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Tag Archives: Local Patent Rules

Preliminary Injunction Does Not Apply to Redesigns as Long as They are Not Colorable Imitations

Posted in Claim Construction, Local Rules

Scholle Corp. v. Rapak LLC, No. 13 C 3976, Slip Op. (N.D. Ill. Jul. 24, 2014) (Kendall, J.).

Judge Kendall ruled on numerous motions filed after the Court granted a preliminary injunction in this patent case.  Of particular note, the Court held as follows:

  • The Court granted defendant Rapak’s motion to construe more than five claim terms, despite Rapak’s failure to comply with the Local Patent Rules by identifying which terms were case dispositive.  The Court did so despite Rapak’s deficiencies to avoid further delay in the case.
  • The Court ordered Rapak to show cause why Rapak should not be held in contempt for violating the Court’s preliminary injunction by shipping enjoined smoothie valves after the date of the preliminary injunction.  The Court held that the fact that no bond had been set or provided was not a reason that Rapak could delay compliance.  That was especially true because Rapak did not originally raise the bond, the Court did sua sponte.
  • The Court granted Rapak’s motion clarifying that the preliminary injunction only applies to the smoothie valves that were before the Court in the preliminary injunction proceedings and colorable imitations thereof.  The Court, however, declined to rule upon whether Rapak’s redesigned smoothie valves were colorable imitations of the current smoothie valve.
  • The Court granted Rapak’s motion to amend a counterclaim seeking a declaratory judgment that its redesigned smoothie valve did not infringe.
  • The Court denied Rapak’s motion to strike Scholle’s new proposed claim constructions in its response brief.  While they technically did not follow the Local Patent Rules requirements that the parties disclose and confer regarding their respective constructions, Rapak either had notice of the constructions or they were an explanation of the ordinary meaning which Scholle originally set out as the construction.

Final Invalidity Contentions May Not be Amended to Add Nautilus-Based Indefiniteness Claims

Posted in Local Rules

R-Boc Reps., Inc. v. Minemyer, No. 11 C 8433, Slip Op. (N.D. Ill. Cole, Mag. J.).

Judge Cole denied plaintiff R-Boc’s motions to amend its Final Invalidity Contentions with an allegedly new theory regarding the phrase “approximately perpendicular” based upon the Supreme Court’s Nautilus indefiniteness decision and related motion for summary judgment of invalidity based upon R-Boc’s new argument.

As an initial matter, the Court originally adopted the parties’ agreed construction of “approximately perpendicular” — “approximately 90 degrees.”  The agreed construction was initially proposed by R-Boc.  The Court noted that parties were bound by their strategy decisions in cases generally.  Furthermore, the Supreme Court’s Nautilus decision was about the phrasing of the indefiniteness test, not the meaning of words of approximation, which are common in patent claims.  R-Boc had also been stopped in two prior attempts to change its “approximately perpendicular” construction in the form of a summary judgment motion and a motion for judgment as a matter of law.

Finally, the Court also held that any prejudice to defendant could not be cured by the extensions that R-Boc offered to agree to because the case was over seven years old having been to trial and then gone to the Federal Circuit before returning to the Court.  At this point in the life of the case, any delay in getting to a final resolution would be prejudicial.

Trading Technologies: New Expert Opinions Doomed by Lack of Inclusion in LPR Final Contentions

Posted in Experts, Local Rules

The Court also struck some, but not all, of the experts’ opinions based upon trader usage. Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill. Sep. 10, 2014) (Coleman, J.).

Judge Coleman granted in part and denied in part defendants’ (collectively “CQG”) motion to strike portions of plaintiff Trading Technologies’ (“TT”) expert reports that allegedly sought to introduce theories and analysis not contained in TT’s Final Infringement Contentions (“FIC”), which were tendered in November 2013. 

For certain independent claims, TT failed to supplement its FIC with manual re-centering elements as required by the Federal Circuit’s and the Court’s claim constructions.  It was not enough that dependent claims contained an identification of the manual re-centering elements in the accused products and that the “new” arguments for the independent claims were of the same scope.  The Court, therefore, struck TT’s experts new opinions as to those limitations.

TT did, however, sufficiently disclose its argument regarding modifying .ini files, even though in its FIC it refers to changing .ini files instead of modifying them.  The Court, therefore, denied the motion as to those theories. 

TT did not sufficiently disclose its copying arguments related to willfulness.  So, those arguments were struck.  TT was, however, allowed to have its experts testify as to certain deficiencies in CQG’s noninfringement opinion letters, although not that the letters were a basis for willful infringement.

The Court struck TT’s doctrine of equivalents theory regarding disabling the Market Window because it was not disclosed in the FIC.  TT’s argument regarding the state of the DOM Grid, however, was merely a refinement of an argument already in TT’s FIC.  So, the arguments were allowed.  The Court also struck an argument based upon the use of a ChartTrader and Price Hold features together because it was not sufficiently explained.

The Court also struck some, but not all, of the experts’ opinions based upon trader usage.

 

Patent Claims Dismissed for Lack of Ownership

Posted in Local Rules

Rehco, LLC v. Spin Master, Ltd., No. 13 C 2245, Slip Op. (N.D. Ill. Mar. 17, 2014) (Leinenweber, J.).

Judge Leinenweber granted defendant Spin Master’s motion to dismiss plaintiff Rehco’s patent infringement claim related to a toy airplane, granted in part Spin Master’s motion to strike and granted Rehco’s motion to strike. 

As an initial matter, the Court struck Spin Master’s use of Rehco’s attorney work product document because it was inadvertently produced and properly clawed back pursuant to Fed. R. Evid. 502.  Spin Master first used the document during a hearing.  Rehco did not object at that time because lead counsel was unable to attend the hearing.  But upon returning from his travels, lead counsel saw the document, identified it as work product and clawed it back.  Based upon those facts, Spin Master could not use the document and must comply with FRE 502.

The Court dismissed Rehco’s patent infringement claim because Spin Master was the proper assignee of the patent.  Rehco argued that rights in the patent reverted to Rehco based upon Spin Master’s breach of the parties’ agreement.  But even if Spin Master had breached, Rehco only received the “sole and exclusive right . . . [to] exploit . . . .”  The rights in the patent itself would not have transferred.  The agreement also would not have transferred all substantial rights because at least the right to prosecute patents and assert the patents would have been retained by Spin Master.

