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

Cement-Lock v. Gas Tech. Institute, No. 05 C 0018 (N.D. Ill. Mar. 11, 2007) (Pallmeyer, J.).

Judge Pallmeyer presided over a jury trial resulting in a verdict for plaintiffs Cement-Lock LLC and Alderman Richard Mell on behalf of Cement-Lock Group (collectively "CLG") on various RICO and breach of fiduciary duty claims.  The jury awarded CLG $15M in damages.  The jury also returned a verdict for defendants on CLG's trademark infringement and Illinois Uniform Deceptive Trade Practices Act claims.  Click here for Judge Pallmeyer's Order entering the verdict and here for the jury instructions (Count IX is the trademark infringement count and Count XI is the Illinois Deceptive Trade Practices Act count).

This was a dispute over the control and use of Cement–Lock technology (the “Technology”) which decontaminated certain waste products and used the decontaminated waste as a beneficial cement additive. CLG asserted various IP claims, including Lanham Act unfair competition, deceptive trade practices and trademark infringement. CLG alleged that defendants permitted defendant Gas Technology Institute (“GTI”) to secure funding for Technology-related activities, despite defendants’ knowledge that GTI had no license to use the Technology and kept knowledge of the funding from CLG. GTI also allegedly claimed to own and have developed the Technology.

For more about this case and the verdict, check out:

• The Blog's archives; and
  
  
• The Chicago Sun-Times.
  

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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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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.

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