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 3

Northern District of Illinois Moving to NextGen CM/ECF System

On May 2, 2022, the Northern District is slated to update its CM/ECF system to the NextGen CM/ECF. The Northern District’s Clerk, Thomas G. Bruton, sent ECF filers an email outlining the procedure change. Essentially, every filer is now required to have a personal Pacer account – not a single account for a firm, as an example – and you link your existing Northern District CM/ECF credentials to that Pacer account. Districts across the country are all moving to this system which, conveniently, allows for access to each court’s system using
Continue Reading Northern District of Illinois Moving to NextGen CM/ECF System

Got Docs, LLC v. Kingbridge Holdings, Inc., No. 19 C 6155, Slip Op. (N.D. Ill. Oct. 7, 2021) (Guzman, J.).

Judge Guzman granted defendant Kingbridge’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ conversion and civil conspiracy claims, and denied plaintiffs’ Fed. R. Civ. P. 12(c) motion for judgment on the pleadings as to certain of defendants’ counterclaims in this trade secret dispute.

With respect to plaintiff’s motion for judgment on the pleadings, the Court held as follows:

  • Defendants’ declaratory judgment counterclaim was not identical to its affirmative defense. The counterclaim and the affirmative defense both claim that plaintiffs


Continue Reading Illinois Law Does Not Allow Conversion Based Upon Intangible Assets

Kolbe v. CZS Holdings LLC d/b/a Pur360, No. 20 C 6886, Slip Op. (N.D. Ill. Oct. 19, 2021) (Kendall, J.).

Judge Kendall granted in part counterclaim plaintiff CZS Holdings’ (“Pur360”) Fed. R. Civ. P. 12(b)(6) motion to partially dismiss counterclaim plaintiff’s (“Kolbe”) breach of contract claim in this trade secret misappropriation case.

As an initial matter, the Court noted that Kolbe’s counterclaim and his response brief were not signed as required by Fed. R. Civ. P. 11. The Court accepted the papers despite that, but warned it would reject future papers that were not properly signed.

Kolbe claimed that his
Continue Reading Oral Contract Claims Dismissed

The Northern District is amending the Local Rule 3.2 notice of affiliates procedure to make it more robust and more meaning, including an ongoing requirement to update. For all civil cases filed on or after January 3, 2022 (the rule is not retroactive), parties must file a Notification of Affiliates as a PDF pursuant to Amended Local Rule 3.2 and disclose their affiliates by adding their names using a new event in Pacer.  Parties are required to manually enter the name of each corporate parent or affiliate (individually) with their first appearance, pleading, petition, motion, response, or other request addressed
Continue Reading Northern District Amends Notice of Affiliates Requirement & Adds Obligation to Update

Caddo Sys., Inc. v. Siemens Aktiengesellschaft (AG), No. 20 C 5927, Slip Op. (N.D. Ill. Oct. 20, 2021) (Cox, Mag. J.).
Magistrate Judge Cox granted plaintiffs’ Fed. R. Civ. P. 37 motion to compel, but limited plaintiffs’ questioning of defendants’ (collectively “Siemens”) Fed. R. Civ. P. 30(b)(6) corporate witness to two hours in this patent case.
The Court required that Siemens produce a corporate witness to testify as to communications between Siemens and third party Microsoft surrounding Microsoft’s license from plaintiffs. Siemens had previously withheld certain communications between Siemens’ and Microsoft’s in-house counsel sending Siemens the relevant license as work
Continue Reading Court Awards Limited Additional Deposition Time, but No Attorney’s Fees

Southall v. Force Partners, LLC, No. 20 C 3223, Slip Op. (N.D. Ill. Aug. 31, 2021) (Chang, J.).
Judge Chang granted in part defendant Force Partners’ Fed. R. Civ. P. 12(b)(6) motion to dismiss in this copyright infringement and Digital Millenium Copyright Act (“DMCA”) claims involving a picture of the inside of a restaurant bar.
Of note, the Court held as follows:

  • Force Partners’ claim that Southall never alleged that the photograph at issue was part of the deposit materials. This was a “classic example” of a defendant demanding too much and a plaintiff who could have easily avoided the


Continue Reading Copyright Notice was Sufficient Copyright Management Information to Survive Motion to Dismiss

Feit Elec. Co. v. CFL Techs., LLC, No. 13 C 9339, Slip Op. (N.D. Ill. Sep. 7, 2021) (Gettleman, J.).
Judge Coleman denied declaratory judgment plaintiff Feit’s motion to certify an interlocutory appeal regarding the Court’s denial of Feit’s and granting of declaratory judgment plaintiff CFL’s cross-motion for summary judgment regarding Feit’s inequitable conduct defense in this patent dispute involving compact fluorescent lamps.
Earlier in the year, the Court rejected Feit’s argument that the patent’s inventor — the infamous Ole K. Nilssen — committed inequitable conduct by:

  • claiming small entity status;
  • not disclosing another litigation to the Patent Office;
  • falsely


Continue Reading Interlocutory Appeal Not Warranted Where Accused Infringer Did Not Prove Intent to Deceive

