Judge Guzman construed the claim terms in this patent case involving flameless candles. Of particular note, the Court held:
The Court adopted defendant’s (“ShopNBC”) constructions of “upper portion” and “lower portion” because plaintiff Winvic waived its arguments by failing to propose claim construction.
“The upper portion having a concave surface defining a recess therein” was construed as “the upper portion of the candle-like like body having a surface that is hollowed inward or rounded inward, regardless of whether the inward shape has curved or square edges, and thereby defining a recess therein.”
“Substantially in the recess” was construed as “a considerable degree within the limits of the recess.”
“Chamber” was construed as “a confined space.”

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Persis Int’l, Inc. v. Burgett, Inc., No. 09 C 7451, Slip Op. (N.D. Ill. Sep. 26, 2011) (Guzman, J.).
Judge Guzman granted in part plaintiffs’ (collectively “Persis”) motion to dismiss defendant Burgett’s counterclaim in this Lanham Act case involving the SOHMER mark. The Court dismissed Burgett’s cancellation proceeding because it was based upon the submission of an allegedly fraudulent document in a separate trademark proceeding.
The Court dismissed two declaratory judgment claims related to a separate mark because they were unrelated to the case and were duplicative of claims in another ongoing case. The Court also dismissed a declaratory judgment claim regarding the SOHMER mark as duplicative of the existing claims and answer.
The Court allowed Burgett’s trademark infringement claim because it alleged that it owned the mark and the relevant tire and even if it later assigned the mark, its right to pursue past damages did not necessarily flow with the assignment. The Court also allowed Burgett’s unfair competition claim. Illinois unfair competition is not preempted by the Lanham Act, although it can be proven with the same or similar facts.

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Judge Guzman granted in part plaintiffs’ (collectively “Persis”) Fed. R. Civ. P. 12(f) motion to strike defendant Burgett’s affirmative defenses in this Lanham Act case involving the mark SOHMER. The Court struck those affirmative defenses that just restated the legal standards – failure to state a claim and estoppel.
The Court allowed Burgett’s statute of limitations defense because Burgett sufficiently pled that Persis had delayed more than the required three years in bringing its action.
Finally, the Court dismissed three affirmative defenses based upon an allegedly fraudulent document submitted to the Patent and Trademark Office. Burgett admitted that the allegedly fraudulent document was submitted in a separate application. And Burgett offered no reason that the other application was relevant to this case.

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Kathrein-Werke KG v. Radiacion y Microondas S.A., No. 07 C 2921, Slip Op. (N.D. Ill. May 17, 2010) (Guzmán, J.).
Judge Guzmán construed the contested terms of plaintiff’s patent to a high frequency phase shifter unit having a pivotable tapping element. Of particular note, the Court construed:
“Stripline” was a conductive strip, but it did not need to be a flat, conductive strip. Nothing in the claim or specification required striplines be flat, and plaintiff’s extrinsic evidence could not overcome the intrinsic evidence.
“Stripline sections”, “stripline segments” and “stripline elements” were construed to mean the same thing. While claim differentiation creates a presumption that different terms have different meanings, that presumption was overcome by the intrinsic evidence which showed patentee “obstinately” using the terms to mean the same thing.
“Extending” was given its ordinary meaning of “lengthening.” The Court held that plaintiff’s definition “lengthening in one or more direction” included an unnecessary element that was not supported by the intrinsic evidence.
“Transformers” were defined as “devices that transfer electrical signals and match impedance values.” The Court also construed the statement that transformers “share power” as meaning that transformers “permit the sharing of power” because the parties agreed that transformers cannot share power.

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Se-Kure Controls, Inc. v. Senneco Sol’ns., Inc., No. 08 C 6075, Slip Op. (N.D. Ill. Oct. 23, 2009) (Holderman, C. J.)
Chief Judge Holderman stayed the case as to plaintiff Se-Kure Controls’ ‘590 patent while Se-Kure appealed Judge Guzman’s invalidity decision regarding the ‘590 patent. The Court, however, did not stay the case as to Se-Kune’s other two patents-in-suit – the ‘807 and ‘822 patents. The Court held that defendant Senneco would be prejudiced by a delay as to the ‘807 and ‘822 patents. And the appeal as to the ‘590 patent would not simplify issues regarding either the ‘807 or ‘822 patents.
But the Court held that the burden of staying just the ‘590 patent issues would be minimal. If the ‘590 patent invalidity decision were upheld it would reduce the issues for trial. If the decision was overturned, little additional discovery would be required. And the parties had already agreed to adopt Judge Guzman’s claim constructions, with only a few additional terms requiring construction.

