The Northern District has the highest grant rate for stays pending Inter Partes Review (“IPR”), Covered Business Method Review (“CBM”) and Post-Grant Review (“PGR”) of any of the biggest patent districts nationwide – 72.7%.  According to Docket Navigator’s excellent data, through 2016 the Northern District fully granted 59.1% of stay motions and partially granted

Cascades Computer Innovations, LLC v. SK hynix, Inc., No. 11 C 4356, Slip Op. (N.D. Ill. May 25, 2012) (Lefkow, J.).

Judge Lefkow granted a sixteen month stay of this patent case pending defendants’ inter partes reexamination of the patent in suit.  The Court originally denied an unbounded stay.  But the Court held that

Genzyme Corp. v. Cobrek Pharms., Inc., No. 10 C 112 (N.D. Ill. Feb. 17, 2011) (Dow, J.).
Judge Dow used the Court’s inherent power to grant plaintiff Genzyme’s motion to stay the case pending the reexamination of Genzyme’s patent related to its pharmaceutical drug Hectorol. The Patent Office had already issued an Office Action rejecting all of Genzyme’s claims. The Court also noted that reexams were valuable, during the initial stages of a case, because they either remove an issue for trial, when claims are rejected, or focus the issue by providing the Court with the PTO’s expert view on the claim issues. The Court noted that in this case only limited discovery had occurred — no depositions had been taken — and a trial date had not been set. Finally, it was the Defendant that filed the reexamination request and then opposed the motion to stay. And to the extent that the delay created by a stay would harm the Defendant, that was mitigated by the fact that the case(s) had already been pending for three years.

Continue Reading ANDA Case Stayed Pending Reexam

ThermaPure, Inc. v. Temp-Air, Inc., No. 10 C 4724, Slip Op. (N.D. Ill. Dec. 22, 2010) (Lefkow, J.).
Judge Lefkow granted defendants’ RxHeat and Cambridge Engineering’s (collectively “Cambridge”) motion to dismiss or sever and Temp-Air’s motion to sever and transfer in this patent litigation involving the use of heat to remediate structures removing mold, bacteria, insects or rodents, among other things. Neither Cambridge nor Temp-Air were related to any of the other defendants. As such, their sales of different products could not satisfy the Fed. R. Civ. P. 20(a) joinder requirement that the claims arise out of the same transaction or occurrence. It was not enough that plaintiff accused that each defendant infringed the same patent. Furthermore, plaintiff never identified which specific products it accused of infringement, even during briefing of the instant motion. So, there was no way for the Court to determine how similar the accused products actually were. The Court, therefore severed Cambridge’s and Temp-Air’s cases.
The Court then transferred Temp-Air’s case. ThermaPure’s choice of forum was given little deference because it was neither party’s home district. The situs of material events was Minnesota, where ThermaPure is headquartered and conducts most of its business. The fact that ThermaPure sold accused products to Illinois customers was unavailing. Additionally, most of the documents were located in Minnesota. Temp-Air only identified party witnesses, which are given less consideration, that were located in Minnesota. But ThermaPure did not identify any Illinois witnesses.
Neither party argued that either district would resolve the claims faster, and ThermaPure’s citation to the Northern District’s Local Patent Rules for reducing costs and expenses of the litigation was not relevant. The Court, therefore, transferred Temp-Air’s case to Minnesota. And having transferred the case as to Temp-Air, the Court stayed ThermaPure’s case against Temp-Air’s alleged Illinois customer Gierstsen Illinois. That case could be reopened, as necessary, in the Northern District after Temp-Air’s case was resolved, as it should significantly narrow, if not resolve, the claims against Gierstsen Illinois.

Continue Reading Unrelated Companies’ Sales of Similar Products Do Not Warrant Joinder in Patent Cases

Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Sept. 18, 2009) (Dow, J.).
Judge Dow denied the parties’ cross-motions for summary judgment in this patent dispute regarding software for electronic futures trading using a static price axis.* Although the other related cases are stayed pending an appeal of the related eSpeed case to the Federal Circuit, declaratory judgment defendant Trading Technologies (“TT”) sought and Judge Moran agreed to allow this case to proceed based upon TT’s agreement that declaratory judgment plaintiff Rosenthal Collins Group (“RCG”) infringed even under the Court’s allegedly narrow construction of a “common static price axis” and “static display of prices.” TT sought to broaden the constructions on appeal. The parties agreed on how the accused Onyx software operated. The price axis was generally dynamic. But if a user pointed a cursor in the window containing the axis, the axis became static until the cursor was removed or after thirty seconds, whichever came first. TT identified this as Onyx’s order entry mode. And because Onyx has a static axis in order entry mode, TT argued that Onyx infringed based upon the order entry mode, even if it did not infringe in other modes. RCG argued that Onyx only had a single mode, and because the price axis was not consistently static, without manual recentering, there was no infringement. The Court held that whether Onyx operated in three modes and, therefore, infringed, or operated in a single mode and, therefore, did not was a question of fact. The case, therefore, was not appropriate for summary judgment.
The Court also stayed the case pending appeal of the eSpeed case, except for TT’s motion for default and sanctions.
* Click here for much more on this case and its related cases in the Blog’s archives.

Continue Reading Whether Software Operates in One or Three Modes is a Question of Fact

Trading Techs. Int’l., Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill. Feb. 17, 2009) (Moran, Sen. J.).
Judge Moran denied a motion to reconsider an earlier order continuing a summary judgment motion and staying the case pending the appeal of a related case, Trading Technologies v. eSpeed.* The Court also ordered the parties to meet and confer regarding how to exchange defendants’ sensitive trading information. The Court previously ordered defendants to work with plaintiff Trading Technologies (“TT”) to determine how to produce defendants’ raw transaction data, which was required for a damages calculation. The parties could not agree on how to exchange the information because of defendants’ unwillingness to provide such sensitive data to TT without restrictions. The Court ordered the parties to continue trying to resolve the issue and suggested various ways that the information could be exchanged without forcing defendants to provide all of their sensitive business information.
* Click here for much more on this case and the related cases in the Blog’s archives.

Continue Reading Trading Technologies v. eSpeed: Parties Ordered to Work Out Discovery Issues

Fellowes, Inc. v. Aurora Corp. of Am., No. 07 C 7237, Slip Op. (N.D. Ill. Feb. 10, 2009) (Kocoras, J.).
Judge Kocoras granted defendants’ motion to stay the litigation as to U.S. Patent No. 7,311,276 (“‘276 patent”) pending the ‘276 patent’s reexamination. The Court previously denied defendants’ motion to stay the case as to the two other patents in suit. But the Court granted a stay as to the ‘276 patent based upon the substantial new question of patentability identified by the Patent Office in granting the reexam. The Court acknowledged that defendants would be able to challenge the ‘276 patent’s validity after the reexam, but held that a stay would still reduce the burden of the litigation on all parties and the Court.

Continue Reading Stay Pending Reexam Granted as to One of Three Patents

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