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 art. Download 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.