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.

Inaugural Don Dunner Leadership Award

By R. David Donoghue

February 19, 2020

The UIC John Marshall Center for Intellectual Property, Information & Privacy Law has announced the inaugural Don Dunner Leadership Award to be presented at its 64th annual IP Conference on Friday, November 20, 2020 in Chicago. As someone who had the privilege of briefly working for Don in law school, I am excited for this award to help carrying on his legacy. The nomination process will be laid out later this year. …

Chicago IP Litigation

Interlocutory Appeal Granted Based Upon Contradictory Federal Circuit Law

By R. David Donoghue

February 17, 2020

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…

Chicago IP Litigation

Fourteen Month Delay Does Not Sink Preliminary Injunction

By R. David Donoghue

February 12, 2020

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…

Chicago IP Litigation

Rule 12 101 Patentability Determination is Appropriate Where Claims & Specification Raised No Factual Inventiveness Issues

By R. David Donoghue

February 10, 2020

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…

Chicago IP Litigation

Single sale into Illinois Not Sufficient for Personal Jurisdiction

By R. David Donoghue

February 5, 2020

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…

Chicago IP Litigation

CLE: Meet Chicago’s Newest Federal Magistrate Judges

By R. David Donoghue

February 3, 2020

The Chicago chapter of the Federal Bar Association is hosting a CLE program designed to introduce the Northern District of Illinois’ newest magistrate judges on Tuesday, February 25, 2020 from 12pm until 1:30pm. Lunch will be provided, along with 1.25 hours of credit, pending approval. The event is being hosted at the Chicago Bar Association, 321 S Plymouth Court, in Chicago. The magistrates (identified below) will speak and answer questions about settlement conference advocacy, arguing…

Chicago IP Litigation

Twombly / Iqbal Pleading Applies to Affirmative Defenses

By R. David Donoghue

January 29, 2020

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…

Retail Patent Litigation

NOVEMBER 2019 RETAIL PATENT LITIGATION REPORT

By R. David Donoghue

January 28, 2020

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…

Chicago IP Litigation

Not Following Local Rule 56.1 Statement of Material Fact Requirements Can be Fatal

By R. David Donoghue

January 27, 2020

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’…

Chicago IP Litigation

Reconsideration Improper Vehicle for Rehashing Old Facts and Legal Arguments

By R. David Donoghue

January 22, 2020

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…

R. David Donoghue

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Inaugural Don Dunner Leadership Award

Interlocutory Appeal Granted Based Upon Contradictory Federal Circuit Law

Fourteen Month Delay Does Not Sink Preliminary Injunction

Rule 12 101 Patentability Determination is Appropriate Where Claims & Specification Raised No Factual Inventiveness Issues

Single sale into Illinois Not Sufficient for Personal Jurisdiction

CLE: Meet Chicago’s Newest Federal Magistrate Judges

Twombly / Iqbal Pleading Applies to Affirmative Defenses

NOVEMBER 2019 RETAIL PATENT LITIGATION REPORT

Not Following Local Rule 56.1 Statement of Material Fact Requirements Can be Fatal

Reconsideration Improper Vehicle for Rehashing Old Facts and Legal Arguments

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