Osiris Entertainment, LLC v. Does 1-38, No. 13 C 4901, Slip Op. (N.D. Ill. Aug. 20, 2013) (Tharp, J.).
Judge Tharp granted plaintiff Osiris Entertainment’s Fed. R. Civ. P 26(d) motion to take expedited discovery prior to a Rule 26 conference in order to discover the potential identities of the thirty eight Doe defendants otherwise only identified by their respective IP addresses in this copyright case involving the alleged infringement of the movie Awaken via BitTorrent.
As an initial matter, the Court sua sponte considered whether the thirty-eight Does were properly joined. Recognizing a district split, that mirrors a national split among district courts, the Court held that members of the same swarm may be joined in a single suit even if their direct participation in the swarm did not overlap in time, explaining:
As noted above, BitTorrent requires a cooperative endeavor among those who use the protocol. Every member of a swarm joins that cooperative endeavor knowing that, in addition to downloading the file, they will also facilitate the distribution of that identical file to all other members of the swarm, without regard to whether those other members were in the swarm contemporaneously or whether they joined it later. In that light, permitting joinder among non-contemporaneous swarm participants does not seem novel or extreme; the law governing joint ventures and conspiracies, for example, clearly permits plaintiffs to proceed against groups of defendants who engaged in a cooperative endeavor to facilitate an unlawful object whether or not all of the members of the group took part in all of the actions of the group and without regard to when the members joined the group.
Citations omitted. The Court did, however, note that there would be some requirement of temporal proximity because at some amount of separation the analogy would break down. But in this instance, the alleged Does were involved over a “relatively brief” period.
Having determined that joinder was proper at least at the initial stages of the case, the Court granted Osiris Entertainment’s motion to issue subpoenas aimed at identifying the Does based upon their alleged IP addresses. The Court, however, prohibited Osiris Entertainment from publishing the Doe’s alleged identities without leave of Court, noting that there was a “substantial possibility[y]” that the individuals associated with a particular IP address were not the individuals that downloaded the allegedly copyrighted material.
Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 23, 2013) (St. Eve, J.).
Judge St. Eve granted defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s “corporate intellectual property practice” expert in this patent infringement case involving flush valves for use in plumbing fixtures. Zurn argued that the expert’s opinions regarding willfulness should not be allowed because they had not been sufficiently disclosed in the expert’s report. The expert sought to opine that Zurn had acted inconsistent with “normal standards of fair commerce”, thus making Zurn’s conduct was willful. The Court excluded those opinions because “normal standards of fair commerce” was never identified or discussed in the expert’s disclosures and reports. Furthermore, there were no corporate standards or other evidence of “normal standards of fair commerce” identified as having been considered by the expert in relation to his report. The Court also noted that Sloan Valve’s arguments regarding the purposes and testimony of the expert’s opinions had shifted throughout the briefing and hearing. And Sloan Valve’s failure to disclose the normal standards or corporate policies was not harmless or substantially justified. Without at least some notice of them, Zurn was unable to properly respond to them.
Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 12, 2013) (St. Eve, J.).
Judge St. Eve granted in part defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s technical expert in this patent infringement case involving flush valves for use in plumbing fixtures. Zurn argued that the expert should not be allowed to testify about willfulness issues or about life cycle testing of valves because of a lack of experience and reliable methods. Sloan Valve stipulated that the expert would not testify about the willfulness standard or about how Zurn’s actions related to the willfulness standards, for example what information was or was not relayed to outside counsel. The Court held as follows:
- The expert had sufficient qualifications. While the expert did not have specific plumbing expertise, he was sufficiently qualified. He had a degree in mechanical engineering, as well as a masters of science and doctor of philosophy in theoretical and applied mechanics. He was a registered professional engineer, a former professor of engineering, and a member of various engineering societies. And he has analyzed product designs regarding numerous patents. Finally, he had studied the wear on brass faucets.
- A battle of experts does not make the expert testimony unreliable. While Sloan Valve’s expert challenged portions of the expert’s life cycle analysis and while the expert had not performed life cycle testing in the relevant field, his background and experience were a sufficient basis of his opinions. These and any other issues could be probed upon cross-examination. Additionally, the Court considered that there was not a written standard for life cycle testing these valves. So, any expert would be performing the test or critiquing them based upon that expert’s experience.
- The expert’s opinion statements are admissible, but not those about willfulness. The Court allowed the expert’s alleged conclusory statements that the life cycle tests at issues were not an accurate simulation of real world conditions. They were expert opinions based upon experience, not merely conclusory, and might add the trier of fact. The Court, however, barred a statement that the test was developed to defeat the patent in suit and therefore were evidence of willful infringement.