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

Goss Int'l Ams., Inc. v. Graphic Mgmt. Associate, Inc., No. 05 C 5622, Slip Op. (N.D. Ill. Jun. 11, 2008) (Manning, J.).

Judge Manning construed the terms of plaintiff's patent related to a newspaper assembly collating machine by adopting in part and rejecting in part Magistrate Judge Valdez's Report and Recommendation ("Report") construing the claims. Of particular note, the Court considered whether it should review the Report de novo or for clear error, because the constructions were not dispositive. Because the constructions likely would be case dispositive in fact, and because prior cases reviewed magistrate claim construction reports de novo, the Court held that de novo review was appropriate.

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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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Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. Mar. 20, 2008) (Manning, J.).

Judge Manning granted in part the defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs' RICO, Lanham Act and related state law claims. Plaintiffs alleged that the "parking defendants" – entities that allegedly register common misspellings of domain names – worked together and conspired with defendant Google to populate the misspelled domains with revenue-generating advertising related to the actual web sites' business.*

Anticybersquatting Consumer Protection Act ("ACPA")

The Court denied the Parking Defendants motion to dismiss plaintiffs' ACPA claims. While plaintiffs did not allege that the Parking Defendants were the registrants of the domains at issue, they did allege that the Parking Defendants registered, owned, and controlled the sites. Furthermore, the Court would not rule on the factual issue of whether the domains – for example, vulcangolf.com and vulcanogolf.com – were confusingly similar to plaintiffs' marks.

The Court denied Google's motion to dismiss because while Google did not register or own the domains at issue, it was sufficient that they allegedly "trafficked" in them by working in concert with the other defendants.

Trademark Infringement

The Court upheld plaintiffs' trademark infringement claims. It was sufficient that plaintiffs had trademarks covering their own domain names, they were not required to have marks covering defendants' misspelled domains. Additionally, the Court could not rule upon Parking Defendants' arguments that they did not use the marks. The complaint alleged use, and determining whether Parking Defendants' particular acts constituted use would require reliance upon facts outside the complaint.

Google argued that it should be dismissed because it was, at most, an innocent infringer and it had already agreed to permanently exclude all allegedly infringing domains identified by plaintiffs. Because the only remedy against an innocent infringer was an injunction, which Google had already agreed to, Google argued should be dismissed. The Court, however, did not dismiss the trademark claims against Google because dismissal would have required reliance upon facts outside of the complaint. The Court denied the motions to dismiss plaintiffs' false designation of origin claims for the same reasons the trademark infringement claims were not dismissed.

Trademark Dilution

Defendants argued that the dilution claims must be dismissed because plaintiffs' marks were not famous. But because plaintiffs pled fame and because fame is a question of fact, the Court did not dismiss the claims.

*  This post only addresses the IP aspects of the opinion, but the opinion also considers RICO and state law issues.

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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, Min. Order (N.D. Ill. Jul. 13, 2007) (Manning, J.).*

In the first Northern District opinion to address the Supreme Court’s MedImmune declaratory judgment standard, Judge Manning denied plaintiff Black & Decker’s (“B&D”) motion to dismiss defendant Robert Bosch Tool Corp.’s ("Bosch") declaratory judgment counterclaims for lack of subject matter jurisdiction. In a prior case between the parties before Judge St. Eve (numerous prior opinions are discussed in the Blog's archives), B&D asserted that two models of Bosch's Power Box radio (the "Old Power Box") infringed B&D's two patents (the "Old Patents").  Shortly before Judge St. Eve held trial in the previous case, B&D brought this suit against Bosch asserting that Bosch's new model of its Power Box radio (the "New Power Box") infringed a third patent (the "New Patent").  At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents.  Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial.  After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.