The Court struck a portion of Rehco’s LPR 2.2 Initial Infringement Contentions.  Because Rehco’s infringement charts were “detailed” identifying where each element was found in Spin Master’s accused products.  Rehco also provided sufficient detail regarding means plus function claim terms.  The Court, however, struck Rehco’s doctrine of equivalents arguments because the allegations were a bare recitation that the accused products “perform substantially the same function, in substantially the same way, to achieve substantially the same result” with the level of detail required by LPR 2.2(d).  The Court gave Rehco twenty one days to amend its doctrine of equivalents contentions to meet the LPR 2.2(d) standards.

N.D. Illinois Proposes New Local Patent Rules for Electronically Stored Information

Posted in Local Rules

In October along with proposed revisions to the Local Patent Rules, the Northern District proposed new Local Patent Rules for Electronically Stored Information (“LPR ESI”).  The LPR ESI share many commonalities with standing ESI Orders being used in patent cases in districts across the country.  Additionally, the proposed LPR ESI is consistent with the existing LPR, which emphasizes avoiding costly disputes, enhancing cooperation and narrowing of cases and discovery.

The following is an analysis of the key provisions of the proposed LPR ESI:

LPR ESI 1.1 (Purpose)

The LPR ESI are designed to further Fed. R. Civ. P. 1 by securing “just, speedy, and inexpensive”, as well as early resolution, of ESI disputes without Court intervention.

LPR ESI 1.2 (Cooperation)

Counsel are required to cooperate in seeking and responding to discovery requests.  Failure to cooperate will be considered in cost-shifting determinations.

LPR ESI 1.3 (Discovery Plan)

To further Fed. R. Civ. P. 26(b)(2)(C) ESI requests and responses “should be reasonably targeted, clear, and as specific as practicable.”

LPR ESI 1.4 (Privilege and Waiver)

  • A receiving party cannot use ESI claimed to be attorney-client or work product privileged to challenge the privilege.
  • Inadvertent production pursuant to FRE 502(d) is not a waiver in the pending case or any other federal or state proceeding.
  • “Mere production of ESI in a litigation as part of a mass production shall not itself constitute a waiver for any purpose.”

LPR ESI 2.1 (Duty to Meet and Confer on Discovery and to Identify Disputes for Early Resolution)

  • Parties must meet to discuss the discovery process before an initial status conference.
  • Unresolvable disputes should be submitted to the Court at the initial status conference or as soon thereafter as possible.
  • Before presenting disputes to the court, each party must designate an e-discovery liaison who will participate in meet and confers.
  • An e-discovery liaison, whether in-house counsel, outside counsel, a party employee or a third party must:  be prepared to participate in e-discovery dispute resolution; be knowledgeable about the party’s e-discovery efforts; and have reasonable access to individuals familiar with the party’s electronic systems and e-discovery generally.
  • The Court can modify the LPR ESI for any particular case.
  • The parties are to jointly submit any proposed modifications, or statements of their competing proposals, within thirty days of the Fed. R. Civ. P. 16 conference.
  • If the Court determines that a counsel or a party is not cooperating or participating in good faith, it can require additional e-discovery discussions prior to commencing discovery or impose sanctions.

LPR ESI 2.2 (Preservation Requests and Orders)

  • Preservation requests and orders should not be vague or overbroad.  Instead, they should be “reasonable in scope” and within the bounds of Fed. R. Civ. P. 26(b)(2)(C).
  • The type of “specific and useful information” that should be included in preservation letters includes:  names of parties; factual background of claims and identification of causes of action; names of potential witnesses or individuals anticipated to have “relevant evidence”; and the relevant time period.
  • Should a preservation letter recipient choose to respond (there is no requirement to respond), the response should provide “useful and specific” information such as:  identifying information that the party is willing to preserve and the steps taken in response to the letter; disagreements with the preservation letter; and preservation issues not raised in the preservation letter.
  • Neither preservation letters, nor responses thereto are required by the LPR ESI.

LPR ESI 2.3 (Scope of Preservation)

  • Every party and its counsel are responsible for taking “reasonable and proportionate steps” to preserve ESI within their possession, custody or control.  What is reasonable and proportionate is a fact-specific inquiry that must be undertaken for each case.
  •  Discovery regarding preservation and collection of another party cannot be initiated without first conferring with the party from whom discovery is sought regarding the need for discovery, including its relevance to the case, and alternative means for obtaining the information.
  • The parties and counsel should attend the initial meet and confer prepared to discuss specific ESI issues, although “every conceivable issue” that may arise in the case need not be addressed at that time.
  • The following ESI categories are generally not discoverable and any request to preserve or produce them should be discussed at the initial meet and confer or as soon thereafter as possible: 

(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 metadata 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.

  • Disputes concerning the scope of preservation should be addressed in a meet and confer and then raised promptly with the Court if they cannot be resolved.

LPR ESI 2.4 (Identification of ESI)

  • At the Rule 26(f) conference or soon thereafter, the parties must discuss methodologies for identifying ESI, including without limitation:
  • Eliminating duplicative ESI and whether de-duplication will occur within a particular custodian’s ESI or across all custodians.
  • Filtering based upon file type, date ranges, search terms or similar parameters.
  • Use of keyword searches, mathematical or thesaurus-based topic or concept clustering or other advanced “culling technologies.”

LPR ESI 2.5 (Production Format)

  • The parties must confer and make a good faith effort to agree on ESI production format(s) and should raise any disputes promptly.
  • Parties must confer regarding whether ESI in databases or database management systems may be produced by querying the database resulting in a report or exportable electronic file for review by the requesting party.
  • Meta-data is presumed not to be requested and need not be produced unless a party makes a “special request.”
  • ESI or hard copy documents that are not text-searchable need not be made to be searchable.
  • The requesting party is responsible for the “incremental cost” of creating its copy of requested information.  Parties are encouraged to discuss cost-sharing for optical character recognition (“OCR”) or other “upgrades” of hard copy or other non-text-searchable ESI that may be contemplated by a party. 

