Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Luka v. The Proctor & Gamble Co., No. 10 C 2511 (N.D. Ill. Mar. 28, 2011) (Kennelly, J.).

Judge Kennelly granted certain defendants' motions to dismiss plaintiff's false patent marking case for failure to sufficiently plead intent, and held that the statute was constitutional.  Note that this case was decided before President Obama signed the America Invents Act which removes expired patents from the false marking statute.

Proctor & Gamble

Plaintiff's general allegations against defendant Procter & Gamble were insufficient, particularly in light of the license agreement requiring defendant Innovative to comply with the marking statute.

Innovative

Plaintiff sufficiently pled intent as to Innovative by attacking the P&G-Innovative license agreement. In that agreement, Innovative accepts the responsibility of complying with the marking statute.

Helen of Troy & Idelle

Plaintiff's claims as to Helen of Troy and Idelle failed because they were the sort of generalized pleadings that BP Lubricants held insufficient.

Constitutionality

The Court held that § 292, the false marking statue was constitutional:

For these reasons, the Court agrees with the district court in the Pequignot case that "[a]though these mechanisms concededly do not rise to the same level of government control provided by the FCA, the FCA's strict safeguards are not required because . . . § 292(b) represents a minimal intrusion onto Executive Branch power." Peguignot v. Solo Cup Co., 640 F. Supp. 2d 714, 728 (E.D. Va. 2009), vacated in part on other grounds, 608 F.3d 1356 (Fed. Cir. 2010).

• Email This
• Print
• Trackbacks
• Share Link

Simonian v. Astellas Pharma US Inc., No. 10 C 1539, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.).

Judge Coleman granted defendant Astella's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Simonian's false patent marking claims for failure to meet the Fed. R. Civ. P. 9(b) heightened pleading standards, but did so without prejudice. The Court held that Simonian's complaint contained "precisely the same" general allegations -- a "sophisticated company" that "knew or should have known" of the expired patent -- that the Federal Circuit rejected as deficient in BP Lubricants.
 

• Email This
• Print
• Trackbacks
• Share Link

Simonian v. Maybelline LLC, No. 10 C 1615, Slip Op. (N.D. Ill. Mar. 14, 2011) (Kendall, J.)

Judge Kendall denied defendant Maybelline's motion to dismiss, granted its motion to transfer and denied as moot its motion to stay pending the Federal Circuits standing decision in Stauffer, in this false patent marking case. The Court held, pre-BP Lubricant, that Fed. R. Civ. P. 9(b) pleading applied to the intent element, but because the intent went to state of mind the fraud could be alleged generally, inconsistent with BP Lubricants. Because plaintiff Simonian had generally pled intent, the complaint was sufficient.

The Court then transferred the case to the Southern District of New York, Maybelline's home district. As a relator plaintiff, Simonian's choice of forum was given little deference. And the situs of material facts was where marking decisions were made - New York - not where marked products were bought - Illinois. The Court, therefore, transferred the case.
 

• Email This
• Print
• Trackbacks
• Share Link

Several significant trends are developing as I read this year's N. D Illinois patent decisions. The trends are largely, although not all, Chicago-specific. And they appear to be largely influenced by the not-so-new Local Patent Rules.

1. Faster Settlement Times. Patent cases are settling faster. While the economy may still be playing a role, I believe that the LPR 2 initial contentions are driving early settlements. When parties take them seriously and make their best early cases, it is causing opponents to reconsider their positions and driving earlier settlements. Maybe more importantly, armed with more substantive analysis up-front, parties are talking more and more settlement discussions lead to more settlements. No doubt this is one of the impacts that the Court expected when it developed the LPR 2 initial contentions.
    
2. False Patent Marking is Dying. In early 2010, the Northern District was among the top three districts for false patent marking filings, in particular those cases brought by marking trolls (non-competitors in the defendant's industry). Unlike the Eastern District of Texas (which applied Rule 8 notice pleading to the intent requirement), the Northern District was split with many judges applying Rule 9 heightened pleading and a few applying Rule 8 notice pleading. That slowed the flow of cases to a degree, but what seems to have finished them is a combination of the Federal Circuit's BP Lubricants decision (requiring Rule 9(b) pleading for the intent requirement) and a decision this spring holding that corporate intent was not recognized in the Seventh Circuit, so the required intent must be shown in at least one employee, officer or agent of the corporation.
    
