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Category Archives: Pleading Requirements

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Not Accepting Well-Pled Allegations is “Cardinal Sin” of Affirmative Defenses

Posted in Pleading Requirements

Sonic Indus., LLC v. iRobot Corp. No. 13 C 9251, Slip Op. (N.D. Ill. Feb. 28, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte struck portions of defendant iRobot’s answer and affirmative defenses, and allowed other portions to be repled.  Of particular note:

  • The Court struck iRobot’s noninfringement affirmative defense for committing the “cardinal sin” for an affirmative defense of not accepting plaintiff Sonic’s well-pled allegations.
  • The invalidity defense was stricken with leave to replead it in a “more particularized and fleshed-out form.”

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.

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.

Answers Must Follow “Yellow Brick” Road of Federal Rules

Posted in Pleading Requirements

Wastequip Mfg. Co., LLC v. Precision Sewing, Inc., No. 13 C 8726, Slip Op. (N.D. Ill. Feb. 13, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte struck certain paragraphs of defendant’s answer and affirmative defenses for straying from the “yellow brick road” set by the Federal Rules in this patent case.

The Court struck answers that were not responded to based upon a lack of information and belief.  The Court also struck improper affirmative defenses.  The Court did not strike defendant’s invalidity affirmative defense because defendant did not have to clearly deny validity in its answer.  Therefore, an invalidity affirmative defense was proper, although the Court usually strikes them.  But the Court struck other defenses that were directly contradictory to plaintiff’s allegations.

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.

Illinois Does Not Recognize Tortious Interference Based Upon Wrongfully Filed Suits

Posted in Pleading Requirements

Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6571, Slip Op. (N.D. Ill. Sep. 3, 2013) (Grady, Sen. J.).

Judge Grady granted in part plaintiff Flava Works’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants’ (collectively “myVidster”) tortious interference and Digital Millenium Copyright Act (“DMCA”) claims in this copyright infringement suit involving videos posted on websites.  To the extent the tortious interference claim was based upon the alleged wrongful filing of this suit it was dismissed because Illinois does not recognize a tortious interference claim based upon wrongfully filed suits.  The claim, however, survived to the extent it was based upon Flava Works allegedly misrepresenting myVidster’s intellectual property infringement with the intent of causing myVidster’s server suppliers to terminate contracts with myVidster.

With respect to its DMCA claim, myVidster pled that Flava Works knowingly misrepresented that allegedly infringing content was available on myVidster to “improperly exaggerate the actual amount of infringing content available” on the website.  Those allegations were sufficient to meet the intent requirement.

Failure to Properly Plead Valid Copyright Registration Warrants Dismissal

Posted in Pleading Requirements

Personal Keepsakes, Inc. v. Personalizationmall.com, Inc., No. 11 C 05177, Slip Op. (N.D. Ill. Sept. 24, 2013) (Tharp, J.).

Judge Tharp granted Defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss Counts I and II for failure to state a claim under which relief can be granted.  Count I alleged copyright infringement and Count II alleged violations of the Digital Millennium Copyright Act (“DCMA”). 

The Court held Plaintiff’s complaint failed to state a claim for copyright infringement because it did not plausibly allege that the allegedly copyrighted phrase, “May the strength of the Holy Spirit be with you, guiding you every day of your life,” was protected by a valid copyright.  The Court held the phrase was too common and unoriginal to receive copyright protection, was not protected by Plaintiff’s alleged copyright because the copyright registration was for an entire collection of poems that spanned six pages not for the single at-issue sentence, and there was no substantial similarity between the elements of Plaintiff’s and Defendant’s works.

The Court held Plaintiff’s complaint failed to state a claim under the DCMA because Copyright Management Information was not displayed on or with the allegedly copied works.

Court Allows Joinder of BitTorrent Does for Early Stages of Case

Posted in Federal Rules, Pleading Requirements

Purzel Video GmbH v. Does 1-99, No. 13 C 2501, Slip Op. (N.D. Ill. Aug. 16, 2013) (Gottschall, J.).

