Heathcote Holdings Corp. v. Learning Curve Brands, Inc., No. 10 C 7799 (Kendall, J.).
I generally write about opinions issued by the Northern District, but the parties in this case recently filed their false patent marking settlement agreement. Because of the extreme interest in false marking cases over the last eighteen months, I am posting about the settlement. Plaintiff accused defendants of falsely marking various Thomas the Tank Engine toy trains and related products with two patents. In one instance, the alleged false marking appears to be based upon the omission of one number from the patent number — it read U.S. Patent No. 7,178,68 instead of 7,178,685.
Here are the highlights of the agreement:
Defendants agreed to pay $85,000, with half mailed for overnight delivery directly to the Department of Justice.
The agreement was subject to approval by Department of Justice’s Director of Intellectual Property Staff before becoming final, which was given with minor edits.
The agreement released all false marking claims related to the two patents at issue, but did not attempt to waive any possible false marking by defendant as of the date of the agreement. Of course, it may be that the two identified patents were either defendants’ only patents or the only patents that defendant had marked products with. So, this term may effectively be a complete release of all possible false marking claims.
Neither party admits or denies the constitutionality of the false marking statute.

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SPSS Inc. v. Nie, No. 08 C 66 (N.D. Ill.) (Darrah, Jr.).
The parties recently settled this trademark dispute shortly before trial. For more on the parties’ history and the settlement, click here for Chicago Tribune reporter and Chicago Law blogger Ameet Sachdev’s reporting on the case in the Tribune, and click here for more coverage of the case in the Blog’s archives.

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Earlier this week, the Northern District announced a court-wide Early Settlement Conference Program focused on reducing costs for litigants where there is potential for early settlement. The program was generated by the Northern District magistrate judges, in particular Judge Denlow. The plan provides that at the outset of a case, a judge can send plaintiff via ECF a “Notice to Plaintiff’s Counsel of Early Settlement Program.” That Notice will require plaintiff’s counsel to conduct defendant’s counsel within fourteen days of receiving the Notice if defense counsel has been identified or within fourteen days of defense counsel filing an appearance, if not. If all parties are interested in a judicial settlement conference, they will file a “Request for Early Settlement Conference.” The Request will cause a settlement conference to be scheduled before either the judge or an assigned magistrate judge. Additionally, the parties can file a Request on their own without first receiving a Notice from a judge, if all parties want a judicial settlement conference.
It is great to see that the Northern District is creating a formal process for requesting early settlement conferences. For the most part, my experience suggest that this program just formalizes the Northern District’s standard practices. But it is still very valuable, especially for litigants that are not as familiar with Northern District custom and practice.

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Bajer Design & Marketing, Inc. v. Base4 Group, Inc., No. 08 C 02296, Slip Op. (N.D. Ill. Nov. 12, 2008) (Coar, J.).
Judge Coar entered the parties consent judgment, holding that defendant Base4 infringed plaintiff Bajer Design’s patents and trademarks, as well as granting judgment for Bajer Design as to its related state law claims. The Court also awarded Bajer Design damages equal to slightly more than 20% of Base4’s gross sales. Finally, the Court permanently enjoined Base4 from making, using or selling the infringing product and from using Bajer Design’s POP-UPS! and POP OPEN trademarks, absent a license from Bajer Design.

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Illinois Computer Research, LLC v. Google Inc., No. 07 C 5081 (N.D. Ill.) (Pallmeyer, J.).
The parties in this case filed a Stipulation of Dismissal this week — click here to read it. Of course, details of the settlement were not disclosed. But this appears to close what had been a very contentious dispute — click here to read the Blog’s coverage of the case.
One other note about the case, I had been meaning to cover plaintiff’s motion to strike some of defendant’s pleadings for using variations of the term “shell corporation,” arguing that the term is derogatory in a manner similar to the “patent troll” moniker. Judge Pallmeyer ruled on the motion in a Minute Order stating that the Court would no longer use the terms, but denying the motion to strike. Because the Minute Order does not provide much analysis and because the issue was already covered very well by Joe Mullin at The Prior Art blog — click here to read Mullin’s post — I will not do a separate post on the motion. But if you are interested in the historical, legal use of the term, the pleadings on the motion are an excellent information source.

