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

Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, No. 13 C 4417, Slip Op. (N.D. Ill. Jan. 29, 2015) (Hart, Sen. J.).

Judge Hart granted defendants’ Mercedes-Benz USA’s and Daimler’s Fed. R. Civ. P. 12(c) motion to dismiss plaintiff Vehicle Intelligence & Safety’s (“VIS”) patent claims as unenforceable because they were patent ineligible

Fujitsu Ltd. v. Tellabs Ops., Inc., No. 12 C 3229, Slip Op. (N.D. Ills. Apr. 18, 2014) (Holderman, Sen. J.).

Judge Holderman denied defendants’ (collectively “Tellabs”) Fed. R. Civ. P. 12(c) motion to dismiss two Fujitsu entities’ trade secret and other tort counterclaims based upon the relevant statute of limitations in this patent case.

Illinois Computer Research, LLC v. Google Inc., No. 07 C 5081 (N.D. Ill.) (Pallmeyer, J.).
Judge Pallmeyer is presiding over this case, which began as a standard case of a patent holding company, Illinois Computer Research (“ICR”) suing a large defendant, in this case Google, for patent infringement. The complaint was a standard three page notice pleading complaint alleging that Google infringed ICR’s patents based upon its Book Search functionality – click here for the original complaint. But the case quickly morphed into a dispute between a law firm, Fish & Richardson (“Fish”), and its former partner, the inventor and former owner of the patents in suit Scott Harris. ICR amended its complaint adding Fish and turning it in to a speaking complaint alleging that Fish forced Harris to resign because of the suit against Google and seeking a declaratory judgment that Harris, not Fish, owned the patent in suit – click here for the amended complaint.
Fish answered the amended complaint – click here for the answer – and filed speaking counterclaims alleging that Harris breached his partnership contract and fiduciary duties, and seeking a declaratory judgment that Fish owned the patents – click here for the counterclaims. Harris responded with his own speaking counterclaims alleging tortious interference and defamation – click here for Harris’s counterclaims and click here for Fish’s answer. Shortly after Fish’s second answer, Google was voluntarily dismissed with prejudice, but the case regarding Harris and Fish continued.
Fish filed a motion for expedited discovery, which the Court granted in court, without an opinion detailing the discovery allowed. Fish also filed a Fed. R. Civ. P. 12(c) motion for judgment on the pleadings seeking to dismiss plaintiffs’ tortious interference and defamation claims. That motion has been briefed, but not decided yet. And last week, Fish filed a motion to amend its counterclaims and third-party complaint naming six additional entities – click here for the motion. The motion does not identify the new parties specifically except to say that some are unnamed Doe defendants and that they are all related or believed to be related to Harris’s and ICR’s law firm Niro Scavone. Fish appears to be making a Propat-style argument that some or all of the additional defendants have or had an interest in the patent in suit and, therefore, are necessary parties. I will cover these opinions as they come out, but in light of all of the coverage this case has been getting – for example, see this recent Troll Tracker post and this case timeline at Joe Mullin’s The Prior Art Blog which Mullin promises to update periodically – I thought readers would be interested in some detailed background of the case. More to come as the Court issues opinions.

Continue Reading ICR v. Fish & Richardson: Patent Infringement Gets Personal

Junction Solutions, LLC v. MBS Dev., Inc., No. 06 C 1632, 2007 WL 4233995 (N.D. Ill. Nov. 20, 2007) (Gottschall, J.).*
Judge Gottschall denied defendant’s Fed. R. Civ. P. 12(c) motion to dismiss plaintiff’s trade secret misappropriation complaint based upon the parties’ prior settlement agreement and resulting dismissal with prejudice by the District of Colorado. While the alleged misappropriation was the same — defendant employees leaving plaintiff to start their own competing software company — the use of the trade secrets was different. In the Colorado case, defendants allegedly harmed plaintiff by starting a competitor using plaintiff’s trade secrets. In this case, the alleged harm was developing competing software, after the Colorado settlement and dismissal. Claim preclusion, therefore, did not apply. Issue preclusion did not apply because the Colorado court did not make any substantive final judgments. The settlement agreement could have barred plaintiff’s claim, but the agreement’s release expressly excluded claims arising after the agreement’s effective date.
* Click here for more on this case in the Blog’s archives.

