Northern District of Illinois Moving to NextGen CM/ECF System

On May 2, 2022, the Northern District is slated to update its CM/ECF system to the NextGen CM/ECF. The Northern District’s Clerk, Thomas G. Bruton, sent ECF filers an email outlining the procedure change. Essentially, every filer is now required to have a personal Pacer account – not a single account for a firm, as an example – and you link your existing Northern District CM/ECF credentials to that Pacer account. Districts across the country are all moving to this system which, conveniently, allows for access to each court’s system using just one set of Pacer credentials.

The following are instructions for complying with the NextGen CM/ECF requirements from the Clerk’s office:

  1. Do you have a unique login to PACER or do you share your PACER account? Note that each NextGen user must have their own individual PACER account.  Specifically, this means that a firm with one shared PACER login account must register each user with their own unique individual PACER account and password.  If you currently share a PACER login within your firm, you must register for your own PACER login*.

    To register for your own PACER Account, visit this website: https://pacer.uscourts.gov/register-account/attorney-filers-cmecf

    *A law firm can create a PACER Administrative Account (PAA) to manage the billing for all their individual accounts. Staff members who share a PACER account only for research can continue to share. For more information on group billing accounts visit this website: https://www.pacer.gov/reg_firm.html.

  1. Do you have a PACER login with only 6 characters? If you still have a PACER account that was created prior to August 2014 (Legacy PACER Account) and has not been upgraded—that is, if you are using a PACER id that is only 6 characters long—you will need to first upgrade your legacy PACER account. You can use this instruction to guide you through the steps on how to upgrade your PACER account:

    https://pacer.uscourts.gov/sites/default/files/files/Upgrade_PACER_Account%20-%20Learning%20Aid.pdf

  1. Do you remember your password to the Current CM/ECF system? If you do not remember your current password, visit:

    https://ecf.ilnd.uscourts.gov/cgi-bin/lostPassword.pl

  1. Do you remember your login to the current CM/ECF system? If you do not remember your current login, please send an email to:

    ECF_Passwordresets_ILND@ILND.USCOURTS.GOV

  1. On or after May 2, 2022, all users must link their individual PACER account to your existing individual CM/ECF account. This is a one-time only procedure and links your personal PACER account to your personal CM/ECF account going forward. Please note, this step will not work until May 2, 2022.

    https://pacer.uscourts.gov/sites/default/files/files/Linking_FilingAccount_to_PACER_BKDC.pdf

On Tuesday, March 8, 2022 from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (IPLAC) Agents Committee is hosting a virtual event focusing on a new professional role which has emerged to address the problems that require both legal subject matter and technical expertise: Legal Engineers.  Eric DeChant, founder of American Society of Legal Engineers (ASLE) will discuss different paths to becoming a Legal Engineer and how Legal Engineering can improve legal functions.

This event is free for Members and $25 for Non-Members.  Please register by clicking here.

The Intellectual Property Law Association of Chicago (IPLAC) Creator of the Year Committee is seeking nominations for its 2022 Creator of the Year Award.  The Award honors those who have made a significant creative contribution in one or more of the following substantive areas of intellectual property law:

  • Patent Law: An invention or group of inventions having technological significance and an important social and economic impact, resulting in one or more U.S. patents.
  • Trademark Law: A powerful branding program that combines a strong trademark or service mark and a memorable advertising and marketing campaign.
  • Copyright Law: An important and original work of authorship, in the literary, musical, visual, dramatic or other arts.

Nominees can be individuals, groups or corporations. Most or all of the creative activity must have occurred in the Chicago metropolitan area. The winner or winners will be honored at IPLAC’s May 17, 2022 annual meeting and presented a plaque recognizing their achievements.

Nominations are due March 15, 2022.  Nomination form is available HERE.  For more information, please contact Rathna Koka.

