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Category Archives: Discovery

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Failure to Make Arguments to Magistrate Requires Reversal of Recomendation

Posted in Damages, Discovery

Velocity Patent, LLC v. Audi of Am., Inc., No. 13 C 8418, Slip Op. (N.D. Ill. Dec. 11, 2014) (Darrah, J.).

Judge Darrah held that Judge Mason’s discovery report and recommendation was clearly erroneous, and ordered past damages discovery be produced going back six years before the complaint filing in this patent case.  Judge Mason recommended limiting damages discovery to the date of the complaint forward, but his recommendation was clearly erroneous because neither party advanced its respective patent marking argument before Judge Mason.  In light of that and based upon Velocity Patent’s claim that neither it nor its predecessors made a product that could have been marked, it need not plead marking, the Court ordered past damages discovery include the period six years before filing of the complaint.

Court Requires Document Production be Accompanied by an Affidavit Explaining the Search Process

Posted in Discovery

Fantasia Distrib., Inc. v. Rand Wholesale, Inc., No. 14 C 1546, Slip Op. (N.D. Ill. Dec. 2, 2014) (Chang, J.).

Judge Chang ruled upon the following discovery disputes in this case regarding alleged counterfeit sales of ehookah products:

  • Defendant Rand was to conduct a “reasonable” search for exchanges of returned products having plaintiff Fantasia’s Fantasia label and provide a sworn affidavit how the relevant records are generated and maintained, stating that the records were searched and describing the search, and supplying any results of the search.
  • Rand had sufficiently produced sales summaries and underlying documents, although the parties were to work together if any unreadable PDFs were identified.
  • Fantasia’s interrogatory was overbroad.  Fantasia could not ask for “basically every record of any kind that Defendant has on any e-hookah” based upon suspicions generated from a separate case that did not involve Rand.

Settlement in First Does Not Bar Discovery in a Second Related Suit

Posted in Discovery

Fasteners for Retail, Inc. v. Andersen, No. 11 C 2164, Slip Op. (N.D. Ill. Aug. 22, 2014) (Durkin, J.).

 Judge Durkin granted in plaintiff Fasteners for Retail’s (“FFR”) motion to enforce the parties’ settlement agreement against defendant K International (“Kinder”) in this patent, Lanham Act and trade secret dispute.  The parties previously resolved this case pursuant to a settlement agreement (“Agreement”) in which the Court retained jurisdiction over any disputes arising out of the Agreement.  The parties did not, however, settle a related Ohio state court action FFR had filed against certain Kinder employees.

 FFR sought to depose Kinder in the Ohio action, but Kinder refused claiming that the Agreement’s broad release from all “obligations” prevented FFR seeking any discovery from Kinder.  While the release language was broad, the Court held that the released obligations were limited by language in the release to liability related to the suit or any consequences of losing the suit, for example an award of fees.  Because the released “obligations” were so limited, FFR was free to seek discovery from Kinter in the Ohio action.

The Court also ordered Kinter to produce a declaration required by the Agreement identifying products sold by Linter upon which a particular individual consulted for Kinder.  Kinder could not limit its declaration to only those product sales that could be traced to the individual’s assistance in developing or marketing the product.  Kinter’s limitation did not exist in the Agreement’s plain language.


BitTorrent: Motion to Quash is Not a Proper Vehicle for Severing Does

Posted in Discovery

Site B v. Does 1-51, No. 13 C 5295, Slip Op. (N.D. Ills. Mar. 7, 2014) (Leinenweber, Sen. J.).

Judge Leinenweber denied Doe 39’s motion to quash a pre-discovery subpoena in this BitTorrent case involving the motion picture “Under the Bed.”  At the outset, the Court noted a split in the Northern District regarding whether a Doe had standing to quash a subpoena to its Internet Service Provider (“ISP”).  Regardless, a motion to quash a subpoena was not a proper vehicle for challenging misjoinder as Doe 39 did.  The proper method would be a Fed. R. Div. P. 21 motion to sever.

Recognizing its inherent authority to sever, the Court then considered Doe 39’s arguments to sever.  Noting a split across the country, the Court held that the Does need not all participate in the same swarm near in time to each other.  The six week period used by plaintiff Site B was sufficient.  The Court, however, stated that it was open to reconsidering the decision after the various Does become named defendants in the case.

Finally, the subpoena did not violate the Electronic Communications Privacy Act (“ECPA”).  The ECPA prevents knowing disclosure of the content of a stored message, but allows disclosure of customer records, such as customer identity, which is what the subpoena sought.  The fact that the subpoena failed to notify Comcast that the ECPA makes such disclosure voluntary, was not sufficient to quash the subpoena.  Suggesting that Comcast did not know its legal rights was “frivolous.”

