Monthly Archives: April 2011

New N.D. Illinois Judges Panel: Judge Kim

By R. David Donoghue on April 29th, 2011 Posted in Legal News

In late January, the Northern District’s six newest judges attended a Federal Bar Association* panel to offer insights into their practices and chambers. The recurring theme of the discussion was a call for civility: Civility in court. Civility in briefs. Civility in emails. Over the next several weeks, I will provide summaries of each judge’s comments and insights. This post (the fifth in the series) focuses upon Magistrate Judge Kim:

Be civil in court and in your papers.
Do not include extraneous emails or exhibits to score points. They do not work.
Tell your story in your answer, do not just deny.
Rule 56.1 statements: short and concise facts.

Plaintiff Need Not Attach Copyright Registration to Complaint

By R. David Donoghue on April 27th, 2011 Posted in Pleading Requirements

Golden v. Nadler Pritikin & Mirabelli, No. 05 C 283, Slip Op. (N.D. Ill. Dec. 21, 2010) (Gottschall, J.).

Judge Gottschall denied plaintiff Golden’s motion to dismiss or for a more definite statement pursuant to Fed. R. Civ. P. 12(b)(6) & (e) in this copyright dispute over real estate listings. Golden was not required to attach a copy of its copyright registration to its complaint. And while it was an "extraordinarily close question whether Golden’s "bare-bones" amended complaint satisfied Twombly, it did plead ownership of a registered copyright and it did plead that defendant allegedly copied the work without consent. Because Golden’s complaint was so bare-bones, defendant’s motion to dismiss was not in bad faith. The Court, therefore, denied Golden’s Fed. R. Civ. P. 11 motion regarding the motion to dismiss.

Related Third Parties Given Limited Access to Confidential Documents

By R. David Donoghue on April 25th, 2011 Posted in Discovery

Sullivan d/b/a Survivor v. Jamison, No. 06 C 5240, Slip Op. (N.D. Ill. Dec. 21, 2010) (Mason, J.).

Judge Mason ruled upon the parties’ cross motions regarding a Protective Order in this trademark and copyright case involving the band Survivor, of Eye of the Tiger fame. The Court held that third parties, and former Survivor members, could be given access to confidential documents used in conjunction with their respective testimony at deposition, hearings or trial. They were not, however, permitted access to attorney’s eyes only documents.

New N.D. Illinois Judges Panel: Judge Feinerman

By R. David Donoghue on April 22nd, 2011 Posted in Legal News

Allege diversity jurisdiction properly (watch corporate entities)
Assume he has read the papers when arguing
Be prepared to argue motions when noticed
Answer the question the court asks: If it is a yes or no question, the answer should start with "yes", "no" or "I cannot answer that because. . . ."
Jury trials: respect juries and use humor sparingly

False Marking Plaintiff’s Chosen Form Not Given Deference

By R. David Donoghue on April 20th, 2011 Posted in Jurisdiction

Heathcote Holdings Corp., Inc. v. Leapfrog Enters., Inc., No. 10 C 1471, Slip Op. (N.D. Ill. Dec. 27, 2010) (Coar, J.).

Judge Coar transferred plaintiff Heathcote’s false patent marking case to the Northern District of California. Because Heathcote was a relator standing in the shoes of the federal government, Heathcote’s chosen forum was given little deference. All of defendant’s witnesses — party and non-party alike — were located in California. Additionally, the relevant evidence was located in defendant’s California offices. And Heathcote was unlikely to have much relevant evidence. The Court, therefore, transferred the case.

No Inequitable Conduct Where “Withheld” Reference Was Previously Disclosed

By R. David Donoghue on April 18th, 2011 Posted in Legal News

Avery Dennison Corp. v. Continental Datalabel, Inc., No. 10 C 2744, Slip Op. (N.D. Ill. Nov. 30, 2010) (Kennelly, J.).

Judge Kennelly granted plaintiff Avery Dennision’s ("ADC") Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant Continental Datalabel’s ("CDI") inequitable conduct, Walker Process fraud and sham litigation counterclaims in this patent dispute regarding labels with a tear off liner to expose a portion of a label column for easy removal.

