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

Shen Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, Slip Op. (N.D. Ill. May 29, 2008) (Guzman, J.).

Judge Guzman construed the disputed claim terms from plaintiff's patent for a skin-enhancing glove. The parties disputed two terms: dehydrated and dry. Defendants argued dehydrated meant removal of all water, while plaintiffs argued it meant removal of water, but not necessarily all water. Judge Holderman construed dehydrated as used in a related patent in an earlier suit between the parties, consistent with plaintiff's proposed construction.* Because Ansell advanced the same construction in the present suit that it lost in the earlier suit before Judge Holderman, the Court held that collateral estoppel, or issue preclusion, prevented Ansell from arguing against plaintiff's construction. The Court also noted that Judge Holderman's construction was correct.

The Court construed "dry" in a similar fashion to mean removal of water, but not necessarily all water, based upon the prosecution history.

* I was involved in the briefing before Judge Holderman, but I am not involved in the current case.

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According to this Northern District press release, the Illinois Broadcasters Association ("IBA") honored the Northern District's Court Information Officer Joel Daly with one of two inaugural Illinois Broadcast Pioneer Awards.  The award honored Daly's fifty year broadcasting career.  Here is some of what the IBA had to say about Daly:

Joel Daly, one of the most recognizable names in Chicago broadcasting, co-anchors ABC 7’s 4 p.m. newscast, alongside Linda Yu, and serves as a reporter for ABC 7 News. The ABC 7 News at 4 p.m. is the top rated newscast in its time period.

                                                      * * *

Inducted into the Chicago Journalism Hall of Fame in 2003 as a “living legend,” Daly has won five Chicago Emmy Awards, including a citation for nightly commentary, a citation for “highlighting the genuine humanity and humor in the day’s happenings,” and an award for excellence in writing. He twice received the Herman Kogan Award from the Chicago Bar Association and the NATAS Silver Circle Award. His commentaries were also honored with the 1973 Liberty Bell awarded from the Chicago Bar Association and the 1974 Human Relations award from the American Jewish Congress.

In addition to his role as newscaster, Daly is active in music and theater. He appears yearly in the “Christmas Spirits” revue of the Chicago Bar Association and is part of a repertory company that regularly produces radio plays at the Museum of Broadcasting. He was critically lauded for his 1994 role as Atticus Finch in “To Kill a Mockingbird” at Chicago’s Wisdom Bridge Theater. Daly also shone in “Darrow,” a one-man play about the legendary Clarence Darrow, and as the lead character in William Kennedy’s Grand View” at the Pegasus Theater.

Click here to read more about Daly's impressive credentials from the IBA.

Congratulations Joel.  You are an outstanding broadcaster and have done an excellent job establishing your role as the Northern District's media contact and liaison.

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According to Chief Judge Holderman during the annual state of the Northern District speech, the state of the Northern District is "good" -- click here for the Northern District's statement regarding the speech.  The Northern District was briefly at full capacity, between Judge Dow's appointment to the Northern District and Judge Filip's resignation to join the Department of Justice.  Other highlights of the presentation included:

• The Northern District remains in the top ten districts in terms of median time to civil case disposition at 6.2 months.
  
• Magistrate Judges Brown and Mahoney were reappointed to additional eight year terms; and
  
• The Northern District's 2007 civil case load remained nearly constant, falling only .5% from its 2006 level.

The Northern District's steady civil case load is especially impressive in light of the Seventh Circuit's reduced case load in 2007.  The Chicago Tribune's Ameet Sachdev reported -- click here for the story -- that the Seventh Circuit's Chief Judge Easterbrook, during his state of the Seventh Circuit speech, reported that the Seventh Circuit's case load dropped 10% for the second year in a row.  Sachdev noted that federal appellate court case loads had averaged a 5% drop per year since 2000.  And Easterbrook explained the Seventh Circuit's 10% drop for 2007 as based upon two primary factors:

• The Seventh Circuit's district courts saw an overall 6% drop in their case loads; and
  
• The Seventh Circuit's preference for bright line rules over totality of the circumstance tests made it easier for entities to settle their disputes, saying:

Rules make it easier for private parties to avoid litigation, or settle their disputes, without asking for appellate evaluation in every case.

