Model Order Addressing Numerosity of Claims and Prior Art [UPDATED]

By Jason Rantanen

UPDATE: On Wednesday, the content of the Advisory Council page on the Federal Circuit's website was removed and replaced with the message "This site is being updated and will be posted soon."  Consequently, the two Model Orders referenced below are no longer available at the Court's website.

This morning the Federal Circuit Advisory Council, a committee including practitioners and academics formed to advise the Federal Circuit on the rules and internal operating procedures of the court, released its Model Order Re: Excess Claims and Prior artDownload Model Order Excess Claims

The Model Order is being provided as an aid to trial courts should they choose to exercise their discretion to limit the number of claims and prior art references asserted by patent holders and accused infringers.  While it is not binding on district courts, and its specific language has not been approved by the Court of Appeals for the Federal Circuit, this model order holds the potential to be a powerful mechanism for standardizing the procedures of patent litigation.  (It's also worth noting that Chief Judge Rader, three district court judges and an ITC judge served on the Model Order committee itself).  It should also be noted that the order itself is flexible and can be tailored to individual cases.

Some key points:

  • Limits imposed at two points: A preliminary stage occuring after production of "core" technical documents but before claim construction and a final stage after claim construction but before expert reports consisting of a subset of the preliminary claims/references.
  • At both stages the patent holder first identifies the asserted claims.  Fourteen days later the patent defendant identifies the prior art references.   
  • Preliminary stage: the patent holder is limited to no more than 10 claims from each patent and not more than 32 claims total, while the patent defendant is limited to no more than 12 prior art references against each patent and not more than 40 references total.
  • Final stage: the patent holder is limited to no more than 5 claims from each patent and not more than 16 claims total, while the patent defendant is limited to no more than 6 prior art references per patent and not more than 20 references total.  
  • The Model Order also includes a three-page explanation, with citations, of why adopting an order limiting excess patent claims and prior art benefits both the court and the parties themselves. 

The Model Order Re: Excess Claims follows on the heels of the Advisory Council's E-Discovery Model Order, which Dennis previously wrote about.  I've heard from several practitioners that the E-Discovery Model Order has produced a substantial positive impact on discovery in patent litigation, and that the trend is toward leaner, more focused discovery.  I'd be interested in hearing whether that's reflective of patent litigation more broadly. 

61 thoughts on “Model Order Addressing Numerosity of Claims and Prior Art [UPDATED]

  1. 61

    I deduce in the first nine pages of the citation by Jeffrey I. Auerbach in regard to large corporate firms, are as reluctant from one to negative.one for assisting independent inventors. Why? The solo inventor is not an instituiT0n.$
    link to euro.ecom.cmu.edu

    link to schox.com
    check out the omission statement above

    link to youtube.com
    We all know production is what really matters; that’s why we have oranges on orange trees.
    (excuse me, I have to clear my eyes.)

    Great article. You may also want to read this citation:
    (Osenga patents e-word)
    link to digitalcommons.law.scu.edu

    (or this citation)

    link to quno.org

    (denoted as anti-patent CRP)

    You should enjoy these as well:
    link to plosone.org

    Emmy Noether and The Fabric of Reality
    18:03

    link to ipwatchdog.com
    (excluded.by.ipwatchdog)

    []Let Malcolm once again butcher copyright law and prove his ignorance.]]
    (see Auerbach)

  2. 60

    Although I would note that the removal is beyond just the claims limitations and extends back to the e-discovery model orders.

    Hmmm.

  3. 59

    The site is back up with the following message:

      Model Orders

      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.

    This non-sponsorship message appears to moot the idea that the court stepped beyond its jurisdictional bounds as mused by Hal Wegner.

  4. 58

    Do you think it is invalid under 101 or 103, MM?

    Why not both? With respect to 101, methods of “changing the state” of an control interface for a computing device, where the “state” itself could be any “state” imaginable (“locked”, “unlocked”, “grandma-ready”, “public accessible”, “semi-dormant”, “pre-semi-dormant”, post-pre-semi-dormant”, “partially enabled” blah blah blah”) could be argued to be just an exercise in abstract labeling.

