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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Category Archives: Trial

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No Default Against Non-Existent Corporate Entity

Posted in Trial

RSI Video Techs., Inc. v. Vacant Property Security, LLC, No. 13 C 7260, Slip Op. (N.D. Ill. Mar. 10, 2014) (Holderman, Sen. J.).

 Judge Holderman denied plaintiff RSI’s motion for default judgment against defendant VPS Group, Inc. in this patent case involving security systems.  The other defendants, all various VPS-related entities ultimately responded to the Complaint, except for VPS Group, Inc.  Defendants agreed, and the Court accepted, that VPS Group, Inc. did not answer because it was not a corporate entity.  Instead, “VPS Group” was a designation for a group of related companies.  To avoid confusion or “gamesmanship,” the Court ordered defendants to file a list of all of their affiliated entities to which the Complaints’ subject matter pertained with enough detail to allow RSI to decide whether any of the entities should be joined.  After the disclosure, RSI had two weeks to add any defendants they deemed necessary.

Late Damages Theory Allowed Based Upon Lack of Prejudice

Posted in Summary Judgment, Trial

NanoChem Sol’ns, Inc. v. Global Green Prods., LLC., No. 10 C 5686, Slip Op. (N.D. Ill. Sep. 10, 2013) (Hart, Sen. J.).

Judge Hart denied defendants’ motion in limine to exclude plaintiff NanoChem’s late-disclosed lost profit damages analysis.  The Court also granted defendants’ motion for summary judgment as to NanoChem’s Lanham Act and Illinois state law unfair competition claims.

During discovery, NanoChem stated that it would seek a reasonable royalty for its patent claims without providing a calculation.  In response to defendant’s motion, NanoChem provided a lost profit calculation.  While the calculation was late, defendants were not prejudiced because the final pre-trial order had not been filed yet and NanoChem did not rely upon an expert.  But NanoChem was limited to the offered calculation and no other damages theories.

The Court granted defendants summary judgment as to NanoChem’s Lanham Act and Illinois unfair completion claims.  Each claim required that NanoChem prove that its A-5D mark had acquired secondary meaning.  Because NanoChem did not offer evidence supporting secondary meaning, the Court granted defendants summary judgment.

Expert Opinions Outside an Expert Report are Barred

Posted in Discovery, Experts, Trial

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 23, 2013) (St. Eve, J.).

Judge St. Eve granted defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s “corporate intellectual property practice” expert in this patent infringement case involving flush valves for use in plumbing fixtures.  Zurn argued that the expert’s opinions regarding willfulness should not be allowed because they had not been sufficiently disclosed in the expert’s report.  The expert sought to opine that Zurn had acted inconsistent with “normal standards of fair commerce”, thus making Zurn’s conduct was willful.  The Court excluded those opinions because “normal standards of fair commerce” was never identified or discussed in the expert’s disclosures and reports.  Furthermore, there were no corporate standards or other evidence of “normal standards of fair commerce” identified as having been considered by the expert in relation to his report.  The Court also noted that Sloan Valve’s arguments regarding the purposes and testimony of the expert’s opinions had shifted throughout the briefing and hearing.  And Sloan Valve’s failure to disclose the normal standards or corporate policies was not harmless or substantially justified.  Without at least some notice of them, Zurn was unable to properly respond to them.

Technical Expert Opinions Regarding Willfulness are Excluded

Posted in Discovery, Experts, Trial

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 12, 2013) (St. Eve, J.).

