The Disappearing Federal Circuit Advisory Council Model Orders

By Jason Rantanen

In late July, a model order relating to the number of asserted claims and prior art referenes in patent litigations was released on the Federal Circuit Advisory Council's webpage.  (You can read the PatentlyO post here.)  This new model order followed an earlier order relating to discovery issues in patent litigation that Dennis wrote about in September 2011.  In a surprising development, 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."

Recently, the Advisory Council webpage was mostly restored with the exeption of the two model orders.  Instead, the webpage contains the following text:

The Advisory Council published model orders concerning e-discovery and limitations on claims and prior art, and posted a disclaimer that the Court did not approve the model orders.  To avoid the risk of any misperception that the Court has endorsed or taken any position on the model orders through the Advisory Council, or otherwise, the Advisory Council confirms that it does not sponsor or endorse orders.

A linked PDF adds simply:

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.

While not speculating on the court's internal reason for taking this action, it's worth noting that there's an interesting tension here between the Federal Circuit's historical mandate to bring uniformity to patent law (a mandate that is usually thought of as applying to substantive patent law but might involve procedural issues unique to patent law) and the statutory basis for the Advisory Council, 28 USC § 2077:

(b) Each court, except the Supreme Court, that is authorized to prescribe rules of the conduct of such court’s business under section 2071 of this title shall appoint an advisory committee for the study of the rules of practice and internal operating procedures of such court and, in the case of an advisory committee appointed by a court of appeals, of the rules of the judicial council of the circuit. The advisory committee shall make recommendations to the court concerning such rules and procedures. Members of the committee shall serve without compensation, but the Director may pay travel and transportation expenses in accordance with section 5703 of title 5.

(emphasis added).  Despite the issues surrounding the creation and distribution of the model orders themselves, they're still useful tools for patent litigators to be aware of and draw from.  The E-Discovery model order formed the basis for an E-Discovery model order adopted in the Eastern District of Texas (albeit with some variation), has been employed in litigation in other districts, and (according to a quick search on Westlaw) has been referenced or quoted in full in over two dozen secondary sources (include a few articles that discuss the order in depth).

Copies of the now withdrawn model orders are available here:

Download Model-order-excess-claims

Download Ediscovery-model-order

Update: Steve Joncus dropped me a note to tell me that the District of Oregon has adopted the E-Discovery model order in its entirety (LR 26-6), available here.