Late last week, President Bush signed the appointment papers for the Northern District’s newest judge, the Honorable Robert M. Dow, Jr. Judge Dow was sworn-in last Friday by Chief Judge Holderman and is sitting in the Northern District’s Eastern Division. Here is some biographical information about Judge Kapala from the Northern District’s announcement of his appointment (click here for the announcement):
From 1993 to 1994, Judge Dow served as Law Clerk to The Honorable Joel M. Flaum of the United States Court of Appeals for the Seventh Circuit. Since 1995, Judge Dow has been employed at Mayer Brown, LLP, where he specialized in general and appellate litigation, with particular emphasis on telecommunications, state and federal constitutional law, jurisdiction, civil procedure, preemption, mass tort and products liability, admissibility of expert testimony, and class actions. Judge Dow has been acclaimed as a “superb” lawyer in the field of communications and technology law, as recognized by Chambers USA’s Guide to America’s Leading Business Lawyers. In his spare time, Judge Dow serves as Secretary for the Committee of Selection for the Rhodes Scholarships, State of Illinois, and on the Development and Academic Committees of Joliet Catholic Academy. Judge Dow was himself named a Rhodes Scholar in 1990.
Judge Dow has had a distinguished academic career, with degrees from Yale University (B.A., 1987), University of Oxford (M. Phil. in International Relations, 1990; D. Phil. in International Relations, 1997), and Harvard Law School (J.D., 1993). While at Harvard Law School, in addition to graduating with honors, Judge Dow served as supervising editor of the Harvard Journal on Legislation, a member of the Editorial Board for the Harvard Human Rights Journal, and a Teaching Fellow at Harvard College.
Welcome to the Northern District Judge Dow. Judge Dow’s investiture ceremony is scheduled for Friday, January 11, 2008 at 4:00 pm.

Continue Reading Judge Dow Joins the Northern District Bench

Kammin v. Smartpros, Ltd., No. 07 C 2665, 2007 WL 3046128 (N.D. Ill. Oct. 9, 2007) (Guzman, J.)
Judge Guzman transferred this copyright case to the Southern District of New York pursuant to 28 U.S.C. Section 1404. While plaintiff’s choice of forum is usually given significant weight, no party was a resident of the Northern District – both parties were New York residents. Furthermore, the non-party witnesses were closer to New York. And New York had a significant interest in deciding a case between its citizens regarding a dispute arising within New York.

Continue Reading Case Transferred for Lack of Illinois Ties

Mitchell v. First Northern Credit Union, No. 07 C 1891, 2007 WL 2948374 (N.D. Ill. October 4, 2007) (Norgle, J.)
Judge Norgle granted defendant Arizona State Credit Union’s (“ASCU”) motion to transfer to the District of Arizona pursuant to 28 U.S.C. Section 1404 in this patent dispute. The Court acknowledged that plaintiff’s chosen forum was given significant weight. But the ease of access to the evidence in Arizona dictated that the case be transferred. Plaintiff was an Arizona resident, at least as of his filing date. And ASCU, all of its documents and all of its employees were in Arizona.

Continue Reading Choice of Forum Outweighed Where All Parties and Documents are in Arizona

Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 2156665 (N.D. Ill. Jul. 26, 2007) (Cole, M.J.)
Judge Cole granted in part defendant Little Lady Foods’ (“LLF”) Fed. R. Civ. P. 37 motion to bar evidence of allegedly late-identified trade secrets. Plaintiff Fast Food Gourmet (“FFG”) originally identified four trade secret elements of its process for making thin crust frozen pizza. FFG’s Vice President of Operations Crause identified four additional elements during his deposition. And FFG later identified two additional elements. LLF argued that FFG should be limited to the first four elements because FFG never updated its interrogatory responses to include the six additional elements. The Court held that the four additional elements disclosed during the deposition had “otherwise been made known” pursuant to Fed. R. Civ. P. 26(e) and, therefore, were not required to be added to FFG’s interrogatory responses. The Court excluded the other two elements. FFG argued that it had identified the elements by identifying documents containing the elements in its interrogatory responses pursuant to Fed. R. Civ. P. 33(d). But the Court held that the documents FFG identified only identified the two elements sporadically, and in connection with elements that were not trade secrets. This, combined with Crause’s testimony that he had identified all of the trade secret elements, made FFG’s Rule 33(d) statements insufficient.
Practice Tip: Rule 33(d) is often seen as a simple escape from answering cumbersome or difficult interrogatories. Of course, it is also often warranted. But when you use Rule 33(d), make sure to identify the correct documents, and make sure the identified documents fully support your position.

Continue Reading Interrogatory Responses Supplemented by Deposition Testimony

According to the Boston Globe, the Boston Patent Law Association (“BPLA”), headed by Boston attorney Lee Carl Bromberg, is trying to make the District of Massachusetts the next hot patent court. The BPLA is working to create patent rules for D. Mass. and case deadlines similar to those found in “rocket dockets” like E.D. Texas, W.D. Wis. and E.D. Va. Bromberg also touts the intelligent judiciary in Boston as a reason D. Mass. should be the next patent court.
I am all for districts adopting patent rules. Regardless of their specific content, the certainty of patent-specific rules for claim construction and the exchange of infringement and invalidity contentions benefits all parties. Local rules also save the expense of the numerous discovery motions parties often use to resolve these issues in the absence of local rules. But I think what matters most, is getting a judge that is interested in or at least willing to tackle a patent case. Judge Ward’s interest in patent cases (and now the interests of his E.D. Texas colleagues) is really what made the E.D. Texas a patent hot-bed, his local rules were just an off-shoot of that. Similarly, the chief reason that the Northern District is a top five patent district is that there are a critical mass of judges that have taken an interest in patent cases. And although the Northern District lacks patent local rules, the judges that seem to preside over the most patent cases tend to have set or preferred procedures for patent cases that take the place of broader patent-specific rules. For example, Judge St. Eve has a standing order setting a claim construction schedule.

