Eazypower Corp. v. Jore Corp., No. 04 C 6372, Slip Op. (N.D. Ill. Oct. 20, 2010) (Zagel, J.).
Judge Zagel denied defendant Jore’s ("Jore") motion for summary judgment of invalidity in this patent dispute regarding screwdrivers with flexible extension shafts. As a preliminary matter, plaintiff Eazypower repeatedly failed to comply with Local Rule 56.1 regarding statements of material fact. Despite that, the Court accepted Eazypower’s additional facts and responses to Jore’s statements of fact because Jore had sufficient opportunity to respond to them.
Jore argued that a particular screwdriver with a flexible extension shaft, the FB-19, was sold in the United States in the mid-1980s and was invalidating prior art. Eazypower did not dispute that the FB-19 taught each element of the identified patent claims. But Eazypower did dispute that the FB-19 was in fact prior art. First, Eazypower argued that Jore had not sufficiently corroborated its evidence that the FB-19 was sold in the United States in the mid-1980s. Jore’s corroborating evidence – several third parties with knowledge – was sufficient. But there was evidence conflicting with Jore’s position. An age analysis of the FB-19 packaging suggested that it had been built in the late 1970s or early 1980s, but it also showed traces of an adhesive that was not available in the mid-1980s. Additionally, Eazypower showed that relevant shipping records for the period did not show any sales or import of FB-19s. The Court, therefore, held that there was a question of material fact and denied summary judgment.
This is the third installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are tips eleven through fifteen:
11. Respect Twombly / Iqbal pleading standards. The Northern District is no different than the rest of the country’s district courts — patent infringement requirements have not changed from the form in the Federal Rules. But that is not necessarily the case for Lanham Act, copyright or trade secret claims. There are numerous decisions dismissing, often with leave to amend, these more fact-specific intellectual property claims. And even in the patent context plaintiffs benefit from pleading with more particularlity. The more detail a defendant has the more information they should disclose about their accused products or systems as part of their Local Patent Rule 2.1(b) initial disclosure document production requirements. That means that the plaintiff will have more material with which to prepare its Local Patent Rule 2.2 intial infringement contentions. Finally, regardless of the type of claim, many and perhaps most judges rely upon Twombly / Iqbal to require more than a bare recitation of the elements of affirmative defenses. So, it is especially important to add some facts to your affirmative defenses.
12. Prepare Local Rule 56.1 statements with care. This is probably the most frequent Local Rule hang up in Northern District of Illinois opinions. It is critical that movants meet the Local Rule 56.1 requirements, among others, a numbered statement of undisputed material facts supported by admissible evidence. If the facts are not supported or if they are legal conclusions, judges routinely strike or disregard them.
13. Respond to Local Rule 56.1 statements with evidence. Far too often, parties respond to Local Rule 56.1 statements without evidence. Those responses are almost always deemed admissions. Without admissibile evidence to counter statements of fact they are almost always admitted.
14. Watch your judge’s webpage. Each judge maintains the equivalents of standing orders on their webpage, often in multiple places and links across the page. It is critical that you read them at the beginning of your case and that you recheck them regularly. At a minimum, check them before you file anything with the Court. I find that the website instructions change with much greater frequency than the old, paper standing orders did. And while judges try to make it easy to see what they change, if you are not looking you will miss it.
15. Always file notices of motion. In some districts, notices of motions are not required or even discouraged. In the Northern District of Illinois, they are required of every motion. If you fail to file one, you will likely hear from the Clerk’s office. Also, make sure to file the notice after the motion, not before. If you file the notice before the motion, you will generally have to refile it.
Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., No. 07 C 1668, Slip Op. (N.D. Ill. May 19, 2010) (Darrrah, J.).
Judge Darrah granted in part defendants’ and denied plaintiffs’ summary judgment motions in this Lanham Act case over the use of the name "Eva’s Bridal." The Court granted defendants’ summary judgment as to plaintiffs’ trademark infringement claim because plaintiffs presented no evidence that they federally registered the "Eva’s Bridal" trademark.
Plaintiffs’ Lanham Act unfair competition and trademark dilution claims did not require a federally registered trademark. But because the mark was not registered, plaintiffs had the burden of proving ownership of the mark. Plaintiffs created at least a question of fact as to ownership with evidence that plaintiffs’ business was a continuation of the original use of the mark. And because the mark was based upon a first name and not a last name the mark was not necessarily descriptive. The Court, therefore, held there was a question of fact as to whether the mark was descriptive.
Defendants agreed that plaintiffs abandoned the mark by licensing it without maintaining any quality control. Plaintiffs, however, presented sufficient evidence of control to create a question of fact.
Defendants’ argument that plaintiffs had not shown a likelihood of confusion was not relevant to a dilution analysis. And defendants’ argument that the Eva’s Bridal mark was not famous failed because it was not developed. Defendants’ argument was a single sentence without elaboration or support.
There was also a question of fact as to defendants’ laches and acquiescence claims. Plaintiffs cited evidence that during the alleged delay the parties engaged in various negotiations and defendants made various payments.
Finally, the Court denied plaintiffs’ summary judgment motion. Plaintiffs failed to comply with Local Rule 56.1(a)(3) requiring a statement of uncontested material facts supported by admissible evidence. Plaintiffs’ statements were largely taken verbatim from its amended complaint, were largely irrelevant to the summary judgment issues and were largely not supported by cites to the record. The Court, therefore, denied plaintiffs’ motion without analyzing it on the merits.