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Chicago IP Litigation

Tracking Northern District of Illinois IP Cases

An Investigation By Any Other Name is Still an Investigation

Posted in Discovery

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Mar. 5, 2014) (St. Eve, J.).

Judge St. Eve denied defendants’ (collectively “Zurn”) motion to exclude plaintiff Sloan Valve’s (“Sloan Valve”) expert in this patent litigation involving dual mode flush valves for plumbing fixtures.  Plaintiff’s expert conducted what he called a “survey,” but was in fact an investigation.  The expert, a 27 year veteran of the FBI, coordinated an investigation of approximately 200 bathrooms across the country which plaintiff believed would have either Sloan or Zurn plumbing fixtures.  The expert’s agents photographed specific fixtures using an app that time and location stamped them. 

The Court held that the fact that the expert used the term “survey” did not change the fact that it was an investigation, not a survey as the term is used in the legal context.  And Zurn did not dispute that the expert was qualified to conduct such an investigation.  Furthermore, the investigators did not interview anyone, they just took pictures.  So, there were no hearsay concerns.

Finally, Zurn’s other concerns did not warrant exclusion, although the could be addressed on cross-examination:

  1. The 200 sites were not randomly selected and were selected by Sloan;
  2. The sites were “overwhelmingly” public buildings; and
  3. The investigators did not investigate every bathroom at each site and did not adequately investigate the bathrooms that they did enter.

Settlement Arbitration Clause Requires Patent Claims be Arbitrated

Posted in Pleading Requirements

Dental USA, Inc. v. Beak & Bumper, LLC, No. 13 C 2149, Slip Op. (N.D. Ill. Feb. 21, 2014) (Chang, J.).

Judge Chang granted defendants’ Fed. R. Civ. P. 12(b)(3) motion to dismiss for improper venue because plaintiff’s design patent declaratory judgment claims related to dental pliers had to be arbitrated.  The principals of the relevant parties entered a settlement agreement settling an early E.D. Michigan patent infringement suit which included the patents in suit. 

The parties’ agreement bound “any and all businesses controlled” by either of them.  That was sufficient to bind the parties in this suit, although none were parties to the agreement.  It was sufficient that the parties’ principals bound them in the agreement.  The agreement also required that plaintiff not infringe the patents in suit and that all disputes regarding the agreement be resolved by binding arbitration before the American Arbitration Association.  The parties were already arbitrating a dispute regarding one of the patents. 

The fact that defendants dismissed their arbitration infringement claims did not allow plaintiff to file a district court litigation.  Defendants dismissed their claims without prejudice and were free to re file them with the American Arbitration Association.

Because the Court lacked venue, it did not need to consider defendants’ subject matter jurisdiction and personal jurisdiction arguments.

Court Construes Distributed Data Storage Patents

Posted in Claim Construction

Cleversafe, Inc. v. Amplidata, Inc., No. 11 C 4890, Slip Op. (N.D. Ill. May 20, 2014) (Lee, J.).

Judge Lee construed the disputed claim terms of the patents in this patent dispute regarding distributed data storage systems.  Of particular note, the Court held as follows:

  • “Data slice” and “plurality of data slices” was construed as “data slice” to mean a “data structure consisting of a data subset and a coded value.”  Defendant Amplidata’s narrower construction was required by plaintiff Cleversafe’s amendments during prosecution.
  • “Virtual digital data storage vault” was construed as “software construct stored over multiple slice servers.”
  • The parties agreed that a vault is a “software container” and that it is “stored over more than one slice server.”  The dispute was whether a vault must be associated with user accounts.  The Court held that a vault need not be associated with a user account.  The patents’ specification only stated that vaults “may” be associated with user accounts.
  • “Encode, using a coding algorithm, a plurality of subsets of data to create a plurality of coded values” was construed as “encode, using a coding algorithm, n subsets of data to create n coded values.”  The Court’s construction was broad enough that it was not limited to the preferred embodiments, while creating a one-to-one relationship between data subsets and coded values.
  • “Information dispersal algorithm” was construed as “an algorithm capable of assembling a file from data slices and creating new data slices from a rebuilt file.”
  • “String(s) of data” did not require construction beyond its plain and ordinary meaning.
  • “List of unusable storage nodes” was construed as “list of storage nodes that have been rendered permanently unusable.”
  • “The request is valid” and “the request is invalid” did not require construction.
  • “Supports” was construed as “provides access to.”

General Discovery Objections are “Impermissible”

Posted in Discovery

Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. Oct. 24, 2013) (Grady, Sen. J.).

