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

Lorillard Tobacco Co. v. Montrose Wholesale Candies & Sundries, Inc., No. 03 C 5311 & 0844, 2008 WL 954161 (N.D. Ill. Apr. 8, 2008) (Cole, Mag. J.).

Judge Cole denied plaintiff's motion for inspection and seizure of assets in its trademark counterfeiting case. The Court previously entered judgment for plaintiff – click here for more about this case in the Blog's archives. Plaintiff brought this motion seeking to identify and seize cash, checks and other financial instruments to satisfy the judgment. The Court held that the motion essentially sought a search warrant directed by plaintiff and utilizing Federal Marshals:

The reality is that the motion is tantamount to a request for a search warrant for Lorillard to enter and search the home of Ray and Sandra Hazemi and the business premises of Montrose Wholesale Candies and Sundries, Inc. (which is owned by them) and for permission to seize any cash, checks or other negotiable instruments belonging to the Hazemis and Montrose and to seize or at least copy all of their financial and accounting records. Nothing in the Motion, itself, suggests that the search and seizure will be accomplished by anyone other than Lorillard. It is not until one looks at the Proposed Order granting the motion that there is even a motion of United States Marshals. But even then, it is Lorillard, through its counsel of record, who is to carry out the search and seizure. The Marshals are merely to accompany Lorillard.

The Court held that the Federal Rules of Civil Procedure did not authorize search warrants. The Court further held that the request was not like a seizure of counterfeit goods, which was authorized by 15 U.S.C. § 1116(d)(1)(A), because it sought a post-judgment search to satisfy a judgment.

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Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., No. 03 C 2934, Slip Op. (N.D. Ill. Mar. 5, 2008) (Gottschall, J.).*

Judge Gottschall granted plaintiffs’ motion to strike defendants’ allegedly new reverse doctrine of equivalents non-infringement argument, which defendants withdrew in response to plaintiffs’ motion. But the Court denied the motion as to all other allegedly new arguments and as to defendants’ supporting affidavits. The Court held that defendants’ non-infringement arguments were sufficiently set out in their timely expert reports.

The Court also held that defendants’ expert affidavits, submitted with their summary judgment response briefs, were proper. Fed. R. Civ. P. 56(e) specifically permits use of affidavits as support for summary judgment arguments. And defendants’ expert affidavits met the requirements for expert affidavits:

• The experts supported their conclusions by showing their reasoning; and
• The methodology met Daubert standards.

Finally, it did not matter that discovery was closed and that plaintiffs, therefore, would not be able to test the affidavits in a deposition. Plaintiffs cited no authority for the proposition that post-discovery affidavits were not permitted.

*Click here for more on this case in the Blog’s archives.

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Yes! Following the rules, all of them, matters – federal and local, substantive and procedural, big and small. Regular readers will not be surprised by my answer. I have repeatedly reminded people, as do the Northern District judges (click here for examples of both), to comply with Local Rule 56.1.

But I also think it matters for more “minor” rules, such as the newly revised Fed. R. Civ. P. 11 & 26, which now require that counsel include an e-mail address along with a physical address and phone number (click here for my previous post on the December 1, 2007 Fed. R. Civ. P. amendments.)

My experience since December 1 is that most attorneys are not following the e-mail address requirement. It is unlikely that courts will sanction counsel for failure to provide an e-mail address, but to me, and I presume to at least some judges and clerks, it signals sloppy lawyering. It says that counsel is not staying current with changes in the profession. And it makes me wonder what else counsel is not current with. Have they explored the significant codification of electronic discovery rules from December 1, 2006? At least it is unprofessional, and at most it is an indication of a lack of knowledge of the current state of the law — a significant advantage to those of us that keep current.

Am I overreacting because these are "minor" rules that likely are not sanctionable? Comment to this post or send me an e-mail with your thoughts. I will post about whatever feedback I receive (without names, of course).

 

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Matteo v. Rubin, No. 07 C 2536, Slip Op. (N.D. Ill. Dec. 3, 2007) (Kendall, J.).

Judge Kendall denied defendant’s motion to dismiss plaintiff’s copyright infringement and related state law claims. Plaintiff photographed defendant’s daughter’s wedding pursuant to a contract between plaintiff and defendant’s wife. Defendant was allegedly unsatisfied with plaintiff’s photographs and, therefore, allegedly created numerous website regarding plaintiff’s photographs including defamatory comments about both plaintiff and his photographs. The Court held that plaintiff stated a claim for copyright infringement because he pled that he owned copyrights in his photos and that defendant infringed those copyrights by posting the pictures on websites. Plaintiff was not required to plead that defendant received any economic benefit from his alleged infringement. Additionally, plaintiff did not have to register his copyright before defendant’s allegedly infringing acts. Finally, the Court held that defendant’s fair use defense was not grounds for dismissal. Fair use is a factual inquiry best resolved on summary judgment or at trial.

