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Tag Archives: Darrah

Patent Claims Dismissed on Rule 12(b)(6) for Non-Infringement

Posted in Pleading Requirements

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 that Nalco sufficiently pled use, not just an offer to sell or a sale, of the patented method.  But Nalco did not plead a plausible infringement claim.  Nalco’s patent sought a method for treating flue gas during coal combustion.  But defendants accused Chem-Mod Solutions method involving injecting additives into coal pre-combustion.  Therefore, claim construction was not necessary to hold that Nalco had not pled direct infringement.  Because Nalco had not pled direct infringement, its indirect infringement claims also failed.  The Court granted Nalco thirty days to amend its complaint, if it could pursuant to Fed. R. Civ. P. 11.

Failure to Make Arguments to Magistrate Requires Reversal of Recomendation

Posted in Damages, Discovery

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 recommended limiting damages discovery to the date of the complaint forward, but his recommendation was clearly erroneous because neither party advanced its respective patent marking argument before Judge Mason.  In light of that and based upon Velocity Patent’s claim that neither it nor its predecessors made a product that could have been marked, it need not plead marking, the Court ordered past damages discovery include the period six years before filing of the complaint.

Similar Claims Do Not Alone Warrant Joinder

Posted in Pleading Requirements

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 karaoke discs. 

Plaintiff Slep-Tone sufficiently pled its trademark claims by pleading that it owned the SOUND CHOICE marks and that defendants display the marks in advertising to garner the “quality and superiority” associated with SOUND CHOICE.  Slep-Tone similarly sufficiently pled Lanham Act unfair competition by alleging that defendants used counterfeit karaoke discs in ways likely to confuse customers and that Slep-Tone was harmed by these actions. 

Fed. R. Civ. P. 20(a)(2) joinder of claims requires that joint or several relief is sought against defendants arising from the same transaction and that there be a common question of law or fact.  Similarlity of claims is not enough.  In this case, Arrowhead and the other defendants were all accused of similar acts — using counterfeit karaoke discs — but otherwise the parties were unrelated.  The Court, therefore, dismissed Arrowhead with leave to refile a separate case against Arrowhead.

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.

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.

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.

Reconsideration Requires New Arguments or Facts

Posted in Claim Construction

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.  Even the new construction relied upon old arguments.  The Court, therefore, denied the motion. 

Patent Protective Order Will Not be Amended Absent Showing of Specific Reasons

Posted in Local Rules

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 to meet its burden:

  • SICO offered general statements of potential competitive injury, but offered no specific information the disclosure of which would injure SICO.
  • SICO offered no examples of information it felt needed to be withheld.
  • SICO did not demonstrate that plaintiff AmTab’s counsel was engaged in competitive decision making.
  • AmTab’s outside counsel were not involved in marketing, product design, production, scientific research or pricing decisions.

Court Construes Terms in Folding Table Patent Case

Posted in Claim Construction

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 cross section mating with the support mount” was construed as “a seat post with an unvarying or nearly unvarying cross section for the entire length of the seat post mating with the seat mount.”
  • “An at least substantially vertical extent of the seat post having a noncircular cylindrical surface” was construed as “the portion of the seat post that is vertical or nearly vertical has a noncircular cylindrical shape for the entire length of that portion.”
  • “[A]t least partially inserted into the other noncircular cylindrical surface” did not require construction, its ordinary meaning was clear.
  • “[A]ligned non-circular cylindrical surfaces” did not require construction, its ordinary meaning was also clear.

Knowledge for Indirect Infringement May be Pled Based Upon Original Complaint

Posted in Pleading Requirements

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 plaintiff Cascades Computer Innovations (“Cascades”) did not sufficiently plead infringement of independent claim 15 of the patent in suit.  Cascades’ allegations that defendant used “the code in the manner required by claim 15” were sufficient.  It both complied with Form 18 (the form patent complaint accompanying the Federal Rules of Civil Procedure) and with the Twombly/Iqbal plausible pleading standard, which is satisfied by Form 18.

Regarding Cascades’ contributory infringement claims, defendant sought to hold Cascades to too high a standard.  Whether or not defendant’s accused products in fact have non-infringing use, at the pleading stage it was sufficient that Cascades pled that there were no infringing uses.  And Cascades’ allegations that defendant had knowledge of its patent in suit at least since filing of the original complaint was sufficient to show intent.

Lack of Proof Dooms Prosecution Bar

Posted in Local Rules

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 documents may not prosecute patents for the attorney’s clients for, in this case, two years.  SICO did not meet its burden, failing to show a “clearly defined and serious injury” as required by the law.  In fact, SICO identified no documents or information that it was particularly concerned about disclosing.  And SICO did not show how any harm would result from any specific disclosure or even a general disclosure.  Furthermore, there was no evidence that plaintiff AmTab’s counsel was engaged in competitive decision-making.  And, SICO did not seek a ban as to AmTab’s outside counsel whose firm also prosecuted patents for AmTab.