Judge Shadur granted in part plaintiff Flava Works’ motion to compel responses to discovery requests.  Of particular note, the Court held as follows:

  • Neither Flava Work’s complaint nor the Seventh Circuit’s decision limited Flava Work’s claims to its backup functionality.  Defendant’s therefore, could not limit their responses to the backup functionality.
  • While the Court did not strike defendants’ general objections, it disregarded them as “impermissible.”  Based upon their lack of specificity, they did “not accomplish anything useful.”  Documents withheld based upon general objections were to be identified and produced.
  • A present tense interrogatory seeking a user count was sufficiently answered with a present user count.  The interrogatory was fully answered without historic user information.
  • Defendants need not identify Bates ranges of responsive documents where the documents were produced as they were kept in the normal course of business, pursuant to Fed. R. Civ. P. 34(b)(2)(E)(i).

 

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.

No Irreparable Harm Where Plaintiff Delays Seeking Injunction

Posted in Uncategorized

Real-Time Reporters, P.C. v. Sonntag Reporting Servs., Ltd., No. 13 C 5348, Slip Op. (N.D. Ill. Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied plaintiff Real-Time Reporters’ (“RTR”) preliminary injunction motion in this Lanham Act matter involving RTR’s REAL-TIME REPORTERS trademark.  Defendant Sontag Reporting Services (“SRS”) use of the name “Chicago-area Realtime Reporters” alleged infringed RTR’s REAL-TIME REPORTERS trademark. 

RTR’s slow actions belied its claims of irreparable harm.  RTR allegedly learned of SRS’s use of the mark in April 2013, but did not sue until late July 2013, did not seek a temporary restraining order and waited almost a month before filing the instant motion for preliminary injunction. 

The Court also held that in light of the Supreme Court’s eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) decision, it was unclear that the presumption of irreparable harm in trademark cases remained. 

Regarding RTR’s likelihood of success, the Court held that RTR’s REAL-TIME REPORTERS mark appeared to be generic.

Balancing the harms favored SRS because it would be harmed by an injunction, while RTR had already shown it would not be significantly harmed by its delay in filing suit and its delay in seeking a preliminary injunction.

No Irreparable Harm Where Plaintiff Delays Seeking Injunction

Posted in Damages

Real-Time Reporters, P.C. v. Sonntag Reporting Servs., Ltd., No. 13 C 5348, Slip Op. (N.D. Ill. Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied plaintiff Real-Time Reporters’ (“RTR”) preliminary injunction motion in this Lanham Act matter involving RTR’s REAL-TIME REPORTERS trademark.  Defendant Sontag Reporting Services (“SRS”) use of the name “Chicago-area Realtime Reporters” alleged infringed RTR’s REAL-TIME REPORTERS trademark. 

RTR’s slow actions belied its claims of irreparable harm.  RTR allegedly learned of SRS’s use of the mark in April 2013, but did not sue until late July 2013, did not seek a temporary restraining order and waited almost a month before filing the instant motion for preliminary injunction. 

The Court also held that in light of the Supreme Court’s eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) decision, it was unclear that the presumption of irreparable harm in trademark cases remained. 

Regarding RTR’s likelihood of success, the Court held that RTR’s REAL-TIME REPORTERS mark appeared to be generic.

Balancing the harms favored SRS because it would be harmed by an injunction, while RTR had already shown it would not be significantly harmed by its delay in filing suit and its delay in seeking a preliminary injunction.

Similar Claims Do Not Alone Warrant Joinder

Posted in Pleading Requirements

Slep-Tone Ent. Corp. v. Roberto, No. 12 C 5750, Slip Op. (N.D. Ill. Oct. 22, 2013) (Darrah, J.).

Judge Darrah denied defendants’ (collectively “Arrowsound”) Fed. R. Civ. P. 12(b)(6) motion to dismiss, but granted Arrowsound’s motion to sever.  The Court, therefore, dismissed Arrowsound without prejudice for improper joinder in this trademark dispute regarding SOUND CHOICE karaoke discs. 

Plaintiff Slep-Tone sufficiently pled its trademark claims by pleading that it owned the SOUND CHOICE marks and that defendants display the marks in advertising to garner the “quality and superiority” associated with SOUND CHOICE.  Slep-Tone similarly sufficiently pled Lanham Act unfair competition by alleging that defendants used counterfeit karaoke discs in ways likely to confuse customers and that Slep-Tone was harmed by these actions. 

Fed. R. Civ. P. 20(a)(2) joinder of claims requires that joint or several relief is sought against defendants arising from the same transaction and that there be a common question of law or fact.  Similarlity of claims is not enough.  In this case, Arrowhead and the other defendants were all accused of similar acts — using counterfeit karaoke discs — but otherwise the parties were unrelated.  The Court, therefore, dismissed Arrowhead with leave to refile a separate case against Arrowhead.

