I am often asked if declaratory judgment counterclaims delay the Local Patent Rule (“LPR”) initial disclosure and contention obligations — generally two weeks after a defendant’s answer or other response to the complaint. LPR 2.1 is clear that initial disclosures are due two weeks after the answer unless “another” patent is asserted in counterclaims. “Me too” declaratory judgment claims focused only upon the asserted patents, therefore, do not delay the initial disclosure deadline. Initial disclosures are due two weeks after defendant’s answer or response, unless defendant adds a new patent to the case in its counterclaims.

Continue Reading N.D. Illinois Local Patent Rules: “Me Too” Declaratory Judgment Counterclaims Do Not Delay Initial Disclosures and Contentions

One of the common early questions I get about the Local Patent Rules (“LPR”) is how to address the LPR 2.1(a) & (b) document production that must accompany the LPR 2.1 initial disclosures. There is no set requirement for providing any statement regarding the production. In theory, it would be sufficient to send a cover letter with the production referencing LPR 2.1(a) or (b). But the better practice is to include an extra section in your initial disclosures identifying the LPR 2.1(a) or (b) production.

Continue Reading N.D. Illinois Local Patent Rules: Addressing Initial Disclosure Document Production

This is the third installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation. The tips are gleaned from my practice in the Northern District, my time as a law clerk for the Hon. Gordon J. Quist in the Western District of Michigan, and my reading of all of the Northern District of Illinois intellectual property opinions over the last four years. As you read them, let me know if you come up with others. I will be glad to include them as I go. Here are tips eleven through fifteen:
11. Respect Twombly / Iqbal pleading standards. The Northern District is no different than the rest of the country’s district courts — patent infringement requirements have not changed from the form in the Federal Rules. But that is not necessarily the case for Lanham Act, copyright or trade secret claims. There are numerous decisions dismissing, often with leave to amend, these more fact-specific intellectual property claims. And even in the patent context plaintiffs benefit from pleading with more particularlity. The more detail a defendant has the more information they should disclose about their accused products or systems as part of their Local Patent Rule 2.1(b) initial disclosure document production requirements. That means that the plaintiff will have more material with which to prepare its Local Patent Rule 2.2 intial infringement contentions. Finally, regardless of the type of claim, many and perhaps most judges rely upon Twombly / Iqbal to require more than a bare recitation of the elements of affirmative defenses. So, it is especially important to add some facts to your affirmative defenses.
12. Prepare Local Rule 56.1 statements with care. This is probably the most frequent Local Rule hang up in Northern District of Illinois opinions. It is critical that movants meet the Local Rule 56.1 requirements, among others, a numbered statement of undisputed material facts supported by admissible evidence. If the facts are not supported or if they are legal conclusions, judges routinely strike or disregard them.
13. Respond to Local Rule 56.1 statements with evidence. Far too often, parties respond to Local Rule 56.1 statements without evidence. Those responses are almost always deemed admissions. Without admissibile evidence to counter statements of fact they are almost always admitted.
14. Watch your judge’s webpage. Each judge maintains the equivalents of standing orders on their webpage, often in multiple places and links across the page. It is critical that you read them at the beginning of your case and that you recheck them regularly. At a minimum, check them before you file anything with the Court. I find that the website instructions change with much greater frequency than the old, paper standing orders did. And while judges try to make it easy to see what they change, if you are not looking you will miss it.
15. Always file notices of motion. In some districts, notices of motions are not required or even discouraged. In the Northern District of Illinois, they are required of every motion. If you fail to file one, you will likely hear from the Clerk’s office. Also, make sure to file the notice after the motion, not before. If you file the notice before the motion, you will generally have to refile it.

Continue Reading Northern District of Illinois Practice Tips Nos. 11-15

Albecker v. Contour Prods., Inc., No. 09 C 6312, Slip Op. (N.D. Ill. May 3, 2010) (Castillo, J.).
Judge Castillo construed the claims in this patent case involving a wedge-shaped backrest and legless leisure chair. Of particular interest, the Court construed the following terms:
“Secured to” was defined as “attached using attachment means” that connect a type cushion to a foundation. The “secured to” definition excluded unitary top cushion foundations. The fact that the Court’s definition excluded one embodiment because that embodiment was part of a restriction requirement; and
“face of the generally wedge shaped foundation” was not properly briefed, but the Court held that the face was top surface.
The Court declined to construe other claim terms because the parties told the Court that the construed terms were the key terms.

