Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. May 8, 2013) (Cox, Mag. J.).

Judge Cox granted defendants’ (collectively “Crimson”) motion to compel answers to Fed. R. Civ. P. 30(b)(6) deposition questions and for sanctions in this trade secret dispute.  Crimson’s Rule 30(b)(6) deposition notice included a topic regarding plaintiff Peerless Industries’ (“Peerless”) alleged trade secrets.  Despite that, Peerless’ counsel instructed its witness not to answer questions regarding what Peerless’ trade secrets were.  The Court held that Fed. R. Civ. P. 30(c)(2) limits instructions not to answer to preserving privilege, enforcing court limitations or for a Fed. R. Civ. P. 30(d)(3) motion.  Peerless’ witness should have been required to answer questions regarding its trade secrets to the best of their ability.  As a remedy, the Court directed the parties to reconvene the deposition for up to three hours to question the witness on the trade secret topic, with Peerless paying for the court reporter and three hours of one of Crimson’s counsel time to take the deposition.

Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. May 8, 2013) (Cox, Mag. J.).

Judge Cox granted in part defendants’ (collectively “Crimson”) motions to compel depositions and documents after the close of fact discovery.  Defendants sought the deposition of plaintiff’s prosecuting attorney.  Plaintiff Peerless’ only argument against the deposition was that the deposition should not occur while Crimson’s invalidity summary judgment motion was pending.  The Court agreed that taking the deposition now would be wasteful if summary judgment was granted and ordered that the deposition take place only if Crimson loses its summary judgment motion.

The Court could have issued the same order as to Crimson’s request to depose a third party who has allegedly an inventor of the patent in suit, but Peerless subpoenaed that deposition and then canceled it just before the close of fact discovery.  But the Court held that it would have been unfair to allow Peerless’ “last minute decision” to prohibit Crimson from taking the deposition.  The Court, therefore, ordered the deposition.

Finally, the Court denied Crimson’s motion to compel production of certain prototypes with leave to refile it, if Crimson lost its summary judgment motion.  The Court was open to the possibility that the discovery was relevant, but there was no point in requiring the production if Crimson were to win its invalidity motion.

Peerless Indus., Inc. v. Crimson AV, LLC, No. 11 C 1768, Slip Op. (N.D. Ill. May 14, 2013) (Cox, Mag. J.).

Judge Cox denied defendants’ (collectively “Crimson”) motion to compel production of a clawed back document based upon the crime-fraud exception.  Plaintiff Peerless Industries (“Peerless”) inadvertently produced a document and then clawed it back.  Crimson argued that the document demonstrated Peerless’ counsel’s belief that Peerless’ claims lacked legal merit and were being pursued to “distract and delay.”  The Court held that a potentially improper motive for filing suit did not rise to the level of a crime or a fraud that would have required waiver and production.  The Court did, however, note that pursuing baseless litigation in order to harm a competitor could be actionable as a tort.

TCYK, LLC v. Does 1-28, No. 13 C 3839, Slip Op. (N.D. Ill. June 24, 2013) (Guzman, J.).

Judge Guzman sua sponte severed Does 2-28 and dismissed them without prejudice in this Bit Torrent copyright case.  Joinder was not proper pursuant to Fed. R. Civ. P. 20 because while the Does were allegedly part of the same “swarm,” they were not part of it at the same time.  Furthermore, the Court exercised its Fed. R. Civ. P. 21 discretion to sever and dismiss all but one Doe, noting that multi-Doe Bit Torrent cases were a “logistical nightmare.”

The Court also denied early discovery as to the remaining Does’ identity because plaintiff TCYK had not shown the necessary good cause for early discovery.

Sloan Valve Co.. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. June 19, 2013) (St. Eve, J.).

