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

Trading Techs. Int'l., Inc. v. BCG Partners, Inc., No. 10 C 715 (Consolidated), Slip Op. (N.D. Ill. Jul. 26, 2011) (Kendall, J.).

Judge Kendall denied the SunGuard defendants' (collectively "SunGuard") summary judgment motion arguing that plaintiff Trading Technologies ("TT") second suit against the same SunGuard products should be dismissed based upon claim splitting or claim preclusion. There is much more on this case and the related cases in the Blog's archives. The parties and the accused products were the same in both cases (filed in 2005 and 2010, respectively), but the patents were different. The Federal Circuit has held that suits based upon different patents involving similar inventions are not the same claims because each patent covered a separate invention. Kearns v. General Motors Corp., 94 F. 3d 1553, 1555 (Fed. Cir. 1996). Because the TT asserted different patents in the two suits, there was no preclusion. It did not matter that that TT could have arguably amended its first suit to add some or all of the later asserted patents.

The Court also deemed TT's Local Rule 56.1 additional statements of fact admitted because SunGuard failed to respond to them.

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MCGIP, LLC v. Does 1-316, No. 10 C 6677, Slip Op. (N.D. Ill. Jun. 9, 2011) (Kendall, J.).

Judge Kendall denied putative defendants' motions to quash plaintiff MCGIP's subpoenas seeking to identify users associated with specific IP addresses that allegedly used BitTorrent in a manner that infringed MCGIP's copyrights in certain adult films. The Court's key reasons for denying the motions to quash were:

MCGIP issued subpoenas to internet service providers ("ISP"), not the putative defendants. The subpoenas, therefore, did not create an undue burden on the putative defendants because the ISPs had a duty to produce documents, not the putative defendants.

MCGIP was seeking identifying information, none of which was privileged.

The subpoena requests were not outweighed by the putative defendant's privacy or First Amendment rights.

Whether the Does were improperly joined is a premature question. As such, motions raising it were denied without prejudice to refile once the issue was ripe.

The putative defendants' arguments that the Court lacked personal jurisdiction were also premature as defendants were not in the suit yet. Defendants will be free to raise those issues once they ripen.
 

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Trading Techs. Int'l, Inc. v. BCG Partners, Inc., No. 10 C 715 (N.D. Ill. May 5, 2011) (Kendall, J.).

Judge Kendall denied defendant GL Trade Americas' ("GL") motion to disqualify plaintiff Trading Technologies' ("TT") lead litigation counsel and in-house counsel Borsand, without prejudice to reconsider whether Borsand should be excluded from testifying should he seek to testify. GL alleged that Borsand received confidential information when TT briefly retained a European law firm to represent it in patent prosecution matters without realizing that the firm represented an entity working on behalf of GL. Borsand only had two contacts with the firm, and it was reasonable that during those two contacts no confidential information was transferred to Borsand. As such, the drastic measure of disqualification was not warranted.

GL's request that Borsand be excluded as a trial witness because of his role as lead trial counsel was denied as premature with leave to refile at a later date. The Court could not determine what discovery would show, what facts would be disputed at trial or whether Borsand would even testify at trial.
 

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Hollander v. Hospira, No. 10 C 8151, Slip Op. (N.D. Ill. May 12, 2011) (Kendall, J.).

Judge Kendall granted defendant Hospira's motion to dismiss plaintiff Hollander's false patent marking claims for failure to sufficiently plead intent. But the Court gave Hollander 30 days to replead because its complaint was filed before the BP Lubricants decision on intent pleading was entered. The following items were of particular note:

• The fact that some of Hospira's patents expired for failure to pay maintenance fees was not sufficient.
   
• The fact that one patent was held unenforceable was not sufficient to show intent.
   
• Hospira's 10-K statements regarding its attention to third party patents were not relevant to Hospira's knowledge of its own patents.
   
• Packaging inserts inside a consumer package were not relevant because a consumer could not see them before purchasing the product, and therefore, could not be swayed its decisions based upon allegedly false marking.

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The patent pilot program started this month in the Northern District and across the country.  The pilot program is a ten-year look at ways to handle patent cases more effectively.  The main component of the pilot program is judges in pilot districts, including the Northern District, self-selecting as patent judges.  Patent cases will continue to be randomly assigned to all Northern District judges.  But when a non-patent judge is assigned a patent case that judge will have thirty days to order reassignment of the case.  When reassignment is ordered, the case will be randomly reassigned to one of the patent judges.  There will also be patent-related education and programs offered for the patent judges across the country. 

