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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Dow

Court Stays Case Pending Reexam on Plaintiff’s Motion

Posted in Pleading Requirements

C&C Power, Inc. v. C&D Techs., Inc., No. 12 C 3376, Slip Op. (N.D. Ill. Feb. 11, 2013) (Dow, J.).

Judge Dow granted plaintiff’s motion to stay its patent infringement case pending an  inter partes review of the patent in suit initiated by defendants.  Defendants acknowledged that the reexam could simplify or moot the district court case and that there would be few wasted resources due to a stay because the case was in its early stages.  Defendants, however, argued that they would be prejudiced by the delay in deciding their Rule 12(b)(6) motion to dismiss.  But the Court held that plaintiff had not made “utterly fantastic factual allegations” that would subject it to dismissal.  And because defendants initiated the reexam, they could not claim prejudice from the reexam.

Written Description is Not Satisfied Because an Examiner Allowed a Claim

Posted in Summary Judgment

Carrier Vibrating Equip., Inc. v. General Kinematics Corp., No. 10 C 5110, Slip Op. (N.D. Ill. Sept. 27, 2012) (Dow, J.).

Judge Dow granted defendant General Kinematics summary judgment of invalidity of claims 31 and 32 of plaintiff Carrier Vibrating Equipment’s (“Carrier”) patent related to controlling retention time of a casting on a vibratory conveyor for failure to comply with the written description requirement.  The claims at issue, which were not part of the original application, related to changing the magnitude of the vibratory force.  The written description requirement - that the application describes the claimed invention such that one of ordinary skill in the art that the inventor possessed the claimed invention.  Whether the patent meets the written description requirement is a question of fact.  The Court held that the patent taught modification of the angle of the vibratory force, but not the magnitude.  The fact that the Background of the Invention section mentioned that prior art systems vary conveying speed and direction by “changing either the direction or magnitude of a force” was not sufficient because the specification did not otherwise discuss changing the magnitude.  And it was not sufficient that the specification incorporated by reference a patent that taught changing the magnitude of the force.  Furthermore, the fact that the Patent Office allowed the claims at issue was not evidence that the written description requirement was meant.  The Court held that:

there is no reason for the Court to conclude that the PTO examiner’s decision deserves any more deference than the typical presumption of validity that must be overcome by clear and convincing evidence.

Claim Construction Knocks Out Prior Art

Posted in Claim Construction, Summary Judgment

Carrier Vibrating Equip., Inc. v. General Kinematics Corp., No. 10 C 5110, Slip Op. (N.D. Ill. Sept. 27, 2012) (Dow, J.).

Judge Dow granted plaintiff Carrier Vibrating Equipment’s (“Carrier”) motion for summary judgment of validity and denied defendant General Kinematics’s cross motion for summary judgment of invalidity in this patent case related to controlling retention time of a casting on a vibratory conveyor.  The Court initially construed the claim “modifying” to require automatic modification of the angle of vibratory force.  That construction was critical because the parties agreed that the alleged prior art system did not allow for automatic modification of the angle of vibratory force.  The Court, therefore, granted Carrier summary judgment of validity with respect to the asserted piece of prior art.

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.

 

Conclusory Allegations in Patent Warrant Dismissal

Posted in Pleading Requirements

Addiction & Detoxification Institute, LLC v. Epperly, No. 11 C 5947, Slip Op. (N.D. Ill. May 23, 2012) (Dow, J.).

Judge Dow granted defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s patent infringement suit without prejudice to refile within twenty one days.  Plaintiff’s complaint was “woefully deficient” asserting only that defendants “practiced one or more inventions” claimed in the patents, that defendants benefitted from the infringement and that plaintiff was harmed.  These conclusory allegations did not meet the Twombly/Iqbal pleading standard.  Plaintiff was given twenty one days to replead with facts.  And defendant’s sanctions motion was denied with leave to refile if an amended complaint was filed and remained deficient.

Exceptional Case Finding Requires Additional Facts

Posted in Discovery, Local Rules, Summary Judgment, Trial

Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.).

