Practice Tips

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This is the third installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are tips eleven through fifteen:
11. Respect Twombly / Iqbal pleading standards. The Northern District is no different than the rest of the country’s district courts — patent infringement requirements have not changed from the form in the Federal Rules. But that is not necessarily the case for Lanham Act, copyright or trade secret claims. There are numerous decisions dismissing, often with leave to amend, these more fact-specific intellectual property claims. And even in the patent context plaintiffs benefit from pleading with more particularlity. The more detail a defendant has the more information they should disclose about their accused products or systems as part of their Local Patent Rule 2.1(b) initial disclosure document production requirements. That means that the plaintiff will have more material with which to prepare its Local Patent Rule 2.2 intial infringement contentions. Finally, regardless of the type of claim, many and perhaps most judges rely upon Twombly / Iqbal to require more than a bare recitation of the elements of affirmative defenses. So, it is especially important to add some facts to your affirmative defenses.
12. Prepare Local Rule 56.1 statements with care. This is probably the most frequent Local Rule hang up in Northern District of Illinois opinions. It is critical that movants meet the Local Rule 56.1 requirements, among others, a numbered statement of undisputed material facts supported by admissible evidence. If the facts are not supported or if they are legal conclusions, judges routinely strike or disregard them.
13. Respond to Local Rule 56.1 statements with evidence. Far too often, parties respond to Local Rule 56.1 statements without evidence. Those responses are almost always deemed admissions. Without admissibile evidence to counter statements of fact they are almost always admitted.
14. Watch your judge’s webpage. Each judge maintains the equivalents of standing orders on their webpage, often in multiple places and links across the page. It is critical that you read them at the beginning of your case and that you recheck them regularly. At a minimum, check them before you file anything with the Court. I find that the website instructions change with much greater frequency than the old, paper standing orders did. And while judges try to make it easy to see what they change, if you are not looking you will miss it.
15. Always file notices of motion. In some districts, notices of motions are not required or even discouraged. In the Northern District of Illinois, they are required of every motion. If you fail to file one, you will likely hear from the Clerk’s office. Also, make sure to file the notice after the motion, not before. If you file the notice before the motion, you will generally have to refile it.
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Continue Reading Northern District of Illinois Practice Tips Nos. 11-15

This is the second installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinion over the last four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are tips six through ten:
6. Redact personal information. Make sure that you are redacting personal information, social security numbers, phone numbers, etc., from any papers filed with the Court. Most litigants are good at this in their pleadings. But there is a significant drop off in attention to this rule in exhibits and other filed papers. There can be serious consequences to running afoul of this rule both to the litigator and to the individual whose information is publicly disclosed.
7. Attend hearings. Parties often do not attend hearings because they expect a motion to by granted (for example, an extension of time or motion to withdraw when other counsel has appeared in the case) or because they do not have a stake in the motion between their opponent and a co-defendant. This can be a critical mistake. First, most judges require all parties’ attendance at all hearing on a case. Second, you cannot guarantee that issues implicating yoru client will not be addressed at the hearing. And if they are addressed, you cannot necessarily count upon either your opponent or your co-defendant to protect your interests.
8. Pay attention to the court reporter. The hardest working person in the courtroom is almost always the court reporter; help them out. Offer a card or spell your name on the record. Speak clearly and at a modest speed. As much as you may feel the need to, do not speak over your opponent. If you are on a telephone conference, announce yourself when you speak. This both helps the reporter and makes the record much more clear.
9. Attend hearings by phone sparingly. In deference to the cost of bringing non-Chicago counsel to every hearing, many judges in the Northern District liberally permit attendance by telephone. This is an enormous convenience and cost-savings, but when not used carefully can have a negative impact on your case. It is impossible to interpret a judge’s visual cues on the phone, unless they describe them to you at which point it is far too late. If the hearing is of any import, either attend live or send local counsel fully prepared to address all issues, if live attendance is not possible.
10. Listen on phone hearings. Too many lawyers when given an opportunity to argue their point during a telephonic hearing, speak until they are done. That has the advantage of getting your point across, but you have no idea if the judge is trying to ask you a question or even stop you completely. And when you are speaking into a speakerphone, you cannot hear anyone else, most importantly the judge, that may be trying to stop you or ask you a question. In the best case, that leaves the judge exasperated, and in the worst case the judge may view you as disrespectful, unnecessarily argumentative and as not listening to the Court. None of these are good results, and it is easily avoidable if you teach yourself to pause periodically. The pauses give you the time for the Court to give you verbal cues that you could get visually or verbally in the courtroom.
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Continue Reading Northern District of Illinois Practice Tips Nos. 6-10

