Dental USA, Inc. v. McClellan, No. 13 C 260, Slip OP. (N.D. Ill. Aug. 16, 2013) (Zagel, J.).

Judge Zagel granted in part plaintiff Dental USA’s motion for a temporary restraining order and injunction in this trademark and design patent infringement case.  Dental USA had a trademark for DENTAL USA, as well as POWER ELEVATOR for a tooth extraction machine.  Dental USA also had a design patent for the tooth extraction machine.  Defendants are former employees of Dental USA who allegedly formed United Dental USA, which competed with Dental USA, including by selling a Misch Power Elevator that performs the same function as Dental USA’s Power Elevator.  Dental USA also alleged that defendants improperly used Dental USA’s copyrighted images on defendants’ website.  Dental USA sought an order enjoining defendants from:  1) using the United Dental USA name at upcoming trade shows; 2) selling Misch Power Elevators, along with any related tools; 3) selling infringing products on defendants’ website; and 4) using Dental USA’s copyrighted works on defendants’ website.  Dental USA also sough seizure of counterfeit goods. 

Defendants were barred from using the name United Dental USA at any future trade shows until the Court reached a decision on the merits.  Defendants had already agreed not to use the name at one, upcoming tradeshow in San Francisco.  Defendants were ordered to take down their uniteddentalusa.com website until at least a final judgment was issued in the case. 

The Court held that DENTAL USA and UNITED DENTAL USA were “self-evidently very similar marks.”  Adding “United” did little to change that analysis, particularly because the U in USA was an abbreviation for “united.”  Dental USA also had at least some evidence of actual confusion.  There was also evidence that Defendants were using Dental USA’s part numbers and product images, adding to the likelihood of confusion.  There was also at least some evidence of actual confusion.

The Court noted that Lanham Act violations are presumed to be irreparable harm, and the evidence in this case bolstered that — the similarity of the products and the fact that the parties compete at the same trade shows.

The balance of equities favored Dental USA.  In particular, defendants used two names — United Dental USA and Misch Instruments.  Because Misch Instruments was the dominant name, defendants were unlikely to be harmed by an injunction.

The public had a strong interest in enforcing intellectual property which was somewhat balanced by an interest in healthy competition.  If the Court felt that the injunction would put defendants out of business, it might have changed the analysis, but that was unlikely. 

The Court, however, denied Dental USA’s motion to enjoin sales of the Misch Power Elevator.  But the Court enjoined the use of the MISCH POWER ELEVATOR trademark or any other POWER ELEVATOR mark, for similar reasons.  The Court did, however, delay the injunction until after the San Francisco trade show.  Having enjoined the products so close to that trade show would have seriously harmed defendant’s business.

Panoramic Stock Images, Ltd. v. The McGraw-Hill Cos., No. 12 C 9881, Slip Op. (N.D. Ill. Aug. 9, 2013) (Pallmeyer, J.).

Judge Pallmeyer denied defendant McGraw-Hill’s Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of plaintiffs’ (collectively “Panoramic”) claims that were allegedly related to defective or unissued copyrights in this case involving licensing of stock photographs.  The parties had a license pursuant to which McGraw-Hill could use certain of Panoramic’s images pursuant to some restrictions.  Panoramic alleged that McGraw-Hill exceeded those restrictions regarding at least 170 of the images.  McGraw-Hill counters that Panoramic’s claims should be dismissed as to 101 of those images because Panoramic lacks valid copyrights as to those images.  The Court held as follows:

  • McGraw-Hill argued that 52 images had deficient copyrights because they were registered without identifying the authors or the titles of the images in violation of § 409 of the Copyright Act.  Panoramic argued that the works were compilations which did not require identification of the author or title of the specific images.  The Court noted a circuit split upon the issue, and that the Seventh Circuit had not squarely addressed it.  Without controlling precedent and deferring to the Copyright Office’s reading of the statute — that no author or title were required for compilations — the Court denied McGraw-Hill’s motion and allowed Panoramic to continue asserting the copyrights on the 52 images.  The Court also noted that there was not a notice issue in this case because McGraw-Hill was sufficiently aware of the copyright owner to have licensed with Panoramic for the images at issue.
  • The Court held that Panoramic could assert the 49 images for which it had applied for copyright, but not yet received a registration.  The Court noted a circuit split on the issue, but that the Seventh Circuit, not without some uncertainty, had determined that a copyright applicant could file suit based upon their application.

