Header graphic for print

Chicago IP Litigation

Tracking Northern District of Illinois IP Cases

Supplemental Jurisdiction Found Over Disparagement & Defamation Claims

Posted in Jurisdiction

DR Distributors, LLC v. 21 Century Smoking, Inc., No. 12 C 50324, Slip Op. (N.D. Ill. Nov. 20, 2014) (Johnston, Mag. J.).

Judge Johnston granted defendant’s motion to amend adding state law disparagement and defamation claims in this Lanham Act case involving plaintiff’s 21ST CENTURY SMOKE and defendant’s 21ST CENTURY SMOKING marks.  Defendant’s disparagement and defamation claims were at least “loosely” connected to the facts that defendant’s Lanham Act unfair competition and trademark infringement claims because they arose from allegations surrounding plaintiff’s conduct and statements made at a 2013 trade show.

Court Sua Sponte Strikes Portions of Answer

Posted in Pleading Requirements

Vogue Tyre & Rubber Co. v. Mendez, No. 14 C 5839, Slip Op. (N.D. Ill. Oct. 27, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte struck portions of defendant’s answer and dismissed certain affirmative defenses as follows:

  • The Court struck denials based upon lack of information and belief.  While lacking information and belief acts as a denial, it is “oxymoronic” to claim a lack of information and belief, but to be able to affirmatively deny the statements.
  • The Court dismissed defendant’s laches affirmative defense because it offered no facts in order to meet the notice pleading standard as set out by Twombly/Iqbal.

District Court Claim Constructions Not Controlling

Posted in Claim Construction

Costar Realty Info., Inc. v. CIVIX-DDI, LLC, Nos. 12 C 4968, 7091 & 8632, Slip Op. (N.D. Ill. Sep. 23, 2013) (Holderman, Sen. J.).

Judge Holderman construed the disputed claim terms in this patent case involving methods of locating points of interest in a geographic region by accessing a remote database.  Before construing the claims, the Court noted the uncertainty regarding the preclusive effect of prior district court constructions with some courts holding prior constructions should be deferred to absent clear error and other courts considering them merely instructive.  The Court held that other opinions were not controlling based upon the Supreme Court’s statements in Markman that making claim construction a matter of law would not create consistency, even within a single district.  Of particular note, were the following constructions:

  • “The request containing (a) at least one user-selected category and (b) a user-selected geographic vicinity” was” construed as “the request containing, in a single electronic representation, (a) at least one user-selected category and (b) a user-selected geographic vicinity”;
  • “Advertising information about a business” was construed as “paid promotion of a business name, service, or product”;
  • “Advertisements” was construed as “paid promotions”;
  • “Database” was construed as “a collection of related information organized for convenient access”;
  • “Geographical/geographic position” was construed as “a specific location within a geographic vicinity”;
  • “Wherein a user at the port may locate the one item of interest” was construed “so that a user at the port has sufficient information to locate an item of interest”;
  • “Spatial detail” was construed as “a system of linked computer networks, world-wide in scope that typically is associated with using TCP/IP as a standard protocol.”
  • “At a database, receiving at least in part through the Internet, a request from one of a plurality of ports” did not require construction; and
  • “Determining, at the database, a plurality of advertisements in response to the request . . .  from the database, transmitting, at least in part through the Internet, the response to the port” did not require a construction.

Nominative Fair Use Not Decided on Motion to Dismiss

Posted in Pleading Requirements

Slep-Tone Ent. Corp. v. Elmwood Enterprises, Inc., No. 13 C 7346, Slip Op. (N.D. Ill. Apr. 21, 2014) (Lefkow, J.).

Judge Lefkow denied defendant Elmwood’s Fed. R. Civ. P. 12(b)(6) & (7) motion to dismiss plaintiff Slep-Tone’s Lanham Act claims related to its SOUND CHOICE marks used in connection with its karaoke accompaniment tracks.  Of particular note, the Court held as follows:

