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Tag Archives: Practice Tips

Northern District of Illinois Practice Tips Nos. 21-25

Posted in Local Rules

This is the fifth installment of my updated 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 opinions over the last six 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 numbers twenty through twenty five:

  1. Calculate extensions in 7 day increments.  The Federal Rules, and the Local Rules, now calculate deadlines in seven day increments. Based upon that, many Chicago judges expect parties to seek extensions in those same increments.
  2. Respect Chambers.  Chambers staff are pretty universally helpful, but be respectful of them and avoid annoying them. Before calling chambers, read the Local Rules and the judge’s website to make sure your question is not answered there. And call chambers with opposing counsel, unless you have advance permission from the Court or opposing counsel.
  3. Learn how to seal or redact filings early.  The Seventh Circuit frowns upon sealing court filings unless absolutely necessary. As a result, Northern District judges are particular about filing under seal, as is the Clerk’s office. Some protective orders give you a blanket right to file under seal, but others require specific permission. That permission would ideally be sought in advance of filing, but at least concurrent with the filing. Either way, it is critical to know before the evening of a major filing deadline, when the Clerk’s office may be closed, and you may not have much time to begin with. Additionally, the Seventh Circuit requires that briefs be filed in a redacted form instead of under seal. So, many Northern District judges have the same requirement. Either ask the judge’s chambers or counsel who has experience before the particular judge.
  4. Lean on the ECF hotline.  I am routinely surprised by how many people never think to call the Clerk’s ECF number for assistance. The Clerk’s staff is uniformly knowledgeable and eager to help. In particular, call them immediately if you made an ECF-based error while filing. The Clerk’s office can almost always fix it, and it is usually easier for everyone if you have not added to the problem by “fixing” it yourself. One note of caution though, as with calling chambers, give the Clerk’s office the courtesy of reviewing the ECF webpage first to make sure they have not already answered your question there.
  5. Understand the Court’s pretrial order requirements.  More than one Northern District judge will throw out inadequate pre-trial orders. One common flaw to watch for is insufficient statements of fact or conclusions of law. The local, form pre-trial order requires the parties to identify every fact they must prove at trial and every necessary conclusion of law, even for jury trials. This custom differs from some other districts (and not every Northern District judge requires it). Likely because of that and the general pre-trial time crunch, many parties fail to prepare sufficient statements. That can have serious consequences, so start on these early.

Northern District of Illinois Practice Tips Nos. 16-20

Posted in Local Rules

This is the fourth installment of my updated 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 opinions over the last six 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 sixteen through twenty:

  1. Meet and Confer.  Wherever you practice you are likely aware of some version of a Local Rule 37.1 requirement to meet and confer regarding at least discovery motions. Generally, you do not need to meet and confer for dispositive motions, but you must for discovery motions as well as motions for extensions. Most judges will not hear a motion without a meet and confer, and some will deny the motion with prejudice for failing to meet and confer. If you are not sure whether your motion requires a meet and confer, err on the side of having one.
  2. Tell the Court about your meet and confer.  Do not forget to tell the Court you met and conferred in your motion, and describe the outcome. If you do not, you risk denial of your motion, and always identify agreed or stipulated motions in the title and the docket entry.
  3. Use the Online Transcript System.  Take advantage of the Northern District’s first-in-the-nation online transcript ordering system. Prior to this system, getting transcripts was difficult, but now getting a hearing transcript is as easy as buying a book on Amazon.com. It is a great advantage for litigators preparing motions that relate to prior hearings.
  4. Calculate your hearing date. Each judge has a different minimum notice period for motions. Many judges allow notice three business days after filing, but a few only require two and others require four. On a similar note, check the judge’s website for allowable motion call days and times, and any days when the judge will not be hearing motions.
  5. Deliver prompt, correct courtesy copies. The Local Rules require delivery of courtesy copies of to the Court within one day of filing. But some judges require same day courtesy copies if at all possible. For those judges, if you cannot deliver same day you should at least deliver early the next morning. Also, make sure you format the copies correctly. For example, most judges require exhibits to be separated by tabs, and some judges require that papers be bound on the left-hand side. And for many judges, you must include copies of any unreported cases cited in your papers.

