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Tag Archives: Castillo

Court Allows Joinder of BitTorrent Does for Early Stages of Case

Posted in Federal Rules, Pleading Requirements

Purzel Video GmbH v. Does 1-99, No. 13 C 2501, Slip Op. (N.D. Ill. Aug. 16, 2013) (Gottschall, J.).

Judge Gottschall denied various Doe defendants’ motions to quash third party subpoenas to their respective internet service providers (ISPs) as well as motions to sever and dismiss individual Does from this action.  This is a BitTorrent case in which the Does are accused of being part of a “swarm” that downloads a copyright file, in this case the motion picture “Trade of Innocents.”  Of particular interest, the Court held as follows:

  • The Court avoided a district split in whether Doe defendants have standing to quash a third-party ISP subpoena, holding that plaintiff Purzel Video was entitled to the information sought in the subpoenas and that the Doe defendants were not unduly burdened by the third-party subpoenas.  The fact that the customer associated with the identified IP address may not be the actual infringer was not a basis for quashing the subpoenas.
  • The Court ordered Purzel Video not to publish any Doe’s identity without leave of Court.  And to further limit “potential for harassment,” the Court held that only the bill payer and mailing address related to the IP address were discoverable.  Purzel Video was not entitiled to phone numbers or email addresses.  Purzel was also required to communicate with Does via their respective counsel to the extent that they had counsel.
  • Recognizing a nation-wide split in authority as to how closely connected members of a “swarm” must be in order to be joined in a single suit, the Court sided with Judge Castillo, holding that it was sufficient that the Does downloaded the same initial seed file intending to use other computers to download pieces of the copyrighted works and to allow the Doe’s computer to be used by others in the swarm to download the same work.  The Court also noted that while not all Does downloaded the files at the same time, the downloads occurred during the same month.
  • The Court declined to exercise its Fed. R. Civ. P. 21 discretion to sever the cases, although without prejudice to reconsider at a later date.  In the early stages of the case, the issues amongst Does remained relatively common and joinder made judicial sense.  It is possible that varying and opposing defenses might eventually change that, at which point the Court would be willing to consider severing some or all of the cases.
  • Purzel Video’s civil conspiracy claim was preempted by copyright law because it seeks to vindicate the same rights as a copyright claim.
  • Purzel Video’s Local Rule 3.2 corporate disclosure was deficient because it did not list all of the members of Purzel Video.  A GmbH is a German LLC, and Local Rule 3.2 requires disclosure of all members of LLC’s.

Court Allows Joinder of BitTorrent Does for Early Stages of Case

Posted in Pleading Requirements

The Bicycle Peddler, LLC v. Does 1-99, No. 13 C 2375, Slip Op. (N.D. Ill. Aug. 13, 2013) (Gottschall, J.).

Judge Gottschall denied various Doe defendants’ motions to quash third party subpoenas to their respective internet service providers (ISPs) as well as motions to sever and dismiss individual Does from this action.  This is a BitTorrent case in which the Does are accused of being part of a “swarm” that downloads a copyright file, in this case the motion picture “Trade of Innocents.”  Of particular interest, the Court held as follows:

  • The Court avoided a district split in whether Doe defendants have standing to quash a third-party ISP subpoena, holding that plaintiff Bicycle Peddler was entitled to the information sought in the subpoenas and that the Doe defendant was not unduly burdened by the third-party subpoenas.  The fact that the customer associated with the identified IP address may not be the actual infringer was not a basis for quashing the subpoenas.
  • The Court ordered Bicycle Peddler not to publish any Doe’s identity without leave of Court.
  • Recognizing a nation-wide split in authority as to how closely connected members of a “swarm” must be in order to be joined in a single suit, the Court sided with Judge Castillo, holding that it was sufficient that the Does downloaded the same initial seed file intending to use other computers to download pieces of the copyrighted works and to allow the Doe’s computer to be used by others in the swarm to download the same work.  The Court also noted that while not all Does downloaded the files at the same time, the downloads occurred over sixteen days.
  • The Court declined to exercise its Fed. R. Civ. P. 21 discretion to sever the cases, although without prejudice to reconsider at a later date.  In the early stages of the case, the issues amongst Does remained relatively common and joinder made judicial sense.  It is possible that varying and opposing defenses might eventually change that, at which point the Court would be willing to consider severing some or all of the cases

Expert Fees Awarded to Prevailing and Losing Parties

Posted in Trial

Se-Kure Controls, Inc. v. Vanguard Prods. Group, Inc., No. 02 C 3767, Slip Op. (N.D. Ill. Jul. 5, 2012) (Castillo, J.).

