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Tag Archives: Coleman

Trading Technologies: New Expert Opinions Doomed by Lack of Inclusion in LPR Final Contentions

Posted in Experts, Local Rules

The Court also struck some, but not all, of the experts’ opinions based upon trader usage. Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill. Sep. 10, 2014) (Coleman, J.).

Judge Coleman granted in part and denied in part defendants’ (collectively “CQG”) motion to strike portions of plaintiff Trading Technologies’ (“TT”) expert reports that allegedly sought to introduce theories and analysis not contained in TT’s Final Infringement Contentions (“FIC”), which were tendered in November 2013. 

For certain independent claims, TT failed to supplement its FIC with manual re-centering elements as required by the Federal Circuit’s and the Court’s claim constructions.  It was not enough that dependent claims contained an identification of the manual re-centering elements in the accused products and that the “new” arguments for the independent claims were of the same scope.  The Court, therefore, struck TT’s experts new opinions as to those limitations.

TT did, however, sufficiently disclose its argument regarding modifying .ini files, even though in its FIC it refers to changing .ini files instead of modifying them.  The Court, therefore, denied the motion as to those theories. 

TT did not sufficiently disclose its copying arguments related to willfulness.  So, those arguments were struck.  TT was, however, allowed to have its experts testify as to certain deficiencies in CQG’s noninfringement opinion letters, although not that the letters were a basis for willful infringement.

The Court struck TT’s doctrine of equivalents theory regarding disabling the Market Window because it was not disclosed in the FIC.  TT’s argument regarding the state of the DOM Grid, however, was merely a refinement of an argument already in TT’s FIC.  So, the arguments were allowed.  The Court also struck an argument based upon the use of a ChartTrader and Price Hold features together because it was not sufficiently explained.

The Court also struck some, but not all, of the experts’ opinions based upon trader usage.

 

CLE: IPLAC 2014 Federal Judicial Panel

Posted in Legal Seminars

On March 5, 2014 from 5:30 to 7:30, the Intellectual Property Law Association of Chicago (IPLAC) is hosting its annual Federal Judicial Panel at the Chicago-Kent College of Law.  Margaret Duncan of McDermott, Will & Emery will moderate a panel consisting of N.D. Illinois Judges Coleman, Darrah, and Kendall.  The panel will discuss:

  • N.D. Illinois 2013-2014 IP litigation trends
  • The Supreme Court’s IP docket
  • Patent Office litigation and its effect on district courts
  • Electronic discovery

The panel costs $30 (members) or $35 (non-members).  Register here.

Costs Awarded to Prevailing Party

Posted in Trial

DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 C 1531, Slip Op. (N.D. Ill. June 20, 2013) (Coleman, J.).

Judge Coleman awarded defendants (collectively “3D Systems”) approximately $140K in fees and costs as the prevailing party.  Of particular note, the Court held as follows:

  • The Court awarded witness fees for days testifying, but not days traveling.
  • The Court awarded subsistence costs, up to the allowed $71/day.
  • The Court awarded Bates-labeling costs, but not costs for confidentiality branding.
  • 3D Systems was allowed to recover for two copies of each deposition exhibit, but not the full four that it made.
  • 3D Systems was allowed to recover for three copies of summary judgment motions because 3D Systems had encountered trouble downloading multiple copies of its briefs.
  • 3D Systems did not recover for rough drafts or ASCII versions of deposition transcripts.
  • Video synchronization costs were not awarded because there were not sound or comprehension problems that required putting the text on the screen.

Bit Torrent Doe Allowed to Proceed Anonymously

Posted in Federal Rules

Malibu Media, LLC v. Reynolds, No. 12 C 6672, Slip Op. (N.D. Ill. Mar. 7, 2013) (Kendall, J.).

Judge Kendall:  1) denied defendant Doe 15′s motion to dismiss; 2) denied Doe 15′s motion to quash the subpoena of Doe 15′s internet provider; 3) granted Doe 15′s unopposed motion to remain anonymous; and 4) severed each of the 15 defendants, except for Doe 15 in this Bit Torrent copyright case.  The Court leads off with a very good description of Bit Torrent and how a “swarm” operates.  It is worth reading for anyone that is dealing with these cases. 

