New Medium LLC v. Barco N.V., No. 05 C 5620, 2008 WL 4615682 (N.D. Ill. Oct. 16, 2008) (Posner, J. sitting by designation).
In my previous entry about this case, I linked to a copy of this decision and briefly explained the result, but did not provide any analysis of the opinion because I was previously involved in the case — click here to read that entry in the Blog’s archives. Since that post, Dennis Crouch has provided some excellent analysis of the opinion — click here to read it at Patently-O. Thanks Dennis.

Continue Reading Posner Inequitable Conduct Opinion Analysis

New Medium LLC v. Barco N.V., No. 05 C 5620, 2008 WL 4615682 (N.D. Ill. Oct. 16, 2008) (Posner, J. sitting by designation).
I was previously involved in this case and, therefore, I have not posted about prior opinions in detail. But because I posted that Judge Posner (who is sitting by designation) was holding an inequitable conduct bench trial/evidentiary hearing in the case, I am posting the opinion Judge Posner issued based upon that hearing — click here to read the opinion and here for the Blog’s prior post. The Court dismissed one of defendant’s inequitable conduct arguments, but based upon the other, held two of the patents in suit unenforceable because of inequitable conduct.

Continue Reading Posner Holds Patents Unenforceable Due to Inequitable Conduct

Miyano Machinery USA, Inc. v. MiyanoHitec Machinery, Inc., No. 08 C 526, 2008 WL 236610 (N.D. Ill. Jun. 6, 2008) (Nolan, Mag. J.).
Judge Nolan granted plaintiff’s motion to quash defendants’ subpoenas of plaintiff’s counsel – who represented: 1) plaintiffs and perhaps individual defendants in plaintiffs’ earlier trademark prosecution; and 2) plaintiffs in this case. The Court denied defendants’ motions to compel production of communications between plaintiffs and plaintiffs’ counsel and to pierce the privilege.
Defendants argued that plaintiffs committed fraud on the PTO, and therefore inequitable conduct, when plaintiffs’ counsel allegedly knowingly submitted false declarations during prosecution of plaintiffs’ trademarks. Defendants based their claims on an allegedly privileged communication between plaintiff and its counsel (Exhibit L) that plaintiffs claimed was inadvertently produced.
The Court held that Exhibit L was inadvertently produced – it was just one document among 22,000 pages and plaintiffs requested its return immediately after discovering its production. Furthermore, Exhibit L was essentially a list of questions from counsel to plaintiffs, by which counsel was making sure he had sufficient information to file the declarations in question – evidence supporting plaintiffs’ defense of defendants’ inequitable conduct claims.
Finally, while the Seventh Circuit had not ruled on the correct test for whether to allow attorney depositions, the Court followed what it held was the prevailing test in the Northern District, as set forth in Shelton v. American Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 1986):
1. No other available means for obtaining the information;
2. Information is relevant and not privileged; and
3. Information is crucial to the case.
Id. Because plaintiffs identified four other individuals allegedly having the information – some of whom had not been deposed – defendants had not met their burden to depose plaintiffs’ counsel.

Continue Reading Subpoena of Plaintiff’s Prosecution/Trial Counsel Denied.

Nilssen v. Osram Sylvania, Inc., No. 2007-1998, -1348 Slip. Op. (Fed. Cir. June 17, 2008).
The Federal Circuit affirmed Judge Darrah’s award of defendant’s/appellee’s attorney’s fees – click here to read the Blog’s post about the inequitable conduct opinion. Judge Darrah previously held and the Federal Circuit previously affirmed that plaintiffs committed inequitable conduct by, among other things: (1) falsely claiming small entity status; (2) failing to disclose material prior art to the PTO; and (3) failing to disclose related litigation to the PTO. Judge Darrah then held that the case was exceptional based upon plaintiff’s inequitable conduct, filing of a frivolous suit, and litigation misconduct. Because the case was exceptional, Judge Darrah awarded defendants their attorney’s fees.
The Federal Circuit agreed with plaintiffs, holding that an inequitable conduct finding did not require a case be deemed exceptional. But the Court held that Judge Darrah’s findings were supported by evidence and, therefore, were within his discretion.
Judge Newman dissented, stating:
The court today promotes unexceptional trial procedures and non-culpable prosecution errors into an “exceptional case” of such severity as to warrant the award of attorney fees. That is not what the status, or precedent, or policy contemplates. I respectfully dissent.
Check the following blogs for more on this opinion:
Filewrapper
Patently-O

Continue Reading Federal Circuit Upholds Northern District’s Attorney’s Fees Award

