R. David Donoghue

Latest Articles

My partners Steve Jedlinski and Anthony Fuga recently wrote a valuable article about a new Federal Circuit decision dealing with functionality and exhaustion issues for design patents. It is republished below with permission. In a relatively rare opinion regarding design patents, the U.S. Court of Appeals for the Federal Circuit weighed in recently on the requirements for design patents in its Automotive Body Parts Association v. Ford Global Technologies, LLC, No. 2018-1613 (Fed. Cir. 2019) decision. The U.S. Patent and Trademark Office (USPTO) grants design patents to inventors with a “new, original, and ornamental design for an article of…
June patent filings saw an uptick in the retail space. Frequent filers included Aeritas, Internet Media Interactive, Secure Cam, and Symbology. As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular type of motion, or a particular plaintiff’s litigation history.  Finally, please let me know if you have thoughts about the report or…
May patent filings stayed quiet in the retail space. Frequent filers included Coding Technologies, Geographic Location Innovations, Rothschild, Symbology and Vindolor. As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular type of motion, or a particular plaintiff’s litigation history.  Finally, please let me know if you have thoughts about the report or…
Patent filings remained quiet in April. Frequent filers included Cascades Branding, Coding Technologies, eCeipt, Geographic Location Innovations, Grecia, Internet Media Interactive, and Landmark Technology. As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular type of motion, or a particular plaintiff’s litigation history.  Finally, please let me know if you have thoughts about…
My partner Anthony Fuga is providing excellent analysis on the latest Section 101 cases and issues at the Holland & Knight Section 101 Blog, which he edits and does a substantial amount of the writing for. His latest post provides valuable insight into how district courts are approaching Section 101 cases since the Federal Circuit’s Berkheimer and Aatrix decisions based upon a recent RPX study. It is reposted below, with permission and cross-posted on my Chicago IP Litigation blog: RPX’s latest quarterly review provides a deep dive on the effects of Berkheimer and Aatrix. If you forget,…
The Northern District of Illinois is holding a memorial service in remembrance of the Honorable George W. Lindberg on Thursday, June 20, 2019, beginning at 3:00 p.m. The service is being held in the James Benton Parsons Memorial Courtroom on the 29th floor of the Everett McKinley Dirksen Courthouse. The service will be followed by a reception on the 21st floor south alcove and an open house of the Court History Museum featuring an exhibit dedicated to Judge Lindberg.…
Fellowes, Inc. v. Acco Brands Corp., No. 10 C 7587 & 11 C 8148, Slip Op. (N.D. Ill. Apr. 22, 2019) (Leinenweber, J.). Judge Leinenweber granted in part plaintiff Fellowes’ motion to amend its complaint adding a new patent and addressing the results of Patent Office proceedings in this patent case involving improved paper shredding technology. Of particular note, the Court held as follows: The Court sua sponte lifted the stay pending the Patent Trial & Appeal Board proceedings. The Court granted Fellowes’ leave to amend its complaint removing patents and claims it was no longer pursuing based upon the…
Easton v. Primal Wear, Inc., No. 17 C 6081, Slip Op. (N.D. Ill. Mar. 29, 2019) (Tharp, J.). Judge Tharp denied the plaintiffs’ (collectively “Primal Mode”) Fed. R. Civ. P. 56 motion for summary judgment and defendant Primal Wear’s Fed. R. Civ. P. 12(b)(1) & (6) motion to dismiss in this Lanham Act trademark infringement and unfair competition case involving Primal Mode’s PRIMAL MODE marks and Primal Wear’s PRIMAL and PRIMAL WEAR marks. Of particular note, the Court held as follows: Primal Wear did not meet its burden of proving that Primal Mode abandoned its mark by not having sold…
Quan v. Ty, Inc., No. 17 C 5683, Slip Op. (N.D. Ill. Mar. 20, 2019) (Kennelly, J.). Judge Kennelly denied defendant Ty’s Fed. R. Civ. P. 56 motion for summary judgment as to equitable estoppel and abandonment regarding plaintiffs’ patent and copyright infringement claims regarding a plush seal that Ty marketed as “Wiggy.” Of particular note, the Court held as follows: The fact that Ty eventually learned of plaintiffs’ copyrights, at least when the Chinese government seized a shipment of Ty’s goods, does not mean that Ty knew about the alleged rights at the time of manufacture. The Court held…
