On Thursday, April 23, 2020 from 12:00 – 1:15pm CT, the Federal Bar Association is hosting a virtual CLE with three of the Northern District’s newest district judges:

  • Martha M. Pacold
  • Mary M. Rowland
  • Steven C. Seeger

The panel will be moderated by retired Chief Judge Ruben Castillo. In addition to comments on written and oral advocacy, the program promises question and answer sessions with the judges. Click here to register.


Black & Decker Inc. v. Positec USA Inc., No. 13 C 3075, Slip Op. (N.D. Ill. Feb. 20, 2020) (Gottschall, J.)

Judge Gottschall denied defendants’ (collectively “Positec”) Fed. R. Civ. P. 56 motion for summary judgment of invalidity and granted it as to noninfringement in this patent case involving string trimmers, commonly known as weed-whackers.

The Court did not rely upon plaintiff Black & Decker’s expert opinion regarding infringement because it solely provided conclusions without explanation or detail. The Court also refused to reconsider the meaning of “planar” in the claims. But Positec’s invalidity expert opinion was sufficient to create a question of fact.

This afternoon, Chief Judge Pallmeyer entered a second general order updating the first general order (which extended all civil deadlines 21 days) and further addressing the “Coronavirus COVID-19 public Emergency” The Court 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 49 days. Deadlines set between the two 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 1 are stricken, and will be reset by the presiding judge on or after May 4.
  • Civil jury trials set on or before May 29 are stricken to be reset by the presiding judge on or after June 1.
  • 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 1.
  • Local Rule 5.2(f) requiring courtesy copies in certain instances is suspended for all filings through May 1. Courtesy copies may not be submitted for filings through May 1.
  • The Court will vacate, amend or extend this General Order no later than April 24.

Hangzhou Aoshuang E-Comm. Co. v. 008Fashion, et al., No. 19 C 4565, Slip Op. (N.D. Ill. Dec. 3, 2019) (Cole, Mag. J.).

Magistrate Judge Cole granted defendants’ (collectively “008Fashion”) motion for an extension to respond to discovery requests and to vacate the Court’s prior order finding that 008Fashion’s responses were late and requiring compliance with Local Rule 37.2.

008Fashion’s motion for extension was filed five minutes before its Court-ordered deadline to respond to the discovery and was noticed for hearing after the deadline, in fact, after 008Fashion’s proposed extended deadline. This was improper. Furthermore, the responses were “extremely late.” The Court would not vacate its order, and noted that by responding late, 008Fashion waived its objections. The Court also reiterated that Local Rule 37.2 compliance was required, and that it must be more than formulaic. The Court, therefore, required that future discovery motions contained a detailed, joint statement of the parties’ efforts to resolve their discovery issue. Without an appropriate Local Rule 37.2 statement, future discovery motions would be denied.

Beckman Coulter, Inc. v. Sysmex Am., Inc., No. 18 C 6563, Slip Op. (N.D. Ill. Feb. 26, 2020) (Lee, J.).

Judge Lee denied plaintiff Beckman Coulter (“BCI”) Fed. R. Civ. P. 56(d) motion for additional discovery in this patent dispute involving automated laboratory software.

Defendants (collectively “Sysmex”) sought summary judgment precluding recovery of pre-suit damages. Sysmex argued that notice – actual or constructive – was required for pre-suit damages because BCI sold product embodying the claims. BCI sought additional discovery arguing that to the extent that Sysmex later argued the BCI products did not embody the claims, there would be an issue of fact. But that discovery, even if it happened, would be futile because BCI had admitted that its products embodied the claims. Furthermore, the discovery BCI seeks is actually legal conclusions, not fact discovery.

Life After Hate, Inc. a/k/a ExitUSA v. Free Radicals Project, Inc., No. 18 C 6967, Slip Op. (N.D. Ill. Mar. 3, 2020) (Cole, Mag. J.).

Magistrate Judge Cole denied plaintiff ExitUSA’s Local Rule 7.1 motion to exceed the fifteen page limit for its discovery motion in this Lanham Act case.

The Court could have denied the motion because plaintiff did not attend the hearing on the motion, but the Court had more compelling reasons to deny it. Cole noted that page limitations benefit litigants as much as the Court. ExitUSA had already gotten a “free” extra-long brief by filing a motion to compel that was 21 pages, with two thirds of them double-spaced, making it the equivalent of 35 compliant pages. ExitUSA did not seek or receive approval for that overlong brief. In light of its history, the Court denied the motion.

Neurografix v. Brainlab, Inc., No. 12 C 6075, Slip Op. (N.D. Ill. Feb. 26, 2020) (Kennelly, J.)

Judge Kennelly denied plaintiffs’ (collectively “Neurografix”) motion for reconsideration of the Court’s order granting defendants (collectively “Brainlab”) summary judgment on lost profits in this patent case tractographies.

Fed. R. Civ. P. 54(b) allows a court to reconsider interlocutory rulings at any time before entry of a final judgment, but only to correct “manifest errors of law or fact or to present newly discovered evidence.” The underlying decision found that Neurografix offered no evidence that it had the manufacturing or marketing resources to capitalize on the demand should Brainlab have not been in the tractography market. The only evidence was “speculative” plans without evidence of the ability to develop or market the necessary service.  In its reconsideration motion, Neurografix argued the Court ignored their argument that they were entitled to lost profits for preoperative tractographies, not just intraoperative tractographies. But in the summary judgment papers, Neurografix only referenced preoperative tractographies once, to say they were not acceptable, non-infringing substitutes. And Neurografix cited to no evidence of their capacity to manufacture and sell the products to meet the needs of Brainlab’s customers.

