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Category Archives: Discovery

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Plaintiff May Not Communicate with Does in BitTorrent Case by Email or Phone

Posted in Discovery

The Thompsons Film, LLC v. Does 1-60, Slip Op. 13 C 2368 (N.D. Ill. Sep. 6, 2013) (Gottschall, J.).

Judge Gottschall denied two Doe defendants’ motions to quash subpoenas to their respective ISPs seeking, among other things, their identities based upon their IP addresses in this BitTorrent copyright case.  The Court held that a copyright holder alleging infringement had the right to discovery the potential identity of the accused infringer, it did not matter that someone other than the owner of the IP address may have actually performed the accused infringement.

The Court did, however, allow the Doe defendants to proceed anonymously because of the “substantial possibility” that the IP address owner did not commit the accused acts, but rather someone else did using the Doe’s network.  The Court ordered plaintiff not to identify any Doe in a pleading filed with the Court except by IP address or by Doe#, absent a further order of the Court allowing public disclosure of the Doe’s identify.  The Court also limited the subpoenas to seeking the Doe’s name and address.  Plaintiff was not entitled to phone numbers or email addresses, and plaintiff was not allowed to contact the Does directly by either email or phone.

Dropped Copyright Claim Alone Cannot be the Basis for Copyright Misuse

Posted in Discovery

John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, Slip Op., No. 12 C 1446 (N.D. Ill. Sep. 16, 2013) (Keys, Mag. J.).

Judge Keys granted in part defendant McDonnell Boehnen’s (“MBHB”) Fed. R. Civ. P. 37 motion to compel document production and interrogatory responses in this copyright infringement case involving the use of various copyrighted scientific articles.  The Court previously warned that discovery could not be used as a fishing expedition, but allowed certain discovery regarding MBHB’s alleged use of the copyrighted articles in their law practice.  MBHB asserts fair use, laches and estoppels as affirmative defenses. 

The Court ordered production of budgetary information from plaintiff’s relevant group because the annual reports plaintiff already produced lacked information regarding operating costs, allocation of shared costs, and revenue expense drivers.  Additionally, they were prepared by or with input from key witnesses.

The Court denied MBHB’s request to compel a response to an interrogatory seeking the basis for plaintiff’s statements in its complaint that plaintiff had reviewed public records and found “substantial evidence of unlicensed copying . . . .”  Plaintiff had already withdrawn the claim, and making the claim could not be a basis for copyright misuse.

Court Will Not Expedite Discovery Decision After Party’s Delayed Filing

Posted in Discovery

Tellabs Ops., Inc. v. Fijitsu, Ltd., No. 09 C 4530, Slip Op. (N.D. Ill. Feb. 13, 2014) (Cole, Mag. J.).

Judge Cole denied plaintiff/counter-defendant Tellab’s motion to expedite ruling upon Tellab’s motion to reclassify certain confidential documents or that Tellab’s executives could review the documents before a looming mediation.  The Court denied the motion for several reasons:

  • Tellabs should not have waited until four weeks before a mediation to complete briefing about documents that were reviewed as much as one year ago.
  • With the motion noticed four days before the mediation and eight categories and hundreds of pages to review, the Court could not meaningfully consider the issues.
  • The motion to expedite was the 1,185th document filed in the five-year-old case, with two prior mediations.  Parties and counsel should already be well-versed in the case and ready for mediation based upon the already extensive schedule to date.
  • Tellabs offers no reason it could not postpone the mediation instead of expending the Court’s limited resources.

Having denied to expedite its decision, the Court said it would attempt to decide the motion before the mediation.

Court Maintains Secrecy of Copyright Doe Defendants Because of “Substantial Possibilit[y]” of Misnaming

Posted in Discovery

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. 

Expert Opinions Outside an Expert Report are Barred

Posted in Discovery, Experts, Trial

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.

Technical Expert Opinions Regarding Willfulness are Excluded

Posted in Discovery, Experts, Trial

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: 

  1. 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.
  2. 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.
  3. 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.

Draft Expert Reports Protected as Work Product

Posted in Discovery, Federal Rules

The Medicines Co. v. Mylan, Inc., No. 11 C 1285, Slip Op. (N.D. Ill. June 13, 2013) (St. Eve, J.).

