Dental Arts Lab. V. Studio 360, The Dental Lab, LLC, No. 10 CV 4535, Slip Op. (N.D. Ill. Nov. 23, 2010) (Dow, J.).
Judge Dow denied defendant’s Fed. R. Civ. P. 12(b) motion to dismiss this Lanham Act dispute regarding plaintiff’s 360 Dental Laboratories mark. Defendant was a Nevada entity which had sold product to sixteen Illinois dentists, making up 1.2% of defendant’s gross revenue, and maintained a website that used the mark and offered defendant’s products for sale. Plaintiff only argued that the Court had specific, not general jurisdiction. While defendant’s contacts were minimal – sixteen customers and 1.2% of revenues – they involved the alleged tortious acts at issue. The sales, therefore, were sufficient minimum contacts to create specific jurisdiction. Although the Illinois sales were allegedly de minimus, each sale was allegedly a tortious act and the Court could have had jurisdiction based upon even one of the sales. Because defendant’s venue arguments mirrored its jurisdiction arguments, venue was also proper.

Continue Reading Sales to Sixteen Illinois Dentists Creates Jurisdiction

LegalMetric Research has been running an interesting series of reports on nationwide patent litigation statistics by district. And in each case, the Northern District remains among the top patent district courts. 2009 was the rare year that the Northern District slipped out of the top five districts in terms of filings, but it only fell to sixth. And the combination of the new Local Patent Rules and the false marking cases will change that significantly for 2010 (more on both of those issues in the next few weeks). Here are the top ten districts by the number of patent suits filed in 2009:
1. C.D. California
2. E.D. Texas
3. D. Delaware
4. N.D. California
5. D. New Jersey
6. N.D. Illinois
7. S.D. New York
8. S.D. California
9. D. Massachusetts
10. E.D. Virginia
The Northern District is also one of six districts that produce half of all claim construction decisions. Not surprisingly, the Eastern District of Texas, the Northern District of California and the District of Delaware produce the most, with the Northern District of Illinois, the Southern District of New York and the Central District of California filling out the six. And these six districts also issue 43% of all reexam stays.
Finally, Judge Pallmeyer is the lone Northern District of Illinois on the list of top 30 patent judges by the number of 2009 patent cases assigned to them. Pallmeyer came in at number 23. The top five spots were held by Eastern District of Texas and District of Delaware. It is not surprising to see only a single Northern District judge on this list because the bench is relatively large, in particular compared to some of the other top patent districts like the Eastern District of Texas and the District of Delaware. But more Northern District judges will likely be in the top 30 next year because of increased filings through the first quarter, as well as the fifty or so false patent marking suits filed in the Northern District beyond the usual patent cases.

Continue Reading Northern District of Illinois is a Top Patent District Any Way You Slice It

There is a debate brewing in the patent litigation community over the correct scope of a state institution’s waiver of 11th Amendment immunity when that institution asserts its patents. In Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U.S. 627 (1999), the Supreme Court held that state institutions were immune from patent infringement suits. Of course, if a state institution asserts a patent claim against a party, immunity is generally waived as to that party for counterclaims. But the Federal Circuit recently held in BPMC v. California Dept. of Health (Fed. Cir. 2007), that when the California Department of Health (“Cal. DoH”) intervened as a plaintiff in a patent suit (which is considered a waiver of immunity), it is only a waiver as to that suit. So, when the original suit was dismissed because of improper venue, the waiver was rescinded. As a result, the defendant in the first case, BPMC, could not bring a declaratory judgment suit that mirrored the original suit because of the Cal. DoH’s 11th Amendment immunity.
The Federal Circuit’s decision has ignited substantial controversy (click here for the WSJ Law Blog’s article on the subject and click here for IP Biz’s responsive blog post) and some are predicting that this will be the next patent case that the Supreme Court takes on cert. It is an interesting issue, but not one that we see often in the Northern District, which caused me to investigate whether Chicago-area colleges are prolific patentees. None makes the top ten, like my alma mater the University of Michigan – Go Blue! But there is some substantial patenting going on at Chicago-area universities. The following chart show the number of patents assigned to the identified universities or their related entities between 1969 and 2005:
Chicago-Area University Utility Patents 1969-2005 School Patents
U of Chicago 309
IIT 59
Loyola, Chicago 33
Northwestern 370
U of Illinois 552
As you can see from the chart, this issue has significant consequences for Chicago-area schools. I will keep you posted as the case develops.

