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

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:

• Email This
• Print
• Comments
• Trackbacks

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.

• Email This
• Print
• Comments
• Trackbacks

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.

• Email This
• Print
• Comments
• Trackbacks

• Email This
• Print
• Comments
• Trackbacks

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.

• Email This
• Print
• Comments (1)
• Trackbacks

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.

• Email This
• Print
• Comments
• Trackbacks

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.

Plaintiff also argued that the newsletters sent to Illinois, the injury the Center inflicted upon plaintiff in Illinois and the Center's responses to plaintiff's cease and desist letters created specific jurisdiction.  The Court held that the newsletters could not create specific jurisdiction because they were not the basis for plaintiff's claims.  Plaintiff's alleged harm in Illinois did not create specific jurisdiction because the harm did not arise out of the Center's contacts with Illinois.  Furthermore, plaintiff provided no evidence that the alleged false statements were made in Illinois or were targeted toward Illinois residents.  Finally, the Court held that a single response to plaintiff's cease and desist letter could not create specific jurisdiction, particularly where the dispute does not arise out of the cease and desist letter.

• Email This
• Print
• Comments (1)
• Trackbacks

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.

• Email This
• Print
• Comments
• Trackbacks

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.

• Email This
• Print
• Comments
• Trackbacks

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. 

An Adwords user specifies search terms relevant to its business or website, so that whenever a search with those terms is performed on the Google site, the Adwords user's advertisement or website is displayed on the search results page.  The Court noted that the Seventh Circuit had not ruled on whether using trademarks as keywords in online search programs was a use "in commerce" as required by the Lanham Act, but noted that other courts had held that it was a use "in commerce."  The Court also held that defendants' use of plaintiff's marks was leading to "incalculable" loss.

• Email This
• Print
• Comments
• Trackbacks

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.

• Email This
• Print
• Comments
• Trackbacks

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.

• Email This
• Print
• Comments
• Trackbacks