Sunday, March 30, 2008

271 Blog On Vacation

Although I have been remiss in keeping everyone posted, the 271 Blog has been off on vacation for the last week. I anticipate being back on Wednesday, and will resume posting shortly thereafter. See you soon!

- Peter

Wednesday, March 19, 2008

CAFC Chides Counsel, Court, On Claim Construction Conduct

LSI Industries, Inc. v. ImagePoint, Inc., (2007-1292), March 19, 2008

In this nonprecedential case, the CAFC reversed almost every disputed claim term construed by the district court which was the basis for summary judgment of noningfringement. During litigation, the district court openly admitted it was in over its head with the patent case, and reached out to counsel for guidance. Apparently, that's not what it got in return:

At the claim construction hearing, the district court judge communicated his lack of familiarity with patent law . . . (“I get a patent case about every three years. In the 27 years, I’ve only had about five of them. And this seems to be the most complex so far.”), and repeatedly requested guidance from counsel on both sides on how to construe the claims. The record reveals that counsel made little effort to simplify the case, but instead presented the district court with a firestorm of issues and arguments, fueled by the voluminous reexamination record and an aggressive use of statements in that record to support multiple contentions that subject matter was disavowed. In the end, counsel for LSI was successful in persuading the district court to adopt constructions for each of the disputed terms that, in most instances, inappropriately imported limitations from the specifications and prosecution histories into the claims. The victory was short-lived, however, and warrants our reemphasizing that an attorney has a duty not only to zealously advocate on behalf of his client, but also to aid the court in the fair and efficient administration of justice. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356 (Fed. Cir. 2002) (“Counsel must remember that they are not only advocates for their clients; they are also officers of the court and are expected to assist the court in the administration of justice, particularly in difficult cases involving complex issues of law and technology.”).
The district court didn't get off much easier:
The district court also has an obligation, despite any obfuscation or lack of assistance of counsel, to carefully consider, and independently decide, the issues in the case. Following the claim construction hearing, the district court adopted LSI’s proposed findings of fact and conclusions of law verbatim . . . While this practice is not prohibited, it is frowned upon because, in situations such as these, it gives the impression that there was insufficient independent evaluation of the parties’ arguments and evidence.


Tuesday, March 18, 2008

PTO Budget Amendment Approved

From the Congressional Daily (link):

The Senate unanimously approved last week an amendment to the fiscal 2009 budget resolution condemning the diversion of funds from the Patent and Trademark Office.

When PTO funds are diverted for other purposes, the office's examiners cannot approve patents as quickly and that hinders the economic benefits these innovations could potentially bring, according to Sen. Orrin Hatch, R-Utah, who sponsored the language.

"Considering the value of our nation's intellectual property and its contribution to building a strong and vibrant economy, it is incomprehensible to siphon these funds away from their intended use, especially during these trying economic times," said Hatch, a cosponsor of a pending bill that would overhaul the U.S. patent system.

The Senate plans to debate and vote on that legislation when it returns from the two-week spring recess.

Gor Blimey! Software Patent Rejection Gets Pipped at the Post (UK-IPO)

Lest anyone think the USPTO is the only office having issues with patentable subject matter, the UK-IPO is now in full-fledged "struggle" mode trying to conform the Office's policy on software patents with that of the EPO.

The UK Patents Act is aligned with the European Patent Convention (EPC). Among other things, the Act states that patents are not available for computer programs as such. Accordingly, patent protection is typically denied for applications that are solely computer programs, such as an improved word processing program.

In the case of Symbian's Patent Application, the UK-IPO rejected an application directed to dynamic link library (DLL) access algorithms because it related to "nothing more than a computer program" (read the decision here).

Today, the UK-IPO issued a press release announcing that the High Court overturned the rejection. While the decision hasn't formally published, it's big news for software developers in the UK, who have wondered recently whether improvements in computer technology would ever be patentable in the UK if they didn't involve novel hardware elements.