Northern District of Illinois Practice Tips 1-5

Posted in Local Rules

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.  These are an edited and updated version of the twenty five tips I posted two years and that have become some of the most read posts on the Blog.

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 six 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:

  1. 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.
  2. 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.
  3. Deliver courtesy copies. The Local Rules require courtesy copies be delivered within one business day, and some judges’ standing orders require same day delivery, in a few cases counsel may be fined for not providing same day courtesy copies. 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.
  4. 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.
  5. Signature blocks require both email and a fax number. 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.

Northern District of Illinois Practice Tips Nos. 21-25

Posted in Legal News

This is the fifth installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation (here are the earlier tips:  1-5; 6-10; 11-15; and 16-20). 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 opinions 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 numbers twenty through twenty five:

  1. Calculate extensions in 7 day increments.  The Federal Rules, and the Local Rules, now calculate deadlines in seven day increments. Based upon that, many Chicago judges expect parties to seek extensions in those same increments.
  2. Respect Chambers.  Chambers staff are pretty universally helpful, but be respectful of them and avoid annoying them. Before calling chambers, read the Local Rules and the judge’s website to make sure your question is not answered there. And call chambers with opposing counsel, unless you have advance permission from the Court or opposing counsel.
  3. Learn how to seal or redact filings early.  The Seventh Circuit frowns upon sealing court filings unless absolutely necessary. As a result, Northern District judges are particular about filing under seal, as is the Clerk’s office. Some protective orders give you a blanket right to file under seal, but others require specific permission. That permission would ideally be sought in advance of filing, but at least concurrent with the filing. Either way, it is critical to know before the evening of a major filing deadline, when the Clerk’s office may be closed, and you may not have much time to begin with. Additionally, the Seventh Circuit requires that briefs be filed in a redacted form instead of under seal. So, many Northern District judges have the same requirement. Either ask the judge’s chambers or counsel who has experience before the particular judge.
  4. Lean on the ECF hotline.  I am routinely surprised by how many people never think to call the Clerk’s ECF number for assistance. The Clerk’s staff is uniformly knowledgeable and eager to help. In particular, call them immediately if you made an ECF-based error while filing. The Clerk’s office can almost always fix it, and it is usually easier for everyone if you have not added to the problem by "fixing" it yourself. One note of caution though, as with calling chambers, give the Clerk’s office the courtesy of reviewing the ECF webpage first to make sure they have not already answered your question there.
  5. Understand the Court’s pretrial order requirements.  More than one Northern District judge will throw out inadequate pre-trial orders. One common flaw to watch for is insufficient statements of fact or conclusions of law. The local, form pre-trial order requires the parties to identify every fact they must prove at trial and every necessary conclusion of law, even for jury trials. This custom differs from some other districts (and not every Northern District judge requires it). Likely because of that and the general pre-trial time crunch, many parties fail to prepare sufficient statements. That can have serious consequences, so start on these early.

Northern District of Illinois Practice Tips Nos. 16-20

Posted in Legal News

This is the fourth installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation (here are the earlier tips:  1-5; 6-10; and 11-15). 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 opinions 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 sixteen through twenty:

  1. Meet and Confer.  Wherever you practice you are likely aware of some version of a Local Rule 37.1 requirement to meet and confer regarding at least discovery motions. Generally, you do not need to meet and confer for dispositive motions, but you must for discovery motions as well as motions for extensions. Most judges will not hear a motion without a meet and confer, and some will deny the motion with prejudice for failing to meet and confer. If you are not sure whether your motion requires a meet and confer, err on the side of having one.
  2. Tell the Court about your meet and confer.  Do not forget to tell the Court you met and conferred in your motion, and describe the outcome. If you do not, you risk denial of your motion, and always identify agreed or stipulated motions in the title and the docket entry.
  3. Use the Online Transcript System.  Take advantage of the Northern District’s first-in-the-nation online transcript ordering system. Prior to this system, getting transcripts was difficult, but now getting a hearing transcript is as easy as buying a book on Amazon.com. It is a great advantage for litigators preparing motions that relate to prior hearings.
  4. Calculate your hearing date. Each judge has a different minimum notice period for motions. Many judges allow notice three business days after filing, but a few only require two and others require four. On a similar note, check the judge’s website for allowable motion call days and times, and any days when the judge will not be hearing motions.
  5. Deliver prompt, correct courtesy copies. The Local Rules require delivery of courtesy copies of to the Court within one day of filing. But some judges require same day courtesy copies if at all possible. For those judges, if you cannot deliver same day you should at least deliver early the next morning. Also, make sure you format the copies correctly. For example, most judges require exhibits to be separated by tabs, and some judges require that papers be bound on the left-hand side. And for many judges, you must include copies of any unreported cases cited in your papers.

