Save Me Some Money: Paring Down Costs in Patent Litigation

Order Re Pilot Motions for Summary Judgment, Comcast Cable Communications, LLC v. OpenTV, Inc. et. al., N.D. Cal. (August 4, 2017) (Judge William Alsup)

It’s no secret that patent litigation is expensive—especially when multiple patents and a multitude of claims are in play.  In 2015, the American Intellectual Property Law Association estimated the median cost of patent litigation, through trial, ranged from $600,000 in lawsuits with less than $1 Million at risk to $5 Million in lawsuits with more than $ 25 Million at risk.  Given this expense and the complexity of these cases, it’s not surprising that courts and parties have sought ways to minimize the resources consumed by patent litigation through various narrowing tools particular to patent lawsuits, including by limiting the number of claims and/or patents litigated in a given lawsuit.

The biggest recent trend in streamlining cases is to limit the number of asserted claims at various stages of litigation.  See In re Katz Interactive Call Processing Patent Litigation, 639 F. 3d 1303, 1312-13 (Fed. Cir. 2011) (the Court approved this procedure for the purpose of judicial economy).  In a recent example of this procedure’s application, Judge Sammartino in the Southern District of California narrowed a set of 112 asserted claims down to only 24.  West View Research, LLC v. BMW of North America, LLC, 2017 WL 606511, *1-2 (Feb. 15, 2017).  As Judge Sammartino noted, this procedure is consistent with, and even more generous than, other district courts applying this same procedure, noting that in one instance a court narrowed 225 asserted claims over 9 patents to only 4 claims per patent in the Central District of California and in another instance 90 claims to only 10 claims in the District of Delaware.  Some Courts are even writing limits on the number of asserted claims directly into their patent local rules.  See, e.g., D. Utah LPR 2.3, 3.1.

Not satisfied with simply limiting the number of asserted claims, Courts continue to innovate on new ways to streamline patent litigation.  Recently, for example, in the Northern District of California, Judge Alsup instituted a novel procedure to pare down a case involving more than 100 claims from 13 patents.  Judge Alsup created a procedure for “pilot summary judgment motions,” where each party was allowed to bring a single motion on the merits of a single claim.  Judge Alsup outlined this pilot procedure in a case management order:

  • The patent owner selects the strongest claim in its case for infringement;
  • The accused infringer selects the strongest claim in its case for non-infringement or invalidity;
  • Each side then moves for summary judgment on its chosen claim to be heard on a normal schedule;
  • The patent owner cannot withdraw its chosen claim after the accused infringer files its motion;
  • The pilot summary judgment procedure does not derail normal discovery deadlines; and
  • The pilot summary judgment procedure serves as a technology tutorial to the Judge.

Judge Alsup’s rationale for this procedure was two-fold.  First, he explained that the resolution of such an early motion could indicate the strength/weaknesses of each case, thereby spurring early resolution of the case.  In addition, even if resolution of the motion is not possible, “this procedure will further serve to educate the undersigned judge about the overall technology at issue.”  Thus, even if summary judgment is found to be not appropriate at an early stage, the Court still benefits from receiving and considering the briefing.

Pursuant to this procedure, both parties cross-moved on a single claim.  Ultimately, Judge Alsup found Comcast did not infringe, noting that “this outcome bodes poorly” for the remainder of the patent owner’s case.  Thus, without delving into months, and perhaps years, of costly discovery, the parties now have at least an initial assessment of the merits of their case.  It remains to be seen how this pilot summary judgment order will apply to the other claims at issue in this case, if at all.  Of course, this order may well force the parties to the negotiating table and the public will never see its effect on the overall case.

What is clear from both these court procedures is that courts are very interested in judicial economy and are actively looking for ways of effectuating this.  A patent holder should be aware of the court’s desire to use these types of procedures, and consider, where possible, presenting a reasonable number of asserted claims at the outset of litigation to prevent the court from forcing a reduction.  If a patent owner feels strongly about the merits of its infringement case and has had the opportunity to reverse engineer or otherwise study the accused products, it may benefit from offering an early summary judgment on infringement.  On the other hand, an accused infringer seeking to conserve resources and/or facing an unwieldly number of claims should be aware of the various tools that courts are willing to implement to manage these cases, and seek the use of such tools where applicable.