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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: St. Eve

Ordinary Meaning Relied Upon When the Patent Does Not Require More than That

Posted in Claim Construction

Sonix Tech. Co., Ltd. V. Pubs. Int’l, Ltd., No. 13 C 2082, Slip Op. (N.D. Ill. Oct. 30, 2014) (St. Eve, J.).

Judge St. Eve construed the disputed terms of the patent in suit in this case regarding graphic indicators on a surface that are not visible to the human eye, but when scanned provide additional information.  The Court held that the following three terms need not be construed, relying upon their plain and ordinary meaning:

  1. Capable of distinguishing the corresponding graphical indicator from adjacent graphical indicators;
  2. Main information that overlaps and co-exists with the graphical micro-units on the surface of the object; and
  3. Content information.

The Court construed “header information” as follows:

  • Information in the graphical indicator that is used to retrieve the graphical indicator and corresponding content information and is capable of (1) distinguishing the corresponding graphical indictor from an adjacent graphical indicator, and (2) indicating the orientation of the corresponding graphical indicator to the optical device.

The Court also provided several charts that are very helpful in quickly understanding the relative positions and the Court’s conclusions.  Before the Court’s analysis of each disputed term, the Court provided a chart listing plaintiff’s proposed construction, defendants’ proposed construction and the Court’s construction.  Additionally, at the end of the opinion, the Court concludes with a chart of its constructions.  This is a great practice and makes the opinion much more readable.

Expert May Not Speculate on an Examiner’s Hypothetical Reactions

Posted in Experts

The Medicine Co. v. Mylan Inc., No. 11 C 1285, Slip Op. (N.D. Ill. Apr. 17, 2014) (St. Eve, J.).

Judge St. Eve granted in part and denied in part plaintiff The Medicine Company’s (“TMC”) Daubert motion seeking to exclude certain opinions of defendants (collectively “Mylan”) in this patent case involving an injectable anticoagulant that prevents blood clotting during coronary procedures.  As an initial matter, the Court held that because it would be the tried of fact, the Court was free to delay its gatekeeping function by allowing “borderline” testimony, subjecting the testimony to cross-examination and deciding later whether the testimony should be considered or excluded.  The Court noted, however, that at some point it would be required to provide “more than just conclusory statements of admissibility or inadmissibility ….”

The Court denied TMC’s motion to the extent that the expert was allowed to rely upon a statistical analysis table prepared by a second expert.  The Court already held that the second expert’s analysis was sufficiently reliable and an expert was free to rely upon research conducted by others.  Furthermore, the expert independently opined upon the analysis based upon his own experience.

The Court granted TMC’s motion to the extent that the expert sought to testify regarding how the prosecuting Patent Examiner would have acted or what she would have thought had TMC provided different information during prosecution. Those opinions were speculation and, therefore, were not sufficiently reliable.  The expert, however, was permitted to testify to facts and what the expert believes would have been material to the Patent Examiner, without opining upon what the Patent Examiner would have thought or done.

Plaintiff May Not Dismiss Claims in Response to Summary Judgment Motion

Posted in Summary Judgment

Beasley v. John Wiley & Sons, Inc., No. 12 C 8715, Slip Op. (N.D. Ill. Sep. 9, 2014) (St. Eve, J.).

Judge St. Eve, after previously deferring ruling to allow the parties to work out procedural disputes, granted defendant John Wiley & Sons’ motion for summary judgment as to plaintiff’s fraud and Digital Millennium Copyright Act (“DMCA”) claims, having previously granted plaintiff summary judgment of copyright infringement regarding its photographs.  Because plaintiff offered no evidence in response to the motion that would allow a reasonable jury to find that defendant misrepresented plaintiff’s copyright or removed copyright-management information from the photographs, the Court granted defendant summary judgment as to both claims.  Allowing plaintiff to dismiss those claims as it proposed would have been unfair to defendant because it would have prevented defendant from seeking fees as to the DMCA claim.  And plaintiff’s request was too late, coming late in the case and in response to a summary judgment motion.

An Investigation By Any Other Name is Still an Investigation

Posted in Discovery

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Mar. 5, 2014) (St. Eve, J.).

Judge St. Eve denied defendants’ (collectively “Zurn”) motion to exclude plaintiff Sloan Valve’s (“Sloan Valve”) expert in this patent litigation involving dual mode flush valves for plumbing fixtures.  Plaintiff’s expert conducted what he called a “survey,” but was in fact an investigation.  The expert, a 27 year veteran of the FBI, coordinated an investigation of approximately 200 bathrooms across the country which plaintiff believed would have either Sloan or Zurn plumbing fixtures.  The expert’s agents photographed specific fixtures using an app that time and location stamped them. 

The Court held that the fact that the expert used the term “survey” did not change the fact that it was an investigation, not a survey as the term is used in the legal context.  And Zurn did not dispute that the expert was qualified to conduct such an investigation.  Furthermore, the investigators did not interview anyone, they just took pictures.  So, there were no hearsay concerns.

Finally, Zurn’s other concerns did not warrant exclusion, although the could be addressed on cross-examination:

  1. The 200 sites were not randomly selected and were selected by Sloan;
  2. The sites were “overwhelmingly” public buildings; and
  3. The investigators did not investigate every bathroom at each site and did not adequately investigate the bathrooms that they did enter.

Limiting Interrogatory Language Allows Limited Response

Posted in Discovery

Hubbell Indus. Controls, Inc. v. Electro Power Sys. Of Utah, Inc., No. 12 C 8609, Slip Op. (N.D. Ill. Oct. 17, 2013) (St. Eve., J.).

Judge St. Eve granted in part defendant Electro Power’s motion to compel further interrogatory responses and denied Electro Power’s motion to compel production of unredacted attorney billing records in this Lanham Act case involving Electro Power’s alleged improper reproduction of components of plaintiff Hubbell’s braking contactors and allegedly passing them off as genuine Hubbell parts.

Hubbell listed twenty one elements of its trade dress.  For all but three, Hubbell provided detail regarding the aspects that were part of the trade dress.  Those eighteen elements were sufficiently described and no further interrogatory responses was required.  For the other three — armature assembly, stator assembly and arc shield assembly — Hubbell was ordered to supplement its interrogatory response to specifically identify the aspects that were part of the trade dress.  The Court also struck the phrase “include[ing], but not limited to” from Hubbell’s responses.  Hubbell was required to identify all elements of its alleged trade dress.

As to the other eighteen elements of Hubbell’s alleged trade dress, Hubbell’s descriptions were not “amorphous,” “vague” or “unclear” as Electro Power asserted.

Hubbell’s response regarding its date of first use of its trade dress was deficient in two respects.  First, although Hubbell had three distinct trade dresses, it only provided one date of first use.  If all three share the same date, Hubbell must state that.  Otherwise, three dates should be provided.  Hubbell also failed to respond to the request for the circumstances of its first use and any documents evidencing the use.

The Court also denied Electro Power’s motion to compel unredacted attorney’s bills.  While Hubbell sought damages in the amount of certain attorney’s fees, the parties failed to brief whether unredacted bills were required to decide fees pursuant to the Lanham Act.  The motion failed, however, for a more basic reason.  Electro Power’s interrogatory only seeks documents upon which Hubbell intends to rely.  To the extent that Hubbell does not intent to rely upon unredacted bills, it need not produce them.  The Court, however, gave Electro Power the opportunity to request additional documents on the limited issue of Hubbell’s fees damages.

Claim Constructions Rely Upon Specification and Dictionary

Posted in Claim Construction

Bobel v. MaxLite, Inc., No. 12 C 5346, Slip Op. (N.D. Ill. Feb. 5, 2014) (St. Eve, J.).

Judge St. Eve construed the disputed terms in this patent litigation related to compact fluorescent lamps.  Of particular note, the Court held as follows:

  • Resonate Boosting Circuit was construed as “a circuit comprising (i) boosting inductance connected in circuit between the AC input terminals and (ii) boosting capacitance, comprising one or more capacitors, connected in parallel with selected one or more diodes of the rectifier circuit.”
  • Power Line Voltage Rectifier was construed as “a device that converts the AC signal from an alternating voltage source into a pulsating DC signal at the output of the rectifier, with such device including at least two diodes, each of which connects on one side to the AC power line.”
  • Integrated Into was construed as “physically combined into.”
  • A Resonant Boosting Circuit Integrated Into the Power Line Voltage Rectifier was construed as “a circuit operable to provide between the DC terminals a variable DC voltage having an absolute peak magnitude higher than the absolute peak magnitude of a rectified voltage of the alternative voltage source, and the resonant boosting circuit comprising: (i) boosting inductance connected in circuit between the AC input terminals and the alternating voltage source, and (ii) boosting capacitance comprising one or more capacitors connected in parallel with one or more unidirectional devices of the rectifier circuit.”  Because the term was a combination of the previously construed terms, the term was construed consistent with those constructions.
  • Parallels was construed as “of or denoting electrical components or circuits connected to common points at each end, rather than one to another in sequence.”  This construction was based upon a dictionary definition.

The Court helpfully closed its opinion with a chart listing its constructions.

Expert Opinions Outside an Expert Report are Barred

Posted in Discovery, Experts, Trial

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 23, 2013) (St. Eve, J.).

