CampaignZERO, Inc. v. StayWoke, Inc., Slip Op., No. 20 C 6765 (N.D. Ill. Dec. 4, 2020) (Valderrama, J.).

Judge Valderrama granted in part plaintiff CampaignZERO’s motion for expedited discovery related to its motion for a preliminary injunction in this trademark dispute involving CampaignZERO’s CAMPAIGNZERO mark.

Of particular note, the Court held as follows:

  • As an initial matter, filing a preliminary injunction motion alone does not warrant expedited discovery.
  • While CampaignZERO’s number of discovery request was small — a dozen document requests and ten interrogatories — the requested information was broad.
  • While it was evidence of confusion, it was not clear how donations sent to CampaignZERO that were intended for defendant StayWoke harmed CampaignZERO.
  • Because CampaignZERO did not have access to StayWoke’s records showing any donations intended for CampaignZERO that went to StayWoke, the Court allowed discovery on this narrow topic. That discovery was found in four interrogatories and four document requests. The Court allowed each of those discovery requests.
  • Because CampaignZERO did not object, the Court also allowed StayWoke discovery into the inverse of the narrow set of issues allowed for CampaignZERO.

Norix Group, Inc. v. Correctional Techs., Inc. d/b/a Cortech USA, et al., Slip Op., No. 20 C 1158 (N.D. Ill. Jan. 19, 2021) (Feinerman, J.).

Judge Feiinerman granted in part defendant Cortech’s motion to stay pending ex parte reexam and denied Coretech’s Fed. R. Civ. P. 12(b)(6) in this patent case involving “intensive use” beds and shelving units used in prisons.

First, the Court denied the motion to dismiss claiming Norix had improperly describe the patents and applications to which it claimed priority. Realizing its issues, Norix sought and received a certificate of correction from the Patent Office. That certificate was enough to resolve the issue.

The Court denied Cortech’s motion to dismiss based upon the claims requiring “hangars” to be used on the shelves, instead of “hangers.” While a Court is not allowed to rewrite the claims where there is only one plausible meaning, there were two possible here — once was nonsensical (shelves for storing hangars, which are places to repair aircraft) and the other was sensical ( shelves for storing hangers which are devices for holding clothes). The issue of which meaning was the correct one was for claim construction, not Rule 12.

Cortech argued that its accused devices did not include J-bar’s required by each asserted claim. But whether Cortech’s accused devices included a J-bar or an equivalent was not determinable at the Rule 12 stage.

Finally, the Court granted Cortech’s motion to stay as to the ‘150 patent because the Patent Office initiated Cortech’s ex parte reexam. Because that patent would not impact the other asserted patent, the ‘642 patent, proceedings were not stayed as to that patent.

Shenzhen Buxian Network Tech. Co., Ltd. d/b/a Veken v. Bodum USA, Inc., Slip Op., No. 20 C 1726 (N.D. Ill. Jan. 25, 2021) (Aspen, Sen. J.).

Judge Aspen denied plaintiff’s motion to certify an interlocutory appeal in this trade dress dispute involving French press coffee makers.

A jury previously held that the identical French press Chambord design was non-functional and to have secondary meaning. The Court held that plaintiff had not met its burden of proving a reason to overcome the jury’s holding.

As an initial matter, there was no dispute matter of law. Plaintiff sought to overturn a jury verdict on the identical issue. Contrary to plaintiff’s argument, the Court did not hold that the prior jury’s verdict prevent any future third parties from challenging the determination. Rather, the Court held that it was incumbent upon the defendant to identify material differences that called the jury verdict into question. Plaintiff did not do that in this case.

Additionally, an interlocutory appeal would not have conserved resources. If anything, an appeal would only have delayed a trial, not eliminated one.

The Court, therefore, denied plaintiff’s interlocutory appeal. The Court also granted defendant Bodum’s motion to strike plaintiff’s declaratory judgement claim because it was duplicative of plaintiff’s claim in a related action.

The AIA Trials Committee of the Intellectual Property Law Association of Chicago (“IPLAC”) is hosting a fireside chat with Vice Chief Judge Michael Tierney and McDonnell Boehnen Hulbert & Berghoff LLP partner George “Trey” Lyons, III on May 25, 2021 from 10:00 a.m. to 11:00 a.m. CT.

This event is free for IPLAC members. Please click here to register.  Zoom – Event link will be sent after registration.

Putco, Inc. v. Carjams Com, Inc., Slip Op., No. 20 C 50109 (N.D. Ill. Feb. 10, 2021) (Jensen, Mag. J.).

Magistrate Judge Jensen granted in part defendant Carjams’ motion for a protective order concerning plaintiff Putco’s Fed. R. Civ. P. 30(b)(6) notice in this patent dispute.

Of particular note:

  • Carjams’ claim that Putco should be limited to ten topics, without some agreement by the parties, was not supported by the Federal Rules or the law.
  • The Court limited the temporal scope of the deposition to 2014 (before the patent’s filing date and Carjams’ first accused sales). Putco’s 2008 date limitation was overly burdensome.
  • Putco’s request for “all information” were not overly burdensome because Carjams had only fourteen employees, and only two likely had relevant information.
  • The Court would not prevent damages topics because Carjams intended to use a damages expert. Damages was still an appropriate topic for a corporate deposition.
  • The Court narrowed a broad topic on LED lights, limiting it to LED headlights as they relate to the accused products.
  • The Court limited a topic regarding Carjams’ use of its GEN4 trademark to use in relation to the accused products.
  • The Court limited a topic regarding a non-accused technology to the extent it was potential prior art or accused products.
  • The Court struck a broad topic seeking all information about Carjams’ suppliers. The Court allowed Putco to amend limiting the request to a more narrowly tailored topic, if that was possible.
  • The Court allowed a topic seeking information about all license agreements for the asserted patents or similar patents. Those agreements may have been relevant to a damages analysis.
  • A topic regarding Carjams’ knowledge of the industry was allowed.
  • A topic regarding Carjams’ bases for its discovery responses was allowed. The Court refused to require that the request be done by interrogatory.
  • The Court denied a request to limit a topic regarding Carjams’ alleged prior to sue to the date of the patent application forward because the relevant issue was whether the device had been used before the patent application was filed.

