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

Von Holdt v. A-1 Tool Corp., No.. 04 C 4123, Slip Op. (N.D. Ill. Jun. 19, 2009) (Manning, J.).

Judge Manning adopted Magistrate Judge Brown's claim construction Report and Recommendation over defendants' objections in this patent infringement case involving molded buckets with stacking strength.  Of particular interest:

• "Side-by-side" meant "one beside the other."  The Court refused to hold that nothing could be between the ribs of the buckets because doing so would be construing the terms in reference to the accused devices.
   
• "[A] relatively large radius" meant a single large radius, despite the fact that "a" or "an" following comprising language generally means one or more.  In this case, one or more would not make sense.  Multiple radii would require one or more radius to be smaller than the others.  Additionally, the strongest bucket configuration was a single radius, as shown in the patent figures.
   
• "In alignment" meant in a "straight line with," not "parallel."  Requiring the alignment to be parallel was an unnecessary restriction.

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The Seventh Circuit instituted a Commission to study the implementation of the ABA Jury Project.  The Northern District was heavily represented on the Commission.  The following Northern District Judges were members of the Commission:  Bucklo, Brown, Coar, Darrah, Denlow, Der-Yeghiayan, Gottschall, Holderman, Kennelly, Lefkow, Moran, Schenkier, St. Eve, and Zagel.  The Commission recently published its report -- click here to read it.  The report describes a two phase analysis.  In the first phase, district judges tested the following seven ABA Principles:

1.       Twelve-Person Juries;

2.       Jury Selection Questionnaires;

3.       Preliminary Substantive Jury Instructions;

4.       Trial Time Limits;

5.       Juror Questions;

6.       Interim Trial Statements by Counsel; and

7.       Enhanced Jury Deliberations.

Other Principles, such as juror notebooks and allowing jurors to take notes, were already in such widespread use that they were not tested.  Click here for the Phase One Project manual detailing the principles, the rationales and authority behind them, and suggested procedures.  Phase One resulted in questionnaires from 22 participating federal trial judges, 74 participating attorneys and 303 jurors from 38 trials that used one or more of the seven Principles.  Based upon the analysis of Phase One results and questionnaires, the Commission focused Phase Two on the following four Principles:

1.       Juror Questions;

2.       Interim Trial Statements by Counsel;

3.       Twelve-Person Juries; and

4.       Preliminary Substantive Jury Instructions.

These Principles were chosen because of Phase One popularity (78% of jurors reported that being able to ask questions increased their satisfaction with the process) and because of a desire to study the Principles more.  Click here for the Phase Two manual.

In Phase Two, 108 jurors from 12 trials employing one or more of the Phase Two Principles filled out questionnaires.  In addition, 12 attorneys and 4 district judges that participated also filled out questionnaires.  The results are interesting, but more importantly create the opportunity to powerfully impact the trial system across the Seventh Circuit in ways that benefit all of the stakeholders in the trial process -- the litigants, the jurors, the judge and the judge's chambers, and the litigators.

All four of the Phase Two Principles showed significant benefits to the trial process.  83% of jurors reported an increased understanding of the facts when allowed to ask written questions through a judge -- the questions were reworded to meet evidentiary rules.  And 75% of judges and 65% of attorneys thought the questions benefited jurors.  Similarly, preliminary substantive jury instructions were found to improve trials by jurors (80%), judges (85%) and attorneys (70%).  And the same was true for interim statements to the jury -- jurors (80%) and judges (85%).  Finally, twelve-person juries were found not to harm efficiency, while increasing juror diversity.

Each of the four Phase Two Principles, as well as several of the additional three Phase One Principles deserve more attention and analysis.  So, over the next several weeks I will provide follow up posts discussing the findings of those Principles in greater detail.  I will start with the idea of juror questions, which I find particularly important, later this week or early next.

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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.

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According to Chief Judge Holderman during the annual state of the Northern District speech, the state of the Northern District is "good" -- click here for the Northern District's statement regarding the speech.  The Northern District was briefly at full capacity, between Judge Dow's appointment to the Northern District and Judge Filip's resignation to join the Department of Justice.  Other highlights of the presentation included:

• The Northern District remains in the top ten districts in terms of median time to civil case disposition at 6.2 months.
  
• Magistrate Judges Brown and Mahoney were reappointed to additional eight year terms; and
  
• The Northern District's 2007 civil case load remained nearly constant, falling only .5% from its 2006 level.

The Northern District's steady civil case load is especially impressive in light of the Seventh Circuit's reduced case load in 2007.  The Chicago Tribune's Ameet Sachdev reported -- click here for the story -- that the Seventh Circuit's Chief Judge Easterbrook, during his state of the Seventh Circuit speech, reported that the Seventh Circuit's case load dropped 10% for the second year in a row.  Sachdev noted that federal appellate court case loads had averaged a 5% drop per year since 2000.  And Easterbrook explained the Seventh Circuit's 10% drop for 2007 as based upon two primary factors:

• The Seventh Circuit's district courts saw an overall 6% drop in their case loads; and
  
• The Seventh Circuit's preference for bright line rules over totality of the circumstance tests made it easier for entities to settle their disputes, saying:

Rules make it easier for private parties to avoid litigation, or settle their disputes, without asking for appellate evaluation in every case.

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The Northern District of Illinois and Chicago's Federal Bar Association chapter are hosting their Ninth Annual Awards for Excellence in Pro Bono and Public Interest Service awards program this Tuesday, May 13 beginning at 3:30 pm in the James Benton Parsons Memorial Courtroom (2525) of the Dirksen United States Courthouse at 219 South Dearborn Street. The program is open to everyone and is free of charge.