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Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 9845, Slip. Op. (N.D. Ill. Sep. 18, 2009) (Guzman, J.)
Judge Guzman granted defendant’s motion for summary judgment of obviousness in this patent dispute regarding a retractable tether alarm system. The Court held that the asserted prior art ‘805 patent was analogous prior art based upon the Graham test. The inventor of the patent-in-suit was attempting to solve the problem of telephone wires “laying all over” in stores. And the ‘805 patent, to a retractable reel assembly for telephone wires would have been relevant to the inventory analysis. The Court also noted that prior art need not be in the same field to be analogous. The Court held that the ‘805 patent combined with the ‘098 patent’s alarm triggering and sensing system taught every element of the patent-in-suit for two reasons:
Plaintiff’s denial of defendant’s statement of material fact that the prior art ‘805 and ‘098 patents taught all elements was denied without citing any factual proof. Such a denial is equivalent to an admission.
A review of the ‘805 and ‘098 patents showed each element of the patent-in-suit, only a combination of the ‘098 patent’s alarm system with ‘805 patent’s the retractable reel was required.
The Court then held that combining the ‘805 patent’s retractable telephone cord reel with the ‘098 patent’s alarm triggering and sensing system rendered the patent-in-suit obvious. Plaintiff’s expert declaration stating that neither the prior art nor the security field generally evidenced any motivation to combine the prior art patents, did not persuade the Court. The expert’s statements were conclusory and KSR expressly stated that prior art need not be in the same field as the patent-in-suit.
Finally, plaintiff’s secondary consideration evidence regarding commercial success was not sufficient. Plaintiff offered no proof that its commercial success flowed from the merits of its invention.

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Publications Int’l. Ltd. v. LeapFrog Enters., Inc., No. 08 C 2800, Slip Op. (Dec. 4, 2008) (Guzmán, J.).
Judge Guzmán granted declaratory judgment defendant LeapFrog’s Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff Publication International’s (“PIL”) claim for declaratory relief regarding the POINGO mark used in association with a pen-like electronic reading device. PIL alleged, and LeapFrog admitted, that LeapFrog used the POINGO mark for a pen reader system in one presentation to a retailer, but never marketed or sold a pen reader using the name and never sought to register the mark with the PTO. PIL also alleged that LeapFrog sent PIL cease and desist letters warning that LeapFrog’s earlier use of the POINGO mark gave it priority in the mark. The Court held that PIL had not met its burden because it had not alleged that LeapFrog had used the mark on products in commerce or that LeapFrog had sufficient intent to use the mark in commerce. Without a use in commerce or an intent to use, the immediacy required for a declaratory judgment action was not present.

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Eazypower Corp. v. Jore Corp., No. 04 C 6372, 2008 WL 3849921 (N.D. Ill. Aug. 14, 2008) (Zagel, J.)
Judge Zagel construed the claims of plaintiff Eazypower’s patent to a portable screwdriver with a flexible shaft. Of particular interest, the Court held that despite Eazypower’s Jepson claim format, its preamble was not limiting.
Jepson claiming is a drafting style – common in Europe, but relatively rare in the United States – in which the prior art is described in the preamble and the claimed improvements over the prior art are described in the body of the claim. The Court acknowledged that Jepson claims carry a rebuttable presumption that the claim’s preamble is limiting. But the Court held that the Eazypower rebutted the presumption in this case. The claim’s preamble, therefore, was not limiting. First, the Court relied upon two 2003 Northern District opinions, by Judges Guzman and St. Eve, holding that the preambles of the claims at issue overcame the presumption and were not limiting. While these opinions were not controlling, the Court found them well-reasoned and persuasive. The Court explained that the preambles were not limiting because they were “not necessary to give life to the claims,” citing Judge Guzman’s decision. Eazypower v. Vermont Am. Corp., No. 01 C 3252, 2003 WL 1720024, at *10 (N.D. Ill. Mar. 28, 2003).

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Moran Indus., Inc. v. Higdon, No. 07 C 6092, Slip Op. (N.D. Ill., Jul. 26, 2008) (Guzman, J.).
Judge Guzman held that the Court had personal jurisdiction over the defendants, but dismissed plaintiff’s trademark and breach of contract case for improper venue. Defendants, various franchisees of plaintiff, were all residents of and operated their franchises in various combinations of Indiana, Kentucky and Tennessee. Each relevant franchise agreement had a forum selection clause consenting to jurisdiction in the Northern District. But the Court held that the clause was permissive, allowing defendants to challenge personal jurisdiction. While defendants were not Illinois residents, their numerous contacts with plaintiff — sending plaintiff royalty payments and reports to Illinois and attending training in Illinois, among others — created personal jurisdiction.
While defendants were subject to personal jurisdiction in Illinois, the Court held that the Northern District was not the proper venue. A substantial part of the harm alleged occurred not in Illinois, but in Indiana, Kentucky and Tennessee. Those were the states where defendants allegedly failed to make payments, not Illinois. The Courts, therefore, dismissed the case.

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Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, Slip Op. (N.D. Ill. Jun. 19, 2008) (Guzman J.)
Judge Guzman construed the disputed terms in plaintiff’s patent to a retail store security alarm system for portable devices. Of particular note, the Court held that a “retracting mechanism” was a means plus function element. While “mechanism” does not create a perception of means plus function language, the Court noted Federal Circuit precedent that “mechanism” generally lacked sufficient structure. And that held true in this case, as evidence by the fact that both parties identified structure from the specification that allegedly defined the claimed mechanisms.
The Court also provided a very useful summary of its constructions at the end of the opinion. The claim construction summary is an excellent writing device, like an executive summary, that substantially increases the ease of use of the opinion. Hopefully more courts will adopt Judge Guzman’s structure.

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