New Proposed Patent Rules Significantly Change Claim Construction Briefing

by David Donoghue (of Chicago IP Litigation and Holland & Knight)

The Northern District of Illinois judges are currently considering public comments on a new set of proposed Local Patent Rules – click here to download a copy of the proposed rules. The Court expects to enact a finalized version of the proposed Patent Rules later this year. As currently written, the rules likely will have a significant impact on the way that patent cases are litigated in the Northern District, and may result in an influx of patent cases to the Northern District, which is already among the top five for patent cases. As a result, patent litigators throughout the country should keep an eye on the proposed Patent Rules as they progress through the Court’s committee. While the proposed Patent Rules resemble those of the other major patent districts such as the N.D. California and the E.D. Texas, they differ in two rather significant respects:

1.     The proposed Patent Rules promote uniformity, not speed.

The proposed Patent Rules contemplate a trial approximately two years after a complaint is filed. During a public comment session, several Northern District judges pointedly stated that, in seeking to promulgate local patent rules, the Court does not want to become a “rocket docket” for patent cases. And the Court does not seek to become the busiest patent docket in the country. Instead, the aim of the local patent rules is simply to promote uniformity and best practices among the judges of the Northern District. The Northern District of Illinois is one of the largest districts in the country, and uniformity among the District’s would promote case management predictability for both the Court and the litigants. Each Northern District judge currently schedules patent cases based upon her own experience, with little uniformity among the judges. The proposed Patent Rules attempt to remedy that.

That said, the rules are optional, not mandatory—individual judges will be able to deviate from the proposed Patent Rules. But the proposed Patent Rules at least will provide a starting point for uniformity and a suggested framework for the judges who choose to adhere to them.

2.     Defendant opens and closes Markman briefing late in fact discovery.

The biggest deviation from the Northern District of California and Eastern District of Texas patent rules occurs in the claim construction phase. Significantly, the proposed Patent Rules do not contemplate two rounds of simultaneous briefing, as has become commonplace in patent cases. Instead, the proposed Patent Rules provide for a single set of briefs: the accused infringer files the opening brief, the patent holder responds, and the accused infringer replies. Notably, the accused infringer—not the patent holder—submits the initial and final briefs. The accused infringer necessarily will not have the benefit of the patentee’s claim construction position at the outset of the briefing. The practical impact of having the accused infringer file the opening claim construction brief remains to be seen, although some practitioners view this provision as having the potential to greatly increase the number of patent cases filed in the Northern District.

At the public comment session held on March 23, the judges on the rules committee explained the rationale behind this provision. Concurrent briefing, they noted, wasted a lot of time. The parties’ opening briefs tend to be ships passing in the night—the parties often argue past each other, rendering the opening briefs incomprehensible, or they agree with each other, rendering those points moot. As a result, neither the disputed claims nor the parties’ positions are fully understood until the concurrent responsive briefs. The proposed Patent Rules contemplate streamlining the process by eliminating simultaneous briefs.

The judges also addressed their decision to have the accused infringer, rather than the patent holder, begin the briefing. The judges explained that the patent holder’s opening argument is often for the “ordinary” meaning of claim terms. As a result, when the patent holder opens the briefing, the accused infringer has no chance to address many of the patent holder’s arguments because the patent holder often does not make those arguments until the reply brief. So, the judges explained, the Court and the parties are better served by having the accused infringer open the briefing with the patent holder responding to the accused infringer’s claim construction arguments.

Interestingly, a comment was made at the session pointing out that the Court has not decided how to schedule briefing when both parties assert patents against each other, that is, when each party is a patent holder and each party is an accused infringer. A possible resolution would be to allow two sets of parallel briefs with the accused infringer for each set of patents opening the briefing for those patents.


The proposed Patent Rules notably differ from the rules of other courts in two significant respects: the new briefing schedule, and for the fact that they are not aimed at decreasing the time to trial or at significantly growing the Northern District of Illinois’s patent docket. Assuming that the Court institutes the proposed Patent Rules with the current claim construction briefing schedule, it will be very interesting to see whether and how the claim construction procedures impact both case outcomes and the number of patent filings in the Northern District of Illinois.