3. LR 56.1 Summary Judgment Decisions are on the Decline. There seem to be fewer decisions granting or denying summary judgment for failure to comply with the Local Rule 56.1 requirements for statements of material facts. Having tracked five years worth of intellectual property summary judgment decisions chastising parties for failure to comply with Local Rule 56.1, I cannot imagine that there is a trend toward strict compliance with Local Rule 56.1. Furthermore, this does not appear to be true in the trademark, copyright or trade secret realms. So, my suspicion is that this trend is really about fewer summary judgment decisions. And there are fewer summary judgment decisions for at least two reasons: 1) earlier settlement which avoids summary judgment motions; and 2) the Local Patent Rule 6.1 comment that judges have discretion to delay "early" summary judgment motions until the end of the discovery and the LPR 1.1 authority to delay motions raising claim construction issues until after the claim construction opinion issues.
    

• Email This
• Print
• Trackbacks
• Share Link

Schultz v. iGPS Co. LLC, No. 10 C 71, Slip. Op. (N.D. Ill. Jan. 3, 2011) (Hibbler, Sen. J.)

Judge Hibbler granted in part defendant's Fed. R. Civ. P. 15 motion to amend its affirmative defenses. The doctrine of assignor estoppel did not ban defendant's invalidity and inequitable conduct defenses. An assignor is estopped from challenging the validity and enforceability of its assigned patent, but that estoppel is personal to the assignee. Because plaintiff was not the assignee, he had no right to assert estoppel. Furthermore, to determine whether defendants were in privity with the assignor would require facts beyond the complaint and was, therefore, not resolvable in a motion to dismiss.

The Court, however, did not accept defendants' inequitable conduct defenses because they failed to plead the necessary intent with particularity. Defendants only alleged that patentee failed to pay its maintenance fees and then improperly revived the patents, without more. Defendants were granted leave to replead those defenses, if possible, with sufficient facts.
 

• Email This
• Print
• Trackbacks
• Share Link

Patent Compliance Group, Inc. v. Brunswick Corp., No. 10 C 4645, Slip Op. (N.D. Ill. Jan. 14, 2010) (Der-Yeghiayan, J.).

Judge Der-Yeghiyan denied defendant Brunswick's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Patent Compliance Group's ("PCG") false patent marking claims regarding Brunswick's exercise equipment. First, the Court held that Rule 9(b) heightened pleadings applied to the intent to deceive requirement of false patent marking, and anologized to the Federal Circuit's inequitable conduct pleading requirements. While PCG's first complaint alleging that Brunswick was a sophisticated company, PCG's amended complaint attaching Patent Office documents identifying the expiration dates of the allegedly expired patents and identifying Brunswick's in-house patent counsel was sufficient.
 

• Email This
• Print
• Trackbacks
• Share Link

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).
 

• Email This
• Print
• Trackbacks
• Share Link

Simonian v. Blistex, Inc., No. 10 C 1201, Slip Op. (N.D. Ill. Nov. 3, 2010) (St. Eve, J.).

Judge St. Eve denied defendant Blistex's Fed. R. Civ. P. 12(b) motion to dismiss Simonian's false patent marking case. As an initial matter, the fact that most of Simonian's statements were made upon information and belief did not require dismissal. The Court then held that false patent marking, or at least its intent requirement, was subject to Rule 9(b) heightened pleading. But Simonian met that standard by pleading that Blistex allegedly falsely marked its lip-ointment products with an expired patent.
 

• Email This
• Print
• Trackbacks
• Share Link

Simonian v. Edgecraft Corp., No. 10 C 1263, Slip Op. (N.D. Ill. Sep. 20, 2010) (Grady, Sen. J.).

Judge Grady granted defendant Edgecraft's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Simonian's false patent marking claims. The Federal Circuit's recent decisions rejected two of Edgecraft's three arguments. In Stauffer, the Federal Circuit held that any individual had standing to sue for false marking without regard to injury in fact. And in Solo Cup, the Federal Circuit held that marking with an expired patent could constitute false patent marking.

