Dow

Subscribe to Dow via RSS

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Mar. 29, 2011) (Dow, J.).
Judge Dow amended the final judgment in this case to reflect the jury verdict and post-remittitur damages award of about $2.5M — go to the Blog’s archives for much more on this case and related cases. The Court also, after a de novo review, adopted Judge Schenkier’s report and recommendation on the motion. Plaintiff Trading Technologies (“TT”) sought to amend the Court’s final judgment, entered by the late Judge Moran, pursuant to Fed. R. Civ. P. 59(e) or 60(a), to reflect the damages award, and sought its fees for bringing the instant motion. The Court held as follows:
While it may have been too late to amend the judgment pursuant to Rule 59(e), the Court had discretion to amend pursuant to Rule 60(a) to correct an “oversight or omission.” The record established that TT and defendants (collectively “eSpeed”) understood that there was a money judgment. For example, eSpeed moved the Court to waive the supersedes bond normally required to appeal a case with money damages.
The Federal Circuit and the parties understood the appeal to be on all issues, not just injunctive relief. As such, eSpeed cannot argue that it held back arguments on appeal, that it might otherwise have made if eSpeed had known the appeal went beyond injunctive issues.
Whatever TT’s reason for not seeking to correct the judgment with Judge Moran while the case was still pending before him, all parties understood that the judgment included the money damages.
Finally, the Court denied TT’s request for it fees incurred bringing the motion. First, both parties should have sought to correct the judgment when it was entered. Second, TT’s fee request was undermined by its unreasonable demand in the initial motion that eSpeed pay the money damages within five days.
…
Continue Reading Trading Technologies: Final Judgment Amended to Include Monetary Damages

Labtest Int’l., Inc., d/b/a Intertek Consumer Goods N. Am. v. Centre Testing Int’l. Corp., No. 10C2897, Slip Op. (N.D. Ill. Feb. 1, 2011) (Dow, J.).
Judge Dow granted defendant CTI’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this copyright infringement action. The Court did not have jurisdiction over CTI:
CTI was a Chinese entity with no U.S. offices.
CTI’s only possible contact with Illinois regarding the copyrighted subject matter was via its passive website.
Plaintiff Intertek offered no proof that anyone from Illinois downloaded the allegedly infringing chart.
CTI’s only connection was work in China for an entity with a parent entity in Illinois.
The Court did not award Intertek its fees and costs for defending the case or the case filed by Intertek in Connecticut. Intertek had credible arguments for each, and it was not forum shopping even if the arguments were eventually proven wrong.
…
Continue Reading Passive Website Written in Chinese Does Not Create Illinois Personal Jurisdiction

Am. Taxi Dispatch, Inc. v. Am. GSS Limo, Inc., No. 10 C 5713, Slip Op. (N.D. Ill. Jan. 27, 2011) (Dow, J.).
Judge Dow gave defendants in this trademark infringement suit a deadline for obtaining counsel, or in the case of the individual defendants filing a notice of pro se representation. The Court reminded the defendants that corporate entities may not appear without counsel in federal courts. Finally, the Court warned defendants that they faced a potential default judgment if they did not act by the deadline.
…
Continue Reading Parties Must Get Counsel or Face Default Judgment

The Federal Bar Association – an excellent group that is worth joining (disclosure: I am a member) – recently held a panel of Northern District judges discussing their chambers and tips for counsel. Here are my notes regarding Judge Dow’s comments:
Judge Dow allows counsel to appear by phone; sometimes even encourages it for remote counsel and less complex hearings and status conferences.
He started out writing all of his own opinions, but now writes some and has clerks draft some, with interaction as clerks have questions.
For voir dire, Judge Dow uses a brief questionnaire tailored to the case, followed by follow- up questions from the Court and the counsel.
…
Continue Reading N.D. Illinois Judicial Panel: Judge Dow

