Manning

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Von Holdt v. A-1 Tool Corp., No.. 04 C 4123, Slip Op. (N.D. Ill. Jun. 19, 2009) (Manning, J.).
Judge Manning adopted Magistrate Judge Brown’s claim construction Report and Recommendation over defendants’ objections in this patent infringement case involving molded buckets with stacking strength. Of particular interest:
* “Side-by-side” meant “one beside the other.” The Court refused to hold that nothing could be between the ribs of the buckets because doing so would be construing the terms in reference to the accused devices.
* “[A] relatively large radius” meant a single large radius, despite the fact that “a” or “an” following comprising language generally means one or more. In this case, one or more would not make sense. Multiple radii would require one or more radius to be smaller than the others. Additionally, the strongest bucket configuration was a single radius, as shown in the patent figures.
* “In alignment” meant in a “straight line with,” not “parallel.” Requiring the alignment to be parallel was an unnecessary restriction.
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Continue Reading Patentee Can Be His Own Lexicographer

Compliance Software Sol’ns. Corp. v. MODA Tech. Partners, Inc., No. 07 C 6752, 2008 WL 2960711 (N.D. Ill. Jul. 31, 2008) (Manning, J.)
Judge Manning granted defendants’ (collectively “MODA”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. MODA was a Pennsylvania resident, as were its employees. Its alleged Illinois contacts were: 1) attendance at an Illinois trade show, Pittcon, where it demonstrated its software – software that allegedly infringed plaintiff CSSC’s patent and copyright covering CSSC’s environmental monitoring software; and 2) signing a contract with an Illinois choice of law provision.
MODA’s Pittcon attendance did not create specific jurisdiction because MODA just presented its software and tried to generate interest in it. MODA did not sell its software or “use” it. Pittcon attendance, therefore, did not create jurisdiction. Similarly, MODA’s alleged offer to sell its software in Illinois did not create jurisdiction. The offer did not include a price term, a requirement for a legal offer to sell.
Finally, MODA’s execution of a contract governed by Illinois law did not create jurisdiction. While Illinois law governed the contract, it did not include a forum selection clause making Illinois the exclusive forum. Without the exclusive forum selection clause, the contract did not create jurisdiction.
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Continue Reading Trade Show Presentations Do Not Create Jurisdiction Without Price Terms

WMS Gaming Inc. v. WPC Gaming Prods. Ltd., No. 07-3585, Slip Op. (7th Cir. Sep. 8, 2008) (Wood, J.).*
Judge Wood delivered the Seventh Circuit’s opinion reversing and revealing Judge Manning’s damages award. Plaintiff-Appellant WMS Gaming (“WMS”) alleged that defendants (collectively “PartyGaming”) infringed its JACKPOT PARTY and SUPER JACKPOT PARTY marks. Defendants chose not to participate in the suit. The Northern District, therefore, entered a default judgment for WMS and a permanent injunction. WMS sought $287M in damages, an amount equal to PartyGaming’s reported U.S. revenues during the relevant period. The Court, however, held that WMS was entitled to damages, not an equitable accounting of all of defendants revenues and awarded approximately $900K per year, or $2.7M total. As an initial matter, the Seventh Circuit held that Fed. R. Civ. P. 54(c) requires that in the case of a default judgment the award cannot differ from or exceed the type and amount of requested damages. Because WMS’s complaint and its subsequent pleadings all requested both an equitable accounting and actual damages, either were an allowable damages award.
Having determined that an equitable accounting was an appropriate remedy, the Court explained that WMS was entitled to an award of PartyGaming’s revenues attributable to PartyGaming’s trademark infringement. Further, WMS’s burden was only to prove PartyGaming’s revenue. WMS did that by proving PartyGaming’s $287M of U.S. revenues during the relevant period. The burden then shifted to PartyGaming to prove which portions of its revenue were not attributable to its infringement. The Seventh Circuit, therefore, reversed and remanded to the Northern District.
* Click here for the opinion and click here for a podcast of the oral argument.
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Continue Reading Trademark Plaintiff Entitled to All Defendants’ Revenue

Vulcan Gold, LLC v. Google, Inc., No. 07 C 3371, 2008 WL 2959951 (N.D. Ill. Jul. 31, 2008) (Manning, J.)
Judge Manning granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing plaintiffs’ RICO claims. The Court previously dismissed plaintiffs’ complaint with leave to refile – click here to read the Blog’s post on that opinion. The Court held that plaintiffs did not sufficiently plead an enterprise. Plaintiffs only alleged that the defendants were contractually related within Google’s adsense program. And the alleged contractual relationship did not show consensual decisionmaking or joined purpose. Plaintiffs’ RICO claims were, therefore, dismissed.
The Court denied defendants’ motion to dismiss the unjust enrichment and civil conspiracy claims. Fed. R. Civ. P. 9(b) heightened pleading standards did not govern the claims because they were both based upon trademark infringement, not fraud.
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Continue Reading No Heightened Pleading for Trademark-Based Unjust Enrichment Claim

