Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, Slip Op. (N.D. Ill. Jan. 9, 2009) (Cox, Mag. J.).*

Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony following the reasoning of a previous opinion in a related case about the same expert — click here to read about that opinion in the Blog’s archives. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.

* Click here for more on this case and related cases in the Blog’s archives. Also, note that the Court continues the progressive use of footnote citation.

Ratner v. M&M Control Serv., Inc., No. 08 C 6928, Slip Op. (N.D. Ill. Jan. 5, 2009) (Shadur, Sen. J.).

Judge Shadur ordered that certain denials in patent defendant’s answers be stricken pursuant to Fed. R. Civ. P. 8(b)(5) and 11 (b).  The Court held that when a defendant lacked sufficient knowledge to answer an allegation and so stated, it was deemed a denial pursuant to Rule 8(b)(5).  But defendant cannot actually deny the allegation because defendant has already stated that it lacks sufficient knowledge to admit or deny the allegation.  As such, denying the allegation conflicts with Rule 11(b) obligations.

Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc., No. 05 C 4088, Min. Order (N.D. Ill. Feb. 2, 2009) (Moran, Sen. J.).*

In this pair of entries, Judge Moran denied plaintiff Trading Technologies’ motions for fees and costs related to a discovery motion and referred another fees motion to Magistrate Judge Schenkier.  In the first entry, the Court noted that it was time to end "unnecessary [discovery] battles" in the case and that it might not be as forgiving with the next fees motion.  In the other entry, the Court transferred a fees motion to Judge Schenkier, but questioned how "a single discovery dispute could blossom into a claim for over $300,000.

*  Click here to read much more about this case and the related cases in the Blog’s archives.

Freightquote.com, Inc. v. Air Ocean Land Sol’ns., Inc., No. 98 C 346, Slip Op. (N.D. Ill. Jan. 26, 2009) (Shadur, Sen. J.).

Judge Shadur issued this Memorandum questioning whether plaintiff’s trademark infringement and related state law claims should have been brought in the Northern District.  The complaint listed the parties’ citizenship as being in Delaware, Kansas, North Carolina and Texas.  The lack of an Illinois resident or citizen in the case caused the Court to question whether the Northern District was the appropriate location for the suit.  The Court did not rule upon the issue, but directed the parties to be prepared to discuss whether the Northern District was the appropriate forum for the case at the next hearing.

The next installment of the Spring 2009 Chicago Intellectual Property Colloquium is this Tuesday, February 10, at 4:00 pm in Room 1103 at Loyola University Chicago Law School.*  This installment of the Colloquium will be especially interesting to the Blog’s readers, as the paper to be presented is directly focused on patent litigation.  Professor Colleen Chien of Santa Clara University Law School will present her paper:  Narratives and Evidence in the Litigation of High-Tech Patents.  The event will be held at Loyola University Chicago School of Law, 25 East Pearson Street, on Tuesday, February 10, 2009, 4:00 p.m. in Room 1103.  Chien’s paper uses data from the Stanford IP Litigation Clearinghouse.

*  The Colloquium is jointly sponsored by Chicago-Kent and Loyola University Chicago.

Yesterday, President Obama announced that he was appointing Senator Judd Gregg (R-N.H.) to become the next Secretary of Commerce, a significant position in the intellectual property world.  As Secretary of Commerce, Gregg will oversee the PTO and have a strong voice in any patent reform that might occur while he is Secretary.  The blogosphere and mainstream media are slowly providing background regarding Gregg:*

*  I will update this post with more links if I see anything especially valuable.

The Chicago Tribune ran an interesting article by Ann Meyer yesterday (click here to read it) discussing companies monetizing IP, specifically patents and dormant trademarks, not just through the more traditional means of litigation and licensing, but also through sales of the IP.  While there are numerous brokers who help sell IP, the article focused on Chicago-based Ocean Tomo’s patent auctions.  It is not very surprising that in a down economy companies are looking to their IP as a significant source of value.  Nor is it surprising that companies would seek to avoid the upfront costs of both licensing and litigation in favor of a more immediate sale for IP the company is not using.  Of course, the continued health of the patent, trademark and copyright dockets in the Northern District of Illinois and across the country prove that companies continue to monetize their IP and protect market space from competitors through more traditional means as well.

Anyone that has litigated a patent that was originally written in a language other than English has almost certainly dealt with translation issues.  For that matter, anyone that has used foreign language prior art or technical documents has likely faced translation issues.  The new PatLit blog has an interesting post about translation issues related to a European patent litigation — click here to read the post.  A PatLit reader suggests that there are few written opinions dealing with translation issues, but that translation issues must be common.  My experience is that the complexity and frequency of translation issues are directly related to the complexity of the technology.  Not a shocking conclusion because complex, cutting-edge technology has its own terminology that often does not lend itself to seamless translation.  The fact that there are not many written opinions makes less sense.  But here are a few possible explanations:  1) courts treat translation issues as any other difference of opinion in claim constructions and deal with them without mentioning the translations; or 2) cases that suffer from unclear or bad translations may be more likely to settle before a decision.

Here is some IP-related news for your weekend enjoyment:

  • Seattle Trademark Lawyer Mike Graham warns that the excellent Stanford IP Clearinghouse may not be counting all cases in its data based on Graham’s comparison of 2008 trademark filings in the Western District of Washington using PACER and the Stanford IP Clearinghouse — click here to read the post.  I echo Graham’s statement that even if there are discrepancies, or even missing data, the Stanford IP Clearinghouse is an excellent resource with vast potential.
  • Blawg Review #196 was hosted on Australia Day this week by Peter Black’s Freedom to Differ, an Australian blog focused on internet regulation — click here to read the Review.    After tackling controversy surrounding the date of Australia day, Black discusses several IP issues including Duncan Bucknell’s post regarding YouTube copyright issues; and Brendan Scott’s series on closed source software.

Last fall, the Federal Circuit issued an en banc decision in In re Bilski, holding that the “machine-or-transformation test” was the only test for determining whether a claimed process was eligible for patenting pursuant to § 101. The decision required that a process either:  1) be tied to a particular machine or apparatus; or 2) transform an article into a different state or thing.  The Federal Circuit affirmed the PTO’s rejection of Bilski’s claimed method of hedging the risk of bad weather through commodities trading as lacking patentable subject matter.  The Federal Circuit held that the method failed the machine-or-transformation test.  Click here for the Federal Circuit decision.

Earlier this week, Bilski petitioned the Supreme Court for a writ of certiorari to consider the following two issues:

Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing … despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

Click here to read the petition.  Pursuant to Supreme Court procedural rules, amici briefs are due at the end of February, although the PTO can seek an extension.