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Chicago IP Litigation

Tracking Northern District of Illinois IP Cases

Court Appoints Counsel in IP Case

Posted in Local Rules

Vogue Tyre & Rubber Co. v. Mendez, No. 14 C 5839, Slip Op. (N.D. Ill. Oct. 1, 2014) (Shadur, Sen. J.).

Judge Shadur appointed defendant counsel from the N.D. Illinois trial bar with experience in IP cases, after finding that defendant’s In Forma Pauperis Application sufficiently showed defendant’s inability to pay counsel; that both parties and the Court would benefit from the representation; and that defendant had made appropriate, albeit unsuccessful, efforts to retain counsel. 

Having appointed counsel, the Court ordered counsel to review plaintiff’s complaint and then file a responsive pleading within approximately three weeks.

Ordinary Meaning Relied Upon When the Patent Does Not Require More than That

Posted in Claim Construction

Sonix Tech. Co., Ltd. V. Pubs. Int’l, Ltd., No. 13 C 2082, Slip Op. (N.D. Ill. Oct. 30, 2014) (St. Eve, J.).

Judge St. Eve construed the disputed terms of the patent in suit in this case regarding graphic indicators on a surface that are not visible to the human eye, but when scanned provide additional information.  The Court held that the following three terms need not be construed, relying upon their plain and ordinary meaning:

  1. Capable of distinguishing the corresponding graphical indicator from adjacent graphical indicators;
  2. Main information that overlaps and co-exists with the graphical micro-units on the surface of the object; and
  3. Content information.

The Court construed “header information” as follows:

  • Information in the graphical indicator that is used to retrieve the graphical indicator and corresponding content information and is capable of (1) distinguishing the corresponding graphical indictor from an adjacent graphical indicator, and (2) indicating the orientation of the corresponding graphical indicator to the optical device.

The Court also provided several charts that are very helpful in quickly understanding the relative positions and the Court’s conclusions.  Before the Court’s analysis of each disputed term, the Court provided a chart listing plaintiff’s proposed construction, defendants’ proposed construction and the Court’s construction.  Additionally, at the end of the opinion, the Court concludes with a chart of its constructions.  This is a great practice and makes the opinion much more readable.

Northern District of Illinois Practice Tips Nos. 21-25

Posted in Local Rules

At the start of the new year, many of us are spending time looking back at where we have come from and forward to where we want to go. As part of that process, many are making resolutions to make 2015 better than ever.  In that spirit, over the next several weeks, I am reposting a popular series of practice tips for the N.D. Illinois (with a focus upon IP litigation of course) that I ran a few years ago, with slight modifications for 2015.

The tips are not in a particular order of import.  Why twenty-five?  I found that beyond twenty five, the tips became focused upon minutia. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last eight years.  As you read them, let me know if you come up with others.  I will be glad to include them as I go along.  Here are twenty one through twenty five:

21.  Calculate extensions in 7 day increments. The Federal Rules, and the Local Rules, now calculate deadlines in seven day increments.  Based upon that, many Chicago judges expect parties to seek extensions in those same increments.

 22.  Respect Chambers. Chambers staff are pretty universally helpful, but be respectful of them and avoid annoying them.  Before calling chambers, read the Local Rules and the judge’s website to make sure your question is not answered there.  And call chambers with opposing counsel, unless you have advance permission from the Court or opposing counsel.

 23.  Learn how to seal or redact filings early.  The Seventh Circuit frowns upon sealing court filings unless absolutely necessary.  As a result, Northern District judges are particular about filing under seal, as is the Clerk’s office.  The rare protective order gives you a blanket right to file under seal.  Most require specific permission.  That permission would ideally be sought in advance of filing, but at least concurrent with the filing.  Either way, it is critical to know before the evening of a major filing deadline, when the Clerk’s office may be closed, and you may not have much time to begin with.  Additionally, the Seventh Circuit requires that briefs be filed in a redacted form instead of under seal.  So, many Northern District judges have the same requirement.  Either ask the judge’s chambers or counsel who has experience before the particular judge.  And it is always good to call the Clerk’s office the day before the filing, or the morning of at least, to make sure that the relevant ECF accounts have the ability to file under seal activated for your filing date.

 24.  Lean on the ECF hotline. I am routinely surprised by people not thinking to call the Clerk’s ECF number for assistance.  The Clerk’s staff is uniformly knowledgeable and eager to help.  In particular, call them immediately if you made an ECF-based error while filing.  The Clerk’s office can almost always fix it, and it is usually easier for everyone if you have not added to the problem by “fixing” it yourself.  One note of caution though, as with calling chambers, give the Clerk’s office the courtesy of reviewing the ECF webpage first to make sure they have not already answered your question there.

