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Eastern District of Texas Limits Plaintiff to 40 Claims Across 10 Patents But Orders Dell to Respond to Interrogatory Seeking Non-Infringement Contentions Prior to Claim Construction

Plaintiff, Round Rock Research (“Round Rock”), filed a motion to compel non-infringement contentions from Defendant Dell (“Dell”) and Dell moved to limit the number of asserted complaints brought by plaintiff. Round Rock asserted ten patents against 125 products of Dell and Dell contended that Round Rock had asserted approximately 82 claims from the ten patents-at-issue. As a result, Dell asserted that the large number of claims was unmanageable for claim construction, fact discovery, expert reports, depositions and trial.

In considering Round Rock’s motion to compel non-infringement contentions, the district court noted that the plaintiff requested a response to its interrogatory seeking Dell’s non-infringement contentions. In response, Dell asserted that the interrogatory was prematurely seeking its position on claim construction and that the interrogatory was unduly burdensome and unreasonable given the number of claims asserted by Round Rock.

The district court disagreed with Dell’s position. “Plaintiff’s request is not designed to elicit Defendant’s claim construction position, and is attempting to specifically determine defendant’s non-infringement contentions.”

Turning to Dell’s motion to limit the number of the assert patent claims, the district court noted that it may limit the number of plaintiff’s claims prior to claim construction under relevant Federal Circuit law. The district court then concluded that imposing such limits in this case was appropriate as well. “The Court finds that limiting the amount of claims asserted by Plaintiff is appropriate at this time to aid in efficiency and narrowing the claims prior to claim construction. Therefore, the Plaintiff should reduce the number of asserted claims to forty (40) total claims across all ten (10) patents-at-issue in this case. Plaintiff may move the Court to add additional claims that present a distinct issue of infringement or invalidity upon a showing of good cause.”

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Depending on the number of patents at issue in a particular case, district courts have become more and more willing to limit the number of claims that a given plaintiff can assert. This obviously increases efficiency for the parties and the court in the short run, but may make for lengthier proceedings if a plaintiff is able to show good cause for why it should be permitted to assert additional claims in a second round or second trial.

Round Rock Research, LLC v. Dell Inc., Case No. 4:11-CV-332 (E.D. Tex. March 26, 2012)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or