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As promised last week, here are highlights of the substantive changes to the Federal Rules of Civil Procedure that went into effect last Saturday, December 1st:*

• New Rule 5.2 Privacy Protection  This rule limits what personal information can be left in public pleadings without redaction, unless a court orders the information to be publicly filed. Public filings may only include:  the last four digits of a social security number, tax identification number or other financial account number; the year of a person’s birth; and the initials of known minors (not whole names). All other information must be redacted or left out of the papers.

• Rule 11 Signing Pleadings  Signature blocks on all filings must now include an email address, in addition to counsel’s or a pro se party’s phone number and physical address. The comments to Rule 11 note that inclusion of an email address is a courtesy and is not an automatic consent to email service. For that, you still have to get a separate agreement with the opposing party.

• Rule 26 Discovery  As with Rule 11, signature blocks on all discovery papers must now include an email address, in addition to counsel’s or a pro se party’s phone number and physical address. The comments to Rule 26 note that if a party lacks an email address, a physical address or a telephone number, the party need not supply the nonexistent information. So, at least Rule 26 does not require that counsel get email accounts.  But Rule 11 does not have the same exception, so arguably Rule 11 does require that counsel have email accounts.

* This is only a summary of the substantive changes that I found most interesting or important. It is not a detailed explanation of all substantive changes.  For example, I did not explain the changes to Fed. R. Civ. P. 4 regarding summonses. If you want detailed advice regarding the Federal Rules, please consult your attorney or dig in to your copy of the Federal Rules.

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Tomorrow is the first anniversary of the “new” electronic data discovery (“EDD”) rules.* In fact, the EDD rules were not new, they were intended to be a codification of the basic rules already in use by the various district courts. Despite that, a study conducted by LexisNexis at the October Association of Corporate Counsel 2007 Annual Meeting in Chicago found that corporate counsel continue to struggle with implementation of the rules and confusion about what the EDD rules required. For example, 70% of respondents believed that electronic files had to be produced in their native formats. In fact, you simply must work with opposing counsel to decide what format to produce the files in, either their native formats or some chosen standard format. This confusion should not have surprised anyone. Even in IP circles, lawyers rarely fully understand a company’s IT infrastructure and the IT people rarely understand the legal process. This disconnect can be very dangerous when it comes to meeting EDD obligations.

If your company is still struggling with the EDD rules or, worse, avoiding them completely, you can solve your problems with some relatively simple actions. First, take a breath, open your copy of the Federal Rules and read them thoughtfully and then set up a meeting with the head of your company’s IT infrastructure, the head of your company’s legal department or litigation staff and an outside counsel with EDD experience. Working together, come up with a general plan for gathering and preserving the appropriate information as cases arise. Pay special attention to how your plan fits with the company’s overall data retention policies (yes, your company should have data retention policies and the policy should be followed carefully) and how to suspend any periodic or automatic data removal when a litigation hold needs to be instituted. Once you have a plan, meet periodically to update it and to ensure that it is being followed. If you are prepared for EDD, it is an excellent litigation tool. If you are not, it is a potential disaster.

For more on EDD, check out these blogs:

Alextronic Discovery

Dennis Kennedy

EDD Update

E-Discovery Team

E-discovery 2.0

Electronic Discovery Blog

Electronic Discovery Law (another LexBlog blog)

Ride the Lightning

Sound Evidence

Hat tip to the EDD Blog Online via Legal Blog Watch for identifying the LexisNexis survey..

* Tomorrow is also the date that the next set of changes to the Federal Rules becomes effective. Fortunately, these changes are largely focused on making the rules more readable instead of adding or changing obligations. But once you are prepared for the EDD rules, you should still turn back to your copy of the Federal Rules and read through the revisions.  Look for a blog post next week highlighting some of the substantive changes.

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Telewizja Polska USA, Inc. v. Echostar Satellite Corp., No. 04 C 3293, Slip Op. (N.D. Ill. Oct. 30, 2007) (Guzman, J.). 

