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Category Archives: Local Rules

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Courtesy Copies of Complaints Required by Local Rule 5.2(f)

By R. David Donoghue on Posted in Local Rules

Eiserman & Assocs., LLC v. Rosen, No. 13 C 1315, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Zambezia Film Pty. Ltd. v. Does 1-33, No. 13 C 1323, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Zambezia Film Pty. Ltd. v. Does 1-60, No. 13 C 1741, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Shoppertrak RCT Corp. v. Objectvideo, No. 13 C 1323, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

In each of these cases, Judge Shadur entered similar orders requiring the plaintiff to provide the Court a courtesy copy of its newly filed complaint within one week of the date of the opinion.  The Clerk of the Court recently ended its practice of delivering each chambers a courtesy hard copy of any new complaints that it drew.  As such, the Court had stopped exempting counsel from its Local Rule 5.2(f) obligation to provide copies of complaints.  Going forward, counsel were required to file courtesy copies of complaints.  Courtesy copies of complaints are critical in order to allow the Court to control its docket by:

  1. Reviewing the contents of each complaint;
  2.  Issuing sua sponte orders as necessary regarding the complaint;
  3. Setting an initial status; and
  4. Creating a “bible sheet” for the binder the Court maintains as to each case before it.

 

 

 

N.D. Illinois Proposes New Local Patent Rules for Electronically Stored Information

By R. David Donoghue on Posted in Local Rules

In October along with proposed revisions to the Local Patent Rules, the Northern District proposed new Local Patent Rules for Electronically Stored Information (“LPR ESI”).  The LPR ESI share many commonalities with standing ESI Orders being used in patent cases in districts across the country.  Additionally, the proposed LPR ESI is consistent with the existing LPR, which emphasizes avoiding costly disputes, enhancing cooperation and narrowing of cases and discovery.

The following is an analysis of the key provisions of the proposed LPR ESI:

LPR ESI 1.1 (Purpose)

The LPR ESI are designed to further Fed. R. Civ. P. 1 by securing “just, speedy, and inexpensive”, as well as early resolution, of ESI disputes without Court intervention.

LPR ESI 1.2 (Cooperation)

Counsel are required to cooperate in seeking and responding to discovery requests.  Failure to cooperate will be considered in cost-shifting determinations.

LPR ESI 1.3 (Discovery Plan)

To further Fed. R. Civ. P. 26(b)(2)(C) ESI requests and responses “should be reasonably targeted, clear, and as specific as practicable.”

LPR ESI 1.4 (Privilege and Waiver)

  • A receiving party cannot use ESI claimed to be attorney-client or work product privileged to challenge the privilege.
  • Inadvertent production pursuant to FRE 502(d) is not a waiver in the pending case or any other federal or state proceeding.
  • “Mere production of ESI in a litigation as part of a mass production shall not itself constitute a waiver for any purpose.”

LPR ESI 2.1 (Duty to Meet and Confer on Discovery and to Identify Disputes for Early Resolution)

  • Parties must meet to discuss the discovery process before an initial status conference.
  • Unresolvable disputes should be submitted to the Court at the initial status conference or as soon thereafter as possible.
  • Before presenting disputes to the court, each party must designate an e-discovery liaison who will participate in meet and confers.
  • An e-discovery liaison, whether in-house counsel, outside counsel, a party employee or a third party must:  be prepared to participate in e-discovery dispute resolution; be knowledgeable about the party’s e-discovery efforts; and have reasonable access to individuals familiar with the party’s electronic systems and e-discovery generally.
  • The Court can modify the LPR ESI for any particular case.
  • The parties are to jointly submit any proposed modifications, or statements of their competing proposals, within thirty days of the Fed. R. Civ. P. 16 conference.
  • If the Court determines that a counsel or a party is not cooperating or participating in good faith, it can require additional e-discovery discussions prior to commencing discovery or impose sanctions.

LPR ESI 2.2 (Preservation Requests and Orders)

  • Preservation requests and orders should not be vague or overbroad.  Instead, they should be “reasonable in scope” and within the bounds of Fed. R. Civ. P. 26(b)(2)(C).
  • The type of “specific and useful information” that should be included in preservation letters includes:  names of parties; factual background of claims and identification of causes of action; names of potential witnesses or individuals anticipated to have “relevant evidence”; and the relevant time period.
  • Should a preservation letter recipient choose to respond (there is no requirement to respond), the response should provide “useful and specific” information such as:  identifying information that the party is willing to preserve and the steps taken in response to the letter; disagreements with the preservation letter; and preservation issues not raised in the preservation letter.
  • Neither preservation letters, nor responses thereto are required by the LPR ESI.