The keynote speaker will be William Neukom, the President of the ABA and partner in K&L Gates.  Prior to his private practice, Neukom was executive vice president of Law and Corporate Affairs for
Microsoft, where he managed Microsoft’s legal, government affairs and philanthropic
activities.

Seven “Awards for Excellence in Pro Bono and Public Interest Service” and one “Special
Recognition Award for Public Interest Service” will be presented to the following Chicago-area lawyers for their pro bono and public interest work before the Northern District:

• Sara C. Arroyo and Rosa M. Tumialán, of Dykema Gossett PLLC (presented by the Judge Coar);
  
• Anthony J. Masciopinto, of Kulwin, Masciopinto & Kulwin, LLP (presented by Judge Manning);
  
• Myron Mackoff, of Richardson & Mackoff (presented by the Chief Judge Holderman and Magistrate Judge Valdez);
  
• Joshua D. Lee and Amy M. Rubenstein, of Schiff Hardin LLP (presented by the
  Judge Brown);
  
• Catherine Caporusso and Margot Klein, of the Federal District Court's Self-Help Assistance Program (presented by Judge Hibbler);
  
• David A. Gordon, Michael B. Nadler, and Kristen R. Seeger, of Sidley Austin LLP (presented
  by Magistrate Judge Schenkier);
  
• Lisa R. Kane, of Lisa Kane & Associates, PC (presented by Chief Judge Holderman); and
  
• Richard J. Gonzales, Clinical Professor of Law, Chicago-Kent (presented by Chief Judge Holderman).

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Here is some recent Northern District news:

• Judge Coar recently updated his case management procedures (click here to read them) to state that pursuant to Local Rule 5.2(e), parties are no longer to provide courtesy copies of electronically filed papers to Judge Coar's chambers, except for papers pertaining to Fed. R. Civ. P. 56 or Local Rule 56.1 (summary judgment papers).
  
• Magistrate Judges Brown (Eastern Division -- Chicago) and Mahoney (Western Division -- Rockford) are both up for reappointment in early 2008.  Pursuant to federal law, the Court has established a citizen's panel to consider their reappointments.  Members of the bar, as well as the general public, are requested to forward comments regarding the reappointments no later than January 18, 2008, to:

Magistrate Judge Advisory Panel
c/o Mr. Michael W. Dobbins
Clerk of Court
U.S. District Court
219 South Dearborn St. -- Rm. 2050
Chicago, IL 60604

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Abbott Labs. v. Andrx Pharms., Inc., No. 05 C 1490, 2007 WL 551551 (N.D. Ill. Feb. 20, 2007) (Brown, Mag. J.).*

The Court denied defendant's motion to compel production of attorney-client privileged documents pursuant to the crime-fraud exception.  Defendant argued that plaintiff's failure to disclose full results from two studies with conflicting results (for and against the applications' claims) to the USPTO, both of which were material to the claims, was both inequitable conduct and fraud.  The studies were conducted during the pendency of one application and prior to two others.  Additionally, three of the named inventors co-authored a journal article detailing the results.  And during her deposition, prosecution counsel admitted being aware of the studies during prosecution of the applications.  The Court held that the evidence warranted in camera review of selected documents from plaintiff's privilege log to determine whether there was evidence of intent.  But after its review, the Court found no direct evidence of intent to defraud the USPTO.  The Court noted that "[n]one of the documents . . . contained a 'smoking gun' or anything close to it."  Furthermore, while intent can be inferred based upon circumstantial evidence, there most be more evidence than failure to disclose to support the inference. 

* You can see more on this case, in particular, various preliminary injunction opinions here and here.

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Using nonprivileged documents that are connected to privileged documents, such as fax coversheets or cover emails used to send a privileged report, to question a witness regarding the related privileged documents can waive the privilege.  Applying Seventh Circuit law (the privilege questions at issue are unrelated to substantive patent law, so Federal Circuit law does not apply), the Court held that plaintiff Abbott waived privilege with respect to an entire document where:  1) Abbott produced a fax coversheet from a document over which it had claimed attorney-client and work product privilege; and 2) used that cover sheet in a line of questioning regarding the underlying document, despite Abbott’s decision not to produce the underlying document.

There are several useful practice tips to draw from this case. First:  fax cover sheets that do not contain separately privileged information are generally not privileged themselves. Of course, there are exceptions and nuances to this general rule, but I suspect that many litigators claim privilege over coversheets that have no more information on them than what must be included in the privilege log anyway. In this case, the remainder of the fax was a marked-up copy of a patent application at issue in the case, but the cover sheet made no mention of the substance or title of the included document and, therefore, the cover sheet itself was not privileged.

At the beginning of my career a wise attorney  -- David Callahan of Kirkland & Ellis -- told me that privilege logs should be reviewed by at least two attorneys before they are finalized. He also drilled into me that you should never simply push the task of logging privileged documents to the youngest associate on a case. Privilege decisions are complicated and the ramifications from privilege log mistakes can be very serious. As the youngest associate on all of my cases at the time, I was thrilled by his sage advice, and I have become more convinced of it over time.

The final practice tip:  you must make all of your arguments. Attorneys tend to focus their arguments only on either the attorney-client privilege or the work product privilege, excluding the other. In this case, Abbott alleged that the document was protected by both work product and attorney-client privilege, but did not bother proving that the document was work product. The Court noted that waiver of attorney-client privilege does not automatically waive work product protection, and did not address work product protection because Abbott had not made its case as to work product.

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