Shortly after Judge St. Eve excluded the New Power Box from her trial, B&D amended the complaint in this case to allege infringement of the Old Patents.  In response, Bosch added declaratory judgment counterclaims regarding a third set of B&D patents (the “Smith patents”) which B&D had never asserted against Bosch. Bosch argued that an actual controversy existed because of the history of litigation between the parties and B&D’s prior testimony that it placed a high value on the exclusivity its patents provided in the workplace radio marketspace. B&D countered that, despite filing two suits against Bosch, B&D had never asserted the Smith patents against Bosch, or any other party. B&D also argued that St. Eve had already dismissed similar counterclaims in the last case for lack of actual controversy. But St. Eve’s decision was based upon the Federal Circuit’s old reasonable apprehension test, which the Supreme Court’s MedImmune decision overruled. Looking at “all of the circumstances,” as required by MedImmune, the Court held that an actual controversy existed. Among other reasons, the Court noted that the wide-ranging dispute between the parties regarding the workplace radios, suggested that it was in the parties’ best interests to resolve any dispute regarding the Smith patents.

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

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Vaughn v. Kelly, No. 06 C 6427, Slip Op. (N.D. Ill. Jul. 16, 2007) (Manning, J.).

Judge Manning denied defendant R. Kelly’s (“Kelly”) motion to dismiss plaintiff Vaughn’s case arguing that Vaughn’s state law claims were preempted by copyright law. The Court previously dismissed Vaughn’s motion to remand the case to state court, holding that his unjust enrichment claim sounded in copyright law and giving Vaughn time to amend his complaint to remove the copyright elements (you can read more about the case in the Blog’s archives). Kelly now moves to dismiss the amended complaint. As in the original complaint, Vaughn alleged that he introduced Kelly to stepping, taught him how to step, helped him write a stepping-based song entitled "Step in the Name of Love," and collaborated with Kelly to develop a video for the song.  The Court held that Vaughn’s unjust enrichment claim was preempted by copyright law, but granted Vaughn leave to refile the claim as one for copyright infringement. The Court refused to consider Vaughn’s proposed amended unjust enrichment claim because Vaughn failed to amend the unjust enrichment claim when the Court first offered Vaughn a chance to amend and because it is improper to consider amendments as part of a motion to dismiss. The Court held that Vaughn’s breach of oral contract claim was not preempted by copyright law because it could be for less than co-ownership of the copyright, which would be preempted. 

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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, 2007 WL 1232089 (N.D. Ill. Apr. 25, 2007) (Manning, J.).

Judge Manning granted defendant's, Robert Bosch Tool Corp. ("Bosch") Fed. R. Civ. P. 12(c) motion for judgment on the pleadings, holding that plaintiff's, Black & Decker ("B&D"), patent infringement claims against Bosch's new product regarding B&D's previously asserted patents were barred by res judicata.  In the prior case before Judge St. Eve (numerous prior opinions are discussed in the Blog's archives), B&D asserted that two models of Bosch's Power Box radio (the "Old Power Box") infringed B&D's two patents (the "Old Patents").  Shortly before trial before Judge St. Eve, B&D brought the instant suit against Bosch asserting that Bosch's new model of its Power Box radio (the "New Power Box") infringed a third patent (the "New Patent").  At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents.  Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial.  After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.

Shortly after Judge St. Eve excluded the New Power Box from her trial, B&D amended the complaint in the instant case to allege infringement of the Old Patents.  Bosch then argued that res judicata barred B&D's claims based upon the Old Patents.  Judge Manning held that res judicata applied because the trial before Judge St. Eve resulted in a final verdict, the parties to that case were identical to those in the instant case and the claims had "identity" with each other.  Judge Manning noted that B&D admitted that the causes of action had "identity"  when it sought to reassign the instant case to Judge St. Eve and stated that:  both cases involve the same patents; both cases involve the same product, the Power Box; both cases involve the same facts; and both cases involve the same issues of law. 

