Jurisdiction

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Von Holdt v. A-1 Tool, No. 04 C 4123, Slip Op. (N.D. Ill. Aug. 3, 2010) (Manning, J.)
Judge Manning granted in part plaintiffs’ motion to reconsider the Court’s opinion granting defendants summary judgment on plaintiffs’ patent claims and dismissing plaintiffs’ related state law claims for lack of supplemental jurisdiction.
The Court reversed its supplemental jurisdiction decision because Illinois law barred the refiling more than once of a claim that was voluntarily dismissed. Presented with the “new” fact that plaintiffs had previously filed suit in state court, the Court vacated its prior decision and ordered plaintiffs to brief whether the Court should retain jurisdiction over the state law claims.
The Court, however, did not reverse its summary judgment of noninfringement. On that Plaintiffs agreements were a “rehash” of its prior agreements.
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Continue Reading Court Reconsiders Supplemental Jurisdiction to Assert Tort Claims

Merrill Primack v. Polto, Inc., No. 08 C 4539, Slip Op. (N.D. Ill. Jul. 8, 2010) (Dow, J.).
Judge Dow granted defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss this Lanham Act case over plaintiff’s “Credit Lifeline” mark for lack of personal jurisdiction. Plaintiff did not claim general jurisdiction, relying only upon specific jurisdiction. Defendants’ only Illinois contacts were the sale of 212 books unrelated to the Credit Lifeline mark into Illinois. And defendants’ offer for sale of its Credit Lifeline book via an interactive website could not alone create specific jurisdiction. Similarly, injury to intellectual property alone did not create jurisdiction based upon the effects test. Harm to the plaintiff in the jurisdiction did not satisfy the test by itself. Defendant’s actions must have been intentional, aimed at the forum state and defendant had to know that plaintiff’s harm was likely to be suffered. But there was no indication that defendant was even aware of plaintiffs’ Credit Lifeline mark, or of plaintiff, from defendant’s first use of the mark in 2001 until, at the earliest, when plaintiff registered its mark in 2008.
Finally, the Court held that there was no persuasive reason that exercising personal jurisdiction would have comported with “fair play and substantial justice.”
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Continue Reading Unrelated Sales Do Not Create Specific Jurisdiction

MPH Techs. Oy v. Zyxel Coms. Corp., No. 10 C 684, Slip Op. (N.D. Ill. Jul. 16, 2010) (Darrah, J.).
Judge Darrah granted defendants’ 28 U.S.C. § 1404(a) motion to transfer this patent case to the Northern District of California. Venue was proper in both districts. Plaintiff’s choice of forum was only given slight weight because the Northern District of Illinois was not plaintiff’s home forum and had only a weak connection to the case. The convenience of witnesses weighted in favor of transfer. All of defendants’ employee witnesses were in the Northern District of California and, more importantly, half of the non-party witnesses were in the Northern District of California. Three of plaintiff’s four witnesses were in its home country – Finland. Access to proofs is given little deference in light of wide-spread use of digital discovery, but still leaned slightly in favor of transfer because defendants’ documents were largely in California.
The situs of material events was neutral because it is largely irrelevant in patent cases. The convenience of parties weighed in favor of transfer. Plaintiff’s inconvenience in traveling from Finland to Chicago or to Northern California was not significantly different.
The interests of justice weighed slightly in favor of transfer because defendants’ employees had a greater interest in the case than Illinois citizens did. Otherwise, the Courts were similarly capable of handling patent cases and had comparable times to resolution, with only a few months difference in each category.
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Continue Reading Patent Case Transferred to District With Witnesses and Documents

Simonian v. Merck & Co., No. 10 C 1297, Slip Op. (N.D. Ill. June 1, 2010) (Shadur, Sen. J.).
In response to defendant Merck’s motion to dismiss plaintiff’s false patent marking action, the Court sent a copy of its prior decision in Zojo Solutions, Inc. v. The Stanley Works, No. 10 C 1174, Slip Op. (N.D. Ill. May 12, 2010) (Shadur, Sen. J.). In that case, the Court held that marking with expired patents was actionable and that an individual citizen could bring a false marking action pursuant to 35 U.S.C. § 292. The Court ordered the parties to appear on the notice date to discuss the course of the litigation.
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Continue Reading False Patent Marking Standing Motion Decided Without Briefing

Zojo Solutions, Inc. v. The Stanley Works,No. 10 C 1175, Slip Op. (N.D. Ill. May 12, 2010) (Shadur, Sen. J.).
Judge Shadur denied defendants’ motion to dismiss this false patent marking case before plaintiff responded. First, the Court held that marking with expired patents was actionable pursuant to 35 U.S.C. § 292(a), citing Forest Group, Inc. v. Bon Tool Corp., 590 3d 1295 (Fed. Cir. 2009). Also citing Forest Group, the Court held that private citizens had standing. The Court reasoned that if there was not standing, the Federal Circuit would have been obligated to address it before deciding the substantive issues. Finally, the Court characterized false patent marking cases as an “infestation of dandelions” which “dot the greensward of patent litigation.”
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Continue Reading False Patent Marking Cases are Like an “Infestation of Dandelions”

