Potential Reissue/Reexam Does Not Create Actual Controversy

Posted on October 17, 2007 by R. David Donoghue

Abbott Labs v. Baxter Healthcare Corp., No. 04 C 0836, 2007 WL 2875503 (N.D. Ill. Sep. 28, 2004) (Guzman, J.).

Judge Guzman granted plaintiff Abbott Laboratories’ (“Abbott”) Fed. R. Civ. P. 15(a) motion to amend its Complaint dismissing claims regarding its U.S. Patent No. 6,444,859 (the “’859 patent”). After the Federal Circuit held the parent of the ‘859 patent invalid, Abbott Labs v. Baxter Pharm. Prods., 471 F.3d 1363 (Fed. Cir. 2006), Abbott gave defendant Baxter Healthcare (“Baxter”) a covenant not to sue Baxter on the ‘859 patent (“Covenant”). Abbott, therefore, sought leave to dismiss its claims regarding the ‘859 patent. But Baxter argued that the claims should not be dismissed because the Covenant excluded any reissue or reexamination of the ‘859 patent, thereby creating an actual controversy. The Court held that Abbott’s potential suit based upon its potential reissue or reexam of the ‘859 patent did not create a current controversy. The Court, therefore, allowed Abbott to amend its Complaint dismissing claims regarding the ‘859 patent. 

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Contract Terms are Not Trade Secret

Posted on June 11, 2007 by R. David Donoghue

Am. Hardware Manufs. Assoc. v. Reed Elsevier Inc., No. 03 C 9421, 2007 WL 1521185 (N.D. Ill. May 14, 2007) (Moran, J.).

Judge Moran denied in part plaintiff's motion to strike defendants' confidentiality designations regarding the deposition of defendants' former CEO.  Defendants designated as "Highly Confidential," among other portions of the deposition, those portions in which one of defendants' customer contracts (the "Contract") was discussed.  Defendants argued that the terms of the Contract were trade secrets and, therefore, should be given the strongest confidentiality protection available pursuant to the parties' Protective Order.  Magistrate Judge Mason previously reviewed the designation, held that the Contract was not likely trade secret and reduced the related designations to "Confidential."  Judge Moran agreed with Judge Mason, rejecting the argument that the Contract was a trade secret as "conclusory and vague."  And Judge Moran agreed that the Contract warranted a "Confidential" designation.  Judge Moran also explained that while the deposition and related documents would be protected by the Protective Order during discovery, they would not when the Court ruled on dispositive motion or held trial, quoting the Seventh Circuit:

"Secrecy is fine at the discovery stage, before the material enters the judicial record" those documents that "influence or underpin the judicial decision are open to public inspection unless they meet the definition of trade secrets or other categories of bona fide long-term confidentiality."  Baxter Int'l, Inc. v. Abbott Labs., 297 F.3d 544, 545 (7th Cir. 2002).  Thus, at the summary judgment, trial or appellate stage, documents that have previously been deemed confidential may not retain such a designation.  See Little v. Mitsubishi Motor Mfg. of Am. Inc., 2006 WL 1554317, at *3 (C.D. Ill. 2006).

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