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

Nat'l. Spiritual Assembly of the Baha'is of the U.S.A. Under the Hereditary Guardianship, Inc. v. Nat'l. Spiritual Assembly of the Baha'is of the U.S.A., Inc., ___ F.Supp.2d ___, 2008 WL 1839078 (N.D. Ill. Apr. 23, 2008) (St. Eve, J.).

Judge St. Eve denied defendant the National Spiritual Assembly of the Baha'is of the United States' (the "NSA") motion to hold non-parties Franklin D. Schlatter, Joel B. Marangella, the Provisional National Baha'i Council ("PNBC"), the Second International Baha'I Council (d/b/a Baha'is Under the Provisions of the Covenant)("SIBC"), and the Baha'i Publishers Under the Provisions of the Covenant ("BPUPC")(collectively the "Alleged Contemnors") in contempt for violating the 1966 permanent injunction against plaintiff The National Spiritual Assembly of the Baha'is of the United States Under the Hereditary Guardianship, Inc.'s (the "NSA-UHG" or "UHG") use of the NSA's trademarks. Shortly after the injunction was entered, the NSA-UHG dissolved. NSA argued that its former officers, Schlatter and Marangella, remained bound by the injunction. But the Court held that officers or agents of an entity that are not personally named in an injunction are only bound while acting for the named entity or a subsequent entity formed to avoid the injunction. Schlatter's and Marangella's alleged contempt, therefore, is dependent on their new entity PNBC's status.

The Court held that PNBC was not in privity with NSA-UHG. NSA-UHG followed the directives of its spiritual leader, Mason Remey. PNBC, however, followed the directives of its spiritual leader Marangella, not Remey. Furthermore, Marangella specifically instructed PNBC and its members not to violate the injunction. PNBC, Schlatter and Marangella, therefore, were not in privity with NSA-UHG and not bound by the injunction.

Similarly, non-parties Jensen, SIBC and BPGPC were not in privity with NSA-UGH, even though they admitted to being successors-in-interest to Remey. Jensen disassociated themselves from the NSA-UGH and Remey several years before the injunction was issued.

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e360Insight, LLC v. Comcast Corp., No. 08 C 340, Slip Op. (N.D. Ill. Apr. 10, 2008) (Zagel, J.).

Judge Zagel granted defendant Comcast judgment on the pleadings, dismissing plaintiff e360Insight’s ("e360") Computer Fraud and Abuse Act, First Amendment, and related state law claims. e360, an Internet marketer and accused email spammer, alleged that Comcast harmed e360 by unjustifiably blocking all or most of e360’s emails from Comcast’s customer email accounts. Comcast stopped e360's emails with filtering software that identified and stopped emails from e360 addresses.

Comcast argued that the Good Samaritan clause of the Communications Decency Act, 47 U.S.C. § 230(c)(2), provided Comcast absolute immunity from e360's claims because Comcast voluntarily filtered e360's emails to restrict access to what Comcast believed was objectionable content. The Court held that the Good Samaritan clause provided absolute immunity for ISPs that filtered for objectionable material. The Court also held that Judge St. Eve's and the Seventh Circuit's recent Chicago Lawyers' Committee v. Craigslist opinions – click here for more on those cases – were not applicable. Those opinions limited the clause's protection for ISPs that chose not to filter. Because Comcast filtered, it enjoyed absolute protection. The Court also held that e360's compliance with Congress's spam prevention laws, 15 U.S.C. §§ 7701-13 (Controlling the Assault of Non-Solicited Pornography and Marketing Act of 2003 ("CAN-SPAM") was irrelevant. Regardless of compliance with CAN-SPAM, the Good Samaritan clause still allowed the ISP to make a good faith judgment that e360's emails were objectionable. And e360 did not sufficiently plead Comcast's lack of good faith in determining that the emails were objectionable.

Eric Goldman at the Technology & Marketing Law Blog has a good post on this case and several other district court cases considering § 230(c) defenses. – click here for his post.

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I recently posted that the Seventh Circuit upheld Judge St. Eve's decision in CLC v. Craigslist. In those decisions, Craigslist was found not liable for allegedly discriminatory housing want ads posted on its site because of the Good Samaritan clause of § 230 of the Communications Decency Act. University of Chicago Prof. Randy Picker authored a post at the University of Chicago Law School Facility Blog arguing that the Good Samaritan clause, which exempts ISPs from any filtering requirements, significantly disadvantages Craigslist's bricks and mortar competitor – newspapers. Newspapers, which are in dire financial straits, are required to filter discriminating adds.

