Freeman Equip., Inc. v. Caterpillar, Inc., No. 16 C 9172, Slip Op. (N.D. Ill. Mar. 13, 2017) (Bucklo, J.).

Judge Bucklo denied defendant Caterpillar’s motion to disqualify plaintiff Freeman Equipment’s (“Freeman”) counsel in this patent case involving final drive guard assemblies.

Caterpillar sought disqualification for two reasons: 1) counsel’s allegedly improper interview of a

Tellabs Ops., Inc. v. Fujitsu Ltd., No. 08 C 3379 & 09 C 4530, Slip Op. (N.D. Ill. Aug. 29, 2012) (Cole, Mag. J.).

Judge Cole, after an evidentiary hearing, ordered Fujitsu to produce all documents related to an extensive inspection of plaintiff Tellabs’ optical scanner in this patent case.  Fujitsu claimed that certain

Judge St. Eve granted in part plaintiff/counter-defendant Morningware’s motion to compel the deposition of defendant/counter-plaintiff’s employee that conducted pre-suit, Rule 11 testing in this Lanham Act and patent infringement case involving convection ovens. The Court held that the witness at issue – Kim – was involved in the testing. In fact, Hearthware produced a video showing Kim performing tests. Furthermore, not all of Kim’s actions were privileged. Communications with counsel were privileged, while testing was not. And even as to communications, Morningware was entitled to information regarding the date of the communication, the parties in the communication, their titles and the subject matter of the communications. The Court also granted Morningware its fees related to the motion.

Continue Reading Fees Awarded for Deposition Related to Rule 11 Investigation

Heriot v. Byrne, No. 08 C 2272, Slip Op. (N.D. Ill., Apr. 9, 2008) (Ashman, Mag. J.).
Judge Ashman issued this Order finding that certain of defendants’ allegedly privileged documents were privileged and ordering that others be produced. The Court did not discuss specific documents or the analysis that went into the decisions. But the Court did provide the following list of general explanations for why some documents asserted to be privileged were in fact not privileged and had to be produced:
* not confidential;
* did not reveal privileged communications, directly or indirectly; or
* the advice was that of accountants, not lawyers, and was not used to assist the lawyers in giving legal advice.
Both young lawyers preparing privilege logs and senior lawyers reviewing them for exchange would do well to read this list. It covers most of the common reasons documents are erroneously withheld as privileged.

Continue Reading Court Orders Production of Allegedly Privileged Documents After In Camera Review

Heriot v. Byrne, No. 08 C 2272, Slip Op. (N.D. Ill., Mar. 20, 2008) (Ashman, Mag. J.).
Judge Ashman denied in part and granted in part Defendants’ discovery motion seeking certain allegedly privileged documents, and denied in part and withheld ruling on the remainder of plaintiffs discovery motion regarding allegedly privileged documents. Of particular interest, the Court held that new Fed. R. Evid. 502 governing inadvertent disclosure of privileged documents applied in this case although it was not filed after the rule took effect because the case was pending at that time and because defendants, who opposed application of the rule, identified no reason that its application in this case would be unjust. Having decided that Fed. R. Evid. 502(b) applied to allegedly inadvertent disclosures, the Court identified the test to determine whether the disclosure was a waiver of privilege as follows: 1) determine whether the disclosed material was privileged; 2) determine whether all three Fed. R. Evid. 502(b) factors are met, including inadvertence. The Court also noted that in analyzing the three factors courts were free to consider any of the five factors from Judson Atkinson Candies, Inc. v. Latini-Hohberger Dhimantec, 529 F.3d 371 (7th Cir. 2008).

Continue Reading FRE 502 Applies in Case Pending on 502’s Effective Date

Miyano Machinery USA, Inc. v. MiyanoHitec Machinery, Inc., No. 08 C 526, 2008 WL 236610 (N.D. Ill. Jun. 6, 2008) (Nolan, Mag. J.).
Judge Nolan granted plaintiff’s motion to quash defendants’ subpoenas of plaintiff’s counsel – who represented: 1) plaintiffs and perhaps individual defendants in plaintiffs’ earlier trademark prosecution; and 2) plaintiffs in this case. The Court denied defendants’ motions to compel production of communications between plaintiffs and plaintiffs’ counsel and to pierce the privilege.
Defendants argued that plaintiffs committed fraud on the PTO, and therefore inequitable conduct, when plaintiffs’ counsel allegedly knowingly submitted false declarations during prosecution of plaintiffs’ trademarks. Defendants based their claims on an allegedly privileged communication between plaintiff and its counsel (Exhibit L) that plaintiffs claimed was inadvertently produced.
The Court held that Exhibit L was inadvertently produced – it was just one document among 22,000 pages and plaintiffs requested its return immediately after discovering its production. Furthermore, Exhibit L was essentially a list of questions from counsel to plaintiffs, by which counsel was making sure he had sufficient information to file the declarations in question – evidence supporting plaintiffs’ defense of defendants’ inequitable conduct claims.
Finally, while the Seventh Circuit had not ruled on the correct test for whether to allow attorney depositions, the Court followed what it held was the prevailing test in the Northern District, as set forth in Shelton v. American Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 1986):
1. No other available means for obtaining the information;
2. Information is relevant and not privileged; and
3. Information is crucial to the case.
Id. Because plaintiffs identified four other individuals allegedly having the information – some of whom had not been deposed – defendants had not met their burden to depose plaintiffs’ counsel.

Continue Reading Subpoena of Plaintiff’s Prosecution/Trial Counsel Denied.

Goss Int’l Am., Inc. v. Graphic Management Assocs., Inc., No. 05 C 5622, 2007 WL 161684 (N.D. Ill. Oct. 9, 2007) (Valdez, Mag. J.).*
Magistrate Judge Valdez granted in part the parties’ cross motions to compel various discovery. Each party’s alleged waived privilege is of particular interest. The Court denied plaintiff’s motion to compel all documents reflecting defendants’ trial counsel’s** mental impressions of the case, whether or not they were shared with defendants. In light of In re Seagate, the Court held that defendants’ reliance upon advice of counsel does not waive its privilege as to trial counsel’s mental impressions not communicated to defendants.
The Court denied in part defendants’ motion to compel all previously privileged documents related to prosecution of the patent in suit. Defendants alleged that plaintiff’s production of a Record of Invention document prepared by the inventors at counsel’s direction and request waived privilege. The Court held that plaintiff intentionally waived privilege by disclosing the document, but limited the waiver to documents related to development of plaintiff’s invention.
* Click here for more on this case in the Blog’s archives.
** It is not entirely clear, but it appears from the opinion that defendants used the same firm or attorneys for both opinion counsel and trial counsel.

Continue Reading Court Limits Scope of Privilege Waivers

Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Viachem, No. 07 C 4232, Min. Order (N.D. Ill. Nov. 21, 2007) (St. Eve, J.).
Judge St. Eve granted in part plaintiff’s motion to compel various discovery. The Court ordered defendants to produce various once-privileged documents disclosed to unidentified customers pursuant to an alleged common interest privilege. The Court acknowledged that common interest could protect such disclosures. But defendants failed to identify the specific customers that were shown documents, which documents were disclosed or when the disclosures occurred. On that record, the Court could not find that defendants had maintained the privilege.
The Court also ordered defendants to update their privilege log to identify any attorneys on the log. And the Court ordered the parties to meet and confer regarding uncrystalized disputes over defendants’ answers to some interrogatories.
Practice Tip: It is the rare judge that appreciates discovery motions, let alone motions where the parties did not identify what the actual issues were. It is very important to follow both the letter and the spirit of Local Rule 37.2 meet and confers.

Continue Reading Privilege Claims Must be Supported by Specific Facts

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).
Judge Moran denied plaintiff Trading Technologies’ (“TT”) motion to compel additional production from third party Chicago Mercantile Exchange (“CME”). TT served CME with a subpoena seeking, among other things, anything referring or relating to potential prior art to the patents at issue and communications between CME and any other entity regarding the patents at issue, including any joint defense agreement between CME and such parties. After TT filed the motion to compel, CME produced thousands of pages, including what it stated were all documents in its possession regarding possible prior art. Because all prior art documents had been produced, the Court denied TT’s motion to compel additional prior art-related documents.
The Court also denied TT’s motion to the extent it sought communications regarding the possible prior art. First, the Court considered any communications CME might have had with defendants in the currently pending cases. The Court referred to its May 1, 2007, order which required defendants to produce a list of all members in their joint defense agreement (that opinion and order, as well as numerous other opinions from this and its related cases, are in the Blog’s archives). The Court held that defendants’ list would allow TT to discover whether CME was involved in a joint defense and that no further discovery from CME was necessary.
Second, the Court considered CME’s communications, including potential joint defense agreements, with any parties not involved in TT’s pending suits. The Court held that the common interest doctrine could attach to communications even before the filing of a suit, so long as the parties anticipated litigation. Furthermore, the Court held that regardless of whether CME’s communications with other third parties were part of a joint defense, they were not discoverable because they were “irrelevant” to this case. The Court explained that while relevance is broadly defined, it does have boundaries and TT’s motion ran “up against such a boundary.”
* Because Westlaw has not published this opinion yet, here is a copy of Judge Moran’s original, signed opinion.

Continue Reading Third Parties’ Communications With Other Third Parties Are Not Relevant

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 05 C 4120, (N.D. Ill. May 16, 2007) (Moran, Sen. J.).
Judge Moran granted in part and denied in part plaintiff Trading Technologies’ (“TT”) motion to compel additional production from defendants GL Consultants, Inc. and GL Trade SA (collectively “GL”). The Court required GL to update certain interrogatory responses and to produce documents based upon a priority date GL had argued for, as opposed to stopping at TT’s alleged priority date. The Court also required GL to provide TT access to original source code and certain electronic archives, without regard to whether TT had provided GL similar access. Finally, the Court denied TT’s request to lower the confidentiality designation of the source code for GL’s GL Tradepad software. But what is most interesting about the Court’s opinion is its reminder to the parties about how the Court expects them to conduct discovery:
At the outset, we reiterate some of the points regarding discovery that we have stressed throughout this complicated and contentious litigation. First, parties should err on the side of over-production; relevance should he argued sparingly. Second, counsel are officers of the court and their word is generally sufficient. Third, there will always be additional persons to interview, additional documents to discover, and alleged prior art to be found; we must, however, put an end to discovery at some point. . . . With such guidelines in mind, we address the current dispute.
* Because Westlaw has not published this opinion yet, here is a copy of Judge Moran’s original, signed opinion.

Continue Reading Court Reminds Parties of Their Discovery Obligations