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Category Archives: Local Rules

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Patent Cases Consolidated Over Objections

Posted in Local Rules

Velocity Patent LLC v. Mercedes-Benz USA, LLC, No. 13 C 8413, Slip Op. (N.D. Ill. Apr. 14, 2014) (Darrah, J.).

Judge Darrah granted plaintiff Velocity Patent’s Local Rule 40.4 motion to consolidate patent cases against various corporate entities of Audi, BMW, Chrysler, Jaguar and Mercedes.  Audi objected to consolidation, while the other defendants did not oppose it.  While asserting the same patent alone is not sufficient for consolidation, the Court held that construing the claims in a single proceeding would save “substantial judicial time and resources.”  And the Court held that the separate proceedings were susceptible to a unified resolution, although the Court did not guarantee that they would be resolved in a single proceeding.

Lack of Local Rule 56.1 Support Prevents Summary Judgment

Posted in Local Rules, Summary Judgment

Panoramic Stock Images, Ltd. d/b/a Panoramic Images v. John Wiley & Sons, Inc., No 12 C 10003, Slip Op. (N.D. Ill. Sep. 2, 2014) (Feinerman, J.).

Judge Feinerman granted in part plaintiff Panoramic’s partial summary judgment motion and denied defendant Wiley’s partial summary judgment motion as to Panoramic’s fraud and contributory copyright infringement claims in this copyright case regarding nine stock photographs.  The Court also set a trial date.

Wiley contends that Panoramic lacks the necessary evidence for its fraud claim proving that when Wiley said it wanted the photograph at issue for use in 15,000 volumes, it knew that it intended to use the photograph in more editions that that.  The Court, however, held that Panoramic offered evidence sufficient to infer the necessary intent.  Panoramic had documents showing that prior editions had been larger than 15,000 volumes and that Wiley was forecasting 30,000 volumes.  The Court also held that Panoramic put forth evidence that it was injured by the allegedly false statement beyond the scope of the copyright infringement because it was deprived of the licensing fee at the time of the license, beyond any award for copyright infringement.

The Court also denied Wiley summary judgment as to Panoramic’s contributory copyright infringement claim.  First, Wiley, in its reply, failed to respond to certain of Panoramic’s arguments.  So, the motion was denied on that ground alone.  Furthermore, the fact that Panoramic’s claim may be duplicative of its direct infringement claim was not fatal because parties are allowed to plead in the alternative.  The Court did, however, acknowledge that even if Panoramic succeeded at trial on both claims, it would not receive a double recovery.

The Court denied Wiley’s motion for summary judgment as to a statute of limitations for all claims before December 9.  But because the Seventh Circuit had approved the discovery rule and Panoramic had evidence that it did not know of Wiley’s alleged infringement until sometime in the three years before filing suit, the suit was not time barred.  And there was a dispute of fact as to whether Panoramic should reasonably have been aware of its claims when it learned of similar suits regarding the same issues.

The Court granted Panoramic that it owned valid copyrights in the images that it individually registered, as Wiley conceded.  But denied summary judgment as to images that were filed as part of compilations.  While the Court had previously held that a copyright owner held copyrights in the original components of its copyrighted compilations, the evidence Panoramic cited in its Local Rule 56.1 statement of facts, did not sufficiently support its ownership claims in these works.

The Court denied Panoramic summary judgment that Wiley exceeded the usage limits set forth in the parties agreements because Wiley had evidence suggesting a practice that allowed the parties to exceed those limits as part of the normal course of their business.

Because of the factual issues described above, summary judgment was not appropriate for either party as to Wiley’s affirmative defenses of statutes of limitations, implied license/course of dealing, and invalidity/unenforceability.

The Court denied Panoramic summary judgment as to Wiley’s lashes defense because it could not determine which were subject to a three year limitation on the record before the Court.


Lady Gaga’s “Judas” Does Not Infringe Copyright

Posted in Local Rules, Summary Judgment

Francescatti v. Germanotta p/k/a Lady Gaga, No. 11 C 5270, Slip Op. (N.D. Ill. June 17, 2014) (Aspen, Sen. J.).

Judge Aspen granted defendants’ Fed. R Civ. P. 56 motion for summary judgment because no reasonable trier of fact could find defendant Lady Gaga’s song “Judas” substantially similar to plaintiff’s song “Juda.”

Local Rule 56.1

As an initial matter, the Court denied defendants’ motion to strike plaintiff’s responses to certain of defendant’s Local Rule 56.1 statements of fact because the Court did not rely upon any of them except one, which did not introduce new facts.  That allowed the Court to avoid the parties’ “labyrinth of disputes.”


