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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Hart

Generic Computer System Not Made Patentable by Connection to Other Programs

Posted in Federal Rules

Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, No. 13 C 4417, Slip Op. (N.D. Ill. Jan. 29, 2015) (Hart, Sen. J.).

Judge Hart granted defendants’ Mercedes-Benz USA’s and Daimler’s Fed. R. Civ. P. 12(c) motion to dismiss plaintiff Vehicle Intelligence & Safety’s (“VIS”) patent claims as unenforceable because they were patent ineligible pursuant to 35 U.S.C. § 101 in this patent case involving automotive safety systems.

Following the two-prong analysis set forth in Mayo and further refined in Alice, the Court first held that the asserted claims covered abstract ideas – testing operators of moving vehicles for physical or mental impairment.  The Court reasoned that testing for impairment could be performed entirely within the human mind.

The Court then turned to whether the asserted claims set forth an inventive concept sufficient to make the claims patent eligible.  The key claim element for each asserted claim required “expert system(s)” – a class of computer programs designed to mimic human decision-making.  The Court reasoned that the expert systems were “generic computer automation” that did not amount to an inventive concept.  Importantly, the claims did not require that the expert system be programed in any specific way to perform its various functions.

Claims requiring that the expert systems use one or more of various modules did not rise to the level of an inventive concept at least because it did not specify how the expert system was required to use any of the modules.

Patent Eligibility Could Not be Decided on the Pleadings

Posted in Discovery

Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA LLC, No. 13 C 4417, Slip Op. (N.D. Ill. Mar. 13, 2014) (Hart, Sen. J.).

Judge Hart denied defendant’s Fed. R. Civ. P. 12(c) motion to dismiss plaintiff’s patent infringement claims related to screening drivers for various types of impairment and “controlling operation” of the vehicle if the driver is impaired.  While the parties’ briefs showed likely issues of patentability, the Court could not decide whether the claims were patent eligible without further discovery regarding how and whether computers were used in the patent-in-suit.

Late Damages Theory Allowed Based Upon Lack of Prejudice

Posted in Summary Judgment, Trial

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.

Trade Secret Claims Dismissed for Lack of Evidence of Unique, Non-Public Information

Posted in 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.

Patents Held Unenforceable After Bench Trial

Posted in Trial

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.

References to Product Use May be Enough to Show Direct Infringement

Posted in Summary Judgment

Nanochem Solutions, Inc. v. Global Green Prods., LLC, No. 10 C 3212, Slip Op. (N.D. Ill. Oct. 16, 2012) (Hart, Sen. J.). 

Judge Hart denied defendant’s motion for partial summary judgment of noninfringement.  Defendants argued that plaintiff Nanochem failed to offer admissible proof of any direct infringes necessary to support Nanochem’s indirect infringement claims based upon defendant’s alleged sales of a solution used in the claimed methods.  The Court held that there was a valid dispute over whether defendant’s business plans referring to using the solution were sufficient, but they did preclude entry of summary judgment.

Early Inequitable Conduct Bench Trial Streamlines Case

Posted in Trial

Intellect Wireless, Inc. v. HTC Corp., No. 09 C 2945, Slip Op. (N.D. Ill. Mar. 2, 2012) (Hart, Sen. J.).

Judge Hart denied defendant’s (collectively “HTC”) motion for summary judgment of inequitable conduct based upon the submission to the Patent Office of allegedly false and misleading declarations.  The Court held that there were disputed questions of fact preventing summary judgment, without elaborating upon what facts were disputed.  And based upon the parties’ papers, the Court reversed the inequitable conduct claims for an early bench trial. 

The Court then ordered that, within four weeks, the parties file:

  • Statements of undisputed facts;
  • Proposed conclusions of law;
  • Exhibit lists; and
  • Witness lists.

This appears to be another example in the growing trend of Northern District judges looking for ways, like mini-Markmans and early Rule 30(b)(6) depositions, to streamline patent cases.

Doctrine of Equivalents Improper Where it Vitiates Claim Element

Posted in Claim Construction

Wells-Gardner Elecs. Corp. v. C. Ceronix, Inc., No. 10 C 2536, Slip Op. (N.D. Ill. Apr. 14, 2011) (Hart, J.).

Judge Hart construed the term "flange" and granted defendant C. Ceronix summary judgment of noninfringement in this patent case involving flat panel television mounting frames. The Court held that "flange" as used in the claims was interchangeable with "bracket," which C. Ceronix argued should be excluded from the definition of flange. In addition to the intrinsic evidence, the Court looked to dictionary definitions of flange.

