Tracking Northern District of Illinois IP Cases
LimeCoral, Ltd. v. CareerBuilder, LLC, No. 15 C 7484, Slip Op. (N.D. Ill. Mar. 9, 2017) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan granted defendant CareerBuilder’s Fed. R. Civ. P. 56 motion for summary judgment as to plaintiff LimeCoral’s copyright, breach of contract and unjust enrichment claims. The Court also denied LimeCoral’s Rule 56 motion for partial…
Memorylink Corp. v. Motorola, Inc., No. 08 C 3301, Slip Op. (N.D. Ill. Oct. 15, 2009) (Hibbler, J.)
Judge Hibbler granted in part plaintiff Memorylink’s motion for reconsideration of the Court’s earlier opinion dismissing seventeen of Memorylink’s nineteen claims.
Correction of Inventorship
The Court previously held that Memorylink pled itself out of court because its complaint indicated that Memorylink was silent when Motorola gave Memorylink the opportunity to object to inventorship of the patents. But upon reconsideration, the Court reversed its decision for two reasons. First, the pleadings did not show whether Memorylink reviewed or approved the patent application. Second, the patent statute allowed for correction based upon mistake. It was possible Memorylink reviewed the application; but made a mistake regarding inventorship.
Statutes of Limitation
The Court held that it was correct in dismissing Memorylink’s claim based upon Motorola’s legal representation of Memorylink because Memorylink knew of its claims prior to the legal representation. One dismissed claim, however, was not based upon the legal representation. The Court treated Memorylink’s claim that the assignment at issue was void as a fraud claim. But the Court held that the claim sounded in contract, not fraud. Because the contract statute of limitation had not run, that claim was reinstated.
Patent Infringement
Because Memorylink’s contract claim could void the patent assignment, the Court reinstituted the related patent infringement claims which had been dismissed upon the basis that as a joint owner of the patents Motorola could not be liable for infringement. In the event that the assignment is held void, Motorola could be liable for infringement.
Unjust Enrichment
Motorola’s agreement that the memoranda of understanding at issue in this claim did not create any legal obligations did not change the Court’s determination that they created relevant legal obligations.
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Continue Reading Possible Mistake Allows Correction of Inventorship Claim to Survive
SPSS Inc. v. Nie, No. 08 C 66, Slip Op. (N.D. Ill. Aug. 19, 2009) (Darrah, J.).*
Judge Darrah granted plaintiff SPSS’s motion to strike defendants’ jury demand on their counterclaim. Defendants’ claims for an injunction and destruction of items bearing the trademark were equitable and, therefore, not triable by a jury. And defendants’ claim for attorney’s fees is also not triable by a jury.
The remaining claims for an accounting of SPSS’s profits and a trebling of actual damages could be legal claims warranting a jury trial, but defendants had repeatedly characterized their claims as equitable unjust enrichment claims. And defendants could not claim actual damages from a breach of contract claim because the license that governed the parties’ relationships was royalty-free. Defendants’ counterclaims were, therefore, equitable and not triable to a jury.
* Click here for more on this case in the Blog’s archives.
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Continue Reading Trademark Claims Sounding in Unjust Enrichment Not Entitled to a Trial by Jury
Cassetica Software, Inc. v. Computer Sciences Corp., No. 09 C 0003, Slip Op. (N.D. Ill. Jun. 18, 2009) (Kendall, J.).
Judge Kendall granted defendant CSC’s Fed. R. Civ. P. 12(b)(6) motion to dismiss. Plaintiff Cassetica asserted patent infringement, breach of contract, violation of the Computer Fraud and Abuse Act (“CFAA”), and related state law claims based upon CSC’s alleged continued use of Cassetica’s NotesMedic software after the end the parties’ contract for the software. The Court dismissed each claim as follows:
* Copyright Infringement: Cassetica’s copyright claim was dismissed because Cassetica could not recover its claimed statutory damages. Cassetica registered its copyright after CSC’s alleged infringement began. It did not matter that CSC’s alleged infringement allegedly continued after the registration.
