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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Preliminary Injunction

Preliminary Injunction Does Not Apply to Redesigns as Long as They are Not Colorable Imitations

Posted in Claim Construction, Local Rules

Scholle Corp. v. Rapak LLC, No. 13 C 3976, Slip Op. (N.D. Ill. Jul. 24, 2014) (Kendall, J.).

Judge Kendall ruled on numerous motions filed after the Court granted a preliminary injunction in this patent case.  Of particular note, the Court held as follows:

  • The Court granted defendant Rapak’s motion to construe more than five claim terms, despite Rapak’s failure to comply with the Local Patent Rules by identifying which terms were case dispositive.  The Court did so despite Rapak’s deficiencies to avoid further delay in the case.
  • The Court ordered Rapak to show cause why Rapak should not be held in contempt for violating the Court’s preliminary injunction by shipping enjoined smoothie valves after the date of the preliminary injunction.  The Court held that the fact that no bond had been set or provided was not a reason that Rapak could delay compliance.  That was especially true because Rapak did not originally raise the bond, the Court did sua sponte.
  • The Court granted Rapak’s motion clarifying that the preliminary injunction only applies to the smoothie valves that were before the Court in the preliminary injunction proceedings and colorable imitations thereof.  The Court, however, declined to rule upon whether Rapak’s redesigned smoothie valves were colorable imitations of the current smoothie valve.
  • The Court granted Rapak’s motion to amend a counterclaim seeking a declaratory judgment that its redesigned smoothie valve did not infringe.
  • The Court denied Rapak’s motion to strike Scholle’s new proposed claim constructions in its response brief.  While they technically did not follow the Local Patent Rules requirements that the parties disclose and confer regarding their respective constructions, Rapak either had notice of the constructions or they were an explanation of the ordinary meaning which Scholle originally set out as the construction.

No Irreparable Harm Where Plaintiff Delays Seeking Injunction

Posted in Uncategorized

Real-Time Reporters, P.C. v. Sonntag Reporting Servs., Ltd., No. 13 C 5348, Slip Op. (N.D. Ill. Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied plaintiff Real-Time Reporters’ (“RTR”) preliminary injunction motion in this Lanham Act matter involving RTR’s REAL-TIME REPORTERS trademark.  Defendant Sontag Reporting Services (“SRS”) use of the name “Chicago-area Realtime Reporters” alleged infringed RTR’s REAL-TIME REPORTERS trademark. 

RTR’s slow actions belied its claims of irreparable harm.  RTR allegedly learned of SRS’s use of the mark in April 2013, but did not sue until late July 2013, did not seek a temporary restraining order and waited almost a month before filing the instant motion for preliminary injunction. 

The Court also held that in light of the Supreme Court’s eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) decision, it was unclear that the presumption of irreparable harm in trademark cases remained. 

Regarding RTR’s likelihood of success, the Court held that RTR’s REAL-TIME REPORTERS mark appeared to be generic.

Balancing the harms favored SRS because it would be harmed by an injunction, while RTR had already shown it would not be significantly harmed by its delay in filing suit and its delay in seeking a preliminary injunction.

No Irreparable Harm Where Plaintiff Delays Seeking Injunction

Posted in Damages

Real-Time Reporters, P.C. v. Sonntag Reporting Servs., Ltd., No. 13 C 5348, Slip Op. (N.D. Ill. Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied plaintiff Real-Time Reporters’ (“RTR”) preliminary injunction motion in this Lanham Act matter involving RTR’s REAL-TIME REPORTERS trademark.  Defendant Sontag Reporting Services (“SRS”) use of the name “Chicago-area Realtime Reporters” alleged infringed RTR’s REAL-TIME REPORTERS trademark. 

RTR’s slow actions belied its claims of irreparable harm.  RTR allegedly learned of SRS’s use of the mark in April 2013, but did not sue until late July 2013, did not seek a temporary restraining order and waited almost a month before filing the instant motion for preliminary injunction. 

The Court also held that in light of the Supreme Court’s eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) decision, it was unclear that the presumption of irreparable harm in trademark cases remained. 

Regarding RTR’s likelihood of success, the Court held that RTR’s REAL-TIME REPORTERS mark appeared to be generic.