 25.  Understand the Court’s pretrial order requirements. More than one Northern District judge will throw out inadequate pre-trial orders.  One common flaw to watch for is insufficient statements of fact or conclusions of law.  The local, form pre-trial order requires the parties to identify every fact they must prove at trial and every necessary conclusion of law, even for jury trials.  This custom differs from some other districts (and not every Northern District judge requires it).  Likely because of that and the general pre-trial time crunch, many parties fail to prepare sufficient statements.  That can have serious consequences, so start on these early.

Northern District of Illinois Practice Tips Nos. 16-20

Posted in Local Rules

At the start of the new year, many of us are spending time looking back at where we have come from and forward to where we want to go. As part of that process, many are making resolutions to make 2015 better than ever.  In that spirit, over the next several weeks, I am reposting a popular series of practice tips for the N.D. Illinois (with a focus upon IP litigation of course) that I ran a few years ago, with slight modifications for 2015. 

The tips are not in a particular order of import.  Why twenty-five?  I found that beyond twenty five, the tips became focused upon minutia. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last eight years.  As you read them, let me know if you come up with others.  I will be glad to include them as I go along.  Here are sixteen through twenty:

16.  Meet and confer. Wherever you practice you are likely aware of some version of a Local Rule 37.1 requirement to meet and confer regarding at least discovery motions.  Generally, you do not need to meet and confer for dispositive motions, but you must for discovery motions as well as motions for extensions.  Most judges will not hear a motion without a meet and confer, and some will deny the motion with prejudice for failing to meet and confer.  If you are not sure whether your motion requires a meet and confer, err on the side of having one.

 17.  Tell the Court about your meet and confer. Do not forget to tell the Court you met and conferred in your motion, and describe the outcome.  If you do not, you risk denial of your motion, and always identify agreed or stipulated motions in the title and the docket entry.

 18.  Use the Online Transcript System. Take advantage of the Northern District’s first-in-the-nation online transcript ordering system.  Prior to this system, getting transcripts was difficult, but now getting a hearing transcript is as easy as buying a book on Amazon.com.  It is a great advantage for litigators preparing motions that relate to prior hearings.

 19.  Calculate your hearing date.  Each judge has a different minimum notice period for motions.  Many judges allow notice three business days after filing, but a few only require two and others require four.  On a similar note, check the judge’s website for allowable motion call days and times, and any days when the judge will not be hearing motions.

 20.  Deliver prompt, correct courtesy copies.  The Local Rules require delivery of courtesy copies of to the Court within one day of filing.  But some judges require same day courtesy copies if at all possible.  For those judges, if you cannot deliver same day you should at least deliver early the next morning.  Also, make sure you format the copies correctly.  For example, most judges require exhibits to be separated by tabs, and some judges require that papers be bound on the left-hand side.  And for many judges, you must include copies of any unreported cases cited in your papers.

Northern District of Illinois Practice Tips Nos. 11-15

Posted in Local Rules, Pleading Requirements

At the start of the new year, many of us are spending time looking back at where we have come from and forward to where we want to go.  As part of that process, many are making resolutions to make 2015 better than ever.  In that spirit, over the next several weeks, I am reposting a popular series of practice tips for the N.D. Illinois (with a focus upon IP litigation of course) that I ran a few years ago, with slight modifications for 2015.

The tips are not in a particular order of import.  Why twenty-five?  I found that beyond twenty five, the tips became focused upon minutia.  The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last eight years.  As you read them, let me know if you come up with others.  I will be glad to include them as I go along.  Here are eleven through fifteen:

11.  Respect Twombly / Iqbal pleading standards.  The Northern District is no different than the rest of the country’s district courts — patent infringement requirements have not changed, except that the Federal Rules form patent complaint is being done away with.  But that is not necessarily the case for Lanham Act, copyright or trade secret claims.  There are numerous decisions dismissing, often with leave to amend, these more fact-specific intellectual property claims.  And even in the patent context plaintiffs benefit from pleading with more particularity, a fact that may become even more true as the Court adapts to the removal of the form complaint.  The more detail a defendant has the more information they should disclose about their accused products or systems as part of their Local Patent Rule 2.1(b) initial disclosure document production requirements.  That means that the plaintiff will have more material with which to prepare its Local Patent Rule 2.2 initial infringement contentions.  Finally, regardless of the type of claim, many and perhaps most judges rely upon Twombly / Iqbal to require more than a bare recitation of the elements of affirmative defenses.  So, it is especially important to add some facts to your affirmative defenses.

 12.  Prepare Local Rule 56.1 statements with care. This is probably the most frequent Local Rule hang up in Northern District of Illinois opinions.  It is critical that movants meet the Local Rule 56.1 requirements, among others, a numbered statement of undisputed material facts supported by admissible evidence.  If the facts are not supported or if they are legal conclusions, judges routinely strike or disregard them.

