Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Chief Judge Holderman has instituted an operations plan in the event of a federal government shutdown.  The Northern District will operate normally for the first two weeks of any shutdown.  Should a shutdown continue longer than two weeks, the Northern District will operate with essential personnel as set forth by the United States Court's Administrative Office.  Here is the full text of Chief Judge Holderman's statement:

To the People of the Northern District of Illinois,

Please be assured that here in the Northern District of Illinois, Clerk of the Court Mike Dobbins and I have conferred and have developed a plan for our court to deal in the short term with the contingency now facing us of Congress failing to pass the federal budget or to authorize another continuing resolution.

We will keep the United States District Court for the Northern District of Illinois open and functioning with only minor modifications in our procedures for at least two weeks if Congress fails to establish a budget to keep the United States Government functioning. If the shutdown continues longer than two weeks, the court will continue to operate with essential personnel as defined by guidelines issued by the Administrative Office of the United States Courts.

We plan to continue to provide justice to the fullest extent possible and in the same excellent way as we have in the past. Thank you for your understanding.

Chief Judge James F. Holderman
 

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In late January, the Northern District's six newest judges attended a Federal Bar Association panel to offer insights into their practices and chambers. The recurring theme of the discussion was a call for civility: Civility in court. Civility in briefs. Civility in emails. Over the next several weeks, I will provide summaries of each judge's comments and insights. This post (the second nin the series) focuses upon Judge Chang (a University of Michigan aerospace engineer like me Go Blue!):

• Send someone to hearings that knows the case and/or motions.
   
• Civility: Do not casually suggest misconduct; avoid work like "fabricated," "concocted" or "misleading".
   
• Rule 56 motions: omit unnecessary details and "use brevity."
  
   

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DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 C 1531, Slip Op. (N.D. Ill. Jan. 12, 2011) (Nolan, Mag. J.)

Judge Nolan granted in part defendant 3D System's motion to compel further Fed. R. Civ. P. 30(b)(6) testimony from plaintiff DSM Desotech ("DSM") in this patent dispute regarding 3D Systems Zephyr recoater. First, the Court held that the rules, responsibilities and dates of prosecution counsel's involvement was neither privileged, nor work product. Similarly, whether prosecution counsel was aware of the Zephyr recoater during prosecution was not privileged.

The Court held that a Local Rule 83.51.10 screen of DSM's former counsel, which had moved to a firm representing 3D Systems, did not prevent DSM from contacting its counsel to determine what they knew about the Zephyr recoater at the relevant time. Local Rule 83.51.10 does literally require that plaintiff have no contact "for or against" 3D Systems. But that reading is inconsistent with the purposes of the Rule.

Desotech was not required to gather information from a company it acquired, for the period before the acquisition. Pre-acquisition knowledge would not be imputed to the acquiring entity, DSM in this case.  The Court also held that the fact that 3D Systems could or had gathered the requested information from other witnesses or documents did not relieve DSM of its duty to provide Rule 30(b)(6) testimony.

Finally, the Court denied both parties' requests for sanctions because there was room for reasonable disagreement between the parties.

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The annual Chicago IP Colloquium continues this Tuesday, April 5, 2011.  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The next session will be Tuesday, March 9 from 4:10 pm to 5:50 pm at Chicago-Kent Room 305 and will feature Professor Leah Chan Grinvald, Saint Louis University School of Law, discussing: Social Shaming: Fighting Back Trademark Bullies.

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In late January, the Northern District's six newest judges attended a Federal Bar Association panel to offer insights into their practices and chambers. The recurring theme of the discussion was a call for civility: Civility in court. Civility in briefs. Civility in emails. Over the next several weeks, I will provide summaries of each judge's comments and insights. This post (the first in the series) focuses upon Magistrate Judge Gilbert:

• If you bind a document, spiral bind.
   
• Do not play with margins, spacing, or font in your papers.
   
• Deliver courtesy copies before the close of business.
   
• In settlement conferences "be prepared and know your case."
   
• For settlement conferences, educate clients and prepare them to be flexible.

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Airoom LLC v. Demi & Cooper, Inc., No. 09 C 4205, Slip Op. (N.D. Ill. Jan. 5, 2011) (Gottschall, J.).

