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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Subpoena

Plaintiff May Not Communicate with Does in BitTorrent Case by Email or Phone

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The Thompsons Film, LLC v. Does 1-60, Slip Op. 13 C 2368 (N.D. Ill. Sep. 6, 2013) (Gottschall, J.).

Judge Gottschall denied two Doe defendants’ motions to quash subpoenas to their respective ISPs seeking, among other things, their identities based upon their IP addresses in this BitTorrent copyright case.  The Court held that a copyright holder alleging infringement had the right to discovery the potential identity of the accused infringer, it did not matter that someone other than the owner of the IP address may have actually performed the accused infringement.

The Court did, however, allow the Doe defendants to proceed anonymously because of the “substantial possibility” that the IP address owner did not commit the accused acts, but rather someone else did using the Doe’s network.  The Court ordered plaintiff not to identify any Doe in a pleading filed with the Court except by IP address or by Doe#, absent a further order of the Court allowing public disclosure of the Doe’s identify.  The Court also limited the subpoenas to seeking the Doe’s name and address.  Plaintiff was not entitled to phone numbers or email addresses, and plaintiff was not allowed to contact the Does directly by either email or phone.

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 Orders Doe Disclosure After Time to Object

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Pacific Century Int’l. v. Does 1-31, No. 11 C 9064, Slip Op. (N.D. Ill. Jun. 12, 2012) (Leinenweber, J.).

Judge Leinenweber granted plaintiff Pacific Century International’s (“PCI”) Fed. R. Civ. P. 45(c)(2)(B) motion to compel subpoena compliance, in this BitTorrent copyright suit.  The subpoena sought identifying information from Comcast for certain of its internet service customers.  PCI had each Doe defendant’s IP address – a number assigned to a computer using the internet – but not the names, addresses or other identifying information associated with that computer or internet service account.  Recognizing that courts in the Northern District and elsewhere were split on the issue, the Court held that joinder was proper based upon the allegation that the Does were involved in the same BitTorrent “swarm” used to download the alleged infringing video.  The Court also noted that all of the Does sued in this case appeared to be Illinois residents based upon their IP addresses, unlike the Does in many other cases. 

The Court also noted the concern that PCI and similarly-situated plaintiffs were using the threat of being named in these suits to unfairly coerce settlements.  But getting the identifying information was necessary to move the case forward.  The Court, therefore, ordered Comcast to notify its customers of the pending disclosure pursuant to 47 U.S.C. § 551(c)(2) and then gave each such defendant thirty days from notice to object or otherwise move the Court for relief.  Comcast was to turn over the identifying information only after any such objections were resolved.  

Confidentiality Provision Does Not Prevent Production

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Morningware, Inc. v. Hearthware Home Products, Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Oct. 6, 2011) (St. Eve, J.).

Judge St. Eve granted plaintiff/counter-defendant Morningware’s motion to compel production from third party SKE in this patent and Lanham Act suit regarding convection ovens. SKE had an agreement with defendant/counter-plaintiff Hearthware that restricted SKE’s ability to disclose Hearthware’s confidential documents. The Court ordered SKE to produce the documents directly to Morningware, denying Hearthware’s request to review the documents for confidentiality first. The Court noted that Morningware’s agreement to initially treat all of SKE’s documents as Highly Confidential resolved confidentiality concerns.

Subpoenas to Identify Does Allowed in BitTorrent Copyright Case

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MCGIP, LLC v. Does 1-316, No. 10 C 6677, Slip Op. (N.D. Ill. Jun. 9, 2011) (Kendall, J.).

Judge Kendall denied putative defendants’ motions to quash plaintiff MCGIP’s subpoenas seeking to identify users associated with specific IP addresses that allegedly used BitTorrent in a manner that infringed MCGIP’s copyrights in certain adult films. The Court’s key reasons for denying the motions to quash were:

MCGIP issued subpoenas to internet service providers ("ISP"), not the putative defendants. The subpoenas, therefore, did not create an undue burden on the putative defendants because the ISPs had a duty to produce documents, not the putative defendants.

MCGIP was seeking identifying information, none of which was privileged.

The subpoena requests were not outweighed by the putative defendant’s privacy or First Amendment rights.

Whether the Does were improperly joined is a premature question. As such, motions raising it were denied without prejudice to refile once the issue was ripe.

The putative defendants’ arguments that the Court lacked personal jurisdiction were also premature as defendants were not in the suit yet. Defendants will be free to raise those issues once they ripen.

Trading Technologies: Court Quashes Subpoena

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Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Jul. 19, 2011) (Coleman, J.).

Judge Coleman granted declaratory judgment plaintiff Rosenthal Collins Group’s ("RCG") motion for protective order and to quash third party subpoenas as to third party CQG. The subpoenas sought information regarding RCG’s use of CQG’s trading software. The Court previously entered judgment against RCE and the only issue left in the case is a January 23, 2012 damages trial. But the judgment and the damages trial were limited to RCG’s use of its software, not other third parties that have not yet been held to infringe, such as CQG’s software.

Third Party Competitor Need Not Comply With Onerous Subpoenas

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Viskase v. World Pac, Inc., No. 09 C 5022, Slip Op. (N.D. Ill. Sep. 9, 2010) (Bucklo, J.)

Judge Bucklo granted third party Kalle’s motion for a protective order and to quash plaintiff Viskase’s subpoena. Because the documents sought were created after the patent-in-suit’s filing date, they would have had little impact upon validity. Furthermore, Kalle was a competitor and its confidential information could not be protected from disclosure at trial. Finally, the volume of requested documents and the breadth of Fed. R. Civ. P. 30(b)(6) requests would have made compliance with the subpoena costly and burdensome.

Defendants’ Customers’ Sales Information Relevant to Commercial Success

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Degregorio v. Phillips Electronics. N. Am. Corp., No. 07 C 2683, Slip Op. (N.D. Ill. Dec. 28, 2007) (Cox, Mag. J.).

Judge Cox granted in part defendants’ motion for a protective order regarding plaintiff’s subpoenas of defendants’ customers in this patent dispute. Plaintiff subpoenaed defendants’ customers of allegedly infringing hair trimmers with built in vacuums, seeking sales and inventory information, as well as promotional materials and purchase orders. The Court denied the motion as to the sales and inventory information. The customers’ sales were potentially relevant to commercial success of the patented device for plaintiff’s non-obviousness case. The Court did enter a protective order as to the request for purchase orders and marketing materials. The Court held that the purchase orders were cumulative of the other requested sales information and marketing materials were too tangential to commercial success to be discoverable.

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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