Voltstar Techs., Inc. v. Amazon.com, No. 13 C 5570, Slip Op. (N.D. Ill. Jul. 28, 2014) (Lee, J.).

Judge Lee granted defendant Amazon’s motion for summary judgment of noninfringement of plaintiff Voltstar’s design patent to an electrical charger and denied Voltstar’s cross-motion for summary judgment.  An ordinary observer viewing the two chargers side-by-side would conclude that they were substantially different:

  • Voltstar’s charger was squat, while Amazon’s was larger and thinner;
  • Each charger’s tapered top was different; and
  • Voltstar’s charger had a “unique” clamshell appearance that Amazon did not have.

The differences cumulatively created a significant overall difference.

While both products differed from the prior art having tapered ends, the tapers were sufficiently different, as noted above.  Voltstar’s expert report identifying alleged similarities did not prevent summary judgment.

Scholle Corp. v. Rapak LLC, No. 13 C 3976, Slip Op. (N.D. Ill. Jul. 24, 2014) (Kendall, J.).

Judge Kendall ruled on numerous motions filed after the Court granted a preliminary injunction in this patent case.  Of particular note, the Court held as follows:

  • The Court granted defendant Rapak’s motion to construe more than five claim terms, despite Rapak’s failure to comply with the Local Patent Rules by identifying which terms were case dispositive.  The Court did so despite Rapak’s deficiencies to avoid further delay in the case.
  • The Court ordered Rapak to show cause why Rapak should not be held in contempt for violating the Court’s preliminary injunction by shipping enjoined smoothie valves after the date of the preliminary injunction.  The Court held that the fact that no bond had been set or provided was not a reason that Rapak could delay compliance.  That was especially true because Rapak did not originally raise the bond, the Court did sua sponte.
  • The Court granted Rapak’s motion clarifying that the preliminary injunction only applies to the smoothie valves that were before the Court in the preliminary injunction proceedings and colorable imitations thereof.  The Court, however, declined to rule upon whether Rapak’s redesigned smoothie valves were colorable imitations of the current smoothie valve.
  • The Court granted Rapak’s motion to amend a counterclaim seeking a declaratory judgment that its redesigned smoothie valve did not infringe.
  • The Court denied Rapak’s motion to strike Scholle’s new proposed claim constructions in its response brief.  While they technically did not follow the Local Patent Rules requirements that the parties disclose and confer regarding their respective constructions, Rapak either had notice of the constructions or they were an explanation of the ordinary meaning which Scholle originally set out as the construction.

R-Boc Reps., Inc. v. Minemyer, No. 11 C 8433, Slip Op. (N.D. Ill. Sep. 18, 2014) (Cole, Mag. J.).

Judge Cole denied plaintiff R-Boc’s motion for reconsideration regarding the Court’s prior denial of its motion for leave to amend its Final Invalidity Contentions and supplement its expert reports to add an indefiniteness argument in this patent case.  In the underlying motion, R-Boc argued that the Supreme Court’s recent Nautilus decision which relaxed the indefiniteness standard — created a new indefiniteness argument regarding the term “approximately perpendicular.”  After an explanation of the meaning of Shakespeare’s phrase “hoist with his own petard.” The Court explained that R-Boc was hoist by its own petard in the form of its strategy decisions to propose a construction of the term which defendant agreed to and the Court adopted.  The Court then turned to French in italics to emphasize R-Boc’s repeated strategy decisions since 2008:

  •  “C’est une petard”:  R-Boc proposed its construction.
  • “C’est deux petards”:  After defendant accepted R-Boc’s construction, R-Boc chose to forego a claim construction hearing.
  • “Le troisieme petard”:  R-Boc waived its indefiniteness arguments.
  • “Le quatrieme petard”:  R-Boc filed a summary judgment motion that undercut its instant motion to amend.

Based upon these strategic decisions, R-Boc could not reclaim its indefiniteness arguments despite the changed indefiniteness standard.

Intercontinental Great Brands LLC v. Kellogg N. Am. Co., No. 13 C 321, Slip Op. (N.D. Ill. Sep. 22, 2014) (Kennelly, J.).