LPR ESI 2.3 (Scope of Preservation)

  • Every party and its counsel are responsible for taking “reasonable and proportionate steps” to preserve ESI within their possession, custody or control.  What is reasonable and proportionate is a fact-specific inquiry that must be undertaken for each case.
  •  Discovery regarding preservation and collection of another party cannot be initiated without first conferring with the party from whom discovery is sought regarding the need for discovery, including its relevance to the case, and alternative means for obtaining the information.
  • The parties and counsel should attend the initial meet and confer prepared to discuss specific ESI issues, although “every conceivable issue” that may arise in the case need not be addressed at that time.
  • The following ESI categories are generally not discoverable and any request to preserve or produce them should be discussed at the initial meet and confer or as soon thereafter as possible: 

(1)            “deleted,” “slack,” “fragmented,” or “unallocated” data on hard drives;

(2)            random access memory (RAM) or other ephemeral data;

(3)            on-line access data such as temporary internet files, history, cache, cookies, etc.:

(4)            data in metadata fields that are frequently updated automatically, such as last-opened dates;

(5)            backup data that is substantially duplicative of data that is more accessible elsewhere; and

(6)            other forms of ESI whose preservation requires extraordinary affirmative measures that are not utilized in the ordinary course of business.

  • Disputes concerning the scope of preservation should be addressed in a meet and confer and then raised promptly with the Court if they cannot be resolved.

LPR ESI 2.4 (Identification of ESI)

  • At the Rule 26(f) conference or soon thereafter, the parties must discuss methodologies for identifying ESI, including without limitation:
  • Eliminating duplicative ESI and whether de-duplication will occur within a particular custodian’s ESI or across all custodians.
  • Filtering based upon file type, date ranges, search terms or similar parameters.
  • Use of keyword searches, mathematical or thesaurus-based topic or concept clustering or other advanced “culling technologies.”

LPR ESI 2.5 (Production Format)

  • The parties must confer and make a good faith effort to agree on ESI production format(s) and should raise any disputes promptly.
  • Parties must confer regarding whether ESI in databases or database management systems may be produced by querying the database resulting in a report or exportable electronic file for review by the requesting party.
  • Meta-data is presumed not to be requested and need not be produced unless a party makes a “special request.”
  • ESI or hard copy documents that are not text-searchable need not be made to be searchable.
  • The requesting party is responsible for the “incremental cost” of creating its copy of requested information.  Parties are encouraged to discuss cost-sharing for optical character recognition (“OCR”) or other “upgrades” of hard copy or other non-text-searchable ESI that may be contemplated by a party. 

LPR ESI 2.6 (Email Production Requests)

  • General ESI production requests will not include email or other forms of electronic correspondence.  Email production requires specific requests.
  • Email production will be phased to occur after exchange of initial disclosures and “basic documentation” about the patents, prior art, accused instrumentalities and relevant finances.  “Prompt and early” production of such information is encouraged, although not required.
  • Email production requests must identify:  custodians; search terms and time frames.  The parties are to cooperate to identify proper custodians, terms and timeframes.
  • Email requests are limited to five custodians per party for all requests.  The parties can jointly agree to modify the five custodian limit.  Disputed requests for more than five custodians will be considered by the Court based upon the specific case.  The requesting party will bear “all reasonable costs” of discovery beyond the limits in this Rule or granted by the Court.
  • Search terms will be limited to five per custodian per party.  The parties can jointly agree to modify this limit without leave of Court.  The Court will consider disputed requests for additional terms based upon the specific case. 
  • Search terms must be narrowly tailored to particular issues.  Indiscriminate terms such as a producing party’s name or product name are inappropriate unless combined with narrowing search criteria to “reduce the risk of overproduction.”
  • Conjunctive combinations of multiple words or phrases narrows the search and will be counted as a single term.  Disjunctive combinations of words or phrases broadens the search and are counted as separate terms, unless they are variations of the same word.
  • Use of narrowing criteria – and, but not, w/x – are encouraged and will be considered in cost shifting determinations. 
  • The requesting party will bear all costs for email production requests with search terms beyond limits agreed to by the parties or ordered by the Court.

Court Grants Summary Judgment Based Upon No Likelihood of Confusion

By R. David Donoghue on Posted in Local Rules, Summary Judgment

Hearthware, Inc. v. E. Mishan & Sons, Inc., No. 11 C 5233, Slip Op. (N.D. Ill. Aug. 10, 2012) (Nolan, J.).

Judge Nolan granted defendant E. Mishan & Sons (“EMS”) motion for summary judgment on plaintiff Hearthware’s copyright, Lanham Act and related state law claims related to EMS’s alleged copying of Hearthware’s Nu Wave halogen oven and its related trademarks and infomercial.  As an initial matter, the parties both failed to comply with the Local Rule 56.1 requirements for statements of fact and responses thereto, largely by failing to sufficiently support statements with citation to evidence. 

