Related IPRs and Appeal Weigh Against Use of Model Order to Limit Claims and Prior Art

The court denied without prejudice defendant's motion to focus patent claims and prior art because of pending inter partes reviews and an appeal involving four of the six patents-in-suit. "[Defendant] requests that the Court enter the Model Order in this case. [Defendant] argues that, with 118 claims and 6 patents, this is precisely the type of patent suit that the Model Order was designed to streamline. . . . [Plaintiff] explains that the Model Order’s limit on [defendant's] prior art references in this case is illusory because [defendant's] invalidity case is preserved in the other forums. [Plaintiff] contends that, on the other hand, entering the Model Order would increase the burden on [plaintiff] by forcing it to narrow its claims before their validity is decided. In light of the [related] appeal and IPRs that are currently pending, [defendant's motion] is denied without prejudice."

VirnetX Inc. et al v. Apple Inc., 6-12-cv-00855 (TXED August 4, 2014, Order) (Davis, J.)