The Intellectual Property Law Association of Chicago (IPLAC) is hosting its 124th annual dinner honoring the federal judiciary on Friday, November 9, 2018 at the Standard Club, in Chicago. The evening will begin with a cocktail reception at 5:30 p.m., followed by dinner at 6:30 p.m. IPLAC will honor Federal Circuit Chief Judge Sharon Prost with its Distinguished Judicial Service Award. Sponsorships, tables and individual tickets are available.
This is a great event. I hope to see you there.
Freeman Equip., Inc. v. Caterpillar, Inc., No. 16 C 9172, Slip Op. (N.D. Ill. Mar. 13, 2017) (Bucklo, J.).
Judge Bucklo denied defendant Caterpillar’s motion to disqualify plaintiff Freeman Equipment’s (“Freeman”) counsel in this patent case involving final drive guard assemblies.
Caterpillar sought disqualification for two reasons: 1) counsel’s allegedly improper interview of a former Caterpillar employee; and 2) counsel’s alleged prior representation of Caterpillar as local counsel in a patent litigation and as counsel in at least one other matter. The accounts of counsel’s interview of the former employee did not suggest that counsel sought or received any privileged information. In fact, the interview only garnered information that was otherwise publicly available about Caterpillar’s practices. Counsel did not ask about specific patent applications, just Caterpillar’s general patenting process. And to the extent that Caterpillar’s arguments that its general patenting process was irrelevant to the case at hand, discussing irrelevant matters with a former employee would not warrant the extreme result of disqualification.
Caterpillar’s more than six month delay in addressing counsel’s prior representation was problematic. Furthermore, Caterpillar offered no evidence regarding the prior case or cases which would have allowed the Court to make the required factual reconstruction of the prior matters’ scope. Speculation of what might have been disclosed was insufficient basis for the analysis. Without an ability to perform that initial step of the disqualification analysis, the Court could not disqualify counsel.
Kolcraft Enters., Inc. v. Chicco USA, Inc., No. 09 C 3339, Slip Op. (N.D. Ill. Jul. 17, 2018) (Chang, J.).
Judge Chang sua sponte notified the parties of the Court’s inclination to exclude any evidence of an inter partes reexam of the patent-in-suit as unduly prejudicial pursuant to Fed. R. Evid. 403, although both parties appeared to want to use portions of the reexam for their respective cases. The Court reasoned as follows, requiring that the parties be prepared to discussion the issue at the upcoming pretrial conference:
So, while, as the Court previously noted, the reexam may have some relevance to willfulness arguments, that “little probative value” would “pale” compared to the time required to present the evidence and the confusion it could cause.
LimeCoral, Ltd. v. CareerBuilder, LLC, No. 15 C 7484, Slip Op. (N.D. Ill. Mar. 9, 2017) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan granted defendant CareerBuilder’s Fed. R. Civ. P. 56 motion for summary judgment as to plaintiff LimeCoral’s copyright, breach of contract and unjust enrichment claims. The Court also denied LimeCoral’s Rule 56 motion for partial summary judgment.
The Court held that the parties’ actions after the end of their contract created an implied nonexclusive license benefiting CareerBuilder. It was undisputed that: 1) the parties entered into a written agreement for the creation of copyrighted works; 2) LimeCoral delivered the works; and 3) LimeCoral understood that CareerBuilder would use the copyrighted works in its business. In fact, the agreement, even allowed CareerBuilder to create derivative works based upon LimeCoral’s copyrighted works. The fact that LimeCoral refused to transfer the copyright ownership to CareerBuilder was irrelevant. The Seventh Circuit has held that the implied nonexclusive license does not transfer ownership, instead just allowing for use of the works. Based upon the implied license, CareerBuilder could not be held to infringe the licensed works.
LimeCoral’s alleged oral agreements were based upon “vague assertions” and did not match up with the undisputed facts regarding LimeCoral’s pattern of conduct. For example, while the oral agreements required renewal fee payments, based upon the evidence no such payments were either made or requested.
Finally, CareerBuilder was not unjustly enriched. The undisputed evidence showed that CareerBuilder paid for what it used and complied with its understanding of its relationship with LimeCoral. Additionally, the equities did not support benefiting a party that took “steps to foster the creation of its own legal injuries in order to obtain a financial reward in litigation.
John Marshall is hosting a seminar on October 6, 2018 from 9:00am until 4:30pm CT on a hot and growing topic in US patent law – Standard Essential Patents. Register here. Here is John Marshall’s explanation of the program:
The development and licensing of Standard Essential Patents (SEPs) underpin so many aspects of modern life—from wireless telephony to Wi-Fi to connected cars and the internet of things—that it is very easy to underappreciate the complexity of the rules and practices that govern SEP. As the speed at which technologies converge increases, more and more sectors are adopting standards-based technologies for connectivity and interoperability. It is more important than ever for licensors and licensees to know the facts and necessary behaviors required to navigate the risks. Pulling together technology management, intellectual property, business, economics, and politics, this is one of the most interdisciplinary fields of law.