Copyright

While there were many similarities between the parties’ infomercials – two hosts hugging when they met, a chef knocking frozen food against a counter, and time-lapse photography of food cooking in the oven – for each allegedly copied element EMS offered proof of many infomercials before Hearthware’s that had the same elements.  So, to the extent there was copying or at least similarity, those commonalities were unprotectable scenes a faire.  And “threadbare” allegations of direct copying could not save the claim.

Trademark

There was no likelihood of confusion between Hearthware’s NUWAVE and EMS’s SUPER WAVE marks.  While both marks contain the term “wave” the marks are presented “entirely” differently.  For example, EMS focuses upon its connection to Sharper Image.  The similarities of the products – both halogen ovens – favored confusion, as did the fact that both parties sell their products nationally in similar locations.  Neither party addressed the degree of care exercised by consumers.  Hearthware’s mark was not strong in light of the sixteen other non-halogen ovens that have registered a mark with “wave” in it.  There was no evidence of actual confusion.  There was also no evidence that EMS was attempting to palm off its product as Hearthware’s.  Balancing the factors, the Court held that any finding of likelihood of confusion would be improperly based upon conjecture.  There was, therefore, no likelihood of confusion.

Without likelihood of confusion, summary judgment was warranted on all of Hearthware’s Lanham Act and related state law claims.

Customer Suit Exception Stays Claims

By R. David Donoghue on Posted in Local Rules

Micro Enhanced Tech. Inc. v. Videx, Inc., No. 11 C 5506, Slip Op. (N.D. Ill. Aug. 16, 2012) (Dow, J.).

Judge Dow granted the customer defendants’ motion to sever and stay plaintiff MET’s claims against them based upon the customer suit exception in this patent infringement case involving MET’s Cyberlock technology.  MET’s claims against Verizon and ITC were exclusively based upon defendant Videx’s accused product.  The claims against Verizon and ITC were, therefore, peripheral to the claims against Videx.  Furthermore, no discovery had been conducted and little judicial efforts expended.

 

Attorneys Fees Reduced Based Upon Duplicative Work

By R. David Donoghue on Posted in Damages, Local Rules

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 27, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Sloan’s fee petition based upon the Court’s finding that defendant Zurn had “continually refused to produce relevant documents despite prior court intervention and a clear obligation to do so . . . .”  Here are the highlights:

  • Sloan’s counsel’s rates were reasonable, based in part upon the fact that Sloan paid the rates without expectation of indemnification or contribution by any third party.  The rates were between $550 and $735 for partners, $455 to $530 for senior counsel and $310 to $370 for associates.
  • Sloan’s 121 hours spent on a motion for sanctions, although it was more complex than the average motion, was not reasonable.  The Court awarded all of the fees for the two most junior attorneys and 20% of the senior attorneys’ fees, citing duplicative and excessive work being done, for a total of approximately $39,000.
  • The Court applied the same 80% reduction for senior attorney time spent on Sloan’s renewed motion for sanctions, resulting in a fee award of approximately $51,000.
  • The Court struck the most senior attorney’s time for Sloan’s reply brief in support of the renewed motion for sanction resulting in an award of approximately $26,500.
  • The Court cut the most senior attorney’s time by 50% for Sloan’s preparation of its response to Zurn’s supplemental submission.  The Court reasoned that many of the tasks could have been performed by a more junior attorney.

The Court’s total award was approximately $140,000.

 

Fees Awarded for “Egregious” Disqualification Motion

By R. David Donoghue on Posted in Local Rules

OpticsPlanet, Inc. v. Opticsale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Oct. 22, 2012) (Shadur, Sen. J.).

Judge Shadur granted plaintiff OpticsPlanet’s motion for sanctions based upon defendants’ failed attempt to disqualify OpticsPlanet’s individual counsel and its law firm.  The Court noted that the attempted disqualification was “particularly egregious,” but awarded only fees, not an additional fine to avoid any appearance of a punitive award.  The Court also “urged” the parties to use a less formal process than what is required by Local Rule 54.3 to avoid “fees on fees.”

Copyright Act Preempts Misappropriation Claim

By R. David Donoghue on Posted in Local Rules

Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Sep. 4, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Morningware’s motion for summary judgment as to defendant Hearthware’s Deceptive Trade Practices Act, Lanham Act and related state law counterclaims. 

As an initial matter, the parties’ Local Rule 56.1 statements of fact were deficient in numerous ways: 

  • Many of both parties’ statements were not properly supported with admissible evidence or contained legal argument instead of factual statements.  Any such “facts” were not deemed true.
  • The parties appeared to copy and past portions of their briefs into their Local Rule 56.1 statements.  That practice was not helpful to the Court.

These deficiencies resulted in a “very brief” recitation of uncontested facts.

Lanham Act False Representation & False Advertising

There were questions of fact as to each of Morningware’s alleged false representations of fact, in particular whether certain statements were false or misleading.  As such, summary judgment was not proper.

Deceptive Trade Practices Act

Hearthware’s Deceptive Trade Practices Act claim was based upon the same conduct as in its Lanham Act claim.  As such, summary judgment was denied for the same reason.