Ouyeinc, Ltd. v. BAAAAI, et al., No. 20 C 3488, Slip Op. (N.D. Ill. Sep. 13, 2021) (Coleman, J.).
Judge Coleman denied defendants’ Fed. R. Civ. P. 12(b)(1), (2) & (6) motion to dismiss plaintiff Ouyeinc’s Lanham Act trademark infringement, counterfeiting and false designation claims regarding Ouyeinc’s PRO-WAX100 marks for use with wax warming products.
As an initial matter, defendants’ alleged infringement, at least as pled, was done within the United States. So, there were not extraterritoriality issues that would take the claims outside the scope of the Lanham Act.
The Court held that defendants waived their argument that Ouyeinc
Continue Reading Alleged US Sales of Trademarked Goods Subject Foreign Defendants to US Claims

Legat v. Legat Architects, Inc., No. 20 C 6830, Slip Op. (N.D. Ill. Jun. 23, 2021) (Gettleman, J.).

Judge Gettleman granted defendant Legat Architects’ motion to stay plaintiff Legat’s Lanham Act claim pending appeal of Legat’s state law claims for breach of contract and unjust enrichment related to his LEGAT trademark for use with architectural services.

Legat alleges that he sold his architecture business to Legat Architects in 1997 and that Legat Architects have used the name without authorization since 2017. Illinois claim preclusion provides that a final judgment from a court of competent jurisdiction bars later claims between the
Continue Reading State Unjust Enrichment Claims Bar Later Federal Lanham Act Claims

On Tuesday, November 9, 2021, from 12:00 p.m. – 1:00 p.m. CT, the Membership and Mentoring Committees of the Intellectual Property Law Association of Chicago (“IPLAC”) are hosting a virtual Intro to IPLAC.  The event featured speakers include:

  • Tiffany Gehrke, IPLAC President-Elect;
  • Ritu Chander, IPLAC Board of Managers; and
  • Kenny Matuszewski, Membership Committee Chair.

The event is free for Members and $25.00 for Non-Members.  Please click here to register.
Continue Reading Introduction to IPLAC

Illinois’ Senators Durbin (D) and Duckworth (D) announced that they have established a screening committee and are accepting applications from those interested in serving as a Federal District Court Judge in the Northern District. The screening committee will consist of:

  • The Honorable David H. Coar (Ret.)(committee chair):  Judge Coar served as a United States District Judge for the Northern District of Illinois for sixteen years, from 1994-2010.   He had previously served the Northern District for eight years as a United States Bankruptcy Judge and for three years as a United States Bankruptcy Trustee.  Judge Coar taught for over a decade at


Continue Reading Screening Committee Established for Northern District of Illinois Vacancies

The United States Courts of Appeals along with the United States District Courts in the Seventh and Eighth Circuits are hosting the Second Annual Bill of Rights Day Contest.
The Contest is open to all students in grades 3-12 in Arkansas, Illinois, Indiana, Iowa, Minnesota, Missouri, Nebraska, North Dakota, South Dakota, and Wisconsin.  Students are encouraged to submit art (videos, visual art, poems, songs) and essays on the Importance of the Bill of Rights.
A grand prize winner from each of the three groups (3-5, 6-8 and 9-12 grade) will be awarded a $500 cash prize, take part in the
Continue Reading U.S. Courts Second Annual Bill of Rights Day Student Contest

The IPLAC’s Mentorship Committee is excited to announce its second annual mentorship session.  The mentoring program pairs experienced attorneys, patent agents, and paralegals with new attorneys, patent agents, paralegals and law students to provide mentoring in the intellectual property legal profession. This is a great opportunity to build both the experience and collegiality of our local IP bar. Please consider taking part in this program.
Registration for the Mentorship program will be open from September 27, 2021 to October 11, 2021.  Mentorship pairings will be announced by October 18, 2021 with a virtual introductory event on October 28, 2021.
Continue Reading IPLAC Mentorship Program 2021-2022

On Tuesday, September 21, 2021, from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago’s (IPLAC) Diversity, Equity, and Inclusion (DEI) Committee is hosting a virtual film discussion on One Night in Miami. The film is a fictional account of one incredible night where Muhammad Ali, Malcolm X, Sam Cooke, and Jim Brown gathered to discuss their roles in the civil rights movement. Issues brought up by the characters and ways in which such issues can be addressed in our IP community will be discussed.  Click here to register for the event.  Once you register, you
Continue Reading Virtual Film Discussion: One Night In Miami

On September 15, 2021, from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (IPLAC) is hosting a webinar focused on “specialty experts” in patent and trade secret litigation cases.  Judge Albright of the Western District of Texas and Ocean Tomo’s James Malackowski will give you their perspectives on the issues.
The event is $15 for IPLAC Members and $45 for Non-Members.  Please click here to register.  Zoom – Event link will be sent after registration.
Continue Reading CLE: Judicial Perspectives on Using Damages Specialty Experts

The Membership Committee of the Intellectual Property Law Association of Chicago (IPLAC) is hosting the first of several informal happy hours on September 2, 2021 from 5:00 p.m. to 7:00 p.m. at George St. Pub in the East Lakeview neighborhood, 2858 N. Halsted St., Chicago, IL 60657.  Food and drinks will be available for purchase.
The event is free for Members and $15.00 for Non-Members.  Please click here to register.
Continue Reading Mingle with the Membership Committee at Happy Hour!