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The Northern District of Illinois and Chicago's Federal Bar Association chapter are hosting their Ninth Annual Awards for Excellence in Pro Bono and Public Interest Service awards program this Tuesday, May 13 beginning at 3:30 pm in the James Benton Parsons Memorial Courtroom (2525) of the Dirksen United States Courthouse at 219 South Dearborn Street. The program is open to everyone and is free of charge.

The keynote speaker will be William Neukom, the President of the ABA and partner in K&L Gates.  Prior to his private practice, Neukom was executive vice president of Law and Corporate Affairs for
Microsoft, where he managed Microsoft’s legal, government affairs and philanthropic
activities.

Seven “Awards for Excellence in Pro Bono and Public Interest Service” and one “Special
Recognition Award for Public Interest Service” will be presented to the following Chicago-area lawyers for their pro bono and public interest work before the Northern District:

• Sara C. Arroyo and Rosa M. Tumialán, of Dykema Gossett PLLC (presented by the Judge Coar);
  
• Anthony J. Masciopinto, of Kulwin, Masciopinto & Kulwin, LLP (presented by Judge Manning);
  
• Myron Mackoff, of Richardson & Mackoff (presented by the Chief Judge Holderman and Magistrate Judge Valdez);
  
• Joshua D. Lee and Amy M. Rubenstein, of Schiff Hardin LLP (presented by the
  Judge Brown);
  
• Catherine Caporusso and Margot Klein, of the Federal District Court's Self-Help Assistance Program (presented by Judge Hibbler);
  
• David A. Gordon, Michael B. Nadler, and Kristen R. Seeger, of Sidley Austin LLP (presented
  by Magistrate Judge Schenkier);
  
• Lisa R. Kane, of Lisa Kane & Associates, PC (presented by Chief Judge Holderman); and
  
• Richard J. Gonzales, Clinical Professor of Law, Chicago-Kent (presented by Chief Judge Holderman).

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Autotech Techs. Ltd. Partnership v. Automationdirect.com, Inc., No. 05 C 5488, 2008 WL 783303 (N.D. Ill. Mar. 25, 2008) (Cole, Mag. J.).*

Judge Cole granted in part plaintiff Autotech's motion to compel communications between defendant Automationdirect.com, Inc. ("ADC") and any third party regarding ADC's competing C-More touch screen panel. The Court held that ADC need not produce documents related to source code for the C-More product. The Court previously denied Autotech's motion to amend its complaint adding claims related to that source code. But the Court held that ADC's third party communications could be relevant to show whether ADC has complied with its contractual obligation to use its best efforts to sell Autotech's product, or if its C-More sales efforts interfered with sales of Autotech's products. The Court also held that any communication evidencing customer confusion must be produced.

Practice Tip: Do not employ new arguments in reply briefs. The Court did not consider Autotech's reply brief because it changed the scope of its argument on reply. Autotech's opening brief sought ADC's third party communications with the exception of those regarding ADC's source code because claims regarding ADC's software were not in the case. But on reply, Autotech also sought the source code related communications.

*Click here for more about this case in the Blog's archives.

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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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Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*

Judge Cox granted in part a motion to compel discovery regarding defendant’s advice of counsel defense. The Court ordered defendants to product a technical witness that provided opinion counsel information because opinion counsel was unable to remember the substance of conversations between the two.

The Court also ordered production of communications between opinion counsel and trial counsel related to the patent in suit. These communications were within the scope of defendant’s waiver, even though a deposition of trial counsel would not have been allowed.

The Court did not allow plaintiff to take any additional fact depositions. Plaintiff argued it had waited to take certain fact depositions because the witnesses were expected to be Fed. R. Civ. P. 30(b)(6) designers regarding defendants’ willfulness defense. But the Court did not allow the deposition because fact discovery was closed and because plaintiff had deposed other witnesses on the same topics. 

The most exciting part of this opinion, however, was its form, not its substance – Judge Cox used footnotes for cites. While this format is infinitely more readable and has many prominent advocates – Brian Garner, the (new) legal writer,  Wayne Scheiss and me (perhaps not the most prominent but I am an advocate of footnote citation) – it is a bold move in the typically conservative realm of judicial writing. At least one other Northern District Judge, Chief Judge Holderman, has used footnote citation. If you are aware of other examples, let me know. 

