Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Nilssen v. Osram Sylvania, Inc., __ F. Supp.2d __, 2006 WL 1891807, (N.D. Ill. July 5, 2006) (Darrah, J.).

After a six-day inequitable conduct bench trial, Judge Darrah held each of the eleven patents-in-suit unenforceable based upon the pro se plaintiff/inventor’s inequitable conduct before the Patent & Trademark Office (“PTO”). Plaintiff’s inequitable conduct included: submitting misleading affidavits to the PTO; improperly claiming small entity status; falsely claiming priority dates to avoid prior art; failing to disclose related litigation during prosecution; and failing to disclose material prior art to the PTO during prosecution. The Court, however, refused to hold that all patents related to the patents-in-suit were unenforceable under the unclean hands doctrine.

This opinion provides a detailed primer on the many types of misconduct that an applicant may commit before the PTO.  It also serves as a cautionary tale for inventors considering prosecuting patent applications pro se.

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Beck Sys., Inc. v. ManageSoft Corp., No. 05 C 2036, 2006 WL 2037356 (N.D. Ill. July 14, 2006) (Schenkier, Mag. J.).

In considering the scope of attorney-client privilege and work product waivers stemming from defendant ManageSoft’s reliance on an opinion of counsel, Magistrate Judge Schenkier undertook a detailed analysis of the Federal Circuit’s recent In re Echostar Communications, 448 F.3d 1294 (Fed. Cir. 2006), decision and how it changes the Northern District of Illinois’ previous ruling on the issue in Beneficial Franchise Co., Inc. v. Bank One N.A., 205 F.R.D. 212 (N.D. Ill. 2001).

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Ruling on several motions for protective orders, Judge Moran provided insight into the increasing use of multi-tiered confidentiality designations. Before the Court were numerous cases that originated before different judges, all involving Trading Technologies International, Inc. as either Plaintiff or Defendant-Counterclaimant. Before consolidation, differing protective orders were entered in several of the cases. Some of the orders provided for relatively simple two-tier designations ("CONFIDENTIAL" and "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY"), but others provided an additional designation for documents related to patent prosecution which were even more limited than the Highly Confidential documents. Documents with this designation were to be restricted to outside counsel, as well as a limited number of identified inside counsel and business persons who are not directly or substantially involved in the party's patent prosecution activities.

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Zeidler is worth mentioning despite the absence of intellectual property issues because it makes a point that many practitioners miss:  disregarding Local Rule 56.1 Statements of Fact or slapping one together at the last minute can have real, potentially case-dispositive consequences. Judge Andersen accepted defendant's statement of facts in its entirety because plaintiff’s statement of facts and his response to defendant’s statement of facts included unsupported statements, made legal arguments, referenced unauthenticated documents, and contradicted other factual evidence.

Plaintiff started at a major disadvantage by choosing to represent himself. But even many experienced members of the N.D. Ill. bar play fast and loose with the Local Rule 56.1 requirements or just ignore them until hours or minutes before filing deadlines. This case is the most recent example that such an approach is foolish and may have case-ending consequences.

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Why Intellectual Property Cases in the Northern District of Illinois?  I expect that many people will ask that question. The answer is simple. The N.D. Ill. is and consistently has been one of the four or five most active patent courts in the country. See, e.g. Kimberly A. Moore, Forum Shopping In Patent Cases: Does Geographic Choice Affect Innovation?, 79 N.C. L. Rev. 889, 903 (2001); Federal Judicial Caseload Statistics, Tables C-2 & C-3. 

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