The Northern District of Illinois has amended Local Rule 5.8 (Filing Materials Under Seal) to require that all documents filed either by counsel or a non-represented party with an e-filing account be filed electronically pursuant to Local Rule 26.2, unless the Court has held that the documents need not be filed electronically pursuant to Local … Continue Reading
The Northern District of Illinois has a critical number of vacancies. Judge St. Eve just left for the Seventh Circuit. Judge Zagel took senior status in October 2016. Judge Zagel took senior status in March 2017 and passed away shortly thereafter. Judge Der-Yeghiayan retired in February 2018. Senior Judge Shadur (who maintained a very full … Continue Reading
On October 1, 2017, the Northern District began including a screenshot of any internet citation made in a judicial opinion as a separate docket entry associated with the opinion. The Seventh Circuit Library has been gathering and archiving screenshots of any internet citation in Northern District judicial opinions since January 2007. This move by the … Continue Reading
I have made it a practice not to immediately blog about big Supreme Court cases. While there is a rush to be the first to publish, I have found that there is a significant difference in the value between immediate analysis and analysis after people take a breath and think about the implications of the … Continue Reading
The following article was written for my Retail Patent Litigation Blog, and it is just as relevant for Chicago readers. So, I am reprinting it here with minor, Chicago-specific revisions. BNA has an interesting article by James Pistorino of Perkins Coie and Susan Crane looking at the impact of the America Invents Act (“AIA”) on … Continue Reading
Chief Judge Holderman has instituted an operations plan in the event of a federal government shutdown. The Northern District will operate normally for the first two weeks of any shutdown. Should a shutdown continue longer than two weeks, the Northern District will operate with essential personnel as set forth by the United States Court's Administrative Office. Here is the full text of Chief Judge Holderman's statement:
To the People of the Northern District of Illinois,
Please be assured that here in the Northern District of Illinois, Clerk of the Court Mike Dobbins and I have conferred and have developed a plan for our court to deal in the short term with the contingency now facing us of Congress failing to pass the federal budget or to authorize another continuing resolution.
We will keep the United States District Court for the Northern District of Illinois open and functioning with only minor modifications in our procedures for at least two weeks if Congress fails to establish a budget to keep the United States Government functioning. If the shutdown continues longer than two weeks, the court will continue to operate with essential personnel as defined by guidelines issued by the Administrative Office of the United States Courts.
We plan to continue to provide justice to the fullest extent possible and in the same excellent way as we have in the past. Thank you for your understanding.
Chief Judge James F. Holderman
… Continue Reading
The Seventh Circuit Electronic Discovery Pilot Program is sponsoring a free e-discovery webinar on April 6, 2011 from noon until 1:30 pm CDT. This is the next in a series of e-discovery seminars sponsored by the local federal courts which have been excellent so far. Participation is limited to 1,500. So, sign up early -- click here to register. Attendance for the past events has been impressive. 1.5 hours of MCLE credit have been applied for in Illinois, Indiana and Wisconsin.
Here are the details of the webinar from the Northern District's inviation:
What Everyone Should Know About the Mechanics of E-Discovery
April 6, 2011 - Noon - 1:30 p.m. (CDT)
Understanding the mechanics of electronic discovery is essential to your effectiveness in litigation and to fulfill your responsibility to your clients. The Seventh Circuit Electronic Discovery Pilot Program, together with Merrill Corporation, has developed a program designed to assist you in mastering the e-discovery challenges of today's litigation and to help you manage the preservation, retrieval and production of ESI through the e-discovery process. You will gain information including:
A basic understanding of the terminology unique to the realm of e-discovery.
The meaning of preservation and how to achieve this crucial obligation in an evolving technological landscape.
How to assess and manage the challenges of an e-discovery project.
A foundational understanding to help you identify potential e-discovery pitfalls and potential problems.
… Continue Reading
Chief Judge Holderman has closed the Northern District of Illinois Dirksen Courthouse Wednesday, February 2, based upon the expected blizzard. The Court noted that ECF will remain available.
