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

The Northern District recently sent out the following notice of a memorial service for Judge Moran to all e-filers:

The Judges of the United States District Court
for the Northern District of Illinois
cordially invite you to attend the
Memorial Service
in Remembrance of
Honorable James B. Moran
Monday, July 13, 2009, beginning at 3:30 p.m.
James Benton Parsons Memorial Courtroom
Everett McKinley Dirksen United States Courthouse
Twenty-fifth floor
219 South Dearborn Street
Chicago, Illinois

Reception immediately following in the 25th floor lobby,
Please RSVP by July 9, 2009 via e-mail
To JudgeMoranMemorialService@ilnd.uscourts.gov

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As of June 15, the Northern District of Illinois is requiring that all sealed or restricted documents be e-filed through the Northern District's ECF system.  And sealed documents may only be filed pursuant to a protective order or by leave of court.  Click here for the Court's filing under seal instructions.

The Northern District is also requiring that cases be opened electronically through the Northern District's ECF system.  Click here for the Court's instructions for opening civil cases.

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Last Friday, May 29 the Northern District held its tenth annual pro bono awards ceremony.  Federal Bar Association President Juanita Sales Lee was the keynote speaker.  The Court gave out both Awards for Excellence in Pro Bono and an Award for Special Service to the Court.  The Excellence awards went to:

• Richard L. Marcus of Sonnenschein Nath Rosenthal LLP (presented by Judge Cox);
   
• Howard L. Mocerf, Richard P. Darke and Amy E. McCracken of Duane Morris LLP (presented by Judge Manning);
   
• Kate Jillian Grossman of Sidley Austin LLP (presented by Judge Schenkier);
   
• Edward M. Fox of Ed Fox & Associates (presented by Chief Judge Holderman);
   
• Jeffrey D. Colman of Jenner & Block LLP (presented by Judge Bucklo);
   
• James P. Condon of Central States Funds (presented by Judge St. Eve and Judge Cole);
   
• Michael George Kelly of the Law Offices of Chadwick & Lakerdas (presented by Judge Manning and Judge Cox);
   
• Arthur J. Howe of Schopf & Weiss LLP and Julie Ann Sebastian of Cook County State’s Attorney’s Office (presented by Judge Lefkow);

And the Special Service Award went to:

• Joel Daly, District Court Information Officer (presented by Chief Judge Holderman).

Congratulations to all of the recipients, and thanks to all of the award recipients for their service.

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The Northern District judges are seeking public comment on a new set of proposed Local Patent Rules -- click here to email Northern District Clerk Michael W. Dobbins with comments and here to download a copy of the proposed Patent Rules.  The rules lay out a schedule that mirrors the Northern District of California and Eastern District of Texas patent rules in requiring initial infringement, noninfringement and invalidity contentions.  But the proposed Patent Rules have some significant and interesting differences.  In particular, the claim construction process, which occurs near the end of fact discovery, provides for an opening brief by the accused infringer, a response brief by the patent holder and a reply brief by the accused infringer.  Here is a general outline of the timeline and procedure dictated by the Patent Rules:

• A standard protective order in place from the beginning of the case, unless and until it is modified, to avoid discovery delays being blamed upon entry of a protective order;
   
• Automatic document production requirements of plaintiff when initial disclosures are served and of defendant when initial noninfringement and invalidity contentions are served;
   
• Plaintiff serves initial infringement contentions two weeks after initial disclosures and defendant respond with initial noninfringement and invalidity contentions two weeks after that, followed two weeks later by plaintiff's response to the invalidity contentions;
   
• Plaintiff files final infringement contentions twenty one weeks after its initial contentions and defendant responds four weeks later with final noninfringement, invalidity and unenforceability contentions (after the final contentions, leave of Court is required for any amendments);
   
• No party can seek a stay pending reexam after serving its final contentions;
   
• The claim construction process begins two weeks after defendant's final invalidity contentions are served;
   
• Defendant files an opening claim construction brief along with a joint appendix including the patents in suit and their prosecution histories consecutively paginated, plaintiff then files a responsive brief within four weeks, and defendant has two weeks to file a reply;
   
• Fact discovery closes forty two days after the claim construction rulings, which triggers expert discovery followed by a dispositive motion deadline.

The Patent Rules are scheduled such that a patent trial should occur within two years of serving the complaint.  Assuming that schedule is enforced, it would result in a significant speeding up of, at least, the larger patent cases in the Northern District.

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The Northern District has set up a new page on its website collecting educational information about the Court and the Dirksen Courthouse.  The Northern District intends the site to help school groups planning to or interested in visiting the Court.  It is a great resource for visiting school groups, but it is also interesting for members of the Northern District Bar.  In addition to logistical information and educational background on the operations of the district courts, it also provides the Court's historic highlights.  For example, there are lists of famous trials and appeals.  No patent cases made the list, they were bumped by defendants like Capone, Hoffa, the Chicago Seven and public officials from Project Graylord.

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On March 3, the Northern District will celebrate 190 years of Illinois federal courts.  The celebration begins at 3:00 pm with a program in the Dirksen Courthouse ceremonial courtroom, Room 2525.  The Northern District bar is invited to the celebration, e-mail rsvps to ilnd_190th_Anniversary@ilnd.uscourts.gov.

The celebration will include a panel of Northern District judges discussing "The Future of the Federal Courts" and a sketch of the court's history by Richard Cahan, the author of A Court That Shaped America: Chicago’s Federal District Court from Abe Lincoln to Abbie Hoffman.  The celebration also serves as the grand opening of the court's exhibit:  “The 190th Anniversary of
the United States District Court in Illinois: A Celebration of the Federal Judiciary’s Contribution
to Illinois and the Nation.”  The exhibit, featuring court artifacts, photographs and sketches will remain on display through May 1, 2009, and will be located on the second floor of the Dirksen United States Courthouse.

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Magistrate Judge Mason's term ends on September 28, 2009.  As part of considering reappointing Judge Mason for an additional eight year term, the Northern District is establishing an advisory panel of Northern District citizens.  Additionally, the Northern District Clerk is accepting written comments to regarding Judge Mason to assist the panel until March 20, 2009 at the following address:

Magistrate Judge Advisory Panel
c/o Mr. Michael W. Dobbins
Clerk of Court
U.S. District Court
219 South Dearborn St. - Rm. 2050
Chicago, IL 60604

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2008 was another busy IP year for the Northern District of Illinois.  Once again, there was an increase in patent case filings, and the Northern District continues to be among the top five patent dockets in the country and the most active district court in the Seventh Circuit by far.  Trademark cases were steady, with only two fewer filings than in 2007.  And as with its patent docket, the Northern District's trademark docket continues to be one of the five most active in the country.  Finally, copyright cases continued a relatively steep decline.  But despite the decline, the Northern District maintains one of the most active copyright dockets outside of California and the Southern District of New York.  This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2008 (data gathered from the Stanford IP Clearinghouse):

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As usual, the Northern District will be closed for both Thanksgiving Day and the Friday after, November 27 and 28.  Additionally, the Clerk's office will close this Thursday, November 20 from 3:30-4:30 pm for a special meeting.  The drop box and ECF filing will still be available, but if you want to file in person get there earlier in the day or after 4:30.

[UPDATE:]  To those who have wondered, the more standard case analysis posts will be returning shortly -- likely late this week, but at least early next.  I am working through procedures with my new shop.

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BorgWarner, Inc. v. Hilite Int’l., Inc., No. 07 C 3339, 2008 WL 3849908 (N.D. Ill. Aug. 14, 2008) (Zagel, J.)

Judge Zagel denied defendant Hilite’s 23 U.S.C. §1404(a) motion to transfer. Plaintiff BorgWarner filed this patent infringement suit over variable camshaft timing (“VCT”) in June 2007. Hilite answered and counterclaimed in March 2008. Five days after answering, Hilite filed a suit in the District of Delaware alleging that BorgWarner infringed Hilite’s VCT patent. Hilite reasoned that its VCT case was related to a prior Delaware patent case filed by BorgWarner on the patent currently at issue in the Northern District, and, therefore, by the transitive property this suit and BorgWarner’s closed Delaware case were related.

While the Seventh Circuit does not strictly follow the first-to-file rule, its use was warranted in this case. BorgWarner’s choice of forum deserved some deference. And the Northern District, while equivalent to Delaware in terms of time to trial, was significantly faster for average disposition without court actions – 6.2 months in the Northern District to 12.5 months in Delaware. Convenience factors were neutral, and therefore weighed in favor of keeping the case in the Northern District.

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Here are several stories worth checking out, but that did not warrant a separate post:

• PA Tracer's monthly patent filings report is out.  The Northern District had nine new cases filed in July.  That is reasonably busy for the deep summer, but nothing compared to the Eastern District of Texas's 25 new patent cases -- click here to read PA Tracer's post.
   
• The St. Louis Post-Dispatch ran a story recently about Judge St. Eve -- click here to read it.*  The story discusses many traits that are obvious to those who have practiced before her.  Judge St. Eve is very punctual and efficient, and she has absolute control of her courtroom, which she maintains with a civility and kindness that are impressive.  The article also speculates, using unnamed colleagues and media as sources, that Judge St. Eve will eventually be on Supreme Court short lists.  Here's hoping she stays in the Northern District a long time before getting called up to One First Street.
   
• Chicago Lawyer Magazine did a nice profile on Chicago IP lawyer Carol Genis of Bell, Boyd & Lloyd.  Click here to read it.  The article largely focuses on how Genis develops strong bonds of trust and friendship with clients.
   
• Duane Valz, Vice President & Associate General Counsel of Yahoo!’s Global Patent Strategy, is discussing approaches for patenting Internet-related ideas in a webinar on Wednesday, September 3 from 1:30 - 3:00 CT -- click here for more information.

*  Hat tip to the WSJ Law Blog for pointing out the story here.

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The Northern District had 72 trademark cases filed during the first half of 2008.  That is well on the way to meeting or exceeding 2007's total of 138 cases -- click here to read about the 2007 case filings.  So, it looks like, as with patents, the Northern District continues to have an active trademark infringement docket.  A difficult economy is not slowing the Northern District's IP cases.

Thanks to Mike Atkins at the Seattle Trademark Lawyer for the idea of a mid-year status report.  Expect a similar copyright mid-year report shortly.

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1. Eastern District of Texas -- 32 filings
   
2. District of Delaware -- 24 filings
   
3. Central District of California -- 20 filings

Patent Appeal Tracer also mentions EZ4Media's two Northern District cases against thirteen defendants as cases to watch.  The defendants in those cases are alleged to infringe patents to wireless streaming of digital media.

[UPDATE:] More on the year's trademark and copyright filings is coming next week, prompted by Mike Graham's Seattle Trademark Lawyer post about this year's Western District of Washington trademark litigation statistics -- click here to read it.  Thanks for the mention Mike.

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Here are a few IP news items from the weekend and this morning that you will find interesting:

• Blawg Review #149 is up at the Antitrust Review with several IP-related links.
  
• Patent lawyer Duncan Bucknell is hosting the March Carnival of Trust, which I will host on the first Monday of May.
  
• The Northern District's new website is live (and excellent, but more on that Friday), but may be causing you some trouble today.  It is requiring that you upgrade your browser to the most current version (if you have not already) in order to access the site.  I am told by reliable sources that the upgrade is not actually necessary and that the Northern District is working on a fix so that you should be able to access the site by the end of the day with any browser.

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There were 140 patent cases filed in the Northern District during 2007, an 11% increase from the 126 patent cases filed in 2006. This maintains the Northern District’s status as the fifth largest patent district. According to TrollTracker (click here for TrollTracker’s year end filing analysis), the Eastern District of Texas was first with 364 filings, more than 2.5 times the Northern District’s filings. The Central District of California came in a distant second with 272 patent filings, followed by the District of New Jersey at 187, the District of Delaware at 147 and then the Northern District. Of the Northern Districts 140* filings, 49 or 35% were disposed of during 2007.

A list of each case, the case number, the filing date and, where appropriate, the date the case was resolved are provided after the jump. In the next week or two, I will be doing similar posts for trademark and copyright cases filed during 2007.

A hat tip to the Maryland Intellectual Property Law Blog for its 2007 IP review series that pushed me to start my own review of 2007 IP cases.

* TrollTracker reports 137 patent cases. The discrepancy may be explained by several cases filed during the last few days of the year that did not make it to Pacer until after January 1.

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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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Kammin v. Smartpros, Ltd., No. 07 C 2665, 2007 WL 3046128 (N.D. Ill. Oct. 9, 2007) (Guzman, J.)

Judge Guzman transferred this copyright case to the Southern District of New York pursuant to 28 U.S.C. Section 1404. While plaintiff’s choice of forum is usually given significant weight, no party was a resident of the Northern District – both parties were New York residents. Furthermore, the non-party witnesses were closer to New York. And New York had a significant interest in deciding a case between its citizens regarding a dispute arising within New York.

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Mitchell v. First Northern Credit Union, No. 07 C 1891, 2007 WL 2948374 (N.D. Ill. October 4, 2007) (Norgle, J.).

Judge Norgle granted defendant Arizona State Credit Union’s ("ASCU") motion to transfer to the District of Arizona pursuant to 28 U.S.C. Section 1404 in this patent dispute. The Court acknowledged that plaintiff’s chosen forum was given significant weight. But the ease of access to the evidence in Arizona dictated that the case be transferred. Plaintiff was an Arizona resident, at least as of his filing date. And ASCU, all of its documents and all of its employees were in Arizona.

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Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 2156665 (N.D. Ill. Jul. 26, 2007) (Cole, M.J.)

