Proposed Model Pretrial Order Limits Claims, Prior Art References

This week the Advisory Council of the U.S. Court of Appeals for the Federal Circuit published a second proposed pre-trial order for use in patent cases. (The first proposed order, dealing with e-discovery issues, is available HERE). The newest order attempts to streamline issues in patent litigation by limiting the patentee to 16 claims asserted in a case, and limiting the accused infringer to 20 prior art references asserted as bases for invalidity. In addition, the claims and references must be selected relatively early in the case, within 28 days from the court’s claim construction order.

The order is proposed as a model for consideration by judges in individual cases, and is meant to be modified as necessary to address the circumstances. The Council notes that the limits would promote efficiency and reduce both costs and burden on the courts: 

Cases with over a hundred asserted claims and over a hundred asserted prior art references during discovery are common. The identification of an unmanageable number of products can be a problem too.
 Lack of discipline by the asserting party in preparing its case is often why excess issues are maintained. The inclusion of superfluous claims and prior art can function to “hide the ball.” The result is an asymmetric burden on the responding party (and the trial court) because the asserting party often has a better sense of which issues it will ultimately pursue.
 Excess issues, unsurprisingly, inflate litigation costs. Each unnecessary asserted claim and prior art reference must be analyzed and charted, among a myriad of other unnecessary case-management tasks that follow. These attorney chores generate disputes, frequently unrelated to the merits, which unduly burden the judiciary. The per-case resources a busy judge can afford to invest in a patent case is only a fraction of what the parties and their law firms are willing to expend.
 Focusing patent cases to the issues at the core of the dispute will reduce the burden on courts and lower the expense for the parties. In addition, a greater focus on the true issues will improve the quality of the adjudicatory process for all. 

The complete model order, with commentary, is available HERE.