LPR ESI 2.6 (Email Production Requests)

  • General ESI production requests will not include email or other forms of electronic correspondence.  Email production requires specific requests.
  • Email production will be phased to occur after exchange of initial disclosures and “basic documentation” about the patents, prior art, accused instrumentalities and relevant finances.  “Prompt and early” production of such information is encouraged, although not required.
  • Email production requests must identify:  custodians; search terms and time frames.  The parties are to cooperate to identify proper custodians, terms and timeframes.
  • Email requests are limited to five custodians per party for all requests.  The parties can jointly agree to modify the five custodian limit.  Disputed requests for more than five custodians will be considered by the Court based upon the specific case.  The requesting party will bear “all reasonable costs” of discovery beyond the limits in this Rule or granted by the Court.
  • Search terms will be limited to five per custodian per party.  The parties can jointly agree to modify this limit without leave of Court.  The Court will consider disputed requests for additional terms based upon the specific case. 
  • Search terms must be narrowly tailored to particular issues.  Indiscriminate terms such as a producing party’s name or product name are inappropriate unless combined with narrowing search criteria to “reduce the risk of overproduction.”
  • Conjunctive combinations of multiple words or phrases narrows the search and will be counted as a single term.  Disjunctive combinations of words or phrases broadens the search and are counted as separate terms, unless they are variations of the same word.
  • Use of narrowing criteria – and, but not, w/x – are encouraged and will be considered in cost shifting determinations. 
  • The requesting party will bear all costs for email production requests with search terms beyond limits agreed to by the parties or ordered by the Court.

Amendments to the N.D. Illinois Local Patent Rules Clarify Daily Practice

Posted in Local Rules

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:

Comment

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.

Patent Protective Order Will Not be Amended Absent Showing of Specific Reasons

Posted in Local Rules

AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. June 19, 2012) (Darrah, J.).

Judge Darrah denied defendants’ (collectively “SICO”) request to modify the Local Patent Rules standard protective order to include a prosecution bar.  While a prosecution bar could be appropriate, SICO failed to provide the specific facts necessary to meet its burden:

  • SICO offered general statements of potential competitive injury, but offered no specific information the disclosure of which would injure SICO.
  • SICO offered no examples of information it felt needed to be withheld.
  • SICO did not demonstrate that plaintiff AmTab’s counsel was engaged in competitive decision making.
  • AmTab’s outside counsel were not involved in marketing, product design, production, scientific research or pricing decisions.

Local Patent Rules Do Not Trump Rule 8 Pleading Requirements

Posted in Pleading Requirements

Groupon Inc. v. MobGob LLC, No. 10 C 7456, Slip Op. (N.D. Ill. May 25, 2011) (Hibbler, Sen. J.).

Judge Hibbler granted plaintiff Groupon’s motion to strike defendant MobGob’s affirmative defenses and to dismiss MobGob’s counterclaims, and denied MobGob’s motion to dismiss Groupon’s claim in this patent dispute involving online marketing systems.

MobGob’s Motion to Dismiss

Groupon pled the intent elements of its indirect infringement claims upon information and belief. And that pleading was sufficient even though intent is governed by Fed. R. Civ. P. 9(b) because even pursuant to Rule 9(b), intent and knowledge can be pled generally. Additionally, it was reasonable to infer from Groupon’s allegations that MobGob created or had someone create the accused system and the public nature of Groupon’s patent that MobGob had actually knowledge of its accused infringement.

Groupon’s Motions to Strike and Dismiss

First, Groupon sought to strike MobGob’s affirmative defense of invalidity. The Court initially noted that motions to strike are disfavored because they are unlikely to streamline a case or make resolving the case more efficient. But the Court still struck MobGob’s invalidity defense. MobGob’s invalidity defense did nothing more than identify the relevant statutory sections, offering not a single fact, upon information and belief or otherwise. While the Court noted there were some policy reasons for not holding affirmative defenses and counterclaims to the Twombly/Iqbal standards, the Seventh Circuit required that they be met for any pleading. The Court, therefore, struck MobGob’s invalidity defense. And for the same reason, the Court dismissed MobGob’s invalidity counterclaim because it also offered no facts. The Court also noted that it would not excuse inadequate pleading because of the Local Patent Rule 2.3(b) invalidity contentions that MobGob would be required to serve shortly after answering. The LPR 2.3(b) disclosures require significantly more detail than Fed. R. Civ. P. 8 notice pleading. So, MobGob could meet its Rule 8 obligations without providing the level of detail required by LPR 2.3(b).

The Court also struck MobGob’s affirmative defense regarding ownership of Groupon’s patent because it also lacked factual support, and because it did not accept Groupon’s facts as true, as required by an affirmative defense, instead challenging Groupon’s facts.

N.D. Illinois Local Patent Rules: “Me Too” Declaratory Judgment Counterclaims Do Not Delay Initial Disclosures and Contentions

Posted in Local Rules

I am often asked if declaratory judgment counterclaims delay the Local Patent Rule ("LPR") initial disclosure and contention obligations — generally two weeks after a defendant’s answer or other response to the complaint. LPR 2.1 is clear that initial disclosures are due two weeks after the answer unless "another" patent is asserted in counterclaims. "Me too" declaratory judgment claims focused only upon the asserted patents, therefore, do not delay the initial disclosure deadline. Initial disclosures are due two weeks after defendant’s answer or response, unless defendant adds a new patent to the case in its counterclaims.

N.D. Illinois Local Patent Rules: Addressing Initial Disclosure Document Production

Posted in Local Rules

One of the common early questions I get about the Local Patent Rules ("LPR") is how to address the LPR 2.1(a) & (b) document production that must accompany the LPR 2.1 initial disclosures. There is no set requirement for providing any statement regarding the production. In theory, it would be sufficient to send a cover letter with the production referencing LPR 2.1(a) or (b). But the better practice is to include an extra section in your initial disclosures identifying the LPR 2.1(a) or (b) production.

Northern District of Illinois Practice Tips Nos. 11-15

Posted in Legal News

This is the third installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are tips eleven through fifteen:

11.  Respect Twombly / Iqbal pleading standards.  The Northern District is no different than the rest of the country’s district courts — patent infringement requirements have not changed from the form in the Federal Rules. But that is not necessarily the case for Lanham Act, copyright or trade secret claims. There are numerous decisions dismissing, often with leave to amend, these more fact-specific intellectual property claims. And even in the patent context plaintiffs benefit from pleading with more particularlity. The more detail a defendant has the more information they should disclose about their accused products or systems as part of their Local Patent Rule 2.1(b) initial disclosure document production requirements. That means that the plaintiff will have more material with which to prepare its Local Patent Rule 2.2 intial infringement contentions. Finally, regardless of the type of claim, many and perhaps most judges rely upon Twombly / Iqbal to require more than a bare recitation of the elements of affirmative defenses. So, it is especially important to add some facts to your affirmative defenses.

12.  Prepare Local Rule 56.1 statements with care.  This is probably the most frequent Local Rule hang up in Northern District of Illinois opinions. It is critical that movants meet the Local Rule 56.1 requirements, among others, a numbered statement of undisputed material facts supported by admissible evidence. If the facts are not supported or if they are legal conclusions, judges routinely strike or disregard them.