For those interested in the specifics of the proposed Patent Rules, here is a general outline of the timeline and procedure that the Rules outline:

  • A standard protective order in place from the beginning of the case, unless and until it is modified, to avoid discovery delays being blamed upon entry of a protective order;
  • Automatic document production requirements of plaintiff when initial disclosures are served and of defendant when initial noninfringement and invalidity contentions are served;
  • Plaintiff serves initial infringement contentions two weeks after initial disclosures and defendant respond with initial noninfringement and invalidity contentions two weeks after that, followed two weeks later by plaintiff’s response to the invalidity contentions;
  • Plaintiff files final infringement contentions twenty one weeks after its initial contentions and defendant responds four weeks later with final noninfringement, invalidity and unenforceability contentions (after the final contentions, leave of Court is required for any amendments);
  • No party can seek a stay pending reexam after serving its final contentions;
  • The claim construction process begins two weeks after defendant’s final invalidity contentions are served;
  • Defendant files an opening claim construction brief along with a joint appendix including the patents in suit and their prosecution histories consecutively paginated, plaintiff then files a responsive brief within four weeks, and defendant has two weeks to file a reply;
  • Fact discovery closes forty two days after the claim construction rulings, which triggers expert discovery followed by a dispositive motion deadline; and
  • A trial is contemplated approximately two years after the filing of the complaint.

28 thoughts on “New Proposed Patent Rules Significantly Change Claim Construction Briefing

  1. 27

    I have to disagree with Mr. Inoye. The rules do not favor the defendant. The reason you see DJs filed in N.D. Cal. is unrelated to the rules. Companies tend to file DJs in ND Cal because (1) the jury pool tends to be better educated, (2) the jury pool tends to be familiar with technology, (3) the judges have experience, and (4) ND Cal is home turf for significant numbers of companies.

    E.D. Tex has very similar rules to N.D. Cal. but I would never (or almost never) suggest filing a DJ there.

    The rules, if followed correctly, cost the defendant significant expense. The plaintiff has some expense, but if the plaintiff is a NPE, the expenses drop sharply.

  2. 26

    Daniel correctly points out a major mistake in this article: ND Cal and ED Tex patent rules don’t require simultaneous briefing; so they are not ships that pass each other by. The difference to ND Illinois’s proposed rules is that the accused infringer goes first here and gets a reply. I think its an advantage for the accused infringer to have an extra round of briefing. And, maybe I missed this, don’t both parties have to disclose their claim construction positions before briefing under the proposed rules? If so, the article (or the judges) are wrong when it claims that the accused infringer will not have the benefit of the defendant’s constructions.

  3. 24

    Da Greek observed: “Sounds to me like Ill wants to be the ‘defensive’ counterpart to the plaintiff bar in ED Tex.”

    It probably won’t achieve that end. The beauty, from the plaintiff’s POV, and travesty, from the defendant’s POV, of litigating through non-practicing entities is that any defendant large enough to be doing a substantial amount of business nationwide can probably be dragged into any forum of the plaintiff’s choosing, but the reverse is not true. For how many NPEs will you be able to get venue in N.D. Ill.? I guess this has some utility for BigCo vs. MegaCo disputes.

  4. 23

    Sounds to me like Ill wants to be the “defensive” counterpart to the plaintiff bar in ED Tex. By giving the defendant the first crack at the Markman you effectively cede control of the debate, and what terms are really important. Defendants merely look at it from a results-oriented perspective, so every minute difference is magnified into a “debate.” I foresee a lot of DJ cases, but not many original infringement cases.

  5. 22

    Based on Superguide, and especially the comment in footnote 10 citing to Brown, the only correct way to claim it in my view is “at least one of A or B.”

    Here is footnote 10:

    “Indeed, SuperGuide does not articulate its argument that “at least one of” means “one or more of the four listed criteria” without using the term “or” to separate the four listed categories. See Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) (interpreting the phrase “at least one of two-digit, three-digit, or four-digit year-date representations” as “only two-digit, only three-digit, only four-digit, or any combination of two-, three-, and four-digit date-data”). ”

    So Applicants can alwys cite to Superguide and Brown to overcome any 112 rejection for the use of “or.” There is explicit authority stating that we MUST do it that way if we mean an “inclusive or.”

