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

Cassetica Software, Inc. v. Computer Sciences Corp., No. 09 C 0003, Slip Op. (N.D. Ill. Jun. 18, 2009) (Kendall, J.).

Judge Kendall granted defendant CSC's Fed. R. Civ. P. 12(b)(6) motion to dismiss.  Plaintiff Cassetica asserted patent infringement, breach of contract, violation of the Computer Fraud and Abuse Act ("CFAA"), and related state law claims based upon CSC's alleged continued use of Cassetica's NotesMedic software after the end the parties' contract for the software.  The Court dismissed each claim as follows:

• Copyright Infringement:  Cassetica's copyright claim was dismissed because Cassetica could not recover its claimed statutory damages.  Cassetica registered its copyright after CSC's alleged infringement began.  It did not matter that CSC's alleged infringement allegedly continued after the registration.
   
• Breach of Contract:  Because CSC's alleged breach occurred after the contract terminated there was no longer a contract to be breached and, therefore, no claim.
   
• CFAA:  There was no "damage" as defined by the CFAA.  The CFAA defines damages as harm to a computer system's data.  But Cassetica alleged copying of electronic information, not that any of its data was lost or harmed.  Otherwise, Cassetica only made bare allegations that its data was harmed without any factual statement.
   
• Other State Law Claims:  Cassetica's conversion, trespass to chattels and unjust enrichment claims were all preempted by the copyright law because each state law claim was based upon the alleged downloads of the NotesMedic software.

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CardioNet, Inc. v. LifeWatch Corp., No. 07 C 6625, 2008 WL 567223 (N.D. Ill. Feb. 27, 2008) (Conlon, J.).

Judge Conlon granted in part defendants’ (collectively, “LifeWatch”) motion to dismiss plaintiff CardioNet’s state law claims as preempted by the Illinois Trade Secrets Act (“ITSA”). CardioNet alleged that LifeWatch improperly obtained one of CardioNet’s prescription-only MCOT remote heart monitoring devices by getting a false prescription for it. LifeWatch then tested the MCOT by, among other things, simulating a heart attack. Based upon the tests, LifeWatch gathered allegedly trade secret information from the MCOT.

The Court held that CardioNet’s conversion claim was preempted to the extent it was based upon gathering trade secret information from the MCOT because conversion of trade secrets is a restatement of misappropriation. But the claim was not preempted as it related to conversion of the MCOT device.

Similarly, CardioNet’s fraud claim was preempted to the extent the alleged fraud was acquiring the trade secret or confidential information, but the claim was not preempted to the extent the alleged fraud was acquiring the MCOT device.

CardioNet’s intentional interference with contract claim was not preempted. The alleged wrong was not the alleged misappropriation, but interference with the contract signed by the patient to get the MCOT.

Finally, CardioNet’s unfair competition claim was preempted. The alleged unfair competition was possession and use of the alleged trade secret information taken from the MCOT, the same acts forming the trade secret claim.

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Richmond v. National Inst. of Certified Estate Planners, No. 06 C 1032, 2006 WL 2375454 (N. D. Ill. Aug. 15, 2006) (Manning, J.).

This is a trademark action regarding defendants' use of the term "certified estate planner" ("CEP").  In addition to trademark claims, plaintiff also brought claims for civil conspiracy, conversion and trespass to chattel.  Plaintiff alleged that defendants' use of the CEP mark constituted conversion and trespass to chattel.  Plaintiff also alleged that the individual defendants engaged in civil conspiracy by taking the CEP mark for the benefit of NICEP and for their own individual uses.

Judge Manning dismissed the conversion and trespass claims, noting that Illinois conversion and trespass claims typically require that the chattel exist independently (e.g., a television signal or a car), as opposed to a trademark which is solely a creation of federal statute.  The Court further noted that the conversion and trespass claims were "just a different and unnecessary restatement of [plaintiff's] federal trademark infringement claims," citing McCarthy on Trademarks. Call a trademark infringement claim whatever you want, but the Court is still going to resolve it as a trademark infringement claim.

The Court dismissed the civil conspiracy claim for lack of personal jurisdiction based upon the fiduciary shield doctrine (courts have no personal jurisdiction over a non-resident corporate official where the official's only contacts with Illinois come in the official's corporate capacity).

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