Assoc. Bus. Process Mngmt. Profs. Int’l. v. Brainstorm Group, Inc., No. 13 C 6213, Slip Op. (N.D. Ill. Aug. 24, 2015) (Gilbert, Mag. J.).

Judge Gilbert granted in part plaintiff ABPM’s motion to enforce the parties’ settlement agreement in this trademark dispute. Defendant Brainstorm Group agreed not to use the term “CBPMP” subject to

Fasteners for Retail, Inc. v. Andersen, No. 11 C 2164, Slip Op. (N.D. Ill. Aug. 22, 2014) (Durkin, J.).

 Judge Durkin granted in plaintiff Fasteners for Retail’s (“FFR”) motion to enforce the parties’ settlement agreement against defendant K International (“Kinder”) in this patent, Lanham Act and trade secret dispute.  The parties previously resolved this

Hollister Inc. v. Convatec Inc., No. 10 C 6431, Slip Op. (N.D. Ill. June 21, 2011) (Kennelly, J.).
Judge Kennelly granted defendant Convatec’s summary judgment because of earlier settlement agreement released plaintiff Hollister’s patent infringement claims involving bowel management systems as to then existing products. Here are the key holdings:
The release provisions in the agreement made clear that the parties intended to release future sales of existing product lines.
The accrued products did not have new, infringing features that would have brought them outside the bonds of the agreement.
Hollister cited no case supporting its argument that in New Jersey releases would only be for past and current sales, not future.
Hollister offered no case law supporting its arguments that a patent application cannot be released before it is issued.

Continue Reading Releases Can Waive Future Claims

Balshe LLC v. Ross, No. 08 C 3256, Slip Op. (N.D. Ill. Jul. 7, 2011) (Zagel, J.).
Judge Zagel granted in part defendants’ motion to reconsider the Court’s prior ruling regarding the parties’ settlement agreement in this case regarding a patent to a system of pooling life insurance policies to create a predictable income stream. Pursuant to the agreement, defendants were to transfer their respective interests in the patent to newly-created, third party Institutional Pooled Benefits LLC (“IPB”). Defendants refused to transfer their rights, arguing that provisions of IPB’s operating agreement were in tension with the agreement.
The Court held that, while the agreement did not require that defendants sign IPB’s operating agreement, terms of the operating agreement did require defendants’ signature. Those signatures, however, were mere formalities.
Defendants’ argument that they did not agree to naming the Newco contemplated by the agreement IPB was no different than the argument in defendants’ original papers and was, therefore, improper as a motion for reconsideration.
The Court denied defendants’ request, in its reply brief, for additional relief. Defendants were limited to the relief sought in their motion to reconsider.
Normally, courts do not consider new evidence presented in a reply. But in light of the particular circumstances of this case, the Court considered defendants’ new evidence offered in their reply.

Continue Reading Court Reconsiders Ruling re Patent Settlement Agreement

Heathcote Holdings Corp. v. Learning Curve Brands, Inc., No. 10 C 7799 (Kendall, J.).
I generally write about opinions issued by the Northern District, but the parties in this case recently filed their false patent marking settlement agreement. Because of the extreme interest in false marking cases over the last eighteen months, I am posting about the settlement. Plaintiff accused defendants of falsely marking various Thomas the Tank Engine toy trains and related products with two patents. In one instance, the alleged false marking appears to be based upon the omission of one number from the patent number — it read U.S. Patent No. 7,178,68 instead of 7,178,685.
Here are the highlights of the agreement:
Defendants agreed to pay $85,000, with half mailed for overnight delivery directly to the Department of Justice.
The agreement was subject to approval by Department of Justice’s Director of Intellectual Property Staff before becoming final, which was given with minor edits.
The agreement released all false marking claims related to the two patents at issue, but did not attempt to waive any possible false marking by defendant as of the date of the agreement. Of course, it may be that the two identified patents were either defendants’ only patents or the only patents that defendant had marked products with. So, this term may effectively be a complete release of all possible false marking claims.
Neither party admits or denies the constitutionality of the false marking statute.

Continue Reading False Patent Marking: Filed Settlement Agreement

As I mentioned here, I recently gave a presentation for the National Constitution Center on settlement agreement best practices. I focused on the important principles of: knowing your client’s and opponent’s needs; generating trust between the parties during the negotiation and through any ongoing responsibilities pursuant to the agreement; bringing in experts on various topics; and making sure that your agreement and its terms had buy in from all relevant client stakeholders (not just legal, but accounting, media relations, tax and the appropriate C-level or business executives. You can see a copy of the slides here.
Mike Graham, the Seattle Trademark Lawyer, is presenting soon on a related topic, except he is looking at planning ahead for potential litigation in trademark licensing. It promises to be a very interesting presentation based on Graham’s initial notes — click here to read them. Just as litigators do well to bring in licensing experts to finalize settlement agreements, licensing attorneys do well to have a litigator’s perspective on their agreements.
[UPDATE:] I just learned that Seattle Trademark Lawyer (the blog, not Graham) turned two yesterday — click here to read Graham’s birthday post. Congratulations Mike. Two years of top quality content, and going strong. I started this blog a few months before Graham started STL. It is nice to see my contemporaries succeeding.

