R. David Donoghue is a patent trial attorney and partner with Holland & Knight’s Intellectual Property Group in Chicago. A trusted counselor to his retail and supply chain clients, Dave routinely speaks to groups of all sizes on an array of intellectual property topics.
The Intellectual Property Law Association of Chicago (IPLAC) is hosting its 124th annual dinner honoring the federal judiciary on Friday, November 9, 2018 at the Standard Club, in Chicago. The evening will begin with a cocktail reception at 5:30 p.m., followed by dinner at 6:30 p.m. IPLAC will honor Federal Circuit Chief Judge Sharon Prost with its Distinguished Judicial Service Award. Sponsorships, tables and individual tickets are available.
Freeman Equip., Inc. v. Caterpillar, Inc., No. 16 C 9172, Slip Op. (N.D. Ill. Mar. 13, 2017) (Bucklo, J.).
Judge Bucklo denied defendant Caterpillar’s motion to disqualify plaintiff Freeman Equipment’s (“Freeman”) counsel in this patent case involving final drive guard assemblies.
Caterpillar sought disqualification for two reasons: 1) counsel’s allegedly improper interview of a former Caterpillar employee; and 2) counsel’s alleged prior representation of Caterpillar as local counsel in a patent litigation and as counsel in at least one other matter. The accounts of counsel’s interview of the former employee did not suggest that counsel sought or received any privileged information. In fact, the interview only garnered information that was otherwise publicly available about Caterpillar’s practices. Counsel did not ask about specific patent applications, just Caterpillar’s general patenting process. And to the extent that Caterpillar’s arguments that its general patenting process was irrelevant to the case at hand, discussing irrelevant matters with a former employee would not warrant the extreme result of disqualification.
Caterpillar’s more than six month delay in addressing counsel’s prior representation was problematic. Furthermore, Caterpillar offered no evidence regarding the prior case or cases which would have allowed the Court to make the required factual reconstruction of the prior matters’ scope. Speculation of what might have been disclosed was insufficient basis for the analysis. Without an ability to perform that initial step of the disqualification analysis, the Court could not disqualify counsel.
LimeCoral, Ltd. v. CareerBuilder, LLC, No. 15 C 7484, Slip Op. (N.D. Ill. Mar. 9, 2017) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan granted defendant CareerBuilder’s Fed. R. Civ. P. 56 motion for summary judgment as to plaintiff LimeCoral’s copyright, breach of contract and unjust enrichment claims. The Court also denied LimeCoral’s Rule 56 motion for partial summary judgment.
The Court held that the parties’ actions after the end of their contract created an implied nonexclusive license benefiting CareerBuilder. It was undisputed that: 1) the parties entered into a written agreement for the creation of copyrighted works; 2) LimeCoral delivered the works; and 3) LimeCoral understood that CareerBuilder would use the copyrighted works in its business. In fact, the agreement, even allowed CareerBuilder to create derivative works based upon LimeCoral’s copyrighted works. The fact that LimeCoral refused to transfer the copyright ownership to CareerBuilder was irrelevant. The Seventh Circuit has held that the implied nonexclusive license does not transfer ownership, instead just allowing for use of the works. Based upon the implied license, CareerBuilder could not be held to infringe the licensed works.
LimeCoral’s alleged oral agreements were based upon “vague assertions” and did not match up with the undisputed facts regarding LimeCoral’s pattern of conduct. For example, while the oral agreements required renewal fee payments, based upon the evidence no such payments were either made or requested.
Finally, CareerBuilder was not unjustly enriched. The undisputed evidence showed that CareerBuilder paid for what it used and complied with its understanding of its relationship with LimeCoral. Additionally, the equities did not support benefiting a party that took “steps to foster the creation of its own legal injuries in order to obtain a financial reward in litigation.
John Marshall is hosting a seminar on October 6, 2018 from 9:00am until 4:30pm CT on a hot and growing topic in US patent law – Standard Essential Patents. Register here. Here is John Marshall’s explanation of the program:
The development and licensing of Standard Essential Patents (SEPs) underpin so many aspects of modern life—from wireless telephony to Wi-Fi to connected cars and the internet of things—that it is very easy to underappreciate the complexity of the rules and practices that govern SEP. As the speed at which technologies converge increases, more and more sectors are adopting standards-based technologies for connectivity and interoperability. It is more important than ever for licensors and licensees to know the facts and necessary behaviors required to navigate the risks. Pulling together technology management, intellectual property, business, economics, and politics, this is one of the most interdisciplinary fields of law.
The program includes an excellent line up, including:
Graham Bell, Director Cubicibuc Limited
David L. Cohen, President David L. Cohen, P.C./Kidon IP Corporation
Randall R. Rader (ret.), Federal Circuit
Seminar topics include:
Standard-Setting: Origins, Benefits, and Challenges
Standard Setting Organizations (SSOs) and the Patent Wars
The Intellectual Property Law Association of Chicago is hosting what is promised to be a lively and informative presentation on advertising law basics presented by Nerissa Coyle McGinn of Loeb & Loeb, LLP. The presentation will be held on October 17, 2018 from noon to 1:15pm CT at the offices of K&L Gates, 70 W. Madison, Suite 3300. Registration is $20 for IPLAC members, $25 for non-members, $15 for students, and includes lunch.
The Intellectual Property Law Association of Chicago (IPLAC) is hosting a 2018 Supreme Court IP Review on Friday, September 21, from 8:30am-6:15 pm at the Chicago-Kent College of Law at Illinois Tech — 565 W. Adams St.
They are offering 6.5 hours of CLE credit for topics including:
Reviews of last terms cases, including WesternGeco, Oil States and SAS Institute.
Analytics regarding last year’s Supreme Court IP cases.
A preview of cases to watch in the upcoming term.
Various PTAB updates.
N.D. California’s Judge Alsup discussing how courts manage large patent dockets.
Grecia v. True Value Co., No. 18 C 1886, Slip Op. (N.D. Ill. Aug. 9, 2018) (Kocoras, J.).
Judge Kocoras granted defendant True Value’s Fed. R. Civ. P. 12(b)(6) motion to dismiss and dismissed plaintiff Grecia’s patent complaint in this patent dispute involving point of sale terminals. While the Court was “skeptical” that Grecia’ could “resurrect” his claims by re-pleading, the Court gave Grecia the opportunity to re-plead before dismissing his claims with prejudice.
The Court held that Grecia’s complaint failed for “circular reasoning” which “obfuscated” the pleadings and briefing “destroying” his claims. Required to point to a single element of True Value’s accused system that satisfied the claims’ “communications console” requirement, Grecia pointed to both a customer’s mobile device or chip card and the bank or credit card company’s EMV Token Service Provider. In addition to claiming that two separate items are the communications console, neither identified item was a part of True Value’s point of service device. In light of that and Grecia’s other arguments, the communications console was responsible for four logical paradoxes:
Receiving a request from itself;
Establishing a connection with itself;
Requesting information from itself; and
Receiving the requested information from itself.
Grecia’s reasoning was “flawed” and “circular.” Grecia’s complaint “disprove[d] his infringement claim by identifying the communications console as something outside of the True Value device.”