On September 15, 2021, from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (IPLAC) is hosting a webinar focused on “specialty experts” in patent and trade secret litigation cases.  Judge Albright of the Western District of Texas and Ocean Tomo’s James Malackowski will give you their perspectives on the issues.

The event is $15 for IPLAC Members and $45 for Non-Members.  Please click here to register.  Zoom – Event link will be sent after registration.

The Membership Committee of the Intellectual Property Law Association of Chicago (IPLAC) is hosting the first of several informal happy hours on September 2, 2021 from 5:00 p.m. to 7:00 p.m. at George St. Pub in the East Lakeview neighborhood, 2858 N. Halsted St., Chicago, IL 60657.  Food and drinks will be available for purchase.

The event is free for Members and $15.00 for Non-Members.  Please click here to register.

The Northern District and the Chicago Chapter of the Federal Bar Association are seeking nominations – no later than August 1, 2021 – for outstanding pro bono and public interest representation in civil and criminal matters before the Court.

Factors considered include:

  • dedication to pro bono or public interest work;
  • outstanding achievement resulting from the representation of a large group of indigents, successful representation in a difficult case, outstanding negotiation and settlement skills in achieving a result without trial;
  • extraordinary number of hours committed to pro bono work; or
  • other distinguished performance.

Nominations must be based upon work in the Northern District on matters that are complete and no longer pending before the Court.

Nominations using this fillable form may be emailed to: ProBonoAwards@ilnd.uscourts.gov.

Awards will be presented at the Court’s twenty-first annual awards ceremony on Thursday, September 9, 2021, at 2:00 pm.

On July 14, 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 host a panel discussion focusing on NFTs and some of the many questions revolved around non-fungible tokens.  The panel is moderated by Alex Karana, Karana IP Law, LLC.  Panel members include:

  • Rumi Morales, Partner & Board Member, Outlier Ventures
  • Zack Smolinski, Principal, Smolinski Rosario Law P.C.

This event is free for IPLAC and Non-Members.  Please register by Clicking HereZoom – Event link will be sent after registration.

CampaignZERO, Inc. v. StayWoke, Inc., Slip Op., No. 20 C 6765 (N.D. Ill. Dec. 4, 2020) (Valderrama, J.).

Judge Valderrama granted in part plaintiff CampaignZERO’s motion for expedited discovery related to its motion for a preliminary injunction in this trademark dispute involving CampaignZERO’s CAMPAIGNZERO mark.

Of particular note, the Court held as follows:

  • As an initial matter, filing a preliminary injunction motion alone does not warrant expedited discovery.
  • While CampaignZERO’s number of discovery request was small — a dozen document requests and ten interrogatories — the requested information was broad.
  • While it was evidence of confusion, it was not clear how donations sent to CampaignZERO that were intended for defendant StayWoke harmed CampaignZERO.
  • Because CampaignZERO did not have access to StayWoke’s records showing any donations intended for CampaignZERO that went to StayWoke, the Court allowed discovery on this narrow topic. That discovery was found in four interrogatories and four document requests. The Court allowed each of those discovery requests.
  • Because CampaignZERO did not object, the Court also allowed StayWoke discovery into the inverse of the narrow set of issues allowed for CampaignZERO.

Norix Group, Inc. v. Correctional Techs., Inc. d/b/a Cortech USA, et al., Slip Op., No. 20 C 1158 (N.D. Ill. Jan. 19, 2021) (Feinerman, J.).

Judge Feiinerman granted in part defendant Cortech’s motion to stay pending ex parte reexam and denied Coretech’s Fed. R. Civ. P. 12(b)(6) in this patent case involving “intensive use” beds and shelving units used in prisons.

First, the Court denied the motion to dismiss claiming Norix had improperly describe the patents and applications to which it claimed priority. Realizing its issues, Norix sought and received a certificate of correction from the Patent Office. That certificate was enough to resolve the issue.

The Court denied Cortech’s motion to dismiss based upon the claims requiring “hangars” to be used on the shelves, instead of “hangers.” While a Court is not allowed to rewrite the claims where there is only one plausible meaning, there were two possible here — once was nonsensical (shelves for storing hangars, which are places to repair aircraft) and the other was sensical ( shelves for storing hangers which are devices for holding clothes). The issue of which meaning was the correct one was for claim construction, not Rule 12.

Cortech argued that its accused devices did not include J-bar’s required by each asserted claim. But whether Cortech’s accused devices included a J-bar or an equivalent was not determinable at the Rule 12 stage.

