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 January 20, 2022, the parties shall submit an Amended Joint Claim Construction Chart that identifies no more than a total of ten (10) terms to be argued at the hearing; (2) To clarify the disputes between the parties, in the Amended Joint Claim Construction Chart, Plaintiff shall articulate what it contends is the plain and ordinary meaning for each of those terms remaining where Plaintiff indicates no construction is necessary or the term is not indefinite; (3) Argument and decision on the rest of the terms at the Markman stage is DENIED; and (4) In connection with dispositive motion briefing, the parties may brief any terms identified in the Joint Claim Construction Chart (D.I. 36 in C.A. No. 20-1435; D.I. 26 in C.A. No. 20-1593) that have not been addressed but that the parties contend still require construction. . . .
Digi Portal LLC v. Party City Co., C.A. No. 20-1593 (D. Del. Jan. 7, 2022). This order also limits the parties to 10 terms total, and directs the parties to brief any additional terms at summary judgment. We've discussed before how Judge Noreika seems to have a firm 10-term limit, and has specifically rejected joint claim charts with even 11 claim terms.
ORAL ORDER re 57 Joint Claim Construction Chart - IT IS HEREBY ORDERED that, on or before 1/12/2022, the parties shall file an Amended Joint Claim Chart setting forth Plaintiff's articulation of the plain and ordinary meaning for each term that Plaintiff contends should be construed according to its plain and ordinary meaning. In addition, "multiple claims" is insufficient in providing the claims in which the disputed terms appear. Therefore, the Amended Joint Claim Chart shall set forth exactly in what claims the disputed term appears.
Safe Driving Technologies LLC v. Ford Motor Co., 21-64 (D. Del. Jan. 5, 2022). This order also makes clear that parties should identify exactly which claims each term relates to.
Judge Noreika has issued a similar order requiring explicit meanings for plain and ordinary meaning terms at least once before.
All told, here is a list of some of the things that parties should do when submitting a joint claim construction chart in a Judge Noreika action:
- Follow her form chart
- Include 10 or fewer terms
- Articulate the proposed plain meaning for any "plain meaning" constructions
- Specify exactly which claim(s) each term relates to.
And—most importantly—be sure to thoroughly meet-and-confer before filing the chart (which is good advice for any judge).
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