Jurisdiction

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SP Techs., LLC v. Garmin Int’l., Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Nov. 3, 2009) (Pallmeyer, J.).*
Judge Pallmeyer denied the individual inventor’s (“Inventor) motion to intervene in this patent case. Inventor sought to intervene in this case arguing that the assignment of his patent to plaintiff SP Technologies (“SPT”) was invalid because SPT coerced Inventor to sign it. The Court held that Inventor’s argument was unpersuasive. Inventor admitted signing the assignment, but argued it was under duress. But the Court held that Inventor could not intervene, even if Inventor could prove the duress. Inventor failed to explain why SPT would not adequately represent Inventor’s interests in the case. In fact, Inventor even agreed that his interests were aligned with SPT. Intervention, therefore, was not proper. Inventor was, however, free to pursue his claims in a separate suit against SPT.
* Click here for more on this case in the Blog’s archives.
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Continue Reading Inventor Not Allowed to Intervene in Patent Dispute

Guiness World Records Ltd. v. John Doe, d/b/a World Records Academy, No. 09 C 2812, Slip Op. (N.D. Ill. Oct. 20, 2009) (Shadur, Sen. J.)
Judge Shadur granted defendant World Records Academy’s (Academy”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trademark dispute regarding plaintiff’s GUINESS WORLD RECORD and WORLD RECORD trademarks. Academy’s website alone did not create specific jurisdiction because it did not allow users to purchase Academy’s products, it only told them how to buy the products. Academy did have limited sales into Illinois – three sales to two customers – and sent form email solicitations to world record holders from Illinois. And the Court held that Academy’s emails and de minimis sales could not create jurisdiction, either general or specific. The Court reasoned that if de minimis sales created jurisdiction, alleged intellectual property infringers could be hailed into almost any jurisdiction nationwide.
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Continue Reading De Minimis Sales Do Not Create Specific Jurisdiction

More Cupcakes, LLC v. Lovemore LLC, No. 09 C 3555, Slip. Op. (N.D. Ill. Sep. 29, 2009) (Kocoras, J.)
Judge Kocoras denied defendants (collectively “Lovemore”) Fed. R. Cir. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction and Fed. R. Cir. P.12(b)(6) motion to dismiss the individual Lovemore defendants’ (collectively “Lovemore individuals”) based upon the fiduciary shield doctrine in this Lanham Act dispute regarding plaintiff More Cupcake’s LOVE MORE mark for use on t-shirts. The Court did, however, grant Lovemore’s §1404 motion to transfer the case to the Eastern District of New York.
The parties agreed that the Court lacked general jurisdiction and argued only specific jurisdiction. The Court held that it had specific jurisdiction based upon the effects test. Lovemore’s alleged infringing acts were aimed at More Cupcakes in Illinois when Lovemore approved sales of allegedly infringing t-shirts to Illinois addresses after being warned of the alleged infringement in a Patent & Trademark Office proceeding and in settlement talks with More Cupcakes. Lovemore’s interactive website coupled with sales to Illinois also created specific jurisdiction. The fact that Lovemore’s most recent Illinois sale was to More Cupcakes’ counsel did not impact the analysis. Lovemore still knowingly sold product within Illinois.
The fiduciary shield doctrine did not apply to the individual defendants, who were both owners and operators of Lovemore. The fiduciary shield doctrine denies personal jurisdiction over individuals who contact Illinois solely for the benefit of their employees and not themselves. But the doctrine does not apply to owners of a company that have discretion over whether or not they do business in Illinois. As Lovemore owners, therefore, the Lovemore individuals are not protected by the fiduciary shield doctrine.
For similar reasons, while corporate officers are generally not personally liable for corporate trademark infringement claims, More Cupcakes’ claims against the Lovemore individuals survived. Both individuals were owners of Lovemore and the Complaint alleged that they personally directed the allegedly infringing acts.
Finally, the Court transferred the case to the Eastern District of New York. While More Cupcakes’ chosen forum deserves deference, the material events regarding the alleged infringement all occurred in New York where the t-shirts were designed, made, offered for sale and sold. And the Court held that the convenience factors, such as locations of documents and witnesses, were all neutral.
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Continue Reading Owner Can Be Personally Liable for Corporate Trademark Infringement