 13.  Respond to Local Rule 56.1 statements with evidence. Far too often, parties respond to Local Rule 56.1 statements without evidence.  Those responses are almost always deemed admissions.  Without admissible evidence to counter statements of fact they are almost always admitted.

 14.  Watch your judge’s webpage. Each judge maintains the equivalents of standing orders on their webpage, often in multiple places and links across the page.  It is critical that you read them at the beginning of your case and that you recheck them regularly.  At a minimum, check them before you file anything with the Court.  I find that the website instructions change with much greater frequency than the old, paper standing orders did.  And while judges try to make it easy to see what they change, if you are not looking you will miss it.

 15.  Always file notices of motion.  In some districts, notices of motions are not required or even discouraged.  In the Northern District of Illinois, they are required of every motion.  If you fail to file one, you will likely hear from the Clerk’s office.  Also, make sure to file the notice after the motion, not before.  If you file the notice before the motion, you will generally have to refile it.

Northern District of Illinois Practice Tips Nos. 6-10

Posted in Local Rules

At the start of the new year, many of us are spending time looking back at where we have come from and forward to where we want to go.  As part of that process, many are making resolutions to make 2015 better than ever.  In that spirit, over the next several weeks, I am reposting a popular series of practice tips for the N.D. Illinois (with a focus upon IP litigation of course) that I ran a few years ago, with slight modifications for 2015. 

The tips are not in a particular order of import.  Why twenty-five?  I found that beyond twenty five, the tips became focused upon minutia.  The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last eight years.  As you read them, let me know if you come up with others.  I will be glad to include them as I go along.  Here are six through ten:

6.    Redact personal information.  Make sure that you are redacting personal information, social security numbers, phone numbers, etc., from any papers filed with the Court.  Most litigants are good at this in their pleadings.  But there is a significant drop off in attention to this rule in exhibits and other filed papers.  There can be serious consequences to running afoul of this rule both to the litigator and to the individual whose information is publicly disclosed.

 7.    Attend hearings.  Parties often do not attend hearings because they expect a motion to be granted (for example, an extension of time or motion to withdraw when other counsel has appeared in the case) or because they do not have a stake in the motion between their opponent and a co-defendant.  This can be a critical mistake.  First, most judges require all parties’ attendance at all hearing on a case.  Second, you cannot guarantee that issues implicating your client will not be addressed at the hearing.  And if they are addressed, you cannot necessarily count upon either your opponent or your co-defendant to protect your interests.

 8.     Pay attention to the court reporter.  The hardest working person in the courtroom is almost always the court reporter; help them out.  Offer a card or spell your name on the record.  Speak clearly and at a modest speed.  As much as you may feel the need to, do not speak over your opponent.  If you are on a telephone conference, announce yourself when you speak.  This both helps the reporter and makes the record much more clear.

9.    Attend hearings by phone sparingly.  In deference to the cost of bringing non-Chicago counsel to every hearing, many judges in the Northern District liberally permit attendance by telephone.  This is an enormous convenience and cost-savings, but when not used carefully can have a negative impact on your case.  It is impossible to interpret a judge’s visual cues on the phone, unless they describe them to you at which point it is far too late.  If the hearing is of any import, either attend live or send local counsel fully prepared to address all issues, if live attendance is not possible.

 10.    Listen on phone hearings.  Too many lawyers when given an opportunity to argue their point during a telephonic hearing, speak until they are done.  That has the advantage of getting your point across, but you have no idea if the judge is trying to ask you a question or even stop you completely.  And when you are speaking into a speakerphone, you cannot hear anyone else, most importantly the judge, that may be trying to stop you or ask you a question.  In the best case, that leaves the judge exasperated, and in the worst case the judge may view you as disrespectful, unnecessarily argumentative and as not listening to the Court.  None of these are good results, and it is easily avoidable if you teach yourself to pause periodically.  The pauses give you the time for the Court to give you verbal cues that you could get visually or verbally in the courtroom.

 

Northern District of Illinois Practice Tips 1-5

Posted in Local Rules, Pleading Requirements

At the start of the new year, many of us are spending time looking back at where we have come from and forward to where we want to go. As part of that process, many are making resolutions to make 2015 better than ever. In that spirit, over the next several weeks, I am reposting a popular series of practice tips for the N.D. Illinois (with a focus upon IP litigation of course) that I ran a few years ago, with slight modifications for 2015.

