Bobel v. U Lighting Am., Inc., No. 12 C 6064, Slip Op. (N.D. Ill. Feb. 12, 2013) (Kennelly, J.).
Judge Kennelly denied defendants U Lighting America and its sole officer and employee’s (collectively “ULA”) motion to dismiss this patent suit for lack of personal jurisdiction. The Court had specific jurisdiction over ULA because ULA shipped 76,000 of the accused compact fluorescent lights in five shipments to a third party in Illinois.
Bobel v. U Lighting Am., Inc., No. 12 C 6064, Slip Op. (N.D. Ill. Feb. 16, 2013) (Kennelly, J.).
Judge Kennelly granted in part defendant U Lighting Group’s (“ULG”) motion to dismiss plaintiff’s patent case for lack of personal jurisdiction and improper service. The Court held that personal jurisdiction was proper:
But while the Court had personal jurisdiction, plaintiff did not properly serve ULG. Plaintiff served ULG by personally serving ULA’s president. Pursuant to Fed. R. CIv. P. 4(f)(3), plaintiff could have served ULG via its representative. But plaintiff can only serve in that manner with leave of the Court, which ULG never sought.
Flava Works, Inc. v. Rowader, No. 12 C 7181, Slip Op. (N.D. Ill. Nov. 16, 2012) (Lefkow, J.).
Judge Lefkow denied defendant’s Fed. R. Civ. P. 12(b)(2) motion to dismiss plaintiff Flava Works copyright suit for lack of jurisdiction and improper venue. Defendant - a California citizen who did not direct any business at Illinois - would not have been subject to general or personal jurisdiction in Illinois. But defendant accepted a valid forum selection clause including Chicago by using Flava Works’ website. While it could be considered an un-negotiable contract of adhesion, defendant could have used another website with a different forum selection clause.
Universal Beauty Prods., Inc. v. Morning Glory Prods., Inc., No. 10 C 3212, Slip Op. (N.D. Ill. Oct. 18, 2012) (Grady, J.).
Judge Grady denied defendant Morning Glory’s motion to transfer venue to the E.D. North Carolina in this competition-based false patent marking case. The parties agreed that venue was proper in each district. The Court, therefore, only considered the convenience factor and the public interest.
Convenience Factors
Unlike many prior false marking cases, plaintiff UBP’s choice of forum was given weight as defendant MGP’s competitor who was allegedly harmed by the false marking in this jurisdiction.
The alleged false marking decisions were made in North Carolina, but UBP’s harm allegedly occurred in this district. So, the situs of facts and access to judges were both neutral. Convenience of witnesses weighed slightly in MGP’s favor. Only MGP identified local third party witnesses. But the input of those witnesses was unclear. Convenience of the parties also weighed slightly in MGP’s favor, but the Court balanced that by requiring depositions of MGP personnel to occur where they are located.
Public Interest Factor
The public interest factors were neutral. Both districts had an interest in keeping cases related to their resident corporations. And both districts were well-versed in the law.
CoStar Realty Information, Inc. v. CIVIX-DDI, LLC, No. 12 C 4968, Slip Op. (N.D. Ill. Oct. 18, 2012) (Holderman, C. J.).
Chief Judge Holderman denied patent holder CIVIX-DDI’s motion to transfer this patent dispute to the E.D. Virginia.
Convenience of the Parties
Plaintiff CoStar’s choice of forum was given deference - despite not being resident in Illinois -because of defendant CIVIX-DDI’s prior and existing litigation involving the same patents in this district. The likely location of documents - in Washington, DC - did not weigh in favor of transfer because they would likely be transferred electronically. The third party witnesses were in or near the E.D. Virginia, weighing in favor of transfer.
Public Interest
Both jurisdictions were familiar with the law. The E.D. Virginia had a greater interest in the dispute because CoStar was located there. The ability to try related cases together, however, weighed against transfer. Balancing the locations, the ability to consolidate outweighed the other factors.
Addition & Detoxification Institute, LLC v. Rapid Drug Detox Center, No. 11 C 7992, Slip Op. (N.D. Ill. Oct. 11, 2012) (Coleman, J.).
Judge Coleman granted in part plaintiff ADI’s motion to compel limited jurisdictional discovery in this patent case. ADI’s requests were overly broad and the Court accepted defendant’s declarations, but the Court ordered that defendant respond to limited additional interrogatories:
Flava Works, Inc. v. Terry, No. 12 C 1884, Slip Op. (N.D. Ill. Oct. 11, 2012) (Coleman, J.).