    As for 103, I’m not going to waste time digging up “specific pieces of art” for you. Suffice it to say that at the time of the invention (1) touch screens are old; (2) moving a finger on a touch screen is old; (3) using a processor to recognize movements on a touch screens and respond to those movements in a pre-determined way is old. There are no restrictions, conceptually, as to how a computer can be programmed to respond to an input. It can respond by doing nothing or it can respond by blowing itself up and everything in between. Given those facts, there is no such a thing as a “non-obvious” movement on a touch screen and there is no such thing as a “non-obvious response” to that touch screen movement. Put another way, either all combinations of new movements and responses are patentable over the prior art, or none of them are. Surely it isn’t the case that the former is true.

    Apparently the PTO likes to pretend otherwise. Perhaps you do as well. In that case, you’re both wrong.

  5. 57

    The problem is that Ford is no longer just competing for talent against the likes of GM, or even Volkswagen or Toyota, but also against consumer electronics firms ranging from Apple to Google to Dell.

    …latest software for an Apple or Android smartphone.

    link to nbcnews.com

  6. 56

    Do you think it is invalid under 101 or 103, MM?

    If 101 what is the abstract idea and why isn’t it a specific application of that idea?

    If 103 please cite and apply specific pieces of prior art to make your obviousness rejection?

  7. 55

    The marking statute was recently eviscerated, so basicly one can mark (nearly) without regard now.

    As to ‘knowing,’ well, it’s up for a court to decide that, given a patent does carry the presumption of validity.

    And if those (perpetual) QQers were really concerned, there are a number of post-grant options available (I mean, besides whining on blogs).

  8. 54

    BUI, I agree that the patent office often issues patents with independent and distinct inventions claimed. But that does present a problem in that there is only one royalty per patent under the theory that the patent covers one invention.

    So it may save the client issue fee and maintenance money to have multiple inventions claimed in one patent, but in the long run it may be foolhardy.

    On the contrary, I don’t know if there’s a doctrine that would prevent collecting multiple royalties when claims of two different patents are not patentably distinct such that there is a terminal disclaimer. Is there case law on point?

  9. 53

    LOL,

    …or, as has been asked of the anti-patent ‘Trolls,’ where is my list of modern advanced countries that have seen the light and chucked all of their IP protection laws?

  10. 51

    if it’s a guess you want, then my guess is “Yes. Yes it is”.

    7,657,849

    1. A method of controlling an electronic device with a touch-sensitive display, comprising:

    detecting contact with the touch-sensitive display while the device is in a user-interface lock state;

    moving an unlock image along a predefined displayed path on the touch-sensitive display in accordance with the contact, wherein the unlock image is a graphical, interactive user-interface object with which a user interacts in order to unlock the device;

    transitioning the device to a user-interface unlock state if the detected contact corresponds to a predefined gesture; and maintaining the device in the user-interface lock state if the detected contact does not correspond to the predefined gesture.

    Man, that is some incredible j—k. Heckuva job, PTO.

  11. 50

    You could probably name on one hand the number of times a patent was invalidated over a combination of more than three references.

    You mean a claim, not a patent.

    Again, I recognize a problem if defendants are citing dozens of pieces of cumulative art against a single claim. What I don’t get is why the defendants hands should be preliminarily tied behind his or back with a restrictive number of references. It doesn’t leave room for multiple theories of obviousness, for starters, and it tends to squelch information about the extent of the prior art that might exist (which would favor the patentee, who already has the procedural advantage with the presumption of validity).

  12. 49

    Nice post Query. Don’t mind the trolls. A good question for the trolls is how have other countries without our patent system faired?

  13. 48

    Is there a patent misuse, anti-trust or other problem with having a patent (which you know is invalid (let’s assume 102) in view of newly discovered prior art), especially where you are prominently marking your products with its patent number?

  14. 47

    I believe your Rule 56 duty to disclose issues of patentability/validity in the parent application ends when it issues

    Yep.

