Joao Control & Monitoring Systems, LLC v. Chrysler Corporation

Filing 22

OPINION AND ORDER Regarding Limitation of Claims, (Motions due by 1/14/2014). Signed by District Judge Mark A. Goldsmith. (Goltz, D)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

JOAO CONTROL AND MONITORING
SYSTEMS, LLC,
Plaintiff,
Civil Action No. 13-CV-13615
vs.

HON. MARK A. GOLDSMITH

FORD MOTOR CO.,
Defendant.
and

JOAO CONTROL AND MONITORING
SYSTEMS, LLC,
Plaintiff,
Civil Action No. 13-CV-13957
vs.
HON. MARK. A. GOLDSMITH
CHRYSLER GROUP, LLC,
Defendant.
_____________________________________/

OPINION AND ORDER REGARDING LIMITATION OF CLAIMS
I.

INTRODUCTION

These are patent infringement cases that have been consolidated. Plaintiff Joao Control
and Monitoring Systems, LLC and Defendants Ford Motor Company and Chrysler Group, LLC
filed discovery plans in which they drew the Court’s attention to a dispute regarding whether the
number of asserted claims should be limited. The Court ordered supplemental briefing on the
issue of claim limitation. Having considered the parties’ arguments, the Court concludes that it
1

is appropriate to limit the number of claims in these cases. For the reasons set forth more fully
below, Plaintiff is limited to a total of fifteen asserted claims against Defendant Ford, and
Plaintiff is limited to up to eight claims per patent asserted against Defendant Chrysler. Plaintiff
may file a motion to modify these limitations for good cause on or before January 14, 2014.
II.

PROCEDURAL BACKGROUND

The pending matters originated as three separate cases originally filed in three different
federal district courts. Joao Control and Monitoring Systems, LLC v. Ford Motor Company (1214004) initially was filed in the Central District of California; it was transferred to the Eastern
District of Michigan on September 11, 2012, and reassigned to the undersigned Court on April 4,
2013.

Joao Control and Monitoring Systems, LLC v. Ford Motor Company (13-13615),

originally filed in the District of Delaware, was transferred to the Eastern District of Michigan on
August 22, 2013, and reassigned to the undersigned on September 4, 2013. Finally, Joao Control
and Monitoring Systems, LLC v. Chrysler Group, LLC (13-13957), filed on January 3, 2013 in
the Southern District of New York, was transferred to the Eastern District of Michigan on
September 16, 2013, and reassigned to the undersigned on October 15, 2013.
On December 24, 2013, the Court entered an Order consolidating for all purposes Case
Nos. 12-14004 and 13-13615, and directing all filings to be made in Joao Control and
Monitoring Systems, LLC v. Ford Motor Company (13-13615) (“the Ford case”). The Court
also ordered the Ford case to be consolidated with Joao Control and Monitoring Systems, LLC v.
Chrysler Group, LLC (13-13957) (“the Chrysler case”) for pretrial purposes only.
Plaintiff alleges infringement of various patents. The complaints filed in the two original
Ford cases claim infringement of five total patents. First, the complaint filed in Case No. 1214004 asserts infringement of (i) United States Patent No. 5,917,405 entitled “Control Apparatus

2

and Methods for Vehicles” and (ii) United States Patent No. 6,549,130 entitled “Control
Apparatus and Method for Vehicles and/or for Premises.” Third Am. Compl. (Case No. 1214004, Dkt. 29).

The complaint filed in Case No. 13-13615 alleges infringement of the

following patents: (i) United States Patent No. 6,542,076 entitled “Control, Monitoring And/Or
Security Apparatus And Method;” (ii) United States Patent No. 6,542,077 entitled “Monitoring
Apparatus For A Vehicle And/Or A Premises;” and (iii) United States Patent No. 7,397,363
entitled “Control And/Or Monitoring Apparatus And Method.” Compl. (Case No. 13-13615,
Dkt. 1).1 Finally, the complaint filed in the Chrysler case asserts infringement of the following
patents: (i) United States Patent No. 5,917,405 entitled “Control Apparatus and Methods for
Vehicles;” (ii) United States Patent No. 6,549,130 entitled “Control Apparatus and Methods for
Vehicles and/or for Premises;” (iii) United States Patent No. 6,542,076 entitled “Control,
Monitoring, and/or Security Apparatus;” and (iv) United States Patent No. 7,397,363 entitled
“Control and/or Monitoring Apparatus and Method.” Third Am. Compl. (Dkt. 4).
The parties submitted discovery plans and supplemental memoranda in which they set
forth their positions regarding limiting the number of claims in these cases (Dkts. 30, 35, 36 in
Case No. 12-14004; Dkt. 17 in Case No. 13-13957).

