Compliance With Court Order Requiring Election of Claims Does Not Bar Later Assertion of Non-Elected Claims

The court granted in part plaintiff's motion to sever and stay non-elected claims and rejected defendant's argument that "Plaintiff waived any right to seek severance because Plaintiff did not challenge the requirement in the Court’s scheduling order that Plaintiff elect a limited number of claims." "The Court’s limitation on the number of asserted claims is necessary for effective and efficient management of the . . . case. . . . If the patentee wins, infringement of a single claim can support an award of damages, so the patentee generally need not then pursue nonelected claims. If the patentee loses, then the likelihood of any subsequent litigation is low because the patentee presumably elected the claims that 'they believe are most likely to be infringed.' If Defendants’ estoppel arguments were accepted, however, enforcement of the Court’s claim election requirement would foreclose Plaintiff’s rights as to all non-elected claims without ever reaching the merits of those claims. Finding no clear support from the Court of Appeals for either the Fifth Circuit or the Federal Circuit for Defendants’ position, this Court rejects it. This conclusion is necessary to avoid what would appear on its face to be a significant due process violation."

LML Patent Corp. v. JP Morgan Chase & Co. et al, 2-08-cv-00448 (TXED October 12, 2010, Order) (Folsom, J.)