Judge St. Eve granted defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s “corporate intellectual property practice” expert in this patent infringement case involving flush valves for use in plumbing fixtures.  Zurn argued that the expert’s opinions regarding willfulness should not be allowed because they had not been sufficiently disclosed in the expert’s report.  The expert sought to opine that Zurn had acted inconsistent with “normal standards of fair commerce”, thus making Zurn’s conduct was willful.  The Court excluded those opinions because “normal standards of fair commerce” was never identified or discussed in the expert’s disclosures and reports.  Furthermore, there were no corporate standards or other evidence of “normal standards of fair commerce” identified as having been considered by the expert in relation to his report.  The Court also noted that Sloan Valve’s arguments regarding the purposes and testimony of the expert’s opinions had shifted throughout the briefing and hearing.  And Sloan Valve’s failure to disclose the normal standards or corporate policies was not harmless or substantially justified.  Without at least some notice of them, Zurn was unable to properly respond to them.

Technical Expert Opinions Regarding Willfulness are Excluded

Posted in Discovery, Experts, Trial

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 12, 2013) (St. Eve, J.).

Judge St. Eve granted in part defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s technical expert in this patent infringement case involving flush valves for use in plumbing fixtures.  Zurn argued that the expert should not be allowed to testify about willfulness issues or about life cycle testing of valves because of a lack of experience and reliable methods.  Sloan Valve stipulated that the expert would not testify about the willfulness standard or about how Zurn’s actions related to the willfulness standards, for example what information was or was not relayed to outside counsel.  The Court held as follows: 

  1. The expert had sufficient qualifications.  While the expert did not have specific plumbing expertise, he was sufficiently qualified.  He had a degree in mechanical engineering, as well as a masters of science and doctor of philosophy in theoretical and applied mechanics.  He was a registered professional engineer, a former professor of engineering, and a member of various engineering societies.  And he has analyzed product designs regarding numerous patents.  Finally, he had studied the wear on brass faucets.
  2. A battle of experts does not make the expert testimony unreliable.  While Sloan Valve’s expert challenged portions of the expert’s life cycle analysis and while the expert had not performed life cycle testing in the relevant field, his background and experience were a sufficient basis of his opinions.  These and any other issues could be probed upon cross-examination.  Additionally, the Court considered that there was not a written standard for life cycle testing these valves.  So, any expert would be performing the test or critiquing them based upon that expert’s experience.
  3. The expert’s opinion statements are admissible, but not those about willfulness.  The Court allowed the expert’s alleged conclusory statements that the life cycle tests at issues were not an accurate simulation of real world conditions.  They were expert opinions based upon experience, not merely conclusory, and might add the trier of fact.  The Court, however, barred a statement that the test was developed to defeat the patent in suit and therefore were evidence of willful infringement.

Draft Expert Reports Protected as Work Product

Posted in Discovery, Federal Rules

The Medicines Co. v. Mylan, Inc., No. 11 C 1285, Slip Op. (N.D. Ill. June 13, 2013) (St. Eve, J.).

Judge St. Eve denied plaintiff The Medicines Company’s (“TMC”) motion to compel discovery withheld as privileged in this patent dispute.  Initially, the Court held that TMC failed to comply with Local Rule 37.2 by filing its motion to compel without having a meet and confer.  But the Court addressed the merits of the motion to avoid “needless delay.”

Drafts of defendant Mylan’s expert report were not discoverable.  Mylan’s counsel had not written the reports, they had merely provided a prior declaration, portions of which were used verbatim in the report.  TMC was, however, free to impeach the expert based upon his copying of the declaration.  Finally, TMC did not show the “substantial need” required to overcome the Rule 16(b) protections of the draft reports.

Reply Expert Reports Must Only Respond to Rebuttal Reports

Posted in Discovery, Local Rules

Sloan Valve Co.. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. June 19, 2013) (St. Eve, J.).

Judge St. Eve granted in part defendant’s (collectively “Zurn”) motion to strike plaintiff Sloan Valve’s (“Sloan”) reply expert report in this patent dispute.  The Federal Rules and the Local Patent Rules do not typically allow reply reports without prior leave of Court for cause, LPR 5.3.  But the parties agreed to reply reports and the Court entered a reply report deadline, at the parties’ request.  So, a reply report was permissible, but only to the extent that it was responsive to the rebuttal report.  On that issue, the Court held as follows:

  • Recalculations using unweighted rations, which were mentioned but not used in the opening report, were permissible because they responded to a criticism in the rebuttal report.
  • The inclusion in calculations of “new” incremental costs was allowable as responsive to the rebuttal report.
  • The addition of an entirely new schedule and damages computation was not allowable.
  • Zurn’s expert was not allowed to file a supplemental expert report because the Court struck the improperly prejudicial portions of the reply report.


