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DISCUSSION

Summary judgment “shall be rendered forthwith if the
pleadings, depositions, answers to interrogatories, and admissions
on file, together with the affidavits, if any, show that there is
no genuine issue as to any material fact and that the moving party
is entitled to a judgment as a matter of law.” Fed. R. Civ. P.
56(c). In considering such a motion, the court construes the
evidence and all inferences that reasonably can be drawn therefrom
in the light most favorable to the nonmoving party. See Pitasi v.
Gartner Group, Inc., 184 F.3d 709, 714 (7th Cir. 1999). “Summary
judgment should be denied if the dispute is ‘genuine’: ‘if the
evidence is such that a reasonable jury could return a verdict for

the nonmoving party.’” Talanda v, KFC Nat’1 Mgmt. Co., 140 F.3d

1090, 1095 (7th Cir. 1998) (quoting Anderson v. Liberty Lobby,

Inc., 477 U.S. 242, 248 (1986)). The court will enter summary
judgment against a party who does not “come forward with evidence
that would reasonably permit the finder of fact to find in [its]
favor on a material question.” McGrath v. Gillis, 44 F.3d 567, 569
(7th Cir. 1995).

Shell argues that the language on the envelope attachment--
stating that Capital City Marketing, Inc. was the offeror and that
Shell was not the offeror--is dispositive. Mr. Smith states in his
affidavit that Shell did not prepare the attachment (nor did

Equilon). (Affidavit of W.W. Smith, 1 3.)


-7-

DATE: October 30, 2003

hn F. Grady, United States District



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Operating Agreement; rather, the parties to the agreement are
Equilon Enterprises, LLC (“Equilon”); Associates National Bank
(“Associates”); Associates Capital Bank, Inc. (“ACB”); and
Associates Credit Card Services, Inc. According to W.W. Smith,
Equilon’s Manager of Credit Card Marketing, Equilon is an affiliate
of Shell. (Affidavit of W.W. Smith, 7 1.) Associates and ACB are
the Issuers of the Shell credit card. (Operating Agreement at 7.)
Pursuant to the Operating Agreement, the Issuers have the exclusive
right to use the lists of Shell credit card holders to market
certain products and services to those card holders, as well as
exclusive control over the “creation, development and production of
all promotional materials” for these products and services. In
some cases, Equilon’s review and/or approval of such offers is
required. (Operating Agreement, 1 3.2.)

Armament filed this action on July 26, 2002. The Second
Amended Complaint contains one count, a patent infringement claim.
We have ruled that Shell need not answer the Second Amended
Complaint unless we deny the instant motion.?

Shell now moves for summary judgment.

2 With its answer to the (First) Amended Complaint, Shell had filed a
counterclaim containing four claims: two claims for declarations of Shell's non-
infringement of the two patents that were at issue; and two claims for
declarations that the patents are invalid. As noted supra n.1, Armament has
dropped its infringement claim as to one of the patents.



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Armament responds with two arguments. The first argument is
that Philip S. Wolin, an attorney in the firm that represents
Armament, believed that Shell was the offeror of the miniature LED
flashlight for several reasons: (1) he “did not notice” the
relevant language regarding the offeror on the attachment included
in his Shell credit card bill; (2) the Shell logo appeared on the
attachment; and (3) the order form instructed that the form be
returned to Shell along with the customer’s bill payment. This
argument is unsubstantial. What Mr. Wolin noticed or failed to
notice regarding the attachment is neither here nor there, and
Armament cites no law in support of its argument. Armament cites
two inapposite trademark cases in which the Seventh Circuit
observed that consumers often ignore disclaimers that purport to
cure consumer confusion. This principle, however, does not support
Armament’s ultimate contention--that Mr. Wolin’s belief trumps the
express language of the offer regarding the offeror’s identity.
Armament also contends that Shell was the true offeror of the
miniature LED flashlight because Equilon, which acted as Shell’s
alter ego, exercised control over the content of the offer pursuant
to the Operating Agreement. Armament fails to submit any evidence,
though, indicating that Equilon was acting as Shell’s alter ego.
From the fact that Shell indirectly or directly owns or controls
all or part of Equilon, it does not automatically follow that

Equilon is Shell’s alter ego. Moreover, for its argument to



Minute one Fora (06/97)
as o. United States District Court, Northern District of Illinois

_

none Maptrate Judge John F. Grady “than Asiged Judge

CASE NUMBER 02 C 5310 DATE October 30, 2003
CASE Armament Systems v. Shell Oil
TITLE

nature of the motion being presented.)

