Plaintiff Unwired Planet ("UP") filed a patent infringement action against Apple asserting over 247 claims in ten different patents. Apple filed a motion to limit the number of claims. In the motion, Apple asserted that UP had included approximately 80% of the total number of claims in the patents. Apple asserted that if the claims were not narrowed, then the case would be unmanageable and would unfairly burden Apple.
As justification for its motion, Apple also pointed to the parties' prior litigation history in 2011 at the International Trade Commission. As explained by Apple, UP accused the same products in this case, the iPhone, the iPad and the iPod Touch, in the ITC action. Therefore, Apple assert, UP should know how the products work, what they do, and should have an adequate understanding of the case to narrow the claims. Apple argued that the asserted claims should be reduced to fifty or sixty claims.
UP responded that the case was in its early stages and that requiring the narrowing of the claims at this stage was premature and would be prejudicial. UP also asserted that such a narrowing would violate its due process rights, particularly given that substantive discovery had not yet occurred.
The district court resolved the issue after it had reviewed the joint case management report and the hearing at the case management conference. The district court determined that the claims should be limited and UP could add additional claims based on good cause as necessary. "The court recognizes it must balance UP's fundamental patent rights and the court's need to assist in expediting the case and managing its dockets. This court would have preferred that the parties reach agreement on this issue, but because they cannot, the court must intervene, and it has discretion to do so. The fact that the parties have recently engaged in litigation over the products at issue here weighs in favor of limiting UP's representative claims. Therefore, at this stage in the case, the court finds that UP shall limit its asserted claims to a reasonable number of representative claims, and the court orders that UP shall limit its asserted claims to no more than seventy (70)."
Unwired Planet LLC v. Apple, Inc., Case No. 3:12-cv-00505-RCJ-VPC (D. Nev. April 17, 2013)