First Time Videos, LLC v. Does 1-76, No. 11 C 3831, Slip Op. (N.D. Ill. Aug. 16, 2011) (Bucklo, J.).
Judge Bucklo denied the Doe defendants’ various motions to quash or dismiss in this BitTorrent copyright infringement case. Plaintiff First Time Video (“FTV”) alleged that the seventy-six Doe defendants infringed plaintiff’s copyright in an adult movie using BitTorrent and in so doing engaged in a civil conspiracy. The Court denied each motion:
· While file-sharers have limited first amendment rights, those rights do not shelter copyright infringement.
· FTV sufficiently described the alleged copyrighted work by naming the movie in the complaint.
· Joinder of the seventy-six Does was proper. FTV alleged that the Does acted in concert to copy one video over several months as part of a BitTorrent “swarm.” And the case involved common legal questions regarding copyright law.
· The Court recognized that other Northern District judges had severed all of the Doe defendants. Those cases, however, involved many more Does, and did not show a connection to Illinois. FTV alleged that it had traced the accused IP addresses to Illinois using geo-location technology.
· FTV’s personal jurisdiction allegations – that FTV traced the Doe IP addresses to Illinois – were also sufficient.

Continue Reading Shared Downloading of a Movie Makers Joinder

Culligan Int’l Co. v. Water Sys. of Birmingham, Inc., No. 10 C 8199, Slip Op. (N.D. Ill. Apr. 27, 2011) (Bucklo, J.).

The Court granted defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trademark dispute regarding plaintiff’s CULLIGAN marks. Defendants were Alabama entities without offices, employees

Caldera Pharms., Inc. v. Los Alamos Nat’l. Sec., L.L.C., No. 10 C 6347, Slip Op. (N.D. Ill. Mar. 11, 2011) (Bucklo, J.).
Judge Bucklo granted defendant UChicago Argonne’s (“Argonne”) Fed. R. Civ. P. 12(b)(1) & (b) motion to dismiss plaintiff Caldera’s claims against Argonne in this patent dispute. Caldera was allegedly the exclusive licensee of the patents-in-suit and Argonne was allegedly using the patented technology in a partnership with the licensor. Argonne argued that there was no case or controversy for Caldera’s declaratory judgment complaint because: 1) Argonne had no contract with Caldera; and 2) Caldera lacked the right to bring suit using the patents-in-suit. Caldera said its claims did not sound in breach of contract or patent infringement, but Caldera never explained what its claim was. And because Caldera had the burden of proof, the motion was granted.
Argonne also argued that Caldera’s claims were not sufficiently plead. In response, Caldera simply restated its claim with the relevant portion bolded. But merely restating claims in bold does not support plaintiff’s claims or overcome a motion to dismiss. The Court, therefore, dismissed the claims.

Continue Reading Restating and Bolding Allegations Does Not Overcome Motion to Dismiss

Late Allergen Reduction, LLC v. Dynarex Corp., No. 10 C 129, Slip Op. (N.D. Ill. Apr. 21, 2011) (Bucklo, J.).
Judge Bucklo construed the claims in this patent infringement case involving a method of neutralizing protein allergens found in natural rubber latex. Here are constructions of note:
“The protein allergens” was construed to require that the method degrade all of the protein allergens in the latex, not just one or more protein allergens.
“Non-allergenic to humans” was construed as “the protein allergens contained within the natural rubber latex are degraded such that the natural rubber latex is incapable of producing an allergic reaction in any human . . . .” Plaintiff’s proposed construction requiring greatly reduced levels of allergens to “most humans” would render the claims indefinite.
“Non-transmissive” was construed as “an optical structure that reduces the transmission of radiant light to the greatest degree practicable consistent with the intended purpose.”
“A protease enzyme and a peptidase enzyme” was construed as requiring two separate enzymes, one being a protease and the other being a peptidase. It could not be a single enzyme of both types.

Continue Reading “The Allergens” Requires All Allergens Not Just One or More

Viskase Cos., Inc. v. World Pac Int’l AG, No. 09 C 5022, Slip Op. (N.D. Ill. Feb. 3, 2011) (Bucklo, J.).
Judge Bucklo granted declaratory judgment plaintiff Viskase’s motion for summary judgment of invalidity and denied the remaining cross-summary judgment motions as moot in this patent dispute involving food casings that prevent the loss of weight, flavor and taste. The Court previously construed “impermeable” to mean that the casing did not allow any measurable loss of weight, flavor or moisture. Instead of addressing each of Viskase’s arguments element-by-element, declaratory judgment defendant World Pac put “all of its eggs in one basket.” The Court denied World Pac’s earlier summary judgment motion regarding infringement largely because of World Pac’s failure to test the alleged impermeability of Viskase’s accused products. World Pac, therefore, argued that because Viskase had not tested sausages covered by the prior art patent, it could not succeed.
But the Court explained that “what is good for the goose is not always good for the gander.” The Court held that there was no authority requiring that a party test alleged anticipatory prior art patents to prove that they read on the asserted patent. While there was some appeal to World Pac’s argument, it was unsuccessful. An accused infringer is not required to test prior art products. Furthermore, World Pac’s own expert had conceded that the relevant claim elements of the patent-in-suit were disclosed in the prior art patent.

