Last week, the Federal Circuit Advisory Council announced a Model Order intended to encourage limitations on patent claims and prior art in increasingly costly and complex patent cases. However, the order recently disappeared from the Federal Circuit’s website without much explanation. [Update: The Federal Circuit Website has been updated to explain that Model Orders advanced by the Advisory Council have been removed from the Federal Circuit website since the Court itself does not sponsor or endorse the Model Orders.]
The Model Order was advanced to address the issue of increased costs, on both parties, arising out of increasingly complicated patent cases. Savvy plaintiffs can leverage the complexity of a large number of patents which may themselves have a large number of claims (perhaps more than one hundred) to drastically increase the costs of litigation. This can often be the case even when the scope of the asserted claims is largely redundant. Similarly, defendants can leverage a large number of prior art references to assert an excessive number of invalidity arguments, many of which may be superficial in nature but nonetheless increase complexity and cost.
Fortunately, whether or not the Federal Circuit endorses any particular Model Order many district courts cite the inherent authority to manage their docket or to promote a just, speedy, and inexpensive resolution of an action, to impose limitations in patent cases. For example, in Medtronic MiniMed, Inc. v. Animas Corp., No. 12-cv-04471 (C.D. Cal. Apr. 5, 2013), defendants successfully limited the 255 claims asserted to a total of 36 (4 claims for each of the 9 patents in suit). A similar result was achieved in Round Rock Research, LLC v. Dell, Inc., No. 4:11-cv-332 (E.D. Tex. Mar. 26, 2012).
Attempts to limit the asserted claims or prior art can be an effective way to limit costs going forward, while deflating attempts by the opposing party to create excessive pressure to settle in their favor.
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