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

Chief Judge Holderman has instituted an operations plan in the event of a federal government shutdown.  The Northern District will operate normally for the first two weeks of any shutdown.  Should a shutdown continue longer than two weeks, the Northern District will operate with essential personnel as set forth by the United States Court's Administrative Office.  Here is the full text of Chief Judge Holderman's statement:

To the People of the Northern District of Illinois,

Please be assured that here in the Northern District of Illinois, Clerk of the Court Mike Dobbins and I have conferred and have developed a plan for our court to deal in the short term with the contingency now facing us of Congress failing to pass the federal budget or to authorize another continuing resolution.

We will keep the United States District Court for the Northern District of Illinois open and functioning with only minor modifications in our procedures for at least two weeks if Congress fails to establish a budget to keep the United States Government functioning. If the shutdown continues longer than two weeks, the court will continue to operate with essential personnel as defined by guidelines issued by the Administrative Office of the United States Courts.

We plan to continue to provide justice to the fullest extent possible and in the same excellent way as we have in the past. Thank you for your understanding.

Chief Judge James F. Holderman
 

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The Seventh Circuit Electronic Discovery Pilot Program is sponsoring a free e-discovery webinar on April 6, 2011 from noon until 1:30 pm CDT.  This is the next in a series of e-discovery seminars sponsored by the local federal courts which have been excellent so far.  Participation is limited to 1,500.  So, sign up early -- click here to register.  Attendance for the past events has been impressive.  1.5 hours of MCLE credit have been applied for in Illinois, Indiana and Wisconsin.

Here are the details of the webinar from the Northern District's inviation:

What Everyone Should Know About the Mechanics of E-Discovery

April 6, 2011 - Noon - 1:30 p.m. (CDT)

Understanding the mechanics of electronic discovery is essential to your effectiveness in litigation and to fulfill your responsibility to your clients. The Seventh Circuit Electronic Discovery Pilot Program, together with Merrill Corporation, has developed a program designed to assist you in mastering the e-discovery challenges of today’s litigation and to help you manage the preservation, retrieval and production of ESI through the e-discovery process. You will gain information including:

• A basic understanding of the terminology unique to the realm of e-discovery.
   
• The meaning of preservation and how to achieve this crucial obligation in an evolving technological landscape.
   
• How to assess and manage the challenges of an e-discovery project.
   
• A foundational understanding to help you identify potential e-discovery pitfalls and potential problems.

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Chief Judge Holderman has closed the Northern District of Illinois Dirksen Courthouse Wednesday, February 2, based upon the expected blizzard.  The Court noted that ECF will remain available.

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Illinois' senior senator, Dick Durbin, has announced a bipartisan screening committee to assist in filling the Northern District's three vacant judgeships, as well as for future vacancies. If you are interested in applying for one of the vacant seats, click here to get an application from Senator Durbin's website. The questionnaire portion of the application is similar to that used by the Senate Judiciary Committee in reviewing judicial appointments. Applications are due by Monday, January 31.

The screening committee will review the applications and make several recommendations for each open seat to Senator Durbin, who will work with Senator Kirk to propose nominees to President Obama. Members of the screening committee include (along with a portion of their respective bios from Senator Durbin's website):

• Dick Devine (chair). Mr. Devine was elected Cook County State’s Attorney in 1996 and served in that role until 2008. He currently is a partner at the law firm of Meckler Bulger Tilson Marick & Pearson LLP, where he leads the firm’s white-collar criminal defense and commercial litigation practices.
   
• Demetrius Carney. Mr. Carney is a partner at the law firm of Perkins Coie. He is the president of the Chicago Police Board and a former commissioner for the City of Chicago's Plan Commission.
   
• Philip Corboy, Jr. Mr. Corboy is a partner at the law firm of Corboy & Demetrio. He is president of the Illinois Trial Lawyers Association, president of the board of directors of the Legal Assistance Foundation of Metropolitan Chicago, former board member of the Chicago Bar Association, and member of the dean’s council of DePaul University law school.
   
• Kevin Forde. Mr. Forde has his own law practice in Chicago. He is a past president of the Chicago Bar Association, board chair of the Federal Defender Program in the Northern District of Illinois, counsel to the Federal Judges Association, and chair of the Illinois Compensation Review Board. He served as a law clerk to Judge William Campbell in the Northern District of Illinois.
   
• Patricia Holmes. Ms. Holmes is a partner at the law firm of Schiff Hardin, where she heads the white collar crime group. She previously served as a former state trial judge, an Assistant U.S. Attorney for the Northern District of Illinois, an Assistant State’s Attorney for Cook County, and Chief Assistant Corporation Counsel for the City of Chicago.
  
  Betty Jang. Ms. Jang is legal counsel and director at CVS Caremark in Northbrook. Previously she served as senior counsel at the McDonald’s Corporation, a litigator at Hinshaw & Culbertson, an attorney with the Cook County Public Defender, and an adjunct professor at the University of Illinois law school.
  Paul Logli. Paul Logli is currently President and CEO of the United Way of Rock River Valley. He previously served for 21 years as the State’s Attorney for Winnebago County, and also served as a judge on the 17th Judicial Circuit Court.
   
• Cheryl Niro. Ms. Niro is a principal in the law firm of RobinsonNiro PC. She previously served as past president of the Illinois State Bar Association, the Cook County Legal Assistance Foundation, and the National Caucus of State Bar Associations.
   
• Michele Ruiz. Ms. Ruiz is a partner at the law firm of Sidley Austin. She was selected as a Leadership Greater Chicago fellow.
   
• Diana White. Ms. White is the executive director of the Legal Assistance Foundation of Metropolitan Chicago, where she received the Equal Justice Award. Previously she was a partner at Jenner & Block and a law clerk to Judge Walter Cummings on the U.S. Court of Appeals for the 7th Circuit.
   

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The Northern District of Illinois continued its historically busy intellectual property docket in 2010.  The most interesting statistic is a huge jump in patent filings this year -- 250 patent cases filed this year, nearly double 2009's 137 filings.  And that is after a slight dip in filings from 2008 to 2009.  I will discuss the 2010 filings in more detail in a post later this month, but even correcting for false patent marking suits, not all of which are included in the 250 filings because plaintiffs did not uniformly identify false marking cases as patent cases on civil cover sheets filed with the complaints, there was a significant increase in patent filings.  That fits with my prediction in late 2008 that the Northern District's new Local Patent Rules would drive cases to Chicago.*

Trademark cases continued their slow growth, showing a slight increase over 2009.  Finally, copyright cases increased, after falling off sharply in 2009.  This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2009 (data gathered from the Stanford IP Clearinghouse and Pacer):

*  Click here for much more on the Local Patent Rules in the Blog's archives.

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This is the fifth installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation (here are the earlier tips:  1-5; 6-10; 11-15; and 16-20). The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are numbers twenty through twenty five:

21. Calculate extensions in 7 day increments.  The Federal Rules, and the Local Rules, now calculate deadlines in seven day increments. Based upon that, many Chicago judges expect parties to seek extensions in those same increments.
     
22. Respect Chambers.  Chambers staff are pretty universally helpful, but be respectful of them and avoid annoying them. Before calling chambers, read the Local Rules and the judge's website to make sure your question is not answered there. And call chambers with opposing counsel, unless you have advance permission from the Court or opposing counsel.
     
23. Learn how to seal or redact filings early.  The Seventh Circuit frowns upon sealing court filings unless absolutely necessary. As a result, Northern District judges are particular about filing under seal, as is the Clerk's office. Some protective orders give you a blanket right to file under seal, but others require specific permission. That permission would ideally be sought in advance of filing, but at least concurrent with the filing. Either way, it is critical to know before the evening of a major filing deadline, when the Clerk's office may be closed, and you may not have much time to begin with. Additionally, the Seventh Circuit requires that briefs be filed in a redacted form instead of under seal. So, many Northern District judges have the same requirement. Either ask the judge's chambers or counsel who has experience before the particular judge.
     
24. Lean on the ECF hotline.  I am routinely surprised by how many people never think to call the Clerk's ECF number for assistance. The Clerk's staff is uniformly knowledgeable and eager to help. In particular, call them immediately if you made an ECF-based error while filing. The Clerk's office can almost always fix it, and it is usually easier for everyone if you have not added to the problem by "fixing" it yourself. One note of caution though, as with calling chambers, give the Clerk's office the courtesy of reviewing the ECF webpage first to make sure they have not already answered your question there.
     
25. Understand the Court's pretrial order requirements.  More than one Northern District judge will throw out inadequate pre-trial orders. One common flaw to watch for is insufficient statements of fact or conclusions of law. The local, form pre-trial order requires the parties to identify every fact they must prove at trial and every necessary conclusion of law, even for jury trials. This custom differs from some other districts (and not every Northern District judge requires it). Likely because of that and the general pre-trial time crunch, many parties fail to prepare sufficient statements. That can have serious consequences, so start on these early.

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This is the fourth installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation (here are the earlier tips:  1-5; 6-10; and 11-15). The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are tips sixteen through twenty:

16. Meet and Confer.  Wherever you practice you are likely aware of some version of a Local Rule 37.1 requirement to meet and confer regarding at least discovery motions. Generally, you do not need to meet and confer for dispositive motions, but you must for discovery motions as well as motions for extensions. Most judges will not hear a motion without a meet and confer, and some will deny the motion with prejudice for failing to meet and confer. If you are not sure whether your motion requires a meet and confer, err on the side of having one.
     
17. Tell the Court about your meet and confer.  Do not forget to tell the Court you met and conferred in your motion, and describe the outcome. If you do not, you risk denial of your motion, and always identify agreed or stipulated motions in the title and the docket entry.
     
18. Use the Online Transcript System.  Take advantage of the Northern District's first-in-the-nation online transcript ordering system. Prior to this system, getting transcripts was difficult, but now getting a hearing transcript is as easy as buying a book on Amazon.com. It is a great advantage for litigators preparing motions that relate to prior hearings.
     
19. Calculate your hearing date. Each judge has a different minimum notice period for motions. Many judges allow notice three business days after filing, but a few only require two and others require four. On a similar note, check the judge's website for allowable motion call days and times, and any days when the judge will not be hearing motions.
     
20. Deliver prompt, correct courtesy copies. The Local Rules require delivery of courtesy copies of to the Court within one day of filing. But some judges require same day courtesy copies if at all possible. For those judges, if you cannot deliver same day you should at least deliver early the next morning. Also, make sure you format the copies correctly. For example, most judges require exhibits to be separated by tabs, and some judges require that papers be bound on the left-hand side. And for many judges, you must include copies of any unreported cases cited in your papers.

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This is the second installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation.  The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinion over the last four years.  As you read them, let me know if you come up with others.  I will be glad to include them as I go.  Here are tips six through ten:

6.    Redact personal information.  Make sure that you are redacting personal information, social security numbers, phone numbers, etc., from any papers filed with the Court.  Most litigants are good at this in their pleadings.  But there is a significant drop off in attention to this rule in exhibits and other filed papers.  There can be serious consequences to running afoul of this rule both to the litigator and to the individual whose information is publicly disclosed.

7.    Attend hearings.  Parties often do not attend hearings because they expect a motion to by granted (for example, an extension of time or motion to withdraw when other counsel has appeared in the case) or because they do not have a stake in the motion between their opponent and a co-defendant.  This can be a critical mistake.  First, most judges require all parties' attendance at all hearing on a case.  Second, you cannot guarantee that issues implicating yoru client will not be addressed at the hearing.  And if they are addressed, you cannot necessarily count upon either your opponent or your co-defendant to protect your interests.

8.     Pay attention to the court reporter.  The hardest working person in the courtroom is almost always the court reporter; help them out.  Offer a card or spell your name on the record.  Speak clearly and at a modest speed.  As much as you may feel the need to, do not speak over your opponent.  If you are on a telephone conference, announce yourself when you speak.  This both helps the reporter and makes the record much more clear.

9.    Attend hearings by phone sparingly.  In deference to the cost of bringing non-Chicago counsel to every hearing, many judges in the Northern District liberally permit attendance by telephone.  This is an enormous convenience and cost-savings, but when not used carefully can have a negative impact on your case.  It is impossible to interpret a judge's visual cues on the phone, unless they describe them to you at which point it is far too late.  If the hearing is of any import, either attend live or send local counsel fully prepared to address all issues, if live attendance is not possible.

10.    Listen on phone hearings.  Too many lawyers when given an opportunity to argue their point during a telephonic hearing, speak until they are done.  That has the advantage of getting your point across, but you have no idea if the judge is trying to ask you a question or even stop you completely.  And when you are speaking into a speakerphone, you cannot hear anyone else, most importantly the judge, that may be trying to stop you or ask you a question.  In the best case, that leaves the judge exasperated, and in the worst case the judge may view you as disrespectful, unnecessarily argumentative and as not listening to the Court.  None of these are good results, and it is easily avoidable if you teach yourself to pause periodically.  The pauses give you the time for the Court to give you verbal cues that you could get visually or verbally in the courtroom.

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For the next five Fridays, I will be running a series of twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation.  The tips are not in a particular order, so I will not countdown backwards to tip number one.  Why twenty-five?  I found that beyond twenty five, the tips became focused upon minutia. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinion over the last four years.  As you read them, let me know if you come up with others.  I will be glad to include them as I go.  Here are the first five:

1. Draft complaints to meet both the Local Rules and the Judge's requirements. There are pleading requirements in the Local Rules that are pretty standard, but do not make the mistake of failing to review them because they may not be the same as courts you are more familiar with. And do not stop at reading the Local Rules, check out requirements of specific judges before deciding, for example, how many unrelated parties to put into a single patent complaint. Click here for some examples of opinions to consider.
    
