Here are a few stories you do not want to miss:

  • The Wisconsin Law Journal has an article based upon a Northern District of Illinois case in which a summary judgment decision hinged upon a failure to substantively answer one of the other party’s Local Rule 56.1 statements of material fact.  In that case, a procedural objection was made, but no substantive answer was given.  So, when the objection was denied, the fact was deemed admitted.  This is a point I have made often:  follow Local Rule 56.1 closely and carefully.
  • The Blog of the Legal Times reported that in a recent interview the Federal Circuit’s Chief Judge Michel suggested that the next nominees to the Federal Circuit should have the following backgrounds:  a patent-experienced district judge; a trial lawyer with patent experience; or a chief corporate lawyer with patent experience.

The Administrative Office of the U.S. Courts has issued its 2008 annually report* analyzing the federal court case load for fiscal year 2008.  The Northern District of Illinois remains an important IP court, ranking fourth in IP case filings for 2008, with 385 cases filed, behind the Central District of California, the Southern District of New York and the Northern District of California.

Nationwide, patent and trademark case filings remained steady with only slight increases, but copyright case filings fell over 25%.  One other interesting note, almost four percent of patent cases terminated in 2008 went through a trial.  That is a relatively large amount of trials in the federal courts where an average of 1% of cases are tried.  The 3% difference is not enough to show a post-eBay trend of increasing trials, but it could be the beginning of such a trend.

For more analysis of the report check out Peter Zura’s 271 Patent Blog and Patently-O.

*  Click here to read the report.

I have noticed that my news updates tend to be patent-focused, so today  they focus on trademarks and copyrights:

  • IP Law & Business (subscription required to access the article) has an interesting article in the February/March 2009 issue identifying Justice Ginsburg as the Supreme Court’s "champion of copyright holders" because of recent opinions supporting broader copyrights.  The article also identifies Justice Breyer, based on dissents in the same cases, as leading the cause for narrower copyrights.  And the article predicts that the Supreme Court is trending toward a narrower view of copyrights.
  • Seattle Trademark Lawyer Michael Atkins has a timely post (click here to read it) that traces the March Madness trademark back to the Illinois high school basketball playoffs, as early as the 1940s.  The NCAA and the Illinois High School Association have since pooled their rights and both have a license to use the marks. 
  • Victoria Pynchon has a great series of posts looking at laches in trademark law based upon a recent Ninth Circuit decision — click here and here.

Trading Techs. Int’l., Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill. Feb. 17, 2009) (Moran, Sen. J.).

Judge Moran denied a motion to reconsider an earlier order continuing a summary judgment motion and staying the case pending the appeal of a related case, Trading Technologies v. eSpeed.*  The Court also ordered the parties to meet and confer regarding how to exchange defendants’ sensitive trading information.  The Court previously ordered defendants to work with plaintiff Trading Technologies ("TT") to determine how to produce defendants’ raw transaction data, which was required for a damages calculation.  The parties could not agree on how to exchange the information because of defendants’ unwillingness to provide  such sensitive data to TT without restrictions.  The Court ordered the parties to continue trying to resolve the issue and suggested various ways that the information could be exchanged without forcing defendants to provide all of their sensitive business information.

*  Click here for much more on this case and the related cases in the Blog’s archives.

Here are some IP stories with a broad focused from Chicago-based institutions:

  • The latest edition of the John Marshall Review of Intellectual Property Law is available here.  The issue is focused on International Trade Commission ("ITC") litigation.  ITC is a powerful tool, because of the speed of the proceedings and because personal jurisdiction is not required, only that the product or service is brought into the United States.  One of the most interesting articles is an overview of the Administrative Law Judge’s ("ALJ") role in Section 337 ITC proceedings by ALJ Carl Charneski — click here to read the article.
  • The University of Chicago Faculty Blog is wrapping up an intriguing blog conversation amongst intellectual heavyweights regarding the underpinnings of IP theory and whether the standard economic theories (incentivizing innovation) supporting IP should be broadened to included social and cultural theories (incentivizing broader participation) — click here to read the last post and here to read the first.  I cannot do it justice in a paragraph or two, but as we look at various IP reforms in Congress this year, in particular the 2009 version of the Patent Reform Act, it is a good time to consider the underlying reasons and purposes of the IP laws.