Balancing the harms favored SRS because it would be harmed by an injunction, while RTR had already shown it would not be significantly harmed by its delay in filing suit and its delay in seeking a preliminary injunction.

Preliminary Injunction Partially Entered in Trademark Suit

Posted in Trial

DR Distributors, LLC v. 21 Century Smoking, Inc., No. 12 C 50324, Slip Op. (N.D. Ill. Mar. 14) (Kapala, J.).

Judge Kapala granted the agreed portions of plaintiff’s motion for preliminary injunction in this trademark case involving plaintiff’s 21ST CENTURY SMOKE and defendant’s 21 CENTURY SMOKING marks, as follows:

  • The parties agreed to a reciprocal preliminary injunction enjoining each party from using the other’s mark or making any statements that its products were affiliated with the other party.
  • The Court refused to enter the portion of the agreed injunction in which both parties agreed not to use marks confusingly similar to its opponent’s mark because that definition could encompass each party’s mark.
  • Defendant agreed not to attend the ASD Trade Show in Las Vegas.
  • The Court denied the requested injunction as to any use by defendant of its 21 CENTURY SMOKING mark. 
  • At an early stage of the case, both parties strongly contested who first used the mark.  As a result, plaintiff seemed as likely to lose its claim as to win it, but that was enough to clear the “low threshold” of showing more than a negligible chance of success.
  • With respect to irreparable harm, there was no evidence of misconduct by defendant, and the agreed injunction would resolve any possibility of misconduct going forward.
  • Finally, the balance of harms weighed in defendant’s favor and against a preliminary injunction. 


Preliminary Injunction Entered Against Defendants Failing to Appear

Posted in Trial

Algierz, Inc. v. The Source of Apparel, Inc., et al., No. 12 C 5361, Slip Op. (N.D. Ill. July 13, 2012) (Chang, J.).

Judge Chang ruled upon plaintiff Algierz’s motion to extend temporary restraining orders (“TROs”) and for preliminary injunctions (“PIs”) in this patent case as follows:

  • The Court denied to extend the TRO and denied a PI as to defendant Source of Apparel and an individual defendant because there was insufficient evidence that those defendants knew of the asserted direct infringement.  The defendants therefore, could not be liable for contributory infringement.
  • As to defendant Selah USA and another individual defendant, the TRO was extended based upon evidence of direct infringement.  The Court deferred ruling upon the PI until expiration of the TRO to give the defendants time to defend against the PI and to finalize settlement.
  • Defendant Hip Hop Trading LLC and two other defendants, each of whom did not appear, had a PI entered.  They were given leave to file motions to dissolve the PIs upon their “prompt appearance.”
  • The Court ordered Algierz and defendant D&J International and another defendant to submit their agreed, proposed PI for the Court’s consideration.

Copyright Infringement Claims Do Not Guarantee Preliminary Injunction

Posted in Pleading Requirements

Frerck v. John Wiley & Sons, Inc., No. 11 C 2727, Slip Op. (N.D. Ill. Feb. 2, 2012) (Dow, J.).

Judge Dow denied plaintiff’s motion for a preliminary injunction to prevent further alleged infringement of plaintiff’s photographs and denied defendant John Wiley & Sons’ motion to dismiss plaintiff’s fraud claim. There is not an automatic rule that ongoing copyright infringement warrants an injunction. Instead, plaintiff must meet its burden as to each factor.

Plaintiff showed a likelihood of success on the merits that: 1) he has copyrighted works; 2) John Wiley & Sons only had a limited right to use them; and 3) some were used without any license. But plaintiff could not show irreparable harm. Plaintiff was in the business of licensing photographs and any harm could be remedied with money damages. The Court did, however, note that plaintiff would be in a strong position to recover his attorneys’ fees should he succeed on the merits because of the ongoing nature of the alleged violation. But without irreparable harm, there could be no preliminary injunction.

Motion to Dismiss

Plaintiff’s fraud claim was premised upon request letters for plaintiff’s photographs and later uses of those photographs. The required intent to deceive was pled only on information and belief. Plaintiff’s contentions were “barely” sufficient, but were sufficient. It was not clear whether the alleged acts were just broken promises or intentional, fraudulent acts.

