Sara Lee Corp. v. Kraft Foods Inc., No. 09 C 3039, Slip Op. (N.D. Ill Apr. 1, 2011) (Denlow, Mag. J.).
Judge Denlow, with a nod to baseball’s opening day, denied plaintiff Sara Lee’s motion to compel expert discovery from defendants (collectively “Kraft Foods”) in this trademark dispute. Kraft Foods retained an expert who helped create a survey and then used that survey as part of his expert opinion regarding advertising of Sara Lee hot dogs. The report opined that Sara Lee’s advertisement — “Taste America’s Best Beef Franks” — was misleading because it led consumers to believe that it was Sara Lee’s Angus Beef Franks rather than its Ball Park Beef Franks that were being advertised. Kraft Foods also used the expert in a consulting capacity regarding another Sara Lee hot dog advertisement. The Court’s in camera review showed that all the expert did was advise as to how a survey could be conducted, and that he did not know whether a survey was conducted or what the results were if a survey was conducted.
The Court noted that most courts allow an expert to have both testifying and non-testifying roles, but that the production obligation is generally broad. The only material that can be withheld as privileged or work product is information generated or considered “uniquely” as a consultant. And ambiguity was to be decided in favor of production. Because the requested materials only discussed the studies regarding the advertisement for which the expert was not testifying, they did not need to be produced. Furthermore, because the materials did not provide facts, data or assumptions provided by counsel, they would not have to have been produced by a testifying expert based upon the recent revisions to the Fed. R. Civ. P. 26(a)(2)(B). Instead, the requested materials were protectable work product pursuant to Fed. R. Civ. P. 26(b)(4)(C).
Finally, the Court denied Kraft Foods’ motion for fees and costs because Sara Lee was substantially justified in seeking in camera review of the disputed communications.

Continue Reading Plaintiff “Strikes Out”: Expert can be Both Testifying and Consulting

Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Nov. 8, 2010) (Denlow, Mag. J.).
Judge Denlow granted in part defendant Lear’s motion for sanctions in this patent case regarding universal garage door openers. Plaintiff Johnson Controls (“JCI”) received an anonymous email from someone calling themselves “Kova Kova,” offering documents regarding Lear’s development of the accused garage door opener. JCI questioned the anonymous emailer as to the confidentiality and ethical obligations that might surround the offered documents. But despite not receiving a direct answer, JCI eventually met with Kova Kova and received emailed documents from Kova Kova. JCI, however, testified that it never opened the documents, sent as email attachments. JCI also suggested by email that it would consider offering Kova Kova an engineering position and tuition reimbursement, but in a later email made clear it would not pay Kova Kova for testimony or documents, although it would retain Kova Kova counsel.
While JCI’s offers of a job and tuition were close, they were not a bribe. Chamberlain never explicitly offered any remuneration for testimony or documents. And immediately after mentioning an engineering position and tuition, JCI sent an email making clear that it would not pay for testimony or documents. JCI did, however, violate its duties by waiting more than nine months to produce Kova Kova’s emails and documents. While that violation did not warrant dismissing the case as Lear requested, it did warrant exclusion of any evidence from or related to Kova Kova, including his testimony, and JCI’s payment of Lear’s attorney’s fees related to the motion.

Continue Reading Failure to Timely Disclose Third Party Witness Contacts Prevents Testimony

Earlier this week, the Northern District announced a court-wide Early Settlement Conference Program focused on reducing costs for litigants where there is potential for early settlement. The program was generated by the Northern District magistrate judges, in particular Judge Denlow. The plan provides that at the outset of a case, a judge can send plaintiff via ECF a “Notice to Plaintiff’s Counsel of Early Settlement Program.” That Notice will require plaintiff’s counsel to conduct defendant’s counsel within fourteen days of receiving the Notice if defense counsel has been identified or within fourteen days of defense counsel filing an appearance, if not. If all parties are interested in a judicial settlement conference, they will file a “Request for Early Settlement Conference.” The Request will cause a settlement conference to be scheduled before either the judge or an assigned magistrate judge. Additionally, the parties can file a Request on their own without first receiving a Notice from a judge, if all parties want a judicial settlement conference.
It is great to see that the Northern District is creating a formal process for requesting early settlement conferences. For the most part, my experience suggest that this program just formalizes the Northern District’s standard practices. But it is still very valuable, especially for litigants that are not as familiar with Northern District custom and practice.

Continue Reading Northern District of Illinois Initiates Early Settlement Conference Program

