A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Claim Construction

"Flawed Logic" Leads to Short Opinion, Negative Outcome

Andrew E. Russell, July 11, 2022
Claim Construction

Cell Phone
Tyler Lastovich, Unsplash

In patent infringement cases, plaintiffs' claim construction strategy sometimes seems to boil down to "Plain meaning! Construe it later! Everything is in!", while defendants often go for "No plain meaning! Construe it now! Our thing is out!".

Note that, for defendants, it's not necessarily that everything is out of the claim. It's often that there is one specific thing from the specification that is required, and that just happens to be the one thing the defendant's product doesn't have or do.

This strategy doesn't have a great success rate for defendants, but often I feel like the attitude is that "well it's worth a shot." I'm not sure that's always true, because a really bad argument …

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Some Quick Takeaways from a Claim Construction Opinion Where the Court Sought Extrinsic Evidence

Andrew E. Russell, June 27, 2022
Claim Construction

An embodiment of the claimed
An embodiment of the claimed "weight-shift controlled personal hydrofoil watercraft" U.S. Patent No. 9,359,044

We don't usually write about claim construction opinions, because they tend to be fact-specific and tough to generalize to other cases.

But there were a few interesting points in a claim construction opinion issued by Judge Andrews on Friday, and I thought it was worth outlining them here:

  • While the judges are typically somewhat adverse to extrinsic evidence, Judge Andrews asked the parties to submit letters outlining "textbook[]" style definitions of the a term, "stability," and said that he found the letters helpful. He adopted the construction that "capture[d] the concept of static stability" as set forth in the textbook definitions.
  • The Court relied on plaintiff's …
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How Long Does a Markman (Claim Construction) Hearing Usually Go in the District of Delaware?

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

Analog Clock
None, Ocean Ng, Unsplash

A recurring question here in D. Del. is "how long should we request for the Markman hearing?" (when such a request is required under the scheduling order).

Parties often request around 2-3 hours, depending on the number of terms. But I was curious how much time judges actually order for Markman, so we collected some statistics. Here is how many minutes each judge has permitted for Markman oral argument, on average, over the last year:

  • Judge Stark: 91 minutes on average (7 hearings)
  • Judge Andrews: 92 minutes on average (9 hearings
  • Judge Noreika: 102 minutes on average (18 hearings)
  • Magistrate Judge Burke: 170 minutes (9 hearings)
  • Magistrate Judge Hall …
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Last-Second Claim Construction Argument, Offered at Hearing, Saves Patent from § 101 Motion to Dismiss

Andrew E. Russell, March 22, 2022
MTD § 101

Plaintiff Trident Holdings, LLC at oral argument, pointing to a claim construction
Kedar Gadge, Unsplash

Having a legitimate claim construction dispute that would lead to subject matter eligibility is a great way to survive a § 101 motion. Ideally, obviously, that argument should be set forth in an answering brief. But an opinion yesterday describes how a patentee was able to avoid a negative result on its § 101 motion through claim construction arguments offered at oral argument:

[Plaintiff] Trident suggested for the first time at oral argument that the “optimization engine” and “adaptive scoring” limitations required construction before the Court decides eligibility. . . . That claim construction wasn’t expressly raised until the oral argument suggests that [Trident] may not have actually thought there was a claim construction issue …
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New Judge Noreika Procedure Pays Off: After Extra Pre-Trial Claim Constructions, Court Vacates Trial Date and Requests Proposed Form of Judgment

Andrew E. Russell, March 7, 2022
Summary Judgment FRCP 56

Speed
Arthur Poulin, Unsplash

In January, we noticed an interesting new procedure from Judge Norieka where, rather than address the pending motions on eleven grounds in detail, she ordered the parties to file a joint letter ranking their summary judgment motions and identifying any disputes over claim scope.

When the parties identified some "dispositive" claim construction disputes in the letter, the Court ordered briefing on those disputes.

