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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Motion to Compel

Dropped Copyright Claim Alone Cannot be the Basis for Copyright Misuse

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John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, Slip Op., No. 12 C 1446 (N.D. Ill. Sep. 16, 2013) (Keys, Mag. J.).

Judge Keys granted in part defendant McDonnell Boehnen’s (“MBHB”) Fed. R. Civ. P. 37 motion to compel document production and interrogatory responses in this copyright infringement case involving the use of various copyrighted scientific articles.  The Court previously warned that discovery could not be used as a fishing expedition, but allowed certain discovery regarding MBHB’s alleged use of the copyrighted articles in their law practice.  MBHB asserts fair use, laches and estoppels as affirmative defenses. 

The Court ordered production of budgetary information from plaintiff’s relevant group because the annual reports plaintiff already produced lacked information regarding operating costs, allocation of shared costs, and revenue expense drivers.  Additionally, they were prepared by or with input from key witnesses.

The Court denied MBHB’s request to compel a response to an interrogatory seeking the basis for plaintiff’s statements in its complaint that plaintiff had reviewed public records and found “substantial evidence of unlicensed copying . . . .”  Plaintiff had already withdrawn the claim, and making the claim could not be a basis for copyright misuse.

Copyright Discovery Limited to Accused Works

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John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 24, 2013) (Keys, Mag. J.).

Judge Keys granted plaintiff’s motion to clarify the Court’s order that plaintiff produce documents related to two copyrighted, scientific articles that plaintiff alleges that defendants infringed by using them before the U.S. Patent & Trademark Office.  While the requests were written broadly to encompass not just the two works, but all of plaintiff’s copyrighted works.  But such a broad reading would be overly broad and unduly burdensome.  So, the requests were limited to the two articles at issue or, in limited cases, “closely related scientific articles which are much like” the asserted works.

 

 

Discovery Limited to Avoid a Fishing Expedition

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John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 7, 2013) (Keys, Mag. J.).

Judge Keys granted in part defendant MBHB’s motion to compel document production and request for admission responses in this copyright case involving alleged infringement based upon MBHB’s use of two scientific articles before the U.S. Patent & Trademark Office and more generally in its legal practice.  MBHB sought discovery to prove that the accused conduct would not impact plaintiff’s market (for MBHB’s fair use defense) and that plaintiff knew about similar conduct and delayed unreasonably in acting to remedy it.  Of particular interest, the Court held as follows:

  • Information regarding plaintiffs’ investigation into MBHB’s accused acts was protected by privilege and/or work product immunity.
  • Plaintiff was to identify the entities from which MBHB could have received a license to the asserted works, at least in part because plaintiff had previously agreed to produce them.
  • Plaintiff was required to respond to requests for admissions regarding whether or not plaintiff used particular search terms on the Patent Office’s PAIR database as part of its pre-filing investigation.  The information was held to be merely factual and, therefore, not privileged.

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

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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.

Law Firm Must Perform Limited Search for Use of Allegedly Infringed Scientific Papers

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John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. Feb. 12, 2013) (Keys, Mag. J.).

Judge Keys granted in part plaintiffs’ motion to compel discovery responses regarding use of its copyrighted articles. Plaintiffs accused defendant McDonnell Boehnen Hulbert & Berghoff (“MBHB”) of copyright infringement based upon alleged use of plaintiffs’ articles in MBHB’s legal practice before the U.S. Patent Office, as well as in litigation and client counseling. Plaintiffs demanded that MBHB search each of its employees’ files, email and hard drives for potential infringing use of the articles. The Court held that while some discovery was relevant to plaintiffs’ broad copyright infringement claims, plaintiffs’ demand went too far. Instead, the Court ordered that MBHB perform a search that it has suggested as a compromise position during the parties’ discussion of the discovery requests, specifically:

  • Search MBHB’s electronic document management system for copies of the articles;
  • Search the index of MBHB’s off-site document storage for references to the articles and manually search any files identified;
  • Ask each MBHB lawyer, law clerk or technical advisor if they remember using the articles; and
  • Search the paper and electronic files of two individuals previously identified as having used the articles in their practices.

