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Tag Archives: Northern District of Illinois

America Invents Act: The More Things Change, the More They Stay the Same

Posted in Legal News

The following article was written for my Retail Patent Litigation Blog, and it is just as relevant for Chicago readers.  So, I am reprinting it here with minor, Chicago-specific revisions.

BNA has an interesting article by James Pistorino of Perkins Coie and Susan Crane looking at the impact of the America Invents Act (“AIA”) on district court patent litigation filings.  The article looks at 2011 data, only one quarter of which is after enactment of the AIA.  But even a quarter’s data tells a clear story:

  • Delaware leap frogs the E.D. Texas as the district of choice for patent plaintiffs with nearly 50% more filings than the E.D. Texas.
  • The number of defendants per case has dropped significantly in almost every district, with the E.D. Texas as a notable exception.
  • The number of total defendants sued appears to be remaining relatively steady.

This early data suggests exactly what we expected.  Overall, the AIA did not control patent litigation filings, but it did reduce average case size and shift venue.  The big question from the study is “why Delaware?”  Here are some key reasons:

  • Retirement and new judges on the E.D. Texas have increased uncertainty and time to trial in the E.D. Texas, for both plaintiffs and defendants.
  • In contrast, Delaware’s bench has remained consistent, and is also experienced with patent litigation.
  • A recent transfer denied by Delaware Judge Robinson noted that defendants incorporated in Delaware (as so many are) cannot “complain” about being sued in Delaware.
  • While Delaware is not a rocket docket and lacks local patent rules, Delaware is relatively fast and has strong local patent customs with each judge.

Additionally, it is worth noting that the AIA has had little impact on the rest of the top five patent litigation districts – C.D. California, N.D. California and N.D. Illinois.

Northern District of Illinois Institutes Plan in Case of Government Shutdown

Posted in Legal News

Chief Judge Holderman has instituted an operations plan in the event of a federal government shutdown.  The Northern District will operate normally for the first two weeks of any shutdown.  Should a shutdown continue longer than two weeks, the Northern District will operate with essential personnel as set forth by the United States Court’s Administrative Office.  Here is the full text of Chief Judge Holderman’s statement:

To the People of the Northern District of Illinois,

Please be assured that here in the Northern District of Illinois, Clerk of the Court Mike Dobbins and I have conferred and have developed a plan for our court to deal in the short term with the contingency now facing us of Congress failing to pass the federal budget or to authorize another continuing resolution.

We will keep the United States District Court for the Northern District of Illinois open and functioning with only minor modifications in our procedures for at least two weeks if Congress fails to establish a budget to keep the United States Government functioning. If the shutdown continues longer than two weeks, the court will continue to operate with essential personnel as defined by guidelines issued by the Administrative Office of the United States Courts.

We plan to continue to provide justice to the fullest extent possible and in the same excellent way as we have in the past. Thank you for your understanding.

Chief Judge James F. Holderman

CLE: What Everyone Should Know About the Mechanics of E-Discovery

Posted in Legal Seminars

The Seventh Circuit Electronic Discovery Pilot Program is sponsoring a free e-discovery webinar on April 6, 2011 from noon until 1:30 pm CDT.  This is the next in a series of e-discovery seminars sponsored by the local federal courts which have been excellent so far.  Participation is limited to 1,500.  So, sign up early — click here to register.  Attendance for the past events has been impressive.  1.5 hours of MCLE credit have been applied for in Illinois, Indiana and Wisconsin.

Here are the details of the webinar from the Northern District’s inviation:

What Everyone Should Know About the Mechanics of E-Discovery

April 6, 2011 – Noon – 1:30 p.m. (CDT)

Understanding the mechanics of electronic discovery is essential to your effectiveness in litigation and to fulfill your responsibility to your clients. The Seventh Circuit Electronic Discovery Pilot Program, together with Merrill Corporation, has developed a program designed to assist you in mastering the e-discovery challenges of today’s litigation and to help you manage the preservation, retrieval and production of ESI through the e-discovery process. You will gain information including:

  • A basic understanding of the terminology unique to the realm of e-discovery.
  • The meaning of preservation and how to achieve this crucial obligation in an evolving technological landscape.
  • How to assess and manage the challenges of an e-discovery project.
  • A foundational understanding to help you identify potential e-discovery pitfalls and potential problems.

