Goss Int’l Ams., Inc. v. Graphic Mgmt. Associate, Inc., No. 05 C 5622, Slip Op. (N.D. Ill. Jun. 11, 2008) (Manning, J.).
Judge Manning construed the terms of plaintiff’s patent related to a newspaper assembly collating machine by adopting in part and rejecting in part Magistrate Judge Valdez’s Report and Recommendation (“Report”) construing the claims. Of particular note, the Court considered whether it should review the Report de novo or for clear error, because the constructions were not dispositive. Because the constructions likely would be case dispositive in fact, and because prior cases reviewed magistrate claim construction reports de novo, the Court held that de novo review was appropriate.

Continue Reading Magistrate Claim Constructions Reviewed De Novo

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

Goss Int’l Am., Inc. v. Graphic Management Assocs., Inc., No. 05 C 5622, 2007 WL 161684 (N.D. Ill. Oct. 9, 2007) (Valdez, Mag. J.).*
Magistrate Judge Valdez granted in part the parties’ cross motions to compel various discovery. Each party’s alleged waived privilege is of particular interest. The Court denied plaintiff’s motion to compel all documents reflecting defendants’ trial counsel’s** mental impressions of the case, whether or not they were shared with defendants. In light of In re Seagate, the Court held that defendants’ reliance upon advice of counsel does not waive its privilege as to trial counsel’s mental impressions not communicated to defendants.
The Court denied in part defendants’ motion to compel all previously privileged documents related to prosecution of the patent in suit. Defendants alleged that plaintiff’s production of a Record of Invention document prepared by the inventors at counsel’s direction and request waived privilege. The Court held that plaintiff intentionally waived privilege by disclosing the document, but limited the waiver to documents related to development of plaintiff’s invention.
* Click here for more on this case in the Blog’s archives.
** It is not entirely clear, but it appears from the opinion that defendants used the same firm or attorneys for both opinion counsel and trial counsel.

Continue Reading Court Limits Scope of Privilege Waivers

Goss Int’l Am., Inc. v. Graphic Management Assocs., Inc., No. 05 C 5622, 2007 WL 161684 (N.D. Ill. Jan. 11, 2007) (Valdez, Mag. J.).

Magistrate Judge Valdez  compelled certain foreign defendants (the "Swiss Defendants") to produce documents related to each Swiss Defendant’s contacts with the United States.  After plaintiff filed its patent infringement claims

Goss Int’l Am., Inc. v. K & M Newspaper Serves., Inc., __ F. Supp.2d __, 2006 L 3883318 (N.D. Ill. Dec. 29, 2006) (Colon, J.).

In this claim construction opinion, Judge Colon considered several issues regarding whether "means" terms were actually means plus function terms.  The patented technology at issue is "inserts" which are machines that insert advertising materials into newspapers at specific locations within the newspaper.  The Court first held that "article feeder means" was no means plus function language governed by Section 112, para. 6.  Citing the Federal Circuit’s MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006) decision, the Court concluded that "article feeder," like "circuitry" in the MIT case, described a known structure in the industry.  Additionally, the patent’s prosecution history showed that both the examiner and the patienter understood "article feeder" to refer to a specific structure.  And dictionaries definitions of "feeder" were consistent with its use in the patent-at-issue.  Furthermore, the claims that included the term described the location of the article feeder and certain of its components, giving it structural definition.  Finally, defendant’s means plus function definition failed because it sought to import structures that were not necessary to the "article feeder’s" function and because certain of the structures were recited in independent claims, violating the doctrine of claim differentiation.


Continue Reading “Means” Terms Are Not Always Means Plus Function