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Peters, p/k/a Vince P. v. Kanye West, No. 10 C 3951, Slip Op. (N.D. Ill. Mar. 3, 2011) (Kendall, J.).

Judge Kendall granted defendants' (collectively "Kanye West") Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Vince P's copyright infringement claim. Vince P alleged that Kanye West copied Vince P's 2006 song "Stronger" when Kanye West released his 2007 song "Stronger." Vince P sufficiently pled ownership of a registered copyright. So, the issue was whether Vince P sufficiently pled copying. As an initial matter, Vince P sufficiently pled access to Vince P's work by alleging that Vince P shared his song with Kanye West's "close friend, advisor and business associate" John Monopoly.

The Court then considered whether the allegedly copied elements of Vince P's song were copyrightable:

• Title -- Titles by themselves are not copyrightable.
   
• Kate Moss -- A reference to Kate Moss in each song was an unprotectable fact.
   
• Hook -- The use of the maxim "that which does not kill us makes us stronger" was not protectable because it was not original to Vince P. And the use of "wronger" in each hook was not protectable because while it was a unique word, it was actually part of a rhyme scheme with "longer" and common rhyme schemes are not protectable.

The combination of the above elements was not used in its entirety or in a nearly identical way. Therefore, the combination was not protectable.

Finally, the two songs did not display "fragmented literal similarity." That doctrine, recognized in other circuits, allows for infringement where a smaller fragment of a work is literally copied, but not the entire work. The similarities between the two Stronger songs, however, did not even rise to the level of fragmented literal similarity. Among other reasons the allegedly copied fragments were not integral parts of the copyrighted work.

Because there was no substantial similarity between the two songs, the Court dismissed the copyright infringement claim.

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Heathcote Holdings Corp. v. Learning Curve Brands, Inc., No. 10 C 7799 (Kendall, J.).

I generally write about opinions issued by the Northern District, but the parties in this case recently filed their false patent marking settlement agreement. Because of the extreme interest in false marking cases over the last eighteen months, I am posting about the settlement. Plaintiff accused defendants of falsely marking various Thomas the Tank Engine toy trains and related products with two patents. In one instance, the alleged false marking appears to be based upon the omission of one number from the patent number -- it read U.S. Patent No. 7,178,68 instead of 7,178,685.

Here are the highlights of the agreement:

• Defendants agreed to pay $85,000, with half mailed for overnight delivery directly to the Department of Justice.
   
• The agreement was subject to approval by Department of Justice's Director of Intellectual Property Staff before becoming final, which was given with minor edits.
   
• The agreement released all false marking claims related to the two patents at issue, but did not attempt to waive any possible false marking by defendant as of the date of the agreement. Of course, it may be that the two identified patents were either defendants' only patents or the only patents that defendant had marked products with. So, this term may effectively be a complete release of all possible false marking claims.
   
• Neither party admits or denies the constitutionality of the false marking statute.
   

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The Federal Bar Association -- an excellent group that is worth joining (disclosure: I am a member) -- recently held a panel of Northern District judges. Here are my notes regarding Judge Kendall's comments:
 

• Judge Kendall will allow parties to appear by phone, if there is a legitimate conflict or need, but prefers not to hear counsel ordering a latte during a hearing.
   
• She pointed out that an average district judge has a docket of 300 civil and 100 criminal cases, with about 100 pending motions.
   
• Judge Kendall scans briefs as they come in and meets clerks formally every two weeks to discuss the direction of opinions. Noted that many motions are straightforward to decide.
   
• Judge Kendall has sidebars with jurors either if a juror has private information to share or if a juror has very strong feelings on any question. Sidebars avoid problems, and lawyers tend to be more human during sidebars. Sidebars also allow lawyers to ask questions that they may not be able to in open court.

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Trading Technologies, Inc. v. BGC Partners, Inc., No. 10 C 715, Slip Op. (N.D. Ill. Feb.3, 2011) (Kendall, J.).*

Judge Kendall consolidated plaintiff Trading Technologies' ("TT") patent infringement cases that were filed in 2010 - Judge Coleman previously denied TT's motions to consolidate the cases filed in 2005 with those filed in 2010. The Court held that the 2010 cases were sufficiently related pursuant to Local Rule 40.1. While the products were not identical and the asserted patents were not identical for each defendant, the accused products were similar and were all accused of infringing one or more of three of TT's patent families. Additionally, consolidation would conserve substantial time and effort without causing delay.

