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This case was last updated from PACER on 04/03/2021 at 08:23:53 (UTC).

Northwestern University v. Yaskawa Electric Corporation et al

Case Summary

On February 02, 2021, Northwestern University (“Plaintiff”), represented by Nevin M. Gewertz and Rebecca Taylor Horwitz of Bartlit Beck Herman Palenchar & Scott LLP filed an intellectual property lawsuit against Yaskawa Electric Corporation and Yaskawa America, Inc. (collectively, “Yaskawa Defendants”), seeking damages and other relief under 35 U.S.C. § 284 for allegedly infringing Northwestern University’s intellectual property relating to groundbreaking intelligent assist systems in the field of collaborative robotics. This case was filed in U.S. District Court in the Northern District of Illinois with Judge Steven C. Steeger presiding. 

 

The Plaintiff alleges that the Defendants have infringed one or more claims under United States Patent Numbers 6,928,336 entitled “System and Architecture for Providing a Modular Intelligent Assist System” (“the ’336 Patent”), 6,907,317 entitled “Hub for a Modular Intelligent Assist System” (“the ’317 Patent”) and 7,120,508 entitled “System and Architecture for Providing a Modular Intelligent Assist System” (“the ’508 Patent”) owned by Northwestern University (collectively, the “Patents-In-Issue”). 

 

Plaintiff alleges that “the Yaskawa Defendants have been and are indirectly infringing the ’336 patent by inducing infringement of this patent by others who use the Yaskawa Defendants’ Accused Products” Plaintiff further alleges that “Yaskawa Defendants’ affirmative acts of making, selling, and offering to sell its services and/or products, or components thereof, cause the Yaskawa Defendants’ Accused Product to be used in a manner that infringes the ’336 patent.” Additionally, the Plaintiff alleges that “the Yaskawa Defendants further provide guidance and instruction to third parties to use the Accused Products in their normal and customary way to infringe the ’336 patent.” The Plaintiff also alleges that “The Yaskawa Defendants specifically intend that their customers infringe the ’336 patent. The Yaskawa Defendants perform the acts that constitute induced infringement with knowledge of the ’336 patent and with knowledge or willful blindness that the induced acts would constitute infringement.”

 

Plaintiff further alleges that “the Yaskawa Defendants designed, developed, made, and sold infringing cobot systems despite having knowledge of the Northwestern Patents-In-Issue based, at a minimum on their receipt of a letter from Northwestern’s counsel notifying the Yaskawa Defendants of their infringing conduct.”

 

Plaintiff further claims that “The Yaskawa Defendants’ cobot systems embody and/or use the patented systems, configuration systems, and multi-function hub at issue in this case.” 

 

Three claims for relief laid down by the Plaintiff are for the alleged infringement of one or more claims of the ‘336 Patent, ‘317 and ‘508 Patent respectively.

 

In the prayer for relief, Plaintiff has requested the court to pass an order that the Yaskawa Defendants infringe each of the Patents-In-Issue. Plaintiff further requested the court to hold that the Plaintiff is entitled to damages including a reasonable royalty. Plaintiff also requested the court to order treble damages and assess and award pre and post judgement interests and costs under 35 U.S.C § 284 along with accounting to determine the damages as a result of Yaskawa Defendants alleged infringement, and costs and expenses of the action as provided by 35 U.S.C. § 285.

 

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Case Details Parties Documents Dockets

 

Case Details

  • Case Number:

    1:21-CV-00603

  • Filing Date:

    02/02/2021

  • Case Status:

    Pending - Other Pending

  • Case Type:

    Intellectual Property - Patent

  • Court:

    U.S. District Courts

  • Courthouse:

    Illinois Northern District

Judge Details

Presiding Judge

Steven C. Seeger

 

Party Details

Plaintiff

Northwestern University

Defendants

Yaskawa Electric Corporation

Yaskawa America, Inc.

