Each claim in your patent represents a separate invention that you have the right to exclude others from practicing. Yet accused infringers have, for many years, been asking district courts to limit the number of patent claims that can be asserted in patent litigation, while at the same time arguing that claim preclusion will prevent the unasserted claims from being asserted later.
Until just over a year ago, the Federal Circuit had not addressed this issue head on. So courts, while struggling with the desire to manage their dockets and recognizing the difficulties of litigating too many patent claims, were often hesitant to force specific limitations on the number of claims a patentee could assert. For example, in 2009, the U.S. Court for the Federal Claims denied a motion to limit the number of asserted claims:
The Court finds that it would be premature and unfair to require the plaintiff to limit the number of claims it has asserted, particularly in light of the defendants’ contention that the doctrine of claim preclusion would prevent [the patentee] from raising those claims in the future. Due process of the law and the interest of justice require cautious restraint on the part of the court before a litigant is denied a day in court on his or her potential claims. Avocent Redmond Corp. v. U.S. (Fed. Cl. 2009).
It was this due process argument that the Federal Circuit eventually addressed—and rejected—in In re Katz Interactive Call Processing Patent Litigation, 639 F. 3d 1303 (Fed. Cir. 2011). But while the Federal Circuit gave district courts the thumbs up to limit the number of claims a patentee can assert, the court’s opinion, and the district court cases that have followed, indicate that a limit on the number of claims that can be asserted should only be imposed under certain circumstances.
The case must truly be unmanageable
In In re Katz, the patentee initially asserted 1,975 claims from 31 patents, and the district court directed the patentee to limit the number of asserted claims to 64. The difficulty of litigating 1,975 claims is apparent. But where there is no showing that the case is unmanageable, courts are less inclined to limit the number of asserted claims. See, e.g., Automated Merchandising Systems, Inc. v. Crane Co., (N.D.W.V. Feb. 15, 2012). For example, if the claims are similar enough in substance, taking discovery on infringement and validity issues may not be unmanageable. See Dataquill Ltd. v. High Tech Computer Corp. (S.D. Cal. 2011); SPH America, LLC v. High Tech Computer Corp. (S.D. Cal. 2009).
The patentee must not be unfairly prejudiced
In In re Katz, the Federal Circuit held: “To make out a due process claim, Katz must demonstrate that the district court’s claim selection procedure risked erroneously depriving it of its rights and that the risk outweighed the added costs associated with a substitute procedure.” 639 F. 3d at 1311.
To ensure proper application of this balancing test, the timing of the imposed limitation on the number of asserted claims must be appropriate and the patentee must be given an opportunity to substitute or supplement its asserted claims with claims that address non-infringement or invalidity arguments in ways that the currently asserted claims do not.
Courts have often refused to force a patentee to select a limited number of claims before the close of discovery. See, e.g., Gemalto S.A. v. HTC Corp. (E.D. Tex. Mar. 7, 2012); Fractus, S.A. v. Samsung Electronics Co., Ltd. (E.D. Tex. 2010) (citing risk of prejudice to patentee, especially where accused infringers refused to identify representative or exemplary products); Realtime Data, LLC v. Packeteer, Inc. (E.D. Tex. 2009). This refusal is generally driven by the understanding that the patentee should have the benefit of the accused infringer’s non-infringement and invalidity arguments before selecting the claims it will present to a jury.
The Federal Circuit in In re Katz acknowledged that “a claim selection order could come too early in the discovery process, denying the plaintiff the opportunity to determine whether particular claims might raise separate legal issues of infringement or invalidity in light of the defendants’ accused products and proposed defenses.” In re Katz, 639 F. 3d at 1313, n.9.
An order imposing a limitation on the number of asserted claims usually permits the patentee to substitute or supplement its asserted claims with claims that “raise separate legal issues from those raised by the asserted claims.” In re Katz, 639 F. 3d at 1312. See also Round Rock Research, LLC v. Dell (E.D. Tex. March 26, 2012).
This can be accomplished, for example, by allowing the patentee to substitute or supplement claims after the accused infringer serves its final invalidity contentions. See, e.g., Gen-Probe Inc. v. Becton Dickinson and Co. (S.D. Cal. Feb. 21, 2012). Whatever the means, the goal has generally been to allow the patentee to assert a number of claims sufficient to address all of the non-infringement and invalidity defenses presented.