Judge Cole granted in part defendant Little Lady Foods’ (“LLF”) Fed. R. Civ. P. 37 motion to bar evidence of allegedly late–identified trade secrets. Plaintiff Fast Food Gourmet (“FFG”) originally identified four trade secret elements of its process for making thin crust frozen pizza (you can read more about this case in the Blog's archives). FFG’s Vice President of Operations Crause identified four additional elements during his deposition. And FFG later identified two additional elements. LLF argued that FFG should be limited to the first four elements because FFG never updated its interrogatory responses to include the six additional elements. The Court held that the four additional elements disclosed during the deposition had “otherwise been made known” pursuant to Fed. R. Civ. P. 26(e) and, therefore, were not required to be added to FFG’s interrogatory responses. The Court excluded the other two elements. FFG argued that it had identified the elements by identifying documents containing the elements in its interrogatory responses pursuant to Fed. R. Civ. P. 33(d). But the Court held that the documents FFG identified only identified the two elements sporadically, and in connection with elements that were not trade secrets. This, combined with Crause’s testimony that he had identified all of the trade secret elements, made FFG’s Rule 33(d) statements insufficient.

Practice Tip: Rule 33(d) is often seen as a simple escape from answering cumbersome or difficult interrogatories. Of course, it is also often warranted. But when you use Rule 33(d), make sure to identify the correct documents, and make sure the identified documents fully support your position.

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Statistics compiled by the Patent Troll Tracker* blog show that the Northern District continues to play a prominent role in deciding the nation's patent disputes and, as a result, its IP disputes more generally.  Filings of patent cases for 2007 (through the end of July), show that the Northern District had the fourth most patent filings:

Another interesting statistic from this data:  with the exception of the E.D. Texas, all of the districts have a rough average of two to three defendants per case.  E.D. Texas averages about three and a half defendants per case.  I would have expected that E.D. Texas would average closer to five to ten defendants per case.  Perhaps all of the large patent licensing company cases that garner so much attention in Marshall are balanced by disputes between individual parties.

If readers are interested in these statistics, let me know and I will compile my own data and make it a regular (maybe quarterly) feature.

*  I appreciate the Patent Troll Tracker's statistics and even the effort he performs keeping track of cases filed by patent licensing companies, but as I have explained before I am no fan of name calling (by either plaintiffs' or defendants' counsel).  As such, I prefer the neutral term "patent licensing company."

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United States Gypsum Co. v. LaFarge N. Am., Inc., No. 03 C 6027, 2007 WL 2091020 (N.D. Ill. Jul. 18, 2007) (Hart, J.).

Judge Hart granted in part defendants motion to enforce the Court’s order and denied plaintiff’s motion to compel discovery. The Court previously ruled upon the parties’ cross-motions for summary judgment, holding that plaintiff’s state law claims were not preempted by the Illinois Trade Secrets Act, but significantly limiting the claims and removing some defendants (you can read more in the Blog’s archives). Defendant sought reconsideration of the Court’s preemption ruling. But the Court held that the motion, filed three months after the Court’s opinion, was untimely and that it presented no new arguments. The Court granted defendant’s request that plaintiff be limited to the trade secrets it identified during fact discovery and prior to summary judgment briefing.

Finally, the Court denied plaintiff’s motion to compel fact discovery. The motion was filed after the close of fact discovery and two months after plaintiff represented to the Court that only expert discovery remained to be completed.

Practice tip: File motions in a timely manner. It is especially important to file discovery motions during or at least near the discovery period.

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Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2071991 (N.D. Ill. Jul. 18, 2007) (Cole, J.).

Judge Cole recommended that the Court grant plaintiff’s motion for contempt. The parties previously settled this trademark case and agreed to a consent judgment which required, among other things, that defendants include “prominent” disclaimers on any advertisements, including webpages, offering plaintiff’s products for sale from the secondary market. Plaintiff filed a motion for contempt arguing that defendant’s website did not include prominent disclaimers. The Court agreed, explaining that prominence could be achieved in several ways, but that “fine print” was not one of them:

Being a relational and contextual concept, “prominence” may be achieved in any number of ways: placement of words, type size, typeface, text color, etc. Prominence, however, is not achieved by the use of fine print disclaimers that are substantially smaller than any other print on a page.

Practice tip: When drafting settlement agreements, or other contracts, watch out for subjective words like “prominence.”  If you expect that you may need to enforce the agreement* later, try to define subjective terms in more objective ways. For example, plaintiff in this case could have required that the disclaimer be at the top of each page in bolded font at least four points larger than the largest print on the page.

* If you expect that the agreement might be enforced against you, subjective terms may be beneficial.

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Meyer Intellectual Props. Ltd. V. Bodum, Inc., __ F.Supp.2d __, 2007 WL 2110931 (N.D. Ill. Jul. 24, 2007) (Shadur, J.).

Judge Shadur granted plaintiff’s motion for attorneys’ fees and costs related to a motion discovery dispute won by plaintiff, but modified its original award based upon defendant’s explanations (you can read more about this case in the Blog’s archives). The Court explained that the relevant Federal Rule, Fed. R. Civ. P. 37(a)(4)(A), could be paraphrased as “loser pays,” unless the Court finds the losing parties actions or lack of actions were justified or that other circumstances make a fee award unjust. The Court held that defendant’s explanation warranted reducing the original award by 50%. While the Court did not detail the explanation, this case identifies the broad discretion courts have in determining whether to award attorneys’ fees and costs, as well as the size of those awards.

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Meyer Intellectual Props. Ltd. V. Bodum, Inc., No. 06 C 6329, Slip Op. (N.D. Ill. Jul. 24, 2007) (Shadur, J.).*

Judge Shadur denied defendant’s motion to amend its answer adding an equitable estoppel defense. The Court noted that amendments were usually “generously” allowed, but defendant provided no justification for not including equitable estoppel in its original answer. Defendant argued that it required investigation to discover its equitable estoppel defense, but the Court noted that the information defendant relied upon was in defendant’s possession. So, there was no reason that defendant could not have conducted its investigation before filing its answer.

*  A copy of the Opinion is available here.

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Am. Needle, Inc. v. New Orleans Louisiana Saints, __ F. Supp.2d __, 2007 WL 2042764 (N.D. Ill. Jul. 11, 2007) (Moran, J.).

Judge Moran granted defendants, the NFL, NFL Properties and each of the thirty two teams (collectively the “NFL”) as well as Reebok International, Ltd. (“Reebok”), summary judgment on plaintiff’s Sherman Act antitrust claims, finding that the NFL acts through NFL Properties as a single entity for IP licensing purposes. For more than twenty years, NFL Properties licensed plaintiff to use various trademarks on its headwear. Plaintiff filed this suit after NFL Properties entered an exclusive license with Reebok, ending plaintiff’s license rights. Plaintiff argued that the NFL teams collectively, as well as in concert with Reebok, violated the antitrust laws by acting together through NFL Properties to license their collective intellectual property rights exclusively to Reebok (plaintiff argued that the NFL did not violate antitrust laws when it licensed to numerous parties, including plaintiff, through NFL Properties). But the Court held that licensing coordination between the NFL and its teams was equivalent to coordination between a corporation and its wholly-owned subsidiary. Because the Supreme Court treats corporations and their wholly-owned subsidiaries as single entities, there could be no conspiracy and no antitrust violation.

