The Chicago Bar Association is honoring Judge Shadur with its Lifetime Achievement Award at a reception on Tuesday, December 5, 2017 from 5:00 – 7:00 pm at the Standard Club, 320 S. Plymouth Court. RSVP here. For most Chicago IP practitioners and blog readers, it likely goes without saying that Judge Shadur had a profound impact on both the Northern District generally and the IP bar specifically over his decades on the bench. In addition to his strong control of his docket and courtroom, his encyclopedic knowledge of the Federal Rules, the Rules of Evidence and the Local Rules were legendary. As someone who read each of his many IP decisions over the last decade-plus of his career, his wit and writing style is also a significant loss for the Northern District. I hope to see you at Judge Shadur’s reception.
The Richard Linn American Inn of Court is offering a $10,000 scholarship to law students planning to pursue intellectual property careers. Recipients must be in a US, ABA-accredited law school and continue in the program at least through the fall 2018 semester. Applications are due by December 8, 2017. The Linn Inn’s website has additional information, including registration information.
For those interested, here is more information about the scholarship:
Law students who have entered into a JD program at an ABA-accredited law school in the United States and who will continue in that program through at least the Fall semester 2017 are eligible to apply for the Mark T. Banner Scholarship.
Scholarship recipients will be selected by the Mark T. Banner Scholarship review board based on the following criteria:
- Commitment to the pursuit of a career in IP law.
- Commitment, qualities and actions toward ethics, civility and professionalism.
- Academic merit (undergraduate, graduate and law school).
- Written and oral communication skills.
- Leadership qualities and community involvement.
- Member of a historically underrepresented group in IP law (including race, sex, ethnicity, sexual orientation and disability).
The recipient of the Mark T. Banner Scholarship will receive $10,000 payable for the fall 2018 semester of his or her second or third year of law school.
Monster Energy Co. v. Peng, et al., No. 17 C 414, Slip Op. (N.D. Ill. Oct. 23, 2017) (Dow, J.).
Judge Dow granted plaintiff Monster Energy’s motion for summary judgment, granting final judgment, a permanent injunction and attorney’s fees in this Lanham Act dispute involving defendants’ use of Monster Energy’s Claw Icon Mark and copyrighted Monster Energy design to a stylized claw with jagged edges.
Because defendants failed to respond to Monster Energy’s summary judgment or its Local Rule 56.1 statement of undisputed material facts, the Court accepted Monster Energy’s facts as true, holding:
- Monster Energy’s trademark infringement, counterfeiting and Uniform Deceptive Trade Practices Act claim were sufficiently supported and undisputed by defendants. The Monster Energy trademark registrations were sufficient evidence of validity and Monster Energy’s ownership of the marks.
- The six mark/good combination used on defendants’ accused products were “identical to, or substantially indistinguishable from” the Claw Icon Mark. And defendants’ misuse of the Claw Icon Mark was sufficient evidence of a likelihood of confusion.
- Defendants infringed Monster Energy’s copyrights. Defendants’ answer admitted that Monster Energy owned the copyrights. And defendants’ accused products included virtually identical or substantially similar copies of the copyrighted material.
- Because Monster Energy’s requested statutory damages were reasonable and undisputed by defendants, the Court awarded Monster Energy its full requested amount — $100k for each of the six mark/product combinations for the counterfeiting ($600k total) and $50k for the copyright infringement.
The Court also awarded a permanent injunction against defendants’ future use of the Claw Icon Mark or Monster Energy’s copyrighted stylized claw with jagged edges:
- Defendants failed to rebut the presumption that Monster Energy’s harm from trademark and copyright infringement was irreparable;
- The balance of hardship weighed in Monster Energy’s favor because of the substantial time and cost required to police Monster Energy’s IP rights; and
- The public’s interest lies in protecting IP rights.
The Court awarded Monster Energy its attorney’s fees because it was undisputed that defendants’ knowingly distributed counterfeit goods.