Picker argues that Craigslist (or ISPs more broadly) and newspapers should be treated equally – either both or neither should have to filter. As a newspaper aficionado, this makes a lot of sense to me. The problem is that either extreme is problematic. Filtering, at least tailored filtering to avoid a large percentage of false positives, is impractical for ISPs because of the high volume of content and small work force. On the other hand, not filtering likely harms the Fair Housing Act. But there maybe a viable mid-ground. Both ISPs and newspapers could be exempted from filtering and a take down provision could be created, similar to the DMCA. Someone who finds a discriminatory ad could send a take down notice, causing the ISP or newspaper to remove the ad. The advertiser could then challenge the notice. A take down provision would allow entities like the CLC to protect the ideals of the Fair Housing Act. And it would allow newspapers and ISPs to compete on an even playing field.

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Tomorrow I will be back to case analysis, but there is some Northern District news and some excellent IP and litigation blog posts worth reading, here they are:

• Ninth Annual Pro Bono and Public Interest Awards -- The Northern District and the Federal Bar Association are seeking nominations for excellence in pro bono and public interest work. Nominations should be based upon work performed in civil cases before the Northern District which are no longer pending. Send nominations by March 28 to:

Amy Rettberg, Executive Law Clerk
Email: amy_rettberg@ilnd.uscourts.gov
Chambers of the Chief Judge James F. Holderman
219 South Dearborn Street, Suite 2548
Chicago, Illinois 60604

• Patent Reform is Moving Forward -- The Senate is preparing to vote on the Patent Reform Act after its spring recess (yes, it is spring already in DC).  Here is some additional coverage of the Act's status:

271 Patent Blog -- looking at the latest amendments to the Act.

Maryland Intellectual Property Blog -- looking at the latest amendments and questioning whether proponents have the sixty votes necessary for cloture, thereby avoiding a filibuster.

Patent Docs -- taking sides, but asking you to call your Senators regardless of which side you take.

• Check out the newest entry to Chicago's law blog scene, the Lean & Mean Litigation Blog.  It is not IP-focused, but it is an interesting read for any commercial litigator or litigant.
  
• William Patry at Patry on Copyright has an interesting post about the difficulties of serving corporate entities based upon a District of the District of Columbia case involving a pro se plaintiff.  The best advice, of course, is to hire counsel because if you do not get the party served properly, you have no case.
  
• The Seventh Circuit affirmed Judge St. Eve's ground breaking opinion in the CLC v. Craigslist case.  The Seventh Circuit held that an ISP is exempt from cases based upon user content when the case attempts to treat the ISP as a publisher of the content.  This is considerably narrower than most of the other circuits, which have held that Section 230 exempts ISPs from essentially all suits based upon user content.  For more coverage, check out the WSJ Law Blog (which erroneously elevates Judge St. Eve to the Seventh Circuit), Internet Cases, and the Technology & Marketing Law Blog (very detailed analysis of Judge Easterbrook's opinion).
  

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The Northern District has posted the Seventh Circuit's new proposed pattern jury instructions for patent cases on its website -- click here for a copy.  The instructions include all of the recent revisions to the patent laws, including KSR and Seagate. The Seventh Circuit requested comments on the instructions be sent to:

Chief Judge Robert L. Miller, Jr.
robert_miller@innd.uscourts.gov
325 Robert A. Grant Federal Building
204 S. Main St.
South Bend, IN 46601

Comments will be accepted until April 1st.  Also, below is my list of IP jury instructions by Northern District judge, I am sure we will start to see some new ones soon in light of the turbulent 18 months patent law has had:

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The Chicago Tribune has set up a live blog, written by Bob Secter and Jeff Coen, of the government's criminal case against Tony Rezko.  The blog promises daily, "gavel-to-gavel" coverage of the Rezko trial -- click here for background on the case from the Tribune.  This case does not have an intellectual property angle that I am aware of, but it provides an excellent view of a trial as seen through the eyes of non-lawyers, a very important perspective for litigators.  Additionally, Judge St. Eve gets at least her share of IP cases -- click here for discussion of Judge St. Eve's opinions in the Blog's archives.*

Here is some of the Tribune's coverage of the voir dire from yesterday, largely performed by the Court:

Another potential juror, No. 475, teaches cooking classes, often on Fridays. St. Eve sounded as if she was ready to work with the cooking teacher to accommodate her schedule. "If we structured the trial so that it would go Mondays through Thursday and not have trial on Fridays, the days you have cooking classes, would that be good for you?" the judge asked.

