SOUTHEAST TEXAS RECORD

The federal court in the Eastern District of Texas – known as a hub for filing patent infringement cases from across the country – has established a new model order for the streamlining the patent litigation process and reducing the costs.

U.S. District Judge Leonard E. Davis signed the Model Order Focusing Patent Claims and Prior Art to Reduce Costs on Oct. 29.

Using the Federal Circuit Advisory Council’s Model Order as a baseline, the EDTX Model Order focuses on limiting the number of asserted claims and prior art references through a series of deadlines and a successive narrowing of elected patent claims throughout the discovery phase.

One provision of the Order says the patent holder must serve a Preliminary Election of Asserted Claims with no more than 10 claims per patent, and no more than 32 claims total.

After the Preliminary Election of Asserted Claims, the defendant must submit a Preliminary Election of Asserted Prior Art within 14 days. The submission is limited to 12 prior art references asserted against each patent, with no more than 40 references total.

Within 28 days prior to the due date for initial expert reports, the patent holder must serve its Final Election of Asserted Claims. From the original 10 claims per patent in the Preliminary Election of Asserted Claims, the patent holder must identify five claims per patent. No more than 16 claims total are allowed.

The Final Election of Asserted Prior Art must be submitted by the defendant before the deadline for burden of proof expert reports. Under the provision the number of asserted references per patent is reduced from 12 to six, with no more than 20 total references.

The Model Order can by modified by the parties by agreement or for good cause, the Order states.

The preliminary elections are timed to avoid undue expense from the briefing, arguing, hearing and ruling on excess claim construction issues. The objective of the final elections is to lessen the costs associated with expert witnesses and trial preparation, according to the Order.

“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,” a footnote to the order states.  “In general, the more patents that are in the case, the lower the per-patent limits should be.”

The EDTX Model Order came about based on a request from the court.  A working group of the Local Rules Advisory Committee undertook a review of the Model Order Limiting Excess Patent Claims and Prior Art to determine whether the Model Order, or some portion or variation of it, should be recommended for inclusion in the Local Rules or practice of the Eastern District.

After consideration, the working group determined that a revised version of the Model Order could be helpful to practice in the Eastern District

“In the experience of the members of the working group, the costs associated with invalidity contentions and claim construction are two of the most significant costs incurred in the pretrial phase of patent cases,” the order states.

“Significantly, the timing of the preliminary election will also lessen the court’s burden in preparing for, hearing, and ruling on claim construction issues.”

The complete Model Order can be found on the Eastern District website, http://www.txed.uscourts.gov/, under "Court Announcements."