A Blog About Intellectual Property Litigation and the District of Delaware


It's summer! The perfect time for Markman briefing, obviously
It's summer! The perfect time for Markman briefing, obviously Aleksandr Eremin, Unsplash

As we've mentioned, with the exception of Judge Connolly, most current D. Del. district judges permit argument regarding indefiniteness during Markman.

But what about the magistrate judges? Magistrate Judge Fallon this week granted a motion to preclude oral argument at Markman regarding indefiniteness, noting that there is no requirement for the Court to address indefiniteness during claim construction:

ORAL ORDER re D.I. 54 Motion to Amend/Correct Scheduling Order: Having reviewed Plaintiff's partially opposed motion to amend the provisions of the scheduling order governing briefing on claim construction (D.I. 54), IT IS HEREBY ORDERED that Plaintiff's motion is GRANTED-IN-PART. Plaintiff's motion is GRANTED to the extent that it seeks to exclude briefing of Defendant's indefiniteness challenges during the claim construction process. There is no requirement for the Court to decide indefiniteness during claim construction, and because the indefiniteness inquiry may involve underlying factual disputes, "resolution of indefiniteness as part of claim construction may be either impossible or inadvisable." Otsuka Pharm. Co., Ltd. v. Zenara Pharma Private Ltd., C.A. No. 19-1938-LPS, 2021 WL 3172017, at *3-4 (D. Del. July 27, 2021).

PerDiemCo LLC v. CalAmp Corp., C.A. No. 20-1397-VAC-SRF (June 7, 2022). This was a vacant judgeship case—but likely didn't impact the outcome here, as the magistrate judges cannot decide either claim construction or indefiniteness absent consent.

This was a good call by plaintiff—much better to get this figured out before the parties go through the effort of briefing it.

No Tweaking the Default Page Limits, Either

As part of its motion, plaintiff also asked the Court to reverse the usual order of briefing and have defendant move first, or to shift 10 pages from its opening brief to its reply brief, to account for the fact that only defendant proposed terms for construction. The Court denied those requests, even though they were partially unopposed, and ordered plaintiff to stick with the original order:

To the extent that Plaintiff seeks reversal of the claim construction briefing order and/or modification of the briefing page limits, the motion is DENIED. Ordered by Judge Sherry R. Fallon on 6/7/2022. (lih) (Entered: 06/07/2022)

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