Judge Coleman granted defendant’s motion to transfer this copyright and trademark infringement case to the M.D. Florida. As an initial matter, defendant did not waive the issue of personal jurisdiction because the answer contested it. While there was at least one witness and some documents in Illinois, defendant, much of plaintiff’s business and many of the documents were in Florida. The Court, therefore, transferred the case to Florida.
Pyramid Packaging, Inc. v. Pyramid Packaging, LLC, No. 12 C 4420, Slip Op. (N.D. Ill. Jul. 20, 2012) (Shadur, Sen. J.).
Judge Shadur sua sponte raised several issues with defendant’s motion to dismiss in this trademark case. Defendant’s counsel claimed that service was delayed and made upon the wrong entity. But plaintiff’s sworn service affidavit “flatly refuted” those claims. These and other issues would be discussed at the hearing on defendant’s motion.
Heathcote Holdings Corp., Inc. v. Suncast Corp., No. 11 C 1010, Slip Op. (N.D. Ill. Jul. 25, 2012) (Zagel, J.).
Judge Zagel held that the America Invents Act (“AIA”) provisions limiting false patent marking standing to persons that suffered a competitive injury, even in ongoing cases, was not an unconstitutional taking. Defendant allegedly marked several different snow shovel models with stickers indicating that the shovels were covered by expired design and utility patents - the allegedly false marking. After the filing of the suit, the AIA retroactively required that the plaintiff have suffered a competitive injury in order to have standing to maintain its false marking suit. Plaintiff Heathcote acknowledged that it lacked standing pursuant to the new standard, but argued that the retroactive elimination of its claim was an unconstitutional taking.
The Court held, citing to several decisions in other districts, that Congress was free to create qui tam actions and free to remove them. Congress had the authority to invite private citizens to enforce its laws and the authority to remove that right when Congress decided that the volume of cases was too great, for whatever reason.
Brown-Younger v. Lulu.com, No. 12 C 1979, Slip Op. (N.D. Ill. June 19, 2012) (Shadur, Sen. J.).
Judge Shadur sua sponte issued an order requiring pro se plaintiff to appear and answer the Court’s questions regarding whether plaintiff’s filings met the Fed. R. Civ. P. 11(b) requirement of objective good faith based upon a series of events in the case including:
Pumponator Inc. v. Watersports, LLC, No. 11 C 3956, Slip Op. (N.D. Ill. April 5, 2012) (Aspen, Sen. J.).
Judge Aspen denied the Ketz defendant’s (“Ketz”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act case involving water-balloon filling devices. The Court did not address whether it had general jurisdiction over Ketz because it found that it had specific jurisdiction. While Ketz had not owned real estate, paid taxes, voted or maintained offices in Illinois, Ketz had sufficient Illinois contacts:
Finally, the individual defendant was not protected by the fiduciary shield doctrine because he was the sole owner of Ketz & Associates Inc.
First Classics, Inc. v. Trajectory, Inc., No. 12 C 4473, Slip Op. (N.D. Ill. June 12, 2012) (Shadur, Sen. J.).
Judge Shadur sua sponte remanded plaintiff’s breach of contract case to the Cook County state court. Defendants removed the case arguing that it was a copyright case and was therefore subject to federal question jurisdiction, but in fact plaintiff’s claim sounded in contract. And a breach of copyright agreement does not create federal question jurisdiction.
Minemyer v. R-Boc Reps., Inc., No. 7 C 1763, Slip Op. (N.D. Ill. May 11, 2012) (Cole, Mag. J.).
Judge Cole denied defendant Grimsley’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this patent dispute. As an initial matter, the motion was denied as waived. Judge Coar denied an initial motion on the same grounds with leave to refile based upon information gathered during discovery. But Grimsley did not raise the issue for more than four and a half years, after entry of the final pretrial order and on the sixth day of trial. By failing to raise his motion in the final pretrial order, Grimsley waived his jurisdiction argument. And Grimsley would have also lost on the merits. Judge Coar’s original analysis remained correct. The fiduciary shield doctrine did not apply. The evidence showed that Grimsley was not acting at his employer Dura-Line’s instruction. Grimsley had discretion and control, and was “intimately involved” in a deception regarding the infringing product.
Caldera Pharms. Inc. v. Los Alamos Nat’l Security, LLC, No. 10 C 6347, Slip Op. (N.D. Ill. Jan. 26, 2012) (Bucklo, J.).