2013 PWC Patent Litigation Study: N.D. Illinois Remains a Key Patent District

Posted in Legal News

PWC has published the latest installment in its excellent yearly patent litigation survey.  This year’s survey looks at data for every year from 1995 through 2012.  One interesting aspect of this year’s study was a focus upon individual districts and judges.  Here are some of the key takeaways regarding the Northern District:

  • The Northern District (a top five patent district in terms of number of filings) is the fifteenth fastest district to trial with 35 cases going to trial during the period (1995-2012) in a median time of 3.67 years.  That is relatively slow as compared to the Eastern District of Virginia’s .97 years mediation or the Western District of Wisconsin’s 1.07 years.  But those times to trial do not take into account the number of trials — 32 for the Northern District, 22 for Virginia and 10 for Wisconsin — nor do they consider the relative complexity of those cases. 
  • In those trials, plaintiff’s have a 24.8% success rate with median damages of almost $5.9M.  That puts the Northern District 8th in terms of largest median damages awarded, and 13th in plaintiff’s success rate.
  • The Northern District is 2nd in terms of number of reported NPE decisions with 32 decisions and 133 total patent decisions.  In those decisions, the NPEs’ success rate was 12.5%.
  • The Northern District is also the 4th district in ANDA filings with twelve.

The PWC study also looks at individual judges, with Northern District judges ranking high in all categories:

  • Judge Darrah was the 11th judge nationwide in terms of patent decisions with 10 total.  Plaintiffs’ success rate was 10% on those decisions.  Seven of the ten decisions were summary judgment decisions.  Judge Darrah is ranked 8th for summary judgment decisions nationwide with seven decisions and a 0% success rates for plaintiffs.
  • Judge Kendall was 18th with nine decisions (88.9% were summary judgment decisions).  Kendall had an 11.1% success rate for plaintiffs.  Judge Kendall is ranked 6th for summary judgment decisions nationwide with eight decisions and a 12.5% success rates for plaintiffs.
  • Judge Bucklo was 21st with eight decisions (62.5% were summary judgment decisions).  Bucklo had a 50% success rate for plaintiffs.  Judge Bucklo is ranked 24th for summary judgment decisions nationwide with five decisions and a 20% success rates for plaintiffs.
  • Judge Guzman was 34th with seven decisions (71.4% were summary judgment decisions) with a 14.3% success rate for plaintiffs.  Judge Guzman is ranked 26th for summary judgment decisions nationwide with five decisions and a 20% success rates for plaintiffs.
  • Judge Zagel was 35th with six decisions (66.7% were summary judgment decisions) with a 66.7% success rate for plaintiffs.  Judge Zagel is ranked 36th for summary judgment decisions nationwide with four decisions and a 50% success rates for plaintiffs.
  • Judge St. Eve was 41st with six decisions (83.3% were summary judgment decisions) with a 16.7% success rate for plaintiffs.  Judge St. Eve is ranked 35th for summary judgment decisions nationwide with five decisions and a 0% success rates for plaintiffs.
  • Judge Kennelly is ranked 31st for summary judgment decisions nationwide with five decisions and a 0% success rates for plaintiffs.

The judge-by-judge statistics are interesting, but because of the relatively low number of decisions and the relatively simple statistics offered, they likely do not tell us much.  It is hard to draw many clear conclusions from sample sets of, in most cases, four to six summary judgment decisions spaced over years with varied parties and circumstances. It is also curious that Judge Pallmeyer did not make any of the lists, although she has been on a number of lists as one of the busiest patent judges in the nation over the almost seven years that I have been writing this blog.

7th Cir. Judicial Conference: Northern District Judges Offer Practice Tips

Posted in Legal Seminars, Uncategorized

With a hat tip to the Chicago Daily Law Bulletin’s coverage of the 7th Circuit Judicial Conference, Northern District Judges Durkin, St. Eve, and Tharp offered several valuable practice tips for litigating before federal courts, that apply as well for IP litigators as for any litigator.

Judge Durkin:

  • Reduce litigation costs.  For example, there is no need to appear for brief status conferences, when you can appear by phone and cut out significant travel costs.
  • Think carefully before filing summary judgment motions.  They are a “huge expense” and counsel have no reason not to file them. 
  • Consider consenting to trial before a magistrate judge.  Magistrate judges can offer faster times to trial because they do not have to focus on the constitutional right to a speed trial in criminal matters.  He explains “[y]ou get great judges.  Same law.  Same juries.”

Judge St. Eve:

  • It is important to cooperate with opposing counsel.  “Be nice.  It’s not that hard.”

Judge Tharp

  • Look at the judge’s website.  Ignorance of the judge’s procedures and requirements does not start counsel off well with the judge.
  • Instead of starting a brief with a recitation of each pleading and ruling, offer a “pithy, short, concise” statement of the issue to be decided.

Rule 11 Sanctions for Failing to Purchase the Accused Product

Posted in Trial

Smart Options, LLC c. Jump Rope, Inc., No. 12 C 2498, Slip Op. (N.D. Ill. Feb. 11, 2013) (St. Eve, J.).

