This is the second installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinion over the last four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are tips six through ten:
6. Redact personal information. Make sure that you are redacting personal information, social security numbers, phone numbers, etc., from any papers filed with the Court. Most litigants are good at this in their pleadings. But there is a significant drop off in attention to this rule in exhibits and other filed papers. There can be serious consequences to running afoul of this rule both to the litigator and to the individual whose information is publicly disclosed.
7. Attend hearings. Parties often do not attend hearings because they expect a motion to by granted (for example, an extension of time or motion to withdraw when other counsel has appeared in the case) or because they do not have a stake in the motion between their opponent and a co-defendant. This can be a critical mistake. First, most judges require all parties’ attendance at all hearing on a case. Second, you cannot guarantee that issues implicating yoru client will not be addressed at the hearing. And if they are addressed, you cannot necessarily count upon either your opponent or your co-defendant to protect your interests.
8. Pay attention to the court reporter. The hardest working person in the courtroom is almost always the court reporter; help them out. Offer a card or spell your name on the record. Speak clearly and at a modest speed. As much as you may feel the need to, do not speak over your opponent. If you are on a telephone conference, announce yourself when you speak. This both helps the reporter and makes the record much more clear.
9. Attend hearings by phone sparingly. In deference to the cost of bringing non-Chicago counsel to every hearing, many judges in the Northern District liberally permit attendance by telephone. This is an enormous convenience and cost-savings, but when not used carefully can have a negative impact on your case. It is impossible to interpret a judge’s visual cues on the phone, unless they describe them to you at which point it is far too late. If the hearing is of any import, either attend live or send local counsel fully prepared to address all issues, if live attendance is not possible.
10. Listen on phone hearings. Too many lawyers when given an opportunity to argue their point during a telephonic hearing, speak until they are done. That has the advantage of getting your point across, but you have no idea if the judge is trying to ask you a question or even stop you completely. And when you are speaking into a speakerphone, you cannot hear anyone else, most importantly the judge, that may be trying to stop you or ask you a question. In the best case, that leaves the judge exasperated, and in the worst case the judge may view you as disrespectful, unnecessarily argumentative and as not listening to the Court. None of these are good results, and it is easily avoidable if you teach yourself to pause periodically. The pauses give you the time for the Court to give you verbal cues that you could get visually or verbally in the courtroom.
For the next five Fridays, I will be running a series of twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation. The tips are not in a particular order, so I will not countdown backwards to tip number one. Why twenty-five? I found that beyond twenty five, the tips became focused upon minutia. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinion over the last four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are the first five:
- Draft complaints to meet both the Local Rules and the Judge’s requirements. There are pleading requirements in the Local Rules that are pretty standard, but do not make the mistake of failing to review them because they may not be the same as courts you are more familiar with. And do not stop at reading the Local Rules, check out requirements of specific judges before deciding, for example, how many unrelated parties to put into a single patent complaint. Click here for some examples of opinions to consider.
- Repeat plaintiffs’ allegations in your answers. Local Rules require that you repeat the complaint paragraphs in your answer. Most judges will not return your answer for failing to do so, but some will. And even if they do not, you render your answer far less useful a tool for the judge and her chambers.
- Deliver courtesy copies. The Local Rules require courtesy copies be delivered within one business day, and some judges’ standing orders require same day delivery. Opinions chastising counsel for failing to provide courtesy copies are surprisingly frequent. But even if your judge does not penalize you for failing to meet the courtesy copy requirements (and some will) if your motion or response is on a tight schedule you run the risk of not being fully heard. For example, if you are filing a response brief the day before a motion is to be heard and you bring your courtesy copies with you to the hearing you have only the slimmest chance that your brief is being read and digested before the hearing.
- Certificates of service are not required when all parties are on ECF. This may not be mission critical, but using an unnecessary certificate of service signals to your opponent that you are not well versed in the Local Rules or custom. That is not necessarily a fact that you want to give away.
- Signature blocks require both email and a fax number. Despite the 2008 revision to Federal Rule of Civil Procedure 11, many litigators still do not add email or fax numbers to signature blocks. I have not seen anyone sanctioned or warned for this omission yet, but you do not want to be the first.
Gene Quinn at IPWatchdog recently posted his notes from Chief Judge Holderman’s Ten Commandments for Trying Patent Cases presentation at a recent Thomas Jefferson School of Law symposium. I have had the opportunity to hear versions of the presentation a couple of times and learn something new every time. Here are Judge Holderman’s ten commandments. Thou shalt not try a patent case to a judge or to a jury without:
- A clear theory for victory
- Targeting your final argument
- Anticipating your opponent’s arguments
- Speaking understandable words
- Telling the story
- Using visuals
- Organizing the exhibits for the decision maker
- Presenting your theme early and often
- Being straight forward and focused
- Remembering you are “ON STAGE”
Some of the ten seem relatively obvious as you read them, but even the obvious ones are valuable reminders as you head into the stress of trial preparation. One that always jumps out at me is organizing exhibits for the decision maker. Far too many trial teams simply line up their exhibits in numeric order or the order they were shown at trial without thoughtfully organizing the exhibits so that they tell a story for the jury. If you have a chance to see Judge Holderman give a version of this talk, do not miss it.