Judge St. Eve granted in part defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s technical expert in this patent infringement case involving flush valves for use in plumbing fixtures.  Zurn argued that the expert should not be allowed to testify about willfulness issues or about life cycle testing of valves because of a lack of experience and reliable methods.  Sloan Valve stipulated that the expert would not testify about the willfulness standard or about how Zurn’s actions related to the willfulness standards, for example what information was or was not relayed to outside counsel.  The Court held as follows: 

  1. The expert had sufficient qualifications.  While the expert did not have specific plumbing expertise, he was sufficiently qualified.  He had a degree in mechanical engineering, as well as a masters of science and doctor of philosophy in theoretical and applied mechanics.  He was a registered professional engineer, a former professor of engineering, and a member of various engineering societies.  And he has analyzed product designs regarding numerous patents.  Finally, he had studied the wear on brass faucets.
  2. A battle of experts does not make the expert testimony unreliable.  While Sloan Valve’s expert challenged portions of the expert’s life cycle analysis and while the expert had not performed life cycle testing in the relevant field, his background and experience were a sufficient basis of his opinions.  These and any other issues could be probed upon cross-examination.  Additionally, the Court considered that there was not a written standard for life cycle testing these valves.  So, any expert would be performing the test or critiquing them based upon that expert’s experience.
  3. The expert’s opinion statements are admissible, but not those about willfulness.  The Court allowed the expert’s alleged conclusory statements that the life cycle tests at issues were not an accurate simulation of real world conditions.  They were expert opinions based upon experience, not merely conclusory, and might add the trier of fact.  The Court, however, barred a statement that the test was developed to defeat the patent in suit and therefore were evidence of willful infringement.

Costs Awarded to Prevailing Party

Posted in Trial

DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 C 1531, Slip Op. (N.D. Ill. June 20, 2013) (Coleman, J.).

Judge Coleman awarded defendants (collectively “3D Systems”) approximately $140K in fees and costs as the prevailing party.  Of particular note, the Court held as follows:

  • The Court awarded witness fees for days testifying, but not days traveling.
  • The Court awarded subsistence costs, up to the allowed $71/day.
  • The Court awarded Bates-labeling costs, but not costs for confidentiality branding.
  • 3D Systems was allowed to recover for two copies of each deposition exhibit, but not the full four that it made.
  • 3D Systems was allowed to recover for three copies of summary judgment motions because 3D Systems had encountered trouble downloading multiple copies of its briefs.
  • 3D Systems did not recover for rough drafts or ASCII versions of deposition transcripts.
  • Video synchronization costs were not awarded because there were not sound or comprehension problems that required putting the text on the screen.

Preliminary Injunction Partially Entered in Trademark Suit

Posted in Trial

DR Distributors, LLC v. 21 Century Smoking, Inc., No. 12 C 50324, Slip Op. (N.D. Ill. Mar. 14) (Kapala, J.).

Judge Kapala granted the agreed portions of plaintiff’s motion for preliminary injunction in this trademark case involving plaintiff’s 21ST CENTURY SMOKE and defendant’s 21 CENTURY SMOKING marks, as follows:

  • The parties agreed to a reciprocal preliminary injunction enjoining each party from using the other’s mark or making any statements that its products were affiliated with the other party.
  • The Court refused to enter the portion of the agreed injunction in which both parties agreed not to use marks confusingly similar to its opponent’s mark because that definition could encompass each party’s mark.
  • Defendant agreed not to attend the ASD Trade Show in Las Vegas.
  • The Court denied the requested injunction as to any use by defendant of its 21 CENTURY SMOKING mark. 
  • At an early stage of the case, both parties strongly contested who first used the mark.  As a result, plaintiff seemed as likely to lose its claim as to win it, but that was enough to clear the “low threshold” of showing more than a negligible chance of success.
  • With respect to irreparable harm, there was no evidence of misconduct by defendant, and the agreed injunction would resolve any possibility of misconduct going forward.
  • Finally, the balance of harms weighed in defendant’s favor and against a preliminary injunction. 


Claim Construction Reconsidered in Motion in Limine

Posted in Trial

CBOE v. ISE, No. 07 C 623, Slip Op. (N.D. Ill. Mar. 6, 2013) (Lefkow, J.).

Judge Lefkow considered defendant ISE’s arguments that the Court’s construction of “means for matching” was incomplete because it did not define an algorithm as part of the structure for the means plus function term.  The Court held that there was a fact question as to whether pro rata allegation “was” sufficiently simple that anyone skilled in programming could create a software program for the function . . .”  The Court, therefore, decided to hear evidence before ruling.