Continue Reading Claims Need Not Be Construed to Encourage an Embodiment that was Part of a Restriction Requirement

I am proud to announce that the Chicago Bar Association has honored me, and the Blog, with the 2010 Herman Kogan Media Award. I usually do not post about personal awards, but I am making an exception because this one stems from my work on the Blog. I was the first winner of the Kogan Award’s new online category. The print and broadcast category recipients of the 2010 Kogan Awards were, respectively, The Chicago Reporter and Chicago’s ABC 7 News. I received the award for my series of posts on the Local Patent Rules at the end of 2009 — click here to read the posts. The award comes with a $1,000 journalism scholarship, which I have given to Loyola University Chicago’s journalism school.
Here is a little bit more about the Herman Kogan Media Awards:
Established in 1989, CBA’s Herman Kogan Media Awards competition honors local journalists and legal affairs reporting. Qualified candidates in the Chicago metropolitan area submitted entries in one of three entries: Print, Broadcast or Online. The competition celebrates the life of Herman Kogan, whose career spanned more than 50 years and included positions as an editor, reporter, feature and editorial writer, historian, literary critic and radio host.
Thank you to the Chicago Bar Association and the Herman Kogan Media Award committee for this honor. And if you are interested in hearing more about the award and how I blog, click here for an interview LexBlog did with me after the award.

Continue Reading R. David Donoghue Honored With the Chicago Bar Association’s Herman Kogan Media Award

This Tuesday, March 23 at noon central, I am presenting a CLE program to the Chicago Bar Association’s Intellectual Property Law Committee about the Local Patent Rules. If you read the Blog regularly, you have read a lot of my thoughts on the new Rules. The presentation Tuesday will spend some time on the logistics of the Rules, but will focus far more heavily on how to use the Rules in practice both offensively and defensively. The event is being held at the CBA’s building, 321 S. Plymouth Court, and lunch will be served.

Continue Reading CLE: Leveraging the N.D. Illinois Local Patent Rules for Litigation Success

