Federal Circuit Reveils New Model Order In Patent Cases.

The Federal Circuit Advisory Council, which advises the U.S. Court of Appeals for the Federal Circuit on rules of court and operating procedures, recently unveiled a new model order regarding excess patent claims and prior art.

As highlighted by the council, “There is a consensus that the numbers of asserted claims, claim terms, and prior art references in patent cases are often problematically excessive. Cases with over a hundred asserted claims and over a hundred asserted prior art references during discovery are common. The identification of an unmanageable number of products can be a problem too.”

While many courts already issue orders limiting the number of patent claims and prior art references in patent cases, the model order is intended to provide a systematic approach that can be further tailored to individual cases. “Focusing patent cases to the issues at the core of the dispute will reduce the burden on courts and lower the expense for the parties. In addition, a greater focus on the true issues will improve the quality of the adjudicatory process for all,” the council argues.

The new limits occur at two phases: (1) after production of “core” technical documents but before claim construction, and (2) after claim construction but before expert reports. Below are the basis provisions of the model order:

  • Not later than 40 days after the accused infringer is required to produce documents sufficient to show the operation of the accused instrumentalities, the patent claimant shall serve a Preliminary Election of Asserted Claims, which shall assert no more than ten claims from each patent and not more than a total of 32 claims. Not later than 14 days after service of the Preliminary Election of Asserted Claims, the patent defendant shall serve a Preliminary Election of Asserted Prior Art, which shall assert no more than twelve prior art references against each patent and not more than a total of 40 references.
  • Not later than 28 days after the Court issues its Claim Construction Order, the patent claimant shall serve a Final Election of Asserted Claims, which shall identify no more than five asserted claims per patent from among the ten previously identified claims and no more than a total of 16 claims. Not later than 14 days after service of a Final Election of Asserted Claims, the patent defendant shall serve a Final Election of Asserted Prior Art, which shall identify no more than six asserted prior art references per patent from among the twelve prior art references previously identified for that particular patent and no more than a total of 20 references.
  • If the patent claimant asserts infringement of only one patent, all per-patent limits in this order are increased by 50%, rounding up.

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.”

 

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Fed. Circuit Decision Makes It Easier to Secure Permanent Injunctions.

A recent decision by the U.S. Court of Appeals for the Federal Circuit in the case of Presidio Components v. American Technical Ceramics makes it easier for patent holders to secure permanent injunctions in some circumstances.  

In this case, the jury found that American Technical Ceramics committed willful patent infringement and awarded Presidio $1,048,677. However, the United States District Court for the Southern District of California denied a request for a permanent injunction, based on a finding of no irreparable injury or inadequacy of monetary damages. These are two of the four factors established by the U.S. Supreme Court in eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006). The other two are the balance of hardships between the parties and the public interest.

 

On appeal, the Federal Circuit Court of Appeals reversed, noting that the “tension created by acknowledging competition for one purpose but not for another, combined with Presidio’s other evidence showing irreparable injury, shows that the district court clearly erred by dismissing the irreparable injury evident on this record.”

The court further noted that although a victorious patentee is not entitled to an injunction in every case, “it does not follow that courts should entirely ignore the fundamental nature of patents as property rights granting the owner the right to exclude.” It further suggested that the eBay factors should be considered “with an eye to the ‘long tradition of equity practice’ granting ‘injunctive relief upon a finding of infringement in the vast majority of patent cases.’”

 Here, the court found that even without practicing the claimed invention, Presidio had demonstrated that it suffered irreparable injury. “Direct competition in the same market is certainly one factor suggesting strongly the potential for irreparable harm without enforcement of the right to exclude,” the panel added. This language is sure to be raised by Apple as it continues to seek a permanent injunction against its rival, Samsung.

How Can I Help?

For more information about the availability of permanent injunctions or other Intellectual Property issues, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman