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

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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Rowe Int'l. Corp. v. Ecast, Inc., __ F. Supp.2d __, 2007 WL 831772 (N.D. Ill. Mar. 19, 2007) (Kennelly, J.).

Judge Kennelly held that plaintiff Arachnid waived its privilege as to a limited scope of information and held that Arachnid's related uses of the information did not rise to the level of the crime-fraud exception, even if they may have been inequitable conduct.  Arachnid filed a motion seeking the return of three inadvertently produced, privileged "patent reports."  Defendants filed a cross-motion to compel production of privileged materials arguing that Arachnid waived the privilege as to the three documents and that the crime-fraud exception destroyed the privilege to the extent it was not waived.  The Court agreed that the patent reports were inadvertently produced, but still held the privilege was waived on a limited scope of information.  In 1999, a former Arachnid employee testified that he learned from Arachnid's attorneys that "the only way we would receive [one of] the patent[s-in-suit] was if we included that information."  While a former employee cannot waive the privilege, Arachnid's attorneys attended the deposition in question and failed to object to the question or the answer.  Additionally, Arachnid later turned the transcript over to the PTO during prosecution of a subsequent application and to defendants during production in the instant case.  These actions combined to waive the privilege as to the specific information discussed by the ex-employee, the inclusion of figure 2 in the patent.

The Court then held that the crime-fraud exception did not apply.  Defendants argued that Arachnid's counsel's statements to the PTO during examination that a prior art reference identified as Sidi was "fundamentally different" from the examined invention was fraudulent because the inadvertently disclosed patent reports showed that counsel believed the Sidi reference anticipated some or all of Arachnid's application.  But the Court held that hold attorney argument to that high a standard would chill legal representation.  For example, the Court noted that defendants' requested standard would prevent a criminal defense attorney from warning his client that he would surely be convicted, but then arguing to the jury that the government had not proven its case beyond a reasonable doubt.

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