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.

Yesterday, Chief Judge Pallmeyer entered a general order 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. The Order notes that the Court is accessible by ECF and, in “emergency” situations by phone or video.
  • Civil hearings, trials and settlement conferences set between March 17 and April 3 are stricken, and will be reset by the presiding judge on or after April 6.
  • 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.
  • Any party can seek relief from the Order by filing an emergency motion in the underlying case and in case no. 20 CV 1792, a specially created matter for issues related to the Order.
  • The Court will vacate, amend or extend the Order no later than April 3, 2020.
  • The Eastern Division Clerk’s office will remain open with limited staff – the Western Division Clerk’s office will close. Filings during that period can be made by ECF, deposit in the Eastern Division drop box, by mail or with the Eastern Division Clerk’s office.
  • All public gatherings at the Northern District’s courthouses are canceled during the pendency of the Order.

Republic Techs. (NA), LLC v. BBK Tobacco & Foods LLP d/b/a HBI Int’l., No. 16 C 3401, Slip Op. (N.D. Ill. Jan. 14, 2020) (Harjani, Mag. J.)

Magistrate Judge Harjani denied defendant HBI’s 28 U.S.C. § 1782 motion for an order to take discovery for use in a foreign proceeding in this trademark proceeding involving the parties’ packaging for cigarette rolling papers.

Certain documents produced in this US action were allegedly relevant to a German proceeding involving plaintiffs (collectively “Republic Tobacco”) and an affiliate of HBI.

The Court held that § 1782 contemplates a party seeking US discovery for a foreign matter filing a new district court action seeking letters rogatory approving limited discovery for use in the foreign proceeding. In this case, HBI used an existing suit between parties related to the German suit as a vehicle to file a motion. This posture transforms the proceeding from one of a new party seeking foreign discovery to an existing US litigant seeking to circumvent the Court’s Protective Order by allowing it to produce documents to its foreign affiliate, beyond the bounds of the Protective Order.

The Court reasoned that the needed for a separate action was illuminated by the fact that a decision on HBI’s discovery motion would not be final and, therefore, not appealable. Whereas, courts have held that a decision in a standalone § 1782 action was final and immediately appealable. Furthermore, despite HBI’s claim to the contrary, it was not clear that a separate action filed in the Northern District would be assigned or automatically transferred to the same judge. First, the Northern District randomly assigns all cases initially. Second, a motion for a reassignment pursuant to Local Rule 40.4(b) would likely fail. It was unclear that the present Court would require less time to be educated about the German action. The issues in the instant case and those in the § 1782 proceeding were not susceptible to resolution in a single proceeding. And the parties, the law and the underlying events leading to the two litigations were all different.

On Friday, March 13, 2020, the UIC John Marshall Law School is putting on a day long – 8:45am to 4:30pm – program focused on cutting edge legal issues surrounding the Internet of Things. Here is their description:

Online platforms have become a focal point for many in the United States as well as in key jurisdictions around the world. Governments and legal advisors are struggling to understand the issues and implications these platforms raise, particularly in the areas of intellectual property, privacy, and antitrust law and practice. This Conference brings together top experts in government, industry, practice, and academia to share their cutting-edge insights on these issues as well as where things are headed.

The program promises to be very interactive between speakers and the audience. It also claims to be the only event of its kind and scope in the Midwest.

Registration is $195, with discounts to $95 for in-house lawyers and free for government lawyers.

The excellent line up of speakers includes:

  • Professor Daryl Lim – UIC John Marshall Law;
  • Professor Daniel Sokol, University of Florida;
  • Professor Matthew Spitzer, Northwestern University Center on Law, Business, and Economics;
  • Themi Anagnos, Head of IP for the Americas, Continental Automotive;
  • Kirti Gupta, Vice President, Technology & Economic Strategy, Qualcomm;
  • Grant H. Peters, Partner, Barnes & Thornburg;
  • Professor Haochen Sun, University of Hong Kong;
  • Michael Chu, Partner & IP Litigation Practice Group Leader, McDermott Will & Emery (invited);
  • Erin Lothson, Senior Counsel, Uber (invited);
  • Robert H. Newman, Co-Chair, Privacy, Security & Data Innovations, Loeb;
  • Cameron Krieger, Senior Counsel, Digital Governance, Privacy & Security, Mars;
  • Divya Mathur, Vice President and Consultant, Analysis Group;
  • Sunil Shenoi, Partner, Kirkland & Ellis LLP;
  • Liad Wagman, Senior Economic and Technology Advisor, Office of Policy Planning, Federal Trade Commission;
  • Professor Randy Robinson, UIC John Marshall Law School;
  • Christine S. Wilson, Commissioner, FTC (Keynote);
  • Professor Spencer Weber Waller, Loyola University Chicago Law;
  • Michele Lee, Senior Director and Associate General Counsel, Head of Global Litigation, Regulatory, & Competition, Twitter;
  • Rob Mahini, Senior Policy Counsel, Google;
  • Kate Patchen, Director and Associate General Counsel, Competition, Facebook;
  • Professor Dan Spulber, Northwestern University Law;
  • Aaron Yeater, Managing Principal, Analysis Group;
  • James M. Foote, President and Chief Executive Officer, CSX Corporation (keynote)

The UIC John Marshall Center for Intellectual Property, Information & Privacy Law has announced the inaugural Don Dunner Leadership Award to be presented at its 64th annual IP Conference on Friday, November 20, 2020 in Chicago. As someone who had the privilege of briefly working for Don in law school, I am excited for this award to help carrying on his legacy. The nomination process will be laid out later this year.

