In an effort to create greater predictability for patent litigation in the Northern District of Illinois, the District enacted Local Patent Rules ("LPR") effective as of October 1, 2009.1 This annotated version of the LPRs collects decisions interpreting and applying the Rules up through February 28, 2018. 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, (iii) the communications with the Patent and Trademark Office for each patent-insuit, 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, and (ii) each item of prior art of which the party is aware that allegedly anticipates or renders the patent claims obvious. 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 Non- Infringement, 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.

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.

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, twenty-one weeks after the service of the Initial Infringement Contentions, the patentee must serve its Final Infringement Contentions and the accused infringer must serve its Final Unenforceability and Invalidity Contentions. (LPR 3.1.) Twenty-eight days later, the patentee must serve its response to the Final Unenforceability and Invalidity Contentions, and the accused infringer must serve its Final Non-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.)

Footnotes

1 On March 1, 2013, the Northern District amended the LPRs

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