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

Breakwater Trading, LLC v. Maslin, No. 06 C 4242, 2008 WL 619329 (N.D. Ill. Mar. 3, 2008) (Shadur, J.).

Judge Shadur dismissed plaintiff's trade secret misappropriation case with prejudice because of plaintiff's litigation misconduct. The Court held that plaintiff's witnesses:

• "]L]ied and fabricated evidence in a number of vital respects"; and
  
• "[P]ut a false face on vital facts."

The Court declined to consider plaintiff's arguments that its misconduct should be balanced by defendant's alleged misconduct. The Court also distinguished the case from Ty v. Softbelly's Inc., Nos. 07 -1452, -1519, -1782, -1793 and -2401, 2008 WL 405851 (7th Cir. Feb. 22, 2008). In Ty, the Seventh Circuit held that overturning a $700,000 jury award for a party's misconduct was excessive in comparison to the misconduct. *In this case, plaintiff was only deprived of a potential claim, not a jury's award.

[UPDATE]:  In a footnote, the Court noted that it was not making or implying any finding of fact as to whether counsel for either party acted professionally towards the other.  The opinion was only about testimony by plaintiff's witnesses.

*Click here for more on the Ty case in the Blog's archives.

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FM Indus., Inc. v. Citicorp Credit Servs., Inc., No. 07 C 1794, 2008 WL 717792 (N.D. Ill. Mar. 17, 2008) (Conlon, J.).

Judge Conlon granted Citicorp defendants and denied defendant Gelfand summary judgment of copyright infringement. Plaintiff FM Industries ("FMI") alleged that Gelfand infringed FMI's copyright in its TUCANS debt-collection software by continuing to use it after Gelfand's license expired. Gelfand argued that FMI could not prove ownership of the copyright because it could not produce the written assignment. But the Court held that FMI's deposition testimony was sufficient to create a material question of fact and, therefore, denied summary judgment.

Citicorp was accused of encouraging and inducing its outside attorneys to use the TUCANS software after their licenses expired. But at least in part because FMI failed to respond to Citicorp's Local Rule 56.1 statements or to submit its own responsive statements of fact, the Court accepted as true Citicorp's evidence that it told its outside attorneys to stop using TUCANS before licenses expired and that Citicorp was unaware that the attorneys continued using TUCANS.

Practice Tip: I cannot say it enough: you must strictly comply with Local Rule 56.1. Click here to read about other opinions considering Local Rule 56.1

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Gabbanelli Accordions & Imports, L.L.C. v. Italo-Am. Accordion Mfg. Co. et al., No. 02 C 4048, 2008 WL 351860 (N.D. Ill. Feb. 8, 2008) (Zagel, J.)*

Judge Zagel granted plaintiff summary judgment of trademark and trade dress infringement regarding plaintiff’s “wildly colorful” and “heavily ornamental” accordions. The Court awarded plaintiff approximately $500,000 in damages, attorneys fees and costs. Defendants – Italian entities that sold accordions in the United States – chose not to participate in the case. Instead, they filed an Italian case after this case was filed, but before defendants were served pursuant to the Hague Convention. The Court previously stayed a portion of the case pending the outcome of the Italian case, but noted that the stay may have been a mistake. Years after filing, the Italian case had not been resolved and defendants failed to participate in the U.S. proceeding based upon a belief that the Italian proceeding controlled. For example, defendants admitted personal jurisdiction when they failed to respond to jurisdictional Requests for Admission and instead of filing a motion to dismiss, defendants sent the Court an unsupported letter listing their complaints with the case and the Court’s jurisdiction over them. By failing to participate in discovery and not following the Court’s rules, defendants preempted whatever ability they might have had to make their case.

Practice tip: Participate and play by the rules. Even if you cannot or will not afford counsel, you must answer discovery, respond to motions and appear when required to. Failing to participate will not insulate you from judgment.