The Court also ordered the parties to file a summary of all pending motions and discovery status.

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

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Callprod, Inc. v. GN Netcome, Inc., No. 06 C 4961, Slip Op. (N.D. Ill. Nov. 1, 2010) (Kendall, J.).

Judge Kendall granted in part plaintiff Callprod's motion to stay determination regarding attorney's fees pending appeal of the underlying patent issues and the Court's determination as to whether the case was exceptional. The Court held that the Court's and the parties' resources were best preserved if all proceedings regarding attorney's fees were stayed until the Federal Circuit ruled on Callprod's appeal of the Court's grant of summary judgment of noninfringement. The Court, however, ordered Callprod to respond to defendants' bill of costs.
 

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Trading Techs., Intl., Inc. v. BGC Partners, Inc., No. 10 C 715, Slip Op. (N.D. Ill. Aug. 17, 2010) (Kendall, J.).

Judge Kendall denied defendant BGC Partners' ("BGC") motion to dismiss as moot because of plaintiff Trading Technologies' ("TT's") subsequently filed amended complaint. Courts routinely deny without prejudice motions to dismiss when an amended complaint is filed, but this case was unique because TT opposed dismissal. TT argued that BGC's improper service argument should be dismissed with prejudice and the remaining arguments should be heard to avoid delay because TT continued asserting similar claims in the amended complaint. The service arguments were, however, moot because BGC did not make the service arguments in response to the amended complaint.

The Court also denied the motion to dismiss without prejudice as to the remaining arguments. While the claims may have remained factually similar, BGC's arguments went to jurisdiction, not the sufficiency of the facts. Furthermore, the amended complaint added several new defendants. BGC and the other defendants would have been prejudiced if they were not given the opportunity to review the amended complaint and to collectively decide how to address any jurisdiction or venue issues.

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Loufrani v. Wal-Mart Stores, Inc., No. 09 C 3062, Slip. Op. (N.D. Ill. Nov. 12, 2009) (Kendall, J.).

Judge Kendall denied counterclaim defendants' (collectively "Smiley Company") Fed. R. Civ. P. 12(b)(6) motion to dismiss counterclaim plaintiff Wal-Mart's Lanham Act and related state law declaratory judgment claims related to Smiley Company's potential use of Wal-Mart's Mr. Smiley Mark, from Wal-Mart's well-known roll back campaign, after the Trademark Trial and Appeal Board ("TTAB") held that Smiley Company's mark was not distinctive and that the mark would create a likelihood of confusion with Wal-Mart's Mr. Smiley Mark.

First, the  Court held that Wal-Mart had plead sufficient facts to establish a controversy existed warranting Wal-Mart's declaratory judgment claims.  All of Wal-Mart's claims related to likelihood of confusion.  And the parties had developed "clear positions" on likelihood of confusion through their TTAB proceedings.  Furthermore, Smiley Company had already raised numerous claims against Wal-Mart, evidencing an actual controversy.  The Court also noted that this case was not like Geisha v. Tuccilli, 552 F. Supp. 2d 1002 (N.D. Ill. 2007) (click here and here to read more about the case in the Blog's archives).  In that case, the Court held there was no controversy, but declaratory judgment defendant had never used its mark and if he did use it by opening a restaurant, it would have been easy for declaratory judgment plaintiff to identify the use and alleged infringement.  Smiley Company, however, admitted to using its mark internationally since the 1970s.  Furthermore, Geisha was a summary judgment decision where the parties and the Court had the benefit of discovery.

Smiley Corp. also argued that the Court should only address its appeal of the TTAB decision and not Wal-Mart's broader claims.  The Court, however, held that a district court is free to decide infringement and likelihood of confusion issues as part of reviewing a TTAB decision.  The TTAB review instituted by Smiley Company was both an appeal and a new action which allowed the Court to address new issues and to admit new evidence.

Finally, Wal-Mart's Illinois Consumer Fraud and Deceptive Business Practices Act claim was not insufficient for failing to plead actual damages.  While actual damages were required, they could not exist in a declaratory judgment claim seeking to prevent future acts and, therefore, future damages.
 

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Click here for the Seventh Circuit's new proposed pattern trademark jury instructions.*  The committee that prepared the instructions included Northern District of Illinois Judges Kendall and Kennelly, as well as a broad spectrum of attorneys from academic, government and private practice.