Limiting Interrogatory Language Allows Limited Response

Posted in Discovery

Hubbell Indus. Controls, Inc. v. Electro Power Sys. Of Utah, Inc., No. 12 C 8609, Slip Op. (N.D. Ill. Oct. 17, 2013) (St. Eve., J.).

Judge St. Eve granted in part defendant Electro Power’s motion to compel further interrogatory responses and denied Electro Power’s motion to compel production of unredacted attorney billing records in this Lanham Act case involving Electro Power’s alleged improper reproduction of components of plaintiff Hubbell’s braking contactors and allegedly passing them off as genuine Hubbell parts.

Hubbell listed twenty one elements of its trade dress.  For all but three, Hubbell provided detail regarding the aspects that were part of the trade dress.  Those eighteen elements were sufficiently described and no further interrogatory responses was required.  For the other three — armature assembly, stator assembly and arc shield assembly — Hubbell was ordered to supplement its interrogatory response to specifically identify the aspects that were part of the trade dress.  The Court also struck the phrase “include[ing], but not limited to” from Hubbell’s responses.  Hubbell was required to identify all elements of its alleged trade dress.

As to the other eighteen elements of Hubbell’s alleged trade dress, Hubbell’s descriptions were not “amorphous,” “vague” or “unclear” as Electro Power asserted.

Hubbell’s response regarding its date of first use of its trade dress was deficient in two respects.  First, although Hubbell had three distinct trade dresses, it only provided one date of first use.  If all three share the same date, Hubbell must state that.  Otherwise, three dates should be provided.  Hubbell also failed to respond to the request for the circumstances of its first use and any documents evidencing the use.

The Court also denied Electro Power’s motion to compel unredacted attorney’s bills.  While Hubbell sought damages in the amount of certain attorney’s fees, the parties failed to brief whether unredacted bills were required to decide fees pursuant to the Lanham Act.  The motion failed, however, for a more basic reason.  Electro Power’s interrogatory only seeks documents upon which Hubbell intends to rely.  To the extent that Hubbell does not intent to rely upon unredacted bills, it need not produce them.  The Court, however, gave Electro Power the opportunity to request additional documents on the limited issue of Hubbell’s fees damages.

BitTorrent “Swarm” Must be Related in Time to be Joined in One Action

Posted in Discovery

Malibu Media, LLC v. Does 1-68, No. 12 C 6675, Slip Op. (N.D. Ill. Sep. 27, 2013) (Lee, J.).

Malibu Media, LLC v. Does 1-42, No. 12 C 6677, Slip Op. (N.D. Ill. Sep. 27, 2013) (Lee, J.).

Judge Lee granted various Doe defendants motion to sever their cases as unrelated, denied motions to quash subpoenas to the Doe’s ISPs and allowed Does to proceed anonymously at least through discovery in this BitTorrent copyright case.  The Court handled the two cases, both by plaintiff Malibu Media, in a single opinion because of the similarity of the various Does’ motions to quash subpoenas to their respective ISPs and/or to sever the cases of the various Does

Considering the motions to sever, the Court noted that the Seventh Circuit had not ruled on whether alleged members of a single BitTorrent “swarm” could be combined in a single suit, even if there are no allegations that the Does were a part of the swarm at or about the same time.  Although district courts had decided the issue both ways, the Court, citing a Judge Kendall decision (Malibu Media, LLC v. Reynolds, No. 123 C 6672, 2013 WL 870618, at *10 (N.D. Ill. Mar. 7, 2013), held that the better approach was requiring that Does have been part of the same swarm at or about the same time.  The Court also held that Malibu Media’s allegation that each Doe had downloaded the same file containing one element of the copyrighted work was not sufficient to avoid severing, without an allegation regarding the timing of the Does’ alleged participation in the swarm.  Because Malibu Media had not alleged that the Does were part of the same swarm at “roughly” the same time, the Court severed the cases against each remaining Doe.

The Court denied a motion to quash an ISP subpoena based upon the Doe’s right to privacy in its personal information provided to the ISP.  The Doe gave up any right to privacy in its personal information as to the ISP by providing its personal information to the ISP during registration.

While every party accused of downloading pornographic material did not necessarily have a right to proceed anonymously, the Court balanced that against the possibility that the ISP address owner did not necessarily do the accused downloading and allowed the Doe defendant to proceed anonymously at least through discovery.  Additionally, Malibu Media did not object to the Doe proceeding anonymously, as long as Malibu Media could be made aware of the Doe’s identity, which the Court held that it would.