13.  Respond to Local Rule 56.1 statements with evidence.  Far too often, parties respond to Local Rule 56.1 statements without evidence. Those responses are almost always deemed admissions. Without admissibile evidence to counter statements of fact they are almost always admitted.

14.  Watch your judge’s webpage.  Each judge maintains the equivalents of standing orders on their webpage, often in multiple places and links across the page. It is critical that you read them at the beginning of your case and that you recheck them regularly. At a minimum, check them before you file anything with the Court. I find that the website instructions change with much greater frequency than the old, paper standing orders did. And while judges try to make it easy to see what they change, if you are not looking you will miss it.

15.  Always file notices of motion.  In some districts, notices of motions are not required or even discouraged. In the Northern District of Illinois, they are required of every motion. If you fail to file one, you will likely hear from the Clerk’s office. Also, make sure to file the notice after the motion, not before. If you file the notice before the motion, you will generally have to refile it.

Claims Need Not Be Construed to Encourage an Embodiment that was Part of a Restriction Requirement

Posted in Claim Construction

Albecker v. Contour Prods., Inc., No. 09 C 6312, Slip Op. (N.D. Ill. May 3, 2010) (Castillo, J.).

Judge Castillo construed the claims in this patent case involving a wedge-shaped backrest and legless leisure chair. Of particular interest, the Court construed the following terms:

  • "Secured to" was defined as "attached using attachment means" that connect a type cushion to a foundation. The "secured to" definition excluded unitary top cushion foundations. The fact that the Court’s definition excluded one embodiment because that embodiment was part of a restriction requirement; and
  • "face of the generally wedge shaped foundation" was not properly briefed, but the Court held that the face was top surface.

The Court declined to construe other claim terms because the parties told the Court that the construed terms were the key terms.

The Court also noted that the parties’ Local Patent Rule 4.2(b) joint appendix failed to provide a complete prosecution history – a violation of the LPR 4.2(b).

R. David Donoghue Honored With the Chicago Bar Association’s Herman Kogan Media Award

Posted in Legal News

I am proud to announce that the Chicago Bar Association has honored me, and the Blog, with the 2010 Herman Kogan Media Award.  I usually do not post about personal awards, but I am making an exception because this one stems from my work on the Blog.  I was the first winner of the Kogan Award’s new online category.  The print and broadcast category recipients of the 2010 Kogan Awards were, respectively, The Chicago Reporter and Chicago’s ABC 7 News.  I received the award for my series of posts on the Local Patent Rules at the end of 2009 — click here to read the posts.  The award comes with a $1,000 journalism scholarship, which I have given to Loyola University Chicago’s journalism school.

Here is a little bit more about the Herman Kogan Media Awards:

Established in 1989, CBA’s Herman Kogan Media Awards competition honors local journalists and legal affairs reporting. Qualified candidates in the Chicago metropolitan area submitted entries in one of three entries: Print, Broadcast or Online. The competition celebrates the life of Herman Kogan, whose career spanned more than 50 years and included positions as an editor, reporter, feature and editorial writer, historian, literary critic and radio host.

Thank you to the Chicago Bar Association and the Herman Kogan Media Award committee for this honor.  And if you are interested in hearing more about the award and how I blog, click here for an interview LexBlog did with me after the award.

CLE: Leveraging the N.D. Illinois Local Patent Rules for Litigation Success

Posted in Legal Seminars

This Tuesday, March 23 at noon central, I am presenting a CLE program to the Chicago Bar Association’s Intellectual Property Law Committee about the Local Patent Rules.  If you read the Blog regularly, you have read a lot of my thoughts on the new Rules.  The presentation Tuesday will spend some time on the logistics of the Rules, but will focus far more heavily on how to use the Rules in practice both offensively and defensively.  The event is being held at the CBA’s building, 321 S. Plymouth Court, and lunch will be served.

Northern District of Illinois: False Patent Marking Capitol of the World

Posted in Local Rules

The Northern District has become the jurisdiction of choice for 35 USC Section 292 false patent marking suits. Of the more than 80 false marking suits filed this year, more than half were filed in Northern District. Granted many of the suits, 38, have been filed by a single plaintiff and his counsel, but several other plaintiffs have chosen the Chicago federal courts to file complaints that arguably could have been filed in almost any district court. As I have watched the cases pile up, I have spent a fair amount of time trying to determine why the plaintiffs are choosing Chicago. While the numbers could be skewed by one plaintiff, Simonian, that has filed the majority of the cases, several other plaintiffs are availing themselves of the Chicago courts, so I do not think that answers the question. Rather, I think the Chicago filings are a by-product of the new Local Patent Rules, for two reasons: 1) assuming that the Local Patent Rules apply to these cases (and I believe they will) the Local Patent Rules will place most of the upfront responsibilities on the defendant-patentholder; and 2) the proposed case schedule that would have cases tried in two years gives plaintiffs a moderate case length moderating their potential fees and costs while maintaining a relatively high defense cost for the defendants, including the potential threat of the longer pre-Rules schedule for most Northern District of Illinois patent cases prior to enacting the Rules. Before I analyze the reasons further, some background will be valuable as false marking is a very new phenomena in patent law and remains unknown to many.

Modern False Marking Cases

The first of the modern false marking cases, excluding the occasional false marking claim in a broader patent dispute between competitors, was Pequignot v. Solo Cup Co., No 1:07cv897-LMB/TCB (E.D. Va. July 2, 2009). In that case, Solo was accused of falsely marking coffee cup lids sold to Starbucks. The Eastern District of Virginia’s Judge Brinkema granted Solo Cup summary judgment finding that there was no intent to deceive the public in Solo’s alleged false marking based upon the advice of Solo’s counsel that it would be reasonable to replace molds identifying expired patents with molds showing no marking gradually. Additionally, the Court held that a patent marking “offense,” punishable by a fine up to $500, was the decision to improperly mark, not each improperly marked product. That decision significantly reduced the damages potential for false marking cases, and is currently on appeal at the Federal Circuit.

Then in the last week of December 2009, the Federal Circuit decided Forest Group, Inc. v. Bon Tool Co. In that case, the district court followed reasoning similar to the Solo case fining defendant $500 for a single decision to false mark. But the Federal Circuit reversed, holding that the fine was to be assessed per falsely marked product. That drastically changed the damages calculus for false marking claims, and led to the deluge of patent false marking cases beginning this January. 

