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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Shadur

Court Appoints Counsel in IP Case

Posted in Local Rules

Vogue Tyre & Rubber Co. v. Mendez, No. 14 C 5839, Slip Op. (N.D. Ill. Oct. 1, 2014) (Shadur, Sen. J.).

Judge Shadur appointed defendant counsel from the N.D. Illinois trial bar with experience in IP cases, after finding that defendant’s In Forma Pauperis Application sufficiently showed defendant’s inability to pay counsel; that both parties and the Court would benefit from the representation; and that defendant had made appropriate, albeit unsuccessful, efforts to retain counsel. 

Having appointed counsel, the Court ordered counsel to review plaintiff’s complaint and then file a responsive pleading within approximately three weeks.

Court Sua Sponte Strikes Portions of Answer

Posted in Pleading Requirements

Vogue Tyre & Rubber Co. v. Mendez, No. 14 C 5839, Slip Op. (N.D. Ill. Oct. 27, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte struck portions of defendant’s answer and dismissed certain affirmative defenses as follows:

  • The Court struck denials based upon lack of information and belief.  While lacking information and belief acts as a denial, it is “oxymoronic” to claim a lack of information and belief, but to be able to affirmatively deny the statements.
  • The Court dismissed defendant’s laches affirmative defense because it offered no facts in order to meet the notice pleading standard as set out by Twombly/Iqbal.

Not Accepting Well-Pled Allegations is “Cardinal Sin” of Affirmative Defenses

Posted in Pleading Requirements

Sonic Indus., LLC v. iRobot Corp. No. 13 C 9251, Slip Op. (N.D. Ill. Feb. 28, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte struck portions of defendant iRobot’s answer and affirmative defenses, and allowed other portions to be repled.  Of particular note:

  • The Court struck iRobot’s noninfringement affirmative defense for committing the “cardinal sin” for an affirmative defense of not accepting plaintiff Sonic’s well-pled allegations.
  • The invalidity defense was stricken with leave to replead it in a “more particularized and fleshed-out form.”

Answers Must Follow “Yellow Brick” Road of Federal Rules

Posted in Pleading Requirements

Wastequip Mfg. Co., LLC v. Precision Sewing, Inc., No. 13 C 8726, Slip Op. (N.D. Ill. Feb. 13, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte struck certain paragraphs of defendant’s answer and affirmative defenses for straying from the “yellow brick road” set by the Federal Rules in this patent case.

The Court struck answers that were not responded to based upon a lack of information and belief.  The Court also struck improper affirmative defenses.  The Court did not strike defendant’s invalidity affirmative defense because defendant did not have to clearly deny validity in its answer.  Therefore, an invalidity affirmative defense was proper, although the Court usually strikes them.  But the Court struck other defenses that were directly contradictory to plaintiff’s allegations.

Failure to Serve Complaint Courtesy Copies Leads to Fine

Posted in Local Rules

Malibu Media, LLC v. Doe, No. 14 C 693, Slip Op. (N.D. Ill. Feb. 7, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Malibu Media to serve a courtesy copy of its copyright complaint on the Court in compliance with Local Rule 5.2(f) and the Court’s website.  Malibu Media also was ordered to pay a $100 fine for delayed compliance with Local Rule 5.2(f).

Court Orders Briefing Where Complaint Shown No Correction to Chicago

Posted in Local Rules

Sonic Indus., LLC v. iRobot Corp., No. 13 C 9251, Slip Op. (N.D. Ill. Jan. 17, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered the parties to explain their positions as to whether venue for this patent case was proper in the N.D. Illinois.  Based upon the complaint, plaintiff Sonic was a Delaware company and iRobot was a Massachusetts company.  The Court saw no connection to the Northern District except, perhaps Sonic’s interest in the Court’s Local Patent Rules.         

Fine Levied for Failing to Serve Courtesy Copies

Posted in Local Rules

Sonic Industry, LLC v. iRobot Corp., No. 13 C 9251, Slip Op. (N.D. Ill. Jan. 14, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte fined plaintiff Sonic Industry for failure to comply with Local Rule 5.2(f).  Several days after filing its complaint, Sonic Industry still had not provided chambers with a courtesy copy of the complaint.    