VitalGo, Inc. v. Kreg Therapeutics, Inc., No. 16 C 5577, Slip Op. (N.D. Ill. Mar. 27, 2019) (Dow, J.). Judge Dow granted in part defendant Kerg’s Fed. R. Civ. P. 12(b)(6) & 12(f) motion to strike portions of plaintiff VitalGo’s Second Amended Complaint (SAC) and to dismiss VitalGo’s claims with prejudice in this Lanham Act and copyright case related to Kreg’s Catalyst Lift Bed products. Of particular note, the Court held as follows: The Court struck those portions of VitalGo’s SAC that related to the Total Lift Bed, not Kreg’s Catalyst Lift Bed. The Court previously dismissed the claims related…
Fair Isaac Corp. v. Trans Union, LLC, No. 17 C 8318, Slip Op. (N.D. Ill. Mar. 27, 2019) (Coleman, J.). Judge Coleman granted in part defendant Trans Union’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff FICO’s amended complaint and denied Trans Union’s Fed. R. Civ. P. 12(e) alternative motion for a more definite statement in this antitrust, Lanham Act unfair trade practices and related state law claims involving FICO’s credit score algorithms Of particular note, the Court held as follows: FICO’s breach of contract claims survived because they identified a purported contractual duty and that Trans Union alleged…
Fair Isaac Corp. v. Trans Union, LLC, No. 17 C 8318, Slip Op. (N.D. Ill. Mar. 27, 2019) (Coleman, J.). Judge Coleman granted in part plaintiff FICO’s Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant Trans Union’s counterclaims in this antitrust, Lanham Act unfair trade practices and related state law claims involving FICO’s credit score algorithms. Of particular note, the Court held as follows: Trans Union sufficiently pled its antitrust claims. Trans Union alleged that FICO engaged in practices intended to drive out competition and that FICO’s exclusive dealings are allegedly unlawful attempts to maintain monopoly power. The Court…
Upaid Sys., Ltd. v. Card Concepts, Inc., No. 17 C 8150, Slip Op. (N.D. Ill. Mar. 25, 2019) (Feinerman, J.). Judge Feinerman denied defendant Card Concepts’ (CCI) Fed. R. Civ. P. motion for judgment on the pleadings that the patent claims are invalid as unpatentable subject matter pursuant to §101 in this patent case involving systems for collecting payments across different networks, particularly for laundromat systems. Citing Aatrix and looking to the patent’s specification and the complaint, the Court held that the patent and plaintiff Upaid’s complaint identified the development of the patented invention and the improvements over the prior…
Malibu Media, LLC v. Khan, No. 18 C 3028, Slip Op. (N.D. Ill. Mar. 27, 2019) (Leinenweber, J.). Judge Leinenweber granted in part plaintiff Malibu Media’s Fed. R. Civ. P. 12(b)(6) motion to dismiss individual defendants’ declaratory judgment copyright and copyright misuse claims in this BitTorrent case involving use and sharing of pornographic video files. The Court referenced the “deluge” of Malibu Media cases it has seen over the last several years against named and Doe individuals for allegedly using BitTorrent to download and share pornographic movies. The Court held that it would not dismiss defendant’s declaratory judgment copyright noninfringement…
Beckman Coulter, Inc. v. Sysmex Am., Inc., No. 18 C 6563, Slip Op. (N.D. Ill. Apr. 26, 2019) (Rowland, Mag. J.). Magistrate Judge Rowland granted in part defendants’ (collectively “Sysmex”) motion to compel more definite responses regarding plaintiff Beckman Coulter’s dates of conception and reduction to practice in this patent case involving automated software for testing specimens. The Court held that Beckman Coulter had the burden of establishing its conception and reduction to practice and dates of conception and reduction to practice were material to Sysmex’s invalidity defenses. The Court held that Sysmex had to provide “actual or approximate specific…
Flair Airlines, Inc. v Gregor LLC, No. 18 C 2023, Slip Op. (N.D. Ill. Apr. 3, 2019) (Guzman, J.). Judge Guzman adopted the magistrate judge’s report and recommendations (R&R), denying defendants’ motion to dismiss and for sanctions based upon defendant’s alleged spoliation of evidence from plaintiff Flair Airlines’ computer systems. The Court adopted the magistrate’s reasoning that defendants’ claimed spoliation was based upon speculation and that defendants’ lacked direct proof of intentional destruction of evidence. The alleged spoliation was based upon deletion of terminated customer account information. But Flair testified that it routinely deleted such information after a customer terminated…