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The Seventh Circuit’s Judge Posner wrote a Tips from the Trenches column for the ABA in May. The article was well written and insightful, no surprise from Judge Posner. He summed up his advice like this:
be brief, be clear, be simple, be vivid, be commonsensical, avoid legalisms, and do not be afraid to spoon-feed us–we will not bite your hand.
He also provided more detailed advice. Here are my favorites:
* Use visual aids. But he suggests pictures or objects instead of charts or graphs. People (and judges are people, although litigators sometimes forget they are) connect with and remember images better than words or statistics, especially when they see the demonstratives quickly and from a distance.
* Admit when you do not know and concede when you must. Few things kill credibility like false statements, even unintentionally false ones, or refusing to admit the obvious.
* Rehearse. And not just by reading your materials and preparing notes. Set up a session as close to what you can expect as possible. You practice baseball by playing and running by running, practice argument the same way.
* Dress to be taken seriously. First impressions matter and the judge(s) see you both before and while they hear you.
Most of Judge Posner’s points apply to both district and appellate court arguments. The article is worth a read.
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Continue Reading Argument Advice from the Seventh Circuit’s Judge Posner

FM Indus., Inc. v. Citicorp Credit Servs., Inc., No. 07 C 1794, 2008 WL 717792 (N.D. Ill. Mar. 17, 2008) (Conlon, J.).
Judge Conlon granted Citicorp defendants and denied defendant Gelfand summary judgment of copyright infringement. Plaintiff FM Industries (“FMI”) alleged that Gelfand infringed FMI’s copyright in its TUCANS debt-collection software by continuing to use it after Gelfand’s license expired. Gelfand argued that FMI could not prove ownership of the copyright because it could not produce the written assignment. But the Court held that FMI’s deposition testimony was sufficient to create a material question of fact and, therefore, denied summary judgment.
Citicorp was accused of encouraging and inducing its outside attorneys to use the TUCANS software after their licenses expired. But at least in part because FMI failed to respond to Citicorp’s Local Rule 56.1 statements or to submit its own responsive statements of fact, the Court accepted as true Citicorp’s evidence that it told its outside attorneys to stop using TUCANS before licenses expired and that Citicorp was unaware that the attorneys continued using TUCANS.
Practice Tip: I cannot say it enough: you must strictly comply with Local Rule 56.1 Click here to read about other opinions considering Local Rule 56.1
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Continue Reading Summary Judgment for Failure to Comply with Local Rule 56.1

Gabbanelli Accordions & Imports, L.L.C. v. Italo-Am. Accordion Mfg. Co. et al., No. 02 C 4048, 2008 WL 351860 (N.D. Ill. Feb. 8, 2008) (Zagel, J.)*
Judge Zagel granted plaintiff summary judgment of trademark and trade dress infringement regarding plaintiff’s “wildly colorful” and “heavily ornamental” accordions. The Court awarded plaintiff approximately $500,000 in damages, attorneys fees and costs. Defendants – Italian entities that sold accordions in the United States – chose not to participate in the case. Instead, they filed an Italian case after this case was filed, but before defendants were served pursuant to the Hague Convention. The Court previously stayed a portion of the case pending the outcome of the Italian case, but noted that the stay may have been a mistake. Years after filing, the Italian case had not been resolved and defendants failed to participate in the U.S. proceeding based upon a belief that the Italian proceeding controlled. For example, defendants admitted personal jurisdiction when they failed to respond to jurisdictional Requests for Admission and instead of filing a motion to dismiss, defendants sent the Court an unsupported letter listing their complaints with the case and the Court’s jurisdiction over them. By failing to participate in discovery and not following the Court’s rules, defendants preempted whatever ability they might have had to make their case.
Practice tip: Participate and play by the rules. Even if you cannot or will not afford counsel, you must answer discovery, respond to motions and appear when required to. Failing to participate will not insulate you from judgment.
* Click here for more on this case in the Blog’s archives.
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Continue Reading Non-Participation Leads to Admission of Jurisdiction & a Judgment