In the first quarter of this year, at least to date, more than 80 false marking cases have been filed. The Federal Circuit will soon hear oral argument in Pequignot v. Solo Cup, to rule upon the bounds of the intent required by 35 USC Section 292. The only potential relief for patent holders is a section of the current patent reform bill in the U.S. Senate that would require that the false patent marking plaintiff have been harmed by the alleged false marking – check out a discussion of the provision at the Patent Docs.

The Local Patent Rules are Driving False Marking Cases

With that background, the question remains – why are so many false patent marking cases being filed in the Northern District? As I proposed above, the reasons stem from the Northern District’s new Local Patent Rules. First, many people see false marking cases as commercial litigation in patent litigation’s clothing. That is not completely the case, however. In fact, the parties must determine whether the marked product reads upon the patent claims, unless the the only issue is an expired patent. That means that the court and the parties must conduct a full infringement analysis with all of the required claim charts, technical analysis, expert discovery, Markman hearings and perhaps even summary judgment motions. That means that the Local Patent Rules will likely govern these cases, bringing with them the required Initial Disclosures and production obligations, and claim charts.

That is significant because the false marking plaintiff does not have all of the obligations of either a typical patent plaintiff or defendant, while the false marking defendant has most of its obligations. The plaintiff will not have to produce his reduction to practice documents, prosecution histories, etc. along with Initial Disclosures, although the defendant likely will have to at least produce the prosecution histories. And the defendant will also have the obligations of a typical defendant – producing documents sufficient to show how each accused product or process works. So, the defendant has initial discovery burdens that are not shared by the plaintiff, and the plaintiff is guaranteed early document production. Additionally, the defendant will likely be obligated to produce initial infringement contentions, after which the plaintiff would have to respond with noninfringement contentions. So, the plaintiff not only escapes initial production requirements, but also gets to file its initial claim charts last. These are significant costs for the defendant which may benefit the plaintiff, at little up front cost. Additionally, knowing that these costs are coming early in the case may drive the defendant’s willingness to settle up. Of course, it could always backfire on the plaintiff and drive the defendant’s settlement down in line with the amounts spent upon early discovery.

Second, the Local Rules contemplate a two year time-to-trial, as opposed to the prior patent litigation average in Chicago that was likely in excess of three years. So, the plaintiff still has a moderately long time to trial, driving up the defendant’s likely litigation fees and expenses, but not so long that the plaintiff feels like it will never see its potential award.

N.D. Illinois Local Patent Rules: Additional Views

Posted in Local Rules

I am working on some additional analysis of the Local Patent Rules, after I finish with a trial in the next several weeks.  But for now, this Chicago Daily Law Bulletin story quotes me and several others about the impact of the Rules:

New rules could boost patent filings

By Jerry Crimmins

Law Bulletin staff writer

New rules for patent litigation that have been in effect here for only a month are expected to increase patent litigation in the Northern District of Illinois, local lawyers say.

Until Oct. 1 the Northern District of Illinois did not have standard local rules for the scheduling of events in patent cases, according to these lawyers.

"I think [the rules] will increase filings … for a couple reasons," said R. David Donoghue, who writes the Chicago IP Litigation Blog.

"They benefit plaintiffs in a few ways that would draw plaintiffs to file their claims in the Northern District of Illinois when they can," Donoghue said.

Donoghue is a partner at Holland & Knight LLP.

The rules will "speed up the average length of time in patent cases from filing to trial," said Allan J. Sternstein, director of the Intellectual Property and Intellectual Property Litigation Department at Dykema, Gossett PLLC.

Yet the rules "will maintain sufficient time so the case can get done in a manner beneficial to both parties," Sternstein added. "Simply stated, it won’t be too fast. It won’t be a rocket docket.

"The biggest advantage," Sternstein said, is "it gives the attorneys and clients a much more solid foundation on which to base budgets and scheduling."

That in itself will bring more patent litigation to Chicago, Sternstein predicted.

Local patent lawyers on the Litigation Committee of the Intellectual Property Law Association of Chicago certainly saw it that way, he said.

"A lot of local patent attorneys felt a lot of the business was going to places where they did have local patent rules," according to Sternstein.

Bradford P. Lyerla of Marshall, Gerstein & Borun LLP, also agreed the new rules could bring more patent cases to the Northern District of Illinois. "No question about that."

But "I wouldn’t expect to see a huge uptick," Lyerla noted.

He said the customs followed in the Eastern District of Texas and in Delaware are more advantageous to plaintiffs in patent cases so those places will continue to attract more filings.

Lyerla is a trial lawyer who focuses on patent and trade secret litigation.

The new rules were drafted by a committee of lawyers affiliated with the Intellectual Property Law Association of Chicago and four federal judges here.

Judge Matthew F. Kennelly chaired the drafting committee, which also included Judge James B. Zagel, Judge Amy St. Eve and Judge James F. Holderman, chief judge of the U.S. District Court here.

Sternstein and Lyerla were among the seven practitioners on the drafting committee.

The rules expect a case to be ready for trial in 25 to 26 months, Donoghue said.

This compares to a previous average time to trial of up to 43 months, according to Lyerla.

"The time to trial in the Northern District of Illinois for a patent cases was really, really, really long, just way out of kilter with other cases in the Northern District of Illinois," Lyerla said.

For other federal litigation here, time to trial is about 24 months, according to Lyerla.

As examples of the new rules, Donoghue cited two benefits to plaintiffs and two benefits to defendants.

"The claim construction process is held late in discovery … later than in most other local patent rules” found in some other federal jurisdictions, Donoghue said.

The claims construction process is the way a judge decides on the meaning of certain, disputed words or phrases in the patent at issue, Donoghue said.

To have this process late in the litigation allows the plaintiff broader discovery and depositions and a broader patent infringement theory throughout, Donoghue explained.

The new rules also require both sides to produce "initial disclosures” or categories of documents that could be relevant along with names of witnesses and individuals with knowledge about the case only about nine weeks after the complaint is filed, Donoghue continued.

The earliness is another advantage for plaintiffs, he said.

As an advantage for defendants, he said the new rules require plaintiffs to produce early on the documents showing ownership of the patents allegedly infringed as well as documents on the development of those patents.

That early discovery helps defendants, according to Donoghue.

"The other big benefit to the defendant is the claim construction briefing process," he continued.

Normally, a plaintiff writes the opening brief in the claims construction process. The defendant responds, and the plaintiff then replies to that, he said.

