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

Trading Techs. Int'l., Inc. v. BCG Partners, Inc., No. 10 C 715 (Consolidated), Slip Op. (N.D. Ill. Jul. 26, 2011) (Kendall, J.).

Judge Kendall denied the SunGuard defendants' (collectively "SunGuard") summary judgment motion arguing that plaintiff Trading Technologies ("TT") second suit against the same SunGuard products should be dismissed based upon claim splitting or claim preclusion. There is much more on this case and the related cases in the Blog's archives. The parties and the accused products were the same in both cases (filed in 2005 and 2010, respectively), but the patents were different. The Federal Circuit has held that suits based upon different patents involving similar inventions are not the same claims because each patent covered a separate invention. Kearns v. General Motors Corp., 94 F. 3d 1553, 1555 (Fed. Cir. 1996). Because the TT asserted different patents in the two suits, there was no preclusion. It did not matter that that TT could have arguably amended its first suit to add some or all of the later asserted patents.

The Court also deemed TT's Local Rule 56.1 additional statements of fact admitted because SunGuard failed to respond to them.

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Hollister Inc. v. Convatec Inc., No. 10 C 6431, Slip Op. (N.D. Ill. June 21, 2011) (Kennelly, J.).

Judge Kennelly granted defendant Convatec's summary judgment because of earlier settlement agreement released plaintiff Hollister's patent infringement claims involving bowel management systems as to then existing products. Here are the key holdings:
 

• The release provisions in the agreement made clear that the parties intended to release future sales of existing product lines.
   
• The accrued products did not have new, infringing features that would have brought them outside the bonds of the agreement.
   
• Hollister cited no case supporting its argument that in New Jersey releases would only be for past and current sales, not future.
   
• Hollister offered no case law supporting its arguments that a patent application cannot be released before it is issued.

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Illinois Computer Research, LLC v. Best Buy Stores, L.P., No. 10 C 4298, Slip Op. (N.D. Ill. Jun. 29, 2011) (Zagel, J.).

Judge Zagel granted defendants (collectively "Best Buy") summary judgment that its Rocketfish sound cards were already licensed because they were designed and manufactured by license from Creative Products ("Creative") for Best Buy.

First, Best Buy's vendor Ectiva was an Affiliate of Creative. Best Buy's documents showed a clear relationship between the parties. The fact that Best Buy's evidence was only authenticated by counsel's declaration did not prevent considering the evidence for several reasons:

1. FRE 902(3) allows the Court discretion to consider certain evidence that had not been finally authenticated.
    
2. Plaintiff offered no evidence or even argument that the documents were fraudulent or otherwise amendable.
    
3. Best Buy ultimately produced certified copies of the evidence.

The Court also held that the Rockefish sound cards were Creative products. The Court already held that Ectiva was an Affiliate of Creative, and plaintiff did not dispute that the soundcards were manufactured for Creative and its affiliates, including Ectiva.

Finally, Creative was not acting as a foundry for Best Buy. Best Buy's uncontroverted declarations established that Creative, not Best Buy, designed the soundcards.

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Viskase Cos., Inc. v. World Pac Int'l AG, No. 09 C 5022, Slip Op. (N.D. Ill. Feb. 3, 2011) (Bucklo, J.).

Judge Bucklo granted declaratory judgment plaintiff Viskase's motion for summary judgment of invalidity and denied the remaining cross-summary judgment motions as moot in this patent dispute involving food casings that prevent the loss of weight, flavor and taste. The Court previously construed "impermeable" to mean that the casing did not allow any measurable loss of weight, flavor or moisture. Instead of addressing each of Viskase's arguments element-by-element, declaratory judgment defendant World Pac put "all of its eggs in one basket." The Court denied World Pac's earlier summary judgment motion regarding infringement largely because of World Pac's failure to test the alleged impermeability of Viskase's accused products. World Pac, therefore, argued that because Viskase had not tested sausages covered by the prior art patent, it could not succeed.

But the Court explained that "what is good for the goose is not always good for the gander." The Court held that there was no authority requiring that a party test alleged anticipatory prior art patents to prove that they read on the asserted patent. While there was some appeal to World Pac's argument, it was unsuccessful. An accused infringer is not required to test prior art products. Furthermore, World Pac's own expert had conceded that the relevant claim elements of the patent-in-suit were disclosed in the prior art patent.
 

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Bone Care, Int'l v. Pen Tech Pharm., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 30, 2011) (Dow, J.).

Judge Dow denied defendants' (collectively "Pentech") motion for summary judgment of invalidity for lack of enablement and written description. The Court also denied plaintiff Bone Care International's cross-motion for summary judgment that the patent-in-suit was enabled by its specification, in this patent case involving methods of treating hyperparathyroidism that is secondary to end-stage renal disease. The parties finished briefing their cross-motions weeks before a bench trial began, including the issues in the motion. And by the time of the opinion, the parties had filed extensive post-trial briefing -- the Court allowed briefs up to 280 pages in length. As such and in light of its coming opinion ruling on all factual issues, the Court did not provide a detailed analysis of its reasoning. Instead, it focused on one of the most common hurdles to summary judgment, the battle of the experts. The parties' experts set forth competing views of the facts and circumstances on the case. Because both parties relied upon those experts to make their cases, summary judgment was not proper.

The Court, however, did commit to resolve the issues as part of its written trial decision.

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Heathcote Holdings Corp. v. William K. Walthers, Inc. d/b/a Darda Toys, No. 09 C. 6722, Slip Op. (N.D. Ill. Mar. 11, 2011) (Bucklo, J.).

Judge Bucklo granted defendants summary judgment that it lacked the intent to deceive required by the false patent marking statute, 35 U.S.C. § 292. While an employee and her team were responsible for the information on the packaging, there was no evidence that the employee or her team were aware that the patents had expired, were (in one case) not the correct patent number or otherwise had any knowledge of the false marking statute. Indeed, plaintiff acknowledged that defendant "makes an effort to ensure that its packaging is truthful." Furthermore, upon learning of plaintiff's allegations, defendant created an "action plan" to resolve the issues. Defendant segregated the accused inventory, removed the patent information and held new production until its suppliers could change the markings. Based upon these facts, the Court held that no reasonable jury could find that the defendant had the required intent to deceive.
The Court went on to hold that the concepts of agency and collective corporate knowledge, or "collective scienter" were not applicable. The Seventh Circuit had specifically held that intent to deceive is not a corporate attribute.
 

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Sullivan v. Jamison, No. 06 C 5240, Slip Op. (N.D. Ill. Mar. 8, 2011) (Coleman, J.).