Judge Kennelly construed the terms in this patent dispute regarding repeatable food containers.  Of particular note, the Court held as follows:

  • “Sealing layer” was construed as being separate from the top of the food container because the claims required that the sealing layer be sealed to the top of the container, which would not be possible if the sealing layer was part of the top of the container as proposed by plaintiff.
  • “Frame” was construed as “a tray with a bottom and sides” as proposed by plaintiff.  The parties’ dispute boiled down to whether the frame was required to have sides.  The Court held that sides were required because the container was for holding food and holding food required sides.
  • “Overwrap” was construed as a synonym for wrapper as it was used elsewhere in the patent.
  • The Court declined, at least at this point, to construe “facing perimeter portions,” “facing Overwrap perimeter portions,” and “additional perimeter portions.”

Hester v. j2Global Comm., Inc., No. 13 C 6143, Slip Op. (N.D. Ill. Sep. 19, 2014) (Lefkow, J.).

Judge Lefkow held that venue was improper in this patent inventorship dispute, but instead of dismissing, transferred the case to the N.D. Georgia.  The Court lacked venue because:

  • At least one defendant did not reside in Illinois; and
  • The events giving rise to the claim did not happen in Illinois.  Furthermore, the location of the patent was not relevant, and even if it were, there was no evidence that the patent resided in Illinois.

Because the Northern District was not a proper venue and because the parties agreed that N.D. Georgia was a proper venue, the Court transferred the case to the N.D. Georgia.

Site B v. Does 1-51, No. 13 C 5295, Slip Op. (N.D. Ills. Mar. 7, 2014) (Leinenweber, Sen. J.).

Judge Leinenweber denied Doe 39’s motion to quash a pre-discovery subpoena in this BitTorrent case involving the motion picture “Under the Bed.”  At the outset, the Court noted a split in the Northern District regarding whether a Doe had standing to quash a subpoena to its Internet Service Provider (“ISP”).  Regardless, a motion to quash a subpoena was not a proper vehicle for challenging misjoinder as Doe 39 did.  The proper method would be a Fed. R. Div. P. 21 motion to sever.

Recognizing its inherent authority to sever, the Court then considered Doe 39’s arguments to sever.  Noting a split across the country, the Court held that the Does need not all participate in the same swarm near in time to each other.  The six week period used by plaintiff Site B was sufficient.  The Court, however, stated that it was open to reconsidering the decision after the various Does become named defendants in the case.

Finally, the subpoena did not violate the Electronic Communications Privacy Act (“ECPA”).  The ECPA prevents knowing disclosure of the content of a stored message, but allows disclosure of customer records, such as customer identity, which is what the subpoena sought.  The fact that the subpoena failed to notify Comcast that the ECPA makes such disclosure voluntary, was not sufficient to quash the subpoena.  Suggesting that Comcast did not know its legal rights was “frivolous.”

Sorenson v. WD-40 Co., No. 12 C 50417, Slip Op. (N.D. Ill. Sep. 9, 2014) (Kapala, J.).

Judge Kapala granted defendant WD-40 summary judgment as to plaintiff’s Lanham Act and related state law claims regarding plaintiff’s THE INHIBITOR and related design marks (the “Inhibitor Marks”) and WD-40’s Specialist product line.

WD-40’s use of the word “inhibitor” in connection with its Specialist products was fair use:

  • It was not used as a trademark, as evidenced by the emphasis of WD-40’s well know marks on the front of the product over the use of the term “inhibitor.”
  • Inhibitor was descriptive of the WD-40 product which was intended to inhibit rust.
  • There was a lack of evidence that WD-40 used the term in bad faith.

