Tag Archives: St. Eve

7th Cir. Judicial Conference: Northern District Judges Offer Practice Tips

By R. David Donoghue on June 19th, 2013 Posted in Legal Seminars, Uncategorized

With a hat tip to the Chicago Daily Law Bulletin’s coverage of the 7^th Circuit Judicial Conference, Northern District Judges Durkin, St. Eve, and Tharp offered several valuable practice tips for litigating before federal courts, that apply as well for IP litigators as for any litigator.

Judge Durkin:

Reduce litigation costs. For example, there is no need to appear for brief status conferences, when you can appear by phone and cut out significant travel costs.
Think carefully before filing summary judgment motions. They are a “huge expense” and counsel have no reason not to file them.
Consider consenting to trial before a magistrate judge. Magistrate judges can offer faster times to trial because they do not have to focus on the constitutional right to a speed trial in criminal matters. He explains “[y]ou get great judges. Same law. Same juries.”

Judge St. Eve:

It is important to cooperate with opposing counsel. “Be nice. It’s not that hard.”

Judge Tharp

Look at the judge’s website. Ignorance of the judge’s procedures and requirements does not start counsel off well with the judge.
Instead of starting a brief with a recitation of each pleading and ruling, offer a “pithy, short, concise” statement of the issue to be decided.

Rule 11 Sanctions for Failing to Purchase the Accused Product

By R. David Donoghue on April 8th, 2013 Posted in Trial

Smart Options, LLC c. Jump Rope, Inc., No. 12 C 2498, Slip Op. (N.D. Ill. Feb. 11, 2013) (St. Eve, J.).

Judge St. Eve granted defendant Jump Rope’s Fed. R. Civ. P. 11 motion for sanctions in this patent case. The Court previously granted Jump Rope summary judgment of noninfringement and plaintiff Smart Options appealed to the Federal Circuit. As an initial matter, the Court held that while Smart Options’ notice of appeal divested the Court of jurisdiction generally, the Court retained jurisdiction over Jump Rope’s Rule 11 motion.

The Court previously held that Jump Rope did not infringe because it did not sell options to purchase items at a later date. Instead, Jump Rope sold the immediate ability to go to the front of a line for an event or location. Smart Options could have ascertained that inexpensively by downloading Jump Rope’s free app and purchasing a jump. Instead, Smart Options provided generalized descriptions of it investigations, including reviewing Jump Rope’s website Terms of Use. And Smart Options’ patent claims require paying an “option fee” to acquire an “option” to purchase something. Furthermore, faced with Jump Rope’s explanation that it did not infringe at the outset of the case via Jump Rope’s Rule 11 motion, Smart Options continued to prosecute its case and still did not buy a “jump.”

Smart Options’ reliance upon Judge Lefkow’s constructions in a similar case did not protect Smart Options. Lefkow did not construe “option.” And the construction of “option” Smart Options allegedly used as part of its Rule 11 investigations was inexplicably different than the construction Smart Options advanced before the PTO and before Judge Lefkow.

The Court, therefore, granted Jump Rope’s Rule 11 motion and awarded Jump Rope its reasonable attorney’s fees and costs for defending the case and for the Rule 11 motion giving Jump Rope leave to file a petition setting out and supporting its fees and costs.

Elton John’s “Nikita” Does Not Infringe Copyright in Song “Natasha”

By R. David Donoghue on February 15th, 2013 Posted in Pleading Requirements

Hobbs v. John a/k/a Sir Elton Hercules John, No. 12 C 3117, Slip Op. (N.D. Ill. Oct. 29, 2012) (St. Eve, J.).

Judge St. Eve dismissed plaintiff’s copyright and related state law claims against Elton John, Bernard Taupin and Big Pig Music (collectively “defendants”). Plaintiff argued that his copyrighted song “Natasha” inspired by his romantic involvement with a Ukranian waitress during the Cold War in the 1980s was infringed by defendants’ song “Nikita.” Copyrighted a few years later, “Nikita” allegedly describes a love affair between a Western man and an East German woman during the Cold War. Defendants argued that the songs were not substantially similar under any set of facts and, therefore, the case should be dismissed. The Court considered the lyrics of the songs pursuant to Fed. R. Civ. P. 10(c) because they were referenced in the complaint and because plaintiff did not object to the Court’s consideration of the lyrics.

