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

Category Archives: Summary Judgment

Subscribe to Summary Judgment RSS Feed

Discovery Rule Applies to 7th Circuit Copyright Claims

Posted in Summary Judgment

Panoramic Stock Images, Ltd. v. McGraw-Hill Global Educ. Holdings, LLC, No. 12 C 9881, Slip Op. (N.D. Ill. Nov. 25, 2014) (Pallmeyer, J.).

Judge Pallmeyer denied defendant McGraw-Hill’s motion for summary judgment regarding a statute of limitations and granted in part plaintiff Panoramic Images’ motion for summary judgment of copyright infringement in this case regarding Panoramic Images’ stock photos that McGraw-Hill used in certain textbooks.

After noting that this case was one of many involving copyright infringement claims for overuse or improper use of stock photos, the Court held as follows:

  • Applying the discovery rule because the Seventh Circuit had not expressly adopted the injury rule over the discovery rule, the Court held there was a question of fact as to when Panoramic Images discovered the copyright infringement. McGraw-Hill alleged that Panoramic Images learned of the infringement no later than November 2009 when its president read a story regarding unauthorized use of stock photographs by publishers. But Panoramic Images argued that it did not learn of the infringement until October 2012 when a publisher contacted Panoramic Images regarding potential overuse of its stock photos.
  • While Panoramic Images may have been placed on inquiry notice in 2009, the discovery rule required actual or constructive notice, not just inquiry notice.
  • The Court granted Panoramic Images summary judgment of copyright ownership as to each photograph registered in the name of the photographer because McGraw-Hill did not dispute ownership. For those photos that were allegedly registered using a nom de plume, there was a question of fact as to ownership.
  • The Court granted Panoramic Images summary judgment of copyright infringement as to each image that McGraw-Hill did not challenge its infringement based upon use beyond its contractual rights.
  • The Court denied copyright infringement as to those titles which McGraw-Hill challenged its alleged overuse by digital distribution. Panoramic Images’ allegations regarding different images were conflicting. Furthermore, the Court lacked sufficient evidence to determine whether McGraw-Hill’s use exceeded its contractual rights.
  • The Court denied Panoramic Images summary judgment as to McGraw-Hill’s laches defense for the same reasons as it denied McGraw-Hill summary judgment as to the statute of limitation.
  • The Court reserved ruling upon McGraw-Hill’s standing and sufficiency-of-copyright assignment defenses.

Clarified Claim Construction Precludes Summary Judgment

Posted in Claim Construction, Summary Judgment

Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill. Dec. 22, 2014) (Coleman, J.).

Judge Coleman denied defendants’ (collectively “CQG” motion for summary judgment of noninfringement in this patent case involving futures trading software.  For more on plaintiff Trading Technologies’ (“TT”) various cases, click here.

CQG argued that TT could not meet its burden of proving infringement because TT did not identify a manual recentering command in CQG’s accused products.  The Court previously adopted Judge Moran’s claim construction of “static display of prices” which had been affirmed by the Federal Circuit:

[A] display of prices comprising price levels that do not change positions unless a manual re-centering command is received.

The Court then clarified its construction of “static”:

The proper construction of the term “static” is that price levels will not change unless a manual re-centering or repositioning command is entered.  [(Dkt. 826 at 3)].  This means that “static” excludes automatic re-centering and repositioning, but includes systems where the prices never move or [are] repositioned or recentered by manual command.

Based upon the clarification, “static” did not require a manual re-centering command.  Because a manual re-centering command is not required by the claims, the absence of the command alone did not warrant summary judgment.  The Court also denied TT’s request for attorney’s fees for responding to the motion.

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.


Substantial Differences Doom Design Patent Claim on the Pleadings

Posted in Summary Judgment

Young v. Stone, No. 13 C 4920, Slip Op. (N.D. Ill. Aug. 28, 2014) (Guzman, J.).

Judge Guzman granted defendant’s Fed. R. Civ. P. 12(c) motion to dismiss plaintiff’s design patent infringement claim regarding defendant’s Putt-A-Round golf practice target.  The patented design and the accused golf practice target are depicted below:

The Court held that the parallel disks were functional as was the pole separating the disks.  The ornamental features were the differing mechanisms that trapped the golf balls, and the extended flagpole.  The Court held that the products were different as follows:

  • The mechanisms used to trap the balls were different. Defendant used an incline that directed the ball up and to the center. Plaintiff used a washer around the center column that held the ball.
  • The feet and prominent bolt on the bottom of defendant’s base was also sufficiently different.
  • There were also differences in the flag placement and the top of the pole.





