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

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

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

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.

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

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.

Continue Reading Trading Technologies: Party Cannot Waive FRE 408 Protection As to its Communications

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.

Continue Reading Second Suit on Different Patents Not Precluded

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.

Continue Reading Subpoenas to Identify Does Allowed in BitTorrent Copyright Case

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.

Continue Reading Exclusion of Lead Trial Counsel as Trial Witness Premature Until Trial Witnesses are Identified