Local Patent Rules

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** Guest Post by Scott A. McKeown of Oblon Spivak & PatentsPostGrant.com **
The face of patent litigation in the U.S. has evolved greatly in the last 5 years with respect to patent reexamination. For patent litigators, throughout the U.S. and especially the Northern District of Illinois, the emergence of this now seemingly reliable strategic option is an important case management consideration. Indeed, if not adequately considered in the course of litigation counseling, reexamination ignorance may create malpractice opportunities for unsuccessful defendants.
Defendants, as well as those concerned with patents clouding their competitive landscape are increasingly requesting patent reexamination at the USPTO. When prior art patents and printed publications can be effectively presented to enable the USPTO to reject original patent claims, the expectation is that the prosecution of the reexamination proceeding will result in cancellation or amendment of original patent claims.
The sudden growth in reexamination filings can be attributed to several factors. These factors include, the emergence of the “non-practicing entity”(NPE) problem, the eligibility of inter partes reexamination for post 1999 patent application filings, and the efforts of the USPTO and Congress to overhaul the reexamination process, first with legislation overruling the Portola Packaging decision in 2002, and with creation of a special USPTO unit in 2005.
In 2005, the USPTO established the Central Reexamination Unit (CRU) to exclusively handle all reexaminations, whether ex parte or inter partes within the Office. The CRU created a procedure by which every reexamination proceeding is processed by a team (3) of experienced primary examiners. The CRU has greatly improved the responsiveness and quality of patent reexamination.
With respect to NPEs, reexamination is an attractive strategy as an active reexamination may shut down (i.e., stay) an otherwise costly litigation by forcing the dispute away from the high cost battle of district court litigation, back to the PTO. At the PTO, the NPE’s leverage of contingency litigation counsel and forced discovery costs are removed. Moreover, the standard of review in reexamination for proving unpatentability is much more favorable to a challenger as compared to the district court action. In federal district court the standard to invalidate a U.S. patent is “clear and convincing evidence.” Whereas, in reexamination, the US PTO can establish unpatentability by a “preponderance of evidence,” and unexpired claims are given their broadest reasonable interpretation. See 37 C.F.R. 1.555(b)(2)(ii).
Upon conclusion of a reexamination, canceled or amended claims will present the challenger with freedom to operate either through non-infringement of the altered claims, or decrease liability through the doctrine of intervening rights.
With this background in mind, a review of a recently asserted malpractice claim is presented along with a discussion of the new Local Patent Rules of the Northern District of Illinois as they pertain to concurrent reexaminations.
In Ecast Inc. v. Morrison & Foerster L.L.P. (Superior Court for the State of California, County of San Francisco) Ecast, a former client of MoFo, sued the firm for malpractice. The compliant stemmed from MoFo’s defense of Ecast in a patent infringement suit in the Northern District of Illinois. In the suit, six patents were asserted against Ecast by Rowe International Corp and Arachnid Inc. (Rowe International Corp., and Arachnid, Inc. v. Ecast, Inc., Rockola Mfg. Corp., and View Interactive Entertainment Corp. (click here for much more about this case from the Chicago IP Litigation Blog’s archives).
Notably, at paragraph 25 of the complaint, it is alleged that:
Once Defendants undertook to represent Ecast in the Rowe case, Defendants failed to sufficiently explain and advise Ecast of the benefits Ecast could have derived by filing a request for reexamination of the patents-in-suit. Proper pursuit of a patent reexamination could have resulted in a stay of the Rowe litigation for a substantial period of time. Although technically a stay, the reexamination process often serves to effectively end the patent litigation in many cases and could have terminated the Rowe case. (emphasis added)
Paragraphs 28-29 go on to allege that:
Had Ecast been properly advised of the benefits to be gained by the reexamination process, mainly a significant stay of the Rowe case possibly leading to avoidance of all further litigation risks, legal fees and expenses, then Ecast would have chosen to pursue reexamination. Ecast would have pursued reexamination and it would likely have been successful because approximately one month after new counsel substituted in as counsel of record for Ecast in the Rowe case, a reexamination of the Arachnid patents was sought by Ecast and granted by the Patent and Trademark Office. The reexamination resulted in a finding that there was a substantial question as to the patentability on all the Arachnid patents. Under these circumstances, the claims are often modified or cancelled.
Because the reexamination was pursued at such a late date and in such close proximity to the commencement of trial, no stay of the Rowe case was imposed because Ecast’s request came too late. (emphasis added)
Surely, whether or not reexamination would have truly benefited Ecast is speculative, likewise, the likelihood of obtaining a stay is quite subjective, varying significantly in accordance with the stage of reexamination as well as the perception of reexamination efficacy/efficiency in each forum. Nevertheless, a failure to properly counsel a client on the potential benefits of reexamination, as alleged here, appears to be a significant risk going forward.
With respect to the timing discussion of the complaint, a late filing of a reexamination request may have become even more critical in view of new local patent rule, LPR 3.5, which requires:
Absent exceptional circumstances, no party may file a motion to stay the lawsuit pending reexamination in the U.S. Patent Office after the due date for service of the Final Contentions pursuant to LPR 3.2. (emphasis added)
In other words, since the request for a stay must be presented in the above time frame, and as reexamination may take time to advance to a point favorable to a challenger (i.e, final rejection or appeal stage) it is n ow of even greater importance that reexamination be explored and if necessary instituted at the earliest possible point in a dispute.
Patent Reexamination, concurrent with, or even in place of more traditional litigation practices is becoming increasingly commonplace. While patent reexamination was once viewed as an ineffective procedure, and critics may still cite inefficiencies, significant strides have been made at the USPTO to present a viable post grant challenge mechanism. In view of recent developments in the Northern District of Illinois, practitioners would be well advised to explore reexamination options with clients early in the representation.
Scott A. McKeown is a partner with Oblon, Spivak, McClelland Maier & Neustadt and a team leader of the Reexamination and Reissue Practice Group. He is a founder and frequent contributor to patentspostgrant.com
* If you are interested in writing a guest post for the Chicago IP Litigation Blog, send an email by clicking here.
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Continue Reading Patent Reexamination & Litigation in the Northern District of Illinois — Avoiding Malpractice Claims