Continue Reading Accused Infringer Need Not Test Prior Art Patented Products to Prove Invalidity

Viskase v. World Pac, No. 09 C 5022, Slip Op. (N.D. Ill. Oct. 15, 2010) (Bucklo, J.).
Judge Bucklo granted defendants’ motion to reconsider, ordering production of the “Merritt Memo” previously held to be privileged because it included litigation counsel. The Court held that litigation counsel, before becoming litigation counsel, was the principal conduit to opinion counsel and his opinion was sought in connection with opinion counsel’s analysis. The Court, however, held that no post-filing communications were discoverable in light of In re Seagate which provided post-filing protection where a preliminary injunction was denied.

Continue Reading Trial Counsel’s Opinion – Related Documents Are Discoverable

Simonian v. Monster Cable Prods., No. 10 C 1269, Slip Op. (N.D. Ill. Nov. 22, 2010) (Bucklo, J.).
Judge Bucklo granted defendant Monster Cable Products’ (“Monster”) § 1404 motion to transfer this false patent marking case. Citing the Court’s decision transferring another of plaintiff Simonian’s false marking cases to Iowa in Simonian v. Pella. As in Pella, the qui tam plaintiff’s chosen forum was given little deference. And California was the situs of the events because that is where Monster designed the packaging at issue and made the alleged marking decisions. Also, all of Monster’s witnesses were located in California. The Court, therefore, transferred the case to the Northern District of California.

Continue Reading False Marking Plaintiffs’ Choice of Forum Given Little Deference

Viskase Cos., Inc. v. World Pac Int’l. AG, No. 09 C 5022, Slip Op. (N.D. Ill. Aug. 9, 2010) (Bucklo, J.).
Judge Bucklo denied defendants’ motion for preliminary injunction based upon World Pac’s patent infringement counterclaim regarding impermeable sausage casings. Viskase’s research and design documents referenced “World Pac knock-off[s],” “World Pac replacement[s]” and “World Pac me-too” products. The key infringement issue was whether Viskase’s accused casings were “impermeable” as that term was construed by the Court. The parties set up a “classic battle of the experts” with competing testing disputing whether the accused sausage casing allowed a measurable weight loss, and therefore was permeable. While a jury would ultimately have to weigh the evidence, Viskase presented “more than insubstantial evidence” that the accused casings lost measurable weight. And Viskase’s testing was done outside of litigation, lending it additional credibility. World Pac also failed to present sufficient evidence regarding loss of flavor and taste, the other “impermeable” characteristics. Viskase, therefore, raised a substantial noninfringement question. Furthermore, World Pac did not put forth sufficient evidence to warrant a preliminary injunction. Because Viskase raised a substantial question regarding noninfringement, the Court declined to examine Viskase’s other defenses or the other element of a preliminary injunction.

Continue Reading Preliminary Injunction Denied Because of Noninfringement Evidence

GS Cleantech Corp. v. Big River Resources Galva, LLC, No. 10 C 990, Slip Op. (N.D. Ill. Jul. 30, 2010) (Andersen, J.).
Judge Andersen reassigned this case so that it could be consolidated with a case before Judge Bucklo by the same plaintiff asserting the same patent accusing similar technologies. The Court also ordered that a stay awaiting resolution of a related District of Kansas case would apply to the consolidated case.

Continue Reading Patent Cases Consolidated and Stayed Pending Related Case

Simonian v. Pella Corp., No. 10 C 1253, Slip Op. (N.D. Ill. Aug. 5, 2010) (Bucklo, J.)
Judge Bucklo granted defendant Pella’s 28 U.S.C. § 1404(a) motion to transfer plaintiff Simonian’s false patent marking case to the Southern District of Iowa. The court held that Simonian’s choice of forum was not given deference, as it normally would be. First, the real plaintiff was the United States, not Simonian. Second, the situs of the material events was Iowa where Pella made its marking and packaging decisions, not Illinois where some marked products were sold. Simonian’s numerous other false marking cases filed in the district did not weigh against transfer. Each of those cases involved different defendants, different accused products and different allegedly expired patents.

Continue Reading False Patent Marking Plaintiff’s Choice of Forum Given No Deference