United States: Fifteenth Anniversary Update: Annotated Local Patent Rules For The Northern District Of Illinois

Almost 15 years ago, in an effort to create greater predictability for patent litigation in the Northern District of Illinois, the District enacted Local Patent Rules ("LPR").¹ This annotated version of the LPRs is released in honor of the upcoming 15th anniversary of the LPRs. In the approximately 15 years since the District enacted LPRs, a substantial body of case law has been developed interpreting and applying the rules. This annotated version of the LPRs collects decisions interpreting and applying the Rules from October 1, 2009, up through March 31, 2024. After reciting each rule, we provide citations to opinions that have applied the rule, along with a relevant quote from the opinion and an explanatory heading.

We hope the annotated LPRs are a valuable resource to the judges, parties, and attorneys involved in patent litigation in the Northern District of Illinois. Of course, the LPRs and these annotations should be read in conjunction with the Northern District of Illinois Local Rules as well as any applicable rules or standing orders particular to each judge.

Although local patent rules from other jurisdictions were considered in drafting the Northern District's LPRs, the LPRs differ from other local patent rules in several important respects.

PROTECTIVE ORDER

The LPRs include a default protective order that automatically takes effect upon initiation of a lawsuit. (LPR 1.4, Appendix B.) The purpose of this default protective order is to facilitate the early disclosures required by the LPRs without any delay that may otherwise result from the parties' negotiation of a protective order. The parties may seek to modify the default protective order for good cause, but the filing of such a motion does not affect the parties' early disclosure obligations under the LPRs.

INITIAL DISCLOSURES

Fourteen days after an accused infringer files an answer or otherwise responds to the complaint, the parties must exchange initial disclosures. (LPR 2.1.) For patentees, these disclosures include documents relating to: (i) the on-sale bar; (ii) conception and reduction to practice (for pre-America Invents Act ("AIA") patents); (iii) the communications with the U.S. Patent and Trademark Office ("USPTO") for each patentin-suit; and (iv) ownership of the patent rights.

For accused infringers, these disclosures include: (i) documents sufficient to show the operation and construction of all aspects or elements of each accused instrumentality identified with specificity in the complaint; (ii) each item of prior art of which the party is aware that allegedly anticipates or renders the patent claims obvious; and (iii) a statement of the gross sales revenue from the accused products for the shorter of a six-year period preceding the filing of the complaint, or from the date of issuance of the patent. In a departure from many other local patent rules, the Northern District of Illinois requires that the accused infringer's initial disclosures occur before the patentee provides its initial infringement contentions.

FACT DISCOVERY

The LPRs provide for potentially two stages of fact discovery. (LPR 1.3.) The first stage commences on the date of the initial disclosures and ends one week before the opening claim construction brief is due. Upon entry of the claim construction ruling, a party may move the court for a second stage of fact discovery if necessitated by the claim construction ruling. 

INITIAL CONTENTIONS

The patentee must serve its Initial Infringement Contentions within 14 days of the initial disclosures. (LPR 2.2.) Then, within 14 days, the accused infringer must submit its Initial NonInfringement, Invalidity, and Unenforceability Contentions. (LPR 2.3.) The Initial Non-Infringement Contentions must contain a chart responsive to the patentee's Infringement Contentions that identifies whether each claim element is present in each accused instrumentality, and, if it is not, the reason for the denial. The Initial Unenforceability Contentions must identify the acts that allegedly support and all bases for the unenforceability assertion. The October 2018 amendment limited the number of asserted claims to 25 per patent and 50 total, and added a requirement for § 101 invalidity contentions.

Similarly, within 14 days after service of the accused infringer's Initial Contentions, the patentee must serve a response to the contentions. (LPR 2.5.) The response must contain a chart that identifies whether each claim element is present in the prior art, and, if it is not, the reason for the denial. If the patentee is asserting infringement under the doctrine of equivalents, the patentee must include an initial explanation of each function, way, and result that is equivalent and why any differences are not substantial, to the extent not previously provided.

FINAL CONTENTIONS

While the LPRs provide for the exchange of Initial Contentions to enable the parties to focus on the contested issues from an early stage of litigation, the LPRs also provide for the exchange of Final Contentions after the parties have had an opportunity to engage in discovery. To that end, 19 weeks after the service of the Initial Infringement Contentions, any party asserting infringement must serve a list on all parties identifying no more than 10 claims per patent and 20 claims overall. (LPR 3.1.) Two weeks later, any party asserting patent infringement must serve its Final Infringement Contentions limited to 10 claims per patent and 20 claims overall.

The Final Unenforceability and Invalidity Contentions cannot rely on more than 25 prior art references unless ordered by the court upon a showing of good cause and absent unfair prejudice. Further, the accused infringer is limited to four prior art grounds per claim and four non-prior art grounds per claim. Twenty-eight days after the service of Final Contentions, the patentee must serve its response to the Final Unenforceability and Invalidity Contentions, and the accused infringer must serve its response to the Final Infringement Contentions. (LPR 3.2.) The Final Contentions may be amended only with leave of court upon a showing of good cause and the absence of unfair prejudice. (LPR 3.4.)