The Court held that the lyrics were objectively not substantially similar for at least the following reasons:

• An impossible Cold War-era love affair, a postal theme, and references to a woman’s pale eyes were not protectable because they were “rudimentary, commonplace, and standard under the scenes a faire doctrine.”

• The Court listed several songs that included Cold War-era love affairs from the early 1980s – Devo, “Cold War,” http://www.lyricsfreak.com/d/devo/cold+war_20039646.html (“I heard it said that all is fair, In love and war so what’s life for, The boy and girl, Two separate worlds, The endless tug of war, Uh!”); David Bowie & Brian Eno, “Heroes,” http://www.lyricsfreak.com/d/david+bowie/heroes+single+version_20962708.html (“I, I can remember (I remember), Standing by the wall (By the wall), And the guns, shot above our heads (Over our heads), And we kissed, as though nothing could fall (Nothing could fall”)).

• Additionally, the postal and pale eyes themes were expressed differently in each song.

• The use of the word “never” and the phrases “to hold you”, “you’ll never know”, “you will never know” and “I need you” were not protectable because they were not unique.

• Titles are not protectable. So, the fact that both songs had “one-word, phonetically-similar title[s] consisting of a three-syllable Russian name, both beginning with the letter ‘N’ and ending with the letter ‘A’” was not relevant to the Court’s analysis. Furthermore, both names – Natasha and Nikita – were common names and a “quick search” of the Copyright Office’s registration database showed other songs titled “Natasha” and “Nikita”.

• The Court also noted that repetition of the name of a love interest in a song was common, citing Lola and, a personal favorite of mine, Roxanne.

Once the Court filtered the non-protectable elements of each song, it found no similarities between the songs. And plaintiff’s state law claims were preempted by the Copyright Act.

Akamai Reverses (Another) Summary Judgment Decision

By R. David Donoghue on February 4th, 2013 Posted in Summary Judgment

CIVIX-DDI, LLC v. Hotels.com, No. 05 C 6869, Slip Op. (N.D. Ill. Nov. 1, 2012) (St. Eve, J.).

Judge St. Eve granted plaintiff CIVIX-DDI’s Fed. R. Civ. P. 54(b) motion to reconsider the Court’s finding of summary judgment of non-infringement. The Court’s earlier finding was based upon the undisputed facts that defendant Hotels.com’s databases did not store advertising information or video. However, based upon the Akamai decision, which the Federal Circuit decided after the Court’s earlier order, a question of fact remained as to whether a third party stored the information such that Hotel.com could have indirectly infringed.

Court Construes Pharmaceutical Terms

By R. David Donoghue on December 26th, 2012 Posted in Claim Construction

The Medicines Co. v. Mylan Inc., No. 11 C 1285, Slip Op. (N.D. Ill. Aug. 6, 2012) (St. Eve, J.).

Judge St. Eve construed the claims in this patent case related to bivalirudin. Of particular note:

“Pharmaceutical Batches” was construed as “may include a single batch, wherein the single batch is representative of all commercial batches (see generally, Manual of Policies and Procedures, Center for Drug Evaluation and Research, MAPP 5225.1, Guidance on the Packaging of test Batches at 1) made by a compounding process, and wherein the levels of, for example, Asp⁹ -bivalirudin, total impurities, and largest unknown impurity, and the reconstitution time represent levels for all potential batches made by said process. ‘Batches’ may also include all batches prepared by a same compounding process.”
“Efficiently Mixing” was construed as “a pH-adjusting solution and the first solution are mixed not using inefficient mixing conditions such as described in Example 4.”

As usual, the Court very helpfully provided a glossary of constructions at the end of the opinion. Hopefully, this is a practice every judge will adopt.