Expert May Not Opine on Claim Construction at Trial

Posted in Trial

CBOE v. ISE, No. 07 C 623, Slip Op. (N.D. Ill. Mar. 6, 2013) (Lefkow, J.).

Judge Lefkow granted defendant ISE’s motion to exclude plaintiff CBOE’s evidence of non-infringing alternatives from the lost profits analysis in this patent case.  The identified alternative was never in use during the alleged infringement.  And CBOE offered only conclusory evidence that the alternative was available at the relevant time.  The Court denied ISE’s motion to exclude CBOE’s expert.  The expert’s experience with SEC regulations and rulemaking were sufficient to allow him to opine that CBOEdirect was not an “automated exchange.”  The expert was not, however, allowed to opine on claim construction issues because that was not the proper subject matter of expert testimony.

Enablement Not Required for Each Obviousness Reference

Posted in Trial

CBOE v. ISE, No. 07 C 623, Slip Op. (N.D. Ill. Mar. 6, 2013) (Lefkow, J.).

Judge Lefkow granted plaintiff CBOE’s motion in limine excluding argument that § 103 obviousness references must each be enabling in this patent case.  Furthermore, the Court limited defendant ISE’s enablement arguments to those specifically called out in ISE’s expert’s report.

Weight of the Evidence Cannot be Decided in Motion in Limine

Posted in Trial

CBOE v. ISE, No. 07 C 623, Slip Op. (N.D. Ill. Mar. 6, 2013) (Lefkow, J.).

Judge Lefkow granted in part plaintiff CBOE’s motion in limine to exclude defendant ISE from introducing evidence of secondary consideration of nonobviousness in this patent case.

Commercial Success:

Whether ISE had shown a nexus between its products and the claim elements was not proper for a motion in limine.


ISE introduced evidence of copying beyond its infringement contentions.  Weighing the evidence was a matter for the jury.

Failure of Others:

ISE identified 73 failed exchanges.  Whether the failures had a sufficient nexus to the claims is an issue for the jury.

Long Felt Need:

Again, whether ISE’s evidence of long felt need has a sufficient nexus with the claims is a jury question.

Teaching Away:

ISE’s expert sufficiently cited to evidence of teaching away to allow his testimony to go to the jury.

Expert Testimony Required for one Infringement Issue

Posted in Trial

CBOE v. ISE, No. 07 C 623, Slip Op. (N.D. Ill. Mar. 6, 2013) (Lefkow, J.).

Judge Lefkow granted plaintiff CBOE’s motion in limine limiting defendant ISE’s expert testimony consistent with prior rulings regarding the scope of evidence in this patent case.  The expert was allowed to testify regarding alleged infringement by CBOE’s accused CBOEdirect system.  The Court also noted that there would be a “failure of proof” if some expert did not testify that Hybrid’s “rule-based order routing algorithm” did not include matching or allocating through open outcry.

Admissions Related to Claim Construction Limit Trial Evidence

Posted in Trial

CBOE v. ISE, No. 07 C 623, Slip Op. (N.D. Ill. Mar. 6, 2013) (Lefkow, J.).

Judge Lefkow granted in part CBOE’s motion in limine to limit ISE’s infringement argument at trial in this patent case.  The issue for trial was whether CBOE’s Hybrid system was “merely two independent exchanges” or an integrated system.  ISE could, therefore, offer evidence that CBOEdirect contains elements of the asserted claims.  But ISE could not argue that CBOEdirect alone infringes based upon ISE’s admissions to the contrary in seeking reconsideration of the Court’s claim construction.

Rule 11 Sanctions for Failing to Purchase the Accused Product

Posted in Trial

Smart Options, LLC c. Jump Rope, Inc., No. 12 C 2498, Slip Op. (N.D. Ill. Feb. 11, 2013) (St. Eve, J.).

