Loggerhead Tools, LLC v. Sears Holdings Corp., No. 12-CV-9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah granted in part plaintiff Loggerhead’s motion to exclude defendant Apex’s expert’s opinions regarding willfulness and obviousness in this IP case involving the Bionic Wrench.

Of note, the Court held as follows:

  • The expert’s testimony

At the request of Federal Circuit Chief Judge Michel, an all-star panel was established to create a comprehensive set of model patent jury instructions — click here to download them. The panel included patent litigation heavy weights like Don Dunner and federal judges — Judges Ward (E.D. Texas) and Whyte (N.D. Cal.). The Federal Circuit has not officially endorsed the jury instructions, but they are very comprehensive and deal with just about every recent case law development. In particular, they provide an excellent glossary of patent terms for the jury (something that should be in every set of patent jury instructions, but often is not) and they provide two KSR obviousness instructions, one for if the jury is making the final determination and one if the judge does (the panel could not come to a consensus on what the correct reading of the law was).
The one instruction I had hoped to see that was missing was an instruction for awarding royalties on post-verdict sales — see the MTTLR Blog on the issue here or read commentary on Judge Clark’s plan to submit post-verdict damages to the jury here at Michael Smith’s E.D. Texas blog. If anyone has seen an instruction for post-verdict damages, send it to me and I will post it for all to consider.
You can also read more about patent jury instructions in the Blog’s archives — click here for the Seventh Circuit’s model patent jury instructions and here for a list of jury instructions Northern District judges have offered as precedent in IP cases.
Hat tip to Dennis Crouch for linking to the new model jury instructions here at Patently-O.

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I published an article in the most recent edition of the John Marshall Review of Intellectual Property Law surveying the application of the Twombly “plausibility” pleading standard, in place of the former any set of facts regime, to patent cases — The Uneven Application of Twombly in Patent Cases: An Argument for Leveling the Playing Field (click here to read it). I found that district courts have largely followed the Federal Circuit’s one case addressing Twombly, which unfortunately involved a pro se plaintiff, and held that Twombly did not change the pleading standards for patent plaintiffs. But despite that ruling, many district courts are requiring that patent defendants plead affirmative defenses and, in some cases, counterclaims to the higher plausibility standard. This creates a harmful dichotomy which can be remedied in two ways: 1) as some courts already do, use strict Local Patent Rules to require early disclosures of plaintiff’s claims followed in short order by defendant’s defenses; or 2) as at least the Western District of Wisconsin already does, require patent plaintiffs to identify the asserted claims and the accused products. Either or both level the playing field for the parties and come at little cost to plaintiffs who already have a Fed. R. Civ. P. 11 pre-suit investigation requirement.
In addition to my article, there are several excellent pieces in Volume 8, Issue 1 of Review of Intellectual Property Law, including:
European IP attorney Paul Cole provides a Eurpoean view of the KSR obviousness standard — click here to read the article;
Timothy Trainer looks at inconsistent international application of TRIPS and discusses what can be done to better protect intellectual property worldwide — click here to read the article.
Lawrence Ebert (of IPBiz fame) draws lessons from the patenting and licensing of the transistor — click here to read the article;
Vangelis Economou argues that a covenant not to sue should not destroy a court’s declaratory judgment jurisdiction over a patent defendant’s invalidity and inequitable conduct counterclaims and that the Federal Circuit should overturn its Super Sack decision — click here to read the article;
Nicholas Dernick looked at sovereign immunity — click here to read the comment;
Graham Liccardi considered the Computer Fraud & Abuse Act as a vehicle for getting federal jurisdiction of trade secret disputes — click here to read the comment; and
Mark Petrolis argued that fair use should not be an absolute defense to a moral rights violation — click here to read the comment.