Thank you Judge Cox.

* Click here for more on this case and related cases in the Blog’s archives.

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Papst Lic. GmbH & Co. KG v. Fujifilm Corp., No. 07 C 3401, Slip Op. (N.D. Ill. Nov. 27, 2007) (Holderman, C.J.).

Judge Holderman transferred this case to the District of the District of Columbia (“D.D.C.”) pursuant to an order of the Multidistrict Litigation Panel (“MDL Panel”). Plaintiff Papst Licensing (“Papst”) sought centralization pursuant to 28 U.S.C. Section 1407 of this case and four others – two in the D.D.C, one in the District of Delaware and on in the District of New Jersey. The MDL Panel centralized the cases, but centralized them in the D.D.C., instead of the Northern District. The first, and the most advanced, of the cases was pending in the D.D.C. And the MDL Panel held that the East Coast would be the most convenient location for the majority of the parties.

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Late last week, President Bush signed the appointment papers for the Northern District's newest judge, the Honorable Robert M. Dow, Jr.  Judge Dow was sworn-in last Friday by Chief Judge Holderman and is sitting in the Northern District's Eastern Division.  Here is some biographical information about Judge Dow from the Northern District’s announcement of his appointment (click here for the announcement):

From 1993 to 1994, Judge Dow served as Law Clerk to The Honorable Joel M. Flaum of the United States Court of Appeals for the Seventh Circuit. Since 1995, Judge Dow has been employed at Mayer Brown, LLP, where he specialized in general and appellate litigation, with particular emphasis on telecommunications, state and federal constitutional law, jurisdiction, civil procedure, preemption, mass tort and products liability, admissibility of expert testimony, and class actions. Judge Dow has been acclaimed as a “superb” lawyer in the field of communications and technology law, as recognized by Chambers USA's Guide to America's Leading Business Lawyers. In his spare time, Judge Dow serves as Secretary for the Committee of Selection for the Rhodes Scholarships, State of Illinois, and on the Development and Academic Committees of Joliet Catholic Academy. Judge Dow was himself named a Rhodes Scholar in 1990. 

Judge Dow has had a distinguished academic career, with degrees from Yale University (B.A., 1987), University of Oxford (M. Phil. in International Relations, 1990; D. Phil. in International Relations, 1997), and Harvard Law School (J.D., 1993). While at Harvard Law School, in addition to graduating with honors, Judge Dow served as supervising editor of the Harvard Journal on Legislation, a member of the Editorial Board for the Harvard Human Rights Journal, and a Teaching Fellow at Harvard College.

Welcome to the Northern District Judge Dow. Judge Dow’s investiture ceremony is scheduled for Friday, January 11, 2008 at 4:00 pm.

 

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Effective this Thursday, November 1, Chief Judge Holderman has revised the general order on electronic filing to allow for electronic filing of initiating documents, such as complaints and notices of appeal.  E-filers will also be able to pay fees online.  And if all other parties to a case are registered e-filers, you will no longer be required to file a separate certificate of service with filed documents.  Of course, in my experience some parties have already done away with the certificate of service for electronically filed documents.  For more specifics on the new rules, click here.

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The Northern District's Clerk's Office will be closed tomorrow, Thursday, October 25 from 3:30 pm to 4:30 pm, to allow the staff to attend a meeting.  So, either file early tomorrow, file electronically or use the drop box.

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Autotech Techs. Ltd. Ptnshp. V. Automation Direct.com Inc., No. 05 C 5488, 2007 WL 2746654 (N.D.Ill. Sep. 18, 2007) (Cole, Mag. J.).*

Judge Cole denied plaintiffs’ (collectively “Autotech”) motion to compel production of defendant Koyo Electronics’ (“Koyo”) touchscreen source code. In Autotech’s Third Amended Complaint – filed without the leave of Court required by Fed. R. Civ. P. 15, but later allowed by Chief Judge Holderman – Autotech alleged that defendants infringed Autotech’s copyrights in its touchscreen display images. Autotech also alluded to source code infringement, but did not explicitly claim it. 

