Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Ratner v. M&M Control Serv., Inc., No. 08 C 6928, Slip Op. (N.D. Ill. Jan. 5, 2009) (Shadur, Sen. J.).

Judge Shadur ordered that certain denials in patent defendant's answers be stricken pursuant to Fed. R. Civ. P. 8(b)(5) and 11 (b).  The Court held that when a defendant lacked sufficient knowledge to answer an allegation and so stated, it was deemed a denial pursuant to Rule 8(b)(5).  But defendant cannot actually deny the allegation because defendant has already stated that it lacks sufficient knowledge to admit or deny the allegation.  As such, denying the allegation conflicts with Rule 11(b) obligations.

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Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, Min. Order (N.D. Ill. Feb. 2, 2009) (Moran, Sen. J.).*

In this pair of entries, Judge Moran denied plaintiff Trading Technologies' motions for fees and costs related to a discovery motion and referred another fees motion to Magistrate Judge Schenkier.  In the first entry, the Court noted that it was time to end "unnecessary [discovery] battles" in the case and that it might not be as forgiving with the next fees motion.  In the other entry, the Court transferred a fees motion to Judge Schenkier, but questioned how "a single discovery dispute could blossom into a claim for over $300,000.

*  Click here to read much more about this case and the related cases in the Blog's archives.

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Freightquote.com, Inc. v. Air Ocean Land Sol'ns., Inc., No. 98 C 346, Slip Op. (N.D. Ill. Jan. 26, 2009) (Shadur, Sen. J.).

Judge Shadur issued this Memorandum questioning whether plaintiff's trademark infringement and related state law claims should have been brought in the Northern District.  The complaint listed the parties' citizenship as being in Delaware, Kansas, North Carolina and Texas.  The lack of an Illinois resident or citizen in the case caused the Court to question whether the Northern District was the appropriate location for the suit.  The Court did not rule upon the issue, but directed the parties to be prepared to discuss whether the Northern District was the appropriate forum for the case at the next hearing.

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The next installment of the Spring 2009 Chicago Intellectual Property Colloquium is this Tuesday, February 10, at 4:00 pm in Room 1103 at Loyola University Chicago Law School.*  This installment of the Colloquium will be especially interesting to the Blog's readers, as the paper to be presented is directly focused on patent litigation.  Professor Colleen Chien of Santa Clara University Law School will present her paper:  Narratives and Evidence in the Litigation of High-Tech Patents.  The event will be held at Loyola University Chicago School of Law, 25 East Pearson Street, on Tuesday, February 10, 2009, 4:00 p.m. in Room 1103.  Chien's paper uses data from the Stanford IP Litigation Clearinghouse.

*  The Colloquium is jointly sponsored by Chicago-Kent and Loyola University Chicago.

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Yesterday, President Obama announced that he was appointing Senator Judd Gregg (R-N.H.) to become the next Secretary of Commerce, a significant position in the intellectual property world.  As Secretary of Commerce, Gregg will oversee the PTO and have a strong voice in any patent reform that might occur while he is Secretary.  The blogosphere and mainstream media are slowly providing background regarding Gregg:*

• Patently-O
   
• Peter Zura's 271 Patent Blog (highlighting this Congressional Quarterly article which points out that Gregg once voted to abolish the Department of Commerce).
   
• Washington Post's 44 Blog.

*  I will update this post with more links if I see anything especially valuable.

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The Chicago Tribune ran an interesting article by Ann Meyer yesterday (click here to read it) discussing companies monetizing IP, specifically patents and dormant trademarks, not just through the more traditional means of litigation and licensing, but also through sales of the IP.  While there are numerous brokers who help sell IP, the article focused on Chicago-based Ocean Tomo's patent auctions.  It is not very surprising that in a down economy companies are looking to their IP as a significant source of value.  Nor is it surprising that companies would seek to avoid the upfront costs of both licensing and litigation in favor of a more immediate sale for IP the company is not using.  Of course, the continued health of the patent, trademark and copyright dockets in the Northern District of Illinois and across the country prove that companies continue to monetize their IP and protect market space from competitors through more traditional means as well.

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Anyone that has litigated a patent that was originally written in a language other than English has almost certainly dealt with translation issues.  For that matter, anyone that has used foreign language prior art or technical documents has likely faced translation issues.  The new PatLit blog has an interesting post about translation issues related to a European patent litigation -- click here to read the post.  A PatLit reader suggests that there are few written opinions dealing with translation issues, but that translation issues must be common.  My experience is that the complexity and frequency of translation issues are directly related to the complexity of the technology.  Not a shocking conclusion because complex, cutting-edge technology has its own terminology that often does not lend itself to seamless translation.  The fact that there are not many written opinions makes less sense.  But here are a few possible explanations:  1) courts treat translation issues as any other difference of opinion in claim constructions and deal with them without mentioning the translations; or 2) cases that suffer from unclear or bad translations may be more likely to settle before a decision.

