Narrowing Asserted Patent Claims Precludes Validity Determination as to Unasserted Claims​

The court granted in part plaintiff's motion to reconsider an earlier order granting defendant's motion for judgment on the pleadings that plaintiff's remote monitoring patents encompassed unpatentable subject matter and agreed with plaintiff that it lacked jurisdiction over the unasserted claims. "[N]arrowing patent litigation to asserted claims pursuant to local patent rules can appropriately limit the court’s reach over other unasserted claims in the patent, even if those claims were at issue when the plaintiff filed its original complaint. . . . [Defendant also] urges that disclosures under this court’s local patent rules are insufficient to limit the scope of an invalidity counterclaim. . . . The parties’ patent contentions do not control the reach of the court’s jurisdiction, but they do influence the determination of whether there is, before the court, a substantial controversy. . . . [Defendant] effectively argues that because the case was before the court on a Rule 12(c) motion, the court must limit its analysis to the pleadings and must therefore exercise jurisdiction over the entire counterclaim. But the court is not constrained by jurisdictional assertions; in fact, the court will always independently examine whether it has jurisdiction over a particular declaratory judgment counterclaim. . . . The court in this case concludes it is not appropriate to ignore the impact of the parties’ contentions, even though they occurred after the pleadings."

Joao Control & Monitoring Systems, LLC v. Telular Corporation, 1-14-cv-09852 (ILND March 28, 2017, Order) (Pallmeyer, USDJ)