Attorneys Fees Reduced Based Upon Duplicative Work

By R. David Donoghue on December 17th, 2012 Posted in Damages, Local Rules

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 27, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Sloan’s fee petition based upon the Court’s finding that defendant Zurn had “continually refused to produce relevant documents despite prior court intervention and a clear obligation to do so . . . .” Here are the highlights:

Sloan’s counsel’s rates were reasonable, based in part upon the fact that Sloan paid the rates without expectation of indemnification or contribution by any third party. The rates were between $550 and $735 for partners, $455 to $530 for senior counsel and $310 to $370 for associates.
Sloan’s 121 hours spent on a motion for sanctions, although it was more complex than the average motion, was not reasonable. The Court awarded all of the fees for the two most junior attorneys and 20% of the senior attorneys’ fees, citing duplicative and excessive work being done, for a total of approximately $39,000.
The Court applied the same 80% reduction for senior attorney time spent on Sloan’s renewed motion for sanctions, resulting in a fee award of approximately $51,000.
The Court struck the most senior attorney’s time for Sloan’s reply brief in support of the renewed motion for sanction resulting in an award of approximately $26,500.
The Court cut the most senior attorney’s time by 50% for Sloan’s preparation of its response to Zurn’s supplemental submission. The Court reasoned that many of the tasks could have been performed by a more junior attorney.

The Court’s total award was approximately $140,000.

Copyright Act Preempts Misappropriation Claim

By R. David Donoghue on November 19th, 2012 Posted in Local Rules

Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Sep. 4, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Morningware’s motion for summary judgment as to defendant Hearthware’s Deceptive Trade Practices Act, Lanham Act and related state law counterclaims.

As an initial matter, the parties’ Local Rule 56.1 statements of fact were deficient in numerous ways:

Many of both parties’ statements were not properly supported with admissible evidence or contained legal argument instead of factual statements. Any such “facts” were not deemed true.
The parties appeared to copy and past portions of their briefs into their Local Rule 56.1 statements. That practice was not helpful to the Court.

These deficiencies resulted in a “very brief” recitation of uncontested facts.

Lanham Act False Representation & False Advertising

There were questions of fact as to each of Morningware’s alleged false representations of fact, in particular whether certain statements were false or misleading. As such, summary judgment was not proper.

Deceptive Trade Practices Act

Hearthware’s Deceptive Trade Practices Act claim was based upon the same conduct as in its Lanham Act claim. As such, summary judgment was denied for the same reason.

Common Law Misappropriation

Hearthware’s common law misappropriation claim was based upon allegations that Morningware’s infomercial was designed to mimic Hearthware’s infomercial. This claim was preempted by the Copyright Act. The infomercial was copyrightable and the misappropriation claim amounted to a claim of copying, which is actionable pursuant to the Copyright Act. The Court, therefore, granted Morningware summary judgment on this claim.

Local Rule 56.1 Failures Result in Disputed Facts

By R. David Donoghue on November 16th, 2012 Posted in Local Rules

Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Aug. 27, 2012) (St. Eve, J.).

Judge St. Eve denied plaintiff Morningware’s and defendant Hearthware’s cross-motion for summary judgment regarding Morningware’s Lanham Act, Deceptive Trade Practices Act and related state law claims in this Lanham Act and patent infringement case. As an initial matter, the parties’ Local Rule 56.1 statements of fact were deficient in numerous ways:

Many of both parties’ statements were not properly supported with admissible evidence. Any such “facts” were not deemed true, unless the opposing party admitted them.
Hearthware’s responses to Morningware’s statements of fact were not properly supported by evidence – a lack of knowledge, unlike in an answer to a complaint, is not sufficient. Any of Morningware’s facts not properly contested were deemed admitted.
Both parties also failed to cite to the statements of fact in their summary judgment briefing.

The Court excluded the declaration of Hearthware’s expert witness because the witness was not properly disclosed by the expert deadline or otherwise during the years of discovery between the parties. The fact that the expert was originally retained as a consultant does not remove the requirement that the consultant be properly disclosed if the consultant will be turned into a testifying expert.

