On May 29, 2025 from 4:30 p.m. – 6:00 p.m. CT, the Federal Bar Association Chicago Chapter, the Asian American Bar Association of Greater Chicago, and the Northern District will host a special event to mark Asian American and Pacific Islander Heritage Month reflecting on the landmark United States v. Wen Ho Lee case. 

The program will examine the espionage investigation of Dr. Lee, suspected of sharing nuclear secrets with China.  It will analyze the investigation, the legal strategy leading to his release, and the lasting implications for both due process and civil rights. 

The moderators for the event are:

  • Stephen Chahn Lee, Solo Practitioner, AABA First Vice President, Former Federal Prosecutor; and
  • Vikas K. Didwania, Assistant U.S. Attorney, former Senior Policy Advisor for Criminal Justice at the White House

This free event held at the U.S. District Courthouse, 25th Floor, is open to the public and will be followed by a reception.  Click here to register on Eventbrite.

Pending approval, 1.5 hours of continued legal education are being offered.

On May 8, 2025 from 12:00 p.m. – 4:00 p.m. CT, The University of Illinois Chicago School of Law Center for Intellectual Property, Information and Privacy Law will host the Second Annual Information and Privacy Law Program covering an expansive list of pressing legal topics including agentic AI and DOGE privacy issues.    

The in-person event will be held at UIC School of Law, 300 S. State Street, Chicago, IL, 60604. In-person attendance costs $25, including lunch.  It is free to attend via Zoom.   

Click here to register.

Highlights of the agenda include:

  • Navigating Legal and Ethical Challenges of Agentic AI
    • Moderator: Sean Vargas-Barlow, Senior Counsel, Axiom
    • Panelists:
      • Natasha Allen, Partner, Foley & Lardner LLP
      • Dennis Garcia, Assistant General Counsel, Microsoft Corporation
      • Elise Houlik, Chief Privacy Officer, Intuit
  • DOGE and Data Privacy: Legal and Technical Analysis in the Age of AI and Government Efficiency
    • Moderator: Isaac Pflaum, Director of Complex Software Litigation, Quandary Peak Research, Inc.
    • Panelists:
      • Kaler Hazen, Senior Consultant, Data Privacy
      • Iman Sadeghi, Principal Software & Technology Consultant, Quandary Peak Research
      • Rebecca Williams, Senior Strategist for the Privacy & Data Governance Unit at the ACLU
  • Privacy Compliance and Litigation Trends with the rise of AI and Patchwork of Privacy Regulations
    • Moderator: Ken Suh, Counsel, Troutman Pepper Locke LLP
    • Panelists:
      • Dan Allard, Claims Manager, Beazley
      • Daniel Cotter, Member, Dickinson Wright PLLC

The Northern District of Illinois has taken a significant step toward improving public accessibility by refreshing its website.

As IP practitioners who regularly navigate federal court resources, this development is particularly welcome. The website is much more user friendly while maintaining the key information attorneys and the public require.

The redesign introduces several notable improvements:

  • Multi-language support: A particularly important addition that enhances accessibility for the diverse population served by the Northern District.
  • Mobile responsiveness: The new sites adapt seamlessly across devices, allowing practitioners to access critical information whether they’re at their desks or checking case updates on their phones while at court.
  • Streamlined navigation: Perhaps most valuable to frequent users, the reorganized resource groupings and more intuitive link placement should reduce the time spent searching for specific information.

Why This Matters to IP Practitioners

For those of us handling intellectual property matters in the Northern District, efficient website access directly impacts our practice. Whether checking local rules specific to patent cases, reviewing a judge’s standing orders, or accessing electronic filing systems, a well-designed court website can significantly streamline these routine but essential tasks.

The Clerk’s Office deserves recognition for this update, which clearly aligns with their stated mission of “serving the Court and all people having business before the Court” while demonstrating “a commitment to providing the highest level of service.”

Have you explored the new websites yet? What features do you find most helpful? Let us know in the comments. My only nit is that the ECF / Pacer access tile is the last tile on the ECF page and it took me awhile to find it the first time I used the new site.

The Chicago legal community will gather next week to celebrate the Northern District’s of Illinois twenty-fifth annual Awards for Excellence in Pro Bono and Public Interest Service, in partnership with the Federal Bar Association at the Everett McKinley Dirksen United States Courthouse.

I am particularly proud to announce that my Holland & Knight colleagues, Melissa Gold and Timothy Ray, will be among this year’s distinguished honorees receiving the Excellence in Pro Bono Service award. Their dedication to serving those most in need is one of many reasons I am proud to work with each of them.

The ceremony will take place on May 1, 2025, at 1:00 p.m. in the James Benton Parsons Memorial Courtroom, with Federal Bar Association National President Glen R. McMurry delivering the keynote address. Chief Judge Virginia M. Kendall and Chicago Chapter FBA President Erin M. Franzblau will also offer remarks.