The Northern District has become the jurisdiction of choice for 35 USC Section 292 false patent marking suits. Of the more than 80 false marking suits filed this year, more than half were filed in Northern District. Granted many of the suits, 38, have been filed by a single plaintiff and his counsel, but several other plaintiffs have chosen the Chicago federal courts to file complaints that arguably could have been filed in almost any district court. As I have watched the cases pile up, I have spent a fair amount of time trying to determine why the plaintiffs are choosing Chicago. While the numbers could be skewed by one plaintiff, Simonian, that has filed the majority of the cases, several other plaintiffs are availing themselves of the Chicago courts, so I do not think that answers the question. Rather, I think the Chicago filings are a by-product of the new Local Patent Rules, for two reasons: 1) assuming that the Local Patent Rules apply to these cases (and I believe they will) the Local Patent Rules will place most of the upfront responsibilities on the defendant-patentholder; and 2) the proposed case schedule that would have cases tried in two years gives plaintiffs a moderate case length moderating their potential fees and costs while maintaining a relatively high defense cost for the defendants, including the potential threat of the longer pre-Rules schedule for most Northern District of Illinois patent cases prior to enacting the Rules. Before I analyze the reasons further, some background will be valuable as false marking is a very new phenomena in patent law and remains unknown to many.
Modern False Marking Cases
The first of the modern false marking cases, excluding the occasional false marking claim in a broader patent dispute between competitors, was Pequignot v. Solo Cup Co., No 1:07cv897-LMB/TCB (E.D. Va. July 2, 2009). In that case, Solo was accused of falsely marking coffee cup lids sold to Starbucks. The Eastern District of Virginia’s Judge Brinkema granted Solo Cup summary judgment finding that there was no intent to deceive the public in Solo’s alleged false marking based upon the advice of Solo’s counsel that it would be reasonable to replace molds identifying expired patents with molds showing no marking gradually. Additionally, the Court held that a patent marking “offense,” punishable by a fine up to $500, was the decision to improperly mark, not each improperly marked product. That decision significantly reduced the damages potential for false marking cases, and is currently on appeal at the Federal Circuit.
Then in the last week of December 2009, the Federal Circuit decided Forest Group, Inc. v. Bon Tool Co. In that case, the district court followed reasoning similar to the Solo case fining defendant $500 for a single decision to false mark. But the Federal Circuit reversed, holding that the fine was to be assessed per falsely marked product. That drastically changed the damages calculus for false marking claims, and led to the deluge of patent false marking cases beginning this January.
In the first quarter of this year, at least to date, more than 80 false marking cases have been filed. The Federal Circuit will soon hear oral argument in Pequignot v. Solo Cup, to rule upon the bounds of the intent required by 35 USC Section 292. The only potential relief for patent holders is a section of the current patent reform bill in the U.S. Senate that would require that the false patent marking plaintiff have been harmed by the alleged false marking – check out a discussion of the provision at the Patent Docs.
The Local Patent Rules are Driving False Marking Cases
With that background, the question remains – why are so many false patent marking cases being filed in the Northern District? As I proposed above, the reasons stem from the Northern District’s new Local Patent Rules. First, many people see false marking cases as commercial litigation in patent litigation’s clothing. That is not completely the case, however. In fact, the parties must determine whether the marked product reads upon the patent claims, unless the the only issue is an expired patent. That means that the court and the parties must conduct a full infringement analysis with all of the required claim charts, technical analysis, expert discovery, Markman hearings and perhaps even summary judgment motions. That means that the Local Patent Rules will likely govern these cases, bringing with them the required Initial Disclosures and production obligations, and claim charts.
That is significant because the false marking plaintiff does not have all of the obligations of either a typical patent plaintiff or defendant, while the false marking defendant has most of its obligations. The plaintiff will not have to produce his reduction to practice documents, prosecution histories, etc. along with Initial Disclosures, although the defendant likely will have to at least produce the prosecution histories. And the defendant will also have the obligations of a typical defendant – producing documents sufficient to show how each accused product or process works. So, the defendant has initial discovery burdens that are not shared by the plaintiff, and the plaintiff is guaranteed early document production. Additionally, the defendant will likely be obligated to produce initial infringement contentions, after which the plaintiff would have to respond with noninfringement contentions. So, the plaintiff not only escapes initial production requirements, but also gets to file its initial claim charts last. These are significant costs for the defendant which may benefit the plaintiff, at little up front cost. Additionally, knowing that these costs are coming early in the case may drive the defendant’s willingness to settle up. Of course, it could always backfire on the plaintiff and drive the defendant’s settlement down in line with the amounts spent upon early discovery.
Second, the Local Rules contemplate a two year time-to-trial, as opposed to the prior patent litigation average in Chicago that was likely in excess of three years. So, the plaintiff still has a moderately long time to trial, driving up the defendant’s likely litigation fees and expenses, but not so long that the plaintiff feels like it will never see its potential award.

Continue Reading Northern District of Illinois: False Patent Marking Capitol of the World

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.

Continue Reading N.D. Illinois Local Patent Rules: Additional Views

The Northern District of Illinois continued its historically busy intellectual property docket in 2009. For the first time in several years, there was a slight decrease in patent case filings. Of course, that is not surprising in light of a difficult economy and patent filings being down across the country. And I suspect that the new Local Patent Rules* will result in an increase in patent litigation filings for 2010. Trademark cases bucked their downward trend over the last several years, and were up by about 10% over 2008. Finally, copyright cases continued a relatively steep decline. But despite the decline, the Northern District maintains one of the most active copyright dockets in the country. This chart shows the number of yearly patent, trademark and copyright cases filed in the Northern District during calendar years 2006 through 2009 (data gathered from the Stanford IP Clearinghouse and Pacer):
Northern District IP Case Filings
Case Type
* Click here for much more on the Local Patent Rules in the Blog’s archives.

