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

Culligan Int'l Co. v. Water Sys. of Birmingham, Inc., No. 10 C 8199, Slip Op. (N.D. Ill. Apr. 27, 2011) (Bucklo, J.).

The Court granted defendants' Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trademark dispute regarding plaintiff's CULLIGAN marks. Defendants were Alabama entities without offices, employees or agents in Illinois. All of defendants' business was conducted in Alabama. The parties' agreement was negotiated and executed in Alabama, and there was no indication of a choice of law provision selecting Illinois law. The only connection to Illinois was that plaintiff did business in Illinois, and that was not sufficient to create jurisdiction over defendants.
 

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Caldera Pharms., Inc. v. Los Alamos Nat'l. Sec., L.L.C., No. 10 C 6347, Slip Op. (N.D. Ill. Mar. 11, 2011) (Bucklo, J.).

Judge Bucklo granted defendant UChicago Argonne's ("Argonne") Fed. R. Civ. P. 12(b)(1) & (b) motion to dismiss plaintiff Caldera's claims against Argonne in this patent dispute. Caldera was allegedly the exclusive licensee of the patents-in-suit and Argonne was allegedly using the patented technology in a partnership with the licensor. Argonne argued that there was no case or controversy for Caldera's declaratory judgment complaint because: 1) Argonne had no contract with Caldera; and 2) Caldera lacked the right to bring suit using the patents-in-suit. Caldera said its claims did not sound in breach of contract or patent infringement, but Caldera never explained what its claim was. And because Caldera had the burden of proof, the motion was granted.

Argonne also argued that Caldera's claims were not sufficiently plead. In response, Caldera simply restated its claim with the relevant portion bolded. But merely restating claims in bold does not support plaintiff's claims or overcome a motion to dismiss. The Court, therefore, dismissed the claims.
 

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Late Allergen Reduction, LLC v. Dynarex Corp., No. 10 C 129, Slip Op. (N.D. Ill. Apr. 21, 2011) (Bucklo, J.).

Judge Bucklo construed the claims in this patent infringement case involving a method of neutralizing protein allergens found in natural rubber latex. Here are constructions of note:

• "The protein allergens" was construed to require that the method degrade all of the protein allergens in the latex, not just one or more protein allergens.
   
• "Non-allergenic to humans" was construed as "the protein allergens contained within the natural rubber latex are degraded such that the natural rubber latex is incapable of producing an allergic reaction in any human . . . ." Plaintiff's proposed construction requiring greatly reduced levels of allergens to "most humans" would render the claims indefinite.
   
• "Non-transmissive" was construed as "an optical structure that reduces the transmission of radiant light to the greatest degree practicable consistent with the intended purpose."
   
• "A protease enzyme and a peptidase enzyme" was construed as requiring two separate enzymes, one being a protease and the other being a peptidase. It could not be a single enzyme of both types.

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Viskase Cos., Inc. v. World Pac Int'l AG, No. 09 C 5022, Slip Op. (N.D. Ill. Feb. 3, 2011) (Bucklo, J.).

Judge Bucklo granted declaratory judgment plaintiff Viskase's motion for summary judgment of invalidity and denied the remaining cross-summary judgment motions as moot in this patent dispute involving food casings that prevent the loss of weight, flavor and taste. The Court previously construed "impermeable" to mean that the casing did not allow any measurable loss of weight, flavor or moisture. Instead of addressing each of Viskase's arguments element-by-element, declaratory judgment defendant World Pac put "all of its eggs in one basket." The Court denied World Pac's earlier summary judgment motion regarding infringement largely because of World Pac's failure to test the alleged impermeability of Viskase's accused products. World Pac, therefore, argued that because Viskase had not tested sausages covered by the prior art patent, it could not succeed.