The High Court has picked up on this as well. Recently, Justice Kitchin in Aerotel/Macrossan, stated the following to the UK-IPO:

The question I must now consider is whether the decision prohibits the patenting of all computer programs and, in particular, those which under the old approach would have been considered to make a conventional computer operate in a new way so as to deliver a relevant technical contribution . . . UK-IPO has apparently concluded that it does and so has reverted to its previous practice of rejecting all computer program claims . . . I do not detect anything in the reasoning of the Court of Appeal which suggests that all computer programs are necessarily excluded
It is presumed that similar reasoning exists in the soon-to-be-published Symbian decision. Additionally, and perhaps more importantly, it appears that UK-IPO's handling of software patents conflicts with EPO practice. From the UK-IPO press release:
[The opinion] observes that the UK-IPO's decision in this case illustrates the divide which exists between the UK-IPO and the European Patent Office (EPO) about how the patentability of inventions involving computer programs is assessed. This is because although the UK-IPO refused Symbian’s patent application, the EPO has granted Symbian a patent for its invention.

Not daunted on the reversal, the UK-IPO vows to fight on:

The UK-IPO believes that when deciding whether this computer implemented invention is patentable, Mr Justice Patten did not apply the so-called "Aerotel/Macrossan test", which was established by the Court of Appeal in an earlier case, in the way intended by the Court of Appeal. This in UK-IPO's view has created uncertainty about how the Aerotel/Macrossan test should be applied for inventions of this type.

The UK-IPO will therefore appeal this judgment with a view to seeking clarification from the Court of Appeal. Pending a decision by the Court of Appeal, the UK-IPO will be continuing to follow the practice, set out in its Practice Notices issued in November 2006 and February 2008, which are founded on the established Aerotel /Macrossan test. When applying this test, the UK-IPO will take account of the Symbian judgment in appropriate cases.

Read the press release here.

P.S., in case you're wondering about the "Aerotel/Macrossan test", it's basically a four-step process for determining patentable subject matter. The adjudicator must:
  • Properly construe the claim;
  • Identify the actual contribution;
  • Ask whether the contribution falls solely within excluded subject matter; and
  • Check whether the contribution is technical in nature.

Monday, March 17, 2008

The Latest From Delaware

The good people at the Delaware IP Law Blog have picked up steam after a quiet February and are back with some great posts. Last week, there was the interesting observation that, as a per cent of the civil case load, Delaware outranks the E.D. Texas and E.D. Virginia:

In 2007, IP plaintiffs filed 181 cases, 30 more than in 2006. These 2007 IP cases (patent, trademark, and copyright) filled nearly 20 percent of the District of Delaware’s entire civil docket. To put the number of IP cases our judges handled in perspective, consider that in all of last year, the Court received only 46 non-IP tort complaints. Of all civil categories, only prisoner petitions exceeded IP filings, and not by much: 202 to 181.

By comparison, the Eastern District of Texas’s 338 IP cases filed in the twelve-month period ending March 2007 (the latest stats available) represented 11 percent of its civil docket. The 144 IP cases filed in the Eastern District of Virginia in the same period comprised only 4 percent of that Court’s civil filings.

Coupled with a low reversal rate, Delaware is indeed a good place to be. While the “rocket dockets” shift in and out of favor (see IP Law 360’s recent take on this development), Delaware will continue business as usual.

See full post here.

Also, there was a noteworthy case in Siemens Medical Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics Inc., C.A. No. 07-190-SLR (D. Del. March 7, 2008), where the patentee/licensor apportioned the right to sue by requiring the licensee to notify the licensor of any 3rd party infringement. If the licensor did not file suit within 90 days, the licensee would be free to initiate its own action against the 3rd party. According to the court, such an arrangement did not convey "all substantive rights" to a licensee:
While the license clearly gives [licensor] the exclusive right to sue during the first 90-day period, there is no specific, reciprocal language giving [licensee] the exclusive right to sue after the first 90-day period.
As such, the licensee had no standing to sue (at least until the licensor is joined). See the full post here.

Friday, March 14, 2008

Latest Ex Parte Reexamination Statistics from the PTO

The latest statistics on Ex Parte Reexamination (through December 2007) have been released by the PTO. As expected, the number of reexamination requests continue to climb:

2002 - 272 filings
2003 - 392 filings
2004 - 441 filings
2005 - 524 filings
2006 - 511 filings
2007 - 643 filings
2008 - 165 filings
The success rate for requestors has not changed, and continues to favor requestors. Overall, all claims are confirmed in 26% of reexams, claims are changed in 64% of reexams, and 10% of reexams result in all claims being cancelled.

Average pendency of an ex parte reexamination is 2 years, and median pendency is just over a year-and-a-half (18.6 months).

