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.
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.
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.
Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill.) (Coleman, J.).
Judge Coleman granted plaintiff Trading Technologies’ (“TT”) motion to terminate Markman proceedings in this patent case involving commodities trading software — click here for much more on this case in the Blog’s archives). Defendants (collectively “CQG”) sought construction of numerous terms, after having participated in the prior action brought against former defendant eSpeed which was ultimately appealed to the Federal Circuit. The Court held as follows:
- The Court declined to construe the “static limitation” terms. In the prior case, Judge Moran construed “static limitation” and that construction was reviewed by the Federal Circuit. Because the Federal Circuit decision was binding upon the Court and because CQG had fully participated in that proceeding, the Court would not further construe these terms.
- The Court also declined to construe the “manual re-centering” terms. These terms appear not in the claims, but in Judge Moran’s construction of the static limitation terms. The Court, therefore, declined to construe them for the same reasons that it would not further construe the static limitation terms.
- The Court declined to construe “single action” because it too had already been construed by the Federal Circuit.
Finally, the Court declined to construe “in response … to sending” because the term did not appear in the claims, but in the Federal Circuit’s construction of the claims. The constructions of claim terms do not warrant construction.
The Court also struck some, but not all, of the experts’ opinions based upon trader usage. Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill. Sep. 10, 2014) (Coleman, J.).
Judge Coleman granted in part and denied in part defendants’ (collectively “CQG”) motion to strike portions of plaintiff Trading Technologies’ (“TT”) expert reports that allegedly sought to introduce theories and analysis not contained in TT’s Final Infringement Contentions (“FIC”), which were tendered in November 2013.
For certain independent claims, TT failed to supplement its FIC with manual re-centering elements as required by the Federal Circuit’s and the Court’s claim constructions. It was not enough that dependent claims contained an identification of the manual re-centering elements in the accused products and that the “new” arguments for the independent claims were of the same scope. The Court, therefore, struck TT’s experts new opinions as to those limitations.
TT did, however, sufficiently disclose its argument regarding modifying .ini files, even though in its FIC it refers to changing .ini files instead of modifying them. The Court, therefore, denied the motion as to those theories.
TT did not sufficiently disclose its copying arguments related to willfulness. So, those arguments were struck. TT was, however, allowed to have its experts testify as to certain deficiencies in CQG’s noninfringement opinion letters, although not that the letters were a basis for willful infringement.
The Court struck TT’s doctrine of equivalents theory regarding disabling the Market Window because it was not disclosed in the FIC. TT’s argument regarding the state of the DOM Grid, however, was merely a refinement of an argument already in TT’s FIC. So, the arguments were allowed. The Court also struck an argument based upon the use of a ChartTrader and Price Hold features together because it was not sufficiently explained.
The Court also struck some, but not all, of the experts’ opinions based upon trader usage.
On March 5, 2014 from 5:30 to 7:30, the Intellectual Property Law Association of Chicago (IPLAC) is hosting its annual Federal Judicial Panel at the Chicago-Kent College of Law. Margaret Duncan of McDermott, Will & Emery will moderate a panel consisting of N.D. Illinois Judges Coleman, Darrah, and Kendall. The panel will discuss:
- N.D. Illinois 2013-2014 IP litigation trends
- The Supreme Court’s IP docket
- Patent Office litigation and its effect on district courts
- Electronic discovery
The panel costs $30 (members) or $35 (non-members). Register here.
DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 C 1531, Slip Op. (N.D. Ill. June 20, 2013) (Coleman, J.).
Judge Coleman awarded defendants (collectively “3D Systems”) approximately $140K in fees and costs as the prevailing party. Of particular note, the Court held as follows:
- The Court awarded witness fees for days testifying, but not days traveling.
- The Court awarded subsistence costs, up to the allowed $71/day.
- The Court awarded Bates-labeling costs, but not costs for confidentiality branding.
- 3D Systems was allowed to recover for two copies of each deposition exhibit, but not the full four that it made.
- 3D Systems was allowed to recover for three copies of summary judgment motions because 3D Systems had encountered trouble downloading multiple copies of its briefs.
- 3D Systems did not recover for rough drafts or ASCII versions of deposition transcripts.
- Video synchronization costs were not awarded because there were not sound or comprehension problems that required putting the text on the screen.
Malibu Media, LLC v. Reynolds, No. 12 C 6672, Slip Op. (N.D. Ill. Mar. 7, 2013) (Kendall, J.).
Judge Kendall: 1) denied defendant Doe 15’s motion to dismiss; 2) denied Doe 15’s motion to quash the subpoena of Doe 15’s internet provider; 3) granted Doe 15’s unopposed motion to remain anonymous; and 4) severed each of the 15 defendants, except for Doe 15 in this Bit Torrent copyright case. The Court leads off with a very good description of Bit Torrent and how a “swarm” operates. It is worth reading for anyone that is dealing with these cases.