Judge St. Eve denied plaintiff The Medicines Company’s (“TMC”) motion to compel discovery withheld as privileged in this patent dispute.  Initially, the Court held that TMC failed to comply with Local Rule 37.2 by filing its motion to compel without having a meet and confer.  But the Court addressed the merits of the motion to avoid “needless delay.”

Drafts of defendant Mylan’s expert report were not discoverable.  Mylan’s counsel had not written the reports, they had merely provided a prior declaration, portions of which were used verbatim in the report.  TMC was, however, free to impeach the expert based upon his copying of the declaration.  Finally, TMC did not show the “substantial need” required to overcome the Rule 16(b) protections of the draft reports.

Copyright Discovery Limited to Accused Works

Posted in Discovery

John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 24, 2013) (Keys, Mag. J.).

Judge Keys granted plaintiff’s motion to clarify the Court’s order that plaintiff produce documents related to two copyrighted, scientific articles that plaintiff alleges that defendants infringed by using them before the U.S. Patent & Trademark Office.  While the requests were written broadly to encompass not just the two works, but all of plaintiff’s copyrighted works.  But such a broad reading would be overly broad and unduly burdensome.  So, the requests were limited to the two articles at issue or, in limited cases, “closely related scientific articles which are much like” the asserted works.



Discovery Limited to Avoid a Fishing Expedition

Posted in Discovery

John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 7, 2013) (Keys, Mag. J.).

Judge Keys granted in part defendant MBHB’s motion to compel document production and request for admission responses in this copyright case involving alleged infringement based upon MBHB’s use of two scientific articles before the U.S. Patent & Trademark Office and more generally in its legal practice.  MBHB sought discovery to prove that the accused conduct would not impact plaintiff’s market (for MBHB’s fair use defense) and that plaintiff knew about similar conduct and delayed unreasonably in acting to remedy it.  Of particular interest, the Court held as follows:

  • Information regarding plaintiffs’ investigation into MBHB’s accused acts was protected by privilege and/or work product immunity.
  • Plaintiff was to identify the entities from which MBHB could have received a license to the asserted works, at least in part because plaintiff had previously agreed to produce them.
  • Plaintiff was required to respond to requests for admissions regarding whether or not plaintiff used particular search terms on the Patent Office’s PAIR database as part of its pre-filing investigation.  The information was held to be merely factual and, therefore, not privileged.

Rule 30(b)(6) Witness Cannot be Instructed Not to Answer Questions About a Noticed Topic

Posted in Discovery

Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. May 8, 2013) (Cox, Mag. J.).

Judge Cox granted defendants’ (collectively “Crimson”) motion to compel answers to Fed. R. Civ. P. 30(b)(6) deposition questions and for sanctions in this trade secret dispute.  Crimson’s Rule 30(b)(6) deposition notice included a topic regarding plaintiff Peerless Industries’ (“Peerless”) alleged trade secrets.  Despite that, Peerless’ counsel instructed its witness not to answer questions regarding what Peerless’ trade secrets were.  The Court held that Fed. R. Civ. P. 30(c)(2) limits instructions not to answer to preserving privilege, enforcing court limitations or for a Fed. R. Civ. P. 30(d)(3) motion.  Peerless’ witness should have been required to answer questions regarding its trade secrets to the best of their ability.  As a remedy, the Court directed the parties to reconvene the deposition for up to three hours to question the witness on the trade secret topic, with Peerless paying for the court reporter and three hours of one of Crimson’s counsel time to take the deposition.

Although Discovery was Not Stayed, the Court Delays Discovery in Case Summary Judgment Resolves the Dispute

Posted in Discovery

Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. May 8, 2013) (Cox, Mag. J.).

Judge Cox granted in part defendants’ (collectively “Crimson”) motions to compel depositions and documents after the close of fact discovery.  Defendants sought the deposition of plaintiff’s prosecuting attorney.  Plaintiff Peerless’ only argument against the deposition was that the deposition should not occur while Crimson’s invalidity summary judgment motion was pending.  The Court agreed that taking the deposition now would be wasteful if summary judgment was granted and ordered that the deposition take place only if Crimson loses its summary judgment motion.

