United States District Court, W.D. Wisconsin
OPINION AND ORDER
WILLIAM M. CONLEY DISTRICT JUDGE
lawsuit, plaintiff Honeywell International Inc.
(“Honeywell”) alleges that defendant Research
Products Corporation (“RPC”) infringed several of
its patents. Before the court is defendant's motion to
limit the number of asserted claims (dkt. #27), which will be
granted in part and denied in part as set forth below, and
plaintiff's unopposed motion for leave to file an amended
complaint and supplement core substantive concerns (dkt.
#49), which will be granted.
September 21, 2017, Honeywell filed its initial complaint
against RPC for patent infringement. (Compl. (dkt. #1).) The
complaint asserts six utility patents and one design patent,
while asserting infringement of at least 71 asserted claims.
The patents relate to components used in residential zoned
heating, ventilation and air conditioning systems. Five
involve electronic zone control panels and two involve
dampers for the control of air flow. Honeywell filed its
motion to amend its complaint on April 12, 2018, and assert
claims under an eighth patent.
the parties agree the number of asserted claims should
eventually be limited, RPC seeks an order limiting Honeywell
to just 10 asserted patent claims now, while offering to
limit its invalidity defense to 20 prior art references.
(Def.'s Mot. To Limit Claims (dkt. #27) 14.) For its
part, Honeywell asks that its claims not be limited until
after expert discovery has taken place. (Pl.'s Opp. (dkt.
principally contends that Honeywell's receipt of both
RPC's invalidity contentions and documents showing the
operation of the allegedly infringing products should be
sufficient information for Honeywell to limit its claims.
(Def.'s Mot. To Limit Claims (dkt. #27) 15.) RPC also
argues that reducing the number of claim terms will save
“significant time and expense associated with expert
disclosures and reports” and result in “less work
for all liability experts.” (Id. at 16.)
response, Honeywell counters that RPC should provide
infringement discovery and its final, non-infringement and
invalidity contentions as vetted by expert discovery, before
Honeywell is required to limit its claims. (Pl.'s Opp.
(dkt. #31) 3.) Honeywell not only maintains it is unable to
anticipate RPC's positions at this time, but argues that
narrowing the claims terms would not substantially
reduce the number of accused products or patents, meaning the
amount of necessary discovery and depositions would be
largely unaffected. (Id. at 6.) Honeywell finally
observes “RPC's argument that many of the asserted
claims are duplicative contravenes its assertion that the
discovery for those claims would be burdensome.”
(Id. at 6-7.)
order to balance the importance of expert discovery to
narrowing of the claims with the November 1, 2018,
dispositive motion deadline, the court will require
Honeywell to narrow its number of asserted claims by
July 30, 2018, and RPC to narrow its prior art references by
August 20, 2018. With regard to the scope of that narrowing,
the court finds that a limit of 16 claims and 32 prior art
references are appropriate in light of the fact that the
patents are related and the claims significantly overlap.
Moreover, this number appears consistent with similar
limitations approved by the Federal Circuit. See,
e.g., Stamps.com Inc. v. Endicia, Inc., No.
2010-1328, 2011 WL 2417044, at *1 (Fed. Cir. June 15, 2011)
(affirming district court's reduction of asserted claims
from 629 claims of 11 patents to 15); In re Katz
Interactive Call Processing Patent Litig., 639 F.3d
1303, 1312 (Fed. Cir. 2011) (affirming district court
reduction from 1, 975 claims from 31 patents to 16 per
limitation does not appear to implicate Honeywell's due
process rights. See In re Katz, 639 F.3d at 1312
(rejecting due process argument when plaintiff failed
“to demonstrate that some of its unselected claims
presented unique issues as to liability or damages”).
Based on other reductions, the overlapping nature of the
patents and the relatively straightforward nature of the
claims and technology, allowing Honeywell to identify 16
claims seems fair and practical. Still, upon a proper
showing, the court may allow Honeywell to add additional
to supplemental briefing by the parties, altered products may
soon be released that could give rise to similar
claims. As of right now, however, the court is unable to
conclude that the necessity of including more claims is
inevitable. If Honeywell should feel it necessary, it should
make a showing or proffer that its selected claims are not
sufficient to protect its intellectual property rights from
Defendant Research Products Corporation's motion to limit
the number of asserted claims and prior art references (dkt.