But the Court explained that "what is good for the goose is not always good for the gander." The Court held that there was no authority requiring that a party test alleged anticipatory prior art patents to prove that they read on the asserted patent. While there was some appeal to World Pac's argument, it was unsuccessful. An accused infringer is not required to test prior art products. Furthermore, World Pac's own expert had conceded that the relevant claim elements of the patent-in-suit were disclosed in the prior art patent.
 

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Viskase v. World Pac, No. 09 C 5022, Slip Op. (N.D. Ill. Oct. 15, 2010) (Bucklo, J.).

Judge Bucklo granted defendants' motion to reconsider, ordering production of the "Merritt Memo" previously held to be privileged because it included litigation counsel. The Court held that litigation counsel, before becoming litigation counsel, was the principal conduit to opinion counsel and his opinion was sought in connection with opinion counsel's analysis. The Court, however, held that no post-filing communications were discoverable in light of In re Seagate which provided post-filing protection where a preliminary injunction was denied. 

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Simonian v. Monster Cable Prods., No. 10 C 1269, Slip Op. (N.D. Ill. Nov. 22, 2010) (Bucklo, J.).

Judge Bucklo granted defendant Monster Cable Products' ("Monster") § 1404 motion to transfer this false patent marking case. Citing the Court's decision transferring another of plaintiff Simonian's false marking cases to Iowa in Simonian v. Pella. As in Pella, the qui tam plaintiff's chosen forum was given little deference. And California was the situs of the events because that is where Monster designed the packaging at issue and made the alleged marking decisions. Also, all of Monster's witnesses were located in California. The Court, therefore, transferred the case to the Northern District of California.

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Viskase Cos., Inc. v. World Pac Int'l. AG, No. 09 C 5022, Slip Op. (N.D. Ill. Aug. 9, 2010) (Bucklo, J.).

Judge Bucklo denied defendants' motion for preliminary injunction based upon World Pac's patent infringement counterclaim regarding impermeable sausage casings. Viskase's research and design documents referenced "World Pac knock-off[s]," "World Pac replacement[s]" and "World Pac me-too" products. The key infringement issue was whether Viskase's accused casings were "impermeable" as that term was construed by the Court. The parties set up a "classic battle of the experts" with competing testing disputing whether the accused sausage casing allowed a measurable weight loss, and therefore was permeable. While a jury would ultimately have to weigh the evidence, Viskase presented "more than insubstantial evidence" that the accused casings lost measurable weight. And Viskase's testing was done outside of litigation, lending it additional credibility. World Pac also failed to present sufficient evidence regarding loss of flavor and taste, the other "impermeable" characteristics. Viskase, therefore, raised a substantial noninfringement question. Furthermore, World Pac did not put forth sufficient evidence to warrant a preliminary injunction. Because Viskase raised a substantial question regarding noninfringement, the Court declined to examine Viskase's other defenses or the other element of a preliminary injunction.

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GS Cleantech Corp. v. Big River Resources Galva, LLC, No. 10 C 990, Slip Op. (N.D. Ill. Jul. 30, 2010) (Andersen, J.).

Judge Andersen reassigned this case so that it could be consolidated with a case before Judge Bucklo by the same plaintiff asserting the same patent accusing similar technologies. The Court also ordered that a stay awaiting resolution of a related District of Kansas case would apply to the consolidated case.

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Simonian v. Pella Corp., No. 10 C 1253, Slip Op. (N.D. Ill. Aug. 5, 2010) (Bucklo, J.)

Judge Bucklo granted defendant Pella's 28 U.S.C. § 1404(a) motion to transfer plaintiff Simonian's false patent marking case to the Southern District of Iowa. The court held that Simonian's choice of forum was not given deference, as it normally would be. First, the real plaintiff was the United States, not Simonian. Second, the situs of the material events was Iowa where Pella made its marking and packaging decisions, not Illinois where some marked products were sold. Simonian's numerous other false marking cases filed in the district did not weigh against transfer. Each of those cases involved different defendants, different accused products and different allegedly expired patents.
 

