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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Cox

Rule 30(b)(6) Witness Cannot be Instructed Not to Answer Questions About a Noticed Topic

Posted in Discovery

Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. May 8, 2013) (Cox, Mag. J.).

Judge Cox granted defendants’ (collectively “Crimson”) motion to compel answers to Fed. R. Civ. P. 30(b)(6) deposition questions and for sanctions in this trade secret dispute.  Crimson’s Rule 30(b)(6) deposition notice included a topic regarding plaintiff Peerless Industries’ (“Peerless”) alleged trade secrets.  Despite that, Peerless’ counsel instructed its witness not to answer questions regarding what Peerless’ trade secrets were.  The Court held that Fed. R. Civ. P. 30(c)(2) limits instructions not to answer to preserving privilege, enforcing court limitations or for a Fed. R. Civ. P. 30(d)(3) motion.  Peerless’ witness should have been required to answer questions regarding its trade secrets to the best of their ability.  As a remedy, the Court directed the parties to reconvene the deposition for up to three hours to question the witness on the trade secret topic, with Peerless paying for the court reporter and three hours of one of Crimson’s counsel time to take the deposition.

Although Discovery was Not Stayed, the Court Delays Discovery in Case Summary Judgment Resolves the Dispute

Posted in Discovery

Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. May 8, 2013) (Cox, Mag. J.).

Judge Cox granted in part defendants’ (collectively “Crimson”) motions to compel depositions and documents after the close of fact discovery.  Defendants sought the deposition of plaintiff’s prosecuting attorney.  Plaintiff Peerless’ only argument against the deposition was that the deposition should not occur while Crimson’s invalidity summary judgment motion was pending.  The Court agreed that taking the deposition now would be wasteful if summary judgment was granted and ordered that the deposition take place only if Crimson loses its summary judgment motion.

The Court could have issued the same order as to Crimson’s request to depose a third party who has allegedly an inventor of the patent in suit, but Peerless subpoenaed that deposition and then canceled it just before the close of fact discovery.  But the Court held that it would have been unfair to allow Peerless’ “last minute decision” to prohibit Crimson from taking the deposition.  The Court, therefore, ordered the deposition.

Finally, the Court denied Crimson’s motion to compel production of certain prototypes with leave to refile it, if Crimson lost its summary judgment motion.  The Court was open to the possibility that the discovery was relevant, but there was no point in requiring the production if Crimson were to win its invalidity motion.

Pursuit of a Meritless Case Does Not Rise to the Level of a Crime-Fraud Exception

Posted in Discovery

Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. May 14, 2013) (Cox, Mag. J.).

Judge Cox denied defendants’ (collectively “Crimson”) motion to compel production of a clawed back document based upon the crime-fraud exception.  Plaintiff Peerless Industries (“Peerless”) inadvertently produced a document and then clawed it back.  Crimson argued that the document demonstrated Peerless’ counsel’s belief that Peerless’ claims lacked legal merit and were being pursued to “distract and delay.”  The Court held that a potentially improper motive for filing suit did not rise to the level of a crime or a fraud that would have required waiver and production.  The Court did, however, note that pursuing baseless litigation in order to harm a competitor could be actionable as a tort.

Oral Agreement is Enforceable as Part of a Final Judgment

Posted in Settlement

TRT Transportion, Inc., d/b/a Chicago Trolley Co. v. Chicago Trolley Rentals, Inc., No. 11 C 3693, Slip Op. (N.D. Ill. Jul. 26, 2012) (Tharp, J.).

 

Judge Tharp adopted Judge Cox’s report and recommendation enforcing the parties’ oral settlement agreement placed on the record at the conclusion of a settlement conference.  The record was clear that the parties agreed the oral terms were enforceable.  And the material terms defendant said were not included, had never even been discussed.  The Court, therefore, entered the terms of the settlement and a final judgment as part of its order.

Oral Settlement on the Record is Enforceable

Posted in Settlement

Transportion, Inc. d/b/a Chicago Trolley Co. v. Chicago Trolley Rentals, Inc., No. 11 C 3693, Slip Op. (N.D. Ill. Jan. 21, 2012) (Cox, Mag. J.).

Judge Cox recommended granting plaintiff’s motion to enforce the parties’ oral agreement and denied defendant’s motion for declaration of the absence of an agreement in this trademark case.  At the end of a Court-led settlement conference, the parties stated their settlement terms on the record.  Plaintiff then commented that settlement was subject to negotiating a written agreement.  In response, the Court explained that the “terms are enforceable” and each party agreed.  Based upon the parties’ exchange on the record, the Court recommended holding the oral agreement enforceable.

In Forma Pauperis Status Denied Without Full Proof of Need

Posted in Federal Rules

Kim v. The Earthgrains Co., No. 01 C 3895, Slip Op. (N.D. Ill. Mar. 9, 2011) (Cox, Mag. J.).

