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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Bucklo

2013 PWC Patent Litigation Study: N.D. Illinois Remains a Key Patent District

Posted in Legal News

PWC has published the latest installment in its excellent yearly patent litigation survey.  This year’s survey looks at data for every year from 1995 through 2012.  One interesting aspect of this year’s study was a focus upon individual districts and judges.  Here are some of the key takeaways regarding the Northern District:

  • The Northern District (a top five patent district in terms of number of filings) is the fifteenth fastest district to trial with 35 cases going to trial during the period (1995-2012) in a median time of 3.67 years.  That is relatively slow as compared to the Eastern District of Virginia’s .97 years mediation or the Western District of Wisconsin’s 1.07 years.  But those times to trial do not take into account the number of trials — 32 for the Northern District, 22 for Virginia and 10 for Wisconsin — nor do they consider the relative complexity of those cases. 
  • In those trials, plaintiff’s have a 24.8% success rate with median damages of almost $5.9M.  That puts the Northern District 8th in terms of largest median damages awarded, and 13th in plaintiff’s success rate.
  • The Northern District is 2nd in terms of number of reported NPE decisions with 32 decisions and 133 total patent decisions.  In those decisions, the NPEs’ success rate was 12.5%.
  • The Northern District is also the 4th district in ANDA filings with twelve.

The PWC study also looks at individual judges, with Northern District judges ranking high in all categories:

  • Judge Darrah was the 11th judge nationwide in terms of patent decisions with 10 total.  Plaintiffs’ success rate was 10% on those decisions.  Seven of the ten decisions were summary judgment decisions.  Judge Darrah is ranked 8th for summary judgment decisions nationwide with seven decisions and a 0% success rates for plaintiffs.
  • Judge Kendall was 18th with nine decisions (88.9% were summary judgment decisions).  Kendall had an 11.1% success rate for plaintiffs.  Judge Kendall is ranked 6th for summary judgment decisions nationwide with eight decisions and a 12.5% success rates for plaintiffs.
  • Judge Bucklo was 21st with eight decisions (62.5% were summary judgment decisions).  Bucklo had a 50% success rate for plaintiffs.  Judge Bucklo is ranked 24th for summary judgment decisions nationwide with five decisions and a 20% success rates for plaintiffs.
  • Judge Guzman was 34th with seven decisions (71.4% were summary judgment decisions) with a 14.3% success rate for plaintiffs.  Judge Guzman is ranked 26th for summary judgment decisions nationwide with five decisions and a 20% success rates for plaintiffs.
  • Judge Zagel was 35th with six decisions (66.7% were summary judgment decisions) with a 66.7% success rate for plaintiffs.  Judge Zagel is ranked 36th for summary judgment decisions nationwide with four decisions and a 50% success rates for plaintiffs.
  • Judge St. Eve was 41st with six decisions (83.3% were summary judgment decisions) with a 16.7% success rate for plaintiffs.  Judge St. Eve is ranked 35th for summary judgment decisions nationwide with five decisions and a 0% success rates for plaintiffs.
  • Judge Kennelly is ranked 31st for summary judgment decisions nationwide with five decisions and a 0% success rates for plaintiffs.

The judge-by-judge statistics are interesting, but because of the relatively low number of decisions and the relatively simple statistics offered, they likely do not tell us much.  It is hard to draw many clear conclusions from sample sets of, in most cases, four to six summary judgment decisions spaced over years with varied parties and circumstances. It is also curious that Judge Pallmeyer did not make any of the lists, although she has been on a number of lists as one of the busiest patent judges in the nation over the almost seven years that I have been writing this blog.

Inadvertent Use of Mark Violates Consent Order

Posted in Trial

Gaither Tool Co. v. Summit Tool Co., No. 01 C 4096, Slip Op. (N.D. Ill. Sep. 5, 2012) (Bucklo, J.).

Judge Bucklo granted plaintiff Gaither Tool’s motion to enforce the parties’ Consent Order which required that defendant Summit Tool not use the trademark BEAD KEEPER.  Summit Tool acknowledged use of the mark, but argued it was inadvertent and that Summit Tool ceased use of BEAD KEEPER as soon as Gaither Tool put Summit Tool on notice of the use.  The Court held that the use was not inadvertent because Summit Tool offered no evidence that it employed any precautions to make sure it complied with the Consent Order.

Limited Contracts and Distributor Sales in Illinois Create Jurisdiction

Posted in Jurisdiction

Original Creations, Inc. v. Ready Am., Inc., No. 11 C 3453, Slip Op. (N.D. Ill. Oct. 5, 2011) (Bucklo, J.).

Judge Bucklo denied defendant Life+Gear’s Fed. R. Civ. P. 12(b)(2) and (3) motion to dismiss for lack of personal jurisdiction and improper venue in this patent dispute.  While Life+Gear did not have Illinois offices, it did have an interactive website and at least one Illinois sale.  Life+Gear also sold product to two distributors that sold that product in Illinois and Life+Gear was reasonably aware of those channels of sale.

Venue was proper because venue in a patent case exists wherever there is personal jurisdiction.


Shared Downloading of a Movie Makers Joinder

Posted in Discovery

First Time Videos, LLC v. Does 1-76, No. 11 C 3831, Slip Op. (N.D. Ill. Aug. 16, 2011) (Bucklo, J.).

Judge Bucklo denied the Doe defendants’ various motions to quash or dismiss in this BitTorrent copyright infringement case. Plaintiff First Time Video ("FTV") alleged that the seventy-six Doe defendants infringed plaintiff’s copyright in an adult movie using BitTorrent and in so doing engaged in a civil conspiracy. The Court denied each motion: 

·       While file-sharers have limited first amendment rights, those rights do not shelter copyright infringement. 

·       FTV sufficiently described the alleged copyrighted work by naming the movie in the complaint. 

·       Joinder of the seventy-six Does was proper. FTV alleged that the Does acted in concert to copy one video over several months as part of a BitTorrent "swarm." And the case involved common legal questions regarding copyright law. 

·       The Court recognized that other Northern District judges had severed all of the Doe defendants. Those cases, however, involved many more Does, and did not show a connection to Illinois. FTV alleged that it had traced the accused IP addresses to Illinois using geo-location technology.

·       FTV’s personal jurisdiction allegations – that FTV traced the Doe IP addresses to Illinois – were also sufficient.

Plaintiff’s Business in Illinois Alone Cannot Create Personal Jurisdiction

Posted in Jurisdiction

Culligan Int’l Co. v. Water Sys. of Birmingham, Inc., No. 10 C 8199, Slip Op. (N.D. Ill. Apr. 27, 2011) (Bucklo, J.).

The Court granted defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trademark dispute regarding plaintiff’s CULLIGAN marks. Defendants were Alabama entities without offices, employees or agents in Illinois. All of defendants’ business was conducted in Alabama. The parties’ agreement was negotiated and executed in Alabama, and there was no indication of a choice of law provision selecting Illinois law. The only connection to Illinois was that plaintiff did business in Illinois, and that was not sufficient to create jurisdiction over defendants.

Restating and Bolding Allegations Does Not Overcome Motion to Dismiss

Posted in Pleading Requirements

Caldera Pharms., Inc. v. Los Alamos Nat’l. Sec., L.L.C., No. 10 C 6347, Slip Op. (N.D. Ill. Mar. 11, 2011) (Bucklo, J.).

Judge Bucklo granted defendant UChicago Argonne’s ("Argonne") Fed. R. Civ. P. 12(b)(1) & (b) motion to dismiss plaintiff Caldera’s claims against Argonne in this patent dispute. Caldera was allegedly the exclusive licensee of the patents-in-suit and Argonne was allegedly using the patented technology in a partnership with the licensor. Argonne argued that there was no case or controversy for Caldera’s declaratory judgment complaint because: 1) Argonne had no contract with Caldera; and 2) Caldera lacked the right to bring suit using the patents-in-suit. Caldera said its claims did not sound in breach of contract or patent infringement, but Caldera never explained what its claim was. And because Caldera had the burden of proof, the motion was granted.

Argonne also argued that Caldera’s claims were not sufficiently plead. In response, Caldera simply restated its claim with the relevant portion bolded. But merely restating claims in bold does not support plaintiff’s claims or overcome a motion to dismiss. The Court, therefore, dismissed the claims.