“Conclusory” Arguments are Fatal to Preliminary Injunction

Posted in Legal News

EnVerve, Inc. v. Unger Meat Co., No 11 C. 472, Slip Op. (N.D. Ill. Apr. 26, 2011) (Castillo, J.).

Judge Castillo denied plaintiff EnVerve’s motion for preliminary injunction in this copyright infringement action involving advertisements. The Court first held that EnVerve had only shown a minimal likelihood of success on the merits:

  • EnVerve’s arguments were "very conclusory" and that "brevity [was] fatal."
  • There was a significant dispute regarding who owned the copyrights based upon a contract between the parties. 
  • EnVerve’s evidence of copying was an unsupported conclusion that defendant use constituted copying.

  • EnVerve failed to address defendant’s best argument – that EnVerve’s claim sounded in contract, not copyright. 

The Court also held that there was no irreparable harm:

  • Money damages were an adequate remedy and were readily calculable based upon the contract, EnVerve’s invoices and defendant’s payments.
  • EnVerve’s claims are reputational harm and defendant’s potential insolvency were too speculative to be considered irreparable harm.

No Presumption of Irreparable Harm From Breach of a Non-Compete

Posted in Legal News

E.B.N. Enters., Inc. v. C.L. Creative Images, Inc., No. 09 C 6279, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.)

Judge Coleman granted in part plaintiff’s ("Fantastic Sams") preliminary injunction motion in this case involving a non-compete agreement related to a terminated Fantastic Sams hair salon franchise. The Court granted a preliminary injunction regarding Fantastic Sams’ operations manual which defendants were contractually required to return to Fantastic Sams. The Court denied the remainder of the requested injunction. Fantastic Sams alleged that defendant’s decision to operate a new salon at the same location breached the two-year requirement that defendants not operate a salon within five miles of the prior Fantastic Sams location. Fantastic Sams made an uncontested showing that defendants breached that agreement. But Fantastic Sams did not sufficiently show irreparable harm. There is no question of irreparable harm from breach of a non-compete agreement. Fantastic Sams did not ever show that another franchise wanted defendants’ territory. Finally, there was no evidence that defendants’ customers continued using defendants because of features unique to Fantastic Sams.

Presumed Harm Not Enough for Injunction Where Plaintiff shows Little Likelihood of Success

Posted in Legal News

Kastaris v. Eggstacy LLC, No. 10 C 35614917, Slip Op. (N.D. Ill. Oct. 20, 2010) (Gilbert, Mag. J.).

Judge Gilbert denied plaintiff’s motion for preliminary injunction in this Lanham Act matter. Plaintiffs claimed infringement of its Yolk trademark for a breakfast restaurant by defendants’ New Yolk New Yolk ("NYNY") breakfast restaurant. Yolk was not generic when used to describe restaurants, although it was generic for the center of an egg.

Plaintiff did not show a likelihood of success on the merits. First, the marks were dissimilar both visually and aurally. While both marks use "Yolk", NYNY is intended to invoke New York, New York.

Second, the area and manner of use is not concurrent. Yolk is in downtown Chicago, while NYNY is in the western suburbs of Chicago. Third, based upon strong reviews for both sets of restaurants, consumer were likely to exercise reasonable care in choosing to dine at either restaurant. Fourth, plaintiff had established a Chicago-area reputation for Yolk, giving the trademark some weight. Fifth, plaintiff alleged evidence of actual confusion was not supported by sufficient evidence. Sixth, defendant knew about Yolk before opening NYNY, but there was no evidence showing passing off. NYNY’s theme was clearly New York City, and Yolk’s was not.

Balancing the factor, the Court held that plaintiffs did not have greater than negligible chances of showing likelihood of confusion. Plaintiffs were, therefore, required to show a proportionally larger irreparable harm, the presumption of irreparable harm in Lanham Act cases was not alone sufficient. Because of the significant harm to defendant in changing its name, a preliminary injunction was not appropriate.