On February 9, 2022 from 12-1pm CT, the IPLAC U.S. Patents Committee is hosting a virtual discussion on how to protect new software technologies using web and desktop interfaces.  The event featured speakers include:

  • Jason Skinder, Chief Intellectual Property Counsel in Connected Enterprise at Honeywell;
  • Tracy-Gene G. Durkin, Partner and Practice Leader of Sterne Kessler Goldstein, & Fox’s Mechanical & Design Practice Group; and
  • Dunstan Barnes Ph.D., Partner with McAndrews, Held & Malloy.

The event is free for Members, $25 for Non-Members and free for Start-Up Companies (please contact Yoni Torchman).

Please click here to register for the event.

The federal district courts in Illinois will host two remote continuing legal education seminars on representing prisoners.  The first seminar “Introduction to Prisoner Civil Rights Litigation” will be held on January 27, 2022 and the second seminar “Representing Prisoners in Medical Cases” will be held on February 3, 2022.  Both seminars will be held from 9:30 a.m. to 12:30 p.m. CT.

The seminars are free and 3.0 hours of MCLE credit has been requested (including 0.5 hours for professionalism) per seminar.

The facilitator for this program is Alan Mills, Executive Director of the Uptown People’s Law Center.  To register, e-mail registration@uplcchicago.org with (1) the seminar you want to attend or both, (2) your ARDC number as it appears on the Illinois Supreme Court rolls if you want CLE credit, and (3) your current e-mail address.  Alan will confirm your registration and send you the link(s) and materials via e-mail.

If you have any questions, please contact Alan Mills, alan@uplcchicago.org

Got Docs, LLC v. Kingbridge Holdings, Inc., No. 19 C 6155, Slip Op. (N.D. Ill. Oct. 7, 2021) (Guzman, J.).

Judge Guzman granted defendant Kingbridge’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ conversion and civil conspiracy claims, and denied plaintiffs’ Fed. R. Civ. P. 12(c) motion for judgment on the pleadings as to certain of defendants’ counterclaims in this trade secret dispute.

With respect to plaintiff’s motion for judgment on the pleadings, the Court held as follows:

  • Defendants’ declaratory judgment counterclaim was not identical to its affirmative defense. The counterclaim and the affirmative defense both claim that plaintiffs gave up their interests, but the counterclaim also claims that to the extent plaintiffs did not give up their interests, defendant AMF6 still retained an ownership interest.
  • Plaintiff’s argument that a declaratory judgment claim is not a stand alone claim, just an affirmative defense also failed. Parties to a contract often use the Declaratory Judgment Act to clarify disputes over the scope and meaning of a contract.
  • The Court denied as untimely arguments plaintiff made in its reply brief.

With respect to Kingbridge’s motion to dismiss, the Court held as follows:

  • Under Illinois law, plaintiff’s conversion claim cannot survive because the allegedly converted asset is intangible. Even if the governing law were Delaware or California, a conversion claim could not stand because plaintiff does not alleged that Kingbridge obtained plaintiff Riviera’s interest in Got Docs.
  • Because there is not a conversion claim, plaintiff cannot make a civil conspiracy claim based upon conversion.

Kolbe v. CZS Holdings LLC d/b/a Pur360, No. 20 C 6886, Slip Op. (N.D. Ill. Oct. 19, 2021) (Kendall, J.).

Judge Kendall granted in part counterclaim plaintiff CZS Holdings’ (“Pur360”) Fed. R. Civ. P. 12(b)(6) motion to partially dismiss counterclaim plaintiff’s (“Kolbe”) breach of contract claim in this trade secret misappropriation case.

As an initial matter, the Court noted that Kolbe’s counterclaim and his response brief were not signed as required by Fed. R. Civ. P. 11. The Court accepted the papers despite that, but warned it would reject future papers that were not properly signed.

Kolbe claimed that his compensation agreement was memorialized partially in a written agreement and partially orally, including an oral agreement for a variety of commissions and yearly bonuses based upon gross sales revenues. As an initial matter, the Court was allowed to consider the agreement and its integration clause, even though it was not attached to Kolbe’s counterclaim, because it was attached to the underlying complaint. The Court did not consider it, however, because Kolbe appeared to question its authenticity.