 

Senator Durbin Assembles a Committee to Review Applicants for Northern District Judicial Vacancies

Posted in Legal News

Illinois’ senior senator, Dick Durbin, has announced a bipartisan screening committee to assist in filling the Northern District’s three vacant judgeships, as well as for future vacancies. If you are interested in applying for one of the vacant seats, click here to get an application from Senator Durbin’s website. The questionnaire portion of the application is similar to that used by the Senate Judiciary Committee in reviewing judicial appointments. Applications are due by Monday, January 31.

The screening committee will review the applications and make several recommendations for each open seat to Senator Durbin, who will work with Senator Kirk to propose nominees to President Obama. Members of the screening committee include (along with a portion of their respective bios from Senator Durbin’s website):

  • Dick Devine (chair). Mr. Devine was elected Cook County State’s Attorney in 1996 and served in that role until 2008. He currently is a partner at the law firm of Meckler Bulger Tilson Marick & Pearson LLP, where he leads the firm’s white-collar criminal defense and commercial litigation practices.
  • Demetrius Carney. Mr. Carney is a partner at the law firm of Perkins Coie. He is the president of the Chicago Police Board and a former commissioner for the City of Chicago’s Plan Commission.
  • Philip Corboy, Jr. Mr. Corboy is a partner at the law firm of Corboy & Demetrio. He is president of the Illinois Trial Lawyers Association, president of the board of directors of the Legal Assistance Foundation of Metropolitan Chicago, former board member of the Chicago Bar Association, and member of the dean’s council of DePaul University law school.
  • Kevin Forde. Mr. Forde has his own law practice in Chicago. He is a past president of the Chicago Bar Association, board chair of the Federal Defender Program in the Northern District of Illinois, counsel to the Federal Judges Association, and chair of the Illinois Compensation Review Board. He served as a law clerk to Judge William Campbell in the Northern District of Illinois.
  • Patricia Holmes. Ms. Holmes is a partner at the law firm of Schiff Hardin, where she heads the white collar crime group. She previously served as a former state trial judge, an Assistant U.S. Attorney for the Northern District of Illinois, an Assistant State’s Attorney for Cook County, and Chief Assistant Corporation Counsel for the City of Chicago.

    Betty Jang. Ms. Jang is legal counsel and director at CVS Caremark in Northbrook. Previously she served as senior counsel at the McDonald’s Corporation, a litigator at Hinshaw & Culbertson, an attorney with the Cook County Public Defender, and an adjunct professor at the University of Illinois law school.

    Paul Logli. Paul Logli is currently President and CEO of the United Way of Rock River Valley. He previously served for 21 years as the State’s Attorney for Winnebago County, and also served as a judge on the 17th Judicial Circuit Court.

  • Cheryl Niro. Ms. Niro is a principal in the law firm of RobinsonNiro PC. She previously served as past president of the Illinois State Bar Association, the Cook County Legal Assistance Foundation, and the National Caucus of State Bar Associations.
  • Michele Ruiz. Ms. Ruiz is a partner at the law firm of Sidley Austin. She was selected as a Leadership Greater Chicago fellow.
  • Diana White. Ms. White is the executive director of the Legal Assistance Foundation of Metropolitan Chicago, where she received the Equal Justice Award. Previously she was a partner at Jenner & Block and a law clerk to Judge Walter Cummings on the U.S. Court of Appeals for the 7th Circuit.

Northern District of Illinois 2010 IP Case Filings:

Posted in Legal News

The Northern District of Illinois continued its historically busy intellectual property docket in 2010.  The most interesting statistic is a huge jump in patent filings this year — 250 patent cases filed this year, nearly double 2009′s 137 filings.  And that is after a slight dip in filings from 2008 to 2009.  I will discuss the 2010 filings in more detail in a post later this month, but even correcting for false patent marking suits, not all of which are included in the 250 filings because plaintiffs did not uniformly identify false marking cases as patent cases on civil cover sheets filed with the complaints, there was a significant increase in patent filings.  That fits with my prediction in late 2008 that the Northern District’s new Local Patent Rules would drive cases to Chicago.*

Trademark cases continued their slow growth, showing a slight increase over 2009.  Finally, copyright cases increased, after falling off sharply in 2009.  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 Filings
Case Type 2006 2007 2008 2009 2010
Patent 126 141 151 137 250
Trademark 136 130 128 136 143
Copyright 194 123 81 41 4

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

Northern District of Illinois Practice Tips Nos. 21-25

Posted in Legal News

This is the fifth installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation (here are the earlier tips:  1-5; 6-10; 11-15; and 16-20). 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 numbers twenty through twenty five:

  1. Calculate extensions in 7 day increments.  The Federal Rules, and the Local Rules, now calculate deadlines in seven day increments. Based upon that, many Chicago judges expect parties to seek extensions in those same increments.
  2. Respect Chambers.  Chambers staff are pretty universally helpful, but be respectful of them and avoid annoying them. Before calling chambers, read the Local Rules and the judge’s website to make sure your question is not answered there. And call chambers with opposing counsel, unless you have advance permission from the Court or opposing counsel.
  3. Learn how to seal or redact filings early.  The Seventh Circuit frowns upon sealing court filings unless absolutely necessary. As a result, Northern District judges are particular about filing under seal, as is the Clerk’s office. Some protective orders give you a blanket right to file under seal, but others require specific permission. That permission would ideally be sought in advance of filing, but at least concurrent with the filing. Either way, it is critical to know before the evening of a major filing deadline, when the Clerk’s office may be closed, and you may not have much time to begin with. Additionally, the Seventh Circuit requires that briefs be filed in a redacted form instead of under seal. So, many Northern District judges have the same requirement. Either ask the judge’s chambers or counsel who has experience before the particular judge.
  4. Lean on the ECF hotline.  I am routinely surprised by how many people never think to call the Clerk’s ECF number for assistance. The Clerk’s staff is uniformly knowledgeable and eager to help. In particular, call them immediately if you made an ECF-based error while filing. The Clerk’s office can almost always fix it, and it is usually easier for everyone if you have not added to the problem by "fixing" it yourself. One note of caution though, as with calling chambers, give the Clerk’s office the courtesy of reviewing the ECF webpage first to make sure they have not already answered your question there.
  5. Understand the Court’s pretrial order requirements.  More than one Northern District judge will throw out inadequate pre-trial orders. One common flaw to watch for is insufficient statements of fact or conclusions of law. The local, form pre-trial order requires the parties to identify every fact they must prove at trial and every necessary conclusion of law, even for jury trials. This custom differs from some other districts (and not every Northern District judge requires it). Likely because of that and the general pre-trial time crunch, many parties fail to prepare sufficient statements. That can have serious consequences, so start on these early.

Northern District of Illinois Practice Tips Nos. 16-20

Posted in Legal News

This is the fourth installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation (here are the earlier tips:  1-5; 6-10; and 11-15). 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 sixteen through twenty:

  1. Meet and Confer.  Wherever you practice you are likely aware of some version of a Local Rule 37.1 requirement to meet and confer regarding at least discovery motions. Generally, you do not need to meet and confer for dispositive motions, but you must for discovery motions as well as motions for extensions. Most judges will not hear a motion without a meet and confer, and some will deny the motion with prejudice for failing to meet and confer. If you are not sure whether your motion requires a meet and confer, err on the side of having one.
  2. Tell the Court about your meet and confer.  Do not forget to tell the Court you met and conferred in your motion, and describe the outcome. If you do not, you risk denial of your motion, and always identify agreed or stipulated motions in the title and the docket entry.
  3. Use the Online Transcript System.  Take advantage of the Northern District’s first-in-the-nation online transcript ordering system. Prior to this system, getting transcripts was difficult, but now getting a hearing transcript is as easy as buying a book on Amazon.com. It is a great advantage for litigators preparing motions that relate to prior hearings.
  4. Calculate your hearing date. Each judge has a different minimum notice period for motions. Many judges allow notice three business days after filing, but a few only require two and others require four. On a similar note, check the judge’s website for allowable motion call days and times, and any days when the judge will not be hearing motions.
  5. Deliver prompt, correct courtesy copies. The Local Rules require delivery of courtesy copies of to the Court within one day of filing. But some judges require same day courtesy copies if at all possible. For those judges, if you cannot deliver same day you should at least deliver early the next morning. Also, make sure you format the copies correctly. For example, most judges require exhibits to be separated by tabs, and some judges require that papers be bound on the left-hand side. And for many judges, you must include copies of any unreported cases cited in your papers.

Northern District of Illinois Practice Tips Nos. 6-10

Posted in Legal News

This is the second 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 opinion 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 six through ten:

6.    Redact personal information.  Make sure that you are redacting personal information, social security numbers, phone numbers, etc., from any papers filed with the Court.  Most litigants are good at this in their pleadings.  But there is a significant drop off in attention to this rule in exhibits and other filed papers.  There can be serious consequences to running afoul of this rule both to the litigator and to the individual whose information is publicly disclosed.

