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Category Archives: Summary Judgment

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Akamai Reverses (Another) Summary Judgment Decision

By R. David Donoghue on Posted in Summary Judgment

CIVIX-DDI, LLC v. Hotels.com, No. 05 C 6869, Slip Op. (N.D. Ill. Nov. 1, 2012) (St. Eve, J.).

Judge St. Eve granted plaintiff CIVIX-DDI’s Fed. R. Civ. P. 54(b) motion to reconsider the Court’s finding of summary judgment of non-infringement.  The Court’s earlier finding was based upon the undisputed facts that defendant Hotels.com’s databases did not store advertising information or video.  However, based upon the Akamai decision, which the Federal Circuit decided after the Court’s earlier order, a question of fact remained as to whether a third party stored the information such that Hotel.com could have indirectly infringed.

Written Description is Not Satisfied Because an Examiner Allowed a Claim

By R. David Donoghue on Posted in Summary Judgment

Carrier Vibrating Equip., Inc. v. General Kinematics Corp., No. 10 C 5110, Slip Op. (N.D. Ill. Sept. 27, 2012) (Dow, J.).

Judge Dow granted defendant General Kinematics summary judgment of invalidity of claims 31 and 32 of plaintiff Carrier Vibrating Equipment’s (“Carrier”) patent related to controlling retention time of a casting on a vibratory conveyor for failure to comply with the written description requirement.  The claims at issue, which were not part of the original application, related to changing the magnitude of the vibratory force.  The written description requirement - that the application describes the claimed invention such that one of ordinary skill in the art that the inventor possessed the claimed invention.  Whether the patent meets the written description requirement is a question of fact.  The Court held that the patent taught modification of the angle of the vibratory force, but not the magnitude.  The fact that the Background of the Invention section mentioned that prior art systems vary conveying speed and direction by “changing either the direction or magnitude of a force” was not sufficient because the specification did not otherwise discuss changing the magnitude.  And it was not sufficient that the specification incorporated by reference a patent that taught changing the magnitude of the force.  Furthermore, the fact that the Patent Office allowed the claims at issue was not evidence that the written description requirement was meant.  The Court held that:

there is no reason for the Court to conclude that the PTO examiner’s decision deserves any more deference than the typical presumption of validity that must be overcome by clear and convincing evidence.

Claim Construction Knocks Out Prior Art

By R. David Donoghue on Posted in Claim Construction, Summary Judgment

Carrier Vibrating Equip., Inc. v. General Kinematics Corp., No. 10 C 5110, Slip Op. (N.D. Ill. Sept. 27, 2012) (Dow, J.).

Judge Dow granted plaintiff Carrier Vibrating Equipment’s (“Carrier”) motion for summary judgment of validity and denied defendant General Kinematics’s cross motion for summary judgment of invalidity in this patent case related to controlling retention time of a casting on a vibratory conveyor.  The Court initially construed the claim “modifying” to require automatic modification of the angle of vibratory force.  That construction was critical because the parties agreed that the alleged prior art system did not allow for automatic modification of the angle of vibratory force.  The Court, therefore, granted Carrier summary judgment of validity with respect to the asserted piece of prior art.

Local Patent Rules: Party Limited to Arguments Made in Final Contentions

By R. David Donoghue on Posted in Summary Judgment

Fujitsu Ltd. v. Tellabs, Inc., No. 09 C 4530, Slip Op. (N.D. Ill. Sept. 26, 2012) (Holderman, C.J.).

Chief Judge Holderman granted defendant Tellabs’ motion for summary judgment of invalidity in this patent case.  As an initial matter, the Court held that Tellabs was limited to the arguments set forth in its Local Patent Rule 3.1 final invalidity contentions.  The Court, therefore, disregarded Tellabs’ anticipation arguments, which were not in the final contentions, and focused upon the obviousness arguments, which were in the final contentions.