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Viskase Cos., Inc. v. World Pac Int'l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 18, 2010) (Bucklo, J.).

Judge Bucklo construed the claims in this patent case regarding food curing technologies for use in packing sausages and other processed foods. The following construction were of particular note:

• The Court declined to construe "barrier casing" holding that "barrier" did not require construction beyond its ordinary meaning. The parties real dispute was over the term "impermeable" which the Court construed.

• The Court construed "impermeable" as "having a low enough permeability or transmission rate to steam and/or gas to prevent a measurable loss of weight, flavor, and taste during customary production, cooking, and storage." This construction required a lower permeability than any known in the industry because that is how the patentee defined impermeable in the specification noting that courts cannot redraft claims to avoid "nonsensical results."

• "Plastic Foils" was construed as "a self-supporting film or sheet of plastic." Because the patent contemplated laminating the plastic foil, it has to be self-supporting because only self-supporting foils can be laminated.

• The Court held that "woven" in "woven fibers, fabric, knits and fleece" modified only fibers, not fabric, knits or fleece.

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Chief Judge Holderman recently gave the annual State of the Court address, concluding that the Northern District continues to be an active, growing district court. Civil case filings were up 6.2% from 2008 to 2009, and the Northern District remains in the top 10% of district courts for median time to disposition – 6.2 months. 

The Court began 2009 with one vacant judgeship – created by Judge Filip's March 2008 resignation. The Court ended 2009 with from after Judges Bucklo, Coar and Gettleman took senior status. In February 2010, Judge Manning also took senior status. Judge Feinerman was confirmed last month, reducing the vacant seats by one, but there could be five vacancies again at the end of July when Judge Anderson retires. 

The magistrate bench was also active. Judges Ashman and Keys shifted to recalled status. Judges Finnegan, Gilbert and Kim joined the bench. 

Finally, the number of registered e-filers is up 18% to over 25,000. And the daily filing rate is up 15% to an average 867 documents per day. 

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Ho v. Taflove, No. 07 C 4305, Slip Op. (N.D. Ill. Apr. 9, 2010 (Bucklo, J.) 

Judge Bucklo denied plaintiffs’ motion for reconsideration of the Court’s order granting defendants summary judgment as to plaintiffs’ Copyrights, Lanham Act and related state law claims in this dispute over whether defendants took plaintiffs’ mathematical model (the “Model”). As an initial matter, the Court noted that the Federal Rules of Civil Procedure do not provide for “motions to reconsider.” Rather, parties file either a Rule 59(e) motion to alter or amend judgment (within 28 days of the judgment) or a Rule 60(b) motion for relief from judgment (within a "reasonable time”). The substance of the motion determines whether it is heard pursuant to Rule 59(e) or Rule 60(b). Plaintiffs’ motion was brought pursuant to Rule 60(b), but the Court treated it as a Rule 59(e) motion because it sought to alter the judgment, not for relief from it.

A Rule 59(e) motion requires newly discovered evidence or manifest errors of law. Plaintiffs’ motion as to their state law conversion, copyright and Lanham Act claims relied upon additional facts that were available during the initial briefing, but not raised at that time. The Court, therefore, did not consider the evidence and the plaintiffs' arguments were denied.

As to the Court’s decision that the Model was not copyrightable as a mathematical formula pursuant to §102(b) of the Copyright Act, plaintiffs provided no convincing authority showing that it was copyrightable. And plaintiffs provided not even a single example of an alternate expression of the Model to satisfy the merger doctrine.

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Ho v. Taflove, No. 07 C 4305, Slip Op. (N.D. Ill. Jan. 15, 2010 (Bucklo, J.). 

Judge Bucklo granted defendants' motion for summary judgment in this copyright and Lanham Act case involving the alleged infringement and misappropriation of plaintiffs, a Northwestern professor and a Northwestern graduate student, mathematical model of a 4-level z-electron atomic model with Pauli Exclusion Principle for simulating the electron dynamics of active media using Finite Difference Domain method (the "Model"). 