Individual Defendant May Not Appear Pro Se on Behalf of His Related Party Co-Defendants

Posted in Pleading Requirements

Bernina of Am., Inc. v. Imageline, Inc., No. 10 C 44917, Slip Op. (N.D. Ill. Aug. 18, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte issued an order in response to defendant’s response to plaintiff’s motion for a temporary restraining order and a preliminary injunction. The Court cautioned that even though individual defendant Riddick was the sole officer and employee of each co-defendant, the corporate defendants required representation because a corporation cannot represent itself pro se.

The Court gave defendants time to identify whether Riddick was a lawyer and to find new counsel, if not. Until that time, the corporate defendants were treated as non-responding parties to plaintiff’s injunction motions.

Preliminary Injunction Denied Because of Noninfringement Evidence

Posted in Legal News

Viskase Cos., Inc. v. World Pac Int’l. AG, No. 09 C 5022, Slip Op. (N.D. Ill. Aug. 9, 2010) (Bucklo, J.).

Judge Bucklo denied defendants’ motion for preliminary injunction based upon World Pac’s patent infringement counterclaim regarding impermeable sausage casings. Viskase’s research and design documents referenced "World Pac knock-off[s]," "World Pac replacement[s]" and "World Pac me-too" products. The key infringement issue was whether Viskase’s accused casings were "impermeable" as that term was construed by the Court. The parties set up a "classic battle of the experts" with competing testing disputing whether the accused sausage casing allowed a measurable weight loss, and therefore was permeable. While a jury would ultimately have to weigh the evidence, Viskase presented "more than insubstantial evidence" that the accused casings lost measurable weight. And Viskase’s testing was done outside of litigation, lending it additional credibility. World Pac also failed to present sufficient evidence regarding loss of flavor and taste, the other "impermeable" characteristics. Viskase, therefore, raised a substantial noninfringement question. Furthermore, World Pac did not put forth sufficient evidence to warrant a preliminary injunction. Because Viskase raised a substantial question regarding noninfringement, the Court declined to examine Viskase’s other defenses or the other element of a preliminary injunction.

Court Enters Preliminary Injunction as to Plaintiff’s “Lettuce” Marks

Posted in Legal News

Lettuce Entertain You Enters., Inc. v. Leila Sophie AR, LLC, No. 09 CV 2582, Slip. Op. (N.D. Ill. Feb. 26, 2010), (Lefkow, J.). 

Judge Lefkow granted plaintiff Lettuce Entertain You ("LEYE") a preliminary injunction against defendants’ use of the name "Lettuce Mix" in their salad bar restaurant in Lincoln Park. LEYE argued that the defendants’ "Lettuce Mix" name would infringe its family of "Lettuce" marks for use in restaurant services.

Likelihood of Success


LEYE’s Lettuce marks were not generic as used for restaurant services. While some of LEYE’s meals included lettuce, LEYE was not in the business of lettuce sales. And defendant’s intent to use its Lettuce Mix name was sufficient for use in commerce.


The Court held there was a likelihood of confusion. Both parties marks focus upon "lettuce" and use it as a pun for "let us." This is true even though LEYE’s logo, which includes a waiter opening a covered a dish was different from defendant’s logo. Additionally the parties’ services in the restaurant industry were similar.


Both parties used the marks in the same area and manner. They directly compete for restaurant customers, and at least one of LEYE’S 70 restaurants is within one mile of Lettuce Mix. To the extent both parties cater to patrons seeking inexpensive, casual meals, the patrons are assumed to use a lesser degree of care, even though some of LEYE’s restaurants are more expensive.

LEYE’s family of Lettuce markers was strong, and defendants’ argument to the contrary was their genericness argument that the Court previously denied.


LEYE, however, did not provide evidence of actual confusion, although actual confusion is not required. And there was no evidence that defendants intended to pass themselves off as affiliated with LEYE. Finally, defendants’ was not a fair use because lettuce was not descriptive of their service.


Irreparable Harm

Trademark infringements are presumed to result in irreparable harm. LEYE would, therefore, have been irreparably harmed by any trademark infringement from defendants.


Balancing Harm

Defendants would not suffer significant harm from the injunction given that they had already stopped using the allegedly infringing name. And any loss of defendants’ goodwill would be attributable to their own actions.