On December 18, 2013, the Court

conducted a status conference for all of the cases, at which the Court inquired whether any party
wished to file anything further on the issue of claim limitations. All counsel stated that they did
not wish to file anything further. On December 23, 2013, the Court conducted a telephonic status
conference at which the Court shared its decision on claim limitation, i.e. a total of fifteen claims
against Ford and non-disturbance of the transferor court’s order limiting Plaintiff to eight claims

1

As part of consolidation, the Court ordered Plaintiff to file a consolidated complaint embracing
the claims asserted in both Ford cases on or before January 10, 2014. See Order of
Consolidation (Case No. 13-13615, Dkt. 17). 
3

per patent against Chrysler.
III.

ANALYSIS

A. The Ford Case
For the reasons that follow, the Court concludes that Ford has presented a cogent
argument for limiting the number of asserted claims, whereas Plaintiff has failed to explain why
proceeding with an unlimited number of claims at this stage would be necessary or beneficial. In
addition, Defendant Ford has provided a number of district court cases that limit the number of
patent claims, as well as appellate court cases affirming this practice. The Court will limit
Plaintiff to fifteen asserted claims in the Ford matter for now, but will allow Plaintiff to file a
motion to modify this ruling on or before January 14, 2014.
Ford asserts that, prior to the transfer of the first Ford case, Judge David O. Carter in the
Central District of California, via a July 16, 2012 order, directed Plaintiff to limit the number of
claims to fewer than ten. Discovery Plan at 9 (Dkt. 30 in Case No. 12-14004). Ford argues that
many courts, including the Court of Appeals for the Federal Circuit, have concluded that limiting
the number of patent claims that a plaintiff may assert may be an appropriate exercise of
discretion in proper circumstances. Def. Supplemental Mem. at 4 (Dkt. 35 in Case No. 1214004). Defendant contends that limiting the number of claims in this case to ten is appropriate.
Id. at 5-6. In support of this contention, Defendant relies on several federal appellate and district
court decisions limiting the plaintiff to one to three claims per patent. Id. at 6.

Defendant

further asserts that Plaintiff has not articulated a rational basis for asserting more than ten claims,
particularly given that Plaintiff has only accused one instrumentality, the Ford SYNC System, of
infringement. Id. at 6-7.
In its supplemental memorandum, Plaintiff argues that Judge Carter did not enter any

4

order regarding claim limitation, and that any preliminary statements to the parties did not
constitute a binding order. Pl.’s Supplemental Mem. at 3 (Dkt. 36 in Case No. 12-14004).
Plaintiff further contends that, prior to the transfer from the Central District of California,
Plaintiff had only identified one accused service, but the amendment to the complaint added six
additional accused instrumentalities; therefore, Plaintiff asserts it would not be fair to limit the
number of claims. Id. at 4. Plaintiff requests instead that the parties engage in discovery and
discuss a process for reducing the number of claims. Id. at 4-5.
In light of these arguments, the Court turns to applicable law. In recent cases, the Federal
Circuit has affirmed decisions of the district courts to limit the number of asserted claims in
patent cases. For example, in In re Katz Interactive Call Processing Patent Litigation, 639 F.3d
1303, 1311-1312 (Fed. Cir. 2011), where the plaintiff had asserted fourteen infringed patents, the
district court limited the plaintiff to sixteen claims per defendant group. The district judge also
“provided that more claims could be added if [the plaintiff] could show that the additional claims
presented unique issues.” Id. at 1312. The Federal Circuit affirmed the district court’s use of
claims limitation, concluding that the allocation of burdens in the claim selection procedure did
not deprive the plaintiff of due process of his property rights. Id. at 1311-1312; see also
Stamps.com Inc. v. Endicia, Inc., 437 F. App’x 897, 902 (Fed. Cir. 2011) (affirming the district
court’s reduction of 629 claims in 11 patents to 15 claims total, where the district court stated
that it “would remain flexible if plaintiffs showed good cause for additional claims”).

These

cases establish the broad discretion of a district court to “limit the scope of trial in a patent case
by limiting the number of claims that can be asserted.” 3D Systems, Inc. v. Envisiontec, Inc.,
No. 05-74891, 2011 WL 4691937, at *6 (E.D. Mich. Oct. 6, 2011).
In Katz, 639 F.3d at 1311-1312, the Federal Circuit also affirmed the district court’s

5

allocation of burdens in the claim limitation process. Noting that the defendants had “made a
convincing showing that many of the claims are duplicative,” the district court had directed the
plaintiff to “point out those unselected claims that raised separate issues of infringement and
invalidity rather than requiring the defendants to prove that all of the unselected claims were
duplicative.” The Federal Circuit concluded that “it was both efficient and fair to require [the
plaintiff] to identify those unasserted claims that, in [the plaintiff’s] view, raised separate legal
issues from those raised by the asserted claims.” Id. at 1312.
The Court concludes that Ford has met its initial burden of showing that limiting the
number of asserted claims would be appropriate in this case. Ford’s argument is sound that
Plaintiff accuses only one “instrumentality” of infringement, the Ford SYNC System, and that
the other various accused instrumentalities that Plaintiff refers to are simply features of the
SYNC System. This substantiates the conclusion that the various accused features and asserted
claims are interrelated or involve significant overlap.
In addition, Ford’s cited authorities limiting claims are applicable and persuasive. See
Havco Wood Prods., LLC v. Indus. Hardwood Prods., Inc., No. 10-566, 2011 WL 5513214, at
**5-6 (W.D. Wis. Nov. 10, 2011) (limiting the plaintiff to fifteen claims total for five patents);
Hearing Components, Inc. v. Shure, Inc., No. 07-104, 2008 WL 2485426, at *1 (E.D. Tex. June
13, 2008) (ordering the plaintiff to “select no more than three (3) representative claims from each
patent for claim construction and trial”); Fenster Family Patent Holdings, Inc. v. Siemens Med.
Solutions, No. 04-0038, 2005 WL 2304190, at *3 (D. Del. Sept. 20, 2005) (limiting the plaintiff
to ten claims total for eight patents). These cases indicate that limiting the number of asserted
claims to one to three claims per patent would be consistent with the approaches of various
district courts.

