The Northern District is amending the Local Rule 3.2 notice of affiliates procedure to make it more robust and more meaning, including an ongoing requirement to update. For all civil cases filed on or after January 3, 2022 (the rule is not retroactive), parties must file a Notification of Affiliates as a PDF pursuant to Amended Local Rule 3.2 and disclose their affiliates by adding their names using a new event in Pacer.  Parties are required to manually enter the name of each corporate parent or affiliate (individually) with their first appearance, pleading, petition, motion, response, or other request addressed to the Court. This will no doubt be valuable in avoiding conflicts of interest like those identified by the Wall Street Journal earlier this year in district courts across the country, which is great for the Court and litigants alike.

Pursuant to Amended Local Rule 3.2, any nongovernmental party, other than an individual or sole proprietorship, shall file a statement identifying all its Affiliates, defined as

Any entity or individual owning 5% or more of a party. Any entity or individual who owns 5% or more of any such affiliate shall also be included within the definition of “affiliate.”

A supplement to the statement shall be filed within thirty (30) days of any change in the information reported.

Instructions and a video demonstration on how to enter a Notification of Affiliates are found at the following links:

Caddo Sys., Inc. v. Siemens Aktiengesellschaft (AG), No. 20 C 5927, Slip Op. (N.D. Ill. Oct. 20, 2021) (Cox, Mag. J.).

Magistrate Judge Cox granted plaintiffs’ Fed. R. Civ. P. 37 motion to compel, but limited plaintiffs’ questioning of defendants’ (collectively “Siemens”) Fed. R. Civ. P. 30(b)(6) corporate witness to two hours in this patent case.

The Court required that Siemens produce a corporate witness to testify as to communications between Siemens and third party Microsoft surrounding Microsoft’s license from plaintiffs. Siemens had previously withheld certain communications between Siemens’ and Microsoft’s in-house counsel sending Siemens the relevant license as work product. But upon review, the Court held that certain communications had no work product impressions and had to be produced. The Court, therefore, allowed a Rule 30(b)(6) corporate deposition of Siemens as to those emails and related communications. The Court did, however, limit the deposition to two hours of questioning to make the deposition more proportional to its value because the Court suspected Siemens had little or no additional information to provide beyond the document based upon statements from Siemens’ relevant in-house counsel.

The Court did not award plaintiffs their fees for bringing their motion to compel pursuant to Fed. R. Civ. P. 27(b)(2) because Siemens’ refusal to provide the additional corporate witness testimony had not violated a Court order.

On Wednesday, December 15, 2021 from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (“IPLAC”) and the Illinois Intellectual Property Alliance (“ILIPA”) will present A Conversation with Professor Ed Lee About NFTs.  This virtual event will discuss NFTs, who owns the copyrights and what that means from a legal perspective. The moderator will be Brittany Kaplan of K&L Gates.

This event is free for both Members and Non-Members.  Please register by clicking here.

Southall v. Force Partners, LLC, No. 20 C 3223, Slip Op. (N.D. Ill. Aug. 31, 2021) (Chang, J.).

Judge Chang granted in part defendant Force Partners’ Fed. R. Civ. P. 12(b)(6) motion to dismiss in this copyright infringement and Digital Millenium Copyright Act (“DMCA”) claims involving a picture of the inside of a restaurant bar.

Of note, the Court held as follows:

  • Force Partners’ claim that Southall never alleged that the photograph at issue was part of the deposit materials. This was a “classic example” of a defendant demanding too much and a plaintiff who could have easily avoided the issue. Having pled ownership of the copyright, Force Partners was not required to provide proof that the image was part of the copyright registration or deposit materials.
  • Whether or not Southall’s copyright registration should be given a presumption of validity because it was filed more than five years after the picture was taken, was not an issue that should be decided at the Rule 12 stage, nor was it one that would warrant dismissal if no presumption were granted.
  • Force Partners’ effort to limit Southall to actual damages and exclude attorney’s fees on a Rule 12 motion was “atypical.” Despite that, the Court dismissed Southall’s claim for statutory damages, which Southall disclaimed during briefing. The Court denied the motion as to attorney’s fees because while registration occurred some eighteen months after the alleged infringement commenced, discovery might show that Force Partners’ sought registration within thirty days of learning of the alleged infringement.
  • The Court denied Force Partners’ motion as it related to alleged removal of Southall’s copyright management information (“CMI”). While the complaint did not disclose the specific CMI that was allegedly removed, during briefing Southall identified it as a copyright notice of the webpage that displayed the photograph. That was enough to survive a motion to dismiss.

Feit Elec. Co. v. CFL Techs., LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Sep. 7, 2021) (Gettleman, J.).

Judge Coleman denied declaratory judgment plaintiff Feit’s motion to certify an interlocutory appeal regarding the Court’s denial of Feit’s and granting of declaratory judgment plaintiff CFL’s cross-motion for summary judgment regarding Feit’s inequitable conduct defense in this patent dispute involving compact fluorescent lamps.

Earlier in the year, the Court rejected Feit’s argument that the patent’s inventor — the infamous Ole K. Nilssen — committed inequitable conduct by:

  • claiming small entity status;
  • not disclosing another litigation to the Patent Office;
  • falsely claiming an earlier priority date; and
  • failing to disclose certain alleged prior art to the Patent Office because Feit did not develop its argument.

Feit’s argument was essentially that the Court misapplied the Supreme Court’s Therasense but for analysis based upon the facts before the Court. The Court’s application of Therasense, however, was not a question of law. And even if the Court had misapplied the law, it would not change the result of the Court’s decision because Feit failed to prove the second element of the analysis — the inventor’s specific intent to deceive.