In a later interrogatory response, Autotech stated that it was not claiming that defendants’ source code infringed Autotech’s copyrights, but reserved the right to amend the complaint adding such charges. Because Autotech had not sought leave to add source code infringement claims to its complaint, the Court held that the requested source code was not relevant and production was not required. The Court also noted that the request seeking source code was improper because it was served less than thirty days before the fact discovery close in violation of Local Rule 16.1. It did not matter that the deadline was ultimately extended because the extension was granted after the original fact discovery close and after the deadline for responding to the document requests.

Practice tip: Whenever a Court issues a fact discovery close, get out your calendar, count backward thirty days and mark the last day for serving discovery requests. You would be amazed at how many litigators do not take note of this important date.

*Click here for more on this case in the Blog's archives.

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Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., No. 06-1561, Slip Op. (Fed. Cir. Sept. 12, 2007) (Holderman, C.J., sitting by designation.).*

On behalf of Chief Judge Michel and Judge Gajarsa, the Northern District’s Chief Judge Holderman affirmed C.D. California’s holding that declaratory judgment plaintiffs’ (“Arminak”) “AA Trigger” shroud design for a spray bottle did not infringe declaratory judgment defendant’s (“Calmar”) design patents covering certain design elements of shrouds. The main issue, and one of first impression, was whether the “ordinary observer” for purposes of design patent infringement should be the end-user/purchaser of spray bottles or the industrial purchaser that buys triggers or shrouds for assembly into a finished spray bottle product. The district court held that the ordinary observer was the industrial purchaser and the evidence clearly established that industrial purchasers would not be confused by similarities between Arminak’s and Calmar’s patented shrouds. Calmar argued, however, that the Supreme Court in Gorham Mfg. Co. v. White, 81 U.S. 511 (1871), expressly excluded experts from being ordinary observers and that, therefore, retail purchasers had to be the ordinary observer. But the Federal Circuit noted that did not sell shrouds or fully assembled spray bottles including their respective shrouds to retail purchasers. The parties sell shrouds to industrial purchasers. Industrial purchasers, therefore, are the appropriate population of ordinary observers. The ordinary observer is:

A person who is either a purchaser or, or sufficiently interested in, the item that displays the patented designs and who has the capability of making a reasonably discerning decision when observing the accused item’s design whether the accused item is substantially the same as the item claimed in the design patent.

* This is not an appeal from the Northern District, but I am covering it because Chief Judge Holderman authored the Opinion. Thanks to Dennis Crouch at Patently-O for bringing the case to my attention.

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Autotech Techs. Ltd. Partnership v. AutomationDirect.com, Inc., No. 05 C 5488, 2007 WL 2388794 (N.D. Ill. Aug. 17, 2007) (Holderman, C.J.).

Judge Holderman denied the parties’ cross-motion for summary judgment regarding the parties’ opposing trademark infringement claims regarding the “EZTOUCH” and “EZTEXT” marks. For approximately five years, the parties worked together with plaintiff manufacturing and defendant exclusively distributing a line of operator interface panels using the “EZTOUCH” and “EZTEXT” marks. When the business relationship deteriorated the parties disputed ownership of the marks and each attempted to register them with the PTO, as well as filing suits which were consolidated into this suit. The Court held that in a dispute between manufacturers and distributors, trademark ownership is first governed by contract and, if not resolved by contract, then presumed to be with the manufacturer. In this case, the parties agreed by contract that the trademark ownership was disputed. The Court, therefore, looked to a series of factors to determine whether ownership could be determined. The Court held that the parties raised factual disputes and competing positions which the trier of fact must weigh to determine ownership. The parties each presented evidence that they created and first used the marks in commerce. The parties both used their names in connection with the marks and controlled the quality of the products sold. And both parties paid for advertising involving the marks. The Court, therefore, could not decide trademark ownership or summary judgment.

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The Northern District's Executive Committee set new Magistrate Judge Cox's calendar in an order signed by Chief Judge Holderman.  You can read the order here. 

Welcome to the bench Judge Cox.