The Court, however, held that Fed. R. Civ. P. 9(b) heightened pleading standards applied to the intent to deceive requirement. Simonian's "bare allegations" - and otherwise only "mere labels and conclusions" - at best suggested a "possibility of misconduct," not intent. While Rule 9(b) does allow intent to be pled generally, the allegations must create a reasonable inference that defendant acted with the necessary intent.
 

• Email This
• Print
• Trackbacks
• Share Link

McNamara v. Natural Organics, Inc., No. 10 C 3544, Slip Op. (N.D. Ill. Sep. 1, 2010) (Shadur, Sen. J.).

Judge Shadur denied defendant's motion to stay this false patent marking case pending the Federal Circuit's standing decision in Stauffer (Stauffer has since been decided). The Court also dismissed plaintiff's second amended complaint for failure to plead the requisite intent to deceive pursuant to Fed. R. Civ. P. 9(b) heightened pleading standards. Plaintiff attempted to plead intent upon information and belief using a nine-year-old statement made on defendant's behalf about its skilled legal representative in an FTC proceeding. But that quoted language referred to a lawyer who was deceased, and he had passed away even before the FTC proceeding. Because plaintiff had already been given two chances to replead, the Court dismissed the case.
 

• Email This
• Print
• Trackbacks
• Share Link

Simonian v. Irwin Indus. Tool Co., No. 10 C 1260, Slip Op. (N.D. Ill. Aug. 27, 2010) (Lindberg, Sen. J.).

Judge Lindberg denied defendant Irwin Industrial Tool's ("Irwin") motion to dismiss plaintiff Simonian's false patent marking case. First, the Court denied Irwin's standing arguments. While the Federal Circuit had not yet issued its Stauffer decision regarding standing, the Court used similar reasoning. The Court analogized to the False Claims Act and held that any person had standing without proof of an injury in fact. The false marking injury is to the government and the public at large.

The Court also held that Simonian sufficiently pled the requisite intent to deceive, whether notice pleading or Fed. R. Civ. P. 9(b) standards applied. Simonian pled that Irwin was a "sophisticated company" with years of patent experience and that Irwin knew or should have known the patent was expired when it was marked.
 

• Email This
• Print
• Trackbacks
• Share Link

Golden Golf Lighting, Inc. v. Greenwich Indus., L.P., No. 07 C 1086, Slip Op. (N.D. Ill. Jun. 18, 2010) (Andersen, J.).

Judge Andersen denied defendant Clarin's Fed. R. Civ. P. 8(a), 9(b) and 12(b)(6) motion to dismiss this Lanham Act case regarding Clarin's allegedly fraudulent procurement of a trademark related to folding seats.

First, 15 U.S.C. § 1120 limited recovery to injuries sustained "in consequence" of a trademark registered by fraud or false reasons. The damages need not be to a trademark, as Clarin argued. Plaintiff's alleged damage because its folding chairs were seized at the U.S. border based upon alleged infringement of Clarin's trademark and plaintiffs allegedly lost business based upon the seizure. Those facts were sufficient to plead that Clarin was the proximate cause of plaintiff's alleged damages.

Plaintiffs pled fraud with sufficient particularity by incorporating by reference the fraud-related decision in Specialized Seating v. Greenwich Indus., L.P., 472 F.Supp. 2d 999 (N.D. Ill. 1999). Finally, Plaintiffs did not violate Fed. R. Civ. P. 8(a) or 8(d)(1) by combining two claims into a single count. Notice pleading did not require separate headings for each claim.

• Email This
• Print
• Trackbacks
• Share Link

Kingsbury Int'l., Ltd. v. Trade the News, Inc., No 08 C 3110, Slip Op. (N.D. Ill. Oct. 28, 2008) (Lindberg, Sen. J.).

