The Eastern District of Texas conducted its 17th Annual Bench
Bar Conference last week in Plano, TX. The Eastern District
traditionally has used this forum to discuss potential changes to
the local rules or introduce model orders, particularly in the
patent area. More recently, the Federal Circuit Bar Association has
actively participated at EDTX's bench bar, also using the
conference to present ideas for improvement of the patent bar, not
only in the Eastern District, but in federal courts throughout the
country. This year's conference showcased progress being made
in case management and promoted interesting discussions regarding
the efficacy of patent laws and litigation. A few highlights are
discussed below.
Chief Judge Randall R. Rader's Commentary on Patent
Law and Litigation Abuse
The CAFC's Chief Judge Randall R. Rader addressed the current
state of patent law. After commending the Eastern District of Texas
for its leadership and commitment to the patent system, Chief Judge
Rader directed his comments to the perceived loss of confidence in
the patent law system among private business, Congress, and the
public. He emphasized that the purpose of patent law is to promote
the progress of science and useful arts and that it should not be
used as an alternate means to govern competition or protect
manufacturers. Chief Judge Rader discussed how patent law
continually and consistently has provided the practical benefit of
incentivizing innovation and converting ideas into useful
technology. He also cautioned against blaming patent law for
litigation problems that are outside the purposeful realm of patent
law. In addressing litigation abuse, he suggested that the proper
remedy was judicial correction—not legislative intervention.
Among other suggestions, Chief Judge Rader advocated for the
liberal use of summary judgment for meritless cases; use of fee
reversal for exceptional cases; and the continued evaluation and
reform of litigation expenses.
Chief Judge Rader's speech is available here.
Model Order Focusing Patent Claims and Prior Art to Reduce
Costs
The EDTX's Chief Judge Leonard Davis recently signed a General
Order (GO-13-20) that adopts a Model Order Focusing Patent Claims
and Prior Art to Reduce Costs. This Model Order uses the recent
Federal Circuit Advisory Council's Model Order as a baseline.
The EDTX Model Order focuses on limiting the number of asserted
claims and prior art references, through a series of deadlines
keyed off of case events. The commentary accompanying the EDTX
Model Order discusses the rationale behind the staged deadlines.
The deadlines are as follows:
The first exchange: Upon the completion of claim
construction discovery, the plaintiff must identify preliminarily
no more than 10 claims per asserted patent, but no more than 32
asserted claims in total. Within 14 days later, the defendant must
identify preliminarily no more than 12 prior art references for
each asserted patent, with a limit of 40 overall
references.
The second exchange: No later than 28 days before the
service of expert reports by the party with the burden of
proof,
plaintiff must finally elect no more than 5 claims per asserted
patent, but no more than 16 asserted claims in total. In
response, and simultaneous with the exchange of expert reports,
the defendant must finally elect no more than 6 prior art
references for each asserted patent, with a limit of 20 overall
references, and with each obviousness combination counting as a
separate reference.
The EDTX Model Order is available here.
About the Author
Kori Anne Bagrowski assisted the Federal Circuit Advisory
Council's ModelOrder Committee on the Model Order Limiting
Excess Patent Claims and Prior Art. Ms. Bagrowski is counsel at the
Chicago office of Brinks and served as a judicial clerk to Chief
Judge Randall R. Rader at the Court of Appeals for the Federal
Circuit. She also served as a judicial clerk to Judge Leonard E.
Davis, the current Chief Judge at the United States District Court,
Eastern District of Texas. Ms. Bagrowski's practice
focuses on patent litigation before the federal appellate and
district courts and before the United States International Trade
Commission.
This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.