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Allen v. Destiny’s Child, No. 06 C 6606, Min. Order (N.D. Ill. Jul. 30, 2007) (Holderman, C.J.).*

Judge Holderman granted in part defendant Andrea Murray’s motion to dismiss plaintiff’s copyright infringement and related state law tort claims.  Plaintiff alleges that defendants, including the musical group Destiny’s Child and its members, infringed plaintiffs’ copyrights in his song “Cater 2 U” by producing and selling Destiny’s Child’s song of the same name (watch the video of  Destiny’s Child’s version on their website).  The Court denied the motion as to plaintiff’s copyright infringement claims for the reasons set forth in a separate order of the same date (you can read more about it in the Blog’s archives). The Court dismissed with prejudice plaintiff’s misappropriation claim because plaintiff failed to prove that Illinois recognizes a misappropriation claim separate from the Illinois Trade Secret Act. Additionally, plaintiff failed to identify a difference between his misappropriation claim and his claims for breach of implied contract and copyright infringement. The Court also dismissed plaintiff’s fraudulent misrepresentation claim with prejudice because plaintiff failed to produce evidence beyond a broken promise that defendants intended fraud. 

Defendant also argued that plaintiff’s breach of fiduciary duty and breach of contract claims should be dismissed because the alleged breaches occurred in or before 2000, but plaintiff did not file his complaint until November 2006. But plaintiff pled that he did not become aware of the breaches until the November 2004 release of the Destiny’s Child album that included Cater 2 U. Because plaintiff’s complaint did not establish a statute of limitations defense, the Court allowed the claims. Additionally, the Court noted that defendant’s arguments regarding pleading requirements were based in Illinois, despite the fact that federal pleadings are controlled by federal law.

*  You can read a copy of the Minute Order here.

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Allen v. Destiny’s Child, No. 06 C 6606, Min. Order (N.D. Ill. Jul. 30, 2007) (Holderman, C.J.).*

Judge Holderman granted in part defendants’ motion to dismiss plaintiff’s copyright infringement claims. Plaintiff alleges that defendants, including the musical group Destiny’s Child and its members, infringed plaintiffs’ copyrights in his song “Cater 2 U” by producing and selling Destiny’s Child’s song of the same name (watch the video of  Destiny’s Child’s version on their website). The Court dismissed the infringement claims regarding the two copyrights that plaintiff did not own, but allowed the claims as to plaintiff’s other two copyrights. Plaintiff’s allegations that he owned the two copyrights, provided copies of his performances of the song to various defendants who relayed them to Destiny’s Child and that the Destiny’s Child song is musically and lyrically similar were sufficient to meet the new Fed. R. Civ. P. 12(b)(6) motion to dismiss standard set forth in Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955, 1969 (2007) (read more about the decision at the University of Chicago Faculty Blog). The Court did, however, dismiss claims against defendant McDonald’s. McDonald’s was only charged with having received financial gain from the infringement because it sponsored a Destiny’s Child tour during which the song was performed. The Court quoted upon Twombly in explaining its decision:

The court is not convinced that [plaintiff] has “nudged [his] claims across the line from conceivable to plausible.”

*  You can read a copy of the Minute Order here.

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Last week Chief Judge Holderman delivered the annual State of the Court Address, it was his first after becoming Chief Judge last summer.  According to the Chicago Daily Law Bulletin (subscription required) he explained that the Northern District was doing very well and touched on, among others, the following subjects:

• By the end of 2007, parties should be able to file complaints and pay filing fees electronically.
  
• The Northern District plans to update its website later this year.  To that end, anyone with an e-filing account should expect a letter from Judge Holderman this fall soliciting suggestions to improve the website -- www.ilnd.uscourts.gov.
  
• The Northern District's filings were down slightly from 2005 (7,606 cases filed in 2006 compared to 7,805 in 2005).  But if student loan and mortgage foreclosure actions are removed, filings jumped 17% from 2005 to 2006.
  
• The Northern District is the seventh fastest district court based upon the time from filing to disposition of civil cases -- 6.5 months.
  
• The Northern District has instituted criminal background checks of prospective jurors, after three jurors in former Governor Ryan's 2006 criminal trial failed to disclose their criminal records or arrests during the jury selection process.

You can also read the Northern District's summary of the speech here.

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CertainTeed Corp. v. Williams, __ F. Supp.2d __, 2007 WL 1297165 (N.D. Ill. Apr. 3, 2007) (Holderman, C.J.).

