Judge: Leonard Davis
Holding: Order on Narrowing of Claims
One of the more thorny issues in patent litigation locally in recent years has been how to deal with large numbers of asserted claims, prior art references, and disputed claim terms. In this case after reviewing the parties’ Joint Claim Construction and Prehearing Statement Judge Davis ordered the parties to meet and confer to
- narrow the number of asserted claims to a reasonable number;
- narrow the number of disputed claims terms to a reasonable number;
- narrow the number of prior art references per asserted claim to a reasonable number; and
- discuss proposals regarding how to narrow the case.
The parties then filed a joint notice to the Court containing competing proposals regarding narrowing of these cases.
In the report, the Plaintiff agreed to reduce the number of asserted claims from approximately 52 (independent and dependent) to 35 claims prior to the Markman hearing, and to further decrease the number of asserted claims to 15 at the time of its expert report on infringement. Defendants, for their part, agreed to “defer” the number of “claim construction issues” (Court's emphasis, not mine) at this time from 27 to 16 (which the Court noted - not parenthetically - still implicated over 40 terms/phrases to be construed by the Court) and further agreed to reduce the total number of prior references to 30 within 50 days after the Markman Order is issued.
Universal happiness did not ensue.
"After consideration of the parties’ proposals," Judge Davis wrote, "the Court remains concerned that the large number of claims and claim terms in these cases are unmanageable—and will serve only to inflate costs for both sides. The Court routinely handles complex patent cases involving multiple patents and parties and inevitably asserted claims and prior art references are abandoned as the case proceeds to trial. Narrowing the case at an earlier stage will serve to reduce the overall costs of the litigation by eliminating needless discovery regarding issues that will likely be dropped prior to trial, and allow the Court to dedicate its resources to the truly dispositive and meritorious issues."
Accordingly, Judge Davis ordered the Plaintiff to reduce the number of asserted claims to a maximum of 20 and the Defendant to reduce its invalidity contentions to include no more than 4 distinct bases of invalidity for each asserted claim. The parties were further ordered to meet and confer to make a meaningful attempt to reduce the number of claim terms to be construed. "Should the parties fail to reduce the number of asserted claims, prior art references, and claim terms to be construed," the Court concluded, "the parties shall provide good faith and specific reasons, on a claim-by-claim basis, why a particular claim or prior art reference must remain in the case. If necessary, such good faith reasons may be submitted in camera."
From Docket Navigator.