Judge Castillo awarded costs as to each party in this patent infringement action after the Federal Circuit affirmed Judge Anderson’s entry of judgment in favor of defendants.  The Court awarded defendants costs and expert fees of approximately $32,000 pursuant to Fed. R. Civ. P. 54(d) and 26(b)(4)(E), and awarded plaintiff Se-Kure approximately $14,000 in expert fees pursuant to Fed. R. Civ. P. 26(b)(4)(E) to be credited against defendants’ costs.  Of particular interest, the Court ruled as follows:

  • Because the Court held Se-Kure’s patent invalid, defendants were prevailing parties.
  • Defendant’s amended petition was not untimely.  It added costs, but it was filed within thirty days of the Court’s judgment as required by Local Rule 54.1(a).
  • The Court awarded hearing transcript costs up to the relevant Federal Judicial Center allowed cost.  The Court did not award expedited costs because defendants did not provide a justification for the extra cost of the expedited service.
  • The Court awarded the agreed amounts for deposition transcripts.
  • The Court reduced defendants’ copying costs by approximately $3,300 for copy costs after depositions on that were not clearly tied to the case.
  • The Court denied costs for a demonstrative because half of it was blown up portions of text from testimony and exhibits.  The other half was figures at the center of a controversy regarding Defendant’s mischaracterization of evidence.
  • Although the Court had not identified a case within the Seventh Circuit awarding expert fees for depositions to a losing party, the Court held that the language of Fed. R. Civ. P. 26(b)(4)(E) did not limit the award of expert fees to a prevailing party.  So, the Court awarded all parties their expert fees for deposition time, including both reasonable preparation and deposition time.

False Marking Requires More than General Intent Allegations

Posted in Pleading Requirements

Simonian v. Mead Westvaco Corp., No. 10 C 1217 Slip. Op. (N.D. Ill. Sep. 1, 2011) (Castillo, J.). 

Judge Castillo granted defendant Mead Westvaco’s motion to dismiss plaintiff Simonian’s false patent marking suit claiming that Mead Westvaco marked envelopes with expired patents. Simonian’s general allegation of intent did not meet the Fed. R. Civ. P. 9 (b) heightened pleading standards. In fact, they mirrored the allegations held insufficient in BP Lubricant. And Simonian did not:

  • Identify specific Mead Westvaco individuals with knowledge of the alleged false marking;
  • Allege that Mead Westvaco sued a third party asserting the patents after they expired; or
  • Allege that Mead Westvaco made multiple revisions to the packaging on the markings after the patents expired. 

“Conclusory” Arguments are Fatal to Preliminary Injunction

Posted in Legal News

EnVerve, Inc. v. Unger Meat Co., No 11 C. 472, Slip Op. (N.D. Ill. Apr. 26, 2011) (Castillo, J.).

Judge Castillo denied plaintiff EnVerve’s motion for preliminary injunction in this copyright infringement action involving advertisements. The Court first held that EnVerve had only shown a minimal likelihood of success on the merits:

  • EnVerve’s arguments were "very conclusory" and that "brevity [was] fatal."
  • There was a significant dispute regarding who owned the copyrights based upon a contract between the parties. 
  • EnVerve’s evidence of copying was an unsupported conclusion that defendant use constituted copying.

  • EnVerve failed to address defendant’s best argument – that EnVerve’s claim sounded in contract, not copyright. 

The Court also held that there was no irreparable harm:

  • Money damages were an adequate remedy and were readily calculable based upon the contract, EnVerve’s invoices and defendant’s payments.
  • EnVerve’s claims are reputational harm and defendant’s potential insolvency were too speculative to be considered irreparable harm.

Northern District of Illinois Patent Program Begins

Posted in Legal News

The patent pilot program started this month in the Northern District and across the country.  The pilot program is a ten-year look at ways to handle patent cases more effectively.  The main component of the pilot program is judges in pilot districts, including the Northern District, self-selecting as patent judges.  Patent cases will continue to be randomly assigned to all Northern District judges.  But when a non-patent judge is assigned a patent case that judge will have thirty days to order reassignment of the case.  When reassignment is ordered, the case will be randomly reassigned to one of the patent judges.  There will also be patent-related education and programs offered for the patent judges across the country. 

One unanswered question about the pilot program remains:  If a non-patent judge was assigned a patent case less than thirty days before the program kicked off on September 19, can the non-patent judge order the patent case reassigned pursuant to the pilot program?  I have not seen it happen yet, but I suspect it could over the next week or two.

