Assoc. Bus. Process Mngmt. Profs. Int’l. v. Brainstorm Group, Inc., No. 13 C 6213, Slip Op. (N.D. Ill. Aug. 24, 2015) (Gilbert, Mag. J.).

Judge Gilbert granted in part plaintiff ABPM’s motion to enforce the parties’ settlement agreement in this trademark dispute. Defendant Brainstorm Group agreed not to use the term “CBPMP” subject to

TRT Transportion, Inc., d/b/a Chicago Trolley Co. v. Chicago Trolley Rentals, Inc., No. 11 C 3693, Slip Op. (N.D. Ill. Jul. 26, 2012) (Tharp, J.).

Judge Tharp adopted Judge Cox’s report and recommendation enforcing the parties’ oral settlement agreement placed on the record at the conclusion of a settlement conference.  The record was

Transportion, Inc. d/b/a Chicago Trolley Co. v. Chicago Trolley Rentals, Inc., No. 11 C 3693, Slip Op. (N.D. Ill. Jan. 21, 2012) (Cox, Mag. J.).

Judge Cox recommended granting plaintiff’s motion to enforce the parties’ oral agreement and denied defendant’s motion for declaration of the absence of an agreement in this trademark case.  At

Trading Techs. Int’l., Inc. v. BCG Partners, Inc., No. 10 C 715 (Consolidated), Slip Op. (N.D. Ill. Sep. 2, 2011) (Kendall, J.).
Judge Kendall granted defendants’ motion to strike references to settlement discussions in plaintiff Trading Technologies (“TT”) complaints, and denied the parties’ various motions to dismiss each others pleadings in their patent cases involving trading software. TT used various of its settlement documents to allege certain defendants’ actual knowledge of both TT’s patents and defendants’ alleged infringement of those patents. TT acknowledged that the documents were settlement documents. The Court noted that TT could not waive FRE 408 even for its own documents and held that TT’s attempted use was improper pursuant to FRE 408. TT used the documents to prove two elements of liability for indirect infringement – knowledge of the patents and the alleged infringement. The Court, therefore, struck all references to the documents pursuant to Fed. R. Civ. P. 12(b). The Court denied defendants’ motions to dismiss TT’s indirect infringement claims. Even after striking the settlement documents, TT pled sufficient facts:
• TT made a general allegation of knowledge which was not alone sufficient, but was adequately supported.
• TT alleged that each defendant competed with TT. It was “not a stretch” to presume that TT’s competitors would be watching TT’s patents.
• TT alleged that defendants were aware of the patents through various suits. The Court voted conflicting case law regarding whether these suits could create notice.
• TT denied that defendants encouraged infringement by advertising allegedly infringing products and encouraging them to infringe by using the software products.
The Court denied TT’s motion to strike defendants’ noninfringement and invalidity affirmative defenses and then related counterclaims calling the motions a “waste of time”:
• The defendants’ bare-bones affirmative defenses were consistent with standard patent litigation practice and put TT on notice.
• The defenses were also consistent with the Local Patent Rules which require more detailed allegations early in discovery. See LPR 2.3.
• TT’s affirmative defenses as to one defendant were “really identical” to those TT sought to strike.
• Defendant had a right to maintain their declaratory judgment counterclaim for findings of noninfringement and invalidity.

Continue Reading Trading Technologies: Party Cannot Waive FRE 408 Protection As to its Communications

Balshe LLC v. Ross, No. 08 C 3256, Slip Op. (N.D. Ill. Jul. 7, 2011) (Zagel, J.).
Judge Zagel granted in part defendants’ motion to reconsider the Court’s prior ruling regarding the parties’ settlement agreement in this case regarding a patent to a system of pooling life insurance policies to create a predictable income stream. Pursuant to the agreement, defendants were to transfer their respective interests in the patent to newly-created, third party Institutional Pooled Benefits LLC (“IPB”). Defendants refused to transfer their rights, arguing that provisions of IPB’s operating agreement were in tension with the agreement.
The Court held that, while the agreement did not require that defendants sign IPB’s operating agreement, terms of the operating agreement did require defendants’ signature. Those signatures, however, were mere formalities.
Defendants’ argument that they did not agree to naming the Newco contemplated by the agreement IPB was no different than the argument in defendants’ original papers and was, therefore, improper as a motion for reconsideration.
The Court denied defendants’ request, in its reply brief, for additional relief. Defendants were limited to the relief sought in their motion to reconsider.
Normally, courts do not consider new evidence presented in a reply. But in light of the particular circumstances of this case, the Court considered defendants’ new evidence offered in their reply.