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Here is some IP-related news for your weekend enjoyment:

• Seattle Trademark Lawyer Mike Graham warns that the excellent Stanford IP Clearinghouse may not be counting all cases in its data based on Graham's comparison of 2008 trademark filings in the Western District of Washington using PACER and the Stanford IP Clearinghouse -- click here to read the post.  I echo Graham's statement that even if there are discrepancies, or even missing data, the Stanford IP Clearinghouse is an excellent resource with vast potential.
   
• Blawg Review #196 was hosted on Australia Day this week by Peter Black's Freedom to Differ, an Australian blog focused on internet regulation -- click here to read the Review.    After tackling controversy surrounding the date of Australia day, Black discusses several IP issues including Duncan Bucknell's post regarding YouTube copyright issues; and Brendan Scott's series on closed source software.

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Last fall, the Federal Circuit issued an en banc decision in In re Bilski, holding that the “machine-or-transformation test” was the only test for determining whether a claimed process was eligible for patenting pursuant to § 101. The decision required that a process either:  1) be tied to a particular machine or apparatus; or 2) transform an article into a different state or thing.  The Federal Circuit affirmed the PTO's rejection of Bilski's claimed method of hedging the risk of bad weather through commodities trading as lacking patentable subject matter.  The Federal Circuit held that the method failed the machine-or-transformation test.  Click here for the Federal Circuit decision.

Earlier this week, Bilski petitioned the Supreme Court for a writ of certiorari to consider the following two issues:

 

Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing … despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

Click here to read the petition.  Pursuant to Supreme Court procedural rules, amici briefs are due at the end of February, although the PTO can seek an extension.

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The Chicago IP Colloquium has another strong line up for its 2009 edition.  The Colloquium jointly sponsored by Chicago-Kent and Loyola Chicago began yesterday at Kent with Professor Joseph Miller of Lewis & Clark Law School presenting his paper Hoisting Originality. Papers from past Colloquia are available here.

The leaders of the Colloquium are Professor Graeme Dinwoodie, Director, Program in Intellectual Property Law, Chicago-Kent College of Law and Professor Cynthia Ho, Loyola law School.  Mark your calendars for the remaining sessions of the 2009 Colloquium:

February 10, Loyola University Chicago School of Law, Room 1103
Professor Colleen Chien, Santa Clara University Law School
Paper: Patent Detente - Solutions to the Patent Arms Race

February 24, Chicago-Kent College of Law, Room 305
Professor Anupam Chander, UC Davis School of Law
Paper: Youthful Indiscretion & Digital Memory

March 24, Loyola University Chicago School of Law, Room 1103
Professor David Adelman, The University of Arizona
Paper: Visualizing Patent Domains: Emerging Empirical Methods & Their Implications for Patent Policy

April 7, Chicago-Kent College of Law, Room 305
Professor Lisa Ramsey, University of San Diego School of Law
Paper: Free Speech and International Obligations to Protect Trademarks

April 21, Loyola University Chicago School of Law, Room 1103
Professor Frank Pasquale, Seton Hall University School of Law
Paper: Search, Copyright, and Speech

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Magistrate Judge Mason's term ends on September 28, 2009.  As part of considering reappointing Judge Mason for an additional eight year term, the Northern District is establishing an advisory panel of Northern District citizens.  Additionally, the Northern District Clerk is accepting written comments to regarding Judge Mason to assist the panel until March 20, 2009 at the following address:

Magistrate Judge Advisory Panel
c/o Mr. Michael W. Dobbins
Clerk of Court
U.S. District Court
219 South Dearborn St. - Rm. 2050
Chicago, IL 60604

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Along with the IP ADR Blog's Victoria Pynchon, I am giving an ALI-ABA continuing legal education teleconference discussing alternative dispute resolution as a low-cost alternative for intellectual property disputes -- click here to register.  The program is at 11 am CT on February 18.  Here are ALI-ABA's program highlights:

Why Attend?

In a difficult economy, intellectual property protection and assertion is more important than ever. The combined stressors of a poor fiscal climate and shrinking legal budgets place a significant strain on any business dependent upon IP assets. as companies face difficult economic decisions, it is increasingly difficult to fit the expense and extended uncertainty of copyright, patent and trademark litigation into a forward looking business plan. This one-hour seminar explores the use of alternative dispute resolution as a means of protecting intellectual property and business activity, while minimizing the expense and devotion of time related to traditional IP litigation.

