District courts have broad discretion in complex litigation to limit asserted claims as long as plaintiffs have an opportunity to have all unique claims adjudicated. And a means-plus-function claim tied to a computer need not disclose a specific algorithm unless the disclosed function requires a special purpose computer.
The patentee initiated litigation against numerous companies in multiple districts. The cases were consolidated. Because of the large number of claims at issue, the court imposed restrictions on the number of patents and claims that could be asserted against all defendants absent a showing of additional claims' uniqueness.
The district court disposed of all asserted claims by granting summary judgment in favor of defendants based on a variety of invalidity and non-infringement issues. The Federal Circuit affirmed in part, vacated in part, and remanded.
The plaintiff challenged the district court's asserted claim restriction on due process grounds. The Federal Circuit affirmed, though, because the plaintiff could have added more claims had it shown they were not duplicative of other asserted claims. The burden of production was properly placed on the plaintiff because it was in the best position to narrow the dispute. The court reaffirmed district courts' "broad discretion" to manage proceedings in complex and multidistrict litigation.
The court also clarified that where a means-plus-function claim's recited function is to be implemented on a general purpose computer, the specification need not disclose a specific algorithm. The court affirmed some and reversed other indefiniteness determinations based on whether the disclosed functions were general or required "programming a general purpose computer to convert it into a special purpose computer capable of performing those specified functions."
In evaluating obviousness, the court noted that a reference may distinguish other prior art without teaching away from combining that reference with the prior art. It further clarified that a finding of obviousness shifted the burden to the plaintiff to prove priority over that prior art by showing the parent application fully disclosed the later claimed invention.
A copy of the opinion can be found here.