Last Month at the Federal Circuit - March 2011


In this issue: Federal Question Jurisdiction in DJ Action Depends on the Character of the Threatened Action, Not the Character of the Defense; Courts Have Discretion to Limit the Number of Asserted Claims in Complex Patent Suits; Claims to Antibodies with Specific Properties Are Not Always Fully Described by Disclosing the Protein; Specification Limits the Invention Even in the Absence of Explicit Claim Language; Burden of Proof for Infringement Under the DOE Is Not Heightened in Cases of Separate Patentability; and In a Split Decision, Federal Circuit Denies Petition for Rehearing En Banc, Declining to Review Panel Decision Requiring Direct Evidence of Intervening Rights for Prosecution Laches Defense.

In In re Katz Interactive Call Processing Patent Litigation, Nos. 09-1450, -1451, -1452, -1468, -1469, 10-1017 (Fed. Cir. Feb. 18, 2011), the Federal Circuit affirmed, inter alia, the district court’s claim selection procedure limiting the number of claims asserted. In this somewhat rare multidistrict litigation patent case, the plaintiff Ronald A. Katz Technology Licensing LP (“Katz”) asserted a total of 1,975 claims from 31 patents against 165 defendants (“Defendants”), ranging from banks and shipping companies to cable providers and airlines. The patents were generally directed to telephonic computer interface and processing systems. Katz initially filed 25 separate actions in the Eastern District of Texas and the District of Delaware. Over Katz’s objections, Defendants asked the district court to limit the number of asserted claims. The Judicial Panel on Multidistrict Litigation transferred all the cases to the Central District of California for coordinated pretrial proceedings. After initially determining that many claims were duplicative, the district court limited the maximum number of assertable claims but added a proviso permitting Katz to add new claims if they raised nonduplicative issues of infringement or validity. Rather than selecting additional claims, Katz moved the district court to sever and stay the unselected claims on the ground that the district court’s order violated its due process rights. The district court denied Katz’s motion and Katz appealed. The Federal Circuit found that the district court appropriately placed the burden on Katz to show that the unasserted claims were not duplicative and found no error in the district court’s determination that many claims were duplicative. The Court concluded it was both efficient and fair to require Katz to identify nonduplicative claims, and, because Katz failed to make such a showing, it was reasonable for the district court to deny the motion to stay and sever.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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