'; Local patent rules see some changes

Local patent rules see some changes

January 4, 2019 Chicago Daily Law Bulletin

The Northern District of Illinois issued several important changes to the Local Patent Rules on October 26, 2018.  Below is a summary of the more significant changes.


The Northern District of Illinois was one of the first federal district courts to adopt Local Patent Rules (“Rules”) in 2009, and the Rules were revised in 2013.  The Rules provide a framework for the advancement of a patent litigation from the filing of the complaint until trial.  The Rules address the timing and sequence of events including the initial disclosures, infringement and invalidity contentions, the claim construction hearing (Markman Hearing), discovery of opinions of counsel, and expert discovery.  One of the objectives of the Rules is to provide uniformity and predictability of patent cases in the Northern District of Illinois.  For the most recent changes, the Northern District of Illinois requested input from attorneys who appeared in patent cases, convened an Advisory  Committee of judges and attorneys, and published the changes for public comment.  The Northern District of Illinois also participates in the Patent Pilot Program in which Judges volunteer to hear patent cases and the judges will receive transfers of patent cases from other judges in the district who prefer to not preside over patent cases.

Alleged Infringer Must Disclose Product Revenue in Initial Disclosure

One important change is that the alleged infringer must disclose the revenue of the accused product in the Initial Disclosure.  Specifically, Local Patent Rule 2.1(b)(3) states that an alleged infringer must provide “a statement of the gross sales revenue from the accused product(s) a) for the six (6) year period preceding the filing of the complaint or, if shorter, b) from the date of issuance of the patent that will enable the parties to estimate potential damages and engage in meaningful settlement negotiations.”  The goal is for the parties and the court to have a better understanding of the amount of money in dispute in order to facilitate settlement discussions.  As with the other Initial Disclosures, the revenue statement is due 14 days after the defendant files its answer or other response, or 14 days after the plaintiff files its answer or other response to the defendant’s counterclaim.

Limit on the Number of Patent Claims

Another important change is that the patent owner is now limited on the number of patent claims which can be asserted in a litigation.  Local Patent Rule 3.1(a)(2) states that “no Accused Instrumentality [i.e. product or service] may be accused of infringing more than ten (10) claims per patent and twenty (20) claims overall…  If the Doctrine of Equivalents is being asserted, the Final Infringement Contentions must include an explanation of each function, way, and result that is equivalent and why any differences are not substantial.”  Some patent litigations can involve multiple patents and several claims from each patent which in a few cases can be over one hundred patent claims at issue.  The goal of the Rule is to limit the number of patent claims to a manageable number.

Limit on the Number of Invalidity Grounds in Contentions

An additional important change is that an alleged infringer is limited on the number of invalidity grounds that can be used to invalidate a patent claim.  Local Patent Rule 3.1(b) states “Final Invalidity Contentions may rely on more than twenty-five (25) prior art references only by order of the Court upon a showing of good cause and absence of unfair prejudice to opposing parties.  For each claim alleged to be invalid, the Final Unenforceability and Invalidity Contentions are limited to four (4) prior art grounds per claim and four (4) non-prior art grounds.  No claim asserted to be infringed shall be subject to more than eight (8) total grounds per claim.”  As noted above some patent cases can involve multiple patents and several claims from each patent.  The alleged infringer often defends the action by asserting that the patent claims are invalid in view of one or more prior art references.  As can be appreciated, the number or prior art references and combinations can quickly exceed over one hundred.  The goal of the Rule is to limit the number of references and combinations to a manageable number.

Responses to Non-Infringement Contentions Must Include an Explanation

A patent claim can be infringed literally or can be infringed under the Doctrine of Equivalents.  The Rules have been amended to address the Doctrine of Equivalents.  Specifically, Local Patent Rule 2.5(b) states that “if the party asserting infringement intends to rely upon Doctrine of Equivalents, such party must include an initial explanation of each function, way, and result that is equivalent and why any differences are not substantial.”  One of the objectives of the Rule is for the patent owner to set forth its position on the Doctrine of Equivalents early in the case during the Initial Contentions phase.

Disclosure of Prior Proceedings and Stay for Patent Office Proceedings

The Rules have been amended to provide disclosure of prior and potential proceedings.  The validity of a patent can be challenged in Court, or at the U.S. Patent and Trademark Office, or in both venues at the same time.  A few years ago, the patent statute was amended to include Inter Partes Review (“IPR”) proceedings which facilitate validity challenges of patents at the USPTO.  An IPR must be filed within a specific time period after the patent has been asserted.  Local Patent Rule 3.5(a) has been amended to state that: “the parties shall advise the court with respect to each patent in suit (1) whether the patent is eligible to be challenged at the USPTO by each defendant, (2) what form such a challenge may take (inter parties review, post grant review, covered business method review, ex parte reexamination, etc.), (3) the earliest and latest date such a challenge is permitted to be made for each defendant, (4) whether the patent has been the subject of prior USPTO reviews and, if so, the status of the same, and (5) any other prior litigation history of the patent and the status of the same.”

Discovery Concerning Opinions of Counsel

In patent cases, an alleged infringer may rely upon the advice of counsel in defense to a charge of willful infringement.  Local Patent Rule 3.6(a) has been amended so that discovery on the substance of the advice of counsel will not begin until seven days after the court’s claim construction ruling.


The changes to the Rules should make patent cases more manageable and address issues which arose under the original Rules.

John Augustyn