Pro Se Defendant Granted Leeway re: Local Rule 56.1

Posted in Summary Judgment

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 in plaintiff’s Local Rule 56.1 statement of facts as a Local Rule 56.1 response, but treated other, uncontested facts as admitted.  Plaintiff failed to offer any proof of her copyright registration or her application for registration.  But the Court took judicial notice of plaintiff’s registered copyright that the Court found on the Copyright Office website.

Having found that plaintiff had a registered copyright, the Court turned to defendant’s allegedly infringing use.  Plaintiff, however, offered no evidence of defendant’s unauthorized use.  Plaintiff hired defendant to edit her manuscript and defendant did so.  Because defendant’s use was related to editing the manuscript, there was no infringing use.  And as the Court lacked diversity jurisdiction over the state law claims, the Court dismissed them without prejudice to refile them in state court.

Lack of Substantive Allegations Requires Dismissal

Posted in Jurisdiction

Waits v. Microsoft Corp, No. 11 C 7486, Slip Op. (N.D. Ill. Feb. 8, 2012) (Darrah, J.).

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.

Common Use of Bit Torrent Sufficient for Joinder

Posted in Pleading Requirements

Hard Drive Prods., Inc. v. Does 1-55, No. 11 C 2798, Slip Op. (N.D. Ill. Oct. 21, 2011) (Darrah, J.).

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. 

Both Parties Awarded Expert Witness Fees

Posted in Trial

Neutral Tandem, Inc. v. Peerless Network, Inc., No. 08 C 3902, Slip Op. (N.D. Ill.) (Darrah, J.).

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.

Jurisdictional Facts Regarding Website Activity Required Before Default

Posted in Jurisdiction

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.

Northern District of Illinois Patent Program Begins

Posted in Legal News

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
  • Defendant Cannot Show Knowledge of Prior Art Necessary for Inequitable Conduct

    Posted in Legal News

    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.

    Proof of Paying Sales Tax and Tracking Sales are not Enough Control for Trademark Licensing

    Posted in Legal News

    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.

    Patent Case Transferred to District With Witnesses and Documents

    Posted in Jurisdiction

    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.

    Court Awards Costs to Prevailing Party

    Posted in Trial

    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. 

    Summary Judgment Denied for Failure to Comply With Rule 56.1 Statement of Facts

    Posted in Legal News

    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. 

    Letter Sent Outside Illinois Cannot Create Jurisdiction

    Posted in Jurisdiction

    Alta Mere Indus., Inc. v. DBC Window Tinting, Inc., No. 10 C 266, Slip Op. (N.D. Ill. May 6, 2010) (Darrah, J.).

    Judge Darrah granted defendant Impact’s Fed. R. Civ. 12(b)(2) motion to dismiss plaintiff Alta Mere’s Lanham Act claims regarding its marks related to automotive window tinting and alarm systems. Impact operated a local Texas business and had no other identified Illinois contacts. Alta Mere argued that the Court had specific jurisdiction over Impact because of Impact’s interactions with other defendants who were Alta Mere franchisees, as well as two letters allegedly sent to Impact warning that a franchise agreement governing defendant Cader’s use of the Alta Mere marks were governed by Illinois law.

    The Court considered jurisdiction over each defendant separately and, therefore, did not consider the other defendants’ Illinois contacts in analyzing jurisdiction over Impact. Impact alleged that it never received Alta Mere’s letters. But even if Impact had received them, correspondence sent to a defendant outside the forum could not alone create jurisdiction. The letters were "random, fortuitous, or attenuated contacts."

    Four Year Delay Creates Laches in Lanham Act Case

    Posted in Legal News

    AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Mar. 8, 2010) (Darrah, J.).

    Judge Darrah, after a bench trial, held that defendant’s use of his Oil Zone and Wash Zone marks did not create a likelihood of confusion with plaintiff AutoZone’s Auto Zone trademarks.*

    Likelihood of Confusion


    Only one of the seven likelihood of confusion factors weighed in AutoZone’s favor – the strength of AutoZone’s mark. But the strength of the mark was outweighed by the dissimilarity of both the marks and the services offered by the parties. Apart from the common use of the word “zone” there was little similarity between plaintiff’s AutoZone and defendant’s Oil Zone/Wash Zone. And while AutoZone sells auto parts, defendant performs automatic services.




    AutoZone’s four-year delay exceeded the analogous Consumer Fraud and Deceptive Business Practices Act three-year statute of limitations. The fact that defendant’s alleged infringement “fell through the cracks” and was not acted on for four years, was not a sufficient excuse for the delay. And defendant was prejudiced by AutoZone’s delay based upon defendant’s four years of advertising the Oil Zone/Wash Zone names.


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