{In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the

MOTION:
DOCKET ENTRY:
qd) i) Filed motion of [ use listing in “Motion” box above.]
(2) o Brief in support of motion due
(3) a Answer brief to motion due . Reply to answer brief due_
(4) Qo Ruling/Hearing on ___—setfor__—_at
(5) o Status hearing{held/continued to] {set for/re-set for]on__———s set for at
(6) o Pretrial conference[held/continued to) [set for/re-set for]on__——ssetfor_— ss at_—
() o Trial[set for/re-set for] on __—_aat
(8) a {Bench/Jury trial] [Hearing] held/continued to___—__aat
(9) a This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to}
OC FRCP4¢n) O General Rule21 O FRCP4i(a)(l) 0 FRCP41{a)(2).
(0) +o {Other docket entry] Shell Oil Company’s motion for summary judgment [ J is granted. ENTER
MEMORANDUM OPINION.
(e3)) [For further detail see order (on reverse side of/attached to) the original minute order.] -

No notices required, advised in open court.

No notices required.

x | Notices MAILED by judge's staff.
Notified counsel by telephone.

Docketing to mai) notices.
Mail AO 450 form.

Copy to ‘
4uN03 LluLsia “sn
KAM deputy's
inkials ~THaientinid voleivedin GO
central Clerk's Office mailing deputy initials
TResetved for use by abe Cont) J

L-U4


-6-
succeed, Armament would have to submit evidence showing that there
is a genuine issue that Equilon--and not Capital City Marketing,
Inc.~-was offering the flashlight for sale, which Armament has
failed to do.

Armament requests additional discovery pursuant to Federal
Rule of Civil Procedure 56(f) “on those issues directly pertinent
to the question of who made the offer to sell the LED Light.”
(Response at 7.) Rule 56(f) provides that a non-movant May avoid
summary judgment by stating in an affidavit why it cannot currently
present facts showing a genuine issue for trial, but Armament has
failed to include such an affidavit in its response. In addition,
Armament offers no reason why further discovery might develop a
genuine issue regarding Shell’s involvement in the merchandise
offer. (The documents that Armament has received in discovery that
show Equilon’s approval of the merchandise offer do not bear on the
alter ego issue.) Accordingly, Armament’s request for additional
discovery on this issue is denied.

Because Armament has failed to present evidence demonstrating
that Shell was the offeror of the miniature LED flashlight, Shell
is entitled to summary judgment.

CONCLUSION

For the foregoing reasons, Shell Oil Company’s motion for

summary judgment is granted.


02-5310.031-JCcD October 30, 2003

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

ARMAMENT SYSTEMS AND PROCEDURES, )
INC., )

Plaintiff,

v. No. 02 C 5310
SHELL OIL COMPANY,

Defendant.

Deere

Noy 03
MEMORANDUM OPINION AND ORDER 2003

Before the court is Shell Oil Company’s motion for summary

judgment. For the reasons stated below, the motion is granted.
BACKGROUND

Plaintiff Armament Systems and Procedures, Inc. (“Armament”)
brings this patent infringement action against Shell Oil Company
(“Shell”) .? Armament manufactures and sells handheld miniature LED
flashlights and owns a “Miniature LED Flashlight” patent, U.S.
Patent No. 6,190,018. Armament alleges that Shell has
“manufactured, imported, used, offered to sell and/or sold handheld

Miniature LED flashlights” that infringe Armament’s patent.

¥ On May 12, 2003, Armament filed a Second Amended Complaint to add two
defendants: Suncoast Merchandise Corporation and Capital Cities Marketing, Inc.
Armament has stipulated that the addition of these two defendants does not affect
the instant motion.

Armament’s prior complaints included an additional patent infringement
claim pertaining to U.S. Patent No. 6,357,890. That claim is not asserted in the
Second Amended Complaint.

3h


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(Second Amended Complaint, @ 15.) (Armament now concedes that it
has no evidence that Shell manufactured, imported, or used the
flashlights; its patent claim hinges on the “offered to sell” and
“sold” allegations.)

Armament’s claim arises from a merchandise offer included in
an attachment to the envelope included with a Shell credit card
billing statement. One of the items offered for sale in the
attachment was a “Blue Crystal LED Light and Key Organizer” that
plaintiff contends is within the scope of its patent. The
attachment was comprised of three small rectangular sheets of paper
attached at perforations (one of the sheets may have been the
envelope flap). One portion consisted of an order form and one
merchandise offer; the other two portions contained six merchandise
offers total. The top of the order form included the phrase “An
Offer for Cardmembers from Capital City Marketing, Inc.” The left
portion of the order form stated as follows:

Capital City Marketing, Inc. (CCMI) and its providers, as

applicable, are responsible for this merchandise offer.

Citibank (South Dakota), N.A. and its related companies,

and Shelli are not affiliated with CCMI and are not

responsible for this merchandise offer. By responding to

this offer, you will be disclosing all of the information

requested above, including your Shell account number, to

a company outside the Citigroup family of companies.

Please allow 4 to 6 weeks for delivery. For inquiries,

please call 1-800-893-7784 M-F 9a-5p EST.
(Shell’s Statement of Uncontroverted Facts, Ex. A.)

Shell has produced the “Operating Agreement” that pertains to

the Shell credit card. Shell itself is not a party to the