Guzman

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M. Arthur Gensler, Jr. & Associates, Inc. v. Strabala, No. 11 C 3945, Slip Op. (N.D. Ill. Feb. 21, 2012) (Guzman, J.).

Judge Guzman granted defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s Lanham Act false designation of origin and false advertising claims, as well as plaintiff’s Illinois Deceptive Trade Practices Act…

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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Continue Reading Flameless Candle Terms Construed

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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Continue Reading Unfair Competition Not Preempted by Lanham Act

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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Continue Reading Affirmative Defenses Must Meet Pleading Requirements

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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Continue Reading Intrinsic Evidence Overcomes Patent Doctrine of Claim Differentiation

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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Continue Reading Court Stays Claims re One Patent, but Other Patent Claims Proceed

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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Continue Reading KSR Obviousness Does Not Require Prior Art from the Same Field

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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Continue Reading Trademark DJ Requires Allegations of Continued Rights in the Marks