As noted in an article posted today on Dennis Crouch's Patently-O blog by R. David Donoghue (of the Chicago IP Litigation blog), the Northern District of Illinois is considering a new set of patent rules (available here), including rules concerning claim construction practice. Of note are the following rules:

• Claim construction briefing starts fairly late in discovery -- 14 days after the final invalidity contentions and roughly 10 months after service of the complaint
• A general limit of ten (10) terms for construction by the Court, regardless of the number of patents, unless good cause is shown for construction of additional terms
• The accused infringer submits the initial and reply briefs; the patent holder only submits a response brief
• A 25-page limit for initial and response briefs, with a 15-page limit for the reply brief

In Mr. Donoghue's article, he notes the potential problem that "[t]he accused infringer necessarily will not have the benefit of the patentee's claim construction position at the outset of the briefing." However, this problem is at least partially solved by Local Patent Rule 4.1(a), which requires the parties to exchange both lists of claim terms for construction prior to briefing and proposed constructions of each of those terms. Nevertheless, LPR 4.1 may be more helpful to the parties, and most importantly the Court, if, after the required meet and confer to narrow the term list down to ten terms or less, the parties are required to exchange proposed constructions of each of those agreed-upon terms before briefing begins. This way, the potential element of surprise in the patent holder's response brief should be lessened.

At the very least, these proposed rules provide a good first step in streamlining claim construction practice in the Northern District of Illinois.

Thanks go out to R. David Donoghue and Dennis Crouch for bringing this to my attention.

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