Now, the Court has held its Markman hearing (less than a month after close of briefing), and issued an oral ruling on the new constructions at the hearing. It found for the defendants on all disputes.

The parties then filed a letter, where the plaintiff admitted that, if the Court sticks with …

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What Are Technology Tutorials in Patent Cases, and Are They Worth It?

Andrew E. Russell, March 2, 2022
Technology Tutorial Summary Judgment

Looks like they went with the low-cost version
Looks like they went with the low-cost version Markus Winkler, Unsplash

In the District of Delaware, five of our eight judges use form scheduling orders that provide a deadline for the submission of a "Technology Tutorial" around the time of claim construction.

Former Judge Stark required the parties to submit a tech tutorial in patent cases with the opening claim construction brief. Judge Stark's form order, for example, provided that:

Tutorial Describing the Technology and Matters in Issue. Unless otherwise ordered by the Court, the parties shall provide the Court, no later than the date on which their opening claim construction briefs are due, a tutorial on the technology at issue. In that regard, the parties may separately …
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Chief Judge Connolly Limits Parties to 10 Claim Terms (Or, Why It's Helpful to Pay Attention to Seemingly-Obscure Precedent)

Andrew E. Russell, Feb. 23, 2022
10 Terms Stipulation

As frequent readers of this blog already know, some judges in Delaware have limited parties to a total of 10 terms for construction across all asserted patents.

We've noted at least one previous instance where Chief Judge Connolly seemed to limit the parties to 10 claim construction disputes. Last week, the Court made an even clearer statement on the issue.

The parties in MG FreeSites Ltd v. ScorpCast, LLC, C.A. No. 20-1012-CFC-JLH (D. Del.) filed their joint claim chart in advance of claim construction, and listed 15 terms in dispute. They also included a footnote smartly noting Chief Judge Connolly's practice not to permit argument on indefiniteness at the claim construction stage.

They then filed a stipulation …

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Judge Noreika Provides Additional Guidance on Timing of Contentions, Markman Process

Jeff Castellano, Jan. 19, 2022
Scheduling Orders Contentions

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...

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The Hazards of Proposing "Plain and Ordinary Meaning," Ctd.

Andrew E. Russell, Jan. 11, 2022
Plain Meaning Claim Construction

Stop
Markus Spiske, Unsplash

We've written before about why some parties—especially patentees—like to propose "plain and ordinary meaning" constructions for claim terms, and about the potential hazards of doing so. These include having to submit a new joint chart with proposed constructions or, more significantly, risking cancellation of the Markman hearing and a decision for the other side (as Chief Judge Connolly suggested).

But sometimes parties still decide to risk it. Last week Judge Noreika ordered the parties in two separate cases to articulate specific meanings after they proposed "plain and ordinary meaning" constructions:

ORDER re . . . Joint Claim Construction Chart - IT IS HEREBY ORDERED that: (1) The Markman hearing will be narrowed. On or before …
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What You Say in Prosecution Can Be Used Against You, Even if the Examiner Disagrees

Jeff Castellano, Dec. 21, 2021
Claim Construction

In a recent order, issued shortly after the Markman hearing in Allergan USA, Inc. v. Aurobindo Pharma Ltd., C.A. No. 19-1727-RGA, Judge Andrews addressed the question of "how much weight should be assigned to a Patent Examiner's statement, in a Notice of Allowance, about the meaning of a claim."

He explained the background as follows:

During prosecution of the '291 Patent, Plaintiffs initially argued that the claimed percentage of mannitol, a well-known filler, should be calculated separately from the claimed percentage of filler. The Examiner disagreed, and, in his Notice of Allowance, indicated that the percentage of mannitol would be included in calculating the percentage of filler.

(emphasis added)

The plaintiffs/patentees urged the Court to ignore their initial statements and arguments, and instead adopt the Examiner's position. Judge Andrews declined to do so...

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