Judge Gottschall denied various Doe defendants’ motions to quash third party subpoenas to their respective internet service providers (ISPs) as well as motions to sever and dismiss individual Does from this action.  This is a BitTorrent case in which the Does are accused of being part of a “swarm” that downloads a copyright file, in this case the motion picture “Trade of Innocents.”  Of particular interest, the Court held as follows:

  • The Court avoided a district split in whether Doe defendants have standing to quash a third-party ISP subpoena, holding that plaintiff Purzel Video was entitled to the information sought in the subpoenas and that the Doe defendants were not unduly burdened by the third-party subpoenas.  The fact that the customer associated with the identified IP address may not be the actual infringer was not a basis for quashing the subpoenas.
  • The Court ordered Purzel Video not to publish any Doe’s identity without leave of Court.  And to further limit “potential for harassment,” the Court held that only the bill payer and mailing address related to the IP address were discoverable.  Purzel Video was not entitiled to phone numbers or email addresses.  Purzel was also required to communicate with Does via their respective counsel to the extent that they had counsel.
  • Recognizing a nation-wide split in authority as to how closely connected members of a “swarm” must be in order to be joined in a single suit, the Court sided with Judge Castillo, holding that it was sufficient that the Does downloaded the same initial seed file intending to use other computers to download pieces of the copyrighted works and to allow the Doe’s computer to be used by others in the swarm to download the same work.  The Court also noted that while not all Does downloaded the files at the same time, the downloads occurred during the same month.
  • The Court declined to exercise its Fed. R. Civ. P. 21 discretion to sever the cases, although without prejudice to reconsider at a later date.  In the early stages of the case, the issues amongst Does remained relatively common and joinder made judicial sense.  It is possible that varying and opposing defenses might eventually change that, at which point the Court would be willing to consider severing some or all of the cases.
  • Purzel Video’s civil conspiracy claim was preempted by copyright law because it seeks to vindicate the same rights as a copyright claim.
  • Purzel Video’s Local Rule 3.2 corporate disclosure was deficient because it did not list all of the members of Purzel Video.  A GmbH is a German LLC, and Local Rule 3.2 requires disclosure of all members of LLC’s.

Court Allows Joinder of BitTorrent Does for Early Stages of Case

Posted in Pleading Requirements

The Bicycle Peddler, LLC v. Does 1-99, No. 13 C 2375, Slip Op. (N.D. Ill. Aug. 13, 2013) (Gottschall, J.).

Judge Gottschall denied various Doe defendants’ motions to quash third party subpoenas to their respective internet service providers (ISPs) as well as motions to sever and dismiss individual Does from this action.  This is a BitTorrent case in which the Does are accused of being part of a “swarm” that downloads a copyright file, in this case the motion picture “Trade of Innocents.”  Of particular interest, the Court held as follows:

  • The Court avoided a district split in whether Doe defendants have standing to quash a third-party ISP subpoena, holding that plaintiff Bicycle Peddler was entitled to the information sought in the subpoenas and that the Doe defendant was not unduly burdened by the third-party subpoenas.  The fact that the customer associated with the identified IP address may not be the actual infringer was not a basis for quashing the subpoenas.
  • The Court ordered Bicycle Peddler not to publish any Doe’s identity without leave of Court.
  • Recognizing a nation-wide split in authority as to how closely connected members of a “swarm” must be in order to be joined in a single suit, the Court sided with Judge Castillo, holding that it was sufficient that the Does downloaded the same initial seed file intending to use other computers to download pieces of the copyrighted works and to allow the Doe’s computer to be used by others in the swarm to download the same work.  The Court also noted that while not all Does downloaded the files at the same time, the downloads occurred over sixteen days.
  • The Court declined to exercise its Fed. R. Civ. P. 21 discretion to sever the cases, although without prejudice to reconsider at a later date.  In the early stages of the case, the issues amongst Does remained relatively common and joinder made judicial sense.  It is possible that varying and opposing defenses might eventually change that, at which point the Court would be willing to consider severing some or all of the cases

Extent of Alleged Copying and Control of Company Support Suit Against Corporate Principals

Posted in Pleading Requirements

Asher Worldwide Enterprises LLC v. Housewaresonly.com Inc., No. 12 C 568, Slip Op. (N.D. Ill. Aug 26, 2013) (Durkin, J.).