  • Slep-Tone sufficiently pled Elmwood’s alleged use in commerce by claiming that Elmwood used karaoke services as an inducement for its customers’ patronage and purchase of food and drink.
  • Slep-Tone sufficiently pled likelihood of confusion.  It was sufficient to plead likely confusion of karaoke patrons, even though Slep-Tone’s direct customers were the “KJs” that purchase the tracks and play them for the consumers who do the karaoke, not those consumers.  The two markets were sufficiently related, and Slep-Tone’s sales to KJs ultimately met the needs of the consumers it alleged were likely to be confused.
  • Pursuant to the Seventh Circuit’s Hard Rock test, a supplier of goods or services can be liable for contributory infringement even without an affirmative duty to prevent trademark violation.  The supplier does have a duty “to understand what a reasonably prudent person would understand.”  Based upon that standard, Slep-Tone sufficiently pled contributory infringement.  Slept-Tone pled that Elmwood hires and may control its KJs and that Elmwood had actual knowledge of the infringing materials.
  • Elmwood’s nominative fair use defense failed.  First, Northern District judges have held that nominative fair use could not be decided on a Rule 12(b) motion.  Second, the defense failed substantively based upon Slep-Tone’s allegations.  Slep-Tone alleged that the KJs used the SOUND CHOICE mark on bootleg versions of Slep-Tone’s tracks.  That would suggest affiliation, sponsorship or endorsement, which makes the nominative fair use doctrine inapplicable.
  • Dastar was not applicable to this case.  Slep-Tone was not using its SOUND CHOICE marks to control the content of the tracks.  Slep-Tone’s claims were not focused upon the music.  They were focused upon the use of Slep-Tone’s marks in connection with tracks allegedly from third parties.
  • Slep-Tone’s state law unfair competition law claims survived the motion to dismiss for the same reasons as the Lanham Act claims did.
  • The KJs were not necessary parties to the litigation.  Slep-Tone’s claims could be addressed fully without the inclusion of the KJs.

Transfer Warranted Based Upon Minimal N.D. Illinois Contacts

Posted in Jurisdiction

Red Pine Point LLC v. Amazon.Com, Inc., Slip Op. (N.D. Ill. Jul 16, 2014) (Holderman, J.).

Judge Holderman granted defendants’ joint motion to transfer these consolidated patent cases to the N.D. California, pursuant to 28 U.S.C. § 1404(a).  First, the generic reasons plaintiff Red Pine Point cited in support of keeping the case in the Northern District — neutrality, Local Patent Rules, the Patent Pilot Program, and judicial expertise — were all equally true of the N. D. California and plaintiff’s choice of forum warranted little deference because the Northern District had, at most, minimal ties with the dispute.  Finally, the companies that designed the accused technologies, the witnesses and the documents, were in or near the N.D. California.  The interests of justice also, therefore, required transfer.


Expert May Not Speculate on an Examiner’s Hypothetical Reactions

Posted in Experts

The Medicine Co. v. Mylan Inc., No. 11 C 1285, Slip Op. (N.D. Ill. Apr. 17, 2014) (St. Eve, J.).

Judge St. Eve granted in part and denied in part plaintiff The Medicine Company’s (“TMC”) Daubert motion seeking to exclude certain opinions of defendants (collectively “Mylan”) in this patent case involving an injectable anticoagulant that prevents blood clotting during coronary procedures.  As an initial matter, the Court held that because it would be the tried of fact, the Court was free to delay its gatekeeping function by allowing “borderline” testimony, subjecting the testimony to cross-examination and deciding later whether the testimony should be considered or excluded.  The Court noted, however, that at some point it would be required to provide “more than just conclusory statements of admissibility or inadmissibility ….”

The Court denied TMC’s motion to the extent that the expert was allowed to rely upon a statistical analysis table prepared by a second expert.  The Court already held that the second expert’s analysis was sufficiently reliable and an expert was free to rely upon research conducted by others.  Furthermore, the expert independently opined upon the analysis based upon his own experience.

The Court granted TMC’s motion to the extent that the expert sought to testify regarding how the prosecuting Patent Examiner would have acted or what she would have thought had TMC provided different information during prosecution. Those opinions were speculation and, therefore, were not sufficiently reliable.  The expert, however, was permitted to testify to facts and what the expert believes would have been material to the Patent Examiner, without opining upon what the Patent Examiner would have thought or done.

Illinois Savings Clause Revives Third Party Claims

Posted in Pleading Requirements

Fujitsu Ltd. v. Tellabs Ops., Inc., No. 12 C 3229, Slip Op. (N.D. Ills. Apr. 18, 2014) (Holderman, Sen. J.).

Judge Holderman denied defendants’ (collectively “Tellabs”) Fed. R. Civ. P. 12(c) motion to dismiss two Fujitsu entities’ trade secret and other tort counterclaims based upon the relevant statute of limitations in this patent case.  The Court held that while the claims were otherwise time-barred, they were preserved by the Illinois Savings Clause which waives the statute of limitation for counterclaims where plaintiff’s original claim arose before the counterclaim was time-barred.  Here the Fujitsu defendants presented evidence that Tellabs’ patent claims arose before Fujitsu’s counterclaims were time-barred.  And although at least one Fujitsu defendant was technically a third party, the cases were sufficiently related to warrant application of the Savings Clause. 

Patent Cases Consolidated Over Objections

Posted in Local Rules

Velocity Patent LLC v. Mercedes-Benz USA, LLC, No. 13 C 8413, Slip Op. (N.D. Ill. Apr. 14, 2014) (Darrah, J.).