Finally, it was not an error to decide summary judgment before the end of discovery. Had Neurografix believed additional discovery was required, it could have sought time to complete the discovery before responding to the motion. It did not.

Yesterday, Chief Judge Pallmeyer entered a general order addressing the “Coronavirus COVID-19 Public Emergency.” The Court ordered as follows:

  • For all civil cases, all case deadlines whether set by the Federal Rules, Local Rules, Court order or Executive Committee order. The Order notes that the Court is accessible by ECF and, in “emergency” situations by phone or video.
  • Civil hearings, trials and settlement conferences set between March 17 and April 3 are stricken, and will be reset by the presiding judge on or after April 6.
  • 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.
  • Any party can seek relief from the Order by filing an emergency motion in the underlying case and in case no. 20 CV 1792, a specially created matter for issues related to the Order.
  • The Court will vacate, amend or extend the Order no later than April 3, 2020.
  • The Eastern Division Clerk’s office will remain open with limited staff – the Western Division Clerk’s office will close. Filings during that period can be made by ECF, deposit in the Eastern Division drop box, by mail or with the Eastern Division Clerk’s office.
  • All public gatherings at the Northern District’s courthouses are canceled during the pendency of the Order.

Republic Techs. (NA), LLC v. BBK Tobacco & Foods LLP d/b/a HBI Int’l., No. 16 C 3401, Slip Op. (N.D. Ill. Jan. 14, 2020) (Harjani, Mag. J.)

Magistrate Judge Harjani denied defendant HBI’s 28 U.S.C. § 1782 motion for an order to take discovery for use in a foreign proceeding in this trademark proceeding involving the parties’ packaging for cigarette rolling papers.

Certain documents produced in this US action were allegedly relevant to a German proceeding involving plaintiffs (collectively “Republic Tobacco”) and an affiliate of HBI.

The Court held that § 1782 contemplates a party seeking US discovery for a foreign matter filing a new district court action seeking letters rogatory approving limited discovery for use in the foreign proceeding. In this case, HBI used an existing suit between parties related to the German suit as a vehicle to file a motion. This posture transforms the proceeding from one of a new party seeking foreign discovery to an existing US litigant seeking to circumvent the Court’s Protective Order by allowing it to produce documents to its foreign affiliate, beyond the bounds of the Protective Order.

The Court reasoned that the needed for a separate action was illuminated by the fact that a decision on HBI’s discovery motion would not be final and, therefore, not appealable. Whereas, courts have held that a decision in a standalone § 1782 action was final and immediately appealable. Furthermore, despite HBI’s claim to the contrary, it was not clear that a separate action filed in the Northern District would be assigned or automatically transferred to the same judge. First, the Northern District randomly assigns all cases initially. Second, a motion for a reassignment pursuant to Local Rule 40.4(b) would likely fail. It was unclear that the present Court would require less time to be educated about the German action. The issues in the instant case and those in the § 1782 proceeding were not susceptible to resolution in a single proceeding. And the parties, the law and the underlying events leading to the two litigations were all different.

On Friday, March 13, 2020, the UIC John Marshall Law School is putting on a day long – 8:45am to 4:30pm – program focused on cutting edge legal issues surrounding the Internet of Things. Here is their description:

Online platforms have become a focal point for many in the United States as well as in key jurisdictions around the world. Governments and legal advisors are struggling to understand the issues and implications these platforms raise, particularly in the areas of intellectual property, privacy, and antitrust law and practice. This Conference brings together top experts in government, industry, practice, and academia to share their cutting-edge insights on these issues as well as where things are headed.

The program promises to be very interactive between speakers and the audience. It also claims to be the only event of its kind and scope in the Midwest.

Registration is $195, with discounts to $95 for in-house lawyers and free for government lawyers.

The excellent line up of speakers includes:

  • Professor Daryl Lim – UIC John Marshall Law;
  • Professor Daniel Sokol, University of Florida;
  • Professor Matthew Spitzer, Northwestern University Center on Law, Business, and Economics;
  • Themi Anagnos, Head of IP for the Americas, Continental Automotive;
  • Kirti Gupta, Vice President, Technology & Economic Strategy, Qualcomm;
  • Grant H. Peters, Partner, Barnes & Thornburg;
  • Professor Haochen Sun, University of Hong Kong;
  • Michael Chu, Partner & IP Litigation Practice Group Leader, McDermott Will & Emery (invited);
  • Erin Lothson, Senior Counsel, Uber (invited);
  • Robert H. Newman, Co-Chair, Privacy, Security & Data Innovations, Loeb;
  • Cameron Krieger, Senior Counsel, Digital Governance, Privacy & Security, Mars;
  • Divya Mathur, Vice President and Consultant, Analysis Group;
  • Sunil Shenoi, Partner, Kirkland & Ellis LLP;
  • Liad Wagman, Senior Economic and Technology Advisor, Office of Policy Planning, Federal Trade Commission;
  • Professor Randy Robinson, UIC John Marshall Law School;
  • Christine S. Wilson, Commissioner, FTC (Keynote);
  • Professor Spencer Weber Waller, Loyola University Chicago Law;
  • Michele Lee, Senior Director and Associate General Counsel, Head of Global Litigation, Regulatory, & Competition, Twitter;
  • Rob Mahini, Senior Policy Counsel, Google;
  • Kate Patchen, Director and Associate General Counsel, Competition, Facebook;
  • Professor Dan Spulber, Northwestern University Law;
  • Aaron Yeater, Managing Principal, Analysis Group;
  • James M. Foote, President and Chief Executive Officer, CSX Corporation (keynote)