Judge Dow held that plaintiff’s U.S. Patent No. 6,903,083 (the “’083 patent”) was invalid based upon a sale more than one year before the ‘083 patent’s filing date and denied defendants’ motion to find the case exceptional and award attorney’s fees, in this case related to vitamin D2.  As an initial matter, Judge Dow, although he would have been within his rights to do so, did not deem admitted facts that were not properly contested pursuant to Local Rule 56.1.  The Court did, however, explain that it would not consider improper denials.

The Court held that two sales by plaintiff more than one year before the filing date invalidated the ‘083 patent.  Plaintiffs argued that they were not in fact sales because while money changed hands, pursuant to a Supply Agreement, plaintiffs retained ownership of the goods.  But that argument “fail[ed] to get out of the gate.”  The Supply Agreement was for the manufacture of vitamin D2, for which hundreds of thousands of dollars were paid.

“[I]nference upon inference” favored finding the case exceptional and awarding defendants their attorney’s fees.  Plaintiffs lacked a plausible explanation for how they were unaware of the invalidating sales.  And instead of disclaiming the ‘083 patent and avoiding a large document production, plaintiffs continued asserting it.  But there remained a question of fact regarding what information plaintiffs’ executives had regarding the sales and when they had it.  The Court, therefore, allowed the parties to take further discovery on those issues before bringing the issue back to the Court. 

Bench Trial Finds Pharmaceutical Patent Valid and Enforceable

Posted in Trial

Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.).

Judge Dow issued his opinion, findings of fact and conclusions of law following a bench trial conducted during October and November 2010 on the issues of validity and enforceability of plaintiffs’ patent for Hectorol, an injectable drug for treating hyperparathyroidism secondary to end-stage renal disease.  The Court held the patent valid and enforceable.  Of particular note:

  • Per the parties’ stipulation, defendants infringed claim 7 of the patent.
  • Plaintiffs were entitled to a 1988 priority date.
  • The articles and evidence offered by defendants did not meet the burden of showing that plaintiffs’ invention was inoperable.
  • There was no showing that plaintiffs’ invention was obvious in 1988, although it was a “good candidate for further study.”
  • The references that plaintiffs allegedly failed to disclose to the Patent Office were irrelevant because they all published after the 1988 priority date.

 

 

Unrebutted Local Rule 56.1 Statement Leads to Summary Judgment

Posted in Damages

7-Eleven, Inc. v. Spear, No. 10 C 6697, Slip Op. (N.D. Ill. May 11, 2012) (Dow, J.).

 Judge Dow granted summary judgment to plaintiff 7-Eleven in this contract and Lanham Act case after defendants (collectively “Vianna”) failed to respond to 7-Eleven’s Local Rule 56.1 statements of fact or submit its own supplemental statements of fact.  The Court accepted all of 7-Eleven’s facts and found for 7-Eleven as to liability issues.  The Court, however, declined to grant summary judgment of injunctive relief or Lanham Act damages.

While 7-Eleven showed economic changes, neither party specifically addressed the permanent injunction factors.  So, additional briefing was required before a permanent injunction could be decided.

7-Eleven did not meet its burden of proof with respect to Lanham Act damages because it did not provide evidence of actual lost sales, profits or goodwill.  That would require detailed affidavits or evidence showing lost revenue, profits or goodwill.

Dismissal Without Prejudice Will Allow Both Parties to Reassert Unexhausted Claims

Posted in Federal Rules

ImageCube LLC v. MTS Sys. Corp., No. 04 C 7587, Slip Op. (N.D. Ill. Apr. 4, 2012) (Dow, J.).

 Judge Dow granted plaintiff ImageCube’s Fed. R. Civ. P. 41(a)(2) motion to dismiss all claims without prejudice in this nearly eight year-old patent litigation involving alloyed and non-alloyed powders.  The Court previously granted summary judgment of non-infringement regarding the alloyed powders and certified its decision for immediate appeal.  After the Federal Circuit affirmed the decision, the parties attempted to settle the case and came close, but were not quite able to resolve their disputes.  As a result of that, ImageCube sought dismissal of all claims without prejudice so that it could reassert its non-alloyed powder claims at a later date, presumably if defendant MTS’s sales became more significant.  MTS opposed dismissal without prejudice, instead asking that all claims be dismissed with prejudice except for MTS’s claim for attorney’s fees pursuant to 35 U.S.C. Section 285. 