      37 CFR 1.56(a) states that the duty to disclose information exists until the application becomes abandoned. The duty to disclose information, however, does not end when an application becomes allowed but extends until a patent is granted on that application. The rules provide for information being considered after a notice of allowance is mailed and before the issue fee is paid (37 CFR 1.97(d)) (see MPEP § 609, paragraph B(3)).
  15. 46

    Query, I believe your Rule 56 duty to disclose issues of patentability/validity in the parent application ends when it issues – so as long as you didn’t know about the better prior art reference until the parent issued, you have no obligation to do anything about it in the parent, only in the continuation. Ceasing to pay the maintenance fee for the issued parent would obviously be a judgment call, depending on how strong the newly discovered reference is; e.g., is it such a clear anticipation that it will overcome the presumption of validity of the parent claims, or is it just a good obviousness reference?

  16. 45

    Love the new moniker, McCracken, looks good on you.

    Maybe some of the wisdom will rub off on you.

  17. 43

    (sigh)

    computer code can be covered under both copyright and patent – as anyone having basic IP knowledge can tell you.

    each type of IP protection protects a different thing. Copyright is for expression, and patent (largely) is for utility.

    don’t let certain posters mess you up, they should know better.

  18. 41

    How about you provide the patent number, let us take a lookee-see, and provide a reasoned response instead of a guess?

    Or if it’s a guess you want, then my guess is “Yes. Yes it is”.

  19. 40

    “MM, your hypo may be flawed. There seems no common subject matter between the two claims in your example. There should have been a restriction.”

    Hey, Ned, “should have” in one hand and do something else in the other, and see which one fills up first.

    Join the real world where patents grant all the time with 6 independent claims with incredibly disparate subject matter.

    I defended one with 9 independent claims all having different main features in the preamble and body of the claims. None of these main features were anywhere described in the spec, by the way – they weren’t even RECITED in the spec (this was a “div of a div of a div of a div” of an original patent that never even had a restriction requirement).

  20. 39

    “How does ROW handle this?”

    LOL – most of “ROW” doesn’t have any art reporting requirement. Even the “baby” versions of it in AU, CA, IN have been backed off on. Anywhere else? Meh, don’t cite to us, we’ll cite to you.

  21. 38

    Query, Apple has a patent on swipe to unlock. Others here have suggested that this patent is an example of a software patent.

    I asked that person why he said that. I never got an answer.

    I will now ask you.

    Is the Swipe to Unlock patent a software patent?

  22. 37

    Well, you do have a point. The operative theory is that the independent claim should not have more than three references, and each dependent claim no more than one additional.

    But I also think it fair to say that if it takes more than 3 references to show the subject matter of an independent claim, it probably is valid. You could probably name on one hand the number of times a patent was invalidated over a combination of more than three references.

  23. 36

    LOL

    Let Malcolm once again butcher copyright law and prove his ignorance.

    Thanks Malcolm.

  24. 35

    anon, I fully agree that we need to get rid of Rule 56 — assuming that the Supreme Court will not overturn Therasense in some fashion. Rule 56 imposes duties on applicant that the Federal Circuit does not, putting the applicant on the horns of a dilemma.

  25. 34

    Query, well, you might disclaim the broader claims that are invalid. I assume there are dependent claims that are valid.

    But generally, one would prefer to firm up the patentability of intermediate claims in the continuation before disclaiming the claims in the parent. There still is the possibility of a reissue or reexamination that will fix the claims in the parent.

  26. 33

    the difference between what patent law covers and what copyright law covers.

    Copyright is for instructions that change your robot chef from an egg beating machine into a paint mixing machine.

    Patents are for instructions that change your computer from a purchasable-book identifying machine into a purchasable-real estate identifying machine.

    But everybody knew that already. It makes so much sense, after all.

  27. 32

    Ned: There seems no common subject matter between the two claims in your example. There should have been a restriction.

    Fair point, although there’s a big assumption there which I’m pretty sure I don’t need to point out to you. ;)

    in most cases, one reference will disclose normally all the steps but one or two.