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The Northern District and the City of Chicago are working together to provide free wireless access in the Northern District’s Dirksen Federal Courthouse. The wireless connection is not available in any of the courtrooms (although it could be very useful during trials or hearings to have an internet connection), but it is available free of charge in the lobby and the second floor cafeteria. So, next time you arrive early for a hearing, take a few minutes to catch the Blog’s latest post.

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Steiner Indus., Inc. v. Auburn Mfg., Inc., No. 07 C 668, 2007 WL 1834176 (N.D. Ill. Jun. 22, 2007) (Darrah, J.).

Judge Darrah denied declaratory judgment defendant Auburn Manufacturing’s (“Auburn”) motion to dismiss. Auburn argued that plaintiff’s (collectively “DJ Plaintiffs”) suit improperly anticipated Auburn’s complaint which alleged Lanham Act claims of false designation and false advertising, as well as related state law claims. Auburn filed its complaint in the District of Maine within a week of DJ Plaintiffs’ filing. Auburn alleged that DJ Plaintiffs’ use of “FM Approved” and “Made in the USA” in their catalogs and website advertising in connection with their welding blankets constituted false designation and false advertising. DJ Plaintiffs were aware of the allegations before they filed suit because, as part of an ongoing negotiation with plaintiffs, Auburn had provided plaintiffs a copy of its complaint. The Court acknowledged its discretion to dismiss the case in favor of Auburn’s later filed complaint, but did not dismiss the case. The two cases mirrored each other, so either could resolve the parties’ dispute. And because both cases were filed in federal courts, there was no concern that the DJ case would cause friction between federal and state courts. The deciding issue was whether the Maine Court could offer a full remedy. DJ Plaintiffs had a motion to transfer or dismiss pending before the Maine Court. In that motion, DJ Plaintiffs argued that the Maine Court lacked personal jurisdiction over two of the three DJ Plaintiffs – Steiner Industries, Inc. and Lab Safety Supply, Inc. DJ Plaintiffs, therefore, asked the Maine Court to transfer the case to the Northern District of Illinois or to dismiss the case.  The Court held that if the Maine Court transferred the case to the Northern District or dismissed Steiner and Lab Safety for lack of jurisdiction, those factors would weigh in favor of maintaining the DJ action. If, however, the Maine Court denied DJ Plaintiffs’ motion and held that it had jurisdiction over all DJ Plaintiffs, then the Main Court could more effectively decide the dispute than the Northern District. The Court, therefore, denied the motion to dismiss with leave to refile if the Maine Court finds it has jurisdiction over all DJ Plaintiffs and does not transfer the case to the Northern District.

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Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. May 29, 2007).*

But because Northgate’s decision to sell infringing product post-verdict “needlessly multiplied” the case, the Court held that the post-verdict sales were exception and awarded plaintiff’s attorneys fees and costs incurred by the post-verdict sales motion. Additionally, the Court entered a permanent injunction.

*You can read the opinion here.

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Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 1673563 (N.D. Ill. Jun. 8, 2007) (Cole, J.).

Judge Cole denied plaintiff Fast Food Gourmet, Inc.'s ("FFGI") motion to compel responses to interrogatories, in this trade secret case involving frozen pizzas (you can read more about this case in the Blog's archives).  FFGI served defendants with an interrogatory seeking information regarding which brands of frozen pizza (aside from the accused DiGiorno Thin Crispy Crust Pizza) defendants baked in the ovens which were allegedly part of FFGI's trade secret crust-making process for stone hearth oven, thin crust, frozen pizzas.  Defendants objected to the interrogatory, which led to a meet and confer between the parties on February 15, 2007, two weeks before the close of fact discovery on March 1.  The meet and confer did not resolve the dispute.  On April 1, FFGI submitted its expert reports and then, six weeks after the close of discovery, FFGI moved to compel responses to the interrogatories.  But FFGI failed to notice the motion until more than one month later on May 18.  The Court noted that, while it had discretion to grant the motion, motions to compel filed after the close of fact discovery are generally held to be untimely unless accompanied by a "reasonable and persuasive justification" for the delay.  FFGI, however, provided no justification for its delay. 

But the Court ultimately denied FFGI's motion not because it was untimely, but because the evidence lacked evidentiary value.  FFGI assured the Court that it would not seek any other discovery after receiving the interrogatory responses.  FFGI had also repeatedly taken the position that its trade secrets crust-making process involved the combination of various elements and processes including the ovens that were the focus of FFGI's interrogatories, but that the ovens alone were not a trade secret.  The interrogatory responses alone , therefore, were of no value.  They would necessarily require additional discovery to be relevant to the case.  For example, it was not enough to know which other pizzas were baked in the ovens.  FFGI would need to know how each pizza baked in the oven was prepared in order to determine whether the pizzas were made using the FFGI trade secrets.  That would require additional fact discovery, but fact discovery was already closed.  The Court, therefore, denied FFGI's motion to compel. 

Practice tip:  File your discovery motions on or before the close of discovery.  And always explain to the Court why you need documents or interrogatory responses, particularly if you are seeking them after the close of discovery.

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Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, 2007 WL 1597928 (N.D. Ill. May 16, 2007) (Moran, Sen. J.).

Judge Moran granted declaratory judgment defendant Trading Technologies' ("TT") motion to compel documents and things identified by third party declarant Walter Buist during his deposition, despite declaratory judgment plaintiff Rosenthal Collins Group's ("RCG") assurances that the documents and things had already been produced.  RCG previously filed a motion for summary judgment of invalidity of TT's patents based upon a declaration by Buist regarding software that he developed, at least partially, more than a year before TT filed its patent applications.  In a previous opinion, the Court held that RCG's motion was "somewhat misleading" and possibly "disingenuous," but refused to dismiss the case (you can read the Blog's discussion of that opinion here, as well as more on this case generally in the Blog's archives). 

After RCG filed its motion, TT deposed Buist regarding, among other things, the creation of his declaration and his interactions with RCG's counsel related thereto.  During that deposition, Buist stated, among other things, that various drafts of his declaration were created, that he created a "differences" list and provided it to RCG's counsel and that he had used various computers during his work related to the case.  TT sought all drafts of the declaration, a list of any destroyed drafts, the differences list, any drives or computers used by Buist and all documents reflecting communications between Buist or his associates and RCG and its counsel or associates. 

In light of RCG's statements that it had already produced many of the requested documents and things, the Court ordered RCG to:  1) reproduce all such documents; 2) produce any remaining responsive documents (including the computers requested); and 3) produce documents reflecting relationships between Buist and RCG or its counsel, so long as such documents are not privileged.  The Court also required that RCG produce Buist for an additional deposition to answer questions related to the compelled documents, as well as Buist's relationship with RCG and its counsel, so long as the questioning does not violate Buist's attorney-client privilege.

