Fellowes, Inc. v. Acco Brands Corp., No. 10 C 7587 & 11 C 8148, Slip Op. (N.D. Ill. Apr. 22, 2019) (Leinenweber, J.).

Judge Leinenweber granted in part plaintiff Fellowes’ motion to amend its complaint adding a new patent and addressing the results of Patent Office proceedings in this patent case involving improved paper shredding technology.

Of particular note, the Court held as follows:

  • The Court sua sponte lifted the stay pending the Patent Trial & Appeal Board proceedings.
  • The Court granted Fellowes’ leave to amend its complaint removing patents and claims it was no longer pursuing based upon the outcome of Patent Office proceedings. The Court also noted that for each asserted patent, Fellowes was required to identify the asserted claims.
  • As to Fellowes’ allegations regarding its newly issued ‘704 patent, those claims identical to claims already allowed by the Patent Office in the invalidity proceedings could be added to the suit. Similarly, the claims with new language were not made materially different by that new language. So, the Court denied leave to amend adding those claims.