The Court could have issued the same order as to Crimson’s request to depose a third party who has allegedly an inventor of the patent in suit, but Peerless subpoenaed that deposition and then canceled it just before the close of fact discovery.  But the Court held that it would have been unfair to allow Peerless’ “last minute decision” to prohibit Crimson from taking the deposition.  The Court, therefore, ordered the deposition.

Finally, the Court denied Crimson’s motion to compel production of certain prototypes with leave to refile it, if Crimson lost its summary judgment motion.  The Court was open to the possibility that the discovery was relevant, but there was no point in requiring the production if Crimson were to win its invalidity motion.

Pursuit of a Meritless Case Does Not Rise to the Level of a Crime-Fraud Exception

Posted in Discovery

Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. May 14, 2013) (Cox, Mag. J.).

Judge Cox denied defendants’ (collectively “Crimson”) motion to compel production of a clawed back document based upon the crime-fraud exception.  Plaintiff Peerless Industries (“Peerless”) inadvertently produced a document and then clawed it back.  Crimson argued that the document demonstrated Peerless’ counsel’s belief that Peerless’ claims lacked legal merit and were being pursued to “distract and delay.”  The Court held that a potentially improper motive for filing suit did not rise to the level of a crime or a fraud that would have required waiver and production.  The Court did, however, note that pursuing baseless litigation in order to harm a competitor could be actionable as a tort.

Reply Expert Reports Must Only Respond to Rebuttal Reports

Posted in Discovery, Local Rules

Sloan Valve Co.. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. June 19, 2013) (St. Eve, J.).

Judge St. Eve granted in part defendant’s (collectively “Zurn”) motion to strike plaintiff Sloan Valve’s (“Sloan”) reply expert report in this patent dispute.  The Federal Rules and the Local Patent Rules do not typically allow reply reports without prior leave of Court for cause, LPR 5.3.  But the parties agreed to reply reports and the Court entered a reply report deadline, at the parties’ request.  So, a reply report was permissible, but only to the extent that it was responsive to the rebuttal report.  On that issue, the Court held as follows:

  • Recalculations using unweighted rations, which were mentioned but not used in the opening report, were permissible because they responded to a criticism in the rebuttal report.
  • The inclusion in calculations of “new” incremental costs was allowable as responsive to the rebuttal report.
  • The addition of an entirely new schedule and damages computation was not allowable.
  • Zurn’s expert was not allowed to file a supplemental expert report because the Court struck the improperly prejudicial portions of the reply report.


Arguments Disclosed in Summary Judgment are Preserved

Posted in Discovery

CBOE v. ISE, No. 07 C 623, Slip Op. (N.D. Ill. Mar. 6, 2013) (Lefkow, J.).

Judge Lefkow granted in part plaintiff CBOE’s motion to strike defendant ISE’s expert witness in this patent case, as follows:

  • This case was not governed by the Local Patent Rules (“LPR”) because it was filed before the LPR became effective.
  • Although ISE’s interrogatories did not specifically identify its doctrine of equivalents theory, ISE sufficiently disclosed its theory as to claims 4, 35 and 36 during discovery, including in ISE’s summary judgment motion.
  • ISE did not sufficiently disclose its doctrine of equivalents argument as to claim 56.
  • CBOE was not prejudiced as to claims 4, 35 and 36 because the arguments were disclosed at least at summary judgment.
  • CBOE was prejudiced by ISE’s failure to disclose it argument as to claim 56.  ISE’s doctrine of equivalents argument as to claim 56 was, therefore, struck.
  • ISE had sufficiently disclosed its commercial success arguments by disclosing its product and the nexus between the patent and the product.  ISE identified its argument as early as its initial discovery responses.


Spoliation Sanctions were Premature Until the Parties Determined Whether Evidence was Actually Destroyed

Posted in Discovery

Digital Design Corp. v. Kostan, No. 11 C 6243, Slip Op. (N.D. Ill. Dec. 7, 2012) (Holderman, C.J.).