Continue Reading Is Boston the Next Patent District?

Statistics compiled by the Patent Troll Tracker* blog show that the Northern District continues to play a prominent role in deciding the nation’s patent disputes and, as a result, its IP disputes more generally. Filings of patent cases for 2007 (through the end of July), show that the Northern District had the fourth most patent filings:
2007 Patent Filings (through July) District Cases Defendants
E.D. Texas 202 705
C.D. Cal. 148 329
D.N.J. 98 169
N.D. Ill. 81 163
N.D. Cal. 78 156
D. Del. 75 199
S.D.N.Y. 67 167
Another interesting statistic from this data: with the exception of the E.D. Texas, all of the districts have a rough average of two to three defendants per case. E.D. Texas averages about three and a half defendants per case. I would have expected that E.D. Texas would average closer to five to ten defendants per case. Perhaps all of the large patent licensing company cases that garner so much attention in Marshall are balanced by disputes between individual parties.
If readers are interested in these statistics, let me know and I will compile my own data and make it a regular (maybe quarterly) feature.
* I appreciate the Patent Troll Tracker’s statistics and even the effort he performs keeping track of cases filed by patent licensing companies, but as I have explained before I am no fan of name calling (by either plaintiffs’ or defendants’ counsel). As such, I prefer the neutral term “patent licensing company.”

Continue Reading Northern District Continues to be a Leader in Patent Filings

Judge Hart granted in part defendants motion to enforce the Court’s order and denied plaintiff’s motion to compel discovery. The Court previously ruled upon the parties’ cross-motions for summary judgment, holding that plaintiff’s state law claims were not preempted by the Illinois Trade Secrets Act, but significantly limiting the claims and removing some defendants (you can read more in the Blog’s archives). Defendant sought reconsideration of the Court’s preemption ruling. But the Court held that the motion, filed three months after the Court’s opinion, was untimely and that it presented no new arguments. The Court granted defendant’s request that plaintiff be limited to the trade secrets it identified during fact discovery and prior to summary judgment briefing.
Finally, the Court denied plaintiff’s motion to compel fact discovery. The motion was filed after the close of fact discovery and two months after plaintiff represented to the Court that only expert discovery remained to be completed.
Practice tip: File motions in a timely manner. It is especially important to file discovery motions during or at least near the discovery period.

Continue Reading Parties Must File Motions Promptly

Coilcraft, Inc. v. Inductor Warehouse, Inc., No. 98 C 0140, 2007 WL 2071991 (N.D. Ill. Jul. 18, 2007) (Cole, J.).
Judge Cole recommended that the Court grant plaintiff’s motion for contempt. The parties previously settled this trademark case and agreed to a consent judgment which required, among other things, that defendants include “prominent” disclaimers on any advertisements, including webpages, offering plaintiff’s products for sale from the secondary market. Plaintiff filed a motion for contempt arguing that defendant’s website did not include prominent disclaimers. The Court agreed, explaining that prominence could be achieved in several ways, but that “fine print” was not one of them:
Being a relational and contextual concept, “prominence” may be achieved in any number of ways: placement of words, type size, typeface, text color, etc. Prominence, however, is not achieved by the use of fine print disclaimers that are substantially smaller than any other print on a page.
Practice tip: When drafting settlement agreements, or other contracts, watch out for subjective words like “prominence.” If you expect that you may need to enforce the agreement* later, try to define subjective terms in more objective ways. For example, plaintiff in this case could have required that the disclaimer be at the top of each page in bolded font at least four points larger than the largest print on the page.
* If you expect that the agreement might be enforced against you, subjective terms may be beneficial.

Continue Reading Court Recommends Contempt Because Disclaimer Was Insufficient

Meyer Intellectual Props. Ltd. V. Bodum, Inc., __ F.Supp.2d __, 2007 WL 2110931 (N.D. Ill. Jul. 24, 2007) (Shadur, J.).

Judge Shadur granted plaintiff’s motion for attorneys’ fees and costs related to a motion discovery dispute won by plaintiff, but modified its original award based upon defendant’s explanations (you can read more about this

Meyer Intellectual Props. Ltd. V. Bodum, Inc., No. 06 C 6329, Slip Op. (N.D. Ill. Jul. 24, 2007) (Shadur, J.).
Judge Shadur denied defendant’s motion to amend its answer adding an equitable estoppel defense. The Court noted that amendments were usually “generously” allowed, but defendant provided no justification for not including equitable estoppel in its original answer. Defendant argued that it required investigation to discover its equitable estoppel defense, but the Court noted that the information defendant relied upon was in defendant’s possession. So, there was no reason that defendant could not have conducted its investigation before filing its answer.

Continue Reading Answer Cannot be Amended to Add a Defense Originally Available