Judge Durkin denied the individual defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss the individual defendants in this Lanham Act and copyright case involving defendants allegedly infringing plaintiff’s copyrights by using plaintiff’s copyrighted product descriptions regarding kitchen and restaurant equipment.  Plaintiff’s “conclusory” statements regarding the individual defendants’ control of defendant Housewaresonly.com made the motion a “close call.”  But plaintiff’s additional statements in its opposition brief, which the Court could consider because they were consistent with the complaint, were sufficient to maintain the complaint.  The additional statements focused upon the extent of the alleged copying and the individual defendants’ alleged shutting down of the company and relocating, presumably to avoid suit.

The Court also noted that it would be inefficient to dismiss the complaint without prejudice to refile and allow plaintiff to replead including the additional facts when the Court had already held that the additional facts were sufficient.

Copyright Application is a Sufficient Basis for a Suit

Posted in Pleading Requirements

Panoramic Stock Images, Ltd. v. The McGraw-Hill Cos., No. 12 C 9881, Slip Op. (N.D. Ill. Aug. 9, 2013) (Pallmeyer, J.).

Judge Pallmeyer denied defendant McGraw-Hill’s Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of plaintiffs’ (collectively “Panoramic”) claims that were allegedly related to defective or unissued copyrights in this case involving licensing of stock photographs.  The parties had a license pursuant to which McGraw-Hill could use certain of Panoramic’s images pursuant to some restrictions.  Panoramic alleged that McGraw-Hill exceeded those restrictions regarding at least 170 of the images.  McGraw-Hill counters that Panoramic’s claims should be dismissed as to 101 of those images because Panoramic lacks valid copyrights as to those images.  The Court held as follows:

  • McGraw-Hill argued that 52 images had deficient copyrights because they were registered without identifying the authors or the titles of the images in violation of § 409 of the Copyright Act.  Panoramic argued that the works were compilations which did not require identification of the author or title of the specific images.  The Court noted a circuit split upon the issue, and that the Seventh Circuit had not squarely addressed it.  Without controlling precedent and deferring to the Copyright Office’s reading of the statute — that no author or title were required for compilations — the Court denied McGraw-Hill’s motion and allowed Panoramic to continue asserting the copyrights on the 52 images.  The Court also noted that there was not a notice issue in this case because McGraw-Hill was sufficiently aware of the copyright owner to have licensed with Panoramic for the images at issue.
  • The Court held that Panoramic could assert the 49 images for which it had applied for copyright, but not yet received a registration.  The Court noted a circuit split on the issue, but that the Seventh Circuit, not without some uncertainty, had determined that a copyright applicant could file suit based upon their application.

BitTorrent Doe Defendants Must be Part of the Same “Swarm” at the Same Time to be Joined in Suit

Posted in Pleading Requirements

Zambezia Film Pty, Ltd v. Does, No. 13 C 1323 & 1741, Slip Op. (N.D. Ill. Mar. 20, 2013) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Zambezia Film to identify those Doe defendants that could be properly joined pursuant to Fed. R. Civ. P. 20(a)(2) in this BitTorrent “swarm” copyright case.  The Court would dismiss the remaining defendants.  Relying upon a Michigan Law Review student note — The Case Against Combating BitTorrent Piracy Through Mass John Doe Copyright Infringement Lawsuits, 111 Mich. L. Rev. 283 (2012) — the Court required that Zambezia Film identify those Does that were both part of the same swarm and part of the same swarm at the same time as one another.  Any other defendants would be dismissed.

 

Counterclaim Need Not Plead Facts to Overcome Statute of Limitations Affirmative Defense

Posted in Pleading Requirements

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. Mar. 18, 2013) (Shadur, Sen. J.).

Judge Shadur denied plaintiff Flava Works’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant’s copyright infringement counterclaims.  The fact that defendant did not plead the dates of the alleged copyright infringement was not fatal to the counterclaims.  Flava Work’s statute of limitations argument was an affirmative defense and defendant was not required to plead facts refuting it as part of its counterclaims.

The Court also noted that pro se defendant’s periodic failure to appear for hearings has caused the case to move or not move in “fits and starts.”  The Court “cautioned [defendant] . . . that such inattention could prove costly if repeated.”

 

Court Stays Case Pending Reexam on Plaintiff’s Motion

Posted in Pleading Requirements

C&C Power, Inc. v. C&D Techs., Inc., No. 12 C 3376, Slip Op. (N.D. Ill. Feb. 11, 2013) (Dow, J.).

