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

McDavid Knee Guard, Inc. v. Nike USA, Inc., No. 08 C 6584, Slip Op. (N.D. Ill. Jun. 9, 2009) (Mason, Mag. J.).

Judge Mason denied plaintiffs' motion to disclose defendant's highly confidential technical information to plaintiff Stirling Mouldings' Managing Director ("MD") in this patent case.  Stirling argued that MD, who was also the patent-in-suit's inventor, was a necessary technical expert based upon his extensive experience with the technology.  Nike countered that Stirling had already hired other expert witnesses who had been able to provide technical opinions and that, if granted access to Nike's supplier's alleged trade secret process, MD would not be able to compartmentalize the information and avoid using it in competitive decision-making.  Nike also argued that Stirling was precluded from seeking access to the information for MD because he was specifically excluded from seeing Highly Confidential materials in the Protective Order and because the parties expressly agreed that information from a site visit was to be maintained as Highly Confidential and only show to plaintiffs' counsel. 

The Court held that Stirling was not precluded by prior agreements or orders from seeking access for MD.  But the Court also held that plaintiffs had not met their burden of showing good cause to modify the Protective Order granting MD access to Highly Confidential documents.  First, plaintiffs had already hired outside experts that had provided competent technical opinions and none of those experts had submitted a declaration stating they needed MD's expertise to render an opinion.  Furthermore, Nike showed that disclosing its supplier's technical information to MD would likely cause competitive harm.  It would be impossible for him to fully segregate the technical knowledge he would gain when performing his strategic decision-making role for Stirling.  The Court noted, however, that it did not determine whether the process at issue was, in fact, a trade secret.

Finally, the Court noted that it did not consider plaintiffs' arguments that MD would necessarily hear the technical information during the trial.  The Magistrate Judge did not have jurisdiction over the District Judge's decision of whether to seal the courtroom for trial when technical information is discussed.

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Nike, Inc. v. Wal-Mart Stores, Inc., No. 08 C 5840 (N.D. Ill.) (Hibbler, J.).

As I have said before, I generally do not discuss complaints, but Nike's design patent suit against Wal-Mart last week has drawn significant blog coverage  -- click here for the complaint.  And most of that coverage has missed the most interesting element of the complaint, from a legal procedure perspective (and yes, legal procedure is interesting, at least to me):  Nike's detailed pleadings.  Instead of simply identifying its design patents (related to its Nike Shox product line) and Wal-Mart's allegedly infringing shoes, Nike put detailed design patent claim charts in its complaint showing an accused product from the same angle as each figure in the design patent.  Here is a portion of one of the charts:

Of course, claim charts for design patents are less detailed and time-intensive to create than utility patent charts.  But claim charts in the body of a complaint are relatively rare for any type of patent case.  This may suggest a recognition that the Supreme Court's Twombly antitrust decision which required pleadings to meet a new "plausibility" standard coud be applied in patent cases -- click here for more coverage of Twombly-related issues in the Blog's archives.  Of course, I just finished writing an article for John Marshall's Review of Intellectual Property Law about how courts are dealing with the Twombly standards in patent cases, so I may just be seeing Twombly everywhere.I expect my article to be published next month, and I do not want to scoop it by describing my finding here.  I can say, however, that my research suggests that Twombly is being applied (nationwide, not necessarily in the Northern District) in some interesting and uneven ways.  More on that in a few weeks, after the article publishes.

For more coverage of this case, check out:

• IP Watchdog (focused on the Egyptian Goddess case);
   
• Patently-O (discussing damages and marking issues); and
   
• WSJ Law Blog.

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