Guzman

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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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Continue Reading Jepson Claim Language Creates Presumption of a Limiting Preamble

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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Continue Reading Court has Personal Jurisdiction, but Venue is Improper

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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Continue Reading Court Employs Summary of Construed Claim Terms

Shen Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, Slip Op. (N.D. Ill. May 29, 2008) (Guzman, J.).
Judge Guzman construed the disputed claim terms from plaintiff’s patent for a skin-enhancing glove. The parties disputed two terms: dehydrated and dry. Defendants argued dehydrated meant removal of all water, while plaintiffs argued it meant removal of water, but not necessarily all water. Judge Holderman construed dehydrated as used in a related patent in an earlier suit between the parties, consistent with plaintiff’s proposed construction.* Because Ansell advanced the same construction in the present suit that it lost in the earlier suit before Judge Holderman, the Court held that collateral estoppel, or issue preclusion, prevented Ansell from arguing against plaintiff’s construction. The Court also noted that Judge Holderman’s construction was correct.
The Court construed “dry” in a similar fashion to mean removal of water, but not necessarily all water, based upon the prosecution history.
* I was involved in the briefing before Judge Holderman, but I am not involved in the current case.
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Continue Reading Issue Preclusion Decides Claim Construction

Am. Fam. Mutual Ins. Co. v. Roth, No. 05 C 3839 & 3869, 2008 WL 168693 (N.D. Ill. Jan. 15, 2008) (Guzman, J.).
Judge Guzman adopted Magistrate Judge Cole’s Report and Reconsideration in full, holding defendants in contempt for violating the Court’s injunctions requiring that defendants return various customer information taken from plaintiff, defendant’s former employer – click here for more on the prior opinions in the Blog’s archives. It was defendants’ responsibility to ensure that defendants’ former counsel, who had copies of relevant documents, comply with the injunction by turning the documents over to plaintiff. The fact that defendants did not have direct control over their former counsel’s copies did not matter.
Additionally, the Court held that it did not matter that plaintiff did not originally make a “big deal” out of defendant’s non-compliance. Defendants argued that they presumed there was no need to comply with the Court’s injunctions because nobody was making a “big deal” about the return of the materials. That presumption was flawed. Neither party moved to modify either the preliminary injunction or the amended preliminary injunction. Thus, defendants had a duty to comply with the Court’s injunctions as written.
Practice Tip: Do not fall in to the trap of believing that substantial compliance with a court order is sufficient. While that could be true in some cases, you should always contact the court if you have a problem complying with an order. Compliance with orders is one case where the adage that you are better off asking forgiveness than asking permission does not hold true.
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Continue Reading Violating Injunctions is a “Big Deal”

Palantir.net, Inc. v. Palantir Techs., Inc., No. 07 C 4271, Min. Order (N.D. Ill. Nov. 27, 2007) (Guzman, J.).*
Judge Guzman granted defendant’s motion to transfer this Lanham Act case to the Northern District of California (“N.D. Cal.”) pursuant to 28 U.S.C. Section 1404(a). Defendant’s principal place of business was in the N.D. Cal. and defendant had an earlier-filed case against plaintiff pending in the N.D. Cal. The Court, therefore, held that the convenience of the parties and the witnesses, as well as the interests of justice, were best served by transferring the case to the N.D. Cal.
* Click here for a copy of the case.
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Continue Reading First-Filed Case Dictates Transfer

Jewel Am., Inc. v. Combine Int’l., Inc., No. 07 C 3596, 2007 WL 4300589 (N.D. Ill. Nov. 30, 2007) (Guzman, J.).
Judge Guzman denied defendants’ 28 U.S.C. § 1404(a) motion to transfer this copyright case to the Eastern District of Michigan. Plaintiff argued that its choice of forum should be given deference because its relevant subsidiary was an Illinois entity with its place of business and all of its operations in Illinois. But the Court looked to the residence of the named plaintiff, not the plaintiff’s subsidiary. Because the named plaintiff was a New York entity, plaintiff’s chosen forum was not given deference. Further, the situs of material events was Michigan. Defendants were Michigan entities and the alleged infringement and related planning occurred in Michigan. The Court discounted the location of documents because, “[i]n this age of faxing, scanning and overnight courier services, however, the location of documentary evidence is largely irrelevant.”
No party identified a third party witness that would be required to testify. And convenience of the parties tipped slightly to plaintiff whose subsidiary’s business would be disrupted if its main employees and key witnesses had to travel from Illinois to Michigan for court proceedings and depositions. Based upon these factors, the Court held that defendants had not shown that the Eastern District of Michigan was clearly more convenient and denied the motion.
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Continue Reading Named Plaintiff Controls Transfer Determination