    Let’s say that’s true in 55% of cases (I’m not sure that it is true, particularly in the case of j–ky method claims which cite unnecessary steps that are inherent in the prior art but which still need to be proven). So ten claims, one independent, nine dependents. Defendents get just three references for the independent claim and one reference for each of the dependents? Effectively, then, defendants are allowed to present just one theory of obviousness before claim construction? That seems pretty harsh.

    I’m certainly not suggesting that there be no limits on the number of references that defendants can cite for the purposes of showing obviousness. But this number (number of claims asserted plus two) seems unduly restrictive. That would particularly be the case where there are multiple, distinct strong arguments for obviousness. Why should a defendant be restricted to presenting just one such argument (thereby giving the court and/or jury the impression that the prior art is less compelling)?

  28. 31

    Query,

    6 is purposefully ignorant of the difference between what patent law covers and what copyright law covers.

  29. 30

    LOL – the accuse-others-of-that-which-you-do CRP: accuse me of having literacy issues today.
    You are the one having trouble with the simple message here.
    You are the one that had trouble reading 6’s simple messsage elsewhere.

    But accuse away Malcolm.

  30. 28

    t’s even worse (by you) if you truly cannot see it.

    Tr 0llboy’s literacy even worse today than usual. Spit it out, Tr 0llboy! You are the All-Seeing Gawd of Your Own Universe. What are you talking about?

    Do you believe the rules are unfair to patent holders, Tr 0llb0y? If so, why? If not, then … what the h-ck are you spewling on about?

  31. 26

    Is merely not paying the maintenance fee enough? Should you not wait and immediately disclaim it?

  32. 24

    Of course Malcolm’s hypo is flawed.

    That’s what happens when you are so entrained in a ‘spin’ mode and attempt to paint any preference to patent strength as something ‘bad.’

  33. 23

    1) that is not how ROW handles this.
    2) ‘to limit’ still maintains the danger to the patentee (especially with the ill-advised discussion of anything other than your own invention in the specification – until the courts consistently become more patentee friendly, you are only inviting trouble => risk is greater than reward)
    3) the risk/reward balance of massive pile dump currently favors the patentee. You have done nothing to change that, except force a ‘bad’ situation on the patentee.

    No thanks.

  34. 22

    Query, the hypo is that the first issue patent is invalid over newly discovered prior art. 
     
    No problemo. Simply do not pay the maintenance fees.  You do not have to file a reissue as you have a continuation pending.
     
    That is one of the reason why continuations are very important.
     
     

     
     
     

  35. 21

    MM, your hypo may be flawed. There seems no common subject matter between the two claims in your example. There should have been a restriction.

    Also, in most cases, one reference will disclose normally all the steps but one or two. It would be rare, I think, that someone would invent a new combination of 7-9 steps, each individually old, where none of the old steps was ever combined with the others.

  36. 20

    anon, not disband the requirement, but limit the number of references to no more than 5 per application. Also provide that references cited in foreign counterparts can be submitted, but only those used to “reject” claims, not background references. Ditto court case references that today run into the thousands in some cases. Limit the citation permission to only those references discussed in expert reports or submitted during testimony.

    If other references are important for any reason, discuss them in the specification.

  37. 19

    Query, I think you may be getting it.  You fix the problem in the continuation.  This is a far preferable approach to filing a reissue.  Reissues force you to identify the problem and may prevent your from broadening your claims in critical areas due to the recapture doctrine.
     
    If the claims in the parent are invalid, so be it.  Simply stop paying the maintenance fees.
     
     

     
     

  38. 18

    your first application issues and the examiner finds and cites better prior art in your second (continuation) application. What do you do with your patent (first issued application)

    Why, you just work out a deal with a “patent monetizer” who will identify and threaten several hundred businesses who seem inclined to give money to “patent monetizers.”

  39. 17

    Lulz, what a conclusion to draw!

    Although it probably is true that software authorship has certainly taken right off with everyone and their grandma now using “apps”. That hardly means that “innovation” in the software authorship field is where the “technological advances” are coming from.

  40. 15

    I respectfully submit is another good argument in favor of patenting software.