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Rowe Int'l Corp. v. Ecast, Inc., No. 06 C 2703, 2007 WL 1498958 (N.D. Ill. May 17, 2007) (Kennelly, J.).*

Judge Kennelly issued this claim construction opinion construing the claims of eight patents related to computer jukeboxes and computer jukebox networks.  Of particular note, the Court construed "song selection means" in USPN 5,355,302 (the "'302 patent") as a keyboard separate from a display for generating a signal representing a song selected from the set of songs stored in the jukebox.  Plaintiffs sought a construction that would include a visual touchscreen, arguing that the Court should consider the following language from an unrelated patent by the same patentee (the "'398 patent"), that was not part of the patent in suit or its prosecution history:  "song selection means displayed on said visual screen."  Plaintiffs argued that this language showed that "song selection means" could include on-screen displays.  But the Court held that considering the language was not permissible and that, even if it were, the language only showed that the inventors were capable of claiming an on-screen display, but chose not to in the '302 patent.

*  You can read more about this case in the Blog's archives.

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Rowe Int'l Corp. v. Ecast, Inc., No. 06 C 2703, 2007 WL 1438370 (N.D. Ill. May 14, 2007) (Kennelly, J.).*

Judge Kennelly denied defendants' motion to dismiss plaintiffs' patent infringement complaint for lack of standing.  As to two patents that were not expressly assigned to plaintiffs before the suit was filed (the "Progeny Patents"), the Court used Illinois contract law to interpret the following blanket provision in the assignment agreement regarding the parent patent, which assigned the parent application and any improvements or related applications:

any and all other applications . . . which the undersigned may file . . . on said invention or improvements, and in any and all Letters Patent of the United States and foreign countries, which may be obtained on any of said applications . . . .

The Court held that this provision was unambiguous.  Pursuant to this provision, the inventors assigned plaintiffs any related patents or improvements to the original application.  Because the Progeny Patents were related to the parent patent, they were assigned to plaintiffs.  And, therefore, plaintiffs had standing to file suit.  Additionally, the Court noted that the express assignment of the Progeny Patents that plaintiffs received post-filing did not retroactively confer standing upon plaintiffs for this suit.

*  You can read more about this case in the Blog's archives.

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Days Inns Worldwide, Inc. v. Lincoln Park Hotels, Inc., No. 06 C 2960, 2007 WL 1455798 (N.D. Ill. May 16, 2007) (Der-Yeghiayan, J.)

Judge Der-Yeghiayan granted in part defendants' motion for reconsideration of the Court's award of plaintiff's attorneys fees' and costs for preparing summary judgment motions.  Plaintiff owns various marks relating to its Days Inn chain (the "Days Inn Marks").  Plaintiff licensed defendants Lincoln Park Hotels, Inc. and Richard Erlich (collectively "LPH") to use the Days Inn Marks in connection with the operation of a hotel in Chicago's Lincoln Park neighborhood.  In 2005, LPH sold the hotel to defendant Gold Coast Investors ("GCI") without informing plaintiff, in violation of the parties' license agreement.  GCI continued operating the hotel using the Days Inn Marks without licensing the rights to the marks from plaintiff.  As a result, plaintiff brought this suit against defendants alleging that, among other things, GCI infringed plaintiff's Days Inn Marks and LPH contributorily infringed plaintiff's Days Inn Marks by selling the hotel to GCI with the knowledge that GCI intended to continue using the Days Inn Marks and without informing plaintiff of the sale or removing the Days Inn Marks from the hotel, as required in the parties' license agreement.  In February, the Court granted plaintiff's summary judgment motion on twelve of fifteen counts and dismissed the remaining three counts as moot (you can find discussion of that opinion in the Blog's archives).  The Court also awarded plaintiff its attorneys' fees, approximately $150,000, for preparing its summary judgment motion.  Defendants moved the Court to reconsider, arguing that the Court should have required the parties to meet to resolve the attorneys fees dispute pursuant to  Local Rule 54.3 before ruling on the fees and that the Court should specifically apportion the fees between defendants.  The Court held that it was not required to follow the Local Rule 54.3 procedure in this case because defendants did not object to plaintiff's requests for fees made in its summary judgment briefing and because additional briefing required by the rule would not have benefited the Court because of its intimate knowledge of the case.  The Court did, however, apportion the fees that it was able to identify as only applicable to one group of defendants.  And the Court awarded an additional $35,000 of fees and costs that had not been presented in the initial motion.

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Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).

Judge Moran granted plaintiffs a preliminary injunction preventing defendants from interfering with plaintiffs' right to record new music with producers or record labels of plaintiffs' choice.  The Court also denied defendants an opposing preliminary injunction that would have prevented plaintiffs from recording new music with anyone other than defendants.  Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively "HH") -- in addition to clicking on "Hawthorne Heights" to go to the band's website, you can also read about them on Wikipedia, listen to them online or see them live June 12th in Urbana, Illinois's Canopy Club.  HH entered into a contract (the "Agreement") with defendants to produce and promote four albums.  The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured.  HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH.  This suit arose from that dispute.  Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH's letter allegedly terminating the Agreement and related state law claims.  In a prior opinion (discussed in the Blog's archives), the Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which left HH free to record other songs or records with another company during the life of the Agreement.  Based upon the Court's ruling, HH moved the Court for a preliminary injunction confirming that defendants could not interfere with any of HH's efforts to record new music with a third party.  Defendants cross-moved to prevent HH from working with anyone but defendants.  The Court held that HH showed a likelihood of success on the merits based upon the Court's prior ruling that the Agreement was not exclusive.  Similarly, the Court held that defendants did not show a likelihood of success in light of the same ruling.  Because defendants had no likelihood of success, their motion for a PI was denied.  Defendants argued that HH could not base a motion for preliminary injunction upon claims for declaratory relief, but the Court held that numerous courts had granted preliminary injunctive relief based upon claims for declaratory judgment.

The Court found that HH would suffer irreparable harm without an injunction.  The parties agreed that bands have a short shelf-life and because without an injunction HH would not be allowed to record new music with parties of its choice in the immediate future, HH would be irreparably harmed without an injunction.  The Court also held that despite the non-exclusivity of the Agreement, HH was obligated to produce records with defendants in a timely fashion. HH would be required to record the agreed-upon number of albums with defendants "within a reasonable time."

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Vanguard Prods. Group, Inc. v. Diam USA, Inc., No. 05 C 1323, Slip Op. (N.D. Ill. May 16, 2007) (Bucklo, J.).*

Judge Bucklo granted plaintiffs summary judgment of infringement and denied defendants summary judgment of invalidity.  The Court first construed the two claim terms at issue -- "electrically coupled" and "via the modular connector."  In both cases, the Court adopted the plaintiffs' construction after a detailed review of the intrinsic and extrinsic evidence.  Because neither term was in the original application or appears in the specification, the intrinsic evidence focused on the use of the terms within the claims.  Defendants also attempted to use claim language from a parent application to support their constructions, but the Court held that the prosecution of a term in a parent application generally does not limit different terms in its progeny.  In the instant case, the Court found that the parent application had used the broader term "electrical connection" instead of "electrically coupled" which weighed against defendants' construction.  Having ruled in plaintiffs' favor on the claim construction, the Court held that defendants' products infringed the asserted claims of plaintiffs' patents.  And the Court held that defendants' asserted prior art did not anticipate plaintiffs' patents.