7.    Attend hearings.  Parties often do not attend hearings because they expect a motion to by granted (for example, an extension of time or motion to withdraw when other counsel has appeared in the case) or because they do not have a stake in the motion between their opponent and a co-defendant.  This can be a critical mistake.  First, most judges require all parties’ attendance at all hearing on a case.  Second, you cannot guarantee that issues implicating yoru client will not be addressed at the hearing.  And if they are addressed, you cannot necessarily count upon either your opponent or your co-defendant to protect your interests.

8.     Pay attention to the court reporter.  The hardest working person in the courtroom is almost always the court reporter; help them out.  Offer a card or spell your name on the record.  Speak clearly and at a modest speed.  As much as you may feel the need to, do not speak over your opponent.  If you are on a telephone conference, announce yourself when you speak.  This both helps the reporter and makes the record much more clear.

9.    Attend hearings by phone sparingly.  In deference to the cost of bringing non-Chicago counsel to every hearing, many judges in the Northern District liberally permit attendance by telephone.  This is an enormous convenience and cost-savings, but when not used carefully can have a negative impact on your case.  It is impossible to interpret a judge’s visual cues on the phone, unless they describe them to you at which point it is far too late.  If the hearing is of any import, either attend live or send local counsel fully prepared to address all issues, if live attendance is not possible.

10.    Listen on phone hearings.  Too many lawyers when given an opportunity to argue their point during a telephonic hearing, speak until they are done.  That has the advantage of getting your point across, but you have no idea if the judge is trying to ask you a question or even stop you completely.  And when you are speaking into a speakerphone, you cannot hear anyone else, most importantly the judge, that may be trying to stop you or ask you a question.  In the best case, that leaves the judge exasperated, and in the worst case the judge may view you as disrespectful, unnecessarily argumentative and as not listening to the Court.  None of these are good results, and it is easily avoidable if you teach yourself to pause periodically.  The pauses give you the time for the Court to give you verbal cues that you could get visually or verbally in the courtroom.

Northern District of Illinois Practice Tips Nos. 1-5

Posted in Legal News

For the next five Fridays, I will be running a series of twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation.  The tips are not in a particular order, so I will not countdown backwards to tip number one.  Why twenty-five?  I found that beyond twenty five, the tips became focused upon minutia. 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 opinion 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 the first five:

  1. Draft complaints to meet both the Local Rules and the Judge’s requirements. There are pleading requirements in the Local Rules that are pretty standard, but do not make the mistake of failing to review them because they may not be the same as courts you are more familiar with. And do not stop at reading the Local Rules, check out requirements of specific judges before deciding, for example, how many unrelated parties to put into a single patent complaint. Click here for some examples of opinions to consider.
  2. Repeat plaintiffs’ allegations in your answers. Local Rules require that you repeat the complaint paragraphs in your answer. Most judges will not return your answer for failing to do so, but some will. And even if they do not, you render your answer far less useful a tool for the judge and her chambers.
  3. Deliver courtesy copies. The Local Rules require courtesy copies be delivered within one business day, and some judges’ standing orders require same day delivery. Opinions chastising counsel for failing to provide courtesy copies are surprisingly frequent. But even if your judge does not penalize you for failing to meet the courtesy copy requirements (and some will) if your motion or response is on a tight schedule you run the risk of not being fully heard. For example, if you are filing a response brief the day before a motion is to be heard and you bring your courtesy copies with you to the hearing you have only the slimmest chance that your brief is being read and digested before the hearing.
  4. Certificates of service are not required when all parties are on ECF. This may not be mission critical, but using an unnecessary certificate of service signals to your opponent that you are not well versed in the Local Rules or custom. That is not necessarily a fact that you want to give away.
  5. Signature blocks require both email and a fax number. Despite the 2008 revision to Federal Rule of Civil Procedure 11, many litigators still do not add email or fax numbers to signature blocks. I have not seen anyone sanctioned or warned for this omission yet, but you do not want to be the first.

Northern District of Illinois Excellence in Pro Bono Awards

Posted in Legal News

The Northern District of Illinois sent the following invitation to e-filers for its eleventh annual Awards for Excellence in Pro Bono and Public Interest Service next Wednesday, May 26, 2010 at 3:00pm in the Dirksen courthouse:

The Judges of the United States District Court

for the Northern District of Illinois

and

the Chicago Chapter of the Federal Bar Association

cordially invite you to attend the presentation of their

Eleventh Annual

Awards for Excellence in Pro Bono

and Public Interest Service

featuring

Lawrence Baca

President of the Federal Bar Association

as the Keynote Speaker

Wednesday, May 26, 2010, beginning at 3:00 p.m.

