On Monday, Judge Connolly issued a Memorandum Order squarely rejecting the notion that requiring a patentee to drop asserted claims for case management purposes violates due process.
Claim narrowing is one of those issues in patent law that is frequently litigated, but rarely produces a full opinion. Often, a plaintiff asserts a monstrously large number of claims, the defendant then complains that a trial on 396 claims is impossible, and the plaintiff notes that requiring them to drop the claims implicates due process. Then, everything is teed up for a discovery dispute resulting in a brief oral order narrowing the case without significant analysis.
The dispute in VLSI Technology LLC v. Intel Corporation, C.A. No. 18-966-CFC, D.I. 636 (D. Del. Aug. 3, 2020) went more or less as described above, and resulted in Judge Connolly ordering VLSI "to reduce the number of asserted claims to 25 by April 26, 2019 and to further narrow the number of asserted claims to 18 after claim construction." Id. at 2. After the first narrowing, however, VLSI pushed back and moved to "Reintroduce Certain Asserted Patent Claims, or to Sever Such Claims Into a Separate Action to be Stayed." Judge Connolly did not act on this motion, so after the second narrowing VLSI filed a broadly similar "Second Motion to Reintroduce Certain Asserted Patent Claims, or to Sever Such Claims Into a Separate Action to be Stayed." This unusual persistence prompted Judge Connolly to issue a detailed Memorandum Order denying both motions.
In the motions, VLSI's argued that because "each claim it seeks to reintroduce presents 'unique questions of validity or infringement,' . . . due process mandates their reintroduction into, or severance and stay from, the case[.]" Id. at 4 (quoting VLSI's brief, D.I. 580, at 3). Judge Connolly firmly rejected this argument, noting that because "[e]ach claim of a patent defines a separate invention . . . each claim of an asserted patent necessarily presents a unique issue of infringement or invalidity. Thus, as a practical matter . . . district courts could never limit the number of claims asserted by a plaintiff, and this Court's docket would grind to a halt." Id.
While the overall holding here is not terribly surprising, the depth of the opinion is unusual and will likely garner numerous citations in future claim narrowing disputes in the district.