2. Repeat plaintiffs' allegations in your answers. Local Rules require that you repeat the complaint paragraphs in your answer. Most judges will not return your answer for failing to do so, but some will. And even if they do not, you render your answer far less useful a tool for the judge and her chambers.
    
3. Deliver courtesy copies. The Local Rules require courtesy copies be delivered within one business day, and some judges' standing orders require same day delivery. Opinions chastising counsel for failing to provide courtesy copies are surprisingly frequent. But even if your judge does not penalize you for failing to meet the courtesy copy requirements (and some will) if your motion or response is on a tight schedule you run the risk of not being fully heard. For example, if you are filing a response brief the day before a motion is to be heard and you bring your courtesy copies with you to the hearing you have only the slimmest chance that your brief is being read and digested before the hearing.
    
4. Certificates of service are not required when all parties are on ECF. This may not be mission critical, but using an unnecessary certificate of service signals to your opponent that you are not well versed in the Local Rules or custom. That is not necessarily a fact that you want to give away.
    
5. Signature blocks require both email and a fax number. Despite the 2008 revision to Federal Rule of Civil Procedure 11, many litigators still do not add email or fax numbers to signature blocks. I have not seen anyone sanctioned or warned for this omission yet, but you do not want to be the first.

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The Northern District of Illinois sent the following invitation to e-filers for its eleventh annual Awards for Excellence in Pro Bono and Public Interest Service next Wednesday, May 26, 2010 at 3:00pm in the Dirksen courthouse:

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President Obama announced a couple of nominations this week impacting the Northern District of Illinois and the national patent bar.

First, President Obama appointed WilmerHale partner Edward DuMont to the Federal Circuit.  DuMont clerked for the Seventh Circuit's Judge Posner and was an Assistant to the Solicitor General where he briefed and argued Supreme Court cases.  DuMont currently has an appellate practice with a considerable focus on patent and intellectual property issues (click here for DuMont's firm bio).  DuMont also spent a year working for a law firm in Bangkok, Thailand.  DuMont's Supreme Court and varied appellate experience make him a very interesting choice to take Judge Michel's place on the Federal Circuit bench.

Second, President Obama has nominated the Northern District's Deputy U.S. Marshall Senior Inspector Darryl McPherson to become the Northern District's next U.S. Marshall.  McPherson has served as a Deputy U.S. Marshall since 1999 and won a Special Recognition award for his service as lead Deputy Marshall for Judge Lefkow. 

Both nomination must be confirmed by a vote of the U.S. Senate. 

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When I wrote the title to this post it was difficult to capture how significant this story is to practitioners.  The Northern District of Illinois has introduced an online transcript ordering system that can be used to order transcripts from any judge and court reporter in the Northern District.  The Northern District believes this is the first system like it in the federal courts.  This simple form -- click here to access it -- transforms what used to be an individualized process that was often difficult to navigate for both practitioners and the court reporters themselves because it required identifying the particular court report and then trying to reach the reporter, who likely spends most of the business day in court or back at their office performing the complex task of turning the rough transcript into the record of the court's proceedings.  And it further simplifies the process by identifying the available delivery and timing options for the transcripts, so that the reporters do not have to explain the options to each attorney that calls them.

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The Northern District of Illinois continued its historically busy intellectual property docket in 2009.  For the first time in several years, there was a slight decrease in patent case filings. Of course, that is not surprising in light of a difficult economy and patent filings being down across the country. And I suspect that the new Local Patent Rules* will result in an increase in patent litigation filings for 2010. Trademark cases bucked their downward trend over the last several years, and were up by about 10% over 2008. Finally, copyright cases continued a relatively steep decline.  But despite the decline, the Northern District maintains one of the most active copyright dockets in the country.  This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2009 (data gathered from the Stanford IP Clearinghouse and Pacer):
 

*  Click here for much more on the Local Patent Rules in the Blog's archives.

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The most popular posts on the Blog during 2009, in terms of both views and reader questions, were those on the Local Patent Rules.  Because of high interest, I have plans for additional analysis this year.  This is the first of those posts.  In late 2009, I had an article published in Bloomberg Law discussing why the new Rules will drive patent cases to the Northern District of Illinois.  Bloomberg generously allowed me to post a pdf version of the story -- click here to download it -- and to repost it on the blog.  Here is the article:

The Northern District of Illinois enacted Local Patent Rules ("LPR" or "Rules") on October 1, 2009. The purpose of the Rules is to normalize patent litigation in the Northern District of Illinois and to streamline the patent litigation discovery process. See LPR, Preamble. The rules also make clear that the court does not intend to become a "rocket docket." In fact, the Rules create a schedule that would have cases ready for trial in a little over two years, although cases would not necessarily be tried at that time. That is at most a modest change from the court's average time to trial for all cases—about twenty-seven months, according to the most recent Federal Court Management Statistics.

The Northern District of Illinois did not intend that its new Rules would drive patent cases to Chicago, as has happened when other courts enacted local patent rules, such as the Eastern District of Texas. But despite its intentions, the Northern District of Illinois's plan to normalize patent litigation practice and streamline discovery will significantly increase patent filings in Chicago. To understand why the Rules will increase case filings, it is important to understand the process created by the Rules, and then look at the impact specific Rules will have for both patentholders and accused infringers.

The Rules

The Rules were drafted and revised after public comment by a committee comprised of practitioners representing a cross-section of the District's patent bar and four Northern District of Illinois judges: Chief Judge James F. Holderman, Judge Matthew F. Kennelly, Judge James B. Zagel, and Judge Amy J. St. Eve. The Rules were then enacted by the Northern District of Illinois judges.

The Rules require early discovery through substantial production obligations accompanying all parties' Initial Disclosures. The Rules also require parties to take early positions on the merits of their claims and defenses in the form of Initial Contentions, presumably based upon documents exchanged with Initial Disclosures. Finally, the Rules position claim construction at the end of fact discovery, and show a preference against summary judgment motions prior to claim construction.

Here is a more detailed look at the schedule and duties contemplated by the Rules:

Protective Order. A standard two-tier protective order is deemed entered when Initial Disclosures are served. LPR 1.4. Any party is free to seek modifications to the protective order. Id. The automatic entry of the order prevents discovery delays while parties negotiate a proposed protective order and reduces legal fees for the negotiation.

Initial Disclosures & Production. Two weeks after the accused infringer answers, or two weeks after the patentholder answers any counterclaims, the parties must exchange substantive, non-evasive Fed. R. Civ. P. 26(a) Initial Disclosures. LPR 2.1. And along with the Initial Disclosures, the parties must exchange initial document production.

LPR 2.1(a) requires patentholders to produce all documents regarding: 1) any sale, offer for sale or use of the patented invention before filing; 2) design, reduction to practice, or invention of the patented technology generally; 3) all communications with the U.S. Patent and Trademark Office (the prosecution history) for the patents in suit and any patents from which they claim priority; and 4) ownership of the patent. LPR 2.1(b) requires that along with its Initial Disclosures, an accused infringer produce: 1) documents sufficient to show the operation and construction of each element of any product or process specifically accused in the Complaint; and 2) copies of all known prior art. Additionally, all parties are required to identify which documents, by Bates number, fall into each required production category. For cases in which there are lengthy lists of accused products, both the production and the identification of documents by categories could be a significant undertaking early in a case.

Initial Contentions. Two weeks after Initial Disclosures are served, parties claiming patent infringement serve Initial Infringement Contentions that will likely be substantive because the patentholder should have the accused infringer's Initial Disclosure document production. LPR 2.2. Two weeks after Initial Infringement Contentions are served, accused infringers serve Initial Non-infringement, Unenforceability and Invalidity Contentions. LPR 2.3. Along with these contentions, accused infringers must produce any additional documents relied upon including prior art and technical information. Two weeks later, patentholders must serve an Initial Response to Invalidity Contentions. LPR 2.5.

Final Contentions. Twenty-one weeks after Initial Infringement Contentions, parties claiming infringement serve Final Infringement Contentions, and accused infringers serve Final Unenforceability and Invalidity Contentions at the same time. LPR 3.1. Four weeks later, accused infringers serve Final Non-infringement Contentions and parties claiming patent infringement serve Final Enforceability and Validity Contentions (after the final contentions, leave of Court is required for any amendments). LPR 3.2. This gives the parties about four months to complete the bulk of their technical discovery and depositions.

Final Contentions are not amendable without a Court order upon a showing of good cause and an absence of unfair prejudice to the opposing party. LPR 3.4. In a comment, the court noted that its adoption of a new, unargued claim construction would be an example of good cause.

Deadline for Stays Pending Reexamination. No party can seek a stay pending reexamination after serving its Final Contentions. LPR 3.5. The Rule, however does not create a presumption for staying cases pending reexamination prior to the cutoff date. Id.

Claim Construction. The claim construction process begins two weeks after defendant's Final Invalidity Contentions are served with an exchange of terms and proposed constructions. LPR 4.1(a). Within seven days of exchanging terms, the parties must meet and confer to agree upon no more than ten terms for construction by the court. Presenting more than ten terms requires prior leave of court and requires a showing of good cause. LPR 4.1(b).

Claim Construction Briefing. Five weeks after exchanging terms, accused infringers file opening claim construction briefs along with a joint appendix by all parties including the patents in suit and their prosecution histories consecutively paginated. LPR 4.2(a)-(b). Parties claiming patent infringement have four weeks to file response briefs. LPR 4.2(c). Accused infringers have fourteen days to file a reply. LPR 4.2(d). Any party offering witness testimony must include a sworn declaration and promptly make the witness available for deposition. If witness testimony is included in a response brief, the reply deadline is extended by seven days.

After the reply brief is filed, the parties have seven days to file a joint claim construction chart setting out each claim term, the proposed constructions, and the parties' proposal for a claim construction hearing.

Claim Construction Hearing. The Rules contemplate a claim construction hearing four weeks after the reply brief, but the judge can decline a hearing. LPR 4.3. The lack of a hearing may be a reason to allow a sur-reply brief. Id. A judge also may decide not to accept a reply brief. The parties must exchange all exhibits, including demonstratives, at least three days before a claim construction hearing. Id.

Fact Discovery Close. Fact discovery closes six weeks after the claim construction rulings, which triggers expert discovery followed by a dispositive motion deadline. LPR 1.3. Fact discovery is also suspended from four weeks after the LPR 4.1(a) exchange of claim terms, until the Court enters a claim construction ruling. LPR 1.3. This leaves parties free to focus on claim construction briefing without dealing with discovery issues at the same time.

Expert Discovery. Three weeks after the close of fact discovery, parties must make their initial expert witness disclosures for non-claim construction issues on which they have the burden of proof. LPR 5.1(b). Five weeks later, rebuttal expert witness disclosures are due. LPR 5.1(c). Expert depositions must be finished five weeks later. LPR 5.2. Supplementation of expert reports after the LPR 5.1 deadlines is presumed prejudicial and is not allowed absent a showing that the material could not have been added or amended earlier and that there is no unfair prejudice. LPR 5.3.

Trial. Cases should be trial ready approximately two years after the filing of the complaint. This would be slightly faster than the Northern District of Illinois's average time to trial of twenty seven months. But the Rules do not require that trial occur at that time, just that the case is ready for trial.

The Rules Will Drive Patent Cases to Chicago

While the Northern District has made clear that it is not transforming itself into a "rocket docket" like the District of Virginia or the Western District of Wisconsin, the newly enacted Rules will significantly increase patent litigation filings in Chicago. The cases will not proceed to trial faster than the Northern District's average for Eastern all cases of slightly more than twenty-seven months, but the path to trial will be significantly different as described above. The changes are even-handed, with Rules benefiting patentholders being largely offset by the Rules that benefit accused infringers. One might expect even-handed Rules to have little impact on filings, but in this case patentholders will conclude that the Rules provide enough value to overcome the Rules that benefit accused infringers. The Rules, therefore, will draw patent cases to the Northern District. Here are the particular elements of the Rules that will attract patent plaintiffs to the Northern District, along with an analysis of how the Rules nevertheless also benefit accused infringers.

1. Substantive Initial Disclosures & Document Production.

LPR 2.1 requires that parties exchange significant discovery along with their Initial Disclosures. In particular, accused infringers must produce documents sufficient to show how all specifically accused products or processes operate. LPR. 2.1(b). This early document production, which is generally contemplated by Rule 26 but almost never done in practice, will be a major draw for patentholders. The ability to get immediate technical information in discovery, without the expense of serving document requests, is significant. It allows patentholders to have information before preparing their Initial Infringement Contentions. Patentholders will also get a preview of invalidity defenses and patentholders receive all of this information early in the case, before they incur significant discovery costs.

But while LPR 2.1 will attract patent plaintiffs, it also benefits accused infringers. As described above, patentholders must make an initial document production as well, and their obligation is more significant. LPR 2.1(a). Additionally, as with accused infringers, patentholders must identify which documents correspond to each of the four categories. Having this early information will allow accused infringers to evaluate their defenses early in the case and prepare for early dispositive motions such as motions challenging ownership or validity based upon a bar date. And the documents will allow accused infringers to update affirmative defenses or add counterclaims before there could be any prejudice.

Finally, the accused infringers' production obligation regarding its products is only triggered if the patentholder specifically identifies the accused products in its complaint. This will strongly encourage plaintiffs to identify the accused products in the complaint. A standard which comports with the Twombly/Iqbal pleading standards and will lead to more focused patent litigations. R. David Donoghue, The Uneven Application of Twombly in Patent Cases: An argument for Leveling the Playing Field, 8 J. Marshall Rev. Intell. Prop. 1.1 (2008).