Judge Coleman denied plaintiff's motion for summary judgment that defendants' counterclaims to music royalties from the group Survivor were stopped for failure to disclose them in bankruptcy petitions. In fact, both individual defendants had sufficiently identified their alleged rights to Survivor's music royalties in their bankruptcy petitions or amendments thereto.
 

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Kim v. The EarthGrain Co. k/n/a Sara Lee Bakery Group, Inc., No. 01 C 3895, Slip Op. (N.D. Ill. Feb. 4, 2011) (Cox, Mag. J).

Judge Cox construed the claims of plaintiff's patent to compositions of a potassium bromide replacement for bread, and granted defendant Sara Lee summary judgment of noninfringement. Of particular note, the Court construed the following terms, all in Sara Lee's favor:

• "A potassium bromated replacer composition, consisting of" as:

a mixture of ingredients that acts to perform essentially the same function when used in the production of bread as would potassium bromated, namely, acting as a slow acting oxidant in the bread making process to strengthen the dough, increase loaf volume, and contribute to fine crumb grain. The mixture of ingredients is limited to the claimed ingredients (ascorbic acid, food acid, and flour) in the claimed amounts based on the weights of the ingredients. The mixture cannot contain additional chemical ingredients beyond those listed.

• "Said food acid is present in an effective amount" as:

"Food acid" must be present in an amount that slows down the rate of oxidation of ascorbic acid to dehyroascorbic acid during a manufacturing process of bread.

• "Said food acid selected from the group consisting of acetic acid . . . vinegar . . ." as:

the food acid can either be vinegar or acetic acid. "Vinegar" is a sour liquid used as a condiment or preservative that is obtained by acetic fermentation of dilute alcoholic liquids or of dilute distilled alcohol. "Acetic acid" is an organic acid represented by the chemical notation C2H2O2.

• "Flour" as a "finely ground meal of wheat."

Having construed the claims, the Court held that Sara Lee's accused products did not infringe the asserted patent:

• The "consisting of" transitional phrase required that the claimed replacement could only have the claimed ingredients. But those ingredients could be mixed with other ingredients of the bread, as long as they were not part of the potassium bromide replacement.
   
• Sara Lee's products did not infringe because there was no evidence as to the amount of ascorbic acid in the accused bread. While a set amount was added in tablet form, the tablet would interact with water in the bread dough oxidizing the ascorbic acid and turning some of it into a non-infringing compound.
   
• Five of the six accused products also did not infringe because they had more vinegar in them than the claimed range.

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Eazypower Corp. v. Jore Corp., No. 04 C 6372, Slip Op. (N.D. Ill. Oct. 20, 2010) (Zagel, J.).

Judge Zagel denied defendant Jore's ("Jore") motion for summary judgment of invalidity in this patent dispute regarding screwdrivers with flexible extension shafts. As a preliminary matter, plaintiff Eazypower repeatedly failed to comply with Local Rule 56.1 regarding statements of material fact. Despite that, the Court accepted Eazypower's additional facts and responses to Jore's statements of fact because Jore had sufficient opportunity to respond to them.

Jore argued that a particular screwdriver with a flexible extension shaft, the FB-19, was sold in the United States in the mid-1980s and was invalidating prior art. Eazypower did not dispute that the FB-19 taught each element of the identified patent claims. But Eazypower did dispute that the FB-19 was in fact prior art. First, Eazypower argued that Jore had not sufficiently corroborated its evidence that the FB-19 was sold in the United States in the mid-1980s. Jore's corroborating evidence - several third parties with knowledge - was sufficient. But there was evidence conflicting with Jore's position. An age analysis of the FB-19 packaging suggested that it had been built in the late 1970s or early 1980s, but it also showed traces of an adhesive that was not available in the mid-1980s. Additionally, Eazypower showed that relevant shipping records for the period did not show any sales or import of FB-19s. The Court, therefore, held that there was a question of material fact and denied summary judgment.
 

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Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333, Slip Op. (N.D. Ill. Sep. 29, 2010) (Dow, J.).

Judge Dow, having previously construed the claim of plaintiff's patent to a color printing system, granted defendant Seiko Epson Corp. ("SEC") summary judgment of noninfringement. Each claim required, among other colors, green-yellow ink. Plaintiff admitted that SEC's yellow did not fall within the Court's green-yellow construction.

Instead, Plaintiff argued that SEC's yellow was equivalent to the claimed green-yellow based upon the doctrine of equivalents because although SEC's yellow was a red-green the human eye perceived it as a yellow. But plaintiff's evidence only proved that SEC's yellow appeared yellow. Plaintiff had no evidence that SEC's yellow appeared green-yellow, the color of the relevant claim limitation. Regardless of the correctness of plaintiff's argument, therefore, plaintiff had not met its burden. And plaintiff could not use the doctrine of equivalents to expand green-yellow to all yellows.

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Valley Entertainment, Inc. v. Friesen, No. 08 C 3470, Slip Op. (N.D. Ill. Feb. 17, 2010) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted defendants summary judgment of noninfringement regarding plaintiff Valley Entertainment's ("Valley") copyright infringement claim regarding certain songs by the artist Raphael. The Court also granted defendants' motion to strike Valley's newly identified copyright, SR 107-850. Finally, the Court declined to exercise supplemental jurisdiction over Valley's remaining state law claims. Valley's asserted copyright covered only words and arrangement of sheet music, but defendants' alleged infringement was based upon the use of sound recordings of the songs at issue. Valley did not challenge this analysis, instead identifying a new copyright, SR 107-850, that covers sound recordings. But the Court struck that copyright because it was not identified until briefing of the summary judgment motion. The copyright was not identified in Valley's complaint or in any of Valley's numerous discovery responses as a basis for Valley's copyright infringement claims. The Court noted that Valley was no longer free to update its discovery pursuant to Fed. R. Civ. P. 26(a) because the update would no longer be timely.

Having resolved Valley's federal claims, the Court declined to exercise supplemental jurisdiction over Valley's related state law claims.

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Rosenthal Collins Group, LLC v. Trading Techs. Int'l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Sept. 18, 2009) (Dow, J.). 

Judge Dow denied the parties' cross-motions for summary judgment in this patent dispute regarding software for electronic futures trading using a static price axis.* Although the other related cases are stayed pending an appeal of the related eSpeed case to the Federal Circuit, declaratory judgment defendant Trading Technologies ("TT") sought and Judge Moran agreed to allow this case to proceed based upon TT's agreement that declaratory judgment plaintiff Rosenthal Collins Group ("RCG") infringed even under the Court's allegedly narrow construction of a "common static price axis" and "static display of prices." TT sought to broaden the constructions on appeal. The parties agreed on how the accused Onyx software operated. The price axis was generally dynamic. But if a user pointed a cursor in the window containing the axis, the axis became static until the cursor was removed or after thirty seconds, whichever came first. TT identified this as Onyx's order entry mode. And because Onyx has a static axis in order entry mode, TT argued that Onyx infringed based upon the order entry mode, even if it did not infringe in other modes. RCG argued that Onyx only had a single mode, and because the price axis was not consistently static, without manual recentering, there was no infringement. The Court held that whether Onyx operated in three modes and, therefore, infringed, or operated in a single mode and, therefore, did not was a question of fact. The case, therefore, was not appropriate for summary judgment.