B&D argued res judicata should not apply because Bosch had sought to have the New Power Box claims litigated in a separate case.  But Judge Manning denied the argument, noting that Bosch had argued that B&D should not be able to bring its claims late in the suit before Judge St. Eve and also that res judicata should preclude any future B&D suit based upon the New Power Box.  Additionally, Judge Manning held that B&D could have litigated the New Power Box in Judge St. Eve's case because B&D was aware of the product throughout the suit and that at least some sample products had been made by or for Bosch. 

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Vaughn v. Kelly, No. 06 C 6427, 2007 WL 804694 (N.D. Ill. Mar. 13, 2007) (Manning, J.).

Judge Manning denied plaintiff Vaughn's motion to remand his case to state court, but gave plaintiff leave to file an amended complaint.  Vaughn sued defendant R. Kelly ("Kelly") in Illinois state court alleging breach of contract, fraud and unjust enrichment, among other things.  Vaughn alleged that he introduced Kelly to stepping, taught him how to step, helped him write a stepping-based song entitled "Step in the Name of Love," and collaborated with Kelly to develop a video for the song.  Kelly had the case removed to the Northern District based upon an argument that the claims sound in copyright law.  In his motion to remand, Vaughn argued that his case was not about copyright, but about Kelly's alleged theft of his uncopyrightable ideas and the breach of the contract governing the exchange of those ideas.  The Court noted that Vaughn's fraud and breach of oral contract claims were close questions, but held that Vaughn's unjust enrichment claim sounded in copyright.  The unjust enrichment was based upon fixed works -- Kelly's song and video -- and the unjust enrichment claim is equivalent to allegations of Kelly's infringement of Vaughn and Kelly's alleged joint work.  The Court acknowledged that Vaughn was likely to amend his complaint to force remand and gave Vaughn a deadline for filing any such amended complaint.

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Adventus Ams. Inc. v. Innovative Envtl. Techs., Inc., No. 06 CV 3267, 2007 WL 704938 (N.D. Ill. Mar. 5, 2007) (Manning).

Judge Manning dismissed one plaintiff for lack of standing and transferred the case to the Eastern District of Pennsylvania.  Plaintiff EnviroMetal Technologies ("EnviroMetal") had an exclusive license to the patent-in-suit from the University of Waterloo in Canada.  The Court held that EnviroMetal's license was sufficiently exclusive to create standing because, among other things, it expressly gave the right to make use or sell and EnviroMetal had exclusive sublicensing rights.  Plaintiff Adventus Americas ("Adventus"), however, was a non-exclusive sublicensee of EnviroMetal and the Court held it had no standing.  Defendant also argued that the Court lacked personal jurisdiction, but the Court held that defendant's sales contacts with Illinois were sufficient to create personal jurisdiction.

Having decided the standing and jurisdictional issues, the Court transferred the case to the Eastern District of Pennsylvania.  Although EnviroMetal had chosen Illinois as a form, that choice was given little weight because of Illinois's relatively weak connection to the facts of the case.  And the Court held that the convenience of the parties was best served by transfer because EnviroMetal had to travel regardless of which district the case was in, but defendant's employees would not have to travel if the case were transferred.  Additionally, the case would likely be resolved more quickly in Pennsylvania -- the median time to trial in the N.D. Ill. is 26.4 months, compared to 18.0 in the E.D. Pa.

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Big Dipper, Inc. v. Wells' Dairy, Inc., No. 05 C 5395, 2006 WL 2711843 (N.D. Ill. Sept. 20, 2006) (Manning, J.).

In this trademark action, Judge Manning denied defendant's Rule 11 motion without considering it on the merits because defendant failed to comply with Rule 11's "safe harbor period."  Rule 11(c) requires that before filing a Rule 11 motion, the party serve the motion on its opponent and give the opponent at least 21 days to correct the issues raised in the motion.  Defendant's Rule 11 motion was also defective because defendant combined its Rule 11 motion with its response to plaintiff's motion to strike. As the Court noted, a Rule 11 motion must be filed as a separate, standalone motion. 