Judge St. Eve granted defendant Jump Rope’s Fed. R. Civ. P. 11 motion for sanctions in this patent case.  The Court previously granted Jump Rope summary judgment of noninfringement and plaintiff Smart Options appealed to the Federal Circuit.  As an initial matter, the Court held that while Smart Options’ notice of appeal divested the Court of jurisdiction generally, the Court retained jurisdiction over Jump Rope’s Rule 11 motion.

The Court previously held that Jump Rope did not infringe because it did not sell options to purchase items at a later date.  Instead, Jump Rope sold the immediate ability to go to the front of a line for an event or location.  Smart Options could have ascertained that inexpensively by downloading Jump Rope’s free app and purchasing a jump.  Instead, Smart Options provided generalized descriptions of it investigations, including reviewing Jump Rope’s website Terms of Use.  And Smart Options’ patent claims require paying an “option fee” to acquire an “option” to purchase something.  Furthermore, faced with Jump Rope’s explanation that it did not infringe at the outset of the case via Jump Rope’s Rule 11 motion, Smart Options continued to prosecute its case and still did not buy a “jump.”

Smart Options’ reliance upon Judge Lefkow’s constructions in a similar case did not protect Smart Options.  Lefkow did not construe “option.”  And the construction of “option” Smart Options allegedly used as part of its Rule 11 investigations was inexplicably different than the construction Smart Options advanced before the PTO and before Judge Lefkow.

The Court, therefore, granted Jump Rope’s Rule 11 motion and awarded Jump Rope its reasonable attorney’s fees and costs for defending the case and for the Rule 11 motion giving Jump Rope leave to file a petition setting out and supporting its fees and costs.


Elton John’s “Nikita” Does Not Infringe Copyright in Song “Natasha”

Posted in Pleading Requirements

Hobbs v. John a/k/a Sir Elton Hercules John, No. 12 C 3117, Slip Op. (N.D. Ill. Oct. 29, 2012) (St. Eve, J.).

Judge St. Eve dismissed plaintiff’s copyright and related state law claims against Elton John, Bernard Taupin and Big Pig Music (collectively “defendants”). Plaintiff argued that his copyrighted song “Natasha” inspired by his romantic involvement with a Ukranian waitress during the Cold War in the 1980s was infringed by defendants’ song “Nikita.” Copyrighted a few years later, “Nikita” allegedly describes a love affair between a Western man and an East German woman during the Cold War. Defendants argued that the songs were not substantially similar under any set of facts and, therefore, the case should be dismissed. The Court considered the lyrics of the songs pursuant to Fed. R. Civ. P. 10(c) because they were referenced in the complaint and because plaintiff did not object to the Court’s consideration of the lyrics.

The Court held that the lyrics were objectively not substantially similar for at least the following reasons:

• An impossible Cold War-era love affair, a postal theme, and references to a woman’s pale eyes were not protectable because they were “rudimentary, commonplace, and standard under the scenes a faire doctrine.”

• The Court listed several songs that included Cold War-era love affairs from the early 1980s – Devo, “Cold War,” http://www.lyricsfreak.com/d/devo/cold+war_20039646.html (“I heard it said that all is fair, In love and war so what’s life for, The boy and girl, Two separate worlds, The endless tug of war, Uh!”); David Bowie & Brian Eno, “Heroes,” http://www.lyricsfreak.com/d/david+bowie/heroes+single+version_20962708.html (“I, I can remember (I remember), Standing by the wall (By the wall), And the guns, shot above our heads (Over our heads), And we kissed, as though nothing could fall (Nothing could fall”)).

• Additionally, the postal and pale eyes themes were expressed differently in each song.

• The use of the word “never” and the phrases “to hold you”, “you’ll never know”, “you will never know” and “I need you” were not protectable because they were not unique.

• Titles are not protectable. So, the fact that both songs had “one-word, phonetically-similar title[s] consisting of a three-syllable Russian name, both beginning with the letter ‘N’ and ending with the letter ‘A’” was not relevant to the Court’s analysis. Furthermore, both names – Natasha and Nikita – were common names and a “quick search” of the Copyright Office’s registration database showed other songs titled “Natasha” and “Nikita”.

• The Court also noted that repetition of the name of a love interest in a song was common, citing Lola and, a personal favorite of mine, Roxanne.

Once the Court filtered the non-protectable elements of each song, it found no similarities between the songs. And plaintiff’s state law claims were preempted by the Copyright Act.


Akamai Reverses (Another) Summary Judgment Decision

Posted in Summary Judgment

CIVIX-DDI, LLC v. Hotels.com, No. 05 C 6869, Slip Op. (N.D. Ill. Nov. 1, 2012) (St. Eve, J.).

