Federal Circuit and Advisory Council Model Orders

On July 22, 2013, a model order relating to the number of asserted claims and prior art references in patent litigations was released on the Federal Circuit Advisory Council’s webpage. The order required that in the first phase, plaintiffs must select 10 claims per patent, and 32 claims total, 40 days after production of “core” technical documents, while defendants are limited to 12 prior art references per patent and 40 references total. After a claim construction order issues, plaintiffs must select 5 claims per patent, and not more than 16 total, while defendants must select 6 prior art references and 20 references total.

However, within two days of being released, all content on the Federal Circuit Advisory Council webpage was removed and replace with the message “This site is being updated and will be posted soon.” Soon thereafter, the Council webpage was restored with the exception of the two model orders. Instead, the webpage contains the following statement:

Model orders concerning e-discovery and limitations on claims and prior art were posted on the court’s website. Those orders have now been removed since the court has not sponsored or endorsed the orders. In light of the court’s determination, the advisory council should not be viewed as having sponsored or endorsed these orders on behalf of the court.”

It’s worth noting that there is an interesting tension between the Federal Circuit’s historical mandate to bring uniformity to patent law, and the statutory basis for the Advisory Council found in 28 USC § 2077(b), which mandates each court with the authority to prescribe rules of the conduct under section 2071, with the exception of the Supreme Court, to appoint an advisory committee for the study of the rules of practice and internal operating procedures of such court and. The advisory committee’s role is to make recommendations concerning such rules and procedures to the court.

Despite the issues and tension surrounding the creation and distribution of the model orders, they are still useful tools for patent litigators to be aware of. For example, the E-Discovery model order formed the basis for an E-Discovery model order adopted in the Eastern District of Texas, has been employed in litigation in other districts, and has been referenced or quoted in full in over two dozen secondary sources.