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Chicago IP Litigation

Tracking Northern District of Illinois IP Cases

Prior Art Declarations are Recoverable Costs

Posted in Trial

Chicago Board Options Exchange, Inc. v. Int’l Secs. Exchange, Inc., No. 07 C 623, Slip Op. (N.D. Ill. Jan. 14, 2014) (Shadur, J.).

Judge Lefkow ruled upon plaintiff CBOE’s bill of costs after the Court entered final judgment for CBOE in this patent case.  The Court held as follows:

  • The Court held that $55 was a reasonable cost for effecting services.
  • For the depositions that it arranged, CBOE could recover the maximum rate for the relevant time – $3.65/page and $.90/page for a copy.
  • For depositions arranged by defendant ISE, CBOE would recover its actual costs because CBOE had no control over the price.
  • CBOE could not recover fees for expedited transcripts absent evidence of immediate deadlines.
  • Delivery costs of transcripts were not recoverable because they were solely for CBOE’s convenience.
  • CBOE could only recover both transcript and video costs for its witnesses used at trial. CBOE could recover both costs for ISE’s witnesses because CBOE had to get videos for each of ISE’s witnesses.
  • The Court allowed transcript costs for Court hearings.
  • The Court awarded copying costs, but not time of personnel involved in copying or document creation/preparation, except to the extent that the time was clearly tied to documents that were reimbursable.
  • CBOE could recover deposition synchronization costs only for depositions that were used or may have been used at trial.
  • CBOE could recover e-discovery costs including conversion costs and bates stamping costs.
  • Costs for creating a litigation database were not recoverable.
  • Costs for obtaining official patents were reimbursable.
  • Costs for obtaining declarations regarding prior art were necessary for trial and, therefore, were recoverable.

In Forma Pauperis Application Granted

Posted in Local Rules

Vogue Tyre & Rubber Co. v. Mendez, No. 14 C 5839, Slip Op. (N.D. Ill. Oct. 1, 2014) (Shadur, J.).

Judge Shadur granted defendant’s In Forma Pauperis Application in this Lanham Act case because the application showed that defendant qualified financially, had been unsuccessful in retaining counsel, and a pro bono appointment would benefit all parties and the Court.

Agreed Trademark Transfer Estops Lanham Act Claims

Posted in Pleading Requirements

Hyson USA, Inc. v. Hyson 2U, Ltd., No. 14 C 4320, Slip Op. (N.D. Ill. Oct. 2, 2014) (Shadur, J.).

Judge Shadur granted defendants’ Fed. R. Civ. P. 12(b)(6) motions to dismiss plaintiffs’ Lanham Act claims.  Plaintiffs’ complaint acknowledged that defendants had lawfully obtained plaintiffs’ trademarks when plaintiff’s business fell on hard times.  In light of that, plaintiffs’ Lanham Act claims were barred by estoppel.

Actual Confusion Requires Sufficient Detail to Evaluate

Posted in Trial

Bedrock Mgt., Inc. v. Peoples Choice Ent., Inc., No. 14 C 6624, Slip Op. (N.D. Ill. Oct. 6, 2014) (Wood, J.).

Judge Wood granted plaintiff Bedrock Management (“Bedrock”) a preliminary injunction (“PI”) preventing defendants (collectively “PCE”) from using their “ROC VEGAS” mark for video poker games based upon Bedrock’s ROCK VEGAS mark.

The Court held the following:

  • The fact that Bedrock uses ROCK VEGAS as part of a longer slogan as well as a stand-alone mark, does not render it unprotectable.
  • ROCK VEGAS was arbitrary and therefore, protectable without showing secondary meaning.
  • The Court found no proof of passing off, but an “extremely small number” of cases of actual confusion. But the examples of actual confusion lacked the detail necessary to assess their credibility.
  • There was evidence that the parties’ markets overlapped.
  • Considering the above with the similarity of the marks and the similarity of the parties’ businesses, Bedrock had shown a likelihood of success on the merits.
  • The Court presumed Bedrock’s irreparable harm.
  • PCE did not testify that a PI would harm its business, beyond requiring printing of new brochures and ads.

Rejecting Claim Construction Agreements Does Not Warrant Reconsideration

Posted in Claim Construction

Cleversafe, Inc. v. Amplidata, Inc., No. 11 C 4890, Slip Op. (N.D. Ill. Oct. 9, 2014) (Lee, J.).

Judge Lee denied plaintiff Cleversafe’s motion to reconsider the Court’s claim construction in this case involving distributed data stored across multiple nodes.  Of particular note, the Court held as follows:

  • The Court did not consider arguments already advanced in the original claim construction papers.
  • The Court did not consider arguments that could have been made in the original claim construction papers.
  • Claim differentiation and ambiguous prosecution history estoppel arguments had already been advanced in the original proceedings.

Indirect Infringement May be Pled Without Detailed Allegations

Posted in Pleading Requirements

Marshall Feature Recognition, LLC v. Wendy’s Int’l, Inc., No. 14 C 865, Slip Op. (N.D. Ill. Mar. 4, 2015) (Coleman, J.). Judge Coleman denied Wendy’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Marshall Feature Recognition’s (“MFR”) patent complaint accusing QR codes.  The Court earlier denied MFR’s motion to amend its complaint to respond to arguments raised in Wendy’s motion because of MFR’s delay in responding to the motion and because the amendment would have prejudiced Wendy’s. MFR met the pleading requirements as demonstrated by Form 18, alleging that – that the Court has jurisdiction, that MFR owns the patent in suit by assignment, MFR claims that Wendy’s infringes by, among other things, directing others to use QR codes, that Wendy’s was aware of its infringement, and that MFR demands damages and an injunction. Wendy’s argued that it MFR had not, and could not, sufficiently plead infringement because Wendy’s did not make, use or sell the claimed feature recognition unit.  The Court held that MFR’s allegation that Wendy’s used the accused QR codes was sufficient to make a claim for testing or demonstration of the QR codes. Finally, while MFR’s indirect infringement allegations were not detailed, MFR sufficiently pled that Wendy’s knew of the patent in suit, and that Wendy’s induced others to use the QR codes in an infringing manner.

