Life After Hate, Inc. a/k/a ExitUSA v. Free Radicals Project, Inc., No. 18 C 6967, Slip Op. (N.D. Ill. Jan. 10, 2019) (Cole, Mag. J.). Magistrate Judge Cole granted plaintiff’s motion for a protective order limiting discovery to information reasonably relevant to plaintiff’s motion for preliminary injunction in this Lanham Act counterfeiting, infringement and deceptive … Continue Reading
T-Rex Prop. AB v. Adaptive Micro Sys., LLC, No. 16 C 5667, Slip Op. (N.D. Ill. Jan. 26, 2017) (Kendall, J.). Judge Kendall granted defendant Adaptive Micro Systems’ (“Adaptive”) motion to stay plaintiff T-Rex’s patent suit pending potential institution of inter partes review (“IPRs”) and a covered business method review (“CBM”). The fact that Adaptive … Continue Reading
Next week, on March 15, 2017, the Federal Circuit Bar Association and the Intellectual Property Law Association of Chicago are hosting an Intellectual Property Law Symposium at the University Club of Chicago from 8:45am until 5:00pm. Register here. Speakers include Northern District of Illinois Judges Castillo, Feinerman, Holderman (Ret.), Kendall, and Pallmeyer; as well … Continue Reading
Trading Techs. Int’l, Inc. v. BCG Partners, Inc., No. 10 C 715, 716, 718, 720, 721, 726, 882-85, 929 & 931, Slip Op. (N.D. Ill. May 9, 2016) (Kendall, J.). Judge Kendall granted defendants’ motion to stay plaintiff Trading Technologies’ (“TT”) patent case after institution of covered business method review (“CBM”) of claims from each … Continue Reading
Chrome Hearts LLC v. Partnerships & Unincorporated Assocs. Identified on Schedule A, No. 15 C 3491, Slip Op. (N.D. Ill. Sep. 9, 2015) (Kendall, J.). Judge Kendall denied a third party’s Fed. R. Civ. P. 24 motion to intervene in this trademark dispute regarding plaintiff Chrome Hearts’ CHROME HEARTS trademark. The Court previously entered a … Continue Reading
Chrome Hearts LLC v. Partnerships & Unincorporated Assocs. Identified on Schedule A, No. 15 C 3491, Slip Op. (N.D. Ill. Sep. 10, 2015) (Kendall, J.). Judge Kendall granted plaintiff Chrome Hearts’ default judgment against various defendants (the “Defaulting Defendants”) holding that each defendant was infringing the CHROME HEARTS trademarks. The Court previously entered a temporary … Continue Reading
Trading Techs. Int’l, Inc. v. BCG Partners, Inc., Nos. 10 C 715, 716, 718, 720, 721, 726, 882-885, 929 & 931, Slip Op. (N.D. Ill. Mar. 25, 2015) (Kendall, J.). Judge Kendall granted defendants’ motion to stay this patent litigation pending the Patent Office’s (“PTO”) Covered Business Method Review (“CBM”) of at least four of … Continue Reading
Scholle Corp. v. Rapak LLC, No. 13 C 3976, Slip Op. (N.D. Ill. Jul. 24, 2014) (Kendall, J.). Judge Kendall ruled on numerous motions filed after the Court granted a preliminary injunction in this patent case. Of particular note, the Court held as follows: The Court granted defendant Rapak’s motion to construe more than five … Continue Reading
On March 5, 2014 from 5:30 to 7:30, the Intellectual Property Law Association of Chicago (IPLAC) is hosting its annual Federal Judicial Panel at the Chicago-Kent College of Law. Margaret Duncan of McDermott, Will & Emery will moderate a panel consisting of N.D. Illinois Judges Coleman, Darrah, and Kendall. The panel will discuss: N.D. Illinois … Continue Reading
PWC has published the latest installment in its excellent yearly patent litigation survey. This year’s survey looks at data for every year from 1995 through 2012. One interesting aspect of this year’s study was a focus upon individual districts and judges. Here are some of the key takeaways regarding the Northern District: The Northern District … Continue Reading
Personal Keepsakes, Inc. v. PersonalizationMall, No. 11 C 5177, Slip Op. (N.D. Ill. May 24, 2012) (Kendall, J.). Judge Kendall denied plaintiff Personal Keepsakes’ (“PKI”) motion to reconsider in this copyright and Digital Millenium Copyright Act (“DMCA”) case. The Court previously held that, as a matter of law, a copyright notice on a separate page … Continue Reading
