In the recently-decided case of In re Katz Interactive Call Processing Patent Litigation, the Court of Appeals for the Federal Circuit (which hears all appeals of patent cases) determined that trial courts may limit the number of patent claims that may be asserted by a patent owner in a litigation, regardless of the complexity of the invention or the number of defendants who allegedly infringe the patent. This decision is yet-another example of the unwillingness of the Courts to take on the often-intricate issues involved in patent enforcement litigation.
The Katz case involved 25 cases filed against 165 defendants, and 31 patents covering call processing systems that are commonly used by companies operating customer service call centers. The 31 patents contained a total of 1,975 claims. (The number of claims per patent was much larger than average, but the courts have previously ruled that there is no limit on the number of claims that an inventor may file, as long as the fees are paid to the Patent Office.)
The trial court, citing a need to efficiently manage the combined multidistrict litigation, ruled that Katz had to limit his case to 64 of his claims, and Katz appealed the ruling, claiming that the court had denied him due process and deprived him of property rights (by not allowing him to enforce his other claims.) Katz knew that claims not asserted could not be enforced later because of other rules.
The Court of Appeals ruled against Katz, stating that Katz, “has failed to demonstrate that the allocation of burdens in the claim selection procedure adopted by the district court unfairly prejudiced it by creating a significant risk that Katz would be erroneously deprived of property rights in unselected claims.” The Court said that because some claims were duplicative of others, Katz had to identify those claims that raised separate legal issues. This ruling seems to conflict with prior decisions that state that separate issued claims are presumed to differ from each other.
While there may be simple procedural explanations for the Katz decision, inventors and patent owners should beware that having a large number of claims that cover a complex invention may cause judges to run for cover, rather than to impartially preside over an attempt to enforce the patent in litigation.
–Lawrence A. Husick, Esq.