Common Law Misappropriation

Hearthware’s common law misappropriation claim was based upon allegations that Morningware’s infomercial was designed to mimic Hearthware’s infomercial.  This claim was preempted by the Copyright Act.  The infomercial was copyrightable and the misappropriation claim amounted to a claim of copying, which is actionable pursuant to the Copyright Act.  The Court, therefore, granted Morningware summary judgment on this claim.

 

Local Rule 56.1 Failures Result in Disputed Facts

By R. David Donoghue on Posted in Local Rules

Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Aug. 27, 2012) (St. Eve, J.).

Judge St. Eve denied plaintiff Morningware’s and defendant Hearthware’s cross-motion for summary judgment regarding Morningware’s Lanham Act, Deceptive Trade Practices Act and related state law claims in this Lanham Act and patent infringement case.  As an initial matter, the parties’ Local Rule 56.1 statements of fact were deficient in numerous ways:

  • Many of both parties’ statements were not properly supported with admissible evidence.  Any such “facts” were not deemed true, unless the opposing party admitted them.
  • Hearthware’s responses to Morningware’s statements of fact were not properly supported by evidence – a lack of knowledge, unlike in an answer to a complaint, is not sufficient.  Any of Morningware’s facts not properly contested were deemed admitted.
  • Both parties also failed to cite to the statements of fact in their summary judgment briefing.

The Court excluded the declaration of Hearthware’s expert witness because the witness was not properly disclosed by the expert deadline or otherwise during the years of discovery between the parties.  The fact that the expert was originally retained as a consultant does not remove the requirement that the consultant be properly disclosed if the consultant will be turned into a testifying expert.

The Court dismissed without prejudice a motion to strike Hearthware’s allegedly improper expert report regarding damages because it was irrelevant to the motions at issue. 

Lanham Act False Representation of Origin

There was no dispute that Morningware’s MORNINGWARE and HALO marks were protectable.  Morningware further offered evidence of the necessary likelihood of consumer confusions, but not enough to meet Morningware’s heavy burden to show evidence “so one-sided that there can be no doubt about how the questions should be answered.” 

Lanham Act Product Disparagement

The parties agreed that Hearthware’s advertisement stated “The Real NuWave® Oven Pro Why Buy an Imitation?  90-Day Gty”, but whether that was a false statement or misleading was a question of fact.  Morningware offered no evidence to prove Hearthware’s statement literally false.  Morningware argued that the statement was impliedly false.  Morningware relies upon a consumer survey for its proofs.  But Hearthware disputed the survey, creating a question of fact.  Furthermore, there was a question of fact as to whether the alleged false statement impacted consumers’ purchasing decisions. 

State Law Claims 

Because the parties agreed that the state law claims rose and fell with the Lanham Act claims, summary judgment was denied as to those claims as well.

Amendments to the N.D. Illinois Local Patent Rules Clarify Daily Practice

By R. David Donoghue on Posted in Local Rules

The Northern District of Illinois has proposed a series of changes to the Local Patent Rules.  Comments regarding the changes are due by December 3.  The proposed changes are listed and discussed below.  For the most part, they clarify ambiguities in the existing LPR and will be very valuable for those of us practicing pursuant to the LPR every day.

LPR 1.2  Initial Scheduling Conference

The following sentence is added to the end of the existing LPR:

 Paragraphs 4(e), 7(c) and 7(d) of the form scheduling order shall be included, without alteration, in this proposed scheduling order.

Those three paragraphs (listed below) each clarify the rules, but which one party or another routinely strikes from Rule 26(f) reports claiming they are duplicative of the Federal Rules or existing case law.

 4(e) Discovery is permitted with respect to claims of willful infringement and defenses of patent invalidity or unenforceability not pleaded by a party, where the evidence needed to support these claims or defenses is in whole or in part in the hands of another party.

7(c) Communications between a party’s attorney and a testifying expert relating to the issues on which he/she opines, or to the basis or grounds in support of or countering the opinion, are subject to discovery by the opposing party only to the extent provided in Rule 26(b)(4)(B) and (C).

7(d) In responding to discovery requests, each party shall construe broadly terms of art used in the patent field (e.g., “prior art”, “best mode”, “on sale”), and read them as requesting discovery relating to the issue as opposed to a particular definition of the term used.  Compliance with this provision is not satisfied by the respondent including a specific definition of the term in its response, and limiting the response to that definition.

LPR 1.3  Fact Discovery

There are no proposed changes to the LPR itself, but they propose adding a comment which clarifies what has been one of the most frequent stumbling blocks of the LPR – post-claim construction fact discovery is not guaranteed.  Instead, a party desiring claim construction would be required to file a motion explaining why the claim construction ruling requires additional discovery:

Comment

The Rule states that resumption of fact discovery upon entry of a claim construction ruling “may” occur.  The Rule does not provide that discovery shall automatically resume as a matter of right.  It is intended that parties seeking further discovery following the claim construction ruling shall submit a motion explaining why further discovery is necessitated by the claim construction ruling.

