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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Category Archives: Discovery

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Arguments Disclosed in Summary Judgment are Preserved

By R. David Donoghue on 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

By R. David Donoghue on 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

By R. David Donoghue on 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

By R. David Donoghue on 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

By R. David Donoghue on 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

By R. David Donoghue on 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

By R. David Donoghue on 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

By R. David Donoghue on 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

By R. David Donoghue on 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

By R. David Donoghue on 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

By R. David Donoghue on 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.

Late Invalidity Contention Allowed With Sanctions

By R. David Donoghue on Posted in Discovery

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Apr. 12, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Sloan’s motion to strike defendant Zurn’s “late asserted” invalidity defense, to compel discovery and for sanctions in this patent case involving dual mode flush valves.

Worn Zurn Flush Valve

Sloan seeks production of information regarding certain worn Zurn flush valves.  While the worn valves may have been created for litigation, the work product doctrine would not cover the valves themselves or factual data regarding their fabrication and testing.  Furthermore, Zurn lost any work product protection to the factual information by claiming that the worn Zurn flush valves invalidate the patent in suit.  The Court, therefore, ordered Zurn to produce the worn valves, all non-privileged, factual information about them and a detailed privilege log.  The Court also ordered a Rule 30(b)(6) deposition on the worn valve and that Zurn pay the costs and reasonable attorney’s fees of the deposition, the motion to compel and one Sloan attorney to attend the deposition because of Zurn’s continued refusal to produce the documents and answer deposition questions.

Community Center Worn Valve

A “plethora of rules” including LPR 2.1(b), 2.3 and 3.2 and Fed. R. Civ. P. 26(e), required Zurn to produce information regarding its Community Center Worn Valve invalidity defense before it did – after serving Zurn’s Final Invalidity Contentions.  And the Community Center and Zurn worn valves were similar, but different.  As such, it was a “close call” whether to allow Zurn to use the Community Center defense.  The Court allowed Zurn to use its defense, but sanctioned Zurn requiring Zurn to pay Sloan’s reasonable attorney’s fees and costs for any necessary Community Center Worn Valve-related discovery.

Post-Discovery Close Due Dates Okay for Trial-Type Requests for Admission

By R. David Donoghue on Posted in Discovery, Trial

Kelly v. McGraw-Hill Cos., No. 10 C 4229, Slip Op. (N.D. Ill. Feb. 7, 2012) (Shadur, J.).

Judge Shadur granted plaintiff’s motion to file Fed. R. Civ. P. 36 requests for admission (“RFA”), even though the responses would be due after the close of fact discovery.  This is not an IP case, but the Court’s holding was valuable to all N.D. Illinois litigants.  First, the Court explained that while RFAs were established pursuant to Rule 36 which was within the discovery section of the Federal Rules, they could also have been put in the next section related to trials.  While RFAs could be used for discovery purposes, these RFAs were more akin to trial than discovery.  They largely sought to establish the admissibility of documents and to admit established facts. 

To require that trial-type RFAs be filed at least thirty days before the fact discovery close would move the fact discovery up at least thirty days, so that all discovery was exchanged and disputes resolved at least thirty days prior to the fact discovery close.

The Court also noted that it was not giving blanket approval to plaintiff’s RFAs.  For example, some were duplicative.  So, the Court ordered its parties to meet and confer to narrow any issues regarding the RFAs.

No Sanctions Where Conduct was Addressed in Earlier Motion to Compel

By R. David Donoghue on Posted in Discovery

Woltmann v. Chicago Gridiron, LLC, No. 11 C 5994, Min. Order. (N.D. Ill. May 3, 2012) (Norgle, J.).

Judge Norgle denied plaintiff’s sanctions motion in this copyright case.  The motion was based upon alleged conduct underlying an earlier motion to compel discovery that plaintiff lost before Magistrate Judge Ashman.  But plaintiff did not file a timely objection to Judge Ashman’s Order.  Nor did plaintiff sufficiently explain Judge Ashman’s reasoning to allow the Court to consider if the sanctions motion was somehow not duplicative of the original motion.

Apple v. Motorola: Reduction to Practice-Related Waiver is Limited

By R. David Donoghue on Posted in Discovery

Apple Inc. v. Motorola, Inc., No. 11C 8540, Slip Op. (N.D. Ill. Jan. 16, 2012) (Posner, J. sitting by designation).