Occidental Hoteles Mgt., S.L. v. Hargrave Group, LLC, No. 08 C 2165, Slip Op. (N.D. Ill. Jul. 24, 2009) (Gottschall, J.)
Judge Gottschall held that the Court lacked personal jurisdiction over plaintiff’s trademark claims related to defendant’s use of the sites in a suit which allegedly incorporates plaintiff’s marks, to tell the alleged story of plaintiff’s alleged negligence. Defendant did not maintain offices or employees in Illinois and did not maintain an agent for service in Illinois. In fact, defendant’s only Illinois connection was the listing on a website of defendant’s of a martial arts instructor in Illinois. The fact that defendant also maintained interactive websites could not create general jurisdiction pursuant to Zippo. Interactive websites alone can at most create specific jurisdiction. The Court also lacked specific jurisdiction. The websites in suit were not interactive, and the only site with an Illinois connection, the marital arts site, was not in the suit.
While a Court generally cannot transfer a cure pursuant to § 1409(a) without first having jurisdiction and venue, courts can do so in the interests of justice. In this case, the Court held that justice required a transfer to the Northern District of Oklahoma. Both parties alternatively sought transfer and the case had already been in the Northern District of Illinois for fifteen months.
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Continue Reading Interactive Websites Can Only Create Specific Jurisdiction Without More

The Ticketreserve, Inc. v. Viagogo, Inc., No. 08 C 502, Slip Op. (N.D. Ill. Aug. 11, 2009) (Kendall, J.).
Judge Kendall denied defendants’ Fed. R. Civ. P. 12(b)(3) motion in limine for improper venue and granted defendant Viagogo, Inc.’s (“Viagogo”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Defendants agreed that venue was improper based on an arbitration clause in a nondisclosure agreement the parties requested when they explored a joint venture. Defendants agreed that the patented technology was disclosed pursuant to the nondisclosure agreement.
But because plaintiff’s international patent on the same technology as the U.S. patent, issued before the nondisclosure agreement the patent infringement claim was expressly excluded from the nondisclosure agreement and its arbitration claims.
The Court then dismissed Viagogo for lack of personal jurisdiction. Viagogo had no contract with Illinois to create personal jurisdiction. And while the viagogo.com interactive website likely created specific jurisdiction for its owner, the evidence suggested that Viagogo Ltd., which did not contest personal jurisdiction owned and operated the website, not Viagogo, Inc.
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Continue Reading Nondisclosure Arbitration Clause Does Not Include Patent Infringement Claims

James H. Anderson, Inc. v. Johnson, No. 08 C 6202, Slip Op. (N.D. Ill. Jul 27, 2009) (Coar, J.).
Judge Coar granted defendants’ Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff’s copyright malpractice claim for lack of jurisdiction. Plaintiff argued that the Court had jurisdiction over its state law malpractice claim based upon 28 U.S.C. Section 1338(a) which creates the federal court’s exclusive jurisdiction over patent and copyright cases. The Court held that it did not have jurisdiction based upon the copyright claim in the underlying action. Federal jurisdiction requires not just a contested federal issue, but a substantial federal issue. The underlying was not a substantial issue. Furthermore, the federal interest in regulating malpractice was outweighed by the state interest. And the Court reasoned that copyright malpractice was different than patent malpractice. Copyright cases are fact intensive and do not require legal analysis of the claims, as required in patent law.
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Continue Reading Court Lacks Jurisdiction Over Copyright Malpractice Claim

Poparic v. Lincoln Square Video, No. 08 C 3491, Slip Op. (N.D. Ill. Jun. 25, 2009) (Kocoras, J.).
Judge Kocoras granted defendant Taste of Europe’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Plaintiff alleged that Taste of Europe sold a single copy of plaintiff’s copyrighted movie in its Indiana store and argued only that the Court had general jurisdiction over Taste of Europe, without addressing specific jurisdiction. Taste of Europe presented evidence that it was an Indiana-based business that did not advertise in Illinois or conduct any business in or with Illinois. Plaintiff did not present any evidence of Taste of Europe’s Illinois connections, but sought jurisdictional discovery. The Court, however, found that it lacked personal jurisdiction, holding that jurisdictional discovery was not appropriate where plaintiff had identified no evidence showing Illinois connections to overcome Taste of Europe’s proofs.
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Continue Reading Request for Jurisdictional Discovery Does Not Overcome Lack of Evidence

