The Chicago Sun-Times reported that Judge Filip’s nomination as Deputy Attorney General has cleared one of its final hurdles — click here for the story.  Senator Dick Durbin (D-Ill.) agreed to remove a hold placed on Judge Filip’s confirmation vote after Attorney General Michael Mukasey answered Senator Durbin’s questions regarding the legality of interrogation techniques.  According to a Chicago Tribune story (click here for the story), Judge Filip is expected to be confirmed by the Senate.  Of course, that is not surprising since the Senate previously confirmed him to become a federal district judge.

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Feb. 5, 2008) (Moran, Sen. J.).*

Judge Moran denied defendants’ Fed. R. Civ. P. 59 motion for a new trial of damages on the condition that plaintiff Trading Technologies (“TT”) accepted a remittitur of defendant eSpeed’s portion of the damages. After a trial, the jury returned a verdict for TT and awarded $3.5M in compensatory damages, split $2M against defendant Ecco and $1.5M against defendant eSpeed. At trial, TT’s damages model was based upon a proposed reasonable royalty of between $.15 and $.25 per trade and a total of approximately 18M to 23M trades for a damages range of about $3.5M to $4.6M. TT argued that the apportionment of damages was irrelevant because the total award was within the argued range and because eSpeed purchased Ecco and, therefore, would be paying the full amount. But the Court noted that Ecco’s award would be paid from an escrow account set up for because of TT’s patent claims when eSpeed purchased Ecco. Additionally, eSpeed’s $1.5M judgment was well beyond the highest award that could be supported by TT’s evidence. The evidence showed that during the relevant time, eSpeed completed approximately 2.1M trades. Even at $.25 per trade, TT’s highest proposed royalty, the possible damages were only $539,468. The Court, therefore, offered TT a remittitur of $539,468 or a new trial on damages.

The Court also awarded TT prejudgment interest set at the average prime rate for the period compounded monthly, because TT collected license fees monthly.

* Click here to read much more about this case in the Blog’s archives and click here for a copy of this opinion.

A couple of unrelated IP stories from Chicago, where most have been focused on snow & the primaries this week:

  • The Chicago Tribune reported — click here for the story — that a yearly $5,000 scholarship has been established in the name of Allen J. Hoover, a patent attorney at the law firm of Wood Phillips, who was killed in Wood Phillips’s offices in December 2006.  The scholarship will be given to a third-year DePaul University law student focusing on intellectual property law.  Hoover was a DePaul alum.  At least some good can come from such senseless violence.
  • The University of Chicago Faculty Blog discussed patent exhaustion and the recent LG v. Quanta Supreme Court oral argument in this post, as part of an ongoing discussion about "New Servitudes" — licenses that attempt to control a purchaser’s rights in software, digital music, etc. (click here to read Professor Van Houweling’s initial post and click here to get the current version of her New Servitudes article at SSRN).  Van Houweling’s analysis of the oral argument may not be as deep (note sarcasm) as my analysis of Justice Breyer’s cycling analogy, but it is quite interesting and she edges closer than most to predicting an outcome:

Continue Reading Chicago-area IP News

Am. Needle, Inc. v. New Orleans, Louisiana Saints, No. 04 C 7806, 2007 WL 4766815 (N.D. Ill. Nov. 19, 2007) (Moran, Sen. J.).

Judge Moran dismissed plaintiff’s remaining antitrust monopolization claim against various NFL entities and the 32 NFL teams.* Despite the fact that the NFL teams were a single entity for licensing purposes,** the NFL team could still be liable for monopolization outside of coordinated licensing efforts . But the alleged monopolization – licensing of defendants’ trademarks – can be done at defendants’ whim without violating antitrust laws based on the NFL’s status as a single entity.

*  Congrats to the New York Giants and Michigan Man Amani Toomer on a great Super Bowl victory.

** Click here for the post on that opinion in the Blog’s archives.

Palantir.net, Inc. v. Palantir Techs., Inc., No. 07 C 4271, Min. Order (N.D. Ill. Nov. 27, 2007) (Guzman, J.).*

Judge Guzman granted defendant’s motion to transfer this Lanham Act case to the Northern District of California ("N.D. Cal.") pursuant to 28 U.S.C. Section 1404(a).  Defendant’s principal place of business was in the N.D. Cal. and defendant had an earlier-filed case against plaintiff pending in the N.D. Cal.  The Court, therefore, held that the convenience of the parties and the witnesses, as well as the interests of justice, were best served by transferring the case to the N.D. Cal.

