Everite Transworld Ltd. v. MIEH, Inc., No. 19 C 678, Slip Op. (N.D. Ill. Feb. 24, 2020) (Rowland, J.)

Judge Rowland granted in part plaintiffs’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant MIEH’s counterclaims for tortious interference and civil conspiracy in this patent dispute involving toy vehicles that travel through tubes.

MIEH did not meet its Fed. R. Civ. P. 9(b) heightened pleading requirement for its civil conspiracy claim. First, the Court disregarded statements that MIEH did not allege to be false. And the remaining statements, even if they were false, were made after the parties executed the agreement. Because the statements were made after entry into the agreement, they could not have caused MIEH to enter the agreement. The Court, therefore, dismissed the civil conspiracy claim with leave to replead, if MIEH could.

MIEH did, however, sufficiently plead tortious interference. MIEH pled that plaintiffs EVL and EVTL attempted to stop MIEH’s sales by contacting MIEH’s distributors and threatening legal action by falsely claiming that MIEH lacked a license to the intellectual property. MIEH also pled that its distributors have refused to purchase MIEH product or canceled MIEH orders.

Neurografix v. Brainlab, Inc., No. 12 C 6075, Slip Op. (N.D. Ill. Jan. 30, 2020) (Kennelly, J.)

Judge Kennelly granted defendants’ (collectively “Brainlab”) Fed. R. Civ. P. 56 motion for summary judgment of no lost profits in this patent case involving tractographies.

Plaintiff Neurografix was not entitled to lost profits because it had not made its own product and  it could not prove that it had the manufacturing and marketing capabilities to exploit the demand for Brainlab’s product. Neurografix did offer some evidence of plans to offer a competing service, but the plans were no more than speculative. For example, Neurografix had not sent any information about its contemplated system to any of its customers or potential customers.

FameFlynet, Inc. v. Jasmine Enters. Inc., No. 17 C 4749, Slip Op. (N.D. Ill. Aug. 8, 2019) (Durkin, J.)

Judge Durkin granted plaintiff FameFlynet’s motions for attorney’s fees as the prevailing party in this copyright dispute involving celebrity wedding photos, and granted in part defendant Jasmine’s motion to strike FameFlynet’s motion.

Upon learning of FameFlynet’s allegations that Jasmine breached FameFlynet’s copyrights by posting FameFlynet’s images online, Jasmine took down the images. Additionally, at the outset of the case, the parties came to within $1,000 of settling, with FameFlynet demanding $16,000 and Jasmine countering at $15,000. Despite that, the case proceeded for over two years, until the Court ruled that Jasmine infringed and the parties agreed to $5,000 in damages.

With respect to Jasmine’s motion to strike, the Court held as follows:

  • It was not improper for FameFlynet to argue for fees based upon settlement discussions. While the Seventh Circuit had not squarely decided the issue, the weight of authority suppported considering settlement discussions when ruling on a fees motion;
  • Limitations on the use of information from the parties’ mediation were irrelevant because Jasmine did not point to any statements made exclusively during the mediation that FameFlynet sought to use.
  • FameFlynet’s references to Jasmine’s insurance coverage were also not improper. They were not used to show fault or liability.
  • The Court struck FameFlynet’s statements that Jasmine kept the infriniging images on its site for three months after it was put on notice, but the parties previously agreed that Jasmine removed them within one day. FameFlynet was limited to the statements it stipulated to.

With respect to FameFlynet’s fees motion, the Court held as follows:

  • There was no dispute that FameFlynet was the prevailing party.
  • Jasmine’s defenses were not frivolous or objectively unreasonable. The fact that Jasmine only advanced one affirmative defense in opposition to summary judgment did not suggest the others were flawed. Instead, Jasmine advancing only its strongest defense – fair use – served the judicial economy.
  • The Court noted that defenses need not be successful to be reasonable.
  • Jasmine’s other litigation conduct was also reasonable. Jasmine was not unreasonable for repeating its $15,000 offer, particularly because the offer – three times the $5,000 the parties agreed to after the Court ruled on liability.
  • Awarding FameFlynet the $200,000+ it sought would not advance compensation or deterrence. Jasmine removed the photos the same day it became aware of the issue. Jasmine has also stated it had no plans to blog in the future.
  • Jasmine and its employee that posted the photograph were unaware of the infringement.
  • The nature of the infringement and the parties’ positions and conduct did not justify a substantial fee award. The Court, therefore, awarded $10,500 in fees.
  • The Court also noted that the litigation could have been largely avoided because the parties were $1,000 apart in settlement discussions at the outset of the case.

On Thursday, April 23, 2020 from 12:00 – 1:15pm CT, the Federal Bar Association is hosting a virtual CLE with three of the Northern District’s newest district judges:

  • Martha M. Pacold
  • Mary M. Rowland
  • Steven C. Seeger

The panel will be moderated by retired Chief Judge Ruben Castillo. In addition to comments on written and oral advocacy, the program promises question and answer sessions with the judges. Click here to register.


Black & Decker Inc. v. Positec USA Inc., No. 13 C 3075, Slip Op. (N.D. Ill. Feb. 20, 2020) (Gottschall, J.)

Judge Gottschall denied defendants’ (collectively “Positec”) Fed. R. Civ. P. 56 motion for summary judgment of invalidity and granted it as to noninfringement in this patent case involving string trimmers, commonly known as weed-whackers.