Judge St. Eve granted defendant Jump Rope’s Fed. R. Civ. P. 11 motion for sanctions in this patent case.  The Court previously granted Jump Rope summary judgment of noninfringement and plaintiff Smart Options appealed to the Federal Circuit.  As an initial matter, the Court held that while Smart Options’ notice of appeal divested the Court of jurisdiction generally, the Court retained jurisdiction over Jump Rope’s Rule 11 motion.

The Court previously held that Jump Rope did not infringe because it did not sell options to purchase items at a later date.  Instead, Jump Rope sold the immediate ability to go to the front of a line for an event or location.  Smart Options could have ascertained that inexpensively by downloading Jump Rope’s free app and purchasing a jump.  Instead, Smart Options provided generalized descriptions of it investigations, including reviewing Jump Rope’s website Terms of Use.  And Smart Options’ patent claims require paying an “option fee” to acquire an “option” to purchase something.  Furthermore, faced with Jump Rope’s explanation that it did not infringe at the outset of the case via Jump Rope’s Rule 11 motion, Smart Options continued to prosecute its case and still did not buy a “jump.”

Smart Options’ reliance upon Judge Lefkow’s constructions in a similar case did not protect Smart Options.  Lefkow did not construe “option.”  And the construction of “option” Smart Options allegedly used as part of its Rule 11 investigations was inexplicably different than the construction Smart Options advanced before the PTO and before Judge Lefkow.

The Court, therefore, granted Jump Rope’s Rule 11 motion and awarded Jump Rope its reasonable attorney’s fees and costs for defending the case and for the Rule 11 motion giving Jump Rope leave to file a petition setting out and supporting its fees and costs.


Inadvertent Use of Mark Violates Consent Order

Posted in Trial

Gaither Tool Co. v. Summit Tool Co., No. 01 C 4096, Slip Op. (N.D. Ill. Sep. 5, 2012) (Bucklo, J.).

Judge Bucklo granted plaintiff Gaither Tool’s motion to enforce the parties’ Consent Order which required that defendant Summit Tool not use the trademark BEAD KEEPER.  Summit Tool acknowledged use of the mark, but argued it was inadvertent and that Summit Tool ceased use of BEAD KEEPER as soon as Gaither Tool put Summit Tool on notice of the use.  The Court held that the use was not inadvertent because Summit Tool offered no evidence that it employed any precautions to make sure it complied with the Consent Order.

Preliminary Injunction Entered Against Defendants Failing to Appear

Posted in Trial

Algierz, Inc. v. The Source of Apparel, Inc., et al., No. 12 C 5361, Slip Op. (N.D. Ill. July 13, 2012) (Chang, J.).

Judge Chang ruled upon plaintiff Algierz’s motion to extend temporary restraining orders (“TROs”) and for preliminary injunctions (“PIs”) in this patent case as follows:

  • The Court denied to extend the TRO and denied a PI as to defendant Source of Apparel and an individual defendant because there was insufficient evidence that those defendants knew of the asserted direct infringement.  The defendants therefore, could not be liable for contributory infringement.
  • As to defendant Selah USA and another individual defendant, the TRO was extended based upon evidence of direct infringement.  The Court deferred ruling upon the PI until expiration of the TRO to give the defendants time to defend against the PI and to finalize settlement.
  • Defendant Hip Hop Trading LLC and two other defendants, each of whom did not appear, had a PI entered.  They were given leave to file motions to dissolve the PIs upon their “prompt appearance.”
  • The Court ordered Algierz and defendant D&J International and another defendant to submit their agreed, proposed PI for the Court’s consideration.

Expert Fees Awarded to Prevailing and Losing Parties

Posted in Trial

Se-Kure Controls, Inc. v. Vanguard Prods. Group, Inc., No. 02 C 3767, Slip Op. (N.D. Ill. Jul. 5, 2012) (Castillo, J.).