Temporary Restraining Order to Prevent Competing, Identical Sales

Posted in Pleading Requirements

Venus Labs., Inc. d/b/a Earth Friendly Prods. v. Vlahakis, No. 15 C 1617, Slip Op. (N.D. Ill. Mar. 5, 2015) (Blakey, J.). Judge Blakey granted plaintiff Venus Laboratories d/b/a Earth Friendly Products’ (“EFP”) motion for a temporary restraining order (“TRO”) and continued EFP’s request for a preliminary injunction (“PI”) in this Lanham Act dispute regarding the EARTHY trademark used in connection with cleaning products.  The parties dispute ownership of the trademark and the product line.  Individual defendant was employed by EFP and claims that he developed the mark and the products outside of his employment. The Court held as follows:

  • EFP was likely to succeed on its trademark ownership claim. EFP presented evidence of continuing sales beginning in 2013. Defendants evidence was less compelling and did not show any sales or other contract or agreement.
  • EFP was likely to succeed in showing a likelihood of confusion. The marks were identical, as were the products they were associated with. Additionally, the uses were intended to be concurrent and in the same region. There was also evidence of actual confusion.
  • The parties agreed that irreparable harm and lack of adequate remedies at law were presumed in trademark cases. And defendants did not present evidence that overcame the presumption.
  • The balance of the harms weighs in EFPs favor, in part because defendants were just beginning to attempt selling product.
  • The public had an interest in avoiding the likely confusion that would result from defendants’ continued activities.

Having granted a TRO, the Court ordered EFP to obtain a $50,000 bond, which reflected defendants’ potential lost sales and opportunities for the duration of the TRO.

Delay During Settlement Talks Not Prejudiced

Posted in Pleading Requirements

Avnet, Inc. v. Motio, Inc.., No 12 C 2100, Slip Op. (N.D. Ill. Jan. 30, 2015) (Lefkow, J.).

Judge Lefkow granted defendant Motio’s motion to amend its answer and counterclaim adding counterclaims and an affirmative defense regarding inequitable conduct and related antitrust claims.

As an initial matter, while Fed. R. Civ. P. 15 requires that courts liberally allow amendment, after the deadline to amend of right has passed, Fed. R. Civ. P. 16 allows courts to grant amendment only if the party can show good cause.  Motio had good cause because it could not have identified the alleged inequitable conduct until plaintiff produced the alleged evidence.  And Motion did not unduly delay seeking amendment.  Motio waited for at least a year, but the case was not stayed for settlement discussion during much of that year.

And defendants were prejudiced by not learning of the claims until late in discovery.  But given the seriousness of the claims, the prejudice was not undue.

Finally, neither the antitrust nor the inequitable conduct claims were futile.

Patent Application Publication Does Not Trigger Statute of Limitation at Pleadings Stage

Posted in Pleading Requirements

Ferris Mfg. Corp., v. Curaline, Inc., No 14 C 4663, Slip Op. (N.D. Ill. Jan. 21, 2015) (Tharp, J.).

Judge Tharp denied defendant’s (collectively “Curaline”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Ferris’ Lanham Act and related state law claims regarding DevraSorb wound care products.  The Court held as follows:

  • Ferris pled sufficient facts to avoid dismissal based upon the five and ten year statute of limitations. While Ferris pled that its first learned of the claims eleven years before filing suit. But Ferris also pled that Curaline misled Ferris during the relevant time and that Ferris reasonably relied upon various statements by Curaline.
  • While it did not preclude summary judgment at some point, the Court declined to dismiss the complaint at the pleading stage based upon constructive notice triggered by the publication of Curaline’s patent application.
  • Ferris’ confidential information which Curaline allegedly publicly disclosed and used in Curaline’s patent application need not rise to the level of trade secret in order to form a breach of fiduciary duty claim.
  • Ferris sufficiently pled its Lanham Act claim pursuant to Fed. R. Civ. P 9(b).  Ferris’ complaint cited Curaline’s website and marketing materials.


Patent Claims Dismissed on Rule 12(b)(6) for Non-Infringement

Posted in Pleading Requirements

Nalco Co. v. Chem-Mod, LLC, No 14 C 2510, Slip Op. (N.D. Ill. Feb. 4, 2015) (Darrah, J.).

Judge Darrah granted defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Nalco’s patent infringement regarding a method for reducing mercury emissions from coal gas by injecting a bromide compound into flue gas.

The Court held that Nalco sufficiently pled use, not just an offer to sell or a sale, of the patented method.  But Nalco did not plead a plausible infringement claim.  Nalco’s patent sought a method for treating flue gas during coal combustion.  But defendants accused Chem-Mod Solutions method involving injecting additives into coal pre-combustion.  Therefore, claim construction was not necessary to hold that Nalco had not pled direct infringement.  Because Nalco had not pled direct infringement, its indirect infringement claims also failed.  The Court granted Nalco thirty days to amend its complaint, if it could pursuant to Fed. R. Civ. P. 11.