… Continue Reading
Illinois' senior senator, Dick Durbin, has announced a bipartisan screening committee to assist in filling the Northern District's three vacant judgeships, as well as for future vacancies. If you are interested in applying for one of the vacant seats, click here to get an application from Senator Durbin's website. The questionnaire portion of the application is similar to that used by the Senate Judiciary Committee in reviewing judicial appointments. Applications are due by Monday, January 31.
The screening committee will review the applications and make several recommendations for each open seat to Senator Durbin, who will work with Senator Kirk to propose nominees to President Obama. Members of the screening committee include (along with a portion of their respective bios from Senator Durbin's website):
Dick Devine (chair). Mr. Devine was elected Cook County State's Attorney in 1996 and served in that role until 2008. He currently is a partner at the law firm of Meckler Bulger Tilson Marick & Pearson LLP, where he leads the firm's white-collar criminal defense and commercial litigation practices.
Demetrius Carney. Mr. Carney is a partner at the law firm of Perkins Coie. He is the president of the Chicago Police Board and a former commissioner for the City of Chicago's Plan Commission.
Philip Corboy, Jr. Mr. Corboy is a partner at the law firm of Corboy & Demetrio. He is president of the Illinois Trial Lawyers Association, president of the board of directors of the Legal Assistance Foundation of Metropolitan Chicago, former board member of the Chicago Bar Association, and member of the dean's council of DePaul University law school.
Kevin Forde. Mr. Forde has his own law practice in Chicago. He is a past president of the Chicago Bar Association, board chair of the Federal Defender Program in the Northern District of Illinois, counsel to the Federal Judges Association, and chair of the Illinois Compensation Review Board. He served as a law clerk to Judge William Campbell in the Northern District of Illinois.
Patricia Holmes. Ms. Holmes is a partner at the law firm of Schiff Hardin, where she heads the white collar crime group. She previously served as a former state trial judge, an Assistant U.S. Attorney for the Northern District of Illinois, an Assistant State's Attorney for Cook County, and Chief Assistant Corporation Counsel for the City of Chicago.
Betty Jang. Ms. Jang is legal counsel and director at CVS Caremark in Northbrook. Previously she served as senior counsel at the McDonald's Corporation, a litigator at Hinshaw & Culbertson, an attorney with the Cook County Public Defender, and an adjunct professor at the University of Illinois law school.
Paul Logli. Paul Logli is currently President and CEO of the United Way of Rock River Valley. He previously served for 21 years as the State's Attorney for Winnebago County, and also served as a judge on the 17th Judicial Circuit Court.
Cheryl Niro. Ms. Niro is a principal in the law firm of RobinsonNiro PC. She previously served as past president of the Illinois State Bar Association, the Cook County Legal Assistance Foundation, and the National Caucus of State Bar Associations.
Michele Ruiz. Ms. Ruiz is a partner at the law firm of Sidley Austin. She was selected as a Leadership Greater Chicago fellow.
Diana White. Ms. White is the executive director of the Legal Assistance Foundation of Metropolitan Chicago, where she received the Equal Justice Award. Previously she was a partner at Jenner & Block and a law clerk to Judge Walter Cummings on the U.S. Court of Appeals for the 7th Circuit.
… Continue Reading
The Northern District of Illinois continued its historically busy intellectual property docket in 2010. The most interesting statistic is a huge jump in patent filings this year -- 250 patent cases filed this year, nearly double 2009's 137 filings. And that is after a slight dip in filings from 2008 to 2009. I will discuss the 2010 filings in more detail in a post later this month, but even correcting for false patent marking suits, not all of which are included in the 250 filings because plaintiffs did not uniformly identify false marking cases as patent cases on civil cover sheets filed with the complaints, there was a significant increase in patent filings. That fits with my prediction in late 2008 that the Northern District's new Local Patent Rules would drive cases to Chicago.*
Trademark cases continued their slow growth, showing a slight increase over 2009. Finally, copyright cases increased, after falling off sharply in 2009. 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 FilingsCase Type
* Click here for much more on the Local Patent Rules in the Blog's archives.