There was a question of fact as to whether defendants had access to plaintiff’s copyrighted song.  While there was a dispute about whether defendant Gaynor, who worked with plaintiff on her song, ever came into contact with Lady Gaga, there was no dispute that Gaynor worked on both songs in dispute.

Substantial Similarity

The Court granted summary judgment of no substantial similarity after recognizing that summary judgment of substantial similarity is generally disfavored.  The Court  then denied to apply the inverse ratio rule — requiring a higher standard of proof where evidence of access is relatively weak — because the Seventh Circuit explicitly decided not to endorse it.  The Court then provided an excellent primer on the substantial similarity law.

                                                a.         Expert Testimony

The Court held expert testimony was warranted in this case because:

  • The complexity of the music industry had increased significantly since the adoption of the subjective ordinary observer test.
  • The Lady Gaga song was created with a Digital Audio Workstation (“DAW”) which can create thousands of sounds.
  • The different music genres of the two songs also added to the complexity of the determination.

Although the Court allowed expert testimony and analyzed certain findings of the ordinary observer test, it was explicitly not using a higher standard of review than the ordinary observer test.

                                                b.         Extrinsic Test

The Court found the following similarities between the two songs:

  • Similar titles;
  • Both songs repeat in a monotone the similar words “Juda” or “Judas;” and
  • Limited similarities in the breakdowns.

                                                c.         Intrinsic Test

The Court did not consider expert testimony or plaintiff’s opinion (because she was a musician) because they were not ordinary observers.

The Court did not follow the filtration method, instead considering the similarity of each song’s expression before removing non-copyrightable elements from consideration, noting that the Seventh Circuit has said either method is acceptable.  The Court found an “utter lack of similarity”:

  • It took expert analysis for the Court to see plaintiff’s distinctions;
  • The songs do not have common lyrics;
  • The themes are different; and
  • They do not sound alike musically.

The Court, therefore, found the similarity of expression to be “totally lacking.”  The Court also held that the individual elements were either not similar or not protectable.

Preliminary Injunction Does Not Apply to Redesigns as Long as They are Not Colorable Imitations

Posted in Claim Construction, Local Rules

Scholle Corp. v. Rapak LLC, No. 13 C 3976, Slip Op. (N.D. Ill. Jul. 24, 2014) (Kendall, J.).

Judge Kendall ruled on numerous motions filed after the Court granted a preliminary injunction in this patent case.  Of particular note, the Court held as follows:

  • The Court granted defendant Rapak’s motion to construe more than five claim terms, despite Rapak’s failure to comply with the Local Patent Rules by identifying which terms were case dispositive.  The Court did so despite Rapak’s deficiencies to avoid further delay in the case.
  • The Court ordered Rapak to show cause why Rapak should not be held in contempt for violating the Court’s preliminary injunction by shipping enjoined smoothie valves after the date of the preliminary injunction.  The Court held that the fact that no bond had been set or provided was not a reason that Rapak could delay compliance.  That was especially true because Rapak did not originally raise the bond, the Court did sua sponte.
  • The Court granted Rapak’s motion clarifying that the preliminary injunction only applies to the smoothie valves that were before the Court in the preliminary injunction proceedings and colorable imitations thereof.  The Court, however, declined to rule upon whether Rapak’s redesigned smoothie valves were colorable imitations of the current smoothie valve.
  • The Court granted Rapak’s motion to amend a counterclaim seeking a declaratory judgment that its redesigned smoothie valve did not infringe.
  • The Court denied Rapak’s motion to strike Scholle’s new proposed claim constructions in its response brief.  While they technically did not follow the Local Patent Rules requirements that the parties disclose and confer regarding their respective constructions, Rapak either had notice of the constructions or they were an explanation of the ordinary meaning which Scholle originally set out as the construction.

Final Invalidity Contentions May Not be Amended to Add Nautilus-Based Indefiniteness Claims

Posted in Local Rules

R-Boc Reps., Inc. v. Minemyer, No. 11 C 8433, Slip Op. (N.D. Ill. Cole, Mag. J.).

Judge Cole denied plaintiff R-Boc’s motions to amend its Final Invalidity Contentions with an allegedly new theory regarding the phrase “approximately perpendicular” based upon the Supreme Court’s Nautilus indefiniteness decision and related motion for summary judgment of invalidity based upon R-Boc’s new argument.

