R. David Donoghue

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. Chicago IP Litigation was created to help businesses understand their intellectual property rights and how to drive their cases to positive resolution.

Latest from R. David Donoghue - Page 2

This afternoon, Chief Judge Pallmeyer entered a second general order updating the first general order (which extended all civil deadlines 21 days) and further addressing the “Coronavirus COVID-19 public Emergency” The Court ordered as follows: For all civil cases, all case deadlines whether set by the Federal Rules, Local Rules, Court order or Executive Committee order are extended by 28 days. For deadlines set before the first Order, deadlines have been moved a total of 49 days. Deadlines set between the two orders are only moved 28 days. The Order notes that the Court is accessible by ECF and, in…
Hangzhou Aoshuang E-Comm. Co. v. 008Fashion, et al., No. 19 C 4565, Slip Op. (N.D. Ill. Dec. 3, 2019) (Cole, Mag. J.). Magistrate Judge Cole granted defendants’ (collectively “008Fashion”) motion for an extension to respond to discovery requests and to vacate the Court’s prior order finding that 008Fashion’s responses were late and requiring compliance with Local Rule 37.2. 008Fashion’s motion for extension was filed five minutes before its Court-ordered deadline to respond to the discovery and was noticed for hearing after the deadline, in fact, after 008Fashion’s proposed extended deadline. This was improper. Furthermore, the responses were “extremely late.” The…
Beckman Coulter, Inc. v. Sysmex Am., Inc., No. 18 C 6563, Slip Op. (N.D. Ill. Feb. 26, 2020) (Lee, J.). Judge Lee denied plaintiff Beckman Coulter (“BCI”) Fed. R. Civ. P. 56(d) motion for additional discovery in this patent dispute involving automated laboratory software. Defendants (collectively “Sysmex”) sought summary judgment precluding recovery of pre-suit damages. Sysmex argued that notice – actual or constructive – was required for pre-suit damages because BCI sold product embodying the claims. BCI sought additional discovery arguing that to the extent that Sysmex later argued the BCI products did not embody the claims, there would be…
Life After Hate, Inc. a/k/a ExitUSA v. Free Radicals Project, Inc., No. 18 C 6967, Slip Op. (N.D. Ill. Mar. 3, 2020) (Cole, Mag. J.). Magistrate Judge Cole denied plaintiff ExitUSA’s Local Rule 7.1 motion to exceed the fifteen page limit for its discovery motion in this Lanham Act case. The Court could have denied the motion because plaintiff did not attend the hearing on the motion, but the Court had more compelling reasons to deny it. Cole noted that page limitations benefit litigants as much as the Court. ExitUSA had already gotten a “free” extra-long brief by filing a…
Neurografix v. Brainlab, Inc., No. 12 C 6075, Slip Op. (N.D. Ill. Feb. 26, 2020) (Kennelly, J.) Judge Kennelly denied plaintiffs’ (collectively “Neurografix”) motion for reconsideration of the Court’s order granting defendants (collectively “Brainlab”) summary judgment on lost profits in this patent case tractographies. Fed. R. Civ. P. 54(b) allows a court to reconsider interlocutory rulings at any time before entry of a final judgment, but only to correct “manifest errors of law or fact or to present newly discovered evidence.” The underlying decision found that Neurografix offered no evidence that it had the manufacturing or marketing resources to capitalize…
Yesterday, Chief Judge Pallmeyer entered a general order addressing the “Coronavirus COVID-19 Public Emergency.” The Court ordered as follows: For all civil cases, all case deadlines whether set by the Federal Rules, Local Rules, Court order or Executive Committee order. The Order notes that the Court is accessible by ECF and, in “emergency” situations by phone or video. Civil hearings, trials and settlement conferences set between March 17 and April 3 are stricken, and will be reset by the presiding judge on or after April 6. The Order does not impact deadlines to appeal district court orders. But the Court…
Republic Techs. (NA), LLC v. BBK Tobacco & Foods LLP d/b/a HBI Int’l., No. 16 C 3401, Slip Op. (N.D. Ill. Jan. 14, 2020) (Harjani, Mag. J.) Magistrate Judge Harjani denied defendant HBI’s 28 U.S.C. § 1782 motion for an order to take discovery for use in a foreign proceeding in this trademark proceeding involving the parties’ packaging for cigarette rolling papers. Certain documents produced in this US action were allegedly relevant to a German proceeding involving plaintiffs (collectively “Republic Tobacco”) and an affiliate of HBI. The Court held that § 1782 contemplates a party seeking US discovery for a…
Feit Elec. Co., Inc. v. CFL Techs. LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Dec. 20, 2019) (Coleman, J.). Judge Coleman granted declaratory judgment plaintiff Feit’s motion for reconsideration of the Court’s grant of summary judgement that declaratory judgment defendant CFL’s ‘464 patent was unenforceable  based upon issue preclusion from a prior inequitable conduct determination. An interlocutory appeal was appropriate for the following reason: The issue was purely legal, not requiring an extensive review of the record; The issue of whether the change of law provision applied in this case was different based upon which Federal Circuit case…
