Topsteptrader, LLC v. OneUp Trader, LLC, No. 17 C 4412, Slip Op. (N.D. Ill. Jun. 28, 2017) (Leinenweber, J.). Judge Leinenweber denied plaintiff Topsteptrader’s motion for a temporary restraining order (“TRO”) seeking to enjoin defendant OneUp Trader from continuing to operate its website and its business, principally because Topsteptrader did not meet its burden to … Continue Reading
Great Eastern Entertainment Co. v. Naeemi, No. 14 C 4731, Slip Op. (N.D. Ill. Nov. 5, 2015) (Leinenweber, Sen. J.). Judge Leinenweber denied defendant’s Rule 11 motion in this trademark and copyright dispute regarding alleged sale of unauthorized plush toys and backpacks at anime conventions. As an initial matter, the Court held that Rule 11 … Continue Reading
Halo Creative & Design Ltd. v. Comptoir Des Indes Inc., No. 14 C 8196, Slip Op. (N.D. Ill. Jan. 29, 2015) (Leinenweber, J.). Judge Leinenweber granted defendants’ (a Canadian company and an individual Canadian citizen) motion to dismiss pursuant to forum non conveniens arguing that plaintiff’s (a Hong Kong entity) copyright infringement claims should be … Continue Reading
Site B v. Does 1-51, No. 13 C 5295, Slip Op. (N.D. Ills. Mar. 7, 2014) (Leinenweber, Sen. J.). Judge Leinenweber denied Doe 39’s motion to quash a pre-discovery subpoena in this BitTorrent case involving the motion picture “Under the Bed.” At the outset, the Court noted a split in the Northern District regarding whether … Continue Reading
Rehco, LLC v. Spin Master, Ltd., No. 13 C 2245, Slip Op. (N.D. Ill. Mar. 17, 2014) (Leinenweber, J.). Judge Leinenweber granted defendant Spin Master’s motion to dismiss plaintiff Rehco’s patent infringement claim related to a toy airplane, granted in part Spin Master’s motion to strike and granted Rehco’s motion to strike. As an initial … Continue Reading
Pactiv Corp. v. Multisorb Techs, Inc., No. 10 C 461, Slip Op. (N.D. Ill. March 27, 2012) (Leinenweber, Sen. J.). Judge Leinenweber granted defendant Multisorb partial summary judgment that it did not breach the parties’ contract by using confidential information received from plaintiff Pactiv to create a competing “oxygen scavenger” product – a product that … Continue Reading
Pacific Century Int’l. v. Does 1-31, No. 11 C 9064, Slip Op. (N.D. Ill. Jun. 12, 2012) (Leinenweber, J.). Judge Leinenweber granted plaintiff Pacific Century International’s (“PCI”) Fed. R. Civ. P. 45(c)(2)(B) motion to compel subpoena compliance, in this BitTorrent copyright suit. The subpoena sought identifying information from Comcast for certain of its internet service … Continue Reading
Pactiv Corp. v. Multisorb Techs., Inc., No. 10 C 461, Slip Op. (N.D. Ill. May 18, 2012) (Leinenweber, J.). Judge Leinenweber granted plaintiff Pactiv’s motion to reconsider the Count’s oral order requiring production of all items on Pactiv’s privilege log in this patent dispute involving oxygen scavengers. During the hearing, the Court “lost in the … Continue Reading
Fellowes, Inc. v. ACCO Brands Corp., No. 10 C 7587 & 11 C 4229, Slip Op. (N.D. Ill. Nov. 10, 2011) (Leinenweber, J.). Judge Leinenweber granted the Royal defendants’ motion to transfer the claims against them to the Northern District of Ohio, and consolidated the remaining claims against defendant ACCO, in this patent dispute involving … Continue Reading
Judge Leinenweber construed the claims of the patent related to displaying a product selection on a website. Of particular note:
"Using a computer program via a global computer network comprising the steps" was construed as "performing each step of the method in the computer program via a global computer network." While preambles generally are not limiting, this language was necessary to give "life, vitality and meaning to the claimant[s] and, therefore, was limiting.
"Steps" was defined as requiring that the steps be performed in sequential order. Logic required that the steps be performed sequentially and the specification supported the sequential requirement.
"Selecting" was construed as "to choose or make a choice, including moving a cursor into a box or area of the computer display screen containing depictions of fittings/features, which causes control to pass to an additional step."
