Court Focuses on Grammar to Construe Patent Terms

By R. David Donoghue on Posted in Claim Construction

Kolcraft Enters., Inc. v. Chicco USA, Inc., No. 09 C 3339, Slip Op. (N.D. Ill. Apr. 13, 2018) (Chang, J.).

Judge Chang construed claims in this patent dispute involving infant play gyms for a second time, this time focused upon certain apparatus claims.

Of particular note, the Court construed the following:

  • “Connector” was not a means plus function term. It was “clearly” a structural term and would be understood as such by one of ordinary skill in the art. This was supported by the specification, which “frequently” used “connector” to denote structure. While Federal Circuit decisions construing “connector” in relation to other patents were not controlling, they were instructive because of similarities between the patent in suit and the patents in the Federal Circuit cases.
  • “Fastener” disclosed sufficient structure. It is a commonly understood noun referring to fastening or attaching structures. And the specification gave examples of fasteners, such as velcro and rivets.
  • “Pivotably coupled” was construed as “linked, connected, or fastened such that the leg [or connector] can rotate, turn, or move around a fixed point.” The Court also noted that hinges and ball-and-socket joints, which are bendable joints, could be included within pivotably coupled joints.
  • The reference to plural “connectors” was not indefinite for failing to specifically identify which connectors were referred to. The plural connectors could be either the “at least one connector” and/or the “plurality of connectors.” The Court did, however, note that if further evidence suggested that “connectors” was not an umbrella term referring to either or both sets of connectors, the parties could later raise the issue for reconsideration.

A PROGRESSIVE DINNER: BRINGING WOMEN IN IP TOGETHER

By R. David Donoghue on Posted in Legal News

The Intellectual Property Law Association of Chicago (IPLAC) Women in IP Committee is hosting its Annual Progressive Dinner on Thursday, June 7, 2018. The committee will celebrate the advancement of women in Chicago’s IP community through a three-course dining and networking experience.

The event is being held at Beatrix, 519 North Clark Street in Chicago. Doors open at 5:30 pm with dinner beginning promptly at 6:00 pm. The evening is $50 for IPLAC members and $65 for non-members, inclusive of dinner and drinks. Click here to register.

Northern District of Illinois Magistrate Judge Vacancy

By R. David Donoghue on Posted in Legal News

The Northern District of Illinois is accepting applications for a full-time United States Magistrate Judge position in the Eastern Division (Chicago). The deadline for applying is 4:30 p.m. on Friday, May 18. The appointment will begin February 1, 2019.

To be qualified for appointment as a United States Magistrate Judge, an applicant must

  1. be, and have been for at least five years, a member in good standing of the bar of the highest court of a State, the District of Columbia, the Commonwealth of Puerto Rico, or the Virgin Islands of the United States, and have been engaged in the active practice of law for a period of at least five years;
  2. be competent to perform all of the duties of the office; be of good moral character; be emotionally stable and mature; be committed to equal justice under the law; be in good health; be patient and courteous; and be capable of deliberation and decisiveness;
  3. be less than seventy years of age; and
  4. not be related to a judge of the district court.

Applicants must not seek interviews with or submit letters of reference to individual judges or members of the Merit Selection Panel. All applications must be submitted through the U.S. District Court’s application website. For more information click on the following link: U.S. Magistrate Judge Vacancy

A Merit Selection Panel composed of attorneys and other members of the community will review all applications and recommend to the judges of the Court in confidence, a list of the persons whom it considers best qualified. The Court will make the appointment following a Federal Bureau of Investigation full-field investigation and Internal Revenue Service tax check of the person selected to fill the position. An affirmative action effort will be made to give consideration to all qualified candidates, including women and members of minority groups.

CLE: European Patent Strategies

By R. David Donoghue on Posted in Legal News

On Thursday, May 10, 2018, from 4:30-7:00 pm, the Intellectual Property Law Association of Chicago (IPLAC) is sponsoring a panel presentation on European patent strategies by Albert Keyack, EPO Attaché to the USPTO & Dr. Frank Feller, European Patent Attorney, moderated by George Jonas, Esq., Downstream Managing Counsel, Global Patents and Technology, BP America, Inc. The panel will discuss strategies for obtaining European patents and overcoming common issues, with discussion to include: intermediate generalization, opposition strategies, and the state of the Unitary Patent.

The presentation will be held at SRAM headquarter, 1000 West Fulton Market, 4th Floor, Chicago, Illinois 60607. There is no cost for the program, but you must register here.

IPLAC Annual Meeting

By R. David Donoghue on Posted in Legal News

The Intellectual Property Law Association of Chicago is holding its annual meeting Tuesday, May 1, 2018 at the University Club of Chicago. The reception begins at 5:30 pm with dinner following at 6:00 pm. There is no charge for current members, but you must RSVP here to attend. Please RSVP by no later than 5:00 p.m. on Friday, April 27, 2018. You can renew membership online.

During dinner, IPLAC will present the 2018 Creator of the Year Award, present scholarship awards to Chicago Public School seniors and elect the officers and board members for the 2018-19 year.

Standing in Trademark Cancellation Proceedings is a “Low Threshold”

By R. David Donoghue on Posted in Summary Judgment

DRL Enters., Inc. v. North Atlantic Op. Co., Inc., No. 16 C 8384, Slip Op. (N.D. Ill. Mar. 12, 2018) (Castillo, C.J.).

