Patent holders bringing infringement suits sometimes unnecessarily assert that a competitor infringes an unreasonable number of patent claims. Courts have the authority and discretion to reasonably limit the number of asserted claims in order to combat potential abuse. When that reduction should occur is less certain.

This question was recently before Magistrate Judge Noel on a motion to compel the reduction of claims in a case where the patentee is asserting more than 100 claims. Magistrate Judge Noel noted that the Federal Circuit has not provided clear instruction regarding the timing of such action. After discussing a few relevant cases, Magistrate Judge Noel indicated that claim reduction should occur after the accused infringer serves its invalidity and non-infringement contentions, but noted that after claim construction was too late. He also pointed out that most courts that have ordered the reduction of asserted claims have required the patentee to do sobefore claim construction.

Magistrate Judge Noel recommended that the motion to compel be denied without prejudice because it was premature. He instructed the parties to meet and confer to come to an agreement regarding the patentee’s deadline to reduce its claims. If the parties are unable to reach an agreement, they are required to submit their respective proposals to the Court to decide the timing of claim reduction.

While Magistrate Judge Noel provided a window during which claim reduction should occur, it is still unclear whether the reduction should be required prior to claim construction. Stay tuned to see if this District issues more definitive guidance regarding the deadline by which a patentee must reduce its asserted claims to a reasonable number.

Read Magistrate Judge Noel’s decision here.