The Federal Circuit’s Advisory Council has issued a Model Order Limiting Excess Patent Claims and Prior Art (available here). The key features of the Model Order are the following:
Pre-Markman Patent Holder Limitation: 10 Claims Per Patent / 32 Claims Total.** 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.
Pre-Markman Accused Infringer Limitation: 12 Prior Art References Per Patent / 40 References Total.** 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.
Post-Markman Ruling: 5 Claims Per Patent / 16 Claims Total.** 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.
Post-Markman Ruling: 6 Prior Art References / 20 References Total.** 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 are increased by 50%, rounding up.
*** Upon a showing of diligence, and with due consideration for prejudice, a party may seek to modify this order for good cause shown. Any request to increase the limits contained in this order must specifically show why the inclusion of additional asserted claims or prior art references is warranted. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1202, 1312-13 (Fed. Cir. 2011). A failure to seek such a modification will constitute acquiescence to the limits contained in this Order.