As an initial matter, the Court originally adopted the parties’ agreed construction of “approximately perpendicular” — “approximately 90 degrees.”  The agreed construction was initially proposed by R-Boc.  The Court noted that parties were bound by their strategy decisions in cases generally.  Furthermore, the Supreme Court’s Nautilus decision was about the phrasing of the indefiniteness test, not the meaning of words of approximation, which are common in patent claims.  R-Boc had also been stopped in two prior attempts to change its “approximately perpendicular” construction in the form of a summary judgment motion and a motion for judgment as a matter of law.

Finally, the Court also held that any prejudice to defendant could not be cured by the extensions that R-Boc offered to agree to because the case was over seven years old having been to trial and then gone to the Federal Circuit before returning to the Court.  At this point in the life of the case, any delay in getting to a final resolution would be prejudicial.

Trading Technologies: New Expert Opinions Doomed by Lack of Inclusion in LPR Final Contentions

Posted in Experts, Local Rules

The Court also struck some, but not all, of the experts’ opinions based upon trader usage. Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill. Sep. 10, 2014) (Coleman, J.).

Judge Coleman granted in part and denied in part defendants’ (collectively “CQG”) motion to strike portions of plaintiff Trading Technologies’ (“TT”) expert reports that allegedly sought to introduce theories and analysis not contained in TT’s Final Infringement Contentions (“FIC”), which were tendered in November 2013. 

For certain independent claims, TT failed to supplement its FIC with manual re-centering elements as required by the Federal Circuit’s and the Court’s claim constructions.  It was not enough that dependent claims contained an identification of the manual re-centering elements in the accused products and that the “new” arguments for the independent claims were of the same scope.  The Court, therefore, struck TT’s experts new opinions as to those limitations.

TT did, however, sufficiently disclose its argument regarding modifying .ini files, even though in its FIC it refers to changing .ini files instead of modifying them.  The Court, therefore, denied the motion as to those theories. 

TT did not sufficiently disclose its copying arguments related to willfulness.  So, those arguments were struck.  TT was, however, allowed to have its experts testify as to certain deficiencies in CQG’s noninfringement opinion letters, although not that the letters were a basis for willful infringement.

The Court struck TT’s doctrine of equivalents theory regarding disabling the Market Window because it was not disclosed in the FIC.  TT’s argument regarding the state of the DOM Grid, however, was merely a refinement of an argument already in TT’s FIC.  So, the arguments were allowed.  The Court also struck an argument based upon the use of a ChartTrader and Price Hold features together because it was not sufficiently explained.

The Court also struck some, but not all, of the experts’ opinions based upon trader usage.


Stay Pending Inter Partes Review Warranted by Plaintiff’s Delay in Filing Suit

Posted in Local Rules

Ignite USA, LLC v. Pacific Market Int’l, LLC, No. 14 C 845, Slip Op. (N.D. Ill. May 29, 2014) (Holderman, J.).

Judge Holderman granted defendant Pacific Marketing International’s (“PMI’s”) motion to stay plaintiff Ignite USA’s patent litigation case pending the results of PMI’s Inter Partes Review (“IPR”) seeking to invalidate Ignite USA’s asserted patent regarding a drinking container.

Ignite USA would not be prejudiced by a stay.  PMI promptly filed its IPR petition and the litigation was in its early stages.  Ignite USA’s own delay in filing the suit after learning of the alleged infringement — from March 2012 to April 2014 — suggested that Ignite USA would not be prejudiced by the delay. Additionally, Ignite USA’s failure to seek a preliminary injunction suggested that its claims of lost market share were not as severe as it claimed. 

The stay would streamline the case.  Patent Office statistics suggest an “82% probability” that the Patent Office will institute the IPR and a greater than 92% likelihood that at least one claim will be amended or cancelled outright.  In fact, even an IPR decision upholding all of the claims would simplify issues by reducing PMI’s invalidity arguments.  To avoid additional delay, the parties were required to report to the Court within seven days of the Patent Office’s decision on the IPR petition.

Finally, the reduced litigation burden counseled in favor of the stay.  Whatever the outcome of the IPR, it would reduce the scope of the case and the work required by the parties and the Court.

Patent Claims Dismissed for Lack of Ownership

Posted in Local Rules

Rehco, LLC v. Spin Master, Ltd., No. 13 C 2245, Slip Op. (N.D. Ill. Mar. 17, 2014) (Leinenweber, J.).

Judge Leinenweber granted defendant Spin Master’s motion to dismiss plaintiff Rehco’s patent infringement claim related to a toy airplane, granted in part Spin Master’s motion to strike and granted Rehco’s motion to strike. 

As an initial matter, the Court struck Spin Master’s use of Rehco’s attorney work product document because it was inadvertently produced and properly clawed back pursuant to Fed. R. Evid. 502.  Spin Master first used the document during a hearing.  Rehco did not object at that time because lead counsel was unable to attend the hearing.  But upon returning from his travels, lead counsel saw the document, identified it as work product and clawed it back.  Based upon those facts, Spin Master could not use the document and must comply with FRE 502.

The Court dismissed Rehco’s patent infringement claim because Spin Master was the proper assignee of the patent.  Rehco argued that rights in the patent reverted to Rehco based upon Spin Master’s breach of the parties’ agreement.  But even if Spin Master had breached, Rehco only received the “sole and exclusive right . . . [to] exploit . . . .”  The rights in the patent itself would not have transferred.  The agreement also would not have transferred all substantial rights because at least the right to prosecute patents and assert the patents would have been retained by Spin Master.

The Court struck a portion of Rehco’s LPR 2.2 Initial Infringement Contentions.  Because Rehco’s infringement charts were “detailed” identifying where each element was found in Spin Master’s accused products.  Rehco also provided sufficient detail regarding means plus function claim terms.  The Court, however, struck Rehco’s doctrine of equivalents arguments because the allegations were a bare recitation that the accused products “perform substantially the same function, in substantially the same way, to achieve substantially the same result” with the level of detail required by LPR 2.2(d).  The Court gave Rehco twenty one days to amend its doctrine of equivalents contentions to meet the LPR 2.2(d) standards.

Failure to Serve Complaint Courtesy Copies Leads to Fine

Posted in Local Rules

Malibu Media, LLC v. Doe, No. 14 C 693, Slip Op. (N.D. Ill. Feb. 7, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Malibu Media to serve a courtesy copy of its copyright complaint on the Court in compliance with Local Rule 5.2(f) and the Court’s website.  Malibu Media also was ordered to pay a $100 fine for delayed compliance with Local Rule 5.2(f).

Court Orders Briefing Where Complaint Shown No Correction to Chicago

Posted in Local Rules

Sonic Indus., LLC v. iRobot Corp., No. 13 C 9251, Slip Op. (N.D. Ill. Jan. 17, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered the parties to explain their positions as to whether venue for this patent case was proper in the N.D. Illinois.  Based upon the complaint, plaintiff Sonic was a Delaware company and iRobot was a Massachusetts company.  The Court saw no connection to the Northern District except, perhaps Sonic’s interest in the Court’s Local Patent Rules.         

Fine Levied for Failing to Serve Courtesy Copies

Posted in Local Rules

Sonic Industry, LLC v. iRobot Corp., No. 13 C 9251, Slip Op. (N.D. Ill. Jan. 14, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte fined plaintiff Sonic Industry for failure to comply with Local Rule 5.2(f).  Several days after filing its complaint, Sonic Industry still had not provided chambers with a courtesy copy of the complaint.    

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.


Plaintiff Must Provide Courtesy Copy of Complaint

Posted in Local Rules

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.).

Judge Shadur sua sponte ordered plaintiff Zambezia Film to provide the Court a courtesy copy of its recently filed copyright complaints in both of the cases.  The Court’s records suggested that Zambezia Film had not timely provided a courtesy copy of its complaint.  The Court used to exempt parties from serving courtesy copies of complaints, but that changed after the Clerk’s office stopped providing hard copies of complaints to chambers.  The Court did not, however, impose a sanction for the failure to serve a courtesy copy of the complaint, as it sometimes does for other pleadings.

Court Sua Sponte Orders Production of Evidence and a Hearing on a Copyright Issue

Posted in Local Rules, Uncategorized

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. Apr. 1, 2013) (Shadur, Sen. J.).

Judge Shadur, after reading plaintiff FlavaWorks’ answer to defendant’s copyright counterclaims, sua sponte ordered FlavaWorks to produce a copy of the Commission Work Agreement that FlavaWorks alleged assigned all rights in the videos and photographs at issue to FlavaWorks.  The Court reasoned that deciding the issue of whether the Agreement transferred defendant’s rights in his works to FlavaWorks would move a case forward that had otherwise been largely a series of “procedural skirmishes.”  To the extent that there was not sufficient documentary evidence to establish the necessary facts, the Court asked the parties to submit a brief statement regarding how the issue could be effectively brought before the Court.



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

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

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

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. 


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.


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

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

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

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

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

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

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:


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

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.