Attorney/Law Firm Details

Plaintiff Attorneys

Nevin M. Gewertz

Attorney at Bartlit Beck Herman Palenchar & Scott Llp

54 W. Hubbard St, Suite 300

Chicago, IL 60654

Rebecca Taylor Horwitz

Attorney at Bartlit Beck Herman Palenchar & Scott Llp

54 W. Hubbard, Suite 300

Chicago, IL 60654

Meg Elaine Fasulo

Attorney at Bartlit Beck Llp

1801 Wewatta Street, Suite 1200

Denver, CO 80202

Defendant Attorneys

Akihiro Yamazaki

Attorney at Oblon, McClelland, Maier & Neustadt LLP

1940 Duke Street

Alexandria, VA 22314

Eric Wayne Schweibenz

Attorney at Oblon, McClelland, Maier & Neustadt, L.L.P.

1940 Duke Street

Alexandria, VA 22314

Frank J West

Attorney at Oblon, Spivak, McClelland, Maier & Neustadt, P.C.

1940 Duke Street

Alexandria, VA 22314

Colette Lynn Kopon

Attorney at Kopon Airdo, LLC

111 East Wacker Drive, #500

Chicago, IL 60601

 

Court Documents

#18

(#18) WAIVER OF SERVICE returned executed by Northwestern University. Yaskawa Electric Corporation waiver sent on 3/1/2021. (Gewertz, Nevin) (Docket Text Modified by the Clerk's Office.) (jjr, ). (Entered: 03/22/2021)

#17

(#17) MINUTE entry before the Honorable Steven C. Seeger: The Motions for Leave to Appear Pro Hac Vice (Dckt. Nos. #13 , #14 and #15 ) are hereby granted. Attorney Eric Wayne Schweibenz, Akihiro Yamazaki, and Frank J. West are added as counsel for Yaskawa America, Inc. and Yaskawa Electric Corporation. Mailed notice. (jjr, ) (Entered: 03/02/2021)

#16

(#16) MINUTE entry before the Honorable Steven C. Seeger: The Court reviewed a Stipulation to Extend Time filed by the parties. (Dckt. No. #12 ) The parties basically stipulated that Defendants can have more time to answer the complaint, "subject to the approval of the Court." Instead of filing a stipulation, the parties should have filed a motion. Rule 12(a)(1) sets the deadline for answers, and that deadline governs unless the district court sets a different deadline. See Fed. R. Civ. P. 12(a)(1). A party can request a change to a schedule, but a "request for a court order must be made by motion." See Fed. R. Civ. P. 7(b)(1). There are practical reasons for designating a request as a motion, too. A motion shows up differently on the Court's internal system than other filings. So, if a party needs something from the Court, that party should file a motion, just as the Federal Rules require. Putting the procedure aside, the Court adopts the requested extension. Defendants must respond to the complaint by filing a motion or an answer by May 13, 2021. On a related note, the Court observes that Plaintiff filed an Affidavit of Service for Defendant Kaskawa America, Inc. (Dckt. No. #10 ), but not Defendant Yaskawa Electric Corp. Instead, the Stipulation states that Defendant Yaskawa Electric Corp. agreed to waive service of process (Dckt. No. #12 ). Plaintiff should file the executed Waiver of Service of Process form for Defendant Yaskawa Electric Corp. The Federal Rules require the plaintiff to "file[] a waiver." See Fed. R. Civ. P. 4(d)(4). The requisite form is available on the Northern District's website. Mailed notice. (jjr, ) (Entered: 03/01/2021)

#15

(#15) MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0752-17975201. (West, Frank) (Entered: 03/01/2021)

#14

(#14) MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0752-17975162. (Yamazaki, Akihiro) (Entered: 03/01/2021)

#13

(#13) MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0752-17974877. (Schweibenz, Eric) (Entered: 03/01/2021)

#12

(#12) STIPULATION TO EXTEND TIME for Yaskawa Electric Corporation and Yaskawa America, Inc. to move, answer, or otherwise respond to the complaint (Gewertz, Nevin) (Entered: 02/22/2021)

