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

The Seventh Circuit's Judge Posner wrote a Tips from the Trenches column for the ABA in May.  The article was well written and insightful, no surprise from Judge Posner.  He summed up his advice like this:

be brief, be clear, be simple, be vivid, be commonsensical, avoid legalisms, and do not be afraid to spoon-feed us—we will not bite your hand.

He also provided more detailed advice.  Here are my favorites:

• Use visual aids.  But he suggests pictures or objects instead of charts or graphs.  People (and judges are people, although litigators sometimes forget they are) connect with and remember images better than words or statistics, especially when they see the demonstratives quickly and from a distance.
  
• Admit when you do not know and concede when you must.  Few things kill credibility like false statements, even unintentionally false ones, or refusing to admit the obvious.
  
• Rehearse.  And not just by reading your materials and preparing notes.  Set up a session as close to what you can expect as possible.  You practice baseball by playing and running by running, practice argument the same way.
  
• Dress to be taken seriously.  First impressions matter and the judge(s) see you both before and while they hear you.

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Last week the intellectual property world obsessed over injunctions – specifically, a preliminary injunction hearing in the Eastern District of Virginia resulting in an injunction against the U.S. Patent & Trademark Office’s (“PTO”) new continuation rules. There was a lot of analysis about the injunction, including live blogging by Patent Practice Center Patent Blog and a lot of post-injunction analysis by, among others: 271 Patent Blog; FileWrapper; Patent Baristas; Patent Docs (and here); Patent Prospector; PHOSITA; Patently-O; WSJ Law Blog; and Washington State Patent Law Blog. For those of you who have no idea what a continuation is or just do not care about the particulars of the rules, I promise that I am done with patent continuations for this post. Honestly, I find the rules rather tedious myself. I prefer to focus on litigating patents, rather than the PTO’s prosecution rules. So, today we talk about injunctions:

According to TechCrunch, Patent Monkey received a permanent injunction when it was sold to the Internet Real Estate Group. But Patent Monkey’s patent search technology will see its injunction lifted when it is used on www.patents.com. Hopefully, for those like me who enjoyed it, Patent Monkey’s Infinite Monkey Theorem Blog will also see its injunction lifted.

Virtually Blind has an interesting report on Second Life’s* new Patent & Trademark Office, the SLPTO. No word on whether the SLPTO and the Second Life legal system generally will allow for any permanent injunctions. Right now it appears that the SLPTO will be heavily skewed toward copyright and trademark, which makes sense in a virtual world. And before we learn whether the SLPTO has any enforcement mechanisms, Blawg IT is offering to represent virtual clients before the SLPTO. I would get a retainer up front Brett – virtual clients can be difficult to track down when the bills are due.

The Patry Copyright Blog shows why Second Life injunctions may be necessary. Six Second Life players have sued a Queens man in the Eastern District of New York for trademark and copyright infringement based upon sales of goods in Second Life. I wonder if the trademarks and copyrights were registered with the SLPTO or the US PTO/Copyright Office. And does the E.D.N.Y. have authority to issue cyber-injunctions?

Promote the Progress provides an interesting piece on the long-term effects of last week’s injunction against the PTO on shaping patent reform.

SportsBiz explains that plaintiffs who were bilked out of millions in attorneys’ fees by their now-jailed lawyers were not irreparably harmed. A Kentucky court awarded them a 20% ownership interest in Curlin, the prize race horse and Breeder’s Cup Classic winner partially owned by the jailed lawyers.

Adams Drafting issues its own injunction against using virgules. Using what? The virgule, or the forward slash. He explains that it is frequently used to mean: 1) “per” – 50 miles/hour; 2) “or” – and/or; and 3) “and” – all parents/subsidiaries/affiliates are bound by the obligations. The problem is that the various uses create ambiguity. Adams acknowledges that he cannot find any litigation specifically about the virgule. But the best solution is to remove the virgule from your writing before you become embroiled in the first litigation over one. And when it comes to rules of writing and grammar, the best solution is to listen to Adams.

