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

Patent Appeal Tracer has a great post listing the patent filings for June 2008 by district.  Tracer used Pacer and "math" to come up with its list, which shows that the Northern District is fourth in patent filings for the month with 19 of 255 filings (about 85 of the total).  Those 19 filings give the Northern District 87 patent cases in the first half of 2008, well on the way to another busy year.  The top three were not surprising:

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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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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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip op. (N.D. Ill. June 20, 2007) (Moran, Sen. J.).*

Judge Moran granted defendants (collectively "eSpeed") summary judgment of noninfringement regarding eSpeed's Dual Dynamic, eSpeedometer and Modified eSpeedometer products (collectively the "Products").**  The Court held that none of the Products met the "static" limitation in the claim terms "common static price axis" and "static display of prices."  In previous opinions, the Court construed and reconstrued "common static price axis" as:

a line comprising price levels that do not change positions unless a manual re-centering command is received . . . .

(emphasis added).  The Court also construed "static display of prices" as:

a display of prices comprising price levels that do not change positions unless a manual rec-centering command is received.

(emphasis added).  Because each of the Products included either an automatic re-centering feature or "drift" re-centering (automatic re-centering in response to market changes), the Court held that the Products did not meet the "static" limitation and, therefore, did not literally infringe plaintiff Trading Technologies' ("TT") patents.  In support of its ruling, the Court cited its claim construction reconsideration opinion (discussed in the Blog's archives), where it explained that "any movement of the static price axis leaves accused technology outside the protection of [TT's] patents."

The Court also held that the Products do not infringe pursuant to the doctrine of equivalents.  With respect to the Products that used automatic re-centering, the Court held that regardless of how infrequent the re-centering might occur a holding that automatic changing of positions was equivalent to only changing positions manually would "vitiate the 'static' requirement."  The Court held that the Products that used "drift" re-centering were equivalent because there was a "mouse lock" mechanism to ensure a trader never lost a price (the purpose of the "static" requirement").

But the Court held that prosecution history estoppel barred TT from relying upon the doctrine of equivalents with respect to the "static" limitation.  During prosecution, TT amended its claims adding the requirements that the "static price axis" and the "static display of prices" could "not move."  These amendments barred use of the doctrine of equivalents.

The Court also addressed the parties' arguments with respect to the "order entry region" limitation despite the fact that it could not change the outcome of the Court's decision "[b]ecause [the Court was] convinced that regardless of the outcome, this case will surely make its way to the Federal Circuit . . . ."  The Court explained that it "would likely determine" that the Products contain an "order entry region" and grant summary judgment on that issue for TT.  But because the Products did not meet the "static" limitation, the Court granted summary judgment of noninfringement for eSpeed.

*  You can download this opinion here and you can read much more about this case and related cases in the Blog's archives.

**  The Products are not eSpeed's only accused products, so this decision does not remove eSpeed from the case.

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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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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 2007 WL 1628352 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies' ("TT") motion for a protective order to prevent the deposition of Robert Klinger, related to defendant eSpeed's inequitable conduct defense (more on this case in the Blog's archives).  The Court held that discovery is a "balancing act."  eSpeed's assertion that Klinger was involved in drafting a response to a USPTO Office Action at the center of its inequitable conduct claim outweighed TT's best argument -- that the deposition was duplicative because defendants had deposed or have scheduled the depositions of two lead outside patent prosecutors, TT's in-house patent prosecutor and the relevant patent examiner.  The Court also noted that the case is approaching the discovery close, so we may start seeing fewer discovery motions in the case and more substantive motions.

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Trading Techs. Int'l., Inc. v. GL Consultants, No. 05 C 4120, Slip Op. (N.D. Ill. May 17, 2007) (Gottschall, J.).*

Judge Gottschall denied defendant GL Trade SA's ("GL SA") motion to dismiss for lack of personal jurisdiction, with leave to refile after completion of jurisdictional discovery.  GL SA is a French company located in Paris.  GL SA does not have an office or any assets in Illinois, but it does have a subsidiary, defendant GL Americas, Inc. ("GL Americas").  GL Americas maintains a regional office in Chicago.  The Court noted that despite three rounds of briefing on jurisdiction, neither party "provided anything of substance to the court."  Plaintiff Trading Technologies ("TT") treated GL SA's subsidiary GL Americas as GL SA, and had not submitted evidence of GL SA's specific contacts with Illinois.  GL SA submitted several declarations, but none sufficiently clarified that GL SA did not have minimum contacts with Illinois.  As a result, the Court held that it lacked sufficient evidence to rule upon the motion, and granted TT's motion for jurisdictional discovery.

