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

Bergstrom v. Glacier Bay, Inc., No. 08 C 50078, Slip Op. (N.D. Ill. Jan. 22, 2010) (Mahoney, Mag. J.).

Judge Mahoney granted in part the parties' cross-motions regarding production of defendant Glacier Bay's source code, and denied Glacier Bay's other discovery motions. Plaintiff Bergstrom sought production of the source code as an OCR'ed tiff document, consistent with other production in the case. Glacier Bay offered to provide supervised access to the code for an expert and one lawyer on a laptop during business hours. The Court held that Glacier Bay's proposal was unnecessarily restrictive. It would have been unnecessarily burdensome to only allow Bergstrom's expert access to the 23,500 pages of source code on only a laptop, and to only allow screenshots of selected portions of the code. The Court, therefore, ordered production of the source code in the case-standard OCR'ed tiff format. 

The Court also denied Glacier Bay's request to prevent anyone involved in prosecuting Bergstrom's patents from viewing the source code. The Court held such a blanket ban was unnecessary, but did exclude one attorney that had both prosecution and litigation duties for Bergstrom from viewing the software.

The Court also denied Glacier Bay's motion to compel documents related to a failed settlement discussion between Bergstrom and a third party. The Court reasoned that while Fed. R. Evid. 408 was not an evidentiary rule, the spirit of Fed. R. Evid. 408 – protecting and promoting open settlement talks – counseled against production of the requested documents.

Finally, the Court denied Glacier Bay's motion to compel answers to requests for admissions regarding whether Bergstrom provided certain alleged prior art to its patent prosecution counsel. Compelling those answers would have potentially compelled Bergstrom to breach its attorney-client privilege with patent prosecution counsel.

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Autotech Techs. Ltd. Partnership v. Automationdirect.com, Inc., No. 05 C 5488, 2008 WL 783303 (N.D. Ill. Mar. 25, 2008) (Cole, Mag. J.).*

Judge Cole granted in part plaintiff Autotech's motion to compel communications between defendant Automationdirect.com, Inc. ("ADC") and any third party regarding ADC's competing C-More touch screen panel. The Court held that ADC need not produce documents related to source code for the C-More product. The Court previously denied Autotech's motion to amend its complaint adding claims related to that source code. But the Court held that ADC's third party communications could be relevant to show whether ADC has complied with its contractual obligation to use its best efforts to sell Autotech's product, or if its C-More sales efforts interfered with sales of Autotech's products. The Court also held that any communication evidencing customer confusion must be produced.

Practice Tip: Do not employ new arguments in reply briefs. The Court did not consider Autotech's reply brief because it changed the scope of its argument on reply. Autotech's opening brief sought ADC's third party communications with the exception of those regarding ADC's source code because claims regarding ADC's software were not in the case. But on reply, Autotech also sought the source code related communications.

*Click here for more about this case in the Blog's archives.

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Prominent Consulting LLC v. Allen Bros., Inc., No. 07 C 6357, 2008 WL 373217 (N.D. Ill. Feb. 11, 2008) (Dow, J.).

Judge Dow held that the Court had jurisdiction over plaintiff Prominent Consulting’s (“PC”) copyright claim and denied defendant Allen Brothers’ motion to stay based upon Colorado River abstention. The Court had subject matter jurisdiction over PC’s copyright infringement claim – based on source code PC wrote for Allen Brothers’ websites – because the claim was not controlled solely by the parties’ contract. At least some of PC’s copyrights existed before the parties entered the contract because PC wrote some of the code before signing the contract.

The case appeared ripe for Colorado River abstention: the parties were involved in state court proceedings paralleling the federal case; both cases arose out of the parties’ website-related agreement; and PC’s available relief was identical in each case because PC’s late federal registration prevents statutory copyright damages. But the Court’s exclusive jurisdiction over the copyright claim prevented abstention. The Court cited Colorado River for the proposition that district courts lack discretion to stay cases involving exclusively federal claims.

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Autotech Techs. Ltd. Ptnshp. V. Automation Direct.com Inc., No. 05 C 5488, 2007 WL 2746654 (N.D.Ill. Sep. 18, 2007) (Cole, Mag. J.).*

Judge Cole denied plaintiffs’ (collectively “Autotech”) motion to compel production of defendant Koyo Electronics’ (“Koyo”) touchscreen source code. In Autotech’s Third Amended Complaint – filed without the leave of Court required by Fed. R. Civ. P. 15, but later allowed by Chief Judge Holderman – Autotech alleged that defendants infringed Autotech’s copyrights in its touchscreen display images. Autotech also alluded to source code infringement, but did not explicitly claim it. 

In a later interrogatory response, Autotech stated that it was not claiming that defendants’ source code infringed Autotech’s copyrights, but reserved the right to amend the complaint adding such charges. Because Autotech had not sought leave to add source code infringement claims to its complaint, the Court held that the requested source code was not relevant and production was not required. The Court also noted that the request seeking source code was improper because it was served less than thirty days before the fact discovery close in violation of Local Rule 16.1. It did not matter that the deadline was ultimately extended because the extension was granted after the original fact discovery close and after the deadline for responding to the document requests.

Practice tip: Whenever a Court issues a fact discovery close, get out your calendar, count backward thirty days and mark the last day for serving discovery requests. You would be amazed at how many litigators do not take note of this important date.

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

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