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

If you cannot make the Applied Discovery roundtable discussion about the new Local Patent Rules that I am participating in this Wednesday, November 11, from 11:30 until 2:00pm (click here for more information and click here to register by email, but move quickly because space is running out), or if you just cannot get enough analysis of the Rules, check out what looks like it will be a great teleseminar by Law Seminars International, tomorrow from 2:00 until 3:00pm.* Law Seminars promises to address:
The background and history of the Rules;
What the Court is trying to achieve with the Rules; and
The Rules’ implications for plaintiffs and defendants.
The scheduled speakers include:
Allan J. Sternstein, Dykema Gossett PLLC
Edward D. Manzo, Cook Alex Ltd.
Paul K. Vickrey, Niro, Scavone, Haller & Niro, Ltd.
For registration information, click here.
* In the interest of full disclosure, I plan to attend using a media pass generously provided to me by Law Seminars.
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Continue Reading N.D. Illinois Local Patent Rules: More CLE Opportunities

Next Wednesday, November 11, from 11:30 am until 2:00 pm, I am participating in a roundtable discussion about the Northern District’s new Local Patent Rules hosted by Applied Discovery. Blog readers have already read a lot about the Local Patent Rules — click here, here and here for some of the Blog’s analysis of the Rules. But this panel will add valuable perspective from other members of the Chicago patent bar. I am especially looking forward to the insights of friend and former colleague David Callahan of Kirkland & Ellis.
Here is Applied Discovery’s description of the event and registration information:
Applied Discovery is pleased to offer a roundtable forum led by local experts discussing the practical consequences of the rules and the effects the rules could have on patent litigation in the Northern District of Illinois. Virginia Henschel, vice president for e-discovery affairs at Applied Discovery will be moderating the panel. Ms. Henschel’s distinguished career prior to Applied Discovery includes serving as counsel for Sunoco, Inc., where she managed all facets of ESI for litigation, including designing and managing defensible data collection and production for large, complex legal matters.
If you have not already registered, there is still time to join us for a spirited analysis of the new Rules with opinions from plaintiffs, defendants and the bench.
TOPICS
• An overview of the Rules and the specific new obligations placed on patentees, accused infringers, and declaratory judgment plaintiffs.
• The effects of the new Rules on patent filings in the Northern District of Illinois.
• Scheduling deadlines and new requirements.
• Changes in the discovery process.
ROUNDTABLE PANELISTS
• Mark Ouweleen, Partner, Bartlit Beck Herman Palenchar & Scott LLP
• David Donoghue, Partner, Holland & Knight LLP
• David Callahan, P.C., Partner, Kirkland & Ellis LLP
DATE
Wednesday, November 11, 2009
11:30 am – 2:00 pm
LOCATION
Union League Club
65 West Jackson Boulevard, Room 710
Chicago, IL 60604
(Business Attire Required)
RSVP BY 11/6
If you wish to attend, please email Jennifer Towell at jennifer.towell@applieddiscovery.com as soon as possible. Space is limited.
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Continue Reading N.D. Illinois Local Patent Rules: Seminar