Merrill Primack v. Pearl B. Polto, Inc., No. 08 C 4539, Slip Op. (N.D. Ill. Jul. 8, 2009) (Dow, J.).
Judge Dow granted the Polto defendants’ (collectively “Polto”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act dispute regarding plaintiff’s “Credit Lifeline” mark. Plaintiff alleged only specific jurisdiction, not general jurisdiction. Plaintiff’s evidence of specific jurisdiction was based upon the following facts: 1) Polto’s 2006 trip to Chicago to put on a Credit Lifeline seminar; and 2) Polto’s interactive website. Polto, however, had not been aware of plaintiff’s trademark during the 2006 trip. Plaintiff did not file for its trademark until 2008. So, when Polto made its 2006 trip there was no evidence of notice of plaintiff’s mark. Furthermore, no one attended Polto’s 2006 Chicago seminar and Polto returned to Philadelphia immediately after leaving the seminar site. Finally, the Court held that Polto’s interactive website by itself could not confer specific jurisdiction.
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Continue Reading Single Visit to Jurisdiction Before Notice of a Trademark Does Not Create Jurisdiction

SourceOne Global Partners, LLC v. KGK Synergize, Inc., No. 08 C 7403, Slip Op. (N.D. Ill. May 13, 2009) (Schenkier, Mag. J.).
Judge Schenkier denied declaratory judgment defendant KGK’s motion to dismiss plaintiff SourceOne’s declaratory judgment claims of noninfringement and invalidity of KGK’s patents. KGK allegedly asserted its patents against SourceOne’s cholesterol fighting drug Cholesstrinol. KGK argued that the Court lacked subject matter jurisdiction because SourceOne did not, and could not name the co-owner of KGK’s patent, the United States government. The Court held that it had subject matter jurisdiction over SourceOne’s patent declaratory judgment claims, reasoning that otherwise the government’s co-ownership of a patent would strip accused infringers of ever seeking declaratory actions.
The Court also held that, while the government was a required party pursuant to Fed. R. Civ. P. 19(a), the Rule 19(b) factors weighed in favor of allowing SourceOne’s case to proceed despite its inability to join the government. The Court held that allowing KGK to prevent a declaratory suit because it was not possible to name the government would give KGK too much power as a patent holder:
The approach urged by KGK (and the Government) would allow KGK to threaten legal action against SourceOne (or others) with impunity. For those who gave into those threats, KGK would receive the benefit of the patent (a cessation of the alleged infringing conduct and perhaps compensation) without the need to do anything more. For those who might rear up and seek a judicial resolution, KGK could retreat behind the Government’s cloak of immunity and prevent the infringement or validity of the ‘125 Patent from ever being tested in court.
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Continue Reading Patentholder Cannot Use Government Co-Owner to Avoid Declaratory Suits

MacLean-Fogg Co. v. Edge Composites, L.L.C., No. 08 C 6367, Slip Op. (N.D. Ill. Apr. 14, 2009) (Conlon, J.).
Judge Conlon granted defendants’ motion to dismiss. Plaintiffs (collectively “MacLean”) alleged that defendant Edge Composites (“Edge”) violated plaintiffs’ carbon fiber bicycle wheel patent and together with the individual defendant, a former MacLean employee and current Edge employee, violated MacLean’s trade secrets, as well as breaching the individual defendant’s nondisclosure agreement with MacLean. First, the Court held that the MacLean entities that lacked an ownership in the patent when the complaint was filed lacked standing. It was not sufficient that the MacLean entities entered an agreement creating joint ownership amongst them after the complaint was filed.
The Court also held that it lacked supplemental jurisdiction over MacLean’s state law trade secret and breach of contract claims. The patent infringement claims were based upon manufacture and sale of carbon fiber wheels. The trade secret and breach of contract claims were based upon defendants’ alleged use of MacLean’s trade secrets. Because MacLean never met its burdens of showing how the claims overlapped factually, the Court dismissed the state law claims for lack of subject matter jurisdiction.
The Court also held that it lacked personal jurisdiction over the individual defendant because MacLean did not respond to that part of defendants’ summary judgment argument. The Court also held that it lacked personal jurisdiction over Edge. Edge was not registered to do business in Illinois, had no facilities in Illinois, had no assets in Illinois, did not advertise in Illinois, and did not do business with Illinois residents. The only Illinois sales MacLean proved were by its representatives for purposes of this suit. And Edge’s website did not allow viewers to purchase products.
Finally, the Court dismissed MacLean’s trade secret claim for failure to state a claim. MacLean’s trade secret misappropriation allegations were all made on information and belief. The Court held that information and belief alone was not enough, unless the facts were inaccessible to MacLean and MacLean had a reasonable basis to believe the facts were true. Because MacLean did not provide any grounds for its suspicion, information and belief was not sufficient.
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Continue Reading Post-Filing Patent Assignement Cannot Create Standing