Checksum Ventures, LLC v. Dell Inc., No. 18 C 6321, Slip Op. (N.D. Ill. Sep. 30, 2019) (Dow, J.).

Judge Dow granted defendant Dell’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Checksum’s patent as invalid as unpatentable pursuant to 35 U.S.C. Section 101, with leave to amend in this patent dispute regarding a checksum data identifier – used to identify whether data is identical.

Of particular note, the Court held as follows:

  • The ‘906 patent claimed abstract ideas because it did “nothing more than ‘recite generalized steps to be performed on a computer using conventional computer activity.” Citing Enfish, 822 F.3d at 1338.
  • It was not enough to require that the writer enter the data such that it can be disaggregated and read apart from the metadata.
  • The claims taught only the result of having different readers analyze the same data in different ways. The claims did not require that readers read data differently, or that they use new methods for writing data;
  • The claims were written in functional terms, only claiming the results, not how the data was read or processed.
  • The Federal Circuit had previously ruled that writing and reading different types of data in different ways are abstract ideas, absent something more.
  • Also, the ‘906 patent’s claims would potentially preempt entire fields because of their breadth.
  • Dismissal was appropriate even in light of Berkheimer and Aatrix because the ‘906 patent itself raised no factual issue as to inventiveness of the checksum computation and writing technology.
  • Court construction was not required to decide patentability because even accepting Checksum’s construction, the Court held the ‘906 patent’s claims were invalid.

Seven Oaks Millwork Inc. d/b/a Royal Corinthian v. Royal Foam US, LLC, No. 19 C 6234, Slip Op. (N.D. Ill. Dec. 13, 2019) (Kocoras, J.).

Judge Kocoras granted defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction and denied as moot defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss for failure to state a claim in this copyright dispute over a copyrighted product catalog.

Plaintiff Royal Corinthian’s operation of an interactive website with sales capabilities did not alone create personal jurisdiction in Illinois. Furthermore, defendants’ use of targeted advertising was not sufficient to create specific jurisdiction because it was done after Royal Corinthian filed suit, not before. Finally, a single sale into Illinois did not create specific jurisdiction. And even limited jurisdictional discovery to identify additional sales was not warranted because Royal Corinthian had not met its burden to show a colorable claim of jurisdiction before discovery should be allowed. Finally, Royal Corinthian’s alleged injury did not arise from defendants’ alleged contacts with Illinois.

Having held that the Court lacked jurisdiction, there was no reason to consider whether Royal Corinthian had sufficiently stated its claims.

The Chicago chapter of the Federal Bar Association is hosting a CLE program designed to introduce the Northern District of Illinois’ newest magistrate judges on Tuesday, February 25, 2020 from 12pm until 1:30pm. Lunch will be provided, along with 1.25 hours of credit, pending approval. The event is being hosted at the Chicago Bar Association, 321 S Plymouth Court, in Chicago. The magistrates (identified below) will speak and answer questions about settlement conference advocacy, arguing discovery issues and other essential tips. Register here for the event.


Hon. Jeffrey I. Cummings
U.S. Magistrate Judge
Northern District of Illinois
  Hon. Sunil R. Harjani
U.S. Magistrate Judge
Northern District of Illinois
Hon. Gabriel A. Fuentes
U.S. Magistrate Judge
Northern District of Illinois
  Hon. Lisa A. Jensen
U.S. Magistrate Judge
Northern District of Illinois


TWD, LLC v. Grunt Style LLC, No. 18 C 7695, Slip Op. (N.D. Ill. Oct. 23, 2019) (Kocoras, J.).

Judge Kocoras granted in part defendant-counterclaimant Grunt Style’s Fed. R. Civ. P. 12(c) motion for judgment on the pleadings and granted Grunt Style’s Fed. R. Civ. P. 12(f) motion to strike plaintiff-counterdefendant TWD’s affirmative defenses in this Lanham Act case involving the THIS WE’LL DEFEND mark.

TWD brought a Lanham Act trademark infringement claim pursuant to the Lanham Act § 1114 and sought injunctive relief pursuant to § 1116. Grunt Style argued that the Court should dismiss the § 1116 claim because injunctive relief requires counterfeiting and TWD had made no counterfeiting allegations. The Court, however, held that § 1116 did not state a separate cause of action. Instead, it was a potential remedy for a § 1114 infringement claim. Because the claim merely sought a potential remedy and was not a separate claim, it could not be dismissed.

