Federal Circuit Advisory Council Releases Model Order Limiting Excess Patent Claims and Prior Art | Practical Law

Federal Circuit Advisory Council Releases Model Order Limiting Excess Patent Claims and Prior Art | Practical Law

The Federal Circuit Advisory Council has released a Model Order Limiting Excess Patent Claims and Prior Art. The Order aims to aid trial courts by limiting the number of patent claims and prior art references a patent claimant may raise in litigation with the goal of reducing the burden on the courts and lowering the parties' costs. 

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

by Practical Law Intellectual Property & Technology
Published on 23 Jul 2013 • USA (National/Federal)
The Federal Circuit Advisory Council has released a Model Order Limiting Excess Patent Claims and Prior Art. The Order aims to aid trial courts by limiting the number of patent claims and prior art references a patent claimant may raise in litigation with the goal of reducing the burden on the courts and lowering the parties' costs.
The Federal Circuit Advisory Council released a Model Order Limiting Excess Patent Claims and Prior Art (Order) on July 22, 2013. The Order is intended to serve as a case management tool to control the number of litigated claims, claim terms and prior art references to reduce the parties' (and, particularly, the responding party's) costs in patent infringement cases. The model order is designed to supplement all other discovery rules and orders and for the courts to customize to suit their particular needs.
Key provisions of the Order include phased limits on asserted claims and prior art references. The Order specifies limits at two different stages, a preliminary stage and a final stage. During both stages, the patent holder first identifies the asserted claims and the patent defendant has 14 days to identify prior art references.
During the preliminary stage:
  • The patent holder is limited to no more than ten claims from each patent and 32 total claims.
  • The patent defendant is limited to no more than 12 prior art references against each patent and 40 total references.
During the final stage:
  • The patent holder is limited to no more than five claims from each patent and 16 total claims.
  • The patent defendant is limited to no more than six prior art references and 20 total references.