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Mullen v. Society of Stage Directors & Choreographers, No. 06 C 6818 (N.D. Ill.) (Coar, J.).
Judge Coar dismissed this case based upon the parties’ settlement in late 2007.* Plaintiffs were the various production heads of the Chicago production of the musical “Urinetown!” (“Chicago Production”). The Chicago Production was performed pursuant to a license from Blue Dog Entertainment, LLC. Despite that license, plaintiffs each received a cease and desist letter from counsel for defendants (the heads of production of the Broadway Urinetown! production (“Broadway Production”) and their unions USA and the Society of Stage Directors & Choreographers (“SSDC”). The letter warned that plaintiffs willfully copied copyrighted aspects of the Broadway Production and attempted to pass off the Chicago Production as the award-winning Broadway Production. Defendants also held a press conference during which they publicly stated that the plaintiffs “plagiarized” the Broadway Production. Plaintiffs responded by filing suit seeking declaratory judgments that the Chicago Production did not infringe any of plaintiffs’ copyrights and that it was not Lanham Act passing off. And based upon the press conference, plaintiffs included a defamation claim.
I am writing about this relatively old settlement because Gordon Firemark has an excellent post at his TheatreLawyer blog — click here to read the post — about the settlement of a similar case filed against an Ohio Urinetown! production at about the same time this case was initiated. Firemark provides excellent advice for productions that license a copyrighted play and consider using elements of a famous production of the play:
The lesson for producers is clear. Obtaining production rights from a publisher (such as Samuel French, Tams-Witmark, Rodgers & Hammerstein, etc.), does NOT include the right to copy all or part of the broadway, off-broadway or other original production. It is incumbent on producers to either (a) obtain such rights separately, or (b) re-imagine the show and create a new, original production from the ground up.

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The Chicago Tribune is reporting that a trademark suit between well-known Southern California chain Roscoe’s House of Chicken ‘n Waffles (“Roscoe’s”) against new Chicago restaurant Rosscoe’s House of Chicken and Waffles (“Rosscoe’s Chicago”) was at least partially resolved the day after it was filed when Rosscoe’sChicago agreed to change its name to Chicago’s Home of Chicken and Waffles.
The restaurants had no affiliation with each other, but had numerous similarities, beyond just the names:
Both use a cartoon chicken and a waffle as logos; and
Both have drinks called “Sun Rise” and “Sunset”.
Those involved in an early hearing yesterday appeared to have a sense of humor about the dispute. After the hearing, Rosscoe’s Chicago’s owner Darnell Johnson was quoted as saying “I’m happy as a chicken eating waffles.” And during the hearing, Judge Der-Yeghiayan summed up the case’s status this way: “I see that both parties understand the issues and facts of life and none of the parties are waffling on the issue.” Roscoe’s, however, did state that it intended to pursue damages for the period before Rosscoe’s Chicago’s name change.

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Angel Sales Inc. v. Hollywood Gadgets Inc., No. 07 C 1362, Min. Order (N.D. Ill. Nov. 19, 2007) (Denlow, Mag. J.).
Judge Denlow sanctioned defendant in the amount of plaintiff’s attorney’s fees and costs for preparation and attendance at a settlement conference before the Court. Defendant’s counsel attended the conference, but defendant did not appear. In a subsequent order, the Court entered a sanctions award of $1,710 based upon plaintiff’s fee affidavit.
There is not much to say about this opinion, but I included it as a practice tip and a cautionary tale. Parties often do not want to personally attend settlement conferences before judges, or they attempt to send a representative without full settlement authority. But that is a perilous choice. It can result in sanctions, as here, and, at the least, it usually harms the chances of settlement. The opposing party that took the time to be at the conference is generally offended that its time was wasted.

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Eolas Techs. Inc. v. Microsoft Corp., No. 99 C 626 (N.D. Ill.) (Pallmeyer, J.).
Speculation regarding Judge Pallmeyer’s delay of the Eolas v. Microsoft trial is over. Eolas announced that it settled with Microsoft in a letter to shareholders (available from theSeattle Post-Intelligencer). No details of the settlement were available, but Eolas told its shareholders to expect a dividend from the settlement of up to $60-$72 per share. Here is more coverage of the settlement:*
Vnunet.com
Todd Bishop’s Microsoft Blog — discussing the letter to Eolas shareholders.
Wall Street Journal (subscription required)
* As I have explained in previous posts, I will not comment on any news from this case because of my family’s connection to it, but feel free to discuss the case in the comments.

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Abbott Laboratories and Andrx Pharmaceuticals have settled their Northern District patent litigation over Andrx’s efforts to sell a generic version of Abbott’s extended release antibiotic Biaxin XL, Case No.05 C 1490 (discussed at length in the Blog’s archives). According to IP Law360 (subscription required), the settlement includes an agreement that Andrx will not market a generic version of Biaxin XL for, presumably, the remainder of Abbott’s patent term.

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