The Court held that the asserted prior art was a printed publication because of undisputed testimony that the article was presented at a standards setting meeting and that at the meeting 25 copies of the article were distributed without restriction.  The Court acknowledged that Tellabs had not provided any evidence of an individual that actually received one of the reports.  But it was enough that Tellabs had provided “substantial” circumstantial evidence corroborating its testimony.  For example, subsequent articles written by third parties referenced the prior art paper. 

Finally, the Court considered the obviousness arguments.  Fujitsu failed o challenge Tellabs four page obviousness arguments, except to argue that the prior art reference was not enabling.  However, the Court held that a prior art need not be enabling, it simply must teach the elements of the claims in suit. 

Unenforceable Contract Provision Requires Dismissal of Contract-Based Claims

By R. David Donoghue on Posted in Summary Judgment

Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. Jun. 27, 2012) (Lefkow, J.).

Judge Lefkow granted defendants’ (collectively “Crimson”) Fed. R. Civ. P. 12(c) motion for judgment on the pleadings as to plaintiff Peerless’s tortious interference and civil conspiracy claims in this patent infringement and related state law claims involving television mounts.  The Court held that a clause in the parties’ agreement that restricted defendant Sycamore from selling “Similar Products” was “unworkably difficult” and “unfairly burdensome” because it prevented the sale of any Sycamore product that was similar to any Peerless product.  Additionally, the clause gave Peerless sole discretion to determine whether a Sycamore product was similar in Peerless’s reasonable judgment.  Because the relevant clause of the agreement was unenforceable, Peerless’s tortious interference claim based upon the clause could not stand. 

Similarly, Peerless’s civil conspiracy claim could not survive because it was based upon the clause.  The Court denied defendants’ request for their fees noting that defendants offered no justification for an award of fees based upon a “routine” pre-trial motion.

Court Grants Summary Judgment Based Upon No Likelihood of Confusion

By R. David Donoghue on Posted in Local Rules, Summary Judgment

Hearthware, Inc. v. E. Mishan & Sons, Inc., No. 11 C 5233, Slip Op. (N.D. Ill. Aug. 10, 2012) (Nolan, J.).

Judge Nolan granted defendant E. Mishan & Sons (“EMS”) motion for summary judgment on plaintiff Hearthware’s copyright, Lanham Act and related state law claims related to EMS’s alleged copying of Hearthware’s Nu Wave halogen oven and its related trademarks and infomercial.  As an initial matter, the parties both failed to comply with the Local Rule 56.1 requirements for statements of fact and responses thereto, largely by failing to sufficiently support statements with citation to evidence. 

Copyright

While there were many similarities between the parties’ infomercials – two hosts hugging when they met, a chef knocking frozen food against a counter, and time-lapse photography of food cooking in the oven – for each allegedly copied element EMS offered proof of many infomercials before Hearthware’s that had the same elements.  So, to the extent there was copying or at least similarity, those commonalities were unprotectable scenes a faire.  And “threadbare” allegations of direct copying could not save the claim.

Trademark

There was no likelihood of confusion between Hearthware’s NUWAVE and EMS’s SUPER WAVE marks.  While both marks contain the term “wave” the marks are presented “entirely” differently.  For example, EMS focuses upon its connection to Sharper Image.  The similarities of the products – both halogen ovens – favored confusion, as did the fact that both parties sell their products nationally in similar locations.  Neither party addressed the degree of care exercised by consumers.  Hearthware’s mark was not strong in light of the sixteen other non-halogen ovens that have registered a mark with “wave” in it.  There was no evidence of actual confusion.  There was also no evidence that EMS was attempting to palm off its product as Hearthware’s.  Balancing the factors, the Court held that any finding of likelihood of confusion would be improperly based upon conjecture.  There was, therefore, no likelihood of confusion.

Without likelihood of confusion, summary judgment was warranted on all of Hearthware’s Lanham Act and related state law claims.

Reduction to Practice is a Question of Disputed Fact

By R. David Donoghue on Posted in Summary Judgment

Tellabs Ops., Inc. v. Fujitsu Ltd., No. 08 C 3379, Slip Op. (N.D. Ill. Jul. 27, 2012) (Holderman, C.J.). 