 

Third Party Given a Second Chance to be Deposed

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Coach Services, Inc. v. Durbin’s Restaurant & Bar, No. 10 C 7154, Slip Op. (N.D. Ill. Jul. 25, 2012) (Kim, Mag. J.).

Judge Kim continued plaintiff’s motion to compel a third party deposition in order to give the third party an opportunity to comply.  The Court gave the third party two options:

1.         Appear for a hearing to explain her reasons for not appearing for the deposition; or 

2.         Contact plaintiff’s counsel to schedule and then sit for the deposition.

The Court encouraged the third party to schedule and sit for the deposition because even if the third party had a valid reason for missing her deposition and the Court accepted it, the Court would still order that she sit for a deposition at a later date.  So, either choice would end in a deposition. 

 

Court Distinguishes Non-Privileged Facts About Counsel

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DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 C 1531, Slip Op. (N.D. Ill. Jan. 12, 2011) (Nolan, Mag. J.)

Judge Nolan granted in part defendant 3D System’s motion to compel further Fed. R. Civ. P. 30(b)(6) testimony from plaintiff DSM Desotech ("DSM") in this patent dispute regarding 3D Systems Zephyr recoater. First, the Court held that the rules, responsibilities and dates of prosecution counsel’s involvement was neither privileged, nor work product. Similarly, whether prosecution counsel was aware of the Zephyr recoater during prosecution was not privileged.

The Court held that a Local Rule 83.51.10 screen of DSM’s former counsel, which had moved to a firm representing 3D Systems, did not prevent DSM from contacting its counsel to determine what they knew about the Zephyr recoater at the relevant time. Local Rule 83.51.10 does literally require that plaintiff have no contact "for or against" 3D Systems. But that reading is inconsistent with the purposes of the Rule.

Desotech was not required to gather information from a company it acquired, for the period before the acquisition. Pre-acquisition knowledge would not be imputed to the acquiring entity, DSM in this case.  The Court also held that the fact that 3D Systems could or had gathered the requested information from other witnesses or documents did not relieve DSM of its duty to provide Rule 30(b)(6) testimony.

Finally, the Court denied both parties’ requests for sanctions because there was room for reasonable disagreement between the parties.

Court Compels Discovery and Withholds Judgment on Sanctions

Posted in Legal News

Square D Co. v. Elec. Soln’s, Inc., No. 07 C 6294, Slip Op. (N.D. Ill., Jul. 22, 2008) (Moran, Sen. J.).

 

Judge Moran granted plaintiffs’ motion to reopen discovery and compel production of certain documents, but tabled plaintiff’s motion for sanctions. Plaintiffs alleged that defendants were selling counterfeit electrical products using plaintiffs’ trademarks. The parties entered an agreed preliminary injunction pursuant to which defendant agreed not to sell any products with plaintiffs’ trademarks, and to plaintiffs’ inspection of defendants’ inventory on or before February 29, 2008, unless the parties agreed to a later date.

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Incomplete Discovery Not Sanctionable Because it Complied With Requestors’ Expert Request

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Autotech Techs. Ltd. Partnership v. Automationdirect.com, Inc., No. 05 C 5488 2008 WL 783301 (N.D. Ill. Mar. 25, 2008) (Cole, Mag. J.).*

