The Northern District of Illinois has proposed a series of changes to the Local Patent Rules. Comments regarding the changes are due by December 3. The proposed changes are listed and discussed below. For the most part, they clarify ambiguities in the existing LPR and will be very valuable for those of us practicing pursuant to the LPR every day.
LPR 1.2 Initial Scheduling Conference
The following sentence is added to the end of the existing LPR:
Paragraphs 4(e), 7(c) and 7(d) of the form scheduling order shall be included, without alteration, in this proposed scheduling order.
Those three paragraphs (listed below) each clarify the rules, but which one party or another routinely strikes from Rule 26(f) reports claiming they are duplicative of the Federal Rules or existing case law.
4(e) Discovery is permitted with respect to claims of willful infringement and defenses of patent invalidity or unenforceability not pleaded by a party, where the evidence needed to support these claims or defenses is in whole or in part in the hands of another party.
7(c) Communications between a party’s attorney and a testifying expert relating to the issues on which he/she opines, or to the basis or grounds in support of or countering the opinion, are subject to discovery by the opposing party only to the extent provided in Rule 26(b)(4)(B) and (C).
7(d) In responding to discovery requests, each party shall construe broadly terms of art used in the patent field (e.g., “prior art”, “best mode”, “on sale”), and read them as requesting discovery relating to the issue as opposed to a particular definition of the term used. Compliance with this provision is not satisfied by the respondent including a specific definition of the term in its response, and limiting the response to that definition.
LPR 1.3 Fact Discovery
There are no proposed changes to the LPR itself, but they propose adding a comment which clarifies what has been one of the most frequent stumbling blocks of the LPR – post-claim construction fact discovery is not guaranteed. Instead, a party desiring claim construction would be required to file a motion explaining why the claim construction ruling requires additional discovery:
The Rule states that resumption of fact discovery upon entry of a claim construction ruling “may” occur. The Rule does not provide that discovery shall automatically resume as a matter of right. It is intended that parties seeking further discovery following the claim construction ruling shall submit a motion explaining why further discovery is necessitated by the claim construction ruling.
LPR 3.1 Final Infringement, Unenforceability and Invalidity Contentions
Language is added to clarify that Final Unenforceability and Invalidity Contentions are “due” (as opposed to “served”) at the same time as Infringement Contentions. Again, this clarifies a common uncertainty in the existing LPR. A reference to the requirements for Initial Unenforceability Requirements is also added to clarify that the Final Unenforceability Contentions obligations are the same as the Initial Unenforceability Contentions.
Additionally, a sentence is added that limits Final Invalidity Contentions to 25 references, absence order of the Court based upon a showing of good cause and an absence of unfair prejudice:
Final Invalidity Contentions may rely on more than twenty-five (25) prior art references only by order of the Court upon a showing of good cause and absence of unfair prejudice to opposing parties.
LPR 3.2 Final Non-infringement, Enforceability and Validity Contentions
As with LPR 3.1, language is added to clarify that Final Enforceability and Validity Contentions are “due” (as opposed to “served”) at the same time as Final Non-infringement Contentions. Again, this clarifies a common uncertainty in the existing LPR.
LPR 3.4 Amendment of Final Contentions
Language is added to clarify that amendments to Final Unenforceability Contentions or Final Contentions in Response to any Unenforceability and Invalidity Contentions, as with all other Final Contentions, may only be amended by Court order upon a showing of good cause and a lack of unfair prejudice to opposing parties. A sentence is also added requiring that motions to amend be filed, along with proposed amendments to the contentions, within 14 days of entry of a claim construction order:
A motion to amend final contentions due to a claim construction ruling shall be filed, with proposed amendment(s), within fourteen (14) days of the entry of such ruling.
LPR 5.1 Disclosure of Experts and Expert Reports
LPR 5.1(b) is revised to comport with the added comment to LPR 1.3 (fact discovery) noting that post-claim construction fact discovery is only granted upon a motion showing good cause. Initial expert witness disclosures, therefore, are now due 21 days after the later of the claim construction ruling or the close of post-construction fact discovery. Because of the tight timing and the fourteen day deadline to seek amended Final Contentions, parties who seek amended Final Contentions will almost certainly have to seek extensions of the LPR 5.1 expert deadlines as well.
Appendix A – Rule 26(f) Report
A new section 7(f) is added requiring that the parties state whether they agree to the use of the Federal Judicial Center’s patent video at trial with preliminary jury instructions:
The parties [agree/do not agree] the video “An Introduction to the Patent System” distributed by the Federal Judicial Center, should be shown to the jurors in connection with its preliminary jury instructions.
The amendments also include a new Electronically Stored Information (ESI) Order. I will discuss that in a later post because it warrants some significant analysis.