In light of the upcoming trial of this case – in stages beginning with liability on June 11, 2012 – and the interest because of both the high profile parties and the fact that Seventh Circuit Judge Posner is presiding over the case, I am going to go out of order and profile a significant number of opinions from this case during June.

Judge Posner ordered Motorola to produce information redacted from a patent disclosure document.  The parties agreed that Motorola waived its attorney-client privilege regarding the conception date and reduction to practice of the ‘559 patent.  The Court also cautioned that the waiver was limited and did not apply to Motorola’s analysis, marketing, and competitive technological comparisons involving the ‘559 patent, nor did it waive Motorola’s patent policies or other topics.

Fees Awarded for Deposition Related to Rule 11 Investigation

By R. David Donoghue on Posted in Discovery

Morningware, Inc. v. Hearthware Home Products, Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Oct. 6, 2011) (St. Eve, J.).

Judge St. Eve granted in part plaintiff/counter-defendant Morningware’s motion to compel the deposition of defendant/counter-plaintiff’s employee that conducted pre-suit, Rule 11 testing in this Lanham Act and patent infringement case involving convection ovens. The Court held that the witness at issue – Kim – was involved in the testing. In fact, Hearthware produced a video showing Kim performing tests. Furthermore, not all of Kim’s actions were privileged. Communications with counsel were privileged, while testing was not. And even as to communications, Morningware was entitled to information regarding the date of the communication, the parties in the communication, their titles and the subject matter of the communications. The Court also granted Morningware its fees related to the motion.

Confidentiality Provision Does Not Prevent Production

By R. David Donoghue on Posted in Discovery

Morningware, Inc. v. Hearthware Home Products, Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Oct. 6, 2011) (St. Eve, J.).

Judge St. Eve granted plaintiff/counter-defendant Morningware’s motion to compel production from third party SKE in this patent and Lanham Act suit regarding convection ovens. SKE had an agreement with defendant/counter-plaintiff Hearthware that restricted SKE’s ability to disclose Hearthware’s confidential documents. The Court ordered SKE to produce the documents directly to Morningware, denying Hearthware’s request to review the documents for confidentiality first. The Court noted that Morningware’s agreement to initially treat all of SKE’s documents as Highly Confidential resolved confidentiality concerns.

Shared Downloading of a Movie Makers Joinder

By R. David Donoghue on Posted in Discovery

First Time Videos, LLC v. Does 1-76, No. 11 C 3831, Slip Op. (N.D. Ill. Aug. 16, 2011) (Bucklo, J.).

Judge Bucklo denied the Doe defendants’ various motions to quash or dismiss in this BitTorrent copyright infringement case. Plaintiff First Time Video ("FTV") alleged that the seventy-six Doe defendants infringed plaintiff’s copyright in an adult movie using BitTorrent and in so doing engaged in a civil conspiracy. The Court denied each motion: 

·       While file-sharers have limited first amendment rights, those rights do not shelter copyright infringement. 

·       FTV sufficiently described the alleged copyrighted work by naming the movie in the complaint. 

·       Joinder of the seventy-six Does was proper. FTV alleged that the Does acted in concert to copy one video over several months as part of a BitTorrent "swarm." And the case involved common legal questions regarding copyright law. 

·       The Court recognized that other Northern District judges had severed all of the Doe defendants. Those cases, however, involved many more Does, and did not show a connection to Illinois. FTV alleged that it had traced the accused IP addresses to Illinois using geo-location technology.

·       FTV’s personal jurisdiction allegations – that FTV traced the Doe IP addresses to Illinois – were also sufficient.

In-Court Deposition Ordered Based Upon Improper Coaching and Discussions

By R. David Donoghue on Posted in Discovery

LM Insur. Co. v. Aceo, Inc., No. 08 C 2372, Slip Op. (N.D. Ill. July 7, 2011) (Cole, Mag. J.).

Judge Cole granted a motion to compel further deposition testimony of a witness. During a deposition, the witness testified that she thought an "individual broker" may have received "’return’ (kickback)." When asked to identify the broker, her counsel objected that the question called for speculation and coached the witness through a speaking objection that she should not answer without "clear information." Counsel then took the witness out of the room while a question was pending for a discussion which lasted thirty minutes. After the discussion, the witness stated that she had been "speculating" and that "I don’t feel like what I said was correct." The Court noted that counsel’s coaching was wrong, but that the counsel’s most "disturbing" action was removing the witness to confer outside the deposition room. Furthermore, counsel never offered a justification for the conference during questioning. And in any event, the only acceptable explanation was determining whether the answer would have been privileged. However, there was no indication of that. Because of the deposition misconduct, the Court ordered that the deposition would continue in-court pursuant to the Court’s supervision. The Court also ordered an in camera conference with the witness and her counsel to determine whether there is any privilege protecting what counsel told the witness during the break in the original deposition. Finally, the Court declined to consider whether further action was necessary at the time of the opinion.