What You Will Learn

This program examines how to move an IP dispute toward alternative dispute resolution; best practices for controlling the expense and length of the process; and best practices for successful alternative dispute resolution. Whether you are an experienced IP practitioner or simply one grappling with IP issues in your general commercial practice, knowing how to offer your clients a wide array of ADR options might make the difference between a practice that survives and one that thrives. The seminar will cover the following topics:

• How to choose between litigation and ADR.
   
• The most successful strategies for guiding your dispute into the best ADR forum at the most productive time.
   
• The five basic rules of “distributive” or “fixed sum” bargaining that will give you the “edge” in all future settlement negotiations.
   
• The five ways to “expand the fixed sum pie” by exploring and exploiting the client interests underlying your own and your opponents’ legal positions.
   
• The Ten Mediation/Settlement Conference Traps for the Unwary.
   

Invest just 60 minutes at your home or office to learn about alternative dispute resolution in the IP field from this duo of experts. This audio program comes to you live on Wednesday, February 18, 2009, 12:00-1:00 pm CST, via your phone or your computer. Materials corresponding to the course may be downloaded or viewed online.

Planning Chair

R. David Donoghue, Esquire, Holland & Knight LLP, Chicago, IL

Faculty

Victoria Pynchon, Esquire, Settle It Now Dispute Resolution Services, Beverly Hills, CA

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Here are several IP-related stories and news items that I found valuable or interesting:

• The Maryland IP Law Blog reports that Patent Secrecy Act activity was down in 2008, with a significant reduction in issuance of new secrecy orders -- down to 68 in 2008 from 128 in 2009 -- and existing secrecy orders down about .5% to 5,023 total in FY 2008 -- click here to read the post.
   
• Daily Writing Tips warns against genericide -- the death of a trademark caused by using the mark as a generic term -- and gives numerous examples.
   
• A sincere thank you to Patent Baristas; Rush on Business; and Securing Innovation.  I do not buy into the blog awards  or best blog lists, but it is an honor  to be nominated for Blawg Review of the year by such accomplished bloggers and lawyers.  My 2008 Blawg Review was an ode to world record swims and America's favorite Olympic son Michael Phelps -- click here to read it.

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Kingsbury Int'l., Ltd. v. Trade the News, Inc., No 08 C 3110, Slip Op. (N.D. Ill. Oct. 28, 2008) (Lindberg, Sen. J.).

Judge Lindberg denied defendant's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff's copyright infringement claim and defendant's alternative Fed. R. Civ. P. 12(e) motion for a more definite statement of the claim. Plaintiff alleged that it owned a copyright in its Chicago Business Barometer monthly business index; that it specifically informed its subscribers that the index was copyrighted and that it could not be reproduced or rebroadcast in any manner until plaintiff publicly released the index at 8:45 AM; and that defendant released unidentified “parts” of the May 2007 issue of the index at 8:42 AM, three minutes before plaintiff's public release. The Court held that these allegations met the Fed. R. Civ. P. 8(a) pleading standards, without specifically identifying which parts of the index were copied, noting that copyright claims did not require Fed. R. Civ. P. 9(b) heightened pleading. Furthermore, defendant's defense that, if anything, it copied only unprotected facts was not appropriate for a Rule 12(b) determination on the pleadings.

Finally, the Court held that the complaint was not “so vague or ambiguous” that it warranted requiring a more definite statement.

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Publications Int'l. Ltd. v. LeapFrog Enters., Inc., No. 08 C 2800, Slip Op. (Dec. 4, 2008) (Guzmán, J.).

Judge Guzmán granted declaratory judgment defendant LeapFrog's Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff Publication International's (“PIL”) claim for declaratory relief regarding the POINGO mark used in association with a pen-like electronic reading device. PIL alleged, and LeapFrog admitted, that LeapFrog used the POINGO mark for a pen reader system in one presentation to a retailer, but never marketed or sold a pen reader using the name and never sought to register the mark with the PTO. PIL also alleged that LeapFrog sent PIL cease and desist letters warning that LeapFrog's earlier use of the POINGO mark gave it priority in the mark. The Court held that PIL had not met its burden because it had not alleged that LeapFrog had used the mark on products in commerce or that LeapFrog had sufficient intent to use the mark in commerce. Without a use in commerce or an intent to use, the immediacy required for a declaratory judgment action was not present.

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