For the next five Fridays, I will be running a series of twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation. The tips are not in a particular order, so I will not countdown backwards to tip number one. Why twenty-five? I found that beyond twenty five, the tips became focused upon minutia. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinion over the last four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are the first five:
1. Draft complaints to meet both the Local Rules and the Judge’s requirements. There are pleading requirements in the Local Rules that are pretty standard, but do not make the mistake of failing to review them because they may not be the same as courts you are more familiar with. And do not stop at reading the Local Rules, check out requirements of specific judges before deciding, for example, how many unrelated parties to put into a single patent complaint. Click here for some examples of opinions to consider.
2. Repeat plaintiffs’ allegations in your answers. Local Rules require that you repeat the complaint paragraphs in your answer. Most judges will not return your answer for failing to do so, but some will. And even if they do not, you render your answer far less useful a tool for the judge and her chambers.
3. Deliver courtesy copies. The Local Rules require courtesy copies be delivered within one business day, and some judges’ standing orders require same day delivery. Opinions chastising counsel for failing to provide courtesy copies are surprisingly frequent. But even if your judge does not penalize you for failing to meet the courtesy copy requirements (and some will) if your motion or response is on a tight schedule you run the risk of not being fully heard. For example, if you are filing a response brief the day before a motion is to be heard and you bring your courtesy copies with you to the hearing you have only the slimmest chance that your brief is being read and digested before the hearing.
4. Certificates of service are not required when all parties are on ECF. This may not be mission critical, but using an unnecessary certificate of service signals to your opponent that you are not well versed in the Local Rules or custom. That is not necessarily a fact that you want to give away.
5. Signature blocks require both email and a fax number. Despite the 2008 revision to Federal Rule of Civil Procedure 11, many litigators still do not add email or fax numbers to signature blocks. I have not seen anyone sanctioned or warned for this omission yet, but you do not want to be the first.
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Continue Reading Northern District of Illinois Practice Tips Nos. 1-5

Gene Quinn at IPWatchdog recently posted his notes from Chief Judge Holderman’s Ten Commandments for Trying Patent Cases presentation at a recent Thomas Jefferson School of Law symposium. I have had the opportunity to hear versions of the presentation a couple of times and learn something new every time. Here are Judge Holderman’s ten commandments. Thou shalt not try a patent case to a judge or to a jury without:
1. A clear theory for victory
2. Targeting your final argument
3. Anticipating your opponent’s arguments
4. Speaking understandable words
5. Telling the story
6. Using visuals
7. Organizing the exhibits for the decision maker
8. Presenting your theme early and often
9. Being straight forward and focused
10. Remembering you are “ON STAGE”
Some of the ten seem relatively obvious as you read them, but even the obvious ones are valuable reminders as you head into the stress of trial preparation. One that always jumps out at me is organizing exhibits for the decision maker. Far too many trial teams simply line up their exhibits in numeric order or the order they were shown at trial without thoughtfully organizing the exhibits so that they tell a story for the jury. If you have a chance to see Judge Holderman give a version of this talk, do not miss it.
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Continue Reading Ten Commandments for Trying Patent Cases