Read/download PTO Ex Parte Reexamination statistics here (link)

Latest Amendments to S.1145

The Senate has released the latest amendments to the Patent Reform Act in advance of Senate Floor Debate:

Interlocutory appeals: limits interlocutory appeals of claim construction orders to those which the district court determines have a reasonable basis for disagreement, and the appeal may advance the ultimate termination of the litigation;

Best Mode amendment
: best mode would be considered for obtaining a patent, but not for invalidating;

Reexamination amendment: restores third-party reexamination;

The "CAFC Telework" amendment: ensures that CAFC judges that do not reside within a 50-mile radius of Washington DC use chambers of an existing courthouse in the district where they reside.

Derivation proceedings amendment: clarifying procedures relating to derivation proceedings (which will "replace" interference practice when it is gone);

Interference appeals amendment
: allow CAFC to hear BPAI interference decisions commenced prior to the effective date of the act;

Marking provision amendment: deletes marking provision and maintains current law;

In re Seagate amendment
: codifies the "objective recklessness" standard;

Post-grant review amendment #1
: corrects inconsistency between section 337 (1) and (2) by disqualifying post-grant reviews where issues were raised (or could have been raised) in the litigation;

Post-grant review amendment #2: defines "final decision" for estoppel purposes.

More amendments are expected to follow in the coming weeks.

Thursday, March 13, 2008

PWC Releases 2008 Patent Damages Study

Aron Levko, together with Vincent Torres and Joseph Teelucksingh have released the 2008 PricewaterhouseCooper Patent Litigation Study, and it appears from the study that previous trends in patent litigation have continued into this year. Specifically, the study found that:

• The annual median damages award since 1995 has remained fairly consistent, when adjusted for inflation.

• Reasonable royalties continue to be the predominant measure of damages awards.

• Certain federal district courts (particularly Virginia Eastern, California Central, and Pennsylvania Eastern) continue to be more favorable to patent holders, with shorter time-to-trial, higher success rates, and higher median damages awards.
There are some new trends being followed as well:

• The disparity between jury and bench awards has widened and is likely the contributing factor in the significant increase in use of juries since 1995.

• Alleged infringers increase their trial success rates slightly as plaintiffs, but have not experienced the same increased success in summary judgments.

• While the median time-to-trial has remained fairly constant since 1995, significant variations arise by jurisdiction, and patent holder success rates tend to decrease with longer time-to-trial, up to a point.
Overall, the study found that patent holders have been successful 37% of the time overall, with a 19% win rate in summary judgments and a 57% win rate at trial. 32% of summary judgments are appealed, with 59% modified or reversed; while 43% of trial decisions are appealed, with 67% modified or reversed.

Interestingly, with the alleged "explosion" in patent litigation, there were no identifiable increases in time-to-trial. In fact, since 2005, the median time-to-trial has dropped by more than 6 months.

Regarding the "Top Ten" Rocket Dockets, the breakdown is as follows, along with the median time-to-trial (in years):
1) ED Virginia - 0.88
2) WD Wisconsin - 0.91
3) CD California - 1.71
4) MD Florida - 1.71
5) ED Texas - 1.79
6) Delaware - 1.89
6) Kansas - 1.89
8) ED Pennsylvania - 1.91
9) SD Texas - 1.99
10) ED Michigan - 2.03
Some notable "Crawler" dockets include Massachusetts (3.76 years) and Connecticut (4.66 years).

The "Top Five" patent-friendly jurisdictions, along with overall success rates, include:

1) MD Florida - 66.7%

2) ED Texas - 54.6%

3) CD California - 51%

4) ED Virginia - 50%

5) WD Wisconsin - 50%

The "Bottom Five" jurisdictions for patentees, along with overall success rates, include:

1) Connecticut - 15.8%

2) ED Michigan - 18.5%

3) SD Florida - 25%

4) SD New York - 30.6%

5) ND California - 33%

The "Top Five" districts with the highest appeal rates, along with their affirmance and modified decision/reversal rates are:

1) Massachusetts - 46% appealed (36% affirmed, 64% modified/reversed)

2) ND California - 42% appealed (38% affirmed, 62% modified/reversed)

3) ND Illinois - 41% appealed (29% affirmed, 71% modified/reversed)

4) Delaware - 35% appealed (54% affirmed, 46% modified/reversed)

5) SD New York - 34% appealed (36% affirmed, 64% modified/reversed)

There is much more information in the study - MediaFire is down right now, but I will post a copy of the report later this morning.

In the meantime, if you want additional information, email Aron Levko at

UPDATE 1: MediaFire is still down - as soon as it comes back, I will post the study.

UPDATE 2: View/download the report here (link)

Wednesday, March 12, 2008

Patent Troll Tracker Litigation Update

Joe Mullin, reporter at IP Law & Business magazine and author of the Prior Art Blog has some additional information on the Ward/Albritton lawsuit against Frenkel and Cisco (see 271 Blog post below). As many have noticed already, the Ward complaint "making the rounds" is an amended complaint. According to the the case docket in Gregg County District Court (link), the case was originally filed as John Ward, Jr. v. John Doe et al. on Nov. 7, 2007, and it is presumed that the complaint was filed with the notion of deposing someone at Google, who oversees the sevice used by Frenkel.

Since filing the complaint, the timelines are as follows:

Jan. 24: Petition to depose granted.

Feb. 23: Troll Tracker is revealed to be Rick Frenkel, an IP director at Cisco Systems.

Feb. 27: Ward Jr. filed an amended complaint claiming defamation against Cisco and Frenkel.

March 3: Eric Albritton files a separate complaint against Cisco and Frenkel.

This is going to be an interesting case to watch. According to Joe, there appear to be some discrepancies in the Troll Tracker posts that are alleged to contain the defamatory statements. The original post-in-question was changed by Frenkel after receiving additional information from a reader. Frenkel acknowledged those changes when they were made. However, only the original post was submitted to the court. Read Joe's post in its entirety here.

Also, as noted by Dennis at Patently-O, the PACER filing information still reflected that the case had been originally filed on the 15th, but the PACER complaint filing date now indicated October 16 (see here and here).

Tuesday, March 11, 2008


"I am altering the deal. Pray I don't alter it any further"

- Darth Vader, Empire Strikes Back (1980)

John Ward v. Cisco Systems, Inc. (2007-2502-A), 188th District, Gregg County Texas

On February 27, John Ward filed a complaint in district court alleging defamation against Richard Frenkel (aka the Patent Troll Tracker) and Cisco. According to the complaint:
On or about October 18, 2007 Defendant Frenkel made statements to the effect that Plaintiff had conspired with others to alter the filing date on a civil complaint that Plaintiff filed on behalf of Plaintiff's client in Federal Court in the Eastern District of Texas, Marshall Division. Defendant alleged that Plaintiff had engaged in this felonious activity in order to create subject matter jurisdiction against the defendant named in the civil complaint. The defendant in the civil complaint was Cisco Systems, Inc., which also happened to be Defendant Frenkel's employer.

* * *

As a direct and proximate result of Defendant Frenkel's false and defamatory statements, the Plaintiff has endured shame, embarrassment, humiliation, and mental pain and anguish. Additionally, the Plaintiff has and will in the future be seriously injured in his business reputation, good name, and standing in the community, and will be exposed to the hatred, contempt, and ridicule of the public in general as well as of his business associates, clients, friends, and relatives. Consequently, the Plaintiff seeks actual damages in a sum within the jurisdictional limits of this Court.
Read/download a copy of the complaint here (link)

Reports are starting to come in from the blogosphere:

- The Prior art Blog (link)

- Robert Ambrogi (link)

- Legal Pad (Cal Law) (link)

- Legal Satyricon (link)

UPDATE: The 271 Blog received the following statement from Cisco:

"The parties have mutually agreed to make no comment on the lawsuit in question at this time. That said, we would like to underscore that the comments made in the employee's personal blog represented his own opinions and several of his comments are not consistent with Cisco's views. We continue to have high regard for the judiciary of the Eastern District of Texas and confidence in the integrity of its judges."

Monday, March 10, 2008

PTO Publishes Impact Analysis on "Alternative Claim Language" Proposal

Examination of Patent Applications That Include Claims Containing Alternative Language (RIN 0651–AC00), March 10, 2007

In August 0f 2007, the PTO issued a notice stating that Markush-type claiming and other alternative claiming formats were being restricted for practice before the PTO:

The Office is proposing to revise the rules of practice pertaining to any claim using alternative language because patent applicants sometimes use Markush or other alternative format to claim two or more independent and distinct inventions and/or to recite hundreds, if not thousands, of alternative embodiments in one claim. Such claims are confusing, difficult to understand, and frequently border on being unmanageable. Proper search of such complex claims, particularly those using Markush language, often consume a disproportionate amount of Office resources as compared to other types of claims. The prosecution of these complex claims likewise often requires separate examination and patentability determinations for each of the alternatives within the claim . . . the variety and frequency of alternatives recited in claims filed in applications pending before the Office, driven in part by trends in
emerging technologies, have exacerbated problems with pendency.
In light of comments recently received by the PTO, a study was conducted to see how the proposed rule would impact small entities, which are also affected by the proposed rule change.