The Court did not rely upon plaintiff Black & Decker’s expert opinion regarding infringement because it solely provided conclusions without explanation or detail. The Court also refused to reconsider the meaning of “planar” in the claims. But Positec’s invalidity expert opinion was sufficient to create a question of fact.

This afternoon, Chief Judge Pallmeyer entered a second general order updating the first general order (which extended all civil deadlines 21 days) and further addressing the “Coronavirus COVID-19 public Emergency” The Court ordered as follows:

  • For all civil cases, all case deadlines whether set by the Federal Rules, Local Rules, Court order or Executive Committee order are extended by 28 days. For deadlines set before the first Order, deadlines have been moved a total of 49 days. Deadlines set between the two orders are only moved 28 days. The Order notes that the Court is accessible by ECF and, in “emergency” situations by phone or video.
  • Civil hearings and settlement conferences set on or before May 1 are stricken, and will be reset by the presiding judge on or after May 4.
  • Civil jury trials set on or before May 29 are stricken to be reset by the presiding judge on or after June 1.
  • The Order does not impact deadlines to appeal district court orders. But the Court held that if an extension request was timely filed, the current situation was good cause for timely motions.
  • The Clerk’s offices are closed to public entry through May 1.
  • Local Rule 5.2(f) requiring courtesy copies in certain instances is suspended for all filings through May 1. Courtesy copies may not be submitted for filings through May 1.
  • The Court will vacate, amend or extend this General Order no later than April 24.

Hangzhou Aoshuang E-Comm. Co. v. 008Fashion, et al., No. 19 C 4565, Slip Op. (N.D. Ill. Dec. 3, 2019) (Cole, Mag. J.).

Magistrate Judge Cole granted defendants’ (collectively “008Fashion”) motion for an extension to respond to discovery requests and to vacate the Court’s prior order finding that 008Fashion’s responses were late and requiring compliance with Local Rule 37.2.

008Fashion’s motion for extension was filed five minutes before its Court-ordered deadline to respond to the discovery and was noticed for hearing after the deadline, in fact, after 008Fashion’s proposed extended deadline. This was improper. Furthermore, the responses were “extremely late.” The Court would not vacate its order, and noted that by responding late, 008Fashion waived its objections. The Court also reiterated that Local Rule 37.2 compliance was required, and that it must be more than formulaic. The Court, therefore, required that future discovery motions contained a detailed, joint statement of the parties’ efforts to resolve their discovery issue. Without an appropriate Local Rule 37.2 statement, future discovery motions would be denied.

Beckman Coulter, Inc. v. Sysmex Am., Inc., No. 18 C 6563, Slip Op. (N.D. Ill. Feb. 26, 2020) (Lee, J.).

Judge Lee denied plaintiff Beckman Coulter (“BCI”) Fed. R. Civ. P. 56(d) motion for additional discovery in this patent dispute involving automated laboratory software.

Defendants (collectively “Sysmex”) sought summary judgment precluding recovery of pre-suit damages. Sysmex argued that notice – actual or constructive – was required for pre-suit damages because BCI sold product embodying the claims. BCI sought additional discovery arguing that to the extent that Sysmex later argued the BCI products did not embody the claims, there would be an issue of fact. But that discovery, even if it happened, would be futile because BCI had admitted that its products embodied the claims. Furthermore, the discovery BCI seeks is actually legal conclusions, not fact discovery.

Life After Hate, Inc. a/k/a ExitUSA v. Free Radicals Project, Inc., No. 18 C 6967, Slip Op. (N.D. Ill. Mar. 3, 2020) (Cole, Mag. J.).

Magistrate Judge Cole denied plaintiff ExitUSA’s Local Rule 7.1 motion to exceed the fifteen page limit for its discovery motion in this Lanham Act case.

The Court could have denied the motion because plaintiff did not attend the hearing on the motion, but the Court had more compelling reasons to deny it. Cole noted that page limitations benefit litigants as much as the Court. ExitUSA had already gotten a “free” extra-long brief by filing a motion to compel that was 21 pages, with two thirds of them double-spaced, making it the equivalent of 35 compliant pages. ExitUSA did not seek or receive approval for that overlong brief. In light of its history, the Court denied the motion.

Neurografix v. Brainlab, Inc., No. 12 C 6075, Slip Op. (N.D. Ill. Feb. 26, 2020) (Kennelly, J.)

Judge Kennelly denied plaintiffs’ (collectively “Neurografix”) motion for reconsideration of the Court’s order granting defendants (collectively “Brainlab”) summary judgment on lost profits in this patent case tractographies.

Fed. R. Civ. P. 54(b) allows a court to reconsider interlocutory rulings at any time before entry of a final judgment, but only to correct “manifest errors of law or fact or to present newly discovered evidence.” The underlying decision found that Neurografix offered no evidence that it had the manufacturing or marketing resources to capitalize on the demand should Brainlab have not been in the tractography market. The only evidence was “speculative” plans without evidence of the ability to develop or market the necessary service.  In its reconsideration motion, Neurografix argued the Court ignored their argument that they were entitled to lost profits for preoperative tractographies, not just intraoperative tractographies. But in the summary judgment papers, Neurografix only referenced preoperative tractographies once, to say they were not acceptable, non-infringing substitutes. And Neurografix cited to no evidence of their capacity to manufacture and sell the products to meet the needs of Brainlab’s customers.

Finally, it was not an error to decide summary judgment before the end of discovery. Had Neurografix believed additional discovery was required, it could have sought time to complete the discovery before responding to the motion. It did not.