  6. 21

    In Mass Local Rule 16.60, we (1) simultaneously exhange iniial claim constructions; (2) simultaneously file construction briefs; and (3) Both parties file joint claim construction statement listing disputed and undisputed terms. at hearing, testimony and expert witness testimony can be entered.

    Dennis, can your team put together a list of the claim construction local rules for all the courts? This would be a nice piece of infromation.

  7. 19

    Use “or” or use some other format. It’s silly, but, it’s Prost’s prose.

    See Superguide vs Directv: “The phrase “at least one of” precedes a series of categories of criteria, and the patentee used the term “and” to separate the categories of criteria, which connotes a conjunctive list. A common treatise on grammar teaches that “an article of a preposition applying to all the members of the series must either be used only before the first term or else be repeated before each term.” Willaim Strunk, Jr. & E. B. White, The Elements of Style 27 (4th ed. 2000). Thus, “[i]n spring, summer, or winter” means “in spring, in summer, or in winter.” Id. Applying this grammatical principle here, the phrase “at least one of” modifies each member of the list, i.e., each category in the list. Therefore, the district court correctly interpreted this phrase as requiring that the user select at least one value for each category; that is, at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type”

  8. 18

    Thanks Daniel, for addressing my concern that these proposed local rules are not necessarily providing much earlier and much less costly disposals of those patent suits in which an infringement allegation can only be supported by a twisted over-reading of claim scope by the patent owner, especially one reading directly on prior art.

  9. 17

    Wow, that is a poorly reasoned set of rules for several reasons.

    First, I don’t know if it is the original author or the judges, but it is flat out wrong to say ND Cal or ED Tex rules have simultaneous briefing. In both cases, the patent owner — and only the patent owner — files an opening brief, the accused infringer then responds, and then the patent owner files a reply brief. The ND Ill rules don’t eliminate simultaneous briefing, they just reverse the order of the parties. I’m not sure what I think about reversing the order of the parties. My first impression is there’s got to be an issue of whether those rules are even permissible because there’s at least an argument that they improperly shift the burden on infringement. I can’t decide if it would be an advantage to a defendant to go first. On one hand, the issues are usually pretty well laid out by the terms and so going first has its advantages. On the other hand, the burden is on the patent holder to establish an infringement theory.

    I am strongly opposed to moving claim construction later in the proceeding. The reason is claim construction can often be dispositive. By moving it later, you are allowing a plaintiff with a weak case to stay in the game longer and force unjust settlements based on increased litigation costs. Of course, this is not to say that early claim construction is uniformly accepted. Judge Wilken in ND Cal deviates from the standard ND Cal order and merges claim construction with summary judgment near the end of the case.

    Next, I am not sure the concept of non-infringement contentions will work. In my experience, infringement contentions are often not detailed enough to be able to respond on a claim by claim basis. I imagine the typical response may be just a denial that each element is present. Regardless, two weeks is way too short a time for a response.

    I like the idea of a protective order that gets entered right away. The protective order in the draft rules appears to ignore the two main areas that are controversial in patent protective orders — prosecution bar and source code production. It seems pretty dangerous for the default order to be no prosecution bar.

  10. 16

    I was taught to avoid using OR in US claims – because considered indefinite – hence the formulation: selected from a group consisting of at least one of a, b AND c.

  11. 15

    Mr Mooney, I agree it doesn’t matter, in the context of construing patent claims. But would your answer be any different, in an environment of grammatical experts? If “and” is right, and “or” is wrong, for a Markush group wording (which surely must be “right”), then I would expect “and” to be right, and “or” to be “wrong” even after excision of the words “the group consisting of”.

    Readers, this self-indulgent exchange isn’t entirely frivolous. It goes to the issue, who construes patent claims, and how do they do it (You see I’m still thinking of the claim in Chef America).

  12. 13

    “Which one is it?”

    The answer is: it doesn’t matter, both mean the same thing to skilled and ordinary readers, and even if you are asked to amend the language to change it, the amendment would not affect your rights in any meaningful way.

    Personally, I prefer (a). I use the “and” in Markusch groups when I preface the list with the phrase “the group consisting of.”

  13. 12

    Which one is it?

    (a) At least one of A, B OR C

    (b) at least one of A, B AND C ?