2. Defendant opens and closes Markman briefing.

Most Districts either have two rounds of concurrent claim construction briefing or a traditional opening-response-reply schedule with the patentholder opening and replying. Significantly, the Rules provide for a single set of briefs, with the accused infringer—not the patentholder—submitting the initial and final briefs. The court reasoned that this briefing schedule provided the best, most coherent set of papers because a patentholder's opening brief often argues for "ordinary" meanings of most terms without specific proposed definitions. Then after the accused infringer offers constructions in its response, the patentholder offers detailed constructions of those terms for the first time on reply. That scenario either leaves the accused infringer without a chance to answer the patentholder's constructions on the papers, or it requires a sur-reply. Similarly, concurrent briefing results in the parties arguing past each other, generating briefs that do not fully crystallize the issues for the court. Writing first and last, of course, benefits the accused infringer. But the patentholder saves money by only writing one brief and can make any follow up arguments during a hearing or seek a sur-reply if the court does not hold a hearing.

3. Late Claim Construction briefing.

The final major draw for patentholders is the late claim construction proceedings. In addition to cost savings in the briefing process, claim construction is set during the end of a floating fact discovery period that is scheduled to end forty-five days after the court rules on claim construction. Maintaining pre-claim construction uncertainty through most of discovery benefits patentholders. Furthermore, the Rules make clear that a judge can disregard early dispositive motions that would require claim construction before the claim construction contemplated by the Rules. LPR 1.1. So, patentholders may face fewer early summary judgment motions.

Conclusion

The Northern District of Illinois's Local Patent Rules are evenhanded, benefiting both patentholders and accused infringers. But the specific benefits afforded patentholders will drive patentholders to file in the Northern District of Illinois over other courts, some that may have faster times to trial.

R. David Donoghue is a litigation partner in Holland & Knight's Intellectual Property Group focusing on patent disputes. His practice spans diverse technology areas including cellular telephony, computer software, internet technologies, pharmaceuticals, automotive technologies, television production equipment, nutritional supplements, and numerous medical devices. He also has extensive intellectual property licensing experience. Mr. Donoghue was previously with Delphi, the world's largest automotive supplier, where he was a founding member of Delphi's Technology Licensing and Litigation group. Additionally, Mr. Donoghue founded and authors the Chicago IP Litigation Blog where he analyzes intellectual property cases in the Northern District of Illinois (www.chicagoiplitigation.com). He can be reached by phone at 312.578.6553 or by email at david.donoghue@hklaw.com.

© 2009 Bloomberg Finance L.P. All rights reserved. Originally published by Bloomberg Finance L.P in the Vol. 3, No. 48 edition of the Bloomberg Law Reports – Intellectual Property. Reprinted with permission. The views expressed herein are those of the authors and do not represent those of Bloomberg Finance L.P. Bloomberg Law Reports® is a registered trademark and service mark of Bloomberg Finance L.P.

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Kolcraft Enter., Inc. v. Chicco USA, Inc., No. 09 C 339, Slip Op. (N.D. Ill. Oct. 23, 2009) (Norgle, J.)

Judge Norgle denied defendant Chicco's § 1404(a) motion to transfer this patent case to the Eastern District of Pennsylvania, where Chicco's principle place of business is located. Neither court was more suited for the case in terms of speed or familiarity with the law. The Court also noted that the location of documents was neutral based upon electronic document exchange. The convenience of the parties was also neutral because one party would be inconvenienced by the decision either way. Additionally, the situs of material events was irrelevant as in most patent cases because the comparison of an accused product to a claim does not revolve around any location. 

As to non-party witnesses, one inventor was within the Northern District and the other was outside the subpoena power of both districts. And patent prosecution counsel also resided within the Northern District. Additionally, plaintiff agreed to depose all U.S. parties in their home districts, further diminishing that factor. Finally, the Court held that plaintiff's choice of forum deserved significant weight. The Court, therefore, denied Chicco's motion to transfer. 

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Last month I had the opportunity to participate in a panel discussing the Northern District of Illinois' new Local Patent Rules* hosted by Applied Discovery. In addition to me, the panelists were:

• Mark Ouweleen of Bartlit Beck
   
• David Callahan of Kirkland & Ellis

The panel briefly touched on the mechanics of the Rules, and then dove into the implications of the Rules for Northern District patent litigation generally, as well as specific issues litigants will likely face with the Rules. Here are some of the highlights:

• The Rules will increase patent litigation filings in the Northern District despite the fact that the 2+ year trial timeline does not create a rocket docket.

• The Rules are widely accepted as positive by both sides of the bar.

• The Initial Disclosure document production requirements will have the most significant impact. Plaintiffs will need to prepare their cases early, and defendants cannot delay prior art searches.

• The combination of early document production and early initial contentions means that parties will not be able to use the first six months of a patent case to try settling it without much investment in the case.

• Ouweleen pointed out that other courts have used the contention disclosures to exclude new information after content deadlines without a showing of good cause. That places a premium on early prior out searches and fleshing out each party's technical case early.

• Callahan believed that the Rules will focus cases on the substantive issues, instead of negotiating over protective orders and interrogatory responses. That is a benefit to judges (reduced motion practice), litigants (reduced cost), and litigators (more time to focus on the art of lawyering and the substantive case).

It will be very interesting to test the accuracy of these predictions once we have a year or two of data using the Rules.

*  Click here for much more on the Blog's archives about the Local Patent Rules.

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Following up on posts analyzing the Northern District's Local Patent Rules over the last several weeks (click here (for analysis of the Rules, here (for a comparison of the enacted Rules to the Proposed Rules) and here (arguing that the Rules will increase patent litigations in the Northern District of Illinois) for those posts and here for a copy of the Rules), I have prepared the following chart laying out the schedule contemplated by the Rules in an easy to reference format.  As I promised earlier, I will begin a series of posts soon looking at each Rule or group of Rules in more detail.

Key Time Intervals:

To Final Infringement Contentions: 7-8 months

To Claim Construction Hearing: 13-14 months

To Summary Judgment Motions: 19-20 months

To Trial: 25-26 months

* The Answer deadlines are approximate and can be impacted by waiver of service, extensions granted by the Court and when the Complaint is served, among other factors.

** LPR 3.3 references LPR 3.2 Final Invalidity Contentions. LPR 4.1(a) sets the claim construction dates based upon "Final Invalidity Contentions pursuant to LPR 3.2." These are likely artifacts from the Proposed Local Rules. In the Proposed Local Rules, LPR 3.2 addressed Final Invalidity Contentions which were served after Final Infringement Contentions. In the Rules as issued, however, LPR 3.2 controls Final Non-Infringement, Enforceability and Validity Contentions, and LPR 3.1 addresses Final Invalidity Contentions, among others. I understand a correction is likely to be issued clearing this up in the next week or so. As a result, this chart treats the references to the Final Validity Contentions in LPR 3.3 and LPR 4.1(a) to refer to the LPR 3.1 Final Invalidity Contentions.

*** LPR 3.6 schedules the due date for opinion of counsel disclosures and production at the close of fact discovery, but does not say whether it is at the initial pre-claim construction close or the post-claim construction close. I suspect it will ultimately end up after the claim construction process, so that it need not be dealt with if the case is resolved by the claims constructions. But for the sake of safety, it is included at the earliest possible date in this chart.

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While the Northern District has made clear that it is not transforming itself into a rocket docket like the Eastern District of Virginia or the Western District of Wisconsin, the newly enacted Local Patent Rules (“Rules” or “LPR”)* are going to have a significant impact on patent litigation filings in Chicago. The cases will not proceed to trial faster than the Northern District's average for all cases of slightly more than two years, but the path to trial will be significantly different. The changes are even-handed, benefiting both patentholders and accused infringers.  One might expect even-handed Rules to have little impact on filings, but in this case patentholders will likely decide that the Rules provide enough value to overcome the portions of the Rules that benefit accused infringers.  The Rules, therefore, will draw patent cases to the Northern District. Here are the particular elements of the Rules that will attract patent plaintiffs to the Northern District:

1.      Substantive Initial Disclosures & Document Production.

LPR 2.1 requires both parties to exchange substantive, non-evasive Rule 26(a) Initial Disclosures. Furthermore, LPR 2.1(b) requires that along with its Initial Disclosures, an accused infringer produce: 1) documents sufficient to show the operation and construction of each element of any product or process specifically accused in the Complaint; and 2) copies of all known prior art. This early document production, which is generally contemplated by Rule 26 but almost never done in practice, will be a major draw for patentholders. The ability to get immediate technical information in discovery, without the expense of serving document requests, is significant. It allows patentholders to have information before preparing their Initial Infringement Contentions. It also allows patentholders to evaluate the strength of their cases early using the technical information produced by the accused infringers, before incurring significant discovery expenses.

But while LPR 2.1 will attract patent plaintiffs, it also benefits accused infringers. LPR 2.1 also requires patentholders to make an initial document production, and patentholders have a more significant obligation. They must produce not just documents sufficient to show, but all documents regarding: 1) any sale, offer for sale or use of the patented invention before filing; 2) design, reduction to practice or invention of the patented technology generally; 3) all communications with the PTO (the prosecution history) for the patents in suit and any patents from which they claim priority; and 4) ownership of the patent. Additionally, as with accused infringers, patentholders must identify which documents correspond to each of the four categories. Having this early information will allow accused infringers to evaluate their defenses early in the case and prepare for early dispositive motions such as motions challenging ownership or validity based upon a bar date. And the documents will allow accused infringers to update affirmative defenses or add counterclaims before there could be any prejudice.

Finally, the accused infringers' production obligation regarding its products is only triggered if the patentholder specifically identifies the accused products in its complaint. This will strongly encourage plaintiffs to identify the accused products in the complaint. A standard which comports with the Twombly/Iqbal pleading standards – click here to read my article on the uneven application of the Twombly standard between patentholders and accused infringers.

2.      Defendant opens and closes Markman briefing.

Most Districts either have two rounds of concurrent claim construction briefing or a traditional opening-response-reply schedule with the patentholder opening and replying. Significantly, the Rules provide for a single set of briefs with the accused infringer—not the patent holder—submitting the initial and final briefs. Writing first and last benefits the accused infringer. But economically, the patentholder saves money by only writing one brief and can make any follow up arguments during a hearing or seek a sur-reply if the Court does not hold a hearing.

3.      Late Claim Construction briefing.

The final major draw for patentholders is the late claim construction proceedings. In addition to cost savings in the briefing process, the claim construction is scheduled during the later portion of a discovery period that is scheduled to end forty-five days after the Court rules on claim construction. Maintaining pre-claim construction uncertainty through most of discovery benefits patentholders. Furthermore, the Rules make clear that a judge can disregard early dispositive motions that would require claim construction before the claim construction contemplated by the Rules. So, patentholders may face fewer early summary judgment motions.

Conclusion

The Rules are evenhanded, benefiting both patentholders and accused infringers. But the specific benefits afforded patentholders will still drive patentholders to file in the Northern District of Illinois over other courts, some that may have faster times to trial, with different rules.

* Click here for my post analyzing the Rules and here for my post analyzing the differences between the Rules and the Proposed Rules.

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Yesterday, October 1, 2009, the Northern District of Illinois adopted Local Patent Rules ("LPR" or "Rules"), effective immediately -- click here for a copy of the Rules.  According to LPR 1.1, the Rules apply to all cases filed in or transferred to the District after October 1, 2009.  Judges are also free to apply all or part of the Rules to currently pending cases.  Late yesterday, I analyzed the schedule contemplated by the Rules -- click here to read that post. 

In this post, I am going to focus on the handful of substantive changes between the new Rules and proposed local patent rules ("Proposed Rules") first issued earlier this year for the benefit of those members of the Northern District Bar that have closely followed the enactment of these Rules.*   As a side note, the Rules show that the Court seriously considered the comments made during the public session to discuss the Proposed Rules earlier this year.  The overall schedule set out by the Rules is also almost identical to that created by the Proposed Rules, with a few additions additions and a lengthening of about two weeks.