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Oct. 29, 2010) (Dow, J.).
Judge Dow denied defendants’ (collectively “eSpeed”) motion to strike or stay consideration of plaintiff Trading Technologies’ (“TT”) bill of costs, and awarded TT $381,831.04 in costs.* Because TT received a damages award at trial, TT was the prevailing party and costs were warranted, absent TT’s trial misconduct or eSpeed’s inability to pay. The fact that TT lost on the issue of eSpeed’s alleged willfulness did not change TT’s status as the prevailing party, nor did the fact that eSpeed was found not to infringe based upon several of its software packages. The Court had previously stayed a determination of the bill of costs pending the Federal Circuit appeal. So, with the appeal complete, there was no reason left to delay the Court’s decision.
The Court then turned to the bill of costs. The following determinations were of particular note:
The Court awarded all undisputed witness travel, attendance and subsistence costs, totaling approximately $21,000. The Court denied travel costs for a trial witness that was flown to trial from Switzerland, rather than from his home in Ohio. Witness fees are only allowed for the shortest possible route from the witness’s residence.
The Court awarded videography costs only for depositions of foreign witnesses that TT disclosed as potential trial witnesses.
Court reporter appearance fees were denied because they are only allowed to the extent the fee plus the per-page rate charged does not exceed the Judicial Conference’s limit. In this case, the per page rate was already more than the allowed per-page recovery.
Because hearing transcripts played a significant role in the case, the Court awarded TT the allowable hearing transcript fees.
The Court awarded 25% of TT’s photocopying request. The reduction accounted for various non-copying charges, such as OCR, blowbacks, etc. and multiple copies of some documents. Recovery is only allowed for a single copy of a document, in most cases.
No costs were awarded for translation because § 1920(6) does not authorize recovery of translation costs, except for “check interpreters” used at trial to dispute certain interpretations.
The Court refused to apportion TT’s costs based upon the portion of the case that eSpeed won (summary judgment of noninfringement) versus the jury award that TT won.
* Click here for much more on this case in the Blog’s archives.
…
Continue Reading Court Will Not Apportion Costs to Prevailing Party Based Upon How Much of the Case was Won

Dental Arts Lab. V. Studio 360, The Dental Lab, LLC, No. 10 CV 4535, Slip Op. (N.D. Ill. Nov. 23, 2010) (Dow, J.).
Judge Dow denied defendant’s Fed. R. Civ. P. 12(b) motion to dismiss this Lanham Act dispute regarding plaintiff’s 360 Dental Laboratories mark. Defendant was a Nevada entity which had sold product to sixteen Illinois dentists, making up 1.2% of defendant’s gross revenue, and maintained a website that used the mark and offered defendant’s products for sale. Plaintiff only argued that the Court had specific, not general jurisdiction. While defendant’s contacts were minimal – sixteen customers and 1.2% of revenues – they involved the alleged tortious acts at issue. The sales, therefore, were sufficient minimum contacts to create specific jurisdiction. Although the Illinois sales were allegedly de minimus, each sale was allegedly a tortious act and the Court could have had jurisdiction based upon even one of the sales. Because defendant’s venue arguments mirrored its jurisdiction arguments, venue was also proper.
…
Continue Reading Sales to Sixteen Illinois Dentists Creates Jurisdiction

Bone Care Int’l, LLC v. Pentech Pharm., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Sep. 30, 2010) (Dow, J.).
Judge Dow decided the parties motions in limine in this patent infringement dispute. Of particular note, the Court made the following rulings:
The Court allowed defendants’ anticipation and written description invalidity defenses even though they were not properly disclosed or supported in defendants’ interrogatory responses or expert reports. The anticipation defense was so intertwined with the disclosed obviousness defense that there was no prejudice. And the parties argued the written description defense as part of a summary judgment motion. The Court, however, excluded other undisclosed invalidity defenses.
The Court allowed plaintiffs to present evidence regarding the priority date of one of its claims became there was a question of fact as to whether the claim had priority based upon an earlier, related application.
Plaintiffs were allowed to call defendants’ expert witnesses in plaintiffs’ case-in-chief so long as the testimony was not just cumulative. Plaintiffs could also call defendants’ experts. Even if defendants chose not to call them Defendants cannot turn an expert into a non-testifying expert pursuant to Fed. R. Civ. P. 26(b)(4)(B), once the expert issued a report and was listed on defendants’ witness list.
A parties’ witnesses should be called live whenever possible, unless the witness is unavailable.
Defendants’ expert was allowed to add references after the expert report deadline and after his deposition, by identifying the references in a deposition errata sheet and in corrected expert report pages. The references did not significantly change the experts analysis. And plaintiffs questioned the expert about the references during his deposition. So, plaintiffs were not prejudiced.
Defendants were also allowed to rely upon their experts’ rebuttal and supplemental reports became the arguments in the reports all properly responded to Plaintiffs’ reports.
…
Continue Reading Expert Allowed to Amend Expert Report Via Deposition Errata Sheets