Plaintiff Given an Opportunity to Correct Diversity Jurisdiction Pleading

Posted in Jurisdiction, Pleading Requirements

Alliance for Water Efficiency v. Fryer, No. 14 C 115, Slip Op. (N.D. Ill. Jan. 15, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Alliance for Water Efficiency (“AWE”) to correct two deficiencies in its diversity jurisdiction pleading:

  1. AWE pled that it was headquartered in Illinois, but did not plead its corporate citizenship.
  2. AWE pled that defendant was a resident of California, but not whether defendant was also a citizen of California.

Although the Seventh Circuit generally required dismissing complaints where an individual’s residence, but not citizenship, is pled the Court found that “Draconian” and afforded AWE five days to correct its complaint, if it could.

Interactive Website Does Not Create Personal Jurisdiction

Posted in Jurisdiction

Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. Dec. 13, 2012) (Shadur, Sen. J.).

Judge Shadur granted defendant LeaseWeb USA (“LeaseWeb”) Fed. R. Civ. P. 12(b)(2) & (6) motion to dismiss for lack of personal jurisdiction and failure to state a claim.  Plaintiff Flava Works pointed largely to Lease Web’s interactive website.  But that website was not enough for general or specific jurisdiction.  And LeaseWeb’s single Illinois customer was similarly insufficient.  FlavaWorks offered no argument or proof that the customer was related to the alleged copyright infringement in this case.

The Court also dismissed LeaseWeb because FlavaWork’s complaint alleged no facts that would make it liable for copyright infringement.


BitTorrent Doe Defendants Must be Part of the Same “Swarm” at the Same Time to be Joined in Suit

Posted in Pleading Requirements

Zambezia Film Pty, Ltd v. Does, No. 13 C 1323 & 1741, Slip Op. (N.D. Ill. Mar. 20, 2013) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Zambezia Film to identify those Doe defendants that could be properly joined pursuant to Fed. R. Civ. P. 20(a)(2) in this BitTorrent “swarm” copyright case.  The Court would dismiss the remaining defendants.  Relying upon a Michigan Law Review student note — The Case Against Combating BitTorrent Piracy Through Mass John Doe Copyright Infringement Lawsuits, 111 Mich. L. Rev. 283 (2012) — the Court required that Zambezia Film identify those Does that were both part of the same swarm and part of the same swarm at the same time as one another.  Any other defendants would be dismissed.


Plaintiff Must Provide Courtesy Copy of Complaint

Posted in Local Rules

Zambezia Film Pty, Ltd. v. Does 1-33, No. 13 C 1323, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Zambezia Film Pty, Ltd. v. Does 1-60, No. 13 C 1741, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Zambezia Film to provide the Court a courtesy copy of its recently filed copyright complaints in both of the cases.  The Court’s records suggested that Zambezia Film had not timely provided a courtesy copy of its complaint.  The Court used to exempt parties from serving courtesy copies of complaints, but that changed after the Clerk’s office stopped providing hard copies of complaints to chambers.  The Court did not, however, impose a sanction for the failure to serve a courtesy copy of the complaint, as it sometimes does for other pleadings.

Counterclaim Need Not Plead Facts to Overcome Statute of Limitations Affirmative Defense

Posted in Pleading Requirements

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. Mar. 18, 2013) (Shadur, Sen. J.).

Judge Shadur denied plaintiff Flava Works’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant’s copyright infringement counterclaims.  The fact that defendant did not plead the dates of the alleged copyright infringement was not fatal to the counterclaims.  Flava Work’s statute of limitations argument was an affirmative defense and defendant was not required to plead facts refuting it as part of its counterclaims.

The Court also noted that pro se defendant’s periodic failure to appear for hearings has caused the case to move or not move in “fits and starts.”  The Court “cautioned [defendant] . . . that such inattention could prove costly if repeated.”


Court Sua Sponte Orders Production of Evidence and a Hearing on a Copyright Issue

Posted in Local Rules, Uncategorized

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. Apr. 1, 2013) (Shadur, Sen. J.).

Judge Shadur, after reading plaintiff FlavaWorks’ answer to defendant’s copyright counterclaims, sua sponte ordered FlavaWorks to produce a copy of the Commission Work Agreement that FlavaWorks alleged assigned all rights in the videos and photographs at issue to FlavaWorks.  The Court reasoned that deciding the issue of whether the Agreement transferred defendant’s rights in his works to FlavaWorks would move a case forward that had otherwise been largely a series of “procedural skirmishes.”  To the extent that there was not sufficient documentary evidence to establish the necessary facts, the Court asked the parties to submit a brief statement regarding how the issue could be effectively brought before the Court.