Judge Guzman adopted Magistrate Judge Keys’s Report and Recommendation in its entirety, awarding plaintiff all of the approximately $800,000 in attorney’s fees and costs plaintiff sought pursuant to the fee-shifting provision in the parties’ agreement and Fed. R. Civ. P. 54(d). At trial, plaintiff sought approximately $2.8M for its breach of contract claim and approximately $5.8M for its unjust enrichment claim – the claims were plead in the alternative. The jury awarded plaintiff approximately $1.4M on the breach of contract claim. The jury also awarded defendant $1 in compensatory damages and approximately $18,000 in punitive damages on defendant’s defamation counterclaim. Defendant argued that plaintiff was not the prevailing party, as required by Rule 54(d) and, therefore, should not be awarded its fees and costs or, at least, should be awarded a reduced amount.

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Abbott Labs v. Baxter Healthcare Corp., No. 04 C 0836, 2007 WL 2875503 (N.D. Ill. Sep. 28, 2004) (Guzman, J.).

Judge Guzman granted plaintiff Abbott Laboratories’ (“Abbott”) Fed. R. Civ. P. 15(a) motion to amend its Complaint dismissing claims regarding its U.S. Patent No. 6,444,859 (the “’859 patent”). After the Federal Circuit held the parent of the ‘859 patent invalid, Abbott Labs v. Baxter Pharm. Prods., 471 F.3d 1363 (Fed. Cir. 2006), Abbott gave defendant Baxter Healthcare (“Baxter”) a covenant not to sue Baxter on the ‘859 patent (“Covenant”). Abbott, therefore, sought leave to dismiss its claims regarding the ‘859 patent. But Baxter argued that the claims should not be dismissed because the Covenant excluded any reissue or reexamination of the ‘859 patent, thereby creating an actual controversy. The Court held that Abbott’s potential suit based upon its potential reissue or reexam of the ‘859 patent did not create a current controversy. The Court, therefore, allowed Abbott to amend its Complaint dismissing claims regarding the ‘859 patent. 

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Sitrick v. Freehand Sys., Inc., No. 02 C 1568, 2007 WL 2298362 (N.D. Ill. Aug. 3, 2007) (Guzman, J.).

Judge Guzman denied plaintiff’s motion to amend the Court’s final order dismissing plaintiff’s patent infringement case with prejudice pursuant to Fed. R. Civ. P. 41(a)(1). Plaintiff sought to amend the order to include the terms of the parties’ settlement agreement because in Lynch v. SamataMason, Inc., 279 F.3d 487, 489 (7th Cir. 2006), the Seventh Circuit held that a court only maintains ancillary jurisdiction to enforce settlement agreements if the dismissal order contains (not just by incorporation) the terms of the agreement. But the Court denied the motion for two reasons. First, the Court’s original order was a nullity because it was issued after the parties filed their unconditional stipulation of dismissal pursuant to Fed. R. Civ. P. 41(a)(1) which immediately ended the Court’s jurisdiction. Second, because the amendment was not clerical, sought within one year of entry of the order or otherwise justified, Fed. R. Civ. P. 60 prevented the Court from amending the order.

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In re AD-II Eng’ing., Inc., Misc. Docket No. 07-852, Slip Op. (Fed. Cir. May 29, 2007).*

The Federal Circuit denied defendant AD-II Engineering’s (“AD-II”) writ of mandamus seeking to prevent Judge Gettleman from considering plaintiff SRAM Corp.’s (“SRAM”) motion to amend its complaint to add infringement allegations on a new claim and related summary judgment motion as to infringement of that claim. SRAM sued AD-II alleging infringement of SRAM’s patent for a system of shifting bicycle gears that prevents overshifting. The Northern District Court previously construed the claims of the claim initially asserted by SRAM, found the patent claim valid and entered judgment in favor of SRAM and an injunction against AD-II, a subset of these decisions are set out at SRAM Corp. v. AD-II Eng’ing, Inc., 326 F. Supp.2d 903 (N.D. Ill. 2005). On AD-II’s appeal of that decision, the Federal Circuit overturned the claim construction and, therefore, vacated the final judgments on validity and infringement – SRAM Corp., 465 F.3d 1351 (Fed. Cir. 2006). On remand, SRAM sought to amend its complaint asserting an additional claim and moved for summary judgment of infringement of the claim to be added. At a hearing on SRAM’s motions, the Northern District Court noted that there were problems with SRAM’s late effort to amend its complaint and add infringement allegations, but set a briefing schedule for SRAM’s summary judgment motion. AD-II then filed this writ of mandamus. The Federal Circuit refused to prevent briefing of SRAM’s summary judgment motion, reasoning that AD-II’s writ was premature because the Northern District Court had not yet decided whether to allow SRAM to assert its additional claim. 

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Varitalk, LLC v. Lahoti, No. 07 C 1771, 2007 WL 1576127 (N.D. Ill. May 30, 2007) (Conlon, J.).

