Chicago IP Litigation

Blog Authors

Latest from Chicago IP Litigation

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 November 4th to November 5th, from 7:30 a.m. to 4:15 p.m. CT, the UIC John Marshall Law School Center is hosting its 65th Annual Intellectual Property Law Conference.  The virtual conference offers an impressive lineup of Moderators and Panelists covering an expansive list of topics.  Sessions for each day are listed below:

  • Welcome & Don Dunner Leadership Award
  • Rethinking Innovation
  • The State of IP Law & Policy
  • Global Patent Issues
  • Copyright: The New Normal
  • Vaccines, IP, and Global Equity
  • Technology & Privacy
  • The Federal Circuit in Review
  • Forces of Change
  • Standard Essential Patents

 DAY 2

  • Global IP

Continue Reading 65th Annual Intellectual Property Law Conference

On Thursday, September 23, 2021, from 12:00 p.m. to 1:00 p.m. CT, the Corporate Committee of the Intellectual Property Law Association of Chicago (“IPLAC”) is hosting a panel discussion focusing on how to transition and succeed as an in-house counsel.  The panel is being moderated by Kara DeAngelis, McDonald’s Corporation Counsel, Privacy & Information Governance.  Panel members include:

  • Alexandra Kleiman, Momofuku, General Counsel and VP of Business Ventures;
  • Ann Palma, Groupon, Senior Corporate Counsel, Intellectual Property;
  • Megan Sindel Agnew, Heyday, Head of Legal and
  • Susan Lester, McDonald’s Corporation, Senior Counsel, Marketing & Intellectual Property.

The event is free for IPLAC
Continue Reading Thinking about Going In-House?

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!

On July 14, 2021 from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (“IPLAC”) and the Illinois Intellectual Property Alliance (“ILIPA”) will host a panel discussion focusing on NFTs and some of the many questions revolved around non-fungible tokens.  The panel is moderated by Alex Karana, Karana IP Law, LLC.  Panel members include:

  • Rumi Morales, Partner & Board Member, Outlier Ventures
  • Zack Smolinski, Principal, Smolinski Rosario Law P.C.

This event is free for IPLAC and Non-Members.  Please register by Clicking Here.  Zoom – Event link will be sent after registration.
Continue Reading Fun with Non-Fungibles: What Can NFTs Do for Me?

CampaignZERO, Inc. v. StayWoke, Inc., Slip Op., No. 20 C 6765 (N.D. Ill. Dec. 4, 2020) (Valderrama, J.).
Judge Valderrama granted in part plaintiff CampaignZERO’s motion for expedited discovery related to its motion for a preliminary injunction in this trademark dispute involving CampaignZERO’s CAMPAIGNZERO mark.
Of particular note, the Court held as follows:

  • As an initial matter, filing a preliminary injunction motion alone does not warrant expedited discovery.
  • While CampaignZERO’s number of discovery request was small — a dozen document requests and ten interrogatories — the requested information was broad.
  • While it was evidence of confusion, it was not clear

Continue Reading Court Allows Limited Actual Confusion Discovery for Lanham Act Preliminary Injunction

Norix Group, Inc. v. Correctional Techs., Inc. d/b/a Cortech USA, et al., Slip Op., No. 20 C 1158 (N.D. Ill. Jan. 19, 2021) (Feinerman, J.).
Judge Feiinerman granted in part defendant Cortech’s motion to stay pending ex parte reexam and denied Coretech’s Fed. R. Civ. P. 12(b)(6) in this patent case involving “intensive use” beds and shelving units used in prisons.
First, the Court denied the motion to dismiss claiming Norix had improperly describe the patents and applications to which it claimed priority. Realizing its issues, Norix sought and received a certificate of correction from the Patent Office. That certificate
Continue Reading Claims Susceptible to Multiple Meanings Cannot be Decided on Rule 12 Motions

Shenzhen Buxian Network Tech. Co., Ltd. d/b/a Veken v. Bodum USA, Inc., Slip Op., No. 20 C 1726 (N.D. Ill. Jan. 25, 2021) (Aspen, Sen. J.).
Judge Aspen denied plaintiff’s motion to certify an interlocutory appeal in this trade dress dispute involving French press coffee makers.
A jury previously held that the identical French press Chambord design was non-functional and to have secondary meaning. The Court held that plaintiff had not met its burden of proving a reason to overcome the jury’s holding.
As an initial matter, there was no dispute matter of law. Plaintiff sought to overturn a jury
Continue Reading Interlocutory Appeal Not Appropriate to Reconsider Jury Verdict from Earlier Case

Putco, Inc. v. Carjams Com, Inc., Slip Op., No. 20 C 50109 (N.D. Ill. Feb. 10, 2021) (Jensen, Mag. J.).
Magistrate Judge Jensen granted in part defendant Carjams’ motion for a protective order concerning plaintiff Putco’s Fed. R. Civ. P. 30(b)(6) notice in this patent dispute.
Of particular note:

  • Carjams’ claim that Putco should be limited to ten topics, without some agreement by the parties, was not supported by the Federal Rules or the law.
  • The Court limited the temporal scope of the deposition to 2014 (before the patent’s filing date and Carjams’ first accused sales). Putco’s 2008 date limitation

Continue Reading Court Determines Scope of Corporate 30(b)(6) Patent Witness Topics

Got Docs, LLC v. Kingsbridge Holdings, Inc., Slip Op., No. 19 C 6155 (N.D. Ill. Feb. 2, 2021) (Guzman, J.).
Judge Guzman denied defendant Kingsbridge’s summary judgment motion and granted plaintiff Got Docs’ summary judgment in this trade secret case involving manage-document business.
The parties disputed whether plaintiff Got Docs’ managers were authorized to file suit. But even if the managers had stepped down from their roles, Get Docs’ Operating Agreement required that managers remain until their successor was appointed. So, while Get Docs’ managers may have resigned, they had not been replaced and, therefore, had authority to initiate the
Continue Reading Operating Agreements Allows Resigned Managers to Initiate Trade Secret Suit

Unidentified Patent Holder v. Does 1-24, Slip Op., No. 21 C 514 (N.D. Ill. Feb. 6, 2021) (Kennelly, J.).
Judge Kennelly ordered unidentified plaintiff (Doe Plaintiff) to show cause why the patent case should not be dismissed.
The Court noted that in many ways this was a typical “Schedule A” case in which a plaintiff IP holder sues multiple Doe defendants for alleged knock-off sales. The case was different in two important respects: 1) plaintiff sought to file anonymously; and 2) the asserted IP was a design patent, instead of a trademark.
Initially, the Court denied Doe Plaintiff’s motion to
Continue Reading Plaintiff Must Justify Anonymous Patent Suit Filing

The Northern District of Illinois has begun to allow electronic filing of non-sealed digital audio/video exhibits (MP4, MP3, MOV, etc.). The exhibits will be available for purchase and download via the Certified Copy Desk.
If you want to file a document:

  • Go to the Northern District’s digital submission page and fill out the form;
  • Upload the digital audio/video file(s) (note that it will not accept PDFs, presumably because they are neither audio nor video); and
  • Click “submit.” when you are done.
  • Within 24 business hours, an entry will appear on the docket confirming the exhibit was received.
    To purchase electronically-filed
    Continue Reading Northern District of Illinois Allows Filing of Non-Sealed Audio/Video Exhibits