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.

Continue Reading Obviousness Post-KSR

Goss Int’l Ams., Inc. v. A-Am. Mach. & Assembly Co., No. 07 C 3248, 2007 WL 4294744 (N.D. Ill. Nov. 30, 2007) (Gettleman, J.).
Judge Gettleman denied defendant’s Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff’s copyright for lack of subject matter jurisdiction. Plaintiff alleged that defendant violated plaintiff’s copyrights in its simplified machine drawings of its commercial printing machines by placing them on the internet without authorization. The Court held that plaintiff’s simplification of its drawings and addition of part numbers were sufficient to meet copyright’s originality requirement. The Court also looked to the Fifth and Eighth Circuits and held that the registration requirement was met when plaintiff filed its copyright registration, as opposed to when the Copyright Office acted on it. In this case, plaintiff filed its application in May 2007 and was waiting on registration as of the date of the opinion. The Court reasoned that because plaintiff would also have a cause of action if the registration was denied, there was no reason to make plaintiff wait until the Copyright Office acted.

Continue Reading Application for Copyright Registration Creates Subject Matter Jurisdiction

Judges Coar, Gettleman, Kennelly and Lefkow are continuing their joint trial call (started in 2007, click here for the Blog’s post about it).* Each judge is contributing cases to the call, apparently at the judge’s discretion. The cases in the call will be tried in order by one of the five judges, although not necessarily the judge originally assigned the case. Each trial is expected to last no longer than five days and the attorneys and parties for a case on the call are expected to be ready for trial, including producing witnesses, on 48 hours notice. So far, I do not believe any IP cases have been put on the joint call. And I suspect that the five day trial limit will remove at least the typical patent case from the joint call, although plenty of trade secret, trademark and copyright cases could end up on it.
* Judge Bucklo was a part of the joint call last year, but is not listed this year.

Continue Reading N.D. Ill. 2008 Joint Trial Call

Federal Trade Comm. v. Trudeau, No. 03 C 3904, 2007 WL 4109607 (N.D. Ill. Nov. 16, 2007) (Gettleman, J.).
Judge Gettleman held defendant Kevin Trudeau (“Trudeau”) in contempt for violating the Court’s Stipulated Permanent Injunction (the “Injunction”). In 2003, plaintiff Federal Trade Commission (“FTC”) filed suit against Trudeau* alleging, among other things, false advertising pursuant to the FTC Act, 15 U.S.C. Section 52(a). The advertisements at issue included various informercials in which Trudeau allegedly claimed that the coral calcium in his supplement Coral Calcium Supreme could treat cancer, multiple sclerosis and heart disease, among other medical conditions. In settlement of the FTC’s suit, the parties agreed to and the Court entered the Injunction. The Injunction generally prohibited Trudeau from producing infomercials, with the exception that he could make infomercials promoting books, so long as the infomercials did not misrepresent the books. The FTC argued that a series of three infomercials promoting Trudeau’s new book The Weigh Loss Cure “They” Don’t Want You to Know About (the “Book”) violated the Injunction because Trudeau made claims in the infomericals that the weight loss program described in the book was “easy,” “simple” and prevented weight gain forever once complete.
The weight loss plan had four phases, the last of which was to be followed for the remainder of a person’s life. Each phase had various requirements (or strong recommendations) including colonics, various organ cleansings, avoiding use of over the counter or prescription drugs, daily walks and eating only 100% organic foods. Phase two also required daily injections of human chorionic gonadotrophin (“HCG”). HCG is available only by prescription in the US, but the FDA specifically stated that it should not be used for treating obesity. Trudeau argued that the claims were mere puffery and opinion which, therefore, did not violate the Injunction. But the Court held that Trudeau’s claims that the Book detailed an “easy” diet were false. Furthermore, Trudeau’s claims that once the diet was complete you could eat anything you wanted were false because the fourth phase of the diet lasted for the remainder of the dieter’s life. The Court, therefore, held Trudeau in contempt and set a hearing to determine an appropriate remedy.
This opinion is also an excellent example of engaging judicial writing. It has one of the most engaging introductions I have read with appeal beyond just the legal community:
Kevin Trudeau is one heck of a salesman. He is also a prolific author, self-described consumer advocate and “exposer of corporate and government corruption.” He is also an ex-felon and, as discussed below, a contemnor of this court’s orders. His favorite marketing tool is the “infomercial,” a lengthy television advertisement that takes the form of a mock interview. Through this medium Mr. Trudeau has sold various products that he claimed could: cure numerous diseases, such as multiple sclerosis, cancer, substance abuse addictions, and arthritis (among many others); reverse hair loss; improve memory; and (apropos to the matter before the court) cause dramatic and permanent weight loss.
(Footnotes omitted). This is the sort of introduction that engages a reader and opens the law to those without legal degrees.
* Click here for a copy of the complaint.

