Ryford H. Estores, et al. v. The Partnerships and Unincorporated Associations Identified in Schedule A, No. 25-cv-06151, (N.D. Ill. Aug. 11, 2025) (Wood, J.).

Judge Wood denied plaintiffs’ amended motion for temporary restraining order in this design patent infringement case involving a foldable three-way mirror.

The Court held that plaintiffs misconceived their design patent’s scope by focusing on functional rather than ornamental features. While plaintiffs argued their patent claimed a foldable mirror, comprising multiple mirrors foldably connected side-by-side with a rear-mounted hook, the Court noted each element served functional purposes for a self-haircut tool.

Applying Federal Circuit precedent, the Court emphasized that design patents protect only ornamental, non-functional elements. General, conceptual similarity of a tri-fold mirror with hooked arms was insufficient for infringement. The analysis must focus on the design’s “overall ornamental visual impression.”

In detailed product-by-product comparisons, the Court found the accused products were plainly dissimilar. Key differences included:

  • Accused products’ arms retracted into concealed plastic panels versus the patent’s protruding tube design
  • Flat versus protruding back surfaces
  • Thicker center panels on accused products versus uniform panel thickness in the patent

The Court rejected plaintiffs’ argument to focus primarily on the mirror side, noting the patent figures emphasized the rear design elements. With multiple trifold mirrors in the prior art, plaintiffs failed to identify distinguishing ornamental features of the mirror portion.

Additionally, the Court found plaintiffs’ perfunctory trademark and trade dress claims lacked evidentiary support, with no proof defendants used the “Self-Cut System” mark or evidence of secondary meaning for trade dress.

The existence of substantial questions concerning infringement precluded granting a TRO. The Court also flagged potential improper joinder issues under 35 U.S.C. § 299(a) given variations among accused products.

Bestway Inflatables & Material Corp. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A Hereto, et al., No. 24 C 11697, (N.D. Ill. Aug. 15, 2025) (Alonso, J.).

Judge Alonso granted defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss in this Schedule A trademark case, holding that truthfully stating that replacement parts  are compatible with trademarked goods does not constitute trademark infringement.

Bestway, sells above-ground swimming pools using the BESTWAY registered trademark. Bestway sued 322 defendants for using the BESTWAY mark on Amazon listings for pool parts and accessories. The moving defendants’ listings stated their products were compatible with or meant for use in Bestway pools, typically alongside references to other pool manufacturers like Intex and Coleman.

The Court held that merely using a trademark to truthfully inform buyers that parts will fit the trademarked products of another manufacturer is not infringement. Citing Taylor Instrument Cos. v. Fawley-Brost Co., 139 F.2d 98 (7th Cir. 1943), the Court noted this principle is well-established in the Seventh Circuit.

Key to the Court’s analysis was that defendants used “Bestway” in plain text alongside competitors’ marks, with nothing in the language, typography, or graphic design suggesting the term identified the source of the listed products rather than compatible pools. The Court distinguished cases where sellers made trademarked terms conspicuous compared to other listing information.

The Court rejected Bestway’s likelihood of confusion claim, finding that context and common sense showed the listings were “plainly posted by independent sellers” using multiple manufacturers’ marks “to inform consumers that their parts will fit the pools of those manufacturers.” Without any non-conclusory allegations of actual confusion or intent to palm off, and given the clear compatibility context, no plausible inference of likelihood of confusion existed.

Significantly, the Court warned that accepting Bestway’s theory would prevent selling replacement part without risk of trademark infringement claims.

Sievert Electric Service and Sales Company v. Storako, et al., No. 22 CV 6380 (N.D. Ill. July 24, 2025) (Kim, Mag. J.).

Magistrate Judge Kim issued a comprehensive discovery order in this Defend Trade Secrets Act case, addressing multiple motions to compel and highlighting important ESI and privilege issues.

Of particular interest, the Court rejected broad forensic imaging of personal cell phones as disproportionate but ordered narrower searches for relevant text and call records. The Court held that forensic imaging would capture vast amounts of irrelevant information including “pictures, videos, chat histories, application data, location data, internet evidence, and deleted content.”

The Court ordered production of documents related to a pre-lawsuit computer forensics investigation, rejecting claims of work product protection. The Court found that the investigation appeared to be conducted in the ordinary course of business rather than at attorney direction in anticipation of litigation. While attorney impressions and analysis could be withheld, technical and factual information from the investigation must be produced.

