Congratulations to Judge Dow. He left the Northern District bench to become Counselor to Chief Justice Roberts. As Counselor, Judge Dow will focus on “Court-wide policies and initiatives” and “matters of judicial administration.” Our local loss is the country’s game. Anyone who has appeared before Judge Dow knows that he is exceptionally bright and hard working. No doubt those traits will benefit him and the Supreme Court in his new role.
Continue Reading Judge Dow Leaves Federal Bench to Become Chief Judge Roberts’ Counselor

By Dinis Cheian on October 21, 2022
The following article by Dinis Cheian is an interesting analysis of patent extension calculation errors that Cheian claims to have found in the Patent Office’s software. I thought Chicago IP Blog readers would find it interesting.
The Patent Office’s software is miscalculating the expiration extensions of some patents. Typically, a patent expires twenty years after the filing of the underlying application. However, the Patent Office extends patent terms to compensate for certain delays in processing applications. This extension is known as PTA. By default, the PTA is automatically calculated by a computer program…
Continue Reading Patent litigators and patent lawyers representing generic pharmaceutical companies should be on the lookout for Patent Office’s PTA calculation mistakes

Nulogy Corp. v. Menasha Packaging Co. LLC, No. 21 C 1164, Slip Op. (N.D. Ill. Mar. 10, 2022) (Rowland, J.).
Judge Rowland granted defendant Menasha’s motion to dismiss for forum non conveniens and denied defendant Deloitte’s as moot in this trade secret action involving supply chain software.
The parties Agreement had a forum selection clause mandating that Canadian law governed and that any action related to the Agreement be brought in Toronto. While Nulogy’s claims are based in trade secret, not upon the Agreement, the forum selection clause still governed. The Supreme Court requires that forum selection clauses be read…
Continue Reading Trade Secret Plaintiff Cannot Avoid Forum Selection Clause by Dividing Claims

Viahart LLC v. Partnerships & Unincorporated Assocs. identified on schedule A, No. 19 C 8181, Slip Op. (N.D. I.. Apr. 4, 2022) (Alonso, J.).
Judge Alonso denied plaintiff Viahart’s Fed. R. Civ. P. 60(b)(6) motion to reopen its case and to permit limited jurisdictional discovery in this Doe case involving Amazon sales related to Viahart’s BRAIN FLAKES trademark.
The Court previously granted an ex parte temporary restraining order, granted Viahart’s request for service by alternate means and expedited discovery. The Court then granted a preliminary injunction followed by a default judgment. Thereafter defendant Liyunshop appeared and filed a motion to…
Continue Reading Reply Briefs are Not for “Sandbagging”

Rebel Hospitality LLC v. Rebel Hospitality LLC, No. 21-cv-05132, Slip Op. (N.D. Ill. Mar. 16, 2022) (Guzman, J.).
Judge Guzman granted defendant Rebel Hospitality DE’s Fed. R.Civ. P. 12(c) motion to dismiss plaintiff Rebel Hospitality IL’s trademark infringement complaint for lack of personal jurisdiction in this case about REBEL HOSPITALITY marks.
As an initial matter, Rebel Hospitality IL waived any timeliness argument by not contesting the issue in its response brief. Rebel Hospitality DE answered the complaint and included a personal jurisdiction affirmative defense, but did not file a Rule 12(b)(2) motion at that time, as it technically should have…
Continue Reading Trademark Infringement Alone Does Not Create Personal Jurisdiction

Benefit Cosmetics LLC, No. 20-cv-02552, Slip Op. (N.D. Ill. Mar. 28, 2022) (Wood, J.).
Judge Wood denied defendant Oxygen Ocean’s motion to set aside the parties’ settlement agreement in this trademark dispute involving plaintiff Benefit Cosmetics’
This was a Doe trademark case. Oxygen Ocean engaged with the Court and then was voluntarily dismissed allegedly based upon a settlement agreement. Oxygen Ocean, however, subsequently argued that it had not entered into the agreement alleging that the agreement was negotiated by counsel who lacked authority to settle the case or bind Oxygen Oceans. But the Court held that the agreement was valid…
Continue Reading Court Upholds Agreement in Face of Allegations that Defendant Did Not Enter It

Art Akiane LLC v. Art & Soulworks LLC, No. 19-cv-02952, Slip Op. (N.D. Ill. Sep. 16, 2021) (Chang, J.).
Judge Chang ruled on the parties’ choice of law dispute between Colorado and Illinois law in this intellectual property dispute.
Federal courts apply the forum’s choice of law rules. Illinois uses the forum’s law, unless there is a conflict with another state’s law. Illinois also uses its own law for procedural issues. The party seeking a choice of law determination has the burden of proving that there is a conflict between the laws. Where there is a conflict, Illinois follows the…
Continue Reading Illinois Law Applies Over Colorado Based Upon Situs of Events

On Thursday, April 28, 2022 from 12:00 p.m. to 1:15 p.m. CT, the IPLAC’s Copyright Committee is hosting a presentation by musicologist Judith Finell on navigating the relationship between technology, music and copyright law.
This virtual event is $15 for members and $45 for non-members.  Please register by clicking here.
Continue Reading Creativity and Copyright: Navigating the Complex Relationship Between Technology, Music & Copyright Law

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