Defendant had ample opportunity to notify plaintiff of the Rule 11 issue. Plaintiff filed a motion to dismiss defendant's counterclaims.  The counterclaims challenged the validity of plaintiff's marks.  In response to the counterclaims, plaintiff served defendant a proposed motion to strike them.  Defendant responded to the proposed motion with a faxed letter objecting to the motion and asking plaintiff not to file it, but did not mention Rule 11 in the letter. 

Plaintiff then filed the motion to strike.  Defendant did not file a separate response to plaintiff's motion, but instead addressed plaintiff's substantive arguments in its motion to strike and in its reply to plaintiff's responsive briefing.  The Court held that, in addition to failing to meet the Rule 11(c) safe harbor requirement, defendant's motion was also defective because it was not filed separate from its response to plaintiff's underlying motion to strike.

In addition to Rule 11 issues, the Court's opinion also considered substantive trademark issues.  Specifically, the Court considered whether it lacked jurisdiction over defendant's invalidity counterclaim because defendant had not exhausted its invalidity challenge within the PTO (defendant had a pending cancellation proceeding before the TTAB).  The Court held that where the unexhausted validity issues are related to a claim with independent federal jurisdiction (in this case, plaintiff's trademark infringement claims) both the infringement and the validity challenge should be heard together.

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Mader v. Motorola Inc., No. 92 C 8089, 1999 WL 519020 (N.D. Ill. Jul. 14, 1999) (Manning, J.).

This opinion intersects with IP only to the extent that you consider the opinion a derivative work based on its use of Beatles and Pink Floyd song titles and quotes.  But it does highlight a fun area of legal writing -- the use of song lyrics in judicial opinions.  A recent law review article,  [Insert Song Lyrics Here]: The Uses and Misuses of Popular Music Lyrics in Legal Writing, by Professor Alex Long analyzes the use of music in legal writing (Bob Dylan is the most cited artist in judicial opinions, followed by Paul Simon and Bruce Springsteen). (Note: If my wife were a federal district judge, you might see a sharp increase in judicial citations to Judas Priest and KISS. Thankfully – at least for the sake of good musical taste – she is not, although she would otherwise make a great judge.)

Prof. Long is not a fan of Judge Manning’s citations to the Beatles and Pink Floyd, in part because of an admitted distaste for Pink Floyd.  I, however, enjoyed the references.  Here is the section of the opinion quoted in Prof. Long's article:

The Beatles once sang about the long and winding road. This 1992 case has definitely walked down it, but at the end of the day, the plaintiffs and their counsel were singing the Pink Floyd anthem "Another Brick in the Wall" after consistently banging their collective heads against a popular procedural wall - Northern District of Illinois Local Rule 12 governing the briefing and submission of summary judgment motions.

You can argue that the analogy is weak because “Another Brick in the Wall” was about breaking down the wall, not just banging into it. But I still like it (the opinion itself breaks down the wall). 

My favorite music-referencing judicial opinion, however, remains Judge Enslen's opinion in Hirt v. Richardson, 127 F. Supp.2d 833 (W.D. Mich. 1999).  If memory serves, Judge Enslen has a few others, but this is one I remember from my W.D. Michigan clerking days (I clerked for Judge Quist, not Judge Enslen, but this opinion made the rounds while I was clerking because it was cleverly written and a high-profile issue).  Because I cannot link to it without permission from Westlaw, here is an excerpt from it:

As for the future--whatever will be will be.  Since the future is not ours to see,[6] however, and in the absence of something approaching a concrete plan by either the United States or Russia, no meaningful [Environmental Assessment] or [Environmental Impact Study] could even be conducted . . . .

---

[6] Happy Holidays, Doris Day, wherever you may be.

Thanks to Legal Blog Watch and The Volokh Conspiracy for bringing the article to my attention.

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

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

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

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

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