"In these rules, it’s reversed," Donoghue said. "Defendant files the opening and reply brief. Plaintiff files just the response brief."

Lyerla said that five years ago, he proposed to Holderman in private that local patent rules be drawn up for the Northern District of Illinois. Lyerla said he was politely rebuffed.

Holderman "said it would never happen," explaining that the tradition here is that district court judges "pretty much run their own show in terms of scheduling," according to Lyerla.

But since then Holderman has become an advocate for "a more thoughtful approach to patent litigation in the federal courts," Lyerla said.

The Litigation Committee of IPLAC began discussing the issue again under its new chairman, Dean A. Monco, Lyerla added.

In 2007 Sternstein, who was on that committee, said he approached Holderman about drawing up rules, and "Judge Holderman was very receptive."

Sternstein was named chairman of a subcomittee of the IPLAC Litigation Committee to work with the judges to draw up the new rules.

After a long process of publishing drafts, comments and revisions, the rules went into effect Oct. 1.

But Sternstein said as soon as the drafts started circulating, "some of the judges started using our drafts."

The other lawyers on the drafting committee were Edward D. Manzo, Michael P. Padden, Marshall Seeder, and Paul K. Vickrey.

jcrimmins@lbpc.com

N.D. Illinois: 2009 Intellectual Property Filings

Posted in Legal News

The Northern District of Illinois continued its historically busy intellectual property docket in 2009.  For the first time in several years, there was a slight decrease in patent case filings. Of course, that is not surprising in light of a difficult economy and patent filings being down across the country. And I suspect that the new Local Patent Rules* will result in an increase in patent litigation filings for 2010. Trademark cases bucked their downward trend over the last several years, and were up by about 10% over 2008. Finally, copyright cases continued a relatively steep decline.  But despite the decline, the Northern District maintains one of the most active copyright dockets in the country.  This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2009 (data gathered from the Stanford IP Clearinghouse and Pacer):

Northern District IP Case Filings

Case Type

2006

2007

2008

2009

Patent

126

141

151

137

Trademark

136

130

128

136

Copyright

194

123

81

41

Click here for much more on the Local Patent Rules in the Blog’s archives.

N.D. Illinois Local Patent Rules Will Drive Cases to Chicago

Posted in Local Rules

The most popular posts on the Blog during 2009, in terms of both views and reader questions, were those on the Local Patent Rules.  Because of high interest, I have plans for additional analysis this year.  This is the first of those posts.  In late 2009, I had an article published in Bloomberg Law discussing why the new Rules will drive patent cases to the Northern District of Illinois.  Bloomberg generously allowed me to post a pdf version of the story — click here to download it — and to repost it on the blog.  Here is the article:

The Northern District of Illinois enacted Local Patent Rules ("LPR" or "Rules") on October 1, 2009. The purpose of the Rules is to normalize patent litigation in the Northern District of Illinois and to streamline the patent litigation discovery process. See LPR, Preamble. The rules also make clear that the court does not intend to become a "rocket docket." In fact, the Rules create a schedule that would have cases ready for trial in a little over two years, although cases would not necessarily be tried at that time. That is at most a modest change from the court’s average time to trial for all cases—about twenty-seven months, according to the most recent Federal Court Management Statistics.

The Northern District of Illinois did not intend that its new Rules would drive patent cases to Chicago, as has happened when other courts enacted local patent rules, such as the Eastern District of Texas. But despite its intentions, the Northern District of Illinois’s plan to normalize patent litigation practice and streamline discovery will significantly increase patent filings in Chicago. To understand why the Rules will increase case filings, it is important to understand the process created by the Rules, and then look at the impact specific Rules will have for both patentholders and accused infringers.

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Patent Reexamination & Litigation in the Northern District of Illinois — Avoiding Malpractice Claims

Posted in Local Rules

 

The face of patent litigation in the U.S. has evolved greatly in the last 5 years with respect to patent reexamination. For patent litigators, throughout the U.S. and especially the Northern District of Illinois, the emergence of this now seemingly reliable strategic option is an important case management consideration. Indeed, if not adequately considered in the course of litigation counseling, reexamination ignorance may create malpractice opportunities for unsuccessful defendants.

Defendants, as well as those concerned with patents clouding their competitive landscape are increasingly requesting patent reexamination at the USPTO. When prior art patents and printed publications can be effectively presented to enable the USPTO to reject original patent claims, the expectation is that the prosecution of the reexamination proceeding will result in cancellation or amendment of original patent claims. 

The sudden growth in reexamination filings can be attributed to several factors. These factors include, the emergence of the “non-practicing entity”(NPE) problem, the eligibility of inter partes reexamination for post 1999 patent application filings, and the efforts of the USPTO and Congress to overhaul the reexamination process, first with legislation overruling the Portola Packaging decision in 2002, and with creation of a special USPTO unit in 2005.

In 2005, the USPTO established the Central Reexamination Unit (CRU) to exclusively handle all reexaminations, whether ex parte or inter partes within the Office. The CRU created a procedure by which every reexamination proceeding is processed by a team (3) of experienced primary examiners. The CRU has greatly improved the responsiveness and quality of patent reexamination.

With respect to NPEs, reexamination is an attractive strategy as an active reexamination may shut down (i.e., stay) an otherwise costly litigation by forcing the dispute away from the high cost battle of district court litigation, back to the PTO. At the PTO, the NPE’s leverage of contingency litigation counsel and forced discovery costs are removed. Moreover, the standard of review in reexamination for proving unpatentability is much more favorable to a challenger as compared to the district court action. In federal district court the standard to invalidate a U.S. patent is “clear and convincing evidence.” Whereas, in reexamination, the US PTO can establish unpatentability by a “preponderance of evidence,” and unexpired claims are given their broadest reasonable interpretation. See 37 C.F.R. 1.555(b)(2)(ii).

Upon conclusion of a reexamination, canceled or amended claims will present the challenger with freedom to operate either through non-infringement of the altered claims, or decrease liability through the doctrine of intervening rights. 

With this background in mind, a review of a recently asserted malpractice claim is presented along with a discussion of the new Local Patent Rules of the Northern District of Illinois as they pertain to concurrent reexaminations.

In Ecast Inc. v. Morrison & Foerster L.L.P. (Superior Court for the State of California, County of San Francisco) Ecast, a former client of MoFo, sued the firm for malpractice. The compliant stemmed from MoFo’s defense of Ecast in a patent infringement suit in the Northern District of Illinois. In the suit, six patents were asserted against Ecast by Rowe International Corp and Arachnid Inc. (Rowe International Corp., and Arachnid, Inc. v. Ecast, Inc., Rockola Mfg. Corp., and View Interactive Entertainment Corp. (click here for much more about this case from the Chicago IP Litigation Blog’s archives).

