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.
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:
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:
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.
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.
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.
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.
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.
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:
The Court also awarded discovery-related fees and costs pursuant to Fed. R. Civ. P. 26(b)(4)(E):
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.
Dynamic Fluid Control (PTY) Ltd. v. International Valve Mfg., LLC, No. 10 C 7555, Slip Op. (N.D. Ill. May 11, 2011) (Darrah, J.).
Judge Darrah denied defendants’ Fed. R. Civ. P. 12(b)(6) motions to dismiss in this patent and Lanham Act case involving air-release valves for water and sewage pipes, and plaintiff Dynamic Fluid Control’s ("DFC") VENT-O-MAT mark.
Trademark Infringement
The fact that DFC’s related entity DFC Water (Pty) Ltd. was the trademark registrant not DFC did not require dismissal. The terms "applicant" and "registrant" are read to include predecessor and future assignees of the mark.
Trade Dress Infringement
DFC was not required to specifically identify the elements of its trade dress in the complaint. DFC’s general statement that its trade dress consisted of distinctive shape, contours . . . and color scheme" was sufficient.
Unfair Competition
Because DFC’s unfair competition claim was of the likelihood of confusion type, not the false advertising type, DFC was not required to meet Fed. R. Civ. P. 9(b) pleading standards. As a result, while DFC’s allegations were "rather broad and somewhat ambiguous" they met the notice pleading standards. Defendants were on notice that DFC believed that customers were likely to be confused by defendants’ use of the VENT-TECH mark and alleged use of DFC’s trade dress.
The Court also noted that the Illinois Uniform Deceptive Trade Practices Act ("DTPA") codified unfair competition so it was unclear what limited exception DFC’s state unfair competition claim might fall into, but the Court allowed the claim to remain.
Deceptive Trade Practices Act
Once again, because DFC’s DTPA claim was based upon likelihood of confusion, heighted pleadings standards were not required. And DFC’s claim met the standard, as did its Lanham Act claims.
Illinois Trade Secrets Act
The Court held that DFC need not identify specific trade secrets that were allegedly misappropriated. DFC’s general list of trade secret categories were sufficient to put defendants on notice.
Unjust Enrichment
Unjust enrichment is not a stand alone claim in Illinois. But it can be brought, although it is dependent upon other claims.
Pegasus Airline Group LLC
The individual defendants argued that there was no such entity as Pegasus Airline Group LLC ("PAG"). But as PAG was allegedly a limited liability company, not a corporation, defendant’s argument that PAG was not incorporated was irrelevant. And defendant’s only evidence that PAG did not exist came in its reply – too late. Finally, DFC’s failure to prove service did not effect the validity of service.
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.
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:
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.
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.
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.
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.
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.
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."
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.
Laches
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.
SPSS Inc. v. Nie, No. 08 C 66 (N.D. Ill.) (Darrah, Jr.).
The parties recently settled this trademark dispute shortly before trial. For more on the parties’ history and the settlement, click here for Chicago Tribune reporter and Chicago Law blogger Ameet Sachdev’s reporting on the case in the Tribune, and click here for more coverage of the case in the Blog’s archives.
SPSS Inc. v. Nie, No. 08 C 66, Slip Op. (N.D. Ill. Aug. 19, 2009) (Darrah, J.).*
Judge Darrah granted plaintiff SPSS’s motion to strike defendants’ jury demand on their counterclaim. Defendants’ claims for an injunction and destruction of items bearing the trademark were equitable and, therefore, not triable by a jury. And defendants’ claim for attorney’s fees is also not triable by a jury.
The remaining claims for an accounting of SPSS’s profits and a trebling of actual damages could be legal claims warranting a jury trial, but defendants had repeatedly characterized their claims as equitable unjust enrichment claims. And defendants could not claim actual damages from a breach of contract claim because the license that governed the parties’ relationships was royalty-free. Defendants’ counterclaims were, therefore, equitable and not triable to a jury.
* Click here for more on this case in the Blog’s archives.
WMH Tool Group, Inc. v. Woodstock Int’l, Inc., No. 07 C 3885, Slip Op. (N.D. Ill. Apr. 8, 2009) (Darrah, J.).
Judge Darrah granted in part defendants’ motion for summary judgment as to plaintiff’s Lanham Act claims related to plaintiff’s trademark for white exteriors applied to woodworking and metalworking machines. Defendants sought summary judgment based upon the fact that their products were green and tan, and that plaintiff’s counsel admitted that green and tan machines did not infringe plaintiff’s trademark white color. But the Court held that summary judgment was not appropriate even if plaintiff admitted the green and tan products did not infringe because the parties disputed which of the products were green and tan and whether defendants also sold green and white products. Additionally, the Court held that there was a question of fact as to whether the alleged green and white products infringed plaintiff’s trademarks. The Court did, however, grant summary judgment as to plaintiff’s dilution claim because plaintiff did not respond to the summary judgment arguments.
SPSS Inc. v. Nie, No. 08 C 66, Slip Op. (N.D. Ill. Apr. 2, 2009) (Darrah, J.).
Judge Darrah denied the parties’ cross-motions for summary judgment. Plaintiff SPSS sought a declaratory judgment that defendants, SPSS’s founders and former officers, were estopped from asserting any rights pursuant to the parties’ Trademark Agreement. Defendants countersued for trademark infringement. While still officers of SPSS, defendants entered a Trademark Agreement with SPSS by which defendants gave SPSS rights to use the SPSS trademark. Defendants argue that SPSS’s continued use of the SPSS mark is an infringement. SPSS argued that it owns the mark and, as proof, cited various documents signed by a defendant when SPSS went public. In those documents, defendants allegedly made assurances that SPSS owned its trademarks and otherwise failed to disclose the Trademark Agreement.
The Court denied plaintiff’s summary judgment motion because the parties disputed defendant’s state of mind when the documents at issue were signed. Because estoppel required a finding as to defendant’s intent when he signed the documents, summary judgment was not appropriate. Similarly, the Court denied the parties’ cross-motions regarding SPSS’s trademark infringement claim. There were factual disputes regarding defendant’s conduct during the public offering, which party made the first sale using the SPSS mark, and SPSS’s knowledge of the Trademark Agreement.
Edge Capture L.L.C. v. Lehman Bros. Holdings, Inc., No. 08 C 24112, Slip Op. (N.D. Ill. Aug. 28, 2008) (Darrah, J.).
Judge Darrah denied defendants’ motion to dismiss plaintiffs’ patent complaint and defendants’ motion to bifurcate invalidity and enforceability from liability and damages issues. Plaintiffs’ complaint was sufficient for the Fed. R. Civ. P. 8(a) notice pleading standards. It pled ownership of a patent to a trading system and infringement by defendants “by making, selling, and using [the device] embodying the patent.” (brackets in the opinion). Plaintiffs were not required to plead infringement by specific devices.
While the Court had broad discretion to bifurcate issues and to stay discovery on the bifurcated issues, it was not warranted in this case because defendants did not meet their burden of proof. While bifurcating would significantly speed resolution if defendants’ invalidity or inequitable conduct arguments succeeded, bifurcation could significantly delay the case should defendants lose their invalidity and inequitable conduct arguments. Because defendants had not proven that they were likely to succeed, the Court denied the motion to bifurcate.