LPR 3.1  Final Infringement, Unenforceability and Invalidity Contentions

Language is added to clarify that Final Unenforceability and Invalidity Contentions are “due” (as opposed to “served”) at the same time as Infringement Contentions.  Again, this clarifies a common uncertainty in the existing LPR.  A reference to the requirements for Initial Unenforceability Requirements is also added to clarify that the Final Unenforceability Contentions obligations are the same as the Initial Unenforceability Contentions.

Additionally, a sentence is added that limits Final Invalidity Contentions to 25 references, absence order of the Court based upon a showing of good cause and an absence of unfair prejudice:

Final Invalidity Contentions may rely on more than twenty-five (25) prior art references only by order of the Court upon a showing of good cause and absence of unfair prejudice to opposing parties.

LPR 3.2  Final Non-infringement, Enforceability and Validity Contentions

As with LPR 3.1, language is added to clarify that Final Enforceability and Validity Contentions are “due” (as opposed to “served”) at the same time as Final Non-infringement Contentions.  Again, this clarifies a common uncertainty in the existing LPR.

LPR  3.4 Amendment of Final Contentions

Language is added to clarify that amendments to Final Unenforceability Contentions or Final Contentions in Response to any Unenforceability and Invalidity Contentions, as with all other Final Contentions, may only be amended by Court order upon a showing of good cause and a lack of unfair prejudice to opposing parties.  A sentence is also added requiring that motions to amend be filed, along with proposed amendments to the contentions, within 14 days of entry of a claim construction order:

A motion to amend final contentions due to a claim construction ruling shall be filed, with proposed amendment(s), within fourteen (14) days of the entry of such ruling.

LPR 5.1  Disclosure of Experts and Expert Reports

LPR 5.1(b) is revised to comport with the added comment to LPR 1.3 (fact discovery) noting that post-claim construction fact discovery is only granted upon a motion showing good cause.  Initial expert witness disclosures, therefore, are now due 21 days after the later of the claim construction ruling or the close of post-construction fact discovery.  Because of the tight timing and the fourteen day deadline to seek amended Final Contentions, parties who seek amended Final Contentions will almost certainly have to seek extensions of the LPR 5.1 expert deadlines as well.

Appendix A – Rule 26(f) Report

A new section 7(f) is added requiring that the parties state whether they agree to the use of the Federal Judicial Center’s patent video at trial with preliminary jury instructions:

The parties [agree/do not agree] the video “An Introduction to the Patent System” distributed by the Federal Judicial Center, should be shown to the jurors in connection with its preliminary jury instructions.

The amendments also include a new Electronically Stored Information (ESI) Order. I will discuss that in a later post because it warrants some significant analysis.

Northern District of Illinois Practice Tips Nos. 21-25

By R. David Donoghue on Posted in Local Rules

This is the fifth installment of my updated twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last six years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are numbers twenty through twenty five:

  1. Calculate extensions in 7 day increments.  The Federal Rules, and the Local Rules, now calculate deadlines in seven day increments. Based upon that, many Chicago judges expect parties to seek extensions in those same increments.
  2. Respect Chambers.  Chambers staff are pretty universally helpful, but be respectful of them and avoid annoying them. Before calling chambers, read the Local Rules and the judge’s website to make sure your question is not answered there. And call chambers with opposing counsel, unless you have advance permission from the Court or opposing counsel.
  3. Learn how to seal or redact filings early.  The Seventh Circuit frowns upon sealing court filings unless absolutely necessary. As a result, Northern District judges are particular about filing under seal, as is the Clerk’s office. Some protective orders give you a blanket right to file under seal, but others require specific permission. That permission would ideally be sought in advance of filing, but at least concurrent with the filing. Either way, it is critical to know before the evening of a major filing deadline, when the Clerk’s office may be closed, and you may not have much time to begin with. Additionally, the Seventh Circuit requires that briefs be filed in a redacted form instead of under seal. So, many Northern District judges have the same requirement. Either ask the judge’s chambers or counsel who has experience before the particular judge.
  4. Lean on the ECF hotline.  I am routinely surprised by how many people never think to call the Clerk’s ECF number for assistance. The Clerk’s staff is uniformly knowledgeable and eager to help. In particular, call them immediately if you made an ECF-based error while filing. The Clerk’s office can almost always fix it, and it is usually easier for everyone if you have not added to the problem by “fixing” it yourself. One note of caution though, as with calling chambers, give the Clerk’s office the courtesy of reviewing the ECF webpage first to make sure they have not already answered your question there.
  5. Understand the Court’s pretrial order requirements.  More than one Northern District judge will throw out inadequate pre-trial orders. One common flaw to watch for is insufficient statements of fact or conclusions of law. The local, form pre-trial order requires the parties to identify every fact they must prove at trial and every necessary conclusion of law, even for jury trials. This custom differs from some other districts (and not every Northern District judge requires it). Likely because of that and the general pre-trial time crunch, many parties fail to prepare sufficient statements. That can have serious consequences, so start on these early.