Judge Lindberg denied defendant's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff's copyright infringement claim and defendant's alternative Fed. R. Civ. P. 12(e) motion for a more definite statement of the claim. Plaintiff alleged that it owned a copyright in its Chicago Business Barometer monthly business index; that it specifically informed its subscribers that the index was copyrighted and that it could not be reproduced or rebroadcast in any manner until plaintiff publicly released the index at 8:45 AM; and that defendant released unidentified “parts” of the May 2007 issue of the index at 8:42 AM, three minutes before plaintiff's public release. The Court held that these allegations met the Fed. R. Civ. P. 8(a) pleading standards, without specifically identifying which parts of the index were copied, noting that copyright claims did not require Fed. R. Civ. P. 9(b) heightened pleading. Furthermore, defendant's defense that, if anything, it copied only unprotected facts was not appropriate for a Rule 12(b) determination on the pleadings.

Finally, the Court held that the complaint was not “so vague or ambiguous” that it warranted requiring a more definite statement.

• Email This
• Print
• Trackbacks
• Share Link

UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582 Slip Op. (N.D. Ill. Dec. 5, 2008) (Lindberg, Sen. J.).

Judge Lindberg granted in part plaintiff's motion to dismiss certain of defendant Starent's counterclaims.  Starent's allegations that specific patentee withheld specific references from the Patent Office were sufficient to meet the Rule 9(b) heightened pleading standards for inequitable conduct.  But the Court dismissed Starent's tortious interference counterclaim to the extent that it was based upon the filing of a law suit because Illinois prohibits tortious interference with prospective economic advantage claims based upon filing law suits.  The Court also dismissed Starent's malicious prosecution counterclaim because Starent did not allege a special injury, such as arrest, seizure of property, taking or interference with property.

• Email This
• Print
• Trackbacks
• Share Link

Foboha GMBH v. Gram Tech., Inc., No. 08 C 969, 2008 WL 4619795 (N.D. Ill. Oct. 15, 2008) (Grady, J.).

Judge Grady denied defendants' (collectively “Gram”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs' (collectively “Foboha”) Lanham Act unfair competition and related state law claims. Foboha alleged that Gram made false and misleading statements about Gram's patent and about Foboha's alleged infringement of the patent. In particular, Gram allegedly claimed that its technology was patented while its application was still being processed and that Gram made false statements about the status of the reexamination filed by Foboha. The Court held that Foboha's claims were governed by Fed. R. Civ. P. 9(b)'s heightened pleading requirements because they were based upon Gram's allegedly false and misleading statements. And at least for the statements allegedly made about the patent during reexam, Foboha met the heightened standard by explaining what statements were made, when and where they were made, who made them and how they were made.

The Court did, however, hold that Gram's direct communications, in person or in letters to individuals, did not constitute commercial advertising and, therefore, did not constitute Lanham Act unfair competition. But Gram's statements on its website and press releases could constitute commercial advertising.

• Email This
• Print
• Trackbacks
• Share Link

Vulcan Gold, LLC v. Google, Inc., No. 07 C 3371, 2008 WL 2959951 (N.D. Ill. Jul. 31, 2008) (Manning, J.)

Judge Manning granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing plaintiffs’ RICO claims. The Court previously dismissed plaintiffs’ complaint with leave to refile – click here to read the Blog’s post on that opinion. The Court held that plaintiffs did not sufficiently plead an enterprise. Plaintiffs only alleged that the defendants were contractually related within Google’s adsense program. And the alleged contractual relationship did not show consensual decisionmaking or joined purpose. Plaintiffs’ RICO claims were, therefore, dismissed.

The Court denied defendants’ motion to dismiss the unjust enrichment and civil conspiracy claims. Fed. R. Civ. P. 9(b) heightened pleading standards did not govern the claims because they were both based upon trademark infringement, not fraud.

• Email This
• Print
• Trackbacks
• Share Link

• Email This
• Print
• Trackbacks
• Share Link

CardioNet, Inc. v. LifeWatch Corp., No. 07 C 6625, 2008 WL 567031 (N.D. Ill. Feb. 27, 2008) (Conlon, J.).

