On October 2, 2012, Chief Judge Holderman of the United States District Court for the Northern District of Illinois published the Court’s proposal to amend its local patent rules (.pdf).  Public comments to the proposed rules are due December 3, 2012 and may be emailed to ilnd_localrules_comments@ilnd.uscourts.gov. The purpose of this post is to highlight some of the most significant changes proposed by the Court.

The proposal includes the following changes:

  1. In its comments section to the LPR 1.3, the Court adds that it does not intend that discovery shall automatically resume as a matter of right after a claim construction ruling.  Instead, the parties seeking further discovery following the claim construction ruling shall submit a motion explaining why further discovery is necessitated.
  2. Final Invalidity Contentions may rely on more than twenty-five prior art references only by order of the Court upon a showing of good cause and absence of unfair prejudice to opposing parties.  See, LPR 3.1.
  3. A motion to amend final contentions must be filed, with proposed amendments, within fourteen days after entry of the claim construction ruling.  See, LPR 3.4.
  4. The Local Patent Rules will now include several rules relating to Electronically Stored Information (“ESI”).  Among others, the new ESI rules contain the following significant provisions:
  1. The mere production of ESI in a litigation as part of a mass production shall not itself constitute a waiver for any purpose.  See, LPR ESI 1.4.
  2. Prior to presentment of an ESI dispute to the Court, each party shall designate an individual as an e-discovery liason who must participate in the meet and confer to resolve the dispute.  See, LPR ESI 2.1.
  3. The following categories of ESI generally are not discoverable:
  1. deleted, slack, fragmented or unallocated data on hard drives;
  2. random access memory (RAM) or other ephemeral data;
  3. on-line access data such as temporary internet files, history, cache, cookies, etc.;
  4. data in metada fields that are frequently updated automatically, such as last-opened dates;
  5. backup data that is substantially duplicative of data that is more accessible elsewhere, and;
  6. other forms of ESI whose preservation requires extraordinary affirmative measures that are not utilized in the ordinary course of business.  See, LPR ESI 2.3(d).
  1. General ESI production requests shall not include email.  To obtain emails, parties must propound specific email production requests.  See, LPR ESI 2.6
  2. Email production requests shall identify the custodian, search terms, and time frame.  Each requesting party shall limit its email production requests to a total of five custodians per producing party.  Each requesting party shall limit its email production to a total of five search terms per custodian per party.  See, LPR ESI 2.6