Certusview Technologies, LLC v. S & N Locating Services, LLC et al
Filing
159
ORDER granting in part and denying in part 140 Motion to Limit Number of Asserted Patent Claims. For the reasons set forth above, the Court GRANTS IN PART AND DENIES IN PART Defendants' renewed motion to limit the number of asserted paten t claims and GRANTS IN PART AND DENIES IN PART Plaintiff's cross-motion to limit the number of invalidity arguments. Certusview is DIRECTED to file an Election of Asserted Claims containing no more than FIFTEEN (15) claims within seven (7) days of the filing of this Opinion and Order. S&N is DIRECTED to make an Election of Asserted Prior Art containing no more than TWENTY FIVE (25) prior art references within seven (7) days after Certusview files its Election of Asserted Claims. As stated a bove, this Opinion and Order is without prejudice to either Certusview or S&N requesting, by an appropriate motion, to assert additional claims or additional prior art references upon a showing of good cause. The Court GRANTS S&N's unopposed request for leave to serve an amended opening invalidity expert report. If Defendants choose to file an amended opening invalidity expert report, they must do so within twenty one (21) days after Certusview files its Election of Asserted Claims. The Court DENIES S&N's motion for sanctions. IT IS SO ORDERED. Signed by District Judge Mark S. Davis and filed on 9/30/14. Copies distributed to all counsel of record 10/1/14. (ldab, )
UNITED
STATES
DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
Norfolk Division
CERTUSVIEW TECHNOLOGIES,
LLC,
Plaintiff,
Case
v.
S&N LOCATING SERVICES,
No.:
2:13cv346
LLC,
and
S&N COMMUNICATIONS,
INC.,
Defendants.
OPINION AND ORDER
This matter is before the Court on two motions:
motion filed by defendants S&N Locating Services,
Communications, Inc.
the
number of
cross-motion
("Plaintiff"
or
claims
by
the
asserted against
plaintiff
"Certusview")
arguments asserted by S&N.
record,
a renewed
LLC,
and S&N
(collectively "Defendants" or "S&N") to limit
patent
filed
{1)
to
Certusview
them,
and
(2)
Technologies,
limit the number of
a
LLC
invalidity
After examining the briefs and the
Court determines
that
oral
argument
is unnecessary
because the facts and legal contentions are adequately presented and
oral argument would not aid in the decisional process.
P. 78(b); E.D. Va. Loc. R. 7(J).
Fed. R. Civ.
For the reasons set forth below,
the Court GRANTS IN PART and DENIES IN PART both motions.
I. Factual and Procedural Background
On May 29, 2013,
Certusview filed a complaint in this Court,
alleging infringement by Defendants of four of its patents.
1.
On December 6,
2013,
Plaintiff
ECF No.
filed an amended complaint,
alleging that Defendants had also infringed a fifth patent.
65.
ECF No.
Plaintiff subsequently identified "a total of 68 claims as
allegedly being
infringed."
Defs.'s
Asserted Claims at 3, ECF No. 65.
Br.
Supp.
Mot.
claim
construction"
and
Limit
On March 3, 2014, Defendants filed
a motion to limit the number of asserted claims "to a
before
to
"a
total
of
10"
total of 32
after
claim
construction, Defs.' Mot. to Limit Asserted Claims at 2, ECF No. 64,
asserting that the current number of claims is "disproportionate to
the corresponding limits the Court placed on claim construction,"
Defs.'s Br. Supp. Mot. to Limit Asserted Claims at 3, ECF No. 65.
Plaintiff filed a brief opposing Defendants' motion on March 17,
2014, asserting that Plaintiff cannot "reasonably limit the number
of claims" because it has yet to receive "sufficient discovery [from
Defendants]
concerning
the
accused
product
positions on infringement and validity."
ECF No.
and
[Defendants']
PI. 's Br. in Opp'n at 1-2,
77.
On March 19, 2014, the Court denied Defendants' motion to limit
the number of asserted patent claims.
