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Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Sept. 18, 2009) (Dow, J.).
Judge Dow denied the parties’ cross-motions for summary judgment in this patent dispute regarding software for electronic futures trading using a static price axis.* Although the other related cases are stayed pending an appeal of the related eSpeed case to the Federal Circuit, declaratory judgment defendant Trading Technologies (“TT”) sought and Judge Moran agreed to allow this case to proceed based upon TT’s agreement that declaratory judgment plaintiff Rosenthal Collins Group (“RCG”) infringed even under the Court’s allegedly narrow construction of a “common static price axis” and “static display of prices.” TT sought to broaden the constructions on appeal. The parties agreed on how the accused Onyx software operated. The price axis was generally dynamic. But if a user pointed a cursor in the window containing the axis, the axis became static until the cursor was removed or after thirty seconds, whichever came first. TT identified this as Onyx’s order entry mode. And because Onyx has a static axis in order entry mode, TT argued that Onyx infringed based upon the order entry mode, even if it did not infringe in other modes. RCG argued that Onyx only had a single mode, and because the price axis was not consistently static, without manual recentering, there was no infringement. The Court held that whether Onyx operated in three modes and, therefore, infringed, or operated in a single mode and, therefore, did not was a question of fact. The case, therefore, was not appropriate for summary judgment.
The Court also stayed the case pending appeal of the eSpeed case, except for TT’s motion for default and sanctions.
* Click here for much more on this case and its related cases in the Blog’s archives.
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Continue Reading Whether Software Operates in One or Three Modes is a Question of Fact

Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Feb. 2, 2009) (Dow, J.).
Judge Dow denied defendants’ motion to prevent plaintiffs from using their preferred technical experts in this patent case. Pursuant to a Protective Order, plaintiffs notified defendants of their intent to provide three experts with confidential materials. Defendants objected because defendants had previously retained the same experts in a different patent case in the Northern District. The Court noted that disqualifying experts was a “drastic measure” taken only when the party seeking disqualification proves a substantial relationship between any acquired confidential information and the expert’s testimony. The two cases these experts were hired for involve different pharmaceutical formulations for treatment of different conditions. And the experts testified that because of the different technologies, no information gained in defendants’ earlier case could impact the present case or benefit defendants in this case. Additionally, the Court noted that defendants did not have a confidential or privileged relationship with the experts.
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Continue Reading Experts Allowed to Testify For and Against Party in Concurrent Cases

C.S.B. Commodities, Inc. v. Urban Trend (HK) Ltd., No. 08 C 1548, Slip Op. (N.D. Ill. Jan. 7, 2009) (Dow, J.).
Judge Dow granted corporate defendant Urban Trend’s (“Urban Trend”) and denied the individual defendant’s respective Fed. R. Civ. P. 12(b)(2) motions to dismiss plaintiff’s Lanham Act unfair competition and related state law claims for lack of personal jurisdiction. Plaintiff served the individual defendant, who was Urban Trend’s president, while he was representing Urban Trend at a trade show in Illinois. The Court held that personal service created jurisdiction over the individual defendant, even though the Court may not have had jurisdiction but for personal service. And while the individual defendant was in Illinois as part of his job responsibilities representing Urban Trend at the trade show, the Fiduciary Shield Doctrine did not protect him. As Urban Trend’s president, the individual defendant would have gained independent economic benefit from selling Urban Trend’s products at the trade show. And as president, the individual defendant had at least some control over whether to sell or promote products in Illinois.
The Court, however, held that personal service upon Urban Trend’s president was not sufficient to create jurisdiction over Urban Trend. And tradeshow attendance alone was not sufficient to create specific jurisdiction over Urban Trend. There was no evidence that Urban Trend’s tradeshow efforts were particularly focused on Illinois sales, or that Urban Trend completed any sales.
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Continue Reading Personal Service Creates Jurisdiction Over Individuals, Not Corporations

Mintel Int’l. Group Ltd. v. Neergheen, No. 08 C 3939, 2008 WL 2782818 (N.D. Ill. Jul. 16, 2008) (Dow, J.).
Judge Dow granted plaintiff a limited temporary restraining order (“TRO”) in this trade secret and non-compete case. After defendant gave plaintiff his notice of resignation from plaintiff’s marketing department, plaintiff began monitoring defendant’s computer use. This monitoring allegedly showed that defendant copied, emailed or printed various pieces of confidential information, including plaintiff’s client and vendor lists. Defendant then allegedly used those documents, in violation of defendant’s employment agreements, with defendant’s new employer, plaintiff’s alleged competitor.
The Court held that plaintiff had shown at least some likelihood of success regarding its trade secret misappropriation and Computer Fraud and Abuse Act claims based upon the alleged copying, emailing or printing of plaintiff’s client lists and other strategic documents. The Court also held that plaintiff showed a strong likelihood of success on elements of its breach of the non-compete and employment agreement claims. But the Court noted that it appeared likely that some provisions of the agreements were not enforceable.
The Court determined that plaintiff’s alleged harm would be irreparable – the use of plaintiff’s trade secret documents would result in lost sales and clients. Because plaintiff had shown a likelihood of success on the merits and irreparable harm, the Court entered a TRO. The Court ordered defendant and his agents not to use, reference or copy any documents misappropriated from plaintiff, and to return any such documents to plaintiff. The Court also enjoined defendant from soliciting any of plaintiff’s customers or clients whom defendant had contact with during the previous twelve months. And the Court enjoined defendant from soliciting plaintiff’s employees. The Court also ordered defendant to produce forensic copies of any of his personal computers.
But the Court did not enjoin defendant from working for his new employer. The Court noted that a TRO was an extraordinary remedy. And based on the available evidence, the Court was unwilling to use a TRO to end defendant’s employment, even for a limited period.
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Continue Reading Court Enjoins Competition, Not Employment

