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Chicago IP Litigation

Tracking Northern District of Illinois IP Cases

Nominations Open for N.D. Illinois Excellence in Pro Bono

Posted in Legal News

The Northern District and the Chicago Chapter of the Federal Bar Association are seeking nominations (by April 3, 2015) for attorneys who have provided outstanding pro bono and public interest representation in civil and criminal matters before the Northern District that are complete and no longer pending.  In the words of the Northern District:

The nominee should be someone who has demonstrated excellence in commitment to pro bono or public interest work by handling a matter in this District as a court-appointed attorney, pro bono attorney, or staff attorney for a not‑for‑profit agency, representing an indigent party in a civil or criminal matter.

Factors include:

  • dedication to pro bono or public interest work, outstanding achievement resulting from the representation of a large group of indigents;
  • successful representation in a difficult case;
  • outstanding negotiation and settlement skills in achieving a result without trial;
  • extraordinary number of hours committed to pro bono work; and
  • other distinguished performance.

Click here for the nomination form. Send your nominations via e-mail to: ProBono_ILND@ilnd.uscourts.gov.  For any questions contact:

Chambers of Chief Judge Ruben Castillo

2548 Dirksen Courthouse

219 South Dearborn Street

Chicago, Illinois 60604

Telephone: 312-435-5600

De Minimis Sales Create Specific Jurisdiction

Posted in Jurisdiction

Valtech, LLC v. 18th Ave. Toys, Ltd., No 14 C 134, Slip Op. (N.D. Ill. Feb. 12, 2015) (Kocoras, J.).

Judge Kocoras denied defendant’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction or to transfer to the E.D. New York — this Lanham Act trade dress case involving packaging for magnetic, plastic blocks.

Plaintiff did not allege general jurisdiction, only specific jurisdiction based upon sales of accrued products into Illinois.  The Court held as follows:

  • Although defendant’s sales to Illinois were “very minimal,” they still sold accused product in the state.
  • Defendants “aimed” their accused products at all fifty states via the Internet.
  • Illinois had a substantial interest in providing a forum for its residents, such as Valtech, to seek redress.
  • Defendants failed to show that the E.D. New York was clearly more convenient than the N.D. Illinois.
  • The public interest factors were neutral.

Estoppel Applies to Materially Similar Patent Claims

Posted in Pleading Requirements

Feit Elec. Co. v. Beacon Point Capital, LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Feb. 9, 2015) (Coleman, J.).

Judge Coleman granted in part declaratory judgment defendant Beacon Point Capital’s (“Beacon”) Fed. R. Civ. P. 12(b)(1) & (6) motion to dismiss plaintiff Feit’s declaratory judgment counts seeking a judgment that certain of Beacon’s patents regarding compact fluorescent lamps (“CFL”) are unenforceable based upon inequitable conduct and/or prosecution history estoppel and that Beacon is collaterally estopped from asserting Beacon’s ‘140 and ‘464 patent against Feit based upon an earlier case by prior patent owner Nilssen – there is much more on the Nilssen cases in the Blog’s archives.  The Court held as follows:

  • The Court limited Feit’s declaratory judgment claims to those that Feit’s complaint showed had been asserted by Beacon in various correspondence.
  • Collateral estoppel is not limited to just those claims at issue in a prior case, but rather to those claims and any claim without an element that materially alters the invalidity analysis. But Feit did not state that the challenged claims were not materially different until its brief opposing the instant motion. Because a brief may not amend a complaint, the Court dismissed the challenged claims.
  • Feit did not make a claim for prosecution history estoppel based upon delay because Feit did not plead how the delay was undue or prejudicial.

Having dismissed some or all of several claims, the Court gave Feit twenty-one days to amend its complaint.


Copyright Case Dismissed for Refiling in Canada

Posted in Jurisdiction

Halo Creative & Design Ltd. v. Comptoir Des Indes Inc., No. 14 C 8196, Slip Op. (N.D. Ill. Jan. 29, 2015) (Leinenweber, J.).