Regarding ESI production requirements, the Court adopted the majority view that Rule 34(b)(2)(E)(i)’s organization requirements apply to both hard copy documents and ESI. The Court rejected arguments that ESI’s searchability eliminated the need for organization by request, holding that discovery responses have evidentiary value as party admissions requiring clear connections between requests and responses.

Amorepacific Corp. v. Juanhe Co. Ltd., No. 24 CV 12417 (N.D. Ill. July 15, 2025) (Jenkins, J.).

Judge Jenkins granted plaintiff Amorepacific’s summary judgment motion against defendant Juanhe for trademark infringement and false designation of origin involving the LANEIGE beauty brand.

The Court found no genuine dispute that Juanhe used the LANEIGE mark without authorization to sell lip kits through Walmart.com at significantly lower prices than genuine products. Juanhe’s argument that Amorepacific performed no physical examination of shipped products was rejected, with the Court holding that the statute requires only use of a mark likely to confuse consumers, not proof of inferior quality or physical inspection of the accused products.

The Court found willfulness based on Juanhe’s unauthorized use of obvious marks in advertising, demonstrating willful blindness. However, the Court awarded $45k in statutory damages rather than  plaintiff’s requested $150k, considering the limited evidence of actual sales (29 units totaling $222), Juanhe’s cessation of sales after January 2025, and the lack of evidence of a large-scale counterfeiting operation.

The Court also awarded attorney’s fees under 15 U.S.C. § 1117(b), finding that willful blindness triggers the mandatory fee provisions for cases involving intentional use of counterfeit marks, and Juanhe identified no extenuating circumstances precluding such an award.

Binglin Zhong v. Shanghai Jingsun Tech. Co., No. 25 C 2973 (N.D. Ill. July 18, 2025) (Kennelly, J.).

Judge Kennelly denied plaintiff Zhong’s motion for preliminary injunction against defendant Millionhome for alleged infringement of a design patent covering a surge protector, finding that Zhong failed to establish irreparable harm.

Zhong argued two points regarding irreparable harm: that Millionhome’s infringement impaired Zhong’s reputation in the market, and that Millionhome was unable to satisfy a judgment. The Court found both arguments unsupported by sufficient evidence.

The Court held that the fact that Millionhome received 600 positive online reviews did not mean that Zhong’s reputation had been damaged. Positive reviews for infringing products do not necessarily harm the reputation of the patentholder’s covered products.

The Court also found Zhong’s argument that Millionhome could not satisfy the judgment unconvincing. Zhong’s argument was that despite $1.2M in alleged infringing sales, Millionhome only had $25k in its Amazon account. The Court equated an Amazon account to a store till and held that how much was in Millionhome’s till did not prove its overall worth or cash reserves. The Court also noted that Zhong provided no evidence about Millionhome’s overall assets or cash on hand.

Eicher Motors Limited v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, No. 25-cv-02937 (N.D. Ill. Aug. 8, 2025) (Kness, J.).

Judge Kness denied plaintiff Eicher Motors’ motion for ex parte Temporary Restraining Order (TRO) in this Schedule A trademark case, finding that the routine granting of preliminary injunctive relief without adversarial proceedings violates Federal Rule of Civil Procedure 65(b).

The Court held that Schedule A cases rarely meet Rule 65(b)’s requirement for “specific facts” showing immediate and irreparable injury before the adverse party can be heard. The Court found that Schedule A complaints are typically drafted at a high level of generality without specifics as to each defendant, which is incompatible with Rule 65(b)’s specificity requirement.

Of particular interest, the Court rejected the common Schedule A practice of seeking prejudgment asset freezes, finding that plaintiffs typically seek statutory damages rather than equitable relief at the end of cases. This makes the initial asset freeze improper under Grupo Mexicano. The Court noted that Schedule A plaintiffs receive legal remedies instead of equitable ones which removed the justification for freezing assets.

The Court also expressed concern about the propriety of joining multiple defendants, noting that plaintiffs cannot simply allege that multiple defendants infringed the same trademark to meet Fed. R. Civ. P. 20’s requirements. The Court indicated it would welcome guidance from the Court of Appeals and would entertain a motion to certify the decision for interlocutory appeal.