Chief Judge Holderman denied plaintiff Tellabs’ motion for summary judgment of invalidity.  As an initial matter, there was a question of fact regarding whether defendant Fujitsu could swear behind Tellabs’ prior art references based upon an alleged reduction to practice.  The Court could not determine based upon undisputed facts or as a matter of law whether or when Fujitsu reduced its invention to practice.

References to Product Use May be Enough to Show Direct Infringement

By R. David Donoghue on Posted in Summary Judgment

Nanochem Solutions, Inc. v. Global Green Prods., LLC, No. 10 C 3212, Slip Op. (N.D. Ill. Oct. 16, 2012) (Hart, Sen. J.). 

Judge Hart denied defendant’s motion for partial summary judgment of noninfringement.  Defendants argued that plaintiff Nanochem failed to offer admissible proof of any direct infringes necessary to support Nanochem’s indirect infringement claims based upon defendant’s alleged sales of a solution used in the claimed methods.  The Court held that there was a valid dispute over whether defendant’s business plans referring to using the solution were sufficient, but they did preclude entry of summary judgment.

No Inequitable Conduct Where Multiple Inferences Can be Drawn as to Intent

By R. David Donoghue on Posted in Summary Judgment

Fujitsu Ltd. v. Tellabs Ops., Inc., No. 09 C 4530, Slip Op. (N.D. Ill. Jul. 31, 2012) (Holderman, C.J.).

Judge Holderman granted plaintiff Fujitsu’s motion for summary judgment of no inequitable conduct.  The inventors allegedly failed to disclose two prior art references which had been disclosed in prior patent prosecutions, each of which was disclosed during prosecution of the patents in suit.  There was a question of fact as to whether each reference was duplicative of other disclosed art and, therefore, was material.  But defendant Tellabs did not show the required specific intent - the specific intent “must be the single most reasonable inference able to be drawn from the evidence.”  Therasence, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011).  In each case, it was reasonable to infer intent to deceive from the undisputed facts.  But it was also reasonable to infer that the inventors believed the references were cumulative or that the inventors forgot to include the references.  Because multiple inferences could be drawn, there was no intent as a matter of law.

Copyright Management Information Must be on Same Web Page

By R. David Donoghue on Posted in Summary Judgment

Personal Keepsakes, Inc. v. PersonalizationMall, No. 11 C 5177, Slip Op. (N.D. Ill. May 24, 2012) (Kendall, J.).

Judge Kendall denied plaintiff Personal Keepsakes’ (“PKI”) motion to reconsider in this copyright and Digital Millenium Copyright Act (“DMCA”) case.  The Court previously held that, as a matter of law, a copyright notice on a separate page of a website from the allegedly copied work does not constitute the copyright management information (“CMI”) required by the DMCA.  The Court’s holding was a “natural extension” of the reasoning in Schiffer Publishing, Ltd. v. Chronicle Books, LLC, 2004 WL 2583817 (E.D. Pa. Nov. 12, 2004).  And PKI cited no binding authority contradicting Schiffer or the Court’s analysis.

Disputed Reduction to Practice Dates Prevents Invalidity Summary Judgment

By R. David Donoghue on Posted in Summary Judgment

Tellabs Ops., Inv. v. Fujitsu Ltd., No. 08 C 3379, Slip Op. (N.D. Ill. July 27, 2012) (Holderman, C. J.). 

Judge Holderman denied plaintiffs’ (collectively “Tellabs”) motion for summary judgment of invalidity in this patent case.  Tellabs’ two pieces of prior art were both dated before the patents’ earliest priority date.  But defendant Fujitsu offered inventor testimony corroborated by a technical paper that the invention was reduced to practice before the prior art dates.  As a result, there was a question of fact as to whether Tellabs’ references were, in fact, prior art. 