Copyright Claims

Plaintiffs copyrighted their thesis, notebooks, certain figures and a presentation, all embodying the Model. The Court held that the Model was uncopyrightable because it was fact and algorithm. The Court explained why the Model was a fact as opposed to a cartoon character like Mickey Mouse, as defendants argued:

But Mickey Mouse is not an idea, procedure, process, system, method of operation, concept, principle, or discovery, and his characteristics and personality are not intended to realistically mimic those of a real mouse (e.g., wears clothes, owns a dog, has jobs, etc.)  Simply put, Mickey Mouse does not have plaintiffs' merger doctrine or 17 U.S.C. §102(b) problems.

To the extent the Model was copyrightable based upon "unique considerations" underlying the Model, plaintiffs did not identify the considerations or support them with evidence. And the two copyrighted charts consisted of unprotectable elements such as lines, arrows and parabolas.   Additionally, Northwestern described the figures as "fairly conventional diagramatic representations."

Lanham Act Claims

Citing the Supreme Court's Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041 (2003), decision, the Court held that the defendants were correct in identifying themselves as the originator of their papers, even if plaintiff originated the Model underlying the papers. The proper designation of origin is the producer of the work, not the author of the underlying idea. Because defendants prepared the papers, they were correctly identified. And the Court held that plaintiffs' common law unfair competition claim failed for the same reasons.

Conversion Claim

The Court granted summary judgment in defendants' favor as to plaintiffs' conversion claim because plaintiffs presented no evidence that defendants prevented plaintiffs access to their written works or to their intangible property – the Model or their research. Plaintiffs remained able at all times to continue their research.

Trade Secret & State Law Claims

The Court held that the Model was not a trade secret because plaintiffs published it in 2001 and 2002. The plaintiffs' remaining state law claims were also preempted by the Copyright Act.

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The Seventh Circuit instituted a Commission to study the implementation of the ABA Jury Project.  The Northern District was heavily represented on the Commission.  The following Northern District Judges were members of the Commission:  Bucklo, Brown, Coar, Darrah, Denlow, Der-Yeghiayan, Gottschall, Holderman, Kennelly, Lefkow, Moran, Schenkier, St. Eve, and Zagel.  The Commission recently published its report -- click here to read it.  The report describes a two phase analysis.  In the first phase, district judges tested the following seven ABA Principles:

1.       Twelve-Person Juries;

2.       Jury Selection Questionnaires;

3.       Preliminary Substantive Jury Instructions;

4.       Trial Time Limits;

5.       Juror Questions;

6.       Interim Trial Statements by Counsel; and

7.       Enhanced Jury Deliberations.

Other Principles, such as juror notebooks and allowing jurors to take notes, were already in such widespread use that they were not tested.  Click here for the Phase One Project manual detailing the principles, the rationales and authority behind them, and suggested procedures.  Phase One resulted in questionnaires from 22 participating federal trial judges, 74 participating attorneys and 303 jurors from 38 trials that used one or more of the seven Principles.  Based upon the analysis of Phase One results and questionnaires, the Commission focused Phase Two on the following four Principles:

1.       Juror Questions;

2.       Interim Trial Statements by Counsel;

3.       Twelve-Person Juries; and

4.       Preliminary Substantive Jury Instructions.

These Principles were chosen because of Phase One popularity (78% of jurors reported that being able to ask questions increased their satisfaction with the process) and because of a desire to study the Principles more.  Click here for the Phase Two manual.

In Phase Two, 108 jurors from 12 trials employing one or more of the Phase Two Principles filled out questionnaires.  In addition, 12 attorneys and 4 district judges that participated also filled out questionnaires.  The results are interesting, but more importantly create the opportunity to powerfully impact the trial system across the Seventh Circuit in ways that benefit all of the stakeholders in the trial process -- the litigants, the jurors, the judge and the judge's chambers, and the litigators.

