VitalGo, Inc. v. Kreg Therapeutics, Inc., No. 16 C 5577, Slip Op. (N.D. Ill. Dec. 21, 2017) (Dow, J.). Judge Dow granted in part defendants’ (collectively “Kreg”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s (collectively “VitalGo”) claims and Fed. R. Civ. P. 12(f) motion to strike portions of its complaint in this copyright … Continue Reading
Weis v. Kimsaprincess Inc., No. 17 C 5471, Slip Op. (N.D. Ill Oct. 30, 2017) (Dow, J.). Judge Dow granted defendant’s 28 U.S.C. Section 1404(a) motion to transfer venue to the Central District of California in this Latham Act trademark infringement and unfair competition case involving Kim Kardashian West’s KKW Beauty line. Of particular note, … Continue Reading
Monster Energy Co. v. Peng, et al., No. 17 C 414, Slip Op. (N.D. Ill. Oct. 23, 2017) (Dow, J.). Judge Dow granted plaintiff Monster Energy’s motion for summary judgment, granting final judgment, a permanent injunction and attorney’s fees in this Lanham Act dispute involving defendants’ use of Monster Energy’s Claw Icon Mark and copyrighted … Continue Reading
Black & Decker Corp. v. Positec USA Inc., No. 11 C 5426, Slip Op. (N.D. Ill. Aug. 5, 2015) (Dow, J.). Judge Dow denied defendant’s motion to strike plaintiff Black & Decker’s (“B&D”) jury demand as to their Lanham Act claim for defendant’s profits. While the Lanham Act suggested the possibility of a jury decision, … Continue Reading
Black & Decker v. Positec USA, Inc., No. 11 C 5426, Slip Op. (N.D. Ill. Oct. 5, 2015) (Dow, J.). Judge Dow entered the jury verdict in this Lanham Act case involving plaintiff’s (collectively “Black & Decker”) black and yellow Dewalt color scheme. The jury found as follows: Defendants Positec and R W Direct infringed … Continue Reading
Saeilo Enters., Inc. v. Alphonse Capone Enters., Inc., No. 13 C 2306, Slip Op. (N.D. Ill. Dec. 5, 2014) (Dow, J. as emergency judge for Aspen, Sen. J.). Judge Dow, sitting as emergency judge for Judge Aspen, granted plaintiff Saeilo’s motion for a temporary restraining order prohibiting defendant from selling Tommy Guns’ alcohol in this … Continue Reading
Malibu Media, LLC v. Funderburg, No. 13 C 2614, Slip Op. (N.D. Ill. Apr. 24, 2015) (Dow, J.). Judge Dow granted plaintiff Malibu Media’s motion for default judgment in this copyright case regarding pornographic movies. Malibu Media sufficiently pled copyright infringement: 1) Malibu Media owned a copyright in the movie; and 2) defendant downloaded “bits” … Continue Reading
Telemedicine Sol’ns LLC v. WoundRight Techs, LLC, No. 13 C 3431, Slip Op. (N.D. Ill. Mar. 14, 2014) (Dow, J.). Judge Dow granted defendant WoundRight Technologies’ (“WoundRight”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act case involving plaintiff Telemedicine Solutions’ (“Telemedicine”) & WOUND ROUNDS federal registration. … Continue Reading
C&C Power, Inc. v. C&D Techs., Inc., No. 12 C 3376, Slip Op. (N.D. Ill. Feb. 11, 2013) (Dow, J.). Judge Dow granted plaintiff’s motion to stay its patent infringement case pending an inter partes review of the patent in suit initiated by defendants. Defendants acknowledged that the reexam could simplify or moot the district … Continue Reading
Carrier Vibrating Equip., Inc. v. General Kinematics Corp., No. 10 C 5110, Slip Op. (N.D. Ill. Sept. 27, 2012) (Dow, J.). Judge Dow granted defendant General Kinematics summary judgment of invalidity of claims 31 and 32 of plaintiff Carrier Vibrating Equipment’s (“Carrier”) patent related to controlling retention time of a casting on a vibratory conveyor … Continue Reading
Carrier Vibrating Equip., Inc. v. General Kinematics Corp., No. 10 C 5110, Slip Op. (N.D. Ill. Sept. 27, 2012) (Dow, J.). Judge Dow granted plaintiff Carrier Vibrating Equipment’s (“Carrier”) motion for summary judgment of validity and denied defendant General Kinematics’s cross motion for summary judgment of invalidity in this patent case related to controlling retention … Continue Reading
Micro Enhanced Tech. Inc. v. Videx, Inc., No. 11 C 5506, Slip Op. (N.D. Ill. Aug. 16, 2012) (Dow, J.). Judge Dow granted the customer defendants’ motion to sever and stay plaintiff MET’s claims against them based upon the customer suit exception in this patent infringement case involving MET’s Cyberlock technology. MET’s claims against Verizon … Continue Reading
Addiction & Detoxification Institute, LLC v. Epperly, No. 11 C 5947, Slip Op. (N.D. Ill. May 23, 2012) (Dow, J.). Judge Dow granted defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s patent infringement suit without prejudice to refile within twenty one days. Plaintiff’s complaint was “woefully deficient” asserting only that defendants “practiced one … Continue Reading
Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.). Judge Dow held that plaintiff’s U.S. Patent No. 6,903,083 (the “’083 patent”) was invalid based upon a sale more than one year before the ‘083 patent’s filing date and denied defendants’ motion to find … Continue Reading
Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.). Judge Dow issued his opinion, findings of fact and conclusions of law following a bench trial conducted during October and November 2010 on the issues of validity and enforceability of plaintiffs’ patent for Hectorol, … Continue Reading
7-Eleven, Inc. v. Spear, No. 10 C 6697, Slip Op. (N.D. Ill. May 11, 2012) (Dow, J.). Judge Dow granted summary judgment to plaintiff 7-Eleven in this contract and Lanham Act case after defendants (collectively “Vianna”) failed to respond to 7-Eleven’s Local Rule 56.1 statements of fact or submit its own supplemental statements of fact. … Continue Reading
ImageCube LLC v. MTS Sys. Corp., No. 04 C 7587, Slip Op. (N.D. Ill. Apr. 4, 2012) (Dow, J.). Judge Dow granted plaintiff ImageCube’s Fed. R. Civ. P. 41(a)(2) motion to dismiss all claims without prejudice in this nearly eight year-old patent litigation involving alloyed and non-alloyed powders. The Court previously granted summary judgment of … Continue Reading
Judge Dow denied plaintiff's motion for a preliminary injunction to prevent further alleged infringement of plaintiff's photographs and denied defendant John Wiley & Sons' motion to dismiss plaintiff's fraud claim. There is not an automatic rule that ongoing copyright infringement warrants an injunction. Instead, plaintiff must meet its burden as to each factor.
