Federal Circuit Advisory Council Model Order Limiting Excess Patent Claims and Prior Art

The Federal Circuit Advisory Council released a Model Order aimed at limiting Excess Patent Claims and Prior Art.  The Model Order Committee includes:  Chief Judge Randall Rader (Fed. Cir.); Chief Judge Leonard Davis (E.D. Tex.); Judge Theodore Essex (ITC); Judge Katherine Forrest (S.D.N.Y.); Judge Lucy Koh (N.D. Cal.); Tina Chappell (Intel); Morgan Chu (Irell); Sean Cunningham (DLA Piper); Isabella Fu (Microsoft); Mike McKool (McKool Smith); Edward Reines (Weil Gotshal - Chair); and John Whealan (GW Law School).  More information about the committee members can be found at the Federal Circuit Advisory Council page. The announcement states that the Model Order "is offered to aid trial courts in the exercise of their discretion in crafting orders tailored to the facts and circumstances of each case."   The Model Order proposed phased limits for identifying asserted claims and prior art references.  The first phase is triggered after an accused infringer produces documents sufficient to show the operation of the accused instrumentalities ("Instrumentality Documents").

Phase I

• 40 days after Instrumentality Documents are served, patent claimant serves a Preliminary Election of Asserted Claims (PEC), identifying no more than 10 claims from each patent and not more than a total of 32 claims;
• 14 days after PEC, the accused infringer serves a Preliminary Election of Asserted Prior Art (PEPA), identifying no more than 12 prior art references against each patent and not more than a total of 40 references

Phase II

• 28 days after the Court issues a Claim Construction Order, patent claimant serves a Final Election of Asserted Claims (FEC), identifying no more than 5 claims per patent from among the 10 previously identified in the PEC and not more than a total of 16 claims;
• 14 days after FEC, the accused infringer serves a Final Election of Asserted Prior Art (FEPA), identifying no more than 6 prior art references per patent from among the 12 prior art references previously identified in the PEPA and not more than a total of 20 references

The Model Order also provides that if the case involves only one patent, the per-patent limits would increase by 50%.  Footnote 1 of the Model Order notes:

The parties are encouraged to discuss limits lower than those set forth in this Model Order based on case-specific factors such as commonality among asserted patents, the number and diversity of accused products, the complexity of the technology, the complexity of the patent claims, and the complexity and number of other issues in the case that will be presented to the judge and/or jury. In general, the more patents that are in the case, the lower the per-patent limits should be. The parties shall jointly submit any proposed modifications in their Federal Rule of Civil Procedure 26(f) Discovery Plan.

In my next post, I'll comment on what I think of this Model Order.  My initial thoughts are that the prior art reference limit is inadequate and the proposed timings for disclosures puts a defendant at a severe disadvantage.