Home » 2013 » September

Monthly Archives: September 2013

Unified Messaging Solutions Ordered to Add Acacia or Case Will be Dismissed, Evades Sanctions

In re Unified Messaging Solutions Patent Litigation, Case No. 12-6286 (N.D. Ill. Sept. 25, 2013)(Judge Lefkow)

Unified Messaging Solutions (“UMS”), which is a patent holding company setup by Acacia, has sued numerous defendants in multiple suits.  Those suits were consolidated in the Northern District of Illinois following a determination by the Judicial Panel on Multidistrict Litigation.  Several of the defendants moved for sanctions, for dismissal pursuant to Rule 11, and for dismissal pursuant to rule 12(c).  All of the motions were based on violation of a common terminal disclaimer of several of UMS’s asserted patents.  In particular, several of the asserted patents are related to U.S. Pat. No. 6,350,066.

UMS does not own the ‘066 patent – rather, the ‘066 patent is owned by a separate Acacia entity.  However, several of the patents asserted by UMS were issued only based on the following terminal disclaimer:

The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the prior patents and any patent granted on said pending reference application are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.

As UMS does not own the ‘066 patent, the Court ordered that the entity that owns the ‘066 patent be added to the case, or it will be dismissed.  However, the Court did not grant sanctions against UMS as it determined that “the facts do not indicate that AMT and UMS impermissibly divided ownership of the patents violating the terminal diclaimers […]”

2 More Individual Does Sued by TCYK in the Northern District of Illinois

With these two suits, TCYK has now sued 13 individual Does.  The new cases are:

TCYK, LLC v. Doe, N.D. Ill. Case No. 13-6770

TCYK, LLC v. Doe, subscriber assigned IP Address 71.239.225.207 (Formerly Doe No. 92), N.D. Ill. Case No. 13-6772

If you are identified by your ISP as a Doe Defendant in a file sharing lawsuit, you may want to review this article, which contains some helpful tips on how to deal with these kinds of suits:

http://ezinearticles.com/?The-5-Steps-You-Need-to-Take-When-You-Receive-an-ISP-Subpoena-Letter&id=7696216

Atty Ad:  The Law Offices of Konrad Sherinian, LLC with offices in Naperville and Chicago, has successfully defended numerous file sharing cases alleging the use of Bit Torrent to copy movies, music, software and other content other the Internet.  Call (630) 318-2606 or (312) 981-5004 today for a free consultation if you have received a subpoena letter from your ISP.

MBHB Gets Wiley’s Financial Information

John Wiley & Sons v. McDonnell Boehnen Hulbert & Berghoff, Case No. 12-1446 (N.D. Ill. Sept. 16, 2013)(Keys)

In this case, John Wiley & Sons (“Wiley”), a leading publisher of scientific papers, sued McDonnell Boehnen Hulbert & Berghoff (“MBHB”) – a patent prosecution boutique firm in Chicago, over MBHB’s use of Wiley’s papers in its patent practice.  Wiley claims that MBHB must make unauthorized copies of its articles during its prosecution practice, because copies of the articles are submitted to the PTO, and copies must be maintained as part of MBHB’s prosecution file.  MBHB has countered with a number of defenses, including fair use, laches, and estoppel.

This order addresses discovery requests posed by MBHB.  In particular, it addresses a pair of requests for production and a single interrogatory.  The RFPs both dealt with the annual budget of Wiley’s technical, scientific and medical publishing division.  MBHB contended it required this information to support its fair use defense – in particular, MBHB contended the documents were vital to establish that its use of the articles in patent prosecution would not impact the market for those articles.  The Court agreed, and granted MBHB’s request.

Turning to the interrogatory, MBHB had propounded the following Rog:

Interrogatory No. 17: Provide the bases for the statement in the letter to Bradley J. Hulbert at MBHB from William Dunnegan, dated November 9, 2010, that: “The STM Publishers have recently reviewed the public records of your firm’s patent filings, and have found substantial evidence of unlicensed copying of their copyrighted material.”

Wiley contended that the requested information was privileged and irrelevant, and the Court agreed.  In particular, this interrogatory appears as if it were devised to uncover evidence for a counterclaim rather than to defend Wiley’s claim.

TCYK, LLC Sues 3 More Individual Does in the Northern District of Illinois

After suing 8 Does on September 17, TCYK, LLC, sued 3 more Does on September 19.

The individual suits are:

TCYK, LLC v. DOE, subscriber assigned IP Address 50.151.205.216 (Formerly Doe No. 3), N.D. Ill. Case No. 13-6727

TCYK, LLC v. DOE, subscriber assigned IP Address 98.193.71.149 (Formerly Doe No. 23), N.D. Ill. Case No. 13-6728

TCYK, LLC v. DOE, subscriber assigned IP Address 67.165.158.34 (Formerly Doe No. 67); N.D. Ill. Case No. 13-6729

If you are identified by your ISP as a Doe Defendant in a file sharing lawsuit, you may want to review this article, which contains some helpful tips on how to deal with these kinds of suits:

http://ezinearticles.com/?The-5-Steps-You-Need-to-Take-When-You-Receive-an-ISP-Subpoena-Letter&id=7696216

Atty Ad:  The Law Offices of Konrad Sherinian, LLC with offices in Naperville and Chicago, has successfully defended numerous file sharing cases alleging the use of Bit Torrent to copy movies, music, software and other content other the Internet.  Call (630) 318-2606 or (312) 981-5004 today for a free consultation if you have received a subpoena letter from your ISP.