Judge Castillo awarded costs as to each party in this patent infringement action after the Federal Circuit affirmed Judge Anderson’s entry of judgment in favor of defendants.  The Court awarded defendants costs and expert fees of approximately $32,000 pursuant to Fed. R. Civ. P. 54(d) and 26(b)(4)(E), and awarded plaintiff Se-Kure approximately $14,000 in expert fees pursuant to Fed. R. Civ. P. 26(b)(4)(E) to be credited against defendants’ costs.  Of particular interest, the Court ruled as follows:

  • Because the Court held Se-Kure’s patent invalid, defendants were prevailing parties.
  • Defendant’s amended petition was not untimely.  It added costs, but it was filed within thirty days of the Court’s judgment as required by Local Rule 54.1(a).
  • The Court awarded hearing transcript costs up to the relevant Federal Judicial Center allowed cost.  The Court did not award expedited costs because defendants did not provide a justification for the extra cost of the expedited service.
  • The Court awarded the agreed amounts for deposition transcripts.
  • The Court reduced defendants’ copying costs by approximately $3,300 for copy costs after depositions on that were not clearly tied to the case.
  • The Court denied costs for a demonstrative because half of it was blown up portions of text from testimony and exhibits.  The other half was figures at the center of a controversy regarding Defendant’s mischaracterization of evidence.
  • Although the Court had not identified a case within the Seventh Circuit awarding expert fees for depositions to a losing party, the Court held that the language of Fed. R. Civ. P. 26(b)(4)(E) did not limit the award of expert fees to a prevailing party.  So, the Court awarded all parties their expert fees for deposition time, including both reasonable preparation and deposition time.

Patents Held Unenforceable After Bench Trial

Posted in Trial

Intellect Wireless, Inc. v. HTC Corp., No. 09 C 2945, Slip Op. (N.D. Ill. Sep. 6, 2012) (Hart, Sen. J.).

Judge Hart entered findings of fact and conclusions of law after a patent bench trial related to cell phones with caller ID, text messaging, pictures or video.  The Court dismissed with prejudice plaintiff Intellect Wireless’s patents because they were unenforceable due to inequitable conduct.  Of particular interest, the Court held the following:

  • Several declarations submitted to the PTO during prosecution of the patents in suit contained false statements regarding inventions, reduction to practice and diligence.
  • The declarations were necessary to procure the patents in suit.
  • None of the false statements were withdrawn, corrected or identified to the patent examiner.
  • The clear and convincing evidence “strongly support[ed]” that the false statements were made with an intent to deceive, not just by mistake.

Experts Review of Document Erases Privilege

Posted in Trial

Tellabs Ops., Inc. v. Fujitsu Ltd., No. 08 C 3379 & 09 C 4530, Slip Op. (N.D. Ill. Aug. 29, 2012) (Cole, Mag. J.).

Judge Cole, after an evidentiary hearing, ordered Fujitsu to produce all documents related to an extensive inspection of plaintiff Tellabs’ optical scanner in this patent case.  Fujitsu claimed that certain reports related to the inspection were privileged, but Fujitsu’s expert report stated that the expert had reviewed those report.  Fujitsu and its expert argued that the expert’s statements about reviewing the reports were erroneous.  While the expert had received the reports, he thought they were other documents and put them in a pile without ever reading them.  Regardless of whether the expert and counsel remembered the facts correctly, the story was improbable.  The Court did not believe that an “eminent” professor who was acutely aware of the need for accuracy could mistakenly misstate what he had reviewed twice.  Because the Court held that the expert had considered the reports, any privilege that may have attached to them was waived.

Microsoft v. i4i: Snatching Victory from the Jaws of Defeat

Posted in Trial

This post is re-posted from my Retail Patent Litigation Blog — where I write about patent litigation issues specific to retailers and their supply chains — with minor revisions.