Public Interest

The public interest would not be harmed by the preliminary injunction. Enforcement of trademarks serves the public good, and LEYE had shown a "substantial" likelihood of confusion.

Close Balance of Harms Prevents TRO, but Expedited Discovery Granted

Posted in Legal News

Scala’s Original Beef & Sausage Co., LLC v. Alvarez d/b/a Michaelangelo Foods, No. 09 C 7353 (N.D. Ill. Dec. 22, 2009 (Dow, J).

Judge Dow denied plaintiff Scala’s motion for a temporary restraining order ("TRO") in this Lanham Act case regarding Scala’s and Scala’s Preferred marks for giardiniera.

Likelihood of Success

Scala’s made a "fairly strong showing" that defendants’ (collectively "Michaelangelo Foods") labels using the marks were likely to cause consumer confusion. Scala’s also met its burden to show some likelihood of success that its trademark license to Michaelangelo Foods was terminable at will, even though the license lacked a termination provision. Finally, Scala’s showed some likelihood of success as to its argument that licensee estoppel barred Michaelangelo Foods’ challenges to Scala’s marks. The Court noted, however, that at the early stages of the litigation it appeared that Michaelangelo Foods might be able to overcome licensee estoppel upon equitable grounds.

Irreparable Harm

Irreparable harm is presumed in trademark cases, and Michaelangelo Foods did not challenge the presumption. Instead, Michaelangelo Foods argued that Scala’s harm was not sufficiently immediate because Scala’s was not selling competing products. But the fact that Scala’s did not make a product, did not eliminate the harm. Scala’s was harmed by not being able to control Michaelangelo Foods’ quality. Additionally, Scala’s was using the marks with other products.

But the Court noted that the facts of this case mitigated the strength of Scala’s irreparable harm. In particular, Scala’s licensed the marks at least in part because Scala’s was unable to consistently pay suppliers or deliver products to its customers. And Michaelangelo Foods took substantial steps to fix those relationships, thereby enhancing the marks’ value.

Balance of Harm

The Court held that Michaelangelo Foods would be harmed by a TRO. A TRO would allow the sale of existing inventory, but individual defendant invested a significant portion of his savings into the business and the business had relatively low profits. A TRO would, therefore, likely do substantial damage to Michaelangelo Foods’ finances. This financial harm combined with Michaelangelo Foods’ efforts to rebuild the marks and the business tipped the balance of harm in Michaelangelo Foods’ favor.


While it was a close call, the Court denied a TRO. In view of the importance of a decision to both parties, the Court set an expedited discovery, briefing and hearing schedule for Scala’s preliminary injunction motion.

Greater than Negligible Likelihood of Success Sufficient for Preliminary Injunction

Posted in Legal News

Aguila Records, Inc. v. Nueva Generacion Music Group, Inc., No. 07 C 3399, Slip Op. (N.D. Ill. Nov. 4, 2009) (Der-Yeghiayan, J.).

Judge Zagel granted in part and denied in part plaintiffs’, collectively "Aguila Records") motion for a preliminary injunction in this trademark and copyright infringement dispute.  Aguila Records, a music management and recording agency, was in a dispute with defendants’ musical group Alacranes Musical (“Alacranes”).  Based upon that dispute, Aguila Records sought a preliminary injunction preventing defendants’ use of the Alacranes word mark and scorpion logo.

                                               Likelihood of Success

Because the parties agreed that the Alacranes marks were protectable and that there was a likelihood of confusion if two groups used the marks, the only likelihood of success issue was whether Aguila Records owned the marks.  The Court held that the proof of ownership was at best "in conflict" and that the agreements were contradictory.

                                               Irreparable Harm

The Court held that a preliminary injunction against performing using the Alacranes Musical mark would irreparably harm defendants who would be forced to negotiate with Aguila Records for rights to use the name or change their name, but it was undisputed that the band’s success was intertwined with its name.  Alternatively, if the Court did not grant an injunction defendants would continue performing using the name and would likely continue to grow in popularity and earn additional income, which would be lost to Aguila Records.  But that harm would not be irreparable because it could be repaid financially. 


