The U.S. District Court for the Eastern District of Texas has now adopted a “Model Order Focusing Patent Claims and Prior Art to Reduce Costs” (Model Order), a supplementation to the court’s existing discovery rules and orders intended to promote a “just, speedy, and inexpensive determination of cases under Federal Rule of Civil Procedure 1.  The Model Order limits the number of patent claims and prior art references that can be asserted in litigation.

In a written statement from the Eastern District of Texas Local Rules Advisory Committee (the Committee or Texas Committee) issued on October 29, 2013 contemporaneously with the Model Order, the Committee stated that it began its work by reviewing the “Model Order Limiting Excess Patent Claims and Prior Art” prepared by the Federal Circuit Advisory Council’s Model Order Committee.  The Texas Committee determined that a revised version of the Federal Circuit’s model order could be helpful to practice in the Eastern District.

The Committee recommended including the Model Order as an appendix to the Local Rules, much like the version of the Model Order Regarding E-Discovery.  The stated objective of this approach is to allow flexibility both for the litigants as well as the court to tailor limits on asserted claims and prior art references based on differing facts of each case.

The Model Order calls for an election of asserted claims at the conclusion of claim construction discovery.  The patent claimant is entitled to assert no more than 10 claims from each patent and not more than a total of 32 claims.  Fourteen days later, the patent defendant is required to serve an election of asserted prior art which is limited to no more than 12 prior art references against each patent and not more than a total of 40 references.

The Model Order then calls for a final election of asserted claims wherein the patent claimant is limited to no more than five asserted claims per patent and no more than a total of 16 claims.  The patent defendant’s final election shall identify no more than six asserted prior art references per patent from among the 12 prior art references previously identified for the particular patent and no more than a total of 20 references.

Under the Order, the parties may modify the limits if they can reach an agreement on new limits.  Outside of an agreement, a party must show good cause to modify the limits.