N.D. Ill.

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Days Inns Worldwide, Inc. v. Lincoln Park Hotels, Inc., No. 06 C 2960, 2007 WL 1455798 (N.D. Ill. May 16, 2007) (Der-Yeghiayan, J.)

Judge Der-Yeghiayan granted in part defendants’ motion for reconsideration of the Court’s award of plaintiff’s attorneys fees’ and costs for preparing summary judgment motions.  Plaintiff owns various marks relating to its Days…

Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).
Judge Moran granted plaintiffs a preliminary injunction preventing defendants from interfering with plaintiffs’ right to record new music with producers or record labels of plaintiffs’ choice. The Court also denied defendants an opposing preliminary injunction that would have prevented plaintiffs from recording new music with anyone other than defendants. Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively “HH”) — in addition to clicking on “Hawthorne Heights” to go to the band’s website, you can also read about them on Wikipedia. HH entered into a contract (the “Agreement”) with defendants to produce and promote four albums. The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured. HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH. This suit arose from that dispute. Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH’s letter allegedly terminating the Agreement and related state law claims. In a prior opinion (discussed in the Blog’s archives), the Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which left HH free to record other songs or records with another company during the life of the Agreement. Based upon the Court’s ruling, HH moved the Court for a preliminary injunction confirming that defendants could not interfere with any of HH’s efforts to record new music with a third party. Defendants cross-moved to prevent HH from working with anyone but defendants. The Court held that HH showed a likelihood of success on the merits based upon the Court’s prior ruling that the Agreement was not exclusive. Similarly, the Court held that defendants did not show a likelihood of success in light of the same ruling. Because defendants had no likelihood of success, their motion for a PI was denied. Defendants argued that HH could not base a motion for preliminary injunction upon claims for declaratory relief, but the Court held that numerous courts had granted preliminary injunctive relief based upon claims for declaratory judgment.
The Court found that HH would suffer irreparable harm without an injunction. The parties agreed that bands have a short shelf-life and because without an injunction HH would not be allowed to record new music with parties of its choice in the immediate future, HH would be irreparably harmed without an injunction. The Court also held that despite the non-exclusivity of the Agreement, HH was obligated to produce records with defendants in a timely fashion. HH would be required to record the agreed-upon number of albums with defendants “within a reasonable time.”
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Continue Reading Band Granted a Preliminary Injunction Allowing Choice of Producers

Vanguard Prods. Group, Inc. v. Diam USA, Inc., No. 05 C 1323, Slip Op. (N.D. Ill. May 16, 2007) (Bucklo, J.).*
Judge Bucklo granted plaintiffs summary judgment of infringement and denied defendants summary judgment of invalidity. The Court first construed the two claim terms at issue — “electrically coupled” and “via the modular connector.” In both cases, the Court adopted the plaintiffs’ construction after a detailed review of the intrinsic and extrinsic evidence. Because neither term was in the original application or appears in the specification, the intrinsic evidence focused on the use of the terms within the claims. Defendants also attempted to use claim language from a parent application to support their constructions, but the Court held that the prosecution of a term in a parent application generally does not limit different terms in its progeny. In the instant case, the Court found that the parent application had used the broader term “electrical connection” instead of “electrically coupled” which weighed against defendants’ construction. Having ruled in plaintiffs’ favor on the claim construction, the Court held that defendants’ products infringed the asserted claims of plaintiffs’ patents. And the Court held that defendants’ asserted prior art did not anticipate plaintiffs’ patents.
* Because I beat Westlaw on this one, you can access a copy of the Court’s opinion here. Please note that the Court issued a subsequent order modifying the opinion by deleting footnotes three and four, which were not intended to be part of the opinion.
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Continue Reading Court Grants Summary Judgment of Infringement & Denies Invalidity