*  Because I beat Westlaw on this one, you can access a copy of the Court's opinion here.  Please note that the Court issued a subsequent order modifying the opinion by deleting footnotes three and four, which were not intended to be part of the opinion.

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Late last week, President Bush signed the appointment papers for the Northern District's newest judge, the Honorable Frederick J. Kapala.  Judge Kapala was sworn-in late last week and is sitting in the Northern District's Western Division.  Here is some biographical information about Judge Kapala from the Northern District's announcement of his appointment:

Judge Kapala graduated from Marquette University and received his law degree from the University of Illinois in 1976. He served as an Assistant State’s Attorney and then went into private practice, where he was appointed as a Special Assistant Attorney General to manage consumer fraud cases in Northern Illinois. He began his judicial career in 1982 as an Associate Judge in Illinois’ 17th Judicial Circuit, serving as Presiding Judge of the Juvenile Court from 1989 to 1991. Judge Kapala was elected a Circuit Judge in 1994 and appointed Presiding Judge of the Criminal Division one year later. In 2001, Judge Kapala was assigned to the Appellate Court of Illinois, Second District, where he served on the Illinois Judicial Conference Committee on Discovery Procedures and the Illinois State Judicial Inquiry Board. Judge Kapala is a captain in the U.S. Army.

Welcome to the Northern District Judge Kapala.

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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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Ortho-Tain, Inc. v. Rocky Mountain Orthodontics, Inc., No. 05 C 6656, 2007 WL 1238917 (N.D. Ill. Apr. 25, 2007) (Leinenweber, J.).

Judge Leinenweber granted plaintiff's Fed. R. Civ. P. 12(f) motion to strike, dismissing without prejudice defendants' respective patent misuse affirmative defenses and all patent-related statements in defendants' counterclaims.  Plaintiff, Ortho-Tain ("OT"), sued Rocky Mountain Orthodontics ("RMO") and Planmeca Oy ("Planmeca") alleging that RMO breached the distributorship agreement between the OT and RMO.  Pursuant to the Agreement, OT manufactured dental appliances (allegedly covered by OT's patents) and RMO sold those appliances in France.  RMO allegedly breached the Agreement by sourcing equivalent dental appliances from Planmeca.  RMO counterclaimed for, among other things, declaratory judgment of noninfringement and unenforceability of OT's relevant United States patents.  The Court previously dismissed defendants' patent-related declaratory judgment counterclaims for lack of subject matter jurisdiction.  OT now argues that the Court should strike RMO's and Planmeca's respective patent misuse affirmative defenses because they are insufficient.  The Court first held that patent misuse was a proper affirmative defense, negating the first prong of a Rule 12(f) analysis. 

But neither RMO nor Planmeca met their Fed. R. Civ. P. 8 notice pleading obligations as to the defense.  RMO's and Planmeca's statement of their defenses were identical:  "[OT's] claims are barred by the doctrine of patent misuse."  The defense pled no facts and failed to identify which of OT's "many patents" were allegedly misused.  The Court, therefore, dismissed the affirmative defenses without prejudice.  And because the defenses were not well pled, the Court did not address the third prong of a Rule 12(f) analysis -- whether the defense could withstand a Fed. R. Civ. P. 12(b)(6) motion to dismiss.  The Court also briefly looked at whether Rule 8 notice pleading or Fed. R. Civ. P. 9(b) heightened pleading was required for a patent misuse defense, noting that at least one court had used Rule 9(b) pleading, but did not reach the issue, as the defenses did not meet the Rule 8 standard.

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Gencor Pacific, Inc. v. Nature's Thyme, LLC, No. 07 C 167, 2007 WL 1225362 (N.D. Ill. Apr. 24, 2007) (Kocoras, J.).

Judge Kocoras granted defendants' Fed. R. Civ. P. 12(b)(2)&(3) motion to dismiss for lack of personal jurisdiction and venue and dismissed the case.  Plaintiff brought this Lanham Act false advertising and copyright infringement case alleging that defendants used portions of plaintiff's copyrighted studies regarding the efficacy of a weight-loss and appetite suppressant containing Caralluma Fimbriata extract.  Defendants, a business and two individuals employed by the business, were residents of New Jersey and had a single sale to an Illinois customer, valued at $300.  Defendants only other contacts with Illinois were an interactive website accessible in Illinois and the fact that one or two of defendants' general solicitations may have been sent to Illinois.  Defendants did not own property in Illinois and there was no proof that any defendants sent any of the allegedly infringing information to Illinois.  The Court held these contacts were not sufficient to create either general or specific jurisdiction.  The Court also held that venue was not proper in the Northern District of Illinois because defendants were not residents of Illinois and the acts at issue in the suit did not occur in the Northern District.

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1238908 (N.D. Ill. Apr. 25, 2007) (Moran, J.).

Judge Moran denied defendant Lear's motion to stay the Court's preliminary injunction pending appeal to the Federal Circuit,* but did allow third party General Motors ("GM") to intervene of right and modified the PI to limit harm to defendant and GM.  In a March 30, 2007 opinion and order, the Court granted plaintiffs' motion for a preliminary injunction, preventing defendant from marketing and selling its garage door opener transmitters based upon the Court's prior claim constructions (these opinions are available in the Blog's archives).  The Court held that Lear could not show a likelihood of success on the merits, in part because the Court's "Markman decision and subsequent reconsideration dealt an enormous blow to [Lear's] case."  The Court acknowledged that while plaintiff would suffer irreparable harm without the PI, both Lear and GM could suffer irreparable harm because of the PI.  In order to resolve the irreparable harm issue, the Court revised the PI to exempt Lear's sales to GM.  Because GM was Lear's only client and because the exemption allowed GM to continue sourcing Lear's product  the revised PI would remove harm to GM and substantially reduce Lear's harm.  While Lear would not be able to add new customers, it would not have to idle its related workers and factories because Lear would not lose any customers.  Because the removal of GM sales from the PI substantially limits Lear's potential harm, the Court denied Lear's motion, supported by GM, to increase the bond from $10,000,000 to $50,000,000.

While GM was not a party to the suit, the Court, in a footnote, allowed GM to intervene of right pursuant to Fed. R. Civ. P. 24(a)(2) for the limited purposes of arguing for an exemption from the PI or a stay of it and to seek a higher injunction bond. 

*  Lear has already appealed the PI and the claim construction decision.

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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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Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 1175577 (N.D. Ill. Apr. 20, 2007) (Aspen, J.).