Judge Dow granted plaintiff’s motion to stay its patent infringement case pending an  inter partes review of the patent in suit initiated by defendants.  Defendants acknowledged that the reexam could simplify or moot the district court case and that there would be few wasted resources due to a stay because the case was in its early stages.  Defendants, however, argued that they would be prejudiced by the delay in deciding their Rule 12(b)(6) motion to dismiss.  But the Court held that plaintiff had not made “utterly fantastic factual allegations” that would subject it to dismissal.  And because defendants initiated the reexam, they could not claim prejudice from the reexam.

Elton John’s “Nikita” Does Not Infringe Copyright in Song “Natasha”

Posted in Pleading Requirements

Hobbs v. John a/k/a Sir Elton Hercules John, No. 12 C 3117, Slip Op. (N.D. Ill. Oct. 29, 2012) (St. Eve, J.).

Judge St. Eve dismissed plaintiff’s copyright and related state law claims against Elton John, Bernard Taupin and Big Pig Music (collectively “defendants”). Plaintiff argued that his copyrighted song “Natasha” inspired by his romantic involvement with a Ukranian waitress during the Cold War in the 1980s was infringed by defendants’ song “Nikita.” Copyrighted a few years later, “Nikita” allegedly describes a love affair between a Western man and an East German woman during the Cold War. Defendants argued that the songs were not substantially similar under any set of facts and, therefore, the case should be dismissed. The Court considered the lyrics of the songs pursuant to Fed. R. Civ. P. 10(c) because they were referenced in the complaint and because plaintiff did not object to the Court’s consideration of the lyrics.

The Court held that the lyrics were objectively not substantially similar for at least the following reasons:

• An impossible Cold War-era love affair, a postal theme, and references to a woman’s pale eyes were not protectable because they were “rudimentary, commonplace, and standard under the scenes a faire doctrine.”

• The Court listed several songs that included Cold War-era love affairs from the early 1980s – Devo, “Cold War,” http://www.lyricsfreak.com/d/devo/cold+war_20039646.html (“I heard it said that all is fair, In love and war so what’s life for, The boy and girl, Two separate worlds, The endless tug of war, Uh!”); David Bowie & Brian Eno, “Heroes,” http://www.lyricsfreak.com/d/david+bowie/heroes+single+version_20962708.html (“I, I can remember (I remember), Standing by the wall (By the wall), And the guns, shot above our heads (Over our heads), And we kissed, as though nothing could fall (Nothing could fall”)).

• Additionally, the postal and pale eyes themes were expressed differently in each song.

• The use of the word “never” and the phrases “to hold you”, “you’ll never know”, “you will never know” and “I need you” were not protectable because they were not unique.

• Titles are not protectable. So, the fact that both songs had “one-word, phonetically-similar title[s] consisting of a three-syllable Russian name, both beginning with the letter ‘N’ and ending with the letter ‘A’” was not relevant to the Court’s analysis. Furthermore, both names – Natasha and Nikita – were common names and a “quick search” of the Copyright Office’s registration database showed other songs titled “Natasha” and “Nikita”.

• The Court also noted that repetition of the name of a love interest in a song was common, citing Lola and, a personal favorite of mine, Roxanne.

Once the Court filtered the non-protectable elements of each song, it found no similarities between the songs. And plaintiff’s state law claims were preempted by the Copyright Act.

 

Court Does Not Dismiss “Me Too” Patent Counterclaims

Posted in Pleading Requirements

Trading Techs. Int’l., v. CQG, No. 05 C 4811, Slip Op. (N.D. Ill. Oct. 31, 2012) (Coleman, J.).

Judge Coleman granted in part plaintiff Trading Technologies’ (“TT”) Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant CQG’s affirmative defenses and declaratory judgment counterclaim.  The Court dismissed CQG’s bare-bones defenses which stated in their entirety:

  •  “Plaintiff’s claims are barred by the doctrines of estoppels, acquiescence, implied license, and/or unclean hands.”
  • “Plaintiff is not entitled to any damages for the time period that it was not in compliance with the marking requirements under 35 U.S.C. § 287.”