… Continue Reading
This is the fifth installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation (here are the earlier tips: 1-5; 6-10; 11-15; and 16-20). 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 numbers twenty one through twenty five:
21. Calculate extensions in 7 day increments. The Federal Rules, and the Local Rules, now calculate deadlines in seven day increments. Based upon that, many Chicago judges expect parties to seek extensions in those same increments.
22. Respect Chambers. Chambers staff are pretty universally helpful, but be respectful of them and avoid annoying them. Before calling chambers, read the Local Rules and the judge's website to make sure your question is not answered there. And call chambers with opposing counsel, unless you have advance permission from the Court or opposing counsel.
23. Learn how to seal or redact filings early. The Seventh Circuit frowns upon sealing court filings unless absolutely necessary. As a result, Northern District judges are particular about filing under seal, as is the Clerk's office. Some protective orders give you a blanket right to file under seal, but others require specific permission. That permission would ideally be sought in advance of filing, but at least concurrent with the filing. Either way, it is critical to know before the evening of a major filing deadline, when the Clerk's office may be closed, and you may not have much time to begin with. Additionally, the Seventh Circuit requires that briefs be filed in a redacted form instead of under seal. So, many Northern District judges have the same requirement. Either ask the judge's chambers or counsel who has experience before the particular judge.
24. Lean on the ECF hotline. I am routinely surprised by how many people never think to call the Clerk's ECF number for assistance. The Clerk's staff is uniformly knowledgeable and eager to help. In particular, call them immediately if you made an ECF-based error while filing. The Clerk's office can almost always fix it, and it is usually easier for everyone if you have not added to the problem by "fixing" it yourself. One note of caution though, as with calling chambers, give the Clerk's office the courtesy of reviewing the ECF webpage first to make sure they have not already answered your question there.
25. Understand the Court's pretrial order requirements. More than one Northern District judge will throw out inadequate pre-trial orders. One common flaw to watch for is insufficient statements of fact or conclusions of law. The local, form pre-trial order requires the parties to identify every fact they must prove at trial and every necessary conclusion of law, even for jury trials. This custom differs from some other districts (and not every Northern District judge requires it). Likely because of that and the general pre-trial time crunch, many parties fail to prepare sufficient statements. That can have serious consequences, so start on these early.
… Continue Reading
This is the fourth installment of my twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation (here are the earlier tips: 1-5; 6-10; and 11-15). 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 sixteen through twenty:
16. Meet and Confer. Wherever you practice you are likely aware of some version of a Local Rule 37.1 requirement to meet and confer regarding at least discovery motions. Generally, you do not need to meet and confer for dispositive motions, but you must for discovery motions as well as motions for extensions. Most judges will not hear a motion without a meet and confer, and some will deny the motion with prejudice for failing to meet and confer. If you are not sure whether your motion requires a meet and confer, err on the side of having one.
17. Tell the Court about your meet and confer. Do not forget to tell the Court you met and conferred in your motion, and describe the outcome. If you do not, you risk denial of your motion, and always identify agreed or stipulated motions in the title and the docket entry.
18. Use the Online Transcript System. Take advantage of the Northern District's first-in-the-nation online transcript ordering system. Prior to this system, getting transcripts was difficult, but now getting a hearing transcript is as easy as buying a book on Amazon.com. It is a great advantage for litigators preparing motions that relate to prior hearings.
19. Calculate your hearing date. Each judge has a different minimum notice period for motions. Many judges allow notice three business days after filing, but a few only require two and others require four. On a similar note, check the judge's website for allowable motion call days and times, and any days when the judge will not be hearing motions.
20. Deliver prompt, correct courtesy copies. The Local Rules require delivery of courtesy copies of to the Court within one day of filing. But some judges require same day courtesy copies if at all possible. For those judges, if you cannot deliver same day you should at least deliver early the next morning. Also, make sure you format the copies correctly. For example, most judges require exhibits to be separated by tabs, and some judges require that papers be bound on the left-hand side. And for many judges, you must include copies of any unreported cases cited in your papers.