Continue Reading Trudeau Held in Contempt for Claiming Diet was “Simple”

Herman Miller, Inc. v. Teknion Corp., No. 05 C 2761, 2007 WL 2230042 (N.D. Ill. Jul. 30, 2007) (Gettleman, J.).
Judge Gettleman construed the claims of the asserted patents covering features of swivel office chairs and granted partial summary judgment of infringement for plaintiff on one of the two patents, U.S. Patent No. 6,588,741 (the “‘741 patent”), with the exception of claim 10 which plaintiff admitted was not literally infringed, and summary judgment of noninfringement for defendant as to claim 10 of the ‘741 patent and the second patent, U.S. Patent No. 6,588,842. But the most interesting part of this opinion is not the Court’s constructions or infringement analysis, but what appears to be plaintiff’s reasonableness – a trait seldom displayed at this stage of the case in my experience. At the beginning of its opinion, the Court noted that the case originally included two other patents and that the parties had filed and briefed cross summary judgment motions regarding those patents as well. But in light of the KSR v. Teleflex decision, plaintiff issued a statement of non-liability as to those patents and the parties voluntarily dismissed all of their claims and counterclaims related to those patents. It must have been an exceptionally strong obviousness case. I have read several post-KSR decisions and this is the first case in which I have seen a plaintiff voluntarily dismiss its claims in light of the “new” obviousness standard.

Continue Reading Plaintiff Dismisses Patent Claims in Light of KSR

In re AD-II Eng’ing., Inc., Misc. Docket No. 07-852, Slip Op. (Fed. Cir. May 29, 2007).
The Federal Circuit denied defendant AD-II Engineering’s (“AD-II”) writ of mandamus seeking to prevent Judge Gettleman from considering plaintiff SRAM Corp.’s (“SRAM”) motion to amend its complaint to add infringement allegations on a new claim and related summary judgment motion as to infringement of that claim. SRAM sued AD-II alleging infringement of SRAM’s patent for a system of shifting bicycle gears that prevents overshifting. The Northern District Court previously construed the claims of the claim initially asserted by SRAM, found the patent claim valid and entered judgment in favor of SRAM and an injunction against AD-II, a subset of these decisions are set out at SRAM Corp. v. AD-II Eng’ing, Inc., 326 F. Supp.2d 903 (N.D. Ill. 2005). On AD-II’s appeal of that decision, the Federal Circuit overturned the claim construction and, therefore, vacated the final judgments on validity and infringement – SRAM Corp., 465 F.3d 1351 (Fed. Cir. 2006). On remand, SRAM sought to amend its complaint asserting an additional claim and moved for summary judgment of infringement of the claim to be added. At a hearing on SRAM’s motions, the Northern District Court noted that there were problems with SRAM’s late effort to amend its complaint and add infringement allegations, but set a briefing schedule for SRAM’s summary judgment motion. AD-II then filed this writ of mandamus. The Federal Circuit refused to prevent briefing of SRAM’s summary judgment motion, reasoning that AD-II’s writ was premature because the Northern District Court had not yet decided whether to allow SRAM to assert its additional claim.
The Federal Circuit also held that it would be inappropriate for it to enter judgment that SRAM’s originally asserted claim was invalid based upon a third reexamination of SRAM’s patent. AD-II had not made a showing that it could not get the relief requested from the Northern District Court or through an appeal of any decision by the Northern District Court. The extraordinary step of mandamus was, therefore, not proper.

Continue Reading Post-Appeal Addition of Allegation Does Not Warrant Mandamus

Martin Eng. Co. v. CVP Group, Inc., No. 06 C 4687, 2006 WL 3541777 (N.D. Ill. Dec. 7, 2006) (Cole, J.).

Judge Cole granted defendant’s motion for a 21 day extension to respond to written discovery requests.  Plaintiff refused to agree to the extension (for discovery due eight months prior to the close of fact discovery) and filed a written objection to defendant’s motion citing a "pattern of dilatory conduct."  As examples of the pattern, plaintiff identified two items.  First, that it took defendant two weeks to respond to plaintiff’s settlement offer, and only then after repeated calls from plaintiff.  And second, that defendant’s Rule 26 disclosures were served nearly two weeks late.  The Court made clear that it did not condone a party ignoring the Court’s deadlines or delay more generally, but noted that "not all delays are the same."


Continue Reading Court to Counsel: Play Nice

Judges Bucklo, Coar, Gettleman, Kennelly and Lefkow are instituting a joint trial call in 2007 (the N.D. Ill.’s statement about it is here).  Each judge is contributing cases to the call, apparently at the judge’s discretion.  The cases in the call will be tried in order by one of the five judges, although not