This week saw the birth of a novel way to raise a claim narrowing dispute, and it strikes me as rather clever.
Typically the number of claims asserted gets raised as a discovery dispute or as part of the scheduling or status conference.
The plaintiff in TQ Delta, LLC v. Pace Americas, LLC, C.A. No. 13-1835-RGA (D. Del.), though, took a different tack and instead moved for extra pages for summary judgment briefing, explaining that it needed the extra pages because the defendant was asserting 18 invalidity defenses (against plaintiff's 2 asserted claims).
This resulted in the following turn of events:
- Judge Andrews immediately issued an Oral Order requesting defendant to confirm that it was actually asserting 18 defenses, and "if the number of such grounds and defenses is eighteen or some similar number, why it cannot now reduce them now to a reasonable number." Id. at D.I. 1373 (emphasis added).
- Defendant responded by confirming that it was maintaining 17 defenses and stating that it would be unfair to require them to pick which ones to assert at such short notice.
- Judge Andrews issued a new order, noting that "Defendant is being plainly unreasonable in maintaining so many invalidity defenses," and refusing to entertain any summary judgment motions as to invalidity from either side unless and until the defendant dropped the number of defenses to six or less.
This looks to me like a clear strategic win for the plaintiff, who—even with extra pages—probably wouldn't have been able to cover more than the 10 or so weakest theories. And they got it without even needing to file a letter on the issue.
That's not to say that there are no risks to this tactic.
It Turns Out That This Has Happened Before. Sort Of.
I was curious whether Judge Andrews had previously ordered claim or defense narrowing in response to a request for more pages. I took a look, and found one other case from a few years back, EMC Corporation. v. Pure Storage Inc., C.A. No. 13-1985-RGA, D.I. 66 (D. Del. Sept. 19, 2014), where a similar scene played out at claim construction.
In that case, the plaintiff had complained that the defendant had submitted too many disputed terms and requested additional pages.
The defendant responded by explaining that the reason there were so many terms is that the plaintiff was asserting 57 claims.
In that case, Judge Andrews responded by noting that he "would like to see a reduction in both the number of asserted claims . . . and the number of disputed terms" and ultimately ordered the plaintiff (who had been the one to request extra pages) to reduce the number of asserted claims by almost half, while requiring no corresponding reduction in defenses or disputed terms from the defendant. See id. at D.I. 60 and 66.
So take care in making or opposing a request for more pages, especially if you're asserting an "unreasonable" number of claims or defenses. You might end up getting more—or much less—than you bargained for.