Header graphic for print
Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Category Archives: Jurisdiction

Subscribe to Jurisdiction RSS Feed

Court May Not Maintain Jurisdiction After Dismissal With Prejudice

Posted in Jurisdiction

Digital Design Corp. v. Kostan, No. 11 C 6243, Slip Op. (N.D. Ill. Oct. 7, 2013) (Holderman, J.).

Judge Holderman denied the parties’ joint motion for entry of a consent judgment.  The Court previously granted the parties agreed stipulation of dismissal and dismissed the parties’ claims with prejudice.  Seventh Circuit precedent prevents district courts from retaining jurisdiction after dismissing with prejudice.  Had the parties wanted a consent judgment entered they should have dismissed without prejudice or sought the consent judgment before dismissing with prejudice.

Plaintiff Given an Opportunity to Correct Diversity Jurisdiction Pleading

Posted in Jurisdiction, Pleading Requirements

Alliance for Water Efficiency v. Fryer, No. 14 C 115, Slip Op. (N.D. Ill. Jan. 15, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Alliance for Water Efficiency (“AWE”) to correct two deficiencies in its diversity jurisdiction pleading:

  1. AWE pled that it was headquartered in Illinois, but did not plead its corporate citizenship.
  2. AWE pled that defendant was a resident of California, but not whether defendant was also a citizen of California.

Although the Seventh Circuit generally required dismissing complaints where an individual’s residence, but not citizenship, is pled the Court found that “Draconian” and afforded AWE five days to correct its complaint, if it could.

Foreign Defendant’s Refusal To Concede Jurisdiction In Any State Creates Jurisdiction

Posted in Federal Rules, Jurisdiction

Snap-On Inc. v. Robert Bosch, LLC, No. 09 C 06914, Slip Op. (N.D. Ill. Sept. 26, 2013) (Kocoras, J.).

Judge Kocoras denied defendant Beissbarth’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this patent infringement case involving patents relating to an optical wheel alignment system.  Plaintiff asserted jurisdiction over Beissbarth was proper pursuant to Fed. R. Civ. P. 4(k)(2) that establishes jurisdiction if: (1) the plaintiff’s claim arises under federal law: (2) the defendant is not subject to jurisdiction in any state’s court of general jurisdiction; and (3) the exercise of jurisdiction comports with due process. The first requirement was uncontested. The second requirement was satisfied because Beissbarth refused to identify another forum where jurisdiction would be proper.  Under the  Federal Circuit’s burden shifting approach, if a defendant asserts that it cannot be sued in the form state and refuses to identify any other state where suit is possible, Rule 4(k)(2) may be used to establish jurisdiction.  The third requirement of Rule 4(k)(2) was satisfied under the Federal Circuit’s three-part test to determine if personal jurisdiction over a foreign defendant comports with due process: Beissbarth purposefully directed its activities at residents of the United States; the claims against Beissbarth “arise out of” and “relate to” Beissbarth’s activities in the United States; and, exercising jurisdiction would be reasonable and fair.

Interactive Website Does Not Create Personal Jurisdiction

Posted in Jurisdiction

Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. Dec. 13, 2012) (Shadur, Sen. J.).

Judge Shadur granted defendant LeaseWeb USA (“LeaseWeb”) Fed. R. Civ. P. 12(b)(2) & (6) motion to dismiss for lack of personal jurisdiction and failure to state a claim.  Plaintiff Flava Works pointed largely to Lease Web’s interactive website.  But that website was not enough for general or specific jurisdiction.  And LeaseWeb’s single Illinois customer was similarly insufficient.  FlavaWorks offered no argument or proof that the customer was related to the alleged copyright infringement in this case.

The Court also dismissed LeaseWeb because FlavaWork’s complaint alleged no facts that would make it liable for copyright infringement.

 

Passive Website Alone Cannot Create Jurisdiction

Posted in Jurisdiction

Sage Prods, Inc. v. Primo, Inc., No. 12 C 3620, Slip Op. (N.D. Ill. Mar. 5, 2013) (Coleman, J.).

Judge Coleman granted defendant Primo’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trade dress case involving a boot designed to cushion and prevent heel ulcers.  Primo did not avail itself of Illinois by soliciting sales in Illinois or regularly selling to Illinois customers.  Primo did contract with a third party sales rep, but that rep only made calls to two Illinois customers after general conversations at a Las Vegas trade show.  And neither Illinois entity returned the phone calls.  And operating a website that was accessible in, but did not target, Illinois was not sufficient to create jurisdiction.  Finally, Primo’s website was passive.  It did not provide any forms for purchasing or the ability to directly purchase the accused boot.