Telewizja Polska USA, Inc. v. Echostar Satellite Corp., No. 04 C 3293, Slip Op. (N.D. Ill. Oct. 30, 2007) (Guzman, J.).
Judge Guzman adopted Magistrate Judge Keys’s Report and Recommendation in its entirety, awarding plaintiff all of the approximately $800,000 in attorney’s fees and costs plaintiff sought pursuant to the fee-shifting provision in the parties’ agreement and Fed. R. Civ. P. 54(d). At trial, plaintiff sought approximately $2.8M for its breach of contract claim and approximately $5.8M for its unjust enrichment claim – the claims were plead in the alternative. The jury awarded plaintiff approximately $1.4M on the breach of contract claim. The jury also awarded defendant $1 in compensatory damages and approximately $18,000 in punitive damages on defendant’s defamation counterclaim. Defendant argued that plaintiff was not the prevailing party, as required by Rule 54(d) and, therefore, should not be awarded its fees and costs or, at least, should be awarded a reduced amount.
But the Court held that plaintiff prevailed by winning one of its major claims, even though the contract claim was worth less than the unjust enrichment claim, based upon plaintiff’s analysis. Additionally, the $1.4M jury award based upon a $7M demand was sufficient to be considered prevailing. The Court noted that parties have been considered prevailing when a jury awarded even 10% of plaintiff’s demand. The Court also suggested that the outcome might have been different if plaintiff had lost on the claim which created the Court’s federal question jurisdiction. But in this case, jurisdiction was based upon diversity. Finally, the Court denied defendant’s request to reduce counsel’s hours or rates because defendant previously agreed not to challenge the reasonableness of the fees.
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Continue Reading Plaintiff Can be “Prevailing Party” if Jury Awards Even 10% of Plaintiff’s Demand

Kammin v. Smartpros, Ltd., No. 07 C 2665, 2007 WL 3046128 (N.D. Ill. Oct. 9, 2007) (Guzman, J.)
Judge Guzman transferred this copyright case to the Southern District of New York pursuant to 28 U.S.C. Section 1404. While plaintiff’s choice of forum is usually given significant weight, no party was a resident of the Northern District – both parties were New York residents. Furthermore, the non-party witnesses were closer to New York. And New York had a significant interest in deciding a case between its citizens regarding a dispute arising within New York.
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Continue Reading Case Transferred for Lack of Illinois Ties

Abbott Labs v. Baxter Healthcare Corp., No. 04 C 0836, Slip Op. (N.D. Ill. Sep. 28, 2004) (Guzman, J.).
Judge Guzman granted plaintiff Abbott Laboratories’ (“Abbott”) Fed. R. Civ. P. 15(a) motion to amend its Complaint dismissing claims regarding its U.S. Patent No. 6,444,859 (the “‘859 patent”). After the Federal Circuit held the parent of the ‘859 patent invalid, Abbott Labs v. Baxter Pharm. Prods., 471 F.3d 1363 (Fed. Cir. 2006), Abbott gave defendant Baxter Healthcare (“Baxter”) a covenant not to sue Baxter on the ‘859 patent (“Covenant”). Abbott, therefore, sought leave to dismiss its claims regarding the ‘859 patent. But Baxter argued that the claims should not be dismissed because the Covenant excluded any reissue or reexamination of the ‘859 patent, thereby creating an actual controversy. The Court held that Abbott’s potential suit based upon its potential reissue or reexam of the ‘859 patent did not create a current controversy. The Court, therefore, allowed Abbott to amend its Complaint dismissing claims regarding the ‘859 patent.
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Continue Reading Potential Reissue/Reexam Does Not Create Actual Controversy