ABC Corp. I v. Partnership & Unincorporated Assocs. Identified on Sched. A, No. 1:20 cv 4806, Slip Op. (N.D. Ill. Sept. 4, 2020) (Seeger, J.).

Having previously issued a show cause order, Judge Seeger granted plaintiff leave to file an amended complaint in this patent dispute naming the plaintiff, or the case would be dismissed for improperly filing as an anonymous plaintiff.

While Fed. R. Civ. Pro. 10(a) allows a plaintiff to file anonymously in exceptional circumstances and with leave of court, those circumstances include protecting state secrets, trade secrets or victims of abuse, not patent infringement. Plaintiff’s theory “seemed to be” that filing in its name would alert defendants and allow them to create new fictitious seller names or get new Amazon Standard Identification Numbers. But the Court noted that defendants could take those same actions at any point in the case, for example after a Temporary Restraining Order was issued. A patent suit alone is not enough to justify plaintiff filing anonymously.

I have watched an increasing number of IP suits filed by anonymous plaintiffs in the Northern District and have been waiting to see a decision like this, acknowledging that a plaintiff filing anonymously required unique circumstances, beyond the risk of defendant avoiding judgment by altering its identity.

Chief Judge Pallmeyer opted for an abbreviated format for her sixth amended COVID General Order issued, Friday, September 4. That is presumably because the order is simpler than it was at the outset of the pandemic. There are no blanket case extension. The General Order basically extends provisions limiting courthouse access to wha tis necessary. Specifically, the General Order requires:

  • No Local Rule 5.2(f) Courtesy Copies — Absent case-specific requests, Local Rule 5.2(f) requiring paper courtesy copies of many filings is suspended. In fact, “[n]o courtesy copies may be submitted . . . unless the parties receive case-specific requests for copies from the presiding judge.”
  • No Local Rule 5.3(b) Presentment — Motions may not be noticed for in-person hearings. Presiding judges will notify the parties if a hearing, either in-person or by electronic means, is necessary. This rule, extending across the COVID General Orders, may have the biggest long-term impact on Northern District practice, as it has long been a court governed by regular in-person hearings for nearly every motion.
  • Pro Se Email Filing Allowed — The Court is allowing pro se filing by email to the Court Clerk, so long as the document is a PDF, is signed and the email contains certain identifyin information.
  • No Public Gatherings — Neither federal courthouse is allowing public gatherings, unless authorized by Chief Judge Pallmeyer.

The General Order will be vacated, amended or extended no later than November 16, 2020.

The UIC John Marshall Law School’s Center for Intellectual Property, Information & Privacy is hosting a virtual seminar along with the Institute for Intellectual Property & Social Justice on Friday, September 11, 2020 from 7:40am – 3:00pm CT focused on IP issues in the midst of the pandemic. The speaker list is impressive, headlined by the Federal Circuit’s Judge Linn and Judge Michel (Ret.). The conference promises to be unique and thought provoking. You can register here.

Judges Wood & Pallmeyer issued a joint order requiring that everyone in public spaces of the Northern District and Seventh Circuit wear face masks or coverings. The order includes all public spaces including the lobby, elevators, restrooms, public corridors and also courtrooms, absent direction otherwise from the presiding judge. The mask must cover both the nose and the mouth. The only exception to this order is for people with documentation stating that they are unable to wear a mask or face covering for medical reasons.

Yesterday, Tuesday, May 26, Chief Judge Pallmeyer entered a Fourth Amended General Order updating the first three (which extended all civil deadlines 28 days, an additional 21 days and 28 more days, for 77 total days) and further addressing the “Coronavirus COVID-19 public Emergency.” The fourth amended order did not grant any additional blanket extensions. The Court did suspend jury trials until after August 3, 2020. And, absent contrary directions from a specific judge, suspended courtesy copy requirements through July 15, 2020. Judges are free to hold hearings, bench trials and settlement conferences, although they should only be in-person to the extent necessary.

John Marshall is hosting its 11th annual Ethics in the Practice of Intellectual Property Law seminar on Friday, June 5, 2020, from noon – 3:45 pm CST. The seminar will be online and is offering 3.25 hours of professional responsibility credit, including 1 hour of mental health/substance abuse credit. Register here.

Topics include:

  • Conflicts & Representation for Patent Practitioners;
  • IP & Ethics: Current Trends & Best Practices;
  • No More Fear, No More Fright: How Attorneys Can Use Their Might When Facing Failure; and
  • Stress in the Legal Profession.

It promises to be a great event and is timely for those Illinois lawyers with their CLE compliance due in June.

On Friday, April 24, Chief Judge Pallmeyer entered a Third Amended General Order updating the first two (which extended all civil deadlines 21 days and than an additional 28 days, respectively) and further addressing the “Coronavirus COVID-19 public Emergency.” Beyond setting out the further extension and addressing hearings, settlement conferences and trials, the biggest change in the third general order is the paragraph 5 requirement that for any case in which no docket entry or order has been posted by the assigned judge since March 16 (unless the assigned judge’s webpage instructs otherwise), the parties file a joint written status report by May 18 addressing:

  1. the progress of discovery;
  2. the status of briefing on any open motions;
  3. settlement efforts;
  4. an agreed or alternate proposed schedules covering the next 45 days;
  5. an agreed or alternate discovery or dispositive motion schedule to the extent necessary;
  6. seeking any agreed action the court can take without a hearing; and
  7. stating whether there is a “necessary and time urgent” need for a telephonic hearing.