Judge Castillo denied plaintiff DRL’s motion for summary judgment that defendants lacked standing to seek cancellation of DRL’s trademark registrations in this appeal of the Trademark Trial and Appeal Board (“TTAB”) cancellation decision regarding DRL’s 1.0, 1.25 and 1.5 marks for use with tobacco rolling papers.

As an initial matter, the Court warned the parties that responding to a Local Rule 56.1 statement of undisputed material facts challenging the materiality of a fact without admitting or denying its truth was both “unhelpful” and improper pursuant to the Local Rules which require a direct admission or denial.

Regarding standing, the Court held as follows:

  • While defendants told DRL they would use fractions instead of DRL’s 1.25 and 1.5 decimal trademarks, defendants made no binding commitment to do so. Defendants also noted that their decision was solely based upon litigation avoidance.
  • Defendants also qualified their agreement saying it was “without prejudice and not to be deemed binding through contract, estoppel or otherwise.” DRL registered its dissatisfaction with defendants’ qualifications when they were made.
  • The fact that DRL and defendants were competitors would ordinarily be sufficient to create standing by giving defendants a real interest in the cancellation proceedings.
  • To the extent that the competitive relationship was not enough, DRL’s cease and desist letter would create standing.
  • While defendants’ distribution agreement preventing defendants from using the decimal marks could be seen as removing standing, a reasonable fact-finder could find that the limitation was based solely upon DRL’s trademarks and that, therefore, the restriction would be removed upon cancellation of the marks. Therefore, defendants could be found to have standing.

Having denied DRL’s summary judgment motion regarding standing, the Court ordered each party to reevaluate their settlement positions and exhaust all settlement possibilities.

Crowd-Sourced Definitions Are Not Admissible

By R. David Donoghue on Posted in Summary Judgment

Illinois Tamale Co. v. El-Greg, Inc., No. 16 C 5387, Slip Op. (N.D. Ill. Mar. 29, 2018) (Kennelly, J.).

Judge Kennelly denied plaintiff Illinois Tamale’s and defendant El-Greg’s cross-motions for summary judgment in this Lanham Act dispute regarding Illinois Tamale’s PIZZA PUFFS trademarks.

As an initial matter, the Court refused to consider any crowd-sourced definition of a term. Because the definition could be edited by anyone, it is not sufficiently reliable and, therefore, not admissible.

El-Greg offered “significant evidence” suggesting that PIZZA PUFF was generic. On the other hand, Illinois Tamale produced evidenced from which a reasonable fact-finder could “just as well” find that PIZZA PUFF was not generic as used to denote Illinois Tamale’s products. Because of the conflicting evidence and the ability to draw conflicting conclusions, the Court denied summary judgment as to both parties’ genericness summary judgment motions.

Illinois Tamale produced sufficient evidence to permit a reasonable factfinder to conclude that Illinois Tamale had a valid family of PUFF marks. For example:

  • Illinois Tamale began selling products using Pizza Puffs, Taco Puffs, Beef Puffs and Sloppy Joe Puffs by at least the mid-1980s, before El-Greg began using its marks.
  • According to Illinois Tamale’s survey, 43% of respondents believed that Pizza Puffs and Taco Puffs were from the same or affiliated companies. Additionally, 35.5% believed the same for Pizza Puffs and Sloppy Joe Puffs.

While the factfinder may ultimately decide the case the other way, Illinois Tamale provided sufficient evidence to avoid summary judgment.

The Court held that there was a question of fact as to the last element of El-Greg’s fair use defense – whether El-Greg used the PIZZA PUFF mark “fairly and in good faith.” Because the analysis is inherently subjective, El-Greg’s undisputed awareness of Illinois Tamale’s PIZZA PUFF mark and its product labels were insufficient for summary judgment of no fair use.

CLE: IPLAC & Linn Inn of Court Joint Meeting

By R. David Donoghue on Posted in Legal News

On Monday, April 23, 2018, the Intellectual Property Law Association of Chicago (IPLAC) and Chicago’s Linn Inn of Court are hosting a joint meeting at the Chicago-Kent College of Law, 555 W. Adams St., Chicago. Jerold Jacover will be presenting on Happiness and the Law. IPLAC is applying for one hour of mental health/substance abuse CLE credit. There is no charge for IPLAC members, but you must pre-register.

The CLE presentation begins at 6:00 pm with a pre-meeting reception beginning at 5:30 pm and a post-presentation reception at 7:00 pm.

CLE: Practical Applications of Data Analytics in Discovery

By R. David Donoghue on Posted in Legal News

The Seventh Circuit Pilot Program on Electronic Discovery is hosting a complimentary webcast CLE discussing practical applications of data analytics in discovery on April 11, 2018 from 12 pm – 1:30 pm CT.

This program tackles one of the most complex, expensive and vilified parts of litigation – discovery – looking at ways to improve, simplify and streamline the process. The program will discuss:

  • The various types of data analytics available to lawyers and legal teams;
  • How attorneys can leverage early case assessment (ECA) and early data assessment (EDA) to control costs and better define case strategy;
  • Courts’ acceptance of the use of analytics by parties in litigation; and
  • Other legal data analytics use cases, including data culling, custodial validation, sentiment analysis, contract management, data remediation, sensitive data governance, and more.

The panel includes:

  • Sean Byrne, Calibrate Advisors
  • Doug Kaminski, Relativity
  • Debbie Reynolds, Eimer Stahl Discovery Solutions, LLC
  • Tom Thompson, Thompson Legal
  • Martin Tully, Actuate Law

Register HERE.

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