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Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7718, 2008 WL 4083145 (N.D. Ill. Aug. 27, 2008) (Moran, Sen. J.)*
Judge Moran granted defendant’s summary judgment of invalidity as to plaintiff’s patented technology for cleaning printing press components. The Court previously granted defendants summary judgment of noninfringement on a reissued patent and the patent at issue in this opinion, but the Federal Circuit reversed as to the patent at issue after revising the Court’s claim construction – click here for more on this case in the Blog’s archives.
After holding that each element of the claims were taught by various pieces of prior art, the Court considered whether the art could be combined pursuant to the Supreme Court’s KSR standard. The Court held that the creation of strict new industry standards and a finite number of solutions that met the standards created jurisdiction for combining the prior art references:
The introduction of strict regulations regarding the use of high VOC solvents was an outside impetus to begin using low VOC solvents to clean presses. By plaintiff’s own admission, the existing spray bar/dry roll systems worked poorly with low VOC solvents. Therefore, a problem needed to be solved. The mechanics of printing press design led to a finite number of solutions. The pieces for the ultimately embraced solution were all present in the prior art, and it was only a matter of time before they were put together in the manner described in the asserted claims of the ‘976 patent. We find this to be true, particularly in light of KSR’s instruction that “Common sense teaches … that familiar items may have obvious uses beyond their primary purposes, and in many cases a person or ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 127 S.Ct. at 1742. See also, Muniauction, Inc. v. Thomson Corp., ___ F.3d ___, 2008 WL 2717689, at *6-*10 (Fed. Cir. July 14, 2008); Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1160-63 (Fed. Cir. 2007).
(parentheticals omitted).
The Court also found the patent invalid because “reduced air content” was indefinite. The patent did not teach how or when to measure the air content reduction. Because three different experts could start the calculation from three different baselines and get three different, but equally correct results, the term was indefinite.
* Click here for more on this case in the Blog’s archives..

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Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., No. 05 C 3684, 2008 WL 839993 (N.D. Ill. Mar. 27, 2008) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan denied defendants’ (collectively “Limited Brands”) motion for reconsideration regarding the Court’s claim construction opinion and its summary judgment opinions of infringement, validity and damages – click here to read more about those opinions in the Blog’s archives. The Court previously construed the claims of plaintiff Ball Aerosol’s (“BASC”) patent covers a candle tine. The Court granted BASC summary judgment of infringement and validity, pre-KSR. When KSR revised the obviousness standard, the Court sua sponte ordered supplemental briefing regarding obviousness in light of KSR. Based upon that briefing, the Court again granted summary judgment of validity. The Court then granted BASC summary judgment on damages awarding it 20% royalties and finding Limited Brand’s infringement willful.
The Court held that its original claim construction, validity and infringement holdings were correct and that Limited Brands had been given ample opportunities to defend itself. The Court also denied Limited Brands’ argument that reasonable royalties could not be decided on summary judgment. Limited Brands’ Seventh Amendment right to a jury trial regarding damages had not been violated. There is no right to a jury without a material question of fact.
The Court also held that while its initial grant of summary judgment of willfulness was made before the Federal Circuits’ decision In Re Seagate, the undisputed facts also warranted summary judgment of willfulness pursuant to Seagate’s objective recklessness standard. Limited Brands was aware of BASC’s patent both before the suit was filed and before it began making the infringing candle tin. In fact, Limited Brands had extensive discussions with BASC regarding BASC’s specifications for candle tins. Furthermore, Limited Brand’s main defense – advice of counsel – was negated because Limited Brands did not disclose its opinion by the Court’s deadline for doing so.

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Brian Higgins’s Maryland IP Law Blog post about the progeny of In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), inspired me to do follow up posts identifying Northern District cases discussing recent major IP decisions — click here for my post on injunctions after eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). There have been a number of obviousness decisions in the Northern District since KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 127 S.Ct. 1727 (2007). Here they are:*
Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 1549498 (N.D. Ill. May 24, 2007) (Coar, J.). — Holding that the Court’s pre-KSR analysis need not be reconsidered in light of KSR because an element was missing from the prior art, regardless of what standard was used.
Herman Miller, Inc. v. Teknion Corp., No. 05 C 2761, 2007 WL 2230042 (N.D. Ill. Jul. 30, 2007) (Gettleman, J.). — Noting that, in light of KSR, plaintiff issued a statement of non-liability and certain patents were removed from the suit.
Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. Jun. 8, 2007). — Holding that the pre-KSR jury’s decision would not have changed if given a KSR obviousness instruction.
These opinions suggest that KSR is not changing obviousness law in the Northern District much. I suspect that is not true. Once we have a larger sample of cases, including more where the initial analysis was not done pre-KSR, we will see more patents held invalid based upon obviousness.
* A brief note on methodology: this was not a thorough study and does not include cases that granted or denied injunctions without discussion. For a more complete list of post-KSR decisions nationwide, go to the Fire of Genius.