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

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Recycled Paper Greetings, Inc. v. Davis, No. 08 C 236, __ F. Supp.2d __, 2008 WL 282687 (N.D. Ill. Feb. 1, 2008) (Bucklo, J.).

Judge Bucklo denied plaintiff’s, Recycled Paper Greetings (“RPG”), motion for a temporary restraining order in this trade secret misappropriation action. RPG argued that it was either part of a joint venture or, at least, a confidential relationship with defendant Kathy Davis to develop a signature line of greeting cards. RPG contends that Davis took confidential information regarding the greeting card line to a competitor. Davis countered that she had terminated her contract with RPG pursuant to the contract’s termination provision before working with RPG’s competitor and there was, therefore, no breach or misappropriation. At an initial hearing, the Court suggested that live testimony might be required to fully resolve the motion for the TRO. But both parties told the Court that their respective witnesses would not be available during the necessary time frame to testify. Because no witnesses were available, the Court denied the TRO, holding that it lacked sufficient information to determine that RPG maintained its alleged trade secrets with sufficient secrecy or the nature of the relationship between RPG and Davis.

Practice tip: If you are seeking a TRO, line up commitments from your potential witnesses to be available both flexibly and quickly. Not many judges will grant TROs if plaintiff cannot present requested witnesses.

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Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Viachem, No. 07 C 4232, Min. Order (N.D. Ill. Nov. 27, 2007) (St. Eve, J.).

Judge St. Eve granted in part plaintiff’s Fed. R. Civ. P. 12(e) motion for a more definite statement regarding defendant The Ingredient House’s (“TIH”) affirmative defenses and counterclaim. The Court ordered TIH to amend its patent misuse affirmative defense to provide factual allegations outlining the alleged misuse. TIH’s original defense simply stated that plaintiff’s claims were “barred by patent misuse.” The Court also ordered TIH to amend “incongruous statements” in its pleading that appeared to be clerical errors.

The Court denied plaintiff’s motion as to TIH’s defamation counterclaim. TIH was not required to plead which state’s law governed TIH’s defamation claim.

Practice Tip: Defendants frequently plead affirmative defenses with an unsupported statement of the defense. The better practice, and the one that avoids Rule 12(e) motions, is to plead at least the basic facts underlying the defense.

 

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Discover Financial Servs. LLC v. National Union Fire Insur. Co. of Pittsburgh, PA, No. 06 C 4359, 2007 WL 2893624 (N.D. Ill. Sep. 26, 2007) (Pallmeyer, J.).

Judge Pallmeyer granted summary judgment that defendant National Union Fire Insurance Co. (“National Union”) did not have a duty to defend plaintiff Discover Financial Services (“Discover”) pursuant to Discover’s insurance policy (the “Policy”). Discover argued that its alleged infringement of a telephone call processing system patent was advertising injury covered by the Policy because Discover advertised various services when its customers used Discover’s phone system. But the Court held that the alleged infringement did not arise solely from advertising activities, as is required by the Policy. While Discover advertised services to callers, the main purpose of its system was conducting financial business and the underlying patent complaint against Discover alleged infringement without identifying any Discover advertising as infringing. The advertising, therefore, could not be considered the sole cause of the alleged injury.\

Practice tip: When responding to Local Rule 56.1 statements, make sure to support denials with admissible evidence. The parties in this case each made arguments that the Court disregarded because the opposing Rule 56.1 statements had not been refuted with evidence.

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I have not been able to fulfill my promised additional coverage of the inequitable conduct portion of the Trading Technologies v. eSpeed case, but it is not my fault.*  The Court decided to consider eSpeed's inequitable conduct and patent misuse defenses on the papers.  The Court ordered a briefing schedule that will complete briefing by early December for eSpeed's inequitable conduct and patent misuse defenses , as well as eSpeed's post-trial motions regarding willfulness and damages remittitur and TT's motions for its attorneys' fees and costs.  The Court has scheduled a status conference for December 20th.  Perhaps the parties will have rulings by the end of the year.