James Benton Parsons Memorial Courtroom

Everett McKinley Dirksen United States Courthouse

Twenty-fifth floor

219 South Dearborn Street

Chicago, Illinois

____________________________

Reception immediately following in the 25th floor lobby.

President Obama Makes Northern District of Illinois & IP Nominations

Posted in Legal News

President Obama announced a couple of nominations this week impacting the Northern District of Illinois and the national patent bar.

First, President Obama appointed WilmerHale partner Edward DuMont to the Federal Circuit.  DuMont clerked for the Seventh Circuit’s Judge Posner and was an Assistant to the Solicitor General where he briefed and argued Supreme Court cases.  DuMont currently has an appellate practice with a considerable focus on patent and intellectual property issues (click here for DuMont’s firm bio).  DuMont also spent a year working for a law firm in Bangkok, Thailand.  DuMont’s Supreme Court and varied appellate experience make him a very interesting choice to take Judge Michel’s place on the Federal Circuit bench.

Second, President Obama has nominated the Northern District’s Deputy U.S. Marshall Senior Inspector Darryl McPherson to become the Northern District’s next U.S. Marshall.  McPherson has served as a Deputy U.S. Marshall since 1999 and won a Special Recognition award for his service as lead Deputy Marshall for Judge Lefkow. 

Both nomination must be confirmed by a vote of the U.S. Senate. 

N.D. Illinois Introduces Online Transcript Ordering

Posted in Legal News

When I wrote the title to this post it was difficult to capture how significant this story is to practitioners.  The Northern District of Illinois has introduced an online transcript ordering system that can be used to order transcripts from any judge and court reporter in the Northern District.  The Northern District believes this is the first system like it in the federal courts.  This simple form — click here to access it — transforms what used to be an individualized process that was often difficult to navigate for both practitioners and the court reporters themselves because it required identifying the particular court report and then trying to reach the reporter, who likely spends most of the business day in court or back at their office performing the complex task of turning the rough transcript into the record of the court’s proceedings.  And it further simplifies the process by identifying the available delivery and timing options for the transcripts, so that the reporters do not have to explain the options to each attorney that calls them.

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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Court Keeps Case, Deferring to Plaintiff’s Chosen Forum

Posted in Jurisdiction

Kolcraft Enter., Inc. v. Chicco USA, Inc., No. 09 C 339, Slip Op. (N.D. Ill. Oct. 23, 2009) (Norgle, J.)

Judge Norgle denied defendant Chicco’s § 1404(a) motion to transfer this patent case to the Eastern District of Pennsylvania, where Chicco’s principle place of business is located. Neither court was more suited for the case in terms of speed or familiarity with the law. The Court also noted that the location of documents was neutral based upon electronic document exchange. The convenience of the parties was also neutral because one party would be inconvenienced by the decision either way. Additionally, the situs of material events was irrelevant as in most patent cases because the comparison of an accused product to a claim does not revolve around any location. 

 

As to non-party witnesses, one inventor was within the Northern District and the other was outside the subpoena power of both districts. And patent prosecution counsel also resided within the Northern District. Additionally, plaintiff agreed to depose all U.S. parties in their home districts, further diminishing that factor. Finally, the Court held that plaintiff’s choice of forum deserved significant weight. The Court, therefore, denied Chicco’s motion to transfer. 

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: 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.

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

Posted in Local Rules

While the Northern District has made clear that it is not transforming itself into a rocket docket like the Eastern District of Virginia or the Western District of Wisconsin, the newly enacted Local Patent Rules (“Rules” or “LPR”)* are going to have a significant impact on patent litigation filings in Chicago. The cases will not proceed to trial faster than the Northern District’s average for all cases of slightly more than two years, but the path to trial will be significantly different. The changes are even-handed, benefiting both patentholders and accused infringers.  One might expect even-handed Rules to have little impact on filings, but in this case patentholders will likely decide that the Rules provide enough value to overcome the portions of the Rules that benefit accused infringers.  The Rules, therefore, will draw patent cases to the Northern District. Here are the particular elements of the Rules that will attract patent plaintiffs to the Northern District:

1.      Substantive Initial Disclosures & Document Production.

LPR 2.1 requires both parties to exchange substantive, non-evasive Rule 26(a) Initial Disclosures. Furthermore, LPR 2.1(b) requires that along with its Initial Disclosures, an accused infringer produce: 1) documents sufficient to show the operation and construction of each element of any product or process specifically accused in the Complaint; and 2) copies of all known prior art. This early document production, which is generally contemplated by Rule 26 but almost never done in practice, will be a major draw for patentholders. The ability to get immediate technical information in discovery, without the expense of serving document requests, is significant. It allows patentholders to have information before preparing their Initial Infringement Contentions. It also allows patentholders to evaluate the strength of their cases early using the technical information produced by the accused infringers, before incurring significant discovery expenses.

