Ariel Investments, LLC v. Ariel Capital Advisors, LLC, No. 15 C 3717, Slip Op. (N.D. Ill. May 16, 2016) (Kennelly, J.). Judge Kennelly granted plaintiff Ariel Investments’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant Ariel Capital’s fraud on the Patent & Trademark Office and abuse of process claims in this Lanham Act dispute … Continue Reading
Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, No. 13 C 4417, Slip Op. (N.D. Ill. Sep. 18, 2014) (Hart, Sen. J.). Judge Hart construed the claims of plaintiff’s patent to methods for screening equipment operators for impairments. The parties agreed that “expert system(s)” was the key term that required construction. The Court construed … Continue Reading
Intercontinental Great Brands LLC v. Kellogg N. Am. Co., No. 13 C 321, Slip Op. (N.D. Ill. Sep. 22, 2014) (Kennelly, J.). Judge Kennelly construed the terms in this patent dispute regarding repeatable food containers. Of particular note, the Court held as follows: “Sealing layer” was construed as being separate from the top of the … Continue Reading
Cascades Computer Innovation, LLC v. Samsung Elecs. Co., Nos. 11 C 4574 & 11 C 6235, Slip Op. (N.D. Ill. Sep. 14, 2014) (Kennelly, J.). Judge Kennelly granted in part defendants Samsung’s and HTC’s motions for summary judgment of patent exhaustion based upon a prior settlement agreement that plaintiff Cascades Computer Innovation (“Cascades”) previously entered … Continue Reading
Malibu Media, LLC v. Doe, No. 13 C 3648, Slip Op. (N.D. Ill. Jun. 9, 2014) (Kennelly, J.). Judge Kennelly granted in part plaintiff Malibu Media’s motion to dismiss Doe defendant’s counterclaim and certain of its nineteen affirmative defenses in this BitTorrent copyright infringement case. Doe’s counterclaim was not appropriate because it sought no affirmative … 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
Bobel v. U Lighting Am., Inc., No. 12 C 6064, Slip Op. (N.D. Ill. Feb. 12, 2013) (Kennelly, J.). Judge Kennelly denied defendants U Lighting America and its sole officer and employee’s (collectively “ULA”) motion to dismiss this patent suit for lack of personal jurisdiction. The Court had specific jurisdiction over ULA because ULA shipped … Continue Reading
Bobel v. U Lighting Am., Inc., No. 12 C 6064, Slip Op. (N.D. Ill. Feb. 16, 2013) (Kennelly, J.). Judge Kennelly granted in part defendant U Lighting Group’s (“ULG”) motion to dismiss plaintiff’s patent case for lack of personal jurisdiction and improper service. The Court held that personal jurisdiction was proper: ULG identifies co-defendant U … Continue Reading
Hollister Inc. v. ConvaTec Inc., No. 10 C 6431, Slip Op. (N.D. Ill. Aug. 18, 2012) (Kennelly, J.). Judge Kennelly construed the terms in this patent dispute regarding fecal management systems: “Passed through” was construed as “passed inside.” “An enema one-way valve” was construed as “a device that enables forward fluid flow but prevents backward … Continue Reading
S&A Futures, LLC — Series 2 v. Sysco Chicago, Inc., No. 11 C 7629, Slip Op. (N.D. Ill. Mar. 13, 2012) (Kennelly, J.). Judge Kennelly granted in part defendants’ (collectively “L&P”) motions to dismiss the plaintiffs’ claims in this Lanham Act case in this dispute regarding trademarked bratwurst: The Court denied L&P’s motion seeking to … Continue Reading
Fasteners for Retail, Inc. v. Andersen, No. 11 C 2164 Slip. Op. (N.D. Ill. Aug. 30, 2011) (Kennelly, J.).
Judge Kennelly denied defendant Andersen's motion to dismiss this patent and trade secret case. The Court had personal jurisdiction over Andersen because he worked for defendant K International, an Illinois entity, and Andersen had solicited his former customers in Illinois.
Venue was also proper in the Northern District. A substantial part of the facts at issue occurred in Illinois. The parties' prior agreement did not release plaintiff's trade secret claims because they were not contemplated when plaintiff signed the agreement.
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Hollister Inc. v. Convatec Inc., No. 10 C 6431, Slip Op. (N.D. Ill. June 21, 2011) (Kennelly, J.).
Judge Kennelly granted defendant Convatec's summary judgment because of earlier settlement agreement released plaintiff Hollister's patent infringement claims involving bowel management systems as to then existing products. Here are the key holdings:
The release provisions in the agreement made clear that the parties intended to release future sales of existing product lines.
The accrued products did not have new, infringing features that would have brought them outside the bonds of the agreement.
Hollister cited no case supporting its argument that in New Jersey releases would only be for past and current sales, not future.