  14. 11

    P.S. filing a U.S. non-publication request if there is any possibility that foriegn filing was already arguably planned or intended by anyone involved at that time also strikes me as asking for an inequitable conduct accusation if the patent is ever litigated, because the non-publication request under that same statute requires a statement “certifying” that the disclosed invention has not and WILL NOT be foriegn filed.

  15. 10

    As you know, the MPEP is not the law, the actual application publication Statute is, and that statute, 35 USC 122(b)(2)(Biii) says that failure to comply* “shall result in the application being regarded as abandoned…unless**” [i.e., Automaticly fatal]

    * failure to remember to file a notice, within only 45 days of any foreign filing, to END the non-publication.
    **[If the patent issues it will then be too late to petition that the failure to file that notice was unintentional, ergo, patent invalid.]

  16. 9

    It may not have been misleading, unless you did not intend not to misunderinterpret none of the following:

    It is an incorrect statement of law as phrased. The request of non-publication does not invalidate the patent.

    A positive assertion of the law is as follows:
    Filing a non-publication request keeps your application from publishing, until you decide file abroad in which case your app goes abandoned (unless you notify the Office within 45 days …) – See 1.213 MPEP.

    The MPEP is syllogistically flawless, its errors non-existent and it is spared from all tautology.

  17. 8

    Re the above off-topic discussion of why a relatively small percentage of U.S. applicants request non-publication of their application [which invalidates their patent unless they give up trying for any foreign patent rights [where it would get published]]: Besides the two reasons noted above, some individual inventors do it just for the small cost savings.
    The pending pantent reform legislation would close this limited publication escape option for such U.S.-only filings. [It was added by a compromise amendment to the 1999 AIPA legislation at the insistence of a small inventor representative.]

  18. 7

    Thanks for your comments, Mr. Inoye.
    Since local District Court rules for patent cases are spreading, it would make for an interesting academic study to see if they actually reduce litigation costs. [That is the aspect of it most of interest to the clients who pay for all of it, not just the benefits to to the Judges, albiet faster and easier case disposals can benefit both.]
    [Personally, I think much earlier decisions on S.J. motions for invalidity are needed for some troll suits for that reason, but I doubt if many of these local rules, or the CAFC, will be of much help for that?]

  19. 6

    This article starts out with the flawed assumption that Patent Local Rules of the type that the Northern District of Illinois is considering are favorable to patentees and will attract more patent cases.

    Having litigated in numerous districts that have adopted these types of rules (N.D. Cal., E.D. Tex., W.D. Pa., S.D. Cal.), they generally have the opposite effect and are often more favorable to defendants. This is because they force the plaintiff to make an early, very detailed and more binding disclosure of its infringement theories. This is a big part of the reason the Northern District of California (where the rules were first pioneered) is the top district in the U.S. for accused infringers to bring declaratory judgment actions, but has fallen steadily in the number of plaintiff-brought cases (and why its neighbor, the Central District of California, which has no patent local rules, has climbed in popularity in plaintiff-brought cases during the same period). E.D. Texas is the big exception to this, but that’s because it has other plaintiff-friendly benefits that outweigh any detriment from patent rules.

    I guess my bottom line is that it isn’t clear if these rules will actually increase the number of cases filed in Chicago. The Chicago lawyers who wrote the article would want to hope so, but history is not quite on their side.

  20. 4

    request nonpublication, so that there is no published application which is prior art against your later inventions

  21. 3

    I have a couple of questions (based on experience of patent litigation in the English courts): if the claims are to be construed by the court, after having donned the mantle of the PHOSITA, doesn’t the court need to have the benefit of cross-examination of expert witnesses, who can guide the court through the mind of the notional PHOSITA at the relevant date, before it embarks on the very demanding task of construing the claim in suit? Does an American district court judge have to decide what the claim means without benefit of any such cross-examination, or does cross-examination occur, somewhere along the road, before the court rules on what the claim means.

  22. 2

    >>The only reason nowadays to request nonpub is >>to try to pull some obvious claims over on the >>industry.

    I just had a client that requested thier application not be published. The reason was so that a large technology company wouldn’t copy their invention before they had a patent.

  23. 1


    The only reason nowadays to request nonpub is to try to pull some obvious claims over on the industry.

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