While Aguila Records did not demonstrate a strong likelihood of success, it did demonstrate a "greater than negligible chance of winning."  The Court, therefore, enjoined defendants from using the marks on compact disks, other recording media and merchandise such as t-shirts and hats, all uses for which Aguila Records had trademark registrations.  But the Court did not enjoin the use of the marks for live performances because Aguila Records did not have registered marks for live performances and the balance of harms tipped in defendants’ favor for live performances.

Point of Sale was Situs of Injury in Motion to Transfer Analysis

Posted in Legal News

Bajer Design & Marketing, Inc. v. Whitney Design,, Inc., No. 09 C 1815, Slip Op. (N.D. Ill. Jun. 26, 2009) (Zagel, J.).

Judge Zagel denied defendant Whitney Design’s ("Whitney") Section 1404(a) motion to transfer plaintiff Bajer Design & Marketing’s ("Bajer") patent infringement case to the Eastern District of Missouri, where Whitney filed a declaratory judgment case after being served with Bajer’s complaint.  Although Bajer was not a Chicago-based company, its choice of forum still deserved significant deference because the alleged injury occurred in Chicago.  Bajer filed the complaint after identifying the accused infringement at the International Housewares Show in Chicago.  Whitney argued that the accused infringement occurred in the St. Louis area where Whitney researched and designed the accused clothes hampers.  But the Court held that the point of sale, Chicago, was the situs of the injury.  

Whitney also argued that convenience of the parties weighed in favor of transfer because all of its documents and people were in the St. Louis area.  But the Court held convenience weighed against transfer because the parties could transfer documents electronically and, in any event, the documents would have to be sent to the parties’ counsel across the midwest.  And the convenience of third parties also weighed against transfer.  The only third party, the inventor, lived in Iowa almost equidistant from Chicago and St. Louis.

Finally, the interests of justice did not weigh in favor of transfer.  Whitney argued that time to trial in the Eastern District of Missouri was significantly faster than in the Northern District of Illinois.  But the Court held that those statistics were irrelevant because they were for all cases, not split up by case types. 

The Court denied Bajer’s preliminary injunction motion seeking to enjoin the Eastern District of Missouri case.  Because that court stayed its case pending the Northern District of Illinois’s decision on the transfer motion, there was no need to enjoin a stayed case.

Trademark Preliminary Injunction Granted

Posted in Legal News

Miyano Machinery USA, Inc. v. MiyanoHitec Mach., Inc., No. 08 C 526, Slip Op. (N.D. Ill. Sep. 5, 2008) (Kendall, J.)

Judge Kendall granted a preliminary injunction against defendants’ (collectively “MiyanoHitec”) continued use of plaintiff Miyano Machinery’s (“MMU”) MIYANO trademarks. MMU proved a sufficient likelihood of success on its trademark infringement claims. Despite the fact that Miyano was the surname of the individual defendants, it was protectible. While personal names are not generally protectible, MMU’s Miyano marks had acquired secondary meaning, making them protectible. And individual defendants originally consented to MMU registering the marks.

MMU’s “Winged M” mark was not abandoned when MMU changed the font of the Miyano name in the mark. And MMU showed a likelihood of confusion. MMU’s and MiyanoHitec’s marks were very similar and were used on similar products – lathes – that were to be sold in similar channels. MMU also offered evidence of a few acts of actual confusion. And the evidence showed that MiyanoHitec likely intended to benefit from the likely consumer confusion.

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Court Compels Discovery and Withholds Judgment on Sanctions

Posted in Legal News

Square D Co. v. Elec. Soln’s, Inc., No. 07 C 6294, Slip Op. (N.D. Ill., Jul. 22, 2008) (Moran, Sen. J.).


Judge Moran granted plaintiffs’ motion to reopen discovery and compel production of certain documents, but tabled plaintiff’s motion for sanctions. Plaintiffs alleged that defendants were selling counterfeit electrical products using plaintiffs’ trademarks. The parties entered an agreed preliminary injunction pursuant to which defendant agreed not to sell any products with plaintiffs’ trademarks, and to plaintiffs’ inspection of defendants’ inventory on or before February 29, 2008, unless the parties agreed to a later date.