Motion to Dismiss

The fact that plaintiff Malibu Media filed certain copyrights as works for hire, although Malibu Media was not yet formed when those works were made (and therefore they could not be works for hire) was a mistake that Malibu Media had already taken steps to correct, and it did not require dismissal of Malibu Media’s copyright claims.

Motion to Quash

Doe 15 did not have standing to oppose Malibu Media’s subpoena to Doe 15′s internet service provider, absent a privilege claim.  But regardless of standing, Doe 15 had not made a showing that it would face an undue burden based upon the subpoena. 

Motion to Proceed Anonymously

Malibu Media did not oppose Doe 15 remaining anonymous, at least through the close of discovery.  And the Court agreed that allowing Doe 15 to proceed anonymously would prevent Malibu Media from forcing settlement based upon Doe 15′s potential embarrassment from being accused of illegally downloading pornography.  The Court, therefore, allowed Doe 15 to proceed anonymously at least until dispositive motions were decided.

Motion to Sever

The Court held that in order to be joined in the same case, defendants need not just have been members of the same swarm — which can last weeks or months depending upon the members of the swarm.  Instead, the defendants would have to have been members of the same swarm that downloaded the accused file at the same time.  Because none of the defendants, which were all part of the same swarm, were part of the same swarm at the same time, the Court severed each of the defendants, except Doe 15.  While the Court would normally retain the first defendant, in this instance the Court retained the last because it had decided several motions related to Doe 15.

Passive Website Alone Cannot Create Jurisdiction

Posted in Jurisdiction

Sage Prods, Inc. v. Primo, Inc., No. 12 C 3620, Slip Op. (N.D. Ill. Mar. 5, 2013) (Coleman, J.).

Judge Coleman granted defendant Primo’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trade dress case involving a boot designed to cushion and prevent heel ulcers.  Primo did not avail itself of Illinois by soliciting sales in Illinois or regularly selling to Illinois customers.  Primo did contract with a third party sales rep, but that rep only made calls to two Illinois customers after general conversations at a Las Vegas trade show.  And neither Illinois entity returned the phone calls.  And operating a website that was accessible in, but did not target, Illinois was not sufficient to create jurisdiction.  Finally, Primo’s website was passive.  It did not provide any forms for purchasing or the ability to directly purchase the accused boot.

 

 

Illinois Witnesses Not Sufficient to Retain Case Where Michigan Witnesses Provide Same Proof

Posted in Federal Rules, Jurisdiction

Addiction & Detoxification Institute, LLC v. Rapid Drug Detox Center, No. 11 C 7992, Slip Op. (N.D. Ill. Mar. 11, 2013) (Coleman, J.).

Judge Coleman granted defendant Rapid Detox’s 28 U.S.C. § 1404(a) motion to transfer this patent infringement case to the Eastern District of Michigan.  While Rapid Detox had a website and had patients from Illinois, the website did not specifically target Illinois residents and Rapid Detox’s treatments all occurred in Michigan.  Furthermore, to the extent that patients became necessary witnesses, there was no reason plaintiff could not use Michigan patients instead of the Illinois patients that it identified in the motion papers. 

 

 

Court Does Not Dismiss “Me Too” Patent Counterclaims

Posted in Pleading Requirements

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

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

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

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

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

Knowledge From Date of Complaint Sufficient for Indirect Infringement

Posted in Pleading Requirements

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

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

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

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

Limited Jurisdictional Discovery Ordered Despite Overbroad Requests

Posted in Jurisdiction

Addition & Detoxification Institute, LLC v. Rapid Drug Detox Center, No. 11 C 7992, Slip Op. (N.D. Ill. Oct. 11, 2012) (Coleman, J.).