Continue Reading IP Licensing Best Practices

This Thursday, November 20 at noon central time, I am presenting a one hour program audio conference on drafting and negotiating effective settlements. The program is not IP-specific, but will be very useful for IP lawyers and litigants, as well as general commercial litigators. I will focus on knowing your needs and those of your opponents, using relationship building to create an effective agreement built for long-term success, and tips for writing long-lasting, realistic agreements that fit the needs of the parties and the realities of their business operations. Click here to read more about the presentation, and here to register for it. The program’s costs $199, although I understand you can invite as many people from your firm as you would like to participate on the call.
The program is being put on by the National Constitution Center, which hosts a regular series of CLE programs. For example, on Tuesday, November 25, the NCC is hosting a program entitled IP Issues In Business Transactions: What Every Lawyer Needs To Know. That program will be presented by Brian Kelly, a California-based IP licensing partner of Manatt, Phelps & Phillips.

Continue Reading CLE: Drafting & Negotiating Effective Settlement Agreements

Strom v. Strom Closures, Inc., No. 06 C 7051, 2008 WL 489363 (N.D. Ill. Feb. 20, 2008) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan granted plaintiff Victoria Strom’s (“Strom”) motion to dismiss defendants’ (collectively “SCI”) counterclaims. SCI filed an earlier suit charging Strom with patent infringement. The parties settled that suit pursuant to a Settlement Agreement (“Agreement”). SCI alleged that Strom breached the Agreement and was once again, therefore, infringing SCI’s patents. But the Court held that once a district court dismisses a case with prejudice, it cannot reopen the case for enforcement of a related agreement without independent jurisdiction. SCI’s appropriate claim was for breach of the Agreement, not patent infringement. Because breach of the Agreement was a state law claim and because there was no diversity (SCI pled that all parties were Illinois residents), the Court lacked jurisdiction. Finally, the Court held that there was not supplemental jurisdiction based upon Strom’s federal employment claims. Strom’s claims and the breach of the Agreement were not sufficiently related.

Continue Reading Breached Settlement Does Not Create Patent Jurisdiction

Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2728754 (N.D. Ill. Sep. 13, 2007) (Guzman, J.).
Judge Guzman conducted a Fed. R. Civ. P. 72 de novo review of Magistrate Judge Cole’s report which recommended that the Court hold defendant in contempt for violating the Court’s permanent injunction limiting defendant’s use of plaintiff’s Coilcraft mark (click here for further discussion in the Blog’s archive). The Court adopted Judge Cole’s Report in its entirety and gave plaintiff fourteen days to submit a proposed order and proof of its attorneys’ fees and costs related to this motion. The Court also held that Judge Cole was not required to hold an evidentiary hearing before issuing the Report because there were no genuine issues of material fact. The dispute was governed by the language of the Court’s injunction which was not disputed. And the only issue was whether defendant’s advertisements, the contents of which were not disputed, violated the injunction – a matter of law.

Continue Reading Evidentiary Hearing Not Required for Contempt Ruling Based Upon Undisputed Facts

Sitrick v. Freehand Sys., Inc., No. 02 C 1568, 2007 WL 2298362 (N.D. Ill. Aug. 3, 2007) (Guzman, J.).
Judge Guzman denied plaintiff’s motion to amend the Court’s final order dismissing plaintiff’s patent infringement case with prejudice pursuant to Fed. R. Civ. P. 41(a)(1). Plaintiff sought to amend the order to include the terms of the parties’ settlement agreement because in Lynch v. SamataMason, Inc., 279 F.3d 487, 489 (7th Cir. 2006), the Seventh Circuit held that a court only maintains ancillary jurisdiction to enforce settlement agreements if the dismissal order contains (not just by incorporation) the terms of the agreement. But the Court denied the motion for two reasons. First, the Court’s original order was a nullity because it was issued after the parties filed their unconditional stipulation of dismissal pursuant to Fed. R. Civ. P. 41(a)(1) which immediately ended the Court’s jurisdiction. Second, because the amendment was not clerical, sought within one year of entry of the order or otherwise justified, Fed. R. Civ. P. 60 prevented the Court from amending the order.

Continue Reading Court Cannot Amend Its Final Order