"Permutation" was construed as "a visually perceptible structural variation or visually perceptible variation affecting the operating characteristics, specifications, or functionality of the product."
"Fitting" was construed as "a visually variable structural feature of a product or visually perceptible variation affecting the operating characteristics, specifications, or functionality of the product."
"Generating a composite image of said selected product" was construed as "a computer processor carrying out the instructions of a computer program, taking into account the user's selection input steps, to create a composite image." The claims were not step-plus function claims because they did not use "step for" language and because "generating" contained an act.
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Triteq v. HMC Holdings LLC, No 11 C 843, Slip Op. (N.D. Ill. Jul. 5, 2011) (Leinenweber, J.).
Judge Leinenweber granted in part and denied in part defendant HMC Holdings' ("HMC") motion to dismiss this patent and false marking complaint involving pistol boxes. Plaintiff Triteq had standing to bring its declaratory judgment claim based upon HMC's letter to Triteq alleging Triteq's products were direct copies of HMC's patented product and seeking the names of Triteq's customers. The Court dismissed Triteq's false marking claim - alleging that the marked pistol boxes were not covered by the marked design patent - with leave to replead. Triteq's claim lacked specific facts showing intent as required by BP Lubricants.
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Pactiv Corp. v. Multisorb Techs., Inc., No. 10 C 461, Slip Op. (N.D. Ill. Feb. 15, 2011) (Leinenweber, Sen. J.).
Judge Leinenweber granted defendant Multisorb Technologies' Fed. R. Civ. P. 42 motion to consolidate a later-filed and related patent case before Judge Dow with the instant case. While the two cases asserted different patents, both cases accused Multisorb's FreshPax CR device for creating low-oxygen packaging. And several of the patents claimed the same priority. Additionally, the two complaints used virtually identical language. And the fact that plaintiff Pactiv's patent claims in the first suit were stayed pending reexam did not matter. Regardless of the timing of decisions, having two separate cases would still subject the parties to inconsistent rulings.
And transfer of the later-filed case was warranted to Local Rule 40.4. Both cases involved the same accused product. While the stay of Pactiv's patent claims in the first suit complicated matters, it did not mitigate the value of consolidating and reassigning the cases before a single judge.
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Connetics Corp. v. Pentech Pharms., Inc., No. 08 C 2230, Slip Op. (N.D. Ill. May 8, 2009) (Leinenweber, J.).
Judge Leinenweber granted defendants' motion to amend their answers including new invalidity and unenforceability affirmative defenses and counterclaims in this ANDA patent case involving plaintiff's patented pharmaceutical OLUX. The Court held that the amended answers and counterclaims were appropriate because they were filed before the Court's deadline for amended pleadings, even though the parties briefed the motion to amend as if the amendment was sought after the deadline. Furthermore, defendants did not unduly delay in seeking to amend. The motion to amend was filed within several months of depositions in which new information necessary for the amendments was disclosed. And the litigation was still in its early stages so the amendments would not cause any prejudice.
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Hyundai Construc. Equip. U.S.A., Inc. v. Chris Johnson Equip., Inc., No. 06 C 3238, Slip Op. (N.D. Ill. Oct 21, 2008) (Leinenweber, Sen. J.).
Judge Leinenweber, having previously granted plaintiff summary judgment of Lanham Act unfair competition and deceptive trade practices,* enjoined defendant's continued sale of gray market goods and use of plaintiffs' trademarks and awarded plaintiffs damages and costs. The Court awarded plaintiffs defendant's profits from sales of gray market construction equipment (equipment made abroad for sale abroad that was imported to the United States without authority for resale), but the Court held that awarding plaintiffs a multiple of defendant's actual damages would be inappropriately punitive. Additionally, the Court gave defendant an opportunity to prove its costs before entering a final damages amount.
The Court also entered a permanent injunction. The Court, however, denied plaintiffs' request that defendant have to provide plaintiffs and the Court a report proving defendants' compliance with the injunction. Such a requirement was unduly burdensome.
Finally, the Court awarded plaintiffs their costs, but held attorney's fees were not appropriate because the case was not exceptional. Among other reasons the case was not exceptional, the Court noted evidence that defendants "apparent pains" to warn customers that defendants' products lacked a warranty and came from overseas. And the Court held that no actual confusion had yet been proven.
* Click here for the prior decision in the Blog's archives.
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Glenayre Elecs., Inc. v. Jackson, No. 02 C 0256, 2007 WL 2492105 (N.D. Ill. Aug. 30, 2007) (Leinenweber, J.).
