Torrent Pharma. Ltd. V. Daiichi Sankyo, Inc., No. 16 C 2988, 3956 & 4876, Slip Op. (N.D. Ill. Jul. 25, 2016) (Pallmeyer, J.). Judge Pallmeyer granted declaratory judgment defendants’ Fed. R. Civ. P. 12(b) motion to dismiss for lack of personal jurisdiction in this ANDA patent litigation involving Benicar®, a drug for treating hypertension. As … Continue Reading
Not Dead Yet Manufacturing, Inc. d/b/a/ NDY MFG, Inc. v. Pride Sol’ns., LLC, No. 13 C 3418, Slip Op. (N.D. Ill. Nov. 28, 2016) (Pallmeyer, J.). Judge Pallmeyer granted in part plaintiff NDY’s FRE 702 motion to exclude certain portions of defendants’ noninfringement expert report in this patent dispute related to a quick connect and … Continue Reading
Next week, on March 15, 2017, the Federal Circuit Bar Association and the Intellectual Property Law Association of Chicago are hosting an Intellectual Property Law Symposium at the University Club of Chicago from 8:45am until 5:00pm. Register here. Speakers include Northern District of Illinois Judges Castillo, Feinerman, Holderman (Ret.), Kendall, and Pallmeyer; as well … Continue Reading
Not Dead Yet Mfg., Inc. v. Pride Sol’ns, LLC, No. 13 C 3418, Slip Op. (N.D. Ill. Oct. 5, 2015) (Pallmeyer, J.). Judge Pallmeyer construed the claim terms of plaintiff Not Dead Yet’s (“NDY”) patents to a quick connect and disconnect system for a farming implement known as a stalk stomper. Of particular note, the … Continue Reading
Cumberland Pharms., Inc. v. Mylan Institutional LLC, No. 12 C 3846, Slip Op. (N.D. Ill. Oct. 2, 2015) (Pallmeyer, J.). Judge Pallmeyer, after a bench trial, found that defendants (collectively “Mylan”) had not met their burden of proving plaintiff Cumberland’s ‘445 patent – to an intravenous treatment for suspected acetaminophen overdoses – was invalid by … Continue Reading
Panoramic Stock Images, Ltd. v. McGraw-Hill Global Educ. Holdings, LLC, No. 12 C 9881, Slip Op. (N.D. Ill. Nov. 25, 2014) (Pallmeyer, J.). Judge Pallmeyer denied defendant McGraw-Hill’s motion for summary judgment regarding a statute of limitations and granted in part plaintiff Panoramic Images’ motion for summary judgment of copyright infringement in this case regarding … Continue Reading
Cumberland Pharms, Inc. v. Mylan Inst. LLC, No. 12 C 3846, Slip Op. (N.D. Ill. Feb. 26, 2014) (Pallmeyer, J.). Judge Pallmeyer construed the claims in this patent infringement case involving an IV form N-acetylcysteine — used for treating acetaminophen overdoses. Of particular note, the Court held as follows: “Free From A Chelating Agent & … Continue Reading
Panoramic Stock Images, Ltd. v. The McGraw-Hill Cos., No. 12 C 9881, Slip Op. (N.D. Ill. Aug. 9, 2013) (Pallmeyer, J.). Judge Pallmeyer denied defendant McGraw-Hill’s Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of plaintiffs’ (collectively “Panoramic”) claims that were allegedly related to defective or unissued copyrights in this case involving licensing of … 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
Judge Pallmeyer granted in part plaintiff Nielsen's motion for summary judgment and denied defendant Truck Ad's cross-motion in this copyright case involving Nielsen's marketing area maps for television and other media. The Court held that Nielsen had valid copyrights in its maps:
The fact that Arbiton may have made the maps first did not prevent Nielsen's copyright because of Nielsen's original contribution to its maps.
Nielsen's maps were not merely factual; Truck Ad's comparison to the white pages was imperfect.
The FCC's use of the maps did not bring them into the public domain.
The court held that there were questions of fact as to infringement, including:
Truck Ad's access to the copyrighted maps;
The similarity between Nielsen's and Truck Ad's maps; and
Truck Ad's defense of independent creation.
… Continue Reading
Modern Trade Comms., Inc. v. PSMJ Resources, Inc., No. 10 C 5380, Slip Op. (N.D. Ill. Aug. 19, 2011) (Pallmeyer, J.).
