As discussed in a previous post, Judge Noreika now requires that Markman briefing occur after the exchange of final infringement and invalidity contentions. But the Judge's oral orders setting forth that requirement did not expressly anchor the Markman process or the contention deadlines to any other dates in the overall schedule.
As we pointed out in our last post, it would make sense to set those deadlines late in the fact discovery period: "Although this order encourages parties to exchange claim construction positions 'early in the case,' it seems likely that parties will propose later Markman deadlines in addition to earlier final contention deadlines, to ensure that sufficient fact discovery has occurred to create meaningful final contentions."
Judge Noreika recently offered additional guidance along these lines regarding the relative timing of contentions, fact discovery, and claim construction:
The parties shall provide final contentions (i.e., final infringement and invalidity contentions, as well as final non-infringement and validity contentions) around the time that fact discovery closes (i.e., several weeks prior to or after the deadline to complete fact discovery) and at least three weeks before Plaintiff serves its opening claim construction brief. Final contentions shall include a party's contentions under its proposed construction(s), as well as under the opposing construction(s) (if such an alternative contention exists). As such, the parties are encouraged to exchange proposed claim terms and proposed constructions early in the case but in no event later than necessary to allow the parties to include alternative contentions in their final contentions. The joint claim construction chart shall be due one week after the parties have completed their exchange of final contentions, and the joint claim construction brief must be filed at least three weeks before the claim construction hearing. The parties shall leave at least three weeks between the claim construction hearing and the opening of expert discovery.
The new and existing guidance suggests that the relative timing should look something like this:
- Exchange of claim terms and constructions [early enough to include alternative positions in final contentions]
- Fact discovery cutoff and final contentions (including alternative contentions)
- Joint claim construction chart [1 week after final contentions]
- Service of opening claim construction brief [no less than 3 weeks after final contentions]
- Service of other claim construction briefs
- Joint claim construction brief [at least 3 weeks before hearing]
- Claim construction hearing
- Opening of expert discovery [at least 3 weeks after hearing]
This sequencing should help reduce the number of claim construction disputes later in the case, and also gives the Court time to issue a ruling (whether from the bench or otherwise) before expert discovery begins.
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