    What’s the other good argument? ;)

    In all seriousness, you haven’t made any “argument” at all here, just some leaps in logic. “Software employment grows 45%.” That’s nice. I’m sure employment in many other fields of endeavor also grew. Does that mean that “technological advances” are coming from those fields? Nope. Even if such a correlation existed, does the fact that “technological” “advances” are coming from some field necessarily mean that the field requires patents? If you believe that, explain why. Better yet, provide some evidence that your theory applies to the development of software concepts (i.e., the type of “inventions” that are actually claimed, as opposed to the writing of code). Perhaps include in your discussion some acknowledgement of exactly who benefits most from software patents. Maybe you can reflect on the soaring wages for “software developers” and how that ties into your theory.

    It’s also true that new microbial organisms and viruses are being discovered and sequenced at higher rates than ever. Jobs for sequence-machine operators and analysts are up. Does that mean we need more sequence patents and more patents on methods of looking at sequences?

  41. 14

    Not w anking at all, Malcolm, just pointing out your typical hypocrisy.

    You’re welcome.

  42. 13

    And so, Ned, your first application issues and the examiner finds and cites better prior art in your second (continuation) application.

    What do you do with your patent (first issued application)?

  43. 12

    Software Employment Grows 45% in 10 Years, as Angst in Engineering Grows.

    link to cio.com

    This means that technological advances are coming from software, and I respectfully submit is another good argument in favor of patenting software.

  44. 11

    any limitation concerning what the patent holder can do is not biased at all…

    Do you believe that these rules are unfair to patent holders, Tr 0llboy? Or are you just w anking again because it’s Monday?

  45. 10

    I get that these are “flexible” rules but the presumptions seem biased against the defendants.

    Because any limitation concerning what the patent holder can do is not biased at all…

    (well, at least per the Infringer’s Rights Handbook)

    /eyeroll

  46. 9

    the patent holder is limited to no more than 10 claims from each patent and not more than 32 claims total, while the patent defendant is limited to no more than 12 prior art references against each patent and not more than 40 references total.

    How did they come up with these numbers?

    Patentee asserts a patent with 10 claims. The first independent claim recites 9 separate steps. The second independent claim recites 7 distinct steps. Each of the four dependent claims adds 1-3 additional distinct steps.

    The defendant is limited to only 12 prior art references in that instance? That seems arbitrary and a bit restrictive, as if one of these “experts” decided “if you need more references than “the number of asserted claims + 2″, then at least one claim in the patent is probably non-obvious.” Really? Any data to support that? I can begin to see the reasoning if the key number is the number of claim limitations but not if its simply the number of claims.

    The calculus is even worse for the “final stage.”

    I get that these are “flexible” rules but the presumptions seem biased against the defendants. Also, I assume that defendants would be permitted to put in the record, where applicable, the fact (and supporting evidence) that a given reference is merely representative of a sample of, say, hundreds or thousands of similar references which disclose the same subject matter (as is often the case). That would seem to be a relevant consideration for obviousness, at least.

  47. 8

    LOL – although, I think things might be humorous if all monikers were defaulted to ‘anon.’

    Could you see how busy Leopold would be?

  48. 5

    How does ROW handle this?

    (yes, that is rhetorical – simply disband the requirement for submissions; but you somehow have to deal with that ‘rogue’ bunch that will try to get patents when they know that they are not entitled to such)

    You might re-review Armitage’s glorious praise of the AIA…

  49. 4

    I concur with the strategy. However, some clients don’t see the dollars when the cents are in front of them, and (as usual) it’s their call.

  50. 3

    Mr. Query, why not? I think it is good practice to take allowed, but narrow claims, and file a continuation on the broader claims. This leads to multiple patents from narrow to broader, but as time goes on, better prior art is found and necessary limitations are added or subtracted accordingly. Trying to do everything in one application with an important invention might be a mistake.

  51. 2

    I must say, this is a great step forward.

    Now, how do we get such a rule in the PTO so that applicants can’t simply flood the PTO with prior art?

  52. 1

    So prosecutors should consider breaking the invention down into numerous applications (thus patents) instead of one or two?

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