 The Court noted that it was in a “less advantageous position” than the parties to predict the future of their claims.  As a result, the Court dismissed all of the claims without prejudice.  That way the parties would be free to assert their claims should conditions warrant it, but the Court also noted that issue and claim preclusion would likely bar relitigation of previously decided claims.

Copyright Infringement Claims Do Not Guarantee Preliminary Injunction

Posted in Pleading Requirements

Frerck v. John Wiley & Sons, Inc., No. 11 C 2727, Slip Op. (N.D. Ill. Feb. 2, 2012) (Dow, J.).

Judge Dow denied plaintiff’s motion for a preliminary injunction to prevent further alleged infringement of plaintiff’s photographs and denied defendant John Wiley & Sons’ motion to dismiss plaintiff’s fraud claim. There is not an automatic rule that ongoing copyright infringement warrants an injunction. Instead, plaintiff must meet its burden as to each factor.

Plaintiff showed a likelihood of success on the merits that: 1) he has copyrighted works; 2) John Wiley & Sons only had a limited right to use them; and 3) some were used without any license. But plaintiff could not show irreparable harm. Plaintiff was in the business of licensing photographs and any harm could be remedied with money damages. The Court did, however, note that plaintiff would be in a strong position to recover his attorneys’ fees should he succeed on the merits because of the ongoing nature of the alleged violation. But without irreparable harm, there could be no preliminary injunction.

Motion to Dismiss

Plaintiff’s fraud claim was premised upon request letters for plaintiff’s photographs and later uses of those photographs. The required intent to deceive was pled only on information and belief. Plaintiff’s contentions were “barely” sufficient, but were sufficient. It was not clear whether the alleged acts were just broken promises or intentional, fraudulent acts.

Court Excludes Use of Confidential Infraction in Later Cases

Posted in Local Rules

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

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

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

Facts Shoe-Horned into Local Rule 56.1 Responses are Disregarded

Posted in Summary Judgment

Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333, Slip Op. (N.D. Ill. Sep. 30, 2011) (Dow, J.).

Judge Dow granted defendants summary judgment of invalidity based upon several prior art references in this patent case involving color combinations for a printing system. As an initial matter, the Court excluded the following for failure to comply with Local Rule 56.1: 

  •  Legal conclusions or unsupported statements of fact;

  • Denials without proper factual support were deemed admitted;

  • Any additional facts in a brief, but not in a Rule 56.1 statement as supplemental statements; and

  • Facts shoe-horned into Rule 56.1 responses.

Of particular note:

  • The Court denied plaintiff’s motion to strike defendant’s supplemental expert declaration. While the reports included new opinions, plaintiffs were not prejudiced because the declarations were served during discovery and before the depositions of the experts.

  •  While the Court could have stopped its analysis after the first piece of art invalidated the remaining claims, the Court analyzed each piece of art for the sake of completeness.

Successful Trademark Plaintiff Awarded its Attorney’s Fees Pursuant to a Franchise Agreement

Posted in Trial

OFA Royalties LLC v. Apne, No. 10 C 4237, Slip Op. (N.D. Ill. Jun. 17, 2011) (Dow, J.).

Judge Dow awarded plaintiffs (collectively "Quizno’s") their attorney’s fees of approximately $28k in this franchise and trademark case involving Quizno’s restaurants. The Court held that the parties’ franchise agreement required that a defaulting party pay the attorney’s fees of the other party. Because Quizno’s won its preliminary injunction motion and later won a final judgment against defendants, the agreement required that defendants pay Quizno’s attorney’s fees. And the Court awarded Quizno’s its full fees request because defendants did not contest Quizno’s motion for fees or its specific fees.

