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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Tharp

Patent Application Publication Does Not Trigger Statute of Limitation at Pleadings Stage

Posted in Pleading Requirements

Ferris Mfg. Corp., v. Curaline, Inc., No 14 C 4663, Slip Op. (N.D. Ill. Jan. 21, 2015) (Tharp, J.).

Judge Tharp denied defendant’s (collectively “Curaline”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Ferris’ Lanham Act and related state law claims regarding DevraSorb wound care products.  The Court held as follows:

  • Ferris pled sufficient facts to avoid dismissal based upon the five and ten year statute of limitations. While Ferris pled that its first learned of the claims eleven years before filing suit. But Ferris also pled that Curaline misled Ferris during the relevant time and that Ferris reasonably relied upon various statements by Curaline.
  • While it did not preclude summary judgment at some point, the Court declined to dismiss the complaint at the pleading stage based upon constructive notice triggered by the publication of Curaline’s patent application.
  • Ferris’ confidential information which Curaline allegedly publicly disclosed and used in Curaline’s patent application need not rise to the level of trade secret in order to form a breach of fiduciary duty claim.
  • Ferris sufficiently pled its Lanham Act claim pursuant to Fed. R. Civ. P 9(b).  Ferris’ complaint cited Curaline’s website and marketing materials.


Court Maintains Secrecy of Copyright Doe Defendants Because of “Substantial Possibilit[y]” of Misnaming

Posted in Discovery

Osiris Entertainment, LLC v. Does 1-38, No. 13 C 4901, Slip Op. (N.D. Ill. Aug. 20, 2013) (Tharp, J.).

Judge Tharp granted plaintiff Osiris Entertainment’s Fed. R. Civ. P 26(d) motion to take expedited discovery prior to a Rule 26 conference in order to discover the potential identities of the thirty eight Doe defendants otherwise only identified by their respective IP addresses in this copyright case involving the alleged infringement of the movie Awaken via BitTorrent. 

As an initial matter, the Court sua sponte considered whether the thirty-eight Does were properly joined.  Recognizing a district split, that mirrors a national split among district courts, the Court held that members of the same swarm may be joined in a single suit even if their direct participation in the swarm did not overlap in time, explaining:

As noted above, BitTorrent requires a cooperative endeavor among those who use the protocol.  Every member of a swarm joins that cooperative endeavor knowing that, in addition to downloading the file, they will also facilitate the distribution of that identical file to all other members of the swarm, without regard to whether those other members were in the swarm contemporaneously or whether they joined it later.  In that light, permitting joinder among non-contemporaneous swarm participants does not seem novel or extreme; the law governing joint ventures and conspiracies, for example, clearly permits plaintiffs to proceed against groups of defendants who engaged in a cooperative endeavor to facilitate an unlawful object whether or not all of the members of the group took part in all of the actions of the group and without regard to when the members joined the group.

Citations omitted.  The Court did, however, note that there would be some requirement of temporal proximity because at some amount of separation the analogy would break down.  But in this instance, the alleged Does were involved over a “relatively brief” period.

Having determined that joinder was proper at least at the initial stages of the case, the Court granted Osiris Entertainment’s motion to issue subpoenas aimed at identifying the Does based upon their alleged IP addresses.  The Court, however, prohibited Osiris Entertainment from publishing the Doe’s alleged identities without leave of Court, noting that there was a “substantial possibility[y]” that the individuals associated with a particular IP address were not the individuals that downloaded the allegedly copyrighted material. 

Failure to Properly Plead Valid Copyright Registration Warrants Dismissal

Posted in Pleading Requirements

Personal Keepsakes, Inc. v. Personalizationmall.com, Inc., No. 11 C 05177, Slip Op. (N.D. Ill. Sept. 24, 2013) (Tharp, J.).

Judge Tharp granted Defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss Counts I and II for failure to state a claim under which relief can be granted.  Count I alleged copyright infringement and Count II alleged violations of the Digital Millennium Copyright Act (“DCMA”). 

