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 .

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