The Court recognized its
inherent authority to reasonably limit the number of patent claims
Certusview may assert.
However,
March 19, 2014 Order at 3,
ECF No.
86.
the Court concluded that it would have been premature to
limit Certusview's claims at the time of S&N's first motion to limit
claims because of discovery disputes with respect to claims and
defenses.
Id. at
5.
Nonetheless,
the Court specifically noted
Certusview's "willing [ness] to reasonably limit the number of claims
being asserted at the appropriate time"
and underscored that the
Court fully expected Certusview to do so.
Id.
it
would
"gladly entertain a
The Court stated that
renewed motion
by Defendants"
if
Plaintiff failed to "adequately limit its claims within a timely
manner
after
entitled."
receiving
Id.
at
the
5-6.
relevant
discovery
Additionally,
the
to
Court
which
it
reminded
parties that they had "ethical obligations to work together,
is
the
in a
professional manner, to prepare this case for trial" and emphasized
that " [i]f the parties fail to do so, the Court will not hesitate
to impose appropriate sanctions."
On April 1, 2014,
Id. at 6.
the Court conducted a Markman hearing.
On
May 16, 2014, the Court issued an Opinion and Order construing ten
disputed claim terms.
ECF No. 121.
On August 28, 2014, S&N renewed their motion seeking to limit
the number of patent claims that Certusview could assert.
Renewed Mot. to Limit Asserted Claims, ECF No. 140.
Defs.'
In support of
their Renewed Motion, Defendants argue that it is now the appropriate
time to limit the number of claims that Certusview can assert against
S&N
because
Certusview
has
received
reasonably know which claims to assert.
Mot.
to
Limit
emphasize
Asserted
that
Claims
Certusview
at
has
2,
sufficient
discovery
to
Defs.' Br. Supp. Renewed
ECF.
No.
received:
141.
Defendants'
non-infringement
contentions on April 25; detailed invalidity contentions on April
29;
"access
to
source
code
for
the
accused
system;"
"a
live
demonstration of the accused system;" an additional 18,000 documents
produced on July 11; and "all requested witnesses in July and August."
Id.
Defendants further contend that limiting the number of claims
Certusview
may
assert
is
appropriate
because
"four
of
the
Patents-in-Suit are related," "there is significant overlap between
all of the asserted patents and claims," and "Certusview has only
accused
one
instrumentality of
infringement."
Id.
at
5.
In
addition, Defendants argue that the Court should not require them
to limit the number of arguments they can make on invalidity, much
less require them to do so "as a condition for the patent holder to
limit the number of asserted claims."
Id. at 3.
S&N request that
the Court: "immediately reduce the total number of asserted patent
claims to no more than a total of 10;" "allow S&N to serve an amended
opening invalidity expert report within thirty days of receiving
Certusview's reduced list of claims,-" and enter sanctions against
Certusview.
Id.
at 6.
On September 11,
2014,
Certusview filed its response
to
Defendants' motion and a cross-motion seeking to limit the number
of invalidity arguments that S&N could assert.
Pi. 's Resp. to Defs.'
Renewed Mot. to Limit Number of Asserted Claims & Cross-mot. to Limit
Number of Invalidity Arguments,
ECF. No. 151.
Certusview states
that it conferred with S&N in an attempt to reach an agreement that
would limit both the number of claims Certusview could assert and
the prior art invalidity references S&N could assert, but failed to
reach any agreement.
Id. at 1-2.
On July 28,
2014,
Certusview
proposed limiting the number of its claims to thirty, if S&N would
agree to narrow the asserted prior art to ten references.
B. at 1.
Id. Ex.
In response, on August 2, 2014, S&N offered to limit their
number of prior art references to twenty five, if Certusview would
limit its number of claims to fifteen.
See id. Ex. C at 2 .
On August
6, 2014, Certusview countered by offering to limit the number of its
asserted claims
to
twenty,
if
S&N would
limit
references to two grounds of invalidity per claim.
their prior art
Id. Ex. D at 1.
