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EDTX - Judge Folsom limits number of prior art references against asserted claims

In a recent Eastern District of Texas decision on February 14, 2012, Judge Folsom ruled that:

Defendants shall serve Invalidity Contentions that narrow the number of asserted prior art references in their Invalidity Contentions to no more than fifteen (15) individual references (i.e., not groups of references) asserted per claim or no more than eighteen (18) individual references per dependent claim where Plaintiff is also asserting a corresponding claim from which the dependent claim depends.  Defendants may not multiple [sic] the number of claims by fifteen or eighteen and arrive at a gross number of possible references.


While the result of this order might bring cheer to Plaintiffs' counsel in E.D. Tex., the order references an agreement memorialized in the Docket Control Order whereby "the parties had previously agreed that Defendants would narrow the number of asserted prior art references."  We're still reviewing the briefs (Plaintiff's Motion, Defendants' Opposition, Plaintiff's Reply) on this motion, but it appears that the Plaintiff agreed to limit the number of asserted claims in exchange for an agreement that the Defendants would consider limits on the number of relied upon prior art references.

Click the link to read the decision in MicroUnity Systems Engineering, Inc. v. Apple, Inc. et al.