This Friday from 10am until 3:45pm CT Chicago Kent is putting on an interesting, online symposium exploring Exhibit A IP litigation. It will no doubt have a big focus on Northern District cases and jurisprudence because so much of the Schedule A litigation is filed in Chicago. Register here for this free seminar.

The day consists of opening remarks followed by three panels – details here. Presenters include some of Chicago’s best known IP academics, including Cynthia Ho and Graeme Dinwoodie, as well as professors from across the country. If you are dealing with Schedule A litigation, from either side of the v, or interested in what is happening in the Northern District, this event will be well worth your time.

Meihua Yan v. The Individuals, Partnerships and Unincorporated Associations Identified on Schedule “A,” No. 24 C 5403, (N.D. Ill. July 25, 2025) (Ellis, J.).

Judge Ellis granted in part defendant Forious’ Rule 11 motion and dismissed plaintiff Meihua Yan’s design patent infringement claims with prejudice as a sanction for a pattern of misrepresentations to the Court and abuse of the judicial process in this Schedule A case involving faucet design patents.

Yan sued 32 entities for allegedly infringing her design patent for a faucet set. The Court initially granted an ex parte temporary restraining order (TRO) and then a preliminary injunction (PI), freezing defendants’ assets in its amazon accounts. When defendant Forious vigorously contested the claims, the Court increased Yan’s bond for its injunction from $10k to $320k. Unable to post the increased bond, Yan moved to dissolve the injunctions.

The Court found Yan engaged in sanctionable conduct by:

  • Deliberately misrepresenting her relationship with Heshan KES Sanitary Ware Limited, denying she owned the company when evidence showed she owned 99.0099% of its shares.
  • Repeatedly changing her story about the ownership of the KES Amazon store as Forious uncovered additional evidence proving ownership.
  • Failing to comply with Court orders and missing numerous deadlines.
  • Attempting to avoid responsibility for damages caused by the TRO through obfuscation.

The Court dismissed Yan’s claims with prejudice under both Rule 11 and its inherent authority, finding that Yan’s conduct went beyond “clumsy lawyering” to constitute bad faith litigation tactics. The Court noted it had given Yan numerous warnings about her litigation strategy “spiraling out of control,” including expressing that the Court’s “patience with this case [was] coming to a close.”

The Court emphasized that Yan appeared to have filed her case without appreciating she may have to file a bond to prosecute her case in the manner she wanted, and then engaged in a “shell game” to avoid paying for damages caused by a TRO that should not have been entered.

The Court also denied Yan’s motion to reduce the bond from $320k down to $46k, noting the bond must account for potential damages to all wrongfully enjoined defendants, not just Forious. The Court also denied Forious’ request for attorney’s fees, finding dismissal with prejudice sufficient punishment.

The Northern District of Illinois is accepting applications for a full-time United States Magistrate Judge position in the Eastern Division in Chicago. This prestigious role comes with significant responsibilities, a highly competitive annual salary of $227,608 and after 14 years of service and reaching age 65, a retiring Magistrate Judge receives an annuity equal to their salary at retirement.

A qualified applicant must:

  • Have at least five years of active law practice and be a member in good standing for five years in an eligible jurisdiction;
  • Be qualified for all office duties; demonstrate strong moral character, commitment to justice, emotional stability, maturity, good health, patience, courtesy and sound judgment;
  • Be under 70 years old;
  • Not be related to a district court judge; and
  • Follow financial disclosure rules per the Ethics in Government Act of 1978.

Interested applicants should submit their applications through the Northern District’s website by 5:00 p.m. on September 26, 2025.  For more information and a list of mandatory attachments click here.

The Federal Bar Association is hosting an event introducing the Northern District of Illinois’ newest district court judges on Thursday, September 11, 2025 from 12:00 p.m. until 1:30 p.m. The event will take place at the Chicago Bar Association, 321 S Plymouth Court, in Chicago. Lunch will be provided, along with one hour of credit, pending approval.

Attendees will have the opportunity to gain valuable insights into topics such as summary judgment, Daubert standard, and effective advocacy in federal court.  Elizabeth Ekl, of Burns Noland LLP will be the moderator.  The panel will feature the following distinguished judges:

  • Hon. Georgia Alexakis
  • Hon. Jeffrey Cummings
  • Hon. Jeremy Daniel
  • Hon. Sunil Harjani
  • Hon. Lindsay Jenkins
  • Hon. April Perry

Register here for the event.