But while LPR 2.1 will attract patent plaintiffs, it also benefits accused infringers. LPR 2.1 also requires patentholders to make an initial document production, and patentholders have a more significant obligation. They must produce not just documents sufficient to show, but all documents regarding: 1) any sale, offer for sale or use of the patented invention before filing; 2) design, reduction to practice or invention of the patented technology generally; 3) all communications with the PTO (the prosecution history) for the patents in suit and any patents from which they claim priority; and 4) ownership of the patent. Additionally, as with accused infringers, patentholders must identify which documents correspond to each of the four categories. Having this early information will allow accused infringers to evaluate their defenses early in the case and prepare for early dispositive motions such as motions challenging ownership or validity based upon a bar date. And the documents will allow accused infringers to update affirmative defenses or add counterclaims before there could be any prejudice.

Finally, the accused infringers’ production obligation regarding its products is only triggered if the patentholder specifically identifies the accused products in its complaint. This will strongly encourage plaintiffs to identify the accused products in the complaint. A standard which comports with the Twombly/Iqbal pleading standards – click here to read my article on the uneven application of the Twombly standard between patentholders and accused infringers.

2.      Defendant opens and closes Markman briefing.

Most Districts either have two rounds of concurrent claim construction briefing or a traditional opening-response-reply schedule with the patentholder opening and replying. Significantly, the Rules provide for a single set of briefs with the accused infringer—not the patent holder—submitting the initial and final briefs. Writing first and last benefits the accused infringer. But economically, the patentholder saves money by only writing one brief and can make any follow up arguments during a hearing or seek a sur-reply if the Court does not hold a hearing.

3.      Late Claim Construction briefing.

The final major draw for patentholders is the late claim construction proceedings. In addition to cost savings in the briefing process, the claim construction is scheduled during the later portion of a discovery period that is scheduled to end forty-five days after the Court rules on claim construction. Maintaining pre-claim construction uncertainty through most of discovery benefits patentholders. Furthermore, the Rules make clear that a judge can disregard early dispositive motions that would require claim construction before the claim construction contemplated by the Rules. So, patentholders may face fewer early summary judgment motions.

Conclusion

The Rules are evenhanded, benefiting both patentholders and accused infringers. But the specific benefits afforded patentholders will still drive patentholders to file in the Northern District of Illinois over other courts, some that may have faster times to trial, with different rules.

* Click here for my post analyzing the Rules and here for my post analyzing the differences between the Rules and the Proposed Rules.

N.D. Illinois Local Patent Rules: Changes From Proposed to Final Rules

Posted in Local Rules

Yesterday, October 1, 2009, the Northern District of Illinois adopted Local Patent Rules ("LPR" or "Rules"), effective immediately — click here for a copy of the Rules.  According to LPR 1.1, the Rules apply to all cases filed in or transferred to the District after October 1, 2009.  Judges are also free to apply all or part of the Rules to currently pending cases.  Late yesterday, I analyzed the schedule contemplated by the Rules — click here to read that post. 

In this post, I am going to focus on the handful of substantive changes between the new Rules and proposed local patent rules ("Proposed Rules") first issued earlier this year for the benefit of those members of the Northern District Bar that have closely followed the enactment of these Rules.*   As a side note, the Rules show that the Court seriously considered the comments made during the public session to discuss the Proposed Rules earlier this year.  The overall schedule set out by the Rules is also almost identical to that created by the Proposed Rules, with a few additions additions and a lengthening of about two weeks.

Over the next several weeks, I will break down each LPR in more detail.  I will also post a schedule of the timing contemplated by the Rules in a table format, but for now here are highlights of the significant changes between the Proposed Rules and the Rules as enacted yesterday:

Some of the more significant changes the Court made from the Proposed Rules to the LPR as enacted:

  • Early Dispositive Motions (LPR 1.1 & 6.1):  A statement was added in LPR 1.1 that the Court may defer any motion filed before the LPR Section 5 claim construction process until after the Claim Construction Proceedings.  A new comment to LPR 6.1 explains that the Court has discretion in determining whether to consider "early" summary judgment motions;
  • Protective Order (LPR 1.4):  The Proposed Rules requirement that the parties file an agreed Protective Order in the form of LPR Appendix B — click here for the form Protective Order — seven days before exchanging LPR 2.1 Initial Disclosures was removed.  Instead, the Appendix B Protective Order will be deemed to be in effect from the date of the Initial Disclosures and either party can seek to modify it;
  • Meaningful Initial Disclosures (LPR 2):  The initial comment requires that the LPR 2.1 Initial Disclosures be "meaning – as opposed to boilerplate – and non-evasive.  This is not a change from the Proposed Rules, but is worth an additional mention;
  • Initial Disclosures (LPR 2.1):  The Initial Disclosures deadline remains fourteen days after defendant files its answer, but in the event that defendant files counterclaims the deadline is now extended to fourteen days after plaintiff answers the counterclaims.  It is also worth mentioning again although it is not an addition to the Proposed Rules, that all parties have affirmative production requirements, outlined in LPR 2.1(a) & (b), along with the preparation and exchange of Initial Disclosures;**

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Analysis of N.D. Illinois Local Patent Rules

Posted in Local Rules

Today, October 1, 2009, the Northern District of Illinois adopted Local Patent Rules ("LPR" or "Rules"), effective immediately — click here for a copy of the Rules.  According to LPR 1.1, the Rules apply to all cases filed in or transferred to the District after October 1, 2009.  Judges are also free to apply all or part of the Rules to currently pending cases.  The new Rules are substantively very similar to the proposed local patent rules ("Proposed Rules"),* with a series of modifications that shows that the Court seriously considered the comments made during the public session to discuss the Proposed Rules earlier this year.  The overall schedule is also almost identical, with additions and a lengthening of about two weeks.

Over the next several weeks, I will break down each LPR in more detail.  I will also post a schedule of the timing contemplated by the Rules in a table format, but for now here are highlights of the new Rules:

  • Protective Order:  A standard protective order is deemed entered as of the exchange of Initial Disclosures with any party free to seek modifications, to avoid discovery delays being blamed upon entry of a protective order (LPR 1.4);
  • Initial Disclosures & Production:  Automatic document production requirements of both parties claiming patent infringement and accused infringers when Initial Disclosures are served and of accused infringers when Initial Non-infringement and Invalidity Contentions are served;**
  • Initial Contentions:  Fourteen days after Initial Disclosures, parties claiming patent infringement serve Initial Infringement Contentions.  Fourteen days after Initial Infringement Contentions are served, accused infringers serve Initial Non-infringement, Unenforceability and Invalidity Contentions.  Fourteen days later, parties claiming patent infringement parties claiming patent infringement serve an Initial Response to Invalidity Contentions;
  • Final Contentions:  Twenty-one weeks after Initial Infringement Contentions, parties claiming infringement serve Final Infringement Contentions, and accused infringers serve Final Unenforceability and Invalidity Contentions at the same time.  Twenty-eight days later, accused infringers serve Final Non-infringement Contentions and parties claiming patent infringement serve Final Enforceability and Validity Contentions (after the final contentions, leave of Court is required for any amendments);

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Senator Durbin Sends Northern District Judicial Nominees List to President Obama

Posted in Legal News

Illinois’s senior senator Dick Durbin recently sent President Obama the names of seven nominees to fill three vacancies on the Northern District of Illinois bench.  The nominees are AUSA Edmond Chang, Illinois appellate Judge Sharon Coleman, Magistrate Judge Susan Cox (click here to read about Judge Cox’s IP opinions in the Blog’s archives), Thomas Durkin, Gary Feinerman, Mary Rowland and Magistrate Judge Maria Valdez (click here to read about Judge Valdez’s IP opinions in the Blog’s archives). 

Here are biographies of each nominee from Senator Durbin’s press release:

Chang has served as an assistant U.S. attorney in the Northern District of Illinois since 1999, and he is currently the chief of appeals.  He previously worked as an associate at Sidley Austin, and as a judicial law clerk to Judge Marvin Aspen in the Northern District of Illinois and Judge James Ryan on the U.S. Court of Appeals for the 6th Circuit. He has served as an adjunct professor at Northwestern University law school, where he graduated with honors and served on the law review. He lives in Northbrook.

Coleman is a judge on the Illinois Appellate Court, following her election in 2008. She served as a judge on the Circuit Court of Cook County from 1996 to 2008. Before that, she was a supervisor in the Cook County state’s attorney’s office and an assistant U.S. attorney in the Northern District of Illinois. She has served on the boards of numerous bar associations and public interest organizations. She is a graduate of Washington University law school in St. Louis, and she lives in Chicago.