The program includes an excellent line up, including:
Seminar topics include:
The Intellectual Property Law Association of Chicago is hosting what is promised to be a lively and informative presentation on advertising law basics presented by Nerissa Coyle McGinn of Loeb & Loeb, LLP. The presentation will be held on October 17, 2018 from noon to 1:15pm CT at the offices of K&L Gates, 70 W. Madison, Suite 3300. Registration is $20 for IPLAC members, $25 for non-members, $15 for students, and includes lunch.
The Northern District is accepting applications for two full-time United States Magistrate Judge positions. One Magistrate Judge position is stationed in the Eastern Division, at the Everett McKinley Dirksen United States Courthouse at Chicago, Illinois. The second Magistrate Judge position is stationed in the Western Division, at the Stanley J. Roszkowski United States Courthouse at Rockford, Illinois. The deadline for submissions is 4:30 pm CT on Friday, October 12. Appointments are expected in April or May 2019.
The Intellectual Property Law Association of Chicago (IPLAC) is hosting a 2018 Supreme Court IP Review on Friday, September 21, from 8:30am-6:15 pm at the Chicago-Kent College of Law at Illinois Tech — 565 W. Adams St.
They are offering 6.5 hours of CLE credit for topics including:
Billy Goat IP LLC v. Billy Goat Chip Co., LLC, No. 17 C 9154, Slip Op. (N.D. Ill. Aug. 7, 2018) (Dow, J.).
Judge Dow denied defendant Billy Goat Chip’s (“BG Chip”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Billy Goat IP’s (“Billy Goat”) Lanham Act trademark infringement, unfair competition and related state law claims in this case involving the iconic Billy Goat marks in relation to food and beverage sales.
As an initial matter, because BG Chip filed an answer immediately before filing its motion to dismiss, presumably pursuant to the requirements of the Mandatory Initial Discovery Program, the Court treated BG Chip’s motion as a Fed. R. Civ. P. 12(c) motion for judgment on the pleadings. Additionally, the first pages of the opinion provide a succinct history of the Billy Goat Tavern and the Curse of the Billy Goat.
Laches
Because the Lanham Act does not have an explicit statute of limitations, in Illinois the Court’s look to the three year statute of limitations for the ICFA. Courts generally disfavor granting summary judgment on laches, let alone on a Rule 12 motion. And in this case, there were too many unknown and disputed facts to allow for judgment on the pleadings. While it appeared at this stage that Billy Goat had constructive notice of BG Chip’s marks in 2010 and actual notice in 2014, the Court could not determine from the pleadings whether Billy Goat’s alleged delay was inexcusable. Similarly, the Court could not determine from the pleadings whether BG Chip would be prejudiced by the alleged delay in filing suit.
Additionally, Billy Goat’s allegation that BG Chip had bad faith intent to cause consumer confusion and trade on Billy Goat’s good will might prevent BG Chip’s laches defense because unclean hands may bar laches.
State Law Claims
Billy Goat’s state law claims also have three year statutes of limitation. Based upon the pleadings, the complaint was filed more than three years after Billy Goat had actual notice in 2014. But BG Chip’s alleged wrongs are continuing acts. Statutes of limitation do not begin to run on continuing wrongs until the wrong is over. The ongoing nature of the alleged acts, therefore, prevent dismissal based upon laches.
Grecia v. True Value Co., No. 18 C 1886, Slip Op. (N.D. Ill. Aug. 9, 2018) (Kocoras, J.).
Judge Kocoras granted defendant True Value’s Fed. R. Civ. P. 12(b)(6) motion to dismiss and dismissed plaintiff Grecia’s patent complaint in this patent dispute involving point of sale terminals. While the Court was “skeptical” that Grecia’ could “resurrect” his claims by re-pleading, the Court gave Grecia the opportunity to re-plead before dismissing his claims with prejudice.
The Court held that Grecia’s complaint failed for “circular reasoning” which “obfuscated” the pleadings and briefing “destroying” his claims. Required to point to a single element of True Value’s accused system that satisfied the claims’ “communications console” requirement, Grecia pointed to both a customer’s mobile device or chip card and the bank or credit card company’s EMV Token Service Provider. In addition to claiming that two separate items are the communications console, neither identified item was a part of True Value’s point of service device. In light of that and Grecia’s other arguments, the communications console was responsible for four logical paradoxes:
Grecia’s reasoning was “flawed” and “circular.” Grecia’s complaint “disprove[d] his infringement claim by identifying the communications console as something outside of the True Value device.”