WD-40 was, therefore, granted summary judgment as to plaintiff’s Lanham Act claim.  WD-40 was also granted summary judgment that there was no likelihood of confusion:

  • Looking at the usage of the marks as a whole, plaintiff lacked sufficient evidence to show similarity of use.
  • Plaintiff’s oil products were not similar to WD-40’s Specialist products.
  • There was limited evidence of concurrent use, but not enough to weigh in plaintiff’s favor.
  • There was some evidence of a low degree of care by consumers, but it was mitigated by the strength of WD-40’s marks.
  • Plaintiff’s Inhibitor Marks were relatively weak because they were descriptive of the product.
  • There was not sufficient evidence of actual confusion.  The testimony by one individual that he believed that the products could be co-branded even if it were assumed to be evidence actual confusion, was insufficient because it was de minimus.
  • There was not sufficient evidence that WD-40 intended to pass off its products as plaintiff’s to support plaintiff’s burden.

Having granted summary judgment as to the Lanham Act claims, the Court granted summary judgment as to the state law claims based upon the Court’s likelihood of confusion analysis.  As an interesting side note, the opinion identifies evidence in the suit suggesting that four out of five people have used WD-40.  That is a pretty amazing statistic.

R-Boc Reps., Inc. v. Minemyer, No. 11 C 8433, Slip Op. (N.D. Ill. Cole, Mag. J.).

Judge Cole denied plaintiff R-Boc’s motions to amend its Final Invalidity Contentions with an allegedly new theory regarding the phrase “approximately perpendicular” based upon the Supreme Court’s Nautilus indefiniteness decision and related motion for summary judgment of invalidity based upon R-Boc’s new argument.

As an initial matter, the Court originally adopted the parties’ agreed construction of “approximately perpendicular” — “approximately 90 degrees.”  The agreed construction was initially proposed by R-Boc.  The Court noted that parties were bound by their strategy decisions in cases generally.  Furthermore, the Supreme Court’s Nautilus decision was about the phrasing of the indefiniteness test, not the meaning of words of approximation, which are common in patent claims.  R-Boc had also been stopped in two prior attempts to change its “approximately perpendicular” construction in the form of a summary judgment motion and a motion for judgment as a matter of law.

Finally, the Court also held that any prejudice to defendant could not be cured by the extensions that R-Boc offered to agree to because the case was over seven years old having been to trial and then gone to the Federal Circuit before returning to the Court.  At this point in the life of the case, any delay in getting to a final resolution would be prejudicial.

VendoNet, Inc. v. Redbox Automated Retail, LLC, No. 13 C 3475, Slip Op. (N.D. Ill. Sep. 15, 2014) (Shah, J.).

Judge Shah construed the claims in this patent dispute regarding methods of giving vending machine customers access to a computer network.  Of particular note, the Court held as follows:

  • The preamble was not limiting.  The fact that the terms “website,” “homepage,” and “database” derived antecedent basis from the preamble did not make the preamble limiting because it provided no further explanation of or limitation upon any of the terms.
  • “A plurality of physical items” was construed as “more than one item, whether or not they are of the same type.”
  • “Permitting the customer to access the Internet/world wide web via the communication network in order to retrieve and/or send information to said website, said home page or said database” did not require that the customer be able to choose his own website or “surf” the Internet.
  • The Court held that step 5 in the claimed method must occur before step 7, but that step 6 need not be sequential.  In order to overcome an obviousness rejection during prosecution, the patented stated that step 5 must occur before step 7.  Having disclaimed the two steps out of order during prosecution, patented was estopped from reclaiming the ground it lost during prosecution.

Beasley v. John Wiley & Sons, Inc., No. 12 C 8715, Slip Op. (N.D. Ill. Sep. 9, 2014) (St. Eve, J.).

Judge St. Eve, after previously deferring ruling to allow the parties to work out procedural disputes, granted defendant John Wiley & Sons’ motion for summary judgment as to plaintiff’s fraud and Digital Millennium Copyright Act (“DMCA”) claims, having previously granted plaintiff summary judgment of copyright infringement regarding its photographs.  Because plaintiff offered no evidence in response to the motion that would allow a reasonable jury to find that defendant misrepresented plaintiff’s copyright or removed copyright-management information from the photographs, the Court granted defendant summary judgment as to both claims.  Allowing plaintiff to dismiss those claims as it proposed would have been unfair to defendant because it would have prevented defendant from seeking fees as to the DMCA claim.  And plaintiff’s request was too late, coming late in the case and in response to a summary judgment motion.