Some of St. Eve's questions were more chatty than legal. The cooking teacher, for example, was asked what was on the menu at her next class. The answer: Beef Bourguignon and mashed potatoes.

Another juror was asked where she liked to go snowboarding. Still another was asked about her desire to learn Spanish. "Have you learned any words yet?" the judge asked.

"Just the bad things," the woman responded.

St. Eve also complimented No. 475 on an answer the prospective juror gave to a presubmitted question about whether people who contribute to a campaign should expect something in return. "A thank-you would be nice," the woman wrote.

I will keep an eye on the Tribune's blog and will highlight other especially interesting items from it.

*  Judge St. Eve also gets her share of high profile cases.  She must be tired of the publicity after having the Conrad Black trial and now the Rezko trial within twelve months of each other.

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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 2007-1243, 1244, Slip Op. (Fed. Cir. Jan. 7, 2008).*

The Federal Circuit affirmed the Northern District jury’s obviousness verdict, and Judge St. Eve’s denial of defendant’s inequitable conduct claim. But the Federal Circuit reversed the Northern District’s construction of “power conversion circuit” and remanded for further proceedings and, perhaps, a new trial.** The Federal Circuit held that the Northern District relied largely upon claim differentiation for its construction and, in the process, gave the patent scope beyond the disclosed invention.

The Federal Circuit held that the Northern District’s pre-KSR obviousness jury instruction was not reversible because defendants identified no evidence in the record that supported an obviousness finding even under the broader KSR standard.

* Click here for extensive coverage of this case in the Blog’s archives.

**  The Court scheduled a status conference early next week.  We may learn at that conference whether a new trial is being scheduled or whether summary judgment will be briefed or a settlement conference scheduled first.

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Brian Higgins's Maryland IP Law Blog post about the progeny of In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), inspired me to do follow up posts identifying Northern District cases discussing recent major IP decisions.  The first looks at cases discussing eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).  Here they are:*

• Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3446144 (N.D. Ill. Nov. 29, 2006) (St. Eve, J.). -- Granting a permanent injunction in a case between competitors.
  
• Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1017751 (N.D. Ill. Mar. 30, 2007) (Moran, J.). -- Granting a preliminary injunction in a case between competitors and holding that in eBay the Supreme Court limited the automatic presumption of irreparable harm based upon infringement.

For further analysis of post-eBay decisions, check out my post about Michael Smith's analysis (click here) and my post discussing Ray Nimmer's thoughts on the potential for compulsory licensing regimes because of eBay (click here).

*  A brief note on methodology:  this was not a thorough study and does not include cases that granted or denied injunctions without discussion.  For a more comprehensive list of decisions nationwide (updated through the end of 2007) go to the Fire of Genius.

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Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Viachem, No. 07 C 4232, Min. Order (N.D. Ill. Nov. 21, 2007) (St. Eve, J.).

Judge St. Eve granted in part plaintiff’s motion to compel various discovery. The Court ordered defendants to produce various once-privileged documents disclosed to unidentified customers pursuant to an alleged common interest privilege. The Court acknowledged that common interest could protect such disclosures. But defendants failed to identify the specific customers that were shown documents, which documents were disclosed or when the disclosures occurred. On that record, the Court could not find that defendants had maintained the privilege. 

The Court also ordered defendants to update their privilege log to identify any attorneys on the log. And the Court ordered the parties to meet and confer regarding uncrystalized disputes over defendants’ answers to some interrogatories.

Practice Tip: It is the rare judge that appreciates discovery motions, let alone motions where the parties did not identify what the actual issues were. It is very important to follow both the letter and the spirit of Local Rule 37.2 meet and confers.

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Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Viachem, No. 07 C 4232, Min. Order (N.D. Ill. Nov. 27, 2007) (St. Eve, J.).

Judge St. Eve granted in part plaintiff’s Fed. R. Civ. P. 12(e) motion for a more definite statement regarding defendant The Ingredient House’s (“TIH”) affirmative defenses and counterclaim. The Court ordered TIH to amend its patent misuse affirmative defense to provide factual allegations outlining the alleged misuse. TIH’s original defense simply stated that plaintiff’s claims were “barred by patent misuse.” The Court also ordered TIH to amend “incongruous statements” in its pleading that appeared to be clerical errors.

The Court denied plaintiff’s motion as to TIH’s defamation counterclaim. TIH was not required to plead which state’s law governed TIH’s defamation claim.

Practice Tip: Defendants frequently plead affirmative defenses with an unsupported statement of the defense. The better practice, and the one that avoids Rule 12(e) motions, is to plead at least the basic facts underlying the defense.