Parker v. Kimberly-Clark Corp., No. 11 C 5658, Slip Op. (N.D. Ill. Jan. 10, 2012) (Kendall, J.). Judge Kendall granted defendant Kimberly-Clark’s Fed. R. Civ. P. 12(b)(6) motion and dismissed plaintiff’s design patent complaint to a sanitary napkin. Based upon a side-by-side comparison of the design patent and the accused sanitary napkin, the Court held … Continue Reading
Magna Carta Holdings, LLC v. Nextgen Healthcare Information Sys., Inc., No. 08 C 7406, Slip Op. (N.D. Ill. Mar. 9, 2012) (Kendall, J.). Judge Kendall construed a key term in this patent litigation – the Comparator Term – after the parties each acknowledged that the Comparator Term’s construction would likely resolve the case. The Court … Continue Reading
Personal Keepsakes, Inc. v. Personalizationmall.com, Inc., No. 11 C 5177, Slip Op. (N.D. Ill. Feb. 8, 2012) (Kendall, J.). Judge Kendall granted defendant’s various Fed. R. Civ. P. 12(b)(6) motions to dismiss plaintiff Personal Keepsakes’ (PKI”) Digital Millenium Copyright Act (“DMCA”), Lanham Act and related state law claims in this case involving copyrighted poems. Lanham … Continue Reading
Trading Techs. Int’l., Inc. v. BCG Partners, Inc., No. 10 C 715 (Consolidated), Slip Op. (N.D. Ill. Feb. 9, 2012) (Kendall, J.). Judge Kendall decided the parties’ cross-motions for summary judgment in plaintiff Trading Technologies’ (“TT”) patent infringement case involving futures trading software. The Court agreed to decide isolated issues, including claim construction, ahead of … Continue Reading
Trading Techs. Int'l., Inc. v. BCG Partners, Inc., No. 10 C 715 (Consolidated), Slip Op. (N.D. Ill. Sep. 2, 2011) (Kendall, J.).
Judge Kendall granted defendants' motion to strike references to settlement discussions in plaintiff Trading Technologies ("TT") complaints, and denied the parties' various motions to dismiss each others pleadings in their patent cases involving trading software. TT used various of its settlement documents to allege certain defendants' actual knowledge of both TT's patents and defendants' alleged infringement of those patents. TT acknowledged that the documents were settlement documents. The Court noted that TT could not waive FRE 408 even for its own documents and held that TT's attempted use was improper pursuant to FRE 408. TT used the documents to prove two elements of liability for indirect infringement - knowledge of the patents and the alleged infringement. The Court, therefore, struck all references to the documents pursuant to Fed. R. Civ. P. 12(b). The Court denied defendants' motions to dismiss TT's indirect infringement claims. Even after striking the settlement documents, TT pled sufficient facts:
• TT made a general allegation of knowledge which was not alone sufficient, but was adequately supported.
• TT alleged that each defendant competed with TT. It was "not a stretch" to presume that TT's competitors would be watching TT's patents.
• TT alleged that defendants were aware of the patents through various suits. The Court voted conflicting case law regarding whether these suits could create notice.
• TT denied that defendants encouraged infringement by advertising allegedly infringing products and encouraging them to infringe by using the software products.
The Court denied TT's motion to strike defendants' noninfringement and invalidity affirmative defenses and then related counterclaims calling the motions a "waste of time":
• The defendants' bare-bones affirmative defenses were consistent with standard patent litigation practice and put TT on notice.
• The defenses were also consistent with the Local Patent Rules which require more detailed allegations early in discovery. See LPR 2.3.
• TT's affirmative defenses as to one defendant were "really identical" to those TT sought to strike.
• Defendant had a right to maintain their declaratory judgment counterclaim for findings of noninfringement and invalidity.
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Trading Techs. Int'l., Inc. v. BCG Partners, Inc., No. 10 C 715 (Consolidated), Slip Op. (N.D. Ill. Jul. 26, 2011) (Kendall, J.).