The Court also stayed the case pending appeal of the eSpeed case, except for TT's motion for default and sanctions. 

*  Click here for much more on this case and its related cases in the Blog's archives.

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Encyclopaedia Britannica, Inc. v. Guerrero, No. 08 C 2752, Slip Op. (N.D. Ill. Feb. 19, 2009) (Castillo, J.).

Judge Castillo granted plaintiff summary judgment as to defendants' declaratory judgment counterclaim in this trademark, copyright and contract dispute. Plaintiff licensed its content, including certain copyright and trademark rights, to defendants for use in an online Spanish-language reference site. Because a third party did not provide certain additional content required by the parties' agreement, plaintiff exercised an option to terminate the parties' license agreement and attempted to exercise a purchase option provided for in the agreement. Defendants, however, argued that the agreement did not allow exercise of the purchase agreement for a six year period, which had not yet passed. The Court held that a dispute over the meaning of a contract clause did not necessarily make a contract ambiguous. The Court determined that while the Agreement could be read to support either party, the intent of the agreement was to allow for immediate purchase by plaintiff in the event of termination, regardless of whether or not the termination occurred after the six year period.

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Rowe Int’l. Corp. v. Ecast, Inc., No. 06 C 2708, 2008 WL 4133516 (N.D. Ill. Aug. 25, 2008) (Kennelly, J.)

Judge Kennelly granted in part plaintiff’s patent infringement summary judgment motion and denied defendants’ noninfringement summary judgment motion.* Of particular interest, the Court held that defendant Ecast could directly infringe the patents in suit, despite the fact that it did not make or assemble all components of the system – Ecast contributed the memory and the network, while the other defendants supplied the jukebox components. But the Court held that Ecast could directly infringe the patent for at least two reasons. First, Ecast produced promotional and technical materials advertising complete jukebox systems. Second, the evidence showed that Ecast directed and controlled the other defendants’ production of computer jukeboxes specifically designed to work with Ecast’s system.

* For more on this computer jukebox infringement case in the Blog’s archive click here.

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Integrated Cards, L.L.C. v. McKillip Industries, Inc., No. 06 C 2071, 2008 WL 3286981 (N.D. Ill. Aug. 8, 2008) (Kendall, J.).

Judge Kendall denied defendant’s motion for summary judgment of laches and equitable estoppel, and set a bench trial on the two defenses. Plaintiff charged defendant with infringing its patent covering a card (such as an ID card) integrated with a letter – Illinois attorneys get their ARDC cards in a similar form.

Defendant made and sold versions of the accused product for at least nine to ten years. Defendants argued that plaintiffs had actual constructive knowledge of the accused product beginning in 1998 or 1999, longer than the six years before the filing date required for a presumption of laches pursuant to 35 U.S.C. § 282. That presumption would have shifted the burden of proof from defendants to plaintiffs.

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MPC Containment Sys., Ltd. v. Moreland, No. 05 C 6973, 2008 WL 2875007 (N.D. Ill. Jul. 23, 2008) (Aspen, Sen. J.).*

Judge Aspen granted in part and denied in part defendants’ summary judgment motion regarding plaintiffs’ copyright, Lanham Act, trade secret and related state law claims.** Plaintiffs and defendants both design, manufacture and sell flexible fuel storage tanks. Corporate defendant MIL was formed by at least individual defendants John and Lawrence, both of whom previously worked for plaintiffs in various capacities and later worked for MIL in direct competition with plaintiffs over, at least, a United States Air Force contract.

Trade Secret Misappropriation

The Court held that plaintiffs’ pricing and warranty provisions were not trade secrets and, therefore, granted summary judgment in defendants’ favor. But the Court held that there was a question of fact as to whether plaintiffs’ tank designs were trade secrets. Additionally, the Court noted that the question of whether sufficient efforts were used to maintain secrecy of the alleged trade secrets was a question of fact for jurors in all, but the most extreme cases. Because plaintiffs identified several precautions taken to protect their trade secrets, the Court denied summary judgment. The fact that tank designs were provided to plaintiffs’ independent contractors without confidentiality did not warrant summary judgment for defendants. There are circumstances where independent contractors have independent, professional duties of confidentiality regardless of whether agreements were signed.

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Am. Needle, Inc. v. New Orleans Louisiana Saints, No. 07-4006 (7th Cir. Aug. 18, 2008) (Kanne, J.).*

Judge Kanne, writing for a unanimous panel, affirmed Judge Moran's opinions holding that the National Football League ("NFL") acting through its NFL Properties entity was a single entity and, therefore, dismissing plaintiff American Needle's Sherman Act antitrust claims -- click here and here to read the Blog's post on Judge Moran's prior opinions in this case.  For more than twenty years, NFL Properties licensed American Needle to use various NFL and NFL team trademarks on American Needle's headwear. American Needle filed this suit after NFL Properties entered an exclusive, ten year license with Reebok, ending American Needle’s license rights. Plaintiff argued that the NFL teams collectively, as well as in concert with Reebok, violated the antitrust laws by acting together through NFL Properties to license their collective intellectual property rights exclusively to Reebok (American Needle argued that the NFL did not violate antitrust laws when it licensed to numerous parties, including American Needle, through NFL Properties).

The Seventh Circuit explained that sports leagues are difficult to classify because they display elements of a single entity, as well as elements of a joint venture made up of independent owners.  The Seventh Circuit, therefore, determines whether a sports league is a single entity "one league at a time" and "one facet of a league at a time."  In this case, the NFL was a single entity because for the purpose of promoting its football product -- because no one team can stage a game alone.  It followed that if the NFL was a single entity for promoting football, it was also a single entity for promoting its product by selling NFL apparel.  Additionally, the Court noted that the record established that the NFL teams had been acting as a single entity for IP licensing since 1963.

