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);
- Post-Final Contention Amendments: Amendments to Final Contentions are not allowed absent Court order upon a showing of good cause and an absence of unfair prejudice to the opposing party;
- Deadline for Stays Pending Reexamination: No party can seek a stay pending reexam after serving its Final Contentions;
- Claim Construction: The claim construction process begins two weeks after defendant’s final invalidity contentions are served with an extension of terms and proposed constructions;
- Claim Construction Briefing: Thirty-five days after exchanging terms, accused infringers file opening claim construction briefs along with a joint appendix by all parties including the patents in suit and their prosecution histories consecutively paginated. Parties claiming patent infringement have twenty-eight days to file response briefs. Accused infringers have fourteen days to file a reply. Any party offering witness testimony must include a sworn declaration and promptly make the witness available for deposition. If such testimony is included in a response brief, the reply deadline is extended by seven days;
- Claim Construction Hearing: The Rules contemplate a claim construction hearing twenty-eight days after the reply brief, but the judge can decline a hearing. The lack of a hearing may be a reason to allow a sur-reply brief. A judge also may decide not to accept a reply brief. The parties must exchange all exhibits, including demonstratives, at least three days before a claim construction hearing;
- Fact Discovery Close: Fact discovery closes forty two days after the claim construction rulings, which triggers expert discovery followed by a dispositive motion deadline; and
- Trial: A trial is contemplated approximately two years after the filing of the complaint.
** This is one of the major changes that set the Northern District’s LPR’s apart from those of other districts and that will have a significant impact upon the discovery process. I will focus more on this set of requirements in an upcoming post.