Eastern District of Texas Adopts Model Order Limiting the Assertion of Patent Claims and Prior Art References


The Eastern District of Texas recently adopted a “Model Order Focusing Patent Claims and Prior Art to Reduce Costs.”  The Model Order restricts the number of patent claims and prior art references that can be raised during infringement litigation. A copy is available here.

The Model Order provides that, at the close of claim construction discovery, the patent owner must identify no more than 10 claims from each patent and no more than 32 claims for all patents-in-suit that are alleged to infringe. If only one patent is at issue, the patent owner may raise 15 total claims. Within 14 days, the accused infringer must limit its asserted prior art references to no more than 12 references against each patent-in-suit and 40 total references. If just one patent is asserted, the limit is 18. 

The Model Order goes to require additional limitations. No later than 28 days before the deadline to serve opening expert reports, the patent owner must further narrow its asserted claims to no more than five claims per patent (of the 10 claims previously identified) and a total of up to 16 claims. If only one patent is in dispute, eight total claims may be asserted. Twenty-eight days from that deadline, the alleged infringer must further narrow the asserted prior art references to six references for each patent, with 20 total references, and nine references for a single disputed patent. Moreover, each obviousness combination is counted as a separate prior art reference. 

The Court could modify these limits if either the parties agree or a party shows good cause for a proposed modification.

The model is an appendix to the Local Rules, which is intended to allow flexibility for both litigants and the Court to tailor limits on asserted claims and prior art references based on differing facts. The Texas Court’s Model Order is based on a version developed by the Federal Circuit Advisory Council’s Model Order Committee (available here). While the Federal Circuit has not endorsed any model order, Chief Judge Rader praised the Eastern District’s action, saying: “The claim reduction model order very recently introduced by this District is another admirable effort to reduce pointless expense so the parties can get to the heart of the matter. There are many patent disputes worthy of this District’s attention. It only makes sense to actively require the parties to focus their cases so that the true issues can be timely resolved. Excess claims and excess prior art has clogged the system for too long.”

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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