This annual event recognizes attorneys who have gone above and beyond in providing pro bono and public interest legal services before the Northern District of Illinois. The honorees represent a diverse cross-section of Chicago’s legal community, from solo practitioners to attorneys at international law firms, all united by their commitment to ensuring access to justice.

Among this year’s honorees is Alan Mills of The Uptown People’s Law Center, who will receive the Lifetime Achievement Award for excellence in public interest and pro bono service. The ceremony will also posthumously honor Michael G. Babbitt of Willkie Farr & Gallagher LLP.

The program is free and open to all attorneys. I encourage everyone to attend this inspiring celebration of legal service and excellence.

Congratulations to Melissa, Tim, and all the honorees for their extraordinary contributions to our profession and our community.

My partner Jake Schneider wrote a very thoughtful and important article on his IP/Decode blog about the impact of the Patent Office’s rescinding former Director Vidal’s memo regarding discretionary denials of inter partes review (IPR) proceedings that are subject to parallel district court litigation. Removing the directives in that memo are likely to have significant impacts on patent litigation overall. Jake’s article linked here and reposted below are worth a read because they provide a thoughtful, succinct overview of the history of parallel IPRs and district court litigation as well as what rescinding the memo will mean going forward.

Rescission of the Fintiv Guidance Memorandum, and What Comes Next

By Jacob W. S. Schneider

The U.S. Patent and Trade Office (PTO) on February 28, 2025, rescinded former PTO Director Kathi Vidal’s June 21, 2022 memorandum (Memorandum) addressing discretionary denial of inter partes review (IPR) of patents that are subject to parallel district court litigation. The Memorandum had added some certainty to the uncertain procedures under Apple Inc. v. Fintiv, Inc., and its rescission will likely renew old challenges for IPR petitioners.

This post will explore the evolution of discretionary denials under Fintiv, then look to the future now that the Memorandum is no longer controlling.

IPR Proceedings

The America Invents Act (AIA) created a new form of patent reexamination before the PTO, an IPR. 35 U.S.C. §§ 311-19. An IPR allows a petitioner to challenge the validity of a U.S. patent in view of printed prior art before the Patent and Trial Appeal Board (PTAB or Board). The patent owner has the right to participate in the proceedings. After a petition is filed and the patent owner submits its preliminary response, a Board consisting of three administrative judges decides whether to grant or deny the IPR’s institution. An institution decision usually takes six months following a petition’s filing. Eleven months following the institution decision, the Board will hold a hearing. The Board will issue a final written decision regarding the validity of the patent one month after the hearing.

The Early Fintiv Era

The AIA gives the Board discretion to deny institution, and this discretion resulted in the 2020 Fintiv ruling. See 35 U.S.C. § 314(a). In Fintiv, the Board evaluated “whether efficiency and integrity of the system are best served by denying or instituting review” when a parallel district court litigation was slated for trial six months later. IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020).

Petitioner Apple had filed on Oct. 28, 2019. In patent owner Fintiv’s February 15, 2020 Preliminary Response, it argued that the approaching November 16, 2020 trial date compelled the Board to exercise its discretion to deny institution because the district court trial would conclude before the Board’s final written decision was issued. In such a case, the district court and the Board could reach different conclusions, the Board would be engaging in duplicative efforts, and the petitioner could receive “two bites at the invalidation apple.”

The Board requested further briefing on the issue and laid out six factors that it would consider when rendering its decision:

1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted

2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision

3. investment in the parallel proceeding by the court and the parties

4. overlap between issues raised in the petition and in the parallel proceeding

5. whether the petitioner and the defendant in the parallel proceeding are the same party

6. other circumstances that impact the Board’s exercise of discretion, including the merits

Since its issuance, Fintiv has frustrated petitioners who face a quickly approaching trial date. Petitioners regularly traverse these six “Fintiv Factors” while arguing that institution should not be denied; and patent owners argue the opposite.

While the Fintiv Factors have existed for nearly five years, how petitioners and the Board evaluate these factors has shifted dramatically over that period. The PTAB initially used Fintiv to deny a large number of petitions. In 2020 and 2021, the PTAB denied 167 and 123 petitions using their Section 314(a) discretion, respectively, an increase of over 45 and 84 such denials in 2018 and 2019, respectively. To place themselves on better footing relating to Factor 4 (overlap with the district court proceedings), petitioners began stipulating to abandoning certain invalidity defenses in district court if institution occurred. In other words, if the Board did take up the invalidity issues raised in the petition, then the petitioners would not bring the corresponding invalidity defenses at trial. These stipulations had various scopes:

  • Sand Revolution Stipulations – stated that petitioners would not bring any invalidity grounds at trial that were addressed in the petition. See Sand Revolution II, LLC v. Cont’l Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020). Here, the petitioner gave up only the exact arguments found in the petition.
  • “Sand Revolution Plus” Stipulations – stated that petitioners would not bring any invalidity grounds at trial that were based on any of the prior art references included in the petition. If a prior art reference appeared in the petition, then that reference would not appear at trial.
  • Sotera Stipulations – stated that petitioners would not bring any invalidity grounds at trial that were addressed, or could have been addressed, in their petition. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 13-20 (PTAB Dec. 1, 2020). This effectively amounted to a wholesale loss of any invalidity argument at trial based on printed material.

