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

Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 9845, Slip. Op. (N.D. Ill. Sep. 18, 2009) (Guzman, J.)

Judge Guzman granted defendant’s motion for summary judgment of obviousness in this patent dispute regarding a retractable tether alarm system. The Court held that the asserted prior art ‘805 patent was analogous prior art based upon the Graham test. The inventor of the patent-in-suit was attempting to solve the problem of telephone wires “laying all over” in stores. And the ‘805 patent, to a retractable reel assembly for telephone wires would have been relevant to the inventory analysis. The Court also noted that prior art need not be in the same field to be analogous. The Court held that the ‘805 patent combined with the ‘098 patent’s alarm triggering and sensing system taught every element of the patent-in-suit for two reasons:

1. Plaintiff’s denial of defendant’s statement of material fact that the prior art ‘805 and ‘098 patents taught all elements was denied without citing any factual proof. Such a denial is equivalent to an admission.
    
2. A review of the ‘805 and ‘098 patents showed each element of the patent-in-suit, only a combination of the ‘098 patent’s alarm system with ‘805 patent’s the retractable reel was required.

The Court then held that combining the ‘805 patent’s retractable telephone cord reel with the ‘098 patent’s alarm triggering and sensing system rendered the patent-in-suit obvious. Plaintiff’s expert declaration stating that neither the prior art nor the security field generally evidenced any motivation to combine the prior art patents, did not persuade the Court. The expert’s statements were conclusory and KSR expressly stated that prior art need not be in the same field as the patent-in-suit.

Finally, plaintiff’s secondary consideration evidence regarding commercial success was not sufficient. Plaintiff offered no proof that its commercial success flowed from the merits of its invention.

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Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, Slip Op. (N.D. Ill. Jan. 9, 2009) (Cox, Mag. J.).*

Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony following the reasoning of a previous opinion in a related case about the same expert -- click here to read about that opinion in the Blog's archives. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.

* Click here for more on this case and related cases in the Blog’s archives. Also, note that the Court continues the progressive use of footnote citation.

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Brian Higgins at the Maryland IP Law Blog posted an analysis of significant willfulness decisions post-In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007) -- click here for the post and click here for a subsequent post discussing Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).  Of the eleven decisions Higgins identified, three were Northern District decisions and one was a Federal Circuit decision analyzing a Northern District case.  Here are my posts on the Northern District decisions:

• Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287503 (N.D. Ill. Dec. 4, 2007) (Coar, J.).
  
• Se-Kure Controls, Inc v. Diam USA, Inc.
  
• Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Jan. 3, 2007) (Moran, Sen. J.).
  

As you can infer from the relatively small number of cases identified by Higgins, there remains a lot of law to be written about Seagate before the standard is well settled.  I suspect that within 18-24 months there will be a relatively large body of law, including numerous Federal Circuit decisions exploring the new standard's outlines.  Until then, patent litigants will face a degree of uncertainty regarding willfulness.  Of course, defendants will generally be glad to have some uncertainty in exchange for plaintiffs's higher willfulness hurdle.

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Se-Kure Controls, Inc. v. Vanguard Prods. Group Inc., No. 02 C 3767, 2008 WL 169054 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*

Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.

* Click here for more on this case and related cases in the Blog’s archives. Also, note that this opinion also uses footnote citation.

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