The United States District Court for the Northern District of Illinois recently adopted Local Patent Rules governing pre-trial procedure in patent cases. The Local Patent Rules are mandatory for cases filed in the Northern District of Illinois on or after Oct. 1, 2009, and can be applied in earlier-filed cases at the Court’s discretion. Although the Local Patent Rules are mandatory, they authorize individual judges to modify the obligations and deadlines set forth therein based on the circumstances of any particular case.
The Court’s stated objective in enacting the Local Patent Rules is to “provide a standard structure for patent cases that will permit greater predictability and planning for the Court and the litigants.” Among other things, the Local Patent Rules require a party asserting patent infringement to make early disclosure of all documents concerning any disclosure, sale, or offer for sale of the claimed invention prior to the filing date of the patent(s)-in-suit. In order to prevent delay of these and other disclosures based on confidentiality concerns, the Local Patent Rules include a default protective order that is deemed to be in effect as of the date that initial disclosures under F.R.C.P. 26(a)(1) are due to be exchanged. They also set forth a pre-defined schedule for serving infringement, unenforceability, and invalidity contentions, as well as for briefing claim construction issues. The Local Patent Rules limit the number of claim terms the parties may propose for construction by the Court and require the parties to certify whether they believe the construction of those terms to be outcome determinative. Overall, the Local Patent Rules provide that a case should be ready for trial about 23 months after filing.
The Local Patent Rules embrace many of the concepts of case scheduling and development found in local patent rules previously adopted by other courts, including the U.S. District Courts for the Northern District of California and the Eastern District of Texas. The Local Patent Rules, however, differ from the California and Texas rules in certain significant respects. For example, the Local Patent Rules provide for initial and final infringement, non-infringement, and invalidity contentions whereas the California and Texas rules provide for only a single round of contentions.
Also, the Local Patent Rules provide that the parties may propose no more than ten claim terms for construction by the Court. The California rules do not set an outright limit on the number of claim terms that may be proposed for construction by the Court, but they do require the parties to identify the ten most significant claim construction disputes. The Texas rules neither limit the number of terms proposed for construction nor require the parties to identify the most significant claim construction disputes. Further, the Local Patent Rules provide that the accused infringer is to file opening and closing briefs on claim construction, whereas the California and Texas rules provide for simultaneous opening and response briefs.
Whether or how the adoption of the Local Patent Rules may affect litigants’ decisions to file patent infringement cases in the Northern District of Illinois remains to be seen. It would be fair to expect, however, that both patent owners and accused infringers will view the Court’s adoption of the Patent Local Rules favorably because the Rules provide a reasonable, standardized schedule and framework for preparing patent cases for trial. As such, a patent case litigated according to the Local Patent Rules is likely to move along expeditiously, and is less likely to be adversely affected where one party might attempt to delay an ultimate resolution.
Following are some of the highlights of the Local Patent Rules. The complete set of Local Patent Rules, including the default protective order set forth in Appendix B thereto, is available online at the Court’s website at www.ilnd.uscourts.gov.
Selected Highlights of the Local Patent Rules of the U.S. District Court for the Northern District of Illinois
LPR 1.3 Fact Discovery
Under the Local Patent Rules, fact discovery opens on the date Initial Disclosures are due (see LPR 2.1) and closes twenty-eight (28) days after the date set for exchange of claim terms proposed for construction by the Court. Fact discovery may reopen upon entry of a claim construction order and close forty-two (42) days later.
LPR 1.4 Protective Order
The Local Patent Rules include (in Appendix B) a default protective order that takes effect as of the date set for each party’s Initial Disclosures. The parties may move the Court to modify the default protective order for good cause, but such motion would not affect the timing of or requirement for any disclosure required by the Local Patent Rules.
LPR 1.6 Admissibility of Disclosures
Initial infringement, non-infringement, invalidity, and unenforceability contentions are inadmissible as evidence on the merits.
LPR 2.1 Initial Disclosures
The parties must exchange Initial Disclosures under F.R.C.P 26(a)(1) within fourteen (14) days after the defendant files an answer or other responsive pleading, or, in cases involving a counterclaim, within fourteen (14) days after the plaintiff files its answer or other response to the counterclaim.
Any party asserting patent infringement must, in its Initial Disclosures, produce or make available for inspection and copying all documents concerning any disclosure, sale or transfer, or offer for sale or transfer of the claimed invention prior to the filing date of the patent(s)-in-suit.
LPR 2.2 Initial Infringement Contentions
Each party claiming patent infringement shall serve on all other parties its Initial Infringement Contentions within fourteen (14) days after Initial Disclosures have been exchanged. The Initial Infringement Contentions must identify each patent claim the party asserts to be infringed, identify each device or process accused of infringement, and include a chart identifying exactly where in each accused device or process each element of each asserted claim may be found.