Patent Eligibility Could Not be Decided on the Pleadings

Posted in Discovery

Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA LLC, No. 13 C 4417, Slip Op. (N.D. Ill. Mar. 13, 2014) (Hart, Sen. J.).

Judge Hart denied defendant’s Fed. R. Civ. P. 12(c) motion to dismiss plaintiff’s patent infringement claims related to screening drivers for various types of impairment and “controlling operation” of the vehicle if the driver is impaired.  While the parties’ briefs showed likely issues of patentability, the Court could not decide whether the claims were patent eligible without further discovery regarding how and whether computers were used in the patent-in-suit.

Scheduling Delay Does Not Warrant Canceling the Deposition

Posted in Discovery

Cleversafe, Inc. v. Amplidata, Inc., No. 11 C 4890, Slip Op. (N.D. Ill. Jan. 11, 2014) (Cole, Mag. J.).

Judge Cole denied plaintiff Cleversafe’s motion for a protective order and sanctions preventing the deposition of Cleversafe’s CEO.  The CEO was a critical witness — one of two listed on Cleversafe’s initial disclosures.  And defendant Amplidata’s alleged delay in scheduling it did not warrant sanctions.  Furthermore, Cleversafe could point to no harm for the delay.  In fact, the CEO had enjoyed the benefit of not having to prepare or sit for a deposition.

“Growing Trend” That Bit Torrent Doe Defendants Need Not be Time-Related

Posted in Discovery

TCYK, LLC, v. Does 1-44, No. 13 C 3825, Slip Op. (N.D. Ill. Feb. 20, 2014) (Dow J.).

Judge Dow denied various Doe defendants’ motions to grant subpoenas to their respective ISPs in this BitTorrent copyright case involving the movie “The Company You Keep” with Robert Redford and Susan Sarandon.  Of particular note, the Court held as follows:

  • Noting a split of authority, the Court went with the “growing trend” in the Northern District that Doe defendants need not have been members of its same BitTorrent swarm at the same time to be joined in a single suit.  It was enough that the Does were members of the same swarm.
  • Subpoenas served on ISPs do not unduly burden the Doe defendants.
  • The fact that a Doe claimed they could not have downloaded the movie was not a sufficient reason to quash its subpoena.  That was an issue for discovery and the case.

An Investigation By Any Other Name is Still an Investigation

Posted in Discovery

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Mar. 5, 2014) (St. Eve, J.).

Judge St. Eve denied defendants’ (collectively “Zurn”) motion to exclude plaintiff Sloan Valve’s (“Sloan Valve”) expert in this patent litigation involving dual mode flush valves for plumbing fixtures.  Plaintiff’s expert conducted what he called a “survey,” but was in fact an investigation.  The expert, a 27 year veteran of the FBI, coordinated an investigation of approximately 200 bathrooms across the country which plaintiff believed would have either Sloan or Zurn plumbing fixtures.  The expert’s agents photographed specific fixtures using an app that time and location stamped them. 

The Court held that the fact that the expert used the term “survey” did not change the fact that it was an investigation, not a survey as the term is used in the legal context.  And Zurn did not dispute that the expert was qualified to conduct such an investigation.  Furthermore, the investigators did not interview anyone, they just took pictures.  So, there were no hearsay concerns.

Finally, Zurn’s other concerns did not warrant exclusion, although the could be addressed on cross-examination:

  1. The 200 sites were not randomly selected and were selected by Sloan;
  2. The sites were “overwhelmingly” public buildings; and
  3. The investigators did not investigate every bathroom at each site and did not adequately investigate the bathrooms that they did enter.

General Discovery Objections are “Impermissible”

Posted in Discovery

Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. Oct. 24, 2013) (Grady, Sen. J.).

Judge Shadur granted in part plaintiff Flava Works’ motion to compel responses to discovery requests.  Of particular note, the Court held as follows:

  • Neither Flava Work’s complaint nor the Seventh Circuit’s decision limited Flava Work’s claims to its backup functionality.  Defendant’s therefore, could not limit their responses to the backup functionality.
  • While the Court did not strike defendants’ general objections, it disregarded them as “impermissible.”  Based upon their lack of specificity, they did “not accomplish anything useful.”  Documents withheld based upon general objections were to be identified and produced.
  • A present tense interrogatory seeking a user count was sufficiently answered with a present user count.  The interrogatory was fully answered without historic user information.
  • Defendants need not identify Bates ranges of responsive documents where the documents were produced as they were kept in the normal course of business, pursuant to Fed. R. Civ. P. 34(b)(2)(E)(i).