The parol evidence rule did not, at least at the pleading stage, preclude Kolbe’s claim because parol evidence would only restrict the claim if there were a writing that precluded additional oral agreements. As the Court was not considering the written agreement, it could not determine whether the parol evidence rule precluded Kolbe’s claim at the Rule 12 stage.

The Court dismissed Kolbe’s claim that part of the parties’ compensation agreement was governed by a schedule, other than the written contract, because Kolbe did not sufficiently describe the schedule such that Pur360 was able to know the allegation against it.

Kolbe also failed to sufficiently plead an oral contract. “Almost all” aspects of the alleged oral agreement were unclear. For example, Kolbe did not state the number of shares he was promised or the advisory position he was promised. There were also no allegations identifying when the oral agreement was entered or when it was to terminate.

Kolbe also failed to plead a claim for breach based upon unpaid royalties in light of Tampa’s overall sales. The only allegation was that Tampa’s sales exceeded $356,000. There was no indication if Tampa’s sales were new (10%) or recurring (3%).

The Northern District is amending the Local Rule 3.2 notice of affiliates procedure to make it more robust and more meaning, including an ongoing requirement to update. For all civil cases filed on or after January 3, 2022 (the rule is not retroactive), parties must file a Notification of Affiliates as a PDF pursuant to Amended Local Rule 3.2 and disclose their affiliates by adding their names using a new event in Pacer.  Parties are required to manually enter the name of each corporate parent or affiliate (individually) with their first appearance, pleading, petition, motion, response, or other request addressed to the Court. This will no doubt be valuable in avoiding conflicts of interest like those identified by the Wall Street Journal earlier this year in district courts across the country, which is great for the Court and litigants alike.

Pursuant to Amended Local Rule 3.2, any nongovernmental party, other than an individual or sole proprietorship, shall file a statement identifying all its Affiliates, defined as

Any entity or individual owning 5% or more of a party. Any entity or individual who owns 5% or more of any such affiliate shall also be included within the definition of “affiliate.”

A supplement to the statement shall be filed within thirty (30) days of any change in the information reported.

Instructions and a video demonstration on how to enter a Notification of Affiliates are found at the following links:

Caddo Sys., Inc. v. Siemens Aktiengesellschaft (AG), No. 20 C 5927, Slip Op. (N.D. Ill. Oct. 20, 2021) (Cox, Mag. J.).

Magistrate Judge Cox granted plaintiffs’ Fed. R. Civ. P. 37 motion to compel, but limited plaintiffs’ questioning of defendants’ (collectively “Siemens”) Fed. R. Civ. P. 30(b)(6) corporate witness to two hours in this patent case.

The Court required that Siemens produce a corporate witness to testify as to communications between Siemens and third party Microsoft surrounding Microsoft’s license from plaintiffs. Siemens had previously withheld certain communications between Siemens’ and Microsoft’s in-house counsel sending Siemens the relevant license as work product. But upon review, the Court held that certain communications had no work product impressions and had to be produced. The Court, therefore, allowed a Rule 30(b)(6) corporate deposition of Siemens as to those emails and related communications. The Court did, however, limit the deposition to two hours of questioning to make the deposition more proportional to its value because the Court suspected Siemens had little or no additional information to provide beyond the document based upon statements from Siemens’ relevant in-house counsel.

The Court did not award plaintiffs their fees for bringing their motion to compel pursuant to Fed. R. Civ. P. 27(b)(2) because Siemens’ refusal to provide the additional corporate witness testimony had not violated a Court order.

On Wednesday, December 15, 2021 from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (“IPLAC”) and the Illinois Intellectual Property Alliance (“ILIPA”) will present A Conversation with Professor Ed Lee About NFTs.  This virtual event will discuss NFTs, who owns the copyrights and what that means from a legal perspective. The moderator will be Brittany Kaplan of K&L Gates.

This event is free for both Members and Non-Members.  Please register by clicking here.