Judge Aspen denied defendant Little Lady Foods, Inc.'s ("LLF") Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Fast Food Gourmet, Inc.'s ("FFGI") breach of contract claim.  FFGI alleged that FFGI entered a "co-packing" relationship with LLF, essentially that LLF was to manufacture FFGI's product.  Based upon that relationship, FFGI provided LLF with its various trade secrets relating to producing "a unique stone hearth oven thin crust frozen pizza."  In addition to its formulas, recipes, methods and techniques, FFGI also provided LLF its equipment.  FFGI alleged that, in addition to making pizzas for FFGI, LLG worked with defendant Kraft Foods Global, Inc. ("Kraft") to develop a line of pizzas using FFGI's trade secrets, with substantially the same crusts as the FFGI pizzas.  FFGI brought claims for misappropriation of trade secrets against both defendants, breach of contract against LLF and unjust enrichment against Kraft.  LLF sought to dismiss FFGI's breach of contract claim to the extent it was based upon allegations that the agreement was breached by production of pizzas for Kraft with crusts nearly identical to FFGI's crusts.  LLF first argued that the agreement could not be breached because the agreement prohibits LLF from producing "pizzas with specification which are identical or . . . substantially identical to" the FFGI pizzas.  Because FFGI only pled that the crusts were identical or substantially identical, LLF argued the claim should be dismissed.  But the Court held that FFGI was only required to provide notice pleading of claims, not facts.  Because FFGI identified the parties, stated the nature of its dispute and provided "a few tidbits" LLF was sufficiently on notice.

LLF also argued that the claim should be dismissed because the FFGI and Kraft pizzas are substantially different because Kraft's sauce and/or toppings are very different than FFGI's.  But the Court refused to make factual determinations in a Rule 12(b)(6) motion and denied LLF's motion.

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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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United States Gypsum Co. v. LaFarge N. Am., Inc., No. 03 C 6027, 2007 WL 1100804 (N.D. Ill. Apr. 3, 2007) (Hart, J.).

Judge Hart granted in part and denied in part the parties' cross-motions for summary judgment.  This case was a dispute over technology related to gypsum wallboard manufacturing and included patent infringement, trade secret misappropriation, breach of contract, Stored Communications Act ("SCA"), Computer Fraud and Abuse Act ("CFAA") and various related state tort claims.  The Court first looked at plaintiff's patent infringement claims regarding methods for making gypsum board and resolved the parties' claim construction disputes.  The Court then turned to defendants' argument that plaintiff was estopped from claiming infringement by equivalents because it failed to expressly refer to the doctrine of equivalents in its complaint or in its contention interrogatory responses.  The Court held that it was sufficient to allege infringement and cite Section 271 in a complaint.  And as to waiver for failure to disclose equivalents in its interrogatory responses, the Court held that defendants had shown no prejudice from plaintiff's failure to disclose equivalents and that while plaintiff did not use the term equivalents in its responses, it did state that it contended defendants infringed the patents even if defendants processes did not meet timing requirements in the claims.  As a result, plaintiff was not barred from arguing infringement pursuant to the doctrine of equivalents.

The Court also performed a detailed analysis  of whether each alleged trade secret at issue was, in fact, a trade secret and whether it was  misappropriated.  For example, the Court held that regardless of whether plaintiff's Construction Specifications were trade secrets, they were not misappropriated because plaintiff's did not show that the Construction Specifications were used in the corporate defendants' business.  The Court held that certain drawings and blueprints were not misappropriated because there was no proof that the individual defendant alleged to have taken them gave them to the corporate defendants or otherwise used them in any way.  Additionally, there was no evidence that the corporate defendants used the drawings or blueprints in their business.  The Court dismissed claims based upon a slotted forming plate because of evidence that at least four different groups independently developed the slotted plates for use in wallboard manufacturing.  The Court noted that if just one other group had developed the plate it could have been accorded trade secret status, but because four others had developed similar technology it was a commonly known procedure which could not be afforded trade secret status.  The Court held that board formulation sheets which contained, among other things, the formula for making the wallboard material were protectable trade secrets.  The Court held that plaintiff could not claim blanket trade secret protection for its 11,000 page Operating Bulletins or its 500 page Expert System included therein.  But the Court did allow trade secret protection for elements of the Operating Bulletins and Expert System specifically identified as trade secrets. 

The Court also held that plaintiff's state court claims were preempted by the Illinois Trade Secret Act only to the extent that the torts involved trade secrets.  To the extent the torts were based simply on business issues, for example tortious interference with business expectancy, they were not preempted. 

Finally, the Court held that it had personal jurisdiction over the individual defendants because plaintiff was headquartered in Illinois and the individual defendants were aware of that based on the fact that each had attended limited training sessions in Illinois

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According to this Law.com article, effective May 1st the Northern District of Texas, based in Dallas, has instituted local patent rules similar to those used in the more famous (at least in patent circles) Eastern District of Texas, which were modeled after the Northern District of California's Local Patent Rules.  Additionally, the Southern District of Texas, based in Houston, is considering adopting a similar set of local patent rules.  Perhaps the courts think that the variety of direct flights to Dallas or Houston combined with the same Texas charm and hospitality available in Marshall, will give the Northern and Southern Districts a leg up on their colleagues to the east.  Of course, all of this would fall apart if Congress revises the venue requirements as Patently-O suggests it might.

But regardless of what Congress does, this spreading of special patent local rules, which I am all for, makes me wonder if the Northern District of Illinois will follow the trend and adopt their own special patent rules.  Some judges already have standing orders outlining their processes for claim construction proceedings.  For example, Judge St. Eve's procedures can be found on her site in the "Patent Cases" section.

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Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, 2007 WL 844610 (N.D. Ill. Mar. 14, 2007) (Moran, Sen. J.).*

Judge Moran denied in part and granted in part declaratory judgment defendant Trading Technologies' ("TT") Rule 37 motion for sanctions.  The Court held that declaratory judgment plaintiff Rosenthal Collins Group's ("RCG") motion for summary judgment of invalidity was "somewhat misleading" and possibly "disingenuous," but refused to dismiss the case.  Instead the Court struck the declaration underlying RCG's motion, denied RCG's summary judgment motion with leave to refile a motion "supported by proper evidence" and awarded TT its costs and attorneys fees associated with the Rule 37 motion, as well as its software expert's fees.  RCG filed a summary judgment motion arguing that TT's patents covering "double click" methods for executing an electronic trade were anticipated by the alleged prior art system "Wit DSM" as embodied in a software package RCG presented to the Court and TT on a laptop and claimed was essentially the software as it is existed more than one year prior to TT's patent filing.  TT's software expert identified that several lines of code had been added to the software by RCG's declarant, and that the added code performed certain functionalities required for anticipation.  When RCG's declarant was deposed, he stated that he had not written the "double click" portion of the original code and could not be sure that it was in the alleged prior art version of the WIT DSM.  These facts did not warrant dismissal of the case or barring of any evidence because RCG and its declarant had not made any false statements, although they had made deliberately vague statements.  Furthermore, while RCG did not identify that the software package included added code which the Court found disturbing, it did include a comparison program on the laptop it provided to TT and the Court which would have identified the added code.

This case involves the several of the same patents as the other TT case before Judge Moran.

