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

ACCO Brands USA LLC v. SecuComputer, Inc., Nos. 03 C 1820, 06 C 7102, 07 C 0591, 2008 WL 2566863 (N.D. Ill., Jun. 25, 2008) (Zagel, J.).

Judge Zagel construed the claims of plaintiff’s patents to security locks for portable electronics, like laptops. The Court held that all term, but one had ordinary meanings that were not altered by the intrinsic evidence. Of particular note, the Court held that “about” had an ordinary meaning of “approximately.” The Court denied one defendant’s effort to limit “about” to within machining tolerances of dimensions set forth in a preferred embodiment.

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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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While Judge Filip heads to Washington as Deputy Attorney General, the Northern District has reassigned his cases — click here for the Executive Committee’s Order. At least the following IP cases have been reassigned:

Judge Andersen

1:07-cv-05666             Dicam, Inc. v. United States Cellular

Judge Dow

1:07-cv-02883             Kids Hope USA, Inc. v. Kids Hope United

Judge Kennelly

1:06-cv-05611             Liquid Dynamics Corporation v. Vaughn Co.

Judge Zagel

1:07-cv-03339             Borg Warner Inc. et al. v. Hilite International, Inc. et al.

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Gabbanelli Accordions & Imports, L.L.C. v. Italo-Am. Accordion Mfg. Co. et al., No. 02 C 4048, 2008 WL 351860 (N.D. Ill. Feb. 8, 2008) (Zagel, J.)*

Judge Zagel granted plaintiff summary judgment of trademark and trade dress infringement regarding plaintiff’s “wildly colorful” and “heavily ornamental” accordions. The Court awarded plaintiff approximately $500,000 in damages, attorneys fees and costs. Defendants – Italian entities that sold accordions in the United States – chose not to participate in the case. Instead, they filed an Italian case after this case was filed, but before defendants were served pursuant to the Hague Convention. The Court previously stayed a portion of the case pending the outcome of the Italian case, but noted that the stay may have been a mistake. Years after filing, the Italian case had not been resolved and defendants failed to participate in the U.S. proceeding based upon a belief that the Italian proceeding controlled. For example, defendants admitted personal jurisdiction when they failed to respond to jurisdictional Requests for Admission and instead of filing a motion to dismiss, defendants sent the Court an unsupported letter listing their complaints with the case and the Court’s jurisdiction over them. By failing to participate in discovery and not following the Court’s rules, defendants preempted whatever ability they might have had to make their case.

Practice tip: Participate and play by the rules. Even if you cannot or will not afford counsel, you must answer discovery, respond to motions and appear when required to. Failing to participate will not insulate you from judgment.

* Click here for more on this case in the Blog’s archives.

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Eolas Tech. Inc.v. Microsoft Corp., No. 99 C 626 (N.D. Ill.) (Pallmeyer, J.).

The second Eolas v. Microsoft trial starts Monday, July 30.  The first trial, held before Judge Zagel, was about as close to a media frenzy as patent cases get.  I would love to live blog some or all of the trial.  But I cannot do it because my wife, Laura Donoghue, is a member of Microsoft's trial team.  However, if one of the Blog's readers wants to guest blog about the trial, send me an email and we can work something out.  If I do not get a guest blogger for the trial, I will post links to news coverage of the case without any commentary, for obvious reasons.

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DJ Photog. v. Wibert, Inc., No. 06 C 2215, Slip Op. (N.D. Ill. Jul. 11, 2007) (Zagel, J.).*

Judge Zagel dismissed plaintiff's copyright infringement claim, held that its quantum meruit claim was preempted by the Copyright Act and, therefore, entered judgment in the case in favor of defendants.  Plaintiff DJ Photography argued that defendants infringed its copyrights in pictures of a burial vault and mourners at a graveside service.  But in their Local Rule 56.1 Statement of Undisputed Facts, defendants stated that the copyrights asserted were both registered by an individual, Donald Johnson, not DJ Photography.  Because DJ Photography did not dispute that Johnson owned the copyrights, the Court held that DJ Photography could not prove ownership of the copyrights and, because it did not own the copyrights, DJ Photography lacked standing to bring the suit.  The Court also held that the quantum meruit claim was preempted by the Copyright Act.

* Because the opinion has not been published electronically, you can read a copy of it here.

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Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, No. 04 C 346, 2007 WL 1468630 (N.D. Ill. May 18, 2007) (Zagel, J.).

Judge Zagel construed the claims of the parties' patents, each to chewing gum containing physiological cooling agents.  The Court first construed "menthol" and "physiological cooling agent," but of particular interest was the Court's construction of "N-ethyl-p-methane-3-carboxamide."  Plaintiff/counter-defendant Wm. Wrigley Jr. Co.'s ("Wrigley") argued that the term in defendant/counter-plaintiff Cadbury Adams USA LLC's ("Cadbury") patent should be required to be at least 30% of the cooling composition of the gum based upon alleged disclaimers in the specification, as well as alleged judicial and prosecution history estoppel.  The Court stated that it was a very close issue, but held that the term was not required to make up at least 30% of the cooling composition.  The specification language relied upon by Wrigley was in the preferred embodiment and, therefore, should not be read into the claims.  And while Cadbury may have disclaimed using less than 30% of N-ethyl-p-methane-3-carboxamide in the cooling compound during both the prosecution of other patents and judicial proceedings regarding those patents, the patents had no direct relation to the patent in suit and, therefore, estoppel could not apply. 

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Gabbanelli Accordions & Imports, L.L.C. v. Italo-Am. Accordion Manufacturing Co., No. 02 C 4048, 2007 WL 465423 (N.D. Ill. Feb. 6, 2007) (Zagel, J.).

Judge Zagel held that the Court had jurisdiction over plaintiff's trademark infringement action and ordered defendant to respond to plaintiff's summary judgment motion on the merits of the case.  In October 2002, the Court stayed the case pending resolution of contractual disputes related to ownership of the marks at issue in an Italian court.  The Court lifted the stay in May 2005.  Plaintiff distributed defendant's accordions in the United States.  In 1997, Plaintiff registered the mark at issue, which defendant claims to own.  While the contract at issue in the Italian court may play a role in determining ownership of the mark, the Court held that if plaintiff can prove ownership of the mark prior to the Agreement, then the Court can exercise jurisdiction and resolve the trademark infringement dispute.

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Conditioned Ocular Enhancement, Inc. v. Bonaventura, 05 C 3153, 2006 WL 2982140 (N.D. Ill. Oct. 17, 2006) (Zagel, J.).

Judge Zagel held that Illinois's absolute litigation privilege, which protects communications leading up to a litigation, did not protect a patentholder's cease and desist letters because, in addition to federal preemption issues, the Illinois privilege is limited to defamation and false light claims.  Plaintiff alleged that defendant was practicing its patented vision training services.  In addition to filing suit, plaintiff also sent certain of defendant's customers cease and desist letters warning that defendant was unlawfully using plaintiff's patented vision training methods.  Defendant filed several Lanham Act and tortious interference counterclaims alleging that plaintiff's cease and desist letters were sent in bad faith.

In addition to its absolute litigation privilege argument, plaintiff also sought dismissal of the counterclaims arguing that its patent was presumed valid and that it had a right to enforce it.  But because the counterclaims alleged that the letters were sent in bad faith, the Court denied the motion to dismiss.  Parties have a right to enforce their patents, but not to use false statements in doing so.

Judge Zagel's opinion also provides a good road map for which Lanham Act and tortious interference claims require Rule 9(b) heightened pleading.

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