Over the next several weeks, I will break down each LPR in more detail.  I will also post a schedule of the timing contemplated by the Rules in a table format, but for now here are highlights of the significant changes between the Proposed Rules and the Rules as enacted yesterday:

Some of the more significant changes the Court made from the Proposed Rules to the LPR as enacted:

• Early Dispositive Motions (LPR 1.1 & 6.1):  A statement was added in LPR 1.1 that the Court may defer any motion filed before the LPR Section 5 claim construction process until after the Claim Construction Proceedings.  A new comment to LPR 6.1 explains that the Court has discretion in determining whether to consider "early" summary judgment motions;
  
• Protective Order (LPR 1.4):  The Proposed Rules requirement that the parties file an agreed Protective Order in the form of LPR Appendix B -- click here for the form Protective Order -- seven days before exchanging LPR 2.1 Initial Disclosures was removed.  Instead, the Appendix B Protective Order will be deemed to be in effect from the date of the Initial Disclosures and either party can seek to modify it;
  
• Meaningful Initial Disclosures (LPR 2):  The initial comment requires that the LPR 2.1 Initial Disclosures be "meaning - as opposed to boilerplate - and non-evasive.  This is not a change from the Proposed Rules, but is worth an additional mention;
  
• Initial Disclosures (LPR 2.1):  The Initial Disclosures deadline remains fourteen days after defendant files its answer, but in the event that defendant files counterclaims the deadline is now extended to fourteen days after plaintiff answers the counterclaims.  It is also worth mentioning again although it is not an addition to the Proposed Rules, that all parties have affirmative production requirements, outlined in LPR 2.1(a) & (b), along with the preparation and exchange of Initial Disclosures;**

• Initial Infringement Contentions (LPR 2.2(e)):  In addition to identifying direct and indirect infringement in Initial Infringement Contentions, where a direct infringement is based upon joint acts of multiple parties, each party's direct infringement role must be described;
  
• Final Infringement, Unenforceability and Invalidity Contentions (LPR 3.1):  The Rules require that the party claiming infringement serve its Final Infringement Contentions twenty-one weeks after serving Initial Infringement Contentions.  And the Rules require the accused infringer to serve its Final Unenforceability and Invalidity Contentions at the same time.  The Proposed Rules originally required just Final Invalidity Contentions and gave the accused infringer twenty-eight days after the Final Infringement Contentions to serve them;
  
• Final Non-infringement, Enforceability and Validity Contentions (LPR 3.2):  The Rules require that the accused infringer serve its Final Non-infringement Contentions twenty-eight days after service of the Final Infringement Contentions.  And the Rules require that the party claiming infringement serve at the same time its Final Contentions in Response to any Final Unenforceability and Invalidity Contentions;
  
• Amendment of Final Contentions (LPR 3.4):  The Rules add the following example of good cause for amending Final Contentions -- the Court adopting a construction different from the construction proposed by the party seeking to amend;
  
• Discovery Concerning Opinions of Counsel (LR 3.6):  The Rules add a deadline -- thirty-five days before the close of fact discovery, also seven days after the Court enters its claim constructions -- for an accused infringer to disclose whether it will rely upon an opinion of counsel and outlines the categories of information that must be produced at that deadline should the party rely upon an opinion;
  
• Claim Construction Briefs (LPR 4.2(a) & Comment):  The opening brief deadline was extended from one week from twenty-eight to thirty-five days after the LPR 4.1 exchange of claim terms.  The Comment to LPR 4.2 explains that the Rules only contemplate three briefs because of the expected hearing, but that a judge may choose not to have a hearing, which could be grounds for allowing a sur-reply.  The Comment also explains that a judge can choose not to have a Reply Brief;
  
• Claim Construction Declarations (LPR 4.2(a) & (c)):  Any party that offers witness testimony in its briefing must include a sworn declaration and make the witness promptly available for deposition.  If the Responsive Brief includes such a declaration, the Reply Brief deadline is extended seven days from fourteen to twenty-one days; and
  
• Claim Construction Hearing (LPR 4.3):  Hearing exhibits, including demonstratives, must be exchanged at least three days before a claim construction hearing.

*  Click here and here for the Blog's earlier analysis of the Proposed Rules.

**  This is one of the major changes that set the Northern District's LPR's apart from those of other districts and that will have a significant impact upon the discovery process.  I will focus more on this set of requirements in an upcoming post.

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Today, October 1, 2009, the Northern District of Illinois adopted Local Patent Rules ("LPR" or "Rules"), effective immediately -- click here for a copy of the Rules.  According to LPR 1.1, the Rules apply to all cases filed in or transferred to the District after October 1, 2009.  Judges are also free to apply all or part of the Rules to currently pending cases.  The new Rules are substantively very similar to the proposed local patent rules ("Proposed Rules"),* with a series of modifications that shows that the Court seriously considered the comments made during the public session to discuss the Proposed Rules earlier this year.  The overall schedule is also almost identical, with additions and a lengthening of about two weeks.

Over the next several weeks, I will break down each LPR in more detail.  I will also post a schedule of the timing contemplated by the Rules in a table format, but for now here are highlights of the new Rules:

• Protective Order:  A standard protective order is deemed entered as of the exchange of Initial Disclosures with any party free to seek modifications, to avoid discovery delays being blamed upon entry of a protective order (LPR 1.4);
   
• Initial Disclosures & Production:  Automatic document production requirements of both parties claiming patent infringement and accused infringers when Initial Disclosures are served and of accused infringers when Initial Non-infringement and Invalidity Contentions are served;**
   
• Initial Contentions:  Fourteen days after Initial Disclosures, parties claiming patent infringement serve Initial Infringement Contentions.  Fourteen days after Initial Infringement Contentions are served, accused infringers serve Initial Non-infringement, Unenforceability and Invalidity Contentions.  Fourteen days later, parties claiming patent infringement parties claiming patent infringement serve an Initial Response to Invalidity Contentions;
   
• Final Contentions:  Twenty-one weeks after Initial Infringement Contentions, parties claiming infringement serve Final Infringement Contentions, and accused infringers serve Final Unenforceability and Invalidity Contentions at the same time.  Twenty-eight days later, accused infringers serve Final Non-infringement Contentions and parties claiming patent infringement serve Final Enforceability and Validity Contentions (after the final contentions, leave of Court is required for any amendments);

• Post-Final Contention Amendments:  Amendments to Final Contentions are not allowed absent Court order upon a showing of good cause and an absence of unfair prejudice to the opposing party;
   
• Deadline for Stays Pending Reexamination:  No party can seek a stay pending reexam after serving its Final Contentions;
   
• Claim Construction:  The claim construction process begins two weeks after defendant's final invalidity contentions are served with an extension of terms and proposed constructions;
   
• Claim Construction Briefing:  Thirty-five days after exchanging terms, accused infringers file opening claim construction briefs along with a joint appendix by all parties including the patents in suit and their prosecution histories consecutively paginated.  Parties claiming patent infringement have twenty-eight days to file response briefs.  Accused infringers have fourteen days to file a reply.  Any party offering witness testimony must include a sworn declaration and promptly make the witness available for deposition.  If such testimony is included in a response brief, the reply deadline is extended by seven days;
   
• Claim Construction Hearing:  The Rules contemplate a claim construction hearing twenty-eight days after the reply brief, but the judge can decline a hearing.  The lack of a hearing may be a reason to allow a sur-reply brief.  A judge also may decide not to accept a reply brief.  The parties must exchange all exhibits, including demonstratives, at least three days before a claim construction hearing;
   
• Fact Discovery Close:  Fact discovery closes forty two days after the claim construction rulings, which triggers expert discovery followed by a dispositive motion deadline; and
   
• Trial:  A trial is contemplated approximately two years after the filing of the complaint.

*  Click here and here for the Blog's earlier analysis of the Proposed Rules.  And click here for my explanation of the significant differences between the Proposed Rules and the final Rules.

**  This is one of the major changes that set the Northern District's LPR's apart from those of other districts and that will have a significant impact upon the discovery process.  I will focus more on this set of requirements in an upcoming post.

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Illinois's senior senator Dick Durbin recently sent President Obama the names of seven nominees to fill three vacancies on the Northern District of Illinois bench.  The nominees are AUSA Edmond Chang, Illinois appellate Judge Sharon Coleman, Magistrate Judge Susan Cox (click here to read about Judge Cox's IP opinions in the Blog's archives), Thomas Durkin, Gary Feinerman, Mary Rowland and Magistrate Judge Maria Valdez (click here to read about Judge Valdez's IP opinions in the Blog's archives). 

A hat tip to Ameet Sachdev at the Chicago Tribune's Chicago Law Blog for identifying this story last week.

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Last week, the Northern District provided tips for opening new cases using ECF.  The most important tip seems to be that the Clerk's office is there to help if you have any problems.  Here they are: 

• During the initial case opening sequence, select the correct divisional office (Chicago or Rockford) in which you want to file your case.
  
   
• If you want to practice opening a case, use the training application here, not a live ECF session. 
   
• If you make a mistake while opening your new civil case, do not open a new case or complete the current case with the mistake.  Instead, exit the case opening sequence before it is complete, if possible, and call the Clerk's Office at 312-582-8727.  They will help you correct the mistake.
    
• If you have opened a case incorrectly, do not open another case, call the Clerk's office and they can help fix the mistake in the originally opened case. 
   
• If you are not sure how to open a civil case, you can find instructions at:  E-Filing Information. 
   
• If you are not able to pay the filing fee while e-filing your initiating document, use one of the events in the Civil/Other Filings/Notices category to pay the fee.
   
• When submitting a Notice of Removal, enter the Court name and Case number for the State court case. (See Step No. 35 in the instructions for opening a civil case). The parties should be added as they were named in the complaint filed in the State Court. 
   
• The summons form(s)should be emailed to intake_ilnd@ilnd.uscourts.gov. You should not attach them to the complaint or efile them. 

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The Northern District recently sent out the following notice of a memorial service for Judge Moran to all e-filers:

The Judges of the United States District Court
for the Northern District of Illinois
cordially invite you to attend the
Memorial Service
in Remembrance of
Honorable James B. Moran
Monday, July 13, 2009, beginning at 3:30 p.m.
James Benton Parsons Memorial Courtroom
Everett McKinley Dirksen United States Courthouse
Twenty-fifth floor
219 South Dearborn Street
Chicago, Illinois

Reception immediately following in the 25th floor lobby,
Please RSVP by July 9, 2009 via e-mail
To JudgeMoranMemorialService@ilnd.uscourts.gov

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As of June 15, the Northern District of Illinois is requiring that all sealed or restricted documents be e-filed through the Northern District's ECF system.  And sealed documents may only be filed pursuant to a protective order or by leave of court.  Click here for the Court's filing under seal instructions.

The Northern District is also requiring that cases be opened electronically through the Northern District's ECF system.  Click here for the Court's instructions for opening civil cases.

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Last Friday, May 29 the Northern District held its tenth annual pro bono awards ceremony.  Federal Bar Association President Juanita Sales Lee was the keynote speaker.  The Court gave out both Awards for Excellence in Pro Bono and an Award for Special Service to the Court.  The Excellence awards went to:

• Richard L. Marcus of Sonnenschein Nath Rosenthal LLP (presented by Judge Cox);
   
• Howard L. Mocerf, Richard P. Darke and Amy E. McCracken of Duane Morris LLP (presented by Judge Manning);
   
• Kate Jillian Grossman of Sidley Austin LLP (presented by Judge Schenkier);
   
• Edward M. Fox of Ed Fox & Associates (presented by Chief Judge Holderman);
   
• Jeffrey D. Colman of Jenner & Block LLP (presented by Judge Bucklo);
   
• James P. Condon of Central States Funds (presented by Judge St. Eve and Judge Cole);
   
• Michael George Kelly of the Law Offices of Chadwick & Lakerdas (presented by Judge Manning and Judge Cox);
   
• Arthur J. Howe of Schopf & Weiss LLP and Julie Ann Sebastian of Cook County State’s Attorney’s Office (presented by Judge Lefkow);

And the Special Service Award went to:

• Joel Daly, District Court Information Officer (presented by Chief Judge Holderman).

Congratulations to all of the recipients, and thanks to all of the award recipients for their service.

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The Northern District judges are seeking public comment on a new set of proposed Local Patent Rules -- click here to email Northern District Clerk Michael W. Dobbins with comments and here to download a copy of the proposed Patent Rules.  The rules lay out a schedule that mirrors the Northern District of California and Eastern District of Texas patent rules in requiring initial infringement, noninfringement and invalidity contentions.  But the proposed Patent Rules have some significant and interesting differences.  In particular, the claim construction process, which occurs near the end of fact discovery, provides for an opening brief by the accused infringer, a response brief by the patent holder and a reply brief by the accused infringer.  Here is a general outline of the timeline and procedure dictated by the Patent Rules:

• A standard protective order in place from the beginning of the case, unless and until it is modified, to avoid discovery delays being blamed upon entry of a protective order;
   
• Automatic document production requirements of plaintiff when initial disclosures are served and of defendant when initial noninfringement and invalidity contentions are served;
   
• Plaintiff serves initial infringement contentions two weeks after initial disclosures and defendant respond with initial noninfringement and invalidity contentions two weeks after that, followed two weeks later by plaintiff's response to the invalidity contentions;
   
• Plaintiff files final infringement contentions twenty one weeks after its initial contentions and defendant responds four weeks later with final noninfringement, invalidity and unenforceability contentions (after the final contentions, leave of Court is required for any amendments);
   
• No party can seek a stay pending reexam after serving its final contentions;
   
• The claim construction process begins two weeks after defendant's final invalidity contentions are served;
   
• Defendant files an opening claim construction brief along with a joint appendix including the patents in suit and their prosecution histories consecutively paginated, plaintiff then files a responsive brief within four weeks, and defendant has two weeks to file a reply;
   
• Fact discovery closes forty two days after the claim construction rulings, which triggers expert discovery followed by a dispositive motion deadline.

The Patent Rules are scheduled such that a patent trial should occur within two years of serving the complaint.  Assuming that schedule is enforced, it would result in a significant speeding up of, at least, the larger patent cases in the Northern District.

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The Northern District has set up a new page on its website collecting educational information about the Court and the Dirksen Courthouse.  The Northern District intends the site to help school groups planning to or interested in visiting the Court.  It is a great resource for visiting school groups, but it is also interesting for members of the Northern District Bar.  In addition to logistical information and educational background on the operations of the district courts, it also provides the Court's historic highlights.  For example, there are lists of famous trials and appeals.  No patent cases made the list, they were bumped by defendants like Capone, Hoffa, the Chicago Seven and public officials from Project Graylord.

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On March 3, the Northern District will celebrate 190 years of Illinois federal courts.  The celebration begins at 3:00 pm with a program in the Dirksen Courthouse ceremonial courtroom, Room 2525.  The Northern District bar is invited to the celebration, e-mail rsvps to ilnd_190th_Anniversary@ilnd.uscourts.gov.

The celebration will include a panel of Northern District judges discussing "The Future of the Federal Courts" and a sketch of the court's history by Richard Cahan, the author of A Court That Shaped America: Chicago’s Federal District Court from Abe Lincoln to Abbie Hoffman.  The celebration also serves as the grand opening of the court's exhibit:  “The 190th Anniversary of
the United States District Court in Illinois: A Celebration of the Federal Judiciary’s Contribution
to Illinois and the Nation.”  The exhibit, featuring court artifacts, photographs and sketches will remain on display through May 1, 2009, and will be located on the second floor of the Dirksen United States Courthouse.

