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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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grayonclaims@gmail.com

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Thursday
Dec122013

Eastern District of Texas Adopts Model Order to Focus Asserted Patent Claims and Prior Art References

Recently, the Eastern District of Texas adopted a "Model Order Focusing Patent Claims and Prior Art to Reduce Costs."  A copy of the Model Order can be found here.  The Model Order provides for two rounds of narrowing both asserted patent claims and prior art references during litigation.

The first round of narrowing is triggered by the close of claim construction discovery.  At that time, the patent holder must narrow its asserted claims to no more than 10 claims from each patent and no more than a total of 32 claims for all patents-in-suit.  If only one patent is asserted, the limit is modified to 15 total claims.  Fourteen days later, the defendant must narrow its asserted prior art references, with limits of 12 references against each patent-in-suit and 40 total references for all patents-in-suit.  If only one patent is asserted, the limit is modified to 18 total references. 

The second round of narrowing is triggered by the deadline to serve opening expert reports.  No later than 28 days prior to that deadline, the patent holder must further narrow its asserted claims to no more than 5 claims per patent (selected from the 10 previously identified claims) and no more than a total of 16 claims.  If only one patent is asserted, this limit is modified to 8 total claims.  Twenty-eight days later, the defendant must further narrow its asserted prior art references, with limits of 6 references against each patent-in-suit (selected from the 12 previously identified references) and 20 total references.  If only one patent is asserted, the limit is modified to 9 total references.  Each obviousness combination counts as a separate prior art reference. 

Modification of these limits is subject to Court approval if either the parties agree or one party demonstrates good cause for the proposed modification.