Envirogen Techs., Inc. v. Maxim Construction Corp., No. 14 C 2090, Slip Op. (N.D. Ill. Nov. 18, 2015) (Zagel, J.).

Judge Zagel denied defendant City of Crystal Lake’s Fed. R. Civ. P. 12(b)(6) motion to dismiss pursuant to the Colorado River doctrine in this patent and breach of contract case.

The Court considered the

Galvin v. Ill. Republican Party, No. 14 C 10490, Slip Op. (N.D. Ill. Oct. 20, 2015) (Zagel, J.).

Judge Zagel dismissed plaintiff’s remaining state law claims for appropriation of image, false light, defamation and civil conspiracy for lack of supplemental jurisdiction. The Court had already dismissed plaintiffs’ copyright claims, and the parties had dismissed

O.A. Cargo, Inc. v. OA Cargo Chicago, No. 12 C 5763, Slip OP. (N.D. Ill. Mar. 13, 2014) (Zagel, J.).

Judge Zagel awarded damages in this Lanham Act case after he and Judge Conlon entered default judgment against the defendants.

Pursuant to its “considerable discretion” to award damages based upon a default judgment, the

Dental USA, Inc. v. McClellan, No. 13 C 260, Slip OP. (N.D. Ill. Aug. 16, 2013) (Zagel, J.).

Judge Zagel granted in part plaintiff Dental USA’s motion for a temporary restraining order and injunction in this trademark and design patent infringement case.  Dental USA had a trademark for DENTAL USA, as well as POWER

Heathcote Holdings Corp., Inc. v. Suncast Corp., No. 11 C 1010, Slip Op. (N.D. Ill. Jul. 25, 2012) (Zagel, J.).

Judge Zagel held that the America Invents Act (“AIA”) provisions limiting false patent marking standing to persons that suffered a competitive injury, even in ongoing cases, was not an unconstitutional taking.  Defendant allegedly marked

llinois Corporation Research LLC v. Best Buy Stores, L.P., No. 10 C 4298 Slip. Op. (N.D. Ill. Sep. 12, 2011) (Zagel, J.).
Judge Zagel denied plaintiff Illinois Computer Research’s (“ICR”) motion to reconsider the Court’s opinion granting summary judgment in this patent case for the following reasons:
· ICR’s argument that defendant Best Buy’s agreement was based upon an improper definition of “affiliate” was improper for reconsideration because it was a new argument;
· ICR’s argument that Singapore law controlled was also new and, therefore, improper.

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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.

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Illinois Computer Research, LLC v. Best Buy Stores, L.P., No. 10 C 4298, Slip Op. (N.D. Ill. Jun. 29, 2011) (Zagel, J.).
Judge Zagel granted defendants (collectively “Best Buy”) summary judgment that its Rocketfish sound cards were already licensed because they were designed and manufactured by license from Creative Products (“Creative”) for Best Buy.
First, Best Buy’s vendor Ectiva was an Affiliate of Creative. Best Buy’s documents showed a clear relationship between the parties. The fact that Best Buy’s evidence was only authenticated by counsel’s declaration did not prevent considering the evidence for several reasons:
FRE 902(3) allows the Court discretion to consider certain evidence that had not been finally authenticated.
Plaintiff offered no evidence or even argument that the documents were fraudulent or otherwise amendable.
Best Buy ultimately produced certified copies of the evidence.
The Court also held that the Rockefish sound cards were Creative products. The Court already held that Ectiva was an Affiliate of Creative, and plaintiff did not dispute that the soundcards were manufactured for Creative and its affiliates, including Ectiva.
Finally, Creative was not acting as a foundry for Best Buy. Best Buy’s uncontroverted declarations established that Creative, not Best Buy, designed the soundcards.

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