Judge Pallmeyer granted defendants PSMJ Resources' ("PSMJ") and Oser Communications' ("Oser") motion to dismiss for lack of personal jurisdiction in this Lanham Act case involving plaintiff Modern Trade Communications' ("MTC") rights in its Metal Construction News mark for a metal industry trade publication. At the Metalcon tradeshow in 2010, Oser distributed a daily publication entitled Metal Daily News at PSMJ's direction. MTC alleged that the Metal Daily News title infringed its Metal Construction News mark, which MTC used to publish an official show guide at the same conference.
PSMJ was a Massachusetts company without offices or personnel in Illinois. It approximated that 3% of its revenue at the 2009 Metalcon show in Florida was from Illinois residents. PSMJ's website was not interactive. PSMJ did produce six training seminars unrelated to Metalcon in Illinois. PSMJ's small revenues from Illinois residents did not create general jurisdiction. While related to Metalcon, PSMJ's contract with a third party in Illinois did not create specific jurisdiction. And PSMJ's production of the 2002 Metalcon in Illinois did not create specific jurisdiction because the accused Metal Daily News was only distributed at the 2010 Metalcon in Las Vegas. The Court, therefore, had neither general nor specific jurisdiction over PSMJ.
Oser was an Arizona company without offices or personnel in Illinois, although Oser did distribute publications at two to three trade shows per year in Chicago. Oser's website was passive, except that the 2010 Metal Daily News was available on the site for downloading. Attendance at two to three trade shows each year in Chicago did not create the systematic contacts necessary for general jurisdiction. Oser's website was not sufficient to create specific jurisdiction. MTC made no allegation that the website was targeted at Illinois, and the availability of the publication as a free download was not sufficient either. And MTC did not allege how Oser's alleged infringement in Las Vegas was tied to Oser's Illinois activities. Furthermore, the sale of an advertisement in the Metal Daily News to an Illinois resident, even combined with the website allegations, was not sufficient to create specific jurisdiction.
The Court also denied MTC's motion to amend because it did not allege any new facts that might create personal jurisdiction.
… Continue Reading
Cement-Lock v. Gas Tech. Institute, No. 05 C 0018 (N.D. Ill. Oct. 5, 2009) (Pallmeyer, J.).
Judge Pallmeyer issued an order dismissing this patent case with prejudice based upon the parties' settlement. The Court previously presided over a jury trial resulting in a verdict for plaintiffs Cement-Lock LLC and Alderman Richard Mell on behalf of Cement-Lock Group (collectively "CLG") on various RICO and breach of fiduciary duty claims. The jury awarded CLG $15M in damages, which was resolved by the settlement.
This was a dispute over the control and use of Cement-Lock technology (the "Technology") which decontaminated certain waste products and used the decontaminated waste as a beneficial cement additive. CLG asserted various IP claims, including Lanham Act unfair competition, deceptive trade practices and trademark infringement. GTI also allegedly claimed to own and have developed the Technology.
… Continue Reading
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
… Continue Reading
Heathcote Holdings Corp., Inc. v. Maybelline LLC, No. 10 C 2544, Slip Op. (N.D. Ill. Mar. 15, 2011) (Pallmeyer, J.).
Judge Pallmeyer granted in part defendants' (collectively "Maybelline") motion to dismiss plaintiff Heathcote's false patent marking case. The Court also granted Maybelline's motion to transfer the case to the Southern District of New York. In this pre-BP Lubricants case, the Court held that Heathcote had sufficiently pled intent to deceive by pleading the allegedly false statement and Maybelline's knowledge of the false statement. These are the type of allegations specifically held to be in sufficient by BP Lubricants.
Heathcote did not oppose Maybelline's motion to dismiss L'Oreal USA Creative, so long as it was given leave to replead if it later found Maybelline's representations were wrong.
Finally, the Court transferred the case to Maybelline's home district, the Southern District of New York. One key factor was that the alleged conduct would have largely occurred at Maybelline's headquarters, in New York. The Court also held that the sources of proof in the case will be more accessible in New York than in Illinois.
… Continue Reading
The Federal Bar Association - an excellent group that is worth joining (disclosure: I am a member) - recently held a panel of Northern District judges. Here are my notes regarding Judge Pallmeyer's comments:
Judge Pallmeyer does not like hearings by phone, but will allow them in appropriate circumstances.
She reads briefs as they come in, but has clerks write some opinions. She also avoids unnecessary opinions.
When possible and appropriate, Judge Pallmeyer encourages live argument and immediate decision. So, show up for hearings prepared to argue.