Northern District of Illinois Practice Tips Nos. 16-20

By R. David Donoghue on Posted in Local Rules

This is the fourth installment of my updated twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation.  The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last six years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are tips sixteen through twenty:

  1. Meet and Confer.  Wherever you practice you are likely aware of some version of a Local Rule 37.1 requirement to meet and confer regarding at least discovery motions. Generally, you do not need to meet and confer for dispositive motions, but you must for discovery motions as well as motions for extensions. Most judges will not hear a motion without a meet and confer, and some will deny the motion with prejudice for failing to meet and confer. If you are not sure whether your motion requires a meet and confer, err on the side of having one.
  2. Tell the Court about your meet and confer.  Do not forget to tell the Court you met and conferred in your motion, and describe the outcome. If you do not, you risk denial of your motion, and always identify agreed or stipulated motions in the title and the docket entry.
  3. Use the Online Transcript System.  Take advantage of the Northern District’s first-in-the-nation online transcript ordering system. Prior to this system, getting transcripts was difficult, but now getting a hearing transcript is as easy as buying a book on Amazon.com. It is a great advantage for litigators preparing motions that relate to prior hearings.
  4. Calculate your hearing date. Each judge has a different minimum notice period for motions. Many judges allow notice three business days after filing, but a few only require two and others require four. On a similar note, check the judge’s website for allowable motion call days and times, and any days when the judge will not be hearing motions.
  5. Deliver prompt, correct courtesy copies. The Local Rules require delivery of courtesy copies of to the Court within one day of filing. But some judges require same day courtesy copies if at all possible. For those judges, if you cannot deliver same day you should at least deliver early the next morning. Also, make sure you format the copies correctly. For example, most judges require exhibits to be separated by tabs, and some judges require that papers be bound on the left-hand side. And for many judges, you must include copies of any unreported cases cited in your papers.

Court Grants Time-Limited Reexam Stay

By R. David Donoghue on Posted in Local Rules

Cascades Computer Innovations, LLC v. SK hynix, Inc., No. 11 C 4356, Slip Op. (N.D. Ill. May 25, 2012) (Lefkow, J.).

Judge Lefkow granted a sixteen month stay of this patent case pending defendants’ inter partes reexamination of the patent in suit.  The Court originally denied an unbounded stay.  But the Court held that a more limited sixteen month stay would simplify the issues in the case because the sole asserted claim was part of the reexam.  Furthermore, a sixteen month stay would not prejudice plaintiff Cascades Computer Innovation.

Northern District of Illinois Practice Tips 1-5

By R. David Donoghue on Posted in Local Rules

For the next five Fridays, I will be running a series of twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation.  These are an edited and updated version of the twenty five tips I posted two years and that have become some of the most read posts on the Blog.

The tips are not in a particular order, so I will not countdown backwards to tip number one.  Why twenty-five?  I found that beyond twenty five, the tips became focused upon minutia. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinion over the last six years.  As you read them, let me know if you come up with others.  I will be glad to include them as I go.  Here are the first five:

  1. Draft complaints to meet both the Local Rules and the Judge’s requirements. There are pleading requirements in the Local Rules that are pretty standard, but do not make the mistake of failing to review them because they may not be the same as courts you are more familiar with. And do not stop at reading the Local Rules, check out requirements of specific judges before deciding, for example, how many unrelated parties to put into a single patent complaint. Click here for some examples of opinions to consider.
  2. Repeat plaintiffs’ allegations in your answers. Local Rules require that you repeat the complaint paragraphs in your answer. Most judges will not return your answer for failing to do so, but some will. And even if they do not, you render your answer far less useful a tool for the judge and her chambers.
  3. Deliver courtesy copies. The Local Rules require courtesy copies be delivered within one business day, and some judges’ standing orders require same day delivery, in a few cases counsel may be fined for not providing same day courtesy copies. Opinions chastising counsel for failing to provide courtesy copies are surprisingly frequent. But even if your judge does not penalize you for failing to meet the courtesy copy requirements (and some will) if your motion or response is on a tight schedule you run the risk of not being fully heard. For example, if you are filing a response brief the day before a motion is to be heard and you bring your courtesy copies with you to the hearing you have only the slimmest chance that your brief is being read and digested before the hearing.
  4. Certificates of service are not required when all parties are on ECF. This may not be mission critical, but using an unnecessary certificate of service signals to your opponent that you are not well versed in the Local Rules or custom. That is not necessarily a fact that you want to give away.
  5. Signature blocks require both email and a fax number. Many litigators still do not add email or fax numbers to signature blocks. I have not seen anyone sanctioned or warned for this omission yet, but you do not want to be the first.

