Saturday, June 1, 2013

Google says Skyhook's assertion of 98 patent claims makes lawsuit unmanageable

The first filing in a smartphone-related patent lawsuit bearing a June 2013 date was made by Google, which a few minutes after midnight by Eastern Time brought a "motion to require Skyhook to reduce the number of asserted claims and provide adequate infringement contentions" in the parties' federal litigation in the District of Massachusetts. According to the motion, Skyhook "is asserting infringement of 98 patent claims across 13 patents", which Google believes "make this case unmanageable, and it would be impractical to attempt to try to a jury a case involving even a fraction of the claims Skyhook is asserting". Therefore, wants the district court to "require Skyhook to reduce the number of asserted claims to a manageable number, for example a limit of 20 non-duplicative claims, and to provide adequate infringement contentions".

The case actually became so inflated because Google succeeded in getting a second lawsuit by Skyhook, filed in September 2012 in Delaware over nine additional patents, transferred to Massachusetts (where the first such case had been filed two years earlier) and consolidated into the earlier-filed case, resulting in considerable delay (the trial slipped into 2014). Google, like other defendants, wanted a delay. But it also wants to reduce the number of patents it has to defend itself against whenever the case may ultimately go to trial.

Here's Google's motion, which also lists all of the current assertions (this post continues below the document):

13-06-01 Google Motion to Require Skyhook to Narrow Claims

The list of asserted claims includes a total of nine claims from the '245 and '988 patents, which the court declared invalid on summary judgment and which Skyhook is only asserting (Google wants them dismissed anyway) to preserve its rights on appeal and a possible remand. These claims are, therefore, irrelevant to the question of whether the case is triable to a jury: a jury would never have to look at patents the court previously declared invalid.

Google does have a point that some reduction of the number of claims is necessary. I don't think Skyhook ever expected to take all of the asserted claims to trial. Presumably Skyhook wants more clarity on Google's defenses before it drops any patents. That may be the challenge here: determining a course of action that enables narrowing on a reasonably informed basis.

It's unusual for a defendant to bring a formal motion to require such a reduction. Usually the courts take such initiatives. Judges have two kinds of leverage to require U.S. patent plaintiffs to narrow their cases:

  • Under Katz (a decision cited by Google in its motion) they can throw out duplicative claims. Plaintiffs can, however, often demonstrate that claims are non-duplicative.

  • They can tell plaintiffs that there will be further delay unless they cooperate and narrow their cases.

Judges can accelerate the process through summary judgment rulings, some of which result in the immediate removal of patent claims while others at least provide an indication as to which claims are not too likely to succeed at trial.

Google says in its motion that it "intends to file a separate expedited motion seeking relief from the schedule shortly". Again, defendants generally try to delay. I'm sure Skyhook will find a way forward for its case.

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