Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., No. 03 C 2934, Order (N.D. Ill. Mar. 5, 2008) (Gottschall, J.).*

Judge Gottschall denied plaintiffs’ summary judgment motion without prejudice for failure to comply with both Local Rule 56.1 and the Court’s Standing Order — the Standing Order further explained that each short, numbered statement of fact required by Local Rule 56.1 should contain one fact and no attorney argument. Despite Local Rule 56.1’s clear requirements and the Standing Order’s directive to strictly comply with Local Rule 56.1, the Court held that nearly one-third of plaintiff’s 145 statements of fact did not comply with the rules:

• Many were long;
  
• One contained no facts;
  
• Several focused on an expert’s methodology instead of his results; and
  
• The rest contained inferences, argument, or legal conclusions.

The Court explained that the case’s complexity required strict adherence to Local Rule 56.1:

The court simply does not possess the resources to comb through the parties’ statements of fact in an attempt to sift out usable fact from impermissible argument or inference. … The Standing Order and LR 56.1 are composed in plain English and their meaning is clear; the court properly expects experienced and sophisticated attorneys to adhere to them strictly, particularly given the complex and sophisticated nature of this litigation.

The Court, therefore, used its discretion to deny plaintiff’s summary judgment motion without prejudice for not complying with Local Rule 56.1 and the Standing Order.

Practice Tip: I write this tip frequently, but it merits repetition.** Strict compliance with Local Rule 56.1 is difficult, time consuming, and it goes against many lawyers’ natures to write facts devoid of argument. But strict compliance is the best, and maybe only, way to win, or defeat, summary judgment in the Northern District. And if you write your Rule 56 statements well, you make the Court’s job easier, which can only help your case.

*  Click here to read more about this case in the Blog’s archives and here for the order.

**  Click here to read about other Local Rule 56.1 opinions. 

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Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., No. 03 C 2934, Slip Op. (N.D. Ill. Mar. 5, 2008) (Gottschall, J.).*

Judge Gottschall granted plaintiffs’ motion to strike defendants’ allegedly new reverse doctrine of equivalents non-infringement argument, which defendants withdrew in response to plaintiffs’ motion. But the Court denied the motion as to all other allegedly new arguments and as to defendants’ supporting affidavits. The Court held that defendants’ non-infringement arguments were sufficiently set out in their timely expert reports.

The Court also held that defendants’ expert affidavits, submitted with their summary judgment response briefs, were proper. Fed. R. Civ. P. 56(e) specifically permits use of affidavits as support for summary judgment arguments. And defendants’ expert affidavits met the requirements for expert affidavits:

• The experts supported their conclusions by showing their reasoning; and
• The methodology met Daubert standards.

Finally, it did not matter that discovery was closed and that plaintiffs, therefore, would not be able to test the affidavits in a deposition. Plaintiffs cited no authority for the proposition that post-discovery affidavits were not permitted.

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

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Murata Mfg., Ltd. v. Bel Fuse, Inc., __ F.R.D. __, 2007 WL 1317100 (N.D. Ill. May 2, 2007) (Cole, Mag. J.).

Judge Cole granted in part defendants' motion to compel the testimony of plaintiff's former employee, Sakamoto, who was a named inventor on the patent in suit residing in Japan.  Earlier in the litigation, defendants argued for a longer discovery period because of the time it would take to secure Sakamoto's deposition.  But through a series of miscommunications, delays and unfortunate circumstances, defendants had not been able to secure  Sakamoto's agreement to be deposed, in Japan or elsewhere, until near the close of discovery.  As a result, defendants filed the instant motion to compel plaintiff to produce Sakamoto for deposition in the United States either as a managing agent pursuant to Fed. R. Civ. P. 30(b)(1) or based upon language in the patent assignement document which obligated Sakamoto to aid plaintiff in patent-related matters.  As an initial matter, the Court denied plaintiff's request to dismiss the motion for failure to meet and confer pursuant to Local Rule 37.2.  The Court explained that based upon the parties' history on the issue, compliance would have been futile and, therefore, it excused defendants' alleged non-compliance.

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Murata Mfg. , Ltd. v. Bel Fuse, Inc., No. 03 C 2934, 2007 WL 781252 (N.D. Ill. Mar. 8, 2007) (Cole, Mag. J.).

Judge Cole held that plaintiff's inequitable conduct defense did not waive its privilege and, therefore, denied defendant's motion to compel privileged documents.  Defendant asserted that plaintiff engaged in inequitable conduct by failing to disclose an allegedly material piece of prior art during prosecution of the patent-in-suit.  Defendant's defense was essentially that their counsel and inventors fully understood their disclosure obligations and chose not to disclose the alleged prior art because  it was not material or even similar to the patent-in-suit.  Defendant argued that plaintiff waived its privilege when its 30(b)(6) deponent testified that:  1) he had been told that plaintiff's in-house counsel instructed its prosecuting attorneys to disclose all relevant prior art to the PTO; and 2) that he was confident that the inventors understood their duties of disclosure based upon their past experience as patentees and the fact that they had each had several conversations with plaintiff's prosecution counsel.  But the Court held that disclosure of the occurrence of these conversations, without disclosing any of the contents did not act as waiver.   The Court noted that if disclosure of the existence of these conversations without elaboration constituted wavier, then the exchange of privilege logs would also constitute waiver.

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Murata Mfg. Co., Ltd. v. Bel Fuse Inc., __ F. Supp.2d __, 2006 WL 2176241 (N.D. Ill. Jul. 28, 2006) (Gottschall, J.).

This detailed claim construction ruling demonstrates several useful practice tips. First:  work with opposing counsel upfront to determine which terms are actually in dispute. The parties’s initial briefing sought construction of nineteen terms, but when the Court required supplemental briefs post-Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the parties limited their briefing to only seven terms. This highlights the value of sitting down with opposing counsel before claim construction to identify the terms that are actually disputed.  Of course, this requires two reasonable parties represented by reasonable counsel, but you are better off at least trying. It is embarrassing to counsel and expensive for the client to learn, upon receiving the opposing brief, that a term that you spent hours, dollars, and valuable pages briefing is not actually in dispute. And of course, it is frustrating for the Court.

Second:  make clear to the Court why you dispute a particular term, especially if the competing constructions are similar. The parties’s proposed definitions of “modular jack” appeared to the Court to have no material difference. If you argue for subtle variations in definitions, explain why the distinction matters. The Court will be more likely to spend time on the construction and will be less likely to gloss over a seemingly insignificant difference between the competing constructions. 

Finally, the Opinion also contains an interesting legal ruling. Defendant argued that the wire referenced in “wire on the printed board” must be a “printed” wire, as opposed to a “discrete” wire, because the preferred embodiments teach only printed wires. The Court, however, held that the wire could be either printed or discreet. The Court found that the specification did not exclude the use of discrete wires although it did not mention them. The Court noted that the specification states that the claimed invention includes variations of the preferred embodiments that would be known to those of ordinary skill in the art. And because the use of discrete wires was also known, the claim term was not limited to printed wires.

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