International Tax Advisors, Inc. v. Tax Law Assocs., LLC, No. 08 C 2222, Slip Op. (N.D. Ill. Feb. 15, 2011) (Valdez, Mag. J.)
Judge Valdez denied plaintiffs’ (collectively “ITA”) motion for summary judgment, and granted defendants’ (collectively “TLA”) motion for summary judgment as to ITA’s copyright claim, and chose not to retain supplemental jurisdiction over ITA’s remaining state law claims. While ITA may have had evidence to support its copyright claim, it did not properly cite to that evidence via its Local Rule 56.1 statement of uncontested material facts. And to the extent ITA cited directly to evidence it did so generally by description, without exhibit numbers or specific page cites.
The Court granted TLA summary judgment of noninfringement because ITA did not properly cite to facts in its Local Rule 56.1 statement showing a question of material fact.
The Court also granted TLA summary judgment as to ITA’s RICO claim because ITA only alleged one of the required two predicate acts.
Finally, the Court declined to exercise supplemental jurisdiction over the remaining claims.

Continue Reading Summary Judgment Granted Based Upon Failure to Comply With Rule 56.1

Illinois’s senior senator Dick Durbin recently sent President Obama the names of seven nominees to fill three vacancies on the Northern District of Illinois bench. The nominees are AUSA Edmond Chang, Illinois appellate Judge Sharon Coleman, Magistrate Judge Susan Cox (click here to read about Judge Cox’s IP opinions in the Blog’s archives), Thomas Durkin, Gary Feinerman, Mary Rowland and Magistrate Judge Maria Valdez (click here to read about Judge Valdez’s IP opinions in the Blog’s archives).
Here are biographies of each nominee from Senator Durbin’s press release:
Chang has served as an assistant U.S. attorney in the Northern District of Illinois since 1999, and he is currently the chief of appeals. He previously worked as an associate at Sidley Austin, and as a judicial law clerk to Judge Marvin Aspen in the Northern District of Illinois and Judge James Ryan on the U.S. Court of Appeals for the 6th Circuit. He has served as an adjunct professor at Northwestern University law school, where he graduated with honors and served on the law review. He lives in Northbrook.
Coleman is a judge on the Illinois Appellate Court, following her election in 2008. She served as a judge on the Circuit Court of Cook County from 1996 to 2008. Before that, she was a supervisor in the Cook County state’s attorney’s office and an assistant U.S. attorney in the Northern District of Illinois. She has served on the boards of numerous bar associations and public interest organizations. She is a graduate of Washington University law school in St. Louis, and she lives in Chicago.
Cox has been a U.S. Magistrate Judge in the Northern District of Illinois since 2007. She previously worked as a litigator at several Chicago law firms, as an assistant U.S. attorney in the Northern District of Illinois, and as a judicial law clerk to Judge Wayne Andersen in that district. Judge Cox has served on the boards of many bar associations and public interest organizations. She has taught as an adjunct professor at DePaul University law school, and she is a graduate of Boston University law school, where she served on the law review. Judge Cox lives in LaGrange.
Durkin has been a partner at Mayer Brown since 1993 and was the chair of the firm’s pro bono committee for nearly a decade. He previously served as an assistant U.S. attorney in the Northern District of Illinois for over twelve years. He served as a judicial law clerk to Judge Stanley Roszkowski in the Northern District of Illinois. He is a graduate of DePaul University law school, where he has taught as an adjunct professor. Durkin lives in Downers Grove.
Feinerman has been a partner at Sidley Austin since 2007. From 2003 to 2007, he served as Illinois’s solicitor general, and before that he was a partner at Mayer Brown. He has argued numerous cases before the U.S. Supreme Court and Illinois Supreme Court. He served as a judicial law clerk to Justice Anthony Kennedy on the U.S. Supreme Court and Judge Joel Flaum on the U.S. Court of Appeals for the 7th Circuit in Chicago. He has served on numerous boards and is the president of the Appellate Lawyers Association of Illinois. He graduated from Stanford Law School and lives in Winnetka.
Rowland is a partner at the Chicago law firm of Hughes Socol Piers Resnick & Dym, where she has worked since 2000. From 1990 to 2000, she worked at the Federal Defender Program in Chicago, including five years as the chief appellate attorney. She has served on numerous boards. She was a judicial law clerk to Judge Julian Cook in the Eastern District of Michigan, and she is a graduate of the University of Chicago law school. Rowland lives in Oak Park.
Valdez has been a U.S. Magistrate Judge in the Northern District of Illinois since 2005. From 1992 to 2005, she was the Chicago regional counsel and staff attorney for the Mexican American Legal Defense and Educational Fund. Prior to that, she worked as a Deputy Federal Public Defender in California. She has served on many boards. She is a graduate of the University of California-Hastings law school, and she lives in Western Springs.
A hat tip to Ameet Sachdev at the Chicago Tribune’s Chicago Law Blog for identifying this story last week.