Judge Kendall denied the SunGuard defendants' (collectively "SunGuard") summary judgment motion arguing that plaintiff Trading Technologies ("TT") second suit against the same SunGuard products should be dismissed based upon claim splitting or claim preclusion. There is much more on this case and the related cases in the Blog's archives. The parties and the accused products were the same in both cases (filed in 2005 and 2010, respectively), but the patents were different. The Federal Circuit has held that suits based upon different patents involving similar inventions are not the same claims because each patent covered a separate invention. Kearns v. General Motors Corp., 94 F. 3d 1553, 1555 (Fed. Cir. 1996). Because the TT asserted different patents in the two suits, there was no preclusion. It did not matter that that TT could have arguably amended its first suit to add some or all of the later asserted patents.
The Court also deemed TT's Local Rule 56.1 additional statements of fact admitted because SunGuard failed to respond to them.
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MCGIP, LLC v. Does 1-316, No. 10 C 6677, Slip Op. (N.D. Ill. Jun. 9, 2011) (Kendall, J.).
Judge Kendall denied putative defendants' motions to quash plaintiff MCGIP's subpoenas seeking to identify users associated with specific IP addresses that allegedly used BitTorrent in a manner that infringed MCGIP's copyrights in certain adult films. The Court's key reasons for denying the motions to quash were:
MCGIP issued subpoenas to internet service providers ("ISP"), not the putative defendants. The subpoenas, therefore, did not create an undue burden on the putative defendants because the ISPs had a duty to produce documents, not the putative defendants.
MCGIP was seeking identifying information, none of which was privileged.
The subpoena requests were not outweighed by the putative defendant's privacy or First Amendment rights.
Whether the Does were improperly joined is a premature question. As such, motions raising it were denied without prejudice to refile once the issue was ripe.
The putative defendants' arguments that the Court lacked personal jurisdiction were also premature as defendants were not in the suit yet. Defendants will be free to raise those issues once they ripen.
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Trading Techs. Int'l, Inc. v. BCG Partners, Inc., No. 10 C 715 (N.D. Ill. May 5, 2011) (Kendall, J.).
Judge Kendall denied defendant GL Trade Americas' ("GL") motion to disqualify plaintiff Trading Technologies' ("TT") lead litigation counsel and in-house counsel Borsand, without prejudice to reconsider whether Borsand should be excluded from testifying should he seek to testify. GL alleged that Borsand received confidential information when TT briefly retained a European law firm to represent it in patent prosecution matters without realizing that the firm represented an entity working on behalf of GL. Borsand only had two contacts with the firm, and it was reasonable that during those two contacts no confidential information was transferred to Borsand. As such, the drastic measure of disqualification was not warranted.
GL's request that Borsand be excluded as a trial witness because of his role as lead trial counsel was denied as premature with leave to refile at a later date. The Court could not determine what discovery would show, what facts would be disputed at trial or whether Borsand would even testify at trial.
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Hollander v. Hospira, No. 10 C 8151, Slip Op. (N.D. Ill. May 12, 2011) (Kendall, J.)
Judge Kendall granted defendant Hospira's motion to dismiss plaintiff Hollander's false patent marking claims for failure to sufficiently plead intent. But the Court gave Hollander 30 days to replead because its complaint was filed before the BP Lubricants decision on intent pleading was entered. The following items were of particular note:
The fact that some of Hospira's patents expired for failure to pay maintenance fees was not sufficient.
The fact that one patent was held unenforceable was not sufficient to show intent.
Hospira's 10-K statements regarding its attention to third party patents were not relevant to Hospira's knowledge of its own patents.
Packaging inserts inside a consumer package were not relevant because a consumer could not see them before purchasing the product, and therefore, could not be swayed its decisions based upon allegedly false marking.
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The patent pilot program started this month in the Northern District and across the country. The pilot program is a ten-year look at ways to handle patent cases more effectively. The main component of the pilot program is judges in pilot districts, including the Northern District, self-selecting as patent judges. Patent cases will continue to be randomly assigned to all Northern District judges. But when a non-patent judge is assigned a patent case that judge will have thirty days to order reassignment of the case. When reassignment is ordered, the case will be randomly reassigned to one of the patent judges. There will also be patent-related education and programs offered for the patent judges across the country.
