The Federal Circuit Advisory Council, comprised of leading judges, academics
and practitioners, recently released two groundbreaking orders to help cabin the
time and expense involved in patent cases. And then those model orders
disappeared from the Advisory Council's website.
The first order, "An e-Discovery Model Order," limits ESI production to five
custodians per producing party and five search terms per custodian.
Although the parties may seek leave of court to add additional custodians and
search terms, the order includes a presumption that the requesting party will
have to pay for the additional cost incurred.
The second order, "A Model Order Limiting Excess Patent Claims and Prior
Art," limits the number of claims and prior art that may be asserted. The
patentee is at first permitted to assert no more than ten claims from each
patent and no more than a total of 32 claims. Similarly, the defendant(s)
are permitted to assert no more than 12 prior art references against each patent
and not more than a total of 40 claims. Following claim construction, the
patentee must further narrow its claims to five per patent (among the originally
asserted claims) and no more than 16 total claims, while the defendant(s) is
limited to six asserted prior art references per patent and no more than 20
Within two days of the release of the second model order in July of 2013, the
Advisory Council's webpage was removed from the Federal Circuit's webpage in its
entirety. When it came back up a few days later, the model orders were
gone. In their place was the following statement: "The Advisory
Council published model orders concerning e-discovery and limitations on claims
and prior art, and posted a disclaimer that the Court did not approve the model
orders. To avoid the risk of any misperception that the Court has endorsed
or taken any position on the model orders through the Advisory Council, or
otherwise, the Advisory Council confirms that it does not sponsor or endorse
orders." This statement is all the more odd for the fact that Chief Judge
Rader was a member of the subcommittees of the Advisory Council that drafted and
approved both orders.
Without attempting to speculate (too much) on why the Model Orders disappear,
this program will review the Model Orders and summarize the impact they have had
on individual cases and the Local Rules adopted by the district courts.