Later assertion of non-elected claims not precluded by elected claims, Folsom says

Anthoula Pomrening Oct. 26, 2010, 9:00am

In LML Patent Corp. v. JP Morgan Chase & Co. et al(Case No. 2:08-cv-00448), Judge David Folsom of the Eastern District of Texas Marshall Division has granted LML's Motion to Sever and Stay, although in a slightly modified form.

For case management reasons, the court required the LML to elect no more than 10 asserted patent claims.

In its Motion to Sever and Stay, the plaintiff requested "that the Court sever all claims, defenses, and counterclaims related to the claims of the '220 Patent that are not Elected Claims and stay the severed action until final resolution of the pending Action."

The court noted that limiting the number of asserted patent claims was "necessary for effective and efficient management" of the case, and a "universally recognized" practice.

"If the patentee wins, infringement of a single claim can support an award of damages, so the patentee generally need not then pursue non-elected claims," Folsom wrote. "If the patentee loses, then the likelihood of any subsequent litigation is low because the patentee presumably elected the claims that 'they believe are most likely to be infringed.'"

The defendant argued that severing and staying the remaining claims would violate "the most basic of civil procedure tenets that a plaintiff cannot split a cause of action."

In addition, they argued the defendant waived any right to seek severance because it did not challenge the court's order to elect a number of claims, and that allowing repeated assertion of various claims of an asserted patent "would defeat the efficiency objectives of the claim election requirement."

Folsom rejected the defendants' estoppel arguments since it found no support for them under Fifth Circuit or Federal Circuit law. This conclusion was necessary, reasoned the court, to avoid a "significant" due process violation, namely the foreclosure of the plaintiff's rights with respect to the nonelected claims without reaching their merits.

A positive result of this decision is that, by complying with a court's scheduling order to elect a number of asserted patent claims, patentees will not be precluded from asserting the nonelected claims in a later action.

Anthoula Pomrening is a partner with McDonnell Boehnen Hulbert & Berghoff LLP in Chicago, Ill. She has experience in all areas of patent and trademark practice. She can be contacted at (312)935-2366 (direct) or

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