Courtesy Copies of Complaints Required by Local Rule 5.2(f)

Posted in Local Rules

Eiserman & Assocs., LLC v. Rosen, No. 13 C 1315, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Zambezia Film Pty. Ltd. v. Does 1-33, No. 13 C 1323, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Zambezia Film Pty. Ltd. v. Does 1-60, No. 13 C 1741, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

Shoppertrak RCT Corp. v. Objectvideo, No. 13 C 1323, Slip Op. (N.D. Ill. Mar. 12, 2013) (Shadur, Sen. J.).

In each of these cases, Judge Shadur entered similar orders requiring the plaintiff to provide the Court a courtesy copy of its newly filed complaint within one week of the date of the opinion.  The Clerk of the Court recently ended its practice of delivering each chambers a courtesy hard copy of any new complaints that it drew.  As such, the Court had stopped exempting counsel from its Local Rule 5.2(f) obligation to provide copies of complaints.  Going forward, counsel were required to file courtesy copies of complaints.  Courtesy copies of complaints are critical in order to allow the Court to control its docket by:

  1. Reviewing the contents of each complaint;
  2.  Issuing sua sponte orders as necessary regarding the complaint;
  3. Setting an initial status; and
  4. Creating a “bible sheet” for the binder the Court maintains as to each case before it.




Fees Awarded for “Egregious” Disqualification Motion

Posted in Local Rules

OpticsPlanet, Inc. v. Opticsale, Inc., No. 09 C 7934, Slip Op. (N.D. Ill. Oct. 22, 2012) (Shadur, Sen. J.).

Judge Shadur granted plaintiff OpticsPlanet’s motion for sanctions based upon defendants’ failed attempt to disqualify OpticsPlanet’s individual counsel and its law firm.  The Court noted that the attempted disqualification was “particularly egregious,” but awarded only fees, not an additional fine to avoid any appearance of a punitive award.  The Court also “urged” the parties to use a less formal process than what is required by Local Rule 54.3 to avoid “fees on fees.”

Non-Lawyer Cannot Represent a Party in Federal Court

Posted in Pleading Requirements

Maclean-Fogg Co. v. Guangzhou Hotlink Hardware Co, Ltd., No. 12 C 6796, Slip Op. (N.D. Ill. Oct. 11, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte struck defendant’s answer for multiple deficiencies.  Initially, it was improperly signed by corporate defendant’s non-lawyer owner.  No non-lawyer can represent a party in federal Court.  Additionally, the answer had the following deficiencies:

  • The answer was not made in numbered paragraphs corresponding to the complaint’s paragraphs pursuant to Local Rule 10.1.
  • In several places, the answer wrongly states that no answer is necessary because statements are legal conclusions.  Answers must address even legal conclusions.
  • While lack of information and belief is deemed a denial, defendant cannot deny statements for which it lacks information and belief.

Answer to Affirmative Defenses Struck as Improper

Posted in Pleading Requirements

New Paradigm Enterprises, Inc., d/b/a Q101 v. Merlin Media LLC, No. 12 C 5160, Slip Op. (N.D. Ill. Oct. 12, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte issued this order to address deficiencies in plaintiff New Paradigm’s answer to defendant Merlin Media’s counterclaims, specifically:

  • New Paradigm’s answers to Merlin Media’s affirmative defenses were struck as improper.
  • Denials based upon a lack of information and belief were struck as improper.
  • References to “strict proof” were ordered to be removed.
  • Answers that “waffle[ed]” and did not provide a response were required to be repled.

Case Dismissed for Rule 22 Violations

Posted in Trial

Brown-Younger v. LULU Press, Inc., No. 12 C 1979, Slip Op. (N.D. Ill. various dates) (Shadur, Sen. J.).