Continue Reading N.D. Illinois: 2009 Intellectual Property Filings

The most popular posts on the Blog during 2009, in terms of both views and reader questions, were those on the Local Patent Rules. Because of high interest, I have plans for additional analysis this year. This is the first of those posts. In late 2009, I had an article published in Bloomberg Law discussing why the new Rules will drive patent cases to the Northern District of Illinois. Bloomberg generously allowed me to post a pdf version of the story — click here to download it — and to repost it on the blog. Here is the article:
The Northern District of Illinois enacted Local Patent Rules (“LPR” or “Rules”) on October 1, 2009. The purpose of the Rules is to normalize patent litigation in the Northern District of Illinois and to streamline the patent litigation discovery process. See LPR, Preamble. The rules also make clear that the court does not intend to become a “rocket docket.” In fact, the Rules create a schedule that would have cases ready for trial in a little over two years, although cases would not necessarily be tried at that time. That is at most a modest change from the court’s average time to trial for all cases–about twenty-seven months, according to the most recent Federal Court Management Statistics.
The Northern District of Illinois did not intend that its new Rules would drive patent cases to Chicago, as has happened when other courts enacted local patent rules, such as the Eastern District of Texas. But despite its intentions, the Northern District of Illinois’s plan to normalize patent litigation practice and streamline discovery will significantly increase patent filings in Chicago. To understand why the Rules will increase case filings, it is important to understand the process created by the Rules, and then look at the impact specific Rules will have for both patentholders and accused infringers.
The Rules
The Rules were drafted and revised after public comment by a committee comprised of practitioners representing a cross-section of the District’s patent bar and four Northern District of Illinois judges: Chief Judge James F. Holderman, Judge Matthew F. Kennelly, Judge James B. Zagel, and Judge Amy J. St. Eve. The Rules were then enacted by the Northern District of Illinois judges.
The Rules require early discovery through substantial production obligations accompanying all parties’ Initial Disclosures. The Rules also require parties to take early positions on the merits of their claims and defenses in the form of Initial Contentions, presumably based upon documents exchanged with Initial Disclosures. Finally, the Rules position claim construction at the end of fact discovery, and show a preference against summary judgment motions prior to claim construction.
Here is a more detailed look at the schedule and duties contemplated by the Rules:
Protective Order. A standard two-tier protective order is deemed entered when Initial Disclosures are served. LPR 1.4. Any party is free to seek modifications to the protective order. Id. The automatic entry of the order prevents discovery delays while parties negotiate a proposed protective order and reduces legal fees for the negotiation.
Initial Disclosures & Production. Two weeks after the accused infringer answers, or two weeks after the patentholder answers any counterclaims, the parties must exchange substantive, non-evasive Fed. R. Civ. P. 26(a) Initial Disclosures. LPR 2.1. And along with the Initial Disclosures, the parties must exchange initial document production.
LPR 2.1(a) requires patentholders to produce all documents regarding: 1) any sale, offer for sale or use of the patented invention before filing; 2) design, reduction to practice, or invention of the patented technology generally; 3) all communications with the U.S. Patent and Trademark Office (the prosecution history) for the patents in suit and any patents from which they claim priority; and 4) ownership of the patent. LPR 2.1(b) requires that along with its Initial Disclosures, an accused infringer produce: 1) documents sufficient to show the operation and construction of each element of any product or process specifically accused in the Complaint; and 2) copies of all known prior art. Additionally, all parties are required to identify which documents, by Bates number, fall into each required production category. For cases in which there are lengthy lists of accused products, both the production and the identification of documents by categories could be a significant undertaking early in a case.
Initial Contentions. Two weeks after Initial Disclosures are served, parties claiming patent infringement serve Initial Infringement Contentions that will likely be substantive because the patentholder should have the accused infringer’s Initial Disclosure document production. LPR 2.2. Two weeks after Initial Infringement Contentions are served, accused infringers serve Initial Non-infringement, Unenforceability and Invalidity Contentions. LPR 2.3. Along with these contentions, accused infringers must produce any additional documents relied upon including prior art and technical information. Two weeks later, patentholders must serve an Initial Response to Invalidity Contentions. LPR 2.5.