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Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, 2007 WL 684047 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran held that the parties' contract was not exclusive and, therefore, granted in part and denied in part defendants' Rule 12(c) motion to dismiss.  Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively "HH").  HH entered into a contract (the "Agreement") with defendants to produce and promote four albums.  The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured.  HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH.  This suit arose from that dispute.  Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH's letter allegedly terminating the Agreement and related state law claims.  The Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which meant that HH was free to record other songs or records with another company during the life of the Agreement.  The Court also held that the only way HH's songs can be considered a work-for-hire owned by defendants is if HH were defendants' employees.  But the Court was unable to decide that issue on the pleadings.  As a result, the Court also could not decide HH's copyright and trademark infringement claims on the pleadings because whether defendants could have infringe requires a determination of whether HH or defendants own the marks.  The opinion also contains a very detailed analysis of Illinois choice of law issues for the related state law claims.

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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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Days Inns Worldwide, Inc. v. Lincoln Park Hotels, Inc., No. 06 C 2960, 2007 WL 551570 (N.D. Ill. Feb. 22, 2007) (Der-Yeghiayan, J.)

Judge Der-Yeghiayan granted plaintiff summary judgment on its trademark infringement and Illinois Deceptive Trade Practices Act ("IDTPA") claims, among others.  Plaintiff owns various marks relating to its Days Inn chain (the "Days Inn Marks").  Plaintiff licensed defendants Lincoln Park Hotels, Inc. and Richard Erlich (collectively "LPH") to use the Days Inn Marks in connection with the operation of a hotel in Chicago's Lincoln Park neighborhood.  In 2005, LPH sold the hotel to defendant Gold Coast Investors ("GCI") without informing plaintiff, in violation of the parties' license agreement.  GCI continued operating the hotel using the Days Inn Marks without licensing the rights to the marks from plaintiff.  As a result, plaintiff brought the instant action against defendants alleging that, among other things, GCI infringed plaintiff's Days Inn Marks and LPH contributorily infringed plaintiff's Days Inn Marks by selling the hotel to GCI with the knowledge that GCI intended to continue using the Days Inn Marks and without informing plaintiff of the sale or removing the Days Inn Marks from the hotel, as required in the parties' license agreement. 

Defendants did not challenge plaintiff's evidence on its trademark, IDTPA or other related state law claims and, it appears, did not fully respond to plaintiff's Local Rule 56.1 statement.  In fact, defendants' only defense was LPH's argument that they were not liable because the alleged infringement and related acts occurred after LPH sold the hotel to GCI.  But the Court denied this defense because LPH did not challenge plaintiff's statement of fact paragraph 37 which stated that at the time of sale LPH was aware that GCI intended to operate the hotel using the Days Inn Marks.  Paragraph 37 also stated that LPH neither removed the Days Inn Marks from the hotel themselves,  nor obligated GCI to remove them.  The Court held that LPH's actions as detailed in, at least, paragraph 37 "far surpass[ed]" the "willful blindness standard of contributory infringement.

Practice tip:  Make sure that you fully respond to each issue raised in every paragraph of your opponent's Local Rule 56.1 statements of material fact. 

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Abbott Labs. v. Andrx Pharms., Inc., No. 05 C 1490, 2007 WL 551551 (N.D. Ill. Feb. 20, 2007) (Brown, Mag. J.).*

The Court denied defendant's motion to compel production of attorney-client privileged documents pursuant to the crime-fraud exception.  Defendant argued that plaintiff's failure to disclose full results from two studies with conflicting results (for and against the applications' claims) to the USPTO, both of which were material to the claims, was both inequitable conduct and fraud.  The studies were conducted during the pendency of one application and prior to two others.  Additionally, three of the named inventors co-authored a journal article detailing the results.  And during her deposition, prosecution counsel admitted being aware of the studies during prosecution of the applications.  The Court held that the evidence warranted in camera review of selected documents from plaintiff's privilege log to determine whether there was evidence of intent.  But after its review, the Court found no direct evidence of intent to defraud the USPTO.  The Court noted that "[n]one of the documents . . . contained a 'smoking gun' or anything close to it."  Furthermore, while intent can be inferred based upon circumstantial evidence, there most be more evidence than failure to disclose to support the inference. 

* You can see more on this case, in particular, various preliminary injunction opinions here and here.

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Murphy v. Murphy, No. 04 C 3496, 2007 WL 551576 (N.D. Ill. Feb. 15, 2007) (Darrah, J.).

The Court granted summary judgment for defendants for several reasons. First, after reviewing the evidence, including a comparison of clips from each work, the Court held that no reasonable jury could find that plaintiff’s documentary is substantially similar to The PJs. Plaintiff’s movie is a series of interviews of people, while The PJs is an animated program telling fictional stories using fictional characters. And to the extent that any similarities existed, they were in non-copyrightable elements of the video. For example, the Court noted that plaintiff could not hold a copyright in someone else’s appearance or how a building looks.

Second, plaintiff had not established that defendants had access to plaintiff’s film. Plaintiff only provided his film to Winfrey via Harpo Studios and plaintiff provided no evidence that she or anyone at Harpo had sent the film to any third party. Additionally, Harpo Studios never aired the film and plaintiff could not even provide any evidence proving that Winfrey or Harpo Studios had actually received the film.

Third, defendants presented uncontradicted evidence that they conceived of the characters and concept of The PJs before plaintiff sent his film to Winfrey and Harpo Studios. While The PJs began airing on Fox in 1999, defendants submitted evidence that they had drafted characters and plots for The PJs by December 1997.

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RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, 2007 WL 495254 (N.D. Ill. Feb. 14, 2007) (Coar, J.).

The Court held that there was at least a question of fact as to whether the combination tool was maintained as a trade secret because: 1) plaintiff only disclosed the idea to defendant after receiving verbal assurances of confidentiality followed by a nondisclosure agreement; 2) plaintiff marked documents regarding the combination tool confidential; and 3) plaintiff presented evidence that both plaintiff’s and defendant’s combination tools enjoyed substantial sales upon their respective introductions to the market.

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Why Intellectual Property Cases in the Northern District of Illinois?  I expect that many people will ask that question. The answer is simple. The N.D. Ill. is and consistently has been one of the four or five most active patent courts in the country. See, e.g. Kimberly A. Moore, Forum Shopping In Patent Cases: Does Geographic Choice Affect Innovation?, 79 N.C. L. Rev. 889, 903 (2001); Federal Judicial Caseload Statistics, Tables C-2 & C-3. 

This remains true even as “new” courts, for example the E.D. Texas, have come into vogue with intellectual property owners. And experience tells me that your assigned judge in any district will likely work hard to get the law right and understand the technology. But experience also tells me that the judges of the N.D. Ill. are uniformly good judges who are experienced with all forms of intellectual property cases and are not afraid of technology. 

I plan to build this blog into a premier resource for attorneys and litigants who either routinely practice in the N.D. Ill. or find themselves in the District for the first time. I also plan for this to be an organic discussion. I will facilitate that discussion by posting about:  each intellectual property case handed down by the N.D. Ill.; developments at the N.D. Ill. such as rule changes; and practice tips, some specific to the N.D. Ill. and some more general.  I encourage you to ask questions and to debate. 

Finally, I will not blog about decisions in cases that I am involved in. For those cases, I will seek out guest bloggers.

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