I am proud to announce that I am joining the exceptional faculty of the newly formed Solo Practice University, teaching a course focused on learing how to successfully litigate in federal district courts. I am honored to be a part of SPU’s impressive faculty. And I look forward to working with the SPU student body to improve the practice of law in the federal district courts.
I joined SPU and agreed to fit one more thing into an already busy schedule for two reasons. First, I enjoy teaching and I believe that SPU’s vision of a collaborative environment where students can learn and interact in the digital world and at their own pace is an excellent model. Second, I have been interested in creating a district court practice course for several years and SPU became a catalyst for the idea. Eventually, I expect I will use the bones of the course created for SPU either to a law school, perhaps Loyola where I have enjoyed teaching several courses, or to write a text on district court practice. The course will teach the fundamentals of district court litigation, and I will weave in lessons I have learned over the course of a career both as a district court law clerk and as a practicing lawyer. I hope that it will both help students avoid the learning curve most of us face as we start litigating and help to increase the quality and skill of district court advocacy.
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Continue Reading Solo Practice University: Improving Federal District Court Litigation Practice

Para Gear Equip. v. Square One Parachute, Inc., No. 04 C 601, Min. Order (N.D. Ill. Sep. 2, 2008) (Brown, Mag. J.)
Judge Brown granted defendants-counterplaintiffs Square One Parachute’s (“SOP”) motion for summary judgment that plaintiff-counterdefendant Para Gear (“Para”) infringed SOP’s design patent based solely upon Para’s failure to plead noninfringement as an affirmative defense. Originally, Para filed this case seeking a declaratory judgment of noninfringement and SOP counterclaimed for infringement. But Para later voluntarily dismissed its claim with prejudice.
When Para answered SOP’s counterclaim, it did not plead noninfringement as an affirmative defense. The Court held that Para’s declaratory judgment noninfringement claim was a sufficient affirmative statement of Para’s defense. But once Para dismissed its claim, Para’s pleadings did not support a noninfringement defense. It was not enough that Para’s answer denied infringement, an affirmative statement of the defense was required. And while Para had not sought to amend its papers to support its defense, the Court would not have granted leave to amend four years into the case.
Practice Tip: Always ask, at least in the alternative, for leave to amend when accused of pleading deficiencies. Even though it would not have worked here, it rarely hurts to ask.
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Continue Reading Infringement Found Because Defendant Did Not Affirmatively Plead Noninfringement

Joint defense agreements are an increasingly common part of big patent litigaitons, in the Northern District and across the country. Having been involved in numerous joint defense groups, my colleague Thomas Paternak and I wrote an article that was published in the most recent edition of the ABA’s Litigation magazine about best practices for joint defense groups and dealing with joint defense agreements — click here to for a pdf of the article, with permission from the ABA of course.
Probably the most important tip is one I have discussed before — communication, including live meeetings, is critical to building and maintaining relationships among the joint defense group:
The number of members of the [joint defense group] will have some bearing on how it is organized and managed, but regardless, communication is the key. Weekly, short conference calls once the case is running hot are important, however painful that is, to keep everyone looped in. For important strategy decisions, live meetings are going to be necessary. At the same time, try to put as few communications between co-defendants in writing as possible. Discovery of those communications can and does happen, despite all best legal efforts to prevent it, and you will be particularly embarrassed if you disparage opposing counsel or the judge in venting in an e-mail to your codefendant and that e-mail ends up being produced.
Click here for my previous discussion of the importance of live meetings for building relationships during litigations and click here for Victoria Pynchon’s IP ADR blog post that sparked my comments.
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Continue Reading Making Joint Defense Agreements Work