 

 

Illinois Witnesses Not Sufficient to Retain Case Where Michigan Witnesses Provide Same Proof

Posted in Federal Rules, Jurisdiction

Addiction & Detoxification Institute, LLC v. Rapid Drug Detox Center, No. 11 C 7992, Slip Op. (N.D. Ill. Mar. 11, 2013) (Coleman, J.).

Judge Coleman granted defendant Rapid Detox’s 28 U.S.C. § 1404(a) motion to transfer this patent infringement case to the Eastern District of Michigan.  While Rapid Detox had a website and had patients from Illinois, the website did not specifically target Illinois residents and Rapid Detox’s treatments all occurred in Michigan.  Furthermore, to the extent that patients became necessary witnesses, there was no reason plaintiff could not use Michigan patients instead of the Illinois patients that it identified in the motion papers. 

 

 

Specific Jurisdiction Created by Accrued Sales to Illinois

Posted in Jurisdiction

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.

 

Court has Jurisdiction Over Foreign Defendant But Service was Not Perfected

Posted in Jurisdiction

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:

  • ULG identifies co-defendant U Lighting America (“ULA”) as its US office; and
  • ULG frequently communicates with ULA.

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. 

 

  

 

Forum Selection Clause Creates Jurisdiction

Posted in Jurisdiction

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.

Competition-Based False Patent Marking Case Not Transferred

Posted in Jurisdiction

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.

Ability to Consolidate Prevents Transfer

Posted in Jurisdiction

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.

Limited Jurisdictional Discovery Ordered Despite Overbroad Requests

Posted in Jurisdiction

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:

  • Identify customers by race and whether they reside in this district.
  • Provide a general statement of defendant’s worth to demonstrate its ability or lack thereof to litigate in this district.

Transfer Warranted Where All Parties are in Florida

Posted in Jurisdiction

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.

Motion to Dismiss Conflicting With Service Affidavit Raises “Red Flag”

Posted in Jurisdiction

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.

AIA False Marking Limitations Upheld as Constitutional

Posted in Jurisdiction

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. 

Repeated Improper Filings May Lead to Dismissal

Posted in Jurisdiction

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:

  • Plaintiff brought her copyright infringement claims despite an arbitration clause in its publishing agreement with defendant Lulu.com.  And plaintiff failed to squarely answer why the arbitration claim did not govern the case.
  • Plaintiff “lash[ed]” out at Lulu.com - seeking a stay pending an FBI investigation - and plaintiff’s appointed counsel - which counsel refuted “chapter and verse.”
  • Plaintiff improperly sought continued sanctions against defendant Apple.

 

 

Sales of Similar Products Create Specific Jurisdiction

Posted in Jurisdiction

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:

  • Ketz had a single employee visit to Illinois.
  • Ketz had numerous emails with its new Illinois-based suppliers, defendant Water Sports.
  • Ketz had received about $1,000 in commission from Water Sports.
  • Approximately 147 Illinois storefronts placed orders with Ketz.
  • Ketz represented multiple other toy manufacturers in Illinois during the relevant period, with $1.2 M in sales.

Finally, the individual defendant was not protected by the fiduciary shield doctrine because he was the sole owner of Ketz & Associates Inc.

Copyright Agreement Does Not Create Federal Question Jurisdiction

Posted in Jurisdiction

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.

Arguments Not in Final Pre-Trial Order Waived

Posted in Jurisdiction, Trial

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.

Little Deference for Plaintiff’s Non-Home Forum Clinic

Posted in Jurisdiction

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.

Parallel Cases in Different Districts Required Transfer

Posted in Jurisdiction

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.

Contacts in New York Trumps Plaintiff’s Choice of Forum

Posted in Jurisdiction

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:

  • While the Court gave plaintiff SMP’s choice of forum deference, less is given when, as here, plaintiff’s counsel were the only link to Chicago.
  • Defendant’s headquarters, its manufacturing facilities and its distributor were all located in or near the Eastern District of New York.
  • The interests of justice were served by transfer because New York had closer ties to the case.

Lack of Substantive Allegations Requires Dismissal

Posted in Jurisdiction

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.

Case Transferred to Defendant’s Home District

Posted in Jurisdiction

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.