Bill of Costs Support Need Only be Reasonable

Posted in Trial

Bobak Sausage Co. v. A & J Seven Bridges, Inc., No. 07 C 4718 Slip Op. (N.D. Ill. May 31, 2011) (Dow, J.).

After entering judgment for defendants, the Court granted defendants’ unopposed bill of costs in this trademark case. The opinion is fairly vanilla, but it answers one question I get frequently: How much do you have to break down costs to support your bill of costs? Creating too much detail from summary bills can quickly eclipse the value of the average bill of costs. The Court answered that question as follows, with useful case cites:

Under Section 1920(4), the prevailing party is "not required to submit a bill of costs containing a description so detailed as to make it impossible economically to recover photocopying costs." Northbrook Excess & Surplus Ins. Co. v. Proctor & Gamble, 924 F.2d 633, 643 (7th Cir. 1991). Instead, the prevailing party need only provide the best breakdown obtainable from the records. See id.

ANDA Case Stayed Pending Reexam

Posted in Local Rules

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

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

Court Denies Summary Judgment in Favor of Bench Trial

Posted in Summary Judgment

Bone Care, Int’l v. Pen Tech Pharm., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 30, 2011) (Dow, J.).

Judge Dow denied defendants’ (collectively "Pentech") motion for summary judgment of invalidity for lack of enablement and written description. The Court also denied plaintiff Bone Care International’s cross-motion for summary judgment that the patent-in-suit was enabled by its specification, in this patent case involving methods of treating hyperparathyroidism that is secondary to end-stage renal disease. The parties finished briefing their cross-motions weeks before a bench trial began, including the issues in the motion. And by the time of the opinion, the parties had filed extensive post-trial briefing — the Court allowed briefs up to 280 pages in length. As such and in light of its coming opinion ruling on all factual issues, the Court did not provide a detailed analysis of its reasoning. Instead, it focused on one of the most common hurdles to summary judgment, the battle of the experts. The parties’ experts set forth competing views of the facts and circumstances on the case. Because both parties relied upon those experts to make their cases, summary judgment was not proper.

The Court, however, did commit to resolve the issues as part of its written trial decision.

Trading Technologies: Final Judgment Amended to Include Monetary Damages

Posted in Trial

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Mar. 29, 2011) (Dow, J.).

Judge Dow amended the final judgment in this case to reflect the jury verdict and post-remittitur damages award of about $2.5M — go to the Blog’s archives for much more on this case and related cases. The Court also, after a de novo review, adopted Judge Schenkier’s report and recommendation on the motion. Plaintiff Trading Technologies ("TT") sought to amend the Court’s final judgment, entered by the late Judge Moran, pursuant to Fed. R. Civ. P. 59(e) or 60(a), to reflect the damages award, and sought its fees for bringing the instant motion. The Court held as follows:

  • While it may have been too late to amend the judgment pursuant to Rule 59(e), the Court had discretion to amend pursuant to Rule 60(a) to correct an "oversight or omission." The record established that TT and defendants (collectively "eSpeed") understood that there was a money judgment. For example, eSpeed moved the Court to waive the supersedes bond normally required to appeal a case with money damages.
  • The Federal Circuit and the parties understood the appeal to be on all issues, not just injunctive relief. As such, eSpeed cannot argue that it held back arguments on appeal, that it might otherwise have made if eSpeed had known the appeal went beyond injunctive issues.
  • Whatever TT’s reason for not seeking to correct the judgment with Judge Moran while the case was still pending before him, all parties understood that the judgment included the money damages.

Finally, the Court denied TT’s request for it fees incurred bringing the motion. First, both parties should have sought to correct the judgment when it was entered. Second, TT’s fee request was undermined by its unreasonable demand in the initial motion that eSpeed pay the money damages within five days.

Passive Website Written in Chinese Does Not Create Illinois Personal Jurisdiction

Posted in Jurisdiction

Labtest Int’l., Inc., d/b/a Intertek Consumer Goods N. Am. v. Centre Testing Int’l. Corp., No. 10C2897, Slip Op. (N.D. Ill. Feb. 1, 2011) (Dow, J.).