Plaintiff showed a likelihood of success on the merits that: 1) he has copyrighted works; 2) John Wiley & Sons only had a limited right to use them; and 3) some were used without any license. But plaintiff could not show irreparable harm. Plaintiff was in the business of licensing photographs and any harm could be remedied with money damages. The Court did, however, note that plaintiff would be in a strong position to recover his attorneys' fees should he succeed on the merits because of the ongoing nature of the alleged violation. But without irreparable harm, there could be no preliminary injunction.
Motion to Dismiss
Plaintiff's fraud claim was premised upon request letters for plaintiff's photographs and later uses of those photographs. The required intent to deceive was pled only on information and belief. Plaintiff's contentions were "barely" sufficient, but were sufficient. It was not clear whether the alleged acts were just broken promises or intentional, fraudulent acts.
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Judge Dow affirmed Magistrate Judge Brown's order entering a protective order in this copyright case involving stock photographs used in textbooks. There were three key holdings:
1. It was proper to allow defendant's print run quantities and distribution to be treated as confidential - without ruling on the confidentiality of any particular document.
2. It was proper to allow party to initially file confidential documents under seal, along with redacted public copies, to allow the Court to probe the confidentiality.
3. Excluding the use of confidential information in future, related matters was also proper. The parties can always seek to modify the provision should circumstances warrant it.
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Judge Dow granted defendants summary judgment of invalidity based upon several prior art references in this patent case involving color combinations for a printing system. As an initial matter, the Court excluded the following for failure to comply with Local Rule 56.1:
Legal conclusions or unsupported statements of fact;
Denials without proper factual support were deemed admitted;
Any additional facts in a brief, but not in a Rule 56.1 statement as supplemental statements; and
Facts shoe-horned into Rule 56.1 responses.
Of particular note:
The Court denied plaintiff's motion to strike defendant's supplemental expert declaration. While the reports included new opinions, plaintiffs were not prejudiced because the declarations were served during discovery and before the depositions of the experts.
While the Court could have stopped its analysis after the first piece of art invalidated the remaining claims, the Court analyzed each piece of art for the sake of completeness.
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OFA Royalties LLC v. Apne, No. 10 C 4237, Slip Op. (N.D. Ill. Jun. 17, 2011) (Dow, J.).
Judge Dow awarded plaintiffs (collectively "Quizno's") their attorney's fees of approximately $28k in this franchise and trademark case involving Quizno's restaurants. The Court held that the parties' franchise agreement required that a defaulting party pay the attorney's fees of the other party. Because Quizno's won its preliminary injunction motion and later won a final judgment against defendants, the agreement required that defendants pay Quizno's attorney's fees. And the Court awarded Quizno's its full fees request because defendants did not contest Quizno's motion for fees or its specific fees.
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Bobak Sausage Co. v. A & J Seven Bridges, Inc., No. 07 C 4718 Slip Op. (N.D. Ill. May 31, 2011) (Dow, J.).
After entering judgment for defendants, the Court granted defendants' unopposed bill of costs in this trademark case. The opinion is fairly vanilla, but it answers one question I get frequently: How much do you have to break down costs to support your bill of costs? Creating too much detail from summary bills can quickly eclipse the value of the average bill of costs. The Court answered that question as follows, with useful case cites:
Under Section 1920(4), the prevailing party is "not required to submit a bill of costs containing a description so detailed as to make it impossible economically to recover photocopying costs." Northbrook Excess & Surplus Ins. Co. v. Proctor & Gamble, 924 F.2d 633, 643 (7th Cir. 1991). Instead, the prevailing party need only provide the best breakdown obtainable from the records. See id.
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Genzyme Corp. v. Cobrek Pharms., Inc., No. 10 C 112 (N.D. Ill. Feb. 17, 2011) (Dow, J.).
Judge Dow used the Court's inherent power to grant plaintiff Genzyme's motion to stay the case pending the reexamination of Genzyme's patent related to its pharmaceutical drug Hectorol. The Patent Office had already issued an Office Action rejecting all of Genzyme's claims. The Court also noted that reexams were valuable, during the initial stages of a case, because they either remove an issue for trial, when claims are rejected, or focus the issue by providing the Court with the PTO's expert view on the claim issues. The Court noted that in this case only limited discovery had occurred -- no depositions had been taken -- and a trial date had not been set. Finally, it was the Defendant that filed the reexamination request and then opposed the motion to stay. And to the extent that the delay created by a stay would harm the Defendant, that was mitigated by the fact that the case(s) had already been pending for three years.
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