Inequitable Conduct

CDI alleged two bases of inequitable conduct. First, ADC allegedly intentionally failed to tell the examiner that certain limitations outlined in a series of bullet points were from a particular prior art reference. That claim filed because ADC had previously disclosed the prior art reference at issue to the examiner – once a reference is before an examiner, it cannot be found to have been withheld from the examiner. Second, ADC allegedly intentionally failed to disclose to the examiner that curling up of labels is an inherent characteristic of adhesive labels. But ADC had disclosed the inherent curling up by disclosing various prior art references regarding adhesive labels that taught the inherent curling up, combined with the examiner’s presumed experience in the art.

Walker Process Fraud Claim

Because CDI’s Walker Process claim was premised upon the alleged inequitable conduct, CDI’s Walker Process claim failed. The Court further noted that because inequitable conduct is a broader concept than Walker Process fraud, a party that fails to make its case for inequitable conduct, cannot make a Walker Process fraud claim.

Sham Litigation

CDI’s sham litigation claim was based upon allegations that ADC knew the patent was invalid based upon the Brady prior art reference, which was before the examiner, and because had ADC tested CDI’s accused labels, ADC would have realized its suit was baseless. Because the Brady reference was before the examiner, however, the Court could not find that the claim was "objectively baseless" as required for sham litigation. ADC could have reasonably believed that after the examiner considered Brady and granted ADC’s patent, ADC’s patent was in fact valid over Brady.

And ADC’s alleged failure to test the accused CDI product was not sufficient for a sham litigation claim. Sham litigation requires more than an unsuccessful suit. While CDI may eventually prove that it did not infringe, ADC’s failure to perform one test identified by CDI does "not permit the court to infer more than the mere possibility" that ADC’s suit was in bad faith.

New N.D. Illinois Judges Panel: Judge Finnegan

By R. David Donoghue on April 15th, 2011 Posted in Legal News

In late January, the Northern District’s six newest judges attended a Federal Bar Association* panel to offer insights into their practices and chambers. The recurring theme of the discussion was a call for civility: Civility in court. Civility in briefs. Civility in emails. Over the next several weeks, I will provide summaries of each judge’s comments and insights. This post (the third in the series) focuses upon Magistrate Judge Finnegan:

Discuss ways to streamline cases early
Plan early discovery to focus issues and settlement conferences
Will sometimes meet counsel without clients before a full settlement conference
Follow Seventh Circuit E-Discovery Program

Three Month Delay is Prejudicial After Fact Discovery Closes

By R. David Donoghue on April 11th, 2011 Posted in Discovery

Civix-DDI, LLC v. Hotels.com, L.P., No. 05 C 6869, Slip Op. (N.D. Ill. Jan. 19, 2011) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Civix-DDI’s ("Civix") motion to strike defendants’ (collectively "Hotels.com") allegedly "new defenses and witnesses" in this patent case. The Court held as follows:

Hotels.com was free to update its corporate witnesses based upon changed jobs and responsibilities, so long as the new witnesses were made available for deposition if they might potentially be called at trial.
Disclosure of a new piece of prior art ten months after the close of fact discovery would prejudice Civix, and Hotels.com did not justify its late disclosure. The prior art was, therefore, excluded pursuant to Fed. R. Civ. P. 37.
The Court also excluded a license for Google technology that was executed in relevant part in August 2010, about three months before Hotels.com’s supplemental interrogatory response disclosing the license. While a three month delay was sometimes acceptable, it was not in this case. Fact discovery closed seven months before the agreement was executed and ten months before the supplemental response identifying the license. And expert discovery was set to close four months after the supplement. Civix, therefore, would have been prejudiced by Hotels.com’s three month delay in this case. So, the license was excluded.

Northern District of Illinois Institutes Plan in Case of Government Shutdown

By R. David Donoghue on April 8th, 2011 Posted in Legal News

Chief Judge Holderman has instituted an operations plan in the event of a federal government shutdown. The Northern District will operate normally for the first two weeks of any shutdown. Should a shutdown continue longer than two weeks, the Northern District will operate with essential personnel as set forth by the United States Court’s Administrative Office. Here is the full text of Chief Judge Holderman’s statement:

To the People of the Northern District of Illinois,

Please be assured that here in the Northern District of Illinois, Clerk of the Court Mike Dobbins and I have conferred and have developed a plan for our court to deal in the short term with the contingency now facing us of Congress failing to pass the federal budget or to authorize another continuing resolution.