Judge Dow granted defendant CTI’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this copyright infringement action. The Court did not have jurisdiction over CTI:

  • CTI was a Chinese entity with no U.S. offices.
  • CTI’s only possible contact with Illinois regarding the copyrighted subject matter was via its passive website.
  • Plaintiff Intertek offered no proof that anyone from Illinois downloaded the allegedly infringing chart.
  • CTI’s only connection was work in China for an entity with a parent entity in Illinois.

The Court did not award Intertek its fees and costs for defending the case or the case filed by Intertek in Connecticut. Intertek had credible arguments for each, and it was not forum shopping even if the arguments were eventually proven wrong.

Parties Must Get Counsel or Face Default Judgment

Posted in Local Rules

Am. Taxi Dispatch, Inc. v. Am. GSS Limo, Inc., No. 10 C 5713, Slip Op. (N.D. Ill. Jan. 27, 2011) (Dow, J.).

Judge Dow gave defendants in this trademark infringement suit a deadline for obtaining counsel, or in the case of the individual defendants filing a notice of pro se representation. The Court reminded the defendants that corporate entities may not appear without counsel in federal courts. Finally, the Court warned defendants that they faced a potential default judgment if they did not act by the deadline.

N.D. Illinois Judicial Panel: Judge Dow

Posted in Legal News

The Federal Bar Association – an excellent group that is worth joining (disclosure: I am a member) – recently held a panel of Northern District judges discussing their chambers and tips for counsel. Here are my notes regarding Judge Dow’s comments:

  • Judge Dow allows counsel to appear by phone; sometimes even encourages it for remote counsel and less complex hearings and status conferences.
  • He started out writing all of his own opinions, but now writes some and has clerks draft some, with interaction as clerks have questions.
  • For voir dire, Judge Dow uses a brief questionnaire tailored to the case, followed by follow- up questions from the Court and the counsel.

Court Will Not Apportion Costs to Prevailing Party Based Upon How Much of the Case was Won

Posted in Trial

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Oct. 29, 2010) (Dow, J.).

Judge Dow denied defendants’ (collectively "eSpeed") motion to strike or stay consideration of plaintiff Trading Technologies’ ("TT") bill of costs, and awarded TT $381,831.04 in costs.* Because TT received a damages award at trial, TT was the prevailing party and costs were warranted, absent TT’s trial misconduct or eSpeed’s inability to pay. The fact that TT lost on the issue of eSpeed’s alleged willfulness did not change TT’s status as the prevailing party, nor did the fact that eSpeed was found not to infringe based upon several of its software packages. The Court had previously stayed a determination of the bill of costs pending the Federal Circuit appeal. So, with the appeal complete, there was no reason left to delay the Court’s decision.

The Court then turned to the bill of costs. The following determinations were of particular note:

The Court awarded all undisputed witness travel, attendance and subsistence costs, totaling approximately $21,000. The Court denied travel costs for a trial witness that was flown to trial from Switzerland, rather than from his home in Ohio. Witness fees are only allowed for the shortest possible route from the witness’s residence.

The Court awarded videography costs only for depositions of foreign witnesses that TT disclosed as potential trial witnesses.

Court reporter appearance fees were denied because they are only allowed to the extent the fee plus the per-page rate charged does not exceed the Judicial Conference’s limit. In this case, the per page rate was already more than the allowed per-page recovery.

Because hearing transcripts played a significant role in the case, the Court awarded TT the allowable hearing transcript fees.

The Court awarded 25% of TT’s photocopying request. The reduction accounted for various non-copying charges, such as OCR, blowbacks, etc. and multiple copies of some documents. Recovery is only allowed for a single copy of a document, in most cases.

No costs were awarded for translation because § 1920(6) does not authorize recovery of translation costs, except for "check interpreters" used at trial to dispute certain interpretations.

The Court refused to apportion TT’s costs based upon the portion of the case that eSpeed won (summary judgment of noninfringement) versus the jury award that TT won.