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 23, 2013) (St. Eve, J.).

Judge St. Eve granted defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s “corporate intellectual property practice” expert in this patent infringement case involving flush valves for use in plumbing fixtures.  Zurn argued that the expert’s opinions regarding willfulness should not be allowed because they had not been sufficiently disclosed in the expert’s report.  The expert sought to opine that Zurn had acted inconsistent with “normal standards of fair commerce”, thus making Zurn’s conduct was willful.  The Court excluded those opinions because “normal standards of fair commerce” was never identified or discussed in the expert’s disclosures and reports.  Furthermore, there were no corporate standards or other evidence of “normal standards of fair commerce” identified as having been considered by the expert in relation to his report.  The Court also noted that Sloan Valve’s arguments regarding the purposes and testimony of the expert’s opinions had shifted throughout the briefing and hearing.  And Sloan Valve’s failure to disclose the normal standards or corporate policies was not harmless or substantially justified.  Without at least some notice of them, Zurn was unable to properly respond to them.

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 12, 2013) (St. Eve, J.).

Judge St. Eve granted in part defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s technical expert in this patent infringement case involving flush valves for use in plumbing fixtures.  Zurn argued that the expert should not be allowed to testify about willfulness issues or about life cycle testing of valves because of a lack of experience and reliable methods.  Sloan Valve stipulated that the expert would not testify about the willfulness standard or about how Zurn’s actions related to the willfulness standards, for example what information was or was not relayed to outside counsel.  The Court held as follows: 

  1. The expert had sufficient qualifications.  While the expert did not have specific plumbing expertise, he was sufficiently qualified.  He had a degree in mechanical engineering, as well as a masters of science and doctor of philosophy in theoretical and applied mechanics.  He was a registered professional engineer, a former professor of engineering, and a member of various engineering societies.  And he has analyzed product designs regarding numerous patents.  Finally, he had studied the wear on brass faucets.
  2. A battle of experts does not make the expert testimony unreliable.  While Sloan Valve’s expert challenged portions of the expert’s life cycle analysis and while the expert had not performed life cycle testing in the relevant field, his background and experience were a sufficient basis of his opinions.  These and any other issues could be probed upon cross-examination.  Additionally, the Court considered that there was not a written standard for life cycle testing these valves.  So, any expert would be performing the test or critiquing them based upon that expert’s experience.
  3. The expert’s opinion statements are admissible, but not those about willfulness.  The Court allowed the expert’s alleged conclusory statements that the life cycle tests at issues were not an accurate simulation of real world conditions.  They were expert opinions based upon experience, not merely conclusory, and might add the trier of fact.  The Court, however, barred a statement that the test was developed to defeat the patent in suit and therefore were evidence of willful infringement.

On September 26, Chicago-Kent is hosting its fourth annual U.S. Supreme Court Intellectual Property Review.  Seventh Circuit Judge Diane P. Wood will deliver the keynote address, titled “Is It Time to Abolish the Federal Circuit’s Exclusive Jurisdiction in Patent Cases?”  It promises to be a very interesting discussion.

The one-day conference will be held at the law school, 565 West Adams Street (between Clinton and Jefferson streets), in Chicago. Register here for the conference.  Registration is free for Chicago-Kent faculty and students, $15 for other academics or students, and $35 for others.

The Medicines Co. v. Mylan, Inc., No. 11 C 1285, Slip Op. (N.D. Ill. June 13, 2013) (St. Eve, J.).

Judge St. Eve denied plaintiff The Medicines Company’s (“TMC”) motion to compel discovery withheld as privileged in this patent dispute.  Initially, the Court held that TMC failed to comply with Local Rule 37.2 by filing its motion to compel without having a meet and confer.  But the Court addressed the merits of the motion to avoid “needless delay.”

Drafts of defendant Mylan’s expert report were not discoverable.  Mylan’s counsel had not written the reports, they had merely provided a prior declaration, portions of which were used verbatim in the report.  TMC was, however, free to impeach the expert based upon his copying of the declaration.  Finally, TMC did not show the “substantial need” required to overcome the Rule 16(b) protections of the draft reports.

DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 C 1531, Slip Op. (N.D. Ill. June 20, 2013) (Coleman, J.).

Judge Coleman awarded defendants (collectively “3D Systems”) approximately $140K in fees and costs as the prevailing party.  Of particular note, the Court held as follows:

  • The Court awarded witness fees for days testifying, but not days traveling.
  • The Court awarded subsistence costs, up to the allowed $71/day.
  • The Court awarded Bates-labeling costs, but not costs for confidentiality branding.
  • 3D Systems was allowed to recover for two copies of each deposition exhibit, but not the full four that it made.
  • 3D Systems was allowed to recover for three copies of summary judgment motions because 3D Systems had encountered trouble downloading multiple copies of its briefs.
  • 3D Systems did not recover for rough drafts or ASCII versions of deposition transcripts.
  • Video synchronization costs were not awarded because there were not sound or comprehension problems that required putting the text on the screen.

John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 24, 2013) (Keys, Mag. J.).

Judge Keys granted plaintiff’s motion to clarify the Court’s order that plaintiff produce documents related to two copyrighted, scientific articles that plaintiff alleges that defendants infringed by using them before the U.S. Patent & Trademark Office.  While the requests were written broadly to encompass not just the two works, but all of plaintiff’s copyrighted works.  But such a broad reading would be overly broad and unduly burdensome.  So, the requests were limited to the two articles at issue or, in limited cases, “closely related scientific articles which are much like” the asserted works.

 

 

John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 7, 2013) (Keys, Mag. J.).

Judge Keys granted in part defendant MBHB’s motion to compel document production and request for admission responses in this copyright case involving alleged infringement based upon MBHB’s use of two scientific articles before the U.S. Patent & Trademark Office and more generally in its legal practice.  MBHB sought discovery to prove that the accused conduct would not impact plaintiff’s market (for MBHB’s fair use defense) and that plaintiff knew about similar conduct and delayed unreasonably in acting to remedy it.  Of particular interest, the Court held as follows:

  • Information regarding plaintiffs’ investigation into MBHB’s accused acts was protected by privilege and/or work product immunity.
  • Plaintiff was to identify the entities from which MBHB could have received a license to the asserted works, at least in part because plaintiff had previously agreed to produce them.
  • Plaintiff was required to respond to requests for admissions regarding whether or not plaintiff used particular search terms on the Patent Office’s PAIR database as part of its pre-filing investigation.  The information was held to be merely factual and, therefore, not privileged.

Unified Messaging Sols., LLC v. United Online, Inc., MDL No. 2371, Slip Op. (N.D. Ill. May 3, 2013) (Lefkow, J.).

Judge Lefkow denied defendants’ United Online, Juno Online Services, Netzero and Memory Lane (collectively “UOL Defendants”) motion to deconsolidate their case from this earlier consolidated patent litigation.  The Judicial Panel for Multidistrict Litigation transferred the earlier filed cases to the Court for pre-trial proceedings and ordered that any “tag-along actions” be transferred to the Court.  The Court then entered an order providing that any future tag-along actions would be consolidated for pre-trial purposes.  The Court also entered a scheduling order which required the consolidated defendants to file certain papers jointly, but providing them enlarged limits for those filings.

Being required to file a joint claim construction brief, particularly with the increased page limits, did not violate the UOL Defendants’ due process rights.  The defendants were given increased page limits to assure they had sufficient space to make any necessary arguments.  Additionally, the UOL Defendants had not even yet been included in the earlier created schedule. 

Additionally, the joint briefing and claim construction hearing did not violate the UOL Defendants’ rights to brief unique issues concerning their respective accused technologies.  Claim construction focuses upon the intrinsic evidence surrounding the patents, not the accused technologies. 

While the JPML did not require pre-trial consolidation, Fed. R. Civ. P. 42 allowed the Court to consolidate the actions based upon their common questions of law and fact.  And by returning each case to its home district for trial, many of the UOL Defendants’ concerned are minimized.  The fact that the Court ordered consolidation of tag-along actions before the case against the UOL Defendants was filed was irrelevant.

Finally, pre-trial consolidation did not violate the AIA’s anti-joinder provision, 35 U.S.C. § 299, as the JPML had already held.