The forgoing attempts to resolve the issues the parties have raised
in the instant motions did not succeed.
In opposition to S&N's motion, Certusview contends that it is
too early for Certusview to reasonably limit the number of claims
it will assert because Certusview has not had "sufficient discovery
concerning the accused product and S&N's positions on infringement
and validity."
Id. at 5.
Certusview emphasizes that fact discovery
will not close until October 10, 2014, expert discovery will not close
until
October
31,
2014,
and
it
will
not
have
S&N's
rebuttal
to
Certusview's infringement expert report until September 30, 2014.
Id.
Additionally, Certusview contends that the number of patents
involved
in
reasonable
this
case,
five,
renders
limitation on Certusview.
twenty
asserted
claims
a
Id.
In support of its cross-motion to limit the number of prior art
references that S&N can assert, Certusview argues that the Court has
the authority to limit the number of prior art references or arguments
S&N can raise for the same reasons that the Court can limit the number
of claims Certusview can assert.
Id. at 1.
Furthermore, Certusview
asserts that Defendants have already limited the number of prior art
invalidity grounds they can raise to ten because Defendants have
served an expert report offering only ten prior art invalidity
grounds.
Id.
Certusview requests that the Court deny S&N's motion
"without prejudice to refilling [sic] after S&N has participated in
a good faith effort to reach a negotiated resolution of the issues
presented."
Id. at 6
(emphasis omitted).
In the
alternative,
Certusview asks that the Court limit "the number of asserted claims
of the five asserted patents to twenty, to be elected by CertusView
on or before October 10th" and confirm "that S&N is limited to the
ten prior art invalidity theories in its invalidity expert report."
Id.
In
reply,
Defendants
assert
that
Certusview has
obtained
sufficient discovery to allow it to make an informed decision about
which claims to pursue because "most courts limit the number of
asserted claims before opening expert reports are due."
Defs.'
Reply Br. Supp. Renewed Mot. to Limit Asserted Claims at 3, ECF. No.
154.
Defendants further argue that, if the Court limits the number
of prior art references they can assert,
Certusview has
reduced its
it should do
so after
number of asserted claims because S&N
cannot fairly limit its prior art references without knowing which
claims are actually at issue.
Id.
S&N's Reply reiterates S&N's
contention that the Court should limit Certusview to ten claims.
In
S&N's view, this limitation is justified because "four of the five
Patents-in-Suit
are
related
and
share
specifications and similar claim language,"
nearly
identical
"at least one of the
Patents-in-Suit contains a terminal disclaimer," and "Certusview has
only accused one
instrumentality of
infringement."
Id.
at
7.
Finally, in support of their request for sanctions, Defendants accuse
Certusview of "willful conduct" in unjustifiably delaying reducing
its number of claims.
Id.
at 8.
II.
DISCUSSION
A. Renewed Motion to Limit Number of Asserted Claims
"A district court has inherent authority to reasonably limit
. . . the number of patent claims the parties may assert, lto control
the dispositions of the causes on its docket with economy of time
and effort for itself, for counsel, and for litigants.'"
Masimo
Corp. v. Philips Elecs. N. Am. Corp., 918 F. Supp. 2d 277, 282 (D.
Del. 2013) (internal citations omitted)
(quoting Landis v. N. Am.
Co. , 299 U.S. 248, 254-55 (1936)); see also Thought, Inc. v. Oracle
Corp., Case No. 12-CV-05601, 2013 U.S. Dist. LEXIS 147561, at *4-5
(N.D. Cal. Oct. 10, 2013); Gen-Probe Inc. v. Beckton Dickinson & Co. ,
Case No. 09-CV-2319, 2012 U.S. Dist. LEXIS 21744,at *6-7 (S.D. Cal.
Feb. 22, 2012); cf., e.g., Unwired Planet LLC v. Google, Inc., Case
No. 3:12-cv-0504,
2013 U.S. Dist. LEXIS 146766, at *2,*5 (D. Nev.
Oct. 10, 2013)(ordering plaintiff to reduce number of claims from
124 to 30) ; Classen Immunotherapies, Inc. v. Biogen Idee, Civil No.