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Magistrate Judge Mason's term ends on September 28, 2009.  As part of considering reappointing Judge Mason for an additional eight year term, the Northern District is establishing an advisory panel of Northern District citizens.  Additionally, the Northern District Clerk is accepting written comments to regarding Judge Mason to assist the panel until March 20, 2009 at the following address:

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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2008 was another busy IP year for the Northern District of Illinois.  Once again, there was an increase in patent case filings, and the Northern District continues to be among the top five patent dockets in the country and the most active district court in the Seventh Circuit by far.  Trademark cases were steady, with only two fewer filings than in 2007.  And as with its patent docket, the Northern District's trademark docket continues to be one of the five most active in the country.  Finally, copyright cases continued a relatively steep decline.  But despite the decline, the Northern District maintains one of the most active copyright dockets outside of California and the Southern District of New York.  This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2008 (data gathered from the Stanford IP Clearinghouse):

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As usual, the Northern District will be closed for both Thanksgiving Day and the Friday after, November 27 and 28.  Additionally, the Clerk's office will close this Thursday, November 20 from 3:30-4:30 pm for a special meeting.  The drop box and ECF filing will still be available, but if you want to file in person get there earlier in the day or after 4:30.

[UPDATE:]  To those who have wondered, the more standard case analysis posts will be returning shortly -- likely late this week, but at least early next.  I am working through procedures with my new shop.

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BorgWarner, Inc. v. Hilite Int’l., Inc., No. 07 C 3339, 2008 WL 3849908 (N.D. Ill. Aug. 14, 2008) (Zagel, J.)

Judge Zagel denied defendant Hilite’s 23 U.S.C. §1404(a) motion to transfer. Plaintiff BorgWarner filed this patent infringement suit over variable camshaft timing (“VCT”) in June 2007. Hilite answered and counterclaimed in March 2008. Five days after answering, Hilite filed a suit in the District of Delaware alleging that BorgWarner infringed Hilite’s VCT patent. Hilite reasoned that its VCT case was related to a prior Delaware patent case filed by BorgWarner on the patent currently at issue in the Northern District, and, therefore, by the transitive property this suit and BorgWarner’s closed Delaware case were related.

While the Seventh Circuit does not strictly follow the first-to-file rule, its use was warranted in this case. BorgWarner’s choice of forum deserved some deference. And the Northern District, while equivalent to Delaware in terms of time to trial, was significantly faster for average disposition without court actions – 6.2 months in the Northern District to 12.5 months in Delaware. Convenience factors were neutral, and therefore weighed in favor of keeping the case in the Northern District.

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Here are several stories worth checking out, but that did not warrant a separate post:

• PA Tracer's monthly patent filings report is out.  The Northern District had nine new cases filed in July.  That is reasonably busy for the deep summer, but nothing compared to the Eastern District of Texas's 25 new patent cases -- click here to read PA Tracer's post.
   
• The St. Louis Post-Dispatch ran a story recently about Judge St. Eve -- click here to read it.*  The story discusses many traits that are obvious to those who have practiced before her.  Judge St. Eve is very punctual and efficient, and she has absolute control of her courtroom, which she maintains with a civility and kindness that are impressive.  The article also speculates, using unnamed colleagues and media as sources, that Judge St. Eve will eventually be on Supreme Court short lists.  Here's hoping she stays in the Northern District a long time before getting called up to One First Street.
   
• Chicago Lawyer Magazine did a nice profile on Chicago IP lawyer Carol Genis of Bell, Boyd & Lloyd.  Click here to read it.  The article largely focuses on how Genis develops strong bonds of trust and friendship with clients.
   
• Duane Valz, Vice President & Associate General Counsel of Yahoo!’s Global Patent Strategy, is discussing approaches for patenting Internet-related ideas in a webinar on Wednesday, September 3 from 1:30 - 3:00 CT -- click here for more information.

*  Hat tip to the WSJ Law Blog for pointing out the story here.

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The Northern District had 72 trademark cases filed during the first half of 2008.  That is well on the way to meeting or exceeding 2007's total of 138 cases -- click here to read about the 2007 case filings.  So, it looks like, as with patents, the Northern District continues to have an active trademark infringement docket.  A difficult economy is not slowing the Northern District's IP cases.

Thanks to Mike Atkins at the Seattle Trademark Lawyer for the idea of a mid-year status report.  Expect a similar copyright mid-year report shortly.

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1. Eastern District of Texas -- 32 filings
   
2. District of Delaware -- 24 filings
   
3. Central District of California -- 20 filings

Patent Appeal Tracer also mentions EZ4Media's two Northern District cases against thirteen defendants as cases to watch.  The defendants in those cases are alleged to infringe patents to wireless streaming of digital media.

[UPDATE:] More on the year's trademark and copyright filings is coming next week, prompted by Mike Graham's Seattle Trademark Lawyer post about this year's Western District of Washington trademark litigation statistics -- click here to read it.  Thanks for the mention Mike.

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Here are a few IP news items from the weekend and this morning that you will find interesting:

• Blawg Review #149 is up at the Antitrust Review with several IP-related links.
  
• Patent lawyer Duncan Bucknell is hosting the March Carnival of Trust, which I will host on the first Monday of May.
  
• The Northern District's new website is live (and excellent, but more on that Friday), but may be causing you some trouble today.  It is requiring that you upgrade your browser to the most current version (if you have not already) in order to access the site.  I am told by reliable sources that the upgrade is not actually necessary and that the Northern District is working on a fix so that you should be able to access the site by the end of the day with any browser.

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There were 140 patent cases filed in the Northern District during 2007, an 11% increase from the 126 patent cases filed in 2006. This maintains the Northern District’s status as the fifth largest patent district. According to TrollTracker (click here for TrollTracker’s year end filing analysis), the Eastern District of Texas was first with 364 filings, more than 2.5 times the Northern District’s filings. The Central District of California came in a distant second with 272 patent filings, followed by the District of New Jersey at 187, the District of Delaware at 147 and then the Northern District. Of the Northern Districts 140* filings, 49 or 35% were disposed of during 2007.

A list of each case, the case number, the filing date and, where appropriate, the date the case was resolved are provided after the jump. In the next week or two, I will be doing similar posts for trademark and copyright cases filed during 2007.

A hat tip to the Maryland Intellectual Property Law Blog for its 2007 IP review series that pushed me to start my own review of 2007 IP cases.

* TrollTracker reports 137 patent cases. The discrepancy may be explained by several cases filed during the last few days of the year that did not make it to Pacer until after January 1.

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Late last week, President Bush signed the appointment papers for the Northern District's newest judge, the Honorable Robert M. Dow, Jr.  Judge Dow was sworn-in last Friday by Chief Judge Holderman and is sitting in the Northern District's Eastern Division.  Here is some biographical information about Judge Dow from the Northern District’s announcement of his appointment (click here for the announcement):

From 1993 to 1994, Judge Dow served as Law Clerk to The Honorable Joel M. Flaum of the United States Court of Appeals for the Seventh Circuit. Since 1995, Judge Dow has been employed at Mayer Brown, LLP, where he specialized in general and appellate litigation, with particular emphasis on telecommunications, state and federal constitutional law, jurisdiction, civil procedure, preemption, mass tort and products liability, admissibility of expert testimony, and class actions. Judge Dow has been acclaimed as a “superb” lawyer in the field of communications and technology law, as recognized by Chambers USA's Guide to America's Leading Business Lawyers. In his spare time, Judge Dow serves as Secretary for the Committee of Selection for the Rhodes Scholarships, State of Illinois, and on the Development and Academic Committees of Joliet Catholic Academy. Judge Dow was himself named a Rhodes Scholar in 1990. 

Judge Dow has had a distinguished academic career, with degrees from Yale University (B.A., 1987), University of Oxford (M. Phil. in International Relations, 1990; D. Phil. in International Relations, 1997), and Harvard Law School (J.D., 1993). While at Harvard Law School, in addition to graduating with honors, Judge Dow served as supervising editor of the Harvard Journal on Legislation, a member of the Editorial Board for the Harvard Human Rights Journal, and a Teaching Fellow at Harvard College.

Welcome to the Northern District Judge Dow. Judge Dow’s investiture ceremony is scheduled for Friday, January 11, 2008 at 4:00 pm.

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Kammin v. Smartpros, Ltd., No. 07 C 2665, 2007 WL 3046128 (N.D. Ill. Oct. 9, 2007) (Guzman, J.)

Judge Guzman transferred this copyright case to the Southern District of New York pursuant to 28 U.S.C. Section 1404. While plaintiff’s choice of forum is usually given significant weight, no party was a resident of the Northern District – both parties were New York residents. Furthermore, the non-party witnesses were closer to New York. And New York had a significant interest in deciding a case between its citizens regarding a dispute arising within New York.

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Mitchell v. First Northern Credit Union, No. 07 C 1891, 2007 WL 2948374 (N.D. Ill. October 4, 2007) (Norgle, J.).

Judge Norgle granted defendant Arizona State Credit Union’s ("ASCU") motion to transfer to the District of Arizona pursuant to 28 U.S.C. Section 1404 in this patent dispute. The Court acknowledged that plaintiff’s chosen forum was given significant weight. But the ease of access to the evidence in Arizona dictated that the case be transferred. Plaintiff was an Arizona resident, at least as of his filing date. And ASCU, all of its documents and all of its employees were in Arizona.

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Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 2156665 (N.D. Ill. Jul. 26, 2007) (Cole, M.J.)

Judge Cole granted in part defendant Little Lady Foods’ (“LLF”) Fed. R. Civ. P. 37 motion to bar evidence of allegedly late–identified trade secrets. Plaintiff Fast Food Gourmet (“FFG”) originally identified four trade secret elements of its process for making thin crust frozen pizza (you can read more about this case in the Blog's archives). FFG’s Vice President of Operations Crause identified four additional elements during his deposition. And FFG later identified two additional elements. LLF argued that FFG should be limited to the first four elements because FFG never updated its interrogatory responses to include the six additional elements. The Court held that the four additional elements disclosed during the deposition had “otherwise been made known” pursuant to Fed. R. Civ. P. 26(e) and, therefore, were not required to be added to FFG’s interrogatory responses. The Court excluded the other two elements. FFG argued that it had identified the elements by identifying documents containing the elements in its interrogatory responses pursuant to Fed. R. Civ. P. 33(d). But the Court held that the documents FFG identified only identified the two elements sporadically, and in connection with elements that were not trade secrets. This, combined with Crause’s testimony that he had identified all of the trade secret elements, made FFG’s Rule 33(d) statements insufficient.

Practice Tip: Rule 33(d) is often seen as a simple escape from answering cumbersome or difficult interrogatories. Of course, it is also often warranted. But when you use Rule 33(d), make sure to identify the correct documents, and make sure the identified documents fully support your position.

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Statistics compiled by the Patent Troll Tracker* blog show that the Northern District continues to play a prominent role in deciding the nation's patent disputes and, as a result, its IP disputes more generally.  Filings of patent cases for 2007 (through the end of July), show that the Northern District had the fourth most patent filings:

Another interesting statistic from this data:  with the exception of the E.D. Texas, all of the districts have a rough average of two to three defendants per case.  E.D. Texas averages about three and a half defendants per case.  I would have expected that E.D. Texas would average closer to five to ten defendants per case.  Perhaps all of the large patent licensing company cases that garner so much attention in Marshall are balanced by disputes between individual parties.

If readers are interested in these statistics, let me know and I will compile my own data and make it a regular (maybe quarterly) feature.

*  I appreciate the Patent Troll Tracker's statistics and even the effort he performs keeping track of cases filed by patent licensing companies, but as I have explained before I am no fan of name calling (by either plaintiffs' or defendants' counsel).  As such, I prefer the neutral term "patent licensing company."

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United States Gypsum Co. v. LaFarge N. Am., Inc., No. 03 C 6027, 2007 WL 2091020 (N.D. Ill. Jul. 18, 2007) (Hart, J.).

Judge Hart granted in part defendants motion to enforce the Court’s order and denied plaintiff’s motion to compel discovery. The Court previously ruled upon the parties’ cross-motions for summary judgment, holding that plaintiff’s state law claims were not preempted by the Illinois Trade Secrets Act, but significantly limiting the claims and removing some defendants (you can read more in the Blog’s archives). Defendant sought reconsideration of the Court’s preemption ruling. But the Court held that the motion, filed three months after the Court’s opinion, was untimely and that it presented no new arguments. The Court granted defendant’s request that plaintiff be limited to the trade secrets it identified during fact discovery and prior to summary judgment briefing.

Finally, the Court denied plaintiff’s motion to compel fact discovery. The motion was filed after the close of fact discovery and two months after plaintiff represented to the Court that only expert discovery remained to be completed.

Practice tip: File motions in a timely manner. It is especially important to file discovery motions during or at least near the discovery period.

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Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2071991 (N.D. Ill. Jul. 18, 2007) (Cole, J.).

Judge Cole recommended that the Court grant plaintiff’s motion for contempt. The parties previously settled this trademark case and agreed to a consent judgment which required, among other things, that defendants include “prominent” disclaimers on any advertisements, including webpages, offering plaintiff’s products for sale from the secondary market. Plaintiff filed a motion for contempt arguing that defendant’s website did not include prominent disclaimers. The Court agreed, explaining that prominence could be achieved in several ways, but that “fine print” was not one of them:

Being a relational and contextual concept, “prominence” may be achieved in any number of ways: placement of words, type size, typeface, text color, etc. Prominence, however, is not achieved by the use of fine print disclaimers that are substantially smaller than any other print on a page.