The tips are not in a particular order of import. Why twenty-five?  I found that beyond twenty five, the tips became focused upon minutia.  The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last eight years.  As you read them, let me know if you come up with others.  I will be glad to include them as I go along.  Here are the first five:

  1. Draft complaints to meet both the Local Rules and the Judge’s requirements. There are pleading requirements in the Local Rules that are pretty standard, but do not make the mistake of failing to review them because they may not be the same as courts you are more familiar with.  And do not stop at reading the Local Rules, check out requirements of specific judges before deciding.  Click here for some examples of opinions to consider.
  2. Repeat plaintiffs’ allegations in your answers.  Local Rules require that you repeat the complaint paragraphs in your answer.  Most judges will not return your answer for failing to do so, but some will.  And even if they do not, you render your answer far less useful a tool for the judge and her chambers.
  3. Deliver courtesy copies.  The Local Rules require courtesy copies be delivered within one business day, and some judges’ standing orders require same day delivery.  Ina few cases counsel may be fined for not providing same day courtesy copies.  Opinions chastising counsel for failing to provide courtesy copies are surprisingly frequent.  But even if your judge does not penalize you for failing to meet the courtesy copy requirements (and some will), if your motion or response is on a tight schedule you run the risk of not being fully heard.  For example, if you are filing a response brief the day before a motion is to be heard and you bring your courtesy copies with you to the hearing you have only the slimmest chance that your brief is being read and digested before the hearing. 
  4. Separate service is not required when all parties are on ECF.  This may not be mission critical, but you need not separately serve parties with a filing when all are on the ECF system. 
  5. Signature blocks require both email and a fax number.  Many litigators still do not add email or fax numbers to signature blocks.  I have not seen anyone sanctioned or warned for this omission yet, but you do not want to be the first.

Supplemental Jurisdiction Found Over Disparagement & Defamation Claims

Posted in Jurisdiction

DR Distributors, LLC v. 21 Century Smoking, Inc., No. 12 C 50324, Slip Op. (N.D. Ill. Nov. 20, 2014) (Johnston, Mag. J.).

Judge Johnston granted defendant’s motion to amend adding state law disparagement and defamation claims in this Lanham Act case involving plaintiff’s 21ST CENTURY SMOKE and defendant’s 21ST CENTURY SMOKING marks.  Defendant’s disparagement and defamation claims were at least “loosely” connected to the facts that defendant’s Lanham Act unfair competition and trademark infringement claims because they arose from allegations surrounding plaintiff’s conduct and statements made at a 2013 trade show.

Court Sua Sponte Strikes Portions of Answer

Posted in Pleading Requirements

Vogue Tyre & Rubber Co. v. Mendez, No. 14 C 5839, Slip Op. (N.D. Ill. Oct. 27, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte struck portions of defendant’s answer and dismissed certain affirmative defenses as follows:

  • The Court struck denials based upon lack of information and belief.  While lacking information and belief acts as a denial, it is “oxymoronic” to claim a lack of information and belief, but to be able to affirmatively deny the statements.
  • The Court dismissed defendant’s laches affirmative defense because it offered no facts in order to meet the notice pleading standard as set out by Twombly/Iqbal.

District Court Claim Constructions Not Controlling

Posted in Claim Construction

Costar Realty Info., Inc. v. CIVIX-DDI, LLC, Nos. 12 C 4968, 7091 & 8632, Slip Op. (N.D. Ill. Sep. 23, 2013) (Holderman, Sen. J.).

Judge Holderman construed the disputed claim terms in this patent case involving methods of locating points of interest in a geographic region by accessing a remote database.  Before construing the claims, the Court noted the uncertainty regarding the preclusive effect of prior district court constructions with some courts holding prior constructions should be deferred to absent clear error and other courts considering them merely instructive.  The Court held that other opinions were not controlling based upon the Supreme Court’s statements in Markman that making claim construction a matter of law would not create consistency, even within a single district.  Of particular note, were the following constructions:

  • “The request containing (a) at least one user-selected category and (b) a user-selected geographic vicinity” was” construed as “the request containing, in a single electronic representation, (a) at least one user-selected category and (b) a user-selected geographic vicinity”;
  • “Advertising information about a business” was construed as “paid promotion of a business name, service, or product”;
  • “Advertisements” was construed as “paid promotions”;
  • “Database” was construed as “a collection of related information organized for convenient access”;
  • “Geographical/geographic position” was construed as “a specific location within a geographic vicinity”;
  • “Wherein a user at the port may locate the one item of interest” was construed “so that a user at the port has sufficient information to locate an item of interest”;
  • “Spatial detail” was construed as “a system of linked computer networks, world-wide in scope that typically is associated with using TCP/IP as a standard protocol.”
  • “At a database, receiving at least in part through the Internet, a request from one of a plurality of ports” did not require construction; and
  • “Determining, at the database, a plurality of advertisements in response to the request . . .  from the database, transmitting, at least in part through the Internet, the response to the port” did not require a construction.