Life After Hate, Inc. a/k/a Exit USA v. Free Radicals Proj., Inc., No. 18 C 6967, Slip Op. (N.D. Ill. Sep. 30, 2019) (Kendall, J.). Judge Kendall granted plaintiff Life After Hate a/k/a Exit USA’s (“LAH”) motion for preliminary injunction preventing defendants (collectively “Free Radicals”) from using LAH’s LIFE AFTER HATE, NO JUDGMENT. JUST HELP., and EXIT USA marks in this Lanham Act trademark infringement and cybersquatting dispute. The injunction also prevented use of LAH’s website, twitter handle, YouTube channels and videos. As an initial matter, the Court noted that both plaintiff and defendants provide “critical” services helping people disengage…
Checksum Ventures, LLC v. Dell Inc., No. 18 C 6321, Slip Op. (N.D. Ill. Sep. 30, 2019) (Dow, J.). Judge Dow granted defendant Dell’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Checksum’s patent as invalid as unpatentable pursuant to 35 U.S.C. Section 101, with leave to amend in this patent dispute regarding a checksum data identifier – used to identify whether data is identical. Of particular note, the Court held as follows: The ‘906 patent claimed abstract ideas because it did “nothing more than ‘recite generalized steps to be performed on a computer using conventional computer activity.” Citing…
Seven Oaks Millwork Inc. d/b/a Royal Corinthian v. Royal Foam US, LLC, No. 19 C 6234, Slip Op. (N.D. Ill. Dec. 13, 2019) (Kocoras, J.). Judge Kocoras granted defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction and denied as moot defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss for failure to state a claim in this copyright dispute over a copyrighted product catalog. Plaintiff Royal Corinthian’s operation of an interactive website with sales capabilities did not alone create personal jurisdiction in Illinois. Furthermore, defendants’ use of targeted advertising was not sufficient to create…
TWD, LLC v. Grunt Style LLC, No. 18 C 7695, Slip Op. (N.D. Ill. Oct. 23, 2019) (Kocoras, J.). Judge Kocoras granted in part defendant-counterclaimant Grunt Style’s Fed. R. Civ. P. 12(c) motion for judgment on the pleadings and granted Grunt Style’s Fed. R. Civ. P. 12(f) motion to strike plaintiff-counterdefendant TWD’s affirmative defenses in this Lanham Act case involving the THIS WE’LL DEFEND mark. TWD brought a Lanham Act trademark infringement claim pursuant to the Lanham Act § 1114 and sought injunctive relief pursuant to § 1116. Grunt Style argued that the Court should dismiss the § 1116 claim…
November patent filings increased slowed as the NPEs slow down for the holidays and year-end, as they usually do. Frequent filers included Electronic Receipts Delivery Systems, Hawk Technology Systems, Internet Media Interactive, Landmark Technology, 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…
Crystal Visions, Inc. v. EC Grow, Inc., No. 17 C 7490, Slip Op. (N.D. Ill. Sep. 3, 2019) (Shah, J.). Judge Shah denied declaratory judgement defendant EC Grow’s Fed. R. Civ. P. 56 motion for summary judgement as to likelihood of confusion and denied declaratory judgment plaintiffs / counter-defendants Crystal Visions and Salt Xchange (collectively “defendants”) counter motion in this Lanham Act case involving EC Grow’s LIGHTNING FAST mark for its ice-melt product and defendants’ LIGHTNING PREMIUM ICE MELTER mark for their ice-melt product. As an initial matter, the Court pointed to the import of Local Rule 56.1 statements of…
Luxottica Group S.p.A. v. The Partnerships & Unincorporated Assocs. Identified on Schedule “A,” No. 18 C 2188, Slip Op. (N.D. Ill. Jun. 4, 2019) (Gottschall, J.). Judge Gottschall denied plaintiff Luxottica’s motion for reconsideration that defendants were not properly served as to all but one defendant in this counterfeiting case involving Oakley sunglasses. Of particular note, the Court held as follows: Luxottica’s raised three factual issues: 1) that Alibaba, who hosted defendants stores, would not likely have given defendants’ addresses, 2) Luxottica received defendants’ addresses after filing the complaint, and 3) the names on the return addresses did not match…
Rehco, LLC v. Spin Master, Ltd., No. 13 C 2245, Slip Op. (N.D. Ill. Oct. 28, 2019) (Blakey, J.). Judge  Blakey granted defendant Spin Master’s motion for supplemental claim construction and for summary judgment in this patent case involving remote control toy vehicles. The Court previously construed the terms, but the Federal Circuit reversed for consideration of certain claim terms. First, the Federal Circuit held that “a signal” meant one or more signals, not one signal, as the Court originally determined. The Federal Circuit also remanded for consideration of whether the parties’ dispute on appeal regarding the “predefined-speed” limitation was…