LPR 2.3 Initial Non-Infringement, Unenforceability and Invalidity Contentions
Each party opposing a claim of patent infringement shall serve on all other parties its initial Non-Infringement, Unenforceability and Invalidity Contentions within fourteen (14) days of service of the Initial Infringement Contentions. The Non-Infringement Contentions must identify whether each element of the asserted claim is present in the accused device or process and, if not, the basis for denying the presence of the element. The Invalidity Contentions must identify whether the claim purported to be invalid is invalid as anticipated or obvious, identify each item of prior art relied on, and include a chart identifying exactly where each item of prior art relied on discloses each element of the claims purported to be invalid. The Unenforceability Contentions must identify the acts allegedly supporting, and all bases for, the assertion of unenforceability.
LPR 2.4 Document Production Accompanying Initial Invalidity Contentions
Each party opposing a charge of patent infringement must supplement its document production at the time it serves its Initial Non-Infringement, Unenforceability and Invalidity Contentions. The supplemental production must include any additional documents showing operation of any aspect or element of an accused device or process and a copy of any prior art relied on (unless previously disclosed) that does not appear in the patent’s file history.
LPR 2.5 Response to Initial Invalidity Contentions
Within fourteen (14) days after service of the Initial Non-Infringement, Unenforceability and Invalidity Contentions, the party asserting infringement must serve its Initial Response to the Initial Invalidity Contentions, admitting or denying the identity in the prior art of each element of each asserted claim purported to be invalid and the basis for any such denial.
LPR 3.1 Final Infringement, Unenforceability and Invalidity Contentions
Parties asserting patent infringement must serve Final Infringement Contentions within twenty-one (21) weeks after the due date for serving the Initial Infringement Contentions.
Parties asserting unenforceability or invalidity of a patent-in-suit must serve Final Unenforceability and Invalidity Contentions within twenty-one (21) weeks after the due date for serving the Initial Infringement Contentions.
LPR 3.2 Final Non-Infringement, Enforceability and Validity Contentions
Parties asserting non-infringement must serve Final Non-Infringement Contentions within twenty-eight (28) days of service of the Final Infringement Contentions.
Parties asserting infringement must serve Final Contentions in Response to any Final Unenforceability and Invalidity Contentions within twenty-eight (28) days of service of the Final Infringement Contentions.
LPR 3.3 Document Production Accompanying Final Invalidity Contentions
Parties asserting invalidity must produce with their Final Invalidity Contentions a copy or sample of all prior art relied on if not already produced and not in the file history. If the prior art is not written in the English language, such parties must furnish English translations of the portions relied on, which translations must be sufficient to place in context the matter relied on.
LPR 3.4 Amendment of Final Contentions
Final contentions may be amended only by order of the Court upon a showing of good cause and absence of undue prejudice to opposing parties. Leave of court must be sought promptly upon discovery of the basis for such amendment. A claim construction adopted by the Court which is contrary to that proffered by a party is deemed good cause, but the party seeking to amend its contentions must nevertheless show absence of undue prejudice.
LPR 3.5 Final Date for Seeking Stay Pending Reexamination
No party may file a stay of the proceedings pending reexamination of a patent-in-suit after the date that final contentions are due to be served.
LPR 4.1 Exchange of Claim Terms Proposed for Construction
The parties must exchange lists of claim terms proposed for construction by the Court within fourteen (14) days after service of final contentions. These lists must include the proposed construction for each claim term identified.
Within seven (7) days after this exchange, the parties must meet and confer and agree to no more than ten (10) terms for construction by the court. If the parties cannot agree to ten terms, all plaintiffs will be allowed to present a total of five terms and all defendants will be allowed to present a total of five terms. The parties must certify whether they believe the construction of each term they put to the Court for construction to be outcome determinative.
LPR 4.2 Claim Construction Briefing
Parties opposing infringement must file opening briefs of no more than twenty-five (25) pages within thirty-five (35) days after the exchange of terms for construction.
Parties asserting infringement must file responsive briefs of no more than twenty-five (25) pages within twenty-eight (28) days after filing of opening briefs.
Parties opposing infringement must file reply briefs of no more than fifteen (15) pages within fourteen (14) days after filing of responsive briefs.
The parties must file a joint claim construction chart setting forth each claim term addressed in the briefs, each party’s proposed construction for such terms, and a joint status report including the parties’ proposals for the conduct of the claim construction hearing within seven days of filing of reply briefs.
LPR 4.3 Claim Construction Hearing
The Court may schedule a claim construction hearing within twenty-eight (28) days after filing of reply briefs.
LPR 6.1 Final Day For Filing Dispositive Motions
Dispositive motions must be filed no later twenty-eight (28) days after close of expert discovery. Dispositive motions may be filed earlier, but the Court may defer consideration of motions raising issues of claim construction until after a claim construction hearing has been held.