Judge Cox denied plaintiff’s application for in forma pauperis ("IFP") status during its Federal Circuit appeal. The Court previously granted plaintiff’s IFP motion, until questions were raised regarding plaintiff’s real estate holdings. At that point, the Court rescinded the IFP status – there is more on that decision and this case generally in the Blog’s archives. Because the Court continued to have similar concerns regarding plaintiff’s property holdings, the Court denied IFP status.

Change to “Consisting of” Language During Reexam Limits Damages

Posted in Claim Construction

Kim v. The Earthgrains Co., No. 01 C 3895, Slip Op. (N.D. Ill. Feb. 18, 2010) (Cox, Mag. J.). 

Judge Cox granted defendant summary judgment, limiting plaintiff’s potential damages to the date that the Patent Office issued plaintiff’s reexamination certificate. During reexam, the transitional phrase in each of the claims at issue was revised from "consisting essentially of" to "consisting of." "Consisting essentially of" signals a partially open claim which can include non-claimed ingredients so long as they do not materially affect the claimed properties of the invention. "Consisting of," however, signals a closed claim limiting it to the listed elements, unrelated elements and unavoidable impurities. 

The defendant argued that the changed transitional phrases were substantive changes which limited the damages period to the period from the reexam certificate forward. The Court held that the changed transitional phrases was a substantive change. The plaintiff argued that the changed transitional phrases did not change the scope of her patents based upon plaintiff’s research. But the Court held that the plaintiff had not shown that any element excluded from the original claims would have also been excluded from the reexamined claims. The Court also explained the scope of "consisting essentially of" as follows:

[A] formula which falls under a "consisting essentially of" claim may contain additional "active" ingredients not listed in the claim, as long as the additional active ingredients do not materially alter the "basic and novel" characteristics of the invention. Ecolab also suggests that additional active ingredients which improve the performance of the basic claim formula, but do not otherwise change its function, do not materially alter the "basic and novel" characteristics of the invention.

Senator Durbin Sends Northern District Judicial Nominees List to President Obama

Posted in Legal News

Illinois’s senior senator Dick Durbin recently sent President Obama the names of seven nominees to fill three vacancies on the Northern District of Illinois bench.  The nominees are AUSA Edmond Chang, Illinois appellate Judge Sharon Coleman, Magistrate Judge Susan Cox (click here to read about Judge Cox’s IP opinions in the Blog’s archives), Thomas Durkin, Gary Feinerman, Mary Rowland and Magistrate Judge Maria Valdez (click here to read about Judge Valdez’s IP opinions in the Blog’s archives). 

Here are biographies of each nominee from Senator Durbin’s press release:

Chang has served as an assistant U.S. attorney in the Northern District of Illinois since 1999, and he is currently the chief of appeals.  He previously worked as an associate at Sidley Austin, and as a judicial law clerk to Judge Marvin Aspen in the Northern District of Illinois and Judge James Ryan on the U.S. Court of Appeals for the 6th Circuit. He has served as an adjunct professor at Northwestern University law school, where he graduated with honors and served on the law review. He lives in Northbrook.

Coleman is a judge on the Illinois Appellate Court, following her election in 2008. She served as a judge on the Circuit Court of Cook County from 1996 to 2008. Before that, she was a supervisor in the Cook County state’s attorney’s office and an assistant U.S. attorney in the Northern District of Illinois. She has served on the boards of numerous bar associations and public interest organizations. She is a graduate of Washington University law school in St. Louis, and she lives in Chicago.

Cox has been a U.S. Magistrate Judge in the Northern District of Illinois since 2007. She previously worked as a litigator at several Chicago law firms, as an assistant U.S. attorney in the Northern District of Illinois, and as a judicial law clerk to Judge Wayne Andersen in that district. Judge Cox has served on the boards of many bar associations and public interest organizations. She has taught as an adjunct professor at DePaul University law school, and she is a graduate of Boston University law school, where she served on the law review. Judge Cox lives in LaGrange.

Durkin has been a partner at Mayer Brown since 1993 and was the chair of the firm’s pro bono committee for nearly a decade. He previously served as an assistant U.S. attorney in the Northern District of Illinois for over twelve years.  He served as a judicial law clerk to Judge Stanley Roszkowski in the Northern District of Illinois. He is a graduate of DePaul University law school, where he has taught as an adjunct professor. Durkin lives in Downers Grove.

Feinerman has been a partner at Sidley Austin since 2007. From 2003 to 2007, he served as Illinois’s solicitor general, and before that he was a partner at Mayer Brown.  He has argued numerous cases before the U.S. Supreme Court and Illinois Supreme Court. He served as a judicial law clerk to Justice Anthony Kennedy on the U.S. Supreme Court and Judge Joel Flaum on the U.S. Court of Appeals for the 7th Circuit in Chicago. He has served on numerous boards and is the president of the Appellate Lawyers Association of Illinois. He graduated from Stanford Law School and lives in Winnetka.

Rowland is a partner at the Chicago law firm of Hughes Socol Piers Resnick & Dym, where she has worked since 2000. From 1990 to 2000, she worked at the Federal Defender Program in Chicago, including five years as the chief appellate attorney. She has served on numerous boards. She was a judicial law clerk to Judge Julian Cook in the Eastern District of Michigan, and she is a graduate of the University of Chicago law school. Rowland lives in Oak Park.

