Unwired Planet LLC ("Unwired Planet") filed a patent infringement action against Google and it originally identified 124 claims from ten patents as its asserted claims against Google. Unwired subsequently reduced the number of its claims. At the August 20, 2013 case management conference, the parties offered different proposals for further reduction of Unwired's asserted claims as well as reduction of Google's prior art references.
With respect to reducing the prior art references, Google asserted that limitations on its prior art defenses "has the effect of depriving Google of viable defenses to Unwired Planet's claims," but proposed a reduction if the court directed it. Unwired disagreed and proposed its own reductions to Google's prior art references. The district court then ordered 12 references per patent and no more than 40 claims asserted after claim construction and 4 references per patent and no more than 20 references before trial.
Google sought reconsideration of the district court's order and the district court found that it had committed clear error.
In its motion for reconsideration, Google asserted that the district court "committed clear error or that the order is manifestly unjust for three reasons: (1) the order allows Unwired to assert more patent claims than even Unwired asked to assert; (2) the order limits Google to fewer prior art references than even Unwired asked Google to be limited to; and (3) the order allows Google an average of only one prior art reference per patent claim, which is far fewer than Google contends it will need for several reasons, chief among them, that proof of obviousness requires a combination of prior art references."
As explained by the district court, "Unwired initially identified a total of 124 claims from ten patents as its asserted claims in its initial disclosures. In its July 15, 2013 order, the court directed Unwired to reduce its claims to 55, and it did so (#125). However, the parties recognized that 55 claims is too many to be presented at trial, and the next dispute centered on when and to what extent Unwired should reduce its claims after the Markman hearing and before trial. After Markman, Unwired agreed to 30 claims and Google proposed 15. The court allowed Unwired to assert 40, which is more than either party considered reasonable. The parties both agreed that prior to trial, Unwired's asserted claims should be reduced to 15. However, the court allowed Unwired a total of 18 claims to be asserted at trial. Thus, in attempting to navigate through the parties' briefs and the Federal Circuit Advisory Council's proposed order, this court erred and increased the number of Unwired's asserted claims beyond what the parties requested and beyond what is reasonable and manageable for trial."
Accordingly, the district court adopted Google's proposal and ordered Unwired to reduce its asserted claims to 30 after Markman and to 15 before trial.
With respect to the prior art references, "Google acknowledges that notwithstanding its due process concerns, the court intends to impose limits on the number of prior art references Google may raise in its defense. This is correct. However, Google has made a persuasive argument that if the court's order stands, and Google is limited to 40 references to respond to 40 claims just after claim construction, and to 20 references to respond to 18 claims to be asserted before trial, this will have the effect of limiting Google to one reference per claim. As Google explains:
"While it may be the case that Google will be able to use a single reference to demonstrate the invalidity of more than one patent claim, it may not be able to do so. Each claim is supposed to be patentably distinct, and it is not unreasonable to expect that each claim will require proof of separate and distinct prior art to prove that it is obvious. It is true that multiple claims within the same patent will sometimes rise or fall together, when the claims are all dependent on the same independent claim. (Citation omitted). As between claims of different patents, however, there would be no reason to expect that the relevant prior art will overlap - particularly when different patents cover very different technologies, as is largely true of the ten patents at issue in this case. Moreover, there is no guarantee that Unwired will assert multiple claims that share a dependency relationship, and even if it does, there is no guarantee that the validity of such claims will rise or fall together. Also, even as to claims that do rise or fall together, obviousness proof usually requires combinations, as noted earlier, and a limit of one reference per claim will prevent Google from even the opportunity to present such combinations. (#150 at 8:19-28; 9:1-8) (emphasis in the original)."
After reviewing these arguments, the district court disagreed with Unwired that the limitations on prior art were a "fair compromise between the parties' positions at this time" "The number of prior art references that Google will be allowed to raise as part of its invalidity defense is a function of the number of claims that Unwired will be allowed to assert against Google."
The district court then adopted Google's proposal:
"After issuance of the claim construction order, Google may rely on 15 prior art references per independent claim and 18 references per dependent claim; and Prior to trial, Google may rely on 5 references per independent claim and 8 references per dependent claim before trial."
Unwired Planet LLC v. Google Inc., Case No. 3:12-CV-0504-MMD (VPC) (D. Nev. Oct. 10, 2013)