Judge Holderman denied without prejudice plaintiff’s motion for sanctions based upon alleged spoliation of evidence in this copyright case involving InVision software.  Defendant acknowledged deletion of a copy of the InVision software from his harddrive which allegedly contained metadata showing when he worked on the software.  But defendant argued that a copy of the program was recovered as part of a forensic scan in a related state court case.  Plaintiff replied that the recovered copy may not have all of the relevant metadata as it originally existed and that the terms of the state court protective order did not allow plaintiff access to the recovered file.  The Court ordered that defendant waive the relevant terms of the protective order so that plaintiff could access the file for purposes of this case.  And the Court denied the motion for sanctions with leave to refile after the parties reviewed the recovered file.


Motion to Add Counterclaim Granted Where Schedule has Ample Time for Discovery

Posted in Discovery

CIVIX-DDI, LLC v. Loopnet, Inc., No. 12 C4968, 7091 & 8632, Slip Op. (N.D. Ill. Feb. 6, 2013) (Holderman, C.J.).

Chief Judge Holderman granted defendant Loopnet’s Fed. R. Civ. P. 15(a)(2) motion to amend its answer and counterclaims add a counterclaim for breach of contract alleging that plaintiff CIVIX-DDI breached a license between the parties by filing this suit.  The Court held that the case schedule provided CIVIX-DDI ample time to seek discovery on Loopent’s counterclaim.  Additionally, Loopnet’s prior refusal to produce documents regarding the defense was not a reason to deny Loopnet’s motion.  Should Loopnet continue refusing to produce after entry of the counterclaim, CIVIX-DDI may move to compel the necessary information.


Law Firm Must Perform Limited Search for Use of Allegedly Infringed Scientific Papers

Posted in Discovery

John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. Feb. 12, 2013) (Keys, Mag. J.).

Judge Keys granted in part plaintiffs’ motion to compel discovery responses regarding use of its copyrighted articles. Plaintiffs accused defendant McDonnell Boehnen Hulbert & Berghoff (“MBHB”) of copyright infringement based upon alleged use of plaintiffs’ articles in MBHB’s legal practice before the U.S. Patent Office, as well as in litigation and client counseling. Plaintiffs demanded that MBHB search each of its employees’ files, email and hard drives for potential infringing use of the articles. The Court held that while some discovery was relevant to plaintiffs’ broad copyright infringement claims, plaintiffs’ demand went too far. Instead, the Court ordered that MBHB perform a search that it has suggested as a compromise position during the parties’ discussion of the discovery requests, specifically:

  • Search MBHB’s electronic document management system for copies of the articles;
  • Search the index of MBHB’s off-site document storage for references to the articles and manually search any files identified;
  • Ask each MBHB lawyer, law clerk or technical advisor if they remember using the articles; and
  • Search the paper and electronic files of two individuals previously identified as having used the articles in their practices.


Doe Defendant Allowed to Use Pseudonym in Porn Download Case to Avoid Abusive Litigation Tactics

Posted in Discovery

Sunlust Pictures, LLC v. Does 1-75, No. 12 C 1546, Slip Op. (N.D. Ill. Aug. 27, 2012) (Tharp, J.).

Judge Tharp denied Doe defendant’s motion to quash a subpoena seeking his identifying information from his cable provider in this BitTorrent copyright case, but allowed the Doe to proceed in the suit using a pseudonym.  The Court also denied Doe’s motion to sever the Doe defendants.  As an initial matter, while a party to a suit usually has no standing to move to quash a third party subpoena, there is an exception in cases such as this one where the subpoena implicates that party’s privacy.  But Doe’s motion to quash was based upon an argument that the 75 Does were not properly joined.  That, however, is not a valid ground for quashing a subpoena.

Plaintiff Sunlust’s joinder was not inappropriate in this case, despite district courts’ increasing concern regarding improper joinder of multiple Does in pornographic downloading cases around the country.  Sunlust alleged that each Doe participated simultaneously in a single BitTorrent “swarm” and that the Does were sharing portions of the file between themselves as a part of that process.  A swarm is the collective act of downloading a particular file.  And joinder was further supported by Sunlust’s civil conspiracy claim alleging that the Does, as part of a single swarm, were engaged in a conspiracy to unlawfully distribute the copyrighted movie.  Furthermore, the Does faced common legal and factual questions regarding Sunlust’s copyright claims.