The Court dismissed without prejudice a motion to strike Hearthware’s allegedly improper expert report regarding damages because it was irrelevant to the motions at issue.

Lanham Act False Representation of Origin

There was no dispute that Morningware’s MORNINGWARE and HALO marks were protectable. Morningware further offered evidence of the necessary likelihood of consumer confusions, but not enough to meet Morningware’s heavy burden to show evidence “so one-sided that there can be no doubt about how the questions should be answered.”

Lanham Act Product Disparagement

The parties agreed that Hearthware’s advertisement stated “The Real NuWave® Oven Pro Why Buy an Imitation? 90-Day Gty”, but whether that was a false statement or misleading was a question of fact. Morningware offered no evidence to prove Hearthware’s statement literally false. Morningware argued that the statement was impliedly false. Morningware relies upon a consumer survey for its proofs. But Hearthware disputed the survey, creating a question of fact. Furthermore, there was a question of fact as to whether the alleged false statement impacted consumers’ purchasing decisions.

State Law Claims

Because the parties agreed that the state law claims rose and fell with the Lanham Act claims, summary judgment was denied as to those claims as well.

Theft of Lyrics Not Relevant to Copyright Infringement Case

By R. David Donoghue on August 15th, 2012 Posted in Pleading Requirements

Hobbs v. John, No. 12 C 3117, Slip Op. (N.D. Ill. Jun. 19, 2012) (St. Eve, J.).

Judge St. Eve denied a Fed. R. Civ. P. 24 motion to intervene by Romano in this copyright case. Plaintiff alleges that he wrote the lyrics to “Natasha” and that defendant Big Pig took the lyrics and substantially reproduced them in Elton John’s song “Nikita.” Romano sought to intervene alleging that Hobbs’ lyrics were in his diary which was allegedly stolen by Elton John. Romano did not have a right to intervene pursuant to Fed. R. Civ. P. 24(a)(2) because he did not show a direct significant and legally protectable interest in the litigation. Romano did not claim that he held a copyright in Natasha, just that his diary containing the lyrics was stolen.

And Romano’s motion did not meet Fed. R. Civ. P. 24(b) standards for permissive joinder either. The alleged theft of the diary was not related to the alleged copyright infringement.

Late Invalidity Contention Allowed With Sanctions

By R. David Donoghue on July 20th, 2012 Posted in Discovery

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Apr. 12, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Sloan’s motion to strike defendant Zurn’s “late asserted” invalidity defense, to compel discovery and for sanctions in this patent case involving dual mode flush valves.

Worn Zurn Flush Valve

Sloan seeks production of information regarding certain worn Zurn flush valves. While the worn valves may have been created for litigation, the work product doctrine would not cover the valves themselves or factual data regarding their fabrication and testing. Furthermore, Zurn lost any work product protection to the factual information by claiming that the worn Zurn flush valves invalidate the patent in suit. The Court, therefore, ordered Zurn to produce the worn valves, all non-privileged, factual information about them and a detailed privilege log. The Court also ordered a Rule 30(b)(6) deposition on the worn valve and that Zurn pay the costs and reasonable attorney’s fees of the deposition, the motion to compel and one Sloan attorney to attend the deposition because of Zurn’s continued refusal to produce the documents and answer deposition questions.

Community Center Worn Valve

A “plethora of rules” including LPR 2.1(b), 2.3 and 3.2 and Fed. R. Civ. P. 26(e), required Zurn to produce information regarding its Community Center Worn Valve invalidity defense before it did – after serving Zurn’s Final Invalidity Contentions. And the Community Center and Zurn worn valves were similar, but different. As such, it was a “close call” whether to allow Zurn to use the Community Center defense. The Court allowed Zurn to use its defense, but sanctioned Zurn requiring Zurn to pay Sloan’s reasonable attorney’s fees and costs for any necessary Community Center Worn Valve-related discovery.

Defendant Granted Leave to Replead Inequitable Conduct

By R. David Donoghue on July 18th, 2012 Posted in Pleading Requirements

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Apr. 1, 2012) (St. Eve, J.).