All four of the Phase Two Principles showed significant benefits to the trial process.  83% of jurors reported an increased understanding of the facts when allowed to ask written questions through a judge -- the questions were reworded to meet evidentiary rules.  And 75% of judges and 65% of attorneys thought the questions benefited jurors.  Similarly, preliminary substantive jury instructions were found to improve trials by jurors (80%), judges (85%) and attorneys (70%).  And the same was true for interim statements to the jury -- jurors (80%) and judges (85%).  Finally, twelve-person juries were found not to harm efficiency, while increasing juror diversity.

Each of the four Phase Two Principles, as well as several of the additional three Phase One Principles deserve more attention and analysis.  So, over the next several weeks I will provide follow up posts discussing the findings of those Principles in greater detail.  I will start with the idea of juror questions, which I find particularly important, later this week or early next.

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The Northern District has posted the Seventh Circuit's new proposed pattern jury instructions for patent cases on its website -- click here for a copy.  The instructions include all of the recent revisions to the patent laws, including KSR and Seagate. The Seventh Circuit requested comments on the instructions be sent to:

Chief Judge Robert L. Miller, Jr.
robert_miller@innd.uscourts.gov
325 Robert A. Grant Federal Building
204 S. Main St.
South Bend, IN 46601

Comments will be accepted until April 1st.  Also, below is my list of IP jury instructions by Northern District judge, I am sure we will start to see some new ones soon in light of the turbulent 18 months patent law has had:

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Recycled Paper Greetings, Inc. v. Davis, No. 08 C 236, __ F. Supp.2d __, 2008 WL 282687 (N.D. Ill. Feb. 1, 2008) (Bucklo, J.).

Judge Bucklo denied plaintiff’s, Recycled Paper Greetings (“RPG”), motion for a temporary restraining order in this trade secret misappropriation action. RPG argued that it was either part of a joint venture or, at least, a confidential relationship with defendant Kathy Davis to develop a signature line of greeting cards. RPG contends that Davis took confidential information regarding the greeting card line to a competitor. Davis countered that she had terminated her contract with RPG pursuant to the contract’s termination provision before working with RPG’s competitor and there was, therefore, no breach or misappropriation. At an initial hearing, the Court suggested that live testimony might be required to fully resolve the motion for the TRO. But both parties told the Court that their respective witnesses would not be available during the necessary time frame to testify. Because no witnesses were available, the Court denied the TRO, holding that it lacked sufficient information to determine that RPG maintained its alleged trade secrets with sufficient secrecy or the nature of the relationship between RPG and Davis.

Practice tip: If you are seeking a TRO, line up commitments from your potential witnesses to be available both flexibly and quickly. Not many judges will grant TROs if plaintiff cannot present requested witnesses.

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Morton Grove Pharms., Inc. v. Nat'l. Pediculosis Assoc., __ F. Supp.2d __, 2007 WL 4259422 (N.D. Ill. Nov. 30, 2007) (Bucklo, J.).

Judge Bucklo granted in part defendants Fed. R. Civ. P. 12(b)(2) motion to dismiss and denied defendants’ motion to transfer the case to the Eastern District of Michigan. Plaintiff manufactures a line of lotions and shampoo which are FDA-approved for treating lice and scabies.  Defendants are a Michigan non-profit group, Ecology Center, Inc., and related individuals (collectively the "Center"), as well as the National Pediculosis Association. The Center mailed two newsletters related to passage of Michigan legislation to approximately 19,000 addresses of which 44 were in Illinois.  99% of the Center's donors were from Michigan, with just .23% from Illinois (18 Illinois-based donors total).  The Center's strongest ties to Illinois consisted of two donations totaling $270,000 from an Illinois-based foundation and an interactive website which accepts donations, although none have come from Illinois.  The Court previously held that these contacts did not create general jurisdiction.* 

The Court held that the Center’s act of sending even the two newsletters with the allegedly misleading and defamatory statements created specific jurisdiction over the Center. But the Court held that there was not specific jurisdiction over individual defendant William Weil. Weil’s name appeared in the newsletter, but he submitted an affidavit stating that he did not participate in mailing the newsletter and had no knowledge that it was being sent to any Illinois residents.