The Seventh Circuit instituted a Commission to study the implementation of the ABA Jury Project. The Northern District was heavily represented on the Commission. The following Northern District Judges were members of the Commission: Bucklo, Brown, Coar, Darrah, Denlow, Der-Yeghiayan, Gottschall, Holderman, Kennelly, Lefkow, Moran, Schenkier, St. Eve, and Zagel. The Commission recently published its report — click here to read it. The report describes a two phase analysis. In the first phase, district judges tested the following seven ABA Principles:
1. Twelve-Person Juries;
2. Jury Selection Questionnaires;
3. Preliminary Substantive Jury Instructions;
4. Trial Time Limits;
5. Juror Questions;
6. Interim Trial Statements by Counsel; and
7. Enhanced Jury Deliberations.
Other Principles, such as juror notebooks and allowing jurors to take notes, were already in such widespread use that they were not tested. Click here for the Phase One Project manual detailing the principles, the rationales and authority behind them, and suggested procedures. Phase One resulted in questionnaires from 22 participating federal trial judges, 74 participating attorneys and 303 jurors from 38 trials that used one or more of the seven Principles. Based upon the analysis of Phase One results and questionnaires, the Commission focused Phase Two on the following four Principles:
1. Juror Questions;
2. Interim Trial Statements by Counsel;
3. Twelve-Person Juries; and
4. Preliminary Substantive Jury Instructions.
These Principles were chosen because of Phase One popularity (78% of jurors reported that being able to ask questions increased their satisfaction with the process) and because of a desire to study the Principles more. Click here for the Phase Two manual.
In Phase Two, 108 jurors from 12 trials employing one or more of the Phase Two Principles filled out questionnaires. In addition, 12 attorneys and 4 district judges that participated also filled out questionnaires. The results are interesting, but more importantly create the opportunity to powerfully impact the trial system across the Seventh Circuit in ways that benefit all of the stakeholders in the trial process — the litigants, the jurors, the judge and the judge’s chambers, and the litigators.
All four of the Phase Two Principles showed significant benefits to the trial process. 83% of jurors reported an increased understanding of the facts when allowed to ask written questions through a judge — the questions were reworded to meet evidentiary rules. And 75% of judges and 65% of attorneys thought the questions benefited jurors. Similarly, preliminary substantive jury instructions were found to improve trials by jurors (80%), judges (85%) and attorneys (70%). And the same was true for interim statements to the jury — jurors (80%) and judges (85%). Finally, twelve-person juries were found not to harm efficiency, while increasing juror diversity.
Each of the four Phase Two Principles, as well as several of the additional three Phase One Principles deserve more attention and analysis. So, over the next several weeks I will provide follow up posts discussing the findings of those Principles in greater detail. I will start with the idea of juror questions, which I find particularly important, later this week or early next.

Continue Reading Seventh Circuit American Jury Project

The Northern District has posted the Seventh Circuit’s new proposed pattern jury instructions for patent cases on its website — click here for a copy. The instructions include all of the recent revisions to the patent laws, including KSR and Seagate. The Seventh Circuit requested comments on the instructions be sent to:
Chief Judge Robert L. Miller, Jr.
325 Robert A. Grant Federal Building
204 S. Main St.
South Bend, IN 46601
Comments will be accepted until April 1st. Also, below is my list of IP jury instructions by Northern District judge, I am sure we will start to see some new ones soon in light of the turbulent 18 months patent law has had:

Continue Reading New Patent Pattern Jury Instructions

Angel Sales Inc. v. Hollywood Gadgets Inc., No. 07 C 1362, Min. Order (N.D. Ill. Nov. 19, 2007) (Denlow, Mag. J.).
Judge Denlow sanctioned defendant in the amount of plaintiff’s attorney’s fees and costs for preparation and attendance at a settlement conference before the Court. Defendant’s counsel attended the conference, but defendant did not appear. In a subsequent order, the Court entered a sanctions award of $1,710 based upon plaintiff’s fee affidavit.
There is not much to say about this opinion, but I included it as a practice tip and a cautionary tale. Parties often do not want to personally attend settlement conferences before judges, or they attempt to send a representative without full settlement authority. But that is a perilous choice. It can result in sanctions, as here, and, at the least, it usually harms the chances of settlement. The opposing party that took the time to be at the conference is generally offended that its time was wasted.

Continue Reading Parties Must Attend Settlement Conferences

Easypower Corp. v. Alden Corp., __ F. Supp.2d __, 2007 WL 4191837 (N.D.Ill. Nov. 21, 2007) (Denlow, Mag. J.).
Judge Denlow denied defendant Alden Corp.’s (“Alden”) motion for reconsideration of the Court’s construction of “acute angle relative to the axis.” The Court’s construction required an angle less than 90°, and further required that if there were two or more angles, any two angles together be greater than 90°. Alden argued that the requirement regarding two or more angles was improperly read into the claim without support in the specification. But the Court held that the limitation was required based upon the clear language of the specification. Additionally, the Court noted that the parties were given ample opportunities to argue the issue, both on the papers and during the Markman hearing.

Continue Reading Court Denies Claim Construction Reconsideration Motion

Eazypower Corp. v. Alden Corp., __ F. Supp.2d __, 2007 WL 2601309 (N.D. Ill. Sep. 2007) (Denlow, Mag. J.)
Magistrate Judge Denlow construed the claims of plaintiff’s patents regarding bits for removing damaged screws and fasteners. Of particular interest, the Court defined “in a place including the axis” as “simply what is says”: “in a plane including the axis.” Plaintiff argued that the Court should read manufacturing tolerances into the term. But the Court held that manufacturing tolerances could not be read into claim terms citing Senned, Inc. v. Richard-Allan Med. Indus., Inc., 888 F.2d 815 (Fed. Cir. 1989).
Of course, if the specifications and prosecution histories do not limit the doctrine of equivalents, plaintiff will be able to recapture products that would meet the “in a plane including the axis” but for manufacturing tolerances.

Continue Reading Court Will Not Read Manufacturing Tolerances Into Claims

Crafting proposed jury instructions is one of the first steps when preparing for trial.  And one of the first steps in drafting those instructions is looking for pattern or sample instructions that the court has previously used or endorsed.  In order to help speed that process, I am adding a new Blog feature.  I have gathered the jury instructions that each of the Northern District judges identify on their respective  web pages as either form or model instructions.  Most have general civil instructions and a few have specific sample instructions for various types of IP suits.
Continue Reading Northern District of Illinois Jury Instructions