Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

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:

• Mark Ouweleen of Bartlit Beck
   
• David Callahan of Kirkland & Ellis

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.

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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.

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IP Law & Business recently named its top 50 IP lawyers under 45 years old (free registration required).  Two of those 50 are Chicagoans -- David Callahan and James Malackowski.

• David Callahan is an IP litigator and partner at Kirkland & Ellis.  As I have mentioned before, I had the opportunity to work with Callahan early in my career.  So, I can confirm that he is a top notch litigator.  Here is what IP Law & Business said about Callahan:

A political science major from the University of Chicago, David Callahan learned electronic warfare, including cryptography, as a U.S. Army Reserve captain. The military discipline has served him well. A University of Michigan Law School grad, Callahan has commanded the defense in key patent infringement wins for 3M, Amazon.com, and Gast Manufacturing in cases covering everything from one-click Internet payment systems to chewing gum additives and dental compounds. He has excelled at big-ticket defense cases involving multiple patents and parties, where his leadership and organizational skills-to say nothing of his legal marksmanship-force plaintiffs to duck.

• James Malackowski is the President, CEO and founder of  Ocean Tomo, a Chicago-based and IP-focused merchant banc.  Here is what IP Law & Business said about Malackowski:

This University of Notre Dame-trained CPA has made a name as a patent market-maker. Twenty years ago he cofounded a firm that did patent valuations. In 2003 Ocean Tomo started offering investment banking services, and it broke new ground in 2006 with the first live auction for IP. The company has conducted six so far-the most recent in April in San Francisco-that have generated $70 million in transactions, including the $15 million sale of guitarist Jimi Hendrix's catalog and the $6 million sale of patents related to digital systems media and management. The latest innovation from Malackowski? He is trying to market insurance that would lessen the cost to companies of patent troll attacks.

Congratulations to both Callahan and Malackowski.  The honor is well deserved for both men.

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Using nonprivileged documents that are connected to privileged documents, such as fax coversheets or cover emails used to send a privileged report, to question a witness regarding the related privileged documents can waive the privilege.  Applying Seventh Circuit law (the privilege questions at issue are unrelated to substantive patent law, so Federal Circuit law does not apply), the Court held that plaintiff Abbott waived privilege with respect to an entire document where:  1) Abbott produced a fax coversheet from a document over which it had claimed attorney-client and work product privilege; and 2) used that cover sheet in a line of questioning regarding the underlying document, despite Abbott’s decision not to produce the underlying document.

There are several useful practice tips to draw from this case. First:  fax cover sheets that do not contain separately privileged information are generally not privileged themselves. Of course, there are exceptions and nuances to this general rule, but I suspect that many litigators claim privilege over coversheets that have no more information on them than what must be included in the privilege log anyway. In this case, the remainder of the fax was a marked-up copy of a patent application at issue in the case, but the cover sheet made no mention of the substance or title of the included document and, therefore, the cover sheet itself was not privileged.

At the beginning of my career a wise attorney  -- David Callahan of Kirkland & Ellis -- told me that privilege logs should be reviewed by at least two attorneys before they are finalized. He also drilled into me that you should never simply push the task of logging privileged documents to the youngest associate on a case. Privilege decisions are complicated and the ramifications from privilege log mistakes can be very serious. As the youngest associate on all of my cases at the time, I was thrilled by his sage advice, and I have become more convinced of it over time.

The final practice tip:  you must make all of your arguments. Attorneys tend to focus their arguments only on either the attorney-client privilege or the work product privilege, excluding the other. In this case, Abbott alleged that the document was protected by both work product and attorney-client privilege, but did not bother proving that the document was work product. The Court noted that waiver of attorney-client privilege does not automatically waive work product protection, and did not address work product protection because Abbott had not made its case as to work product.

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