* Click here for much more on this case in the Blog’s archives.

Sales to Sixteen Illinois Dentists Creates Jurisdiction

Posted in Jurisdiction

Dental Arts Lab. V. Studio 360, The Dental Lab, LLC, No. 10 CV 4535, Slip Op. (N.D. Ill. Nov. 23, 2010) (Dow, J.).

Judge Dow denied defendant’s Fed. R. Civ. P. 12(b) motion to dismiss this Lanham Act dispute regarding plaintiff’s 360 Dental Laboratories mark. Defendant was a Nevada entity which had sold product to sixteen Illinois dentists, making up 1.2% of defendant’s gross revenue, and maintained a website that used the mark and offered defendant’s products for sale. Plaintiff only argued that the Court had specific, not general jurisdiction. While defendant’s contacts were minimal – sixteen customers and 1.2% of revenues – they involved the alleged tortious acts at issue. The sales, therefore, were sufficient minimum contacts to create specific jurisdiction. Although the Illinois sales were allegedly de minimus, each sale was allegedly a tortious act and the Court could have had jurisdiction based upon even one of the sales. Because defendant’s venue arguments mirrored its jurisdiction arguments, venue was also proper.

Expert Allowed to Amend Expert Report Via Deposition Errata Sheets

Posted in Experts

Bone Care Int’l, LLC v. Pentech Pharm., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Sep. 30, 2010) (Dow, J.).

Judge Dow decided the parties motions in limine in this patent infringement dispute. Of particular note, the Court made the following rulings:

  • The Court allowed defendants’ anticipation and written description invalidity defenses even though they were not properly disclosed or supported in defendants’ interrogatory responses or expert reports. The anticipation defense was so intertwined with the disclosed obviousness defense that there was no prejudice. And the parties argued the written description defense as part of a summary judgment motion. The Court, however, excluded other undisclosed invalidity defenses.
  • The Court allowed plaintiffs to present evidence regarding the priority date of one of its claims became there was a question of fact as to whether the claim had priority based upon an earlier, related application.
  • Plaintiffs were allowed to call defendants’ expert witnesses in plaintiffs’ case-in-chief so long as the testimony was not just cumulative. Plaintiffs could also call defendants’ experts. Even if defendants chose not to call them Defendants cannot turn an expert into a non-testifying expert pursuant to Fed. R. Civ. P. 26(b)(4)(B), once the expert issued a report and was listed on defendants’ witness list.
  • A parties’ witnesses should be called live whenever possible, unless the witness is unavailable.
  • Defendants’ expert was allowed to add references after the expert report deadline and after his deposition, by identifying the references in a deposition errata sheet and in corrected expert report pages. The references did not significantly change the experts analysis. And plaintiffs questioned the expert about the references during his deposition. So, plaintiffs were not prejudiced.
  • Defendants were also allowed to rely upon their experts’ rebuttal and supplemental reports became the arguments in the reports all properly responded to Plaintiffs’ reports.

Court Exercises Discretion to Avoid “Sandbagging” Rebuttal Cases

Posted in Trial

Bone Care Int’l, LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Sep. 30, 2010) (Dow, J.)

Judge Dow issued an Order resolving the parties’ dispute in the pre-trial joint status report regarding the order of proofs at trial, in light of defendants’ stipulation of infringement. The Court ordered that:

  1.  Defendant would present its burden of proof evidence regarding invalidity first, citing Howard T. Markey, On Simplifying Patent Trials, 116 F.R.D. 369 (1987). 
  2. Plaintiffs will then respond to defendants’ invalidity case and present evidence of any secondary considerations. 
  3. Defendants will then be allowed to respond to the secondary consideration proofs and rebut, as appropriate, plaintiffs’ validity proofs. 
  4. Plaintiffs will be allowed a rebuttal case regarding its secondary consideration. 

The Court noted, however, that it would use its broad discretion pursuant to Fed. R. Evid. 611(a) to prevent either party from sandbagging the other with its respective rebuttal case.