The Northern District issued the following list of judges who have self-selected as patent judges:

  • Chief Judge James F. Holderman

  • Judge Ruben Castillo
  • Judge John W. Darrah
  • Judge Gary S. Feinerman
  • Judge Virginia Kendall
  • Judge Matthew F. Kennelly
  • Judge Joan Humphrey Lefkow
  • Judge Rebecca R. Pallmeyer
  • Judge Amy J. St. Eve
  • Judge James B. Zagel
  • Court Refers to Input “Directly” Its Claim from the Specification

    Posted in Claim Construction

    Chicago Mercantile Exchange, Inc. v. Tech. Research Group, Inc., No. 09 C 3895, Slip Op. (N.D. Ill. Jun. 28, 2010) (Castillo, J.).

    Judge Castillo construed the claim terms in this patent case involving methods for tracking Rolling Spot Currency contracts. Here are constructions of note:

    • The Court discounted the extrinsic evidence and focused on the intrinsic evidence to construe "principal market marker" as "an entity required to provide the following functions: (1) continuously maintain a two-sided bid/offer market of specified size and spread for its designated product(s); (2) maintain a public order book with respect to these assigned products; and (3) give priority to customer order execution over personal trading. As compensation for the fulfillment of these responsibilities, this entity is to receive priority volume benefits."
    • Because "computer" had a very apparent ordinary meaning, the Court relied upon dictionaries to define "computer" as "a programmable electronic device that can store, retrieve, and process data."
    • The preambles of each claim were limiting to the extent they identified a computer and the computer was not identified elsewhere in the claim. Where there was not a computer identified in the body of the claim, the preamble was a necessary aspect of the invention.
    • "Execute" was defined consistent with its ordinary meaning as "to carry out fully and completely."
    • The Court refused to define "receive" or "directly receive." But the Court held that doing so would improperly impart a claim limitation from the specification.
    • "Bid," "offer," "trade," and "order", were all defined based upon their dictionary definitions.
    • To sustain the validity of the claims, the Court defined "rolling spot" as how plaintiff’s Rolling Spot Currency contracts were defined as of the effective filing date.
    • "Currency futures" were construed based upon financial dictionaries as "contracts in the futures markets that are for delivery in a major currency such as U.S. dollars, British pounds, French francs, German marks, Swiss francs, or Japanese yen."

    Claims Need Not Be Construed to Encourage an Embodiment that was Part of a Restriction Requirement

    Posted in Claim Construction

    Albecker v. Contour Prods., Inc., No. 09 C 6312, Slip Op. (N.D. Ill. May 3, 2010) (Castillo, J.).

    Judge Castillo construed the claims in this patent case involving a wedge-shaped backrest and legless leisure chair. Of particular interest, the Court construed the following terms:

    • "Secured to" was defined as "attached using attachment means" that connect a type cushion to a foundation. The "secured to" definition excluded unitary top cushion foundations. The fact that the Court’s definition excluded one embodiment because that embodiment was part of a restriction requirement; and
    • "face of the generally wedge shaped foundation" was not properly briefed, but the Court held that the face was top surface.

    The Court declined to construe other claim terms because the parties told the Court that the construed terms were the key terms.

    The Court also noted that the parties’ Local Patent Rule 4.2(b) joint appendix failed to provide a complete prosecution history – a violation of the LPR 4.2(b).

    Patent News: Patent Reform & Supreme Court Shortlist

    Posted in Legal News

    Here are a few stories that do not warrant a full post:

    • The mainstream media and the blogosphere are buzzing with predictions of who is on President Obama’s shortlist for replacing Justice Souter  The Northern District’s Judge Castillo and the Seventh Circuit’s Judge Wood are both making many of the lists — check out one list at the Daily Writ.  Both excellent choices.  Over the weekend, the Chicago Tribune ran a story about a local expectation that someone connected to the University of Chicago would be appointed to the Supreme Court during the Obama presidency.  I also wonder if the Northern District’s Judge St. Eve is or should be on some shortlists.
    • Ronald Slusky is bringing his two-day patent claim drafting seminar to Chicago May 19-20.  Slusky promises to teach "a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims.  Through this interactive seminar, participants will enhance their skills in a classroom setting."  I have not attended Slusky’s seminar myself, so I cannot speak to its value, but it definitely looks interesting.

    • Last week the House held hearings about the Patent Reform Act.  Check out some commentary on the hearings at Patently-O.
    • I got out of the habit of posting each week’s Blawg Review, but last week’s was both too good and too unique to pass up.  Blawg Review #209 is up at John Hochfelder’s New York Injury Cases Blog (another LexBlog site) — read it here.  Hochfelder tells the moving story of his father’s life, the life of an American hero.   Blawg Review #210 is also available at the China Law Blogclick here to read it.  It is also an excellent Review based loosely on the 90th anniversary of China’s May 4th Movement.