As the broadest type, a Sotera stipulation gave a petitioner the best chance at avoiding a Fintiv discretionary denial, but each petitioner needed to balance the factors. For example, a particularly strong petition might fare better under Factor 6 (the merits), which may caution for a narrower stipulation. Still, whether a petition would face Fintiv denial was largely difficult to predict and made the IPR process uncertain for petitioners.

The Memorandum Era

Vidal’s Memorandum offered guidance regarding Fintiv denials, and provided some clarity to petitioners who were otherwise weighing six factors and hoping the Board would not exercise discretion to deny institution. First, the Memorandum stated that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a [Sotera] stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” This guidance was clear: file a Sotera stipulation and the Board will not deny institution based on Fintiv. Second, the Memorandum also emphasized the importance of Factor 6 (the merits) in a Fintiv analysis: “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” This guidance required that the Board, even if it was inclined to deny institution under Fintiv, reach the merits of the petitioner’s arguments.

In February 2023, Vidal provided more clarity regarding Fintiv in her CommScope Technologies LLC v. Dali Wireless, Inc. decision. IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023). There, the Director clarified that “[t]he Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question [Factor 6].” In other words, a Fintiv denial required the Board to address the petition’s merits, so invoking Fintiv alone would not provide an easy method to dispose of the petition.

In the time since the Memorandum was issued, Fintiv denials became much less prevalent, and petitioners became more emboldened to offer narrower stipulations than Sotera. Many petitions did not address Fintiv upfront, but instead argued that the petition’s merits were strong so Fintiv was not in play. If a patent owner forcefully argued that Fintiv denial was still appropriate, the petitioner would request leave to file a reply that more fully addressed Fintiv.

The Post-Memorandum Era

This customary Fintiv practice before the PTAB was upended on February 28, 2025, when the PTO rescinded its Memorandum. The recission simply states,

Today, the USPTO rescinded the June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (Memorandum).

Parties to post-grant proceedings should refer to Patent Trial and Appeal Board (PTAB) precedent for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A).

To the extent any other PTAB or Director Review decisions rely on the Memorandum, the portions of those decisions relying on the Memorandum shall not be binding or persuasive on the PTAB.

Without the Memorandum’s guidance – and with precedent stemming from the Memorandum no longer “binding or persuasive” – parties to an IPR are now effectively cast back to the Early Fintiv Era. Petitioners must return to the six-factor balancing test and argue that their facts weigh in favor of institution despite a parallel district court proceeding.

Some factors are outside of a petitioner’s control (e.g., the trial date and identical parties to both proceedings), but petitioners should focus on the facts that they can control:

  • Choosing to File a Petition Quickly After a Complaint Is Filed. Defendants have a year to file their IPR petition, but the new Fintiv landscape will require them to act fast. Petitioners will need to analyze and understand the challenged patent, search for quality printed prior art and likely retain an expert and draft a petition – all within a few months of being served a complaint. Moving fast will favor the petitioner under Factors 2 (proximity to court’s trial date) and 3 (current investment in district court proceedings).
  • Selecting the Correct Stipulation Language. Although a Sotera stipulation is no longer a “silver bullet” to defeat Fintiv denial, it will still strongly favor institution by removing issue overlap under Factor 4.
  • Drafting a Quality Petition. Factor6focuses on the merits of the petition, so while there will be a race to file as quickly as possible, time should be taken to ensure that petition presents strong grounds.

As with any discretionary standard built on a multifactor test, it will take time to learn how the PTAB will apply Fintiv going forward. Practitioners before the PTAB will need to monitor and observe how the Board addresses Fintiv over the next several months to develop clear strategies now that uncertainty has returned to the proceedings.

The U.S. District Court for the Northern District of Illinois and the Federal Bar Association Chicago Chapter proudly announce the Courthouse Book Drive.  Throughout March 2025, donations of new or gently used children’s books (grades K-8) are being accepted for the American Dreams Playroom at the Dirksen Federal Building.  This incredible effort ensures that every child attending a naturalization ceremony receives a book to take home.