 

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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, Min. Order (N.D. Ill. Jul. 13, 2007) (Manning, J.).*

In the first Northern District opinion to address the Supreme Court’s MedImmune declaratory judgment standard, Judge Manning denied plaintiff Black & Decker’s (“B&D”) motion to dismiss defendant Robert Bosch Tool Corp.’s ("Bosch") declaratory judgment counterclaims for lack of subject matter jurisdiction. In a prior case between the parties before Judge St. Eve (numerous prior opinions are discussed in the Blog's archives), B&D asserted that two models of Bosch's Power Box radio (the "Old Power Box") infringed B&D's two patents (the "Old Patents").  Shortly before Judge St. Eve held trial in the previous case, B&D brought this suit against Bosch asserting that Bosch's new model of its Power Box radio (the "New Power Box") infringed a third patent (the "New Patent").  At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents.  Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial.  After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.

Shortly after Judge St. Eve excluded the New Power Box from her trial, B&D amended the complaint in this case to allege infringement of the Old Patents.  In response, Bosch added declaratory judgment counterclaims regarding a third set of B&D patents (the “Smith patents”) which B&D had never asserted against Bosch. Bosch argued that an actual controversy existed because of the history of litigation between the parties and B&D’s prior testimony that it placed a high value on the exclusivity its patents provided in the workplace radio marketspace. B&D countered that, despite filing two suits against Bosch, B&D had never asserted the Smith patents against Bosch, or any other party. B&D also argued that St. Eve had already dismissed similar counterclaims in the last case for lack of actual controversy. But St. Eve’s decision was based upon the Federal Circuit’s old reasonable apprehension test, which the Supreme Court’s MedImmune decision overruled. Looking at “all of the circumstances,” as required by MedImmune, the Court held that an actual controversy existed. Among other reasons, the Court noted that the wide-ranging dispute between the parties regarding the workplace radios, suggested that it was in the parties’ best interests to resolve any dispute regarding the Smith patents.

*  You can read a copy of the Minute Order here.

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Ace v. Marn, No. 06 C 5335, 2007 WL 1541747 (N.D. Ill. Apr. 17, 2007) (St. Eve, J.).

Judge St. Eve granted in part and denied in part plaintiff/counterdefendant Ace Hardware Corp.'s ("Ace") Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants/counter-plaintiffs' (collectively "Marn") counterclaims.  The Court denied the motion as to Marn's breach of contract claim and dismissed Marn's fraud and tortious interference claims.  Ace and Marn entered an agreement (the "Agreement") allowing Marn the right to use certain Ace trademarks and to purchase product for resale from Ace.  Marn alleged that Ace and its representatives breached the Agreement, made numerous misrepresentations leading up to the signing of the Agreement and failed to provide promised inventory.  Ace argued that Marn's breach of contract claim should be dismissed because it did not identify a specific provision of the Agreement that was breached, citing several Northern District cases.  But noted that each of Marn's cases came down before the Seventh Circuit's decision in Kolupa v. Roselle Park Dist., 438 F.3d 713, (7th Cir. 2006).  In Kolupa the Seventh Circuit explained the Rule 8(a)(2) requirements:

[i]t is enough to name the plaintiff and the defendant, state the nature of the grievance, and give a few tidbits (such as the date) that will let the defendant investigate. . . .  Any district judge (for that matter, any defendant) tempted to write "this complaint is deficient because it does not contain ..." should stop and think:  What rule of law requires a complaint to contain that allegation?  Any decision declaring "this complaint is deficient because it does not allege X" is a candidate for summary reversal, unless X is on the list in Fed. R. Civ. P. 9(b).

Kolupa at 714-15 (emphasis in original).  Based upon the Kolupa decision the Court held that Marn was not required to cite a specific breached section of the Agreement.

The Court dismissed, with leave to amend, Marn's fraud claim because it failed to identify the specific Ace individuals that allegedly made the material false statements or where the statements were made.  The Court dismissed Marn's tortious interference claim because Ace is a party to the Agreement and, therefore, cannot tortiously interfere with the Agreement.

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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, 2007 WL 1232089 (N.D. Ill. Apr. 25, 2007) (Manning, J.).