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. LPR 3.1. Four weeks 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). LPR 3.2. This gives the parties about four months to complete the bulk of their technical discovery and depositions.
Final Contentions are not amendable without a Court order upon a showing of good cause and an absence of unfair prejudice to the opposing party. LPR 3.4. In a comment, the court noted that its adoption of a new, unargued claim construction would be an example of good cause.
Deadline for Stays Pending Reexamination. No party can seek a stay pending reexamination after serving its Final Contentions. LPR 3.5. The Rule, however does not create a presumption for staying cases pending reexamination prior to the cutoff date. Id.
Claim Construction. The claim construction process begins two weeks after defendant’s Final Invalidity Contentions are served with an exchange of terms and proposed constructions. LPR 4.1(a). Within seven days of exchanging terms, the parties must meet and confer to agree upon no more than ten terms for construction by the court. Presenting more than ten terms requires prior leave of court and requires a showing of good cause. LPR 4.1(b).
Claim Construction Briefing. Five weeks 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. LPR 4.2(a)-(b). Parties claiming patent infringement have four weeks to file response briefs. LPR 4.2(c). Accused infringers have fourteen days to file a reply. LPR 4.2(d). Any party offering witness testimony must include a sworn declaration and promptly make the witness available for deposition. If witness testimony is included in a response brief, the reply deadline is extended by seven days.
After the reply brief is filed, the parties have seven days to file a joint claim construction chart setting out each claim term, the proposed constructions, and the parties’ proposal for a claim construction hearing.
Claim Construction Hearing. The Rules contemplate a claim construction hearing four weeks after the reply brief, but the judge can decline a hearing. LPR 4.3. The lack of a hearing may be a reason to allow a sur-reply brief. Id. 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. Id.
Fact Discovery Close. Fact discovery closes six weeks after the claim construction rulings, which triggers expert discovery followed by a dispositive motion deadline. LPR 1.3. Fact discovery is also suspended from four weeks after the LPR 4.1(a) exchange of claim terms, until the Court enters a claim construction ruling. LPR 1.3. This leaves parties free to focus on claim construction briefing without dealing with discovery issues at the same time.
Expert Discovery. Three weeks after the close of fact discovery, parties must make their initial expert witness disclosures for non-claim construction issues on which they have the burden of proof. LPR 5.1(b). Five weeks later, rebuttal expert witness disclosures are due. LPR 5.1(c). Expert depositions must be finished five weeks later. LPR 5.2. Supplementation of expert reports after the LPR 5.1 deadlines is presumed prejudicial and is not allowed absent a showing that the material could not have been added or amended earlier and that there is no unfair prejudice. LPR 5.3.
Trial. Cases should be trial ready approximately two years after the filing of the complaint. This would be slightly faster than the Northern District of Illinois’s average time to trial of twenty seven months. But the Rules do not require that trial occur at that time, just that the case is ready for trial.
The Rules Will Drive Patent Cases to Chicago
While the Northern District has made clear that it is not transforming itself into a “rocket docket” like the District of Virginia or the Western District of Wisconsin, the newly enacted Rules will significantly increase patent litigation filings in Chicago. The cases will not proceed to trial faster than the Northern District’s average for Eastern all cases of slightly more than twenty-seven months, but the path to trial will be significantly different as described above. The changes are even-handed, with Rules benefiting patentholders being largely offset by the Rules that benefit accused infringers. One might expect even-handed Rules to have little impact on filings, but in this case patentholders will conclude that the Rules provide enough value to overcome the Rules that benefit accused infringers. The Rules, therefore, will draw patent cases to the Northern District. Here are the particular elements of the Rules that will attract patent plaintiffs to the Northern District, along with an analysis of how the Rules nevertheless also benefit accused infringers.
1. Substantive Initial Disclosures & Document Production.
LPR 2.1 requires that parties exchange significant discovery along with their Initial Disclosures. In particular, accused infringers must produce documents sufficient to show how all specifically accused products or processes operate. LPR. 2.1(b). This early document production, which is generally contemplated by Rule 26 but almost never done in practice, will be a major draw for patentholders. The ability to get immediate technical information in discovery, without the expense of serving document requests, is significant. It allows patentholders to have information before preparing their Initial Infringement Contentions. Patentholders will also get a preview of invalidity defenses and patentholders receive all of this information early in the case, before they incur significant discovery costs.