Judge Shadur issued a series of opinions in this copyright case.  The following were of particular note:

  • Plaintiff’s motion for criminal sanctions was denied for failure to comply with LPR 5.2 because plaintiff’s motion was single-spaced.  Furthermore, it was the U.S. Attorney’s role to seek criminal sanctions, not the Court’s.
  • The Court ordered plaintiff to show cause why plaintiff’s complaint should not be dismissed for Rule 11 violations.
  • Because plaintiff did not meet the Court’s deadline to show cause why Rule 11 had not been violated, the Court dismissed the case.  The Court also invited defendants to seek other sanctions that they may believe were appropriate.
  • The Court would not recuse itself and was not required to by plaintiff’s request.

Motion to Dismiss Conflicting With Service Affidavit Raises “Red Flag”

Posted in Jurisdiction

Pyramid Packaging, Inc. v. Pyramid Packaging, LLC, No. 12 C 4420, Slip Op. (N.D. Ill. Jul. 20, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte raised several issues with defendant’s motion to dismiss in this trademark case.  Defendant’s counsel claimed that service was delayed and made upon the wrong entity.  But plaintiff’s sworn service affidavit “flatly refuted” those claims.  These and other issues would be discussed at the hearing on defendant’s motion.

Default Judgment Makes Case Exceptional

Posted in Trial

United States Cellular Corp. v. Hotline Wireless & More, Inc., No. 12 C 5017, Slip Op. (N.D. Ill. Jul. 25, 2012) (Shadur, Sen. J.).  

Judge Shadur entered judgment in favor of plaintiff in this Lanham Act case.  The Court converted its default judgment and temporary restraining order into a final judgment and a permanent injunction.  And the Court held that the case was exceptional, warranting an award of plaintiff’s attorney’s fees and costs.

Pro Se Answer Must Apply With Rules

Posted in Pleading Requirements

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. Aug. 6, 2012) (Shadur, Sen. J.).

 Judge Shadur vacated a default judgment entered against defendant based upon defendant’s explanation for his non-appearance.  But the Court warned that defendant must revise his proposed answer to: 

  • Remove denials of statements for which defendant lacked information and belief; and 
  • Revised his affirmative defenses down from its list of 21. 



Pro Se Answer Must Still Comply With Rules

Posted in Pleading Requirements

Flava Works, Inc. v. Momient, No. 11 C 6306, Slip Op. (N.D. Ill. July 16, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte struck defendants’ pro se answer pursuant to Local Rule 5.2(e) for failure to comply with the Local Rule 5.2(c) font and margin requirements.  The Court also identified the following non-exhaustive list of problems with the answer:

  • In violation of Fed. R. Civ. P. 8(b)(5), the defendant denied statements for which it lacked information and belief.
  • Defendants’ laundry list of 25 affirmative defenses was “unacceptable” for not providing sufficient factual notice.

Copyright Plaintiff Must Justify Doe Suit or Faces Dismissal

Posted in Pleading Requirements

AF Holdings LLC v. Doe, No. 12 C 4244, Slip Op. (N.D. Ill. Jun. 5, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte gave plaintiff AF Holdings ten days to provide a further showing justifying its suit against an anonymous John Doe in this copyright infringement suit.  The Court explained that Doe cases were not a new problem.  The Court saw them years before when bands such as REO Speedwagon filed Doe suits based upon anticipated sales of knock-off concert t-shirts.  The Court refused to consider those suits until there was a specified infringer.  The Court held that AF Holdings had not sufficiently explained why they should be allowed to pursue a case to unmask the owner of an IP address.  The Court also raised concerns that it would issue a subpoena that extended beyond the geographic bounds of the Court’s authority.  If AF Holdings was not able to answer the Court’s concerns, the case would be dismissed without prejudice.

Repeated Improper Filings May Lead to Dismissal

Posted in Jurisdiction

Brown-Younger v. Lulu.com, No. 12 C 1979, Slip Op. (N.D. Ill. June 19, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte issued an order requiring pro se plaintiff to appear and answer the Court’s questions regarding whether plaintiff’s filings met the Fed. R. Civ. P. 11(b) requirement of objective good faith based upon a series of events in the case including:

  • Plaintiff brought her copyright infringement claims despite an arbitration clause in its publishing agreement with defendant Lulu.com.  And plaintiff failed to squarely answer why the arbitration claim did not govern the case.
  • Plaintiff “lash[ed]” out at Lulu.com - seeking a stay pending an FBI investigation - and plaintiff’s appointed counsel - which counsel refuted “chapter and verse.”
  • Plaintiff improperly sought continued sanctions against defendant Apple.