Continue Reading Court Reconsiders Ruling re Patent Settlement Agreement

Zojo Sol’ns., Inc. v. Cooper Tools, Inc., No. 10 C 1504, Slip Op. (N.D. Ill. Jun. 15, 2011) (Norgle, J.).
Judge Norgle entered final judgment as part of an agreed settlement that had been approved by the Department of Justice in this false patent marking case, which was entered before President Obama signed the America Invents Act. Of particular interest:
Any litigation involving alleged false marking before the date of the judgment was barred.
Defendant Cooper Tools was free to sell existing inventory with the accused markings as of the Effective Date until such product was fully depleted.

Continue Reading False Patent Marking Settlement Allows Sales of Existing Marked Product

The Counselors of Real Estate v. Masters Commercial Real Estate, Inc., No. 11 C 3173, Slip Op. (N.D. Ill. Aug. 18, 2011) (St. Eve, J.).
Judge St. Eve entered a consent judgment as part of a settlement in this trademark dispute involving the CRE and CRE marks. Here were the key elements of the judgment:
Defendant Masters Commercial Real Estate could not use the letters “CRE” in “sequence or substantial sequence”, except when referring to plaintiff, in relation to real estate services.
Defendant was also enjoined from using the letters “MCRE” in sequence or substantial sequence.

Continue Reading Consent Judgment Enjoins Defendants’ Use of Its Own Initials

Cement-Lock v. Gas Tech. Institute, No. 05 C 0018 (N.D. Ill. Oct. 5, 2009) (Pallmeyer, J.).
Judge Pallmeyer issued an order dismissing this patent case with prejudice based upon the parties’ settlement. The Court previously presided over a jury trial resulting in a verdict for plaintiffs Cement-Lock LLC and Alderman Richard Mell on behalf of Cement-Lock Group (collectively “CLG”) on various RICO and breach of fiduciary duty claims. The jury awarded CLG $15M in damages, which was resolved by the settlement.
This was a dispute over the control and use of Cement-Lock technology (the “Technology”) which decontaminated certain waste products and used the decontaminated waste as a beneficial cement additive. CLG asserted various IP claims, including Lanham Act unfair competition, deceptive trade practices and trademark infringement. GTI also allegedly claimed to own and have developed the Technology.

Continue Reading Lanham Act Case Settles After Jury Verdict

Hollister Inc. v. ComvaTec Inc., No. 10 C 6431, Slip Op. (N.D. Ill. Jun. 21, 2011) (Kennelly, J.).
Judge Kennelly granted defendant ConvaTec’s motion for summary judgment that its accused bowel management systems were covered by a patent cross-license agreement between ConvaTec and plaintiff Hollister’s predecessor Zassi. The agreement released each party for “any and all past, present or future claims” including patent infringement claims involving the parties then existing product lines.
The agreement excerpted new features from the release. But ConvaTec’s accused Flexi-Seal products had the same designs as ConvaTec’s products at the time of the agreement.
Hollister’s argument that only covenants not to sue, not releases, may discharge future claims was not founded in the law. Hollister cited no cases that stood for that point.

Continue Reading Patent Cross-License Releases Future and Past Claims

Trading Techs. Int’l., Inc. v. TradeHelm, Inc., No. 10 C. 931, Slip Op. (N.D. Ill. May 2011) (Kendall, J.).
Judge Kendall entered the parties – Trading Technologies (“TT”) and TradeHelm – agreed consent order, as part of their settlement in this futures trading software – there is much more on this and related cases in the Blog’s archives case. The parties agreed as follows:
TT’s patent infringement claims as to its ‘999 and ‘056 patents were dismissed.
TradeHelm admitted infringement as to TT’s ‘411, ‘768, ‘382 and ‘992 patents, but not the ‘056 and ‘999 patent-in-suit.
TradeHelm admitted validity and enforceability of the ‘304, ‘132, ‘411, ‘768, ‘382 and ‘996 patents, but again not the ‘056 or the ‘999 patents-in-suit.
TradeHelm was permanently enjoined from infringing, unless TT permitted it, the ‘132, ‘304, ‘411, ‘768, ‘382 and ‘996 patents. But again, not the ‘056 and ‘999 patents-in-suit.

Continue Reading Trading Technologies: Settlement and Consent Judgment