Judge Cole granted in part defendant Automationdirect.com’s ("ADC") motion to compel additional records from plaintiff Autotech’s database. The parties agreed that an ADC expert would be allowed to develop queries which Autotech would run on its database. After a dispute regarding how to produce the results of the search, the Court ordered production of the documents, which related to records of, among other things, customer confusion. Upon review of the records, ADC demanded that Autotech supplement them with information such as the date of the communication and the identity of the Autotech employees involved. Autotech eventually supplemented the documents with an index identifying, among other things, the identity of the Autotech employee involved in each communication, but not the dates of the communications. ADC moved to compel the production of all fields in Autotech’s database for each entry identified by ADC’s query. But Autotech countered that it had produced all fields generated by ADC’s expert’s query. Had the query generated all available fields, they, presumably, would have been produced them all. Because Autotech produced the information generated by ADC’s search and supplemented that production with an index, sanctions were not warranted. But the Court did order production, at ADC’s expense, of the dates of each communication. The Court also ordered the parties to meet and confer to determine how to produce the dates in a useful format.

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

Incomplete Discovery No Sanctionable Because it Complied With Requestors’ Expert Request

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Autotech Techs. Ltd. Partnership v. Automationdirect.com, Inc., No. 05 C 5488, 2008 WL 783303 (N.D. Ill. Mar. 25, 2008) (Cole, Mag. J.).*

Judge Cole granted in part plaintiff Autotech’s motion to compel communications between defendant Automationdirect.com, Inc. ("ADC") and any third party regarding ADC’s competing C-More touch screen panel. The Court held that ADC need not produce documents related to source code for the C-More product. The Court previously denied Autotech’s motion to amend its complaint adding claims related to that source code. But the Court held that ADC’s third party communications could be relevant to show whether ADC has complied with its contractual obligation to use its best efforts to sell Autotech’s product, or if its C-More sales efforts interfered with sales of Autotech’s products. The Court also held that any communication evidencing customer confusion must be produced.

Practice Tip: Do not employ new arguments in reply briefs. The Court did not consider Autotech’s reply brief because it changed the scope of its argument on reply. Autotech’s opening brief sought ADC’s third party communications with the exception of those regarding ADC’s source code because claims regarding ADC’s software were not in the case. But on reply, Autotech also sought the source code related communications.

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

Opinion Letter Discovery and Footnote Citation

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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.

Court Waxes Eloquent on Discovery

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Flentye v. Kathrein, No. 06 C 3492, Slip Op. (N.D. Ill. Oct 2, 2007) (Cole, Mag. J.).*

Judge Cole continued defendants’ motion to compel for one week because defendants had not conducted a Local Rule 37.2 conference before filing their motion. But the Court also provided its thoughts on the prosecution of discovery, both in this specific case and generally. The Court noted that after one year of discovery, “not a single document was produced in response to the 70 paragraph document request!”

But what is most interesting about the opinion is the Court’s quotes on various discovery issues. On discovery generally: 

“[D]iscovery is the bane of modern federal litigation.” Rossetto v. Pabst Brewing Co., Inc., 217 F.3d 539, 542 (7th Cir. 2000). It is intrusive, unpleasant, time-consuming and costly. It is, like life itself, “nasty [and] brutish …” Hobbes, Leviathan, Chapt XIII. Unfortunately, it is not generally “short.”

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Court Relies on Parties as Officers of the Court for Discovery Disputes

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Trading Techs. Int’l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).*

Judge Moran denied defendant eSpeed’s motion to compel production of damages documents from plaintiff Trading Technologies (“TT”). eSpeed sought, among other things, monthly licensing reports, monthly product profitability reports and documents for determining TT’s costs and sales budgets. TT argued that it had already produced the requested information, to the extent that it was kept in the form requested. And to the extent that the information was not kept in the requested form, TT stated that it had provided documents sufficient to determine the requested information. Noting that counsel are officers of the Court, the Court relied upon TT’s representations and denied eSpeed’s motion because TT stated that the documents had been produced.

Trial is set to start in this case the week of September 10. Between now and then expect to see several more opinions in this case and its related cases (there are two weighty summary judgment opinions still in my queue, as well as several other smaller opinions and orders). Additionally, I have some other obligations that week, but am planning to blog some of the trial. Stay tuned.

*You can download this opinion here and you can read much more about this case and related cases in the Blog’s archives.

Court Has Enough of Long Fact Discovery Process

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Trading Techs. Int’l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 17, 2007) (Moran, Sen. J.).*

Judge Moran denied plaintiff Trading Technologies’ (“TT”) motion to compel an additional Fed. R. Civ. P. 30(b)(6) witness. TT noticed a 30(b)(6) deposition of defendant eSpeed, Inc. (“eSpeed”) identifying twenty four topics, including someone with knowledge of the names of customers or potential customers of eSpeed’s accused products. eSpeed provided a witness on the topic, but he was only able to identify eSpeed’s customers and potential customers, he had no knowledge regarding any demonstrations to those customers or use of the accused products by those customers. TT, therefore, served a second notice, after the close of fact discovery, seeking a witness to testify regarding any demonstrations to or use by eSpeed customers. eSpeed refused to produce a witness in response to the second notice. The Court denied TT’s motion to compel because the original deposition sought only the identity of the customers, so the witness did not need to have any knowledge regarding demonstrations to or use by those customers. 

What is most interesting about this opinion, however, is the Court’s statements regarding the fact discovery history of the case. The Court shows some frustration with what appears to have been a very protracted and contentious discovery process:

Both parties in this case have been pushing discovery up to and through the close of discovery, which has been extended time and time again . . . . Enough is enough.

Trial is set to start in this case the week of September 10. Between now and then expect to see several more opinions in this case and its related cases. Additionally, I have some other obligations that week, but am planning to blog some of the trial. Stay tuned.

*You can download this opinion here and you can read much more about this case and related cases in the Blog’s archives.

Discovery Granted Regarding Drafts of Third Party Declaration

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Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc., No. 05 C 4088, 2007 WL 1597928 (N.D. Ill. May 16, 2007) (Moran, Sen. J.).

Judge Moran granted declaratory judgment defendant Trading Technologies’ ("TT") motion to compel documents and things identified by third party declarant Walter Buist during his deposition, despite declaratory judgment plaintiff Rosenthal Collins Group’s ("RCG") assurances that the documents and things had already been produced.  RCG previously filed a motion for summary judgment of invalidity of TT’s patents based upon a declaration by Buist regarding software that he developed, at least partially, more than a year before TT filed its patent applications.  In a previous opinion, the Court held that RCG’s motion was "somewhat misleading" and possibly "disingenuous," but refused to dismiss the case (you can read the Blog’s discussion of that opinion here, as well as more on this case generally in the Blog’s archives). 

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Inhouse Counsel’s Access to Third Party Documents Limited

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Rembrandt Techs., LP v. Comcast Corp., No. 07 C 1010, 2007 WL 1598003 (N.D. Ill. Apr. 25, 2007) (Moran, J.).

Judge Moran granted defendants’ motion to compel documents from third party Zenith Electronics Corp. ("Zenith"), but restricted access to the documents by plaintiff, Rembrandt Technologies’ ("Rembrandt") inhouse counsel.  In the underlying action, E.D. Texas Case No. 05 C 443,  Rembrandt alleged that defendants infringed its patents.  Zenith was identified as a leading licensor of Rembrandt’s technology.  So, defendants subpoenaed Zenith to determine what Zenith paid for its license.  Zenith essentially agreed to produce the documents pursuant to the subpoena, but wanted to restrict access to the documents so that no party’s inhouse counsel received access.  Defendants agreed to the restriction, but Rembrandt argued that its chief patent counsel, John Meli, was a chief decisionmaker in the case and, therefore, required access to the documents.  The Court acknowledged that Meli was a decisionmaker in the case and noted that the Texas court’s protective order allowed Meli access to highly confidential documents.  Therefore, the Court granted Meli access to any license agreements produced by Zenith pursuant to the subpoena.  But the Court denied Meli access to any other documents produced by Zenith.

Third Parties’ Communications With Other Third Parties Are Not Relevant

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Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies’ ("TT") motion to compel additional production from third party Chicago Mercantile Exchange ("CME").  TT served CME with a subpoena seeking, among other things, anything referring or relating to potential prior art to the patents at issue and communications between CME and any other entity regarding the patents at issue, including any joint defense agreement between CME and such parties.  After TT filed the motion to compel, CME produced thousands of pages, including what it stated were all documents in its possession regarding possible prior art.  Because all prior art documents had been produced, the Court denied TT’s motion to compel additional prior art-related documents.

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Court Reminds Parties of Their Discovery Obligations

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Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 05 C 4120, (N.D. Ill. May 16, 2007) (Moran, Sen. J.).

Judge Moran granted in part and denied in part plaintiff Trading Technologies’ ("TT") motion to compel additional production from defendants GL Consultants, Inc. and GL Trade SA (collectively "GL").  The Court required GL to update certain interrogatory responses and to produce documents based upon an earlier priority date that GL had argued for, as opposed to stopping at the later priorit date alleged by TT.  The Court also required GL to provide TT access to original source code and certain electronic archives, without regard to whether TT had provided GL similar access.  Finally, the Court denied TT’s request to lower the confidentiality designation of the source code for GL’s "GL Tradepad" software.  But what is most interesting about the Court’s opinion is its reminder to the parties about how the Court expects them to conduct discovery:

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Joint Defense Agreement May Protect Third Party Communications

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Trading Techs. Int’l., Inc. v. eSpeed, Inc., No 04 C 5312, 05 C 1079, 05 C 4088, 05 C 4120, 05 C 4811 & 05 C 5164, 2007 WL 1302765 (N.D. Ill. May 1, 2007) (Moran, Sen. J.).

Judge Moran granted in part and denied in part plaintiff Trading Technologies’ ("TT") motion to compel production of defendants’ communications between themselves (more on this case in the Blog’s archives).  Defendants asserted claims of attorney-client and work product privileges regarding various communications and information exchanged as part of a joint defense agreement among, at least, the various defendants and DJ-plaintiff (collectively "defendants") in the patent suits regarding TT’s patents.  The Court explained that the joint defense privilege protects communications and exchange of information between parties that have expressly decided to cooperate in a litigation – with or without a written agreement.  The Court held that defendants had expressed a sufficient intent to cooperate in their respective litigations against TT and, therefore, held that defendants need not produce communications made in relation to their joint defense.  The Court required that defendants produce any written joint defense agreement or, in the absence of a written agreement, the identities of all members of the joint defense.  The Court further held that third parties need not be identified to the extent that their identities are protected as work product, but that third parties should be identified if defendants’ communications with them are allegedly protected by attorney-client privilege.  The Court also required that defendants produce all prior art in their possession, regardless of how it was located.  And finally, the Court noted that "it must rely on the integrity of counsel to determine what is and is not privileged."  As a result, the Court required that defendants produce "any communications not protected by a legitimate privilege . . . ."

You can download the opinion here.

Defendants’ Patent Licenses In Different Technology But Same Field Are Discoverable

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Trading Techs. Int’l., Inc. v. eSpeed, Inc., No 04 C 5312, 2007 WL 704525 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran granted plaintiff Trading Technologies’ ("TT") motion to compel production of documents and answers to interrogatories regarding defendant eSpeed’s patent licenses (more on this case in the Blog’s archives).  The Court held that the licenses could be relevant to three of the Georgia Pacific factors:  1) Rates paid by the licensee for patents similar to the patents in suit; 2) customary royalty rates in the industry; and 3) the royalty that would have been agreed upon in an arms length negotiation.  The Court acknowledged that the eSpeed licenses were not for the same technology as the patents in suit, but held that the fact that the patents were all for technology within the futures trading industry was sufficient to make them potentially relevant.  And the Court noted that if the eSpeed patents are ultimately not comparable to the patents in suit, the licenses covering the eSpeed patents will not be given weight in the final determination.