Judge St. Eve granted plaintiff CIVIX-DDI’s Fed. R. Civ. P. 54(b) motion to reconsider the Court’s finding of summary judgment of non-infringement.  The Court’s earlier finding was based upon the undisputed facts that defendant Hotels.com’s databases did not store advertising information or video.  However, based upon the Akamai decision, which the Federal Circuit decided after the Court’s earlier order, a question of fact remained as to whether a third party stored the information such that Hotel.com could have indirectly infringed.

Court Construes Pharmaceutical Terms

Posted in Claim Construction

The Medicines Co. v. Mylan Inc., No. 11 C 1285, Slip Op. (N.D. Ill. Aug. 6, 2012) (St. Eve, J.).

 Judge St. Eve construed the claims in this patent case related to bivalirudin.  Of particular note:

  • “Pharmaceutical Batches” was construed as “may include a single batch, wherein the single batch is representative of all commercial batches (see generally, Manual of Policies and Procedures, Center for Drug Evaluation and Research, MAPP 5225.1, Guidance on the Packaging of test Batches at 1) made by a compounding process, and wherein the levels of, for example, Asp9 bivalirudin, total impurities, and largest unknown impurity, and the reconstitution time represent levels for all potential batches made by said process.  ‘Batches’ may also include all batches prepared by a same compounding process.”
  •  “Efficiently Mixing” was construed as “a pH-adjusting solution and the first solution are mixed not using inefficient mixing conditions such as described in Example 4.”

As usual, the Court very helpfully provided a glossary of constructions at the end of the opinion.  Hopefully, this is a practice every judge will adopt.


Attorneys Fees Reduced Based Upon Duplicative Work

Posted in Damages, Local Rules

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 27, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Sloan’s fee petition based upon the Court’s finding that defendant Zurn had “continually refused to produce relevant documents despite prior court intervention and a clear obligation to do so . . . .”  Here are the highlights:

  • Sloan’s counsel’s rates were reasonable, based in part upon the fact that Sloan paid the rates without expectation of indemnification or contribution by any third party.  The rates were between $550 and $735 for partners, $455 to $530 for senior counsel and $310 to $370 for associates.
  • Sloan’s 121 hours spent on a motion for sanctions, although it was more complex than the average motion, was not reasonable.  The Court awarded all of the fees for the two most junior attorneys and 20% of the senior attorneys’ fees, citing duplicative and excessive work being done, for a total of approximately $39,000.
  • The Court applied the same 80% reduction for senior attorney time spent on Sloan’s renewed motion for sanctions, resulting in a fee award of approximately $51,000.
  • The Court struck the most senior attorney’s time for Sloan’s reply brief in support of the renewed motion for sanction resulting in an award of approximately $26,500.
  • The Court cut the most senior attorney’s time by 50% for Sloan’s preparation of its response to Zurn’s supplemental submission.  The Court reasoned that many of the tasks could have been performed by a more junior attorney.

The Court’s total award was approximately $140,000.


Copyright Act Preempts Misappropriation Claim

Posted in Local Rules

Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Sep. 4, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Morningware’s motion for summary judgment as to defendant Hearthware’s Deceptive Trade Practices Act, Lanham Act and related state law counterclaims. 

As an initial matter, the parties’ Local Rule 56.1 statements of fact were deficient in numerous ways: 

  • Many of both parties’ statements were not properly supported with admissible evidence or contained legal argument instead of factual statements.  Any such “facts” were not deemed true.
  • The parties appeared to copy and past portions of their briefs into their Local Rule 56.1 statements.  That practice was not helpful to the Court.

These deficiencies resulted in a “very brief” recitation of uncontested facts.

Lanham Act False Representation & False Advertising

There were questions of fact as to each of Morningware’s alleged false representations of fact, in particular whether certain statements were false or misleading.  As such, summary judgment was not proper.

Deceptive Trade Practices Act

Hearthware’s Deceptive Trade Practices Act claim was based upon the same conduct as in its Lanham Act claim.  As such, summary judgment was denied for the same reason.

Common Law Misappropriation

Hearthware’s common law misappropriation claim was based upon allegations that Morningware’s infomercial was designed to mimic Hearthware’s infomercial.  This claim was preempted by the Copyright Act.  The infomercial was copyrightable and the misappropriation claim amounted to a claim of copying, which is actionable pursuant to the Copyright Act.  The Court, therefore, granted Morningware summary judgment on this claim.


Local Rule 56.1 Failures Result in Disputed Facts

Posted in Local Rules

Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Aug. 27, 2012) (St. Eve, J.).