Additionally, the Court denied Tellabs’ motion as to obviousness.  While Tellabs’ references proved that one of ordinary skill would have known that optical transmission systems had a variable number of channels.  But the prior art did not teach the patents’ particular solutions.

Piling Inference Upon Inference Warrants Summary Judgment

By R. David Donoghue on Posted in Summary Judgment

Pactiv Corp. v. Multisorb Techs, Inc., No. 10 C 461, Slip Op. (N.D. Ill. March 27, 2012) (Leinenweber, Sen. J.).

Judge Leinenweber granted defendant Multisorb partial summary judgment that it did not breach the parties’ contract by using confidential information received from plaintiff Pactiv to create a competing “oxygen scavenger” product - a product that is placed in a package of raw meat to remove oxygen and preserve freshness.  Initially, the Court limited the confidential information to that information marked “confidential” pursuant to the agreement and that were not otherwise publicly known.  That left three documents related to how oxygen scavenger packet weight and different packet types impact absorption.  Pactiv lacked direct evidence that Multisorb used the confidential information to develop its Fresh Pax CR or Maplox Program.

In order to find for Pactiv, a jury would have had to infer both that Multisorb’s packages and weights were instrumental to its products and that Multisorb used the confidential information in developing the products.  Summary judgment was proper because finding for Pactiv would have required “pil[ing] inference upon inference” with “less than a scintilla of evidence.”

Exceptional Case Finding Requires Additional Facts

By R. David Donoghue on Posted in Discovery, Local Rules, Summary Judgment, Trial

Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.).

Judge Dow held that plaintiff’s U.S. Patent No. 6,903,083 (the “’083 patent”) was invalid based upon a sale more than one year before the ‘083 patent’s filing date and denied defendants’ motion to find the case exceptional and award attorney’s fees, in this case related to vitamin D2.  As an initial matter, Judge Dow, although he would have been within his rights to do so, did not deem admitted facts that were not properly contested pursuant to Local Rule 56.1.  The Court did, however, explain that it would not consider improper denials.

The Court held that two sales by plaintiff more than one year before the filing date invalidated the ‘083 patent.  Plaintiffs argued that they were not in fact sales because while money changed hands, pursuant to a Supply Agreement, plaintiffs retained ownership of the goods.  But that argument “fail[ed] to get out of the gate.”  The Supply Agreement was for the manufacture of vitamin D2, for which hundreds of thousands of dollars were paid.

“[I]nference upon inference” favored finding the case exceptional and awarding defendants their attorney’s fees.  Plaintiffs lacked a plausible explanation for how they were unaware of the invalidating sales.  And instead of disclaiming the ‘083 patent and avoiding a large document production, plaintiffs continued asserting it.  But there remained a question of fact regarding what information plaintiffs’ executives had regarding the sales and when they had it.  The Court, therefore, allowed the parties to take further discovery on those issues before bringing the issue back to the Court. 

Apple v. Motorola: Summary Judgment Summarily Denied

By R. David Donoghue on Posted in Summary Judgment, Trial

Apple Inc. v. Motorola, Inc., No. 11C 8540, Slip Op. (N.D. Ill. Jun. 5, 2012) (Posner, J. sitting by designation).

Judge Posner summarily denied ten motions – seven by defendants (collectively “Motorola”) and three by plaintiffs (collectively “Apple”) – regarding the parties noninfringement and invalidity arguments.  The Court explained that it omitted its reasoning because “time is short” with less than a week to go before trial.  But the Court invited renewed Fed. R. Civ. P. 50 motions if a party’s legal basis is refuted at trial.

Apple v. Motorola: Doctrine of Equivalents Would Vitiate Claim Limitation

By R. David Donoghue on Posted in Summary Judgment

Apple Inc. v. Motorola, Inc., No. 11C 8540, Slip Op. (N.D. Ill. Jun. 5, 2012) (Posner, J. sitting by designation).

In light of the interest in this case because of both the high profile parties and the fact that Seventh Circuit Judge Posner is presiding over the case, I am going to go out of order and profile a significant number of opinions from this case during June and July.