Judge Conlon denied defendant Dave Lahoti’s (“Lahoti”) Fed. R. Civ. P. 60(b) motion for reconsideration of the Court’s previous opinion denying Lahoti’s motion to dismiss for lack of personal jurisdiction, improper venue and forum non conveniens (you can read more about the previous decision in the Blog’s archives). Lahoti, a California resident, operated a website from California using the domain name www.veritalk.com. Lahoti’s site was an internet portal which allowed visitors to his site to click through links to buy various products or services. The Court held that Lahoti’s website fell in the gray area between active websites (which create specific jurisdiction) and passive websites (which do not create specific jurisdiction). But the portal’s interactive and commercial nature combined with plaintiff Varitalk’s evidence that some consumers were confused and erroneously visited Lahoti’s website created personal jurisdiction. Lahoti argued for reconsideration because he contends that his website did not link to businesses located in or doing business in Illinois, and that a third party puts the content on his website. The Court denied both of these arguments, explaining that Varitalk had put presented evidence that Lahoti’s website included links to business with substantial Illinois operations and that whether Lahoti or an agent of his placed the content on his website did not change the Court’s analysis. But the Court’s procedural analysis may be the most useful part of this case for litigators. The Court notes that Lahoti styled his motion as a Fed. R. Civ. P. 60(b) motion for reconsideration, but that it is actually a Fed. R. Civ. P. 54(b) motion. Rule 60(b) is for reconsideration of final judgments, where as Rule 54(b) is for interlocutory decisions. A denial of a motion to dismiss is necessarily interlocutory.

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Hickory Farms, Inc. v. Snackmasters, Inc., No. 05 C 4541, 2007 WL 1576124 (N.D. Ill. May 29, 2007) (Kennelly, J.).

Judge Kennelly denied plaintiff’s motion for reconsideration of the Court’s decision that plaintiff’s "Beef Stick" and "Turkey Stick" marks were generic and the Court’s cancellation of the Beef Stick mark (you can read more about that opinion in the Blog’s archives). The Court denied plaintiff’s argument that it should be given more time, pursuant to Fed. R. Civ. P. 56(f) to conduct a survey to show that the marks are not generic. But the Court reasoned that plaintiff was free to conduct such a survey in the fourteen months of discovery leading up to defendant’s summary judgment motion. Furthermore, in its responsive briefing plaintiff specifically stated that plaintiff would “not seek to delay the briefing of this matter with its own survey at this time.” Instead, plaintiff suggested that it would conduct a survey if the Court denied defendant’s summary judgment motion. The Court held that after these statements, plaintiff’s current request to perform a survey was almost “frivolous.”

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Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. Jun. 8, 2007).*

Judge Rosenbaum (a visiting judge, who is the Chief Judge for the District of Minnesota) denied defendants’ Fed. R. Civ. P. 60(b) for relief from the Court’s judgment.  The Court held a trial in October 2006 resulting in a jury verdict that defendants’ insufflator (a device that blows a powder, gas or vapor into a body cavity) infringed plaintiff’s patent (you can read more about the case in the Blog’s archives). In their motion, defendants argued that the Supreme Court’s April 2007 obviousness decision, KSR Int’l Co. v. Teleflex Inc., __ U.S. __, 127 S.Ct. 1727 (2007), dramatically changed obviousness law and conflicted with the jury instructions which “nullif[ied] the jury verdict.” Defendants moved the Court to invalidate two claims of the patent in suit or to order a new trial on obviousness. But the Court held that even under the KSR standard, the jury’s verdict was fully supported by evidence at trial. Because a corrected instruction would not have changed the result, the erroneous instruction was harmless.

*You can read the opinion here.

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Papa John's Int'l, Inc. v. Rezko, No. 04 C 3131, 2007 WL 1521472 (N.D. Ill. May 21, 2006) (Moran, J.).

Relying on its prior opinion, which included a detailed analysis of the Complaint and notice pleading standards (you can read discussion of that opinion in the Blog's archives), the Court denied defendants' various Fed. R. Civ. P. 12(b)(6) motions to dismiss plaintiff's trade secret and trademark infringement claims.  Defendants argued that plaintiff did not sufficiently which defendants were alleged to have performed the acts at issue.  But the Court reasoned that defendants had notice of plaintiff's claims and that notice is all the Federal Rules require.  The Court pointed out that it had "covered much of this same ground in much greater detail" in its prior opinion and cautioned that "this case will not go away for any defendant by a motion to dismiss . . . ."