Judge Pallmeyer uses a two-page questionnaire tailored to each case for voir dire. She then asks follow up and gives counsel brief opportunities to follow up, followed by preemptory challenges.
… Continue Reading
LegalMetric Research has been running an interesting series of reports on nationwide patent litigation statistics by district. And in each case, the Northern District remains among the top patent district courts. 2009 was the rare year that the Northern District slipped out of the top five districts in terms of filings, but it only fell to sixth. And the combination of the new Local Patent Rules and the false marking cases will change that significantly for 2010 (more on both of those issues in the next few weeks). Here are the top ten districts by the number of patent suits filed in 2009:
1. C.D. California
2. E.D. Texas
3. D. Delaware
4. N.D. California
5. D. New Jersey
6. N.D. Illinois
7. S.D. New York
8. S.D. California
9. D. Massachusetts
10. E.D. Virginia
The Northern District is also one of six districts that produce half of all claim construction decisions. Not surprisingly, the Eastern District of Texas, the Northern District of California and the District of Delaware produce the most, with the Northern District of Illinois, the Southern District of New York and the Central District of California filling out the six. And these six districts also issue 43% of all reexam stays.
Finally, Judge Pallmeyer is the lone Northern District of Illinois on the list of top 30 patent judges by the number of 2009 patent cases assigned to them. Pallmeyer came in at number 23. The top five spots were held by Eastern District of Texas and District of Delaware. It is not surprising to see only a single Northern District judge on this list because the bench is relatively large, in particular compared to some of the other top patent districts like the Eastern District of Texas and the District of Delaware. But more Northern District judges will likely be in the top 30 next year because of increased filings through the first quarter, as well as the fifty or so false patent marking suits filed in the Northern District beyond the usual patent cases.
… Continue Reading
totes Isotoner Corp. v. Panther Vision Corp., No. 09 C 1604, Slip Op. (N.D. Ill. Jan. 4, 2010) (Pallmeyer, J.).
Judge Pallmeyer construed plaintiffs' claims for its patent covering headgear equipped with LEDs for illuminating the wearer's line of sight. Here are some constructions of note:
The Court rejected both parties' construction of "array" instead opting for a dictionary definition;
The Court rejected both parties' constructions of "contiguous beam" in favor of a dictionary definition "a single, unbroken beam of light."
The Court held that "connected" and "attached" were interchangeable, but preferred "attached."
The Court rejected both parties' constructions of "adjacent" construing it as "closely proximate."
… Continue Reading
Rudnicki v. WPNA 1490 AM, No. 04 C 5719, Slip. Op. (N.D. Ill. Dec. 10, 2009) (Pallmeyer, J.).
Judge Pallmeyer granted plaintiff summary judgment of copyright registration of six of his Polish radio broadcasts. The Court also granted defendants summary judgment that plaintiff lacked standing to bring his copyright infringement suit. But the Court gave plaintiff thirty days to seek reconsideration if he was able to get an assignment of plaintiff's radio broadcasts from his employer RadioZET during that time. The Court also granted in part defendants' motion to strike plaintiff's summary judgment declarations.
As an initial matter, the Court held that pursuant to the Berne Convention, Polish law controlled copyright ownership issues as the country most closely related to the work and that U.S. law controlled infringement issues.
The Court held that plaintiff's radio news reports were protectable pursuant to Polish law, although the reported facts were not protectable. Furthermore, plaintiff's reports dealt with political issues which is a type of reporting Polish law specifically provided should be compensated. Plaintiff's six copyrighted broadcasts, therefore, were protectable and the copyrights were owned by plaintiff or his assignee.
Plaintiff's contract with RadioZET provided a transfer of rights to RadioZET in plaintiff's broadcasts that was "unlimited in time and space." Based upon that contract, plaintiff was not the exclusive copyright holder either in Poland or anywhere in the world where a copyright was held, including in the United States. The Court, however, gave plaintiff thirty days to get an assignment from RadioZET and seek reconsideration of the standing decision based upon the assignment.
Entitlement to Damages
Plaintiff's deposition statement that he did not incur economic loss from defendant's alleged infringement did not prevent plaintiff from an award of actual damages. The Court noted that actual damages could be determined in the range of $20-$38 per broadcast based upon what plaintiff was originally paid for his reports, including the copyrighted reports. If plaintiff proved all 53 alleged infringements that would result in damages of $1,060 to $2,014. The Court did not consider whether statutory damages were available.
The Court held that plaintiff had properly registered his copyright in the six broadcasts deposited with the Copyright Office.