What if you do not want an injunction or just want a faster, cheaper resolution? The IP ADR blog is talking about last week’s big settlement between Vonage and Verizon. They suggest that you consider using contingent agreements to control for changing future conditions and charitable contributions. They also point out that creativity and out-of-the-box thinking are important elements for reaching settlements.

Another way to avoid an injunction is to understand how best to argue against the opposing party and their counsel. The Center for Internet & Society discusses how men and women in the United States and in other cultures communicate and suggests that understanding the nuances of how different people communicate around the globe could advance legal discourse.

Lowering the Bar reports on a Michigan man sentenced to sixty days in jail for a home invasion that ended in him throwing two large pickles at residents of the home. No word on whether he will be enjoined from pickle ownership. Okay, that is a weak tie-in, but who can resist a pickle invasion story.

Deliberations discusses one of the basic truths of trial law – you must connect with your jury about basic truths of your case. That is equally true when seeking an injunction – if the judge senses something is not right about your argument, you will not get your injunction.

The writers’ strike that is expected this week is not an injunction, but it will mean an end to new scripted television and movies. Concurring Opinions has an interesting post about a brewing legal dispute between the studios and the writers’ union, the Writers Guild of America (“WGA”). The WGA is requiring that members provide information on all unproduced projects and an update on the status of those projects, as per the labor agreement between the WGA and the studios. But the studios, based upon their individual agreements with writers, are warning writers that the studios  own the scripts and the writers are barred by contract from giving the WGA any information about the projects. These conflicting contracts place the writers in quite a pickle (I could not resist), and it poses an interesting legal question as to which contract controls.

And I end with a post that is actually about an injunction. The Maryland IP Law Blog (another LexBlog creation) posted about a District of Delaware court that upheld a jury verdict of patent infringement and plans to enter a permanent injunction against Lonza, Ltd., Nutrinova Inc. and Nutrinova Nutrition Specialties & Food Ingredients GmbH prohibiting the U.S. sale and use of a fatty acid product currently marketed under the brand name Lonza DHA for use in functional foods and dietary supplements.

Thanks for reading. And for the Blog’s regular readers, I will be back to my usual Northern District of Illinois focus tomorrow.

* Second Life is an internet-based virtual world where “residents” interact through avatars. For example, the Seventh Circuit’s Judge Posner appeared in Second Life with an avatar closely resembling him to answer questions from, among others, a DC IP lawyer using an avatar of a humanized raccoon. Check out the New World Notes blog for a transcript and some screenshots.

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Flentye v. Kathrein, No. 06 C 3492, Slip Op. (N.D. Ill. Oct 2, 2007) (Cole, Mag. J.).*

Judge Cole continued defendants’ motion to compel for one week because defendants had not conducted a Local Rule 37.2 conference before filing their motion. But the Court also provided its thoughts on the prosecution of discovery, both in this specific case and generally. The Court noted that after one year of discovery, “not a single document was produced in response to the 70 paragraph document request!”

But what is most interesting about the opinion is the Court’s quotes on various discovery issues. On discovery generally: 

“[D]iscovery is the bane of modern federal litigation.” Rossetto v. Pabst Brewing Co., Inc., 217 F.3d 539, 542 (7th Cir. 2000). It is intrusive, unpleasant, time-consuming and costly. It is, like life itself, “nasty [and] brutish …” Hobbes, Leviathan, Chapt XIII. Unfortunately, it is not generally “short.”

On Fed. R. Civ. P. 37(a)(4) sanctions:

The great operative principle of Rule 37(a)(4) is that the loser pays. Fee shifting, when the judge must rule on discovery disputes, encourages their voluntary resolution and curtails the ability of litigants to use the legal process to heap detriments on adversaries without regarding to the merits of the claim.

Quoting Rickels v. City of South Bend, Indiana, 33 F.3d 785, 786 (7th Cir. 1994) (Easterbrook, J.) (internal quotes omitted).