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Construction Reversed Despite “Commendable” Analysis

Posted in Claim Construction

Chamberlain Group, Inc. v. Johnson Controls Interiors LLC, No. 2007-1314-1467, Slip Op. (Fed. Cir. Feb. 19, 2008).

The Federal Circuit reversed Judge Moran’s construction of “binary code” and, therefore, reversed the limited preliminary injunction entered by the Northern District – click here and here for the Blog’s posts regarding the injunction. The Northern District construed “binary code” as a code represented by two values, but not necessarily a binary number – click here and here for the Blog’s posts regarding the Northern District’s claim and construction opinions. The Federal Circuit praised the Northern District’s claim construction analysis, but reversed the construction:

The district court commendably strove to follow this court’s rules for claim construction. See Phillips, 415 F.3d at 1318-19. In this regard, the trial court weighed the intrinsic evidence along with the extrinsic evidence and properly sought to avoid importing a limitation from the specification into the claims. See id. Nonetheless, this court discerns that the ‘544 patent specification gives particular limiting meanings to the language in the claims.

The Federal Circuit held that “binary code” required a binary (or base two) number. Otherwise, any values would meet the limitation because all values, whether in base two, three, the more standard ten or any other, are represented by computers using two values – 1 and 0. Because the revised claim construction called into question the Northern District’s likelihood of success analysis, the Federal Circuit reversed the preliminary injunction.

Injunctions Post-eBay

Posted in Legal News

Brian Higgins’s Maryland IP Law Blog post about the progeny of In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), inspired me to do follow up posts identifying Northern District cases discussing recent major IP decisions.  The first looks at cases discussing eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).  Here they are:*

For further analysis of post-eBay decisions, check out my post about Michael Smith’s analysis (click here) and my post discussing Ray Nimmer’s thoughts on the potential for compulsory licensing regimes because of eBay (click here).

*  A brief note on methodology:  this was not a thorough study and does not include cases that granted or denied injunctions without discussion.  For a more comprehensive list of decisions nationwide (updated through the end of 2007) go to the Fire of Genius.

No PI Because Alleged Irreparable Harm Could Not be Remedied Through the Suit

Posted in Legal News

Geneva Int’l Corp. v. Petrof, Spol, S.R.O., No. 07 C 4214, 2007 WL 4522621 (N.D. Ill. Dec. 14, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Geneva International’s preliminary injunction motion and the parties’ cross motions for summary judgment on Geneva’s anticipatory breach of contract claim.* Geneva signed a variety of agreements with defendant Petrof making Geneva the exclusive U.S. distributor of Petrof’s pianos and the exclusive U.S. licensee of the “Petrof” trademark for use with Petrof’s pianos, through 2012. In 2007, Petrof gave Geneva the required six months notice to terminate the parties’ contract (but not their trademark license agreement which did not have the same termination provisions) and notified Geneva that Petrof planned to start selling its pianos using its trademark in the U.S.

Geneva sough a preliminary injunction to stop Petrof’s U.S. sales because Geneva continued to be the exclusive licensee of the Petrof trademark. But the Court held Geneva would not be irreparably harmed without the preliminary injunction. Geneva’s alleged irreparable harm — lost goodwill of its customers because Geneva would not be Petrof’s exclusive distributor — was caused by the contract, not breach of the trademark license. Petrof’s contract termination meant that Geneva could not be Petrof’s U.S. distributor, exclusive or otherwise. Because the alleged irreparable harm did not stem from the license at issue, the Court denied the injunction.

* Because they are not IP-specific, I will not fully address the contract issues. I will say that the disputes arose from the fact that the three agreements were signed on the same day, but did not all mention each other and had differing integration clauses, some mentioning the other agreements and some not. Practice tip: When drafting parallel agreements, make very clear how the agreements relate or that they do not.

PI/TRO Governed by Their Terms

Posted in Legal News

American Fam. Mut. Ins., Co. v. Roth, No. 05 C 3839, 2007 W LL377335 (N.D. Ill. Aug. 16, 2007) (Cole, Mag. J.).