Judge Gottschall granted defendants' Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of jurisdiction. Plaintiff Airoom accused defendants of infringing its trademarks, as well as related state law claims. Defendants, who were creating and hosting Airoom's website, stopped when Airoom refused to pay amounts allegedly due pursuant to the parties' contract hosting the site, causing website visitors to be directed to a generic "text page."

Airoom claimed Lanham Act violations based upon defendants' decision not to continue hosting the site. Based upon the "artful pleading" doctrine, the Court held that Airoom's claims sounded in copyright, not the Lanham Act. The Court, therefore, lacked federal question jurisdiction. And because all parties were Illinois residents, there could not be diversity jurisdiction. Airoom's case was, therefore, dismissed.
 

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Trading Technologies Int'l, Inc. v. CQG, Inc., No. 10 C 718, Slip Op. (N.D. Ill. Jan. 24, 2011) (Shadur, Sen. J.).*

Judge Shadur sua sponte dismissed defendants' (collectively "CQG") noninfringement and invalidity counterclaims. The Court explained that "mirror image" noninfringement and invalidity patent counterclaims are "seemingly meaningless." And the "amorphous nature" of CQG's counterclaims resulted in them being especially unnecessary. The Court, therefore, dismissed the declaratory judgment counterclaims.

*Click here for much more on this and TT's other cases in the Blog's archives.
 

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Trading Technologies, Inc. v. BGC Partners, Inc., No. 10 C 715, Slip Op. (N.D. Ill. Feb.3, 2011) (Kendall, J.).*

Judge Kendall consolidated plaintiff Trading Technologies' ("TT") patent infringement cases that were filed in 2010 - Judge Coleman previously denied TT's motions to consolidate the cases filed in 2005 with those filed in 2010. The Court held that the 2010 cases were sufficiently related pursuant to Local Rule 40.1. While the products were not identical and the asserted patents were not identical for each defendant, the accused products were similar and were all accused of infringing one or more of three of TT's patent families. Additionally, consolidation would conserve substantial time and effort without causing delay.

The Court also ordered the parties to file a summary of all pending motions and discovery status.

*  Click here for much more on this case in the Blog's archives.

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The Seventh Circuit Electronic Discovery Pilot Program is sponsoring a free e-discovery webinar on April 6, 2011 from noon until 1:30 pm CDT.  This is the next in a series of e-discovery seminars sponsored by the local federal courts which have been excellent so far.  Participation is limited to 1,500.  So, sign up early -- click here to register.  Attendance for the past events has been impressive.  1.5 hours of MCLE credit have been applied for in Illinois, Indiana and Wisconsin.

Here are the details of the webinar from the Northern District's inviation:

What Everyone Should Know About the Mechanics of E-Discovery

April 6, 2011 - Noon - 1:30 p.m. (CDT)

Understanding the mechanics of electronic discovery is essential to your effectiveness in litigation and to fulfill your responsibility to your clients. The Seventh Circuit Electronic Discovery Pilot Program, together with Merrill Corporation, has developed a program designed to assist you in mastering the e-discovery challenges of today’s litigation and to help you manage the preservation, retrieval and production of ESI through the e-discovery process. You will gain information including:

• A basic understanding of the terminology unique to the realm of e-discovery.
   
• The meaning of preservation and how to achieve this crucial obligation in an evolving technological landscape.
   
• How to assess and manage the challenges of an e-discovery project.
   
• A foundational understanding to help you identify potential e-discovery pitfalls and potential problems.

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The annual Chicago IP Colloquium continues this Tuesday, March 22, 2011  The Chicago IP Colloquium is jointly sponsored by Chicago-Kent College of Law and Loyola University Chicago School of Law  to discuss a range of issues in intellectual property and cyberspace law based upon papers by six nationally renowned intellectual property scholars.  The sessions are uniformly excellent, and well worth your time.  The next session will be Tuesday, February 9 from 4:10 pm to 5:50 pm at Loyola and will feature Professor Molly Van Houweling, UC Berkeley School of Law, discussing her paper:  First Sale and Friction.

