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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Sua Sponte

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

By R. David Donoghue on 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.

 

 

 

Answer to Affirmative Defenses Struck as Improper

By R. David Donoghue on 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.

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

By R. David Donoghue on 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.

Pro Se Answer Must Still Comply With Rules

By R. David Donoghue on 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

By R. David Donoghue on 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.

Defendant Must Amend Answer Without Filing A Full Amended Answer

By R. David Donoghue on Posted in Pleading Requirements

Am. Taxi Dispatch, Inc. v. Am. Cab Serv., Inc., No. 11 C 6796, Slip Op. (N.D. Ill. Nov. 17, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered defendant American Cab to file an amendment to its answer (but not an entire amended answer) removing denials of plaintiff American Taxi’s compliant based upon a lack of information and belief. While lacking information and belief acts as a denial, without information and belief, American Cab may not deny the allegations. The Court also ordered American Cab’s counsel not to charge American Cab for the amendment and to inform American Cab of that in writing, copying the Court.

Venue Questioned Sua Sponte

By R. David Donoghue on Posted in Jurisdiction

ArrivalStar S.A. v. Geo-Comm, Inc., No. 11 C 5016, Slip Op. (N.D. Ill. Jul. 27, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte challenged the sufficiency of plaintiff ArrivalStar’s venue allegations. Venue is proper in patent cares: 1) where the defendant resides; or 2) where the defendant allegedly committed the accused acts and had a regular place of business. Geo-Comm resided in Minnesota. So, only the second option was possible. ArrivalStar did plead that Geo-Comm sold accused products in the district. But ArrivalStar failed to plead that Geo-Comm had a regular and established place of business in the district. Instead of requiring immediate repleading or briefing, the Court set a status conference to discuss the issue.

Naming Doe Defendants in Bit Torrent Copyright Case is Shooting First, Identifying Targets Later

By R. David Donoghue on Posted in Discovery

Boy Racer, Inc. v. Does 1-22, No. 11 C 2984, Slip Op. (N.D. Ill. May 9, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte dismissed plaintiff Boy Racer’s copyright infringement complaint without prejudice. The Court held that Boy Racer could not "shoot first and identify [its] targets later" by suing twenty-two Doe defendants. Instead, Boy Racer was free to file its suits against identifiable individuals.

“Oxymoronic” to Deny Contentions for Which You Lack Knowledge

By R. David Donoghue on Posted in Pleading Requirements

Bernina of Am., v. Imageline, Inc., No. 10 C 4917, Slip Op. (N.D. Ill. Jan. 18, 2011) (Shadur, Sen. J).

Judge Shadur sua sponte ordered defendant to correct its answer. Two paragraphs stated that defendant lacked information and belief sufficient to answer and, based upon that, denied the contentions. The Court explained that denying a contention for which one lacked information and belief was "oxymoronic." The Court gave defendant time to file a paper removing the relevant denials.

Trading Technologies: “Mirror Image” Patent Counterclaims Struck Sua Sponte as “Meaningless”

By R. David Donoghue on Posted in Pleading Requirements

Trading Technologies Int’l, Inc. v. CQG, Inc., No. 10 C 718, Slip Op. (N.D. Ill. Jan. 24, 2011) (Shadur, Sen. J.).*

Judge Shadur sua sponte dismissed defendants’ (collectively "CQG") noninfringement and invalidity counterclaims. The Court explained that "mirror image" noninfringement and invalidity patent counterclaims are "seemingly meaningless." And the "amorphous nature" of CQG’s counterclaims resulted in them being especially unnecessary. The Court, therefore, dismissed the declaratory judgment counterclaims.

*Click here for much more on this and TT’s other cases in the Blog’s archives.

Parties May Not Deny Statements for Which They Lack Information and Belief

By R. David Donoghue on Posted in Pleading Requirements

Bernina of Am., Inc. v. Imageline, Inc., No. 10 C 4917, Slip Op. (N.D. Ill. Jan. 12, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte struck two paragraphs of plaintiff’s answer and affirmative defenses to defendants’ counterclaims. Both paragraphs denied allegations for which plaintiff lacked information and belief, which was both "oxymoronic" and in violation of Fed. R. Civ. P. 8(b)(5).

Northern District Answers Must Repeat the Complaint’s Allegations

By R. David Donoghue on Posted in Local Rules

JAB Distribs., LLC v. Martha Stewart Living Omnimedia, Inc., No. 10 C 5716, Slip Op. (N.D. Ill. Oct. 26, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte struck plaintiff JAB’s reply to defendant Martha Stewart Living’s counterclaims. The reply failed to comply with Local Rule 10.1, requiring that an answer repeat the contention before responding to it. Additionally, JAB was ordered not to deny statements for which it lacked information and belief; as denying something about which one lacks sufficient information is "oxymoronic."

Court Sua Sponte Orders Defendant to Present Affirmative Defenses and Motions

By R. David Donoghue on Posted in Pleading Requirements

Bernina J. Am. v. Imageline, Inc., No. 10 C 4917, Slip Op. (N.D. Ill. Nov. 18, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte issued an order regarding defendants’ answer. The Court dismissed affirmative defenses that were impermissibly inconsistent with the allegations in the Complaint. The Court also ordered defendants to present jurisdictional and Rule 12(b) defenses as motions, rather than conclusory affirmative defenses.