* Breach of Contract: Because CSC’s alleged breach occurred after the contract terminated there was no longer a contract to be breached and, therefore, no claim.
* CFAA: There was no “damage” as defined by the CFAA. The CFAA defines damages as harm to a computer system’s data. But Cassetica alleged copying of electronic information, not that any of its data was lost or harmed. Otherwise, Cassetica only made bare allegations that its data was harmed without any factual statement.
* Other State Law Claims: Cassetica’s conversion, trespass to chattels and unjust enrichment claims were all preempted by the copyright law because each state law claim was based upon the alleged downloads of the NotesMedic software.
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Continue Reading Copyright Statutory Damages: Infringement Must Start After Registration
Polyad Co. v. Indopco Inc., No. 06 C 5732, 2008 WL 4287623 (N.D. Ill. Sep. 12, 2008) (Coar, J.).
Judge Coar granted defendant Indopco’s motion for summary judgment regarding plaintiff Polyad’s tortious interference and unjust enrichment claims. I do not normally deal with diversity cases based solely upon state law causes of action, but one of the alleged tortious interferences in this case was Indopco’s allegedly false statements that Polyad’s products may have infringed Indopco’s patents. But the Court held that the evidence only showed that Indopco only suggested that Polyad’s products “may” have infringed patents and suggested that the customer ask Polyad for assurances of noninfringement. Furthermore, Indopco was actually testing Polyad’s products to determine whether they infringed. Ultimately, Indopco’s tests were inconclusive and Indopco did not pursue a patent infringement case. But the possibility of infringement and Indopco’s inconclusive testing were sufficient for a grant of summary judgment in Indopco’s favor.
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Continue Reading Warning Customer of Competitor’s Potential Patent Infringement Not Tortious Interference
Vulcan Gold, LLC v. Google, Inc., No. 07 C 3371, 2008 WL 2959951 (N.D. Ill. Jul. 31, 2008) (Manning, J.)
Judge Manning granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing plaintiffs’ RICO claims. The Court previously dismissed plaintiffs’ complaint with leave to refile – click here to read the Blog’s post on that opinion. The Court held that plaintiffs did not sufficiently plead an enterprise. Plaintiffs only alleged that the defendants were contractually related within Google’s adsense program. And the alleged contractual relationship did not show consensual decisionmaking or joined purpose. Plaintiffs’ RICO claims were, therefore, dismissed.
The Court denied defendants’ motion to dismiss the unjust enrichment and civil conspiracy claims. Fed. R. Civ. P. 9(b) heightened pleading standards did not govern the claims because they were both based upon trademark infringement, not fraud.
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Continue Reading No Heightened Pleading for Trademark-Based Unjust Enrichment Claim
As promised last week, the jury instructions are now available — click here for a copy. Additionally, although the verdict form is not available electronically, the Court’s minute order (click here for a copy) gave some additional detail. The jury found for plaintiff RRK on each of eleven counts and awarded damages as follows:
Damages Award RRK’s Actual Losses $11,664,105
Sears’s Unjust Enrichment $1,688,136
Punitive Damages $8,011,344
Total Damages $21,363,585
For more on this case, click here for the Blog’s archives.
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Continue Reading RRK v. Sears: Jury Instructions
Vaughn v. Kelly, No. 06 C 6427, Slip Op. (N.D. Ill. Jul. 16, 2007) (Manning, J.).