SP Techs., LLC v. Garmin Int’l, Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Oct. 9, 2009) (Pallmeyer, J.).
Judge Pallmeyer construed the claims of plaintiff SP Technologies’ (“SPT”) patent to a method for inputting data on a touch-screen display using a keyboard that cannot be resized, moved or closed by a user. As an initial matter, the Court noted that, contrary to SPT’s argument, the Court was not required to consider the accused products when construing the claims. Instead, the Court had discretion to consider the accused devices. And because the parties did not provide a reason to consider them, the Court chose not to include the accused products in its analysis. Here are constructions of note:
“Plurality of date input fields” was defined as more than one field, but the fields need not simultaneously appear on the same screen.
“Termination” referred to terminating or closing the keyboard, but not resizing or moving the keyboard as defendants argued. The ordinary meaning of terminate controlled over some statements the inventor made during prosecution that could have been read more broadly.
“Derived input” was defined as information requested by a computer application or program, as opposed to information “desired” by a user.
Finally, the Court noted a problem with the defendants’ presentation of the evidence that will be remedied by the Local Patent Rules. Defendants cited to documents within the prosecution history by title, as opposed to using Bates numbers, making it hard for the Court to find the relevant portions of the 250 page prosecution history. Local Patent Rule 4 requires that parties file a Joint Appendix as part of the claim construction process that is paginated and includes the prosecution history, among other documents. Click here for much more on the Local Patent Rules in the Blog’s archives.
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Continue Reading Court Not Required to Review Accused Products During Claim Construction

While the Northern District has made clear that it is not transforming itself into a rocket docket like the Eastern District of Virginia or the Western District of Wisconsin, the newly enacted Local Patent Rules (“Rules” or “LPR”)* are going to have a significant impact on patent litigation filings in Chicago. The cases will not proceed to trial faster than the Northern District’s average for all cases of slightly more than two years, but the path to trial will be significantly different. The changes are even-handed, benefiting both patentholders and accused infringers. One might expect even-handed Rules to have little impact on filings, but in this case patentholders will likely decide that the Rules provide enough value to overcome the portions of 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:
1. Substantive Initial Disclosures & Document Production.
LPR 2.1 requires both parties to exchange substantive, non-evasive Rule 26(a) Initial Disclosures. Furthermore, 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. 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. It also allows patentholders to evaluate the strength of their cases early using the technical information produced by the accused infringers, before incurring significant discovery expenses.
But while LPR 2.1 will attract patent plaintiffs, it also benefits accused infringers. LPR 2.1 also requires patentholders to make an initial document production, and patentholders have a more significant obligation. They must produce not just documents sufficient to show, but 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 PTO (the prosecution history) for the patents in suit and any patents from which they claim priority; and 4) ownership of the patent. 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 – click here to read my article on the uneven application of the Twombly standard between patentholders and accused infringers.
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 patent holder–submitting the initial and final briefs. Writing first and last benefits the accused infringer. But economically, 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, the claim construction is scheduled during the later portion of a 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. So, patentholders may face fewer early summary judgment motions.
Conclusion
The Rules are evenhanded, benefiting both patentholders and accused infringers. But the specific benefits afforded patentholders will still drive patentholders to file in the Northern District of Illinois over other courts, some that may have faster times to trial, with different rules.
* Click here for my post analyzing the Rules and here for my post analyzing the differences between the Rules and the Proposed Rules.
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Continue Reading N.D. Illinois’s Local Patent Rules Will Drive Patent Cases to Chicago

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.
* Click here and here for the Blog’s earlier analysis of the Proposed Rules.
** 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.
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Continue Reading N.D. Illinois Local Patent Rules: Changes From Proposed to Final Rules

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.
* Click here and here for the Blog’s earlier analysis of the Proposed Rules. And click here for my explanation of the significant differences between the Proposed Rules and the final Rules.
** 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.
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Continue Reading Analysis of N.D. Illinois Local Patent Rules