“The Allergens” Requires All Allergens Not Just One or More

Posted in Claim Construction

Late Allergen Reduction, LLC v. Dynarex Corp., No. 10 C 129, Slip Op. (N.D. Ill. Apr. 21, 2011) (Bucklo, J.).

Judge Bucklo construed the claims in this patent infringement case involving a method of neutralizing protein allergens found in natural rubber latex. Here are constructions of note:

  • "The protein allergens" was construed to require that the method degrade all of the protein allergens in the latex, not just one or more protein allergens.
  • "Non-allergenic to humans" was construed as "the protein allergens contained within the natural rubber latex are degraded such that the natural rubber latex is incapable of producing an allergic reaction in any human . . . ." Plaintiff’s proposed construction requiring greatly reduced levels of allergens to "most humans" would render the claims indefinite.
  • "Non-transmissive" was construed as "an optical structure that reduces the transmission of radiant light to the greatest degree practicable consistent with the intended purpose."
  • "A protease enzyme and a peptidase enzyme" was construed as requiring two separate enzymes, one being a protease and the other being a peptidase. It could not be a single enzyme of both types.

Accused Infringer Need Not Test Prior Art Patented Products to Prove Invalidity

Posted in Summary Judgment

Viskase Cos., Inc. v. World Pac Int’l AG, No. 09 C 5022, Slip Op. (N.D. Ill. Feb. 3, 2011) (Bucklo, J.).

Judge Bucklo granted declaratory judgment plaintiff Viskase’s motion for summary judgment of invalidity and denied the remaining cross-summary judgment motions as moot in this patent dispute involving food casings that prevent the loss of weight, flavor and taste. The Court previously construed "impermeable" to mean that the casing did not allow any measurable loss of weight, flavor or moisture. Instead of addressing each of Viskase’s arguments element-by-element, declaratory judgment defendant World Pac put "all of its eggs in one basket." The Court denied World Pac’s earlier summary judgment motion regarding infringement largely because of World Pac’s failure to test the alleged impermeability of Viskase’s accused products. World Pac, therefore, argued that because Viskase had not tested sausages covered by the prior art patent, it could not succeed.

But the Court explained that "what is good for the goose is not always good for the gander." The Court held that there was no authority requiring that a party test alleged anticipatory prior art patents to prove that they read on the asserted patent. While there was some appeal to World Pac’s argument, it was unsuccessful. An accused infringer is not required to test prior art products. Furthermore, World Pac’s own expert had conceded that the relevant claim elements of the patent-in-suit were disclosed in the prior art patent.

Trial Counsel’s Opinion – Related Documents Are Discoverable

Posted in Discovery

Viskase v. World Pac, No. 09 C 5022, Slip Op. (N.D. Ill. Oct. 15, 2010) (Bucklo, J.).

Judge Bucklo granted defendants’ motion to reconsider, ordering production of the "Merritt Memo" previously held to be privileged because it included litigation counsel. The Court held that litigation counsel, before becoming litigation counsel, was the principal conduit to opinion counsel and his opinion was sought in connection with opinion counsel’s analysis. The Court, however, held that no post-filing communications were discoverable in light of In re Seagate which provided post-filing protection where a preliminary injunction was denied. 

False Marking Plaintiffs’ Choice of Forum Given Little Deference

Posted in Jurisdiction

Simonian v. Monster Cable Prods., No. 10 C 1269, Slip Op. (N.D. Ill. Nov. 22, 2010) (Bucklo, J.).

Judge Bucklo granted defendant Monster Cable Products’ ("Monster") § 1404 motion to transfer this false patent marking case. Citing the Court’s decision transferring another of plaintiff Simonian’s false marking cases to Iowa in Simonian v. Pella. As in Pella, the qui tam plaintiff’s chosen forum was given little deference. And California was the situs of the events because that is where Monster designed the packaging at issue and made the alleged marking decisions. Also, all of Monster’s witnesses were located in California. The Court, therefore, transferred the case to the Northern District of California.