Practice tip: When drafting settlement agreements, or other contracts, watch out for subjective words like “prominence.”  If you expect that you may need to enforce the agreement* later, try to define subjective terms in more objective ways. For example, plaintiff in this case could have required that the disclaimer be at the top of each page in bolded font at least four points larger than the largest print on the page.

* If you expect that the agreement might be enforced against you, subjective terms may be beneficial.

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Meyer Intellectual Props. Ltd. V. Bodum, Inc., __ F.Supp.2d __, 2007 WL 2110931 (N.D. Ill. Jul. 24, 2007) (Shadur, J.).

Judge Shadur granted plaintiff’s motion for attorneys’ fees and costs related to a motion discovery dispute won by plaintiff, but modified its original award based upon defendant’s explanations (you can read more about this case in the Blog’s archives). The Court explained that the relevant Federal Rule, Fed. R. Civ. P. 37(a)(4)(A), could be paraphrased as “loser pays,” unless the Court finds the losing parties actions or lack of actions were justified or that other circumstances make a fee award unjust. The Court held that defendant’s explanation warranted reducing the original award by 50%. While the Court did not detail the explanation, this case identifies the broad discretion courts have in determining whether to award attorneys’ fees and costs, as well as the size of those awards.

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Meyer Intellectual Props. Ltd. V. Bodum, Inc., No. 06 C 6329, Slip Op. (N.D. Ill. Jul. 24, 2007) (Shadur, J.).*

Judge Shadur denied defendant’s motion to amend its answer adding an equitable estoppel defense. The Court noted that amendments were usually “generously” allowed, but defendant provided no justification for not including equitable estoppel in its original answer. Defendant argued that it required investigation to discover its equitable estoppel defense, but the Court noted that the information defendant relied upon was in defendant’s possession. So, there was no reason that defendant could not have conducted its investigation before filing its answer.

*  A copy of the Opinion is available here.

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Am. Needle, Inc. v. New Orleans Louisiana Saints, __ F. Supp.2d __, 2007 WL 2042764 (N.D. Ill. Jul. 11, 2007) (Moran, J.).

Judge Moran granted defendants, the NFL, NFL Properties and each of the thirty two teams (collectively the “NFL”) as well as Reebok International, Ltd. (“Reebok”), summary judgment on plaintiff’s Sherman Act antitrust claims, finding that the NFL acts through NFL Properties as a single entity for IP licensing purposes. For more than twenty years, NFL Properties licensed plaintiff to use various trademarks on its headwear. Plaintiff filed this suit after NFL Properties entered an exclusive license with Reebok, ending plaintiff’s license rights. Plaintiff argued that the NFL teams collectively, as well as in concert with Reebok, violated the antitrust laws by acting together through NFL Properties to license their collective intellectual property rights exclusively to Reebok (plaintiff argued that the NFL did not violate antitrust laws when it licensed to numerous parties, including plaintiff, through NFL Properties). But the Court held that licensing coordination between the NFL and its teams was equivalent to coordination between a corporation and its wholly-owned subsidiary. Because the Supreme Court treats corporations and their wholly-owned subsidiaries as single entities, there could be no conspiracy and no antitrust violation.

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The Northern District and the City of Chicago are working together to provide free wireless access in the Northern District’s Dirksen Federal Courthouse. The wireless connection is not available in any of the courtrooms (although it could be very useful during trials or hearings to have an internet connection), but it is available free of charge in the lobby and the second floor cafeteria. So, next time you arrive early for a hearing, take a few minutes to catch the Blog’s latest post.

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Steiner Indus., Inc. v. Auburn Mfg., Inc., No. 07 C 668, 2007 WL 1834176 (N.D. Ill. Jun. 22, 2007) (Darrah, J.).

Judge Darrah denied declaratory judgment defendant Auburn Manufacturing’s (“Auburn”) motion to dismiss. Auburn argued that plaintiff’s (collectively “DJ Plaintiffs”) suit improperly anticipated Auburn’s complaint which alleged Lanham Act claims of false designation and false advertising, as well as related state law claims. Auburn filed its complaint in the District of Maine within a week of DJ Plaintiffs’ filing. Auburn alleged that DJ Plaintiffs’ use of “FM Approved” and “Made in the USA” in their catalogs and website advertising in connection with their welding blankets constituted false designation and false advertising. DJ Plaintiffs were aware of the allegations before they filed suit because, as part of an ongoing negotiation with plaintiffs, Auburn had provided plaintiffs a copy of its complaint. The Court acknowledged its discretion to dismiss the case in favor of Auburn’s later filed complaint, but did not dismiss the case. The two cases mirrored each other, so either could resolve the parties’ dispute. And because both cases were filed in federal courts, there was no concern that the DJ case would cause friction between federal and state courts. The deciding issue was whether the Maine Court could offer a full remedy. DJ Plaintiffs had a motion to transfer or dismiss pending before the Maine Court. In that motion, DJ Plaintiffs argued that the Maine Court lacked personal jurisdiction over two of the three DJ Plaintiffs – Steiner Industries, Inc. and Lab Safety Supply, Inc. DJ Plaintiffs, therefore, asked the Maine Court to transfer the case to the Northern District of Illinois or to dismiss the case.  The Court held that if the Maine Court transferred the case to the Northern District or dismissed Steiner and Lab Safety for lack of jurisdiction, those factors would weigh in favor of maintaining the DJ action. If, however, the Maine Court denied DJ Plaintiffs’ motion and held that it had jurisdiction over all DJ Plaintiffs, then the Main Court could more effectively decide the dispute than the Northern District. The Court, therefore, denied the motion to dismiss with leave to refile if the Maine Court finds it has jurisdiction over all DJ Plaintiffs and does not transfer the case to the Northern District.

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Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. May 29, 2007).*

But because Northgate’s decision to sell infringing product post-verdict “needlessly multiplied” the case, the Court held that the post-verdict sales were exception and awarded plaintiff’s attorneys fees and costs incurred by the post-verdict sales motion. Additionally, the Court entered a permanent injunction.

*You can read the opinion here.

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Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 1673563 (N.D. Ill. Jun. 8, 2007) (Cole, J.).

Judge Cole denied plaintiff Fast Food Gourmet, Inc.'s ("FFGI") motion to compel responses to interrogatories, in this trade secret case involving frozen pizzas (you can read more about this case in the Blog's archives).  FFGI served defendants with an interrogatory seeking information regarding which brands of frozen pizza (aside from the accused DiGiorno Thin Crispy Crust Pizza) defendants baked in the ovens which were allegedly part of FFGI's trade secret crust-making process for stone hearth oven, thin crust, frozen pizzas.  Defendants objected to the interrogatory, which led to a meet and confer between the parties on February 15, 2007, two weeks before the close of fact discovery on March 1.  The meet and confer did not resolve the dispute.  On April 1, FFGI submitted its expert reports and then, six weeks after the close of discovery, FFGI moved to compel responses to the interrogatories.  But FFGI failed to notice the motion until more than one month later on May 18.  The Court noted that, while it had discretion to grant the motion, motions to compel filed after the close of fact discovery are generally held to be untimely unless accompanied by a "reasonable and persuasive justification" for the delay.  FFGI, however, provided no justification for its delay. 

But the Court ultimately denied FFGI's motion not because it was untimely, but because the evidence lacked evidentiary value.  FFGI assured the Court that it would not seek any other discovery after receiving the interrogatory responses.  FFGI had also repeatedly taken the position that its trade secrets crust-making process involved the combination of various elements and processes including the ovens that were the focus of FFGI's interrogatories, but that the ovens alone were not a trade secret.  The interrogatory responses alone , therefore, were of no value.  They would necessarily require additional discovery to be relevant to the case.  For example, it was not enough to know which other pizzas were baked in the ovens.  FFGI would need to know how each pizza baked in the oven was prepared in order to determine whether the pizzas were made using the FFGI trade secrets.  That would require additional fact discovery, but fact discovery was already closed.  The Court, therefore, denied FFGI's motion to compel. 

Practice tip:  File your discovery motions on or before the close of discovery.  And always explain to the Court why you need documents or interrogatory responses, particularly if you are seeking them after the close of discovery.

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Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, 2007 WL 1597928 (N.D. Ill. May 16, 2007) (Moran, Sen. J.).

Judge Moran granted declaratory judgment defendant Trading Technologies' ("TT") motion to compel documents and things identified by third party declarant Walter Buist during his deposition, despite declaratory judgment plaintiff Rosenthal Collins Group's ("RCG") assurances that the documents and things had already been produced.  RCG previously filed a motion for summary judgment of invalidity of TT's patents based upon a declaration by Buist regarding software that he developed, at least partially, more than a year before TT filed its patent applications.  In a previous opinion, the Court held that RCG's motion was "somewhat misleading" and possibly "disingenuous," but refused to dismiss the case (you can read the Blog's discussion of that opinion here, as well as more on this case generally in the Blog's archives). 

After RCG filed its motion, TT deposed Buist regarding, among other things, the creation of his declaration and his interactions with RCG's counsel related thereto.  During that deposition, Buist stated, among other things, that various drafts of his declaration were created, that he created a "differences" list and provided it to RCG's counsel and that he had used various computers during his work related to the case.  TT sought all drafts of the declaration, a list of any destroyed drafts, the differences list, any drives or computers used by Buist and all documents reflecting communications between Buist or his associates and RCG and its counsel or associates. 

In light of RCG's statements that it had already produced many of the requested documents and things, the Court ordered RCG to:  1) reproduce all such documents; 2) produce any remaining responsive documents (including the computers requested); and 3) produce documents reflecting relationships between Buist and RCG or its counsel, so long as such documents are not privileged.  The Court also required that RCG produce Buist for an additional deposition to answer questions related to the compelled documents, as well as Buist's relationship with RCG and its counsel, so long as the questioning does not violate Buist's attorney-client privilege.

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Rowe Int'l Corp. v. Ecast, Inc., No. 06 C 2703, 2007 WL 1498958 (N.D. Ill. May 17, 2007) (Kennelly, J.).*

Judge Kennelly issued this claim construction opinion construing the claims of eight patents related to computer jukeboxes and computer jukebox networks.  Of particular note, the Court construed "song selection means" in USPN 5,355,302 (the "'302 patent") as a keyboard separate from a display for generating a signal representing a song selected from the set of songs stored in the jukebox.  Plaintiffs sought a construction that would include a visual touchscreen, arguing that the Court should consider the following language from an unrelated patent by the same patentee (the "'398 patent"), that was not part of the patent in suit or its prosecution history:  "song selection means displayed on said visual screen."  Plaintiffs argued that this language showed that "song selection means" could include on-screen displays.  But the Court held that considering the language was not permissible and that, even if it were, the language only showed that the inventors were capable of claiming an on-screen display, but chose not to in the '302 patent.

*  You can read more about this case in the Blog's archives.

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Rowe Int'l Corp. v. Ecast, Inc., No. 06 C 2703, 2007 WL 1438370 (N.D. Ill. May 14, 2007) (Kennelly, J.).*

Judge Kennelly denied defendants' motion to dismiss plaintiffs' patent infringement complaint for lack of standing.  As to two patents that were not expressly assigned to plaintiffs before the suit was filed (the "Progeny Patents"), the Court used Illinois contract law to interpret the following blanket provision in the assignment agreement regarding the parent patent, which assigned the parent application and any improvements or related applications:

any and all other applications . . . which the undersigned may file . . . on said invention or improvements, and in any and all Letters Patent of the United States and foreign countries, which may be obtained on any of said applications . . . .

The Court held that this provision was unambiguous.  Pursuant to this provision, the inventors assigned plaintiffs any related patents or improvements to the original application.  Because the Progeny Patents were related to the parent patent, they were assigned to plaintiffs.  And, therefore, plaintiffs had standing to file suit.  Additionally, the Court noted that the express assignment of the Progeny Patents that plaintiffs received post-filing did not retroactively confer standing upon plaintiffs for this suit.

*  You can read more about this case in the Blog's archives.

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Days Inns Worldwide, Inc. v. Lincoln Park Hotels, Inc., No. 06 C 2960, 2007 WL 1455798 (N.D. Ill. May 16, 2007) (Der-Yeghiayan, J.)

Judge Der-Yeghiayan granted in part defendants' motion for reconsideration of the Court's award of plaintiff's attorneys fees' and costs for preparing summary judgment motions.  Plaintiff owns various marks relating to its Days Inn chain (the "Days Inn Marks").  Plaintiff licensed defendants Lincoln Park Hotels, Inc. and Richard Erlich (collectively "LPH") to use the Days Inn Marks in connection with the operation of a hotel in Chicago's Lincoln Park neighborhood.  In 2005, LPH sold the hotel to defendant Gold Coast Investors ("GCI") without informing plaintiff, in violation of the parties' license agreement.  GCI continued operating the hotel using the Days Inn Marks without licensing the rights to the marks from plaintiff.  As a result, plaintiff brought this suit against defendants alleging that, among other things, GCI infringed plaintiff's Days Inn Marks and LPH contributorily infringed plaintiff's Days Inn Marks by selling the hotel to GCI with the knowledge that GCI intended to continue using the Days Inn Marks and without informing plaintiff of the sale or removing the Days Inn Marks from the hotel, as required in the parties' license agreement.  In February, the Court granted plaintiff's summary judgment motion on twelve of fifteen counts and dismissed the remaining three counts as moot (you can find discussion of that opinion in the Blog's archives).  The Court also awarded plaintiff its attorneys' fees, approximately $150,000, for preparing its summary judgment motion.  Defendants moved the Court to reconsider, arguing that the Court should have required the parties to meet to resolve the attorneys fees dispute pursuant to  Local Rule 54.3 before ruling on the fees and that the Court should specifically apportion the fees between defendants.  The Court held that it was not required to follow the Local Rule 54.3 procedure in this case because defendants did not object to plaintiff's requests for fees made in its summary judgment briefing and because additional briefing required by the rule would not have benefited the Court because of its intimate knowledge of the case.  The Court did, however, apportion the fees that it was able to identify as only applicable to one group of defendants.  And the Court awarded an additional $35,000 of fees and costs that had not been presented in the initial motion.

