Dao Health v. Shenzhen Lutejiacheng Technology Co., Ltd., No. 23 C 4885 (N.D. Ill. Dec. 2, 2025) (Durkin, J.)Judge Durkin denied Shenzhen’s motion to amend to add inequitable conduct counterclaims, holding the proposed amendments were futile for failure to plead but-for materiality and specific intent under the Federal Circuit’s tightened Therasense standard.Shenzhen alleged omissions relating to inventorship for earlier patents and a certification issue for a later patent. The Court found no plausible allegations that the Patent Office would not have issued the patents but for the alleged misconduct. The proposed claims focused on purported pecuniary motives and presentation issues,
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R. David Donoghue Blogs
Latest from R. David Donoghue
Court Dismisses Doe Defendants for Lack of Jurisdiction and Improper Joinder After Raising Issue Sua Sponte
Fendi S.R.L. v. Schedule A Defendants, No. 25 C 14553, (N.D. Ill. Dec. 8, 2025) (Coleman, J.)Judge Coleman dismissed Fendi’s Schedule A trademark/copyright complaint without prejudice for lack of specific personal jurisdiction and improper joinder after the Court raised the issues sua sponte.While not reaching the merits of Lanham Act or copyright claims, the Court’s jurisdictional and joinder holdings have immediate significance for Schedule A litigation. The Court reiterated that operating an interactive website alone does not suffice; plaintiffs typically must show at least one Illinois sale and shipment or equivalent purposeful availment tied to the forum. Joinder also faced
Continue Reading Court Dismisses Doe Defendants for Lack of Jurisdiction and Improper Joinder After Raising Issue Sua Sponte
Sidebar with Judge Kim – Effective Motion Practice: Best Practices in Federal Court
On April 17, 2026, from 12:00 p.m. to 1:00 p.m., the Asian American Bar Association of Chicago (AABA Chicago) in collaboration with the U.S. District Court for the Northern District of Illinois, will host a complimentary webinar focusing on federal motion practice. This special program, part of the Sidebar with Judge Kim series, will feature an engaging discussion moderated by Judge Kim and an outstanding panel of Federal Judges including Hon. Manish Shah, Hon. LaShonda Hunt, and Hon. Heather McShain.This event offers attendees a unique opportunity to learn from experienced judges and gain a deeper understanding of motion practice. To register,
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Chip Patent Claims Survive Alice Challenge
HFT Solutions, LLC v. Citadel Securities LLC, (N.D. Ill. Dec. 1, 2025) (Coleman, J.)Judge Coleman denied defendant Citadel’s Fed. R. Civ. P. 12(b)(6) motion to dismiss HFT’s patent case holding that the asserted field programmable gate array (FPGA)-based claims plausibly recite a specific technological improvement and are not directed to an abstract idea under Section 101. FPGAs are microchips that allow for rapid data processing by spreading computations across a chip with “massive fine-grained parallelism.”The asserted method and system claims, centered on FPGA architectures that use a phase-locked loop to synchronize clock signals and reduce latency. As an initial matter,
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Asset Freeze Narrowed, but Preliminary Injunction Maintained in Online Copyright “Schedule A” Case
Innovation Indus., LLC v. The Schedule A P’ships, Slip. Op., No. 25 C 3157 (N.D. Ill. Oct. 24, 2025) (Bucklo, J.)Judge Bucklo granted in part a motion by appearing defendants to vacate a preliminary injunction entered in a “Schedule A” copyright case involving alleged copying of a staged product photo depicting a hummingbird feeder heater operating in freezing conditions. The Court reaffirmed the preliminary injunction (PI) but narrowed the related asset freeze to specific gross-revenue amounts attributable to listings using the infringing image.Regarding likelihood of success, the Court found prima facie validity based upon timely copyright registration in the absence
Continue Reading Asset Freeze Narrowed, but Preliminary Injunction Maintained in Online Copyright “Schedule A” Case
JANUARY 2026 RETAIL PATENT LITIGATION REPORT
NPEs and patent holders continued targeting major retailers in January. Frequent filers included Patent Armory, Wolverine Barcode IP, Content Aware, Intellectual Ventures, VDPP, and Cedar Lane Technologies. Retailers across the spectrum—from big-box to specialty—found themselves named as defendants in infringement actions.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,
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Magistrate Judge McNally Denies Hague Evidence Requests in ANDA-Style Patent Case; Emphasizes Comity, Specificity, and Alternatives
Janssen Prods., L.P. & Pharma Mar, S.A. v. EVER Valinject GmbH, et al., Slip Op, 24 C 7319 (N.D. Ill. Oct. 21, 2025) (McNally, Mag. J.).