The Court also ordered as follows:

  • For all civil cases, all case deadlines whether set by the Federal Rules, Local Rules, Court order or Executive Committee order are extended by 28 days. For deadlines set before the first Order, deadlines have been moved a total of 77 days. Deadlines set between the second and third orders are only moved 28 days. The Order notes that the Court is accessible by ECF and, in “emergency” situations by phone or video.
  • Civil hearings and settlement conferences set on or before May 29 are stricken, and will be reset by the presiding judge on or after June 1. Parties can seek a telephonic hearing or settlement conference, but are warned not to do so seeking a “routine” status hearing. Such requests should “speicfy the need and time urgency for the telephonic hearing or conference.”
  • Civil jury trials set on or before June 26 are stricken to be reset by the presiding judge on or after June 29.
  • The Order does not impact deadlines to appeal district court orders. But the Court held that if an extension request was timely filed, the current situation was good cause for timely motions.
  • The Clerk’s offices are closed to public entry through May 29.
  • Local Rule 5.2(f) requiring courtesy copies in certain instances is suspended for all filings through June 1. Courtesy copies may not be submitted for filings through June 1.
  • Parties should consult the presiding judge’s webpage for hearings set after June 1 because motion call schedules will likely be altered, presumably to reduce traffic at the Northern District courthouses.
  • The Court will vacate, amend or extend this General Order no later than May 26.

Everite Transworld Ltd. v. MIEH, Inc., No. 19 C 678, Slip Op. (N.D. Ill. Feb. 24, 2020) (Rowland, J.)

Judge Rowland granted in part plaintiffs’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant MIEH’s counterclaims for tortious interference and civil conspiracy in this patent dispute involving toy vehicles that travel through tubes.

MIEH did not meet its Fed. R. Civ. P. 9(b) heightened pleading requirement for its civil conspiracy claim. First, the Court disregarded statements that MIEH did not allege to be false. And the remaining statements, even if they were false, were made after the parties executed the agreement. Because the statements were made after entry into the agreement, they could not have caused MIEH to enter the agreement. The Court, therefore, dismissed the civil conspiracy claim with leave to replead, if MIEH could.

MIEH did, however, sufficiently plead tortious interference. MIEH pled that plaintiffs EVL and EVTL attempted to stop MIEH’s sales by contacting MIEH’s distributors and threatening legal action by falsely claiming that MIEH lacked a license to the intellectual property. MIEH also pled that its distributors have refused to purchase MIEH product or canceled MIEH orders.

Neurografix v. Brainlab, Inc., No. 12 C 6075, Slip Op. (N.D. Ill. Jan. 30, 2020) (Kennelly, J.)

Judge Kennelly granted defendants’ (collectively “Brainlab”) Fed. R. Civ. P. 56 motion for summary judgment of no lost profits in this patent case involving tractographies.

Plaintiff Neurografix was not entitled to lost profits because it had not made its own product and  it could not prove that it had the manufacturing and marketing capabilities to exploit the demand for Brainlab’s product. Neurografix did offer some evidence of plans to offer a competing service, but the plans were no more than speculative. For example, Neurografix had not sent any information about its contemplated system to any of its customers or potential customers.

FameFlynet, Inc. v. Jasmine Enters. Inc., No. 17 C 4749, Slip Op. (N.D. Ill. Aug. 8, 2019) (Durkin, J.)

Judge Durkin granted plaintiff FameFlynet’s motions for attorney’s fees as the prevailing party in this copyright dispute involving celebrity wedding photos, and granted in part defendant Jasmine’s motion to strike FameFlynet’s motion.

Upon learning of FameFlynet’s allegations that Jasmine breached FameFlynet’s copyrights by posting FameFlynet’s images online, Jasmine took down the images. Additionally, at the outset of the case, the parties came to within $1,000 of settling, with FameFlynet demanding $16,000 and Jasmine countering at $15,000. Despite that, the case proceeded for over two years, until the Court ruled that Jasmine infringed and the parties agreed to $5,000 in damages.

With respect to Jasmine’s motion to strike, the Court held as follows:

  • It was not improper for FameFlynet to argue for fees based upon settlement discussions. While the Seventh Circuit had not squarely decided the issue, the weight of authority suppported considering settlement discussions when ruling on a fees motion;
  • Limitations on the use of information from the parties’ mediation were irrelevant because Jasmine did not point to any statements made exclusively during the mediation that FameFlynet sought to use.
  • FameFlynet’s references to Jasmine’s insurance coverage were also not improper. They were not used to show fault or liability.
  • The Court struck FameFlynet’s statements that Jasmine kept the infriniging images on its site for three months after it was put on notice, but the parties previously agreed that Jasmine removed them within one day. FameFlynet was limited to the statements it stipulated to.

With respect to FameFlynet’s fees motion, the Court held as follows:

  • There was no dispute that FameFlynet was the prevailing party.
  • Jasmine’s defenses were not frivolous or objectively unreasonable. The fact that Jasmine only advanced one affirmative defense in opposition to summary judgment did not suggest the others were flawed. Instead, Jasmine advancing only its strongest defense – fair use – served the judicial economy.
  • The Court noted that defenses need not be successful to be reasonable.
  • Jasmine’s other litigation conduct was also reasonable. Jasmine was not unreasonable for repeating its $15,000 offer, particularly because the offer – three times the $5,000 the parties agreed to after the Court ruled on liability.
  • Awarding FameFlynet the $200,000+ it sought would not advance compensation or deterrence. Jasmine removed the photos the same day it became aware of the issue. Jasmine has also stated it had no plans to blog in the future.
  • Jasmine and its employee that posted the photograph were unaware of the infringement.
  • The nature of the infringement and the parties’ positions and conduct did not justify a substantial fee award. The Court, therefore, awarded $10,500 in fees.
  • The Court also noted that the litigation could have been largely avoided because the parties were $1,000 apart in settlement discussions at the outset of the case.