Judge St. Eve denied plaintiff Morningware’s and defendant Hearthware’s cross-motion for summary judgment regarding Morningware’s Lanham Act, Deceptive Trade Practices Act and related state law claims in this Lanham Act and patent infringement case.  As an initial matter, the parties’ Local Rule 56.1 statements of fact were deficient in numerous ways:

  • Many of both parties’ statements were not properly supported with admissible evidence.  Any such “facts” were not deemed true, unless the opposing party admitted them.
  • Hearthware’s responses to Morningware’s statements of fact were not properly supported by evidence – a lack of knowledge, unlike in an answer to a complaint, is not sufficient.  Any of Morningware’s facts not properly contested were deemed admitted.
  • Both parties also failed to cite to the statements of fact in their summary judgment briefing.

The Court excluded the declaration of Hearthware’s expert witness because the witness was not properly disclosed by the expert deadline or otherwise during the years of discovery between the parties.  The fact that the expert was originally retained as a consultant does not remove the requirement that the consultant be properly disclosed if the consultant will be turned into a testifying expert.

The Court dismissed without prejudice a motion to strike Hearthware’s allegedly improper expert report regarding damages because it was irrelevant to the motions at issue. 

Lanham Act False Representation of Origin

There was no dispute that Morningware’s MORNINGWARE and HALO marks were protectable.  Morningware further offered evidence of the necessary likelihood of consumer confusions, but not enough to meet Morningware’s heavy burden to show evidence “so one-sided that there can be no doubt about how the questions should be answered.” 

Lanham Act Product Disparagement

The parties agreed that Hearthware’s advertisement stated “The Real NuWave® Oven Pro Why Buy an Imitation?  90-Day Gty”, but whether that was a false statement or misleading was a question of fact.  Morningware offered no evidence to prove Hearthware’s statement literally false.  Morningware argued that the statement was impliedly false.  Morningware relies upon a consumer survey for its proofs.  But Hearthware disputed the survey, creating a question of fact.  Furthermore, there was a question of fact as to whether the alleged false statement impacted consumers’ purchasing decisions. 

State Law Claims 

Because the parties agreed that the state law claims rose and fell with the Lanham Act claims, summary judgment was denied as to those claims as well.

Theft of Lyrics Not Relevant to Copyright Infringement Case

Posted in Pleading Requirements

Hobbs v. John, No. 12 C 3117, Slip Op. (N.D. Ill. Jun. 19, 2012) (St. Eve, J.).

Judge St. Eve denied a Fed. R. Civ. P. 24 motion to intervene by Romano in this copyright case.  Plaintiff alleges that he wrote the lyrics to “Natasha” and that defendant Big Pig took the lyrics and substantially reproduced them in Elton John’s song “Nikita.”  Romano sought to intervene alleging that Hobbs’ lyrics were in his diary which was allegedly stolen by Elton John.  Romano did not have a right to intervene pursuant to Fed. R. Civ. P. 24(a)(2) because he did not show a direct significant and legally protectable interest in the litigation.  Romano did not claim that he held a copyright in Natasha, just that his diary containing the lyrics was stolen.

And Romano’s motion did not meet Fed. R. Civ. P. 24(b) standards for permissive joinder either.  The alleged theft of the diary was not related to the alleged copyright infringement.

Late Invalidity Contention Allowed With Sanctions

Posted in Discovery

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Apr. 12, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Sloan’s motion to strike defendant Zurn’s “late asserted” invalidity defense, to compel discovery and for sanctions in this patent case involving dual mode flush valves.

Worn Zurn Flush Valve

Sloan seeks production of information regarding certain worn Zurn flush valves.  While the worn valves may have been created for litigation, the work product doctrine would not cover the valves themselves or factual data regarding their fabrication and testing.  Furthermore, Zurn lost any work product protection to the factual information by claiming that the worn Zurn flush valves invalidate the patent in suit.  The Court, therefore, ordered Zurn to produce the worn valves, all non-privileged, factual information about them and a detailed privilege log.  The Court also ordered a Rule 30(b)(6) deposition on the worn valve and that Zurn pay the costs and reasonable attorney’s fees of the deposition, the motion to compel and one Sloan attorney to attend the deposition because of Zurn’s continued refusal to produce the documents and answer deposition questions.

Community Center Worn Valve

A “plethora of rules” including LPR 2.1(b), 2.3 and 3.2 and Fed. R. Civ. P. 26(e), required Zurn to produce information regarding its Community Center Worn Valve invalidity defense before it did – after serving Zurn’s Final Invalidity Contentions.  And the Community Center and Zurn worn valves were similar, but different.  As such, it was a “close call” whether to allow Zurn to use the Community Center defense.  The Court allowed Zurn to use its defense, but sanctioned Zurn requiring Zurn to pay Sloan’s reasonable attorney’s fees and costs for any necessary Community Center Worn Valve-related discovery.

Defendant Granted Leave to Replead Inequitable Conduct

Posted in Pleading Requirements

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Apr. 1, 2012) (St. Eve, J.).