Patent Protective Order Will Not be Amended Absent Showing of Specific Reasons

By R. David Donoghue on Posted in Local Rules

AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. June 19, 2012) (Darrah, J.).

Judge Darrah denied defendants’ (collectively “SICO”) request to modify the Local Patent Rules standard protective order to include a prosecution bar.  While a prosecution bar could be appropriate, SICO failed to provide the specific facts necessary to meet its burden:

  • SICO offered general statements of potential competitive injury, but offered no specific information the disclosure of which would injure SICO.
  • SICO offered no examples of information it felt needed to be withheld.
  • SICO did not demonstrate that plaintiff AmTab’s counsel was engaged in competitive decision making.
  • AmTab’s outside counsel were not involved in marketing, product design, production, scientific research or pricing decisions.

Default Judgment Requires Damages Prove-Up

By R. David Donoghue on Posted in Local Rules

Brown-Younger v. Lulu.com, No. 12 C 1979, Slip Op. (N.D. Ill. June 15, 2012) (Shadur, Sen. J.).

Judge Shadur acknowledged that pro se plaintiff’s motion for default was timely in this copyright infringement case.  Defendant Barnes & Noble’s deadline to answer or otherwise plead had passed, but plaintiff had not provided a prove-up of damages.  The Court, therefore, sought plaintiff’s proposed schedule and procedure for the prove-up. 

Sanctions Motion Treated as Request to Terminate Counsel

By R. David Donoghue on Posted in Local Rules

Brown-Younger v. Lulu.com, No. 12 C 1979, Slip Op. (N.D. Ill. June 12, 2012) (Shadur, Sen. J.).

Judge Shadur ordered that pro se plaintiff’s counsel be terminated and that counsel respond to plaintiff’s motion for sanctions to the extent it related to him.  The Court reasoned that the plaintiff’s sanctions motion evidenced a desire to fire counsel, and obliged her.  But in light of plaintiff’s charges against both of her lawyers in her two ongoing cases in the Northern District, the Court declined to appoint new counsel.

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 Proof Dooms Prosecution Bar

By R. David Donoghue on Posted in Local Rules

AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. Jan. 19, 2012) (Darrah, J.).

Judge Darrah denied defendant’s (collectively “SICO”) motion to amend the Local Patent Rule Appendix B protective order to include a prosecution bar – a limitation that any counsel with access to a category of its opponent’s documents may not prosecute patents for the attorney’s clients for, in this case, two years.  SICO did not meet its burden, failing to show a “clearly defined and serious injury” as required by the law.  In fact, SICO identified no documents or information that it was particularly concerned about disclosing.  And SICO did not show how any harm would result from any specific disclosure or even a general disclosure.  Furthermore, there was no evidence that plaintiff AmTab’s counsel was engaged in competitive decision-making.  And, SICO did not seek a ban as to AmTab’s outside counsel whose firm also prosecuted patents for AmTab.

Joinder Based Upon Unrelated Products of Competitors is Improper

By R. David Donoghue on Posted in Local Rules

Fellowes, Inc. v. ACCO Brands Corp., No. 10 C 7587 & 11 C 4229, Slip Op. (N.D. Ill. Nov. 10, 2011) (Leinenweber, J.).

Judge Leinenweber granted the Royal defendants’ motion to transfer the claims against them to the Northern District of Ohio, and consolidated the remaining claims against defendant ACCO, in this patent dispute involving various aspects of paper shredders.  There were five pending cases:

  • Royal filed two declaratory judgment cases against plaintiff Fellowes in the Northern District of Ohio.  Both were the first-filed suits on the respective patents-in-suit.
  • Fellowes responded to those suits by filing patent infringement suits against Royal.  ACCO was also a party to the suits, as well as another Fellowes brought against ACCO on additional patents.  This case is also interesting as one of the last cases where plaintiffs may file against unrelated parties in a single suit.
  • Fellowes also filed an additional suit against Royal in this District regarding anti-jitter technology in paper sensors.

The Court transferred all claims against Royal for the following reasons:

  • Royal’s first-to-file position was given some weight.
  • Royal, as a competitor of ACCO selling unrelated products, was misjoined in the second Fellowes suit.  And discovery efficiencies from a combined suit did not outweigh the joinder rule.
  • The location of witnesses and documents weighed in favor of transfer.
  • While maximum efficiency would result from consolidating all five cases, it would have come at a cost to Royal.

Left with just Fellowes’ claims against ACCO, the Court consolidated the ACCO cases because they involved the same parties and three related patents.  Furthermore, neither party opposed consolidation.

Court Excludes Use of Confidential Infraction in Later Cases

By R. David Donoghue on Posted in Local Rules

Frerck v. John Wiley & Sons, Inc., No. 11 C 2727, Slip Op. (N.D. Ill. Jan. 6, 2012) (Dow, J.).