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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 2007-1243, 1244, Slip Op. (Fed. Cir. Jan. 7, 2008).*
The Federal Circuit affirmed the Northern District jury’s obviousness verdict, and Judge St. Eve’s denial of defendant’s inequitable conduct claim. But the Federal Circuit reversed the Northern District’s construction of “power conversion circuit” and remanded for further proceedings and, perhaps, a new trial.** The Federal Circuit held that the Northern District relied largely upon claim differentiation for its construction and, in the process, gave the patent scope beyond the disclosed invention.
The Federal Circuit held that the Northern District’s pre-KSR obviousness jury instruction was not reversible because defendants identified no evidence in the record that supported an obviousness finding even under the broader KSR standard.
* Click here for extensive coverage of this case in the Blog’s archives.
** The Court scheduled a status conference early next week. We may learn at that conference whether a new trial is being scheduled or whether summary judgment will be briefed or a settlement conference scheduled first.

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As I mentioned several days ago, Northwestern’s excellent IP Law Week series begins Monday, January 14. The student IP group is hosting a panel each day next week. The Monday through Thursday panels will run from noon until 1:15. Friday’s panel starts at 1:40 and ends at 2:35. All events will be held in Rubloff 140. The panels are listed below and promise to be very interesting. I am part of Monday’s Patent Reform panel, and I look forward to seeing you there.
Monday: Patent Reform – Motivations, Impact and Controversy
Tuesday: Balancing the Right to Life vs. the Right to Patent
Wednesday: Copyright Law and Media Distribution over the Internet
Thursday: Patent and Pharmaceutical / Drug Issues
Friday: KSR v. Teleflex and Patent Prosecution

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I have been meaning to highlight the University of Michigan Law Review’s recent Supreme Court, Federal Circuit, and Patent Law edition for some time. The day before the Michigan-Ohio State match-up for the Big Ten title and a trip to the Rose Bowl seems like an appropriate time to do it. The article contains excellent analysis of the future of patent law and the effects of recent Supreme Court rulings, in particular KSR. The specific articles are:
Rebecca S. Eisenberg, The Supreme Court and the Federal Circuit: Visitation and Custody of Patent Law
John F. Duffy, KSR v. Teleflex: Predictable Reform of Patent Substance and Procedure in the Judiciary
Harold C. Wegner, Making Sense of KSR and Other Recent Patent Cases
Robert A. Armitage, Now That the Courts Have Beaten Congress to the Punch, Why Is Congress Still Punching the Patent System?
Stephen G. Kunin & Andrew K. Beverina, KSR’s Effect on Patent Law
Each article is worth the read, perhaps as you watch the game tomorrow.

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Herman Miller, Inc. v. Teknion Corp., No. 05 C 2761, 2007 WL 2230042 (N.D. Ill. Jul. 30, 2007) (Gettleman, J.).
Judge Gettleman construed the claims of the asserted patents covering features of swivel office chairs and granted partial summary judgment of infringement for plaintiff on one of the two patents, U.S. Patent No. 6,588,741 (the “‘741 patent”), with the exception of claim 10 which plaintiff admitted was not literally infringed, and summary judgment of noninfringement for defendant as to claim 10 of the ‘741 patent and the second patent, U.S. Patent No. 6,588,842. But the most interesting part of this opinion is not the Court’s constructions or infringement analysis, but what appears to be plaintiff’s reasonableness – a trait seldom displayed at this stage of the case in my experience. At the beginning of its opinion, the Court noted that the case originally included two other patents and that the parties had filed and briefed cross summary judgment motions regarding those patents as well. But in light of the KSR v. Teleflex decision, plaintiff issued a statement of non-liability as to those patents and the parties voluntarily dismissed all of their claims and counterclaims related to those patents. It must have been an exceptionally strong obviousness case. I have read several post-KSR decisions and this is the first case in which I have seen a plaintiff voluntarily dismiss its claims in light of the “new” obviousness standard.

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