Northern District of Illinois Practice Tips Nos. 11-15

Posted in Legal News

This is the third 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 opinions 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 eleven through fifteen:

11.  Respect Twombly / Iqbal pleading standards.  The Northern District is no different than the rest of the country’s district courts — patent infringement requirements have not changed from the form in the Federal Rules. But that is not necessarily the case for Lanham Act, copyright or trade secret claims. There are numerous decisions dismissing, often with leave to amend, these more fact-specific intellectual property claims. And even in the patent context plaintiffs benefit from pleading with more particularlity. The more detail a defendant has the more information they should disclose about their accused products or systems as part of their Local Patent Rule 2.1(b) initial disclosure document production requirements. That means that the plaintiff will have more material with which to prepare its Local Patent Rule 2.2 intial infringement contentions. Finally, regardless of the type of claim, many and perhaps most judges rely upon Twombly / Iqbal to require more than a bare recitation of the elements of affirmative defenses. So, it is especially important to add some facts to your affirmative defenses.

12.  Prepare Local Rule 56.1 statements with care.  This is probably the most frequent Local Rule hang up in Northern District of Illinois opinions. It is critical that movants meet the Local Rule 56.1 requirements, among others, a numbered statement of undisputed material facts supported by admissible evidence. If the facts are not supported or if they are legal conclusions, judges routinely strike or disregard them.

13.  Respond to Local Rule 56.1 statements with evidence.  Far too often, parties respond to Local Rule 56.1 statements without evidence. Those responses are almost always deemed admissions. Without admissibile evidence to counter statements of fact they are almost always admitted.

14.  Watch your judge’s webpage.  Each judge maintains the equivalents of standing orders on their webpage, often in multiple places and links across the page. It is critical that you read them at the beginning of your case and that you recheck them regularly. At a minimum, check them before you file anything with the Court. I find that the website instructions change with much greater frequency than the old, paper standing orders did. And while judges try to make it easy to see what they change, if you are not looking you will miss it.

15.  Always file notices of motion.  In some districts, notices of motions are not required or even discouraged. In the Northern District of Illinois, they are required of every motion. If you fail to file one, you will likely hear from the Clerk’s office. Also, make sure to file the notice after the motion, not before. If you file the notice before the motion, you will generally have to refile it.

Northern District of Illinois Practice Tips Nos. 6-10

Posted in Legal News

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.

Northern District of Illinois Practice Tips Nos. 1-5

Posted in Legal News

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:

  1. 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.
  2. 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.
  3. 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.
  4. 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.
  5. 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.

Ten Commandments for Trying Patent Cases

Posted in Legal News

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:

  1. A clear theory for victory
  2. Targeting your final argument
  3. Anticipating your opponent’s arguments
  4. Speaking understandable words
  5. Telling the story
  6. Using visuals
  7. Organizing the exhibits for the decision maker
  8. Presenting your theme early and often
  9. Being straight forward and focused
  10. 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.

Solo Practice University: Improving Federal District Court Litigation Practice

Posted in Legal News

I am proud to announce that I am joining the exceptional faculty of the newly formed Solo Practice University, teaching a course focused on learing how to successfully litigate in federal district courts.  I am honored to be a part of SPU’s impressive faculty.  And I look forward to working with the SPU student body to improve the practice of law in the federal district courts. 

