Case 2:22-md-03034-TGB ECF No. 99, PageID.8152 Filed 11/18/22 Page 1 of 10
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`
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`IN RE NEO WIRELESS, LLC
`PATENT LITIGATION
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`2:22-MD-03034-TGB
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`HON. TERRENCE G. BERG
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`
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`OPINION AND ORDER
`GRANTING IN PART AND
`DENYING IN PART
`DEFENDANTS’ MOTION TO
`REDUCE NUMBER OF
`ASSERTED CLAIMS
`(ECF NO. 96)
`
`THIS MEMORANDUM OPINION
`AND ORDER RELATES TO ALL
`CASES
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`
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`The individual cases involved in this MDL matter are for patent
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`infringement brought by Plaintiff Neo Wireless, LLC (“Neo” or
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`“Plaintiff”) against Defendants Ford Motor Company, American Honda
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`Motor Co., Inc., Honda Development & Manufacturing of America, LLC,
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`Volkswagen Group of America, Inc., Volkswagen Group Of America
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`Chattanooga Operations, LLC, Nissan North America, Inc., Nissan
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`Motor Acceptance Corporation a/k/a Nissan Motor Acceptance Company,
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`LLC, Toyota Motor Corporation, Toyota Motor North America, Inc.,
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`Toyota Motor Sales, U.S.A., Inc., Toyota Motor Engineering &
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`Manufacturing North America, Inc., Toyota Motor Credit Corporation,
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`
`
`IN RE NEO WIRELESS, LLC
`PATENT LITIGATION
`
`2:22-MD-03034-TGB
`
`HON. TERRENCE G. BERG
`
`
`
`OPINION AND ORDER
`GRANTING IN PART AND
`DENYING IN PART
`DEFENDANTS’ MOTION TO
`REDUCE NUMBER OF
`ASSERTED CLAIMS
`(ECF NO. 96)
`
`THIS MEMORANDUM OPINION
`AND ORDER RELATES TO ALL
`CASES
`
`
`
`The individual cases involved in this MDL matter are for patent
`
`infringement brought by Plaintiff Neo Wireless, LLC (“Neo” or
`
`“Plaintiff”) against Defendants Ford Motor Company, American Honda
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`Motor Co., Inc., Honda Development & Manufacturing of America, LLC,
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`Volkswagen Group of America, Inc., Volkswagen Group Of America
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`Chattanooga Operations, LLC, Nissan North America, Inc., Nissan
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`Motor Acceptance Corporation a/k/a Nissan Motor Acceptance Company,
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`LLC, Toyota Motor Corporation, Toyota Motor North America, Inc.,
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`Toyota Motor Sales, U.S.A., Inc., Toyota Motor Engineering &
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`Manufacturing North America, Inc., Toyota Motor Credit Corporation,
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`Page 1 of 10
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`Case 2:22-md-03034-TGB ECF No. 99, PageID.8153 Filed 11/18/22 Page 2 of 10
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`General Motors Company, General Motors, LLC, Tesla, Inc., Mercedes-
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`Benz USA, LLC, and FCA US, LLC (collectively “Defendants”). In all
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`nine cases, Neo alleges Defendants infringe six asserted patents related
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`to LTE functionality. “LTE”, which stands for “Long Term Evolution”
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`refers to a technical standard for wireless data transmission.
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`Presently before the Court is Defendants’ motion to reduce the
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`number of asserted claims. The parties submitted written briefs
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`explaining their positions. ECF Nos. 96, 97, 98. For the reasons stated
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`in this opinion and order, the Court will GRANT IN PART and DENY
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`IN PART Defendants’ motion to reduce the number of asserted claims.
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`I.
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`PROCEDURAL HISTORY
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`The Court held a Scheduling Conference on September 16, 2022. At
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`that conference, the parties presented arguments related to reducing the
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`number of asserted claims. The Court denied Defendants’ request to limit
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`the number of claims at that time, but stated that Defendants could raise
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`the issue of claim reduction if it later became an issue. Defendants have
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`raised the issue by the present motion.
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`II. LEGAL STANDARDS
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`District courts have “the power inherent in every court to control
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`the disposition of the causes on its docket with economy of time and effort
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`for itself, for counsel, and for litigants.” Landis v. N. Am. Co., 299 U.S.
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`248, 254 (1936). In the patent infringement context, “and particularly in
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`multidistrict litigation cases, the district court ‘needs to have broad
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`Case 2:22-md-03034-TGB ECF No. 99, PageID.8154 Filed 11/18/22 Page 3 of 10
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`discretion to administer the proceeding.’” In re Katz Interactive Call
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`Processing Patent Litig., 639 F.3d 1303, 1313 (Fed. Cir. 2011) (quoting In
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`re Phenylpropanolamine (PPA) Prods. Liab. Litig., 460 F.3d 1217, 1232
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`(9th Cir. 2006)). This includes limiting the number of patent claims for
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`the sake of judicial economy and management of a court’s docket. Id.;
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`Stamps.com Inc. v. Endicia, Inc., 437 F. App’x 897, 902 (Fed. Cir. 2011)
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`(limiting the plaintiff to 15 claims across 11 patents having at least four
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`different specifications).
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`Further, courts in this district have required plaintiffs to limit the
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`number of asserted claims before claim construction. See, e.g., Gentherm
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`Can., Ltd. v. IGB Auto., Ltd., No. 13-11536, 2016 WL 1170801, at *2 (E.D.
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`Mich. Mar. 25, 2016) (ordering plaintiff to limit the number of claims to
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`no more than 14 claims across 7 patents before claim construction); Joao
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`Control & Monitoring Sys., LLC v. Ford Motor Co., No. 13-13615, 2014
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`WL 645246, at *3 (E.D. Mich. Feb. 19, 2014) (limiting plaintiff to 15
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`claims across 5 patents before claim construction). These cases indicate
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`that limiting the number of asserted claims to one to three claims per
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`patent would be consistent with the approaches of various district courts.
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`III. ARGUMENTS
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`Defendants argue that Neo represented at the Rule 26(f) conference
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`that it plans to assert only a handful of claims at trial. Defendants
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`contend that it makes no sense for the parties and the Court to expend
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`time and resources litigating the construction of claims that will never be
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`Case 2:22-md-03034-TGB ECF No. 99, PageID.8155 Filed 11/18/22 Page 4 of 10
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`tried. Defendants further contend that Neo will use the Court’s claim
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`construction process as a practice run to test the strength of its case, and
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`will abandon the claims if the Court issues unfavorable claim
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`constructions. According to Defendants, Neo should make an initial
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`reduction of its claims to no more than three asserted claims per patent,
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`for a maximum of 18 claims. Defendants argue that this will allow the
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`Court to prepare these cases for trial and focus the parties on the
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`important issues.
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`Neo responds that the parties first broached the prospect of
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`narrowing claims and prior art during the Rule 26(f) conference process.
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`Neo contends that Defendants initially proposed a gradual, multi-staged
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`narrowing framework. Pl’s. Resp., ECF 97, PageID.7848-49 (citing ECF
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`97-2).1 Neo argues that under Defendants’ own proposal, the parties
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`would enter claim construction proceedings with forty asserted claims,
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`and only reduce to twenty total claims after claim construction, near the
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`end of fact discovery. Neo states that it objected to that proposal, but
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`agreed to consider mutual narrowing as the case progressed. However,
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`Neo contends that it is in no better position now than it was in September
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`to adequately assess a narrowing framework.
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`Neo further contends that Defendants’ aggressive narrowing
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`proposal is unworkable. Neo argues that only two of the six asserted
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`1 Citations to the parties’ filings are to the filing’s number in the docket
`(ECF No.) and pin cites are to the PageID numbers assigned by the
`Court’s electronic filing system.
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`Case 2:22-md-03034-TGB ECF No. 99, PageID.8156 Filed 11/18/22 Page 5 of 10
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`patents share a common specification, none contain terminal disclaimers
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`to any other asserted patent, and all six patents cover distinct technology
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`and read on distinct parts of the LTE specifications. Neo further argues
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`that the parties simply do not know all the disputes over infringement
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`and validity, and so could not possibly identify all the unique issues each
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`claim presents.
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`Neo also argues that Defendants did not comply with Local Rule
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`7.1(a) meet and confer requirement before filing the present motion.
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`Finally, Neo contends that it is futile to talk about reducing the scope and
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`burden of the case if Defendants remain free to assert an unbounded
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`number of prior art references throughout the case.
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`Defendants reply that Neo has already previously litigated four of
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`the asserted patents against three other defendants in three other
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`cases—all based on the same infringement contentions it asserts here.
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`Defendants contend that Neo’s infringement contentions are materially
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`identical to the assertions in those cases, and that Neo already has an
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`advanced understanding of its infringement case, the relevant invalidity
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`defenses, and the claims it intends to take to trial.
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`IV. ANALYSIS
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`A. Reduction of Asserted Claims
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`“In determining whether to require parties [to] limit the number of
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`claims asserted, courts look to the number of patents and claims at issue
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`and the feasibility of trying the claims to a jury. Courts should also look
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`Case 2:22-md-03034-TGB ECF No. 99, PageID.8157 Filed 11/18/22 Page 6 of 10
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`to whether the patents at issue have common genealogy, whether the
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`patents contain terminal disclaimers, and whether the asserted claims
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`are duplicative.” Thought, Inc. v. Oracle Corp., No. 12-05601, 2013 WL
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`5587559, at *2 (N.D. Cal. Oct. 10, 2013) (citing In re Katz, 639 F.3d at
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`1311).
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`Defendants provide the following chart summarizing the claims
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`asserted in Neo’s September 28 infringement contentions:
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`Def’s. Mot., ECF No. 96, PageID.2793. Defendants ask the Court to
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`require Neo to reduce the asserted claims to no more than three asserted
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`claims per patent, for a maximum of 18 claims.
