I am proud to announce that I am joining the exceptional faculty of the newly formed Solo Practice University, teaching a course focused on learing how to successfully litigate in federal district courts.  I am honored to be a part of SPU’s impressive faculty.  And I look forward to working with the SPU student body to improve the practice of law in the federal district courts. 

I joined SPU and agreed to fit one more thing into an already busy schedule for two reasons.  First, I enjoy teaching and I believe that SPU’s vision of a collaborative environment where students can learn and interact in the digital world and at their own pace is an excellent model.  Second, I have been interested in creating a district court practice course for several years and SPU became a catalyst for the idea.  Eventually, I expect I will use the bones of the course created for SPU either to a law school, perhaps Loyola where I have enjoyed teaching several courses, or to write a text on district court practice.  The course will teach the fundamentals of district court litigation, and I will weave in lessons I have learned over the course of a career both as a district court law clerk and as a practicing lawyer.  I hope that it will both help students avoid the learning curve most of us face as we start litigating and help to increase the quality and skill of district court advocacy. 

ACCO Brands USA LLC v. PC Guardian Anti-Theft Prods., Inc., No 06 C 7102, Slip Op. (N.D. Ill. Dec. 10, 2008) (Zagel, J.).*

Judge Zagel denied defendant PC Guardian’s ("PCG") renewed motion to transfer plaintiff’s patent suit against PCG, but not necessarily the other defendants, to the Northern District of California, where plaintiff and PCG were litigating a related patent.  The Court previously denied this motion, reasoning that all issues related to the patents in suit should be tried in one court, as opposed to the Northern District of California resolving the case as to PCG and the Northern District of Illinois to resolve the issues as to the other defendants in this suit. 

PCG renewed its motion because its new Northern District of California inequitable conduct motion implicated both the patents in suit in the Northern District of California and those at issue in the Northern District of Illinois.  But the Court held that transfer of the case would still leave this Court to resolve the identical issues as to the remaining defendants.  Additionally, because the Northern District of California court would likely rule on the issues before this Court, this Court would have the opportunity to consider the California rulings before deciding the issues.  And this Court had already construed the claims in this case (click here), resulting in only two minor differences between the courts.

*  Click here for more on this case in the Blog’s archives.

Consumers Digest Comms., LLC v. Westpoint Home, Inc., No. 08 C 3486, Slip Op. (N.D. Ill. Dec. 9, 2008) (Shadur, Sen. J.).

Plaintiff filed an amended complaint including a copyright claim, after Judge Shadur orally granted defendant’s motion to dismiss its original copyright and related state law claims.  The Court noted that the amended complaint did not include a copy of the allegedly infringing publications as exhibits.  The Court, therefore, ordered plaintiff to deliver copies of the allegedly infringing publications to the Court and defendant’s counsel. 

Making good on his promise to turn his IP Colloquium into National Public Radio for IP law, Doug Lichtman’s newest offering is an extended interview with Federal Circuit Chief Judge Michel.  Click here to listen to Licthman’s interview, you can even apply for New York or California CLE credit after listening.  Here are some of Judge Michel’s more interesting observations:

  • Petitions for rehearing are too often "shallow and weak."
  • Votes denying en banc rehearings are often close, making the poor petitions for rehearing especially surprising and disappointing. 
  • Parties interested in supporting cases with amicus briefs should consider filing briefs supporting rehearing petitions.  An amicus brief that was both well researched and well written could play an important role in strengthening a case’s en banc potential and tipping close votes for rehearing. 
  • In re Bilski did not answer all of the 101 questions because not all of the questions were raised in the case or ripe for consideration.  It will take a series of 101 cases to flesh out the post-Bilski state of the law.
  • Judge Michel is hopeful that the new patent jury instructions — click here to read the Blog’s post about them — will help bring some clarity and continuity to, among other things, damages and obviousness instructions, although at the time of the interview it appeared that he had not seen the instructions yet.
  • The Doctrine of Equivalents has almost "dried up."

Rowe Int’l. Corp. v. ECast, No. 06 C 2703, Slip Op. (N.D. Ill. Nov. 28, 2008) (Kennelly, J.).

Judge Kennelly construed the terms of plaintiff’s computer jukebox patents — click here for more on this case in the Blog’s archives, including more on claim construction.  Of particular interest, the Court held that "programmable computer memory" and "programmable memory" both mean a computer memory that can be programmed, requiring little construction.  The Court rejected defendant’s construction that would have limited the term to random access memory. 

The parties both sought further construction of "user attract", but the Court had previously construed the term and saw no basis to revisit the construction without a clear and succinct explanation from counsel as to why it was required.

Krippelz v. Ford Motor Co., No. 98 C 2361, Min. Order (N.D. Ill. Dec. 5, 2008) (Zagel, J.).

Judge Zagel ruled upon various motions in limine.  Of particular interest, the Court denied defendants motion for reconsideration of the Court’s grant of summary judgment of infringement.  The Court held that the evidence defendant used to create a material question of fact was inadmissible.  And while the motion could be construed to include new arguments, they were too late to overcome summary judgment.

The Court also granted plaintiff’s motion to preclude defendant’s evidence of noninfringing alternatives because plaintiff was only seeking a reasonable royalty, not lost profits.  Finally, the Court denied defendant’s motion to exclude evidence of defendant’s vehicle sales as evidence of commercial excess.  While it is unlikely that anyone purchased a vehicle because of the infringing puddle lamp, the fact that defendant used the lamps in its vehicles and sold a "fair number" is evidence of commercial success.

UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582 Slip Op. (N.D. Ill. Dec. 5, 2008) (Lindberg, Sen. J.).

Judge Lindberg granted in part plaintiff’s motion to dismiss certain of defendant Starent’s counterclaims.  Starent’s allegations that specific patentee withheld specific references from the Patent Office were sufficient to meet the Rule 9(b) heightened pleading standards for inequitable conduct.  But the Court dismissed Starent’s tortious interference counterclaim to the extent that it was based upon the filing of a law suit because Illinois prohibits tortious interference with prospective economic advantage claims based upon filing law suits.  The Court also dismissed Starent’s malicious prosecution counterclaim because Starent did not allege a special injury, such as arrest, seizure of property, taking or interference with property.

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.

Happy New Year.  As we all reflect on 2008 and what is to come in 2009, I wish you health, happiness and success.  While everyone faces adversity in this difficult economy, I hope you are able to look beyond and rise above yours in 2009.  And may you enjoy a great New Year’s Day filled with family, friends, football, and, in my case at least, a big Chicago Blackhawks win in the Winter Classic.

It is the time of year for the Best of 2008 lists.  The legal blogosphere* is no different as evidenced by Blawg Review #193 — click here to read it — recounting the 51 weekly Reviews from this year and soliciting nominations for the annual Review of the Year award from anyone who has hosted or is scheduled to host a Review. As someone who has hosted (click here to read my 2008 Review # 173, and who plans to host another in 2009, I exercise my right to vote for the following Reviews:

*  Ed. how can you insist upon Blawg Review, but than refer to the legal blogosphere.  Are you just trying to get to Mr. O’Keefe?