Motion to Strike
The Court did not strike the declaration of a previously undisclosed witness because the witness was only required because the equipment required to playback recordings of the broadcasts at issue unexpectedly failed.
The Court did, however, strike portions of two declarations by plaintiff's RadioZET supervisors. There was no evidence that the supervisors drafted or negotiated the contract. The fact that the witnesses were not disclosed in Rule 26 disclosures was not relevant, however, because they were disclosed during plaintiff's deposition.
… Continue Reading
SP Techs., LLC v. Garmin Int'l., Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Nov. 3, 2009) (Pallmeyer, J.).*
Judge Pallmeyer denied the individual inventor's ("Inventor) motion to intervene in this patent case. Inventor sought to intervene in this case arguing that the assignment of his patent to plaintiff SP Technologies ("SPT") was invalid because SPT coerced Inventor to sign it. The Court held that Inventor's argument was unpersuasive. Inventor admitted signing the assignment, but argued it was under duress. But the Court held that Inventor could not intervene, even if Inventor could prove the duress. Inventor failed to explain why SPT would not adequately represent Inventor's interests in the case. In fact, Inventor even agreed that his interests were aligned with SPT. Intervention, therefore, was not proper. Inventor was, however, free to pursue his claims in a separate suit against SPT.
* Click here for more on this case in the Blog's archives.
… Continue Reading
SP Techs., LLC v. Garmin Int'l., Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Sep. 30, 2009) (Pallmeyer, J.)
Judge Pallmeyer denied defendants' motion for summary judgment of inequitable conduct in this patent infringement case. Plaintiff SP Technologies ("SPT") asserted a patent for a touch screen keyboard that cannot be moved, resized or closed by a user. Defendants argued the patent should be held unenforceable based upon the inventor's alleged failure to disclose to the Patent Office twenty lines of code for disabling a close button allegedly copied from a website and used in the patent, as well as certain alleged prior art Palm Pilot devices.
Intent to Deceive
The Court held there were questions of fact as to the investor's alleged intent to deceive the Patent Office as to both alleged pieces of prior art. With respect to the code, there was evidence that the inventor believed there was no need to submit any evidence about a portion of the code because only the entirety of the code was relevant to patenting. Regarding the Palm devices, the inventor believed he had disclosed the Palm Pilots because they were mentioned in articles submitted to the Patent Office.
Regarding the allegedly copied code, the Court noted that few inventors could be considered the sole inventor of every aspect of their invention. Almost all inventions include some known components. And defendants did not prove that the single component of the invention represented by the allegedly copied code was central to patentability. The Court did, however, note that it appeared the code was likely copied as it was identical to that on the website and in other manuals, down to a misspelling. The Court accepted as evidence a printout of a copy of the website at issue from the relevant 1999 date. The copy of this website was maintained by the Internet Archive, or the Way Back Machine. The printout was authenticated by an Internet Archive employee that explained the Internet Archive's process of maintaining historic copies of websites.
Similarly, defendants did not present sufficient evidence of the materiality of the Palm devices. Defendants offered only pictures without proof, such as a manual, that a user could not move, resize or close the keyboard.
… Continue Reading
SP Techs., LLC v. Garmin Int'l, Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Oct. 9, 2009) (Pallmeyer, J.).
Judge Pallmeyer construed the claims of plaintiff SP Technologies' ("SPT") patent to a method for inputting data on a touch-screen display using a keyboard that cannot be resized, moved or closed by a user. As an initial matter, the Court noted that, contrary to SPT's argument, the Court was not required to consider the accused products when construing the claims. Instead, the Court had discretion to consider the accused devices. And because the parties did not provide a reason to consider them, the Court chose not to include the accused products in its analysis. Here are constructions of note:
"Plurality of date input fields" was defined as more than one field, but the fields need not simultaneously appear on the same screen.
"Termination" referred to terminating or closing the keyboard, but not resizing or moving the keyboard as defendants argued. The ordinary meaning of terminate controlled over some statements the inventor made during prosecution that could have been read more broadly.
"Derived input" was defined as information requested by a computer application or program, as opposed to information "desired" by a user.
Finally, the Court noted a problem with the defendants' presentation of the evidence that will be remedied by the Local Patent Rules. Defendants cited to documents within the prosecution history by title, as opposed to using Bates numbers, making it hard for the Court to find the relevant portions of the 250 page prosecution history. Local Patent Rule 4 requires that parties file a Joint Appendix as part of the claim construction process that is paginated and includes the prosecution history, among other documents. Click here for much more on the Local Patent Rules in the Blog's archives.
