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

Bone Care, Int'l v. Pen Tech Pharm., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 30, 2011) (Dow, J.).

Judge Dow denied defendants' (collectively "Pentech") motion for summary judgment of invalidity for lack of enablement and written description. The Court also denied plaintiff Bone Care International's cross-motion for summary judgment that the patent-in-suit was enabled by its specification, in this patent case involving methods of treating hyperparathyroidism that is secondary to end-stage renal disease. The parties finished briefing their cross-motions weeks before a bench trial began, including the issues in the motion. And by the time of the opinion, the parties had filed extensive post-trial briefing -- the Court allowed briefs up to 280 pages in length. As such and in light of its coming opinion ruling on all factual issues, the Court did not provide a detailed analysis of its reasoning. Instead, it focused on one of the most common hurdles to summary judgment, the battle of the experts. The parties' experts set forth competing views of the facts and circumstances on the case. Because both parties relied upon those experts to make their cases, summary judgment was not proper.

The Court, however, did commit to resolve the issues as part of its written trial decision.

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Dental Arts Lab. V. Studio 360, The Dental Lab, LLC, No. 10 CV 4535, Slip Op. (N.D. Ill. Nov. 23, 2010) (Dow, J.).

Judge Dow denied defendant's Fed. R. Civ. P. 12(b) motion to dismiss this Lanham Act dispute regarding plaintiff's 360 Dental Laboratories mark. Defendant was a Nevada entity which had sold product to sixteen Illinois dentists, making up 1.2% of defendant's gross revenue, and maintained a website that used the mark and offered defendant's products for sale. Plaintiff only argued that the Court had specific, not general jurisdiction. While defendant's contacts were minimal - sixteen customers and 1.2% of revenues - they involved the alleged tortious acts at issue. The sales, therefore, were sufficient minimum contacts to create specific jurisdiction. Although the Illinois sales were allegedly de minimus, each sale was allegedly a tortious act and the Court could have had jurisdiction based upon even one of the sales. Because defendant's venue arguments mirrored its jurisdiction arguments, venue was also proper.
 

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24 Hour Fitness USA, Inc. v. Bally Total Fitness Holding Corp., No. 08 C 3853, 2008 WL 4671748 (N.D. Ill. Oct. 21, 2008).

Judge Lefkow granted defendants' Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff 24 Hour Fitness's (“24”) trade secret misappropriation complaint for lack of subject matter jurisdiction. 24 alleged that defendant Bally Total Fitness (“Bally) and the individual defendant (“Defendant”) misappropriated 24's trade secrets when Defendant resigned his position as 24's COO and became Bally's CEO. But defendants argued that the Court lacked subject matter jurisdiction over 24's state law trade secret claims because there was no diversity of citizenship – both 24 and Defendant were California citizens. 24 argued that Defendant was, in fact, a citizen of Illinois because he worked at Bally's Illinois headquarters and because Defendant's contract with Bally required that he move to Illinois before the case was filed.

Looking at the totality of the circumstances, the Court held that Defendant remained a citizen of California, where he had lived while employed by 24. Defendant had put his California home for sale and did have a contract requiring that he become domiciled in Illinois, although the particulars of the contract were disputed. But the most significant factor in the analysis was that Defendant's family remained in California. And Defendant had not purchased or rented a home in Illinois or gotten an Illinois driver's license, bank account or voter registration card.

Finally, the Court denied 24's request to file an amended complaint adding a federal Computer Fraud and Abuse Act claim. A complaint cannot be amended to create subject matter jurisdiction. The case, therefore, had to be dismissed.

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