TheBrain Techs. LP v. AnyLogic N.A., LLC, No. 17 C 6574, Slip Op. (N.D. Ill. Mar. 4, 2019) (Coleman, J.).

Judge Coleman granted defendant’s Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject-matter jurisdiction in this patent infringement case involving graphical representations of information.

The assignment chain of the patent-in-suit did

Apotex, Inc. v. Daiichi Sankyo, Inc., No. 12 C 9295 & 15 C 3695, Slip Op. (N.D. Ill. Jan. 8, 2016) (Coleman, J.).

Judge Coleman granted plaintiff Apotex’s motion for summary judgment of noninfringement in this ANDA patent case seeking to manufacture and sell generic version of Benicar and Benicar HCT.

As an initial

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

Simonian v. The Quigley Corp., No. 10 C 1259, Slip Op. (N.D. Ill. Jul. 19, 2010) (Lindberg, Sen. J.).
Judge Lindberg granted defendant The Quigley Corp.’s (“Quigley’s”) motion to dismiss plaintiff Simonian’s false patent marking case for lack of standing. Simonian’s case was the second filed against Quigley regarding the identical allegedly false patent marking of its COLD-EEZE branded products. Noting a lack of controlling case law, the Court analogized to the False Claims Act and held, citing a 1941 New York state case, that a second false marking plaintiff lacks standing to bring suit.

Continue Reading Second False Patent Marking Plaintiff Lacks Standing

Simonian v. Irwin Indus. Tool Co., No. 10 C 1260, Slip Op. (N.D. Ill. Aug. 27, 2010) (Lindberg, Sen. J.).
Judge Lindberg denied defendant Irwin Industrial Tool’s (“Irwin”) motion to dismiss plaintiff Simonian’s false patent marking case. First, the Court denied Irwin’s standing arguments. While the Federal Circuit had not yet issued its Stauffer decision regarding standing, the Court used similar reasoning. The Court analogized to the False Claims Act and held that any person had standing without proof of an injury in fact. The false marking injury is to the government and the public at large.
The Court also held that Simonian sufficiently pled the requisite intent to deceive, whether notice pleading or Fed. R. Civ. P. 9(b) standards applied. Simonian pled that Irwin was a “sophisticated company” with years of patent experience and that Irwin knew or should have known the patent was expired when it was marked.

Continue Reading Any Person Has Standing to Bring False Patent Marking Claim

Simonian v. Bunn-O-Matic Corp., No. 10 C 1203, Slip Op. (N.D. Ill. Aug. 23, 2010) (Zagel, J.).
Judge Zagel stayed plaintiff Simonian’s false patent marking case pending the Federal Circuit’s standing decision in Stauffer – which has since issued, holding that any person has standing without regard to injury in fact.
The Court also indicated that, once the stay was lifted, it would deny defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss Simonian’s complaint for failure to adequately plead intent to deceive pursuant to Fed. R. Civ. P. 9(b). Simonian pled that defendant knowingly marked its coffeemakers with expired patents. That was sufficient to meet the rebuttable presumption of intent as set out in Solo Cup. It did not matter that Simonian’s claims were generic as evidenced by the use of nearly identical allegations in more than forty false patent marking cases Simonian had filed in the Northern District of Illinois.