CLAIM CONSTRUCTION

Within 14 days after service of the responsive Final Contentions, the parties must simultaneously exchange a list of the claim terms they contend should be construed along with proposed constructions for such terms. (LPR 4.1.) The parties must then meet and confer to agree upon no more than 10 claim terms to submit for construction. If the parties cannot agree on these 10 terms, each side is allocated five terms. More than 10 terms may be presented only with prior approval by the court based upon a showing of good cause.

Thirty-five days after the exchange of claim terms, the accused infringer files the opening claim construction brief. (LPR 4.2.) The patentee then files a response brief, and the accused infringer files the reply brief. In contrast to local patent rules in other jurisdictions, the Northern District of Illinois scheduled briefing in this sequence based on the view that there would be a more meaningful exchange of contested points if the patentee, who often argues for a "plain meaning" or no construction of disputed claim terms, did not file the opening brief. (Comment to LPR 4.2.)

In addition, attorneys should be aware that the LPRs require the parties to exchange demonstratives and exhibits to be used at the Markman hearing no later than three days before the hearing. (LPR 4.3.)

2013 AMENDMENTS

In March 2013, the Northern District of Illinois adopted various amendments to the LPRs. The most notable changes included a clarification to LPR 1.3 that fact discovery does not resume as a matter of right following a claim construction ruling. Instead, the party seeking additional discovery after claim construction must submit a motion explaining why further discovery is necessitated by the claim construction ruling.

In addition to amending specific LPRs, the Northern District of Illinois amended the rules in 2013 to include Local Patent Rules for Electronically Stored Information ("ESI"). The Northern District of Illinois Local Patent Rules for ESI are based on the Seventh Circuit's Electronic Discovery Pilot Program Principles and the Federal Circuit's Model Order on E-Discovery (which has since been removed from the Federal Circuit's website).

Some notable aspects of the Northern District of Illinois Local Patent Rules for ESI include LPR ESI 2.6(d)-(e), which provide that the default for email discovery is five custodians per producing party and five search terms per custodian. LPR ESI 2.6(d)-(e) also provide that the court "shall consider contested requests for up to five additional custodians per producing party and [up to five additional search terms per custodian], upon showing a distinct need based on the size, complexity, and issues of this specific case."

The Local Patent Rules for ESI further contemplate cost shifting in the event that a requesting party seeks discovery of a large number of custodians or search terms: "Should a party serve email production requests for additional custodians [or search terms] beyond the limits agreed to by the parties or granted by the Court pursuant to this paragraph, the requesting party shall bear all reasonable costs caused by such additional discovery." (LPR ESI 2.6(d)-(e).) Similarly, the ESI rules provide for cost shifting when the requesting party seeks documents produced in a format that is not the most convenient for the responding party: "If a party requests production in a format other than the one most convenient for the producing party, the requesting party is responsible for the incremental cost of creating its copy of requested information." (LPR ESI 2.5(e).)

2018 AMENDMENTS

In October 2018, the Northern District of Illinois adopted various amendments to the LPRs. The most notable changes include a rewrite of LPR 3.1 Final Contentions, updates to reflect differences between pre-AIA and post-AIA patent law, and limits to the number of asserted claims and prior art references.

The 2018 amendments to the rules regarding initial disclosures and contentions seek to streamline and speed up litigation. LPR 2.1 was modified to require that the accused infringer provide a statement of the gross sales revenue from the accused products before the patent owner serves its initial infringement contentions. LPR 2.2 now limits the initial infringement contentions to 25 claims per patent and 50 claims total. Further, LPR 2.3 limits the accused infringer's initial invalidity contentions to 25 prior art references and expressly dictates that "[c]onclusory denials are not permitted" in the accused infringer's Initial Non-Infringement Contentions.

The 2018 amendments to LPR 3.1 require that the patent owner narrow its list of asserted claims in its Final Infringement Contentions to no more than 10 claims per patent and no more than 20 claims overall. The amendments also added restrictions on the number of prior art references that accused infringers can rely upon in their Final Unenforceability and Invalidity Contentions. Now, an accused infringer can rely upon no more than 25 prior art references, unless ordered otherwise by the court. The amendments further limited the Final Unenforceability and Invalidity Contentions to four prior art grounds and four non-prior art grounds per claim; "non-prior art grounds" are defined in LPR 3.1(b) as "indefiniteness, lack of written description, lack of enablement, unenforceability, and non-statutory subject matter under 35 U.S.C. § 101."

The 2018 amendments added language clarifying the applicability of pre-AIA and post-AIA patent law. For example, LPR 2.3 sets forth separate requirements for invalidity contentions based on "pre-AIA" theories under 35 U.S.C. § 102(f) and 35 U.S.C. § 102(g). Further, LPR 2.3 and 3.1 now require a detailed statement of any grounds for contentions that a claim is invalid under 35 U.S.C. § 101, to reflect the marked increase in § 101 challenges since the LPRs were first enacted. LPR 3.5 was modified such that the parties must advise the court whether each asserted patent is eligible to be challenged at the USPTO, how it might be challenged, when the patent will or has been challenged, and any other prior litigations. Finally, the LPRs modified other dates and filing requirements regarding discovery and expert witnesses.

Footnote

1. On March 1, 2013, the Northern District amended the LPRs; the LPRs were further amended on October 26, 2018.

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