The PTO estimated that 21.9% of all applications from small entities contain alternative language in the claims. Broken down by technology, 43.4% of biotech and chemical small entities use alternative language, with electrical/mechanical coming in at 15.8%.

Since each claim under the proposed rules must be limited to a single invention, claims with alternatives will require a new format similar to the PCT Guideline, i.e., requiring that the number and presentation of alternatives in the claim not make the claim difficult to construe, and requiring that each alternative within a list of alternatives must be substitutable one for another.
After conducting its analysis "the Office believes that an applicant would need to file at most approximately seven divisional applications following an examiner’s restriction requirement, even if more were needed to seek patent protection for the full scope of the originally claimed inventions."

Comments on the proposed rule changes in the Alternative Claims Notice of Proposed Rule Making should be addressed to

Read the Notice, which contains additional statistical analysis here (link).

Sunday, March 09, 2008

CPF Ups the Ante on Patent Reform, Spells Out Damage Apportionment

On March 5, the Coalition for Patent Fairness (CPF) issued a letter to Senators Leahy, Specter and Hatch proclaiming that, not only is damage apportionment necessary, apportionment considerations need to be codified to provide a template for judges to instruct juries:

A serious and continuing problem in the calculation of a reasonable royalty is the lack of adequate jury instruction. Juries are not given enough guidance and are too often left to sift through facts and factors without clear guidance on which of the many factors presented are relevant. As a result, judges have been compelled to either take the difficult step of vacating the jury’s award, with the resulting disruptions and inefficiencies, or let the unfair verdict stand. To address these concerns, and based on the work conducted through consultations hosted by Senator Specter, we suggest adding a substantially clarified role for judges.

Much discussion in Senator Specter’s process has focused on whether the judge is compelled to direct the jury to apply a single method to calculating a reasonable royalty. We understand this concern, and our suggestion provides the judge the clear discretion to put before the jury a single method, or more than one method, in the interest of justice.

Much discussion has also focused on whether the changes made by the bill should be limited to just a clarified role for judges as gatekeepers. We believe that a clarified “gatekeeping” role for judges is a necessary but not sufficient element of the bill. We believe it is indispensable for the bill also to provide judges with the legal guidance on how a reasonable royalty is to be calculated. Without this guidance judges would be left with a mandate to apply the law and instruct juries, but without the guidance on the legal principles needed to fulfill that mandate. Such a situation would be akin to requiring persons to take a road test to obtain a driver’s license, while leaving the DMV examiner without guidance on the skills the applicant must demonstrate, or requiring a referee at a basketball game to officiate without a rulebook.
Specifically, CPF proposes a statutory analysis "to ensure that a reasonable royalty is determined on the basis of the portion of the economic value of the infringing product … that is properly attributable to the infringer’s use of the elements of the invention that were novel and nonobvious … and shall permit the jury to hear only evidence relating to that economic value.”

The CPF has also provided a mark-up of the proposed statutory language in the attached document. As Hal Wegner noted this weekend, "[t]he Business Software Alliance (BSA) has now thrown what must be considered the ultimate bomb to blow up any realistic chance of compromise [for the Patent Reform Act]."

Read/download the letter, along with supporting documents here (link)

Thursday, March 06, 2008

USPTO: The Toughest Place to Get a Patent?

Earlier, the 271 Blog reported on USPTO Commissioner Dudas' testimony before Congress (link), where he commented that the allowance rate for applications has dropped to 44%. As recently as November 2007, the USPTO indicated that allowance rates were at 51% (link).