 

 

 

 

 

 

Feit Elec. Co., Inc. v. CFL Techs. LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Dec. 20, 2019) (Coleman, J.).

Judge Coleman granted declaratory judgment plaintiff Feit’s motion for reconsideration of the Court’s grant of summary judgement that declaratory judgment defendant CFL’s ‘464 patent was unenforceable  based upon issue preclusion from a prior inequitable conduct determination.

An interlocutory appeal was appropriate for the following reason:

  • The issue was purely legal, not requiring an extensive review of the record;
  • The issue of whether the change of law provision applied in this case was different based upon which Federal Circuit case law was applied. As such, it was contestable;
  • An interlocutory appeal would expedite the litigation because both parties agreed that settlement was stalled by a lack of clarity on the issues; and
  • The request for interlocutory appeal was timely filed because moved within about a month of the Court’s underlying decision.

Life After Hate, Inc. a/k/a Exit USA v. Free Radicals Proj., Inc., No. 18 C 6967, Slip Op. (N.D. Ill. Sep. 30, 2019) (Kendall, J.).

Judge Kendall granted plaintiff Life After Hate a/k/a Exit USA’s (“LAH”) motion for preliminary injunction preventing defendants (collectively “Free Radicals”) from using LAH’s LIFE AFTER HATE, NO JUDGMENT. JUST HELP., and EXIT USA marks in this Lanham Act trademark infringement and cybersquatting dispute. The injunction also prevented use of LAH’s website, twitter handle, YouTube channels and videos.

As an initial matter, the Court noted that both plaintiff and defendants provide “critical” services helping people disengage from violence-based extremism, but “find themselves in an ugly trademark dispute that can only distract them from the important work they perform.”

Validity of the Marks

LAH’s LIFE AFTER HATE and EXIT USA marks were presumed valid because they were federally registered. Defendants argued that LIFE AFTER HATE was descriptive of helping people move on with their lives after leaving what are commonly referred to as hate groups. The Court held that the lack of evidence of similar organizations using the LIFE AFTER HATE mark was indicative that it was suggestive, not descriptive. The Court did note that the line between descriptiveness and suggestiveness was “difficult to draw.” The Court also employed the “degree-of-imagination” test holding that LIFE AFTER HATE required a leap of imagination to understand what services LAH offered and was, therefore, suggestion, not descriptive.

Applying the same pair of tests, EXIT USA was a closer call, but defendants were still not able to overcome the presumption of validity. A number of groups use the EXIT [country] naming internationally, including Exit Germany, Norway, U.K. and Slovakia. But even still, the use was not so widespread as to be proof of descriptiveness or genericness.

Ownership of the Marks

While the parties disputed ownership, the evidence was clear that the parties intended to create two entities using the LIFE AFTER HATE and EXIT USA marks. The parties did not intend that the marks would be used for the individual defendant’s services apart from the entities. Defendants’ claims that LAH procured its trademarks by fraud were not supported by evidence sufficient to overcome the evidence of LAH’s ownership.

Likelihood of Confusion

Regarding likelihood, the Court held as follows:

  • The parties largely did not dispute the similarity of the marks, nor did they dispute the similarity of the services. That weighs in LAH’s favor;
  • LAH and defendants primarily advertise online. That suggested direct competition, to the extent non-profits seeking to help individuals exit extremist hate groups can be said to compete. That weighed in LAH’s favor;
  • The evidence suggested that consumers exercised a high degree of care in selecting the parties’ services. That weighed in defendants’ favor;
  • The evidence suggested that the public associates the marks with LAH, weighing in LAH’s favor;
  • Weighing in its favor, LAH offered three undisputed examples of actual confusion; and
  • There was strong evidence that defendants intentionally copied LAH’s marks.

As a whole, the factors weigh in favor of an injunction.

Irreparable Harm

Lanham Act violations have a rebuttable presumption of causing irreparable harm. Defendants argued that LAH’s fourteen month delay in filing suit and seeking injunctive relief precluded a finding of irreparable harm. While it was a close call, the Court held that the delay was not sufficient to overcome the presumption because LAH presented evidence that it quickly hired counsel to look into how to handle the trademark issues at the Trademark Office and other lawyers to send cease and desist letters to defendants. Those actions overcame the delay.

Balancing Harms

Because LAH had a strong likelihood of success, it was not critical that the balance of harm be in LAH’s favor. Regardless, defendants did not offer any evidence that they would be harmed by an injunction. Defendants argued that they would lose goodwill and reputation, but defendants did not sufficiently explain how such damage would result from the injunction itself.

Public Interest

The public interests were served by enforcing trademarks and reducing consumer confusion. Furthermore, the injunction would not prevent defendants from performing their important work.

Bond

Because neither party addressed the issue of a bond for the preliminary injunction, the Court ordered defendants to submit a bond request within seven days of the preliminary injunction order.