United States District Court, E.D. Kentucky, Southern Division
ORDER DENYING PLAINTIFF'S MOTION TO LIMIT CLAIM
TERMS [#47] and MOTION TO EXCLUDE [#55]
Page Hood Chief Judge.
filed a Motion to Limit Claim Terms for Construction on May
26, 2017 (“Motion to Limit Claim Terms”). (Doc.
No. 47) The Motion to Limit Claim terms is fully briefed. On
June 20, 2017, Plaintiff filed a Motion to Exclude
Defendants' Purported “Technology Tutorial”
(“Motion to Exclude”). (Doc. No. 55) Defendants
filed a response to the Motion to Exclude on July 5, 2017. A
hearing on both Motions was held on July 7, 2017. For the
reasons that follow, the Court denies the Motion to Limit
Claim Terms and denies the Motion to Exclude.
purposes of this Order, it is relevant that Plaintiff filed a
Complaint alleging that Defendants infringed seven of
Plaintiff's patents and asserted 31 claims across those
seven patents. The parties had the option of submitting to
the Court a “technology tutorial.” Plaintiff did
not submit a technology tutorial because it believes that the
patented technology (adjustable beds) is relatively simple to
understand. Defendants submitted a 30-minute technology
tutorial DVD on May 19, 2017. The parties' opening claim
construction briefs were due on June 2, 2017. Each party
filed its opening claim construction brief on June 2, 2017,
each of which was limited to 25 pages, pursuant to the Local
Rule 7.1(d)(3) and the Court's Order dated October 26,
2016. (Doc. No. 35) Plaintiff's brief addressed the four
claim terms it wanted to the Court to decide. Defendants'
brief addressed the four claim terms identified by Plaintiff
(which Defendants also sought to have determined) and an
additional 17 claim terms for construction.
Motion to Limit Claim Terms
parties excessively and redundantly briefed the Motion to
Limit Claim Terms.
maintains that Defendants' proposed 17 claim terms for
construction are unreasonable. Plaintiff cites the fact that
Defendants originally proposed 174 terms, then reduced that
list to 139 terms, despite Defendant having previously argued
to the Court that 168 terms for construction would be
unreasonable. Plaintiff also represents that Defendants
indicated that they would limit the number of claim terms for
construction to “approximately 10 terms.”
Plaintiff contends that Defendant's ultimate
determination to have 21 claim terms constructed means that
it is not possible for the parties to adequately brief the
terms in 25 pages and would be overly burdensome for the
argues that courts have, and have exercised, an inherent
power to manage their caseloads by limiting the number of
claim terms to be construed or briefed for construction.
See, e.g., Eon CorpIP Holdings LLC v. Aruba Networks
Inc., 62 F.Supp.3d 942, 953 (N.D. Cal. 2014) (“as
a matter of case management and pretrial procedure, it is
well established that district courts have the authority only
to construe those terms they deem likely to lead to a
dispositive outcome”); Norgren Automation Sols.,
LLC v. PHD, Inc., No. 14-cv-13400, 2015 WL 5693038, at
*1 (E.D. Mich. Sept. 28, 2015) (magistrate judge instructed
each party not to submit more than five claim terms);
Zamperla, Inc. v. I.E. Park SRL, No.
6:13-CV-1807-ORL-37, 2014 WL 6473728, at *2 (M.D. Fla. Nov.
18, 2014) (limiting parties' joint claim construction
statement to five terms); IP Cleaning S.p.A v. Annovi
Reverberi, S.p.A, No. 08-CV-147-BBC, 2006 WL 5925609, at
*1 (W.D. Wis. Oct. 27, 2006) (ordering that no more than
sixteen terms will be construed regardless of number of
patents or claims at issue); SFA Systems, LLC v.
Drugstore.com, Inc., Civ. No. 6:11-635 LED (E.D. Tex.
Mar. 14, 2013) (ordering parties to reduce 17 identified
terms to a “reasonable number”); PersonalWeb
Techs., LLC v. NEC Corp. of Am., Inc., No. 6:11-655 (ED.
Tex. May 7, 2013) (ordering parties to reduce forty-five
identified terms to a “reasonable number”).
Finally, Plaintiff suggests a multi-day claim construction
hearing will be necessary to adequately address 21 terms.
argue that the Motion to Limit Claim Terms is moot because
both parties filed their opening claim construction briefs on
June 2, 2017 and their responses on June 23, 2017, with reply
briefs due on July 10, 2017 (four days after the hearing
date). Defendants state that they briefed all 21 claim terms
in the 25 pages permitted, and Plaintiff filed a 24-page
brief. Defendants acknowledge, but give no credence to, the
fact that Plaintiff only argued its four claim terms in its
24-page brief. But, Defendants contend, the Court addressed
the issue of limiting claim terms in its October 26, 2016
Order, concluding that “[a] parties' brief is
limited by the Local Rules of the Eastern District of
Michigan, specifically Rule 7.1(d)(3). The Court is not
persuaded that it should impose any other limitations on the
parties with respect to briefing.” (Doc. No. 35, PgID
contend that Plaintiff's motive is delay. Defendants
state that Plaintiff had Defendants' final list of terms
and constructions since May 5, 2017, but did not file a
(now-withdrawn) emergency motion to stay filing its opening
claim construction brief until the Motion to Limit Claim
Terms was heard until three weeks later, only a week before
the opening claim construction brief was due. Defendants
state that Plaintiff also sought an extension of time to file
a technology tutorial but then did not file one at all.
counters, and the Court agrees, that 17 claim terms for
construction is reasonable in light of the fact that
Plaintiff has asserted seven patents and 31 claims across
those patents. Defendants note that, with respect to claim
construction briefs, Plaintiff had proposed that the parties
could assert “three terms per asserted patent, ”
which meant would have meant 19 (or 21?) terms for
construction. (Doc. No. 24, PgID 682 (“Absent leave of
court, preliminary claim construction briefs shall be limited
to three terms per asserted patent.”); Doc. No. 34,
PgID 811) Defendants accurately observe that Plaintiff has
not explained why its position regarding the appropriate
number of claim terms for construction is considerably less
now than it was before.
persuasively address Plaintiff's contention that courts
can limit the number of claim terms for construction. As
Defendants argue, the cases relied upon by Plaintiff
overwhelmingly considered actions involving one or two
patents, not an action involving seven patents. See EON
Corp. IP Holdings LLC v. Aruba Networks Inc., 62
F.Supp.3d 942, 953 (N.D. Cal. 2014) (one patent); Norgren
Automation Sols., LLC v. PHD, Inc., No. 14-cv-13400,
2015 WL 5693038, at *1 (E.D. Mich. Sept. 28, 2015) (two
patents); IP Cleaning S.p.A v. Annovi Reverberi,
S.p.A, No. 08-cv-147-bbc-slc, 2006 WL 5925609, at *1
(W.D. Wis. Oct. 27, 2006) (one patent); SFA Sys., LLC v.