Preliminary Injunction Denied Because of Noninfringement Evidence

Posted in Legal News

Viskase Cos., Inc. v. World Pac Int’l. AG, No. 09 C 5022, Slip Op. (N.D. Ill. Aug. 9, 2010) (Bucklo, J.).

Judge Bucklo denied defendants’ motion for preliminary injunction based upon World Pac’s patent infringement counterclaim regarding impermeable sausage casings. Viskase’s research and design documents referenced "World Pac knock-off[s]," "World Pac replacement[s]" and "World Pac me-too" products. The key infringement issue was whether Viskase’s accused casings were "impermeable" as that term was construed by the Court. The parties set up a "classic battle of the experts" with competing testing disputing whether the accused sausage casing allowed a measurable weight loss, and therefore was permeable. While a jury would ultimately have to weigh the evidence, Viskase presented "more than insubstantial evidence" that the accused casings lost measurable weight. And Viskase’s testing was done outside of litigation, lending it additional credibility. World Pac also failed to present sufficient evidence regarding loss of flavor and taste, the other "impermeable" characteristics. Viskase, therefore, raised a substantial noninfringement question. Furthermore, World Pac did not put forth sufficient evidence to warrant a preliminary injunction. Because Viskase raised a substantial question regarding noninfringement, the Court declined to examine Viskase’s other defenses or the other element of a preliminary injunction.

Patent Cases Consolidated and Stayed Pending Related Case

Posted in Federal Rules

GS Cleantech Corp. v. Big River Resources Galva, LLC, No. 10 C 990, Slip Op. (N.D. Ill. Jul. 30, 2010) (Andersen, J.).

Judge Andersen reassigned this case so that it could be consolidated with a case before Judge Bucklo by the same plaintiff asserting the same patent accusing similar technologies. The Court also ordered that a stay awaiting resolution of a related District of Kansas case would apply to the consolidated case.

False Patent Marking Plaintiff’s Choice of Forum Given No Deference

Posted in Pleading Requirements

Simonian v. Pella Corp., No. 10 C 1253, Slip Op. (N.D. Ill. Aug. 5, 2010) (Bucklo, J.)

Judge Bucklo granted defendant Pella’s 28 U.S.C. § 1404(a) motion to transfer plaintiff Simonian’s false patent marking case to the Southern District of Iowa. The court held that Simonian’s choice of forum was not given deference, as it normally would be. First, the real plaintiff was the United States, not Simonian. Second, the situs of the material events was Iowa where Pella made its marking and packaging decisions, not Illinois where some marked products were sold. Simonian’s numerous other false marking cases filed in the district did not weigh against transfer. Each of those cases involved different defendants, different accused products and different allegedly expired patents.

Court Will Not Rewrite Claims to Avoid Nonsensical Results

Posted in Claim Construction

Viskase Cos., Inc. v. World Pac Int’l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 18, 2010) (Bucklo, J.).

Judge Bucklo construed the claims in this patent case regarding food curing technologies for use in packing sausages and other processed foods. The following construction were of particular note:

  • The Court declined to construe "barrier casing" holding that "barrier" did not require construction beyond its ordinary meaning. The parties real dispute was over the term "impermeable" which the Court construed.
  • The Court construed "impermeable" as "having a low enough permeability or transmission rate to steam and/or gas to prevent a measurable loss of weight, flavor, and taste during customary production, cooking, and storage." This construction required a lower permeability than any known in the industry because that is how the patentee defined impermeable in the specification noting that courts cannot redraft claims to avoid "nonsensical results."
  • "Plastic Foils" was construed as "a self-supporting film or sheet of plastic." Because the patent contemplated laminating the plastic foil, it has to be self-supporting because only self-supporting foils can be laminated.
  • The Court held that "woven" in "woven fibers, fabric, knits and fleece" modified only fibers, not fabric, knits or fleece.

The State of the Northern District Remains Strong

Posted in Legal News

Chief Judge Holderman recently gave the annual State of the Court address, concluding that the Northern District continues to be an active, growing district court. Civil case filings were up 6.2% from 2008 to 2009, and the Northern District remains in the top 10% of district courts for median time to disposition – 6.2 months. 

