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

Integrated Cards, L.L.C. v. McKillip Indus., Inc. d/b/a USA/Docufinish, No. 06 C 2071 (N.D. Ill. Nov. 19, 2009) (Kendall, J.). 

Judge Kendall, following a bench trial, held that pre-suit damages were barred by laches, but that the claims were not barred by equitable estoppel, in this patent case involving integrated labels.  Laches was presumed because plaintiff and its founder/predecessor entities were aware of defendant's alleged infringement for more than six years before filing.  And defendant was prejudiced by plaintiff's delay because defendant purchased more than $1M in machines for producing the allegedly infringing integrated labels.  Laches, therefore, barred pre-suit damages.

Equitable estoppel, however, did not apply and bar all damages because plaintiff never suggested to defendant that plaintiff would not sue.  There was no evidence that plaintiff or its predecessors ever threatened litigation or otherwise misled defendant into believing it would not get sued.  And when litigation has not been threatened, courts typically will not estop patentee's suit.  Plaintiff's suit, therefore, was not equitably estopped.

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

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Integrated Cards, L.L.C. v. McKillip Industries, Inc., No. 06 C 2071, 2008 WL 3286981 (N.D. Ill. Aug. 8, 2008) (Kendall, J.).

Judge Kendall denied defendant’s motion for summary judgment of laches and equitable estoppel, and set a bench trial on the two defenses. Plaintiff charged defendant with infringing its patent covering a card (such as an ID card) integrated with a letter – Illinois attorneys get their ARDC cards in a similar form.

Defendant made and sold versions of the accused product for at least nine to ten years. Defendants argued that plaintiffs had actual constructive knowledge of the accused product beginning in 1998 or 1999, longer than the six years before the filing date required for a presumption of laches pursuant to 35 U.S.C. § 282. That presumption would have shifted the burden of proof from defendants to plaintiffs.

Defendants alleged plaintiffs’ knowledge was based upon various conversations, working relationships and trade show attendance. But the Court held that plaintiffs raised material questions of fact as to each communication or trade show. The Court did, however, note that it had doubts about some of plaintiffs’ testimony explaining their lack of knowledge from trade shows. But on summary judgment, the Court would not make credibility determinations against plaintiffs, the non-moving party.

Because the Court did not grant summary judgment as to the presumption of laches, defendants retained the burden of proof. And the Court held that because of defendants’ burden and because the parties disputed whether defendants were prejudiced by plaintiffs’ alleged delay in filing suit, summary judgment was not appropriate.

The Court also denied summary judgment of equitable estoppel, relying upon its laches reasoning. And the Court set a bench trial on laches and inequitable conduct to be held before the liability trial.

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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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