Lady Gaga’s “Judas” Does Not Infringe Copyright

Posted in Local Rules, Summary Judgment

Francescatti v. Germanotta p/k/a Lady Gaga, No. 11 C 5270, Slip Op. (N.D. Ill. June 17, 2014) (Aspen, Sen. J.).

Judge Aspen granted defendants’ Fed. R Civ. P. 56 motion for summary judgment because no reasonable trier of fact could find defendant Lady Gaga’s song “Judas” substantially similar to plaintiff’s song “Juda.”

Local Rule 56.1

As an initial matter, the Court denied defendants’ motion to strike plaintiff’s responses to certain of defendant’s Local Rule 56.1 statements of fact because the Court did not rely upon any of them except one, which did not introduce new facts.  That allowed the Court to avoid the parties’ “labyrinth of disputes.”


There was a question of fact as to whether defendants had access to plaintiff’s copyrighted song.  While there was a dispute about whether defendant Gaynor, who worked with plaintiff on her song, ever came into contact with Lady Gaga, there was no dispute that Gaynor worked on both songs in dispute.

Substantial Similarity

The Court granted summary judgment of no substantial similarity after recognizing that summary judgment of substantial similarity is generally disfavored.  The Court  then denied to apply the inverse ratio rule — requiring a higher standard of proof where evidence of access is relatively weak — because the Seventh Circuit explicitly decided not to endorse it.  The Court then provided an excellent primer on the substantial similarity law.

                                                a.         Expert Testimony

The Court held expert testimony was warranted in this case because:

  • The complexity of the music industry had increased significantly since the adoption of the subjective ordinary observer test.
  • The Lady Gaga song was created with a Digital Audio Workstation (“DAW”) which can create thousands of sounds.
  • The different music genres of the two songs also added to the complexity of the determination.

Although the Court allowed expert testimony and analyzed certain findings of the ordinary observer test, it was explicitly not using a higher standard of review than the ordinary observer test.

                                                b.         Extrinsic Test

The Court found the following similarities between the two songs:

  • Similar titles;
  • Both songs repeat in a monotone the similar words “Juda” or “Judas;” and
  • Limited similarities in the breakdowns.

                                                c.         Intrinsic Test

The Court did not consider expert testimony or plaintiff’s opinion (because she was a musician) because they were not ordinary observers.

The Court did not follow the filtration method, instead considering the similarity of each song’s expression before removing non-copyrightable elements from consideration, noting that the Seventh Circuit has said either method is acceptable.  The Court found an “utter lack of similarity”:

  • It took expert analysis for the Court to see plaintiff’s distinctions;
  • The songs do not have common lyrics;
  • The themes are different; and
  • They do not sound alike musically.

The Court, therefore, found the similarity of expression to be “totally lacking.”  The Court also held that the individual elements were either not similar or not protectable.

Experts Do Not Prevent Summary Judgment of Design Patent Noninfringement

Posted in Summary Judgment

Voltstar Techs., Inc. v. Amazon.com, No. 13 C 5570, Slip Op. (N.D. Ill. Jul. 28, 2014) (Lee, J.).

Judge Lee granted defendant Amazon’s motion for summary judgment of noninfringement of plaintiff Voltstar’s design patent to an electrical charger and denied Voltstar’s cross-motion for summary judgment.  An ordinary observer viewing the two chargers side-by-side would conclude that they were substantially different:

  • Voltstar’s charger was squat, while Amazon’s was larger and thinner;
  • Each charger’s tapered top was different; and
  • Voltstar’s charger had a “unique” clamshell appearance that Amazon did not have.

The differences cumulatively created a significant overall difference.

While both products differed from the prior art having tapered ends, the tapers were sufficiently different, as noted above.  Voltstar’s expert report identifying alleged similarities did not prevent summary judgment.

Fair Use & Likelihood of Confusion Doom Lanham Act Claims

Posted in Summary Judgment

Sorenson v. WD-40 Co., No. 12 C 50417, Slip Op. (N.D. Ill. Sep. 9, 2014) (Kapala, J.).

Judge Kapala granted defendant WD-40 summary judgment as to plaintiff’s Lanham Act and related state law claims regarding plaintiff’s THE INHIBITOR and related design marks (the “Inhibitor Marks”) and WD-40’s Specialist product line.

WD-40’s use of the word “inhibitor” in connection with its Specialist products was fair use:

  • It was not used as a trademark, as evidenced by the emphasis of WD-40’s well know marks on the front of the product over the use of the term “inhibitor.”
  • Inhibitor was descriptive of the WD-40 product which was intended to inhibit rust.
  • There was a lack of evidence that WD-40 used the term in bad faith.

WD-40 was, therefore, granted summary judgment as to plaintiff’s Lanham Act claim.  WD-40 was also granted summary judgment that there was no likelihood of confusion:

  • Looking at the usage of the marks as a whole, plaintiff lacked sufficient evidence to show similarity of use.
  • Plaintiff’s oil products were not similar to WD-40’s Specialist products.
  • There was limited evidence of concurrent use, but not enough to weigh in plaintiff’s favor.
  • There was some evidence of a low degree of care by consumers, but it was mitigated by the strength of WD-40’s marks.
  • Plaintiff’s Inhibitor Marks were relatively weak because they were descriptive of the product.
  • There was not sufficient evidence of actual confusion.  The testimony by one individual that he believed that the products could be co-branded even if it were assumed to be evidence actual confusion, was insufficient because it was de minimus.
  • There was not sufficient evidence that WD-40 intended to pass off its products as plaintiff’s to support plaintiff’s burden.

Having granted summary judgment as to the Lanham Act claims, the Court granted summary judgment as to the state law claims based upon the Court’s likelihood of confusion analysis.  As an interesting side note, the opinion identifies evidence in the suit suggesting that four out of five people have used WD-40.  That is a pretty amazing statistic.

Plaintiff May Not Dismiss Claims in Response to Summary Judgment Motion

Posted in Summary Judgment

Beasley v. John Wiley & Sons, Inc., No. 12 C 8715, Slip Op. (N.D. Ill. Sep. 9, 2014) (St. Eve, J.).

Judge St. Eve, after previously deferring ruling to allow the parties to work out procedural disputes, granted defendant John Wiley & Sons’ motion for summary judgment as to plaintiff’s fraud and Digital Millennium Copyright Act (“DMCA”) claims, having previously granted plaintiff summary judgment of copyright infringement regarding its photographs.  Because plaintiff offered no evidence in response to the motion that would allow a reasonable jury to find that defendant misrepresented plaintiff’s copyright or removed copyright-management information from the photographs, the Court granted defendant summary judgment as to both claims.  Allowing plaintiff to dismiss those claims as it proposed would have been unfair to defendant because it would have prevented defendant from seeking fees as to the DMCA claim.  And plaintiff’s request was too late, coming late in the case and in response to a summary judgment motion.

Patent Exhaustion Applies Despite License Restrictions

Posted in Summary Judgment

Cascades Computer Innovation, LLC v. Samsung Elecs. Co., Nos. 11 C 4574 & 11 C 6235, Slip Op. (N.D. Ill. Sep. 14, 2014) (Kennelly, J.).

Judge Kennelly granted in part defendants Samsung’s and HTC’s motions for summary judgment of patent exhaustion based upon a prior settlement agreement that plaintiff Cascades Computer Innovation (“Cascades”) previously entered with Google, the parent of Motorola Mobility who was previously a defendant in a related suit.  This patent case involves a method for implementing software meant for one computer architecture on another computer architecture.  Defendants were accused based upon the alleged use of the Dalvik Virtual Machine.

The license covered:

“Google Products” including, among others, “all Motorola and Nexus devices, but . . . excludes mobile devices manufactured by third parties and running the Android OS except any Nexus-branded devices.

The license also provided a release and a covenant not to sue.  The release provided that:

Cascades releases and discharges Google, Motorola, Google Affiliates, Google Partners . . . from any and all claims, demands, debts, liabilities, actions, causes of actions or suits of whatever kind of nature, asserted or not asserted, known or unknown, arising out of the claims or matters that have been or could have been asserted by Cascades in the Actions relating to the same facts and circumstances therein, provided that such release and discharge shall not extend to any other defendant in the Actions. 

The covenant not to sue states that

Cascades covenants not to sue Google, Motorola, Google Affiliates and/or Google Partners for any infringement or any other violation of the Cascades Patents based upon any licensed activity, permitted pursuant to this Section, related to any Google Product; provided this covenant does not extend to any other defendant in the Patent Suit.

