Healix Infusion Therapy, Inc. v. HHI Infusion Servs., Inc., No. 10 C 3772, Slip Op. (N.D. Ill. Jan. 27, 2011) (Zagel, J.).
Judge Zagel granted in part defendants’ motion to dismiss plaintiff Healix Infusion Therapy’s ("Healix") complaint, which included copyright infringement, trademark infringement and tortious interference claims, all related to the parties’ competition for medical infusion services, as follows:
The Court dismissed Healix’s claims for statutory damages on its copyright claims. The record showed that Healix filed for its copyright registrations after defendants began the alleged infringements, and more than three months after first publication. As a result, statutory damages were not recoverable. Healix could only receive actual damages. Furthermore, the Court denied Healix’s request to amend its pleadings to include a demand for actual damages because Healix had already filed four complaints in the case and never sought actual damages.
Although sparse, Healix’s trademark claims were sufficiently plead. Defendants argued that Healix had not pled use in commerce. But it was sufficient that Healix pled that Defendants displayed Healix’s marks to the public and that Defendants allegedly copied Healix’s marks with intent to use them in selling Defendants services to the consuming public.
The Court took Defendants’ motion to dismiss Healix’s tortious interference claim under advisement, in favor of a fully briefed summary judgment motion on the issue that more fully set out the relevant facts.
The Court denied the defendant’s motion to dismiss defendant Metro Infectious Disease Consultants ("Metro"). Defendants argued that Metro was never specifically accused to have committed any acts in the complaint. Instead, Healix defined as a single entity three defendants, including Metro. But the Court held that it was sufficient in this instance for Healix to group Metro with two other defendants and make all allegations against Metro as part of the defined entity.
Gordon-Darby Sys., Inc. v. Applus Techs., Inc., No. 10 C 1863, Slip Op. (N.D. Ill. Dec. 23, 2010) (Zagel, J.).
Judge Zagel granted plaintiff’s motion to dismiss its patent infringement claims regarding vehicle emissions testing with prejudice and to dismiss defendants’ noninfringement, invalidity and unenforceability claims without prejudice. After the parties engaged in some discovery, plaintiff determined that it no longer wanted to pursue its claims and gave defendants a covenant not to sue. Based upon that covenant, the parties agreed that all of their claims should be dismissed, except for defendants’ inequitable conduct claims. Defendants argued that those claims were related to its 35 U.S.C. Section § 285 claim to make the case exceptional and award defendants their attorney’s fees. Citing the Federal Circuit’s decision in Monsanto Co. v. Bayer Bioscience N.V., 514 F.3d 1229 (Fed. Cir. 2008), the Court held that, although the Federal Circuit had not squarely decided the issue, the precedent was clear that the covenant divested the Court of subject matter jurisdiction over the inequitable conduct declamatory judgment claim.
The Court, however, retained independent jurisdiction over defendants’ Section § 285 claim to make the case exceptional and award defendants their attorney’s fees. And the Court acknowledged that it could consider unenforceability as part of the exceptional case analysis, which could trigger a holding that the patents in suit were unenforceable due to inequitable conduct.
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 Zagel’s comments:
- The most valuable cost control tool Judge Zagel has found is an early deposition, often of a 30(b)(6) designee, allowing for a second deposition later in the case. The early deposition tends to narrow discovery and case issues.
- Clerks write first drafts of Judge Zagel’s opinions, with one clerk taking even cases and the other taking odd numbered cases. Clerks can write first drafts because a majority of cases are inadequately prosecuted or defended and, therefore, do not result in motions that are difficult, close calls.
- Judge Zagel writes 10-15% of his own opinions.
- Judge Zagel does voir dire by himself. Counsel do not ask questions.