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;**
- Initial Infringement Contentions (LPR 2.2(e)): In addition to identifying direct and indirect infringement in Initial Infringement Contentions, where a direct infringement is based upon joint acts of multiple parties, each party’s direct infringement role must be described;
- Final Infringement, Unenforceability and Invalidity Contentions (LPR 3.1): The Rules require that the party claiming infringement serve its Final Infringement Contentions twenty-one weeks after serving Initial Infringement Contentions. And the Rules require the accused infringer to serve its Final Unenforceability and Invalidity Contentions at the same time. The Proposed Rules originally required just Final Invalidity Contentions and gave the accused infringer twenty-eight days after the Final Infringement Contentions to serve them;
- Final Non-infringement, Enforceability and Validity Contentions (LPR 3.2): The Rules require that the accused infringer serve its Final Non-infringement Contentions twenty-eight days after service of the Final Infringement Contentions. And the Rules require that the party claiming infringement serve at the same time its Final Contentions in Response to any Final Unenforceability and Invalidity Contentions;
- Amendment of Final Contentions (LPR 3.4): The Rules add the following example of good cause for amending Final Contentions — the Court adopting a construction different from the construction proposed by the party seeking to amend;
- Discovery Concerning Opinions of Counsel (LR 3.6): The Rules add a deadline — thirty-five days before the close of fact discovery, also seven days after the Court enters its claim constructions — for an accused infringer to disclose whether it will rely upon an opinion of counsel and outlines the categories of information that must be produced at that deadline should the party rely upon an opinion;
- Claim Construction Briefs (LPR 4.2(a) & Comment): The opening brief deadline was extended from one week from twenty-eight to thirty-five days after the LPR 4.1 exchange of claim terms. The Comment to LPR 4.2 explains that the Rules only contemplate three briefs because of the expected hearing, but that a judge may choose not to have a hearing, which could be grounds for allowing a sur-reply. The Comment also explains that a judge can choose not to have a Reply Brief;
- Claim Construction Declarations (LPR 4.2(a) & (c)): Any party that offers witness testimony in its briefing must include a sworn declaration and make the witness promptly available for deposition. If the Responsive Brief includes such a declaration, the Reply Brief deadline is extended seven days from fourteen to twenty-one days; and
- Claim Construction Hearing (LPR 4.3): Hearing exhibits, including demonstratives, must be exchanged at least three days before a claim construction hearing.
** 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.