    Court Grants Summary Judgment Regarding Ambiguous Contract Term

    Posted in Summary Judgment

    Encyclopaedia Britannica, Inc. v. Guerrero, No. 08 C 2752, Slip Op. (N.D. Ill. Feb. 19, 2009) (Castillo, J.).

     

    Judge Castillo granted plaintiff summary judgment as to defendants’ declaratory judgment counterclaim in this trademark, copyright and contract dispute. Plaintiff licensed its content, including certain copyright and trademark rights, to defendants for use in an online Spanish-language reference site. Because a third party did not provide certain additional content required by the parties’ agreement, plaintiff exercised an option to terminate the parties’ license agreement and attempted to exercise a purchase option provided for in the agreement. Defendants, however, argued that the agreement did not allow exercise of the purchase agreement for a six year period, which had not yet passed. The Court held that a dispute over the meaning of a contract clause did not necessarily make a contract ambiguous. The Court determined that while the Agreement could be read to support either party, the intent of the agreement was to allow for immediate purchase by plaintiff in the event of termination, regardless of whether or not the termination occurred after the six year period.

    Court Dismisses Case Sua Sponte for Lack of Jurisdictional Facts

    Posted in Pleading Requirements

    Helferich Patent Licensing v. ASUStek Computer Inc., No. 08 C 5189, Min. Order (N.D. Ill. Sep. 22, 2008) (Castillo, J.)

    Judge Castillo sua sponte dismissed without prejudice plaintiff’s patent infringement complaint. The Court held that defendants were foreign entities without business entities in the Northern District. The Court allowed plaintiff to proceed with expedited jurisdictional discovery, and gave plaintiff until December 15 to refile an amended complaint, if they could, with more facts supporting jurisdiction and venue. The Court did not cite the Supreme Court’s Twombly decision regarding Fed. R. Civ. P. 8 pleading standards in its brief opinion. But this decision could flow from Twombly’s plausibility pleading standards.

    Harm to Goodwill is Potentially Irreparable, Justifying Preliminary Injunction

    Posted in Legal News

    SMC Corp., Ltd. v. Lockjaw, LLC, __ F. Supp.2d __, 2007 WL 983850 (N.D. Ill. Apr. 3, 2007) (Castillo, J.).

    Judge Castillo granted plaintiff’s motion for a preliminary injunction, enjoining defendants from breaching the parties’ agreement, unless plaintiff acted in a manner triggering the agreement’s termination provision, and from contacting plaintiff’s customers for any purpose without plaintiff’s consent.  Plaintiff was the exclusive distributor of defendants’ patented Lockjaw pliers in certain Western European countries.  For about eighteen months, plaintiff’s distributed defendants’ pliers without incident.  But then defendants altered payment terms, which was their right if they followed certain procedures.  Plaintiff alleges that defendants did not follow those procedures and based on this dispute the relationship appears to have broken down.  Shortly after defendants altered the payment terms, plaintiff filed this suit seeking, among other things, a declaratory judgment that the agreement is binding and enforceable, and that defendants breached the agreement.  Plaintiff also sought an injunction to prevent the defendants from terminating the agreement and/or contacting plaintiff’s customers.  Relying upon the UCC, the Court found that plaintiff had a likelihood of success on the merits based upon, among other things, the fact that its brief (and cured) nonpayment for two shipments likely did not constitute a breach of the agreement.

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    Local Rule 56.1 Rears Its Ugly Head Again

    Posted in Local Rules

    Kenall Mfg. Co. v. Genlyte Thomas Group LLC, 439 F. Supp.2d 854 (N.D. Ill. July 20, 2006) (Castillo, J.).

    Judge Castillo denied opposing infringement and invalidity summary judgment motions in this very detailed and thorough opinion. The opinion is most remarkable for its illustration of two basic, but important, practice tips, which are best understood from the following excerpts:

    The only thing that the multitude of summary judgment motions and expert reports filed in this hotly-disputed patent case make clear is that multiple issues of material fact remain to be determined. Instead of moving this case toward a timely resolution, the parties are driving up the costs of litigation with superfluous briefing that has repeatedly failed to abide by this Court’s local rules.

                                                                    * * *

    This case has been poorly litigated up to this point. By failing to file a 56.1 statement of facts and by failing to respond to Genlyte’s 56.1 statement, Kenall’s attorneys have come dangerously close to losing this case for their client based on nothing but their own ineptitude. On the other side, both Genlyte and Kenall have fanned the flame of excessive and superfluous briefing with arguments for unfeasible claim construction and a litany of expert reports that show nothing but material issues of facts. The parties have now spent tens of thousands of dollars on seven expert reports and extensive briefing of three separate motions for summary judgment to prove to this Court that this case is certainly not appropriate for resolution on summary judgment.

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