Court-Mandated Claim Limitation: The Complexity of SimplificationJune 2, 2016

Patent cases often present many complex issues because a given case can feature a patent portfolio where each patent within the portfolio has a high number of litigable claims. Parties filing a patent suit on the basis of a patent portfolio and/or a large number of claims should be aware and prepared to respond to the court’s potential use of a simplification technique called mandated claim limitation. In court-mandated claim limitation, the court may require one or both parties to reduce the number of claims at issue. If the case is adjudicated on the merits, often the district court judge will hold that the substantive findings legally preclude all the other non-representative claims. In other words, claims within litigated patents that are not themselves litigated cannot be the subject of future litigation. However, patent claim limitation creates an interesting paradox: judges limit complex cases for purposes of upholding the right to secure a just, speedy, and inexpensive proceeding, but each patent claim still represents a property right. By limiting claims and preventing future litigation on non-representative claims, the court may also be jeopardizing a constitutional due process right. Despite this tension, some courts have found claim limitation necessary to be able to handle such complex cases.

For example, in Motorola Mobility v. Apple (Civ. Act. No. 1:10cv23580, 2012 WL 3113932 (S.D. Fla. July 31, 2012)), the court required both parties to narrow the scope of their litigation within four months. The court set a deadline at the request of parties, in order to “streamline the claim construction process in this case.”Similarly, in v. Endicia, the Federal Circuit affirmed a District Court’s requirement that parties restrict an 11-patent case (involving 629 claims) to a mere 15 claims. 437 F. App’x 897 (Fed. Cir. 2011). These cases are exemplary of a growing support for court-mandated claim limitation. The Federal Circuit Advisory Council (FCAC) recently expressed its support for claim limitation when it issued a Model Order Limiting Excess Claims and Prior Art in 2013. Federal Advisory Circuit, A Model Order Limiting Excess Patent Claims and Prior Art (2013). The FCAC encourages judges to order a specific delivery period and at the end of that term require a “Preliminary Election of Asserted Claims”based on court-instructed claim maximums. At a later period, the claimant serves a “Final Election of Asserted Claims.”The FCAC also recommends that judges allow parties to modify the order “upon a showing of diligence, and with due consideration for prejudice.‚¬Id.

Although claim limitation would significantly reduce the complexity of patent litigation, the concern with this technique is that it forces patent owners to give up parts of their valuable patent rights, particularly as future claims may be precluded by rules of foreclosure. Courts have understood that each patent claim is presumed valid independently of any other claim. For example, in Gardner v. TEC Sys., Inc. (725 F.2d 1338), the Federal Circuit found that trial court erred in finding the entire patent as invalid for obviousness where only a select number of claims were tried by the parties. However, despite the tension between efficient litigation and due process rights, neither the Supreme Court nor the Federal Circuit has addressed the issue of claim limitation directly.

In light of the ambiguity surrounding the procedures and law governing mandated claim limitation, what should patent litigants know about the process? First, the district court will likely institute claim limitation on a flexible basis. Patent holders should work early in litigation to identify which claims are absolutely necessary for litigation, and if necessary be prepared to make a (good-faith) argument justifying why the number of claims should be increased. Many patent local rules require the submission of claim charts; the construction of claim charts is a good opportunity to identify the most pertinent claims and all claims which could be relevant in the future. Above all, the courts will appreciate transparency in the claim selection process, so litigants will need to effectively balance transparency with the court and litigation strategy.


Link to the Federal Advisory Circuit Model Order, courtesy of Patently-O:

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