In Continuous Composites, Inc. v. Markforged, Inc., C.A. No. 21-998-MN (D. Del.), after claim construction, the parties filed a stipulation of non-infringement of some of the asserted patents pending appeal to the Federal Circuit.
This is something that happens from time to time in circumstances like this, where the Court's construction means that the patentee cannot show infringement—and where the patentee wants to appeal the construction without having to litigate further.
In Continuous Composites, the parties stipulated that the Court would enter judgement of non-infringement on the patents with the claim construction issue, whenever the Court enters judgment on one remaining patent that apparently lacked that issue:
In view of the Court’s construction of the term “primary material” as a “curable, liquid material,” the Parties agree that MarkForged does not infringe [certain claims of certain patents] by making, using, offering for sale, and selling within the United States, or importing into the United States the Accused Products, and when judgment is entered in this case, judgment will be entered in favor of MarkForged as to Continuous Composites’s infringement claims . . . .
For clarity and the avoidance of doubt, this Stipulation and Order does not relate to, dismiss, or in any way affect any claims, counterclaims, and affirmative defenses pending between Continuous Composites and MarkForged relating to [the single remaining patent] or otherwise between Continuous Composites and MarkForged.
In response, the Court rejected the stip, holding that it lacked sufficient detail:
ORAL ORDER . . . Stipulated judgments are defective if they are ambiguous in material respects. Having reviewed the parties' proposed stipulation of non-infringement of [the patents], the Court finds that the stipulation does not provide sufficient detail as to why the agreed-upon or court-rendered claim constructions result in non-infringement -- e.g., it is unclear whether Defendant does not meet the "primary material" limitation because it does not use a liquid or because it does not use a liquid that is curable (or for some other reason). THEREFORE, IT IS HEREBY ORDERED that the stipulation is REJECTED and the parties are directed to resubmit the proposed stipulation with sufficient detail as to why the referenced claim constructions resolve the issue of infringement in Defendant's favor.
This data point may be helpful if you have to file a stip like this. Of course, the issue would not come up in, for example, a stipulation to dismiss the case after settlement.
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