According to Chief Judge Holderman during the annual state of the Northern District speech, the state of the Northern District is “good” — click here for the Northern District’s statement regarding the speech. The Northern District was briefly at full capacity, between Judge Dow’s appointment to the Northern District and Judge Filip’s resignation to join the Department of Justice. Other highlights of the presentation included:
The Northern District remains in the top ten districts in terms of median time to civil case disposition at 6.2 months.
Magistrate Judges Brown and Mahoney were reappointed to additional eight year terms; and
The Northern District’s 2007 civil case load remained nearly constant, falling only .5% from its 2006 level.
The Northern District’s steady civil case load is especially impressive in light of the Seventh Circuit’s reduced case load in 2007. The Chicago Tribune’s Ameet Sachdev reported — click here for the story — that the Seventh Circuit’s Chief Judge Easterbrook, during his state of the Seventh Circuit speech, reported that the Seventh Circuit’s case load dropped 10% for the second year in a row. Sachdev noted that federal appellate court case loads had averaged a 5% drop per year since 2000. And Easterbrook explained the Seventh Circuit’s 10% drop for 2007 as based upon two primary factors:
The Seventh Circuit’s district courts saw an overall 6% drop in their case loads; and
The Seventh Circuit’s preference for bright line rules over totality of the circumstance tests made it easier for entities to settle their disputes, saying:
Rules make it easier for private parties to avoid litigation, or settle their disputes, without asking for appellate evaluation in every case.
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Continue Reading State of the Northern District is “Good”

While Judge Filip heads to Washington as Deputy Attorney General, the Northern District has reassigned his cases — click here for the Executive Committee’s Order. At least the following IP cases have been reassigned:
Judge Andersen
1:07-cv-05666 Dicam, Inc. v. United States Cellular
Judge Dow
1:07-cv-02883 Kids Hope USA, Inc. v. Kids Hope United
Judge Kennelly
1:06-cv-05611 Liquid Dynamics Corporation v. Vaughn Co.
Judge Zagel
1:07-cv-03339 Borg Warner Inc. et al. v. Hilite International, Inc. et al.
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Continue Reading Judge Filip’s Cases Reassigned

Prominent Consulting LLC v. Allen Bros., Inc., No. 07 C 6357, 2008 WL 373217 (N.D. Ill. Feb. 11, 2008) (Dow, J.).
Judge Dow held that the Court had jurisdiction over plaintiff Prominent Consulting’s (“PC”) copyright claim and denied defendant Allen Brothers’ motion to stay based upon Colorado River abstention. The Court had subject matter jurisdiction over PC’s copyright infringement claim – based on source code PC wrote for Allen Brothers’ websites – because the claim was not controlled solely by the parties’ contract. At least some of PC’s copyrights existed before the parties entered the contract because PC wrote some of the code before signing the contract.
The case appeared ripe for Colorado River abstention: the parties were involved in state court proceedings paralleling the federal case; both cases arose out of the parties’ website-related agreement; and PC’s available relief was identical in each case because PC’s late federal registration prevents statutory copyright damages. But the Court’s exclusive jurisdiction over the copyright claim prevented abstention. The Court cited Colorado River for the proposition that district courts lack discretion to stay cases involving exclusively federal claims.
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Continue Reading No Colorado River Abstention in Copyright Cases

Late last week, President Bush signed the appointment papers for the Northern District’s newest judge, the Honorable Robert M. Dow, Jr. Judge Dow was sworn-in last Friday by Chief Judge Holderman and is sitting in the Northern District’s Eastern Division. Here is some biographical information about Judge Kapala from the Northern District’s announcement of his appointment (click here for the announcement):
From 1993 to 1994, Judge Dow served as Law Clerk to The Honorable Joel M. Flaum of the United States Court of Appeals for the Seventh Circuit. Since 1995, Judge Dow has been employed at Mayer Brown, LLP, where he specialized in general and appellate litigation, with particular emphasis on telecommunications, state and federal constitutional law, jurisdiction, civil procedure, preemption, mass tort and products liability, admissibility of expert testimony, and class actions. Judge Dow has been acclaimed as a “superb” lawyer in the field of communications and technology law, as recognized by Chambers USA’s Guide to America’s Leading Business Lawyers. In his spare time, Judge Dow serves as Secretary for the Committee of Selection for the Rhodes Scholarships, State of Illinois, and on the Development and Academic Committees of Joliet Catholic Academy. Judge Dow was himself named a Rhodes Scholar in 1990.
Judge Dow has had a distinguished academic career, with degrees from Yale University (B.A., 1987), University of Oxford (M. Phil. in International Relations, 1990; D. Phil. in International Relations, 1997), and Harvard Law School (J.D., 1993). While at Harvard Law School, in addition to graduating with honors, Judge Dow served as supervising editor of the Harvard Journal on Legislation, a member of the Editorial Board for the Harvard Human Rights Journal, and a Teaching Fellow at Harvard College.
Welcome to the Northern District Judge Dow. Judge Dow’s investiture ceremony is scheduled for Friday, January 11, 2008 at 4:00 pm.
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Continue Reading Judge Dow Joins the Northern District Bench