Dyson, Inc. v. SharkNinja Operating LLC, No. 14 C 779, Slip Op. (N.D. Ill. Nov. 17, 2015) (Darrah, J.). Judge Darrah denied defendants’ (collectively “SharkNinja”) motion for reconsideration of the Court’s denial of its motion for summary judgment of noninfringement in this design patent case. SharkNinja sought reconsideration arguing that the issues of whether the … Continue Reading
World Trade Centers Assoc., Inc. v. World Trade Ill., No. 14 C 6237, Slip Op. (N.D. Ill. Jun. 15, 2015) (Darrah, J.). Judge Darrah granted plaintiff World Trade Centers Association (“WTCA”) contempt motion in this Lanham Act dispute involving WTCA’s World Trade Center marks. In a previous suit, the parties entered a consent decree in … Continue Reading
Nalco Co. v. Chem-Mod, LLC, No 14 C 2510, Slip Op. (N.D. Ill. Feb. 4, 2015) (Darrah, J.). Judge Darrah granted defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Nalco’s patent infringement regarding a method for reducing mercury emissions from coal gas by injecting a bromide compound into flue gas. The Court held … Continue Reading
Velocity Patent, LLC v. Audi of Am., Inc., No. 13 C 8418, Slip Op. (N.D. Ill. Dec. 11, 2014) (Darrah, J.). Judge Darrah held that Judge Mason’s discovery report and recommendation was clearly erroneous, and ordered past damages discovery be produced going back six years before the complaint filing in this patent case. Judge Mason … Continue Reading
Slep-Tone Ent. Corp. v. Roberto, No. 12 C 5750, Slip Op. (N.D. Ill. Oct. 22, 2013) (Darrah, J.). Judge Darrah denied defendants’ (collectively “Arrowsound”) Fed. R. Civ. P. 12(b)(6) motion to dismiss, but granted Arrowsound’s motion to sever. The Court, therefore, dismissed Arrowsound without prejudice for improper joinder in this trademark dispute regarding SOUND CHOICE … Continue Reading
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 … Continue Reading
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 … Continue Reading
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 … Continue Reading
AmTab Mfg. Corp. v. SICO Inc., No. 11 C 2692, Slip Op. (N.D. Ill. Aug. 13, 2012) (Darrah, J.). Judge Darrah denied plaintiff AmTab’s motion for reconsideration of the Court’s prior claim construction order. While claim construction is an organic process that can be revised throughout a case, AmTab did not present any new arguments. … Continue Reading
AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. June 19, 2012) (Darrah, J.). Judge Darrah denied defendants’ (collectively “SICO”) request to modify the Local Patent Rules standard protective order to include a prosecution bar. While a prosecution bar could be appropriate, SICO failed to provide the specific facts necessary … Continue Reading
AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. March 29, 2012) (Darrah, J.). Judge Darrah construed the disputed terms of the patent in suit related to a stool attaching to a folding table. Of particular note, the Court held as follows: “An elongate seat post having a substantially uniform … Continue Reading
Cascades Computer Innovations, LLC v. Sony-Ericsson Mobile Comms. (USA) Inc., No. 11 C 7223, Slip Op. (N.D. Ill. Apr. 18, 2012) (Darrah, J.). Judge Darrah denied defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss in this patent case involving simplifying the process by which computer software deals with errors or exceptions. Defendant agreed that … Continue Reading
AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. Jan. 19, 2012) (Darrah, J.). Judge Darrah denied defendant’s (collectively “SICO”) motion to amend the Local Patent Rule Appendix B protective order to include a prosecution bar – a limitation that any counsel with access to a category of its opponent’s … Continue Reading
Turina v. Crawley, No. 10 C 4292, Slip Op. (N.D. Ill. Feb. 16, 2012) (Darrah, J.). Judge Darrah granted pro se defendant summary judgment as to plaintiff’s copyright claims and dismissed plaintiff’s remaining state law claims for lack of jurisdiction. As an initial matter, the Court treated those portions of defendant’s response that disputed facts … Continue Reading
Judge Darrah denied plaintiff's application to proceed in forma pauperis and dismissed plaintiff's complaint for failure to state a claim. Courts are required to dismiss a complaint when plaintiff seeks in forma pauperis status along with a complaint that fails to state a claim. Plaintiff's complaint appears to sound in patent, trademarks and copyright. But it was "devoid of any substantive allegations" and, therefore, had to be dismissed.