Finally, the Court granted Cortech’s motion to stay as to the ‘150 patent because the Patent Office initiated Cortech’s ex parte reexam. Because that patent would not impact the other asserted patent, the ‘642 patent, proceedings were not stayed as to that patent.

Shenzhen Buxian Network Tech. Co., Ltd. d/b/a Veken v. Bodum USA, Inc., Slip Op., No. 20 C 1726 (N.D. Ill. Jan. 25, 2021) (Aspen, Sen. J.).

Judge Aspen denied plaintiff’s motion to certify an interlocutory appeal in this trade dress dispute involving French press coffee makers.

A jury previously held that the identical French press Chambord design was non-functional and to have secondary meaning. The Court held that plaintiff had not met its burden of proving a reason to overcome the jury’s holding.

As an initial matter, there was no dispute matter of law. Plaintiff sought to overturn a jury verdict on the identical issue. Contrary to plaintiff’s argument, the Court did not hold that the prior jury’s verdict prevent any future third parties from challenging the determination. Rather, the Court held that it was incumbent upon the defendant to identify material differences that called the jury verdict into question. Plaintiff did not do that in this case.

Additionally, an interlocutory appeal would not have conserved resources. If anything, an appeal would only have delayed a trial, not eliminated one.

The Court, therefore, denied plaintiff’s interlocutory appeal. The Court also granted defendant Bodum’s motion to strike plaintiff’s declaratory judgement claim because it was duplicative of plaintiff’s claim in a related action.

The AIA Trials Committee of the Intellectual Property Law Association of Chicago (“IPLAC”) is hosting a fireside chat with Vice Chief Judge Michael Tierney and McDonnell Boehnen Hulbert & Berghoff LLP partner George “Trey” Lyons, III on May 25, 2021 from 10:00 a.m. to 11:00 a.m. CT.

This event is free for IPLAC members. Please click here to register.  Zoom – Event link will be sent after registration.

Putco, Inc. v. Carjams Com, Inc., Slip Op., No. 20 C 50109 (N.D. Ill. Feb. 10, 2021) (Jensen, Mag. J.).

Magistrate Judge Jensen granted in part defendant Carjams’ motion for a protective order concerning plaintiff Putco’s Fed. R. Civ. P. 30(b)(6) notice in this patent dispute.

Of particular note:

  • Carjams’ claim that Putco should be limited to ten topics, without some agreement by the parties, was not supported by the Federal Rules or the law.
  • The Court limited the temporal scope of the deposition to 2014 (before the patent’s filing date and Carjams’ first accused sales). Putco’s 2008 date limitation was overly burdensome.
  • Putco’s request for “all information” were not overly burdensome because Carjams had only fourteen employees, and only two likely had relevant information.
  • The Court would not prevent damages topics because Carjams intended to use a damages expert. Damages was still an appropriate topic for a corporate deposition.
  • The Court narrowed a broad topic on LED lights, limiting it to LED headlights as they relate to the accused products.
  • The Court limited a topic regarding Carjams’ use of its GEN4 trademark to use in relation to the accused products.
  • The Court limited a topic regarding a non-accused technology to the extent it was potential prior art or accused products.
  • The Court struck a broad topic seeking all information about Carjams’ suppliers. The Court allowed Putco to amend limiting the request to a more narrowly tailored topic, if that was possible.
  • The Court allowed a topic seeking information about all license agreements for the asserted patents or similar patents. Those agreements may have been relevant to a damages analysis.
  • A topic regarding Carjams’ knowledge of the industry was allowed.
  • A topic regarding Carjams’ bases for its discovery responses was allowed. The Court refused to require that the request be done by interrogatory.
  • The Court denied a request to limit a topic regarding Carjams’ alleged prior to sue to the date of the patent application forward because the relevant issue was whether the device had been used before the patent application was filed.

Got Docs, LLC v. Kingsbridge Holdings, Inc., Slip Op., No. 19 C 6155 (N.D. Ill. Feb. 2, 2021) (Guzman, J.).

Judge Guzman denied defendant Kingsbridge’s summary judgment motion and granted plaintiff Got Docs’ summary judgment in this trade secret case involving manage-document business.

The parties disputed whether plaintiff Got Docs’ managers were authorized to file suit. But even if the managers had stepped down from their roles, Get Docs’ Operating Agreement required that managers remain until their successor was appointed. So, while Get Docs’ managers may have resigned, they had not been replaced and, therefore, had authority to initiate the suit.