In order to avoid abusive litigation tactics, the Court ordered that Sunlust only contact Doe through counsel and that Doe could proceed using a pseudonym, at least during discovery. 


Parties’ Employees May Maintain Work Product Protection, Just Not in This Case

Posted in Discovery

Tellabs Ops., Inc. v. Fujitsu Ltd., No. 08 C 3379 & 09 C 4530, Slip Op. (N.D. Ill. May 1, 2012) (Cole, Mag. J.).

Judge Cole denied defendant and counter-plaintiff Fujitsu’s motion for a protective order prohibiting plaintiff and counter-defendant Tellabs from getting discovery regarding Fujitsu’s inspection of Tellabs’ optical scanner in this patent litigation regarding optical amplifiers.  Fujitsu argued that the inspection was conducted by its employees specifically in anticipation of litigation and, therefore, was work product because the employees would not be testifying at trial.  The issue before the Court was whether an employee could be “specially employed . . . in anticipation of litigation” pursuant to Fed. R. Civ. P 26(b)(4)(D). 

The district courts were split on the answer.  The Court noted that had the Rule been intended to expressly exclude a party’s employees, it would likely have required that the individual be “specially retained” instead of “specially employed.”  The Advisory Committee Note was also instructive, if not conclusive, in excluding generally employees not “specially employed on the case.”  If the Advisory Committee intended to exclude general employees, it could have excluded all general employees in the Note. 

Having determined that the Fujitsu employees could be protected by Rule 26(b)(4)(D) as specially employed, the Court turned to the facts of the case.  But Fujitsu had not met its burden to show that its analysis was done in anticipation of litigation, for at least the following reasons:

  • The evidence showed competition issues, not an expectation or anticipation of litigation at the time of the analysis.
  • The “primary motivating purpose” behind the investigation was not litigation, but at least include competitive concerns.  The fact that the reasons may have later “morphed” into litigation was not relevant.

The Court also commended both sides and their counsel for rarely presenting discovery disputes to the Court.

Third Party Given a Second Chance to be Deposed

Posted in Discovery

Coach Services, Inc. v. Durbin’s Restaurant & Bar, No. 10 C 7154, Slip Op. (N.D. Ill. Jul. 25, 2012) (Kim, Mag. J.).

Judge Kim continued plaintiff’s motion to compel a third party deposition in order to give the third party an opportunity to comply.  The Court gave the third party two options:

1.         Appear for a hearing to explain her reasons for not appearing for the deposition; or 

2.         Contact plaintiff’s counsel to schedule and then sit for the deposition.

The Court encouraged the third party to schedule and sit for the deposition because even if the third party had a valid reason for missing her deposition and the Court accepted it, the Court would still order that she sit for a deposition at a later date.  So, either choice would end in a deposition. 


Court Reminds Plaintiff of Rule 11 Obligation in Adult Movie Download Case

Posted in Discovery

Hard Drive Prods. v. Does 1-48, No. 11 C 9062, Slip Op. (N.D. Ill. June 14, 2012) (Kim, Mag. J.).

Judge Kim denied two Doe defendants’ motions to quash subpoenas to their Internet service providers in this copyright case involving BitTorrent downloads of adult movies as part of a “swarm.”  The first motion was denied because it was filed anonymously by a pro se person identified by an IP address and signed with an “X.”  The anonymous filing did not meet the Fed. R. Civ. P. 11 requirement for a signed pleading.  The motion was, therefore, dismissed with leave to refile either using the Doe’s name or anonymously via counsel.

The second Doe defendant argued that its First Amendment rights to anonymous internet speech were being violated.  But there was no First Amendment right to copyright infringement.  Furthermore, there was no reasonable expectation of privacy in Doe’s subscriber information.  Finally, in light of the evidence that Doe did not commit infringing acts and the Court’s concern about Hard Drive Productions’ (“HDP”) tactics - having filed 118 lawsuits against 15,000 Does - the Court cautioned HDP to be “mindful” of Doe’s evidence and to consider “long and hard” before moving forward against this Doe so as to comport with Rule 11(b).