Judge Manning granted defendant's, Robert Bosch Tool Corp. ("Bosch") Fed. R. Civ. P. 12(c) motion for judgment on the pleadings, holding that plaintiff's, Black & Decker ("B&D"), patent infringement claims against Bosch's new product regarding B&D's previously asserted patents were barred by res judicata.  In the prior case before Judge St. Eve (numerous prior opinions are discussed in the Blog's archives), B&D asserted that two models of Bosch's Power Box radio (the "Old Power Box") infringed B&D's two patents (the "Old Patents").  Shortly before trial before Judge St. Eve, B&D brought the instant suit against Bosch asserting that Bosch's new model of its Power Box radio (the "New Power Box") infringed a third patent (the "New Patent").  At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents.  Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial.  After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.

Shortly after Judge St. Eve excluded the New Power Box from her trial, B&D amended the complaint in the instant case to allege infringement of the Old Patents.  Bosch then argued that res judicata barred B&D's claims based upon the Old Patents.  Judge Manning held that res judicata applied because the trial before Judge St. Eve resulted in a final verdict, the parties to that case were identical to those in the instant case and the claims had "identity" with each other.  Judge Manning noted that B&D admitted that the causes of action had "identity"  when it sought to reassign the instant case to Judge St. Eve and stated that:  both cases involve the same patents; both cases involve the same product, the Power Box; both cases involve the same facts; and both cases involve the same issues of law. 

B&D argued res judicata should not apply because Bosch had sought to have the New Power Box claims litigated in a separate case.  But Judge Manning denied the argument, noting that Bosch had argued that B&D should not be able to bring its claims late in the suit before Judge St. Eve and also that res judicata should preclude any future B&D suit based upon the New Power Box.  Additionally, Judge Manning held that B&D could have litigated the New Power Box in Judge St. Eve's case because B&D was aware of the product throughout the suit and that at least some sample products had been made by or for Bosch. 

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As I pointed out early this week, the Conrad Black trial has little or no intersection with IP, but I could not resist posting about Neil Steinberg's column in yesterday's Chicago Sun-Times.  Steinberg spent a day observing the Black trial and provided his impressions of the jury system and Judge St. Eve.  Two of his observations were particularly interesting.  First, he found the trial very boring.  As IP lawyers and particularly patent lawyers, this is something we have to struggle with.  Making technology analysis and damages interesting is a difficult job and keeping jurors who only see a portion of the litigation proceedings awake and attentive can be difficult.

Second, Steinberg notes that "pay all that money to lawyers for a reason."  I would like to believe he meant because of the immense skill involved, but I am afraid it is because of how boring and complex he found the trial.

Finally, my wife, who clerked for Judge St. Eve, assures me that I will not suffer Steinberg's potato peeler fate when I say that while Judge St. Eve is very attractive, her most important judicial attributes are her intellect and her kind, but strong command of her courtroom.  Here is a brief quote from Steinberg's column:

"Oh dear." Spoken by a pal in Judge Amy St. Eve's courtroom. There is not enough tedium in our daily lives, apparently, so we are visiting a trial revolving around complex issues of accountancy.

I wish the limits of journalistic candor allowed me to explain the meaning of that "oh dear," uttered as the jury returns to the courtroom after lunch.

The contrast could not be more stark, between Lord Conrad Black, the grandiose publishing patrician, in his deep blue, subtly pinstriped bespoke suit, and the floral burst of middle American casualness sitting heavily in judgment. It was as if a line waiting for corn dogs and cotton candy at Great America had somehow blundered into a state funeral.

Sitting in court, I scour the language, searching for terms that adequately describe the colors the jury are wearing. Canary yellow. Soft bubble gum pink. Bright blue. Muddy teal. Electric poached salmon. Two women wear an identical shade of aircraft-landing paddle green.

And those are the easy ones. One lady has on what I finally decide is tiger print. A man sports what appears to be big polka dots on olive green.

A trial is also going on. The testimony centers around "Generally Accepted Accounting Standards" and overhead projections with titles such as "Statement of Financial Accounting Standards No. 57."

And hell is typically envisioned with flames. ...

After an hour I am ready to chew off my leg to escape. I would here launch into a tribute to the pixie good looks of Judge St. Eve -- I'm sure that the occasional glance in her direction is all that keeps some forced to be here from slipping into madness -- were it not for the certainty that my wife would calmly set down the paper, reach over to the kitchen drawer, remove a potato peeler and then skin me alive with it.

Three thoughts, which came as I fled the courtroom, a drowning man breaking the surface and filling his lungs with sweet, sweet air.

1) The cynical assumption is that these working-class Americans will throw Black into prison for the crime of being rich. Perhaps true, perhaps a snooty, unfair insult to the average American, considering that we managed, in our waddling, oafish way, to invent computers, land on the moon and kick the Germans out of France.

2) They pay all that money to lawyers for a reason.