… Continue Reading
This is the second 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 opinion 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 six through ten:
6. Redact personal information. Make sure that you are redacting personal information, social security numbers, phone numbers, etc., from any papers filed with the Court. Most litigants are good at this in their pleadings. But there is a significant drop off in attention to this rule in exhibits and other filed papers. There can be serious consequences to running afoul of this rule both to the litigator and to the individual whose information is publicly disclosed.
7. Attend hearings. Parties often do not attend hearings because they expect a motion to by granted (for example, an extension of time or motion to withdraw when other counsel has appeared in the case) or because they do not have a stake in the motion between their opponent and a co-defendant. This can be a critical mistake. First, most judges require all parties' attendance at all hearing on a case. Second, you cannot guarantee that issues implicating yoru client will not be addressed at the hearing. And if they are addressed, you cannot necessarily count upon either your opponent or your co-defendant to protect your interests.
8. Pay attention to the court reporter. The hardest working person in the courtroom is almost always the court reporter; help them out. Offer a card or spell your name on the record. Speak clearly and at a modest speed. As much as you may feel the need to, do not speak over your opponent. If you are on a telephone conference, announce yourself when you speak. This both helps the reporter and makes the record much more clear.
9. Attend hearings by phone sparingly. In deference to the cost of bringing non-Chicago counsel to every hearing, many judges in the Northern District liberally permit attendance by telephone. This is an enormous convenience and cost-savings, but when not used carefully can have a negative impact on your case. It is impossible to interpret a judge's visual cues on the phone, unless they describe them to you at which point it is far too late. If the hearing is of any import, either attend live or send local counsel fully prepared to address all issues, if live attendance is not possible.
10. Listen on phone hearings. Too many lawyers when given an opportunity to argue their point during a telephonic hearing, speak until they are done. That has the advantage of getting your point across, but you have no idea if the judge is trying to ask you a question or even stop you completely. And when you are speaking into a speakerphone, you cannot hear anyone else, most importantly the judge, that may be trying to stop you or ask you a question. In the best case, that leaves the judge exasperated, and in the worst case the judge may view you as disrespectful, unnecessarily argumentative and as not listening to the Court. None of these are good results, and it is easily avoidable if you teach yourself to pause periodically. The pauses give you the time for the Court to give you verbal cues that you could get visually or verbally in the courtroom.
… Continue Reading
For the next five Fridays, I will be running a series of twenty five tips for Northern District of Illinois litigation practice, with a focus on IP litigation. The tips are not in a particular order, so I will not countdown backwards to tip number one. Why twenty-five? I found that beyond twenty five, the tips became focused upon minutia. 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 opinion 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 the first five:
1. Draft complaints to meet both the Local Rules and the Judge's requirements. There are pleading requirements in the Local Rules that are pretty standard, but do not make the mistake of failing to review them because they may not be the same as courts you are more familiar with. And do not stop at reading the Local Rules, check out requirements of specific judges before deciding, for example, how many unrelated parties to put into a single patent complaint. Click here for some examples of opinions to consider.
2. Repeat plaintiffs' allegations in your answers. Local Rules require that you repeat the complaint paragraphs in your answer. Most judges will not return your answer for failing to do so, but some will. And even if they do not, you render your answer far less useful a tool for the judge and her chambers.
3. Deliver courtesy copies. The Local Rules require courtesy copies be delivered within one business day, and some judges' standing orders require same day delivery. Opinions chastising counsel for failing to provide courtesy copies are surprisingly frequent. But even if your judge does not penalize you for failing to meet the courtesy copy requirements (and some will) if your motion or response is on a tight schedule you run the risk of not being fully heard. For example, if you are filing a response brief the day before a motion is to be heard and you bring your courtesy copies with you to the hearing you have only the slimmest chance that your brief is being read and digested before the hearing.
4. Certificates of service are not required when all parties are on ECF. This may not be mission critical, but using an unnecessary certificate of service signals to your opponent that you are not well versed in the Local Rules or custom. That is not necessarily a fact that you want to give away.
5. Signature blocks require both email and a fax number. Despite the 2008 revision to Federal Rule of Civil Procedure 11, many litigators still do not add email or fax numbers to signature blocks. I have not seen anyone sanctioned or warned for this omission yet, but you do not want to be the first.
