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Heathcote Holdings Corp., Inc. v. Leapfrog Enters., Inc., No. 10 C 1471, Slip Op. (N.D. Ill. Dec. 27, 2010) (Coar, J.).
Judge Coar transferred plaintiff Heathcote’s false patent marking case to the Northern District of California. Because Heathcote was a relator standing in the shoes of the federal government, Heathcote’s chosen forum was given little deference. All of defendant’s witnesses — party and non-party alike — were located in California. Additionally, the relevant evidence was located in defendant’s California offices. And Heathcote was unlikely to have much relevant evidence. The Court, therefore, transferred the case.
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Continue Reading False Marking Plaintiff’s Chosen Form Not Given Deference

Chief Judge Holderman recently gave the annual State of the Court address, concluding that the Northern District continues to be an active, growing district court. Civil case filings were up 6.2% from 2008 to 2009, and the Northern District remains in the top 10% of district courts for median time to disposition – 6.2 months.
The Court began 2009 with one vacant judgeship – created by Judge Filip’s March 2008 resignation. The Court ended 2009 with from after Judges Bucklo, Coar and Gettleman took senior status. In February 2010, Judge Manning also took senior status. Judge Feinerman was confirmed last month, reducing the vacant seats by one, but there could be five vacancies again at the end of July when Judge Anderson retires.
The magistrate bench was also active. Judges Ashman and Keys shifted to recalled status. Judges Finnegan, Gilbert and Kim joined the bench.
Finally, the number of registered e-filers is up 18% to over 25,000. And the daily filing rate is up 15% to an average 867 documents per day.
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Continue Reading The State of the Northern District Remains Strong

General Kinematics Corp. v. Carrier Vibrating Equipment, No. 08 C 1264, Slip Op. (N.D. Ill. Jul. 27, 2009) (Coar, J.).
Judge Coar construed the claims of declaratory judgment defendant’s patent for a vibratory conveyor system. The following constructions were particularly interesting:
* The Court noted that declaratory judgment plaintiff did not separately define the function and structure for the means plus function elements. While there was no direct impact from the failure to define function and structure separately, the Court noted that the definitions did not assist its constructions.
* The structure of one means plus function element was not just a generic controller, but a controller as described in the specification and figures, as well as equivalents of them.
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Continue Reading In Construing Means Plus Function Term Must Identify Function and Structure

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.
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Continue Reading Court Lacks Jurisdiction Over Copyright Malpractice Claim

Chief Judge Holderman recently gave his annual State of the Northern District speech. In a word, Judge Holderman said that the state of the District is “good.” Here are some of the highlights of the presentation (click here to read the Court’s press release):
* Judge Gettleman intends to take senior status May 5 and Judge Coar intends to take senior status August 12. Additionally, Magistrate Judge Ashman intends to retire later this year.
* Combined with the vacancy created when Judge Filip went to the Justice Department, when Judges Gettleman and Coar take senior status there will be three Article III and one magistrate vacancies on the Court.
* Civil filings were up 2.7% in 2008 over 2007. And the Court resolves those disputes quickly. The Northern District is in the top 10% of district court with its median time of 6.2 months to disposition.
* The Court is participating in a pilot program which allows jurors to fill out jury forms and get information about their service online.
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Continue Reading State of the Northern District is Good

DeVry Inc. v. Univ. of Medicine & Health Sciences — St. Kitts, No. 08 C 3280, Slip Op. (N.D. Ill. Feb. 3, 2009) (Coar, J.).
Judge Coar denied defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss for failure to state a claim for trademark infringement or Lanham Act false designation and false representation. Plaintiffs own and operate the Ross University School of Medicine and are the owners of ROSS and ROSS UNIVERSITY marks. Defendant marketed its medical school as “Founded by Dr. Robert Ross” and used at least one domain for email addresses including the word “ross.” Defendant is not associated with or sponsored by plaintiffs’ Ross University.
Defendant argued that its representations that its institution was founded by Dr. Ross and that Dr. Ross founded Ross University were fair uses constituting an impenetrable defense requiring dismissal. The Court, however, held that the defenses did not warrant dismissal for several reasons:
Whether the use of Dr. Ross’s name constituted the use of a mark or simply his name was a question of fact not appropriate for a decision on the pleadings;
While the Seventh Circuit has not explicitly adopted a normative fair use defense, it was not clear that defendant’s use of Dr. Ross’s name met the criteria for the defense;
There was a question of fact as to whether defendant’s repeated use of the name was more than reasonably necessary to identify the product; and
There was a question of fact as to whether the use of the Ross name implied sponsorship or endorsement.
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Continue Reading No Dismissal on Pleadings for Factual Trademark Defenses