 

** Guest Post by Scott A. McKeown of Oblon Spivak & PatentsPostGrant.com **

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Northern District Local Patent Rules: Applied Discovery Panel Discussion

Posted in Local Rules

Last month I had the opportunity to participate in a panel discussing the Northern District of Illinois’ new Local Patent Rules* hosted by Applied Discovery. In addition to me, the panelists were:

The panel briefly touched on the mechanics of the Rules, and then dove into the implications of the Rules for Northern District patent litigation generally, as well as specific issues litigants will likely face with the Rules. Here are some of the highlights:

  • The Rules will increase patent litigation filings in the Northern District despite the fact that the 2+ year trial timeline does not create a rocket docket.

  • The Rules are widely accepted as positive by both sides of the bar.

  • The Initial Disclosure document production requirements will have the most significant impact. Plaintiffs will need to prepare their cases early, and defendants cannot delay prior art searches.

  • The combination of early document production and early initial contentions means that parties will not be able to use the first six months of a patent case to try settling it without much investment in the case.

  • Ouweleen pointed out that other courts have used the contention disclosures to exclude new information after content deadlines without a showing of good cause. That places a premium on early prior out searches and fleshing out each party’s technical case early.

  • Callahan believed that the Rules will focus cases on the substantive issues, instead of negotiating over protective orders and interrogatory responses. That is a benefit to judges (reduced motion practice), litigants (reduced cost), and litigators (more time to focus on the art of lawyering and the substantive case).

It will be very interesting to test the accuracy of these predictions once we have a year or two of data using the Rules.

*  Click here for much more on the Blog’s archives about the Local Patent Rules.

N.D. Illinois Local Patent Rules: More CLE Opportunities

Posted in Local Rules

If you cannot make the Applied Discovery roundtable discussion about the new Local Patent Rules that I am participating in this Wednesday, November 11, from 11:30 until 2:00pm (click here for more information and click here to register by email, but move quickly because space is running out), or if you just cannot get enough analysis of the Rules, check out what looks like it will be a great teleseminar by Law Seminars International, tomorrow from 2:00 until 3:00pm.*  Law Seminars promises to address:

  • The background and history of the Rules;
  • What the Court is trying to achieve with the Rules; and
  • The Rules’ implications for plaintiffs and defendants.
The scheduled speakers include:
  • Allan J. Sternstein, Dykema Gossett PLLC
  • Edward D. Manzo, Cook Alex Ltd.
  • Paul K. Vickrey, Niro, Scavone, Haller & Niro, Ltd. 
For registration information, click here.
 
*  In the interest of full disclosure, I plan to attend using a media pass generously provided to me by Law Seminars.

N.D. Illinois Local Patent Rules: Seminar

Posted in Local Rules

Next Wednesday, November 11, from 11:30 am until 2:00 pm, I am participating in a roundtable discussion about the Northern District’s new Local Patent Rules hosted by Applied Discovery.  Blog readers have already read a lot about the Local Patent Rules — click here, here and here for some of the Blog’s analysis of the Rules.  But this panel will add valuable perspective from other members of the Chicago patent bar.  I am especially looking forward to the insights of friend and former colleague David Callahan of Kirkland & Ellis.

Here is Applied Discovery’s description of the event and registration information:

Applied Discovery is pleased to offer a roundtable forum led by local experts discussing the practical consequences of the rules and the effects the rules could have on patent litigation in the Northern District of Illinois.  Virginia Henschel, vice president for e-discovery affairs at Applied Discovery will be moderating the panel.  Ms. Henschel’s distinguished career prior to Applied Discovery includes serving as counsel for Sunoco, Inc., where she managed all facets of ESI for litigation, including designing and managing defensible data collection and production for large, complex legal matters.

If you have not already registered, there is still time to join us for a spirited analysis of the new Rules with opinions from plaintiffs, defendants and the bench. 

TOPICS
• An overview of the Rules and the specific new obligations placed on patentees, accused infringers, and declaratory judgment plaintiffs.

• The effects of the new Rules on patent filings in the Northern District of Illinois.

• Scheduling deadlines and new requirements.

• Changes in the discovery process.

ROUNDTABLE PANELISTS
Mark Ouweleen, Partner, Bartlit Beck Herman Palenchar & Scott LLP

• David Donoghue, Partner, Holland & Knight LLP

• David Callahan, P.C., Partner, Kirkland & Ellis LLP

DATE

Wednesday, November 11, 2009

11:30 am - 2:00 pm

LOCATION
Union League Club
65 West Jackson Boulevard, Room 710

Chicago, IL 60604

(Business Attire Required)

RSVP BY 11/6
If you wish to attend, please email Jennifer Towell at jennifer.towell@applieddiscovery.com as soon as possible. Space is limited.

Court Not Required to Review Accused Products During Claim Construction

Posted in Claim Construction

SP Techs., LLC v. Garmin Int’l, Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Oct. 9, 2009) (Pallmeyer, J.).

Judge Pallmeyer construed the claims of plaintiff SP Technologies’ (“SPT”) patent to a method for inputting data on a touch-screen display using a keyboard that cannot be resized, moved or closed by a user. As an initial matter, the Court noted that, contrary to SPT’s argument, the Court was not required to consider the accused products when construing the claims. Instead, the Court had discretion to consider the accused devices. And because the parties did not provide a reason to consider them, the Court chose not to include the accused products in its analysis. Here are constructions of note:

  • “Plurality of date input fields” was defined as more than one field, but the fields need not simultaneously appear on the same screen.

  • “Termination” referred to terminating or closing the keyboard, but not resizing or moving the keyboard as defendants argued. The ordinary meaning of terminate controlled over some statements the inventor made during prosecution that could have been read more broadly.

  • “Derived input” was defined as information requested by a computer application or program, as opposed to information “desired” by a user.

Finally, the Court noted a problem with the defendants’ presentation of the evidence that will be remedied by the Local Patent Rules. Defendants cited to documents within the prosecution history by title, as opposed to using Bates numbers, making it hard for the Court to find the relevant portions of the 250 page prosecution history.  Local Patent Rule 4 requires that parties file a Joint Appendix as part of the claim construction process that is paginated and includes the prosecution history, among other documents. Click here for much more on the Local Patent Rules in the Blog’s archives.