Pursuant to a remand and forthwith mandate from the Seventh Circuit, Chief Judge Holderman preliminarily enjoined defendant, Williams, from continued employment by plaintiff's competitor, IKO Industries, Inc. ("IKO"), based upon a non-compete agreement ("Agreement") defendant signed with his previous employer, CertainTeed Corp. ("CT").  But the Court made clear that the preliminary injunction violated defendants' right to due process and violated the Erie doctrine.  When Williams began working for CT, he signed the Agreement which required, among other things, that for one year after working for CT, Williams not perform work:  (i) regarding any product, process or service that is competitive with or similar to any product, process or service Williams was involved with at CT; or (ii) regarding any product, process or service of CT's for which Williams had access to CT's confidential information during his employment.  After leaving CT's employ, Williams took a position with IKO.  Based upon that employment, CT sued Williams and sought a preliminary injunction to prevent Williams's continued employment by IKO.

In its original analysis, applying Pennsylvania law per the Agreement, the Court struck clause (i) as an unreasonable restraint upon Williams ability to earn a living.  The Court then held a hearing on CT's motion for a preliminary injunction to prevent Williams' continued employment by IKO.  After prehearing discovery, CT conceded that it had no evidence that Williams used CT's confidential information while working for IKO.  The Court, therefore, denied CT's motion for a preliminary injunction without hearing Williams's defense.  The Court found that CT had not shown a likelihood of proving that Williams violated the Agreement.  The Court held that Williams could work for IKO "as long as he complies with the . . . Agreement . . . ."

CT appealed the Court's ruling to the Seventh Circuit, which held that the Agreement would be violated if a former employee was "tempted" to use CT's trade secrets, even if the former employee had not used them.  Based upon that analysis, the Seventh Circuit remanded the case to the Northern District and required that a preliminary injunction be entered.

The Court entered the preliminary injunction as required by the Seventh Circuit.  The Court also provided a detailed explanation of how the injunction violated Williams's due process rights by granting an injunction against him without giving Williams the opportunity to present evidence in his defense. 

Additionally, the Court explained that the Seventh Circuit violated the Erie doctrine by extending beyond the rulings of the Pennsylvania Supreme Court on the issue of non-compete agreements without citing any case law to support its view of how the Pennsylvania Supreme Court would decide the issue.

Finally, the Court explained that it had no choice, but to enter the injunction:

Regardless of the Seventh Circuit's mandated due process deficiency and the Seventh Circuit's prediction regarding the way the Supreme court of Pennsylvania would have decided the outcome, this court is powerless to do anything but abide by the Seventh Circuit's remand order and mandate.

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According to yesterday's Chicago Daily Law Bulletin -- Trial Courts May Take on Patent Cases (subscription required, but a free, 15-day trial is available) -- the Northern District of Illinois judges are split on the value of  a proposed pilot program.  The program would provide judges who volunteer to take patent cases with extra training and the assistance of specialized law clerks.  Cases would continue to be randomly assigned.  But after a patent case was randomly assigned, if the assigned judge rejected the case it would be reassigned to a judge participating in the patent program.

Chief Judge Holderman is a proponent of the pilot program.  Chief Judge Holderman explained that the system would benefit the patent bar and that is not new to the federal courts because senior judges already have the option of rejecting cases, which are then reassigned.   You can read more about Chief Judge Holderman's views on patent litigation in the district courts in an article he recently authored with his law clerk, Halley B. Guren, advocating, among other things, providing district judges with specialized patent training and reassigning patent cases to those judges -- "The Patent Litigation Predicament in the United States."*

Judge Kocoras, on the other hand, is "not crazy about" the program, believing that district judges are generalists who "should all take the luck of the draw."  He sees the patent pilot program opening the door to other areas of specialization among Article III judges.

Judge Moran likes the program and says he would volunteer for it.  Although, he notes that allowing "judges over 50 [to] handle computer software issues may be a violation of due process."

* The link is to a draft of the article which is in the process of being finalized for publication in the University of Illinois's Journal of Law, Technology & Policy.