Bajer Design & Marketing, Inc. v. Base4 Group, Inc., No. 08 C 02296, Slip Op. (N.D. Ill. Nov. 12, 2008) (Coar, J.).
Judge Coar entered the parties consent judgment, holding that defendant Base4 infringed plaintiff Bajer Design’s patents and trademarks, as well as granting judgment for Bajer Design as to its related state law claims. The Court also awarded Bajer Design damages equal to slightly more than 20% of Base4’s gross sales. Finally, the Court permanently enjoined Base4 from making, using or selling the infringing product and from using Bajer Design’s POP-UPS! and POP OPEN trademarks, absent a license from Bajer Design.
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Continue Reading Court Enters Patent & Trademark Consent Judgment

Here are several stories that did not warrant a full post, or that were so well done by another blogger that there was no point in recreating the wheel:
The Federal Circuit upheld Judge Coar’s preliminary injunction in Abbott v. Sandoz, No. 05 C 5373 — click here to read the Federal Circuit’s opinion and here to read the Blog’s prior posts on the case. Dennis Crouch at Patently-O has a good post explaining the central issue of the case — a defendant’s burden of proof regarding invalidity in the likelihood of success analysis. Judge Newman wrote the majority decision with Judge Gajarsa dissenting. Crouch sees the case as a “good vehicle” for en banc review of the preliminary injunction standard.
Ocean Tomo is holding its 8th IP auction at home in Chicago this Wednesday and Thursday.
Michael Sadowitz at the MTTLR Blog has a great post (click here to read it) discussing one of the big post-eBay unknowns, who sets post-verdict damages when a permanent injunction is not issued, judges or juries. Sadowitz looks at a string of Eastern District of Texas cases letting juries set post-verdict damages. Sadowitz also notes that the few courts that have looked at the issue have split as to whether post-verdict damages can be severed from the damages portion of the trial.
Finally, having mastered all things drug and device related, the Drug & Device Law blog has moved into the patent realm, with some excellent analysis by their colleagues Kevin McDonald and Larry Rosenberg of Jones Day. The post (click here to read it) discusses a recent Federal Circuit decision which held that cash payments made to settle Hatch-Waxman patent litigations do not violate antitrust laws, under certain conditions:
On October 15, 2008, the Federal Circuit joined the growing list of federal courts to hold that the use of cash payments to settle Hatch-Waxman patent litigation does not violate the antitrust laws as long as (1) the settlement excludes no more competition than would the patent itself and (2) the claim for patent infringement and/or validity is not a “sham,” that is, not “objectively baseless.” In In re Ciprofloxacin Hydrochloride Antitrust Litigation, No. 08-1097, 2008 WL 4570669 (Fed. Cir. Oct. 15, 2008), a unanimous panel of the United States Court of Appeals for the Federal Circuit affirmed the summary judgment granted to Bayer by the United States District Court for the Eastern District of New York, holding that Bayer’s settlement of patent litigation with a generic pharmaceutical manufacturer did not violate the antitrust laws.
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Continue Reading IP Legal News

The Seventh Circuit instituted a Commission to study the implementation of the ABA Jury Project. The Northern District was heavily represented on the Commission. The following Northern District Judges were members of the Commission: Bucklo, Brown, Coar, Darrah, Denlow, Der-Yeghiayan, Gottschall, Holderman, Kennelly, Lefkow, Moran, Schenkier, St. Eve, and Zagel. The Commission recently published its report — click here to read it. The report describes a two phase analysis. In the first phase, district judges tested the following seven ABA Principles:
1. Twelve-Person Juries;
2. Jury Selection Questionnaires;
3. Preliminary Substantive Jury Instructions;
4. Trial Time Limits;
5. Juror Questions;
6. Interim Trial Statements by Counsel; and
7. Enhanced Jury Deliberations.
Other Principles, such as juror notebooks and allowing jurors to take notes, were already in such widespread use that they were not tested. Click here for the Phase One Project manual detailing the principles, the rationales and authority behind them, and suggested procedures. Phase One resulted in questionnaires from 22 participating federal trial judges, 74 participating attorneys and 303 jurors from 38 trials that used one or more of the seven Principles. Based upon the analysis of Phase One results and questionnaires, the Commission focused Phase Two on the following four Principles:
1. Juror Questions;
2. Interim Trial Statements by Counsel;
3. Twelve-Person Juries; and
4. Preliminary Substantive Jury Instructions.
These Principles were chosen because of Phase One popularity (78% of jurors reported that being able to ask questions increased their satisfaction with the process) and because of a desire to study the Principles more. Click here for the Phase Two manual.
In Phase Two, 108 jurors from 12 trials employing one or more of the Phase Two Principles filled out questionnaires. In addition, 12 attorneys and 4 district judges that participated also filled out questionnaires. The results are interesting, but more importantly create the opportunity to powerfully impact the trial system across the Seventh Circuit in ways that benefit all of the stakeholders in the trial process — the litigants, the jurors, the judge and the judge’s chambers, and the litigators.
All four of the Phase Two Principles showed significant benefits to the trial process. 83% of jurors reported an increased understanding of the facts when allowed to ask written questions through a judge — the questions were reworded to meet evidentiary rules. And 75% of judges and 65% of attorneys thought the questions benefited jurors. Similarly, preliminary substantive jury instructions were found to improve trials by jurors (80%), judges (85%) and attorneys (70%). And the same was true for interim statements to the jury — jurors (80%) and judges (85%). Finally, twelve-person juries were found not to harm efficiency, while increasing juror diversity.
Each of the four Phase Two Principles, as well as several of the additional three Phase One Principles deserve more attention and analysis. So, over the next several weeks I will provide follow up posts discussing the findings of those Principles in greater detail. I will start with the idea of juror questions, which I find particularly important, later this week or early next.
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Continue Reading Seventh Circuit American Jury Project