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`The Court agrees with Neo that Defendants’ request is overly
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`aggressive and premature at this stage. As indicated in the chart, the
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`minimum number of claims currently asserted for any of the patents is
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`Case 2:22-md-03034-TGB ECF No. 99, PageID.8158 Filed 11/18/22 Page 7 of 10
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`four. Defendants’ request would require Neo to abandon at least some of
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`the currently asserted claims from each asserted patent to reach the
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`three asserted claims per patent. Based on this and a review of the
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`claims in the asserted patents, the Court is not convinced that a limit
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`should be set on a per patent basis at this stage in the litigation.
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`However, the Court agrees with Defendants that it makes no sense for
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`the parties to brief claim constructions and for the Court to expend time
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`and resources construing claims that will never be tried. Accordingly, the
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`Court will limit the total number of asserted claims. Neo can determine
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`how the limit is distributed across the asserted patents.
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`Therefore, in order to secure the just, speedy and inexpensive
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`determination of this action pursuant to Fed. R. Civ. P. 1, the Court
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`ORDERS Neo to reduce the number of asserted claims to thirty-six (36)
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`by November 28, 2022. To ensure there will be no undue prejudice to Neo,
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`the Court will remain flexible if Neo shows good cause for additional
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`claims. See, e.g., Thought, 2013 WL 5587559 at *2 (“Even after requiring
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`parties to limit the number of claims at issue for claim construction or
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`trial, courts should allow patent holders to bring back in non-selected
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`claims upon a showing of ‘good cause’ that the non-selected claims
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`present unique issues of infringement or invalidity.”).
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`B. Limit on Number of Disputed Terms
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`Although every word used in a claim has a meaning, not every word
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`requires a construction. The Court fully expects the parties and their
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`Case 2:22-md-03034-TGB ECF No. 99, PageID.8159 Filed 11/18/22 Page 8 of 10
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`attorneys to limit the terms they submit to those that might be
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`unfamiliar to the jury, confusing to the jury, or affected by the
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`specification or the prosecution history. See United States Surgical Corp.
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`v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction
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`is a matter of resolution of disputed meanings and technical scope, to
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`clarify and when necessary to explain what the patentee covered by the
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`claims, for use in the determination of infringement. It is not an
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`obligatory exercise in redundancy.”). To that end, the Court further
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`ORDERS the parties to file notices electing no more than twenty (20)
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`disputed claim terms for construction, including any terms purported to
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`be indefinite. The parties should prioritize and list the terms in order of
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`most importance; the Court will address the terms in the prioritized order
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`presented in the briefing.
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`Of these 20 terms, Plaintiff is initially allocated ten (10) disputed
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`claim terms, and Defendants collectively are initially allocated ten (10)
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`disputed claim terms. If a side does not use its allocation, then the
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`opposing side may use the balance. To be clear, the Court does not view
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`“plain and ordinary meaning” as a “required” construction. In other
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`words, if a side proposes a construction of “plain and ordinary meaning”
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`for a disputed term, then the term will not count as one of that side’s 10
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`allocated terms. If a party contends that more than 20 terms require
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`construction, the party must seek leave from the Court showing good
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`cause to exceed the limit. The motion shall not exceed 10 pages. The due
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`Page 8 of 10
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`Case 2:22-md-03034-TGB ECF No. 99, PageID.8160 Filed 11/18/22 Page 9 of 10
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`date for the INITIAL IDENTIFICATION OF DISPUTED CLAIM
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`TERMS is changed from December 1, 2020 to December 7, 2022.
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`C. Page Limit for the Claim Construction Briefing
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`The page limit for the Claim Construction briefing is extended to
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`40 pages for Plaintiff’s Opening Claim Construction Briefs, 40 pages for
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`Defendants’ Responsive Claim Construction Brief, and 15 pages for
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`Plaintiff’s Reply Claim Construction Brief. A party must seek leave from
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`the Court showing good cause to exceed these page limits.
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`D. Future Reduction of Asserted Claims and Asserted Prior
`Art
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`The Court ORDERS the parties to meet and confer and propose a
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`schedule by November 30, 2022 for further reducing the asserted claims
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`and asserted prior art with the close of fact discovery and/or the service
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`of expert reports in mind. The Court notes that Defendants represented
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`to the Court that they “remain willing to narrow their prior art to a
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`proportional number of primary references” given that the number of
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`asserted claims will be reduced. Def’s Repl., ECF No. 98, PageID.8091.
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`Case 2:22-md-03034-TGB ECF No. 99, PageID.8161 Filed 11/18/22 Page 10 of 10
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`V. CONCLUSION
`For the reasons stated in this opinion and order, the Court will
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`GRANT IN PART and DENY IN PART Defendants’ motion to reduce
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`the number of asserted claims.
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`IT IS SO ORDERED.
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`Dated: November 18, 2022
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`s/Terrence G. Berg
`TERRENCE G. BERG
`UNITED STATES DISTRICT JUDGE
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