Aller-Caire, Inc. v. Am. Textile Co., No. 07 C 4086, Slip Op. (N.D. Ill. Feb. 11, 2009) (Andersen, J.).

Judge Andersen granted in part plaintiff’s motion to strike certain of defendant’s affirmative defenses in this trademark and unfair competition case.  Defendant’s competitor’s privilege defense was sufficiently pled, although it alleged no specific facts, because it put plaintiff on notice.  Plaintiff knew that the parties were the competitors.  The Court struck the remaining two affirmative defenses:  1) plaintiff’s damages were not the proximate result of defendant’s alleged acts; and 2) a reservation of rights to amend the defenses.  Neither were affirmative defenses and, therefore, could not be properly pled.

Fellowes, Inc. v. Aurora Corp. of Am., No. 07 C 7237, Slip Op. (N.D. Ill. Feb. 10, 2009) (Kocoras, J.).

Judge Kocoras granted defendants’ motion to stay the litigation as to U.S. Patent No. 7,311,276 ("’276 patent") pending the ‘276 patent’s reexamination.  The Court previously denied defendants’ motion to stay the case as to the two other patents in suit.  But the Court granted a stay as to the ‘276 patent based upon the substantial new question of patentability identified by the Patent Office in granting the reexam.  The Court acknowledged that defendants would be able to challenge the ‘276 patent’s validity after the reexam, but held that a stay would still reduce the burden of the litigation on all parties and the Court.

WMH Tool Group, Inc. v. Woodstock, Int’l., Inc., No. 07 C 3885, Slip Op. (N.D. Ill. Jan. 14, 2009) (Mason, Mag. J.).

Judge Mason granted plaintiff’s motion to quash the deposition notice of plaintiff’s trial counsel ("Counsel") for this trademark infringement dispute, who was also plaintiff’s trademark prosecution counsel for the mark in suit.  The Court held that regardless of what the proper standard was for determining whether to depose trial counsel, it had not been met.  Until defendants took plaintiff’s Rule 30(b)(6) deposition, there was no way to tell whether Counsel had any specialized knowledge or whether his knowledge could be more easily obtained from another source.  The Court, therefore, quashed the deposition notice, but allowed defendants to seek leave to depose Counsel after document production is complete and all relevant depositions have been taken.

The Sun-Times’ Neil Steinberg had an interesting column in the Sunday edition about his acceptance of a class action settlement involving Google Books.  As an author, Steinberg is glad to see the settlement which he sees as a good balance of access to a wide variety of works and compensating the authors.  Steinberg explains that as an author and a newspaper columnist he needs access to research tools and, therefore, is glad to see tools like Google Books created.  But as an author, he also wants  to be paid when his books are used which the class settlement accomplishes according to Steinberg.  Steinberg goes on to predict that we will see other internet-based copyright issues resolved in similar manners over time.  Steinberg may be right and he hits on advice I often give about copyrights:  if you want to use something ask, copyrightholders are generally glad to share their work and often only request a small payment in the form of money or even just acknowledgment.

Here are several items from around the web that are worth your attention:

  • The latest edition of Doug Lichtman’s IP Colloquium is available here and it is another excellent listen.  The program looks at copyright’s statutory damages regime through the lens of music downloading.  Lichtman moderates an impressive group of experts and stakeholders in the debate.  It would be worth the time, even if CLE credit was not available, but it is.
  • Congratulations to Victoria Pynchon of the IP ADR Blog and Settle It Now on her move to ADR Services — click here to read Pynchon’s post about the move.
  • The Alternative Patent Dispute Resolution Project at San Diego’s Thomas Jefferson School of Law has an interesting survey up about how ADR should be used in patent cases.  No results yet, but I will discuss them here when they are made available.  The survey follows up a survey done ten years ago by IPWatchdog’s Gene Quinn.  Click here to take the survey.