Practice tip:  In my experience, one of the dangers of doing inequitable conduct after the conclusion of the jury trial is that both the Court and the parties are exhausted and emotionally drained at the end of the jury trial (particularly after a multi-week trial like this one).  So, when it is time to try inequitable conduct, either the Court no longer wants the trial or the parties and the Court are so exhausted that they have trouble keeping their focus and energy level where it was for the jury trial despite the importance of the issues.  I do not know why the parties or the Court decided that inequitable conduct should be decided on the papers in this case.  But any time that inequitable conduct is to be tried after a jury trial, you run the risk that no live evidence will come in on inequitable conduct.

*  Click here to read much more about this case and Trading Technologies' ("TT") related cases in the Blog's archives

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Autotech Techs. Ltd. Ptnshp. V. Automation Direct.com Inc., No. 05 C 5488, 2007 WL 2746654 (N.D.Ill. Sep. 18, 2007) (Cole, Mag. J.).*

Judge Cole denied plaintiffs’ (collectively “Autotech”) motion to compel production of defendant Koyo Electronics’ (“Koyo”) touchscreen source code. In Autotech’s Third Amended Complaint – filed without the leave of Court required by Fed. R. Civ. P. 15, but later allowed by Chief Judge Holderman – Autotech alleged that defendants infringed Autotech’s copyrights in its touchscreen display images. Autotech also alluded to source code infringement, but did not explicitly claim it. 

In a later interrogatory response, Autotech stated that it was not claiming that defendants’ source code infringed Autotech’s copyrights, but reserved the right to amend the complaint adding such charges. Because Autotech had not sought leave to add source code infringement claims to its complaint, the Court held that the requested source code was not relevant and production was not required. The Court also noted that the request seeking source code was improper because it was served less than thirty days before the fact discovery close in violation of Local Rule 16.1. It did not matter that the deadline was ultimately extended because the extension was granted after the original fact discovery close and after the deadline for responding to the document requests.

Practice tip: Whenever a Court issues a fact discovery close, get out your calendar, count backward thirty days and mark the last day for serving discovery requests. You would be amazed at how many litigators do not take note of this important date.

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

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Shen-Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, 2007 WL 2903184 (N.D. Ill. Sep. 28, 2007) (Guzman, J.).

Judge Guzman denied defendant’s motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(b). Defendant argued that plaintiffs sold medical gloves embodying the claims of their patent, U.S. Patent No. 6, 953,582 (the “’582 patent”), to a glove with a coating of a skin-soothing substance in July 1999, approximately two years before the ‘582 patent’s July 1, 2001 critical date. Furthermore, plaintiffs admitted that they sold patented gloves as early as July 1999 by failing to cite any contradictory evidence in their responses to defendant’s Local Rule 56.1 statement.

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Gencor Pacific, Inc. v. Federal Labs., Corp., No. 07 C 168, 2007 WL 2298367 (N.D. Ill. Aug. 3, 2007) (Guzman, J.).

Judge Guzman granted defendants’ Fed. R. Civ. P. 12(b)(3) motion to dismiss for lack of venue. Plaintiff Gencor Pacific (“Gencor”) and defendant Federal Laboratories (“Fedlabs”) both distribute products including caralluma powder. Gencor alleged that Fedlabs infringed Gencor’s copyrights, engaged in unfair competition and other related state law claims by using various Gencor studies and literature to promote Fedlabs’s products. Gencor also alleged that Fedlabs’s Chairman defendant Jeffery Taub left a defamatory voicemail message for an Illinois-based Gencor distributor. Because defendants are all New York residents, venue was only proper in the Northern District if a substantial part of the events at issue occurred in Illinois. Gencor argued that the Illinois voicemail and various Fedlabs mailings to Illinois residents including the copyrighted studies constituted a substantial part of the events at issue. In support of its contentions, Gencor submitted only a transcript of the alleged voicemail. Gencor did not submit any mailings that had been sent to Northern District residents or a declaration stating that the voicemail had been received at a Northern District telephone number. The Court held that Gencor’s unsupported “bare allegations” did not meet Gencor’s burden of proving that venue was proper.