Court Sua Sponte Questions Validity of Lanham Act Claims

By R. David Donoghue on Posted in Pleading Requirements

Ashley Furniture Indus., Inc. v. Value City Furniture, Inc., No. 10 C 5413, Slip Op. (N.D. Ill. Sep. 27, 2010) (Shadur, Sen. J.).

Nothing that his opinion was styled "Memorandum" and not "Memorandum Order," Judge Shadur questioned the viability of plaintiff Ashley Furniture’s trademark infringement, false designation of origin and dilution claims. The Court opined that "no rational reader" could find that defendant Value City’s accused advertising violated Ashley Furniture’s trademarks or that Value City’s "accurate" use of Ashley Marks’ infringed the marks. The Court, however, did not strike the claims sua sponte. The Court also noted that, even if the "troublesome" claims were eliminated, Ashley Furniture’s Lanham Act unfair competition claims would still survive.

Court Orders Pre-Answer Brief re Viability of Lanham Act Case

By R. David Donoghue on Posted in Pleading Requirements

Ashley Furniture Indus., Inc. v. Value City Furniture, Inc., No. 10 C 5413, Slip Op. (N.D. Ill. Aug. 31, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Ashley Furniture to submit a brief memorandum citing the principal cases supporting Ashley Furniture’s trademark infringement claims based upon Value City Furniture’s "aggressive competitive advertising" including the use of Ashley Furniture’s trademark. The memorandum would help facilitate addressing the case at the Court’s initial status conference. The Court also noted that while the use of a competitor’s name in advertising was once verboten, it is now ubiquitous.

Breach of Patent Settlement Does Not Create Federal Jurisdiction

By R. David Donoghue on Posted in Jurisdiction

Idex Corp. v. Dripping Wet Water, Inc., No. 08 C 1114, 2008 WL 4372038 (N.D. Ill. Feb. 26, 2008) (Shadur, Sen. J.).

Judge Shadur sua sponte gave plaintiffs one week to amend their pleadings to resolve potential subject matter jurisdiction issues.  The Court noted that the breach of a patent settlement did not create federal question jurisdiction because the agreement was about a patent.  And the Court held that it was not sufficient for diversity jurisdiction just to plead the parties’ residences.  Both residence and citizenship must be pled for the purposes of diversity jurisdiction.  The Court, therefore, ordered plaintiffs to amend their complaint to plead both residence and citizenship, or otherwise prove jurisdiction.  The Court also ordered plaintiffs to explain why the case was filed in the Northern District rather than in Texas where the parties had an ongoing suit or Connecticut where the litigation resulting in the settlement at issue took place.

Court Dismisses Case Sua Sponte for Lack of Jurisdictional Facts

By R. David Donoghue on Posted in Pleading Requirements

Helferich Patent Licensing v. ASUStek Computer Inc., No. 08 C 5189, Min. Order (N.D. Ill. Sep. 22, 2008) (Castillo, J.)

Judge Castillo sua sponte dismissed without prejudice plaintiff’s patent infringement complaint. The Court held that defendants were foreign entities without business entities in the Northern District. The Court allowed plaintiff to proceed with expedited jurisdictional discovery, and gave plaintiff until December 15 to refile an amended complaint, if they could, with more facts supporting jurisdiction and venue. The Court did not cite the Supreme Court’s Twombly decision regarding Fed. R. Civ. P. 8 pleading standards in its brief opinion. But this decision could flow from Twombly’s plausibility pleading standards.

Party Cannot Deny Allegations for Which it Lacks Information

By R. David Donoghue on Posted in Local Rules

Garcia v. City of Chicago, No. 07 C 5828, Slip Op. (N.D. Ill. Dec. 10, 2007) (Shadur, J.).

Judge Shadur sua sponte struck certain denials in defendant’s answer. The Court held that it was improper to deny those allegations for which defendant stated it lacked sufficient information or belief to respond and, therefore, struck them from the answer. Additionally, the Court noted that defendants had not provided the Court with courtesy copies pursuant to Local Rule 5.2(e).

Practice tip: Courtesy copies often get lost in the administrative shuffle after a complex filing. But there are few things more important than providing the Court with easy access to your papers.

Judge Orders Patent Plaintiff to Sue Suppliers Separately

By R. David Donoghue on Posted in Local Rules

Dicam, Inc. v. United States Cellular Corp., No. 07 C 5472, Slip. Op. (N.D. Ill. Sep. 28, 2007) (Shadur, J.).*

Judge Shadur sua sponte ordered plaintiff Dicam to dismiss all parties but defendant United States Cellular (“U.S. Cellular”) and one of its five co-defendants. Dicam’s Complaint alleged patent infringement of telephones sold by U.S. Cellular and manufactured by the other five defendants. The Court could find “no legitimate reason” for brining what it believed were five separate suits as one. The Court explained that if Dicam had filed the suits separately, the Court would not have consolidated them pursuant to Local Rule 40.4, although they might have qualified for coordinated discovery. The Court, therefore, ordered Dicam to dismiss four of the five suppliers, without prejudice to refile separate cases against those suppliers. Dicam has since dismissed all but one of the four suppliers and refiled separate cases against each of the four suppliers with U.S. Cellular named as a co-defendant in each case.

* Click here for a copy of the opinion.