Last year, the patent defense bar was disappointed when the Supreme Court refused to lower the standard for invalidating patents based upon prior art that was not considered by the Patent Office.  According to Professor David Schwartz from Chicago-Kent College of Law and Christopher Seaman from Washington and Lee University School of Law, the apparent loss may have actually been a win.  In Microsoft v. i4i Ltd. Partnership, 131 S. Ct. 2238 (2011), Microsoft argued that prior art not considered by the Patent Office should face the lesser preponderance of the evidence standard.  The Supreme Court held that invalidity must be proved  by clear and convincing evidence - the higher standard - whether or not the Patent Office had considered the prior art at issue.  But the Supreme Court allowed that when the prior art had not been considered by the Patent Office, the jury should be instructed that “it has heard evidence that the PTO had no opportunity to evaluate before granting the patent” and to “consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence.”  Id. at 2251.  The decision was largely considered to have maintained the status quo.

Schwartz and Seaman recently released a paper empirically testing what impact the two standards of proof would have versus the Supreme Court’s extra instruction - Standards of Proof in Civil Litigation: An Experiment from Patent Law, Harvard Journal of Law & Technology (Forthcoming 2013).  Schwartz and Seaman provided subjects with a fact pattern and a summary of the parties’ arguments.  Then the subjects were randomly given one of three jury instructions:  1) clear and convincing evidence; 2) clear and convincing evidence with an i4i-type instruction regarding evidence not considered by the Patent Office; and 3) preponderance of the evidence. 

The results were surprisingly good for retailers, and patent defendants generally.  Schwartz and Seaman expected what I would have - that the clear and convincing standard with the extra instruction would act as an intermediate instruction between clear and convincing and preponderance of the evidence.  Here is what the study found:

  • Subjects receiving the preponderance of the evidence instruction invalidated patents more than subjects receiving clear and convincing instructions.
  • Subjects receiving the clear and convincing instructions with an i4i-type instruction invalidated patents at the same rate as subjects with preponderance of the evidence instructions.

Schwartz’s and Seaman’s study suggests that defendants won the i4i case despite losing the preponderance of the evidence argument.  And for those that are inclined to question the validity of Schwartz’s and Seaman’s methodology, they provide extensive grounding for and analysis of the methodology.  Additionally, Schwartz, in particular, has developed a reputation for high-end empirical analysis of patent issues.

What can retailers take away from the study?

  • Your invalidity jury instruction is critical.  Do not let your jury instructions be an after thought.
  • Getting an i4i-type instruction significantly increases your chances of invalidating a patent before a jury.
  • Of course, it is less clear that a judge’s analysis will change upon summary judgment.  Although Schwartz and Seaman did not test this, my expectation is that summary judgment invalidity rates will not change based upon i4i.
  • There is significant value in asserting prior art that was not considered by the Patent Office.
  • The desire for prior art not considered by the Patent Office puts a premium on non-patent prior art searches, like those offered by Article One, among others.

Finally, here is the i4i instruction used by Schwartz and Seaman:

Clear and convincing evidence is evidence that shows it is highly probable that the patent was obvious.  This is a higher standard of proof than a preponderance of the evidence, which means more probable than not.  However, clear and convincing evidence is lower than the beyond a reasonable doubt standard used in criminal cases.

The burden of proving obviousness is more easily satisfied when, as in this case, the prior art on which the claim of obviousness is based was not considered by the Examiner.


Case Dismissed for Rule 22 Violations

Posted in Trial

Brown-Younger v. LULU Press, Inc., No. 12 C 1979, Slip Op. (N.D. Ill. various dates) (Shadur, Sen. J.).

Judge Shadur issued a series of opinions in this copyright case.  The following were of particular note:

  • Plaintiff’s motion for criminal sanctions was denied for failure to comply with LPR 5.2 because plaintiff’s motion was single-spaced.  Furthermore, it was the U.S. Attorney’s role to seek criminal sanctions, not the Court’s.
  • The Court ordered plaintiff to show cause why plaintiff’s complaint should not be dismissed for Rule 11 violations.
  • Because plaintiff did not meet the Court’s deadline to show cause why Rule 11 had not been violated, the Court dismissed the case.  The Court also invited defendants to seek other sanctions that they may believe were appropriate.
  • The Court would not recuse itself and was not required to by plaintiff’s request.