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Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).

Judge Moran granted plaintiffs a preliminary injunction preventing defendants from interfering with plaintiffs' right to record new music with producers or record labels of plaintiffs' choice.  The Court also denied defendants an opposing preliminary injunction that would have prevented plaintiffs from recording new music with anyone other than defendants.  Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively "HH") -- in addition to clicking on "Hawthorne Heights" to go to the band's website, you can also read about them on Wikipedia, listen to them online or see them live June 12th in Urbana, Illinois's Canopy Club.  HH entered into a contract (the "Agreement") with defendants to produce and promote four albums.  The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured.  HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH.  This suit arose from that dispute.  Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH's letter allegedly terminating the Agreement and related state law claims.  In a prior opinion (discussed in the Blog's archives), the Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which left HH free to record other songs or records with another company during the life of the Agreement.  Based upon the Court's ruling, HH moved the Court for a preliminary injunction confirming that defendants could not interfere with any of HH's efforts to record new music with a third party.  Defendants cross-moved to prevent HH from working with anyone but defendants.  The Court held that HH showed a likelihood of success on the merits based upon the Court's prior ruling that the Agreement was not exclusive.  Similarly, the Court held that defendants did not show a likelihood of success in light of the same ruling.  Because defendants had no likelihood of success, their motion for a PI was denied.  Defendants argued that HH could not base a motion for preliminary injunction upon claims for declaratory relief, but the Court held that numerous courts had granted preliminary injunctive relief based upon claims for declaratory judgment.

The Court found that HH would suffer irreparable harm without an injunction.  The parties agreed that bands have a short shelf-life and because without an injunction HH would not be allowed to record new music with parties of its choice in the immediate future, HH would be irreparably harmed without an injunction.  The Court also held that despite the non-exclusivity of the Agreement, HH was obligated to produce records with defendants in a timely fashion. HH would be required to record the agreed-upon number of albums with defendants "within a reasonable time."

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Vanguard Prods. Group, Inc. v. Diam USA, Inc., No. 05 C 1323, Slip Op. (N.D. Ill. May 16, 2007) (Bucklo, J.).*

Judge Bucklo granted plaintiffs summary judgment of infringement and denied defendants summary judgment of invalidity.  The Court first construed the two claim terms at issue -- "electrically coupled" and "via the modular connector."  In both cases, the Court adopted the plaintiffs' construction after a detailed review of the intrinsic and extrinsic evidence.  Because neither term was in the original application or appears in the specification, the intrinsic evidence focused on the use of the terms within the claims.  Defendants also attempted to use claim language from a parent application to support their constructions, but the Court held that the prosecution of a term in a parent application generally does not limit different terms in its progeny.  In the instant case, the Court found that the parent application had used the broader term "electrical connection" instead of "electrically coupled" which weighed against defendants' construction.  Having ruled in plaintiffs' favor on the claim construction, the Court held that defendants' products infringed the asserted claims of plaintiffs' patents.  And the Court held that defendants' asserted prior art did not anticipate plaintiffs' patents.

*  Because I beat Westlaw on this one, you can access a copy of the Court's opinion here.  Please note that the Court issued a subsequent order modifying the opinion by deleting footnotes three and four, which were not intended to be part of the opinion.

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Late last week, President Bush signed the appointment papers for the Northern District's newest judge, the Honorable Frederick J. Kapala.  Judge Kapala was sworn-in late last week and is sitting in the Northern District's Western Division.  Here is some biographical information about Judge Kapala from the Northern District's announcement of his appointment:

Judge Kapala graduated from Marquette University and received his law degree from the University of Illinois in 1976. He served as an Assistant State’s Attorney and then went into private practice, where he was appointed as a Special Assistant Attorney General to manage consumer fraud cases in Northern Illinois. He began his judicial career in 1982 as an Associate Judge in Illinois’ 17th Judicial Circuit, serving as Presiding Judge of the Juvenile Court from 1989 to 1991. Judge Kapala was elected a Circuit Judge in 1994 and appointed Presiding Judge of the Criminal Division one year later. In 2001, Judge Kapala was assigned to the Appellate Court of Illinois, Second District, where he served on the Illinois Judicial Conference Committee on Discovery Procedures and the Illinois State Judicial Inquiry Board. Judge Kapala is a captain in the U.S. Army.

Welcome to the Northern District Judge Kapala.

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According to yesterday's Chicago Daily Law Bulletin -- Trial Courts May Take on Patent Cases (subscription required, but a free, 15-day trial is available) -- the Northern District of Illinois judges are split on the value of  a proposed pilot program.  The program would provide judges who volunteer to take patent cases with extra training and the assistance of specialized law clerks.  Cases would continue to be randomly assigned.  But after a patent case was randomly assigned, if the assigned judge rejected the case it would be reassigned to a judge participating in the patent program.

Chief Judge Holderman is a proponent of the pilot program.  Chief Judge Holderman explained that the system would benefit the patent bar and that is not new to the federal courts because senior judges already have the option of rejecting cases, which are then reassigned.   You can read more about Chief Judge Holderman's views on patent litigation in the district courts in an article he recently authored with his law clerk, Halley B. Guren, advocating, among other things, providing district judges with specialized patent training and reassigning patent cases to those judges -- "The Patent Litigation Predicament in the United States."*

Judge Kocoras, on the other hand, is "not crazy about" the program, believing that district judges are generalists who "should all take the luck of the draw."  He sees the patent pilot program opening the door to other areas of specialization among Article III judges.

Judge Moran likes the program and says he would volunteer for it.  Although, he notes that allowing "judges over 50 [to] handle computer software issues may be a violation of due process."

* The link is to a draft of the article which is in the process of being finalized for publication in the University of Illinois's Journal of Law, Technology & Policy.

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Ortho-Tain, Inc. v. Rocky Mountain Orthodontics, Inc., No. 05 C 6656, 2007 WL 1238917 (N.D. Ill. Apr. 25, 2007) (Leinenweber, J.).

Judge Leinenweber granted plaintiff's Fed. R. Civ. P. 12(f) motion to strike, dismissing without prejudice defendants' respective patent misuse affirmative defenses and all patent-related statements in defendants' counterclaims.  Plaintiff, Ortho-Tain ("OT"), sued Rocky Mountain Orthodontics ("RMO") and Planmeca Oy ("Planmeca") alleging that RMO breached the distributorship agreement between the OT and RMO.  Pursuant to the Agreement, OT manufactured dental appliances (allegedly covered by OT's patents) and RMO sold those appliances in France.  RMO allegedly breached the Agreement by sourcing equivalent dental appliances from Planmeca.  RMO counterclaimed for, among other things, declaratory judgment of noninfringement and unenforceability of OT's relevant United States patents.  The Court previously dismissed defendants' patent-related declaratory judgment counterclaims for lack of subject matter jurisdiction.  OT now argues that the Court should strike RMO's and Planmeca's respective patent misuse affirmative defenses because they are insufficient.  The Court first held that patent misuse was a proper affirmative defense, negating the first prong of a Rule 12(f) analysis. 

But neither RMO nor Planmeca met their Fed. R. Civ. P. 8 notice pleading obligations as to the defense.  RMO's and Planmeca's statement of their defenses were identical:  "[OT's] claims are barred by the doctrine of patent misuse."  The defense pled no facts and failed to identify which of OT's "many patents" were allegedly misused.  The Court, therefore, dismissed the affirmative defenses without prejudice.  And because the defenses were not well pled, the Court did not address the third prong of a Rule 12(f) analysis -- whether the defense could withstand a Fed. R. Civ. P. 12(b)(6) motion to dismiss.  The Court also briefly looked at whether Rule 8 notice pleading or Fed. R. Civ. P. 9(b) heightened pleading was required for a patent misuse defense, noting that at least one court had used Rule 9(b) pleading, but did not reach the issue, as the defenses did not meet the Rule 8 standard.

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Gencor Pacific, Inc. v. Nature's Thyme, LLC, No. 07 C 167, 2007 WL 1225362 (N.D. Ill. Apr. 24, 2007) (Kocoras, J.).

Judge Kocoras granted defendants' Fed. R. Civ. P. 12(b)(2)&(3) motion to dismiss for lack of personal jurisdiction and venue and dismissed the case.  Plaintiff brought this Lanham Act false advertising and copyright infringement case alleging that defendants used portions of plaintiff's copyrighted studies regarding the efficacy of a weight-loss and appetite suppressant containing Caralluma Fimbriata extract.  Defendants, a business and two individuals employed by the business, were residents of New Jersey and had a single sale to an Illinois customer, valued at $300.  Defendants only other contacts with Illinois were an interactive website accessible in Illinois and the fact that one or two of defendants' general solicitations may have been sent to Illinois.  Defendants did not own property in Illinois and there was no proof that any defendants sent any of the allegedly infringing information to Illinois.  The Court held these contacts were not sufficient to create either general or specific jurisdiction.  The Court also held that venue was not proper in the Northern District of Illinois because defendants were not residents of Illinois and the acts at issue in the suit did not occur in the Northern District.

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1238908 (N.D. Ill. Apr. 25, 2007) (Moran, J.).

Judge Moran denied defendant Lear's motion to stay the Court's preliminary injunction pending appeal to the Federal Circuit,* but did allow third party General Motors ("GM") to intervene of right and modified the PI to limit harm to defendant and GM.  In a March 30, 2007 opinion and order, the Court granted plaintiffs' motion for a preliminary injunction, preventing defendant from marketing and selling its garage door opener transmitters based upon the Court's prior claim constructions (these opinions are available in the Blog's archives).  The Court held that Lear could not show a likelihood of success on the merits, in part because the Court's "Markman decision and subsequent reconsideration dealt an enormous blow to [Lear's] case."  The Court acknowledged that while plaintiff would suffer irreparable harm without the PI, both Lear and GM could suffer irreparable harm because of the PI.  In order to resolve the irreparable harm issue, the Court revised the PI to exempt Lear's sales to GM.  Because GM was Lear's only client and because the exemption allowed GM to continue sourcing Lear's product  the revised PI would remove harm to GM and substantially reduce Lear's harm.  While Lear would not be able to add new customers, it would not have to idle its related workers and factories because Lear would not lose any customers.  Because the removal of GM sales from the PI substantially limits Lear's potential harm, the Court denied Lear's motion, supported by GM, to increase the bond from $10,000,000 to $50,000,000.

While GM was not a party to the suit, the Court, in a footnote, allowed GM to intervene of right pursuant to Fed. R. Civ. P. 24(a)(2) for the limited purposes of arguing for an exemption from the PI or a stay of it and to seek a higher injunction bond. 

*  Lear has already appealed the PI and the claim construction decision.

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Cummins-Allison Corp. v. Glory Ltd., No. 02 C 7008 (N.D. Ill. Apr. 25, 2007) (Posner, J.).

Judge Posner, sitting by designation, entered an order dismissing all claim and counterclaims without prejudice and terminating the case, on what appeared to be near the eve of trial.  The parties filed a Stipulated Dismissal earlier in the month.  No further settlement details were readily available. 

The Court's order ended what had been a fairly protracted patent dispute between the two parties centering around patents covering money-counting and bill-sorting devices.  You can read more about prior rulings from the Northern District case in the Blog's archives.  You can read about several opinions from the related Eastern District of Texas case here and here at Michael Smith's E.D. Texas Blog.

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Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 1175577 (N.D. Ill. Apr. 20, 2007) (Aspen, J.).

Judge Aspen denied defendant Little Lady Foods, Inc.'s ("LLF") Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Fast Food Gourmet, Inc.'s ("FFGI") breach of contract claim.  FFGI alleged that FFGI entered a "co-packing" relationship with LLF, essentially that LLF was to manufacture FFGI's product.  Based upon that relationship, FFGI provided LLF with its various trade secrets relating to producing "a unique stone hearth oven thin crust frozen pizza."  In addition to its formulas, recipes, methods and techniques, FFGI also provided LLF its equipment.  FFGI alleged that, in addition to making pizzas for FFGI, LLG worked with defendant Kraft Foods Global, Inc. ("Kraft") to develop a line of pizzas using FFGI's trade secrets, with substantially the same crusts as the FFGI pizzas.  FFGI brought claims for misappropriation of trade secrets against both defendants, breach of contract against LLF and unjust enrichment against Kraft.  LLF sought to dismiss FFGI's breach of contract claim to the extent it was based upon allegations that the agreement was breached by production of pizzas for Kraft with crusts nearly identical to FFGI's crusts.  LLF first argued that the agreement could not be breached because the agreement prohibits LLF from producing "pizzas with specification which are identical or . . . substantially identical to" the FFGI pizzas.  Because FFGI only pled that the crusts were identical or substantially identical, LLF argued the claim should be dismissed.  But the Court held that FFGI was only required to provide notice pleading of claims, not facts.  Because FFGI identified the parties, stated the nature of its dispute and provided "a few tidbits" LLF was sufficiently on notice.

LLF also argued that the claim should be dismissed because the FFGI and Kraft pizzas are substantially different because Kraft's sauce and/or toppings are very different than FFGI's.  But the Court refused to make factual determinations in a Rule 12(b)(6) motion and denied LLF's motion.