Continue Reading State Immunity’s Impact on Northern District Patent Suits

Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. Jun. 8, 2007).*
Judge Rosenbaum (a visiting judge, who is the Chief Judge for the District of Minnesota) denied defendants’ Fed. R. Civ. P. 60(b) for relief from the Court’s judgment. The Court held a trial in October 2006 resulting in a jury verdict that defendants’ insufflator (a device that blows a powder, gas or vapor into a body cavity) infringed plaintiff’s patent (you can read more about the case in the Blog’s archives). In their motion, defendants argued that the Supreme Court’s April 2007 obviousness decision, KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 127 S.Ct. 1727 (2007), dramatically changed obviousness law and conflicted with the jury instructions which “nullif[ied] the jury verdict.” Defendants moved the Court to invalidate two claims of the patent in suit or to order a new trial on obviousness. But the Court held that even under the KSR standard, the jury’s verdict was fully supported by evidence at trial. Because a corrected instruction would not have changed the result, the erroneous instruction was harmless.

Continue Reading Pre-KSR Validity Verdict Upheld Under KSR Standard

Republic Tobacco L.P. v. North Atlantic Trading Co., No. 06 C 2738, 2007 WL 1424093 (N.D. Ill. May 10, 2007) (Der-Yeghiayan, J.).*
Judge Der-Yeghiayan granted plaintiff/counter-defendant Republic Tobacco’s (“Republic”) motion for summary judgment on defendant/counter-plaintiff North Atlantic Trading’s (“North Atlantic”) counterclaims and granted North Atlantic’s motion for summary judgment as to each of Republic’s claims. Republic brought claims against North Atlantic for Lanham Act false advertising, violation of the Illinois Uniform Deceptive Trade Practices Act (“IDTPA”) and other state law claims, all arising out of an allegedly “false and misleading” presentation entitled “Cigarette Paper Review” (“CPR”) which North Atlantic allegedly gave to various Republic customers. The CPR allegedly criticized Republic, saying among other things that Republic’s cigarette rolling papers were the same as North Atlantic’s and that Republic’s Chairman Donald Levin had “lied” about the composition of Republic’s cigarette papers. North Atlantic filed counterclaims alleging Lanham Act false advertising, violation of the IDTPA and other state law claims, all arising out of Republic’s alleged sales of orange cigarette papers similar in color and size to North Atlantic’s orange Zig-Zag papers, for the purpose of confusing or deceiving consumers.
Because Republic could not establish that the statements in the CPR were literally false, as opposed to just misleading, and because many of the statements were subject to innocent constructions, Republic could not prove its false advertising or IDTPA claims.
Republic sought summary judgment of all of North Atlantic’s claims because, among other reasons, the license agreement governing North Atlantic’s use of the Zig-Zag marks and cigarette papers did not allow North Atlantic to bring its counterclaims. Republic argued that the licensor of the Zig-Zag marks, Bollore, had the right and duty to bring the suit and, if at all, North Atlantic could only bring the counterclaims after North Atlantic notified Bollore of the counterclaims and Bollore had decided not to file them. North Atlantic argued that Bollore was aware of the suit and had not attempted to stop North Atlantic from prosecuting its counterclaims, but provided no evidence that it ever provided Bollore notice of Republic’s alleged infringement, as required by the agreement. The agreement required that either party notify the other of any infringements, and provided Bollore sole discretion to prosecute infringements. North Atlantic was allowed to pursue infringers “which Bollore determines not to commence or diligently pursue . . . .” Because North Atlantic did not provide evidence to counter Republic’s Local Rule 56.1 statement of material fact that Bollore never gave North Atlantic consent to bring the counterclaims, the Court deemed that fact admitted. The Court, therefore, granted Republic summary judgment on North Atlantic’s counterclaims because Bollore never consented to North Atlantic’s filing of them, as required by the agreement.
* More on a similar case between the parties can be read in the Blog’s archives.

Continue Reading Parties’ Claims Go Up in Smoke For Lack of Literal Falsity