Practice tip: You must support factual allegations with evidence. Local Rule 56.1 forces parties to follow this advice for summary judgment motions (although many fail to follow the rule). But the requirement, although unwritten, is no less important for other motions. If you are ever not sure whether an allegation requires evidentiary support, err on the side of providing the support. I have never seen an argument lost because a party unnecessarily supported its factual allegations.

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United States Gypsum Co. v. LaFarge N. Am., Inc., No. 03 C 6027, 2007 WL 2091020 (N.D. Ill. Jul. 18, 2007) (Hart, J.).

Judge Hart granted in part defendants motion to enforce the Court’s order and denied plaintiff’s motion to compel discovery. The Court previously ruled upon the parties’ cross-motions for summary judgment, holding that plaintiff’s state law claims were not preempted by the Illinois Trade Secrets Act, but significantly limiting the claims and removing some defendants (you can read more in the Blog’s archives). Defendant sought reconsideration of the Court’s preemption ruling. But the Court held that the motion, filed three months after the Court’s opinion, was untimely and that it presented no new arguments. The Court granted defendant’s request that plaintiff be limited to the trade secrets it identified during fact discovery and prior to summary judgment briefing.

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Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2071991 (N.D. Ill. Jul. 18, 2007) (Cole, J.).

Judge Cole recommended that the Court grant plaintiff’s motion for contempt. The parties previously settled this trademark case and agreed to a consent judgment which required, among other things, that defendants include “prominent” disclaimers on any advertisements, including webpages, offering plaintiff’s products for sale from the secondary market. Plaintiff filed a motion for contempt arguing that defendant’s website did not include prominent disclaimers. The Court agreed, explaining that prominence could be achieved in several ways, but that “fine print” was not one of them:

Being a relational and contextual concept, “prominence” may be achieved in any number of ways: placement of words, type size, typeface, text color, etc. Prominence, however, is not achieved by the use of fine print disclaimers that are substantially smaller than any other print on a page.

Practice tip: When drafting settlement agreements, or other contracts, watch out for subjective words like “prominence.”  If you expect that you may need to enforce the agreement* later, try to define subjective terms in more objective ways. For example, plaintiff in this case could have required that the disclaimer be at the top of each page in bolded font at least four points larger than the largest print on the page.

* If you expect that the agreement might be enforced against you, subjective terms may be beneficial.

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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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PSN Illinois, LLC v. Ivoclar Vivadent, Inc., No. 04 C 7232, 2006 WL 3523760 (N.D. Ill. Dec. 7, 2006) (Kendall, J.).

Judge Kendall denied plaintiff's Fed. R. Civ. P. 59 motion for reconsideration of the Court's prior ruling (discussed in the Blog's archives) construing the claims of the patent at issue and granting summary judgment of noninfringement on behalf of defendant Ivoclar Vivadent, Inc. ("Ivoclar").  The Court denied plaintiff's motion for reconsideration because it considered each of plaintiff's reconsideration arguments in its original Opinion granting summary judgment.  But the Court spent some time on one of plaintiff's claim construction arguments regarding a patent related to porcelain veneers.  On reconsideration, plaintiff argued for a different construction of "ready for mounting."  In its original papers plaintiff did not argue for the proposed construction, although it did propose it in its Local Rule 56.1 Additional Statement of Material Facts.  The Court held that because claim construction is a matter of law, proposed constructions are not material facts and, therefore, cannot be put in LR 56.1 statements.  The Court noted its obligation pursuant to LR 56.1 to disregard legal arguments and conclusions placed in statements of fact.  The Court did, however, go on to consider plaintiff's construction and explain why the Court's original construction was correct.

Practice tip:  Think carefully about what goes into your LR 56.1 statements of material fact.  Do not put arguments in your statements of fact. And by all means, do not put arguments in your statements of fact and then omit those arguments from your brief. The Court will disregard them, and you will be out of luck. 