Recycled Paper Greetings, Inc. v. Davis, No. 08 C 236, __ F. Supp.2d __, 2008 WL 282687 (N.D. Ill. Feb. 1, 2008) (Bucklo, J.).
Judge Bucklo denied plaintiff’s, Recycled Paper Greetings (“RPG”), motion for a temporary restraining order in this trade secret misappropriation action. RPG argued that it was either part of a joint venture or, at least, a confidential relationship with defendant Kathy Davis to develop a signature line of greeting cards. RPG contends that Davis took confidential information regarding the greeting card line to a competitor. Davis countered that she had terminated her contract with RPG pursuant to the contract’s termination provision before working with RPG’s competitor and there was, therefore, no breach or misappropriation. At an initial hearing, the Court suggested that live testimony might be required to fully resolve the motion for the TRO. But both parties told the Court that their respective witnesses would not be available during the necessary time frame to testify. Because no witnesses were available, the Court denied the TRO, holding that it lacked sufficient information to determine that RPG maintained its alleged trade secrets with sufficient secrecy or the nature of the relationship between RPG and Davis.
Practice tip: If you are seeking a TRO, line up commitments from your potential witnesses to be available both flexibly and quickly. Not many judges will grant TROs if plaintiff cannot present requested witnesses.
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Continue Reading No Temporary Restraining Order Without Live Witnesses

Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Viachem, No. 07 C 4232, Min. Order (N.D. Ill. Nov. 27, 2007) (St. Eve, J.).
Judge St. Eve granted in part plaintiff’s Fed. R. Civ. P. 12(e) motion for a more definite statement regarding defendant The Ingredient House’s (“TIH”) affirmative defenses and counterclaim. The Court ordered TIH to amend its patent misuse affirmative defense to provide factual allegations outlining the alleged misuse. TIH’s original defense simply stated that plaintiff’s claims were “barred by patent misuse.” The Court also ordered TIH to amend “incongruous statements” in its pleading that appeared to be clerical errors.
The Court denied plaintiff’s motion as to TIH’s defamation counterclaim. TIH was not required to plead which state’s law governed TIH’s defamation claim.
Practice Tip: Defendants frequently plead affirmative defenses with an unsupported statement of the defense. The better practice, and the one that avoids Rule 12(e) motions, is to plead at least the basic facts underlying the defense.
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Continue Reading Parties Must Plead Facts for Affirmative Defenses

Discover Financial Servs. LLC v. National Union Fire Insur. Co. of Pittsburgh, PA, No. 06 C 4359, 2007 WL 2893624 (N.D. Ill. Sep. 26, 2007) (Pallmeyer, J.).

Judge Pallmeyer granted summary judgment that defendant National Union Fire Insurance Co. (“National Union”) did not have a duty to defend plaintiff Discover Financial Services (“Discover”) pursuant…

II have not been able to fulfill my promised additional coverage of the inequitable conduct portion of the Trading Technologies v. eSpeed case, but it is not my fault.* The Court decided to consider eSpeed’s inequitable conduct and patent misuse defenses on the papers. The Court ordered a briefing schedule that will complete briefing by early December for eSpeed’s inequitable conduct and patent misuse defenses , as well as eSpeed’s post-trial motions regarding willfulness and damages remittitur and TT’s motions for its attorneys’ fees and costs. The Court has scheduled a status conference for December 20th. Perhaps the parties will have rulings by the end of the year.
Practice tip: In my experience, one of the dangers of doing inequitable conduct after the conclusion of the jury trial is that both the Court and the parties are exhausted and emotionally drained at the end of the jury trial (particularly after a multi-week trial like this one). So, when it is time to try inequitable conduct, either the Court no longer wants the trial or the parties and the Court are so exhausted that they have trouble keeping their focus and energy level where it was for the jury trial despite the importance of the issues. I do not know why the parties or the Court decided that inequitable conduct should be decided on the papers in this case. But any time that inequitable conduct is to be tried after a jury trial, you run the risk that no live evidence will come in on inequitable conduct.
* Click here to read much more about this case and Trading Technologies’ (“TT”) related cases in the Blog’s archives
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Continue Reading Trading Technologies v. eSpeed: Inequitable Conduct Proceedings Update