The Court began 2009 with one vacant judgeship – created by Judge Filip’s March 2008 resignation. The Court ended 2009 with from after Judges Bucklo, Coar and Gettleman took senior status. In February 2010, Judge Manning also took senior status. Judge Feinerman was confirmed last month, reducing the vacant seats by one, but there could be five vacancies again at the end of July when Judge Anderson retires. 

The magistrate bench was also active. Judges Ashman and Keys shifted to recalled status. Judges Finnegan, Gilbert and Kim joined the bench. 

Finally, the number of registered e-filers is up 18% to over 25,000. And the daily filing rate is up 15% to an average 867 documents per day. 

Court Will Not Amend Summary Judgment Based Upon “New” Evidence

Posted in Federal Rules

Ho v. Taflove, No. 07 C 4305, Slip Op. (N.D. Ill. Apr. 9, 2010 (Bucklo, J.) 

Judge Bucklo denied plaintiffs’ motion for reconsideration of the Court’s order granting defendants summary judgment as to plaintiffs’ Copyrights, Lanham Act and related state law claims in this dispute over whether defendants took plaintiffs’ mathematical model (the “Model”). As an initial matter, the Court noted that the Federal Rules of Civil Procedure do not provide for “motions to reconsider.” Rather, parties file either a Rule 59(e) motion to alter or amend judgment (within 28 days of the judgment) or a Rule 60(b) motion for relief from judgment (within a "reasonable time”). The substance of the motion determines whether it is heard pursuant to Rule 59(e) or Rule 60(b). Plaintiffs’ motion was brought pursuant to Rule 60(b), but the Court treated it as a Rule 59(e) motion because it sought to alter the judgment, not for relief from it.

A Rule 59(e) motion requires newly discovered evidence or manifest errors of law. Plaintiffs’ motion as to their state law conversion, copyright and Lanham Act claims relied upon additional facts that were available during the initial briefing, but not raised at that time. The Court, therefore, did not consider the evidence and the plaintiffs’ arguments were denied.

As to the Court’s decision that the Model was not copyrightable as a mathematical formula pursuant to §102(b) of the Copyright Act, plaintiffs provided no convincing authority showing that it was copyrightable. And plaintiffs provided not even a single example of an alternate expression of the Model to satisfy the merger doctrine.

Mathematical Formula is No Mickey Mouse

Posted in Legal News

Ho v. Taflove, No. 07 C 4305, Slip Op. (N.D. Ill. Jan. 15, 2010 (Bucklo, J.). 

Judge Bucklo granted defendants’ motion for summary judgment in this copyright and Lanham Act case involving the alleged infringement and misappropriation of plaintiffs, a Northwestern professor and a Northwestern graduate student, mathematical model of a 4-level z-electron atomic model with Pauli Exclusion Principle for simulating the electron dynamics of active media using Finite Difference Domain method (the "Model"). 

Copyright Claims

Plaintiffs copyrighted their thesis, notebooks, certain figures and a presentation, all embodying the Model. The Court held that the Model was uncopyrightable because it was fact and algorithm. The Court explained why the Model was a fact as opposed to a cartoon character like Mickey Mouse, as defendants argued:

But Mickey Mouse is not an idea, procedure, process, system, method of operation, concept, principle, or discovery, and his characteristics and personality are not intended to realistically mimic those of a real mouse (e.g., wears clothes, owns a dog, has jobs, etc.)  Simply put, Mickey Mouse does not have plaintiffs’ merger doctrine or 17 U.S.C. §102(b) problems.

To the extent the Model was copyrightable based upon "unique considerations" underlying the Model, plaintiffs did not identify the considerations or support them with evidence. And the two copyrighted charts consisted of unprotectable elements such as lines, arrows and parabolas.   Additionally, Northwestern described the figures as "fairly conventional diagramatic representations."

Lanham Act Claims

Citing the Supreme Court’s Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041 (2003), decision, the Court held that the defendants were correct in identifying themselves as the originator of their papers, even if plaintiff originated the Model underlying the papers. The proper designation of origin is the producer of the work, not the author of the underlying idea. Because defendants prepared the papers, they were correctly identified. And the Court held that plaintiffs’ common law unfair competition claim failed for the same reasons.