Kelley v. Chicago Park District, No. 04 C 7715, Slip Op. (N.D. Ill. Sep. 29, 2007) (Coar, J.).
Judge Coar entered judgment for defendant the Chicago Park District (“CPD”) on plaintiff Chapman Kelley’s (“Kelley”) two Visual Artists Rights Act (“VARA) claims and for Kelley as to his implied breach of contract claim, after holding a bench trial.* Kelley brought this suit arguing that his work of art “Wildflower Works” (“WW”) was copyrightable as a sculpture pursuant to the Copyright Act and the VARA. Kelley originally installed his WW in Chicago’s Grant Park in 1984 pursuant to a permit from the City of Chicago. WW was an installation of wild flowers in two elliptical shapes surrounded by gravel — click here for pictures from Kelley’s website — that Kelley replanted and tended each year. Chicago periodically renewed the permit until 1994, when Kelley continued his WW pursuant to an oral permit renewal. Then in 2004, Chicago fenced off WW, effectively destroying it.
As an initial matter, the Court noted that there was a significant tension between the laws desire to define things, like what a sculpture is, and modern art:
There is a tension between the law and the evolution of ideas in modern or avant garde art; the former requires legislatures to taxonomize artistic creations, whereas the latter is occupied with expanding the definition of what we accept to be art. While Andy Warhol’s suggestion that “art is whatever you can get away with” is too nihilistic for the law to accommodate, neither should VARA be read so narrowly as to protect on the most revered work of the Old Masters. In other words, the “plain and ordinary” meanings of words describing modern art are still slippery.
The Court held that WW was a sculpture, or three dimensional art work, based upon Kelley’s manipulation of the flowers, metal and gravel used to form the contours and colors of WW. Similarly, while WW was not just two dimensional, it was also a painting because it “corral[ed] the variegation of wildflowers in bloom into pleasing oval swatches . . . .”
Although WW was a sculpture and a painting, it was not protectable pursuant to the Copyright Act and, therefore, pursuant to VARA because it is also an excluded type of authorship, a system. Section 102(b) specifically excludes systems, along with ideas, procedures and processes from copyright protection. Kelley had described WW as a “vegetative management system.” (emphasis added in the Court’s opinion). Additionally, WW was not copyrightable because Kelley did not prove that it was an original work of authorship. The Court held that it was not clear what about WW was original. And the Court would not assume that Kelley was “the first person to ever conceive of and express an arrangement of growing wildflowers in [an] ellipse-shaped enclosed area . . . .”
WW would not have been protected pursuant to VARA even if it were copyrightable because WW was a site-specific work. Because the Seventh Circuit had not decided whether VARA protected site-specific works, the Court adopted the First Circuit’s reasoning that VARA does not protect site-specific works. Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128 (1st Cir. 2006). The Court held that WW’s placement in Grant Park was integral to Kelley’s art. For example, even air vents from the parking garage below WW were specifically worked into WW as an artistic element helping to show the juxtaposition of wildlife and city life.
The Court did, however, hold that CPD created an implied contract when a Parks Commissioner assured Kelley that he did not need to seek additional permits to maintain his work. As such, CPD was obligated, not to maintain WW, but to give Kelley at least ninety days notice of any change in WW and allow Kelley to remove his wildflowers should he choose to do so. Because Kelley was not given notice, CPD breached the implied contract. Because, however, Kelley did not sufficiently prove his damages – the cost of the flowers less Kelley’s cost to remove them after he would have received notice. The Court, therefore, awarded Kelley nominal damages of $1.
According to a press release from Kelley, he was happy about the implications of the Court’s opinions for other artists, but disappointed with the nominal damages:
This ruling redefines legally what can be fine art, what it can be made of and that artists themselves make these decisions. However, regarding the nominal consideration amount that I received of $1.00, it reminds me of the 1878 case of Whistler Vs. Ruskin, in which the plaintiff received a sum total of one shilling for his moral victory.
For more on this case and the Court’s decision click here for a Chicago Sun-Times article by Andrew Herrmann.
* Click here for more on this case in the Blog’s archives.
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Continue Reading Famous Grant Park Wildflower Works both Sculpture and Painting, but Not Protected by Copyright or VARA