Judge Leinenweber granted defendants’ (a Canadian company and an individual Canadian citizen) motion to dismiss pursuant to forum non conveniens arguing that plaintiff’s (a Hong Kong entity) copyright infringement claims should be brought in Canada.

No party had a physical presence in Illinois.  And all parties were subject to jurisdiction in Canada, plaintiff because it would file the suit.  While plaintiff was seeking to enforce US copyrights, there was nothing preventing plaintiff from asserting similar rights in Canada, and the Canadian court would be free to enjoin export of the accused furniture to the US, to the extent that was warranted.  Additionally, Canada and US are both signatories to the Berne Convention, which requires that member countries extend IP rights granted to its citizens to foreign nationals.  Even if Canadian law was not identical to US law, Canada provided an avenue for redress, which was sufficient.

The Court also held that ease of access to evidence would be better in Canada because defendants’ records and witnesses were there and because some of the documents were expected to be in French, which the Canadian courts could read, but would require translation for the US court.

Finally, the public interest did not weigh against dismissing the complaint.  The Canadian courts were familiar with their IP laws.


Discovery Rule Applies to 7th Circuit Copyright Claims

Posted in Summary Judgment

Panoramic Stock Images, Ltd. v. McGraw-Hill Global Educ. Holdings, LLC, No. 12 C 9881, Slip Op. (N.D. Ill. Nov. 25, 2014) (Pallmeyer, J.).

Judge Pallmeyer denied defendant McGraw-Hill’s motion for summary judgment regarding a statute of limitations and granted in part plaintiff Panoramic Images’ motion for summary judgment of copyright infringement in this case regarding Panoramic Images’ stock photos that McGraw-Hill used in certain textbooks.

After noting that this case was one of many involving copyright infringement claims for overuse or improper use of stock photos, the Court held as follows:

  • Applying the discovery rule because the Seventh Circuit had not expressly adopted the injury rule over the discovery rule, the Court held there was a question of fact as to when Panoramic Images discovered the copyright infringement. McGraw-Hill alleged that Panoramic Images learned of the infringement no later than November 2009 when its president read a story regarding unauthorized use of stock photographs by publishers. But Panoramic Images argued that it did not learn of the infringement until October 2012 when a publisher contacted Panoramic Images regarding potential overuse of its stock photos.
  • While Panoramic Images may have been placed on inquiry notice in 2009, the discovery rule required actual or constructive notice, not just inquiry notice.
  • The Court granted Panoramic Images summary judgment of copyright ownership as to each photograph registered in the name of the photographer because McGraw-Hill did not dispute ownership. For those photos that were allegedly registered using a nom de plume, there was a question of fact as to ownership.
  • The Court granted Panoramic Images summary judgment of copyright infringement as to each image that McGraw-Hill did not challenge its infringement based upon use beyond its contractual rights.
  • The Court denied copyright infringement as to those titles which McGraw-Hill challenged its alleged overuse by digital distribution. Panoramic Images’ allegations regarding different images were conflicting. Furthermore, the Court lacked sufficient evidence to determine whether McGraw-Hill’s use exceeded its contractual rights.
  • The Court denied Panoramic Images summary judgment as to McGraw-Hill’s laches defense for the same reasons as it denied McGraw-Hill summary judgment as to the statute of limitation.
  • The Court reserved ruling upon McGraw-Hill’s standing and sufficiency-of-copyright assignment defenses.

Generic Computer System Not Made Patentable by Connection to Other Programs

Posted in Federal Rules

Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, No. 13 C 4417, Slip Op. (N.D. Ill. Jan. 29, 2015) (Hart, Sen. J.).

Judge Hart granted defendants’ Mercedes-Benz USA’s and Daimler’s Fed. R. Civ. P. 12(c) motion to dismiss plaintiff Vehicle Intelligence & Safety’s (“VIS”) patent claims as unenforceable because they were patent ineligible pursuant to 35 U.S.C. § 101 in this patent case involving automotive safety systems.

Following the two-prong analysis set forth in Mayo and further refined in Alice, the Court first held that the asserted claims covered abstract ideas – testing operators of moving vehicles for physical or mental impairment.  The Court reasoned that testing for impairment could be performed entirely within the human mind.