Autotech Techs. Ltd. Ptnshp. V. Automation Direct.com Inc., No. 05 C 5488, 2007 WL 2746654 (N.D.Ill. Sep. 18, 2007) (Cole, Mag. J.).*
Judge Cole denied plaintiffs’ (collectively “Autotech”) motion to compel production of defendant Koyo Electronics’ (“Koyo”) touchscreen source code. In Autotech’s Third Amended Complaint – filed without the leave of Court required by Fed. R. Civ. P. 15, but later allowed by Chief Judge Holderman – Autotech alleged that defendants infringed Autotech’s copyrights in its touchscreen display images. Autotech also alluded to source code infringement, but did not explicitly claim it.
In a later interrogatory response, Autotech stated that it was not claiming that defendants’ source code infringed Autotech’s copyrights, but reserved the right to amend the complaint adding such charges. Because Autotech had not sought leave to add source code infringement claims to its complaint, the Court held that the requested source code was not relevant and production was not required. The Court also noted that the request seeking source code was improper because it was served less than thirty days before the fact discovery close in violation of Local Rule 16.1. It did not matter that the deadline was ultimately extended because the extension was granted after the original fact discovery close and after the deadline for responding to the document requests.
Practice tip: Whenever a Court issues a fact discovery close, get out your calendar, count backward thirty days and mark the last day for serving discovery requests. You would be amazed at how many litigators do not take note of this important date.
*Click here for more on this case in the Blog’s archives.
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Continue Reading Discovery Request Due Dates Must Fall Within the Discovery Period

Shen-Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, Slip. Op. (N.D. Ill. Sep. 28, 2007) (Guzman, J.).
Judge Guzman denied defendant’s motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(b). Defendant argued that plaintiffs sold medical gloves embodying the claims of their patent, U.S. Patent No. 6, 953,582 (the “‘582 patent”), to a glove with a coating of a skin-soothing substance in July 1999, approximately two years before the ‘582 patent’s July 1, 2001 critical date. Furthermore, plaintiffs admitted that they sold patented gloves as early as July 1999 by failing to cite any contradictory evidence in their responses to defendant’s Local Rule 56.1 statement.
But plaintiffs argued that the ‘582 had a right to the filing date of its parent, U.S. Patent No. 6,274,154 (the “‘154 patent”). The ‘154 patent only disclosed coating a glove with aloe vera. But plaintiffs argued that the ‘154 patent inherently disclosed skin-soothing substances other than aloe vera. Plaintiffs supported its arguments with testimony from the inventor and plaintiffs’ expert.
Because, among other reasons, defendant failed to support its denials of inherency with any facts, the Court deemed admitted, at least, structural inherency and inherency of theory. Because defendant admitted inherent disclosure, plaintiffs’ ‘582 patent had the critical date of its parent ‘154 patent – April 7, 1998. Plaintiffs’ admitted July 1999 sales of patented gloves, therefore, were not an on-sale bar.
Practice tip: When making or responding to Local Rule 56.1 statements, always support your statements or responses with evidence.
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Continue Reading Parties Make Each Others’ Cases With Unsupported LR 56.1 Statements

Gencor Pacific, Inc. v. Federal Labs., Corp., No. 07 C 168, 2007 WL 2298367 (N.D. Ill. Aug. 3, 2007) (Guzman, J.).
Judge Guzman granted defendants’ Fed. R. Civ. P. 12(b)(3) motion to dismiss for lack of venue. Plaintiff Gencor Pacific (“Gencor”) and defendant Federal Laboratories (“Fedlabs”) both distribute products including caralluma powder. Gencor alleged that Fedlabs infringed Gencor’s copyrights, engaged in unfair competition and other related state law claims by using various Gencor studies and literature to promote Fedlabs’s products. Gencor also alleged that Fedlabs’s Chairman defendant Jeffery Taub left a defamatory voicemail message for an Illinois-based Gencor distributor. Because defendants are all New York residents, venue was only proper in the Northern District if a substantial part of the events at issue occurred in Illinois. Gencor argued that the Illinois voicemail and various Fedlabs mailings to Illinois residents including the copyrighted studies constituted a substantial part of the events at issue. In support of its contentions, Gencor submitted only a transcript of the alleged voicemail. Gencor did not submit any mailings that had been sent to Northern District residents or a declaration stating that the voicemail had been received at a Northern District telephone number. The Court held that Gencor’s unsupported “bare allegations” did not meet Gencor’s burden of proving that venue was proper.
Practice tip: You must support factual allegations with evidence. Local Rule 56.1 forces parties to follow this advice for summary judgment motions (although many fail to follow the rule). But the requirement, although unwritten, is no less important for other motions. If you are ever not sure whether an allegation requires evidentiary support, err on the side of providing the support. I have never seen an argument lost because a party unnecessarily supported its factual allegations.
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Continue Reading Unwritten LR 56.1: Evidentiary Support is Not Just for Summary Judgment