WDQ-04-2607, 2013 U.S. Dist. LEXIS 24836, at *9, *11-12 (D. Md. Feb.
22, 2013)
(ordering plaintiff to reduce number of claims from 229
to 30); Unified Messaging Solutions LLC v. Facebook Inc., Case No.
6:llcvl20, 2012 WL 11606516, at *1 (E.D. Tex. July 12, 2012) (ordering
plaintiff to reduce number of claims from 52 to 15 at the time of
its expert report on infringement).
Indeed, the Federal Circuit has held that a district court may
limit the number of patent claims a plaintiff may assert without
depriving the plaintiff of due process of law as long as the court
provides the plaintiff with the ability to assert additional claims
upon a showing of good cause.
See In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1312 (Fed. Cir. 2011); see
also Stamps.com Inc. v. Endicia, Inc. , 437 F. App'x 897, 900-03 (Fed.
Cir. 2011) (limiting claims from 629 to 15); Gen-Probe, 2012 U.S.
Dist. LEXIS 21744, at *6-7.
According to the Federal Circuit, "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 and therefore will not offend due process
unless the burden allocation unfairly prejudices the claimant's
opportunity to present its claim."
In re Katz, 639 F.3d at 1311.
To avoid unfair prejudice after requiring the plaintiff to limit
8
its claims, a district court must provide the plaintiff with the
opportunity to assert additional, unselected claims that present
unique issues of
addition,
liability or damages.
See id.
at
1312-13.
In
the court should consider whether the plaintiff will be
prejudiced by a claim selection order that "comes too early in the
discovery
process,
denying
the
plaintiff
the
opportunity
to
determine whether particular claims might raise separate issues of
infringement or
invalidity in light of
products and proposed defenses."
the
defendants'
Id. at 1313 n.9.
accused
Accordingly, a
court may limit the number of patent claims a plaintiff may assert
so long as it provides the plaintiff with the opportunity to assert
additional
claims
upon
a
showing
of
good
cause
and
prematurely require the plaintiff to limit its claims.
1311-13
&
does
not
See id. at
n.9.
In this case, the parties do not dispute the appropriateness
of limiting the number of claims that Certusview may assert at trial.1
E.g., PL's Resp. to Defs.' Renewed Mot. to Limit Number of Asserted
Claims & Cross-mot.
("Certusview has
claims.")
to Limit Number of Invalidity Arguments at 1
not
refused
to
(emphasis in original).
limit
the
Rather,
number
of
asserted
Certusview and S&N
To determine whether to require a plaintiff to limit its claims, courts
consider whether the plaintiff asserts duplicative claims, the patents-in-suit
share a common genealogy, and the patents contain terminal disclaimers. See In
re Katz, 639 F.3d at 1311. Courts also "look to the number of patents and claims
at issue and the feasibility of trying the claims to a jury." Thought, Inc., 2013
U.S. Dist. LEXIS 147561, at *4.
Certusview must limit its claims.
In this case, the parties do not dispute that
However, absent such a limitation, the number
of claims Certusview has asserted, sixty eight, could not feasibly be placed before
a jury.
dispute the number of claims Certusview should be allowed to assert
and the timing of when Certusview should be required to limit its
claims.
After careful consideration of
the parties'
arguments with
respect to the number of claims Certusview should be allowed to
assert,
the
Court
will
representative claims.
order
Certusview
However,
to
select
FIFTEEN
(15)
the Court remains mindful of the
need to adequately protect Certusview's due process rights because
requiring Certusview to limit the number of claims it might assert
could prevent Certusview from asserting viable,
claims.
Therefore,
in
accordance
with
the
non-duplicative
Federal
Circuit's
decision in Katz, after selecting its claims pursuant to this Opinion
and Order, Certusview may move the Court for leave to assert any
unselected claims upon a showing of good cause.
If Certusview wishes
to assert any claims in addition to the fifteen representative claims
that it selects, Certusview must show that any unselected claim
presents a unique issue with respect to liability or damages.