Judge Posner granted plaintiff’s (collectively “Apple”) motion for summary judgment of noninfringement of claim 5 of U.S. Patent No. 6,175,559 (the “559 patent”) teaching the creation of a preamble sequence in CDMA code for cellphones.  The Court previously required that step 3 of the claim – multiplying inner and outer codes to form a preamble sequence – must come after the first two steps – forming outer and inner codes, respectively.  Apple argued that its outer and inner codes were not fully formed before generation of the preamble sequence.  Instead Apple created a digit of inner and outer code at a time and used each digit to create a single digit of the preamble sequence.  Motorola acknowledged that there was no literal infringement, but argued doctrine of equivalents.  But the Court held that the specific exclusion principle prevented using the doctrine of equivalents because in this instance it would vitiate the claim litigation.

Apple v. Motorola: Posner Cancels Trial Citing Lack of Damages Evidence

By R. David Donoghue on Posted in Summary Judgment, Trial

Apple Inc. v. Motorola, Inc., No. 11C 8540, Slip Op. (N.D. Ill. Jun. 7 & 13, 2012) (Posner, J. sitting by designation).

In light of the interest because of both the high profile parties and the fact that Seventh Circuit Judge Posner is presiding over the case, I am going to go out of order and profile a significant number of opinions from this case during June.

Judge Posner canceled the trial that had been scheduled to begin June 11 holding, tentatively, that neither party had provided sufficient evidence to withstand summary judgment of no damages.  The Court also promised a more detailed analysis in a later opinion, which has not issued as of the date of this blog post.

The Court further held that the parties had no rights to injunctive relief.  The parties had already made clear they believed money damages were an adequate remedy and injunctive relief “would impose costs disproportionate to the harm to the patentee and the benefit of the alleged infringement to the alleged infringer and would be contrary to the public interest . . . . “

Six days later, however, the Court granted plaintiffs’ (collectively “Apple”) request for an injunctive relief hearing to allow the parties to attempt to satisfy the eBay factors.  The parties were given until June 18 to submit briefs and were to be prepared to address “the possibility of substitution for an injunction of an equitable decree for a reasonable royalty going forward.”

Apple v. Motorola: Judge Posner Trifurcates Patent Trial

By R. David Donoghue on Posted in Summary Judgment

Apple Inc. v. Motorola, Inc., No. 11C 8540, Slip Op. (N.D. Ill. Jan. 24, 2012) (Posner, J. sitting by designation).

In light of the upcoming trial of this case – in stages beginning with liability on June 11, 2012 – and the interest because of both the high profile parties and the fact that Seventh Circuit Judge Posner is presiding over the case, I am going to go out of order and profile a significant number of opinions from this case during June.

Judge Posner issued several brief rulings on a variety of damages and discovery matters:

  • The parties were given until February 6, 2012, to file briefs setting forth the proper remedies – not necessarily amounts – should the Court find against Motorola on any of Apple’s equitable defenses, including equitable estoppel and unclean hands, for allegedly failing to offer reasonable, nondiscriminatory license terms for its standards-based patents.
  • The parties were given one week to submit a proposed schedule for the completion of all damages discovery.
  • The parties were to submit briefs submitting their view of the proper standards for determining damages for patent infringement.
  • All equitable defenses would be tried separately one week after the liability trial.
  • Damages would also be tried separately one week after the equitable defenses trial.
  • The Court excluded an Apple standards-setting witness.  Apple was given two weeks to submit a brief explaining why the standards did not speak for themselves and to propose another witness without an actual or potential conflict of interest.
  • The Court ordered the parties to limit the number of patents they wished to litigate at the liability trial and then for each opposing party to identify its list of defenses to the asserted patents.

Apple v. Motorola: Judge Posner Further Narrows Case by Summary Judgment

By R. David Donoghue on Posted in Claim Construction, Summary Judgment

Apple Inc. v. Motorola, Inc., No. 11C 8540, Slip Op. (N.D. Ill. Jan. 16, 2012) (Posner, J. sitting by designation).