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

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

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

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

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

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

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

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Single Source, Inc. v. Harvey, No. 07 C 1201, 2008 WL 927902 (N.D. Ill. Apr. 7, 2008) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendants' summary judgment motion. Defendant Harvey was employed by plaintiff Single Source (“SS”) as, among other things, its Sales Director. When Harvey was promoted to the Sales Director position he signed a confidentiality agreement which required that Harvey maintain the secrecy of SS's trade secrets and only use them for SS's benefit. SS alleged that Harvey became disgruntled and took a position with defendant Food Marketing Concepts (“FMC”). Before giving SS notice and leaving SS's employ, Harvey allegedly solicited SS's customers for FMC and used an SS expense account to pursue customers for FMC. Defendants argued that because Harvey was not an SS officer or director he did not owe SS a duty of loyalty. The Court, however, held that an employee owes it employer a duty not to compete with the employer or solicit the employer's customers before terminating the employment. The Court also held that the parties' competing evidence regarding whether Harvey had actually solicited SS's customers prior to ending his employment with SS created a material question of fact.

Practice Tip: You must respond to Local Rule 56.1 statements of material facts. The Court noted that defendants did not respond to SS's statement of additional facts. Because of that, the Court deemed each additional material fact admitted. The Court did not identify whether its decision turned on any of these admitted facts, but it is easy to imagine the circumstance in which the case could have turned on an inadvertently admitted fact.

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Nordstrom Consulting, Inc. v. M&S Techs., Inc., No. 06 C 3234, Slip Op. (N.D. Ill. Mar. 4, 2008) (Darrah, J.).*

Judge Darrah granted in part and denied in part the parties' cross-motions for summary judgment. Plaintiff and counter-defendant (collectively "NCI") developed visual eye chart software that defendants and counter-plaintiffs (collective "M&S") incorporated into their visual acuity system which was sold to ophthalmalic distributors and end users. For a period of time, the parties worked together, selling and servicing product and sharing office space. But eventually the relationship broke down and NCI began selling a competing system. The parties charged each other with various IP claims and related state law claims. Each of the IP-related claims is addressed below.

Copyright Infringement

The Court held that NCI was the sole owner of the copyright and that its principal Nordstrom was the sole author of the copyrighted software. M&S argued that its principal Marino contributed to the software. But the Court held that Nordstrom wrote the software and Marino only offered direction and ideas.

The Court granted M&S summary judgment for all copyrighted software sales during the terms of the parties' agreements, but not as to sales outside of the agreement dates. And the Court granted summary judgment of non-infringement as to M&S's new software package "Sports Vision Testing" ("SVT"). NCI argued that SVT was an infringing derivative work. But NSI failed to produce evidence or expert testimony refuting M&S's evidence that it created its SVT software independent of NCI's software using clean room procedures.

Digital Millennium Copyright Act ("DMCA")

NCI alleged that M&S violated the DMCA by circumventing protections on a computer containing the software code in order to aid an NCI licensee of the code. Because the code was accessed to aid a licensee, NCI could not show that the password had been bypassed for the purpose of infringing NCI's copyright. The Court, therefore, granted summary judgment for M&S. 

The Court also denied summary judgment as to M&S's claim that NCI violated the DMCA by accessing a portion of M&S's computer system for which NCI lacked authorization and passwords. Summary judgment was not appropriate because the parties disputed whether NCI accessed the computers and whether the accessed material was copyrighted.

Lanham Act

The Court denied M&S summary judgment on NCI's Lanham Act false advertising claim and its related state law claims. M&S argued that it had not made any statements likely to cause customer confusion. But NCI countered that M&S stated in advertising that it had used the same system for five years. NCI argued that the statement must be false because M&S switched to its new SVT software during that time. Because of these disputed facts, summary judgment was not appropriate.

Illinois Trade Secret Act

The parties agreed that prior to terminating their relationship, NCI took various information from M&S's offices and computers. But the parties disagreed as to whether M&S took reasonable measures to protect the information's confidentiality. The parties agreed that M&S password protected the information. But NCI argued passwords alone were not enough and suggested other protections that allegedly could and should have been employed. The Court held that password protection alone was not per se insufficient. But the Court required more information regarding M&S's actions and the feasibility of alternative protections before it could rule on summary judgment.

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Judge Conlon granted Citicorp defendants and denied defendant Gelfand summary judgment of copyright infringement. Plaintiff FM Industries ("FMI") alleged that Gelfand infringed FMI's copyright in its TUCANS debt-collection software by continuing to use it after Gelfand's license expired. Gelfand argued that FMI could not prove ownership of the copyright because it could not produce the written assignment. But the Court held that FMI's deposition testimony was sufficient to create a material question of fact and, therefore, denied summary judgment.

Citicorp was accused of encouraging and inducing its outside attorneys to use the TUCANS software after their licenses expired. But at least in part because FMI failed to respond to Citicorp's Local Rule 56.1 statements or to submit its own responsive statements of fact, the Court accepted as true Citicorp's evidence that it told its outside attorneys to stop using TUCANS before licenses expired and that Citicorp was unaware that the attorneys continued using TUCANS.

Practice Tip: I cannot say it enough: you must strictly comply with Local Rule 56.1. Click here to read about other opinions considering Local Rule 56.1

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Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., No. 03 C 2934, Order (N.D. Ill. Mar. 5, 2008) (Gottschall, J.).*

Judge Gottschall denied plaintiffs’ summary judgment motion without prejudice for failure to comply with both Local Rule 56.1 and the Court’s Standing Order — the Standing Order further explained that each short, numbered statement of fact required by Local Rule 56.1 should contain one fact and no attorney argument. Despite Local Rule 56.1’s clear requirements and the Standing Order’s directive to strictly comply with Local Rule 56.1, the Court held that nearly one-third of plaintiff’s 145 statements of fact did not comply with the rules:

• Many were long;
  
• One contained no facts;
  
• Several focused on an expert’s methodology instead of his results; and
  
• The rest contained inferences, argument, or legal conclusions.

The Court explained that the case’s complexity required strict adherence to Local Rule 56.1:

The court simply does not possess the resources to comb through the parties’ statements of fact in an attempt to sift out usable fact from impermissible argument or inference. … The Standing Order and LR 56.1 are composed in plain English and their meaning is clear; the court properly expects experienced and sophisticated attorneys to adhere to them strictly, particularly given the complex and sophisticated nature of this litigation.

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Tillman v. New Line Cinema Corp., No. 05 C 910, Slip Op. (N.D. Ill. Mar. 7, 2008).*

Judge Kennelly dismissed plaintiff’s copyright infringement claims holding that: (1) defendants’ allegedly infringing movie, “John Q,” was created before plaintiff’s copyrighted screenplay; (2) defendants did not have access to plaintiff’s screenplay when John Q was created; and (3) John Q was not substantially similar to plaintiff’s screenplay. Plaintiff wrote his screenplay in 1998. But defendants produced news articles and affidavits supporting the fact that their screenplay was written in 1993, including documents proving the John Q screenplay was registered with the Writers’ Guild in 1993. Plaintiff argued that defendants’ evidence was fabricated, but submitted no substantive evidence of fabrication.