The Court, however, gave CQG twenty-one days to amend the defenses to include sufficient factual support.

The Court denied TT’s motion to dismiss CQG’s declaratory judgment counterclaims as redundant.  While some judges in the Northern District dismiss such claims, the Court held that CQG’s counterclaims would allow the Court to retain jurisdiction if TT dismissed its claims and, therefore, were not redundant.

Lack of Detailed Allegations Dooms Patent Complaint

Posted in Pleading Requirements

Gharb v. Mitsubishi Elec. Automation, Inc., No. 10 C 7204, Slip Op. (N.D. Ill. June 4, 2012) (Chang, J.).

Judge Chang granted defendant Mitsubishi Electric Automation’s (“Mitsubishi”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s patent complaint.  With respect to direct infringement, plaintiff only accused Mitsubishi’s programmable logic controller (“PLC”), but in a previous suit on the patents-in-suit, the Federal Circuit held that a PLC alone could not infringe the patents.

The Court also dismissed plaintiff’s contributory infringement claims because plaintiff did not make sufficient allegations to show that Mitsubishi’s PLC was not a staple article.  And plaintiff’s various exhibits showed that the PLC had multiple non-infringing uses.

Finally, the Court dismissed the inducement claims.  Plaintiff only identified Mitsubishi’s PLC, not an entire security system to show direct infringement.  And the PLC’s non-infringing uses called into question the necessary intent claims.

 

Induced Infringement Claims Need Not Use the Word “Induce”

Posted in Pleading Requirements

Snap-On Inc. v. Robert Bosch, LLC, No. 09 C 6914, Slip Op. (N.D. Ill. July 11, 2012) (Kocoras, J.).

Judge Kocoras denied defendants’ Beissbarth GmbH (“Beissbarth”) and Robert Bosch, GmbH’s (“Bosch Germany”) (collectively “German Defendants”) Fed. R. Civ. P. 12(b)(6) motion to dismiss.  As an initial matter, the court denied plaintiff Snap-On’s argument that the motion was an improper Rule 12(b) motion pursuant to Rule 12(g)(2) because the German Defendants previously filed a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction.  The Court ordered limited jurisdictional discovery prior to deciding that motion.  That discovery had become “highly contested.”  The German Defendants sought and received the Court’s leave to file this Rule 12(b)(6) motion because were the motion granted, it would have removed the need for that discovery.  The Rule 12(b)(6) motion, therefore, was not filed for dilatory purposes and it promoted the policies behind Rule 12(g).

Of particular note, the Court held the following with respect to the Rule 12(b)(6) motion:

  • General allegations that all defendants directly infringed were sufficient.  Snap-On was not required to make separate infringement allegations as to each defendant by name.
  • Snap-On’s claim that the German Defendants used the product in Illinois was sufficient to plead direct infringement.
  • Snap-On was not estopped from pursuing inducement claims based upon Snap-On’s statements to the Court regarding claiming direct infringement against the German Defendants.  Those statements were about direct infringement as opposed to joint infringement claims, and had no bearing upon indirect infringement claims.
  • Snap-On’s allegations were sufficient to plead inducement.  Snap-On alleged the German Defendants worked with defendant Robert Bosch USA to develop, price, and market the accused products and that Snap-On sent Bosch a warning letter prior to the US introduction of the accused product.  Snap-On’s failure to use the words “induce” or “inducement” did not doom its claim because Snap-On still pled the elements of inducement.

“Special Sharing” Allows Claims Against Corporate Officer

Posted in Pleading Requirements

Lang Exteriors, Inc. v. Lang Windows, Inc., No. 11 C 5517, Slip Op. (N.D. Ill. Aug. 16, 2012) (Finnegan, J.).

Judge Finnegan denied individual defendant Lang’s Fed. R. Civ. P. 12(b)(1) & (6) motion to dismiss this Lanham Act suit.  Lang argued that plaintiff Lang Exterior could not bring claims directly against Lang without piercing the corporate veil.  But Seventh Circuit law allows personal claims against corporate officers where there was a “special showing” that the officer acted beyond the scope of her official duties.  Plaintiff’s pleadings were sufficient to make that showing at the Rule 12(b) stage.  Specifically, plaintiff pled:

  1. Lang founded defendant Lang Windows and deliberately chose a name to confuse.
  2. Lang personally emailed contacts using a pseudonym she used for plaintiff in order to confuse customers.
  3. Lang created a website intending to confuse.