Conversion Claim

The Court granted summary judgment in defendants’ favor as to plaintiffs’ conversion claim because plaintiffs presented no evidence that defendants prevented plaintiffs access to their written works or to their intangible property – the Model or their research. Plaintiffs remained able at all times to continue their research.

Trade Secret & State Law Claims

The Court held that the Model was not a trade secret because plaintiffs published it in 2001 and 2002. The plaintiffs’ remaining state law claims were also preempted by the Copyright Act.

Seventh Circuit American Jury Project

Posted in Trial

The Seventh Circuit instituted a Commission to study the implementation of the ABA Jury Project.  The Northern District was heavily represented on the Commission.  The following Northern District Judges were members of the Commission:  Bucklo, Brown, Coar, Darrah, Denlow, Der-Yeghiayan, Gottschall, Holderman, Kennelly, Lefkow, Moran, Schenkier, St. Eve, and Zagel.  The Commission recently published its report — click here to read it.  The report describes a two phase analysis.  In the first phase, district judges tested the following seven ABA Principles:

1.       Twelve-Person Juries;


2.       Jury Selection Questionnaires;


3.       Preliminary Substantive Jury Instructions;


4.       Trial Time Limits;


5.       Juror Questions;


6.       Interim Trial Statements by Counsel; and


7.       Enhanced Jury Deliberations.

Other Principles, such as juror notebooks and allowing jurors to take notes, were already in such widespread use that they were not tested.  Click here for the Phase One Project manual detailing the principles, the rationales and authority behind them, and suggested procedures.  Phase One resulted in questionnaires from 22 participating federal trial judges, 74 participating attorneys and 303 jurors from 38 trials that used one or more of the seven Principles.  Based upon the analysis of Phase One results and questionnaires, the Commission focused Phase Two on the following four Principles:

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New Patent Pattern Jury Instructions

Posted in Jury Instructions

The Northern District has posted the Seventh Circuit’s new proposed pattern jury instructions for patent cases on its website — click here for a copy.  The instructions include all of the recent revisions to the patent laws, including KSR and Seagate. The Seventh Circuit requested comments on the instructions be sent to:

Chief Judge Robert L. Miller, Jr.

325 Robert A. Grant Federal Building

204 S. Main St.

South Bend, IN 46601

Comments will be accepted until April 1st.  Also, below is my list of IP jury instructions by Northern District judge, I am sure we will start to see some new ones soon in light of the turbulent 18 months patent law has had:

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No Temporary Restraining Order Without Live Witnesses

Posted in Legal News

Recycled Paper Greetings, Inc. v. Davis, No. 08 C 236, __ F. Supp.2d __, 2008 WL 282687 (N.D. Ill. Feb. 1, 2008) (Bucklo, J.).

Judge Bucklo denied plaintiff’s, Recycled Paper Greetings (“RPG”), motion for a temporary restraining order in this trade secret misappropriation action. RPG argued that it was either part of a joint venture or, at least, a confidential relationship with defendant Kathy Davis to develop a signature line of greeting cards. RPG contends that Davis took confidential information regarding the greeting card line to a competitor. Davis countered that she had terminated her contract with RPG pursuant to the contract’s termination provision before working with RPG’s competitor and there was, therefore, no breach or misappropriation. At an initial hearing, the Court suggested that live testimony might be required to fully resolve the motion for the TRO. But both parties told the Court that their respective witnesses would not be available during the necessary time frame to testify. Because no witnesses were available, the Court denied the TRO, holding that it lacked sufficient information to determine that RPG maintained its alleged trade secrets with sufficient secrecy or the nature of the relationship between RPG and Davis.

Practice tip: If you are seeking a TRO, line up commitments from your potential witnesses to be available both flexibly and quickly. Not many judges will grant TROs if plaintiff cannot present requested witnesses.

Two Newsletters to Illinois Residents Create Specific Jurisdiction

Posted in Jurisdiction

Morton Grove Pharms., Inc. v. Nat’l. Pediculosis Assoc., __ F. Supp.2d __, 2007 WL 4259422 (N.D. Ill. Nov. 30, 2007) (Bucklo, J.).