The Court dismissed TWD’s Lanham Act § 1125 unfair competition claim because it was based solely upon Grunt Style’s use of a ® with its unregistered mark. It was “devoid” of any claim of consumer confusion or that Grunt Style’s action harmed TWD’s reputation or sales. TWD, therefore, lacked standing because it did not plead injury and did not sufficiently plead its claim because it did not allege actual or likely confusion.

The Court struck TWD’s affirmative defenses because they were either a single sentence stating the legal standard for the defense without any tie to factual support, or because they were merely a statement of the defense, without factual or legal basis. While the Seventh Circuit had not ruled on whether Twombly / Iqbal plausible pleading applied to affirmative defenses, the Court reasoned that it did. The Court, therefore, struck each affirmative defense.

Crystal Visions, Inc. v. EC Grow, Inc., No. 17 C 7490, Slip Op. (N.D. Ill. Sep. 3, 2019) (Shah, J.).

Judge Shah denied declaratory judgement defendant EC Grow’s Fed. R. Civ. P. 56 motion for summary judgement as to likelihood of confusion and denied declaratory judgment plaintiffs / counter-defendants Crystal Visions and Salt Xchange (collectively “defendants”) counter motion in this Lanham Act case involving EC Grow’s LIGHTNING FAST mark for its ice-melt product and defendants’ LIGHTNING PREMIUM ICE MELTER mark for their ice-melt product.

As an initial matter, the Court pointed to the import of Local Rule 56.1 statements of undisputed material facts (“SOMF”) and noted that it is overlooked “too often.” SOMFs are not the place to argue facts. The responding party’s sole option is to admit the fact or deny it with factual support. Facts that are not properly denied with factual support are deemed admitted. Each party admitted certain facts, but added contexts and cites to support for the context or to supplemental facts. But that context and argument should be provided by asserting supplemental facts and / or argument in the party’s brief.

The Court also refused to treat Crystal Visions and Salt Xchange because they sell the same product. They are separate entities, with separate sales and strategies, which must be considered separately.

Of particular note, the Court held as follows:

  • While the use of the marks were similar in certain ways – they both used gray and blue, and feature a lightning image – the shades of the colors were different, the fonts were “very different,” and the lightning images were different.
  • EC Grow’s LIGHTNING FAST mark was descriptive because it explains that its ice-melter works quickly.
  • The similarity of the products and their markets favored EC Grow’s claim. The ice-melt pellets were different colors, but it was unclear that the pellet color impacted consumers. Otherwise, there was significant overlap in the target consumers.
  • At least some of the target consumers were not sophisticated and were unlikely to be able to differentiate between the two products.
  • There was evidence of at least one instance of actual confusion. One is not much, but it can be sufficient.
  • Weighing the evidence, the Court held that summary judgment must be granted in Crystal Visions’ favor.
  • The Court also granted Salt Xchange summary judgment. Its case was stronger because there was no evidence of its label and EC Grow’s mark was not strong.

Luxottica Group S.p.A. v. The Partnerships & Unincorporated Assocs. Identified on Schedule “A,” No. 18 C 2188, Slip Op. (N.D. Ill. Jun. 4, 2019) (Gottschall, J.).

Judge Gottschall denied plaintiff Luxottica’s motion for reconsideration that defendants were not properly served as to all but one defendant in this counterfeiting case involving Oakley sunglasses.

Of particular note, the Court held as follows:

  • Luxottica’s raised three factual issues: 1) that Alibaba, who hosted defendants stores, would not likely have given defendants’ addresses, 2) Luxottica received defendants’ addresses after filing the complaint, and 3) the names on the return addresses did not match the names of the defendants.
    • Each of Luxottica’s factual arguments could have been raised in its sur-reply and, therefore, were not appropriate for reconsideration.
    • Luxottica’s receipt of defendants’ packages was after the complaint was filed, but before the ninety day deadline for service. So, Luxottica could have waited for the packages to attempt service. And Luxottica did not show why its default damages were unable to make it whole.
    • Luxottica offered no authority for being unable to use the return addresses because the name on the address was not identical to defendants’ names.
    • Luxottica also overstated its costs in investigating the address. While there were 906 defendants, only six challenged service. So, it only had to investigate six. While $1,500 in costs for each of 906 defendants may be probative, $1,500 for the four addresses of the six entities that challenged service would only be $6,000.
  • Luxottica’s legal theories were each new and had not been raised in briefing the underlying motion. So, those arguments were improper as well.
  • The Court had not relied upon Supreme Court dicta, as Luxottica alleged. Instead, the Court looked at analogous Supreme Court precedent to determine how best to rule.
  • The Court noted that while Luxottica’s notice of supplemental authority was improper because Luxottica did not seek leave to file it – and it therefore could have been disregarded – but the Court considered the cases despite that.