The Court held Plaintiff’s complaint failed to state a claim for copyright infringement because it did not plausibly allege that the allegedly copyrighted phrase, “May the strength of the Holy Spirit be with you, guiding you every day of your life,” was protected by a valid copyright.  The Court held the phrase was too common and unoriginal to receive copyright protection, was not protected by Plaintiff’s alleged copyright because the copyright registration was for an entire collection of poems that spanned six pages not for the single at-issue sentence, and there was no substantial similarity between the elements of Plaintiff’s and Defendant’s works.

The Court held Plaintiff’s complaint failed to state a claim under the DCMA because Copyright Management Information was not displayed on or with the allegedly copied works.

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.

The State of the Northern District Remains “Good”

Posted in Legal News

Chief Judge Holderman offered his final State of the Court speech last month.  Judge Castillo takes over as Chief Judge July 1, 2013.  Here are the highlights from the address:

  • “Filings are up and funding is down.”  While the state of the court is good, prposped further budget cuts and reduced funding may force reduced services in the future.
  • For the fifth year in a row, overall civil filings were up .
  • Jury trials dropped, going from 177 in 2011 to 168 in 2012.
  • The combined jury trials for 2011 and 2012, however, are the largest number of trials in any two year period as far back as court records go.
  • Patent filings increased from 239 in 2011 to 247 in 2012..  This continued a trend of increased patent filings in every year since the Northern District instiuted its Local Patent Rules in 2009.
  • The Northern District remains in the top 10% of courts in terms of median time to disposition — 6.5 months for civil cases.
  • The Northern District avoided the expected furloughs by not filling staff vacancies.  The Clerk’s office is down to two-thirds of its allocated staff.  Probation Department personnel may face three day furloughs because of fudning issues in that unit.
  • Three new Article III judge joined the Court — Judges Durkin, Lee and Tharp.
  • The Eastern Division added two magistrates — Magistrate Judges Rowland and Martin.
  • The Western Division added Magistrate Judge Johnston.
  • The Northern District has four judicial vacancies.

Doe Defendant Allowed to Use Pseudonym in Porn Download Case to Avoid Abusive Litigation Tactics

Posted in Discovery

Sunlust Pictures, LLC v. Does 1-75, No. 12 C 1546, Slip Op. (N.D. Ill. Aug. 27, 2012) (Tharp, J.).

Judge Tharp denied Doe defendant’s motion to quash a subpoena seeking his identifying information from his cable provider in this BitTorrent copyright case, but allowed the Doe to proceed in the suit using a pseudonym.  The Court also denied Doe’s motion to sever the Doe defendants.  As an initial matter, while a party to a suit usually has no standing to move to quash a third party subpoena, there is an exception in cases such as this one where the subpoena implicates that party’s privacy.  But Doe’s motion to quash was based upon an argument that the 75 Does were not properly joined.  That, however, is not a valid ground for quashing a subpoena.

Plaintiff Sunlust’s joinder was not inappropriate in this case, despite district courts’ increasing concern regarding improper joinder of multiple Does in pornographic downloading cases around the country.  Sunlust alleged that each Doe participated simultaneously in a single BitTorrent “swarm” and that the Does were sharing portions of the file between themselves as a part of that process.  A swarm is the collective act of downloading a particular file.  And joinder was further supported by Sunlust’s civil conspiracy claim alleging that the Does, as part of a single swarm, were engaged in a conspiracy to unlawfully distribute the copyrighted movie.  Furthermore, the Does faced common legal and factual questions regarding Sunlust’s copyright claims.

In order to avoid abusive litigation tactics, the Court ordered that Sunlust only contact Doe through counsel and that Doe could proceed using a pseudonym, at least during discovery. 


Oral Agreement is Enforceable as Part of a Final Judgment

Posted in Settlement

TRT Transportion, Inc., d/b/a Chicago Trolley Co. v. Chicago Trolley Rentals, Inc., No. 11 C 3693, Slip Op. (N.D. Ill. Jul. 26, 2012) (Tharp, J.).


Judge Tharp adopted Judge Cox’s report and recommendation enforcing the parties’ oral settlement agreement placed on the record at the conclusion of a settlement conference.  The record was clear that the parties agreed the oral terms were enforceable.  And the material terms defendant said were not included, had never even been discussed.  The Court, therefore, entered the terms of the settlement and a final judgment as part of its order.