Google provided the Android operating system to numerous entities, including Samsung and HTC, as open source code, including the Dalvik Virtual Machine.  Looking to the Supreme Court’s Quanta decision, the Court held that because the license authorized Google to convey the Android operating system to others, including Samsung and HTC, the additional restrictions in the license grant were not allowed because they sought to “circumvent the patent exhaustion doctrine and reap multiple gains from a single sale.”

Having determined that there was an authorized sale pursuant to the Google license, the Court turned to the other patent exhaustion factors.  The Court held that there were no reasonable noninfringing uses.  While one Android version, KitKat, allied a user to switch off the Dalvik Virtual Machine in favor of Android Run Time, the Android website expressly warned users against doing so because making the switch runs the risk of malfunctions.  The Court, therefore, granted defendants’ motion for patent exhaustion from the date of the Google license forward.

The Court then turned to use before the Google license agreement was executed.  Holding that the release and covenant not to sue were personal to Google and Motorola and backward looking, the Court held that patent exhaustion did not flow from the release or covenant not to sue before the date of the Google license.  The Court did, however, note that some courts had disagreed holding that a backward looking covenant not to sue exhausted patents.

Permissible Repair Doctrine Applies Where Patentee Recommends Changing the Accused Part

Posted in Summary Judgment

Robert Bosch LLC v. Trico Prods Corp., No. 12 C 437, Slip Op. (N.D. Ill. May 21, 2014) (Grady, Sen. J.).

Judge Grady denied defendants’ (collectively “Trico”) motion for summary judgment of noninfringement with respect to Trico’s Duralast Flex Blade windshield wiper blade in this patent infringement dispute.  

As an initial matter, the Court held that a first sale in the United States is still required for patent exhaustion, even if a US first sale is not required for copyright exhaustion.  

To the extent that plaintiff Robert Bosch (“Bosch”) sold some wiper blades in the US, the Court addressed whether Trico’s acts fell within the doctrine of permissible repair.  The Court held that a consumer replacing the wiper blade in a wiper assembly with a Trico wiper blade was a permissible repair, noting that Bosch recommended replacing the blades every six months.  The Court also noted that there was an established market for replacement wiper blades.  But the Court withheld ruling upon the issue until there was a more developed record regarding the differences between patent claims that covered the entire wiper system and other claims that allegedly covered just the wiper blades, as well as related case law.

The Court held that there was not sufficient evidence that Bosch’s acquisition of Unipoint, from whom Trico purchased the accused products, prevented Bosch’s claims to pre-acquisition sales to Trico.  Trico failed to provide the relevant language of the acquisition agreements to determine whether the agreements prevented suits against customers.  And Trico did not support or sufficiently develop its theory that Bosch benefited from Unipoint’s pre-acquisition sales to Trico and therefore should be barred from suit.  The Court, therefore, denied the motion.

Descriptive Trademark Does Not Survive Summary Judgment

Posted in Summary Judgment

Box Acquisitions, LLC d/b/a Box Partners, LLC v. Box Packaging Prods., LLC, No. 12 C 4021, Slip Op. (N.D. Ill. Mar. 26, 2014) (Kocoras, J.).

The Court granted summary judgment for defendant in this Lanham Act case involving alleged trademark infringement regarding plaintiff’s BOX PACKAGING trademarks.  The “key issue” was whether BOX PACKAGING was a protectable mark or was unprotectable as a descriptive term that has not acquired sufficient secondary meaning.

The Court held that BOX PACKAGING was descriptive as a matter of law.  No imagination was required to connect BOX PACKAGING to the box and packaging services offered by plaintiff.  The fact that plaintiff did more than just distribute boxes and packaging did not sway the Court because all of plaintiff’s services encompass boxing and packaging somehow.  The Court was also swayed by how other companies used “Box Packaging” within the industry.  The fact that BOX PACKAGING is not defined in the dictionary was not enough to avoid summary judgment of descriptiveness.

Regarding secondary meaning, plaintiff did not offer any direct evidence, which comes from consumer testimony or consumer surveys.  The Court, therefore, turned to the circumstantial evidence.  Plaintiffs use of BOX PACKAGING was not exclusive, many others used the phrase.  And the fact that plaintiff largely stopped using BOX PACKAGING in favor of BOX PARTNERs weighed against a finding of secondary meaning. 