The pattern instructions are impressive for their thoroughness. They are also very well cited, making them an excellent primer on Seventh Circuit trademark law. Of particular note, the instructions do not include a dilution instruction because since Congress's 2006 revision of the dilution laws, there has not been sufficient appellate interpretation. 

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The Ticketreserve, Inc. v. Viagogo, Inc., No. 08 C 502, Slip Op. (N.D. Ill. Aug. 11, 2009) (Kendall, J.).

Judge Kendall denied defendants’ Fed. R. Civ. P. 12(b)(3) motion in limine for improper venue and granted defendant Viagogo, Inc.’s (“Viagogo”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Defendants agreed that venue was improper based on an arbitration clause in a nondisclosure agreement the parties requested when they explored a joint venture. Defendants agreed that the patented technology was disclosed pursuant to the nondisclosure agreement.

But because plaintiff’s international patent on the same technology as the U.S. patent, issued before the nondisclosure agreement the patent infringement claim was expressly excluded from the nondisclosure agreement and its arbitration claims.

The Court then dismissed Viagogo for lack of personal jurisdiction. Viagogo had no contract with Illinois to create personal jurisdiction. And while the viagogo.com interactive website likely created specific jurisdiction for its owner, the evidence suggested that Viagogo Ltd., which did not contest personal jurisdiction owned and operated the website, not Viagogo, Inc.

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Bajer Design & Marketing Inc. v. Ware Mfg. Inc., No. 09 C 1425, Min. Order (N.D. Ill. Jun 11, 2009) (Kendall, J.).

Judge Kendall denied plaintiff Bajer's motion to reassign its second filed patent infringement suit pending before Judge Zagel asserting the patent in suit to Judge Kendall pursuant to Fed. R. Civ. P. 42 and Local Rule 40.4. The cases met two of the four Rule 40.4(b) requirements for reassignment because both cases were pending in the Northern District and because both cases were at similar stages with defendants having just answered, such that reassignment would not slow progress of the first case. The Court also noted that a single Markman proceeding and set of claim constructions was a benefit of reassignment. But the potential for a uniform claim construction was outweighed by the fact that defendants' accused products and, therefore, noninfringement positions were significantly different. Based upon the differing noninfringement positions and other possible differences in the parties defenses, the Court held that reassignment would not achieve the required substantial savings of judicial time and effort.

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Microthin.com, Inc. v. SiliconeZone USA, LLC, No. 06 C 1522, Slip Op. (N.D. Ill. May 6, 2009) (Kendall, J.).

Judge Kendall construed the claims of plaintiff Microthin's patents to non-slip mats and based on the constructions granted defendant SiliconeZone summary judgment of invalidity as to the first claim of each patent. Of particular interest, the Court construed the following terms:

• Non-Slip meant reducing or preventing smooth sliding motion, but the Court declined to add Microthin's proposed requirement that it not be sticky to the touch because there was an independent claim that only added the requirement that the non-slip surface was not sticky to touch.
   
• Consisting of was construed as a closed transitional phrase, as it is normally used in patent law.

Based on its construction of non-slip, the Court held the first claims of each patent invalid. Microthin's sole argument against the asserted prior art was that it did not teach a non-slip surface because the surface was sticky to the touch. Because the Court construed non-slip without the sticky limitation, the first claims of each patent were invalid.

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Callpod, Inc. v. GN Netcom, Inc., No. 06 C 4961, Slip Op. (N.D. Ill. Mar. 6, 2009) (Kendall, J.).
 

Judge Kendall construed the disputed claim terms in plaintiff's patent directed to methods and devices for making conference calls using cordless and mobile phones. The following constructions were of particular interest:

• “Plurality of participants” meant more than one participant. The parties agreed that plurality meant more than one in relation to headsets, but defendants argued that a plurality of participants was three or more because a conference call generally required more than two participants. The Court, however, noted that having two different definitions of plurality would lead to the odd result of requiring two headsets and three participants.
  
• “Callpod” was construed as a portable device that forms conference calls among a plurality of participants. The claims did not provide a clear definition, but the Court noted that the patentee's lexicography governs and construed the term based upon the specification.

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Ledergerber Med. Innovs., LLC v. W.L. Gore & Assocs., Inc., No. 07 C 1593, Slip Op. (N.D. Ill. Feb. 17, 2009) (Kendall, J.).

Judge Kendall construed the claims in this patent dispute regarding surgical implants for use with brain tumors and hernias that direct scar tissue away from the implant surfaces. Of particular interest, the Court held, relying in part upon a dictionary definition, that "sheet" was a thin structure, instead of defendant's broader definition which did not require that the structure be thin. The Court held that "non-textured" was focused on the tactile characteristics of the surface and meant that the surface was smooth. A surface was not required to be free of macroscopic defects. And the Court construed textured as the opposite of non-textured or not smooth.