The Court did not transfer the case to the Eastern District of Michigan because the Center did not show that Michigan was clearly more convenient than the Northern District. Each party’s witnesses were in their preferred jurisdiction – the plaintiff’s in Illinois and the Center’s in Michigan – and the interests of justice are served by keeping the case in the Northern District. While median times to trial in both districts were comparable, plaintiff’s related, pending case in the Northern District made the Northern District the correct court to hear the case, even though the Court had severed the related case from this one.

* For discussion of the Court’s previous personal jurisdiction decision in this case, click here.

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Abanco Int'l., Inc. v. Guestlogix Inc., __ F. Supp.2d __, 2007 WL 1492928 (N.D. Ill. May 21, 2007) (Bucklo, J.).

Judge Bucklo dismissed plaintiff's conspiracy claim but not its unjust enrichment and tortious interference claims, holding that the former was preempted by the Illinois Trade Secret Act ("ITSA").  Plaintiff alleged that it entered a business relationship with defendant, supported by a confidentiality agreement (the "Agreement").  The parties were working together to supply airlines with electronic "buy-on-board" systems that would allow passengers to pay for drinks and other in-flight purchases with credit cards.  Plaintiff alleged that, based upon the Agreement, it provided defendant confidential, trade secret information about its buy-on-board system (the "Abanco System") and that with defendant's support, plaintiff entered negotiations to provide the Abanco System to third party American Airlines.  But after the parties' relationship soured, American Airlines allegedly ended negotiations with plaintiff and entered an agreement with defendant for a buy-on-board system.  Plaintiff then filed suit against defendant alleging trade secret misappropriation, breach of the Agreement, unjust enrichment, tortious interference and conspiracy.  The Court held that plaintiff's unjust enrichment and tortious interference claims were not preempted by ITSA because they were based upon information protected by the Agreement in addition to plaintiff's alleged trade secrets.  Specifically, plaintiff alleged that it gave defendant information "including information that was confidential, non-public, and proprietary and which constituted Abanco trade secrets." (emphasis added by the Court).  But plaintiff's conspiracy claim was based solely upon defendant's and American Airline's use of information obtained from Abanco "constitut[ing] trade secrets belonging to Abanco."  Because Abanco did not claim the conspiracy used any information other than its trade secrets, the conspiracy claim was preempted.

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Vanguard Prods. Group, Inc. v. Diam USA, Inc., No. 05 C 1323, Slip Op. (N.D. Ill. May 16, 2007) (Bucklo, J.).*

Judge Bucklo granted plaintiffs summary judgment of infringement and denied defendants summary judgment of invalidity.  The Court first construed the two claim terms at issue -- "electrically coupled" and "via the modular connector."  In both cases, the Court adopted the plaintiffs' construction after a detailed review of the intrinsic and extrinsic evidence.  Because neither term was in the original application or appears in the specification, the intrinsic evidence focused on the use of the terms within the claims.  Defendants also attempted to use claim language from a parent application to support their constructions, but the Court held that the prosecution of a term in a parent application generally does not limit different terms in its progeny.  In the instant case, the Court found that the parent application had used the broader term "electrical connection" instead of "electrically coupled" which weighed against defendants' construction.  Having ruled in plaintiffs' favor on the claim construction, the Court held that defendants' products infringed the asserted claims of plaintiffs' patents.  And the Court held that defendants' asserted prior art did not anticipate plaintiffs' patents.

