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Nov. 16 — A patent holder must choose 40 claims out of nearly 300 from two patents being asserted in an infringement proceeding over MRI technology against GE Healthcare, the U.S. District Court for the Western District of Virginia ruled Nov. 10.
Even 78 claims are too many to be presented to a jury at trial, the court determined. It further directed the parties to settle on 10 claim terms to be construed by the court.
The court rejected arguments from both sides that its decision on claims be done with an eye to any inter partes re-examination proceeding that GE might bring before the Patent Trial and Appeal Board.
The University of Virginia Patent Foundation of Charlottesville, Va., holds two patents related to magnetic resonance imaging on a “method and apparatus for spin-echotrain MR imaging using prescribed signal evolutions” (U.S. Patent Nos. RE44,644 and RE45,725).
General Electric Co. of Fairfield, Conn., is a global conglomerate whose GE Healthcare division produces a wide range of medical devices. The university sued GE Healthcare, alleging that its MRI systems incorporating the “Cube” pulse sequence infringed the '644 patent.
At a scheduling conference, the court noted that the two patents together incorporate nearly 300 claims. GE Healthcare objected to having to defend against so many claims, and sought to have the university limit which claims it was going to assert.
The university eventually asserted 170 claims in a declaration filed with the court, and GE Healthcare again sought claim reduction, seeking to defend a maximum of 16 claims at the claim construction and extrinsic evidence phase of the trial.
The university countered that not all the discovery had been completed, and that claims should not be reduced until after the construction phase.
Both parties argued that the court's decision on reducing claims should assume that GE Healthcare would seek inter partes re-examination of the university's patents at the PTAB.
But the court rejected GE's argument that it should assist the administrative review of the patents by reducing claims—and rejected the university's argument that it should not reduce claims prior because that would amount to tactical assistance to GE before the PTAB.
“An IPR proceeding that invalidates certain patent claims may streamline the issues being litigated in federal district court,” the court said. “Regardless of the salutary effect of this streamlining, it does not follow that a federal court should use its case management authority for the purpose of narrowing claims that may be contested in an entirely separate proceeding. The argument that meaningful IPR is impossible without court-ordered claims reduction ignores the purpose and structure of the procedure.”
While GE has not yet decided whether to seek administrative review of the patents, the court said the university should reduce the number of claims it was asserting at trial, even after it had already agreed to drop the number to 158, with only 78 being relevant for claim construction, because there were duplicate method and apparatus claims.
It is not feasible to take that many claims into the claim construction phase or present them to the jury, the court said. Furthermore, the two patents were closely related and shared many similar claim terms and, according to the court, the patent holder was in the best position to narrow the claims to the most pertinent selection.
The court settled on directing the university to select 25 claims from the '644 patent and 15 claims from the '725 patent, and told the parties to decide on no more than 10 disputed claim terms to be construed by the court.
The court's ruling was issued by Magistrate Judge Joel C. Hoppe.
The University of Virginia was represented by the Law Office of C. Conner Crook III, Charlottesville, Va. GE Healthcare was represented by Reed Smith LLP, Falls Church, Va.
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