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.

Lack of Irreparable Harm Dooms Preliminary Injunction Motion

By R. David Donoghue

October 30, 2019

Varex Imaging Corp. v. Richardson Elecs., Ltd., No. 18 C 6911, Slip Op. (N.D. Ill. Sep. 30, 2019) (Blakey, J.). Judge Blakey denied defendant Richardson Electronics’ motion for preliminary injunction in this dispute involving x-ray tubes. Varex claimed that Richardson Electronics sale of refurbished x-ray tubes infringed its patents and irreparably harmed Varex. As an initial matter, the Court noted that both parties claimed claim construction was unnecessary and ignored the Court’s request to decide…

Chicago IP Litigation

Repair versus Reconstruction is a Fact Issue Not Appropriate for Rule 12 Determination

By R. David Donoghue

October 28, 2019

Varex Imaging Corp. v. Richardson Elecs., Ltd., No. 18 C 6911, Slip Op. (N.D. Ill. Aug. 27, 2018) (Blakey, J.). Judge Blakey denied defendant Richardson Electronics’ Fed. R. Civ. P. 12(b)(6) motion to dismiss based upon patent exhaustion in this dispute involving x-ray tubes. Richardson Electronics alleged that plaintiff Varex’s sale of its x-ray tubes exhausted its patent rights, leaving Richardson Electronics free to refurbish them. Richardson Electronics allegedly procures used Varex’s x-ray tubes, opens…

Chicago IP Litigation

Court Construes Audio-Conferencing Claim Terms

By R. David Donoghue

October 25, 2019

Shure, Inc. v. ClearOne, Inc., No. 17 C 3078, Slip Op. (N.D. Ill. Aug. 25, 2018) (Chang, J.). Judge Chang construed the remaining claims in this patent case involving audio-conferencing equipment utilizing beam microphones. Of particular interest, the Court held as follows: The Court construed “Each of the Plurality of Combined Signals Corresponding to a Different Fixed Beam” by holding that “fixed” requires that the beams parameters remain fixed during a conference. The Court construed…

Chicago IP Litigation

Preliminary Injunction Denied Based Upon Likely Invalidity Despite PTAB IPR Decision of No Invalidity

By R. David Donoghue

October 23, 2019

Shure, Inc. v. ClearOne, Inc., No. 17 C 3078, Slip Op. (N.D. Ill. Aug. 25, 2018) (Chang, J.). Judge Chang denied declaratory judgment defendant ClearOne’s motion for reconsideration of the Court’s denial of a preliminary injunction (PI) in this patent case involving audio-conferencing equipment utilizing beam microphones. As an initial matter, the Court held that the parties were both incorrect regarding the Federal Rule that ClearOne’s motion was properly considered under. Rule 59(e) was inapplicable…

Chicago IP Litigation

Irreparable Harm Based Upon Difficulty to Ascertain Impact of Lost Sales

By R. David Donoghue

October 21, 2019

Shure, Inc. v. ClearOne, Inc., No. 17 C 3078, Slip Op. (N.D. Ill. Aug. 5, 2019) (Chang, J.). Judge Chang granted declaratory judgment defendant ClearOne’s preliminary injunction and construed necessary terms of the patent, as the parties had already fully briefed claim construction, in this patent dispute related to in-ceiling beamforming microphone arrays. Of particular note, the Court held as follows: The Court held that the person of ordinary skill in the art need not…

Chicago IP Litigation

Court Rules on Post-Jury Trial Award of Costs

By R. David Donoghue

October 18, 2019

GC2 Inc. v. Int’l Game Tech., No. 16 C 8794, Slip Op. (N.D. Ill. Jul. 29, 2019) (Kennelly, J.). Judge Kennelly ruled on plaintiff GC2’s motion for costs after its jury trial win on copyright infringement and Digital Millennium Copyright Act (DMCA) claims. Of particular note, the Court held as follows: Fees of the Clerk & Marshal The Court award the $400 filing fee. The Court also awarded $398 for service, billed at the Marhal’s…

Chicago IP Litigation

Dog Tug Toy Withstands Section 101 Challenge

By R. David Donoghue

October 1, 2019

This is a cross-post written by my partner Anthony Fuga from Holland & Knight’s Section 101 Blog. I am cross-posting because Anthony’s post is about a Judge Durkin 101 opinion in FYF-JB, LLC v. Pet Factory, Inc., No. 19cv2608 (N.D. Ill.). I am also posting it because Anthony’s 101 analysis at the Section 101 Blog is top-notch. Anyone interested in the current state of 101 law should be reading it. FYF-JB sued Pet Factory…

Retail Patent Litigation

AUGUST 2019 RETAIL PATENT LITIGATION REPORT

By R. David Donoghue

October 1, 2019

August patent filings stayed consistent with June and July in the retail space, as opposed to the usual summer slowdown. Frequent filers included Aeritas, Consolidated Transaction Processing, Digi Portal, Display Technologies, Internet Media Interactive, Intertrust Technologies, Modern Font Applications, Landmark Technology, Sonohm Licensing, Symbology, Transaction Secure and WordLogic. 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…

Retail Patent Litigation

JULY 2019 RETAIL PATENT LITIGATION REPORT

By R. David Donoghue

September 26, 2019

July patent filings stayed consistent with July in the retail space, as opposed to the usual summer slowdown. Frequent filers included Aeritas, AlexSam, Coding Technologies, Lupercal, Parallel Networks, Symbology, Transaction Secure, TMI Solutions, and WordLogic. 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…

Chicago IP Litigation

Aesthetic Appeal of a Patent’s Claimed Design Is Inadequate to Render It Functional

By R. David Donoghue

August 12, 2019

My partners Steve Jedlinski and Anthony Fuga recently wrote a valuable article about a new Federal Circuit decision dealing with functionality and exhaustion issues for design patents. It is republished below with permission. In a relatively rare opinion regarding design patents, the U.S. Court of Appeals for the Federal Circuit weighed in recently on the requirements for design patents in its Automotive Body Parts Association v. Ford Global Technologies, LLC, No. 2018-1613 (Fed. Cir.…

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Lack of Irreparable Harm Dooms Preliminary Injunction Motion

Repair versus Reconstruction is a Fact Issue Not Appropriate for Rule 12 Determination

Court Construes Audio-Conferencing Claim Terms

Preliminary Injunction Denied Based Upon Likely Invalidity Despite PTAB IPR Decision of No Invalidity

Irreparable Harm Based Upon Difficulty to Ascertain Impact of Lost Sales

Court Rules on Post-Jury Trial Award of Costs

Dog Tug Toy Withstands Section 101 Challenge

AUGUST 2019 RETAIL PATENT LITIGATION REPORT

JULY 2019 RETAIL PATENT LITIGATION REPORT

Aesthetic Appeal of a Patent’s Claimed Design Is Inadequate to Render It Functional

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