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Miyano Machinery USA, Inc. v. MiyanoHitec Mach., Inc., No. 08 C 526, Slip Op. (N.D. Ill. Sep. 5, 2008) (Kendall, J.)

Judge Kendall granted a preliminary injunction against defendants’ (collectively “MiyanoHitec”) continued use of plaintiff Miyano Machinery’s (“MMU”) MIYANO trademarks. MMU proved a sufficient likelihood of success on its trademark infringement claims. Despite the fact that Miyano was the surname of the individual defendants, it was protectible. While personal names are not generally protectible, MMU’s Miyano marks had acquired secondary meaning, making them protectible. And individual defendants originally consented to MMU registering the marks.

MMU’s “Winged M” mark was not abandoned when MMU changed the font of the Miyano name in the mark. And MMU showed a likelihood of confusion. MMU’s and MiyanoHitec’s marks were very similar and were used on similar products – lathes – that were to be sold in similar channels. MMU also offered evidence of a few acts of actual confusion. And the evidence showed that MiyanoHitec likely intended to benefit from the likely consumer confusion.

The Court also found that MMU would be irreparably harmed without an injunction because trademark infringement is presumed to create irreparable harm. In contrast, the injunction would cause MiyanoHitec minimal or no harm. MiyanoHitec had not sold any product yet, had previously used a different name, and was aware of MMU’s trademark claim before choosing its marks.

Finally, the public interest was served by preventing trademark infringement and the resulting consumer confusion. The Court, therefore, granted MMU a preliminary injunction against MiyanoHitec.

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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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Fernandez Innovative Techs., LLC v. General Motors Corp., No. 07 C 1397, 2008 WL 2168843 (N.D. Ill. May 23, 2008) (Kendall, J.).

Judge Kendall construed the claims of plaintiff's U.S. Patent No. 6,963,899 related to vehicle telematics – systems like the accused products Onstar and Lexus Link. Construction of the two terms were of particular note:

Real Time

Through the claim construction hearing the parties agreed that "real time" meant continuous. But after the hearing, plaintiff filed a motion arguing that real-time meant "contemporaneous." The Court allowed defendants a responsive submission, and then adopted plaintiffs' construction because it comported with the intrinsic evidence and dictionary definitions better than defendants' construction did.

Selects and Downloads

The Court held that neither party's construction of "selects and downloads" was consistent with the agreed upon construction of related term "selects and sends." The Court, therefore, gave the parties fourteen days to meet and confer, and then either submit an agreed upon construction, or individual revised constructions.

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Matteo v. Rubin, No. 07 C 2536, Slip Op. (N.D. Ill. Dec. 3, 2007) (Kendall, J.).

Judge Kendall denied defendant’s motion to dismiss plaintiff’s copyright infringement and related state law claims. Plaintiff photographed defendant’s daughter’s wedding pursuant to a contract between plaintiff and defendant’s wife. Defendant was allegedly unsatisfied with plaintiff’s photographs and, therefore, allegedly created numerous website regarding plaintiff’s photographs including defamatory comments about both plaintiff and his photographs. The Court held that plaintiff stated a claim for copyright infringement because he pled that he owned copyrights in his photos and that defendant infringed those copyrights by posting the pictures on websites. Plaintiff was not required to plead that defendant received any economic benefit from his alleged infringement. Additionally, plaintiff did not have to register his copyright before defendant’s allegedly infringing acts. Finally, the Court held that defendant’s fair use defense was not grounds for dismissal. Fair use is a factual inquiry best resolved on summary judgment or at trial.

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Krueger v. TradeGuider Sys., LLC, No. 07 C 6261, Slip Op. (N.D. Ill. Nov. 27, 2007) (Kendall, J.)*

Judge Kendall granted plaintiff Todd Krueger’s (“Krueger”) motion to remand this breach of Employment Agreement (“Agreement”) suit to Cook County Circuit Court. Krueger originally filed his Complaint in Cook County Circuit Court. Defendants (collectively “TradeGuider”) remanded the case to the Northern District, arguing that Krueger’s claim for breach of the Agreement, which governed his employment as TradeGuider’s CEO, was a federal copyright claim. TradeGuider reasoned that determining whether it had breached the Agreement required a determination of whether Krueger’s works were works for hire. The Court cited the Seventh Circuit’s narrow view of copyright preemption for contract claims – generally a contract involving copyrights is of a different scope than the copyrights because the contract is a private agreement between parties and a copyright is a right against the world. The alleged breach, therefore, was not essentially a copyright claim because it included rights beyond the copyright. Additionally, the Court reasoned that there was no evidence that suggested any copyright law would have to be interpreted to construe the contract or rule upon the alleged breach.