The Court also held that there was no evidence that defendants’ writer had access to plaintiff’s screen play when John Q was written. First, the evidence proved that John Q was written before plaintiff’s screenplay. Furthermore, plaintiff admitted in response to a request for admission that he had not identified any witness confirming that John Q’s author had access to plaintiff’s screenplay. And while plaintiff filed his screenplay with the Writers’ Guild, the Writers’ Guild had strict regulations that would have prevented anyone from accessing plaintiff’s screenplay, and plaintiff offered no evidence proving the Writers’ Guild’s regulations had been violated.

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Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., No. 03 C 2934, Slip Op. (N.D. Ill. Mar. 5, 2008) (Gottschall, J.).*

Judge Gottschall granted plaintiffs’ motion to strike defendants’ allegedly new reverse doctrine of equivalents non-infringement argument, which defendants withdrew in response to plaintiffs’ motion. But the Court denied the motion as to all other allegedly new arguments and as to defendants’ supporting affidavits. The Court held that defendants’ non-infringement arguments were sufficiently set out in their timely expert reports.

The Court also held that defendants’ expert affidavits, submitted with their summary judgment response briefs, were proper. Fed. R. Civ. P. 56(e) specifically permits use of affidavits as support for summary judgment arguments. And defendants’ expert affidavits met the requirements for expert affidavits:

• The experts supported their conclusions by showing their reasoning; and
• The methodology met Daubert standards.

Finally, it did not matter that discovery was closed and that plaintiffs, therefore, would not be able to test the affidavits in a deposition. Plaintiffs cited no authority for the proposition that post-discovery affidavits were not permitted.

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

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Allen Bros., Inv. v. AB Foods LLC, No. 06 C 1269, 2008 WL 345600 (N.D. Ill. Feb. 6, 2008) (Andersen, J.).

Judge Andersen granted defendant AB Foods summary judgment of likelihood of confusion and dismissed plaintiff Allen Brothers’ Lanham Act claim and related state law trademark infringement claim. Allen Brothers, a seller of gourmet meats, argued that AB Foods infringed its AB trademark by using it to sell AB Foods’ gourmet meats. The Court held that this was the rare case that was so one-sided as to warrant summary judgment that there was no likelihood of confusion, even though AB Foods uses its AB mark in direct competition with Allen Brothers: 

• The marks were not similar because Allen Brothers always used its full name along with its AB mark;
  
• Allen Brothers’ customers are sophisticated meat purchasers, as evidenced by Allen Brothers’ high prices;
  
• The strength of Allen Brothers’ mark is in its full name, not just AB;
  
• Allen Brothers’ produced no evidence of actual confusion; and
  
• Allen Brothers produced no evidence that AB Foods intended to pass off its meats as Allen Brothers products.

The Court, therefore, granted AB Foods summary judgment and dismissed the case.

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Gabbanelli Accordions & Imports, L.L.C. v. Italo-Am. Accordion Mfg. Co. et al., No. 02 C 4048, 2008 WL 351860 (N.D. Ill. Feb. 8, 2008) (Zagel, J.)*

Judge Zagel granted plaintiff summary judgment of trademark and trade dress infringement regarding plaintiff’s “wildly colorful” and “heavily ornamental” accordions. The Court awarded plaintiff approximately $500,000 in damages, attorneys fees and costs. Defendants – Italian entities that sold accordions in the United States – chose not to participate in the case. Instead, they filed an Italian case after this case was filed, but before defendants were served pursuant to the Hague Convention. The Court previously stayed a portion of the case pending the outcome of the Italian case, but noted that the stay may have been a mistake. Years after filing, the Italian case had not been resolved and defendants failed to participate in the U.S. proceeding based upon a belief that the Italian proceeding controlled. For example, defendants admitted personal jurisdiction when they failed to respond to jurisdictional Requests for Admission and instead of filing a motion to dismiss, defendants sent the Court an unsupported letter listing their complaints with the case and the Court’s jurisdiction over them. By failing to participate in discovery and not following the Court’s rules, defendants preempted whatever ability they might have had to make their case.

Practice tip: Participate and play by the rules. Even if you cannot or will not afford counsel, you must answer discovery, respond to motions and appear when required to. Failing to participate will not insulate you from judgment.

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

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Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287503 (N.D. Ill. Dec. 4, 2007) (Coar, J.).*

Judge Coar granted defendant Sandoz’s Fed. R. Civ. P. 12(b)(6) motion to dismiss or in the alternative Fed. R. Civ. P. 12(c) motion for judgment on the pleadings, dismissing plaintiff Abbott’s willfulness claims Abbott alleged that Sandoz willfully infringed Abbott’s patent related to an extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL). At the time Sandoz entered the market with its generic version of Biaxin XL, the Federal Circuit had issued an opinion based upon an interlocutory appeal of a temporary restraining order, which included statements that Abbott’s patent was susceptible to invalidity and unenforceability argument. The Court held that Sandoz’s reliance on that opinion, regardless of the limited record it was based upon or its non-final nature was objectively reasonable, well above the In re Seagate objective recklessness standard.

* Click here for more on this case and related cases.

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Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287501 (N.D. Ill. Dec. 4, 2007) (Coar, J.).*

Judge Coar construed the claims of plaintiff Abbott’s patent related to an extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL), denied defendant Sandoz’s motion for summary judgment of noninfringement and granted Abbott summary judgment regarding anticipation, obviousness and inequitable conduct.  Of particular interest, the Court held that the use of Markush group language – “selected from the group consisting of” – in the specification did not necessarily limit the construction of claim terms. The Court also noted that materiality of a reference in an inequitable conduct analysis was determined from the perspective of a reasonable examiner, not the patentee.

* Click here for more on this case and related cases.

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Cement-Lock v. Gas Tech. Institute, No. 05 C 0018, 2007 WL 3374401 (N.D. Ill. Nov. 8, 2007) (Pallmeyer, J.).

Judge Pallmeyer granted in part defendants’ summary judgment motion. This is a dispute over the control and use of Cement –Lock technology (the “Technology”) which decontaminated certain waste products and used the decontaminated waste as a beneficial cement additive. Plaintiffs Cement-Lock LLC and Richard Mell, a Chicago Alderman, brought this derivative action on behalf of the Cement-Lock Group (“CLG”) which owns the Technology. Plaintiffs asserted various IP claims, including Lanham Act unfair competition, deceptive trade practices and trademark infringement. This opinion focused primarily on plaintiff’s state law claims, including alleged breach of fiduciary duties. So, I will not address most of the opinion, but I will discuss the most IP-related breach of fiduciary duty allegations. Plaintiffs alleged that defendants permitted defendant Gas Technology Institute (“GTI”) to secure funding for Technology-related activities, despite defendants’ knowledge that GTI had no license to use the Technology and kept knowledge of the funding from CLG. GTI also allegedly claimed to own and have developed the Technology. The Court held that there was no written license between CLG and GTI regarding the Technology. But there was a question of fact as to whether GTI’s efforts to secure finding for the Technology was improper. Additionally, there was a question of fact as to whether GTI misrepresented its ownership or control over the Technology.