*  Click here for a copy of the case.

Morton Grove Pharms., Inc. v. Nat’l. Pediculosis Assoc., __ F. Supp.2d __, 2007 WL 4259422 (N.D. Ill. Nov. 30, 2007) (Bucklo, J.).

Judge Bucklo granted in part defendants Fed. R. Civ. P. 12(b)(2) motion to dismiss and denied defendants’ motion to transfer the case to the Eastern District of Michigan. Plaintiff manufactures a line of lotions and shampoo which are FDA-approved for treating lice and scabies.  Defendants are a Michigan non-profit group, Ecology Center, Inc., and related individuals (collectively the "Center"), as well as the National Pediculosis Association. The Center mailed two newsletters related to passage of Michigan legislation to approximately 19,000 addresses of which 44 were in Illinois.  99% of the Center’s donors were from Michigan, with just .23% from Illinois (18 Illinois-based donors total).  The Center’s strongest ties to Illinois consisted of two donations totaling $270,000 from an Illinois-based foundation and an interactive website which accepts donations, although none have come from Illinois.  The Court previously held that these contacts did not create general jurisdiction.* 

Continue Reading Two Newsletters to Illinois Residents Create Specific Jurisdiction

I am throwing caution to the wind* and giving a presentation titled Northern District Cyberlaw Trends to the Chicago Bar Association’s Cyberlaw & Data Privacy Committee, thanks to a request from Evan Brown on his excellent Internet Cases blog.  I am going to discuss some of the major Northern District cyberlaw cases and opinions from 2007, including the Craigslist case, and discuss trends that can be seen from them. 

If you are available February 19 at noon, join us at the Chicago Bar Association building 321 S. Plymouth.  If you cannot make it, I will post about the content of my presentation after the 19th.

*  Washington DC attorney Eric J. Menhart has filed a trademark application for the use of cyberlaw in connection with legal services.  Not surprisingly, the blogs have a lot to say about it.  Check out Blawg IT, Electronic Frontier Foundation and GrokLaw. 

Garcia v. City of Chicago, No. 07 C 5828, Slip Op. (N.D. Ill. Dec. 10, 2007) (Shadur, J.).

Judge Shadur sua sponte struck certain denials in defendant’s answer. The Court held that it was improper to deny those allegations for which defendant stated it lacked sufficient information or belief to respond and, therefore, struck them from the answer. Additionally, the Court noted that defendants had not provided the Court with courtesy copies pursuant to Local Rule 5.2(e).

Practice tip: Courtesy copies often get lost in the administrative shuffle after a complex filing. But there are few things more important than providing the Court with easy access to your papers.

Lawyer’s Right Hand (“LRH”) has come through with another must read post about the Electronic Court Filing (“ECF”) system – click here for my last post about LRH’s ECF guide and click here for LRH’s most recent ECF post. LRH reminds that logging on to a court’s ECF system is equivalent to a signature. That means that if you electronically sign a document, you should use your ECF login to file it. Similarly, if one of your colleagues signs the document that colleague should use her ECF account for filing. LRH also points out that because the ECF login acts as a signature, there is no need to keep a separate signed version of the electronically filed document in your files.

Thank you to LRH for another excellent post.

Jewel Am., Inc. v. Combine Int’l., Inc., No. 07 C 3596, 2007 WL 4300589 (N.D. Ill. Nov. 30, 2007) (Guzman, J.).

Judge Guzman denied defendants’ 28 U.S.C. § 1404(a) motion to transfer this copyright case to the Eastern District of Michigan. Plaintiff argued that its choice of forum should be given deference because its relevant subsidiary was an Illinois entity with its place of business and all of its operations in Illinois. But the Court looked to the residence of the named plaintiff, not the plaintiff’s subsidiary. Because the named plaintiff was a New York entity, plaintiff’s chosen forum was not given deference. Further, the situs of material events was Michigan. Defendants were Michigan entities and the alleged infringement and related planning occurred in Michigan. The Court discounted the location of documents because, “[i]n this age of faxing, scanning and overnight courier services, however, the location of documentary evidence is largely irrelevant.”

No party identified a third party witness that would be required to testify. And convenience of the parties tipped slightly to plaintiff whose subsidiary’s business would be disrupted if its main employees and key witnesses had to travel from Illinois to Michigan for court proceedings and depositions. Based upon these factors, the Court held that defendants had not shown that the Eastern District of Michigan was clearly more convenient and denied the motion.