Judge Dow affirmed Magistrate Judge Brown’s order entering a protective order in this copyright case involving stock photographs used in textbooks. There were three key holdings:

  1. It was proper to allow defendant’s print run quantities and distribution to be treated as confidential – without ruling on the confidentiality of any particular document.
  2. It was proper to allow party to initially file confidential documents under seal, along with redacted public copies, to allow the Court to probe the confidentiality.
  3. Excluding the use of confidential information in future, related matters was also proper. The parties can always seek to modify the provision should circumstances warrant it.

Defendant’s Judgment Vacated for Excusable Neglect

By R. David Donoghue on Posted in Local Rules

Century 21 v. Hometown Realtors, No. 11 C 5572, Slip Op. (N.D. Ill. Jan. 10, 2012) (Manning, J.).

Judge Manning held that defendants’ (collectively “Hometown Realtors”) failure to answer was based upon excusable neglect and vacated default judgments against Hometown Realtors:

  • Hometown Realtors had good cause for not answering – they claim not to have been served;
  • Hometown acted quickly and diligently hiring counsel and seeking to vacate the default upon learning of the suit; and
  • Hometown Realtors set out facially plausible defenses in proposed answers.

The Court did, however, set an evidentiary hearing to determine whether Hometown Realtors were ever served; unless plaintiff Century 21 chose to re-effect service.

Lawyers Sanctioned for False Pro Hac Vice Application Statements

By R. David Donoghue on Posted in Local Rules

Irrevocable Trust of Anthony J. Antonious v. Tour Edge Golf Manufacturing, Inc., No. 10 C 5552, Slip Op. (N.D. Ill. Apr. 17, 2011) (Kennelly, J.).

Judge Kennelly sanctioned two counsel, Silverman and Daghighian, for false statements made in Silverman’s pro hac vice application which was filed by Daghighian in this patent case. Daghighian prepared and filed Silverman’s application, without his consent or review, based upon prior applications the two had filed in other courts. In doing so, Daghighian stated for Silverman that he had never been suspended from practice and that he had not been held in contempt. The Court later learned that both statements were false. The Court noted that it would likely have granted Silverman’s application had he explained the two instances that should have been identified, but despite that the misstatements were material.

The Court ordered that: 1) Silverman provide a copy of the Court’s opinion to his state disciplinary authority; 2) Silverman pay a $5,000 fine to the Clerk to be put into the pro bono fund; and 3) Silverman was barred from seeking pro hac vice admission to the Northern District for three years without prior permission from the Court’s Executive Committee. Silverman received the more severe sanctions of the two because he was significantly more experienced and because he failed to take personal responsibility in the declaration he provided the Court.

Daghighian received lesser sanctions because he had only been practicing five years and, while his violations were more egregious in some ways, he took responsibility for his actions in his declaration. The Court ordered that: 1) Daghighian provide a copy of the Court’s opinion to his state disciplinary authority, but suggested that the authorities consider the mitigating factors the Court noted in rendering its decision; 2) Daghighian pay a $1,000 fine to the Clerk to be put into the pro bono fund; and 3) Daghighian’s appearance and pro hac vice application were not stricken.

Court Orders Hearing to Quantify Fees for Defendants’ Contempt

By R. David Donoghue on Posted in Local Rules

Optics Plantet, Inc. v. OpticSale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Mar. 7, 2011) (Shadur, Sen. J.).

Judge Shadur denied defendants’ (collectively "AKYR") motion to delay the contempt proceedings against it in this Lanham Act case. AKYR had failed to post a court ordered disclaimer for about eight months, and the Seventh Circuit denied AKYR mandamus relief. The Court, therefore, ordered that the parties appear to quantify the fee-shifting required to address AKYR’s delay pursuant to 28 U.S.C. § 1927, and to discuss whether additional sanctions where warranted.

ANDA Case Stayed Pending Reexam

By R. David Donoghue on Posted in Local Rules

Genzyme Corp. v. Cobrek Pharms., Inc., No. 10 C 112 (N.D. Ill. Feb. 17, 2011) (Dow, J.).

Judge Dow used the Court’s inherent power to grant plaintiff Genzyme’s motion to stay the case pending the reexamination of Genzyme’s patent related to its pharmaceutical drug Hectorol. The Patent Office had already issued an Office Action rejecting all of Genzyme’s claims. The Court also noted that reexams were valuable, during the initial stages of a case, because they either remove an issue for trial, when claims are rejected, or focus the issue by providing the Court with the PTO’s expert view on the claim issues. The Court noted that in this case only limited discovery had occurred — no depositions had been taken — and a trial date had not been set. Finally, it was the Defendant that filed the reexamination request and then opposed the motion to stay. And to the extent that the delay created by a stay would harm the Defendant, that was mitigated by the fact that the case(s) had already been pending for three years.