SandBox Logistics LLC, et al v. Proppant Express Investments LLC, et al.

Filing 303

CLAIM LIMITATION ORDER (Signed by Judge George C Hanks, Jr) Parties notified.(dperez, 3)

United States District Court
Southern District of Texas

ENTERED
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
SANDBOX LOGISTICS LLC, et al,
Plaintiffs,
VS.
PROPPANT EXPRESS INVESTMENTS
LLC, et al,
Defendants.

September 14, 2018
David J. Bradley, Clerk

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§ CIVIL ACTION NO. 4:17-CV-589
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CLAIM LIMITATION ORDER
The plaintiffs have filed a request to limit the numbers of claims and prior art
invalidity arguments that the parties can assert (Dkt. 247 at p. 2). The defendants oppose
the request (Dkt. 247 at pp. 3–4). The Court will limit the numbers of claims and prior art
invalidity arguments as explained below.
“District courts may limit the number of patent claims asserted in an action for
patent infringement for the sake of judicial economy and management of a court’s
docket.” West View Research, LLC v. BMW of North America, LLC, No. 16-CV-2590,
2017 WL 606511, at *1 (S.D. Cal. Feb. 15, 2017) (citing In re Katz Interactive Call
Processing Litig., 639 F.3d 1303, 1313 (Fed. Cir. 2011)). In determining whether to
require parties to limit the numbers of claims and prior art references asserted, district
courts look to: (1) the number of patents and claims at issue; (2) the feasibility of trying
the claims to a jury; (3) whether the patents at issue have common genealogy; (4)
whether the patents contain terminal disclaimers; and (5) whether the asserted claims are
duplicative. Thought, Inc. v. Oracle Corp., No. 12-CV-5601, 2013 WL 5587559, at *2
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(N.D. Cal. Oct. 10, 2013) (citing In re Katz, 639 F.3d at 1311). If it requires the parties to
limit the numbers of claims and prior art references asserted, the district court should
allow the parties to add additional selections, or to modify the selections they have made,
upon a showing of good cause. Masimo Corp. v. Philips Electronics North America
Corp., 918 F. Supp. 2d 277, 283–85 (D. Del. 2013); see also In re Katz, 639 F.3d at
1312; Stamps.com Inc. v. Endicia, Inc., 437 Fed. App’x 897, 902 (Fed. Cir. 2011).
The plaintiffs propose a phased limitation on the numbers of claims and prior art
invalidity arguments. Currently, the plaintiffs assert 52 claims. The defendants assert 13
prior art references, though the plaintiffs argue that those 13 references give rise to 1,987
different prior art combinations. Under the plaintiffs’ proposal, the plaintiffs would limit
the number of their claims to 30 at phase one and to 16 at phase two. The defendants
would limit the number of their prior art invalidity arguments to 120 at phase one and to
48 at phase two, with each asserted prior art reference or combination of prior art
references counting as a separate invalidity argument and with anticipating and obviating
references each counting as separate invalidity arguments (Dkt. 247 at p. 2; Dkt. 247-5 at
p. 2). There are four patents at issue in this case, so the plaintiffs’ proposal would
ultimately reduce the number of claims per patent to four and the number of prior art
invalidity arguments per patent to 12. Numerically, the plaintiffs’ proposal is in line with
limitation orders entered in other districts, and the Court finds those districts’ discussions
persuasive. See, e.g., Medtronic Minimed Inc. v. Animas Corp., No. CV-12-4471, 2013
WL 3322248, at *3 (C.D. Cal. Apr. 5, 2013) (implementing phased reduction in number
of claims from 255 over nine patents to 36 and then to 18); Fenster Family Patent
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Holdings, Inc. v. Siemens Med. Solutions USA, Inc., Civ. Action No. 04-0038, 2005 WL
2304190, at *3 (D. Del. Sept. 20, 2005) (in a case involving 90 claims and eight unrelated
patents, limiting plaintiff “to ten (10) claims and five (5) products asserted”); Verizon
California Inc. v. Ronald A. Katz Tech. Licensing, L.P., 326 F. Supp. 2d 1060, 1066
(C.D. Cal. 2003) (in a case involving 16 patents, limiting plaintiff to three claims per
patent); Thought, Inc., 2013 WL 5587559, at *4 (in a case involving seven patents,
limiting plaintiff to five claims per patent and 16 claims in total and limiting defendant to
nine prior art invalidity arguments per patent and 50 prior art invalidity arguments in
total).
The Court will adopt the plaintiffs’ proposal. This lawsuit has progressed to a
point where the parties should be able to pare down their claims and prior art invalidity
arguments. Since three of the four patents at issue in this case describe the same invention
and share a specification, a limitation on the number of claims and prior art invalidity
arguments will help streamline this lawsuit without compromising the parties’ ability to
present their respective cases. If the limits proposed by the plaintiff prove too restrictive,
the Court will modify those limits if the requesting party establishes good cause for the
modification.
The Court imposes the following numerical limitations:
1. By September 28, 2018, the plaintiffs shall file a Preliminary Election of
Asserted Claims and reduce their number of asserted claims to no more than 30
total claims.
2. By October 5, 2018, the defendants shall file a Preliminary Election of
Asserted Prior Art and reduce their invalidity assertions under 35 U.S.C. §§
102 and 103 to no more than 120 prior art arguments.
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3. By October 26, 2018, the plaintiffs shall file a Final Election of Asserted
Claims and reduce their number of asserted claims to no more than 16 total
claims.
4. By November 2, 2018, the defendants shall file a Final Election of Asserted
Prior Art and reduce their invalidity assertions under 35 U.S.C. §§ 102 and 103
to no more than 48 prior art arguments.
With regard to prior art arguments, each asserted individual prior art reference or
combination of prior art references will count as a separate invalidity argument, even if
an individual prior art reference is also listed as part of a combination of prior art
references; and each anticipating or obviating reference will count as a separate invalidity
argument, even if the same prior art reference is used to make both an anticipation
argument and an obviousness argument.
Prior to making their final elections, the parties may move to add additional
selections or to modify the selections they have made. The Court will allow the addition
or modification upon a showing of good cause.
SIGNED at Galveston, Texas, this 12th day of September, 2018.
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George C. Hanks Jr.
United States District Judge

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