Valdez has been a U.S. Magistrate Judge in the Northern District of Illinois since 2005. From 1992 to 2005, she was the Chicago regional counsel and staff attorney for the Mexican American Legal Defense and Educational Fund. Prior to that, she worked as a Deputy Federal Public Defender in California. She has served on many boards. She is a graduate of the University of California-Hastings law school, and she lives in Western Springs.

A hat tip to Ameet Sachdev at the Chicago Tribune’s Chicago Law Blog for identifying this story last week.

Patent Expert Allowed on Limited Subjects

Posted in Experts

Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, Slip Op. (N.D. Ill. Jan. 9, 2009) (Cox, Mag. J.).*

Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony following the reasoning of a previous opinion in a related case about the same expert — click here to read about that opinion in the Blog’s archives. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.

* Click here for more on this case and related cases in the Blog’s archives. Also, note that the Court continues the progressive use of footnote citation.

Willfulness Post-Seagate

Posted in Damages

Brian Higgins at the Maryland IP Law Blog posted an analysis of significant willfulness decisions post-In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007) — click here for the post and click here for a subsequent post discussing Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).  Of the eleven decisions Higgins identified, three were Northern District decisions and one was a Federal Circuit decision analyzing a Northern District case.  Here are my posts on the Northern District decisions:

As you can infer from the relatively small number of cases identified by Higgins, there remains a lot of law to be written about Seagate before the standard is well settled.  I suspect that within 18-24 months there will be a relatively large body of law, including numerous Federal Circuit decisions exploring the new standard’s outlines.  Until then, patent litigants will face a degree of uncertainty regarding willfulness.  Of course, defendants will generally be glad to have some uncertainty in exchange for plaintiffs’s higher willfulness hurdle.

Patent Law Expert Allowed to Opine re Patent Office

Posted in Experts

Se-Kure Controls, Inc. v. Vanguard Prods. Group Inc., No. 02 C 3767, 2008 WL 169054 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*

Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.

* Click here for more on this case and related cases in the Blog’s archives. Also, note that this opinion also uses footnote citation.

Opinion Letter Discovery and Footnote Citation

Posted in Discovery

Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*

Judge Cox granted in part a motion to compel discovery regarding defendant’s advice of counsel defense. The Court ordered defendants to product a technical witness that provided opinion counsel information because opinion counsel was unable to remember the substance of conversations between the two.

The Court also ordered production of communications between opinion counsel and trial counsel related to the patent in suit. These communications were within the scope of defendant’s waiver, even though a deposition of trial counsel would not have been allowed.

The Court did not allow plaintiff to take any additional fact depositions. Plaintiff argued it had waited to take certain fact depositions because the witnesses were expected to be Fed. R. Civ. P. 30(b)(6) designers regarding defendants’ willfulness defense. But the Court did not allow the deposition because fact discovery was closed and because plaintiff had deposed other witnesses on the same topics. 

The most exciting part of this opinion, however, was its form, not its substance – Judge Cox used footnotes for cites. While this format is infinitely more readable and has many prominent advocates – Brian Garner, the (new) legal writer,  Wayne Scheiss and me (perhaps not the most prominent but I am an advocate of footnote citation) – it is a bold move in the typically conservative realm of judicial writing. At least one other Northern District Judge, Chief Judge Holderman, has used footnote citation. If you are aware of other examples, let me know. 

Thank you Judge Cox.

* Click here for more on this case and related cases in the Blog’s archives.

Defendants’ Customers’ Sales Information Relevant to Commercial Success

Posted in Discovery

Degregorio v. Phillips Electronics. N. Am. Corp., No. 07 C 2683, Slip Op. (N.D. Ill. Dec. 28, 2007) (Cox, Mag. J.).

Judge Cox granted in part defendants’ motion for a protective order regarding plaintiff’s subpoenas of defendants’ customers in this patent dispute. Plaintiff subpoenaed defendants’ customers of allegedly infringing hair trimmers with built in vacuums, seeking sales and inventory information, as well as promotional materials and purchase orders. The Court denied the motion as to the sales and inventory information. The customers’ sales were potentially relevant to commercial success of the patented device for plaintiff’s non-obviousness case. The Court did enter a protective order as to the request for purchase orders and marketing materials. The Court held that the purchase orders were cumulative of the other requested sales information and marketing materials were too tangential to commercial success to be discoverable.

There is a New Magistrate in Town

Posted in Legal News

Chief Judge Holderman announced the selection of Susan E. Cox as the Northern District’s newest magistrate judge, filing the vacancy created by Judge Levin’s retirement.  You can read the Northern District’s press release here.  Magistrate Judge Designate Cox has an impressive resume including a clerkship with District Judge Wayne R. Andersen, eight years as an AUSA, twenty four cases (civil and criminal) tried to a verdict, and, perhaps most important to Blog readers, patent infringement experience.  Congratulations Judge Cox.