Judge Manning denied defendant R. Kelly’s (“Kelly”) motion to dismiss plaintiff Vaughn’s case arguing that Vaughn’s state law claims were preempted by copyright law. The Court previously dismissed Vaughn’s motion to remand the case to state court, holding that his unjust enrichment claim sounded in copyright law and giving Vaughn time to amend his complaint to remove the copyright elements (you can read more about the case in the Blog’s archives). Kelly now moves to dismiss the amended complaint. As in the original complaint, Vaughn alleged that he introduced Kelly to stepping, taught him how to step, helped him write a stepping-based song entitled “Step in the Name of Love,” and collaborated with Kelly to develop a video for the song. The Court held that Vaughn’s unjust enrichment claim was preempted by copyright law, but granted Vaughn leave to refile the claim as one for copyright infringement. The Court refused to consider Vaughn’s proposed amended unjust enrichment claim because Vaughn failed to amend the unjust enrichment claim when the Court first offered Vaughn a chance to amend and because it is improper to consider amendments as part of a motion to dismiss. The Court held that Vaughn’s breach of oral contract claim was not preempted by copyright law because it could be for less than co-ownership of the copyright, which would be preempted.
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Continue Reading Unjust Enrichment Claim is Preempted by Copyright Law
Abanco Int’l., Inc. v. Guestlogix Inc., __ F. Supp.2d __, 2007 WL 1492928 (N.D. Ill. May 21, 2007) (Bucklo, J.).
Judge Bucklo dismissed plaintiff’s conspiracy claim but not its unjust enrichment and tortious interference claims, holding that the former was preempted by the Illinois Trade Secret Act (“ITSA”). Plaintiff alleged that it entered a business relationship with defendant, supported by a confidentiality agreement (the “Agreement”). The parties were working together to supply airlines with electronic “buy-on-board” systems that would allow passengers to pay for drinks and other in-flight purchases with credit cards. Plaintiff alleged that, based upon the Agreement, it provided defendant confidential, trade secret information about its buy-on-board system (the “Abanco System”) and that with defendant’s support, plaintiff entered negotiations to provide the Abanco System to third party American Airlines. But after the parties’ relationship soured, American Airlines allegedly ended negotiations with plaintiff and entered an agreement with defendant for a buy-on-board system. Plaintiff then filed suit against defendant alleging trade secret misappropriation, breach of the Agreement, unjust enrichment, tortious interference and conspiracy. The Court held that plaintiff’s unjust enrichment and tortious interference claims were not preempted by ITSA because they were based upon information protected by the Agreement in addition to plaintiff’s alleged trade secrets.
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Continue Reading Conspiracy Claim Based Solely on Trade Secrets Preempted by ITSA
Stafford Trading, Inc. v. Lovely, No. 05 C 4868, 2007 WL 1512417 (N.D. Ill. May 21, 2007) (Coar, J.).
Judge Coar granted in part declaratory judgment plaintiffs’ (collectively “Stafford”) motion to dismiss and denied Stafford’s summary judgment motion. The Court dismissed defendants’ fraud and unjust enrichment counterclaims after holding that they were preempted by the Illinois Trade Secret Act. The Court also dismissed defendants’ fraudulent concealment. The material fact that Stafford allegedly failed to disclose was the opinion that Stafford owned the RIVAS electronic options trading platform outright. But the Court held that an allegedly withheld opinion could not support a fraudulent concealment claim.
The Court’s summary judgment decision turned largely upon whether RIVAS was a computer program protected by copyright or a “methodology” protected as a trade secret. The Court held that it had insufficient evidence to make the determination. Furthermore, neither party briefed the issue of what effect the copyright/methodology would have upon defendants’ alleged oral contract between the parties which allegedly made the parties co-owners of RIVAS. The Court denied summary judgment as to defendants’ breach of contract counterclaim because the existence of an oral contracts and its terms were both disputed facts. Finally, the Court denied summary judgment as to defendants’ trade secret counterclaim because, whether RIVAS was determined to be protected by copyright or trade secret, the parties disputed whether defendants employed sufficient means to protect RIVAS’s secrecy.
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Continue Reading Insufficient Facts to Determine Whether Computer Program was Protected by Copyright or Trade Secret