On October 1, 2017, the Northern District began including a screenshot of any internet citation made in a judicial opinion as a separate docket entry associated with the opinion. The Seventh Circuit Library has been gathering and archiving screenshots of any internet citation in Northern District judicial opinions since January 2007. This move by the Northern District makes that information more readily accessible and is an excellent move toward providing litigants and the public-at-large better, more complete information, particularly as cited internet links change or go dead. Parties to litigation should further aid this effort by providing PDF screenshots of internet citations in motions and briefs, as well.
Congratulations to Chief Judge Castillo and Judge Lefkow who were both honored as 2017 Justice John Paul Stevens awardees earlier this month. The Justice John Paul Stevens award was created by his former clerks to annually honor attorneys that best exemplify Justice Stevens’ commitment to integrity and public service in the practice of law. The award was presented by the Chicago Bar Association in connection with the Chicago Bar Foundation. It is a great and well-deserved honor.
Not Dead Yet Mfg. Inc., d/b/a NDY MFG, Inc. v. Pride Sols., LLC, No. 13 C 3418, Slip Op. (N.D. Ill. Sep. 19, 2017) (Pallmeyer, J.).
Judge Pallmeyer ruled on the parties’ cross-summary judgment motions in this patent suit involving stalk stompers — devices that attach to a tractor or combine to crush corn stalks before they damage the vehicle’s wheels.
Of particular note, the Court held as follows:
- The Court denied the parties’ cross-motions as to infringement of the ‘432 patent by the QD1 product because there were questions of fact remaining. While the Court held that the accused products did not have the required “plate member,” there was a question of fact as to whether the accused products’ shoe bracket functions in the same way under the doctrine of equivalents;
- The Court also denied the parties’ cross-motions as to infringement of the ‘963 patent by the QD1 product because questions of fact remain. The parties dispute centered around the “retention member” limitation. But the record contained sufficient evidence from which a jury could find the retention member either literally or, at least, under the doctrine of equivalents;
- Plaintiff conceded that defendant’s QD2 product did not literally infringe either patent. Plaintiff was estopped from making its doctrine of equivalents argument based upon prosecution history statements making during an Inter Partes Review (“IPR”);
- The Court denied plaintiff summary judgment as to defendants’ invalidity claims. because the Court held that the patent was not entitled to plaintiff’s claimed priority date. While defendants had not moved for summary judgment based upon the priority date, the Court invited a motion if it was warranted based upon the Court’s ruling as to the priority date;
- The Court held that it was too late for plaintiff to seek to strike defendants’ inequitable conduct pleadings for alleged insufficiencies. Plaintiff had ample time at the outset of the case to move to strike;
- The Court also noted that defendants’ failure to cite the Therasense standard was “disappointing,” but “immaterial.”;
- The Court held that there was sufficient evidence for a jury to infer plaintiff or its counsel actives with intent to deceive by withholding material information and, therefore, denied the cross-motions on inequitable conduct grounds; and
- The Court denied plaintiff summary judgment on its false advertising claims because defendants claims that they were “the original quick disconnect stalk stomper” were susceptible to multiple reasonable interpretations, as opposed to being literally false.
Ariel Investments, LLC v. Ariel Capital Advisors LLC, No. 15 C 3717, Slip OP. (N.D. Ill. Jul. 17, 2017) (Kennelly, J.).
Judge Kennelly granted in part plaintiff Ariel Investments’ Fed. R. Civ. P. 54(d) motion for costs in this Lanham Act case involving Ariel Investments’ ARIEL trademarks.
The Court granted defendant Ariel Capital summary judgment as to Ariel Investments’ cybersquatting claim and then, after a bench trial, ruled in Ariel Investments’ favor as to the Lanham Act and related state law claims, ultimately granting a permanent injunction.
As an initial matter, while Ariel Investments did not win every issue — in particular losing its cybersquatting claim and being denied disgorgement of Ariel Capital’s profits — the permanent injunction granted to Ariel Investments was a substantial part of the litigation warranting fees in these particular circumstances.
