Von Holdt v. A-1 Tool Corp., No. 04 C 4123, Slip Op. (N.D. Ill. May 17, 2010) (Manning, J.).

Judge Manning granted defendants (collectively "A-1 Tool") summary judgment as to plaintiff’s (collectively "Plas-Tool") patent claims based upon a lack of notice and as to the plaintiff’s Computer Fraud and Abuse Act ("CFAA") claims, and chose not to exercise supplemental jurisdiction over the remaining state law claims. A-1 Tool sought summary judgment of a lack of pre-suit notice of the alleged patent infringement. The issue was dispositive because Plas-Tool’s patent expired before the suit was filed. So, pre-suit-notice – actual or constructive – was required in order for Plas-Tool to have any damages.

Plas-Tool’s general statements that they would sue A-1 Tool if it ever infringed Plas-Tool’s patents did not create actual notice. And the alleged patent knowledge of Plas-Tool’s former employee who joined A-1 Tool could not be imputed to A-1 Tool for purposes of actual notice. A-1 Tool’s burden was to make an evidentiary showing that could lead a reasonable person to find that Plas-Tool complied with the marking requirements by marking substantially all of Plas-Tool’s relevant product. Plas-Tool did not meet its burden of proof. Plas-Tool’s only evidence of marking compliance was testimony from Plas-Tool’s 30(b)(6) witness. The witness testified that Plas-Tool’s policy was to mark its products, but had no recollection of what specifically was marked. And the Court held that evidence of a company policy to mark without any other evidence of marking compliance was insufficient to overcome summary judgment. Beyond the 30(b)(6) testimony, Plas-Tool’s only marking evidence was having sent a customer two molds including patent markings. But when the molds were returned, one of them had the patent marking covered up, suggesting the product was made from the mold had not been marked. The Court, therefore, granted A-1 Tool summary judgment on Plas-Tool’s patent claims for lack of notice.

The Court also granted A-1 Tool summary judgment on Plas-Tool’s CFAA claim. Plas-Tool alleged that its former employee improperly accessed and damaged CAD files related to the patented products. But Plas-Tool was not able to identify any damage to the allegedly accessed files and the CFAA was not designed to deal with disgruntled former employees that took electronic files as they left. Also, Plas-Tool was unable to show the required $5,000 in damages within one year of the alleged damage. The loss Plas-Tool was able to show was not related to fixing damaged files, as required by the CFAA. Plas-Tool’s alleged damage was related to a forensic review that allegedly showed that the former employee tampered with the files.

Having granted summary judgment on the federal patent claim and the CFAA claim, the Court declined to exercise supplemental jurisdiction over Plas-Tool’s state law claims.