6

In response to Ford’s arguments, Plaintiff has not explained why it should proceed
without any limitation on the number of claims. Plaintiff argues that it recently amended its
complaint to add more instrumentalities, but Plaintiff does not explain why this would require
Plaintiff to assert an unlimited number of claims at this point. Plaintiff does not clarify how the
different instrumentalities operate or how the various patents or instrumentalities are related or
unrelated. Furthermore, although Plaintiff emphasizes that Judge Carter did not issue a formal
claim limitation order, Plaintiff does not explain why that affects the appropriateness of limiting
the number of claims at this juncture in the case.
In light of the parties’ arguments and the applicable case law, the Court concludes that it
is appropriate to limit Plaintiff to a total of fifteen asserted claims against Ford. Although Ford
argues that Plaintiff should be limited to ten claims, the Court notes that there are currently five
patents at issue in this consolidated case and concludes that it is reasonable to allow Plaintiff the
equivalent of three asserted claims per patent, for a total of fifteen claims.
Given the parties’ arguments thus far, however, the Court further concludes that it is
appropriate to allow Plaintiff to file a motion to modify this order by showing good cause to
assert additional claims. See, e.g., Katz, 639 F.3d at 1311 (“When the claimant is in the best
position to narrow the dispute, allocating the production burden to the claimant will benefit the
decision-making process . . . .”). As the Court indicated at the conclusion of the December 23
conference, Plaintiff may file a motion to modify this order on or before January 14, 2014.
B. The Chrysler Case
Plaintiff asserts that limitations on the number of claims at this stage would not be
beneficial, and that any limitation on claims should be considered after the Markman claim
construction hearing. Discovery Plan at 3 (Dkt. 17).

7

Chrysler contends that, prior to transfer

from the Southern District of New York, Judge Katherine B. Forrest limited Plaintiff to no more
than eight asserted claims per patent. Id. at 3. Chrysler argues that the Court should adopt Judge
Forrest’s order regarding claims limitation. Id. at 3-4.
The Court rejects Plaintiff’s contention that the Court should wait to consider a limitation
on the number of asserted claims until after the claim construction hearing. It would be a waste
of time and resources to conduct a claim construction hearing for a multitude of claims that
Plaintiff may later elect not to pursue during the claim selection process. See Oasis Research,
LLC v. Adrive, LLC, No. 10-00435, 2011 WL 7272473, at *2 (E.D. Tex. Sept. 13, 2011)
(concluding that “limiting the amount of claims asserted by Plaintiff is appropriate at this time
[prior to the claim construction hearing and the completion of fact discovery, expert reports,
depositions, and trial] to aid in efficiency and narrowing the claims prior to claim construction”);
see also Hearing Components, Inc., 2008 WL 2485426, at *1 (ordering claim limitation prior to
claim construction).
The Court notes that Chrysler is not seeking to reduce the number of claims to fewer than
the eight claims per patent ordered by Judge Forrest. Nor does Plaintiff – beyond arguing that
claim limitation should not be considered at this stage at all – assert a basis for increasing the
number of claims above eight per patent. Although the Chrysler and Ford cases appear to be
similar and a lower number would be justified, the Court will not disturb the claim limitation
order previously entered in this case by Judge Forrest. Plaintiff is limited to eight claims from
each patent against Chrysler. Plaintiff may file a motion to modify this order by showing good
cause to assert additional claims on or before January 14, 2014.
IV.

CONCLUSION

For the reasons stated above, Plaintiff is limited to a total of fifteen claims against Ford.

8

Additionally, Plaintiff is limited to eight claims from each patent against Chrysler. Plaintiff may
file a motion to modify this ruling on or before January 14, 2014.

SO ORDERED.
Dated: January 10, 2014
Flint, Michigan

s/Mark A. Goldsmith
MARK A. GOLDSMITH
United States District Judge
CERTIFICATE OF SERVICE

The undersigned certifies that the foregoing document was served upon counsel of record
and any unrepresented parties via the Court's ECF System to their respective email or First Class
U.S. mail addresses disclosed on the Notice of Electronic Filing on January 10, 2014.
s/Deborah J. Goltz
DEBORAH J. GOLTZ
Case Manager

9