New or gently used books can be dropped off at the following locations:

•           Dirksen Lobby – 219 S. Dearborn Street, Chicago, IL 60610

•           Hamilton & Hennessy, LLC – 53 W. Jackson Blvd., Suite 620, Chicago, IL 60604

•           Inspire11 – 1 N. Dearborn St., Suite 1150, Chicago, IL 60602

Click here for the Courthouse Book Drive Flyer.

The Supreme Court Historical Society, the Northern District of Illinois, and the ABA’s Division for Public Education are sponsoring a program for Chicago area high school students. Students participating in the Supreme Court and My Hometown program will investigate the judicial branch by examining the local Sixth Amendment case of Escobedo v. Illinois (1964). Students will have the opportunity to network with and learn from federal and state judges, attorneys, historians, professors, and community members. It looks like an incredible opportunity for high school students.

It will take place during the 2025 fall semester and is free to current ninth, tenth and eleventh grade students. A two-day orientation is scheduled to take place at the Everett McKinley Dirksen U.S. Courthouse, 219 South Dearborn Street on July 22-23, 2025 from 9:00 am – 3:00 pm. The program sessions will take place on select Thursdays from 5:00 pm – 7:00 pm during the semester.

A letter of recommendation from a local educator or community member who can attest to their academic and personal qualifications is required. Applications and letters of recommendation are due by April 25, 2025.

For more information and to complete the application, click here.  Email your letters of recommendation to nmaffei@supremecourthistory.org.

If you have any questions, please email Juliet Morris (jmorris@supremecourthistory.org).

To view the ILND Hometown Flyer click here.

On February 26, 2025 from 3:00 p.m. to 4:30 p.m. the U.S. District Court for the Northern District of Illinois, in collaboration with the Black Women Lawyers’ Association of Greater Chicago, Inc., the Cook County Bar Association, and the Black Men Lawyers’ Association, is hosting a remarkable event titled “Lift Every Voice”.

In honor of Black History Month, this impressive event will celebrate diversity on the federal bench, recognize the accomplishments that led to the U.S. District Court for the Northern District of Illinois being named as Chicago Lawyer’s 2024 “Person of the Year”, and feature musical selections, black history trivia questions, and a panel discussion.

Daniel Cotter, the Emmy-nominated co-producer of “Bridging the Divide,” 2014-15 Chicago Bar Association President, and current Dickinson Wright partner will moderate an impressive panel, including:

  • The Hon. David Coar (retired), who served the Northern District for nearly 25 years and chaired the merit selection committee of Senators Durbin and Duckworth;
  • The Hon. Frank Valderrama, the first Panamanian-American to serve as an Article III judge in the Northern District; and
  • The Hon. Jeannice Appenteng, the first African-American woman to serve as a Northern District magistrate judge.

The event will take place at the U.S. District Court, James B. Parsons Ceremonial Courtroom.

Please register by clicking here.

Effective February 10, 2025, the Northern District of Illinois implemented a new procedure for submitting and issuing summonses.  Summonses must be submitted via CM/ECF. The Northern District will no longer accept or issue summonses via email.

Benefits of the new procedure:

  • Increased Efficiency: Using CM/ECF ensures a more streamlined process, reduces delays and improves issuance speed.
  • Enhanced Accessibility: Summons status can be monitored directly within the CM/ECF system.
  • Uniform Processing: The centralized system allows for consistent handling of summons submissions, minimizing errors or miscommunications.

For detailed instructions on how to file the summons through CM/ECF, please click here. 

Unicolors, Inc. v. Shewin Flagship Shops, No. 24 C 2987, (N.D. Ill. Oct. 24, 2024) (Gottschall, J.).

Judge Gottschall, in this Schedule A case, held that the Court lacked personal over defendant Shewin, a Chinese entity allegedly doing business on Amazon. The Court held that the Seventh Circuit requires more than proof of Shewin’s use of an interactive website to create personal jurisdiction. The website must be used to conduct business with Illinois consumers. The Court noted that almost all Seventh Circuit cases finding personal jurisdiction had in common proof of a purchase by an Illinois consumer and a product shipped to Illinois. This case was unique amongst Schedule A cases in that there was no evidence of a test sale to Shewin. Having held that the Court lacked jurisdiction, the Court could not grant plaintiff Unicolors even limited jurisdictional discovery. The Court also dissolved its preliminary injunction in light of the standing decision.

Finally, the Court denied Shewin standing to move to quash a third party subpoena. Shewin claimed that a response to the subpoena could put Shewin’s trade secrets at risk. That could confer Shewin a third party right to challenge the subpoena. But Shewin’s conclusory trade secret allegations were insufficient to create standing to challenge the subpoena. Furthermore, Shewin’s more specific allegations made in reply were waived because they were not made in Shewin’s opening papers.