We will keep the United States District Court for the Northern District of Illinois open and functioning with only minor modifications in our procedures for at least two weeks if Congress fails to establish a budget to keep the United States Government functioning. If the shutdown continues longer than two weeks, the court will continue to operate with essential personnel as defined by guidelines issued by the Administrative Office of the United States Courts.

We plan to continue to provide justice to the fullest extent possible and in the same excellent way as we have in the past. Thank you for your understanding.

Chief Judge James F. Holderman

New N.D. Illinois Judges Panel: Judge Chang

By R. David Donoghue on April 8th, 2011 Posted in Legal News

In late January, the Northern District’s six newest judges attended a Federal Bar Association panel to offer insights into their practices and chambers. The recurring theme of the discussion was a call for civility: Civility in court. Civility in briefs. Civility in emails. Over the next several weeks, I will provide summaries of each judge’s comments and insights. This post (the second nin the series) focuses upon Judge Chang (a University of Michigan aerospace engineer like me Go Blue!):

Send someone to hearings that knows the case and/or motions.
Civility: Do not casually suggest misconduct; avoid work like "fabricated," "concocted" or "misleading".
Rule 56 motions: omit unnecessary details and "use brevity."

Court Distinguishes Non-Privileged Facts About Counsel

By R. David Donoghue on April 6th, 2011 Posted in Discovery

DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 C 1531, Slip Op. (N.D. Ill. Jan. 12, 2011) (Nolan, Mag. J.)

Judge Nolan granted in part defendant 3D System’s motion to compel further Fed. R. Civ. P. 30(b)(6) testimony from plaintiff DSM Desotech ("DSM") in this patent dispute regarding 3D Systems Zephyr recoater. First, the Court held that the rules, responsibilities and dates of prosecution counsel’s involvement was neither privileged, nor work product. Similarly, whether prosecution counsel was aware of the Zephyr recoater during prosecution was not privileged.

The Court held that a Local Rule 83.51.10 screen of DSM’s former counsel, which had moved to a firm representing 3D Systems, did not prevent DSM from contacting its counsel to determine what they knew about the Zephyr recoater at the relevant time. Local Rule 83.51.10 does literally require that plaintiff have no contact "for or against" 3D Systems. But that reading is inconsistent with the purposes of the Rule.

Desotech was not required to gather information from a company it acquired, for the period before the acquisition. Pre-acquisition knowledge would not be imputed to the acquiring entity, DSM in this case. The Court also held that the fact that 3D Systems could or had gathered the requested information from other witnesses or documents did not relieve DSM of its duty to provide Rule 30(b)(6) testimony.

Finally, the Court denied both parties’ requests for sanctions because there was room for reasonable disagreement between the parties.

Chicago IP Colloquium Discusses Trademark Bullies

By R. David Donoghue on April 4th, 2011 Posted in Legal News

The annual Chicago IP Colloquium continues this Tuesday, April 5, 2011. 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 Leah Chan Grinvald, Saint Louis University School of Law, discussing: Social Shaming: Fighting Back Trademark Bullies.

New N.D. Illinois Judges Panel: Judge Gilbert

By R. David Donoghue on April 1st, 2011 Posted in Legal News

In late January, the Northern District’s six newest judges attended a Federal Bar Association panel to offer insights into their practices and chambers. The recurring theme of the discussion was a call for civility: Civility in court. Civility in briefs. Civility in emails. Over the next several weeks, I will provide summaries of each judge’s comments and insights. This post (the first in the series) focuses upon Magistrate Judge Gilbert:

If you bind a document, spiral bind.
Do not play with margins, spacing, or font in your papers.
Deliver courtesy copies before the close of business.
In settlement conferences "be prepared and know your case."
For settlement conferences, educate clients and prepare them to be flexible.