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Michael Sneed's Tuesday Chicago Sun-Times column included an entry entitled "Ring.  Ring."about the Northern District.  She rarely covers Northern District happenings, but the Conrad Black trial is major international news.  Sneed reports that during the Black trial, an attorney's cell phone "erupted" with a ring tone from The Exorcist.  The always gracious Judge St. Eve reportedly responded to the ring, saying "I hope you didn't program that ring just for this trial." 

While the Black trial is not intellectual property-related, I am blogging about Sneed's piece because it highlights an important practice tip:  If you cannot turn off your phone when you enter a courtroom, at least put it on vibrate.  Everyone has made the mistake of forgetting to silence your phone (mine was in church, very embarrassing), but to avoid it altogether leave your phone on vibrate permanently.

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Days Inns Worldwide, Inc. v. Lincoln Park Hotels, Inc., No. 06 C 2960, 2007 WL 551570 (N.D. Ill. Feb. 22, 2007) (Der-Yeghiayan, J.)

Judge Der-Yeghiayan granted plaintiff summary judgment on its trademark infringement and Illinois Deceptive Trade Practices Act ("IDTPA") claims, among others.  Plaintiff owns various marks relating to its Days Inn chain (the "Days Inn Marks").  Plaintiff licensed defendants Lincoln Park Hotels, Inc. and Richard Erlich (collectively "LPH") to use the Days Inn Marks in connection with the operation of a hotel in Chicago's Lincoln Park neighborhood.  In 2005, LPH sold the hotel to defendant Gold Coast Investors ("GCI") without informing plaintiff, in violation of the parties' license agreement.  GCI continued operating the hotel using the Days Inn Marks without licensing the rights to the marks from plaintiff.  As a result, plaintiff brought the instant action against defendants alleging that, among other things, GCI infringed plaintiff's Days Inn Marks and LPH contributorily infringed plaintiff's Days Inn Marks by selling the hotel to GCI with the knowledge that GCI intended to continue using the Days Inn Marks and without informing plaintiff of the sale or removing the Days Inn Marks from the hotel, as required in the parties' license agreement. 

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Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7713, 2006 WL 3718074 (N.D. Ill. Dec. 14, 2006) (Moran, J.).

Judge Moran's opinion addressed several motions in limine in preparation for a February 5 trial (good luck to both sides).  Of special note, the Court delayed ruling upon plaintiff's motion to exclude deposition testimony of two witnesses regarding prior use as hearsay .  Defendant argued, not surprisingly, that the testimony it intended to introduce was not hearsay.  The Court, however, could not rule on the motion because neither party provided the Court with copies of the relevant deposition testimony.  Practice tip:  always provide the Court with the evidence underlying your motions and arguments.  It is hard for a court to rule without seeing the evidence it is ruling upon.

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AutoZone, Inc. v. Strick, __ F. Supp.2d __, 2006 WL 3626770 (N.D. Ill.  Dec. 7, 2006) (Hart, J.).

Judge Hart granted summary judgment for defendants and dismissed all of plaintiffs' claims in this trademark case.  First, the Court did a detailed analysis of each of the seven likelihood of confusion factors and determined that a reasonable jury could not find a likelihood of confusion between plaintiffs' AutoZone mark and defendants' Oil Zone and Wash Zone marks.  The Court found that plaintiffs' mark was strong, but held that there was not great similarity between the marks, that plaintiffs' and defendants' services were not similar, and that there was no evidence of actual confusion or intentional infringement.  As a result, the Court dismissed plaintiffs' trademark infringement and unfair competition claims.

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Martin Eng. Co. v. CVP Group, Inc., No. 06 C 4687, 2006 WL 3541777 (N.D. Ill. Dec. 7, 2006) (Cole, J.).

