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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

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 22, 2008) (Moran, Sen. J.).*
After a jury held that certain of defendants’ (collectively “eSpeed”) products willfuly infringed two of plaintiff Trading Technologies’ (“TT”) futures trading software patents (the Court previously reversed the willfulness finding), the Court entered a permanent injunction preventing future sales of the infringing software — a previous opinion granted summary judgment of noninfringement of eSpeed’s current software and all software except that sold during a six month period shortly after TT’s patents issued. The Court looked at each of the four standard injunction elements, as required by the Supreme Court in eBay Inc. v. MercExchange, LLC.
Irreparable Harm
The Court held that TT would be irreparably harmed by any continued sales of infringing product because TT’s successful business was built around its patented technology and, therefore, direct competitors with infringing products irreparably harmed TT. The Court agreed with eSpeed that general claims of competition were insufficient pursuant to eBay, but the Court held that TT’s direct competition assertions were supported by trial testimony.
Inadequate Remedy at Law
eSpeed argued that TT’s numerous licenses proved that monetary damages could compensate TT, as the eBay district court held after remand. but the Court distinguished eBay. eBay was premised upon a combination of plaintiff MercExchange’s:
willingness to license;
choice not to practice the patent;
failure to seek preliminary injuctive relief; and
consistent, clear statements that it desired monetary damages.
In contrast, TT manufactured a patented product and only licensed as an alternative to litigation. And the Court acknowledged TT’s concern that providing monetary damages after trial without an injuction would force a compulsory license on TT.
Balance of Hardships
The Court held that TT would be more harmed without an injunction than eSpeed would be harmed by an injunction. eSpeed no longer made or sold the infringing software, so an injunction would cause eSpeed little or no harm. Furthermore, eSpeed manufactured numerous non-infringing products. So, the extent of any harm was further minimized.
Public Interest
eSpeed argued that the public interest weighed against granting injunctions regarding patents in reexamination. But TT’s patents had since been upheld in the reexam. So, the only public interest factor was enforcement of TT’s patent rights.
For these reasons, the Court entered a permanent injunction. Click here to read the Permanent Injunction Order.
* Click here to read much more about this case in the Blog’s archives and click here for this opinion.
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Continue Reading Trading Technologies v. eSpeed: Permanent Injunction

Brian Higgins’s Maryland IP Law Blog post about the progeny of In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), inspired me to do follow up posts identifying Northern District cases discussing recent major IP decisions — click here for my post on injunctions after eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). There have been a number of obviousness decisions in the Northern District since KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 127 S.Ct. 1727 (2007). Here they are:*
Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 1549498 (N.D. Ill. May 24, 2007) (Coar, J.). — Holding that the Court’s pre-KSR analysis need not be reconsidered in light of KSR because an element was missing from the prior art, regardless of what standard was used.
Herman Miller, Inc. v. Teknion Corp., No. 05 C 2761, 2007 WL 2230042 (N.D. Ill. Jul. 30, 2007) (Gettleman, J.). — Noting that, in light of KSR, plaintiff issued a statement of non-liability and certain patents were removed from the suit.
Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. Jun. 8, 2007). — Holding that the pre-KSR jury’s decision would not have changed if given a KSR obviousness instruction.
These opinions suggest that KSR is not changing obviousness law in the Northern District much. I suspect that is not true. Once we have a larger sample of cases, including more where the initial analysis was not done pre-KSR, we will see more patents held invalid based upon obviousness.
* A brief note on methodology: this was not a thorough study and does not include cases that granted or denied injunctions without discussion. For a more complete list of post-KSR decisions nationwide, go to the Fire of Genius.
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Continue Reading Obviousness Post-KSR

Brian Higgins’s Maryland IP Law Blog post about the progeny of In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), inspired me to do follow up posts identifying Northern District cases discussing recent major IP decisions. The first looks at cases discussing eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). Here they are:*
Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3446144 (N.D. Ill. Nov. 29, 2006) (St. Eve, J.). — Granting a permanent injunction in a case between competitors.
Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1017751 (N.D. Ill. Mar. 30, 2007) (Moran, J.). — Granting a preliminary injunction in a case between competitors and holding that in eBay the Supreme Court limited the automatic presumption of irreparable harm based upon infringement.
For further analysis of post-eBay decisions, check out my post about Michael Smith’s analysis (click here) and my post discussing Ray Nimmer’s thoughts on the potential for compulsory licensing regimes because of eBay (click here).
* A brief note on methodology: this was not a thorough study and does not include cases that granted or denied injunctions without discussion. For a more comprehensive list of decisions nationwide (updated through the end of 2007) go to the Fire of Genius.
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Continue Reading Injunctions Post-eBay

In a recent post on the University of Houston Law Center Faculty Blog (another LexBlog site), Ray Nimmer asks whether the Supreme Court’s recent eBay v. MercExchange permanent injunction decision will lead to compulsory licensing. Nimmer discusses two alternatives when a permanent injunction is not granted after a patent infringement finding:
One response is simply to assess damages as to past infringement, leaving any future use of the patent for a voluntary agreement of the parties (a license) or a subsequent infringement suit for the subsequent infringements. That is clearly the preferable option, although it does raise limited issues of judicial economy.
A second alternative is to permit subsequent use by the defendant subject to the payment of a reasonable royalty imposed by the court. This is a form of compulsory licensing that rewards the wrongdoer, unless the remedy has been requested by the patent owner. Nevertheless, a panel of the Federal Circuit indicated that such a remedy may be appropriate. One wonders why.
Nimmer concludes that courts should not impose compulsory licensing for future infringement absent substantial public policy reasons:
The preconditions should be both an opportunity to negotiate a license and, failing a bargain, a request by both parties for the court to impose a royalty as part of the remedy for infringement. A patent creates a right to exclude and, where the patent owner prefers to exercise that right, it should not be forced into a licensing arrangement resulting from a case in which it prevailed on the infringement claim. There may be some cases in which vital public policy interests justify this result, but those cannot be grounded simply in the fact that the court denied a permanent injunction or the parties have not agreed to license terms. A remedy should not penalize the person to whom the remedy is awarded.
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Continue Reading Will eBay v. MercExchange Lead to Compulsory Licensing?

Peter Zura has an excellent post at his 271 Patent Blog about the latest statistical analysis of patent litigations by Professor Paul Janicke of The University of Houston Law Center — you can read Prof. Janicke’s study here or get a copy of his related PowerPoint slides here. Of particular note to readers of the Blog, the Northern District remains in the top five districts based upon the number of patent filings, with almost 5% of the nation’s patent cases filed here. Zura also notes that the median verdict was $4.2M, which is almost the median cost litigants pay to take a $25M+ patent case to trial ($4.5M according to the 2005 AIPLA survey). Finally, post-eBay permanent injunction are denied 25% of the time, as opposed to 16% pre-eBay.
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Continue Reading Northern District of Illinois is a Top Five Patent District

Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1017751 (N.D. Ill. Mar. 30, 2007) (Moran, J.).

Judge Moran granted plaintiffs’ motion for a preliminary injunction, preventing defendant from marketing and selling its garage door opener transmitters.  Relying upon its two prior claim construction decisions (which can be found in the Blog’s archives), the Court first determined that plaintiffs had proven a likelihood of success on its infringement claims.  Then the Court considered plaintiffs’ irreparable harm claims.  The Court denied plaintiffs’ argument that its showing of a strong likelihood of success creates a presumption of irreparable harm.  Citing eBay, Inc.  v. Merc Exchange, L.L.C., 126 S. Ct. 1837 (2006), the Court held that the Supreme Court limited the automatic presumption of irreparable harm based upon infringement.  Instead, the Court determined that plaintiffs’ had shown that they were irreparably harmed because defendant’s sales had eroded its prices and strained its customer relations.Continue Reading eBay Decision Negates Presumption of Irreparable Harm for PI’s

Last Wednesday the Chicago IP Alliance held its second annual Chicago IP Day at Loyola.  It was, no surprise, an excellent program providing an information-packed day.  I do not have the time to summarize all of the presentations, but I will give some highlights.  George McAndrews, McAndrews, Held & Malloy, gave a very interesting presentation outlining his views on the Supreme Court’s recent eBay v. MercExchange opinion requiring the use of the standard permanent injunction test to determine whether a permanent injunction should be granted after a patent infringement judgment.  Essentially, he argued that the Supreme Court’s ruling contradicts the constitutional grant of a limited monopoly.  His presentation led to some spirited debate at various tables during the excellent lunch in Loyola’s beautiful new conference room atop the law school.Continue Reading Chicago IP Day

Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3446144 (N.D. Ill. Nov. 29, 2006) (St. Eve, J.).*

In this opinion, Judge St. Eve issued what I believe is the first permanent injunction in the Northern District pursuant to the "new" Supreme Court standard set forth in eBay Inc. v. MercExchange, L.L.C., __ U.S. __, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).  The Court found irreparable harm, satisfying the first prong of the injunction standard, based on the possibility of continuing sales (although defendant stated that it had stopped producing and selling the infringing product), harm to plaintiff’s reputation as an innovator in the relevant market and plaintiff’s loss of market share.  Continue Reading N.D. Ill. Grants a Permanent Injunction Pursuant to the eBay Standard