Of course, this comment sent people scrambling to find out what's going on. The good people at Intellectual Asset Management Magazine (IAM), and particulary Joff Wild, decided to dig deeper and contacted Dudas. Here's what Dudas said:

At the USPTO, our objective measurements tell us that patents today are of a higher quality than they were 10, or even 5 years ago. In 2006 and 2007, the USPTO had its lowest examination error rates in the last quarter century--which is mainly due to adding significant new quality measures in recent years. By every objective measurement —including end-of-process and in-process reviews, certification and recertification of examiners, and percentage of affirmances at the Board of Patent Appeals and Interferences — we’ve determined the quality of patents granted has been improving, and we expect this to continue because of current and future quality initiatives. A major concern we have at the USPTO--and it is a concern I have heard from many IP offices around the world--is the room for improvement in applications coming through our door. There has been a dramatic decrease in the allowance rate, or the percentage of patent applications that ultimately get approved. Our allowance rate has dropped from 72 percent in 2000, to 44 percent in the first quarter this year. This is due partly to our quality initiatives, but much is due to the lack of quality in many applications we receive.

In other words, the PTO is retroactively accusing applicants, who filed between 2003-05, of producing "low quality" applications that forced the rejections by the PTO. Dudas is partly right. Few would deny that certain practices used 5-6 years ago would be ineffective today. If your prosecution "ammo chest" hasn't changed stock since 1996, you shouldn't be surprised if dramatically fewer applications are being allowed.

But, again, the concern here is that the PTO is implicitly equating patent "quality" with the number of rejections issued by the examining corps. This, in and of itself, is not a tenable policy. At 44%, the USPTO acceptance rate is now well below the last annual rate reported by both the EPO (56% in 2006) and the JPO (48.5% in 2006).

In the upcoming issue of IAM, the magazine will look at the controversial subject of "patent quality:" what does it mean, how can it be identified, is it possible to measure? Contibutors to the article will include Jon Dudas, Alison Brimelow, president of the EPO; Judge Pauline Newman, of the US Federal Circuit; Masanobu Katoh, head of IP at Fujitsu; Horacio Gutierrez, VP of licensing at Microsoft; and Sherry Knowles, head of IP at GlaxoSmithKline. The article is scheduled to be published at the end of March.

See IAM Blog: "Patent quality and the plummeting USPTO approval rate" (link).

Wednesday, March 05, 2008

W.D. Wis.: "A Few Examples" Of Allegedly Infringing Products is Insufficient Notice

Taurus IP, LLC v. Ford Motor Company, Western District of Wisconsin, Case 3:07-cv-481, February 4, 2008

Taurus launched a patent infringement suit against 3 car companies, alleging infringement of their patent relating to a computer system for managing sales information. The complaint alleged that the defendants were infringing the patent by

[M]aking, using, offering products for sale, and/or selling products and/or services including, without limitation, products that are available for configuration at [list of 6 public websites] and, upon information and belief, internal websites and dealer portals.
Defendants objected to the vagueness of the allegations, noting that the complaint “provides little specificity as to which products or services available at the identified websites are accused of infringement” and “provides no specificity or guidance as to which internal websites and dealer portals” are accused of infringement. As such, they requested that plaintiffs provide a statement including either (1) a list of allegedly infringing products or (2) plaintiff’s working criteria by which it believes defendants’ products are infringing.

Looking at the websites, the court noted that they "contain links to thousands of products, parts, services and other websites that contain many more links." Finding that the complaint only gave "clues" or "examples" of potentially infringing products, the court found that such pleadings were insufficient to satisfy the notice provisions of Fed. R. Civ. P. 8 and 12(e) :
By listing some examples of allegedly infringing products and specifying the patent alleged to be infringed, plaintiff has given some clues to defendants as to the scope of its claim. But plaintiff must do more than give clues to meet even the broad Rule 8 notice requirements . . . “[i]n the context of alleged patent infringement, [notice] means at least that the plaintiff must tell the defendant which products allegedly infringe the plaintiff’s patent. Failing to identify the infringing product in a patent case is akin to failing to identify the retaliatory action in a civil rights case.” . . . Moreover . . . a party’s failure to specify which claims of a patent allegedly infringe may run up against the same notice problems . . . At the very least, a plaintiff’s failure to specify which claims it believes are infringed by a defendant’s products places an undue burden on the defendant, who must wade through all the claims in a patent and determine which claims might apply to its products to give a complete response. A plaintiff’s failure to specify patent claims hinders the defendant’s ability to prepare a defense.
The court concluded:

To the extent further infringed claims or accused products are identified during discovery, plaintiff is expected to amend the original complaint to specify each claim and each accused device by the deadline for submitting amended complaints. Plaintiff will not be allowed to assert a claim or accuse a device that is not specifically identified in the pleadings.

Read download the opinion here (link)

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