… Continue Reading
Geisha LLC d/b/a Japonais v. Tuccillo, No. 05 C 5529, Slip Op. (N.D. Ill. Mar. 13, 2009) (Pallmeyer, J.).*
Judge Pallmeyer denied plaintiff's motion for summary judgment regarding its Lanham Act false designation claim. Plaintiff began using the Japonais mark in conjunction with its Chicago area European/Japanese fusion restaurant in 2003. Plaintiff later opened New York and Las Vegas locations. But plaintiff did not register the Japonais mark. In 2004, defendant filed an intent to use trademark application for the Japonais mark to be used in connection with restaurants. In order to receive the registration, defendant was required to use the mark in commerce. Once that use occurred and was properly documented, defendant's mark would have a 2004 constructive use date, as opposed to the later date of actual first use. Defendant has filed a verified statement of use, so the parties agree that defendant's registration is a formality. Plaintiff, however, believed that it would succeed in a cancellation proceeding against the mark.
The Court noted that as the senior user, plaintiff had a right to use the mark in the Chicago area. But there was a question of fact as to whether plaintiff's later opened New York restaurant had sufficiently penetrated the New York market before defendant's 2004 constructive use date. Furthermore, to the extent plaintiff had actual notice of defendant's application, any rights plaintiff might have had in New York would not be enforceable against defendant. Furthermore, the Court noted that granting plaintiff's motion could result in the bizarre outcome of defendant being liable for violating plaintiff's trademark today, but tomorrow, after issuance of defendant's mark, defendant may be able to assert the trademark against plaintiff.
* For more on this case, click here to read the Blog's archives about the case or here for a Las Vegas Trademark Attorney post about the case.
… Continue Reading
Illinois Computer Research, LLC v. Google Inc., No. 07 C 5081 (N.D. Ill.) (Pallmeyer, J.).
The parties in this case filed a Stipulation of Dismissal this week -- click here to read it. Of course, details of the settlement were not disclosed. But this appears to close what had been a very contentious dispute -- click here to read the Blog's coverage of the case.
One other note about the case, I had been meaning to cover plaintiff's motion to strike some of defendant's pleadings for using variations of the term "shell corporation," arguing that the term is derogatory in a manner similar to the "patent troll" moniker. Judge Pallmeyer ruled on the motion in a Minute Order stating that the Court would no longer use the terms, but denying the motion to strike. Because the Minute Order does not provide much analysis and because the issue was already covered very well by Joe Mullin at The Prior Art blog -- click here to read Mullin's post -- I will not do a separate post on the motion. But if you are interested in the historical, legal use of the term, the pleadings on the motion are an excellent information source.
… Continue Reading
Capitol Indemnity Corp. v. Elston Self Serv. Wholesale Grocs., Inc., No. 04 C 6536, 2008 WL 696919 (N.D. Ill. Mar. 13, 2008) (Pallmeyer, J.).
Judge Pallmeyer held that the advertising injury claim in plaintiff Capitol Indemnity's ("CI") insurance policy required that it defend defendants the "Elston Grocery" defendants in the underlying trademark infringement, unfair competition and Illinois Deceptive Trade Practices Act ("IDTPA") claims. In the underlying litigation, Lorillard Tobacco accused Elston Grocery of selling counterfeit Newport cigarettes using Newport cigarette advertisements.
The advertising injury clause covered infringement of "copyright, title, or slogan" and "[m]isappropriation of advertising ideas." The Court held that "title" does not mean just the title of a work, but also encompasses, among other things, trademarks and names. CI, therefore, had a duty to defend Elston Grocery against Lorillard's trademark infringement claims. A duty to defend was also created by the trademark infringement claims because they accused Elston Grocery of misappropriating Lorillard's advertising ideas - its trademarks and advertisements.
CI argued that there was an exclusion for allegedly intentional acts. But the Court held the exclusion did not apply, even though Lorillard pled intent, because intent was not required for trademark infringement.
Additionally, it did not matter that the policy covered only compensatory damages. Lorillard sought punitive damages, but they would only be awarded if compensatory damages were awarded. So, the punitive damages exclusion did not alter CI's duty to defend.
Finally, the Court declined to rule on indemnity because Lorillard's claims had not been finally resolved. An indemnity ruling regarding an ongoing case was inappropriate because it would be an advisory opinion.
… Continue Reading