Judge St. Eve granted in part defendants’ (collectively “Zurn”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Sloan Valve’s (“Sloan”) inequitable conduct counterclaims and denied Zurn its request for attorneys’ fees and costs in this patent dispute involving valves. But to the extent the Court dismissed the counterclaims, it was without prejudice to replead using facts learned during discovery. Sloan was not prejudiced by the amendment because Sloan was on notice of the facts gleaned during the two year discovery period.

The Court acknowledged the inequitable conduct pleading requirements set forth in Exergen, and noted that they were not changed by the heightened proofs required by Therasense. The Court also held that at the pleading stage, Zurn need not show that its alleged “intent to deceive is the single most likely explanation for non-disclosure.” Zurn need only allege facts from which intent may be reasonably inferred.

With respect to Counterclaim III, Sloan waived its argument regarding identity and intent, by failing to challenge them in its first motion to dismiss Zurn’s original Counterclaim III, which was substantively the same as this amended counterclaim. But even if Sloan had not waived its arguments, Zurn could have met Rule 9(b) pleading standards by amending to add information learned during discovery.

And while the Court’s original pre-Therasense ruling on Zurn’s materiality pleading was based upon the “reasonable examiner” standard, Zurn’s pleadings also met Therasense’s “but for” materiality test. Zurn pled that but for Sloan’s counsel’s statements during prosecution regarding the size of a plunge and a bushing passage taught by the prior art, at least Claim 1 would not have been allowed.

While Counterclaim IV was not adequately pled, Zurn was given leave to replead. Zurn’s counterclaim did not identify who withheld the prior art, but Zurn had since identified the individuals during discovery. Zurn’s materiality pleading was also deficient, but Zurn was granted leave to replead with information learned during discovery. And Zurn was similarly granted leave to amend its intent allegations.

Juror Social Media Use During Trial is Controllable

By R. David Donoghue on May 1st, 2012 Posted in Trial

The Northern District of Illinois’ Judge St. Eve has written an interesting article arguing that ill effects of juror’s social media use can be controlled and limited with use of jury instructions. What makes Judge St. Eve’s article especially interesting to practitioners is that it is backed by proof. Judge St. Eve enlisted Judge Kennelly in her study. Both used a social media instruction and then interviewed jurors after trial to determine how the instruction impacted what the jurors did.

It will be no surprise to anyone who has tried cases or spent time on a jury what Judge St. Eve found – jurors given the instruction largely complied with it. Jurors largely try to do what is asked of them and they usually do it well.

The only issue I see with Judge St. Eve’s findings is that reproducing them depends upon crafting a good, understandable jury instruction. As with any jury instruction, it should be as simple and understandable as possible, while remaining sufficiently detailed. One critical issue is to sufficiently identify the social media outlets without unintentionally excluding any outlets. But the pattern instructions St. Eve uses balances all of that well:

[Before Trial:] . . . . Until you retire to deliberate, you may not discuss this case with anyone, even your fellow jurors. After you retire to deliberate, you may begin discussing the case with your fellow jurors, but you cannot discuss the case with anyone else until you have returned a verdict and the case is at an end. I hope that for all of you this case is interesting and noteworthy. I know that many of you use cell phones, Blackberries, the internet and other tools of technology. You also must not talk to anyone about this case or use these tools to communicate electronically with anyone about the case. This includes your family and friends. You may not communicate with anyone about the case on your cell phone, through e-mail, Blackberry, iPhone, text messaging, or on Twitter, through any blog or website, through any internet chat room, or by way of any other social networking websites, including Facebook, My Space, Linkedin, and YouTube.

[At the Close of the Case:] During your deliberations, you must not communicate with or provide any information to anyone by any means about this case. You may not use any electronic device or media, such as a telephone, cell phone, smart phone, iPhone, Blackberry or computer; the internet, any internet service, or any text or instant messaging service; or any internet chat room, blog, or website such as Facebook, My Space, Linkedin, YouTube or Twitter, to communicate to anyone any information about this case or to conduct any research about this case until I accept your verdict.