The Court has also carefully considered the parties' arguments
with respect to the timing of the claim selection order and the Court
is satisfied that this case has reached a sufficient stage in the
discovery process to allow Certusview to make an informed decision
about which claims to pursue.
Defendants'
Unlike the situation at the time of
first motion to limit asserted claims, Certusview has
had substantial opportunity to obtain discovery regarding S&N's
10
invalidity and non-infringement contentions, including S&N's expert
report on invalidity.
See, e.g., Havco Wood Prods., LLC v. Indus.
Hardwood Prods., 10-cv-566, 2011 U.S. Dist. LEXIS 130757, at *15-18
(W.D. Wise. Nov. 10, 2011) (ordering plaintiff to select claims prior
to initial expert disclosure).
Moreover, at this stage, Certusview
has also had the benefit of this Court's Markman Opinion since May
16, 2014—more than four months ago.
Cf ., e.g. , Thought, Inc., 2013
U.S. Dist. LEXIS 147561, at *12-13 (ordering plaintiff to select no
more than 32 claims prior to claim construction and no more than 16
claims within 28 days of the court's claim construction order).
Accordingly, Certusview will make an election of FIFTEEN (15) claims
within seven (7) days of the filing of this Opinion and Order.
As
stated
to
above,
Certusview
this
Opinion and Order
requesting,
by
an
is without
appropriate
prejudice
motion,
to
assert
additional claims upon a showing of good cause.
In addition to their request to limit the number of claims
Certusview may assert, Defendants, unopposed, also seek leave to
amend their opening invalidity expert report.2
"A schedule may be
modified only for good cause and with the judge's consent."
Fed.
R. Civ. P. 16(b); see also Nourison Rug Corp. v. Parvizian, 535 F.3d
295, 298 (4th Cir. 2008) .
"The good cause provision of Rule 16 (b) (4)
does not focus on the prejudice to the non-movant or bad faith of
the moving party, but rather on the moving party' s diligence. "
Reese
2 Certusview's response to S&N's motion did not address S&N's request for
leave
to amend S&N's
opening
invalidity expert
report.
See
ECF No.
Accordingly, Certusview has not opposed S&N's request for leave to amend.
11
151.
v. Va. Intern. Terminals, Inc., 286 F.R.D. 282, 285 (E.D. Va. 2012)
(quoting Lineras v. Inspiration Plumbing LLC,
No. I:10cv324, 2010
U.S. Dist. LEXIS 117586,
3, 2010)).
at *2
(E.D. Va.
Nov.
The Court finds good cause to GRANT S&N's unopposed request for
leave to serve an amended opening invalidity expert report.
In
addition to filing their March 3, 2014 motion to limit claims, S&N
acted with diligence in requesting that Certusview limit its claims
on July 15 2014, well in advance of the September 1, 2014 deadline
for filing opening expert reports.
to
Limit Asserted Claims
Defendants'
first
motion
Ex.
to
See Defs.' Br. Supp. Renewed Mot.
C.
In the
limit
Court's Order denying
asserted
claims,
the
Court
expressly noted Certusview's "willingness to reasonably limit the
number
of claims
being
asserted at
the
appropriate
emphasized that it "fully expects Plaintiff to do so."
2014 Order at 5(emphasis in original).
However,
time"
and
March 19,
despite this
direction from the Court, Certusview failed to reasonably limit its
claims prior to the deadline for S&N to file its opening invalidity
expert report.
all
Thus, S&N's invalidity expert was forced to address
sixty eight claims
that Certusview has
asserted because
Certusview had failed to reasonably limit its claims.
Fairness
dictates that Defendants have the opportunity to file an amended
opening invalidity expert report following Certusview's election of
claims to allow S&N's expert to address the claims that are actually
in dispute.