Judge St. Eve granted in part defendants’ (collectively “Zurn”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Sloan Valve’s (“Sloan”) inequitable conduct counterclaims and denied Zurn its request for attorneys’ fees and costs in this patent dispute involving valves.  But to the extent the Court dismissed the counterclaims, it was without prejudice to replead using facts learned during discovery.  Sloan was not prejudiced by the amendment because Sloan was on notice of the facts gleaned during the two year discovery period.

The Court acknowledged the inequitable conduct pleading requirements set forth in Exergen, and noted that they were not changed by the heightened proofs required by Therasense.  The Court also held that at the pleading stage, Zurn need not show that its alleged “intent to deceive is the single most likely explanation for non-disclosure.”   Zurn need only allege facts from which intent may be reasonably inferred.

With respect to Counterclaim III, Sloan waived its argument regarding identity and intent, by failing to challenge them in its first motion to dismiss Zurn’s original Counterclaim III, which was substantively the same as this amended counterclaim.  But even if Sloan had not waived its arguments, Zurn could have met Rule 9(b) pleading standards by amending to add information learned during discovery.

And while the Court’s original pre-Therasense ruling on Zurn’s materiality pleading was based upon the “reasonable examiner” standard, Zurn’s pleadings also met Therasense’s “but for” materiality test.  Zurn pled that but for Sloan’s counsel’s statements during prosecution regarding the size of a plunge and a bushing passage taught by the prior art, at least Claim 1 would not have been allowed.

While Counterclaim IV was not adequately pled, Zurn was given leave to replead.  Zurn’s counterclaim did not identify who withheld the prior art, but Zurn had since identified the individuals during discovery.  Zurn’s materiality pleading was also deficient, but Zurn was granted leave to replead with information learned during discovery.  And Zurn was similarly granted leave to amend its intent allegations.

Juror Social Media Use During Trial is Controllable

Posted in Trial

The Northern District of Illinois’ Judge St. Eve has written an interesting article arguing that ill effects of juror’s social media use can be controlled and limited with use of jury instructions.  What makes Judge St. Eve’s article especially interesting to practitioners is that it is backed by proof.  Judge St. Eve enlisted Judge Kennelly in her study.  Both used a social media instruction and then interviewed jurors after trial to determine how the instruction impacted what the jurors did.

It will be no surprise to anyone who has tried cases or spent time on a jury what Judge St. Eve found – jurors given the instruction largely complied with it.  Jurors largely try to do what is asked of them and they usually do it well.

The only issue I see with Judge St. Eve’s findings is that reproducing them depends upon crafting a good, understandable jury instruction.  As with any jury instruction, it should be as simple and understandable as possible, while remaining sufficiently detailed.  One critical issue is to sufficiently identify the social media outlets without unintentionally excluding any outlets.  But the pattern  instructions St. Eve uses balances all of that well:

[Before Trial:] . . . . Until you retire to deliberate, you may not discuss this case with anyone, even your fellow jurors. After you retire to deliberate, you may begin discussing the case with your fellow jurors, but you cannot discuss the case with anyone else until you have returned a verdict and the case is at an end. I hope that for all of you this case is interesting and noteworthy. I know that many of you use cell phones, Blackberries, the internet and other tools of technology. You also must not talk to anyone about this case or use these tools to communicate electronically with anyone about the case. This includes your family and friends. You may not communicate with anyone about the case on your cell phone, through e-mail, Blackberry, iPhone, text messaging, or on Twitter, through any blog or website, through any internet chat room, or by way of any other social networking websites, including Facebook, My Space, Linkedin, and YouTube.

[At the Close of the Case:] During your deliberations, you must not communicate with or provide any information to anyone by any means about this case. You may not use any electronic device or media, such as a telephone, cell phone, smart phone, iPhone,  Blackberry or computer; the internet, any internet service, or any text or instant messaging service; or any internet chat room, blog, or website such as Facebook, My Space, Linkedin, YouTube or Twitter, to communicate to anyone any information about this case or to conduct any research about this case until I accept your verdict.

Confidentiality Provision Does Not Prevent Production

Posted in Discovery

Morningware, Inc. v. Hearthware Home Products, Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Oct. 6, 2011) (St. Eve, J.).

Judge St. Eve granted plaintiff/counter-defendant Morningware’s motion to compel production from third party SKE in this patent and Lanham Act suit regarding convection ovens. SKE had an agreement with defendant/counter-plaintiff Hearthware that restricted SKE’s ability to disclose Hearthware’s confidential documents. The Court ordered SKE to produce the documents directly to Morningware, denying Hearthware’s request to review the documents for confidentiality first. The Court noted that Morningware’s agreement to initially treat all of SKE’s documents as Highly Confidential resolved confidentiality concerns.