Judge Darrah granted plaintiff Velocity Patent’s Local Rule 40.4 motion to consolidate patent cases against various corporate entities of Audi, BMW, Chrysler, Jaguar and Mercedes.  Audi objected to consolidation, while the other defendants did not oppose it.  While asserting the same patent alone is not sufficient for consolidation, the Court held that construing the claims in a single proceeding would save “substantial judicial time and resources.”  And the Court held that the separate proceedings were susceptible to a unified resolution, although the Court did not guarantee that they would be resolved in a single proceeding.

Trading Technologies: Federal Circuit Claim Constructions are Binding

Posted in Claim Construction

Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill.) (Coleman, J.).

Judge Coleman granted plaintiff Trading Technologies’ (“TT”) motion to terminate Markman proceedings in this patent case involving commodities trading software — click here for much more on this case in the Blog’s archives).  Defendants (collectively “CQG”) sought construction of numerous terms, after having participated in the prior action brought against former defendant eSpeed which was ultimately appealed to the Federal Circuit.  The Court held as follows:

  • The Court declined to construe the “static limitation” terms.  In the prior case, Judge Moran construed “static limitation” and that construction was reviewed by the Federal Circuit.  Because the Federal Circuit decision was binding upon the Court and because CQG had fully participated in that proceeding, the Court would not further construe these terms.
  • The Court also declined to construe the “manual re-centering” terms.  These terms appear not in the claims, but in Judge Moran’s construction of the static limitation terms.  The Court, therefore, declined to construe them for the same reasons that it would not further construe the static limitation terms.
  • The Court declined to construe “single action” because it too had already been construed by the Federal Circuit.

Finally, the Court declined to construe “in response … to sending” because the term did not appear in the claims, but in the Federal Circuit’s construction of the claims.  The constructions of claim terms do not warrant construction.

Lack of Local Rule 56.1 Support Prevents Summary Judgment

Posted in Local Rules, Summary Judgment

Panoramic Stock Images, Ltd. d/b/a Panoramic Images v. John Wiley & Sons, Inc., No 12 C 10003, Slip Op. (N.D. Ill. Sep. 2, 2014) (Feinerman, J.).

Judge Feinerman granted in part plaintiff Panoramic’s partial summary judgment motion and denied defendant Wiley’s partial summary judgment motion as to Panoramic’s fraud and contributory copyright infringement claims in this copyright case regarding nine stock photographs.  The Court also set a trial date.

Wiley contends that Panoramic lacks the necessary evidence for its fraud claim proving that when Wiley said it wanted the photograph at issue for use in 15,000 volumes, it knew that it intended to use the photograph in more editions that that.  The Court, however, held that Panoramic offered evidence sufficient to infer the necessary intent.  Panoramic had documents showing that prior editions had been larger than 15,000 volumes and that Wiley was forecasting 30,000 volumes.  The Court also held that Panoramic put forth evidence that it was injured by the allegedly false statement beyond the scope of the copyright infringement because it was deprived of the licensing fee at the time of the license, beyond any award for copyright infringement.

The Court also denied Wiley summary judgment as to Panoramic’s contributory copyright infringement claim.  First, Wiley, in its reply, failed to respond to certain of Panoramic’s arguments.  So, the motion was denied on that ground alone.  Furthermore, the fact that Panoramic’s claim may be duplicative of its direct infringement claim was not fatal because parties are allowed to plead in the alternative.  The Court did, however, acknowledge that even if Panoramic succeeded at trial on both claims, it would not receive a double recovery.

The Court denied Wiley’s motion for summary judgment as to a statute of limitations for all claims before December 9.  But because the Seventh Circuit had approved the discovery rule and Panoramic had evidence that it did not know of Wiley’s alleged infringement until sometime in the three years before filing suit, the suit was not time barred.  And there was a dispute of fact as to whether Panoramic should reasonably have been aware of its claims when it learned of similar suits regarding the same issues.

The Court granted Panoramic that it owned valid copyrights in the images that it individually registered, as Wiley conceded.  But denied summary judgment as to images that were filed as part of compilations.  While the Court had previously held that a copyright owner held copyrights in the original components of its copyrighted compilations, the evidence Panoramic cited in its Local Rule 56.1 statement of facts, did not sufficiently support its ownership claims in these works.

The Court denied Panoramic summary judgment that Wiley exceeded the usage limits set forth in the parties agreements because Wiley had evidence suggesting a practice that allowed the parties to exceed those limits as part of the normal course of their business.

Because of the factual issues described above, summary judgment was not appropriate for either party as to Wiley’s affirmative defenses of statutes of limitations, implied license/course of dealing, and invalidity/unenforceability.

The Court denied Panoramic summary judgment as to Wiley’s lashes defense because it could not determine which were subject to a three year limitation on the record before the Court.