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Se-Kure Controls, Inc. v. Vanguard Prods. Group, Inc., No. 02 C 3767, Slip Op. (N.D. Ill. Jul. 5, 2012) (Castillo, J.).

Judge Castillo awarded costs as to each party in this patent infringement action after the Federal Circuit affirmed Judge Anderson’s entry of judgment in favor of defendants.  The Court awarded defendants costs and …

Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 9845, Slip. Op. (N.D. Ill. Sep. 18, 2009) (Guzman, J.)
Judge Guzman granted defendant’s motion for summary judgment of obviousness in this patent dispute regarding a retractable tether alarm system. The Court held that the asserted prior art ‘805 patent was analogous prior art based upon the Graham test. The inventor of the patent-in-suit was attempting to solve the problem of telephone wires “laying all over” in stores. And the ‘805 patent, to a retractable reel assembly for telephone wires would have been relevant to the inventory analysis. The Court also noted that prior art need not be in the same field to be analogous. The Court held that the ‘805 patent combined with the ‘098 patent’s alarm triggering and sensing system taught every element of the patent-in-suit for two reasons:
Plaintiff’s denial of defendant’s statement of material fact that the prior art ‘805 and ‘098 patents taught all elements was denied without citing any factual proof. Such a denial is equivalent to an admission.
A review of the ‘805 and ‘098 patents showed each element of the patent-in-suit, only a combination of the ‘098 patent’s alarm system with ‘805 patent’s the retractable reel was required.
The Court then held that combining the ‘805 patent’s retractable telephone cord reel with the ‘098 patent’s alarm triggering and sensing system rendered the patent-in-suit obvious. Plaintiff’s expert declaration stating that neither the prior art nor the security field generally evidenced any motivation to combine the prior art patents, did not persuade the Court. The expert’s statements were conclusory and KSR expressly stated that prior art need not be in the same field as the patent-in-suit.
Finally, plaintiff’s secondary consideration evidence regarding commercial success was not sufficient. Plaintiff offered no proof that its commercial success flowed from the merits of its invention.
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Continue Reading KSR Obviousness Does Not Require Prior Art from the Same Field

Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, Slip Op. (N.D. Ill. Jan. 9, 2009) (Cox, Mag. J.).*
Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony following the reasoning of a previous opinion in a related case about the same expert — click here to read about that opinion in the Blog’s archives. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.
* Click here for more on this case and related cases in the Blog’s archives. Also, note that the Court continues the progressive use of footnote citation.
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Continue Reading Patent Expert Allowed on Limited Subjects

Se-Kure Controls, Inc. v. Vanguard Prods. Group Inc., No. 02 C 3767, 2008 WL 169054 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*
Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.
* Click here for more on this case and related cases in the Blog’s archives. Also, note that this opinion also uses footnote citation.
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Continue Reading Patent Law Expert Allowed to Opine re Patent Office

Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*
Judge Cox granted in part a motion to compel discovery regarding defendant’s advice of counsel defense. The Court ordered defendants to product a technical witness that provided opinion counsel information because opinion counsel was unable to remember the substance of conversations between the two.
The Court also ordered production of communications between opinion counsel and trial counsel related to the patent in suit. These communications were within the scope of defendant’s waiver, even though a deposition of trial counsel would not have been allowed.
The Court did not allow plaintiff to take any additional fact depositions. Plaintiff argued it had waited to take certain fact depositions because the witnesses were expected to be Fed. R. Civ. P. 30(b)(6) designers regarding defendants’ willfulness defense. But the Court did not allow the deposition because fact discovery was closed and because plaintiff had deposed other witnesses on the same topics.
The most exciting part of this opinion, however, was its form, not its substance – Judge Cox used footnotes for cites. While this format is infinitely more readable and has many prominent advocates – Brian Garner, Ken Adams, me (perhaps not the most prominent but I am an advocate of footnote citation) – it is a bold move in the typically conservative realm of judicial writing. At least one other Northern District Judge, Chief Judge Holderman, has used footnote citation. If you are aware of other examples, let me know.
Thank you Judge Cox.
* Click here for more on this case and related cases in the Blog’s archives.
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Continue Reading Opinion Letter Discovery and Footnote Citation

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