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. One way district courts have attempted to increase the efficiency of patent litigation is through court-mandated claim limitation. When a case involves multiple parties and multiple patents, 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, the court required both parties to narrow the scope of their litigation within four months. Civ. Act. No. 1:10cv23580, 2012 WL 3113932 (S.D. Fla. July 31, 2012). The court set a deadline at the request of parties, in order to “streamline the claim construction process in this case.”Civ. Act No. 1:10cv23580, 2011 WL 7274369 (S.D. Fla. Nov. 7, 2011). Similarly, 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, along with others, indicate 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.Id. At a later period, the claimant serves a “Final Election of Asserted Claims.‚¬Id. At 7. 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. Patent rights are based on property rights. Even as early as 1876, the Supreme Court noted, “[a] patent for an invention is as much property as a patent for land. The right rests on the same foundation, and is surrounded and protected by the same sanctions.”Consol. Fruit-Jar Co. v. Wright, 94 U.S. 92, 96 (1876). Additionally, according to 35 U.S.C. section 282, “a patent shall be presumed valid. Each claim of a patent shall be presumed valid independently of the validity of other claims; dependent or multiple claims shall be presumed valid even though dependent upon an invalid claim.”Subsequent interpretations have understood section 282 to mean that each patent claim is presumed valid independently of any other claim. For example, in Gardner v. TEC Sys., Inc., 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. 725 F.2d 1338, 1339 n.1 (Fed. Cir. 1984). This is because historically, patent claims have been given the same due process protections that other property interests enjoy.See, e.g., Johnson & Johnson v. Wallace A. Erickson & Co., 627 F.2d 57 (7th Cir. 1980);Cedars-Sinai Med. Ctr. V. Watkins, 11 F.3d 1573, 1582 (Fed. Cir. 1993). Consequently, a strict view of due process would mean the courts cannot deprive a patent holder of the property right in patent claims without access to a trial or hearing.

However, a strict view of constitutional due process may not be feasible for two reasons. First, courts would have difficulty handling cases with a large number of patents, both in terms of information handling as well as the strain such cases would put on the case load of district courts. Second, a strict view of due process would give an advantage to parties with the resources to litigate over a long time, potentially leading to undue leverage in settlement agreements. 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. If the Federal Circuit were to address the issue of court-mandated claim limitation and find the process Constitutional, it is highly likely such a process would be cooperative and flexible. In order to avoid due process problems, the process would likely need to be propelled by the parties themselves such that the parties have the freedom to choose which claims are litigated. The number limitation on claims considered would likely also need to be flexible, allowing a part to add more claims upon a good faith showing. As more courts begin to utilize the claim limiting technique, it will be interesting to see how the Federal Circuit responds.


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

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