Magistrate Judge McNally denied defendants’ motion to issue letters of request under the Hague Evidence Convention seeking documents and depositions from three foreign inventors and a Netherlands research institute related to the asserted patent.
Applying the comity analysis recognized in Aerospatiale and its progeny, the Court found the proposed letters lacking on multiple fronts:
- insufficiently tailored to issues of infringement and validity;
- overly broad and vague (including sweeping requests about undefined “foreign counterparts” and
Listening Party & Reception for Supreme Court Oral Argument
On April 1, 2026, from 9:00 a.m. to 12:00 p.m., the Asian American Bar Association of Chicago (AABA Chicago) in collaboration with the U.S. District Court for the Northern District of Illinois, will host a listening party and reception for the live‑streamed Supreme Court oral argument in the birthright citizenship case, Trump v. Barbara, No. 25-365.This event offers attendees a unique opportunity to experience and engage with an oral argument in real time addressing whether Executive Order No. 14,160 complies with the Citizenship Clause and 8 U.S.C. § 1401(a). The Executive Order provides that children born to temporary visitors or
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Chief Judge Reemphasizes Timeliness & Deference in Affirming Magistrate’s Motion to Compel Denial
Feit Elec. Co., Inc. v. CFL Techs., LLC, Slip Op., No. 13 C 9339, (N.D. Ill. Kendall, C.J. & McShain, Mag. J.) (Oct. 22, 2025).Chief Judge Kendall affirmed Magistrate Judge McShain’s order denying declaratory judgment defendant and patentholder CFL Technologies’ (CFL) motion to compel and for spoliation sanctions. The decision is a cautionary tale on timeliness and strategy in complex patent litigation, particularly in increasingly common long-stayed, complex patent cases.CFL sought broad discovery concerning “all non-dimmable Feit CFLs,” vendor identities, and confidential materials under Local Patent Rule 1.4’s default protective order, reviving disputes first raised in 2018 but not pursued
Continue Reading Chief Judge Reemphasizes Timeliness & Deference in Affirming Magistrate’s Motion to Compel Denial
Northern District Clarifies Pleading & Injunction-Dissolution Standards in Schedule A Case
Quiju Chen v. John Does 1–10, et al., No. 25 C 6611, Slip Op. (N.D. Ill. Oct. 29, 2025) (Tharp, J.).
In an omnibus order Judge Tharp resolved a number of motions in a Lanham Act trademark “Schedule A” Doe case, providing helpful guidance on Fed. R. Civ. P. 8 pleading sufficiency, the standard and burdens for dissolving a Fed. R. Civ. P. 65 preliminary injunction (PI), the handling of Rule 12(b)(1) factual jurisdictional challenges, and Rule 11 sanctions.