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Scholz Design Inc. v. Jaffe, __ F. Supp.2d __, 2007 WL 1276910 (N.D. Ill. Apr. 24, 2007) (Grady, J.).

Judge Grady treated plaintiff's untimely motion to reconsider as a Fed. R. Civ. P. 60(b) motion to vacate judgment (Judge Grady's previous order is discussed in the Blog's archives) and denied the motion because it simply rehashed previously rejected arguments.  After a bench trial, the Court entered judgment on behalf of defendants because they had neither directly nor contributorily infringed plaintiff's copyrighted home design.  The Court held that, while defendants approved the design, any actual copying of the copyrighted design was done by defendants' architects without defendants knowledge.  In the instant motion, plaintiff argued that defendants infringed its copyrighted designs as a matter of law because the Court had deemed admitted -- for failure to respond to requests for admission -- that the interior and exterior designs of the house at issue were derivative works based upon plaintiff's design.  But the Court explained that the admission of infringement did not include an admission as to which parties committed the infringement.  As a result, the Court denied plaintiff's motion and allowed its prior judgment to stand.

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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 06 C 4440, 2007 WL 1232089 (N.D. Ill. Apr. 25, 2007) (Manning, J.).

Judge Manning granted defendant's, Robert Bosch Tool Corp. ("Bosch") Fed. R. Civ. P. 12(c) motion for judgment on the pleadings, holding that plaintiff's, Black & Decker ("B&D"), patent infringement claims against Bosch's new product regarding B&D's previously asserted patents were barred by res judicata.  In the prior case before Judge St. Eve (numerous prior opinions are discussed in the Blog's archives), B&D asserted that two models of Bosch's Power Box radio (the "Old Power Box") infringed B&D's two patents (the "Old Patents").  Shortly before trial before Judge St. Eve, B&D brought the instant suit against Bosch asserting that Bosch's new model of its Power Box radio (the "New Power Box") infringed a third patent (the "New Patent").  At about the same time, B&D sought leave to present evidence at trial before Judge St. Eve that the New Power Box infringed the Old Patents.  Judge St. Eve, however, held that B&D had not disclosed the New Power Box as an accused product and that Bosch would be prejudiced by adding it immediately before trial.  After the trial before Judge St. Eve, the jury returned a verdict that the Old Power Boxes willfully infringed certain claims of the Old Patents.

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Flentye v. Kathrein, __ F. Supp.2d __, 2007 WL 1175576 (N.D. Ill. Apr. 18, 2007) (Filip, J.).

Judge Filip denied defendants' motions to dismiss, except as to plaintiffs' claim for punitive damages for intentional infliction of emotional distress, because Illinois law does not allow punitives for IIED.  Plaintiffs (collectively "Flentye") promoted apartment rental services , including some properties owned by Flentye, using their family name, Flentye.  Defendants competed with Flentye promoting similar apartments, some of which were owned by defendant Kathrein LLC.  Flentye brought suit against defendants alleging violations of the Anti-Cybersquatting Consumer Protection Act ("ACPA"), Lanham Act unfair competition and related state law claims.  Flentye alleges that defendants lost a dispute before the UDRP and were forced to return certain domain names to Flentye, including timflentye.com, flentye.com and flentyeproperties.com.  Flentye alleged that defendants then registered new domain name timflentye-not.com and used it to direct traffic to defendants' competing websites.  Flentye also alleged that defendants improperly used the term "Flentye" in its meta tags (key words embedded into a site's source code to director search engines to the site) to direct users seeking information regarding Flentye to defendants sites. 

Defendants first argued that Flentye failed to plead its veil-piercing claims and that, therefore, corporate defendant Kathrein LLC should be dismissed because there were not sufficient allegations against it without a veil-piercing theory.  But the Court held that notice pleading was sufficient for a veil-piercing argument and that Flentye met the notice standard.  It was sufficient that Flentye pled that individual defendant Kathrein  created defendant Kathrein LLC "for the sole purpose of holding title to local real estate through which [Kathrein] operates Lee Street Management" and that in the caption Kathrein LLC was identified as "d/b/a Lee Street Management."  The Court noted that while these allegations might not be sufficient to prove that the veil was pierced, they were sufficient for Fed. R. Civ. P. 8(a) notice pleading.  The Court also noted that a claim of corporate veil-piercing did not require Fed. R. Civ. P. 9(b) heightened pleading.

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Johnson v. Wright, No. 05 C 3943, 2007 WL 1079063 (N.D. Ill. Apr. 5, 2007) (Grady, J.).

