WHITE PAPER
Tenth Anniversary Update: Annotated Local Patent
Rules for the Northern District of Illinois
Ten 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”).
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This annotated version of the LPRs is
released in honor of the 10th anniversary of the LPRs. In the 10 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 September 30, 2019. 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 appli-
cable 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.
1. On March 1, 2013, the Northern District amended the LPRs; the LPRs were further amended on October 26, 2018.
October 2019
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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 protec-
tive 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-AIA patents);
(iii) the communications with the Patent and Trademark Office
for each patent-in-suit; and (iv) ownership of the patent rights.
For accused infringers, these disclosures include: (i) docu-
ments sufficient to show the operation and construction
of all aspects or elements of each accused instrumental-
ity identified with specificity in the complaint; (ii) each item
of prior art of which the party is aware that allegedly antici-
pates or renders the patent claims obvious; and (iii) a state-
ment 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 ini-
tial 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 ini-
tial 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 unen-
forceability 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 identify-
ing no more than 10 claims per patent and 20 claims overall.
(LPR 3.1.) Two weeks later, any party asserting patent infringe-
ment 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
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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 con-
struction 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 vari-
ous 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 rul-
ing. Instead, the party seeking additional discovery after claim
construction must submit a motion explaining why further dis-
covery 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 pro-
ducing 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 shift-
ing 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 request-
ing party shall bear all reasonable costs caused by such addi-
tional discovery.” (LPR ESI 2.6(d)-(e).) Similarly, the ESI rules
provide for cost shifting when the requesting party seeks doc-
uments 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 produc-
ing party, the requesting party is responsible for the incre-
mental 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 dif-
ferences between pre-AIA (America Invents Act) and post-AIA
patent law, and limits to the number of asserted claims and
prior art references.
