Month: March 2013

Defendant’s Failure To Engage In Discovery Causes Defendant To Lose Motion To Dismiss

I PLAY. INC. v. D. CATTON ENTERPRISE, LLC, Dist. Court, WD North Carolina 2013 – Google Scholar.

This is a case where the sanction for the Rule 37 violations was appropriate and proportional. This is an intellectual property dispute. Plaintiff sued the Defendant and sought a declaration that it was not infringing Defendant’s patent or trademark rights.

This move – suing for a declaration that there was no infringement – is often done to win the race to the courthouse. The dispute starts when the defendant sends the plaintiff a letter demanding that the plaintiff cease infringing the patent or trademark. The plaintiff reasons that he will get sued anyway so he might as well start the litigation in a forum that the defendant (the party alleging infringement) does not want. I have worked with two veteran intellectual property lawyers who used this strategy in cases they litigated, with some success.

Here the Defendant moved to dismiss the case for lack of jurisdiction or to move the case to another venue. The plaintiff sought discovery from the defendant concerning the personal jurisdiction issues. The defendant refused to provide the information and was sanctioned by the District Court. The Court ruled that, by failing to provide the information, the Defendant had essentially waived its objections to jurisdiction and venue.

This is a fair and equitable solution in a case of this type. It sends the defendant the message that it is required to comply with discovery orders or it will face sanctions.

Edward X. Clinton, Jr.

District Court Rejects Claim Against Expert Witness

Kim v. HOSENEY, Dist. Court, ND Illinois 2013 – Google Scholar.

This opinion shown above is an opinion of the United States District Court for the Northern District of Illinois. The plaintiff brought patent infringement litigation against three companies. Two of the companies retained an expert witness, Russell Hoseney, who testified that the patents were not valid. Eventually, the cases were resolved in favor of the defendants and the patents were found to be invalid.

The plaintiff then filed suit against Hoseney, alleging that Hoseney lied under oath and fraudulently misrepresented facts to the Court.

The District Court rejected these claims and granted Hoseney’s motion to dismiss on the ground that anything said or written in a lawsuit is absolutely privileged. Defend v. Lascelles, 500 N.E.2d 712, 714 (Ill.App.Ct. 1986).

If the plaintiff had a problem with Hoseney’s testimony, he should have cross-examined Hoseney or taken action in the cases in which Hoseney testified.

Edward X. Clinton, Jr.

Court Criticizes Attorneys In Fee Dispute


The Sixth Circuit has written an enormous opinion discussing legal fees incurred in a long-pending civil rights case. The lawyers are entitled to seek fees for the vindication of constitutional rights. However, as the court notes, they seem to have gone a bit overboard:

“The original petition for fees in this case, for example, yielded requests for dry cleaning bills, mini blinds, and health insurance. Though these requests were later dropped after being challenged, they exemplify the overcompensation some attorneys are apt to seek in litigation of this type—decades long class actions involving thousands
of hours of work, numerous iterations of consent decrees, and years in-between spent enforcing and defending prior successes.

There are two sides to these attorney-fee debates, and we must honor both of them. On the one hand, § 1988 plays a critical role in “ensur[ing] that federal rights are adequately enforced,” and attorneys have every right to be compensated for any fees and expenses they reasonably incur. Perdue v. Kenny A. ex rel. Winn, 130 S. Ct. 1662, 1671 (2010). On the other hand, these cases can all too easily become a way of life for the attorneys involved, and consequently over time it can become increasingly unclear, for both the attorneys and the courts, precisely what work falls within the ambit of § 1988. This case presents us with an opportunity to clarify the standards for when time spent. defending or enforcing a prior consent decree is compensable under § 1988.”

Comment: Lawyers who seek recovery for dry cleaning bills, mini blinds and health insurance have lost touch with the basic ethical rules of the legal profession and should be referred to the State bar for discipline. If lawyers already aren’t favored by many people, this sure won’t help our image.

Edward X. Clinton, Jr.