Judge Grady denied defendants' Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff's amended complaint for lack of subject matter jurisdiction.  Defendants, record companies and related individuals, were accused of infringing plaintiff Syl Johnson's copyright in his song "Is It Because I'm Black," as well as related state law claims.  Defendants argued that there was not federal jurisdiction because the co-owners of Johnson's copyright had transferred their rights to one of the defendants.  The transfer, defendants argued, destroyed Johnson's federal copyright claim, leaving only state claims over which the Court lacked independent jurisdiction.  But defendants conceded that Johnson stated a claim for federal copyright infringement.  The Court held that Johnson's and defendants' alleged co-ownership of the copyright was an affirmative defense, not a jurisdictional matter.  Because Johnson had a well-pled claim of federal copyright infringement, the Court denied defendants' Rule 12(b)(1) motion to dismiss.  The Court also noted that defendants' motion was "essentially" a copyright infringement summary judgment motion, but because it was styled as a Rule 12(b)(1) motion on the pleadings, Johnson was not given adequate opportunity to present his response.  Additionally, the Court identified several questions of fact that would have prevented a grant of summary judgment based upon the exhibits attached to the parties' briefs.

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Google, Inc. v. Central Mfg. Inc., No. 07 C 385, 2007 WL 789418 (N.D. Ill. Mar. 12, 2007) (Kendall, J.).

Judge Kendall denied third party Leo Stoller's motion to intervene pursuant to Fed. R. Civ. P. 24 -- Stoller also filed a motion to interplead and various motions to suspend the proceedings for various reasons.  Plaintiff Google brought the instant suit alleging civil RICO violations based upon defendants' alleged scheme of falsely claiming trademark rights to extort money from legitimate trademark holders.  Defendants' opposed Google's application for its "Google" mark based upon allegedly fraudulent claims of common law rights in the mark in order to settle the dispute.  Stoller subsequently filed a Chapter 13 bankruptcy case, which was converted to Chapter 7.  The property of Stoller's estate included wholly-owned interests in defendants.  The Court denied Stoller's motion to intervene as of right because Stoller had no "direct, significant legally protectable" interest in the case.  To the extent Stoller was involved in the underlying actions, it was as an employee of one or more of the defendants and/or acting as defendants' representative, not in his individual capacity.  Similarly, the Court denied Stoller permissive intervention because of the Court's determination that adding Stoller would unduly delay the case.  The Court noted that the parties had entered a settlement contemplating Google's release of its monetary claims, contingent upon an entry of a permanent injunction and final judgment, a settlement the be "frustrate[d]" by Stoller's intervention.

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AutoZone, Inc. v. Strick, No. 03 C 8152, 2007 WL 683992 (N.D. Ill.  March 1, 2007) (Hart, J.).

Judge Hart denied plaintiffs' motion for a Fed. R. Civ. P. 54(b) entry of final judgment on plaintiffs' Lanham Act and related state law trademark infringement and dilution claims, which the Court dismissed in this opinion.  The Court denied the motion on two grounds.  First, plaintiffs notified the Court of their intent to file the motion 30 days after the Court's order dismissing the claims, but only entered it 37 days later.  The Court noted the Seventh Circuit standard is that a district court generally abuses its discretion by entering a Rule 54(b) judgment when the motion was filed more than 30 days after the underlying order was issued.*  Second, the Court denied the motion on substantive grounds.  Defendants' counterclaims, which were the only claims remaining in suit, involved overlapping factual issues with plaintiffs' dismissed claims.  Defendants sought cancellation of plaintiffs' Zone mark, one of the marks plaintiffs alleged defendants infringed in the dismissed claims.  Additionally, defendants' remaining claims alleged infringement of their Oil Zone mark, a mark that plaintiffs' dismissed claims alleged infringed their AutoZone and Zone marks.

*  The Court also noted that some litigants have argued that the Seventh Circuit standard is no longer good law, but stated that district courts throughout the Seventh Circuit continue to follow it with a string cite.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883286 (N.D. Ill. Dec. 18, 2006) (St. Eve, J.).*

Judge St. Eve granted judgment as a matter of law for plaintiff, holding that the jury's findings of invalidity and obviousness were not supported by legally sufficient evidence.  At trial, defendant introduced an article describing a prior art radio as 102(b) prior art using its expert.  But the expert testified that one of the claim elements was missing.  Defendant argued that pictures of the radio that were not used in the article, showed the device.  But the Court held that defendant could not piece together the article, testimony and pictures to prove that the article disclosed all elements of the claimed invention.  The jury's obviousness finding was not supported by legally sufficient evidence because defendant did not present clear and convincing evidence of a motivation to combine its obviousness prior art references.