One unanswered question about the pilot program remains: If a non-patent judge was assigned a patent case less than thirty days before the program kicked off on September 19, can the non-patent judge order the patent case reassigned pursuant to the pilot program? I have not seen it happen yet, but I suspect it could over the next week or two.
The Northern District issued the following list of judges who have self-selected as patent judges:
Chief Judge James F. Holderman
Judge Ruben Castillo
Judge John W. Darrah
Judge Gary S. Feinerman
Judge Virginia Kendall
Judge Matthew F. Kennelly
Judge Joan Humphrey Lefkow
Judge Rebecca R. Pallmeyer
Judge Amy J. St. Eve
Judge James B. Zagel
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Peters, p/k/a Vince P. v. Kanye West, No. 10 C 3951, Slip Op. (N.D. Ill. Mar. 3, 2011) (Kendall, J.).
Judge Kendall granted defendants' (collectively "Kanye West") Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Vince P's copyright infringement claim. Vince P alleged that Kanye West copied Vince P's 2006 song "Stronger" when Kanye West released his 2007 song "Stronger." Vince P sufficiently pled ownership of a registered copyright. So, the issue was whether Vince P sufficiently pled copying. As an initial matter, Vince P sufficiently pled access to Vince P's work by alleging that Vince P shared his song with Kanye West's "close friend, advisor and business associate" John Monopoly.
The Court then considered whether the allegedly copied elements of Vince P's song were copyrightable:
Title -- Titles by themselves are not copyrightable.
Kate Moss -- A reference to Kate Moss in each song was an unprotectable fact.
Hook -- The use of the maxim "that which does not kill us makes us stronger" was not protectable because it was not original to Vince P. And the use of "wronger" in each hook was not protectable because while it was a unique word, it was actually part of a rhyme scheme with "longer" and common rhyme schemes are not protectable.
The combination of the above elements was not used in its entirety or in a nearly identical way. Therefore, the combination was not protectable.
Finally, the two songs did not display "fragmented literal similarity." That doctrine, recognized in other circuits, allows for infringement where a smaller fragment of a work is literally copied, but not the entire work. The similarities between the two Stronger songs, however, did not even rise to the level of fragmented literal similarity. Among other reasons the allegedly copied fragments were not integral parts of the copyrighted work.
Because there was no substantial similarity between the two songs, the Court dismissed the copyright infringement claim.
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Heathcote Holdings Corp. v. Learning Curve Brands, Inc., No. 10 C 7799 (Kendall, J.).
I generally write about opinions issued by the Northern District, but the parties in this case recently filed their false patent marking settlement agreement. Because of the extreme interest in false marking cases over the last eighteen months, I am posting about the settlement. Plaintiff accused defendants of falsely marking various Thomas the Tank Engine toy trains and related products with two patents. In one instance, the alleged false marking appears to be based upon the omission of one number from the patent number -- it read U.S. Patent No. 7,178,68 instead of 7,178,685.
Here are the highlights of the agreement:
Defendants agreed to pay $85,000, with half mailed for overnight delivery directly to the Department of Justice.
The agreement was subject to approval by Department of Justice's Director of Intellectual Property Staff before becoming final, which was given with minor edits.
The agreement released all false marking claims related to the two patents at issue, but did not attempt to waive any possible false marking by defendant as of the date of the agreement. Of course, it may be that the two identified patents were either defendants' only patents or the only patents that defendant had marked products with. So, this term may effectively be a complete release of all possible false marking claims.
Neither party admits or denies the constitutionality of the false marking statute.
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The Federal Bar Association -- an excellent group that is worth joining (disclosure: I am a member) -- recently held a panel of Northern District judges. Here are my notes regarding Judge Kendall's comments:
Judge Kendall will allow parties to appear by phone, if there is a legitimate conflict or need, but prefers not to hear counsel ordering a latte during a hearing.
She pointed out that an average district judge has a docket of 300 civil and 100 criminal cases, with about 100 pending motions.
Judge Kendall scans briefs as they come in and meets clerks formally every two weeks to discuss the direction of opinions. Noted that many motions are straightforward to decide.
Judge Kendall has sidebars with jurors either if a juror has private information to share or if a juror has very strong feelings on any question. Sidebars avoid problems, and lawyers tend to be more human during sidebars. Sidebars also allow lawyers to ask questions that they may not be able to in open court.
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