Judge Coleman granted in part plaintiff ADI’s motion to compel limited jurisdictional discovery in this patent case.  ADI’s requests were overly broad and the Court accepted defendant’s declarations, but the Court ordered that defendant respond to limited additional interrogatories:

  • Identify customers by race and whether they reside in this district.
  • Provide a general statement of defendant’s worth to demonstrate its ability or lack thereof to litigate in this district.

Transfer Warranted Where All Parties are in Florida

Posted in Jurisdiction

Flava Works, Inc. v. Terry, No. 12 C 1884, Slip Op. (N.D. Ill. Oct. 11, 2012) (Coleman, J.).

Judge Coleman granted defendant’s motion to transfer this copyright and trademark infringement case to the M.D. Florida.  As an initial matter, defendant did not waive the issue of personal jurisdiction because the answer contested it.  While there was at least one witness and some documents in Illinois, defendant, much of plaintiff’s business and many of the documents were in Florida.  The Court, therefore, transferred the case to Florida.

Likelihood of Confusion Not Conducive to Summary Judgment

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.

No Injunction Where Products Are Sold in Different Channels

Posted in Legal News

Akoo Int’l, Inc. v. Harris, No. 10 C 1685 Slip. Op. (N.D. Ill. Sep. 9, 2011) (Coleman, J.). 

Judge Coleman denied plaintiff Akoo International (“AI”) a preliminary injunction to prevent rapper Clifford Harris from using the Akoo mark for his clothing line. The Court held that AI had not shown a sufficient likelihood of confusion:

  • AI’s advertising system was very different than Harris’ clothing line.
  • The parties sold in different channels.
  • There was no evidence that Harris began using the mark to confuse AI’s customers.

Base Allegations Do Not Warrant Veil Piercing

Posted in Pleading Requirements

Free Green Can, LLC v. Green Recycling Enterprs., LLC, No. 10 C 5764, Slip Op. (N.D. Ill. June 20, 2011) (Coleman, J.).

Judge Coleman granted the individual defendant Menas’ motion to dismiss the counterclaims against him and granted in part defendant Green Recycling Enterprises’ ("GRE") motion to dismiss plaintiffs’ (collectively "FGC") counterclaim in this trademark case regarding recycling can systems with integral advertising.

The Court’s significant holdings included: 

  • GRE did not plead sufficient facts showing Menas was PGC’s alter ego that would warrant piercing the corporate veil. GRE only pled that Menas made significant investment in FGC and that Menas directed FGC without any factual support or detail.
  • GRE’s deceptive trade practices act claims were all based upon actions taken before Menas invested. So, Menas could not be liable for them. 

The holdings with respect to FGC’s motion were all related to Nebraska causes of action. So, I am not addressing them here. 

Trading Technologies: Court Quashes Subpoena

Posted in Discovery

Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Jul. 19, 2011) (Coleman, J.).

Judge Coleman granted declaratory judgment plaintiff Rosenthal Collins Group’s ("RCG") motion for protective order and to quash third party subpoenas as to third party CQG. The subpoenas sought information regarding RCG’s use of CQG’s trading software. The Court previously entered judgment against RCE and the only issue left in the case is a January 23, 2012 damages trial. But the judgment and the damages trial were limited to RCG’s use of its software, not other third parties that have not yet been held to infringe, such as CQG’s software.

Court Upholds $1M Sanction for Fabricated Prior Art

Posted in Discovery

Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. June 1, 2011) (Coleman, J.).

Judge Coleman denied plaintiff Rosenthal Collins Group’s ("RCG") motion to reconsider or clarify the Court’s February 23, 2011 Order entering defendants judgment in favor of declaratory judgment defendant Trading Technologies ("TT") and sanctioning RCG $1 million. While the discovery misconduct – which the Court described as "attempted fraud" – related to invalidity, it was appropriate to enter default judgment as to infringement because TT’s infringement case would have been "futile" if the "fabricated" evidence had been successfully used to invalidate the patents. Furthermore, RCG should not be allowed to benefit from the thwarting of its misconduct.

Finally, the Court’s sanctions were not criminal, they were made pursuant to Fed. R. Civ. P. 37 and the Court’s inherent powers.