* You can find much more on this case in the Blog's archives.

 

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After Hours Formalwear, Inc. v. Tuxedos, Inc., No. 06 C 2460, 2007 WL 404005 (N.D. Ill. Jan. 29, 2007) (Guzman, J.).

Judge Guzman denied plaintiff's Fed. R. Civ. P. 12(b)(6) motion to dismiss certain of defendants' tortious interference and antitrust claims.  Plaintiff, After Hours Formalwear ("AHF"), controls at least 50% of Chicago's formalwear market.  AHF acquired a group of formalwear stores operating under the mark "Modern Tuxedo" and converted them to its AHF mark.  Shortly thereafter, defendants, including Tuxedos, Inc., (collectively "Tuxedos") renamed its stores, "Formally Modern Tuxedo."  This renaming led to AHF's suit against Tuxedos for trademark infringement and unfair competition.  Tuxedos responded with counterclaims alleging tortious interference of various kinds, and both federal and state antitrust violations.  Basically, Tuxedos alleged that AHF was using baseless trademark infringement claims to harass Tuxedos' customers and push Tuxedos out of the market.

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Shen Wei (USA) Inc. v. Sempermed, Inc., No. 05 C 6004, 2007 WL 328846 (N.D. Ill. Jan. 30, 2007) (Guzman, J.).

Judge Guzman granted defendant leave to amend its answer adding inequitable conduct affirmative defenses and counterclaims alleging that plaintiffs failed to disclose their prior art sale of a medical glove embodying their invention, but not regarding the existence and sale of a third party's glove of which plaintiffs were allegedly aware.  The Court held that defendant's affirmative defense and counterclaim met the Fed. R. Civ. P. 9(b) standard with respect to plaintiffs' alleged sale of their own product more than one year before their priority date because, although defendant did identify the person who intended to deceive the USPTO, it was reasonable to conclude that the inventor was charged with the intent.  With regards to the sale of the third party, Ostar, glove defendant only alleged that plaintiffs generally knew of the glove and its materiality, but failed to disclose it.  Defendant did not plead with sufficient specificity:  who knew about the Ostar glove, what they knew, when they knew it, whether the failure to disclose was intentional or why the Ostar glove was material. 

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Goss Int'l Am., Inc. v. Graphic Management Assocs., Inc., No. 05 C 5622, 2007 WL 161684 (N.D. Ill. Jan. 11, 2007) (Valdez, Mag. J.).

Magistrate Judge Valdez  compelled certain foreign defendants (the "Swiss Defendants") to produce documents related to each Swiss Defendant's contacts with the United States.  After plaintiff filed its patent infringement claims against the defendants, the Swiss Defendants filed motions to dismiss the case for lack of jurisdiction.  They argued that no state had personal jurisdiction over them.  Plaintiff responded that the Court had jurisdiction pursuant to Fed. R. Civ. P. 4(k)(2), the federal long-arm statute.  Plaintiff also sought jurisdiction-related discovery to prove the necessary jurisdictional facts.  The  Court granted jurisdictional discovery and, based upon that decision, compelled the Swiss Defendants to produce documents relevant to their contacts with the United States after the Swiss Defendants refused to produce them pursuant to plaintiff's discovery requests.

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American Fam. Mutual Insur. Co. v. Roth, No. 05 C 3839, 2007 WL 63983 (N.D. Ill. Jan. 10, 2007) (Cole, Mag. J.).

Judge Cole recommended denying defendants' motion to modify Judge Guzman's preliminary injunction for lack of jurisdiction.  Judge Guzman, following Judge Cole's recommendation, issued a preliminary injunction to prevent defendants from using a list of confidential information regarding plaintiff's policy holders.  Defendants ultimately appealed the preliminary injunction and then filed a motion to clarify seeking modifications to the injunction  equivalent to what they were asking to be overturned on appeal.  After an exhaustive analysis of the procedural rules, the Court recommended denying the motion to modify for lack of jurisdiction because once defendants appealed the injunction, the district court loses jurisdiction over the appealed issues.

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Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883937 (N.D. Ill. Dec. 27, 2006) (St. Eve, J.).

Judge St. Eve denied defendant's emergency motion to prohibit plaintiff from sending Rule 65(d) notice letters regarding the Court’s permanent injunction to defendant’s customers (more on this case and the injunction in the Blog's archives). But before analyzing defendant’s emergency motion, the Court first addressed defendant’s prior motion to clarify the injunction which the Court previously denied. In the motion to clarify, defendant stated that it had sold approximately 150,000 infringing radios to various resellers prior to being enjoined. Defendant argued that those resellers should be free to sell their supplies of infringing radios. The Court denied the motion because it was first raised in a sur-reply brief regarding plaintiff’s motion for a permanent injunction without presentation of any detailed facts, legal argument or supporting case law. 

