n recent years, it also appears that more judges are becoming receptive to limiting the number of asserted claims and doing so earlier in the litigation. In 2011, the Federal Circuit approved a district court’s limiting the number of patent claims that a patentee could assert, provided a patentee is given an opportunity to show that additional claims were non-duplicative and raised unique legal issues. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011).
Since Katz, courts have cited several criteria in determining whether a patentee should be limited to a specific number of asserted claims. Among them are the number of patents and claims at issue, and the feasibility of trying them to a jury. Courts also look to whether the patents have common genealogy, whether they contain terminal disclaimers, and whether the asserted claims are duplicative. See, e.g., Thought, Inc. v. Oracle Corp., 2013 U.S. Dist. LEXIS 147561 (N.D. Cal. 2013). Some decisions suggest that cases can be limited to 15 claims or less, and to 2-3 claims per patent. See, e.g., Memory Integrity, LLC v. Intel Corp., 2015 U.S. Dist. LEXIS 147424 (D. Or. 2015) (collecting cases and stating: “Decisions across the country support a proposition that a limit of approximately 15 claims is not inappropriate in patent litigation.”). But other courts cite different numbers and decisions appear to be case-specific.
Courts have also split regarding the appropriate timing for limiting claims, with some courts limiting claims early in the case (e.g., before infringement or invalidity contentions) and others waiting until later (e.g., after claim construction or summary judgment practice). Other courts have imposed phased limits, starting from a higher number and then limiting in stages. For example, a court might require the patentee to limit claims after invalidity contentions, and then again after claim construction, and again for trial. See, e.g., Sandbox Logistics LLC v. Proppant Express Invs. LLC, 2018 U.S. Dist. LEXIS 156670 (S.D. Tex. 2018) (ordering phased limits).
Recently, however, there appears to be a trend in favor of limiting claims before claim construction, on the theory that time should not be wasted on construction of non-elected claims. A recent case from the “limit early” school of thought is Tabaian v. Intel Corp., 2019 U.S. Dist. LEXIS 54224 (D. Ore. 2019). Citing numerous cases, the court determined that courts “generally agree that the time for limiting asserted claims is before the claim construction hearing.” After observing that the parties had conducted 8 months of discovery, including an inventor deposition, the court limited the number of asserted claims to four. See also Universal Elecs. Inc. v. Roku Inc., 2019 U.S. Dist. LEXIS 74660 (C.D. Cal. 2019) (“The weight of authority holds that claim limitation is proper prior to claim construction, particularly where defendants have already served invalidity contentions.”)
Some courts have sought to reduce the complexity of patent cases by also limiting the number of prior art references. See, e.g., Universal Elecs. Inc., 2019 U.S. Dist. LEXIS 74660 (“Many courts have required defendants to limit the number of prior art references while also ordering plaintiffs to limit the number of asserted claims because both limitations enhance judicial resources and streamline cases”). This requires both sides to make important decisions earlier in the case.
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Based on apparent trends, defendants in patent cases should consider raising the issue of claim limits early, even in the initial joint case management statement and at the scheduling conference. On the other hand, patentees should be prepared with arguments as to why its claims should not be limited, but if there are limits, they should not happen until later in the case. And if claims are limited, patentees might attempt to get reciprocal limits on the number of prior art references.
Author: Jason Crotty