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Monthly Archives: February 2013

Motion for Reconsideration of Claim Construction Ruling Granted (N.D. Ill.)

Knowles Electronics v. Analog Devices, 11-CV-6804, Slip. Op. (ND. Ill. Feb. 19, 2013)(Lefkow)

Knowles Electronics sued Analog Devices for infringement of U.S. Pat. No. 8,018,049.  Judge Lefkow had originally construed “attaching a plurality of package covers” to require “attaching a layer comprising a plurality of interconnected package covers.”  Knowles filed a motion to reconsider under Rule 54, and, in this order, changed her construction to the far more intuitive “attaching more than one package cover.”

Doe Files Motion to Quash Subpoena – Ends up in Suit Alone Against Malibu Media

In re BitTorrent Copyright Infringement Cases, 12-CV-1189, Slip. Op. (C.D. Ill. Feb. 11, 2013)(Gorman)

Malibu Media v. John Does 1-7, 12-CV-1189, Slip. Op. (C.D. Ill. Feb. 11, 2013)(Gorman)

Mass copyright infringement suits have sprung up everywhere, and are being filed at an absolutely dizzying pace.  One of the most prolific and successful mass copyright plaintiffs (or copyright trolls if you prefer) is Malibu Media – they have filed more than 50 cases in the Northern and Central District since mid-2012.

A pair of opinions issued from the Central District of Illinois on February 11, 2013.  The first addressed joinder in eleven separate cases filed by various mass copyright plaintiffs against numerous Does.  The Court found that the requirements of joinder were not met by a typical Bit Torrent file transfer.  In particular, the Court observed:

  • The complaint only alleged that the plaintiff’s investigators observed that each Doe had participated in a torrent swarm distributing a single piece of a larger file, and therefore, the plaintiff did not allege that the Does participated in distributing the work, but rather a small piece of the work.
  • The dates that each Doe was observed spanned weeks to months, and accordingly, it is unlikely that the Does actually collaborated with one another to distribute the work.
  • Accordingly, the Does did not act in concert and there was no “series of transactions.”

This opinion was binding on Case No. 12-CV-1189, and recommended in a number of other cases.  Magistrate Judge Gorman also recommend that future peer-to-peer copyright infringement actions be filed against single defendants.

While this might seem to be a win, the Doe that actually filed the motion to quash ended up in a suit by himself against Malibu Media.  While the subpoena to his ISP was modified to only reveal the information necessary to serve process, his ISP was ordered to reveal his information to Malibu, and, given recent trends, Malibu is likely to proceed against him.  Strategically, this is likely a costly move, as Malibu will get his information, and the cost for him to settle is likely to double or more.

Cisco v. Innovatio: First round a Draw

 Cisco Systems v. Innovatio IP Ventures, 12-CV-427 et al. Slip Op. (N.D. Ill. Feb. 4, 2013)(Holderman)

After Innovatio filed numerous suits against commercial and quasi-commercial users of Wi-Fi for allegedly infringing seventeen patents, three of the most prolific manufacturers of Wi-Fi products (Cisco, Motorola, and Netgear) filed suit in the Northern District alleging, among other things, violations of the RICO Act, unfair competition, intentional interference with prospective advantage, and unclean hands.  The manufacturers also alleged that Innovatio, which received its patents from former IEEE member Norand, was required to license its patents on RAND (reasonable and non-discriminatory) terms, and brought actions for breach of contract and promissory estoppel.  Finally, the manufacturers brought counts attempting to invalidate Innovatio’s patents.

Judge Holderman completely eliminated the manufacturer’s offensive case – the RICO, unfair competition, intentional interference with prospective advantage, and unclean hands claims were completely wiped out by the Noerr-Pennington doctrine.  However, Judge Holderman also held that the manufacturers contract claims could proceed.  If the manufacturers are able to prevail on any of their contract claim, Innovatio will be likely be left with minimal damages claims against the three manufacturers (instead of the millions of customers of the manufacturers), who will likely still attempt to invalidate the patents-in-suit.

Finally, it should be noted that this was an exceptionally brave and risky move by the manufacturers who brought this suit.  If they should lose, they will likely have waived any defense they might have had against claims for indemnification by their customers.  Given estimates of between 100,000 and 1,000,000 commercial and quasi-commercial hotspots in the United States, and Innovatio’s claimed license fees of $2500 per location, the manufacturers could have assumed up to $2.5 B in liability.

Claim Construction Order Entered in Kenall Manufacturing v. H.E. Williams (N.D. Ill.)

Kenall Manufacturing v. H.E. Williams, 9-CV-1284, Slip Op. (N.D. Ill. Feb. 1, 2013)

Kenall filed this suit against H.E. Williams alleging infringement of U.S. Pat. Nos. 6,984,055 and 7,494,241.  Both patents deal with light fixtures.

The Court construed the following terms in a 34 page opinion:

  • “modular (lighting fixture)”:  The term occurs in the preamble, which the Court determined was not limiting.
  • “isolated (raceway)”: Construed as “a distinct space for passing media – like wiring – within a light fixture that is separated along its entire length by some kind of physical barrier or means so that the wiring which runs through it is separated from the wiring that traverses another raceway.”
  • “housing”:  Construed as “a structure that supports or contains lighting fixture components.”
  • “endplate”:  Construed as “a structure for attachment to a lengthwise end of a light fixture housing.”
  • “sealing”:  Construed as “joining two structures in a manner that prevents the passage of fluids between the two structures.”
  • “mating:”  Construed as “fitting two parts together via corresponding shapes.”
  • “bridge:”  Construed as “a distinct structure adapted for coupling multiple housing by those housings’ endplates.”
  • “adapted for attachment to any one of” & “attachable to any one of”:  Construed as attachable to all of the items in the list following these terms.

Judge Hart Adopts All of NanoChem Solutions Proposed Claim Constructions

Nanochem Solutions v. Global Green Products, 10-CV-5686, Slip. Op. (N.D. Ill. Jan. 29, 2013)(Hart)

The parties were seeking to construe seven separate claim terms.  For example, the parties disputed the proper construction of the term “heating powdered L-aspartic acid to at least 370 degrees F to initiate a condensation reaction.”  While the use or non-use of a catalyst was not mentioned in the specification elsewhere in the intrinsic record, Global Green Products attempted to have this term construed as requiring the process occur without the use of a chemical catalyst.  Similarly, Global Green Products sought to have “indirectly heated plate drier” construed as the exact plate drier disclosed in a particular patents specification.

Perhaps unsurprisingly, Judge Hart chose to adopt NanoChem Solutions proposed constructions for every one of the disputed terms.

Ashland Inc. Sues Centralia Oil Change Shop for Trademark Infringement & Counterfeiting

Ashland, Inc., which owns the well known brand Valvoline, has sued Specialty Lube, Inc., a Centralia oil change shop, as well as its owner for trademark infringement, unfair competition, unjust enrichment, trademark dilution, and deceptive business practices.  Apparently, Ashland sent investigators to Specialty Lube twice, and found that the oil which was placed in their cars, which was supposed to Valvoline was a counterfeit instead.

The Case Number is 13-CV-95 (S.D. Ill).