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

Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., No. 05 C 3684, 2008 WL 839993 (N.D. Ill. Mar. 27, 2008) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendants' (collectively "Limited Brands") motion for reconsideration regarding the Court's claim construction opinion and its summary judgment opinions of infringement, validity and damages – click here to read more about those opinions in the Blog's archives. The Court previously construed the claims of plaintiff Ball Aerosol's ("BASC") patent covers a candle tine. The Court granted BASC summary judgment of infringement and validity, pre-KSR. When KSR revised the obviousness standard, the Court sua sponte ordered supplemental briefing regarding obviousness in light of KSR. Based upon that briefing, the Court again granted summary judgment of validity. The Court then granted BASC summary judgment on damages awarding it 20% royalties and finding Limited Brand's infringement willful.

The Court held that its original claim construction, validity and infringement holdings were correct and that Limited Brands had been given ample opportunities to defend itself. The Court also denied Limited Brands' argument that reasonable royalties could not be decided on summary judgment. Limited Brands' Seventh Amendment right to a jury trial regarding damages had not been violated. There is no right to a jury without a material question of fact.

The Court also held that while its initial grant of summary judgment of willfulness was made before the Federal Circuits' decision In Re Seagate, the undisputed facts also warranted summary judgment of willfulness pursuant to Seagate's objective recklessness standard. Limited Brands was aware of BASC's patent both before the suit was filed and before it began making the infringing candle tin. In fact, Limited Brands had extensive discussions with BASC regarding BASC's specifications for candle tins. Furthermore, Limited Brand's main defense – advice of counsel – was negated because Limited Brands did not disclose its opinion by the Court's deadline for doing so.

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Easypower Corp. v. Alden Corp., __ F. Supp.2d __, 2007 WL 4191837 (N.D.Ill. Nov. 21, 2007) (Denlow, Mag. J.).

Judge Denlow denied defendant Alden Corp.’s (“Alden”) motion for reconsideration of the Court’s construction of “acute angle relative to the axis.” The Court’s construction required an angle less than 90°, and further required that if there were two or more angles, any two angles together be greater than 90°. Alden argued that the requirement regarding two or more angles was improperly read into the claim without support in the specification. But the Court held that the limitation was required based upon the clear language of the specification. Additionally, the Court noted that the parties were given ample opportunities to argue the issue, both on the papers and during the Markman hearing.

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Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7713, 2007 WL 1610449 (N.D. Ill. Mar. 21, 2007) (Moran, J.).*

Judge Moran granted defendant Siebert’s motion for reconsideration of the Court’s earlier claim construction ruling.  Based upon it reconsidered construction, the Court granted Siebert summary judgment of noninfringement of plaintiff Baldwin Graphic Systems’ (“Baldwin”) patent claiming printing press cleaning components. The Court originally construed the claims at issue and then denied Siebert’s first motion for reconsideration in 2005 -- the Court held that Siebert's 2005 motion for reconsideration simply repackaged arguments the Court considered in its original claim construction opinion. At that time the Court construed “reduced air content cleaning fabric” as not excluding fabric having its air content reduced by winding or rewinding the fabric on to a roll. In its current motion, Siebert argued that “reduced air content cleaning fabric” includes only fabric having its air content reduced by mechanical means before being wound on to a roll. The Court acknowledged that this was a new argument and, therefore, considered it.  The Court held that the claim language itself was not helpful in construing the term, but the language of the dependent claims combined with the patent’s specification made clear that “reduced air content cleaning fabric” required that the fabric have its air content reduced by “some method” before being wound on to a roll. Because there was no evidence that Siebert’s fabric underwent no mechanical process for removing air prior to being wound on to a roll, the Court granted Siebert summary judgment of noninfringement.

This opinion is especially remarkable because, while I do not have statistics confirming this, motions for reconsideration do not have a high success rate.  And it is even more rare for a second motion for reconsideration of the same opinion to succeed.

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

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

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

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

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

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

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

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

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