3) Whatever you are doing today, even if you are kneeling in muck, gathering crushed aluminum cans and tossing them into a shopping cart to sell later, count your blessings. You could be in court.

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Michael Sneed's Tuesday Chicago Sun-Times column included an entry entitled "Ring.  Ring."about the Northern District.  She rarely covers Northern District happenings, but the Conrad Black trial is major international news.  Sneed reports that during the Black trial, an attorney's cell phone "erupted" with a ring tone from The Exorcist.  The always gracious Judge St. Eve reportedly responded to the ring, saying "I hope you didn't program that ring just for this trial." 

While the Black trial is not intellectual property-related, I am blogging about Sneed's piece because it highlights an important practice tip:  If you cannot turn off your phone when you enter a courtroom, at least put it on vibrate.  Everyone has made the mistake of forgetting to silence your phone (mine was in church, very embarrassing), but to avoid it altogether leave your phone on vibrate permanently.

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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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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883286 (N.D. Ill. Dec. 18, 2006) (St. Eve, J.).*

Judge St. Eve granted judgment as a matter of law for plaintiff, holding that the jury's findings of invalidity and obviousness were not supported by legally sufficient evidence.  At trial, defendant introduced an article describing a prior art radio as 102(b) prior art using its expert.  But the expert testified that one of the claim elements was missing.  Defendant argued that pictures of the radio that were not used in the article, showed the device.  But the Court held that defendant could not piece together the article, testimony and pictures to prove that the article disclosed all elements of the claimed invention.  The jury's obviousness finding was not supported by legally sufficient evidence because defendant did not present clear and convincing evidence of a motivation to combine its obviousness prior art references.

* You can find much more on this case in the Blog's archives.

 

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2007 WL 108412 (N.D. Ill. Jan 12, 2007) (St. Eve, J.).

Judge St. Eve denied defendant's motion for a new trial, altered judgment or judgment as a matter of law in this patent dispute (more on this case and the injunction in the Blog's archives).  Defendant first argued that the jury's infringement findings on various claim elements were not supported by the facts.  The Court denied each argument, citing facts that supported the jury's infringement findings.  Defendant also argued that the jury's verdict that claim 1 of USPN 6,788,925 (the "'925 patent") was valid while the almost identical claim 2 of the '925 patent was invalid was inconsistent.  Defendant sought an altered judgment or a new trial as a remedy.  The Court first noted that several Circuits would have waived this objection because defendant did not object to the alleged inconsistency when the jury rendered its verdict.  But because the Seventh Circuit has not directly ruled on the issue (the matter is governed by region-specific law because it is a procedural matter), the Court did not waive the objection.  The Court did, however, waive any arguments Defendant first made in its reply brief.  Having addressed the procedural posture of the arguments, the Court held that the jury's validity findings on the two claims was sufficiently supported.  Because the two claims, although substantially the same, had different elements, the Court held that a rational jury could have come to different validity conclusions for each claim and denied defendant's request for a new trial. 

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883937 (N.D. Ill. Dec. 27, 2006) (St. Eve, J.).

Judge St. Eve denied defendant's emergency motion to prohibit plaintiff from sending Rule 65(d) notice letters regarding the Court’s permanent injunction to defendant’s customers (more on this case and the injunction in the Blog's archives). But before analyzing defendant’s emergency motion, the Court first addressed defendant’s prior motion to clarify the injunction which the Court previously denied. In the motion to clarify, defendant stated that it had sold approximately 150,000 infringing radios to various resellers prior to being enjoined. Defendant argued that those resellers should be free to sell their supplies of infringing radios. The Court denied the motion because it was first raised in a sur-reply brief regarding plaintiff’s motion for a permanent injunction without presentation of any detailed facts, legal argument or supporting case law. 

Even in its motion to clarify, defendant “failed to adequately develop [its] argument with specific facts and relevant case law.” The Court warned that counsel served as both client advocates and officers of the Court. As the latter, the Court stated that:

[I]t is incumbent on trial counsel to assist the court and to fully and fairly represent the legal issues in the case within the applicable statutory and common law framework relevant to the factual dispute before the court for resolution.

Accordingly, [defendant’s] counsel-as officers of the court and advocates for their client-had the responsibility to raise the issue of the 145,377 [radios] in a cogent manner at the first possible opportunity and not in its motion to clarify or in a sure-reply. The Court cannot anticipate every relevant argument counsel should make on behalf of its clients nor is it the Court’s role to do so.