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Here is some recent Northern District news:

• Judge Coar recently updated his case management procedures (click here to read them) to state that pursuant to Local Rule 5.2(e), parties are no longer to provide courtesy copies of electronically filed papers to Judge Coar's chambers, except for papers pertaining to Fed. R. Civ. P. 56 or Local Rule 56.1 (summary judgment papers).
  
• Magistrate Judges Brown (Eastern Division -- Chicago) and Mahoney (Western Division -- Rockford) are both up for reappointment in early 2008.  Pursuant to federal law, the Court has established a citizen's panel to consider their reappointments.  Members of the bar, as well as the general public, are requested to forward comments regarding the reappointments no later than January 18, 2008, to:

Magistrate Judge Advisory Panel
c/o Mr. Michael W. Dobbins
Clerk of Court
U.S. District Court
219 South Dearborn St. -- Rm. 2050
Chicago, IL 60604

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Shen-Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, 2007 WL 2903184 (N.D. Ill. Sep. 28, 2007) (Guzman, J.).

Judge Guzman denied defendant’s motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(b). Defendant argued that plaintiffs sold medical gloves embodying the claims of their patent, U.S. Patent No. 6, 953,582 (the “’582 patent”), to a glove with a coating of a skin-soothing substance in July 1999, approximately two years before the ‘582 patent’s July 1, 2001 critical date. Furthermore, plaintiffs admitted that they sold patented gloves as early as July 1999 by failing to cite any contradictory evidence in their responses to defendant’s Local Rule 56.1 statement.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04C 5312, Slip Op. (N.D. Ill. Sep. 25, 2007) (Moran, Sen. J.). 

Judge Moran denied plaintiff Trading Technologies’ (“TT”) supplemental summary judgment motion. The Court previously denied the original motions regarding the priority dates of the patents in suit.* In that opinion, the Court held that whether the patents could claim priority from their provisional application was a question of fact for the jury. The issue was whether disclosing the species of a single mouse click in the provisional application was sufficient support for the genus – a single action by the user – claimed in the patents in suit.

TT argued that eSpeed’s expert’s statement that the art – software engineering and user interface design – was predictable, was sufficient to take the patents out of the In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004), exception (unpredictability of a species prevents support of a genus). The Court agreed that the factual issue was predictability of the art. But the Court held that eSpeed’s expert’s statement did not resolve the dispute. A generally predictable art does not mean that one of ordinary skill would understand the patentee’s description of the particular species (one-click) was necessarily in possession of the genus (one action). So the issue went to the jury.

As of this post, the jury still has this case.  I will let you know as soon as I learn the jury's verdict.  For more on this case and Trading Technologies' related cases click here for the Blog's archives.  And keep watching the Blog, while the jury deliberates and the parties try inequitable conduct to Judge Moran this week, I will continue catching up with some prior opinions from the case.

*  To read about the original summary judgment motions click here or for a copy of this opinion click here.

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Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., No. 05 C 3684, 2007 WL 2570351 (N.D. Ill. Sep. 4, 2007) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted plaintiff Ball Aerosol & Specialty Container (“BASC”) summary judgment on the issue of patent damages, held that the case was exceptional and then doubled some of the damages and trebled the remainder. The Court previously construed the claims of BASC’s patent for a candle tin with a cover that can be used as a base and granted plaintiff summary judgment of infringement. In this opinion, the Court weighed the Georgia Pacific factors and held that they warranted a royalty rate of 20%. This rate represented an increase over the 17% rate BASC argued it would have granted in an arms-length negotiation to compensate BASC for the compulsory license. The Court then found that the case was exceptional because, among other reasons, defendants continued selling infringing product after the Court granted summary judgment of infringement. Based on the exceptional case holding, the Court doubled the damages from sales before the Court granted BASC summary judgment of infringement and trebled the damages for all sales after summary judgment.

Summary judgment of damages is a fairly rare occurrence. A quick review of the docket does not suggest that the parties waived their right to a jury. So, the facts in this case must have been very strong.

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Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., No. 06-1561, Slip Op. (Fed. Cir. Sept. 12, 2007) (Holderman, C.J., sitting by designation.).*

On behalf of Chief Judge Michel and Judge Gajarsa, the Northern District’s Chief Judge Holderman affirmed C.D. California’s holding that declaratory judgment plaintiffs’ (“Arminak”) “AA Trigger” shroud design for a spray bottle did not infringe declaratory judgment defendant’s (“Calmar”) design patents covering certain design elements of shrouds. The main issue, and one of first impression, was whether the “ordinary observer” for purposes of design patent infringement should be the end-user/purchaser of spray bottles or the industrial purchaser that buys triggers or shrouds for assembly into a finished spray bottle product. The district court held that the ordinary observer was the industrial purchaser and the evidence clearly established that industrial purchasers would not be confused by similarities between Arminak’s and Calmar’s patented shrouds. Calmar argued, however, that the Supreme Court in Gorham Mfg. Co. v. White, 81 U.S. 511 (1871), expressly excluded experts from being ordinary observers and that, therefore, retail purchasers had to be the ordinary observer. But the Federal Circuit noted that did not sell shrouds or fully assembled spray bottles including their respective shrouds to retail purchasers. The parties sell shrouds to industrial purchasers. Industrial purchasers, therefore, are the appropriate population of ordinary observers. The ordinary observer is:

A person who is either a purchaser or, or sufficiently interested in, the item that displays the patented designs and who has the capability of making a reasonably discerning decision when observing the accused item’s design whether the accused item is substantially the same as the item claimed in the design patent.

* This is not an appeal from the Northern District, but I am covering it because Chief Judge Holderman authored the Opinion. Thanks to Dennis Crouch at Patently-O for bringing the case to my attention.

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Trading Technologies Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Aug. 21, 2007) (Moran, Sen. J.).

