More On

IP: Due process and your patent claims

U.S. courts sometimes differ when deciding whether to limit the number of claims a patentee can assert

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 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.

Contributing Author

author image

Marla Butler

Marla Butler is a trial lawyer and partner with the firm Robins, Kaplan, Miller & Ciresi L.L.P. She helps clients in the medical, semiconductor, LCD,...

Bio and more articles

Join the Conversation

Advertisement. Closing in 15 seconds.