IP practitioners on both sides of the “v.” should take heed that the Federal Circuit Advisory Council (“the CAFC Council”) has unanimously approved a “Model Order Limiting Excess Patent Claims and Prior Art.” Citing a “[l]ack of discipline” by the asserting party, the CAFC Council recounted that the resulting “superfluous claims and prior art” have contributed to increasing the expense and burden of patent litigation. And rather than dealing with the number of claims and prior art references on an ad hoc basis, as is presently done, the aspirational Model Order sets default numerical limits on the number of asserted patent claims and prior art references.
In fashioning the Model Order, the CAFC Committee considered several issues it regarded as “key”: including What should be limited; the Timing of when limits should take effect; Limitations on the number of claims and prior art references; and the Effect a judgment has on non-elected patent claims and prior art references. It is unclear what the Committee concluded with regard to the last of these issues.
Ultimately, the Model Order sets forth that not later than 40 days after an accused infringer’s document production is due, the patentee is required to serve a Preliminary Election of Asserted Claims, asserting no more than ten claims from each patent and not more than a total of 32 claims for the case. Not later than 14 days after this, the defendant is required to serve its Preliminary Election of Asserted Prior Art, asserting no more than twelve prior art references against each patent and not more than a total of 40 references for the case.
Next, not later than 28 days after the Court’s Claim Construction Order, the patentee is required to serve its Final Election of Asserted Claims, asserting no more than five asserted claims per patent (from among the ten previously identified) and no more than a total of 16 claims for the case. Then, 14 days after this, the patent defendant is required to serve its Final Election of Asserted Prior Art, asserting no more than six asserted prior art references per patent (from among the twelve prior art references previously identified per patent) and no more than a total of 40 references for the case. The Model Order encourages the parties to lower the limits from the defaults, and to submit any proposed modifications via the parties’ Discovery Plan.
The Model Order Committee was comprised of Federal Circuit, District Court and ITC jurists, as well as veteran IP practitioners from around the U.S. The Model Order follows on the heels of the Committee’s earlier Model E-Litigation Order, which we reported on in postings here and here.
Gibbons will continue to monitor the Model Order Committee’s activities and experiences of litigants adopting the Model Orders, as well as other developments relevant to the IP law field.