Judge Moran denied the parties’ cross motions for summary judgment regarding whether GL Win with Trade Pad (“GL Trade Pad”) was invalidating prior art to plaintiff Trading Technologies’ (“TT”) patents. Defendant argued that the GL Trade Pad product was on sale prior to the critical date (the critical date was either March 2, 1999 or June 9, 1999, the Court previously held that it was a question of fact for the jury) based upon a February 19, 1999 software license (“February License”). But because the February License did not specifically name the GL Trade Pad software as part of the licensed software, both parties relied upon extrinsic evidence to prove whether GL Trade Pad was part of the February. The Court held that oral invalidity testimony must be corroborated by evidence other than additional interested oral testimony. eSpeed, therefore, corroborated its main witness’s testimony with Trade Pad software code and catalogs. eSpeed argued that this evidence showed that the Trade Pad software was made and sold on or before the February License and would have been included in the February License. But the Court held that eSpeed’s evidence did not meet its evidence of proving the sale by clear and convincing evidence. TT challenged each piece of eSpeed’s evidence and the Court could not decide summary judgment of invalidity based upon eSpeed’s remaining evidence – oral testimony of an interested party (GL is a defendant in a related case). The jury must weigh competing testimony and judge the witnesses' credibility. 

Trial started in this case the week of September 10. Expect to see several more opinions in this case and its related cases (there are two weighty summary judgment opinions still in my queue, as well as several other smaller opinions and orders). Additionally, I have some other obligations, but am planning to blog some of the trial. Stay tuned.

*You can read much more about this case and related cases in the Blog's archives.

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Trading Technologies Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Aug. 16, 2007) (Moran, Sen. J.).*

Judge Moran granted in part plaintiff Trading Technologies’ (“TT”) motion for summary judgment regarding prior use and denied defendant eSpeed’s cross motion for summary judgment. TT argued for a March 2, 1999 critical date (one year before the March 2, 2000 filing of TT’s related provisional application). eSpeed argued that the provisional application did not fully describe the patented invention and that, therefore, the critical date was June 9, 1999 (one year before filing of TT’s parent application). The Court held that whether the provision application met the written description requirements was a question of fact for the jury. The Court, therefore, determined this summary judgment motion in the alternative, either if the jury found a March 2 or a June 9 critical date. eSpeed argued that various uses of TT’s software before March 2 constituted public use because trades were either completely or partially performed to test the software. But the Court held that this use of the software was only experimental and done solely for the purpose of making sure the software functioned properly. The trades that were initiated during the testing were canceled prior to completion, except in several discreet incidents where the users testified that they had intended to cancel the trades but forgot. eSpeed also argued that the software was reduced to practice before March 2. But the Court held that the software was not reduced to practice until March 2 based upon the developers’ testimony that they did not believe the software was fully functioning and were still testing it prior to March 2. The Court, therefore, granted TT summary judgment for pre-March 2 use of the software. 

The Court held that the March 2 to June 9 alleged use was a question of fact for the jury. eSpeed’s email, video and trading record evidence for the March 2 to June 9 period might constitute public use, but a question of fact remained.

Trial started in this case the week of September 10. Expect to see several more opinions in this case and its related cases (there are two weighty summary judgment opinions still in my queue, as well as several other smaller opinions and orders). Additionally, I have some other obligations, but am planning to blog some of the trial. Stay tuned.

*You can read much more about this case and related cases in the Blog's archives.

http://www.chicagoiplitigation.com/tags/trading-technologies/

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Autotech Techs. Ltd. Partnership v. AutomationDirect.com, Inc., No. 05 C 5488, 2007 WL 2388794 (N.D. Ill. Aug. 17, 2007) (Holderman, C.J.).

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).*

Judge Moran denied plaintiff Trading Technologies’ (“TT”) motions to reconsider the Court’s grant of summary judgment of noninfringement regarding defendant eSpeed’s software utilizing automatic and drift recentering of a price axis (discussed here). This opinion is most notable for the Court’s blunt footnote acknowledging that this case will be appealed to the Federal Circuit and that, therefore, the Court believes that “speedy resolution” is in all parties’ best interests:

We recognize that TT may have a valid argument [that an amendment during prosecution did not narrow the claims] and note that this was a close call. We also recognize that our decision may have been influenced by the impending trial and our disinclination to reopen a significant issue for debate. We have previously noted that this case is certain to find itself in front of the Federal Circuit for ultimate resolution and acknowledge our place as a “way station” to the Court of Appeals. Therefore, we are further convinced that speedy resolution of all issues before this court is in everyone’s best interest. . . .

Certainly other courts have thought along these lines, but few voice these opinions. 

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Herman Miller, Inc. v. Teknion Corp., No. 05 C 2761, 2007 WL 2230042 (N.D. Ill. Jul. 30, 2007) (Gettleman, J.).

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Am. Needle, Inc. v. New Orleans Louisiana Saints, __ F. Supp.2d __, 2007 WL 2042764 (N.D. Ill. Jul. 11, 2007) (Moran, J.).

Judge Moran granted defendants, the NFL, NFL Properties and each of the thirty two teams (collectively the “NFL”) as well as Reebok International, Ltd. (“Reebok”), summary judgment on plaintiff’s Sherman Act antitrust claims, finding that the NFL acts through NFL Properties as a single entity for IP licensing purposes. For more than twenty years, NFL Properties licensed plaintiff to use various trademarks on its headwear. Plaintiff filed this suit after NFL Properties entered an exclusive license with Reebok, ending plaintiff’s license rights. Plaintiff argued that the NFL teams collectively, as well as in concert with Reebok, violated the antitrust laws by acting together through NFL Properties to license their collective intellectual property rights exclusively to Reebok (plaintiff argued that the NFL did not violate antitrust laws when it licensed to numerous parties, including plaintiff, through NFL Properties). But the Court held that licensing coordination between the NFL and its teams was equivalent to coordination between a corporation and its wholly-owned subsidiary. Because the Supreme Court treats corporations and their wholly-owned subsidiaries as single entities, there could be no conspiracy and no antitrust violation.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip op. (N.D. Ill. June 20, 2007) (Moran, Sen. J.).*

Judge Moran granted defendants (collectively "eSpeed") summary judgment of noninfringement regarding eSpeed's Dual Dynamic, eSpeedometer and Modified eSpeedometer products (collectively the "Products").**  The Court held that none of the Products met the "static" limitation in the claim terms "common static price axis" and "static display of prices."  In previous opinions, the Court construed and reconstrued "common static price axis" as:

a line comprising price levels that do not change positions unless a manual re-centering command is received . . . .

(emphasis added).  The Court also construed "static display of prices" as:

a display of prices comprising price levels that do not change positions unless a manual rec-centering command is received.

(emphasis added).  Because each of the Products included either an automatic re-centering feature or "drift" re-centering (automatic re-centering in response to market changes), the Court held that the Products did not meet the "static" limitation and, therefore, did not literally infringe plaintiff Trading Technologies' ("TT") patents.  In support of its ruling, the Court cited its claim construction reconsideration opinion (discussed in the Blog's archives), where it explained that "any movement of the static price axis leaves accused technology outside the protection of [TT's] patents."