C. Ceronix had brackets on the sides of the frame, but the brackets did not directly attach to the sides of the flat panel display as required by the claim. Instead the bracket attached at the back of the display. The doctrine of equivalents did not apply because allowing a flange that attached at the back not the side would vitiate the claim element.

The Court exercised its discretion to dismiss C. Ceronix’s claim for declaratory judgment of invalidity.

Court Cannot Force PTO to Issue a Secrecy Order

Posted in Jurisdiction

Farag v. Defense Threat Reduction Agency, No. 07 C 1688, 2007 WL 2404625 (N.D. Ill. Aug. 15, 2007) (Hart, J.).

Judge Hart dismissed for lack of subject matter jurisdiction plaintiff’s suit seeking that the Court order the PTO to place a secrecy order on plaintiff’s patent application for a process of separating an isotope from uranium for use in nuclear applications.  Plaintiff’s application is about to be published and plaintiff believes that publication of the application would allow use of his process for illicit purposes that might threaten national security.  The Invention Secrecy Act provides a patent applicant the right to appeal the issuance of a secrecy order, but not the right to appeal the denial of a secrecy order.  See 35 U.S.C. Section 181; 35 C.F.R. Section 5.4.  The Invention Secrecy Act also permits a suit for compensatory damages, but only based on damage created by a secrecy order, not the absence of one.  Finally, the Court noted that plaintiff might have a claim pursuant to the Administrative Procedure Act (the "APA"), but the APA requires that the plaintiff by harmed by the agency (PTO) action.  The Court noted that potential threat to national security based upon a review of plaintiff’s patent application was too remote and general to create standing pursuant to the APA.  As a result, the Court dismissed plaintiff’s complaint.  It is also interesting to note, the Court instructed plaintiff to file any appeal with the Seventh Circuit, instead of the Federal Circuit despite the fact that the case is focused on PTO procedure. 

Court Will Not Enter a Rule 54(b) Final Judgment Because of Delay and Overlap of Factual Basis For Remaining Claims

Posted in Federal Rules

AutoZone, Inc. v. Strick, No. 03 C 8152, 2007 WL 683992 (N.D. Ill.  March 1, 2007) (Hart, J.).

Judge Hart denied plaintiffs’ motion for a Fed. R. Civ. P. 54(b) entry of final judgment on plaintiffs’ Lanham Act and related state law trademark infringement and dilution claims, which the Court dismissed in this opinion.  The Court denied the motion on two grounds.  First, plaintiffs notified the Court of their intent to file the motion 30 days after the Court’s order dismissing the claims, but only entered it 37 days later.  The Court noted the Seventh Circuit standard is that a district court generally abuses its discretion by entering a Rule 54(b) judgment when the motion was filed more than 30 days after the underlying order was issued.*  Second, the Court denied the motion on substantive grounds.  Defendants’ counterclaims, which were the only claims remaining in suit, involved overlapping factual issues with plaintiffs’ dismissed claims.  Defendants sought cancellation of plaintiffs’ Zone mark, one of the marks plaintiffs alleged defendants infringed in the dismissed claims.  Additionally, defendants’ remaining claims alleged infringement of their Oil Zone mark, a mark that plaintiffs’ dismissed claims alleged infringed their AutoZone and Zone marks.

*  The Court also noted that some litigants have argued that the Seventh Circuit standard is no longer good law, but stated that district courts throughout the Seventh Circuit continue to follow it with a string cite.

Parties Must Support Summary Judgment Arguments With Facts

Posted in Summary Judgment

AutoZone, Inc. v. Strick, __ F. Supp.2d __, 2006 WL 3626770 (N.D. Ill.  Dec. 7, 2006) (Hart, J.).

Judge Hart granted summary judgment for defendants and dismissed all of plaintiffs’ claims in this trademark case.  First, the Court did a detailed analysis of each of the seven likelihood of confusion factors and determined that a reasonable jury could not find a likelihood of confusion between plaintiffs’ AutoZone mark and defendants’ Oil Zone and Wash Zone marks.  The Court found that plaintiffs’ mark was strong, but held that there was not great similarity between the marks, that plaintiffs’ and defendants’ services were not similar, and that there was no evidence of actual confusion or intentional infringement.  As a result, the Court dismissed plaintiffs’ trademark infringement and unfair competition claims.

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