Alta Mere Indus., Inc. v. DBC Window Tinting, Inc., No. 10 C 266, Slip Op. (N.D. Ill. May 6, 2010) (Darrah, J.).
Judge Darrah granted defendant Impact’s Fed. R. Civ. 12(b)(2) motion to dismiss plaintiff Alta Mere’s Lanham Act claims regarding its marks related to automotive window tinting and alarm systems. Impact operated a local Texas business and had no other identified Illinois contacts. Alta Mere argued that the Court had specific jurisdiction over Impact because of Impact’s interactions with other defendants who were Alta Mere franchisees, as well as two letters allegedly sent to Impact warning that a franchise agreement governing defendant Cader’s use of the Alta Mere marks were governed by Illinois law.
The Court considered jurisdiction over each defendant separately and, therefore, did not consider the other defendants’ Illinois contacts in analyzing jurisdiction over Impact. Impact alleged that it never received Alta Mere’s letters. But even if Impact had received them, correspondence sent to a defendant outside the forum could not alone create jurisdiction. The letters were “random, fortuitous, or attenuated contacts.”
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Continue Reading Letter Sent Outside Illinois Cannot Create Jurisdiction

Viskase Companies, Inc. v. World Pac Int’l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 10, 2010) (Bucklo, J.).
Judge Bucklo granted declaratory judgment defendants’ (collectively “World Pac”) motion to dismiss declaratory judgment plaintiff Viskase’s state law tort claims as preempted by Viskase’s declaratory judgment patent claims. Patent holders have a basic right to assert their patents. In order to make tort claims based upon patent assertions, therefore, Viskase had to show that defendants acted in bad faith in asserting their patents, both objectively and subjectively. Viskase’s general statement of bad faith did not meet the Twombly/Iqbal pleading standards. Furthermore, defendants need not have stated in their assertion letters to third parties that Viskase objected to defendants’ claims.
The Court had specific jurisdiction over foreign defendant World Pac. World Pac’s filing for U.S. patents and its enforcement letters regarding the patents-in-suite created specific jurisdiction.
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Continue Reading Tort Claims Preempted by Patent Claims Absent Objective & Subjective Bad Faith

Chicago Bd. Options Exchange Inc. v. Realtime Data, LLC d/b/a IXO, No. 09 C 4486, Slip. Op. (N.D. Ill. Jan. 8, 2009) (Lindberg, Sen. J.).
Judge Lindberg granted declaratory judgment for defendant Realtime’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. The parties agreed that the Court lacked general jurisdiction and focused their arguments on specific jurisdiction. Because plaintiff Chicago Board Options Exchange (“CBOE”) brought declaratory judgment claims, the analysis focused upon whether Realtime’s patent enforcement activities were directed at the jurisdiction. CBOE argued that specific jurisdiction was created by Realtime’s Texas patent infringement suit against, among others, Chicago-based defendants, including eventually CBOE. But the Court held that Realtime’s Texas action alone did not create specific jurisdiction, and the Court did not consider the Texas suit against CBOE because CBOE was not added to the Texas action until after the instant suit was filed.
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Continue Reading Jurisdiction Over Declaratory Patent Claims Based Upon Location of Enforcement

Zimnicki v. Neo-Neon Int’l, Ltd., No. 06 C 4879 (N.D. Ill. Nov. 9, 2009) (Norgle, J.)
Judge Norgle denied defendant Neo-Neon International’s (“Neo-Neon”) Fed. R. Civ. P. 12(c) motion for judgment on the pleadings regarding plaintiff’s unjust enrichment claim in this copyright dispute. Plaintiff sued Neo-Neon and others for alleged infringement of plaintiff’s copyrighted decorative holiday lighting products. Plaintiff also asserted an unjust enrichment claim against Neo-Neon alleging that Neo-Neon profited from making, using and selling products based upon plaintiff’s designs. The unjust enrichment claim met the first prong of the preemption test because plaintiff admitted the designs at issue were copyrighted. But the second prong was not met. Neo-Neon’s accused acts occurred outside the US, in China. Because the alleged acts were extraterritorial, they did not fall within the exclusive rights granted to copyright holders pursuant to §106. This was true even though the same acts in the US would presumably have been covered and, therefore, preempted.
* Click here for more on this case in the Blog’s archives.
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Continue Reading Unjust Enrichment Claim Based Upon Non-US Acts Not Preempted by Copyright Act

Kolcraft Enter., Inc. v. Chicco USA, Inc., No. 09 C 339, Slip Op. (N.D. Ill. Oct. 23, 2009) (Norgle, J.)
Judge Norgle denied defendant Chicco’s § 1404(a) motion to transfer this patent case to the Eastern District of Pennsylvania, where Chicco’s principle place of business is located. Neither court was more suited for the case in terms of speed or familiarity with the law. The Court also noted that the location of documents was neutral based upon electronic document exchange. The convenience of the parties was also neutral because one party would be inconvenienced by the decision either way. Additionally, the situs of material events was irrelevant as in most patent cases because the comparison of an accused product to a claim does not revolve around any location.
As to non-party witnesses, one inventor was within the Northern District and the other was outside the subpoena power of both districts. And patent prosecution counsel also resided within the Northern District. Additionally, plaintiff agreed to depose all U.S. parties in their home districts, further diminishing that factor. Finally, the Court held that plaintiff’s choice of forum deserved significant weight. The Court, therefore, denied Chicco’s motion to transfer.
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Continue Reading Court Keeps Case, Deferring to Plaintiff’s Chosen Forum