The Court also deemed waived Lang’s arguments reviewed for the first time on appeal.

Knowledge From Date of Complaint Sufficient for Indirect Infringement

Posted in Pleading Requirements

Radiation Stabilization Sol’ns LLC v. Accuray Inc., No. 11 C 7700, Slip Op. (N.D. Ill. Aug. 21, 2012) (Coleman, J.).

Judge Coleman granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Radiation Stabilization Solutions’ (“RSS”) claims in this patent infringement suit regarding technology for stabilizing irradiated targets.  While defendant Cancer Treatment Centers of America (“CTCA”) was not properly named because its corporate designation – Inc. – was not listed, there was no need to dismiss CTCA.  Instead, RSS was given leave to amend identifying CTCA’s correct corporate form.

RSS sufficiently pled induced infringement by making statements at least as detailed as Form 18 to the Federal Rules regarding the alleged underlying direct infringement.  The complaint need not identify a specific direct infringer.  While RSS did not allege it gave defendants notice of the infringement, the complaint itself served as notice.  Similarly, RSS’s claims of intent starting from the date of the complaint were sufficient.

The Court dismissed RSS’s contributory infringement claims without prejudice.  While RSS’s similar claims of direct infringement and intent were sufficiently pled, RSS made no statement at all that defendants’ products did not have substantial non-infringing uses.

Non-Lawyer Cannot Represent a Party in Federal Court

Posted in Pleading Requirements

Maclean-Fogg Co. v. Guangzhou Hotlink Hardware Co, Ltd., No. 12 C 6796, Slip Op. (N.D. Ill. Oct. 11, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte struck defendant’s answer for multiple deficiencies.  Initially, it was improperly signed by corporate defendant’s non-lawyer owner.  No non-lawyer can represent a party in federal Court.  Additionally, the answer had the following deficiencies:

  • The answer was not made in numbered paragraphs corresponding to the complaint’s paragraphs pursuant to Local Rule 10.1.
  • In several places, the answer wrongly states that no answer is necessary because statements are legal conclusions.  Answers must address even legal conclusions.
  • While lack of information and belief is deemed a denial, defendant cannot deny statements for which it lacks information and belief.

Answer to Affirmative Defenses Struck as Improper

Posted in Pleading Requirements

New Paradigm Enterprises, Inc., d/b/a Q101 v. Merlin Media LLC, No. 12 C 5160, Slip Op. (N.D. Ill. Oct. 12, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte issued this order to address deficiencies in plaintiff New Paradigm’s answer to defendant Merlin Media’s counterclaims, specifically:

  • New Paradigm’s answers to Merlin Media’s affirmative defenses were struck as improper.
  • Denials based upon a lack of information and belief were struck as improper.
  • References to “strict proof” were ordered to be removed.
  • Answers that “waffle[ed]” and did not provide a response were required to be repled.

Court Declines to Decide Speculative Motion to Strike

Posted in Pleading Requirements

Fujitsu Ltd. v. Tellabs Ops., Inc., No. 09 C 4530, Slip Op. (N.D. Ill. Jul. 19, 2012) (Holderman, C.J.).

Chief Judge Holderman denied plaintiff Fujitsu’s motion to strike defendant Tellabs’ unclean hands defense and its unfair competition claim.  Neither count was pled.  They were only identified in Tellabs’ supplemental initial disclosures.  Tellabs reasoned that it could not ascertain whether it needed to seek leave to amend adding the claims to the pleadings until after a Rule 30(b)(6) corporate deposition.  Regardless, the Court held it need not address Fujitsu’s concerns until Tellabs actually sought leave to amend its pleadings.

Pro Se Answer Must Apply With Rules

Posted in Pleading Requirements

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. Aug. 6, 2012) (Shadur, Sen. J.).

 Judge Shadur vacated a default judgment entered against defendant based upon defendant’s explanation for his non-appearance.  But the Court warned that defendant must revise his proposed answer to: 

  • Remove denials of statements for which defendant lacked information and belief; and 
  • Revised his affirmative defenses down from its list of 21.