A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Claim Construction

Court Orders In-Person Claim Construction Meet-and-Confer by Lead Trial Counsel, In the Courtroom in Delaware, Continuing Until Excused

Andrew E. Russell, March 3, 2023
Meet-and-Confer Claim Construction

Unhappy Attorneys
AI-Generated

Judge Noreika is well known at this point for requiring real, substantive meet-and-confers on claim construction. In multiple cases, she has directed parties to further meet-and-confer after finding their initial efforts insufficient.

She issued another such order this week, this time directing the parties to have what appears to be a supervised meet-and-confer, in person in the courtroom:

ORDER . . . The parties did not comply with the Court's February 13, 2023 Oral Order requiring a good-faith meet and confer. Instead, the parties spoke for just 20 minutes about 10 disputed terms, as well as "hearing logistics" and a proposal by MarkForged to request deferral of certain claim constructions until dispositive motions. There is no breakdown indicating …
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Judge Williams: Failure to Disclose Indefiniteness Argument in Invalidity Contentions Is No Bar to Arguing Indefiniteness During Claim Construction

Andrew E. Russell, Feb. 22, 2023
Invalidity Contentions Indefiniteness

Milwaukee
Mark Rohan, Unsplash

Yesterday, Judge Williams issued a claim construction opinion in Persawvere, Inc. v. Milwaukee Electric Tool Corporation, C.A. No. 21-400-GBW (D. Del. Feb. 21, 2023).

In the joint claim construction brief, plaintiff asserted that defendant had waived its indefiniteness arguments because it did not include them in its invalidity contentions:

Given that Defendant failed to raise an indefiniteness argument in its Invalidity Contentions concerning terms 3 and 4, see Ex. 8, Defendant has waived this defense.

D.I. 47 at 30. In the case, the scheduling order required both initial and final invalidity contentions; defendant did not mention indefiniteness in its initial contentions, and the deadline for final contentions had not yet passed.

The defendant …

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These Lawyers Clearly Don't Read IP/DE: Odd Brief Prompts Guidance on Claim Construction Proposals

Andrew E. Russell, Feb. 10, 2023
Plain Meaning Claim Construction

No Construction
Andrew E. Russell

In Charles Smith Enterprises, LLC v. Catapult Sports, Inc., C.A. No. 21-1278-CFC (D. Del.), the parties filed a 60-page joint claim construction brief that included disputes on a number of terms where one party or the other proposed "plain and ordinary meaning" or "no construction necessary" while the other side proposed a specific definition for the terms.

By my count, for every single one of the parties' 15 disputed terms, one side or the other proposed "plain and ordinary meaning" or "no construction necessary" with no alternative construction—before Chief Judge Connolly, no less. These counsel clearly don't read this blog.

In some instances, the parties just briefed the terms in an odd way. …

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Judge Andrews Sets Out When Parties Have to Raise Indefiniteness at Claim Construction: Be Careful of Waiver

Andrew E. Russell, Feb. 3, 2023
Markman Indefiniteness

Typical day in litigation
Typical day in litigation AI-Generated, displayed with permission

We've talked before about a common question in patent cases: whether parties can (or have to) address indefiniteness during the Markman claim construction process. The answer varies greatly by judge.

The Markman process sometimes occurs early in the case, and parties have to make a call fairly early-on about whether they want to address indefiniteness early in the case, or wait until later.

Plaintiffs usually want to defer indefiniteness for later to keep the case going as long as possible. Defendants, on the other hand, can go either way: Often they want to address indefiniteness early to resolve the action, but sometimes they aren't quite ready and prefer to wait as …

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Finding Short Meet-and-Confer Did Not Show Good Faith, Judge Noreika Orders In-Person Meet-and-Confer by Lead Trial Counsel

Andrew E. Russell, Dec. 28, 2022
Meet-and-Confer Claim Construction

Attorneys at Table
AI-Generated, displayed with permission

This is an interesting order from earlier this month that we never had a chance to post about.