Confidentiality Provision Does Not Prevent Production

By R. David Donoghue on April 4th, 2012 Posted in Discovery

Morningware, Inc. v. Hearthware Home Products, Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Oct. 6, 2011) (St. Eve, J.).

Judge St. Eve granted plaintiff/counter-defendant Morningware’s motion to compel production from third party SKE in this patent and Lanham Act suit regarding convection ovens. SKE had an agreement with defendant/counter-plaintiff Hearthware that restricted SKE’s ability to disclose Hearthware’s confidential documents. The Court ordered SKE to produce the documents directly to Morningware, denying Hearthware’s request to review the documents for confidentiality first. The Court noted that Morningware’s agreement to initially treat all of SKE’s documents as Highly Confidential resolved confidentiality concerns.

Required Third Party Data Backs Patent Claims

By R. David Donoghue on February 29th, 2012 Posted in Summary Judgment

Civix-DDI, LLC v. Hotels.com, No. 05 C 6869, Slip Op. (N.D. Ill. Aug. 19, 2011) (St. Eve, J.).

Judge St. Eve granted defendant Hotels.com summary judgment of noninfringement in this patent litigation involving selecting items from a database based upon geographic vicinity. Here are the key holdings:

Citing Centillion Data Sys., LLC v. Quest Comm’ns Int’l, Inc. 631 F. 3d 1279 (Fed. Civ. 2011) the Court held that Hotels.com did not "use" or "make" the required "point" or end-user computer or mobile device. The end-user had to initiate a query by implementing data into its post. Those activities were not under Hotels.com’s control. And therefore Hotels.com neither directly infringed nor induced infringement.
Plaintiff Civix-DDI ("Civix") only identified star-rankings and property type in its interrogatory responses as "Associated Categories." Civix was, therefore, limited to those two associated categories. Because no Hotels.com initial screen in evidence allowed for search by either of these associated categories, Hotels.com was entitled to partial summary judgment of noninfringement.
Hotels.com was granted summary judgment of noninfringement because its banner ads were supplied by a third party, not from a Hotels.com database as required by the patents. Similarly, Hotels.com did not store the required virtual tours on its own database as required by the patent.
The Court refused to consider Civix’s expert declarations to the extent that they contradicted the expert’s deposition testimony.

False Patent Marking is Constitutional

By R. David Donoghue on January 25th, 2012 Posted in Jurisdiction

Simonian v. Allergan, Inc., No. 10 C 2414, Slip Op. (N.D. Ill. Apr. 28, 2011) (St. Eve, J.).

Judge St. Eve denied defendant Allergan’s motion to dismiss plaintiff Simonian’s false patent marking suit holding that the false marking statute was constitutional pursuant to the Take Care Clause. The government retained little control over false marking actions, but that was less of a concern because false marking cases were civil not criminal. And, in fact, the government retained sufficient control. The executive branch was notified of each suit because the district court clerk was required to give the Director of the Patent Office (a member of the executive branch) notice of every patent suit. Furthermore, the government may intervene in every case. And when the government intervenes, plaintiff cannot dismiss a case without the government’s agreement.

Consent Judgment Enjoins Defendants’ Use of Its Own Initials

By R. David Donoghue on November 15th, 2011 Posted in Settlement

The Counselors of Real Estate v. Masters Commercial Real Estate, Inc., No. 11 C 3173, Slip Op. (N.D. Ill. Aug. 18, 2011) (St. Eve, J.).

Judge St. Eve entered a consent judgment as part of a settlement in this trademark dispute involving the CRE and CRE marks. Here were the key elements of the judgment:

Defendant Masters Commercial Real Estate could not use the letters "CRE" in "sequence or substantial sequence", except when referring to plaintiff, in relation to real estate services.

Defendant was also enjoined from using the letters "MCRE" in sequence or substantial sequence.

Court Reconstrues “Cooking Enclosure”

By R. David Donoghue on October 26th, 2011 Posted in Claim Construction

Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Apr. 12, 2011) (St. Eve, J.).

