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

Bone Care Int'l, LLC v. Pentech Pharms, Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Feb. 4, 2010) (Ashman, Mag. J.).

Judge Ashman granted defendants' motion for a protective order precluding plaintiffs' proposed supplemental expert reports as untimely filed. Plaintiffs' supplemental reports sought to respond to alleged improper new material in defendants' reply expert report. Reasoning that "[e]nough is enough," the Court granted the motion to avoid an additional round of expert reports by both sides, further delaying resolution of the case. The Court, however, noted that plaintiffs were free to move in limine to exclude any allegedly new or unfair material in defendants' reply report.

• Email This
• Print
• Trackbacks
• Share Link

The annual Chicago IP Colloquium continues this Tuesday, March 30, 2010.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The next session will be Tuesday, March 30 from 4:10 pm to 5:50 pm at Loyola, 1 E. Pearson, Maguire Hall, Room 260, featuring Professor Amy Kapczynski, UC Berkeley School of Law and her paper: Free as in Speech or Free as in Beer? How Cost Matters in IP Law.

• Email This
• Print
• Trackbacks
• Share Link

Valley Entertainment, Inc. v. Friesen, No. 08 C 3470, Slip Op. (N.D. Ill. Feb. 17, 2010) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted defendants summary judgment of noninfringement regarding plaintiff Valley Entertainment's ("Valley") copyright infringement claim regarding certain songs by the artist Raphael. The Court also granted defendants' motion to strike Valley's newly identified copyright, SR 107-850. Finally, the Court declined to exercise supplemental jurisdiction over Valley's remaining state law claims. Valley's asserted copyright covered only words and arrangement of sheet music, but defendants' alleged infringement was based upon the use of sound recordings of the songs at issue. Valley did not challenge this analysis, instead identifying a new copyright, SR 107-850, that covers sound recordings. But the Court struck that copyright because it was not identified until briefing of the summary judgment motion. The copyright was not identified in Valley's complaint or in any of Valley's numerous discovery responses as a basis for Valley's copyright infringement claims. The Court noted that Valley was no longer free to update its discovery pursuant to Fed. R. Civ. P. 26(a) because the update would no longer be timely.

Having resolved Valley's federal claims, the Court declined to exercise supplemental jurisdiction over Valley's related state law claims.

• Email This
• Print
• Trackbacks
• Share Link

I am speaking tomorrow, March 25, at Chicago's Community Media Workshop on the Legal Ramifications of Blogging.  The topic tends to spark intense interest and lots of questions, so I expect a lively seminar.  If you are interested, sign up here and I will post slides and thoughts from the conference in the next few weeks.

• Email This
• Print
• Trackbacks
• Share Link

Billingnetwork Patent, Inc. v. Avisena, Inc., No. 09 C 8002, Slip Op. (N.D. Ill. Jan. 4, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff to dismiss and refile against four of the five unrelated defendants in this patent infringement suit. The Court also instructed that the cases should not be refiled as previously dismissed cases such that they would be reassigned to the Court. And the plaintiff should not move for reassignment as a related case pursuant to Local Rule 40.4. The Court, however, noted that it would be open to reciprocal orders allowing concurrent discovery in each of the five cases.

• Email This
• Print
• Trackbacks
• Share Link

This Tuesday, March 23 at noon central, I am presenting a CLE program to the Chicago Bar Association's Intellectual Property Law Committee about the Local Patent Rules.  If you read the Blog regularly, you have read a lot of my thoughts on the new Rules.  The presentation Tuesday will spend some time on the logistics of the Rules, but will focus far more heavily on how to use the Rules in practice both offensively and defensively.  The event is being held at the CBA's building, 321 S. Plymouth Court, and lunch will be served.

• Email This
• Print
• Trackbacks
• Share Link

totes Isotoner Corp. v. Panther Vision Corp.,  No. 09 C 1604, Slip Op. (N.D. Ill. Jan. 4, 2010) (Pallmeyer, J.).

Judge Pallmeyer construed plaintiffs' claims for its patent covering headgear equipped with LEDs for illuminating the wearer's line of sight. Here are some constructions of note:

• The Court rejected both parties' construction of "array" instead opting for a dictionary definition;
   
• The Court rejected both parties' constructions of "contiguous beam" in favor of a dictionary definition "a single, unbroken beam of light."
   
• The Court held that "connected" and "attached" were interchangeable, but preferred "attached."
   
• The Court rejected both parties' constructions of "adjacent" construing it as "closely proximate."