Judge Cole granted defendant's motion for a 21 day extension to respond to written discovery requests.  Plaintiff refused to agree to the extension (for discovery due eight months prior to the close of fact discovery) and filed a written objection to defendant's motion citing a "pattern of dilatory conduct."  As examples of the pattern, plaintiff identified two items.  First, that it took defendant two weeks to respond to plaintiff's settlement offer, and only then after repeated calls from plaintiff.  And second, that defendant's Rule 26 disclosures were served nearly two weeks late.  The Court made clear that it did not condone a party ignoring the Court's deadlines or delay more generally, but noted that "not all delays are the same."

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Best Vacuum, Inc. v. Ian Design, Inc., No. 04 C 2249, 2006 WL 3486879 (N.D. Ill. Nov. 29, 2006) (Hort, J.).

In this trademark and Lanham Act unfair competition suit, Judge Hort granted summary judgment for defendant and dismissed the case.  Plaintiff had operated under the name "Best Vacuum" since 1983 and operated a www.bestvacuum.com website since 1996.  In 2003, defendant began operating a www.bestvacuumcleaners.com website, but when plaintiff complained, defendant changed its website to www.bestchoicevacuums.com.  After defendant refused to take down its second site, plaintiff sued.  Plaintiff's trademark infringement claim was dismissed earlier in the case because plaintiff never registered its "Best Vacuum" mark.  The case was before the Court on cross summary judgment motions.

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Wunderlich-Malec Sys., Inc. v. Eisenmann Corp., No. 05 C 04343, 2006 WL 3370700 (N.D. Ill. Nov. 17, 2006) (Ashman, Mag. J.).

Magistrate Judge Ashman granted plaintiff's motion to compel certain documents and held that defendant waived privilege as to certain documents it produced despite claiming attorney-client and work product privileges.  Defendant produced for inspection twenty two binders of documents, including four binders which defendant's counsel had internally identified as privileged and did not intend to produce for inspection.  About six weeks after the inspection, defendant realized that it had provided certain of these documents to plaintiff and sought the return of seventeen pages from the four binders.  Then, over the next several weeks, defendant sought the return of the remainder of the produced documents from the four binders claiming that they contained privileged information or trade secrets unrelated to the case.  Plaintiff retained the bulk of the documents arguing that any privilege that existed had been waived by disclosure of the documents.  Defendant argued that the documents were disclosed inadvertently and should be returned.

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Avery Dennison Corp. v. Naimo, No. 06 C 3390, 2006 WL 3343762 (N.D. Ill. Nov. 16, 2006) (Grady, J.).

In this trade secret dispute, Judge Grady dismissed plaintiff's breach of contract claim alleging defendant's breach of the parties' Employment Agreement because the Separation Agreement the parties subsequently signed included an integration clause.  When defendant began his employment with plaintiff he signed an Employment Agreement which required that, among other things, defendant not compete with plaintiff for twelve months after his employment ended and that defendant never use plaintiff's proprietary information for the benefit of anyone besides plaintiff.  When defendant later stopped working for plaintiff, the parties signed a Separation Agreement with a similar proprietary information clause and a strong integration clause, but apparently without a similar non-compete clause. 

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Civix-DDI, LLC v. National Assoc. of Realtors, No. 05 C 6869, 2006 WL 3210504 (N.D. Ill. Nov. 6, 2006) (St. Eve, J.).

Judge St. Eve denied defendant Yahoo! Inc.'s ("Yahoo") summary judgment motion which argued that plaintiff Civix-DDI's ("Civix") patent infringement claims were barred by Civix's covenant not to sue in its settlement agreement (the "Settlement Agreement") with third party Navteq, a provider of relevant navigation data to Yahoo.  The Court held that Yahoo was a third party beneficiary of the Settlement Agreement because Yahoo purchased the data at issue from Navteq and that the Settlement Agreement protected such third parties from suit.  But the Court found an issue of material fact as to whether each of Yahoo's accused activities "relate in any way" to the Navteq technology and information, as required by the covenant not to sue. 