Late last week, President Bush signed the appointment papers for the Northern District’s newest judge, the Honorable Frederick J. Kapala. Judge Kapala was sworn-in late last week and is sitting in the Northern District’s Western Division. Here is some biographical information about Judge Kapala from the Northern District’s announcement of his appointment:
Judge Kapala graduated from Marquette University and received his law degree from the University of Illinois in 1976. He served as an Assistant State’s Attorney and then went into private practice, where he was appointed as a Special Assistant Attorney General to manage consumer fraud cases in Northern Illinois. He began his judicial career in 1982 as an Associate Judge in Illinois’ 17th Judicial Circuit, serving as Presiding Judge of the Juvenile Court from 1989 to 1991. Judge Kapala was elected a Circuit Judge in 1994 and appointed Presiding Judge of the Criminal Division one year later. In 2001, Judge Kapala was assigned to the Appellate Court of Illinois, Second District, where he served on the Illinois Judicial Conference Committee on Discovery Procedures and the Illinois State Judicial Inquiry Board. Judge Kapala is a captain in the U.S. Army.
Welcome to the Northern District Judge Kapala.
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Continue Reading Judge Kapala Joins the Northern District Bench

According to yesterday’s Chicago Daily Law Bulletin — Trial Courts May Take on Patent Cases (subscription required, but a free, 15-day trial is available) — the Northern District of Illinois judges are split on the value of a proposed pilot program. The program would provide judges who volunteer to take patent cases with extra training and the assistance of specialized law clerks. Cases would continue to be randomly assigned. But after a patent case was randomly assigned, if the assigned judge rejected the case it would be reassigned to a judge participating in the patent program.
Chief Judge Holderman is a proponent of the pilot program. Chief Judge Holderman explained that the system would benefit the patent bar and that is not new to the federal courts because senior judges already have the option of rejecting cases, which are then reassigned. You can read more about Chief Judge Holderman’s views on patent litigation in the district courts in an article he recently authored with his law clerk, Halley B. Guren, advocating, among other things, providing district judges with specialized patent training and reassigning patent cases to those judges — “The Patent Litigation Predicament in the United States.”*
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Continue Reading Northern District Judges Split on Patent Pilot Program

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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Continue Reading Bald Statement of Patent Misuse Does Not Meet Pleading Standards

Super Wash, Inc. v. Allen, No. 06 C 50169, Slip Op. (N.D. Ill. Apr. 20, 2007) (Mahoney, Mag. J.).

Magistrate Judge Mahoney recommended dismissing one group of defendants’ ("Genecor defendants") motion to enforce the settlement agreement and the other group’s ("MJR defendants") motion for judgment and sanctions.  Plaintiff alleged that defendants infringed its trademarks…

Gencor Pacific, Inc. v. Nature’s Thyme, LLC, No. 07 C 167, 2007 WL 1225362 (N.D. Ill. Apr. 24, 2007) (Kocoras, J.).

Judge Kocoras granted defendants’ Fed. R. Civ. P. 12(b)(2)&(3) motion to dismiss for lack of personal jurisdiction and venue and dismissed the case.  Plaintiff brought this Lanham Act false advertising and copyright infringement…

Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1238908 (N.D. Ill. Apr. 25, 2007) (Moran, J.).

Judge Moran denied defendant Lear’s motion to stay the Court’s preliminary injunction pending appeal to the Federal Circuit,* but did allow third party General Motors ("GM") to intervene of right and modified the PI to limit harm to defendant and GM.  In a March 30, 2007 opinion and order, the Court granted plaintiffs’ motion for a preliminary injunction, preventing defendant from marketing and selling its garage door opener transmitters based upon the Court’s prior claim constructions (these opinions are available in the Blog’s archives).  The Court held that Lear could not show a likelihood of success on the merits, in part because the Court’s "Markman decision and subsequent reconsideration dealt an enormous blow to [Lear’s] case."  The Court acknowledged that while plaintiff would suffer irreparable harm without the PI, both Lear and GM could suffer irreparable harm because of the PI.  In order to resolve the irreparable harm issue, the Court revised the PI to exempt Lear’s sales to GM.  Because GM was Lear’s only client and because the exemption allowed GM to continue sourcing Lear’s product  the revised PI would remove harm to GM and substantially reduce Lear’s harm.  While Lear would not be able to add new customers, it would not have to idle its related workers and factories because Lear would not lose any customers.  Because the removal of GM sales from the PI substantially limits Lear’s potential harm, the Court denied Lear’s motion, supported by GM, to increase the bond from $10,000,000 to $50,000,000.Continue Reading Exemption of Sales to Defendant’s Sole Customer Limits PI Harm