Hollister offered no case law supporting its arguments that a patent application cannot be released before it is issued.
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Irrevocable Trust of Anthony J. Antonious v. Tour Edge Golf Manufacturing, Inc., No. 10 C 5552, Slip Op. (N.D. Ill. Apr. 17, 2011) (Kennelly, J.).
Judge Kennelly sanctioned two counsel, Silverman and Daghighian, for false statements made in Silverman's pro hac vice application which was filed by Daghighian in this patent case. Daghighian prepared and filed Silverman's application, without his consent or review, based upon prior applications the two had filed in other courts. In doing so, Daghighian stated for Silverman that he had never been suspended from practice and that he had not been held in contempt. The Court later learned that both statements were false. The Court noted that it would likely have granted Silverman's application had he explained the two instances that should have been identified, but despite that the misstatements were material.
The Court ordered that: 1) Silverman provide a copy of the Court's opinion to his state disciplinary authority; 2) Silverman pay a $5,000 fine to the Clerk to be put into the pro bono fund; and 3) Silverman was barred from seeking pro hac vice admission to the Northern District for three years without prior permission from the Court's Executive Committee. Silverman received the more severe sanctions of the two because he was significantly more experienced and because he failed to take personal responsibility in the declaration he provided the Court.
Daghighian received lesser sanctions because he had only been practicing five years and, while his violations were more egregious in some ways, he took responsibility for his actions in his declaration. The Court ordered that: 1) Daghighian provide a copy of the Court's opinion to his state disciplinary authority, but suggested that the authorities consider the mitigating factors the Court noted in rendering its decision; 2) Daghighian pay a $1,000 fine to the Clerk to be put into the pro bono fund; and 3) Daghighian's appearance and pro hac vice application were not stricken.
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Hollister Inc. v. ComvaTec Inc., No. 10 C 6431, Slip Op. (N.D. Ill. Jun. 21, 2011) (Kennelly, J.).
Judge Kennelly granted defendant ConvaTec's motion for summary judgment that its accused bowel management systems were covered by a patent cross-license agreement between ConvaTec and plaintiff Hollister's predecessor Zassi. The agreement released each party for "any and all past, present or future claims" including patent infringement claims involving the parties then existing product lines.
The agreement excerpted new features from the release. But ConvaTec's accused Flexi-Seal products had the same designs as ConvaTec's products at the time of the agreement.
Hollister's argument that only covenants not to sue, not releases, may discharge future claims was not founded in the law. Hollister cited no cases that stood for that point.
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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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Affymax, Inc. v. Johnson & Johnson, No. 04 C 6216, Slip Op. (N.D. Ill. Mar. 21, 2011) (Kennelly, J.).
Judge Kennelly granted in part plaintiff Affymax's motion to vacate the arbitration award between the parties, remand the case to the arbitration panel for further determination of the inventorships of foreign patents. The parties previously undertook two years of discovery before a three-member AAA panel. That panel held that Affymax and defendants (collectively "Johnson & Johnson") were joint inventors on several U.S. Patents and that Johnson & Johnson was the sole inventor as to one patent, and therefore, its foreign counterparts. Noting that it could not vacate the arbitration decision even for "gross" misapplication of the law, the Court considered Affymax's arguments to vacate the award as to the patents held to be solely owned by Johnson & Johnson:
The evidence suggested that the panel did conduct the claim-by-claim analysis required by the Agreement as to the US patents and claims. It did not matter that they did not detail the analysis for each US claim.
The arbitrator's decision clearly and thoroughly stated the law of joint inventorship. Affymax's disagreement with the application of the law is not grounds for vacating an arbitration award.
The arbitrator had the relevant evidence before them. The trail of documents connecting Affymax to the documents was not relevant because the arbitrators disagreed with Affymax regarding the conclusions drawn from the documents.
The arbitrators manifestly disregarded the law by finding that the foreign patents had the same ownership interests as their U.S. counterparts without performing the required claim-by-claim inventorship analysis. The Court, therefore, vacated the award regarding the foreign patents and rewarded the arbitration panel for determination of inventorship of the foreign patents.
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Avery Dennison Corp. v. Continental Datalabel, Inc., No. 10 C 2744, Slip Op. (N.D. Ill. Nov. 30, 2010) (Kennelly, J.).
Judge Kennelly granted plaintiff Avery Dennision's ("ADC") Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant Continental Datalabel's ("CDI") inequitable conduct, Walker Process fraud and sham litigation counterclaims in this patent dispute regarding labels with a tear off liner to expose a portion of a label column for easy removal.