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Chief Judge Holderman announced the selection of Susan E. Cox as the Northern District's newest magistrate judge, filing the vacancy created by Judge Levin's retirement.  You can read the Northern District's press release here.  Magistrate Judge Designate Cox has an impressive resume including a clerkship with District Judge Wayne R. Andersen, eight years as an AUSA, twenty four cases (civil and criminal) tried to a verdict, and, perhaps most important to Blog readers, patent infringement experience.  Congratulations Judge Cox.

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United States Gypsum Co. v. LaFarge N. Am., Inc., No. 03 C 6027, 2007 WL 1100804 (N.D. Ill. Apr. 3, 2007) (Hart, J.).

Judge Hart granted in part and denied in part the parties' cross-motions for summary judgment.  This case was a dispute over technology related to gypsum wallboard manufacturing and included patent infringement, trade secret misappropriation, breach of contract, Stored Communications Act ("SCA"), Computer Fraud and Abuse Act ("CFAA") and various related state tort claims.  The Court first looked at plaintiff's patent infringement claims regarding methods for making gypsum board and resolved the parties' claim construction disputes.  The Court then turned to defendants' argument that plaintiff was estopped from claiming infringement by equivalents because it failed to expressly refer to the doctrine of equivalents in its complaint or in its contention interrogatory responses.  The Court held that it was sufficient to allege infringement and cite Section 271 in a complaint.  And as to waiver for failure to disclose equivalents in its interrogatory responses, the Court held that defendants had shown no prejudice from plaintiff's failure to disclose equivalents and that while plaintiff did not use the term equivalents in its responses, it did state that it contended defendants infringed the patents even if defendants processes did not meet timing requirements in the claims.  As a result, plaintiff was not barred from arguing infringement pursuant to the doctrine of equivalents.

The Court also performed a detailed analysis  of whether each alleged trade secret at issue was, in fact, a trade secret and whether it was  misappropriated.  For example, the Court held that regardless of whether plaintiff's Construction Specifications were trade secrets, they were not misappropriated because plaintiff's did not show that the Construction Specifications were used in the corporate defendants' business.  The Court held that certain drawings and blueprints were not misappropriated because there was no proof that the individual defendant alleged to have taken them gave them to the corporate defendants or otherwise used them in any way.  Additionally, there was no evidence that the corporate defendants used the drawings or blueprints in their business.  The Court dismissed claims based upon a slotted forming plate because of evidence that at least four different groups independently developed the slotted plates for use in wallboard manufacturing.  The Court noted that if just one other group had developed the plate it could have been accorded trade secret status, but because four others had developed similar technology it was a commonly known procedure which could not be afforded trade secret status.  The Court held that board formulation sheets which contained, among other things, the formula for making the wallboard material were protectable trade secrets.  The Court held that plaintiff could not claim blanket trade secret protection for its 11,000 page Operating Bulletins or its 500 page Expert System included therein.  But the Court did allow trade secret protection for elements of the Operating Bulletins and Expert System specifically identified as trade secrets. 

The Court also held that plaintiff's state court claims were preempted by the Illinois Trade Secret Act only to the extent that the torts involved trade secrets.  To the extent the torts were based simply on business issues, for example tortious interference with business expectancy, they were not preempted. 

Finally, the Court held that it had personal jurisdiction over the individual defendants because plaintiff was headquartered in Illinois and the individual defendants were aware of that based on the fact that each had attended limited training sessions in Illinois

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According to this Law.com article, effective May 1st the Northern District of Texas, based in Dallas, has instituted local patent rules similar to those used in the more famous (at least in patent circles) Eastern District of Texas, which were modeled after the Northern District of California's Local Patent Rules.  Additionally, the Southern District of Texas, based in Houston, is considering adopting a similar set of local patent rules.  Perhaps the courts think that the variety of direct flights to Dallas or Houston combined with the same Texas charm and hospitality available in Marshall, will give the Northern and Southern Districts a leg up on their colleagues to the east.  Of course, all of this would fall apart if Congress revises the venue requirements as Patently-O suggests it might.

But regardless of what Congress does, this spreading of special patent local rules, which I am all for, makes me wonder if the Northern District of Illinois will follow the trend and adopt their own special patent rules.  Some judges already have standing orders outlining their processes for claim construction proceedings.  For example, Judge St. Eve's procedures can be found on her site in the "Patent Cases" section.

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Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, 2007 WL 844610 (N.D. Ill. Mar. 14, 2007) (Moran, Sen. J.).*

Judge Moran denied in part and granted in part declaratory judgment defendant Trading Technologies' ("TT") Rule 37 motion for sanctions.  The Court held that declaratory judgment plaintiff Rosenthal Collins Group's ("RCG") motion for summary judgment of invalidity was "somewhat misleading" and possibly "disingenuous," but refused to dismiss the case.  Instead the Court struck the declaration underlying RCG's motion, denied RCG's summary judgment motion with leave to refile a motion "supported by proper evidence" and awarded TT its costs and attorneys fees associated with the Rule 37 motion, as well as its software expert's fees.  RCG filed a summary judgment motion arguing that TT's patents covering "double click" methods for executing an electronic trade were anticipated by the alleged prior art system "Wit DSM" as embodied in a software package RCG presented to the Court and TT on a laptop and claimed was essentially the software as it is existed more than one year prior to TT's patent filing.  TT's software expert identified that several lines of code had been added to the software by RCG's declarant, and that the added code performed certain functionalities required for anticipation.  When RCG's declarant was deposed, he stated that he had not written the "double click" portion of the original code and could not be sure that it was in the alleged prior art version of the WIT DSM.  These facts did not warrant dismissal of the case or barring of any evidence because RCG and its declarant had not made any false statements, although they had made deliberately vague statements.  Furthermore, while RCG did not identify that the software package included added code which the Court found disturbing, it did include a comparison program on the laptop it provided to TT and the Court which would have identified the added code.

This case involves the several of the same patents as the other TT case before Judge Moran.

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Bucciarelli-Tieger v. Victory Records, Inc., No. 06 C 4258, 2007 WL 684047 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran held that the parties' contract was not exclusive and, therefore, granted in part and denied in part defendants' Rule 12(c) motion to dismiss.  Plaintiffs are members of an Ohio-based band called Hawthorne Heights (collectively "HH").  HH entered into a contract (the "Agreement") with defendants to produce and promote four albums.  The first album was created and promoted seemingly without incident, but just before release of the second album the relationship soured.  HH sent defendants a letter which purported to terminate the Agreement and listed several ways that defendants had allegedly harmed HH.  This suit arose from that dispute.  Plaintiffs allege breach of contract, as well as copyright and trademark infringement for promotions and sales after the date of HH's letter allegedly terminating the Agreement and related state law claims.  The Court held that the Agreement was not exclusive because it did not contain any exclusivity provisions, which meant that HH was free to record other songs or records with another company during the life of the Agreement.  The Court also held that the only way HH's songs can be considered a work-for-hire owned by defendants is if HH were defendants' employees.  But the Court was unable to decide that issue on the pleadings.  As a result, the Court also could not decide HH's copyright and trademark infringement claims on the pleadings because whether defendants could have infringe requires a determination of whether HH or defendants own the marks.  The opinion also contains a very detailed analysis of Illinois choice of law issues for the related state law claims.

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Abbott Labs. v. Mylan Pharms., Inc., No. 05 C 6561, 2007 WL 625496 (N.D. Ill. Feb. 23, 2007) (Kendall, J.).

Judge Kendall denied plaintiff's, Abbott, Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant's, Mylan, antitrust counterclaims.  Mylan alleged that two Abbott employees submitted declarations and/or testimony stating the weight and structure of certain oligomers related to the patented invention, despite their knowledge that the tests they relied upon were known to be incapable of measuring the oligomers at issue.  Mylan further alleged that based upon these fraudulent statements, the USPTO issued certain of the patents-in-suit which then prevented Mylan from entering the market with a generic version of Abbott's pharmaceutical Depakote.  Abbott relied upon a prior Northern District ruling against third party Torpharm which held that Abbott's conduct before the USPTO was not inequitable.  But the Court held that while that ruling prevented a sham litigation claim, it did not estop Mylan's inequitable conduct allegations because Mylan was not a party to the prior case and, therefore, had no opportunity to present its evidence and argument.  Additionally, the Court held that Mylan adequately alleged antitrust injury by stating that it prepared to enter the market with generic Depakote, but was prevented from doing so by Abbott's alleged inequitable conduct.

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Days Inns Worldwide, Inc. v. Lincoln Park Hotels, Inc., No. 06 C 2960, 2007 WL 551570 (N.D. Ill. Feb. 22, 2007) (Der-Yeghiayan, J.)

Judge Der-Yeghiayan granted plaintiff summary judgment on its trademark infringement and Illinois Deceptive Trade Practices Act ("IDTPA") claims, among others.  Plaintiff owns various marks relating to its Days Inn chain (the "Days Inn Marks").  Plaintiff licensed defendants Lincoln Park Hotels, Inc. and Richard Erlich (collectively "LPH") to use the Days Inn Marks in connection with the operation of a hotel in Chicago's Lincoln Park neighborhood.  In 2005, LPH sold the hotel to defendant Gold Coast Investors ("GCI") without informing plaintiff, in violation of the parties' license agreement.  GCI continued operating the hotel using the Days Inn Marks without licensing the rights to the marks from plaintiff.  As a result, plaintiff brought the instant action against defendants alleging that, among other things, GCI infringed plaintiff's Days Inn Marks and LPH contributorily infringed plaintiff's Days Inn Marks by selling the hotel to GCI with the knowledge that GCI intended to continue using the Days Inn Marks and without informing plaintiff of the sale or removing the Days Inn Marks from the hotel, as required in the parties' license agreement. 

Defendants did not challenge plaintiff's evidence on its trademark, IDTPA or other related state law claims and, it appears, did not fully respond to plaintiff's Local Rule 56.1 statement.  In fact, defendants' only defense was LPH's argument that they were not liable because the alleged infringement and related acts occurred after LPH sold the hotel to GCI.  But the Court denied this defense because LPH did not challenge plaintiff's statement of fact paragraph 37 which stated that at the time of sale LPH was aware that GCI intended to operate the hotel using the Days Inn Marks.  Paragraph 37 also stated that LPH neither removed the Days Inn Marks from the hotel themselves,  nor obligated GCI to remove them.  The Court held that LPH's actions as detailed in, at least, paragraph 37 "far surpass[ed]" the "willful blindness standard of contributory infringement.

Practice tip:  Make sure that you fully respond to each issue raised in every paragraph of your opponent's Local Rule 56.1 statements of material fact. 

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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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Murphy v. Murphy, No. 04 C 3496, 2007 WL 551576 (N.D. Ill. Feb. 15, 2007) (Darrah, J.).

The Court granted summary judgment for defendants for several reasons. First, after reviewing the evidence, including a comparison of clips from each work, the Court held that no reasonable jury could find that plaintiff’s documentary is substantially similar to The PJs. Plaintiff’s movie is a series of interviews of people, while The PJs is an animated program telling fictional stories using fictional characters. And to the extent that any similarities existed, they were in non-copyrightable elements of the video. For example, the Court noted that plaintiff could not hold a copyright in someone else’s appearance or how a building looks.

Second, plaintiff had not established that defendants had access to plaintiff’s film. Plaintiff only provided his film to Winfrey via Harpo Studios and plaintiff provided no evidence that she or anyone at Harpo had sent the film to any third party. Additionally, Harpo Studios never aired the film and plaintiff could not even provide any evidence proving that Winfrey or Harpo Studios had actually received the film.

Third, defendants presented uncontradicted evidence that they conceived of the characters and concept of The PJs before plaintiff sent his film to Winfrey and Harpo Studios. While The PJs began airing on Fox in 1999, defendants submitted evidence that they had drafted characters and plots for The PJs by December 1997.

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RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, 2007 WL 495254 (N.D. Ill. Feb. 14, 2007) (Coar, J.).

The Court held that there was at least a question of fact as to whether the combination tool was maintained as a trade secret because: 1) plaintiff only disclosed the idea to defendant after receiving verbal assurances of confidentiality followed by a nondisclosure agreement; 2) plaintiff marked documents regarding the combination tool confidential; and 3) plaintiff presented evidence that both plaintiff’s and defendant’s combination tools enjoyed substantial sales upon their respective introductions to the market.

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Why Intellectual Property Cases in the Northern District of Illinois?  I expect that many people will ask that question. The answer is simple. The N.D. Ill. is and consistently has been one of the four or five most active patent courts in the country. See, e.g. Kimberly A. Moore, Forum Shopping In Patent Cases: Does Geographic Choice Affect Innovation?, 79 N.C. L. Rev. 889, 903 (2001); Federal Judicial Caseload Statistics, Tables C-2 & C-3. 

This remains true even as “new” courts, for example the E.D. Texas, have come into vogue with intellectual property owners. And experience tells me that your assigned judge in any district will likely work hard to get the law right and understand the technology. But experience also tells me that the judges of the N.D. Ill. are uniformly good judges who are experienced with all forms of intellectual property cases and are not afraid of technology. 

I plan to build this blog into a premier resource for attorneys and litigants who either routinely practice in the N.D. Ill. or find themselves in the District for the first time. I also plan for this to be an organic discussion. I will facilitate that discussion by posting about:  each intellectual property case handed down by the N.D. Ill.; developments at the N.D. Ill. such as rule changes; and practice tips, some specific to the N.D. Ill. and some more general.  I encourage you to ask questions and to debate. 

Finally, I will not blog about decisions in cases that I am involved in. For those cases, I will seek out guest bloggers.

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