On January 22, 2020, from 5:30-9:00 pm ET, the Intellectual Property Law Association of Chicago’s (IPLAC) Young Members’ Committee and Chicago-Kent’s Intellectual Property Law Society is hosting a CLE program regarding IP issues in the evolving recreational cannabis industry in Illinois. The event featured speakers include:

  • Nicole Cosby of Fyllo;
  • Nicole Grimm of McDonnell Boehnen Hulbert & Berghoff;
  • Emily Tupy of Cresco Labs; and
  • Adam Wolek of Taft Stettinius & Hollister.

The event is being held at the Chicago-Kent College of Law Auditorium and Lobby, 565 W. Adams St. The event costs $25 for members and seniors, $50 for non-members and $15 for students. Click here to register for this event.

UIC John Marshall’s Center for Intellectual Property, Information and Privacy has another excellent program, this one focuses on two key copyright issues – fair use and copyright data protection. Every practitioner can use some time working through the complexities of fair use. This program promises to be excellent. It will be led by McDermott Will’s Jennifer Mikulina and Catalina USA’s Executive Director & Senior Corporate Counsel Ariana Voight.

The program is on January 22, 2020, from 12pm to 1pm CT at John Marshall. The event is free, but registration is required.


Rehco, LLC v. Spin Master, Ltd., No. 13 C 2245, Slip Op. (N.D. Ill. Oct. 28, 2019) (Blakey, J.).

Judge  Blakey granted defendant Spin Master’s motion for supplemental claim construction and for summary judgment in this patent case involving remote control toy vehicles.

The Court previously construed the terms, but the Federal Circuit reversed for consideration of certain claim terms. First, the Federal Circuit held that “a signal” meant one or more signals, not one signal, as the Court originally determined. The Federal Circuit also remanded for consideration of whether the parties’ dispute on appeal regarding the “predefined-speed” limitation was an actual claim construction dispute and, if so, how it should be resolved. The Court adopted Spin Master’s proposed construction, requiring that a “predefined-speed” was “a speed programmed on the circuit board in advance to cause a vehicle to gain altitude.”

Spin Master’s accused devices did not have a set speed programmed into the circuit board of the vehicle. But the vehicle did program the circuit board to modify the percentage of a pulse modulation by a predetermined amount which had the impact of increasing the speed. While that was not a literal infringement, Rehco argued it was an infringement based upon the Doctrine of Equivalents (“DoE”). The DoE analysis is a question of fact that must be determined by the trier of fact because there are facts supporting both parties’ arguments. As such, summary judgment was inappropriate.

Flair Airlines, Ltd. v. Gregor LLC, No. 18 C 2023, Slip Op. (N.D. Ill. Jun. 25, 2019) (Guzman, J.).

Judge Guzman denied plaintiff Flair Airlines’ (“Flair”) Fed. R. Civ. P. 56 motion for summary judgment  because of “numerous disputed facts” in this cybersquatting and related state law claims case involving a dispute over a “poorly-documented and hastily-conceived” business venture to create an airline.

The Court held that even assuming that Flair could prove that its FLAIR marks were famous or distinctive and that defendants registered or used an identical or confusingly similar domain, the first two prongs of a cybersquatting analysis, Flair was not entitled to summary judgment because of factual disputes regarding whether defendants operated in bad faith to profit from the FLAIR marks.

Defendants registered the domains – including the FLAIR mark – at the outset of the parties’ joint business venture and with Flair’s knowledge. The Court also noted that the parties agreement initially tasked at least certain defendants with web development, business strategy development and other services related to the planned airline. Flair disputes defendants’ facts, but that because defendants’ facts are plausible, there is a question of material fact preventing summary judgment. The Court noted that Flair’s attempts to show a lack of disputed facts acted to emphasize the differences in the parties’ respective stories and to reinforce their factual disputes. The Court also declined to consider the relative credibility of witnesses at the summary judgment stage, leaving that for trial and the jury.