#11

(#11) ATTORNEY Appearance for Defendants Yaskawa America, Inc., Yaskawa Electric Corporation by Colette Lynn Kopon (Kopon, Colette) (Entered: 02/22/2021)

#10

(#10) SUMMONS Returned Executed by Northwestern University as to Yaskawa America, Inc. on 2/8/2021, answer due 3/1/2021. (Gewertz, Nevin) (Entered: 02/09/2021)

1 #11

Exhibit 11

1 #10

Exhibit 10

1 #9

Exhibit 9

1 #8

Exhibit 8

1 #5

Exhibit 5

1 #3

Exhibit 3

1 #2

Exhibit 2

1 #1

Exhibit 1

#1

(#1) COMPLAINT FOR PATENT INFRINGEMENT filed by Northwestern University; Jury Demand. Filing fee $ 402, receipt number 0752-17890063. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11)(Gewertz, Nevin) (Entered: 02/02/2021)

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Docket Entries

  • 03/22/2021
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  • Docket(#18) WAIVER OF SERVICE returned executed by Northwestern University. Yaskawa Electric Corporation waiver sent on 3/1/2021. (Gewertz, Nevin) (Docket Text Modified by the Clerk's Office.) (jjr, ). (Entered: 03/22/2021)

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  • 03/02/2021
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  • Docket(#17) MINUTE entry before the Honorable Steven C. Seeger: The Motions for Leave to Appear Pro Hac Vice (Dckt. Nos. #13 , #14 and #15 ) are hereby granted. Attorney Eric Wayne Schweibenz, Akihiro Yamazaki, and Frank J. West are added as counsel for Yaskawa America, Inc. and Yaskawa Electric Corporation. Mailed notice. (jjr, ) (Entered: 03/02/2021)

    Read MoreRead Less
  • 03/01/2021
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  • Docket(#16) MINUTE entry before the Honorable Steven C. Seeger: The Court reviewed a Stipulation to Extend Time filed by the parties. (Dckt. No. #12 ) The parties basically stipulated that Defendants can have more time to answer the complaint, "subject to the approval of the Court." Instead of filing a stipulation, the parties should have filed a motion. Rule 12(a)(1) sets the deadline for answers, and that deadline governs unless the district court sets a different deadline. See Fed. R. Civ. P. 12(a)(1). A party can request a change to a schedule, but a "request for a court order must be made by motion." See Fed. R. Civ. P. 7(b)(1). There are practical reasons for designating a request as a motion, too. A motion shows up differently on the Court's internal system than other filings. So, if a party needs something from the Court, that party should file a motion, just as the Federal Rules require. Putting the procedure aside, the Court adopts the requested extension. Defendants must respond to the complaint by filing a motion or an answer by May 13, 2021. On a related note, the Court observes that Plaintiff filed an Affidavit of Service for Defendant Kaskawa America, Inc. (Dckt. No. #10 ), but not Defendant Yaskawa Electric Corp. Instead, the Stipulation states that Defendant Yaskawa Electric Corp. agreed to waive service of process (Dckt. No. #12 ). Plaintiff should file the executed Waiver of Service of Process form for Defendant Yaskawa Electric Corp. The Federal Rules require the plaintiff to "file[] a waiver." See Fed. R. Civ. P. 4(d)(4). The requisite form is available on the Northern District's website. Mailed notice. (jjr, ) (Entered: 03/01/2021)

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  • 03/01/2021
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  • Docket(#15) MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0752-17975201. (West, Frank) (Entered: 03/01/2021)

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  • 03/01/2021
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  • Docket(#14) MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0752-17975162. (Yamazaki, Akihiro) (Entered: 03/01/2021)

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  • 03/01/2021
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  • Docket(#13) MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0752-17974877. (Schweibenz, Eric) (Entered: 03/01/2021)

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  • 02/22/2021
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  • Docket(#12) STIPULATION TO EXTEND TIME for Yaskawa Electric Corporation and Yaskawa America, Inc. to move, answer, or otherwise respond to the complaint (Gewertz, Nevin) (Entered: 02/22/2021)