But while LPR 2.1 will attract patent plaintiffs, it also benefits accused infringers. As described above, patentholders must make an initial document production as well, and their obligation is more significant. LPR 2.1(a). Additionally, as with accused infringers, patentholders must identify which documents correspond to each of the four categories. Having this early information will allow accused infringers to evaluate their defenses early in the case and prepare for early dispositive motions such as motions challenging ownership or validity based upon a bar date. And the documents will allow accused infringers to update affirmative defenses or add counterclaims before there could be any prejudice.
Finally, the accused infringers’ production obligation regarding its products is only triggered if the patentholder specifically identifies the accused products in its complaint. This will strongly encourage plaintiffs to identify the accused products in the complaint. A standard which comports with the Twombly/Iqbal pleading standards and will lead to more focused patent litigations. R. David Donoghue, The Uneven Application of Twombly in Patent Cases: An argument for Leveling the Playing Field, 8 J. Marshall Rev. Intell. Prop. 1.1 (2008).
2. Defendant opens and closes Markman briefing.
Most Districts either have two rounds of concurrent claim construction briefing or a traditional opening-response-reply schedule with the patentholder opening and replying. Significantly, the Rules provide for a single set of briefs, with the accused infringer–not the patentholder–submitting the initial and final briefs. The court reasoned that this briefing schedule provided the best, most coherent set of papers because a patentholder’s opening brief often argues for “ordinary” meanings of most terms without specific proposed definitions. Then after the accused infringer offers constructions in its response, the patentholder offers detailed constructions of those terms for the first time on reply. That scenario either leaves the accused infringer without a chance to answer the patentholder’s constructions on the papers, or it requires a sur-reply. Similarly, concurrent briefing results in the parties arguing past each other, generating briefs that do not fully crystallize the issues for the court. Writing first and last, of course, benefits the accused infringer. But the patentholder saves money by only writing one brief and can make any follow up arguments during a hearing or seek a sur-reply if the court does not hold a hearing.
3. Late Claim Construction briefing.
The final major draw for patentholders is the late claim construction proceedings. In addition to cost savings in the briefing process, claim construction is set during the end of a floating fact discovery period that is scheduled to end forty-five days after the court rules on claim construction. Maintaining pre-claim construction uncertainty through most of discovery benefits patentholders. Furthermore, the Rules make clear that a judge can disregard early dispositive motions that would require claim construction before the claim construction contemplated by the Rules. LPR 1.1. So, patentholders may face fewer early summary judgment motions.
The Northern District of Illinois’s Local Patent Rules are evenhanded, benefiting both patentholders and accused infringers. But the specific benefits afforded patentholders will drive patentholders to file in the Northern District of Illinois over other courts, some that may have faster times to trial.
R. David Donoghue is a litigation partner in Holland & Knight’s Intellectual Property Group focusing on patent disputes. His practice spans diverse technology areas including cellular telephony, computer software, internet technologies, pharmaceuticals, automotive technologies, television production equipment, nutritional supplements, and numerous medical devices. He also has extensive intellectual property licensing experience. Mr. Donoghue was previously with Delphi, the world’s largest automotive supplier, where he was a founding member of Delphi’s Technology Licensing and Litigation group. Additionally, Mr. Donoghue founded and authors the Chicago IP Litigation Blog where he analyzes intellectual property cases in the Northern District of Illinois (www.chicagoiplitigation.com). He can be reached by phone at 312.578.6553 or by email at david.donoghue@hklaw.com.
© 2009 Bloomberg Finance L.P. All rights reserved. Originally published by Bloomberg Finance L.P in the Vol. 3, No. 48 edition of the Bloomberg Law Reports – Intellectual Property. Reprinted with permission. The views expressed herein are those of the authors and do not represent those of Bloomberg Finance L.P. Bloomberg Law Reports® is a registered trademark and service mark of Bloomberg Finance L.P.

Continue Reading N.D. Illinois Local Patent Rules Will Drive Cases to Chicago