(citations omitted).  Having addressed defendant's prior motion to clarify, the Court acknowledged that its permanent injunction did not enjoin third parties, such as defendant’s customers, but noted that a Rule 65(d) notice letter regarding the enjoined conduct was the required first step before plaintiff could bring contempt proceedings against defendant’s customers for aiding and abetting any violation of the injunction by defendant. The Court also quoted the text of the notice letter and held that, while it could have used more precise language in parts, it did not direct the recipient to stop sales or state that the recipient was enjoined by the Court’s injunction. Additionally, any lack of precision in the letter’s wording was fixed by the inclusion of the permanent injunction itself.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883286 (N.D. Ill. Dec. 18, 2006) (St. Eve, J.).*

Judge St. Eve denied defendant's motion for vacature of a lost profits award and for a new trial.  First, defendant argued that the jury's finding that it induced infringement could not stand because it shipped the product at issue with an AC power cord (non-infringing) and a battery (infringing), but plaintiff had not shown that each individual sale of a product resulted in an infringing use.  Prior to trial defendant argued that plaintiff must show a one-to-one correspondence between each unit sold and a customer's direct infringement citing Chiuminatta concrete Concepts, Inc. v. Cardinal Indus., Inc., 1 Fed. Appx. 879 (Fed. Cir. 2001) (unpublished op.).  The Court denied that argument.  In its post-trial motion, defendant argued that proof of sales is not sufficient for an award of induced infringement citing Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354 (Fed. Cir. 2006).  But the Court distinguished Golden Blount because the issue in that case was that some product was returned to the alleged infringer before being assembled into an infringing product, which may or may not have been sold.  There was no induced infringement because the product at issue may never have been sold.  In the instant case, the Court held that the product with the infringing configuration had been sold and, therefore, upheld the jury's finding of induced infringement.

Defendant also argued that the trial evidence overwhelmingly supported the conclusion that the product was "almost always" used in a non-infringing way (with an AC power cord instead of a battery) and that, therefore, the jury's award should be vacated and a new trial ordered.  But the Court held that its inquiry was whether the jury was presented with "a legally sufficient amount of evidence from which it could reasonably derive its verdict," not whether defendant's conclusion was supported.  The Court held that there was a legally sufficient amount of evidence.  Each infringing product was shipped with an instruction manual and video demonstrating the infringing use.

*There is much more analysis of various opinions from this case in the Blog's archives.  Does anyone feel like this is becoming Black & Decker v. Robert Bosch week at the Blog?  There is only one other opinion from the case in my queue and then we will be on to other cases.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883919 (N.D. Ill. Dec. 7, 2006) (St. Eve, J.).

This is Judge St. Eve's permanent injunction order (numerous opinions from this case and its resulting jury trial have been analyzed in the Blog and can be found in the Blog's archives).  The injunction is notable for its thoroughness, in describing both the claims at issue and the enjoined products or classes of products.  The order even includes electrical schematics of a portion of the enjoined invention.

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Black & Decker v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883921 (N.D. Ill. Nov. 20, 2006) (St. Eve, J.).

Judge St. Eve's latest opinion in this patent dispute awarded plaintiff its costs pursuant to Fed. R. Civ. Pro. 54(d) over defendant's objection that plaintiff's alleged misconduct.  My analysis of Judge St. Eve's opinion which analyzed defendant's misconduct allegations, as well as opinions addressing numerous other aspects of this case and the resulting trial, can be found in the Blog's archives.  In response to defendant's allegations of misconduct, the Court cited her previous opinion finding that there was no misconduct and noted that counsel for both parties "exhibited rigorous advocacy on behalf of their clients."  The remainder of the opinion determined which requested fees were appropriate.  It serves as an excellent primer on what fees will be paid in the Northern District and what acceptable charges are for those fees.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3783006 (N.D. Ill. Dec. 22, 2006) (St. Eve, J.).

Having already denied plaintiff summary judgment on defendant's inequitable conduct defense (here) and increased damages 50% and awarded prejudgment interest compounded monthly (here), the Court denied defendant's motions for judgment as a matter of law, to alter the willfulness judgment and for a new trial.  The Court's denial of these sort of post-trial motions is far from surprising, in light of the substantial burdens that must be overcome to win them.  Of special note, defendant argued that the jury's willfulness determination was not valid because the evidence relied upon was defendant's knowledge of a competing product that it believed to constitute patented technology, not defendant's knowledge of the specific patents that were infringed.  The Court held that the relevant inquiry is the infringer's knowledge of the existence of patent rights, not specific patents.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3359349 (N.D. Ill. Nov. 20, 2006) (St. Eve, J.).