Continue Reading Marking With Expired Patent Sufficient for Pleading Intent

MacLean-Fogg Co. v. Edge Composites, L.L.C., No. 08 C 6367, Slip Op. (N.D. Ill. Apr. 14, 2009) (Conlon, J.).
Judge Conlon granted defendants’ motion to dismiss. Plaintiffs (collectively “MacLean”) alleged that defendant Edge Composites (“Edge”) violated plaintiffs’ carbon fiber bicycle wheel patent and together with the individual defendant, a former MacLean employee and current Edge employee, violated MacLean’s trade secrets, as well as breaching the individual defendant’s nondisclosure agreement with MacLean. First, the Court held that the MacLean entities that lacked an ownership in the patent when the complaint was filed lacked standing. It was not sufficient that the MacLean entities entered an agreement creating joint ownership amongst them after the complaint was filed.
The Court also held that it lacked supplemental jurisdiction over MacLean’s state law trade secret and breach of contract claims. The patent infringement claims were based upon manufacture and sale of carbon fiber wheels. The trade secret and breach of contract claims were based upon defendants’ alleged use of MacLean’s trade secrets. Because MacLean never met its burdens of showing how the claims overlapped factually, the Court dismissed the state law claims for lack of subject matter jurisdiction.
The Court also held that it lacked personal jurisdiction over the individual defendant because MacLean did not respond to that part of defendants’ summary judgment argument. The Court also held that it lacked personal jurisdiction over Edge. Edge was not registered to do business in Illinois, had no facilities in Illinois, had no assets in Illinois, did not advertise in Illinois, and did not do business with Illinois residents. The only Illinois sales MacLean proved were by its representatives for purposes of this suit. And Edge’s website did not allow viewers to purchase products.
Finally, the Court dismissed MacLean’s trade secret claim for failure to state a claim. MacLean’s trade secret misappropriation allegations were all made on information and belief. The Court held that information and belief alone was not enough, unless the facts were inaccessible to MacLean and MacLean had a reasonable basis to believe the facts were true. Because MacLean did not provide any grounds for its suspicion, information and belief was not sufficient.

Continue Reading Post-Filing Patent Assignement Cannot Create Standing

Heriot v. Byrne, No. 08 C 2272, Slip Op. (N.D. Ill., Jul. 21, 2008) (Conlon, J.).
Judge Conlon denied defendants’ motion to dismiss plaintiffs’ copyright and related state law claims based upon forum non conveniens, Colorado River abstention, and for lack of standing. Plaintiffs alleged that they were co-owners of defendants’ copyrights in the popular books and movies associated with The Secret, a self-help program. Defendants previously filed a suit in Australia seeking a declaratory judgment that defendants owned the copyright in The Secret.
Forum Non Conveniens
The Court held that the Australian Court would not be able to resolve US copyright ownership, and, therefore, was not an adequate forum. Furthermore, much of the evidence for plaintiffs’ unjust enrichment and equitable accounting claims was located in the US, as were the key witnesses.
Colorado River Abstention
Although both suits focused on the same works, the Australian case did not include and would not resolve plaintiffs’ equitable claims for unjust enrichment and the equitable accounting. Because the Australian case would not resolve all issues in the US case, abstention was no appropriate.
The Court held that plaintiffs had standing to make its copyright claims because plaintiffs alleged copyright ownership in their complaint.

Continue Reading Abstention Not Appropriate Because Foreign Action Does Not Address All US Issues

Hyperquest, Inc. v. N’Site Solutions, Inc., et al., No. 08 C 483, __ F. Supp. 2d __, 2008 WL 2446206 (N.D. Ill. Jun. 18, 2008) (Shadur, Sen. J.)
Judge Shadur granted defendants’ motion for attorney’s fees pursuant to 17 U.S.C. § 505, after previously dismissing plaintiffs’ copyright claims for lack of standing – click here for the Blog’s post about that opinion. Plaintiff agreed that defendants were not § 505 “prevailing parties” because the case was dismissed for lack of subject matter jurisdiction. But the Court explained that its opinion and the parties’ underlying briefs used imprecise language, citing an Abraham Lincoln pearl of wisdom:
If you call a tail a leg, how many legs has a dog? Five? No, calling a tail a let don’t make it a leg.
The case was not dismissed for lack of a properly registered copyright (subject matter jurisdiction), but because plaintiff lacked sufficient right to assert the copyright (standing). Because the case was dismissed with prejudice for lack of standing, defendants were prevailing parties and an attorney’s fee award was warranted.

Continue Reading Attorney’s Fees Awarded After Dismissal for Lack of Standing