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Black & Decker v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883921 (N.D. Ill. Nov. 20, 2006) (St. Eve, J.).

Judge St. Eve's latest opinion in this patent dispute awarded plaintiff its costs pursuant to Fed. R. Civ. Pro. 54(d) over defendant's objection that plaintiff's alleged misconduct.  My analysis of Judge St. Eve's opinion which analyzed defendant's misconduct allegations, as well as opinions addressing numerous other aspects of this case and the resulting trial, can be found in the Blog's archives.  In response to defendant's allegations of misconduct, the Court cited her previous opinion finding that there was no misconduct and noted that counsel for both parties "exhibited rigorous advocacy on behalf of their clients."  The remainder of the opinion determined which requested fees were appropriate.  It serves as an excellent primer on what fees will be paid in the Northern District and what acceptable charges are for those fees.

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Conditioned Ocular Enhancement, Inc. v. Bonaventura, 05 C 3153, 2006 WL 2982140 (N.D. Ill. Oct. 17, 2006) (Zagel, J.).

Judge Zagel held that Illinois's absolute litigation privilege, which protects communications leading up to a litigation, did not protect a patentholder's cease and desist letters because, in addition to federal preemption issues, the Illinois privilege is limited to defamation and false light claims.  Plaintiff alleged that defendant was practicing its patented vision training services.  In addition to filing suit, plaintiff also sent certain of defendant's customers cease and desist letters warning that defendant was unlawfully using plaintiff's patented vision training methods.  Defendant filed several Lanham Act and tortious interference counterclaims alleging that plaintiff's cease and desist letters were sent in bad faith.

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Because the December 1st e-discovery Federal Rules changes are approaching, I will continue to provide links to resources for understanding and preparing for the changes.  The Legal Talk Network recently published this Coast to Coast podcast discussing the changes and their impact upon corporations.  It is worth listening to and could be a valuable resource for corporate litigants as well.

Thanks to the Illnois Trial Practice Weblog for identifying this podcast.

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Autotech Techs. Ltd. Partnership v. Automationdirect.com, Inc. 237 F.RD. 405 (N.D. Ill. 2006). (Cole, Mag. J.).

In this impressively detailed opinion, Magistrate Judge Cole grants defendant's motion for a protective order limiting plaintiff's in-house counsel's access to sensitive customer information and communications.  The parties faced a common problem, they had agreed that customer information, including customer identities and communications, would be limited to attorneys' eyes only, but could not agree as to whether plaintiff's in-house counsel could access the information.  Plaintiff argued that its in-house counsel played a lead role in the case and, therefore, required access to the information.  Defendant argued that in-house counsel were corporate decision makers, in addition to counselors, and would not be able to separate the knowledge of defendant's customers they would be exposed to when performing business-related functions.

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Nordstrom Consulting, Inc. v. M&S Techs., Inc., No. 06 C 3234, 2006 WL 2931677 (N.D. Ill. Oct. 12, 2006) (Darrah, J.).

Judge Darrah held that plaintiff plead sufficient allegations to meet the pleading requirements to include the individual defendants, Marino and Butler who were both employees of the corporate defendant, M&S Technologies ("M&S").  Plaintiff alleged that Marino and Bulter, acting on M&S's behalf, broke into plaintiff's computer, bypassed its digital security system and then downloaded, copied and distributed plaintiff's copyrighted software.  Based on these allegations plaintiff alleged copyright infringement, violation of the Digital Millennium Copyright Act, unfair competition and other common law claims.

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Last week the Federal Circuit Clerk published two top ten lists, The Top Ten Reasons Why Briefs Are Rejected and The Top Ten Reasons Why Motions Are Rejected.  They are not as entertaining as a David Letterman Top Ten List, but they are very useful for Federal Circuit practitioners.

I would love to see the Northern District Clerk's Office publish lists like these, but until then what rules violations have you seen motions or briefs for?

Thanks to the I/P Updates Blog for identifying these lists.

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The new electronic discovery amendments to the Federal Rules of Civil Procedure become effective in one month, on December 1st.  In preparation for practicing under the amended rules, this Law Practice Today page provides a wealth of links to sites discussing the amendments and electronic discovery generally (thanks to the Illinois Trial Practice Weblog for identifying this excellent resource).  Also, the federal judiciary posts a list of a