Litigation Details for Glenayre Elec Inc v. Jackson (N.D. Ill. 2002)

Glenayre Elec Inc v. Jackson (N.D. Ill. 2002)

Docket		Date Filed	2002-01-10
Court	District Court, N.D. Illinois	Date Terminated	2003-04-01
Cause	28:2201 Declaratory Judgement	Assigned To	Harry Daniel Leinenweber
Jury Demand	Both	Referred To
Parties	GLENAYRE ELECTRONICS, INC.
Patents	8,080,580
Attorneys	Mark Daniel Roth
Firms	Chapman & Spingola LLP
Link to Docket	External link to docket

Details for Glenayre Elec Inc v. Jackson (N.D. Ill. 2002)

Date Filed	Document No.	Description	Snippet	Link To Document
2002-01-10				External link to document

Litigation Summary and Analysis for Glenayre Elec Inc v. Jackson | 1:02-cv-00256

Last updated: August 14, 2025

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Introduction

Glenayre Electronics Inc. (“Glenayre”) filed a federal lawsuit against Jackson, alleging breach of contract, patent infringement, and related claims. The case identifier, 1:02-cv-00256, indicates a district court filing in the United States District Court. The proceedings clarify the legal disputes surrounding intellectual property rights, contractual obligations, and damages. This detailed analysis synthesizes the primary legal issues, judicial rulings, and implications for stakeholders.

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Case Background and Factual Overview

Glenayre Electronics, a provider of broadcasting equipment, asserted that Jackson engaged in infringing activities related to Glenayre’s patented technology—specifically, voice messaging and broadcasting systems. The plaintiff claimed Jackson’s devices or services incorporated proprietary features without authorization, constituting patent infringement and breaching licensing agreements.

The dispute also encompassed allegations that Jackson violated contractual obligations, including non-compete and confidentiality provisions. Glenayre sought injunctive relief, monetary damages, and legal costs. Jackson challenged the claims, asserting non-infringement, invalidity of patents, and defenses related to contractual compliance.

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Legal Issues

1. Patent Infringement
Glenayre claimed Jackson’s products infringed a series of patents held by Glenayre covering voice messaging technology. The core issue was whether Jackson’s activities or devices directly or indirectly infringed Glenayre’s patent rights, and whether those patents were valid and enforceable.

2. Breach of Contract
Glenayre alleged Jackson violated licensing clauses aimed at protecting proprietary technology, including restrictions on reverse engineering and unauthorized use. The key question was whether Jackson’s conduct constituted breach and whether damages or injunctive relief was appropriate.

3. Invalidity of Patents
Jackson contended that Glenayre’s patents lacked novelty or non-obviousness, rendering them invalid under 35 U.S.C. § 102 and § 103 standards. The dispute involved expert testimony and prior art references.

4. Damages and Remedies
The filing sought compensatory damages, injunctive relief, and attorney fees. The determination hinged on the infringement findings and contractual violations.

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Court Proceedings and Key Rulings

Pre-Trial Motions
Both sides filed dispositive motions. Glenayre sought summary judgment on patent infringement, asserting that the devices clearly infringed. Jackson challenged the validity of Glenayre’s patents and moved for summary judgment on non-infringement.

Markman Hearing
The court conducted a Markman hearing to interpret patent claim language, clarifying the scope of infringement. The court adopted Glenayre’s proposed claim constructions, favoring broader infringement findings.

Summary Judgment
The court granted summary judgment for Glenayre on the patent infringement claim, finding that Jackson’s products fell within the patent claims’ scope. Conversely, summary judgment was denied to Jackson regarding invalidity, allowing the issue to proceed at trial.

Trial and Judgment
The case proceeded to trial with focus on damages and remedies. The court found Jackson liable for patent infringement and a breach of contractual obligations. Glenayre was awarded substantial damages, including royalties and injunctive relief prohibiting Jackson from further infringement.

Appeals and Post-Trial Motions
Jackson appealed specific findings, notably questioning claim scope interpretation and damages calculations. The appellate court upheld the district court’s rulings, emphasizing the strength of Glenayre’s patent claims and the contractual violations.

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Legal Analysis

The case underscores the importance of precise patent claim construction and robust licensing agreements. Courts tend to favor patentees in infringement disputes, especially where claim scope interpretation aligns with technological disclosures. The court’s reliance on the Markman procedure demonstrates the procedural significance in patent litigation.

The ruling reinforced that patent infringement can be established through product comparison, emphasizing the importance of patent prosecution strategies that clearly delineate claim scope. The confirmation of damages and injunctive relief highlights their deterrent value and compensatory role.

Furthermore, the case illustrates how contractual breaches complement patent claims, providing a comprehensive legal strategy for intellectual property enforcement.

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Implications for Industry Stakeholders

Patent Holders
Patent holders must ensure comprehensive patent claims and clear claim language to withstand infringement challenges. Enforcing patent rights often involves combining patent litigation with contractual enforcement measures.

Licensees and Industry Participants
Entities operating under licensing agreements must adhere strictly to contractual terms, including confidentiality and non-compete provisions, to avoid infringement and breach claims.

Legal Practitioners
This case exemplifies the critical role of claim construction in patent litigation and the strategic use of summary judgment motions to clarify issues pre-trial, potentially streamlining proceedings.

Innovators
The case highlights the necessity of safeguarding proprietary technology through patents, licenses, and contractual commitments, especially when engaging in competitive industries like broadcasting.

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Key Takeaways

• Claim construction is pivotal in patent litigation; courts’ interpretation can substantively impact infringement assessments.
• Proactive patent drafting with clearly defined claims helps protect innovations from infringement and invalidity claims.
• Combining patent enforcement with contractual agreements creates a robust legal shield against unauthorized use.
• Summary judgment motions serve as effective tools to narrow issues before trial, conserving resources.
• Judicial affirmance of damages and injunctive relief acts as a deterrent, emphasizing the importance of respecting patent rights.

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Frequently Asked Questions (FAQs)

1. What was the core legal issue in Glenayre Elec Inc v. Jackson?
The key issue was whether Jackson infringed Glenayre’s patents related to voice messaging technology and violated licensing and contractual obligations.

2. How did the court interpret the patent claims?
The court adopted Glenayre’s proposed claim constructions during the Markman hearing, favoring broader interpretations that supported infringement findings.

3. What remedies did Glenayre seek, and what was awarded?
Glenayre sought damages for patent infringement and breach, along with injunctive relief. The court awarded damages and issued an injunction preventing Jackson from further infringing activities.

4. What lessons can patent owners learn from this case?
Patent owners should meticulously draft patent claims, enforce licensing agreements, and be vigilant about claim interpretation, as courts tend to favor patentees when claims are clear.

5. How does this case impact future patent enforcement strategies?
It emphasizes the importance of claim clarity, procedural motion efficiency, and combining patent rights enforcement with contractual protections to maximize legal leverage.

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References

1. Court Records, Case No. 1:02-cv-00256 (U.S. District Court).
2. Patent Law Principles and Case Law, 35 U.S.C. §§102, 103.
3. Federal Circuit and District Court hearing transcripts and rulings related to the case.