Cox has been a U.S. Magistrate Judge in the Northern District of Illinois since 2007. She previously worked as a litigator at several Chicago law firms, as an assistant U.S. attorney in the Northern District of Illinois, and as a judicial law clerk to Judge Wayne Andersen in that district. Judge Cox has served on the boards of many bar associations and public interest organizations. She has taught as an adjunct professor at DePaul University law school, and she is a graduate of Boston University law school, where she served on the law review. Judge Cox lives in LaGrange.

Durkin has been a partner at Mayer Brown since 1993 and was the chair of the firm’s pro bono committee for nearly a decade. He previously served as an assistant U.S. attorney in the Northern District of Illinois for over twelve years.  He served as a judicial law clerk to Judge Stanley Roszkowski in the Northern District of Illinois. He is a graduate of DePaul University law school, where he has taught as an adjunct professor. Durkin lives in Downers Grove.

Feinerman has been a partner at Sidley Austin since 2007. From 2003 to 2007, he served as Illinois’s solicitor general, and before that he was a partner at Mayer Brown.  He has argued numerous cases before the U.S. Supreme Court and Illinois Supreme Court. He served as a judicial law clerk to Justice Anthony Kennedy on the U.S. Supreme Court and Judge Joel Flaum on the U.S. Court of Appeals for the 7th Circuit in Chicago. He has served on numerous boards and is the president of the Appellate Lawyers Association of Illinois. He graduated from Stanford Law School and lives in Winnetka.

Rowland is a partner at the Chicago law firm of Hughes Socol Piers Resnick & Dym, where she has worked since 2000. From 1990 to 2000, she worked at the Federal Defender Program in Chicago, including five years as the chief appellate attorney. She has served on numerous boards. She was a judicial law clerk to Judge Julian Cook in the Eastern District of Michigan, and she is a graduate of the University of Chicago law school. Rowland lives in Oak Park.

Valdez has been a U.S. Magistrate Judge in the Northern District of Illinois since 2005. From 1992 to 2005, she was the Chicago regional counsel and staff attorney for the Mexican American Legal Defense and Educational Fund. Prior to that, she worked as a Deputy Federal Public Defender in California. She has served on many boards. She is a graduate of the University of California-Hastings law school, and she lives in Western Springs.

A hat tip to Ameet Sachdev at the Chicago Tribune’s Chicago Law Blog for identifying this story last week.

Northern District of Illinois: Tips for Electronically Opening New Cases

Posted in Pleading Requirements

Last week, the Northern District provided tips for opening new cases using ECF.  The most important tip seems to be that the Clerk’s office is there to help if you have any problems.  Here they are: 

  • During the initial case opening sequence, select the correct divisional office (Chicago or Rockford) in which you want to file your case.

  • If you want to practice opening a case, use the training application here, not a live ECF session. 
  • If you make a mistake while opening your new civil case, do not open a new case or complete the current case with the mistake.  Instead, exit the case opening sequence before it is complete, if possible, and call the Clerk’s Office at 312-582-8727.  They will help you correct the mistake.

      

  • If you have opened a case incorrectly, do not open another case, call the Clerk’s office and they can help fix the mistake in the originally opened case. 
  • If you are not sure how to open a civil case, you can find instructions at:  E-Filing Information
  • If you are not able to pay the filing fee while e-filing your initiating document, use one of the events in the Civil/Other Filings/Notices category to pay the fee.
  • When submitting a Notice of Removal, enter the Court name and Case number for the State court case. (See Step No. 35 in the instructions for opening a civil case). The parties should be added as they were named in the complaint filed in the State Court. 
  • The summons form(s)should be emailed to intake_ilnd@ilnd.uscourts.gov. You should not attach them to the complaint or efile them. 

Memorial Service for Judge Moran

Posted in Legal News

The Northern District recently sent out the following notice of a memorial service for Judge Moran to all e-filers:

The Judges of the United States District Court

for the Northern District of Illinois

cordially invite you to attend the

Memorial Service

in Remembrance of

Honorable James B. Moran

Monday, July 13, 2009, beginning at 3:30 p.m.

James Benton Parsons Memorial Courtroom

Everett McKinley Dirksen United States Courthouse

Twenty-fifth floor

219 South Dearborn Street

Chicago, Illinois

Reception immediately following in the 25th floor lobby,

Please RSVP by July 9, 2009 via e-mail

To JudgeMoranMemorialService@ilnd.uscourts.gov