Judge Bucklo granted in part defendants Fed. R. Civ. P. 12(b)(2) motion to dismiss and denied defendants’ motion to transfer the case to the Eastern District of Michigan. Plaintiff manufactures a line of lotions and shampoo which are FDA-approved for treating lice and scabies.  Defendants are a Michigan non-profit group, Ecology Center, Inc., and related individuals (collectively the "Center"), as well as the National Pediculosis Association. The Center mailed two newsletters related to passage of Michigan legislation to approximately 19,000 addresses of which 44 were in Illinois.  99% of the Center’s donors were from Michigan, with just .23% from Illinois (18 Illinois-based donors total).  The Center’s strongest ties to Illinois consisted of two donations totaling $270,000 from an Illinois-based foundation and an interactive website which accepts donations, although none have come from Illinois.  The Court previously held that these contacts did not create general jurisdiction.* 

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N.D. Ill. 2008 Joint Trial Call

Posted in Legal News

Conspiracy Claim Based Solely on Trade Secrets Preempted by ITSA

Posted in Jurisdiction

Abanco Int’l., Inc. v. Guestlogix Inc., __ F. Supp.2d __, 2007 WL 1492928 (N.D. Ill. May 21, 2007) (Bucklo, J.).

Judge Bucklo dismissed plaintiff’s conspiracy claim but not its unjust enrichment and tortious interference claims, holding that the former was preempted by the Illinois Trade Secret Act ("ITSA").  Plaintiff alleged that it entered a business relationship with defendant, supported by a confidentiality agreement (the "Agreement").  The parties were working together to supply airlines with electronic "buy-on-board" systems that would allow passengers to pay for drinks and other in-flight purchases with credit cards.  Plaintiff alleged that, based upon the Agreement, it provided defendant confidential, trade secret information about its buy-on-board system (the "Abanco System") and that with defendant’s support, plaintiff entered negotiations to provide the Abanco System to third party American Airlines.  But after the parties’ relationship soured, American Airlines allegedly ended negotiations with plaintiff and entered an agreement with defendant for a buy-on-board system.  Plaintiff then filed suit against defendant alleging trade secret misappropriation, breach of the Agreement, unjust enrichment, tortious interference and conspiracy.  The Court held that plaintiff’s unjust enrichment and tortious interference claims were not preempted by ITSA because they were based upon information protected by the Agreement in addition to plaintiff’s alleged trade secrets.  Specifically, plaintiff alleged that it gave defendant information "including information that was confidential, non-public, and proprietary and which constituted Abanco trade secrets." (emphasis added by the Court).  But plaintiff’s conspiracy claim was based solely upon defendant’s and American Airline’s use of information obtained from Abanco "constitut[ing] trade secrets belonging to Abanco."  Because Abanco did not claim the conspiracy used any information other than its trade secrets, the conspiracy claim was preempted.

Court Grants Summary Judgment of Infringement & Denies Invalidity

Posted in Summary Judgment

Vanguard Prods. Group, Inc. v. Diam USA, Inc., No. 05 C 1323, Slip Op. (N.D. Ill. May 16, 2007) (Bucklo, J.).*

Judge Bucklo granted plaintiffs summary judgment of infringement and denied defendants summary judgment of invalidity.  The Court first construed the two claim terms at issue — "electrically coupled" and "via the modular connector."  In both cases, the Court adopted the plaintiffs’ construction after a detailed review of the intrinsic and extrinsic evidence.  Because neither term was in the original application or appears in the specification, the intrinsic evidence focused on the use of the terms within the claims.  Defendants also attempted to use claim language from a parent application to support their constructions, but the Court held that the prosecution of a term in a parent application generally does not limit different terms in its progeny.  In the instant case, the Court found that the parent application had used the broader term "electrical connection" instead of "electrically coupled" which weighed against defendants’ construction.  Having ruled in plaintiffs’ favor on the claim construction, the Court held that defendants’ products infringed the asserted claims of plaintiffs’ patents.  And the Court held that defendants’ asserted prior art did not anticipate plaintiffs’ patents.

*  Because I beat Westlaw on this one, you can access a copy of the Court’s opinion here.  Please note that the Court issued a subsequent order modifying the opinion by deleting footnotes three and four, which were not intended to be part of the opinion.