In order to succeed on a claim for unfair competition under Section 43(a) of the Lanham
Act (15 U.S.C. §1125 (a)), a plaintiff must prove: 1) the defendant made a false or misleading
statement in an advertisement or promotion; 2) the misrepresentation actually deceived or is
likely to deceive a substantial segment of the audience; 3) the misrepresentation involved a
subject that is material to the decision to purchase the goods; 4) the statement related to goods
entering into interstate commerce; and 5) the statement resulted in actual or probable injury to
the plaintiff. Zenith Electronics Corp. v. Xzec, Inc., 182 F.3d 1340, 1348 (Fed. Cir. 1999). A
§43(a) claim may be based on bad faith allegations of patent infringement. Jd. at 1343-44.

In this case, we deny the motion for summary judgment because the record is replete
with issues of material fact. Issues of material fact include, but certainly are not limited to: (1)
whether the PCC defendants entered into a joint venture, and whether this makes them jointly
liable for the torts of their joint venture; (2) whether PCC defendants made representations that
the plaintiffs product infringed an existing anti-tarnish patent that caused injury to the plaintiff's
business; and (3) if PCC defendants made the above representations, whether they were made in
bad faith, an essential element to plaintiff’s claims. Therefore, the PCC defendants’ motion for
summary judgment on Counts I and Il is denied.

As to Counts Il, IV, and V for declaratory judgment of non-infringement, invalidity, and
unenforceability of defendants’ 6,412,628 patent, the plaintiff does not contest the entry of
judgment in favor of the PCC defendants on these counts because the PCC defendants neither
own the patent nor have an exclusive license under it. These counts, however, will remain
against the other defendant, Calgon Carbon Corporation, the owner of the patent. Therefore,

PCC defendants’ motion for summary judgment on Counts III, IV, and V is granted.


allegations to QVC. Counts III, IV, and V ask for a declaratory judgment of non-infringement,

invalidity, and unenforceability of defendants’ 6,412,628 patent of a carbon activated anti-

tarnish cloth. The PCC defendants have moved for summary judgment on all five counts.
DISCUSSION

Summary judgment is appropriate when there is no genuine issue as to any material fact
and the moving party is entitled to judgment as a matter of law. See Howard v. Lear Corp. Eeds
and Interiors, 234 F.3d 1002, 1004 (7th Cir. 2000); Mills v. Health Care Serv. Corp., 171 F.3d
450, 458 (7th Cir. 1999). When examining the evidence, the Court should resolve all
ambiguities and draw all inferences in favor of the non-moving party. Day v. Colt Constr. &
Dev. Co., 28 F.3d 1446, 1453 (7th Cir. 1994).

Counts I and Il allege causes of action for tortious interference with plaintiff's contract
and/or business relationship and unfair competition. In order to succeed on a claim for tortious
interference with a business relationship or a contract, a plaintiff must prove: 1) plaintiff had a
reasonable expectation of entering into a valid business relationship or had a valid contract ; 2)
the defendant had knowledge of the expectation or the contract; 3) the defendant purposely
interfered with the realization of the business expectancy or contract; and 4) the plaintiff was
damaged by defendant’s interference. Frederick v. Simmons Airlines, Incorporated, 144 F.3d
500, 502 (7th Cir. 1998); Mannion v. Stahlings & Co., Inc., 204 Ill.App.3d 179, 187-88; 561
N.E.2d 1134, 1139 (App. Ct. Ill. 1990). Tortious interference claims may be based on bad faith
accusations of infringement. See Dow Chemical Co. v. Exxon Corp., 139 F.3d 1470, 1476 (Fed.
Cir. 1998). A plaintiff may prove bad faith by showing that the patent holder made infringement
accusations that were false or that were made with disregard of whether they were true. See
Mikohn Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891, 897 (Fed. Cir. 1998).

3


CONCLUSION
For the foregoing reasons, the PCC defendants’ motion for summary judgment (# 42-1)
pursuant to Federal Rule of Civil Procedure 56 is granted in part and denied in part. Judgment is
entered in favor of Defendants Product Concepts Company and Mark Schneider on Counts II,

IV and V of Plaintiff's Complaint. The motion is denied in all other respects.

bl) Ch

Wayne R. Andersen —
United States District Judge

It is so ordered.

Dated: Ib 00D


Minute Ordgr Form (06/97),

United States District Court, Northern District of Dlinois

Name of Assigned Judge Sitting Judge if Other
or Magistrate Judge Wayne R. Andersen than Assigned Judge
CASE NUMBER 2 C 7345 DATE 9/16/2003
CASE For Your Ease Only, Inc. ys. Calgon Carbon Corporation
TITLE
[in the following box (a) indicate the party filing the motion, ¢.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented}

DOCKET ENTRY:

(1) Oo Filed motion of [ use listing in “Motion” box above.]