• Email This
• Print
• Trackbacks
• Share Link

The Northern District has become the jurisdiction of choice for 35 USC Section 292 false patent marking suits. Of the more than 80 false marking suits filed this year, more than half were filed in Northern District. Granted many of the suits, 38, have been filed by a single plaintiff and his counsel, but several other plaintiffs have chosen the Chicago federal courts to file complaints that arguably could have been filed in almost any district court. As I have watched the cases pile up, I have spent a fair amount of time trying to determine why the plaintiffs are choosing Chicago. While the numbers could be skewed by one plaintiff, Simonian, that has filed the majority of the cases, several other plaintiffs are availing themselves of the Chicago courts, so I do not think that answers the question. Rather, I think the Chicago filings are a by-product of the new Local Patent Rules, for two reasons: 1) assuming that the Local Patent Rules apply to these cases (and I believe they will) the Local Patent Rules will place most of the upfront responsibilities on the defendant-patentholder; and 2) the proposed case schedule that would have cases tried in two years gives plaintiffs a moderate case length moderating their potential fees and costs while maintaining a relatively high defense cost for the defendants, including the potential threat of the longer pre-Rules schedule for most Northern District of Illinois patent cases prior to enacting the Rules. Before I analyze the reasons further, some background will be valuable as false marking is a very new phenomena in patent law and remains unknown to many.

Modern False Marking Cases

The first of the modern false marking cases, excluding the occasional false marking claim in a broader patent dispute between competitors, was Pequignot v. Solo Cup Co., No 1:07cv897-LMB/TCB (E.D. Va. July 2, 2009). In that case, Solo was accused of falsely marking coffee cup lids sold to Starbucks. The Eastern District of Virginia's Judge Brinkema granted Solo Cup summary judgment finding that there was no intent to deceive the public in Solo's alleged false marking based upon the advice of Solo's counsel that it would be reasonable to replace molds identifying expired patents with molds showing no marking gradually. Additionally, the Court held that a patent marking “offense,” punishable by a fine up to $500, was the decision to improperly mark, not each improperly marked product. That decision significantly reduced the damages potential for false marking cases, and is currently on appeal at the Federal Circuit.

Then in the last week of December 2009, the Federal Circuit decided Forest Group, Inc. v. Bon Tool Co. In that case, the district court followed reasoning similar to the Solo case fining defendant $500 for a single decision to false mark. But the Federal Circuit reversed, holding that the fine was to be assessed per falsely marked product. That drastically changed the damages calculus for false marking claims, and led to the deluge of patent false marking cases beginning this January. 

In the first quarter of this year, at least to date, more than 80 false marking cases have been filed. The Federal Circuit will soon hear oral argument in Pequignot v. Solo Cup, to rule upon the bounds of the intent required by 35 USC Section 292. The only potential relief for patent holders is a section of the current patent reform bill in the U.S. Senate that would require that the false patent marking plaintiff have been harmed by the alleged false marking – check out a discussion of the provision at the Patent Docs.

The Local Patent Rules are Driving False Marking Cases

With that background, the question remains – why are so many false patent marking cases being filed in the Northern District? As I proposed above, the reasons stem from the Northern District's new Local Patent Rules. First, many people see false marking cases as commercial litigation in patent litigation's clothing. That is not completely the case, however. In fact, the parties must determine whether the marked product reads upon the patent claims, unless the the only issue is an expired patent. That means that the court and the parties must conduct a full infringement analysis with all of the required claim charts, technical analysis, expert discovery, Markman hearings and perhaps even summary judgment motions. That means that the Local Patent Rules will likely govern these cases, bringing with them the required Initial Disclosures and production obligations, and claim charts.

That is significant because the false marking plaintiff does not have all of the obligations of either a typical patent plaintiff or defendant, while the false marking defendant has most of its obligations. The plaintiff will not have to produce his reduction to practice documents, prosecution histories, etc. along with Initial Disclosures, although the defendant likely will have to at least produce the prosecution histories. And the defendant will also have the obligations of a typical defendant – producing documents sufficient to show how each accused product or process works. So, the defendant has initial discovery burdens that are not shared by the plaintiff, and the plaintiff is guaranteed early document production. Additionally, the defendant will likely be obligated to produce initial infringement contentions, after which the plaintiff would have to respond with noninfringement contentions. So, the plaintiff not only escapes initial production requirements, but also gets to file its initial claim charts last. These are significant costs for the defendant which may benefit the plaintiff, at little up front cost. Additionally, knowing that these costs are coming early in the case may drive the defendant's willingness to settle up. Of course, it could always backfire on the plaintiff and drive the defendant's settlement down in line with the amounts spent upon early discovery.