Judge St. Eve granted defendant Hearthware’s motion for reconsideration holding that the claim term cooking enclosure required no construction. The Court originally construed "cooking enclosure" to mean "an oven housing and a metallic oven pan supported by a base." The Court held that the instruction imported a claim limitation. Furthermore, the doctrine of claim differentiation required broader constructions because other independent claims that further defined the cooking enclosure as having a metallic oven pan as a base were made superfluous by the original construction.

The Court also held that Hearthware’s motion should have been brought pursuant to Fed. R. Civ. P. 54(b) which gives the Court authority to reconsider its interlocutory decisions, not Rule 59(e) which only applies once the Court has entered judgment.

Northern District of Illinois Patent Program Begins

By R. David Donoghue on September 30th, 2011 Posted in Legal News

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

Protective Order Amended to Allow Disclosure of Confidential Information in a Reexam

By R. David Donoghue on August 31st, 2011 Posted in Discovery

Sloan Valve Co. v. Zurn Indus., No. 10 C 204, Slip Op. (N.D. Ill. Mar. 8, 2011) (St. Eve, J.).

Judge St. Eve granted plaintiff Sloan’s motion to lift the stay pending reexam of the patent-in-suit to modify the Protective Order. The Patent office required production of all information material to patentability, even if it is subject to a Protective Order. MPEP § 724. But the Protective Order was silent as to whether Sloan could provide the Patent Office with confidential information.

The Court noted case law holding that MPEP § 724 could not override district court orders. Telecomm. Sys., Inc. v. Mobile 365, Inc., No. 06 C 485, 2009 WL 594 3235 (E.D. Va. Mar. 31, 2009). As a result, the proper method for a patentee was exactly what Sloan did – seek a modification to the governing Protective Order.

So, the Court modified the Protective Order to allow disclosure to the Patent Office, so long as MPEP § 724.02 procedures for maintaining documents as confidential.

Court Will Not Import Limitations From the Specification

By R. David Donoghue on August 26th, 2011 Posted in Claim Construction

Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Feb. 23, 2011) (St. Eve, J.).

Judge St. Eve construed the the claims of counter-plaintiff Hearthware’s patent involving halogen convection ovens. Of particular note, the Court construed the following terms:

"A cooking enclosure" means "an oven housing and a metallic oven pan supported by a base." This definition fit with the language of the abstract and the summary of the invention.
"A fan" means "one or more fans." The Court declined Morningware’s argument that fan be limited to the fan described in the preferred embodiment.
"A fan chamber" means "one or more enclosed spaces, through which a fan moves air, that are in the power head and above both the cooking enclosure and the heating unit." The Court held that a more particular definition proposed by Morningware would require improper importation of limitations into the claims from the specification.

Three Month Delay is Prejudicial After Fact Discovery Closes

By R. David Donoghue on June 1st, 2011 Posted in Discovery

Civix-DDI, LLC v. Hotels.com, L.P., No. 05 C 6869, Slip Op. (N.D. Ill. Jan. 19, 2011) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Civix-DDI’s ("Civix") motion to strike defendants’ (collectively "Hotels.com") allegedly "new defenses and witnesses" in this patent case. The Court held as follows:

Hotels.com was free to update its corporate witnesses based upon changed jobs and responsibilities, so long as the new witnesses were made available for deposition if they might potentially be called at trial.
Disclosure of a new piece of prior art ten months after the close of fact discovery would prejudice Civix, and Hotels.com did not justify its late disclosure. The prior art was, therefore, excluded pursuant to Fed. R. Civ. P. 37.
The Court also excluded a license for Google technology that was executed in relevant part in August 2010, about three months before Hotels.com’s supplemental interrogatory response disclosing the license. While a three month delay was sometimes acceptable, it was not in this case. Fact discovery closed seven months before the agreement was executed and ten months before the supplemental response identifying the license. And expert discovery was set to close four months after the supplement. Civix, therefore, would have been prejudiced by Hotels.com’s three month delay in this case. So, the license was excluded.