After ruling on the motions, the Court offered its jurisdictional analysis as a "framework" for the issues the parties should address through the discovery process.  First, the Court pointed out that neither party had detailed GL SA's specific contacts with Illinois.  Neither party identified which software products were GL SA products and which were GL Americas products.  Furthermore, neither party identified any sales of GL SA or GL Americas products to Illinois consumers.  The Court noted that if none of the GL SA products at issue were sold in Illinois, the Court would not have specific jurisdiction over GL SA.  And if there were sales to Illinois consumers, discovery was still required to show whether GL SA had a purpose and intent to serve the Illinois market.  Finally, the Court noted that TT must make its case for the Court's jurisdiction over GL SA based upon GL SA's actions, without imputing GL America's actions or contacts to GL SA.

*More analysis of opinions from this case and the various related TT cases, can be found in the Blog's archives. 

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies' ("TT") motion to compel additional production from third party Chicago Mercantile Exchange ("CME").  TT served CME with a subpoena seeking, among other things, anything referring or relating to potential prior art to the patents at issue and communications between CME and any other entity regarding the patents at issue, including any joint defense agreement between CME and such parties.  After TT filed the motion to compel, CME produced thousands of pages, including what it stated were all documents in its possession regarding possible prior art.  Because all prior art documents had been produced, the Court denied TT's motion to compel additional prior art-related documents.

The Court also denied TT's motion to the extent it sought communications regarding the possible prior art.  First, the Court considered any communications CME might have had with defendants in the currently pending cases.  The Court referred to its May 1, 2007, order which required defendants to produce a list of all members in their joint defense agreement (that opinion and order, as well as numerous other opinions from this and its related cases, are in the Blog's archives).  The Court held that defendants' list would allow TT to discover whether CME was involved in a joint defense and that no further discovery from CME was necessary. 

Second, the Court considered CME's communications, including potential joint defense agreements, with any parties not involved in TT's pending suits.  The Court held that the common interest doctrine could attach to communications even before the filing of a suit, so long as the parties anticipated litigation.  Furthermore, the Court held that regardless of whether CME's communications with other third parties were part of a joint defense, they were not discoverable because they were "irrelevant" to this case.  The Court explained that while relevance is broadly defined, it does have boundaries and TT's motion ran "up against such a boundary."

*  Because Westlaw has not published this opinion yet, here is a copy of Judge Moran's original, signed opinion.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No. 05 C 4120, (N.D. Ill. May 16, 2007) (Moran, Sen. J.).

Judge Moran granted in part and denied in part plaintiff Trading Technologies' ("TT") motion to compel additional production from defendants GL Consultants, Inc. and GL Trade SA (collectively "GL").  The Court required GL to update certain interrogatory responses and to produce documents based upon an earlier priority date that GL had argued for, as opposed to stopping at the later priorit date alleged by TT.  The Court also required GL to provide TT access to original source code and certain electronic archives, without regard to whether TT had provided GL similar access.  Finally, the Court denied TT's request to lower the confidentiality designation of the source code for GL's "GL Tradepad" software.  But what is most interesting about the Court's opinion is its reminder to the parties about how the Court expects them to conduct discovery:

At the outset, we reiterate some of the points regarding discovery that we have stressed throughout this complicated and contentious litigation. First, parties should err on the side of over-production; relevance should be argued sparingly. Second, counsel are officers of the court and their word is generally sufficient. Third, there will always be additional persons to interview, additional documents to discover, and alleged prior art to be found; we must, however, put an end to discovery at some point. . . . With such guidelines in mind, we address the current dispute.

* Because Westlaw has not published this opinion yet, here is a copy of Judge Moran's original, signed opinion.

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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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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 05 C 1079, 05 C 4088, 05 C 4120, 05 C 4811 & 05 C 5164, 2007 WL 1302765 (N.D. Ill. May 1, 2007) (Moran, Sen. J.).

Judge Moran granted in part and denied in part plaintiff Trading Technologies' ("TT") motion to compel production of defendants' communications between themselves (more on this case in the Blog's archives).  Defendants asserted claims of attorney-client and work product privileges regarding various communications and information exchanged as part of a joint defense agreement among, at least, the various defendants and DJ-plaintiff (collectively "defendants") in the patent suits regarding TT's patents.  The Court explained that the joint defense privilege protects communications and exchange of information between parties that have expressly decided to cooperate in a litigation -- with or without a written agreement.  The Court held that defendants had expressed a sufficient intent to cooperate in their respective litigations against TT and, therefore, held that defendants need not produce communications made in relation to their joint defense.  The Court required that defendants produce any written joint defense agreement or, in the absence of a written agreement, the identities of all members of the joint defense.  The Court further held that third parties need not be identified to the extent that their identities are protected as work product, but that third parties should be identified if defendants' communications with them are allegedly protected by attorney-client privilege.  The Court also required that defendants produce all prior art in their possession, regardless of how it was located.  And finally, the Court noted that "it must rely on the integrity of counsel to determine what is and is not privileged."  As a result, the Court required that defendants produce "any communications not protected by a legitimate privilege . . . ."

You can download the opinion here.

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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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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