as to Marn's breach of contract claim and dismissed Marn's fraud and tortious interference claims.  Ace and Marn entered an agreement (the "Agreement") allowing Marn the right to use certain Ace trademarks and to purchase product for resale from Ace.  Marn alleged that Ace and its representatives breached the Agreement, made numerous misrepresentations leading up to the signing of the Agreement and failed to provide promised inventory.  Ace argued that Marn's breach of contract claim should be dismissed because it did not identify a specific provision of the Agreement that was breached, citing several Northern District cases.  But noted that each of Marn's cases came down before the Seventh Circuit's decision in Kolupa v. Roselle Park Dist., 438 F.3d 713, (7th Cir. 2006).  In Kolupa the Seventh Circuit explained the Rule 8(a)(2) requirements:

[i]t is enough to name the plaintiff and the defendant, state the nature of the grievance, and give a few tidbits (such as the date) that will let the defendant investigate. . . .  Any district judge (for that matter, any defendant) tempted to write "this complaint is deficient because it does not contain ..." should stop and think:  What rule of law requires a complaint to contain that allegation?  Any decision declaring "this complaint is deficient because it does not allege X" is a candidate for summary reversal, unless X is on the list in Fed. R. Civ. P. 9(b).

Kolupa at 714-15 (emphasis in original).  Based upon the Kolupa decision the Court held that Marn was not required to cite a specific breached section of the Agreement.

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Playboy Enters. Int'l., Inc. v. 3E Trading, LLC, No. 07 C 1111, Slip Op. (N.D. Ill. Apr. 30, 2007) (Shadur, J.).*

Judge Shadur struck defendant's answer sua sponte, with leave to file an amended answer.  Plaintiff Playboy Enterprises International ("Playboy") alleged in its Complaint that the parties entered a series of agreements (the "Agreements") pursuant to which defendant 3E Trading ("3E") was licensed to use various Playboy trademarks in connection with the sale of specifically defined categories of products -- for example money clips, lamps, glassware and bar accessories.  But Playboy contended that 3E continued selling the previously licensed products after the Agreements expired.  3E answered the Complaint (here is a copy of the Answer), as many defendants do, with numerous blanket denials and Fed. R. Civ. P 8(b) statements that 3E lacked sufficient knowledge or information to admit or deny the allegations.  The Court identified numerous paragraphs that it did not believe could be denied for lack of information with the good faith required by Fed. R. Civ. P. 11(b).  For example, the Court held that 3E must have had some knowledge by virtue of its entry into the Agreements as to at least some of the statements made in paragraphs 6 and 7 identifying certain marks allegedly owned by Playboy and the fact that the marks were valuable.  The Court did not identify all of the deficiencies it found, but warned that answers such as this one "tend to defeat the entire purpose of notice pleading."  The Court required, as noted above, that 3E amend its answer and required that 3E's counsel:  1) not charge 3E for amending the Answer; and 2) copy the Court on a letter to 3E explaining that they will not be charged for the amended Answer.

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Ortho-Tain, Inc. v. Rocky Mountain Orthodontics, Inc., No. 05 C 6656, 2007 WL 1238917 (N.D. Ill. Apr. 25, 2007) (Leinenweber, J.).

Judge Leinenweber granted plaintiff's Fed. R. Civ. P. 12(f) motion to strike, dismissing without prejudice defendants' respective patent misuse affirmative defenses and all patent-related statements in defendants' counterclaims.  Plaintiff, Ortho-Tain ("OT"), sued Rocky Mountain Orthodontics ("RMO") and Planmeca Oy ("Planmeca") alleging that RMO breached the distributorship agreement between the OT and RMO.  Pursuant to the Agreement, OT manufactured dental appliances (allegedly covered by OT's patents) and RMO sold those appliances in France.  RMO allegedly breached the Agreement by sourcing equivalent dental appliances from Planmeca.  RMO counterclaimed for, among other things, declaratory judgment of noninfringement and unenforceability of OT's relevant United States patents.  The Court previously dismissed defendants' patent-related declaratory judgment counterclaims for lack of subject matter jurisdiction.  OT now argues that the Court should strike RMO's and Planmeca's respective patent misuse affirmative defenses because they are insufficient.  The Court first held that patent misuse was a proper affirmative defense, negating the first prong of a Rule 12(f) analysis. 