Judge St. Eve granted in part defendant’s (collectively “Zurn”) motion to strike plaintiff Sloan Valve’s (“Sloan”) reply expert report in this patent dispute.  The Federal Rules and the Local Patent Rules do not typically allow reply reports without prior leave of Court for cause, LPR 5.3.  But the parties agreed to reply reports and the Court entered a reply report deadline, at the parties’ request.  So, a reply report was permissible, but only to the extent that it was responsive to the rebuttal report.  On that issue, the Court held as follows:

  • Recalculations using unweighted rations, which were mentioned but not used in the opening report, were permissible because they responded to a criticism in the rebuttal report.
  • The inclusion in calculations of “new” incremental costs was allowable as responsive to the rebuttal report.
  • The addition of an entirely new schedule and damages computation was not allowable.
  • Zurn’s expert was not allowed to file a supplemental expert report because the Court struck the improperly prejudicial portions of the reply report.

 

Timelines, Inc. v. Facebook, Inc., No. 11 C 6867, Slip Op. (N.D. Ill. April 1, 2012) (Darrah, J.).

Judge Darrah denied defendant Facebook’s summary judgment motion arguing that plaintiff Timeline’s TIMELINE trademark was generic or descriptive, and that Facebook’s use of the mark was fair use.  Timelines presented evidence that it used TIMELINE as a brand, not just in its generic sense.  And while Timelines had used TIMELINE in its generic sense, it had not done so regularly so as to make the mark generic.  And Facebook’s summary evidence was not dispositive as to descriptiveness.  Timelines had over one thousand active users.  The Court reasoned that as to the users, at least, TIMELINE had acquired meaning.

Finally, Facebook’s use of TIMELINE was not just non-trademark fair use.  In fact, Facebook’s founder referred to TIMELINE as a brand.

TCYK, LLC v. Does 1-88, No. 13 C 3828, Slip Op. (N.D. Ill. June 24, 2013) (Guzman, J.).

Judge Guzman sua sponte severed Does 2-88 pursuant to Fed. R. Civ. P. 20 & 21 in this Bit Torrent copyright case.  Because the Does were not all part of the same “swarm” at the same time – although they were part of the same swarm – joinder was not proper pursuant to Rule 20.

Even if Rule 20 joinder was proper, the Court would have exercised its Rule 21 discretion to sever the eighty eight Does, quoting 101 Doe case as a “logistical nightmare.”  Pacific Century International, Ltd. v. Does 1-101, No. C-11-02533 (DMR), 2011 WL 5117424, at *3 (N.D. Cal. Oct. 27, 2011).

Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. Dec. 13, 2012) (Shadur, Sen. J.).

Judge Shadur granted defendant LeaseWeb USA (“LeaseWeb”) Fed. R. Civ. P. 12(b)(2) & (6) motion to dismiss for lack of personal jurisdiction and failure to state a claim.  Plaintiff Flava Works pointed largely to Lease Web’s interactive website.  But that website was not enough for general or specific jurisdiction.  And LeaseWeb’s single Illinois customer was similarly insufficient.  FlavaWorks offered no argument or proof that the customer was related to the alleged copyright infringement in this case.

The Court also dismissed LeaseWeb because FlavaWork’s complaint alleged no facts that would make it liable for copyright infringement.

 

PWC has published the latest installment in its excellent yearly patent litigation survey.  This year’s survey looks at data for every year from 1995 through 2012.  One interesting aspect of this year’s study was a focus upon individual districts and judges.  Here are some of the key takeaways regarding the Northern District:

  • The Northern District (a top five patent district in terms of number of filings) is the fifteenth fastest district to trial with 35 cases going to trial during the period (1995-2012) in a median time of 3.67 years.  That is relatively slow as compared to the Eastern District of Virginia’s .97 years mediation or the Western District of Wisconsin’s 1.07 years.  But those times to trial do not take into account the number of trials — 32 for the Northern District, 22 for Virginia and 10 for Wisconsin — nor do they consider the relative complexity of those cases. 
  • In those trials, plaintiff’s have a 24.8% success rate with median damages of almost $5.9M.  That puts the Northern District 8th in terms of largest median damages awarded, and 13th in plaintiff’s success rate.
  • The Northern District is 2nd in terms of number of reported NPE decisions with 32 decisions and 133 total patent decisions.  In those decisions, the NPEs’ success rate was 12.5%.
  • The Northern District is also the 4th district in ANDA filings with twelve.

The PWC study also looks at individual judges, with Northern District judges ranking high in all categories:

  • Judge Darrah was the 11th judge nationwide in terms of patent decisions with 10 total.  Plaintiffs’ success rate was 10% on those decisions.  Seven of the ten decisions were summary judgment decisions.  Judge Darrah is ranked 8th for summary judgment decisions nationwide with seven decisions and a 0% success rates for plaintiffs.
  • Judge Kendall was 18th with nine decisions (88.9% were summary judgment decisions).  Kendall had an 11.1% success rate for plaintiffs.  Judge Kendall is ranked 6th for summary judgment decisions nationwide with eight decisions and a 12.5% success rates for plaintiffs.
  • Judge Bucklo was 21st with eight decisions (62.5% were summary judgment decisions).  Bucklo had a 50% success rate for plaintiffs.  Judge Bucklo is ranked 24th for summary judgment decisions nationwide with five decisions and a 20% success rates for plaintiffs.
  • Judge Guzman was 34th with seven decisions (71.4% were summary judgment decisions) with a 14.3% success rate for plaintiffs.  Judge Guzman is ranked 26th for summary judgment decisions nationwide with five decisions and a 20% success rates for plaintiffs.
  • Judge Zagel was 35th with six decisions (66.7% were summary judgment decisions) with a 66.7% success rate for plaintiffs.  Judge Zagel is ranked 36th for summary judgment decisions nationwide with four decisions and a 50% success rates for plaintiffs.
  • Judge St. Eve was 41st with six decisions (83.3% were summary judgment decisions) with a 16.7% success rate for plaintiffs.  Judge St. Eve is ranked 35th for summary judgment decisions nationwide with five decisions and a 0% success rates for plaintiffs.
  • Judge Kennelly is ranked 31st for summary judgment decisions nationwide with five decisions and a 0% success rates for plaintiffs.

The judge-by-judge statistics are interesting, but because of the relatively low number of decisions and the relatively simple statistics offered, they likely do not tell us much.  It is hard to draw many clear conclusions from sample sets of, in most cases, four to six summary judgment decisions spaced over years with varied parties and circumstances. It is also curious that Judge Pallmeyer did not make any of the lists, although she has been on a number of lists as one of the busiest patent judges in the nation over the almost seven years that I have been writing this blog.

Malibu Media, LLC v. Reynolds, No. 12 C 6672, Slip Op. (N.D. Ill. Mar. 7, 2013) (Kendall, J.).

Judge Kendall:  1) denied defendant Doe 15’s motion to dismiss; 2) denied Doe 15’s motion to quash the subpoena of Doe 15’s internet provider; 3) granted Doe 15’s unopposed motion to remain anonymous; and 4) severed each of the 15 defendants, except for Doe 15 in this Bit Torrent copyright case.  The Court leads off with a very good description of Bit Torrent and how a “swarm” operates.  It is worth reading for anyone that is dealing with these cases. 

Motion to Dismiss

The fact that plaintiff Malibu Media filed certain copyrights as works for hire, although Malibu Media was not yet formed when those works were made (and therefore they could not be works for hire) was a mistake that Malibu Media had already taken steps to correct, and it did not require dismissal of Malibu Media’s copyright claims.

Motion to Quash

Doe 15 did not have standing to oppose Malibu Media’s subpoena to Doe 15’s internet service provider, absent a privilege claim.  But regardless of standing, Doe 15 had not made a showing that it would face an undue burden based upon the subpoena. 

Motion to Proceed Anonymously

Malibu Media did not oppose Doe 15 remaining anonymous, at least through the close of discovery.  And the Court agreed that allowing Doe 15 to proceed anonymously would prevent Malibu Media from forcing settlement based upon Doe 15’s potential embarrassment from being accused of illegally downloading pornography.  The Court, therefore, allowed Doe 15 to proceed anonymously at least until dispositive motions were decided.

Motion to Sever

The Court held that in order to be joined in the same case, defendants need not just have been members of the same swarm — which can last weeks or months depending upon the members of the swarm.  Instead, the defendants would have to have been members of the same swarm that downloaded the accused file at the same time.  Because none of the defendants, which were all part of the same swarm, were part of the same swarm at the same time, the Court severed each of the defendants, except Doe 15.  While the Court would normally retain the first defendant, in this instance the Court retained the last because it had decided several motions related to Doe 15.