Second, the Local Rules contemplate a two year time-to-trial, as opposed to the prior patent litigation average in Chicago that was likely in excess of three years. So, the plaintiff still has a moderately long time to trial, driving up the defendant's likely litigation fees and expenses, but not so long that the plaintiff feels like it will never see its potential award.

• Email This
• Print
• Trackbacks
• Share Link

This is a reproduction with permission of an article written by Bob Ambrogi about issues with joint defense agreements, in particular with a single firm representing multiple parties.  While joint defense agreements are often valuable for the parties involved, they also have important issues which every defendant should be aware of before entering such a representation.  Bob interviewed me for the story and quotes me several times based upon my experience with joint defense relationships.

Joint Defense Pacts Pose Pitfalls

• Email This
• Print
• Trackbacks
• Share Link

Rudnicki v. WPNA 1490 AM, No. 04 C 5719, Slip. Op. (N.D. Ill. Dec. 10, 2009) (Pallmeyer, J.).

Judge Pallmeyer granted plaintiff summary judgment of copyright registration of six of  his Polish radio broadcasts.  The Court also granted defendants summary judgment that plaintiff lacked standing to bring his copyright infringement suit.  But the Court gave plaintiff thirty days to seek reconsideration if he was able to get an assignment of plaintiff's radio broadcasts from his employer RadioZET during that time.  The Court also granted in part defendants' motion to strike plaintiff's summary judgment declarations.

As an initial matter, the Court held that pursuant to the Berne Convention, Polish law controlled copyright ownership issues as the country most closely related to the work and that U.S. law controlled infringement issues.

Copyright Ownership

The Court held that plaintiff's radio news reports were protectable pursuant to Polish law, although the reported facts were not protectable.  Furthermore, plaintiff's reports dealt with political issues which is a type of reporting Polish law specifically provided should be compensated.  Plaintiff's six copyrighted broadcasts, therefore, were protectable and the copyrights were owned by plaintiff or his assignee.

Standing

Plaintiff's contract with RadioZET provided a transfer of rights to RadioZET in plaintiff's broadcasts that was "unlimited in time and space."  Based upon that contract, plaintiff was not the exclusive copyright holder either in Poland or anywhere in the world where a copyright was held, including in the United States.  The Court, however, gave plaintiff thirty days to get an assignment from RadioZET and seek reconsideration of the standing decision based upon the assignment.

Entitlement to Damages

Plaintiff's deposition statement that he did not incur economic loss from defendant's alleged infringement did not prevent plaintiff from an award of actual damages.  The Court noted that actual damages could be determined in the range of $20-$38 per broadcast based upon what plaintiff was originally paid for his reports, including the copyrighted reports.  If plaintiff proved all 53 alleged infringements that would result in damages of $1,060 to $2,014.  The Court did not consider whether statutory damages were available.

Copyrighted Works

The Court held that plaintiff had properly registered his copyright in the six broadcasts deposited with the Copyright Office.

Motion to Strike

The Court did not strike the declaration of a previously undisclosed witness because the witness was only required because the equipment required to playback recordings of the broadcasts at issue unexpectedly failed.

The Court did, however, strike portions of two declarations by plaintiff's RadioZET supervisors.  There was no evidence that the supervisors drafted or negotiated the contract.  The fact that the witnesses were not disclosed in Rule 26 disclosures was not relevant, however, because they were disclosed during plaintiff's deposition.

 

• Email This
• Print
• Trackbacks
• Share Link

This is a reproduction with permission of an excellent article written by Bob Ambrogi detailing proposed changes to Fed. R. Civ. P. 26 regarding expert witness practice that every litigator should be aware of, as they are expected to take effect December 1, 2010.

Rule 26: Major Changes for Attorneys and Experts

By Robert Ambrogi

Robert Ambrogi is the only person ever to hold the top editorial positions at both national U.S. legal newspapers, the National Law Journal, and Lawyers Weekly USA. An experienced attorney, ADR professional, writer and legal technologist, Bob formerly served as director of the Litigation Services division at American Lawyer Media.

A major revision to the federal rules governing expert witness reports is on track to take effect in December. Lawyers and experts alike agree that the changes are long overdue.

No longer would Rule 26 of the Federal Rules of Civil Procedure allow full discovery of draft expert reports and require broad disclosure of any communications between an expert and trial counsel, as has been the case ever since the rule's revision in 1993.