On the less-than-civil nature of “modern” litigation:

Unfortunately, what has occurred here thus far is not uncommon, and the often needless disputes arising in discovery are but the current manifestation of the difficulties about which Learned Hand lamented almost three quarters of a century ago. In an address to the Bar Association of the City of New York in 1921, Hand, then a young district judge, spoke about the “atmosphere of contention over trifles, the unwillingness to conceded what ought to be conceded, and to proceed to the things which matter. Courts have fallen out of repute; many of you avoid them whenever you can, and rightly. About trials hang a suspicion of trickery and a sense of a result depending upon cajolery or worse. I wish I could say that it was all unmerited. After now some dozen years of experience I must say that as a litigant I should dread a lawsuit beyond almost anything else short of sickness and death.” Lectures on Legal Topics, Learned Hand, The Deficiencies Of Trials To Reach the Heart of the Matter, 105 (The MacMillan Co. 1926).

On bad blood between litigants:

What Chief Judge Easterbrook recently said in another case seems to apply here: “There is a grudge match.” Redwood v. Dobson, 476, F.3d 462 (7th Cir. 2007). The parties are free to entertain whatever animus they possess towards each other. Judges have no business in trying to regulate thought and emotion. But they do have an obligation to regulate how parties deal with each other and with ensuring that they comply with the discovery provisions of the Federal Rules of Civil Procedure.

*  For more about this case in the Blog's archives click here.

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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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Abbott Labs. v. Apotex, Inc., __ F.Supp.2d __, 2006 WL 2884317 (N.D. Ill. Oct. 6, 2006) (Posner, C.J.).

Judge Posner, sitting on the Northern District by designation, extended the injunction he issued after a bench trial, No. 97 C 7515 (N.D. Ill. Mar. 31, 2004), aff'd by 122 Fed. Appx. 511 (Fed. Cir. 2005), to include Nu-Pharm, defendant Apotex's "stalking horse" from making, using or sell the patented drug, divalproex sodium.  In 2004, the Court enjoined Apotex from making, using or selling the patented drug.  At some point thereafter, Apotex slightly changed its manufacturing process and had an entity it formerly owned, and apparently still controlled, file an Abbreviated New Drug Application ("ANDA") with the Food and Drug Administration ("FDA").  Neither Apotex nor Nu-Pharm tested the drug to determine whether the altered manufacturing process resulted in a drug with sufficiently different characteristics to avoid plaintiff's claims.

The Court found that Apotex used Nu-Pharm to attempt to get a hearing before a new judge who might rule that the Apotex/Nu-Pharm drug was not an oligomer and, therefore, did not infringe plaintiff's patent.  Apotex's plan failed, however, when plaintiff eventually learned that Nu-Pharm was Apotex's "straw man" after suing Nu-Pharm in a separate case and brought a motion for contempt seeking to enforce the injunction against Nu-Pharm.

The Court held an evidentiary hearing, at which plaintiff's tests showed that there was no statistical difference between Apotex's infringing drug and Nu-Pharm's drug with the altered manufacturing process.  Because the Court found no "colorable" difference between the original infringing drug and Nu-Pharm's drug, the Court was able to summarily resolve the infringement issue without referring the matter to a separate suit for more comprehensive evidentiary proceedings.  The Court held that because an enjoined party has a duty to make good-faith efforts to comply with the injunction, Apotex had a responsibility to test its "new" drug to determine whether it was outside the claims of plaintiff's patent.  But even after Nu-Pharm was sued and plaintiff filed its contempt motion, Apotex did not test its "new" drug.  Finally, Judge Posner gave Apotex, and other parties facing injunctions, a stiff warning:

If Apotex can elude a finding of contempt, enjoined infringers need make only a trivial change in the process by which their infringing product had been made and present shoddy scientific evidence that the new product is different.  Such infringers would not even need to have a good faith belief that the changes in the process had resulted in a noninfringing product.  They would scour the scientific community for new experts and new tests that gave the desired result and go from judge to judge arguing that what was in reality the same substance held to have infringed was actually noninfringing.

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