Judge Conlon granted in part counter-defendant CardioNet’s Fed. R. Civ. P. 12(b)(6) motion to dismiss counter-plaintiffs’ (collectively, “LifeWatch”) Lanham Act false advertising and related Uniform Deceptive Trade Practices Act (“UDTPA”) and Consumer Fraud and Deceptive Trade Practices Act (“CFA”) claims. LifeWatch alleged that CardioNet improperly acquired one of LifeWatch’s prescription-only heart monitoring devices, the Life Star ACT. The device monitors a person’s heart rate and uses a cell phone to transmit irregular readings to a monitoring station. CardioNet allegedly inspected and tested the device. Then based on its tests, CardioNet allegedly misappropriated LifeWatch’s trade secrets and intentionally made false and misleading statements about the LifeStar ACT in its advertising. LifeWatch’s Lanham Act, UDTPA and CFA claims were all based upon CardioNet’s allegedly false advertising.

LifeWatch identified the allegedly false statements with specificity, but because LifeWatch did not plead who made them or when and where they were made, LifeWatch’s claims did not meet Rule 9(b) heightened pleading standards. The Court, therefore, dismissed the Lanham Act, UDTPA and CFA claims.

• Email This
• Print
• Trackbacks
• Share Link

Sotelo v. Suburban 171, Inc., No. 07 C 2447, 2007 WL 2570355 (N.D. Ill. Aug. 29, 2007) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ Lanham Act unfair competition claim. Plaintiffs operated a salon called “Studio 171.” Defendants took over the location of plaintiffs’ salon and operated their own salon using all of the Studio 171 signage and marks. Defendants argued that plaintiffs’ unfair competition claim should be dismissed because the Studio 171 mark was either descriptive or generic and plaintiff did not plead secondary meaning. But the Court held that the argument was premature. A plaintiff need not plead secondary meaning.* And furthermore, plaintiffs did plead secondary meaning, stating that the Studio 171 mark had developed “considerable value” and become “uniquely associated” with plaintiffs’ business. The Court did, however, dismiss plaintiffs’ RICO claim for failing to plead their fraud allegations with particularity pursuant to Fed. R. Civ. P. 9(b).

* The Court did not cite the Supreme Court’s recent decision in Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955 (2007) (read more about the decision at the University of Chicago Faculty Blog).  But based on other recent opinions citing Twombly for heightened pleading requirements, I wonder if plaintiffs at least should plead secondary meaning now.

• Email This
• Print
• Trackbacks
• Share Link

Ortho-Tain, Inc. v. Rocky Mountain Orthodontics, Inc., No. 05 C 6656, 2007 WL 1238917 (N.D. Ill. Apr. 25, 2007) (Leinenweber, J.).

Judge Leinenweber granted plaintiff's Fed. R. Civ. P. 12(f) motion to strike, dismissing without prejudice defendants' respective patent misuse affirmative defenses and all patent-related statements in defendants' counterclaims.  Plaintiff, Ortho-Tain ("OT"), sued Rocky Mountain Orthodontics ("RMO") and Planmeca Oy ("Planmeca") alleging that RMO breached the distributorship agreement between the OT and RMO.  Pursuant to the Agreement, OT manufactured dental appliances (allegedly covered by OT's patents) and RMO sold those appliances in France.  RMO allegedly breached the Agreement by sourcing equivalent dental appliances from Planmeca.  RMO counterclaimed for, among other things, declaratory judgment of noninfringement and unenforceability of OT's relevant United States patents.  The Court previously dismissed defendants' patent-related declaratory judgment counterclaims for lack of subject matter jurisdiction.  OT now argues that the Court should strike RMO's and Planmeca's respective patent misuse affirmative defenses because they are insufficient.  The Court first held that patent misuse was a proper affirmative defense, negating the first prong of a Rule 12(f) analysis. 

But neither RMO nor Planmeca met their Fed. R. Civ. P. 8 notice pleading obligations as to the defense.  RMO's and Planmeca's statement of their defenses were identical:  "[OT's] claims are barred by the doctrine of patent misuse."  The defense pled no facts and failed to identify which of OT's "many patents" were allegedly misused.  The Court, therefore, dismissed the affirmative defenses without prejudice.  And because the defenses were not well pled, the Court did not address the third prong of a Rule 12(f) analysis -- whether the defense could withstand a Fed. R. Civ. P. 12(b)(6) motion to dismiss.  The Court also briefly looked at whether Rule 8 notice pleading or Fed. R. Civ. P. 9(b) heightened pleading was required for a patent misuse defense, noting that at least one court had used Rule 9(b) pleading, but did not reach the issue, as the defenses did not meet the Rule 8 standard.