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Stafford Trading, Inc. v. Lovely, No. 05 C 4868, 2007 WL 1512417 (N.D. Ill. May 21, 2007) (Coar, J.).

Judge Coar granted in part declaratory judgment plaintiffs' (collectively "Stafford") motion to dismiss and denied Stafford's summary judgment motion.  The Court dismissed defendants' fraud and unjust enrichment counterclaims after holding that they were preempted by the Illinois Trade Secret Act.  The Court also dismissed defendants' fraudulent concealment.  The material fact that Stafford allegedly failed to disclose was the opinion that Stafford owned the RIVAS electronic options trading platform outright.  But the Court held that an allegedly withheld opinion could not support a fraudulent concealment claim.

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Vanguard Prods. Group, Inc. v. Diam USA, Inc., No. 05 C 1323, Slip Op. (N.D. Ill. May 16, 2007) (Bucklo, J.).*

Judge Bucklo granted plaintiffs summary judgment of infringement and denied defendants summary judgment of invalidity.  The Court first construed the two claim terms at issue -- "electrically coupled" and "via the modular connector."  In both cases, the Court adopted the plaintiffs' construction after a detailed review of the intrinsic and extrinsic evidence.  Because neither term was in the original application or appears in the specification, the intrinsic evidence focused on the use of the terms within the claims.  Defendants also attempted to use claim language from a parent application to support their constructions, but the Court held that the prosecution of a term in a parent application generally does not limit different terms in its progeny.  In the instant case, the Court found that the parent application had used the broader term "electrical connection" instead of "electrically coupled" which weighed against defendants' construction.  Having ruled in plaintiffs' favor on the claim construction, the Court held that defendants' products infringed the asserted claims of plaintiffs' patents.  And the Court held that defendants' asserted prior art did not anticipate plaintiffs' patents.

*  Because I beat Westlaw on this one, you can access a copy of the Court's opinion here.  Please note that the Court issued a subsequent order modifying the opinion by deleting footnotes three and four, which were not intended to be part of the opinion.

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United States Gypsum Co. v. LaFarge N. Am., Inc., No. 03 C 6027, 2007 WL 1100804 (N.D. Ill. Apr. 3, 2007) (Hart, J.).

Judge Hart granted in part and denied in part the parties' cross-motions for summary judgment.  This case was a dispute over technology related to gypsum wallboard manufacturing and included patent infringement, trade secret misappropriation, breach of contract, Stored Communications Act ("SCA"), Computer Fraud and Abuse Act ("CFAA") and various related state tort claims.  The Court first looked at plaintiff's patent infringement claims regarding methods for making gypsum board and resolved the parties' claim construction disputes.  The Court then turned to defendants' argument that plaintiff was estopped from claiming infringement by equivalents because it failed to expressly refer to the doctrine of equivalents in its complaint or in its contention interrogatory responses.  The Court held that it was sufficient to allege infringement and cite Section 271 in a complaint.  And as to waiver for failure to disclose equivalents in its interrogatory responses, the Court held that defendants had shown no prejudice from plaintiff's failure to disclose equivalents and that while plaintiff did not use the term equivalents in its responses, it did state that it contended defendants infringed the patents even if defendants processes did not meet timing requirements in the claims.  As a result, plaintiff was not barred from arguing infringement pursuant to the doctrine of equivalents.

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Bryant v. Gordon, __ F. Supp.2d __, 2007 WL 461326 (N.D. Ill. Feb. 8, 2007) (Kennelly, J).

This opinion replaces Judge Kennelly's February 8, 2007 opinion.  The result is not altered, the Court granted summary judgment for defendants, Gordon and Mach 1 LLC ("Mach 1"), on plaintiff's, Bryant, claims of copyright infringement based upon copyrighted goods Mach 1 purchased free of encumbrances in a bankruptcy auction.  The only substantive change appears to be a statement that to the extent that Mach 1 acquired merchandise from the asset sale, Mach 1 was likely entitled to to depict that merchandise for advertising purposes, including on the internet.  But the Court stops short of holding that the goods depicted on Mach 1's internet site were all acquired from the asset sale.

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Global Computing, Inc. v. Hartford Cas. Ins. Co., No. 05 C 6753, 2007 WL 844618 (N.D. Ill. Mar. 14, 2007) (Hibbler, J.).

Judge Hibbler granted defendant-insurer summary judgment that it had no duty to indemnify or defend plaintiff-insured.  Microsoft brought suit against plaintiff alleging that plaintiff distrbuted counterfeit Microsoft software and used Microsoft logos in its advertising for the software, thus infirning Microsoft's copyrights and trademarks.  Plaintiff tendered the claim to defendant, its insurer, but defendant refused to defend plaintiff stating that its policy did not cover Microsoft's allegations.  After settling with Microsoft, plaintiff brought the instant suit alleging defendant breached its duty to defend and indemnify.  The Court noted that by refusing to defend, defendant estopped itself from denying coverage for policy reasons if it breached its duty to defend.  But because Microsoft's alleged infringement of its copyrights and trademarks (which were exempted from coverage), instead of the use of Microsoft's advertising ideas, the suit was not covered by the insurance policy.

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Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, 2007 WL 844610 (N.D. Ill. Mar. 14, 2007) (Moran, Sen. J.).*

Judge Moran denied in part and granted in part declaratory judgment defendant Trading Technologies' ("TT") Rule 37 motion for sanctions.  The Court held that declaratory judgment plaintiff Rosenthal Collins Group's ("RCG") motion for summary judgment of invalidity was "somewhat misleading" and possibly "disingenuous," but refused to dismiss the case.  Instead the Court struck the declaration underlying RCG's motion, denied RCG's summary judgment motion with leave to refile a motion "supported by proper evidence" and awarded TT its costs and attorneys fees associated with the Rule 37 motion, as well as its software expert's fees.  RCG filed a summary judgment motion arguing that TT's patents covering "double click" methods for executing an electronic trade were anticipated by the alleged prior art system "Wit DSM" as embodied in a software package RCG presented to the Court and TT on a laptop and claimed was essentially the software as it is existed more than one year prior to TT's patent filing.  TT's software expert identified that several lines of code had been added to the software by RCG's declarant, and that the added code performed certain functionalities required for anticipation.  When RCG's declarant was deposed, he stated that he had not written the "double click" portion of the original code and could not be sure that it was in the alleged prior art version of the WIT DSM.  These facts did not warrant dismissal of the case or barring of any evidence because RCG and its declarant had not made any false statements, although they had made deliberately vague statements.  Furthermore, while RCG did not identify that the software package included added code which the Court found disturbing, it did include a comparison program on the laptop it provided to TT and the Court which would have identified the added code.

This case involves the several of the same patents as the other TT case before Judge Moran.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

                                                                * * *

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

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