False Marking Claim Dismissed for Generalized Pleading

Posted in Pleading Requirements

Simonian v. Astellas Pharma US Inc., No. 10 C 1539, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.).

Judge Coleman granted defendant Astella’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Simonian’s false patent marking claims for failure to meet the Fed. R. Civ. P. 9(b) heightened pleading standards, but did so without prejudice. The Court held that Simonian’s complaint contained "precisely the same" general allegations — a "sophisticated company" that "knew or should have known" of the expired patent — that the Federal Circuit rejected as deficient in BP Lubricants.

No Presumption of Irreparable Harm From Breach of a Non-Compete

Posted in Legal News

E.B.N. Enters., Inc. v. C.L. Creative Images, Inc., No. 09 C 6279, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.)

Judge Coleman granted in part plaintiff’s ("Fantastic Sams") preliminary injunction motion in this case involving a non-compete agreement related to a terminated Fantastic Sams hair salon franchise. The Court granted a preliminary injunction regarding Fantastic Sams’ operations manual which defendants were contractually required to return to Fantastic Sams. The Court denied the remainder of the requested injunction. Fantastic Sams alleged that defendant’s decision to operate a new salon at the same location breached the two-year requirement that defendants not operate a salon within five miles of the prior Fantastic Sams location. Fantastic Sams made an uncontested showing that defendants breached that agreement. But Fantastic Sams did not sufficiently show irreparable harm. There is no question of irreparable harm from breach of a non-compete agreement. Fantastic Sams did not ever show that another franchise wanted defendants’ territory. Finally, there was no evidence that defendants’ customers continued using defendants because of features unique to Fantastic Sams.

False Patent Marking Requires Particular Allegations That Each Defendant Marked

Posted in Pleading Requirements

Newt LLC v. Nestle USA, Inc., No. 09 C 4792, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.)

Judge Coleman denied defendants’ Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction, but dismissed the false patent marking case pursuant to Rule 12(b)(6) for failure to sufficiently plead intent to deceive. The Court held that plaintiff Newt had standing to sue without proof of particularized injury, citing Stauffer v. Brooks Bros., Inc., 619 F. 3d 1321, 1327 (Fed. Cir. 2010).

Newt alleged that defendant Graphic Packaging ("GPI") falsely marked the products and sold them to the customer defendants. GPI made no allegations that the customer defendants marked the accused products. The customer defendants were, therefore, dismissed.

Further, all defendants were dismissed because Newt only made generalized intent allegations — e.g., that defendants were "sophisticated companies." 

Finally, the Complaint was dismissed because Newt made only general allegations against all defendants, rather than particular allegations against each defendant.

Surviving – Prior Bankruptcy Does Not Preclude Pursuit of Music Royalties

Posted in Summary Judgment

Sullivan v. Jamison, No. 06 C 5240, Slip Op. (N.D. Ill. Mar. 8, 2011) (Coleman, J.).

Judge Coleman denied plaintiff’s motion for summary judgment that defendants’ counterclaims to music royalties from the group Survivor were stopped for failure to disclose them in bankruptcy petitions. In fact, both individual defendants had sufficiently identified their alleged rights to Survivor’s music royalties in their bankruptcy petitions or amendments thereto.

Infringement Claims Against Corporate Officers Require Active Participation

Posted in Pleading Requirements

Free Green Can, LLC v. Green Recycling Enters., LLC, No. 10 C 5764, Slip Op. (N.D. Ill. Jan. 28, 2011 (Coleman, J.).

Judge Coleman granted the individual defendants’ and Aslan Financial Group’s Fed. R. Civ. P. 12(b) motion to dismiss plaintiff Free Green Can’s trademark infringement and related state law claims. As an initial matter, the Court lacked subject matter jurisdiction as to all state law claims because while Free Green Can pled diversity of citizenship, it did not plead that the amount in controversy exceeded $75,000. Because Aslan Financial Group was only accused of state law claims, it was dismissed.

