The Federal Circuit Advisory Council, which advises the U.S. Court of Appeals for the Federal Circuit on rules of court and operating procedures, recently unveiled a new model order regarding excess patent claims and prior art.
As highlighted by the council, “There is a consensus that the numbers of asserted claims, claim terms, and prior art references in patent cases are often problematically excessive. Cases with over a hundred asserted claims and over a hundred asserted prior art references during discovery are common. The identification of an unmanageable number of products can be a problem too.”
While many courts already issue orders limiting the number of patent claims and prior art references in patent cases, the model order is intended to provide a systematic approach that can be further tailored to individual cases. “Focusing patent cases to the issues at the core of the dispute will reduce the burden on courts and lower the expense for the parties. In addition, a greater focus on the true issues will improve the quality of the adjudicatory process for all,” the council argues.
The new limits occur at two phases: (1) after production of “core” technical documents but before claim construction, and (2) after claim construction but before expert reports. Below are the basis provisions of the model order:
- Not later than 40 days after the accused infringer is required to produce documents sufficient to show the operation of the accused instrumentalities, the patent claimant shall serve a Preliminary Election of Asserted Claims, which shall assert no more than ten claims from each patent and not more than a total of 32 claims. Not later than 14 days after service of the Preliminary Election of Asserted Claims, the patent defendant shall serve a Preliminary Election of Asserted Prior Art, which shall assert no more than twelve prior art references against each patent and not more than a total of 40 references.
- Not later than 28 days after the Court issues its Claim Construction Order, the patent claimant shall serve a Final Election of Asserted Claims, which shall identify no more than five asserted claims per patent from among the ten previously identified claims and no more than a total of 16 claims. Not later than 14 days after service of a Final Election of Asserted Claims, the patent defendant shall serve a Final Election of Asserted Prior Art, which shall identify no more than six asserted prior art references per patent from among the twelve prior art references previously identified for that particular patent and no more than a total of 20 references.
- If the patent claimant asserts infringement of only one patent, all per-patent limits in this order are increased by 50%, rounding up.
However, within two days of being released, all content on the Federal Circuit Advisory Council webpage was removed and replace with the message “This site is being updated and will be posted soon.” Soon thereafter, the Council webpage was restored with the exception of the two model orders. Instead, the webpage contains the following statement:
“Model orders concerning e-discovery and limitations on claims and prior art were posted on the court’s website. Those orders have now been removed since the court has not sponsored or endorsed the orders. In light of the court’s determination, the advisory council should not be viewed as having sponsored or endorsed these orders on behalf of the court.”
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