Instead, under proposed amendments to Rule 26, those communications would come under the protection of the work-product doctrine. The amendments would prohibit discovery of draft expert reports and limit discovery of attorney-expert communications. Still allowed would be full discovery of the expert's opinions and of the facts or data used to support them.

The changes were approved by the U.S. Judicial Conference in September and submitted to the Supreme Court. The Supreme Court is expected to approve the amendments by May 1 and submit them to Congress. Unless Congress rejects the rules, they will take effect on Dec. 1, 2010.

The proposed rule is broadly supported by trial lawyers and bar organizations as a step towards reducing the cost and contentiousness of litigation.

Organizations that endorsed the rule include the American Bar Association, American College of Trial Lawyers, American Association for Justice, Defense Research Institute, Federal Magistrate Judges’ Association, Lawyers for Civil Justice, Federation of Defense & Corporate Counsel, International Association of Defense Counsel, and the U.S. Department of Justice.

Dual Sets of Experts

"Lawyers and experts take elaborate steps to avoid creating any discoverable record and at the same time take elaborate steps to attempt to discover the other side’s drafts and communications," the Judicial Conference explained in its report to the Supreme Court.

"The artificial and wasteful discovery-avoidance practices include lawyers hiring two sets of experts – one for consultation, to do the work and develop the opinions, and one to provide the testimony – to avoid creating a discoverable record of the collaborative interaction with the experts."

The proposed rule would expressly provide that the work-product protection applies to "protect drafts of any report or disclosure required under Rule 26(a), regardless of the form in which the draft is recorded."

The proposed rule retains the three categories of attorney-expert communications that are excluded from the work-product protection under the existing rule:

§ Communications pertaining to the expert's compensation.

§ Facts or data that the attorney provided and the expert considered in forming opinions.

§ Assumptions that the attorney provided and that the expert relied on.

In another change, the proposed rule would alter the procedure for witnesses who will provide expert testimony but who were not specifically retained to provide expert testimony. Treating physicians and government accident investigators are examples of this category of expert.

Under the proposed rule, if the expert is not required to submit a written report, then the lawyer who will use the testimony must submit a disclosure summarizing the facts and opinions to which the expert is expected to testify.

Support from Both Sides of the Bar

Stephen B. Pershing, a lawyer with the Center for Constitutional Litigation in Washington, D.C., submitted testimony in favor of the proposed rule on behalf of the American Association for Justice. He said that plaintiff and defense lawyers agree on the need to apply work-product protection to expert draft reports.

"Practice under the 1993 expert discovery amendments has become preoccupied with a search for counsel's work product, or counsel's manipulation of the expert's output that takes up time better spent focusing on the expert's conclusions themselves," Pershing said.

The amended rule would enable litigants to avoid the kind of "artificial behavior" that is now all too common, he suggested. No longer would lawyers and experts feel compelled to avoid written communications and no longer would well-funded litigants hire two sets of experts, one to consult in case development and the other to testify.

Another who spoke in favor of the proposed rule is Wayne B. Mason, former board chair of the Federation of Defense & Corporate Counsel and a partner in the Dallas office of Sedgwick, Detert, Moran & Arnold.

"Attorney discussions with experts are too often forced to be verbal in an effort to discourage discovery of draft reports," he said. "The proposed rules supply a well-reasoned approach that strengthens the veracity and straightforwardness of the discovery process while considering the burden and expense."

Mason praised the proposed rule for extending the work-product protection to employee-experts who are not required to prepare a written report. "Facilitating open communication between attorneys and in-house witnesses is an important practical consideration for the committee."

Rule Would Reduce Costs

John H. Martin, a past-president of the Defense Research Institute and a partner with Thompson & Knight in Dallas, said that the proposed rule will help reduce the cost of litigation.

"The proposed amendments provide protection to attorney-expert communications that allows the attorney and the expert to communicate freely with each other without having to engage in time-consuming and wasteful measures to avoid the creation of a draft report," Martin said.

"This allows the attorney to learn about the scientific or technical aspects of the case from the expert so that legal arguments not based on sound scientific methodology can be discarded, and the issues to be presented at trial can be narrowed," Martin added. "At the same time, it allows the attorney to speak freely with the expert, many of whom are not fulltime professional expert witnesses, and to engage in an ethical preparation of the witness to present opinion testimony."

