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Clarke v. Gregory, No. 09 C 7978, Slip Op. (N.D. Ill. Jul. 26, 2010) (Dow J.).
Judge Dow denied declaratory judgment plaintiff’s motion to remand this case involving rights to two plays to state court. Plaintiff argued that her claim sounded in contract and therefore, should not have been removed to Federal Court. But plaintiff claimed rights in two plays, the first allegedly covered by the contract, and the second not. At a minimum, therefore, the claim for the second play sounded in copyright and was a federal question.
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Continue Reading However They are Styled, Claims Involving Copyright Ownership are Federal Questions

Cyber Websmith v. Am. Dental Assoc., No. 09 C 6198, Slip Op. (N.D. Ill. Aug. 4, 2010) (Dow, J.).
Judge Dow granted defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s Lanham Act and Illinois Deceptive Trade Practices Act claims. Both were essentially reverse passing off claims – defendants allegedly represented plaintiff’s website templates as their own. And reverse passing off claims based upon copyrighted works rarely survive preemption claims. Pleading consumer confusion was not enough to avoid preemption in this case.
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Continue Reading Passing Off Claims Preempted by Copyright Claims

Cyber Websmith v. Am. Dental Assoc., No. 09 C 6198, Slip Op. (N.D. Ill. Aug. 4, 2010) (Dow, J.).
Judge Dow granted the parties’ competing motions for extensions of fact discovery and the deadline for filing dispositive motions. While plaintiff’s motion to extend fact discovery was filed after fact discovery had closed, the Court granted the extension because defendant did not meet its discovery obligations until after the close of fact discovery and because both parties continued to conduct discovery after fact discovery closed.
The Court also extended the dispositive motion deadline thirty days beyond the close of discovery. The extension allowed defendant’s new counsel to “catch up” and both parties time to evaluate their positions after the close of fact discovery. Finally, the Court cautioned the parties’ counsel that they must appear at status conferences or face sanctions.
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Continue Reading Court Extends Discovery and Warns Parties to Attend Hearings

GZ Gourmet Food & Beverages v. Radioactive Energy of Ill., No. 07 C 7110, Slip Op. (N.D. Ill. Aug. 31, 2010) (Dow, J.).
Judge Dow granted plaintiff’s counsel’s motion to withdraw contingent upon counsel serving plaintiff with the Order by certified mail. Plaintiff had not responded to counsel in several months and was several months overdue in responding to discovery requests. The Court denied defendant’s motion for sanctions based upon that delay. Instead, the Court offered plaintiff one additional opportunity to hire substitute counsel and begin prosecuting its case. The Court warned that corporate entities cannot appear pro se in federal court. The Court also warned that failure to retain counsel and appear at the next status could result in sanctions up to dismissal of plaintiff’s case.
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Continue Reading Party Required to Hire Counsel or Face Sanctions

Merrill Primack v. Polto, Inc., No. 08 C 4539, Slip Op. (N.D. Ill. Jul. 8, 2010) (Dow, J.).
Judge Dow granted defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss this Lanham Act case over plaintiff’s “Credit Lifeline” mark for lack of personal jurisdiction. Plaintiff did not claim general jurisdiction, relying only upon specific jurisdiction. Defendants’ only Illinois contacts were the sale of 212 books unrelated to the Credit Lifeline mark into Illinois. And defendants’ offer for sale of its Credit Lifeline book via an interactive website could not alone create specific jurisdiction. Similarly, injury to intellectual property alone did not create jurisdiction based upon the effects test. Harm to the plaintiff in the jurisdiction did not satisfy the test by itself. Defendant’s actions must have been intentional, aimed at the forum state and defendant had to know that plaintiff’s harm was likely to be suffered. But there was no indication that defendant was even aware of plaintiffs’ Credit Lifeline mark, or of plaintiff, from defendant’s first use of the mark in 2001 until, at the earliest, when plaintiff registered its mark in 2008.
Finally, the Court held that there was no persuasive reason that exercising personal jurisdiction would have comported with “fair play and substantial justice.”
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Continue Reading Unrelated Sales Do Not Create Specific Jurisdiction