The resolution of this matter will also benefit from
12
S&N filing an expert report targeted at
actually intend to place before a jury.
the claims the parties
Accordingly, the Court will
GRANT S&N leave to file an amended opening invalidity expert report
within twenty one (21) days after Certusview files its Election of
Asserted Claims.3
B. Cross-motion to Limit the Number of Invalidity Arguments
Just as the Court has the inherent authority to limit the patent
claims that a plaintiff may assert, the Court also has the authority
to limit the number of invalidity arguments and prior art references
that
defendants
may
assert.
E.g.,
MyMedical
Records,
Inc.
v.
Walgreen Co. , Case No. 2:13-CV-00631, 2014 U.S. Dist. LEXIS 88289,
at *1 (CD. Cal. June 27, 2014)
(citing In re Katz, 639 F.3dat 1313;
Stamps.com, 437 F. App'x at 902-03)
(noting that a district court's
case-management discretion "includes the ability to limit the number
of claims asserted . . . and prior-art references to invalidate the
patent."); cf., e.g., Thought, Inc., 2013 U.S. Dist. LEXIS 147561,
at * 12 (limiting prior art references to 25) .
However, for the same
reason that requiring a plaintiff to limit its claims might threaten
a plaintiff's due process rights,
imposing a similar limit on a
defendant's ability to raise prior art references as grounds for
invalidity might prejudice a defendant's due process rights.
See
3 The Court notes that S&N also requested sanctions in its motion to limit
asserted claim terms, though it is not clear upon what rule or authority S&N relied
as the basis for those sanctions.
In light of the fact that the parties were in
the process of negotiating competing limitation requests and because the Court
has granted Defendants' request for leave to amend their opening invalidity expert
report, the Court DENIES the motion with respect to sanctions.
13
MyMedical Records, Inc., 2014 U.S. Dist. LEXIS 88289, at *3 (citing
In re Katz,
639
F.3d at
1310-12).
Therefore,
a
limitation on a
defendant's ability to assert invalidity arguments must include an
adequate means
for a
defendant
to
assert
arguments upon a showing of good cause.
additional
invalidity
See id.
The Court has carefully considered the parties' arguments with
respect to limiting the number of prior art references that S&N may
assert and the Court will order S&N to limit the number of prior art
references they assert to TWENTY FIVE (2 5) within seven (7) days after
Certusview files its election of claims.
However, the Court remains
mindful of the need to adequately protect S&N's due process rights.
Therefore, in accordance with the Federal Circuit' s decision in Katz,
after selecting their prior art references pursuant to this Opinion
and Order, S&N may move the Court for leave to assert any unselected
prior art references upon a showing of good cause.
III.
CONCLUSION
For the reasons set forth above,
DENIES IN PART Defendants'
asserted patent
Plaintiff's
arguments.
claims
renewed motion to limit the number of
and GRANTS
cross-motion
the Court GRANTS IN PART AND
to
limit
IN
PART
the
AND
number
DENIES
of
IN
PART
invalidity
Certusview is DIRECTED to file an Election of Asserted
Claims containing no more than FIFTEEN (15) claims within seven (7)
days of the filing of this Opinion and Order.
S&N is DIRECTED to
make an Election of Asserted Prior Art containing no more than TWENTY
14
FIVE (25) prior art references within seven (7) days after Certusview
files its Election of Asserted Claims.
and
Order
requesting,
is
without
prejudice
As stated above, this Opinion
to
by an appropriate motion,
either
Certusview
or
S&N
to assert additional claims
or additional prior art references upon a showing of good cause.
The Court GRANTS S&N's unopposed request for leave to serve an
amended opening invalidity expert report.
If Defendants choose to
file an amended opening invalidity expert report,
they must do so
within twenty one (21) days after Certusview files its Election of
Asserted
The
Claims.
Court
DENIES
S&N's
motion
for sanctions.
The Clerk is REQUESTED to send a copy of this Opinion and Order
to
all
counsel
IT
IS
SO
of
record.
ORDERED.
/s
Mark
UNITED
Norfolk,
Virginia
September -3> Q
, 2014
15
S.
finger
Davis
STATES DISTRICT JUDGE
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