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Following up on my recent post about Judge St. Eve's post-eBay permanent injunction opinion (the first in the Northern District), Michael Smith who writes the E.D. Texas Federal Court Blog has written a very interesting article analyzing the first nine district court permanent injunction decisions decided using the eBay standard.

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In the last few weeks intellectual property law has gotten lots of press coverage.  Friday's Chicago Tribune had a good article on the often misunderstood boundaries of copyright law generally and the Digital Millennium Copyright Act specifically.  It even touches on the broadly misunderstood Fair Use doctrine. 

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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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Jim Amend, a founder of the Kirkland & Ellis intellectual property group and longtime Chicagoan, was recently appointed the Federal Circuit's Chief Circuit Mediator.  Jim will take charge of the Federal Circuit mediation program in January 2007, shortly after it was changed from a voluntary to a mandatory program.

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Litetronics Int'l., Inc. v. Technical Consumer Prods., Inc., No. 03 C 5733, 2006 WL 2850514 (N.D. Ill. Sept. 28, 2006) (Ashman, Mag. J.).

Defendant sought sanctions pursuant to Fed. R. Civ. P. 37 arguing spoliation of evidence because plaintiff Coollite sold a factory in China which included various documents defendant had requested during discovery.  Judge Ashman denied the motion for sanctions because defendant had not shown that the documents had been destroyed.  The issue was who controlled the documents, but neither plaintiff nor defendants had requested the documents from the plant's new owner.  Additionally, defendant had not investigated whether the Hague Convention might allow for discovery of the documents.  This leads to an important practice tip:  make sure to ask for third party documents, or at least start the process of asking for them, before seeking help from a court to get the documents.

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Cobra Capital LLC v. LaSalle Bank Corp., __ F. Supp.2d __, 2006 WL 2720626 (N.D. Ill. Sept. 19, 2006) (Bucklo, J.)

In this trademark infringement dispute, Judge Bucklo denied defendants' summary judgment motion because there were material issues of fact regarding, among other things, the protectability of the marks at issue ("Making Impossible Possible" and "Make the Impossible Possible").  Defendants argued that the marks were descriptive of the banking and lease financing industry, and that the marks were "merely common self-laudatory advertising."  The Court, however, disagreed, stating that the latter argument  "borders on frivolous" and noting that defendants' argument was harmed by their corporate parent's pending application for the similar mark "Making More Possible."

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2006 WL 2632074 (N.D. Ill. Sept. 11, 2006) (Moran, J.)

In this claim construction opinion, Judge Moran made an interesting holding regarding the use of claim construction to resolve literal infringement issues. Defendant argued that plaintiff’s proposed constructions of “binary code” and “trinary code generator” were improperly driven by plaintiff’s infringement case. The Court noted that this was an infringement argument. The Court, therefore, would not address defendant’s argument in its claim construction opinion. This does not change my advice that you should explain why you are arguing for subtle variations of a construction. Rather, Judge Moran’s opinion illustrates that, after explaining the purpose of your proposed construction, you should be sure to ground your argument in the intrinsic and extrinsic evidence.

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Kennelsource, Inc. v. Barking Hound Village, LLC, No. 05 C 1788, 2006 WL 2578975 (N.D. Ill. Sept. 5, 2006) (Grady, J.)

Judge Grady dismissed plaintiff's complaint with prejudice for lack of personal jurisdiction.  Plaintiff alleged that defendants, several Georgia and Texas entities and individuals, worked together or at each other's direction to steal plaintiff's pet-care business management software and to infringe plaintiff's copyrights for the software.

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Trading Techs. Int'l., Inc. v. eSpeed, No. 04 C 5312, 4120 & 5164, 2006 WL 2506293 (N.D. Ill. Jul. 18, 2006) (Moran, J.).