Judge Cole recommended that plaintiff’s motion be granted in part requiring defendants to comply with the Court’s preliminary injunction and holding defendants in contempt for failing to comply with the Counts TRO and PI. The Court first explained that no injunction could be a general prohibition against using trade secrets. Rather, an injunction – whether temporary, preliminary or permanent – must include specific recitals limiting defendants’ actions or requiring that actions be performed. The Court then analyzed whether defendants’ actions or inactions violated specific provisions of the TRO and the PI issued by the Court. The Court reported that defendants had retained possession of plaintiff’s customer list and defendants failed to provide a list of their customer contacts with sufficient detail. The Court, therefore, recommended that defendants be held in contempt for failing to comply with the TRO and the PI.

Neither Federal Circuit Split Nor KSR Warranted Stay of a Preliminary Injunction Pending Appeal

Posted in Legal News

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 1549498 (N.D. Ill. May 24, 2007) (Coar, J.).

Judge Coar denied defendant Sandoz, Inc.’s ("Sandoz") motion to stay the Court’s preliminary injunction pending appeal to the Federal Circuit pursuant to Fed. R. Civ. P. 62(c).  The Court previously granted plaintiff Abbott’s motion for a preliminary injunction (you can read more about that decision and related cases in the Blog’s archives).  The PI enjoined defendant Sandoz from selling a generic version of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  Sandoz argued that the PI should be stayed pending appeal because of conflicting Federal Circuit law regarding the Court’s claim construction and because of the Supreme Court’s KSR decision. 

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Band Granted a Preliminary Injunction Allowing Choice of Producers

Posted in Legal News

Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).

Judge Moran granted plaintiffs a preliminary injunction preventing defendants from interfering with plaintiffs’ right to record new music with producers or record labels of plaintiffs’ choice.  The Court also denied defendants an opposing preliminary injunction that would have prevented plaintiffs from recording new music with anyone other than defendants.  Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively "HH") — in addition to clicking on "Hawthorne Heights" to go to the band’s website, you can also read about them on Wikipedia, listen to them online or see them live June 12th in Urbana, Illinois’s Canopy Club.  HH entered into a contract (the "Agreement") with defendants to produce and promote four albums.  The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured.  HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH.  This suit arose from that dispute.  Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH’s letter allegedly terminating the Agreement and related state law claims.  In a prior opinion (discussed in the Blog’s archives), the Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which left HH free to record other songs or records with another company during the life of the Agreement.  Based upon the Court’s ruling, HH moved the Court for a preliminary injunction confirming that defendants could not interfere with any of HH’s efforts to record new music with a third party.  Defendants cross-moved to prevent HH from working with anyone but defendants.  The Court held that HH showed a likelihood of success on the merits based upon the Court’s prior ruling that the Agreement was not exclusive.  Similarly, the Court held that defendants did not show a likelihood of success in light of the same ruling.  Because defendants had no likelihood of success, their motion for a PI was denied.  Defendants argued that HH could not base a motion for preliminary injunction upon claims for declaratory relief, but the Court held that numerous courts had granted preliminary injunctive relief based upon claims for declaratory judgment.

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Court Required to Enter Preliminary Injunction Violating Due Process

Posted in Legal News

CertainTeed Corp. v. Williams, __ F. Supp.2d __, 2007 WL 1297165 (N.D. Ill. Apr. 3, 2007) (Holderman, C.J.).

Pursuant to a remand and forthwith mandate from the Seventh Circuit, Chief Judge Holderman preliminarily enjoined defendant, Williams, from continued employment by plaintiff’s competitor, IKO Industries, Inc. ("IKO"), based upon a non-compete agreement ("Agreement") defendant signed with his previous employer, CertainTeed Corp. ("CT").  But the Court made clear that the preliminary injunction violated defendants’ right to due process and violated the Erie doctrine.  When Williams began working for CT, he signed the Agreement which required, among other things, that for one year after working for CT, Williams not perform work:  (i) regarding any product, process or service that is competitive with or similar to any product, process or service Williams was involved with at CT; or (ii) regarding any product, process or service of CT’s for which Williams had access to CT’s confidential information during his employment.  After leaving CT’s employ, Williams took a position with IKO.  Based upon that employment, CT sued Williams and sought a preliminary injunction to prevent Williams’s continued employment by IKO.

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