LimitNone v. Google, Inc., No. 08 C 4178 (Manning, J.).
Last month I posted that LimitNone, a Chicago company, sued Google for trade secret misappropriation seeking $1B — click here for that post. Earlier this week, Google removed the case to the Northern District, arguing that LimitNone’s Illinois Consumer Fraud and Deceptive Business Practices Act (“ICFA”) claim sounded in copyright and, therefore, was preempted by the Copyright Act creating federal question jurisdiction (click here for Google’s removal papers).
In its complaint, LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone’s gMove software — software that helps Microsoft Outlook users migrate data to the Google platform. Google allegedly assured LimitNone that it would not offer a competing product. But after receiving LimitNone’s trade secrets, including its software code, and promoting the $19 gMove software, Google allegedly began offering a free, competing software package which allegedly used LimitNone’s trade secrets. LimitNone has not filed any responsive papers or pleadings yet, but I will keep you updated if LimitNone challenges the removal.
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Continue Reading Removal Papers Argue Consumer Fraud Act Claim Sounds in Copyright

Goss Int’l Ams., Inc. v. Graphic Mgmt. Associate, Inc., No. 05 C 5622, Slip Op. (N.D. Ill. Jun. 11, 2008) (Manning, J.).
Judge Manning construed the terms of plaintiff’s patent related to a newspaper assembly collating machine by adopting in part and rejecting in part Magistrate Judge Valdez’s Report and Recommendation (“Report”) construing the claims. Of particular note, the Court considered whether it should review the Report de novo or for clear error, because the constructions were not dispositive. Because the constructions likely would be case dispositive in fact, and because prior cases reviewed magistrate claim construction reports de novo, the Court held that de novo review was appropriate.
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Continue Reading Magistrate Claim Constructions Reviewed De Novo

The Northern District of Illinois and Chicago’s Federal Bar Association chapter are hosting their Ninth Annual Awards for Excellence in Pro Bono and Public Interest Service awards program this Tuesday, May 13 beginning at 3:30 pm in the James Benton Parsons Memorial Courtroom (2525) of the Dirksen United States Courthouse at 219 South Dearborn Street. The program is open to everyone and is free of charge.
The keynote speaker will be William Neukom, the President of the ABA and partner in K&L Gates. Prior to his private practice, Neukom was executive vice president of Law and Corporate Affairs for
Microsoft, where he managed Microsoft’s legal, government affairs and philanthropic
activities.
Seven “Awards for Excellence in Pro Bono and Public Interest Service” and one “Special
Recognition Award for Public Interest Service” will be presented to the following Chicago-area lawyers for their pro bono and public interest work before the Northern District:
Sara C. Arroyo and Rosa M. Tumialán, of Dykema Gossett PLLC (presented by the Judge Coar);
Anthony J. Masciopinto, of Kulwin, Masciopinto & Kulwin, LLP (presented by Judge Manning);
Myron Mackoff, of Richardson & Mackoff (presented by the Chief Judge Holderman and Magistrate Judge Valdez);
Joshua D. Lee and Amy M. Rubenstein, of Schiff Hardin LLP (presented by the
Judge Brown);
Catherine Caporusso and Margot Klein, of the Federal District Court’s Self-Help Assistance Program (presented by Judge Hibbler);
David A. Gordon, Michael B. Nadler, and Kristen R. Seeger, of Sidley Austin LLP (presented
by Magistrate Judge Schenkier);
Lisa R. Kane, of Lisa Kane & Associates, PC (presented by Chief Judge Holderman); and
Richard J. Gonzales, Clinical Professor of Law, Chicago-Kent (presented by Chief Judge Holderman).
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Continue Reading Northern District’s Ninth Annual Pro Bono & Public Interest Awards

Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. Mar. 20, 2008) (Manning, J.).
Judge Manning granted in part the defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ RICO, Lanham Act and related state law claims. Plaintiffs alleged that the “parking defendants” – entities that allegedly register common misspellings of domain names – worked together and conspired with defendant Google to populate the misspelled domains with revenue-generating advertising related to the actual web sites’ business.*
Anticybersquatting Consumer Protection Act (“ACPA”)
The Court denied the Parking Defendants motion to dismiss plaintiffs’ ACPA claims. While plaintiffs did not allege that the Parking Defendants were the registrants of the domains at issue, they did allege that the Parking Defendants registered, owned, and controlled the sites. Furthermore, the Court would not rule on the factual issue of whether the domains – for example, vulcangolf.com and vulcanogolf.com – were confusingly similar to plaintiffs’ marks.
The Court denied Google’s motion to dismiss because while Google did not register or own the domains at issue, it was sufficient that they allegedly “trafficked” in them by working in concert with the other defendants.
Trademark Infringement
The Court upheld plaintiffs’ trademark infringement claims. It was sufficient that plaintiffs had trademarks covering their own domain names, they were not required to have marks covering defendants’ misspelled domains. Additionally, the Court could not rule upon Parking Defendants’ arguments that they did not use the marks. The complaint alleged use, and determining whether Parking Defendants’ particular acts constituted use would require reliance upon facts outside the complaint.
Google argued that it should be dismissed because it was, at most, an innocent infringer and it had already agreed to permanently exclude all allegedly infringing domains identified by plaintiffs. Because the only remedy against an innocent infringer was an injunction, which Google had already agreed to, Google argued should be dismissed. The Court, however, did not dismiss the trademark claims against Google because dismissal would have required reliance upon facts outside of the complaint. The Court denied the motions to dismiss plaintiffs’ false designation of origin claims for the same reasons the trademark infringement claims were not dismissed.
Trademark Dilution
Defendants argued that the dilution claims must be dismissed because plaintiffs’ marks were not famous. But because plaintiffs pled fame and because fame is a question of fact, the Court did not dismiss the claims.
* This post only addresses the IP aspects of the opinion, but the opinion also considers RICO and state law issues.
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Continue Reading IP & RICO Claims Collide in Domain Registration Suit

Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, Min. Order (N.D. Ill. Jul. 13, 2007) (Manning, J.).
In the first Northern District opinion to address the Supreme Court’s MedImmune declaratory judgment standard, Judge Manning denied plaintiff Black & Decker’s (“B&D”) motion to dismiss defendant Robert Bosch Tool Corp.’s (“Bosch”) declaratory judgment counterclaims for lack of subject matter jurisdiction. In a prior case between the parties before Judge St. Eve (numerous prior opinions are discussed in the Blog’s archives), B&D asserted that two models of Bosch’s Power Box radio (the “Old Power Box”) infringed B&D’s two patents (the “Old Patents”). Shortly before Judge St. Eve held trial in the previous case, B&D brought this suit against Bosch asserting that Bosch’s new model of its Power Box radio (the “New Power Box”) infringed a third patent (the “New Patent”). At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents. Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial. After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.
Shortly after Judge St. Eve excluded the New Power Box from her trial, B&D amended the complaint in this case to allege infringement of the Old Patents. In response, Bosch added declaratory judgment counterclaims regarding a third set of B&D patents (the “Smith patents”) which B&D had never asserted against Bosch. Bosch argued that an actual controversy existed because of the history of litigation between the parties and B&D’s prior testimony that it placed a high value on the exclusivity its patents provided in the workplace radio marketspace. B&D countered that, despite filing two suits against Bosch, B&D had never asserted the Smith patents against Bosch, or any other party. B&D also argued that St. Eve had already dismissed similar counterclaims in the last case for lack of actual controversy. But St. Eve’s decision was based upon the Federal Circuit’s old reasonable apprehension test, which the Supreme Court’s MedImmune decision overruled. Looking at “all of the circumstances,” as required by MedImmune, the Court held that an actual controversy existed. Among other reasons, the Court noted that the wide-ranging dispute between the parties regarding the workplace radios, suggested that it was in the parties’ best interests to resolve any dispute regarding the Smith patents.
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Continue Reading Northern District’s First Post-MedImmune DJ Decision

Vaughn v. Kelly, No. 06 C 6427, Slip Op. (N.D. Ill. Jul. 16, 2007) (Manning, J.).
Judge Manning denied defendant R. Kelly’s (“Kelly”) motion to dismiss plaintiff Vaughn’s case arguing that Vaughn’s state law claims were preempted by copyright law. The Court previously dismissed Vaughn’s motion to remand the case to state court, holding that his unjust enrichment claim sounded in copyright law and giving Vaughn time to amend his complaint to remove the copyright elements (you can read more about the case in the Blog’s archives). Kelly now moves to dismiss the amended complaint. As in the original complaint, Vaughn alleged that he introduced Kelly to stepping, taught him how to step, helped him write a stepping-based song entitled “Step in the Name of Love,” and collaborated with Kelly to develop a video for the song. The Court held that Vaughn’s unjust enrichment claim was preempted by copyright law, but granted Vaughn leave to refile the claim as one for copyright infringement. The Court refused to consider Vaughn’s proposed amended unjust enrichment claim because Vaughn failed to amend the unjust enrichment claim when the Court first offered Vaughn a chance to amend and because it is improper to consider amendments as part of a motion to dismiss. The Court held that Vaughn’s breach of oral contract claim was not preempted by copyright law because it could be for less than co-ownership of the copyright, which would be preempted.
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Continue Reading Unjust Enrichment Claim is Preempted by Copyright Law