Limiting Interrogatory Language Allows Limited Response

Posted in Discovery

Hubbell Indus. Controls, Inc. v. Electro Power Sys. Of Utah, Inc., No. 12 C 8609, Slip Op. (N.D. Ill. Oct. 17, 2013) (St. Eve., J.).

Judge St. Eve granted in part defendant Electro Power’s motion to compel further interrogatory responses and denied Electro Power’s motion to compel production of unredacted attorney billing records in this Lanham Act case involving Electro Power’s alleged improper reproduction of components of plaintiff Hubbell’s braking contactors and allegedly passing them off as genuine Hubbell parts.

Hubbell listed twenty one elements of its trade dress.  For all but three, Hubbell provided detail regarding the aspects that were part of the trade dress.  Those eighteen elements were sufficiently described and no further interrogatory responses was required.  For the other three — armature assembly, stator assembly and arc shield assembly — Hubbell was ordered to supplement its interrogatory response to specifically identify the aspects that were part of the trade dress.  The Court also struck the phrase “include[ing], but not limited to” from Hubbell’s responses.  Hubbell was required to identify all elements of its alleged trade dress.

As to the other eighteen elements of Hubbell’s alleged trade dress, Hubbell’s descriptions were not “amorphous,” “vague” or “unclear” as Electro Power asserted.

Hubbell’s response regarding its date of first use of its trade dress was deficient in two respects.  First, although Hubbell had three distinct trade dresses, it only provided one date of first use.  If all three share the same date, Hubbell must state that.  Otherwise, three dates should be provided.  Hubbell also failed to respond to the request for the circumstances of its first use and any documents evidencing the use.

The Court also denied Electro Power’s motion to compel unredacted attorney’s bills.  While Hubbell sought damages in the amount of certain attorney’s fees, the parties failed to brief whether unredacted bills were required to decide fees pursuant to the Lanham Act.  The motion failed, however, for a more basic reason.  Electro Power’s interrogatory only seeks documents upon which Hubbell intends to rely.  To the extent that Hubbell does not intent to rely upon unredacted bills, it need not produce them.  The Court, however, gave Electro Power the opportunity to request additional documents on the limited issue of Hubbell’s fees damages.

BitTorrent “Swarm” Must be Related in Time to be Joined in One Action

Posted in Discovery

Malibu Media, LLC v. Does 1-68, No. 12 C 6675, Slip Op. (N.D. Ill. Sep. 27, 2013) (Lee, J.).

Malibu Media, LLC v. Does 1-42, No. 12 C 6677, Slip Op. (N.D. Ill. Sep. 27, 2013) (Lee, J.).

Judge Lee granted various Doe defendants motion to sever their cases as unrelated, denied motions to quash subpoenas to the Doe’s ISPs and allowed Does to proceed anonymously at least through discovery in this BitTorrent copyright case.  The Court handled the two cases, both by plaintiff Malibu Media, in a single opinion because of the similarity of the various Does’ motions to quash subpoenas to their respective ISPs and/or to sever the cases of the various Does

Considering the motions to sever, the Court noted that the Seventh Circuit had not ruled on whether alleged members of a single BitTorrent “swarm” could be combined in a single suit, even if there are no allegations that the Does were a part of the swarm at or about the same time.  Although district courts had decided the issue both ways, the Court, citing a Judge Kendall decision (Malibu Media, LLC v. Reynolds, No. 123 C 6672, 2013 WL 870618, at *10 (N.D. Ill. Mar. 7, 2013), held that the better approach was requiring that Does have been part of the same swarm at or about the same time.  The Court also held that Malibu Media’s allegation that each Doe had downloaded the same file containing one element of the copyrighted work was not sufficient to avoid severing, without an allegation regarding the timing of the Does’ alleged participation in the swarm.  Because Malibu Media had not alleged that the Does were part of the same swarm at “roughly” the same time, the Court severed the cases against each remaining Doe.

The Court denied a motion to quash an ISP subpoena based upon the Doe’s right to privacy in its personal information provided to the ISP.  The Doe gave up any right to privacy in its personal information as to the ISP by providing its personal information to the ISP during registration.

While every party accused of downloading pornographic material did not necessarily have a right to proceed anonymously, the Court balanced that against the possibility that the ISP address owner did not necessarily do the accused downloading and allowed the Doe defendant to proceed anonymously at least through discovery.  Additionally, Malibu Media did not object to the Doe proceeding anonymously, as long as Malibu Media could be made aware of the Doe’s identity, which the Court held that it would.

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.