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Civix-DDI, LLC v. Hotels.com, No. 05 C 6869, Slip Op. (N.D. Ill. Oct. 25, 2010) (St. Eve, J.).

Judge St. Eve construed the terms of the patents-in-suit to internet technology. From a procedural standpoint, the Court did the parties and readers of the opinion the favor of identifying the Court's construction in a bulleted list at the beginning of the opinion, as well as at the end. Lists of the construed terms and their construction opinions make claim constructions far more readable.

Of particular note, the Court construed the following terms:

• "Associated category" means "a classification both stored in the database and provided or selected by a user that divides particular items of interest into subgroups." The Court gave "little weight" to a construction from a prior case which the parties in that case stipulated to because defendants in this case were not parties to that case, nor did they have privity with the prior defendants.
   
• "Connected to" means "joined together or linked to, in a direct or indirect manner." Because neither the claim language nor the specification exclude an indirect connection, the construction included both direct and indirect connections.
   
• "Database" means "a collection of related information organized for convenient access." The Court accepted the construction from the prior case because it was supported by the intrinsic evidence. Nothing in the claims or specifications required a single device as proposed by defendants.
   
• "Internet" means "a system of linked computer networks, worldwide in scope, that is typically associated with using TCP/IP as a standard protocol." This was the Court's construction from the prior case, but it was reached after a de novo review of the construction and all relevant evidence. Additionally, "Internet" and "internet" were construed to mean the same thing.
   
• "User" means "a human being."
   
• "Video" means "a presentation of multiple sequential frames of image data." The construction was intended to create a distinction between digital pictures and video.
   
• "Within a radius about the one port" means "within a circular area the center of which is the user's present physical location."

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Bernina of Am., Inc. v. Imageline, Inc., No. 10 C 4917, Slip Op. (N.D. Ill. Jan. 12, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte struck two paragraphs of plaintiff's answer and affirmative defenses to defendants' counterclaims. Both paragraphs denied allegations for which plaintiff lacked information and belief, which was both "oxymoronic" and in violation of Fed. R. Civ. P. 8(b)(5).
 

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Trading Techs. Int'l., Inc. v. CQG, Inc., No. 10 C 718, Slip Op. (N.D. Ill. Jan. 6, 2011) (Shadur, Sen. J.).

Judge Shadur denied plaintiff Trading Technologies' ("TT") motion to strike certain of defendants' (collectively "CQG") affirmative defenses and counterclaims.* The motion was originally filed September 1, 2010 and had been stayed by agreement as the parties attempted to negotiate a global settlement. Because allowing motions to lie "fallow" for so long was "undesirable" the Court dismissed the motion with leave to refile it should the parties restart the substantive portion of the case.

*  Click here for much more on this and the related Trading Technologies cases in the Blog's archives.
 

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CP Prods., Inc. v. Does 1-300, No. 10 C 6255, Slip Op. (N.D. Ill. Dec. 29, 2010) (Shadur, Sen. J.).

Judge Shadur dismissed defendant Doe 300's motion to quash a subpoena in this copyright case, for numerous failures to comply with the Local Rules: 1) failure to provide a courtesy copy to chambers; 2) failure to notice the motion; and 3) failure to seek leave to appear pro hac vice. The Court, however, did not fine counsel for the violations because she was an out-of-state lawyer.

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Neutral Tandem, Inc. v. Peerless Network, LLC, No. 08 C 3402, Slip Op. (N.D. Ill. Dec. 2, 2010) (Darrah, J.).

Judge Darrah granted plaintiff Neutral Tandem summary judgment as to defendants' (collectively "Peerless Network") inequitable conduct claim. Peerless offered no clear and convincing evidence that the inventor knew of the allegedly withheld prior art, referred to as the "Phase II Order." The fact that the inventor was involved in the proceeding's from which the Phase II Order issued was not sufficient. Those proceedings lasted eleven years and resulted in thirteen orders. And the inventor testified that he did not remember the Phase II Order. Furthermore, similarities between a paragraph of the Order and a statement made during prosecution was not sufficient. Finally a petition filed with the FCC by the inventor referencing the Order was not sufficient because he testified it was written by his outside counsel and he had not reviewed the petition.

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