Easton v. Primal Wear, Inc., No. 17 C 6081, Slip Op. (N.D. Ill. Mar. 29, 2019) (Tharp, J.).

Judge Tharp denied the plaintiffs’ (collectively “Primal Mode”) Fed. R. Civ. P. 56 motion for summary judgment and defendant Primal Wear’s Fed. R. Civ. P. 12(b)(1) & (6) motion to dismiss in this Lanham Act trademark

TheBrain Techs. LP v. AnyLogic N.A., LLC, No. 17 C 6574, Slip Op. (N.D. Ill. Mar. 4, 2019) (Coleman, J.).

Judge Coleman granted defendant’s Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject-matter jurisdiction in this patent infringement case involving graphical representations of information.

The assignment chain of the patent-in-suit did

Republic Techs. (NA), LLC v. BBK Tobacco & Foods, LLC d/b/a HBI Int’l., No. 16 C 3401, Slip Op. (N.D. Ill. Jul. 7, 2016) (Bucklo, J.).

Judge Bucklo granted declaratory judgment defendant HBI’s Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiffs’ (collectively “Republic Tobacco”) complaint without prejudice to replead, if possible, in this trademark

Newt LLC v. Nestle USA, Inc., No. 09 C 4792, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.)
Judge Coleman denied defendants’ Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction, but dismissed the false patent marking case pursuant to Rule 12(b)(6) for failure to sufficiently plead intent to deceive. The Court held that plaintiff Newt had standing to sue without proof of particularized injury, citing Stauffer v. Brooks Bros., Inc., 619 F. 3d 1321, 1327 (Fed. Cir. 2010).
Newt alleged that defendant Graphic Packaging (“GPI”) falsely marked the products and sold them to the customer defendants. GPI made no allegations that the customer defendants marked the accused products. The customer defendants were, therefore, dismissed.
Further, all defendants were dismissed because Newt only made generalized intent allegations — e.g., that defendants were “sophisticated companies.”
Finally, the Complaint was dismissed because Newt made only general allegations against all defendants, rather than particular allegations against each defendant.

Continue Reading False Patent Marking Requires Particular Allegations That Each Defendant Marked

The Nielsen Co. (US), LLC v. Truck Ads, LLC, No. 08 C 6446, Slip Op. (N.D. Ill. Jan. 24, 2011) (Pallmeyer, J.).
Judge Pallmeyer granted plaintiff Nielsen’s: 1) Fed. R. Civ. P. 12(b)(1) motion to dismiss defendant Truck Ads’ declaratory judgment claim for lack of copyright infringement; and 2) Fed. R. Civ. P. 56 motion for summary judgment regarding Truck Ads’ copyright misuse counterclaim in this copyright case regarding Nielsen’s designated marketing area (“DMA”) maps.
While the Court held that any copyright claim to raw census data would be “frivolous,” that was not Nielsen’s claim. Nielsen originally brought claims alleging infringement of its DMA regions and data, as well as the DMA maps. The current claims only accused infringement of the DMA maps. There was therefore, no case or controversy regarding the DMA regions or data. The Court also granted Nielsen summary judgment on Truck Ads’ copyright misuse claim. First, the Court held that counts were split on whether copyright misuse was a proper counterclaim, or an affirmative defense. But the Court did not have to decide the issue because Truck Ads could not prove that Nielsen’s claims were wholly lacking in merit. The DMA maps are original content that can warrant copyright protection, even though they may have been created based upon uncopyrighted data. And Nielsen’s allegation that Truck Ads’ alleged copying of the maps was unlawful was not frivolous, unsupported by law or clearly contradicted by record facts. Furthermore, Truck Ads offered no evidence that its alleged harm – a lost contract – was based upon Nielsen’s accusations or its merit.

Continue Reading Maps, Not Underlying Data, Warrant Copyright Protection

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. May 4, 2010) (St. Eve, J.).
Judge St. Eve granted in part plaintiff/counter-defendant Sloan’s Fed. R. Civ. P. 12 motions in the patent infringement case involving a flush valve handle assembly. The Court dismissed defendant/counter-plaintiff’s (collectively “Zurn”) invalidity and noninfringement counterclaims to the extent they challenged patent claims other than those identified as allegedly infringed in Sloan’s complaint. The Court could have exercised jurisdiction over the counterclaims if Zurn had met the MedImmune standard independently for each of Sloan’s unasserted claims, but Zurn did not.
The Court denied Sloan’s Fed. R. Civ. P. 12(b)(6) motion to dismiss Zurn’s inequitable conduct counterclaim. Zurn met the materiality standard by pleading that Sloan should have known that admissions made in a prior, related reexamination proceeding were relevant to the Examiner in the later application.
The Court dismissed Zurn’s estoppel and misuse affirmative defenses. Each were pled in a single sentence and without particularized facts.
The Court also dismissed Zurn’s lack of actual notice affirmative defense. Zurn also denied Sloan’s actual notice allegation in its answer. Because actual notice was denied in the answer, it was not a proper affirmative defense. Finally, the Court dismissed Zurn’s noninfringement and exceptional case affirmative defenses. Neither was a proper affirmative defense.

Continue Reading Declaratory Judgment Claim Dismissed as to Unasserted Patent Claims

James H. Anderson, Inc. v. Johnson, No. 08 C 6202, Slip Op. (N.D. Ill. Jul 27, 2009) (Coar, J.).
Judge Coar granted defendants’ Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff’s copyright malpractice claim for lack of jurisdiction. Plaintiff argued that the Court had jurisdiction over its state law malpractice claim based upon 28 U.S.C. Section 1338(a) which creates the federal court’s exclusive jurisdiction over patent and copyright cases. The Court held that it did not have jurisdiction based upon the copyright claim in the underlying action. Federal jurisdiction requires not just a contested federal issue, but a substantial federal issue. The underlying was not a substantial issue. Furthermore, the federal interest in regulating malpractice was outweighed by the state interest. And the Court reasoned that copyright malpractice was different than patent malpractice. Copyright cases are fact intensive and do not require legal analysis of the claims, as required in patent law.

Continue Reading Court Lacks Jurisdiction Over Copyright Malpractice Claim

Mindy’s Restaurant, Inc. v. Watters, No. 08 C 5448, Slip Op. (N.D. Ill. Jun. 9, 2009) (Der-Yeghiayan).
Judge Der-Yeghiayan granted defendants’ Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction even though plaintiff brought a federal Lanham Act trademark infringement claim. While Lanham Act claims are generally considered federal questions creating subject matter jurisdiction, plaintiffs claims were in essence breach of contract claims. Plaintiff was a franchisor of Mindy’s Restaurants. Defendants were franchisees, until they allegedly stopped making required franchise payments and plaintiff terminated the franchise agreement. While plaintiff’s claims were for use of plaintiff’s trademarks when defendants allegedly continued operating their restaurant after the franchise agreement was canceled. As a result, the Court held that the parties dispute and plaintiff’s claims sounded in contract, not the Lanham Act. The reason the trademarks were allegedly infringed was the termination of the franchise agreement.

Continue Reading Trademark Claims Dismissed Because Dispute Sounds in Contract