In Ecobee, Inc. v. EcoFactor, Inc., C.A. No. 21-323-MN (D. Del.), the parties had a Markman hearing scheduled for December 8. As she often does, in the leadup to the hearing, Judge Noreika issued an order directing lead counsel for the parties to meet-and-confer to reduce the number of disputes:

ORAL ORDER . . . IT IS HEREBY ORDERED that, on or before 12/1/2022, local and lead counsel (i.e., those attorneys that will be leading trial) for the parties shall meet and confer and file an amended joint claim construction chart that sets forth the …
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Party Scores Hole in One, Invalidates Asserted Claims of Patent at SJ

Andrew E. Russell, Nov. 23, 2022
MSJ Summary Judgment

The Court has said in the past that "winning summary judgment in a patent case is like hitting a hole in one." Well, yesterday DePuy Synthes scored a hole in one, invalidating all asserted claims of one patent on SJ in RSB Spine, LLC v. DePuy Synthes Sales, Inc., C.A. No. 19-1515-RGA (D. Del. Nov. 22, 2022).

How Did They Do It?

Basically, they won it at claim construction, but couldn't end the case until summary judgment.

The patent at issue, U.S. Patent No. 6,984,234, covers a "base plate" that a surgeon can screw into two bones in a person's spinal cord to stabilize them.

The base plate screws into the bones (blue, below), and a …

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Judge Williams Denies Summary Judgment, But Schedules "Mini-Markman"

Andrew E. Russell, Oct. 7, 2022
Markman Hearing Markman

A miniature attorney, ready for a mini-Markman.
A miniature attorney, ready for a mini-Markman. AI-Generated, displayed with permission

We got another good data point on Judge William's practices this wekk. In Board of Regents, The University of Texas System v. Boston Scientific Co., C.A. No. 18-392-GBW (D. Del.), Judge Williams denied a non-infringement summary judgment motion—but also scheduled a "mini-Markman" to resolve the underlying claim construction issue.

The defendant moved for summary judgment of non-infringment, arguing that the Court's prior construction of a particular term was incorrect, but that regardless, it would not infringe under either the purportedly incorrect construction or what it alleges is the correct construction.

The Court found factual disputes as to both, and easily disposed of the non-infringement motion.

The …

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Defendant Succeeds in Limiting Claims Based on the Specification

Andrew E. Russell, Aug. 3, 2022
Claim Construction

View from a fisheye lens
View from a fisheye lens Kevin Grieve, Unsplash

Defendants often want to import limitations from the specification to the claims. It only takes one missing claim element per claim to defeat an allegation of patent infringement (setting aside DOE). And the language of patent specifications is often narrower than the claims themselves, providing ample opportunities to find limitations.

Federal Circuit precedent, of course, says that the Court should avoid importing limitations from the specification into the claims—but using the specification to interpret the meaning of a claim is OK. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). As countless courts have recognized, that is a fine line.

As a result, defendants' early-case strategy often …

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Judge Kennelly Gives PTAB Claim Constructions Little Weight: "Not All intrinsic Evidence Is Created Equal"

Andrew E. Russell, July 22, 2022
IPR Claim Construction

Chicago, Illinois
Chicago, Illinois Pedro Lastra, Unsplash

In an opinion today, visiting Judge Kennelly (N.D. Ill.) rejected the idea that an accused infringer could bring an IPR, receive a claim construction in that IPR, and then argue that that construction is "intrinsic evidence" that, by itself, merits adopting the construction in the district court case.

In XMTT, Inc. v. Intel Corp., C.A. No. 18-1810-MFK, D.I. 293 (D. Del. July 22, 2022), the PTAB had proposed and applied its own constructions for the claims, and accused infringer Intel ultimately lost the IPR. Intel then appealed, and the Federal Circuit affirmed without reaching the merits of the claim constructions.

While the IPR was pending, Intel argued that the …

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Judge Andrews Requires Plaintiff to Propose Construction for "Plain Meaning" Term the Day Before Markman Hearing

Andrew E. Russell, July 20, 2022
Plain Meaning Claim Construction

Analog Clock
None, Ocean Ng, Unsplash

One of our busiest posts on the blog is What Is "Plain and Ordinary Meaning," Anyway? And Why Do Plaintiffs Want It? This has been a recurring issue for years. Sometimes the Court is OK with a plain meaning construction, but sometimes the it is decidedly not.

Judge Andrews issued an order today for a forthcoming Markman hearing, set for 9:00 am tomorrow, directing plaintiff to propose a construction for one of its "plain meaning" terms by 8:00 pm this evening:

ORAL ORDER: The time for argument at the Markman hearing is reduced to thirty minutes per side. . . . As to disputed term D, the Court thinks construction is …
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