Motion to Dismiss
The fact that plaintiff Malibu Media filed certain copyrights as works for hire, although Malibu Media was not yet formed when those works were made (and therefore they could not be works for hire) was a mistake that Malibu Media had already taken steps to correct, and it did not require dismissal of Malibu Media’s copyright claims.
Motion to Quash
Doe 15 did not have standing to oppose Malibu Media’s subpoena to Doe 15’s internet service provider, absent a privilege claim. But regardless of standing, Doe 15 had not made a showing that it would face an undue burden based upon the subpoena.
Motion to Proceed Anonymously
Malibu Media did not oppose Doe 15 remaining anonymous, at least through the close of discovery. And the Court agreed that allowing Doe 15 to proceed anonymously would prevent Malibu Media from forcing settlement based upon Doe 15’s potential embarrassment from being accused of illegally downloading pornography. The Court, therefore, allowed Doe 15 to proceed anonymously at least until dispositive motions were decided.
Motion to Sever
The Court held that in order to be joined in the same case, defendants need not just have been members of the same swarm — which can last weeks or months depending upon the members of the swarm. Instead, the defendants would have to have been members of the same swarm that downloaded the accused file at the same time. Because none of the defendants, which were all part of the same swarm, were part of the same swarm at the same time, the Court severed each of the defendants, except Doe 15. While the Court would normally retain the first defendant, in this instance the Court retained the last because it had decided several motions related to Doe 15.
Sage Prods, Inc. v. Primo, Inc., No. 12 C 3620, Slip Op. (N.D. Ill. Mar. 5, 2013) (Coleman, J.).
Judge Coleman granted defendant Primo’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trade dress case involving a boot designed to cushion and prevent heel ulcers. Primo did not avail itself of Illinois by soliciting sales in Illinois or regularly selling to Illinois customers. Primo did contract with a third party sales rep, but that rep only made calls to two Illinois customers after general conversations at a Las Vegas trade show. And neither Illinois entity returned the phone calls. And operating a website that was accessible in, but did not target, Illinois was not sufficient to create jurisdiction. Finally, Primo’s website was passive. It did not provide any forms for purchasing or the ability to directly purchase the accused boot.
Addiction & Detoxification Institute, LLC v. Rapid Drug Detox Center, No. 11 C 7992, Slip Op. (N.D. Ill. Mar. 11, 2013) (Coleman, J.).
Judge Coleman granted defendant Rapid Detox’s 28 U.S.C. § 1404(a) motion to transfer this patent infringement case to the Eastern District of Michigan. While Rapid Detox had a website and had patients from Illinois, the website did not specifically target Illinois residents and Rapid Detox’s treatments all occurred in Michigan. Furthermore, to the extent that patients became necessary witnesses, there was no reason plaintiff could not use Michigan patients instead of the Illinois patients that it identified in the motion papers.
Trading Techs. Int’l., v. CQG, No. 05 C 4811, Slip Op. (N.D. Ill. Oct. 31, 2012) (Coleman, J.).
Judge Coleman granted in part plaintiff Trading Technologies’ (“TT”) Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant CQG’s affirmative defenses and declaratory judgment counterclaim. The Court dismissed CQG’s bare-bones defenses which stated in their entirety:
- “Plaintiff’s claims are barred by the doctrines of estoppels, acquiescence, implied license, and/or unclean hands.”
- “Plaintiff is not entitled to any damages for the time period that it was not in compliance with the marking requirements under 35 U.S.C. § 287.”
The Court, however, gave CQG twenty-one days to amend the defenses to include sufficient factual support.
The Court denied TT’s motion to dismiss CQG’s declaratory judgment counterclaims as redundant. While some judges in the Northern District dismiss such claims, the Court held that CQG’s counterclaims would allow the Court to retain jurisdiction if TT dismissed its claims and, therefore, were not redundant.
Radiation Stabilization Sol’ns LLC v. Accuray Inc., No. 11 C 7700, Slip Op. (N.D. Ill. Aug. 21, 2012) (Coleman, J.).
Judge Coleman granted in part defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Radiation Stabilization Solutions’ (“RSS”) claims in this patent infringement suit regarding technology for stabilizing irradiated targets. While defendant Cancer Treatment Centers of America (“CTCA”) was not properly named because its corporate designation – Inc. – was not listed, there was no need to dismiss CTCA. Instead, RSS was given leave to amend identifying CTCA’s correct corporate form.