The Court denied defendants’ Rule 12(b)(6) motions, finding the complaint met Rule 8’s plausibility standard by alleging a valid registration, unauthorized
Continue Reading Northern District Clarifies Pleading & Injunction-Dissolution Standards in Schedule A Case
DECEMBER 2025 RETAIL PATENT LITIGATION REPORT
The holiday season brought a flurry of patent litigation activity targeting retailers, with particular focus on e-commerce platforms, payment systems, and retail technology. Frequent filers included Alpha Modus, Near Field Electronics, VDPP LLC, and Cedar Lane Technologies, along with continued activity from various NPEs targeting retail operations and technology implementations.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
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Copyright Schedule A Plaintiffs Need Proof of Illinois Sales
Art Ask Agency v. Schedule A Does, No. 25 C 4359, Slip Op. (N.D. Ill. Oct. 9, 2025) (Coleman, J.).Judge Coleman denied plaintiff Art Ask Agency’s motion for default judgment and dismissed Art Ask Agency’s Schedule A copyright case for lack of personal jurisdiction pursuant to Fed. R. Civ. P. 12(b)(2). The Court held that screenshots of Temu listings and allegations that products “could be” sold into Illinois were inadequate without proof of an actual Illinois sale or shipment.Key IP Rulings and Implications. The Court did not reach the merits of the copyright claim because personal jurisdiction was lacking. Consistent
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“Little Prince” Trademark Case Survives Personal Jurisdiction, Alternative Service, and Fair Use Challenges
Societe Pour Loeuvre et la Memoire Dantoine de Saint Exupery – Succession De Saint Exupery-Dagay v. Schedule A Does, No. 25 C 579, Slip Op. (N.D. Ill. Oct. 3, 2025) (Durkin, J.).Judge Durkin denied a Schedule A defendant’s motion to dismiss trademark claims centering on “The Little Prince,” novella rejecting arguments under Fed. Civ. P. R. 12(b)(2), 12(b)(5), and 12(b)(6), finding personal jurisdiction based upon an Illinois sale documented by plaintiff and declined to dismiss on service or fair-use grounds at the pleadings stage.Key IP Rulings and Implications. The complaint plausibly alleged likelihood of confusion where the product listing not
Continue Reading “Little Prince” Trademark Case Survives Personal Jurisdiction, Alternative Service, and Fair Use Challenges
N.D. Ill. Reinforces the “Test-Sale-or-Better” Standard for Web-Based Personal Jurisdiction in Schedule A Cases
Tee Turtle LLC v. Schedule A Does, No. 25 C 2910, Slip Op. (N.D. Ill. Oct. 9, 2025) (Coleman, J.)Judge Coleman denied default judgment and dismissed Tee Turtle’s Schedule A case for lack of personal jurisdiction pursuant to Fed. R. Civ. P. 12(b)(2) after the plaintiff failed to offer evidence of even a single completed Illinois sale, shipment, or order confirmation, despite screenshots showing product listings and the ability to ship to an Illinois address in this copyright case. The decision underscores an increasingly consistent Northern District trend: for online marketplace defendants, a purchase into Illinois—or similarly concrete sales evidence—remains
Continue Reading N.D. Ill. Reinforces the “Test-Sale-or-Better” Standard for Web-Based Personal Jurisdiction in Schedule A Cases
N.D. Illinois Requests Pro Bono Nominations
The Northern District and the Chicago Chapter of the Federal Bar Association are seeking nominations – no later than March 3, 2026 – for exceptional pro bono and public interest representation in civil and criminal matters before the Court.Factors considered include:
- dedication to pro bono or public interest work;
- outstanding achievement resulting from the representation of a large group of indigents, successful representation in a difficult case, outstanding negotiation and settlement skills in achieving a result without trial;
- extraordinary number of hours committed to pro bono work; or
- other distinguished performance.
Nominations must pertain to work performed in the Northern
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NOVEMBER 2025 RETAIL PATENT LITIGATION REPORT
Retail patent litigation activity quieted a bit in November, although several frequent filers continued their campaigns against retailers and their supply chains. Notable activity included cases from Alpha Modus targeting major retail operations and VDPP’s continued assertion of 3D display technology patents.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
Continue Reading NOVEMBER 2025 RETAIL PATENT LITIGATION REPORT