Bone Care Int’l, LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Sep. 30, 2010) (Dow, J.)
Judge Dow issued an Order resolving the parties’ dispute in the pre-trial joint status report regarding the order of proofs at trial, in light of defendants’ stipulation of infringement. The Court ordered that:
Defendant would present its burden of proof evidence regarding invalidity first, citing Howard T. Markey, On Simplifying Patent Trials, 116 F.R.D. 369 (1987).
Plaintiffs will then respond to defendants’ invalidity case and present evidence of any secondary considerations.
Defendants will then be allowed to respond to the secondary consideration proofs and rebut, as appropriate, plaintiffs’ validity proofs.
Plaintiffs will be allowed a rebuttal case regarding its secondary consideration.
The Court noted, however, that it would use its broad discretion pursuant to Fed. R. Evid. 611(a) to prevent either party from sandbagging the other with its respective rebuttal case.
…
Continue Reading Court Exercises Discretion to Avoid “Sandbagging” Rebuttal Cases

Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333, Slip Op. (N.D. Ill. Sep. 29, 2010) (Dow, J.).
Judge Dow, having previously construed the claim of plaintiff’s patent to a color printing system, granted defendant Seiko Epson Corp. (“SEC”) summary judgment of noninfringement. Each claim required, among other colors, green-yellow ink. Plaintiff admitted that SEC’s yellow did not fall within the Court’s green-yellow construction.
Instead, Plaintiff argued that SEC’s yellow was equivalent to the claimed green-yellow based upon the doctrine of equivalents because although SEC’s yellow was a red-green the human eye perceived it as a yellow. But plaintiff’s evidence only proved that SEC’s yellow appeared yellow. Plaintiff had no evidence that SEC’s yellow appeared green-yellow, the color of the relevant claim limitation. Regardless of the correctness of plaintiff’s argument, therefore, plaintiff had not met its burden. And plaintiff could not use the doctrine of equivalents to expand green-yellow to all yellows.
…
Continue Reading Unclaimed Colors Cannot be Captured by Doctrine of Equivalents

Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333 & 09 C 4655, Slip Op. (N.D. Ill. Sep. 29, 2010) (Dow, J.).
Judge Dow construed the claims of plaintiff’s patent covering a color printing system, and granted in part defendant’s motion for summary judgment of indefiniteness. Of particular note, the Court construed the following terms:
The Court, by agreement, construed the base colors – violet, blue, green, yellow, orange and red – using the same wavelengths the Court used in construing a related patent earlier in the case — click here for that opinion in the Blog’s archives.
As in the prior constructions, the Court held that the components of component colors (e.g., red and orange for orange-red) must have the highest intensity of all the components. Otherwise, a color ordered red, orange, blue and violet could be both orange-red and violet-blue, a nonsensical result.
The Court held that the patentee gave “intensity” the same “unconventional” meaning — a synonym for “quantity” — as in the prior constructions because the two patents share a specification and the claims did not define the term differently.
The Court held that the term “peak reflectance percentage” used in claims 7 and 9 was not supported by the specification and, therefore, those claims were invalid because they contained new matter. While a new matter determination is a question of fact, no reasonable jury could find support for peak reflectance percentage in the specification, warranting summary judgment.
“Peak intensity” and “dominant intensity” were both indefinite. Pursuant to the Court’s construction of intensity, each color can only have a single intensity, rendering peak and dominant intensities nonsensical.
The terms “cyan,” “magenta,” and “yellow” were indefinite to the extent that they were amenable to multiple constructions. The Court, however, used the narrowest possible constructions as follows: “cyan” was “green-blue”; “magenta” was “violet-red”; and “yellow” was “orange-yellow” or “green-yellow.”
“Each of a different color” was not indefinite. Color referred to the six claimed colors, as well as black and white. Shades of a color were not “different.”
…
Continue Reading Claims Construed Narrowly to Avoid Indefiniteness