October 2010

Simonian v. Pella Corp., No. 10 C 1253, Slip Op. (N.D. Ill. Aug. 5, 2010) (Bucklo, J.)
Judge Bucklo granted defendant Pella’s 28 U.S.C. § 1404(a) motion to transfer plaintiff Simonian’s false patent marking case to the Southern District of Iowa. The court held that Simonian’s choice of forum was not given deference, as it normally would be. First, the real plaintiff was the United States, not Simonian. Second, the situs of the material events was Iowa where Pella made its marking and packaging decisions, not Illinois where some marked products were sold. Simonian’s numerous other false marking cases filed in the district did not weigh against transfer. Each of those cases involved different defendants, different accused products and different allegedly expired patents.
…
Continue Reading False Patent Marking Plaintiff’s Choice of Forum Given No Deference

This week is the Second Annual National Pro Bono Celebration. Along with many other bloggers, I pledged to post about my pro bono experiences. Of course, had I looked at my calendar when I made the pledge I would have realized that I would be deep in trial preparation, as well as several other client responsibilities this week. As you might expect, I found it difficult to set aside the time to write about my pro bono experiences, while balancing client responsibilities, family and, of course, my pro bono matters. But then I heard some terrible news, followed by some wonderful news.
A friend’s young child had been diagnosed with a brain tumor and they were waiting to find out if it was cancerous and whether the surgery to remove was successful and sufficient. Thankfully, the surgery was successful and the tumor was not cancerous. Of course, that was the case because of, among other things, all of the advances that have occurred in brain tumor medicine; advances funded and championed by the American Brain Tumor Association, who I am proud to do pro bono work for. As a side note, the Association’s website is an amazing resource for patients, family, friends and survivors. Brain tumors strike without regard to age or other demographics, and I am sad to say I have referred my share of friends and clients to the site when they or their loved ones were diagnosed with a brain tumor.
Amidst pressing responsibilities this week, I had a clear reminder in the form of a now-healthy child and his relieved family about why I do pro bono work. I am proud that I can dedicate some of my time to aid worthy causes, and I am proud to be part of a profession that values the donation of our services to help those in need.
…
Continue Reading Why I do Pro Bono Work & the American Brain Tumor Association

Simonian v. Merck & Co., Inc., No. 10 C 1297, Slip Op. (N.D. Ill. Jul. 16, 2010) (Shadur, Sen. J.).
Judge Shadur sua sponte struck portions of defendants’ answer to plaintiff’s false patent marking case. First, the Court struck denials that followed defendants’ statements that they lacked information and belief. While a lack of information and belief acts as a denial, denying allegations as to which you cannot form a belief is “oxymoronic.”
Second, the Court struck defendants’ improper affirmative defenses. Several of defendants’ affirmative defenses were improper because they had already been brought into issue by denying allegations in the complaint. The Court also struck defendants’ Fed. R. Civ. P. 12(b)(6) affirmative defense with leave to promptly file a “properly supported” motion to dismiss.
…
Continue Reading Court Sua Sponte Dismissed Affirmative Defense

Simonian v. Irwin Indus. Tool Co., No. 10 C 1260, Slip Op. (N.D. Ill. Aug. 27, 2010) (Lindberg, Sen. J.).
Judge Lindberg denied defendant Irwin Industrial Tool’s (“Irwin”) motion to dismiss plaintiff Simonian’s false patent marking case. First, the Court denied Irwin’s standing arguments. While the Federal Circuit had not yet issued its Stauffer decision regarding standing, the Court used similar reasoning. The Court analogized to the False Claims Act and held that any person had standing without proof of an injury in fact. The false marking injury is to the government and the public at large.
The Court also held that Simonian sufficiently pled the requisite intent to deceive, whether notice pleading or Fed. R. Civ. P. 9(b) standards applied. Simonian pled that Irwin was a “sophisticated company” with years of patent experience and that Irwin knew or should have known the patent was expired when it was marked.
…
Continue Reading Any Person Has Standing to Bring False Patent Marking Claim

This is the fifth installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation (here are the earlier tips: 1-5; 6-10; 11-15; and 16-20). 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 four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are numbers 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. Some protective orders give you a blanket right to file under seal, but others 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.
24. Lean on the ECF hotline. I am routinely surprised by how many people never think 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.
…
Continue Reading Northern District of Illinois Practice Tips Nos. 21-25

Simonian v. Bunn-O-Matic Corp., No. 10 C 1203, Slip Op. (N.D. Ill. Aug. 23, 2010) (Zagel, J.).
Judge Zagel stayed plaintiff Simonian’s false patent marking case pending the Federal Circuit’s standing decision in Stauffer – which has since issued, holding that any person has standing without regard to injury in fact.
The Court also indicated that, once the stay was lifted, it would deny defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss Simonian’s complaint for failure to adequately plead intent to deceive pursuant to Fed. R. Civ. P. 9(b). Simonian pled that defendant knowingly marked its coffeemakers with expired patents. That was sufficient to meet the rebuttable presumption of intent as set out in Solo Cup. It did not matter that Simonian’s claims were generic as evidenced by the use of nearly identical allegations in more than forty false patent marking cases Simonian had filed in the Northern District of Illinois.
…
Continue Reading Marking With Expired Patent Sufficient for Pleading Intent

Viskase Cos., Inc. v. World Pac Int’l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 18, 2010) (Bucklo, J.).
Judge Bucklo construed the claims in this patent case regarding food curing technologies for use in packing sausages and other processed foods. The following construction were of particular note:
The Court declined to construe “barrier casing” holding that “barrier” did not require construction beyond its ordinary meaning. The parties real dispute was over the term “impermeable” which the Court construed.
The Court construed “impermeable” as “having a low enough permeability or transmission rate to steam and/or gas to prevent a measurable loss of weight, flavor, and taste during customary production, cooking, and storage.” This construction required a lower permeability than any known in the industry because that is how the patentee defined impermeable in the specification noting that courts cannot redraft claims to avoid “nonsensical results.”
“Plastic Foils” was construed as “a self-supporting film or sheet of plastic.” Because the patent contemplated laminating the plastic foil, it has to be self-supporting because only self-supporting foils can be laminated.
The Court held that “woven” in “woven fibers, fabric, knits and fleece” modified only fibers, not fabric, knits or fleece.
…
Continue Reading Court Will Not Rewrite Claims to Avoid Nonsensical Results

This is the fourth installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation (here are the earlier tips: 1-5; 6-10; and 11-15). 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 four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are tips 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.
…
Continue Reading Northern District of Illinois Practice Tips Nos. 16-20

Chamberlain Group v. The Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Jul. 15, 2010) (St. Eve, J.).
Judge St. Eve denied plaintiff Chamberlain’s motion to compel further deposition of a witness in this patent case. The Court noted that the information sought from the deposition could be relevant. But the Court denied the motion for failure to comply with the meet and confer rule, Local Rule 37.2. And the Court explained that it would no longer consider motions based upon Fed. R. Civ. P. 26-37 without a Local Rule 37.2 statement:
(1) that after consultation in person or by telephone and good faith attempts to resolve differences they were unable to reach an accord, or (2) counsel’s attempts to engage in such consultation were unsuccessful due to no fault of counsel’s. Where the consultation occurred, this statement shall recite, in addition, the date, time and place of such conference, and the names of all parties participating therein. Where counsel was unsuccessful in engaging in such consultation, the statement shall recite the efforts made by counsel to engage in consultation.
Defendants’ only efforts to resolve the dispute occurred at the deposition where the issue arose. This did not meet the Local Rule 37.2 requirement.
…
Continue Reading Court Refuses Any Future Discovery Motions Without Local Rule 37.2 Certification

Von Holdt v. A-1 Tool, No. 04 C 4123, Slip Op. (N.D. Ill. Aug. 18, 2010) (Manning, J.).
Judge Manning, having granted in part plaintiff’s motion for reconsideration, decided to maintain supplemental jurisdiction over plaintiffs’ remaining state law claims despite having granted defendants summary judgment as to plaintiffs’ federal patent infringement and Computer Fraud and Abuse Act (“CFAA”) claims. Plaintiffs’ state law claims – trade secret, tortious interference and breach of fiduciary duty claims – were “loosely” connected to plaintiffs’ CFAA claim because they were based upon the alleged theft of plaintiffs’ confidential information by a former employee.
…
Continue Reading Loosely Related State Law Claims Sufficient for Supplemental Jurisdiction