Having held that Ariel Investments was the prevailing party, the Court awarded the following costs:
- The Court awarded court reporter costs, including costs above the Judicial Conference’s approved per-page rate for a deposition where Ariel Capital selected the reporter. In that instance, the reporter offered Ariel Capital a discount, but did not extend the discount to Ariel Investments. Because Ariel Capital selected the reporter, it could not argue that the cost was too high, even above the per-page limit;
- The Court refused the costs for video of Ariel Capital’s central witness. While he was beyond the Court’s subpoena power, “the odds were near zero that [he]—the owner and principal of Ariel Investments—would not appear at trial.”;
- Because the evidence was “relatively simple” and the trial was short — three days — the Court did not award costs for real-time trial transcripts;
- Looking to Third Circuit law, the Court awarded Ariel Investments its e-discovery costs because it showed that they were “copying costs” within the meaning of the law because they were related to “‘the process by which documents in a variety of native forms . . . are copied and converted’ to a readable format.”;
- While demonstrative exhibits are often necessary at trial and, therefore, taxable costs, they were not in this instance because of the relatively simple evidence presented to the Court. The Court noted, however, that it may have ruled differently had the case been tried to a jury; and,
- The Court awarded service costs at the rate charged by the Marshall and the cost of its complaint filing fee.
Earthy, LLC v. BB&HC, LLC, No. 16 C 4934, Slip Op. (N.D. Ill. Oct. 10, 2017) (Kim, Mag. J.).
Magistrate Judge Kim granted declaratory judgment defendant BB&HC’s motion to quash a subpoena of an individual member of BB&HC in this trademark dispute involving BB&HC’s EARTHY DELIGHTS mark.
Because the individual member had a “minimal role” in BB&HC’s daily activities, he was not a managing agent that would be susceptible to subpoena or as a Fed. R. Civ. P 30(b)(1) fact witness. In fact, while BB&HC was created to hold companies originally held by the individual member’s trust, BB&HC had always been managed by someone other than the individual member. The fact that the individual member was the only member of the LLC was irrelevant because BB&HC retained a separate managing agent.
Having held that the individual member was a non-party, the Court turned to whether the deposition would impose an undue burden on the individual member. The Court held that the subpoena would have unduly burdened the individual member because:
- Certain document requests in the subpoena were over broad;
- Declaratory judgment plaintiffs (collectively “Earthy”) did not show that they had sought the relevant discovery through less intrusive means; and
- Earthy had not sufficiently shown that the individual member had unique information that Earthy could not otherwise access. The fact that he co-signed a trademark transfer was not sufficiently unique, absent more explanation.
The Court also refused to allow just the subpoena’s document requests to be responded to because the requests themselves were over broad.
Feit Elec. Co. v. Beacon Point Capital, LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Sep. 22, 2017) (Coleman, J.).
Judge Coleman, having previously granted declaratory judgment plaintiff Feit summary judgment of the unenforceability of one of defendant Beacon Point’s patents based upon collateral estoppel, denied Feit summary judgment of a subsequent motion seeking to overcome its prior evidentiary deficiencies in the Ole Nilssen-related patent dispute.
As an initial matter, Feit did not show patentee’s recitation of an earlier date in the patent application although it only claimed priority to an undisputed filing date. Simply reciting earlier applications is not proof of claiming an earlier date. Even assuming there was a misstatement, Feit did not show the required intent to deceive. There was conflicting evidence as to whether Nilssen intentionally misrepresented the patent ancestry to maintain a license agreement.
Kroto Inc. v. Chapa, No. 17 C 1218, Slip Op. (N.D. Ill. Jun. 22, 2017) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan granted defendants’ motion to dismiss for lack of personal jurisdiction, but denied defendants’ motion for sanctions in this declaratory judgment copyright case.
The only link plaintiff Kroto established between defendants and Illinois was the sending of cease and desist letters regarding Kroto’s copyrighted works to defendants. Those letters and communications alone were insufficient to create personal jurisdiction.
Finally, while a more detailed Rule 11 investigation may have uncovered defendants’ lack of contacts with Illinois, there was insufficient evidence to warrant the severe penalty of sanctions.