*  Because I beat Westlaw on this one, you can access a copy of the Court's opinion here.  Please note that the Court issued a subsequent order modifying the opinion by deleting footnotes three and four, which were not intended to be part of the opinion.

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Morton Grove Pharms., Inc. v. Nat'l. Pediculosis Assoc., __ F. Supp.2d __, 2007 WL 1302971 (N.D. Ill. May 3, 2007) (Bucklo, J.).

Judge Bucklo granted defendants' motion and dismissed plaintiff's deceptive trade practices case for lack of personal jurisdiction.  Defendants' sporadic contacts with Illinois did not confer general jurisdiction.  Plaintiff manufactures a line of lotions and shampoo which are FDA-approved for treating lice and scabies.  Defendants are a Michigan non-profit group, Ecology Center, Inc., and related individuals (collectively the "Center"), as well as the National Pediculosis Association which is not a party to the motion to dismiss.The Center mailed two newsletters related to passage of Michigan legislation to approximately 19,000 addresses of which 44 were in Illinois.  99% of the Center's donors were from Michigan, with just .23% from Illinois (18 Illinois-based donors total).  The Center's strongest ties to Illinois consisted of two donations totaling $270,000 from an Illinois-based foundation and an interactive website which accepts donations, although none have come from Illinois.  The Court held that these occasional contacts did not rise to the level of continuous and systematic, as required for general jurisdiction.

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GMAC Real Estate, LLC v. E.L. Cutler & Assocs., Inc., 472 F. Supp.2d 960 (N.D. Ill. Oct. 20, 2006) (Bucklo, J.).

Judge Bucklo held that the Court lacked personal jurisdiction over defendant and dismissed plaintiff's complaint.  Plaintiff, a franchiser of residential real estate brokerages, brought this suit alleging that defendant, a former franchisee, breached its agreement with plaintiff and after the breach continued using plaintiff's trade and service marks.  The Court held that defendant's continued business relationship with plaintiff after plaintiff moved from New Jersey to Illinois was not sufficient to create specific jurisdiction.  While defendant had exchanged some communications with plaintiff in Illinois and come to Illinois for business meetings on one or more occasions, the Court lacked jurisdiction because the parties negotiated the underlying agreement in New Jersey (plaintiff's prior main office) and Ohio (defendant's location); defendant paid its franchising fees to plaintiff's Pennsylvania office; defendant's post-termination obligations which it allegedly did not meet were to have been performed in Ohio; and plaintiff's letter to defendant terminating the franchise agreement had a New Jersey return address.  Furthermore, the Court held that the location of defendant's alleged trademark infringement and cybersquatting was in Ohio, not Illinois.

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Chicago Tribune Co. v. Fox News Network LLC, No. 07 C 0865, 2007 WL 1052508 (N.D. Ill. Apr. 4, 2007) (Bucklo, J.).*

Judge Bucklo denied plaintiff Chicago Tribune's ("Tribune") motion for a preliminary injunction.  The Tribune sought an injunction which would have required defendant Fox News Networks ("Fox") to change the name of its "Redeye" late-night television news program based upon alleged infringement of the Tribune's Redeye mark related to its Redeye newspaper.  The Court held that the Tribune had only shown a "possibility" that it would prevail on the merits.  The Court found that the Tribune's Redeye mark was at least suggestive and, therefore a strong mark.  And the Court held that while the marks did not visually resemble each other, the Tribune proved a likelihood that the marks were aurally identical.  But the evidence did not favor the Tribune on either of the other two "most important" factors in deciding likelihood of confusion:  defendant's intent and actual confusion.  No evidence showed that Fox "passed off" its program as coming from the Tribune, so the issue of Fox's intent favored Fox.  As to actual confusion, the Tribune put forth a witness that testified that he suffered "momentary actual confusion" when he first learned of Fox's Redeye program, but that it was cleared up almost immediately by someone he was talking with about the program.  Additionally, the witness did not have cable television, so could not watch the show.  While initial confusion can be sufficient to show actual confusion, the Court disregarded the witnesses testimony because he admitted that he was a consumer of neither the Tribune's nor Fox's products. 