Court Orders Doe Disclosure After Time to Object

Posted in Discovery

Pacific Century Int’l. v. Does 1-31, No. 11 C 9064, Slip Op. (N.D. Ill. Jun. 12, 2012) (Leinenweber, J.).

Judge Leinenweber granted plaintiff Pacific Century International’s (“PCI”) Fed. R. Civ. P. 45(c)(2)(B) motion to compel subpoena compliance, in this BitTorrent copyright suit.  The subpoena sought identifying information from Comcast for certain of its internet service customers.  PCI had each Doe defendant’s IP address – a number assigned to a computer using the internet – but not the names, addresses or other identifying information associated with that computer or internet service account.  Recognizing that courts in the Northern District and elsewhere were split on the issue, the Court held that joinder was proper based upon the allegation that the Does were involved in the same BitTorrent “swarm” used to download the alleged infringing video.  The Court also noted that all of the Does sued in this case appeared to be Illinois residents based upon their IP addresses, unlike the Does in many other cases. 

The Court also noted the concern that PCI and similarly-situated plaintiffs were using the threat of being named in these suits to unfairly coerce settlements.  But getting the identifying information was necessary to move the case forward.  The Court, therefore, ordered Comcast to notify its customers of the pending disclosure pursuant to 47 U.S.C. § 551(c)(2) and then gave each such defendant thirty days from notice to object or otherwise move the Court for relief.  Comcast was to turn over the identifying information only after any such objections were resolved.  

Exceptional Case Finding Requires Additional Facts

Posted in Discovery, Local Rules, Summary Judgment, Trial

Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.).

Judge Dow held that plaintiff’s U.S. Patent No. 6,903,083 (the “’083 patent”) was invalid based upon a sale more than one year before the ‘083 patent’s filing date and denied defendants’ motion to find the case exceptional and award attorney’s fees, in this case related to vitamin D2.  As an initial matter, Judge Dow, although he would have been within his rights to do so, did not deem admitted facts that were not properly contested pursuant to Local Rule 56.1.  The Court did, however, explain that it would not consider improper denials.

The Court held that two sales by plaintiff more than one year before the filing date invalidated the ‘083 patent.  Plaintiffs argued that they were not in fact sales because while money changed hands, pursuant to a Supply Agreement, plaintiffs retained ownership of the goods.  But that argument “fail[ed] to get out of the gate.”  The Supply Agreement was for the manufacture of vitamin D2, for which hundreds of thousands of dollars were paid.

“[I]nference upon inference” favored finding the case exceptional and awarding defendants their attorney’s fees.  Plaintiffs lacked a plausible explanation for how they were unaware of the invalidating sales.  And instead of disclaiming the ‘083 patent and avoiding a large document production, plaintiffs continued asserting it.  But there remained a question of fact regarding what information plaintiffs’ executives had regarding the sales and when they had it.  The Court, therefore, allowed the parties to take further discovery on those issues before bringing the issue back to the Court. 

Lack of Meet & Confer Dooms Motion to Compel

Posted in Discovery

Pactiv Corp. v. Multisorb Techs., Inc., No. 10 C 461, Slip Op. (N.D. Ill. May 18, 2012) (Leinenweber, J.). 

Judge Leinenweber granted plaintiff Pactiv’s motion to reconsider the Count’s oral order requiring production of all items on Pactiv’s privilege log in this patent dispute involving oxygen scavengers.  During the hearing, the Court “lost in the din of the parties’ squabbling” that there had not been a Local Rule 37.2 meet and confer between service of Pactiv’s latest log and defendant Multisorb’s motion.  The Court, however, held that Pactiv’s log was deficient and required that Pactiv re-examine each document on its log to assure that the documents are in fact privileged.  And because Pactiv had been given five attempts at a privilege log, the Court ordered that the log include the following information:

  • The names of authors and recipients;
  • A description of who the parties, including both name and title;
  • “[M]ore thorough” descriptions of its documents.  For example, if a document is not between counsel it should be stated that it is relaying legal advice.

The Court also held that there was no discovery privilege regarding settlement negotiations, although admissibility of settlement discussion was a separate issue.