Bone Care Int’l, LLC v. Pentech Pharma., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. June 4, 2010) (Dow. J.)
Judge Dow construed the claims in this patent infringement action related to methods for preventing bone mass loss using vitamin D. As an initial matter, the Court held that the person of ordinary skill in the court was someone in the field of kidney disease with either a Ph.D. or an M.D., adopting plaintiffs’ construction. Defendants’ argued that both a Ph.D. and an M.D. were required, but the parties agreed that the definition did not impact their respective arguments. Of particular interest, the Court construed the following terms:
The Court declined to construe “lowering” or “lowered” because the parties did not contest that the constructions impacted claim scope, and their ordinary meanings were sufficient.
“Serum parathyroid hormone” was construed as “blood concentrations of parathyroid hormone.”
“Suffer from” was construed as “having” consistent with its ordinary meaning. The dictionary drew a distinction between suffering from and suffering with, which is associated with pain or discomfort from a condition.
“Hyperparathyroidism” was construed consistent with medical dictionaries as “increased (i.e., above normal) secretion of PTH by the parathyroid gland.”
“End stage renal disease” was construed as “a disease wherein the patients’ kidneys no longer function at a level necessary to sustain life and thus require chronic dialysis or kidney transplantation.”
“Effective Amount” was construed as “an effective amount of 1a-OH-vitamin D2 to lower and maintain lowered blood concentrations of PTH with a lower incidence of hypercalcemia than is associated with the extant conventional Vitamin D3 treatments.”
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Continue Reading Court Construes Claims re Method of Treating Kidney Disease

Bone Care Int’l, LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Apr. 23, 2010) (Dow, Jr.).

Judge Dow granted in part plaintiffs’ motion to dismiss plaintiff’s inequitable conduct affirmative defenses and corresponding counterclaim in this patent case related to a treatment for hyperthyroidism. The Court dismissed defendants’ defenses and claims based…

Bobak Sausage Co. v. A & J Seven Bridges, Inc. d/b/a Bobak’s Signature Events, No. 07 C 4718, Slip Op. (N.D. Ill. Apr. 26, 2010) (Dow, Jr.).
Judge Dow denied without prejudice defendants’ Fed. R. Evid. 702 motion to exclude plaintiff’s trademark survey expert in this Lanham Act case involving plaintiff’s Bobak marks. Plaintiff’s eight question survey was flawed. The survey’s relevant universe was too broad.
Metropolitan Chicago residents were surveyed, not just those in the market for the parties’ products. The survey was also underinclusive because it excluded businesses, a large percentage of defendants’ business. Additionally, the survey asked leading questions, and did not use the parties’ visual marks. Finally, the survey used only minimal controls.
Despite having identified technical defects in the survey, the Court did not exclude the survey. Although the defects substantially limited the usefulness of the survey, the survey was not one of the “rare” ones that are “completely unhelpful” to the trier of fact. But the Court stressed that its decision was preliminary. And the Court was more comfortable allowing a flawed survey because it was the trier of fact.
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Continue Reading Defective Trademark Survey Not Excluded Because it Might be Beneficial

Wm. Wrigley Jr. Company v. Cadbury Adams USA LLC, Case No. 04 C 346, Slip Op. (N.D. Ill. Mar. 30, 2010) (Dow, Jr.).
Judge Dow denied plaintiff Wrigley’s motion for reconsideration of the Court’s opinion granting defendant Cadbury summary judgment of invalidity based upon anticipation and obviousness in this patent case regarding menthol-enhanced chewing gum. Because Wrigley originally only opposed the anticipation arguments by claiming the prior art was not enabling, the Court refused to consider any arguments unrelated to enablement. And the fact that the Court did not specifically address each of the seven undue experimentation factors in denying Wrigley’s argument against invalidity was irrelevant. The Court was not required to consider every factor. And Wrigley did not specifically tie any of its original arguments to the factors. Finally, Wrigley never provided “meaningful evidence” showing the amount of experimentation that would have been required. The Court did not address Wrigley’s arguments regarding obviousness because they sough to “re-hash rejected arguments.”
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Continue Reading Summary Judgment Arguments Not Made Originally Not Reclaimable

ImageCube LLC v. The Boeing Co., No. 04 C 7587, Slip Op. ( N.D. Ill. Jan. 22, 2010) (Dow, J.).
Judge Dow entered a final judgment as to defendant Boeing in this patent case and stayed the remaining claims pending a Federal Circuit appeal of the claim construction and summary judgment of Boeing’s final judgment. The parties all agreed that the Court’s claim construction and partial summary judgment ended the case as to Boeing. What was left of the case was the remaining defendants’ affirmative defenses and noninfringement, invalidity and unenforceability counterclaims. “Mere defenses” are not sufficient to avoid a Fed. R. Civ. P. 54(b) final judgment. Once one defense is decided for defendant, additional defenses need not necessarily be considered. And the remaining counterclaims would all benefit, should they be tried upon remand, from the Federal Circuit’s claim construction decision. An immediate appeal might also hasten resolution of the entire case. Plaintiff acknowledged that it was unlikely to pursue its claims if the Federal Circuit upheld the Court’s claim construction.
Finally, the Court noted that defendants, over plaintiff’s objections, sought and got the schedule they wanted addressing limited issues before full discovery. Defendants cannot, therefore, “complain too loudly” about seeking more definitive resolution of limited issues before turning to the remainder of the case.
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Continue Reading Court Enters Final Judgment as to One Defendant and Stays Case Pending Appeal