• Email This
• Print
• Trackbacks
• Share Link

Flentye v. Kathrein, __ F. Supp.2d __, 2007 WL 1175576 (N.D. Ill. Apr. 18, 2007) (Filip, J.).

Judge Filip denied defendants' motions to dismiss, except as to plaintiffs' claim for punitive damages for intentional infliction of emotional distress, because Illinois law does not allow punitives for IIED.  Plaintiffs (collectively "Flentye") promoted apartment rental services , including some properties owned by Flentye, using their family name, Flentye.  Defendants competed with Flentye promoting similar apartments, some of which were owned by defendant Kathrein LLC.  Flentye brought suit against defendants alleging violations of the Anti-Cybersquatting Consumer Protection Act ("ACPA"), Lanham Act unfair competition and related state law claims.  Flentye alleges that defendants lost a dispute before the UDRP and were forced to return certain domain names to Flentye, including timflentye.com, flentye.com and flentyeproperties.com.  Flentye alleged that defendants then registered new domain name timflentye-not.com and used it to direct traffic to defendants' competing websites.  Flentye also alleged that defendants improperly used the term "Flentye" in its meta tags (key words embedded into a site's source code to director search engines to the site) to direct users seeking information regarding Flentye to defendants sites. 

Defendants first argued that Flentye failed to plead its veil-piercing claims and that, therefore, corporate defendant Kathrein LLC should be dismissed because there were not sufficient allegations against it without a veil-piercing theory.  But the Court held that notice pleading was sufficient for a veil-piercing argument and that Flentye met the notice standard.  It was sufficient that Flentye pled that individual defendant Kathrein  created defendant Kathrein LLC "for the sole purpose of holding title to local real estate through which [Kathrein] operates Lee Street Management" and that in the caption Kathrein LLC was identified as "d/b/a Lee Street Management."  The Court noted that while these allegations might not be sufficient to prove that the veil was pierced, they were sufficient for Fed. R. Civ. P. 8(a) notice pleading.  The Court also noted that a claim of corporate veil-piercing did not require Fed. R. Civ. P. 9(b) heightened pleading.

Similarly, Kathrein LLC argued that the ACPA claim should be dismissed against it because Flentye made no specific allegations regarding Kathrein LLC's use of the domain name at issue or its intent to profit from the domain allegedly including Flentye's mark.  But the Court held that the allegations that Kathrein LLC acted as the alter ego of Kathrein and that Kathrein and Kathrein LLC registered the domain names at issue as a group were sufficient to state a claim.

Defendants argued that Flentye's Lanham Act claim should be dismissed because of numerous "bold disclaimers" on defendants' websites that the site was run by Kathrein.  But because screen shots of the site were not included in or referenced by the complaint, the Court refused to consider them on a Rule 12(b)(6) motion to dismiss.

• Email This
• Print
• Trackbacks
• Share Link

Conditioned Ocular Enhancement, Inc. v. Bonaventura, 05 C 3153, 2006 WL 2982140 (N.D. Ill. Oct. 17, 2006) (Zagel, J.).

Judge Zagel held that Illinois's absolute litigation privilege, which protects communications leading up to a litigation, did not protect a patentholder's cease and desist letters because, in addition to federal preemption issues, the Illinois privilege is limited to defamation and false light claims.  Plaintiff alleged that defendant was practicing its patented vision training services.  In addition to filing suit, plaintiff also sent certain of defendant's customers cease and desist letters warning that defendant was unlawfully using plaintiff's patented vision training methods.  Defendant filed several Lanham Act and tortious interference counterclaims alleging that plaintiff's cease and desist letters were sent in bad faith.

In addition to its absolute litigation privilege argument, plaintiff also sought dismissal of the counterclaims arguing that its patent was presumed valid and that it had a right to enforce it.  But because the counterclaims alleged that the letters were sent in bad faith, the Court denied the motion to dismiss.  Parties have a right to enforce their patents, but not to use false statements in doing so.

Judge Zagel's opinion also provides a good road map for which Lanham Act and tortious interference claims require Rule 9(b) heightened pleading.

• Email This
• Print
• Trackbacks
• Share Link