I joined SPU and agreed to fit one more thing into an already busy schedule for two reasons.  First, I enjoy teaching and I believe that SPU’s vision of a collaborative environment where students can learn and interact in the digital world and at their own pace is an excellent model.  Second, I have been interested in creating a district court practice course for several years and SPU became a catalyst for the idea.  Eventually, I expect I will use the bones of the course created for SPU either to a law school, perhaps Loyola where I have enjoyed teaching several courses, or to write a text on district court practice.  The course will teach the fundamentals of district court litigation, and I will weave in lessons I have learned over the course of a career both as a district court law clerk and as a practicing lawyer.  I hope that it will both help students avoid the learning curve most of us face as we start litigating and help to increase the quality and skill of district court advocacy. 

Infringement Found Because Defendant Did Not Affirmatively Plead Noninfringement

Posted in Pleading Requirements

Para Gear Equip. v. Square One Parachute, Inc., No. 04 C 601, Min. Order (N.D. Ill. Sep. 2, 2008) (Brown, Mag. J.)

Judge Brown granted defendants–counterplaintiffs Square One Parachute’s (“SOP”) motion for summary judgment that plaintiff–counterdefendant Para Gear (“Para”) infringed SOP’s design patent based solely upon Para’s failure to plead noninfringement as an affirmative defense. Originally, Para filed this case seeking a declaratory judgment of noninfringement and SOP counterclaimed for infringement. But Para later voluntarily dismissed its claim with prejudice.

When Para answered SOP’s counterclaim, it did not plead noninfringement as an affirmative defense. The Court held that Para’s declaratory judgment noninfringement claim was a sufficient affirmative statement of Para’s defense. But once Para dismissed its claim, Para’s pleadings did not support a noninfringement defense. It was not enough that Para’s answer denied infringement, an affirmative statement of the defense was required. And while Para had not sought to amend its papers to support its defense, the Court would not have granted leave to amend four years into the case.

Practice Tip: Always ask, at least in the alternative, for leave to amend when accused of pleading deficiencies. Even though it would not have worked here, it rarely hurts to ask.

Making Joint Defense Agreements Work

Posted in Legal News

Joint defense agreements are an increasingly common part of big patent litigaitons, in the Northern District and across the country.  Having been involved in numerous joint defense groups, my colleague Thomas Pasternak and I wrote an article that was published in the most recent edition of the ABA’s Litigation magazine about best practices for joint defense groups and dealing with joint defense agreements — click here to for a pdf of the article, with permission from the ABA of course.

Probably the most important tip is one I have discussed before — communication, including live meeetings, is critical to building and maintaining relationships among the joint defense group:

The number of members of the [joint defense group] will have some bearing on how it is organized and managed, but regardless, communication is the key. Weekly, short conference calls once the case is running hot are important, however painful that is, to keep everyone looped in. For important strategy decisions, live meetings are going to be necessary. At the same time, try to put as few communications between co-defendants in writing as possible. Discovery of those communications can and does happen, despite all best legal efforts to prevent it, and you will be particularly embarrassed if you disparage opposing counsel or the judge in venting in an e-mail to your codefendant and that e-mail ends up being produced.

Click here for my previous discussion of the importance of live meetings for building relationships during litigations and click here for Victoria Pynchon’s IP ADR blog post that sparked my comments.

The Power & Danger of Researching Social Networking Sites for Voir Dire

Posted in Legal News

I have written about the legal issues surrounding social networking sites (click here and here to read those posts).  I even did an ALI-ABA teleseminar with Eric Goldman yesterday discussing, among other things, how the Communications Decency Act protects social networking sites against suit based on third party content published on the sites.  But Julie Kay’s National Law Journal article yesterday — click here to read it — provided a new angle on the power of social networking sites in the courtroom. 

It is no surprise that lawyers, either alone or assisted by jury consultants, research juror backgrounds, and use their research during voir dire and to inform their trial presentations, in particular opening and closing arguments.  Of course, internet research has been a cornerstone of those efforts for years.  But social networking sites have vastly increased the amount of information available about the average person.  Instead of learning someone’s Turkey Trot 5k time and one or two newspaper quotes, you now may be able to see their entire resume on LinkedIn, read about major life events on FaceBook, or even read their personal, daily thoughts on a blog.  Kay reports that the information is a valuable fact checking tool, acting as a backstop to information provided in a jury questionnaire.