CDI alleged two bases of inequitable conduct. First, ADC allegedly intentionally failed to tell the examiner that certain limitations outlined in a series of bullet points were from a particular prior art reference. That claim filed because ADC had previously disclosed the prior art reference at issue to the examiner - once a reference is before an examiner, it cannot be found to have been withheld from the examiner. Second, ADC allegedly intentionally failed to disclose to the examiner that curling up of labels is an inherent characteristic of adhesive labels. But ADC had disclosed the inherent curling up by disclosing various prior art references regarding adhesive labels that taught the inherent curling up, combined with the examiner's presumed experience in the art.
Walker Process Fraud Claim
Because CDI's Walker Process claim was premised upon the alleged inequitable conduct, CDI's Walker Process claim failed. The Court further noted that because inequitable conduct is a broader concept than Walker Process fraud, a party that fails to make its case for inequitable conduct, cannot make a Walker Process fraud claim.
CDI's sham litigation claim was based upon allegations that ADC knew the patent was invalid based upon the Brady prior art reference, which was before the examiner, and because had ADC tested CDI's accused labels, ADC would have realized its suit was baseless. Because the Brady reference was before the examiner, however, the Court could not find that the claim was "objectively baseless" as required for sham litigation. ADC could have reasonably believed that after the examiner considered Brady and granted ADC's patent, ADC's patent was in fact valid over Brady.
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DH Holdings, LLC v. MeridianLink. Inc., No. 10 C 2351, Slip Op. (N.D. Ill. Aug. 23, 2010) (Kennelly, J.).
Judge Kennelly denied defendant MeridianLink's motion for sanctions pursuant to Fed. R. Civ. P. 11, § 1927 and the Court's inherent powers. Plaintiff DH Holdings originally filed its Northern District patent infringement case in 2008, and Judge Norgle entered a default against MeridianLink when it failed to answer the complaint. MeridianLink later got the judgment overturned for improper service in the Central District of California, and then filed a declaratory judgment action in that district. DH Holdings responded by filing the instant case and simultaneously asking Judge Norgle to reopen the 2008 case. MeridianLink claimed that DH Holding unnecessarily multiplied the litigation by seeking to reopen the 2008 case and filing the instant case. But the Court held that DH Holding simply took prudent actions to maintain the status quo. DH Holding could not be certain that its original case would be reopened. So, filing a new case was a reasonable precaution.
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World Wide Sales, Inc. v. Church & Dwight Co., Inc., No. 08 C 1198, Slip Op. (N.D. Ill. Nov. 9, 2009) (Kennelly, J.).
Judge Kennelly granted defendant Church & Dwight ("CD") summary judgment on each of plaintiff World Wide Sales' ("WWS") claims for trademark infringement, Lanham Act unfair competition and fraud on the Patent and Trademark office. WWS claimed that CD infringed and unfairly competed with WWS's Forever Fresh for the Fridge trademark, used with a refrigerator odor elimination product, by using CD's Fridge Fresh mark with its Arm & Hammer refrigerator deodorizer product.
The parties stipulated that CD's mark was protectable for purposes of this motion. The only issue, therefore, was whether there was a likelihood of confusion. Generally, a court would consider whether consumers believed CD's mark referred to WWS's product. But WWS relied upon a theory of reverse confusion, arguing that CD had so saturated the market with its junior mark that consumers believed WWS's products were CD's products. Courts apply the same likelihood of confusion factors in both reverse confusion and confusion cases, although the factors are weighted differently:
Similarity of Products. The products had similar deodorizing uses, but they were presented so differently that there was little chance of consumer confusion.
Degree of Similarity. Beyond both using "Fridge" and "Fresh" the marks were not similar. Among other things, WWS's mark was surrounded by pictures of refrigerated food stored with or without its product, CD's mark was against a yellow-orange background, similar to other Arm & Hammer products without any pictures of food. The factor weighed strongly in CD's favor as it was "extraordinarily unlikely" that consumers would be confused.
Use and Manner of Concurrent Use. The parties' distribution channels were vastly different. WWS offered no evidence of the products being sold in the same store or advertised in the same publication.
Strength of Mark. WWS's mark was descriptive and relatively little had been invested in promoting the mark. As a result, the Court held that the mark was relatively weak.
Consumers' Degree of Care. While the products at issue were relatively inexpensive, the Court still held that there was little chance consumers would confuse the products.
CD's Intent. Because the junior user does not seek to profit from the senior user's mark in reverse confusion cases, CD's intent was irrelevant.
Actual Confusion. WWS offered no evidence of actual confusion.
Based upon the factors, the Court held that no reasonable fact finder could find a likelihood of confusion.
Fraud on the PTO
Because WWS's registration disclaimed the exclusive use of "fridge" and "fresh," no reasonable fact finder could have found that CD lacked a reasonable belief that "fridge" and "fresh" were unprotected words. And therefore, failing to disclose WWS's "Forever Fresh for the Fridge" registration to the PTO during the prosecution of CD's "Fridge Fresh" mark was not fraud.
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Click here for the Seventh Circuit's new proposed pattern trademark jury instructions.* The committee that prepared the instructions included Northern District of Illinois Judges Kendall and Kennelly, as well as a broad spectrum of attorneys from academic, government and private practice.
The pattern instructions are impressive for their thoroughness. They are also very well cited, making them an excellent primer on Seventh Circuit trademark law. Of particular note, the instructions do not include a dilution instruction because since Congress's 2006 revision of the dilution laws, there has not been sufficient appellate interpretation.
* The jury instructions are not yet in final form.
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Loyola University's and the Chicago Intellectual Property Alliance's annual IP Day In Chicago is next week, Tuesday, November 3 at the law school, 25 East Pearson Street in Chicago. This is a do not miss event every year. This year's program includes a keynote speech by the Northern District of Illinois's Judge Kennelly and impressive panels discussing topics including the new proposed generic top-level domains and protecting patents and trade secrets and policing false advertising. Click here for a brochure with more details and registration information.
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Frayne v. Chicago 2016, No. 08 C 5290, Slip Op. (N.D. Ill. Oct. 2, 2009) (Kennelly, J.).
Judge Kennelly denied defendants Chicago 2016's and the United States Olympic Committee's ("USOC") motion for summary judgment regarding its Stevens Act and Anticybersquatting Consumer Protection Act ("ACPA") claims regarding plaintiff's www.chicago2016.com website. And the Court granted defendants summary judgment as to plaintiff's federal and state constitutional claims, and plaintiff's laches defense. Plaintiff registered the Chicago2016.com domain in 2004, and after the sale, the domain registrar maintained a parking page on the site which included advertising links. Revenues for the links went to the registrar, not plaintiff.
The Court held that the parking page was commercial. But there was a question of fact as to whether plaintiff "used" the trademark, in this case the domain, for commercial purposes as required by the Stevens Act. Plaintiff did not receive revenues from the parking page and it was even unclear whether plaintiff knew of the parking page or consented to the registrar's use of the parking page.
The Court also analyzed whether Chicago 2016 was a mark that fell within the Stevens Act. While city-plus-Olympic-year combinations were not automatically protectable marks within the scope of the Stevens Act, certain city-plus-Olympic-year combinations can acquire an association with the USOC and the Olympics. Chicago 2016 likely gained that association by April 2007 when the USOC picked Chicago as a 2016 Olympic candidate. But the parties did not brief the issue of when the association occurred, so the determination required further proceedings.
The ACPA claim was not ripe for summary judgment because it depended upon a determination that Chicago 2016 was a protected mark pursuant to the Stevens Act which the Court had held required further proceedings. Additionally, there was a question of fact as to whether plaintiff had a bad faith intent to profit from the Chicago 2016 mark.
The Court granted defendants summary judgment on plaintiff's laches claim. Plaintiff argued that if he had been aware of defendants' intent to pursue this suit, he would have challenged defendants' Chicago 2016 mark in the Patent & Trademark Office. But defendants second Chicago 2016 mark application was published concurrently with their first threat to take action against plaintiff. Plaintiff did not, however, challenge that application. No reasonable fact-finder could find plaintiff was prejudiced in those circumstances.
The Court granted defendants summary judgment as to plaintiff's constitutional claims based upon the Noer-Pennington doctrine. Noer-Pennington protects a party's right to file a lawsuit so long as the suit is not a sham. Defendants' claims regarding their Chicago 2016 mark were backed by precedent. Defendants cited several cases in which WIPO ruled for Olympic organizations regarding city-plus-Olympic-year combination marks.
* For more on the Steven Act, which grants the USOC absolute rights in certain Olympics-related trademarks click here.
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Frayne v. Chicago 2016, No. 08 C 5290, Slip Op. (N.D. Ill. Jan. 8, 2009) (Kennelly, J.).
Judge Kennelly granted defendants' motion to dismiss as to plaintiff's Lanham Act Section 114(2)(D) reverse domain name highjacking and attempted highjacking claims.* Plaintiff registered Chicago2016.com in 2004 at which time plaintiff was not aware that Chicago intended to bid for the 2016 Olympics. In 2007, plaintiff was contacted by a representative of Chicago 2016 and asked whether plaintiff would entertain offers for the website. Plaintiff refused and defendants eventually initiated proceedings before the World Intellectual Property Organization alleging that plaintiff registered the domain name in bad faith and in violation of the Uniform Domain-Name Dispute Resolution Policy ("UDRP"). Plaintiff's domain name, however, was never suspended, disabled or transferred to defendants.
Plaintiff conceded that highjacking claim should be dismissed because the domain name had not been suspended, disabled or transferred. And the Court held that the Lanham Act did not create a cause of action for attempted highjacking. The text of the statute specifically required that the domain name actually be suspended, disabled or transferred.
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