Judge Moran requested additional briefing on remaining discovery disputes and denied defendant's motion to compel additional discovery regarding plaintiff's patent prosecution after both plaintiff and its prosecution counsel represented that they had produced all non-privileged documents.  The opinion itself is somewhat generic, except that Judge Moran made some reasoned comments regarding the discovery process that IP litigators should read and remember:

Discovery is a means for determining the truth, not an end in itself.  Indeed, in criminal cases where liberty, not just money, is at stake, discovery is much circumscribed.  Further, the discovery process depends upon the good faith of the parties and their counsel. . . .  More often, reasonably complete discovery requires some prodding--the party is loath to expend the effort or seeks to use delays as a bargaining chip in getting discovery from others, or is anxious about what full discovery might disclose.  Generally, however, we are convinced that litigants, represented by ethical counsel, recognize their obligations and act accordingly.  Therefore, courts customarily rely upon the representations of counsel that the party has complied. 

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Konvin Assocs. V. Extech/Exterior Techs., No. 04 C 2544, 2006 WL 2460589 (N.D. Ill. Aug. 21, 2006) (Kennelly, J.).

In this opinion, Judge Kennelly ruled on opposing summary judgment motions arguing invalidity and infringement issues.  As an initial matter, the Court refused to exclude opposing expert affidavits despite the fact that neither expert was disclosed as required by Rule 26(a)(2)(A).  The Court held that Rule 37(c) does not allow striking evidence based upon Rule 26(a) violations where the violation is harmless.  Because neither party argued that they were harmed by the failure to disclose the experts, the Court refused to exclude the expert affidavits.  The Court went on to deal with numerous invalidity and infringement issues, but I will focus on one more expert testimony issue.

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Ropak Corp. v. Plastican, Inc., No. 04 C 5422, 2006 WL 2385297 (N.D. Ill. Aug. 15, 2006) (Valdez, Mag. J.).

Magistrate Judge Valdez’s opinion ruled on plaintiff’s Rule 37 motion for sanctions based upon defendant’s repeated refusal to fully meet its discovery obligations in this patent infringement dispute. The opinion demonstrates an important point: a party must comply with a court’s discovery orders (even orders issued by the most reasonable and forgiving court, as here) or suffer the consequences.

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Shanklin Corp. v. American Packaging Mach., Inc., No. 95 C 1617, 2006 WL 2054382 (N.D. Ill. July 18, 2006) (Schenkier, Mag. J.).

In this case, Magistrate Judge Schenkier considered plaintiff’s Amended Bill of Costs after the two defendants were found to have infringed plaintiff’s patents, one defendant willfully.  The Court took pains explaining plaintiff’s math and proof-reading errors in plaintiff’s cost spreadsheet.  Apparently, defendant’s (only one defendant objected to the Bill of Costs) initial objections to the Bill of Costs were largely based upon plaintiff’s failure to explain and support its costs. Both parties would have saved attorneys fees – and the court would have been spared the task of sorting this out – had plaintiff taken the time to explain in detail its costs in the first place.  This opinion also provides a useful explanation of which standard costs are recoverable and which are not.

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Murata Mfg. Co., Ltd. v. Bel Fuse Inc., __ F. Supp.2d __, 2006 WL 2176241 (N.D. Ill. Jul. 28, 2006) (Gottschall, J.).

This detailed claim construction ruling demonstrates several useful practice tips. First:  work with opposing counsel upfront to determine which terms are actually in dispute. The parties’s initial briefing sought construction of nineteen terms, but when the Court required supplemental briefs post-Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the parties limited their briefing to only seven terms. This highlights the value of sitting down with opposing counsel before claim construction to identify the terms that are actually disputed.  Of course, this requires two reasonable parties represented by reasonable counsel, but you are better off at least trying. It is embarrassing to counsel and expensive for the client to learn, upon receiving the opposing brief, that a term that you spent hours, dollars, and valuable pages briefing is not actually in dispute. And of course, it is frustrating for the Court.

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The article Pet Peeves from the Bench by LA Superior Court Judge Victoria Gerrard Chaney is not about intellectual property law, nor is it about the N.D. Ill.  But I include it here to encourage anyone who ever appears in court to read it. Most of the article should be common sense for your average litigator, but apparently many of us need a refresher.  (Thanks to the