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A Call for Face-to-Face Communication in Litigation

Posted in Legal News

Victoria Pynchon posted an article she wrote (not sure where it was published) at her IP ADR Blogclick here for the post and the article.  Pynchon argued that the common practice of communicating with opposing counsel largely by email, except during depositions or hearings, tends to increase animosity and conflict of a litigation.  In the asocial world of email we tend to write more aggressively and we tend to read more aggression into emails we receive.  Pynchon supports these theories with studies, but I suspect most litigators are aware of the email aggression problem from practice. 

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Commercially Available Products are Discoverable

Posted in Discovery

Boler Co. v. ArvinMeritor, Inc., No. 03 C 489, Slip Op. (N.D. Ill. Jul. 2, 2008) (Cole, Mag. J.).

Judge Cole decided various discovery and protective order issues in this patent infringement dispute.  Of particular note, the Court denied defendant’s motion to preclude inspection of items that were commercially available.  The Court held that commercially available items were discoverable and that because the items were commercially available there were no protective order implications.

The Court also refused to consider certain oral motions, likely those that the parties could have filed before the hearing, because the Court’s standing order required that motions be briefed.  Always make sure to read the Court’s standing order, as well as the Local Rules.

Argument Advice from the Seventh Circuit’s Judge Posner

Posted in Legal News

The Seventh Circuit’s Judge Posner wrote a Tips from the Trenches column for the ABA in May.  The article was well written and insightful, no surprise from Judge Posner.  He summed up his advice like this:

be brief, be clear, be simple, be vivid, be commonsensical, avoid legalisms, and do not be afraid to spoon-feed us—we will not bite your hand.

He also provided more detailed advice.  Here are my favorites:

  • Use visual aids.  But he suggests pictures or objects instead of charts or graphs.  People (and judges are people, although litigators sometimes forget they are) connect with and remember images better than words or statistics, especially when they see the demonstratives quickly and from a distance.
  • Admit when you do not know and concede when you must.  Few things kill credibility like false statements, even unintentionally false ones, or refusing to admit the obvious.
  • Rehearse.  And not just by reading your materials and preparing notes.  Set up a session as close to what you can expect as possible.  You practice baseball by playing and running by running, practice argument the same way.
  • Dress to be taken seriously.  First impressions matter and the judge(s) see you both before and while they hear you.

Most of Judge Posner’s points apply to both district and appellate court arguments.  The article is worth a read.

Summary Judgment for Failure to Comply with Local Rule 56.1

Posted in Legal News

FM Indus., Inc. v. Citicorp Credit Servs., Inc., No. 07 C 1794, 2008 WL 717792 (N.D. Ill. Mar. 17, 2008) (Conlon, J.).

Judge Conlon granted Citicorp defendants and denied defendant Gelfand summary judgment of copyright infringement. Plaintiff FM Industries ("FMI") alleged that Gelfand infringed FMI’s copyright in its TUCANS debt-collection software by continuing to use it after Gelfand’s license expired. Gelfand argued that FMI could not prove ownership of the copyright because it could not produce the written assignment. But the Court held that FMI’s deposition testimony was sufficient to create a material question of fact and, therefore, denied summary judgment.

Citicorp was accused of encouraging and inducing its outside attorneys to use the TUCANS software after their licenses expired. But at least in part because FMI failed to respond to Citicorp’s Local Rule 56.1 statements or to submit its own responsive statements of fact, the Court accepted as true Citicorp’s evidence that it told its outside attorneys to stop using TUCANS before licenses expired and that Citicorp was unaware that the attorneys continued using TUCANS.

Practice Tip: I cannot say it enough: you must strictly comply with Local Rule 56.1. Click here to read about other opinions considering Local Rule 56.1

Non-Participation Leads to Admission of Jurisdiction & a Judgment

Posted in Legal News

Gabbanelli Accordions & Imports, L.L.C. v. Italo-Am. Accordion Mfg. Co. et al., No. 02 C 4048, 2008 WL 351860 (N.D. Ill. Feb. 8, 2008) (Zagel, J.)*

Judge Zagel granted plaintiff summary judgment of trademark and trade dress infringement regarding plaintiff’s “wildly colorful” and “heavily ornamental” accordions. The Court awarded plaintiff approximately $500,000 in damages, attorneys fees and costs. Defendants – Italian entities that sold accordions in the United States – chose not to participate in the case. Instead, they filed an Italian case after this case was filed, but before defendants were served pursuant to the Hague Convention. The Court previously stayed a portion of the case pending the outcome of the Italian case, but noted that the stay may have been a mistake. Years after filing, the Italian case had not been resolved and defendants failed to participate in the U.S. proceeding based upon a belief that the Italian proceeding controlled. For example, defendants admitted personal jurisdiction when they failed to respond to jurisdictional Requests for Admission and instead of filing a motion to dismiss, defendants sent the Court an unsupported letter listing their complaints with the case and the Court’s jurisdiction over them. By failing to participate in discovery and not following the Court’s rules, defendants preempted whatever ability they might have had to make their case.

Practice tip: Participate and play by the rules. Even if you cannot or will not afford counsel, you must answer discovery, respond to motions and appear when required to. Failing to participate will not insulate you from judgment.

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

No Temporary Restraining Order Without Live Witnesses

Posted in Legal News

Recycled Paper Greetings, Inc. v. Davis, No. 08 C 236, __ F. Supp.2d __, 2008 WL 282687 (N.D. Ill. Feb. 1, 2008) (Bucklo, J.).

Judge Bucklo denied plaintiff’s, Recycled Paper Greetings (“RPG”), motion for a temporary restraining order in this trade secret misappropriation action. RPG argued that it was either part of a joint venture or, at least, a confidential relationship with defendant Kathy Davis to develop a signature line of greeting cards. RPG contends that Davis took confidential information regarding the greeting card line to a competitor. Davis countered that she had terminated her contract with RPG pursuant to the contract’s termination provision before working with RPG’s competitor and there was, therefore, no breach or misappropriation. At an initial hearing, the Court suggested that live testimony might be required to fully resolve the motion for the TRO. But both parties told the Court that their respective witnesses would not be available during the necessary time frame to testify. Because no witnesses were available, the Court denied the TRO, holding that it lacked sufficient information to determine that RPG maintained its alleged trade secrets with sufficient secrecy or the nature of the relationship between RPG and Davis.

Practice tip: If you are seeking a TRO, line up commitments from your potential witnesses to be available both flexibly and quickly. Not many judges will grant TROs if plaintiff cannot present requested witnesses.

Parties Must Plead Facts for Affirmative Defenses

Posted in Pleading Requirements

Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Viachem, No. 07 C 4232, Min. Order (N.D. Ill. Nov. 27, 2007) (St. Eve, J.).

Judge St. Eve granted in part plaintiff’s Fed. R. Civ. P. 12(e) motion for a more definite statement regarding defendant The Ingredient House’s (“TIH”) affirmative defenses and counterclaim. The Court ordered TIH to amend its patent misuse affirmative defense to provide factual allegations outlining the alleged misuse. TIH’s original defense simply stated that plaintiff’s claims were “barred by patent misuse.” The Court also ordered TIH to amend “incongruous statements” in its pleading that appeared to be clerical errors.

The Court denied plaintiff’s motion as to TIH’s defamation counterclaim. TIH was not required to plead which state’s law governed TIH’s defamation claim.

Practice Tip: Defendants frequently plead affirmative defenses with an unsupported statement of the defense. The better practice, and the one that avoids Rule 12(e) motions, is to plead at least the basic facts underlying the defense.

No Insurance Coverage Where Alleged Infringement Not Solely Advertising Injury

Posted in Legal News

Discover Financial Servs. LLC v. National Union Fire Insur. Co. of Pittsburgh, PA, No. 06 C 4359, 2007 WL 2893624 (N.D. Ill. Sep. 26, 2007) (Pallmeyer, J.).

Judge Pallmeyer granted summary judgment that defendant National Union Fire Insurance Co. (“National Union”) did not have a duty to defend plaintiff Discover Financial Services (“Discover”) pursuant to Discover’s insurance policy (the “Policy”). Discover argued that its alleged infringement of a telephone call processing system patent was advertising injury covered by the Policy because Discover advertised various services when its customers used Discover’s phone system. But the Court held that the alleged infringement did not arise solely from advertising activities, as is required by the Policy. While Discover advertised services to callers, the main purpose of its system was conducting financial business and the underlying patent complaint against Discover alleged infringement without identifying any Discover advertising as infringing. The advertising, therefore, could not be considered the sole cause of the alleged injury.\

Practice tip: When responding to Local Rule 56.1 statements, make sure to support denials with admissible evidence. The parties in this case each made arguments that the Court disregarded because the opposing Rule 56.1 statements had not been refuted with evidence.

Trading Technologies v. eSpeed: Inequitable Conduct Proceedings Update

Posted in Trial

I have not been able to fulfill my promised additional coverage of the inequitable conduct portion of the Trading Technologies v. eSpeed case, but it is not my fault.*  The Court decided to consider eSpeed’s inequitable conduct and patent misuse defenses on the papers.  The Court ordered a briefing schedule that will complete briefing by early December for eSpeed’s inequitable conduct and patent misuse defenses , as well as eSpeed’s post-trial motions regarding willfulness and damages remittitur and TT’s motions for its attorneys’ fees and costs.  The Court has scheduled a status conference for December 20th.  Perhaps the parties will have rulings by the end of the year.

Practice tip:  In my experience, one of the dangers of doing inequitable conduct after the conclusion of the jury trial is that both the Court and the parties are exhausted and emotionally drained at the end of the jury trial (particularly after a multi-week trial like this one).  So, when it is time to try inequitable conduct, either the Court no longer wants the trial or the parties and the Court are so exhausted that they have trouble keeping their focus and energy level where it was for the jury trial despite the importance of the issues.  I do not know why the parties or the Court decided that inequitable conduct should be decided on the papers in this case.  But any time that inequitable conduct is to be tried after a jury trial, you run the risk that no live evidence will come in on inequitable conduct.

Click here to read much more about this case and Trading Technologies’ ("TT") related cases in the Blog’s archives

Discovery Request Due Dates Must Fall Within the Discovery Period

Posted in Discovery

Autotech Techs. Ltd. Ptnshp. V. Automation Direct.com Inc., No. 05 C 5488, 2007 WL 2746654 (N.D.Ill. Sep. 18, 2007) (Cole, Mag. J.).*

Judge Cole denied plaintiffs’ (collectively “Autotech”) motion to compel production of defendant Koyo Electronics’ (“Koyo”) touchscreen source code. In Autotech’s Third Amended Complaint – filed without the leave of Court required by Fed. R. Civ. P. 15, but later allowed by Chief Judge Holderman – Autotech alleged that defendants infringed Autotech’s copyrights in its touchscreen display images. Autotech also alluded to source code infringement, but did not explicitly claim it. 

In a later interrogatory response, Autotech stated that it was not claiming that defendants’ source code infringed Autotech’s copyrights, but reserved the right to amend the complaint adding such charges. Because Autotech had not sought leave to add source code infringement claims to its complaint, the Court held that the requested source code was not relevant and production was not required. The Court also noted that the request seeking source code was improper because it was served less than thirty days before the fact discovery close in violation of Local Rule 16.1. It did not matter that the deadline was ultimately extended because the extension was granted after the original fact discovery close and after the deadline for responding to the document requests.

Practice tip: Whenever a Court issues a fact discovery close, get out your calendar, count backward thirty days and mark the last day for serving discovery requests. You would be amazed at how many litigators do not take note of this important date.

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

Parties Make Each Others’ Cases With Unsupported LR 56.1 Statements

Posted in Summary Judgment

Shen-Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, 2007 WL 2903184 (N.D. Ill. Sep. 28, 2007) (Guzman, J.).

Judge Guzman denied defendant’s motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(b). Defendant argued that plaintiffs sold medical gloves embodying the claims of their patent, U.S. Patent No. 6, 953,582 (the “’582 patent”), to a glove with a coating of a skin-soothing substance in July 1999, approximately two years before the ‘582 patent’s July 1, 2001 critical date. Furthermore, plaintiffs admitted that they sold patented gloves as early as July 1999 by failing to cite any contradictory evidence in their responses to defendant’s Local Rule 56.1 statement.

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