N.D. Illinois Local Patent Rules: Timing Chart

Posted in Local Rules

Following up on posts analyzing the Northern District’s Local Patent Rules over the last several weeks (click here (for analysis of the Rules, here (for a comparison of the enacted Rules to the Proposed Rules) and here (arguing that the Rules will increase patent litigations in the Northern District of Illinois) for those posts and here for a copy of the Rules), I have prepared the following chart laying out the schedule contemplated by the Rules in an easy to reference format.  As I promised earlier, I will begin a series of posts soon looking at each Rule or group of Rules in more detail.

Event

Scheduled Time

Total Time After Complaint

Service of Complaint

   

Answer or Other Response to Complaint

 

7 weeks*

Initial Disclosures of Both Parties
(LPR 2.1)

2 weeks

After Answer or other Responsive Pleading

-or-

2 weeks

After plaintiff’s Answer or other Responsive Pleading regarding defendant’s Counterclaims

9-12 weeks*

Initial Document Production
(LPR 2.1(a) & (b))

The day Initial Disclosures are exchanged

9-12 weeks

Protective Order Deemed Entered
(LPR 1.4)

The day Initial Disclosures are exchanged

9-12 weeks

Initial Infringement Contentions
(LPR 2.2)

2 weeks

After Initial Disclosures

11-14 weeks

Initial Non-Infringement, Unenforceability & Invalidity Contentions

(LPR 2.3)

2 weeks

After Infringement Contentions

13-16 weeks

Document Production Accompanying Invalidity Contentions

(LPR 2.4)

Along with Initial Invalidity Contentions

13-16 weeks

Initial Response To Invalidity Contentions
(LPR 2.5)

2 weeks

After Initial Invalidity Contentions

15-18 weeks

Final Infringement, Unenforceability & Invalidity Contentions

(LPR 3.1)

21 weeks

After Initial Infringement, Unenforceability & Invalidity Contentions

34-37 weeks

Document Production Accompanying Final Invalidity Contentions**

(LPR 3.3)

Along with Final Invalidity Contentions

34-37 weeks

Final Non-Infringement, Enforceability and Validity Contentions
(LPR 3.2)

4 weeks

After Final Infringement, Unenforceability & Invalidity Contentions

38-41 weeks

Final Date to Seek Stay Pending Reexamination
(LPR 3.5)

The deadline for service of a parties’ Final Contentions

38-41 weeks

First Day Opinion of Counsel Evidence Becomes Discoverable***

(LPR 3.6(a))

5 weeks

Before fact discovery close

39-42 weeks

Document Production for Parties Relying on Opinion of Counsel Defense Due***

(LPR 3.6(b))

5 weeks

Before fact discovery close

39-42 weeks

Exchange of Claim Terms Needing Construction**

(LPR 4.1(a))

2 weeks

After Final Contentions

40-43 weeks

Deadline to Meet and Confer to Select at Most 10 Terms for Construction
(LPR 4.1(b))

1 week
After exchange of claim terms

41-44 weeks

Initial Fact Discovery Close
(LPR 1.3)

4 weeks

After Exchange of Claims Terms

44-47 weeks

Opening Claim Construction Brief
(LPR 4.2(a))

25 page limit

5 weeks

After Exchange of Claims Terms

45-48 weeks

Deadline for Filing Claim Construction Joint Appendix

(LPR 4.2(b))

Along with Opening Claim Construction Brief

45-48 weeks

Responsive Claim Construction Brief

(LPR 4.2(c))

25 page limit

4 weeks

After Plaintiffs Claim Construction Brief

49-52 weeks

Reply Claim Construction Brief

(LPR 4.2(d))

15 page limit

2 weeks
After Responsive Claim Construction Briefs

-or-

3 weeks

After Responsive Claim Construction Briefs, If the Responsive Brief offers witness testimony to support constructions

51-55 weeks

Joint Claim Construction Chart
(LPR 4.2(e))

1 week
After Reply Claim Construction Brief

52-56 weeks

Claim Construction Hearing
(LPR 4.3)

4 weeks

After Reply Claim Construction Brief

56-60 weeks

Claim Construction Ruling

Six weeks (?)

62-66 weeks

Fact Discovery Reopens
(LPR 1.3)

Six weeks

When the claim construction order issues

62-66 weeks

Fact Discovery Close After Claim Construction Ruling
(LPR 1.3)

6 weeks
After Claim Construction Ruling

68-72 weeks

Expert Reports of Parties with Burden of Proof
(LPR 5.1(b))

3 weeks

After close of discovery after the Claim Construction Ruling

71-75 weeks

Rebuttal Expert Reports
(LPR 5.1(c))

5 weeks

After Initial Expert Reports

76-80 weeks

Completion of Expert Witness Depositions
(LPR 5.2)

5 weeks

After Rebuttal Expert Reports

81-85 weeks

Final Day for Filing Dispositive Motions
(LPR 6.1)

4 weeks

After Close of Expert Discovery

85-89 weeks

Case Ready for Trial

20 weeks

After Deadline for Filing Dispositive Motions

105-109 weeks

Key Time Intervals:

To Final Infringement Contentions: 7-8 months

To Claim Construction Hearing: 13-14 months

To Summary Judgment Motions: 19-20 months

To Trial: 25-26 months

 

* The Answer deadlines are approximate and can be impacted by waiver of service, extensions granted by the Court and when the Complaint is served, among other factors.

 

** LPR 3.3 references LPR 3.2 Final Invalidity Contentions. LPR 4.1(a) sets the claim construction dates based upon "Final Invalidity Contentions pursuant to LPR 3.2." These are likely artifacts from the Proposed Local Rules. In the Proposed Local Rules, LPR 3.2 addressed Final Invalidity Contentions which were served after Final Infringement Contentions. In the Rules as issued, however, LPR 3.2 controls Final Non-Infringement, Enforceability and Validity Contentions, and LPR 3.1 addresses Final Invalidity Contentions, among others. I understand a correction is likely to be issued clearing this up in the next week or so. As a result, this chart treats the references to the Final Validity Contentions in LPR 3.3 and LPR 4.1(a) to refer to the LPR 3.1 Final Invalidity Contentions.

 

*** LPR 3.6 schedules the due date for opinion of counsel disclosures and production at the close of fact discovery, but does not say whether it is at the initial pre-claim construction close or the post-claim construction close. I suspect it will ultimately end up after the claim construction process, so that it need not be dealt with if the case is resolved by the claims constructions. But for the sake of safety, it is included at the earliest possible date in this chart.