… Continue Reading
The Northern District of Illinois sent the following invitation to e-filers for its eleventh annual Awards for Excellence in Pro Bono and Public Interest Service next Wednesday, May 26, 2010 at 3:00pm in the Dirksen courthouse:
The Judges of the United States District Court
for the Northern District of Illinois
the Chicago Chapter of the Federal Bar Association
cordially invite you to attend the presentation of their
Awards for Excellence in Pro Bono
and Public Interest Service
President of the Federal Bar Association
as the Keynote Speaker
Wednesday, May 26, 2010, beginning at 3:00 p.m.
James Benton Parsons Memorial Courtroom
Everett McKinley Dirksen United States Courthouse
219 South Dearborn Street
Reception immediately following in the 25th floor lobby.
… Continue Reading
President Obama announced a couple of nominations this week impacting the Northern District of Illinois and the national patent bar.
First, President Obama appointed WilmerHale partner Edward DuMont to the Federal Circuit. DuMont clerked for the Seventh Circuit's Judge Posner and was an Assistant to the Solicitor General where he briefed and argued Supreme Court cases. DuMont currently has an appellate practice with a considerable focus on patent and intellectual property issues (click here for DuMont's firm bio). DuMont also spent a year working for a law firm in Bangkok, Thailand. DuMont's Supreme Court and varied appellate experience make him a very interesting choice to take Judge Michel's place on the Federal Circuit bench.
Second, President Obama has nominated the Northern District's Deputy U.S. Marshall Senior Inspector Darryl McPherson to become the Northern District's next U.S. Marshall. McPherson has served as a Deputy U.S. Marshall since 1999 and won a Special Recognition award for his service as lead Deputy Marshall for Judge Lefkow.
Both nomination must be confirmed by a vote of the U.S. Senate.
… Continue Reading
When I wrote the title to this post it was difficult to capture how significant this story is to practitioners. The Northern District of Illinois has introduced an online transcript ordering system that can be used to order transcripts from any judge and court reporter in the Northern District. The Northern District believes this is the first system like it in the federal courts. This simple form -- click here to access it -- transforms what used to be an individualized process that was often difficult to navigate for both practitioners and the court reporters themselves because it required identifying the particular court report and then trying to reach the reporter, who likely spends most of the business day in court or back at their office performing the complex task of turning the rough transcript into the record of the court's proceedings. And it further simplifies the process by identifying the available delivery and timing options for the transcripts, so that the reporters do not have to explain the options to each attorney that calls them.
… Continue Reading
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
* Click here for much more on the Local Patent Rules in the Blog's archives.
… Continue Reading
Kolcraft Enter., Inc. v. Chicco USA, Inc., No. 09 C 339, Slip Op. (N.D. Ill. Oct. 23, 2009) (Norgle, J.)
Judge Norgle denied defendant Chicco's § 1404(a) motion to transfer this patent case to the Eastern District of Pennsylvania, where Chicco's principle place of business is located. Neither court was more suited for the case in terms of speed or familiarity with the law. The Court also noted that the location of documents was neutral based upon electronic document exchange. The convenience of the parties was also neutral because one party would be inconvenienced by the decision either way. Additionally, the situs of material events was irrelevant as in most patent cases because the comparison of an accused product to a claim does not revolve around any location.
As to non-party witnesses, one inventor was within the Northern District and the other was outside the subpoena power of both districts. And patent prosecution counsel also resided within the Northern District. Additionally, plaintiff agreed to depose all U.S. parties in their home districts, further diminishing that factor. Finally, the Court held that plaintiff's choice of forum deserved significant weight. The Court, therefore, denied Chicco's motion to transfer.
… Continue Reading
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:
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.
The Rules are widely accepted as positive by both sides of the bar.
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.
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.
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.
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
Following up on posts analyzing the Northern District’s Local Patent Rules over the last several weeks (click here (for analysis of the Rules, here (for a comparison of the enacted Rules to the Proposed Rules) and here (arguing that the Rules will increase patent litigations in the Northern District of Illinois) for those posts and here for a … Continue Reading
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.
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.
… Continue Reading
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.
… Continue Reading