The Court then turned to whether the asserted claims set forth an inventive concept sufficient to make the claims patent eligible.  The key claim element for each asserted claim required “expert system(s)” – a class of computer programs designed to mimic human decision-making.  The Court reasoned that the expert systems were “generic computer automation” that did not amount to an inventive concept.  Importantly, the claims did not require that the expert system be programed in any specific way to perform its various functions.

Claims requiring that the expert systems use one or more of various modules did not rise to the level of an inventive concept at least because it did not specify how the expert system was required to use any of the modules.

Failure to Make Arguments to Magistrate Requires Reversal of Recomendation

Posted in Damages, Discovery

Velocity Patent, LLC v. Audi of Am., Inc., No. 13 C 8418, Slip Op. (N.D. Ill. Dec. 11, 2014) (Darrah, J.).

Judge Darrah held that Judge Mason’s discovery report and recommendation was clearly erroneous, and ordered past damages discovery be produced going back six years before the complaint filing in this patent case.  Judge Mason recommended limiting damages discovery to the date of the complaint forward, but his recommendation was clearly erroneous because neither party advanced its respective patent marking argument before Judge Mason.  In light of that and based upon Velocity Patent’s claim that neither it nor its predecessors made a product that could have been marked, it need not plead marking, the Court ordered past damages discovery include the period six years before filing of the complaint.

Clarified Claim Construction Precludes Summary Judgment

Posted in Claim Construction, Summary Judgment

Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill. Dec. 22, 2014) (Coleman, J.).

Judge Coleman denied defendants’ (collectively “CQG” motion for summary judgment of noninfringement in this patent case involving futures trading software.  For more on plaintiff Trading Technologies’ (“TT”) various cases, click here.

CQG argued that TT could not meet its burden of proving infringement because TT did not identify a manual recentering command in CQG’s accused products.  The Court previously adopted Judge Moran’s claim construction of “static display of prices” which had been affirmed by the Federal Circuit:

[A] display of prices comprising price levels that do not change positions unless a manual re-centering command is received.

The Court then clarified its construction of “static”:

The proper construction of the term “static” is that price levels will not change unless a manual re-centering or repositioning command is entered.  [(Dkt. 826 at 3)].  This means that “static” excludes automatic re-centering and repositioning, but includes systems where the prices never move or [are] repositioned or recentered by manual command.

Based upon the clarification, “static” did not require a manual re-centering command.  Because a manual re-centering command is not required by the claims, the absence of the command alone did not warrant summary judgment.  The Court also denied TT’s request for attorney’s fees for responding to the motion.

Court Requires Document Production be Accompanied by an Affidavit Explaining the Search Process

Posted in Discovery

Fantasia Distrib., Inc. v. Rand Wholesale, Inc., No. 14 C 1546, Slip Op. (N.D. Ill. Dec. 2, 2014) (Chang, J.).

Judge Chang ruled upon the following discovery disputes in this case regarding alleged counterfeit sales of ehookah products:

  • Defendant Rand was to conduct a “reasonable” search for exchanges of returned products having plaintiff Fantasia’s Fantasia label and provide a sworn affidavit how the relevant records are generated and maintained, stating that the records were searched and describing the search, and supplying any results of the search.
  • Rand had sufficiently produced sales summaries and underlying documents, although the parties were to work together if any unreadable PDFs were identified.
  • Fantasia’s interrogatory was overbroad.  Fantasia could not ask for “basically every record of any kind that Defendant has on any e-hookah” based upon suspicions generated from a separate case that did not involve Rand.

Court Appoints Counsel in IP Case

Posted in Local Rules

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

Judge Shadur appointed defendant counsel from the N.D. Illinois trial bar with experience in IP cases, after finding that defendant’s In Forma Pauperis Application sufficiently showed defendant’s inability to pay counsel; that both parties and the Court would benefit from the representation; and that defendant had made appropriate, albeit unsuccessful, efforts to retain counsel. 

Having appointed counsel, the Court ordered counsel to review plaintiff’s complaint and then file a responsive pleading within approximately three weeks.