The United States District Court for the Northern District of
Illinois recently adopted Local Patent Rules governing pre-trial
procedure in patent cases. The Local Patent Rules are mandatory for
cases filed in the Northern District of Illinois on or after Oct.
1, 2009, and can be applied in earlier-filed cases at the
Court's discretion. Although the Local Patent Rules are
mandatory, they authorize individual judges to modify the
obligations and deadlines set forth therein based on the
circumstances of any particular case.
The Court's stated objective in enacting the Local Patent Rules
is to "provide a standard structure for patent cases that will
permit greater predictability and planning for the Court and the
litigants." Among other things, the Local Patent Rules require
a party asserting patent infringement to make early disclosure of
all documents concerning any disclosure, sale, or offer for sale of
the claimed invention prior to the filing date of the
patent(s)-in-suit. In order to prevent delay of these and other
disclosures based on confidentiality concerns, the Local Patent
Rules include a default protective order that is deemed to be in
effect as of the date that initial disclosures under F.R.C.P.
26(a)(1) are due to be exchanged. They also set forth a pre-defined
schedule for serving infringement, unenforceability, and invalidity
contentions, as well as for briefing claim construction issues. The
Local Patent Rules limit the number of claim terms the parties may
propose for construction by the Court and require the parties to
certify whether they believe the construction of those terms to be
outcome determinative. Overall, the Local Patent Rules provide that
a case should be ready for trial about 23 months after
filing.
The Local Patent Rules embrace many of the concepts of case
scheduling and development found in local patent rules previously
adopted by other courts, including the U.S. District Courts for the
Northern District of California and the Eastern District of Texas.
The Local Patent Rules, however, differ from the California and
Texas rules in certain significant respects. For example, the Local
Patent Rules provide for initial and final infringement,
non-infringement, and invalidity contentions whereas the California
and Texas rules provide for only a single round of contentions.
Also, the Local Patent Rules provide that the parties may propose
no more than ten claim terms for construction by the Court. The
California rules do not set an outright limit on the number of
claim terms that may be proposed for construction by the Court, but
they do require the parties to identify the ten most significant
claim construction disputes. The Texas rules neither limit the
number of terms proposed for construction nor require the parties
to identify the most significant claim construction disputes.
Further, the Local Patent Rules provide that the accused infringer
is to file opening and closing briefs on claim construction,
whereas the California and Texas rules provide for simultaneous
opening and response briefs.
Whether or how the adoption of the Local Patent Rules may affect
litigants' decisions to file patent infringement cases in the
Northern District of Illinois remains to be seen. It would be fair
to expect, however, that both patent owners and accused infringers
will view the Court's adoption of the Patent Local Rules
favorably because the Rules provide a reasonable, standardized
schedule and framework for preparing patent cases for trial. As
such, a patent case litigated according to the Local Patent Rules
is likely to move along expeditiously, and is less likely to be
adversely affected where one party might attempt to delay an
ultimate resolution.
Following are some of the highlights of the Local Patent Rules. The
complete set of Local Patent Rules, including the default
protective order set forth in Appendix B thereto, is available
online at the Court's website at www.ilnd.uscourts.gov .
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.