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

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

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

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.

Continue Reading Court Finds Claim Preamble Limiting

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.

Continue Reading Letter Demanding Customers Created Standing to Sue

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.

Continue Reading Stayed Patent Claims in One Case Do Not Remove Value of Consolidating Similar Cases

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.

Continue Reading Amended Pleading Filed Before Deadline to Amend Does Not Prejudice

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.

Continue Reading Court Awards Injunction, Actual Damages and Costs, Not Attorney’s Fees

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.

Continue Reading Prior Verdict and Remittitur Do Not Limit Arguments in Related Malpractice Suit