Tuesday, October 15, 2013

Limiting Prior Art References to One Per Patent Claim Was Clear Error

The court granted defendant's motion to reconsider an earlier order limiting defendant to 20 prior art references where plaintiff was allowed to assert 18 claims. "The court concludes that it committed clear error in its [prior] order and that the results of the order may result in manifest injustice. . . . [I]in attempting to navigate through the parties’ briefs and the Federal Circuit Advisory Council’s proposed order, this court erred and increased the number of [plaintiff's] asserted claims beyond what the parties requested and beyond what is reasonable and manageable for trial. . . . [Defendant] has made a persuasive argument that if the court’s order stands, and [defendant] is limited to . . . 20 references to respond to 18 claims to be asserted before trial, this will have the effect of limiting [defendant] to one reference per claim. . . . The number of prior art references that [defendant] will be allowed to raise as part of its invalidity defense is a function of the number of claims that [plaintiff] will be allowed to assert against [defendant]. . . . [Defendant] may rely on 5 references per independent claim and 8 references per dependent claim before trial."

Unwired Planet, LLC v. Google, Inc., 3-12-cv-00504 (NVD October 10, 2013, Order) (Cooke, M.J.)

No comments: