A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Claim Construction

A New Markman Hearing Procedure from Judge Burke

Andrew E. Russell, Aug. 10, 2023
Markman Hearing Claim Construction

Six
Arisa Chattasa, Unsplash

Here's another interesting order from when we were out. In it, Judge Burke notes a new procedure where he hears oral argument on only six claim terms at the Markman hearing:

ORAL ORDER: The Court hereby ORDERS as follows with respect to the upcoming Markman hearing: (1) The Court will adopt the parties' prior proposal with respect to the length and order of argument. . . . (2) However, it has been the Court's recent practice to hear argument on only six terms/term sets ("terms"). So, by no later than August 11, 2023, the parties shall submit a joint letter telling the Court which terms will be taken on the papers and which six terms will …
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Judge Williams Joins the Other D. Del. Judges in Limiting Parties to 10 Claim Terms

Andrew E. Russell, June 26, 2023
Markman Briefing 10 terms

Caution Warning
Bernd Dittrich, Unsplash

We've written a lot about the common D. Del. practice of limiting parties to 10 claim terms per case (at least for the Markman hearing).

We talked about a similar order from Judge Andrews earlier this month, and previous orders by Judges Connolly, Noreika, and Burke. Now, Judge Williams has set the same limit, in at least one action:

ORAL ORDER: Having reviewed the parties' Joint Claim Construction Brief (D.I. 96), IT IS HEREBY ORDERED that the Court will construe a maximum of ten (10) terms/term sets during the August 1, 2023 Claim Construction Hearing. The parties shall meet and confer and, no later than July 17, 2023, the parties shall file …
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Answers to Some Common Questions About Joint Claim Construction Briefing in D. Del.

Andrew E. Russell, June 14, 2023
Joint Claim Construction Briefing Sandbagging

We're really starting to run out of good, free pictures of sand bags for these posts.
We're really starting to run out of good, free pictures of sand bags for these posts. Karen Barrett, Unsplash

At this point, all of the D. Del. judges have adopted a joint claim construction brief procedure invented by Judge Andrews, where the parties serve opening, answering, reply, and surreply briefs, and then file a single combined joint claim construction brief that presents the arguments term-by-term. This means that the parties and the Court can work from a final, combined joint brief where all of the arguments match up.

This is a great procedure and everyone seems to like it. Certain questions tend to come up about it, though.

Common Questions on the Joint Claim Construction Brief

First, parties …

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Danged If You Do, Danged If You Don't, Danged If You Sort-Of Do And Sort Of Don't

Nathan R. Hoeschen, June 6, 2023
Claim Construction

In almost every case I have as a defendant, there's a moment around claim construction when I'm just sure I've got the plaintiff dead to rights. Under one construction, there's no infringement—under the other, the patent's invalid. I've just gotta turn the crank on the vise until those conniving jerks pop.

I had a different picture here before but it was . . . pretty dark
I had a different picture here before but it was . . . pretty dark AI-Generated, displayed with permission

More often than not, however, this insoluble dilemma dissolves and I'm left cranking air.

It was thus with noticeable relish that I read Judge Bataillon's post-trial opinion in CR Bard Inc. v. AngioDynamics Inc. C.A. No. 1-15-218-JFB-SRF (D. Del. June 1, 2023)—where this spring was finally sprung.

The trap was—weirdly—in the term "suitable." The patents claimed a method for identifying a medical injection port as one of those "suitable" for high pressure applications such as CT scans (as well as apparatuses for doing the same). Apparently, the wrong sort of ports will explode if you use them for CT scans, so it's important for the doctor to know which kind you have.

The issue that came to the fore at trial was whether a "suitable" port was one that was ...

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Judge Andrews Cancels Markman, "Dismisses" the Parties' Briefing After Parties Seek Construction of 16 Claim Terms

Andrew E. Russell, June 5, 2023
10 Terms Claim Construction

"We didn't need that joint brief anyway ... (sob)" Jeff Kingma, Unsplash

Judge Andrews issued an interesting order on Friday. Based on the docket, it looks like the parties had fully completed the Markman process (disclosures, meet-and-confer, joint claim chart, and joint brief), and had briefed a total of 16 terms. Judge Andrews then canceled the Markman and "dismissed" the briefing:

ORAL ORDER: The parties have submitted a joint claim construction with the request that I construe at least 16 terms including, for example, comprising and patient. I think that if I postpone the Markman hearing, some of these disputes may fall away. Therefore, the Markman hearing scheduled for June 23 is cancelled. The Markman briefing is dismissed. The …
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Judge Hatcher's New Scheduling Order Mirrors Other Magistrate Judges' Forms

Emily DiBenedetto, May 11, 2023
Scheduling Order Discovery Dispute

francois-olwage-X_RxDiKDSuU-unsplash
Francois Olwage, Unsplash

Sir Isaac Newton once wrote to Robert Hooke (Hooke’s Law): “If I have seen further, it is by standing on the shoulders of giants.” This quote was the cornerstone on which I built my 5th grade graduation speech, because it seemed to be an eloquent way to say “don’t reinvent the wheel”.

Judge Hatcher appears to be building on the knowledge accumulated by judges occupying the bench before her. In particular, Judge Hatcher’s new form Scheduling Order for patent cases seems strongly inspired by Judge Hall’s and Judge Burke’s form orders.

Here are a few differences . . .

  • Omits the paragraph on the unavailability of the ADR Process. This indicates that the Court expects litigants to …
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Clear and Unmistakable

Nathan R. Hoeschen, April 6, 2023
Claim Construction

I was trolling though recent opinions in search of a blog post topic (you're welcome) when I stumbled upon a recent Markman order discussing disclaimer. Now normally Markman orders aren't the most fecund ground for a post. But seeing the pro forma language about how prosecution history disclaimer required a "clear and unmistakable" disavowal I had to ask myself—"do they ever find that?"

I don't know why I asked for it to be Baron Harkonnen, but I did and now you have to see it too
AI-Generated, displayed with permission

The answer, is "not really, no." Frequent readers will know that I normally do the last 10 opinions, because I have forgotten all the math I used to know and its easy to calculate the percentages. Here though, I looked through the last 10 and was still at 0. So I pressed on until we hit a winner at the 15th oldest decision. For those with calculators, that's a 6.7% success rate.

What really surprised me about this number was that I only had to go back 2 months to find 15 cases where a defendant had alleged disclaimer, given the abysmal success rate. I'll update this post the next time we get a winner to see if we can piece together a unified theory of what makes these arguments work.

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Someday Law Will Find You, Break those Chains that Biiiinnd You

Nathan R. Hoeschen, March 21, 2023
Claim Construction

As a lawyer I am a creature of rules. Bound in a cage of local rules, standing orders and conventions, I sometimes struggle to see the possibilities that lay beyond. What might be seized if we broke those bonds?

AI-Generated, displayed with permission

It turns out, nothing good.

Few cases illustrate this lesson better than Bausch & Lomb Inc. v. SBH Holdings LLC C.A. No. 20-1463-GBW-CJB (D. Del Mar. 20, 2023) (Oral Order). Earlier this month (following a bit of a trend in the district), Judge Burke issued an oral order requiring the defendant to clarify its claim construction positions:

The Court, having reviewed the parties' Joint Claim Construction Chart ("JCCC"), hereby ORDERS that by no later …
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Judge Andrews Finds That "Analysis Engine" and "Event Classification Engine" Are Means-Plus-Function Terms (And Indefinite)

Andrew E. Russell, March 20, 2023
Means-Plus-Function Claim Construction

This is the kind of engine that has structure.
This is the kind of engine that has structure. Markus Spiske, Unsplash

There are only so many ways to get rid of claims early in the case. One of them is arguing indefiniteness at claim construction, for the judges who permit that.

Indefiniteness at Markman typically invoves either a Nautilus-style argument about a term lacking reasonable certainty, or a § 112 ¶ 6 argument that a means-plus-function term lacks corresponding structure in the specification.

Today, Judge Andrews addressed such a § 112 ¶ 6 argument, and found both that software terms reciting an "engine" were means-plus-function terms, and that the terms lacked corresponding structure in the specification. First, he found that "engine" is a "nonce word" that doesn't refer to a specific structure—breaking with at least one case that found the opposite:

I agree with Defendant that “analysis engine” is a means-plus-function limitation. Defendant has overcome the presumption that “analysis engine” is not subject to § 112, ¶ 6 by showing the claim fails to “recite sufficiently definite structure.” . . . The parties agree that an “engine” in this context refers to a program or part of a program to perform a function or manages data. . . . “Engine” appears to be synonymous with “module,” which is recognized as a common “nonce” word. Williamson, 792 F.3d at 1350 (finding “module” to mean “a generic description for software or hardware that performs a specified function” to be a “well-known nonce word”); see also Parity Networks, LLC v. ZyXEL Commc'ns, Inc., 2020 WL 8569299, at *6 (C.D. Cal. Dec. 22, 2020) (finding “engine” was a nonce word in the term “multicast engine”). But see Stragent, LLC v. Amazon.com, Inc., 2011 WL 13152568, at *4 (E.D. Tex. June 27, 2011) (finding “engine” conveyed structure and was not subject to § 112, ¶ 6).

The argument that the "analysis engine" was part of the novelty of the patent was not enough to save it—and that argument may have even hurt the plaintiff ...

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Another D. Del. Judge Orders an In-Person Claim Construction Meet-and-Confer, and Cancels Markman (And: Some Thoughts on Claim Construction Meet-and-Confers)

Andrew E. Russell, March 8, 2023
Meet-and-Confer Claim Construction

Andrew E. Russell

Just last week, we wrote about Judge Noreika ordering an in-person meet-and-confer to occur between lead trial counsel regarding claim terms, in the courtroom in Delaware, and "continuing until excused by the Court." In ordering the in-person meet-and-confer, Judge Noreika noted that the parties had "spoke[n] for just 20 minutes about 10 disputed terms" during their meet-and-confer.

Yesterday, Chief Judge Connolly issued an order along similar lines—but outright canceling the Markman hearing. Like Judge Noreika did, the Court noted that the parties had failed to adequately meet-and-confer about a disputed term:

Plaintiffs first made their new proposal [to construe "tangent"] during the "meet and confer" discussion required by paragraph 13 of the Revised Scheduling Order. . . …
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