In light of the upcoming trial of this case – in stages beginning with liability on June 11, 2012 – and the interest because of both the high profile parties and the fact that Seventh Circuit Judge Posner is presiding over the case, I am going to go out of order and profile a significant number of opinions from this case during June.

Judge Posner granted in part and deferred portions of plaintiffs (collectively “Apple”) and defendants (collectively “Motorola) motions for summary judgment in this patent dispute involving various cell phone technologies.  Here are key rulings:

  • Motorola granted summary judgment of noninfringement re RE 39,486 and U.S. Patent Number 5,929,852.  The ‘486 and ‘852 patents taught network components.  Apple did not show that Motorola’s Android Runtime layer allowed for replacement of meaningful components.  It was not enough that Apple’s expert had replaced components on his phone because he provided no reason that a typical user, or any user, might do so.
  • Motorola denied summary judgment of noninfringement re U.S. Patent Number 5,519,867.  The ‘867 patent taught an apparatus for allowing incompatible applications and operating systems to communicate.  A clash of experts over whether Motorola’s two-step system involving a virtual machine read on the claims created a question of material fact precluding summary judgment.
  • Motorola denied summary judgment of noninfringement re U.S. Patent Number 6,493,002.  The ‘002 patent taught aspects of toolbar buttons within an operating system or application.  Motorola’s status window could not infringe the ‘002 patent, but there was a question of fact as to whether its notification window infringed.
  • The Court construed the terms of Apples U.S. Patent No. 6,343,263.  The ‘263 patent taught real time processing of serial data.  The Court held that “Realtime application program interface (API)” need not have a different construction than “application program interface (API).”  And the Court construed “realtime application program interface” to mean an “API that allows realtime interaction between two or more subsystems.”

Having ruled on multiple summary judgment motions, the Court noted that the following patents were still asserted:

  • Apple patents:  ‘002, ‘263, ‘337, ‘354, ‘647, ‘867 & ‘949
  • Motorola patents:  ‘516, ‘559 & ‘898.

Apple v. Motorola: Judge Posner Decides Multiple Patent Summary Judgment Motions

By R. David Donoghue on Posted in Summary Judgment

Apple Inc. v. Motorola, Inc., No. 11C 8540, Slip Op. (N.D. Ill. Jan. 16, 2012) (Posner, J. sitting by designation).

In light of the upcoming trial of this case – in stages beginning with liability on June 11, 2012 – and the interest because of both the high profile parties and the fact that Seventh Circuit Judge Posner is presiding over the case, I am going to go out of order and profile a significant number of opinions from this case during June.

Judge Posner granted in part and deferred portions of plaintiffs (collectively “Apple”) and defendants (collectively “Motorola) motions for summary judgment in this patent dispute involving various cell phone technologies.  Here are key rulings:

  • Apple granted summary judgment of noninfringement re U.S. Patent No. 5,319,712.  The ‘712 patent taught WPA encryption methods.  Apple’s accused devices are complied with the relevant standard, IEEE 802.11x, and Motorola argued that they, therefore infringed.  However, Judge Crabb (the case was in the W.D. Wisconsin prior to transfer) construed the terms of the patent to require that a “transmit overflow sequence number” was never transmitted to the receiver phone, which is contrary to the 802.11x standard.  Judge Crabb properly relied upon Motorola’s statements to the Japanese Patent Office in limiting this claim term.  Motorola’s statements were made to avoid prior art and secure its related Japanese patent.
  • Apple granted summary judgment of invalidity re U.S. Patent No. 5,572,193.  The ‘193 patent taught WPA2 encryption methods which allegedly also allegedly read upon the 802.11x standard.  But the asserted claims were anticipated by a reference.  To overcome the reference, Motorola attempted to add a limitation to a claim element, but the Court held that it was incumbent upon the patentee to describe all elements of the invention in the claims.  Because the patentee had not described the extra term, the Court would not add it.
  • Motorola denied summary judgment of noninfringement and invalidity re U.S. Patent No. 7,479,949.  The ‘949 patent taught the use of finger gestures on touchscreens.  The term “heuristic” was not indefinite, despite the fact that most of Apple’s inventors could not define it clearly during depositions.  And there was a question of fact as to whether the ‘949 sufficiently described the claimed functionality without providing specific source code.  Whether Motorola’s vertical scroll tolerance of 33.7° was sufficiently close to the 27° example offered by Apple was a question of fact for the jury.    
  • Motorola granted (and Apple denied) summary judgment of invalidity re U.S. Patent No. 5,455,599.  The ‘599 patent taught rendering images on a screen using objects.  The parties disputed what structure performed the rendering.  The Court held that the ‘599 patent did not sufficiently describe the structure that performed the rendering and that, therefore, the ‘599 patent claims were invalid.
  • Apple denied summary judgment of noninfringement and invalidity re U.S. Patent No. 5,311,516.  The ‘516 patent taught a system of transmitting longer wireless messages in multiple packets.  Whether Apple’s prior art inherently anticipated Motorola’s patent claims was a question of fact.  And Motorola had put forth evidence of infringement, making infringement a question of fact for the jury.
  • Apple denied summary judgment of noninfringement and invalidity re U.S. Patent No. 6,359,898.  The ‘898 patent teaches allocation of channels in a wireless system.  Apple’s Nortel reference did not invalidate the asserted claims of the ‘898 patent because it failed to specifically teach a single element of the claims.  And Motorola had created at least a question of fact regarding Apple’s alleged infringement.
  • Motorola denied summary judgment of noninfringement re U.S. Patent No. 6,343,263 as premature.  The ‘263 patent taught real-time processing of serially transmitted data.  Motorola’s motion was premature because neither party had sought construction of a key claim term.  The Court, therefore, ordered claim construction on the term.
  • Motorola denied summary judgment of noninfringement re U.S. Patent No. 5,566,337.  The ‘337 patent taught distributing events (such as key strokes) within an operating system.  Apple and its expert had provided sufficient evidence of infringement to withstand summary judgment and to submit a question of fact to the jury.
  •  U.S. Patent No. 6,175,559 . The ‘559 patent teaches methods for generating numbers that identify a particular phone in CDMA cell phone systems.  Motorola raised sufficient questions of fact regarding whether Apple’s prior art preliminary application anticipated the ‘559 patent.  And Motorola may be able to swear behind the application.  There were also questions of fact regarding Apple’s noninfringement argument.  And the Court deferred considering summary judgment of noninfringement regarding Motorola’s contributory infringement claims until Motorola had the opportunity to perform limited additional discovery.

Likelihood of Confusion Not Conducive to Summary Judgment

By R. David Donoghue on Posted in Summary Judgment

Global Total Office Ltd. Partnership v. Global Allies, LLC, No. 10 C 1896, Slip Op. (N.D. Ill. Feb. 14, 2012) (Coleman, J.).

Judge Coleman denied plaintiffs summary judgment as to their Lanham Act infringement, deceptive trade practices and unfair competition claims.  All three required a factual finding of a likelihood of confusion, which the Court held was not amendable to summary judgment based upon the existing record:

  1. Similarity of the Marks.  The marks were visually “quite different” although they both included prominent use of GLOBAL.  But the differences weighed against a likelihood of confusion.
  2.  Strengths of Plaintiff’s Mark.  The strength of the GLOBAL mark was a fact question, although it was not immediately obvious as a strong mark.
  3. Actual Confusion.  The parties’ competing evidence of actual confusion largely required judgments regarding witness credibility that could not be made in a summary judgment decision.
  4. Parring-Off.  There was no actual evidence of passing off.
  5. Consumer’s Degree of Care.  The degree of care exercised by consumers was a disputed fact.
  6. Similarity of Products & Concurrent Use.  Whether the parties’ products might appear attributable to a single source was a disputed fact.