*Click here for a copy of the opinion.

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Milwaukee Elec. Tool Corp. v. Robert Bosch Tool Corp., No. 05 C 1171, 2007 WL 2875232 (N.D. Ill. Sep. 28, 2004) (Kendall, J.)

Judge Kendall granted plaintiff’s motion to dismiss its Lanham Act case with prejudice and awarded defendant its costs but not its fees pursuant to 15 U.S.C. § 1117(a). The Court held that attorney’s fees were not warranted because the case and its dismissal after substantial fact discovery were not exceptional. Plaintiff dismissed its case because of two significant events which plaintiff believed reduced its likelihood of success.

            First, during discovery Congress passed the Trademark Dilution Revision Act (“TDRA”)* which changed the definition of “famous” such that fame within a niche market was no longer sufficient for dilution. Plaintiff was not certain it could prove fame outside its market. Second, defendant changed the trade dress, and particularly the color scheme, of its accused SKIL line of power tools. Plaintiff believed that defendant’s new trade dress was less similar to plaintiff’s and, therefore, plaintiff’s case was more difficult to prove. The Court accepted plaintiff’s reasoning and, therefore, held that the case was not exceptional. The Court did, however, award costs, which plaintiff had originally agreed it would pay.

* For more on the TDRA, click here for the Seattle Trademark Lawyer’s coverage of the TDRA this week in honor of the TDRA’s first anniversary.

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PSN Illinois, LLC v. Ivoclar Vivadent, Inc., No. 04 C 7232, 2006 WL 3523760 (N.D. Ill. Dec. 7, 2006) (Kendall, J.).

Judge Kendall denied plaintiff's Fed. R. Civ. P. 59 motion for reconsideration of the Court's prior ruling (discussed in the Blog's archives) construing the claims of the patent at issue and granting summary judgment of noninfringement on behalf of defendant Ivoclar Vivadent, Inc. ("Ivoclar").  The Court denied plaintiff's motion for reconsideration because it considered each of plaintiff's reconsideration arguments in its original Opinion granting summary judgment.  But the Court spent some time on one of plaintiff's claim construction arguments regarding a patent related to porcelain veneers.  On reconsideration, plaintiff argued for a different construction of "ready for mounting."  In its original papers plaintiff did not argue for the proposed construction, although it did propose it in its Local Rule 56.1 Additional Statement of Material Facts.  The Court held that because claim construction is a matter of law, proposed constructions are not material facts and, therefore, cannot be put in LR 56.1 statements.  The Court noted its obligation pursuant to LR 56.1 to disregard legal arguments and conclusions placed in statements of fact.  The Court did, however, go on to consider plaintiff's construction and explain why the Court's original construction was correct.

Practice tip:  Think carefully about what goes into your LR 56.1 statements of material fact.  Do not put arguments in your statements of fact. And by all means, do not put arguments in your statements of fact and then omit those arguments from your brief. The Court will disregard them, and you will be out of luck. 

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Cummins-Allison Corp. v. Glory Ltd., No. 02 C 7008 (N.D. Ill. Apr. 25, 2007) (Posner, J.).

Judge Posner, sitting by designation, entered an order dismissing all claim and counterclaims without prejudice and terminating the case, on what appeared to be near the eve of trial.  The parties filed a Stipulated Dismissal earlier in the month.  No further settlement details were readily available. 

The Court's order ended what had been a fairly protracted patent dispute between the two parties centering around patents covering money-counting and bill-sorting devices.  You can read more about prior rulings from the Northern District case in the Blog's archives.  You can read about several opinions from the related Eastern District of Texas case here and here at Michael Smith's E.D. Texas Blog.

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Google, Inc. v. Central Mfg. Inc., No. 07 C 385, 2007 WL 789418 (N.D. Ill. Mar. 12, 2007) (Kendall, J.).