Having determined that the Tribune had shown a "possibility" of success on the merits, the Court balanced the possibility against the potential harm to the public and to Fox.  Fox presented evidence that it could not change the name of its program only in Chicago and would have to change it nationwide at great expense.  While the Court was not persuaded by Fox's assessment of the monetary cost of changing the program's name, the Court held that changing the name would have been difficult for a show that had obtained a national audience and denied the preliminary injunction.  The Court did, however, note that additional evidence might show that the relevant public is likely to confuse the Tribune's Redeye mark with Fox's Redeye program.  As a result, the Court ordered expedited discovery and set a quick trial date -- August 6, 2007.

If you would like to read the opinion, which is very thorough and interesting, you can find it here.

*  The Blog reported the filing of this suit in this prior post.

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International Profit Assocs., Inc. v. Paisola, 461 F. Supp.2d 672 (N.D. Ill. Nov. 14, 2006) (Bucklo, J.).

Judge Bucklo held that plaintiff was likely to succeed on its Lanham Act and cyberpiracy or cybersquatter, 15 U.S.C. Section 1125(d), claims and issued a temporary restraining order ("TRO") preventing defendants from conduct that likely infringed plaintiff's trademarks.  Based upon the cyberpiracy claim, Defendants were ordered to stop making content available through their website, www.ipaopinion.com, which was likely confusingly similar to plaintiff's site, www.ipaopinions.com.  The Court also ordered defendants to stop using plaintiff's trademarks as search terms in Google's Adwords program. 

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McKillup Indus., Inc. v. Integrated Label Corp., No. 06 C 3279, 2006 WL 3775954 (N.D. Ill. Dec. 19, 2006) (Bucklo, J.).

Judge Bucklo denied summary judgment that defendant's "integrated labels," "integrated cards" and "integrated forms" marks were generic.  Plaintiff argued that the marks were generic based upon the separate dictionary definitions of "integrated" and "labels/cards/forms" (although there was no dictionary definition of either of the three whole marks) and evidence that competitors use the term, including a Google search of each of the marks.

The Court cited Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169 (7th Cir. 1996) for the proposition that the fact that a mark's component words are in the dictionary "cannot count for much."  Id. at 171.  In Door Systems, the Seventh Circuit held that "Seven-Up" was not generic even though its component words were.  Similarly, the Court held that the fact that "integrated," "label," "card" and "form" were defined in the dictionary did not weigh in favor of a genericness finding.

With respect to the evidence of the terms' use by competitors, the Court held that the limited evidence presented, which included use of other terms to refer to the products, was not sufficient to warrant summary judgment of genericness.  It was not clear from the evidence how far the alleged generic use extended into the relevant public perception or any specific geographic region.  As a result, summary judgment was denied.

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Judges Bucklo, Coar, Gettleman, Kennelly and Lefkow are instituting a joint trial call in 2007 (the N.D. Ill.'s statement about it is here).  Each judge is contributing cases to the call, apparently at the judge's discretion.  The cases in the call will be tried in order by one of the five judges, although not necessarily the judge originally assigned the case.  Each trial is expected to last no longer than five days and the attorneys and parties for a case on the call are expected to be ready for trial, including producing witnesses, on 48 hours notice.  I suspect that the five day trial limit will remove the typical patent case, although plenty of trade secret, trademark and copyright cases could end up on the joint call.  The judges on the call also intend to use suggestions from the Seventh Circuit Bar Association Jury Project Commission to speed the trials (more on the Commission's recommendations here).

This practice will make the Northern District, at least for some cases assigned to the participating judges, more like the Eastern District of Virginia, which randomly assigns judges to each new motion or trial throughout a proceeding.  It may also make it harder to delay a trial, turning up the heat on pre-voir dire settlement negotiations.

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