Continue Reading Different Harms Allow Re-Litigation of Same TS Misappropriation

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287503 (N.D. Ill. Dec. 4, 2007) (Coar, J.).*
Judge Coar granted defendant Sandoz’s Fed. R. Civ. P. 12(b)(6) motion to dismiss or in the alternative Fed. R. Civ. P. 12(c) motion for judgment on the pleadings, dismissing plaintiff Abbott’s willfulness claims Abbott alleged that Sandoz willfully infringed Abbott’s patent related to an extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL). At the time Sandoz entered the market with its generic version of Biaxin XL, the Federal Circuit had issued an opinion based upon an interlocutory appeal of a temporary restraining order, which included statements that Abbott’s patent was susceptible to invalidity and unenforceability argument. The Court held that Sandoz’s reliance on that opinion, regardless of the limited record it was based upon or its non-final nature was objectively reasonable, well above the In re Seagate objective recklessness standard.
* Click here for more on this case and related cases.

Continue Reading Reliance Upon Fed. Cir.’s Cursory Potential Invalidity Statements Avoids Willfulness

Mullen v. Society of Stage Directors & Choreographers, No. 06 C 6818, 2007 WL 2892654 (N.D. Ill. Sep. 30, 2007) (Coar, J.).
Judge Coar granted in part defendant United Scenic Artists’ (“USA”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ declaratory judgment (“DJ”) claims and denied all defendants’ motions seeking dismissal of plaintiffs’ defamation claim. Plaintiffs are the various production heads of the Chicago production of the musical “Urinetown!” (“Chicago Production”). The Chicago Production was performed pursuant to a license from Blue Dog Entertainment, LLC. But despite that license, plaintiffs each received a cease and desist letter from counsel for defendants (the heads of production of the Broadway Urinetown! production (“Broadway Production”) and their unions USA and the Society of Stage Directors & Choreographers (“SSDC”). The letter warned that plaintiffs willfully copied copyrighted aspects of the Broadway Production and attempted to pass off the Chicago Production as the award-winning Broadway Production. Defendants demanded an accounting of revenues from the Chicago Production in order to calculate damages. Defendants also held a press conference during which they publicly stated that the plaintiffs “plagiarized” the Broadway Production. Plaintiffs responded by filing suit seeking declaratory judgments that the Chicago Production did not infringe any of plaintiffs’ copyrights and that it was not Lanham Act passing off. And based upon the press conference, plaintiffs included a defamation claim.
The Court dismissed plaintiffs’ copyright infringement DJ claim against USA because USA held no copyrights related to Urinetown! or the Broadway Production. So, USA could not have filed a copyright infringement action against plaintiffs. The Court also dismissed plaintiffs’ Lanham Act DJ claim against USA. While USA may have been able to show the generalized harm necessary for prudential standing based upon the alleged harm to its members who produced the Broadway Production, it could not show the specific injury required for Article III standing, because that alleged injury was to its members not USA.
The Court, however, denied the defendants’ Rule 12(b)(6) motion to dismiss and Fed. R. Civ. P. 12(c) motion for judgment on the pleadings regarding plaintiffs’ defamation claim. First, defamation claims do not trigger the Fed. R. Civ. P. 9(b) heightened pleading standards because they do not involve fraud or mistake. Second, defendants’ alleged wrongful accusation that plaintiffs plagiarized the Broadway Production is defamation per se because originality and integrity are core values of theatre:
It is beyond doubt that statements consisting of false accusations of plagiarism against professionals in industries where the measure of the quality of work centers on creativity, originality and integrity (i.e. – authors, journalists, artists, thespians, publishers, producers and directors of fine arts productions, etc.) are capable of imputing such persons lack ability or otherwise prejudice such persons in their professions.
Furthermore, the Court held that it was “absurd” to argue that “plagiarism” had an innocent meaning:
[Plagiarism] is not capable of any meaning that would not impugn Plaintiffs’ ability or not prejudice them in their profession.

Continue Reading Plagiarism is Defamation Per Se