The federal trademark claims against the individual defendants were dismissed pursuant to Fed. R. Civ. P. 12(b)(6) because the individual defendants were accused of infringement based upon corporate acts of defendant Green Recycling Enterprises, of which each was an officer. But in order to state a claim for infringement, or any tort, by corporate officers or employees Free Green Can was required to allege each individual defendant had actively participated in the tortious acts. Because there were no such allegations, the infringement claims were dismissed.

New N.D. Illinois Judges Panel: Judge Coleman

Posted in Legal News

In late January, the Northern District’s six newest judges attended a Federal Bar Association* panel to offer insights into their practices and chambers. The recurring theme of the discussion was a call for civility: Civility in court. Civility in briefs. Civility in emails. Over the next several weeks, I will provide summaries of each judge’s comments and insights. This post (the sixth in the series) focuses upon Judge Coleman:

  • "Come prepared"
  • Do not argue when the Court is not expecting argument
  • Civility
  • Consent to magistrates
  • Often does not require argument of motions, but gives a ruling date
  • For arguments, she will often identify issues to be addressed
  • Arguments are 15-30 minutes, "tops."

Trading Technologies: Court Consolidates 2010 Cases

Posted in Local Rules

Trading Technologies, Inc. v. BGC Partners, Inc., No. 10 C 715, Slip Op. (N.D. Ill. Feb.3, 2011) (Kendall, J.).*

Judge Kendall consolidated plaintiff Trading Technologies’ ("TT") patent infringement cases that were filed in 2010 – Judge Coleman previously denied TT’s motions to consolidate the cases filed in 2005 with those filed in 2010. The Court held that the 2010 cases were sufficiently related pursuant to Local Rule 40.1. While the products were not identical and the asserted patents were not identical for each defendant, the accused products were similar and were all accused of infringing one or more of three of TT’s patent families. Additionally, consolidation would conserve substantial time and effort without causing delay.

The Court also ordered the parties to file a summary of all pending motions and discovery status.

Click here for much more on this case in the Blog’s archives.

Eye of the Tiger: Survivor Survives Motion to Dismiss

Posted in Pleading Requirements

Sullivan d/b/a Survivor v. Jamison, No. 06 C 5240, Slip Op. (N.D. Ill. Dec. 1, 2010) (Coleman, J.).

Judge Coleman denied counter-defendants’ (collectively "Survivor Music") Fed. R. Civ. P. 12(b)(6) motion to dismiss counter-plaintiffs’ breach of contract and related claims in this dispute over royalties due based upon the copyrighted songs of the band Survivor — Eye of the Tiger was one of their big hits. Although counter-plaintiffs were not signatories to the agreements from which the song royalties flowed, they were replacement members of Survivor and as such had agreed in writing to be bound by and enjoy the benefits of the agreements. As to Survivor Music’s statute of limitations claim, although the claim was older than five years, counter-plaintiffs did not discover it until less than five years before filing their counterclaims.

Trading Technologies: Court Denies Motion to Consolidate Sixteen Pending Cases

Posted in Local Rules

Rosenthal Collins Group, LLC v. Trading Technologies Int’l, Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Nov. 23, 2010) (Coleman, J.).

Judge Coleman denied plaintiff Trading Technologies’ ("TT") Local Rule 40.4 motion to consolidate TT’s sixteen pending patent cases,* involving nine patents. Initially, the Court noted that TT did not seek consolidation of all sixteen cases in a single case, but consolidation of the four remaining cases that TT filed in 2005, and separately the twelve cases TT filed in 2010. LR 40.4 requires that a motion to consolidate be filed in the lowest number case. So, while the instant case was the lowest number of the 2005 cases, it was not the lowest number 2010 case. As to the 2010 cases, therefore, the Court did not address consolidation. As to the 2005 cases, TT failed to show that the cases were sufficiently related — while they involved common patents, the accused products operated in "very different manner[s]." Furthermore, while Judge Moran previously coordinated discovery of all of the 2005 cases before the cases were reassigned, TT did not demonstrate that consolidating the 2005 cases would conserve resources.

Click here for much more on these cases in the Blog’s archives.