I am working on some additional analysis of the Local Patent Rules, after I finish with a trial in the next several weeks. But for now, this Chicago Daily Law Bulletin story quotes me and several others about the impact of the Rules:
New rules could boost patent filings
By Jerry Crimmins
Law Bulletin staff writer
New rules for patent litigation that have been in effect here for only a month are expected to increase patent litigation in the Northern District of Illinois, local lawyers say.
Until Oct. 1 the Northern District of Illinois did not have standard local rules for the scheduling of events in patent cases, according to these lawyers.
"I think [the rules] will increase filings … for a couple reasons," said R. David Donoghue, who writes the Chicago IP Litigation Blog.
"They benefit plaintiffs in a few ways that would draw plaintiffs to file their claims in the Northern District of Illinois when they can," Donoghue said.
Donoghue is a partner at Holland & Knight LLP.
The rules will "speed up the average length of time in patent cases from filing to trial," said Allan J. Sternstein, director of the Intellectual Property and Intellectual Property Litigation Department at Dykema, Gossett PLLC.
Yet the rules "will maintain sufficient time so the case can get done in a manner beneficial to both parties," Sternstein added. "Simply stated, it won’t be too fast. It won’t be a rocket docket.
"The biggest advantage," Sternstein said, is "it gives the attorneys and clients a much more solid foundation on which to base budgets and scheduling."
That in itself will bring more patent litigation to Chicago, Sternstein predicted.
Local patent lawyers on the Litigation Committee of the Intellectual Property Law Association of Chicago certainly saw it that way, he said.
"A lot of local patent attorneys felt a lot of the business was going to places where they did have local patent rules," according to Sternstein.
Bradford P. Lyerla of Marshall, Gerstein & Borun LLP, also agreed the new rules could bring more patent cases to the Northern District of Illinois. "No question about that."
But "I wouldn’t expect to see a huge uptick," Lyerla noted.
He said the customs followed in the Eastern District of Texas and in Delaware are more advantageous to plaintiffs in patent cases so those places will continue to attract more filings.
Lyerla is a trial lawyer who focuses on patent and trade secret litigation.
The new rules were drafted by a committee of lawyers affiliated with the Intellectual Property Law Association of Chicago and four federal judges here.
Judge Matthew F. Kennelly chaired the drafting committee, which also included Judge James B. Zagel, Judge Amy St. Eve and Judge James F. Holderman, chief judge of the U.S. District Court here.
Sternstein and Lyerla were among the seven practitioners on the drafting committee.
The rules expect a case to be ready for trial in 25 to 26 months, Donoghue said.
This compares to a previous average time to trial of up to 43 months, according to Lyerla.
"The time to trial in the Northern District of Illinois for a patent cases was really, really, really long, just way out of kilter with other cases in the Northern District of Illinois," Lyerla said.
For other federal litigation here, time to trial is about 24 months, according to Lyerla.
As examples of the new rules, Donoghue cited two benefits to plaintiffs and two benefits to defendants.
"The claim construction process is held late in discovery … later than in most other local patent rules” found in some other federal jurisdictions, Donoghue said.
The claims construction process is the way a judge decides on the meaning of certain, disputed words or phrases in the patent at issue, Donoghue said.
To have this process late in the litigation allows the plaintiff broader discovery and depositions and a broader patent infringement theory throughout, Donoghue explained.
The new rules also require both sides to produce "initial disclosures” or categories of documents that could be relevant along with names of witnesses and individuals with knowledge about the case only about nine weeks after the complaint is filed, Donoghue continued.
The earliness is another advantage for plaintiffs, he said.
As an advantage for defendants, he said the new rules require plaintiffs to produce early on the documents showing ownership of the patents allegedly infringed as well as documents on the development of those patents.
That early discovery helps defendants, according to Donoghue.
"The other big benefit to the defendant is the claim construction briefing process," he continued.
Normally, a plaintiff writes the opening brief in the claims construction process. The defendant responds, and the plaintiff then replies to that, he said.
"In these rules, it’s reversed," Donoghue said. "Defendant files the opening and reply brief. Plaintiff files just the response brief."
Lyerla said that five years ago, he proposed to Holderman in private that local patent rules be drawn up for the Northern District of Illinois. Lyerla said he was politely rebuffed.
Holderman "said it would never happen," explaining that the tradition here is that district court judges "pretty much run their own show in terms of scheduling," according to Lyerla.
But since then Holderman has become an advocate for "a more thoughtful approach to patent litigation in the federal courts," Lyerla said.
The Litigation Committee of IPLAC began discussing the issue again under its new chairman, Dean A. Monco, Lyerla added.
In 2007 Sternstein, who was on that committee, said he approached Holderman about drawing up rules, and "Judge Holderman was very receptive."
Sternstein was named chairman of a subcomittee of the IPLAC Litigation Committee to work with the judges to draw up the new rules.
After a long process of publishing drafts, comments and revisions, the rules went into effect Oct. 1.
But Sternstein said as soon as the drafts started circulating, "some of the judges started using our drafts."
The other lawyers on the drafting committee were Edward D. Manzo, Michael P. Padden, Marshall Seeder, and Paul K. Vickrey.