Judge Kapala granted the agreed portions of plaintiff’s motion for preliminary injunction in this trademark case involving plaintiff’s 21ST CENTURY SMOKE and defendant’s 21 CENTURY SMOKING marks, as follows:

• The parties agreed to a reciprocal preliminary injunction enjoining each party from using the other’s mark or making any statements that its products were affiliated with the other party.
• The Court refused to enter the portion of the agreed injunction in which both parties agreed not to use marks confusingly similar to its opponent’s mark because that definition could encompass each party’s mark.
• Defendant agreed not to attend the ASD Trade Show in Las Vegas.
• The Court denied the requested injunction as to any use by defendant of its 21 CENTURY SMOKING mark. 
• At an early stage of the case, both parties strongly contested who first used the mark.  As a result, plaintiff seemed as likely to lose its claim as to win it, but that was enough to clear the “low threshold” of showing more than a negligible chance of success.
• With respect to irreparable harm, there was no evidence of misconduct by defendant, and the agreed injunction would resolve any possibility of misconduct going forward.
• Finally, the balance of harms weighed in defendant’s favor and against a preliminary injunction. 

Zambezia Film Pty. Ltd. v. Does 1-33, No. 13 C 1323, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Zambezia Film Pty. Ltd. v. Does 1-60, No. 13 C 1741, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Shoppertrak RCT Corp. v. Objectvideo, No. 13 C 1323, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

In each of these cases, Judge Shadur entered similar orders requiring the plaintiff to provide the Court a courtesy copy of its newly filed complaint within one week of the date of the opinion.  The Clerk of the Court recently ended its practice of delivering each chambers a courtesy hard copy of any new complaints that it drew.  As such, the Court had stopped exempting counsel from its Local Rule 5.2(f) obligation to provide copies of complaints.  Going forward, counsel were required to file courtesy copies of complaints.  Courtesy copies of complaints are critical in order to allow the Court to control its docket by:

1. Reviewing the contents of each complaint;
2.  Issuing sua sponte orders as necessary regarding the complaint;
3. Setting an initial status; and
4. Creating a “bible sheet” for the binder the Court maintains as to each case before it.

Judge Lefkow granted in part plaintiff CBOE’s motion to strike defendant ISE’s expert witness in this patent case, as follows:

• This case was not governed by the Local Patent Rules (“LPR”) because it was filed before the LPR became effective.
• Although ISE’s interrogatories did not specifically identify its doctrine of equivalents theory, ISE sufficiently disclosed its theory as to claims 4, 35 and 36 during discovery, including in ISE’s summary judgment motion.
• ISE did not sufficiently disclose its doctrine of equivalents argument as to claim 56.
• CBOE was not prejudiced as to claims 4, 35 and 36 because the arguments were disclosed at least at summary judgment.
• CBOE was prejudiced by ISE’s failure to disclose it argument as to claim 56.  ISE’s doctrine of equivalents argument as to claim 56 was, therefore, struck.
• ISE had sufficiently disclosed its commercial success arguments by disclosing its product and the nexus between the patent and the product.  ISE identified its argument as early as its initial discovery responses.

Judge Lefkow considered defendant ISE’s arguments that the Court’s construction of “means for matching” was incomplete because it did not define an algorithm as part of the structure for the means plus function term.  The Court held that there was a fact question as to whether pro rata allegation “was” sufficiently simple that anyone skilled in programming could create a software program for the function . . .”  The Court, therefore, decided to hear evidence before ruling.

Judge Lefkow granted defendant ISE’s motion to exclude plaintiff CBOE’s evidence of non-infringing alternatives from the lost profits analysis in this patent case.  The identified alternative was never in use during the alleged infringement.  And CBOE offered only conclusory evidence that the alternative was available at the relevant time.  The Court denied ISE’s motion to exclude CBOE’s expert.  The expert’s experience with SEC regulations and rulemaking were sufficient to allow him to opine that CBOEdirect was not an “automated exchange.”  The expert was not, however, allowed to opine on claim construction issues because that was not the proper subject matter of expert testimony.

Judge Kennelly denied defendants U Lighting America and its sole officer and employee’s (collectively “ULA”) motion to dismiss this patent suit for lack of personal jurisdiction.  The Court had specific jurisdiction over ULA because ULA shipped 76,000 of the accused compact fluorescent lights in five shipments to a third party in Illinois.

Judge Lefkow granted plaintiff CBOE’s motion in limine excluding argument that § 103 obviousness references must each be enabling in this patent case.  Furthermore, the Court limited defendant ISE’s enablement arguments to those specifically called out in ISE’s expert’s report.

Judge Lefkow granted in part plaintiff CBOE’s motion in limine to exclude defendant ISE from introducing evidence of secondary consideration of nonobviousness in this patent case.

Commercial Success:

Whether ISE had shown a nexus between its products and the claim elements was not proper for a motion in limine.

Copying:

ISE introduced evidence of copying beyond its infringement contentions.  Weighing the evidence was a matter for the jury.

Failure of Others:

ISE identified 73 failed exchanges.  Whether the failures had a sufficient nexus to the claims is an issue for the jury.

Long Felt Need:

Again, whether ISE’s evidence of long felt need has a sufficient nexus with the claims is a jury question.

Teaching Away:

ISE’s expert sufficiently cited to evidence of teaching away to allow his testimony to go to the jury.

]]> http://www.chicagoiplitigation.com/2013/04/articles/trial/weight-of-the-evidence-cannot-be-decided-in-motion-in-limine/feed/ 0 http://www.chicagoiplitigation.com/2013/04/articles/trial/weight-of-the-evidence-cannot-be-decided-in-motion-in-limine/ http://feeds.lexblog.com/~r/ChicagoIpLitigationBlog/~3/MnbqqK0Df8I/ http://www.chicagoiplitigation.com/2013/04/articles/trial/expert-testimony-required-for-one-infringement-issue/#comments Mon, 15 Apr 2013 09:49:11 +0000 R. David Donoghue http://www.chicagoiplitigation.com/?p=11192 Continue Reading]]> CBOE v. ISE, No. 07 C 623, Slip Op. (N.D. Ill. Mar. 6, 2013) (Lefkow, J.).

Judge Lefkow granted plaintiff CBOE’s motion in limine limiting defendant ISE’s expert testimony consistent with prior rulings regarding the scope of evidence in this patent case.  The expert was allowed to testify regarding alleged infringement by CBOE’s accused CBOEdirect system.  The Court also noted that there would be a “failure of proof” if some expert did not testify that Hybrid’s “rule-based order routing algorithm” did not include matching or allocating through open outcry.

Judge Lefkow granted in part CBOE’s motion in limine to limit ISE’s infringement argument at trial in this patent case.  The issue for trial was whether CBOE’s Hybrid system was “merely two independent exchanges” or an integrated system.  ISE could, therefore, offer evidence that CBOEdirect contains elements of the asserted claims.  But ISE could not argue that CBOEdirect alone infringes based upon ISE’s admissions to the contrary in seeking reconsideration of the Court’s claim construction.