Furthermore, plaintiff offered no evidence of advertising or sales figures to support secondary meaning based upon such expenditures.  The Court also held that plaintiff’s evidence of intentional copying was weakened because plaintiff chose a descriptive mark. 

Plaintiff’s proof of actual confusion was insufficient because plaintiff could not identify the customers that allegedly expressed confusion.

The Court granted summary judgment regarding plaintiff’s claims that defendant sought to fraudulently register its trademark because there were several other entities using versions of the mark.  So, the fact that defendants were aware of plaintiff did not suggest that defendants could not register their marks. 

The Court also granted summary judgment as to defendant’s purchase of various “boxpackaging” domain names because plaintiff was not actively using BOX PACKAGING at the time, noting that had defendants acted when plaintiff was actively using the mark the result “could have been vastly different.”

Late Damages Theory Allowed Based Upon Lack of Prejudice

Posted in Summary Judgment, Trial

NanoChem Sol’ns, Inc. v. Global Green Prods., LLC., No. 10 C 5686, Slip Op. (N.D. Ill. Sep. 10, 2013) (Hart, Sen. J.).

Judge Hart denied defendants’ motion in limine to exclude plaintiff NanoChem’s late-disclosed lost profit damages analysis.  The Court also granted defendants’ motion for summary judgment as to NanoChem’s Lanham Act and Illinois state law unfair competition claims.

During discovery, NanoChem stated that it would seek a reasonable royalty for its patent claims without providing a calculation.  In response to defendant’s motion, NanoChem provided a lost profit calculation.  While the calculation was late, defendants were not prejudiced because the final pre-trial order had not been filed yet and NanoChem did not rely upon an expert.  But NanoChem was limited to the offered calculation and no other damages theories.

The Court granted defendants summary judgment as to NanoChem’s Lanham Act and Illinois unfair completion claims.  Each claim required that NanoChem prove that its A-5D mark had acquired secondary meaning.  Because NanoChem did not offer evidence supporting secondary meaning, the Court granted defendants summary judgment.

Trade Secret Claims Dismissed for Lack of Evidence of Unique, Non-Public Information

Posted in Summary Judgment

Spitz v. Proven Winners N. Am., LLC, No. 11 C 3997, Slip Op. (N.D. Ill. Aug. 22, 2013) (Hart, Sen. J.).

Judge Hart granted defendants’ motion for summary judgment in this trade secret case involving alleged trade secrets identifying pet-friendly plants.  Plaintiff alleged that defendants used plaintiff’s trade secret identification of pet-friendly plants without paying the agreed upon $.02 per pet-friendly plant sold.  As an initial matter, the Court denied to strike either parties Local Rule 56.1 statements or responses.  Each party claimed that the other did not comply with various portions of Local Rule 56.1, but to the extent the Court was able to understand and use the statements, it would do so without striking any party’s statements.  The Court did, however, disregard extraneous facts included in plaintiff’s responses to defendants’ statements of fact, instead of in a Local Rule 56.1 additional statement of facts.

The Court held that plaintiff did not provide sufficient evidence that defendants’ association of a pet-friendly label with certain plants on its website came from plaintiffs’ trade secret information.  Instead, the evidence suggested that the information was publicly available.  The Court also granted defendants summary judgment as to plaintiff’s other non-IP contract and tort claims, but I will not detail those because they do not have significant IP implications.

Limited Generic Use Does Not Render A Mark Generic

Posted in Summary Judgment

Timelines, Inc. v. Facebook, Inc., No. 11 C 6867, Slip Op. (N.D. Ill. April 1, 2012) (Darrah, J.).

Judge Darrah denied defendant Facebook’s summary judgment motion arguing that plaintiff Timeline’s TIMELINE trademark was generic or descriptive, and that Facebook’s use of the mark was fair use.  Timelines presented evidence that it used TIMELINE as a brand, not just in its generic sense.  And while Timelines had used TIMELINE in its generic sense, it had not done so regularly so as to make the mark generic.  And Facebook’s summary evidence was not dispositive as to descriptiveness.  Timelines had over one thousand active users.  The Court reasoned that as to the users, at least, TIMELINE had acquired meaning.

Finally, Facebook’s use of TIMELINE was not just non-trademark fair use.  In fact, Facebook’s founder referred to TIMELINE as a brand.

Akamai Reverses (Another) Summary Judgment Decision

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

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

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

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

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

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. 


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.


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

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

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

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

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.