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In re Innovatio IP Ventures, LLC

United States District Court for the Northern District of Illinois, Eastern Division

September 27, 2013, Decided; October 3, 2013, Filed

MDL Docket No. 2303; Case No. 11 C 9308



JAMES F. HOLDERMAN, District Judge:

Plaintiff and patent-owner Innovatio IP Ventures, LLC ("Innovatio")  [*38] has sued numerous coffee shops, hotels, restaurants, supermarkets, large retailers, transportation companies, and other commercial users of wireless internet technology located throughout the United States (collectively, the "Wireless Network Users"). Innovatio alleges that the Wireless Network Users provide wireless internet access to their customers or use it to manage internal processes, and by doing so infringe various claims of twenty-three patents owned by Innovatio. (Dkt. No. 198; Dkt. No. 451.)1

Cisco Systems, Inc., Motorola Solutions, Inc., SonicWALL, Inc., Netgear, Inc., and Hewlett-Packard  [*39] Co. (collectively, the "Manufacturers") each manufacture electronic devices used by the Wireless Network Users. (Dkt. No. 819, Ex. A ¶ 10.) The Manufacturers have filed declaratory judgment actions against Innovatio seeking a declaration that the Manufacturers' products, and the networks or systems of which those products are a part, do not infringe Innovatio's patents, and that Innovatio's patents are invalid. (See Dkt. Nos. 431, 442; see also 12 CV 426, Dkt. No. 1; 12 CV 2773, Dkt. No. 1.) Innovatio, in turn, has alleged that the Manufacturers all infringe the same claims of the twenty-three patents Innovatio has asserted against the Wireless Network Users. (Dkt. Nos. 311-314.) All the pending cases and the parties thereto were transferred for pretrial coordination before this court by the Judicial Panel on Multidistrict Litigation in this MDL case, No. 2303. (Dkt. No. 1.) For ease of reference (and ignoring that some of them are also declaratory judgment plaintiffs), the court will refer to the Wireless Network Users and the Manufacturers collectively as the "Defendants."

Following discovery, but before claim construction, the parties and the court agreed that the best course toward  [*40] resolving the parties' disputes would be to pause and evaluate the potential damages available to Innovatio if the Defendants are found to infringe the claims of Innovatio's patents. (See Dkt. No. 614 ("2/21/13 Tr.") at 24:6-26:18.) The court and all parties agreed to address damages at this stage of the litigation, before a determination on the questions of validity and infringement. The court hopes that by doing so, the possibility of settlement will be enhanced because the parties will be better able to evaluate the potential risks and benefits of expending additional resources in the litigation.

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2013 U.S. Dist. LEXIS 144061 *; 2013 WL 5593609


Prior History: In re Innovatio IP Ventures, LLC Patent Litig., 956 F. Supp. 2d 925, 2013 U.S. Dist. LEXIS 105554 (N.D. Ill., July 26, 2013)

Disposition: Court determined damage formula to be applied if patent infringement found; motions in limine ruled on.


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Patent Law, Infringement Actions, General Overview, Remedies, Damages, Measure of Damages, Patentholder Losses, Reasonable Royalties, Statutory Bars, On Sale Bar, Public Use Bar