As we discussed last week, people sometimes forget that parties can object to even non-dispositive rulings by a magistrate judge under FRCP 72—although I don't know whether that is what happened here.
In Boston Scientific Co. v. Micro-Tech Endoscopy USA, Inc., C.A. No. 18-1869-CFC-CJB (D. Del.), defendants moved to strike plaintiff's infringement contentions for failure to apply the Court's claim construction. The motion was referred to Magistrate Judge Burke, who denied it:
(1) With regard to Defendant's request that Plaintiffs' FICs regarding the term "breakable link... adapted to be broken[,]" be stricken, (D.I. 169 at 2), it is DENIED. The Court did not construe this term, and Defendant has not convinced the Court that Plaintiffs are using the term in a way that necessarily is counter to the District Judge's construction. While the District Judge made clear that the breakable link cannot "break through deformation[,]" . . . the Court is not certain that "plastic deformation that results in fracturing[,]" . . . , is the exact same thing.; (2) With regard to Defendant's request that Plaintiffs' FICs regarding the term "connecting member" be stricken, (D.I. 169 at 2), it is DENIED. The Court is in no position to definitively conclude that Plaintiffs' interpretation of the word "bias" in the District Court's construction is the wrong one, as Defendants ask . . . ; if anything, this sounds like either a further issue for claim construction, or an infringement/non-infringement issue.
Defendants did not object to that order, but exactly 14 days later—the date objections would have been due under FRCP 72(a)–the defendants filed a letter to Judge Connolly, the district judge who had ruled on claim construction, to
respectfully request the Court’s guidance regarding two claim constructions adopted by the Court that we respectfully submit should resolve all infringement claims on two of the three patents in suit . . . .
The five-page letter included detailed drawings and argument about claim construction and the sufficiency of plaintiffs contentions, such as:
Your Honor's construction that the accused component must be "designed to mechanically fail by fracturing" makes clear that fracturing cannot be merely incidental to the deformation of a component, as opposed to the manner in which the component is designed to breach and mechanically fail.
That Plaintiffs' "plastic deformation" infringement theory disregards your Honor's claim construction ruling is made clear by the following SEM micrographs of post-deployment hooks (one from each of the three configurations of the accused products) that Plaintiffs' expert rel[ies] on to show "a component of the device designed to mechanically fail by fracturing at a predetermined tensile load" . . . .
Plaintiff responded by noting all of the ways that this letter is improper under the rules:
- Defendants sought relief without actually objecting to the magistrate judge ruling
- To the extent they seek to re-argue their motion to strike, "Local Rule 7.1.5(b) expressly prohibits motions to reargue rulings made by a Magistrate Judge pursuant to Rule 72."
- Defendants failed to meet-and-confer under LR 7.1.1
- Defendants actually sought reargument of the claim construction order, long after the deadline
- Defendants also sought early summary judgment of non-infringement, without a motion.
In response, Judge Connolly issued a short order striking the letter in its entirety:
Defendants' unsolicited, five−page letter (D.I. 209 ) is STRUCK for failure to comply with, among other things, Rule 72(b)(2) and the Scheduling Order's requirement that any applications to the Court not specifically contemplated in the Order shall be made by written motion. . . . I have not considered the merits of Defendants' letter and have no opinion about whether Plaintiffs' expert has relied on a rejected claim construction or a construction that differs from my claim construction.
He did, however, offer some guidance on his claim construction ruling:
I will note for the parties' consideration that I reread the transcript of the claim construction hearing and that I do not think my claim constructions were ambiguous. I also think I unambiguously rejected certain proposed constructions. If an expert opinion relies on a claim construction that I rejected or that is different from my construction, I will ignore the expert opinion in summary judgment briefing and will not allow the opinion to be presented at trial.
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