RSS sufficiently pled induced infringement by making statements at least as detailed as Form 18 to the Federal Rules regarding the alleged underlying direct infringement. The complaint need not identify a specific direct infringer. While RSS did not allege it gave defendants notice of the infringement, the complaint itself served as notice. Similarly, RSS’s claims of intent starting from the date of the complaint were sufficient.
The Court dismissed RSS’s contributory infringement claims without prejudice. While RSS’s similar claims of direct infringement and intent were sufficiently pled, RSS made no statement at all that defendants’ products did not have substantial non-infringing uses.
Addition & Detoxification Institute, LLC v. Rapid Drug Detox Center, No. 11 C 7992, Slip Op. (N.D. Ill. Oct. 11, 2012) (Coleman, J.).
Judge Coleman granted in part plaintiff ADI’s motion to compel limited jurisdictional discovery in this patent case. ADI’s requests were overly broad and the Court accepted defendant’s declarations, but the Court ordered that defendant respond to limited additional interrogatories:
- Identify customers by race and whether they reside in this district.
- Provide a general statement of defendant’s worth to demonstrate its ability or lack thereof to litigate in this district.
Flava Works, Inc. v. Terry, No. 12 C 1884, Slip Op. (N.D. Ill. Oct. 11, 2012) (Coleman, J.).
Judge Coleman granted defendant’s motion to transfer this copyright and trademark infringement case to the M.D. Florida. As an initial matter, defendant did not waive the issue of personal jurisdiction because the answer contested it. While there was at least one witness and some documents in Illinois, defendant, much of plaintiff’s business and many of the documents were in Florida. The Court, therefore, transferred the case to Florida.
Global Total Office Ltd. Partnership v. Global Allies, LLC, No. 10 C 1896, Slip Op. (N.D. Ill. Feb. 14, 2012) (Coleman, J.).
Judge Coleman denied plaintiffs summary judgment as to their Lanham Act infringement, deceptive trade practices and unfair competition claims. All three required a factual finding of a likelihood of confusion, which the Court held was not amendable to summary judgment based upon the existing record:
- Similarity of the Marks. The marks were visually “quite different” although they both included prominent use of GLOBAL. But the differences weighed against a likelihood of confusion.
- Strengths of Plaintiff’s Mark. The strength of the GLOBAL mark was a fact question, although it was not immediately obvious as a strong mark.
- Actual Confusion. The parties’ competing evidence of actual confusion largely required judgments regarding witness credibility that could not be made in a summary judgment decision.
- Parring-Off. There was no actual evidence of passing off.
- Consumer’s Degree of Care. The degree of care exercised by consumers was a disputed fact.
- Similarity of Products & Concurrent Use. Whether the parties’ products might appear attributable to a single source was a disputed fact.
Akoo Int’l, Inc. v. Harris, No. 10 C 1685 Slip. Op. (N.D. Ill. Sep. 9, 2011) (Coleman, J.).
Judge Coleman denied plaintiff Akoo International (“AI”) a preliminary injunction to prevent rapper Clifford Harris from using the Akoo mark for his clothing line. The Court held that AI had not shown a sufficient likelihood of confusion:
- AI’s advertising system was very different than Harris’ clothing line.
- The parties sold in different channels.
- There was no evidence that Harris began using the mark to confuse AI’s customers.
Free Green Can, LLC v. Green Recycling Enterprs., LLC, No. 10 C 5764, Slip Op. (N.D. Ill. June 20, 2011) (Coleman, J.).
Judge Coleman granted the individual defendant Menas’ motion to dismiss the counterclaims against him and granted in part defendant Green Recycling Enterprises’ ("GRE") motion to dismiss plaintiffs’ (collectively "FGC") counterclaim in this trademark case regarding recycling can systems with integral advertising.
The Court’s significant holdings included:
- GRE did not plead sufficient facts showing Menas was PGC’s alter ego that would warrant piercing the corporate veil. GRE only pled that Menas made significant investment in FGC and that Menas directed FGC without any factual support or detail.
- GRE’s deceptive trade practices act claims were all based upon actions taken before Menas invested. So, Menas could not be liable for them.
The holdings with respect to FGC’s motion were all related to Nebraska causes of action. So, I am not addressing them here.
Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Jul. 19, 2011) (Coleman, J.).
Judge Coleman granted declaratory judgment plaintiff Rosenthal Collins Group’s ("RCG") motion for protective order and to quash third party subpoenas as to third party CQG. The subpoenas sought information regarding RCG’s use of CQG’s trading software. The Court previously entered judgment against RCE and the only issue left in the case is a January 23, 2012 damages trial. But the judgment and the damages trial were limited to RCG’s use of its software, not other third parties that have not yet been held to infringe, such as CQG’s software.
Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. June 1, 2011) (Coleman, J.).
Judge Coleman denied plaintiff Rosenthal Collins Group’s ("RCG") motion to reconsider or clarify the Court’s February 23, 2011 Order entering defendants judgment in favor of declaratory judgment defendant Trading Technologies ("TT") and sanctioning RCG $1 million. While the discovery misconduct – which the Court described as "attempted fraud" – related to invalidity, it was appropriate to enter default judgment as to infringement because TT’s infringement case would have been "futile" if the "fabricated" evidence had been successfully used to invalidate the patents. Furthermore, RCG should not be allowed to benefit from the thwarting of its misconduct.
Finally, the Court’s sanctions were not criminal, they were made pursuant to Fed. R. Civ. P. 37 and the Court’s inherent powers.
Simonian v. Astellas Pharma US Inc., No. 10 C 1539, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.).
Judge Coleman granted defendant Astella’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Simonian’s false patent marking claims for failure to meet the Fed. R. Civ. P. 9(b) heightened pleading standards, but did so without prejudice. The Court held that Simonian’s complaint contained "precisely the same" general allegations — a "sophisticated company" that "knew or should have known" of the expired patent — that the Federal Circuit rejected as deficient in BP Lubricants.
E.B.N. Enters., Inc. v. C.L. Creative Images, Inc., No. 09 C 6279, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.)
Judge Coleman granted in part plaintiff’s ("Fantastic Sams") preliminary injunction motion in this case involving a non-compete agreement related to a terminated Fantastic Sams hair salon franchise. The Court granted a preliminary injunction regarding Fantastic Sams’ operations manual which defendants were contractually required to return to Fantastic Sams. The Court denied the remainder of the requested injunction. Fantastic Sams alleged that defendant’s decision to operate a new salon at the same location breached the two-year requirement that defendants not operate a salon within five miles of the prior Fantastic Sams location. Fantastic Sams made an uncontested showing that defendants breached that agreement. But Fantastic Sams did not sufficiently show irreparable harm. There is no question of irreparable harm from breach of a non-compete agreement. Fantastic Sams did not ever show that another franchise wanted defendants’ territory. Finally, there was no evidence that defendants’ customers continued using defendants because of features unique to Fantastic Sams.
Newt LLC v. Nestle USA, Inc., No. 09 C 4792, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.)
Judge Coleman denied defendants’ Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction, but dismissed the false patent marking case pursuant to Rule 12(b)(6) for failure to sufficiently plead intent to deceive. The Court held that plaintiff Newt had standing to sue without proof of particularized injury, citing Stauffer v. Brooks Bros., Inc., 619 F. 3d 1321, 1327 (Fed. Cir. 2010).
Newt alleged that defendant Graphic Packaging ("GPI") falsely marked the products and sold them to the customer defendants. GPI made no allegations that the customer defendants marked the accused products. The customer defendants were, therefore, dismissed.
Further, all defendants were dismissed because Newt only made generalized intent allegations — e.g., that defendants were "sophisticated companies."
Finally, the Complaint was dismissed because Newt made only general allegations against all defendants, rather than particular allegations against each defendant.
Sullivan v. Jamison, No. 06 C 5240, Slip Op. (N.D. Ill. Mar. 8, 2011) (Coleman, J.).
Judge Coleman denied plaintiff’s motion for summary judgment that defendants’ counterclaims to music royalties from the group Survivor were stopped for failure to disclose them in bankruptcy petitions. In fact, both individual defendants had sufficiently identified their alleged rights to Survivor’s music royalties in their bankruptcy petitions or amendments thereto.
Free Green Can, LLC v. Green Recycling Enters., LLC, No. 10 C 5764, Slip Op. (N.D. Ill. Jan. 28, 2011 (Coleman, J.).
Judge Coleman granted the individual defendants’ and Aslan Financial Group’s Fed. R. Civ. P. 12(b) motion to dismiss plaintiff Free Green Can’s trademark infringement and related state law claims. As an initial matter, the Court lacked subject matter jurisdiction as to all state law claims because while Free Green Can pled diversity of citizenship, it did not plead that the amount in controversy exceeded $75,000. Because Aslan Financial Group was only accused of state law claims, it was dismissed.
The federal trademark claims against the individual defendants were dismissed pursuant to Fed. R. Civ. P. 12(b)(6) because the individual defendants were accused of infringement based upon corporate acts of defendant Green Recycling Enterprises, of which each was an officer. But in order to state a claim for infringement, or any tort, by corporate officers or employees Free Green Can was required to allege each individual defendant had actively participated in the tortious acts. Because there were no such allegations, the infringement claims were dismissed.