Pro Se Defendant Granted Leeway re: Local Rule 56.1

By R. David Donoghue on Posted in Summary Judgment

Turina v. Crawley, No. 10 C 4292, Slip Op. (N.D. Ill. Feb. 16, 2012) (Darrah, J.).

Judge Darrah granted pro se defendant summary judgment as to plaintiff’s copyright claims and dismissed plaintiff’s remaining state law claims for lack of jurisdiction.  As an initial matter, the Court treated those portions of defendant’s response that disputed facts in plaintiff’s Local Rule 56.1 statement of facts as a Local Rule 56.1 response, but treated other, uncontested facts as admitted.  Plaintiff failed to offer any proof of her copyright registration or her application for registration.  But the Court took judicial notice of plaintiff’s registered copyright that the Court found on the Copyright Office website.

Having found that plaintiff had a registered copyright, the Court turned to defendant’s allegedly infringing use.  Plaintiff, however, offered no evidence of defendant’s unauthorized use.  Plaintiff hired defendant to edit her manuscript and defendant did so.  Because defendant’s use was related to editing the manuscript, there was no infringing use.  And as the Court lacked diversity jurisdiction over the state law claims, the Court dismissed them without prejudice to refile them in state court.

Prosecution History Estoppel Flows to Progeny

By R. David Donoghue on Posted in Summary Judgment

Trading Techs. Int’l., Inc. v. BCG Partners, Inc., No. 10 C 715 (Consolidated), Slip Op. (N.D. Ill. Feb. 9, 2012) (Kendall, J.).

Judge Kendall decided the parties’ cross-motions for summary judgment in plaintiff Trading Technologies’ (“TT”) patent infringement case involving futures trading software.  The Court agreed to decide isolated issues, including claim construction, ahead of schedule to expedite overall case resolution.  The Court made the following key rulings:

  • The TT claims were not invalid for lack of written description based upon the use of a default quantity.  The patent referenced a default quantity, and a user inputting that quantity was also described.   
  • The Court granted defendant’s motion finding that any claims of TT’s ‘411 patent that sought to cover automatically varying price axes would not be supported by the specifications and would be invalid.
  • The prosecution history, estoppel from an earlier patent as to the “static price axing” flowed to all of the progeny of that patent.

Attorney’s Fees Not Available for Late-Registered Copyright

By R. David Donoghue on Posted in Summary Judgment

Woltmann v. Chicago Gridiron, LLC, No. 11 C 5994, Slip Op. (N.D. Ill. Jan. 20, 2012) (Norgle, J.).

Judge Norgle granted defendant summary judgment , on the eve of trial, that plaintiff was not entitled to punitive damages, statutory damages or attorney’s fees if plaintiff were to be the prevailing party in this copyright suit. Plaintiff agreed that it was not entitled to punitive or statutory damages, and disputed attorney’s fees. Because plaintiff did not challenge that he failed to register his works within three months of publication, attorney’s fees were not available to plaintiff if it prevailed.

Facts Shoe-Horned into Local Rule 56.1 Responses are Disregarded

By R. David Donoghue on Posted in Summary Judgment

Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333, Slip Op. (N.D. Ill. Sep. 30, 2011) (Dow, J.).

Judge Dow granted defendants summary judgment of invalidity based upon several prior art references in this patent case involving color combinations for a printing system. As an initial matter, the Court excluded the following for failure to comply with Local Rule 56.1: 

  •  Legal conclusions or unsupported statements of fact;

  • Denials without proper factual support were deemed admitted;

  • Any additional facts in a brief, but not in a Rule 56.1 statement as supplemental statements; and

  • Facts shoe-horned into Rule 56.1 responses.

Of particular note:

  • The Court denied plaintiff’s motion to strike defendant’s supplemental expert declaration. While the reports included new opinions, plaintiffs were not prejudiced because the declarations were served during discovery and before the depositions of the experts.

  •  While the Court could have stopped its analysis after the first piece of art invalidated the remaining claims, the Court analyzed each piece of art for the sake of completeness.