Continue Reading Senator Durbin Sends Northern District Judicial Nominees List to President Obama

Anne Reed has an excellent post at her Deliberations blog about improving the voir dire system based upon Judge Mize’s and Center for Jury Studies director Paula Hannaford-Agor’s new paper, Building a Better Voir Dire — click here to read the post and for a link to a pdf of the article, which is also worth the read. Reed’s post and the article fit well with my recent series of posts on the Seventh Circuit’s American Jury Project report — to read those posts and for a copy of the report, click here (juror questions); here (preliminary jury instructions); here (12 person juries); here (interim statements by counsel)and here (Phase I principles).
Reed nails a huge problem with improving voir dire specifically or the trial process generally — judges and lawyers have different interests. Judges who do lots of trials while facing bulging dockets and populations with little interest in appearing for jury duty often want trials over quickly and efficiently using the smallest jury pool possible. Lawyers want to know as much as possible about as large a pool of jurors as possible. Of course, the more in-depth the voir dire process, the more time it takes. And the process of testing new ideas and improving upon voir dire, or any part of the trial process, also takes time up front, even if it saves time in the long term. But Reed, Mize and Hannaford-Agor identify two resources that help limit the upfront costs for judges — the American Jury Project and the NCSC’s State-of-the-States Survey. Both are incredible resources for judges that want to try new approaches to better serve all trial stakeholders.
Most of all though, it is exhilirating to see important groups like the NCSC and the Seventh Circuit massing their resources to evaluate and improve the trial process. I look forward to covering more efforts like these and to continuing the discussion about how to best try cases in our courts.

Continue Reading The Experts Look at Improving Voir Dire

Goss Int’l Ams., Inc. v. Graphic Mgmt. Associate, Inc., No. 05 C 5622, Slip Op. (N.D. Ill. Jun. 11, 2008) (Manning, J.).
Judge Manning construed the terms of plaintiff’s patent related to a newspaper assembly collating machine by adopting in part and rejecting in part Magistrate Judge Valdez’s Report and Recommendation (“Report”) construing the claims. Of particular note, the Court considered whether it should review the Report de novo or for clear error, because the constructions were not dispositive. Because the constructions likely would be case dispositive in fact, and because prior cases reviewed magistrate claim construction reports de novo, the Court held that de novo review was appropriate.

Continue Reading Magistrate Claim Constructions Reviewed De Novo

The Northern District of Illinois and Chicago’s Federal Bar Association chapter are hosting their Ninth Annual Awards for Excellence in Pro Bono and Public Interest Service awards program this Tuesday, May 13 beginning at 3:30 pm in the James Benton Parsons Memorial Courtroom (2525) of the Dirksen United States Courthouse at 219 South Dearborn Street. The program is open to everyone and is free of charge.
The keynote speaker will be William Neukom, the President of the ABA and partner in K&L Gates. Prior to his private practice, Neukom was executive vice president of Law and Corporate Affairs for
Microsoft, where he managed Microsoft’s legal, government affairs and philanthropic
activities.
Seven “Awards for Excellence in Pro Bono and Public Interest Service” and one “Special
Recognition Award for Public Interest Service” will be presented to the following Chicago-area lawyers for their pro bono and public interest work before the Northern District:
Sara C. Arroyo and Rosa M. Tumialán, of Dykema Gossett PLLC (presented by the Judge Coar);
Anthony J. Masciopinto, of Kulwin, Masciopinto & Kulwin, LLP (presented by Judge Manning);
Myron Mackoff, of Richardson & Mackoff (presented by the Chief Judge Holderman and Magistrate Judge Valdez);
Joshua D. Lee and Amy M. Rubenstein, of Schiff Hardin LLP (presented by the
Judge Brown);
Catherine Caporusso and Margot Klein, of the Federal District Court’s Self-Help Assistance Program (presented by Judge Hibbler);
David A. Gordon, Michael B. Nadler, and Kristen R. Seeger, of Sidley Austin LLP (presented
by Magistrate Judge Schenkier);
Lisa R. Kane, of Lisa Kane & Associates, PC (presented by Chief Judge Holderman); and
Richard J. Gonzales, Clinical Professor of Law, Chicago-Kent (presented by Chief Judge Holderman).

Continue Reading Northern District’s Ninth Annual Pro Bono & Public Interest Awards

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

Goss Int’l Am., Inc. v. Graphic Management Assocs., Inc., No. 05 C 5622, 2007 WL 161684 (N.D. Ill. Jan. 11, 2007) (Valdez, Mag. J.).

Magistrate Judge Valdez  compelled certain foreign defendants (the "Swiss Defendants") to produce documents related to each Swiss Defendant’s contacts with the United States.  After plaintiff filed its patent infringement claims

Ropak Corp. v. Plastican, Inc., No. 04 C 5422, 2006 WL 2385297 (N.D. Ill. Aug. 15, 2006) (Valdez, Mag. J.).

Magistrate Judge Valdez’s opinion ruled on plaintiff’s Rule 37 motion for sanctions based upon defendant’s repeated refusal to fully meet its discovery obligations in this patent infringement dispute. The opinion demonstrates an important point: a party must comply with a court’s discovery orders (even orders issued by the most reasonable and forgiving court, as here) or suffer the consequences.


Continue Reading Comply With Discovery Orders or Suffer the Consequences