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  • 02/22/2021
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  • Docket(#11) ATTORNEY Appearance for Defendants Yaskawa America, Inc., Yaskawa Electric Corporation by Colette Lynn Kopon (Kopon, Colette) (Entered: 02/22/2021)

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  • 02/09/2021
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  • Docket(#10) SUMMONS Returned Executed by Northwestern University as to Yaskawa America, Inc. on 2/8/2021, answer due 3/1/2021. (Gewertz, Nevin) (Entered: 02/09/2021)

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  • 02/04/2021
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  • Docket(#9) ATTORNEY Appearance for Plaintiff Northwestern University by Meg Elaine Fasulo (Fasulo, Meg) (Entered: 02/04/2021)

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  • 02/04/2021
  • DocketSUMMONS Issued as to Defendants Yaskawa America, Inc., Yaskawa Electric Corporation (jmk, ) (Entered: 02/04/2021)

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  • 02/04/2021
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  • Docket(#8) MAILED Patent Infrindgment report to Patent Trademark Office, Alexandria VA. (jh, ) (Entered: 02/04/2021)

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  • 02/03/2021
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  • Docket(#7) MINUTE entry before the Honorable Steven C. Seeger: An initial status report is due by April 19, 2021. Counsel must read the Standing Order entitled "Initial Status Conferences and Joint Initial Status Reports" on the Court's website. The parties must confer as required by Rule 26(f) about the nature, scope, and duration of discovery. The parties must submit two documents to the Court. First, the parties must file the Joint Initial Status Report under Rule 26(f) on the docket. A Word version of the Joint Initial Status Report is available on the Court's website. All parties must participate in the preparation and filing of the Joint Initial Status Report. The Court requires a joint report, so a filing by one side or the other is not sufficient. Second, the parties must email a Word version of a proposed Scheduling Order under Rule 16(b) to the Court's proposed order inbox. Lead counsel for the parties must participate in filing the initial status report. Plaintiff must serve this Order on all other parties. If the defendant has not been served with process, plaintiff's counsel must contact the Courtroom Deputy at jessica_j_ramos@ilnd.uscourts.gov to reschedule the initial status report deadline. Plaintiff should not file the Joint Initial Status Report before the defendant(s) has been served with process. The parties must discuss settlement in good faith and make a serious attempt to resolve this case amicably. All counsel of record must read and comply with this Court's Standing Orders on its webpage. Please pay special attention to the Standing Orders about Depositions and Discovery. Mailed notice. (jjr, ) (Entered: 02/03/2021)

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  • 02/02/2021
  • DocketCASE ASSIGNED to the Honorable Steven C. Seeger. Designated as Magistrate Judge the Honorable Jeffrey Cole. Case assignment: Random assignment. (ng, ) (Entered: 02/02/2021)

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  • 02/02/2021
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  • Docket(#6) ATTORNEY Appearance for Plaintiff Northwestern University by Rebecca Taylor Horwitz (Horwitz, Rebecca) (Entered: 02/02/2021)

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  • 02/02/2021
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  • Docket(#5) ATTORNEY Appearance for Plaintiff Northwestern University by Nevin M. Gewertz (Gewertz, Nevin) (Entered: 02/02/2021)

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  • 02/02/2021
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  • Docket(#4) L.R. 3.4 Notice of Claims Involving Patents by Northwestern University (Gewertz, Nevin) (Entered: 02/02/2021)

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  • 02/02/2021
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  • Docket(#3) NOTIFICATION of Affiliates pursuant to Local Rule 3.2 by Northwestern University (Gewertz, Nevin) (Entered: 02/02/2021)

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  • 02/02/2021
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  • Docket(#2) CIVIL Cover Sheet (Gewertz, Nevin) (Entered: 02/02/2021)

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  • 02/02/2021
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  • Docket(#1) COMPLAINT FOR PATENT INFRINGEMENT filed by Northwestern University; Jury Demand. Filing fee $ 402, receipt number 0752-17890063. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11)(Gewertz, Nevin) (Entered: 02/02/2021)

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