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Judge Darrah granted in part Does defendant's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Hard Drive Production's ("HDP") complaint accusing Does of infringing HDP's copyrighted video via BitTorrent. While HDP had not received its copyrights registration, it was sufficient for HDP's claim in the Seventh Circuit that HDP sought registration before filing suit.
The Court did, however, dismiss HDP's civil conspiracy claim, without prejudice to replead, for failure to plead agreement between the Does to infringe. Finally, HDP's claims that the Does infringed HDP's copyright via BitTorrent were sufficient to satisfy the Fed. R. Civ. P. 20(c)(2) joinder standard. The Court noted that its joinder holding was consistent with other Northern District of Illinois decisions, although the Northern District of California held that the allegations did not meet the joinder requirements.
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Judge Danah awarded defendants (collectively "Peerless") certain of its costs after holding that Peerless was the prevailing party in this patent infringement case. While Peerless lost its inequitable conduct claim as well as its state law claims, Peerless was the prevailing party because it won summary judgment of noninfringement and invalidity. Furthermore, the Court would not apportion the costs because Peerless only won on two of its nine claims. Pursuant to Fed. R. Civ. P. 54(d), the Court awarded Peerless the following costs:
Fees for service at the U.S. Marshall's rate of $55/hour.
Fees for transcripts at the expedited rates. The Court held Peerless was justified in expediting the transcripts in light of tight summary judgment deadlines and the preliminary injunction hearing in the case.
Printing and copying fees in light of the preliminary injunction proceedings and voluminous discovery.
The Court also awarded discovery-related fees and costs pursuant to Fed. R. Civ. P. 26(b)(4)(E):
Both sides' expert witness fees based upon a formula to account for reasonable deposition preparation time of three times the length of the deposition. Peerless received its expert fees related to noninfringement and invalidity. Plaintiff Neural Tandem was awarded its expert fees related to its inequitable conduct defense.
The Court also held that Local Rule 54.1 and its thirty day deadline for seeking costs did not apply to Rule 26(b)(4)(E) fee motions.
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Deckers Outdoor Corp. v. Does 1-55, No. 114 C 10, Slip Op. (N.D. Ill. May 24, 2011) (Darrah, J.)
Judge Darrah dismissed without prejudice plaintiff's motion for a default judgment in this Lanham Act case about the UGG mark. The Court held that it would not exercise personal jurisdiction over the Does based solely on interactive websites without additional facts as to whether the websites were aimed at Illinois.
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The patent pilot program started this month in the Northern District and across the country. The pilot program is a ten-year look at ways to handle patent cases more effectively. The main component of the pilot program is judges in pilot districts, including the Northern District, self-selecting as patent judges. Patent cases will continue to be randomly assigned to all Northern District judges. But when a non-patent judge is assigned a patent case that judge will have thirty days to order reassignment of the case. When reassignment is ordered, the case will be randomly reassigned to one of the patent judges. There will also be patent-related education and programs offered for the patent judges across the country.
One unanswered question about the pilot program remains: If a non-patent judge was assigned a patent case less than thirty days before the program kicked off on September 19, can the non-patent judge order the patent case reassigned pursuant to the pilot program? I have not seen it happen yet, but I suspect it could over the next week or two.
The Northern District issued the following list of judges who have self-selected as patent judges:
Chief Judge James F. Holderman
Judge Ruben Castillo
Judge John W. Darrah
Judge Gary S. Feinerman
Judge Virginia Kendall
Judge Matthew F. Kennelly
Judge Joan Humphrey Lefkow
Judge Rebecca R. Pallmeyer
Judge Amy J. St. Eve
Judge James B. Zagel
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Neutral Tandem, Inc. v. Peerless Network, LLC, No. 08 C 3402, Slip Op. (N.D. Ill. Dec. 2, 2010) (Darrah, J.).
Judge Darrah granted plaintiff Neutral Tandem summary judgment as to defendants' (collectively "Peerless Network") inequitable conduct claim. Peerless offered no clear and convincing evidence that the inventor knew of the allegedly withheld prior art, referred to as the "Phase II Order." The fact that the inventor was involved in the proceeding's from which the Phase II Order issued was not sufficient. Those proceedings lasted eleven years and resulted in thirteen orders. And the inventor testified that he did not remember the Phase II Order. Furthermore, similarities between a paragraph of the Order and a statement made during prosecution was not sufficient. Finally a petition filed with the FCC by the inventor referencing the Order was not sufficient because he testified it was written by his outside counsel and he had not reviewed the petition.
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Eva's Bridal Ltd. v. Halanick Enters., Inc., No. 07 C 1668, Slip Op. (N.D. Ill. Aug. 4, 2010) (Darrah, J.)
Judge Darrah granted in part defendants' (collectively "Halanick") motion to reconsider the Court's summary judgment decisions in this trademark dispute. Initially, the Court overturned its decision that Sarniti could not file a proper claim in light of the Court's earlier decision allowing the same claim.
The Court also reversed its decision regarding plaintiffs' trademark claims. Plaintiffs exercised new control over defendants' use of the marks. Proof of plaintiff paying sales tax and keeping tabs on sales were insufficient. As such, plaintiffs' license is a "naked license".
Finally, the Court declined to exercise supplemental jurisdiction over the state law claims.
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MPH Techs. Oy v. Zyxel Coms. Corp., No. 10 C 684, Slip Op. (N.D. Ill. Jul. 16, 2010) (Darrah, J.).
Judge Darrah granted defendants' 28 U.S.C. § 1404(a) motion to transfer this patent case to the Northern District of California. Venue was proper in both districts. Plaintiff's choice of forum was only given slight weight because the Northern District of Illinois was not plaintiff's home forum and had only a weak connection to the case. The convenience of witnesses weighted in favor of transfer. All of defendants' employee witnesses were in the Northern District of California and, more importantly, half of the non-party witnesses were in the Northern District of California. Three of plaintiff's four witnesses were in its home country - Finland. Access to proofs is given little deference in light of wide-spread use of digital discovery, but still leaned slightly in favor of transfer because defendants' documents were largely in California.
The situs of material events was neutral because it is largely irrelevant in patent cases. The convenience of parties weighed in favor of transfer. Plaintiff's inconvenience in traveling from Finland to Chicago or to Northern California was not significantly different.
The interests of justice weighed slightly in favor of transfer because defendants' employees had a greater interest in the case than Illinois citizens did. Otherwise, the Courts were similarly capable of handling patent cases and had comparable times to resolution, with only a few months difference in each category.
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AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Jun. 9, 2010) (Darrah, J.).
Judge Darrah granted in part defendants' bill of costs after defendants prevailed in a trademark infringement trial - click here for much more on the case in the Blog's archives. The Court awarded deposition transcript fees, but only up to the then applicable Northern District costs - $3.30 per page for an original transcript and $.83 per page for a copy. Because defendants did not show they were reasonably necessary, the Court did not award costs for condensed transcripts, word indexes, or delivery charges.
The Court awarded costs for daily trial transcripts because they were necessary for direct and cross-examinations during trial and post-trial findings of fact. The Court awarded photocopying costs at $.10 per page only to the extent defendants showed the purposes of the copying. Finally, the Court awarded the costs of making the defendants' trial exhibits, excluding shipping costs.
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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.
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