On November 4th to November 5th, from 7:30 a.m. to 4:15 p.m. CT, the UIC John Marshall Law School Center is hosting its 65th Annual Intellectual Property Law Conference.  The virtual conference offers an impressive lineup of Moderators and Panelists covering an expansive list of topics.  Sessions for each day are listed below:

DAY 1

  • Welcome & Don Dunner Leadership Award
  • Rethinking Innovation
  • The State of IP Law & Policy
  • Global Patent Issues
  • Copyright: The New Normal
  • Vaccines, IP, and Global Equity
  • Technology & Privacy
  • The Federal Circuit in Review
  • Forces of Change
  • Standard Essential Patents

 DAY 2

  • Global IP Issues
  • AI
  • Trademarks
  • Competition
  • A Conversation with Corporate Counsel
  • Regulating IP and Technology
  • Looking Beyond the Bend

To view the detailed conference schedule, click here.  The conference offers 13 hours of CLE credits including one hour of Diversity.  Click here to register.

On Thursday, September 23, 2021, from 12:00 p.m. to 1:00 p.m. CT, the Corporate Committee of the Intellectual Property Law Association of Chicago (“IPLAC”) is hosting a panel discussion focusing on how to transition and succeed as an in-house counsel.  The panel is being moderated by Kara DeAngelis, McDonald’s Corporation Counsel, Privacy & Information Governance.  Panel members include:

  • Alexandra Kleiman, Momofuku, General Counsel and VP of Business Ventures;
  • Ann Palma, Groupon, Senior Corporate Counsel, Intellectual Property;
  • Megan Sindel Agnew, Heyday, Head of Legal and
  • Susan Lester, McDonald’s Corporation, Senior Counsel, Marketing & Intellectual Property.

The event is free for IPLAC Members and $25.00 for Non-Members.  Click here to register for this event.  Zoom – Event link will be sent after registration.

On Tuesday, September 21, 2021, from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago’s (IPLAC) Diversity, Equity, and Inclusion (DEI) Committee is hosting a virtual film discussion on One Night in Miami. The film is a fictional account of one incredible night where Muhammad Ali, Malcolm X, Sam Cooke, and Jim Brown gathered to discuss their roles in the civil rights movement. Issues brought up by the characters and ways in which such issues can be addressed in our IP community will be discussed.  Click here to register for the event.  Once you register, you will receive a link to a Watch Party sometime during the weekend of Friday, September 17 and Sunday, September 19.

The event is free to both IPLAC Members and Non-Members.

 

On September 15, 2021, from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (IPLAC) is hosting a webinar focused on “specialty experts” in patent and trade secret litigation cases.  Judge Albright of the Western District of Texas and Ocean Tomo’s James Malackowski will give you their perspectives on the issues.

The event is $15 for IPLAC Members and $45 for Non-Members.  Please click here to register.  Zoom – Event link will be sent after registration.

The Membership Committee of the Intellectual Property Law Association of Chicago (IPLAC) is hosting the first of several informal happy hours on September 2, 2021 from 5:00 p.m. to 7:00 p.m. at George St. Pub in the East Lakeview neighborhood, 2858 N. Halsted St., Chicago, IL 60657.  Food and drinks will be available for purchase.

The event is free for Members and $15.00 for Non-Members.  Please click here to register.

The Northern District and the Chicago Chapter of the Federal Bar Association are seeking nominations – no later than August 1, 2021 – for outstanding pro bono and public interest representation in civil and criminal matters before the Court.

Factors considered include:

  • dedication to pro bono or public interest work;
  • outstanding achievement resulting from the representation of a large group of indigents, successful representation in a difficult case, outstanding negotiation and settlement skills in achieving a result without trial;
  • extraordinary number of hours committed to pro bono work; or
  • other distinguished performance.

Nominations must be based upon work in the Northern District on matters that are complete and no longer pending before the Court.

Nominations using this fillable form may be emailed to: ProBonoAwards@ilnd.uscourts.gov.

Awards will be presented at the Court’s twenty-first annual awards ceremony on Thursday, September 9, 2021, at 2:00 pm.

On July 14, 2021 from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (“IPLAC”) and the Illinois Intellectual Property Alliance (“ILIPA”) will host a panel discussion focusing on NFTs and some of the many questions revolved around non-fungible tokens.  The panel is moderated by Alex Karana, Karana IP Law, LLC.  Panel members include:

  • Rumi Morales, Partner & Board Member, Outlier Ventures
  • Zack Smolinski, Principal, Smolinski Rosario Law P.C.

This event is free for IPLAC and Non-Members.  Please register by Clicking Here.  Zoom – Event link will be sent after registration.

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.