Judge Bucklo granted in part defendant Los Alamos National Security’s motion to transfer this dispute involving a patent license agreement to the District of New Mexico. As an initial matter, the Court held that venue and personal jurisdiction were proper as to all claims and defendants in New Mexico. Specifically, New Mexico would have personal jurisdiction over UChicago Argonne because the harm of the alleged conspiracy occurred in New Mexico.
The convenience of the parties and witnesses favored New Mexico. Most defendants were New Mexico residents, only UChicago Argonne was an Illinois resident. Plaintiff Caldera was also a New Mexico entity. And because Illinois was not Caldera’s home jurisdiction, its choice of forum was given less deference. Finally, a significant number of witnesses were located in New Mexico. The Court, therefore, transferred the case to New Mexico.
New Archery Prods. Corp. v. Out RAGE, LLC, No. 11 C 7695, Slip Op. (N.D. Ill. Feb. 6, 2012) (Lindberg, J.).
Judge Lindberg granted defendant Out RAGE’s motion to transfer this case to the Western District of Wisconsin, and did not rule upon Out RAGE’s motion to dismiss, leaving it for the transferee court. While the various witness convenience considerations were neutral, Out RAGE’s earlier-filed Western District of Wisconsin patent litigation, in which plaintiff New Archery filed its instant claims as counterclaim, weighed in favor of transfer. The two cases were parallel and overlapping. A decision in one case would decide the other. And the only way to consolidate the two cases. As a result, the Court transferred the case to Wisconsin.
SMP Logic Sys., LLC v. Jerome Stevens Pharms., Inc., No. 11 C 5075, Slip Op. (N.D. Ill. Jan. 26, 2012) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan transferred this patent case involving pharmaceutical methods to the Eastern District of New York, for the following reasons:
Waits v. Microsoft Corp, No. 11 C 7486, Slip Op. (N.D. Ill. Feb. 8, 2012) (Darrah, J.).
Judge Darrah denied plaintiff’s application to proceed in forma pauperis and dismissed plaintiff’s complaint for failure to state a claim. Courts are required to dismiss a complaint when plaintiff seeks in forma pauperis status along with a complaint that fails to state a claim. Plaintiff’s complaint appears to sound in patent, trademarks and copyright. But it was “devoid of any substantive allegations” and, therefore, had to be dismissed.
Lewis v. Grote Indus., Inc., No. 11 C 7069, Slip Op. (N.D. Ill. Jan. 24, 2012) (Holderman, C.J.).
Judge Holderman granted defendant Grote Industries’ (“Grote”) motion and transferred this patent case involving high-powered LED lights to the Southern District of Indiana. The cases sole connection to the Northern District of Illinois was that Grote sold product here, as it did in many other states. That weak connection diminished the preference for plaintiff’s choice of forum. Additionally, most of the witnesses and documents were at Grote’s facilities in the Southern District of Indiana. And while plaintiff, a UK resident, would be inconvenienced in any district, Grote would be far less inconvenienced in the Southern District of Indiana, its home district.
USWAY Corp. v. Wardzala, No. 11 cv 7023, Slip Op. (N.D. Ill. Jan. 18, 2012) (Aspen, Sen. J.).
Judge Holderman denied defendants’ motion to stay plaintiffs’ (collectively "USWAY") trademark and copyright case involving its USWAY mark based upon the Colorado-River abstention doctrine. The Court did not have to address the ten-factor test because, as a threshold matter, the parties state and federal cases were not parallel, as required by the doctrine. The federal action — based upon USWAY’s alleged intellectual property — was unrelated to defendants’ state court suit focusing on allegations of unpaid loans, unissued shares and deceptive business practices. And as a result, the evidence required for the two cases was completely different. The state court case would turn on loan documents, billing records, proof of product defects and the written communications between the parties. The federal case turned upon evidence about the actions of each of the nine defendants related to their respective use of the marks. Finally, the cases were unrelated even though the state case could have a negative impact upon the federal case. A finding in defendants’ favor in their state court case could result in defendants being held to own USWAY’s intellectual property. But hypothetical outcomes could not be the basis of abstention.
Original Creations, Inc. v. Ready Am., Inc., No. 11 C 3453, Slip Op. (N.D. Ill. Oct. 5, 2011) (Bucklo, J.).
Judge Bucklo denied defendant Life+Gear’s Fed. R. Civ. P. 12(b)(2) and (3) motion to dismiss for lack of personal jurisdiction and improper venue in this patent dispute. While Life+Gear did not have Illinois offices, it did have an interactive website and at least one Illinois sale. Life+Gear also sold product to two distributors that sold that product in Illinois and Life+Gear was reasonably aware of those channels of sale.