 

Ouyeinc, Ltd. v. BAAAAI, et al., No. 20 C 3488, Slip Op. (N.D. Ill. Sep. 13, 2021) (Coleman, J.).

Judge Coleman denied defendants’ Fed. R. Civ. P. 12(b)(1), (2) & (6) motion to dismiss plaintiff Ouyeinc’s Lanham Act trademark infringement, counterfeiting and false designation claims regarding Ouyeinc’s PRO-WAX100 marks for use with wax warming products.

As an initial matter, defendants’ alleged infringement, at least as pled, was done within the United States. So, there were not extraterritoriality issues that would take the claims outside the scope of the Lanham Act.

The Court held that defendants waived their argument that Ouyeinc did not plead that any consumers were aware of defendants’ alleged act, even though Ouyeinc failed to respond to it, because it was only argued in a footnote and not fully developed.

Finally, the Court denied without prejudice to refile, defendants’ personal jurisdiction challenge. Ouyeinc specifically pled that defendants’ sales using the PRO-WAX100 marks on the web were torts directed at Illinois. Defendants argued, without support, that they made no such sales in Illinois. The Court ordered limited jurisdictional discovery to resolve that dispute.

Legat v. Legat Architects, Inc., No. 20 C 6830, Slip Op. (N.D. Ill. Jun. 23, 2021) (Gettleman, J.).

Judge Gettleman granted defendant Legat Architects’ motion to stay plaintiff Legat’s Lanham Act claim pending appeal of Legat’s state law claims for breach of contract and unjust enrichment related to his LEGAT trademark for use with architectural services.

Legat alleges that he sold his architecture business to Legat Architects in 1997 and that Legat Architects have used the name without authorization since 2017. Illinois claim preclusion provides that a final judgment from a court of competent jurisdiction bars later claims between the parties or their privies on the same issues, or issues that could have been raised, to the extent that they arise from the same set of operative facts. The parties in the state court and federal court actions were identical. And the claims in both jurisdictions arise from the same set of operative facts — the use of the LEGAT trademark. “Rebranding” unjust enrichment as a Lanham Act claim cannot save Legat’s case.

Legat’s claim of an ongoing harm did not save his claims because Legat’s harm — the use of his alleged trademark — is the same. The fact that the harm allegedly continued does not avoid issue preclusion.

However, because Legat appealed the lower court’s judgment, the Court stayed the federal action pending a final determination in the state court action.

On Wednesday, November 10, 2021 from 12:00 p.m. to 1:00 p.m. CT the IPLAC’s Women in IP Committee and the Chicago Women in IP are hosting a joint webinar on Navigating Personal Development in the Workplace.  The panel will be moderated by Laura Schaefer, Leydig, Voit & Mayer.

The panel members include:

  • Erin Lothson, Uber Freight;
  • RiKaleigh Johnson, Greer, Burns & Crain;
  • Francesca Cardillo, K&L Gates; and
  • Kara E.F. Cenar, Greensfelder.

The event is free for Members and Non-Members.  Please click here to register.

On Tuesday, November 9, 2021, from 12:00 p.m. – 1:00 p.m. CT, the Membership and Mentoring Committees of the Intellectual Property Law Association of Chicago (“IPLAC”) are hosting a virtual Intro to IPLAC.  The event featured speakers include:

  • Tiffany Gehrke, IPLAC President-Elect;
  • Ritu Chander, IPLAC Board of Managers; and
  • Kenny Matuszewski, Membership Committee Chair.

The event is free for Members and $25.00 for Non-Members.  Please click here to register.

I am excited to introduce you to a new podcast series hosted by Intellectual Property partner Irena Royzman, of Kramer Levin Naftalis & Frankel LLP.  The Conversations with Women in IP podcast series features judges and leaders in law and business discussing their most memorable cases, career highlights and personal stories.

Click here to listen to the first four episodes and to subscribe to receive notifications when a new episode becomes available.

The first four guests include:

  • Judge Shira A. Scheindlin — Served as a district judge for New York’s Southern District for 22 years. She has presided over dozens of intellectual property cases and was part of the Southern District’s patent pilot program. But she is best known for her rulings that have changed the lives of New Yorkers, including her landmark ruling on stop-and-frisk. Judge Scheindlin, who had Justice Ruth Bader Ginsburg as a mentor, has been involved in gender equality issues for decades and continues to be an outspoken advocate on gender disparity in big law. Judge Scheindlin is now a mediator and arbitrator and devotes her time to many good works.
  • Judge Sue L. Robinson — Served on the district court of Delaware from 1991 to 2017. Judge Robinson has presided over more than 100 patent trials, more than 1,500 cases and has issued thousands of patent opinions. Judge Robinson now practices patent law as a mediator, arbitrator and trial consultant at Farnan LP with her colleague on the district court of many years, Judge Joseph J. Farnan, Jr. They discuss how Judge Robinson was involved in turning Delaware into one of the most important venues for patent litigation and the challenges she faced.
  • Berkeley Law Professor Molly Shaffer Van Houweling — Professor of patent law and intellectual property and associate dean at Berkeley Law, with a focus on copyright law. She’s also an American competitive cyclist who has won numerous championships and set a world record. Professor Van Houweling discusses clerking for Judge Boudin on the First Circuit, Justice Souter on the Supreme Court as well as women in IP in academics.
  • Dr. Barbara Ruskin — An eminent RNA researcher, IP lawyer, and now the general counsel and chief patent officer of Silence Therapeutics, an RNA therapeutics company. Dr. Ruskin shares stories from her career in science and law, the excitement and potential of RNA medicines, and the challenges that women in IP and the industry face.