NanoChem Sol’ns, Inc. v. Global Green Prods., LLC., No. 10 C 5686, Slip Op. (N.D. Ill. Sep. 10, 2013) (Hart, Sen. J.).
Judge Hart denied defendants’ motion in limine to exclude plaintiff NanoChem’s late-disclosed lost profit damages analysis. The Court also granted defendants’ motion for summary judgment as to NanoChem’s Lanham Act and Illinois state law unfair competition claims.
During discovery, NanoChem stated that it would seek a reasonable royalty for its patent claims without providing a calculation. In response to defendant’s motion, NanoChem provided a lost profit calculation. While the calculation was late, defendants were not prejudiced because the final pre-trial order had not been filed yet and NanoChem did not rely upon an expert. But NanoChem was limited to the offered calculation and no other damages theories.
The Court granted defendants summary judgment as to NanoChem’s Lanham Act and Illinois unfair completion claims. Each claim required that NanoChem prove that its A-5D mark had acquired secondary meaning. Because NanoChem did not offer evidence supporting secondary meaning, the Court granted defendants summary judgment.
Spitz v. Proven Winners N. Am., LLC, No. 11 C 3997, Slip Op. (N.D. Ill. Aug. 22, 2013) (Hart, Sen. J.).
Judge Hart granted defendants’ motion for summary judgment in this trade secret case involving alleged trade secrets identifying pet-friendly plants. Plaintiff alleged that defendants used plaintiff’s trade secret identification of pet-friendly plants without paying the agreed upon $.02 per pet-friendly plant sold. As an initial matter, the Court denied to strike either parties Local Rule 56.1 statements or responses. Each party claimed that the other did not comply with various portions of Local Rule 56.1, but to the extent the Court was able to understand and use the statements, it would do so without striking any party’s statements. The Court did, however, disregard extraneous facts included in plaintiff’s responses to defendants’ statements of fact, instead of in a Local Rule 56.1 additional statement of facts.
The Court held that plaintiff did not provide sufficient evidence that defendants’ association of a pet-friendly label with certain plants on its website came from plaintiffs’ trade secret information. Instead, the evidence suggested that the information was publicly available. The Court also granted defendants summary judgment as to plaintiff’s other non-IP contract and tort claims, but I will not detail those because they do not have significant IP implications.
Intellect Wireless, Inc. v. HTC Corp., No. 09 C 2945, Slip Op. (N.D. Ill. Sep. 6, 2012) (Hart, Sen. J.).
Judge Hart entered findings of fact and conclusions of law after a patent bench trial related to cell phones with caller ID, text messaging, pictures or video. The Court dismissed with prejudice plaintiff Intellect Wireless’s patents because they were unenforceable due to inequitable conduct. Of particular interest, the Court held the following:
- Several declarations submitted to the PTO during prosecution of the patents in suit contained false statements regarding inventions, reduction to practice and diligence.
- The declarations were necessary to procure the patents in suit.
- None of the false statements were withdrawn, corrected or identified to the patent examiner.
- The clear and convincing evidence “strongly support[ed]” that the false statements were made with an intent to deceive, not just by mistake.