Got Docs, LLC v. Kingsbridge Holdings, Inc., Slip Op., No. 19 C 6155 (N.D. Ill. Feb. 2, 2021) (Guzman, J.).

Judge Guzman denied defendant Kingsbridge’s summary judgment motion and granted plaintiff Got Docs’ summary judgment in this trade secret case involving manage-document business.

The parties disputed whether plaintiff Got Docs’ managers were authorized to file suit. But even if the managers had stepped down from their roles, Get Docs’ Operating Agreement required that managers remain until their successor was appointed. So, while Get Docs’ managers may have resigned, they had not been replaced and, therefore, had authority to initiate the suit.

Unidentified Patent Holder v. Does 1-24, Slip Op., No. 21 C 514 (N.D. Ill. Feb. 6, 2021) (Kennelly, J.).

Judge Kennelly ordered unidentified plaintiff (Doe Plaintiff) to show cause why the patent case should not be dismissed.

The Court noted that in many ways this was a typical “Schedule A” case in which a plaintiff IP holder sues multiple Doe defendants for alleged knock-off sales. The case was different in two important respects: 1) plaintiff sought to file anonymously; and 2) the asserted IP was a design patent, instead of a trademark.

Initially, the Court denied Doe Plaintiff’s motion to seal its identity, with leave to refile. Doe Plaintiff’s sole justification for remaining anonymous was that defendants subscribe to a service monitoring Northern District of Illinois filings for cases like this one. But the Court noted it was an inferential leap worthy of Olympian Bob Beamon that because defendants saw a suit against anonymous defendants, the specific defendants in suit would hide their assets.

Additionally, the Court ordered Doe Plaintiff to show cause as to how it could file a single patent suit against 200+ defendants for selling unrelated products. 35 U.S.C. Section 299. The Court noted that all defendants selling infringing products and some using identical advertising language were not sufficient. Doe Plaintiff did not assert that defendants were selling identical products or allege common facts.

The Northern District of Illinois has begun to allow electronic filing of non-sealed digital audio/video exhibits (MP4, MP3, MOV, etc.). The exhibits will be available for purchase and download via the Certified Copy Desk.

If you want to file a document:

  1. Go to the Northern District’s digital submission page and fill out the form;
  2. Upload the digital audio/video file(s) (note that it will not accept PDFs, presumably because they are neither audio nor video); and
  3. Click “submit.” when you are done.

Within 24 business hours, an entry will appear on the docket confirming the exhibit was received.

To purchase electronically-filed audio/visual exhibits:

  1. Contact the Certified Copy Desk (CCD) inbox at CCD_ILND@ilnd.uscourts.gov;
  2. Pay the CCD invoice you receive according to the Fee Schedule; and
  3. Download the file via the link received after your payment is processed.

On May 6, 2021 from 12:00 p.m. – 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (IPLAC) is hosting a panel discussion focusing on topics related to Section 101.  A selection of topics will be discussed.  The panel is being moderated by A. Christal Sheppard Professor, University of Nebraska College of Law, Distinguished Fellow, NGCT – Nebraska Governance & Technology Center.  Panel members include:

  • Andrei Iancu, Partner, Irell & Manella, Former Under Secretary of Commerce and Director of the USPTO
  • Rob Sterne, Founding Director, Sterne, Kessler, Goldstein & Fox
  • Gwilym Roberts, Chairman & European Patent Attorney, Kilburn & Strode LLP

This event is free for IPLAC members.  Please contact Billie Hinnen to register.

Chief Judge Pallmeyer issued her tenth amended COVID General Order last week. As with the last several amended orders, there are no additional blanket case extensions. The General Order basically extends existing restrictions, including ordering that no jury trials — both civil and criminal — may begin until, at least, April 5, 2021.

Specifically, the General Order also requires:

  • No Local Rule 5.2(f) Courtesy Copies — Absent case-specific requests, Local Rule 5.2(f) requiring paper courtesy copies of many filings is suspended. In fact, “[n]o courtesy copies may be submitted . . . unless the parties receive case-specific requests for copies from the presiding judge.”
  • No Local Rule 5.3(b) Presentment — Motions may not be noticed for in-person hearings. Presiding judges will notify the parties if a hearing, either in-person or by electronic means, is necessary. This rule, extending across the COVID General Orders, may have the biggest long-term impact on Northern District practice, as it has long been a court governed by regular in-person hearings for nearly every motion.
  • Pro Se Email Filing Allowed — The Court is allowing pro se filing by email to the Court Clerk, so long as the document is a PDF, is signed and the email contains certain identifying information.
  • No Public Gatherings — Neither federal courthouse is allowing public gatherings, unless authorized by Chief Judge Pallmeyer.

The General Order will be vacated, amended or extended no later than April 5, 2021.