Three Month Delay is Prejudicial After Fact Discovery Closes

By R. David Donoghue on April 11th, 2011 Posted in Discovery

Civix-DDI, LLC v. Hotels.com, L.P., No. 05 C 6869, Slip Op. (N.D. Ill. Jan. 19, 2011) (St. Eve, J.).

Hotels.com was free to update its corporate witnesses based upon changed jobs and responsibilities, so long as the new witnesses were made available for deposition if they might potentially be called at trial.
Disclosure of a new piece of prior art ten months after the close of fact discovery would prejudice Civix, and Hotels.com did not justify its late disclosure. The prior art was, therefore, excluded pursuant to Fed. R. Civ. P. 37.
The Court also excluded a license for Google technology that was executed in relevant part in August 2010, about three months before Hotels.com’s supplemental interrogatory response disclosing the license. While a three month delay was sometimes acceptable, it was not in this case. Fact discovery closed seven months before the agreement was executed and ten months before the supplemental response identifying the license. And expert discovery was set to close four months after the supplement. Civix, therefore, would have been prejudiced by Hotels.com’s three month delay in this case. So, the license was excluded.

Court Reevaluates Claim Constructions from Prior Related Case

By R. David Donoghue on March 18th, 2011 Posted in Claim Construction

Civix-DDI, LLC v. Hotels.com, No. 05 C 6869, Slip Op. (N.D. Ill. Oct. 25, 2010) (St. Eve, J.).

Judge St. Eve construed the terms of the patents-in-suit to internet technology. From a procedural standpoint, the Court did the parties and readers of the opinion the favor of identifying the Court’s construction in a bulleted list at the beginning of the opinion, as well as at the end. Lists of the construed terms and their construction opinions make claim constructions far more readable.

Of particular note, the Court construed the following terms:

"Associated category" means "a classification both stored in the database and provided or selected by a user that divides particular items of interest into subgroups." The Court gave "little weight" to a construction from a prior case which the parties in that case stipulated to because defendants in this case were not parties to that case, nor did they have privity with the prior defendants.
"Connected to" means "joined together or linked to, in a direct or indirect manner." Because neither the claim language nor the specification exclude an indirect connection, the construction included both direct and indirect connections.
"Database" means "a collection of related information organized for convenient access." The Court accepted the construction from the prior case because it was supported by the intrinsic evidence. Nothing in the claims or specifications required a single device as proposed by defendants.
"Internet" means "a system of linked computer networks, worldwide in scope, that is typically associated with using TCP/IP as a standard protocol." This was the Court’s construction from the prior case, but it was reached after a de novo review of the construction and all relevant evidence. Additionally, "Internet" and "internet" were construed to mean the same thing.
"User" means "a human being."
"Video" means "a presentation of multiple sequential frames of image data." The construction was intended to create a distinction between digital pictures and video.
"Within a radius about the one port" means "within a circular area the center of which is the user’s present physical location."

Marking With an Unexpired Patent Not Fixed by Also Marking with a Live Patent

By R. David Donoghue on March 4th, 2011 Posted in Pleading Requirements

Simonian v. Allergan, Inc., No. 10 C 2414, Slip Op. (N.D. Ill. Nov. 30, 2010) (St. Eve, J.).

Judge St. Eve denied defendant Allergan’s motion to dismiss plaintiff Simonian’s false patent marking claim regarding Allergan’s RESTASIS product. The Court, citing its Blistex decision, held that false patent marking claims were subject to Fed. R. Civ. P. 9(b) heightened pleading requirements. Simonian’s general averment that Allergan marked with an allegedly expired patent with an intent to deceive was sufficient, without more facts.

The Court also held that the fact that RESTASIS was marked with an unexpired patent, did not insulate Allergan from marking with an expired patent as well, citing Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347 (Fed. Cir. 2005). In Clontech, the Federal Circuit explained that "an unpatented article" was one "not covered by at least one claim of each patent with which the article is marked." Id. at 1352 (emphasis added).