** This post is cross-posted at Patently-O **
The Northern District of Illinois judges are currently considering public comments on a new set of proposed Local Patent Rules – click here to download a copy of the proposed rules. The Court expects to enact a finalized version of the proposed Patent Rules later this year. As currently written, the rules likely will have a significant impact on the way that patent cases are litigated in the Northern District, and may result in an influx of patent cases to the Northern District, which is already among the top five for patent cases. As a result, patent litigators throughout the country should keep an eye on the proposed Patent Rules as they progress through the Court’s committee. While the proposed Patent Rules resemble those of the other major patent districts such as the N.D. California and the E.D. Texas, they differ in two rather significant respects:
1. The proposed Patent Rules promote uniformity, not speed.
The proposed Patent Rules contemplate a trial approximately two years after a complaint is filed. During a public comment session, several Northern District judges pointedly stated that, in seeking to promulgate local patent rules, the Court does not want to become a “rocket docket” for patent cases. And the Court does not seek to become the busiest patent docket in the country. Instead, the aim of the local patent rules is simply to promote uniformity and best practices among the judges of the Northern District. The Northern District of Illinois is one of the largest districts in the country, and uniformity among the District’s judges would promote case management predictability for both the Court and the litigants. Each Northern District judge currently schedules patent cases based upon her own experience, with little uniformity among the judges. The proposed Patent Rules attempt to remedy that.
That said, the rules are optional, not mandatory–individual judges will be able to deviate from the proposed Patent Rules. But the proposed Patent Rules at least will provide a starting point for uniformity and a suggested framework for the judges who choose to adhere to them.
2. Defendant opens and closes Markman briefing late in fact discovery.
The biggest deviation from the Northern District of California and Eastern District of Texas patent rules occurs in the claim construction phase. Significantly, the proposed Patent Rules do not contemplate two rounds of simultaneous briefing, as has become commonplace in patent cases. Instead, the proposed Patent Rules provide for a single set of briefs: the accused infringer files the opening brief, the patent holder responds, and the accused infringer replies. Notably, the accused infringer–not the patent holder–submits the initial and final briefs. The accused infringer necessarily will not have the benefit of the patentee’s claim construction position at the outset of the briefing. The practical impact of having the accused infringer file the opening claim construction brief remains to be seen, although some practitioners view this provision as having the potential to greatly increase the number of patent cases filed in the Northern District.
At the public comment session held on March 23, the judges on the rules committee explained the rationale behind this provision. Concurrent briefing, they noted, wasted a lot of time. The parties’ opening briefs tend to be ships passing in the night–the parties often argue past each other, rendering the opening briefs incomprehensible, or they agree with each other, rendering those points moot. As a result, neither the disputed claims nor the parties’ positions are fully understood until the concurrent responsive briefs. The proposed Patent Rules contemplate streamlining the process by eliminating simultaneous briefs.
The judges also addressed their decision to have the accused infringer, rather than the patent holder, begin the briefing. The judges explained that the patent holder’s opening argument is often for the “ordinary” meaning of claim terms. As a result, when the patent holder opens the briefing, the accused infringer has no chance to address many of the patent holder’s arguments because the patent holder often does not make those arguments until the reply brief. So, the judges explained, the Court and the parties are better served by having the accused infringer open the briefing with the patent holder responding to the accused infringer’s claim construction arguments.
Interestingly, a comment was made at the session pointing out that the Court has not decided how to schedule briefing when both parties assert patents against each other, that is, when each party is a patent holder and each party is an accused infringer. A possible resolution would be to allow two sets of parallel briefs with the accused infringer for each set of patents opening the briefing for those patents.
Conclusion
The proposed Patent Rules notably differ from the rules of other courts in two significant respects: the new briefing schedule, and for the fact that they are not aimed at decreasing the time to trial or at significantly growing the Northern District of Illinois’s patent docket. Assuming that the Court institutes the proposed Patent Rules with the current claim construction briefing schedule, it will be very interesting to see whether and how the claim construction procedures impact both case outcomes and the number of patent filings in the Northern District of Illinois.
For those interested in the specifics of the proposed Patent Rules, here is a general outline of the timeline and procedure that the proposed Patent Rules outline:
A standard protective order in place from the beginning of the case, unless and until it is modified, to avoid discovery delays being blamed upon entry of a protective order;
Automatic document production requirements of plaintiff when initial disclosures are served and of defendant when initial noninfringement and invalidity contentions are served;
Plaintiff serves initial infringement contentions two weeks after initial disclosures and defendant respond with initial noninfringement and invalidity contentions two weeks after that, followed two weeks later by plaintiff’s response to the invalidity contentions;
Plaintiff files final infringement contentions twenty one weeks after its initial contentions and defendant responds four weeks later with final noninfringement, invalidity and unenforceability contentions (after the final contentions, leave of Court is required for any amendments);
No party can seek a stay pending reexam after serving its final contentions;
The claim construction process begins two weeks after defendant’s final invalidity contentions are served;
Defendant files an opening claim construction brief along with a joint appendix including the patents in suit and their prosecution histories consecutively paginated, plaintiff then files a responsive brief within four weeks, and defendant has two weeks to file a reply;
Fact discovery closes forty two days after the claim construction rulings, which triggers expert discovery followed by a dispositive motion deadline; and
A trial is contemplated approximately two years after the filing of the complaint.
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Continue Reading Will Proposed Patent Rules Drive Patent Cases to Chicago?