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Chief Judge Holderman announced the selection of Susan E. Cox as the Northern District's newest magistrate judge, filing the vacancy created by Judge Levin's retirement.  You can read the Northern District's press release here.  Magistrate Judge Designate Cox has an impressive resume including a clerkship with District Judge Wayne R. Andersen, eight years as an AUSA, twenty four cases (civil and criminal) tried to a verdict, and, perhaps most important to Blog readers, patent infringement experience.  Congratulations Judge Cox.

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Chief Judge Holderman announced this week that Joel Daly has been appointed the Northern District's Court Information Officer.  Daly is a "living legend" in the Chicago news world.  You can learn more about him from his ABC 7 biography.  In his role as Information Officer, Daly will assist journalists covering the Court and field inquiries about the Court's docket, ongoing cases and the judges.  Welcome to the Northern District Joel.

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Specialized Seating, Inc. v. Greenwich Indus., L.P., 472 F. Supp.2d 999 (N.D. Ill. Feb. 2, 2007) (Holderman, C.J.).

Judge Holderman held declaratory judgment defendant's, Greenwich Industries ("Greenwich"), trademark invalid and held that Greenwich committed fraud on the USPTO while prosecuting its trademarks.  Declaratory judgment plaintiff, Specialized Seating ("Specialized"), and Greenwich are competing manufacturers of folding chairs.*  Greenwich has a trademark to a configuration of a folding chair with certain physical characteristics.  Because Greenwich secured patents for most or all of the features identified in its trademark, the Court held that Greenwich's trademark was functional and, therefore, invalid.  In addition to having held patents on the claimed features, Greenwich had also touted the functional benefits of the features in advertising.

The Court also held that Greenwich committed fraud on the USPTO because it only disclosed one of its four patents which covered functional elements of the claimed mark.  In a first Office Action the Examiner rejected the mark as functional and requested that Greenwich identify any patents that cover elements of the mark.  In response to that request, Greenwich disclosed only one of its four patents and distinguished it.  The Examiner rejected the mark again and posed interrogatories to Greenwich, which Greenwich answered without disclosing its three other patents.  The mark was ultimately issued on a Request for Reconsideration, without disclosure of Greenwich's remaining three patents.  The Court held that Greenwich deliberately misled the USPTO by not disclosing its other three patents during prosecution of its mark.

* Specialized's founder and president was previously the President of the entity that became Greenwich's folding chair business.  Specialized and Greenwich had a long history of litigation prior to this suit, which has all been resolved through various settlements or voluntary dismissals of suit. 

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Andrew Corp. v. Beverly Mfg. Co., No. 04 C 6214, 2006 WL 3486884 (N.D. Ill. Dec. 1, 2006) (Holderman, Chief J.).

In this claim construction opinion regarding several patents relating to cable hangers used for telecommunications towers, Judge Holderman refuses to limit several claim terms based upon the preferred embodiments described in the specifications.  The Court explained that "district courts should not generally rely on preferred embodiments in specifications to confine claims unless the embodiment defines the outer limit of the claim." 

The Court also relies upon claim differentiation in interpreting several terms.  For example, the Court held that limiting a "bail" to a semi-circular or hoop-like shape instead of the more general "hinged band" that the Court chose would render the dependent claim which required a bail with a C-shaped profile meaningless.

Finally, at the beginning of the opinion, Judge Holderman provided a very detailed explanation of the current claim construction standards.

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Crafting proposed jury instructions is one of the first steps when preparing for trial.  And one of the first steps in drafting those instructions is looking for pattern or sample instructions that the court has previously used or endorsed.  In order to help speed that process, I am adding a new Blog feature.  I have gathered the jury instructions that each of the Northern District judges identify on their respective  web pages as either form or model instructions.  Most have general civil instructions and a few have specific sample instructions for various types of IP suits.

This list should save you time when you are looking for model instructions, but I would like to make it even more useful. If you have a set of instructions used in a Northern District IP case send them to me and I will add those instructions to the list (either anonymously or with credit to the sender, at the sender's discretion). 

So, send me your jury instructions -- chicagoiplitigation@yahoo.com -- and the name of the judge that presided over the trial.  As I receive new instructions, I will add them to this post.  If I get a large response, I will do additional posts on the instructions or create a separate page where you can access the files.

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