Unidentified Patent Holder v. Does 1-24, Slip Op., No. 21 C 514 (N.D. Ill. Feb. 6, 2021) (Kennelly, J.).

Judge Kennelly ordered unidentified plaintiff (Doe Plaintiff) to show cause why the patent case should not be dismissed.

The Court noted that in many ways this was a typical “Schedule A” case in which a plaintiff IP holder sues multiple Doe defendants for alleged knock-off sales. The case was different in two important respects: 1) plaintiff sought to file anonymously; and 2) the asserted IP was a design patent, instead of a trademark.

Initially, the Court denied Doe Plaintiff’s motion to seal its identity, with leave to refile. Doe Plaintiff’s sole justification for remaining anonymous was that defendants subscribe to a service monitoring Northern District of Illinois filings for cases like this one. But the Court noted it was an inferential leap worthy of Olympian Bob Beamon that because defendants saw a suit against anonymous defendants, the specific defendants in suit would hide their assets.

Additionally, the Court ordered Doe Plaintiff to show cause as to how it could file a single patent suit against 200+ defendants for selling unrelated products. 35 U.S.C. Section 299. The Court noted that all defendants selling infringing products and some using identical advertising language were not sufficient. Doe Plaintiff did not assert that defendants were selling identical products or allege common facts.

The Northern District of Illinois has begun to allow electronic filing of non-sealed digital audio/video exhibits (MP4, MP3, MOV, etc.). The exhibits will be available for purchase and download via the Certified Copy Desk.

If you want to file a document:

  1. Go to the Northern District’s digital submission page and fill out the form;
  2. Upload the digital audio/video file(s) (note that it will not accept PDFs, presumably because they are neither audio nor video); and
  3. Click “submit.” when you are done.

Within 24 business hours, an entry will appear on the docket confirming the exhibit was received.

To purchase electronically-filed audio/visual exhibits:

  1. Contact the Certified Copy Desk (CCD) inbox at CCD_ILND@ilnd.uscourts.gov;
  2. Pay the CCD invoice you receive according to the Fee Schedule; and
  3. Download the file via the link received after your payment is processed.

On May 6, 2021 from 12:00 p.m. – 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (IPLAC) is hosting a panel discussion focusing on topics related to Section 101.  A selection of topics will be discussed.  The panel is being moderated by A. Christal Sheppard Professor, University of Nebraska College of Law, Distinguished Fellow, NGCT – Nebraska Governance & Technology Center.  Panel members include:

  • Andrei Iancu, Partner, Irell & Manella, Former Under Secretary of Commerce and Director of the USPTO
  • Rob Sterne, Founding Director, Sterne, Kessler, Goldstein & Fox
  • Gwilym Roberts, Chairman & European Patent Attorney, Kilburn & Strode LLP

This event is free for IPLAC members.  Please contact Billie Hinnen to register.

Chief Judge Pallmeyer issued her tenth amended COVID General Order last week. As with the last several amended orders, there are no additional blanket case extensions. The General Order basically extends existing restrictions, including ordering that no jury trials — both civil and criminal — may begin until, at least, April 5, 2021.

Specifically, the General Order also 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 identifying 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 April 5, 2021.

In a February 17, 2021 Order, Chief Judge Pallmeyer set out a COVID testing protocol to allow for safe in-person proceedings, in particular jury trials. The order requires the following:

  • Court employees working in the court facilities will be tested for COVID no more than twice per week using saliva tests. The results will be provided only to the tested employee, who will be obligated to self report any positive test;
  • Jurors and potential jurors will also be tested twice per week using a saliva test; and
  • Any person involved in an in-person hearing or trial exceeding two days will also have to submit to testing.

This suggests that the Court will be allowing for jury trials and, perhaps at least in some cases, in-person hearings going forward.

In response to recent questions about a potential breach of the CM/ECF system, the Northern District issued a General Order setting out a definition of Highly Sensitive Documents (HSD). The General Order states that “[m]ost sealed filings in civil cases do not constitute HSDs” and specifically excludes “[c]ommercial [and] proprietary information” from HSD classification. Documents will not be classified as HSD solely because they include personal identifying or financial information.  In addition to various criminal filings, the following categories of material can be classified as HSD:

  • “Materials whose disclosure could jeopardize national security or place human life or safety at risk;” and
  • “Materials whose disclosure to a foreign power or its agents (as defined by 50 U.S.C. § 1801) would be unlawful under U.S. law or would substantially assist a foreign power or its agents in the development of that foreign power’s competing commercial products or products with military applications.”

HSD are required to be filed with the Clerk in paper form. In order to have a document classified as HSD, a party must seek leave to file as HSD, including a Rule 11 certification that the document qualifies as an HSD. The order granting the motion must identify the persons allowed access to the documents and instructions for handling of the documents after the case concludes.

Two copies of any HSDs are to be filed in separate, sealed envelopes “conspicuously labelled as HSD Sealed Material,” the case caption, and identifying the attorney’s or party’s name and address, including email. A copy of the order authorizing the HSD filing must also be included with any document presented for filing as an HSD. 3.

Parties may seek to reclassify documents already filed as confidential as HSD by motion pursuant to Local Rules 5.8 (filing motions under seal) and 26.2 (sealed documents).

On December 3, 2020, from 3:00 – 5:30 pm CT the IP Law Symposium Committee, including Co-Chairs Jim Muraff of McDonald Hopkins LLC and Matt Marrone of McAndrews, Held & Malloy, Ltd., and Vice Chair Viren Soni of the CME Group, are hosting a series of fireside chats and panels where you will hear directly from Judges across the country about current patent and trademark litigation topics, trends, and insights.  The chats will be with:

  • TTAB: Judge Linda Kuczma
  • PTAB: Chief Judge Boalick
  • Federal district court: Chief Judge Pallmeyer (N.D. Ill.); Judge Albright (W.D. Tex.); and Judge Kendall (N.D. Ill.)

The event is free for IPLAC Members and $30 for Non-Members.  Click here to register for the event.  I look forward to seeing you there.

Chief Judge Pallmeyer issued her seventh amended COVID General Order earlier today, October 29, 2020. As with the last order, there are no additional blanket case extensions. The General Order basically extends provisions limiting courthouse access to what is necessary. But it also suspends jury trials — both civil and criminal — from November 9, 2020 through January 26, 2021. Bench trials are allowed, but no jury trials will be held in the Northern District until late January, at the earliest.

Specifically, the General Order also 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 January 26, 2021.

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.