Judge Kendall denied third party Leo Stoller's motion to intervene pursuant to Fed. R. Civ. P. 24 -- Stoller also filed a motion to interplead and various motions to suspend the proceedings for various reasons.  Plaintiff Google brought the instant suit alleging civil RICO violations based upon defendants' alleged scheme of falsely claiming trademark rights to extort money from legitimate trademark holders.  Defendants' opposed Google's application for its "Google" mark based upon allegedly fraudulent claims of common law rights in the mark in order to settle the dispute.  Stoller subsequently filed a Chapter 13 bankruptcy case, which was converted to Chapter 7.  The property of Stoller's estate included wholly-owned interests in defendants.  The Court denied Stoller's motion to intervene as of right because Stoller had no "direct, significant legally protectable" interest in the case.  To the extent Stoller was involved in the underlying actions, it was as an employee of one or more of the defendants and/or acting as defendants' representative, not in his individual capacity.  Similarly, the Court denied Stoller permissive intervention because of the Court's determination that adding Stoller would unduly delay the case.  The Court noted that the parties had entered a settlement contemplating Google's release of its monetary claims, contingent upon an entry of a permanent injunction and final judgment, a settlement the be "frustrate[d]" by Stoller's intervention.

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Abbott Labs. v. Mylan Pharms., Inc., No. 05 C 6561, 2007 WL 625496 (N.D. Ill. Feb. 23, 2007) (Kendall, J.).

Judge Kendall denied plaintiff's, Abbott, Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant's, Mylan, antitrust counterclaims.  Mylan alleged that two Abbott employees submitted declarations and/or testimony stating the weight and structure of certain oligomers related to the patented invention, despite their knowledge that the tests they relied upon were known to be incapable of measuring the oligomers at issue.  Mylan further alleged that based upon these fraudulent statements, the USPTO issued certain of the patents-in-suit which then prevented Mylan from entering the market with a generic version of Abbott's pharmaceutical Depakote.  Abbott relied upon a prior Northern District ruling against third party Torpharm which held that Abbott's conduct before the USPTO was not inequitable.  But the Court held that while that ruling prevented a sham litigation claim, it did not estop Mylan's inequitable conduct allegations because Mylan was not a party to the prior case and, therefore, had no opportunity to present its evidence and argument.  Additionally, the Court held that Mylan adequately alleged antitrust injury by stating that it prepared to enter the market with generic Depakote, but was prevented from doing so by Abbott's alleged inequitable conduct.

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Cummins-Allison Corp. v. Glory Ltd., No. 02 C 7008, 2007 WL 487564 (N.D. Ill. Feb. 12, 2007) (Kendall, J.).

Judge Kendall denied summary judgment of invalidity for defendant in this patent dispute (you can find the Court's prior claim construction ruling here).  Defendant argued that plaintiff's public use of money-counting machines embodying the patented inventions in banks more than one year before filing of the patent application invalidated the patents pursuant to 35 U.S.C. Section 102(b).  Defendant relied upon the testimony of several bank employees that the machines were beta-tested by banks in locations that bank patrons could see without signing any confidentiality agreements.  But plaintiff put forth evidence that defendant had taken steps to keep the use confidential and that, even if the use was public, it was only an experimental use which does not create a Section 102(b) bar.  Based on the conflicting evidence, the Court held that there were questions of material fact as to the patents' validity and, therefore, denied summary judgment.

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Microthin.com, Inc. v. Siliconezone USA, LLC, No. 06 C 1522, 2006 WL 3302825 (N.D. Ill. Nov. 14, 2006) (Kendall, J.).

Judge Kendall held that plaintiff's patent claim did not give the Court supplemental jurisdiction over defendants' assault and battery, trespass, breach of contract and tortious interference counterclaims, even though the counterclaims were arguably related to plaintiff's patent infringement allegations.  The Court did, however, have diversity jurisdiction over the counterclaims.  After concluding it had jurisdiction, the Court dismissed the assault and battery counterclaims because there is no tort of assault against a corporation in Illinois.  The Court also dismissed the breach of contract claim, because plaintiff/counter-defendant was neither a party to the contract, nor an intended beneficiary. 

Defendant Siliconezone alleged that Siliconezone and plaintiff Microthin.com ("Microthin") both had booths at the March 2006 International Home and Housewares Show (the "Show").  According to Siliconezone, during the show Microthin employees repeatedly entered Siliconezone's booth and inspected Siliconezone's merchandise and prototypes.  Microthin's employees also allegedly made statements while in Siliconezone's booth and around Siliconezone's potential customers about Siliconezone's infringement of Microthin's patent rights.  These allegations formed the basis for the trespass, breach of contract and tortious interference claims. 

