A Blog About Intellectual Property Litigation and the District of Delaware


Claim Construction Meet and Confer Ends in the Usual Way
Claim Construction Meet and Confer Ends in the Usual Way Ein Gedenkbuch an das glorreiche Jahr 1866 in Wort und Bild, British Library, Unsplash

Last Friday, Judge Noreika ordered the parties in two separate actions to submit revised joint claim charts "identifying no more than a total of ten (10) terms to be argued at the [claim construction] hearing."

The Ongoing Struggle to Limit Terms

This represents a bit of an escalation in the Court's struggle to reduce the number of terms it construes, largely led by our newest Judges, Noreika and Connolly. Last year, Judge Noreika begin issuing her "now-standard post-briefing order directing the parties to meet and confer in an attempt to narrow issues prior to the hearing." See Virentem Ventures, LLC v. YouTube, LLC, C.A. No. 18-917 (MN), D.I. 171 at 4 FN2 (D. Del. Dec. 13, 2019).

Judge Connolly made a similar move in March of this year, when he added a paragraph to his form patent scheduling order requiring the parties to meet and confer and "attempt to reach agreement on any disputed terms" before the claim construction hearing. See Patent Case Scheduling Order In Cases Where Infringement is Alleged - Revised March 2, 2020, para. 17.

Despite the clear thrust of these orders, neither Judge routinely issued orders explicitly limiting the number of claims they would construe.

Judge Noreika Imposes a Firm Limit

Judge Noreika crossed that bridge on Friday issuing orders in Dali Wireless, Inc. v. CommScope Technologies LLC, C.A. No. 19-952-MN, D.I. 72 and Complete Genomics, Inc. v. Illumina, Inc, C.A. No. 19-970-MN, D.I. 78.

Rather than filing her usual order requiring a meet and confer after the parties submitted their joint claim charts, Judge Noreika explicitly ordered the parties to limit themselves to 10 terms. This order was not terribly surprising in Dali where the parties had submitted over 30 terms for construction. See Dali, D.I. 67.

In Complete Genomics, however, the parties joint claim chart listed only 11 disputed terms. See Complete Genomics, D.I. 77. This suggests that future litigants should expect little leeway for arguing extra terms, and should probably plan on submitting ten or fewer terms for construction going forward.

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