Default Judgment Makes Case Exceptional

Posted in Trial

United States Cellular Corp. v. Hotline Wireless & More, Inc., No. 12 C 5017, Slip Op. (N.D. Ill. Jul. 25, 2012) (Shadur, Sen. J.).  

Judge Shadur entered judgment in favor of plaintiff in this Lanham Act case.  The Court converted its default judgment and temporary restraining order into a final judgment and a permanent injunction.  And the Court held that the case was exceptional, warranting an award of plaintiff’s attorney’s fees and costs.

Exceptional Case Finding Requires Additional Facts

Posted in Discovery, Local Rules, Summary Judgment, Trial

Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.).

Judge Dow held that plaintiff’s U.S. Patent No. 6,903,083 (the “’083 patent”) was invalid based upon a sale more than one year before the ‘083 patent’s filing date and denied defendants’ motion to find the case exceptional and award attorney’s fees, in this case related to vitamin D2.  As an initial matter, Judge Dow, although he would have been within his rights to do so, did not deem admitted facts that were not properly contested pursuant to Local Rule 56.1.  The Court did, however, explain that it would not consider improper denials.

The Court held that two sales by plaintiff more than one year before the filing date invalidated the ‘083 patent.  Plaintiffs argued that they were not in fact sales because while money changed hands, pursuant to a Supply Agreement, plaintiffs retained ownership of the goods.  But that argument “fail[ed] to get out of the gate.”  The Supply Agreement was for the manufacture of vitamin D2, for which hundreds of thousands of dollars were paid.

“[I]nference upon inference” favored finding the case exceptional and awarding defendants their attorney’s fees.  Plaintiffs lacked a plausible explanation for how they were unaware of the invalidating sales.  And instead of disclaiming the ‘083 patent and avoiding a large document production, plaintiffs continued asserting it.  But there remained a question of fact regarding what information plaintiffs’ executives had regarding the sales and when they had it.  The Court, therefore, allowed the parties to take further discovery on those issues before bringing the issue back to the Court. 

Bench Trial Finds Pharmaceutical Patent Valid and Enforceable

Posted in Trial

Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.).

Judge Dow issued his opinion, findings of fact and conclusions of law following a bench trial conducted during October and November 2010 on the issues of validity and enforceability of plaintiffs’ patent for Hectorol, an injectable drug for treating hyperparathyroidism secondary to end-stage renal disease.  The Court held the patent valid and enforceable.  Of particular note:

  • Per the parties’ stipulation, defendants infringed claim 7 of the patent.
  • Plaintiffs were entitled to a 1988 priority date.
  • The articles and evidence offered by defendants did not meet the burden of showing that plaintiffs’ invention was inoperable.
  • There was no showing that plaintiffs’ invention was obvious in 1988, although it was a “good candidate for further study.”
  • The references that plaintiffs allegedly failed to disclose to the Patent Office were irrelevant because they all published after the 1988 priority date.



Arguments Not in Final Pre-Trial Order Waived

Posted in Jurisdiction, Trial

Minemyer v. R-Boc Reps., Inc., No. 7 C 1763, Slip Op. (N.D. Ill. May 11, 2012) (Cole, Mag. J.).

Judge Cole denied defendant Grimsley’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this patent dispute.  As an initial matter, the motion was denied as waived.  Judge Coar denied an initial motion on the same grounds with leave to refile based upon information gathered during discovery.  But Grimsley did not raise the issue for more than four and a half years, after entry of the final pretrial order and on the sixth day of trial.  By failing to raise his motion in the final pretrial order, Grimsley waived his jurisdiction argument.  And Grimsley would have also lost on the merits.  Judge Coar’s original analysis remained correct.  The fiduciary shield doctrine did not apply.  The evidence showed that Grimsley was not acting at his employer Dura-Line’s instruction.  Grimsley had discretion and control, and was “intimately involved” in a deception regarding the infringing product.