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 6, 2008) (Moran, Sen. J.).*
After a two-day hearing and two rounds of briefing, Judge Moran held that defendants (collectively “eSpeed”) had not met their burden of proving that plaintiff Trading Technologies (“TT”) engaged in inequitable conduct before the Patent & Trademark Office (“PTO”). The Court held that one of the TT patent’s inventors engaged in commercial use between the priority dates for the patent’s provisional and parent applications. But the Court held that TT was not required to disclose the commercial use to the PTO because it was not material to patentability. First, TT sought priority from its provisional application in good faith and had a reasonable belief that priority from the provisional was warranted. The reasonableness of the belief was born out when both the jury and the Court determined that the patent could claim priority from the provisional application. Because the commercial use happened after the patent’s critical date (based upon the provisional application), it was not material.**
Additionally, TT did not commit inequitable conduct when it responded to the Examiner’s request for, among other things, “any use of the claimed invention” with a series of brochures and presentations that described the software’s features, but without identifying the inventor’s commercial use. TT argued that the Examiner was seeking an explanation of all of the features of TT’s software because it had identified anticipatory prior art from TT’s website in a prior Office Action. The Court held that this was a reasonable reading of the Examiner’s request because the Examiner accepted TT’s response which did not address whether the software had been in use. Had the Examiner wanted an answer to that question, he could have asked again, instead of allowing the patent to issue.
Many readers will be wondering what is next. The Court has a few more pending motions, and a motion for reconsideration would not be surprising in this case. But for the most part, I suspect that this case is now on a fast track to the Federal Circuit, where the Court predicted it was going months ago. As always, I will keep you updated as the case develops, both in the Northern District and at the Federal Circuit.
* Click here to read much more about this case in the Blog’s archives and click here for this opinion.
** Click here and here for more on the determination of the appropriate priority date in the Blog’s archives.

Continue Reading Trading Technologies v. eSpeed: No Inequitable Conduct

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Min. Order (N.D. Ill. Feb. 20, 2008) (Moran, Sen. J.).*
I have received several emails asking about the status of this case and, specifically, when the inequitable conduct portion of the case will be decided. The post-trial inequitable conduct briefing appears to be complete — if you want to read the briefs, they are largely available on Pacer. So, unless the Court asks for further briefing or an additional hearing either of which seem unlikely, the Court will consider the evidence and the parties’ post-trial papers, and then write an opinion deciding the inequitable conduct issues. There is not any way to accurately predict when the opinion will issue. The timing is governed by numerous factors, including the complexity of the case and the size of the Court’s current docket.
Additionally, the parties have filed other motions which the Court will also have to decide. For example, Trading Technologies (“TT”) filed a motion for a protective order sealing certain evidence that was produced as “Highly Confidential,” but which was put into evidence and used without immediate restriction or objection, as to confidentiality, during the public trial. I will keep you updated as the Court issues any decisions regarding inequitable conduct or any other issues in the case.
* Click here to read much more about this case in the Blog’s archives.

Continue Reading Trading Technologies v. eSpeed: Inequitable Conduct Post-Trial Update

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Min. Order (N.D. Ill. Feb. 20, 2008) (Moran, Sen. J.).*
Judge Moran is scheduled to begin a two-day inequitable conduct bench trial this morning, and everything appears to be ready. The deposition designations, exhibit lists and motions in limine have all been filed. The eSpeed defendants have also filed motions to preclude Trading Technologies’ counsel from testifying and to enforce eSpeed’s understanding of a stipulation (not surprisingly, the parties disagree as to what was stipulated) regarding the critical date.
Trial is scheduled to begin this morning at 10:30 am CDT. Unfortunately, client obligations will prevent me from attending. But I will continue to keep you updated based upon the Court’s rulings.
* Click here to read much more about this case in the Blog’s archives.

Continue Reading Trading Technologies v. eSpeed: Inequitable Conduct Update

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Min. Order (N.D. Ill. Feb. 20, 2008) (Moran, Sen. J.).*
Judge Moran scheduled a two-day inequitable conduct hearing Wednesday and Thursday, April 2 and 3, thereby granting by implication defendant eSpeed’s motion for such a hearing. The Court also set a March 21 status hearing to discuss witness and privilege issues, presumably related to the inequitable conduct hearing. So, there is at least one more round of argument and possibly briefing before the Court’s judgment is complete and final. I hope to attend the inequitable conduct hearing and will blog about it if I do.
* Click here to read much more about this case in the Blog’s archives.

Continue Reading Trading Technologies v. eSpeed: Inequitable Conduct Hearing Scheduled

Se-Kure Controls, Inc. v. Vanguard Prods. Group Inc., No. 02 C 3767, 2008 WL 169054 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*
Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.
* Click here for more on this case and related cases in the Blog’s archives. Also, note that this opinion also uses footnote citation.

Continue Reading Patent Law Expert Allowed to Opine re Patent Office

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Min. Orders (N.D. Ill. Jan. 3, 2007) (Moran, Sen. J.).*
In addition to the willfulness decision discussed earlier today (click here for the post) and the invalidity decision that I will blog about early next week, Judge Moran also issued two minute orders deciding several of the outstanding post-trial motions. The Court denied defendant eSpeed’s motion for a new trial and its combined motion for judgment as a matter of law that: 1) the claims are invalid because of anticipation, obviousness, prior sale; and 2) because the claims have a June 9, 2000 priority date they were not infringed.
There are still several pending motions, including various motions regarding damages and interest on the jury’s award and eSpeed’s motion for an evidentiary hearing regarding inequitable conduct. I will keep you posted as those are decided.
* Click here to read much more about this case in the Blog’s archives.

Continue Reading Trading Technologies v. eSpeed: Minute Orders