(2) a Brief in support of motion due

(3) Oo Answer brief to motion due. . Reply to answer brief due

(4) a Ruling/Hearing on set for at

(5) oO Status hearing[held/continued to] [set for/re-set for] on set for at

(6) 0 Pretrial conference[held/continued to] [set for/re-set for] on set for at :

(7) Qa Trial[set for/re-set for] on at

(8) Qo (Bench/Jury trial} [Hearing] held/continued to at

(9) o This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

OOFRCP4(m) OLocal Rule 41.1 CFRCP41(a)(1) O FRCP41(a)(2).

(10) Ml [Other docket entry] Enter MEMORANDUM, OPINION AND ORDER: The PCC defendants’
motion for summary judgment [42-1] pursuant to FRCP 56 is granted in part and denied in part.
Judgment is entered in favor of defendants Product Concepts Company and Mark Schneider on
Counts III, IV and V of plaintiff’s complaint. The motion is denied in all other respects.

ab ff (For further detail see order attached to the original minute order.]

No notices required, advised in open court.
No notices required. umber of notices
Notices mailed by judge’s staff.
Notified counsel by telephone.
| Docketing to mail notices.
af | Mail AO 450 form. 4yngd ice s
Copy to judge/magistrate judge. as
raaava Ui
courtroom
TSA deputy’s ,
initials on “

Ata.

Date/time received in
central Clerk's Office

mailing deputy initials



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

FOR YOUR EASE ONLY, INC.,
Plaintiff,

v. No. 02 C 7345

CALGON CARBON CORPORATION,

PRODUCT CONCEPTS COMPANY
and MARK SCHNEIDER,

Wayne R. Andersen
District Judge

Defendants.

SEP 1 8 2003

CALGON CARBON CORPORATION,
Counterclaim Plaintiff,
v.

FOR YOUR EASE ONLY, INC., and

)
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LORI GREINER, )
)
)

Counterclaim Defendants.
MEMORANDUM, OPINION AND ORDER

This matter is before the Court on the motion of two of the defendants, Product Concepts
Company and Mark Schneider (“PCC defendants”), for summary judgment pursuant to Federal
Rule of Civil Procedure 56. For the following reasons, the motion is granted in part and denied
in part.

BACKGROUND

This is an action relating to U.S. Patent No. 6,412,628 (“the ‘628 patent”) owned by

defendant/counter-plaintiff Calgon Carbon Corporation (“CCC”). The ‘628 patent claims an

“Apparatus For Preventing The Formation Of Metal Tamish,” and employs a carbon-based

(7


technology to prevent tarnish from forming on items such as jewelry. A variety of consumer
products are sold by CCC employing the technology claimed in the ‘628 patent, in particular
jewelry boxes marketed under the “PreZerve” trademark.

Plaintiff/counter-defendant, For Your Ease Only, Inc. markets and sells a product known
as the “Silver SafeKeeper,” an anti-tarnish jewelry box which is currently at issue in this
litigation. Both CCC and plaintiff have marketed their products using the services of the QVC
Shopping Network (“QVC”), which is carried by numerous cable outlets throughout the country,
and which maintains a website on which the products it markets can be purchased. Plaintiff's
co-founder and President, Lori Greiner, has personally appeared on QVC television to promote
the sale of For Your Ease Only’s Silver Safekeeper products, and it’s Silver Safekeeper products
are all advertised on the QVC website as the “Silver Safekeeper by Lori Greiner.”

After becoming aware of the Silver Safekeeper product, CCC launched an investigation
and became concerned that the product would infringe the technology claimed in the ‘628 patent.
CCC informed both plaintiff and QVC of its concerns. Plaintiff later filed suit in this Court
seeking a declaratory judgment of noninfringement and invalidity of the ‘628 patent, along with
a claim for tortious interference with contractual relations based on CCC’s discussions with
QVC. CCC then filed a counterclaim for infringement of the ‘628 patent against plaintiff and
Lori Greiner individually.

There are five counts pending against the PCC defendants and Calgon Carbon
Corporation. Count I asserts tortious interference with the plaintiff's contract and/or business
relationship with QVC, a 24-hour cable TV channel that sells both plaintiff's and defendants’
anti-tarnish jewelry boxes. Count II alleges unfair competition including misrepresentation
under section 43(a) of the Lanham Act, 15 U.S.C. §1125 (a) for making bad faith infringement

2