Venue was proper because venue in a patent case exists wherever there is personal jurisdiction.
Fasteners for Retail, Inc. v. Andersen, No. 11 C 2164 Slip. Op. (N.D. Ill. Aug. 30, 2011) (Kennelly, J.).
Judge Kennelly denied defendant Andersen’s motion to dismiss this patent and trade secret case. The Court had personal jurisdiction over Andersen because he worked for defendant K International, an Illinois entity, and Andersen had solicited his former customers in Illinois.
Venue was also proper in the Northern District. A substantial part of the facts at issue occurred in Illinois. The parties’ prior agreement did not release plaintiff’s trade secret claims because they were not contemplated when plaintiff signed the agreement.
Modern Trade Comms., Inc. v. PSMJ Resources, Inc., No. 10 C 5380, Slip Op. (N.D. Ill. Aug. 19, 2011) (Pallmeyer, J.).
Judge Pallmeyer granted defendants PSMJ Resources’ ("PSMJ") and Oser Communications’ ("Oser") motion to dismiss for lack of personal jurisdiction in this Lanham Act case involving plaintiff Modern Trade Communications’ ("MTC") rights in its Metal Construction News mark for a metal industry trade publication. At the Metalcon tradeshow in 2010, Oser distributed a daily publication entitled Metal Daily News at PSMJ’s direction. MTC alleged that the Metal Daily News title infringed its Metal Construction News mark, which MTC used to publish an official show guide at the same conference.
PSMJ was a Massachusetts company without offices or personnel in Illinois. It approximated that 3% of its revenue at the 2009 Metalcon show in Florida was from Illinois residents. PSMJ’s website was not interactive. PSMJ did produce six training seminars unrelated to Metalcon in Illinois. PSMJ’s small revenues from Illinois residents did not create general jurisdiction. While related to Metalcon, PSMJ’s contract with a third party in Illinois did not create specific jurisdiction. And PSMJ’s production of the 2002 Metalcon in Illinois did not create specific jurisdiction because the accused Metal Daily News was only distributed at the 2010 Metalcon in Las Vegas. The Court, therefore, had neither general nor specific jurisdiction over PSMJ.
Oser was an Arizona company without offices or personnel in Illinois, although Oser did distribute publications at two to three trade shows per year in Chicago. Oser’s website was passive, except that the 2010 Metal Daily News was available on the site for downloading. Attendance at two to three trade shows each year in Chicago did not create the systematic contacts necessary for general jurisdiction. Oser’s website was not sufficient to create specific jurisdiction. MTC made no allegation that the website was targeted at Illinois, and the availability of the publication as a free download was not sufficient either. And MTC did not allege how Oser’s alleged infringement in Las Vegas was tied to Oser’s Illinois activities. Furthermore, the sale of an advertisement in the Metal Daily News to an Illinois resident, even combined with the website allegations, was not sufficient to create specific jurisdiction.
The Court also denied MTC’s motion to amend because it did not allege any new facts that might create personal jurisdiction.
Simonian v. Allergan, Inc., No. 10 C 2414, Slip Op. (N.D. Ill. Apr. 28, 2011) (St. Eve, J.).
Judge St. Eve denied defendant Allergan’s motion to dismiss plaintiff Simonian’s false patent marking suit holding that the false marking statute was constitutional pursuant to the Take Care Clause. The government retained little control over false marking actions, but that was less of a concern because false marking cases were civil not criminal. And, in fact, the government retained sufficient control. The executive branch was notified of each suit because the district court clerk was required to give the Director of the Patent Office (a member of the executive branch) notice of every patent suit. Furthermore, the government may intervene in every case. And when the government intervenes, plaintiff cannot dismiss a case without the government’s agreement.
Triteq v. HMC Holdings LLC, No 11 C 843, Slip Op. (N.D. Ill. Jul. 5, 2011) (Leinenweber, J.).
Judge Leinenweber granted in part and denied in part defendant HMC Holdings’ ("HMC") motion to dismiss this patent and false marking complaint involving pistol boxes. Plaintiff Triteq had standing to bring its declaratory judgment claim based upon HMC’s letter to Triteq alleging Triteq’s products were direct copies of HMC’s patented product and seeking the names of Triteq’s customers. The Court dismissed Triteq’s false marking claim – alleging that the marked pistol boxes were not covered by the marked design patent – with leave to replead. Triteq’s claim lacked specific facts showing intent as required by BP Lubricants.