In this post-trial opinion, Judge St. Eve denies plaintiff's motion for attorney's fees, enhances the jury's damages award by 50% pursuant to 35 USC Section 284 and awards plaintiff prejudgment interest compounded monthly.  Despite the jury's willfulness finding the Court held that attorney's fees were not warranted because defendant's advocacy was consistently professional and the substantive positions it argued were largely meritorious.

The Court enhanced damages by 50% (an additional $875,000) based upon:  1) evidence that defendant copied plaintiff's design and ideas; 2) defendant's lack of good faith basis for continued infringement (lack of opinion of counsel); 3) defendant's size and financial condition; 4) the fact that the case was not close; and 5) defendant's failure to take remedial action (five of the nine Read factors, Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992)).  But the Court noted that defendant's level of culpability did not evidence "wanton disregard" and, therefore, did not warrant a full trebling of damages.

The Court also awarded plaintiff prejudgment interest.  Defendant did not object to the interest award, but rather sought that the interest be based upon the T-Bill rate instead of the prime rate, as plaintiff requested.  The Court held that the T-Bill rate was more appropriate because it would compensate plaintiff without providing a windfall, but did compound interest monthly because plaintiff would have had access to the profits from any royalties or lost sales at least monthly.

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Civix-DDI, LLC v. National Assoc. of Realtors, No. 05 C 6869, 2006 WL 3210504 (N.D. Ill. Nov. 6, 2006) (St. Eve, J.).

Judge St. Eve denied defendant Yahoo! Inc.'s ("Yahoo") summary judgment motion which argued that plaintiff Civix-DDI's ("Civix") patent infringement claims were barred by Civix's covenant not to sue in its settlement agreement (the "Settlement Agreement") with third party Navteq, a provider of relevant navigation data to Yahoo.  The Court held that Yahoo was a third party beneficiary of the Settlement Agreement because Yahoo purchased the data at issue from Navteq and that the Settlement Agreement protected such third parties from suit.  But the Court found an issue of material fact as to whether each of Yahoo's accused activities "relate in any way" to the Navteq technology and information, as required by the covenant not to sue. 

Practice Tip:  Make sure to both make all of your arguments and respond to each of your opponent's arguments.  In this opinion, the Court repeatedly noted that neither party offered sufficient arguments to allow for a definitive ruling regarding the scope of the covenant not to compete.  For example, the Court stated:

Civix and Yahoo! offer insufficient arguments to support their respective positions and they do not rebut each other's arguments as to whether the scope of "with respect to or in any way relating" is a "function" within a "service" or an entire "service."

It is much harder for a court to rule in your favor if you do not explain (and support) why it should.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3069544 (N.D. Ill. Oct. 24, 2006) (St. Eve, J.).

After a jury found that defendant willfully infringed certain claims of the patents-in-suit, Judge St. Eve conducted a bench trial to determine whether the patents were unenforceable based upon prosecution counsel’s alleged inequitable conduct in failing to disclose known prior art to the PTO during examination.* A finding of inequitable conduct based upon failure to disclose material information requires that the information was material to patentability and that the failure to disclose was done with intent to mislead the PTO. The Court denied the inequitable conduct claim focusing on the second prong of the inequitable conduct test – intent.  In short, prosecution counsel’s failure to disclose the alleged prior art (the “Smith patents”) to the PTO was not inequitable conduct because prosecution counsel believed the invention under examination (the “Dome patents”) was prior art to the Smith patents. Whether or not the Dome patents were in fact prior art to the Smith patents was not relevant to the question of prosecution counsel’s intent.

* Judge St. Eve previously denied plaintiff’s motion for summary judgment on inequitable conduct discussed in this post, along with a longer description of the facts of the case.

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Crafting proposed jury instructions is one of the first steps when preparing for trial.  And one of the first steps in drafting those instructions is looking for pattern or sample instructions that the court has previously used or endorsed.  In order to help speed that process, I am adding a new Blog feature.  I have gathered the jury instructions that each of the Northern District judges identify on their respective  web pages as either form or model instructions.  Most have general civil instructions and a few have specific sample instructions for various types of IP suits.

This list should save you time when you are looking for model instructions, but I would like to make it even more useful. If you have a set of instructions used in a Northern District IP case send them to me and I will add those instructions to the list (either anonymously or with credit to the sender, at the sender's discretion). 

So, send me your jury instructions -- chicagoiplitigation@yahoo.com -- and the name of the judge that presided over the trial.  As I receive new instructions, I will add them to this post.  If I get a large response, I will do additional posts on the instructions or create a separate page where you can access the files.