When the Court orders a patentee to reduce the number of asserted claims—what happens to the ones that are dropped? Are they truly gone, or might they still maintain some sort of cursed half life—banished from the case yet hungering to be asserted anew?
As we've discussed in the past, patentees will often argue that due process requires they be allowed to assert each of their claims, regardless of the Court's case management concerns. Since, however, a patentee maintains only their best claims, the issue typically becomes moot before it prompts an opinion squarely addressing the due-process issue.
Fortunately (for bloggers) the issue came to a head in Vaxcel Int'l Co. Ltd. v. HeathCo LLC, C.A. No. 20-224-LPS, D.I. 122 (D. Del. Feb. 2, 2022). There, Judge Stark had ordered the plaintiff to reduce its asserted claims down to 21 (from 167 initially asserted). Id., D.I. 48. After this narrowing, Judge Stark held several of the remaining claims invalid for indefiniteness. The plaintiff thus sought to replace the invalidated claims with ones that it had previously jettisoned (that allegedly lacked the indefiniteness problem).
Noting that the narrowing order stated that it would be modified only for "good cause," Judge Stark found that it was lacking here, especially in light of the fast approaching close of fact discovery. Id. at 6 ("The Court will not allow Vaxcel to derail this case by reviving the proposed claims in this action.").
Notably, however, the Court declined to close the door on these discarded claims altogether and went on to hold that:
[T]he Court is not of the view that Vaxcel has necessarily lost for all time its ability to assert the proposed claims against HeathCo. See generally In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011) (explaining how claim selection procedures may implicate due process concerns). The Court will grant Vaxcel's alternative request that it be permitted to pursue the proposed claims against HeathCo in another patent infringement action - an alternative Heath Co did not squarely (and certainly not persuasively) address. This grant is without prejudice to HeathCo having the ability to raise its concerns in the context of any such separate action. That is, any disputes about matters such as preclusion or the applicability of this Court's claim construction will be resolved, if necessary, in the context of the separate action.
Id. at 6-7.
Unfortunately, it looks like we may have to wait until the plaintiff brings that new action to affirmatively resolve the due process issues, but for now its a hopeful sign and a good cite for patentees facing case-narrowing.
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