Malibu Media, LLC v. Khan, No. 18 C 3028, Slip Op. (N.D. Ill. Mar. 27, 2019) (Leinenweber, J.).

Judge Leinenweber granted in part plaintiff Malibu Media’s Fed. R. Civ. P. 12(b)(6) motion to dismiss individual defendants’ declaratory judgment copyright and copyright misuse claims in this BitTorrent case involving use and sharing of pornographic video

Kroto Inc. v. Chapa, No. 17 C 1218, Slip Op. (N.D. Ill. Jun. 22, 2017) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted declaratory judgment defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction, but denied their sanctions motion in this copyright dispute.

Declaratory judgment plaintiff Kroto’s jurisdictional allegation revolved around defendants’

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

Bodum USA, Inc. v. A Top Casting Inc., No. 16 C 2916, Slip Op. (N.D. Ill. Aug. 23, 2016) (Kennelly, J.).

Judge Kennelly granted plaintiff Bodum’s Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant A Top Casting’s declaratory judgment counterclaims in this trade dress dispute involving French press coffeemakers.

A Top Casting’s counterclaims

Apotex, Inc. v. Daiichi Sankyo, Inc., No. 12 C 9295 & 15 C 3695, Slip Op. (N.D. Ill. Jan. 8, 2016) (Coleman, J.).

Judge Coleman granted plaintiff Apotex’s motion for summary judgment of noninfringement in this ANDA patent case seeking to manufacture and sell generic version of Benicar and Benicar HCT.

As an initial

Feit Elec. Co. v. Beacon Point Capital, LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Feb. 9, 2015) (Coleman, J.).

Judge Coleman granted in part declaratory judgment defendant Beacon Point Capital’s (“Beacon”) Fed. R. Civ. P. 12(b)(1) & (6) motion to dismiss plaintiff Feit’s declaratory judgment counts seeking a judgment that certain of

ExactLogic, Inc. v. Xactlink, LLC, No. 11 C 50038, Slip Op. (N.D. Ill. Aug. 18, 2011) (Reinhard, J.).
Judge Reinhard granted in part plaintiff ExactLogic’s motion to dismiss defendant Xactlink’s counterclaims. The Court dismissed Xactlink’s declaratory judgment copyright infringement counterclaim. Xactlink agreed to dismiss the claim so long as Xactlink was free to challenge the validity of ExactLogic’s registration. Because the registration’s validity was at issue based upon Xactlink’s affirmative defenses, the Court dismissed the counterclaim.
The Court allowed Xactlink’s declaratory judgment trademark infringement claim. While ExactLogic did not directly allege trademark infringement, its Lanham Act claims would require a determination of the likelihood of confusion between the marks. As such, the trademark was as issue and Xactlink had a right to its declaratory judgment claim.

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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.

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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.

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