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Flentye v. Kathrein, __ F. Supp.2d __, 2007 WL 1175576 (N.D. Ill. Apr. 18, 2007) (Filip, J.).

Judge Filip denied defendants' motions to dismiss, except as to plaintiffs' claim for punitive damages for intentional infliction of emotional distress, because Illinois law does not allow punitives for IIED.  Plaintiffs (collectively "Flentye") promoted apartment rental services , including some properties owned by Flentye, using their family name, Flentye.  Defendants competed with Flentye promoting similar apartments, some of which were owned by defendant Kathrein LLC.  Flentye brought suit against defendants alleging violations of the Anti-Cybersquatting Consumer Protection Act ("ACPA"), Lanham Act unfair competition and related state law claims.  Flentye alleges that defendants lost a dispute before the UDRP and were forced to return certain domain names to Flentye, including timflentye.com, flentye.com and flentyeproperties.com.  Flentye alleged that defendants then registered new domain name timflentye-not.com and used it to direct traffic to defendants' competing websites.  Flentye also alleged that defendants improperly used the term "Flentye" in its meta tags (key words embedded into a site's source code to director search engines to the site) to direct users seeking information regarding Flentye to defendants sites. 

Defendants first argued that Flentye failed to plead its veil-piercing claims and that, therefore, corporate defendant Kathrein LLC should be dismissed because there were not sufficient allegations against it without a veil-piercing theory.  But the Court held that notice pleading was sufficient for a veil-piercing argument and that Flentye met the notice standard.  It was sufficient that Flentye pled that individual defendant Kathrein  created defendant Kathrein LLC "for the sole purpose of holding title to local real estate through which [Kathrein] operates Lee Street Management" and that in the caption Kathrein LLC was identified as "d/b/a Lee Street Management."  The Court noted that while these allegations might not be sufficient to prove that the veil was pierced, they were sufficient for Fed. R. Civ. P. 8(a) notice pleading.  The Court also noted that a claim of corporate veil-piercing did not require Fed. R. Civ. P. 9(b) heightened pleading.

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Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 1175577 (N.D. Ill. Apr. 20, 2007) (Aspen, J.).

Judge Aspen denied defendant Little Lady Foods, Inc.'s ("LLF") Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Fast Food Gourmet, Inc.'s ("FFGI") breach of contract claim.  FFGI alleged that FFGI entered a "co-packing" relationship with LLF, essentially that LLF was to manufacture FFGI's product.  Based upon that relationship, FFGI provided LLF with its various trade secrets relating to producing "a unique stone hearth oven thin crust frozen pizza."  In addition to its formulas, recipes, methods and techniques, FFGI also provided LLF its equipment.  FFGI alleged that, in addition to making pizzas for FFGI, LLG worked with defendant Kraft Foods Global, Inc. ("Kraft") to develop a line of pizzas using FFGI's trade secrets, with substantially the same crusts as the FFGI pizzas.  FFGI brought claims for misappropriation of trade secrets against both defendants, breach of contract against LLF and unjust enrichment against Kraft.  LLF sought to dismiss FFGI's breach of contract claim to the extent it was based upon allegations that the agreement was breached by production of pizzas for Kraft with crusts nearly identical to FFGI's crusts.  LLF first argued that the agreement could not be breached because the agreement prohibits LLF from producing "pizzas with specification which are identical or . . . substantially identical to" the FFGI pizzas.  Because FFGI only pled that the crusts were identical or substantially identical, LLF argued the claim should be dismissed.  But the Court held that FFGI was only required to provide notice pleading of claims, not facts.  Because FFGI identified the parties, stated the nature of its dispute and provided "a few tidbits" LLF was sufficiently on notice.

LLF also argued that the claim should be dismissed because the FFGI and Kraft pizzas are substantially different because Kraft's sauce and/or toppings are very different than FFGI's.  But the Court refused to make factual determinations in a Rule 12(b)(6) motion and denied LLF's motion.

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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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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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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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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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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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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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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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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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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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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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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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