A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: case-narrowing

Case narrowing is an issue that comes up in most patent cases at some point, whether in the scheduling order, as a discovery dispute, or at the pretrial conference (or, possibly, all three).

Average amount of prior art references each defendant seeks to assert.
Average amount of prior art references each defendant seeks to assert. Cristina Gottardi, Unsplash

When requested, judges in Delaware typically implement an initial two-stage reduction in asserted claims and prior art references, with the first stage occurring before claim construction, and the second afterward.

Of course, sometimes they will implement other schedules depending on the needs of the case and the requests of the parties. And, for cases that reach a pretrial conference, the Court often imposes an additional limit on the number of claims for …

In the most recent entry in the case narrowing saga in IPA Techs., Inc. v. Amazon.com, Inc., 16-1266-RGA (previously covered here and here), Judge Andrews addressed defendant Amazon's objection to the reassertion of previously dropped claims.

Earlier this year, Judge Andrews directed IPA to reduce its asserted claims to 30, and it did. Subsequently, nearly half of its asserted claims were invalidated in an IPR. Plaintiff IPA, no longer asserting the invalidated claims, then added (or "reasserted") seven of the previously dropped claims in place of the invalidated claims.

Amazon opposed the addition of the new claims because fact discovery was nearly complete and because it had crafted its invalidity case with the 30 asserted claims in …