I have written about the legal issues surrounding social networking sites (click here and here to read those posts). I even did an ALI-ABA teleseminar with Eric Goldman yesterday discussing, among other things, how the Communications Decency Act protects social networking sites against suit based on third party content published on the sites. But Julie Kay’s National Law Journal article yesterday — click here to read it — provided a new angle on the power of social networking sites in the courtroom.
It is no surprise that lawyers, either alone or assisted by jury consultants, research juror backgrounds, and use their research during voir dire and to inform their trial presentations, in particular opening and closing arguments. Of course, internet research has been a cornerstone of those efforts for years. But social networking sites have vastly increased the amount of information available about the average person. Instead of learning someone’s Turkey Trot 5k time and one or two newspaper quotes, you now may be able to see their entire resume on LinkedIn, read about major life events on FaceBook, or even read their personal, daily thoughts on a blog. Kay reports that the information is a valuable fact checking tool, acting as a backstop to information provided in a jury questionnaire.
Additionally, blogs can tell you a lot about a juror, that the juror might not be inclined to disclose in open court or on a questionnaire. To illustrate this point, Kay quotes Anne Reed of Reinhart Boerner Van Deuren — who writes Deliberations, one of my favorite legal blogs. Reed tells the story of “Erin” a relatively prominent Florida blogger who blogged that she was a juror several days after posting that: “I totally understand how innocent people that go to prison turn into hardened criminals . . . .” Reed explains that the lawyers might not have struck Erin for her blogging, but that it was critical information to have in the decisionmaking process:
“You’d hate to leave Erin on your jury without having seen her writing,” said Reed. “A juror’s blog tells you things about the jurors that she probably won’t tell you herself.”
Kay also quotes Holland & Knight litigator Dan Small who raises an important and often overlooked note of caution. Small is concerned that invading jurors’ privacy via internet research could make jurors very uncomfortable and is a substantial invasion for people performing their civic duty:
“You are taking people who are doing their civic duty and didn’t sign up to have their whole life probed,” Small said. “It scares people. They wonder: ‘Are they going to hack into our e-mails next?’ The Internet in so many areas creates an extraordinary conflict between the desire for information and the desire for privacy.”
Of course, there is a real question as to whether anything posted on the internet, without password protection or some other privacy protections, can be considered private in anyway. But there is little doubt that knowing their backgrounds were researched and their FaceBook pages were read could make jurors uncomfortable and learning that their backgrounds have been probed could turn jurors against the lawyers or their clients. So, at a minimum, the information needs to be used carefully and discreetly.
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Continue Reading The Power & Danger of Researching Social Networking Sites for Voir Dire

Victoria Pynchon posted an article she wrote (not sure where it was published) at her IP ADR Blog — click here for the post and the article. Pynchon argued that the common practice of communicating with opposing counsel largely by email, except during depositions or hearings, tends to increase animosity and conflict of a litigation. In the asocial world of email we tend to write more aggressively and we tend to read more aggression into emails we receive. Pynchon supports these theories with studies, but I suspect most litigators are aware of the email aggression problem from practice.
It is no surprise that increased aggression in a naturally aggressive proceeding has negative consequences. For example, parties that often meet for the first time at a mediation or settlement conference arrive not trusting or respecting each other, making resolution much more difficult. Pynchon suggested a somewhat radical solution to the email problem — live meetings with opposing counsel. She suggested that you routinely have live meetings with opposing counsel throughout the course of a litigation, including perhaps even doing some meetings over a meal. The face-to-face contact would generate the trust and respect needed to resolve issues that always arise during a litigation. I have always advocated live meetings with co-counsel in a multi-party litigation. Email communications (or even conference calls) tend to get out of hand and the parties tend not to pay enough attention to others’ positions. I am going to expand that practice to opposing counsel.
One other thought, that I do not know if Pynchon will agree with. Those who still avoid email and continue using letters as a main communication means are not off the hook. I started practicing when letters, not emails, were how you communicated with opposing counsel. Those letters tended to be far more aggressive than the attorneys were in a live conversation. And I suspect people tended to read extra aggression into the letters they received. I do not know if aggression is stronger in emails than letters, but the same problem exists whether you hit send, hit print or use a pen to write to opposing counsel.
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Continue Reading A Call for Face-to-Face Communication in Litigation

Boler Co. v. ArvinMeritor, Inc., No. 03 C 489, Slip Op. (N.D. Ill. Jul. 2, 2008) (Cole, Mag. J.).
Judge Cole decided various discovery and protective order issues in this patent infringement dispute. Of particular note, the Court denied defendant’s motion to preclude inspection of items that were commercially available. The Court held that commercially available items were discoverable and that because the items were commercially available there were no protective order implications.
The Court also refused to consider certain oral motions, likely those that the parties could have filed before the hearing, because the Court’s standing order required that motions be briefed. Always make sure to read the Court’s standing order, as well as the Local Rules.
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