Judge Leinenweber denied a motion for an injunction against declaratory judgment defendant Jackson ("Jackson") making arguments in a related malpractice case against Jackson's prior counsel Niro Scavone ("Niro"). In the original case, the jury returned a verdict for Jackson finding direct infringement and awarding him $12.1M. Jackson accepted a remittitur of $2.65M which the Court ruled prevented Jackson from pursuing further indirect infringement claims against declaratory judgment plaintiff Glenayre Electronics ("Glenayre"). Jackson appealed the issue to the Federal Circuit which upheld the Court's decision. Jackson then sued his Niro in Illinois state court for, among other things, malpractice. Niro brought the instant motion in this case seeking to prevent Jackson from taking any position that contradicts the principle that the $2.65M remittitur represented all possible damages in the case. Because Niro had already moved the state court to prevent the arguments at issue, the Court had to determine whether the relitigation exception applied to allow the Court to reconsider the decision rendered by the state court. The Court held that the exception did not apply for two reasons. First, Counsel showed no "equitable entitlement" to the relitigation exception. Counsel may still appeal the state court decision through the state appellate system. And the costs of litigation are not a sufficient equitable consideration. Second, the characterization of the Court's ruling was incorrect. The Court held only that once he accepted the remittitur, Jackson was not entitled to any further damages for the infringement. The Court did not hold that Jackson had never been entitled to more than the $2.65M remittitur.
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Ortho-Tain, Inc. v. Rocky Mountain Orthodontics, Inc., No. 05 C 6656, 2007 WL 1238917 (N.D. Ill. Apr. 25, 2007) (Leinenweber, J.).
Judge Leinenweber granted plaintiff's Fed. R. Civ. P. 12(f) motion to strike, dismissing without prejudice defendants' respective patent misuse affirmative defenses and all patent-related statements in defendants' counterclaims. Plaintiff, Ortho-Tain ("OT"), sued Rocky Mountain Orthodontics ("RMO") and Planmeca Oy ("Planmeca") alleging that RMO breached the distributorship agreement between the OT and RMO. Pursuant to the Agreement, OT manufactured dental appliances (allegedly covered by OT's patents) and RMO sold those appliances in France. RMO allegedly breached the Agreement by sourcing equivalent dental appliances from Planmeca. RMO counterclaimed for, among other things, declaratory judgment of noninfringement and unenforceability of OT's relevant United States patents. The Court previously dismissed defendants' patent-related declaratory judgment counterclaims for lack of subject matter jurisdiction. OT now argues that the Court should strike RMO's and Planmeca's respective patent misuse affirmative defenses because they are insufficient. The Court first held that patent misuse was a proper affirmative defense, negating the first prong of a Rule 12(f) analysis.
But neither RMO nor Planmeca met their Fed. R. Civ. P. 8 notice pleading obligations as to the defense. RMO's and Planmeca's statement of their defenses were identical: "[OT's] claims are barred by the doctrine of patent misuse." The defense pled no facts and failed to identify which of OT's "many patents" were allegedly misused. The Court, therefore, dismissed the affirmative defenses without prejudice. And because the defenses were not well pled, the Court did not address the third prong of a Rule 12(f) analysis -- whether the defense could withstand a Fed. R. Civ. P. 12(b)(6) motion to dismiss. The Court also briefly looked at whether Rule 8 notice pleading or Fed. R. Civ. P. 9(b) heightened pleading was required for a patent misuse defense, noting that at least one court had used Rule 9(b) pleading, but did not reach the issue, as the defenses did not meet the Rule 8 standard.
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Allied Ins. Co. v. Bach, No. 05 C 5945, 2007 WL 627635 (N.D. Ill. Feb. 27, 2007) (Leinenweber, J.). Judge Leinenweber granted declaratory judgment defendants/counter-plaintiffs (collectively "defendants") summary judgment DJ plaintiff/counter-defendant’s ("plaintiff") duty to defend defendants against Lanham Act and related state law claims. Defendants were sued by third party Acushnet which accused defendants of willful … Continue Reading
JVI, Inc. v. Universal Holdings, Inc., __ F.Supp.2d __ (N.D. Ill. Nov. 29, 2006) (Leinenweber, J.). In this opinion Judge Leinenweber construed the claims of plaintiff’s U.S. Patent No. 6,185,897 which covers an improved flange connector for precast concrete double tee members. Of particular interest, the Court considered whether a specification including a single preferred … Continue Reading