New Local Patent Rules In Northern District Of Ill.

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1 Portfolio Media, Inc. 648 Broadway, Suite 200 New York, NY Phone: Fax: New Local Patent Rules In Northern District Of Ill. Law360, New York (October 27, 2009) -- On Oct. 1, 2009 the local patent rules for the Northern District of Illinois ( N.D. Illinois rules ) took effect. The N.D. Illinois Rules provide guidelines and deadlines for submissions in patent cases from initial disclosures through completion of discovery, culminating in a trial at approximately 24 months. This article highlights significant differences between the N.D. Illinois rules and two other commonly cited local patent rules: the Northern District of California s local patent rules and the Eastern District of Texas local patent rules. A chart that provides a comparison between the deadlines set forth in the three sets of local patent rules can be found at The N.D. Illinois rules can be found at From a high-level perspective, there are several significant differences between the N.D. Illinois rules and the local patent rules for the Northern District of California and the Eastern District of Texas. The list below summarizes the differences: Required Document Production with Initial Disclosures The N.D. Illinois rules require that initial disclosures under Rule 26(a)(1) of the Federal Rules of Civil Procedure include a document production.[1] The local patent rules for the Northern District of California and the Eastern District of Texas do not require that document productions accompany initial disclosures. Fact Discovery Period

2 The N.D. Illinois rules provide that fact discovery begins with the parties initial disclosures and ultimately shall be completed six weeks after the entry of a claim construction ruling.[2] In addition, the N.D. Illinois rules provide a stay of fact discovery during some of the claim construction process.[3] Neither the local patent rules for the Eastern District of Texas nor the Northern District of California puts these limitations on fact discovery. Noninfringement and Unenforceability Contentions The N.D. Illinois rules require the accused infringer to submit both noninfringement and unenforceability contentions,[4] neither of which is required by the local patent rules for the Northern District of California and the Eastern District of Texas. Responsive Contentions The N.D. Illinois rules also require that the patent holder submit contentions responsive to the accused infringer s invalidity and unenforceability contentions.[5] Neither the local patent rules for the Northern District of California nor the Eastern District of Texas imposes such requirements. Initial and Final Contentions Required After reasonable periods for fact discovery, the parties are required to provide both initial and final invalidity and infringement contentions, respectively, under the N.D. Illinois rules.[6] In contrast, the local patent rules for the Eastern District of Texas and Northern District of California only provide for a single set of contentions due early in the process and only allow modification of those contentions with cause.[7] Timing of Initial Contentions Under the N.D. Illinois rules, an accused infringer shall provide noninfringement, invalidity and unenforceability contentions within 14 days of the patent holder s service of initial infringement contentions.[8] The 14 day period is aggressive. By comparison, the Northern District of California and the Eastern District of Texas provide 45 days from the service of infringement contentions to provide invalidity contentions.[9] Under the N.D. Illinois rules, the patent holder is required to serve initial responses to the initial invalidity contentions within 14 days after service of these contentions.[10]

3 Notably, no response to initial unenforceability contentions is required of the patent holder. However, a final response to the final unenforceability contentions is required.[11] No responses to contentions are required under the Northern District of California and the Eastern District of Texas rules. Timing of Final Contentions The N.D. Illinois rules are slightly less aggressive with respect to final contentions and final responses to final contentions. Final infringement, invalidity and unenforceability contentions are all due within 21 weeks after service of the initial infringement contentions.[12] Final noninfringement contentions and final responses to invalidity and unenforceability contentions are due 28 days after service of the final infringement, invalidity and unenforceability contentions.[13] Deadline to File Stay Pending Reexamination Under the N.D. Illinois rules, absent exceptional circumstances, no party may file for a stay pending re-examination after serving its final contentions.[14] Neither the Northern District of California nor Eastern District of Texas has such a provision. Claim Construction Exchanges Later The claim construction process in the Northern District of Illinois starts approximately 38 weeks after the start of the litigation,[15] while it starts approximately 18.5 weeks after the start of the litigation in the Eastern District of Texas[16] and approximately 23.5 weeks after the start of the litigation in the Northern District of California.[17] This delay under the N.D. Illinois rules allows the parties to conduct discovery and complete final contentions prior to claim construction. Accused Infringer Files the First Markman Brief The claim construction process also differs under the N.D. Illinois rules because those rules provide that the accused infringer shall provide the opening and reply claim construction briefs and the patent holder files the response brief.[18] By comparison, the local patent rules for the Northern District of California and the Eastern District of Texas follow a more traditional format with the patent holder filing the opening and reply claim construction briefs and the accused infringer filing the response brief.[19]

4 Default Protective Order Entered Finally, the N.D. Illinois rules also provide that a default protective order shall be in effect as of the date of the parties initial disclosures,[20] a provision that is absent from the local patent rules for the Northern District of California and the Eastern District of Texas, though in practice, some judges in both venues provide similar default protective orders. Indeed, the Northern District of California provides a protective order via its Web site that is commonly used in patent cases.[21] The local patent rules for the Northern District of Illinois depart from the well-known local patent rules for the Northern District of California and the Eastern District of Texas. In particular, the N.D. Illinois rules require an early document production at the time for initial disclosures, provide for aggressive deadlines for the exchange of initial and final infringement, invalidity, and unenforceability contentions and require some responses to contentions. Also, the N.D. Illinois rules delay the claim construction hearing, allowing the parties to complete substantial discovery prior to engaging in claim construction. --By Reginald J. Hill (pictured), Joseph A. Saltiel and Benjamin J. Bradford, Jenner & Block LLP Reginald J. Hill and Joseph A. Saltiel are both partners with Jenner & Block in the firm's Chicago office. Benjamin Bradford is an associate with the firm in the Chicago office. The opinions expressed are those of the authors and do not necessarily reflect the views of Portfolio Media, publisher of Law360. [1] N.D. Ill. LPR 2.1. [2] Id. at LPR 1.3. [3] Id. [4] Id. at LRR 2.3. [5] Id. at LPR 2.5, 3.2. [6] Id. at LPR 2.2, 2.3, 3.1, 3.2. [7] N.D. Cal. L.R. 3-1, 3-3, 3-6; E.D. Tex. P.R. 3-1, 3-3, 3-6. [8] N.D. Ill. LPR 2.3.

5 [9] N.D. Cal. L.R. 3-3; E.D. Tex. P.R [10] N.D. Ill. LPR 2.5. [11] Id. at LPR 3.2. [12] Id. at LPR 3.1. [13] Id. at LPR 3.2 [14] Id. at LPR 3.5. [15] Id. at LPR 4.1. [16] E.D. Tex. P.R [17] N.D. Cal. L.R [18] N.D. Ill. LPR 4.2. [19] N.D. Cal. P.R. 4-5; E.D. Tex. P.R [20] N.D. Ill. LRR 1.4. [21]