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

LM Insur. Co. v. Aceo, Inc., No. 08 C 2372, Slip Op. (N.D. Ill. July 7, 2011) (Cole, Mag. J.).

Judge Cole granted a motion to compel further deposition testimony of a witness. During a deposition, the witness testified that she thought an "individual broker" may have received "'return' (kickback)." When asked to identify the broker, her counsel objected that the question called for speculation and coached the witness through a speaking objection that she should not answer without "clear information." Counsel then took the witness out of the room while a question was pending for a discussion which lasted thirty minutes. After the discussion, the witness stated that she had been "speculating" and that "I don't feel like what I said was correct." The Court noted that counsel's coaching was wrong, but that the counsel's most "disturbing" action was removing the witness to confer outside the deposition room. Furthermore, counsel never offered a justification for the conference during questioning. And in any event, the only acceptable explanation was determining whether the answer would have been privileged. However, there was no indication of that. Because of the deposition misconduct, the Court ordered that the deposition would continue in-court pursuant to the Court's supervision. The Court also ordered an in camera conference with the witness and her counsel to determine whether there is any privilege protecting what counsel told the witness during the break in the original deposition. Finally, the Court declined to consider whether further action was necessary at the time of the opinion.

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Heathcote Holdings Corp. v. William K. Walthers, Inc. d/b/a Darda Toys, No. 09 C. 6722, Slip Op. (N.D. Ill. Mar. 11, 2011) (Bucklo, J.).

Judge Bucklo granted defendants summary judgment that it lacked the intent to deceive required by the false patent marking statute, 35 U.S.C. § 292. While an employee and her team were responsible for the information on the packaging, there was no evidence that the employee or her team were aware that the patents had expired, were (in one case) not the correct patent number or otherwise had any knowledge of the false marking statute. Indeed, plaintiff acknowledged that defendant "makes an effort to ensure that its packaging is truthful." Furthermore, upon learning of plaintiff's allegations, defendant created an "action plan" to resolve the issues. Defendant segregated the accused inventory, removed the patent information and held new production until its suppliers could change the markings. Based upon these facts, the Court held that no reasonable jury could find that the defendant had the required intent to deceive.
The Court went on to hold that the concepts of agency and collective corporate knowledge, or "collective scienter" were not applicable. The Seventh Circuit had specifically held that intent to deceive is not a corporate attribute.
 

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Mindy's Restaurant, Inc. v. Watters, No. 08 C 5448, Slip Op. (N.D. Ill. Feb. 27, 2009) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendant's motion to disqualify plaintiff's counsel in this Lanham Act dispute regarding plaintiff's Mindy's Restaurant marks. Defendant previously was a licensee of plaintiff's marks. During their licensing arrangement, the parties explored a potential joint venture. As part of that process, plaintiff and defendant jointly met with a member of plaintiff's current law firm. Defendant contended that that meeting created an attorney-client relationship which disqualified plaintiff's counsel from this case. But the Court held that even if the single meeting with both parties created an attorney-client relationship, there was only a “slight tangential relationship” between the current case and the prior potential joint venture. And the attorney involved could not have received confidential information. The attorney met with both parties together and never spoke to either party about the matter after the initial meeting. So any information defendant provided to the attorney was also provided to plaintiff. Finally, there was no evidence that the attorney or any member of plaintiff's counsel's firm would ever be called as an essential witness in the case.

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Se-Kure Controls, Inc. v. Vanguard Prods. Group, Inc., No. 02 C 3767, 2007 WL 781250 (N.D. Ill. Mar. 12, 2007) (Cole, Mag. J.).

Judge Cole denied plaintiff's motion to exclude plaintiff's document as a Rule 37 sanction for defendants' failure to identify its potential reliance upon the document and the person who created it.  During the discovery process, plaintiff produced a "Contact Report" listing calls made by one of its sales employees (who eventually left plaintiff's employ).  Defendants sought to rely upon the document as part of their 35 USC Section 102(b) on sale bar defense (similar to the issue in the Court's last opinion in this case).  Plaintiff argued that defendants should not be allowed to rely upon the document because:  1) defendants failed to identify the Contact Report in their responses to plaintiff's invalidity interrogatory; and 2) defendants did not identify the Contact Report's author (plaintiff's former employee) in their Rule 26 disclosures.  As with plaintiff's previous Rule 37 arguments, the Court denied them because defendants made plaintiff aware of the documents during discovery.  The Court noted that plaintiff was arguing defendants should be barred from relying on a document plaintiff produced for failure to identify plaintiff's document to plaintiff.  The Court was not swayed by defendants' failure to identify the Contact Report's author because he was plaintiff's ex-employee and because he had passed away and, therefore, would not be brought as a witness.  Finally, the Court explained that while a party has a right to be apprised of an opposing party's evidence, but not necessarily the weight or significance the opposing party places on that evidence.

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Se-Kure Controls, Inc. v. Vanguard Prods. Group, Inc., No. 02 C 3767, 2007 WL 781253 (N.D. Ill. Mar. 7, 2007) (Cole, Mag. J.).

Judge Cole denied plaintiff's motion to exclude two defense witnesses as a Rule 37 sanction for failing to properly disclose the witnesses.  During the discovery process, defendants identified two witnesses, through declarations signed by the witnesses, as having knowledge of a 35 USC Section 102(b) on sale bar.  Although defendants provided plaintiff the witnesses' declarations and otherwise identified the witnesses to plaintiff, defendants failed to add the witnesses to their respective Rule 26 disclosures and they failed to supplement their respective responses to plaintiff's interrogatory seeking details of all of defendants' invalidity defenses.  Plaintiff argued that these failures led to plaintiff's decision not to depose the witnesses and that defendants' should be barred from relying upon the witnesses for failure to update their Rule 26 disclosures and interrogatory responses.  The Court, however, held that while nondisclosure would generally result in exclusion, exclusion was not warranted in the instant case because defendants did disclose the witnesses in writing.  As a result, "[s]upplementation would have availed nothing required by the [Federal] Rules and was thus unnecessary."

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