The allegedly breached contract was Microthin's contract with the Show for its booth space.  The contract required that Microthin not access other booths without authorization , not interfere with other vendors' legitimate activities and that Microthin be courteous to other vendors.  While Microthin may have violated each of those provisions, Siliconezone was not a party to the contract or its intended beneficiary, so Siliconezone had no breach of contract claim.

When Siliconezone's president Karyo attempted to discuss his issues regarding these actions with Microthin's founder, counter-defendant O'Malley, O'Malley allegedly bumped Karyo's chest, knocked him backward and yelled "You're ripping us off!  You're ripping off our patents."  These allegations make up the assault and battery counterclaim.  But because the claim was brought by Siliconezone, instead of by Karyo, the allegedly assaulted individual, it was dismissed.

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PSN Illinois, LLC v. Ivoclar Vivadent, Inc., No. 04 C 7232, 2006 WL 3523760 (N.D. Ill. Dec. 7, 2006) (Kendall, J.).

Judge Kendall granted defendant summary judgment of noninfringement, both literal and doctrine of equivalents.  Plaintiff alleged that Ivoclar's Empress veneer technique for making porcelain tooth veneers infringed plaintiff's patent.  The patent claimed a method for making porcelain veneers consisting of:  1) taking an impression of a tooth; 2) forming a "statue" of the tooth from the impression; 3) applying a "porcelain powder" to the statue to build a veneer restoration; 4) firing the veneer restoration on the statue; and 5) eroding the statue from the veneer restoration leaving a restoration "ready for mounting."  The Court construed each of the three terms in quotations and then held that no reasonable jury could find that defendant's Empress method produced a "ready for mounting" veneer.

 The Court construed a "ready for mounting" to require that a veneer be "ready to be fitted on and cemented to a patient's tooth."  Because the Empress method required substantial finishing after the veneer is removed from the statue and prior to being cemented to a tooth, the Empress method was held not to infringe the claim.

The Court also construed "statue" to be a "positive, substantially entire version of the tooth" and noted that "model" was a synonym of "statue."  Because the Empress method involved applying a substance including porcelain to a negative mold of a tooth, instead of a positive model or statue, the claim was not literally infringed.  But the Court found a question of fact as to whether the Empress method's combination of an original positive model of the tooth combined with the negative model used to form the veneer could infringe the claim pursuant to the doctrine of equivalents.

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Cummins-Allison Corp. v. Glory Ltd., __ F.Supp.2d __, 2006 WL 2931999 (N.D. Ill. Oct. 13, 2006) (Kendall, J.).

Judge Kendall performed a very thorough claim construction in this opinion, but what is most interesting about it is the procedural history.  The Court (with another judge presiding) initially construed the claims at issue in March 2005, without holding a Markman hearing.  Plaintiff then sought reconsideration regarding one of the patents at issue and defendant sought reconsideration regarding the other.  The Court ultimately granted both motions and held a Markman hearing, which is the basis of this opinion.   

While the initial claim constructions and those issued in this opinion were authored by two different judges, this is still the relatively rare case where the Court proves that claim construction is a matter of law which a court can continue to revisit throughout a proceeding. 

This opinion may also show the importance of a Markman hearing -- maybe with the additional information from the hearing reconsideration would not have been necessary.  Of course, the opinion may not suggest that, it is impossible to make that judgment without having both been involved in the case and having been privy to the Court's reasoning over time.

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Connell v. KLN Steel Prods. Co., No. 04 C 194, 2006 WL 2661011 (N.D. Ill. Sept. 13, 2006) (Kendall, J.)

Judge Kendall stayed this patent infringement suit and transferred the case to the Court of Federal Claims, for the Court of Federal Claims to determine whether the Navy consented to defendant's alleged infringement pursuant to 28 U.S.C. Section 1498(a).  Section 1498 provides that when the use or sale of a patented product is both for the government and with the government's "authorization and consent," a patent owner's sole infringement remedy is against the United States in the Court of Federal Claims.

The Court also found that the Navy, for whom the allegedly infringing metal bunk beds had been manufactured, was an indispensable party because the issue at hand was whether the Navy had expressly or impliedly authorized and consented to the infringement.  Because the Court found that it lacked jurisdiction over the Navy for patent infringement claims pursuant to Section 1498, the Court stayed the case and transferred it to the Court of Federal Claims.  The Court also noted that the Court of Federal Claims could either keep the case or remand it in whole or in part, after ruling upon the Section 1498 defense.

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