It appears that the proposed rule extends the work-product protection to not just the expert, but also to the expert's employees. The official Committee Note that accompanies the proposed rule explains that its protection is intended to include communications "between the party's attorney and assistants of the expert witnesses."

A number of lawyers had urged the committee to take this position. "An expert engineer at MIT may use grad students in his doctoral program to assist him in his research," explained R. Matthew Cairns, president-elect of the Defense Research Institute and a lawyer in Concord, N.H., "and those students are the ones that counsel may deal with on a day-to-day basis as the expert's team does his testing and analysis prior to him reaching a conclusion and preparing a report."

Given the broad support for the proposed rule by lawyers and experts alike, the changes to Rule 26 are virtually certain to take effect Dec. 1.

This article was originally published in BullsEye, a newsletter distributed by IMS ExpertServices. IMS ExpertServices is a full service expert witness and litigation consultant search firm, focused exclusively on providing custom expert witness searches to attorneys.

• Email This
• Print
• Trackbacks
• Share Link

The annual Chicago IP Colloquium continues this Tuesday, March 9, 2010.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The next session will be Tuesday, March 9 from 4:10 pm to 5:50 pm at Chicago-Kent Room 305 and will feature Professor Oren Bracha, The University of Texas School of Law, discussing Motion Pictures: The Development of Modern American Copyright and the Film Industry.

• Email This
• Print
• Trackbacks
• Share Link

Scala's Original Beef & Sausage Co., LLC v. Alvarez d/b/a Michaelangelo Foods, No. 09 C 7353, Slip. Op. (N.D. Ill. Dec. 10, 2009) (Dow, J.).

Judge Dow denied defendants' motion to dismiss plaintiff's counsel. Plaintiff's counsel's firm represented the individual defendant and a prior company in a 2006 matter. But that case, a $15,000 contract dispute, ended after counsel spent less than 25 hours on the case. It was irrelevant that while counsel's firm previously represented the individual defendant, counsel never personally represented the individual defendant. The Court, however, was unable to infer that counsel's firm had received confidential information about the individual defendant's finances. Further, the individual defendant's businesses in the two cases were different. And the cases were remote in time and focused on different subject matter – a contract dispute in the earlier case, and contract and trademark issues regarding a new entity in the second. 

• Email This
• Print
• Trackbacks
• Share Link

This Friday, March 5, 2010, the Northwestern Journal of Technology & Intellectual Property hosts its Fifth Annual Symposium. The Symposium, titled "New Rules for a New Day," includes the following sessions:

• The Patenting of Social Interactions: Bilski Before the Supreme Court - a panel discussion on the Bilski case, what is at stake, and the Supreme Court's options featuring Professor Matthew Sag of the DePaul University College of Law; Professor Joshua Sarnoff of the Washington College of Law at American University; Professor Jonathan Masur of the University of Chicago Law School; and Daniel Williams, a Partner at McDonnell Boehnen Hulbert & Berghoff LLP;

• Sharon Barner, Deputy Under Secretary and Deputy Director of the U.S. Patent and Trademark Office will provide the luncheon keynote on "Strategies for the USPTO: Ensuring America's Innovation Future";

• Trademark and Copyright in the Days of Internet: The Google Influence - a panel discussion on the ramifications of the Google Books and Google AdWords cases and the protection of IP in the fluid landscape of the internet featuring Michael Baniak, a Partner at McDonnell Boehnen Hulbert & Berghoff LLP and Professor Matthew Sag of the DePaul University College of Law;

• Who Defines the Law? USPTO Rule Making Authority - a panel discussion on recent court challenges to the USPTO's rulemaking and interpreting power, including the Cooper Technologies, Tafas, and Wyeth cases featuring Professor James Speta of the Northwestern University School of Law; Patent Docs author Donald Zuhn, a Partner at McDonnell Boehnen Hulbert & Berghoff LLP; Nicholas Zovko of Knobbe Martens Olson & Bear LLP; and Professor Jonathan Masur of the University of Chicago Law School; and

• Redefining "Free": A Look at Open Source Software Management -- a panel discussion on the pitfalls and issues that arise when open source code is included in a deal featuring John Hines, a Partner at Reed Smith LLP; Jon Christiansen of EscrowTech International Inc.; Alfred Hanna, a Partner at Reed Smith LLP; and Joseph Herndon, a Partner at McDonnell Boehnen Hulbert & Berghoff LLP.

More information is available at the Symposium's website. Registration for the Symposium is free. CLE credit will be available to attendees for a fee of $200.

• Email This
• Print
• Trackbacks
• Share Link