Subpoenas to Identify Does Allowed in BitTorrent Copyright Case

By R. David Donoghue on Posted in Discovery

MCGIP, LLC v. Does 1-316, No. 10 C 6677, Slip Op. (N.D. Ill. Jun. 9, 2011) (Kendall, J.).

Judge Kendall denied putative defendants’ motions to quash plaintiff MCGIP’s subpoenas seeking to identify users associated with specific IP addresses that allegedly used BitTorrent in a manner that infringed MCGIP’s copyrights in certain adult films. The Court’s key reasons for denying the motions to quash were:

MCGIP issued subpoenas to internet service providers ("ISP"), not the putative defendants. The subpoenas, therefore, did not create an undue burden on the putative defendants because the ISPs had a duty to produce documents, not the putative defendants.

MCGIP was seeking identifying information, none of which was privileged.

The subpoena requests were not outweighed by the putative defendant’s privacy or First Amendment rights.

Whether the Does were improperly joined is a premature question. As such, motions raising it were denied without prejudice to refile once the issue was ripe.

The putative defendants’ arguments that the Court lacked personal jurisdiction were also premature as defendants were not in the suit yet. Defendants will be free to raise those issues once they ripen.

Court Grants Limited Discovery to Identify Does in BitTorrent Copyright Case

By R. David Donoghue on Posted in Discovery

MCGIP, LLC v. Does 1-14, No. 11 C 2887, Slip Op. (N.D. Ill. May 10, 2011) (Lindberg, Sen. J.).

Judge Lindberg granted plaintiff MCGIP limited, early discovery to identify the fourteen Does based upon their IP addresses. MCGIP was allowed to serve subpoenas upon six identified internet service providers ("ISP") seeking limited information about the identity of the Does. McGip, however, could only use any information it received for purposes of protecting its interests in the complaint and not for any other purposes.

Naming Doe Defendants in Bit Torrent Copyright Case is Shooting First, Identifying Targets Later

By R. David Donoghue on Posted in Discovery

Boy Racer, Inc. v. Does 1-22, No. 11 C 2984, Slip Op. (N.D. Ill. May 9, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte dismissed plaintiff Boy Racer’s copyright infringement complaint without prejudice. The Court held that Boy Racer could not "shoot first and identify [its] targets later" by suing twenty-two Doe defendants. Instead, Boy Racer was free to file its suits against identifiable individuals.

Trading Technologies: Court Quashes Subpoena

By R. David Donoghue on Posted in Discovery

Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Jul. 19, 2011) (Coleman, J.).

Judge Coleman granted declaratory judgment plaintiff Rosenthal Collins Group’s ("RCG") motion for protective order and to quash third party subpoenas as to third party CQG. The subpoenas sought information regarding RCG’s use of CQG’s trading software. The Court previously entered judgment against RCE and the only issue left in the case is a January 23, 2012 damages trial. But the judgment and the damages trial were limited to RCG’s use of its software, not other third parties that have not yet been held to infringe, such as CQG’s software.

Court Upholds $1M Sanction for Fabricated Prior Art

By R. David Donoghue on Posted in Discovery

Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. June 1, 2011) (Coleman, J.).

Judge Coleman denied plaintiff Rosenthal Collins Group’s ("RCG") motion to reconsider or clarify the Court’s February 23, 2011 Order entering defendants judgment in favor of declaratory judgment defendant Trading Technologies ("TT") and sanctioning RCG $1 million. While the discovery misconduct – which the Court described as "attempted fraud" – related to invalidity, it was appropriate to enter default judgment as to infringement because TT’s infringement case would have been "futile" if the "fabricated" evidence had been successfully used to invalidate the patents. Furthermore, RCG should not be allowed to benefit from the thwarting of its misconduct.

Finally, the Court’s sanctions were not criminal, they were made pursuant to Fed. R. Civ. P. 37 and the Court’s inherent powers.