TCYK, LLC Sues Eight Individual Does in the Northern District

TCYK, LLC, the holder of the copyright in the movie “The Company You Keep,” and prolific copyright plaintiff, has filed eight separate suits against Doe defendants that had filed motions to quash subpoenas in TCYK’s earlier lawsuits.  If the history of the particular attorney representing TCYK holds true, the majority of these cases will be settled within the next 60 days for amounts significantly higher than what TCYK settled prior suits at.

The individual suits are:

TCYK, LLC v. DOE, subscriber assigned IP Address 24.14.174.196 (Formerly Doe No. 14), N.D. Ill. Case No. 13-6646

TCYK, LLC v. DOE, subscriber assigned IP Address 50.158.14.241 (Formerly Doe No. 31), N.D. Ill. Case No. 13-6650

TCYK, LLC v. DOE, subscriber assigned IP Address 67.184.226.73 (Formerly Doe No. 56); N.D. Ill. Case No. 13-6654

TCYK, LLC v. DOE, subscriber assigned IP Address 24.1.175.197 (Formerly Doe No. 40);  N.D. Ill. Case No. 13-6657

TCYK, LLC v. DOE, subscriber assigned IP Address 24.15.249.99 (Formerly Doe No. 29);  N.D. Ill. Case No. 13-6660

TCYK, LLC v. DOE, subscriber assigned IP Address 71.194.69.79 (Formerly Doe No. 82);   N.D. Ill. Case No. 13-6663

TCYK, LLC v. DOE, subscriber assigned IP Address 67.167.123.1 (Formerly Doe No. 40);  N.D. Ill. Case No. 13-6667

TCYK, LLC v. DOE, subscriber assigned IP Address 71.194.130.79 (Formerly Doe No. 133);  N.D. Ill. Case No. 13-6671

If you are identified by your ISP as a Doe Defendant in a file sharing lawsuit, you may want to review this article, which contains some helpful tips on how to deal with these kinds of suits:

http://ezinearticles.com/?The-5-Steps-You-Need-to-Take-When-You-Receive-an-ISP-Subpoena-Letter&id=7696216

Atty Ad:  The Law Offices of Konrad Sherinian, LLC with offices in Naperville and Chicago, has successfully defended numerous file sharing cases alleging the use of Bit Torrent to copy movies, music, software and other content other the Internet.  Call (630) 318-2606 or (312) 981-5004 today for a free consultation if you have received a subpoena letter from your ISP.

Plaintiff Gets to Present Damages Calculation Despite Missing Deadline / Unfair Competition Claims Dismissed

Nanochem Solutions v. Global Green Products, Case No. 10-5686, Slip Op. (N.D. Ill. Sept. 10, 2013)(Hart)

At issue in this opinion are (1) a motion in limine, and (2) a motion for summary judgment, both filed by defendant Global Green Products.

In their motion-in-limine, Global Green sought to block Nanochem from introducing any damages calculation at trial because it had originally claimed damages based on a reasonable royalty, but shifted to lost profits at the very end of the case.  In fact, it had never unveiled its damages calculation (as required by Rule 26(a)(1)) until it responded to Global Green’s motion-in-limine.  Nonetheless, as the date for the final pre-trial order has not yet been set, the Court determined that Global Green was not prejudiced, and therefore, Nanochem will be allowed to present its damages calculation.

Also in their motion-in-limine, Global Green claimed that the damages calculation presented by Nanochem is not a legally proper way to calculate lost profits.  The Court essentially ruled that the proper venue to raise this issue is a rule 50 motion for JMOL.  In addition, Nanochem will be able to revise its damages calculation (if needed) in the final pretrial order, in jury instructions, and in trial briefs.

Global Green had better luck with its motion for summary judgment.  In particular, Global Green challenged count VI (unfair competition based on the Lanham Act) and VII (unfair competition based on Illinois law), and was successful in having both dismissed.  The mark asserted by Nanochem (A-5D) was determined to be descriptive; i.e., not distinctive, and without secondary meaning (otherwise referred to as acquired distinctiveness).  Under longstanding precedent – no distinctive mark (acquired or inherent), no cause of action for unfair competition.  Accordingly, the Court granted summary judgment on both claims.

BKGTH Productions Gets Discovery…and a Settlement Conference?

BKGTH Productions, which has filed torrent suits regarding the movie “Bad Kids Go to Hell,” has received discovery in three of the four cases pending in the Northern District of Illinois.  ISP subpoena letters are already in Does hands and information will be released on or around early October.  The cases where discovery was granted are:

13-4710

13-4711

13-4712

In case 13-4714, the case has been referred to Magistrate Rowland for a potential settlement conference.  This is “interesting” as BKGTH does not yet know who the Does are, and therefore, will likely have a jolly time notifying them of the settlement conference.

If you are identified by your ISP as a Doe Defendant in a file sharing lawsuit, you may want to review this article, which contains some helpful tips on how to deal with these kinds of suits:

http://ezinearticles.com/?The-5-Steps-You-Need-to-Take-When-You-Receive-an-ISP-Subpoena-Letter&id=7696216

Atty Ad:  The Law Offices of Konrad Sherinian, LLC with offices in Naperville and Chicago, has successfully defended numerous file sharing cases alleging the use of Bit Torrent to copy movies, music, software and other content other the Internet.  Call (630) 318-2606 or (312) 981-5004 today for a free consultation if you have received a subpoena letter from your ISP.