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

Luka v. The Proctor & Gamble Co., No. 10 C 2511 (N.D. Ill. Mar. 28, 2011) (Kennelly, J.).

Judge Kennelly granted certain defendants' motions to dismiss plaintiff's false patent marking case for failure to sufficiently plead intent, and held that the statute was constitutional.  Note that this case was decided before President Obama signed the America Invents Act which removes expired patents from the false marking statute.

Proctor & Gamble

Plaintiff's general allegations against defendant Procter & Gamble were insufficient, particularly in light of the license agreement requiring defendant Innovative to comply with the marking statute.

Innovative

Plaintiff sufficiently pled intent as to Innovative by attacking the P&G-Innovative license agreement. In that agreement, Innovative accepts the responsibility of complying with the marking statute.

Helen of Troy & Idelle

Plaintiff's claims as to Helen of Troy and Idelle failed because they were the sort of generalized pleadings that BP Lubricants held insufficient.

Constitutionality

The Court held that § 292, the false marking statue was constitutional:

For these reasons, the Court agrees with the district court in the Pequignot case that "[a]though these mechanisms concededly do not rise to the same level of government control provided by the FCA, the FCA's strict safeguards are not required because . . . § 292(b) represents a minimal intrusion onto Executive Branch power." Peguignot v. Solo Cup Co., 640 F. Supp. 2d 714, 728 (E.D. Va. 2009), vacated in part on other grounds, 608 F.3d 1356 (Fed. Cir. 2010).

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Light Speed Media Corp. v. Does 1-1000, No. 10 C 5604, Slip Op. (N.D. Ill. Mar. 31, 2011) (Manning, J.).

Judge Manning dismissed without prejudice 999 of the 1,000 Doe defendants in this copyright infringement suit accusing unknown individuals of using BitTorrent to download copyrighted material without sufficient permissions. As in prior cases in the Northern District (click here for similar decisions), the Court held that the Doe defendants were not properly joined pursuant to Fed. R. Civ. P. 20(a)(2)(A) because the use of a common internet service provider or network does not create sufficient commonality of action or transaction to warrant permissive joinder. The Court also held that joinder did not serve judicial interests or economy. A case with 1,000 Doe defendants could generate hundreds of factually dissimilar motions, just at the initial phase of the litigation.

The Court's decision to sever was bolstered by its concerns about whether venue was proper. There was nothing to indicate that plaintiff or any Doe had contacts with Illinois. The Court, therefore, dismissed without prejudice each of the Does except the one individual who had been identified, although not yet named. Plaintiff was given seven days from the Order to notify the parties and their Internet Service Providers. Finally, the Court denied as premature the identified individual's motion to dismiss for lack of personal jurisdiction. The motion was premature until the individual was actually named in the suit.

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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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