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:
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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.
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The Rules are widely accepted as positive by both sides of the bar.
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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.
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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.
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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.
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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.

Continue Reading Northern District Local Patent Rules: Applied Discovery Panel Discussion

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.

Continue Reading Congratulations to Chicago’s Members of the IP 50 Under 45

Top Tobacco, L.P. v. North Atlantic Op. Co., No. 08 C 950, 2007 WL 2688452 (N.D. Ill. Sep. 6, 2007) (Kennelly, J.).
Judge Kennelly previously granted defendant summary judgment on all claims in this trademark infringement case regarding plaintiff’s “TOP and “Fresh-Top Canister” marks and awarded defendant’s attorneys’ fees pursuant to 15 U.S.C. § 1117(a).* The Court reduced the rates charged by defendant’s counsel Kirkland & Ellis’ summer associates from $185 to $125, more in line with paralegal rates. The Court acknowledged that Kirkland & Ellis’s attorneys showed skill “commensurate with its… high rates,”** but reduced Kirkland & Ellis’s rates because that skill did not result in the time savings (as required by the Seventh Circuit). Kirkland & Ellis billed roughly 30% more hours than plaintiff’s counsel. The Court, therefore, reduced Kirkland & Ellis’s rates to those charged by plaintiff’s counsel.
* Click here to read more about this case and related cases in the Blog’s archives.
** Having worked with Kirkland & Ellis’s lead counsel, Paul Garcia, I can confirm the Court’s praise of this team.

Continue Reading Summer Associates Not Worth $185/hour

Jim Amend, a founder of the Kirkland & Ellis intellectual property group and longtime Chicagoan, was recently appointed the Federal Circuit’s Chief Circuit Mediator.  Jim will take charge of the Federal Circuit mediation program in January 2007, shortly after it was changed from a voluntary to a mandatory program.
Continue Reading Chicago IP Litigator James Amend Appointed Chief Federal Circuit Mediator

Abbott Labs. V. Andrx Pharm., Inc., No. 05 C 1490, 2006 WL 2092377 (N.D. Ill. July 25, 2006) (Brown, Mag. J.).

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.


Continue Reading Be Careful With Privileged Documents